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Welcome to the Malloy & Malloy, P.A.
Intellectual Property law Blog
Our goal is to provide some general information about recent developments and interesting news impacting Patent, Trademark and Copyright Issues. Please feel free to check back often for the latest.
In re Bilski: What Constitutes a Statutory "Process" Under ยง101?
11-05-2008 [Ben Hanrahan]On October 30, 2008, in an en banc decision, the Federal Circuit affirmed the Board of Patent Appeals and Interferences concluding that Bilski's claims directed to a method of hedging risk in the field of commodities trading is not patent-eligible subject matter under 35 U.S.C. §101.
The Court adopted the two-branched "machine-or-transformation" test to determine whether a claimed process is patent-eligible under section 101. Specifically, the Court explained that a process claim is patent-eligible if:
(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing.
In reaffirming that the "machine-or-transformation" test is the proper test to apply, the Court concluded that the "useful, concrete and tangible result test" previously articulated in State Street Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368 (Fed. Cir. 1998) is inadequate.
Additionally, the Court refused to categorically exclude software and business methods from patent eligibility - so long as the "machine-or-transformation" test is satisfied. Particularly, in a footnote, the Court stated that:
although invited to do so by several amici, we decline to adopt a broad exclusion over software or any other such category of subject matter beyond the exclusion of claims drawn to fundamental principles set forth by the Supreme Court.
The entire en banc decision can be found here.
HAVE YOU PLAYED GUITAR HERO YET?
10-31-2008 [Jason LaCosse]Earlier this year, Gibson Guitar Corp. became involved in litigation related to the enforcement of its patents against the makers and retailers of the GUITAR HERO video game. With the emergence of the GUITAR HERO video game into the popular culture, the results of this litigation could have interesting consequences. Here is one of the first news articles on this topic: www.msnbc.msn.com/id/23732204/
I've Got Good News (for Plaintiffs) and Bad News (for Defendants)
10-28-2008 [Francisco Ferreiro]On October 13th, a bill increasing protection of intellectual property, namely, the Prioritizing Resources and Organization for Intellectual Property Act of 2007 (the “PRO-IP Act”) was signed into law by President Bush.
The Act increases civil and criminal penalties for piracy and counterfeiting and creates a national "IP czar” who will be appointed by the Senate. The Act also enhances the Department of Justice's ("DOJ") power to enforce IP rights by authorizing law enforcement agents to seize property from copyright infringers.
The Pro-IP Act was a bi-partisan effort and passed without opposition in the Senate; nevertheless, there was extensive public opposition to the bill based on what were viewed as overly harsh penalties. For example, an early version of the Act would have increased the statutory damages available for infringement of a single 12-track CD from $150,000 to $3,750,000. After much criticism, this provision was removed from the bill.
Regardless, some public advocacy groups are still crying foul over remaining provisions in the Act. For example, the Act may allow the government to seize all computers and devices from a home if a single, pirated MP3 is found on one machine. Of course, it remains to be seen whether the DOJ will resort to such draconian measures in enforcing private-party IP rights.
The Act was roundly supported by major industry groups, such as the Recording Industry Association of America (“RIAA”), who contend that the Act will enhance global competitiveness and strengthen American creativity and jobs.
Design Patent Infringement Revisited
09-23-2008 [Ben Hanrahan]In an en banc decision, the Federal Circuit considered the appropriate legal standard to be applied in design patent infringement, and in particular, whether the "point of novelty" test should continue to be used. In granting the defendant's motion for summary judgment of non-infringement, the lower court stated that the plaintiff "must prove both (1) that the accused device is 'substantially similar' to the claimed design [i.e., the ordinary observer test] ... and (2) that the accused device contains 'substantially the same points of novelty that distinguised the patented design from the prior art' [i.e., the point of novelty test]. The Federal Circuit, however, held that:
the "point of novelty test" should no longer be used in the analysis of a claim of design patent infringement ... Instead ... the "ordinary observer" test should be the sole test for determining whether a design patent has been infringed.
The entire decision can be found here.
Patents - "Page Down" to Find Their True Meaning
09-09-2008 [Peter Matos]Microsoft was recently awarded U.S. Patent 7,415,666 for a Method and System for navigating paginated content in page-based increments which has some up in arms at the notion that Microsoft could patent 'Page-Up' and 'Page-Down' keystrokes. (link) However, as you consider the outrage, remember that patents are much more than what is set forth in their titles and abstracts, and a true understanding of what is covered can only result from 'paging down' through the text of the patent to the claims. They are the starting point for revealing the true scope of a patent, which in most cases is much more nuanced than what may originally be thought.
HARRY POTTER AND THE IRREPARABLE HARM
09-08-2008 [Francisco Ferreiro]J.K Rowling emerged victorious in a copyright decision that was announced earlier today by the Southern District of New York. The work at issue? A Harry Potter encyclopedia written by a librarian and rabid Harry Potter fan. In permanently blocking publication of the work, the court rejected the defendant's "fair use" defense, finding that the encyclopedia incorporated "too much of Rowling's creative work" and would cause J.K Rowling "irreparable harm" as a writer.
