Exclusive Rights

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz IP attorneys Drew DeVoogd and Daniel Weinger welcome guest David Duski for the first of a two-part series covering patent trial damages. David is a Director at BDO in its Advisory Practice and leads BDO’s National Intellectual Property Consulting Practice. He serves as an expert witness for damages assessments in patent litigation. In Part I, the trio discuss:

• Whether we are at the beginning of a trend in large damages verdicts

• The impact of litigation financing on patent litigation

• Damages cases becoming more of a theme in trials

• If implementers factor the cost of litigation into the cost of product development

• Risks of taking cases to trial — for patentees and accused infringers

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz Intellectual Property attorneys Andrew Skale and Daniel Weinger explore copyright protections for music and other creative works. This episode was triggered by Dan’s interest in music copyrights generally and by recent high-profile cases filed by Marvin Gaye’s estate. Dan asks Andrew what musicians, artists, and authors should be aware of when it comes to copyright protection and how to prevent problems from arising in the future. Andrew provides an overview of these issues and digs into other copyright topics, including:

• The multipart requirements to prove ownership and infringement of a copyright

• Some famous copyright cases involving music, and what we can learn from them

• If the reputations of people like George Harrison, Ed Sheeran, and Robin Thicke are damaged by the filing (or subsequent loss) of lawsuits accusing them of infringement

• The difference between being inspired by a musician or song, and copying the inspiring work

• The necessity of a written agreement to transfer ownership of copyrights on a creative work you commission for your business (logo, photo for website, jingle, etc.)

• Why it matters that one can never “unsee” Smaug the dragon from the film The Hobbit: The Desolation of Smaug

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, attorneys Drew DeVoogd and Dan Weinger break down the recent Supreme Court decision in United States v. Arthrex, where the Court found that Administrative Patent Judges (APJs) are hired in violation of the Appointments Clause, and crafted a new structure for the PTAB. The Arthrex case has far reaching implications not just in patent law, but across the administrative bodies of the federal government. Drew and Dan discuss the following in this episode:

• The atypical breakdown of concurrences and dissents

• Choices the Court could have made but did not

• Effects Arthrex may have on government generally and the future of the PTAB

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, patent attorney Lily Zhang talks with trademark attorney Karen Won about the age-old choice between adopting descriptive brands or distinctive brands for businesses and products. As Karen tells us, trademark law is more art than science. Why is it that “bagel thins” can eventually become a trademark, but "pretzel crisps” can never be a trademark? Great question! The answer lies in trademark law's five categories into which all brand names can be sorted, each of which comes with different levels of legal protection and enforceability:

• Fanciful: Very broad, strong rights – completely invented

• Arbitrary: Broad, strong rights – an existing word that has no relation to the use

• Suggestive: Usually broad, strong rights – alludes to something about the product you are offering without spelling it out, but the boundary line with a descriptive mark is tricky

• Descriptive: No initial protection – immediately conveys information about your product, business, or both

• Generic: No protection ever

Listen to learn more about what these categories mean for you and best practice tips for naming your next product or business.

A PhD-holding patent prosecutor and a seasoned ITC and district court litigator talk claim construction. Can they possibly find common ground? In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Drew DeVoogd and Todd B. Buck, PhD, discuss the challenges of claim construction, offering the different perspectives of the patent prosecutor, who develops claims, and the litigator, who may be arguing the same claims many years later. Perspective is everything — well, aside from the varying methods of interpretation by the courts.

Our hosts discuss a number of significant developments and issues related to claim construction:

- How SCOTUS defined claim construction in Markman, and how district courts, the ITC, and the CAFC appear to be interpreting that decision differently

- The “Russian doll” problem — construction of the construction of the construction of claims

- When Markman goes bad — how Markman opinions can create poorly construed claims that challenge both parties in a litigation

- The potential for misalignment of interests in developing claims with respect to protecting an innovation versus using the same claims in future efforts to litigate the patent

- Benefits of the different strategies for claims definition used by opposing parties in a litigation

- Does every disputed term really need a particularized definition?

Does Google’s Android API infringe Oracle’s copyright in its Java API? That’s the question the Supreme Court was asked to deal with in Google v. Oracle recently. In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Mintz IP attorneys Todd B. Buck, PhD and Michael R. Graif dive into the Court’s decision regarding Google’s copying of 11,500 lines of “declaring” code from Oracle’s Java API.

Their informative discussion covers a number of pertinent questions:

- Software is expressly protected under the Copyright Act insofar as it is a set of instructions that directly or indirectly bring about a certain result. So how is it okay for Google to copy this code?

- The Supreme Court decided that Google’s copying was fair use without addressing copyrightability. How did that affect the Court’s fair use analysis?

- Unlike the 2.5 million lines of “implementing code,” which Google rewrote, the “declaring” code that Google copied contained the commands that Java programmers knew from writing programs for laptops and desktops. How can copying code to encourage further development for smartphones be a “transformative” use?

- Oracle tried and failed to develop a platform for Java programmers to write apps for smartphones. Google succeeded with Android. Does that mean Google’s copying had no “market effect” on Oracle?

- Is this decision good for start-ups? What about established software providers? What about open source software? How will this ruling impact software programming going forward?

In this episode of our Exclusive Rights podcast series, Mintz IP attorneys Daniel Weinger and Todd B. Buck, PhD, discuss the recent decision by the Biden Administration to signal US approval of a proposal to waive intellectual property rights related to COVID-19 vaccines currently under review at the World Trade Organization (WTO). India and South Africa first proposed the controversial IP rights waiver last year, and the United States had not previously supported such waivers. Dan and Todd discuss the significance of the communication from the White House and the impact such a waiver could have on businesses.

Their discussion covers the following issues:

- Impact of the broad IP waiver

- Whether the waiver helps achieve the stated goal of increased access to the vaccines

- Potential industry responses to a significant shift in US policy

- Roadblocks other than IP that remain even if the waiver goes into effect

- Possible alternative, and already existing, solutions via the TRIPS provision of the WTO

In this inaugural episode in our new IP podcast series, Exclusive Rights, Mintz IP litigation attorneys Dan Weinger and Drew DeVoogd discuss the important forum that is the International Trade Commission. Listen in as they cover the unique value, benefits, and challenges the venue offers in connection with intellectual property–related unfair trade practices investigations, including:

- Major differences between ITC and Federal District Court

- Viability and treatment of Standard Essential Patents at the ITC

- The types of IP the ITC handles

- Risks and strategies for Respondents (defendants) involved in an ITC investigation

- Speed of the venue and complexity of unique rules and procedure