Intellectual Property Law - July 2016

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In This Issue:

  • Supreme Court: Status Quo in Cuozzo
  • Supreme Court Clarifies Standard for Awarding Attorney's Fees
  • Are "Improvements" Key to Subject Matter Eligibility for Software Patents?
  • The Tale of a Recent Northern District IP Case
  • Report: Trademark Litigation Steady as Firms Protect Brands
  • In Brief—Updates and Interesting Items of Note

Supreme Court: Status Quo in Cuozzo

Why it matters: On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies v. Lee, where it rejected challenges to the Patent Trial and Appeal Board (PTAB) inter partes review (IPR) process and held that (1) PTAB decisions regarding whether to institute IPR proceedings are by statute not subject to judicial review, and (2) the rule promulgated by the U.S. Patent and Trademark Office (PTO) directing the PTAB to use the "broadest reasonable interpretation" construction standard in IPR proceedings is a reasonable exercise of its valid statutory rulemaking authority. In so ruling, the Supreme Court effectively approved the manner in which the PTAB has been conducting IPRs since the new post-grant review system became operational in 2012.

Detailed discussion: On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies v. Lee, where the Court affirmed the Federal Circuit in rejecting challenges to the Patent Trial and Appeal Board inter partes review process and held that:

  • Section 314(d) of the Leahy-Smith America Invents Act (AIA) bars Cuozzo's challenge to the PTAB's decision to institute the IPR proceeding, and
  • The PTO's regulation requiring the PTAB to apply the "broadest reasonable interpretation" construction standard to interpret patent claims is a reasonable exercise of the statutory rulemaking authority granted to the PTO.
  • Procedural history: See our coverage of the April 25, 2016 oral argument in Cuozzo in our June 6, 2016 newsletter for more detail, but to briefly review, on the first day the PTAB post-patent grant review process went into effect in September 2012, Garmin International, Inc. and Garmin USA, Inc. (collectively, Garmin) filed an IPR petition challenging three claims of a navigational patent held by Cuozzo Speed Technologies (Cuozzo). The PTAB granted the petition and instituted the IPR proceeding. The PTAB, applying the "broadest reasonable interpretation" claims construction standard to the claim phrase "integrally attached," invalidated Cuozzo's patent claims as obvious. Cuozzo appealed to the Federal Circuit, and although Cuozzo and Garmin settled their dispute, the U.S. Patent and Trademark Office intervened to defend the PTAB's decision. In February 2015, the Federal Circuit (with one judge dissenting) affirmed, holding (1) the PTAB properly applied the broadest reasonable interpretation standard and (2) the PTAB's decision to institute the IPR proceeding was not subject to judicial review. The Federal Circuit denied en banc review with a 6-5 vote, and Cuozzo filed a Petition for a Writ of Certiorari to the Supreme Court in October 2015. The Court granted certiorari and heard oral argument on April 25, 2016.

The Supreme Court's decision: The Court's opinion is divided into three parts and is detailed below. With respect to Parts "I" and "III," the Court said that its decision was unanimous. With respect to Part "II," all of the Justices joined with the majority, with one Justice (Thomas) concurring and two Justices (Alito, joined by Sotomayor) concurring in part and dissenting in part.

Part I: Justice Breyer began this part of the opinion with a review of the facts and procedural history of the case and an overview of the patent issuance and review process leading to the present day PTAB post-claim review proceedings established by the AIA. The Court noted specific provisions contained in the AIA that govern the way the PTAB should conduct IPRs, including specifically the language contained in Section 314(d) of the AIA that says that the PTAB's initial decision as to "whether to institute an inter partes review" is "final and nonappealable."

Part II: The Court's majority opinion, authored by Justice Breyer, held that the plain language of Section 314(d) was dispositive of the issue: "Like the Court of Appeals, we believe that Cuozzo's contention that the Patent Office unlawfully initiated its agency review is not appealable." The Court cited to legislative history, congressional intent and the language of similar provisions in the AIA and other patent statutes to support its conclusion. The Court specifically rejected the dissenting Justices' argument here that the "no appeal" provision should be limited to interlocutory appeals and that the decision whether to institute the IPR in the first place should be able to be included in any appeal of the final IPR decision. While recognizing the "strong presumption" in favor of judicial review in most cases, the Court said the presumption did not apply in this case where the statutory language and the legislative intent were so clear. The Court did limit the scope of its holding in this regard, however, stating that:

[W]e emphasize that our interpretation applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office's decision to initiate inter partes review. See §314(d) (barring appeals of "determinations . . . to initiate an inter partes review under this section' (emphasis added)). This means that we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond 'this section."

Looking to the facts of the case, the Court ended Part II by stating that "Cuozzo's claim that Garmin's petition was not pleaded 'with particularity' under §312 is little more than a challenge to the Patent Office's conclusion, under §314(a), that the 'information presented in the petition' warranted reviewWe therefore conclude that §314(d) bars Cuozzo's efforts to attack the Patent Office's determination to institute inter partes review in this case."

Part III: The Court next addressed and rejected Cuozzo's arguments that (1) the PTO lacked authority to issue its regulation requiring the PTAB to use the "broadest reasonable interpretation" construction standard when conducting IPRs and (2) the PTAB should be governed by the same "ordinary meaning" standard used by the district courts that was established by the Federal Circuit in Phillips for consistency.

The Court began by saying that the AIA "contains a provision that grants the Patent Office authority to issue 'regulations . . . establishing and governing inter partes review under this chapter. 35 U. S. C. §316(a)(4). The Court agreed with the Federal Circuit that this statute gives the Patent Office the legal authority to issue its broadest reasonable construction regulation."

