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As an attorney who practices in all areas of intellectual property litigation, as well as data privacy and security, Eric Chad prides himself on keeping thieves, trolls, hackers, and the government off his clients’ backs. In every matter, Eric makes sure he understands his client’s objectives and takes all relevant factors into account when offering advice, including legal implications, business impact, and budgetary restrictions.

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Eric understands that, when a client calls him, the top priority is a pragmatic and affordable solution to that client’s legal issues. Rather than dive down a rabbit hole of legal minutiae, Eric gets to work collaborating with his client to resolve any issues efficiently and quickly.

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On the data privacy and security side, Eric counsels clients on a multitude of issues, such as navigating compliance with complex legal and regulatory frameworks like the EU’s General Data Protection Regulation and the California Consumer Privacy Act. This includes working with clients to ensure that attempts at compliance are necessary and that issues are appropriately prioritized to promote efficiencies. Eric also helps his clients by drafting, or aiding in the drafting of, internal and public-facing policy documents, such as privacy notices and website terms of use. Other services Eric performs in this area include vendor management, developing and implementing incident response plans, and counseling regarding numerous sectoral regulations, such as the FRCA, FERPA, COPPA, and others.

Eric has also spent the last decade litigating complex intellectual property disputes, including cases involving patents, trademarks, copyrights, trade secrets, publicity rights, and unfair competition. Eric has appeared in Federal District Court’s across the country advocating for his clients. He involves himself in all aspects of these litigations, from pre-filing investigation through post-trial briefing and appeals. Eric has also represented clients before the Patent and Trademark Office’s Trademark and Appeals Board.

Eric Chad previously served as an adjunct professor at the University of Minnesota Law School where he taught the Intellectual Property Moot Court class and coached the IP Moot Court team. He also works with the Children’s Law Center of Minnesota to represent children who have been or are in danger of being removed from their homes.

Outside of the office, Eric spends time with his wife, Vanessa, and his daughter, Grace, playing with his dog, reading, gardening, and pretending to exercise.

Mitchell Hamline School of Law, Cybersecurity and Data Privacy Law Certificate Program, 2018, 

University of Minnesota Law School, J.D., 2008, 

University of Minnesota - Twin Cities, B.S. Biology, 2005, 

Eric Chad, Intellectual Property Attorney

Industrial Chemistry

Pharmaceuticals

Minneapolis

Merchant &amp; Gould promoted five attorneys in three of its offices around the country &#8212; a great way to launch the New Year.&nbsp; The promotions include Eric R. Chad, Mark L. Gleason and Anneliese S. Mayer in Minneapolis; Ryan J. Fletcher, Ph.D., in Denver; and Steven F. Owens in Knoxville.



“We are excited to expand our leadership and embrace Merchant &amp; Gould’s growth in 2019.&nbsp; These promotions bring greater depth to our practice groups in innovative industries across the country,” said Christopher J. Leonard, Managing Director of Merchant &amp; Gould.



Eric Chad counsels clients on issues relating to privacy and data security, including the development and implementation of security and privacy policies and compliance with applicable privacy laws and regulations. He also practices general intellectual property law with an emphasis on all forms of litigation and contested proceedings before the Trademark Trial and Appeal Board.&nbsp; He represents clients through all stages of complex intellectual property disputes from pre-filing investigations through post-trial briefing and appeal.&nbsp; Eric has litigated cases involving a wide range of technologies, including HVAC equipment, sporting goods, pharmaceuticals, cosmetics, infection prevention, and lubrication technologies.



Mark Gleason focuses on general IP strategy and counseling and patent prosecution in the mechanical and electrical arts.&nbsp; He has written and prosecuted patent applications associated with a wide range of computer and software technologies, including financial services, website layout and information analysis and display. Mark is experienced with electrical and mechanical technologies including printers, industrial instrumentation and controls, and power and hand tools, as well as semiconductor technologies including microprocessor architecture, memory devices, wafer processing and testing, and circuit layout.



Anneliese Mayer works in a wide range of technical areas, such as chemical, mechanical, biological, food science, and software and business methods.&nbsp; Her litigation experience includes patent, trademark, and trade secret litigation.&nbsp; Anneliese also has an agreement and patent prosecution practice and advises clients on overall IP strategy, best practices and education, freedom to operate, infringement and invalidity opinions, and due diligence and patent portfolio analyses for acquisitions and licensing opportunities.&nbsp;



Ryan Fletcher, promoted to partner in Denver, has a Ph.D. in Biochemistry and Molecular Genetics, which brings a deep understanding of technology, a tireless attention to detail, and strong analytical thinking to his clients’ needs.&nbsp; His patent litigation experience covers the technology spectrum and includes medical devices, pharmaceutical compositions and laboratory testing techniques, computer software, window hardware, and container technology. Ryan has also successfully represented clients in litigation over disputes arising from allegations of copyright infringement, trademark infringement, unfair business practices, trade secret misappropriation, and breach of contract.&nbsp; &nbsp;&nbsp;&nbsp;&nbsp;&nbsp;



Steven Owens, promoted to partner in Knoxville, focuses on patent prosecution and management. He counsels client companies of all sizes on their intellectual property rights and goals, including advising on the acquisition, defense, and licensing of their intellectual property. Steven has experience in patent and trademark litigation, including developing and implementing litigation strategies, preparing motions and pleadings, and coordinating discovery and e-discovery.



