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William Morris
UnderArmour Trademark Counsel

Again, Intellirights thanks William Morris, trademark counsel at UnderArmour, for providing insight on the problems his company faces in dealing with counterfeit goods.

During our interview, Morris was clear that UnderArmour is a high-quality, performance brand, and that the company intends to vigorously enforce its intellectual property rights to protect the brand. We look forward to hearing from him soon with an update on UnderArmour’s progress in this ongoing battle.

In its recent 2011 Special 301 Report, the Office of the United States Trade Representative (USTR) framed the global problem of counterfeiting this way:

Counterfeiting has evolved in recent years from a localized industry concentrated on copying high-end designer goods to a sophisticated global business involving the mass production and sale of a vast array of fake goods, including items such as counterfeit medicines, health care products, food and beverages, automobile and airplane parts, toothpaste, shampoos, razors, electronics, batteries, chemicals, and sporting goods.

Counterfeiting and piracy diminish the profits of legitimate producers and risk harm to consumers who may purchase fraudulent, potentially dangerous products. Trading partners where rampant counterfeiting and piracy occur lose tax revenue and may find it more difficult to attract investment.

Those engaged in trademark counterfeiting and piracy generally pay no taxes or duties, and they often disregard basic standards for worker health and safety and product quality and performance. Industry reports trends in counterfeiting and piracy that include:

• A greater variety in the types of goods that are being counterfeited, as well as the production of labels and components for these fake products. Counterfeiters are establishing a global trade in counterfeit items, shipping them separately to free trade zones (FTZs) to be assembled and distributed in another country. Counterfeiters have also abused FTZs to disguise the origin of counterfeit goods.
• A rapid growth in the piracy of copyrighted products in virtually all formats, as well as
counterfeiting of trademarked goods, because these criminal enterprises offer enormous profits and little risk. Such enterprises require little up-front capital investment, and even if they are detected and prosecuted, the penalties imposed on them in many countries are so low that such penalties offer little or no deterrence against further infringements and are viewed merely as a cost of doing business.
• A growth in the online sale of pirated and counterfeit hard goods that is rapidly approaching the volume of goods that sold by street vendors and in other physical markets. Legal and investigative institutions face difficulties in responding to this trend. Online advertisements for sale of unlawful physical goods that are delivered through the mail or by hand are found in many places, including China, France, Germany, Japan, Spain, and Taiwan. For example, in China, although the largest Internet-based sales portals have responded to rights holders’ complaints of counterfeit and pirated product listings, and even though major online sellers and distributors seem to be making efforts to ensure that the content available on their websites is legal, more than 75 percent of illicit sellers have reportedly re-listed the infringing goods.
• Another notable trend involves shipping counterfeit products separately from labels and packaging to evade enforcement efforts. For example, infringers in Russia reportedly import unbranded products, package these products with unauthorized packaging materials bearing the rights holders’ trademarks, and subsequently export the products to various countries. Infringers in countries such as Paraguay reportedly facilitate these illegal activities by exporting label and packaging components to these counterfeit and pirated product assemblers. There are reports of transit of illicit labels through other countries as well, including Mexico and the Philippines.

Stronger and more effective criminal and border enforcement is required to stop the manufacture, import, export, transit, and distribution of pirated and counterfeit goods. Through bilateral consultations, FTAs, and international organizations, USTR is working to ensure that penalties have deterrent effects, and include significant monetary fines and meaningful sentences of imprisonment.

Additionally, important elements of a deterrent enforcement system include requirements that pirated and counterfeit goods, as well as materials and implements used for their production, are seized and destroyed.

To learn more about UnderArmour, please click here.

To learn more about the Office of the United States Trade Representative, please click here.

We especially thank Howard University School of Law and Professors Steven Jamar and Lateef Mtima for facilitating this interview. For more information on Howard’s law program, please click here.

David Strobhar
Chief Human Factors Engineer at Beville Engineering

Intellirights thanks David Strobhar of Beville Engineering for taking time discuss the important research into human factors issues that come into play in protecting and securing refineries and petrochemical plants.

David Strobhar and his colleagues conducted this research with Penn State University and the Center for Operator Performance (an alliance of academic and process companies to research generic issues in human factors and process operator performance), and this research will be presented at the National Petrochemical and Refiners Association Annual meeting in San Antonio, Texas, March 20-22, 2011. The recent tragedy in Japan brings plant protection systems directly into focus and emphasizes the need for solid procedures in ensuring that man, industry, and the environment are protected and that catastrophes are avoided. We thank David and his colleagues for this opportunity to gain insight into the factors involved in the interface between man and machine.

For more information on Beville Engineering, please click here.

For more information on the National Petrochemical and Refiners Association, please click here.

For more information on the Center for Operator Performance, please click here.

Elmore Leonard
Legendary Author

We want to thank Elmore Leonard, one of America’s most prolific and well known writers, for coming on to talk with Jen Richer about the creative process and commercializing his written works.

Mr. Leonard has a library of books, screenplays, television shows, and films to his credit. Born in New Orleans in 1925, Leonard was drawn to the westerns early in life. In the pre-interview discussion with Eric Yeager, Leonard said that he fell in love with westerns because they were easy stories to tell: a good guy sets out to battle bad guys. For Leonard, that formula was simple, and he learned how to perfect it in his spare time while at a job writing advertising copy.

Leonard in the 1950s catapulted into television and films with many works that were westerns—The Captives, which became the 1957 film The Tall T (starring Randolph Scott and Richard Boone); Hombre, which became the 1967 film of the same name starring Paul Newman and Richard Boone; Joe Kidd, which became the 1972 film of the same name starring Clint Eastwood, and 3:10 to Yuma, which became the 1957 and 2007 films of the same name.