The Court disagreed with Cuozzo that an IPR proceeding should be governed by the same "ordinary meaning" construction standard used by the district courts, stating that "[t]he problem with Cuozzo's argument . . . is that, in other significant respects, inter partes review is less like a judicial proceeding and more like a specialized agency proceeding" with different burdens of proof. The Court further pointed out that, unlike court proceedings, IPRs are reexaminations of PTO patent issuances that allow for a "second look" at that agency's prior issuance decisions. Furthermore, the Court said that neither the statutory language nor the legislative history of the AIA suggests that Congress ever considered what construction standard the PTAB should use in IPR proceedings and left it for the PTO to decide. While the Court acknowledged the validity of Cuozzo's argument that the use of different construction standards by the PTAB and the courts could lead to inconsistent results and cause confusion, it said that "[t]his possibility, however, has long been present in our patent system, which provides different tracks—one in the Patent Office and one in the courts—for the review and adjudication of patent claims. As we have explained above, inter partes review imposes a different burden of proof on the challenger. These different evidentiary burdens mean that the possibility of inconsistent results is inherent to Congress' regulatory design."

Once the Court found "an express delegation of rulemaking authority" to exist in this case, it next turned to the question of whether the PTO's regulation was a reasonable exercise of that rulemaking authority. The Court ruled that it was because (1) "construing a patent claim according to its broadest reasonable construction helps to protect the public" by encouraging the patent applicant to draft narrowly, and (2) "past practice supports the Patent Office's regulation. . . . The Patent Office has used [the broadest reasonable interpretation] standard for more than 100 years."

The Court concluded:

Finally, Cuozzo and its supporting amici offer various policy arguments in favor of the ordinary meaning standard. The Patent Office is legally free to accept or reject such policy arguments on the basis of its own reasoned analysis. Having concluded that the Patent Office's regulation, selecting the broadest reasonable construction standard, is reasonable in light of the rationales described above, we do not decide whether there is a better alternative as a policy matter. That is a question that Congress left to the particular expertise of the Patent Office.

See here to read the Supreme Court's 6/20/16 opinion in Cuozzo Speed Technologies v. Lee.

Supreme Court Clarifies Standard for Awarding Attorney's Fees

Why it matters: On June 16, 2016, the Supreme Court decided Kirtsaeng v. John Wiley and Sons, Inc., where it clarified the standard district courts should use when exercising discretion in awarding attorney's fees to prevailing parties in copyright suits under Section 505 of the Copyright Act (17 U.S.C. § 505). Specifically, the Court held that, when exercising its "broad" discretion as to whether to award attorney's fees under Section 505, a district court should give substantial weight to the objective reasonableness of the losing party's litigation position but must also take into account all other factors and criteria relevant to granting the fees.

Detailed discussion: On June 16, 2016, the Supreme Court handed down its decision in Kirtsaeng v. John Wiley and Sons, Inc., where it clarified the standard district courts should use when exercising discretion in awarding attorney's fees to prevailing parties in copyright suits under Section 505 of the Copyright Act (17 U.S.C. § 505). We covered the oral argument before the Court in our June 2016 newsletter. To briefly review, this is a return trip to the Supreme Court for these parties. In 2013, the Court reversed the Second Circuit Court of Appeals, holding that, as a result of the first sale doctrine, petitioner Supap Kirtsaeng (Kirtsaeng) did not infringe textbook copyrights owned by publisher John Wiley and Sons, Inc. (Wiley) when he imported cheaper international textbooks for resale in the United States. Subsequently, Kirtsaeng, as the prevailing party, attempted to recover more than $2 million in attorney's fees under Section 505. Both the district court and the Second Circuit denied Kirtsaeng's request because they gave substantial weight to Wiley's "objectively reasonable" infringement claims even though Wiley was ultimately unsuccessful.

The Supreme Court agreed to review the issue of the standard for awarding fees under Section 505 due to a multi-circuit split on how the statute should be interpreted. Section 505 provides in relevant part that a "court may ... award a reasonable attorney's fee to the prevailing party." In his writ petition and during oral argument, Kirtsaeng contended that the circuit split adversely affected the outcome of his fee award based solely on where he was originally sued. Specifically, Kirtsaeng argued that he would have (1) obtained his fees in the Ninth or Eleventh Circuit, because they only ask if the prevailing party's claim or defense furthered the interests of the Copyright Act; (2) been entitled to a rebuttable presumption in favor of recovering his fees in the Fifth or Seventh Circuits; and (3) likely obtained his fees in the Third, Fourth, or Sixth Circuits—which apply the four factors from the Supreme Court's 1994 Fogerty v. Fantasy, Inc. decision (i.e., frivolousness, motivation, objective unreasonableness, and considerations of compensation and deterrence). Kirtsaeng argued, he was denied his fees because he was sued in the Second Circuit, which applies the standard established in Matthew Bender & Co. v. West Publishing Co. that overly relies on the objective reasonableness of the losing party's litigation position in deciding whether to award fees to the prevailing party.

In a unanimous opinion authored by Justice Kagan, the Court held that, when a district court exercises its broad discretion as to whether to award attorney's fees based on the objective reasonableness of the losing party's position, it must also take into account all other factors and criteria relevant to granting the fees:

The question presented here is whether a court, in exercising… authority [to award attorney's fees under Section 505], should give substantial weight to the objective reasonableness of the losing party's position. The answer, as both decisions below held, is yes—the court should. But the court must also give due consideration to all other circumstances relevant to granting fees; and it retains discretion, in light of those factors, to make an award even when the losing party advanced a reasonable claim or defense.

