The Sunset

Using publicly available information, Clearview AI built a massive database of faceprints for commercial use and police use. Did they have the right to do so? Not in Illinois at least. What does this important case mean for those outside of Illinois? And how will other states be looking to provide similar protections?

 

More on Catherine Crump.

 

SPEAKERS

Catherine Crump, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Experts series podcast. Today we are talking about biometric privacy and the intersection of First Amendment and privacy law. To guide us through this discussion, we have the director of the Samuelson Law, Technology, and Public Policy Clinic. Catherine Crump. Catherine has been at the clinic since 2014, and is one of the nation's leading experts on this topic. So with that in mind, Catherine, can you start us down this discussion about Clearview AI?

 

Catherine Crump  00:33

We're going to talk today about a really interesting new ruling from an Illinois State Court, which issued a decision in which the ACLU and other organizations sued a company called Clearview AI for violating an Illinois law famous to those of us in the privacy world called the Illinois Biometric and Identification Privacy Act, and specifically for building a massive database of face prints it scraped from the internet, and then it sells access to these images to police departments who want to use them for facial recognition. So this really is a decision that pits privacy and free speech against each other.

 

Wayne Stacy  01:14

I just want to make clear to the listeners, that clear view is collecting all this information from public sources.

 

Catherine Crump  01:22

Yes, yes, that's right. So the Clearview AI product really shook the privacy community. It was actually the subject of a really well publicized New York Times article by a reporter named Kashmir Hill, it was in the magazine. And so it's a private company. And what it does is it scrapes photos off the public Internet, and yes, they're publicly available, right? So you know, when you get a picture taken of you at a law firm event, or maybe someone posts something on a public page of Facebook, all of those photos are available for viewing. And so what Clearview AI did, is it harness the power of the internet to gather all of these images. And to create a truly massive database of publicly available images. I think it's said it had something like 3 billion such images. And then it created face prints of those, right, which are a particular way to calculate facial geometry to create a unique imprint of people. So what was really what was really remarkable about this was that it's just vast in scope compared to the biometric database has been created before. So it's not like no one hadn't used this technique. In the past, you know, law enforcement has been doing facial recognition for probably 20 years, at least. But it's always done so on carefully controlled databases. So for example, DMV photos. And so this was different because it involved a private company, creating a truly massive database of photos online. And so it was just bigger in scope than anything anyone had seen before.

 

Wayne Stacy  02:55

I think back to the classic Fourth Amendment cases: you put your garbage on the streets, and the police can rummage through it. This resembles the garbage case, because I'm making these pictures publicly available. Why can't people just use them?

 

Catherine Crump

The Data Protection Act of 2021 would change privacy regulation worldwide. Will growing hostility toward Big Tech drive this Congress to act? And if they do act, what can we expect from this new agency?

 

More on Reece Hirsch.

 

SPEAKERS

Wayne Stacy, Reece Hirsch

 

