juridiko by Sean Hogle

Submit working code with every software patent application, EFF proposes

The Electronic Frontier Foundation has issued a proposal to the US Patent & Trademark Office that working code must be submitted with every software patent application and published as part of the patent grant. This is the EFF's latest attempt to ameliorate the problem of functional claiming.

Patent license covers reissued patents, Federal Circuit rules

The United States Court of Appeals for the Federal Circuit (the US appellate court responsible for patent appeals), in the case, Intel Corporation v. Negotiated Data Solutions Inc., has issued an interesting decision regarding the scope of a patent cross license.

The end of the patent system is nigh

Patent trolls are now going after end users. There's little chance a system as whacked as this can survive, at least in its present form. The only question is how long it will take.

Copyrightability of APIs: a small skirmish in a much larger war

The Electronic Frontier Foundation is launching a new effort ("No Copyright on APIs: Help Us Make the Case") to fight the copyrightability of APIs at the appellate level, presumably as an amicus brief participant in the Oracle v. Google appeal.

My question is, what's the point of fighting copyrightability of APIs if those same APIs can be readily protected by specification licenses or terms of use? The Amazon Web Services API is freely available because Amazon's terms say so. If Amazon decided that certain use of the API is no longer authorized (say, in order to lock out competitors), Amazon need only change the terms.  At a minimum, Amazon has a contract claim against violators, perhaps not as powerful as a copyright infringement claim, but a claim nonetheless and sufficiently chilling.

How clean is your software clean room?

Under copyright and trade secrets laws as such laws apply to source code, if a person without permission copies the source code or misappropriates a trade secret contained within the code (such as know-how), that person is liable to the owner of the copyrighted code or the trade secret embodied within that code.

For purposes of proving such a claim of copyright or trade secret misappropriation, it is not necessary to prove that actual copying occurred.  It is sufficient to show that (1) the accused party had access to the code, and (2) the accused party's code is substantially similar to the claimant's code.  Thus, for an independent software developer, accessing competitive or substantially similar code is fraught with legal risks, especially in the situation in which the company is developing software with the same or similar functionality as that which exists in competitive products or existing third party code that the company has already licensed.  In order to avoid claims of breach of such terms or claims of infringement, it may be advisable to establish "clean room" software development policies.

At-will employment language at risk

It's quite common for employment agreements and employee handbooks to include language that the employee's employment is at-will, that either employer or employee can terminate the employment relationship at any time for any reason, and that the at-will nature of the relationship can only be changed by the signature of a senior employer officer. The US agency charged with overseeing union elections and stopping unfair labor practices has publicly and successfully challenged this rather standard employment practice. Employers should take heed.

Proposed US legislation takes direct aim at patent trolls

US House of Representatives members DeFazio (D-Oregon) and Chaffetz (R-Utah) have introduced legislation that would require a losing party in a patent infringement or validity lawsuit to pay the other side's legal fees if the lawsuit "did not have a reasonable likelihood of succeeding", but only for computer or software patent lawsuits. The bill is called the SHIELD Act, or the "Saving High-tech Innovators from Egregious Legal Disputes" Act.

Prohibitions on patent validity challenges are unenforceable even in patent settlement agreements

Imagine if you will a not uncommon scenario: ABC Corporation accuses XYZ Inc. of infringing ABC's patents. After some investigation, XYZ's lawyers determine that the likelihood of successfully defending an infringement lawsuit that ABC may bring against XYZ is low, and that the patents in question appear valid. As a consequence, the parties enter into an agreement settling their dispute, in which XYZ agrees to pay a one-time fee to ABC  in exchange for ABC's promise to never sue XYZ for patent infringement. As part of this settlement, XYZ agrees that it will never challenge the validity of the patents in question or assist any other party to do so.

A few years later, XYZ is acquired by a competitor to ABC, Newco Inc. Newco, flush with cash and eager to challenge XYZ's market power, decides that XYZ's patents are an impediment to Newco's plans for global domination. Newco files a lawsuit in federal court seeking a declaration that the ABC patents are invalid.

Naturally, ABC files a motion to dismiss the suit, based on the settlement agreement signed between ABC and XYZ. Newco inherited the agreement and is now forbidden from challenging the validity of the patents in question, ABC asserts.

Seems rather straightforward - XYZ promised in a signed writing, in an arms-length negotiation between well-represented parties of equal bargaining power, never to challenge ABC's patents or assist others to do so. This promise was an integral part of a settlement agreement intended to fully and finally resolve the dispute between the two companies. Case closed, correct?

Why I Won't Sign Your NDA

Excellent explanation about why it does not always make sense to sign NDAs.

Employment arbitration is dead in California

Arbitration agreements in the employment context (whether via contract, policy or handbook) are dead in California. See .

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