In its analyses, the Court acknowledged the open-ended discretion and leeway the district courts have under Section 505 with no "precise rule or formula" for granting attorney's fees. The Court pointed to its 1994 Fogerty decision where it "established several principles and criteria to guide" the district courts' decisions under Section 505, all in accordance with the overarching principle of asking whether the award would serve to encourage litigation that would further the goals of the Copyright Act. The Court noted that Fogerty established two "restrictions" (i.e., (1) attorney's fees cannot be awarded as a matter of course and (2) prevailing plaintiffs and prevailing defendants must be treated the same) and " 'several non-exclusive factors' to inform a court's fee-shifting decisions: 'frivolousness, motivation, objective unreasonableness[,] and the need in particular circumstances to advance considerations of compensation and deterrence.' " However, the Court said that Fogerty purposely "left open the possibility of providing further guidance in the future, in response to (and grounded on) lower courts' evolving experience" with Section 505, and the Court stated that "[w]e join both parties in seeing a need for some additional guidance respecting [its] application."

The Court next specifically examined the "objective reasonableness" factor (as applied to the losing party's claims or defense) and found that it could be a substantial factor in assessing fee awards under Section 505 because it furthered the interests of the Copyright Act; however, it could not be the controlling factor. The Court looked to Second Circuit precedent, including Matthew Bender, and found that, while the district courts in that circuit are correctly instructed to give "substantial weight" to the objective reasonableness of the losing party's litigation position under Section 505, the language "at times suggests that a finding of reasonableness raises a presumption against granting fees, and that goes too far in cabining the district court's analysis." In addition, the Court said that some of the district courts in the Second Circuit "have overlearned" the lesson and have seemingly substituted the word "dispositive" for "substantial" in the weight given to the objective reasonableness factor. The Court concluded:

[F]or these reasons, we vacate the decision below so that the District Court can take another look at Kirtsaeng's fee application. In sending back the case for this purpose, we do not at all intimate that the District Court should reach a different conclusion. Rather, we merely ensure that the court will evaluate the motion consistent with the analysis we have set out—giving substantial weight to the reasonableness of Wiley's litigating position, but also taking into account all other relevant factors.

See here to read the Supreme Court's 6/16/16 opinion in Kirtsaeng v. John Wiley and Sons, Inc.

Are "Improvements" Key to Subject Matter Eligibility for Software Patents?

Why it matters: Do software claims that are directed to specific improvements in computer functionality have a greater chance of being found to be non-abstract and patent-eligible under Section 101 of the Patent Act? It would seem so, based on recent activity in the Federal Circuit and the U.S. Patent and Trademark Office (PTO). Read on for a discussion of two recent Federal Circuit cases—Enfish LLC v. Microsoft Corporation and In re: TLI Communications LLC Patent Litigation—and the guidance memo issued by the PTO to its examiners in response, that instructs software claims will more easily pass muster for patent eligibility if they relate specific improvements in the way a computer operates or functions.

Detailed discussion: On May 12, 2016, the Federal Circuit in Enfish LLC v. Microsoft Corporation held software claims to be patent-eligible under Section 101 of the Patent Act. This is notable because it was only the second time since the Supreme Court's 2014 decision in Alice Corp. v. CLS Bank (discussed below) where the Federal Circuit has done so. The Court's decision in Enfish turns on its finding that the software claims were directed to a "specific improvement in the way computers operate," rendering them non-abstract for Section 101 purposes. However, a week later, on May 17, 2016, the Federal Circuit in In re: TLI Communications LLC Patent Litigation reverted to norm and found the software claims before it to be directed to an abstract idea and patent-ineligible, distinguishing that case from Enfish because the claims did not sufficiently recite "a specific improvement in computer functionality." Two days later, on May 19, 2016, the PTO issued a memo to examiners in response to the Enfish and In re: TLI decisions that provided additional guidance for determining what constitutes an abstract idea in light of those cases, with specific attention given to "claims directed to improvements of existing computer technology or functionality." All of this seems to suggest that software claims will now have a better chance of being found to be patent-eligible by the PTO and the courts if they can be seen to offer specific improvements in the way a computer operates or functions.

Background: Alice Corp. v. CLS Bank

We discussed the U.S. Supreme Court's landmark 2014 decision in Alice Corp. v. CLS Bank decision in detail in our December 2015 newsletter under "Down the Rabbit Hole: Trends in Software Patent Court Decisions Post-Alice." In Alice, the Supreme Court held that claims for a software method for reducing financial-settlement risk performed by a computer were "drawn to a patent-ineligible abstract idea" under Section 101 of the Patent Act, and that "[m]erely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention." The Court established a two-step test for ascertaining patent eligibility under Section 101: (1) first, determine whether the claims at issue are directed to one of the "patent-ineligible" concepts of abstract ideas, laws of nature or natural phenomena; and (2) if so, determine whether any of the remaining elements, either alone or in combination with the patent-ineligible elements, contain sufficient "inventive concept" to transform the claim to become patent-eligible; in this regard the Court noted that simply applying an abstract idea on a generic computer is not enough for patent eligibility. In affirming the conclusion of patent ineligibility with respect to the specific facts before it , the Court urged the courts and agency tribunals to "tread carefully" going forward in construing inventions and innovations to be non-patent-eligible abstract ideas "lest [the exclusionary principles] swallow all of patent law." Many courts, however, have failed to heed the Supreme Court's words of caution. Indeed, the Enfish decision marks only the second time post-Alice (out of more than 20 cases) that the Federal Circuit has found software claims to be patent-eligible.

