October 2018

The U.S. Copyright Office Makes It Easier to Repair and Jailbreak Phones

Takeaway: The U.S. Copyright Office has made it legal for you to jailbreak new phones for development and repair purposes.

The U.S. Copyright Office has made some changes under the Digital Millennium Copyright Act (“DMCA”) to allow for users to jailbreak devices and modify them on their own. This rule comes about because of the notoriously strict rules under section 1201 of the DMCA where it was “unlawful to circumvent technological measures used to prevent unauthorized access to copyrighted works.” The new rules are much more in line with the notion that users are allowed to “reverse engineer” products without infringing the copyrights of others.

Under the new law, users are allowed to unlock new phones as opposed to just old used phones. This would come in handy if you wanted to buy a new phone without purchasing a new carrier contract. You could then use the phone with whatever carrier you want as opposed to being locked to a specific carrier.

The new law also allows people or service providers to repair “smartphones,” “home appliances,” and “home systems.” This opens up the door for small businesses to provide repair services for smartphones without getting into legal trouble with the manufacturer of the product.

The U.S. Supreme Court Will Decide Two Intellectual Property Cases in the Near Term

Return Mail, Inc. v. USPS, et al.
Takeaway: The Supreme Court of the United States will soon determine whether the Government may challenge a patent’s validity.

The U.S. Postal Service recently challenged Return Mail Inc.’s patent and won the challenge of the United States Patent and Trademark Office. Last year, the case went to the Federal Circuit where the court found that the United States Patent and Trademark Office was correct in their decision to invalidate the patents in question.

On October 26, 2018 the Supreme Court of the United States granted writ of certiorari to review the decision by the Federal Circuit based on Return Mail Inc.’s arguments that the U.S. Postal Service cannot challenge patents because they are a part of the government.

Return Mail Inc.’s argument is that under the AIA, only a “person” may file a petition to challenge a patent at the United States Patent and Trademark Office. Typically, the definition of a “person” includes legal entities such as LLCs, but the question of whether a governmental entity is included in that definition has yet to be decided. This is an interesting question because the government does not typically count as a “person” under such definitions and this challenge will clarify whether Congress intended that to be different under the AIA.

Mission Product Holdings, Inc. v. Tempnology, LLC
Takeaway: The U.S. Supreme Court will soon decide what happens to a trademark licensing agreement when the mark’s owner goes bankrupt.

On October 26, 2018 the Supreme Court of the United States granted writ of certiorari to review what happens to a license to use a trademark when the owner of the trademark goes bankrupt.

Typically, in bankruptcy, a debtor is allowed to get out of contracts, but this may not be the case with intellectual property matters. Congress has provided that certain types of intellectual property licenses will not be covered by this policy, such as patents and copyrights. However, the issue arises due to the fact that Congress did not mention trademarks in the type of contracts that could not be withdrawn.

This is important because many companies create their business around the right to use specific intellectual property rights. If other businesses would fail due to the bankruptcy of another company, major public policy issues could arise.

The courts are currently split regarding whether a license to use a trademark is extinguished when a company owning the mark goes bankrupt and the Supreme Court will take on this question in the near term.

Microsoft Goes Open-Source

Takeaway: Microsoft dedicated all of their patents to the OIN patent pool network giving everyone the ability to use their technology without fear of infringement.

Earlier this month, Microsoft announced that it would be dedicating all if its patents to the Open Invention Network patent pool. This move is a surprise to many members of the tech community because Microsoft has been fairly vocal about their disapproval of the open-source community.

The Open Invention Network is a patent pool created to protect Linux and encourage innovation. One of the biggest benefits of a move of this type is the ability to implement cross-platform applications. In other words, when developers are creating software, they can more easily code their products to work on devices of all kinds when they do not have to worry about infringing the patents of major companies such as Microsoft.

