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A common refrain is that an invention is only as valuable as the patent that protects it. But what happens when you cannot secure the patent? This is a frequent hurdle for inventors seeking to patent products utilizing artificial intelligence (AI). While still in its infancy, at least compared to the lofty expectations of technology enthusiasts, AI has proven integral to driving innovation, but it has also proven equally vexing to fit into the intellectual property legal regime.

In the article, “How to Safeguard AI Technology: Patents versus Trade Secrets,” JMBM attorneys Stanley M. Gibson and Samuel R. Buchman discuss the potential advantages of using trade secret protection where patent protection cannot be obtained.

Read the article on IPWatchdog.com. Continue reading

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Plaintiff All Plastic contended it was a leading manufacturer of premium displays and containers for medicinal and recreational cannabis dispensaries. All Plastic filed a patent infringement action against Defendants SamDan LLC d/b/a Smokus Focus (“SamDan”), Samuel Whetsel (“Mr. Whetsel”), and Daniel Russell-Einhorn (“Mr. Russell-Einhorn”) (with Mr. Whetsel, “Individual Defendants” and collectively, “Defendants”) alleging that Defendants make, use, and sell containers for personal cannabis use, that infringe upon the patent-in-suit.

All Plastic filed a motion to compel seeking an order compelling Defendants to produce various documents, re-designate materials already produced and designated “Confidential-Attorneys’ Eyes Only,” and remove redactions applied to materials produced on Defendants’ asserted basis of “relevance.” All Plastic made three arguments to support its contention that “[m]ost of the materials designated by Defendants do not qualify as AEO,”: (1) materials designated as AEO by Defendants are not highly sensitive in nature so as to qualify as trade secrets; (2) the maintenance of Defendants’ unwarranted AEO designations will prejudice All Plastic’s ability to litigate this case because Plaintiff’s counsel can share with their client almost “no material fact” learned from Defendants in this action; and (3) Plaintiff should not bear the expense of objecting to every single one of Defendants’ designations to ensure Defendants’ compliance with their duty to review documents in good faith before designating them as AEO, as per the Protective Order. Continue reading

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On March 2, Stan Gibson and Rachel Capoccia will host a free webinar exploring the issue of false advertising, how it can harm your company, and how you can resolve problems resulting from competitors’ misleading statements. Details on the program and a sign-up link are below. Please join us!

How to Defend Your Company Against False Advertising

Date: Tuesday, March 2

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Plaintiff Baxter International (“Baxter”) sued CareFusion Corporation and Becton, Dickson and Company (“Defendants”) for infringement of three medical infusion pump patents, U.S. Patent Nos. 5,764,034 (the ‘034 Patent), 5,782,805 (the ‘805 Patent), and 6,231,560 (the ‘560 Patent). Baxter moved to strike portions of the Defendants’ invalidity expert, including asserting that the expert impermissibly expanded the scope of the final invalidity contentions.

As explained by the district court, in addition to using the patents for descriptions of physical prior art devices, the expert relied on them as prior art in and of themselves. Baxter contends that this was inappropriate because Defendants’ Final Invalidity Contentions identified the physical devices (the Orion Prototype and Signature Edition II (Model 7200) Pump) as the asserted prior art, not the patents. The district court disagreed finding that after a review of the final invalidity contentions, Baxter was mistaken. The district court concluded that “Defendants disclosed the Eggers, Voss, and Marston Patents as prior art” and the expert was free to rely on them as such. Continue reading

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Next month, Stan Gibson, Chairman of JMBM’s Patent Litigation Group, will run the 4x4x48 for the Special Operations Warrior Foundation. Read his message below.

Like many of you, I have wondered what I can do to help our country and the people in need during the pandemic. After recently reading the book, Can’t Hurt Me by David Goggins, a former Navy seal, I became inspired to run the 4x4x48 challenge on March 5, 2021 at 8 pm through March 7, 2021 at 8 pm.

The 4x4x48 challenge consists of running 4 miles every 4 hours for 48 hours. I’ll be running to fundraise for the Special Operations Warrior Foundation. Their mission it is to help fallen and wounded special operations forces and their families, which is particularly important to me as I have had a number of family members serve in the forces in Iraq and Afghanistan. Continue reading

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In this patent infringement action, the defendant moved to compel the production of settlement license agreements as part of its reasonable royalty analysis. The plaintiff opposed the request on the grounds that the agreements were protected by the common interest privilege and were not relevant.

The district court disagreed.

Turning to the issue of common interest, the district court explained that “[t]he protection of communications among clients and attorneys ‘allied in a common legal cause’ has long been recognized” and “has previously arisen in connection with patent rights.” In re Regents of University of California, 101 F.3d 1386, 1389 (Fed. Cir. 1996). In patent cases, “the Federal Circuit has required the entities exchanging the privileged material to have a substantially identical legal interest, as opposed to a solely commercial interest.” High Point SARL v. Sprint Nextel Corp., No. 09-2269-CM-DJW, 2012 WL 234024, at *7 (D. Kan. Jan. 25, 2012) (citing In re Regents, 101 F.3d at 1389). “An exception to the assertion of the common interest privilege exists when the participants in the common interest become adverse to each other in litigation.” Dexia Credit Local v. Rogan, 231 F.R.D. 287, 295 (N.D. Ill. 2005). Continue reading

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In this patent infringement action, the City of Hope filed a motion for summary judgment. The district court denied the motion without prejudice for failing to comply with the Local Rules meet and confer requirement.

