IP Law Alert : Intellectual Property Lawyers & Attorneys : Gibbons Law Firm : Copyrights, Patent Infringement, Unfair Competition

The Gibbons Apprenticeship Program has been featured in the first edition of Seton Hall Law At Work. This new series takes a look at innovative working arrangements between employers and graduates of the Seton Hall University School of Law.

This article focuses on the Gibbons Apprenticeship Program, a client-focused attorney recruitment and development platform that exposes recent law school graduates to the day-to-day responsibilities of law firm junior associates and trains them in a “real world” law firm environment.

Highlighted in this article is John J. Cahill, the firm’s first Intellectual Property apprentice, who has since been hired as an Associate at Gibbons. This fall, Gibbons hired its second Intellectual Property apprentice, Jillian A. Centanni.

Click here  to view the complete article.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

As anticipated, Eastman Kodak Co. filed a petition for Chapter 11 bankruptcy relief this morning in the United States Bankruptcy Court for the Southern District of New York. This development followed a recent flurry of patent infringement suits involving Kodak, and on the heels of Kodak’s unrequited efforts to license or sell off its substantial intellectual property (“IP”) portfolio.

Kodak recounted in its supporting affidavit its path of decline over recent years, citing, among other factors, liquidity challenges precipitated by difficulties collecting licensing fees from infringers of its intellectual property. The affidavit indicates that Kodak’s IP portfolio comprises nearly 9,000 U.S. patent and trademark registrations and applications, and over 13,000 foreign patents and trademarks registrations and applications. Thus, a critical component of its reorganization strategy is the sale of approximately 1,150 digital imaging patents. The patent portfolio has an estimated value of $2.2 to $2.6 billion, according to Kodak’s financing motion filed today. Kodak’s agreement with its lender, Citigroup, sets a June 30, 2012 deadline for Kodak to file a bidding procedures motion with the court with respect to the patent sale.

Between 2003 and 2010, Kodak generated approximately $450 million annually of licensing revenue from its digital-imaging patents. Last year, revenues shrank to $98 million. According to Kodak, the drop resulted largely from “infringers” employing a “strategy of delay in light of Kodak’s liquidity position.” Nevertheless, the digital-imaging portfolio is sure to generate significant interest. Readers should recall that last July, Nortel sold its patent portfolio in a bankruptcy auction. The sale of approximately 6,000 patents, including approximately 2,600 U.S. patents, yielded $4.5 billion in proceeds. According to one observer, Nortel represented the biggest skirmish to date in “a global commercial war being waged” wherein “patents have become the new lethal weaponry.”

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

In 2006, the Chinese government pledged to foster future innovation in China by promoting science and technology development in key fields and enhancing innovation capacity. In the National Medium- and Long-Term Plan for Science and Technology Development (2006-2020) published by the State Council, China pledged that by 2020 research and development (“R&D”) investment will exceed 2.5% of China’s total GDP, and that progress of science and technology will contribute at least 60 percent to the country’s development.

As part of the effort in achieving these considerable goals, China has turned its focus towards increasing intellectual property filings with the State Intellectual Property Office (“SIPO”) for the Peoples Republic of China (“PRC”) and increasing intellectual property filings by Chinese businesses and inventors. While the quality of patents and the corresponding ability to enforce in China and abroad is a concern, in 2010, the SIPO for the PRC published the National Patent Development Strategy projecting that annual Chinese patent filings will reach 2 million by 2015. In support of this projection, SIPO published data indicates that growth in Chinese patent filings from 2005 to 2010 has been approximately 20%. Additionally, it was reported that the number of patent applications filed in China exceeded 300,000 in 2009.

As further evidence of China’s commitment in the international arena, the government now subsidizes Chinese corporation foreign and Patent Cooperation Treaty (“PCT”) filings. As a result, in 2010 and 2011 China was among the top four countries in PCT filings and in 2009 and 2010 two Chinese companies, ZTE Corporation and Huawei Technologies, were among the top five applicants using the PCT to obtain patent protection.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

We previously reviewed a copyright case involving Marvel and a comic book author’s relinquishment of any copyrights in the iconic characters Hulk, Spiderman, the X-Men and others because the works were determined to be “for hire.” Marvel Worldwide v. Kirby.

In an unrelated action, Judge Forrest of the Southern District of New York recently found in favor of Marvel, in Gary Friedrich Enters., LLC v. Marvel Enters., Inc. The court ruled that the plaintiff writer, Gary Friedrich, although he indisputably conceived of the character, “Ghost Rider,” and wrote the initial comic book, had ceded all rights in the character to Marvel.

The decision turned on two defining moments where the court found plaintiff conveyed his rights by contract: 1) at the time of plaintiff’s payment for the initial creation of the character in 1971 and 1972; and 2) in a separate contract signed by the parties in 1978, when plaintiff was a freelancer for Marvel.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

Yesterday, Governor Chris Christie signed into law the New Jersey Trade Secrets Act, A-921/S-2456 providing state law protection against trade secret misappropriation. Prior to enactment, New Jersey was one of only four states (including New York, Massachusetts and Texas) that had not adopted some form of the Uniform Trade Secrets Act.

We previously reported on this important New Jersey law development, which takes immediate effect. In sum, trade secrets can be used to protect a company’s know-how and other proprietary information. Companies should be guided by the NJTSA and ensure they have policies and practices in place to identify and safeguard such trade secrets. In addition, companies should continuously and actively monitor for evidence of possible trade secret misappropriation.

