Filewrapper® | A patent, trademark, and copyright law blog

If there are no sources of proof in the Eastern District of Texas, expect to be transferred

Tue, 15 Dec 2009 11:23:00-0600

After the Fifth Circuit's Volkswagen and the Federal Circuit's TS Tech decisions, potential patent plaintiffs should be getting the message: Don't file in the Eastern District of Texas unless there are actually some sources of proof there. The Federal Circuit has again granted mandamus ordering the district court to transfer another case out of the district.

In this case, there were no witnesses within the court's subpoena power. The allegedly infringing product was designed, manufactured, and tested elsewhere. The plaintiff had no offices in the district. While 75,000 pages of relevant documents were in the district, they were electronically transferred to the plaintiff's counsel there, apparently for purposes of providing an "anchor" to the district. The district court held the case was "decentralized," and transfer would only adjust which witnesses would be inconvenienced.

The Federal Circuit was having none of it, however. The court observed that the Eastern District of North Carolina had subpoena power over four (of eighteen) non-party witnesses and was also the site of all documentation regarding the development of the accused product. The court was particularly unimpressed with the presence of the 75,000 pages of documents, stating the notion that these documents were "Texas" documents was "a fiction which appears to have been created to manipulate the propriety of venue." Because of the utter lack of connection to Texas, the court ordered the district court to transfer the case to North Carolina.

More detail of In re Hoffman-La Roche Inc. after the jump.

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Are patent holding companies subject to different DJ jurisdiction standards than others?

Mon, 14 Dec 2009 14:47:00-0600

According to the Federal Circuit, the answer to this question appears to be "yes." The court reversed a district court's dismissal of a declaratory judgment action against a patent holding company (or non-practicing entity (NPE), sometimes pejoratively referred to as a patent troll). The DJ action was predicated on three letters, the first from the NPE to the DJ plaintiff, the second in reply, and the third from the NPE in reply to the second. The court held there was a sufficient "implied assertion of its rights" under the patent to support DJ jurisdiction.

Of particular note are some statements the court made regarding different rules when NPEs contact potential licensees for their patents. These include:

[T]he receipt of such correspondence from a non-competitor patent holding company . . . may invoke a different reaction than would a meet-and-discuss inquiry by a competitor, presumably with intellectual property of its own to place on the bargaining table. Under the totality of the circumstances, therefore, it was not unreasonable for [the DJ plaintiff] to interpret [the NPE's] letters as implicitly asserting its rights under the patent.
. . .
[The NPE] is solely a licensing entity, and without enforcement it receives no benefits from its patents. This adds significance to the fact that [the NPE] refused [the DJ plaintiff's] request for a mutual standstill . . . .

Even the court observed it was changing the rules, noting "our decision in this case undoubtedly marks a shift from past declaratory judgment cases." Based on this decision, it appears very difficult for a NPE to even contact a potential licensee without exposing itself to the potential for a declaratory judgment action.

More detail of Hewlett-Packard Co. v. Acceleron LLC after the jump.

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Common sense held sufficient to invalidate claims as obvious on summary judgment

Mon, 14 Dec 2009 08:23:00-0600

If anyone needed further proof that patents are more easily held obvious after KSR, look no further. The Federal Circuit held that a patent directed to a method of email marketing with improved efficiency was obvious based on the "common sense" of one in the art.

The claimed method had four steps, the fourth of which was (as described by the court) repeating the first three steps until a minimum threshold of emails were successfully received. It was undisputed that the first three steps were known in the art and that the final step was not in the prior art. The district court held the addition of the final step "would be obvious to virtually anyone."

The Federal Circuit agreed. After citing the relevant passages from KSR regarding common sense, the court observed:

[W]hile an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.

The court did reiterate that the analysis underlying the application of common sense "must be made explicit" in order to facilitate review, but held the district court had done so here. The court observed that if the relevant technology were complex, expert opinions may be required. However, in this case the level of ordinary skill in the art was a high school education and limited experience. Of course, the court also held that even if the expert witness testimony was considered, it also confirmed the conclusion of obviousness. Accordingly, the Federal Circuit affirmed the district court's grant of summary judgment.

More detail of Perfect Web Techs., Inc. v. InfoUSA, Inc. after the jump.

