June 19, 2019

Top Ten Reasons to Attend the Rocky Mountain Intellectual Property Institute

Each year, Colorado Bar Association CLE hosts the Rocky Mountain Intellectual Property & Technology Institute, the “place to be for the best IP.” In case you haven’t yet registered for this year’s event, here are the Top Ten Reasons to Attend:

Top Ten Reasons to Attend the 2016 Intellectual Property & Technology Institute

10. Anyone who’s anyone will be there! And if you’re not there, anyone who’s anyone will know.
9. Patents … Trademarks …Copyrights … Licensing …Technology & Transactions!
8. Learn best practices and practical tips that you can apply immediately.
7. Special panels of USPTO patent judges and SPEs discussing developments at the USPTO.
6. Over 40 sessions presented by an all-star faculty of leading IP practitioners.
5. Grow your professional contacts through networking opportunities with IP attorneys from … well … from all over!
4. Receive the digital course materials AND the MP3 audio download for the ENTIRE Institute!
3. Some of the best from across the nation come together to share their knowledge & insights with you!
2. Annual case law updates of all branches of IP law.
1. This Institute has quickly become “the place to be for the best IP” in the western United States!

If that wasn’t enough to convince you, watch this video of Rocky Mountain Regional U.S. Patent & Trademark Office Director Molly Kocialski and Program Chair Nate Trelease explaining what you’ll learn at the Institute:

Don’t miss the 14th Annual Rocky Mountain Intellectual Property & Technology Institute! Register today.

CLE Program — 14th Annual Rocky Mountain Intellectual Property & Technology Institute

This CLE presentation will occur on June 2-3, 2016, at the Westin Westminster Hotel. Register online or call (303) 860-0608. Can’t make the live program? Order the homestudy here: CDMP3

Tenth Circuit: Special Master Must Employ Abstraction-Filtration-Comparison Test for Copyright Infringement

The Tenth Circuit Court of Appeals issued its opinion in Paycom Payroll, LLC v. Richison on Friday, July 11, 2014.

David Richison, with his niece and nephew, Shannon and Chad Richison,  formed a payroll processing company, Ernest Group, d/b/a Paycom Payroll, in Oklahoma in the 1990s. During his time with Ernest Group, David wrote two payroll processing software programs, BOSS and Independence. He transferred his authorship interest in BOSS to Ernest Group in the 1990s. When the relationship between David and Chad deteriorated in 2001, David moved to Maryland and formed his own company called Period Financial Corporation. At Period, he wrote a new software program based in part on Independence, which he called Period Indy. In May 2009, Ernest Group filed a copyright infringement lawsuit against David, asserting that Period Indy infringed on Ernest Group’s copyright in BOSS. Ernest Group subsequently filed for copyright on Independence, stating that it was a work for hire. By 2011, David had written another program, Cromwell.

In August 2011, the parties settled and agreed to the entry of a consent decree. All of Ernest Group’s claims were released except its claim for injunctive relief based on copyright infringement, and all rights to Independence were assigned to Ernest Group. The partied agreed that the district court should appoint a special master to write a report regarding whether the Cromwell program infringed on either BOSS or Independence, and the district court should decide the issue based on the special master’s report. The parties disagreed as to which version of Cromwell should be used for the analysis, but not which versions of BOSS and Independence. The special master opined in his report, marked “Attorney’s Eyes Only,” that Cromwell infringed upon both BOSS and Independence. The district court adopted the special master’s findings and ordered that all copies of Cromwell should be destroyed.

After the report was filed, David objected to the “Attorney’s Eyes Only” restriction, noting that as the author of all the software in question, he could assist his attorneys in reviewing the substance of the report. Ernest Group opposed the motion, and the district court denied it, stating that David advanced no grounds to support lifting the restriction. David’s attorneys filed objections to the special master’s report, arguing that the special master failed to conduct the abstraction-filtration-comparison test, or at least that he did not document his application of the test. Ernest Group’s attorneys agreed with the objections to some extent and requested that the report be resubmitted to the master for further findings. Before the district court could rule, Ernest Group’s attorneys mailed David’s “highly critical” objections directly to the special master. David’s attorneys called for a new special master, claiming that Ernest Group had irrevocably tainted the master’s neutrality. The district court, instead of resubmitting the report to the special master, called on Ernest Group’s attorneys to offer a more substantive response to David’s critique of the report, which they did. The district court adopted the special master’s report in its entirety, ruled that Cromwell infringed upon Ernest Group’s copyrights in both BOSS and Independence, and ordered all copies of Cromwell destroyed. This appeal followed.

