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.