Enfish LLC v. Microsoft Corporation

To briefly recap the relevant facts, Plaintiff Enfish LLC (Enfish) sued Microsoft Corporation (Microsoft) and others in 2012 in California district court for infringement of software patents related to a self-referential "innovative logical model for a computer database." The district court granted summary judgment in favor of Microsoft because it found all of the software claims to be invalid as "directed to an abstract idea" under Section 101 of the Patent Act. The Federal Circuit reversed.

The Federal Circuit began its analysis by applying the two-prong Alice test to the facts of the case. Parsing the language of the first prong, the court stated that, because the Supreme Court had not established a "definitive test" for determining what constitutes an "abstract idea" under Section 101, "both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases." As an example of this, the court said that "fundamental economic and conventional business practices are often found to be abstract ideas, even if performed on a computer." The court next turned to the words "directed to" in the first prong, stating that those words require a "meaningful" inquiry. Rather, the court said, "the 'directed to' inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether 'their character as a whole is directed to excluded subject matter.' "

The Federal Circuit next turned to the Alice decision itself. Relevant here, the court said that in Alice "[t]he Supreme Court… suggested that claims 'purport[ing] to improve the functioning of the computer itself,' or 'improv[ing] an existing technological process' might not succumb to the abstract idea exception." While noting that the Supreme Court made this suggestion when applying the second prong of its test because it had already found the software claims in that case to be abstract ideas under the first prong, the court said:

We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.

Returning to the facts before it in Enfish, the Federal Circuit said that "[f]or that reason, the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." The court concluded that "the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity." Put simply, the claims were "directed to a specific improvement to the way computers operate," namely a "specific type of data structure designed to improve the way a computer stores and retrieves data in memory," and were thus non-abstract and patent-eligible.

In re: TLI Communications LLC Patent Litigation

One week later, on May 17, 2016, the Federal Circuit again addressed the issue of whether software claims were "directed to abstract ideas" under Section 101. In this case, the plaintiff TLI Communications LLC (TLI) sued multiple defendants, including Yahoo and Twitter, in 2014 in Virginia and Delaware district court claiming infringement of its patent "relating to a method and system for taking, transmitting, and organizing digital images." The district court granted the defendants' motion to dismiss, finding the software claims to be patent-ineligible under Section 101. The Federal Circuit affirmed, finding, after an application of the Alice test, that the claims were "directed to the abstract idea of classifying and storing digital images in an organized manner [that] fail to add an inventive concept sufficient to confer patent eligibility." The court distinguished its holding a week earlier in Enfish, stating that, unlike in that case, "the claims here are not directed to a specific improvement to computer functionality."

PTO guidance memo

On May 19, 2016, Robert W. Bahr, PTO Deputy Commissioner for Patent Examination Policy, issued a memo to examiners in direct response to the Federal Circuit's decisions in Enfish and In re: TLI. Bahr starts the memo by referring to the Enfish ruling, stating that "[w]hile the decision does not change the subject matter eligibility framework, it provides additional information and clarification on the inquiry for identifying abstract ideas (Step 2A of the subject matter eligibility examination guidelines)."

The memo went on to address the "several important points regarding the subject matter eligibility analysis" highlighted by the Federal Circuit in Enfish, "in particular regarding whether a claim is directed to an abstract idea (Step 2A)." The memo sets forth these important points for the examiners as follows: (1) "when determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision"; (2) "the 'directed to' inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept"; (3) a claim should not be described "at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention"; and (4) "an invention's ability to run on a general purpose computer does not automatically doom the claim."

The memo next told examiners that, in light of the holding in Enfish, they

… may determine that a claim directed to improvements in computer-related technology is not directed to an abstract idea under Step 2A of the subject matter eligibility examination guidelines (and is thus patent eligible), without the need to analyze the additional elements under Step 2B. In particular, a claim directed to an improvement to computer-related technology (e.g., computer functionality) is likely not similar to claims that have previously been identified as abstract by the courts.

Moreover, the memo continued, examiners should look to the "teachings of the specification" as the Federal Circuit did in Enfish to determine whether claims are directed to an improvement in computer technology, focusing on specifics such as whether "the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements." The memo also told examiners that an improvement can be defined by "logical structures and processes, rather than particular physical features," using as an example the Enfish claims which were "not ones in which general-purpose computer components [were] added after the fact to a fundamental economic practice or mathematical equation, but were directed to a specific implementation of a solution to a problem in the software arts." The memo acknowledged the Federal Circuit's In re: TLI ruling, which "closely followed" Enfish and came to the opposite conclusion about the software claims in that case, saying that it "provides a contrast between non-abstract claims directed to an improvement to computer functionality [as in Enfish] and abstract claims that are directed, for example, to generalized steps to be performed on a computer using conventional computer activity."

The memo concluded: "In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts. The fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas."

See here to read the 5/12/16 Federal Circuit opinion in Enfish LLC v. Microsoft Corporation et al.

See here to read the 5/17/16 Federal Circuit opinion in In re: TLI Communications LLC Patent Litigation.

See here to read the 5/19/16 guidance memo issued by the PTO to examiners entitled "Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC)."

The Tale of a Recent Northern District IP Case

Why it matters: The Northern District of California has recently overseen a high-profile, closely watched IP case. On May 26, 2016, the jury in Oracle America, Inc. v. Google, Inc. rejected Oracle's copyright infringement claims against Google (for which it sought $9 billion in damages) and found that Google's use of basic elements of Oracle's Java programming language to build its Android mobile operating system constituted fair use under federal copyright law. The Oracle judge affirmed the jury's verdict in a lengthy order issued on June 8, 2016. Oracle has indicated its intention to appeal. Read on for a recap.

