Posted onMarch 21, 2020|Comments Off on COVID-19: Latest from Houston Harbaugh, P.C. Pittsburgh, Pennsylvania
High Resolution Covid-19
The latest and best information on Covid-19 should be sought from the CDC. Our law firm Houston Harbaugh, P.C. in Pittsburgh, Pennsylvania www.hh-law.com remains open and fully functional to serve our clients and others seeking legal assistance during this incredibly difficult time. We are complying with the Pa. Commonwealth’s Governor’s Order that all non-life-sustaining businesses remain physically closed and work remotely when possible. We are fully functional in that regard. See the most recent Pennsylvania Covid-19 Mitigation Orders and Guideline.Our law firm’s employment department Chair Craig Brooks issued some important workplace guidelines which should be helpful to businesses and employers as they struggle with the fallout from the Covid disease and related mitigation efforts in this and other states. Click here to see our website andemployment guidelines.
Federal law has allowed for third party requests for reexamination of an issued patent on the basis on prior art since the 1980s. Under the America Invents Act of 2011 (AIA), three review processes replaced what was then known as “inter partes reexamination.” These three review proceedings enable a “person” other than the patent owner to challenge the validity of a patent post-issuance: (1) “inter partes review,” §311; (2) “post-grant review,” §321; and (3) “covered-business-method review” (CBM review). As an alternative to or in connection with a patent litigation, an interested third party, an accused infringer, or any “person,” can request one of these types of reviews.
Return Mail sued the US Postal Service (part of
the US Federal Government) for infringing its mail processing patent and Postal
Service petitioned for CBM review under the AIA. The PTO agreed that the
patent claimed ineligible subject matter, and cancelled the claims. On appeal,
the Federal Circuit affirmed. Now, the Supreme Court has reversed – holding
that the Government is not a person under the statute and therefore cannot petition
for AIA review.
Justice Sotomayor led the conservative majority joined by Chief
Justice Roberts and Justices Thomas, Alito, Gorsuch and Kavanaugh.
Justice Breyer wrote in a dissent that was joined by Justices Ginsberg and
Kagan.
The majority here started with its presumption that
congressional statutes are not intended to bind or be directed to U.S.
Government activity. Here, the court looked and did not find sufficient textual
language to overcome that initial presumption. In particular, the word
“person” is used many times in the Patent Act (at least 18 times) and in
several different ways. There is basically no indication that this
particular use of “person” was designed to include the U.S.
Government. The majority also noted the awkwardness:
Finally,
excluding federal agencies from the AIA review proceedings avoids the
awkward situation that might result from forcing a civilian patent owner (such
as Return Mail)
to defend the patentability of her invention in an adversarial, adjudicatory
proceeding initiated by one federal agency (such as the Postal Service) and
overseen by a different federal agency (the Patent Office).
The dissent argued that the government-not-a-person presumption is rather weak and was overcome by the Patent Act. In particular, the majority notes that Federal agencies are authorized to apply for patent protection — even though the statute states that a “person” shall be “entitled to a patent.” See 35 U. S. C. §§ 207(a)(1) and 102(a)(1).
Carissa T. Howard is an intellectual property attorney with over 16 years of experience, Carissa’s practice is focused in federal court intellectual property litigation, patent prosecution, trademark prosecution, intellectual property counseling, and contract drafting. She also has experience in intellectual property licensing and preparing due diligence, infringement and validity opinions. She can be reached at howardct@hh-law.com or 412-288-2213
Posted onMay 20, 2019|Comments Off on SCOTUS Landmark Trademark Licensing Decision: Mission Product Holdings, Inc. v. Tempnology, LLC, NKA Old Cold LLC No. 17-1657
Has “the most significant unresolved legal issue in trademark licensing” finally found some closure? Circuit courts have long been split over whether bankrupt trademark owners could revoke a license and on what the effect is, generally, of a rejection of an executory contract. On Monday May 20th, 2019 the U.S. Supreme Court ruled that defunct brand owners (as debtors in Chapter 11) cannot use bankruptcy law to unilaterally revoke (reject) a trademark license agreement. The court held that bankruptcy “rejection” of an executory contract trademark license (a contract that neither party has finished performing) under Section 365 was akin to a breach of contract outside of bankruptcy. Per Justice Kagan: “A rejection (of any executory contract) breaches a contract but does not rescind it.” The licensee should not lose its right to use the debtor’s trademark under license. [Kagan] “Such an act cannot rescind rights that the contract previously granted.” Read here for the entire SCOTUS decision in Mission Product Holdings, Inc. vs. Tempnology, LLC. or here for a quick summary of the decision from Law360.
