October 30, 2006 by thomason.

Memo to Associate:  Draft warning to readers that what client publishes is copyrighted.  Sounds simple, but take a moment to review the copyright caveats widely used, and those provoke questions about how far one can go.

My personal fave is the footer for AP news stories, since, it is doubtful that news or public events are copyrightable.  Still, the AP stories end with:
Copyright 2006 The Associated Press. All rights reserved. This material may not be published, broadcast, rewritten or redistributed.

The parts about “redistributed” are well-rooted in the Copyright Act, but a copyrighted news report cannot be “rewritten.”?  What limits then should be stated for modification of copyrighted material.  Here’s the notice from CBS. 
Modification of the Materials, or use of the Materials  …is a violation of CBS’s or such other sources’ copyright, trademark and other proprietary rights.

That notice, similar to a quitclaim deed or ‘as is’ representation, does not say that rewriting a CBS news report is a copyright violation, but comes closer to saying that if CBS has any “such” rights, then those may be violated.

Another variation of the notice, still in a broad-form, provides that the story “shall not be published, broadcast, rewritten for broadcast or publication, or redistributed directly or indirectly in any medium.”  Taken at face value, then a news report, published or broadcast, is the exclusive property of the publisher or broadcaster, and that no one can rewrite it.  The scope of that is expanded even more with the closer, “directly or indirectly in any medium.”  If a hurricane hits, then a copyrighted report about it cannot be “rewritten” for broadcast, and it cannot be published “indirectly.”  It’s hard to know how one might break those rules, knowingly.

Here are some other favorites attempts at putting the world on notice of copyright rights (even if those rights go beyond what the law will enforce).

The contents of this site, including text, images, audio and video files, computer software, and all of the other cool stuff on this little Web site may not be published, broadcast or otherwise redistributed without permission.  You may not reproduce, modify, distribute or republish materials contained on this site (either directly or by linking) without our prior written permission.
Users of this service may not reproduce, republish or redistribute material on the Web site in any form without the express written consent of the copyright holder, who cannot grant permission to reuse or republish material from other information providers.
No material (including but not limited to the text, images, audio and/or video) and no software (including but not limited to any images or files incorporated in or generated by the software or data accompanying such software) (individually and collectively the “Materials”) may be copied, reproduced, republished, uploaded, posted, transmitted, or distributed in any way or decompiled, reverse engineered or disassembled, except that you may download one copy …, provided you keep intact all copyright and other proprietary notices.
Associated Press text, photo, graphic, audio and/or video material shall not be published, broadcast, rewritten for broadcast or publication or redistributed directly or indirectly in any medium.

Omigosh, I think I just rewrote and republished text authored by others.
 

Posted in Copyright, Uncategorized | No Comments »

October 24, 2006 by thomason.

I’m not sure what the percentages are, but for attorneys jaywalking, or missing deadlines in the Local Rules, it must be about the same figure.  Courts have forgiven litigants who failed to provide adequate initial disclosures, to serve ‘final’ experts reports, or to complete depositions by the pretrial drop-dead date that the Court had set, seventy times seven.  But then, someone has to become the unlucky poster child who is made ‘an example’ and this time it was the patentee in Safeclick v. Visa (CAFC 06-1182).

Safeclick served its claims chart and infringement contentions, as required by the Local Patent Rules in the N.D. Calif.  Visa took issue, arguing for summary judgment based on the absence of one claimed element.  Safeclick’s opposition brief added an aspect to its previously-disclosed infringement theory.  Visa asked that the new matter be precluded.  The district judge “refused to consider Safeclick’s new theory, and summary judgment was granted in Visa’s favor.”  That’s the hammer!

The Federal Circuit quotes passages from the Patent Local Rules of the N.D. Calif., but none of those provide that noncompliance can be ground for, in essence, the sanction of a no-cause, or a judgment for the opponent.  In fact, the Local Civil Rules in the N.D. Cal. state, that a failure to comply “may be a ground for imposition of any authorized sanction.”  L.R. Civ. 1-4.  The predecessor rule was limited to “such sanctions authorized by statute or rule.”  The point is, on what basis can an absolute bar or imposition of a waiver, be assessed against a patentee who realizes late that its claim construction and infringement theory need to be revised.

