Swiss-style? Cheese, OK. Patent claims, not so much.

Not in Switzerland, but very cheesy.

This came up in a case I'm working on today, and I had to remind myself, so I figured I would share.  DISCLAIMER: I'm not a European patent attorney.  If any European patent attorneys read this, and want to correct anything I might have got wrong here, I'd be pleased to hear from them.
  
In the U.S., if you come up with a new treatment that uses an old drug, you can get a patent on a "method of treatment" that's limited to treating the particular disease in question.

European patent law prohibits "method of treatment" claims, because they're considered to incorporate the human body.  So for many years, European practitioners got around this by using something called "Swiss-style" claims.

Swiss-style claims have the form "Use of [product X] in the manufacture of a medicament for treatment of [disease Y]."  

They're apparently called "Swiss-style" because they were first permitted by the Swiss Patent Office, and not because of their cheesy goodness.

However, since 2010, Swiss-style claims have been barred by the EPO (although this rule applied only to new cases filed after the relevant decision of the Enlarged Board of Appeal), which did not claim priority to an earlier-filed case.

Since then, the preferred alternative to the Swiss-style claim has been the "second medical use" claim, which has the format: "[Product X] for use in the treatment of [disease Y]."    It's a "second" medical use claim because Product X is already known for use in treating disease X.  So by that token, if you discover the first therapeutic use of a known compound, and write the claim "Product X for use in the treatment of disease X," that would be a first medical use claim.  Which is also OK in Europe, provided the facts support the claim.

It's just a box of patents, I don't know who put it there...

Reuters is reporting that Germany is considering closing the "patent box" tax loophole (story: here).

This raises the obvious question: what?

Turns out, some countries (notably the UK and the Netherlands) offer corporate tax breaks to companies that commercialize (or, in the case of the UK, "commercialise") patented technology.  Profits on products that incorporate patented technology are subject to a corporate tax rate of 10%, rather than the current 23% (source: here).  Apparently some German companies are taking advantage of these tax breaks to move their operations out of Germany and into a "patent box" jurisdiction.

It's called the "patent" box because it doesn't apply to products covered by trademark or copyright.

I have no idea why it's called a "box."

Happy Together? Not Anymore.

According to this story in Billboard, a California judge has granted summary judgment that Sirius/XM has violated the Turtles' copyrights by broadcasting their songs without permission.

Here's the interesting part:  Sirius/XM has been broadcasting Turtles' songs for seven years without paying, and the Turtles knew about it, but didn't sue or even ask for royalties.  

At this point, I'm thinking "laches."  Laches is an equitable doctrine that bars suit where a plaintiff has "slept on his rights."  Typically, at least in patent cases, laches kicks in after six years.  So if I know that somebody's infringing my patent for six years, and I don't do anything about it, not even a nasty letter, then I'm SOL.

However, the Turtles' case wasn't brought under Federal law, because Federal copyright law doesn't apply to sound recordings made before 1972.  (Copyright law is weird).  So the case was brought under California state law.  And since they're seeking statutory damages for the infringement, the case is being brought in law, not in equity.  The result?  Laches doesn't apply.  Here's the relevant passage from the decision.

Sirius XM reasons that Flo & Eddie [the owners of the Turtles catalog] and Sirius XM have been "happy together" for years without any licensing or royalty arrangements, and Flo & Eddie cannot disrupt this practice that Sirius XM has built its "oldies" business around after Flo & Eddie had allowed it for so long.  ...It is undisputed that Flo & Eddie has been aware of Sirius XM's public performance of its sound recordings for over seven years and has never demanded payment or sued Sirius XM regarding the performances prior to this lawsuit. ...However, "the laches defense is unavailable in an action at law for damages 'even [if] combined with the cumulative remedy of declaratory relief.'"  ...This case is, in part, an action at law for damages...; therefore, before reaching the issue of prejudice, the laches defense fails because it is unavailable to Sirius XM in this action.

Slip op. at 15; cites omitted. 

Did not see that coming.

This is the kind of thing that makes people angry, but they shouldn't be.

According to this story in the Hollywood Reporter, the organizers of the "Rocky 50K Fat Ass Run" have knuckled under to a threat of trademark suit from MGM and will rename their event, a race which is to roughly track Sylvester Stallone's route from "Rocky."  This article from the Philadelphia Enquirer details a reporter's efforts to figure out the "actual" route that Rocky ran in the movie, which involved a fair amount of creative filling in between scenes.  My favorite line from the article: "Nothing is more South Philly than a flaming barrel."

