Models v. Strip Clubs and the Lanham Act

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by Dennis Crouch

Rights to use a person’s Name-Image-and-Likeness or NIL generally fall within two categories of intellectual property: rights of publicity and rights of privacy.

  • Rights of publicity protect commercial value that a person has developed in becoming a celebrity.  Rights of publicity can also protect against resulting false impressions created by a seeming endorsement.
  • Rights of privacy can also protect against misappropriation of NIL — typically under the guise of an invasion-of-privacy claim.

The pending case of Gibson v. RPS Holdings LLC, 5:21-cv-00416 (E.D.N.C. 2023) involves a set of thirteen different professional models whose images were allegedly used without their permission to advertise for the Capital Cabaret, a strip club halfway between Raleigh & Durham, North Carolina.  None of the models have any history with the club.  Apparently, the club obtained photos of the models; and then edited them into advertisements for pubilcation on Facebook, Instagram and other online media.

One difficulty for professional models such as the plaintiffs here is that copyright the photographic images is typically held by the photographers, not the models.  But, modeling agreements also regularly include limited licenses regarding how (and for how long) the images will be used.

In Gibson, the plaintiffs have sued under both the Lanham Act and N.C. state law:

  • Section 43 of the Lanham Act, 15 U.S.C. § 1125(a)(1) for misrepresentation of sponsorship (False Advertising + False Association).
  • N.C. common law right of privacy – misappropriation.
  • N.C. Unfair & Deceptive Trade Practices.
  • N.C. Defamation.
  • Etc.

The case is moving forward and is at the close of discovery (March 31, 2023) with summary judgment motions due at the end of April.

Most recently, plaintiffs filed a motion to quash a subpoena seeking information on exactly how the attorneys “discovered, came across, learned of, and/or otherwise became aware of” the advertisements.  The motion argues that this information is protected by attorney client privilege as well as work product.  The defense argues that this information is important for its laches defenses.

I mentioned the copyright difficulty above. A second difficulty for the models in this case is that most rights-of-rights of publicity doctrines require focus on celebrity; and ask whether that person’s NIL is identifiable to the consuming public.  I have to admit that I don’t really know anything about the modeling industry, but I don’t believe think that these models are household celebrities. The ads from the strip club were not intended to indicate that these particular models support the club; rather, the intent was to provide a provocative image.

Of course the misappropriation of a completely anonymous face could not form the basis for a false endorsement claim, because consumers would not infer that an unknown model was ‘endorsing’ a product as opposed to lending her image to a company for a fee.

Bondar v. LASplash Cosmetics, No. 12-cv-1417, 2012 WL 6150859, at *7 (S.D.N.Y. Dec. 11, 2012) quoted in Electra v. 59 Murray Enterprises, Inc., 987 F.3d 233, 258 (2d Cir. 2021), cert. denied, 211 L. Ed. 2d 352 (Nov. 22, 2021).   The Carmen Electra case was also a suit by models against strip clubs with the models represented by the same law firm. (The Casas Law Firm).  In their denied petition for certiorari, the plaintiffs asked:

Must an individual prove they have a commercial interest in their identity, or must a person prove they are recognizable, publicly prominent, or a celebrity, to bring and sustain a claim under 15 U.S.C. § 1125(a)?

Petition.   The Electra case was decided by the 2nd Circuit.  However, other circuits have rejected the celebrity requirement as improperly grafted-onto the statute.

Is the Federal Circuit facing a Chronic Problem of Inequitable Conduct?

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Note from Crouch: I included “chronic” in the title of this post as a reference to an antiquated reference to marijuana, and did not intend to claim that this issue is one that the court is repeatedly facing. 

United Cannabis Corporation v. Pure Hemp Collective Inc., Docket No. 22-01363 (Fed. Cir. 2023)

This case is still pending before the Federal Circuit, but I found it interesting enough for a preview.

United Cannabis holds a broad marijuana patent – US9730911 – with claims directed to a liquid cannabinoid having 95% of either THC or CBD.

5. A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is tetrahydrocannabinol (THC).

10. A liquid cannabinoid formulation, wherein at least 95% of the total cannabinoids is cannabidiol (CBD).

In 2018, United Cannabis sued Pure Hemp for patent infringement and Pure Hemp responded with a Walker-Process antitrust counterclaim for asserting a patent known to be invalid.  The defendant also argued the patent should be held unenforceable due to inequitable conduct during prosecution.

The inequitable conduct claim was based upon a failure to provide material references to the USPTO as required under 37 CFR 1.56.  In particular, the Cooley LLP prosecuting attorney admitted to copying material from prior art into both the Abstract and the Detailed Description of the patent specification; but did not cite the reference within the patent document or disclose that reference to the USPTO for consideration.  Although not identical, the reference (Whittle – U.S. Pat. Pub. No. 2004/0033280) apparently disclosed a liquid with 88.9% CBD or 95% CBD+THC. So, quite close to what was claimed.  In deposition, the prosecuting attorney apparently explained that the copying was done to speed the process and save time – and is a recommended common practice.  It also turns out that the same law firm –  Cooley – represents GW-Pharma (the owner of the Whittle prior art) in patent prosecution.  And, Cooley attorneys had argued to the USPTO that GW Pharma invented a liquid formulation with 95% purity CBD.

The litigation ground to a halt in the midst of discovery when United Cannabis filed for bankruptcy.  But, the bankruptcy case was eventually dismissed based upon the illegal nature of the business venture (illegal at the Federal level).  At that point United Cannabis decided to drop its infringement case.  The parties jointly agreed that the patentee would dismiss its claims with prejudice, while the defendant dismissed its counterclaims without prejudice.

Although the merits had been resolved, the accused infringer was a bit upset for having to litigate the pointless lawsuit, and consequently filed a motion seeking attorney fees under 35 U.S.C. 285.  Section 285 allows the district court discretion to award reasonable attorney fees to the prevailing party in “exceptional cases.” In a terse opinion, the district court denied the fees motion: finding (1) the defendant was not the prevailing party because of the jointly-agreed dismissal and (2) the facts of the case were not shown to be “exceptional” since the dismissal occurred before the facts had been determined.