Sensing that the western format had all but dried up, Leonard forged ahead with crime dramas like Mr. Majestyk, which was developed into the 1974 film starring Charles Bronson. The Moonshine War was made into a film starring Richard Widmark; 52 Pickup was the basis of the film starring Roy Scheider and Ann-Margret; Rum Punch was the source of Quentin Tarantino’s film Jackie Brown featuring Pam Grier and Samuel Jackson; and his book Out of Sight is the basis of the film starring George Clooney and Jennifer Lopez.

Mr. Leonard’s skill as a writer is known around the world, and he has received numerous awards, including the 1999 Edgar Allan Poe Award, the 2008 Scott Fitzgerald Award, and 2009 PEN USA Lifetime Achievement Award.

We appreciate Mr. Leonard’s candor in discussing some of the challenges involved with having his books being adapted into films, and some of the disappointing results. But, as noted in the interview, Elmore Leonard refuses to fret or wring his hands over what a director might do in making a film based on his book. At 85, he moves on to the next project. Right now, Mr. Leonard’s next project is a television hit called “Justified” on the FX Network. We were delighted to have him share some of the writings on his U.S. marshal character Raylan Givens, and we are hopeful that he gets to do another western with Clint Eastwood. What could be better than teaming America’s greatest living western writer with America’s greatest living western hero?

We sincerely thank Mr. Leonard for giving us the time to chat on the phone about movies, books, and Hollywood, and we look forward to talking with him again. But we give all the credit here to Gregg Sutter for making this all happen. Thanks again, Gregg.

To learn more about the life and works of Elmore Leonard, please go to his site at www.elmoreleonard.com.

Steven E. Gordon
Animator, Story Artist & Character Designer

Steven Gordon is an extremely talented and experienced artist who started his career out of high school by working for Ralph Bakshi Productions on the feature film Lord of the Rings, and then on projects for Filmation. He credits artists Mike Ploog and Dave Jonas and animators Irv Spence, Marty Tarras, and Bruce Woodside as early influences. Over the years, he did a stint at Disney Pictures animating on The Black Cauldron, The Great Mouse Detective and also took on freelancing assignments for Hanna-Barbera, Warner Bros TV, Disney TV, DIC and Sabanstudios. Steve was one of the directors and the character designer on X-Men: Evolution and was story artist for the Dreamworks films Madagascar, Moby Dick, Shrek 2and Over the Hedge. In his interview with Intellirights, Steve points out that timing and networking are important keys in the animation industry. He also notes that Twitter is a terrific way to connect to fans, other artists, and potential clients. We thoroughly enjoyed our look at art through the lens of Steven Gordon and await our next meeting with him about other projects down the road.

To learn more about artist Steven Gordon, please visit his site at http://www.stevenegordon.com

Dr. Christian Mammen
Resident Scholar
University of California Hastings College of the Law

Intellirights thanks Dr. Christian Mammen for taking the time to discuss the doctrine of inequitable conduct and the amicus curiae brief he submitted on behalf of IP law professors in the en banc case of Therasense Inc. v. Becton, Dickinson & Co., Fed. Cir., No. 2008-1511. As noted in an earlier Intellirights story, the Federal Circuit heard oral arguments in that case on November 9, 2010.

Professor Mammen received his undergraduate degree from Trinity University in San Antonio, Texas and his J.D. from Cornell Law School. After law school, he earned a doctorate in jurisprudence from Oxford University in England. His scholarly dissertation entitled Using Legislative History in American Statutory Interpretation was published in 2002. From 1995-1996, Dr. Mammen served as a law clerk to the Hon. Robert R. Beezer on the United States Court of Appeals for the Ninth Circuit.

Dr. Mammen has practiced for the last 13 years in patent and related intellectual property litigation and appeals in San Francisco and Silicon Valley.  Dr. Mammen has taught courses in property, civil procedure, evidence, and e-discovery at Hastings, and has taught pretrial civil litigation at U.C. Berkeley’s Boalt Hall.  He has also written and lectured in patent law.

From 1997-2005, Dr. Mammen practiced intellectual property and appellate litigation in the San Francisco office of Heller Ehrman.  He joined the Silicon Valley IP litigation team at Day Casebeer Madrid & Batchelder in 2005, and was a partner there from 2007-2008.  He has litigated a number of IP cases in a wide range of technologies, including Internet search, high temperature superconductivity, mobile telecommunications, digital video and audio, and biotechnology.

Besides himself, the other professors listed on Dr. Mammen’s amicus brief are William T. Gallagher, Associate Professor of Law, Golden Gate University School of Law;  Michael Risch, Associate Professor of Law, Villanova University School of Law; Joshua D. Sarnoff,  Associate Professor of Law, DePaul University College of Law; and Toshiko Takenaka, Ph.D.,  University of Washington School of Law.

Eric Yeager’s conversation with Dr. Mammen tracks  inequitable conduct being first identified as a patent litigation “plague” in the Federal Circuit’s ruling in Burlington Industries Inc. v. Dayco Corp., 849 F.2d 1418 (Fed. Cir. 1988), the court’s en banc statement on the intent standard in Kingsdown Medical Consultants v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988), PTO Rule 56 (37 C.F.R. 1.56) and the proper threshold for materiality, and recent cases showing the difficulty in balancing intent and materiality. Noteworthy cases covered in this discussion are Ferring B.V. v. Barr Laboratories Inc., 437 F.3d 1181 (Fed. Cir. 2006);  McKesson Information Solutions Inc. v. Bridge Medical Inc., 487 F.3d 897 (Fed. Cir. 2007); Nilssen v. Osram Sylvania Inc., 504 F.3d 1223 (Fed. Cir. 2007); and Avid Identification Systems Inc. v. Crystal Import Corp., 603 F. 967 (Fed. Cir. 2010).

Again, we welcome Dr. Mammen to our forum and thank him for his time and insight.

Matthew Zinn
Senior Vice President, General Counsel & Chief Privacy Officer TiVo Inc.