Reece Hirsch  00:00

Welcome everyone to the Berkeley Center for Law and Technolog expert series podcast. I'm your host Wayne Stacey. And today we're talking about proposed privacy legislation. In particular, we're talking about the reintroduced Data Protection Act, which if passed, and that's a big if, would create a new federal agency focused on privacy. To guide us through this discussion today, we have Reece Hirsch. He's the co-head of the privacy and cybersecurity practice at Morgan Lewis and one of the nation's leading experts on privacy nationwide. Notably, he's also an author of six published books on cybersecurity. That's important because it's always great to find a lawyer that's an expert and has a personality at the same time. We get a wonderful guest today to walk us through the Data Protection Act of 2021.  Well, thanks for having me, Wayne. Let's just start with the basics. I saw that this was introduced back in June of 2021, with some new provisions. So the the Data Protection Act of 2021. Tell us what the key features are. There have been several attempts to pass comprehensive us privacy legislation. This is the latest, but it is a pretty comprehensive effort, pretty ambitious, and it is getting some early traction. So I think it's worth taking a look at. And it would establish a new independent federal agency called the Data Protection Agency, which would have the  authority to enforce new privacy regulations that they would develop, punish violators, study tech platform data collection practices. A lot of the kinds of things that have been here recently scrutinized by Congress, they'd be able to regulate the acts and practices involving use or collection of personal data. And then also, they would be able to examine mergers that involve significant combinations of personal data, where this new agency would be reporting on mergers to the FTC and the DOJ. And that also, they would be taking on a new role in regulating data aggregators, companies that are amassing large databases of personal information. So it's really targeting a lot of the things that have gotten the most scrutiny and criticism in recent years, It seems that this federal agency would be incredibly powerful when you compare it to the California agency. They're not really even equivalent, are they? I think it's really intended to address a perceived deficiency in US privacy regulation, because we do have the Federal Trade Commission, and they do good work with somewhat limited resources. But the US doesn't have any federal agency that's exclusively dedicated to privacy enforcement. And for example, when you look at the Organisation for Economic Cooperation and Development, they've got 38 member countries, including Germany, France, the UK, and the US is the only one that doesn't have a dedicated Data Protection Agency, this bill would be designed to try to remedy that, and also create a more kind of beefed up agency because the FTC has in the neighborhood of 40 to 50 personnel dedicated to privacy enforcement, when in the UK, their data protection agency has more in the neighborhood of 180 people concentrating on this subject. So that is kind of what they're aiming for with this bill, is to create that kind of really robust regulator in the privacy space. When I read through the proposed statute, the piece that caught my attention was a term that inevitably would be the focus of a lot of regulation, maybe litigation, and that is "high risk data practices." What's that supposed to cover? It c

Stealing signs is definitely cheating. But can it be considered theft of trade secrets? A creative lawsuit says "yes."

 

More on Sheryl Garko.

 

SPEAKERS

Sheryl Garko, Wayne Stacy

 

Wayne Stacy  00:00

Welcome to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host Wayne Stacey. And today we're here to talk about trade secrets, baseball, and stealing signs. It's an odd combination, but luckily we have Sheryl Garko from Orrick. to guide us through this rather odd topic today. Sheryl is a partner at Orrick and a nationally recognized IP litigator. not associated with either the Houston Astros or the Toronto Blue Jays. So Sheryl, how do we get from the world of trade secrets, which is usually about, or rather people think it's usually about high technology. But now we're all the way to baseball. How do we get there?

 

Sheryl Garko  00:43

So this all comes out of the Houston Astros sign stealing cheating scandal that folks may recall. So this all kind of broke in 2019 2020. But related back to some conduct that occurred during the World Series and during the 2017 baseball season, then heading into 2018. This all came about because there was an article that was reported I believe in The Athletic that talked about the fact that the Astros were stealing signs stealing pitching signs, and it was subsequently confirmed by one of the Astros pitchers that was played on the team during that series, but that was in fact it was happening. So based on that, Major League Baseball launched an investigation, and in early 2020 confirmed that this was in fact the case. That the Astros had placed a camera out in centerfield to capture the pitching signals, and was relaying that video feed back to the dugout, where folks from the dugout would then communicate to the batter, what the pitch was that was coming. And it seems like this evolved a little bit in terms of their scheme where initially they were trying to clap or whistle, to demonstrate to tell the hitter what the signal was. And it eventually evolved to a they were banging on a trash can. And that a bang on the trash can meant that it was an off speed pitch. And no bang meant that it was a fastball that was coming. Because of that, there was a pitcher for the Blue Jays, he pitched during 2017 who claimed that he had an absolutely disastrous game, because the Astros were using the signal stealing scheme against him. And it resulted in him just having a terrible performance where I think he was up there for just a small portion of an inning and had four hits off of him. And he was subsequently sent down to the Minors immediately following that game. So he went on to say, to not have a particularly illustrious career following that. He spent some time in the Minors and then apparently, according to his pleadings, wasn't able to get a job in US baseball after that. And so he's been struggling a bit. So as a result, he filed a complaint against the Houston Astros, claiming that they misappropriated the Blue Jays or rather his trade secrets in those pitching sites.

