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In the article, “Deepfakes: new California laws address dangers and development”, published by the Daily Journal, authors Stan Gibson and Jessica Newman address two new California laws that have been enacted to combat the risk of “deepfake” videos.

Deepfake videos, in which a person in an existing image or video is replaced with someone else’s likeness, have a high potential for abuse. For the victims of deepfakes, legal recourse may be difficult, as the law is just beginning to catch up with this technology.

Gibson and Newman discuss the implications of the new laws and what more needs to be done.

You can read the article, here. Continue reading

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Raffel Systems, LLC (“Raffel”) filed a patent infringement action against Man Wah Holdings (“Man Wah”).  Man Wah moved to dismiss the patent claims on the ground that Raffel did not possess title to the patents at the time the lawsuit was filed and therefore lacked standing to sue.

As explained by the district court, Man Wah asserted that Raffel lost title to the patents when Raffel mortgaged its patents to obtain loans with PrivateBank and East West Bank. Man Wah relied on the U.S. Supreme Court case of Waterman v. Mackenzie, 138 U.S. 252 (1891) for its position that because Raffel granted PrivateBank and East West Bank security interests in its patents and the banks recorded their security interests with the USPTO, this transferred title in the patents from Raffel to the banks.

In opposition to the motion, Raffel argued that its agreements with the banks are nothing more than standard security agreements granting the banks a security interest in the patents, not a conveyance of title. Continue reading

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In this patent infringement action, AT&T filed a motion to compel certain litigation-funding discovery from the plaintiff, United Access Technologies, LLC (“UAT”).  The district court reviewed documents relating to or from third parties regarding potential investments by those third parties in UAT’s lawsuits and communications to and from third parties relating to “quarterly updates” about UAT’s current lawsuits.  In its motion, AT&T contended the information was not privileged and should be produced.  UAT responded that the litigation funding was irrelevant and was protected by the work-product doctrine.

To analyze the issue, the district court explained that “[d]iscoverability of litigation funding materials under Federal Rule of Civil Procedure 26 is a contested issue on which there is no binding precedent in the Third Circuit. See In re Valsartan N-Nitrosodimethylamine (NDMA) Contam. Prod. Liab. Lit., 405 F. Supp. 3d 612, 615 (D.N.J. 2019) (collecting cases and agreeing “with the plethora of authority that holds that discovery directed to a plaintiff’s litigation funding is irrelevant”). Generally, when confronted with this sort of dispute, close consideration of the subject matter in the disputed documents (e.g., through in camera review) is a prudent approach. See, e.g., ART+COM Innovationpool GmbH v. Google, Inc., C.A. 14-217 D.I. 196 (D. Del. Sept. 11, 2015) (finding, after in camera review, agreements with plaintiff’s litigation financiers were irrelevant).” Continue reading

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Following Straight Path IP Group’s, the patent owner’s, unsuccessful appeal, Apple and Cisco moved for reasonable attorney’s fees. Although the district court reaffirmed the exceptionality of the patent owner’s prosecution of the case, the district court found that defendants’ fee requests were too high and directed the parties to submit their billing requests to a special master. The order cautioned the defendants to “take care to submit only for time and expenses that truly deserve compensation and at billing rates that truly deserve to be compensated,” stating that the district court might treble the deductions for requests the special master found unreasonable.

After briefing and a hearing, the special master recommended that Apple should receive nearly all it requested, with some minor deductions taken for “certain ambiguous or duplicative time entries.” On the other hand, the Special Master recommended that Cisco should receive only half because its billing records never conformed to the district court’s direction. As part of the reasoning, the special master explained that Cisco did not pay counsel by the hour, rather it paid a flat-monthly fee. As explained by the district court, “[t]he special master found Cisco’s original billing submission deficient and asked Cisco to resubmit. Cisco did so, but the special master found the records remained deficient for an ordinary lodestar review. To be sure, the special master found this alternative billing method compensable under § 285, but the records did not paint a clear picture of counsel’s billable activities or clearly delineate between this case and other, non-compensable work for Cisco. Thus, the special master concluded a 50% reduction would ensure patent owner did not overpay, yet still compensate Cisco for fees actually paid. Finally, the special master declined to treble the deduction, finding Cisco’s noncompliance a product of the alternate billing arrangement and not of bad faith.”

