Maryland Intellectual Property Law Blog

Implementing New U.S. Patent Rules: Helpful Resources for Individuals, Corporations, and Universities

Brian Wm. Higgins — Sun, 17 Feb 2013 15:20:20 -0500

Changes in U.S. patent rules since September 2011, when the American Invents Act (AIA) was enacted, have altered patent application preparation, prosecution, and enforcement strategy. For many, however, the most sweeping patent law change is just around the corner, when the AIA's first-inventor-to-file system becomes effective on March 16. Individuals, corporations, and universities looking for resources and information about first-to-file and other significant changes brought about by the AIA, and how to plan for them, may find the following articles helpful.

Rehabilitate Your Patent Now: Supplemental Examination (February 2013)

Legislative Attacks on Tax Strategy and Business Method Patents Continue (January 2013)

Proposed Action (Part 3): strategies and planning for AIA patent law changes (December 2012)

Exceptions to the Definition of Prior Art (Part 2) (December 2012)

New Definition of Prior Art (Part 1) (December 2012)

Prioritized Examination Under the American Invents Act (Part 4) (October 2012)

Disrupting U.S. Patent Applications: New Procedure for Third Parties to Submit Prior Art and Other Publications in u.S. Patent applications (Part 3) (October 2012)

American Invents Act Prior Use Defense (Part 2) (September 2012)

American Invents Act First to File Rule (Part 1) (September 2012)

Maryland Intellectual Property Lawsuits Sharply Up In 2012, Led By Surge in Copyright Cases

Brian Wm. Higgins — Sat, 26 Jan 2013 10:52:53 -0500

More than 150 intellectual property lawsuits were filed in Maryland's federal district court in 2012, a 45% increase over 2011 levels, 75% ahead of 2010. If the individual number of actual plaintiffs and nominal counterclaim plaintiffs in cases with multiple parties are counted, 2012 will be remembered as a very litigious year for patent, trademark, and copyright owners. Nationally, the number of new IP lawsuits may have increased as much as 30%, according to some sources.

The first chart below shows a spike in patent litigation activity in Maryland in 2012 compared to the previous four years. According to records available from Justia.com and PACER, plaintiffs filed 45 patent lawsuits in the U.S. District Court for the District of Maryland (Greenbelt and Baltimore divisions combined) in 2012, compared to just 35 lawsuits in 2011 and 22 in 2010 (45% and 22% differences, respectively).

Thanks to so-called copyright trolls, who brought hundreds of copyright infringement cases nation-wide in 2012, the number of copyright lawsuits in Maryland more than double from the 38 cases filed in 2011 (see chart below). The 78 cases filed last year, involving hundreds of "john doe" copyright defendants, was a 105% jump over 2011, and 189% over 2010 levels.

Bucking the trend, trademark owners filed fewer federal lawsuits in Maryland in 2012. The 32 cases filed last year was a drop of 6% over 2011 levels, and 20% lower than the number of cases filed in 2010.

Maryland Court Denies Electronic Arts' Fair Use Defense in Bouchat's Latest Copyright Infringement Case

Brian Wm. Higgins — Sun, 23 Dec 2012 13:37:29 -0500

In Bouchat v. NFL et al., the U.S. District Court for the District of Maryland considered Defendants' respective motions for summary judgment based upon their copyright fair use defenses (17 U.S.C. Sec. 107). In doing so, the Court granted Defendants NFL Enterprises LLC's and Baltimore Ravens L.P.'s motions, but denied Defendant Electronic Arts' (EA Arts) and NFL Properties LLC's motions. On December 21, 2012, Judge Garbis referred the EA matter to Magistrate Judge Gesner for possible settlement/ADR resolution.

In previous decisions involving Frederick E. Bouchat's "Flying B" artwork (depicted above), the District Court found the National Football League (NFL) and the Baltimore Ravens infringed Bouchat's copyright in the Flying B design by incorporating it in logos (see "Shield Logo" below) used by the Ravens and NFL during the 1996-1998 football seasons.

Later, the District Court found found the NFL and Ravens did not infringe by selling season highlight films, displaying film clips at the Raven's football stadium during games, and displaying photographs and memorabilia at the Raven's headquarters showing the Flying B logo, on the grounds that the sale and display of the Flying B logo in those materials was a fair use. On appeal, the Fourth Circuit held that the sale and display of film clips at football games was not a fair use.

In the present consolidated cases, the following uses of the Flying B logo were at issue:

* Timeline displays at M&T Bank Stadium, the Raven's home stadium in downtown Baltimore, which included still photos of the Raven's original Shield logo;

* Highlight reel display at M&T Bank Stadium, which included still photos;

* Important plays display at M&T Bank Stadium, which included still photos;

* Documentary videos sold to the public; and

* Madden NFL video game sold to the public.

The Court considered the four, non-exclusive fair use factors (i.e., purpose and character, nature of the work, amount and substantiality, and effect on the market).

With regard to the displays at M&T Bank Stadium and documentary videos, the Court found that those uses of the Flying B logo were non-infringing fair uses because they were "transformative." With regard to the "Madden NFL" video games, however, the Court did not find a fair use, as discussed below.

First, the Court found that the "Madden NFL-'10," "-'11," and "-'12" versions, made for XBox 360, PlayStation 3, and Wii consoles, allow game players to chose virtual players with Raven's uniforms from the 1996-1998 season, i.e., with the Flying B logo on the helmet and shirt.

Second, the Court found that the "purpose and character" of use factors strongly favor a finding of no fair use because the optional use of the Flying B logo in the video game was to augment sales by seeking to profit from the "nostalgia value" of retro uniforms.

Third, the Court found that there was little, if any, transformation because the video game made virtually the same use of the Flying B log as the original use by the Ravens during the 1996-1998 seasons.

Fourth, the Court found that the nature of the work and amount and substantiality factors weighed against of finding of fair use. The entirety of the copyrighted work was used in the video game.

Fifth, with regard to the market factor, the Court found that Bouchat's inability, on his own, to license his copyrighted artwork is not a factor in favor of permitting fair use by others.

Book Review: Keeping Secrets - A Practical Introduction to Trade Secret Law and Strategy

Brian Wm. Higgins — Sun, 25 Nov 2012 09:04:34 -0500

Keeping Secrets – A Practical Introduction to Trade Secret Law and Strategy, by Darin W. Synder and David S. Almeling, Oxford University Press, 2012

Some forms of intellectual property make headlines from time to time, like the recent Apple v. Samsung patent spat involving smart phone technology, and Rosetta Stone’s trademark fight involving Google’s AdWords. But rarely do patent and trademark cases approach the intrigue and novelesque quality of trade secret cases. The reasons are simple: most trade secret cases involve people—usually current or former employees—who were entrusted with a company’s most valuable confidential information, and who breached that trust for personal gain. According to the authors of Keeping Secrets, when that information is stolen and sold or used by thieves, the resulting cases are often scandalous and read like good spy novels.

