Weekly Data Privacy Alert – 19 September 2016

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Protection & Cybersecurity team. This week’s alert covers news from:

UK

  • Brexit Continues to Cast Shadows Over UK Future
  • ICO Fines Two Companies a Total of £100,000
  • Information Rights Tribunal Reasserts Importance of Communicating Breaches to the ICO

Germany

  • Bavarian Data Protection Authority Releases App Inspection Catalogue
  • Federal Ministry of the Interior Considers Extending Data Retention to Messenger Services
  • Voßhoff Criticizes Ministers of the Interior for Plans to Extend Data Retention
  • Berlin Data Protection Commissioner Criticizes State Use of “Silent SMS“

US

  • State AGs Weigh in on FCC’s Proposed Rule

For more information on any of these items, or data privacy issues generally, please feel free to call any of the following individuals:

Annette Demmel (Germany)

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

Technology Licensing: Some Strategic Thinking

Inventors and technology owners considering licensing their technology may want to read our guidance note: ‘Technology Licensing: Some Strategic Thinking’, which is available here.  Drafted with potential licensors in mind, the note explores some of the key issues around technology licensing (that is, licensing the IP rights subsisting in an inventive product or process in return for royalty income).  The note begins with a look at when licensing is likely to be the right business strategy.  It goes on to highlight 10 issues licensors should consider before embarking on a licensing programme. The details of technology licences do not usually come into the public domain and so this note aims to help licensors develop a clear IP exploitation strategy, to ensure they generate maximum revenue without being tied down in the long-term to unfavourable licence provisions.

For more information on leveraging IP rights to support business strategies and generate revenue, please feel free to call Carl Rohsler.

 

 

Weekly Data Privacy Alert – 30 August 2016

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Protection & Cybersecurity team. This week’s alert covers news from:

Germany

  • International Working Group Makes Recommendations for Privacy in Internet Telephony
  • Nordrhein-Westfalen Data Protection Commissioner Comments on Speed Check Services

US

  • EPIC Challenges New FAA Drone Rules
  • Software Manufacturer May Be Liable for Privacy Invasion Due to Use of Spyware

For more information on any of these items, or data privacy issues generally, please feel free to call any of the following individuals:

Caroline Egan (Birmingham)

Annette Demmel (Germany)

Francesca Fellowes (Leeds)

ITC Grants Exclusion Order Modification to Include Components Imported for Assembling the Infringing Device

In an opinion made public just prior to the Labor Day weekend, the ITC has granted the complainant’s request to modify its order excluding marine sonar imaging devices to cover components that are intended to be included in a fully-assembled (also referred to as fully “kitted”) infringing product after importation. Certain Marine Sonar Imaging Devices, Inv. No. 337-TA-921 (Modification Proceeding) (Comm’n Op., Aug. 29, 2016). The ITC rejected respondent’s arguments that the exclusion order covers only marine sonar devices and components that directly infringe the asserted claims, reasoning that respondent’s position was contrary to established ITC precedent of fashioning exclusion orders “that cover not only the specific device or product found to be infringing, but also infringing redesigns and components of the infringing product where importation of such components might enable a respondent to circumvent the order.” According to the ITC, its prior finding of no indirect infringement applied only to accused components that were to be sold individually as standalone products, and not to components imported “for the purpose of kitting an infringing device.”

The ITC’s decision is interesting in a number of respects. First, exclusion order modifications are rare. Second, the ITC issued its ruling despite a pending appeal in the Federal Circuit, which the ITC noted “typically divests the Commission of jurisdiction” but not its “jurisdiction to ensure that the remedial orders it has issued are properly executed.” Finally, the decision to exclude components that the ITC found to be non-infringing when sold as standalone products appears to raise questions concerning the scope of the ITC’s enforcement authority similar to those that are currently the subject of a cert petition to the U.S. Supreme Court in Delorme Publ’g Co. v. ITC, 805 F.3d 1328 (Fed. Cir. 2015). In that case, the Federal Circuit affirmed the ITC’s enforcement of a consent order and imposed $6 million in penalties against a respondent that had imported components for use in the infringing products even though an ITC administrative law judge found the components to be non-infringing. At a minimum, the decision will likely add to the drumbeat of criticism over the ITC’s jurisdiction and remedial powers that the divided en banc ruling in Suprema v. ITC, 796 F.3d 1338 (Fed. Cir. 2015) (affirming the ITC’s jurisdiction over induced infringement) has done little to quiet.

Weekly Data Privacy Alert – 22 August 2016

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Protection & Cybersecurity team. This week’s alert covers news from:

EU

  • EU-US Privacy Shield: Three Weeks On

Germany

  • Bavarian Government Adopts New Security Concept
  • Federal Labour Court: Employee Right to Inspection

For more information on any of these items, or data privacy issues generally, please feel free to call any of the following individuals:

Annette Demmel (Germany)

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

ITC ALJ Shaw Finds Claims Patent-Ineligible After Fast-Track Hearing On Section 101 Issues

In the first-ever hearing on a patent issue under the ITC’s Pilot Program for early case disposition, ALJ Shaw has found that the asserted claims of the sole patent-in-suit fail to recite patent-eligible subject matter under 35 U.S.C. § 101. As we reported in a previous blog post, the ITC, pursuant to the Pilot Program, had ordered Judge Shaw to hold an expedited hearing on patent eligibility in Certain Portable Electronic Devices and Components Thereof, Inv. No. 337-TA-994. The case is significant both for its use of the Pilot Program and as continuing a growing trend in Section 337 investigations to dispose of cases on patent ineligibility grounds.

