Trade Protection, Not Troll Protection?

Yesterday, U.S. Reps. Tony Cárdenas (D-San Fernando Valley, Calif.) and Blake Farenthold (R-Corpus Christi, Texas) introduced the “Trade Protection Not Troll Protection Act.” 

Seriously.  That's what it's called.  

The stated purpose of the Act is to make it harder for "trolls" to bring cases in the International Trade Commission.  Which raises the question:  what the what?

Maybe one of my friends out there with an ITC practice can explain this to me.  I thought to bring an action in the ITC, you had to meet some kind of "domestic industry"  standard.  How does a NPE meet that standard?  And if they do meet the standard, doesn't that mean that they're a "NNPE" (Non-Non-Practicing Entity) or just a "PE" (Practicing Entity)?

I don't get it.

North Carolina House to debate anti-trolling bill

In a continuation of the trend of states stepping into the anti-trolling parade, today the North Carolina House is expected to take up its own anti-troll bill.   According to the Raleigh News & Observer, 

Under the bill, companies targeted by NPEs in bad faith could seek attorney’s fees and damages in state court, and the people behind the NPEs could be personally liable for any awards. It also contains measures that would deter NPEs from sending “demand letters,” which often precede lawsuits, that accuse companies of infringing on a patent and demanding that they license the invention.

Beasties copyright infringement suit against Monster under way

Ad-Rock looking very corporate

Opening arguments yesterday in the Beastie Boys' suit against Monster over Monster's use of the Beastie's songs in a promotional video.

I'm really surprised that this is going to trial, since Monster concedes infringement, and the only fight is over the measure of damages.  

US Armed Forces suing veterans to protect their trademarks

Sounds bad, right?  But then there's this (click on photo to embiggen):

So maybe not.

Alabama banker thinks Alabama's anti-troll law is not enough

Say "Alabama Banker" and this guy's image will pop into your head

Scott Latham, the head of the Alabama Banker's Association, is very happy that Alabama has a new law making it a crime to send a demand letter in bad faith.

In an unsurprising development, Mr. Latham thinks the Federal Government needs to get its act together and pass it's own anti-"troll" law.  He'd like to see the law include:

1. A requirement that demand letters include more detail about the alleged infringement;
2. Protection for "end users" (otherwise known as "actual infringers;" and
3. A "loser pays" provision that would undoubtedly require plaintiffs to post big bonds when they bring suit, a requirement found nowhere else in U.S. civil practice.  

I'm sure Congress is going to get right on that.  Next year, maybe.  

Rader to Step Down as Chief

The Wall Street Journal is reporting that Judge Rader will step down next week as Chief Judge of the Court of Appeals for the Federal Circuit.  

The stated reason is ... strange. 

Earlier this year, Randall R. Rader, the chief judge of the U.S. Court of Appeals for the Federal Circuit—one of the nation's highest federal courts—sent a laudatory email to Edward Reines, a patent lawyer at Weil Gotshal & Manges LLP in Silicon Valley, said people familiar with the matter.

 ***

In the email, Judge Rader said he and other court colleagues had been impressed by Mr. Reines's skill as an appellate lawyer, according to people familiar with the details of the judge's note. The judge encouraged the lawyer to share the endorsement with others, a tool that could be used to impress clients, people familiar with the matter said. 

I'm not sure what to make of this.  I can't say that I see anything wrong with a judge complimenting an attorney on his courtroom skills.  I've been fortunate enough to be on the receiving end of a couple of compliments like that.  If it's OK for a judge to compliment an attorney in open court, it's hard to argue that putting something like that in an email crosses any lines.

Now, for the judge to encourage the attorney, in that same message, to "share the endorsement with others" as the story suggests is a bit odd.  Unethical?  I don't know.  I can't help but wonder if there isn't more to the story than we've heard so far.  Because this is not enough, so far, that I can see how it's forcing Rader to step down.

USPTO Channels Proust in the Federal Register

Last week, the USPTO issued a Federal Register notice entitled "Revisions To Implement the Patent Term Adjustment Provisions of the Leahy-Smith America Invents Act Technical Corrections Act."  Nice title, right?  It gets better.  Check out this sentence:

The Office is further providing an optional procedure for requesting a recalculation of patent term adjustment, as an alternative to the petition and fee otherwise required to request reconsideration of a patent term adjustment determination, for patents issued between January 14, 2013 (the date of enactment of the AIA Technical Corrections Act) and May 20, 2014 (patents issued on or after this date will have patent term adjustment determinations consistent with the AIA Technical Corrections Act) that resulted directly from international applications.  