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USPTO to allow accelerated examination for "green" applications without examination support document

Tue, 08 Dec 2009 10:32:00-0600

In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment. The announcements came just before the start of the United Nations Framework Convention on Climate Change.

In a Federal Register notice today, the specifics of the program were provided in more detail. The applicable technologies include those that materially (1) enhance the quality of the environment, (2) contribute to discovery or development of renewable energy resources; (3) contribute to the more efficient utilization and conservation of energy resources; or (4) contribute to greenhouse gas emission reduction. The requirements for environmental quality enhancement applications are defined in MPEP § 708.02(V). The "renewable energy resources" include "hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources." Inventions that deal with more efficient utilization and conservation of energy "include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances." Greenhouse gas reducing inventions include those "that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)."

As to the technical requirements for the petition, they include:

The petition must be filed in a nonprovisional, non-reissue application that was filed on or before the date of the notice (December 8, 2009)
The application must be classified in one of the classes identified in the Federal Register notice
The application must have no more than 3 independent claims and 20 total claims, or a preliminary amendment must be filed to reduce the number of claims at or below these thresholds
The claims must be directed to a single invention and include a statement that if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements
The claimed invention must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction, and explain how this standard is met
The petition must be electronically filed on or before December 8, 2010, and at least one day before a first office action is mailed (which may be a restriction requirement)
The petition must include a request for early publication and the publication fee

As this is only a pilot program, only the first 3,000 applications will be elegible for accelerated examination on this basis. However, the USPTO anticipates extending the program if it is successful.

For USPTO the press release, click here. For the Federal Register notice with more details of the program and the requirements to participate, click here. USPTO Director Kappos also provides this entry on his official blog on the subject.

Highlights from oral arguments in Bilski v. Kappos

Wed, 11 Nov 2009 13:49:00-0600

On Monday, the Supreme Court heard oral argument in Bilski v. Kappos in an effort to determine the proper test to be applied to determine whether a claim is patentable subject matter under § 101. The oral argument transcript is available from the Court's website here.

Click below for our thoughts on the arguments and some of the more interesting quotes from the Justices' questioning.

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Fourth Circuit: Plagiarism detection service is fair use of students' copyrighted papers

Mon, 26 Oct 2009 14:27:00-0600

In a recent decision by the Court of Appeals for the Fourth Circuit, the court decided that the anti-plagiarism service provided by iParadigms at turnitin.com, did not constitute copyright infringement of high school students' papers submitted via the service. Instead, the court held the service was a fair use of the copyrighted works and therefore not infringement under § 107. However, the court reversed and remanded to a district court on the issue against a student for liability under the Computer Fraud & Abuse Act for allegedly unauthorized access to its servers based on one student's use of a password meant for students from another school obtained via the internet.

More on A.V. v. iParadigms, LLC after the jump.

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En banc Federal Circuit to address potential patent misuse issues in license practices

Tue, 20 Oct 2009 16:42:00-0600

The Federal Circuit has agreed to hear en banc an interesting issue with regard to the potential for patent misuse in licensing. The case is Princo Corp. v. ITC. At issue is the patent pool related to the technology used for CD-R and CD-RW discs. The alleged infringer, Princo, admitted infringement before the ITC, but asserted the patents unenforceable due to patent misuse. The ITC originally rejected this defense, but a divided panel of the Federal Circuit held additional factual determinations were necessary to assess the defense.

Currently-available CD-R and CD-RW discs use analog technology to assist the recording device in determining where on the disc the recording laser is located at any given time. Another potential alternative (that has not been implemented in the marketplace) is using digital technology to make this determination. According to the defendant, the digital alternative was never commercialized because of an agreement between Sony and Philips (two of the owners of patents in the relevant patent pool) not to license a Sony patent covering this digital alternative for this purpose. According to the defendant, this amounted to a type of horizontal price fixing, and was therefore patent misuse. The ITC disagreed, and held no misuse occurred.

A divided panel of the Federal Circuit disagreed, and remanded the case to the ITC for further factual development. The court stated the precompetitive benefits sometimes seen in the context of patent pools are completely absent in the context of an agreement not to license patents covering a potentially competing technology. The panel majority held this was at least potentially an antitrust violation under the rule of reason.

