I attended the Inventors Association of Connecticut meeting last night at Fairfield University. Warren Tuttle was the speaker, and it was a great presentation! Warren serves as the President of the United Inventors Association. He also is a member of the national non-profit Pro Bono Patent Commission. Professionally, Warren oversees the Open Innovation outside product programs for three industry leading companies: Lifetime Brands in Housewares and Table Top (Farberware, Kitchen Aid and 30 others), Techtronics Industries Power Tool Group in Power Tools and Hardware (Ryobi, Ridgid, Hart and others) and Merchant Media in Direct Response Television (Smart Spin, True Touch and many others). Warren personally interacts through email or phone with over 5,000 inventors a year and has initiated over100 new product licensing agreements which have collectively generated a billion $ in retail sales.
Warren’s topic was licensing, and told stories of his licensing deals on behalf of his clients, but he also talked about various products he helped clients develop and monetize. Very interesting. Warren’s website can be found here.
Do you have a startup? Are you thinking of starting a startup? Sign up for the Entrepreneurship Foundation Business Accelerator happening September 21-22, 2019.
Some details of the Business Accelerator include:
o Three weekends over 3 months jam-packed with workshops and coaching
o Daily feedback sessions to keep teams on track
o Guiding startups from idea to business model, through customer and investor pitches
o Help with business models, sales, e-marketing, and more
o Barbecues, downtime with the coaches, networking and FUN!
Whatever stage your startups is at, the Entrepreneurship Foundation will work to help you accelerate your startup’s chances of business and fundraising success.
The Program is underwritten by the state of Connecticut; full scholarship for all sessions will be awarded to accepted entrepreneurs and teams. You only need to register for the first session: Sat-Sun September 21-22, and the Entrepreneurship Foundation will automatically register you for the second session, the weekend of October 19-20. The Entrepreneurship Foundation will survey the participants to select the most convenient date for the final session in November. For more information and to register, go here.
The Entrepreneurs Society of Fairfield County is holding its inaugural meeting on August 6, 2019 at the Brewport Pub, 225 South Frontage Road, Bridgeport, CT. I will be a mentor at at the meeting!
The proposed schedule for the meeting is as follows:
5:00 pm Networking
5:30 pm Pizza and salad
6:00 pm Keynoter Bob Dorf, investor-entrepreneur and author of the best-selling Startup Owner’s Manual.
6:30 pm Elevator pitches by attendees (optional)
7:00 pm Discussions with investors, attorneys, and industry experts in small groups around topics of common interest; plus one-on-one mentoring. Sample topics: Marketing, Raising capital, Business Modeling, Patents and trademarks, Lean manufacturing design. To 7:30 pm.
The cost to sign up is $10 which covers dinner, all the pizza and salad you can eat plus a drink ticket. More information and registration info can be found here.
I will be presenting an overview of Intellectual Property to the Women’s Business Development Council (WBDC) on July 25, 2019 from 5:30 pm to 7 pm at the WBDC, located at 412 Roosevelt Drive, Derby, CT 06418. I will explain the basics of Patents, Trademarks, Copyrights and Trade Secrets. There is still time to signup and the cost is free! More information and signup information can be found here.
A patent was issued for a method of cooking bacon, where the cooked bacon was sold to consumers. Plaintiffs sued defendant infringer for patent infringement. Defendants counterclaimed that the patent was indefinite. The claims language that was indefinite was in the preamble to claims 1 and 3 which recites “[a] process … to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product.” (as distinguished from microwaved bacon) The issued patent did not define or identify specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. The district therefore ruled that the bacon patent is invalidated due to indefiniteness.
Two interesting points, first, the method of cooking bacon would have been patentable, if the patent specification defined or identified specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. Second, the preamble to the claims, were considered limiting on the rest of the claim. Many attorneys have been taught that preambles are not limiting. The case is HIP Inc. v. Hormel Foods Corporation et al., case number 1:18-cv-00615 (D. Del.), and can be found here.
Many clients and attorneys think filling out a copyright registration form and filing it is easy. However, if you make a mistake, it can lead to catastrophe!
In a recent case, Gold Value International Textile, Inc. d.b.a. Fiesta Fabric v. Sanctuary Clothing, LLC et al., No. 17-55818, 2019 WL 2347390 (9th Cir. Jun. 4, 2019), Fiesta alleged that defendant Sanctuary Clothing copied its fabric design, which was used to manufacture a blouse that was sold by defendant retail outlets. Sanctuary filed a counterclaim, seeking invalidation of Fiesta’s copyright. The district court and the 9th circuit both found that Fiesta’s copyright registration was invalid.
