Daniel Justice

Associate

San Francisco


Read full biography at www.orrick.com
Daniel Justice joined the firm in 2013 and has since worked on matters involving trademark functionality, trademark infringement, copyright infringement, patent infringement, contract disputes and proceedings before the Trademark Trial & Appeal Board.

These matters involved issues such as government contractor immunity to patent infringement; the effect of amendments to a patent licensing agreement; the effect of an expired utility patent for a chemical composition on the validity of a related trademark for medical implants; the copyrightability of short phrases and the merger doctrine; the copyrightablity and fair use of religious materials; and multiple oppositions to office actions, and petitions to cancel trademark registrations to the Trademark Trial & Appeal Board.

Daniel has also worked on Internet-related matters involving the legal effect of “browsewrap” agreements; violations of Web page terms of use; the circumvention of technological barriers to access Web pages; violations of the Computer Fraud and Abuse Act; copyright issues related to cache copying of Web pages; the use of “spiders” to collect data from Web pages; the legality of “deep-linking” to web pages; and the legality of search engine aggregation and display of copyrighted Web pages.

Daniel has recently co-authored a scholarly article with Warrington S. Parker III entitled, "The Differing Approaches to Preemption Under the Uniform Trade Secrets Act" that was published in Volume 49, Issue 2 of the Tort Trial & Insurance Practice Law Journal. Daniel is also a contributing author to the NorCal IP Blog, which covers notable new intellectual property case filings and verdicts in the Northern District of California. Links to articles Daniel has authored can be found under the "Publications" section of this bio.

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Posts by: Daniel Justice

Judge Dow Orders New Trial Due to Unreliable Consumer Confusion Survey

Order Granting Motion for New Trial, The Black & Decker Corp., et al. v. Positec USA, Inc., et al., N.D. Ill. (September 11, 2017) (Judge Robert M. Dow, Jr.)

Trademark litigants often submit survey evidence to prove that there is (or is not) a likelihood of consumer confusion between two trademarks. Parties hoping to rely on such surveys should be careful, however, to mimic market conditions as closely as possible—for instance, ensuring that the emulated market conditions include an appropriate context reflecting how purchases actually are made. Parties also should heed professional survey research in constructing survey designs, so that the results are considered trustworthy and directed to the relevant issue. READ MORE

Alice Strikes Again: Patent for Biometric Identification and Verification System Invalidated as Directed to a “Well-Known” Idea “Humans Have Always Performed.”

Order Granting Motion to Dismiss, IQS US, Inc. et al. v. Calsoft Labs, Inc., et al., N.D. Ill. (August 18, 2017) (Judge Joan H. Lefkow)

Late last month, we reported on an Order from the Southern District of Texas invalidating identify theft prevention software under Alice as being directed to an abstract idea and lacking a sufficiently inventive concept.  There, Magistrate Judge Palermo found that the idea of preventing identity theft was an idea that has “existed since the dawn of civilization” and compared the claimed invention to the age-old practice of signature comparison and the more recent practice of identification cards.  In a similarly-reasoned order, Judge Lefkow of the Northern District of Illinois recently invalidated a patent for a biometric identification and verification system by finding that the patent claimed the idea of comparing known information about an individual to a second set of information for the purposes of confirming an individual’s identity—a “well-known concept that humans have always performed.” READ MORE

Preventing Identity Theft—A Tale as Old as Time According to Judge Palermo When She Invalidated Patent Claims for Identity Theft Prevention Software Under § 101

Order Granting Summary Judgment in favor of Defendants, Mantissa Corp. v Ondot Systems, Inc., et al, S.D. Tex. (August 10, 2017) (Magistrate Judge Dena Palermo)

Litigants continue to use Alice and its progeny as a powerful tool to invalidate business method and software patents.  That’s what happened recently in Mantissa Corp. v. Ondot Systems, Inc., et al, when Magistrate Judge Palermo of the Southern District of Texas invalidated fifty-two claims asserted by a software company from two of its patents (U.S. Patent Nos. 7,779,456 and 8,353,027) covering a “method of protecting use of an entity’s identity, the method being executed on electronic computer hardware in combination with software,” i.e., identity protection software for banking cards.  In invalidating the claims under § 101, Judge Palermo relied heavily on comparisons to claims invalidated as abstract ideas in previous cases, including Alice, and ultimately found that the patent claims at issue covered merely a computer-implemented method of preventing identity theft—an idea that has “existed since the dawn of civilization.” READ MORE

Foreign Party Cannot Hide Behind Hague Convention To Avoid Service

Order Re Service and Motion to Dismiss Re Service, Xilinx, Inc., v. Godo Kaisha IP Bridge 1, Case No. 3:17-cv-00509-JD (Judge James Donato)

