Second Annual top OP-IP Intellectual Property News Stories

'Tis the season for the mainstream media to wax nostalgically over the past year's memorable events.  This past weekend, there was a reprieve from the "year in review" on at least one news outlet as CNN went into its trademark 24-7/wall-to-wall coverage of missing jetliners to report the disappearance of Asia Air Flight QZ8501.  Notwithstanding this one outlier, we are once again inundated with stories of the ALS Ice Bucket Challenge, the Republican takeover of the U.S. Senate, the polar vortex, etc.  Not to disappoint, here at OP-IP, we too, look back on the memorable blog posts of 2014.

In the tradition of Casey Casum once again enjoy the Top Ten OP-IP blog posts of 2014....

10.  Love on the Rocks:  Trademark Custody Battle When Going Through a Corporate Divorce

9. IP and Innovation: Are we heading for Star Trek or Star Wars as Science Fiction becomes Science Fact? 

8. GPS (Guidance for Patent-eligible Subject matter) to Direct the U.S. Patent Office in view of Alice Corp. v. CLS Bank Int'l and the USPTO Preliminary Instructions

7. Aereo's Online Streaming Broadcast TV Caught Between a Rock and a Hard Place

6. iPhone "dressed" in Blackberry's clothing?  The 'keys' to understanding a 'case' for trade dress infringement

5. Increasing wave of secret Internet communication

4. Supreme Court says, "'No, You CANNOT Hear Me Now!' Let Alone Search my Cellphone Unless you get a Warrant" in RILEY v. CALIFORNIA

3.Patented Tobacco Plant Genetically Engineered to Produce Antibodies Against Ebola gets Boost to Treat Dr. Kent Brantly and Nancy Writebol

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2. “Stairway to Copyright Infringement”- Step one in Spirit's uphill climb to prove Led Zeppelin's 'Stairway to Heaven' infringes its copyright'

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1. Disney's "Frozen" in Hot Water Over Alleged Copyright Infringement

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Happy New Year 2015!

And for those who are anxious to relive the magic of OP-IP 2013 click here to see the top posts.

© Stephen J. Weyer 2014, 2015

Send email feedback- sweyer@stites.com

Love on the Rocks: Trademark Custody Battle When Going Through a Corporate Divorce

Companies often own valuable intellectual property including trademarks which companies use to identify themselves and their goods and service.  For example, the intellectual property rights may include the name of the business.  But what happens to the trademarks including company name if a company breaks up or splits apart.  For example, if a company splits in two or a partnership dissolves, who among the parties to the breakup owns the trademarks.

This breakup scenario is common place among musical bands where eventual break-ups strike a familiar cord.  Examples of this can be seen in the breakup or departure of members of the band Boston, Van Halen, Herman’s Hermits, the Animals, and New Edition to name just five.

One possible way to plan for the possible breakup is the use of an analogous tool to a prenuptial agreement prior to marriage.  A partnership agreement, articles of incorporation or like instrument, signed by the principals to the business entity, can spell out who will get the rights to trademarks including business name upon dissolution of the company.

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

“Stairway to Copyright Infringement”- Step one in Spirit's uphill climb to prove Led Zeppelin's 'Stairway to Heaven' infringes its copyright

Led Zeppelin is being sued by the band Spirit for copyright infringement based on Zeppelin's immortal song which Spirit alleges lifted portions from its guitar instrumental, Taurus.  Spirit has advanced past step one in its upward climb to prove that "Stairway to Heaven" infringes Spirit's copyright by successfully defeating Led Zeppelin's initial Motion to Dismiss the copyright infringement suit.  However, Led Zeppelin has been invited to take the next step by submitting new evidence showing why a Motion to Dismiss should be granted.


Leaving the procedural issues aside, and turning now to substance of the debate, does "Stairway to Heaven" infringe Spirit's Taurus guitar instrumental?  In order to infringe an original work's copyright, the alleged infringing work must be deemed "substantially similar" to the original work and the alleged infringer has to have had "access" to the original work.  In this case, "access" would not appear to be an issue as Led Zeppelin and Spirit toured together in 1968 and 1969. 

