Joint Employer Liability: Notes from Australia

SAMUEL ESTREICHER, NICHOLAS SAADY

NYU law professor Samuel Estreicher and Nicholas Saady, LLM, conduct a comparative analysis of the doctrine of joint employer liability, looking at the rules adopted by the U.S. Department of Labor and National Labor Relations Board as compared to the approach Australia has taken in an analogous context, “accessorial liability” doctrine.

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Cochlear Bone Anchored Solutions AB v. Oticon Medical AB

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1105

Opinion Date: May 15, 2020

Judge: Richard Gary Taranto

Areas of Law: Drugs & Biotech, Intellectual Property, Patents

Cochlear’s patent describes a hearing aid with several parts. A vibration-producing component is implanted and mechanically anchored into a patient’s skull on the patient’s deaf side. An external component, which includes a microphone, picks up sound on the patient’s deaf side, processes the sound, and generates vibrations in the implanted part, which are transmitted through th skull to the patient’s non-deaf ear, which then perceives sound originating from the deaf-ear side. The Patent and Trademark Office instituted two inter partes reviews, 35 U.S.C. 311–319, and concluded that claims 4–6 and 11–12 had been proven unpatentable; claims 7–10 were not unpatentable. Cochlear disclaimed claims 1–3 and 13. The Federal Circuit affirmed except with respect to claim 10, as to which it vacated. The Board correctly held that the preamble phrase “for rehabilitation of unilateral hearing loss” is not a limitation on the scope of the apparatus claims. The court upheld obviousness determinations concerning claims 4-6 and found claims 11-12 anticipated by prior art. On remand with respect to claim 10, the Board should consider whether the directivity-dependent-microphone alternative is outside the scope of 35 U.S.C. 112, because it recites a structure (the directivity dependent microphone) that sufficiently corresponds to the claimed directivity means.

ESIP Series 2, LLC v. Puzhen Life USA, LLC

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1659

Opinion Date: May 19, 2020

Judge: Jimmie V. Reyna

Areas of Law: Intellectual Property, Patents

ESIP’s patent relates to “a novel system and method for combining germicidal protection and aromatic diffusion in enclosed habitable spaces.” ’ Products of this type are commonly known as “vaporizers” or “diffusers.” On inter partes review, the Patent Trial and Appeal Board found that certain claims of ESIP’s patent are invalid as obvious. The Federal Circuit affirmed, first rejecting ESIP’s claim that the Board should not have instituted inter partes review because appellee Puzhen failed to identify “all real parties in interest” as required by 35 U.S.C. 312. The Board’s decision to institute inter partes review is final and not appealable. The Board’s determination of obviousness in light of prior art was supported by substantial evidence.

McRO, Inc. v. Bandai Namco Games America, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 19-1557

Opinion Date: May 20, 2020

Judge: Richard Gary Taranto

Areas of Law: Intellectual Property, Patents

McRO’s patent describes a method for automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions. The method uses two basic building blocks: “phonemes” and “morph targets.” A “phoneme,” the patent explains, is “the smallest unit of speech, and corresponds to a single sound.” A “morph target” is a model of a mouth position—one “reference model” displays a “neutral mouth position,” while other models display “other mouth positions, each corresponding to a different phoneme or set of phonemes.” McRO sued several video game developers alleging infringement of three method claims of the patent. The district court held the claims invalid for ineligibility under 35 U.S.C. 101, but the Federal Circuit reversed. On remand, the district court ultimately held that the developers were entitled to summary judgment of noninfringement because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims. The Federal Circuit affirmed the judgment of noninfringement, agreeing with the developers that the claim term “morph weight set” requires three-dimensional vectors. The court vacated the judgment of invalidity and remanded for further proceedings in light of, among other things, the developers’ offer to withdraw their counterclaims without prejudice.