Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In the aftermath of the Supreme Court’s ruling in Fourth Estate Public Benefit v. Wall-Street.com, in which the Court held that copyright litigation lawsuit cannot be filed until the Copyright Office registers the copyright, it appears that some key courts for copyright issues are applying the Supreme Court’s holding retroactively. In Malibu Media, LLC v. Doe, the Southern District of New York applied Fourth Estate to hold that a copyright infringement lawsuit filed before a registration issued must be dismissed (rather than amended) where the registration issued post-filing. In the Malibu Media case, the plaintiff amended its complaint after the copyright issued, but the Court said the original complaint was defective and subject to dismissal. Accordingly, at least in the Southern District of New York (but likely many other districts because of the persuasiveness of SDNY opinions on copyright issues), a copyright infringement claim filed before the registration issued may be subject to dismissal. One strategy may be to dismiss such cases without prejudice and re-file new cases with the issued registration.
2. A bipartisan proposal by members from both the House and the Senate to amend portions of the Patent Act to address the ongoing concerns and issues with 35 U.S.C. Section 101 and its interpretation by the Supreme Court and lower courts has been released for comment. The proposal is here. The proposed language appears promising in terms of making it less restrictive to procure and enforce software and biotech patents, a number of which have struggled under the current version of 101 and its interpretation by the courts. For example, the analysis under 101 would be to favor eligibility, and would not utilize the current “judicial exceptions” such as “laws of nature,” “natural phenomena,” and “abstract ideas” categories for ineligibility any longer. Rather, Section 100(k) of the Patent Act would be amended to redefine “useful” as an something having “specific and practical utility.” This latter portion favors those in the tech industry who are not pro-patent, and would, at least in theory, prevent patent grants, or allow granted patents to be invalidated, if they are not tethered to a practical application of some sort. Furthermore, Section 112(f) of the Patent Act would be amended to remove the requirement in “means-plus-function claims” for “magic language” such as “means for,” thus bringing functional claim language under its ambit. This appears to be a promising step in the effort to reach a legislative fix to the issues with Section 101 that have arisen in the past five (5) years or so.
3. In a recent trade secret misappropriation case out of the District of Arizona in which the claims were brought under both the Defend Trade Secrets and an Arizona trade secret statute, the Court dismissed the trade secret misappropriation claims (the sole focus here) in the first amended complaint with leave to amend. The opinion is here. The Court dismissed the trade secret misappropriation claims because the trade secret(s) themselves were not identified with sufficient specificity, their independent economic value from not being generally known was also not pled with sufficient detail, and there was no indication that the plaintiff has taken reasonable measures to protect the alleged trade secret information. It appears that the plaintiff failed in properly pleading each of the hornbook law elements for a trade secret claim, and the result was good one for my friends at Haynes & Boone.
