SoCal IP Law Group

The SoCal IP Law Blog

SoCal IP Institute :: August 18, 2014 :: Detection/Prevention of Substance Abuse

Our weekly SoCal IP Institute meeting on Monday, August 18, 2014 will be a discussion on how to cope with the unique challenges of legal practice. The course will involve watching a streamed video of instructors Richard Carlton and David Mann of the California Bar discussing the topic followed by a brief discussion of the subject matter of the video.  The instructors summarize the presentation as an examination of the stress, anxiety, depression and substance abuse challenges often encounter by legal professionals, and the strategies and resources available to address these concerns.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 18, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of Detection/Prevention of Substance Abuse MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 11, 2014 :: Trade Dress in the Central District; Fed Cir. Reverses Contempt Sanctions

Our weekly SoCal IP Institute meeting on Monday, August 11, 2014 will be a discussion of a recent trade dress case in the Central District and a recent Fed. Cir. Opinion reversing contempt sanctions. Brief synopses of the cases appear below.

Brian Lichtenberg, LLC v. Alex & Chloe, Inc. Case No.: CV 13-06837 DDP (C.D. Cal. 7/25/14) (available here), involves a case of two brothers suing over trade dress.  The court in this case granted one brother’s motion for preliminary injunction in part, and denied it in part.

In EPlus Inc, v. Lawson Software, Inc., No.: 2013-1506, -1587 (Fed. Cir. 7/25/15) (available here), the Federal Circuit reversed the order for civil contempt sanctions when it found that the underlying preliminary injunction they were based upon was invalid.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 11, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 4, 2014 :: Patent infringement and Trademark oppositions

Our weekly SoCal IP Institute meeting on Monday, August 4, 2014 will be a discussion of a patent infringement case and a trademark opposition. Brief synopses of the cases appear below.

Amdocs (Israel) Limited v. Openet Telecom, Inc., No. 2013-1212 (Fed. Cir. August 1, 2014) (available here). Amdocs sued Openet for infringing four of its patents. Here, the Fed. Cir. reversed the district court’s ruling of noninfringement of three of the patents on summary judgment. In addition, the Fed. Cir. vacated and remanded the district court’s ruling of noninfringement of the fourth patent based on an erroneous claim construction.

Stoncor v. Specialty Coatings, No. 2013-1448 (Fed. Cir. July 16, 2014) (available here). Stoncor opposed Specialty Coatings mark for ARMORSTONE. The Federal Circuit affirmed the TTAB’s ruling that there is no likelihood of confusion between ARMORSTONE and STONSHIELD and that ARMORSTONE is not merely descriptive.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 4, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 28, 2014 :: Subject Matter Eligibility Post-Alice and Stays in view of CBM Reviews

Our weekly SoCal IP Institute meeting on Monday, July 28, 2014 will be a discussion of two Federal Circuit cases.  The first pertains to subject matter eligibility.  The second pertains to the grant of a stay during the pendency of a later-filed covered business method patents review. Brief synopses of the cases appear below.

Digitech Image Tech., LLC. v. Electronics for Imaging, Inc. et al, No. 2013-1600 etc. (Fed. Cir. July 11, 2014) (available here).  The plaintiff asserted a patent related to an “improved device profile” for the color and spatial profile of devices such as digital image processors, such as digital cameras.  On motion of several defendants, the district court found that the patent’s “improved device profile” amounted to data that was not within the categories of statutory subject matter under Section 101.

The Federal Circuit, here, agreed with the district court finding that the device profile claims were directed to data, which is not one of the identified categories and, further, that the method claims are directed to an “abstract idea” and, therefore are not eligible for patent protection.

VirtualAgility Inc. v. Salesforce.com, Inc. et al., No. 2014-1232 (Fed. Cir. July 10, 2014) (available here).  VirtualAgility sued several defendants in January of 2013. In May of 2013, some of those defendants sought review under the new AIA CBM patent review process.  Specifically, the defendants asserted that the patent was invalid under Sections 101, 102, and 103.  Shortly thereafter, the defendants sought a stay in the case.  The district court denied the motion in January of 2014, with claim construction then due to be completed in April.

The Federal Circuit entered a stay pending interlocutory appeal (available under the AIA for refusals to grant stays).  Under a very careful review of the four factors set forth in the statute, the Federal Circuit found that the district court incorrectly evaluated two of the factors and, therefore, three of the four weighed in favor of granting a stay.  Accordingly, the district court was reversed and the stay was granted pending completion of the CBM review.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 28, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 21, 2014 :: Guest Speakers Ari Katz and Yoav Keren to Discuss Online Brand Protection

Our weekly SoCal IP Institute meeting on Monday, July 21, 2014 will be a discussion by Ari Katz and Yoav Keren of BrandShield Ltd.  BrandShield was established to develop technology and solutions to help businesses protect their brand online from infringement.  The Company is backed by Israel’s Chief Scientist and with an R&D center based in Israel.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 21, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 14, 2014 :: Liens on IP do not Create Federal Questions and Receivership Over Some George Clinton Recordings Affirmed

Our weekly SoCal IP Institute meeting on Monday, July 14, 2014 will be a discussion of one 4th Circuit case regarding federal subject matter jurisdiction for liens enforced on intellectual property and a 9th Circuit decision on the appointment of a receiver and that receiver’s rights over IP held by an individual. Brief synopses of the cases appear below.