Detailed discussion: Here, we review a recent high-profile IP case from the Northern District of California, which is almost certainly headed to the Federal Circuit on appeal.

Oracle America Corp. v. Google, Inc.

First, a brief recap of the relevant facts in this long-running litigation: In 2010, Oracle America, Inc. (Oracle) filed a $9 billion lawsuit against Google, Inc. (Google) in the Northern District of California alleging that Google's Android mobile operating system infringed Oracle's patents and copyrights related to 37 of its JAVA applied programming interfaces (JAVA Packages). At the conclusion of the first trial in 2012, with District Court Judge William Alsup presiding, a federal jury found that Google did not infringe Oracle's patents but did infringe Oracle's copyrights in the 37 JAVA packages. In addition, the jury deadlocked on Google's fair use defense (as to which Judge Alsup denied Oracle's motion for judgment as a matter of law). Shortly after the trial, Judge Alsup ruled that the replicated elements of the 37 JAVA packages—including the declaring code and the structure, sequence, and organization elements—were not subject to copyright protection. He thus vacated the jury's finding of copyright infringement with respect to the JAVA Packages and entered judgment in favor of Google.

Oracle appealed to the Federal Circuit, which reversed on May 9, 2014, reinstating the jury's finding of infringement with respect to the JAVA Packages and remanding the issue of Google's fair use defense to the district court for resolution in light of the Federal Circuit's opinion. The Supreme Court denied Google's petition for certiorari in 2015.

On May 26, 2016, after the conclusion of the second trial on remand, the federal jury returned a verdict that Google's use of basic elements of Oracle's Java programming language to build its Android mobile operating system constituted fair use under federal copyright law. On June 8, 2016, Judge Alsup issued a 20-page order again denying Oracle's motion for judgment as a matter of law on the issue of fair use and entered judgment in favor of Google.

In his order, the judge said that he believed it necessary to set the stage and "leave a few important observations" about the "charging" instructions on the law of fair use (including the four-factor test therefor) that the parties ultimately agreed could be presented to the jury and that Oracle was now challenging. Judge Alsup then addressed Oracle's "main" challenges to the jury's verdict by looking at the evidence presented at trial in light of the four-factor fair use test. While conceding that the jury could have gone either way on the issue, the judge concluded that the jury's verdict was reasonable in light of the evidentiary record in the case and denied Oracle's motion.

Report: Trademark Litigation Steady as Firms Protect Brands

Why it matters: Last month, a legal analytics firm released a report that tracks and analyzes statistics, metrics and trends across all trademark litigation filed in the U.S. District Courts from January 2009 through March 2016. The upshot: Trademark litigation continues to be an essential enforcement tool for companies to protect their brands.

Detailed discussion: In May 2016, legal analytics firm Lex Machina released its Trademark Litigation Report for 2016 (Report). The Report compiles statistics and "examines several important metrics (and their interactions) for trademark litigation in aggregate" across cases filed in the U.S. District Courts from January 2009 through the end of the first quarter of 2016. The charts included in the Report provide detailed coded statistics with respect to, among other things, case status (e.g., initial filings, updates and terminations), remedies, findings and judgments, and damages. The Report demonstrated that, over the relevant period, companies continued to rely heavily on trademark litigation as an effective enforcement tool to protect their—in many cases "luxury"—brands.

First, some key definitions: As used in the Report, a "Trademark Case" is defined as a case with one or more claims involving violations of the Lanham Act (the federal trademark statute) including for trademark infringement, trademark dilution, unfair competition or cybersquatting. This definition excludes cases with only state claims of infringement or unfair competition, trademark ownership disputes, and appeals from TTAB or USPTO decisions. The Report breaks out statistics for two primary subcategories of Trademark Cases, (1) Cybersquatting Cases, defined as "Trademark Cases involving claims of cyberpiracy prohibited under 15 U.S.C. § 1125 (d) of the Lanham Act"; and (2) False Advertising Cases, defined as "Trademark Cases involving claims of false advertising prohibited under 15 U.S.C. § 1125 (a)(1)(B) of the Lanham Act."

Here are some of the Report's highlights:*

District Court filing statistics:

  • Highest districts in overall Trademark Case filings: Central District of California (4,164), followed by Southern District of New York (2,142) and Southern District of Florida (1,659).
  • Top three districts for Cybersquatting Case filings: Southern District of Florida (486), Northern District of Illinois (429), and Central District of California (361).
  • Top three districts for False Advertising Case filings: Central District of California (785), Southern District of New York (389), and Northern District of Illinois (274).

Parties—top plaintiffs and defendants:

  • Top plaintiffs (by cases filed): Coach (730), Chanel (330), and Microsoft (203).
    • Last 5 quarters (1/1/15–3/31/16): Sream, Inc. (RooR water pipes) (55), Phoenix Entertainment Partners, LLC (karaoke licensor) (54), Chanel (47) and Coach (20).
  • Top defendants: National Football League and affiliates (548—majority related to dispute over use of former players' likenesses); Syngenta Seeds (184), Big Bad Limo Service (109), Amazon (66), and Walmart (59).
    • Last 5 quarters (1/1/15–3/31/16): Syngenta Seeds and its affiliates comprised the top 6 defendants sued (140).