Below are links to YouTube clips from Spirit's "Taurus" and  Led Zeppelin's "Stairway to Heaven."  See if you think that the opening notes in Stairway to Heaven are substantially similar to the middle guitar instrumental in Spirit's "Taurus" (e.g. starting around 0:43).  Since most are familiar with the iconic guitar progression in "Stairway to Heaven," I present Taurus first.  Please let OP-IP know what you think.

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

IP and Innovation: Are we heading for Star Trek or Star Wars as Science Fiction becomes Science Fact?

Technology today would have seemed like science fiction to people fifty years ago.  In fact, wireless Bluetooth earpieces, handheld smartphones and tablet computers all appear ripped from science fictions novels, movies and television programs for the 1950’s and 60’s.  Recently NASA’s Ames Research Center reported its progress in creating a real-life tricorder, a device known well to Star Trek aficionados, which detects the health conditions of a patient (as well as detecting other things).  While the tricorder of Star Trek only collected data and perhaps generated a diagnosis, today our “real” technology includes innovations in which human made devices are acting like humans, generating “their” own IP content. For example, the IBM supercomputer WATSON has been tasked to analyze medical databases, patient records, journal articles, etc., to identify disease conditions, create new medical diagnostic tools, and identify new therapeutic treatments.

As more and more technologies that once were science fiction are now becoming reality, we look at how IP laws can deal with futuristic technology today.   While our technology continues to evolve we ask whether IP laws with their genesis in the Industrial Age are sufficient to to deal with technology of today and of the future.

On Friday October 17, at the 2014 ITechLaw Conference in Paris, Joren De Wachter and I will lead a discussion to explore these issues.  We will explore:

·               Who or what can create Intellectual Property?
·               Can devices, software, etc., create Intellectual Property?  If so, “who” owns the IP?  The owner of the machine? The operator of the machine? The inventor of the machine?
·               Can/should IP rights apply to inventions or creations made by machines?
·               If one interacts with a computer game, and the “game” generates IP content, who owns that content?  The gamer?  The game platform creator?
·               Are current IP laws and associated rights and restrictions adequate to cover emerging technologies?
·               What are the IP rights / limitations of third parties who implement technological innovations?

After the presentation and discussion, OP-IP will summarize the insights and remarks of the participants. 

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

Patented Tobacco Plant Genetically Engineered to Produce Antibodies Against Ebola gets Boost to Treat Dr. Kent Brantly and Nancy Writebol

Dr. Kent Brantly and Nancy Writebol, infected with Ebola, are being treated at Emory University hospital with an experimental cocktail of antibodies which target the deadly virus.  But these antibodies are not just any antibodies; they were synthesized and harvested from tobacco plants that scientists genetically engineered to produce antibodies against Ebola.


A team of scientists has worked for around twenty years on uses of plant-based therapeutics for the prevention and treatment of disease.  In August of 2013, U.S. Patent No. 8,513,397 ("Mason, et al.") entitled, DNA replicon system for high-level rapid production of vaccines and monoclonal antibody therapeutics in plants, issued on the technology which was initially filed as a patent application in 2008.  The potentially life-saving treatment remains in the experimental stages.  However, the novel antibody treatment got a boost last week when Branty and Writebol became infected with Ebola.  The dire conditions of Dr. Kent Brantly and Nancy Writebol led to the use of the still experimental patented technology.

While the treatment remains experimental and more testing is required before the cocktail of antibodies will be approved for treatment of Ebola, the tragedy of the outbreak and Brantly and Writebol becoming infected themselves has fast-tracked this treatment for Ebola and may result in similar antibody therapies to treat other infection diseases.

