Using Copyrighted Articles in Patent Prosecution Is A Fair Use.

February 10, 2014 by nvantreeck

In a battle of intellectual property lawyers, U.S. Magistrate Judge Jeffrey Keyes recently sided with the patent attorneys. He ruled that a law firm’s use of copyrighted scientific journal articles in prosecuting patent applications constituted fair use.

American Institute of Physics v. Schwegman Lundberg & Woessner involved science and technology articles published by Plaintiffs American Institute of Physics and John Wiley & Sons, Inc. The law firm of Schwegman Lundberg & Woessner (Schwegman) obtained and later copied eighteen of the Plaintiffs’ copyrighted journal articles for use in its patent prosecution practice. The Plaintiffs allege that by obtaining the copies without paying for a license, and by making internal copies within the law office, Schwegman committed copyright infringement. The Plaintiff agreed submitting copies to the Patent Office was permissible. Both Schwegman and the USPTO maintain that Schwegman’s copying of the articles for their files and review constitutes a non-infringing “fair use.” The publishers disagreed.

In holding that fair use applied, the court applied the fair use provisions of the copyright statute which requires the courts to consider the following factors in deciding this issue:

The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
The nature of the copyrighted work;
The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
The effect of the use upon the potential market for or value of the copyrighted work.

In this case, the court determined that all four fair use factors weighed in favor of finding that Schwegman’s use is fair as a matter of law. As explained by Magistrate Keyes:

The record demonstrates no genuine dispute that Schwegman’s use of the Articles was new and different and did not merely supersede the original purpose of the Articles. Also, the undisputed facts demonstrate that the nature of the Articles is predominantly informational. Further, although Schwegman did make complete copies of the Articles in its patent prosecution practice, the only reasonable inference to draw from the record is that Schwegman’s copying of the Articles was consistent with the new and different purpose and character of Schwegman’s use. And there is no evidence to suggest that Schwegman’s copying impacted a traditional, reasonable, or likely to be developed market for the Articles.

The decision is good news for fair use advocates and patent lawyers, but it must still be affirmed by the district court.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Tech Industry Testifies Before Congress on Copyright Reform.

February 7, 2014 by nvantreeck

Businesses that rely on the fair use doctrine and open source technology recently testified before the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet. The hearing featured testimony from representatives of crowdfunding website Indiegogo Inc., nonprofit software developer Beneficent Technology Inc., manufacturer SparkFun Electronics Inc., television monitoring company SnapStream Media Inc., and cloud-computing company Rackspace Inc.

The hearing was part of Congress’s broad review of U.S. copyright laws with the goal of updating the country’s copyright protection scheme. In prior testimony, content creators from the music and film industries argued for stronger protections to combat infringement in the digital age, particularly online piracy.

In the latest hearing, the tech companies called on Congress to protect their business models as part of any future copyright reform. They stressed that innovation and intellectual property protection do not always have to go hand in hand. “Innovation doesn’t just come from control” of the intellectual property, Van Lindberg, Rackspace’s vice president of intellectual property, told the committee.

Jim Fruchterman, president and chief executive officer of Beneficent Technology, stressed that his company relies on fair use. “Intellectual property laws, at their best, can encourage technological advances, reward creativity, and bring benefits to society,” Fruchterman said. “To make this possible, we must keep the balance in copyright. We need to defend fair use as a laboratory for creativity.”

Finally, Danae Ringelmann, Indiegogo co-founder and chief customer officer, suggested a new approach is needed in a digital world where everything can be easily copied and distributed. “Rather than try to fight it, because it’s like water rolling down a hill, try to embrace it,” Ringelmann said.

Source: Corporate Counsel

How Can I Help?

– Ex astris, scientia –

Norman

Support For Expanded Review Of Business Method Patents.

February 5, 2014 by nvantreeck

While there are several anti-patent troll bills pending in Congress, the STOP Act seems to be gaining the greatest traction. It would make the U.S. Patent and Trademark Office’s Transitional Business Method Program permanent and expand it to other industries.