Flying Pigs, LLC v. RRAJ Franchising, LLC, No. 13-2135 (4th Cir. July 1, 2014) (available here). Through a very convoluted set of steps including foreclosure on a series of renters, two bankruptcy proceedings, an overarching settlement agreement across several parties, and removal (twice) of proceedings from Lenoir County, North Carolina Superior Court to the Eastern District of North Carolina, Flying Pigs came to bring a lien-related proceeding in Superior Court.  Defendant RRAJ removed the case under “federal question” subject matter jurisdiction.  The district court denied Flying Pigs’ remand motion and granted RRAJ a dismissal with prejudice.

The 4th Circuit vacated the district court’s dismissal order, and returned the matter to the Superior Court.  Specifically, the 4th Circuit held that the matter did not raise a federal question, but instead arose under state law–essentially as a lawsuit to enforce a lien in part against the IP.

Hendricks & Lewis PLLC v. Clinton, No. 13-35010 (June 23, 2014) (available here).  Hendricks & Lewis PLLC represented George Clinton in a series of legal matters over the course of a number of years.  Mr. Clinton failed to pay for those services. The bill totaled over $3 million, but was reduced to just over $1.5 million in arbitration proceedings in which Mr. Clinton did not participate.  A year after the arbitration, Clinton sued Hendricks & Lewis for malpractice.  They, in turn, sought to enforce the arbitration award.  The district court appointed a receiver for Mr. Clinton’s assets and authorized the license or sale of the copyrights in order to cover the fee award.

The 9th Circuit held that under Washington law Clinton’s copyrights in the masters were subject to execution to satisfy judgments made against him. The panel also held that § 201(e) of the federal Copyright Act did not protect Clinton from the involuntary transfer of his copyrighted works. The court further held that under Washington law the district court did not abuse its discretion by appointing a receiver to manage or sell ownership of the copyrights. The court also held that Clinton may raise claims of fraud on the court and judicial estoppel for the first time on appeal, but concluded that both claims were meritless. Finally, the court held that Clinton failed to raise his preemption, Erie doctrine, and due process arguments before the district court, and, therefore, they would generally not be considered, and in any event they were without merit.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 14, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 7, 2014 :: Copyright infringement and trade secrets

Our weekly SoCal IP Institute meeting on Monday, July 7, 2014 will be a discussion of a Supreme Court case on copyright infringement and a California Appellate opinion on trade secrets. Brief synopses appear below.

ABC v. Aereo (U.S. June 25, 2014) (available here).  The Supreme Court held that Aereo’s service, which provided subscribers the ability to view television programs over the Internet at about the same time as they were being broadcast over the air, constituted copyright infringement because the service “performed” the copyrighted work publicly under the Transmit Clause.

New Castle Beverage, Inc. v. Spicy Beer Mix, Inc.  (Cal. Court of Appeal June 17, 2014) (available here). In this unpublished opinion, the California Court of Appeal affirmed the trial court’s ruling that the spice mix was not sufficiently defined and therefore did not constitute a trade secret.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 7, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: June 30, 2014 :: Conflicts of Interest

Our weekly SoCal IP Institute meeting on Monday, June 30, 2014 will be a video presentation on Conflicts of Interest.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 30, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE Ethics credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: June 30, 2014 :: Conflicts of Interest

Our weekly SoCal IP Institute meeting on Monday, June 30, 2014 will be a video presentation on Conflicts of Interest.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 30, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE Ethics credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: June 16, 2014 :: Supreme Court on Indefiniteness and Copyright

Our weekly SoCal IP Institute meeting on Monday, June 16, 2014 will be a discussion of two Supreme Court cases.  The first deals with indefiniteness and the second deals with copyright ownership. Brief synopses of the cases appear below.

Nautilus, Inc. v. Biosig Instrum., Inc. 110 U.S.P.Q.2d 1688, 572 U.S.___  June 2, 2014) (available here). In Nautilus, the Supreme Court remanded to the Federal Circuit to determine whether claims to an exercise machine were indefinite under 35 U.S.C. §112,¶2. Procedurally, the District Court granted Nautilus’ summary judgment motion to dismiss on the basis of invalidity, but the Federal Circuit reversed saying the claim term at issue was not “insolubly ambiguous.”  In remanding, the Supreme Court stated that the “insolubly ambiguous” standard does not comport with the statute.  “To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’ ”  The ball is back in the CAFC’s court to clearly define a definiteness test.

Side-issue brought up in Nautilus: What are “hybrid” apparatus/method claims, and when are they invalid?

Petrella v. Metro-Goldwyn-Mayer, Inc. et al., S.Ct. No. 12-1315 (May 19, 2014) (available here).  The screenplay for the movie “Raging Bull,” written by Jack Petrella and Jake LaMotta, was copyrighted in 1963 and assigned to MGM.  The movie was released in 1980, and upon Petrella’s death, his rights reverted to his daughter, plaintiff here.  She renewed the copyright in 1991, becoming its sole owner.  In 1998 she threatened MGM with an infringement suit, and in 2009 she sued, claiming monetary and injunctive relief limited to the three years prior to the date the suit was filed.  The Ninth Circuit granted summary judgment to MGM based on laches.  The Supreme Court reversed on a 6-3 vote, holding that laches does not apply to copyright claims for damages brought within the copyright statute’s prescribed three-year window.  In extraordinary circumstances, however, laches might curtail some forms of equitable relief.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 16, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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