Volume 19, Issue 2 Surveys

Klayman v. Obama, 957 F. Supp. 2d 1 (D.D.C. 2013)

By: Garrick Chan

In June 2013, various international newspaper outlets reported on classified material pertaining to the U.S. government’s practices on intelligence and surveillance data collection. The source of these “leaks” was Edward Snowden, a former National Security Agency (NSA) contractor. The initial media report disclosed an order issued by the Foreign Intelligence Surveillance Court compelling Verizon Business Network Services (Verizon Wireless) to produce to the NSA all national and international call records (“metadata”), regardless of whether there was any suspected wrongdoing.

Plaintiffs, subscribers to Verizon Wireless, brought two suits against the U.S. government (the “Government”) and various corporate defendants. The first suit, Klayman I, refers to phone record data collection and analysis, whereas the second suit, Klayman II, addresses both phone and Internet record data collection and analysis. More specifically, “plaintiffs allege that the Government has violated their individual rights under the First, Fourth, and Fifth Amendments of the Constitution and has violated the Administrative Procedure Act (“APA”) by exceeding its statutory authority under FISA.”

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Ferring Pharm., Inc. v. Watson Pharm., Inc., 765 F.3d 205 (3d Cir. 2014)

By: Marilena Guadagnini

Plaintiff-appellant, Ferring Pharmaceuticals, Inc. (Ferring), is an internationally recognized biopharmaceutical company that manufactures the prescription progesterone product Endometrin. Defendant-appellee, Watson Pharmaceuticals, Inc. (Watson), manufactures the progesterone product Crinone, which directly competes with Ferring in the prescription progesterone market. The progesterone hormone products that the parties manufacture are used to aid women in the process of achieving pregnancy by assisted reproductive technology.

The dispute between Ferring and Watson derived from two webcast presentations that Watson hosted in September of 2012. During the webcast presentations, a Watson consultant, Dr. Kaylen M. Silverberg, made three invalid statements about Ferring’s progesterone product with which Ferring takes issue: (1) he referenced a non-existent “Black Box” warning on Endometrin’s package insert; (2) he misspoke when referring to a patient survey involving the comparison of Endometrin and Crinone; and (3) he improperly characterized the results of an Endometrin effectiveness study. Based on the false statements made by the Watson consultant, Ferring filed a complaint alleging violations of § 43(a) of the Lanham Act, the New Jersey Consumer Fraud Act, and New Jersey common law.

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Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014)

By: Jin Ho

The respondent, ICON Health & Fitness, Inc. (ICON), owns a patent covering “an elliptical exercise machine that allows for adjustments to fit the individual stride paths of users.” The petitioner, Octane Fitness, LLC (Octane), manufactures exercise equipment including elliptical machines. ICON, sued Octane, claiming that Octane’s elliptical machines infringed on its patent.

The district court granted Octane’s motion for summary judgment, finding that the machines did not infringe on ICON’s patent. Octane then moved to recover attorney’s fees under the fee-shifting provision of the Patent Act, which states that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.”

Historically, courts did not award attorneys’ fees as stated in the “American rule.” The American rule makes litigants each responsible for their own legal costs, regardless of which party triumphs. In 1946, Congress amended the Patent Act, and gave the courts discretion to award attorneys’ fees in patent litigation cases where the losing party exhibited egregiously willful or bad faith misconduct. In 1952, Congress subsumed 35 U.S.C. § 70 into § 285 for clarification purposes, and formally included the fee-shifting provision for “exceptional cases.” Thus, the recodified provision in § 285 was “‘substantially the same as’ § 70” with its emphasis on the courts’ discretionary powers to award fees.

Since 2005, the Federal Circuit has veered away from its previous standard of reviewing the “totality of the circumstances” when making fee-shifting determinations and has relied instead on the more standardized and fixed formulation established in Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc. In Brooks Furniture, the Federal Circuit held that a case may be considered exceptional if (1) there is litigation related misconduct of an independently sanctionable magnitude, or (2) it determines that the litigation was both brought in subjective bad faith and was objectively baseless. A court could find that a case is objectively baseless “only if it is ‘so unreasonable that no reasonable litigant could believe it would succeed,’” and subjective bad faith is exhibited “only if the plaintiff ‘actually know[s]’ that it is objectively baseless.” The court in Brooks Furniture ultimately held that the patentee did not exhibit subjective bad faith. Because neither “exceptional” situation was present, the Federal Circuit invalidated Brooks Furniture’s fee-shifting claim.

