BC Law IPTF Blog

The Eastern District of Virginia court hearing the case of Tafas v. Dudas issued a preliminary injunction on Oct. 31 blocking the PTO’s implementation of its new continuation and claim rules that were to go into effect on Nov. 1.  In that case, a number of plaintiffs, including Glaxo Smithkline, had joined together to block the rules.

The court examined the traditional factors in issuing a preliminary injunction: 1) likelihood of success on the merits; 2) irreparable harm in the absence of an injunction; 3) balance of hardships between plaintiffs and defendant; 4) public interest in the injunction. 

The court believed that the plaintiffs could suceed on the merits of the case.  The court noted that 35 U.S.C. 120 may prohibit limiting the number continuing applications that can be filed, and that the new rules could create retroactive effects on settled rights.  More specifically, the court found that plaintiffs had a vested right in the opportunity to file continuations and claims under the old rules, and an agency is not permitted to make retroactive rules.  The PTO’s guidelines for preparing an examination support document were also declared vague.

On the upside for the PTO, the court did rule that the PTO’s new rules were not arbitrary and capricious.

Further, the court agreed that the uncertainty of the new rules would cause plaintiffs irreparable harm.  The balance of hardships weighed in favor of the plaintiffs because they would face immediate harm once the rules were implemented, while any harm experienced by the PTO under a preliminary injunction would be gradual.  Because the public interest requires a stable patent system, an injunction would be appropriate.

Thus, the PTO was enjoined from implementing its new rules.  It was also enjoined from making any other new rules “restricting the number of continuing applications, the number of requests for continued examination, and the number of claims that may be filed with the PTO.”

The PTO posted a notice on its website of the decision, and noted that its examiners and staff would continue examining and processing applications under the old rules until further notice. 

Glaxosmith-Kline has filed a federal complaint in ED Virginia’s “rocket docket” seeking to enjoin the USPTO from implementing the new patent rules.  The new rules address continuing applications, requests for continued examination, and examination of claims in patent applications.  They amend 37 C.F.R. sec. 1.75, 1.78, and 1.114, and add 37 C.F.R. 1.267.  GSK alleges that the Rules were promulgated without proper legal authority, and are also “vague, arbitrary and capricious.”  Further, they “prevent GSK from fully prosecuting patent applications and obtaining patents on one or more of its inventions.” 

GSK alleges that Congress has not empowered the PTO to promulgate such regulations.  As a federal governmental agency, the PTO obtains its power soley from Congress, under 35 U.S.C. sec 2 (and Congress, in turn, derives its authority regarding patents from the U.S. Constitution art. 1 sec 8 cl 8.)  Congress has not yet granted the PTO to make these rules, so GSK says that the PTO engaged in ultra vires rulemaking.

Further, GSK alleges, the new rules regarding continuing applications, requests for continued examination, and examination of claims in patent applications are inconsistent with current patent law passed by Congress.  This action violates 35 U.S.C. sec. 2, which gives the PTO power to promulgate rules and establish regulations to govern conduct of proceedings in the PTO, as long as they are not inconsistent with the law.  The extent of the PTO’s authority to promulgate rules is currently being debated in Congress.

Lastly, GSK argues that the Rules “pose an unconstitutional arbitrary and capricious regulatory taking of GSK’s patent and patent application property rights.”

These claims are much more serious than the complaint already filed on this issue.  It will be interesting to watch this debate flush out in parallel to current Congressional action regarding patent law. 

Update on The MediaDefender Debacle:

The Pirate Bay (”TPB”) announce on its blog that it filed a criminal complaint against MediaDefender’s clients, including Universal Music Group, Sony, Paramount, and Twentieth Century Fox. The charges are “infrastructural sabotage, denial of service attacks, hacking and spamming, all of these on a commercial level.”

TPB tracked back IPs from fake torrents to IPs in the Gmail account they hacked earlier. They also found MediaDefender’s software that creates fake accounts and seeds fake torrents on sites like TPB. Sounds like TPB might actually have some valid claims, at least against MediaDefender.

This could really turn into an extremely interesting case. More to come…

A Federal District Court in Springfield, Mass. has given Mass MoCA permission to display unfinished works of Christoph Buchel. The artist had tried to prevent the museum from going forward with the scheduled exhibition under the Visual Artists Rights Act. As today’s New York Times decribes: Michael Posner ruled that VARA, which protects an artist’s right to not be named as author of a work that has been modified, did not block display of unfinished works simply because they are unfinished. Later in the article, the artist indicates that the works had been modified after he had stopped cooperating with the museum.