It is not uncommon for parties to race to file competing patent suits in their preferred districts once negotiations break down and litigation appears necessary. In some cases, recognizing that federal courts generally give priority to cases which are the “first filed” and procedurally further along, a party may attempt to delay service of an opposing party’s complaint.  That was the apparent strategy of Japan-based Godo Kaisha IP Bridge 1 (“IPB”) in its patent dispute with San Jose-based Xilinx, Inc. (“Xilinx”).  But as IPB discovered, delay tactics do not always work. READ MORE

Piracy Pays (The IP Owner) – Judge Whyte Grants Motion for Default Judgment After Awarding Sanctions in Unauthorized Software Distribution Case

Order Granting Motion for Default Judgment, Adobe Systems Inc. v. Software Tech, et al., Case No. 5:14-cv-02140-RMW (Judge Ronald M. Whyte)

Everyone in the software field (and probably every computer user) is familiar with Adobe and at least one of its products, including Acrobat and Photoshop. Popular software vendors like Adobe are often the victims of piracy and the unauthorized distribution of their products. As such, many have adopted policing measures like employing investigators to purchase products from third-party distributors to verify authenticity and proper licensing.  READ MORE

What a Difference a Few Letters Make – Judge Donato Strikes Patent Claim over Ambiguous Typo, While Sparing Another Through Claim Construction

Order Re: Claim Construction and Invalidity, Altera Corp. v. PACT XPP Tech., AG, Case No. 14-cv-02868-JD (Judge James Donato)

When filing a patent application, make sure to cross your t’s and dot your i’s—and also check for typos and ambiguous antecedents. In a recent order addressing claim construction and a motion for summary judgment on indefiniteness, Judge Donato invalidated a patent claim based on a typographical error, and nearly invalidated a claim for an ambiguous antecedent. READ MORE

CEOs May Be at the “Apex” of Their Companies, But They Can Still Be Deposed

Order Re: Discovery Dispute, Finisar Corp. v. Nistica, Inc., Case No. 13-cv-03345-BLF (Magistrate Judge Jacqueline Scott Corley)

One of the more contentious issues in civil litigation involves the question of under what circumstances can the highest ranking officer in a corporation find himself or herself answering questions at a deposition related to the business activities of the company.  In a recent order in a patent infringement suit, Magistrate Judge Corley examined this “apex” deposition doctrine and compelled the deposition of the CEO of the plaintiff Finisar Corp., subject to several limitations on how the deposition was to be conducted. READ MORE

Judge Donato Refuses to Let the Tail Wag the Dog

Order Directing Entry of Partial Judgment Under FRCP 54(b), Largan Precision Co., Ltd., v. Genius Electronic Optical Co., Ltd., Case No. 13-cv-02502-JD (Judge James Donato)

In a recent order directing entry of partial judgment under Rule 54(b), Judge Donato refused to let the tail wag the proverbial dog, so to speak.  He elected not to permit the existence of a few hundred domestic sales of an accused product to otherwise hold up a Rule 54(b) final judgment that concluded millions of extraterritorial sales did not infringe.  READ MORE

HP Fails to Construct a “Concrete” Path to Patentability Under Alice

Order Granting Motion for Summary Judgment, Hewlett Packard Co. v. ServiceNow, Inc., Case No. 14-cv-00570-BLF (Judge Beth Labson Freeman)

Since the Supreme Court decided Alice, district courts have increasingly invalidated patent claims directed to the use of general computers to implement “abstract” ideas.  One strategy for patent owners to demonstrate patent-eligible subject matter [i] and thus survive Alice scrutiny is limiting claim constructions to define the implementing computer structure in a specific, concrete and specialized way.  This is what Hewlett Packard recently attempted, but failed to do, when defendant ServiceNow, Inc. moved for summary judgment of invalidity on the claims in four asserted patents. READ MORE

Obtaining a Judgment as a Matter of Law Is Not an Easy Task, as Both Parties Learned

Order on Post-Verdict Motions, Digital Reg of Texas, LLC v. Adobe Systems, Inc., No. C 12-1971 CW (Judge Wilken)

It’s easy to forget that in patent litigation, the question of whether a claim is invalid as obvious is not a fact question.  Rather, it is a question of law.  That is not to say, however, that a jury cannot be asked to address the underlying factual questions related to obviousness, and render an advisory verdict that the claim is, or is not obvious.  And, as a recent ruling from Judge Claudia Wilken reflects, the jury’s conclusions frequently can, and will, be adopted by the Court.

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