Recent Articles in Intellectual Property Law from LexMonitor

Zoltek Corp. v. U.S.: Federal Circuit En Banc Reverses Zoltek III and Rules That 28 U.S.C. § 1498(a) Can Waive Immunity for Infringement Under 271(g)

Thu, 22 Mar 2012 20:16:34 GMT

The Federal Circuit recently demonstrated how active the Court is, and will continue to be. After having ruled in Zoltek III that the United States did not waive immunity from suit except for acts that would constitute direct infringement under 35 U.S.C. § 271(a), the Court voted sua sponte to reconsider the question en banc.

On March 14, 2012, the Court of Appeals for the Federal Circuit decided the issue of whether the Court of Federal Claims, following the Federal Circuit decision in Zoltek III, erred in allowing Zoltek to amend its complaint and transfer its claim for infringement under 35 U.S.C. § 271(g) against Lockheed Martin to the United States District Court for the Northern District of Georgia. Although the trial court concluded that the requirements under the transfer statue, 28 U.S.C. § 1631, were satisfied and allowed the amendment and transfer, the Federal Circuit determined that this was clear legal error. The en banc panel overruled the portion of Zoltek III limiting the government’s immunity waiver to § 271(a), reversed the trial court’s decision and remanded the case to the trial court.

By way of background, Zoltek is the assignee of United States Reissue Patent No. 34,162 (the “RE ‘162 Patent”), titled “Controlled Surface Electrical Resistance Carbon Fiber Sheet Product.” In its infringement contentions, Zoltek only asserted the method claims of the RE ‘162 Patent, 1-22 and 33-38, which contained the two steps of partially carbonizing the fiber starting material and then processing the fibers into sheet products. The products at issue were used in the F-22 jet aircraft, which Lockheed designed and built as the result of a contract with the U.S. government.

In 1996, Zoltek sued the United States under 28 U.S.C. § 1498(a), alleging that the invention covered by the RE ‘162 Patent was infringed because the resulting product was used or manufactured by or for the United States. The United States moved for partial summary judgment and argued that Zoltek’s claim arose in a foreign country and therefore, its sovereign immunity was not waived under 28 U.S.C. § 1498(c). In Zoltek I, the trial court held that § 1498 “does not [waive the Government’s sovereign immunity] as to all forms of direct infringement as currently defined in 35 U.S.C. § 271.” 51 Fed. Cl. 828, 837 (2002). Subsequently, both parties appealed after the trial court stayed Zoltek’s taking claim and denied the government’s motion in Zoltek II. 58 Fed. Cl. 688, 707 (2003). Then, the Federal Circuit reversed the trial court’s ruling that Zoltek could allege patent infringement as a Fifth Amendment taking under the Tucker Act and also held that Zoltek’s infringement allegations were precluded by § 1498, but for different reasons than the trial court. Zoltek III, 442 F.3d 1345, 1353 (Fed. Cir. 2006). Specifically, the majority stated § 1498(a) was the basis without looking at § 1498(c), and remanded the case.

On remand, Zoltek sought leave to amend its complaint to add a claim against Lockheed for infringement of the RE ‘162 Patent’s method claims under 35 U.S.C. § 271(g) and to transfer the claim to the Northern District of Georgia under 28 U.S.C. § 1631. The trial court held that Zoltek lacked jurisdiction against the government, but Zoltek had jurisdiction against Lockheed. Zoltek IV, 85 Fed. Cl. 409, 413, 418 (2009). As a result of the trial court’s ruling, Zoltek amended its complaint and the Court of Federal Claims certified to the Federal Circuit for interlocutory appeal the issue of whether 28 U.S.C. § 1498(c) must be interpreted to nullify any government contractor immunity provided for in § 1498(a) when a patent infringement claim arises in a foreign country.

In deciding this issue, the Federal Circuit looked at the two consequences that would result. The Federal Circuit had to either conclude that the patentee’s well-pleaded complaint of infringement failed to state a cause of action against both the government and the government’s contractor, or override the longstanding principle that a contractor working for the government was immune from individual liability for patent infringement occurring during the course of business. The Federal Circuit concluded that Zoltek III panel’s limitation of § 1498(a) to infringement under § 271(a) is inconsistent with the plain language of the statute and the panel misapplied the case law in deciding to limit § 1498(a). The panel’s ruling created at least three results that were meant to be avoided: 1) The ruling results in Lockheed having liability for conduct immunized by § 1498(a); 2) The ruling creates the possibility that the procurement of the United States’ military materiel could be interrupted by infringement actions against government contractors; and 3) The ruling spoils the Congressional intent in 35 U.S.C. §§ 154(a)(1), § 271(g), 19 U.S.C. § 1337, and 28 U.S.C. § 1498.

After reviewing the legislative intent of § 1498 and Zoltek III panel’s interpretation, the Federal Circuit held that 35 U.S.C. § 1498(a) creates an independent cause of action for direct infringement by the government or its contractors and is not dependent on 35 U.S.C. § 271(a). Under § 1498(a), the government has waived its sovereign immunity for direct infringement, which extends to acts under § 271(a) and § 271(g). When the product of a patented process is used in or imported into the United States, there is direct infringement for the purpose of a § 1498 action. Having ruled that the United States could be sued, its contractor, Lockheed, was found immune from suit. Additionally, the Federal Circuit held that 35 U.S.C. § 1498(c) does not apply in this case.

