COPYRIGHT IN ESPORTS: DLA Piper
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NORTH AMERICA
INTELLECTUAL PROPERTY
AND TECHNOLOGY NEWS
Perspectives • Analysis • Visionary Ideas
COPYRIGHT
IN ESPORTS:
A top-heavy power structure,
but is it legally sound?
HOW BLOCKCHAIN, INTERNET OF THINGS AND
SMART CONTRACTS IMPROVE THE SUPPLY CHAIN
EMBEDDING CONTENT: UNCERTAINTY ABOUT THE
COPYRIGHT STATUTE UNDERMINES DIGITAL MEDIA
SUPREME COURT CORNER
www.dlapiper.com/ip_global | Issue 39, Q3 2018 Attorney Advertising
Q3 EDITOR’S
COLUMN
It’s September. Summer is almost over and we’re back to
work again. This quar ter’s issue of IPT News discusses some
emerging technologies and their intersection with intellectual
Chambers and Partners has named
proper ty law.
DLA Piper among the world’s top
Intellectual Property and Technology Tamany Bentz and Nicole Orjiakor explore the ramifications
law firms, with over 50 IPT lawyers for digital content providers of including embedded
recognized in 54 guides in 2018. copyrighted content on their websites. Esports is a new,
$900 million industry, and Ric Flaggert and Calvin Mohammadi
Larissa Bifano explain the copyright issues facing esports teams, players,
Partner
leagues and broadcasters. Andrew Gastwirth and Michael
Intellectual Property
Hamilton explore how supply chains are affected by three new
and Technology
technologies: blockchain, IoT and smart contracts.
Finally, we round out this quarter’s issue with a discussion of
two relevant Supreme Court cases: one in which the Court
issued a holding allowing the recovery of lost foreign profits,
and the other exploring what it means to be a public sale
under the America Invents Act.
We are pleased to continue bringing you our views of breaking
legal developments in the IPT world. As we all move forward
into this new season, we hope you will find this issue valuable.
The Legal 500 US also recognized
DLA Piper lawyers for their work in larissa.bifano@dlapiper.com
patents, trademarks, representation
before the International Trade
Commission, cyber law, licensing,
outsourcing and telecoms, as well
as in 40 additional categories across
the globe. The Legal 500 US notes
the firm’s patent licensing, cyber law,
outsourcing and telecommunication
practices as top tier practices, and
cited clients who said “the lawyers are Intellectual Property and Technology News is published in the North America, Asia Pacific and EMEA regions.
pragmatic in their approach, possess Find all current and past editions of the IPT News here: www.dlapiper.com/ipt_news/. To subscribe to this
complimentary publication, please email your contact information to IPTnews@dlapiper.com.
sound technical knowledge and are
very responsive.”
Cover Photo Credit: AP/Shutterstock.
You are receiving this communication because you are a valued client, former client or friend of DLA Piper and you have
requested to receive this information. The information contained in this newsletter is for informational purposes only and
should not be construed as legal advice on any matter and does not create any attorney-client relationship between you
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Attention: Marketing Depar tment, 2000 Avenue of the Stars, Suite 400 Nor th Tower, Los Angeles, CA 90067-4704,
USA. Copyright © 2018 DLA Piper LLP ( US ) , DLA Piper UK LLP and other affiliated entities. For questions, comments and
suggestions, email us at IPTnews@dlapiper.com or contact Ambika Kuckreja, Senior Marketing Manager, T +1 202 799 4156,
ambika.kuckreja@dlapiper.com. Global Co-Chair and US Co-Chair – Intellectual Proper ty and Technology, Frank W. Ryan,
T +1 212 335 4850, frank.ryan@dlapiper.com. US Co-Chair - Intellectual Property and Technology, Ann K. Ford, T +1 202 799 4140,
ann.ford@dlapiper.com. Editor in Chief, Larissa Park, T +1 617 406 6013, larissa.park@dlapiper.com. Director, Intellectual
2 | INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS Proper ty and Technology, Licia Vaughn, T +1 619 699 2997, licia.vaughn@dlapiper.com. DLA Piper LLP ( US ) , 2000 Avenue of
the Stars, Suite 400 Nor th Tower, Los Angeles, CA 90067-4704, USA | MRS000110933
BEN MULCAHY AND ESPORTS ON
GINA REIF ILARDI THE RISE
RECOGNIZED IN VARIETY’S The focus on esports
in this edition is
2018 LEGAL IMPACT REPORT
exciting because,
according to the
World Economic
Forum, esports will
Los Angeles-based partner Ben Mulcahy and New York-based partner soon be a US$1
billion business with
Gina Reif Ilardi, co-chairs of the firm’s National Advertising team, Frank Ryan
a global audience
have been recognized in the 2018 Variety Legal Impact Report. The of over 300 million Partner
Global Co-Chair and US Co-Chair,
list spotlights the top attorneys in the entertainment business – those fans. Fans watch on Intellectual Property and Technology
YouTube’s gaming
who “cut the deals shaping modern Hollywood.” Additionally, Variety
channel or on Twitch,
recognized the “bicoastal tag team” for accomplishments such as a dedicated gaming
“structuring and activating innovative marketing campaigns for major channel on the web.
