Waller TIPS

Waller TIPS

Perspectives on Intellectual Property Issues

Some Hospital Systems Under Attack By Cyber-Criminals Using Denial of Service Attacks

Hospital emergency rooms are our first line of defense for actual attacks and emergencies, but in some cases ERs are finding themselves literally under cyber-attack.

Recent law enforcement notices warn that telephone access to ER’s has been disrupted in some instances by extortionists attempting to obtain personal information from hospital employees.  Generally, a cyber-criminal will place a call to an ER, demanding that an employee provide personal information such as credit card numbers to satisfy a fictitious debt.  When the employee (or a colleague) refuses, the criminal initiates a “Telephony Denial of Service” (TDoS) attack.  These attacks can shut down telephone access to the hospital or ER for several hours.

These attacks are not necessarily directed against hospital ER’s, but the impact is immediate and can be life-threatening.  Approximately one thousand such attacks have been reported since 2013 to the FBI’s Internet Complaint Center.  Any system experiencing such an attack should save voice recordings of suspects, record telephone numbers and account information if the caller is demanding payment, retain call logs and IP logs (if applicable), and remove the affected telephone number from 9-1-1 and other critical trunks.  In advance of such an attack, hospital systems should determine how they may isolate critical telephone lines so that they will remain operable when other telephone lines are overloaded.

Complaints may be made to the FBI’s Internet Crime Complaint Center (www.ic3.gov), the National White Collar Crime Center (NWC3), the FBI’s 24/7 Cyber Watch (CyWatch) by calling 855/292-3937 or emailing cywatch@ic.fbi.gov, or contacting local law enforcement.

The TTAB Did Not Love New York

Brand owners, marketers, and in-house counsel should be cognizant of the legal implications of selecting geographical terms for the name of a product. Waller intellectual property attorney, William F. Wilson, was recently published in the International Trademark Association (INTA) Bulletin where he discusses the TTAB’s decision,  In re Nature’s Youth, Inc., Serial No. 85747419 (T.T.A.B. Mar. 13, 2014) (not precedential), analyzing the trademark registrability of the mark “NY.”

The Ninth Circuit Holds that Cancellation of a Trademark is a Remedy, Not a Cause of Action

Waller Lansden Dortch & Davis, LLP attorney, Bob Felber, was recently published in the International Trademark Association’s (INTA) Bulletin where he discussed, Airs Aromatics, LLC v. Victoria’s Secret Stores Brand Management, Inc., Appeal No. 12-55276 (9th Cir. Feb. 28, 2014), a precedential Ninth Circuit decision analyzing Victoria’s Secret’s DREAM ANGELS trademarks. In this decision, the Ninth Circuit found that Section 37 of the Trademark Act, which provides courts with the authority to order a trademark cancellation, creates a remedy and not an independent basis for federal jurisdiction. The article may be accessed here.

Bob also serves as the Co-Chairman of the U.S./Canada Law and Practice Subcommittee of INTA.

Inter Partes Review Proceeding A Potent New Resource For Companies Accused of Patent Infringement

The USPTO’s Patent Trial and Appeal Board (“PTAB”) recently issued its first final written decision under the new inter partes review process made available in 2012 by the America Invents Act.  In Garmin Int’l Inc. v. Cuozzo Speed Technologies LLC, IPR2012-00001, Paper 59 (PTAB Nov. 13, 2013), the PTAB invalidated Cuozzo’s patent on the grounds that it would have been obvious to combine three or four prior art references in various ways to arrive at the claimed invention.

The decision is especially noteworthy because patent invalidity arguments based on complex combinations of prior art references are seldom successful in district court litigation – largely due to the difficulties jurors have grappling with complex patent law concepts and sometimes very technical fact patterns.  Accordingly, the Garmin v. Cuozzo decision signals to companies accused of patent infringement that the PTAB may be a better venue than the federal courts to litigate the validity of an asserted patent.

New Patent Law Expands Scope of Prior Art

The America Invents Act (“AIA”), which became fully effective on March 16, 2013, has fundamentally changed U.S. patent law. Some of the most important of these changes relate to the scope of prior art available under 35 U.S.C. § 102. The “prior art” is the body of earlier-disclosed information that can be cited against a patent application by the U.S. Patent and Trademark Office (“USPTO”).

Specifically, under pre-AIA Section 102(a), a person was entitled to a patent unless:

the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent. (emphasis added).

By contrast, post-AIA Section 102(a)(1) now states that a person shall be entitled to a patent unless:

the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention . . . . (emphasis added).