As background, a group of related works may be registered together for a single fee under some circumstances. However, published works may not be included with unpublished works. Fiesta had applied to register the copyright in the designs as part of a group of thirty-three fabric designs, certifying that none of them had been published. But, Fiesta had previously sold 190 yards of the fabric in issue as samples to “a limited group of existing and potential customers for the limited purpose of securing full production contracts.” Fiesta’s president testified that he knew of these sales but did not consider sampling to be a publication. This was the catastrophic mistake. The district court granted summary judgment in favor of defendants Sanctuary Clothing, LLC. The 9th circuit panel affirmed the district court’s conclusion that Fiesta’s copyright registration was invalid under 17 U.S.C. § 411(b) because Fiesta knowingly included inaccurate information in its copyright application that would have caused the Copyright Office to deny registration. Specifically, Fiesta knowingly included previously published designs in its application to register an unpublished collection. In addition, the Register of Copyrights indicated that it would not publish a single group of published and unpublished works. Because a valid registration is a precondition to bringing an action for infringement, the panel affirmed the district court’s grant of summary judgment in favor of defendants. The panel further held that defendants were prevailing parties, and the district court did not abuse its discretion in awarding attorney’s fees under 17 U.S.C. § 505 even though defendants prevailed on a technical defense.
Defendants were awarded attorney’s fees and costs, which the district court granted in the amount of $121,423.01 against Fiesta. The case can be found here.
The moral of the story is, make sure you understand everything you are filling out when registering a copyright, and hire an expert in copyright law.
In a copyright infringement lawsuit between Rimini Street, Inc. and Oracle USA, Inc., a jury awarded Oracle damages after finding that Rimini Street had infringed various Oracle copyrights. After judgment, the District Court also awarded Oracle fees and costs, including $12.8 million for litigation expenses such as expert witnesses, e-discovery, and jury consulting. In affirming the $12.8 million award, the Ninth Circuit acknowledged that it covered expenses not included within the six categories of costs that the general federal statute authorizing district courts to award costs, 28 U. S. C. §§1821 and 1920, provides may be awarded against a losing party. The six categories of litigation expenses that qualify as “costs” are: (1) fees of the clerk and marshal; (2) fees for the court reporters; (3) fees and disbursements for printing and witnesses; (4) fees for copies of materials used in the case; (5) docket fees; and (6) compensation of court-appointed experts and translators. See 28 U.S.C. §§ 1821, 1920. The court nonetheless held that the award was appropriate because the Copyright Act gives federal district courts discretion to award “full costs” to a party in copyright litigation, 17 U. S. C. §505.
The Supreme Court in Rimini Street, Inc. v. Oracle USA, Inc., 139 S.Ct. 873 (2019) reversed, holding that the term “full costs” in §505 of the Copyright Act means the costs specified in the general costs statute codified at §§1821 and 1920 and does not therefore include all litigation expenses such as expert witnesses, e-discovery, and jury consulting. The Rimini Street case can be found here.
Last week, I attended the American Intellectual Property Law Association (AIPLA) Trademark Boot Camp 2019. I like to take these refresher courses on intellectual property to make sure I stay up to-date on the ever changing legal landscape of intellectual property so I can continue to provide the best patent, trademark, and copyright legal services to my clients. The 2-day AIPLA Trademark Boot Camp 2019 took place June 6-7 at the AIPLA headquarters in Arlington, VA and covered the basics of trademark application filing, searching, appeals, oppositions, and cancellations. More information can be found here.
Policymakers, practitioners, and business owners interested in learning about policies and strategies to more effectively combat counterfeit goods will want to attend this free, all-day program organized by the U.S. Patent and Trademark Office (USPTO) and the McCarthy Institute on June 6, 2019. It will bring together more than two dozen experts in the fields of brand protection and anti-counterfeiting, who will take an in-depth look at such topics as:
- Fighting counterfeits in a global market
- Utilizing new technologies to protect brands
- Enlisting allies in the fight against counterfeiting
- Consumer protection and counterfeits
- What government can do to help
Featured speakers will include Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu, and other USPTO executives.
Register here. There is no charge to attend the program, but registration is on a first-come basis. Please register in advance as space is limited, and there will be limited ability to accommodate walk-in registrations.
This program will be available for viewing remotely via LiveStream. No registration is required.
Full program agenda is available in .docx format.
A group of lawmakers released a draft bill to reform our patent law regarding subject matter eligibility. On May 22, 2019, the draft bill was released, and can be seen here.
The transformational aspect of the bill is that it would prohibit the use of “judicially created exceptions” in determining patent eligibility. The bill would also reject the consideration of other sections of the Patent Act when determining §101 eligibility. In lay terms, if this act is enacted, expect a much lower patent eligibility standard and increased patenting of software and business method inventions. Whether this bill can be enacted is to be determined!