Author Archives: PSMN®

Public Domain May Not Be So Public After All–The Warner Bros. v. X One X Decision

Posted on July 7, 2011 | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Materials that have fallen into the public domain should be free of any claims of copyright infringement, right? Not so fast says the Eighth Circuit. As with many issues surrounding copyright law, the answer is not so clear cut. It depends on whether other copyrights exist and how one uses the public domain materials in relation to the other copyrights.

In Warner Bros. Entertainment, Inc. v. X One X Productions (No. 10-1743), Warner Brothers sued a number of defendants for allegedly infringing its copyrights in characters and images from the films Gone with the Wind and The Wizard of Oz, as well as numerous short films featuring the cartoon characters “Tom & Jerry.”

Studio Releases Marketing Materials Without Copyright Notice

At the time of these movies’ release in 1939, the copyright laws required that materials be marked with a copyright notice in order to gain the protection of the copyright laws. Materials that failed to comply with the notice requirements of the 1909 Copyright Act in effect at that time forfeited any copyright protections and fell into the public domain. Prior to releasing the films, the studios distributed marketing materials (posters, photographs, lobby cards, etc.) with images of the actors in costume on the sets. None of these materials complied with the copyright notice requirements, and, thus, fell into the public domain. When the movies were released, the studio properly marked the movies and continues to hold a valid copyright in them.

Defendants used these public domain images on shirts, lunch boxes, music box lids, playing cards, and three-dimensional models and figurines. In some cases, defendants added features to the images, such as signature phrases from the movies, or combined the images to create new scenes, sometimes reminiscent of scenes from the movies.

Warner Brothers Sues for Copyright Infringement

Warner Brothers sued, arguing that defendants were only entitled to reproduce the public domain images in their entirety and in the same form without any modifications (i.e., only reproduce the posters as posters). Anything else, it argued, violated its copyrights in the movies and the right to create derivative works.

The Eighth Circuit agreed that the underlying images from the marketing materials were in the public domain, but found that the use of those materials was limited by other copyrights.

In other words, if material related to certain characters is in the public domain, but later works covered by copyright add new aspects to those characters, a work developed from the public domain material infringes the copyrights in the later works to the extent that it incorporates aspects of the characters developed solely in those later works.

The Court then looked at the original books, the movies, the public domain materials, and the defendants’ products to see whether defendants’ use infringed Warner Brothers’ copyrights. In particular, the Court looked to the images in the marketing materials and found that the visual appearance was not sufficiently consistent to have thrown the characters themselves into the public domain by virtue of the release of the marketing materials. Instead, the Court found that only the exact images were in the public domain.

Eighth Circuit’s Holding

Taking this all together, the Eighth Circuit found that defendants were not limited to merely reproducing the public domain materials in exactly the same form as they originally existed. Instead, it found that defendants could reproduce any portion of the public domain materials in any two-dimensional format they chose.

The Court did prohibit defendants from combining public domain images into a new composite work, though. This, it felt, created a “new increment of expression of the film character that was not present in the separate images” and, therefore, infringed Warner Brothers’ copyrights. Similarly, the Court prohibited defendants from taking the two-dimensional images and recasting them in three-dimensional form. This too created a new increment of expression that violated Warner Brothers’ copyrights.

What Does This Case Mean?

The takeaway from this case is that there are no simple answers when it comes to materials that are both copyrighted and in the public domain. One has to look carefully at the facts of the case to determine the nature and scope of the materials in the public domain and in the copyrighted materials. For example, do the public domain materials convey properties and characteristics of the characters or are they just isolated images? How much is in the public domain versus how much is still copyrighted? Has the copyrighted material added anything over the material in the public domain?

While not a complete victory for the studio, Warner Brothers obtained much of what it wanted in this case. Defendants cannot create new works based on the material in the public domain. Instead, they are limited to reproductions (either in full or in part) of the public domain material. It will be interesting to see if either side tries to appeal this decision to the Supreme Court.

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Will Patent False Marking Litigation Flame Out?

Posted on July 1, 2011 | Comments Off on Will Patent False Marking Litigation Flame Out?