Although it will be some time before patent practitioners receive clear judicial guidance on the proper scope of post-AIA Section 102, the literal wording of the statute and recent guidelines issued by the USPTO are informative.

For example, the omission of the phrase “in this country” from the new Section 102(a)(1) opens the scope of available prior art to anywhere in the world. Practically, this means that a claim of priority to an application anywhere in the world could create an effective filing date for a prior art reference.

Additionally, the term “otherwise available to the public” encompasses written as well as oral disclosures. Coupling the “otherwise available” term with the “anywhere in the world” concept could make even oral disclosures in foreign languages available as prior art.

Last, the USPTO has explained that it views the phrase “otherwise available to the public” as indicating that secret sales and use do not qualify as prior art. Consequently, longstanding trade secrets are no longer considered prior art and are in fact patentable under the new regulations, provided they meet all other criteria for patentability.

“Transformative Use” Following the Google Books Decision

On November 14, 2013, the U.S. District Court for the Southern District of New York dismissed the plaintiff’s copyright suit in The Authors Guild, Inc. v. Google, Inc.  The decision was based on the Court’s determination that Google engaged in “fair use” of the plaintiffs’ copyrighted materials when it scanned over 20 million books and made portions of them available online.  Essential to the Court’s decision – and many “fair use” copyright cases – was the Court’s analysis of the nature of Google’s use of the plaintiffs’ copyrighted books, which the Court held to be “transformative.”

Google’s use of the plaintiffs’ copyrighted books was held to be “transformative” and, therefore weighed towards a finding of fair use (i.e., no copyright infringement) because book digitization: (1) created a “comprehensive word index” that helped readers and researchers locate books and (2) made it possible to analyze the words within the books as “data for purposes of substantive research, including data mining and text mining.”  If the decision is upheld after the expected appeal, future decisions will determine if the Court’s “transformative use” analysis is limited to undertakings akin to Google Books or whether it will be applied to all digitization of content.  If broadly followed, the Court’s decision that making content digital and searchable satisfies this significant factor in a copyright fair use analysis will likely have wide-ranging effects on the content industry, as well as the use of third party content online.

Sixth Circuit Affirms First Amendment Win for Movie/Soundtrack Defendants in Soul Men Lawsuit

The Court of Appeals for the Sixth Circuit ruled in favor of a major motion picture studio, movie distributor and music company yesterday, affirming summary judgment in the decision Moore v. The Weinstein Company, LLC, et al. Waller is proud to have successfully represented the filmmakers in the matter.

In affirming the decision by District Court Judge Aleta Trauger, the Court of Appeals ruled in favor of the creators and distributors of the 2008 film and soundtrack, Soul Men, starring Samuel L. Jackson and the late Bernie Mac against claims by the entertainer Sam Moore. Moore, formerly of the soul music group “Sam & Dave” and best known for his 1960s versions of the songs “Soul Man” and “Hold On, I’m Comin’,” challenged the lower court’s rulings dismissing his claims that the film and soundtrack violated his trademark rights and appropriated his life story.

The Sixth Circuit rejected Moore’s right of publicity claims, ruling that even if Moore could establish that the film somehow appropriated his likeness, the First Amendment shielded the film because it “without a doubt” added significant expressive elements to any purported use of Moore’s identity.

Turning to Moore’s trademark claims, the Sixth Circuit rejected Moore’s argument that the fact that he claimed to be personally famous meant that his purported trademarks were “famous” under the federal dilution statute.

The Sixth Circuit also rejected Moore’s argument that the District Court improperly dismissed both of his state law unfair competition and consumer protection claims based on a flawed choice of law analysis. Moore failed to present admissible evidence that created a genuine issue of fact for trial about whether the Defendants’ actions deceived or injured Tennessee consumers. Accordingly, the Sixth Circuit found no error in the District Court’s dismissal of his remaining claims.

As noted by The Hollywood Report, this decision is one of several recent, high profile rulings addressing publicity rights. The Court of Appeals for the Ninth Circuit is expected to soon address claims that the Oscar-winning film The Hurt Locker misappropriated the life story of an Iraq War veteran. Additionally, the NCAA recently has sought an appeal to the U.S. Supreme Court about use of the likenesses of student athletes in video games.

Waller attorneys Robb Harvey, Heather Hubbard, Laura P. Merritt and Todd Hambidge represented the major motion picture studio, movie distributor and music company in the appeal.


Effects of Government Shutdown on USPTO and Copyright Office

Last week the United States federal government entered a shutdown, suspending services not exempted by the Antideficiency Act, 31 U.S.C. § 1341. Although the U.S. Patent and Trademark Office currently remains open, the Copyright Office is among the many closed government offices.

