Posts Tagged: "intellectual property"

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Inc., Orcinus Holdings, LLC, v. Synchronoss Technologies, Inc., decided June 19, 2020, is a relevant recent (albeit nonprecedential) ruling by the United States Court of Appeals for the Federal Circuit that serves as a useful case study on what worked and went well and what didn’t for both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.

On March 25, 2020, the Indian government declared lockdown throughout the country, and we could not have anticipated the number of issues across all sectors that would surface in such a short time. Copyright infringement through social media turned out to be one such issue. At a time when so many industries are facing losses both in terms of work and revenue, the newspaper industry in India has not been spared. The newspaper companies have lost a large number of subscribers to their physical newspapers due to fear of the spread of COVID-19. Recently, a national Indian daily newspaper published a news article stating that sharing PDF copies of an e-newspaper on messaging apps is illegal and that group admins and individuals can be held liable for unauthorized circulation.

This week in Other Barks & Bites: the House of Representatives approves a bill by voice vote which would enable the sale of acceleration certificates for patent applications in the Patents for Humanity Program; the Supreme Court denies cert to a trio of petitions challenging the Patent Trial and Appeal Board as unconstitutional under the Fifth Amendment’s Takings Clause; the Copyright Office begins accepting petitions for temporary exemptions to Section 1201 of the DMCA; the CAFC issues three new precedential decisions; the Ninth Circuit reverses the dismissal of copyright claims over The Shape of Water and also reverses a lower court for an erroneous jury instruction modeled after the Ninth Circuit’s own model instructions on functionality in trademark law; Gilead’s remdesivir is endorsed as the first antiviral treatment for use against COVID-19 in Europe; and the USPTO requests comments from past participants in its GIPA Training Programs.

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday affirmed a Patent Trial and Appeal Board (PTAB) decision that certain claims of Nike, Inc.’s U.S. Patent Nos. 7,814,598 and 8,266,749 are not unpatentable as obvious. The Court also disagreed with Nike’s argument that Adidas did not have standing to appeal because it could not prove that it had an “injury in fact.” The opinion was authored by Judge Moore.  

I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification system plays an important role in determining which Art Unit is assigned an application? And you probably thought you could forget about class 705! Not so fast! A sparsely populated technical disclosure in the specification with an inartful claim set is still a recipe for characterization in class 705, which still must be avoided at all costs if possible.

On June 23, the Eagle Forum Education & Legal Defense Fund celebrated 40 years of the Bayh-Dole act with a virtual briefing, titled: “The Bayh-Dole Act at 40 Years: How the ‘Most Inspired Piece of Legislation’ of a Half-Century Has Turned American Basic Research Discoveries into Products, Startups and Economic Growth.”  The event was moderated by Jim Edwards, the Eagle Forum Education & Legal Defense Fund Patent Policy Advisor and featured remarks by Courtney Silverthorn, the Acting Director, National Institute of Standards and Technology O?ce of Technology; Joseph Allen, IPWatchdog contributor and the Executive Director of Bayh-Dole 40th Coalition and Former Senate Judiciary Aide to Sen. Birch Bayh; Hans Sauer, the Deputy General Counsel and Vice President for Intellectual Property for the Biotechnology Innovation Organization; Jennifer Gottwald, the Senior Licensing Manager at the Wisconsin Alumni Research Foundation (WARF);  and David Korn, the Vice President of Intellectual Property (IP) and Law for the Pharmaceutical Research and Manufacturers of America (PhRMA).