These local rules should have no more force than a scheduling order entered under FRCvP 16(b) - should they?  The Federal Circuit took a hands-off approach, and said its review was “very deferential.”  That is a lower standard that the CAFC applies when reviewing sanctions for noncompliance with a pretrial scheduling order. 

The other odd points about this ruling are that it’s was not designated as precedential, and that, the review apparently was treated as an issue unique to the patent law jurisdiction of the Federal Circuit.  The first point is that the ruling, being non-precedential, is limited to its particular facts.  But, is the decision to be seen a caveat to litigants, or as a boost to district judges who fear being overruled for barring late-made arguments.  Either of those is buried in an unreported opinion.

One last comment, doesn’t the body of CAFC rulings include some salutations about patents being imbued with a public right, one that arises from the Patent Clause, and is secured by a statutory presumption of validity.  How can all of that become subordinate to a local rule, which works a forfeiture of patent rights.

Posted in Patents - Federal Circuit, Uncategorized | 1 Comment »

October 23, 2006 by thomason.

Boy Scouts will be able to earn an activity patch for learning about copyright piracy and the evils of downloading movies and music.
To earn it, Scouts will learn the basics of copyright law and how to identify “five types of copyrighted works and three ways copyrighted materials may be stolen.”
The movie industry developed the curriculum.

The full story, excerpted above, was in Saturday’s Seattle Post.  One wonders whether any scout leaders are active in the EFF, or readers of Slashdot, who may amend the “curriculum” as it is presented.  Also, I may need to ask my learned colleague at legalethicsblog.com whether Boy Scouts who earn this badge can actively practice what they learn, without having a law license.

Posted in Copyright, Uncategorized | Comments Off

October 20, 2006 by thomason.

The last of the KSR v. Teleflex briefs kept the focus on recent cases and journals, and so, none were added to the list of finalists for the Mildmay Fane Commemoration.  Although, just outside the circle was citation to Langdon, Horse, Oxen …Drought Animals in English Farming from 1066 to 1500.  Not unlike the Cards-Mets last night, the contest went down to the end.

After the decision on the Mildmay Fane Award was made, however, it was in hindsight, obvious that the winner had to be AIPLA, and its witty and wise counselors at Patterson Belknap.  In the words of one judge on the panel, “the combination of Paradise Lost and Ecclesiastes was not suggested by prior articulations in the record.”  Another noted that “had I been able to express any found meaning in Milton’s Paradise Lost, I might now be a English Prof tenured at Swarthmore, instead of a non-equity member of a highly leveraged LLC.”

Of course, members of ISinIP and their families were not eligible to receive the Award (if not, I could’a been a contender!).  Also, excluded from consideration were the many cites to President Thomas Jefferson’s letter to Baltimore inventor, Issac MacPherson.  That reference was suggested and taught in the Graham v. Deere opinion, so citing it in KSR was not non-obvious.  Had there been a runner-up, then the AARP’s cite about Medicare Recipients with Hypertension would be a teaching that may not have flashed in the minds of the geniuses skilled in this case.

Congratulations to our amici at AIPLA and Patterson Belknap.  Remember, any consideration or award, such as gift bag, is fully reportable as ordinary income.

Posted in Patents - Federal Circuit, Uncategorized | Comments Off

October 18, 2006 by thomason.

After perusing the briefs supporting KSR and Teleflex, the expanse of the argumentation makes one beg for a Sister Wendy who can it “Explain It All.”   Maybe a Sister Pat can emerge, who can explain the art of patents.

Even if past performance may not predict future results, there is reason to think that the Supreme Court will rule that the test for obviousness is neither A or B, exclusively.  In the IP cases they have decided recently, the holding was generally against singular or strict approaches.  The absolute bar, based on the prosecution history, was made flexible.  No strict requirement exists to permanently enjoin a proven infringer.  The doctrine of equivalents may be based on “triple identity” or “insubstantial differences.”