In the first quarter of
studios, corporations and brands.”
2018, esports viewers
spent 17.9 million
hours watching
their gaming heroes
Ann K. Ford
on those channels.
Partner
The global esports US Co-Chair, Intellectual Property
audience is expected and Technology
Global Co-Chair, Sectors
to reach 380 million
this year, made up of 165 million dedicated esports
fans and 215 million occasional viewers.
As the esports economy grows, DLA Piper has
formed an esports team to advise on all facets of
the industry, including:
• C ontent acquisition, production, licensing and
distribution transactions
• Brand development and protection
• Private equity, venture capital and M&A
• Infrastructure and facilities development
L to R: Ben Mulcahy, Gina Reif Ilardi. You may reach Ben at benjamin.mulcahy@dlapiper.com,
• Commercial litigation, trademark litigation and
and Gina at gina.illardi@dlapiper.com.
ticketing litigation
This is just the latest swift, fascinating evolution
within the world of IPT. Please let us know how we
can help you navigate this changing world.
frank.ryan@dlapiper.com ann.ford@dlapiper.com
WWW.DLAPIPER.COM/IP_GLOBAL | 3
EMBEDDING_CONTENT:
Uncertainty about the Copyright
Statute Undermines Digital Media
By Tamany Bentz and Nicole Orjiakor
The act of embedding content on a website is ordinarily not ways: (1) displaying thumbnail images as a result of Google
considered copyright infringement. Indeed, many digital media searches; and (2) displaying full-size images when a user clicks
companies either passively or actively allow their content to on a particular thumbnail. Focusing on the beginning of the
be embedded on third-party sites. The Southern District of definition of “display,” the Ninth Circuit held embedding was not
New York, however, threw shade on the practice of embedding “show[ing] a copy” because the alleged infringer never made a
content by determining that it could be copyright infringement. copy. The Ninth Circuit articulated what is commonly called the
Server Test, finding the first display to be copyright infringement
In Goldman v. Breitbart News Network LLC, Judge Katherine B. because the thumbnail image was stored on Google’s server,
Forrest considered the scope of copyright arising from a photo and the second display not copyright infringement because the
of NFL superstar Tom Brady. larger image was never stored on Google’s server.
The photo in question, snapped by the plaintiff and posted to In contrast, the district court in Goldman found the
his personal Snapchat My Story page, went viral and eventually Server Test incongruent with the Copyright Act and the
landed on Twitter amid speculation that Brady was helping United States Supreme Court’s 2014 decision in American
the Boston Celtics recruit NBA forward Kevin Durant. The Broadcasting Companies, Inc. v. Aereo, Inc., which noted that
defendants − online news outlets and blogs − embedded a technical distinctions cannot absolve defendants of liability for
Twitter post containing the plaintiff ’s photo on their websites copyright infringement.
alongside articles about Brady’s role in recruiting Durant. The
plaintiff contends that the defendants’ use of the photo infringed In July this year, the Second Circuit refused to hear an
on his copyrights. interlocutory appeal on Goldman. There are many ways to
interpret this. The Second Circuit may agree that embedding
The district court bifurcated the case so it could determine can be copyright infringement, or it may think using the photo in
whether embedding the photo was copyright infringement a news story is fair use, making the embedding issue moot.
before it considered any defenses. The defendants filed a
motion for partial summary judgment, asserting that embedding Even if the case is disposed of on fair use grounds, the summary
a photo was not copyright infringement because the defendants judgment decision will persist, with its attendant ramifications
never copied or saved the photo. for social media and online linking. Companies creating digital
content now have to more carefully weigh the potential risks of
The district court’s decision looked to the precise meaning embedding copyrighted content into their sites.