Congratulations to these five attorneys!

Merchant & Gould Promotes Five Attorneys to Partners  in Three Office Locations

Eric Chad, Partner, Merchant &amp; Gould P.C., has earned the ANSI-accredited Certified Information Privacy Professional/United States (CIPP/US) credential through the International Association of Privacy Professionals (IAPP). Eric counsels clients on a variety of issues relating to privacy and data security, including the development and implementation of security and privacy policies and compliance with applicable privacy laws and regulations. He also serves as the co-chair of Merchant &amp; Gould’s Internet, Cybersecurity, and E-Commerce practice group and chairs the firm’s internal information security committee. Outside of the data privacy and security world, Eric also practices all forms of intellectual property litigation.



According to IAPP, privacy professionals are the “arbiters of trust” in today’s data-driven global economy.&nbsp; They help organizations manage rapidly evolving privacy threats and mitigate the potential loss and misuse of information assets.&nbsp; The IAPP is the first organization to publicly establish standards in professional education and testing for privacy and data protection. IAPP privacy certification is internationally recognized as a reputable, independent program that professionals seek and employers demand.



The CIPP is the global standard in privacy certification. Developed and launched by the IAPP with leading subject matter experts, the CIPP is the world’s first broad-based global privacy and data protection credentialing program.&nbsp;The CIPP/US&nbsp;demonstrates a strong foundation in U.S. private-sector privacy laws and regulations and understanding of the legal requirements for the responsible transfer of sensitive personal data to/from the U.S., the EU and other jurisdictions. Eric joins the ranks of more than 10,000 professionals worldwide who currently hold one or more IAPP certifications.



“We value the IAPP’s impact within the intellectual property industry, reinforcing the strategic importance of certified privacy professionals,” said Christopher J. Leonard, Managing Director, CEO, and Chairman of the Board, of Merchant &amp; Gould. “Congratulations, Eric!”



<h2 class="wp-block-heading">About the IAPP</h2>



The International Association of Privacy Professionals (IAPP) is the largest and most comprehensive global information privacy community and resource. Founded in 2000, the IAPP is a not-for-profit organization that helps define, support and improve the privacy profession globally. More information about the IAPP is available at www.iapp.org.

Eric Chad, Partner, Merchant & Gould P.C.  Has Earned  CIPP/US Certification

<h2 class="wp-block-heading">Location:</h2>



Hyatt Regency Cleveland At The Arcade 420 Superior Ave Cleveland, OH 44114



<h2 class="wp-block-heading">Overview</h2>



3-Minute Case Summaries:&nbsp;A fast-paced and energetic update on recent case law developments important to patent litigation from ten select cases.



Brand Protection Update:&nbsp;Hear an update on trends and cases related to online brand protection, including updates on copyright laws, trademark strategies, and anti-counterfeiting strategies. We will also provide an update regarding new programs put in place by online marketplaces to manage counterfeits and unauthorized product sales.



Data Privacy Developments:&nbsp;The laws and regulations relating to the collection, use, processing, and storage of consumer data and consumer privacy are constantly evolving. Eric will discuss two of the more significant developments in this area from the last few years: The EU’s General Data Privacy Regulation (GDPR) and the California Consumer Privacy Act (CCPA). Specifically, Eric will discuss what we’ve learned in the 13 months since GDPR went into force and what we can expect from the CCPA, which goes into force on January 1, 2020.



Panel Discussion: Agreements &amp; Innovation Due Diligence:&nbsp;M&amp;G attorneys share their experience helping their clients navigate technology, data, and IoT-driven projects. &nbsp;Agreement drafting, due diligence, litigation, data security, and client counseling will be discussed.



