Additional Case and Project Examples

• District Court copyright declaratory judgment litigation:
  • Mockingbird Foundation v. Luong, No. 19-cv-05671-RS (ND Cal.): On February 20, 2020, Judge Seeborg issued an order denying the defendant’s motion to dismiss the Complaint filed by the clinic seeking a declaration that it had not infringed copyright.
  • Anderson v. Seliger, No. 5:19-cv-05630-EJD (ND Cal.):
• Supreme Court amicus curiae brief:  TC Heartland v.. Kraft Food Group: Clinic students Michael Hoosier, ’18, and Stephen Liu, ’17, prepared and submitted an amicus curiae brief on behalf of Engine Advocacy urging the Court to restore Congressionally crafted patent venue rules.
• Supreme Court amici curiae brief:  Impression Products, Inc., v. Lexmark International, Inc.  Advanced clinic student Katie McNutt, ’17 and full-time student Michael Hoosier, ’18, prepared and submitted an amici curiae brief on behalf of 30 intellectual property law professors and the American Antitrust Institute.  McNutt had previously drafted the Clinic’s amicus brief to the Supreme Court successfully supporting the petition for cert in this case.
• Supreme Court amicus curiae brief: Michelle Lee v. Simon Shiao Tam: Advanced clinic student Stephen Liu drafted an amicus brief to the Supreme Court on behalf of Public Knowledge in a trademark appeal considering whether Section 2(a) of the Lanham Act, which empowers the PTO to refuse to register “disparaging” marks, is facially invalid under the free speech clause of the First Amendment.  The clinic’s brief urged the Court, however it decided the issue of a trademark applicant’s First Amendment rights, to take care not to undermine the important, competing rights of the public at large to use trademarked terms for criticism, parody, comparison and political and other speech.
• Supreme Court amicus curiae brief; Star Athletica v. Varsity Brands, Inc.: During the spring quarter 2016, clinic students Bill Koch and Sydney Lakin submitted an amicus brief to the U.S. Supreme Court in support of a cert petition on behalf of a group of innovative 3D printing companies.  The brief explained to the Court that importance of the appeal extended well beyond its immediate context of fashion and was significant for the continued development and adoption of 3D printing technology as well.  The brief urged the Court to grant cert to resolve a multi-way circuit split and articulate a uniform standard for conceptual separability under copyright law.
• Commil USA, LLC, v. Cisco System, Inc.:  Students submitted, as co-counsel with Public Knowledge, an amicus curiae brief urging the U.S. Supreme Court to protect innovation by preserving the current intent requirement for liability for inducing copyright infringement. Commil addresses whether an alleged patent infringer’s good faith belief that a patent is invalid is a defense to inducement of patent infringement under 35 U.S.C. § 271(b). The Clinic’s brief, on behalf of Public Knowledge, The R Street Institute, The American Library Association, The Association of Research Libraries, The Association of College and Research Libraries, and the Center for Democracy and Technology as amici, argued that a low intent requirement is irreconcilable with the current, essential standard for copyright inducement – that a party must have culpable intent to cause acts of infringement rather than merely received notice of claims of infringement.  The  brief expressed particular concern that the wrong standard could risk spilling over into copyright law due to the historic kinship between patent and copyright law and that substantial dangers could result, including putting product and service providers at the risk of copyright infringement liability, potentially eviscerating the vital Sony substantial non-infringing use exception to contributory infringement, and ultimately stifling innovation by impeding the advancement of technology through the threat of inducement liability.

• Alice Corp. v. CLS Bank:  Students co-authored and submitted to the US Supreme Court an amicus curiae brief.  The brief, co-authored with the Computer and Communications Industry Association, urged the Court to protect innovators from harmful, overbroad patents, noting that software not tied to particular hardware was unpatentable because it represents an “abstract idea” that is ineligible for patent protection and because it constitutes impermissible “functional claiming.”  The brief expressed particular concern that providing protection for the types of patents at issue would enable patent-owners to preempt all ways of implementing an idea, regardless of whether the patent-owner had actually invented them.

(Pharmaceutical Patent and Antitrust:)

• Mylan Pharmaceuticals Inc. v. Warner Chilcott, et al. (3rd Circuit):  The Clinic filed its third amicus curiae brief in a pharmaceutical “product hopping” case, this time an appeal to the Third Circuit addressing the antitrust treatment of product hopping under the Sherman Act.

• New York v. Actavis PLC, Forest Laboratories LLC (2nd Circuit):  Students represented leading IP and antitrust law professors to prepare and submit an amicus brief to the Second Circuit in an appeal addressing whether so-called pharmaceutical “product hopping” constitutes anticompetitive conduct under the Sherman Act within the complex regulatory structure of the Hatch-Waxman Act.  Product hopping is a strategy whereby branded drug manufacturers make changes to their existing drugs near the end of their patent life in order to thwart the substitution of generic drugs and thereby delay generic entry. The Clinic’s clients were almost all of the leading scholarly experts on the application of IP and antitrust law in regulated industries; they included the co-authors of the seminal treatises on antitrust law and on IP and antitrust, as well as authors of the primary academic articles analyzing  product-hopping and other anticompetitive conduct in the context of Hatch-Waxman.  The brief explained that antitrust law is an appropriate means to protect Hatch-Waxman’s carefully crafted statutory scheme – a scheme designed by Congress specifically to promote generic  competition—from predatory regulatory gaming behavior that can produce anticompetitive harm, stifle innovation and raise drug prices for consumers, the government and third-party payers.The two Juelsgaard Clinic students who drafted this amicus brief then traveled to New York to watch oral argument in the case before the Second Circuit, and then debriefed with staff from the New York AG’s office afterward.

