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Welcome to the Malloy & Malloy, P.L.
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.
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Isolated DNA Sequences Are NOT Patentable
06-13-2013 [Jessica Hauth] [Permalink]Those of us who have been waiting with bated breath for the U.S. Supreme Court’s decision on gene patents in the case of Myriad can now exhale. The Court issued its opinion this morning, in which, as we predicted, they held that cDNA is patentable subject matter, but “isolated DNA” derived from genomic DNA is not patentable.
The White House Goes Troll Hunting
06-05-2013 [Francisco Ferreiro] [Permalink]The Obama administration has released a memo to Congress outlining several measures that would help curtail “patent trolling.” The White House had no qualms about using the colloquial term “patent troll” to describe entities that – rather than researching or developing technology relative to their rights -- acquire patents solely to extract payments from alleged infringers.
The suggested reforms are aimed at increasing transparency and providing defendants "better legal protection against liability." A few recommendations worth noting include (1) requiring parties to disclose the "real-party-in-interest" in lawsuits and demand letters; (2) encouraging the publication of demand letters to make them accessible to the public; (3) protecting end users using "off-the-shelf" products; and (4) make it easier for a prevailing defendant to obtain an award of attorneys' fees in a patent infringement action. The memo also recommends facilitating challenges to business method patents and restricting the circumstances under which the International Trade Commission (ITC) can issue injunctions.
While it remains to be seen what legislative action will follow, the administration has – for the time being – approved the creation of a US Patent and Trademark Office (PTO) website informing patent troll victims about their rights and defenses. For more information click here.
WHEN ARE COMPUTER-RELATED INVENTIONS CONSIDERED PATENT ELIGIBLE RATHER THAN MERELY ABSTRACT IDEAS?
06-03-2013 [Jason LaCosse] [Permalink]When are computer related inventions considered patent eligible rather than merely abstract ideas? Put simply, there is no bright line test at the moment, which was essentially (though unofficially) confirmed in CLS Bank International v. Alice Corp on May 10, 2013. Rather than providing a specific new test for determining whether a computer-implemented invention is patent eligible and not merely an “abstract” idea under Section 101 of the U.S. patent laws, the Federal Circuit in this case simply issued a per curiam opinion affirming the District Court’s ruling. The District court held that the asserted claims of Alice Corp.’s U.S. patents were invalid because they did not recite patent-eligible subject matter, but were instead merely directed to the abstract idea of “employing an intermediary to facilitate simultaneous exchange of obligations in order to minimize risk,” despite involving computers.
It bears noting that there already exists substantial treatment of this general analysis in notable Supreme Court decisions, such as: Gottschalk v Benson (1972); Parker v Flook (1978); Diamond v Diehr (1981); Bilski v Kappos (2010); and Mayo v Prometheus (2012), which are well-cited in the various concurring and dissenting opinions of CLS Bank International v. Alice Corp. Thus, some might argue that the existing framework laid out by these Supreme Court cases is generally sufficient for such an analysis; whereas others might desire even more guidance with regard to computer-related inventions in particular.
Given the lack of any new test, it would also appear that the same general analysis still applies whether the computer related claim is embodied in a system, in a method, or in a computer readable medium – in that none of these three types of claims would inherently make the claim patent eligible under Section 101 nor would they inherently prevent the claim from being patent eligible under Section 101.
Perhaps a key takeaway for inventors is that their patent applications should include claims that recite substantially more than just an abstract idea of doing something. Indeed, regardless of whether one agrees with the holding in this specific case, it seems that getting beyond an abstract idea requires that patent claims be recited with a sufficient level of detail, which in turn might be case specific for a given technology or application. In other words, the more detail on how a process or computer is implemented and what exactly it does in the context of the invention, the better the prospects of patentability should be.
Thus, even though Alice Corp.’s asserted patent claims did not withstand litigation in this case, other examples of patents which have withstood the test of litigation and/or re-examination may hint at the level of detail necessary to achieve patent subject matter eligibility under Section 101. For instance, the “Uniloc” patent asserted against Microsoft, that resulted in one of the largest damages awards in U.S. history ($388 Million), might provide one such example (U.S. Patent Number 5,490,216 for a “SYSTEM FOR SOFTWARE REGISTRATION”). As another example, Amazon.com’s “one click” patent for a “METHOD AND SYSTEM FOR PLACING A PURCHASE ORDER VIA A COMMUNICATIONS NETWORK” appears to have withstood various challenges as well (U.S. Patent Number 5,960,411).
The full opinion(s) can be found here (CLS Bank International v. Alice Corp., No. 11-1301).
Win for Monsanto: Patent Exhaustion Does Not Necessarily Apply to Self-Replicating Items
05-14-2013 [Jessica Hauth] [Permalink]This week, the U.S. Supreme Court ruled – unanimously – that Monsanto’s patent for soybeans was infringed by Indiana farmer Vernon Bowman. Even though expressly called out as limited to this case and potentially not applicable to other self-replicating technology, it bodes well for the patent community.
West Encounters East Airing on PBS Stations Across the Country
05-09-2013 [Meredith Frank Mendez] [Permalink]West Encounters East, a film by firm client Stella Holmes, a Miami-based art collector and museum trustee, is currently airing on PBS stations across the country. West Encounters East explores the Japanese diaspora to Latin America through the eyes of artists whose work emerges from the Asian-Latin American cultural mix. The film will be airing locally in South Florida on WPBT on May 6, 2013 at 9:00 p.m. and on May 10, 2013 at 10:00 p.m. Click here for WEE air dates and times in your area.
The 7-minute Trailer for West Encounters East can be viewed below.
US Supreme Court Hears Arguments in Gene Patenting Case
04-16-2013 [Jessica Hauth] [Permalink]Yesterday, the U.S. Supreme Court heard oral arguments in the much-publicized gene patenting case AMP v. Myriad Genetics. Myriad and the University of Utah own several patents directed to isolated gene sequences for mutations in the BRCA-1 and BRCA-2 genes, as well as methods of using the same for predicting risk of breast cancer. AMP is seeking to invalidate these patents for claiming inventions that are not patentable subject matter, i.e. merely products of nature, which should not be restricted from widespread use. Myriad maintains that since the patents are for isolated gene sequences, they do not cover genes as naturally occurring within the body, and therefore are not overly restrictive and should properly be the subject of patent protection. The Supreme Court heard from both sides yesterday. AMP argued that the invention discovered by Myriad was that particular mutations in certain genes led to an increased risk for breast cancer, but that this is a result of nature, not the product of man, and therefore should not be patentable. Myriad countered that knowing where to cut to excise the isolated gene sequence from the chromosomal DNA in which it exists naturally made it a new thing which does not exist in nature, and therefore should be patentable. The U.S. government also weighed in on the debate, proffering that lab-made cDNA, created by complementing mRNA with DNA nucleotides, is not done in nature and therefore is man-made and patentable, but that isolated gene sequences merely taken from naturally occurring genes are not patentable. The questions posed by the Justices revealed they were very interested in this case, and that their minds were clearly not made up. They seemed to struggle with the broad question before the Court “[a]re human genes patentable?” For example, they asked pointed questions about the distinction between isolated DNA and DNA as it exists in nature, acknowledging that though the chemical composition or sequence may be the same, they are clearly different in form. They also queried how best to protect investments if isolated gene sequences were not permitted patent protection, as is critical to the biotechnology industry. When AMP’s arguments ventured into the realm of obviousness, which has happened repeatedly at each round of the Courts leading up to the Supreme Court, the Justices were quick to note the difference between subject matter patentability, which is a threshold question and what is being challenged here, and obviousness which is an approach meant to narrow what is already deemed the proper subject matter. Acknowledging that AMP may have very strong arguments on obviousness grounds, the Justices noted that was not what was raised, but that the case was structured to bring the broadest possible grounds before the Court. Though it is always folly to try and predict the outcome of Supreme Court cases, I would not be surprised if the Court split the baby here and found cDNA sequences to be patentable, but not gene sequences merely isolated from a natural source, particularly in view of the very broad nature of the question before them and their obvious concern for protecting biotechnology investment. Their opinion should surface around June.
ICANN OPENS TRADEMARK CLEARINGHOUSE FOR NEW GTLDS
04-02-2013 [Tony Guo] [Permalink]With potentially hundreds of new generic top level domains (“gTLDs,” e.g. .store, .law, .food) just around the corner, the Internet Corporation for Assigned Names and Numbers (ICANN)—the organization response for overseeing Internet domain name allocations--recently opened its Trademark Clearinghouse (TMCH), where current brand owners can record their existing trademarks.
The database serves as a tool for current trademark owners to prevent opportunistic third parties from registering existing brand names, e.g. coke.drink, walmart.store.
Recording a mark with the TMCH provides two important benefits to a trademark holder:
1. Early Registration – prior to the launch of each new gTLD, an early “sunrise” registration period of at least 30 days is given to brand owners registered with the TMCH. This allows a brand owner to register a new domain with that gTLD identical to their trademark, and thereby prevents a third party from doing so; and
2. Notification – for at least 60 days following the opening of registration of a new gTLD to the general public (after the sunrise period), third party applicants who apply for a domain name that is identical to a recorded mark in the TMCH not registered by the brand owner during the sunrise period, will receive a notification of the trademark owner’s prior rights. If the third party proceeds with registration anyway, the brand owner will receive a notification of the third party’s registration.
In order to be eligible for trademark inclusion in the TMCH, the trademark must be a federally registered trademark; a court-validated trademark; or a trademark protected by statute or treaty. Registration fees for one year is $150, with modest discounts for 3 and 5 year registrations.
Companies concerned about third parties appropriating their trademarks in new gTLDs should review their current portfolios and determine which marks they should file with the TMCH. For more information, visit http://trademark-clearinghouse.com/.
WHY THE RUSH? PATENT APPLICATION TIMING UNDER THE AIA
03-28-2013 [Jason LaCosse] [Permalink]In addition to the often discussed “first-to-file” provisions of the America Invents Act (“AIA”), the expanded scope of public materials which patent examiners can now cite as “prior art” (when evaluating whether a patent should be granted on an applicant’s invention) provides some additional motivation for filing U.S. patent applications with more urgency than in the past. For instance, public disclosures made anywhere in the world prior to the effective filing date of a new U.S. patent application can now, for the most part, be considered as prior art. By way of contrast, under the “old” laws, there was a one year grace period in which third party publications could potentially be exempt from citation if published no more than one year before the application filing date.
One exception to the broadened scope of prior art under the AIA is the “new” one year grace period which exempts only those public disclosures that are made by the applicant. While the one year grace period for the inventor’s own public disclosure might seem encouraging -- in that it can provide some recourse for inventors who unwittingly publicize their invention before seeking patent protection -- it could potentially provide a false sense of security for some. For example, some U.S. based inventors might publicize their invention before filing a patent application, mistakenly relying on the U.S. grace period alone. In some cases, that approach could ruin the possibility of certain foreign protection because many other countries follow the doctrine of “absolute novelty” which bars patent eligibility for inventions that are made public before an appropriate patent application is filed. As such, the stricter rules of other countries should at least be considered by U.S. applicants if foreign protection is a possibility.
Accordingly, these additional “prior art” considerations tend to provide inventors with further incentive to file for patent protection as soon as practicable. Also, due in part to these new timing concerns, inventors will probably be more likely to file U.S. provisional patent applications as an initial step (since they can usually be prepared relatively quickly), provided that the disclosure of such filings is reasonably expected to support patentable claims of ensuing non-provisional patent applications.
Supreme Court Holds that First Sale Doctrine Is Applicable to Works Made Abroad
03-20-2013 [Meredith Frank Mendez] [Permalink]It its much anticipated 6-3 decision in Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court ruled that “the first sale doctrine applies to copies of a copyrighted work lawfully made abroad.”
S. John Wiley & Sons, an academic textbook publisher, published foreign editions of its English-language textbooks overseas and sold them at lower prices that their U.S. counterparts. The books state that they are not to be taken into the U.S. without permission, where the books are sold at higher prices.
Kirtsaeng is a student from Thailand who attended school in the United States. His friends and family purchased lawfully made foreign editions of his textbooks in Thailand at low prices, and then mailed them to Kirtsaeng in the U.S. for him to sell on online auctions. Kirtsaeng reportedly earned over $1 million in revenues over several years from the sales.
Wiley sued Kirtsaeng for copyright infringement claiming that the unauthorized importation and resale of its books was an infringement. As a defense, Kirtsaeng asserted the first-sale doctrine codified in Section 109(a) of the Copyright Act, which states that "the owner of a particular copy or phonorecord lawfully made under this title . . . is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord."
The District Court held that the first-sale doctrine was inapplicable to foreign-manufactured goods and Wiley was awarded statutory damages in the amount of $600,000. This decision was affirmed by Second Circuit Court of Appeals.
On cert, the Supreme Court was to decide whether the words "lawfully made under this title" restrict the scope of § 109(a)'s "first sale" doctrine geographically. The U.S. Supreme Court declined to read a geographic limitation into the statute because the plain language of Section 109(a) says nothing about geography, and nothing in the statutory history supports a geographic limitation.
The Court also considered the various ways associations of libraries, used-book dealers, technology companies, consumer-goods retailers, and museums (whom all filed amicus briefs) rely on the first-sale doctrine. The Court found that “[r]eliance upon the "first sale" doctrine is deeply embedded in the practices of those, such as booksellers, libraries, museums, and retailers, who have long relied upon its protection. Museums, for example, are not in the habit of asking their foreign counterparts to check with the heirs of copyright owners before sending, e.g., a Picasso on tour.. . . Thus, we believe that the practical problems that petitioner and his amici have described are too serious, too extensive, and too likely to come about for us to dismiss them as insignificant — particularly in light of the evergrowing importance of foreign trade to America.”
Accordingly, the Court concluded that the considerations supporting Kirtsaeng’s nongeographical interpretation of the words "lawfully made under this title" are the more persuasive and reversed the judgment of the Court of Appeals and remanded the case for further proceedings.
IP UPDATE: IMPORTANT AIA ALERT
02-26-2013 [Peter Matos] [Permalink]
HOW SWEET IT IS - CREATIVE BRAND EXTENSIONS BY PRO ATHLETES
02-21-2013 [Jason LaCosse] [Permalink]Along with the widespread recognition achieved by many professional athletes comes substantial "publicity rights," which can be cultivated for financial benefit. In short, publicity rights protect a person's name or likeness from being used by others for commercial gain, unless that person grants permission. As such, publicity rights are generally regarded as a tangential aspect to traditional intellectual property rights like patents, trademarks, copyrights or trade secrets. Indeed, there can even be a certain overlap of publicity rights with other IP rights, particularly with trademark rights - such as when a person's name is linked to a specific product or service.
Increasingly, professional athletes and other types of celebrities are cashing in on their personal brands by lending their name or likeness not only via traditional endorsemets, but also by promoting their own unique brands. While the general practice of promoting one's own brand of apparel, fragrances, restaurants,etc., is well established, celebriteis appear to be applying the concept to a variety of less traditional items such as alcoholic beverages or even candy. In one example, pro golfer John Daly formally adopted his name for use on "JOHN DALY" alcoholic beverages, apparently following the lead of his fans. In another example, pro tennis player Maria Sharapova is marketing a new candy product called "SUGARPOVA."
Perhaps this evolution of marketing strategies will continue towards even more obscure goods and services as pro athletes and other celebrities witness the success of their entrepreneurial peers.
IF THE SHOE FITS… NEW SUPREME COURT DECISION ON COVENANTS NOT TO SUE
01-24-2013 [Jason LaCosse] [Permalink]In connection with a trade dress infringement action by Nike, Inc. against another shoe company, Already, LLC, involving Nike’s federally registered trade dress for a certain shoe design, the U.S. Supreme Court decided an important issue regarding the scope and ramifications of covenants not to sue.
In this case, an issue arose as to the ability of a defendant to maintain counterclaims in an existing proceeding, particularly counterclaims for trademark cancellation, when a plaintiff enters a broad covenant not to sue in connection with a voluntary dismissal. Here, following plaintiff Nike’s voluntary dismissal in view of entering a broadly constructed covenant not to sue, Already, LLC took a position that it still had the right to continue seeking cancellation of Nike’s federal trademark registration that formed a basis for Nike's suit. Thus, the Supreme Court framed the question as follows: whether a covenant not to enforce a trademark against a competitor’s existing products and any future “colorable imitations” moots the competitor’s actions to have the trademark declared invalid.
In its January 9, 2013 opinion, the Supreme Court unanimously affirmed the lower courts’ rulings using a slightly different standard than the lower courts used, holding that Already’s case was moot in view of the “voluntary cessation doctrine.” Under this standard, it was Nike’s burden to prove that it could not reasonably be expected to resume its enforcement efforts against Already, LLC such that there no longer existed a case or controversy. The Court held that Nike had indeed met this burden, in view of its unconditional and irrevocable covenant not to sue Already, LLC.
In a concurring opinion, Justice Kennedy reiterated that Nike had to meet a “formidable burden” under the doctrine of voluntary cessation to show that it was absolutely clear that “the allegedly wrongful behavior could not reasonably be expected to recur,” meaning that Already had no reasonable anticipation of a future trademark infringement claim from Nike regarding the types of shoes at issue.
As a note of caution, it is conceivable that the same facts that allowed Nike to avail itself of the voluntary cessation doctrine can also potentially limit future enforcement prospects with regard to third parties. Furthermore, as generally noted in the opinion and also by Justice Kennedy in the concurring opinion, courts should proceed with caution when ruling on this issue, to ensure that such covenants are not used as “automatic mechanisms for trademark holders to use courts to intimidate competitors without, at the same time, assuming the risk that the trademark will be found invalid and unenforceable.”
U.S. Supreme Court Opinion 11-982
U.S. Supreme Court Opinions Page
SCAM ALERT: OFFICIAL SOUNDING NON-USPTO SOLICITATIONS
01-15-2013 [Jason LaCosse] [Permalink]Perhaps due to the ease of monitoring online public records, there has in recent years been a surge in solicitations to patent and trademark owners which sound official but are in no way affiliated with the U.S. Patent and Trademark Office (or any other legitimate government agency).
With advances in technology, solicitations now tend to occur even earlier in the patent and trademark application process than in the past. It is also common for solicitations to pertain to renewal or other "maintenance" issues for registered trademarks and granted patents. There are even solicitations from foreign registries directed to U.S. recipients.