of the language in the Copyright Act. The Act gives creators
the exclusive right to publicly display a copyrighted work. To
“display” a work means to show a copy of it, either directly or
by means of a film, slide, television image or any other device Here is some background on the process of embedding. Webpage
or process. The district court focused its analysis on the “any content is assembled via HTML code that instructs the browser
other device or process” passage, noting Congress intended this where to get pieces of content and how to arrange them on the page.
language to be broadly interpreted to cover “every transmission The HTML code can instruct a server to pull content from multiple
[or] retransmission” of content: “this Court sees nothing in locations, including third-party servers. When content is embedded
either the text or purpose of the Copyright Act suggesting that onto a site, HTML code instructs the server to pull content directly
physical possession of an image is a necessary element to its from a third-party website onto the webpage. The embedded content
display for purposes of the Act.” will then be fully displayed, without requiring a user to click on a
hyperlink and navigate elsewhere to view it. Embedded content is not
This decision stands in stark contrast to the Ninth Circuit’s copied or saved by the webpage or the operator’s server.
2007 holding in Perfect 10, Inc. v. Amazon.com, Inc. The plaintiff
in Perfect 10 accused Google of violating its rights in two
Tamany Bentz, a partner in the Intellectual Property and Technology group and based in Los Angeles, focuses on IP litigation in the areas of copyright, trademarks, patents and trade secrets.
Tamany has appeared in federal district courts across the US, as well as before the International Trade Commission. Reach her at tamany.bentz@dlapiper.com.
Nicole Orjiakor, an associate in the Litigation group and based in Los Angeles, focuses on complex commercial litigation and securities litigation. Reach her at nicole.orjiakor@dlapiper.com.
32 DLA PIPER LAWYERS IN 8 COUNTRIES
RANKED AMONG WORLD’S TOP
PATENT PROFESSIONALS
IAM Patent 1000: The World’s Leading Patent Professionals 2018 has named 32 DLA Piper lawyers to its seventh list. IAM
interviewed lawyers and clients around the world to determine the lawyers companies turn to for their patent matters in
key jurisdictions around the globe. The directory includes “only those delivering top-quality patent services.”
John Allcock Angela Furlanetto Dale Lazar Matthew Satchwell
United States Canada United States United States
Philipp Cepl Markus Gampp Alan Macek Paul Steadman
Germany Germany Canada United States
Dan Christenbury Kathryn Riley Grasso Gianni Minutoli Bruce Stratton
United States United States United States Canada
Sean Cunningham John Guaragna Steven Park Richard Taylor
United States United States United States United Kingdom
Ronald Dimock Lisa Haile Mark Radcliffe Alexander Tsoutsanis
Canada United States United States Netherlands
Gualtiero Dragotti James Heintz Paul Reeskamp Nicholas Tyacke
Italy United States Netherlands Australia
William (Skip) Fisher Denise Seastone Kraft Johan Renes Roberto Valenti
China United States Netherlands Italy
Mark Fowler Joseph Lavelle Robynne Sanders Drew Wintringham
United States United States Australia United States
WWW.DLAPIPER.COM/IP_GLOBAL | 5
COPYRIGHT IN ESPORTS:
A top-heavy power structure, but is it legally sound?
by Richard Flaggert and Calvin Mohammadi
The esports industry is in a period of rapid growth. The 2017 International (Dota 2
Championship) alone offered a $10 million title purse, a number since eclipsed at events
across the market. According to a recent report published by Newzoo, total revenue across
the industry is expected to exceed $900 million in 2018, up from $493 million in 2016. As
the esports industry has solidified itself as a major sports market both in the United States
and internationally, various legal issues have arisen, ranging from developing governance and
regulation framework to concerns about gambling, doping and match-fixing.
Central to the esports industry are novel intellectual property This top-heavy power structure, in which all IP is owned and
issues arising from the structure of the esports ecosystem, licensed by a few, gives game publishers a great degree of
which differs in critical respects from those of other control over esports teams, players, leagues and broadcasting
professional sports. In most traditional professional sports, deals. Currently, that control is exercised by way of contract.
leagues own and license their own intellectual property. In In the world of online video and streaming gameplay, individuals
esports, however, the copyright in any given game is owned by typically license the right to play a video game from the game
the developer or publisher of that game. That difference has publisher by way of an end-user license agreement or applicable
widespread implications. terms of service.
