I couldn’t find a description of this lecture, which I received via email invitation from an accountant my family in Germany has worked with over many years. I thought it was interesting enough to repost, so here it is.

Haeckl & Partner GmbH,
The Munich Network e.V. and
YES Partners
Cordially invite you to a discussion on

Doing Business in Europe
Bavaria – Your Key to Success

Followed by a networking reception with Bavarian specialties

When: Tuesday, November 1st, 2011, 5.00 pm – 8.00 pm
Where:

Stanford University Faculty Club
439 Lagunita Drive
Stanford, CA 94309
Red Lounge

Admission: $25 prepayment or $35 at the door

To make payment: Go to www.bridgellp.com and
go to the MAKE PAYMENT PAGE
To register: Contact slubbering@bridgellp.com
or contact Samantha at 818.988.2233

Agenda

Registration

5:00pm Welcome & Introduction (Moderation)
Introduction of the “German” team
E. J. Dieterle – Global Executive Search – YES Partners
John Gosch, CPA – Bridge, llp
Achim Hoelzle – FeldbergPacific Law Group

5:10pm Business Location Bavaria: Facts and Figures
Lucie E. Merkle| Executive Director,
Bavarian U.S. Offices of Economic Development, LLC

5:20pm Tax and Legal Aspects of Doing Business in Germany
Reinhard Häckl | CEO, Häckl und Partner GmbH

5:40pm Mobile Security: How to collaborate with Giesecke & Devrient
Thorsten Roeske | Head of Innovation and Alliances,
CTO Office, Giesecke & Devrient

5:50pm Enabling Technologies: How to collaborate with Robert Bosch
Cyril Vancura | Investment Director, Robert Bosch LLC

6:00pm Test & measurement, communications and broadcasting
equipment: How to collaborate with Rohde & Schwarz
Chris Eriksen, Region Sales Manager, Rohde & Schwarz

6:10pm How Silicon Valley TechVentures can benefit from
Munich Network´s strong TechIndustry members
Curt Winnen | General Manager, Munich Network e.V.

6:20pm How the German Silicon Valley Accelerator works
Dirk Kanngiesser | CEO
German Silicon Valley Accellerator Inc.

Reception with traditional Bavarian specialties

The first challenge to the America Invents Act is against the termination of the private right to enforce false marking. The end to false marking, providing that the only private litigants with a claim are competitors who can show actual harm, became effective immediately after President Obama signed the America Invents Act. It applied to all cases, including those pending. Since then, numerous cases have been dismissed, including some sua sponte.

Ken Brooks had a pending case against Dunlop Manufacturing, in the Northern District of California, San Francisco for false marking, filed back in 2010. In response to Dunlop’s Motion to Dismiss, under the new America Invents Act rules, Mr. Brooks brings a constitutional challenge to the AIA. In his memorandum Mr. Brooks states that he relied upon the statutory right which existed prior to the passage of the AIA, and that this destroyed an existing property interest. He cites to U.S. ex re. Stevens v. State of Vermont Agency of Natural Resources (162 F.3d 195, 2nd Circuit 1998) which held that qui tam plaintiffs have a private property interest in the outcome of such cases.

While the brief is written rather flamboyantly, and likely to appeal to lay readers not the judge, the point is interesting. Mr. Brooks did in fact invest some amount of money in pursuing this case, in the clear expectation of recovery, if he could prove a violation of the false marking act.

Of course, the Supreme Court held unanimously in the United States v. Carlton that retroactive tax laws were constitutional, thus making it unlikely that Brooks would succeed in his claim.

Furthermore, there are at least two cases that held that qui tam actions for false marking are unconstitutional, prior to the passage of the America Invents Act. This may mean that the court would find the act a mere clarification of an existing standard.

The more interesting question is whether, if any challenge is successful, the entire statute would be thrown out, since the America Invents Act does not include a severability clause.

Via Greg Aharonian‘s eponymous newsletter.

This is a handy table of timings and applicability of the various changes in the Act.