Before joining TiVo, Matthew Zinn was Senior Attorney, Broadband Law and Policy for MediaOne in Denver, Colorado. Prior to holding that post, Matt served as Corporate Counsel for Continental Cablevision's Western Region, based in Los Angeles. Matt was also an associate with the Washington, D.C., law firm of Cole, Raywid & Braverman, where he represented cable operators before the Federal Communications Commission. Matt earned his J.D. at the George Washington University National Law Center and his B.A. in political science from the University of Vermont.

Intellirights sincerely thanks Matt Zinn for joining us to discuss the en banc case of TiVo Inc. v. EchoStar Corp., Fed. Cir., No. 09-1374, which will be argued Nov. 9, 2010,  at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.

At issue in this case is whether a contempt proceeding is the proper setting for determining whether a newly accused device infringes a patent in violation of an injunctive order. Here, EchoStar was permanently enjoined from further infringing Tivo’s “Multimedia Time Warping System” patent (6,233,389). The district court later found EchoStar in contempt of the injunction after determining that the company made only insubstantial changes to its accused device and continued to infringe the ‘389 patent. Though two Federal Circuit judges upheld the contempt finding, Judge Randall Rader, now Chief Judge of the Federal Circuit, dissented, arguing that the injunction was so ambiguously written that it could not have given EchoStar fair notice of what was actually prohibited.

The Federal Circuit agreed in a May 14 order to hear the case en banc and vacated its earlier panel decision.

EchoStar has sought two reexaminations of the ‘389 patent and review by the U.S. Supreme Court, all to no avail. To TiVo, EchoStar has been engaging in stall tactics to avoid paying damages and complying with the injunction. TiVo’s en banc brief insists that the “$215 million awarded … here in supposed compensation for three years of post-injunction infringement” is hardly adequate relief for “irreparable harm” it has suffered in terms of lost customers and market share. However, EchoStar’s opening brief and reply brief argue that substantial issues exist as to whether its modified device infringes and that a new trial is warranted.

The Federal Circuit has asked the parties to address the following questions:

Question (a)

Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?

Question (b)

How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).

Question (c)

Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?

Question (d)

Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?

Professor Megan LaBelle
Catholic University’s Columbus School of Law

Professor Megan LaBelle earned a B.A., summa cum laude, from the University of California, Los Angeles, and earned her J.D. from the University of California, Davis, School of Law. Professor LaBelle served as law clerk for Judge Stephen S. Trott of the United States Court of Appeals for the Ninth Circuit, and for Judge Margaret M. Morrow of the United States District Court for the Central District of California. She also worked as a commercial litigator in private practice at the Los Angeles firm of Munger, Tolles & Olson. Professor LaBelle joined Catholic University’s faculty in 2009.

Professor LaBelle’s publications:

Patent Litigation, Personal Jurisdiction, and the Public Good, George Mason Law Review (forthcoming 2010).

"Virtual" Contacts in Patent Cases: How Should Internet-Related Contacts Affect the Personal Jurisdiction Analysis?, Journal of Internet Law (forthcoming 2010)

The "Rootkit Debacle": The Latest Chapter in the Story of the Recording Industry and the War on Music Piracy, 84 Denv. U.L. Rev. 79 (2006).

For more information on Professor LaBelle and Catholic University’s Columbus School of Law, please visit http://law.cua.edu

Lawrence Meyer
Author of the Novel, The Final Edition

Lawrence Meyer, a writer at the Washington Post for 32 years, talks to Intellirights about his new novel on the newspaper business, The Final Edition. This book involves a wealthy family’s ownership of a newspaper from the Civil War to the end of the 20th century. In our interview, Meyer tells of the prominent role that newspapers have had in the United States, the nation’s rich tradition of family-owned newspapers, and how the digital landscape has led to the decline of newspapers in the print form.

During his career, Meyer reported on many historically important events, including the attempted assassination of Alabama Governor George Wallace, the Watergate break-in trial, the Watergate hearings, and the impeachment proceedings against President Richard M. Nixon. Meyer has published three other books, and his second novel, False Front, was nominated for the American Book Award.

For more information on Lawrence Meyer and The Final Edition, please go to: http://finaleditionthebook.com/

The Final Edition can be purchased at http://www.amazon.com.

Professor Christopher Cotropia
University of Richmond School of Law

Professor Christopher Cotropia joined the faculty at the University of Richmond School of Law in 2006, practiced law in Washington, D.C., at the firm of Fish & Richardson, and was law clerk for the Honorable Alvin A. Schall, United States Court of Appeals for the Federal Circuit. Professor Cotropia obtained his J.D. with honors from theUniversity of Texas School of Law, and earned a B.S with honors and distinction in both computer engineering and electrical engineering from Northwestern University

Professor Cotropia has published a bounty of writings, some of which include:
The Upside of Intellectual Property's Downside, 57 UCLA L. REV. 921 (2010) (coauthored with Jim Gibson).

The Folly of Early Filing in Patent Law, 61 HASTINGS L. J. 65 (2009).
Copying in Patent Law, 87 N. CAR. L. REV. 1421 (2009) (co-authored with Mark
Lemley) (symposium—Frontiers of Empirical Patent Law Scholarship).

Nonobviousness and the Federal Circuit: An Empirical Analysis of Recent Case
Law, 82 NOTRE DAME L. REV. 911 (2007).

Patent Law Viewed Through an Evidentiary Lens: The "Suggestion Test" as a Rule of Evidence, 2006 BYU L. REV. 1517.

Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms, 47
WM. & MARY L. REV. 49 (2005).

Patent Claim Interpretation and Information Costs, 9 LEWIS & CLARK L. REV. 57 (2005) (symposium on Markman v. Westview Instruments).

Counterclaims, the Well-Pleaded Complaint, and Federal Jurisdiction, 33 HOFSTRA L. REV. 1 (2004).

For more information on Chris Cotropia and the University of Richmond School of Law, please visit http://law.richmond.edu/people/faculty/cotropia_christopher.html

The Heartless Bastards

The Heartless Bastards are Erika Wennerstrom, Jesse Ebaugh, Dave Colvin, and Mark Nathan.