Altough such solicitations are not official correspondence from any government agency, they are often presented in the style of an official-looking invoice, even though they merely constitute a contractual offer, at best. Recipients should therefore take caution as they are not obligated to participate or pay the indicated amounts. Even worse, some solicitations are bold enough to appear as if they are issued by an official government agency, in some cases, very similar sounding to the real thing. As seen, below, this has prompted the U.S. PTO to issue a recent notice on this subject:
Click here to read the U.S. PTO Notice on Non-USPTO Solicitations, with Examples
2012 - A GOOD YEAR FOR MADRID
01-03-2013 [Jason LaCosse] [Permalink]In 2012, the Philippines, New Zealand, Colombia, and Mexico acceded to the Madrid system, bringing to 89 the total number of members to join the Madrid Protocol for the International Registration of Marks. Administered by the World Intellectual Property Organization, the Madrid System for the International Registration of Marks (“Madrid system”) is designed to provide a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.
Under the Madrid system, a trademark owner may protect a mark in up to 88 countries plus the European Union (Community Trade Mark members) by filing a single application. International registrations can then be maintained and renewed through essentially a single procedure.
Significantly, Mexico is the second NAFTA country and the the third country in Latin America to join the Madrid trademark filing system, effective February 19, 2013. With the addition of Colombia and Mexico, coupled with the fact that Spanish is one of the official languages of the Madrid system, perhaps more countries in the Western Hemisphere will join in the near future. Moreover, the industrial implications of Mexico could prove significant, and perhaps provide additional incentive for fellow NAFTA member Canada to join the Madrid system.
In any event, the developments of 2012 appear to have increased the appeal of the Madrid system for brand owners based in the Americas, with potentially more to come in the next few years.
For the WIPO Press Release, click here.
For the Madrid System Link, click here.
US Supreme Court to End Gene Patent Debate
12-03-2012 [Jessica Hauth] [Permalink]On Friday, the U.S. Supreme Court granted certiorari in the Association for Molecular Pathology v. Myriad Genetics case. As noted in our previous posts, this case deals with whether patent claims directed to "isolated DNA sequences" are patent eligible subject matter under the patent laws, in connection with the BRCA-1 and BRCA-2 genes involved in breast cancer.
Notably, the Supreme Court only granted certiorari, and therefore will only hear arguments and render a decision on the following question:
"Are human genes patentable?"
The other two questions presented were denied. Therefore the Federal Circuits prior decisions remain intact: (1) Myriad's method claims of using transformed cells are patent eligible under Mayo v. Prometheus, and (2) plaintiffs seeking declaratory judgment must have actual injury to have standing to bring suit.
Based on this limited scope of review, it appears that the U.S. Supreme Court will finally end the debate for gene patents, and will hopefully provide some meaningful guidance in terms of scope. We anticipate a decision may come in late spring of 2013.
CYBER MONDAY CRACKDOWN PART III
11-28-2012 [Jason LaCosse] [Permalink]This past Monday, November 26, 2012 marked "Cyber Monday," a recently established tradition identified with the Monday following the U.S. Thanksgiving weekend, where consumers tend to escalate their online holiday shopping activities.
In what may become a related tradition, U.S. Immigration and Customs Enforcement ("ICE") celebrated Cyber Monday by leading efforts to seize numerous websites that were allegedly selling counterfeit goods. The operation was dubbed "Operation Cyber Monday 3" and was conducted in connection with the global effort called "Project Transatlantic" to crack down on counterfeit goods sold online during the holiday shopping season. In all, 132 domain names were seized, and, in addition to the domain name seizures, officials are targeting numerous PayPal accounts utilized by the infringing websites for possible seizure of the illegally-generated proceeds.
U.S. ICE Press Release - Washington, D.C.
U.S. ICE Press Release - Buffalo, N.Y.
Another Press Release; Yet Another Press Release
PROPOSED UPDATE: USPTO CODE OF PROFESSIONAL RESPONSIBILITY
10-26-2012 [Jason LaCosse] [Permalink]The U.S. PTO is proposing new rules for professional conduct, by way of an update to the U.S. PTO Code of Professional Responsibility. The proposed revisions are intended to generally conform with the American Bar Association's Model Rules of Professional Conduct. By adopting rules consistent with the vast majority of state bars, the U.S. PTO aims to provide practitioners with uniform ethical obligations when practicing before the Office. The public comment period for the proposed revisions ends on December 17, 2012.
A link to the U.S. PTO's table comparison of proposed rules to the ABA Model Rules.
A link to the electronic Federal Register Notice of Proposed Rulemaking.
IP Issues and The Election
10-23-2012 [Meredith Frank Mendez] [Permalink]Intellectual property issues have becoming increasingly present during presidential elections as candidates frequently use music, phrases and even fictional characters in their campaigns. This presidential election is no different.
Big Bird has turned into the political star of this presidential race after Governor Romney made several comments about eliminating funding for Sesame Street and PBS to reduce the deficit. In response, President Obama recently ran ads mocking Romney’s remarks which stated: "Big. Yellow. A menace to our economy. Mitt Romney knows it's not Wall Street you have to worry about, it's Sesame Street." The ad has implicated intellectual property issues such as false association and endorsement for Obama’s use of the Big Bird character. Sesame Workshop, the producer of Sesame Street and owner of the “SESAME STREET” and “BIG BIRD” trademarks, has requested that the ads be pulled stating that “Sesame Workshop is a nonpartisan, nonprofit organization and we do not endorse candidates or participate in political campaigns," the organization said in a statement. "We have approved no campaign ads, and as is our general practice, have requested that the ad be taken down."
On the other side of the aisle, Governor Romney has been accused of plagiarism by Peter Berg, the writer-director of Friday Night Lights television series due to Romney’s use of the phrase "Clear Eyes, Full Hearts, Can't Lose” on posters, Facebook pages and during speeches. The popular phrase, created by Berg, was repeatedly used as a rally for the high school football team on the Friday Night Lights television series. The letter states that Romney’s use of the phrase "falsely and inappropriately associates Friday Night Lights with the Romney/Ryan campaign.”
Courts have held that the Lanham Act does apply to political speech and its purpose of reducing consumer confusion is particularly important in political campaigns. For example, after the 2008 presidential elections, singer, songwriter Jackson Browne filed a lawsuit against presidential nominee John McCain and the RNC for copyright infringement and false endorsement under the Lanham Act for their use of Jackson’s song “Running on Empty” in campaign ads. The court refused to dismiss the complaint, and rejected McCain’s argument that the Lanham Act only protects commercial and not political speech. The lawsuit was subsequently settled and resulted in McCain making a public apology for using the song.
Obviousness Still an Issue for Biotech Patents
09-25-2012 [Jessica Hauth] [Permalink]
The Battle Over the Yoga Pants
09-21-2012 [Meredith Frank Mendez] [Permalink]lululemon, the popular designer of yoga clothing has filed a Complaint in federal court in Delaware against Calvin Klein alleging that Calvin Klein is selling pants that infringe three design patents owned by lululemon. The design patents issued by the U.S. Patent and Trademark Office are for pants with a waistband featuring overlapping panels of fabric.
According to the Complaint, the patented designs are embodied in products sold by lululemon under the brand name “Astro Pant.”
The lawsuit represents a novel approach for the protection of apparel as the law currently affords limited protection to the fashion and apparel industry, which is known for copycats and knockoffs. Design patents, which protect the ornamental design of a product, are uncommon in the fashion and apparel industry. Moreover, trademarks, which typically protect names and logos, can also protect certain distinctive features of products, such as lacquered red outsole of a shoe, which the Second Circuit Court of Appeals recently affirmed in a lawsuit between French designers Christian Louboutin and Yves Saint Laurent. Lastly, copyrights will protect original works of authorship, but not works that are predominantly functional, such as pants and shirts. Indeed, Congress has yet to pass various bills that would grant greater copyright protection to clothing designs and make it easier for designers and clothing companies to sue each other for infringement.
For a copy of the lululemon Complaint, click here.
Louboutin and YSL Both Claim Victory Over Second Circuit's Ruling
09-13-2012 [Meredith Frank Mendez] [Permalink]However, the Second Circuit did not reverse the district court’s denial of the preliminary injunction because the YSL shoe at issue was a monochromatic red shoe, and therefore, would not violate Louboutin’s trademark in contrasting red lacquered outsoles.
What Your Business Can Learn From Apple v. Samsung: Design Patents Can Be Valuable
09-04-2012 [Peter Matos] [Permalink]Much has been written about the Apple v. Samsung patent dispute, with some claiming it goes too far and others claiming 'transparent' copying should justly be punished. One thing that cannot be disputed is the value of a design patent. As seen below, when consumers like the way something looks, others will migrate to that look, setting up a potentially strong case for design patent infringement, even as lawyers argue over the meaning of words in a related utility patent. Oh, and by the way, if you win, no need to settle for a reasonable royalty, as by statute, design patent infringement damages are set as profits.
Another important element that makes design patents, a beneficial, and relatively low cost patent portfolio supplement, is that copyists are by their very nature 'lazy', and their manufacturers, afraid of un-knowingly leaving out something that was important to the product, are often painstakingly diligent in their efforts to duplicate. As a result, a shotgun approach to securing the look of your innovations, in addition to their functionality, can often provide you with a hidden gem in your battle to secure your market position.
IMPACT OF APPLE’S U.S. PATENT VICTORY OVER SAMSUNG
09-02-2012 [Jason LaCosse] [Permalink]While perhaps far from over given the routine appeals of patent infringement decisions, the August 24, 2012 verdict awarding Apple $1 Billion in damages against Samsung in U.S. District Court signaled a major event in the evolving global patent landscape for mobile device technology. This particular case involved patents and trade dress for Apple’s iPhone and iPad and, in addition to the jury’s monetary damages award, Apple is also seeking to stop sales of several competing products offered by Samsung.
The anticipated magnitude of the verdict has led to much public attention in this case, so much in fact, that the Northern District of California has put up a special website for the public and media to visit. The verdict has also spawned a flurry of commentary, including viewpoints ranging from business strategies to potential impact on consumers to critiques of the U.S. patent system.
Although it may be too early to tell whether this case will someday be looked upon as a “landmark” case, important lessons can already be taken. From an intellectual property protection standpoint, this case highlights the importance of having a mix of different types of intellectual property protection in place. For instance, in this case, Apple asserted utility patent claims, which pertain to the structure and functionality of an invention; design patent claims, which cover the aesthetic looks of a product, such as graphical computer icons or the exterior look of a device; and trade dress claims, which pertain to the look and feel of a product to the extent that consumers would recognize it belongs to single source, or is sponsored by or affiliated with that sole, legitimate source. The jury instructions, which include a brief summary of each party’s contentions on page 29, can be found here.
It is noted that this particular dispute involves U.S.-based intellectual property, and that numerous foreign cases over similar technology (e.g., in Europe, Japan, South Korea, etc.), some involving the same parties, have resulted in different outcomes. Indeed, Apple has not fared well in some of the other cases, which highlights the territorial nature of intellectual property. In other words, what may be well-protected in one country may not necessarily be viewed the same way in others. Related press article. Another related press article.
Myriad Part II: Isolated DNA Claims Still Patent Eligible
08-20-2012 [Jessica Hauth] [Permalink]Composition claims to "isolated" DNA molecules are patent eligible under 35 USC 101 as nonnaturally occurring compositions of matter -- this, among other decisions, is what the Court of Appeals for the Federal Circuit ("CAFC") published in its opinion of August 16, 2012.
To refresh your memory, this case was first decided in the Southern District of New York, where it was determined that the claims were not patent eligible under 35 USC 101. On appeal to the CAFC (the first time), the Court reversed in part, finding that "isolated" DNA claims are sufficiently different from DNA as it occurs in nature. It also affirmed in part the ruling that certain method claims for "comparing" or "analyzing" DNA sequences were not patent eligible since they were not transformative. The case was appealed to the U.S. Supreme Court, who granted certiorari, reversed and remanded back to the CAFC for reconsideration in view of its recent decision Mayo v. Prometheus, which held that diagnostic claims involved only steps of "analyzing" and "determining" were not patent eligible.
The CAFC therefore heard a second round of oral arguments recently, and once again ruled as it did before, even in view of Mayo. Determining first that there was standing for the plaintiff’s to bring the suit, the Court moved on to the merits of patent eligibility of various claims for “isolated” DNA concerning BRCA1 and BRCA2 genes, and methods of their use.
As to the isolated DNA claims, the CAFC decided that Mayo does not control whether composition of matter claims are patent eligible. It finds, as it did previously, that isolated DNA molecules are not found in nature, but rather are markedly different from naturally occurring DNA, as they have distinct chemical structures and identities. Human intervention is needed to impart these distinct structures, such as by breaking covalent bonds. That they are prepared from products of nature does not change this, since every composition of matter is in some way or another derived from natural products. This is in line with longstanding precedent established under Diamond v. Chakrabarty and Funk Brothers. Also, cDNAs were noted to be clearly distinctive molecules, since they lack introns, and therefore are unquestionably patent eligible.
The court also expressly stated that isolated DNA molecules are not simply purified DNA, but are chemically changed and therefore are different from anything occurring in nature. Correctly recognizing that, chemically speaking, covalent bonds define the boundaries between different molecules, the Court noted that the breaking of these bonds to create “isolated” DNA significantly and meaningfully change the identity of the resulting molecule, even if it is a molecule as important DNA. This is not like snapping a leaf off a tree, which is a physical transformation, but rather is a chemical transformation to a different molecule. Any high school chemistry student would appreciate this distinction. Moreover, the Court noted that patent eiligibility of isolated DNA is not negated by any similarity in nucleotide sequence between it and the more complex chromosomal DNA. The uses and coding functions of isolated DNA are also irrelevant to determinations of patent eligibility under 35 USC 101, which focus more appropriately on structure rather than function.
The Court also rejected the government's earlier posited "magic microscope" test as an improper test according to both science and the laws of invention. This is perhaps for the best, since the "magic microscope" has only been confusing since its arrival.
Regarding the method claims, the CAFC once again found most of the asserted method claims to be not patent eligible as being merely abstract mental processes. The Court considered Mayo to be instructive to their analysis of the method claims, which were similarly directed to method claims, and their holding is in agreement with Mayo. One claim, however, included the step of growing transformed cells before comparing the growth rates, and this claim was held to be patent eligible, even under Mayo, since the step of growing cells is transformative and not merely abstract.
The Court was also very explicit that its decision was of limited scope – to patent eligibility – and not to any other consideration such as patentability or breadth under 35 USC 102, 103, or 112. Moreover, their decision expressly did not address whether patents on medical methods and novel biological molecules are appropriate for patents, or the appropriateness of Myriad's use the patents, as these are policy questions for Congress to address. They did note, however, that patents on life-saving materials and processes that require a great deal of risk to develop seem to be precisely the type of inventions that would benefit from the exclusive rights offered by patent protection.
NEW U.S. PATENT APPLICATION FORMS FOR SEPTEMBER 16, 2012
08-16-2012 [Jason LaCosse] [Permalink]The U.S. Patent and Trademark Office ("USPTO") has published a set of new patent-related forms which will accommodate new rules that will soon go into effect under the America Invents Act ("AIA").
The new forms, available here, become effective on September 16, 2012, and pertain to the following topics:
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Inventor's Oath or Declaration
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Supplemental Examination
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Third-Party Submissions
Additional major changes to the U.S. patent system, including the "first-to-file" provisions, will go into effect on March 16, 2013.
Patent Changes Coming in September
08-14-2012 [Jessica Hauth] [Permalink]The U.S. Patent and Trademark Office ("USPTO") has published its final rules for the implementation of certain provisions of U.S. patent law as reformed under the America Invents Act ("AIA") that become effective on September 16, 2012. As noted in previous blog posts, the AIA was passed last year to revamp the U.S. patent system in stages, with various provisions going into effect at different times. While some changes have already occurred, many significant changes will become effective on September 16, 2012, including the following:
- inventor's oath/declaration
- supplemental examination
- administrative trial proceedings, including: inter partes review; post grant review; and transition program for covered business method patents
The final rules for these changes have now been issued by the USPTO. See here for more information, and to find links to the various rules. The rules for the Patent Trial and Appeal Board, which will hear the administrative trials, is also published.
The USPTO will go on tour in September 2012, in a series of "roadshows" to be held in Alexandria, Atlanta, Detroit, Denver, Houston, L.A., Minneapolis, and New York to explain these administrative trials and procedures. For more information on the roadshows, click here.
A final round of changes to the patent system will go into effect on March 16, 2013. These changes will have their own rules, to be issued at a later date, so check back for more information.
SECOND VERSE, SAME AS THE FIRST – FEDERAL CIRCUIT HEARS ORAL ARGUMENTS ON REMAND IN MYRIAD
07-23-2012 [Jessica Hauth] [Permalink]
Cracking Down on Trademark Registry Scams
06-28-2012 [Jessica Hauth] [Permalink]
INTERESTING MIX OF PROPOSED GENERIC TOP-LEVEL DOMAINS
06-26-2012 [Jason LaCosse] [Permalink]On June 13, 2012, in what was referred to as “Reveal Day” for the new generic Top-Level Domain program, ICANN posted the names of the 1,930 proposed gTLDs together with applicant information for applications received in the first application window.
For reference purposes, the proposed gTLDS can be broadly characterized in various ways, such as geographic names, descriptive names, brand names, community names, and “IDNs”. IDN stands for Internationalized Domain Name. IDNs are simply domain names represented by local language characters such as Arabic or Chinese, or letter equivalents rather than Latin characters.
Though perhaps not as numerous as some may have initially anticipated, there appear to be a fair number of trademarks or brand name gTLDs for large corporations or other types of large entities.
Numerous proposed gTLDs have multiple applicants, and unless private agreement is reached, the eligible applicants apparently must bid at auction for sole possession of each unique gTLD.
Two factors which may have limited the overall numbers of proposed gTLDs are the sizable application fees and the logistical considerations. For example, a US$185,000 evaluation fee likely presented a substantial barrier to some. Moreover, the program requires the operation of a domain registry and a demonstration of technical and financial capacity for such operations, including the management of registrar relationships.
Overall, the application process is still in the early stages. For example, an objection period for submitting formal objections is expected to remain open for approximately seven months. Indeed, the first set of new generic Top-Level Domains is not expected to be operational until sometime in 2013. Accordingly, the number of initially operational new gTLDs could be substantially less than the currently pending 1,930 proposed gTLDs.
COLOMBIA JOINS MADRID - BEGINNING OF THE BEGINNING?
06-08-2012 [Jason LaCosse] [Permalink]Colombia recently became the 87th member to join the Madrid Protocol for the International Registration of Marks, effective August 29, 2012. Administered by the World Intellectual Property Organization, the Madrid System for the International Registration of Marks (“Madrid system”) is designed to provide a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.
Under the Madrid system, a trademark owner may protect a mark in up to 86 countries plus the European Union (Community Trade Mark members) by filing a single application. International registrations can then be maintained and renewed through essentially a single procedure.