Central District Local Rule 7-3 provides that “counsel contemplating the filing of any motion shall first contact opposing counsel to discuss thoroughly, preferably in person, the substance of the contemplated motion and any potential resolution” at least seven days before filing a motion. C.D. Cal. L.R. 7-3. “The purpose of Local Rule 7-3 is to help parties reach a resolution which eliminates the necessity for a hearing,” which “further[s] judicial economy and the administration of justice.” James R. Glidewell Dental Ceramics, Inc. v. Phila. Indem. Ins. Co., No. 8:16-cv-01155-JLS-E, 2016 U.S. Dist. LEXIS 189416, at *1 (C.D. Cal. Sept. 12, 2016) (internal quotation marks omitted); accord Caldera v. J.M. Smucker Co., No. CV 12-4936-GHK (VBKx), 2013 U.S. Dist. LEXIS 183977, at *2 (C.D. Cal. June 3, 2013) (noting that the rule “enables the parties to brief the remaining disputes in a thoughtful, concise, and useful manner” (internal quotation marks omitted)).

The district court explained that the City of Hope did “not present a statement of compliance with the prefiling conference requirement, as required by the Local Rule. Although the record shows that the parties long have contemplated filing motions for summary judgment, the motion itself is devoid of any information showing that counsel discussed the issues in the motion thoroughly such that the briefing will be “directed to those substantive issues requiring resolution by the Court.” (Initial Standing Order § 9(c).)” Continue reading

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As explained by the district court, Zadro Products, Inc. (“Zadro”) sued Feit Electric Company (“Feit”) for patent infringement alleging that Feit infringed on two of Zadro’s patents: United States Patent No. 8,162,502 (“the ’502 Patent”) and United States Patent No. 8,356,908 (“the ’908 Patent”). Zadro alleged that one of Feit’s products, the Enhance Rechargeable LED Vanity Mirror (model number VRM-1), infringed at least claims 1–9, 18, and 22–23 of the ’502 Patent under 35 U.S.C. § 271(a). Zadro also alleged that the Enhance Rechargeable LED Vanity Mirror infringed at least claims 28–32 of the ’908 Patent under 35 U.S.C. § 271(a).

In its summary judgment motion, Feit asserted that the Zadro mirrors that practice the ’502 Patent do not have marks on them that comply with the requirements of § 287(a). Both parties agreed that Zadro practices the ’502 Patent. The parties also agreed that Zadro does not mark the practicing mirrors themselves. Instead, Zadro contended that marks on the packaging of the practicing products satisfy § 287(a).

The district court explained that § 287(a) requires that a product itself be marked unless “from the character of the article, this can not be done.” “[S]ubstantial compliance may be found to satisfy the [marking] statute.” Global Traffic Technologies LLC v. Morgan, 620 Fed. Appx. 895, 905 (Fed. Cir. 2015) (alteration in original) (quoting Maxwell v. J. Baker, 86 F.3d 1098, 1111 (Fed. Cir. 1996)). No set list of factors can be used to determine whether the “character” of the product makes marking the packaging of the product permissible. Id. at 905-906. Some factors might include the size of the product, whether what is patented is a machine or a multi-part system, and whether the product is immediately installed out of public view once unpackaged. Id. at 905. Continue reading

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In a decision published on April 27, 2020, the United States Patent and Trademark Office determined that only a human can be considered an inventor. So, who owns the patent when artificial intelligence makes the invention? What are the practical and logistical complications inherent in artificial intelligence-created inventions? With technology advancing faster than the legal system, what can we expect moving forward?

Stanley M. Gibson, Chair of JMBM’s Patent Litigation Group discusses these issues in the article, “What Happens When Artificial Intelligence Invents: Is the Invention Patentable?” published in the Vol. 41 No. 4 issue of AI Magazine.

Read the article. Continue reading

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In this patent infringement action, Plaintiff Personalized Media Communications, LLC (“PMC”) filed a motion seeking (1) a court order compelling Defendant Netflix Inc. (“Netflix”) to provide PMC with on-site access to Netflix’s source code after the close of fact discovery or, in the alternative, (2) an extension of the fact discovery deadline to allow review of the source code. Netflix opposed the motion asserting that PMC should have completed review of the source code prior to the close of fact discovery and that there was no good cause to extend the fact discovery deadline.

In support of its positon, PMC did not cite to any case law that supported its argument that a party producing confidential source code through on-site access procedures must allow further review of this source code after the fact discovery deadline. The district court did not find persuasive the cases cited by PMC, which concern inspection of physical sites rather than review of confidential source code. Continue reading