NEWS
Automated Telephone Line Open
We just opened up a new service: a telephone line: (949) 943-8311 . You can call and get answers to basic Intellectual Property questions. We have text FAQs available on our website. We also have a text chatbot available too that uses a personalized Chat GPT. The Chatbot accesses information from the FAQs and Bob’s books: White Space Patenting, and Green Fields Patenting.
But if you want to ask the questions with voice rather than text them, this might be the option for you.
The new Voice line can be accessed at (949) 943-8311.
Discovery Gamesmanship Backfires: A Lesson in Playing Fast and Loose
The ol’ “Switcheroo”: One Argument in Discovery, the Opposite in Trial
Every so often, the Federal Circuit hands down a decision that’s less about patents and more about human nature. Magēmā (pronounced: Maggie-May) Technology v. Phillips 66 is one of those cases.
In the initial trial, Phillips convinced the magistrate during discovery that Magēmā didn’t need actual test data. It would be “too dangerous” to obtain the test data, so formulas would be good enough. Then, once trial rolled around, Phillips told the jury the exact opposite: no test data, no infringement.
Magēmā objected but the district court overruled, and the jury came back with a broad-brush “no infringement.”
The Appellate Judge Notices the Discrepancy
But on appeal, the Federal Circuit said, hold on a second. When a party spends the whole trial hammering on a theory it promised wasn’t necessary in discovery, you don’t get to call that “harmless error.” Judge Bumb, sitting by designation, had the perfect metaphor: this wasn’t pepper sprinkled here and there — the whole trial was marinated in it.
Phillips 66 is Forced to Play by Its Initial Argument
So, new trial. Phillips’ gamesmanship, instead of locking in a win, ended up boomeranging right back at them.
Magēmā also tried to raise a claim construction issue under O2 Micro, but that one fizzled. You can’t complain about claim scope being left to the jury if you never asked the court to construe the terms in the first place.
Because I hate litigation gamesmanship, I am very happy to see this outcome. Unfortunately it is allowed way too often. But at least this time, the party playing the games didn’t profit.
Some related articles on court shenanigans: Generic Drug Label Doesn’t Induce Patent Infringement Just by Listing Optional Refrigeration
March-In Madness: Harvard, Bayh-Dole, and the Trump Administration
When politicians get involved in patent law, things usually get messy — and the latest spat between the Trump Administration and Harvard over the Bayh-Dole Act is no exception.
What Is the Bayh-Dole Act and Why It Matters
The 1970s Patent Problem: Why Congress Passed Bayh-Dole
Back in the 1970s, the U.S. government had a problem: it was sitting on a mountain of patents — roughly 28,000 of them — generated from taxpayer-funded research. Fewer than 5% of those patents were ever licensed, let alone commercialized. Why? Because government ownership meant non-exclusive licenses, bureaucratic hurdles, and no incentive for anyone to put serious money into development.
How the Bayh-Dole Act Changed University Patent Ownership
Enter the Bayh-Dole Act of 1980. Congress flipped the script: universities, nonprofits, and small businesses could now keep the patents from federally funded research, provided they played by certain rules. It was a win-win: researchers got the chance to commercialize, investors got certainty, and the public (in theory) got products instead of dusty patent files.
Understanding March-In Rights Under Bayh-Dole
But Congress also built in a big stick — the “march-in” rights* If an institution wasn’t doing its job, the government could “march in” and force licensing of the invention.
The Four Legal Triggers for Federal March-In Authority
The statute lists four triggers:
- No practical application.
- Health or safety needs not being met.
- Public use requirements not satisfied.
- Failure to substantially manufacture in the U.S.
Why No Administration Has Ever Exercised March-In Rights
Sounds dramatic, right? Except here’s the kicker: in over forty years, no administration has ever actually marched in. Plenty of petitions, lots of noise — zero follow-through.
Harvard and the Trump Administration: A Bayh-Dole Showdown
According to reports, the Trump Administration dusted off those march-in provisions and pointed them at Harvard. Commerce sent a letter accusing the university of failing to comply with Bayh-Dole. Harvard fired back, calling the move political payback for its defense of academic freedom.
Political Pressure or Legal Enforcement?
Now, whether you buy Harvard’s explanation or the Administration’s, the bigger point is this: a march-in threat is almost always more about leverage than law. It’s the sword hanging on the wall. Agencies wave it around when they want to pressure a university or company to fall in line.
Bayh-Dole Compliance Requirements for Federally Funded Research
Here’s the practical takeaway for innovators: if you’re working with federal funding, Bayh-Dole compliance isn’t optional. You need to file invention disclosures on time, elect title properly, and make sure your commercialization plans check the right boxes. Screw up the paperwork, and you give an agency an opening — political or not — to come knocking.
Why March-In Threats Matter for Startups and University Spin-Outs
And while Harvard can weather a march-in threat, a startup or small university spin-out might not. Investors don’t like uncertainty, and nothing says “uncertain” like the government hinting it could hand your patent to someone else.
March-In Rights: Bigfoot of Patent Law?
The Trump–Harvard drama is a reminder that Bayh-Dole’s march-in rights are the patent world’s version of Bigfoot: everyone talks about them, nobody’s seen them in the wild, but the threat alone can be enough to change behavior.
* There is a section on “march-in rights in the wikipedia article referenced for the Bayh-Dole Act. It’s about half way down the page.