The issue in KSR v. Teleflex may be framed as a choice between a TSM, or no TSM, test.  It is reasonable for the Court to choose neither to the exclusion of the other.

The rubric laid over the arguments exclusively for any TSM, or any non-TSM, test may be that the “particular linguistic framework used is less important than whether the test is probative of the essential inquiry.”  Warner Jenkinson Co. v. Hilton Davis Chemical Co.  On that basis, due regard would be given to an explicit or implied TSM, but other indicia “probative of” obviousness could suffice, if proven clearly and convincingly.

So much argument in the briefs dealt with the need for, or the evils of, the TSM test.  Again, is not one appropriate judicial response to these policy arguments that, “courts must be cautious before adopting changes that disrupt the settled expectations of the inventing community.”  Festo.  That extends too when attacks are made on how the CAFC or the USPTO dispatch their statutory duties.  The “various policy arguments now made by both sides are thus best addressed to Congress, not this Court.”  Hilton Davis.

It appears that the end result may be a broadening of the §103 test for what “would have been obvious at the time of invention …to a person having ordinary skill in the art.”   Once the ruling issues, we all can engage in ”hindsight” reconstuction.

Posted in Patents - Federal Circuit, Uncategorized | Comments Off

October 17, 2006 by thomason.

I’ve established an award to recognize the obscure, and the erudite, represented in the “Other Authorities” cited to aid the Supreme Court, in deciding how obviousness should be assessed, in KSR v. Teleflex. 

I called it the Mildmay Fane Commemoration, in honor of an obscure 17^th Century poet and patron, whose poesy includes:

That which creates a happy life
Is substance left, not gained by strife,
A fertile and a thankful mold,
A chimney always free from cold;
Never to be the client, or
But seldom times the counselor.

From among the KSR briefs now available to me, here are the finalists:

Progress & Freedom Foundation’s cite to:
-Poundstone, The Prisoner’s Dilemma.

Economists & History Professors’ cite to:
-Darwin, Discovering The Tree of Life.

AARP’s cite to:
-Drug Coverage & Drug Purchases by Medicare Beneficiaries with Hypertension.

Time Warner & Viacom cites to:
-the Apple iPod
-Mister Peabody

Ford Motor and Daimler Chrysler citing:
-Henry Ford, History of the Rogue.

General Motors, Time Warner & Hallmark Cards remark that:
-“Einstein’s relativity as a paradigm shift from classical Newtonian mechanics.”

AIPLA cites to:
-Milton, Paradise Lost
-Book Of Ecclesiastes

 By tomorrow, I should have seen the rest of the offerings of the “Other Authorities” and will pick our winner.  Natch, the Commemoration is “freely” awarded.

Posted in Patents - Federal Circuit, Uncategorized | Comments Off

October 17, 2006 by thomason.

Watching the AL & NL League championship series provokes repeated outbursts, where I yell at the big-screen, “no way that was a strike!”  My favorite {least} is the low and outside, called strike, followed with the “caught the outside corner” comment.  Rarely, if ever, will a pitch at the top of the strike zone, but that far outside, be called a strike.  As a result, the strike zone is not a box, but must be shaped more like a lava lamp - narrow at the top, widening out at the bottom.

“As is well known, there is established a three-dimensional strike zone 12 through which the ball must pass or intersect in order to be called a “strike”. Otherwise, any ball thrown so it is out of the strike zone is called a “ball”. ” U.S. Patent No. 4,545,576.

Is there any reason to not mount cameras above the plate, that show the outer edges of the strike zone?  Couldn’t the batters’ uniforms have a reflective dot or thread that a side view camera can spot, and by that means, indicate whether a pitch was in or out of the strike zone?  By light-beams or moon-beams or lasers or masers, mapping software — whatever, can’t the widening eye of the umpire be replaced with electro-mechanico-computo- means for detecting the glide path of a moving sphere, relative to a polygonal area?