This case is now on appeal before the Federal Circuit. The patentee has admitted that the district court erred in its prevailing party analysis, but argued that the district court was correct to find that the case was not exceptional.  The appellant argues instead that the copying into the critical portions of the application: detailed description of the invention and abstract create an inference of both materiality and intent sufficient for an exceptional case finding.  For its part, the district court only provided a cursory analysis of these issues without delving into any of the evidence presented.  The briefing also argues that “Cooley attorneys also have a policy of withholding references until after the first office action, in direct contravention of patent office guidance.”  Still, in this case, the references were never submitted prior to issuance.  The brief goes-on to remark that “in academic circles, it is referred to as plagiarism.”  And, even without rising to the Therasense level of inequitable conduct, should be seen as creating an exceptional case.

James Gourley from Carstens & Cahoon argued on behalf of the defendant-appellant. (Brief).  Cooley’s Orion Armon argued on behalf of the Plaintiff-Appellee. (Brief).

What do you think: Do the facts as stated here create an exceptional case for the accused infringer?

Dir. Vidal on Privity and Real-Party-in-Interest in IPRs

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by Dennis Crouch

Samsung v. NetList, IPR2022-00615 (Dir. Rev. 2023)

USPTO Director Vidal has ordered the PTAB to expand its approach to the privity and real-party-in-interest (RPI) analysis at the start of inter partes review (IPR) proceedings.  The question in the Samsung case is whether Google should be considered an RPI or privy in a way that would bar Samsung’s IPR petition.

Back in October 2022, Samsung filed an IPR petition against Neglist’s US7619912; and the PTAB granted institution.  The patent covers a memory module, and Netlist previously sued Google for infringement back in 2009. That case is amazingly still pending in C.D.Cal.  The accused modules were supplied by Samsung, and Google at one point demanded indemnification from Samsung. Netlist agreed to stay the Google case in while awaiting the outcome of a parallel Samsung lawsuit that was filed more recently.

After the PTAB granted the IPR, Director Vidal quickly issued a sua sponte director review order and also ordered the PTAB to allow additional discovery into Google’s role.  Repeating precedent and rules already in place, Dir. Vidal has now ordered the PTAB to particularly consider the “extent to which Google has an interest in and will benefit from Samsung’s actions, and inquire whether Samsung can be said to be representing that interest after examining its relationship with Google.” Quoting with modification, Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018).  Further, the PTAB must also recognize that the notion of “privity” is a separate and distinct inquiry from that of RPI.  At times, a party may be in privity with the petitioner even if not a real-party-in-interest.

Statute of Limitations – One year Time Bar: An IPR petition has a clear deadline.  No IPR can be instituted if “the petitioner, real party in interest, or privy of the petitioner” had been sued for infringing the patent more than 1-year beforehand. 35 U.S.C. 315(b).   Based upon this statute, if Google is an RPI/Privy, then the IPR is time barred.

In this type of indemnification situation, it is easy for me to see the RPI/privity connection. But, the PTAB, at least originally, refused to see a connection.  Its basic idea is that Samsung’s indemnity agreement relieves Google of all liability — and therefore (despite being an accused infringer), Google has no interest in the outcome of the IPR.  It is really hard for me to wrap my head around this argument.  If I were being sued by a third party, I would be glad to have an indemnification agreement, but would be much more satisfied if the case were entirely dismissed.  A potential contract right is generally much less valuable than a final decision absolving liability.

Roundup Ready 2 Patent Litigation

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Bayer CropScience v. Pierce, et al. (E.D. Mo 2023)

Bayer and its subsidiary Monsanto have filed a new set of patent infringement lawsuits against farmers who saved seeds and replanted them in violation of Monsanto Roundup Ready patents and license agreements.  Monsanto’s original patents on genetically modified plants have all expired. But, the company now primarily sells Roundup Ready 2 – Xtend seeds for soybeans and cotton. And those new lines are covered by new patents. Here, the company has asserted United States Patent Nos 9,944,945  and 7,838,729.

  • The ‘729 patent has a 2007 priority date and claims plants genetically modified with a particular DNA sequence to express dicamba monooxygenase. This allows the plant to quickly catalyze and degrade the herbicide dicamba; thus allowing use of dicamba herbicide as an addition/alternative to glyphosate in the common situation involving herbicide resistant weeds.
  • The ‘945 patent has a 2005 priority date and claims a transgenic soybean plant modified with a gene that confers increased glyphosate tolerance so that more glyphosate can be used without harming the soybean.

Each of the six new infringement lawsuits infringe both patent infringement as well as breach of contract for saving and planting seed down in the Missouri Bootheel.

  • Bayer CropScience LP v. Robert O. Pierce, Docket No. 4:23-cv-00088 (E.D. Mo. Jan 25, 2023)
  • Bayer CropScience LP v. Danny Glass, Docket No. 4:23-cv-00087 (E.D. Mo. Jan 25, 2023)
  • Bayer CropScience LP v. Greg Duffy, Docket No. 4:23-cv-00086 (E.D. Mo. Jan 25, 2023)
  • Bayer CropScience LP v. Caleb Duffy, Docket No. 4:23-cv-00085 (E.D. Mo. Jan 25, 2023)
  • Bayer CropScience LP v. Michael Hodel, Docket No. 4:23-cv-00084 (E.D. Mo. Jan 25, 2023)
  • Bayer CropScience LP v. Brian G. Irions, Docket No. 4:23-cv-00083 (E.D. Mo. Jan 25, 2023)

I expect that Bayer will easily win these cases, but we’ll see. So far, none of the farmers have lodged an appearance in court.

How Does One “Use” Flowers?

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by Dennis Crouch

We all love flowers, but what is their real purpose, their “use.”  That was a key question the court faced when deciding In re WinGen LLC (Fed. Cir. 2023).

The utility patent at issue covers a petunia plant.  Here, the Federal Circuit has affirmed that the claims are invalid based upon a pre-filing trade-show display of the ornamental plant — holding that the display counted as a “public use.”  “The displaying of ‘Cherry Star’ … was … undoubtedly a use for its intended purpose: ornament.”