David raised four issues on appeal: (1) the “Attorney’s Eyes Only” restriction should be lifted, (2) the special master erred by evaluating versions of BOSS and Independence that were never registered with the copyright office, (3) the special master’s report was inadequate and the versions were not substantially similar, and (4) a new special master should be appointed if remand is necessary. The Tenth Circuit evaluated these claims in turn. The Tenth Circuit declined to agree with David on the first claim, noting that he agreed to the restriction in a consent decree and allowing David to view the report was not so fundamental of a right as to be unwaivable, and commenting that such restrictions are common in trade secret litigation. For the second claim, the Tenth Circuit similarly rejected David’s arguments, since he impliedly consented to the versions in two documents submitted to the court and his argument was therefore waived.

As to the third claim, the Tenth Circuit reversed the district court’s adoption of the special master’s report. The Tenth Circuit agreed that the special master should have documented his application of each step of the abstraction-filtration-comparison test, which he did not do. The report contained little evidence that the master performed the abstraction test, and in fact the report seemed to deem abstraction superfluous. Because the abstraction test was not performed, the special master’s findings regarding filtration were limited, and his entire analysis was flawed. The case was remanded for more complete reporting by the special master. In his fourth claim, David requested that a new special master be appointed, due to potential bias from the master receiving David’s critique. The Tenth Circuit disagreed, because the parties had agreed to this particular special master, and also noting that it only addressed David’s contentions in this appeal so if need arose for a different special master in the future that claim would not be barred.

The district court’s judgment was reversed and remanded for further reporting by the special master using the abstraction-filtration-comparison test.

Surveying Intellectual Property: Predictions for the Supreme Court’s Rulings in 10 IP Cases

HarrisDoughertyBy Ray K. Harris and Thomas Dougherty

There are now ten IP cases under review in the Supreme Court. Why so many? And what will the Court do?

Why So Many IP Cases?

The Supreme Court docket demonstrates the accelerating importance of intellectual property. In the decade of the 1990s the Supreme Court wrote seven patent opinions.[1] The prior two decades saw a similar volume of patent cases. In the same decade, copyright cases decided in the Supreme Court (six)[2] and trademark cases decided in the Supreme Court (three, including two trade dress cases)[3] were about equally rare.

In the decade from 2000 to 2009, the Supreme Court increased the volume to 10 patent related opinions.[4] Total copyright cases (three)[5] and trademark cases (five, including two trade dress cases)[6] decided in the Supreme Court remained about the same.

In 2010 to 2012 the Supreme Court increased the pace to issue four patent opinions in three years.[7] The pace of Supreme Court copyright decisions (two)[8] remained about the same as over the last 20 years. The increase in patent litigation appears not to be aberrational.

Last year the Supreme Court again more than doubled the volume of patent cases handled and issued four patent-related opinions in one year.[9] The Supreme Court also decided one copyright case[10] and one trademark case.[11]

This year the Supreme Court has again increased the volume of patent cases and already has accepted for review six patent cases – more than half the volume it handled in the entire first decade of the 21st Century. The Court has also accepted for review two copyright and two trademark cases.

Why has the Supreme Court accepted review in so many IP cases? Because IP rights have grown in economic importance and clarity is required to maintain that economic value. The Federal Circuit was given exclusive jurisdiction over patent cases to avoid conflicts in treatment among the different Circuit Courts, but clarity (for example, on treatment of software-related inventions) has not uniformly emerged. Also, abusive assertion of IP rights imposes a substantial cost on the economy. Guidance for the Federal Circuit requires either Supreme Court review or Congressional action.

What Will The Court Do?

Here summaries of the issues raised and our humble PREDICTIONS of how these 10 current IP cases may be decided.

Patent. Two patent cases focus on the scope of what a patent may claim.

Alice Corp. Pty Ltd. v. CLS Bank Int’l, 717 F.3d 1269 (Fed. Cir. 2013), cert. granted, 134 S. Ct. 734 (2013) (the test for patentable subject-matter for software inventions). An equally divided court affirmed the District Court holding that the claims were not patent eligible. The Federal Circuit generated seven opinions and could not agree on the appropriate test. NEITHER CAN WE, BUT THE COURT CONTINUES TO DECIDE CASES DEFINING THE LINE BETWEEN INVENTION AND ABSTRACT IDEAS. The court will limit the scope of software patentability, but not eliminate it. SOFTWARE CAN BE PATENTED BUT NOT THESE CLAIMS. AFFIRMED. Watch for oral argument March 31.

