Exclusive Rights

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Jonathan Engler discuss how the US International Trade Commission (ITC) evaluates standard essential patents (SEPs) that are litigated in this forum. They also provide useful context on the perspective of the ITC as it relates to the greater trade infrastructure.

Dan and Jonathan discuss these topics and more:

- How the US Trade Representative’s veto of the Samsung-Apple 794 decision affects ITC cases today, and what has changed

- Whether or not owners (or implementers) of SEPs should be fearful of a case brought against them at the ITC

- How ITC complaints can be structured to address SEP issues early on

- The future of SEP cases at the ITC: which industries will start utilizing this forum next?

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Karen Won discuss the recent Supreme Court decision in Jack Daniels v. VIP Products addressing whether the “Bad Spaniels” dog chew toy violates the Lanham Act for trademark infringement. In this case, SCOTUS held that the Rogers test for parody does not apply when a trademark is used as a source identifier, which occurred here, and sent the case back down for further proceedings to analyze the “likelihood of confusion” test.

Dan and Karen discuss this outcome and also cover:

- How and when to assess parody

- Surveys in trademark cases in light of the Sotomayor concurrence

- How the decision affects brands going forward

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Drew DeVoogd and Michael Graif discuss the recent Supreme Court decision in Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, which held that Warhol’s Orange Prince silkscreen portrait did not constitute fair use of a copyrighted photograph of the music legend.

Among other topics, Drew and Michael cover:

- Commercially used visual art and the fair use defense to copyright infringement

- The line between derivative and transformative works of art

- The terse concurrence and vigorous dissent issued with the opinion

- How this case may affect creators, their counsel, and the lower courts

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Daniel Weinger, Frank Gerratana, and Greg Penoyer discuss how young technology companies can set themselves up for IP success. Whether the organization’s goal is eventual divestment, an IPO, or undetermined, having a solid IP foundation will set a young company on the right track. Addressing these issues now will save time and money down the road.

Daniel, Frank, and Greg cover the topics below and more:

- Founding documents and relationships between founders

- Provisional patent applications and strategy

- Trademarks and other names and the importance of early research and protection

- Open source considerations

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, founding host Dan Weinger speaks with Dr. Thomas Gniadek, a seasoned EU patent and trade secrets litigator with Simmons & Simmons in Munich, Germany, about the Unified Patent Court (UPC). Coming soon to the European Union, the UPC and the Unitary Patent promise to create a radical sea change in how patents will function in the European Union.

Dan and Thomas dive into some of the changes that are coming, covering these topics and more:

• Expected shift in the balance of power in the patent space, with the UPC covering a market of more than 400 million people

• Types of matters to be handled at the local and regional divisions versus the central division courts

• Limits of the European Court of Justice, which sets up the Court of Appeals as the final arbiter of patent law

• How the UPC will decide what language to use for litigation

• How the Court of Appeals will synthesize decisions from the local and central divisions to make patent law consistent across the EU over the coming years, including the likely development of sophisticated damages jurisprudence

While there have been some adverse decisions from individual administrative law judges at the US International Trade Commission in recent years, final decisions coming from the commission since January 2019 have largely affirmed that complainants have satisfied the domestic industry (DI) requirement. Daniel Weinger, founding host of the Mintz EXCLUSIVE RIGHTS: Intellectual Property podcast, talks about this trend with Jonathan Engler, a seasoned ITC litigator, former attorney in the ITC’s General Counsel’s office, and newest Mintz IP litigator. Jonathan conducted a case-by-case analysis of relevant ITC decisions over the past 3+ years — and he discusses the results and shares his insights on the data.

Among other things, Daniel and Jonathan will talk about:

• Final decisions on DI issues by the commission have been almost entirely positive since 2019

• The history of the DI requirement at the ITC — from mostly stipulated to regularly challenged

• Recent decisions, including the decision in the 1206 investigation related to complainant Hyperice, and the lessons we can learn from them

• Reasons other than the DI requirement which are likely to trip up complainants at the ITC

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz patent attorneys Lily Zhang and Alex Trimble, PhD, discuss double patenting, a complicated and sometimes confounding area of patent law. They break it down in layman’s terms even a non-patent attorney can understand. They highlight the risks of, and ways to avoid being hit by, double patenting rejections – and how to overcome them if they arise.

Among other topics, Lily and Alex discuss:

• The two kinds of double patenting – same invention and obviousness-type double patenting (ODP)

• Common scenarios in which ODP arises

• Using terminal disclaimers for overcoming ODP rejections

• The legal ramifications of using terminal disclaimers

• When terminal disclaimers are the right option

DABUS Architect Dr. Stephen Thaler and Professor Ryan Abbott Discuss Artificial Intelligence Systems as Patent Inventors

Dr. Stephen Thaler, the architect of the artificial intelligence system known as DABUS, the first AI system to be named as an inventor on a patent, joins Professor Ryan Abbott of the Artificial Inventor Project, and Mintz IP attorney Drew DeVoogd for this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast. Patent applications with DABUS as a named inventor have been filed in 17 jurisdictions. Thus far, South Africa and Australia have issued patents naming DABUS as the inventor, and appeals are pending in the United Kingdom and the United States following rejections.

Dr. Thaler and Professor Abbott join Drew to discuss, among other things:

• The impetus for the Artificial Inventor Project

• Their reasons for founding the Artificial Inventor Project

• The intersection of economics and public policy in recognizing AI systems as inventors

• Criticisms of treating AI systems as patent inventors

• The development of consciousness in AI systems

• Did DABUS cry when Bambi’s mother was shot?

• The challenges associated with the law attempting to keep pace with technology

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz Intellectual Property attorneys Frank Gerratana and Daniel Weinger explore cryptocurrency, blockchain, and how IP factors into the future of these emerging technologies. The crypto/blockchain space is confusing to many people, so Dan and Frank try to simplify what blockchain actually means and how it works. Dan and Frank also discuss potential applications for blockchain technology and what technologists working in this groundbreaking space need to consider when deciding how to protect their innovations.

This podcast covers the following topics:

• The basic premise of blockchain and how it compares to other technologies

• How protecting your innovations in disruptive technologies is critical because such technologies are unpredictable

• How the Supreme Court’s decision in Alice Corp. v. CLS Bank International applies to the crypto/fintech industries

• Possible future applications of blockchain, and how it could affect IP protection going forward

In Part II of this damages-focused series of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz IP attorneys Drew DeVoogd and Daniel Weinger join guest David Duski of BDO for a more detailed discussion of apportionment of damages in patent litigation. Drew and Dan are experienced patent litigators, and David is head of BDO's National Intellectual Property Consulting Practice. In Part II, the trio discuss:

• Apportionment methodologies

- Smallest saleable patent practicing unit

- Entire market value rule

- Hypothetical negotiations taking advantage of the “book of wisdom”

- Hedonic regression analysis

• Insights into the VLSI Tech. LLC v. Intel Corp. ~$2.2 billion award

• The Federal Circuit’s recent positions on damages

• Tom Brady’s position in the draft…