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

With the House and Senate passing versions of the America Invents Act that will reform the patent laws as we know them, I thought it would be interesting to look back at how patent false marking litigation burst onto the scene in 2010 and how it appears to be flaming out now in 2011. In the last two years, the patent world has been abuzz with claims of false marking brought by individuals against some of the largest companies in America. There were fears that this litigation would result in monstrous penalties where there was little “wrongful” action. As typically happens, these fears appear to have been overblown. While certainly a headache for those companies that were sued and for those companies that have gone to great lengths to verify compliance with the statute, the result seems to be more of a short-term inconvenience.

History of False Marking Law

False patent marking has been around for a long time, first appearing in the Patent Act of 1842, which prohibited the false marking of products with the intent to deceive the public with a fine of not less than $100. Later, in 1952, Congress changed the statute to impose a penalty of not more than $500 per offense:

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words “patent,” “patentee,” or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing that the same is patented for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words “patent applied for,” “patent pending,” or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public– Shall be fined not more than $500 for every such offense.

35 U.S.C. § 292(a). Prior to 2009, courts interpreting these statutes held that the penalty should not be imposed for each article falsely marked, but rather should be imposed for the decision to falsely mark a product line. See, e.g., London v. Everett H. Dunbar Corp., 179 F. 506 (1st Cir. 1910). As a result, there was little incentive for a litigant to bring a false marking claim and few cases were filed.

Pequignot v. Solo Cup and Forest Group v. Bon Tool

In 2007, things began to change. Matthew Pequignot, a patent attorney, filed suit against Solo Cup for falsely marking its plastic cup lids with expired patent numbers. Pequignot argued that the prior holdings were incorrect and that penalties should be imposed per article. Because there were potentially over 21 billion cups that were falsely marked, Solo Cup theoretically faced more than $10 trillion in potential penalties under Pequignot’s interpretation.

As the case was winding its way through the courts, the Federal Circuit heard an appeal in an unrelated case Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295 (Fed. Cir. 2009) that would ultimately spark a huge new cottage industry. Forest Group had a patent covering stilts commonly used in construction and sued Bon Tool for infringement of its patent. Bon Tool counterclaimed, alleging that Forest Group falsely marked its stilts. The court found that (1) Bon Tool did not infringe; (2) Forest Group had falsely marked some of its stilts and fined it $500 for a single offense of false marking; and (3) the case was not exceptional, so the court did not award attorney fees. Bon Tool appealed the last two findings, and the Federal Circuit determined that the fine under the false marking statute applies to each article falsely marked, not the decision to mark as the district court had held. (The Federal Circuit affirmed the decision not to award attorney fees). On remand, the district court imposed a fine of $180 for each of the 38 stilts that were falsely marked. Thus, the case that lit the false marking industry on fire and resulted in thousands of subsequent lawsuits was ultimately over a $6,840 fine.

Forest Group Launches a Thousand Suits

From 2007 to 2009, only 47 false marking cases had been filed in federal courts, but after the December 28, 2009 decision in Forest Group, patent attorneys and litigants stormed court houses across the country, filing almost 1,500 cases in the next year and a half. Given the potential $500 per article fine, companies that mass produced products were understandably concerned about facing potentially huge liability for wrongly marking their products.

Because false marking is a qui tam action and the statute appeared to authorize anyone to file suit, there was no need for patent attorneys to find clients who had been actually injured by the alleged false marking. Instead, patent attorneys were filing suit on their own or creating their own corporations to file suit against alleged false markers. The lawsuits tended to focus on products that had expired patent numbers, rather than products that were marked with inappropriate, but still valid, patent numbers. The reason was obvious—there was no need to go through the costly exercise of proving that the patent did not cover the product when the patent had expired. One could immediately jump to the question of whether the product was falsely marked with the intent to deceive the public.

Two later decisions by the Federal Circuit only intensified the flames sparked by the Forest Group decision. In Pequignot v. Solo Cup Co., 608 F.3d 1356 (Fed. Cir. 2010), the Court confirmed that marking a product with an expired patent number fell within the scope of the false marking statute (although it affirmed the judgment against Pequignot because he could not prove that Solo Cup acted with an intent to deceive). And, in Stauffer v. Brooks Brothers, Inc., 619 F.3d 1321 (Fed. Cir. 2010), the Court confirmed that anyone had standing to bring suit under the false marking statute, even if they did not suffer any direct personal injury.