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Virginia v. Baust, No. CR141439 (Va. Cir. Ct. Oct. 28, 2014)

By: Kathryn Hudman

Defendant, David Charles Baust, was charged with violating Code of Virginia § 18.2-51.6, Strangling Another Causing Wounding or Injury. The victim claimed that, on February 19, 2014, the Defendant assaulted her in his bedroom. The Defendant allegedly recorded the incident via a recording device that transmitted the recordings from his bedroom to his smart phone. Previously, the Defendant used the recording device to transmit videos “of the victim and himself engaging in sexual intercourse in his room.”[1]

The Commonwealth of Virginia was granted a search warrant that allowed them to recover computer equipment, recording devices, computer discs, flash drives, and the Defendant’s smart phone. The Defendant and the victim both affirmed that there was likely a recording of the assault on the Defendant’s smart phone, however, the police could not access the contents of the phone because it was protected by passcode and fingerprint encryption.

The Commonwealth of Virginia brought a “Motion to Compel the Production of the Passcode or Fingerprint to Encrypted Smartphone”[2] against the Defendant. The defense argued that the passcode and fingerprint encryption are testimonial, and thus protected under the Defendant’s Fifth Amendment privilege against self-incrimination.

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B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015)

By: Wyatt Robarts

Petitioner, B & B Hardware, Inc. (B & B), is a California corporation that manufactures and sells a fastener product in the aerospace industry. B & B has been selling its product under the “Sealtight” trademark since 1990. Respondent, Hargis Industries, Inc. (Hargis), is a Texas corporation and uses the trademark “Sealtite” for self-drilling screws. Hargis has been using its trademark since 1992.

In 1993, the United States Patent and Trademark Office (USPTO) granted B & B registration of the “Sealtight” trademark. Hargis, on the other hand, sought and was denied registration of the “Sealtite” mark in 1996 due to the likelihood of confusion with B & B’s prior existing trademark. Hargis did not seek review of the Trademark Trial and Appeal Board’s (TTAB) decision.

Following the success at the TTAB, B & B brought a lawsuit against Hargis alleging trademark infringement, unfair competition, and false designation of origin. Hargis counterclaimed for copyright infringement, false advertising, false designation of origin, and unfair competition. B & B argued that Hargis could not contest the TTAB’s finding of likelihood of confusion because the issue had already been decided. However, the district court disagreed, holding that issue preclusion did not apply because the TTAB used a different test than the court in applying a likelihood of confusion analysis. The U.S. Court of Appeals for the Eighth Circuit affirmed judgment for Hargis but remanded the case to recalculate attorney fees.

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Oracle Am., Inc. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014)

By: Kacee Taylor

The plaintiff is Oracle America, Inc. (Oracle), a computer technology developer. The defendant, Google Inc. (Google), is a multinational corporation specializing in Internet-related products and services.

In 2010, Oracle acquired Sun Microsystems, Inc. (Sun), a company that developed the Java “platform” for computer programming. Java is a programming language used by developers to write code. The Java platform enabled written programs to be run across various types of hardware instead of having to code for multiple individual machines, thus improving speed and efficiency for developers.

Within the Java platform, Sun created 166 “packages” of common, ready-to-use code for developers to use as shortcuts instead of having to write their own code from scratch. The issue at hand involves 37 of these “packages,” commonly known as an application program interface (API). Each API consists of two types of source code, declaring and implementing. The declaring code acts as the “header,” or label, which helps identify and introduce the proper prewritten name and functionality. The implementing code provides instructions for carrying out the functions, or the written programs.

Through the acquisition of Sun, Oracle became the owner of the copyrights to the Java platform and API packages. Oracle offers different types of licensing options for those wanting to use the packages, one being a Commercial License that requires the licensee’s programs to remain compatible with the Java platform. In 2005, Google and Sun began discussing a potential licensing deal where Google would adapt the Java platform for mobile devices. They also discussed the possibility of partnering with Sun to make the technology part of Google’s open-source, mobile platform, Android. The companies were unable to reach an agreement because Google refused to meet the compatibility requirements set forth by the license agreement.

Since the parties reached an impasse, Google created its own version of the Java packages to conform to the Android operating system. Google wrote its own implementing code, with the exception of the “rangeCheck” function and eight decompiled security files. Google incorporated Oracle’s declaring code verbatim in order for Java developers to easily recognize and find the packages within Android. However, the declaring code consisted of what the district court coined the “‘structure, sequence, and organization’ or ‘SSO’ of the 37 packages.” The SSO contained what Oracle deemed to be their system of organization, or elaborately organized taxonomy. Oracle claimed that by building their own version of these packages, Google both rendered the Android operating system incompatible with the Java platform, and infringed on Oracle’s copyrights associated with the programming language.

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