WP29 Provides Guidance on Handling Complaints Under EU-US Privacy Shield 

European Union flag against European ParliamentOn February 21, 2017, the Article 29 Working Party (“WP29”) published a “Rules of Procedure for the ‘Informal Panel of EU DPAs’ According to the EU-US Privacy Shield” and a “Complaint Form for Submitting Commercial Related Complaints to EU DPAs.” Both documents also reference the not yet effective General Data Protection Regulation (“GDPR”). The publication of these documents indicates the EU regulators are preparing for enforcement. For those organizations that certified by September 30, 2016 to take advantage of the nine-month grace period, this serves as a reminder that enforcement of the Privacy Shield’s Onward Transfer Principle is just a couple months away.   Thus, if you have not made the necessary changes to your agreements involving EU data transfers yet, you should make sure to address this issue in the now before the grace period ends on June 30, 2017. Continue Reading

Does A Recent Cert Grant Open A New Front In the Patent Venue War?

Broad patent venue rules allowing corporations to be sued for patent infringement almost anywhere are under siege both in Congress and in the courts.  Yet, a non-patent case that was recently granted certiorari by the Supreme Court, although not widely noted in intellectual property law circles, may provide another potential front in this ongoing battle.

As we reported in a prior blog, at least two bills were introduced in the last session of Congress that would have restricted patent cases to districts where the defendant (1) is incorporated, (2) has its principal place of business, or (3) has a physical facility performing manufacturing or research and development of an accused product.  See “Venue Equity and Non-Uniformity Elimination Act” (S. 2733); “Innovation Act” (H.R. 9).  Then, on December 14, 2016, in In re TC Heartland LLC, the Supreme Court agreed to hear a challenge to the Federal Circuit’s 25-year old precedent, which holds that venue in a patent case is not limited to judicial districts in which the defendant has an established place of business but rather is proper in any district where an entity is subject to a court’s personal jurisdiction.  VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990).  Other Federal Circuit precedent holds that such jurisdiction exists in any judicial district where a defendant purposefully shipped accused products through an established distribution channel and the claim arises out of those activities.  Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1571 (Fed. Cir. 1994).  In combination, these two decisions essentially guarantee that patent suits can be brought against most corporations almost anywhere in the United States.

While the Supreme Court’s decision to hear TC Heartland’s case is widely thought to spell certain change in patent venue law, the recent certiorari grant in Bristol-Myers Squibb Co. v. Superior Court of California, San Francisco County (No. 16-466) offers another possibility for change.  Bristol-Myers is a products liability case involving numerous plaintiffs who brought suit in California over alleged adverse consequences from a prescription drug.  The Supreme Court of California, in a 4-3 decision, affirmed the lower court’s rejection of the drug company’s challenge to personal jurisdiction that the non-California plaintiffs’ claims did not “arise out of or relate to” the drug company’s contacts with California.  The dissenting opinion argued that the majority’s minimization of how related a plaintiff’s claims must be to the defendants contacts with the forum state “expands specific jurisdiction to the point that, for a large category of defendants, it becomes indistinguishable from general jurisdiction[,]” i.e., jurisdiction over controversies unrelated to defendant’s contacts with the forum state based on the sheer extensiveness of the defendant’s contacts.  An amicus brief in support of Bristol-Myers’ cert petition filed by the U.S. Chamber of Commerce and the American Tort Reform Association contended that the California Supreme Court’s holding “would impose unfair burdens on businesses, [and] permit forum-shopping that undermines the integrity of the judicial system[.]”

Based on the cert grant, the U.S. Supreme Court now appears set to decide when a claim sufficiently “arises out of or relates to” a defendant’s contacts with the forum state.  Although Bristol-Myers is not a patent case, it involves the same specific jurisdiction criteria that the Federal Circuit has found satisfied in patent cases by product shipments into a forum.  Therefore, it is possible that a Supreme Court decision that tightens the nexus between the claims and the defendant’s acts that is required to establish specific personal jurisdiction may curb patent owners’ abilities to bring suit in as wide array of fora as is possible under current Federal Circuit precedent.

Weekly Data Privacy Alert – 13 February 2017

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

EU

  • Cloud Infrastructure Services Providers in Europe Establishes New Code of Conduct
  • European Data Protection Supervisor Sets Out Priorities for 2017

Germany

  • Data Protection Commissioner of Niedersachsen Criticises Use of Bodycams by the Police
  • Federal Data Protection Commissioner Comments on Annual “Safer Internet Day”

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)

Online adverts promoting unhealthy foods to kids banned in the UK

From 1 July 2017, non-broadcast adverts for high fat, salt or sugar (HFSS) foods aimed at children will be banned in the UK. The ban is a response to concern about the escalating problem of childhood obesity. Current estimates are that a third of children in the UK are obese.