 

Wayne Stacy  03:01

This sounds like a classic case of cheating, orchestrated by a group that never saw Ocean's 11. This was not well done. Though, it seemed to be effective until they got caught. But how do we go from cheating in a baseball game to a trade secret lawsuit?

 

Sheryl Garko  03:18

Yeah, so the claims are, you know, it's a creative tactic for sure. So the claims revolve around the fact that the pitcher was Michael Bolsinger. Basically, he says that those signals were his trade secrets that meet the definition of a trade secret that they were kept secret

The WSJ unnecessarily attacks Judge Gilstrap's integrity. And the Federal Circuit declares rural America as too inconvenient for patent cases. Does the Federal Circuit even care about In re Volkswagen anymore?   

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:01

Welcome, everyone. This is the Berkeley Center for Law and Technology’s Last Week in Texas podcast. I'm your host, Wayne Stacy, the executive director of BCLT. And once again, we have Michael Smith with us, world famous lawyer and legal blogger, and probably the most knowledgeable person about Texas civil procedure and patent cases. With all of that introduction, Michael, we're gonna turn to media first and ask about what looked like an attack piece from the Wall Street Journal last week, presumably talking about judges and their duty to recuse themselves, but really going after Judge Gilstrap in an unfair way. What did you make of that piece?

 

Michael Smith  00:50

When your take on it was the same as mine. The the journal initially had an article talking about how over 100 judges had not recused in cases where the journal thought that they should have because the judge or the judges spouse or a member their family had a stock in, in in a company that was in the case. It pointed out that in most cases, the judges thought that they didn't need to recuse, either because it was in a trust or it was blindly or privately managed. And in the journal says that's not the case. I don't know if that's true or not. But what we saw come out the next day was I thought a pretty clear attack piece on judge Gillstrap. But what was really funny about it to those of us who handle IP cases out there is that they they, they their data analysis showed that judge Gillstraps rulings have actually favored defendants more often than in patent suits nationwide. When you get down to trial, it showed that defendants won more often than they lost at trial. But nationally, defendants lose out almost 60% of the time, which is not news. We all knew this. But it was funny seeing the Wall Street Journal, explain how defendants do better in his court. But they were still trying to claim that there was something improper about about his cases. So it got a lot of attention locally in Texas. But it's just hasn't been our experience. Nobody. Nobody that I know of. And this includes the reporters that wrote the case that wrote the article. I don't think any of them think he ever did anything improper as a result of the ownership. They were simply looking for an excuse to say something bad about him. And and it's unfortunate that they did that, because this is an important issue. This is an issue where the courts, and possibly Congress should look at making sure that this is handled a little more transparently, but they undermine their analysis by taking shots at a judge where nobody thinks that is influencing his opinions. But But again, I had someone asked me the other day, well, where do you go from here is judge Gilstrap going to recuse is he not going to recuse? What happens if he does? I don't know. I had a scheduling conference with him last week in a case where I now know he holds stock in the company that's on the other side of me. I have no intention of asking him to recuse, because I'm very happy to have him here. In my case. If he chooses to recuse or if he decides that he is required to accuse recuse what happens to those cases? Well, most courts have rules dealing with that and the rule in the Eastern District is the cases then go to the other judge, Judge or judges that are assigned to that division. In this case, that means they go to judge Trey Schrader in Texark

Every other week, BCLT Executive Director Wayne Stacy conducts interviews with a Morrison & Foerster team member to discuss the Federal Circuit's recent patent decisions. We all know the basic holdings. The key, however, lies in the nuances of how the Federal Circuit reached its decision. If you want to know more—with an eye toward predicting the future—we have the nuanced information for you.

This week, we interview Brian Matsui:Opening the floodgates with SRI? Did the Federal Circuit return willfulness tactics back to 20 years ago?  And more Fintiv fallout? The Federal Circuit addresses a possible workaround to what some see as the Fintiv problem.  