Posted by Henry M. Sneath, Esquire Co-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C.401 Liberty Avenue, Pittsburgh, Pa. 15222. Sneath is also an Adjunct Professor of Law teaching two courses; Trade Secret Law and the Law of Trademarks and Unfair Competition at Duquesne University School of Law. Please contact Mr. Sneath at 412-288-4013 or sneathhm@hh-law.com.
Posted onApril 4, 2019|Comments Off on Was the 2017 “NotPetya” Ransomware Attack an Act of War?
This is the question being litigated in a high-stakes cyber insurance coverage dispute between global snack food giant, Mondelez International, and its insurer, Zurich American Insurance Company, in Illinois state court. “NotPetya” was a 2017 ransomware attack in which infectious code impacted a number of global corporations, including Mondelez, encrypting computer hard drives and demanding payment for access to the data. Mondelez claims that it suffered damage to its hardware and operation software systems valued in excess of $100 million as a result of the attack. In early 2018, the U.S. and its allies publicly attributed the cyberattack to the Russian government. Russia denied the allegations. Modelez submitted an insurance claim to Zurich under an all-risk property insurance policy. Mondelez alleges that Zurich denied the claim based on a policy exclusion that excluded coverage for “loss or damage directly or indirectly caused by or resulting from … [a] hostile or warlike action … by any government or sovereign power … or agent or authority [thereof].” In October 2018, Mondelez filed suit against Zurich in Cook County, Illinois to determine whether the exclusion applies. According to the docket the case is currently pending, and working its way through the discovery process.
This case is being closely watched by corporations and insurers alike as it may have broad implications on cyberattack coverage for both traditional and specialized cyber insurance policies that contain the same or similar exclusions. What evidence will the insurer present to seek to prove that this war exclusion applies?
Pieces by Brian Corcoran on Lawfare (here) and Jeff Sistrunk on Law360 (here) each contain in-depth discussions of the case and its potential implications on the cyber insurance market. The docket for the case can be found here (select the Law Division and enter Case Number 2018-L-011008).
Posted by R. Brandon McCullough attorney at Houston Harbaugh, P.C. 401 Liberty Avenue, Pittsburgh, PA 15222. Brandon concentrates his practice primarily in the areas of insurance coverage and bad faith litigation, complex commercial and business litigation and appellate litigation. Please contact Mr. McCullough at 412-288-4008 or mcculloughb@hh-law.comwith any questions pertaining to this article or any other legal matters.
Posted onJanuary 22, 2019|Comments Off on Supreme Court Holds: AIA Does NOT Change Patent “On – Sale Bar” Doctrine
There has been a nagging question regarding the status of the on-sale bar ever since passage of the AIA in 2011. The Supreme Court has unanimously answered the question in the negative in the slip opinion in Helsinn Healthcare v. Teva No. 17–1229. Argued December 4, 2018—Decided January 22, 2019. See opinion here: https://www.supremecourt.gov/opinions/18pdf/17-1229_2co3.pdf
Justice Thomas wrote for the unanimous court to affirm the Federal Circuit ruling and the summary of same is here. Even a “secret sale” can trigger the bar. The Court framed the issue:
“We granted certiorari to determine whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. 585 U. S. ___ (2018). We conclude that such a sale can qualify as prior art.”
“Held: A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under §102(a). The patent statute in force immediately before the AIA included an on-sale bar. This Court’s precedent interpreting that provision supports the view that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. See, e.g., Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67. The Federal Circuit had made explicit what was implicit in this Court’s pre-AIA precedent, holding that “secret sales” could invalidate a patent. Special Devices, Inc. v. OEA, Inc., 270 F. 3d 1353, 1357. Given this settled pre-AIA precedent, the Court applies the presumption that when Congress reenacted the same “on sale” language in the AIA, it adopted the earlier judicial construction of that phrase. The addition of the catchall phrase “or otherwise available to the public” is not enough of a change for the Court to conclude that Congress intended to alter the meaning of “on sale.” Paroline v. United States, 572 U. S. 434, and Federal Maritime Comm’n v. Seatrain Lines, Inc., 411 U. S. 726, distinguished. Pp. 5–9. 855 F. 3d 1356, affirmed.”
Posted by Henry M. Sneath, EsquireCo-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C.401 Liberty Avenue, Pittsburgh, Pa. 15222. Sneath is also an Adjunct Professor of Law teaching two courses; Trade Secret Law and the Law of Trademarks and Unfair Competition at Duquesne University School of Law. Please contact Mr. Sneath at 412-288-4013 orsneathhm@hh-law.com.
Posted onDecember 27, 2018|Comments Off on BLOCKCHAIN: Is it the Next Big Step in Data Security?