This band forms an eclectic mix of rock, blues, and country, and if you have never heard their music, this is a sound you should definitely experience. The group hit Jimmy Kimmel Live! like a storm in January and has been impressing crowds all around the country on tour.

We enjoyed the wit and soulful insight of founder Erika Wennerstrom and we look forward to more great sounds from the group.

Intellirights thanks the Heartless Bastards management team and the folks at the Ottobar in Baltimore for all their hospitality. And we can never forget to thank our friend Joe Ebaugh for all his help.

For more on the Heartless Bastards and their releases that include the album “The Mountain,” please go to: www.theheartlessbastards.com/

Bilski v. Kappos Discussion Featuring
Prof. Megan LaBelle, Catholic University Columbus School of Law Prof.
Christopher Cotropia, University of Richmond School of Law

As is clear from our discussion with Professors LaBelle and Cotropia, Bilski v. Kappos brings to light many other Supreme Court cases, including KSR Intl’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), Diamond v. Chakrabarty, 447 U.S. 303 (1980) and Diamond v. Diehr, 450 U.S. 175 (1981), Parker v. Flook, 437 U.S. 584 (1978), Gottschalk v. Benson, 409 U. S. 63, 70 (1972), and  Laboratory Corp. of Am. Holdings v. Metabolite Labs. Inc., 548 U.S. 124 (2006). In addition to the decision below by the Federal Circuit in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), the discussion in this interview also mentions the Federal Circuit’s 1998 ruling in State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998). Intellirights thanks Professor LaBelle and Cotropia for offering their time and insight in reviewing this seminal case.

Professor Megan LaBelle earned a B.A., summa cum laude, from the University of California, Los Angeles, and earned her J.D. from the University of California, Davis, School of Law. Professor LaBelle served as law clerk for Judge Stephen S. Trott of the United States Court of Appeals for the Ninth Circuit, and for Judge Margaret M. Morrow of the United States District Court for the Central District of California. She also worked as a commercial litigator in private practice at the Los Angeles firm of Munger, Tolles & Olson. Professor LaBelle joined Catholic University’s faculty in 2009.
Professor LaBelle’s publications:

Patent Litigation, Personal Jurisdiction, and the Public Good, George Mason Law Review (forthcoming 2010).

"Virtual" Contacts in Patent Cases: How Should Internet-Related Contacts Affect the Personal Jurisdiction Analysis?, Journal of Internet Law (forthcoming 2010)

The "Rootkit Debacle": The Latest Chapter in the Story of the Recording Industry and the War on Music Piracy, 84 Denv. U.L. Rev. 79 (2006).

For more information on Professor LaBelle and Catholic University’s Columbus School of Law, please visit http://law.cua.edu

Among his many accomplishments, Professor Christopher Cotropia joined the faculty at the University of Richmond School of Law in 2006, practiced law in Washington, D.C., at the firm of Fish & Richardson, and was law clerk for the Honorable Alvin A. Schall, United States Court of Appeals for the Federal Circuit. Professor Cotropia obtained his J.D. with honors from theUniversity of Texas School of Law, and earned a B.S with honors and distinction in both computer engineering and electrical engineering from Northwestern University

Professor Cotropia has published a bounty of writings, some of which include:

The Upside of Intellectual Property's Downside, 57 UCLA L. REV. 921 (2010) (coauthored with Jim Gibson).

The Folly of Early Filing in Patent Law, 61 HASTINGS L. J. 65 (2009).

Copying in Patent Law, 87 N. CAR. L. REV. 1421 (2009) (co-authored with Mark Lemley) (symposium—Frontiers of Empirical Patent Law Scholarship).

Nonobviousness and the Federal Circuit: An Empirical Analysis of Recent Case Law, 82 NOTRE DAME L. REV. 911 (2007).

Patent Law Viewed Through an Evidentiary Lens: The "Suggestion Test" as a Rule of Evidence, 2006 BYU L. REV. 1517.

Patent Claim Interpretation Methodologies and Their Claim Scope Paradigms, 47 WM. & MARY L. REV. 49 (2005).

Patent Claim Interpretation and Information Costs, 9 LEWIS & CLARK L. REV. 57 (2005) (symposium on Markman v. Westview Instruments).

Counterclaims, the Well-Pleaded Complaint, and Federal Jurisdiction, 33 HOFSTRA L. REV. 1 (2004).

For more information on Chris Cotropia and the University of Richmond School of Law, please click here.

Alex Heard ,
Author of 'The Eyes of Willie McGee:
A Tragedy of Race, Sex and Secrets in the Jim Crow South
'

Alex Heard tells Intellirights’ Jen Richer of his compelling non-fiction account of the trial of Willie McGee, an African American executed in 1951 after being convicting of raping a white housewife in Mississippi. Heard paints a stirring picture of how McGee was sent to the electric chair while the state of Mississippi was raging in the heat of racial hatred. The author is clear in pointing out that, while Willie McGee’s case raises similar themes of black and white in a divided Deep South, this story is no To Kill a Mockingbird. As Heard explains, many viewed McGee unsympathetically because his legal team, which included civil rights defender Bella Abzug, had links to the Communist Party of the United States. Heard points out that, despite McGee’s attorneys claim that his relationship with the alleged white victim was a consensual love affair, the political implications forced the National Association for the Advancement of Colored People (NAACP) to steer clear of his case. History may never reveal the truth of McGee’s guilt or innocence, but Heard gives a reader much to consider in looking back at 1950s America.

Intellirights sincerely thanks Alex Heard and publisher HarperCollins for this interview. The Eyes of Willie McGee is widely available, and may be purchased here.

Visit Alex Heard’s blog at www.eyesofwilliemcgee.com.

Pradeep Khosla, Ph. D.,
Dean of the College of Engineering,
Carnegie Mellon University

Intellirights had the distinct pleasure of having a research and innovation discussion with Dr. Pradeep Khosla, Dean of the College of Engineering, Carnegie Mellon University.

