The Sunset

Minerva, on its face, seems relatively straight forward--assignor estoppel survives in some cases.  But how will District Courts handle mandatory fact discovery? And what can companies do to anticipate the future?

 

More on Robert Merges.

 

SPEAKERS

Rob Merges (BCLT/Berkeley Law), Wayne Stacy

 

Wayne Stacy  00:01

Welcome to the Berkeley Center for Law and Technology's Expert Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And with me today is Professor Rob Merges from the Berkeley School of Law. Today, we're talking about the Supreme Court's recent Minerva surgical case, and its impact on tech companies. Rob, thank you for joining us.

 

Rob Merges  00:25

Good to be here.

 

Wayne Stacy  00:27

Well, let's start, as they say, at the beginning, the Supreme Court in Minerva held that assignor estoppel survives in some cases, but not all, and then it remanded it back for more fact finding. And what we know is that it's still an equitable matter that the court will get to decide based on whatever facts it comes up with. So how do you see these types of cases playing out practically in the future?

 

Rob Merges  00:58

Well, I think we, we have some guidance from Supreme Court. But you know, I think the remand you mentioned is suggestive of the fact that they expect the case law to have to flesh out the factors that will be important. In the Supreme Court opinion, the idea was to return the doctrine to its equitable roots. They seem to pay attention to the fact that, like a lot of patent applications, the claims here were amended, you know, long after the priority date. And in a way that the inventor suggested, you know, deviated from his understanding of the nature of the invention. But I think the equitable factor is is just going to be whether it's fair under the circumstances, to find an estoppel, given certain facts. And the facts that they seem to be suggesting, need to be considered are, you know, what the inventor knew how the inventor understood the invention. And maybe you might say, the magnitude of the amendments, and how far the continuation application was stretched or pushed beyond the boundaries of what the inventor, you know, can be shown to have understood. I think that's really the those are the equitable factors that they're pushing on.

 

Wayne Stacy  02:31

How do you see these equitable factors interplaying with the continuation practice, that's become so commonplace?

 

Rob Merges  02:42

Yeah. So, you know, I think the the Supreme Court didn't make a per se rule or didn't didn't directly address head on perceived abuses of continuation practice. But I think latent in the opinion, is some suspicion about, you know, aggressive amendment practicing. And that might suggest to the courts that, you know, if they want to limit the, the effect of the Minerva case, they might just say that this is a case that applies to you know, sort of radical amendments, because we can assume that they weren't contemplated, but the inventors contemplation would sort of be an afterthought. And the real purpose would be to turn this into a tool. In some cases, you know, only where an inventor is willing to attack his own patent. But in those cases, you could turn this into a tool to limit continuation practice. And maybe that's a suggestion that we ought to take a hard look at that practice, outside the estoppel context. I'm not the first person to suggest that continuation practice, and, you know, the purchase of open applications has been subject to some manipu

US trade representatives have been focusing their attention on getting the Chinese government to adopt criminal and administrative sanctions for IP theft.  What does this focus mean for patent infringement? And what should US companies do about it?

Related article: The Criminal Bias in U.S. Intellectual Property Diplomacy

 

More on Mark Cohen.

 

Speakers:

Mark Cohen (AsiaIP/BCLT), Wayne Stacy

Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and technologies expert series podcast. I'm Wayne Stacy, the Executive Director for BCLT. And with me today is Mark Cohen, from the Berkeley School of Law. Mark is not only a lecturer, he is the director of the Asia IP Project, and a director at Berkeley Center for Law and Technology. So Mark is one of the leading experts in the world on Chinese IP law. And today, we're going to be talking about the role of criminal IP enforcement in China. Mark, thank you for joining us today.

Mark Cohen 0:38 Thank you, Wayne. It's a pleasure to be here.

Wayne Stacy 0:40 So Mark, you recently wrote an article and it talks about two types of IP enforcement it worldwide but in particular, in China. One is private enforcement, kind of what we would call civil enforcement, and the other is government enforcement, criminal and administrative rights. So my first question for you is why is a strong Chinese government enforcement enforcement option worrisome in the IP world?

Mark Cohen 1:07 Well, it's worrisome for a bunch of reasons. One is that from the WTO context, the obligation is to really have private remedies for all IP rights. So there's no obligation to have a criminal patent remedy in the US, except for marking requirements really has no criminal or public enforcement of the patent law. Nor is there an obligation to have a criminal trade secret remedy, the US has it China has many other countries have it. Moreover, the scope of criminal activities covered by the criminal law are limited, it doesn't capture non willful infringement, criminal law captures largely willful infringement, and according to the WTO on a commercial scale, so if you know criminal law is very important in addressing the need for society to respect IP, provide some measure of social deterrence, address criminality, but it may not work so well, when it comes to technology related issues, certainly not with patents. And even some difficulties on trade secrets, plant varieties. So it has it has its limits in terms of how the system functions. More importantly, perhaps you go back to the preamble, the TRIPS agreement, and it says IP is a private property, right, a private right. Now, if it's a private, right, does that mean the government is the principal agency to enforce it? Or does that mean, it's the individual that has to enforce it. And I think the TRIPS agreement, consistent with other aspects of the WTO, the global trading system was really looking at private actors protecting private rights. And that means robust civil remedies, and everything that goes along with it, not public remedies. And in China, we have, by the way, not just criminal remedies, of which China has roughly 12,000 cases a year, a lot more than the United States. But we're also talking about a vast administrative system, including for patents where you're fined. kind of think of it as if the PTO had a police force, you get fined for infringement after determination by the administrative agency. And that applies to patents, trademarks, copyrights, trade secrets, plant varieties, a whole bunch of a whole bunch of things, as well as product quality and related issues. So that

China is poised to significantly update its current data-protection framework with a key new law: the PRC Personal Information Protection Law ("PIPL"). These new regulations will undoubtedly impact multinationals operating in the PRC.  Carol Sun, from Yuanda, explains what you should start thinking about now.