 Got that?  I hope somebody gets some recognition for that sentence.  

One of these things is not like the other...

The FDA has issued new guidelines entitled "Clinical Pharmacology Data 
to Support a Demonstration of Biosimilarity to a Reference Product."  These guidelines provide additional detail regarding the clinical data and information needed to demonstrate that a proposed product is "highly similar" to a reference product.

This is going to require some time to digest.

Remember that patent reform bill we were working on?

Never mind.

Senatory Leahy has apparently pulled the patent "reform" bill off the Senate Judiciary Committee's agenda for this term. 

So now what are we supposed to talk about?

IPO Advocates Taking Names, Kicking Ass

All out of bubblegum.

Regarding the fee-shifting proposals in the draft patent "reform" legislation.  From the IPO website:

IPO is continuing to urge that the patent bill must include an effective requirement for attorney fee shifting to deter frivolous litigation by any party, large or small. District courts should award attorney’s fees UNLESS the position and conduct of the non-prevailing party are objectively reasonable and substantially justified, or unless exceptional circumstances make such an award unjust. Fee shifting should be the default.

IPO Executive Director HERB WAMSLEY said, “We hope the Senate won’t agree to a compromise that merely codifies the Supreme Court’s Octane Fitness decision, or even weakens Octane Fitness by letting litigation abusers off the hook for economic hardship. That won’t pass the laugh test.”

Surprising Federal Circuit Decision

Yesterday's Federal Circuit decision in Tobinick v. Olmarker is a real surprise. 

The Court reviewed a decision of the Patent Trial and Appeal Board in a patent interference that generally relates to local administration of a TNF-α antibody to relive the symptoms of a herniated disc.  Here's one of the Counts from the interference, corresponding to Tobinick claim 68:

A method of treating or alleviating one or more symptoms of a nerve disorder mediated by nucleus pulposus in a mammal in need of such treatment comprising the step of administering a therapeutically effective amount of a TNF-α inhibitor to the mammal, wherein said TNF-α inhibitor is an antibody that blocks TNF-α activity, wherein the antibody is administered locally.

The Board construed the claims, and granted Olmarker's motion for judgment that Tobinick's specification did not provide adequate written description support for the term "administered locally" under 35 USC 112, para. 1. 

Now, here's the interesting part.  The Federal Circuit reviews the Board's claim interpretation de novo.  Essentially, it's a complete do-over on claim construction.  It's generally acknowledged that taking your claim construction from the USPTO, or a court, to the Federal Circuit is a coin toss.  On the other hand, the Federal Circuit reviews the Board's factual findings using a much more deferential standard:  they are only set aside if the Court finds the Board's factual findings are not supported by substantial evidence, or are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law." See, e.g., Falkner v. Inglis, 448 F.23 1357, 13663 (Fed. Cir. 2006).  This is not a tough bar to get over.  

So first, the Court reviews the Board's claim construction, and upholds it.  At this point, if you're representing the Appellee, you're feeling pretty confident.  The goal line is in sight, and you're inside the five-yard line.    Just a couple more steps...

Yes, that's right.  In a totally unexpected development, the Federal Circuit decides that the Board's factual findings are not supported by substantial evidence, and reverses.  

Wow.  Just wow.  

Name that tune?

Mark Andes, founding bass player of Spirit, has filed a copyright infringement suit, based on the alleged similarity of the band's tune Taurus to a certain well-known classic rock hit.  Take a listen and see if you can identify that hit.  Be patient - you have to listen to at least the first minute.  Then click this link to read the full story in BusinessWeek.

A lot of patent lawyers are about to be looking for work

They're going to be selling a lot of these

In a development that promises to be great news for their shareholders, and terrible news for their attorneys, Apple and Google have agreed to settle all of their patent disputes.  The deal does not include a cross-license, which means even the licensing attorneys are not going to get any hours out of this settlement.

Colbert: Patents are a "Fast Track to Moneytown"

Another take on the Amazon "photography on a white background" patent (see previous post here).

How is a banana like a rugby ball?

A strange question, I know.  Bear with me here.