Litigation breakdown:

  • Injunctions and other remedies: For Trademark Cases generally, approximate median time to obtain a (a) temporary restraining order—6 days, (b) preliminary injunction—1 month, and (c) permanent injunction—6 months. Research showed that Cybersquatting Cases tended to reach preliminary injunction at a slightly faster rate but False Advertising Cases tended to take longer to reach both preliminary and permanent injunction. Chanel, Tiffany, Louis Vuitton, Gucci, and Coach were among the most common parties to relinquishment of domain name actions.
  • Findings and judgments: Default judgments were entered at a high rate and accounted for 68.0% of all findings of Lanham Act violations. Equitable and fair use issues tended to be decided on summary judgment.
  • Damages: A vast majority of the damages awarded in Trademark Cases arose out of default judgments, with the remainder mostly arising from consent judgments. For decisions on the merits, juries awarded damages more frequently than judges.
    • Top three cumulative damage awards from all Trademark Cases: Chanel ($1 billion), Burberry ($523 million), and Gucci ($208 million).
    • Top three cumulative damage awards excluding damages from default or consent judgments: Coach ($66 million), PODS Enterprises ($60 million), and Neurovision Medical Products ($60 million).

*Information for period 1/1/093/31/16 unless otherwise indicated.

Overall, the Report provides useful insight into the current state of U.S. trademark litigation and the trends that are shaping it.

See here to read Lex Machina's "Trademark Litigation Report 2016."

In Brief—Updates and Interesting Items of Note

First lawsuits filed under the Defend Trade Secrets Act of 2016 (DTSA): Patentlyo.com reported that the first (of many more to come) lawsuits were filed under the newly enacted DTSA in the Southern District of Florida (two cases filed on May 16, 2016), the Northern District of Texas (one case filed on May 19, 2016), and the Northern District of California (one case filed on May 24, 2016). We covered the DTSA in our June 6, 2016 Newsletter under "Defend Trade Secrets Act of 2016: An Overview."

Other recent high-profile music copyright infringement lawsuits:

  • On June 8, 2016, a complaint for copyright infringement seeking $20 million in damages was filed against Ed Sheeren in the Central District of California by prominent songwriters who claimed that Sheeren's song "Photograph" copied a song they wrote that was recorded and released by an "X Factor" winner.
  • On May 26, 2016, a complaint for copyright infringement seeking unspecified damages was filed against Justin Bieber in the Middle District of Tennessee by a singer-songwriter who claimed that Bieber copied the "core" of his hit song "Sorry" from one of her songs. Also named in the complaint were the artist Skrillex and other collaborators and several Universal Music Group units.

New IP-related cert petition filed with Supreme Court—Commonwealth Scientific and Industrial Research Organization (CSIRO) v. Cisco Systems, Inc.: On May 25, 2016, CSIRO filed a petition for writ of certiorari asking the Court to review the question presented of "[i]s the Federal Circuit's promulgation of rigid legal rules to control the weight to be given by the trier of fact to evidence of patent infringement damages proper under 35 U.S.C. § 284?" Cert pending.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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JD Supra Privacy Policy

Updated: May 25, 2018:

JD Supra is a legal publishing service that connects experts and their content with broader audiences of professionals, journalists and associations.

This Privacy Policy describes how JD Supra, LLC ("JD Supra" or "we," "us," or "our") collects, uses and shares personal data collected from visitors to our website (located at www.jdsupra.com) (our "Website") who view only publicly-available content as well as subscribers to our services (such as our email digests or author tools)(our "Services"). By using our Website and registering for one of our Services, you are agreeing to the terms of this Privacy Policy.

Please note that if you subscribe to one of our Services, you can make choices about how we collect, use and share your information through our Privacy Center under the "My Account" dashboard (available if you are logged into your JD Supra account).

Collection of Information

Registration Information. When you register with JD Supra for our Website and Services, either as an author or as a subscriber, you will be asked to provide identifying information to create your JD Supra account ("Registration Data"), such as your:

  • Email
  • First Name
  • Last Name
  • Company Name
  • Company Industry
  • Title
  • Country

Other Information: We also collect other information you may voluntarily provide. This may include content you provide for publication. We may also receive your communications with others through our Website and Services (such as contacting an author through our Website) or communications directly with us (such as through email, feedback or other forms or social media). If you are a subscribed user, we will also collect your user preferences, such as the types of articles you would like to read.

Information from third parties (such as, from your employer or LinkedIn): We may also receive information about you from third party sources. For example, your employer may provide your information to us, such as in connection with an article submitted by your employer for publication. If you choose to use LinkedIn to subscribe to our Website and Services, we also collect information related to your LinkedIn account and profile.

Your interactions with our Website and Services: As is true of most websites, we gather certain information automatically. This information includes IP addresses, browser type, Internet service provider (ISP), referring/exit pages, operating system, date/time stamp and clickstream data. We use this information to analyze trends, to administer the Website and our Services, to improve the content and performance of our Website and Services, and to track users' movements around the site. We may also link this automatically-collected data to personal information, for example, to inform authors about who has read their articles. Some of this data is collected through information sent by your web browser. We also use cookies and other tracking technologies to collect this information. To learn more about cookies and other tracking technologies that JD Supra may use on our Website and Services please see our "Cookies Guide" page.

How do we use this information?

We use the information and data we collect principally in order to provide our Website and Services. More specifically, we may use your personal information to:

  • Operate our Website and Services and publish content;
  • Distribute content to you in accordance with your preferences as well as to provide other notifications to you (for example, updates about our policies and terms);
  • Measure readership and usage of the Website and Services;
  • Communicate with you regarding your questions and requests;
  • Authenticate users and to provide for the safety and security of our Website and Services;
  • Conduct research and similar activities to improve our Website and Services; and
  • Comply with our legal and regulatory responsibilities and to enforce our rights.