Although Spanish is one of the official languages of the Madrid system, Colombia is only the second country in Latin America and just the third Spanish-speaking country in the world (Spain and Cuba are the others) to join the Madrid trademark filing system. Perhaps more countries in the Western Hemisphere are likely to follow, but for now there are relatively few member countries located in the region. Thus, for the time being, such geographical implications may present at least some strategy concerns for brand owners based in the Americas, as they consider utilizing the Madrid system.
For the WIPO Press Release, click here.
For the Madrid System Link, click here.
FACEBOOK IPO EXEMPLARY OF INTELLECTUAL PROPERTY-INTENSIVE INDUSTRIES’ IMPACT ON U.S. ECONOMY
05-19-2012 [Jason LaCosse] [Permalink]Facebook’s historic initial public offering (“IPO”) on Friday was preceded by a patent portfolio “shopping spree” illustrative of the importance of intellectual property’s role in the U.S. economy. According to news reports in the months leading up to its IPO, it appears that Facebook acquired well over 1,000 patents and patent applications outright, as well as licenses to many more patents, including large groups of such patents formerly owned by IBM [article] and AOL [article], among others. Regardless of the strategy implications as to whether the acquisitions were primarily for defensive purposes, offensive purposes, or a relatively equal balance of each, the sheer magnitude of Facebook’s patent purchasing activity was exemplary of the dominant impact that intellectual property-intensive industries are having on the U.S. economy.
According to a U.S. PTO study and report, the entire U.S. economy relies on some form of intellectual property (“IP”) because virtually every industry either produces it or uses it. According to the report, IP-intensive industries accounted for about $5 trillion in value added, or nearly 35% of U.S. gross domestic product ("GDP") in 2010.
The job market was equally impacted. IP-intensive industries directly accounted for 27.1 million American jobs, and IP-intensive industries indirectly supported another 12.9 million more jobs throughout the economy, totaling 40.0 million jobs, or 27.7% of all jobs in 2010.
For a USPTO summary and additional statistics on the impact of IP-intensive industries, click here.
For a related USPTO press release, click here.
For the full report co-authored by the USPTO and the Economics and Statistics Administration (ESA), click here.
FY2011 SAW A SUBSTANTIAL INCREASE IN U.S. SEIZURES OF COUNTERFEITS AND PIRATED GOODS
04-26-2012 [Jason LaCosse] [Permalink]As widespread theft of intellectual property continues on a global scale, an increasing number of counterfeits and pirated goods produced overseas are directed to the U.S. market. While this is not a new phenomenon, it merits continued vigilance on the part of intellectual property rights (“IPR”) holders and law enforcement agencies.
According to U.S. Customs and Border Protection (“CBP”), which is part of the Department of Homeland Security, twenty four percent (24%) more seizures of counterfeits and pirated goods were made during fiscal year 2011 than in FY2010.
Not only do imitation products economically impact the legitimate rights holders, such goods can also pose serious dangers to the health and safety of consumers. One obvious example would be pharmaceuticals, but the dangers extend to electronics, cosmetics, and other products.
Interestingly, CBP reported an apparent shift towards using international mail, express courier, and consolidated shipping services to import counterfeits and pirated goods.
Consumer electronics were the top commodity seized, followed by footwear and pharmaceuticals.
For more statistics on Customs and Border Protection IPR Seizures, click here.
For the FY2011 U.S. CBP IPR Seizures Graphic, click here.
Myriad Remanded Back to Federal Circuit
03-27-2012 [Jessica Hauth] [Permalink]The United States Supreme Court has granted certiorari in the case of AMP v. Myriad Genetics, vacated the previous Federal Circuit opinion, and remanded the case back to the Federal Circuit for reconsideration in view of its recent decision in Mayo v. Prometheus.
Even though the claims in Prometheus were method claims, whereas the challenged claims in Myriad are compositions of matter claims directed to "isolated DNA" sequences, the policy reasons for keeping laws of nature in the public domain to protect innovation set forth in Prometheus could just as easily be transmuted and applied to composition claims. Particularly troubling for "isolated DNA" claims is the rationale in the Prometheus opinion that activities which are routine or conventional in the scientific community, without more, are not patent eligible. Since isolating DNA is a commonly used technique in many labs, this could signal trouble for Myriad. Given the strong precedent set by Prometheus, as it was a unanimous decision, it will be interesting to see if the Federal Circuit still finds the Myriad claims to "isolated DNA" sequences to be patent eligible subject matter, and if Myriad will find its way to the Supreme Court again someday.
USPTO ROAD SHOW VISITS FT. LAUDERDALE ON FRIDAY, MARCH 2
03-01-2012 [Jason LaCosse] [Permalink]
The United States Patent and Trademark Office's "road show" regarding the Leahy-Smith America Invents Act is set to visit South Florida on Friday, March 2, 2012. The event will be held at the Broward County Main Library in Fort Lauderdale from 10:00 a.m. - 4:30 p.m.
For more information, click here.
ArrivalStar and Melvino Continue to Assert Patents in the Southern District of Florida
02-13-2012 [Oliver Ruiz] [Permalink]The arrival of a new month has brought with it another slew of lawsuits filed by ArrivalStar S.A. and Melvino Technologies in the Southern District of Florida, asserting patent infringement against a host of business entities.
As seen in one recent Complaint filed against the cosmetic retailer, Sephora, these lawsuits allege that businesses infringe a handful of patents by using tracking and messaging technologies for shipments, such as Sephora's "Advance Shipping Notice," Shipping Confirmation E-mail," and "Order Status and History" services.
DOT “ANYTHING”? APPLICATION WINDOW OPENS FOR NEW TOP-LEVEL DOMAINS
02-05-2012 [Jason LaCosse] [Permalink]
U.S. ANTI-PIRACY LEGISLATION HITS SPEED BUMP - SOPA / PIPA
01-20-2012 [Jason LaCosse] [Permalink]Anti-piracy legislation in both the U.S. House (H.R. 3261, Stop Online Piracy Act, or “SOPA”) and Senate (S.968 PROTECT IP Act, or “PIPA”) has been abruptly halted following this past Wednesday’s worldwide online blackout protest involving numerous popular Internet sites, tweets, blogs, and the like (including WIKIPEDIA). There has also been growing domestic concern over the potential extent of the federal government's reach in its effort to address rogue overseas websites.
While the anti-piracy bills are intended to address legitimate violations of U.S. intellectual property rights by websites that generally operate outside the U.S., opponents are concerned with the potential for excessive restraints on liberty, both in the U.S. and worldwide, should the current versions of these bills become enacted into law.
Related article: click here.
Licensing Information for PCT Applications
01-05-2012 [Jessica Hauth] [Permalink]Happy New Year!
As of January 1, 2012 the World Intellectual Property Organisation (WIPO) is now permitting international PCT applicants who are interested in licensing their inventions to request that the International Bureau to make this information publicly available. Accordingly, the availability of licensing and even terms of such license, such as specifying which countries the license will apply, whether it will be exclusive or non-exclusive, etc., will be made available in connection with the designated PCT application on WIPO's website. This licensing information, however, will not become part of the PCT application itself. The licensing availability request may be submitted at any time during the pendency of the PCT, including at the time of filing.
For more information, see the PCT Newsletter from WIPO here.
NEW-LOOK WEBSITE FOR THE USPTO
12-28-2011 [Jason LaCosse] [Permalink]The United States Patent and Trademark Office’s website located at www.uspto.gov is being revised, starting with a new home page design which debuted on December 20, 2011. According to the USPTO, the new home page better presents the activities and services of the USPTO to the public, and aims to be more accessible.
For more information about the new USPTO website, click here.
U.S. Supreme Court Considers Patent on Treatment Process
12-08-2011 [Jessica Hauth] [Permalink]Yesterday, the United States Supreme Court heard oral arguments in the case of Mayo Collaborative Services v. Prometheus Laboratories, Inc., in which Mayo petitioned the Court to determine whether claims of Prometheus' patent directed to optimizing dosage levels of thiopurine for the treatment of various autoimmune disorders is patent eligible subject matter under 35 U.S.C. 101. More specifically, the claims call for "administering" a certain amount of thiopurine to a patient and "determining" from the resulting metabolite level whether or not to increase or decrease the dosage.
Mayo argues that the patent impermissibly tries to claim laws of nature, and that the claims are so broad and preempt natural phenomena such that there is no room for competition. According to Mayo's reading of the patent, a doctor drawing blood from a patient and simply thinking about an appropriate range of drug to apply amounts to infringement, and that this is far too broad for patent protection to extend.
On the other hand, the patent owner, Prometheus, emphasized that their patent protects the application of a law of nature, which is patentable, rather than the law of nature itself. They highlighted that they use specific drugs (thiopurines) to treat specific diseases (certain autoimmune diseases) by a particular process that involves certain claimed levels of metabolites "indicating a need" to increase or decrease the dosage of the administered drug. They maintain that this is therefore a process based in the physical world and that it does not preemt follow-on innovation.
A common theme running throughout the arguments, and the Supreme Court Justices' questions, was falling back to a discussion of novelty and obviousness under 35 U.S.C. 102 and 103 rather than addressing the threshold inquiry of patent eligibility under 35 U.S.C. 101, which was the reason for challenging the patent and the topic of the question before the Court. This may be a result of the law being more settled with regard to novelty and obviousness than for patent eligibility. This may, however, as the United States as amicus curiae argued, be because novelty and/or obviousness is a more appropriate challenge for this patent than patent eligibility.
The Court acknowledged that laws of nature are not patentable, but that applications of laws of nature are patentable. They seemed most concerned with delineating where the line between the two is - in other words, how much does an inventor have to add to a law of nature to get patent eligible subject matter? The Justice's inquiries from the parties on this line failed to provide clear examples. Hopefully, the Supreme Court will be able to provide concrete guidance on this point when they issue their opinion in the coming months.
For those interested, a copy of the transcript can be found here.
Passing of the LIPITOR Patent
11-30-2011 [Jessica Hauth] [Permalink]
.XXX DOMAIN: NEXT STAGE - RESERVING YOUR BRAND NAME/ TRADEMARK
11-14-2011 [Jason LaCosse] [Permalink]Although the sunrise period has passed for brand owners from outside the adult entertainment industry to pay a one-time fee to block the registration of “.xxx” domain names matching their federally registered trademarks, many companies are now considering whether to directly purchase their .xxx domain name, and perhaps variations thereof, for “defensive” purposes.
The first come, first served, General Availability begins December 6, 2011, and will be open to members of the adult Sponsored Community as well as non-members, such as those who wish to protect their personal names, trademarks or other intellectual property. Some accredited registrars are accepting pre-registration to promote the prompt filing of applications by the first day of General Availability.
In the meantime, the present “Landrush” period provides one last opportunity for those within the adult Sponsored Community to secure a .xxx domain name prior to General Availability.
Firm Successful On Appeal For Client TabletKiosk
11-08-2011 [John Fulton] [Permalink]After two and a half years of litigation, and a subsequent appeal to the U.S. Court of Appeals for the Federal Circuit, last Friday, November 4, 2011, the Court affirmed the district court's claim construction and ruling of non-infringement in a patent infringement defense action handled by the firm on behalf of its client, Sand Dune Ventures, Inc. d/b/a TabletKiosk. In this matter, TabletKiosk, along with numerous other well know portable computer and smart phone manufacturers including Apple, Dell, Fujitsu, HTC, Lenovo, Panasonic, Palm, and Toshiba, challenged claims of patent infringement lodged by Typhoon Touch Technologies (a non-practicing entity) based on a portfolio of patents it had acquired for litigation purposes. Although a number of defendants ultimately settled, TabletKiosk, along with the aforementioned co-Defendants and Appellees stood firm, and through a cooperative effort by their respective counsel, persevered to secure this finding of non-infringement.
Malloy and Malloy, P.A. is very proud of this success and was honored to represent TabletKiosk, makers of portable tablet computing devices, throughout this process. TabletKiosk's resolute attitude and determination to avoid enabling another patent troll by conceding to an unwarranted settlement has been justly rewarded.
For more information regarding the Federal Circuit's decision, click here.
Federal Circuit Rejects "Capability" Argument
11-08-2011 [John Fulton] [Permalink]In a precedential opinion issued this past Friday, the United States Court of Appeals for the Federal Circuit rejected arguments that an accused device merely needs to be "capable" of being configured or programmed to perform a claimed function in order for patent infringement to occur.
The district court's construction of several disputed claim terms essentially stated that for a device to be covered by the claim term, the device as sold must actually perform, or be configured or programmed to perform, each of the functions stated in the claims. Typhoon Touch Technologies, Inc. argued on appeal that a number of the claim limitations of its patents were met if a device has the "capability" of being configured or programmed to perform the stated function, even if the device is not structured to do so as sold.
On appeal, the Federal Circuit affirmed the district court's construction of several claims terms, including, "memory for storing", "processor for executing", "operating in conjunction [with]", and "keyboardless", and as a result, affirmed the district court's judgment of non-infringement as to all Appellees and all of the accused devices.
The devices at issue in the present action comprise various smart phones and tablet style computers, and the list of Appellees is a veritable Who's Who in the industry, including Dell, Lenovo, Sand Dune Ventures d/b/a TabletKiosk, Toshiba America Information Systems, Fujitsu America, Panasonic Corporation of America, Apple, HTC America, and Palm. Appellant, Typhoon Touch Industries, Inc., is a non-practicing entity.
For the complete Federal Circuit Opinion, click here.
XXX DOMAIN: BLOCKING YOUR BRAND NAME/ TRADEMARK
10-18-2011 [Peter Matos] [Permalink]Most of our clients have secured the “.com” domain name corresponding to their trademarks, but there are other top level domains such as “.net, “.org,” and “.biz.” While we usually do not recommend securing every possible domain, there is a new “.xxx” extension that is causing concern among trademark owners. From now until October 28, 2011 brand owners from outside the adult entertainment industry have the opportunity to pay a one-time fee to block the registration of “.xxx” domain names matching their federally registered trademarks. Generally, the names can remain blocked for at least the next 10 years. Of course, many technicalities and conditions apply in this blocking process, so please consider this to be general information only. For more information on how to proceed directly with approved registrars, visit the .xxx registry’s website, http://www.icmregistry.com/. If you would like our assistance, our estimated fees to assist with this domain blocking process would be $625.
Timeslines.com Files Lawsuit to Halt Release of Facebook's Timeline
09-30-2011 [Meredith Frank Mendez] [Permalink]Timelines Inc., a Chicago-based company filed a lawsuit against Facebook for trademark infringement based on Facebook’s much-hyped and anticipated Timeline, which is a new profile touted by Facebook as “"the story of your life.” Timelines Inc. operates the www.timelines.com website, which allows users to record and share personal or historic events, and contribute descriptions, links, photos and videos related to those events, people, etc. In its Complaint, Timelines alleges that it has been using the “TIMELINE” mark since 2008 and is the owner of two federal trademark registrations for “TIMELINE” and claims that Facebook’s Timeline could eliminate” its entire business.” Timelines has its own Facebook page and alleges that Facebook is redirecting visitors to Facebook’s own Timeline page and away from Timeline’s Facebook page. The lawsuit seeks damages and a temporary restraining order to prevent itself from "being rolled over and quite possibly eliminated by... the world's largest and most powerful social media company." Facebook’s Timeline is scheduled to go live any day to Facebook’s 750 million users.
PATENT FEES SET TO INCREASE
09-22-2011 [Jason LaCosse] [Permalink]The U.S. Patent and Trademark Office is set to raise many patent-related fees on Monday, September 26, 2011. Many fees will experience an approximately 15% increase. The new fee schedule can be found here.
Patent Reform Becomes Law
09-16-2011 [Jessica Hauth] [Permalink]This morning, President Obama signed the America Invents Act (H.R. 1249) into law. This represents the largest reform to the
Many of the provisions of the Act will go into effect in one year, so many changes won’t be noticed until 2012. The more radical changes to the patent system, including moving to a “first-inventor-to-file” system and expanding prior art, won’t go into effect until March 2013. However, we will see some changes soon, including an increase in fees on September 26, 2011. Some provisions are effective immediately.
While it may take some time to see the effects of the new law, there are some indications of things to come. For instance, the importance of keeping an invention secret until a patent application is filed, and moving swiftly in filing a patent application, will be increasingly important since the realm of prior art will be expanded. Also, an inventor who is the first to invent but is not the first to file an application may not receive a patent on the invention unless they can prove the earlier filer derived the application from them. Once a patent application is filed, third parties can submit prior art challenging the application within certain time limits and requirements. Even issued patents can be challenged by post-grant review and inter partes review for validity. Accordingly, there will be more ways to challenge patents and patent applications, and it may become more difficult to obtain a patent.
Despite the aspirations of creating a more streamlined patent process, the new law is not always straightforward. The rules of the patent system are changing, and are complicated in some instances. Accordingly, implementation of the new law will be a challenge.
The U.S. Patent & Trademark Office has created a micro-site devoted to explaining the implementation of the law. To assist in this process, they are seeking advice and guidance from the public on how best to do so. You can view the website and submit comments at www.uspto.gov/patents/init_events/aia_implementation.jsp
PATENT REFORM’S IMPACT ON INDEPENDENT INVENTORS
09-12-2011 [Jason LaCosse] [Permalink]
Patent Changes Loom
09-09-2011 [Jessica Hauth] [Permalink]Last night, the Senate voted 89-9 to pass H.R. 1249, commonly referred to as the America Invents Act, which seeks to introduce vast changes to the current patent system in the U.S. The most notable change will be moving from a "first-to-invent" to a "first-inventor-to-file" system, placing more emphasis than ever on the need to move quickly to file patent applications. Other notable provisions include: allowing third party submissions of prior art during prosecution of applications, prioritized examination option for patent applications, post-grant review of patents, inter partes review replacing interference proceedings, derivation proceedings, an increase in many fees charged by the U.S. Patent & Trademark Office ("USPTO"), prohibition of patents for business methods on tax strategies and human organisms, allowing for virtual marking, revamping standards for false marking claims, some diversion of USPTO fees, and additional programs and studies for the USPTO.
Since the bill was passed without amendment (the amendments proposed by Senators Sessions and Cantwell were not passed, and the amendment by Senator Coburn was tabled), the bill will now go to President Obama for consideration and signature. His approval is expected. Accordingly, this bill could become law in a matter of days.
