Implementing New U.S. Patent Rules: Helpful Resources for Individuals, Corporations, and Universities

           Changes in U.S. patent rules since September 2011, when the American Invents Act (AIA) was enacted, have altered patent application preparation, prosecution, and enforcement strategy.  For many, however, the most sweeping patent law change is just around the corner, when the AIA's first-inventor-to-file system becomes effective on March 16. Individuals, corporations, and universities looking for resources and information about first-to-file and other significant changes brought about by the AIA, and how to plan for them, may find the following articles helpful.

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Maryland Intellectual Property Lawsuits Sharply Up In 2012, Led By Surge in Copyright Cases

          More than 150 intellectual property lawsuits were filed in Maryland's federal district court in 2012, a 45% increase over 2011 levels, 75% ahead of 2010.  If the individual number of actual plaintiffs and nominal counterclaim plaintiffs in cases with multiple parties are counted, 2012 will be remembered as a very litigious year for patent, trademark, and copyright owners.  Nationally, the number of new IP lawsuits may have increased as much as 30%, according to some sources.

          The first chart below shows a spike in patent litigation activity in Maryland in 2012 compared to the previous four years. According to records available from Justia.com and PACER, plaintiffs filed 45 patent lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2012, compared to just 35 lawsuits in 2011 and 22 in 2010 (45% and 22% differences, respectively).

 

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Maryland Court Denies Electronic Arts' Fair Use Defense in Bouchat's Latest Copyright Infringement Case

           In Bouchat v. NFL et al., the U.S. District Court for the District of Maryland considered Defendants' respective motions for summary judgment based upon their copyright fair use defenses (17 U.S.C. Sec. 107).  In doing so, the Court granted Defendants NFL Enterprises LLC's and Baltimore Ravens L.P.'s motions, but denied Defendant Electronic Arts' (EA Arts) and NFL Properties LLC's motions.  On December 21, 2012, Judge Garbis referred the EA matter to Magistrate Judge Gesner for possible settlement/ADR resolution.

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Book Review: Keeping Secrets - A Practical Introduction to Trade Secret Law and Strategy

Keeping Secrets – A Practical Introduction to Trade Secret Law and Strategy, by Darin W. Synder and David S. Almeling, Oxford University Press, 2012

          Some forms of intellectual property make headlines from time to time, like the recent Apple v. Samsung patent spat involving smart phone technology, and Rosetta Stone’s trademark fight involving Google’s AdWords. But rarely do patent and trademark cases approach the intrigue and novelesque quality of trade secret cases. The reasons are simple: most trade secret cases involve people—usually current or former employees—who were entrusted with a company’s most valuable confidential information, and who breached that trust for personal gain. According to the authors of Keeping Secrets, when that information is stolen and sold or used by thieves, the resulting cases are often scandalous and read like good spy novels.

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Review: Rosetta Stone and Google Battle Over AdWords

          In a highly anticipated decision from the Fourth Circuit Court of Appeals involving Rosetta Stone's trademark infringement suit against Google concerning Google's sale of AdWords (Rosetta Stone v. Google, No. 10-2007 (4th Cir. 2012)), the Fourth Circuit affirmed in part, vacated in part, and remanded to the U.S. District Court for the Eastern District of Virginia to reconsider whether Google directly or contributorily infringed, or diluted, the ROSETTA STONE trademarks by selling AdWords to third parties. Below are published remarks and analyses following the Fourth Circuit's decision, and predictions about the outcome of the case at the district court upon remand.

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Examining U.S. District Court Reversal Rates in Maryland Patent Cases

          The number and percentage of appealable issues reversed by the U.S. Courts of Appeals may suggest many things, including how well U.S. District Court judges are doing adjudicating those issues.  In patent cases, reversal rates for claim construction issues have been well documented (Schwartz, 107 Mich. L. Rev. 223 (2008); K. A. Moore, 99 Mich. L. Rev. 365 (2000); K.A. Moore, 15 Harv. J. L. Tech 1 (2001)), and indicate that about 30% of cases are reversed or vacated because of an erroneous claim construction by district courts.  The statistics below reflect patent issue reversal rates for the U.S. District Court for the District of Maryland.

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Bryce Harper and Other Athletes Seek Trademarks to Protect Their Persona

          What do Bryce Harper, Terrell Suggs, Jeremy Lin, and newly minted NBA draftee Anthony Davis have in common (other than being professional athletes that make lots of money)? They each recently applied to the U.S. Patent & Trademark Office to register trademarks to protect aspects of their persona.

          In the case of Washington National's rookie outfielder Bryce Harper, he filed a trademark application for THAT'S A CLOWN QUESTION, BRO., a reference to an answer Harper gave a Canadian reporter after a game with the Blue Jays when the reporter asked Harper, who is 19, whether he would be drinking while the Nationals were in Toronto, where the legal drinking age is 19.  Harper, who is reportedly mormon and does not drink, replied with the spontaneous clown statement, which spread virally on the Internet and is now reportedly being applied to t-shirts by Baltimore-based Under Armour.  

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Right of Privacy (Publicity) Law Explained

          Several states, including Maryland, recognize a person’s exclusive right to control the use of his or her name or likeness as a common law right of privacy.  A person who believes his or her name or likeness has been appropriated by another for commercial gain without the person's consent may bring an action to seek remedies.