Typically, these license agreements do not give an individual the
THE IP POWER STRUCTURE
right to publicly perform the video game online in recorded
Copyright is designed to protect the economic interests of video or on live streams. Many publishers, however, have
an author of an expressive work, by securing that author developed policies to accompany their license agreements that
the exclusive right to copy, distribute, publicly perform and allow individuals to incorporate gameplay into video content as
otherwise exploit that work. Video games are eligible for long as that content is available without charge, and as long as
copyright protection as audiovisual works (as is the code the use of the game is non-commercial. These policies typically
underlying a game as a literary work); the authors or creators include an exception allowing individuals to earn partnership
of video games possess the copyright in the audiovisual content revenue from streaming platforms. In the context of esports
of the games. This means creators can limit how a video game tournaments, publishers typically enter into agreements with
is exploited in online video, streaming gameplay, at in-person the tournaments that govern exploitation of the game at
tournaments and otherwise. Any individual engaging in those the tournament.
actions without the appropriate permission from the creator is
arguably committing copyright infringement.
6 | INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS Photo Credit: AP/Shutterstock
A COMPLICATED PARADIGM A similar issue arose in 2010, when Blizzard Entertainment got
into a dispute with the Korea e-Sports Association (KeSPA),
These contractual solutions ultimately sidestep the larger
which managed tournaments involving its game StarCraft.
intellectual property question at issue: whether the assumption
KeSPA had been running StarCraft tournaments for years
that game publishers have complete, unfettered control over
before Blizzard decided to leverage its IP rights in the game
the exploitation of their games in these contexts is legally
and demand licensing fees. After years of failed negotiations
sound. This question has not been tested in courts, but IP
with KeSPA, which argued that Blizzard’s IP rights were not as
disputes have arisen in this context elucidating the complexities
expansive as Blizzard contended, Blizzard elected to license
that could arise if this paradigm were challenged.
the exclusive right to broadcast StarCraft gameplay to another
For instance, a three-way copyright dispute arose in 2015 in South Korean group. Blizzard then brought lawsuits against
connection with a Twitch channel called “SpectateFaker,” South Korean networks broadcasting StarCraft tournaments,
which broadcast a publicly available spectator mode of the setting the stage for a challenge to its IP rights in South Korean
games of a popular player, Lee “Faker” Sang-hyeok. Abuzu, courts. Ultimately, the dispute was settled outside of court.
another video game streaming service, had secured from
Litigated esports disputes have not yet resulted in a meaningful
Sang-hyeok the exclusive right to stream his games. When
challenge to the current structure of the esports industry.
Abuzu discovered the SpectateFaker channel, it issued a Digital
Until a copyright dispute on such questions makes its way
Millennium Copyright Act (DMCA) takedown notice to Twitch
through the courts, it is unlikely that the degree of control
on the grounds that Twitch was infringing Abuzu’s IP rights.
publishers enjoy over the operation of the industry will erode
Twitch complied with the takedown notice, despite the fact in any significant respect.
that under the current understanding of IP in the context of
video games, the rights Abuzu claimed to have acquired from
Partner Ric Flaggert, based in Los Angeles, is a dual-qualified US attorney
Sang-hyeok were not his to grant, but rather were owned and UK solicitor focusing his global practice on entertainment, media, and
exclusively by the game publisher at issue, Riot Games. This communications. Reach him at richard.flaggert@dlapiper.com.
dispute raised the issue of whether a player of a game may have
Associate Calvin Mohammadi, based in Los Angeles, focuses his practice
an IP interest in his game play, for instance – as a derivative on intellectual property and technology law. Reach him at
work of the underlying game. Ultimately, the issue was calvin.mohammadi@dlapiper.com.
never addressed. Riot Games eventually filed its own DMCA
complaint against the channel.
By Andrew Gastwirth and
Michael D. Hamilton
How blockchain, Internet of
Things and smart contracts
improve the supply chain
To improve safety, security and profitability, many industries are
incorporating three key technologies into their supply chains:
blockchain, Internet of Things (IoT) and smart contracts.
A blockchain is a list of digital records, called blocks, linked together to create a shared and
distributed ledger of information. Blockchain uses cryptography and access control to secure
information. Every transaction is written permanently to the blockchain. Throughout the process,
par ties maintain a copy of the shared ledger and agree to its accuracy, ensuring consensus. When
used to oversee a supply chain, a blockchain provides an immutable, historical accounting of every
event and transaction in the supply-chain life cycle.
