Westlaw Journal INTELLECTUAL PROPERTY Litigation News and Analysis • Legislation • Regulation • Expert Commentary VOLUME 25, ISSUE 25 / MARCH 27, 2019 EXPERT INTERVIEW WHAT’S INSIDE PATENT Q&A: Copyright and trademark litigator Brian Darville 6 PTO director tells Congress it is time to retire on Google v. Oracle ‘patent troll’ label By Patrick H.J. Hughes 6 Patent office veteran elevated to chief PTAB judge Oblon attorney Brian Darville answers questions about Oracle’s copyright wins over 7 Generic drugmakers say Google and the impact the case could have if the U.S. Supreme Court decides to sovereign immunity patent claim has ‘myriad problems’ intervene in the dispute. Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals (U.S.) COPYRIGHT 8 Another copyright suit says ‘Gimme Some Lovin’’ infringes ’60s jazz tune Parker v. Davis (M.D. Tenn.) 9 Online garden center’s alleged photo infringement feeds copyright suit REUTERS/Robert Galbraith REUTERS/Robert Galbraith Garden World Images v. WilsonBrosGardens.com The U.S. District Court for the Northern District of Thomson Reuters: In its certiorari petition filed in (N.D. Ga.) California ruled that Google’s creation of source January, Google says Oracle’s case against it has code that provided the same functions as Oracle’s been aptly described as the “copyright lawsuit of TRADEMARK copyrighted application programming interface the decade.” Why is it so important? 10 Trademarkia trademark packages did not constitute infringement and Brian Darville: The Google appeal is important owner loses claims over later said Google’s actions were protected as a ‘trademarkia’ domain for several reasons. It involves the scope of fair use. LegalForce v. LegalZoom.com copyright as applied to software interfaces and (N.D. Cal.) Each time, the U.S. Court of Appeals for the the application of the fair use defense in copying 11 London-based Paysafe loses Federal Circuit overturned the lower court, siding software code for purposes of interoperability. venue fight in trademark case with Oracle. Google has now asked the U.S. Oracle’s position is that its application Paysafe Holdings UK v. Accruit Supreme Court to provide guidance on these programming interfaces, or APIs — both the LLC (S.D.N.Y.) issues. CONTINUED ON PAGE 15 BANKRUPTCY 12 High court nixes review of ruling that asset buyer did not get patent license EXPERT ANALYSIS RPD Holdings v. Tech Pharmacy Services (U.S.) Software inventions face new USPTO standards 13 Debtor’s Utah suit over movie filtering must yield for patenting to California case, Utah judge says Bradley Arant Boult Cummings LLP attorney Dennis H. Núñez explains how the VidAngel v. Disney Enterprises U.S. Patent and Trademark Office’s revised patent eligibility guidelines can help (D. Utah) attorneys advise clients about patent protection for software. SEE PAGE 3 42539670 TABLE OF CONTENTS Westlaw Journal Intellectual Property Published since August 1989 Expert Interview Q&A: Copyright and trademark litigator Brian Darville on Google v. Oracle ....................................................1 Vice President, Product and Editorial: Sharon Lazarus Expert Analysis: By Dennis H. Núñez, Esq., Bradley Arant Boult Cummings LLP Editor: Software inventions face new USPTO standards for patenting ....................................................................... 3 Patrick H.J. Hughes [email protected] Patent PTO director tells Congress it is time to retire ‘patent troll’ label ....................................................................6 Desk Editors: Jennifer McCreary, Elena Neuzil, Maggie Tacheny Patent Patent office veteran elevated to chief PTAB judge ..........................................................................................6 Graphic Designers: Nancy A. Dubin, Ramona Hunter Patent: Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Westlaw Journal Intellectual Property Generic drugmakers say sovereign immunity patent claim has ‘myriad problems’ (U.S.) ............................. 7 (ISSN 2155-0913) is published biweekly by Thomson Reuters. Copyright: Parker v. Davis Another copyright suit says ‘Gimme Some Lovin’’ infringes ’60s jazz tune (M.D. Tenn.) ...............................8 Thomson Reuters 610 Opperman Drive, Eagan, MN 55123 Copyright: Garden World Images v. WilsonBrosGardens.com www.westlaw.com Online garden center’s alleged photo infringement feeds copyright suit (N.D. Ga.) .....................................9 Customer service: 800-328-4880 For more information, or to subscribe, Trademark: LegalForce v. LegalZoom.com please call 800-328-9352 or visit Trademarkia trademark owner loses claims over ‘trademarkia’ domain (N.D. Cal.) .................................... 