The new post-grant review procedures under the America Invents Act allow a third party to challenge a patent’s invalidity on a number of grounds, including prior art, lack of enablement, lack of novelty, or inadequate written description. Post-grant review allows parties to raise a number of new challenges that were previously reserved for litigation.

Under the proposed legislation, the definition of “covered business methods” would be expanded to include “an enterprise” or “a product.” The STOP Act, sponsored by Reps. Darrell Issa and Judy Chu, closely mirrors Senate legislation introduced by Sen. Chuck Schumer this spring.

In a letter to leaders of the judiciary committees of both the House and Senate, nearly 50 major U.S. companies, including Morgan Stanley, Google, Wal-Mart and Dell, expressed support for the legislation as a way to combat abusive patent litigation by patent-assertion entities (PAEs).

As the companies explain, “Too often, abusive PAE litigation exploits low-quality business method patents. The vague and sweeping scope of many business method claims covering straightforward, commonsense steps has led to an explosion of patent claims against processes used every day in common technologies by thousands of businesses and millions of Americans.”

“Expanding an existing Patent Office program, the Covered Business Method (CBM) Program, beyond its current limitation of ‘financial services’ business method patents to all business method patents would accomplish this goal. An expanded CBM Program would enable the Patent Office to reconsider the validity of issued business method patents and provide a targeted “surgical strike” against the worst of these frequently abused patents. And it would increase certainty for innovators actually bringing new products to market, who now face an increasing threat of extortive demands based on low-quality patents,” the letter further argues.

How Can I Help?

I will be closely tracking the status of this legislation and all other patent reform initiatives currently pending in Congress. For additional information about how the proposed changes may impact you or your company, I encourage you to contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

Norman

DCMA Takedown Of San Francisco TV Station’s Embarrassing Footage.

February 4, 2014 by nvantreeck

The Digital Millennium Copyright Act (DCMA) exempts certain online service providers from liability for copyright infringing acts by its users, provided that certain conditions are satisfied. It can also be a powerful tool to remove infringing content from the Internet. Online service providers must remove user-generated content at the content owners request or face significant monetary penalties.

In an unusual move, a San Francisco television station used a DCMA takedown notice for a unique reason: to remove embarrassing footage from the Internet. Shortly after the crash of Asiana flight 214, a KTVU anchor unintentionally read fake (and racially insensitive) names of the pilots involved in the crash on the air. An intern with the National Transportation Safety Board erroneously confirmed the names to the station.

The television station relied on copyright law to serve double duty. After publicly apologizing for the gaff, KTVU vowed to remove the online versions of the broadcast. “The accidental mistake we made was insensitive and offensive. By now, most people have seen it. At this point, continuing to show the video is also insensitive and offensive, especially to the many in our Asian community who were offended. Consistent with our apology, we are carrying through on our responsibility to minimize the thoughtless repetition of the video by others,” said the station’s general manager and vice president, Tom Raponi.

How Can I Help?

As this case highlights, IP protections can provide a range of benefits. To find out more about protecting your IP rights online, I encourage you to contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

Norman

Dish Network’s Ad-Skipping Technology Survives.

February 3, 2014 by nvantreeck

The Dish Network satellite service recently scored a significant victory before the Ninth Circuit Court of Appeals. The panel denied Fox Broadcasting’s appeal to overturn a lower court decision denying an injunction to stop Dish from offering its “AutoHop,” “Hopper” and “PrimeTime Anytime” services, which provide commercial free content to users.

The Ninth Circuit concluded that Fox had not demonstrated a likelihood of success on its copyright infringement claims.

“Infringement of the reproduction right requires ‘copying by the defendant,” the opinion states. “Fox argues that because Dish participates in the operation of PrimeTime Anytime on a daily basis, Dish made the copies, either alone or concurrently with its users. However, operating a system used to make copies at the user’s command does not mean that the system operator, rather than the user, caused copies to be made. Here, Dish’s program creates the copy only in response to the user’s command.”

