Wednesday, 08 July 2009 18:30

WILL BILKSI AFFECT YOUR BIOTECH PATENT?

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The recent Federal Circuit decision in In re Bilski last October has begun to cause some concern in the biotech sector. As we have reported in previous blog entries, Bilski created a new test for method claims in patents, requiring a claimed process to be tied to a machine or apparatus, or to transform an article into a different state or thing (see blogs “In re Bilski: What Constitutes a Statutory ‘Process’ Under §101?” posted 11/5/08, “Supreme Court To Review Method Patent Case” posted 6/2/09, and “More on Bilski and Business Method Patents” posted 6/3/09). Even though the technology in Bilski was not scientific in nature, some are concerned that the precedent set by this case could have ramifications for the biotech sector since many issued biotech patents and pending biotech patent applications, such as, but not limited to, certain processes for genetic testing, do not rely on a machine or transformation.   As we await the U.S. Supreme Court hearing in October, we hope that the potential application of Bilski to the biotech sector will be addressed by the Bench.

Patenting living organisms has been permitted since the Supreme Court’s decision in Diamond v. Chakrabarty in 1980. Whether this precedent will apply to gene patents remains to be seen. To date, the most controversial dispute in this arena involves gene patents related to breast and ovarian cancer.
 
In May, the ACLU and others filed suit against Myriad Genetics, Inc., The University of Utah Research Foundation, and the United States Patent & Trademark Office challenging the validity of various patents for the two human genes BRCA1 and BRCA2. The complaint lists patients and researchers who have been restricted or prevented access to these genes for disease diagnosis, research, or other clinical applications. The lawsuit, Association for Molecular Pathology, et al. v. United States Patent and Trademark Office, et al., filed in the United States District Court for the Southern District of New York, alleges certain claims of eight patents exclusively licensed to Myriad Genetics are (1) invalid under Article I, Section 8 of the U.S. Constitution and 35 U.S.C. § 101 for patenting “products of nature, laws of nature and/or natural phenomena,” and (2) unconstitutional under the First and Fourteenth Amendments of the U.S. Constitution for being “patents on abstract ideas or basic human knowledge and/or thought.”  Given the many issues raised by this case and the effect it could have on gene patenting, we will be following this case closely. (Click here to follow the progress of the case).

Pursuant to Florida SB 872 the sate ficticious name statute 865.09, F.S, is being amended to require that a business publish its intent to use said ficticious name.  While some have noted some exceptions to this requirement, such as a valid Florida Trademark Registration, here, certaily the publication requirement offers a new way to police existing Sate and Federal Trademark rights. 

Friday, 26 June 2009 18:28

THE KING OF POP'S PATENT

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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.

 

Thursday, 25 June 2009 18:28

CAN DOWNLOADING MUSIC COST $9000 PER SONG

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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.

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. 

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.

 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.