U.S. Patent and Trademark Office

The USPTO remains open, operating on reserve fees collected in the past year. The USPTO has indicated that it can operate on reserve fees for approximately four weeks.  Hopefully, we may not see any service interruptions or, at least, not before the end of the month.

Should reserve fees be depleted before the shutdown ends, the Department of Commerce “Plan for Orderly Shutdown” provides that a small staff will continue to work “to ensure the functionality of the processes and systems minimally necessary” to preserve patent and trademark rights.  While it is not clear exactly what “minimally necessary” services this would entail, the plan explicitly provides that electronic filing and payment systems should remain open during any closure of the USPTO.

U.S. Copyright Office

Currently, the Copyright Office is closed.  During this time, registration submissions will be accepted both by mail and through the online system for purposes of securing a filing date, however, they will not be processed.  Electronic records are available for searching and viewing but are not being updated during the shutdown.

Additionally, for some period of time since the shutdown began, online access to Copyright Office information circulars and factsheets was unavailable.  As of posting, access has been  restored.


We recommend clients not delay any filings with the Copyright Office because there may be a growing backlog for processing materials when the office reopens.  With respect to the USPTO, we also recommend that clients not delay filings when possible, so as to get ahead of any possible service interruptions.  In the event that the USPTO reserves are depleted, we will provide updates on continuing services.

“Blurred Lines”: The Advantages of Filing First

Recently, Robin Thicke, Pharrell Williams, and Clifford Harris, Jr., the authors of the song “Blurred Lines,” filed a lawsuit against the family of Marvin Gaye and Bridgeport Music, Inc. in the Central District of California seeking a declaratory judgment that the song “Blurred Lines” does not infringe upon either the song “Got to Give it Up” (owned by Marvin Gaye’s family) or “Sexy Ways” (owned by Bridgeport Music).  The declaratory judgment action was filed after Gaye’s family turned down the songwriters’ settlement offer and before the family could file a copyright infringement suit of its own.

Preemptively filing a lawsuit has a number of advantages for a copyright holder faced with an infringement claim including:

  • Choosing the venue
  • Taking control of the timing of the lawsuit
  • Getting the first word in front of the court to frame the case

Preemptive filing should be used judiciously, however.  If there is any hope of pre-filing settlement, the commencement of a lawsuit increases the expenses involved in any settlement and will start the clock on federal case management requirements – not to mention potentially enraging the opposing party.

Ultimately the “Blurred Lines” lawsuit is a good lesson for anyone holding a copyright.  If you plan on making an infringement claim, it may be worth drafting a complaint that is ready to file at a moment’s notice.  For those accused of infringement, it is important to consider the option of filing a preemptive lawsuit during negotiations to afford yourself all of the advantages listed above.

Federal Circuit Clarifies Patent Eligibility of Software

The issue of patentability in the context of computer software is the subject of considerable unrest.  For example, the Federal Circuit’s recent CLS Bank Int’l v. Alice, 717 F.3d 1269 (Fed. Cir. 2013) plurality decision contained seven separate opinions and accordingly provided practitioners and the lower courts with strikingly little guidance.  However, on September 5, 2013, the court clarified two broad principles for analyzing the patent eligibility of software-related inventions in Accenture Global Services v. Guidewire Software – the Federal Circuit’s first post-CLS Bank decision addressing the issue:

  • System Claims That Track Method Claims Generally “Rise or Fall Together”: A system claim which essentially implements the process of an invalid method claim is also invalid unless the system claim offers a meaningful limitation beyond generally linking the use of the method to a particular technological environment. Minor differences in terminology will not make patentable a system claim that requires performance of the same basic process as an invalid method claim.
  • Meaningful Limitations:  A system claim is ineligible for patenting if it fails to include meaningful limitations that prevent the claim from encompassing the entire underlying abstract idea or fundamental concept.  A system claim does not become eligible for patenting by merely restricting an abstract concept to implementation by a computer or use in a specific industry.  

The Accenture decision confirms that a litigant who fails to appeal the invalidation of a method claim will be estopped from arguing the patentability of a system claim containing the same elements.  As Chief Judge Rader points out in his dissent, this creates a policy that requires litigants to appeal the invalidity of every claim or else risk the potential for estoppel or waiver of other claims.

Accordingly, cautious litigants should appeal everything to avoid losing important claims, while practitioners should draft software-related system claims with meaningful limitations restricting them to a specific application.