The Ninth Circuit also rejected Fox’s argument that Dish could be held liable for contributory infringement, finding that the customers’ recording of the content constituted fair use. In so ruling, the appeals court relied heavily on Sony Pictures, Inc. v. Universal Studios, Inc., 464 U.S. 417 (1984), in which the Supreme Court held that “time-shifting” is a fair use recording of copyrighted broadcast content.

“If recording an entire copyrighted program is a fair use, the fact that viewers do not watch the ads not copyrighted by Fox cannot transform the recording into a copyright violation. Indeed, a recording made with PrimeTime Anytime still includes commercials; AutoHop simply skips those recorded commercials unless a viewer manually rewinds or fast-forwards into a commercial break. Thus, any analysis of the market harm should exclude consideration of AutoHop because ad-skipping does not implicate Fox’s copyright interests,” the panel concluded.

This case, along with the litigation against start-up Aereo, Inc., highlights the growing tension between broadcast networks and service providers. While new technology provides consumers with more options for viewing content, it also threatens the long-standing business model of the networks.

How Can I Help?

– Ex astris, scientia –

Norman

Federal Circuit Reveils New Model Order In Patent Cases.

January 31, 2014 by nvantreeck

The Federal Circuit Advisory Council, which advises the U.S. Court of Appeals for the Federal Circuit on rules of court and operating procedures, recently unveiled a new model order regarding excess patent claims and prior art.

As highlighted by the council, “There is a consensus that the numbers of asserted claims, claim terms, and prior art references in patent cases are often problematically excessive. Cases with over a hundred asserted claims and over a hundred asserted prior art references during discovery are common. The identification of an unmanageable number of products can be a problem too.”

While many courts already issue orders limiting the number of patent claims and prior art references in patent cases, the model order is intended to provide a systematic approach that can be further tailored to individual cases. “Focusing patent cases to the issues at the core of the dispute will reduce the burden on courts and lower the expense for the parties. In addition, a greater focus on the true issues will improve the quality of the adjudicatory process for all,” the council argues.

The new limits occur at two phases: (1) after production of “core” technical documents but before claim construction, and (2) after claim construction but before expert reports. Below are the basis provisions of the model order:

Not later than 40 days after the accused infringer is required to produce documents sufficient to show the operation of the accused instrumentalities, the patent claimant shall serve a Preliminary Election of Asserted Claims, which shall assert no more than ten claims from each patent and not more than a total of 32 claims. Not later than 14 days after service of the Preliminary Election of Asserted Claims, the patent defendant shall serve a Preliminary Election of Asserted Prior Art, which shall assert no more than twelve prior art references against each patent and not more than a total of 40 references.
Not later than 28 days after the Court issues its Claim Construction Order, the patent claimant shall serve a Final Election of Asserted Claims, which shall identify no more than five asserted claims per patent from among the ten previously identified claims and no more than a total of 16 claims. Not later than 14 days after service of a Final Election of Asserted Claims, the patent defendant shall serve a Final Election of Asserted Prior Art, which shall identify no more than six asserted prior art references per patent from among the twelve prior art references previously identified for that particular patent and no more than a total of 20 references.
If the patent claimant asserts infringement of only one patent, all per-patent limits in this order are increased by 50%, rounding up.

However, within two days of being released, all content on the Federal Circuit Advisory Council webpage was removed and replace with the message “This site is being updated and will be posted soon.” Soon thereafter, the Council webpage was restored with the exception of the two model orders. Instead, the webpage contains the following statement:

“Model orders concerning e-discovery and limitations on claims and prior art were posted on the court’s website. Those orders have now been removed since the court has not sponsored or endorsed the orders. In light of the court’s determination, the advisory council should not be viewed as having sponsored or endorsed these orders on behalf of the court.”

How Can I Help?