<figure class="wp-block-table"><table><tbody><tr><td>2:00 – 2:30</td><td>Registration</td></tr><tr><td>2:30 – 3:00</td><td>3-Minute Case Summaries: What Every Patent Lawyer Needs to Know &nbsp;</td></tr><tr><td>3:00 – 3:30</td><td>Brand Protection Update: Relevant Cases and Trends&nbsp;</td></tr><tr><td>3:30 – 3:50</td><td>Data Privacy Developments: GDPR at One Year and the California Consumer Privacy Act&nbsp;</td></tr><tr><td>3:50 – 4:00</td><td>Break</td></tr><tr><td>4:00 – 4:45</td><td>Panel Discussion: Agreements &amp; Innovation Due Diligence</td></tr></tbody></table></figure>



Followed by a cocktail &amp; networking reception



<a href="http://emailcc.com/cv/52439ec4097be55d3d6868fedcfda34fc8efe17a" target="_blank" rel="noopener">RSVP</a>

On the Cutting Edge: Updates on Patent Law, Data Privacy, and E-Commerce

Merchant &amp; Gould’s Jonathan Berschadsky and Eric Chad worked with another law firm to successfully defend a challenge at the U.S. Court of Appeals for the Federal Circuit on behalf of Merchant and Gould client, DraftKings, and FanDuel, where the patent holder alleged the Patent Trial and Appeal Board (PTAB) incorrectly invalidated claims due to a flawed claim construction.&nbsp; While the three-judge panel held the PTAB’s claim construction was not entirely correct, it was only “harmless error” because substantial evidence still supports the PTAB’s finding that the claims in the patent would have been obvious over prior art.&nbsp; 



Ten patents in total were asserted against DraftKings in the underlying lawsuit.&nbsp; Merchant and Gould successfully invalidated 7 of the 10 patents early on in a motion to dismiss before invalidating the remaining three in IPRs.&nbsp; The patent owner did not appeal one of the IPRs and the remaining IPR decision is still under appeal at the Federal Circuit.&nbsp;

Merchant & Gould’s Jonathan Berschadsky and Eric Chad successfully defend a challenge at the U.S. Court of Appeals for the Federal Circuit

12 Attorneys Were Recognized in the Minneapolis Office.



Congratulations to nine Merchant &amp; Gould attorneys in the Minneapolis office who have been named 2020 Minnesota Super Lawyers, distinguishing themselves in their legal practice.&nbsp; Only the lawyers in the top 5 percent of the total lawyers in the state were selected to the Super Lawyers list.



John Clifford was recognized for excellence in intellectual property law. Allen Hinderaker, Rachel Hughey, Scott Johnston, Heather Kliebenstein, Dan McDonald, Will Schultz, Tony Zeuli and Rachel Scobie Zimmerman were recognized for excellence in IP litigation.



In addition, Merchant &amp; Gould is proud to announce that three attorneys were recognized as 2020 Minnesota Rising Stars. Eric Chad, Michael Erbele and Paige Stradley are distinguished under the category of IP litigation. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. &nbsp;No more than 2.5 percent of attorneys are selected for Rising Stars in any state.



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. &nbsp;Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement and independent research.

Merchant & Gould Announces 2020 Super Lawyers and Rising Stars in Minnesota

Congratulations to Merchant &amp; Gould&#8217;s attorneys who have been named 2021 Super Lawyers, distinguishing themselves in their legal practice.  Only the lawyers in the top 5 percent of the total lawyers in each state were selected for inclusion in the Super Lawyers list.



Jonathan Berschadsky, New York City Jeffrey D. Blake, Atlanta John A. Clifford, Minneapolis Scott W. Johnston, Minneapolis Heather J. Kliebenstein, Minneapolis Daniel W. McDonald, Minneapolis William D. Schultz, Minneapolis Anthony R. Zeuli, Minneapolis Rachel Zimmerman Scobie, Minneapolis



In addition, Merchant &amp; Gould is proud to announce that five attorneys were recognized as 2021 Rising Stars. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board.  No more than 2.5 percent of attorneys are selected for Rising Stars in any state.



Eric R. Chad, Minneapolis Michael A. Erbele, Minneapolis Ian G. McFarland, Knoxville Luciano A. Ricondo, New York City Paige S. Stradley, Minneapolis



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. &nbsp;Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement and independent research.

Merchant & Gould Announces 2021 Super Lawyers & Rising Stars

Merchant &amp; Gould was honored by the Children’s Law Center of Minnesota (CLC) with the Distinguished Service Award at its 26th Anniversary Virtual Benefit on Oct. 7.



The Distinguished Service Award is presented annually to one law firm or corporation whose work on behalf of CLC’s clients exemplifies the commitment and dedication to pro bono representation that is the foundation of CLC’s mission. &nbsp;According to Amanda Finman-Palmer, Development Director, and the CLC team, Merchant &amp; Gould was especially recognized for its “dedication and commitment to representing children and youth in foster care,” as well as the firm’s “immense impact on Minnesota children in need.”



Over the years, Merchant &amp; Gould attorneys and staff have engaged with CLC in many ways, including CLC board and committee leadership; philanthropy by employees and volunteers; sponsorship support for CLC’s Annual benefit; in-kind donations for CLC clients and operation; and hundreds of pro bono hours representing children and youth in foster care.