While such matters make good fiction, the reality is anything but. Authors Snyder and Almeling report that the cost of trade secret theft may be as high as $300 billion per year. Litigation involving trade secrets has doubled each decade since the 1980s. Those statistics alone should make anyone charged with protecting a company’s secrets want to read Keeping Secrets. But it is the author’s warning at the end of the book that makes the most compelling argument for picking up a copy of the book: a company that ignores trade secrets does so at its peril.

Keeping Secrets is divided into three informative parts: (i) the basics, (ii) four keys to a successful trade secret strategy, and (iii) trade secrets in practice. The self-proclaimed “trade secret primer” lacks depth—it is nine short chapters long—but it makes up for it with informative and entertaining case studies, sharp examples of what not to do in the world of trade secret protection. For example, several case studies describe the disastrous results of companies failing to vet new employees with an eye toward trade secret protection and not requiring them to sign confidentiality agreements at the start of their employment. As the authors describe, studies show that confidentiality agreements between a company and its employees and between a company and third parties have the greatest impact in causing a court to find that a trade secret owner took sufficient measures to protect trade secrets. Without those measures, a thief may not be liable to the company whose secrets he stole.

Side Bar: Maryland, like most other states, adopted the Uniform Trade Secrets Act (available here). For more on the MUTSA, please see Theft of Trade Secrets: Causes of Action in Maryland, previously published on this website.

Like other forms of intellectual property, protecting trade secrets requires owners to be vigilant, argue Snyder and Almeling. It is not enough to merely protect intellection property rights by, for example, obtaining patents, registering trademarks, registering copyrights, and taking measures to secure trade secrets from the public. In Keeping Secrets, Snyder and Almeling suggest companies audit their trade secrets from time to time, and take other steps to identify whether a company’s secrets are leaking. If litigation is the only option, they provide several useful strategies for navigating the various decisions that inevitably arise in trade secret cases, and helpful tips for avoiding the common pitfalls.

Review: Rosetta Stone and Google Battle Over AdWords

Brian Wm. Higgins — Sat, 01 Sep 2012 19:50:10 -0500

In a highly anticipated decision from the Fourth Circuit Court of Appeals involving Rosetta Stone's trademark infringement suit against Google concerning Google's sale of AdWords (Rosetta Stone v. Google, No. 10-2007 (4th Cir. 2012)), the Fourth Circuit affirmed in part, vacated in part, and remanded to the U.S. District Court for the Eastern District of Virginia to reconsider whether Google directly or contributorily infringed, or diluted, the ROSETTA STONE trademarks by selling AdWords to third parties. Below are published remarks and analyses following the Fourth Circuit's decision, and predictions about the outcome of the case at the district court upon remand.

Rosetta Stone press release (April 10, 2012):

"Rosetta Stone greatly appreciates today's opinion by the United States Court of Appeals for the Fourth Circuit. Rosetta Stone is deeply concerned about trademark infringement, including the rampant problem of online counterfeiters engaging in theft of intellectual property and confusing consumers regarding the products being offered for sale. Today's important decision by the Fourth Circuit allows Rosetta Stone's efforts against such infringement to proceed. We look forward to further proceedings in this matter."

Washington Post, Rosetta Stone’s lawsuit against Google gets the green light to proceed (April 15, 2012):

"Although several companies have lodged similar complaints against Google, this is the first time a court of appeals has established that a company can bring a trademark infringement case against Google on the basis that the sponsored links are confusing to consumers. Some trademark experts said it could open the door for more companies to sue Google on the same grounds (a prediction Google declined to comment on), and that the outcome of the Rosetta Stone case could affect virtually every company that sells goods or services to the public and is trying to protect its brand against counterfeiters."

Eric Goldman (Professor of Law at Santa Clara University School of Law), Fourth Circuit's Rosetta Stone v. Google Opinion Pushes Back Resolution of Keyword Advertising Legality Another 5-10 Years (April 10, 2012):

"Sadly, this ruling--giving Rosetta Stone another chance in court--will undoubtedly revive the trademark plaintiff bar's interest in suing Google for its keyword ad practices. Just like Google got hit with over a dozen lawsuits in the wake of Google's Second Circuit "loss" in the Rescuecom case, I imagine a bunch of low-merit suits will follow this ruling too. (I put Google's "loss" in quotes because ultimately Rescuecom just gave up its lawsuit). Google will almost certainly win all of the incoming cases, just like it destroyed most of the cases filed post-Rescuecom, but it will have to spend a lot more money in legal fees to get there."

Dabney Carr (Troutman Sanders), Summary Judgment Awarded in First EDVA Trademark Decision Since Rosetta Stone (May 15, 2012):

"The [Wag’N Enters., LLC v. United Animal Nations (E.D. Va)] decision [ ] reaffirms that even after Rosetta Stone, summary judgment remains available for accused trademark infringers, especially where a plaintiff fails to develop evidence of actual confusion or present survey evidence as a substitute for proof of actual confusion."

Robert Angle (Troutman Sanders), Rosetta Stone Opinion Clarifies Standard for Trademark Infringement Claim in Keyword Advertising Context (April 17, 2012):

"The Fourth Circuit’s opinion clarifies that trademark infringement analysis in a keyword advertising context will follow traditional trademark standards applicable to likelihood of confusion, rather than specialized standards. These standards will apply not only for trademark claims filed against search engine providers, but also for the more common situation in which these claims are filed against a competitor who purchases a plaintiff’s trademark as a keyword from the search engine provider and uses them to trigger sponsored advertising links."

"Proving likelihood of confusion in these cases is a fact-specific inquiry, which will require evidence (survey or otherwise) suggesting that consumers are likely to be confused by the manner in which a trademark is used as a keyword to trigger advertising links and/or in the text of the links themselves."

Joshua Jarvis (Foley Hoag), Google AdWords Appellate Decision Injects Some Uncertainty Back Into the Keyword Game (April 12, 2012):

"...little in the opinion suggests that the ultimate disposition of [Rosetta's] claims will be significantly different the second time around (though the second time around may take a good deal longer). As a practical matter, the [4th Circuit] opinion injects a bit of uncertainty back into the keyword game that will last for years to come."