Dr, Khosla has a bachelor’s degree from the Indian Institute of Technology, Kharagpur, India, and both his master’s and Ph.D degrees from Carnegie Mellon University, Pittsburgh, Pa. Dr. Khosla’s previous positions include: Founding Director, Carnegie Mellon CyLab; Head, Department of Electrical and Computer Engineering; Director, Information Networking Institute; Founding Director, Institute for Complex Engineered Systems (ICES); and Program Manager, Defense Advanced Research Projects Agency (DARPA), where he managed a $50M portfolio of programs in real-time systems, internet enabled software infrastructure, intelligent systems, and distributed systems. Prior to joining Carnegie Mellon, he worked with Tata Consulting Engineers and Siemens in the area of real-time control. Dr. Khosla’s research interests are in embedded software, intelligent systems, and cybersecurity, and his work has resulted in three books and more than 350 journal articles and conference and book contributions.

Intellirights thanks Dr. Khosla for sharing his insight and hopes to speak with him soon about continuing developments at Carnegie Mellon University. We also thank the National Petrochemical and Refiners Association for facilitating this interview.

To learn more about Dr. Pradeep Khosla, please visit http://www.cit.cmu.edu/about_cit/dean/khosla_bio.html.

To learn more about the National Petrochemical and Refiners Association, please go to: http://www.npra.org/

Victoria Hall, Esq.
Attorney for Robert Jacobsen
Jacobsen v. Katzer, 535 F.3d 1373

Intellirights again thanks Victoria Hall for the opportunity to discuss her work on Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008). In this case, her client, Robert Jacobsen, manager of the Java Model Railroad Interface, had sued defendants for infringing the copyright in his model train software by using the software in violation of the express conditions in the open source license governing its use. As Victoria Hall points out, Jacobsen v. Katzer is an important case because it holds that a copyright owner may dedicate for free public use but still enforce an open source license to control future distribution and modification of that work.

In Jacobsen v. Katzer, the Federal Circuit found that the open source license here allowed anyone to download and use the copyrighted software for free, but subject to certain enforceable limitations. In this case, the limitations required a user to agree to license terms and to provide attribution. To the appellate court, a key distinction was that these limitations were conditions, not mere covenants, and that violation of these conditions meant that the user or copier no longer had a license to copy the software and was engaging in copyright infringement. As Victoria Hall notes, a finding of copyright infringement importantly allows a plaintiff to seek injunctive relief, statutory damages, and attorneys’ fees. Conversely, as Hall also points out, if the license terms were only found to be covenants, breach of those covenants would provide Jacobsen with “uncertain damages, no injunction and no attorneys’ fees.”

In finding that the disputed license terms in Jacobsen v. Katzer were conditions, the Federal Circuit explained:

The Artistic License states on its face that the document creates conditions: The intent of this document is to state the conditions under which a Package may be copied. … The Artistic License also uses the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted “provided that” the conditions are met. Under California contract law, “provided that” typically denotes a condition.…

The conditions set forth in the Artistic License are vital to enable the copyright holder to retain the ability to benefit from the work of downstream users. By requiring that users who modify or distribute the copyrighted material retain the reference to the original source files, downstream users are directed to Jacobsen’s website.…

Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.

In response to the Jacobsen v. Katzer ruling, Creative Commons founder Lawrence Lessig said, “this is huge.”

To learn more about Victoria Hall and her intellectual property law practice, visit http://www.vkhall-law.com/

To learn more about the Java Model Railroad Interface, please go to: http://jmri.sourceforge.net/

George Clinton,
Parliament Funkadelic

Music genius George Clinton has for decades been known as the Godfather of Funk—a mix of soul, jazz, R&B, and psychedelic rock. Beginning in music as a teenager singing doo wop, Clinton was influenced early by singer Frankie Lymon and became a songwriter on the Motown label with the hope of being a featured artist. Unable to fit into the Motown mold as an artist, Clinton did what all innovators do: he created—his own unique blend of music that was shaped by an array of masters such as Jimi Hendrix, Smokey Robinson, James Brown, Sly and the Family Stone, and others. Clinton has had hits for more than 40 years and has never lost his groove. He and his band Parliament Funkadelic were inducted into the Rock and Roll Hall of Fame in 1997. George Clinton has permanently tilted the music landscape with his uniquely funky sound, lyrics, and rhythm.

His statement, “Funk is the DNA of hip-hop” is indisputably true, for young rap and hip-hop disciples such as Dr. Dre, Snoop Dogg, and the late Tupac Shakur have used his musical sound to formulate their works. The compositions that have proved been most popular with hip-hop and rap acts are "One Nation Under a Groove," "Freak of the Week" and "(Not Just) Knee Deep."

The legislation that Clinton mentions in our interview is H.R. 848, the Performance Rights Act. This bill, introduced in the 111th Congress by Rep. John Conyers (D-MI) and co-sponsored by Sheila Jackson-Lee (D-TX), would require radio stations to pay royalties to performers of sound recordings for radio play. The bill was approved by the House Judiciary Committee on May 13, 2009. The Senate counterpart to H.R. 848 is S. 379, introduced by Sen. Patrick Leahy (D-VT).

The recent judicial success that George Clinton cites in the interview is Bridgeport Music Inc. v.  UMG Recordings Inc., 585 F.3d 267 (6th Cir. 2009). There, the court agreed with a jury verdict that the song “D.O.G. in Me” by UMG and Universal Music Group Inc. infringed Bridgeport’s copyright on Clinton’s “Atomic Dog” by using the well-known phrase “Bow wow wow, yippie yo, yippie yea.” However, Clinton himself has battled Bridgeport to recover song copyrights that he transferred decades ago.

Intellirights would like to thank George Clinton and his management and tour teams, especially Carlon Scott and Alan Cann. We also thank the staff at the 9:30 Club in Washington, D.C.

