Speech on Intellectual Property for 2018 at the Annual Meeting of the Bar Association of Montgomery, County Maryland

Tomorrow I reprise my update on IP law at the Bar Association of Montgomery County, Maryland, which is the county adjacent Washington, DC. Lots to report, The Oil States patent case has introduced even more confusion into U.S. patent law. But the appointment and confirmation of the new Director of the USPTO, Andrei Iancu, offers some rays of hope. I also address recent events in copyright, trademark and trade secret. For those in the area, I hope that you can attend.

Here is the program: http://c.ymcdn.com/sites/www.barmont.org/resource/resmgr/temporary_newsletter_files/2018_annual_meeting_web_file.pdf

I am Chair of the IP Section. If you have any questions about IP or require assistance (I have both domestic and international clientele) please contact me.

http://www.rayvandyke.com vandyke@acm.org
My website is being updated so please excuse its primitiveness;)
Ray

Copyright and the Game of Thrones

The enormous popularity of HBO’s Game of Thrones has driven many into a frenzy.  Just as the Night King appropriated Daenerys Targaryen’s dead dragon for his own uses, many viewers think that GoT episodes should be freely available for their own uses.   The extraordinary value placed on these episodes resulted in hackers cracking into various protected systems to download them and even hold HBO for ransom.  Although the GoT mania has died down with the end of the short Seventh season, the mania nonetheless continues somewhat as we enter the doldrums until 2018 and the final season.

The incredible efforts to get the episodes are in spite of the large penalties in play.  The basic damages for copyright infringement (unauthorized copying) are between $750 to $30,000 per work.  In other words, if you hack into a system and then post a file for others, the damages could be immense, e.g., for 1,000 downloads multiple the above numbers by 1,000 to get a sense of the damage scale possible.  If a judge deems the copying willful, i.e., done on purpose and not accidental, the damages can be increased to $150,000 per work.  There is also the possibility that you will have to pay the content owner’s legal fees, and the owner may be able to seize and destroy whatever copies you have, as well as enjoin or stop you from future such copying.

In addition to the civil liability, infringers, whether small-time or mass infringers, may also be committing a felony or a misdemeanor.  A felony charge must involve an infringement of the copyright owner’s reproduction or distribution rights, two of the various copyright rights.  Further, a felony conviction carries a maximum sentence of five years in prison and a maximum fine of $250,000.  Even though there has been some leniency in the past for  individual pirating, there is still a  risk that you will be made an example.  The legal fees alone  for defending such suits are large, and, as indicated, you may be paying both sets of attorneys.

In relation to the GoT copyright craziness, here is a Consumer Reports article that cites me on the penalties.  https://www.consumerreports.org/televisions/the-risk-of-watching-pirated-game-of-thrones-episodes/  I recommend reading their other articles.

If you are accused of copyright infringement, consult an attorney to assess your situation.  If you are small fry, you may not be worth the legal effort.  However, if you go after very valuable content, such as GoT, and/or indulge in massive file sharing, you are more of a target and  the liability can be staggering.  As a computer scientist, I understand the thrill of hacking.  However, as an IP attorney helping people, whether innocent or guilty, out of the problems due to their pirating activities, all I can say is that some content owners are meaner than Cersei Lannister in protecting what is theirs.

 

 

Roberts Rules of Order

The Supreme Court has been quite active fine-tuning the patent system and deboning the law of the Federal Circuits for many years.  Today is no exception.

In Impression Products, Inc. v. Lexmark International, Inc.  (May 30, 2017), Chief Justice Roberts took to task the Federal Circuit’s take on the law of patent exhaustion, i.e., whether a patentee upon a sale retains any rights to the sold object.  In this case, Lexmark tried to prevent other companies, such as Impression, from refilling Lexmark printer ink toner cartridges.  Obviously, the printer ink business is quite lucrative and it is no surprise that this case made it to the Supreme Court.

The Federal Circuit had earlier held that Lexmark’s proscriptions on refilling were acceptable, whether the sales were within the United States or abroad (for import).  The nuanced, decades-old jurisprudence of the Federal Circuit held patent law in special regard vis-à-vis other areas of law, and permitted limited controls post-sale.

Back in 2013, the same issue arose in a copyright dispute.  The Court there held that the first sale doctrine extinguished a copyright holder’s rights.  In that case, Kirtsaeng v. John Wiley & Sons, Inc., Kirtsaeng sold Wiley textbooks printed in Thailand on eBay for U.S. students.  The large price differential between the prices in the United States and Thailand made the venture profitable, much to the chagrin of Wiley who sued him.

Just as in Kirtsaeng, the Court today said restrictions or conditions on resale or use constituted unlawful restraints on alienation.   Thus, Lexmark cannot predicate their refilling policy on patent law.  They can, of course, seek coverage under licensing, contract law or another approach.  To Chief Justice Roberts, the patentee upon selling the object has obtained the full measure of the patent right, i.e., no rights remain and the patent right is exhausted.