Cases citing Rosetta Stone v. Google:

Coach, Inc. v. Farmers Market & Auction, slip op., No. AW-11-CV-01239 (D. Md. August 7, 2012) (explaining that Rosetta Stone belies the notion that contributory trademark infringement liability is limited to manufacturers and distributors).

Amerigas Propane, LP. v. Opinion Corp., slip op., No. 12-cv-00713 (E.D. Pa June 19, 2012) (distinguishing facts from Rosetta Stone where pleading alleges that Defendant exercised a degree of control over the advertisements on its webpage).

American Optometric Society, Inc. v. American Board of Optometry, Inc., slip op., No. 2:10-cv-03983 (C.D. Cal. June 12, 2012) (explaining that, in the context of a trademark dispute, while reactions of the public are typically tested through the use of consumer surveys anecdotal evidence can be used to support an inference of consumer confusion).

Dwyer Instruments, Inc. v. Sensocon, Inc., slip op., No. 3:09-CV-10-TLS (N.D. Ind. June 5, 2012) (citing Rosetta Stone for the proposition that the strength of the mark is often not informative as to confusion where the defendant is not passing off its products under the plaintiff's mark but using the plaintiff's mark to refer to the plaintiff's own products).

Clearline Techns. Ltd. v. Cooper B-Line, Inc., slip op., No. H-11-CV-1420 (S.D. Tex. May 9, 2012) (explaining that Google was not liable under a vicarious liability theory because the plaintiff failed to show that Google "controls the appearance and content" of the infringing products or the use of the marks in those products)

Examining U.S. District Court Reversal Rates in Maryland Patent Cases

Brian Wm. Higgins — Sun, 22 Jul 2012 13:10:40 -0500

The number and percentage of appealable issues reversed by the U.S. Courts of Appeals may suggest many things, including how well U.S. District Court judges are doing adjudicating those issues. In patent cases, reversal rates for claim construction issues have been well documented (Schwartz, 107 Mich. L. Rev. 223 (2008); K. A. Moore, 99 Mich. L. Rev. 365 (2000); K.A. Moore, 15 Harv. J. L. Tech 1 (2001)), and indicate that about 30% of cases are reversed or vacated because of an erroneous claim construction by district courts. The statistics below reflect patent issue reversal rates for the U.S. District Court for the District of Maryland.

Using opinions published by BNA in U.S. Patent Quarterly (U.S.P.Q.), the following issues were identified as being appealed from Maryland's U.S. District Court (both Divisions combined) to the Court of Appeals for the Federal Circuit during 1987-2012: dismissal, claim construction, infringement/non-infringement, patent eligibility, validity/invalidity, vexatious litigation/attorneys fees/Rule 11, unenforceability/inequitable conduct, evidentiary rulings, enablement/written description, subject matter jurisdiction, injunctions, damages awards, JMOL, and contempt. Those appeals originated from final judgments after motions for summary judgment (MSJ), after jury decisions, and after final decisions of the court not involving MSJ.

Many factors affect affirmance and reversal rates of individual cases (e.g., level of judicial experience of the judges, complexity of the issues and technical subject matter, standard of review on appeal, judge vs. jury decision, etc.). The U.S. District Court for the District of Maryland, for example, sees far fewer patent cases compared to other District Courts (as discussed here). The factors above, as well as other parameters, may be used to assess how well the judges of a court collectively perform in patent-related cases. Obviously, the total number of decisions by a court that are reversed may be important in such as assessment.

Of 28 cases on appeal from the U.S. District Court for the District of Maryland, involving 43 decisions related to one or more of the above-listed patent issues, 21 appealed issues were reversed or vacated and remanded (49%), and 22 issues were affirmed (51%) by the Federal Circuit.

Looking at the "core" patent issues--i.e., claim construction, infringement/non-infringement, validity/invalidity, and unenforceability/inequitable conduct--the percentages are very similar: about 46% of issues on appeal were reversed.

(These results are based on a non-scientific analysis using a limited data set, and should be used/quoted with appropriate disclaimers.)

As the data above suggest, the U.S. District Court for the District of Maryland is reversed in patent cases almost 50% of the time. That high rate can lead to uncertainty in the business community. Companies in Maryland and in other states, for example, may be reluctant to bring a patent lawsuit in Maryland's U.S. District Court. But without a comparison to other District Courts' overall reversal rates, however, one should not draw too many conclusion from the data presented above.

The judges involved in the above decisions (reversed and affirmed) were J. Quarles, J. Garbis, J. Davis, J. Williams, J. Nickerson, J. Motz, J. Young, J. Chasanow, J. Smalkin, J. Hargrove, J. Kaufman, J. Howard, J. Ramsey, and J. Black.

Bryce Harper and Other Athletes Seek Trademarks to Protect Their Persona

Brian Wm. Higgins — Fri, 29 Jun 2012 09:04:19 -0500

What do Bryce Harper, Terrell Suggs, Jeremy Lin, and newly minted NBA draftee Anthony Davis have in common (other than being professional athletes that make lots of money)? They each recently applied to the U.S. Patent & Trademark Office to register trademarks to protect aspects of their persona.

In the case of Washington National's rookie outfielder Bryce Harper, he filed a trademark application for THAT'S A CLOWN QUESTION, BRO., a reference to an answer Harper gave a Canadian reporter after a game with the Blue Jays when the reporter asked Harper, who is 19, whether he would be drinking while the Nationals were in Toronto, where the legal drinking age is 19. Harper, who is reportedly mormon and does not drink, replied with the spontaneous clown statement, which spread virally on the Internet and is now reportedly being applied to t-shirts by Baltimore-based Under Armour.

Today's athletes are by no means trail blazers in the world of intellectual property law. Michael Jordan, Cal Ripken, and many other athletes long ago recognized that creating brands and protecting their names, likenesses, and other aspects of their persona is part of furthering their careers. Athletes have sought trademark protection for nicknames, their initials (TW=Tiger Woods), symbols, and other marks used to promote themselves and their side businesses. Today, however, athletes are also seeking to protect catch-phrases and statements they make publicly, sometimes days after making the statements, and before others swoop in and cash in.

In the case of Baltimore Ravens MVP linebacker Terrell Suggs, he filed a trademark application for BALL SO HARD UNIVERSITY, a reference to a fictional university Suggs mentioned when introducing himself on national television at the start of an NFL game against the Pittsburgh Steelers in 2011. Brian Bussells filed a trademark application in the U.S. Patent and Trademark Office the next day, beating Suggs' application by a few days. Both are selling t-shirts and other apparel with the mark.