The ban will be introduced by an amendment to the CAP Code. From 1 July, adverts that directly or indirectly promote a HFSS product will not be allowed to appear in any non-broadcast children’s media.  This covers magazines, cinema, websites, video-sharing sites, advergames and social media platforms explicitly directed at, or with content strongly oriented towards, children under the age of 16.

A similar ban on HFSS adverts is already in place for broadcast advertising, including television adverts. The extension of the ban to the non-broadcast environment is an attempt to track with the changing media habits of children.  Research by OFCOM found that children aged 5-15 years spend around 15 hours each week online, now significantly exceeding the time spent watching television.

The ban extends beyond media specifically aimed at children. HFSS adverts will also be banned in non-broadcast media which is not specifically targeted at under 16s but where children make up more than 25% of the audience.  In addition, to minimise the appeal of permitted HFSS adverts (those appearing in non-broadcast media primarily aimed at adults), advertisers will not be allowed to use promotions, licensed characters (a Disney Princess, for example) or any celebrities popular with children.

The ban creates some tricky areas for advertisers to negotiate. For example, what will amount to an indirect promotion of an HFSS product?  Also, which HFSS foods fall within the ban?  The Committee of Advertising Practice (CAP) has said that the Department of Health nutrient profiling model should be used to classify which products are HFSS. This will require advertisers to make a careful assessment of the nutritional composition of food products to avoid falling foul of the ban, particularly where the product is right on the line between permitted and banned.

Potentially more difficult is assessing when children make up more than 25% of the audience for non-broadcast media which is not necessarily targeted at them. What audience data should be used?  CAP has said that there is no one method. Advertisers may use industry standard audience measurement data or their own data.  But whatever data is used, CAP expects advertisers to make a case that they have targeted their adverts responsibly and complied with the rules.  CAP advocates a cautionary approach – if in doubt about the audience, don’t place the HFSS advert there.

CAP expects the new rules to lead to a major reduction in the number of adverts for HFSS foods being seen by children. This change in advertising practice runs in parallel with initiatives outside the advertising world, such as the requirement for a nutrition declaration on most pre-packed food, introduced in December 2016. CAP will produce guidance for advertisers on working within the new rules.  This guidance is expected in the very near future.

Note that the data on childhood obesity and the time spent by children online was provided by CAP. More information is available here

PRIOR ART SEARCHING BEFORE PATENT FILING CAN SAVE BOTH TIME AND MONEY – Judicious Budgeting Decisions for Patent Portfolio Owners

Since US patent law switched from a first-to-invent­ to first-to-file system, some patent applicants have been racing to the PTO, concerned that a competitor might first file an application potentially covering the same invention. In their haste, these patent applicants may file quickly-prepared provisional applications that adequately describe the invention but that fail to articulate why the invention is novel over the prior art or, still worse, fail to highlight the significance of the differences between the invention and the prior art. It is imperative to know the prior art before filing a patent application to avoid these pitfalls.

The recent case MPHJ Tech v. Ricoh (Fed. Cir. 2017)[16-1243-opinion-2-9-2017-11] is illustrative of the avoidable pitfalls a quickly-prepared provisional application can generate. The court instructs that a “provisional application can contribute to understanding the claims…[and that in] this case, it is the deletion from the [provisional]… that contributes understanding of the intended scope of the final application.” The patentee was unsuccessful in arguing for a narrow claim construction to avoid a prior art reference because its provisional patent application was drafted unnecessarily broadly, ostensibly without consideration of the prior art that the patentee was unable to overcome. Continue Reading

Weekly Data Privacy Alert – 6 February 2017

Please click here to read the latest data privacy alert from the Squire Patton Boggs Data Protection and Cybersecurity team. This week’s alert covers news from Germany, the UK and the US.

