By: admin on June 28th, 2011
By Wendy Marsh
On June 26th, the U.S. House of Representatives passed the Leahy-Smith America Invents Act by a vote of 304-177. As the bill differs slightly from the text that was approved overwhelmingly by the Senate (95-5), it will not yet be going to President Obama for signature. Instead, the bill will now go back to the Senate where Senators will be asked to approve the changes adopted by the House.
One of the chief differences in the bill involves funding for the United States Patent and Trademark Office (USPTO). While the Senate bill put an end to the practice of fee diversion which occurs when Congress appropriates the USPTO less than what it collects in fees, the bill passed by the House does not provide such guarantees. The final bill will include a first-to-file provision whereby the first person to file a patent application on a particular invention will be entitled to patent protection, rather than the first-to-invent as provided by current U.S. law.
Posted in Patent Law | No Comments »
By: admin on June 14th, 2011
By Wendy Marsh
In a unanimous decision dated June 9th, the U.S. Supreme Court upheld a $290 million jury verdict against Microsoft Corporation for patent infringement in Microsoft Corp. v. i4i Limited Partnership and Infrastructures for Information Inc. In doing so, the Court rejected Microsoft’s contention that a patent infringement defendant need only demonstrate that the patent at issue is invalid by a preponderance of the evidence rather than by the long-standing standard of “clear and convincing” evidence.
The battle between Microsoft and i4i began in 2007 when i4i sued Microsoft for infringement of its patent relating to text manipulation software. A federal jury awarded i4i $290 million after finding that Microsoft’s 2003 and 2007 versions of its word processing application, Word, infringed i4i’s patent. A U.S. court of appeals affirmed the lower court’s verdict that upheld the validity of the i4i patent. Microsoft then appealed to the Supreme Court. Microsoft has long since removed the i4i technology from Word but continued to fight i4i, believing its patent to be weak and one that should never have been granted. Microsoft twice requested reexamination of the i4i patent by the U.S. Patent and Trademark Office (USPTO) and the USPTO upheld its validity both times.
In its appeal, Microsoft argued that a lower standard involving a “preponderance of the evidence” was appropriate as it would make some “bad” patents easier to invalidate while still promoting innovation and competition. Writing for the majority, Justice Sonia Sotomayor said the Court rejected Microsoft’s proposed lowering of the standard of proof for patent invalidity, noting that Congress had prescribed the governing standard of proof, and any decision to change the standard in patent infringement cases would therefore have to come from Congress.
Many members of the software industry, including Google Inc., and Yahoo! Inc., supported Microsoft in its quest to lower the standard for invalidating software-related patents (which likewise would have lowered the standard for all patents), while the Obama administration, Bayer AG, 3M Company, and groups representing biotechnology companies and pharmaceutical manufacturers supported i4i. Chief Justice Roberts, who owns Microsoft stock, recused himself from the case. Louden Owen, i4i’s chairman, characterized the decision as “one of the most significant business cases the [Supreme Court] has decided in decades.” In any event, the Supreme Court’s decision maintains the higher evidentiary standard for invalidating any patents, software-related or otherwise.
For the complete decision, click here.
Posted in Intellectual Property, Patent Law | No Comments »
By: admin on June 10th, 2011
by Wendy Marsh
In a 7-2 decision, the Supreme Court ruled on Monday that Stanford University did not legally own an invention made by a former employee, Mark Holodniy, that was subsequently assigned by the employee in a separate agreement to a third party. The invention at issue was created in part by federally funded research while Mr. Holodniy worked at Stanford. In his employment agreement with Stanford, Mr. Holodniy “agreed to assign” his “right, title, and interest” in “inventions resulting from his employment at Stanford, which the Court interpreted as a promise to assign those rights in the future. Mr. Holodniy completed his work on the invention while consulting with another company, to whom he assigned the rights to his invention.
In its claim against Roche, Stanford argued that the contract Mr. Holodniy signed with the university gave Stanford ownership rights in the HIV-detection kit Mr. Holodniy developed through federally-funded research begun at Stanford via a federal statute, the Bayh-Dole Act, which gives universities patent rights to any invention created in part with federal funds. The Supreme Court determined that Stanford’s position was an overly expansive interpretation of the federal statute. In the Court’s opinion, the justices were especially concerned by the fact that Stanford’s broad interpretation of the Bayh-Dole Act would give the university patent rights even if the invention was conceived before the inventor was a university employee so long as the invention was conceived or reduced to practice using federal funding. The majority further determined that the inventor’s present assignment to Roche trumped Mr. Holodniy’s “promise to assign” his invention in the future to Stanford. During the parties’ oral arguments, Justice Scalia noted that the universities could easily protect themselves in this regard by mandating all their employees to execute ironclad assignments.
