Friday, December 23, 2011

"Hitler Reacts to SOPA"

Sooner or later, someone was bound to do a Hitler "Downfall" parody about SOPA.

Best humorous line: "Don't cry. Disney owns the rights to that emotion."

Best serious line:  "Piracy is a service problem.  The way to defeat piracy is to provide a better service than the pirates. . . . You don't get to destroy the Internet because it doesn't fit your business model!"

Tuesday, December 20, 2011

UMG v. Veoh Affirmed!

Today the Ninth Circuit affirmed UMG v. Veoh, holding that Veoh's user-generated content website is entitled to the "safe harbor" protection of 17 U.S.C. § 512.  This is great news for the Internet.  I'll update this later to provide an analysis of the opinion.

UPDATE:  I first wrote about this case back in May, when I reported on the oral argument in the case -- see that link for details.  Briefly, UMG v. Veoh is about UMG's claim that Veoh's user-generated content (UGC) web site contains copies of UMG's copyrighted music, and that Veoh should be secondarily liable when its users post allegedly infringing music on the Veoh site.  The trial court had granted summary judgment to Veoh on the grounds that it was immune from suit since it complied with the “safe harbor” notice-and-takedown procedures of the Digital Millennium Copyright Act, 17 U.S.C. § 512(c).  The case raises many of the same issues as the Viacom v. YouTube case presently pending in the Second Circuit Court of Appeals, where the trial court also granted summary judgment to YouTube's video service, which is similar in many respects to Veoh's service.

The Ninth Circuit affirmed Veoh's safe harbor under § 512 on all relevant issues:
  • "Storage at the direction of a user": "By its terms, § 512(c) presupposes that service providers will provide access to users’ stored material, and we would thus contravene the statute if we held that such access disqualified Veoh from the safe harbor."  On this issue, the Court cited EFF's amicus brief (which I co-authored): "As amici note, these access activities define web hosting — if the web host only stored information for a single user [as UMG argued], it would be more aptly described as an online back-up service."  The Court thus agreed that Veoh stored content at the direction of a user.  Storage "encompasses the access-facilitating processes that automatically occur when a user uploads a video."
  • The "knowledge" requirements: UMG argued that Veoh's general knowledge that there were music videos on its web site meant that Veoh had knowledge of alleged infringing activity.  The Court disagreed for several reasons.  First, "As an initial matter, contrary to UMG’s contentions, there are many music videos that could in fact legally appear on Veoh. . . . Copyright holders know precisely what materials they own, and are thus better able to efficiently identify infringing copies than service providers like Veoh, who cannot readily ascertain what material is copyrighted and what is not."  Thus, the Court held that "merely hosting a category of copyrightable content, such as music videos, with the general knowledge that one’s services could be used to share infringing material, is insufficient to meet the actual knowledge requirement under § 512(c)(1)(A)(i)."  Instead, the statute requires "specific knowledge of particular infringing activity."
  • No requirement to filter: The Court declined to require that a service provider like Veoh was obligated to implement filtering technologies. The Court rejected plaintiffs' argument that "Veoh should have taken the initiative to use search and indexing tools to locate and remove from its website any other content by the artists identified in the notices."
  • The financial benefit and control requirement: The Court held that "the 'right and ability to control' under § 512(c) requires control over specific infringing activity the provider knows about."
  • The Court rejected UMG's argument that proof of vicarious liability would automatically disqualify a service from the safe harbor.
This is a big victory for service providers, user-generated content sites, the viewing public, and the Internet generally.

Other posts discussing the case include those by EFF, Techdirt, the Hollywood Reporter, the Courthouse News Service, and Gigaom.

When Pigs Fly: EFF Files Amicus Brief Supporting . . . Viacom

Yesterday EFF filed my latest amicus brief, which supports . . . Viacom.  
EFF doesn't normally support Viacom, but in Brownmark v. Comedy Partners, we did.  Brownmark had sued Comedy Partners, Viacom, and other defendants for copyright infringement over Brownmark's music video.  An episode of South Park included a parody of Brownmark's video -- it's well established that such parodies are fair use.  The trial court granted Viacom's motion to dismiss the case on fair use grounds, and Brownmark appealed.  Brownmark claimed it was improper for a court ever to dismiss a case on fair use grounds without discovery and possibly a trial.  EFF supported the defendants on this legal issue.  
It's important for courts to be able to dispose of fair use cases quickly when the fair use is obvious (which it was in this case; see the videos here if you want to).  Requiring artists and others to go through a trial even when fair use is clear-cut will discourage them from fighting the claims and from innovating in the first place, as EFF's press release explains

Best of luck to Viacom and Comedy Partners on this particular appeal.

Sunday, December 18, 2011

Turn Off Your Computer and Go to Sleep

Read THIS when you're done with the Internet for the evening.

Thursday, December 8, 2011

Judge Newman Sure Likes Patents

Judge Newman of the U.S. Court of Appeals for the Federal Circuit has a reputation for being in favor of strong patent protection,  In case there was any doubt, read her dissenting opinion today in In Re Construction Equipment Co.  In the opinion, she basically says that the ex parte reexamination statute is unconstitutional if it can be used to invalidate a patent that already survived a validity challenge.  Fortunately, I don't think many people agree with Judge Newman on this.