For more information on George Clinton, please go to: www.georgeclinton.com

Dr. David Stork,
Chief Scientist, Ricoh Innovations

To define creative genius, one really needs to look no further than Dr. David G. Stork, chief scientist of Ricoh Innovations, Menlo Park, California. This IP Visionary has 40 patents ranging from machine learning to digital imaging to optics and image processing. With a B.S. in physics from the Massachusetts Institute of Technology, and an M.S. and PhD in physics from the University of Maryland, College Park, Dr. Stork has also taught and lectured in a wide array of areas, including: mathematics, physics, electrical engineering, neuroscience, artificial intelligence, computer science, statistics, and art and art history.

Some of Dr. Stork’s books include HAL's Legacy: 2001's Computer as Dream and Reality(MIT Press, 1996); Computer image Analysis in the Study of Art (SPIE, 2008); Speechreading by Humans and Machines: Models, Systems and Applications (Springer-Verlag, 1996); and The Physics of Sound (Prentice-Hall, Inc. 1982; 2nd edition, 1994; 3rd edition, 2004)

Dr. Stork is a named inventor on the following U.S. patents:

1. 5,157,275 "Circuit employing logical gates for calculating activation function derivatives on stochastically-encoded signals," David G. Stork and Ronald C. Keesing

2. 5,245,696 "Evolution and learning in neural networks: the number and distribution of learning trials affect the rate of evolution," David G. Stork and Ronald C. Keesing

3. 5,268,684 "Apparatus for a neural network one-out-of-N encoder/decoder," James Allen and David G. Stork

4. 5,337,362 "Method and apparatus for placing data onto plain paper," Michael J. Gormish, Mark Peairs and David G. Stork

5. 5,412,670 "N-bit parity neural network encoder," David G. Stork and James Allen

6. 5,471,207 "Compression of palettized images and binarization for bitwise coding of M-ary alphabets," Ahmad Zandi, David G. Stork and James Allen

7. 5,497,236 "Method and apparatus for distortion correction of scanned images," Gregory J. Wolff and David G. Stork

8. 5,586,215 "Neural network acoustic and visual speech recognition system," David G. Stork, Gregory J. Wolff and Earl I. Levine

9. 5,588,090 "Signal processing apparatus," Toshiyuki Furuta, Shuji Motomura, Takahiro Watanabe and David G. Stork

10. 5,621,858 "Neural network acoustic and visual speech recognition system training method and apparatus," David G. Stork and Gregory J. Wolff

11. 5,636,326 "Method for operating an optimal weight pruning apparatus for designing artificial neural networks," David G. Stork and Babak Hassibi

12. 5,642,341 "CD ROM apparatus for improved tracking and signal sensing," David G. Stork

13. 5,671,282 "Method and apparatus for document verification and tracking," Gregory J. Wolff, David G. Stork and K. Venkatesh Prasad

14. 5,680,481 "Facial feature extraction method and apparatus for a neural network acoustic and visual speech recognition system," K. Venkatesh Prasad and David G. Stork

15. 5,692,048 "Method and apparatus for sending secure facsimile transmissions and certified facsimile transmissions," Michael J. Gormish, Gregory J. Wolff, David G. Stork, Peter E. Hart and Yoshio Kawajiri

16. 5,694,228 "Document image processor with defect detection," Mark Peairs, Mark Cullen, James Allen and David G. Stork

17. 5,710,816 "Method and apparatus for ensuring receipt of voicemail messages," David G. Stork and Nancy P. Stork

18. 5,771,306 "Method and apparatus for extracting speech related facial features for use in speech recognition systems," David G. Stork, Gregory J. Wolff and Earl Isaac Levine

19. 5,781,914 "Converting documents, with links to other electronic information, between hardcopy and electronic formats," David G. Stork and K. Venkatesh Prasad

20. 5,806,036 "Speechreading using facial feature parameters from a non-direct frontal view of the speaker," David G. Stork

21. 5,818,966 "Method and apparatus for encoding color information on a monochrome document," K. Venkatesh Prasad and David G. Stork

22. 5,963,930 "Apparatus and method for enhancing transfer function non-linearities in pulse frequency encoded neurons," David G. Stork and Ronald Craig Keesing

23. 6,073,118 "Method for performing secure financial transactions using facsimile transmissions," Michael J. Gormish, Peter E. Hart, David G. Stork and Gregory J. Wolff

24. 6,081,261 "Manual entry interactive paper and electronic document handling and processing system," Gregory J. Wolff and David G. Stork

25. 6,104,380 "Direct pointing apparatus for digital displays," David G. Stork and Gregory J. Wolff

26. 6,181,329 "Method and apparatus for tracking a hand-held writing instrument with multiple sensors that are calibrated by placing the writing instrument in predetermined positions with respect to the writing surface," David G. Stork, Michael Angelo and Gregory J. Wolff

27. 6,201,903 "Method and apparatus for pen-based faxing," Gregory J. Wolff, David G. Stork and Michael Angelo

28. 6,212,296 "Method and apparatus for transforming sensor signals into graphical images," David G. Stork, Michael Angelo and Gregory J. Wolff

29.  6,457,026 "System to facilitate reading a document," Jamey Graham and David G. Stork

30. 6,492,981 "Calibration of a system for tracking a writing instrument with multiple sensors," David G. Stork, Michael Angelo and Gregory J. Wolff

31. 6,574,375 "Method for detecting inverted text images on a digital scanning device," John F. Cullen, David G. Stork, Peter Hart and Koichi Ejiri

32. 6,804,659 "Content based web advertising," Jamey Graham and David G. Stork

33. 6,879,967 "Method and apparatus for open data collection," David G. Stork

34. 7,124,093 "Method, system and computer code for content based web advertising," Jamey Graham, David G. Stork and Chuck Lam

35. 7,120,699 "Document controlled workflow systems and methods," David G. Stork and Rob van Glabbeek

36. 7,292,728 "A block quantization method for color halftoning," Maya Rani Gupta, Michael J. Gormish, Kathrin Berkner and David G. Stork

37. 7,356,611 "Method and apparatus for permissions based active document workflow," David G. Stork, Rob Jan van Glabbeek and Stephen R. Savitzky

38. 7,395,501 "Techniques for annotating portions of a document relevant to concepts of interest," David G. Stork and Jamey Graham

39. 7,616,841 "End-to-end design of electro-optic imaging systems," M. Dirk Robinson and David G. Stork

40. 7,692,709 "End-to-end design of electro-optic imaging systems with adjustable optical cutoff frequency," M. Dirk Robinson and David G. Stork

Intellirights sincerely thanks Dr. Stork and Ricoh Innovations for this opportunity to discuss his vast works and share his insight.