Nautilus Inc. v. Biosig Instruments, Inc., 715 F.3d 891 (Fed. Cir. 2013), cert. granted, 134 S. Ct. 896 (2014) (determining when a claim term is indefinite — therefore invalidating the claim) There were multiple reasonable interpretations of the claim language “spaced relationship.” The Federal Circuit concluded the term was not insolubly ambiguous because “inherent parameters” would allow a person of ordinary skill to understand the term. Particular and distinct patent claiming is required by statute. 35 U.S.C. 112. REVERSED. THE COURT WILL REQUIRE TIGHTER CLAIM DRAFTING SO WHAT IS CLAIMED IS DISTINCT FROM WHAT IS NOT CLAIMED AND INFRINGEMENT LIABILITY IS MORE PREDICTABLE. Watch for oral argument April 28.

The remaining 4 patent cases focus on enforcement issues:

Medtronic Inc. v. Boston Scientific Corp., 571 U.S. ___ (Jan. 22, 2014). In a declaratory relief suit by a patent licensee the licensor/patentee always has the burden to prove infringement. REVERSED. WE ARE CERTAIN WE GOT THIS “PREDICTION” CORRECT.

Highmark Inc. v. Allcare Management Systems, Inc., 687 F.3d 1300 (Fed. Cir. 2012), cert. granted, 134 S. Ct. 48 (2013), and Octane Fitness, LLC v. ICON Health & Fitness, Inc., 496 Fed Appx. 57 (Fed. Cir. 2012), cert. granted, 134 S. Ct. 49 (2013) (the standard for awarding attorneys’ fees to the prevailing party). The infringement defendant prevailed in both cases. The Federal Circuit found no deference is owed to a district court’s finding regarding whether allegations of infringement were objectively unreasonable and neither case was “exceptional” under 35 U.S.C. § 285. The prevailing defendants assert (1) the District Court is entitled to deference, and (2) a showing that the litigation is objectively baseless and brought in subjective bad faith sets too high a standard for prevailing defendants (accused infringers) and conflicts with the lower bar set for prevailing plaintiffs (patent owners) — a showing “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.”). THE COURT WILL ELIMINATE THE SUBJECTIVE ELEMENT OF THE REASONABLENESS TEST AND OTHERWISE AFFIRM THE APPELLATE DECISIONS ON THE OBJECTIVE ELEMENT WITHOUT DEFERENCE TO THE TRIAL COURT. This case was argued Feb. 26.

Limelight Networks, Inc. v. Akamai Technologies, Inc., 692 F.3d 1301 (Fed. Cir. 2012), cert. granted, 134 S. Ct. 895 (2014) (inducing infringement where separate elements of the method claim were carried out by different persons, hence there is no one person who directly infringed). The Federal Circuit held there can be inducement liability with no single direct infringer or agency relationship. AFFIRMED. INDUCING MULTIPLE ACTORS TO INFRINGE COLLECTIVELY IS WRONG (ONCE THE ADVERSE PRECEDENT IS NOT CONTROLLING). Watch for oral argument April 30.

Copyright. Both cases deal with defenses to enforcement of copyright protection.

Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 946 (9th Cir. 2012), cert. granted, 134 S. Ct 50 (2013) (laches as a defense to damages incurred for the three-year period before suit is filed). The Copyright Act has a three-year statute of limitations, 17 U.S.C. 507(b). The Ninth Circuit found claims based on the 1980 film “Raging Bull” barred by laches. The other circuits are less receptive to this defense. AFFIRMED. DAMAGES AND INJUNCTIVE RELIEF ARE BOTH UNAVAILABLE FOR THE CONTINUING TORT ON THE FACTS PRESENTED. This case was argued Jan. 21.

American Broadcasting Companies, Inc. v. Aereo, Inc., 712 F.3d 676 (2nd Cir. 2013), cert. granted, 134 S. Ct. 896 (2014) (streaming a broadcasted video over the Internet so paid subscribers each subscriber receive transmission of a separate copy). The Second Circuit found no infringement of the public performance right. Both parties asked for review. Even the winner below wants to avoid the possibility of inconsistent decisions in other circuits. REVERSED. THE COURT WILL CONCLUDE CONGRESS DID NOT INTEND TO PERMIT THE “RUBE GOLDBERG” DESIGN ADOPTED TO AVOID INFRINGEMENT. STREAMING AND RECORDING ON DEMAND IS A PUBLIC PERFORMANCE. CONGRESS COULD AMEND THE STATUTE IF IT DISAGREES WITH THE COURT (WE ARE NOT ARROGANT ENOUGH TO TRY TO PREDICT CONGRESS — BE SERIOUS). Watch for oral argument April 22.