The inventors here used conventional plant breeding to create a new form of petunia (Calibrachoa).  WinGen first obtained a plant patent (PP23,232); followed by a utility patent that was filed as a continuation-in-part (US9313959). The claims require two components (1) a particular petal phenotype and (2) a particular genotype:

Petal Phenotype: at least one inflorescence with a radially symmetric pattern along the center of the fused petal margins, wherein said pattern extends from the center of the inflorescence and does not fade during the life of the inflorescence, and

Genetic Feature: a single half-dominant gene, as found in Calibrachoa variety ‘Cherry Star,’ representative seed having been deposited under ATCC Accession No. PTA-13363.

During the reissue, the patentee disclosed the potential invalidating prior use; admitting that the claimed variety was displayed at a private Home Depot event where wholesale growers displayed their wares.  Nothing was for sale at the event, no orders were placed, and attendees were not permitted to take samples or cuttings.  However, there was also no express or implied obligation of confidentiality binding individuals who attended.

The patentee argued that the display should not be considered a public use — it was only displayed — and not used.  One case on point is Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007).  In that Motionless Keyboard, the alleged prior use involved displaying the invention (a keyboard).  But there, the court found no public use because the keyboard was not hooked-up to a computer. Id.  The patentee also distinguished the old canard of Egbert v. Lippmann, 104 U.S. 333 (1881).  In Egbert, the Supreme Court premised its public use finding on the notion the inventor failed to maintain control over his invention — allowing someone to wear the corset around in public repeatedly over an extended time without any restrictions. See, Dey, L.P. v. Sunovion Pharms., Inc., 715 F.3d 1351 (Fed. Cir. 2013).  Here, however, the flower was kept in the control of the patentee despite being displayed.

In distinguishing these cases, the Federal Circuit looked to the purpose of the invention.  The oddity of this utility patent is that it claims an ornamental plant.  Although the claims were not challenged on Section 101 utility grounds, the Federal Circuit still considered the plant’s utility as it fed into the “public use” bar of Section 102.  And without fanfare, the court concluded that its purpose was ornamentation; that a display of the plant counts as ornamentation; and therefore the plant was in public use.

Although the court indicates that this situation (ornamental use of a utility patent) is a unique question of first impression, the court inexplicitly issued its decision as non-precedential. Perhaps the court simply did not want to make law based upon a logical paradox. Further, the Federal Circuit’s justification was not found in the USPTO brief in the case. Rather, the USPTO asked for a simple rule that a public use follows from display of the complete invention in a commercial setting and without any secrecy limitations.  But public display is not enough for a finding of traditional public use.

The patentee had also argued that its continued control over the plant meant that nobody at the Home Depot event could have learned of the genetic feature claim limitation.  On appeal, the Federal Circuit did not consider that argument – finding that the argument had been forfeited because it was not meaningfully presented to the lower tribunal.

The patentee told the court in briefing and at oral arguments that the claims cover an ornamental plant.  Those admissions allowed the court to rely upon that conclusion in its decision.  Here, the real utility might be found in the specification (and deposit) that provide guidance on how to grow the plant.

Note that this was a pre-AIA case.  The AIA now includes an additional catch-all “otherwise available to the public” that presumably makes it easier to show that certain public showings ‘count’ as prior art.

Trademark Registration: 100% THAT BITCH

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by Dennis Cxrouch

In re Lizzo LLC (TTAB 2023)

In a new precedential opinion, the TTAB has sided with the musical artist Lizzo — agreeing to register her mark “100% THAT BITCH” for use on apparel.  The Trademark Examining Attorney had refused registration on “failure-to-function” — concluding that the phrase was a commonplace expression used to express a well-recognized sentiment.

The phrase comes from Lizzo’s 2017 song Truth Hurts (remade in 2019) that has become a viral sleeper hit.  The original line in the song is “I just took a DNA test, turns out I’m 100% that bitch.” But Lizzo herself did not create the phrase. Rather, Lizzo apparently saw a social media meme about being 100% that bitch and then added it to her song.  The examining attorney concluded that “evidence that consumers may associate the phrase with the famous singer/song because it was a lyric in the singer’s song does not entitle the applicant as a singer-songwriter to appropriate for itself exclusive use of the phrase.”

On appeal, the TTAB reversed the refusal.  Unlike patents and copyrights, trademark law is not designed to reward the creative endeavor of invention or authorship.  Rather, trademark is designed as a consume-protection and market-function tool and so focuses on consumer perception.  Here, the evidence suggests that the mark is being used in an ornamental fashion (rather than as simply words) and that ordinary consumers associate the mark with Lizzo.  Even though she didn’t create the words – she is the one who made them popular and transformed the “lesser known phrase to more memorable status.”  On those grounds, the TTAB concluded that the mark is registrable and thus reversed the denial.

A few years ago the mark would have also been rejected as scandalous, but that issue has been off the table since the Supreme Court’s FUCT decision.

Read the TTAB Decision here: Lizzo TTAB Decision

 

 

Upcoming Supreme Court Oral Arguments in IP & Tech Cases

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by Dennis Crouch

The Supreme Court will be handling some significant cases over the next few months that may have a major impact for folks working in IP & Tech fields. The following is brief list sorted by the date of oral arguments.

  • Feb 21 – Gonzales v. Google (Does the safe harbor of CDA Section 230 shield Google from liability for encouraging users to view offending videos).
  • Feb 22 – Twitter v. Taamneh (Can Twitter be held liable for providing a service that aids and abets terrorism, despite its substantial non-violative uses).
  • March 21 – Abitron v. Hetronic (Extraterritorial application of US Trademark Law — damages from foreign sales).
  • March 22 – Jack Daniels v. VIP (Commercial humor leading to fair use or no-infringement/dilution in the TM context)
  • March 27 – Amgen v. Sanofi (Full Scope Enablement: How much description is enough to satisfy the enablement requirement).
  • April 17 – Slack v. Pirani (For securities liability, what causal link is required between misleading statement and the purchase of shares).
  • April 18 – Groff v. DeJoy (Should Title VII of the Civil Rights Act be given more teeth to protect religious liberty in the employment context).
  • April 19 – Counterman v. Colorado (When does speech rise to a “true threat”, unprotected by the First Amendment.  Here, it was a series of unsolicited Facebook direct messages.  The question is whether his intent (mens rea) matters, or can he be convicted based only upon the reasonably perceived threat of the recipient.).
  • April 24 – Dupree v. Younter (If SJ is denied on a question of law, must the party reassert the issue in JMOL in order to preserve the issue for appeal. Although not a patent case, this issue comes up all the time in patent litigation).
  • April 25 – Yegiazaryan v. Smagin (When can an injury to a foreign plaintiff’s “intangible property” serve as the basis for a RICO claim).