The patent owner subsequently objected that the special master’s awards of fees was too high. Continue reading

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In this patent infringement action between Guardant and Foundation Medicine (“Foundation”), Foundation moved to exclude the testimony of Guardant’s damage expert, Dr. Becker, on reasonable royalty damages.  In his opinion, Dr. Becker applied on an apportionment factor of 50% in that he asserted the patents contributed at least 50% of the value of the Foundation accused products.  To support this opinion, Dr. Becker relied on a discussion with Dr. Cooper, Guardant’s infringement expert.

Foundation argued that the portions of Dr. Becker’s and Dr. Cooper’s testimony regarding reasonable royalty damages should be excluded because they failed to properly apportion damages to only the patented features of the accused products.  The district court explained that “the central dispute here is whether the 50% apportionment value chosen by Dr. Becker (Guardant’s damages expert) is sufficiently supported by the content of his discussion with Dr. Cooper (Guardant’s infringement expert)—a discussion that provided the exclusive basis for Dr. Becker’s apportionment figure.”  Foundation argued that there was no proper support as Dr. Cooper’s opinions regarding the 50% apportionment value are without “explanation or methodology[.]” Continue reading

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Plaintiff DivX, LLC (“DivX”) filed patent infringement actions against Netflix and Hulu asserting that both companies infringed various patents. Both defendants filed motion to stay their cases pending inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”).

As explained by the district court, starting in October 2019, Defendants began filing IPRs of certain claims of the asserted patents before the PTAB. Defendants filed the majority of their IPR petitions between February and March 2020. The deadline for Defendants to file their IPR petitions passed in mid-March 2020, before Plaintiff’s deadline to reduce the number of asserted claims in this case.

After the filing of all of the IPRs, but before the PTAB had decided whether or not to issue review, the Defendants moved to stay the proceedings. Continue reading

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Blurring the Lines: When AI Creates Art Is It Copyrightable?

by
Stan Gibson and Jessica Newman

In October of 2018, Christie’s sold the work Portrait of Edmond de Belamy for $432,500. None of this, including the price, would be notable if not for the claimed artist. The claimed artist was not a person but an algorithm, bearing its creator’s signature:

AI-Signature-300x46

Obvious, a Paris-based collective, created the work using what is known as Generative Adversarial Networks, or “GANs.” Creating works using GANs requires inputting thousands of images as well as developing and making adjustments to the algorithm.

The sale, which garnered attention and outrage alike, served as a flashpoint in the discussion of artificial intelligence and art. As Ian Bogost of The Atlantic wrote, “[t]he image was created by an algorithm the artists didn’t write, trained on an ‘Old Masters’ image set they also didn’t create.”

In the aftermath of this sale, Sotheby’s followed suit with the sale of Mario Klingemann’s Memories of Passerby I (2018) in March of 2019. The work, which sold online for roughly $42,000, uses multiple GANs trained on thousands of portraits from the 17th to 19th century to generate an infinite stream of real-time portraits for the viewer. Klingemann refers to the neural networks used to create an endless stream of new images as “the brushes that I’ve learned to use.” Memories of Passerby I may not have generated the same buzz as Portrait of Edmond de Belamy, but it raises many of the same questions.

Although the use of technology to create art is nothing new, GANs, and similar neural network software, increasingly blur the lines when it comes to creation, authorship and ownership. The use of technology such as GANs to create art results in works that are not authored by individuals in the traditional sense. The question then becomes, are these works copyrightable under U.S. Copyright laws, and if so, to whom does the copyright belong? Continue reading

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Upcoming Webinar: COVID-19 and the Case for Force Majeure in California

Join us as two California business trial lawyers present “COVID-19 and the Case for Force Majeure in California”

The webinar will take place on Wednesday, May 27 at 10:00 AM – 11:00 AM Pacific Time. Register now.