– Ex astris, scientia –

Norman

A “Sharknado” Clears Woody Ellen Film of Copyright Infringement.

January 28, 2014 by nvantreeck

Sharknado, the Syfy television movie that took Twitter by storm earlier this month, has even made its way into a federal court opinion. A federal judge referenced the disaster movie in a copyright infringement case involving Woody Allen’s film, Midnight in Paris.

“The court has viewed Woody Allen’s movie, ‘Midnight in Paris,’ read the book, ‘Requiem for a Nun,’ and is thankful that the parties did not ask the court to compare ‘The Sound and the Fury’ with ‘Sharknado,'” the opinion states.

The copyright infringement lawsuit against Sony Pictures involved a single line taken from a William Faulkner novel. Owen Wilson’s character says, “The past is not dead. Actually, it’s not even past. You know who said that? Faulkner, and he was right. I met him too. I ran into him at a dinner party.”

While the movie line closely resembles a line from Faulkner’s novel, Requiem for a Nun, Judge Michael P. Mills held that the doctrine of fair use applied. “At issue in this case is whether a single line from a full-length novel singly paraphrased and attributed to the original author in a full-length Hollywood film can be considered a copyright infringement,” Mills wrote. “In this case, it cannot.”

As the judge further explained, “The copyrighted work is a serious piece of literature lifted for use in a speaking part in a movie comedy, as opposed to a printed portion of a novel printed in a newspaper, or a song’s melody sampled in another song. This transmogrification in medium tips this factor in favor of transformative, and thus, fair use.”

How Can I Help?

– Ex astris, scientia –

Norman

Inventor Loses Spider-Man Royalties

January 22, 2014 by nvantreeck

Marvel Enterprises is no longer obligated to make royalty payments to the inventor of a Spider-Man toy called the Web Blaster. The Ninth Circuit Court of Appeals ruled that Stephen Kimble’s licensing agreement was unenforceable beyond the expiration date of the underlying patent under the controversial precedent established by the U.S. Supreme Court in Brulotte v. Thys Co.

Around 1990, Kimble invented and obtained a patent for a Spider-Man toy that allowed a child “role play” as Spider-Man by shooting foam string. The patent expired on May 25, 2010.

While the patent application was pending, Kimble approached Marvel about the toy and other ideas. A company executive told him that he would be compensated if Marvel used any of his ideas. Although the company ultimately informed Kimble it was not interested, Marvel began manufacturing a similar Spider-Man role-playing toy.

Kimble filed suit for patent infringement and breach of contract. While the infringement claim was dismissed, Kimble eventually reached a settlement with Marvel under which the company agreed to purchase the patent and both parties agreed to dismiss all pending appeals. Under the terms of the settlement agreement, Marvel agreed to pay Kimble $516,000 and three percent of net product sales of the toy.

In 2006, the parties got into a disagreement regarding the calculation of royalties, and Kimble filed another breach of contract lawsuit. In response, Marvel argued that it was no longer obligated to pay Kimble after the patent expired.

The Ninth Circuit ultimately agreed. It held that “a so-called ‘hybrid’ licensing agreement encompassing inseparable patent and non-patent rights is unenforceable beyond the expiration date of the underlying patent, unless the agreement provides a discounted rate for the non-patent rights or some other clear indication that the royalty at issue was in no way subject to patent leverage.”

As explained in the opinion, Brulotte has been interpreted to require that any contract requiring royalty payments for an invention either after a patent expires or when it fails to issue cannot be enforced unless the contract provides a discount from the alternative, patent-protected rate. While the court noted that it disagreed with the rationale of the rule, it also recognized that “we are bound by Supreme Court authority and the strong interest in maintaining national uniformity on patent law issues.” Accordingly, the panel begrudgingly applied the precedent.

The Ninth Circuit also rejected Kimble’s argument that Brulotte was inapplicable because the agreement discriminated between patents and non-patent rights. “We cannot agree because the agreement plainly involved one royalty rate for both patent and Web Blaster rights, with no discount or other clear indication that the Web Blaster royalties were not subject to patent leverage,” the court concluded.