In dissent, Judge Dyk demonstrated just how far the Federal Circuit needed to reach to address the issue. The dissent argued that the certified order from the Court of Federal Claims did not confer appellate jurisdiction over the earlier dismissal of infringement claims against the United States, citing United States v. Stanley, 483 U.S. 669 (1987). Judge Dyk also disagreed with the majority’s interpretation of 35 U.S.C. § 1498(a), and would have held the United States immune from suit and permitting a suit against the contractor.

Vincent E. McGeary is a Director in the Gibbons Intellectual Property Department. Jillian A. Centanni, an Apprentice in the Gibbons Intellectual Property Department, co-authored this post.

Nine Steps to Integrating the Cloud into Your Business

info@fed-soc.org (info@fed-soc.org) — Thu, 22 Mar 2012 15:00:08 GMT

Last December, I was interviewed by Finance and Commerce magazine for an article titled “Tech Toolkit: IT planning for the year ahead.” Part of the article included cloud computing and what companies can do to include the cloud in their businesses. Early the same month, I posted on the technology trends for 2012, and the... Continue Reading

Last December, I was interviewed by Finance and Commerce magazine for an article titled “Tech Toolkit: IT planning for the year ahead.” Part of the article included cloud computing and what companies can do to include the cloud in their businesses. Early the same month, I posted on the technology trends for 2012, and the continued adoption of cloud computing was one of them. The Cloud Standards Customer Council has released its first “Practical Guide to Cloud Computing.” This guide includes nine steps that companies should consider to help integrate the cloud into their businesses. For the most part, the nine steps involve planning, but planning for the cloud is important. Not every application and data set is appropriate for the cloud. Using this planning tool will help inform a company about what cloud services are appropriate for its business.

Update: Effective Date for New EAS Rules - April 23, 2012

Thu, 22 Mar 2012 13:16:33 GMT

As we reported last month, in January the Commission released its Fifth Report and Order (5th R&O) in its long-running proceeding aimed at modernizing the Emergency Alert System. The 5th R&O has now been published in the Federal Register, which establishes the effective date for the new rules. And that effective date is (drum roll, please) . . . April 23, 2012. If you and your engineering staff haven’t focused on whether your current facilities conform to the standards set out in the 5th R&O, the countdown has now started and time’s a-wastin’. (The deadline for having CAP-compliant equipment remains June 30, 2012.)

Note that several of the amended rules will still not kick in on the April 23 effective date. That’s because they entail some form of “information collection”, which requires that they be run through the Paperwork Reduction Act drill. According to the Federal Register notice, the particular rules whose effectiveness is temporarily PRA-deferred are Sections 11.21(a), 11.33(a)(4), 11.41(b), 11.42, 11.54(b)(13) and 11.55. Section 11.21(a) relates to the contents of State Plans. Section 11.33(a)(4) sets standards for the display and logging of SAME and CAP messages. Section 11.55 spells out EAS operation during state or local emergencies. With respect to Sections 11.41(b), 11.42 and 11.54(b)(13), there seems to be some confusion. The 5th R&O appears to delete Sections 11.41(b) and 11.42, so it’s not clear why they would be subject to any PRA review. Ditto for Section 11.54(b)(13), although, in addition to deleting that specific subsection, the 5th R&O then recodifies its contents as 11.54(a)(3). Presumably this will all get straightened out eventually.

Recent Developments in International Arbitration | March, 2012

karl@karlbayer.com (Karl Bayer) — Thu, 22 Mar 2012 12:56:26 GMT

Following are this month’s recent developments in international arbitration law published by the International Law Office (free registration is required to view the articles): Malaysia: Court rules on enforcement of foreign arbitral award USA: Supreme Court reaffirms pro-arbitration stance India: Amendment of grounds in application for challenging arbitral awards Switzerland: Supreme Court saves pathological arbitration [...]

Following are this month’s recent developments in international arbitration law published by the International Law Office (free registration is required to view the articles):

Malaysia: Court rules on enforcement of foreign arbitral award
USA: Supreme Court reaffirms pro-arbitration stance
India: Amendment of grounds in application for challenging arbitral awards
Switzerland: Supreme Court saves pathological arbitration clause
Turkey: Chamber of Commerce forms working group to amend arbitration rules
United Kingdom: High Court rejects challenge to English arbitral award
USA: Federal appeals court clarifies arbitrator ‘evident partiality’ standard
Austria: Costly decision: court refuses to set aside arbitral award
Greece: Formal validity of domestic arbitral award
Malaysia: Court rules on competing arbitration clauses
Netherlands: Interim measures prior to constitution of arbitral tribunal: a Dutch perspective

Technorati Tags:

law, ADR, arbitration

7 of the strangest lawsuits making headlines

Thu, 22 Mar 2012 12:45:12 GMT

The following lawsuits exemplify the lighter, and sometimes bizarre, side of the legal world.

InhouseBlog.com

More of the strangest lawsuits showing the lighter, and sometimes bizarre, side of the legal world.