Transfer Venue: Texas Corp Status Given No Weight

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In re Google LLC (Fed. Cir. 2023)

This is another mandamus action win by Google on convenience grounds. The Federal Circuit has ordered the case moved out of the Western District of Texas (Waco) to the Northern District of California.

Jawbone Innovations, LLC sued Google for patent infringement back in 2021 in W.D.Tex. (Waco).  Jawbone is a Texas company and has a physical base in Waco. But, as the court noted, the company was formed only a few months before the lawsuit was filed.  Some of you may own Jawbone headphone/speaker products.  The operating company closed in 2017, and Jawbone Innovations is a resulting patent-holding company.

As usual, Google moved to transfer its case out of the W.D. Tex.  Judge Albright reviewed and rejected the transfer motion and Google immediately petitioned for mandamus.  The Federal Circuit has now granted mandamus and ordered the case transferred.

Although the appellate court stated that it provided deference to Judge Albright’s decision, it ultimately rejected his analysis.  I note a couple of the issues below:

  1. Time to Trial: The appellate panel indicated that the likelihood of a speedy resolution in one jurisdiction versus another should not be given any regard in the convenience analysis unless the parties particularly justify why a speedy trial is important. Here, the court held that Jawbone clearly has no urgency to resolve the case since it is a non-practicing entity.  As such, the fact that W.D.Tex. may resolve the case faster than N.D.Cal. should be given no consideration.  This result appears problematic to me in general.  Although there is no Constitutional right to a speedy trial in patent cases,
  2. P is a (new) Texas Corp: The district court gave substantial weight to the fact that Jawbone is a Texas company and has an office in Waco near the Courthouse.  The Federal Circuit rejected that analysis — finding instead that Jawbone has no meaningful presence in the district.  Further, the claimed presence appears a transparent effort to manufacture facts favorable for this sort of venue challenge.

In addition to Google’s accused infringing design work being done in N.D.Cal., an important factor in this case is that the underlying Jawbone inventions were also created in N.D.Cal.; and that is the location of the former Jawbone decision-makers and prosecuting attorneys.

As I’ve written before, I expect Google’s true reason for asking for transfer is not primarily based upon any of the convenience factors. Rather Google is concerned that it is more likely to receive a harsh outcome in Texas from Judge Albright than it would before one of the N.D. Cal. Judges in Silicon Valley.

Cancelling a Patent Claim

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by Dennis Crouch

The pending case of Jump Rope Systems v. Coulter Ventures is fascinating to me as someone who teaches both property and civil procedure. The basic questions: (1) As an inter partes review (IPR) proceeding draws to a close – toward cancellation – at what point are the claims no longer enforceable? (2) What is the effect of cancellation, in particular, is it like canceling a magazine subscription where the former subscriber isn’t off the hook for past-due bills; or, is it like an annulment – an Ab Initio Extinguishment?  The case also (3) raises a straight-up due process challenge to the IPR system.

A typical IPR where the petitioner prevails includes the following three-step sequence:

  1. Unpatentable Decision: PTAB issues a final written decision concluding that the challenged claim has been proven unpatentable with a preponderance of the evidence.
  2. Affirmed on Appeal: On appeal, the Federal Circuit affirms that judgment.
  3. Certificate of Cancellation: Once the appeal is complete, the USPTO Director then issues a certificate canceling the claim. 35 U.S.C. 316.

The first question — if the patentee is involved in concurrent district court infringement litigation, at what step is the patent no longer enforceable?

Clearly, the patent claim is canceled at Step-3 and by that point cannot be enforced going forward. The Federal Circuit though has held that the claim is already unenforceable at Step-2 based upon the court’s questionable application of collateral estoppel.   I call it questionable because of the different standards  of proof applied in the PTAB vs the District Court.  The affirmed PTAB decision found the claim invalid with a preponderance of the evidence.  But, in district court litigation invalidation requires clear and convincing evidence, a substantially higher standard. And, a conclusion of invalidity under a lower standard does not conclusively tell us that the same claim would have been proven invalid under a higher standard.  Using a standard approach such as found in the Restatement (Second) of Judgments, collateral estoppel would not apply here because of the difference in standards.  Here, we tend to use an exacting standard for res judicata principles because of their due process implications — the result bars a party from making their argument in court.  The Federal Circuit’s fudging of the rule makes some practical sense – the statute appears to make the issuance of the cancellation certificate a ministerial process with its “Director shall” language.  And yet, fudging the rules in a way that undermines due process is troubling.  I’ll note here that courts appear to generally be waiting for the appeal decision before announcing preclusion, although it is unclear whether that approach is somehow required or simply prudential (since district courts generally see the Federal Circuit as unpredictable).  I’ll also note that I previously called out the Federal Circuit for improper expansion of preclusion law with regard to the Kessler Doctrine – they did not listen to me there either.

The second question at issue in Jump Rope Systems involves the impact of cancellation — what about infringement that occurred (and lawsuits pending) prior to the cancellation?

The reissue system is a somewhat-close relative to inter partes review and has the benefit of 150 years of case law, including numerous Supreme Court decisions.  With reissues, courts have clearly held that cancellation of claims during reissue render those claims entirely moot.  See, for instance, Moffitt v. Garr, 66 U.S. 273, 283 (1861) and Meyer v. Pritchard, 23 L. Ed. 961 (1877).  But, the reissue system has a significant difference — a reissue begins with a patentee surrendering its patent as required by statute. 35 U.S.C. 251.  It is that surrendering that makes the cancellation of claims in a reissue so dramatic.