Germany

  • Federal Ministry of Transport and Digital Infrastructure Adopts New Draft Regulation on the Use of Drones
  • Federal Data Protection Commissioner: National Amendment and Implementation of the GDPR Must Be Improved
  • Bavarian Data Protection Commissioner Presents Activity Report for 2015/2016
  • German Data Protection Commissioners Celebrate the 11th European Data Protection Day

UK

  • Business Owners With CCTV Could Be Fined If They Fail to Register With the ICO
  • ICO Creates International Strategy and Intelligence Department

US

  • US House of Representatives Passes Email Privacy Act
  • Department of Justice Publishes “Covered Countries” Under Judicial Redress Act

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)

Philip Zender (San Francisco)

Weekly Data Privacy Alert – 30 January 2017

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

France

  • Digital Republic Bill Brings Material Changes to the Framework Regulating the French Telecommunications Industry
  • CNIL Publishes Guidelines on Password Protection

UK

  • ICO Warns Against Taking Clients’ Personal Information to a New Company
  • High Court Rules on Legal Professional Privilege Exemption to Subject Access Request
  • A Claim Under the Data Protection Act May Be Brought Alongside a Defamation Claim
  • Minister for Digital and Culture Clarifies the UK’s Approach to the GDPR

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

Stephanie Faber (France)

Caroline Egan (Birmingham)

Francesca Fellowes (Leeds)

USPTO Considers Terminating Accelerated Examination Program

In 2006, the USPTO implemented the accelerated examination program that allows a patent application to be examined more quickly out of turn.  The program requires the applicant to file a petition to make special with an appropriate showing.  Now, the USPTO has published a ‘Request for Comments Regarding the Continuation of the Accelerated Examination Program’.

The USPTO is considering the termination of the accelerated examination program because the number of requests has been too low to justify the cost of continuing the program. The lack of popularity of the accelerated examination program is mainly due to the introduction of the prioritized examination program (referred to as ‘Track One’) in 2011.  The Track One program was provided for in the America Invents Act (AIA) and also provides the ability to advance an application out of turn, but without some of the burdensome requirements of the accelerated examination program.  Since its introduction, requests for Track One have approached 10,000 annually compared with fewer than 250 applications accepted into the accelerated examination program each year.

As a result, it is unclear whether the accelerated examination program continues to provide an adequate benefit to the public to justify its cost of implementation.  The USPTO has opened the period for comment on this issue through March 13, 2017.

UK – Court rulings heighten the risk of employees inadvertently amending contracts

An anti-oral variation clause is drafted into most commercial agreements. Typically, this boilerplate clause will say that any changes to the terms of the contract must be agreed in writing and signed by all of the contracting parties.  The objective is to avoid the uncertainty, and potential for disputes, that would arise if the contract could be informally varied, either orally or by conduct.

However, a line of recent judgments has cast doubt on the effectiveness of these clauses. In each of these cases, the court found that the contract had been varied orally, or by conduct, despite the contract containing an anti-oral variation clause.  The courts acknowledged the value of anti-oral variation clauses in promoting certainty, but said that the courts should give primacy to the principle of party autonomy and this meant that the parties could not, by a term of the contract, fetter their future ability to amend it.

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Recent District Court reliance on Federal Circuit’s Enfish / McRO decisions may signify trend for Alice/Mayo patent eligibility test

In June 2014 the Supreme Court introduced the two-step Alice/Mayo test for patent eligibility, intended to exclude from patenting claims directed to ineligible abstract ideas under 35 USC 101.  Since that time, the Federal Circuit has issued numerous precedential opinions applying this test to software claims.  This body of law, however, has yet to provide a decisional mechanism beyond factual comparisons between a patent claim at issue with claims previously adjudicated under Alice/Mayo.  Eventually this unwieldy state of the law will evolve into something more manageable. In the meantime, district courts continue to struggle with applying the Alice/Mayo standard to software claims.  As expressed by Judge Gilliam of the Northern District of California, “[w]hile the Court is of the view that a more concrete standard for identifying abstract ideas would improve predictability and enable more efficient use of judicial and party resources, it will do its best to apply the current guidance.”

Enfish v. Microsoft Corp. and McRO v Bandai Namco Games America Inc. stand out from among the more recent Federal Circuit decisions applying the Alice/Mayo test to software claims.  These are the first decisions upholding the validity of software patent claims as not directed to a patent-ineligible abstract idea (prior decisions either held, or assumed, a software claim was directed to an abstract idea).  More importantly, though, the holdings in Enfish and McRO are based on a legal framework not so heavily dependent upon finding a factual similarity with a previously adjudicated patent claim before deciding whether the claim is patent eligible.  Instead, the eligibility determination is more grounded in a statement of law embodying generally-applicable principles concerning invention. For example, the panel in Enfish phrased the question of patent-eligibility this way:

“whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”

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