Minneapolis partner Tony Zeuli, CLC board member, accepted the Distinguished Service Award on behalf of Merchant &amp; Gould in a video while applauding the firm’s robust team of pro bono volunteers, including Karen Beckman, Eric Chad, Julie Daulton, Lindsay Hartman, Rachel Hughey, Bradley Kuxhausen, Anneliese Mayer, Elisabeth “Bette” Muirhead, Ryan Smith, Rachel Zimmerman Scobie, and Tracey Skjeveland.



CLC provides free legal advocacy for foster care youth in Minnesota. &nbsp;The organization advocates for foster children through systemic reform and provides free legal representation services to foster children. &nbsp;CLC also trains volunteer attorneys to represent foster children in court. &nbsp;Currently, CLC represents over 800 children per year. &nbsp;

Merchant & Gould Receives Distinguished Service Award from Children’s Law Center of Minnesota

Merchant &amp; Gould partner Tony Zeuli says volunteering with Children’s Law Center (CLC) to represent foster children in court is a rewarding experience for him and Minneapolis colleagues.



Zeuli, a CLC board member, accepted the nonprofit’s Distinguished Service Award on the firm’s behalf earlier this month.



Read the rest of the article <a href="https://minnlawyer.com/2021/10/21/breaking-the-ice-ip-attorney-colleagues-earn-pro-bono-recognition/">here.</a>

Breaking the Ice: IP attorney, colleagues earn pro bono recognition

Other Attorneys Recognized for Pro Bono Hours and CLC Distinction



Merchant &amp; Gould’s Pro Bono Committee announced the firm’s 2021 Pro Bono Awards to attorneys who have dedicated their time to helping their communities through pro bono legal services and their deep commitment.&nbsp;



A special congratulations goes to Sheila Niaz (Minneapolis) who performed more than 300 hours of pro bono legal work this year. &nbsp;Sheila’s pro bono work included preparing several patent applications in connection with LegalCORPS and assisting on the appeal of a criminal conviction. &nbsp;She is the sole recipient of Merchant &amp; Gould’s 2021 Pro Bono Award.



In addition, we want to recognize Rachel Hughey (Minneapolis) who has since been appointed as a District Court Judge in Minnesota’s Fourth Judicial District; Bill Hughet (D.C.); Mike Erbele (Minneapolis); Joe Gess (D.C.); Rachel Scobie (Minneapolis); and Ben Tramm (Minneapolis) for dedicating more than 40 hours of pro bono work this year.



We also want to applaud our Minneapolis team of attorneys who received Children’s Law Center (CLC) of Minnesota’s “Distinguished Service Award” this year: &nbsp; Karen Beckman, Eric Chad, Julie Daulton, Lindsay Hartman, Rachel Hughey, Bradley Kuxhausen, Anneliese Mayer, Elisabeth “Bette” Muirhead, Ryan Smith and Rachel Zimmerman Scobie, Tracey Skjeveland and Tony Zeuli (CLC board member). &nbsp;Merchant &amp; Gould was recognized for its “dedication and commitment to representing children and youth in foster care,” as well as the firm’s “immense impact on Minnesota children in need.”



Congratulations to Sheila and all the attorneys who continue to help make our communities even better!

Merchant & Gould Congratulates Sheila Niaz as the Firm’s Pro Bono Award Winner

Today, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-2042.OPINION.12-26-2023_2244064.pdf">K-fee System GmbH v. Nespresso USA, Inc., No. 2022-2042 (Dec. 26, 2023)</a>, reversing a district court’s claim construction and its resulting grant of summary judgment of noninfringement.



K-fee sued Nespresso for infringement of three patents, each of which claims coffee-machine portion capsules displaying information that, when read by a device associated with a coffee machine, can prevent capsules from being used with incompatible machines and/or specify certain brewing parameters. Every claim of the asserted patents included the term “barcode”, which the district court construed as part of its claim construction order. The parties generally agreed a barcode is a visual code having bars of variable width, which includes the lines and gaps. Nespresso argued, however, that K-fee had disclaimed coverage in proceedings concerning a related patent before the European Patent Office (EPO). Specifically, Nespresso argued that, because of this disclaimer, the reference to barcode in the claims could not include the type of “bit code” discussed during the EPO proceedings. The district court agreed with Nespresso and, finding that Nespresso’s products used that type of bit code, granted summary judgment of noninfringement.



The Federal Circuit reversed. On claim construction, the Court held that a person of skill in the art would understand the term “barcode” to refer to a purely visual phenomena—bars of varying widths—rather than other criteria, such as a particular coding of data. Interpreting barcode in this light, the Court concluded that K-fee had not distinguished itself from the prior art because the prior art used “bit codes,” but because the bit codes disclosed by the prior art were not bar codes. The Court explained that the fact the bit codes discussed in the EPO proceedings were not bar codes does not mean bit codes can never take the form of a bar code. And if they do, then they will fall within the scope of the asserted patent claims.