Businesses throughout California are suffering the crippling economic consequences triggered by the COVID-19 pandemic. Looking for relief, many have been stymied by force majeure (so-called “Act of God”) clauses. Our speakers will discuss how to determine if you have a legitimate claim, and explore critical questions about force majeure in California, including:

  • What is a force majeure?
  • What constitutes force majeure in California?
  • How to determine when to assert force majeure?
  • Does force majeure trigger business interruption insurance?
  • What are the practical considerations for addressing force majeure in the
    COVID-19 Pandemic?

Our speakers include:

  • Stan Gibson, Partner, Jeffer Mangels Butler & Mitchell LLP

Stan is an experienced business trial lawyer and is the Chair of JMBM’s Patent Litigation Group. Among his numerous successes is the $570M breach of contract and patent infringement verdict for his client in Medtronic v. Michelson, which is listed in the National Law Journal’s Hall of Fame, a list of the 100 highest grossing verdicts since 2003.

  • Jessica Newman, Associate, Jeffer Mangels Butler & Mitchell LLP

Jessica Newman is an associate in JMBM’s Litigation Group and a member of its Patent Litigation and Art, Wine & Collectible Assets Groups. Her practice focuses on general commercial litigation, corporate defense and investigation matters, and intellectual property litigation.

 

Register Now

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District Court Determines No Personal Jurisdiction Exists Under Rules (4)(k)(1) and (4)(k)(2) of the Federal Rules of Civil Procedure Where Plaintiff Could Show Only a Single Infringing Unit Was Sold in the State and Defendant’s Website and Other Activities Were Not Directed at Residents of the State

by
Stan Gibson and Julia Consoli-Tiensvold

In Miller Industries Towing Equipment Inc., v. NRC Industries, Plaintiff Miller Industries Towing Equipment Inc. (“Plaintiff” or “Miller”) alleged infringement of a patent by NRC Industries (“Defendant” or “NRC”). The patents in question involve towing recovery vehicles designs and uses. Defendant moved to dismiss under Federal Rule of Civil Procedure (“FRCP”) 12(b)(2), alleging that the Court lacked personal jurisdiction over NRC. Defendant also moved to dismiss the claims under FRCP 12(b)(6), but this was ultimately determined to be moot in light of the Court’s determination.

Plaintiff argued that the district court could exercise personal jurisdiction over NRC as it has exercised sufficient “minimum contacts” with the state of Tennessee under Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945), because NRC advertises in two magazines that have Tennessee subscribers, posts training videos to nationally accessible third-party websites (such as YouTube), maintains a website accessible by Tennessee residents, participates in trade shows where NRC markets its infringing products to Tennessee residents, and because NRC has sold the infringing product to at least one Tennessee resident.

The legal standard for determining whether a court may exercise personal jurisdiction over a defendant is based on FRCP 4(k)(1) and 4(k)(2). Touchcom, Inc. v. Bereskin & Parr, 574 F.3d 1403, 1410 (Fed. Cir. 2009). Continue reading

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Force Majeure in California: Does the COVID-19 Pandemic Qualify?

A Three Part Series

By Stan Gibson and Jessica Newman

Part 3 – Practical Guidance: Force Majeure and the COVID-19 Pandemic

 

See Part 1 – What Constitutes a Force Majeure

See Part 2 – Asserting Force Majeure

See Part 3 – Practical Guidance

Practical Guidance for Addressing Force Majeure in the COVID-19 Pandemic

Parties on both sides of a contract must weigh their options when faced with a force majeure event and should take steps to ensure that they have a clear understanding as to their obligations, the claims being made by the other contracting party, and what steps they can take to mitigate their losses and/or protect their rights.

There are a number of steps a party can and should take to limit any potential liability in the midst of the current COVD-19 Pandemic.

Review the Terms of Your Contract

First, review the specific terms of your contract. Parties may contract around certain risks that might otherwise be viewed as a force majeure event. You will need to know what your obligations are under the contract and whether you, or the other contracting party, will still be expected to perform even in the face of these unprecedented circumstances. For example, a contract may include specific provisions that a strike or national emergency does not relieve a party of its obligations under the contract.

Continue reading