 

SPEAKERS

Brian Matsui, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And today we're here to talk about the Federal Circuit and the recent rulings that are precedential. We have with us one of the nation's leading appellate experts and Brian Matsui from MoFo. Brian also helps drive MoFo's frequent if not weekly blog on Federal Circuit activity. But today, rather than focus on repeating what was in the blog, we want to have a discussion about two particular cases and what they might mean for the future. The first one is the SRI case, which is an incredibly old old case, it's been dragging around since 2013 and we're getting closer to final resolution, not quite there yet. But Brian, tell us why patent litigators should care about SRI.

 

Brian Matsui  01:03

Well, thanks a lot when I'm very happy to be doing this. Sri is a pretty interesting case, both from a process perspective. And from a legal perspective, I think one of the reasons why I thought this case was interesting is it's a comeback case. And you don't see that all that often. It's a case that basically was decided once by the Federal Circuit, and then it went back down, and then it came back up again. And then it was decided again, and you sort of have to feel for the district court in this case. Now there were actually were two District Court judges in there. But the district court basically got vacated or reverse twice in a row on this. And I think the second time the one we're the one we're going to talk about, it may feel not entirely fair that it did actually get reversed.Wayne you mentioned this case, was way back from 2013 when the complaint was filed. The case really is about willfulness now. I mean, I think the thing to talk about is, is the issue of willfulness. This is a obviously it's a patent infringement action that SRI is the patent owner, and they sued Cisco as the defendant. And about five years or so ago, a jury found that Cisco directly and indirectly infringed SRI's patents, and the infringement was willful and awarded $23 million in damages. And then the district court enhanced the damages it doubled them that set up this this first appeal. And the panel was judges Laurie O'Malley and Stoll and judge Stoll wrote the opinion. Now it's a 2019 and in examining the willfulness issue. The panel said that the Supreme Court said in Halo, the sort of contact conduct warranting enhanced damages has been variously described in our cases as willful, wanton, malicious, bad faith deliberate, you know, the characteristics of a pirate. And then looking at the evidence, the court said, they said the evidence wasn't sufficient because Cisco's conduct didn't rise to the level of wanton, malicious and bad faith behavior. And so then it basically sent it back for the district court to decide whether or not it met this standard. So that's what basically was the setup of the case. And then it came back to the

When should you worry that too much advocacy feeds a fee motion? And is the Federal Circuit driving venue and convenience disputes to robust, early discovery?

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Last W`eek in Texas podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And we have Michael Smith with us once again to tell us everything we need to know about last week in Texas. Michael, thanks for joining us again.

 

Michael Smith  00:20

Good to be with you.

 

Wayne Stacy  00:22

Well, let's start with something that many people think is as a mythical animal. And that is a summary judgment of non infringement in the Eastern District of Texas.

 

Michael Smith  00:33

Well, it did catch my attention when it came out. What we got was a summary judgment of infringe of noninfringement or actually a report and recommendation for Magistrate Judge Roy Payne to Judge Gilstrap of noninfringement in a case that was getting ready to go to trial in the next few weeks and martial. But it's kind of an interesting case, it grows out of a case that I actually knew something about because back in the early part of the 2000s, we had multiple jury trials involving this one plaintiff in martial. And the plaintiff has another case getting ready to go to trial. And the defendants in that case pointed out that we had an appeal from that earlier case, where the Federal Circuit said, these claims are invalid. This is not infringement, and and so forth. So the issue here was the defendants came in and said, there's not a tribal issue for the jury, because under the federal circuit's prior decision, there, there's just not an issue. And judge Payne agreed with the defendants and said and pointed out that what the plaintiff was arguing here was, well, the Federal Circuit was wrong, you should disregard what the Federal Circuit said, This isn't what the Federal Circuit meant. So let us get to trial. And Judge Paine wasn't having any of it. He said that that argument is doomed to fail. He said, what you're telling me to do flies in the face of starry decisis, what you're doing is presenting me with a claim construction argument for the first time that should have been raised during claim construction. So he said, binding precedent for the Federal Circuit says that you have to show 1, 2, 3 in order to show infringement. And your evidence in this case, doesn't have 1, 2, and 3. So a very interesting case. And we're looking forward to seeing what judge Gilstrap does when the case gets to hit when the report and recommendation is passed on, which should happen in the next few weeks.