Mass MoCA had been exhibiting the work under tarps to wide criticism. Many believe than an artist should ultimately have the last word on when a work is ready for display, and this certainly seems to be the thrust of VARA.

Buchel’s large work was undoubtedly an expensive installation and largely missing from the Times’ analysis is the power dynamic between museums and artists. Mass MoCA certainly relied on the exhibition going forward in their plans for the year. Museums attract new members based on forthcoming shows and development directors would be in a difficult place if too much uncertaintly attached to that schedule. Budgeting and selections for other exhibitions require a museum to trust that an artist will remain committed to the project.

It’s a shame that the parties couldn’t come to a workable solution. Although they can now display Buchel’s work, with a notice that it is unfinished, Mass MoCA gains little from the win beyond a reputation for not respecting the artists it chooses to display.

On Friday, the House endorsed a bill encompassing some of the most significant changes in patent law in the last 50 years.  One of these changes defines “inventorship” of a patent as the first person or group to file the patent application, as opposed to the current practice of giving inventorship to the first person or group to “invent”.  The patent systems of most other countries grant patents to the first person/group to file the application.

Thus, it is said that this change to the first to file standard will bring the US patent system into harmony with that of the international community.  Foreign inventors will have less of a disadvantage in filing American patent applications.  Further, there is no problem of evidence or proof of inventorship that is experienced in the first to invent system.  Currently, the PTO and courts must expend time and other resources tracking evidence of parties who argue about who invented something first, right down to the question of what “invent” even means (first to conceive of the idea, first to reduce to practice, etc). 

However, independent inventors may find themselves at a disadvantage in this first to file system.  They do not have the resources or legal departments that big companies have, and thus may be slower to file applications than their counterparts.  Thus, the first people that have an idea and carry it through may not be the same people who are granted the patent.  In fact, many people argue that the new system will make it easier to claim (or steal) someone else’s ideas. 

Particularly in the United States, where independence and individuality are valued highly, this might be a tough change to swallow.  On the flipside though, this change to first to file will have the effect of giving the public the benefit of the invention faster.

Local rules for patent cases have become all the rage these days.  It all started with the Northern District of California, followed by the Southern District of California, Eastern District of Texas, and the Northern District of Georgia, amongst others.  Some judges in jurisdictions without local rules have even adopted very similar sets of rules for their own use. 

These rules all have common features.  They require early disclosures of Preliminary Infringement Contentions and Preliminary Invalidity Contentions, together with supporting documents.  They require parties to set out a schedule at the Rule 26 conference, deciding the course of claim construction.  Parties must exchange lists of terms to be construed, preliminary constructions, and then submit a joint claim construction statement.  Construction briefs must be written.  Finally, the claim construction hearing (or “Markman Hearing”) is held, where the judge hears both parties’ constructions and supporting evidence, and finally decides on the construction to be used for the rest of the litigation.

The advantage of these patent local rules is that they set deadlines for the completion of claim construction discovery and the hearing, thus pushing the cases along the court docket.  Parties can focus early on what terms they need to research and construe, and what interpretations will work best for their arguments.  Early disclosure ensures cooperation in these endeavors.  Jurisdictions with these patent local rules are thus popular with plaintiffs who want resolution quickly.

However, patent local rules have been criticized because they may focus the issues too early, before the parties ( and the judge) really know what is at stake.  Rules that do not allow changes in construction after preliminary exchanges may be too rigid as parties realize later in the case that they missed important issues.  Further, many of these procedural events occur before the judge is able to comprehend technology involved.  For this, many have recommended neutral tutorial sessions for the judge, or assistance of Special Masters to help the judge learn the technology or science involved in the case.

The Boston Globe recently ran an article by Sacha Pfeiffer regarding the possibility of drafting patent local rules for D. Mass..  Judge Stearns gave positive comments, and a few other judges have responded positively.  The current President of the BPLA, Lee Bromberg, said that applying patent local rules in D. Mass. would make the jurisdiction more attractive for plaintiffs, lowering costs of litigation for local businesses (particularly some of the smaller biotech companies), and also boost business for local hotels, restaurants, law firms, and support as more people come to litigate.  Just look what making patent litigation more attractive did for E.D. Tex.!  It will be an interesting story to follow as rules are drafted and tried out by the D. Mass. judges.      

Judge Nancy Gertner scathingly rebuked the FBI for its illegal and unjust activity in convicting four men for a murder they didn’t commit. The criminal charges were overturned six years ago; this is the civil side of the picture. Their appeals largely hinged upon the fact that a brutal hit-man turned FBI informant, Joey “the Animal” Barboza, framed them for the killing.