How is your information shared?

  • Content and other public information (such as an author profile) is shared on our Website and Services, including via email digests and social media feeds, and is accessible to the general public.
  • If you choose to use our Website and Services to communicate directly with a company or individual, such communication may be shared accordingly.
  • Readership information is provided to publishing law firms and authors of content to give them insight into their readership and to help them to improve their content.
  • Our Website may offer you the opportunity to share information through our Website, such as through Facebook's "Like" or Twitter's "Tweet" button. We offer this functionality to help generate interest in our Website and content and to permit you to recommend content to your contacts. You should be aware that sharing through such functionality may result in information being collected by the applicable social media network and possibly being made publicly available (for example, through a search engine). Any such information collection would be subject to such third party social media network's privacy policy.
  • Your information may also be shared to parties who support our business, such as professional advisors as well as web-hosting providers, analytics providers and other information technology providers.
  • Any court, governmental authority, law enforcement agency or other third party where we believe disclosure is necessary to comply with a legal or regulatory obligation, or otherwise to protect our rights, the rights of any third party or individuals' personal safety, or to detect, prevent, or otherwise address fraud, security or safety issues.
  • To our affiliated entities and in connection with the sale, assignment or other transfer of our company or our business.

How We Protect Your Information

JD Supra takes reasonable and appropriate precautions to insure that user information is protected from loss, misuse and unauthorized access, disclosure, alteration and destruction. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. You should keep in mind that no Internet transmission is ever 100% secure or error-free. Where you use log-in credentials (usernames, passwords) on our Website, please remember that it is your responsibility to safeguard them. If you believe that your log-in credentials have been compromised, please contact us at privacy@jdsupra.com.

Children's Information

Our Website and Services are not directed at children under the age of 16 and we do not knowingly collect personal information from children under the age of 16 through our Website and/or Services. If you have reason to believe that a child under the age of 16 has provided personal information to us, please contact us, and we will endeavor to delete that information from our databases.

Links to Other Websites

Our Website and Services may contain links to other websites. The operators of such other websites may collect information about you, including through cookies or other technologies. If you are using our Website or Services and click a link to another site, you will leave our Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We are not responsible for the data collection and use practices of such other sites. This Policy applies solely to the information collected in connection with your use of our Website and Services and does not apply to any practices conducted offline or in connection with any other websites.

Information for EU and Swiss Residents

JD Supra's principal place of business is in the United States. By subscribing to our website, you expressly consent to your information being processed in the United States.

  • Our Legal Basis for Processing: Generally, we rely on our legitimate interests in order to process your personal information. For example, we rely on this legal ground if we use your personal information to manage your Registration Data and administer our relationship with you; to deliver our Website and Services; understand and improve our Website and Services; report reader analytics to our authors; to personalize your experience on our Website and Services; and where necessary to protect or defend our or another's rights or property, or to detect, prevent, or otherwise address fraud, security, safety or privacy issues. Please see Article 6(1)(f) of the E.U. General Data Protection Regulation ("GDPR") In addition, there may be other situations where other grounds for processing may exist, such as where processing is a result of legal requirements (GDPR Article 6(1)(c)) or for reasons of public interest (GDPR Article 6(1)(e)). Please see the "Your Rights" section of this Privacy Policy immediately below for more information about how you may request that we limit or refrain from processing your personal information.
  • Your Rights
    • Right of Access/Portability: You can ask to review details about the information we hold about you and how that information has been used and disclosed. Note that we may request to verify your identification before fulfilling your request. You can also request that your personal information is provided to you in a commonly used electronic format so that you can share it with other organizations.
    • Right to Correct Information: You may ask that we make corrections to any information we hold, if you believe such correction to be necessary.
    • Right to Restrict Our Processing or Erasure of Information: You also have the right in certain circumstances to ask us to restrict processing of your personal information or to erase your personal information. Where you have consented to our use of your personal information, you can withdraw your consent at any time.

You can make a request to exercise any of these rights by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

You can also manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard.

We will make all practical efforts to respect your wishes. There may be times, however, where we are not able to fulfill your request, for example, if applicable law prohibits our compliance. Please note that JD Supra does not use "automatic decision making" or "profiling" as those terms are defined in the GDPR.

  • Timeframe for retaining your personal information: We will retain your personal information in a form that identifies you only for as long as it serves the purpose(s) for which it was initially collected as stated in this Privacy Policy, or subsequently authorized. We may continue processing your personal information for longer periods, but only for the time and to the extent such processing reasonably serves the purposes of archiving in the public interest, journalism, literature and art, scientific or historical research and statistical analysis, and subject to the protection of this Privacy Policy. For example, if you are an author, your personal information may continue to be published in connection with your article indefinitely. When we have no ongoing legitimate business need to process your personal information, we will either delete or anonymize it, or, if this is not possible (for example, because your personal information has been stored in backup archives), then we will securely store your personal information and isolate it from any further processing until deletion is possible.
  • Onward Transfer to Third Parties: As noted in the "How We Share Your Data" Section above, JD Supra may share your information with third parties. When JD Supra discloses your personal information to third parties, we have ensured that such third parties have either certified under the EU-U.S. or Swiss Privacy Shield Framework and will process all personal data received from EU member states/Switzerland in reliance on the applicable Privacy Shield Framework or that they have been subjected to strict contractual provisions in their contract with us to guarantee an adequate level of data protection for your data.

California Privacy Rights

Pursuant to Section 1798.83 of the California Civil Code, our customers who are California residents have the right to request certain information regarding our disclosure of personal information to third parties for their direct marketing purposes.