Jeremy Lin filed a trademark application to protect LINSANITY, which was a pervasive headline during the shortened 2011-2012 NBA season. The term was a reference to the ubiquitous hype that followed Lin's rising popularity early in the season with the New York Knicks. He wasn't the only one to file an application for the mark, as several others filed trademark applications for LINSANITY.

Professional athletes know their time on the field, court, pitch, pool, or fairways may be finite, and so too are the lucrative multi-year and multi-million dollar salary offers. But the value of their persona may live on long past their prime performance years. Trademarking catch-phrases, or licensing other aspects of an athlete’s persona, can mean big bucks down the road. Arnold Palmer, for example, has earned millions by licensing aspects of his persona (e.g., his name and image are used in connection with products and other endorsements), which he manages with his agent through a successful business called Arnold Palmer Enterprises.

And then there is Anthony Davis, who is not only seeking trademark protection for his name, but he recently filed trademark applications for FEAR THE BROW, BROW DOWN, and RAISE THE BROW, a reference to the star basketball player's now famous eyebrows.

Right of Privacy (Publicity) Law Explained

Brian Wm. Higgins — Fri, 22 Jun 2012 05:34:35 -0500

Several states, including Maryland, recognize a person’s exclusive right to control the use of his or her name or likeness as a common law right of privacy. A person who believes his or her name or likeness has been appropriated by another for commercial gain without the person's consent may bring an action to seek remedies.

Maryland's right of privacy common law is based on Sec. 652A and 652C of the Restatement (Second) of Torts. A recent case out of Louisiana--Tatum v. New Orleans Int'l Airport, et al., No. 2011-CA-1431 (La. Ct. App. 2012)--highlights some of the general principles of the right of privacy common law.

At issue in Tatum was a painting (mural) on the walls of a New Orleans International Airport terminal. Plaintiff filed suit against the airport and others for the alleged improper use of an image of his late mother, Ellyna C. Tatum, in the painting. Plaintiff noted that Ms. Tatum was the first female to be designated as "Grand Marshall" for traditional jazz funerals in the city of New Orleans.

In affirming the lower court's judgment in favor of the defendants, the Louisiana court of appeals found that the picture of the mural at the airport included a street scene of at least 14 individuals, of which the late Ms. Tatum is possibly one. The mural appeared to be a painting, not a photograph, the court wrote, and the late Ms. Tatum, if depicted in the mural, is not identified as Ms. Tatum. Moreover, by appearing in public on the streets of New Orleans, she placed herself in the public arena, one in which she obviously excelled and enjoyed, the court concluded.

The court also found that the right to privacy is a personal right that belonged only to the late Ms. Tatum. Nothing in Louisiana law, statutorily or jurisprudentially, the court wrote, gave Mr. Tatum the authority to assert this right on behalf on his deceased mother, especially as Ms. Tatum did not herself assert this right during her lifetime.

Case was dismissed in favor of defendants.

Observations:

(1) As Tatum highlights, common law states like Louisiana, Maryland, and others recognize that a right of privacy is a personal right, and as such the right extinguishes upon death. The majority rule, however, is that the right of privacy (publicity) is descendible personal property, and in some states has a postmortem duration.

(2) Ms. Tatum's likeness potentially had commercial value during her lifetime due to her position as Grand Marshall. States like Maryland require a plaintiff to show some commercial or other value in their name and/or likeness to maintain an action for appropriation.

(3) Maryland, unlike Louisiana, provides a limited statutory right to bring and maintain an action for the invasion of another's right of privacy after the death of the one whose name and/or likeness have been appropriated. The statute applies only to deceased military personnel.

(4) As Tatum suggests, identification can be a defense in right of privacy (publicity) cases where it is not clear whether the person's likeness is identifiable.

(5) In some states, failure to exploit one's name and/or likeness for commercial gain or furtherance of one's business interests, for example, during his or her lifetime may also be a defense in right of privacy cases.

(6) As the Tatum court suggested, Ms. Tatum may have sought out publicity by her actions and thus given implicit consent to use her name and/or likeness.

New Domains for Ravens, Redskins, Orioles, and Nationals, But None for Capitals?

Brian Wm. Higgins — Mon, 18 Jun 2012 19:07:57 -0500

If applications submitted to the Internet Corporation for Assigned Names and Numbers (ICANN) seeking new "Generic Top-Level Domains" (gTLD) are any indication, we may soon see new Internet addresses for the Ravens, Redskins, Orioles, and Nationals team websites. Currently, those teams may be found at .COM subdomain websites under their respective team names (e.g., Orioles.com) or under the NFL.com or MLB.com domains. The NFL and MLB owners, however, are seeking new gTLDs to add to their top level domain rosters: .NFL and .MLB.

But the Washington Capitals may not be moving into a new Internet home, as no application for a .NHL top-level domain was apparently submitted during the first round of new gTLD requests.

Nike Inc. is seeking a new gTLD (.NIKE), but Baltimore's Under Armour did not submit an application for .UA.

ICANN developed the new gTLD program to increase competition and choice by introducing new gTLDs into the Internet’s addressing system. Currently, there are only 22 generic TLDs in the domain name system right now. The new gTLD application window opened on 12 January 2012 and closed on 30 May 2012.

O'Malley Signs Innovation Bill; Benefits Maryland Universities

Brian Wm. Higgins — Fri, 15 Jun 2012 16:35:05 -0500

Governor Martin O'Malley recently signed into law legislation creating the Maryland Innovation Initiative, which will be administered by the Maryland Technology Development Corporation (TEDCO). The purposes of the Initiative are:

(1) Promote the commercialization of research conducted in universities in the State of Maryland;

(2) Encourage qualifying universities to partner on commercialization and other activities, including with federal laboratories located in Maryland; and

(3) Facilitate the transfer of technology from universities to commercial industries.

The new law authorizes the Initiative to award grants to specified entities under specified circumstances; establishing the Maryland Innovation Initiative Fund; requiring the Board of Regents of the University System of Maryland and the Board of Regents of Morgan State University to undertake specified high impact economic development activities; etc.

The new law becomes effective JULY 1, 2012.

Government Issues More Patent Secrecy Orders

Brian Wm. Higgins — Mon, 30 Apr 2012 20:10:30 -0500

More than 5,200 U.S. patents were subject to at least one Secrecy Order by the end of fiscal year 2011, government statistics obtained through the Freedom of Information Act reveal (source: FAS.org). The U.S. Patent & Trademark Office issues Secrecy Orders upon recommendation by various U.S. governmental departments, part of its implementation of the Patent Secrecy Act, 35 U.S.C. Sec. 181 et seq.