 

Wayne Stacy  02:30

Well, Michael, there was a phrase that Judge Payne used, that seems like it's just fuel for a fee motion later on to say this is exceptional case. But it what's the quote, "binding precedent establishes that such evidence is insufficient." That seems pretty harsh.

 

Michael Smith  02:49

I think you're reading that exactly right. He says repeatedly. And when I was studying this opinion, for my weblog, I kept having to put phrases in quotes, because he's using exactly that kind of language. He's saying, You're asking me to go against starry decisis, you're asking me to ignore binding precedent, you're not just telling me it doesn't apply? You're saying it's so wrong, you just need to not apply it. That's just you can't do that. So I think in that case, you may well be looking at all this feeding into a 285 motion. Now on the road, I think it is not using the term in its legal sense. It is a very exceptional case

Face it, few people read privacy policies. But when it comes to kids' privacy, can we afford not to understand how their data is being used? Will badging systems like those provided by Common Sense Media get us to actually pay attention?

 

More on Jill Bronfman. 

 

SPEAKERS

Wayne Stacy, Jill Bronfman

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host, Wayne Stacey, the Executive Director for BCLT. And today we're here to talk about privacy and some of the tools that are there to help the average person deal with the rather complex privacy policies that are out there. So what we all know is privacy and tech doesn't happen by accident. Laws have been put in place to try to help everyone understand what their options are. And yet people still don't know what their options are. We get complex policies that are supposedly simplified. And what we hear is Americans over and over say they really care about privacy, just not enough to read those privacy policies. So with that in mind, what are the options that are available to help us as the country start thinking about privacy in a more sophisticated way, and especially privacy for our kids. So with that in mind, we are incredibly fortunate to have one of the nation's leading thinkers on this topic of privacy, and the realities of privacy as it applies to adults and children. So welcome. We have Jill Bronfman, the privacy counsel from Common Sense Media.

 

Jill Bronfman  01:20

Thank you. I'm glad to be here. Looking forward to talking about privacy and kids and consumer protection and all the things we work on at Common Sense Media.

 

Wayne Stacy  01:29

Well, let's just start with the the high level question, why does Common Sense Media care about privacy?

 

Jill Bronfman  01:35

We care about it, because we care about kids. And I think one of the important things about protecting children is protecting their privacy and their safety and their security. And we're particularly in the privacy group at Common Sense Media focused on the technology that children are using the media that children are using, that includes technology they might be using in the classroom, as students as K through 12 students, or even college students, and it includes technology they might be using at home. Needless to say, in the last year and a half, those two categories are mixed together. So lots of surprises there, due to the pandemic, where kids have been doing school at home and accessing technology like gaming that they might normally only use at home, in schools with a gamification of education. So things have really mixed it up for us in the last year and a half. And we are trying to get a handle on kids privacy, and all of the technology that kids could be using both home and in the classroom.

 

Wayne Stacy  02:44

I'm actually a little embarrassed to admit this. I mean, I've spent my life in technology law, tearing apart contracts, building contracts back up. But I don't pay much attention to the privacy policies that that I'm signing myself or I'm checking the box, I just find them a nuisance, I check and I move on. I know I'm in good company with lots of other lawyers. But when it comes to apps for my kids, I'm very, very thoughtful about it. But it's not easy, especially with the proliferation of school technology. How does Common Sense Media help people like me, and maybe even people that that are going to spend less time to keep up with the the technology and the privacy issues?

 

Jill Bronfman  03:28

Contempt and attorney-fee motions are rarely received warmly by courts. Last week was no exception. And a 101 decision that proves pleadings matter.

