On July 31, 2013, the U.S. Department of Commerce released a green paper entitled "Copyright Policy, Creativity, and Innovation in the Digital Economy." The green paper discusses the goals of maintaining an appropriate balance between rights and exceptions under U.S. copyright law, particularly in the context of the Internet and in view of the substantial economic impact of copyright-intensive industries.  The report was issued by the Department of Commerce’s Internet Policy Task Force (IPTF) with  input from the U.S. Patent and Trademark Office and the National  Telecommunications and Information Administration.

As written earlier in our blog, the CLS Bank decision left many guessing as to what might be considered patent eligible subject matter under § 101 of the U.S. patent laws.  In a more recent and less known opinion, Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013), a three judge panel attempted to provide some additional guidance in light of the CLS Bank indecision.  Of note is that the panel included the authors of the two main opposing opinions in CLS Bank, Chief Judge Rader and Judge Lourie.  However, rather than authoring different holdings, the panel agreed that the claims at issue in this case met the requirements of § 101.

Monday, 05 August 2013 17:08

White House Overturns USTIC Ban on Apple Products

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The White House has officially overturned a pending ban by the U.S. International Trade Commission (USITC) that would have prohibited sales and imports of the AT&T versions of the iPhones and iPads under U.S. Patent No. 7,706,348. The move, which was thought to have little chance of success, represents the first veto of a USITC decision since 1987. The decision to veto the exclusion of Apple products "in the public interest" was made pursuant to Presidential authority under the Tariff Act of 1930, 19 U.S.C. 1337(j), which has been exercised only on five prior occasions.

As noted earlier on the Malloy & Malloy IP Blog, a national discussion has emerged on what many perceive as increasingly widespread and over-aggressive tactics by “patent trolls.” Patent trolls, which are less pejoratively known as patent assertion entities (PAEs) or non-practicing entities (NPEs), are persons or companies who legitimately obtain patent rights and then enforce the patents against alleged infringers, without actually making or using the patented inventions themselves (which is perfectly legal).

As noted earlier on the Malloy & Malloy IP Blog, even the White House has recently joined the national discussion on what many perceive as increasingly widespread and over-aggressive tactics by “patent trolls.” Patent trolls, which are less pejoratively known as patent assertion entities (PAEs) or non-practicing entities (NPEs), are persons or companies who legitimately obtain patent rights and then enforce the patents against alleged infringers, without actually making or using the patented inventions themselves (which is perfectly legal). There has traditionally not been a great degree of public concern about such practices other than by those on the receiving end of patent enforcements, although public sentiment has been building over the past several years in reaction to a substantial increase in more aggressive activities of this kind. 

Wednesday, 03 July 2013 15:31

ISOLATED DNA SEQUENCES ARE NOT PATENTABLE

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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.

Monday, 10 June 2013 18:54

THE WHITE HOUSE GOES TROLL HUNTING

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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? 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.

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