From Law.Com and its Legaltech news former Microsoft CTO Adrian Clarke (Evident Proof) reports on the technology of Blockchain and its purported major security benefits for the supply ecosystem. “The blockchain is a transaction ledger that is uneditable and virtually unhackable. New information can be written onto the blockchain, but the previous information (stored in what are known as blocks) can’t be adjusted. Every single block (or piece of data) added to the chain is given an encrypted identity. Cryptography effectively connects the contents of each newly added block with each block that came before it. So any change to the contents of a previous block on a chain would invalidate the data in all blocks after it.” Clarke’s report here is perhaps some comfort for an exponentially growing sector of the world wide economy which relies on supply chain management on a massive scale. See his piece in Law Journal Newsletters at http://tinyurl.com/y7mqfnem
Attorneys Bill Cheng and John Frank Weaver at McLane Middleton, P.A. in New Hampshire posted this piece in the NH Business Review at: http://tinyurl.com/yblh6nqp regarding the interaction between Blockchain and Bitcoin and how the GDPR for example will struggle to deal with these technologies, given the protections that GDPR attempts to provide to data owners so that they can control their personal information and data. Blockchain, particularly in conjunction with Bitcoin as the currency for a Blockchain secured transaction will prove a challenge to the GDPR rules. CTOs, Industrial Engineers and Supply Chain designers have big decisions to make in the years to come regarding security and whether Blockchain is the answer to some data protection issues. Photo courtesy of Law.Com.
Posted by Henry M. Sneath, EsquireCo-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C.401 Liberty Avenue, Pittsburgh, Pa. 15222. Sneath is also an Adjunct Professor of Law teaching two courses; Trade Secret Law and the Law of Trademarks and Unfair Competition at Duquesne University School of Law.Please contact Mr. Sneath at 412-288-4013 orsneathhm@hh-law.com.
Posted onNovember 28, 2018|Comments Off on Opinion from @Proskauer Rose: Urges More Consistency in Non-Competes. Federalization?
@Proskauer Rose Attorney Steve Kayman and Judicial Law Clerk Lauren Davis published this opinion piece on Law 360 to all of whom we acknowledge their copyright protection.http://tinyurl.com/yaaonlmd “A Call for Nationwide Consistency on Noncompetes” rightly urges for more consistency in the construction and application of laws on Restrictive Covenants and Non-Competes in employment agreements and in the workplace. The authors correctly point out the difficulty that lawyers have in advising corporations, particularly large ones, about the enforceability of restrictive covenants especially when the business and/or employee have interstate commerce. Some states are essentially outlawing non-competes and if an employee leaves one state to work in another, the choice of law and jurisdiction issues generally erupt in any litigation. Kayman rightly points out that courts are looking to extra contractual facts to assist in making a breach of contract decision in lawsuits over these agreements. Finally – Kayman and Davis suggest a possible parallel between this issue and the Defend Trade Secrets Act (DTSA) which has now created a federal remedy for misappropriation of trade secrets. Trade secret claims are often paired with non-compete claims so this parallel, and new federal legislation might be the solution. The law on these issues is clearly in a state of flux. We thank Kayman and Davis for this opinion piece.
Posted by Henry M. Sneath, EsquireCo-Chair Litigation Practice Group and Chair of the IP Practice Group: Houston Harbaugh, P.C.401 Liberty Avenue, Pittsburgh, Pa. 15222. Sneath is also an Adjunct Professor of Law teaching two courses; Trade Secret Law and the Law of Trademarks and Unfair Competition at Duquesne University School of Law.Please contact Mr. Sneath at 412-288-4013 orsneathhm@hh-law.com.
Posted onSeptember 17, 2018|Comments Off on From Relecura: Semiconductor Sensors. Building the Wave in IoT Development
As the Internet of Things (IoT) develops, there is an increasing need to “sense” changes in the atmospherics which surround semiconductors. In other words, the working chips must get smarter and smarter and have feel! Some of that AI feel in chips is being supplied by sensing chips – the layered structure of wafers of semiconductor material which can “sense” changes in the environment it is measuring or into which it is placed. Gas sensors are particularly important and patent applications for these devices are on the upswing internationally, with Sony and Samsung leading the way. See Relecura article at http://tinyurl.com/ybrojuq2
Edaphic Scientific describes a gas sensor’s performance as follows: “Semiconductor gas sensors rely on a gas coming into contact with a metal oxide surface and then undergoing either oxidation or reduction. The absorption or desorption of the gas on the metal oxide changes either the conductivity or resistivity from a known baseline value. This change in conductivity or resistivity can be measured with electronic circuitry. Usually the change in conductivity or resistivity is a linear and proportional relationship with gas concentration. Therefore, a simple calibration equation can be established between resistivity/conductivity change and gas concentration.” http://tinyurl.com/y6ufz7vx
The IoT relies on smarter and smarter technology as it governs many things around us. Products will have this smarter and smarter technology and converting “sensing” into electronic circuitry will likely have a positive impact on performance, but will present new challenges as products fail and cause damage to person or property. How deep a dive will be required in products liability litigation for example when a “sensor chip” fails to sense. Sensor chips have been around for a while, but they are becoming tremendously sophisticated and integral to the virtual world in which we operate.