Now, here's the thing.  The average person reading the article about MGM squelching this cool event is going to react negatively.  Because MGM comes across like a bunch of assholes pissing on what sounds like a harmless, fun event.  But it seems pretty clear to me that the organizers screwed up by not asking permission in the first place. I bet if they had gone to MGM, and linked the run up to some worthy charity, they could have gotten a freaking sponsorship from MGM.  They might have had to drop the "fat ass" from the name of the race, which would be a loss, I grant.  But still.

Wash. Post: Rep. Wolf Asks Justice Dept. to Open Investigation into USPTO Timekeeping

According to this story in Wednesday's Washington Post, Rep. Frank Wolf (R, VA) is asking the Justice Department to open an investigation into allegations that patent examiners at the USPTO are "cheating" taxpayers by claiming to have worked hours that they did not actually work.

Frank Wolf (R, VA)

Although he represents a substantial chunk of Northern Virginia, Rep. Wolf's district does not include the USPTO, or the neighborhoods in Alexandria where most of the examiners that are based in the "home office" live.

According to the Post, 

In recent years, the patent office has addressed the vast majority of time and attendance fraud by requiring cheaters to go into counseling and occasionally suspending them, according to officials at the agency with knowledge of its employee-relations practices.

Really - "the vast majority?"  "Vast?"  How often has this happened in "recent years?"  This language certainly seems to suggest that "time and attendance fraud" is rampant at the USPTO.  And that the USPTO knows about it, as they apparently have a counseling program set up to deal with offenders.  And if, as the article suggests, this sort of thing happens all the time, shouldn't Rep. Wolf be discussing this with the USPTO, rather than the US Attorney's Office?

Thanks, Washington Post, for clearing all that up.  Sheesh.  

Creative Use of Trademark

According to a story at BET.com (link), Aussie rapper Iggy Azalea (pictured below) is trying to block release of a video that purportedly features her engaged in "relations" with rapper Jefe Wine.

Iggy

Her attorneys are apparently arguing that because "Iggy Azalea" is a registered trademark in the US, release of the video without her permission is a trademark violation.

Sure enough, she has a US registration for the "Iggy Azalea" mark (link to record in TESS).

Here's the part I don't get:  how does she get her application allowed?  Because Iggy Pop.

Original Iggy

Iggy Pop (hereinafter "Original Iggy") also has registered trademarks in the U.S. protecting his moniker (link to records in TESS).  And Original Iggy's marks are considerably senior.  As you would expect.

Likelihood of confusion?  Certainly not based on appearance. But the marks are word marks, not based on how the Iggys (Iggies?) look.  

Remember, trademarks are supposed to protect consumers.  God help you if you go to download a song from one Iggy and get a song from the other.  Because I'm guessing the respective fanbases overlap not at all.  But don't take my word for it.  Check it out below, and decide for yourself.

I think I see the problem here

An article in today's Washington Post (full article here) contains a link to the original "whistleblower" reports of examiners slacking off at the USPTO.  

One of the whistleblowers, a disgruntled SPE, is quoted as saying,

“As a government employee, I can no longer sit by and watch this problem get any worse,” the supervisor’s complaint continued. “We have lost sight that we are a government agency who works for the taxpayers. We are not accountable to the taxpayers.”

 To which I respond:  EXACTLY.

The USPTO isn't accountable to the taxpayers.  Because the taxpayers don't support the USPTO.  The USPTO runs on fees paid by patent applicants.

Let me repeat that, just so there's no misunderstanding.

TAXPAYERS DON'T SUPPORT THE USPTO.  THE EXAMINER'S SALARIES ARE PAID BY PATENT APPLICANTS.

Maybe, just maybe, if examiners had an understanding of who's really paying their salaries, patent examination would improve.

Next week, I'll address the question of whether it makes any sense to have examiners track their time, when they're on a production quota.  

Federal Circuit: What Does "Unobtrusive" Mean? We Can't Tell.

Yesterday, in its decision in Interval Licensing LLC v AOL, Inc. et al. (full text here) the Federal Circuit upheld a ruling by the US District Court for the Western District of Washington holding Interval's claims invalid as indefinite.