With inter partes review, the patentee does not surrender the patent and so we have a potentially different situation.  Still, courts have regularly treated cancellation of claims as voiding the claims backward and forward through time.  But, it is not so clear that approach is correct and there are many situations where the courts have given “cancel” to only prospective effect.  In its briefing, Jump Rope cites a long string of cases in various areas of law as well as simple plain meaning of the word:

Plain English is in accord. “Canceling” a magazine subscription stops future deliveries, but past issues remain in hand.

Jump Rope Reply Brief. If Jump Rope wins on this, an IPR petition that cancels claims would only cut-off prospective damages and injunctive relief.  The patentee could still recover pre-cancellation damages so long as the defendant failed to prove the claims invalid in district court at the higher standard.

= = =

The briefing also includes an important due process challenge — arguing that the use of IPRs to prevent infringement lawsuits violate due process.  In Oil States, various the patentee raised various challenges to the system, but did not bring a due process challenge. Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365 (“We emphasize the narrowness of our holding. . . . Oil States [has not] raised a due process challenge.”).

Here, the patentee makes two arguments:

  1. “First, front-line adjudicators are not sufficiently insulated from political forces. United States v. Arthrex, Inc., 141 S. Ct. 1970, 1993 (2021) (Gorsuch, J., concurring in part & dissenting in part) (‘The Court’s decision in Oil States allowing executive officials to assume an historic judicial function was always destined to invite familiar due process problems. . . . [P]owerful interests are capable of amassing armies of lobbyists and lawyers to influence (and even capture) politically accountable bureaucracies.’) (citations and internal quotation marks omitted).”
  2. “Second, by not permitting traditional live cross-examination of witnesses
    (instead, relying on written depositions), IPR procedures violate due process in view of the importance of the property right at issue. See Goldberg v. Kelly, 397 U.S. 254, 269 (1970) (‘In almost every setting where important decisions turn on questions of fact, due process requires an opportunity to confront and cross-examine adverse witnesses.’)”

Great questions from petitioner.

Robert Greenspoon (Dunlap Bennett) is counsel for the patentee Jump Rope Systems. Louis DiSanto (Banner Witcoff) is representing the accused infringer Coulter Ventures.   Their offices are a few blocks apart in downtown Chicago.

Federal Circuit Dataset & Stats: January 2023 Update

Patent

By Jason Rantanen

It’s time for the January 2023 Federal Circuit statistics update! As I’ve done for the last few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, an open-access dataset that I maintain that contains information on all Federal Circuit decisions and docketed appeals.  While previous versions of the dataset have been limited to merits decisions, this year we began including non-merits terminations as well.  Currently, all non-merits terminations from 2022 are included in the dataset.  We’ll be working backwards to add terminations from earlier years.

One of my goals with this dataset is to make it publicly accessible so that anyone can use it in their own research. A complete copy of this year’s release is archived at https://dataverse.harvard.edu/dataverse/CAFC_Dataset_Project.  In addition, you can access the dataset through a user interface via https://empirical.law.uiowa.edu and generate your own subsets and graphs. A copy of the codebook is available at these locations as well. In addition, if you are a researcher who would like help using the dataset, please reach out to me – I’m happy to help out.

Onto the data!

Decision Numbers and Origins

Figure 1

Figure 1 shows the number of Federal Circuit opinions and Rule 36 summary affirmances by origin since 2010. These represent individual documents (i.e.: a single opinion or Rule 36) rather than docket numbers (which is how the Federal Circuit reports its metrics).

Once again, the highest number of merits decisions arose from the PTO. Overall, however, there was a substantial drop in the number of merits decisions: 532 in 2022, as compared with 643 in 2021.  Decisions from all origins actually dropped slightly, but the biggest drop was in the number of decisions arising from the PTO was the main reason: 147 in 2022 as compared with 216 in 2021. The direct cause of fewer decisions isn’t a mystery: as shown below, there was a big drop in appeals docketed at the Federal Circuit in 2021. Fewer appeals means fewer appellate decisions.

Opinions vs. Summary Affirmances

Figure 2

Figure 2 shows the number of opinions versus Rule 36 summary affirmances arising from the District Courts and PTO. In terms of absolute numbers, the court issued the fewest Rule 36 summary affirmances in appeals arising from these origins in several years.  In relative terms, 21% of the decisions arising from the district courts were disposed of through a summary affirmance while 42% of the Federal Circuit’s decisions arising from the PTO were summary affirmances.

What about the type of opinion that the court is issuing? For precedential opinions, Figure 3 shows that this is one area in which things are about the same as last year: the court issued slightly more precedential decisions arising from the district courts than in 2021 (52 vs. 47), and slightly fewer precedential decisions arising from the district courts (29 vs. 33). Rather, the drop in decisions arising from the PTO mostly manifested in terms of fewer nonprecedential opinions.

Figure 3

What about compared to the court’s overall decisions?  The number of precedential opinions issued by the court in 2022 was almost exactly the same as in 2021: 162 in 2022 as compared with 164 in 2021. But it is a drop from 2014-2020. (Note that this figure does not include Rule 36 summary affirmances).

Figure 4

General dispositions

Figure 5

In contrast with 2021, at which the Federal Circuit affirmed district court decisions relatively frequently (79%), in 2022 the court affirmed-in-full in appeals from the district courts just 57% of the time. Even including partial affirmances, the rate was lower than in recent years: it affirmed in full or part just 75% of the time. (The purple line indicates the average 68% affirmance rate over the 12-year time period). As a reminder, these graphs do not include petitions for writs of mandamus. In contrast, the court continued to affirm the PTO’s decisions at about the same rate as it has in recent years, affirming in full in 78% of its decisions.

Docketed Appeals

Figure 6 shows the number of docketed appeals by origin. These are are appeals filed at the Federal Circuit — the precursor to any decisions.  As Figure 6 shows, there was a substantial drop-off in appeals filed in 2021, followed by an increase in appeals filed in 2022, especially in appeals from the district courts (339 appeals filled in 2022 as compared with 286 appeals in 2021) and from the PTO (489 appeals filed in 2022 as compared with 402 appeals filed in 2021). Given what happened in appeals this year, I’d expect an increase in Federal Circuit decisions in 2023, recognizing that it takes about 13 months on average from filing to decision.