[via: 7 of the strangest lawsuits making headlines at InsideCounsel]

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Alternative Fee Arrangements Are a Tool, Not a Strategy

Thu, 22 Mar 2012 12:44:27 GMT

Earlier this year, I met Pat Lamb, one of our fearless leaders in the New Normal, for coffee near his office. Given his success in delivering high-quality legal services under alternative fee arrangements, I wanted to hear his thoughts about their use in practice. Pat emphasized that lawyers should be paid for successful outcomes and not for quantity of work. We talked about my own early experience with an AFA in which my outside counsel arrived at a flat fee by multiplying the number of hours they expected to put into the matter by their traditional hourly rate. We agreed…

InhouseBlog.com

More thoughts on the appropriate use of alternative fee arrangements:

Earlier this year, I met Pat Lamb, one of our fearless leaders in the New Normal, for coffee near his office. Given his success in delivering high-quality legal services under alternative fee arrangements, I wanted to hear his thoughts about their use in practice. Pat emphasized that lawyers should be paid for successful outcomes and not for quantity of work.

[via: Alternative Fee Arrangements Are a Tool, Not a Strategy at the ABA Journal]

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Precedential No. 14: TTAB Reverses 2(d) Refusal of GRAND HOTEL NYC over GRAND HOTEL for Hotel Services

jwelch@ll-a.com (John L. Welch) — Thu, 22 Mar 2012 09:44:21 GMT

The Board reversed a Section 2(d) refusal of GRAND HOTELS NYC for hotel services [HOTELS NYC disclaimed], finding the mark not likely to cause confusion with the registered mark GRAND HOTEL for hotel, restaurant, and convention services [HOTEL disclaimed]. Dictionary definitions, third-party registrations, and Internet evidence showed the word GRAND to be a weak formative in the hotel field, leading the Board to conclude that the addition of NYC to GRAND HOTEL was enough to distinguish the marks. In re Hartz Hotel Services, Inc., Serial No. 76692673 (March 19, 2012) [precedential].

Because cited mark GRAND HOTEL is registered, the mark is entitled to a presumption of validity under Section 7(b). Therefore GRAND HOTEL cannot be treated as merely descriptive; at most it can be considered as a highly suggestive, laudatory term, as evidenced by third-party registrations, third-party use, and dictionary definitions.

Applicant submitted copies of five registrations for marks, owned by different entities, that include the term "Grand Hotel" or "Grande Hotel" for hotel services: THE GRAND HOTEL AT MOUNTAINEER, THE SOUTH'S GRAND HOTEL, ANCHORAGE GRAND HOTEL & Design, LOUISVILLE'S GRAND HOTEL, and FORT LAUDERDALE GRANDE HOTEL & YACHT CLUB. A private investigator confirmed the use of "Grand/Grande Hotel" marks in seven locations (including Geiser Grand Hotel, Wilshire Grand Hotel, and Bellissimo Grande Hotel), and Applicant submitted website pages for 10 "Grand Hotel" locations (including The Grand Hotel Minneapolis, The Grand Hotel Ocean City, North Conway Grand Hotel, Pensacola Grand Hotel, and Jerome Grand Hotel).

The Board relied on Plus Products v. Natural Organics, Inc., 204 USPQ 773 (TTAB 1979), which involved an unsuccessful opposition to the mark NATURE'S PLUS for vitamins in view of PLUS for vitamins. There, the evidence included eight third-party registrations issuing prior to Opposer's registration, and seven issuing after, all for marks including the word PLUS for vitamins or closely related goods. The Board inferred that Opposer was satisfied to register PLUS side-by-side with eight existing PLUS registrations, that the PTO historically registered PLUS marks for vitamins as long as the marks included some difference, and that a number of owners believed that various PLUS marks could co-exist on the register without causing confusion, provided there are differences between the marks. The Board applied the same reasoning here.

The Board found that the strength or weakness of the cited mark is the most important factor. It concluded that the addition of NYC to Applicant's mark is sufficient to distinguish the applied-for mark from that of the cited registration.

Because of the highly suggestive nature of the mark “Grand Hotel,” the proliferation of registered “Grand Hotel” marks and the unregistered uses of “Grand Hotel” marks, the mark “Grand Hotel,” itself, is entitled to only a very narrow scope of protection or exclusivity of use. Further, because of the highly suggestive nature of GRAND HOTEL and the number of third-party GRAND HOTEL marks, we conclude that consumers are able to distinguish between different GRAND HOTEL marks based on small differences in the marks, including the addition of a geographic term.

And so the Board reversed the refusal.

Text Copyright John L. Welch 2012.

CAFC Upholds TTAB's Affirmance of Section 2(d) Refusal of XCEED Over X-SEED & Design for Agricultural Seed

jwelch@ll-a.com (John L. Welch) — Thu, 22 Mar 2012 09:16:52 GMT

In a precedential ruling, the CAFC upheld the TTAB's affirmance (here) of a Section 2(d) refusal to register the mark XCEED for agricultural seed, on the ground of likely confusion with the registered mark X-SEED & Design (shown below) [SEED disclaimed] for agricultural seeds. The court held that the Board's factual findings were supported by substantial evidence, and it agreed with the Board's legal conclusion that confusion is likely. In re Viterra Inc., Appeal No. 2011-1354 (Fed. Cir. March 6, 2012) [precedential].