Sources:

Ebola Vaccine Antibodies Are Made in Tobacco Plants

Ebola vaccine pioneer joked about use of genetically engineered virus to cull human population

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

Aereo's Online Streaming Broadcast TV Caught Between a Rock and a Hard Place

The U.S. Copyright Office has denied Aereo's request to pay compulsory licensing fees to retransmit broadcast television signals over the Internet, as cable provides pay to retransmit over coaxial cable lines.  A denial letter dated July 16, 2014 sent to Aereo explains the U.S. Copyright's position, essentially saying that Aereo is not a cable service provider, and therefore, not eligible for paying the compulsory license (a.k.a. statutory license) to authorize it to retransmit the broadcast television programs. 

This rejection puts Aereo between a rock and a hard place.  In June, the U.S. Supreme Court (ABC et al. v. Aereo) determined that Aereo's streaming broadcast content over the Internet was a violation of the U.S. Copyright laws, in part, based on the Court finding similarities between Aereo's service and that of cable service providers.  The Court reasoned that Congress intended to regulate the "type of service" that Aereo was providing, citing the compulsory licensing provisions of the U.S. Copyright Act, 17 U.S.C. § 111 (§111)  Regrettably for Aereo, the U.S. Copyright Office does not find §111 covers Internet re-transmission. Therefore, Aereo, for now, cannot pay the statutory license fee to become an authorized retransmitter of broadcast television content.

For a more complete discussion on ABC et al. v. Aereo see...

• Supreme Court finds Aereo's Emerging Online Streaming Technology Hits Copyright Infringement Bullseye; and
• Slings and Aereos of Outrageous Fortune: Supreme Court Rules that Aereo Infringes

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com

GPS (Guidance for Patent-eligible Subject matter) to Direct the U.S. Patent Office in view of Alice Corp. v. CLS Bank Int'l and the USPTO Preliminary Instructions

The U.S. Patent Office ("USPTO") has issued an APB, via a Fed. Reg. "Request for Comments...", to assist it in its unenviable task of developing new examination guidelines for its Examining Corps to guide them in evaluating patent application claims for patent-eligible subject matter under 35 U.S.C. § 101.   The challenge for the U.S. Patent Office is to establish advice for its Examiners when many commentators believe that the unanimous U.S. Supreme Court opinion in Alice Corp. v. CLS Bank Int’l failed to provide adequate instruction for one to evaluate whether a patent claim is directed to patent eligible subject matter.  See e.g. High court ruling leaves open questions on software patent eligibility (Virginia Lawyers Weekly,  Kimberly Atkins, June 24, 2014); and EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection.  Fulfilling our civic duty, we at OP-IP pick up the gauntlet and provide our own GPS (Guidance for Patent-eligible Subject matter) in view of Alice Corp. and the USPTO's June 25, 2014 Preliminary Instructions (in view of Alice Corp.) to provide direction to Examiners to locate patent eligible subject matter, and in particular, computer-implemented methods and systems.

Very Brief Historical Background...

The Alice Corp. decision extended its two-step process for evaluation patent-eligible subject matter of patent claims directed to laws of nature, natural phenomena and abstract ideas of biotechnology patents to also include computer-implemented methods and systems.   

Step 1: Is the patent claim directed to one of the three patent ineligible concepts of Laws of Nature, Natural Phenomena or an Abstract Idea, (“LNA”)?  If no, then the patent claim does not raise a § 101 issue.  If yes, then step 2.

Step 2: If the claim is directed to a LNA, does the claim put meaningful limitations on the LNA and/or apply the LNA in a way that limits the LNA, e.g. does the patent claim recites a meaningful application of the LNA so that the claim is not merely the LNA performed in a computer environment,  and thereby claims less than the LNA, itself?

GPS to Locate Patent Eligible Subject Matter (e.g. computer-implemented methods/systems)...

