IP News & Transactions

Bilski v. Doll – The Supreme Court Weighs In On Business Method Patents

The Wall Street Journal recently reported that the United States Supreme Court has agreed to review the recent decision by the CAFC in In Re Bilski, the now-famous appellate decision which appeared to narrow the scope of allowable subject material for business method patents. The Supreme Court is expected to hear arguments in the case (captioned as Bilski v. Doll, 08-964) in the coming fall.

The Supreme Court has recently been quite active in the patent law field, issuing several decisions that have generally made it more difficult for patent applicants and patent holders to respectively gain and enforce patent rights.  The Supreme Court’s decision to review Bilski is important, insofar as a decision to uphold the CAFC opinion could potentially serve to not only further curtail the development and enforcement of patent rights, but could also result in the de facto invalidation of thousands of business method patents. Expect a blizzard of amicus briefs!

The Wall Street Journal article may be found at http://online.wsj.com/article/SB124386742426172359.html?mod=googlenews_wsj.

Video Game Images – Exactly Who Is That?

Your author recently came across a superbly written article and legal note by Jeffrey Sullivan, Esq., a partner with Baker Botts LLPin their New York City office.  The article discusses a lawsuit recently filed by Mr. Sam Keller in the United States District Court for the Northern District of California against the National Collegiate Athletics Association (NCAA), the NCAA’s licensing division, and Electronic Arts, Inc. (EA).  Mr. Keller, a former football quarterback for Arizona State University (ASU), alleges in his complaint that EA’s use of player images in its NCAA Football video game infringes upon his and other college players’ “rights of publicity.”  In essence, Mr. Keller alleges that with the exception of a player’s name, every other aspect of football players portrayed in the video game can be attributed to actual players, such as himself.  Mr. Keller points out in his complaint a number of similarities between himself and the ASU quarterback portrayed in the game – for instance, the ASU quarterback in the accused game wears jersey number 5 – which was also Mr. Keller’s jersey number. Mr. Keller also alleges that in developing NCAA Football, EA regularly contacts college team representatives to find out about the unique physical and style attributes of their players, so that these attributes can be incorporated into the game’s player characters.

 

I personally find this case to be fascinating; and Mr. Sullivan’s article is not only an excellent legal note, but a great read as well.  (In his article, Mr. Sullivan mentions the now-aged Mattel/Coleco game “Electronic Quarterback,” which used LEDs to portray football players on the field.  A game I remember, and an excellent bit of nostalgia!)

 

Mr. Sullivan’s article may be found at http://www.bakerbotts.com/file_upload/IfItsSortOfInTheGame.htm.

IBM’s New Patent on Business Meetings!

Your author just came across an excellent note by Gene Quinn at IP Watchdog, where he describes in detail a new patent application submitted by IBM that purports to cover methods related to setting dates and times for business meetings.  (Your author is surprised that IBM did not file this as a continuation-in-part to its pending application on the rotation of the earth!)  Mr. Quinn’s point in highlighting this application is to underscore the “hypocrisy” of IBM and its executives in their recent complaining to Congress about the questionable quality of most patent applications submitted to the PTO.   However, your author thinks this application might very well be the most valuable patent application ever made – after all, I may be able to get out of yet another needless business meeting just by telling my peers that I do not want to infringe on IBM’s patent!

Mr. Quinn’s note may be found at http://www.ipwatchdog.com/2009/05/11/ibm-seeks-patent-on-time-management-of-meetings/id=3367/.

Patent Reform, And Politics As Usual

An excellent blog posting by Gene Quinn of IP Watchdog breaks down the politics of the current effort in Congress to reform existing United States patent laws.  Mr. Quinn points out that because of the likely importance of the upcoming 2010 congressional election cycle, no member of Congress will be looking to involve themselves in any voting matter that could affect their ability to raise campaign funds for the 2010 elections.  As such, Mr. Quinn suggests that despite whatever progress has been made thus far by Congress in working out a patent reform bill that is acceptable to both Democrats and Republicans (and Mr. Lieberman, who I believe is kind of a Demo-Republi-Crat), that progress will not matter unless the bill comes to a vote before Labor Day 2009.  If no vote comes by then, it seems likely that patent reform will again be on the shelf for some time.

 

Mr. Quinn’s article may be found at http://www.ipwatchdog.com/2009/04/30/uncertain-future-for-patent-reform-legislation/id=2980/.

Sun and IPM – the NetApp Effect

An interesting article at CNET discusses whether the currently pending IP infringement lawsuit between Sun Microsystems and NetApp may hinder IBM’s reported interest in merging with Sun. The two-year old lawsuit is focused on whether Sun’s Solaris operating system infringes upon certain NetApp patents relating to the Solaris ZFS file system. The article notes that the lawsuit has apparently taken on a higher profile as a due diligence “red flag” for IBM, potentially prompting IBM to revalue or even abandon its bid for Sun.