The Board gave "heavy weight" to the identity between the goods, and presumed that the goods travel in the same channels of trade to the same classes of customers (there being no limitations in the identifications of goods). It found that the literal portion of the cited mark was the dominant portion, that the literal portions of the two marks are at least virtually identical in sound, and that both marks play on the laudatory word "exceed." As to appearance, the Board applied the (now-jettisoned) "reasonable manners" standard, finding that one reasonable variation of XCEED could include a large capital X followed by small letters.

Applicant Viterra's appeal focused on the first DuPont factor, the similarity of the marks. Viterra argued that its standard character mark should not be construed so broadly as to cover the distinctive form of the cited mark, that the marks are phonetically different, and that the marks have different connotations.

Vittera urged the court to explain how standard character marks should be compared to design marks, and specifically argued that the court should "readdress and clarify" its ruling in Citigroup, Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253 (Fed. Cir. 2011). There, the CAFC rejected the Board's approach of considering the "reasonable manners" in which the standard character might be displayed, and it declared that the TTAB "should not first determine whether certain depictions are 'reasonable' and then apply the DuPont analysis to only a subset of variations of a standard character mark." [This still makes little sense to me. Is the Board supposed to consider "unreasonable" manners of display as well? - ed.].

Rather, “[t]he T.T.A.B. should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font, style, size and color and the other mark.” [quoting Citigroup]. We noted, as we had in prior cases, that "illustrations of the mark as actually used may assist the T.T.A.B. in visualizing other forms in which the mark might appear." Accordingly, our decision in Citigroup discarded the Board’s "reasonable manners" standard in favor of a standard that allows a broader range of marks to be considered in the DuPont analysis when a standard character mark is at issue.

Although the Board here applied the "reasonable manners" approach later discarded in Citigroup, that decision did not change the outcome here. Citigroup broadened the range of variations that could be considered (i.e., not just "reasonable" ones), and so the Board's approach below was actually more favorable to Viterra that the Citigroup approach.

Viterra contended that Citigroup should apply only in inter partes proceedings, but the court saw no reason to make that distinction. Indeed there is no doubt that the DuPont factors apply in both ex parte and inter partes matters.

Viterra next argued that the dominant portion of its mark is the letter "X," but the court found that substantial evidence supported the Board's position that the literal element "X-seed" is the dominant portion. The fact that SEED was disclaimed in the cited mark does not affect its inclusion in the dominant portion of the mark.

As to pronunciation, the court once again proclaimed that there is no correct pronunciation of a mark. [What about BLACK CAT, APPLE, or TTABLOG? Well, forget the third one, but what about the first two? - ed.]. Any minor differences in the sound of the marks may go undetected by consumers, as the Board pointed out.

Finally, as to connotation the court again refused to disturb the Board's factual finding that it is "reasonable" that purchasers may give the same laudatory meaning to both marks.

And so the court concluded that any minor differences in the marks are insufficient to outweigh the remaining DuPont factors, and so it affirmed the Board's ruling.

TTABlog comment: Another well-written trademark decision by Judge O'Malley. I just wish the court would explain more clearly this new way of considering standard character marks.

Text Copyright John L. Welch 2012.

Withholding important information from legal advisers (No. 45 in our list of IP mistakes)

Thu, 22 Mar 2012 05:49:07 GMT

Some years ago I was discussing the structural features required in a new IP management system we were considering purchasing with my IT manager. We were looking at different interactive modules for docketing, products, agreements etc. After agreeing on the “must haves” and the “nice to haves”, my IT expert made the astute comment that, [...]

Please do visit our site to see the rest of this post.

Pouring molten pyrite?

c8asf5@yahoo.com (Lawrence B. Ebert) — Thu, 22 Mar 2012 05:11:40 GMT

The "Alice in Wonderland" episode of CSI on March 21, 2012 involved an incident where a victim died after having gold poured down his throat. Ted Danson did an XRF and determined that it was not gold, but rather pyrite.

But pyrite doesn't exactly melt, especially when sulfur activity is not fixed.

Ask Jeeves notes: Pyrite has no melting point but exhibits a peritectic decomposition point at 1016 Kelvin where it decomposes to FeS and sulfur.

Charriol Files Cable Motif Jewelry Copyright and Trade Dress Infringement Lawsuit

Thu, 22 Mar 2012 04:18:52 GMT

A’lor International Ltd., dba Charriol USA, is suing sixteen defendants for manufacturing and selling numerous jewelry designs incorporating a nautical cable motif that allegedly infringe Charriol’s copyrights and trade dress. Charriol claims that it has been designing unique jewelry designs for decades, which have either been registered with the U.S. Copyright Office or are pending registration. To see Charriol’s designs and allegedly infringing products, click here. Through many years of sales, advertising, and media coverage, Charriol alleges that the cable motif has become its trade dress, meaning that the jewelry’s visual appearance functions as a trademark and consumers associate the appearance with the source of the jewelry. Charriol also asserts a breach of implied contract against four defendants that received samples of the jewelry and agreed to only use the designs if they compensated Charriol.