Patent Reform Act Moving to Final Vote in Senate
09-06-2011 [Jessica Hauth] [Permalink]A few moments ago, the Senate voted overwhelmingly in favor (93 yea, 5 nay) of cloture on H.R. 1249, commonly referred to as the America Invents Act. Accordingly, further debate on the bill is now limited to 30 hours and only currently existing amendments can be considered. A vote on the merits of the bill itself (highlights to be presented in a forthcoming blog entry) will then occur before moving to the President for approval or veto.
Stay tuned for further updates to this important legislation affecting patent reform in the U.S.
.XXX DOMAIN: RESERVE YOUR NAME OR BLOCK IT?
08-23-2011 [Jason LaCosse] [Permalink]With the somewhat controversial launch of the new top level domain .XXX scheduled for late-2011, trademark owners should take note of the upcoming dual sunrise periods: one for those within the adult entertainment industry; another for those who wish to block their registered marks from use in .XXX.
Sunrise A is the time period when trademark owners and other IP holders within the adult sponsored community can apply for .XXX domain names ahead of the general public. This period will run for 52 days starting September 7, 2011.
Sunrise B is the time period when trademark owners and other IP holders outside of the adult sponsored community can apply to opt-out of .XXX to block their registered marks from use in .XXX. This period will also run for 52 days starting September 7, 2011.
More information on the .XXX registry, click here.
Federal Circuit Raises The On-Sale Bar
08-22-2011 [John Fulton] [Permalink]
Today, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion addressing the "on-sale bar" under 35 U.S.C. §102(b). Section 102(b) provides that:
A person shall be entitled to a patent unless —
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the
In August Technology Corp. v. Camtek, Ltd., Camtek argued that August Technology's NSX-80 wafer inspection device was on "sale" under section 102(b) prior to the critical date of August Technology's U.S. Patent No. 6,826,298, and thus, was valid prior art which August Technology failed to disclose to the Patent Office during prosecution, thereby constituting inequitable conduct. The District Court jury concluded that the NSX-80 device was not on "sale" prior to the critical date of the '298 patent, based on instruction 23 which stated that "[i]n order to be on 'sale' the NSX-80 must have also been ready for patenting at the time the alleged offer for sale is made."[1]
The Federal Circuit agreed with Camtek that the jury instruction contained an erroneous statement of the law. The Court relied upon the U.S. Supreme Court's decision in Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998) which held that that the "on-sale" bar applies when two conditions are met before the critical date: (1) the product is the subject of a commercial offer for sale, and (2) the invention is ready for patenting. The issue presented on appeal was whether the invention must be ready for patenting at the time an alleged offer is made. The Court held that it did not, stating that to require that an invention be ready for patenting at the time of the offer would render the second prong of Pfaff superfluous. Rather, the Federal Circuit held that, in accordance with Pfaff, the invention must be ready for patenting prior to the critical date.
For the full Federal Circuit Court opinion, click here.
[1] The Federal Circuit noted that jury instruction 23 was patterned after the AIPLA model jury instructions
Storm Clouds on the Horizon?
08-22-2011 [Francisco Ferreiro] [Permalink]
Several months ago, Amazon unveiled its “Cloud Drive” – a web application which permits users with Amazon accounts to upload up to five gigabytes of music, free of charge, to Amazon's server. Along with providing storage, the service also allows users to access, stream, and download their music from any location. Given that Amazon is providing streaming access music, there is some questions as to whether Amazon’s decision to offer the service, without a license from music owners, may result in future legal disputes. In this respect, Amazon has taken the position it is simply providing users with access to their own music files and, therefore, that no additional licenses are necessary. In contrast to Amazon's approach, Apple has actively negotiated licenses with music publishers in anticipation of it's Fall 2011 launch of its "iCloud" service. Music labels, for their part, are remaining silent on the issue as they wait to see how this “plays” out. For more information click here.
Alzheimer's Mouse in Patent Battle
08-18-2011 [Jessica Hauth] [Permalink]Since February of 2010, Alzheimer's Institute of America (AIA) has been embroiled in a patent infringement suit it brought against a number of defendants, claiming infringement of certain patents covering the genetic mutation, dubbed the "Swedish mutation", that causes early on-set Alzheimer's disease. Last week, AIA dropped the case against one defendant, Jackson Laboratory of Bar Harbor, Maine, for an unusual and interesting reason.
The suit alleged that Jackson Laboratory was infringing the cited patents by providing a number of mouse models to academic institutions for Alzheimer's research. Jackson Laboratory requested the assistance of the National Institutes of Health (NIH) since they fund much of Jackson Laboratory's work. In an unprecedented move, the NIH intervened and provided Jackson Laboratory a letter granting its "authorization and consent" to use and manufacture any invention claimed in a U.S. patent for work performed in connection with particular grants given to Jackson Laboratory, including those relating to Alzheimer's research. This maneuver essentially provided Jackson Laboratory with a compulsory patent license as a federal contractor that effectively shields it from patent infringement liability, since AIA would have to then sue the federal government to continue this claim. Accordingly, the case against Jackson Laboratory was dismissed, though litigation continues as to other remaining defendants.
Additional information can be found here:
blogs.nature.com/news/2011/06/nih_intervenes_in_alzheimers_m.html
the-scientist.com/2011/08/17/alzheimer%E2%80%99s-mice-still-available/
Christian Louboutin Loses First Round of Lawsuit Over Red-Soled Shoes
08-12-2011 [Meredith Frank Mendez] [Permalink]Paris-based footwear designer Christian Louboutin was denied a preliminary injunction to prevent famed-fashion house Yves Saint Laurent from selling shoes with red soles similar to Louboutin's. In April, Louboutin filed a federal lawsuit for trademark infringement against Yves Saint Laurent in the United States District Court for the Southern District of New York claiming that YSL infringed Louboutin's signature red soles.
According to the Complaint, Louboutin came up with his signature red sole nearly 20 years ago, when he painted red nail polish on the black soles of a pair of women's shoes. In 2008, the United States Patent and Trademark Office granted Louboutin a federal trademark registration for the red soles. Louboutin's high-end signature red soles, which cost upward of $795, are worn by many celebrities and were often seen adorning the feet of the ladies of "Sex and the City." According to Louboutin’s lawyer, the red soles are “ the lifeblood of the company.”
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Judge Marrero recognized the impact of Louboutin’s red soles in the fashion industry stating that “When Hollywood starlets cross red carpets and high-fashion models strut down runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled black shoes flaunt a glamorous statement that pops out all at once. . . . For those in the know, cognitive bulbs instantly flash to associate: ‘Louboutin.’ ”
However, Judge Marrero ultimately denied the request for preliminary injunction and ruled that: 'Because in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”
Judge Marrero's ruling denying the preliminary injunction did not stop there. He ordered the parties back to court next week so he can hear arguments why Louboutin's trademark registration should not be cancelled.
Although Burberry’s plaid and Tiffany’s blue are protectable trademarks, this ruling calls into question whether a designer can own exclusive rights to a color and whether color can operate as a source identifier.
GOOGLE BUYS A THOUSAND PATENTS
08-05-2011 [Jason LaCosse] [Permalink]
Gene Patents Live
07-29-2011 [Jessica Hauth] [Permalink]Today, the Federal Circuit issued its decision in the case of AMP v. Myriad Genetics. After deciding the threshold issues, the Court held the following with regard to the merits of the case:
- "isolated" DNA molecules do not exist in nature, and therefore are patent-eligible subject matter under 35 USC 101
- Myriad's claims to a method for screening potential cancer therapeutics via changes in cell growth rates is not merely a scientific principal, and therefore are patent-eligible under 35 USC 101
- Myriad's method claims directed to "comparing" and "analyzing" DNA sequences are not sufficiently transformative, and cover only ineligible abstract mental steps
Relying significantly on U.S. Supreme Court precedent, the Federal Circuit majority opinion explained that "isolated" DNA claims are patentable subject matter since they cover molecules that are "markedly different - have a distinctive chemical identity and nature - from molecules that exist in nature." They stated that it was undisputed that isolated DNA as claimed by Myriad exists in a different chemical form (a distinctive chemical molecule) from native DNA as it exists in the body, correctly highlighting that native DNA molecules are part of a contiguous string of DNA located on a chromosome, and further complexed with histones and packaged into chromatin. Isolated DNA, on the other hand, is a free-standing portion of DNA, frequently only a single gene, and is the product of human intervention, such as by cleaving the covalent bonds of the native DNA backbone or synthesizing a DNA molecule. They emphasize that isolating is not the same as purifying -- purification makes pure a material that was previously impure, whereas isolating DNA requires removing it from its native cellular and chromosomal environment, producing a molecule that is markedly different from what exists in the body. They rejected AMP's argument that having the same nucleotide sequence renders an isolated DNA molecule the same as that found in nature. They also rejected the government's argument that only cDNA's should be patent eligible, finding that both cDNA's and isolated DNA molecules are patent eligible. They also noted their decision agrees with the long-standing practice of the U.S. Patent & Trademark Office.
With regard to the method claims, the Court found that the steps of "comparing" or "analyzing" gene sequences can be accomplished with mere inspection alone, and so are only abstract mental processes and are ineligible for patent protection. They do note, however, that applications of such abstract mental processes may be patentable, but the claims at issue were not directed to applications. The claims for a method of screening potential cancer therapeutics was held to be patent eligible, since it involved the transformative steps of "growing" transformed cells in specific conditions (requiring manipulation), and "determining" the cells' growth rates (also involving physical manipulation).
The decision was not unanimous, however. Of the three-judge panel, Judge Bryson dissented with regard to "isolated" DNA claims, stating that he believed there was no difference between them and native genes. He did agree that cDNA's are patent eligible.
Southern District of Florida Selected for Patent Pilot Program
07-13-2011 [John Fulton] [Permalink]
The U.S. District Court for the Southern District of Florida is one of only fourteen federal districts recently selected to participate in a 10 year pilot program intended to promote expertise among U.S. district judges in the specialized field of patent law.
Eligibility requirements for the pilot program included being among the top 15 district courts in terms of the number of patent cases filed in 2010, or being a district having adopted or certifying its intention to adopt local patent rules.
Under the program, patent cases will continue to be randomly assigned within each district, however, a judge who is not designated to hear patent cases in his or her district may decline the case, and the matter will be reassigned to one of the judges specifically designated to hear these cases in their district.
The Honorable K. Michael Moore, The Honorable Donald M. Middlebrooks, and The Honorable Patricia A. Seitz have been designated to hear patent cases in the Southern District of Florida. We congratulate each on their selection to participate in this important program.
For more Information, click here.
H.R. 1249 Passes in House
06-24-2011 [Jessica Hauth] [Permalink]Yesterday, the House of Representatives passed H.R. 1249, commonly known as the America Invents Act, which seeks to reform the U.S. patent system. The bill recieved bipartisan support, with over 70% of the House voting in favor. Notable provisions of this bill include:
- moving from a "first-to-invent" system to a "first-to-file" system
- prior user rights
- fees collected by the US Patent & Trademark Office will be allocated by an Appropriations committee
H.R. 1249 is similar to a companion bill previously passed by the Senate (S. 23), although it does provide some differences. It will now be sent to the Senate for approval or further amending before going to the President.
Supreme Court Rules Against Microsoft
06-14-2011 [John Fulton] [Permalink]
In a unanimous decision delivered by Justice Sonia Sotomayor, the Supreme Court held that an invalidity defense must be proven by “clear and convincing evidence," likely ending Microsoft's efforts to avoid a $200 million plus damages award.
As previously reported, Microsoft challenged a Federal Circuit Court of Appeals finding of validity in favor of patent holder, i4i, which resulted in an award of well over $200 million in damages to i4i. In its decision, the Federal Circuit relied on its long standing precedent that patent invalidity must be proven by "clear and convincing evidence."
Microsoft argued that the Federal Circuit erred in requiring this heightened standard, and urged that the lesser "preponderance of the evidence" standard should apply to determinations of patent invalidity, as is the case in finding patent infringement. The "preponderance of the evidence" standard applies in most civil actions and essentially requires a finding that it is "more likely than not" that the evidence presented is true, whereas the higher "clear and convincing" standard requires a "substantially more likely than not" or "highly probable" finding.
The Supreme Court was not swayed, stating that: "We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does."
For the complete Supreme Court Opinion click here.
FEDERAL CIRCUIT RULING REINS IN OBVIOUSNESS
06-08-2011 [John Fulton] [Permalink]
As patent practioners well know, and Applicants are often, albeit begrudgingly, forced to accept, Patent Examiner's exhibit considerable latitude when it comes to rejecting patent claims as obvious under 35 U.S.C. §103. A recent opinion of the U.S. Court of Appeals for the Federal Circuit, In re Klein, should provide greater leavarage for practitioners and Applicants faced with obviousness rejections in the future, particularly when there is a question as to whether a reference cited by an Examiner is analogous prior art.
Specifically, the Court found in favor of the Applicant, Arnold G. Klein, and reversed the final decision of the Board of Patent Appeals and Interferences in which a number of claims of Mr. Klein's pending patent application were rejected as obvious under Section 103. More in particular, the Court stated that "[b]ecause the Board's finding that five references at issue are analogous art is not supported by substantial evidence", the obviousness rejection was reversed.
It is noteworthy that Mr. Klein's application was directed to a fairly simple device for measuring, and subsequently mixing, predetermined amounts of sugar and water to prepare nectar solutions for different types of birds and butterflies. The following is an illustration of the Klein device:
Among the references relied upon by the PTO as a basis for its obviousness rejection of the Klein patent application was U.S. Patent No. 2,985,333 to Kirkman for a "Plastic Cabinet Drawer with Removable Partitions." Figure 1 of the Kirkman patent is presented below:
As noted above, the Federal Circuit ultimately found that the Board's "conclusory findings" that Kirkman and the other references were analogous art were not supported by substantial evidence. The Court further stated that an inventor would not have been motivated to consider the references because they fail to show a container adapted for the purpose of solving the problem being solved by the Klein device.
To read the complete Federal Circuit Opinion click here.
Federal Funding Alone Does Not Create Patent Ownership
06-07-2011 [Jessica Hauth] [Permalink]Yesterday, the United States Supreme Court held that the University and Small Business Patent Procedures Act of 1980 (the Bayh-Dole Act) does not automatically vest title to federally funded inventions in the federal contractor. Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc., 563 U.S. __ (2011).
In a 7-2 decision, the Supreme Court upheld long-standing precedent that patent rights initially vest in individual inventors, and noted that a federally funded contractor, such as a university, may only "elect to retain title" under the Bayh-Dole Act if title has been granted by the inventor. Following this reasoning, the Court clarified the Bayh-Dole Act thus:
"The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have." Further, "[o]nly when an invention belongs to the contractor does the Bayh-Dole Act come into play. The Act's disposition of rights...serves to clarify the order of priority of rights between the Federal Government and a federal contractor in a federally funded invention that already belongs to the contractor."
Accordingly, a federal contractor, such as a university, does not automatically obtain rights to an invention simply because it occurred as a result of federal funding. Rather, such rights must be transferred from the inventor. Moreover, that a federal contractor may "elect to retain title" to the invention occurs with regard to the federal government, not the inventor.
Since the Bayh-Dole Act was passed in 1980, it has influenced how universities and companies view technology and ownership. The present interpretation of the Act handed down by the Supreme Court will no doubt be of particular interest to any entity participating in federally sponsored innovation.
Click here to read the opinion.
Also, be sure to check out the next edition of the Malloy & Malloy newsletter for more on this important decision.
DOT “ANYTHING”? - ICANN MOVES CLOSER TO EXPANSION OF GENERIC TOP-LEVEL DOMAINS
05-19-2011 [Jason LaCosse] [Permalink]
CNET Downloads a Lawsuit
05-06-2011 [Francisco Ferreiro] [Permalink]Earlier this week, CNET and its parent company, CBS, were sued by a coalition of artists led by Alki David –-a film producer with a long-standing vendetta against CBS – for "direct[ly] participat[ing] in massive copyright infringement.” The dispute, which arises from links posted to LimeWire and other peer-to-peer systems via CNET’s Download.com website, has the potential to shed additional light on the doctrine of secondary infringement liability. Specifically, the case will turn on whether CNET’s actions can be characterized as “inducing” or “encouraging” copyright infringement.
In this respect, it bears noting that peer-to-peer systems, while capable of being used for illegal ends, are not themselves illegal; consequently, merely posting a link that permits users to download the software will, alone, not constitute “inducement” or “encouragement” to infringe. As noted by the Plaintiffs, however, Download.com also provides reviews and articles pertaining to the linked-to software. The Plaintiffs have sifted through and gathered a number of these articles and reviews which they claim will evidence that CNET – vis-à-vis its reviewers – has tacitly encouraged infringement. By way of example, the Plaintiffs cite an article in which a CNET reviewer references the availability of multiple peer-to-peer systems that can “satisfy the software sweet tooth.”
Given the foregoing, the most interesting aspect of this case may be finding out how a court will interpret the inducement and encouragement standard as applied to a website devoted to criticism which, unlike print criticism, has the capability to directly and immediately linking users to a product. Until then,the defendant has, for its part, inserted a new disclaimer clarifying that “CBS Interactive does not encourage or condone the illegal duplication or distribution of copyrighted content."
Click here for a more expansive newsstory.
Click here to find out just how much the plaintiff hates CBS.
CAFC Hears Oral Argument in Myriad Case
04-08-2011 [Jessica Hauth] [Permalink]On Monday, the Court of Appeals for the Federal Circuit (CAFC) heard oral arguments in the Myriad case (AMP v. USPTO). This case concerns several patents licensed by Myriad Genetics that involve the BRCA1 and BRCA2 genes, which are implicated in breast cancer. The questions before the Court include whether patents claiming "isolated DNA" and certain diagnostic methods are patent-eligible subject matter under 35 U.S.C. 101. The issue of standing is also before the Court.
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Counsel for Myriad emphasized that isolated DNA does not exist in nature, and is therefore patentable, in much the same way a baseball bat made from the wood of a tree would be patentable.
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Counsel for the plaintiffs focused on the sequence similarities between isolated DNA and chromosomal DNA, disregarding the physical and chemical differences between them, in presenting his position that isolated DNA are products of nature and should not be eligible for patent.
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Interestingly, the Solicitor General also appeared, and argued on behalf of U.S. government that if the sequence of the isolated DNA could be found in chromosomal DNA, then it is a product of nature and should not be patent eligible. This position differs from that of his earlier brief, in which he asserted cDNA should be patent eligible since it is synthetic and not found in nature. The Solicitor General urged that merely isolating a substance does not constitute human invention.