Posted onJuly 18, 2018|Comments Off on DTSA (DEFEND TRADE SECRETS ACT) CLAIMS INCREASE DRAMATICALLY IN 2017 AND 2018
FROM DTSALaw®: As we have previously predicted on these pages (and at www.dtsalaw.com ), the number of DTSA lawsuits has risen dramatically in 2017 and the first two quarters of 2018. Lex Machina and IPLaw 360 report that DTSA lawsuits increased from roughly 900 suits to over 1100 in 2018. In the first two quarters of 2018, the number of filings already is 581. The DTSA is still working its way into the legal community’s knowledge base and many practitioners may still be unaware of the most important benefit – of automatic Federal Court jurisdiction for trade secret cases under the 2016 DTSA that involve interstate commerce. The DTSA was signed into legislation as an amendment to the Economic Espionage Act (EEA) and with EEA is a powerful tool in the arsenal of litigation strategies in both the employment and non-employment arenas. Many DTSA claims are part of claims brought to enforce employment restrictive covenants, which restrictive covenant claims themselves are becoming disfavored by the states and their courts. As “non-compete” claims find less favor with the courts, lawyers should look carefully at the DTSA (and EEA) for civil claims that might apply. IPLaw 360 reports as well that only 19 cases filed to date have reached a conclusion on the merits of trade secret misappropriation. Results were essentially evenly split between plaintiffs and defendants. Houston Harbaugh, P.C. (www.hh-law.com) has an aggressive employment and trade secret practice and Pittsburgh is seeing a number of new cases filed in its Western District Pennsylvania Federal Court. DTSALaw® is a registered trademark of Houston Harbaugh, P.C.
Posted byHenry M. Sneath, Esq. Shareholder and Director; Co-Chair of the Litigation Department; Chair of the IP Department; Houston Harbaugh, P.C. (www.hh-law.com) Pittsburgh, Pa.Please contact Mr. Sneath at412-288-4013 or sneathhm@hh-law.com
Posted onJuly 6, 2018|Comments Off on Top Patent Decisions in 2018 per Law 360
Pullback from Alice? In February, the Federal Circuit issued its decision in Berkheimer v. Hp, Inc. ( February decision) and seemed to pull back from what some would say is the overuse and early use of the Alice decision to invalidate patents. Key holding is that the question of whether a patent contains ineligible subject matter may involve factual questions and that Motions to Dismiss and even Summary Judgment Motions may not be the proper forum for such invalidation decisions. Law 360 reports however, that there is still apparent division on the CAFC with regard to Alice and its progeny.
Reinforcement of TC Heartland: In BigCommerce, Inc. v Beyond, the CAFC once again answered the simple question of how many districts can have proper venue for a case. Answer = 1. “Principal place of business” or “state where defendant is registered to do business.” See (” overturned “). CAFC overturned Texas District Court Judge Rodney Gilstrap in this decision and the erosion of seemingly automatic jurisdiction in the Eastern District of Texas continues. See other key decisions here from Law 360
Posted byHenry M. Sneath, Esq. Shareholder and Director; Co-Chair of the Litigation Department; Chair of the IP Department; Houston Harbaugh, P.C. (www.hh-law.com) Pittsburgh, Pa.Please contact Mr. Sneath at412-288-4013 or sneathhm@hh-law.com
Contact our Pittsburgh Intellectual Property, Cyber and Data Security, Trade Secret, DTSA and Technology Attorneys at Houston Harbaugh, P.C. through IP and Litigation Sections Chair Henry M. Sneath at 412-288-4013 or sneathhm@hh-law.com. While focusing first on health care and prevention issues for family, friends and employees, we are also beginning to examine the overall Covid Law related issues in business litigation, contract force majeure, trusts and estates litigation and insurance coverage issues that will naturally follow the economic disruption of the Covid-19 pandemic.
Some posts herein are from the HH-Law resources of PSMN® and PSMNLaw®. Business Litigation. Pittsburgh Strong® and DTSALaw®, PSMN® and PSMNLaw® are federally registered trademarks of HH-Law. See Firm Website at: https://www.hh-law.com/Professionals/Henry-Sneath.shtml
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