• Mylan v. Warner Chilcott, No. 12-3824 (E.D. Pa.):  Students submitted an amicus brief to the district court considering summary judgment in another pharmaceutical “product hopping” case. Once again, the Clinic’s clients were the leading scholarly experts on IP and antitrust law iand on product-hopping and other anticompetitive conduct in the context of Hatch-Waxman.

• FDA Draft Guidance on Laboratory Developed Genetic Tests: Three winter 2015 students submitted detailed comments to the Food and Drug Administration (FDA) on behalf of three Stanford pharmacogenomics researchers in response to the FDA’s draft guidance on regulating LDTs, urging the FDA to avoid regulation that could stifle innovation in pioneering pharmacogenomics laboratories. Pharmacogenomics focuses on using individual patients’ genetic data to predict the likely effectiveness and side effects of particular drugs on each patient.  The comments advocate that the FDA  minimize regulation on pharmacogenomic tests and avoid overburdening a growing field that promises to improve patients’ health and well being, and avoid increasing financial risk in this new technological frontier and pushing investors away from pharmacogenomics.

• FCC Net Neutrality Rulemaking:  Clinic students represented Engine, a nonprofit that works to support innovators and technology entrepreneurs through research, policy analysis and advocacy.  The Clinic assisted Engine in its analysis of and advocacy regarding proposed Federal Communications Commission rules concerning network neutrality, and the impact of those rules on startups, innovators and entrepreneurs.  Students prepared a whitepaper analyzing and explaining the source and scope of the powers the FCC has to ensure an open internet under the Verizon ruling and why a truly open Internet is essential for critical innovation, startups and entrepreneurs.  The Clinic’s work on this issue coincided with an intense period of public and industry awareness of the net neutrality issue and a flood – over four million – comments to the FCC concerning its proposed rules.

• In re: National Security Letter, Under Seal v. Holder (Sealed):  Students prepared and submitted to the Ninth Circuit amicus briefs on behalf of 20 of the nations leading experts in computer and data science who specialize in data and computer security, data analysis, cryptography, and privacy-enhancing technologies. These cases challenge the constitutionality of two National Security Letter statutes that permit the FBI, without prior judicial authorization, to demand customer records from internet and telecommunications providers that include all non-content data connected with phone calls, text messages, and emails—essentially, everything except for actual recordings and copies of the contents of the messages themselves. Juelsgaard students conducted extensive research and worked closely with experts to develop and articulate a compelling picture of how so-called “metadata” information about a communication can be extremely revealing even though it does not include the communication’s actual content.  Their brief emphasized for the Court the extraordinary sensitivity of the “non-content” data that can be gathered and the private information that can be revealed by such data, including extensive information about a person’s political contributions, intimate relationships, religious and community affiliations, medical conditions, financial records, and much more, giving the government unprecedented access to the sensitive information of American citizens. The Ninth Circuit recently heard oral arguments from plaintiff EFF and the government in the appeals.  Audio of the arguments is here.

• Innovative Approaches to Patents:  Students researched, drafted and coordinated “Hacking the Patent System: A Guide to Alternative Patent Licensing for Innovators.” in collaboration with our clients Electronic Frontier Foundation, Engine Advocacy, and the Open Invention Network.  Hacking the Patent System is designed to help startups and innovators understand and consider using non-traditional approaches to patent licensing. Based on concerns that the way the current system operates at times and in some contexts does more to hinder innovation than to promote it, the guide lays out three approaches to patent licenses that innovators can use to reduce the negative impact of the patent system on innovation: defensive patent aggregators, patent pledges, and Google’s License on Transfer Agreement. The guide identifies specific entities and licenses making use of each approach and explains the pros and cons for innovators associated with each. In May, the Clinic’s clients officially launched the guide, which will serve as a valuable tool for startups and tech companies as they learn about and consider using these and other alternative patent licensing structures.

• Capitol Records v. Vimeo, No. 14-1409 cv: The Clinic drafted portions of an amicus brief in the Second Circuit to protect the role the Digital Millennium Copyright Act (DMCA) plays in ensuring an innovative and creative internet.  The brief advocated for a sensible construction of “red flag” knowledge under the DMCA and for a determination that the DMCA’s safe harbors apply to all sound recordings, including those from before 1972, the only interpretations that make sense in light of, and give full effect to, Congress’s intent in passing the DMCA. The brief was co-authored with the Organization for Transformative Works, EFF, CDT, Public Knowledge, and New Media Rights.

• Petition for USPTO inter partes review of “podcasting patent:“  Students in the Clinic counseled individual donors to the Electronic Frontier Foundation’s Save Podcasting campaign whose First Amendment rights and anonymity were threatened by a subpoena from a patent troll in separate patent litigation in Texas involving the so-called podcasting patent.