The panel of judges hearing arguments in this case, comprising Judges Lourie, Bryson, and Moore, asked cogent questions indicating their grasp of the underlying science and/or technology. For instance, counsel was asked to distinguish between isolating a substance, such as DNA from a chromosome, which requires breaking bonds binding the substance to its surroundings, from purifying a substance, such as by washing it with a solvent to remove impurities. Notably, Judge Moore acknowledged that the U.S. Patent & Trademark Office (USPTO) has been granting isolated gene patents for over 35 years, and that the USPTO guidelines expressly cite isolated genomic DNA as being patent-eligible subject matter. It is therefore odd that the U.S. government would take a position against the USPTO, which is part of the executive branch, and that they would be willing to overlook years of precedent.
FEDERAL CIRCUIT CLARIFIES PLEADING STANDARD FOR FALSE PATENT MARKING CLAIMS
03-25-2011 [Jason LaCosse] [Permalink]
A Portrait of Research as Copyright Infringement
03-17-2011 [Jessica Hauth] [Permalink]In honor of St. Patrick's Day, today we present a bit of Irish-related IP news.
Craig Venter, a scientist renowned for his research in synthetic life, made headlines by creating self-replicating synthetic bacteria containing a custom-made genome designed entirely from scratch. To make sure the bacteria created were the result of the custom genome and not an assembly of naturally occuring bacterial DNA, Venter and his team encoded particular segments of text into the DNA sequence to act as watermarks. Included in one of these watermarks was a quote from James Joyce's novel A Portrait of the Artist As A Young Man.
The estate of James Joyce has recently declared Venter's use of this one sentence amounts to copyright infringement, and has issued a cease and desist letter. In response, Venter maintains he thought it was fair use to use the quote.
SENATE PASSES PATENT REFORM ACT OF 2011
03-09-2011 [Jason LaCosse] [Permalink]
IP IN THE FRCP
03-03-2011 [Jason LaCosse] [Permalink]
Non-Destructive Derivation of Embryonic Stem Cells
03-02-2011 [Jessica Hauth] [Permalink]Last week, Advanced Cell Technology, Inc. (ACT) was granted a patent (U.S. Patent No. 7,893,315) for its “single-blastomere” technology that provides a non-destructive method for deriving human embryonic stem cells (hESC). In ACT’s technique, a single cell is biopsied from an embryo and cultured to produce a hESC line. The process does not destroy the embryo or impair the embryo’s subsequent development, hence the technique has been touted as “embryo-safe.” This technique is similar to pre-implantation genetic diagnosis (PGD) that has been used in in-vitro fertilization (IVF) for many years.
ACT’s patented single-blastomere technology has the potential to advance research in many areas, such as stem cell therapies, regenerative medicine, and modeling human genetic diseases. This newly patented technology may also be useful in promoting progress toward derivation of embryonic stem cells that harmonizes with the European Medicines Agency and US FDA policies and regulatory standards. Also, in a recent press release ACT’s CEO, Gary Rabin, indicated that collaborations are underway to create banks of cells derived using this proprietary method.
What is the Government's Role in Policing Infringement?
02-23-2011 [Francisco Ferreiro] [Permalink]The Act’s critics, for their part, argue that ithe provisions are overly broad and, as evidence of this point out that the Act would permit the government to censor sites that merely “enable or facilitate a violation”. Further, critics note that the government would be required to keep a list of sites simply accused of infringement -- even if no evidence were ever submitted. In a statement issued last week, the Consumer Electronics Association warned that this "would erode the Supreme Court’s landmark Betamax decision that protects technology products with substantial non-infringing uses.”
Some of the Act’s supporters, on the other hand, think the provisions don't go far enough. For example, during last week's hearing, the Author’s Guild proposed an amendment removing the Digital Millennium Copyright Act's 'safe harbor' for online service providers. Eliminating this provision, which the Author’s Guild characterized as “an exploitable gold mine for unscrupulous online enterprises”, would allow Google, for example, to be held legally accountable for returning search results that direct users to infringing content. Similarly, the owners of Rosetta Stone proposed amending the Act to permit private parties to submit the results of their own investigations to the government. This would, of course, provide private parties with a more direct and less expensive way of shutting down smaller infringers that the government’s investigations might otherwise ignore.
We will have to wait and see what comes of the Act; however, in the meantime, you can continue to track the Senate's progress here.
Google Does Art
02-16-2011 [Francisco Ferreiro] [Permalink]
Biotech Method Claims Remain Patentable
01-19-2011 [Jessica Hauth] [Permalink]Late last year, the Court of Appeals for the Federal Circuit ruled that certain biotechnology method claims as applied to humans are patentable subject matter under 35 U.S.C. §101. In Prometheus Labs. Inc. v. Mayo Collab. Serv., Docket 2008-1403 (Fed. Cir., December 17, 2010), on remand from the United States Supreme Court with instructions to revisit their previous ruling in view of the determination in Bilski, the Federal Circuit affirmed their initial decision that the patent claims at issue are valid and patentable.
The claims at issue recited an “administrating” step and a “determining” step, as demonstrated in sample claim 1 of U.S. Patent No. 6,355,623:
1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8x108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than about 400 pmol per 8x108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.
Other claims at issue omitted the “administering” step.
The Federal Circuit held that the claims at issue are directed to patentable subject matter because the steps of the claims are transformative and significant to the claimed invention, and are not just data-gathering steps. The “administering” step was deemed to transform the body of the patient to whom the treatment is applied, since the administered drug is metabolized by the body. Separately, the “determining” step was also held to be transformative, since some form of manipulation is required to extract and measure the amount of metabolite present in a bodily sample.
With this decision, the Federal Circuit begins to define the landscape of patentable subject matter, and distinguish it from what constitutes an unpatentable “abstract idea,” in a post-Bilski world. Other biotech patent cases currently pending before the Court, namely Classen Immunotherapies, Inc. v. Biogen Idec and Association for Molecular Pathology v. U.S. Patent and Trademark Office et al. (“Myriad”), will demand the Court further explain the scope of patentable subject matter in the biotech and life sciences fields.
A copy of the opinion can be found here.
Supreme Court Accepts Microsoft's Patent Validity Challenge
12-04-2010 [John Fulton] [Permalink]The U.S. Supreme Court recently granted certiorari to Microsoft in a case involving patent invalidity. Microsoft is challenging a Federal Circuit Court of Appeals finding of validity in favor of patent holder, i4i, in a case that has been long fought in the lower courts, and resulted in an award of over $200 million in damages to i4i. In its decision, the Federal Circuit relied on its long standing precedent that patent invalidity must be proven by "clear and convincing evidence."
Microsoft argues that the Federal Circuit erred in requiring this heightened standard, and suggest that the lesser "preponderance of the evidence" standard should apply to determinations of patent invalidity, as is the case in finding patent infringement. The "preponderance of the evidence" standard applies in most civil actions and essentially requires a finding that it is "more likely than not" that the evidence presented is true, whereas the higher "clear and convincing" standard requires a "substantially more likely than not" or "highly probable" finding.
A further issue which Microsoft has raised is the fact that the prior art on which its invalidity defense is based was not considered by the U.S. Patent and Trademark Office. A decision is expected from the Supreme Court by June 2011.
TREND IN FALSE PATENT MARKING CASES CONTINUES
12-01-2010 [Jason LaCosse] [Permalink]The proliferation of false patent marking claims asserted under 35 U.S.C. Section 292 continues. Common examples of accused conduct include the placing of incorrect patent numbers or expired patent numbers on everyday products, such as plastic cup lids, disposable razors, etc. In such actions, the plaintiff essentially sues the defendant on behalf of the federal government, petitioning for a fine of up to $500 per falsely-marked article. As a ‘reward,’ the plaintiff is generally entitled to receive half of the penalty. This type of legal action, generally referred to as a qui tam claim, is a relatively uncommon relic of past jurisprudence. However, the number of actions for false patent marking cases has continued to rise since the well-known 2009 Solo Cup case (which involved expired patents marked on plastic cup lids). Indeed, some patent blogs are now tracking this trend in qui tam false patent marking cases.
Naturally, the trend in false patent marking cases has led to a variety of federal court decisions which sometimes differ as to the legal standards applied. For instance, one primary issue involves just who may have standing to bring such a suit. In this regard, some parties have advocated that any member of the general public should have standing, while others have argued for a requirement that plaintiff must have suffered a “competitive injury.”
Another pertinent issue involves the requirements for pleading the requisite ‘intent to deceive the public.’ For instance, some proponents insist that there should be a “9(b)” pleading standard [Fed. R. Civ. P. 9(b)] wherein a party must state with particularity the circumstances constituting ‘fraud,’ i.e., provide specific factual support for a reasonable inference that the defendant falsely marked with intent to deceive the public. Others do not see a need for such a heightened pleading standard. There have also arisen different opinions on the application of such standards, such as when considering the subjective intent of the defendant v. a reliance on opinion of legal counsel. Perhaps such issues will be addressed by the Federal Circuit in In re BP Lubricants USA Inc.
We can also expect new precedents to develop over the various factors to be considered in calculating the fines for such cases. In the meantime, the recent trend in false patent marking claims has prompted new legislation designed to limit potential fines. A bill authored by Congressman Bob Latta of Ohio is calling for a single fine of $500 per decision to falsely mark, as opposed to a penalty of up to $500 for each falsely marked article.
Representative cases:
$50,000 Cash Prize Offered To Florida Inventors/Entrepreneurs
11-10-2010 [John Fulton] [Permalink]The Cade Museum Foundation has announced that it is now accepting entries for the Second Annual Cade Prize for Innovation. The grand prize is a cash award of $50,000, plus one year of free office space at the Gainesville Technology Enterprise Center (GTEC).
The competition is open to Florida inventors and entrepreneurs, and the deadline for submissions is noon on December 31, 2010. Applicants must submit a 500 word abstract to demonstrate that their idea is innovative, creative, interdisciplinary and commercially viable, and feasible. Semi-finalists will be required to submit more substantial disclosure materials.
The Cade Museum for Innovation and Invention is named for James Robert Cade, leader of the University of Florida team that created Gatorade. For more information about the Cade Prize for Innovation click here.
"FANTASY FEST" in Federal Court
11-01-2010 [Oliver Ruiz] [Permalink]The Key West Tourism Development Association ("TDA") recently filed a lawsuit alleging intellectual property violations stemming from alleged unauthorized use of the mark "FANTASY FEST" by Zazzle, Inc., a California business entity. Zazzle is the owner of the web site, zazzle.com, which according to the complaint, offers "blank" products such as t-shirts and coffee mugs that can be customized by consumers. TDA argues that, in so doing, Zazzle facilitates and benefits from the creation of counterfeit items. In its Complaint, TDA takes issue with Zazzle's use of meta tags, and the offering of products which feature the marks "FANTASY FEST," and "HABITAT FOR INSANITY," this year's festival theme.
The law suit is pending before the Southern District of Florida (Key West Division), and has been assigned to Senior Judge James Lawrence King. Press coverage regarding the law suit can be found here. A blog post regarding Mayor Michael Bloomberg's recent visit to Zazzle's San Jose, California facility can be found here.
Should Social Media be making trademark decisions? The GAP says yes.
10-15-2010 [Tony Guo] [Permalink].jpg)
Is Your iPhone Watching You?
09-01-2010 [John Fulton] [Permalink]
Microsoft’s Allen Trolls For Infringers. His Targets … Seemingly Every Major Internet Player
08-30-2010 [Peter Matos] [Permalink]In what could turn into a patent battle of epic proportions, Microsoft Co-Founder Paul Allen has sued a who’s who of Internet giants for patent infringement. The suit, filed by Allen’s Interval Licensing, which names Apple, Google, Facebook, Yahoo, YouTube, AOL and eBay, among others, cites core Internet technology developed in the 90’s by another Allen project, the now defunct technology company, Interval Research, LLC. Microsoft is, of course, conspicuously absent from the suit which can be read here.
Because the patents are alleged to cover mainstay Internet technologies including features related to search engine operation, web based multi-media display, and pop up elements, some of the named defendants have already vowed to fight the allegations and mount a vigorous defense. The fight will no doubt be one for the ages and one to watch.
Allen, who is often in the media shadows compared to his Microsoft Co-founder Bill Gates, will no doubt garner the spotlight with this bold legal action that will likely turn most of Silicon Valley against him. Indeed, many are already likening Allen to a myriad of so-called “Patent Trolls,” companies that do not make or sell anything, but merely hold patents to use as weapons.
Read more about this case here
USPTO ISSUES INTERIM GUIDANCE POST-BILSKI
08-23-2010 [Jason LaCosse] [Permalink]In view of the recent Supreme Court decision in Bilski v. Kappos, the U.S. Patent and Trademark Office has issued interim guidance for its personnel to use in determining subject matter eligibility for process claims under 35 U.S.C. 101.
Among other things, the interim guidelines provide a “quick reference sheet” which outlines several factors weighing toward eligibility under Section 101 and several factors which weigh against patent eligibility. While these guidelines do not have the force and effect of law, they may be worth considering in the drafting of some method claims.
According to the July 27 Federal Register Notice, the USPTO is also accepting comments on its Interim Bilski Guidance through September 27, 2010. For instance, the public is invited to provide examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible. The USPTO is also requesting input as to the possible categorization of certain types of patent applications that claim to instruct how business should be conducted, and explanations as to how such categories could represent an unpatentable attempt to patent abstract ideas.
Click here to view the USPTO Memorandum
Click here to view the USPTO Press Release
Rosetta Stone's Complaint Lost in Translation
08-22-2010 [Francisco Ferreiro] [Permalink]Almost three months after deciding to grant summary judgment in favor of Google in Rosetta Stone Ltd. v. Google, the Eastern District of Virginia finally released its opinion articulating the reasons behind the decision. Specifically, the Court held that Google could not be held liable for trademark infringement or dilution based on its sale of keywords utilizing Rosetta Stone’s trademarks. The decision was a coup for Google which was absolved of liability on every count brought by Rosetta Stone.
In perhaps the most significant portion of the decision, the Court held that Google’s use of a trademark within a keyword was “functional” and, therefore, did not amount to infringing use. In coming to this conclusion, the Court noted that keywords “have an essential indexing function because they enable Google to readily identify in its database relevant information in response to a web user’s query.” This seemingly brings the Court in conflict with other decisions – most notably the Ninth Circuit’s opinion in Playboy v. Netscape – which have rejected the defense of trademark functionality in similar contexts. Accordingly, it will be interesting to see how, or if, the Court's interpretation of the doctrine is employed in future decisions examining the unauthorized use of trademarks in conducting internet commerce.
The Court also rejected Rosetta Stone’s attempt to hold Google secondarily liable for the infringing conduct of others – a decision based, in part, on its finding that Google’s “keyword suggestion tool” did not constitute an “inducement” to infringe. Much of the Court’s rationale, however, was based Google’s efforts to avoid and remedy infringing activity (for example, the Court seemed charmed by the existence a Google “Trust & Safety team”); consequently, this portion of the decision may have limited applicability to future defendants.
Nevertheless, the decision will likely go down as an important one that should 'translate' into future victories for similarly situated defendants .
Access the decision here:
The Federal Circuit Takes on Biotechnology & Patentable Subject Matter
08-18-2010 [Jessica Hauth] [Permalink]
The Court of Appeals for the Federal Circuit has its hands full with biotechnology patent matters lately. Particularly, the Court will analyze patentable subject matter under 35 U.S.C. §101 regarding biotechnology patents in their consideration of the following three cases: (1) Prometheus Laboratories, Inc. v . Mayo Collaborative Services, (2) Classen Immunotherapies, Inc. v. Biogen Idec, and (3) Association for Molecular Pathology v. U.S. Patent and Trademark Office et al. (also known as “Myriad”). The first of these cases, Prometheus, concerns a method of treatment involving the steps of administering an amount of a drug to a subject and determining levels of 6-thioguinine (6-TG) and 6-methylmercaptopurine (6-MMP) in the subject. In Classen, patent claims are directed to a method of evaluating whether an immunization schedule affects a chronic immune-mediated disorder. These cases will be decided in light of the recent U.S. Supreme Court decision of Bilski v. Kappos, No. 08-964 slip op. (U.S. June 28, 2010). The Federal Circuit will also decide the highly publicized Myriad case on appeal, which involves patents claiming isolated DNA molecules that code for a polypeptide of BRCA1 or BRCA2, as well as various diagnostic methods relating to these sequences.
The Federal Circuit recently decided another biotechnology case, Intervet, Inc. v. Merial Limited, on a separate issue. In that case, the court construed several claim terms (such as “porcine circovirus type II” and “ORFs 1-13”) and one full claim, which was directed to an isolated DNA molecule of a particular sequence. Although the issue of patentable subject matter was not before the Court, one judge nevertheless wrote at length in the dissent about whether the term “isolated DNA” is patentable subject matter. Ostensibly, these comments are in the wake of the Myriad case and the buzz it has created.
Importantly, the Federal Circuit has not yet ruled on patentable subject matter as it pertains to biotechnology. Until it does, biotechnology methods and even “isolated DNA” claims remain patentable in the view of the U.S. Patent and Trademark Office, as long as they meet statutory requirements. See 66 Fed. Reg. at 1093.
Proposed Bill Attempts to Protect Fashion Industry from Knock-Offs
08-13-2010 [Meredith Frank Mendez] [Permalink]After a year of negotiations with fashion industry members, Senator Chuck Schumer (D-NY) has introduced the Innovative Design Protection and Piracy Prevention Act which would extend copyright protection to design of apparel, footwear, and accessories and protect such works from being copied and reproduced. To qualify for protection under the proposed Act, the design must be "a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs" and the copy must be "substantially identical" to the original so as to be mistaken for it. The design need not be registered with the U.S. Copyright Office. The proposed Act provides an exception for home sewers who will be permitted to copy a protected design for personal use or the use of a family member. If passed, the Bill would provide protection to new and original designs for three years after they were first introduced to the market.
To view the proposed Bill, click here.
Naked Cowboy Suffers Irreparable Injury.
07-26-2010 [Francisco Ferreiro] [Permalink]Robert John Burck, better known as Time Square's "Naked Cowboy", has filed a federal trademark infringement suit against another New York City entertainer known as "Naked Cowgirl". Burck, who has registered the "Naked Cowboy" mark with the USPTO, has been serenading New York tourists while wearing only white briefs, cowboy boots, and a hat since 1997. According to Burck, the Naked Cowgirl -- whose act also, coincidentally, entails serenading tourists while wearing only her underwear, cowboy boots, and a hat -- is causing "confusion" and may "permanent[ly] devaluat[e] . . . a real American Brand and Icon."
The complaint, which inevitably led to multiple news stories making tongue-in-cheek references to trade "dress", legal "briefs", and "naked licensing," seeks unspecified damages and a court order blocking the Naked Cowgirl from, ostensibly, appearing in public as a semi-naked cowgirl. The Naked Cowgirl, for her part, has cited her First Amendment rights and countered that Burck does not have "a monopoly on scantily clad guitar-playing."