Here's a claim that the Court described as "representative:"

A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of

providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device; 

providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and

auditing the display of sets of content data by the content display system;

wherein the one or more sets of content data are selected from a plurality of sets of content data, each set being provided by an associated content provider, wherein each associated content provider is located in a different physical location than at least one other content provider and each content provider provides its content data to the content display system independently of each other content provider and without the content data being aggregated at a common physical location remote from the content display system prior to being provided to the content display system, and wherein for each set the respective content provider may provide scheduling instructions tailored to the set of content data to control at least one of the duration, sequencing, and timing of the display of said image or images generated from the set of content data.

Yikes.

The Court focused on the highlighted limitation above, and particularly on the "unobtrusive" language.  Money quote:

We recognize that a patent which defines a claim phrase through examples may satisfy the definiteness requirement.  In this case, however, we decline to cull out a single "e.g." phrase from a lengthy written description to serve as the exclusive definition of a facially subjective claim term.

slip op. at 17-18; cites omitted.

Now, normally I would say that the USPTO must have had some understanding of what the term meant to allow the claim.  But in this instance, as the Court points out, at least three different interpretations of "unobtrusive" were adopted at different times by the patent Examiner, the applicants, and the Board.

 

What Does the USPTO Know About Patent Litigation?

It's been widely understood for many among practitioners that the USPTO doesn't care about your patent litigation problems.  Once the patent is out the door, they don't have anything to do with it, unless it shows back up on a reissue, reexam, or inter partes review, where it will be treated like an unemployed child who has moved out of her parents' house but keeps dropping off her laundry.  Yeah, they'll take it back, because they feel like they have to, but they won't enjoy it.

But now, the USPTO is offering free advice on patent litigation issues on their website, that they're calling the "Online Toolkit."  

Been Sued or Gotten a Demand Letter?
Answers To Common Questions About Abusive Patent Litigation

Received a letter about or been sued over a patent? You’re in the right place. See below for answers to common questions:

See the topics below for answers to common questions:

In June 2013, President Obama ordered the creation of this website to empower those who have received a demand letter or may be threatened with a patent lawsuit with information about their options. In response, the USPTO has created this site.

The information presented on this site does not constitute legal advice. It should not be considered to replace advice from an attorney. Reference to any specific organizations, attorneys, law firms, corporations, or websites does not constitute endorsement, recommendation, or favoring by the USPTO.

We welcome your comments and suggestions in the box below.

For more information about abusive demand letters see the following links, White House Fact Sheet and National Economic Council and the Council of Economic Advisers report “PATENT ASSERTION AND U.S. INNOVATION”

Comes off a bit too "Lionel Hutz" for my taste.  

Next week, the USPTO is offering a FREE webinar about the Online Toolkit that "will showcase topics such as:

• what are my options for responding to the suit?
• How can I tell whether or not I'm infringing?
• How do I find a lawyer?
• How can I challenge a patent or patent application?

Here's the info, in case you're interested.  If I tune in, I will report back with my findings.

WEBINAR ACCESS INFORMATION:

Video: https://uspto-events2.webex.com/uspto-events2/onstage/g.php?t=a&d=641836089

Dial In: 1-571-270-7000

Event number/meeting ID: 641 836 089

Event password: 12345

Federal Circuit Applys Alice Analysis, Holds Claim Invalid Under 101

Last week, in its decision in Buysafe v Google (decision here) the Federal Circuit applied the Alice Corp. analysis prescribed by the US Supreme Court to hold patent claims invalid under 35 USC 101.

Here's the main claim:

1. A method, comprising:

receiving, by at least one computer application program running on a computer of a safe transaction service provider, a request from a first party for obtaining a transaction performance guaranty service with respect to an online commercial transaction following closing of the online commercial transaction;

processing, by at least one computer application program running on the safe transaction service provider computer, the request by underwriting the first party in order to provide the transaction performance guaranty service to the first part,

wherein the computer of the safe transaction service provider offers,  via a computer network, the transaction performance guaranty service that binds a transaction performance guaranty to the online commercial transaction involving the first party to guarantee the performance of the first party following closing of the online commercial transaction.

So, yeah.  

Patent Troll Case Going Forward in Vermont State Court

Via the Brattleboro Reformer (story here), patent aggregation entity MPHJ Technology Investments has lost what appears to be its final procedural effort to get out of Vermont state court.  

MPHJ is the defendant in a suit brought by the Vermont Attorney General in response to MPHJ's demand letters sent to "numerous" Vermont businesses.  MPHJ is trying to license its patent, described as covering "the process of emailing scanned documents."  