The European Court of Justice is considering a challenge to Norwegian company Stokke AS' trademark on the shape of their "Tripp Trapp" high chair.  Here's a picture of the chair:

Stokke's "Tripp Trapp" high chair

Nice, right? Classy.  Is the shape of the chair properly registrable as a mark?   It might be - remember, the purpose of a mark is to identify the source of a product or service.  In this instance, maybe the shape is so firmly associated with the Stokke chair that it could be properly registrable.  

In any event, Stokke registered the shape of the chair a trademark.  A Dutch court declared the mark invalid, but in a procedural move that I have to confess I don't really understand, the Dutch high court referred the case to the European Court of Justice for review.

The Advocate General, Maciej Szpunar, advises the Court, and has taken the position that the mark is invalid.

Maciej Szpunar

Now here's the interesting part.  According to this news release, Szpunar has apparently taken the position that 

A shape that cannot be trademarked is one "which results from the nature of the goods themselves or which gives substantial value to the goods," such as the shape of a banana or a rugby ball.

OK, so I understand the the banana - it's ... banana-shaped.  You couldn't register a banana shape as a mark for bananas.  It's generic.  But you could register the banana shape for some other non-banana-related product, like this:

Not a banana

Because the "nature of the goods" in this instance doesn't have anything to do with fruit.  Now, a rugby ball is different than a banana, at least in the sense that rugby balls don't grow on trees.
  

Does a rugby ball "derive its value" from its rugby-ball shape?  I suppose so. If it's not shaped like a rugby ball, it's not ... a rugby ball.  It's a soccer ball.  Or a football.  

Definitely not a banana.

But, again, why isn't it true that the shape of the rugby ball isn't registrable as a mark for rugby balls because it's generic - all rugby balls are shaped like ... rugby balls.  

Right decision, wrong basis.

They're all the same.  That's kind of the point.

Lots of discussion this week about the Federal Circuit's decision in In re Roslin Institute, denying patent claims to a cloned sheep. 

The Federal Circuit affirmed the rejection of the claims under 101 as non-statutory.  But the claims were also rejected by the USPTO under 102 as anticipated, and 103 as obvious, over prior art.

According to the Court, the Board's reasoning for the prior art rejections was as follows:

 “‘[w]here . . . the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.’” J.A. 21(quoting In re Best, 562 F.2d 1252, 1255 (CCPA 1977)) (alteration and omission in original). The Board then held that the claimed clones were anticipated and obvious because they were indistinguishable from clones produced through prior art cloning methods, i.e., embryotic nuclear transfer and in vitro fertilization. 

This raises two questions for me.  

First, the claims are to a cloned sheep.  They're not product-by-process claims (which probably would have made them patentable, given that Roslin got a patent on the cloning process used to make the sheep).  So why is the fact that you could have produced a clone with another process relevant?

Second, if the cloned sheep is really a copy of a pre-existing sheep, then why doesn't that pre-existing sheep anticipate the cloned sheep under 102?  

Finally, the reason I think this decision gets made under 101, rather than 102 or 103, is that the Court wants all of us (including the USPTO) to view 101 as a threshold that has to be got over before we worry about prior art.  

Don't oversell.

Patent Examiners at work in 1869.

This article by Kara Swanson in Slate, is entitled "The History of Patent Examiners is Fascinating.  No, Really, it's Fascinating."  

The article is worth reading if you have an interest in the history of the patent examination process.  Which I do.  But if you have to use the word "fascinating" twice in the title to draw in readers, you're trying too hard.

Has the Australian TM office decided to take the rest of the year off?

They call it "IP Australia"

We'll find out soon enough.  Apparently an Australian publisher of glossy magazines has applied for a trademark on the word "glossy" as it applies to...glossy magazines.

Now, I'm not an Australian trademark attorney, but I'm pretty sure that there's no way that this gets approved, unless the entire Australian TM office has decided to spend the rest of the year at the beach.

Which could happen.  

Amazon's new picture patent isn't ridiculous. It's worthless.

Smile!

There's been a lot of hand-wringing in the blogosphere about U.S. patent 8,676,045, assigned to Amazon.  Figure 2 of the patent is shown above.  

The patent has been described as covering "a way of taking pictures of things against a white background."  That description, in combination with the figure shown above, makes this sound like yet another outrageous screw-up by the USPTO, which has now decided that it's going to grant patents on anything.

This is, of course, complete bulls&*t.  

