IP News

Client News - Gracenote Inc. merges with Sony

Gracenote Inc, a global media management technology corporation, has finalized a deal to merge with Sony Corporation of America. The merger was initiated by Sony on April 22, 2008, who has offered Gracenote $260 million, plus other contingencies, in acquiring the media database company. Gracenote is most notable for offering the first ever legal lyrics offering in the US in April of 2007. Staas and Halsey LLP wishes Gracenote the best of luck in its future endeavors with Sony.   

Client News - ChaCha Receives Recognition in Wall Street Journal

Staas and Halsey LLP would like to take this opportunity to congratulate ChaCha for its notoriety in a recent edition of the Wall Street Journal. ChaCha, a search engine that employs "human guides" to answer the questions of its patrons, was created by Scott Jones. Introduced on September 1, 2006, ChaCha provides an innovative method of delivering information to its users through text messages on their cell phones. Staas and Halsey LLP wishes ChaCha the best of luck in their future endeavors.

First Office Action Interview Pilot Program Initiated by USPTO

The United States Patent & Trademark Office ("USPTO") will begin a pilot program on April 28, 2008, which will allow patent applicants to discuss the results of the examiner's prior art search results before the examiner issues an Office Action on the merits. The goal of the program is to advance the prosecution of patent applications by providing the applicant an opportunity to address patentability issues with the examiner via a non-discretionary interview at the beginning of the prosecution process. Under the current system granting of an interview before the first action on the merits is within the discretion of the examiner.

The First Action Interview Pilot Program is currently limited to utility applications for data processing inventions (Class 707 & Class 709), which have not received a first action on the merits. Additionally, to be eligible the application must meet certain filing date requirements and have three or less independent claims and twenty or fewer total claims. For complete details, please see the USPTO's detailed announcement, available at: http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/faipp_v2.htm.

The program will run until November 1, 2008.  

USPTO Rules Permanently Enjoined--Tafas v. Dudas April 1, 2008 Summary Judgment Decision

On April 1, 2008, in the consolidated cases of Tafas v. Dudas and Smithkline Beecham Corp. v. Dudas, the United States District Court for the Eastern District of Virginia declared that the Final Rules proposed by the United States Patent & Trademark Office ("USPTO") were null and void because they exceeded the scope of the USPTO's rulemaking authority under 35 U.S.C. § 2(b)(2). Despite the USPTO's arguments that the Final Rules were merely procedural changes, the court found that the Final Rules were substantive in nature because they significantly changed the existing law under the Patent Act and altered the rights of applicants. Following Federal Circuit precedent, the court held that the USPTO was not vested with any general substantive rulemaking power and granted the Plaintiffs' Motions for Summary Judgment.

In rendering its decision of the cross Summary Judgment motions, the court specifically found that "[t]he 2+1 Rule and the 5/25 Rule, which limit continuing applications, RCEs, and claims, and the "examination support document" (ESD) requirement, which shifts the examination burden onto applicants', constitute a drastic departure from the terms of the Patent Act as they are presently understood." The Final Rules would have significantly changed or deprived applicants existing rights and obligations, and were thus substantive in nature and outside the USPTO's rulemaking authority.

The Final Rules were scheduled to take effect on November 1, 2007. However, the District Court for the Eastern District of Virginia had granted a preliminary injunction on October 31, 2007. The court's order on April 1st permanently enjoins the USPTO from implementing the Final Rules.

Recognition - STAAS AND HALSEY LLP Ranks in Top 15 Patent Firms for 2007

STAAS AND HALSEY LLP is pleased to announce that it has been ranked in the top 15 patent firms in the United States among more than 350 law firms, according to the magazine, "Intellectual Property Today". With over 1,130 U.S. utility patents and over 310 U.S. design patents issued for its clients, Staas and Halsey LLP continues its proven, outstanding track record specializing exclusively in the field of patents and other intellectual property services for over 35 years.

Patent, Trademark, & Copyright - Licensees' Rights to Bring Suits Augmented By Supreme Court's MedImmune Ruling; Federal Circuit Reversed.

On January 9, 2007, the Supreme Court issued its ruling in MedImmune, Inc. v. Genentech, Inc. that a licensee is not required to breach the licensing agreement in order to bring suit against the licensor in which the licensee contends that the underlying patent is invalid, unenforceable, or not infringed. This ruling reversed the Federal Circuit's long embraced principle that a licensee lacks standing to bring a declaratory action against its licensor unless the licensee first breaches the license. Legal scholars and commentators noted the possibility of overcoming this Supreme Court precedent by adding certain language to licensing agreements.  