Unfortunately, two of the men, Tameleo and Greco, died in prison. The other two, Salvati and Limone, spent more than 30 years in prison.

Yes, I agree that the FBI should be punished for their blatant disregard for the law some 30 years ago. But I resent that these four men are portrayed as wronged “innocents.” They were all part of the Cosa Nostra gangland in Boston. They came in with dirty hands. Perhaps one or two of them were mere hangers-on, lowlife peons, but Tameleo was reputedly consigliere of the New England mob, and Limone was a Boston leader.

And, on a side note, the WBUR reporter, Fred Thys, is a graduate of my alma mater, Williams College. Hurrah!

Let’s not make this a trend, but here’s another sex-related IPTF story. Yes, the infamous WTS (”Willing to Sell”) Epic Mount story.

Now, in the MMORPG World of Warcraft players of a certain level can earn “mounts” or animals they can ride so they look cool and move faster in the virtual world. Problem is, they’re hard to come by–they’re extremely expensive. So a presumably female WOW player posted on Cragslist, offering to sell her “services” for an hour for 5000 gold. (Today, 5000 gold could cost around US $685.) An epic mount for an “epic” mount, get it? Haha. Hahaha.

So the next obvious question after “Isn’t this illegal?” is “Is this a taxable transaction?” Here’s a Howstuffworks article about taxation of virtual assets.

As the American Bar Association Journal eReport e-reports, the Supreme Court in Scott v. Harris refers to the URL of an online video of evidence from the case. The Supreme Court web site also hosts this video.

In a footnote to the opinion:

JUSTICE STEVENS suggests that our reaction to the videotape is somehow idiosyncratic, and seems to believe we are misrepresenting its contents. See post, at 4 (dissenting opinion) (“In sum, the factual statements by the Court of Appeals quoted by the Court . . . were entirely accurate”). We are happy to allow the videotape to speak for itself. See Record 36, Exh. A, available at http://www.supremecourtus.gov/opinions/video/scott_v_harris.rmvb and in Clerk of Court’s case file.

Scott v. Harris, 550 U.S. ___, at 5 n.5 (2007).

Further, from the ABA report:

A lone dissent by Justice John Paul Stevens said the case [Scott v. Harris] should have gone to a jury for decision. “The court has usurped the jury’s fact-finding function,” he wrote, since “whether a person’s actions have risen to a level warranting deadly force is a question of fact best reserved for a jury.”

Stevens challenged the majority’s interpretation of what the video shows, and he referred to his fellow justices as “my colleagues on the jury.”

(See, also, SCOTUSblog for a more substantive look at the decision.)

I’m wondering what technical infrastructure the Supreme Court web site has in place to start hosting video or other electronic content in the future. It seems fairly ad hoc at the moment. If you look at the file structure for serving the opinions, it looks like this:

http://www.supremecourtus.gov/opinions/06pdf/05-1631.pdf

So all the opinions go into the “opinions” directory, and the PDF versions from 2006 go into the “06pdf” directory. Then the file is identified by the Supreme Court numbering system (”05-1631.pdf”).

On the other hand, the videos go into a “video” directory, with the filename as the case name:

http://www.supremecourtus.gov/opinions/video/scott_v_harris.rmvb

This shows that the sysadmin is OK with the “video” directory just being a flat index of video by case name (and not the unique Supreme Court number), most likely meaning that they don’t plan on putting that many videos there in the first place. This means that this is a “one off” kind of thing with plans to add some video in the future, but not much. Furthermore, the naming convention only assumes one video per case.

So while the addition of a video URL may be interesting, they apparently don’t plan on doing much of the same in the future. If they did, then they should really change their file structure and naming systems to scale into the future.

As a quick suggestion, scalability is simple enough:

/opinions/06video/05-1631-01.rmvb

Better yet, as I prefer semantic filenames over “code” and non-proprietary formats, it *should* be

/opinions/06/video/scott-v-harris-05-1631-01-car-crash.avi

Today SCOTUS finally handed down its decision in KSR v. Teleflex and weighed in on the nonobviousness standard. Writing for a unanimous Court, Justice Kennedy, as expected, rejected the Federal Circuit’s current test for nonobviousness - whether there was a teaching, suggestion, or motivation (TSM) to combine prior art references. The TSM test does provide helpful insights into the nonobvious inquiry, however, that does not demand the application of a narrow and rigid standard. Under the new standard the court must determine whether the is more than a predictable use of the prior art elements according to their established functions. Just a preliminary post. More to come.