The ” “strike zone” is an imaginary area that is located above the home plate” however, any “pitch that does not pass through a portion of the strike zone and is not swung at by the batter is called a “ball”. “  U.S. Patent No. 5,401,016 (noting ”a great deal of variation in the way different human umpires call balls and strikes…[some] use a so-called “small” strike zone …[other] umpires use a so-called “large” strike zone, or call pitches very erratically. “).

After I shout at the TV, sending housepets a-scrambling, I watch the super-slo-mo, showing the ball (and I do mean the “ball”) as it passes the batter and plate, then Fox puts up that grid that supposedly shows the location of the pitched “ball.”  That FoxCam pitch locator looks about as accurate as a mood ring from the carnival.  The slo-mo camera will show the pitch up at the shoulder, then the FoxCam will put it inside the grid.  So, again, I’m provoked to shout at the tube, “we wuz robbed!”

Posted in Uncategorized | Comments Off

October 11, 2006 by thomason.

Many rush forward with new solutions, to unseen versions of old problems, and in the rush overlook existing solutions.  Case in point - the troll. Is this a new concern; how many years ago did I first read a “Lemelson” letter; wasn’t it in the 80’s when Asian manufacturers would give in to threats of patent litigation.  Somehow, that history has been put aside, and the supposed new phenomena of patent trolling has provoked a whirlwind of legislative proposals and impassioned pleas to courts to smote those passive patentees, who threaten to stifle innovators who too are makers.

When the rubber hits the highway, though, a complaintant either can plead a cause, or it’s dismissed. It’s not about who sues, but about whether they’ve got a case. If not, then they run the risk of Rule 11 sanctions.Case in point, Eon-Net, L.P. v. Flagstar Bancorp, Inc., Civ. No. 05-2129 MJP (W.D. Wash. 4 Oct. 2006). Eon-Net is the assignee of a patent for quick and automatic extraction of information from hard copy documents, and “Eon-Net contends that most, if not all, HTML form usage on the internet infringes the `697 patent.” Defendant Flagstar Bank accepted loan applications over the internet. Apparently, the plaintiff scoured many websites, and has sued a host of online merchants. The Judge in Seattle noted the complaint was “virtually identical to at least thirteen” others, and that in “recent weeks …eleven new complaints against unrelated parties” had been filed by Eon-Net. The M O was, after filing the infringement suit, Eon made “a cheap offer of settlement …based on a defendant’s annual sales.” The offers ranged from $25,000 to $75,000, for sales revenues ranging from $3M to $100M. At the conclusion of the ruling, imposing Rule 11 sanctions, the Judge remarked”even the finest patent attorney would need to think carefully before advising a client to spend hundreds of thousands of dollars in litigation when a $25,000, $50,000, or $75,000 settlement was on the table.” It too was noted that “dozens” of litigants had “opted for the ‘cheap’ standard offer of settlement.”You can guess the rest - the infringement accusation was premature, poorly-researched, and in the Court’s opinion, “baseless.” Eon produced a claim chart in opposition to the motion, which the Court stated was “crafted for versatility (fill in the blank) for each new case” but otherwise, was “essentially worthless.” Eon had not obtained the software used by defendant, and indeed, Eon had not identified what software they used. Eon’s “failure to investigate or identify infringing technology [is] the hallmark of its litigation plan.” Next, Eon asked that they be deemed to have acted in good faith because they did a claim construction. The Judge did not give them the Markman Award. “To the extent Eon-Net went through the motions of a claim construction exercise, it recklessly defined terms to suit its purposes in spite of the specification’s language.”

Posted in Patents - Federal Circuit, Uncategorized | Comments Off

October 9, 2006 by thomason.