IoT is the worldwide network of physical devices able to connect to the Internet. IoT is another
essential technology able to reduce risks for organizations and consumers. In a supply chain, IoT
utilizes sensors to monitor conditions, log events to the blockchain and send notifications.
Smart contracts comprise computer code encapsulating terms of an agreement and are self-
executing when specific requirements are met. Often used in conjunction with blockchain, smar t
contracts remove the need for many traditional intermediaries, reducing costs and increasing speed.
Our supply-chain scenario begins with a company manufacturing mobile phone parts in Malaysia. The
company produces, inventories and transports components to the phone manufacturer, in China. IoT
sensors on the production line ensure all parts meet specifications. If an IoT sensor identifies a defective
part, it is immediately culled. Using IoT in this way reduces the likelihood of a defective part winding
8 | INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS
THIS SIMPLIFIED SUPPLY-CHAIN SCENARIO DEMONSTRATES BLOCKCHAIN, IoT AND SMART CONTRACTS IN ACTION
Parts Phone
Manufacturer Manufacturer Shipper Retailer Customer
IoT & SMART CONTRACTS
up in a customer’s phone, shrinking waste and dissatisfaction while possible through the combination of verifiable information (IoT and
benefiting the component manufacturer, the phone manufacturer, the blockchain) and self-executing code (smart contracts).
retailer and the consumer.
The newly manufactured phone then takes a global journey to retailers
When the parts manufacturer ships components to the phone and consumers. Each step of the process similarly leverages blockchain,
manufacturer’s factory in China, IoT sensors monitor environmental IoT and smart contracts to securely and verifiably monitor each
conditions and shipment progress. Such readings are logged to the transaction across the supply chain.
blockchain, protecting the components during the entire voyage
and giving confidence in timing of the shipment and quality of Another significant advantage of leveraging blockchain is the
the components. concept of provenance. Because each transaction is committed to
an immutable ledger, all transactions and events are auditable by
Smart contracts are used to automate and protect the supply-chain approved parties. If it turns out that consumers have a problem, then
process further. A smart contract for shipping components from the shipping and manufacturing history is fully traceable, allowing
the parts manufacturer to the phone manufacturer would state that manufacturing companies to more quickly locate the cause of an issue
if the parts are maintained correctly during shipping (eg, protected and more effectively resolve the problem.
from heat and moisture), and the shipment arrives on schedule, then
the parts manufacturer will automatically pay the shipper an agreed Whether your company manufactures electronics or auto parts or
amount via electronic transaction, and the phone manufacturer will produces pharmaceuticals or food, incorporating blockchain, IoT
automatically pay the parts manufacturer. Smart contracts execute and smart contracts into your supply chain can significantly improve
these transactions without intervention from the parties and are made profitability while reducing risk to your business.
Andrew Gastwir th, based in Nor thern Virginia, is DLA Piper’s Chief Transformation Michael D. Hamilton, a par tner in the Real Estate practice and based in Los Angeles,
Off icer. He has delivered cloud-based solutions leveraging blockchain, IoT and advises on real estate, finance and corporate restructuring transactions. He is
ar tif icial intelligence for For tune 500 Companies and the federal government. nationally recognized for his borrower-side real estate finance practice. Reach him
You may reach him at andrew.gastwir th@dlapiper.com. at michael.hamilton@dlapiper.com.
WWW.DLAPIPER.COM/IP_GLOBAL | 9
DLA Piper hosts clients at
INTA ANNUAL MEETING IN SEATTLE
More than 10,000 trademark professionals and brand owners from around the world took part in the 140th International
Trademark Association (INTA) Annual Meeting in Seattle in May. DLA Piper lawyers from Asia, Australia, the Middle East,
Europe, Canada, and the US enjoyed connecting with clients from around the globe throughout the week.
During the conference, DLA Piper hosted a series of client events, including multiple client dinners, a well-attended seminar
titled “Is Fashion-Tech the New FinTech?” and our popular VIP client reception atop Seattle’s Columbia Center.
DLA Piper attorneys and in-house counsel enjoy our DLA Piper trademark lawyers from around the world attended our annual women’s event.
VIP Reception.