          Maryland's right of privacy common law is based on Sec. 652A and 652C of the Restatement (Second) of Torts.  A recent case out of Louisiana--Tatum v. New Orleans Int'l Airport, et al., No. 2011-CA-1431 (La. Ct. App. 2012)--highlights some of the general principles of the right of privacy common law.

          At issue in Tatum was a painting (mural) on the walls of a New Orleans International Airport terminal. Plaintiff filed suit against the airport and others for the alleged improper use of an image of his late mother, Ellyna C. Tatum, in the painting. Plaintiff noted that Ms. Tatum was the first female to be designated as "Grand Marshall" for traditional jazz funerals in the city of New Orleans.

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New Domains for Ravens, Redskins, Orioles, and Nationals, But None for Capitals?

          If applications submitted to the Internet Corporation for Assigned Names and Numbers (ICANN) seeking new "Generic Top-Level Domains" (gTLD) are any indication, we may soon see new Internet addresses for the Ravens, Redskins, Orioles, and Nationals team websites.  Currently, those teams may be found at .COM subdomain websites under their respective team names (e.g., Orioles.com) or under the NFL.com or MLB.com domains. The NFL and MLB owners, however, are seeking new gTLDs to add to their top level domain rosters: .NFL and .MLB. 

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O'Malley Signs Innovation Bill; Benefits Maryland Universities

          Governor Martin O'Malley recently signed into law legislation creating the Maryland Innovation Initiative, which will be administered by the Maryland Technology Development Corporation (TEDCO).  The purposes of the Initiative are: 

          (1) Promote the commercialization of research conducted in universities in the State of Maryland;

          (2) Encourage qualifying universities to partner on commercialization and other activities, including with federal laboratories located in Maryland; and 

          (3) Facilitate the transfer of technology from universities to commercial industries.

          The new law authorizes the Initiative to award grants to specified entities under specified circumstances; establishing the Maryland Innovation Initiative Fund; requiring the Board of Regents of the University System of Maryland and the Board of Regents of Morgan State University to undertake specified high impact economic development activities; etc.

The new law becomes effective JULY 1, 2012.

 

Government Issues More Patent Secrecy Orders

          More than 5,200 U.S. patents were subject to at least one Secrecy Order by the end of fiscal year 2011, government statistics obtained through the Freedom of Information Act reveal (source: FAS.org). The U.S. Patent & Trademark Office issues Secrecy Orders upon recommendation by various U.S. governmental departments, part of its implementation of the Patent Secrecy Act, 35 U.S.C. Sec. 181 et seq.

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Kappos v. Hyatt: Supreme Court Rules That New Evidence May Be Introduced In District Court Suits Brought Against Patent Office in Rejected Patent Application Cases

This article was authored by Jay Lessler, Esq., of Blank Rome LLP         

          The Supreme Court on April 18, 2012, held in Kappos v. Hyatt, slip no. 10-1219, that new evidence, as permissible under the Federal Rules of Evidence (FRE) and the Federal Rules of Civil Procedure (FRCP), may be introduced in a civil suit challenging the rejection of a patent application by the Patent and Trademark Office (PTO).  The Supreme Court further held that “the district court must make a de novo finding when the new evidence is presented on a disputed question of fact.”  In the future, more patent applicants may avail themselves of such civil suits in order to have a fresh opportunity to obtain patent coverage following a denial of an application by the PTO.

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Caraco Pharmaceutical v. Novo Nordisk: Supreme Court Rules that Generic Pharmaceutical Companies can Counterclaim in Patent Cases to Correct "Use Codes"

This article was principally authored by Jay Lessler, Esq., of Blank Rome LLP

          The U.S. Supreme Court ruled on April 17, 2012, in Caraco Pharmaceutical Labs. Ltd. v. Novo Nordisk A/S, slip no.10-844, that a generic pharmaceutical manufacturer can counterclaim in a patent infringement action to have a “use code” for a method of use patent corrected in the FDA Orange Book. Generic manufacturers now have a mechanism for challenging use codes in the Orange Book (and possibly other patent information submitted to FDA by brand companies) which should facilitate faster approval of generic drugs.

 

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Maryland Court Denies Parties' Motions to Dismiss Expert Testimony

          In Pulse Medical Instruments, Inc., v. Drug Impairment Detection Services, LLC, the U.S. District Court for the District of Maryland (J. Chasanow) denied each party's separate motion to exclude the other party's expert's testimony. In doing so, the Court found the following types of evidence to be admissible under Federal Rule of Evidence 702:

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Maryland Court Denies Patentee's Use at Trial of Favorable Reexamination Results

          In IA Labs v. Nintendo, the U.S. District Court for the District of Maryland granted Nintendo’s motion to exclude evidence at trial pertaining to the outcome of a reexamination proceeding involving one of IA Labs' patents. In doing so, the district court agreed with Nintendo that evidence related to IA Labs’ reexamination proceedings would have little or no probative value and could be prejudicial in front of a jury. Moreover, the district court found that Nintendo was not judicially estopped from arguing that the reexamination determinations were not probative evidence even though Nintendo’s litigation counsel had previously lauded the expertise of the U.S. Patent Office.

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