How Can I Help?

– Ex astris, scientia –

Norman

USPTO Announces Access to Chinese Patent Documentation Via New Global Patent Search Network

January 21, 2014 by nvantreeck

In contrast to yesterday’s story, the U.S. Patent and Trademark Office recently announced the launch of the Global Patent Search Network. Accessible via the USPTO website, the new database allows users to search and retrieve Chinese patent documentation.

According to the USPTO, the data available includes both full text Chinese patents and English machine translations. Users can currently search documents including published applications, granted patents and utility models from 2008 to 2011. The USPTO has indiacted the network will periodically be updated with more current data.

A recent blog post touted the benefits of the Global Search patent Network. “This new search tool delivers to the public, as well as our patent examiners, an additional source of foreign patent collections. Furthermore, the immediate availability of English machine translations will effectively address the language barrier and allow for quick analysis of the relevancy of the prior art while reducing the need for costly human translations. Machine translation technology can sometimes generate awkward wording, but it provides an excellent way to determine the gist of the information in a foreign patent.”

The initial launch of the Global Patent Search Network features only Chinese patent documentation. However, the USPTO plans to incorporate additional foreign patent collections in the future. Interestingly, the Global Patent Search Network is the first patent-related initiative to use cloud technology.

How Can I Help?

– Ex astris, scientia –

Norman

Patent Application Fees Can Qualify for the Research and Development Tax Credit.

January 15, 2014 by nvantreeck

The federal research and experimentation tax credit (referred to as both an “R&D credit” or “R&E credit”) can be a valuable tool for individuals and businesses that conduct research and development, including the invention of patented products and processes. It provides a 20 percent credit on selected research expenditures.

In order to qualify for the R&D credit, research activities must satisfy a four-part test established by Congress:

Permitted Purpose: The goal of the activity must be to create a new or improve an existing business component in terms of functionality, performance, reliability, or quality. A business component is defined as any product, process, technique, invention, formula, or computer software that the taxpayer intends to hold for sale, lease, license, or actual use in the taxpayer’s trade or business.
Elimination of Uncertainty: A degree of uncertainty must exist concerning the development or improvement of the business component. Uncertainty exists if the information available to the taxpayer does not establish the capability of development or improvement, method of development or improvement, or the appropriateness of the business component’s design.
Process of Experimentation: The taxpayer must undertake a process of experimentation designed to evaluate one or more alternatives to achieve a result.
Technological in Nature: The experimental process must fundamentally rely on principles of the “hard sciences, including physical, biological sciences, engineering, or computer sciences.

As detailed by the Journal of Accountancy, a number of expenses can qualify for the R&D tax credit, including wages, supplies and contract research expenses. For instance, in-house wages attributable to qualified research and 65 percent of vendor expenses related to design and testing services are includable.

In addition, the tax credit has been interpreted to include not only developing prototypes or models, but also applying for patents. Accordingly, inventors may be able to use the tax credit to offset the increased application fees now required by the U.S. Patent and Trademark Office.

How Can I Help?

– Ex astris, scientia –

Norman

Astronomy and Law

Astronomy and Law Blog

Tag Archives: intellectual property

Using Copyrighted Articles in Patent Prosecution Is A Fair Use.

Tech Industry Testifies Before Congress on Copyright Reform.

Support For Expanded Review Of Business Method Patents.

DCMA Takedown Of San Francisco TV Station’s Embarrassing Footage.

Dish Network’s Ad-Skipping Technology Survives.

Federal Circuit Reveils New Model Order In Patent Cases.

A “Sharknado” Clears Woody Ellen Film of Copyright Infringement.

Inventor Loses Spider-Man Royalties

USPTO Announces Access to Chinese Patent Documentation Via New Global Patent Search Network

Patent Application Fees Can Qualify for the Research and Development Tax Credit.