For more information on Dr. David Stork and Rich Innovations, please go to http://rii.ricoh.com/~stork/

Mark Heesen
President, National Venture Capital Association

Mark Heesen invited Intellirights in to discuss the venture capital landscape during these tough economic times. Companies that received their start with venture capital dollars include: Genentech, Amgen, Intel, Cisco, Google, Medtronic, Microsoft, and eBay. NVCA represents member companies that cover an array of technological areas—life sciences, biotechnology, information technology, medical devices, and others. Heesen talked about providing the economic stability to allow the next Genentech, Google, or Intel to grow. He was clear in pointing out that venture capitalists are still ready to invest in new technologies and new industries, but that President Obama and the Congress need to focus on jobs to keep these emerging companies moving forward and America growing.

NVCA’s Kelly Slone shared her insights on patent reform. She stressed that venture capitalists are willing to bear the risk of investing in small start-ups, but that they want to have confidence in the patents upon which many of these companies are based. Slone said that the main point of contention that the NVCA has with the current legislation is that it would allow virtually endless challenges to issued patents, thus placing patents in limbo and undermining investor confidence.  Any reform that is enacted by the 111th Congress should instill certainty and predictability in issued patents, Slone insisted.

For more information on the National Venture Capital Association, please go to: http://www.nvca.org

Anne Pellicciotto
Photographer

Intellirights spoke with Anne Pellicciotto about her series of photographs from her travels to Brazil. Anne’s works celebrate the raw, natural beauty of Brazil and its people, and her most poignant statement of that beauty is her photograph “Canoa Kids.” This photograph won the Washington Post Travel Photo Contest for 2006 and was on display during our filming at the Grill From Ipanema restaurant in the Adams-Morgan area of Washington. We thank Anne for inviting us to see the world through her lens and look forward to hearing more from her in the near future.

To see Anne Pellicciotto’s fine photographic works, please go to http://www.anneseye.com.

Corey Smith
Singer & Songwriter

Intellirights had the honor and privilege of meeting with singer and songwriter Corey Smith at Ram’s Head Live in Baltimore, Maryland.  Corey performed there on November 20 and gave us some time to talk about songwriting, his fan base, his love of the guitar, and the message of his music. Corey is indeed a rare performer, writing his own music and speaking to fans from his soul. He is honest and straight-talking, serious about his music. He keeps a grueling tour schedule and has hit the charts with a hot new album, “Keeping Up With the Joneses,” which debuted November 17 at #1 on the ITunes singer/songwriter list.  We appreciate the opportunity and wish Corey and his team all the best. We send special thanks to Ram’s Head Live and Martin Winsch at Mountain Management.

To learn more about Corey Smith, please go to http://www.coreysmith.com.

Joe Ebaugh
University of Maryland

Joe Ebaugh is the director of trademark licensing at the University of Maryland. He has a Bachelor of Science degree from Pennsylvania State University.

Intellirights thanks Ebaugh for providing insight on the University of Maryland’s exclusive licensing arrangement with Under Armour Inc., a company started by university alumnus Kevin Plank.

The legal case that Ebaugh mentions in his interview with Intellirights is Board of Supervisors of the Louisiana State University v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008).There, the U.S. Court of Appeals for the Fifth Circuit ruled that the Louisiana State University, the University of Oklahoma, the University of Southern California, and Ohio State University have color schemes with secondary meaning, and that the defendants’ sale of t-shirts with similar color schemes at events where the universities’ licensed products were sold created likely confusion among consumers as to source, affiliation, or sponsorship. Accordingly, the Fifth Circuit affirmed a summary judgment of trademark infringement in favor of the universities.

For more information on trademark licensing at the University of Maryland, please go to this link.

To learn more about Under Armour Inc., please go to http://www.underarmour.com/.

Jon Dudas
Foley & Lardner, Washington, D.C.

Jon Dudas, partner at Foley & Lardner, Washington, D.C., served as Under Secretary of Commerce and Director of the United States Patent and Trademark Office from July 2004 to January 2009 under former President George W. Bush. Prior to joining the Bush Administration, he served years as Counsel to the Subcommittee on Courts and Intellectual Property, and Staff Director and Deputy General Counsel for the House Committee on the Judiciary, working on key IP legislation, including the 1999 American Inventors Protection Act and the Digital Millennium Copyright Act.

As Dudas notes in his discussion, Senate Bill S. 515, as approved by the Senate Judiciary Committee April 2, 2009, proposes many changes to U.S. patent law, including: harmonizing U.S. patent law with international patent law by moving from a first-to-invent system of priority to a first-inventor-to-file system; allowing for several forms of post-grant review; removing the applicant’s failure to include best mode as a ground for invalidating a patent; and adopting a standard that requires willful infringement for purposes of enhanced damages to be proven by clear and convincing that the infringer acted “objectively reckless.”

The last action on the House’s version of the “Patent Reform Act of 2009,” H.R. 1260, was an April 30 hearing before the House Judiciary Committee.

For more information on Jon Dudas, go to Foley & Lardner’s website at go to the firm’s website at http://www.foley.com/

Read the version of Senate Bill S. 515 reported on April 2, 2009.

Read H.R. 1260 in its introduced form.

