Duane Morris LLP – California Federal Court Dismisses Trade Secret and Other Tort Claims for lack of specificity in the initial complaint about what the alleged revealed trade secrets were.

It will be interesting to see how this ultimately plays out since most trade secret holders don’t want to reveal their trade secrets early in any suit.

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Today’s Supreme Court ruling against Aereo proves that even the younger Justices don’t “get it”. What is really ironic is that the over-the-air broadcasters will find this a Pyrrhic victory. The Aereo service is used by people who don’t own TV’s (except to use as display devices for their computers, e.g., Netflix) and don’t subscribe to cable – broadcasters (particularly the local stations) have just cut off their best hope for capturing these eyeballs.

And who are these people? The younger generation. Neither of my daughters (~30 years old) have TV’s and, except for special events (e.g., World Cup) have little interest in getting cable. They certainly would not pay for cable to get their over-the-air local stations.

Over the air TV is becoming the Republican party of content delivery – its audience is growing older every day.

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It is easy to focus on a story when it hits the airwaves but it is also important to follow it to its conclusion. If you remember, Tenenbaum downloaded and distributed over 5000 songs before finally being sued. He lost his case and was hit with a $675,000 fine.

As reported by McDermott Will & Emery:

“Following the lead of other courts addressing statutory penalties for illegal music downloading, the U.S. Court of Appeals for the First Circuit upheld a $675,000 fine for downloading and distributing 30 songs.  Sony BMG Music Entertainment  v. Tenenbaum, Case No. 12-2146 (1st Cir., June 25, 2013) (Howard, J.).”

They continue:

The 1st Circuit examined the purpose of the Copyright Act’s statutory damages and Tenenbaum’s behavior to determine if $675,000 met Williams’standard for constitutionality.  The 1st Circuit found that in 1999 Congress increased the Copyright Act’s minimum and maximum statutory awards specifically because of new technologies allowing illegal music downloading.  The record companies presented evidence that Tenenbaum’s activities had led to the loss of value of its copyrights and reduced its income and profits—precisely the harm Congress foresaw.  The Court went on to find that Tenenbaum’s conduct was egregious—he pirated thousands of songs for a number of years despite numerous warnings.  The Court held that “much of this behavior was exactly what Congress was trying to deter when it amended the Copyright Act.”  The 1st Circuit rejected Tenenbaum’s argument that the damages award had to be tied to the actual injury he caused, relying on Williams to find that the damages were imposed for a violation of the law and did not need to be proportional to the harm caused by the offender.

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“Indicate precisely what you mean to say…”

Good advice for letting someone know you’ll still need them when they’re 64. And also good advice when writing up patent specifications. Consider what happened to Clyde Nason when he tried to patent a miniature pump. The heart of the device is a loop of shape memory alloy (SMA) that engages one tooth of a “gear”, as shown in the figure below.  As the SMA is cycled back and forth through it’s transition temperature the loop alternately pulls on the engaged tooth, rotating the “gear”, and extends to engage the next tooth.


SMA motor

So what went wrong?

The examiner went searching for pumps that were driven by SMA material and for rotary gears driven by SMA material and was able to find prior art in both those areas. Voila – Nason’s invention is “obvious” since you can combine these two to get an SMA-driven-gear driven pump, right? Wrong, since, among other reasons, the gear driven by SMA in the prior art was actually a linear rack that rotated a pinion gear…not really applicable to using SMA to directly rotate a gear.

Happily, the Patent Board of Appeals ultimately threw out the examiner’s rejection but could Nason have avoided the extra expense of a appeal?

It’s always hard to predict what motivates an examiner to go off the deep end and make obviousness rejections that make no sense, but the one thing I always like to keep in mind is that YOU are the expert in your particular invention and the EXAMINER doesn’t have the time to dig deeply into your invention…and, frankly, is likely to be a POSITA (Person of Ordinary Skill In The Art) at best. Thus, it is incumbent on you, the expert, to teach the ordinarily skilled examiner about your invention. And the best way to do that is, IMHO, is to be as precise and unambiguous as you can in preparing your patent specification.

In Nason’s case, his choice of the word “gear” to describe the round item with teeth in his pump was a mistake. It is not a gear, it is a ratchet or cogwheel. And the loop of SMA is acting as the pawl to ratchet the wheel around. Had Nason called it a cogwheel and described the action of the SMA as a pawl I expect the examiner would not have searched for gears driven by SMA material. Of course, the real problem here is the appalling (no aural pun intended) lack of mechanical understanding of the examiner, but nevertheless your goal is to get your patent allowed and that is best accomplished by realizing that YOU should lead the patent examiner by the nose, if necessary, to the proper understanding of your invention vis-a-vis the prior art.

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