The en banc Federal Circuit has now agreed to address this issue, with the briefing cycle to be completed shortly after the new year. Oral argument is not yet set (update, see below), but the case has the potential to provide some clarity on when an arguably anticompetitive licensing practice crosses over into patent misuse.

Click here for the order granting rehearing en banc.

Update (10/29): The Federal Circuit has set oral argument in the case for March 3 at 2:00 PM.

Click below for a full summary of the panel decision in Princo Corp. v. Int'l Trade Comm'n.

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Attendance at single trade show to display infringing product sufficient for personal jurisdiciton

Tue, 20 Oct 2009 09:04:00-0600

In a case of first impression for the Federal Circuit, the court addressed the issue of how to apply Federal Rule 4(k)(2) (the Federal Court's long-arm statute) to a defendant. The court, in agreement with several other circuits, that a Rule 4(k)(2) analysis is appropriate when (1) the plaintiff's claim arises under federal law, (2) the defendant is not amenable to jurisdiction in any individual state, and (3) the exercise of jurisdiction comports with due process.

Applying this test to the facts of the case, the court reversed the district court's dismissal of the case for lack of personal jurisdiction. The court held the fact that representatives of the defendant showed the accused products at a trade show in California was sufficient for specific personal jurisdiction. The court held attendance at the trade show was sufficient for the defendant to purposefully avail itself of the privilege of conducting activities in the United States, and that the infringement claim arose out of these contacts, even though the defendant's representatives took steps to ensure it was clear the allegedly infringing devices were not for sale in the United States.

The court left the most interesting questions for future cases, including whether bringing the allegedly infringing devices to the trade show constitutes an infringing act of importation under § 271, whether the plaintiff or the defendant has the burden to show the defendant is not subject to the jurisdiction of any state under the second step of the Rule 4(k)(2) analysis (and what sufficies as such a showing), and whether a district court must undertake a Rule 4(k)(1) analysis before a 4(k)(2) analysis.

More detail of Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. de Equip. Medico after the jump.

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Dependent claim can't be obvious when indepdendent claim is not; verdict vacated as inconsistent

Mon, 19 Oct 2009 17:10:00-0600

In a recent decision, the Federal Circuit affirmed-in-part a district court's decision regarding obviousness, holding the defendant was not entitled to summary judgment that the asserted claims were invalid for obviousness. The court vacated the district court's entry of judgment of an inconsistent jury verdict of obviousness: the jury held a dependent claim obvious but the independent claim from which it depends not obvious. The court stated that such a result reflects an "irreconcilable inconsistency" and thus a new trial on obviousness must be granted.

The court also addressed the question of incorporation by reference. The defendant argued the claims were anticipated based on a prior art patent that made reference to another patent for one of the relevant limitations. The district court held the incorporation by reference was ineffective and excluded expert testimony regarding the "combined" prior art. The Federal Circuit reversed, holding the incorporation by reference was sufficiently specific to be successful, and remanded the issue of anticipation to the district court for redetermination.

More on Callaway Golf Co. v. Acushnet Co. after the jump.

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Claim and continuation rules dead: thousands of practitioners breathe easier

Wed, 14 Oct 2009 13:31:00-0600

In a Federal Register notice today, the USPTO has officially withdrawn the claim and continuation rule changes from the Code of Federal Regulations. This is consistent with a press release from Thursday announcing the rules were no longer going to be pursued. The summary of the notice:

The United States Patent and Trademark Office (Office) published a final rule in the Federal Register in August of 2007 to revise the rules of practice for patent cases pertaining to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications (Claims and Continuations Final Rule). The Office is revising the rules of practice in this final rule to remove the changes in the Claims and Continuations Final Rule from the Code of Federal Regulations.

The USPTO and GlaxoSmithKline (one of the plaintiffs who sought injunctive relief against implementation of the rules) have joined in a motion to dismiss the appeal and vacate the district court decision. Tafas, the other plaintiff, has not joined the motion regarding the vacatur of the district court decision, wanting it to stay on the books as a limit on future rulemaking attempts by the USPTO.

To read the press release, click here.

To read the full Federal Register notice with background history on the rules and the underlying litigation, click here.