 

SPEAKERS

Wayne Stacy, Michael Smith

 

Wayne Stacy  00:01

Welcome, everyone to the Berkeley Center for Law and Technology's Last Week in Texas podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. And once again, we have Texas expert, and all around Civil Procedure expert, Michael Smith with us. Mike, thank you for joining us again.

 

Michael Smith  00:21

Thank you for having me Wayne.

 

Wayne Stacy  00:23

Michael, tell us what happened in Texas last week?

 

Michael Smith  00:26

Well, we had some interesting cases, come out of several districts in Texas, let me start with Eastern District Judge Gillstrap granted a motion to dismiss for unpatentable subject matter. And that's a relatively unusual order. In that the judges usually find that you haven't met the burden on that. But in this case, the court found that the first step was meant that the patent was directed to an abstract concept. But when he got to the second one, he said, there's a clear absence of factual allegations to support the eligibility, the patents in suit. So he said that I'm going to grant the motion and dismiss the case, because there just aren't factual allegations to get you over the finish line and get you in front of a jury on this. But because he said, it wasn't that the defendant met their burden to show that it was unpatentable subject matter. It was more of a 12b6 trombly issue of you just haven't plated it. He said, I'm going to dismiss it but dismissed without prejudice, which is a little bit of an unusual resolution, but at least the defendant got their dismissal.

 

Wayne Stacy  01:40

So it seems like the thing everybody should take away from this is not to get excited that 101 is now alive and flourishing in the Eastern District. But that procedures matter, you need to get your pleadings done correctly, you need to plead the correct facts. And if you don't, you're going to get at least one chance to try to correct your pleadings.

 

Michael Smith  02:02

Right. And I actually had that in a case earlier this week, where a part the judge said, Okay, I think the defendant wins on this and in terms of the plaintiff and says, Okay, do you want to just take the order and take it up on appeal? Or do you want to replea? But he did at least give them a dismissal without prejudice. So you're right of procedure matters. Facts matter. You need to have facts in your complaint, you need to make sure you've got what the court needs in order to give you the ruling that you need. That's the thing we're seeing in the last few weeks.

 

Wayne Stacy  02:37

So Michael, why here dismiss rather than, I guess, encourage them to replea?

 

Michael Smith  02:46

Well, I thought that was kind of unusual, because I have seen before, it's pretty common when you get a defendant that shows that they're entitled to a 12b6 dismissal a plaintiff gets an opportunity to replea. And I guess that is what is actually happening here. It's a dismissal, but it's without prejudice. So they could simply file a new suit and replea, the only procedural distinction is because it's already been dismissed once the plaintiff isn't going to be able to dismiss it again, the next time they asserted a dismissal at that stage would be dismissal on merits. I'm not real sure why he didn't say they can plead. It may have been that in the briefing, it beca

Antitrust claims are difficult to maintain in patent cases. But with the growth of large portfolios—especially through acquisition—the legal landscape could be changing. What do practitioners need to know?

 

More on Samantha Jameson and Aaron Nathan.

 

SPEAKERS

Aaron Nathan, Wayne Stacy, Samantha Jameson

 

Wayne Stacy  00:01

Welcome, everyone to the Berkeley Center for Law and Technology's expert series podcast. I'm your host, Wayne Stacey, the executive director of BCLT. And today our topic is the resurgent interest in the intersection of patents and antitrust. We have two leading experts with us today from the tensegrity law firm, Samantha Jameson, and Aaron Nathan, welcome both of you.

 

Samantha Jameson  00:26

Thank you.

 

Aaron Nathan  00:27

Thank you for having us.

 

Wayne Stacy  00:29

So, you know, I've spent my life doing doing patent litigation. And when it came to the the intersection of patents and antitrust, it was always interesting. But it only seemed relevant to a few select people and in just a few select occasions. It seems to be changing now. So what's happening that's making this an important topic today?