Here's claim 1:

1. A studio arrangement, comprising:

a background comprising a white cyclorama;

a front light source positioned in a longitudinal axis intersecting the background, the longitudinal axis further being substantially perpendicular to a surface of the white cyclorama;

an image capture position located between the background and the front light source in the longitudinal axis, the image capture position comprising at least one image capture device equipped with an eighty-five millimeter lens, the at least one image capture device further configured with an ISO setting of about three hundred twenty and an f-stop value of about 5.6;

an elevated platform positioned between the image capture position and the background in the longitudinal axis, the front light source being directed toward a subject on the elevated platform;

a first rear light source aimed at the background and positioned between the elevated platform and the background in the longitudinal axis, the first rear light source positioned below a top surface of the elevated platform and oriented at an upward angle relative to a floor level;

a second rear light source aimed at the background and positioned between the elevated platform and the background in the longitudinal axis, the second rear light source positioned above the top surface of the elevated platform and oriented at a downward angle relative to the floor level;

a third rear light source aimed at the background and positioned in a lateral axis intersecting the elevated platform and being substantially perpendicular to the longitudinal axis, the third rear light source further positioned adjacent to a side of the elevated platform; and

a fourth rear light source aimed at the background and positioned in the lateral axis adjacent to an opposing side of the elevated platform relative to the third rear light source; wherein

a top surface of the elevated platform reflects light emanating from the background such that the elevated platform appears white and a rear edge of the elevated platform is substantially imperceptible to the image capture device; and

the first rear light source, the second rear light source, the third rear light source, and the fourth rear light source comprise a combined intensity greater than the front light source according to about a 10:3 ratio.  

Now, if you know anything at all about patents, you're looking at that claim and thinking, quite correctly, that it's got so many elements that nobody will ever infringe it.  

Ever ever ever.  

So the question to ask is not "how did this patent ever get issued?"  It's "why did Amazon bother to prosecute it in the first place?"

Star Wars I-III recut: is it a copyright violation if it's better than the original?

Topher Grace has re-edited Star Wars I-III into a single movie.  I haven't seen it yet, but folks seem to think it's better than the original(s).  Admittedly not a very high bar.

But the warnings that the video will soon be taken down because of complaints about copyright violations has raised a number of questions in my mind.  

1. Re-editing three films into one much shorter film is undoubtedly a work of creativity, that arguably creates a new copyright.  Doesn't it?

2. Is this really different than the kind of sampling that goes on all the time in the hip-hop world?  

3. And what if it really is better?  Don't we want to encourage that kind of creativity?  And if we decided to enshrine that kind of exception in the statute, what would that exception look like?

R.I.P., Mr. Coffee

Edmund Abel, the inventor of the Mr. Coffee drip coffeemaker, passed away on April 21; he was 92.

He never drank coffee.

Barn door open, horse gone.

Last week, the U.S. Supreme Court heard oral arguments in Nautlius v. Biosig (see links below).  The crux of that case was that the Supremes hate hate hate the Federal Circuit's "insolubly ambiguous" test for determining whether a claim is indefinite under 35 USC 112, second paragraph.

Yesterday, the Federal Circuit issued a precedential decision in In re Packard, which relates to whether a claim is indefinite under 35 USC 112(b), the "successor" statute under the AIA to 35 USC 112, second paragraph.

Now, you might think that it's folly for the Federal Circuit to be issuing decisions construing a statutory provision that the Supreme Court has before it, especially where every indication is that the Supreme Court is determined to throw out the Federal Circuit's test for compliance with that statutory provision.

But there's a critical difference: Packard relates to the standard used by the Patent Office for determining whether a claim in a patent application is indefinite.  The Board of Appeals rejected the claims at issue on a number of grounds, including indefiniteness under 35 USC 112(b).  The standard the Board applied was that set forth in the Manual of Patent Examining Procedure:  “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”  Appellant sought to have the Federal Circuit's "insolubly ambiguous" standard applied to his pending application instead.

The Federal Circuit declined to apply the "insolubly ambiguous standard" to pending patent applications.  Instead, they enunciated the following explicit test:

We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which the language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject a claim as failing to meet the statutory requirements of sec. 112(b).  The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.

 (slip op at 7.)  Got that?  Couldn't be clearer, right?  The Federal Circuit has now enunciated a specific test for compliance with 35 USC 112(b) that is easy for the USPTO and patent applicants to follow.