The Act requires that if, in the opinion of a government agency, the disclosure of an invention by the publication of an application or by the granting of a patent therefor would be detrimental to the national security, the government agency notifies the Patent Office and the Commissioner of Patents orders that the invention be kept secret and withholds the publication of the application or the grant of a patent for such period as the national interest requires, and it notifies the patent applicant of the order. Government agencies that review patent applications under the Secrecy Act include DOD, DOE, NSA, DTSA, and NIH.

As shown in the graph below, since 2004 the number of Secrecy Orders in effect has risen 7%, to 5,241, due mostly to a sharp decrease in the number of orders rescinded. Since 2004, 466 existing Secrecy Orders were rescinded, but over 866 new Secrecy Orders were issued by the Patent Office. The total number of orders in effect now is higher than any year since fiscal year 1996.

Current secrecy activity, however, is far from historical highs. By the end of fiscal year 1991, there were 6,193 Secrecy Order is effect (18% more compared to the number at the end of FY11), and 774 new Secrecy Orders were issued, which is more than the total number of new orders issued in the last seven years combined.

Kappos v. Hyatt: Supreme Court Rules That New Evidence May Be Introduced In District Court Suits Brought Against Patent Office in Rejected Patent Application Cases

Brian Wm. Higgins — Wed, 25 Apr 2012 10:10:21 -0500

This article was authored by Jay Lessler, Esq., of Blank Rome LLP

The Supreme Court on April 18, 2012, held in Kappos v. Hyatt, slip no. 10-1219, that new evidence, as permissible under the Federal Rules of Evidence (FRE) and the Federal Rules of Civil Procedure (FRCP), may be introduced in a civil suit challenging the rejection of a patent application by the Patent and Trademark Office (PTO). The Supreme Court further held that “the district court must make a de novo finding when the new evidence is presented on a disputed question of fact.” In the future, more patent applicants may avail themselves of such civil suits in order to have a fresh opportunity to obtain patent coverage following a denial of an application by the PTO.

Pursuant to the Patent Act of 1952, a patent examiner first determines whether a patent application satisfies the requirements for granting a patent. If the examiner denies the application, the applicant may file an appeal to the Board of Patent Appeals and Interferences (Board). If the Board also denies the application, the applicant may choose one of two options for further review.

One option is to appeal the decision to the U.S. Court of Appeals for the Federal Circuit. This appeal is solely based on the administrative record below. No new evidence may be offered.

The other option is to file a civil action in the U.S. District Court for the District of Columbia pursuant to 35 U.S.C. §145. (The America Invents Act, which was enacted on September 16, 2011, changed the venue for §145 proceedings to the U.S. District Court for the Eastern District of Virginia, and changed the name of the Board to the Patent Trial and Appeal Board.)

In the case at hand, Hyatt filed a patent application in 1995. The patent examiner rejected each claim for lack of an adequate written description of Hyatt’s invention. The Board affirmed the rejection of most of Hyatt’s claims. Hyatt then filed a civil suit in district court against the PTO. To refute the Board’s conclusion that his patent application lacked an adequate written description, Hyatt submitted a written declaration to the court. In the declaration, Hyatt identified portions of the patent specification that, in his view, supported the claims. The district court refused to consider the declaration stating that Hyatt was “precluded from presenting new issues, at least in the absence of some reason of justice put forward for failure to present the issue to the [PTO].” Because no other new evidence was provided, the district court reviewed the PTO’s findings under the Administrative Procedure Act’s deferential “substantial evidence” standard and granted summary judgment in favor of the PTO.

On appeal, the Federal Circuit, en banc, reversed the district court and held that new evidence could be introduced during a §145 proceeding, subject only to any limitation under the FRE and FRCP. The Federal Circuit also held that when new, conflicting evidence is introduced in such proceedings, the district court must make de novo findings to take such evidence into account.

The U.S. Supreme Court affirmed the Federal Circuit’s decision. The Court pointed out that the PTO concedes that new evidence may be submitted in §145 proceedings. Because the PTO never saw the new evidence, a de novo finding is required. The Court also rejected the PTO’s contention that patent applicants must present all available evidence to the PTO in the first instance. A district court in a §145 proceeding does not act as a court of appeals, the Court wrote, and is competent to receive new evidence and act as a factfinder. Furthermore, “the district court may, in its discretion, consider the proceedings before and findings of the [PTO] in deciding what weight to afford an applicant’s newly admitted evidence.”

Justice Sotomayor, in a concurring opinion, argued that “there may be situations in which a litigant’s conduct before the PTO calls into question the propriety of admitting evidence presented for the first time in a §145 proceeding.” The district court’s equitable authority to exclude evidence in a §145 proceeding, however, is limited. The failure to present evidence to the PTO due to ordinary negligence, a lack of foresight, or simple attorney error, according to Justice Sotomayor, should not estop the patent applicant from presenting the evidence for the first time in a §145 proceeding.

Caraco Pharmaceutical v. Novo Nordisk: Supreme Court Rules that Generic Pharmaceutical Companies can Counterclaim in Patent Cases to Correct "Use Codes"

Brian Wm. Higgins — Wed, 18 Apr 2012 16:19:45 -0500

This article was principally authored by Jay Lessler, Esq., of Blank Rome LLP

The U.S. Supreme Court ruled on April 17, 2012, in Caraco Pharmaceutical Labs. Ltd. v. Novo Nordisk A/S, slip no.10-844, that a generic pharmaceutical manufacturer can counterclaim in a patent infringement action to have a “use code” for a method of use patent corrected in the FDA Orange Book. Generic manufacturers now have a mechanism for challenging use codes in the Orange Book (and possibly other patent information submitted to FDA by brand companies) which should facilitate faster approval of generic drugs.

The manufacturer of a brand-name drug is required to submit to the Food and Drug Administration (FDA) information about patents covering the drug and its approved uses. This information, which is published in the FDA’s “Orange Book,” includes a description of the scope of the patent known as a “use code.” Where a brand drug has several approved uses, a generic drug applicant can carve-out the patented uses from the label for its generic drug, submit a statement to FDA stating that the label does not include the patented method (referred to as a “section viii” statement), and quickly receive FDA approval for the non-patented uses. If, however, the FDA determines that the proposed label with the carved-out use still overlaps with the brand manufacturer’s use codes, the FDA will not permit the generic manufacturer from employing section viii to bring its generic drug to market. An overly broad use code for a method of use patent may, therefore, substantially delay FDA approval of a generic drug.