It's Hard to Imagine, But SOPA/PROTECT-IP Will Be Worse Than This

In case you think that SOPA or PROTECT-IP will be bad without judicial supervision of takedowns, read this TechDirt article to see how bad things can be even with judicial supervision.  Here are the first two paragraphs of the article:

Imagine if the US government, with no notice or warning, raided a small but popular magazine's offices over a Thanksgiving weekend, seized the company's printing presses, and told the world that the magazine was a criminal enterprise with a giant banner on their building. Then imagine that it never arrested anyone, never let a trial happen, and filed everything about the case under seal, not even letting the magazine's lawyers talk to the judge presiding over the case. And it continued to deny any due process at all for over a year, before finally just handing everything back to the magazine and pretending nothing happened. I expect most people would be outraged. I expect that nearly all of you would say that's a classic case of prior restraint, a massive First Amendment violation, and exactly the kind of thing that does not, or should not, happen in the United States.

But, in a story that's been in the making for over a year, and which we're exposing to the public for the first time now, this is exactly the scenario that has played out over the past year -- with the only difference being that, rather than "a printing press" and a "magazine," the story involved "a domain" and a "blog."
This nightmare happened to a blog represented by my former partner Andrew Bridges.  So much for the First Amendment!

Sunday, December 4, 2011

Dave Barry's Holiday Gift Guide!

It's time for . . . Dave Barry's annual Holiday Gift Guide! This year the Guide is so good that I am actually tempted to buy one of these (the Wrap-a-Nap, of course).

Friday, December 2, 2011

Stephen Colbert Explains SOPA

In the first video, don't miss the Mickey Mouse doll with an anti-infringement slogan.  And the fact that the FBI admits that its estimate of the dollar amount lost to piracy has no factual support.  In the second video, don't miss Colbert's and Zittrain's debate about whether Justin Bieber should go to jail.  (They seem to agree that he should, but for different reasons.)

Federal Circuit Orders Venue Transfer Out of Delaware

In recent years, the Federal Circuit has been granting petitions for writs of mandamus and ordering venue transfers of cases filed in the Eastern District of Texas.  Today the CAFC granted such a petition in a case filed in Delaware, against a defendant incorporated in Delaware.  In Re Link_A_Media.  Delaware district courts had been routinely denying venue transfer motions where the defendant was incorporated in Delaware, largely on the theory that the defendant "is incorporated in Delaware and, thus, cannot claim surprise at being brought into the Delaware courts for litigation.”

Today the Federal Circuit ruled that venue transfer motions cannot be denied solely on the basis of the defendant's state of incoroporation, but that all the relevant factors under 28 U.S.C. § 1404(a) must be considered.  The case involved a Northern California-based defendant sued by a Bermuda-based holding company affiliated with a Northern California-based corporation (Marvell).  Thus, all the relevant witnesses on both sides were in Northern California.  The CAFC also commented that the U.S. District Court for the Northern District of California "is equally equipped to address" patent cases as is the District of Delaware (hooray for us).

The Court did not rule on what would have happened if the plaintiff had also been incorporated in Delaware -- that is perhaps the next case.


Wednesday, November 30, 2011

In View of Events From the Last Several Days, Are PROTECT-IP and SOPA Even Necessary?

I've written in the past about the so-called PROTECT-IP act and SOPA, two proposed bills currently before Congress.  Proponents of the bills claim that they are necessary to protect legacy content industries against "rogue websites" that supposedly enable intellectual property theft.  As other opponents of the bills and I have noted, the bills are overbroad, overreaching, and will do more harm than good.

Events of the last several days suggest that the government and IP holders are not afraid to use (and perhaps abuse) existing case law and court procedures to deal with "rogue" websites.  In particular:

  • On Monday and again today, several sources reported about a Nevada district judge granting a far-reaching TRO sought by Chanel, the maker of luxury goods.  As a private party, Chanel asked the court to seize domain names that allegedly sold counterfeit goods.  The Court didn't simply grant an injunction against the defendants prohibiting them from using any Chanel marks or selling any Chanel products.  It went further and ordered (1) an injunction against the top-level domain name registry, directing it to change the registrar of record for the domain names to GoDaddy; (2) an injunction telling GoDaddy to change the DNS data for the domain names so the domain names resolve to a site where a copy of the case documents are hosted; and (3) an order requiring Google, Bing, Yahoo, Facebook, Google+, and Twitter to "de-index and/or remove [the domain names] from any search results pages."

It's not clear whether the ICE seizures actually comply with due process, or are otherwise illegal.  It's even more unclear whether the Nevada court's order is legal (among other things, it doesn't seem proper for a court to enjoin non-parties such as Google, Bing, etc.)  However, if the government already has the power to seize websites, and if existing law already gives private companies such as Chanel the right to obtain such broad remedies, it's hard to see what PROTECT-IP act and SOPA will really add to stopping "rogue websites."  Perhaps, as we have argued, what the proponents of those bills really want is to obtain far broader powers against legitimate Internet-based companies and free speech.

Tuesday, November 29, 2011

Internet "Piracy" Explained

When legacy content industry lobbyists say that file sharing is "theft" or "piracy," their facts are not quite right.  Here's a handy diagram explaining the situation.

Saturday, November 26, 2011

Judge Posner Puts a Picture of an Ostrich in an Opinion

Judge Posner of the Seventh Circuit put a picture of an ostrich -- and something worse -- in this opinion. Scroll down to pages 5-6.

Friday, November 18, 2011

Fenwick's Magnum Opus on Internet Copyright

Fenwick & West has prepared a 557-page paper entitled, "Advanced Copyright Issues on the Internet."  I obviously haven't read this entire paper, but at least parts of it seem to include a comprehensive discussion of Internet-related Copyright law.