Because the district court applied an incorrect claim construction in its infringement analysis, the district court’s grant of summary judgment of noninfringement also had to be reversed. The Court’s analysis had incorrectly focused on how the codes on the accused products were read, rather than on the visual appearance of those codes. The Court remanded for further proceedings noting that a new analysis, applying the correct claim construction, is required.

CAFC Reverses District Court’s Grant of Summary Judgment of Noninfringement in Coffee Capsules Litigation

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in HIP, Inc. v. Hormel Foods Corp., No. 2022-1696 (May 2, 2023), reversing a district court ruling that an employee of HIP’s predecessor entity, Unitherm, was a joint inventor on a patent assigned to Hormel.



In 2005, Hormel and Unitherm collaborated to improve on Hormel’s microwave cooking process for precooked bacon and entered into an agreement to develop an oven for a two-step cooking process. After testing, a two-step cooking process was finalized: a first step involving preheating the bacon and a second step involving cooking the meat in a superheated steam oven. Hormel filed a patent application on the process listing only Hormel employees as inventors. The resulting patent includes three independent claims. Two of those claims recite a preheating step using a microwave oven. One recites a preheating method selected from the group consisting of “a microwave oven, an infrared oven, and hot air . . . .”



HIP sued Hormel, alleging one of Unitherm’s employees was either the sole or a joint inventor of the patented invention. The district court held a bench trial and determined that the Unitherm employee was a joint inventor because he contributed the concept of preheating with an infrared oven. Hormel appealed.



The Federal Circuit reversed. Applying its own precedent, the Court considered whether the Unitherm employee made “a contribution to the claimed invention that is not insignificant in quality, when . . . measured against the dimension of the full invention.” In performing its evaluation, the Court looked to both the claims and the specification. Focusing on the claims, the Court noted that the use of an infrared oven was “recited only in a single claim of the . . . patent, in a Markush group,” while the other independent claims recited only microwave ovens. Focusing on the specification, the Court explained that the patent focused primarily on using microwave ovens in the preheating step and that the potential use of an infrared oven was mentioned only one time in the entire written description. Neither the summary of the invention nor any of the examples discussed in the detailed description mentioned the use of an infrared oven. Accordingly, the Court determined that the Unitherm employee’s contribution was too insignificant to support the district court’s conclusion on inventorship.

CAFC Reverses District Court Inventorship Decision Due to Relative Insignificance of Alleged Inventor’s Contribution

Last week, the United States Court of Appeals for the Federal Circuit denied a petition for rehearing <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2149.Order.2-25-2020.1_1539400.pdf" target="_blank" rel="noopener">en banc in HZNP Finance Limited v. Activis Laboratories UT, Inc.</a>, Nos. 2017-2149, -2152, -2153, -2202, -2203, -2206 (Feb. 25, 2020). The petition sought rehearing after a three-judge panel of the Federal Circuit affirmed a decision from the District of New Jersey finding claim 49 of HZNP’s U.S. Patent No. 8,252,838 (“the ’838 patent”) invalid as indefinite under 35 U.S.C. § 112.



The ’838 patent is directed to an analgesic formulation containing the active ingredient diclofenac. Claim 49 recites a topical formulation “consisting essentially of” diclofenac and other ingredients. The district court found that, in the context of the ’838 patent, the transitional phrase “consisting essentially of” was indefinite. Under Federal Circuit jurisprudence, that transitional phrase indicates that the invention must include the identified ingredients, and may include other ingredients, but only if the other ingredients do not materially affect the basic and novel properties of the invention. The district court found that one of the asserted novel properties of the claimed formulation, “better drying time,” was not sufficiently described in the specification, rendering claim 49 indefinite. On appeal, a panel of the Federal Circuit affirmed. HZNP petitioned for rehearing en banc.



In a summary per curiam order, the Federal Circuit denied HZNP’s petition. Judge Lourie, joined by Judges Newman, O’Malley, and Stoll, issued a written opinion in dissent. Judge Lourie explained he believed the panel erred in evaluating the definiteness requirement of § 112. Specifically, he asserted that, because the novel property of “better drying time” was discussed only in the specification, and not actually recited in claim 49, any alleged lack of clarity in the meaning of the term “better drying time” cannot provide a valid basis for finding claim 49 indefinite. Judge Lourie urged that “it is the language of the claims that must not be indefinite, not the understanding or clarity of an advantage of the invention.” Judge Lourie noted that the precise meaning of “consisting essentially of” in a patent infringement suit should boil down to the fact question of whether the presence of an unrecited ingredient in an accused product is in fact inconsistent with, or defeats the purpose of, the claimed composition. But, he stated, “the fact that one generally has to determine this question at trial does not make the claim indefinite.”

CAFC Denies Rehearing En Banc on § 112 Question; 4 Judges Dissent

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/20-2011.OPINION.2-4-2022_1903302.pdf">Apple Inc. v. Wi-LAN Inc., Nos. 2020-2011, -2094 (Feb. 4, 2022)</a>, inter alia vacating the Southern District of California’s denial of a third trial on damages and remanding the case for further proceedings.