Charriol’s cable jewelry designs are reminiscent of David Yurman’s twisted cable design http://www.davidyurman.com/shoponline/product.aspx?itemid=Z3040&folderid=/gifts/cablekids&keyword=cable. Indeed, Yurman has filed numerous lawsuits for infringement of his copyrights and trade dress in the twisted cable jewelry design. In Yurman Design, Inc. v. PAJ, Inc., the defendant appealed the jury’s verdict awarding Yurman damages for PAJ’s infringement of Yurman’s copyrights and trade dress. The Second Circuit affirmed the finding of copyright infringement despite the use of cable designs by others in the jewelry industry because “the originality in Yurman's four designs inheres in the ways Yurman has recast and arranged those constituent [preexisting] elements. We have carefully reviewed the cable jewelry produced by third parties that PAJ submitted to the jury, and cannot conclude that any of Yurman's four combinations are nonoriginal as a matter of law.” The appellate court, however, reversed Yurman’s trade dress victory because his definition of the trade dress as "the artistic combination of cable [jewelry] with other elements" was overbroad or generic:

Yurman's inability to articulate its trade dress at a lower level of generality is not altogether surprising, given (1) that there are 18 different Yurman pieces in the product line it seeks to protect (eight rings, seven bracelets, and three pairs of earrings), four of which the jury found to be separately copyrightable; and (2) Yurman's concession that the pieces are composed exclusively of elements commonly used in the jewelry industry. A unique combination of elements may make a dress distinctive, but "the fact that a trade dress is composed entirely of commonly used or functional elements might suggest that the dress should be regarded as unprotectible or 'generic,' to avoid tying up a product or marketing idea."

Charriol defines its trade dress as “interwoven nautical cable threads; twisted stainless steel components; 1.0, 1.2, 1.5, 1.6, 5.5, 3.0, and 6.0 millimeter cable composition; electro-polished juxtaposed multi-strand cable threading; treated soft-textured components; poly/physical vapor deposition-treated design elements.” Assuming that it does not suffer Yurman’s overbroad or generic definition of its trade dress, it will be interesting to see how Charriol will argue that its cable jewelry design trade dress has been substantially exclusive in light of Yurman’s similar cable jewelry design.

The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).

Precedential No. 10: TTAB Finds COLOMBIANO COFFEE HOUSE Confusingly Similar to COLOMBIAN Certification Mark for Coffee

jwelch@ll-a.com (John L. Welch) — Thu, 22 Mar 2012 00:48:26 GMT

The Board affirmed two refusals to register the mark COLOMBIANO COFFEE HOUSE for "providing food and drink" [coffee house disclaimed]. First, it found the applied-for mark likely to cause confusion with the certification mark COLOMBIAN for "coffee." Second, the Board found the mark merely descriptive of Applicant's services under Section(2)(e)(1). In re Accelerate s.a.l., 101 USPQ2d 2047 (TTAB 2012) [precedential].

Likelihood of confusion: The same test for likelihood of confusion applies to certification marks as to trademarks: the duPont analysis. But because the certification mark owner does not use the mark, the Board considers the mark as applied to the goods or services of the users of the certification mark.

Not surprisingly, the Board found the dominant portion of the applied-for mark to be the word COLOMBIANO, the marks to be very similar in appearance and sound, and the connotations and commercial impressions of the marks to likewise be very similar. Spanish-speaking consumers will recognize COLOMBIANO as the Spanish equivalent of "Colombian," both words denoting something from the country of Colombia. Other consumers, because of the near visual and aural identity of the terms, will likely conclude that they have similar meanings.

Because Colombia is renowned for coffee beans, consumers will perceive Applicant's mark as indicating that Applicant serves Colombian coffee. The certification mark likewise connotes that the coffee bearing the mark comes from Colombia.

And so the Board found the marks to be "overall very similar."

As to the involved goods and services, the Board recognized that, under Jacobs v. International Multifoods, food items and restaurant services are not automatically considered to be related for Section 2(d) purposes. "Something more" is required. Here, Applicant's website indicated that it renders coffee house services. Third-party registrations showed that services of the type identified by Applicant may emanate from the same source as coffee products. That was enough to meet the Jacobs requirement.

The Board concluded that consumers encountering Applicant's services offered under the mark COLOMBIANO COFFEE HOUSE would likely believe that Applicant was authorized to use the certification mark, and assume that Applicant is licensed by or associated with the Registrant.

Mere descriptiveness: The Examining Attorney maintained that COLOMBIANO COFFEE HOUSE immediately describes the nature of, or a key feature of, Applicant's services: a coffee house offering Colombian coffee. The Board agreed. Based on the record evidence, it found that consumers will immediately understand the term COLOMBIANO to describe a particular type of coffee that Applicant will serve, i.e., coffee that has certain qualities and characteristics associated with authentic Colombian coffee.

The Board noted that the Examining Attorney did not refuse registration on the ground of geographical descriptiveness under Section 2(e)(2), or deceptive misdescriptiveness under Section 2(e)(3), although those grounds were conceivably applicable, but rather on non-geographical grounds.

And so the Board affirmed both refusals.

TTABlog comment: What about a joint on the Upper West Side of New York City, around 116th and Broadway, called Columbia Coffee House? Grounds for complaint?