Justice Ginsburg, who dissented in Kirtsaeng, dissented here.  In her dissent, she made several cogent points.  First, the patent system is different from the copyright system, which has an explicit first-sale statutory provision – unlike patent.  Second, the territorial nature of the patent system and activities in global commerce suggest different handling.  Foreign activities have no bearing on the existence of U.S. patent rights.  Also, the patent laws differ between countries, unlike the more uniform copyright laws, making the first sale exhaustion argument for patent weaker.

Nonetheless, Lexmark and other patentees will now have to take care to obtain a fair price for their products at the time of sale.  Roberts Rules of Order for IP are straightforward: the patent bargain must honed further, and the rogue interpretations of the Federal Circuit must be stamped out.  It is rather odd that the Court regularly condemns the Federal Circuit, yet often has zero alternative interpretation.  The Alice and other recent cases simply held that they did not like the interpretation of the Federal Circuit, and no substitute was proffered.  Here, however, we have a clear directive: you sell a patented item and that is all you get for it.

Supreme Court Messes with Texas

The Supreme Court today decided a monumental case in patent law regarding venue, i.e., where a patent plaintiff can file a lawsuit.  TC Heartland LLC v. Kraft Foods Group Brands LLC (May 22, 2017).  For a few decades, the operative venue standard governing where patentees could sue a defendant was 28 U.S.C. 1391(c): ” a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.”  This broader “personal jurisdiction” standard was promulgated by the Federal Circuit’s interpretation of various Congressional amendments to this statute, which seemed to broaden venue over and above the more specific patent venue statute, 28 U.S.C. 1400(b).

In the case today, the Court discussed the law of venue from the Judiciary Act of 1789 through various Congressional changes to the venue statutes today.  The Court also cited Transmirra Prods. Corp. v. Fourco Glass Co., 233 F. 2d 885 (1956), where the Court expressly stated that the then 1391 statute did not supersede, augment or supplement the standalone 1400 statute, which exclusively governed patent cases.  Thus, the seminal Federal Circuit decision VE Holdings Corp. v. Johnson Gas Appliance Co., 917 F. 2d 1574 (Fed. Cir. 1990), which did just that, is now reversed, reflecting an ongoing trend of CAFC reversals.

The TC Heartland decision will greatly affect plaintiff patentee’s choices as to where to sue a defendant.  Indeed, under 1400(b), a company’s “residence” is their State of Incorporation,  which rather restricts the places to sue.  Plaintiff patentees will thus be less likely to file their infringement actions in the Eastern District of Texas, which over the last two decades or so has morphed into a haven for patentees, i.e., the juries in East Texas generally favor the patent system and patentees, driving the defendant corporations mad.

Time will tell how this new decision, on the backs of so many other Supreme Court narrowings of patent law, will impact the patent system.  Many corporations, desirous of insulating themselves from patent lawsuits, will continue their onslaught, via lobbyists and other means, to further derail the U.S. patent system.

Having practiced in the Great State of Texas (its legal name) many years ago, I can relate a humorous anecdote about the Eastern District courts.  In the 1970s and 1980s, the Texas federal courts, particularly in the Eastern District had specialized in personal injury (PI) cases.  With tort reform, however, these cases and the specialization of these courts became irrelevant.  So, the story goes that the courts there, as a means to perfect another area of specialization, focused on intellectual property, i.e., IP as opposed to PI;)  Perhaps the Eastern District will need to refocus again – with different letter acronyms.

Patent Damages Event Recap

As reported, the Greater Washington, DC Chapter of the Licensing Executives Society (LES) had a great Patent Damages Symposium on February 23, 2017.  Here is a link to some pictures from the event:  http://lesusacanada.site-ym.com/blogpost/1326845/269411/Patent-Damages-Symposium

Many thanks to the speakers and host firm, Sidley.

I and the DC Chapter of LES are planning for World IP Day, April 26, 2017, and for the LES Spring meeting here in Washington, DC.  We are planning a shindig for the evening of May 8th in connection with the Spring meeting.  Stay tuned.

Ray Van Dyke

vandyke@acm.org

Patent Damages Symposium in Washington, DC

On February 23, 2017 in Washington, DC, the Licensing Executives Society (www.les.org) is having a Patent Damages Symposium with prominent damages professionals and IP attorneys, including Krista Holt, CEO of GreatBridge Consulting, Inc, Ryan Morris, a partner at Sidley & Austin, Jennifer Vanderhart, PhD Economist and a Principal at Analytics Research Group, Robert L. Vigil, PhD,  Principal  at Analysis Group, Inc., and Raymond Van Dyke, Principal at Van Dyke Law.   We will talk about recent cases affecting patent damages, techniques for patent prosecutors to maximize damages and current trends in damages.

The link is http://www.lesusacanada.org/events/EventDetails.aspx?id=921187&group=160111

This meeting constitutes my additional efforts as the Greater Washington, DC Chapter Chair to promote the organization and otherwise help the IP profession and practitioners with practical programs.  For those in DC, Virginia and Maryland, please feel free to contact me if you have a speaker in mind or a topic that needs addressing. With the eclectic wants of the Greater DC membership, we have seen it all, and welcome more!  For those outside of the DC Metro area, thanks for reading about us!