The Federal Circuit appeared to be showing no inclination to beat back this fire. All indications were that a new form of patent “trolling” litigation was here to stay.

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Top 10 Smart Phone PINs to Avoid (Updated)

Posted on June 27, 2011 | Comments Off on Top 10 Smart Phone PINs to Avoid (Updated)

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

iPhones and other smart phones are becoming ubiquitous among legal (and other) professionals. The ability to access your e-mail and documents outside the office is extraordinarily convenient. As attorneys, though, we must temper that convenience with our obligation to preserve our clients’ confidences. Most smart phones offer the ability to password protect the phone, often with a 4-digit PIN or passcode, before you can access the information on the phone. They also often have a feature that will wipe the phone’s data if a certain number of incorrect PINs are entered in a row (with the iPhone that number is 10). But just how secure is your phone?

In this blog post by Daniel Amitay, he looked at the most common 4-digit PINs from over 200,000 users for a program he wrote for the iPhone. Startlingly, the top 10 most common PINs represent 15% of all the PINs people actually use (instead of 0.1% if the PINs were uniformly distributed). While the PINs people use for a program on their phone, as opposed to the phone’s PIN itself, may not be the same, the findings are interesting nonetheless. If they were the same or even a large percentage were, this means that someone who finds (or steals) an iPhone would have around a 1 in 7 chance of unlocking the phone before it is wiped automatically! Smart phone users would be well advised to take a look at the list and consider whether the PINs they have chosen are really as secure as they should be given what information is on (or accessible from) their phones.

For a similar article about computer passwords, check out this NY Times article.

Update: There is another very interesting article on DataGenetics website that explores this issue in even more detail. It looks at not only 4-digits PINs, but also up to 10-digit PINs and identifies some of the more common ones used.  It provides even more insight into common PINs to avoid, and it is well worth the read.

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Patent Drafting Checklist

Posted on June 27, 2011 | Comments Off on Patent Drafting Checklist

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

When drafting a patent, there are a number of factors that a patent attorney needs to consider. I saw this post on the PresumptionofValidity blog that nicely summarizes some of them in a checklist form. With a little bit of planning before you file the application, you can avoid a number of costly and sometimes fatal mistakes. It’s well worth the read (as are a number of other articles on the blog).

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Federal Circuit Affirms District Court Limiting the Number of Claims a Patentee Can Assert–Stamps.com Inc v. Endicia, Inc.

Posted on June 23, 2011 | Comments Off on Federal Circuit Affirms District Court Limiting the Number of Claims a Patentee Can Assert–Stamps.com Inc v. Endicia, Inc.

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

In an interesting nonprecedential opinion issued this week in Stamps.com Inc. v. Endicia, Inc. (No. 10-1328), the Federal Circuit affirmed (among other things) the District Court’s decision to limit the number of claims a patentee could bring against an accused infringer. The Court held that the District Court did not abuse its discretion in arbitrarily limiting Stamps.com to asserting 15 claims against Endicia, as long as the District Court gave the patentee an opportunity to assert additional claims for good cause shown. While not a ground-breaking decision, the case is instructive for parties involved in litigating large numbers of patent claims.

The Case Below

Stamps.com sued Endicia for allegedly infringing 629 claims in 11 patents. Endicia moved the court to limit the number of claims, and the court agreed, limiting Stamps.com to 15 claims. The court did state, however, that it would remain flexible and revisit the limitation if Stamps.com could show good cause for needing to assert additional claims. The court then construed 10 claim terms in 15 claims from 7 patents. After briefing on summary judgment, the court invalidated the 7 claims.

Stamps.com then moved the court to pursue additional claims, which the court denied when it granted judgment for Endicia. Stamps.com appealed to the Federal Circuit, which affirmed and rejected Stamps.com’s challenge to the court’s 15-claim limitation, because of the “good cause” outlet the District Court provided.

Take Aways From This Case

This case confirms that trial courts have great discretion to manage their dockets, including limiting the number of claims that can be adjudicated, as long as the court provides some mechanism for a patentee to show good cause for adding additional claims. Thus, a defendant faced with allegations that it infringes hundreds or thousands of claims should consider moving the court to limit the number to a more manageable amount. At the same time, a patentee that finds itself limited to a subset of claims should take care to both choose the best claims to assert and be ready to show good cause for why additional claims may be necessary. Unfortunately, the Court did not identify what “good cause” would be sufficient to expand the number of claims asserted. Nonetheless, a patentee should begin to develop facts and arguments to be ready to use, if necessary.