Apparently, the Vermont judge was not impressed by MPHJ's complaint that it would be burdensome to defend the case in Vermont, in view of their own demand letters, which threatened litigation in Vermont.

So, yeah.  That's pretty much a loser right there.

Eastern District of Texas Not So Patent-Friendly

An article in today's Houston Chronicle (link here) suggests that, while patent lawsuits are being filed in the ED Texas in ever-increasing numbers, that trend may be changing soon.

Money quote:

... a new nationwide study of 36,000 completed patent cases filed between 2000 and 2013 found that plaintiffs in East Texas lose just as often as they win, according to Lex Machina, a Menlo Park, Calif.-based supplier of legal data. 

The Lex Machina study found that plaintiffs won their cases through summary judgment, a bench trial or a jury verdict 2.43 percent of the time, while defendants won 2.45 percent. The remaining 95 percent were either settled or dismissed. The median compensatory damage award by East Texas judges and juries in patent cases was $8.25 million, compared to $6.9 million for patent in Delaware, which is considered a pro-business judicial district. 

"Juries in the Eastern District were said to be awarding higher damages than juries in other jurisdictions, something that will obviously attract new plaintiffs," says Adam Sanderson, a Dallas-based partner at Reese Gordon Marketos in Dallas. "Although there are some recent indications that things may be evening out somewhat, reputations often endure even after the facts on the ground have changed."

Trademark or Trade Dress?

Hershey has provided us with an easy example that you can use if you want to explain the difference between trademark and trade dress (original story in Confectionery News here).

Hershey is suing LBB Imports in US District Court in Pennsylvania for trademark and trade dress infringement.  

The trademark claims include a charge that LBB is importing KitKat bars into the U.S..  Hershey uses the KitKat mark in the U.S. under license from Nestle, who produces KitKats in Europe.  LBB is accused of importing European KitKats into the U.S.; in the picture below, the Hershey KitKat is on the left.

Hershey is also accusing LBB of infringing its trade dress for Reese's Peanut Butter Cups with RBB's Toffee Crisp candy bars.

You can see the elements of trade dress here:  the yellow lettering with the brown outline on the orange wrapper.  

OK, now I'm hungry again.

I have your sanity

I have to admit, I was somewhat skeptical when I found out that the Electronic Frontier Foundation (website) is featuring a Stupid Patent of the Month.

Then I saw this month's Stupid Patent, and I have to admit to being amazed.  And impressed.  And a little depressed.  Admittedly this case was prosecuted pro se.  But still.  

The patent in question is 8,609,158, which issued on December 17 of last year, from an application that was filed in June of 2012.  It's got one claim:

1. A method of treating a human suffering from cancer, pain, and Bipolar disorder consisting essentially of administering to said human therapeutically effective amounts of evening primrose oil, rice, sesame seeds, green beans, coffee, meat, cheese, milk, green tea extract, evening primrose seeds, and wine.

Seriously.  Here's a little excerpt from the Detailed Description section of the spec, for your reading enjoyment.

Go straight to Exhibit G (my favorite best method cooked versions) and make it immediately. Take it in cups or ¾^th cups large doses with hot milk (and oil as directed) in the morning and afternoon for days then taper it off until you get to a lower dose. Drink 2 cups of coffee. In the late morning I drink ½ cup of coffee and ½ cup of milk or green tea. Make this a daily medicine. You must acclimate this food/medicine in your body and keep it in you daily. It is an easy, in your kitchen food, that will help you in 1-10 days and it will help eliminate any hospital trip. After 2-4 weeks, slowly reduce the quantity gradually and lower the medication to a tablespoon per day as directed, you will see the medication effect. You must eat cups at first for many, many days. You must have your body acclimated on this drug. I have you my friend. I have your sanity. If you want, add one glass of red wine or 4 little fruit figs or fruits or dates, a little meat and watch this medicine be better. For a good recipe, drink ½ cup of evaporated milk before bedtime. (For regular medicinal benefits: Do not eat a lot of green plants/seeds on this medicine. Stay away from excess greens if you are not balanced in your foods.) It pushes out your medicine and causes a detoxification. I eat green plants, but I hate my medicine balance right after that or many hours later. It takes a day to rebalance. It is not worth the psychosis or little pains that pop through. (It should be noted that I eat sushi and seaweed is on the rice and I eat soy beans. This is balanced by the rice and green tea and the meat or fish.)