Text Copyright John L. Welch 2012.

I think we've found our new "Where's the Beef?"

rit26@law.georgetown.edu (Rebecca Tushnet) — Thu, 22 Mar 2012 00:26:02 GMT

Etch-a-Sketch Mitt Romney. Apparently if you shake your mobile device you get a new picture each time. Nominative fair use of the word mark and the image under the principle of Mattel v. Walking Mountain, right?

Drinks are on Us

info@fed-soc.org (info@fed-soc.org) — Wed, 21 Mar 2012 21:00:06 GMT

This month, we’re celebrating our three-year anniversary of the launch of DuetsBlog (if you’re feeling nostalgic, here is Steve’s inaugural post). Three years isn’t a long time in the scheme of things, but that’s three years of posts, five days a week, from our authors and amazing guest bloggers. Regardless of the work we’ve put... Continue Reading

This month, we’re celebrating our three-year anniversary of the launch of DuetsBlog (if you’re feeling nostalgic, here is Steve’s inaugural post).

Three years isn’t a long time in the scheme of things, but that’s three years of posts, five days a week, from our authors and amazing guest bloggers. Regardless of the work we’ve put into Duets over the years, we’d be nothing without our readership.

So, you’re all invited to our Birthday Bash…in Minnesota. We know that means most of you won’t be able to swing a flight over to Minneapolis next week (or, even if you could, why make the trip for a cocktail party?), so we hope you’ll be there in spirit. For those who can make it, space is limited, so RSVP as soon as you can.

Yes. Free drinks. Free food. And free-flowing conversation.

Sounds like a good evening to me.

Deets below. We hope to see you there!

Tuesday, March 27

5:00 p.m. CST

At the offices of Winthrop & Weinstine

In Minneapolis, MN

(for more information or to RSVP, click here)

U.S. Supreme Court Speaks on Patent-Eligibility of Diagnostic Method Claims

barkhoff@mbhb.com ( Aaron F. Barkoff) — Wed, 21 Mar 2012 20:39:44 GMT

Mayo Collaborative Services v. Prometheus Labs., Inc., No. 10-1150 (U.S. 2012) by Nabeela Rasheed On Tuesday, in a unanimous opinion authored by Justice Breyer, the United States Supreme Court addressed the issue of patent eligibility of diagnostic method claims. The...

Mayo Collaborative Services v. Prometheus Labs., Inc., No. 10-1150 (U.S. 2012)

by Nabeela Rasheed

On Tuesday, in a unanimous opinion authored by Justice Breyer, the United States Supreme Court addressed the issue of patent eligibility of diagnostic method claims. The issue was simple: is a claim to a method of optimizing a particular therapy using specific diagnostic steps eligible for patent protection under 35 U.S.C. § 101? The Supreme Court answered with a resounding "no." The exemplary patent claim reviewed in the decision was as follows:

A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,

wherein the level of 6-thioguanine less than about 230 pmol per 8x10⁸red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

wherein the level of 6-thioguanine greater than about 400 pmol per 8x10⁸red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

The Court's decision was that this claim was not eligible for patent protection because it merely recites laws of nature. In arriving at this decision, the Court stated that a claim to "a process that focuses upon the use of a natural law [must] also contain other elements or a combination of elements, sometimes referred to as an 'inventive concept,' sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself."

In addition to making an obviousness inquiry part of the patent-eligibility analysis, the Court also recognized that there may be an "overlap" between the § 101 patent-eligibility inquiry and the § 102 novelty inquiry. The United States government filed an amicus brief in which it urged the Court to find the patent claim eligible for patent protection, but also unpatentable based on prior art grounds. The Supreme Court declined to accept the government's position in preference of the "better established inquiry under §101," hence making the "law of nature" exception a strong defense against diagnostic method claims. It appears that this decision subsumes the patentability requirements from §§ 102, 103 and possibly 112 as well into the initial patent-eligibility inquiry under § 101.

While raising the patent-eligibility bar for diagnostic method claims by making it clear that additional steps are needed to render such claims patent-eligible, the decision includes very little guidance as to what type of steps would be "significant" enough to pass muster in converting a law of nature to a patent-eligible application. The decision did categorically note that claims to "a new drug" or "a new way of using an existing drug" are patent-eligible.

This decision has significant ramifications for diagnostic companies and the field of personalized medicine. The decision may push such companies towards trade secret protection for diagnostic methods. The Court noted that "we must recognize the role of Congress in crafting more finely tailored rules where necessary . . . . We need not determining here whether, from a policy perspective, increased protection for discoveries of diagnostic laws of nature is desirable."

The decision decreases the protections available to the diagnostic methods industry as compared to all other industries and takes away rights that were previously available to a valuable economic sector of the biotechnology industry. The decision also may influence the Supreme Court's decision whether to review AMP v. Myriad Genetics, which is pending the Court’s decision on petition for certiorari.

SXSW Lesson 2: Big Copyright Doesn’t Get the Web

Wed, 21 Mar 2012 20:14:07 GMT

Big copyright holders, IE: RIAA and the MPAA, don't truly understand the Web or the tech community. The surprise is that they aren't even trying.