While the Naked Cowboy's complaint is unlikely to result in any new trademark law developments, it, nevertheless, deserves its own unique place in history for alleging -- without any semblance of irony -- that "[t]he injury to Naked Cowboy is and continues to be irreparable."
Click here for the news story or access the complaint here.
Valid But Unenforceable - What Exactly is Material to Patentability?
07-20-2010 [John Fulton] [Permalink]The Federal Circuit recently denied a request for rehearing en banc in the matter of Avid Identification Systems, Inc. v Crystal Import Corp. In the underlying District Court case, it was determined that the president of Avid failed to disclose a demonstration of a "precursor product" at a trade show to the U.S. Patent and Trademark Office during prosecution of the Avid patent, and the Federal Circuit affirmed the District Court's decision that this failure was sufficient to hold the Avid patent unenforceable based on inequitable conduct.
The interesting, and somewhat disturbing, impact of this decision is the fact that the District Court jury found that Avid's trade show demonstration did not constitute invalidating prior art, i.e., Avid's demonstration was not an invalidating disclosure of the invention, nor a sale to offer to sell the patented invention.
Thus, this decision begs the question: When [and how] is non-invalidating prior art material to patentability?
For more, click here to read Judge Newman's Dissent to the En Banc Order.
No Likelihood of Confusion Between "Dan Tana's" and "Dantanna's" Restaurants
07-15-2010 [Oliver Ruiz] [Permalink]You may remember the character Dan Tanna from Vega$,
but you may not know that the character's name was based on the name of a West Hollywood, California restaurant owner named Dan Tana (used with his permission), whose restaurant, "Dan Tana's," appears below:
Earlier today, that restaurant, which opened in 1964, lost its appeal in a trademark infringement action that was brought against an Atlanta, Georgia based restaurant named Dantanna's:
Although several issues are discussed in the Court's decision, which can be read here, possibly the most important factor in the case was the fact that the West Hollywood restaurant, which opened 39 years prior to the Atlanta restaurant, did not have a federal trademark registration. Accordingly, the Court ruled that its trademark rights were restricted to the Los Angeles market once the Atlanta-based restaurant successfully registered its service mark. Had the West Hollywood restaurant been the first to register its service mark with the United States Patent and Trademark Office, the Court may have decided the case differently, as the restaurant would have then have had nationwide rights in the mark.
As illustrated by this case, the importance of a federal trademark registration cannot be understated.
"Avatar" Alleged to Infringe Novel by Local Author
07-06-2010 [Oliver Ruiz] [Permalink]A local author named Cynthia J. Clay recently filed a copyright infringement lawsuit alleging that the motion picture Avatar infringes her novel, entitled Zollocco: A Novel of Another Universe. The complaint, which was filed in the Southern District of Florida federal court, alleges instances of "strikingly similar" copying of portions of the novel, and claims that the name of the novel, Zollocco, was used as a war chant by principal characters in a critical scene in the movie (allegedly "Zha-lah-coooh").
The Defendants in the lawsuit include James Cameron and Twentieth Century Fox. As with any lawsuit alleging copyright infringement, the issues to be determined will include: (1) the Defendants' access to the novel; and (2) the degree of similarity between the accused work and the copyrighted work ("substantial similarity" if access can be proven, otherwise the alleged infringing work must be "strikingly similar").
The complaint offers just a few examples of the copying found in the screenplay for the film, which are alleged to be "strikingly similar" to portions of the 242-page novel, including the following:
- "Sky people can not learn. You do not See." pg. 41, Avatar.
"It is impossible to commune with most humans," pg. 8, Zollocco.
- "You go back." pg. 42, Avatar.
"Get back in your can! . . . Go back to your own kind!" pg. 8, Zollocco.
- "His alien smell fills my nose." pg. 45, Avatar.
"Beat it, you smelly old human!" pg. 8, Zollocco.
In light of these examples, and the few others that are referenced in the complaint, it is anticipated that it will be met with an early motion to dismiss the action. The case has been assigned to the Honorable Adalberto Jordan, and seeks an injunction and award based on the Defendants' profits. According to reports, the film Avatar has grossed over $2.7 billion around the world to date.
The Narrow Scope of Bilski
06-28-2010 [Jessica Hauth] [Permalink]As noted previously, the U.S. Supreme Court issued its long-awaited opinion in Bilski v. Kappos today. Although the Bilksi patent in dispute was drawn to particular business method claims for hedging risk and the application of that concept to energy markets, many in the field of intellectual property have been curious of the possible effects a decision in Bilski could have for other business methods, such as software and medical diagnostic methods.
For now, the intellectual property community will have to continue to wait. In Bilski, the U.S. Supreme Court limited their decision to the patentability of the particular methods of the patent at issue, and declined to address the patentability of business method claims in general, much less other specific kinds of business methods. Accordingly, other business methods, such as software and medical diagnostics methods, have not been ruled on, nor have they been ruled out.
The Fork in the Patent Examination Road
06-08-2010 [Jessica Hauth] [Permalink]David Kappos, Director of the U.S. Patent and Trademark Office (USPTO), has recently announced the Office is considering a new initiative for the examination of patent applications filed in the USPTO. Referred to as the “Three Track” scheme, the applicant has the option of choosing how quickly or slowly they want their patent application examined. The three options are as follows:
Track I: accelerated examination (proposed 4 months to first Office Action; 12 months to final disposition)
Track II: traditional examination as currently applied (default track if one of the other tracks is not designated at filing)
Track III: delayed examination for up to 30 months (for non-continuing applications first filed in the USPTO)
FALSE MARKING - REAL DAMAGES
05-26-2010 [John Fulton] [Permalink]
On remand from the Federal Circuit, the U.S. District Court for the Southern District of Texas based a damages award for false patent marking on the highest selling price of the falsely marked products.
COURT RULES THAT THERE'S NO "I" IN "NFL"
05-26-2010 [Francisco Ferreiro] [Permalink]In a unanimous decision released yesterday afternoon, the U.S. Supreme Court held that the National Football League (NFL) is not immune from antitrust laws and should be considered an umbrella organization consisting of thirty-two separate teams rather than a single entity. The Court's ruling will allow an antitrust lawsuit filed against the NFL by American Needle -- a clothing manufacturer -- to move forward. Writing for the Court, Justice Stevens stated that "[d]ecisions by NFL teams to license their separately owned trademarks . . . to only one vendor are decisions that deprive the marketplace of . . . actual or potential competition."
American Needle filed the suit after it was prohibited from continuing to produce branded clothing for NFL teams following the NFL's execution of a ten-year exclusive licensing agreement with Reebok. Should American Needle ultimately prevail, the structure of NFL license schemes will change dramatically and individual teams will be permitted to negotiate their own license deals. For this reason, the decision may likego down as one of the landmark sports law and licensing decisions of the past few decades.
For more information click here.
A NEW TWIST – “HAVANA CLUB” RUM
05-24-2010 [Jason LaCosse] [Permalink]
Why Facebook's New Privacy Policy might result in Litigation
05-18-2010 [Tony Guo] [Permalink]
LimeWire Liable to RIAA for Copyright Infringement
05-13-2010 [Meredith Frank Mendez] [Permalink]The Recording Industry Association of America (RIAA) has prevailed in its copyright infringement lawsuit against LimeWire, one of the largest remaining commercial peer-to-peer services. The Court ruled that LimeWire was liable for copyright infringement because its users commit a "substantial amount of copyright infringement" and the company behind the software "has not taken meaningful steps to mitigate infringement."
RIAA has alleged that at least 93 percent of LimeWire’s file sharing traffic was unauthorized copyrighted material. The RIAA is seeking up to $150,000 per violation, although the final damages have not yet been determined.
This was the first case against a file sharing software maker after the 2005 Grokster decision, in which the U.S. Supreme Court upheld lawsuits against companies that induced or encouraged file sharing.
Click here to read the Court 's Opinion.
A Matter of Import: High Court to Review First Sale Doctrine
04-19-2010 [Oliver Ruiz] [Permalink]Earlier today, the United States Supreme Court granted a request by Costco, the wholesale retailer, to review a federal appellate decision involving the first-sale doctrine under copyright law, in connection with the purchase and resale by Costco of Omega brand watches that were purchased on the gray-market (also known as parallel imports). In general, the first-sale doctrine allows the owner of a particular copy of a copyrighted work which was "lawfully made" to resell that copy without permission from the copyright holder.
In the proceedings below, Costco argued that it could not be held liable for copyright infringement for reselling the gray-market goods, after the initial foreign sale of the goods by Omega to another entity (which then re-sold the watches to Costco via the so-called "gray-market"). The trial court ruled in Costco's favor, but that ruling was overturned on appeal.
The appellate court below, the Ninth Circuit Court of Appeals, ruled that the first-sale doctrine did not apply to imported goods manufactured abroad, and thus Costco did not have a defense under the first-sale doctrine to resell the gray-market Omega watches without Omega's authority. The United States Supreme Court will now likely determine whether the first-sale doctrine applies to imported goods that are manufactured abroad, including the gray-market goods at issue in the case.
The decision of the Ninth Circuit Court of Appeals can be found here.
A revealing approach to social networking is unveiled
04-07-2010 [Tony Guo] [Permalink]
PTO Considers Deferred Patent Fee Program (and Deferred Examination) - Your Thoughts?
04-06-2010 [John Fulton] [Permalink]
Gene Patents Invalid?
04-05-2010 [Jessica Hauth] [Permalink]
SELLER OF "YAAGBOMB" CUPS SUED FOR PATENT INFRINGEMENT
04-01-2010 [Oliver Ruiz] [Permalink]A Bradenton, Florida company has sued Cup Solutions, Inc., an online seller of cups used for mixing drinks with shots of hard liquor, alleging that the Defendant's "YAAGBOMB" cups, pictured below, infringe a patent owned by Hurricane Shooters, LLC, the Plaintiff.
In the complaint, Hurricane Shooters alleges that it owns U.S. Patent 7,243,812, for a "Plural Chamber Drinking Cup," and claims the cup was invented in 2005 by two Bradenton, Florida residents. Some of the drawings from the patent appear below.
The complaint, which seeks damages, injunctive relief, and attorneys' fees, is pending before United States District Judge Richard A. Lazzara, of the Middle District of Florida, Tampa Division.
URBAN DICTIONARY SUED FOR TRADEMARK INFRINGEMENT
03-31-2010 [Oliver Ruiz] [Permalink]A Fort Lauderdale company that claims ownership of trademark rights for the term "MEANAGER" in connection with clothing has sued Urban Dictionary, an online dictionary of slang words and phrases, and another Defendant, for allegedly selling competing goods that use the term "MEANAGER". The complaint was filed in the United States District Court for the Southern District of Florida, and is pending before Chief Judge Federico A. Moreno.
The complaint alleges that Urban Dictionary is infringing the Florida company's trademark by using the term "MEANAGER" on articles that it sells through its website. According to the complaint, Urban Dictionary sells articles that feature the slang words and phrases that appear on its website, and takes issue with the sale of articles bearing the term "MEANAGER". The term has three definitions on the web site, one as a slang phrase for a mean boss, i.e. a "MEANAGER" (as a play on words for Manager); and the other two relating to teenagers that exhibit hurtful behavior (a play on words for the terms Mean and Teenager). According to Wikipedia, another online dictionary, Urban Dictionary currently has 4.79 million definitions on its website.
The Florida company alleges that it has promoted its mark through websites such as Facebook, Twitter, MySpace, and LinkedIn. With the ever increasing amount of business that is done through the internet, it is no surprise that cases such as these are being filed a more rapid rate.
Google's European Vacation
03-23-2010 [Francisco Ferreiro] [Permalink]In a decision released earlier today, the European Court of Justice held that Google was not liable for the sale of AdWords to a retailer who, in turn, used the trademarked keywords in connection with the sale of counterfeit goods. The decision stemmed from Google's nearly five-year old appeal of a French decision in favor of Louis Vitton. Pursuant to the Court's holding, Google is not responsible for investigating the authenticity of a retailer's goods prior to selling its keywords. Nevertheless, with an eye toward future litigation, the Court did call for more transparency from companies such as Google with respect to the identity of sellers purchasing and using the trademarked keywords.
Read the decision here.
The Power of a Design Patent
03-23-2010 [Jessica Hauth] [Permalink]Everyone has experienced an auto accident of some form, be it a fender-bender or a more severe impact. While more forceful impacts can damage structural and/or functional components of a vehicle, even low-speed impacts can cause cosmetic damage that can be costly to replace.
So the next time you find yourself in a body shop pondering the cost of replacing cosmetic auto parts, consider this: many automobile body parts are patented. Companies in the auto industry have begun procuring design patents on the ornamental design of certain auto parts, including fenders, grilles, and quarter panels. This has led to some recent debate, since these design patents allow the manufacturers control over the original part, as well as replacement parts having the same patented design.
Recently, the insurance industry and consumer groups have begun lobbying Congress regarding the cost of auto repairs as a result of these design patents. Yesterday, the House of Representatives held a hearing on the bill H.R. 3059, the “Access to Repair Parts Act,” which would carve out an exception to design infringement for parts that constitute a component part of another article of manufacture and whose sole purpose is to repair the article of manufacture [automobile] and restore its original appearance.
Interestingly, this would not be such a hot topic of debate were it not for the power of design patents. In fact, one design patent attorney testifying against the bill claims that the bill’s proponents lost a design patent infringement lawsuit, and given that they can no longer make, use, sell, or import their knock-offs, they are now trying to carve out a legislative exception through public policy. Indeed, though proponents of the bill argue that such design patents hinder competition that would otherwise drive down the cost of replacement parts, they forget one important thing…design patents are allowed the benefit of exclusivity for the term of 14 years. In attempting to carve out an exception for replacement auto parts, these parties are implicitly acknowledging the value of design patents and the impact they can have.
300TH BIRTHDAY OF COPYRIGHT LAW – THE STATUTE OF ANNE
03-22-2010 [Jason LaCosse] [Permalink]The Statute of Anne, widely considered the world’s first copyright statute and the precursor to modern copyright law, went into effect on April 10, 1710, thus making this year (2010) the "tricentennial of copyright law."
The Statute of Anne was formally entitled "An Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors or Purchasers of Such Copies, During the Times therein Mentioned" and was enacted in the United Kingdom during the reign of its namesake, Queen Anne.
As its title suggests, the Statute of Anne was directed to literary works, primarily books. Over the past three hundred years, however, copyright law has continuously evolved and expanded to cover a variety of different types of works. Indeed, the ever widening scope of eligible works under modern copyright law (both in the U.S. and abroad) includes not only books and other types of writings, but also paintings, architectural works, sculptures, jewelry, photographs, music, choreography, sound recordings, movies, holograms, computer software, and many others.
By way of comparison, the Statue of Anne would today comprise only a few pages of modern text, whereas the U.S. Copyright Law, Title 17 of the United States Code, comprises approximately 1.6 Megabytes of text in PDF format, which corresponds to several hundred pages of text.
Thanks in part to the Statute of Anne, copyright law has evolved to become one of the most established forms of intellectual property law, worldwide. In fact, there are now several international treaties and conventions specifically directed to copyrights. If the past is any indication, the next 300 years of copyright law will likely see further expansion in the types of works eligible for copyright protection, as well as increased global harmonization in the scope of protection.
How far can your logo go in Florida?
03-11-2010 [Tony Guo] [Permalink]
Miami International Fashion Week US Fashion Business Seminar
03-05-2010 [Tony Guo] [Permalink]On March 16, 2010, at the Merrill Lynch/Bank of America offices at 701 Brickell Avenue, 7th Floor, Miami Florida from 6:00pm – 8:00pm, Miami International Fashion Week will have its "Understanding the Business of Fashion Seminar" moderated by Charlotte Gallogly, President of the World Trade Center Miami. The speakers on the panel include Raquel Regalado, Esq., of Malloy & Malloy, P.A., a specialist in Patent, Trademark and Copyright Law with a special expertise in apparel counterfeiting; Susan Matos, Financial Advisor, Merrill Lynch / Bank of America on Seizing Opportunities in Today's Global Markets, Establishing a Business in the US, Merchants Services , US Credit Card Accounts, Loans, Lines of Credit; and Lenny Feldman, Esq. Sandler, Travis & Rosenbert P.A. speaking on logistics, shipping, quotas, labeling and issues regarding legal garment entry into the US.
The VIP Party will follow at Club 50, 50th floor, Viceroy Miami at ICON Brickell, 485 Brickell Avenue, Miami 33131. For more information click here.
Cuba Libre?
03-05-2010 [Tony Guo] [Permalink]
Yelp! gets tangled in a dog fight alleging unfair competition and extortion.
02-25-2010 [Tony Guo] [Permalink]
Warner Music: A Lone Island in the Stream
02-12-2010 [Francisco Ferreiro] [Permalink]Warner Music Group has announced that it will stop licensing its music to streaming services – such as Last.fm and Pandora -- that provide consumers with free, instant, and legal access to millions of songs. Generally speaking, music streaming services function like radio stations – with some, like Pandora, designed to 'guess' the musical tastes of a specific consumer and tailor suggestions based on these findings. Such services, therefore, provide new artists --and even musical genres -- with exposure to new consumers. Nevertheless, while streaming services do pay royalties for each song played the royalties are significantly less than those a company such as Warner will earn through paid downloads. Moreover, while some consumers may go on to purchase digital copies of favorite songs, it's unclear what proportion are simply free-riding on these service.
Warner, therefore, has come to the conclusion that "free streaming services are clearly not positive for the industry" and decided to focus on providing digital access to music by way of paid subscription services. However, Warner’s decision to focus on paid subscription services – none of which have yet to prove popular among consumers – has been criticized as short-sighted and oblivious to the desires of consumers that have become accustomed to free and subsidized music services. In this new landscape, many believe that any service stopping short of full-on piracy should be viewed as a positive by music labels. This view appears to be held by several major industry players such as the senior VP of Universal Music Group who has gone on record as stating that such free services provide “a very sustainable financial model.”
It remains to be seen whether Warner’s move – which will cut access to popular artists such as REM and Muse – will negatively affect the future of music streaming services. However, as noted by the head of UK’s Music Manager’s Forum, what is clear is that “anything that's going backwards is denying where the world's going.”
For more click here
Killer Heat and the binding nature of your Patent Counsel’s Litigation Strategy
02-01-2010 [Tony Guo] [Permalink]
Who Dat Trademark Owner?