The moral of this case is that universities (and probably also non-university employers) should review their current employment contracts to make sure they include a provision requiring employees to automatically assign their inventions to the employer, rather than merely requiring the employees to “agree to assign” their inventions.
A full synopsis of B.T. Leland Stanford Jr. University v. Roche Molecular Systems, Inc., Docket No. 09-1159 is available at The Chronicle of Higher Education.
Posted in Uncategorized | No Comments »
By: admin on May 25th, 2011
By Wendy Marsh
Showing a reversal of a recent trend, both the European and U.S. Patent Offices (EPO and USPTO respectively) issued a significantly higher number of patents in 2010 than in 2009. In 2010, the EPO received 232,000 patent applications (10% more than in 2009) and issued 11% more patents in comparison to 2009. Demonstrating an even more startling increase, the USPTO granted 31% more patents in 2010 than in 2009. Leading the pack in this regard was IBM, which received 5,896 patents in the U.S., with Samsung in second place with 4,500 issued patents and Microsoft in third place with nearly 3,100.
Tags: patent trends, USPTO patents
Posted in Intellectual Property, Patent Law | No Comments »
By: admin on May 5th, 2011
By Wendy Marsh
The tattoo artist who created and inked the now-famous tattoo on the face of Mike Tyson has sued Warner Bros. for copyright infringement, based upon its use of a similar tattoo on the face of actor Ed Helm in “The Hangover 2.” The artist, S. Victor Whitmill, has requested an injunction to halt the release of the Warner Bros. film pending the outcome of the case. In the film, Ed Helm’s character wakes up in a bathtub following a bachelor’s party to unexpectedly find he had acquired a tribal tattoo on his face at one of the previous evening’s events.
Copyright law provides that in order to prove copyright infringement, the plaintiff must demonstrate, 1) ownership of a valid copyright, and 2) copying of the protected elements of the copyrighted work. In this case, Mr. Whitmill may be able to successfully prove himself to be the owner of Tyson’s tattoo design. In this regard, the pleadings assert that Mr. Whitmill had Tyson sign a release granting Whitmill rights in the tattoo design and, to prove he was the tattoo artist, had pictures taken of himself placing the tattoo on Tyson’s face. In 2003, Whitmill registered the tribal tattoo design with the Copyright Office. Whether the tattoo in the movie is sufficiently similar to Tyson’s to constitute “copying” appears likely, as the movie pre-release outlines indicate the entire purpose of the scene in the movie is to associate the tattoo on the actor’s face with that of Mike Tyson.
Warner Bros. is likely to assert in its defense that its copying of the tattoo was a “fair use” of Whitmill’s design, in that it was created to ridicule the Tyson tattoo. To successfully demonstrate parody, and therefore exempt from copyright infringement, Warner Bros. would need to prove that its use of Whitmill’s design was intended to “comment on” and preferably also “transform” the Tyson tattoo copyrighted design into something with a different purpose or character. It will be interesting to see whether the “commentary” claimed by Warner Bros. is anything other than not to let your friends lead you to a tattoo parlor during a bachelor party.
Posted in Copyright Law, Intellectual Property | No Comments »
By: admin on February 16th, 2011
By Wendy Marsh
The U.S. radio show “This American Life” has published a photograph from a 32-year old newspaper which it has claimed to be the original recipe for Coca-Cola. The photograph, originally published in 1979 in the Atlanta Journal-Constitution, is a hand written recipe that reportedly contains the exact amounts of all of the Coca-Cola ingredients, including the specific oils contained in Merchandise 7X. Merchandise 7X makes up only about 1 percent of the Coca-Cola formulation but is allegedly responsible for providing Coca-Cola with its unique flavor.
In the intellectual property world, the Coca-Cola formulation is famously known as one of the oldest, most valuable, and best kept trade secrets. Coca-Cola and its trade secret formulation are approaching their 125th anniversary this year. Coca-Cola has so far declined to comment as to the genuineness of the published recipe, but its spokesperson has stated that the main ingredients of the formulation, which include caffeine, sugar, water, lime juice, vanilla, and caramel, and listed on the Coca-Cola product label, have never been a secret.
Only time, and the results of others who will undoubtedly attempt to manufacture their own Coca-Cola, will tell whether this published recipe is “the real thing.”
For more, click here.
