Saturday, 23 October 2010 20:19


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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.

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.

The Court of Appeals for the Federal Circuit has its hands full with biotechnology patent matters lately.  Particularly, the Court will analyze patentable subject matter under 35 U.S.C. §101 regarding biotechnology patents in their consideration of the following three cases: (1)Prometheus Laboratories, Inc. v . Mayo Collaborative Services, (2) Classen Immunotherapies, Inc. v. Biogen Idec, and (3) Association for Molecular Pathology v. U.S. Patent and Trademark Office et al. (also known as “Myriad”).  The first of these cases, Prometheus, concerns a method of treatment involving the steps of administering an amount of a drug to a subject and determining levels of 6-thioguinine (6-TG) and 6-methylmercaptopurine (6-MMP) in the subject.  In Classen, patent claims are directed to a method of evaluating whether an immunization schedule affects a chronic immune-mediated disorder. These cases will be decided in light of the recent U.S. Supreme Court decision of Bilski v. Kappos, No. 08-964 slip op. (U.S. June 28, 2010).   The Federal Circuit will also decide the highly publicized Myriad case on appeal, which involves patents claiming isolated DNA molecules that code for a polypeptide of BRCA1 or BRCA2, as well as various diagnostic methods relating to these sequences. 

The Federal Circuit recently decided another biotechnology case, Intervet, Inc. v. Merial Limited, on a separate issue. In that case, the court construed several claim terms (such as “porcine circovirus type II” and “ORFs 1-13”) and one full claim, which was directed to an isolated DNA molecule of a particular sequence. Although the issue of patentable subject matter was not before the Court, one judge nevertheless wrote at length in the dissent about whether the term “isolated DNA” is patentable subject matter. Ostensibly, these comments are in the wake of theMyriad case and the buzz it has created.

After a year of negotiations with fashion industry members, Senator Chuck Schumer (D-NY) has introduced the Innovative Design Protection and Piracy Prevention Act which would extend copyright protection to design of apparel, footwear, and accessories and protect such works from being copied and reproduced.  To qualify for protection under the proposed Act, the design must be "a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs" and the copy must be "substantially identical" to the original so as to be mistaken for it. The design need not be registered with the U.S. Copyright Office.  The proposed Act provides an exception for home sewers who will be permitted to copy a protected design for personal use or the use of a family member.  If passed, the Bill would provide protection to new and original designs for three years after they were first introduced to the market.

To view the proposed Bill, click here.

Robert John Burck, better known as Time Square's "Naked Cowboy", has filed a federal trademark infringement suit against another New York City entertainer known as "Naked Cowgirl".    Burck, who has registered the "Naked Cowboy" mark with the USPTO, has been serenading New York tourists while wearing only white briefs, cowboy boots, and a hat since 1997.  According to Burck, the Naked Cowgirl -- whose act also, coincidentally, entails serenading tourists while wearing only her underwear, cowboy boots, and a hat -- is causing "confusion" and may "permanent[ly] devaluat[e] . . . a real American Brand and Icon."   

The complaint, which inevitably led to multiple news stories making tongue-in-cheek references to trade "dress", legal "briefs", and "naked licensing," seeks unspecified damages and a court order blocking the Naked Cowgirl from, ostensibly, appearing in public as a semi-naked cowgirl.  The Naked Cowgirl, for her part, has cited her First Amendment rights and countered that Burck does not have "a monopoly on scantily clad guitar-playing." 

The Federal Circuit recently denied a request for rehearing en banc in the matter of Avid Identification Systems, Inc. v Crystal Import Corp.  In the underlying District Court case, it was determined that the president of Avid failed to disclose a demonstration of a "precursor product" at a trade show to the U.S. Patent and Trademark Office during prosecution of the Avid patent, and the Federal Circuit affirmed the District Court's decision that this failure was sufficient to hold the Avid patent unenforceable based on inequitable conduct.

The interesting, and somewhat disturbing, impact of this decision is the fact that the District Court jury found that Avid's trade show demonstration did not constitute invalidating prior art, i.e., Avid's demonstration was not an invalidating disclosure of the invention, nor a sale to offer to sell the patented invention.

Thus, this decision begs the question: When [and how] is non-invalidating prior art material to patentability?

For more, click here to read Judge Newman's Dissent to the En Banc Order.

You may remember the character Dan Tanna from Vega$,

but you may not know that the character's name was based on the name of a West Hollywood, California restaurant owner named Dan Tana (used with his permission), whose restaurant, "Dan Tana's," appears below:

A local author named Cynthia J. Clay recently filed a copyright infringement lawsuit alleging that the motion picture Avatar infringes her novel, entitled Zollocco: A Novel of Another Universe.  The complaint, which was filed in the Southern District of Florida federal court, alleges instances of "strikingly similar" copying of portions of the novel, and claims that the name of the novel, Zollocco, was used as a war chant by principal characters in a critical scene in the movie (allegedly "Zha-lah-coooh"). 

The Defendants in the lawsuit include James Cameron and Twentieth Century Fox.  As with any lawsuit alleging copyright infringement, the issues to be determined will include: (1) the Defendants' access to the novel; and (2) the degree of similarity between the accused work and the copyrighted work ("substantial similarity" if access can be proven, otherwise the alleged infringing work must be "strikingly similar").