Thursday, November 17, 2011

Miscellaneous Links About Yesterday's SOPA Hearings

Yesterday the House Judiciary Committee held a hearing on SOPA, the so-called "Stop Online Piracy Act."  The above site has a link to a webcast of the hearings.  Techdirt's summary of the hearings is here; as that summary notes, surprisingly some of the Representatives expressed concerns about the overreaching aspects of the proposed act.  (Techdirt has many other articles about SOPA and the hearings.)

Here are some other links about SOPA:

Wednesday, November 16, 2011

Planning Ahead for Thanksgiving?

 Here's some suggestions.  But note that several people advise avoiding "The ancient marshmallow yams of sorrow."

Wednesday, November 9, 2011

Post-Hearing Letter Briefs in Viacom v. YouTube

The Second Circuit heard oral argument in Viacom v. YouTube and Premier League v. YouTube on October 18, 2011.  Following the argument, on October 25, the Court asked the parties to submit letter briefs on the following two questions:

The parties are hereby ordered to submit letter briefs, not exceeding ten pages doublespaced, on the following questions: (1) whether and how the red-flag knowledge provision would apply under the Defendants’ “specific” knowledge construction of § 512(c)(1)(A); and (2) whether YouTube’s “syndication” of videos to third parties falls outside the scope of safe harbor protection for activities that occur “by reason of . . . storage at the direction of a user” under § 512(c)(1).
YouTube's November 1 letter brief is here; the plaintiffs' joint November 8 letter brief is here.  Needless to say, the parties didn't agree on very much.

Monday, November 7, 2011

SOPA: A Really Bad Idea

Some people have asked me about SOPA, or the "Stop Online Piracy Act."  SOPA is a House bill that is the House's version of PROTECT-IP, a Senate bill.  

If it passes, SOPA would be a disaster for technology companies. SOPA would allow the legacy content industries to use litigation to shut down any new technology they didn't like. A neutral analysis of the act is here.  Other people have written about some of the many problems with the bill.  EFF has several articles about the act, including this one, this one and this one. Techdirt has many articles about the act, including this comprehensive article, this article describing how the bill's supporters misstate what it would do, and this article discussing how SOPA would harm innovation.  Here's a Techcrunch article about the bill. 

There are several petitions opposing the act. I have signed two of them, one sponsored by the EFF and one on the website.

UPDATE: Here is Techdirt's even more comprehensive post about SOPA.

MP3Tunes Amended Opinion: DMCA Applies to pre-1972 Sound Recordings

In August I mentioned a ruling in the Capitol Records v. MP3Tunes case, in which a district court gave MP3Tunes broad DMCA protection for much (but not all) of its activity.  The record company plaintiffs moved for reconsideration, in part claiming that the DMCA does not give protection to songs recorded before 1972.  Such songs are presently protected by state law, not the federal Copyright act.  In response, the court issued an amended opinion holding that the DMCA applies to pre-1972 sound recordings

"The plain meaning ofthe DMCA's safe harbors, read in light oftheir purpose, covers both state and federal copyright claims. Thus, the DMCA applies to sound recordings fixed prior to February 15, 1972."

Thursday, November 3, 2011

Copyright Irony of the Day

So let's get this straight:  John Wiley publishes a book, "BitTorrent for Dummies," telling people how to use that software to share copyrighted files without permission.  Surprise!  BitTorrent users wind up sharing other books in Wiley's "Dummies" family.  What's Wiley to do?  Sue them, of course.

Wednesday, November 2, 2011

"The 32 Wittiest Comebacks Of All Time"

Snappy comebacks.  While Winston Churchill is probably mentioned most often, my favorite is Faulkner vs. Hemingway.

Saturday, October 29, 2011

This Blog Is in Trouble

. . . if THIS patent application ever issues.  "Business method protecting jokes."

Tuesday, October 25, 2011

"Priorities and Special Projects of the United States Copyright Office"

The Copyright Office has released a document entitled "Priorities and Special Projects of the United States Copyright Office."  This discusses the Office's goals for the next several years.

2011 PricewaterhouseCoopers Patent Litigation Study

The 2011 PricewaterhouseCoopers Patent Litigation Study is now available.  PWC often comes up with interesting observations, particularly regarding non-practicing entities (NPEs) and patent litigation.  See page 7 for the summary.

Friday, October 21, 2011

Oral Argument in Viacom v. YouTube

On Tuesday, October 18, 2011, the Second Circuit Court of Appeals heard oral argument in Viacom v. YouTube and Premier League v. YouTube.  Although no transcript is available, articles about the oral argument are here, here, here, here and here.  Mark Lemley's opinion piece on the lawsuit is here.

My favorite line from the reported articles is a comment by YouTube's lawyer, responding to the plaintiffs' arguments that YouTube should have done more to screen or filter for allegedly infringing works:
"We've done A, B, C and D and plaintiffs are saying, 'You should have done E and F,'" he said. "If we did E and F, they would say, 'You should have done G and H.'"
A decision is likely to take at least several months.

Friday, September 30, 2011


Chicken chicken chicken.  That is all.

2011 Ig Nobel Prize Winners!

The 2011 Ig Nobel Prize Winners have been announced!  (I would have posted this last night, but I was too busy reading the winner of the "literature" prize.)

Monday, September 19, 2011

Friday, September 16, 2011

President Obama Signs the ‘‘Leahy-Smith America Invents Act’’

Today President Obama signed the ‘‘Leahy-Smith America Invents Act,’’ also known as the patent reform act.  The final bill is here in PDF form and here in text form (with handy hyperlinks to its various sections).  The U.S. Patent and Trademark Office's web page on the bill is here, and additional government press releases are here, here and here.