Trademark. Both cases involve false advertising under the Lanham Act.

POM Wonderful LLC v. Coca-Cola Co., 679 F.3d 1170 (9th Cir. 2012), cert. granted, 134 S. Ct. 895 (2014) (false advertising claims involving the labeling requirements of the Food Drug and Cosmetics Act). The Ninth Circuit found preemption. AFFIRMED. Watch for oral argument April 21.

Lexmark Int’l Inc. v. Static Control Components, Inc., 697 F.3d 387 (6th Cir. 2012), cert. granted, 133 S. Ct. 2766 (2013) (the test for standing to maintain a false advertising claim). The Ninth Circuit requires the plaintiff to be an actual competitor. Other circuits require antitrust standing. The Sixth Circuit and Second Circuit allow the plaintiff to sue if it has a “reasonable interest” in the case. AFFIRMED. THE COURT WILL ADOPT THE REASONABLE INTEREST STANDARD. This case was argued Dec. 3.

Only two of the nine remaining cases reversed. Not a smart bet? “Never tell me the odds.”[12]

Ray K. Harris practices in the area of commercial litigation, including trade secret, trademark, trade dress, computer software copyright, and other intellectual property protection matters. His representation of aerospace clients has included enforcement of patent and trade secret rights and licensing provisions related to IP. Reach Mr. Harris at rharris@fclaw.com.

Thomas A. Dougherty is a registered patent attorney who practices in all areas of intellectual property, and federal appeals. His practice includes international and domestic patent and trademark prosecution; inter partes reexaminations; portfolio management; freedom to operate, medical devices, general counsel services, M&A, and counseling for various clients and technologies. Reach Mr. Dougherty at tdougherty@fclaw.com

The opinions and views expressed by Featured Bloggers on CBA-CLE Legal Connection do not necessarily represent the opinions and views of the Colorado Bar Association, the Denver Bar Association, or CBA-CLE, and should not be construed as such.

 


[1] Eli Lilly & Co. v. Medtronic Inc., 496 U.S. 661 (1990); Cardinal Chemical Co. v. Morton, 508 U.S. 150 (1993); Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1995); Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996); Warner-Jenkinson Co, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); Pfaff v. Wells Electronics Inc., 525 U.S. 55 (1998); and Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999). See also Dickinson v. Zurko, 527 U.S. 150 (1999) (administrative burden of proof).

[2] Stewart v. Abend, 495 U.S. 207 (1990), Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340 (1991); Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994); Campbell v. Acuff-Rose Music Inc., 510 U.S. 569 (1994); Feltner v. Columbia Pictures, 523 U.S. 340 (1998); and Quality King Distributors Inc. v. L’anza Research Int’l Inc., 532 U.S. 135 (1998). See also Lotus Dev. Corp. v. Borland Int’l Inc., 116 S. Ct 804 (1996) (aff’d by an equally divided court); Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993) (copyright claim was immune from antitrust liability).

[3] Two Pesos v. Taco Cabana, Inc., 505 U.S. 763 (1992); Qualitex v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 527 U.S. 666 (1999).

[4] JEM Ag. Supply Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124 (2001) (patent alternative to plant variety protection act); Festo Corp. v. Shoketsu Kinzoku Kogyo Kubushiki Co., Ltd., 535 U.S. 722 (2002); Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002); Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005); Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006) (rule of reason antitrust analysis); eBay Inc. v. Merc-Exchange, LLC, 547 U.S. 388 (2006); MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007); KSR v. Teleflex, Inc., 550 U.S. 398 (2007); Microsoft Corp. v. AT&T Corp, Int’l Co., 550 U.S. 437 (2007); and Quanta Computer Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008).

[5] New York Times Co, Inc. v. Tasini, 533 U.S.483 (2001); Eldred v. Ashcroft, 537 U.S. 186 (2003); and Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).

[6] Wal-Mart Stores, Inc. v. Samara Bros., Inc. Co., 529 U.S. 205 (2000); TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003); Dastar Corp. v. 20th Century Fox Film Corp., 539 U.S. 23 (2003); and KP Permanent Make-Up Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004).

[7] Bilski v. Kappos, 130 S. Ct. 3218 (2010); Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011); Bd of Trustees of Leland Stanford Jr. Univ. v. Roche Molecular Systems, Inc., 131 S. Ct. 2186 (2011); Microsoft Corp. v. i4i Ltd. Partnership., 131 S. Ct. 2238 (2011); and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012). See also Kappos v. Hyatt, 132 U.S. 1690 (2012) (admissible evidence in administrative proceedings).