Obviously, a guide to a "fictional universe" must necessarily incorporate lengthy references and passages of the underlying fictional work. However, today's decision highlights the limited applicability of the "fair use" defense to such works (which are not, in a strict sense, academic.) Accordingly, future authors of such literary guides may want to consider seeking a copyright holder's consent prior to beginning any such endeavor. Otherwise, they too will risk having their book tossed into a 'goblet of fire' (or 'chamber of secrets') by an adverse copyright ruling.
Find the story here.
Find an explanation of the "fair use" defense here.
Southern Cal beats South Carolina
08-07-2008 [Oliver Ruiz]In a battle of Division I-A Schools, the University of Southern California prevailed over the University of South Carolina in a decision from the Trademark Trial and Appeal Board concerning the use of the mark "SC" on various goods. Read the decision here.
BRATZ TRIAL - COPYRIGHT OWNERSHIP AND INFRINGEMENT
07-23-2008 [Jason LaCosse]This is a highly publicized copyright case that touches on numerous issues, many of which have yet to be decided.
NEWS ARTICLE: HERE
PTO to Hold Independent Inventors Conference Aug 8-9
07-10-2008 [Peter Matos]The USPTO is having its 13th Annual Independent Inventors conference in Alexandria Virginia August 8-9, 2008. There is also a pre-conference workshop billed to be for anyone interested in learning about the basics of patents and the importance of intellectual property protection Click here For Registration infromation.
Section 101 as applied to a Computer-Implemented System and Method
07-09-2008 [Ben Hanrahan]In Ex Parte Wasynczuk, No. 2008-1496, a patent applicant appealed a 35 U.S.C. 101 final rejection on two sets of claims, namely, claims directed to “a computer-implemented system” and a “computer-implemented method.” In general, the invention relates to computer programs that simulate physical systems.
In particular, the Board of Patent Appeals and Interferences (BPAI) found that although the computer-implemented method simply solves “purely mathematical representations of physical systems,” and that “the claimed simulating does not receive information from real world physical systems nor does it output data that controls a real world physical system,” it nevertheless qualifies as a Section 101 “process.” Specifically because the method claim “recites that the first simulating step is performed on a ‘first physical computing device’ and the second simulating step is performed on ‘a second physical computing device’” the claim recites a “particular apparatus,” and thus “the method operates on another class of statutory subject matter such that the method is a patentable ‘process.’”
The entire BPAI decision can be found here.
Copyrighting Mother Nature's Images
07-07-2008 [Francisco Ferreiro]"One of California's most popular specialty license plates — depicting the tail of a Pacific humpback whale rising out of misty waters — could soon become endangered itself. Robert Wyland, the artist who created the pale blue image and gave it to the state more than a decade ago to help it raise money for marine programs, is now demanding 20 percent of any future revenue for his art foundation."
STORY LINK: HERE
THE LICENSE PLATE IN QUESTION: HERE
Considering the number of works of art that incorporate images found in nature, it's worth taking a moment to consider the extent to which such works should be protected. While works of art that depict animals or plants in their natural state likely fall within the public domain; works taking more artistic liberties will likely be accorded more protection. An interesting article discussing the issue in more detail is available HERE.
Eleventh Circuit Issues En Banc Decision in Copyright Case
07-03-2008 [Oliver Ruiz]In an en banc decision, the Eleventh Circuit issued a ruling in the case of Greenberg v. National Geographic Society, holding that National Geographic was privileged, under the Copyright Act, to reproduce its print magazine issues on a digital CD-ROM format, without compensating a freelance photographer who had contributed items to the print magazine issues. The Court, relying heavily on a United States Supreme Court named New York Times v. Tasini, 533 U.S. 483 (2001), reasoned that the addition of a montage to the CD-ROM did not make it "new" under copyright law, sufficient to require National Geographic to compensate the freelance photographer for publication of the photographs in the CD-ROM format. Instead, the Court held that the changes contained in the CD-ROM constituted a revision to a collective work, which fell squarely within a privilege contained in the Copyright Act. The complete decision is available HERE.
New Patent Appeal Rules To Take Effect Dec. 10, 2008
07-02-2008 [Peter Matos]New rules concerning ex parte patent appeals are set to take effect Dec. 10, 2008. In response to their publication in June 2008, many in the field are characterizing them as making the process more costly and cumbersome, while proponents claim they provide much needed standardization to the process. (Article Here)
Malloy & Malloy IP Blog
07-01-2008 [Peter Matos]Welcome to the Malloy & Malloy, P.A. IP Blog where you will find general information about recent developments and interesting news impacting Patent, Trademark and Copyright Issues.