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Almost three months after deciding to grant summary judgment in favor of Google in Rosetta Stone Ltd. v. Google, the Eastern District of Virginia finally released its opinion articulating the reasons behind the decision.   Specifically, the Court held that Google could not be held liable for trademark infringement or dilution based on its sale of keywords utilizing Rosetta Stone’s trademarks.   The decision was a coup for Google which was absolved of liability on every count brought by Rosetta Stone.
In perhaps the most significant portion of the decision, the Court held that Google’s use of a trademark within a keyword was “functional” and, therefore, did not amount to infringing use.  In coming to this conclusion, the Court noted that keywords “have an essential indexing function because they enable Google to readily identify in its database relevant information in response to a web user’s query.”   This seemingly brings the Court in conflict with other decisions – most notably the Ninth Circuit’s opinion in Playboy v. Netscape  – which have rejected the defense of trademark functionality in similar contexts.   Accordingly, it will be interesting to see how, or if, the Court’s interpretation of the doctrine is employed in future decisions examining the unauthorized use of trademarks in conducting internet commerce.

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In view of the recent Supreme Court decision in Bilski v. Kappos, the U.S. Patent and Trademark Office has issued interim guidance for its personnel to use in determining subject matter eligibility for process claims under 35 U.S.C. 101.

Among other things, the interim guidelines provide a “quick reference sheet” which outlines several factors weighing toward eligibility under Section 101 and several factors which weigh against patent eligibility.  While these guidelines do not have the force and effect of law, they may be worth considering in the drafting of some method claims.

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The proliferation of false patent marking claims asserted under 35 U.S.C. Section 292 continues.  Common examples of accused conduct include the placing of incorrect patent numbers or expired patent numbers on everyday products, such as plastic cup lids, disposable razors, etc. In such actions, the plaintiff essentially sues the defendant on behalf of the federal government, petitioning for a fine of up to $500 per falsely-marked article. As a ‘reward,’ the plaintiff is generally entitled to receive half of the penalty. This type of legal action, generally referred to as a qui tam claim, is a relatively uncommon relic of past jurisprudence. However, the number of actions for false patent marking cases has continued to rise since the well-known 2009 Solo Cup case (which involved expired patents marked on plastic cup lids). Indeed, some patent blogs are now tracking this trend in qui tam false patent marking cases.

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