While the bill unquestionably contains the most significant changes to the patent laws since the current version of the Patent Act was passed in 1952, the bill does not "reform" the patent laws as much as many people had hoped.  Patent reform bills have been before Congress for most of the last decade, and competing interest groups have blocked various reforms in earlier proposals.  For example, the electronics, computer and other tech industries would have liked to have seen reform of how patent damages are awarded, but pharmaceutical companies and non-practicing entities opposed such changes.  Today's bill is a compromise containing a number of unrelated changes, many of which are highly technical in nature and matter only to patent lawyers.

Since the Senate passed the House version of the bill, H.R. 1249, on September 8, there have been tons of articles written about the bill's scope and effect.  Rather than write my own analysis, I'll just link to a bunch of them.  (This post will therefore get updated regularly as I receive additional articles of interest.)

First Circuit Decision in Sony v. Tenenbaum

Today the First Circuit Court of Appeals released its decision in Sony BMG Music Entertainment v. Tenenbaum.  The PDF of the opinion is here and a text version is here.

As explained by EFF's post, the Court overturned a trial judge's decision to lower a damage award against a college student found liable for file sharing songs.  The trial judge had found the $675,000 damage award for 30 songs to be unconstitutional.  The appeals court held that the trial court should not have considered the constitutionality of the award before first reducing the award using a procedural device called a "remittur."  The case will go back to the trial judge for that purpose.

Thursday, September 15, 2011

Next Time, Play "Love Minus Zero, No Limit."

This guy should probably NOT have played "Just Like a Woman."

Best Taxidermy Commercial Ever?

If there is such a thing as the best Taxidermy commercial ever, THIS would be it.

Friday, September 9, 2011

Duck of the Day

This blog would be remiss if we did not mention this duck.

Thursday, September 8, 2011

Patent of the Day

With the passage of the Patent Reform Act, there will be lots of talk about creating jobs and so forth.  Doubtless a new patent this week, "Apparatus for facilitating the construction of a snow man/woman," U.S. Patent No. 8,011,991, will create many of those new jobs.  Update:  Techdirt likes this patent almost as much as I do.

Patent Reform Act Passes the Senate

Patently-O reports that the Senate has passed the House version of the Patent Reform Act, also known as the "Leahy-Smith America Invents Act."  President Obama is expected to sign the bill promptly.
A related article by that blog discusses three key aspects of the new act.
Darn, now I am going to have to read the thing.  At least I can keep in mind the very first comment on the Patently-O blog:
Dear Congress,
Thank you very much.
Yours truly,

Monday, August 29, 2011

Tuesday, August 23, 2011

MP3Tunes: Another District Court Gets the DMCA (Mostly) Right

Yesterday the Southern District of New York issued an opinion in Capitol Records v. MP3Tunes.  Since both EFF and Techdirt have published extensive posts about the case, I won't repeat what they have to say.  In summary, the court adopted most of the reasoning supporting broad DMCA protection expressed by previous district court opinions, such as UMG v. Veoh and Viacom v. YouTube.  The pending appeals in those two cases will affect the MP3Tunes case, of course (particularly the Second Circuit appeal in Viacom).

UPDATE: Here is Eric Goldman's post about the case.

Brad Templeton to Don Henley: Take It Easy

Musician Don Henley (of The Eagles) doesn't like the Internet very much.  He personally signed onto an amicus brief in the Viacom v. YouTube case supporting Viacom's attempt to shut down YouTube and similar user-generated content services.

Henley has now published an op-ed piece in USA Today setting forth his views, including his support for a very flawed piece of legislation.  While he is entitled to his opinion, some of his rhetoric goes a little overboard.  For example, Henley says that "Critics of this pending legislation need to be honest about the company they keep and why they essentially aid and abet these criminal endeavors."  He includes the Electronic Frontier Foundation and Google in that group.
Brad Templeton, one of EFF's directors, published a response to Henley's diatribe.  Here's the best part:
Take it Easy, Don. There’s a New Kid in Town, and it’s called the Internet. Get Over ItI Can’t Tell you Why, but in The Long Run, there isn’t going to be a Heartache Tonight. One of these Nights I hope you’ll you understand that for search engines to Take it To the Limit, they can’t be forced to police every search result.

Internet companies only grow when living Life in the Fast Lane, able to operate, innovate and design products without needing to check for permission from the music industry. If every time you wrote a song you had to worry about what every user who plays it and every store that sells it might do with it, you would lose your Peaceful, Easy Feeling quickly. Big companies might run filters, but if the small ones had needed to they would be Already Gone.

The Best of My Love,

Brad Templeton, EFF

Heh.  (Click here if you don't follow some of the italicized references.)  If USA Today publishes EFF's expected formal response to Henley's op-ed, I'll update this post to link to it.  Here's Techdirt's discussion of Henley's article.

Best. Prior Art. Ever.

"Samsung cites science fiction as prior art in US iPad patent case."  Unless, of course, you count Arthur C. Clarke's "invention" of the geosynchronous satellite in one of his other stories.

Monday, August 22, 2011

Friday, August 19, 2011

How Many Lawyers Does It Take to Change a Lightbulb?

Apparently, five.

State of the Net West Meeting With Rep. Bob Goodlatte

On Tuesday I attended a "Technology Town Hall Roundtable" event with Rep. Bob Goodlatte, a member of the Congressional Internet Caucus. The web site for these "State of the Net West" events is here.