01-29-2010 [Meredith Frank Mendez] [Permalink]As the New Orleans Saints get ready to take the field in their first SuperBowl on February 6th in Miami, the game is not the only battle that has the Who Dat Nation talking. The National Football League, who claims to be the owner of the "Who Dat" phrase, has sent cease and desist letters to retailers, including mom and pop shops, who are selling merchandise with the "Who Dat" phrase. The NFL claims that such sales would cause confusion among Saints fans about whether such merchandise is officially licensed by the NFL.
However, the ownership of the "Who Dat" phrase may not be so clear cut. Sal and Steve Monistere, who recorded a version of "When the Saints Go Marching In" in the early eighties incorporating the "Who Dat" chant, claim that they are the owners of the phrase.
The NFL' s actions have caused an outrage among football fans, business owners and politicians alike. It has even prompted Senator David Vitter, R-La., to issue a letter to NFL Commissioner Roger Goodell urging the NFL to take back its position. Senator Vitter claims he will sell his own shirts with the "Who Dat" phrase and even challenged the NFL to sue him if he did so. Senator Vitter's letter states that:
"The "Who Dat?" trademark" was probably first heard in New Orleans minstrel shows well over 130 years ago. Much more recently, but before it was used in connection with the Saints, it was used as a rallying cry by St. Augustine High School in New Orleans. In the 1980s it was adopted by Saints fans in a completely spontaneous way. Only later did any legal persons, including the Saints and the NFL, try to claim it through registration."
To view Senator Vitter's letter to the NFL, click here.
ANNUAL INVENTION EXPO - FEBRUARY 6, 2010
01-28-2010 [John Fulton] [Permalink]The Inventors Society of South Florida hosts its Annual Invention Expo on Saturday, February 6, 2010 from 11:00 a.m. to 4:00 p.m. at the Main Branch of the Broward County Library located at 100 S. Andrews Avenue in Fort Lauderdale, Florida. The Expo is an excellent opportunity for inventors to display their inventions and obtain valuable feedback from the general public regarding various aspects of thier inventions, including desirability, usefulness, expected cost, aesthetics, etc. Exhibitors must register by February 1, 2010. For more information, please visit the Inventors Society of South Florida - click here.
Independent Record Label sues Google and Microsoft
01-25-2010 [Meredith Frank Mendez] [Permalink]Florida-based independent blues label Blues Destiny Records, LLC has filed a lawsuit for copyright infringement in the U.S. District Court for the Northern District of Florida against Microsoft and Google, and the German file sharing service Rapidshare. Blues Destiny alleges that Microsoft and Google are liable for contributory and vicarious copyright infringement due to the search functions of Google and Microsoft's Bing, which allow users to search for artist names and album titles and locate websites featuring illegal downloads of Blues Destiny's copyrighted works that are hosted by Rapidshare.
POPULAR PLACES TO ENFORCE YOUR PATENT
01-22-2010 [Jason LaCosse] [Permalink]
USPTO to Revise Patent Term Adjustment Calculations
01-13-2010 [Jessica Hauth] [Permalink]
GOOGLE AdWORDS II - ATTACK OF THE BILLBOARD SNATCHERS
01-12-2010 [Peter Matos] [Permalink]A hot topic of late in the world of IP is the controversy over Google AdWords and its policy of allowing, and in some instances suggesting, that advertisers purchase the trademarks of their competitors as “AdWords” so that they will come up as a sponsored link when the competitor’s brand is searched. Now a recently published Patent application filed by Google in June 2008 may signal a practice that could put an entirely new wrinkle on the AdWord controversy.
In its patent application, Google is essentially seeking to protect a method for identifying potential advertising locations within “an online geographic view”, such as its Street View feature within Google Maps, so as to allow for real time advertising to be positioned or superimposed into that view. For example, if you are looking at an image of
One basic issue is the simple fact that someone owns that billboard, and someone else paid to place their ad on that billboard, yet in the virtual world, it is Google and its advertising customers that are benefiting from the existence and placement of that billboard. This issue, however, is not new, as in 2002 several Times Square advertising companies unsuccessfully sued Sony over its alteration of billboards in the movie Spider-Man. (more). Unfortunately for Google, the scenario could be vastly different if it pursues what this new technology outlines.
What if every time a consumer enters the search term Starbuck’s to search for a nearby location using Google maps, the Street View showing that location also shows an image the billboard next door with a Dunkin Donuts ad, the latest special, and a note that they are right up the road. Indeed, there arguably doesn’t even need to be an actual billboard in the image, as any open space could get a virtual billboard. A Honda billboard next to a Ford dealership, an Ace Dentistry Sign next to Alpha Dentisty's building ... the posibilities are endless and all up for the highest bidder.
Because the arguments that Sony successfully used in its Spider-Man case were largely First Amendment arguments related to the artistic aspects of the movie, and Google’s potential virtual ads would seem to be entirely commercial in nature, Google may not be able to rely on that prior decision. More likely this would be viewed as AdWords II – Attack of the Billboard Snatchers (more)
Head Over Heels
01-05-2010 [Meredith Frank Mendez] [Permalink]The French fashion house, Balenciaga Corp. has sued New York shoe company, Steve Madden Ltd. in the U.S. District Court for the Eastern District of New York claiming infringment of its trade dress and copyrights for manufacturing and selling knockoffs of its "Lego" shoe. Interestingly, "LEGO" is a registered trademark of Lego Juris A/S/ Corp.
Balenciaga's "Lego" shoe was famously worn by Beyonce Knowles at the 2007 American Music Awards.
To view the Complaint, click here
A New Opinion on Determining the Distinctiveness of Trademarks
01-04-2010 [Francisco Ferreiro] [Permalink]To attain legal status as a trademark, a term must be deemed to be "distinctive" as used in connection with the goods and/or services being offered. However, the degree of distinctiveness – and, therefore, the strength of a mark – can range from marks that are inherently distinctive (arbitrary, fanciful, and suggestive marks) to marks deemed unworthy of protection (generic marks and descriptive marks lacking secondary meaning.) The middle ground is occupied by descriptive marks that have achieved secondary meaning among the consuming public. Because a party cannot prevail on a trademark claim unless its mark is distinctive, determining where a particular mark falls within the “distinctiveness” scale is a crucial determination in any trademark infringement suit.
As such, the recently decided Lahoti v. Vericheck – which overturned a lower court’s more rigid application of the “descriptiveness” analysis – has the potential to significantly impact future trademark litigation. In Lahoti, the 9th Circuit Court of Appeals held that the lower District Court had made several errors of law in its descriptiveness analysis. Specifically, the lower court had held (1) that a trademark was descriptive only if it described all of the trademark owner’s businesses; and (2) that a trademark could be examined only by taking the entire mark into account. Using this analysis, the lower held that the mark “VERICHECK” was not descriptive – even though one of the services offered was ‘check verification’ – as the mark did not “immediately call to mind the broad array of electronic transaction processing services” offered by the trademark owner.
However, the 9th Circuit appellate court held that this analysis was incorrect and, instead, clarified that the proper test to determine if a mark is descriptive is whether it conveys any information about the nature of the mark owner's goods or services. Moreover, the appellate court stated that a mark could properly be broken into its component parts as a preliminary step to determining consumer reaction to the overall mark.
Under this revised standard, the “VERICHECK” mark may now be examined by breaking apart its two component parts, ‘veri’ and ‘check’, and examining these in relation to each of the individual goods and services offered, including “check verification services.” As such, the 9th Circuit's ruling has put the validity of the “VERICHECK” trademark in real question and raised the hurdle that trademark owners must overcome in proving the validity of a mark.
Read the full opinion here.
Happy New Year
01-01-2010 [Peter Matos] [Permalink]As we say farewell to 2009 we take the opportunity to thank our clients and colleagues for allowing us to protect your intellectual property. And while this year has brought us all many challenges it has also afforded us many opportunities. Today we thank you for your patronage, trust and confidence. We hope that 2010 will bring you all much success, prosperity and happiness.
Last Call at Tavern on the Green
12-31-2009 [Tony Guo] [Permalink]As we say farewell to 2009, we must recognize that even in its final hours this year continues to provide vivid examples of the value of intellectual property rights.
Specifically, this New Year’s Eve, Tavern on the Green will close its doors after 75 years in New York City’s Central Park. And while many question how this landmark that declared $38 million in gross revenue in 2007, making it the second highest grossing restaurant in the US, now finds itself in bankruptcy, we want you to consider that despite the Baccarat and Waterford Chandeliers, the restaurant’s most valuable asset may be its trademark.
After the final service at the Tavern this evening, the Bankruptcy Court must decide if this $19 million asset belongs to the City of New York and is therefore outside the proceeding, or if it belongs to the LeRoys personally, also arguably putting it outside of bankruptcy, or if it is owned by the bankruptcy estate and should be liquidated. To Read More Click Here
False Marking of Unpatented Articles
12-28-2009 [Oliver Ruiz] [Permalink]The federal false patent marking statute, 35 U.S.C. § 292, prohibits the false marking of "any unpatented article" with the word "patent" or other suggestions, such as advertising, that would indicate that the article is patented. The goal of the statute is to avoid public deception as to whether a particular good is in fact patented.
Several qui tam lawsuits, which are generally lawsuits brought by private individuals on behalf of the government, have been filed based on alleged violations of the false marking statute, and seek to impose up to a $500 penalty for each article that has been falsely marked. For example, some of these lawsuits have been brought by consumers who have noticed expired patent numbers or false patent markings on everyday products, including paper cups and plastic utensils.
There has been much debate over the appropriate penalty for falsely marking a patent number on a manufactured article. On the one side of the debate are those, such as the consumers that filed the above-mentioned lawsuits, who contend that a penalty should be assessed for each and every manufactured article that bears the false marking. They contend that, if a manufacturer decides to mark 1,000 products with a false patent marking, then the maximum penalty under the statute should be $500,000, or $500 per article, for each of the 1,000 items marked.
On the other side of the debate are those, accused of false marking, that contend that the penalty should be imposed for each decision to mark a quantity of manufactured articles. According to their contention, the statute should be interpreted such that, if a manufacturer were to decide to mark 1,000 items with a patent number, and the marking was later ruled to be a false marking, then the maximum penalty would be $500, based on the one decision to mark the articles.
Earlier today, the Court of Appeals for the Federal Circuit issued a ruling that should clear up much of the debate. In today's decision, the appellate court interpeted the false patent marking statute, 35 U.S.C. § 292, to require a penalty for each article or good that is falsely marked with a patent number, and not for each decision to mark a number of goods, as suggested by one of the parties. The appellate court did note, however, that $500 is the maximum penalty for each falsely marked article, and that judges will continue to have discretion to assess a lower penalty, according to the circumstances of a given case.
You can read the Federal Circuit's decision in Forest Group, Inc. v. Bon Tool Company et. al., here.
BRANDS GO BUST
12-18-2009 [Jason LaCosse] [Permalink]Brands often tend to have life cycles. Even longstanding or big-name brands may inevitably die out. With trademarks and trademark law being strongly linked to brands (sometimes the terms "brand" and "trademark" are even used synonymously), the death of a brand can raise interesting trademark-related issues. For example, questions arise as to whether, or when, others are free to pick up and start using the trademark of a defunct brand. For a list of some familiar brands that appear to be on the brink, click here.
Facebook faces a Federal Trade Commission Complaint
12-17-2009 [Tony Guo] [Permalink]
Sotomayor Contemplates Speed Dating
12-16-2009 [Peter Matos] [Permalink]Perhaps signaling that the clock may soon run out on pure 'Business Method' patents, several of the Supreme Court Justices, during oral arguments in Bilski and Warsaw v. Kappos last month, joked whether patents should be permitted for innovations such as methods of horse whispering, methods of speed dating, or a method of teaching antitrust law. Although the exchange took on an air of judicial levity, the underlying message seems to point towards a decision invalidating an entire segment of already issued patents. This type of exchange ratchets up the anticipation and angst already being felt by a patent and corporate world that anxiously awaits the determination of whether "Business Method" patents will be dumped or stay the current bell of the ball. For more on this click here
Hail to the Redskins! Hail (their Trademark) Victory!
12-14-2009 [Tony Guo] [Permalink]
Tweet Tweet
12-11-2009 [Tony Guo] [Permalink]Now that we too are tweeting it is time we blog about Twitter. As some of you may know, the Pew Internet Project report recently found that 19 percent of all US Internet users are using Twitter or similar services to share social updates, a number which is an 8 percent increase from last year. Not surprisingly the increase is mainly attributed to three groups: (1) young Internet users 18-44, (2) mobile users and (3) those who already utilize social networks, such as Facebook and MySpace. The survey results were based on 2,253 phone responses from U.S. consumers 18 and older between Aug. 18 and Sept. 14. The 18-44 demographic can be broken down further. Specifically, usage nearly doubled from 19 percent in December 2008 to 37 percent in the 18 to 24 age group. Those 25-35 were not far behind they were up 20 points to 31 percent. While users 35-44s went up 10 points to 19 percent.
Surveys aside, we have seen an increase in client questions about social media, specifically, about liability for defamation, privacy torts, trade secret disclosures and Intellectual Property Infringement as a result of employee “posts” on corporate blogs, Facebook pages and Twitter accounts. Just like all publications, posts on these sites may trigger liability by including a third party's intellectual property, such as copyrighted material and/or trademarks. For example, in Anthony La Russa v. Twitter, Inc., et al., a case before the Superior Court of San Francisco, LaRussa, the manager of the Saint Louis Cardinals, alleged that the twitter.com/TonyLaRussa site contained unauthorized photographs of him and statements falsely attributed to LaRussa which constituted trademark infringement, false designation of origin, trademark dilution, cybersquatting, misappropriation of name, misappropriation of likeness, invasion of privacy, and intentional misrepresentation. Twitter had the case removed to the United States District Court of California and denied that the parties were in settlement discussions. However, on June 26, 2009, La Russa filed a notice of voluntary dismissal stating that the parties had settled the lawsuit.
But Twitter is not the only defendant these days; in July, Horizon Group Management LLC sued their tenant Amanda Bonnen for defamation after she tweeted about the company. Click here to see the complaint. Bonnen who had 20 followers on Twitter faces $50,000 in potential liability for her one tweet. And so as these social sites becoming more and more popular in the corporate sphere so does the potential for liability. For these and many other reasons we recommend that client’s consider not only who is representing them on these sites but all the consequences before they post.
Accelerated Examination for Patent Applications Directed to "Green Technology"
12-10-2009 [John Fulton] [Permalink]Under this pilot program, which became effective December 8, 2009 and is scheduled to run for one year, the PTO will accept the first 3,000 petitions for currently pending patent applications meeting the criteria for "green technologies".
For more information clik here.
American Airlines Settles Internet Trademark Infringement Lawsuit Against Yahoo!
12-09-2009 [Oliver Ruiz] [Permalink]Many cases have been filed around the country, based on the offering for sale, or using of keywords, in connection with search engine-driven internet advertising. One such case, which I wrote about in an article that was published recently, and which can be found here, involved American Airlines and Yahoo!, the popular internet search engine.
In that case, American Airlines alleged that Yahoo's practice of offering its trademarks and brand names as keywords to advertisers, including to the airline's competitors, amounted to trademark infringement. However, the lawsuit was recently settled before a decision could be reached in the case.
U.S. Supreme Court Hears Bilski
11-11-2009 [Jessica Hauth] [Permalink]
There’s A Lawsuit For That
11-05-2009 [Jessica Hauth] [Permalink]
IS “HOTELS.COM” GENERIC?
10-09-2009 [Jason LaCosse] [Permalink]
Return of the Supreme Court.
10-05-2009 [Francisco Ferreiro] [Permalink]The Supreme Court returned to session this morning in accordance with a long-held tradition of opening the annual term on the first Monday in October. The recent changes to the Court's composition, coupled with the potential impact of the decisions looming on the horizon, promise to make this session a particularly interesting one.
Specifically, though the Supreme Court remained unchanged in the eleven years between1994 and 2005, the last four years have borne witness to three new justices -- including a new Chief Justice and the Court's first Hispanic member. Because Justice Sotomayor replaced Justice Souter -- who was typically viewed as being fairly liberal -- the Court's idealogical make-up, which has generally been characterized as being evenly divided between liberals and conservatives, is expected to remain unchanged. However, until Justice Sotomayor's idealogy unfolds itself in the coming term, the truth behind this prevailing wisdom will remain in question.
In addition to cases concerning gun rights, animal cruelty, and freedom of political speech, the Court is slated to decide Bilski v. Doll: a case concerning the patentability of a formula for buying and selling commodities on Wall Street. By determining the scope of business method patents, the case has the potential to drastically impact the protection that will be afforded to software and biotechnology.
It's no surprise then that the "Supreme Court's new session has court-watchers curious."
Michael Jackson's Estate Sues Heal the World Foundation
09-30-2009 [Meredith Frank Mendez] [Permalink] The administrators of Michael Jackson's estate have filed a lawsuit in federal court against the Heal the World Foundation on the grounds that the foundation is illegally using trademarks and websites that give the false impression that Michael Jackson is associated with the foundation. In 1992,
Adam Goldman contributed to this entry.
Facebook is . . . being sued for patent infringement.
09-23-2009 [Tony Guo] [Permalink]
Watching the WAVE, In Re Bose clarifies the issue of fraud and intent
09-22-2009 [Tony Guo] [Permalink]
As we help clients navigate through the trademark application process we are careful to always explain the risks as well as the rewards associated with the breath of their registration. Not surprisingly, afterwards we also emphasize the need to routinely maintain and update ones Intellectual Property portfolio because it is after all an investment that should not be neglected. However, when the TTAB decided Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007), we hoped that the appeal of the decision would result in an interpretation that was more in line with the policies of public disclosure that the USPTO has consistently applied.
Specially, the concern was that the Board had found that Bose’s 2001 renewal of its registration for the word-mark WAVE in connection with audio tape recorders and players was fraudulent because the company no longer manufactured those products. The issue of actual use, however, arose after the renewal when Bose opposed the registration of the HEXAWAVE mark and Hexawave fired back accusing Bose of committing fraud on the PTO. In essence, the Board’s finding of fraud hinged on the determination that Bose “should have known” which in essence established a standard of subjective intent. This finding led to the coining of the term fraudit, which are audits on Intellectual Property portfolios that seek to uncover what the owner “should have known.”
Thankfully, the lowering of the fraud standard by the Board from willful to negligence was recognized and overturned by In re Bose Corporation, Appeal No. 2008-1448 (Fed. Cir., Aug. 31, 2009). The CAFC correctly found that there was "no substantial evidence that Bose intended to deceive the PTO in the renewal process." This finding is consistent with the USPTO's policy of public disclosure, the duties imposed on applicants and the applicants’ common law rights.