The Supreme Court is going to hate it.

Akamai, part II: Cross-border problems, or Who Remembers Blackberries?

No, not that kind.

Richmond School of Law Professor Osenga raises an interesting issue with respect to the recent oral arguments at the Supreme Court in the Limelight v Akamai case (see links here).  
In Limelight the Federal Circuit suggested below that direct infringement by a single actor is not required to prove inducement.  So, what happens if a step of the method is performed outside the US?  Professor Osenga is worried.

Direct infringement is based on domestic behavior and only domestic behavior. It asks, does the alleged infringer make, use, sell, or offer to sell the patented invention in the United States? If any of the steps of a method occur outside of the United States, there is no direct infringement. Before the Federal Circuit’s decision, if there was be no direct infringement of a patent, there could also be no indirect infringement. After the [Federal Circuit's Limelight v Akamai] decision, however, because there is no requirement of direct infringement, liability for indirect infringement of a United States patent can be based on behavior that occurs outside of the United States.

This was exactly the scenario back in the NTP v RIM case, decided back in 2005.  You may remember, in that case, the Federal Circuit upheld the district court's finding that RIM directly infringed NTP's claims, despite the fact that part of RIM's accused system was located in Canada.   The basis for that decision was that the "control and beneficial use" of the system was in the U.S., despite the extraterritorial location of a critical part of the accused system.  

So what am I missing here? 

Cellphones are crazy expensive, people are annoyed, and Apple and Samsung just got hosed.

They're angry.  And confused.  And bored.

You've probably heard by now that last Friday, a San Jose jury came in with a mixed result in the latest battle in the Apple-Samsung patent war.  The jury found that Samsung infringed some Apple patents, and that Apple infringed a Samsung patent

The most interesting part for me is that Apple was awarded $119.6 million in damages.  That's a lot of money, no two ways about it.  But Apple was asking for roughly $2 billion in damages.  That's a discount of just over 94%.  

Samsung was also awarded $158,400, having asked for $6 million.  That's a discount of over 97%.

I wonder if the reason for the huge discounts in these cases isn't at least in part that the products involved in the suit are so familiar, and that the public feels gouged by the prices of phones.  Yes, I know, most people are on contracts with their cellphone providers that provide free or discounted phones.  But most folks must realize that the reason they're stuck with these contracts is because the phones, without contracts, are so expensive.  And just maybe, folks figure that granting huge damage awards in these cases is going to drive up the costs of their phones even more.

Just wondering.  

A conservative argument for shorter copyright term

Mickey Copyright

Currently, copyright is life of the author + 70 years.  There's widespread suspicion, among those who are paying attention, that this could be extended to life + 100 when the current international copyright treaties are re-negotiated in a few years.  In this article, Derek Khanna from the conservative think tank R Street digests the current state of copyright law, and advocates for MUCH shorter term.  

Arguing about inducement

The Supreme Court heard oral arguments yesterday in Limelight v. Akamai, which is an appeal from an en banc decision of the Federal Circuit relating to induced infringement under 35 USC 271(b).  

A couple of notable things about the Federal Circuit's decision in this case:  first, it's a per curiam decision, so nobody in the majority liked it well enough to claim authorship.  And second, the decision is based in 35 USC 271(b), even though the issue briefed to the court was whether there was infringement under 35 USC 271(a).  Read Judge Newman's dissent for a cogent explanation.

This is a problem for the Supreme Court, because if they reverse the Federal Circuit on the 271(b) issue, the case is presumably going back down for rehearing on the 271(a) question, which was, after all, the actual question presented.  Of course, the Supreme Court could decide the 271(a) question, except it wasn't briefed to them.  The appellee filed a cross-petition for cert on the 271(a) issue, but that petition was denied.  So there's a reasonable (i.e., non-zero) chance that if the Supreme Court decides to overrule the Federal Circuit (a pretty safe bet, if you go by recent history), they're going to need to ask for more briefing before they issue an actual decision.

The thing about this case that really bothers me is that, at bottom, it's about whether you need a single actor to perform all of the steps of a method claim in order for there to be direct infringement of the claim.  The answer to this question, until the Federal Circuit's recent decision, has been "yes."  The way to solve this problem is for patent attorneys and agents who draft method claims to DO THEIR JOBS COMPETENTLY.  Just don't draft a claim that can't be infringed by a single entity, and you're all set. 

Right?