The event was very well attended (over 100 people were in the audience).  Eric Goldman of Santa Clara Law School served as a moderator.  Rep. Goodlatte was well-informed about a number of Internet-related issues.  He showed an impressive depth and breadth of knowledge of the issues, as well as a willingness to listen.  Rep. Goodlatte mentioned 7 or so issues he was interested in: patent reform, rogue websites, Internet taxes, protecting IP, broadband, clean energy, and workforce issues.  Of most interest were the following comments:

1.  So-called "PROTECT-IP" Act:  Rep. Goodlatte said that the purpose of this bill is to attack "rogue websites" that have the sole purpose of selling counterfeit goods (including physical goods like shoes, not just media files).  Rep. Goodlatte said that the current bill is a Senate bill, and that the House is working on legislation "that is more sensitive" to 1st Amendment issues and the "needs of law abiding businesses."  He said that the House version will be "quite different" and will likely be criticized by both the entertainment industry as well as the tech industry.  A draft is expected be available in the next few weeks.

I asked Rep. Goodlatte about the technical and legal objections to the Senate bill, and he agreed to take copies of the Crocker et al. technical whitepaper and the Lemely et al. law professor's letter I had brought with me (Eric Goldman, the moderator, co-signed this letter).  He obviously didn't promise to do anything, but said the House would hold hearings and listen to people who want to talk about this bill.

So it's good news that the House isn't just going to rubber stamp the Senate bill.  Both Mike Masnick of Techdirt and Larry Downes of CNET attended and have since published posts discussing possible changes to the Senate bill.  (Downes' post omits one additional change I would like to see: to fix item No. 1 in the law professor's letter, by requiring notice and a hearing before a domain name can be seized.)

2. Rep. Goodlatte identified two bills that he thought would pass soon (as compared to other Internet-related bills that weren't likely to pass soon).  The first was the patent reform bill (no surprise there). In response to a question by an patent attorney who claimed to represent small inventors, Rep. Goodlatte said that he actually thought that first-to-file will benefit small companies and inventors, who are more nimble than large companies and can file more quickly.

Since I had used up my one question asking about the so-called PROTECT-IP act, I was unable to ask Rep. Goodlatte about the PTO fee diversion issue, which is a main difference between the House and Senate bills.

Second, there is a bill to better define when Internet companies are subject to corporate and income taxes in states where they do some small amount of business but aren't their residence.  (The bill does not apply to sales taxes).  Rep. Goodlatte said this was likely to pass.
There will be three other "State of the Net West" meetings coming up, with Reps. Anna Eshoo, Zoe Lofgren and Marsha Blackburn

Tuesday, August 16, 2011

USPTO issues U.S. Patent No. 8,000,000

Today the U.S. Patent and Trademark office issued U.S. Patent No. 8,000,000, entitled "Visual Prosthesis."  The named inventors are Robert Greenberg, Kelly McClure, and Arup Roy, and the patent is assigned to Second Sight Medical Products, Inc. of Sylmar, California.  According to the PTO's press release about this patent:

About Patent Number 8,000,000

In a healthy eye, the photoreceptors (rods and cones) on the retina convert light into tiny electrochemical impulses that are sent through the optic nerve and into the brain, where they are decoded into images.  If the photoreceptors no longer function correctly, the first step in this process is disrupted and the visual system cannot transform light into images, causing blindness.

The system awarded patent number 8,000,000 is designed to bypass the damaged photoreceptors altogether.  A miniature video camera housed in the patient’s glasses sends information to a small computer worn by the patient where it is processed and transformed into instructions transmitted wirelessly to a receiver in an implanted stimulator.  The signals are then sent to an electrode array, attached to the retina, which emits small pulses of electricity.  These electrical pulses are intended to bypass the damaged photoreceptors and stimulate the retina’s remaining cells to transmit the visual information along the optic nerve to the brain.

The Patent Office also has a chart about the history of patents ending in 000,000.  If you want a PDF of this patent, go to

Wednesday, August 10, 2011

Federal Circuit and Joint Liability for Infringement: My Latest Amicus Brief for EFF

The Federal Circuit Court of Appeals will be hearing en banc two related cases, Akamai Tech., Inc. v. Limelight Networks, Inc., and McKesson Tech. Inc. v. Epic Sys. Corp.  In three previous cases, the court had discussed the issue of when a method claim is directly infringed by the combined actions of multiple parties.  The Court had ruled that the parties were jointly liable only if there was an agency relationship between them or if one party was contractually obligated to the other to perform the method steps.  In April and May 2011, the Court granted review en banc to decide if that rule is correct.  As my previous post about the order granting en banc review in Akamai said, one of the issues involved is:
If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?
In McKesson, an additional issue is:
Does the nature of the relationship between the relevant actors—e.g., service provider/user; doctor/patient—affect the question of direct or indirect infringement liability?
EFF has now filed amicus briefs in both appeals (actually, the same brief in both Akamai and McKesson).   As EFF's blog post about the brief explains, the existing rule limiting liability for joint infringement makes sense.  If the Court now accepts the arguments that Akamai and McKesson are making, third-party users, consumers and developers of technology could possibly be a new category of potential infringer who could be liable for infringing patents of which they are not aware.

Do You Work at a Startup?

Then you will want to click this many times, until you find yourself.

Monday, August 8, 2011

Friday, August 5, 2011

Double Label of the Day: Showing the Difference Between Trade Marks and Trade Dress

This interesting web site shows the difference between trademarks ("a name, word, phrase, logo, symbol, design, image" that identifies "that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities") and trade dress ("characteristics of the visual appearance of a product or its packaging").  Although admittedly, some of the logos pictured here could also be trademarks.

Wednesday, August 3, 2011

Perfect 10 v. Google: No Presumption of Irreparable Harm in Copyright Cases

Today the Ninth Circuit Court of Appeals issued its second opinion in the long-running Perfect 10 v. Google case.  Both appeals, including the previous 2007 opinion, arose from Perfect 10's attempt to get a preliminary injunction against Google's web and image searching features.  The case has yet to go to trial.