 

Aaron Nathan  00:51

That's a great question Wayne. So, from our perspective, the intersection of patents and antitrust really holds a number of pitfalls and opportunities for practitioners and market participants alike. If you're defending against allegations of patent infringement, it's worth having litigation counsel, who are well enough versed in these issues, to know whether they apply in your case and to use them to your advantage if they do. If you're asserting patent infringement, we're representing a party who is, it's equally important to understand the antitrust issues that can arise so that you can avoid these pitfalls, hopefully avoid seeing those kinds of claims asserted against your client, and so that you know how to deal with them if they are asserted. Now, as you alluded to, this is not the most common thing in patent infringement setting. It's non standard. But it does arise repeatedly throughout the years. And it has arisen a number of times in recent years. And in an antitrust climate that is relatively pro enforcement, it becomes especially important to understand the different ways in which antitrust claims can arise in the context of patent infringement litigation. It's an area that sometimes gets overlooked, but practitioners in both fields should know enough about the other field and how the two fields intersect to recognize and address these issues when they come up.

 

Wayne Stacy  02:09

Well, it's interesting, you mentioned that there may be a shift toward pro enforcement, which is why people need to know about this today. So what are the ways that patent litigation can become part of an antitrust claim?

 

Samantha Jameson  02:23

There are actually a number of different ways an alleged antitrust violation can arise in the context of patent litigation. Without giving an exhaustive list we can say it's a complicated topic, largely because the First Amendment generally protects government petitioning activity, including patent prosecution and patent lawsuits. There are a number of relatively well known areas where antitrust claims can arise. You can have claims based on this conduct and the prosecution of later asserted patents and claims based on sham assertions of infringement. In those cases, the normal f

Obviousness proves to be tricky for partial product designs. After the Federal Circuit's ruling, what is the future of secondary considerations? And will the guidance on primary references make it harder to obtain design patents?

 

More on Emily Bullis.

 

SPEAKERS

Wayne Stacy, Emily Bullis

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Expert Series podcast. I'm your host Wayne Stacy, the Executive Director for BCLT. And today we're here to talk about the world of design patents and the rule on what qualifies as a primary reference. It seems that the Federal Circuit in the Campbell Soup case gave us unique guidance, things that we don't don't hear a lot from the Federal Circuit. So we brought today Emily Bullis of Fenwick to discuss this. Emily is a patent prosecution expert, with that rare specialty in the prosecution of design patents in both the US and abroad. So welcome, and thank you for joining us, Emily.

 

Emily Bullis  00:44

Morning. Thanks, Wayne. Thanks for having me.

 

Wayne Stacy  00:46

So, you know, maybe we start with a little bit of a negative question here. But how did the PTab get it so wrong?

 

Emily Bullis  00:55

Yeah, so I think we need to look at this in the wider context of how the PTO handles design patents, the allowance rate for designs is is incredibly high. I think the most recent number I saw on the PTO website was something like 85%. So for the most part, these these applications are not receiving art rejections, when we do get pushback from the examiner, it's usually on, you know, minor drawing inconsistencies, or, or wanting a fix to the broken line statement. But for the most part, we're really just not seeing art rejection. So these cases are getting allowed very regularly. I also think it's a little trickier in this case, than normal, because these these two patents at issue are for multi article designs, which is fairly unusual as well. The drawings both show this this soup dispenser that you might see in the grocery store, as well as a portion of the can itself this this cylindrical object, but not all of that is claimed, there are a ton of broken lines here, which which indicate unclaimed subject matter. And in each of the patents, the area that's actually claimed is it's it's really minor, it's just some vertical lines in the label area. It's a portion of the cylindrical object. And in one of the two patents, it's these these little tabs that are keeping the can in place. So I think coupling the fact that this is a multi article design, with the large number of broken lines here kind of creates even more ambiguity than there is for for more straightforward products. It makes the scope of the design patent harder to parse.

 

Wayne Stacy  02:39

Let me bring everyone up to speed on something that's pretty fundamental. And that's really the the guard for issuance of both utility and design patents. And that's obviousnes