Consider how proposed legislative reforms on the inequitable defense could impact current practice.  In Becton Dickinson & Co. v. Tyco Healthcare, Civ. 02-1694 (D. Del. 9/25/2006), the accused infringer pleaded, and went through jury trial on, the defenses of anticipation, and written description.  Notably, obviousness was not asserted.  The jury ruled the asserted claims were infringed, willfully, and valid.
A post-trial proceeding was needed for the inequitable conduct defense, despite the declaration of validity.  The inequitable conduct defense challenged one, non-asserted, dependent claim of the patent, with a theory that had the uncited art was material because it may have suggested an obvious combination.  This proceeding was consistent with, even compelled by, Federal Circuit precedent, which darn near prevents summary judgment on inequitable conduct, and recognizes the defense may go only against unasserted or non-infringed claims, and if the defense succeeds as to any claim then the entire patent is deemed unenforceable, even where the asserted patent claims were declared valid.
   Most proposed, statutory reform bills include a provision that will allow the inequitable conduct defense to proceed only after at least one claim is ruled invalid, and will limit unenforceablity to the asserted patent claims.   In the Becton D case, the defense was against one dependent claim, which was not alleged to be infringed.
    Also, the infringer in the Becton D case alleged nondisclosure by an inventor, and a set of separate facts against the in-house patent attorney.  As to that attorney, the allegations were that in licensing negotiations, he had become aware of prior art that allegedly would suggest a “motivation to combine” it with elements of the claimed invention.  This approach too would be cut off, or narrowed in most of the proposed legislative reform bills.  Either the attorney’s knowledge or nondisclosure would not be attributed to the inventor, or that attribution could occur upon a showing that the inventor had actual notice of the attorney’s omission.

If I ran the patent universe, then here are some legislative suggestions for reducing the use and cost of the inequitable conduct defense.  First, allow no discovery directed solely at inequitable conduct until after a ruling on infringement and validity.  Perhaps a jury deciding validity should be instructed to give an “advisory” finding {FRCvP 39(c)} on whether the uncited art was material.  If no invalidity is proven, then the Court may disallow the defense, and unless exceptional reasons are present, then the Court too may disallow discovery about inequitable conduct.

   The pox of the defense is the cost that it adds to the case, as well as the time devoted to thin theories.  Some merger of the inquiries as to patent validity and inequitable conduct materiality would tend to reduce use of the defense to bludgeon a patentee throughout infringement litigation.

Posted in Patents - Federal Circuit, Uncategorized | Comments Off

October 6, 2006 by thomason.

In yet another case of infringing goods on the shelves of Wal-Mart, Aero Prods. Int’l, Inc. v. Intex Rec. Corp., (CAFC 2OCT06) that portion of the damages awarded for the infringing trademark was vacated, because the mark was upon the beds that infringed the patent.  To allow a reasonable royalty for infringing the bed patent, plus award profits of the infringer for infringing the trademark would be an “impermissible double recovery.”  Quare: if the infringer paid a reasonable royalty to make the patented bed, would more $$ have to be paid to license the trademark on the beds?
An aspect of the ruling that seems odd is that the Federal Circuit arrogates that the issue of trademark damages will not be decided under regional circuit precedent.  Since the CAFC affirms the patent damages, one wonders why the trademark award is governed by CAFC precedent; and, is there a chance that the patent case and trademark case could have been separate suits that ended up in two Circuit courts for review.
My read of Aero is that the CAFC does not see how the two statutory phrases, “damages adequate to compensate for the [patent] infringement,” and “subject to principles of equity, to recover (1) defendant’s profits” for the trademark infringement, can co-exist and be accorded co-equal meaning.
In the end, the CAFC opts out of any statutory analysis, and holds “the result [is] compelled by [its] Bowers, Catalina Lighting, [etc.]” precedent, and conversely, that reliance on a 9^th Circuit case “would be contrary to our [CAFC] decisions in Bowers, Catalina Lighting, [etc.].”
While some part of the trademark award may be duplicative the reasonable patent royalty awarded, that issue more appropriately would be remanded for the district judge to “mold” the damage award, not for the CAFC to vacate it.

Posted in Trademarks, Patents - Federal Circuit | Comments Off