10 legalsolutions.thomsonreuters.com. Trademark: Paysafe Holdings UK v. Accruit LLC Reproduction Authorization London-based Paysafe loses venue fight in trademark case (S.D.N.Y.) ...........................................................11 Authorization to photocopy items for internal or personal use, or the internal or personal use by specific clients, is granted by Thomson Bankruptcy: RPD Holdings v. Tech Pharmacy Services Reuters for libraries or other users regis- High court nixes review of ruling that asset buyer did not get patent license (U.S.) .....................................12 tered with the Copyright Clearance Center (CCC) for a fee to be paid directly to the Bankruptcy: VidAngel v. Disney Enterprises Copyright Clearance Center, 222 Rosewood Debtor’s Utah suit over movie filtering must yield to California case, Utah judge says (D. Utah) ................13 Drive, Danvers, MA 01923; 978-750-8400; www.copyright.com. Insurance: Lepore v. Hartford Fire Insurance Co. Insurer can snip coverage for fashion designer’s IP row with licensing partner (S.D.N.Y.) ............................14 Thomson Reuters is a commercial publisher Case and Document Index ...............................................................................................................................18 of content that is general and educational in nature, may not reflect all recent legal developments and may not apply to the specific facts and circumstances of individual transactions and cases. Users should consult with qualified legal counsel before acting on any information published by Thomson Reuters online or in print. Thomson Reuters, its affiliates and their editorial staff are not a law firm, do not represent or advise clients in any matter and are not bound by the profes- sional responsibilities and duties of a legal practitioner. 2 | WESTLAW JOURNAL n INTELLECTUAL PROPERTY © 2019 Thomson Reuters EXPERT ANALYSIS Software inventions face new USPTO standards for patenting By Dennis H. Núñez, Esq. Bradley Arant Boult Cummings LLP The lack of clarity in the law with respect test” for patent subject matter eligibility in a The USPTO published the revised guidelines to patent subject matter eligibility under clear and consistent manner. Jan. 7 to provide clarity regarding the Section 101 of the Patent Act, 35 U.S.C.A. The high court developed the test in Alice application of the above-mentioned Alice/ § 101, has made it difficult for patent Corp. Pty. Ltd. v. CLS Bank International, Mayo test in step 2. attorneys to advise their clients regarding 573 U.S. 208 (2014), building on its earlier ruling The agency has explicitly stated that patent protection for software inventions. in Mayo Collaborative Services v. Prometheus the revised guidelines supersede the Since the case law regarding subject matter Laboratories Inc., 566 U.S. 66 (2012). corresponding section of the Manual eligibility is nebulous and fluid, the USPTO’s guidance to its examiners regarding the eligibility of software is also nebulous. It is exceedingly difficult for patent attorneys to To make matters worse, patent examiners advise their clients regarding their chances of receiving do not consistently apply the guidance. patent protection for software inventions. Given this lack of clarity and uneven application, it is exceedingly difficult for patent attorneys to advise their clients The USPTO uses a two-step framework that of Patent Examining Procedure, MPEP regarding their chances of receiving patent includes the Alice/Mayo test for determining § 2106.04(II), to the extent that section protection for software inventions. whether a claim is drawn to patent-eligible equates claims “reciting” a judicial exception To get more consistent rulings from their subject matter: with claims “directed to” a judicial exception, patent examiners, the USPTO has published Step 1: A claim must be directed to a process, along with any other portion of the MPEP the 2019 Revised Patent Subject Matter machine, manufacture or composition of that conflicts with this guidance. Eligibility Guidance. The revised guidelines matter. The revised guidelines also supersede all synthesize the current case law and provide Step 2: If so, the two-part analysis from versions of the USPTO’s Eligibility Quick clearer standards for patent examiners to Alice Corp. applies. Reference Sheet Identifying Abstract Ideas follow when determining if an invention, such and any eligibility-related guidance issued as software, is too abstract to receive patent Step 2A: Determine whether a claim is prior to the Ninth Edition, R-08.2017, of the protection. directed to a judicial exception (e.g., an MPEP (published January 2018). abstract idea, a law of nature or a natural Understanding the revised guidelines should phenomenon). The USPTO, however, has also