Please read our full blog on The Trade Practitioner for further detail.

ITC Vacates Suspension Of Carbon And Alloy Steel Products Investigation

As we reported in a previous blog, in an unusual development, USITC ALJ Lord determined to suspend the investigation of the Chinese steel industry in Certain Carbon and Alloy Steel Products, Inv. No. 337-TA-1002, on the grounds that its antitrust and false designation of origin claims “come[] at least ‘in part’ within the purview of the antidumping and countervailing duty laws.” On review of the ALJ’s decision, the ITC has determined to vacate the suspension and continue the investigation, finding any overlap merely “hypothetical.” Comm’n Op. at 13.

Please read our full blog on The Trade Practitioner for further detail.

ITC Opinion Explaining Reasons It Deferred to PTAB Unpatentability Ruling Provides Grist for Future Challenges

In Certain Three-Dimensional Cinema Systems and Components Thereof, Inv. No. 337-TA-939, the ITC for the first time suspended enforcement of a remedial order in view of a Patent Trial and Appeal Board Final Written Decision of unpatentability after inter partes review even though the ITC itself had found the patent valid and infringed. The ITC’s recently-issued opinion explaining the basis for the suspension sheds light on the potential impact of post-grant review proceedings on future Section 337 cases.

In particular, the ITC does not have a favorable view of issue preclusion (i.e. collateral estoppel) arguments based on IPR rulings. While it found the accused infringer (respondent) had not shown that the necessary issue preclusion prerequisites were met, the ITC also recited the “well-known” exception to issue preclusion where different burdens of persuasion apply. The ITC stated that the respondent had not adequately addressed the applicability of the exception in view of the fact that a PTAB petitioner has a lesser burden than a respondent challenging patent validity before the ITC.

The ITC also rejected respondent’s arguments based on the effect of the PTAB’s findings on the merits of the ITC case as unpersuasive because many findings “were made in the context of the PTAB’s analysis and denial of [the patent owner’s] motion to amend,” where the burden is on the patent owner to prove patentability. The Commission also noted that “the evidence and arguments considered by both tribunals do not appear to be entirely the same,” including evidence that the patent owner’s “domestic industry products practice at least one asserted claim” of the patent at issue in the PTAB proceeding, which “supports a different conclusion than the PTAB with respect to secondary considerations.”

Despite rejecting the arguments for the preclusive effect or persuasiveness of the PTAB’s IPR ruling, the ITC nevertheless determined to suspend the remedy based on its “broad discretion in selecting the form, scope and extent of the remedy.” The ITC noted that discretionary suspension was warranted in light of the “advanced posture of the IPR proceeding” and because the suspension would have no practical effect given that all of the products would still be subject to exclusion based on the ITC’s violation finding with respect to two other patents.

The ITC’s reliance on its remedial discretion rather than on issue preclusion or other legal doctrines makes its holding less significant for future cases than it otherwise might have been. Nevertheless, certain dicta in the opinion may have more significance than the holding. First, the opinion throws cold water on the possibility of staying an ITC investigation based on a parallel IPR proceeding in the PTAB, noting “the statutory mandate to complete section 337 investigations expeditiously.” Second, the opinion leaves open the option to “take appropriate” action upon conclusion of any appeal. The opinion’s recitation of the Federal Circuit’s holding in Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330 (Fed. Cir. 2013) that there is no distinction in the effect on a litigation “between a final, affirmed court decision determining invalidity and a final, affirmed PTO decision determining invalidity,” followed by reference to the ITC’s own practice of modifying remedial orders after invalidity holdings by district courts, signals that the Commission may ultimately modify its remedial orders in this and potentially other investigations in deference to an affirmed IPR decision. If so, IPRs may take on increased importance as a strategy for parrying ITC remedial orders.

Weekly Data Privacy Alert – 15 August 2016

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Protection & Cybersecurity team. This week’s alert covers news from:

UK

  • The ICO Announces the UK is Well-equipped to Protect Data After Brexit
  • The ICO Launches Online Helpline

US

  • Pokémon GO Raises Data Privacy Concerns
  • AIG Launches Cyber Policy

For more information on any of these items, or data privacy issues generally, please feel free to call any of the following individuals:

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

Colin Jennings (Cleveland)

ITC’S Bow To PTAB’S Invalidity Ruling Adds New Dimension To Section 337 Investigations

In a recent decision in Certain Three-Dimensional Cinema Systems and Components Thereof, Inv. No. 337-TA-939 (2016), the ITC has for the first time suspended enforcement of remedial orders in view of a Patent Trial and Appeal Board Final Written Decision of patent invalidity after inter partes review.

Not surprisingly, the suspension is only effective as to the patent that was the subject of the IPR proceeding at the Patent Office.  Because two other patents were found by the ITC to be valid and infringed, the suspension appears to have no practical effect on the exclusion of the accused products in this case.  However, the decision is still significant, because the ITC rarely suspends enforcement of its remedies for any reason, let alone pending review of decisions of another agency.  In Certain Composite Wear Components, Inv. No. 337-TA-644 (2009), the ITC temporarily suspended its remedies after an invalidity ruling, but that ruling had been made by a district court.

Because the Commission’s full opinion has not yet issued, and the Commission’s reasoning is not provided in the Notice, it is difficult to gauge the potential impact of the ruling.  Nevertheless, the decision seems likely to lead to suspension requests by litigants in other ITC cases presenting similar circumstances.  In light of the popularity and speed of post-grant review proceedings and their high rate of invalidity findings, the decision’s ultimate impact on Section 337 litigation is potentially significant.

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