Step 1 Guidance: (identifying if a claim is directed to LNA)

• It is incumbent upon the USPTO to define "abstract idea" so that Examiners can faithfully do the analysis of Step 1. Although the Alice Corp. Court did not deem it necessary to define "abstract," based on its conclusion that there was consensus that the claims at issue were directed to an abstract idea (stating “we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case”), Examiners need guidance on how to evaluate whether claims that they examine are directed to an abstract idea.  To do this, one must have a useful definition of "abstract" to apply.  Mere examples of claims not patent eligible under § 101, citing U.S. Supreme Court precedent is insufficient and inadequate for guiding Examiners to determine whether a patent claim is directed to an abstract idea under the analysis of Step 1. 
• Alice Corp. did not adopt the Solicitor General's definition of an abstract claim, namely “a claim that is not directed to a concrete innovation in technology, science, or the industrial arts…abstract in the sense that it is not a concrete innovation in the traditional realm of patent law”.    Although Ruth Bader Ginsberg requested the Solicitor General give his definition of an abstract concept during Oral Arguments (page 53, lines 2-13), the Supreme Court has yet to adopt a definition of "abstract idea", "abstract concept" or "abstract claim."
• Alice Corp. did hint that if a claim were directed to innovation in technology or improve a computer's function, the claim may be patent eligible under § 101.  
• One admonition is that a patent claim (including computer-implemented method/system) does not necessarily have to be an improvement of another technology or improve the function of a computer, to be patent eligible under § 101.
• The dictionary definitions of "abstract"....

1. Abstract according to Merriam-Webster...

• disassociated from any specific instance;
• expressing a quality apart from an object {the word poem is concrete, poetry is abstract}; and 
• relating to or involving general ideas or qualities rather than specific people, objects, or actions of art: expressing ideas and emotions by using elements such as colors and lines; and without attempting to create a realistic picture.

      2. Abstract according to Oxford Dictionary...

• existing in thought or as an idea but not having a physical or concrete existence;
•  not based on a particular instance; theoretical; and
•  ...denoting an idea, quality, or state rather than a concrete object: {abstract words like truth or equality};.

• The KEY to determining whether a patent claim is not Abstract is whether the patent claim recites a specific, concrete instance or application.  Specific, concrete applications or specific instances are NOT abstract, per the definition of abstract by Merriam-Webster and Oxford Dictionary (see above).

 Examples of Abstract ideas / Concepts and Examples of NOT Abstract Ideas

• Poetry is abstract, a poem (a concrete example or instance) is NOT abstract (Merriam-Webster).
• Gaming or the idea of playing games is abstract, but performing the concrete, discrete steps of a game, following a set of rules (i.e. a concrete example or embodiment of a specific game) is NOT abstract (as a poem is the non-abstract embodiment of the abstract idea/concept of a poem.  (see e.g. Merriam-Webster).
• Patent claims only reciting fundamental economic principles are abstract in view of Alice Corp. but claims reciting specific instances of a "new" financial transaction may be not abstract.
• Other NOT abstract examples are specific embodiments and concrete, specific instances including working examples which incorporate and form an invention.

Step 2 Guidance: (determining whether a claim, directed to LNA, recites an application of the LNA)

• Examples of applications of an LNA patent eligible under § 101 include computer code or software (operable on a computer) which is directed to improving / enhancing the function of a computer including, but not limited to...

1. database management
2. user interface
3. optimization of computer searching
4. updating user profiles
5. data compression,
6. biometric identification, and
7. encryption.

• Other examples of applications of an LNA patent eligible under § 101 include methods or systems performing steps in a game, following a defined, claimed rule set, producing a determined claimed result, e.g. winners and losers, using the established, claimed rule set. 

 For more background information of the Alice Corp. v. CLS Bank Int’l, please see our other articles:

1. U.S. Patent Examining Corps Sending Computer-implemented Method and System Patent Applications to Apocryphal § 101 Death Panel
2. EYEWITNESS PROGNOSTICATIONS CONFIRMED: U.S. Supreme Court Finds Computer-Implemented Business Method & System Claims in Alice Corp. v. CLS Bank Ineligible for Patent Protection 
3. US Supreme Court Finds Computer Implemented Method and System Claims Directed to “Fundamental Economic Practice” is a patent-ineligible Abstract Idea
4. Eyewitness Insights on Arguments Heard by the U.S. Supreme Court on the Patentability of Computer Implemented Methods
5. “Déjà vu all over again…

© Stephen J. Weyer 2014

Send email feedback- sweyer@stites.com