Manuscript filed with copyright office not necessarily publicly available as of filing date

Fri, 25 Sep 2009 10:35:00-0600

In a decision Tuesday, the Federal Circuit held the USPTO had not provided sufficient evidence that an inventor's manuscript was publicly accessible, and therefore available as prior art under § 102(b), before the critical date of the application. As a result, the court reversed the Board of Patent Appeals and Interferences.

At issue was the inventor's own manuscript. It was undisputed that the manuscript disclosed the invention and was filed with the U.S. Copyright Office more than a year before the filing date of the application. The Board held this, combined with the ability to search the Copyright Office records by title, provided sufficient evidence of public accessibility to qualify the manuscript as prior art under § 102(b).

The Federal Circuit reversed. After surveying the applicable case law, the court held the copyright office automated catalog was insufficient to render the manuscript publicly accessible because it only permitted searching by the author's last name or the first word of the title of the work. Further, while the copyright office records were spearately indexed by two commercial search providers that permitted keyword searching, there was no evidence in the record of when these commercial search providers would have included the relevant records. As a result, the court vacated the Board's decision and remanded, noting that the rejection may be reinstated if there was sufficient proof of when the commercial databases indexed the manuscript.

More detail of In re Lister after the jump.

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Today's eCommerce lesson: There's no upside to using others' trademarks in your website meta tags

Tue, 22 Sep 2009 16:02:00-0600

Those who have a passing familiarity with website design are probably familiar with the concept of meta tags. Meta tags are pieces of data included in the HTML code of a webpage that provide information regarding the content of the page. You can view the code of a webpage you are visiting by clicking the "view" menu and, in IE, selecting "source," or in Firefox, selecting "page source."

Keyword meta tags have been used frequently in the practice of SEO, or search engine optimization. This essentially is an industry designed to get a webpage to show up higher in search results for various key terms and phrases in order to make it easier for the website to be found by customers. SEO practices frequently included loading the meta tags of a site with numerous keywords and phrases in an effort to improve a site's search performance for those terms.

Click below for a discussion of what happens when trademarks are used in connection with this practice, and why website owners would be best served avoiding such use.

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Seventh Circuit: Notice requirement to Copyright Office when registration refused not jurisdictional

Tue, 22 Sep 2009 13:25:00-0600

In a recent decision, the Seventh Circuit affirmed a district court's grant of summary judgment that a plaintiff could not prevail in her copyright claim. The court first addressed whether the plaintiff complied with the necessary procedural requirements to have her claim heard. The plaintiff had filed for a copyright registration and had been rejected (thereby satisfying part of the requirements of § 411). However, when filing suit, she did not notify the Copyright Office she was doing so, and thus did not meet this second requirement applicable to those who bring suit after being refused registration.

This fact notwithstanding, the Seventh Circuit concluded it could hear the case, given the plaintiff had her registration refused. The court characterized the notification requirement as a case processing rule, and observed the copyright office had granted a registration in the interim, and thus the purpose of the notification requirement (to permit the Copyright Office to address the issue of registrability) was satisfied.

On the merits, the court noted the plaintiff's claim failed because she did not allege copying of any of the actual materials protected by copyright, but rather her ideas for better educating students. The court affirmed the long standing rule that copyright protection does not extend to ideas, but rather the original expression of an idea.

More detail of Brooks-Ngwenya v. Indianapolis Pub. Sch. after the jump.

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Programming note

Tue, 22 Sep 2009 10:37:00-0600

As many have surely noticed, while we have covered the major issues that have arisen, the pace of posts here at Filewrapper has slowed down of late. This is a reflection of the recent demands of the actual practice of law. The good news is the blogging pace should pick up soon, and look for the rate of posts to be back at its normal level in the coming weeks.

USPTO issues new section 101 guidelines for use until Supreme Court decides Bilski v. Doll

Fri, 28 Aug 2009 08:40:00-0600

This week the USPTO has issued new guidelines to patent examiners on how to handle § 101 patentable subject matter issues in light of the Federal Circuit's ruling in In re Bilski.

The guidelines are distilled into two flow charts and an instructional memo to examiners on how to conduct the analysis. Click below to review the materials in more detail.

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