This move may have been a great tactic for Microsoft to compete with Amazon’s cloud platform “Amazon Web Services.” By dedicating their patents to the open-source community, Microsoft will likely convert a large number of developers to their platform.

A common misconception of open-source communities is that they are anti-intellectual property or that developers will have to give their technology away for free. However, this is not always the case because some businesses develop software, and then dedicate their intellectual property to the open-source community to gain more users of their software, and in turn, are able to sell their product or services to more people. Once a product or service is open-source it does not mean that the company cannot sell their software, it just means that they allow developers to use the underlying technology to develop further products on top of their own platform.

It is still advisable to protect your business with intellectual property rights such as patents, trademarks, and copyrights. This is because going open-source without protection, someone else may obtain protection over a similar product and enforce it against you. However, once you obtain protection, it may be a smart move to go open-source if you are trying to create a cross-platform application.

William Hill Sues FanDuel For Copyright Infringement

Takeaway: Do not copy significant portions of someone else’s copyrighted text without their permission.

William Hill filed a lawsuit against FanDuel this week for copyright infringement. The complaint alleges that FanDuel stole William Hill’s pamphlet titled “How to Bet Guide” by copying significant portions of the guide. FanDuel was allegedly handing out their own version of the pamphlet at Meadowlands Racetrack.

According to the complaint, FanDuel went as far as to even forget to take out William Hill’s name from the pamphlet in addition to the significant amount of copied text. The copyrighted work contains explanations of terminology and procedures in the context of specific sports. The textual components of the copyrighted work and the allegedly infringing work have the same text but have a slightly different layout design.

In addition to the allegedly infringing pamphlet, William Hill has asserted that FanDuel is infringing the same copyrighted content on their website. In a similar manner, the website contains the same text as the pamphlet but with a slightly different design.

The Patent and Trademark Appeal Board Must Provide Reasoning for Upholding a Patent

Takeaway: If the PTAB does not give enough reasoning for a holding of validity (or invalidity) of a patent, you may be able to argue this point to have the decision reheard.

It may seem like common sense, but the Federal Circuit remanded a case on October 26, 2018 because the Patent and Trademark Appeal Board (“PTAB”) did not properly provide a reason for upholding a patent’s validity. The Federal Circuit determined that the PTAB’s decision lacked evidentiary support and did not explain their reasoning as to why Enthone Inc.’s patent was valid.

In addition to lacking evidence to support its arguments, the Federal Circuit determined that the finding by the PTAB varied from another decision it made regarding a related patent. In the other related patent challenge, the PTAB determined that the claims were obvious, which was inconsistent with the current determination. For these reasons, the Federal Circuit determined that the PTAB had to provide evidentiary support for its arguments so as to make sure it was not handing out arbitrary decisions about the validity of patents.

Intellectual Property Enforcement Coordinator Speaks at AIPLA Annual Meeting

Takeaway: Intellectual property is one of the most influential factors on the worldwide economy.

Vishal Amin, the IP Enforcement Coordinator of the White House spoke at the AIPLA Annual meeting. Amin discussed the moves that the Trump administration is making toward the promotion of intellectual property rights in the United States.

According to Amin, the administration believes that the intellectual property in our country will help the United States’ economy grow, and in turn, will help the world’s economy grow. This may be why President Trump designated April 26th as “World IP Day.”

Amin additionally addressed concerns about U.S./China relations and how Trump’s tariffs against China are due to intellectual property violations by China. According to Amin, China accounts for the majority of counterfeit goods imported into the United States and this undermines the intellectual property system. Hopefully, this is all part of a negotiation between the U.S. and China that will lead to a cooperative and more global intellectual property system.

Cislo & Thomas LLP Awarded Best Law Firms by U.S. News and World Report

We are proud to announce that we have been honored as a Tier 1 Best Law Firm recipient in the 2019 Best Lawyers of U.S. News & World Report!

We always strive to provide Quality Client Care in helping you achieve your intellectual property goals, and we owe this honor to our incredible clients. So thank you!