Tags: coke's secret recipe, trade secret
Posted in Intellectual Property, Trade Secrets | No Comments »
By: admin on February 2nd, 2011
By Wendy Marsh
Senate Judiciary Chairman Patrick Leahy (D-Vt) and his House counterpart, Texas Republican Lamar Smith, are proposing substantial changes to the patent laws, including a change from the current U.S. “first to invent” to a “first to file” system. Besides providing U.S. “harmonization” with the majority of the other industrialized countries which follow the “first to file” system, another reason for this proposed change is to remove the need for the lengthy, costly process the U.S. Patent Office and Trademark Office (USPTO) must now use to determine which patent applicant was the first inventor of a particular technology. Under a “first to file” system, the first person to file a patent application on a particular technology would be deemed the inventor.
In addition to changing from a “first to invent” system to a “first to file” system, Leahy’s bill proposes a new administrative mechanism for third parties to challenge the validity of patents, as well as an alteration to the method for calculating damages in patent infringement litigation.
On Feb. 1, more than 20 conservative organizations and activists released an official letter urging congressional leaders to prevent passage of the Leahy bill, arguing it will cripple most of America’s small inventors, universities, and larger industrial firms that rely upon patents by downgrading their patent rights. More particularly, the group states that the bill will make it easier to infringe patents, easier to challenge patent rights, and more expensive for inventors to defend their patents. To promote innovation, the conservative groups instead urge that the logical solution is to reduce the Patent Office backlog by allowing the USPTO to retain its user fees instead of allowing those fees to be diverted to other parts of the government. In this regard, the groups note that in recent years, approximately $700 million originally allocated to the USPTO has been used for general government spending, resulting in a backlog of approximately 720,000 patent applications.
For more information, click here.
Posted in Intellectual Property, Patent Law | No Comments »
By: admin on January 6th, 2011
By Wendy Marsh
The Starbucks logo is undergoing a “facelift” that was unveiled to its employees today. The new logo removes the wording “STARBUCKS COFFEE” that surrounds the iconic “sea nymph” logo and gives the nymph a few updates as well, including changing her color from black to green.
The new logo represents the third major change to the Starbucks logo since 1971, when the logo was brown and included the wording “STARBUCKS COFFEE AND TEA” surrounding a less modest sea nymph. Starbuck’s reasoning for the change was the belief that its fame had reached the point that it was no longer necessary to continue reinforcing its name at every turn. The logo will also be more versatile for the company which has expanded its line of products and services, especially recently, to well beyond simply serving cups of coffee and espresso.
The new logo will appear on cups beginning this March to coincide with Starbucks’ 40th anniversary.
Posted in Trademark Law | No Comments »
By: admin on December 30th, 2010
The Internet has provided access to resources beyond our dreams, but access does not include the right to use those resources in any manner we wish. Limitation on such use is the principle involved in a case pending in the New York Southern District Court.
Haitian-born photographer Daniel Morel brought a lawsuit against Agence France Presse (AFP) for using without permission his photographs of the destruction caused by the earthquake in Haiti. Morel, one of just a few professional photographers in the country at the time, documented the catastrophe, uploaded the photos to TwitPic and posted on Twitter that the photos were available for purchase.
The lawsuit alleges that a Dominican Republic man, Lisandro Seuro, illegally copied the photographs and liberally emailed them to his contacts, and further alleges that AFP and a number of other news providers published the photos, not only without paying Morel but also incorrectly crediting the work to Seuro.
AFP argued that the re-use of photos disseminated through Twitter was an everyday occurrence and the suit should be dismissed. However, District Court Judge William Pauley opined that Twitter’s terms of use do not condone re-use of copyrighted material. In fact, the terms of use agreement specifically states that TwitPic users are the owners of their own content.
The case is moving forward and will be watched closely for further clarification on what rights Twitter and other social media users have with regard to their words and images.
For more on the lawsuit, click here and here.
Posted in Copyright Law | No Comments »
By: admin on December 29th, 2010
By Wendy Marsh
Last week, Apple Inc. was granted a patent on the design for its transparent drop down menu by the U.S. Patent and Trademark Office (USPTO). While many would wonder what could possibly be unique about a drop-down menu, one has to consider the fact that Apple filed its patent application on this design almost 11 years ago in January of 2000, back when such designs may have very well been considered innovative.
According to USPTO records, the application was not even reviewed by the USPTO until two years after it was filed – an extraordinarily long time for a design patent application. The application was initially denied, leading to an appeal by Apple in January of 2004, after which it laid dormant again for almost another four years. In 2007 the USPTO finally removed the rejection that led to the appeal, but then issued some objections to the design images which took another three years to finally resolve.
Luckily for Apple, design patents remain active for 14 years following their issuance (rather than 20 years from the date of filing as is the case with utility patents). This is bad news for folks who might want to use transparent drop down menus in their web page design, who will now have to wait until 2024 to do so.
For the complete patent application to D629,412, click here.
Posted in Intellectual Property, Patent Law | No Comments »