Dr. Finn Looks at the Bell-Gray Controversy

Dr. Bernard Finn is Curator Emeritus of the Electricity Collections at the Smithsonian Institution’s National Museum of American History. In his article, “Bell and Gray, Just a Coincidence?,” Technology and Culture, Vol. 50, No. 1, January 2009, pp. 193-201, Dr. Finn dispels the suggestion by some writers that Alexander Graham Bell is not the true inventor of the telephone. He points out that many of these commentators fail to recognize that the liquid transmitter device at the center of the Bell-Gray controversy was not commercially practicable, and—importantly—not the telephone. Still, Dr. Finn encourages those interested in this fascinating chapter of American inventive history to read the works of other authors in forming their own conclusions on this issue.

Some of the works that Dr. Finn cites are: “Elisha Gray and the Telephone: On the Disadvantages of Being an Expert” by David Hounshell; The Telephone Gambit by Seth Shulman; The Telephone Patent Conspiracy of 1876 by A. Edward Evenson; The Gray Matter: The Forgotten Story of the Telephone by Burton Baker; and Reluctant Genius: Alexander Graham Bell and the Passion for Invention by Charlotte Gray.

Dr. Rouget “Ric” Henschel
Foley & Lardner, Washington, D.C.

Dr. Rouget F. (Ric) Henschel is a partner with Foley & Lardner LLP and vice chair of the firm’s Chemical & Pharmaceutical Practice. He is also a member of the firm’s Biotechnology & Pharmaceutical, Intellectual Property Litigation and International Practices and the Life Sciences Industry Team.  He graduated from Georgetown University Law Center (J.D., 1999), City University of New York (Ph.D., organic chemistry, 1990), the City College of New York (B.S., chemistry, 1981), and was a law clerk for Judge Randall R. Rader of the U.S. Court of Appeals for the Federal Circuit.

Henschel sat down with us to discuss his disappointment with the Federal Circuit’s April ruling in In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009). In this case, the appellate court affirmed an obviousness rejection by the Board of Patent Appeals and Interferences of claims submitted by Marek Kubin and Raymond Goodwin covering DNA molecules encoding a protein known as natural killer (NK) cell activation inducing ligand (NAIL).

The Federal Circuit concluded that the claimed methodology of isolating NAIL cDNA was essentially the same as the prior art given the known properties of these proteins, and thus “obvious to try” in light of the Supreme Court’s ruling in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). In doing so, the court rejected the continued application of In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995), a biotech case which found “obvious to try” an inappropriate test for obviousness. Henschel, who represented amicus curiae Biotechnology Industry Organization (BIO) in this case, insists that KSR, which involved a mechanical pedal control for an automobile, is misapplied in this context, where the biotechnology inventions are much more complex and unpredictable. He also notes in the interview that, in focusing on how the applicants arrived at the claimed invention, In re Kubin ruling is in direct conflict with 35 U.S.C.§103(a), which states that “[p]atentability shall not be negatived by the manner in which the invention was made.” He points out that In re Kubin this case represents a step back for the biotech industry, and that some issues raised in this case should be addressed by the Federal Circuit en banc.

Henschel also discusses how the defense of inequitable conduct has become a scourge in patent law by adding to litigation costs and placing more patents at risk. He notes that, despite the high bar for proving inequitable established in the en banc ruling of Kingsdown Med. Consultants Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988), recent cases have created confusion and uncertainty as to both the materiality and intent prongs. He notes that more clarity from the appellate court is needed in this area.

Read the In re Kubin opinion.
Read the KSR International Co. v. Teleflex Inc. opinion.
Read the In re Deuel opinion.

For more information on Ric Henschel and Foley & Lardner, go to the firm’s website at http://www.foley.com/.

For more information on BIO, go to http://www.bio.org/.

Professor Megan LaBelle
Catholic University’s Columbus School of Law

Among her many accomplishments, Professor Megan LaBelle served as law clerk for Judge Stephen S. Trott of the United States Court of Appeals for the Ninth Circuit, and for Judge Margaret M. Morrow of the United States District Court for the Central District of California. She also worked as a commercial litigator in private practice. LaBelle joined Catholic University’s faculty earlier this year.

For more information on Professor LaBelle and Catholic University’s Columbus School of Law, visit the school’s website at http://law.cua.edu/.

Andre Campbell

Andre Campbell is an incredibly talented comic book artist. Though legally blind, Andre has no trouble providing readers of all ages with truly heroic characters, compelling story lines, and beautiful art.

Andre tells us that he plans to attend the Pittsburgh Comic-Con on Sept. 11, 12, and 13 at the Monroeville Exposition Center, and the Baltimore Comic-Con on Oct. 11 and 12 at the Baltimore Convention Center.

For more information on Andre and his company, Heritage Comics HSQ, go to http://heritagehsq.tripod.com/

Tim Westergren's Vision

Tim Westergren, founder of Pandora.com, is our first visionary. Tim is a musician and inventor of a system (U.S. Patent No. 7,003,515) that analyzes a song’s characteristics and tries to match them with those of others. The result is Pandora.com, an online library where music lovers can make new discoveries and musicians can become known to wider audiences—and be paid royalties in the process. So, whether one likes jazz guitarist Pat Metheny, jazz trumpeter Miles Davis, country crooner Conway Twitty, or rocker Mick Jagger, Pandora can help to find more of what one wants to hear. With 30 million users, Tim and Pandora are changing the musical landscape. Their story started with a vision, and Intellirights is pleased to tell the world about it.

For more information on Tim Westergren and Pandora, visit Pandora.com.

Dr. Andrew Bristol

Neogenix Oncology has a patent (7,314,622) relating to recombinant monoclonal antibodies and corresponding antigens for colon and pancreatic cancers. Dr. Andrew Bristol, one of the co-inventors, is the company’s vice president of research and development. Dr. Bristol received his B.A. in molecular biology from the University of California at Berkeley and his Ph. D. in biochemistry from Tufts University.

To learn more about Dr. Bristol and Neogenix Oncology, please go to http://www.neogenixoncology.com/.
 


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