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USPTO Update—New TTAB Manual and Trademark Dashboard Released

Posted on June 22, 2011 | Comments Off on USPTO Update—New TTAB Manual and Trademark Dashboard Released

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Last month, the USPTO issued new rules and provided information that will be useful to trademark practitioners. In May 2011, the USPTO published the third edition of the TTAB Manual of Procedure (TBMP), which is the first update since 2004. The latest edition “incorporates all case law, statutory changes,  and changes to the Trademark Rules of Practice and Federal Rules where applicable as of November 15, 2010.” The complete version can be downloaded here. Trademark practitioners before the Trademark Trial and Appeal Board (TTAB) will need to review the changes and become familiar with these new rules.

In addition, building on its successful patent dashboard, the USPTO launched a trademarks dashboard. This dashboard, in the USPTO’s Data Visualization Center, provides up-to-date information about trademark filings at the USPTO, such as the average time to the first action, average total pendency of an application, number of applications, and other relevant statistics. This information will allow trademark attorneys to better inform their clients of the delays they may face in filing for a trademark. The USPTO now has three dashboards (patent, trademark, and policy and external affairs) that provide current statistics for the public, which builds on Director Kappos’ goal of providing more transparency about USPTO procedures.

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Supreme Court to Consider Patentability of Natural Phenomena—Grants Cert in Mayo Collaborative Services v. Prometheus Laboratories

Posted on June 21, 2011 | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Yesterday, the Supreme Court granted cert in Mayo Collaborative Services v. Prometheus Laboratories, Inc. (No. 10-1150) to address whether a patentee can monopolize basic, natural biological relationships. This case could have far-reaching effects for those patenting medical procedures and biological processes. In particular, the Court appears to be confronting the issue of what are the bounds of patentable subject matter with natural phenomena and processes. The specific question presented is:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.

The Court previously began to consider this issue in Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U.S. 124 (2006), but dismissed the case for technical reasons. Three dissenting Justices (Breyer, Stevens, and Souter) and would have decided the case and held that such claims are not patentable subject matter because they cover a law of nature and a basic scientific relationship. The full Court will now consider this issue.

The Patent at Issue

At issue in Mayo Collaborative is Prometheus’s patent claim involving the treatment of autoimmune disorders by administering a drug and determining whether the dosage was appropriate based on an observed metabolite level in the patient. Once administered, the body automatically converts the drug into a metabolite, the amount of which determines whether the dosage was appropriate. Specifically, the claim reads:

1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

The Case Below

Defendant (Mayo) argued that this claim was invalid because it was not patentable subject matter–all it amounts to is administering a drug and observing a reaction. Prometheus did not try to patent the reaction, which is a naturally-occurring one. Mayo also argued that the claim was unpatentable as a matter of public policy because of its broad scope and the effect it would have on public health and research. In particular, Mayo argued that any doctor that administered a drug and saw the results may infringe the patent, even if the doctor never took any action based on the results.

The patent was held invalid in the District Court, but the Federal Circuit reversed, finding that the claims satisfied the “machine-or-transformation” test under 35 U.S.C. § 101. On its first appeal, the Supreme Court remanded so that the Federal Circuit could consider the then-recent decision in Bilski v. Kappos, 130 S. Ct. 343 (2010). On remand, the Federal Circuit again reversed the District Court, finding that the patent claims were not invalid. Mayo again petitioned the Supreme Court for cert, which was granted yesterday.

What This Case Means

This case should clarify the scope of patents, especially as they relate to biological and natural processes. In Bilski, the Court rejected the Federal Circuit’s prior “machine-or-transformation” test as being too rigid. It will be interesting to see if and how they revise or clarify that standard. In addition, the Court will likely have to address whether an idea that is not abstract can nonetheless be so broad as to be unpatentable on that basis (as opposed to being anticipated or obvious).

