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SUPREME COURT TO REVIEW METHOD PATENT CASE

by | Jun 2, 2009

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.

MORE ON BILSKI AND BUSINESS METHOD PATENTS

by | Jun 3, 2009

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.

SUCCESSFUL PATENT INFRINGEMENT SUITS MAY POINT TO GOOD EXAMPLES OF PATENT CLAIMS

by | Jun 20, 2009

In April of 2009, a federal jury in the District of Rhode Island determined that Microsoft Corp. had infringed U.S. Patent Number 5,490,216 (the ‘216 patent). Accordingly, the jury found that Microsoft owed $388 Million in damages to Uniloc USA, Inc. and Uniloc Singapore Private Limited, who held rights in the ‘216 patent.  For a general article on this case, click here.

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 KING OF POP’S PATENT

by | Jun 26, 2009

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.

 

read more…

FACEBOOK TO OFFER PROFILE URL’S: SHOULD TRADEMARK OWNERS BE CONCERNED?

by | Jun 12, 2009

 Beginning at 12:01 am on Saturday, June 13th, Facebook users will be allowed to register a custom username for their profile’s URL on a first-come first-serve basis. Currently, a Facebook user’s URL looks something like: “www.facebook.com/ profile.php?id=5703348&ref=name.” However, from this point forward, users will be able to claim personal URL’s, such as “www.facebook.com/JohnSmith.”  Businesses and public figures with Facebook pages will also be permitted to create personal URL’s, though at this point Facebook has stated that it will only allow vanity URL’s on those pages with at least 1,000 “fans.”  Facebook, who is following in the footsteps of other “personal” websites such as MySpace, Twitter, and WordPress in allowing vanity URL’s seeks to avoid the Intellectual Property issues which have resulted from the same by limiting ULR registrations. See  http://abcnews.go.com/Technology/wireStory?id=7761758 (St. Louis Cardinals manager Tony La Russa’s pending lawsuit against Twitter, claiming Cyber squatting; Right of Publicity; Trademark Infringement, and Trademark Dilution)
 
While Facebook states that the availability of URL’s will make it easier for friends, family, and co-workers to find users though search engines the benefits to users are few when compared to possible misuse of URL’s on Facebook.  Not surprisingly, many trademark owners are concerned that Facebook’s new service will create a new arena for trademark infringement and cyber squatting.  In light of the same, we recommend that any person or business without a Facebook profile before May 31 take advantage of some of the safeguards that Facebook has instituted. Specifically, since non-users are ineligible to receive a personalized URL during this initial offering, Facebook is requesting that business fill out this form, which will prevent individuals from registering your trademark as a Facebook URL. This is an important step to consider because once a URL is created, Facebook states that it cannot be changed, transferred, or sold. As always, if you any questions or concerns regarding this or other matters contact our office.
           
Adam Goldman contributed to this Blog entry.           

CAN DOWNLOADING MUSIC COST $9000 PER SONG

by | Jun 25, 2009

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.

INTERNET AFFILIATE MARKETING CASE DRAWS MEDIA ATTENTION

by | Jun 17, 2009

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.

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