In yesterday’s SXSW Lesson regarding what the Web didn’t learn from SOPA and PIPA, I made a promise to address how the major copyright industries, in particular the record labels and the movie studios, distrust the Web.

Though this might seem to be a “duh” lesson to learn from SXSW, there had been some movement in recent weeks, especially following the SOPA/PIPA ordeal, to open up a dialogue between the two sides. Cary Sherman himself participated in such an effort last month (with mixed results) and, despite the battle scars, there seemed to be a willingness on both sides to at least try.

SXSW should have been a great place for some of that dialog to happen, but it didn’t.

Searching through the panels, I found none that had any major representatives from copyright industries (this could in part be to how early the SXSW panels are picked). No representatives were no the trade show floor, no events were being held by major copyright holders and the conversation was completely one-sided.

While I’m sure that there were plenty of representatives and events at the film and music conferences, they weren’t at the Interactive, at least not in a way I noticed. The Copyright Enforcement Group, one of the biggest players in the Bittorrent lawsuits, had posters up in the Interactive areas but was primarily present for the overlapping film portion.

It became clear to me pretty quickly that big copyright doesn’t understand the Web and, even worse, isn’t trying to understand it. It’s a huge mistake because, even ignoring piracy, the Web is a big part of the future for any creative industry with movie streaming, MP3 downloads and eBooks all rising in popularity.

But while all of this is true, the lack of understanding is odd because, deep down, they really are so much alike.

The Back Story to Hollywood

In the early 1900s, the movie studios were almost exclusively east coast operations, specifically in and around New York. However, in and around the 1910s, the studios began to flee to the west coast.

There were several reasons for the move, including longer days and more sun, which made shooting movies easier in the days before very bright electric lights. However, one of the big motivating factors was Thomas Edison’s patents on several elements key to recording film. Edison had been successful in shutting down many productions in New York and the studios decided to move where Edison couldn’t as easily enforce his patents rather than paying up.

(Note: There is a misconception that the move to Hollywood was driven by a lack of copyright protection in the state of California, however, that does not appear to be the case.)

However, Hollywood did grow up and become an industry unto itself. While there are many criticisms of the studios’ accounting practices and respect for intellectual property, it’s very unlikely that something as egregious as the exodus to Hollywood would happen today.

The Internet, however, closely resembles the Hollywood of the 1910s. Instead of moving to California to escape Edison’s patents, the many (often questionable) startups move to countries like China and Ukraine to avoid Hollywood’s copyrights. Does that make it ethical? No. It wasn’t when the movie studios did it a century ago and it’s not right today, but it is the same mentality and spirit at play.

The truth is though that every creative industry, be it publishing, music, movies or art all began with a rebellious streak and a desire to something big, a desire still held by the artists within it. If these industries want their maturity to not equal becoming antiquated, they have to find some of that spark again and be ready to do exciting and brave things once more.

Kindred Spirits Unite

The tech industry’s frustration with the big copyright holders is that they are seen as dinosaurs that are standing in the way of progress. Big copyright sees the Web is a bunch of companies and individuals that want to get/distribute/sell their content without renumeration. On matters of perception, i a battle of anchors vs. freeloaders.

The truth is that the Web is going to mature as an industry. Though piracy will always be a problem, through a combination of laws, social norms, technology and business models, the Web will stop being so much of a rebel media and become, more or less, the media.

Much of that process is already happening. The recent legal battles such as Grokster and Megaupload have steered more and more companies away from piracy. While piracy is still a concern, it’s becoming more and more of an outlier, something fewer and fewer actual customers do. Sure, there’s a very long way to go and probably decades more of settling in the future but businesses are generally realizing it’s better to work with copyright holders than against them.

But the true magic isn’t going to happen until the big copyright holders catch some of the infectious optimism of the tech industry and starts working with them openly to find great ways to change media. Sure, iTunes, Spotify and Netflix, etc. are all great, but they are extensions of offline models brought online.

This won’t be easy to do and the tech industry will have some growing up too, including losing some of its feelings of entitlement (more on that tomorrow), but the true power of the Web as an industry and a business model won’t be unlocked as long as the content and the tools are kept in separate buckets. However, they won’t be mixed until everyone involved can be ensured they will be compensated appropriately.

There’s no easy way to do that but it can’t be done at all unless people are talking and, for that to happen, someone has to take a risk and big copyright had a chance to do just that at SXSW and missed it.

That, most likely, will remain the case until big copyright truly understands the Web. Because, only when you understand it, can you truly get excited by it and only then are you motivated to see what it can really do.

Hopefully this understanding will come sooner rather than later.

Bottom Line

In the end, one of the things the big copyright holders need to realize is the urgency of this issue. The Web moves at a much faster pace than they do. A year to a movie studio is barely enough time to greenlight a major film, for a record label it might be enough time to produce an album and a publisher might get a book out in that time.

However, on the Web, companies can be founded, become overnight successes, get bought out and closed down all within the space of 12 months. The Web is not patient and by next SXSW the climate is going to be very different.

If big copyright insists on holding its conversations at “safe” conferences with only a few tech representatives, it won’t truly understand the Web nor will it begin to really get involved.

Passion comes through emersion and emersion is scary. However, if you don’t understand the direction much of your business is going, you’ll never take full advantage of it and both industries will suffer greatly.