Today's case did not address the merits of either Perfect 10's claims or Google's defenses.  Instead, the Ninth Circuit affirmed the district court's refusal to grant a preliminary injunction on a procedural ground.  Before this case, Ninth Circuit law held that a copyright owner is entitled to a presumption of irreparable harm if it showed a reasonable likelihood it would succeed on the merits of its copyright claim.  Such irreparable harm is one of the requirements to get a preliminary injunction.
In this case, the Ninth Circuit held that the 2006 Supreme Court patent case of eBay Inc. v. MercExchange, L.L.C., changed the presumption rule.  eBay reversed the Federal Circuit's long-standing rule that after winning at trial, a patent owner was almost automatically entitled to an injunction.  Rather, the Supreme Court held that the traditional principles of equity, including relative harms to the plaintiff and defendant, must be considered before granting an injunction.  eBay has resulted in far fewer injunctions in patent cases, especially where the patent owner doesn't practice its own patent and therefore isn't likely to be harmed if an injunction isn't granted.

Applying eBay, the Ninth Circuit held that its former rule of presumed irreparable harm was no longer good law, and "effectively overruled" by eBay.  (The Second Circuit Court of Appeals had previously reached the same conclusion.)  That meant that Perfect 10 had to make an actual showing of irreparable harm if an injunction wasn't granted, before the court even got to the merits of the case.  After concluding that Perfect 10 hadn't made a sufficient showing of such harm, the Ninth Circuit affirmed the denial of the preliminary injunction.

Since this case didn't get to the merits (including Google's DMCA defense), it is perhaps less interesting than it could have been.  Techdirt argues that the case is a "huge ruling" just because of the abolition of the presumption of irreparable harm; you can draw your own conclusion.  In any event, the case is another interesting example of courts applying patent principles to copyright cases.

Monday, August 1, 2011

Two Interesting Reexamination Opinions Regarding the NTP Patents

Today the Federal Circuit issued two interesting opinions arising out of the reexamination of the NTP patents.  Those patents had previously been the subject of some highly publicized litigation against the company that makes the Blackberry email device and service.  NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005).

Both of today's cases are captioned In Re NTP, Inc.  Both involved appeals by NTP of decisions by the Patent Office Board of Patent Appeals and Interferences to reject claims of NTP's patents.  The first case involved seven different reexaminations.  The Federal Circuit reversed the Board's rejections because of erroneous claim construction of "electronic mail message" and remanded the cases to the Board for further consideration.  Of broader legal interest was the CAFC's rulings (1) that NTP did not successfully "swear behind" certain references under 37 C.F.R §1.131 (because of insufficient corroboration of an earlier invention date), and (2) that a reference that was cataloged in a Norwegian university was a prior art publication that could serve as an invalidating reference.

In the second case, the CAFC affirmed the Board's rejection of another patent.  That opinion was interesting for its holdings that (1) priority can be considered during a reexamination; and (2) the question of whether an examiner actually considered an issue during previous prosecution must be determined by reviewing what actually happened ("Whether the examiner actually considered this issue can only be determined by reviewing the prosecution history. . . . Whether an examiner considered an issue must be context-specific. . . .").  The first issue means that reexaminations can consider whether a patent can correctly claim priority to an earlier application so as to avoid prior art.  
The second issue has possible ramifications in areas other than reexaminations.  One such area is whether an examiner actually considered a reference during prosecution -- if the examiner didn't, then during a subsequent lawsuit an accused infringer might be entitled to a jury instruction pointing that out, therefore making it easier to prove invalidity.  In Microsoft Corp. v. i4i Limited Partnership, the Supreme Court recently suggested that such an instruction was proper.  Today's second NTP opinion could be used to argue that if a reference was merely listed on a disclosure form and not actually considered by the examiner, then the jury instruction is appropriate.

Saturday, July 30, 2011

THIS Will Fix the Debt Crisis

(Alternative link that seems to work better on Firefox is here.)

Friday, July 29, 2011

Federal Circuit Upholds Patentability of Isolated Gene Sequences, But Not Methods for "Comparing" or Analyzing" Them

Today the Federal Circuit decided the Myriad gene patenting case, Association for Molecular Pathology v. USPTO.  The case involved the patentability of genes directed to detection of breast cancer (BRCA genes) and methods for using them.  The case attracted a great deal of publicity (and amicus briefs) because of the implications of allowing parties to patent such genes and methods.  Myriad's licensing activities didn't help its case -- according to the plaintiffs' complaint, Myriad's fees were so high for conducting diagnoses and licensing that many women could not afford the testing, and researchers were inhibited from doing further research in the area.

The 105-page decision included a majority opinion by Judge Lourie, a concurring opinion by Judge Moore, and a dissent in part by Judge Bryson.  Here's Judge Lourie's summary of his opinion:

On the threshold issue of jurisdiction, we affirm the district court’s decision to exercise declaratory judgment jurisdiction because we conclude that at least one plaintiff, Dr. Harry Ostrer, has standing to challenge the validity of Myriad’s patents. On the merits, we reverse the district court’s decision that Myriad’s composition claims to “isolated” DNA molecules cover patent-ineligible products of nature under § 101 since the molecules as claimed do not exist in nature. We also reverse the district court’s decision that Myriad’s method claim to screening potential cancer therapeutics via changes in cell growth rates is directed to a patent-ineligible scientific principle. We, however, affirm the court’s decision that Myriad’s method claims directed to “comparing” or “analyzing” DNA sequences are patent ineligible; such claims include no transformative steps and cover only patent-ineligible abstract, mental steps.