The article may be found at http://news.cnet.com/8301-1001_3-10203304-92.html.

Idaho – The New Silicon Valley?

According to an article in the online edition of The Idaho Statesman, the Idaho Department of Commerce is backing the formation of a new company named “I-Cubed” (which stands for “Invest Idaho Innovations LLC”), that will actively seek foreign investment into Idaho to foster development of technologies there for subsequent monetization through licensing.  The article describes in depth the planed structure of I-Cubed, as well as the fact that the majority of technologies developed within Idaho’s universities and companies “sit on the shelf” – that is, are developed with little thought towards a tail-end monetization strategy.

The State of Idaho’s backing of I-Cubed is a great example of how state governments in the U.S. can help their local economies via encouragement of IP monetization.  It is interesting that in the midst of all the discussion regarding the planned bailouts of GM and Chrysler, there is scant discussion on the subject of IP monetization within those states most impacted by the problems of GM and Chrysler – even though both organizations have enormous resources in terms of “on the shelf” IP…

The Idaho Statesman article may be found at http://www.idahostatesman.com/business/story/669530.html.

A Great Blog – The New ITC Law Blog

Your author just came across an excellent new blog by the law firm Oblon, Spivak – it is a website dedicated to issues relating to U.S. patent litigation pursued via Section 337 investigations before the U.S. International Trade Commission (ITC).  It is noteworthy that while much online comment may be found regarding the subject of the Federal Court system in the context of patent litigation, very little attention is given to the ITC and Section 337 investigations – even though they are increasingly becoming a key part of ALL U.S. patent litigation.

Readers may find the website at www.itcblog.com.

Changes to China’s Basic Patent Law

An excellent opinion piece by Ronald A. Cass in the online edition of The Wall Street Journal Asia discusses the “Third Amendment,” a series of changes to China’s patent laws which were adopted in late 2008.  Among other detail in the article, Mr. Cass points out what may be referred to as “the good” and “the bad” in these changes to China’s patent laws:

The Good: A new standard of “absolute utility” will be used, requiring that proposed inventions must not only be novel within China, but novel when viewed against all prior inventions on a worldwide basis.

The Bad: Expansion of existing “compulsory licensing” provisions, which allow the government to force patent holders to issue low-royalty (or royalty-free) licenses to use of their patents. (Readers will note that your author has written in previous posts on the subject of compulsory licensing.)

It is too early to know what the ultimate implications of these changes to China’s patent law will mean to holders of both China and non-China IP rights, as the Third Amendment will be subject to administrative and judicial interpretation by the State Intellectual Property Office (SIPO) and the People’s Court, respectively.  However, your author believes that the Chinese government will probably lean more towards an interpretation that will provide more (and not less) protection for foreign holders of China and non-China IP rights, as the Chinese government will be keen over coming years to ensure global enforceability of its own homegrown patents.

The article may be found at http://online.wsj.com/article/SB123419814824764201.html?mod=googlenews_wsj.

Here Comes Huawei

A recent article in the online version of China’s People’s Daily reports that telecom equipment giant Huawei is now the leading source of new patent applications under the Patent Cooperation Treaty (PCT).  Huawei had the highest number of new patent filings, with a total of 1737 applications in 2008.  After Huawei, the next most prolific patent filers were Panasonic (Japan), Philips Electronics NV (Netherlands), Toyota (Japan) and Robert Bosch GMBH (Germany).

Interestingly, while no U.S. company was in the top 5 of patent application filers, the U.S. still ranked first in the world with over 53,000 new fillings.  This would seem to suggest that much of the innovation occurring within the U.S. is presently coming from small and medium size company filers, as opposed to larger enterprises.  It may well be that in light of the current economic situation, larger technology companies in the U.S. are cutting back on patent filing programs to conserve cash.  A good decision in the short run perhaps; but not necessarily the best decision for the long run…

The People’s Daily article may be found at http://news.xinhuanet.com/english/2009-02/03/content_10757403.htm.

President Obama and The PTO

In one of his first actions as President of the United States, Barack Obama has directed, via a memo by his Chief of Staff, Rahm Emmanuel, that Federal departments and agencies refrain from sending any new proposed regulation to the Office of the Federal Register (OFR) for comment and publication unless and until President Obama’s team has had a chance to review such proposed regulations.  Among other regulatory matters, this action by President Obama will likely delay the publication of any new rules for the USPTO, whose rules have been in a state of flux for some time.

This action by President Obama, in and of itself, is not surprising – but what will be of greater interest is how the Obama administration uses the opportunity to put its own mark on PTO rules, and ultimately, U.S. patent law practice.    

A copy of Mr. Emmanuel’s memo may be found at http://www.govexec.com/pdfs/012109rb1.pdf.