The dispute centered on Apple’s alleged infringement of two patents owned by Wi-LAN. A jury found Apple infringed both patents and awarded Wi-LAN $145.1 million in damages based on the testimony of Wi-LAN’s damages expert, who applied a hypothetical-negotiation framework to compute a royalty of $0.85 per infringing phone. Apple moved for a new trial on damages, which the district court granted, finding that Wi-LAN’s damages expert relied on faulty factual testimony.



During the second damages trial, Wi-LAN’s expert relied on three allegedly comparable licenses to support a royalty of $0.45 per phone. The jury adopted this figure and awarded Wi-LAN $85.23 million. Apple again moved for a new trial on damages, arguing that the expert failed to properly apportion the allegedly comparable licenses to reflect the value of the infringed patents. The district court denied Apple’s motion. Apple appealed.



On appeal, the Federal Circuit concluded denial of the new trial motion was an abuse of discretion. Specifically, the Court agreed that Wi-LAN’s damages expert failed to properly apportion the royalty in the allegedly comparable licenses. Each of the comparable licenses included hundreds of patents. Despite this, the expert found that the patents infringed by Apple were “key” patents to the licenses and reduced the royalty from the licenses by only 25% in reaching his per-phone royalty calculation. The Court found the assertion that the infringed patents were key to the licenses was untethered from the facts. One of the infringed patents was not listed on two of the licenses at all and was listed in the third license only as one of hundreds of similarly situated patents. The other infringed patent was not included in one of the comparable licenses, included in a long list of patents in the second license, and treated as one of five “asserted patents” in the third license. In view of this, the expert’s decision to reduce the royalty rate prescribed by these patents by only 25% was not based on valid methodology and should have been excluded. The Court, therefore, vacated the district court’s denial of a new damages trial and remanded for further proceedings.&nbsp;

CAFC Vacates Damages Award based on Expert’s Failure to Properly Apportion “Comparable” Licenses

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2050.OPINION.7-14-2020_1618430.pdf">Dana-Farber Cancer Institute, Inc., v. Ono Pharmaceutical Co., Ltd.</a>, No. 2019-2050 (Jul. 14, 2020). The opinion affirmed a district court determination that collaborators with the named inventor on six patents must be added as co-inventors.



The relevant patents are directed to a method of treating cancer by administering antibodies targeting specific receptor-ligand interactions on T-cells to stimulate the immune response against tumor cells. A named inventor on all six patents, Dr. Tasuku Honjo, discovered a PD-1 receptor in the early 1990s, and found binding of PD-1 in tumor cells. From 1998 to 2001, Dr. Honjo collaborated with Drs. Clive Wood and Gordan Freeman through meetings, joint disclosure of research and experimental data, and sharing of materials. Drs. Freeman and Wood discovered ligands that interacted with PD-1. In 2002, Dr. Honjo filed a Japanese patent application to which the six patents at issue claim priority.



Dana-Farber filed suit in the district court alleging that Drs. Freeman and Wood should be added as inventors on Dr. Honjo’s patents. After a bench trial, the district court issued an order granting Dana-Farber its requested relief. Ono (the assignee of Dr. Honjo’s patent rights) appealed.



On appeal, Ono asserted that the judgment of the district court should be reversed because (1) the district court’s legal analysis regarding conception was faulty, and (2) the district court’s factual findings regarding inventorship were clearly erroneous. The Federal Circuit disagreed. The Court rejected Ono’s proposed legal standard, which would require each joint inventor to individually conceive of the complete invention and participate in a particular moment of conception, as inconsistent with the law. The Court explained that “[t]here is no ‘explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor,’” and concluded that Dr. Freeman’s and Dr. Wood’s absence from certain important experiments did not negate their overall contributions to conception of the invention throughout their collaboration with Dr. Honjo. Regarding the factual findings, the Court held that the district court did not clearly err in its factual determination that the work of Drs. Freeman and Wood in determining the structure and function of the PD-L1 ligand was a significant contribution to the conception of each of the patents at issue. Finding no error in the district court judgment, the Court affirmed.



This blog post was co-authored by Kelsey Covert &amp; Eric Chad

CAFC Affirms Co-Inventorship Decision

Last week, the U.S. Court of Appeals for the Second Circuit issued an opinion in Melendez v. Sirius XM Radio, Inc., No. 21-1769-cv (Oct. 4, 2022), affirming the Southern District of New York’s grant of a motion to dismiss with prejudice Melendez’s right of publicity claims alleging violations of California law.



