Punishing Culpable Infringement: Contribution and Indemnification in Co-Infringement Claims

By Luke MacDowall *

Henry Ford’s model of streamlined production through the specialization and division of labor revolutionized capitalist production forever. The full effect of it is being felt today with the increasing globalization of international commerce such that products are quite literally compilations of various parts produced in different parts of the world. This global-Fordist model has a unique impact on intellectual property disputes:  downstream manufacturers are at risk of intellectual property infringement claims even though the original infringing act occurred in upstream production.  In other words, a downstream manufacturer who incorporates (knowingly or not) an infringing gadget into its ultimate product faces possible infringement litigation. This risk is created due to the variety of claims expressly and impliedly created by the intellectual property statues that allow intellectual property owners to target actors all along the stream of commerce.

Facing this form of liability, many infringers have sought to shield themselves from these claims by seeking indemnification or at least contribution from co-infringers. However, neither federal common law nor the statutory patent scheme provides any cause of action for indemnification or contribution from co-infringers.

We will examine the Patent Act and its various statutory causes of actions that allow patentees to sue not only those directly responsible for infringement but also those who “induced” or “contributed” to the ultimate infringement. Continue reading »

Celebrating the IP Start-Up: JBIPL’s Symposium Tackles the Challenges of a Growing Industry in its Second Panel

By Tiffany R. Johnson *

On Friday, March 25th, the Journal of Business and Intellectual Property Law’s symposium tackled the hard-and-fast growing issues associated with “creative capital,” and topped off its energetic morning panel with Bob Young – the founder of two incredibly successful creative capital ventures, Red Hat and  Young’s address to a full crowd was not only inspiring because of his unique journey to success (often noting that his “ADD” prevented him from focusing on any one project for too long), but also because of his candor.  He opened to a crowd full of law students with the sentiment that he had some bad news for aspiring lawyers – the world does not revolve around us; and, especially for the IP start-up, it operates in spite of us. Continue reading »

Google’s Afraid Its Free Beer May Have a Price Tag

By Jonathan J. Ballerano *

The Free Software Foundation says that free software is about “liberty, not price” — more akin to “free speech” than “free beer.” In other words, free software is a matter of granting access to source code and allowing others to modify it as they see fit, rather than keeping it behind lock and key and granting only limited rights to execute a program.

Get off your pulpit and grab a Solo cup, because Google Inc. is making an unprecedented push for “free beer.” The most striking example of this initiative is Google’s Android, now the best-selling smartphone platform in the US, which is licensed free of charge. But “free beer,” unlike “free speech,” can be undermined by hidden costs: if software infringes an undiscovered patent, the patent holder may demand a royalty. Continue reading »

Presnell of Tengion, Inc. to Address Tension Between Venture Capital Markets and IP Law

Sharon Presnell

Sharon Presnell*

Accomplished scientist and medical industry research leader, Dr. Sharon Presnell will be speaking on campus at the Wake Forest University School of Law on Friday, March 25.  Hosted by the Wake Forest Journal of Business and Intellectual Property Law (JBIPL), Dr. Presnell will address intellectual property value capture in the research environment.

Dr. Presnell’s presence is part of the annual JBIPL Spring Symposium.  This year’s Symposium topic Creative Capital: Intellectual Property Creation & Venture Capital will feature keynote speaker Bob Young  (CEO & Founder of and Co-founder of Red Hat speaking) on “Open Versus Proprietary as Business Strategy,” and two panel discussions—“Financing the IP-Based Startup” and “Intellectual Property: Cradle to Grave.” Continue reading »

Shh!! It’s a Secret!: Coca-Cola’s Recipe Revealed?

By Tierryicah Mitchell *

Can it be?  Has Coca-Cola’s original recipe actually been uncovered after remaining secret for nearly 125 years?  On the February 11 broadcast of National Public Radio’s This American Life, the producers claimed to have discovered Coca-Cola’s heavily guarded secret formula.  “I am not kidding,” host Ira Glass stated at the beginning of the show.  “One of the most famously guarded trade secrets on the planet: I have it right here and I am going to read it to you.  I am going to read it to the world.”

According to Glass, one of the best-kept secrets had been hidden in plain view since February 18, 1979.  Glass spent the first half of the program explaining how he fortuitously came across the 32-year-old edition of the Atlanta-Journal Constitution, which had a picture of a page from a book of handwritten pharmacists’ recipes.  The producers explained that the photo was able to fly under the radar of the masses because no one realized that it was actually a handwritten copy of John Pemberton’s original recipe. Continue reading »