Google Book Search Settlement Agreement Under Attack from Top U.S. Copyright Official
09-21-2009 [Meredith Frank Mendez] [Permalink]In testimony before the House Judiciary subcommittee, U.S. Register of Copyrights, Marybeth Peters criticized the proposed agreement between Google and the Author's Guild, which would allow Google to create and maintain a vast digital library of scanned books. Specifically, this settlement would give Google the right to digitize millions of books, including "orphan books" (books for which there is no clear copyright owner), without permission from copyright holders. Consequently, Google would be shielded from liability and would establish a registry that would sell access to books to libraries and individuals. Revenue would be split among Google, authors, and publishers.
Ms. Peter's testimony, which could prove to be a crucial factor in the settlement agreement's fairness hearing on October 7th, argued that this registry created a back-door for Google to get around copyright restrictions by allowing them to sell books without prior author consent. She equated this situation to that of a compulsory license, in which the rights holder is forced to license his/her work to others, as Google would now have the right to display book text and control the sale of downloads. Most importantly however, Ms. Peters claimed that this settlement agreement usurped Congressional authority because only Congress, not the courts, can enact such licenses.
The U.S. Copyright Office originally favored this agreement, but later changed its view because the class action settlement addressed future behavior instead of just past actions. Ms. Peters stated, "[t]he settlement would bind authors, publishers, their heirs and successors to these rules, even though Google has not yet scanned and may never scan their works." Google would be selling and displaying out-of-print books without permission and without fear of legal redress.
Google, who would pay $125 million to settle the case subject to Court approval, claims that the agreement would let authors retain control of their books because authors can always request to have their work taken down, and would expand access to millions of out-of-print books. Furthermore, in an attempt to cure any anti-trust concerns, Google said that they would allow rival retailers to sell online digital copies of out-of-print books that Google had scanned from libraries.
Adam Goldman contributed to this enrty.
David i4i vs. the Microsoft Goliath.
08-25-2009 [Tony Guo] [Permalink]
Earlier this month, the Honorable Leonard Davis of the United States District Court for the Eastern District of Texas made a determination of willful patent infringement in favor of a thirty (30) employee Canadian based software manufacture who sued the software giant, Microsoft. The lawsuit filed by Infrastructures for Information Inc., known as i4i claimed that MS Word 2003 and 2007 included an Extensible Markup Language or XLM tagging feature that infringed its patent. The plot was thickened by the fact that i4i developed a product based on the patent and even negotiated the possibility of a license with Microsoft which triggered allegations of willful infringement on the part of the software giant who is no stranger to litigation.
Specifically, in May of this year, the jury found in favor of i4i and awarded it $200 million. But earlier this month, Judge Davis found that the infringement was willful and added $40 million to the damages award along with pre-judgment interest in the amount of $37 million. He then issued a permanent injunction prohibiting Microsoft from selling MS Word in the US and giving Microsoft 60 days to comply with the injunction.
Initially, word of the injunction lead to much speculation about Microsoft’s ability to develop a patch for the software that disabled the custom XLM and roll it out in an update for MS Word within the 60 days compliance period. Therefore, no one was surprised when Microsoft appealed the ruling and sought an expedited hearing claiming that compliance with the injunction would irreparably harm the company. Now with a hearing set for September 23 before the Federal Court of Appeals rumor has it that Microsoft, who has vowed to invalidate the patent, is talking settlement. Till then, many will be anxiously awaiting the software giant’s irreparable harm arguments.
Petition of Cert to Supreme Court on Issue of Obviousness
08-21-2009 [Jessica Hauth] [Permalink]In Medela AG v. Kinetic Concepts, Inc., a writ of certiorari petitioning the Supreme Court was filed last week, seeking to supplant juries in deciding the issue of obviousness in patent cases in favor of judges. The petition, filed by Medela, posed the following question to the Supreme Court:
“[w]hether a person accused of patent infringement has a right to independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the “non-obvious subject matter” condition for patentability.”
Medela appeals a ruling from the Federal Circuit which they argue conflicts with other circuits. In support, Medela relies on the recent and seminal case KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) for the proposition that obviousness is a legal determination, and urge that therefore it is an issue which should be decided by judges rather than juries. A copy of the writ of certiorari can be found here.
The Supreme Court has yet to decide whether to grant the petition.
MIAMI COMPANY SUES TRAVEL CADDY FOR PATENT INFRINGEMENT
08-06-2009 [Oliver Ruiz] [Permalink]Balanzza, a Miami company, has filed a patent infringement action against Travel Caddy, Inc., an Illinois company, alleging infringement of U.S. Patent No. 7,550,684, entitled "Portable Handheld Electronic Scale".
The accused device is Travelon's Ultra-Light Electronic Luggage Scale, Style No. 12243:
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The action is pending before Senior U.S. District Judge William M. Hoeveler, of the Southern District of Florida.
LAWYERS AVOID $755,000 SANCTION IN PATENT INFRINGEMENT ACTION BROUGHT AGAINST CITRIX
07-24-2009 [Oliver Ruiz] [Permalink]In Orenshteyn v. Citrix Systems, Inc., the Federal Circuit reversed in part a ruling from the U.S. District Court for the Southern District of Florida, which entered summary judgment of non-infringement in a patent infringement action brought by the inventor of U.S. Patent 5,889,942 and U.S. Patent 6,393,569, both entitled "Secured System for Accessing Application Services from a Remote Station." The appellate court also reversed a sanction of $755,633.17, imposed against the Plaintiff inventor, and two of his attorneys.
While the Federal Circuit found that the "case was not litigated well by [Plaintiff] and his counsel," it did find that there was a triable issue with regard to at least one of the asserted claims of the patents-in-suit, and reversed the summary judgment as to that claim, but affirmed the summary judgment as to all other asserted claims. Accordingly, the case was remanded to the district court for trial on the remaining asserted claim, and the defendant's non-infringement and invalidity defenses.
Based on the reversal, as well as the fact that the Defendant's Rule 11 motion for sanctions was served after entry of summary judgment, thereby depriving Plaintiff and his attorneys of the 21-day safe harbor, the appellate court found that an award of Rule 11 sanctions was an abuse of discretion. However, because an issue remained as to whether the Plaintiff's attorneys should have corrected the Plaintiff's testimony regarding pre-filing investigation conversations, the appellate court left open for the district court's determination whether sanctions were appropriate for vexatious litigation, but cautioned that any award should be limited to the "costs, expenses, and fees attributable to the multiplication of the proceedings that resulted," which it predicted would be "a fraction of the total litigation cost".
Will Bilksi Affect Your Biotech Patent?
07-08-2009 [Jessica Hauth] [Permalink]The recent Federal Circuit decision in In re Bilski last October has begun to cause some concern in the biotech sector. As we have reported in previous blog entries, Bilski created a new test for method claims in patents, requiring a claimed process to be tied to a machine or apparatus, or to transform an article into a different state or thing (see blogs “In re Bilski: What Constitutes a Statutory ‘Process’ Under §101?” posted 11/5/08, “Supreme Court To Review Method Patent Case” posted 6/2/09, and “More on Bilski and Business Method Patents” posted 6/3/09). Even though the technology in Bilski was not scientific in nature, some are concerned that the precedent set by this case could have ramifications for the biotech sector since many issued biotech patents and pending biotech patent applications, such as, but not limited to, certain processes for genetic testing, do not rely on a machine or transformation. As we await the U.S. Supreme Court hearing in October, we hope that the potential application of Bilski to the biotech sector will be addressed by the Bench.
Gene Patents Challenged On Grounds of Public Policy
07-08-2009 [Jessica Hauth] [Permalink]
Florida to Require Publication of Intent to Use a Ficticious Name
07-07-2009 [Peter Matos] [Permalink]Pursuant to Florida SB 872 the sate ficticious name statute 865.09, F.S, is being amended to require that a business publish its intent to use said ficticious name. While some have noted some exceptions to this requirement, such as a valid Florida Trademark Registration, here, certaily the publication requirement offers a new way to police existing Sate and Federal Trademark rights.
The King of Pop's Patent
06-26-2009 [Peter Matos] [Permalink]Many titles were bestowed upon Michael Jackson during his lifetime, but one not commonly associated with him was "inventor".
But indeed, The King of Pop is listed as a co-inventor of United States Patent Number 5,255,452, entitled "METHOD AND MEANS FOR CREATING ANTI-GRAVITY ILLUSION", and covering shoes of the type worn while performing dance routines in his hit single "Smooth Criminal", where he famously incorporated a 45-degree lean in the choreography.
Abstract: A system for allowing a shoe wearer to lean forwardly beyond his center of gravity by virtue of wearing a specially designed pair of shoes which will engage with a hitch member movably projectable through a stage surface. The shoes have a specially designed heel slot which can be detachably engaged with the hitch member by simply sliding the shoe wearer's foot forward, thereby engaging with the hitch member.
Oliver Ruiz and Sebestian Ohanian Contributed to this entry.
Can Downloading Music Cost $9000 Per Song
06-25-2009 [Peter Matos] [Permalink]An order to grant a new trial in Capitol Records, Inc. v. Thomas should pique the interest of both music downloaders and music industry executives alike. A jury found the defendant liable for copyright infringement and awarded $220,000 in statutory damages in connection with the copying of 24 songs. The judge, however, ordered a new trial based on an error in the jury instructions, where the instructions were contrary to the precedent set by the Eight Circuit in National Car Rental System, Inc. v. Computer Associates International, Inc., 991 F.2d 426, 430-31 (8th Cir. 1993)(requiring an actual dissemination of [sic] copies). In the jury instructions, Chief Judge Davis did not require a finding that the defendant actually distributed the works in question but required only a finding that the defendant made the works available to others to download.
The excessively large statutory award of $220,000, based on the only 24 songs, further compelled the judge to vacate the jury verdict. The judge opined that Congress intended that these large statutory awards deter those engaged in piracy for profit and that “it would be a farce to say that a single mother’s acts of using Kazaa are the equivalent, for example, to the acts of global financial firms illegally infringing on copyrights in order to profit….” In his order, the judge suggested that Congress should address and amend the Copyright Act for liability and damages in these types of consumer cases. As the internet and advancements in technology increasingly permeate the lives of private individuals, copyright holders may face the unfeasible task of enforcing their rights against all infringing individuals. The courts and Congress must, however, protect the interests of intellectual property holders yet not allow large entities to financially ruin an individual for a seemingly minor offense.
Sebastian Ohanian Contributed to this Entry
SUCCESSFUL PATENT INFRINGEMENT SUITS MAY POINT TO GOOD EXAMPLES OF PATENT CLAIMS
06-20-2009 [Jason LaCosse] [Permalink]Given that an asserted patent such as the‘216 patent can be subject to a wide variety of attacks during litigation, when such patents survive litigation and are found to be infringed, they may point to good examples of claim drafting -- especially when enormously large amounts of damages were at stake.
The ‘216 patent is entitled “SYSTEM FOR SOFTWARE REGISTRATION” and, as the name suggests, involves a software registration system which prevents use of unauthorized copies of software. More specifically, the system only allows the software to run if a proper licensing procedure has been followed.
In this regard, the ‘216 patent, which includes both system and method claims, may be instructive, particularly with regard to claiming computer-related types of inventions which often involve system aspects as well as the related methods for using such systems. U.S. Patent Number 5,490,216 can be found here.
Sebastian Ohanian contributed to this Entry.
INTERNET AFFILIATE MARKETING CASE DRAWS MEDIA ATTENTION
06-17-2009 [Oliver Ruiz] [Permalink]A federal lawsuit that involves one of the firm's clients, Money4Gold Holdings, Inc., has drawn media attention, due to its implications on internet commerce and online marketing . Among the issues raised by this lawsuit is whether companies that utilize affiliate marketing can be held responsible for alleged acts of infringement by individual affiliate marketers, also known as "publishers".
An article written by Vanessa Blum, a special reporter to the Daily Business Review, can be found here.
Facebook to Offer Profile URL's: Should Trademark Owners Be Concerned?
06-12-2009 [Tony Guo] [Permalink]
More on Bilski and Business Method Patents
06-03-2009 [Peter Matos] [Permalink]Those seeking to expand business-method patents cite economics as a “useful art” and explain that these patents encourage innovation and produce tangible results. Conversely, opponents indicate that the patents curtail the free-flow of information and claim abstract ideas, both contrary to the goals of patent protection. Certainly, the Court will seek to balance the interests of both inventors and the public, which benefits from the increased societal knowledge that patents provide. But, as of now, the Court of Appeals’ decision seemingly puts the property rights of many business-method patent-holders in jeopardy with both the legal and business worlds taking note and this being heralded by some as "The most important patent case in 50 years" (link).
Sebastian Ohanian Contributed to this Entry
Supreme Court To Review Method Patent Case
06-02-2009 [Oliver Ruiz] [Permalink]The Supreme Court of the United States has decided to review the federal appellate court decision of In re Bilski, a seminal decision concerning method patents, in which the Court of Appeals for the Federal Circuit proposed a "machine-or-transformation" test for determining whether a process or method was capable of being patented.
The Supreme Court's docket reveals that the "Questions Presented" for this appeal (as framed by the party seeking review, in this case the patent applicant), are the following:
Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."
Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business." 35 U.S.C. § 273.
John Fulton, Jr. contributed to this blog entry.
RAPID LEGAL DEVELOPMENT FOLLOWS ECONOMIC SUCCESS
05-27-2009 [Jason LaCosse] [Permalink]
WHEN IS A SETTLEMENT AGREEMENT MORE THAN JUST A SETTLEMENT AGREEMENT? GOOGLE IT.
05-26-2009 [Tony Guo] [Permalink]
Removing Kindle From the Fire
03-25-2009 [Francisco Ferreiro] [Permalink]However, this new feature has come under attack by the Author’s Guild which contends that a purchaser of an "e-book" buys only the right to read the book -- not the right to have the book read out loud. In fact, the concern that this feature will cannibalize the market for audio-books was apparently big enough to incite the President of the Author's Guild to author a New York Times opinion column on the issue. As noted in his article, technology has advanced to a point where the “computerized voices” on text-to-speech software are “almost indistinguishable from human ones”; with some of these programs going so far as to include an occasional ‘um,’ ‘er’, sigh and -- even -- coughs, in order to accurately simulate a human reader. Thus, the threat posed to audiobooks by text-to-speech software is greater than would have been possible in the past.
However, much to the disappointment of those interested in a definitive legal opinion on this dispute (and, one would imagine, the parties' attorneys) Amazon has decided to avoid the expense of litigation and yield to these objections. Specifically, Amazon has announced that it will allow copyright holders to decide whether or not they wish to enable the read-aloud Kindle feature on a title-by-title basis. Of course, the number authors that ultimately exercise this option will likely shrink if it turns out that consumers are more inclined to purchase a title that includes the read-aloud feature.
An article on this dispute is available here.
LIL BO AND HIS PEEPS PREVAIL IN COPYRIGHT INFRINGEMENT CASE
01-22-2009 [Oliver Ruiz] [Permalink]Rap artists Lil Jon, Lil Bo, and Big Sam, who together comprise the hip hop group Lil Jon and the East Side Boyz, prevailed in a copyright infringement case regarding the song "The Weedman", from their platinum album, "Kings of Crunk". The case was brought by a freelance musician and producer who claimed copyright ownership of the work, and the artists prevailed after successfully asserting a defense which was primarily based on the existence of an implied license for the use of the work.
The decision rendered by the United States Court of Appeals for the Eleventh Circuit can be found here.
Lapping the PACER?
01-05-2009 [Francisco Ferreiro] [Permalink]For years now the federal judiciary has made documents filed in federal court litigation available through a search platform known as PACER (Public Access to Court Electronic Records.) While the documents available through PACER are in the public domain, access to the documents requires registration as the documents are not indexed by commercial search engines. Moreover, a government fee of eight cents a page is charged for reading, printing, or downloading the documents.
The registration and fee requirements arguably have the effect of limiting public access to these records. Accordingly, an individual named Carl Malamud has been asking paying users of PACER to send him their documents and has begun publishing these for free on his website.
Given the nature of the documents involved, its unlikely that Malamud's actions could be said to run afoul of any intellectual property laws or that PACER will be altered to make this, or similar projects, less feasible. Nevertheless, even if Malamud's project is here to stay, PACER is unlikely to go away given its superior search mechanism and the fact that PACER is "both revolutionary and cheap when compared to the state and local courts that have no electronic records at all."
More details on Malamud's project are available here.
Tommy, Can You Seize Me?: A Recent Ruling on The Tariff Act
12-17-2008 [Oliver Ruiz] [Permalink]The U.S. Bureau of Customs and Border Protection ("CBP") prevailed in a recent decision from the United States Court of Appeals for the Ninth Circuit, which concluded that CBP was authorized to seize watches bearing the counterfeit trademark "TOMMY", and impose a fine as a civil penalty on the importer, even though the owner of the mark at issue did not make or sell watches at the time of the seizure. The case is entitled United States of America v. Able Time, Inc., and the decision can be found here.
As discussed in the decision, the Tariff Act authorizes the Bureau of Customs and Border Protection to seize any "merchandise bearing a counterfeit mark" and impose a fine as a civil penalty. 19 U.S.C. §1526(e) & (f). The Defendant, Able Time Inc., attempted to import watches bearing the trademark "TOMMY," a mark owned by the Tommy Hilfiger Licensing Corp.
In the proceedings before the trial court, Able Time argued that the watches were not counterfeit, and thus any seizure or fine was improper because Tommy Hilfiger did not make or sell watches at the time of the seizure by CBP. As grounds for their argument, Able Time pointed to other trademark statutes, such as the Lanham Act, to illustrate that an "identify of goods or services" is required to establish that a mark is counterfeit.
The Court of Appeals disagreed, and concluded that, unlike related trademark statutes, the Tariff Act does not contain an "identity of goods or services" requirement, and thus CBP was entitled under the Tariff Act to seize the watches and impose a civil penalty on the Defendant, Able Time.
The CBP's ability to seize goods bearing counterfeit marks, and impose hefty civil penalties, is another of the several benefits conferred on the owner of a federal trademark registration. Without a federal registration, it is highly unlikely, if not impossible, for the CBP to detect counterfeit marks, and prohibit their importation.
HAVE YOU PLAYED GUITAR HERO YET?
10-31-2008 [Jason LaCosse] [Permalink]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] [Permalink]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.
Patents - "Page Down" to Find Their True Meaning
09-09-2008 [Peter Matos] [Permalink]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] [Permalink]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] [Permalink]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] [Permalink]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] [Permalink]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.
Copyrighting Mother Nature's Images
07-07-2008 [Francisco Ferreiro] [Permalink]"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] [Permalink]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] [Permalink]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] [Permalink]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.