Federal Circuit Paves Way for Additional Discovery in Autonomous Car Case

The Federal Circuit reinforced limits on its own jurisdiction by rejecting an appeal brought by intervenor Anthony Levandowski in the much-publicized case Waymo LLC v. Uber Technologies, Inc., et al., No. 17-cv-00939-WHA (N.D. Cal.). The Federal Circuit’s September 13, 2017, decision relies heavily on – and leaves intact – two District Court rulings compelling the production of certain potentially important discovery materials.

According to Waymo’s allegations, Levandowski, its former employee, improperly downloaded information relating to Waymo’s driverless vehicle technology, and then left Waymo to found Ottomoto (“Otto”), which was subsequently acquired by Uber.  Before Uber’s acquisition was complete, attorneys for Otto and Uber jointly retained Stroz Friedberg, LLC (“Stroz”) to investigate Otto employees who had previously worked for Waymo, including Levandowski.  The resulting report by Stroz is at the heart of the discovery dispute at issue.

During discovery, the Magistrate Judge granted Waymo’s motion to compel Otto and Uber to produce the Stroz report, and also refused to quash Waymo’s subpoena to Stroz seeking the report and related documents.  Both rulings were affirmed by the District Court.  His subsequent appeal to the Federal Circuit acknowledged that the appellate court’s two main avenues to jurisdiction – final judgments relating to patents and certain special categories of interlocutory orders – would not apply in this case.  Instead, Levandowski argued that his appeal should be treated as a petition for a writ of mandamus pursuant to 28 U.S.C. 1651(a), a general statute that grants all courts created by Congress the power to issue “all writs necessary or appropriate in aid of their jurisdictions[.]”  Levandowski argued that such a writ was necessary because disclosure of the Stroz report would violate his Fifth Amendment right against self-incrimination.  He also argued that the Perlman doctrine, which permits a privilege-holder to immediately appeal a discovery order aimed at a disinterested third-party custodian, should apply.

In rejecting each of Levandowski’s arguments, the Federal Circuit first noted that a writ of mandamus was only appropriate if, among other things, the petitioner had no other adequate means of relief, and could show a clear and indisputable right to issuance of the writ.  According to the court, a post-judgment appeal would suffice to protect Levandowski’s rights.  Additionally, he failed to establish a clear right to issuance of the writ, as the District Court’s legal conclusions were proper, including the findings that Levandowski couldn’t invoke the attorney-client privilege, work-product doctrine, common interest doctrine, or Fifth Amendment to prevent disclosure of the Stroz report.  Lastly, the court rejected the doctrine’s application in this case because Uber is not a disinterested third-party, but is instead a defendant in the case.

For more information on intellectual property law, trade secret issues, or the implications of Waymo, please contact Kathleen Barnett Einhorn, Esq., Director of the firm’s Complex Commercial Litigation Group at keinhorn@genovaburns.com, or Jennifer Borek, Esq., a Partner in the Complex Commercial Litigation Group at jborek@genovaburns.com.

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Supreme Court to Review Whether “Offensive” Names Can Be Trademarked

The U.S. Supreme Court agreed today to review the Federal Circuit’s decision to strike down the Lanham Act’s ban on “disparaging” trademarks.  The case, Lee v. Tam, No. 15-1293, involved an Asian American dance-rock band’s attempt to trademark their name THE SLANTS. The U.S Patent and Trademark Office (USPTO) refused, citing the Lanham Act’s prohibition on “disparaging” trademarks. The Federal Circuit held that this prohibition violated trademark applicants’ First Amendment Rights. (See Litigation Law Blog’s previous post about the Federal Circuit’s decision from December 23, 2015.)

The Supreme Court’s decision could impact the more famous battle over an attempt to cancel the trademark registration for the NFL’s Washington Redskins as disparaging to Native Americans.

In the Washington Redskins case, a federal district court had ruled that the football team’s trademark disparaged Native Americans.  The team had appealed the case to the Fourth Circuit Court of Appeals, which was scheduled to hold oral argument in December.  On October 18, 2016, the Fourth Circuit agreed to stay consideration of the appeal until the Supreme Court decides Lee v. Tam.

For more information on the Lanham Act or the Supreme Court’s grant of certiorari in Lee v. Tam, please contact Kathleen Barnett Einhorn, Esq., Chair of the Firm’s Complex Commercial Litigation Group, at keinhorn@genovaburns.com or Jennifer Borek, Esq., Partner in the Complex Commercial Litigation Group, at jborek@genovaburns.com.

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Federal Circuit Gives Samsung Another Victory Against Apple In The Smartphone Patent War

Update: On March 21, 2016, the U.S. Supreme Court granted Samsung’s certiorari petition regarding a separate patent (a design patent and related trade dress registration for the design elements of the iPhone).  The Court agreed to review a limited question regarding the types of damages available in such cases: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?”

In another twist of fortunes in the long-running smartphone patent war between Apple and Samsung, the U.S. Court of Appeals for the Federal Circuit has once again overturned Apple’s patent infringement jury verdict – this time for $119.6 Million – against Samsung. The Court left intact Samsung’s small $158,400 verdict against Apple.

The case was initially filed by Apple in February 2012, in the United States District Court for the Northern District of California, alleging that Samsung infringed eight of Apple’s patents used on the iPhone. Not to be outdone, Samsung countersued alleging that Apple had infringed eight of its patents used in Samsung’s Android smartphones.

After a series of trial rulings and appeals, the parties conducted a 13-day trial and the jury awarded $119.6 million to Apple based on a finding that Samsung had infringed Apple’s “structures,” “slide to unlock,” and “autocorrect” patents. Samsung was not nearly as successful, with the jury awarding it a mere $158,400 in damages for the infringement of its “camera systems” patent.

Though Apple won the trial court battle, on appeal, the Federal Circuit has granted ultimate victory to Samsung, finding that Apple’s “slide to unlock” and “autocorrect” patents were invalid (and therefore not patentable) because the evidence indicated that the inventions would have been “obvious” to a person having ordinary skill in the art, in light of the publically available information at the time the inventions were made. The Court also reversed the jury’s decision that Samsung had infringed Apple’s “structures” patent based on a technical finding that the patent required the use of a “analyzer server” and Apple failed to present sufficient evidence to allow a jury to conclude that the Samsung software met this “analyzer server” limitation. Apple has a small chance of turning the wheel of fortune back if an en banc Federal Circuit agrees to hear the case or if the U.S. Supreme Court agrees to grant certiorari.

As this case demonstrates, fortunes can be won and lost on appeal and, as such, it is critically important to evaluate the strengths and weaknesses of each case even after a jury verdict is rendered.

For more information regarding patent litigation and appeals or the Court’s Federal Circuit’s decision, please contact Kathleen Barnett Einhorn, Esq., Director of the firm’s Complex Commercial Litigation Group at keinhorn@genovaburns.com, or Jennifer Borek, Esq., a Partner in the Complex Commercial Litigation Group at jborek@genovaburns.com.

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