If the LabCorp decision is any guide, the Court (or at least Justice Breyer) will be particularly hostile to claims that appear to cover laws of nature, natural phenomena, and abstract ideas. In that case, which also involved a patent claim for correlating test results with a physical condition, Justice Breyer found the claim invalid because it simply patented a natural phenomenon, albeit in the cloak of the abstract patent language of a process. In addition, Justice Breyer was concerned about the chilling effect of patents like these on doctors and their patients.

Regardless of what the Court determines, this case should be particularly important for those in the biological and pharmaceutical markets and could have a large impact on what kinds of inventions and processes can be patented.

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In re Klein–Federal Circuit Reverses Obviousness Rejection Because Non-Analogous Art Used

Posted on June 17, 2011 | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Last week, the Federal Circuit issued a rather interesting opinion in In re Klein, No. 2010-1411, reversing the Patent Office’s rejection of a hummingbird nectar mixer based on non-analogous art. The Court found that the five references were inappropriately used by the Patent Office because they were not analogous art and therefore not prior art under § 103.

What makes this case interesting is the fact that the invention in question, basically a cup with a moveable divider in it, is such a simple device. Under KSR, one would expect that such a simple mechanical device would be particularly vulnerable to obviousness challenges. In addition, the patentee included a purpose clause in his preamble, which many practitioners now avoid. By doing so though, it turned out to narrow the scope of his claim and protect him from the art cited against him by the Patent Office.

The Application

Mr. Klein applied for a patent on a device for mixing nectar for hummingbirds, orioles, and butterflies. The device (shown below) is basically a cup with a moveable divider. One side is filled with water, and the other with sugar. By moving the divider, the ratio of water to sugar changes creating nectars better suited for different animals.

The only independent claim recited:

21. A convenience nectar mixing device for use in preparation of sugar-water nectar for feeding hummingbirds, orioles or butterflies, said device comprising:

a container that is adapted to receive water,

receiving means fixed to said container, and

a divider movably held by said receiving means for forming a compartment within said container, wherein said compartment has a volume that is proportionately less than a volume of said container, by a ratio established for the formulation of sugar-water nectar for humming-birds, orioles or butterflies, wherein said compartment is adapted to receive sugar, and wherein removal of said divider from said receiving means allows mixing of said sugar and water to occur to provide said sugar-water nectar.

The particular nectar ratios used were admittedly well-known and not novel.

Only Analogous Art Can Be Used Under § 103 for Obviousness Determinations

The Court noted that “[a] reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” There are two separate tests for determining what defines the scope of analogous art:

  1. “whether the art is from the same field of endeavor, regardless of the problem addressed” and,
  2. “if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”

The issue in this case was the second test—what is reasonably pertinent to the particular problem—because the cited references were clearly not in the same field of endeavor.

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Court Threatens to Sanction Copyright Troll Righthaven LLC

Posted on June 15, 2011 | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

Yesterday, Chief Judge Roger Hunt of the United States District Court for the District of Nevada issued a stern ruling threatening sanctions against Righthaven LLC in one of the numerous copyright infringement lawsuits brought by Righthaven in Nevada (Righthaven LLC v. Democratic Underground, LLC, No. 2:10-cv-01356-RLH-GWF). In dismissing the case, the Court found that Righthaven misrepresented its rights in the underlying copyrighted works and did not have standing to sue for infringement. The Court further ordered Righthaven to show cause why it should not be sanctioned for failing to disclose another party’s (Stephens Media LLC) pecuniary interest in this and hundreds of other cases filed in Nevada.

Who Is Righthaven LLC?

Righthaven is a Nevada company that acquired limited rights from a variety of copyright holders, including Stevens Media LLC and News Media Group, to file hundreds of lawsuits against individuals and entities that allegedly infringe copyrights by posting excerpts of articles from newspapers such as the Las Vegas Review-Journal and the Denver Post. Righthaven has filed suit in a variety of jurisdictions throughout the United States, including Nevada, Colorado, and South Carolina.

Righthaven does not create or publish the works it is suing on. Instead, it acts as an enforcement arm of the original copyright holders that it has a relationship with. It scours the web looking for individuals, typically bloggers, that have reposted all or portions of articles appearing in newspapers such as the Las Vegas Review-Journal or Denver Post. It then files suit, threatening substantial sanctions, including damages up to $150,000 and forfeiture of web site domain names. Righthaven has sued everyone from political candidates to charities, individuals, bloggers, and companies—even those that a newspaper featured in the very article that was copied.