SpicyIP Announcements: Socio-Legal Review Essay Competition

Wed, 21 Mar 2012 19:33:26 GMT

The Socio-Legal Review, the student edited peer reviewed journal of the National Law School of India University, Bangalore is holding the 2nd Annual SLR Essay Competition.

Students from law schools and other undergraduate courses in India and around the world can participate and submit their essays on the topics mentioned below.

1. Emergent Civil Society: Redefining or negating participative democracy?

2. Rule of Law in Fledgling Societies: Is parliamentary democracy still the best solution? Discuss and highlight possible alternatives in light

of the Arab Spring and Occupy Protests.

3. Freedom of Speech and Role of the Media: To what extent can and should the Press Council of India regulate content and reduce sensational journalism

Word Limit: 2,500 to 3,000 words (exclusive of footnotes) and the essay is to be submitted via email to sociolegalreview.nls@gmail.com and the deadline for submissions is 30th April, 2012

The essay competition is supported by a trust floated by Smt and Sri S.V.Joga Rao (visiting professor, NLSIU) In memory of their parents

Additional information can be found on the website www.sociolegalreview.in

Mayo v. Prometheus: Natural law ++ Significant application ~ Patent

Wed, 21 Mar 2012 18:57:02 GMT

The United States (US) Supreme Court recently invalidated an extremely broad patent, allowed by the Federal Circuit (CAFC), covering a method for determining the proper dose of a drug used to treat autoimmune disorders. We had previously, in a guest post by Sooraj Abraham, briefly discussed about the case, Mayo Medical Labs. v. Prometheus Labs., Inc. This post provides a briefly discusses the judgment in Mayo, and its implications upon Indian patent law.

In Mayo, a unanimous Court held that an individualized patient dosing strategy is not eligible for patent protection because the process is effectively an unpatentable law of nature. The CAFC had earlier held that the claims were patentable because they included substantial physical limitations.

In reaching the conclusion, the Court discussed Einstein's theory of relativity, and Newton's laws and stated that neither would have been patentable. Similarly, an individualized patient dosing strategy could not be patented merely because the discovery that the blood level of a compound in a human correlated with dosage of a drug. In the court's opinion, Justice Breyer wrote that the patent "simply tells doctors to engage in well-understood, routine, conventional activity previously engaged in by scientists who work in the field."

Two distinct conclusions may be made from this decision. (1) Law of nature (even if newly discovered) is itself unpatentable- (as before); and (2) An application of that law of nature (even if newly discovered) must not merely rely upon the application of the law, but add to the law. Although “laws of nature, natural phenomena, and abstract ideas” are not patentable subject matter under §101 of the Patent Act, Diamond v. Diehr, 450 U. S. 175, 185, “an application of a law of nature . . . to a known structure or process may [deserve] patent protection,” id., at 187. But to transform an unpatentable law of nature into a patenteligible application of such a law, a patent must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Gottschalk v. Benson, 409 U. S. 63, 71–72. It must limit its reach to a particular, inventive application of the law.

"...[A]n application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” On the other hand, the “application” must be “significant,” not “too broadly preempt” use of the law, and include other elements that constitute an “inventive concept” that is significant and separate from the natural law itself. "

Justice Breyer in this decision wrote, that the Supreme Court had, "....the cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like." However, the Court did not rule out other highly debated patents (software patents?). Hence this judgment in my opinion, is totally focused on the issue at hand (that no patents for correlating metabolite level and drug dosages) and does not provide guidance on these other areas, leaving them for another case.

Implications upon Indian law: This decision provides enough guidelines (standard paragraphs) to examiners to refuse applications on the grounds that it is merely an application of law of nature without any additional elements that constitute an inventive step.
As a side note, the subject line indicates that, an applicant must significantly to a natural law to maybe obtain a patent.

Survey on USPTO Fees and the Backlog

dcrouch@patentlyo.com (Dennis Crouch) — Wed, 21 Mar 2012 18:29:00 GMT

The following four question survey should take less than 1 minute to complete. Thanks! Dennis Crouch, dcrouch@gmail.com Create your free online surveys with SurveyMonkey, the world's leading questionnaire tool.The following four question survey should take less than 1 minute to complete.
Thanks! Dennis Crouch, dcrouch@gmail.com

Create your free online surveys with SurveyMonkey, the world's leading questionnaire tool.

No Cloud Over the Patriot Act

jwhelan@algoodbody.com (John Whelan) — Wed, 21 Mar 2012 17:39:08 GMT

Numerous laws and treaties are in place that bolster the ability of law enforcement authorities to co-operate across borders in the investigation, apprehension and conviction of serious criminals and terrorists. In the US these laws, which are often misunderstood, have recently come under scrutiny because of amendments to the USA Patriot Act 2001. There has been a suggestion that the US legislation provides over-broad powers for US law enforcement authorities to subpoena business records from companies connected with the US, regardless of location or jurisdiction, and that the cloud computing sector is particularly vulnerable. A&L Goodbody has produced a comprehensive article which discusses the issues around data security and cloud computing in the context of the Patriot Act and equivalent Irish laws. The fact of the matter is that there is no "cloud" over the new legislation.