Figure 6

In addition to providing a picture of what’s being filed at the Federal Circuit, the docket dataset also allows us to match up the Federal Circuit decisions to other datasets of district court and PTO data, such as the USPTO Patent Litigation dataset and the Stanford NPE Litigation Dataset. If you’re interested in doing a deep dive into these areas, my research team and I used this data in a few papers this year:

Miscellaneous Dockets

One category of data that is not included in the above graphs is the data on petitions for writs of mandamus and petitions for permission to appeal. As in past years, nearly all of the miscellaneous matters consisted of Petitions for Writs of Mandamus, with a few Petitions for Permission to Appeal.  Figure 7 shows the numbers of dispositions of petitions for writs of mandamus over time.

Figure 7

In 2022, the court granted in whole or part 11 petitions for a writ of mandamus; fewer than 2021 (18), but at just as high a rate (42%). As in past years, the grants arise exclusively from petitions arising from the district courts.   Jonas Anderson, Paul Gugliuzza & I talk about this in more depth in Extraordinary Writ or Ordinary Remedy: Mandamus at the Federal Circuit, 100 Wash. U. L. Rev. 327 (2022)  

Additional terminations

Beginning in February 2022, the Federal Circuit began making all terminations of appeals available on its website. This is a terrific decision and is responsive to concerns about “missing” decisions that Merritt McAlister and I have each written about. That said, as I wrote about in my examination of the Federal Circuit’s decisions, the Federal Circuit has historically done a pretty good job most making merits decisions (i.e.: “Opinions” and “Rule 36” summary affirmances) available on its website, so many of these additional terminations consist of appeals that are dismissed pursuant to Federal Rule of Appellate Procedure 42(b). I supplemented what was on the court’s website with a collection of the additional January and February 2022 terminations from PACER, so all of the terminations for 2022 are in there.

Using data about these decisions, I was able to put together a graph showing how these appeals were disposed of. This graph differs a bit from the Federal Circuit’s own statistics because it’s by document rather than docket number, and (2) it is for the calendar year rather than the fiscal year. The purpose is to provide a sense of what happens to appeals other than those that result in merits decisions.

Figure 8

Close to 2/3rds of appeal terminations occurred in the context of an opinion (49%) or Rule 36 summary affirmance (14%). Most of the remainder were dismissals (32%). Of the dismissals, 63% were voluntary withdrawals (generally under to FRAP 42(b)). The remaining dismissals are for a variety of reasons, but typically due to a failure to prosecute the appeal, failure to appeal within the relevant time period, or lack of appellate subject matter jurisdiction.

To download the data for yourself, visit the dataverse or go to http://empirical.law.uiowa.edu. I’ve also saved a copy of my Excel workbook with the graphs on the Dataverse archive. It contains the specific parameters that I used to generate these graphs.

Three New Supreme Court Cases:

Patent

by Dennis Crouch

  1. Vidal v. Elster.  Elster is seeking to register the mark TRUMP TOO SMALL, but was initially rebuffed because the law prohibits registration of a mark consisting of the name of a particular individual. 15 U.S.C. 1052(c).  On appeal though, the Federal Circuit found such a restriction unconstitutional — especially in this situation where the mark forms a criticism.  The court’s decision follows the logic of two recent Supreme Court cases on point: Tam (the SLANTS – disparaging marks) and Brunetti (FUCT – scandalous marks).  In its petition, however, the US Gov’t tries to distinguish those viewpoint cases from this one that arguably does not involve viewpoint discrimination. Question presented: “Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”
  2. Nike v. Adidas: This one is not yet a petition, but in an extension request, Nike indicated its plans to petition this case.  The basic issue is whether the IPR statute permits the Board to raise patentability issues sua sponte with regard to substitute claims.  See 35 USC 316(e) (“the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence”).
  3. Thryv v. Click-to-Call: This is the sister case of the IPR previously before the Supreme Court. The IPR only canceled some of Click-to-Call’s claims. The district court then invalidated the remaining claim in suit.  However, on appeal, the Federal Circuit ruled that the invalidity challenge was estopped under Section 315(e).  Thus, the petition in this case is likely to raise the same question raised by Apple in the CalTech case. For now though, the petitioner is simply asking for a 30-day extension of its due date.

Chamberlain Closes on Overhead Door

Patent

The Chamberlain Group v. Overhead Door Corp., 21-CV-00084 (E.D. Tex. 2023)

Overhead door won a jury verdict in this case back in March 2022.  However, Judge Gilstrap ordered a partial new trial because Overhead Door had failed to disclose key features of its products until just before trial. New Jury, New Verdict.  Second time around, the new jury found the asserted claims valid and not infringed — setting the royalty at $43 million.

U.S. Patent No. 8,587,404.

4. A movable barrier system with a moving-barrier imminent motion notification, the system comprising:

a movable barrier operator connected to close a movable barrier;

the movable barrier operator configured to receive a transmitter identification code from a transmitter as part of a communication from the transmitter triggered in response to a first user input at the transmitter, the communication comprising a command to close configured to effect closing of the movable barrier, the movable barrier operator also configured to determine whether to close the movable barrier in combination with operating a moving-barrier imminent motion notification in response to receipt of the command to close the movable barrier based at least in part on the transmitter identification code;

the movable barrier operator configured to determine whether to close the movable barrier without operating the moving-barrier imminent motion notification based at least in part on the transmitter identification code.

 

Rep. Issa – House IP Leader

Patent

Ryan Davis at IP360 is reporting that Rep. Darryl Issa is the new chair of the House Subcommittee on Courts, Intellectual Property, and the Internet. He was previously Chair 2015-2019.   Issa has been called-out by the group US Inventor for his previous failure to focus on their particular concerns.   He has not announced particular plans for the committee. Sen. Chris Coons is most likely to take over as chair of the parallel Senate Committee following Sen. Leahy’s retirement.

