More on the war with Apple …

By: Debby Winters

Remember back in October when the Apple patent for the slide-to-unlock feature issued? Apple applied for that patent a year before the iPhone came out. It was touted as a fun way to keep the device secure while in your pocket. That was back in December of 2005, but it took until 2012 for the patent to issue. Even then there seemed to be prior art that might have prevented the issuance of the patent. One Dutch court ruled that the Apple slide-to-unlock patent was invalid because of the 2004-5 Neonode N1m device, which had a similar but not identical feature .

The Apple patent diagram displays a left-to-right motion. Ever since the issuance of the Apple patent, it has been unclear if a top-to-down motion or other finger swipes would be affected by the left-to-right patent. We may soon find out, as Micron has just received its own patent covering a “system and method for controlling user access to an electronic device.” Their patent, although issued this month, claims priority to an original application filed in February 2000. That is before the Apple patent was filed. The Micron patent claims a geometric pattern to gain access to the device. How will that affect the later-filed Apple patent? Will it invalidate Apple’s patent? Or are they separately patentable?

As the U.S. moves to a first to file system, we must remember that during the time these patent applications were filed, the U.S. was under the first to invent system. This means that an inventor may be able to provide evidence that even though the application was filed after another application, it was invented prior to the one filed first.

These questions remain to be answered but to further complicate the situation, Samsung, who has been broiled in legal fights with Apple over their mobile devices, has a 10 year cross-license deal with Micron, the holder of this recently issued patent. Micron is known for shifting its patents to larger players in the field and letting them follow-up on infringement. The question now is will they do the same with this new patent?

Stay on hold until the next chapter of this battle plays out…

What does the Nike decision mean?

By Debby Winters

Already LLC v. Nike Inc., is a case that began over three years ago as a dispute over sneaker trademarks and has evolved into a technical debate over legal jurisdictional issues. Nike originally filed its trademark infringement claim against Already’s Texas-based Yums footwear brand in July 2009 in federal court. Nike claimed Yum’s “Soulja Boy” and “Sugar” shoes were a “confusingly similar imitation” to its popular Air Force 1 design, which it trademarked in 2008. What was at issue was Nike’s trademark on the stitching, eyelet panels and other features of Air Force 1.

Yums filed a counterclaim seeking to cancel Nike’s trademark registration. Nike delivered a “covenant not to sue,” withdrawing its right to pursue any further legal claims against Yums, saying the company’s actions “no longer infringe or dilute the Nike mark at a level sufficient to warrant the substantial time and expense of continued litigation.”  Such covenants are a common defensive tactic used by trademark holders. This was done to bring a halt to Yums attempt to invalidate the trademark for one of Nike’s most popular products. But that wasn’t enough for Yums, because even though Nike pledged to adhere to its covenant, Yums wanted to push forward on its case to cancel Nike’s trademark. It claimed the existence of Nike’s trademark is a “continuing libel” against Yums, leaving the impression that it continues to infringe upon the trademark, which could ultimately hurt Yums’ business.

Nike filed a petition to dismiss Yums’ claim, arguing that federal court didn’t have jurisdiction to act without an existing conflict over the trademark. The Court agreed, dismissing Yums’ claim. That was upheld by the Court of Appeals. Yums argued that its counterclaim should remain in federal court because the issue of the validity of Nike’s trademark registration was independent from Nike’s original claim of infringement. Nike countered that Yums lacked standing to litigate its counterclaim in federal court because it had not demonstrated that there was any actual risk of injury to Yums since the court had dismissed Nike’s infringement claim and Nike had issued a promise not to sue.

The case was picked up by the Supreme Court who was to decide the question whether the federal court has the right to hear trademark challenges in cases where the holder of the mark agrees not to pursue infringement claims. Yesterday the Supreme Court ruled in Nike’s favor saying that the federal court did not.

A trademark cancellation is not common but can be accomplished. However, it usually begins with the filing of a petition for cancellation with the Trademark Trial and Appeal Board. But in this case, since Nike had already filed suit, a counterclaim was filed to ask for cancellation. The party seeking to cancel the trademark must show they have been damaged and the opposing party owns prior rights in an identical or confusingly similar trademark.  Unfortunately, in this case we never got to the merits of the case because the jurisdictional issue of what court should hear this case has distracted from the real issue.

