IP Law Daily, WORTH NOTING—Other IP law developments, (Sep 1, 2022)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

COPYRIGHT—8th Cir.: Allen Beaulieu, the photographer for famous musical artist Prince Rogers Nelson (widely known as “Prince”), failed to show that his former collaborators and a potential investor in a book project engaged in conversion by allegedly retaining digitized versions of approximately 3,000 of Beaulieu’s copyrighted photographs and using them without permission. Beaulieu never provided a complete inventory of the photos for any time period relevant to the lawsuit; nor did he provide any evidence that the defendants still had any of his photos. A forensic examination of at least 26 electronic devices belonging to the defendants did not uncover any evidence of “unlawful access, transmission and/or copying of Plaintiff’s data, as alleged in the complaint.” The district court also did not err in dismissing a copyright infringement claim against one defendant and his company on the ground that the defendants had an implied license to create and distribute a press release email with an MP4 slideshow featuring photos expressly credited to Beaulieu. The written contract between the parties included provisions for “promotion” and “commercial and merchandising rights subject to Author’s approval.” Beaulieu’s knowledge of the slideshow, coupled with continued and normal interactions between him and the collaborators, implied his approval of the marketing plan and the corresponding distribution of his images, and thus showed an implied license (Beaulieu v. Stockwell, August 30, 2022, Benton, W.).

PATENT—Fed. Cir.: The U.S. Court of Appeals for the Federal Circuit on August 29 modified an opinion it issued on August 26, holding that that the Patent Trial and Appeal Board did not err in concluding that the challenged claims of Best Medical International Inc.’s U.S. Patent No. 6,393,096 are unpatentable based on obviousness. The modification merely revised the prior opinion’s description of the invention based on the patent’s written description; it did alter the outcome of the prior ruling (Best Medical International, Inc. v. Elekta Inc., August 29, 2022, Stoll, K.).

PATENT—3d Cir.: The federal district court in Newark, New Jersey, properly dismissed a lawsuit filed by Verify Smart Corporation (“Verify”) against various banks for alleged breach and fraudulently inducement of patent settlement agreements, the U.S. Court of Appeals for the Third Circuit has ruled. Verify brought claims against Wells Fargo and Bank of America (the “Banks”) for allegedly infringing its patent for multifactor-identification software. In response, Bank of America challenged the patent. The parties settled, with the Banks promising not to challenge Verify’s patent. But shortly thereafter, Askeladden L.L.C., a subsidiary of banking industry group The Clearing House Payments Company L.L.C. (“TCH”)—of which both Banks were members—challenged the same patent and succeeded in invalidating it. Verify failed to plausibly allege that Askeladden acted as an agent for the Banks when it filed the challenge to Verify’s now-invalidated patent. Askeladden’s agreement actually showed that the Banks did not control which patents Askeladden challenged. And Verify did not allege any facts establishing that any Bank officer had authority over or responsibilities related to Askeladden (Verify Smart Corp. v. Bank of America NA, August 31, 2022, Restrepo, F.).

TRADE SECRETS—5th Cir.: A Louisiana federal district court did not err in finding that temporary staffing agency People Source lacked evidence to create a triable fact issue that former employees had violated the Louisiana Uniform Trade Secrets Act by misappropriating trade secrets and other confidential information for the benefit of their new firm, People Source competitor Will Source, the U.S. Court of Appeals in New Orleans has determined. The district court also committed no error in granting summary judgment to the defendants on People Source’s claims for unjust enrichment, breach of contract, breach of fiduciary duty, and violations of the Louisiana Unfair Trade Practices Act (“LUTPA”). People Source’s Louisiana Non-Compete and Non-Solicitation Agreements were overbroad and unenforceable. Finally, the district court did not abuse its discretion by striking evidence (People Source Staffing Professionals LLC v. Robertson, August 25, 2022, per curiam).

USPTO PATENT NEWS: USPTO Director Kathi Vidal in a recent blog post announced the rollout of a new Engage with the Director webpage to encourage and facilitate Office interaction with stakeholders. “We encourage all of you who can contribute to our learning, to open your doors and collaborate with us,” Vidal said. “You can do so through the Patent Examiner Technical Training Program (PETTP), the Site Experience Education (SEE) program, and Customer Partnership Meetings (CPMs), all of which provide examiners and others at the USPTO with the chance to interact with our stakeholders while enhancing their technical expertise.” Information about the PETTP, including past guest speakers, is available here. The SEE program connects innovators, scientists, designers, and engineers with patent examiners. Information on the SEE program, including past trips, is available here. Patents CPMs provide an opportunity for our stakeholders to meet directly with USPTO employees in a collaborative forum. More information on CPMs is available here.

USPTO PATENT NEWS: The USPTO is seeking comments on the collection of data for the PTAB Pro Bono Programs. The purpose of the Federal Register notice is to allow 60 days for public comment preceding submission of the information collection to OMB, as required by the Paperwork Reduction Act of 1995. In accordance with the America Invents Act, the USPTO—in collaboration with various non-profit organizations—implemented the Patent Pro Bono program—a series of autonomous regional hubs that act as matchmakers to help connect low-income inventors with volunteer patent attorneys across the United States. The renewal of 0651-0082 proposes to broaden the scope of the information collection to include the PTAB Pro Bono Program, implemented earlier this year (87 Fed. Reg. 52938).

Attorneys: Christopher M. Daniels (Parker Daniels Kibort, LLC) for Allen Beaulieu. Michael Puklich (Neaton & Puklich, PLLP) for Clint Stockwell. Barry J. Coyne (The Webb Law Firm) for Best Medical International, Inc. Tamara Fraizer (Squire Patton Boggs LLP) for Elekta Inc. Kevin H. Marino (Marino, Tortorella & Boyle, P.C.) for Verify Smart Corp. Andrew J. Frackman (O'Melveny & Myers LLP) for Bank of America N.A., Bank of America Corp., Wells Fargo Bank, N.A. and Wells Fargo & Co. Phyllis Guin Cancienne (Baker, Donelson, Bearman, Caldwell & Berkowitz, PC) for People Source Staffing Professionals, LLC. Brady Dean King (McNew, King & Landry, LLP) for Anna Robertson.

Companies: Best Medical International, Inc.; Elekta Inc.; Verify Smart Corp.; Bank of America N.A.; Bank of America Corp.; Wells Fargo Bank, N.A.; Wells Fargo & Co.; People Source Staffing Professionals, LLC

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