Protect IP Act

Zoe Lofgren discussed the Protect IP Act which has a multi-pronged approach, to systemic piracy:   attack via removing the money, Visa and credit providers must cooperate; ensure no money via advertising; force ISPs to remove them from the Net: force DNS providers to remove pointers; and force search engines and other websites to remove all hyperlinks.  It also includes a private right of action to enforce these prongs.

Lofgen supports all money restriction, but worries about DNS security disruption and private right of action.  Private right of action, like with patent trolls, marking trolls, and copyright trolls, will lead to what is in effect legal extortion.

DNS issue may destroy security infrastructure (as people turn to less secure DNS providers).  A recent paper on this topic was persuasive to her.

By pushing through this legislation it will also destroy the budding cooperation between content providers and web infrastructure companies, which will lead to bad results.

Lofgren’s advice:  Follow the Money. We can develop a scheme to prohibit profit, and we can do this without destroying network security.  This will handle almost all of the issues.

State of the net is challenged.

Lofgren opposes Protect IP Act (because of DNS, search engine/website, and private right of action), but is only one of a handful in the House. Senate would likely also pass it, except for Wyden’s Senate hold.

HR1981: Protecting Children from Internet Pornographers Act:  

This law would require ISPs to acquire name and credit card info, and retain record of all sites visited by all. ISPs would make this information available to government, without a warrant. Cover for massive expansion of govt power. It should be HR 1984, since it’s about total surveillance.

Lofgren notes that we must speak up, or this will pass. FBI wants this. Congress will give it to them, unless we speak up. Passed out of judiciary committee. Will pass, unless people speak up.

Q&A:

The new PTO offices should include an office in California, and the California delegation has spoken to the Commerce Department about this. They have also discussed with SJSU the possibility of providing a free location of the office, which may tilt the field toward Silicon Valley, instead of someplace cheaper.

Internet taxation:  Republican opposition to taxes in general makes this unlikely.

All Internet companies combined spend less on lobbying than one single phone company. This explains some decisions.  Technology companies need better lobbyists, instead of flying in & flying out.

We should be concerned, because many members of Congress don’t understand how search engines, and other technologies, work. (ad in Hill paper re @Google stealing content, no real source in ad, but probably MS.)

ICE asserts jurisdiction on copyright enforcement. And they don’t know what they are doing.

DOJ owned and operated by Hollywood. Take-downs based on forfeiture rules. IP Tzar has tremendous lobbying and influence by Hollywood and Recording Industry.

ICANN to be taken over by UN?  China may wish this to assert control over the Internet via UN power, e.g. small client state votes. If we can, we should keep ICANN for free Internet.  Keep it independent is key.

She also voted against the America Invents Act, although she was one of the original sponsors of the patent act some years ago.  She has been working on this for 10 years.  But this version, in her view, has become so heavily tilted away from IP creators as to be a negative overall.

I’m trying to figure out corner cases under the new America Invents Act rules. In most cases, people won’t be directly affected by the rule change, but I can see the below four scenarios coming up.

• Scenario #1: Inventor A invents and immediately discloses (by publishing in obscure journal). Inventor B invents, and files a patent application, but does not disclose. Inventor A files a patent application, after Inventor B. Who if anyone gets a patent?
• Scenario #2: If Inventor A and Inventor B both disclose at the same conference. Both then file a patent, Inventor A files before Inventor B. Who if anyone gets a patent?
• Scenario #3: Inventor A discloses X. Inventor B files a patent for X+Y. Subsequently, Inventor A files a patent for X+Y. Who, if anyone, gets a patent, on X, Y, and X+Y.
• Scenario #4: Inventor A has a non-enabling disclosure. A third party C publishes an enabling disclosure. Inventor B files a patent on the invention. Subsequently, Inventor A files a patent. (Timing is A disclosure, C publication, B filing, A filing). Who, if anyone, can get a patent?

I’ve pulled together a list of each change, and categorized it in terms of timing.  I highlighted those items that will likely change the way we practice.