Melendez, known by the moniker “Stuttering John,” appeared on the Howard Stern Show from 1988 to 2004. In 2005, Sirius purchased the rights to broadcast both new and archival episodes of the show. In its advertising, Sirius included clips from old episodes of the show that included audio of Melendez performing under his Stuttering John persona. Melendez sued Sirius, arguing that Sirius was using his name or likeness for commercial purposes without his permission. Sirius moved to dismiss Melendez’s claims as preempted by the Copyright Act, and the district court granted Sirius’s motion. Melendez appealed.



In affirming the district court’s decision, the Second Circuit applied its own two-prong test to determine if a state law claim is preempted by the Copyright Act: (1) whether the claim applies to subject matter falling within the ambit of one of the categories of copyrightable works (the “subject matter requirement”); and (2) whether the state-created right was abridged by an act that would, by itself, infringe one of the exclusive rights provided by federal copyright law (the “general scope requirement”).



In evaluating the subject matter requirement, the Court considered that the clips at issue were not presented in a way that suggested Melendez’s endorsement or modified to emphasize Melendez’s name or likeness in any way separate from the excerpts themselves. Given this, the Court concluded that Melendez was essentially seeking was to preclude Sirius from broadcasting the clips themselves, which were inarguably copyrightable works. The subject matter requirement was, therefore, met.



In evaluating the general scope requirement, the Court found that, because Melendez was merely attempting to prevent Sirius from rebroadcasting clips of the Howard Stern Show and nothing more, the right Melendez was asserting was equivalent to exclusive rights within the general scope of copyright. The general scope requirement was, therefore, met.

Second Circuit Affirms Dismissal of “Stuttering John’s” Right of Publicity Claims as Preempted by the Copyright Act

Last week, the U.S. Court of Appeals for the First Circuit issued an opinion in <a href="http://media.ca1.uscourts.gov/pdf.opinions/19-1927P-01A.pdf" target="_blank" rel="noopener">Markham Concepts, Inc. v. Hasbro, Inc.</a>, No. 19-1927 (June 14, 2021), affirming the District of Rhode Island’s use and application of the instance and expense test to determine whether a copyrighted work, transferred under the 1909 Copyright Act, was a work for hire.



Toy designer Bill Markham’s successors-in-interest brought an action against the copyright owners of “The Game of Life,” seeking a judicial declaration that they possess “termination rights” under the 1976 Copyright Act. Those termination rights permit the transferor of a pre-1978 copyright, other than a copyright in a work for hire, to terminate the transfer. Specifically, Markham’s successors sought to terminate a 1960 agreement that assigned Markham’s interest in the game.



Because the copyright and transfer pre-dated the 1976 Copyright Act, the district court held a bench trial to determine whether the game was a work for hire. Applying the so-called “instance and expense” test established under the 1909 Copyright Act, the court found that Hasbro had “provided the instance for and bore the expense of the [game] prototype’s invention.” The court, therefore, held that&nbsp;&nbsp; Markham’s contribution was a work for hire, and that Markham’s successors held no termination rights. Markham’s successors appealed, arguing that the instance and expense test had been abrogated under the 1976 Copyright Act and precedent interpreting that Act.



The First Circuit affirmed the holding of the district court. The Court rejected appellants’ argument that the 1976 Copyright Act, as interpreted by that the Supreme Court in Community for Creative Non-Violence v. Reid, abrogated the 1909 Copyright Act’s “instance and expense” test thus narrowing the circumstances under which a work qualifies as a work for hire. Noting that, even after Reid, the First Circuit has continued to apply the “instance and expense” test to the evaluation of copyrights pre-dating the 1976 Copyright Act, the Court confirmed that the test still applies in cases involving these older copyrights. The Court further reviewed the district court’s application of the ‘instance and expense” test to the facts of the case before it and found no error in the district court’s analysis.



This blog post was co-authored by Eric Chad and River Lord.

First Circuit Upholds Use of Instance and Expense Test for Works Under the 1909 Copyright Act

Last week, the United States Court of Appeals for the Eleventh Circuit affirmed a district court grant of summary judgment in <a href="https://media.ca11.uscourts.gov/opinions/pub/files/201911258.opn.pdf" target="_blank" rel="noopener">Savannah College of Art and Design, Inc. v. Sportswear, Inc.</a>, No. 19-11258 (Dec. 22, 2020). Defendant Sportswear appealed a decision from the Northern District of Georgia granting the college’s motion for summary judgment that Sportswear’s use of all or portions of three of the college’s service-marks—SAVANNAH COLLEGE OF ART AND DESIGN; SCAD; and a design mark including a depiction of the college’s mascot, Art the Bee—to sell apparel was likely to cause consumer confusion.



&nbsp;Sportswear sold apparel bearing the college’s marks through its website from 2009 to 2014, when the college first became aware of these sales and sued Sportswear. Sportswear had not obtained the college’s consent to its use of the marks and included a disclaimer on its website indicating that the apparel was not endorsed or approved by the college. After the college sued, Sportswear sought summary judgment that the college lacked enforceable rights because the college’s service-marks could not cover goods like those sold by Sportswear. The district court granted Sportswear’s motion, but the 11th Circuit reversed and remanded for consideration of the Eleventh Circuit’s likelihood of confusion factors. On remand, the district court followed this mandate and granted the college’s motion for summary judgment of infringement.