[8] Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010), and Golan v. Holder, 132 S. Ct. 873 (2012). See also Costco Wholesale Corp. v. Omega S.A., 131 S. Ct. 565 (2010) (aff’d by an equally divided court).

[9] Bowman v. Monsanto Co., 133 S. Ct. 1761 (2013); Gunn v. Minton, 133 S. Ct. 1059 (2013) (patent-related jurisdiction); Association for Molecular Pathology v. Myriad Genetics, 133 S. Ct. 2107 (2013); and FTC v. Actavis, Inc., 133 S. Ct. 2223 (2013) (reverse payment patent license antitrust analysis).

[10] Kirtsaeng v. John Wiley & Sons, 133 S. Ct. 1351 (2013).

[11] Already LLC v. Nike Inc., 133 S. Ct. 721 (2013).

[12] Han Solo to C-3PO, Star Wars: The Empire Strikes Back (1980).

Tenth Circuit: Prima Facie Case of Copyright Infringement Shown

The Tenth Circuit Court of Appeals published its opinion in Enterprise Management Limited v. Warrick on Tuesday, May 21, 2013.

In 1987, Mary Lippitt created and registered a diagram aimed to encapsulate and communicate the results of her research on the failures of complex organizational change initiatives. Sometime around 1996, Lippitt revised the diagram, and updated it slightly. Warrick, who teaches in the organizational development field, admitted receiving Lippitt’s diagram from a student. He incorporated and used a similar diagram in his course materials and in his consulting business. Although Warrick did not initially know Lippitt was the diagram’s creator, he later discovered this fact and began to credit her work at the bottom of his diagram.

Lippit sued Warrick for copyright infringement.  Warrick moved for summary judgment. As pertinent to this appeal, Warrick argued: (1) Lippitt could not prove she held a valid copyright on the diagram because she could not produce the diagram from the materials accompanying her 1987 registration to show its similarity to Warrick’s diagram. (2) Lippitt’s diagram was not copyrightable; and (3) Warrick’s diagram did not infringe on any protected expression in Lippitt’s diagram. After hearing arguments, the court granted Warrick’s motion. Lippit appealed.

On appeal, Lippitt contended she demonstrated a prima facie case of copyright infringement. The Tenth Circuit agreed.

There are two elements to a copyright infringement claim; a plaintiff must show both ownership of a valid copyright, and copying of protectable constituent elements of the work. La Resolana Architects, PA v. Reno, Inc., 555 F.3d 1171, 1177-78 (10th Cir. 2009). In construing the evidence in the light most favorable to the non-moving party, Lippitt, the Tenth Circuit found she demonstrated a prima facie case of both elements.

First, because there are many ways to express the ideas depicted in Lippitt’s diagram, the expression does not “merge” with the underlying ideas and were therefore eligible for copyright protection. Second, the Court saw protectable creative insight in Lippitt’s arrangement and choice of expression. Further, the parties’ arguments about the evidence of copying are perplexing because the parties seem to agree on the salient point: Warrick admitted he copied Lippitt’s diagram.

REVERSED and REMANDED.

So You Want to Self-Publish?

I’ve read some terrific books written by Colorado lawyers—fiction, non-fiction, and history books. Lawyers are a talented, creative group and many love to write as a hobby, writing even when spare time is limited—finding time at night and on the weekend to fulfill a passion. If you decide to take the plunge to publish a book or even several, it’s time to get serious. Getting a traditional publishing contract can be difficult, however, and self-publishing has become very popular in the past several years.

Jon Tandler, an attorney with Ryley, Carlock & Applewhite, practices corporate, intellectual property, and publishing law. He works extensively in the publishing industry, representing publishers, distributors, agencies, trade associations, authors, and others as to content acquisition, contracts, licenses, and other legal matters. Jon says that there are many considerations to self-publishing, including one that many people fail to do—creating a business plan. A business plan includes researching the market for your publication, setting a publishing schedule, finding assets, and researching sales and distribution channels.

On March 18, Jon is speaking on self-publishing at a CBA-CLE presentation. The program will be a practical tutorial on several business and legal aspects of self-publishing books and other literary content. He’ll also touch on the issue of plagiarism, which seems to be an increasing problem in the industry.

So, if you’ve seriously thought about self-publishing or just want more information, this seminar will provide some critical, concrete steps to take—before you start.

CLE Program: Self-Publishing—Business and IP—Important Things to Know Before You Start

This CLE presentation will take place on Monday, March 18, 2013, at 12:00 p.m. (noon). Click here to register for the live program, and click here to register for the webcast.

Can’t make the live program? Click here to order the homestudy.