Effective immediately

• Prior commercial use defense (any patent issued on or after date of enactment)
• Venue moved to District Court for Eastern District of Virginia
• Funding agreements of government with non-profit organizations
• Tax strategies are part of the prior art (all patents issued after the effective date)
• Best mode may not be the basis for canceling or holding invalid a patent (all proceedings commenced on or after date)
• Marking statutory damages only available to US, actual damages suits available to competitors.  (to all cases, including those pending)
• Joinder:  Restriction of joint litigation only if it’s the same product (all civil actions commenced after date)
• Prohibition against human organism patents (for all pending or later filed applications)
• +1 day for extension of patent term (Wilmer-Hale Act, for applications for extension of time pending, filed after, or subject to judicial review)
• Inter partes review update (applicable to all patents, regardless of filing date)

Effective one year from the enactment

• Post-grant review (applies to all patents, regardless of filing date)
• Pre-issuance submissions to the patent office (applies to all patent applications)
• Supplemental Examination (applies to all patents)
• Lack of Advice of Counsel cannot be used to prove willfulness
• Business Method patents available for post-grant review (valid for 8 years only)

Effective 18 months from the enactment

• First inventor to file
• Change in grace period (requires inventor disclosure)
• Inventor’s oath and declaration changes, changes allowing entity having sufficient proprietary interest to file without inventor
• Derivation proceedings
• Repeal of statutory invention registration

If you see any mistakes, or items missing, please let me know so I can correct it.

The act now goes to the President, who has said he will sign it.  Some of the changes of the law will go into effect immediately, while some will be delayed by up to 18 months after the President signs it into law.  I will be posting a detailed analysis of the law, and what changes will be effective now, and later.

You can find the final version of the law, as passed by the Senate at Thomas.gov.

As I mentioned in my prior post, the US judge in this case slapped a temporary restraining order on Zynga, so they could not enforce a Brazilian injunction against Vostu. The Brazilian injunction was obtained without a full hearing, and without notifying Vostu, in Brazil, after Zynga sued Vostu in the US court.

The Brazilian order has been stayed by the Brazilian court, while Vostu appeals. The US judge has therefore disolved the TRO, and said that no injunction is likely to be forthcoming. Zynga filed a stipulation with the court in which it said it would not pursue the recovery of any damages in Brazil that were recoverable in the U.S. litigation.

The two cases are going on in parallel again, but the US court has the damages issue in hand. Given that Zynga will not pursue damages in Brazil, they may choose to stop litigation there.

If you look at the pictures you will see why Zynga said “ it is one thing to be inspired by Zynga games, but it is entirely different to copy all of our key product features…”

Vostu’s purpose, according to Zynga is to copy literally every feature of every Zynga game.

Zynga sued Vostu in District Court in California, on June 16th.

Then, they filed another lawsuit on August 2nd in Brazil, Vostu’s home country. The Brazilian judge granted an injunction quickly, telling Vostu it had to shut down its games within 48 hours.

The U.S. District Judge, Edward Davila was not amused. He issued an order restraining Zynga from enfordcing the Brazilian decision. In particular, he noted “Zynga—which chose the U.S. forum first—now seeks to enforce an injunction it obtained abroad that would paralyze this Court’s ability to decide this case.”

So, while Zynga won a round in Brazil, their decision to file the case initially in the U.S. prevents them from enforcing the Brazilian court’s decision.

Lesson learned: Choose your jurisdiction carefully. Especially when looking for an injunction, consider finding a fast jurisdiction, and filing there first. U.S. judges will not look kindly upon a later suit impacting their jurisdiction.

David Kappos, Director of the USPTO recently participated in an hour and a half of Q&A with Eileen McDermott of Managing IP (webcast available here) , discussing how implementing the new patent rules will change Patent Office practice.

He was overall quite positive about the changes.  Below I summarize some the aspects of his comments that I thought were particularly relevant.  My comments are in italics.

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