Eunice Chung (Washington, DC), Reking Chen (Beijing) and Is Fashion-Tech the New FinTech? The seminar panel, left to right: Lamiaa Kheir Bek (Dubai), David Spratley
Joanne Zhang (Hong Kong) mingling with clients. (Vancouver), Elena Varese (Milan), Ryan Compton (Washington, DC), Jessie Buchan (Sydney) and Joanne Zhang
(Hong Kong).
10 | INTELLECTUAL PROPERTY AND TECHNOLOGY NEWSSUPREME COURT CORNER
By Stan Panikowski and Brian Biggs
WesternGeco LLC v. ION Geophysical Corp. Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.
PATENT – Decided June 22, 2018 PATENT – Cert. Granted
HOLDING: A patent owner who proves infringement under 35 Issue: Whether, under the American Invents Act (AIA), an
U.S.C. § 271(f)(2) may recover lost foreign profits. inventor’s sale of an invention to a third party that is obligated
to keep the invention confidential qualifies as prior art when
Under § 271(f) of the Patent Act, patent infringement liability
determining patentability.
arises if one supplies in or from the US components of a patented
invention while knowing or intending that the components will be In 2001, the petitioner, a pharmaceutical company, entered into a
combined outside of the US in a manner that would infringe the license, supply and purchase agreement with MGI Pharma related
patent if such combination occurred within the US. to a cancer drug prior to FDA approval. MGI was required
to keep the petitioner’s proprietary information confidential,
Petitioner WesternGeco sells a patented technology used in
including the drug’s formulations. After the drug successfully
geological surveys to search for oil and gas under the ocean
passed Phase III clinical trials, the petitioner submitted a new
floor. ION shipped components of a competing system from
drug application to the FDA in 2002. It was approved in July
a US warehouse overseas to be combined into a surveying
2003, and the Petitioner filed a series of patent applications, at
system found to infringe under 35 U.S.C. § 271(f). The jury
least one governed by the AIA. In 2011, the respondents filed an
awarded damages with a $12.5 million royalty component and a
abbreviated new drug application (ANDA) related to the cancer
$93.4 million lost profits component. A divided Federal Circuit
drug. The petitioner then filed the underlying patent suit.
reversed the lost profits award, concluding that profits lost
outside the US are unavailable because they are “outside the As amended by the AIA, § 102(a) provides a person is entitled to
jurisdictional reach of U.S. patent law.” a patent unless “the claimed invention was patented, described
in a printed publication, or in public use, on sale, or otherwise
In a 7-2 decision, the Supreme Court held WesternGeco was
available to the public before the effective filing date of the
entitled to its lost profits for foreign infringement under § 271(f),
claimed invention.” (The phrase “or otherwise available to the
reasoning the conduct relevant to the statute’s focus − domestic
public” was among the AIA amendments.) The district court
infringement − occurred in the US. Thus, “the lost-profits
found the petitioner’s agreement with MGI did not trigger the §
damages that were awarded…were a domestic application of
102(a) on-sale bar because the formulation of the drug was not
§ 284.” The plain text of § 271(f) and § 284, taken together,
known to the public. The Federal Circuit reversed, finding that if
“allow[s] the patent owner to recover for lost foreign profits.”
the drug’s sale is public, the details of the invention need not be
Justice Neil Gorsuch filed a dissent, joined by Justice Stephen
publicly disclosed to trigger the on-sale bar.
Breyer, arguing that a US patent provides a lawful monopoly
within the US only, and while the Patent Act permits a patent On appeal, the petitioner argues the amended statutory text
owner to exclude others from using the invention throughout the makes clear that the sale must make the invention “available
US, damages cannot be recovered for extraterritorial use. to the public” to qualify as prior art, and because the drug
formulation was confidential, it cannot constitute prior art. The
The decision is a win for patent owners, increasing the damages
respondent argues that Congress did not change the meaning of
awards available when infringement results in lost foreign profits.
“on sale” by adding the phrase “otherwise available to the public;”
Some commentators have lauded the decision as a common-
rather, “on sale” is a term of art and if Congress had intended to
sense approach; others question whether the decision opens
change its meaning, it would have done so unequivocally.
the door for litigants to argue that other acts of domestic
infringement warrant foreign damages.
Partner Stan Panikowski, based in San Diego, focuses on IP, antitrust, appeals and Associate Brian Biggs, based in Wilmington, represents clients across many technical
other areas of business litigation. Reach him at stanley.panikowski@dlapiper.com. fields in patent litigation. Reach him at brian.biggs@dlapiper.com.
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