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").  

Friday, 28 June 2013 20:01


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As noted previously, the U.S. Supreme Court issued its long-awaited opinion in Bilski v. Kappos today.  Although the Bilksi patent in dispute was drawn to particular business method claims for hedging risk and the application of that concept to energy markets, many in the field of intellectual property have been curious of the possible effects a decision in Bilski could have for other business methods, such as software and medical diagnostic methods.

For now, the intellectual property community will have to continue to wait.  In Bilski, the U.S. Supreme Court limited their decision to the patentability of the particular methods of the patent at issue, and declined to address the patentability of business method claims in general, much less other specific kinds of business methods.  Accordingly, other business methods, such as software and medical diagnostics methods, have not been ruled on, nor have they been ruled out.

Tuesday, 08 June 2010 20:01


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David Kappos, Director of the U.S. Patent and Trademark Office (USPTO), has recently announced the Office is considering a new initiative for the examination of patent applications filed in the USPTO. Referred to as the “Three Track” scheme, the applicant has the option of choosing how quickly or slowly they want their patent application examined. The three options are as follows:

Track I:  accelerated examination (proposed 4 months to first Office Action; 12 months to final disposition)

Track II:  traditional examination as currently applied (default track if one of the other tracks is not designated at filing)

Track III:  delayed examination for up to 30 months (for non-continuing applications first filed in the USPTO)