Judge Lourie's decision upheld the patentability of isolated DNA molecules.  His decision stated:

Isolated DNA, in contrast, is a free-standing portion of a native DNA molecule, frequently a single gene. Isolated DNA has been cleaved (i.e., had covalent bonds in its backbone chemically severed) or synthesized to consist of just a fraction of a naturally occurring DNA molecule. For example, the BRCA1 gene in its native state resides on chromosome 17, a DNA molecule of around eighty million nucleotides. Similarly, BRCA2 in its native state is located on chromosome 13, a DNA of approximately 114 million nucleotides. In contrast, isolated BRCA1 and BRCA2, with introns, each consists of just 80,000 or so nucleotides. And without introns, BRCA2 shrinks to just 10,200 or so nucleotides and BRCA1 to just around 5,500 nucleotides. Furthermore, claims 5 and 6 of the ’282 patent cover isolated DNAs having as few as fifteen nucleotides of a BRCA sequence. Accordingly, BRCA1 and BRCA2 in their isolated state are not the same molecules as DNA as it exists in the body; human intervention in cleaving or synthesizing a portion of a native chromosomal DNA imparts on that isolated DNA a distinctive chemical identity from that possessed by native DNA.
As the above description indicates, isolated DNA is not purified DNA. Purification makes pure what was the same material, but was previously impure. Although isolated DNA must be removed from its native cellular and chromosomal environment, it has also been manipulated chemically so as to produce a molecule that is markedly different from that which exists in the body. It has not been purified by being isolated. Accordingly, this is not a situation, as in Parke-Davis & Co. v. H.K. Mulford Co., in which purification of adrenaline resulted in the identical molecule being “for every practical purpose a new thing commercially and therapeutically.” 189 F. 95, 103 (C.C.N.Y. 1911). . . . In this case, the claimed isolated DNA molecules do not exist as in nature within a physical mixture to be purified. They have to be chemically cleaved from their chemical combination with other genetic materials. In other words, in nature, isolated DNAs are covalently bonded to such other materials. Thus, when cleaved, an isolated DNA molecule is not a purified form of a natural material, but a distinct chemical entity.
. . .
Because isolated DNAs, not just cDNAs, have a markedly different chemical structure compared to native DNAs, we reject the government’s proposed “magic microscope” test, as it misunderstands the difference between science and invention and fails to take into account the existence of molecules as separate chemical entities. The ability to visualize a DNA molecule through a microscope, or by any other means, when it is bonded to other genetic material, is worlds apart from possessing an isolated DNA molecule that is in hand and usable.

As to the patentability of the method claims for “comparing” or “analyzing” sequences, Judge Lourie's decision stated:

We conclude that Myriad’s claims to “comparing” or “analyzing” two gene sequences fall outside the scope of § 101 because they claim only abstract mental processes. . . . The claims recite, for example, a “method for screening a tumor sample,” by “comparing” a first BRCA1 sequence from a tumor sample and a second BRCA1 sequence from a non-tumor sample, wherein a difference in sequence indicates an alteration in the tumor sample. ’001 patent claim 1. This claim thus recites nothing more than the abstract mental steps necessary to compare two different nucleotide sequences: look at the first position in a first sequence; determine the nucleotide sequence at that first position; look at the first position in a second sequence; determine the nucleotide sequence at that first position; determine if the nucleotide at the first position in the first sequence and the first position in the second sequence are the same or different, wherein the latter indicates an alternation; and repeat for the next position.
. . .
Although the application of a formula or abstract idea in a process may describe patentable subject matter, id. at 3230, Myriad’s claims do not apply the step of comparing two nucleotide sequences in a process. Rather, the step of comparing two DNA sequences is the entire process claimed.
. . .
The claims thus fail to claim a patent-eligible process under § 101.

Finally, Judge Lourie upheld the patentability of the method claim directed to a method for screening potential cancer therapeutics:

Starting with the machine-or-transformation test, we conclude that the claim includes transformative steps, an “important clue” that it is drawn to a patent-eligible process. Bilski, 130 S. Ct. at 3227. Specifically, the claim recites a method that comprises the steps of (1) “growing” host cells transformed with an altered BRCA1 gene in the presence or absence of a potential cancer therapeutic, (2) “determining” the growth rate of the host cells with or without the potential therapeutic, and (3) “comparing” the growth rate of the host cells. The claim thus includes more than the abstract mental step of looking at two numbers and “comparing” two host cells’ growth rates. The claim includes the steps of “growing” transformed cells in the presence or absence of a potential cancer therapeutic, an inherently transformative step involving the manipulation of the cells and their growth medium. The claim also includes the step of “determining” the cells’ growth rates, a step that also necessarily involves physical manipulation of the cells.