Jack Daniels vs Bad Spaniels: Funny Jokes and Free Speech

Patent

It is hard for me to believe that the US Supreme Court is hearing the case of Jack Daniels vs Bad Spaniels. For those who don’t know, Jack Daniels is a form of Whiskey.  VIP Products makes and sells a squeaking dog toy known as “bad spaniels.” The setup here is a humorous parody, but JD is not laughing.

Jack Daniels sent a cease-and-desist letter to VIP who then filed a declaratory judgment action in Arizona. The district court sided with JD on both TM infringement and dilution and issued an injunction to stop ongoing sales and distribution.  (The excrementory references in Bad Spaniel also led to tarnishment conclusions).  On appeal though, the 9th Circuit identified the toy as an “expressive work” entitled to speech protections under the First Amendment of the US Constitution and ordered the lower court to apply an enhanced infringement analysis stemming from Rogers v. Grimaldi, 875 F.2d 994 (1989).  Under Rogers, the court needs to consider the expressive relevance of the accused work and whether it is “explicitly” misleading.  With regard to dilution, the appellate court found that the dog toy was not actually making commercial use of the JD mark.  Although the toy was being sold in commerce, the JD mimicry was for humourous speech purposes rather than simply commercial.

The Supreme Court granted certiorari and the briefing is ongoing.  Typically, the most important amicus brief in a private case is that filed by the U.S. Government.  Here, the USPTO and DOJ joined together to file a brief strongly supporting the mark holder — writing that the 9th Circuit decision “is egregiously wrong.” The Gov’t is particularly concerned that a funny joke will be an excuse to allow infringement.  Although humorous parody should be a factor in the likelihood-of-confusion analysis, the Gov’t argues that it should not be a determinative “get-out-of-the-Lanham-Act free card.”  On the dilution side, the Gov’t argues that Congress expressly set the rules, including a defense that the accused use is not being used as a mark.  The Gov’t argues here that the Ninth Circuit ignored that provision and instead created its own non-statutory rule regarding the commercial nature of the humor being used.

The Government’s basic argument here is that free speech concerns are properly incorporated into the infringement analysis and should not be given a separate overlay.  The result then is a holistic balancing of speech interests against the misleading nature of a product.  “The Ninth Circuit’s reasoning means that virtually any humorous pirating of a trademark will be “expressive” and thus qualify for heightened First Amendment protection, no matter how misleading.”

The briefing also highlights some concerning uses of marks to sell marijuana products, such as the Oreo knock-off below.  These don’t really seem humorous, but who am I to know?

Read the Gov’t Brief here.  One note, in the case, the appellate court did not expressly consider Bad Spaniels under a more traditional parody test.  The Gov’t suggested vacatur and remand to the 9th Circuit to reconsider on those grounds.

Copyright and AI – Zarya of the Dawn

Patent,

by Dennis Crouch

In a prior post, I mentioned that the Copyright Office had canceled the registration for “Zarya of the Dawn,” a book purportedly created mainly by AI.  That was in error apparently generated by the Office’s new Copyright Public Records System.    The attorney for the human author – Kristina Kashtanova – contacted me to point out the error and you can see that the errors have been corrected. The copyright is currently registered.

 

View this post on Instagram

 

A post shared by Kris Kashtanova (@kris.kashtanova)


That said, the Copyright Office has initiated a cancellation process for the work.  In a responsive filing, her attorney Van Lindberg walks through her creation and makes the case that all aspects of the book, even computer generated images, are copyrightable.

In addition to the copyrightability of the Work as a whole, each individual picture is itself the result of a creative process that yields a copyrightable work. Kashtanova could extract any single image from the Work and submit it to the Office and correctly assert her authorship of that image.

Unlike the “autonomously generated” picture known as “A Recent Entrance to Paradise,” all the images in the Work were designed by Kashtanova. The visual structure of each image, the selection of the poses and points of view, and the juxtaposition of the various visual elements within each picture were consciously chosen. These creative selections are similar to a photographer’s selection of a subject, a time of day, and the angle and framing of an image. In this aspect, Kashtanova’s process in using the Midjourney tool to create the images in the Work was essentially similar to the artistic process of photographers – and, as detailed below, was more intensive and creative than the effort that goes into many photographs. Even a photographer’s most basic selection process has been found sufficient to make an image copyrightable. The same reasoning and result should apply to the images in Kashtanova’s Work.

Lindberg Letter to Kasunic.

 

An Update on AI Inventorship and Authorship Cases

Patent, , ,

by Dennis Crouch

In 2022, the Federal Circuit held that an invention is only eligible for a US patent if a human conceived of the invention. Thus, no patents for invention wholly conceived by artificial intelligence.  Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).  Thaler’s petition for writ of certiorari to the US Supreme Court would have been due last week, but Thaler was able to obtain an extension with the petition now being due March 19, 2023.  Thaler’s main attorney throughout this process has been Professor Ryan Abbott. The team recently added appellate attorney and Supreme Court expert Mark Davies to the team, and so it should be a great filing when it comes.  The motion for extension explains that the case presents a fundamental question of how the law of inventorship should apply “to new technological methods of invention.”

Specifically, this case arises from the Federal Circuit’s denial of a patent to an invention created by an artificial intelligence (AI) system, holding that an AI system is categorically unable to meet the definition of “inventor” under the Patent Act. The questions presented in Dr. Thaler’s petition will have a significant impact on Congress’s carefully balanced scheme for protecting the public interest in promoting innovation and ensuring the United States’ continued international leadership in the protection of intellectual property.

Extension Motion.  Part of the justification for delay is that Dr. Thaler and his attorneys have a parallel copyright case pending.  Thaler attempted to register a copyright for a computer-created work of art. But, the copyright office refused once Thaler expressly stated that there was no human author.  Thaler then sued in DC District Court.  Most recently, Thaler moved for summary judgment, presenting the following question for the district court to decide:

With the facts not in dispute, this case boils down to one novel legal question: Can someone register a copyright in a creative work made by an artificial intelligence? The plain language and purpose of the Copyright Act agree that such works should be copyrightable. In addition, standard property law principles of ownership, as well as the work-for-hire doctrine, apply to make Plaintiff Dr. Stephen Thaler the copyright’s owner.

