Wednesday, 03 June 2009 18:24

MORE ON BILSKI AND BUSINESS METHOD PATENTS

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As noted below, On October 30, 2009, the United States Court of Appeals for the Federal Circuit rejected a business-method patent on the basis of the machine-or-transformation test (opinion). The widely varying dissents of the en banc decision suggest much contradiction among the respective justices, from comments indicating that either the majority goes too far or not far enough in restricting the use of these patents. Meritorious arguments submitted by amicus also advocate a multitude of policy considerations. On June 1st, the Supreme Court grantedcertiorari to review the decision, perhaps in response to the extent of the important implications that this case entails.

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.

Tuesday, 02 June 2009 18:22

SUPREME COURT TO REVIEW METHOD PATENT CASE

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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.

Until recent times, countries like Brazil, Russia, India, and China have sometimes been viewed by foreign brand owners as offering insufficient trademark protection.  Increasingly, however, the economic successes of these rapidly developing economies appear to be nurturing increasingly sophisticated and responsive legal systems, and particularly with respect to trademark law.  Moreover, as these economies become increasingly consumer-oriented, their success appears to be opening new markets for foreign brands, while concurrently providing improved legal protection.
 
One article of interest that summarizes related issues for brand owners can be found at Managing Intellectual Property.  As noted, brand owners will want to become familiar with the law and culture for each jurisdiction and, in many instances, will want to plan on securing trademark (and other IP) protection before doing business in a particular jurisdiction. 
 
    In 2005, a class action lawsuit was filed by the Author’s Guild against Google Book Service which alleged that Google had violated copyright law by digitizing millions of works without the consent of the authors. In late 2008, Google turned the class action lawsuit on its head by announcing that it reached a settlement with several major publishers which would end the copyright lawsuit. The settlement agreement takes the class action paradigm to the next level by potentially creating a licensing agreement between Google and individual copyright holders of all works published before January 5, 2009. The settlement, in so doing, also gives Google exclusive rights to orphaned works, which are out of print works whose authors cannot be found. The settlement of this case has far reaching consequences because pursuant to the settlement agreement, copyright owners, irrespective of whether their works were digitized, can opt-in to the settlement agreement.  Nevertheless, the settlement agreement was fast tracked with an initial deadline for opting-in of May 5, 2008. However, given the potential breath of the settlement agreement a group of authors requested an extension. The Court granted a four month extension so the new deadline to opt in is nowSeptember 4, 2009. 
        The agreement, available at  http://books.google.com/booksrightsholders/agreement-contents.html, is well crafted to entice the individual copyright owner with the promise of exposure and royalties, and suggests that the original authors will retain their rights to sell the print versions of their works. While it may be a good idea for certain individual copyright owners longing for greater exposure or for authors of out of print materials who are currently not receiving any royalties for their works, the long term effects of the agreement strike at the core of author’s rights. This is because the monopoly over works created by copyright protection was intended to safeguard authors, and thereby, foster future works. This proposed settlement, however, could take this individual monopoly to a new level and in so doing create a licensing monopoly on copyrighted works. Its supporters maintain that the settlement will provide centralized digitized access to copyrighted works which will not compete with modern publishing. Nevertheless, Reuters, the Wall Street Journal and the New York Times recently reported that the Justice Department has begun an antitrust inquiry into the long term implications of the settlement agreement.  The Justice Department has not confirmed the same. 
Wednesday, 25 March 2009 18:03

REMOVING KINDLE FROM THE FIRE

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Anyone who has happened upon Amazon.com over the past several months has undoubtedly noticed Amazon’s painstaking efforts to market its new Kindle 2 device to readers-at-large.  The Kindle – a hardware device about the size and weight of an average book – allows users to directly download e-books (up to 1500 at a time) and read the titles on its “electronic paper” display.    Of all of the Kindle 2's new features, the most heavily promoted is its ability to “read” books aloud to the user by relying on text-to-speech software.

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.

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.

Monday, 05 January 2009 17:58

LAPPING THE PACER?

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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.   

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