Todd M. Nosher is an Associate in the Gibbons Intellectual Property Department. Thomas J. Bean and Ralph A. Dengler, Counsel to the Gibbons Intellectual Property Department, co-authored this post.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

Coming off a year that included the Smith-Leahy “America Invents Act,” 2012 portends to have some significant developments in IP law.

Decisions for IP practitioners and industry to watch for include:

• the Supreme Court’s decision in Caraco Pharm. Labs. Ltd. v. Novo Nordisk A/S, regarding “use codes” and section viii carve-outs under the Hatch-Waxman Act;
• the Supreme Court’s decision in Mayo v. Prometheus, regarding patentable subject matter, post-Bilski; and
• the Federal Circuit’s upcoming en banc decisions in McKesson and Akamai, regarding joint infringement liability.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

Last week in GPX Intl. Tire Corp. v. U.S., the Federal Circuit decided whether both antidumping and countervailing duties may be imposed on a non-market economy (“NME”) country like China. The Federal Circuit affirmed the International Court of Trade’s (“ITC”) ruling that countervailing duty law does not apply to an NME country, but for different reasons than the ITC. Earlier, the ITC had reasoned that the U.S. Department of Commerce’s (“Commerce”) 2007 interpretation of the law was “unreasonable” because of the high probability of “double counting.” Alternatively, the Federal Circuit came to its decision by looking at the statute’s Congressional intent. Specifically, when Congress amended and reenacted countervailing duty law in 1988 and 1994, the Federal Circuit concluded that government payments could not be characterized as “subsidies” in an NME context. Therefore, countervailing duty law does not apply to NME countries.

In his opinion for the court, Justice Dyk first provided background on the two types of duties arising from imports: antidumping and countervailing duties, stemming from the Tariff Act of 1930. Pursuant to 19 U.S.C. §§ 1673 and 1671(a), antidumping duties are placed on goods that are sold in the U.S. for less than fair value and countervailing duties are placed on goods that receive “a countervailable subsidy.” The subsidy in this case arises from a “domestic subsidy,” where the subsidy benefits both domestic and exported goods. Conversely, an “export subsidy” benefits only exports, and both antidumping and countervailing duties may be forced by market economy countries.

Additionally, the Federal Circuit also provided a history on countervailing duties. The issue of whether Commerce should impose countervailing duties on goods from NME countries was first considered in 1983 and in 1984 when Commerce concluded that countervailing duties should not be imposed on NMEs. After U.S. manufacturing companies appealed to the ITC and were successful, Commerce then appealed to the Federal Circuit. The Federal Circuit then reinstated Commerce’s decision in Georgetown Steel Corp. v. U.S. that countervailing duties should not be imposed on NMEs.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

Last week in Warner Chilcott Labs Ireland Ltd. v. Mylan Pharms., the Federal Circuit vacated a grant of preliminary injunction in a Hatch-Waxman case by the District Court of New Jersey. The Federal Circuit acted after the lower court granted a preliminary injunction without either holding an evidentiary hearing or making any findings as to the defendants’ invalidity defense.

The case arises out of Mylan’s filing of an ANDA to market a generic version of Doryx. One month before the 30-month stay expired and Mylan having received tentative approval from the FDA, Warner Chilcott moved for a preliminary injunction against a possible at risk-launch by Mylan. Warner Chilcott’s infringement case turned on whether Mylan’s ANDA product had a “stabilizing coat” as required under the patent in suit. The parties submitted briefs and expert witness declarations, and the court heard oral arguments from both parties on the traditional four factors for injunctive relief: irreparable harm; likelihood of success on the merits; balance of hardships; and the public interest. However, the court did not hold a live evidentiary hearing to hear the testimony of the battling experts, citing scheduling demands and a pressing criminal trial. Instead, the court deferred addressing those issues until the upcoming bench trial. In addition, the court also declined to make any factual determinations as to Mylan’s invalidity challenge. Ultimately, the lower court acknowledged that there were questions of facts to be resolved on the issue of a “stabilizing coat” and it enjoined Mylan from marketing its ANDA product until after trial on the merits.

The Federal Circuit vacated and remanded the lower court’s decision. Writing for the court, Justice O’Malley held that it was an abuse of discretion under established Third Circuit law to grant a preliminary injunction without holding an evidentiary hearing when there were unresolved issues of fact in dispute. In addition, the Federal Circuit also faulted the lower court for making only passing reference to Mylan’s invalidity challenge, and its likelihood of success, without providing an adequate factual record for appellate review.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link

Gibbons published an IP Law Alert this summer describing the forthcoming Intellectual Property Exchange International (“IPXI”). Along with providing background information about how the IPXI will monetize patents, and the process for listing an IP asset on the IPXI, this post discussed the growing pains associated with starting a financial exchange pegged to IP.

Since that posting, the IPXI has recently announced that it remains on track to begin operations in 2012 and has signed agreements with five entities: Philips, Com-Pac International, Rutgers University, Northwestern University and the University of Utah, to sponsor the Unit License Rights (ULRs) that are offered through the exchange. Additionally, IPXI has secured $10 million in additional funding from investors, including Philips and the Chicago Board Options Exchange. The IPXI was founded in 2009, but attracting licensees has been a challenge. Given the IPXI’s recent momentum, it will be interesting to see whether additional entities commit to the IPXI before its debut, or wait to commit until after the IPXI becomes operational.

Gibbons will continue to stay at the forefront of this, and other IP developments. For additional information about the IPXI, please go to the IPXI website at www.ipxi.com.

Jillian A. Centanni is an Apprentice in the Gibbons Intellectual Property Department.

• Email This
• Print
• Comments/Questions
• Trackbacks
• Share Link