If you have any suggestions or want to speak when you visit the area in future, please email me.  Conversely, I am open to invitations to speak elsewhere. Ray Van Dyke, 202.379.3903, vandyke@acm.org,  Greater Washington, DC Chapter Chair for LES, and Patent/IP practitioner.  http://www.rayvandyke.com

Ray Van Dyke Teaches Course on Intellectual Property at SMU

Next week at Southern Methodist University in Dallas, Texas, I reprise my course on intellectual property. Excerpts from the course description are set forth below and available online at  http://lyle.smu.edu/~matula/IPIT/

Dr. David Matula and I have taught the class since 2000, and I am honored to teach the class again on January 15 and 16, 2016. The Course is open to everyone and I hope to see those that can attend next week. Engineers, scientists, corporate and business people, faculty and students have praised the class, and 2016 will be no exception! My presentation includes all the basics on IP, current developments, and purposes of IP to our society (and the past).  For beginners, the class is a lively introduction to IP.  For those with some knowledge of IP, the materials offer a refresher with recent case law.

I hope to see you there!

Ray, vandyke@acm.org

COURSE DESCRIPTION

What is intellectual property? Why should I patent my innovation? How do I draft my claims?  This course will address the importance of technology and intellectual property in America, the fundamentals of patent, copyright, trademark and trade secrets for the lay person, and the real world application of those rights.

Fair use, open source, and alternatives will be described and interpreted.

Current developments and changes are also covered. In particular, the America Invents Act of 2011, the most monumental change to patent law since 1836, will also be discussed, and the significant effects on universities, small inventors and companies highlighted. Supreme Court, Legislation and other developments that affect these rights will also be covered in this popular and engaging presentation.

TOPICS TO BE COVERED BY THE COURSE INCLUDE:

  • History and Philosophy of Intellectual Property Rights and their role in the information age
  • Intellectual property’s impact on information system design and development
  • The inventor’s role in recognizing and protecting a patentable idea
  • Analysis of ground breaking industry patents
  • Impact of Emerging Technologies on Intellectual Property

DETAILS ON LOCATION AND CREDIT

Computer Science & Engineering Department

Bobby B. Lyle School of Engineering
Presents

 16th Annual Short Course on Intellectual Property and Information Technology

January 15 & 16, 2016:  Friday 9:am-5:pm, Saturday 9:am-1:pm

Palmer Conference Center for Engineering Leadership

Caruth Hall, Rm. 406

3145 Dyer Street, Dallas, TX  75205

Short course fee:  $200 (group rates available)

SMU Students:  Credit – one hour:  Register for CSE 5111/7111

Non-credit complimentary SMU student registration available (contact beth@lyle.smu.edu)

Any remaining questions? Contact me at vandyke@acm.org or visit my webpage at http://www.rayvandyke.com

Krista Holt to speak at LES DC

For those who read my blog the other day on the Alice decision, Alice Doesn’t Patent Here Anymore,  https://rayvandyke.com/posts/, I thank you.  At the September 17, 2015 Licensing Executives Society (www.les.org) meeting in Reston, Virginia, the Licensing Executives Society (www.les.org) prominent IP attorney and my friend Dale Lazar talked about the impact of Alice and what practitioners can do in the face of this tragedy.  It was quite informative – and to be revisited in a DC meeting this Fall.

The Virginia and recent Baltimore meetings constitute my further efforts as the Greater Washington, DC Chapter Chair to promote the organization and otherwise help the IP profession and practitioners with practical programs.  For those in DC, Virginia and Maryland, please feel free to contact me if you have a speaker in mind or a topic that needs addressing. With the eclectic wants of the Greater DC membership, we have seen it all, and welcome more!

For DC, the next meeting is September 30, when Krista Holt will talk about the ever-changing damages models. http://www.lesusacanada.org/chapters/usa/washington-dc-chapter/september-30-2015-washington-dc-chapter-meeting

In Virginia on October 1, Dale’s colleagues, James Heintz and Gianni Minutoli at DLA Piper, will talk about the ongoing controversies involving Inter Partes Review within the USPTO, and how practitioners can better represent their clients – hopefully avoiding the “Death Squads.” http://www.lesusacanada.org/chapters/usa/washington-dc-chapter/october-1-2015-washington-dc-chapter-meeting

Finally, in DC on October 21, former Deputy head at WIPO and prominent attorney James Pooley will talk of issues in trade secret law.  http://www.lesusacanada.org/chapters/usa/washington-dc-chapter/october-21-2015-washington-dc-chapter-meeting

For those outside of the DC Metro area, thanks for reading about us!  If you have any suggestions or want to speak when you visit the area in future, please email me.  Conversely, I am open to invitations to speak elsewhere.

Ray Van Dyke, 202.379.3903, vandyke@acm.org

Greater Washington, DC Chapter Chair for LES