Nike’s victory with the Supreme Court is taken as a victory for the big guy, such as Adidas, Coach, and Louis Vuitton. Clothing company Levi Strauss & Co and automaker Volkswagen AG both filed briefs supporting Nike. This decision may help these large companies that often sue smaller companies to prevent alleged imitators from interfering with their revenue streams and customer goodwill.  The case also has broad implications for intellectual property law, with respect to whether parties bringing infringement actions can terminate those actions, without exposing themselves to challenges to their state and federal intellectual property rights.

Resolutions for 2013

By: Debby Winters

We are almost a week into 2013 and most are making resolutions for the new year. Have you thought about anything you’d like to try to achieve for 2013? Here are my 8 suggestions for things that are related to items that I blog about.

1-     Read the TOS and check privacy settings

Terms of service (TOS) are long, boring documents filled with impenetrable legalese. But before you upload content or share personal information with a site, take a few minutes to read over its TOS — and any privacy agreements. This way you will have a better idea of who owns your data and what the company can do with it. Start with the biggies you’re probably already using such as Google, Facebook, Yahoo, Twitter and Instagram. Remember my recent post about the change in Instagram TOS? You may be saying to yourself that even if you read the TOS, they can change it at a later date. While that is true, it is good to know what you are agreeing to when you agree to it and not find out at a later date that you did something that you did not mean to.

Next, take a trip to your privacy settings. Even if you had your settings just the way you wanted them a year ago, the company could have updated the controls and left some of your information exposed. Check your privacy settings every few months to ensure they are the way you want them.

2-     Step away from the smartphone

If you spend most of the day with your nose buried a smartphone, tablet or computer, make an effort to break out of the digital world and interact more with the humans in 2013. Don’t habitually check your online social networks while hanging out with your flesh-and-blood friends and family. Attempt to live in the moment instead of just documenting the moment on Instagram. There’s a time and a place for texting and e-mailing and checking Twitter and Facebook, but this year, try to leave the screens in your pocket more often and engage with the world around you.

3-     Respond to the emails that matter

On a similar note, respond only to the emails that are important and do so in a timely fashion. Clean out your inbox by unsubscribing from pointless newsletters so you can focus on the important mail. It is sometimes hard to get newsletters to let you go, but it is worth a try. Email back your family and friends as quickly as possible.

4-     Lead a safer online and mobile life

Change passwords on your accounts and use different passwords for each one. Make sure you can remotely wipe your phone and iPad if ever lost. Be careful about information you share online, which includes being mindful of you Facebook privacy settings and location services usage. See #3. Also back up your data! This leads me to #5.

5-     Back your stuff up

Back up your files. Do it now, do it often, do not put it off until your hard drive suddenly and unexpectedly perishes or until your laptop is stolen from a cafe when you run to the bathroom.

Everyone will have different backup needs, but for the most basic computer backups there are a few basic options. You can use an external hard drive or a cloud service like Dropbox, Wuala, or Google Drive to save a copy of select files. A nice Dropbox feature is that it can automatically save new photos from connected cameras or smartphones to the cloud.

6-     Learn something new online

Quality classes are free and plentiful online. There are courses for every age, interest and attention span, from major universities and organizations. Don’t limit yourself to only local colleges as many top colleges offer free online classes. Coursera offers free college courses from big name universities including Princeton, Emory, Stanford, Johns Hopkins and Columbia. If you aren’t into signing up for a class, many offer one time webinars and many of these are free. Or just get inspired by the best of the Ted Talks or RadioLab podcasts.

7-     Be careful what you post to social media.

In the age of people posting their every move on social media, you should think twice before you post. There are legal cases where postings have been used against one party or the other and people have been liable for damages, criminal acts, and loss of child visitation privileges, just to mention a few. But beyond that, everyone should think before they post. This can be a potential problem in the workplace for both employers and employees if inappropriate behavior ends up on-line. Think about what impact it will have on the reputation of all. Additionally, even minor faux pas with your friends and family can occur when you don’t stop and realize that all of your “friends” see what you post, not just the ones you intend the post to be for. Just be careful what you post, as there is no magic eraser to undo internet postings one you hit the “enter” button.

8-     Network. And then follow-up.

Don’t just make efforts to make helpful connections, strive to keep in touch with them.  This could be the difference between getting yourself noticed. If you’re not using LinkedIn, join now. It is a valuable professional tool to stay connected. Make sure that if you use this professionally that your profile is professional and not personal.

If you resolve to do even half of these things you will have a happier, healthier and safer 2013 with less IP concerns…here’s to that! Now, let’s get started!!