THALER v. PERLMUTTER et al, Docket No. 1:22-cv-01564, Paper No. 16 (D.D.C. Jan 10, 2023).  The image, reproduced below from the complaint is known as “A Recent Entrance to Paradise.” (Registration Application #1-7100387071).

In another recent example, the Copyright Office has also canceled copyright registration for Zarya of the Dawn, apparently because of its AI-created status.

Mandamus Reasonably Denied

Patent

In re General Motors Co. (Fed. Cir. 2022)

Without much pretense, the Federal Circuit has rejected GM’s petition to the Federal Circuit seeking transfer of its case out of the Western District of Texas.  In 2021, Intellectual Ventures (IV) sued GM for infringement of twelve different patents — all focusing on features of GM’s OnStar service.  GM wanted the case to moved up to Michigan on convenience grounds, but Judge Albright Refused.  In particular, Judge Albright noted that GM has a major IT Innovation Center in WD Tex (Austin) that includes potential witnesses.  On mandamus, the Federal Circuit refused to disturb this holding.

In the short opinion, Judge Stark found Judge Albright’s findings reasonable and relevant. In particular, the court noted the following:

GM employees in the Western District of Texas with relevant and material information;

Electronic evidence in Michigan can be accessed by GM from its offices in the Western District;

The Western District (and not Michigan) has the power to compel one of the inventors to testify; and

The Western District has a strong local interest  because of GM’s significant presence, including many who devlop/sell the accused products.

Slip. Op.  Before transferring a case on convenience grounds, the district court must determine that the proposed district is “clearly more convenient.” This is already quite a high standard that provides substantial discretion to the district court.  But, the mandamus standard is even higher and requires an extraordinary situation involving clear error and substantial resulting harm that cannot be resolved later on appeal.  Here, the appellate court found that lacking because Judge Albright’s decision provides a plausible basis to conclude that E.D. Michigan was not clearly better.

The Federal Circuit decided this one on the briefs. Steve Baskin (King & Spalding) filed the petition on behalf of GM. Jon Waldrop (Kasowitz Benson) was lead attorney for IV.

 

 

Laching-On to Inexcusable Behavior

Patent

Guest Post by Jordan Duenckel.  Jordan is a second-year law student at the University of Missouri, head of our IP student association, and a registered patent agent. 

The Federal Circuit released its opinion in Personalized Media Communications, LLC, Vs. Apple Inc., Docket No. 2021-2275 on January 20, 2023, in a dispute involving an alleged pattern of inappropriate conduct during patent prosecution. In a split decision, the Federal Circuit ruled that the district court did not abuse its discretion in declaring a patent unenforceable based on prosecution laches.

Apple FairPlay uses digital rights management (DRM) to limit user access. Specifically, FairPlay encrypts data and uses “decryption keys” to control decryption. As an additional added layer of security, Apple further encrypted these decryption keys and this further encryption is the basis for the patent infringement suit brought by Personalized Media Communications, LLC (PMC) based on PMC’s U.S. Patent No. 8,191, (the “’091 patent”). The jury reached a unanimous verdict and awarded $308 million to PMC for infringement of claims 13-16. Despite the favorable verdict on infringement, the district court eventually sided with Apple by holding the ‘091 patent unenforceable based on the equitable affirmative defense of prosecution laches. Prosecution laches requires proving two elements:

  1. The patentee’s delay in prosecution must be unreasonable and inexcusable under the totality of circumstances; and
  2. The accused infringer must have suffered prejudice attributable to the delay.

Hyatt v. Hirshfeld, 998 F.3d 1347, 1359–62 (Fed. Cir. 2021).

PMC’s applications were pending for 16 years before the claims were presented for examination.  During that process, PMC filed several thousands of claims.  PMC’s application was one of the few pre-GATT applications still pending at the USPTO, having been filed on the June 7, 1995, deadline.  The legal result is that the patent term extends 17 years from its 2012 issuance date (34 years from the filing date). But, the district court concluded that equity could not maintain the result because PMCs delays were unreasonable and inexcusable.

PMC raised a number of justifications on appeal, perhaps most interesting is that PMC’s prosecution strategy was in line with the “Consolidation Agreement” it made with the PTO. The agreement was part of the USPTO’s efforts to move out these old cases.  According to the procedure, where PMC was to designate “A” applications and “B” applications, with the PTO prioritizing “A” applications. Rejected claims would transfer to the corresponding “B” application and prosecution of “B” applications was stayed until the corresponding “A” application issued. This A to B process, in effect, allows PMC to delay the examination of applications and allows two chances for examination without paying a continuing examination fee.

On appeal, the majority, written by Judge Reyna and signed by Judge Chen, did not see this scheme as an excuse, but rather as further evidence of PMC’s inexcusable behavior in the prosecution process. In dissent, Judge Stark suggested that Apple had failed to show prejudice attributable to PMC’s delay.

Typically, an accused infringer can show prejudice based upon investment or use of “the claimed technology during the period of delay.” The majority concluded that Apple necessarily invested in FairPlay during the delay since it launched the product in 2003. The dissent focuses on the timeframe of the PMC’s conduct, finding that it was PMC’s pre-2000 conduct that was unreasonable while the post-2000 conduct involved more routine aspects of patent prosecution’s back-and-forth nature.   But, Apple did not prove that it was prejudiced by the pre-2000 conduct.

My thoughts: Prosecution laches is a remedy meant to address abuse of the patent system and necessarily must be flexible to meet ever-changing strategic conduct. PMC employed a business strategy deliberately aimed at creating a labyrinth of patent protection extending beyond the statutory twenty years, directly stating that the goal was patent coverage extending 30 to 50 years.  Further, PMC was unable to provide a legitimate purpose for the delays that aligns with the general goals of patent protection.

To me, the prejudice suffered by Apple is clear. At the time that Apple was developing FairPlay, they were unable to know the full scope of PMC’s patent protection. The chronological line drawing that the dissent favors ignores the practical effects of PMC’s ongoing deliberate business strategy.  Although the unreasonable acts may have taken place prior to 2000, the impact of those actions continued well beyond. The attempt to distinguish post-2000 activities as prejudicial or not in isolation avoids the totality of the circumstances that equitable remedies like prosecution laches are meant to address.