On appeal, the Court weighed the seven likelihood of confusion factors applicable in the Eleventh Circuit. Applying its own precedent, the Court explained that three factors were entitled to lesser weight where, as here, the concern for confusion arises from the defendant’s misuse of the plaintiff’s reputation and goodwill as embodied in the plaintiff’s mark. These factors were (1)&nbsp;the similarity of the parties’ products, (2) the identity of retail outlets and purchasers, and (3)&nbsp;the identity of advertising media utilized by the parties. The Court found that, of the remaining factors, only the absence of actual confusion weighed in Sportswear’s favor. Given the small volume of Sportswear’s sales using the college’s marks, however, the Court held that the absence of actual confusion was not dispositive. Because the absence of actual confusion was afforded relatively little weight and the remaining significant factors favored the college, the Court affirmed the district court’s grant of summary judgment for the college.

Eleventh Circuit Sides with College in Trademark Dispute with Apparel Company

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Jasmine D. Brower

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Defended a large software and computer systems company in patent litigation against a competitor. The technology at issue involved procurement software used by numerous large companies and healthcare facilities. The case resulted in a verdict that the majority of the client’s accused products did not infringe the asserted patents.
Represented a multinational cosmetics company in trademark litigation against a beauty salon. The case resulted in efficient resolution of the matter on terms favorable to the client.
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Represented a large HVAC systems manufacturer in patent litigation against a competitor. The technology at issue involved large in-line fans used in large facilities. Achieved efficient resolution of the case on terms favorable to the client.

Eric R. Chad

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<a href="http://www.gameinformer.com/b/news/archive/2012/08/09/the-last-guardian-trademark-abandoned-but-don-39-t-worry.aspx" target="_blank" rel="noopener">The Last Guardian Trademark Abandoned, But Don&#8217;t Worry</a>, GameInformer.com, August 9, 2012, by Jim Reilly
<a href="http://www.gameinformer.com/b/news/archive/2012/05/07/infinity-ward-activision-black-ops-ii.aspx" target="_blank" rel="noopener">Could Black Ops II&#8217;s Setting Land Activision in Legal Trouble?</a>, GameInformer.com, May 7, 2012 by Dan Ryckert
Getting the Legal Lowdown on Yesterday&#8217;s Lawsuits, GameInformer.com, August 4, 2010, by Ben Reeves
DRM Firm Uniloc Files Suit Against Activision, Sony, Aspyr, Gamasutra.com, August 4, 2010, by Kris Graft
Is Duke Really Dead?, Game Informer Magazine, March 2010, by Bryan Vore

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Selected for inclusion in Minnesota Super Lawyer’s Rising Star, 2014-2020

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Trending Law, <a href="https://tcbmag.com/navigating-intellectual-property-thickets/">Navigating Intellectual Property: Securing Software Patents</a>, Twin Cities Business Magazine, September 2019
On the Cutting Edge: Updates on Patent Law, Data Privacy, and E-Commerce CLE (July 11, 2019)
Hot Topics, Trends, &amp; Updates: Cybersecurity, Patent Litigation Decisions, and the Implications CLE (July 11, 2018)
Ethics &amp; Elimination of Bias for IP Lawyers Series – Part II CLE, (June 14, 2018)
The death of patent reform? Why Leahy&#8217;s legislation matters, Lexology, July 9, 2014
Akamai Technologies, Inc. v. Limelight Networks, Inc.: Induced Infringement Does Not Require A Direct Infringer, September 2012
To Mark or Not To Mark? Forest Group, Inc. v. Bon Tool Co. Changes the Game, Intellectual Property Today, April 2010, with Tom Leach
How to Try a Patent Case on a Budget&#8230;and Win, IP Law 360, April 23, 2009, with Rachel K. Zimmerman
How to Try a Patent Case on a Budget&#8230;and Win, Minnesota Lawyer, March 9, 2009, with Rachel K. Zimmerman
RIAA Tempers Tactics, National Law Journal, January, 19 2009, with William D. Schultz
Notes &amp; Trends: Intellectual Property Law, Bench &amp; Bar of Minnesota, September 2009, October 2008, and October 2007, with Anthony R. Zeuli
Intellectual Property Counseling and Litigation: Ch. 75, Attorney-Client Privilege and Work Product Immunity in Intellectual Property, 2007 update with Ernest W. Grumbles III, with Matthew Bender, 2007

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Certified Information Privacy Professional &#8211; U.S. Private-Sector (CIPP/US) by International Association of Privacy Professionals (iapp)

Eric R. Chad

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