You can make a request for this information by emailing us at privacy@jdsupra.com or by writing to us at:

Privacy Officer
JD Supra, LLC
10 Liberty Ship Way, Suite 300
Sausalito, California 94965

Some browsers have incorporated a Do Not Track (DNT) feature. These features, when turned on, send a signal that you prefer that the website you are visiting not collect and use data regarding your online searching and browsing activities. As there is not yet a common understanding on how to interpret the DNT signal, we currently do not respond to DNT signals on our site.

Access/Correct/Update/Delete Personal Information

For non-EU/Swiss residents, if you would like to know what personal information we have about you, you can send an e-mail to privacy@jdsupra.com. We will be in contact with you (by mail or otherwise) to verify your identity and provide you the information you request. We will respond within 30 days to your request for access to your personal information. In some cases, we may not be able to remove your personal information, in which case we will let you know if we are unable to do so and why. If you would like to correct or update your personal information, you can manage your profile and subscriptions through our Privacy Center under the "My Account" dashboard. If you would like to delete your account or remove your information from our Website and Services, send an e-mail to privacy@jdsupra.com.

Changes in Our Privacy Policy

We reserve the right to change this Privacy Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our Privacy Policy will become effective upon posting of the revised policy on the Website. By continuing to use our Website and Services following such changes, you will be deemed to have agreed to such changes.

Contacting JD Supra

If you have any questions about this Privacy Policy, the practices of this site, your dealings with our Website or Services, or if you would like to change any of the information you have provided to us, please contact us at: privacy@jdsupra.com.

JD Supra Cookie Guide

As with many websites, JD Supra's website (located at www.jdsupra.com) (our "Website") and our services (such as our email article digests)(our "Services") use a standard technology called a "cookie" and other similar technologies (such as, pixels and web beacons), which are small data files that are transferred to your computer when you use our Website and Services. These technologies automatically identify your browser whenever you interact with our Website and Services.

How We Use Cookies and Other Tracking Technologies

We use cookies and other tracking technologies to:

  1. Improve the user experience on our Website and Services;
  2. Store the authorization token that users receive when they login to the private areas of our Website. This token is specific to a user's login session and requires a valid username and password to obtain. It is required to access the user's profile information, subscriptions, and analytics;
  3. Track anonymous site usage; and
  4. Permit connectivity with social media networks to permit content sharing.

There are different types of cookies and other technologies used our Website, notably:

  • "Session cookies" - These cookies only last as long as your online session, and disappear from your computer or device when you close your browser (like Internet Explorer, Google Chrome or Safari).
  • "Persistent cookies" - These cookies stay on your computer or device after your browser has been closed and last for a time specified in the cookie. We use persistent cookies when we need to know who you are for more than one browsing session. For example, we use them to remember your preferences for the next time you visit.
  • "Web Beacons/Pixels" - Some of our web pages and emails may also contain small electronic images known as web beacons, clear GIFs or single-pixel GIFs. These images are placed on a web page or email and typically work in conjunction with cookies to collect data. We use these images to identify our users and user behavior, such as counting the number of users who have visited a web page or acted upon one of our email digests.

JD Supra Cookies. We place our own cookies on your computer to track certain information about you while you are using our Website and Services. For example, we place a session cookie on your computer each time you visit our Website. We use these cookies to allow you to log-in to your subscriber account. In addition, through these cookies we are able to collect information about how you use the Website, including what browser you may be using, your IP address, and the URL address you came from upon visiting our Website and the URL you next visit (even if those URLs are not on our Website). We also utilize email web beacons to monitor whether our emails are being delivered and read. We also use these tools to help deliver reader analytics to our authors to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

Analytics/Performance Cookies. JD Supra also uses the following analytic tools to help us analyze the performance of our Website and Services as well as how visitors use our Website and Services:

  • HubSpot - For more information about HubSpot cookies, please visit legal.hubspot.com/privacy-policy.
  • New Relic - For more information on New Relic cookies, please visit www.newrelic.com/privacy.
  • Google Analytics - For more information on Google Analytics cookies, visit www.google.com/policies. To opt-out of being tracked by Google Analytics across all websites visit http://tools.google.com/dlpage/gaoptout. This will allow you to download and install a Google Analytics cookie-free web browser.

Facebook, Twitter and other Social Network Cookies. Our content pages allow you to share content appearing on our Website and Services to your social media accounts through the "Like," "Tweet," or similar buttons displayed on such pages. To accomplish this Service, we embed code that such third party social networks provide and that we do not control. These buttons know that you are logged in to your social network account and therefore such social networks could also know that you are viewing the JD Supra Website.

Controlling and Deleting Cookies

If you would like to change how a browser uses cookies, including blocking or deleting cookies from the JD Supra Website and Services you can do so by changing the settings in your web browser. To control cookies, most browsers allow you to either accept or reject all cookies, only accept certain types of cookies, or prompt you every time a site wishes to save a cookie. It's also easy to delete cookies that are already saved on your device by a browser.

The processes for controlling and deleting cookies vary depending on which browser you use. To find out how to do so with a particular browser, you can use your browser's "Help" function or alternatively, you can visit http://www.aboutcookies.org which explains, step-by-step, how to control and delete cookies in most browsers.

Updates to This Policy

We may update this cookie policy and our Privacy Policy from time-to-time, particularly as technology changes. You can always check this page for the latest version. We may also notify you of changes to our privacy policy by email.

Contacting JD Supra

If you have any questions about how we use cookies and other tracking technologies, please contact us at: privacy@jdsupra.com.

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