Judge Moore's concurring opinion agreed with Judge Lourie on isolated cDNA sequences (which do not exist in nature), but had different thoughts about isolated DNA.  She first noted the complexity of dealing with the patenability of purified chemicals or elements.  Two prior cases had upheld the patentability of purified adrenaline and vitamin B-12; however, other cases had rejected patentability for purified uranium, vanadium, and ductile tungsten.  After discussing DNA technology, she stated:

The isolated DNA sequences at issue in this case have the same type of chemical changes, but on a much bigger scale. Instead of a string of five nucleotides, the chromosome is millions of base pairs; instead of a two-monomer molecule, the isolated molecules claimed in this case range from 15 nucleotides to thousands (or tens of thousands) of nucleotides. Nevertheless, like the simple sequences discussed above, just because the same series of letters appears in both the chromosome and an isolated DNA sequence does not mean they are the same molecule. While the isolated DNA molecules claimed in this case are undoubtedly inspired by the corresponding naturally occurring sequence present on the chromosome, man must create these isolated DNA molecules.
. . .
Isolation of a DNA sequence is more than separating out impurities: the isolated DNA is a distinct molecule with different physical characteristics than the naturally occurring polymer containing the corresponding sequence in nature.
. . .
DNA sequences that have the same pattern of DNA bases as a natural gene, in whole or in part, present a more difficult issue [than cDNA].  Unlike the isolated cDNA molecules, whose sequence is not present in nature, these kinds of isolated DNA claims include nucleotide sequences which are found in the human body, albeit as part of a much larger molecule, the chromosome.
. . .
Given the chemical differences highlighted by Judge Lourie’s opinion and discussed supra, the mere fact that the larger chromosomal polymer includes the same sequence of nucleotides as the smaller isolated DNA is not enough to make it per se a law of nature and remove it from the scope of patentable subject matter. The actual molecules claimed in this case are therefore not squarely analogous to unpatentable minerals, created by nature without the assistance of man. Instead, the claimed isolated DNA molecules, which are truncations (with different ends) of the naturally occurring DNA found as part of the chromosome in nature, are not naturally produced without the intervention of man.
. . .
The shorter isolated DNA sequences have a variety of applications and uses in isolation that are new and distinct as compared to the sequence as it occurs in nature. For example, these sequences can be used as primers in a diagnostic screening process to detect gene mutations. These smaller isolated DNA sequences—including isolated radiolabeled sequences mirroring those on the chromosome—can also be used as the basis for probes. Naturally occurring DNA cannot be used to accomplish these same goals. Unlike the isolated DNA, naturally occurring DNA simply does not have the requisite chemical and physical properties needed to perform these functions.

Finally, Judge Moore relied on the Patent Office's long-standing practice to allow patents on such genes, and said that Congress should address the issue instead of the courts.  "The patents in this case might well deserve to be excluded from the patent system, but that is a debate for Congress to resolve. I therefore decline to extend the “laws of nature” exception to include isolated DNA sequences."

Judge Bryson agreed with Judges Lourie and Moore as to the method claims and cDNA, but dissented as to isolated DNA.

In its simplest form, the question in this case is whether an individual can obtain patent rights to a human gene. From a common-sense point of view, most observers would answer, “Of course not. Patents are for inventions. A human gene is not an invention.” The essence of Myriad’s argument in this case is to say that it has not patented a human gene, but something quite different—an isolated human gene, which differs from a native gene because the process of extracting it results in changes in its molecular structure (although not in its genetic code). We are therefore required to decide whether the process of isolating genetic material from a human DNA molecule makes the isolated genetic material a patentable invention. The court concludes that it does; I conclude that it does not.
. . .
Yet some of Myriad’s challenged composition claims effectively preempt any attempt to sequence the BRCA genes, including whole-genome sequencing. In my view, those claims encompass unpatentable subject matter, and a contrary ruling is likely to have substantial adverse effects on research and treatment in this important field.
. . .
Myriad’s claims to the isolated BRCA genes seem to me to fall clearly on the “unpatentable” side of the line the Court drew in Chakrabarty. Myriad is claiming the genes themselves, which appear in nature on the chromosomes of living human beings. The only material change made to those genes from their natural state is the change that is necessarily incidental to the extraction of the genes from the environment in which they are found in nature. While the process of extraction is no doubt difficult, and may itself be patentable, the isolated genes are not materially different from the native genes. In this respect, the genes are analogous to the “new mineral discovered in the earth,” or the “new plant found in the wild” that the Supreme Court referred to in Chakrabarty. It may be very difficult to extract the newly found mineral or to find, extract, and propagate the newly discovered plant. But that does not make those naturally occurring items the products of invention.
. . .
The principles underlying that analysis [isolating lithium, which doesn't appear by itself in nature] apply to genetic material as well. In order to isolate the BRCA gene, it is necessary to break chemical bonds that hold the gene in its place in the body, but the genetic coding sequence that is the subject of each of the BRCA gene claims remains the same whether the gene is in the body or isolated. The majority, however, does not agree that the cases are analogous, and indeed appears to have adopted the following rule: Isolated atoms are not patent eligible, but isolated molecules are.
. . .
The structural differences between the claimed “isolated” genes and the corresponding portion of the native genes are irrelevant to the claim limitations, to the functioning of the genes, and to their utility in their isolated form. The use to which the genetic material can be put, i.e., determining its sequence in a clinical setting, is not a new use; it is only a consequence of possession. In order to sequence an isolated gene, each gene must function in the same manner in the laboratory as it does in the human body. Indeed, that identity of function in the isolated gene is the key to its value. Moreover, as Judge Moore’s concurring opinion explains, Myriad has failed to credibly identify new uses for the isolated BRCA genes as probes or primers. The naturally occurring genetic material thus has not been altered in a way that would matter under the standard set forth in Chakrabarty. For that reason, the isolation of the naturally occurring genetic material does not make the claims to the isolated BRCA genes patent-eligible.

There's lots more in this lengthy opinion.  Given the stakes of this case and the three separate opinions it generated, (1) it's more likely than usual that the Federal Circuit will rehear the case en banc (that Court very rarely hears cases en banc), and (2) Supreme Court review is also far more likely than usual (at least of the decision to allow patents on isolated genes).
Here's Patently-O's discussion.  Techdirt's discussion is here.