Posts Tagged: "intellectual property"

When it comes to patents, timing matters. If two inventors are working on the same invention, it is the one who races to the patent office first that gets the brass ring. Perhaps the most famous example of a “patent race” is when Alexander Graham Bell and Elisha Gray both filed a patent for the telephone on the same day. Bell won the patent, started a successful company, and is now synonymous with the telephone, while few people remember Gray. For years, economists have used patent races as the quintessential example of how firms innovate in the presence of competition. But these discussions are usually only grounded in theory. To gain more insight on how this plays out in the real world, Jeffrey Kuhn and I created the first way to identify patent races—and we used it to analyze the effect of patent racing on innovation.

This week in Washington IP news, a pair of committee hearings in the House take a look at the use of artificial intelligence in contact tracing and exposure notification programs related to COVID-19, as well as the role of the federal government in financial supporting U.S. R&D programs. While the Senate is quiet this week, policy institutes continue to host online events on various topics of political importance in the tech world. Potential biases in algorithmic models used for AI programs are the focus of events at New America and the Information Technology & Innovation Foundation, while the Aspen Institute will host an event Wednesday morning on the potential for algorithms to unearth biases hidden in our society. The American Enterprise Institute will also explore federal research programs, including the need for a major U.S. project to jump-start basic and applied research.

With a growing number of users and increased demand for consumer electronics, smart-wearables, electric vehicles, Internet-of-Things (IoT) and Internet-of-Everything (IoET), the need for powering such devices and for hassle free charging has to keep pace with this rapid growth. “Wireless Charging” is the process of electrically charging battery-powered devices and equipment without the need for a wired electrical power connection. Broadly speaking, it includes three sub-types of charging: Inductive Charging, Resonance Charging, and Radio Charging.

On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.

As we emerge from a global pandemic in which many businesses are mothballed or operating at limited capacity, we know that a great number will not survive. They will have to pivot or sell, whether asset-by-asset or entirely. Some will face fire sales, assignment for the benefit of creditors, or Chapter 7 or 11 processes supervised by the bankruptcy courts, or otherwise. It has never been more important to be thoughtful as a buyer or seller of intellectual property and technology.

Much has already been written in a relatively short period of time since the Eleventh Circuit decided Compulife Software, Inc. v. Newman, __ F.3d __, 2020 WL 2549505, (11th Cir. May 20, 2020). However, such commentaries have not addressed whether this decision is legally supportable and whether other circuits should follow this decision, which would provide a legal basis for website operators under certain circumstances to pursue unwarranted scraping of their websites. This is particularly important because the Supreme Court is currently considering whether to grant certiorari in a case involving whether website scraping is legal under the Computer Fraud and Abuse Act (CFAA). Depending on the outcome of this matter, website operators may be extremely restricted to prevent scraping under that statute.

Since the Supreme Court decided Alice Corporation Pty. Ltd. v. CLS Bank International et al. on June 19, 2014, the number of patent application rejections by the U.S. Patent and Trademark Office (USPTO), the number of cases in the courts, and the uncertainty about whether an issued patent will hold up in court over an inquiry into patent subject matter eligibility under 35 U.S.C. §101 have all increased. Dropbox, Inc., Orcinus Holdings, LLC, v. Synchronoss Technologies, Inc., decided June 19, 2020, is a relevant recent (albeit nonprecedential) ruling by the United States Court of Appeals for the Federal Circuit that serves as a useful case study on what worked and went well and what didn’t for both plaintiff and defendant in a Section 101 case. At issue was the eligibility of Dropbox patents U.S. 6,178,505, U.S. 6,058,399 and U.S. 7,567,541.

The Supreme Court’s Bilski v. Kappos decision—which celebrated its 10th birthday this past weekend—still matters, even in the age of Mayo-Alice. For one thing, the case marked the end of the patent-eligibility peace. For another, Bilski stands for the well-known principle that the “machine-or-transformation” test offers a “useful and important clue” as to whether the process claimed by a patent will qualify as patent-eligible under 35 U.S.C. §101. And at the same time, it stands for the fact that the machine-or-transformation test has been far more trivia than principle, the case law not having applied or considered that Bilski “clue” much beyond the Bilski case itself.

On June 30, the U.S. Supreme Court denied certiorari to Chrimar Systems, Inc., thereby letting stand a decision of the United States Court of Appeals for the Federal Circuit and declining to consider the controversial issues of “when a judicial decision becomes binding on the parties, and whether a decree from a different branch of government can reverse an Article III court judgment.”

The U.S. Supreme Court has sided with Booking.com, ruling that a generic term paired with .com “is a generic name for a class of goods or services only if the term has that meaning to consumers.” The opinion was delivered by Justice Ginsburg and joined by eight members of the Court, with Justice Breyer dissenting and Justice Sotomayor filing a separate concurring opinion. In the Booking.com case, the U.S. Patent and Trademark Office (USPTO) was urging the High Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. But the Supreme Court ultimately found that the genericness analysis should turn on consumer perception, rather than a “per se rule” against trademark protection for a generic.com term.

The international economic disruption caused by COVID-19 presents unprecedented challenges. Thriving tech startup companies worth millions in January might find themselves struggling to stay afloat today. This article highlights the value of intellectual property (IP) that companies – particularly small companies without an IP department – can sometimes overlook in times of financial distress. The policy goals behind IP rights are at odds with the goals of bankruptcy law. Bankruptcy laws in the United States are “debtor friendly” and, in their most simplistic form, shield the party from certain debtors while forcing the sale of assets to pay other debts. But court ordered sales tend to undervalue complex property like IP. This is particularly apparent when it comes to patents.

On June 18, the U.S. Court of Appeals for the Eighth Circuit (the circuit court) affirmed the district court’s grant of summary judgment in Inline Packaging, LLC v. Graphic Packaging International, LLC, holding that the district court properly concluded that there was no genuine dispute of material fact regarding whether Graphic fraudulently obtained its patents through false claims of inventorship or through concealing prior sales.

On June 22, the U.S. Copyright Office published a request for petitions in the Federal Register, which officially kicked off the eighth triennial rulemaking process for temporary exemptions to Section 1201 of the Digital Millennium Copyright Act (DMCA). While Section 1201 generally prohibits the circumvention of technological protection measures (TPMs), which copyright owners use to prevent unauthorized access to and copying of protected works, the law instructs the Copyright Office to grant temporary exemptions every three years allowing for the circumvention of TPMs against unauthorized access in specific circumstances.

On June 25, the U. S. Court of Appeals for the Federal Circuit (CAFC) affirmed an appeal from two final written decisions of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC, wherein the CAFC held that the PTAB did not err in concluding that the claims of two patents owned by Shoes by Firebug (Firebug) were obvious in view of the prior art.

Ten years ago today, the U.S. Supreme Court handed down what at the time was one of the most important patent decisions in decades. It signaled a new era in patent law—not least of all because Bilski seemed to jumpstart the Supremes’ interest in patent cases. On this milestone anniversary, it’s worth reminding ourselves how we ended up where we are today. In the years since Bilski, the Court has decided Mayo v. Prometheus, Myriad and Alice. If the decision in State Street can be said to have marked the onset of a golden era in the patentability of software and business method patents, the decision in Bilski marked the beginning of the end, and Alice was its death knell, with its introduction of a two-step test for eligibility. Indeed, the unpredictability of application of 101 extends throughout all practice areas.