Novo markets the drug Prandin (repaglinide) for three approved uses. The Orange Book lists a method of use patent covering one of these uses. The use code provided by Novo for this patent, however, broadly covers all three approved uses. Because the use code covered all approved uses, when Caraco filed a generic drug application for repaglinide, it could not carve-out the patented use from its label and obtain quick approval for its generic drug. Instead, Caraco listed all of the approved uses in its label and advised FDA that the patent was invalid or would not be infringed (commonly referred to as a Paragraph IV certification).

Novo subsequently initiated a patent infringement suit against Caraco. The lawsuit triggered an automatic stay of approval of Caraco’s generic drug application for at least 30 months (or the conclusion of the lawsuit). Caraco counterclaimed to have the use code corrected pursuant to 21 U.S.C. §355(j)(5)(C)(ii)(I). The counterclaim provision authorizes a generic applicant sued for patent infringement to,

“assert a counterclaim seeking an order requiring the [brand] to correct or delete the patent information submitted by the [brand] under subsection (b) or (c) [of 21 U.S.C. §355] on the ground that the patent does not claim either —

(aa) the drug for which the [brand’s new drug application] was approved, or

(bb) an approved method of using the drug.”

The U.S. Court of Appeals for the Federal Circuit earlier held that Caraco lacked a statutory basis to assert a counterclaim against Novo. The Federal Circuit read the phrase “the patent does not claim … an approved method of using the drug” to require Caraco to demonstrate that Novo’s patent does not claim any approved method of use. Because the patent-at-issue claims one approved method of use, the counterclaim was unavailable. The Federal Circuit also ruled that the term “patent information” does not include use codes, but only consists of the patent number and its expiration date.

In reversing the Federal Circuit, the Supreme Court held that “a generic [drug] manufacturer may employ [the counterclaim] provision to force correction of a use code that inaccurately describes the brand’s patent as covering a particular method of using the drug in question.” In doing so, the Supreme Court looked at the statutory context of the counterclaim provision. The provision, the Court found, was enacted to provide a mechanism for generics to challenge inaccurate information in the Orange Book. The Court therefore constructed the phrase “the patent does not claim … an approved method of using the drug” to refer to a patent that does not claim a particular approved method of using the drug, not all approved methods.

[T]he counterclaim naturally functions to challenge the brand’s assertion of rights over whichever discrete use (or uses) the generic company wishes to pursue. That assertion, after all, is the thing blocking the generic drug’s entry on the market. The availability of the counterclaim thus matches the availability of FDA approval under the statute: A company may bring a counterclaim to show that a method of use is unpatented because establishing that fact allows the FDA to authorize a generic drug via section viii.

Moreover, the Court held that the reference to “patent information” in the statute must include use codes.

Justice Sotomayor, in a concurring opinion, argued that the counterclaim provision does not adequately address the problem of overly broad use codes because the counterclaim provision can only be invoked after a generic applicant files a paragraph IV certification for a method of use patent, and a patent infringement lawsuit has been initiated. This is a costly and time consuming procedure. Justice Sotomayor’s concurring opinion suggests that a fix is needed from Congress or FDA, and suggests FDA provide greater clarity as to what is required of brand manufacturers in providing use codes to the agency.

Maryland Court Denies Parties' Motions to Dismiss Expert Testimony

Brian Wm. Higgins — Sun, 08 Apr 2012 11:05:35 -0500

In Pulse Medical Instruments, Inc., v. Drug Impairment Detection Services, LLC, the U.S. District Court for the District of Maryland (J. Chasanow) denied each party's separate motion to exclude the other party's expert's testimony. In doing so, the Court found the following types of evidence to be admissible under Federal Rule of Evidence 702:

(1) An expert's reference to and analysis of the reasonable royalty factors articulated in Georgia-Pacific. Such analysis is "far from being testimony regarding pure questions of law," the Court wrote, and can assist a trier of fact regarding damages issues.

(2) An expert's analysis of a reasonable royalty based on a "hypothetical negotiation." Whether characterized as applying the Georgia-Pacific factors or imagining conducting a hypothetical negotiation, the process, the Court wrote, is one and the same. Courts have accepted this process as falling within the bailiwick of damages experts as a tool of the trade. No separate showing of an expert's expertise in negotiations is needed.

Additionally, the Court noted that Rule 702 allows a witness to be qualified to testify as an expert based on a variety of different methods, but there is no requirement that experts share identical backgrounds to be able to opine about the same subject matter, or to criticize the other expert's opinion.

The Court reached the above conclusions after considering F.R.E. Rule 702. In patent cases, the district court has "a special obligation to 'ensure that any and all scientific testimony. . .is not only relevant, but reliable.'" Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999). The Fourth Circuit Court of Appeals has explained Rule 702 as follows:

The first prong of this inquiry necessitates an examination of whether the reasoning or methodology underlying the expert's proffered opinion is reliable--that is, whether it is suppported by adequate validation to render it trustworthy. See [Daubert, 509 U.S.] at 590 n.9, 113 S.Ct. 2786. The second prong of the inquiry requires an analysis of whether the opinion is relevant to the facts at issue. See id. at 591-92, 113 S.Ct. 2786.

To be considered reliable, the Court wrote, an expert opinion "must be based on scientific, technical, or other specialized knowledge and not on belief or speculation, and inferences must be derived using scientific or other valid methods." In the case at hand, the Court rejected the parties' motions based on the above standard.

Maryland Court Denies Patentee's Use at Trial of Favorable Reexamination Results

Brian Wm. Higgins — Tue, 28 Feb 2012 11:49:08 -0500

In IA Labs v. Nintendo, the U.S. District Court for the District of Maryland granted Nintendo’s motion to exclude evidence at trial pertaining to the outcome of a reexamination proceeding involving one of IA Labs' patents. In doing so, the district court agreed with Nintendo that evidence related to IA Labs’ reexamination proceedings would have little or no probative value and could be prejudicial in front of a jury. Moreover, the district court found that Nintendo was not judicially estopped from arguing that the reexamination determinations were not probative evidence even though Nintendo’s litigation counsel had previously lauded the expertise of the U.S. Patent Office.

IA Labs, LLC, based in Potomac, MD, sued Nintendo in April 2010 in the U.S. District Court for the District of Maryland alleging infringement of U.S. Patent Nos. 7,121,982 and 7,331,226. In its complaint, IA Labs alleged that Nintendo’s “Wii Fit” and related game consoles and other products infringed those patents.

In November 2010, Nintendo initiated an inter partes reexamination of the ‘982 patent, raising 11 alleged substantial new questions of patentability. The Patent Office agreed that there were questions of patentability, and ordered the reexamination. On April 11, 2011, after receiving the patent owner’s and Nintendo’s arguments and evidence, the Patent Office confirmed the patentability of the claims of the ‘982 patent. Nintendo appealed, which is now pending.