Related article: Cross-Border Data Transfers Under the New PRC Data Protection Regime

 

More on Carol Sun.

 

SPEAKERS

Carol Sun (Yuanda), Wayne Stacy

Wayne Stacy  00:00

Welcome, everyone. This is Wayne Stacey, the executive director of the Berkeley Center for Law and Technology. Today we have with us Carol Sun from the law firm of Yuanda. They are a Chinese law firm that is in the strategic alliance with Winston strong here in the United States. And Carol Sun is an expert in the new laws that are coming online set in early September in, in PRC related to privacy and data regulation. So Carol, thank you for joining us today.

Carol Sun  00:39

Thank you so much Wayne, It's my pleasure.

Wayne Stacy  00:43

Well, Carol, what I wanted to do was just go through and give the audience a background and an understanding of what's happening. Because it's a it's a new subject for a lot of people. So in particular, there's a new law coming online in September, referred to as the Personal Information Protection Law. Can you tell us what it is and how it is similar or different from other privacy laws like GDPR?

Carol Sun  01:12

Sure, I can not sure whether this P IPO we did the full name of the law is the PRC Personal Information Protection Law will come into force September or later, but other people anticipate this law will come by the end of this year. So this personal information protection law is from some Chinese people's view is a Chinese person GDPR. So if we talk about the GDPR, people understand that it is almost the stringent law to protect the personal information, and also the privacy. I think this Chinese version PRPO borrowed a lot of concepts, and also the rise of the personal information subjects from GDPR. For example, this law grabbed a lot of rights, for example, the rise of a deletion, the rise of the revision, and also asked for the subject to always have the rights to say no to withdraw their rights without their consent for the data processing. And also this Chinese law also borrows some data cross border transfer mechanism. For example, this law also have some mechanism like the standard contract clauses. That is, from our view that there will be one of the main mechanisms for the company's transferred some personal information from China to the overseas. Also for the penalty perspective, I think based on my understanding, it is one of the few laws have a very high mandatory penalties. This personal information protection law also have the similar concept compared with GDPR. For example, the Harris the mandatory penalty is a 50 million RMB or the 5% of last year's global turnover. So this is quite high if the company has some violation to the law. But it's not the situation that any violation to law will trigger this kind of a high mandatory penalty, but some also other penalties like the administration level and also some, even the criminal level depends on the severity of the violation. So I think that is this P IPO has a very similar concept with GDPR and also constitute another side in the whole data protection legal framework in China.

Wayne Stacy  04:02

How will the PRC go

Patent venue challenges often turn on a company's operations within a particular venue.  As companies permit and even encourage remote work, this venue analysis may be changing.  And with remote work growing in the Austin area, what can you anticipate happening in the Western District of Texas?

 

More on Sarah Guske.

 

SPEAKERS

Sarah Guske (Baker Botts), Wayne Stacy

Wayne Stacy  00:00

Welcome, everyone, to Berkeley Center for Law and Technology's Expert Series Podcast, where the focus is on important legal issues impacting technology companies and individual innovators. I'm Wayne Stacy, the Executive Director for BCLT. And your host today. With me, we have a partner from the law firm of Baker Botts, Sarah Gusky. Sara has been litigating for many, many years, we'll just say leave it a t that. But she's one of the nation's leading and most recognized patent litigation experts. She's also been an adjunct professor teaching IP law and patent litigation at several universities around the country. So welcome, Sarah.

Sarah Guske  00:46

Thank you, and thank you for implying that I'm old. Well,

Wayne Stacy  00:52

we let's say we're roughly the same age. So whatever you are, I am too . So today's topic is a is an old one that unfortunately keeps coming up and keeps requiring more and more attention. And that is venue for patent litigations. But today, we're going to look at it from a slightly different perspective, one that involves some of today's issues around the pandemic, remote working, and something very close to the Bay Area is the movement of Bay Area tech employees to other markets, and particularly to the Austin market. So with that in mind, you know, Sarah, why? Why does venue and movement of employees to the Austin market matter to anyone?

Sarah Guske  01:42

Well, it's a little bit to quote, Yogi Berra, deja vu all over again, it's a lot of what we were seeing back in the early 2000s with respect to the Eastern District. But today in 2021, we now have the Western District of Texas, which has become the front runner in terms of patent or patent venues for patent litigations. And where does Austin sit? Well, it's right in the Western District of Texas. So as as employees and companies migrate that direction, they're putting themselves in the crosshairs, so to speak.

Wayne Stacy  02:25

Well, as I  study what's going on in the Western District of Texas, it's not really the Western District of Texas that has got companies scared these days. It's one particular division in the Western District of Texas, Waco, and I understand judge Albright there in Waco, in just a few short years on the bench has now amassed about 20%, of the nation's patent litigation in his courts. Is that roughly what you're hearing?

Sarah Guske  02:57

That's right. And as you said, a very short period of time he has attracted and outpaced his competitors, if you want to call them that, in attracting those patent lawsuits, and the growth is sort of a hockey stick, and it just keeps on going.

Wayne Stacy  03:19