A Bow Tie Changes Standing Requirement in False Patent Marking Lawsuits

By Alayna R. Ness *

Law school makes you look at life differently.  Those seemingly innocuous incidents that other people don’t notice start to take on new meaning.  It starts with the inevitable joke as a 1L asking whether someone has been torted.  But then the inquiries become more sophisticated.  This summer I drove 2,500 miles across the country to get to Los Angeles for my internship.  As I entered the eighth and final state, California, I came upon the agricultural inspection checkpoint.  The car in front of me had California plates and was waived on through.  I was stopped and asked about my state of origin.  When I responded North Carolina, the agent questioned me about any fruits or vegetables I may be carrying and then asked me to open the trunk so she could see what was inside.  It was all over very quickly, and I continued on my way.  But I spent the next twenty minutes engaged in a debate with myself over whether California had discriminated against me because I came from another state, and in doing so had violated my constitutional rights.  In the end, it probably doesn’t matter.  When I indignantly related my experience to a good friend and fellow law student, she quickly pointed out that I wasn’t injured.  Therefore, I didn’t have standing to sue, even if I had a slam dunk case. Continue reading »

The Insufficiency of a “Patent Pending” Mark: The Logic of § 287’s Notice Requirement

By Luke MacDowall *

The validity of marking products as “patent pending” has long been recognized as a legitimate way to put a competitor on notice of potential future infringement of a patent once that patent has issued. See, e.g., Ex parte Bonnie-B. Co., 1923 C.D. 42 , 313 O.G. 453 (Comm’r Pat. 1922). However, even with a “patent pending” marking, an inventor does not secure rights to damages (even if the patent eventually issues and the infringer has knowledge of the patent and its infringement) when the patentee fails to change the marking on its products in compliance with 35 U.S.C. § 287(a). This post briefly explores the logic behind § 287(a) to explain why “patent pending” markings are not enough to entitle patentees to damages. Continue reading »

Ignorance was Bliss: The Shifting Standard for Patent Infringement Inducement

 By Emily L. Cantrell *

Until the Federal Circuit’s  decision in SEB S.A. v. Montgomery Ward & Co., Inc. (Fed. Cir. 2010), it was unclear what level of knowledge an accused patent infringer must have to be liable for inducement of infringement under Section 271(b) of the Patent Act.

Generally, there are two ways a defendant in a patent infringement suit may be liable: (1) direct infringement and (2) indirect infringement.  A direct infringer is anyone who, without permission, “makes, uses, offers to sell, or sells any patented invention within the U.S. or imports into the U.S. any patented invention during the term of the patent.”  35 U.S.C. §271(a).  An indirect infringer is a party who contributes to or induces the infringement, even though a third party is responsible for the actual infringement—similar to vicarious liability in tort law. Continue reading »

Are Tax Strategies Patentable Subject Matter After Bilski? The Answer is Unclear.

By Joseph W. Norman *

Any analysis of the Supreme Court’s 2010 decision Bilski v. Kappos (herein after Bilski) must begin with a look at the treatment of business methods under section 101 of the Patent Code prior to Bilski.

Prior to the Federal Circuit’s 1998 decision in State Street Bank v. Signature Financial Services the issue of whether a business method is patentable subject matter had never been directly addressed.  In State Street, the Federal Circuit set out the test for the patentability of a business method.  The court concluded a transformation that produces a “useful, concrete, and tangible result” is eligible subject matter because it passes the test for utility.  The net of this test is that a “process” whether mental or non-mental may be patent-eligible if it produces a useful, concrete, and tangible result.  State Street’s significance lies in the fact that for the first time, business methods were declared patent-eligible. Continue reading »

Just Patent It: Nike Goes "Back to the Future" with Self-Lacing Shoes

By Tiffany Rene Johnson *

Take one of the largest sneaker companies in the world, add Michael J. Fox time traveling to 2015, sprinkle in a bit of absurd technology, and you end up with sneakers that lace themselves.  In 1989, Back to the Future II introduced high-top, power lacing Nike sneakers, along with hover boards and flat screen televisions that doubled as window shades.  But this sort of technology is rarely injected into a plot generically; inventions of the silver screen are hopelessly inundated with corporate logos.  Product placement in a movie about the future can be a powerful marketing mechanism that, among other things, sends a signal about the company’s longevity and ability to innovate. 

Source: Patent Publication No. WO/2009/134858

Source: Patent Publication No. WO/2009/134858

Nike, however, has taken this strategy one step further.  Not only is it in the process of developing the futuristic technology to allow sneakers to actually self-lace, it is also relying on its own product placement of the Nike logo in 1989’s Back to the Future II to market the shoes today,  long before they hit the factory floor.

On April 29, 2009, Nike filed an international patent application for an “automatic lacing system.”  The application describes the mechanism as a set of straps, connected to a motor and spool that tighten on top of the foot, in addition to a “clinching system” that tightens around the ankle.  The lacing system would be powered by either an internal, rechargeable battery, or by disposable batteries.  When The World Intellectual Property Organization (WIPO) published the application in November 2009, the technology blogosphere – which undoubtedly has some overlap with Marty McFly lovers – went into a frenzy.  The prospect of the imaginative technology depicted in a movie becoming a reality by the year 2015 was described by one blogger as a “time-warping paradox so perfectly mimicking those in the Back to the Future movies that the world might possibly end.”  This sentiment seems to be a fairly accurate representation of how potential collectors feel about the shoes, but what is unclear is whether the technology for the power laces is patentable or, better yet, patent-worthyContinue reading »