On January 9, 2012, Nintendo filed a motion under Local Rule 107.6 to exclude from trial any evidence of the reexamination of the ‘982 patent. Rule 107.6 states that counsel are under an obligation to anticipate evidentiary objections and, whenever possible, bring them to the attention of the Court before they are formally asserted so that they can be resolved when the jurors are not present.

In its motion, Nintendo asserted that IA Labs intends to introduce evidence to the jury regarding the Patent Office’s reexamination determination to support its argument that the ‘982 patent is valid. Nintendo argued that the non-final determination was not probative and would mislead the jury, and that the Examiner’s comments during the reexamination were inadmissible hearsay. In response, IA Labs argued that Nintendo had previously lauded the expertise of the Patent Office and the importance of the reexamination process, and therefore should be estopped from arguing that the evidence lacked “trustworthiness” merely because the reexamination was not final.

The District Court disagreed with IA Labs, noting that judicial estoppel was not appropriate, and finding Nintendo’s position in seeking to exclude the reexamination evidence was not clearly inconsistent with early statements by its counsel touting the experience of the Patent Office. As for the probative value and potential prejudice of such evidence, the District Court followed the majority of courts who have found reexamination evidence to have little relevance to the jury’s independent deliberations on the factual issues underlying the question of obviousness and the risk of jury confusion is high. Presenting the jury with the reexamination document entitled “Action Closing Prosecution” issued by the Patent Office, would, the District Court stated, run an unnecessary risk that jurors would accord undue weight to what appears to be a final documents and might improperly defer to the Patent Office’s initial determination (the District Court did not substantively address the hearsay argument).

The District Court ordered that evidence related to the reexamination of the ‘982 patent be excluded under Fed. Rules Evidence 402 and 403.

Book Review: Why Has America Stopped Inventing?

Brian Wm. Higgins — Sat, 18 Feb 2012 09:25:43 -0500

Why Has America Stopped Inventing? By Darin Gibby, Esq., Morgan James Publishing, New York, 2012

Patents are boring, nobody wants to deal with them, and few people can understand them. Yet we all somehow know that they play a significant role in the nation’s destiny, says historian and patent attorney Darin Gibby in his intriguing and entertaining new book Why Has America Stopped Inventing? We are the country that gave the world the automobile, the airplane, space flight, the computer, and too many medical breakthroughs to count, Gibby says. Early American inventors developed the cotton gin (Whitney), vulcanized rubber (Goodyear), a repeating firearm (Colt), the sewing machine (Howe/Singer), the telegraph (Morse), a wheat reaper (McCormick), and the airplane (Wright). Those individuals often were heralded as celebrities even in their own time, and the lawsuits they brought to enforce their patents, or in some cases defend their knockoffs, caught the attention of notable attorneys like Abraham Lincoln, Edwin Stanton, William Seward, Stephen Douglas, and others.

So why are we unable to continue the tradition of groundbreaking inventions of the kind that made our country great, asks Gibby. Today, the numbers of patents issued to Americans has plunged. Today, Americans on a per capita basis are granted fewer than half the number of patents issued a hundred and fifty years ago. Gibby’s figures are mirrored locally, in Maryland, where innovation activity slipped year over year. Globally, countries like China are expected to surpass the U.S. in the number of patent applications filed, according to Senator Patrick Leahy during debate last year over the America Invents Act (AIA). What caused the innovation decline in this country? Where have all the American inventors gone?

The answers lie, as they often do, in lessons from the past. Gibby’s historical journey takes us back to the enactment of the very first patent act in 1790, and into the office where Thomas Jefferson personally examined every patent submission, an overwhelming task that led Jefferson and others to craft a new law in 1793, one which eliminated substantive examination of patent submissions. The patent law amendments of 1863 reinstated examination, which continues today at the U.S. Patent Office in Alexandria, Virginia. Gibby reveals how the changing patent landscape profoundly impacted industries as well as individuals.

One significant difference between great inventions of the past and those being conceived today, Gibby says, is where they were conceived: the vast majority of inventors during the 19th century were ordinary individuals working alone, often on farms or in shops. A century later, researchers flocked to the safety of corporations. In the past, it cost a few dollars to submit a patent application. Today, high legal fees prevent many individuals from seeking patent protection for their ideas. Moreover, Gibby says today’s patent laws give lip service to helping the little guy, as those in power do not want thousands of individuals getting patents, which would result in courtrooms filled with litigants looking to make money and bring industries to a screeching halt—just as the Wright’s airplane stabilization invention did to the fledgling aircraft industry, Gibby notes. Existing patent laws make obtaining patents harder due to the “obviousness” test, and the Supreme Court makes it easier for courts to invalidate existing patents. It is all but certain, Gibby argues, that America’s most popular inventions of the past would be deemed obvious under today’s onerous rules.

“And so large corporations—those with enough money to fight the battle—manage to get patents while other do not. . . . Congress and the courts have stifled innovation among the very class of inventors that we want to be inventing,” writes Gibby. “Today we award patents to only the wealthiest of corporations with the financial means to battle with the patent office.” And that is why the little guy in America stopped filing patent applications.

Where will innovation activity in this country be a year from now, or a decade later? That depends, Gibby says, on whether we make certain patent reforms to help individual inventors. Gibby advocates for a return of the model requirement, or something similar to it. Inventors of the past had to supply scale models of their inventions to the Patent Office, effectively demonstrating what they had conceived and the metes and bounds of their inventions. The model requirement was abandoned by the Patent Office in 1880. Today, inventors can patent a concept without ever making their invention. If every person seeking a patent had to make a model of their invention, there would be fewer patent applications and better quality patents being issued.

Gibby also advocates for a 10 year patent term, rather than the current 20 years (which is based on the date of filing one’s patent application); requiring patent applications to be examined in less than six months; elimination of the “obviousness” test for patentability, abandonment of the judicial doctrine of equivalence; and limitations on the number of continuation patent applications an inventor can file from an original patent application. With sweeping patent reforms being enacted under the AIA just last year, and most of the AIA’s provisions not even implemented yet, no one knows whether Gibby’s proposals will be considered any time soon. If American innovation continues to slip behind other countries, however, it will not take long for others besides Gibby to stand up and say more needs to be done.