For a related article on USPTO news concerning the Trump administration: The Trump-Lutnick Patent Tax
Call of Duty Lawsuit Ends Without Attorneys’ Fees for Activision
The Fifth Circuit just weighed in on a copyright fight between retired wrestler Booker T. Huffman and video game giant Activision. Huffman claimed that Activision’s Call of Duty: Black Ops IV “Prophet” character infringed his G.I. Bro comic book poster. A jury sided with Activision, but the company wanted Huffman to foot the bill for its legal fees—arguing the case was frivolous.
The district court said no, and the Fifth Circuit backed that decision. Relying on the Supreme Court’s Fogerty factors, the court found Huffman’s claims weren’t frivolous or objectively unreasonable, noting the case touched on unsettled areas of copyright law. The panel stressed that fee awards aren’t automatic, and the trial judge’s detailed six-page analysis showed no abuse of discretion.
Not everyone agreed. In a sharp dissent, Judge Oldham called the suit “speculation piled on fantasy piled on a pipe dream” and said Activision should have been compensated for defending a baseless $32 million claim.
At the end of the day, Activision won the battle but had to eat its own legal fees—reminding us that “winning” in court doesn’t always mean walking away richer.
Booker T Huffman from his wrestling days.
The G.I. Bro Comic Poster
Activision’s Call of Duty: Black Ops IV “Prophet” character
For more information on copyright infringement and litigation, see our FAQ section.
Secrets, Secrets Are No Longer Hard to Keep (in Court)
Previously, courts required trade secret plaintiffs to identify their trade secrets with particularity. That requirement applied before defendants had to respond to discovery. In practice, however, this rule created a familiar problem.
No matter how a plaintiff described its trade secrets, defendants often refused to respond. They argued that the identification was still not particular enough.
At the same time, courts typically declined to step in. They would not say whether the identification was sufficient. Nor would they explain what more was required. As a result, many trade secret cases stalled early. Some went nowhere at all.
That approach changes with Quintara Biosciences, Inc. v. Ruifeng Biztech, Inc. The court held that the Defend Trade Secrets Act (DTSA) imposes no early “reasonable particularity” requirement. A plaintiff need not fully define its trade secrets at the outset. Instead, the adequacy of the identification is addressed later. It is usually resolved at summary judgment or trial.
This rule differs, however, from California law. Cases under California’s Uniform Trade Secrets Act (CUTSA) still follow a stricter path. CUTSA requires plaintiffs to identify alleged trade secrets with “reasonable particularity.” That obligation applies at the very start of litigation.
You might also be interested in our article: When Inventors Leave: A Hard Lesson in Trade Secret Law
AI’s secret ingredient: Text, Data, and Fair Use
Data Mining Includes Copyrighted Materials
Text and data mining (TDM) means collecting large volumes of data from the internet. From that data, large language models identify patterns and generate new text. But accessing massive amounts of text quickly raises copyright concerns, as it inevitably steps on copyrighted toes.
Fair Use as a Justification for Using Copyrighted Materials
However, copyright law offers a possible safety valve: the Fair Use Doctrine. Under fair use, copyrighted materials do not always require explicit permission. In the US, many large technology companies rely on fair use to justify training AI systems on copyrighted works.
Those factors are:
- the purpose and character of the use,
- the nature of the copyrighted work,
- the amount and substantiality of the portion used, and
- the effect on the market for the original work.
Fair use allows limited use of copyrighted material in specific circumstances, but it is never automatic or guaranteed. Instead, courts apply a case-by-case analysis using four factors.
Class Action Responses to the Fair Use Justification
Several class actions argue that AI training is not fair use. Their claim focuses on the scale of copying involved.
So far, courts have largely disagreed, finding AI training permissible when used for pattern recognition.
However, that conclusion depends on models not reproducing expressive content.
Still, the legal landscape remains unsettled, and several cases are ongoing. Future rulings could require broader licensing frameworks for AI training.
Fair Use has been a consistent subject of attention with AI. Here are some previous articles on the developments:
Fair Use and AI Training: Buy it or Bye-Bye
Doctrine of Equivalents
What Is the Doctrine of Equivalents in U.S. Patent Law?
The Doctrine of Equivalents is a legal principle in U.S. patent law that allows a court to find infringement even when the accused product or process does not literally fall within the scope of a patent claim, as long as it is equivalent in a meaningful way.
The Function-Way-Result (FWR) test is one of the primary tools used to assess this equivalence.
How the Function-Way-Result (FWR) Test Works
Under the FWR test, a court or jury evaluates whether the accused product or process:
- Performs substantially the same function as the claimed invention.
- Operates in substantially the same way as the claimed invention.
- Achieves substantially the same result as the claimed invention.
If all three criteria are met, the accused product or process may infringe under the doctrine of equivalents.
Applying the Function-Way-Result Test: A Nail-and-Screw Example
The classic analogy is: suppose a patent claim covers a method of joining two wooden planks together “using a nail.” An accused product instead uses a screw to fasten the planks. Although the literal language of the claim specifies a nail, a court applying the doctrine of equivalents could find infringement. That is because both the nail and the screw perform the same function of fastening the planks together, they operate in substantially the same way by penetrating the wood and holding the pieces in place, and they achieve the same result of creating a secure joint. Thus, under the Function-Way-Result test, a screw may be considered an equivalent to a nail in this context.
Limits on the Doctrine of Equivalents: Prosecution History Estoppel
Note that the Doctrine of Equivalents is generally not available for claim elements that were narrowed during prosecution for reasons related to patentability, unless the patentee can successfully rebut the presumption of estoppel. However, if the amendment was not related to patentability, or the patentee can show the change was tangential, DOE may still apply.
You might be interested in a recent article about the doctrine of equivalents: When “Close Enough” Isn’t Good Enough: Colibri v. Medtronic and the Push–Pull of Patent Law