Because Righthaven does not create or publish the content that it is suing on, Righthaven is often referred to as a “copyright troll,” in an apparent tip to how many people refer certain types of non-practicing entities in the patent infringement arena.

Righthaven Lacks Standing to Sue

With respect to copyrights from Stevens Media, Righthaven entered into a Strategic Alliance Agreement (“SAA”) in 2010 that was made public for the first time this year as a result of discovery in one of the lawsuits. The agreement purported to assign all rights to the copyrighted materials to Righthaven. In fact left all of the rights with Stephens Media except for the bare right to sue. For example, Stephens Media expressly retained the rights to license, receive royalties, and exploit the copyrighted works. In addition, Stephens Media receives 50% of any of the litigation proceeds (minus costs) that Righthaven receives for lawsuits involving Stephens Media’s copyrights.

The Copyright Act only allows the legal or beneficial owner of an exclusive right to the copyrighted work to sue for infringement, and a copyright holder cannot (under Ninth Circuit law) assign the bare right to sue to another. In the Court’s decision yesterday, it found that the SAA gave Righthaven only a bare right to sue, so it was ineffective and Righthaven lacked standing—“ The plain and simple effect of this section was to prevent Righthaven from obtaining, having, or otherwise exercising any right other than the mere right to sue as Stephens Media retained all other rights.”

Righthaven Faces Sanctions

The Court was very troubled by Righthaven’s actions during this and other lawsuits brought in federal court in Nevada. In particular, the Court called some of Righthaven’s arguments and statements “disingenuous,” “inaccurate,” and “dishonest.” Most troubling to the Court was Righthaven’s failure to disclose that Stephens Media had a pecuniary interest in the litigation, despite Local Rule 7.1-1’s explicit requirement that all parties disclose anyone that has a direct, pecuniary interest in the outcome of the case. The Court believed that Righthaven also failed to disclose this information in approximately 200 other cases it filed in Nevada. Therefore, the Court ordered Righthaven to show cause within two weeks “why it should not be sanctioned for this flagrant misrepresentation to the Court.”

Is Righthaven Finished?

The Court’s decision yesterday is a stinging rebuke to Righthaven and its tactics. It will be interesting to see if it can survive this ruling and the likely challenges by defendants in the hundreds of other cases around the country. What may have appeared to be an easy way to make money off of these copyrights could end up costing Righthaven significant amounts of money in sanctions and attorneys’ fees.

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W.D. Pennsylvania District Court Selected to Participate in Patent Pilot Program

Posted on June 13, 2011 | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C.

wd-pa-courthouseOn June 8, 2011, Chief Judge Gary L. Lancaster announced that the Administrative Office of the U.S. Courts selected the U.S. District Court for the Western District of Pennsylvania to be one of 14 Districts Courts to participate in a 10-year Patent Pilot Program. As part of this program, the Courts will funnel the majority of patent cases to designated patent judges in each district with the intention of providing litigants with Judges that have special training and interest in hearing these cases. As the U.S. Court press release stated:

“In the pilot program, patent cases filed in participating district courts are initially randomly assigned to all district judges, regardless of whether they have been designated to hear such cases.  A judge who is randomly assigned a patent case and is not among the designated judges may decline to accept the case. That case is then randomly assigned to one of the district judges designated to hear patent cases.”

The Administrative Office selected Courts with an established history and interest in patent litigation and those with local patent rules already in place (the Western District of Pennsylvania implemented its local patent rules back on April 1, 2005). The fourteen District Courts selected by the Director of the Administrative Office of the United States Courts were:

  • Eastern District of New York
  • Southern District of New York
  • Western District of Pennsylvania
  • District of New Jersey
  • District of Maryland
  • Northern District of Illinois
  • Southern District of Florida
  • District of Nevada
  • Eastern District of Texas
  • Northern District of Texas
  • Western District of Tennessee
  • Central District of California
  • Northern District of California
  • Southern District of California

The Western District of Pennsylvania’s participation in this pilot program, along with its local patent rules already in place, reinforces that Pittsburgh is an attractive venue for litigants wishing to resolve patent disputes.

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