O'Malley, Maryland Lawmakers Introduce Initiative to Spur Innovation in Maryland

Brian Wm. Higgins — Sun, 05 Feb 2012 11:07:42 -0500

Patent Office data show that the number of individuals in Maryland receiving at least one patent in 2010 that was not assigned to a company was at an eight year high. Overall innovation in Maryland, however, has declined, when measured by the number of U.S. patents and patent applications issued to Maryland inventors. On a per capita basis, the numbers look even worse, as patents issued per Maryland resident declined about 3% when comparing 2011 numbers to 2010 levels. Moreover, Maryland ranks a lowly 37th when it comes to commercializing research and development, despite being at the top in terms of research and development spending per capita.

Aiming to reverse those numbers and spur innovation among Maryland researchers, and also facilitate commercialization of inventions made by the state's research universities, Gov. Martin O'Malley and nine Maryland lawmakers recently introduced legislation to create a Maryland Innovation Initiative. Introduced January 20, 2012, as Senate Bill 239, the measure would, among other things, provide funding to help participants in the Initiative assess intellectual property issues.

A hearing on the new bill is scheduled for February 7, 2012, in Annapolis.

The Initiative would promote the commercialization of research conducted by the state's research universities, encourage those universities to partner with each other and with federal research labs in Maryland on commercialization and other activities, and facilitate the transfer of technologies from universities to commercial industries in Maryland. Funding to run the Initiative would come from appropriations from the State's budget, participating universities, grants and funds from federal labs, and private grants, and could be used to support pre-commercial research on intellectual property to increase the likelihood of commercializing the intellectual property. Such research would likely include patent freedom to operate clearances.

Expo To Gather Maryland Entrepreneurs

Brian Wm. Higgins — Fri, 27 Jan 2012 05:44:19 -0500

The Maryland Technology Development Corporation (TEDCO) recently announced the date for the 2012 Entrepreneur Expo, its second year for the event. The BWI Airport Marriott will again provide the location for this year's gathering of over 300 entrepreneur companies and individuals. The event will kick off on Tuesday, November 13, 2012.

While T-Sizzle Takes to Gridiron, His Lawyers Tackle "Ball So Hard University" Trademark, Right of Publicity Dispute

Brian Wm. Higgins — Sat, 14 Jan 2012 10:50:07 -0500

Terrell “T-Sizzle” Suggs roams the gridiron looking to make his presence known to opposing quarterbacks by delivering some of the most devastating sacks in the game of professional football. His lawyers, meanwhile, tackle a different kind of foe off the field: people they say are violating Suggs’ trademark and affecting his right of publicity.

Few know that Suggs, a linebacker for the Baltimore Ravens, uses his fame and talents—and a reported $63 million football contract—off the field to build media and apparel businesses. He’s the current CEO and President of Team Sizzle Worldwide, an independent film company based in Baltimore, and an entrepreneur in the apparel industry, selling t-shirts and other merchandize with his likeness and the catch phrase “Ball So Hard University,” which is at the center of a burgeoning legal dispute.

Suggs used the fictitious university name, according to the Baltimore Sun, rather than his actual alma mater, Arizona State University, when he introduced himself on national television at the start of the November 6, 2011, Steelers vs. Ravens game. He later filed five trademark applications on November 17, 2011, in the U.S. Patent & Trademark Office, to protect the phrase. But he wasn’t the only one who thought the name was catchy, or that it would help sell merchandize.

Within hours of Suggs’ use of the phrase on television, Brian Bussells, Tonyshirt.com, and others reportedly began selling Ball So Hard University products on the Internet. In Mr. Bussells’ case, he also registered the domain name “ballsohardu.com” and filed a trademark application for the phrase, both on November 7, 2011. Bussells operates Busstees LLC, a design company in Maryland.

Suggs' lawyer—Kimberly Grimsley of Bowie & Jensen—responded with cease and desist letters, arguing that the use of BALL SO HARD UNIVERSITY on t-shirts sold by others creates the appearance of a connection with Terrell Suggs, which is false and misleading in violation of the Lanham Act, she says, and would likely create confusion between T-Sizzle’s products and those of others who are selling merchandise without Suggs’ permission. Ms. Grimsley also contends that Suggs’ right of publicity is being violated, and will cause damage to the “commercial value of his persona.”

The outcome of Suggs’ trademark dispute will depend on whether Brian Bussells has superior rights to the BALL SO HARD UNIVERSITY trademark. In the United States, trademark rights are based on the use of a mark in commerce, so if Bussells can establish that his use was legitimate and before Suggs’ (Bussells claims a first use in commerce on November 7, 2011), he may prevail against the linebacker (assuming the catch phrase is even registerable under the trademark laws, which is a different issue altogether).

Suggs’ lawyer’s diminished right of publicity argument may be even more tenuous than his trademark position. The right of publicity is the inherent right of a person to control the commercial use of his or her identity (or that of someone else’s). Based in state law, the ability to control an identity for commercial gain is an intellectual property right that, when infringed and shown to reduce the commercial value of the person’s likeness or persona, can be compensated through damages.

Maryland courts, however, do not explicitly recognize a right of publicity, though they would consider the same relevant facts under a right of privacy action, i.e., misappropriation of likeness for commercial purposes. To establish a case of liability for invasion of privacy through misappropriation, the plaintiff must establish that the defendant, without permission, used some aspect of the plaintiff's identity or persona in such a way that the plaintiff is identifiable from that use. The plaintiff must also establish that his peace of mind and dignity were damaged by the defendant's use of plaintiff’s identify or persona.

Update (June 26, 2012):

The ballsohardu.com website now includes the following disclaimer: "This Site and the products features are in no way endorsed by or affiliated with Terrell Suggs."

Several of Terrell Suggs' trademark applications have been allowed by the U.S. Trademark Office, but two applications for BALL SO HARD UNIVERSITY for use on t-shirts, bags, and other apparel and accessories have apparently been blocked by Brian Bussell's earlier-filed trademark application.

AIA: Changing How Non-Practicing Patent Owners Can Assert Their Patents

Brian Wm. Higgins — Wed, 11 Jan 2012 08:59:28 -0500

In an effort to reduce the number of multi-defendant patent infringement lawsuits often brought by non-practicing patent owners, the America Invents Act (AIA) includes a new statutory provision that addresses joinder of accused infringers in patent actions or trials not involving certain drugs and biologics. Under the new law (35 U.S.C 299), parties accused as defendants may be joined in one action in a single judicial district as defendants or counterclaim defendants only if:

(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and

(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.

For purposes of this new provision, accused infringers may not be joined based solely on allegations that they each have infringed the patent or patents in suit. Defendants may waive this provision, which is effective in any civil action commenced on or after the date of enactment of the AIA.