Patent - Tempe's Limelight hit with patent-infringement lawsuit

On January 2, 2008, Level 3 Communications filed a patent-infringement lawsuit against Limelight Networks, alleging that the Tempe-based company has grown its business on technology that it does not own. Colorado-based Level 3 claimed, in a lawsuit filed Dec. 17 in U.S. District Court in Virginia, that it purchased the rights to several patents for content-delivery network technology used by Limelight. The federal lawsuit alleges Limelight "is aggressively marketing and advertising the services that Limelight created using Level 3's misappropriated intellectual property."

Patent - Patent Applications in China Exceed 4 Million

On December 30, 2007, the State Intellectual Property Office of China (SIPO) announced in a press release that China has received the 4,002,103rd patent application by December 24, 2007, marking the birth of the fourth million applications. The country used 15 years to see its first million applications in 2000 since the implementation of its Patent Law in 1985, 4 years and 2 months the second million, 2 years and 3 months the third, then 1 year and 6 months the fourth.

Intellectual Property - Secretary Gutierrez consults with visiting USPTO attachés on progress in advancing intellectual property rights internationally

On December 21, 2007, U.S. Commerce Secretary Carlos M. Gutierrez, United States Patent and Trademark Office (USPTO) Under Secretary Jon Dudas and Deputy Under Secretary Margaret Peterlin met with intellectual property (IP) attachés at the USPTO Global Intellectual Property Academy. Their meeting was part of a week-long consultation on helping U.S. IP owners obtain and enforce their IP rights around the world.

Patent - Vonage in legal tussle with Nortel over "violation of nine patents"

On December 19, 2007, Nortel filed a lawsuit against Vonage claiming that the voice provider has violated nine patents related to its Internet phone service, including features such as 911 and 411 calling and click to call. The lawsuit, which was filed in U.S. District Court in Delaware, comes in response to a suit Vonage is pursuing against Nortel. In 2004, a company called Digital Packet Licensing sued Nortel for infringing on three of its patents. Vonage acquired Digital Packet Licensing last year and is continuing the lawsuit.

Patent - eBay Takes a $30 Million Hit Over Buy It Now Patent

On December 12, 2007, a Federal Court judge has found that MercExchange LLC is due $30 million from eBay in compensation for a patent breach of MercExchange's "Buy It Now" patent, a long standing feature available on eBay auctions. The case started back in 2001, and in 2003 a jury found in favor of MercExchange. According to the Wall Street Journal, the case triggered a review by the U.S. Supreme Court over whether injunctions or damage awards are sufficient remedies in patent cases, with a ruling in 2006 that "all but required injunctions in patent cases." eBay convinced the court in September that damages alone would suffice in this case given the ruling, leading to the $30 million today.

Intellectual Property - IDS Rules Move Forward

On December 11, 2007, The White House approved the PTO's proposed changes to the Information Disclosure Statement Requirements "and other related matters." The final rules have not been made public, however, the rules are expected to impose a requirement for the personal review of, and to provide information about, certain citations; permit only timely IDS submissions; only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted permit third parties to submit prior art up until the mailing of a notice of allowance after application publication; no longer permit an IDS to meet the submission requirement for a request for continued examination (RCE); permit certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and revise the protest rule for dealing with unsolicited information received from third parties. The continuation rules were finally published about six-weeks after OMB approval. If the PTO follows a similar schedule, expect a notice in later January 2008 regarding additional implementation of IDS requirements.

Patent - Toyota's Hybrids Survives ITC

On February 14, 2007, an administrative judge at the United States International Trade Commission ("ITC") ruled that Toyota Motor Corp.'s Prius and Highlander hybrids did not infringe Florida-based Solomon Technologies Inc.'s patent on hybrid motor and transmission systems. This ruling is subject to ITC review and appeal in federal court.

Patent - Google Loses Copyright Suit in Belgium

On February 13, 2007, the Brussels Court of First Instance ruled that Google Inc. must remove unauthorized headlines and links to Belgian newspaper articles that it posts on the news section of its Web site.

Patent - Dippin' Dots Loses At Federal Circuit

On February 9, 2007, the Federal Circuit in Dippin' Dots, Inc. held inter alia that Dippin' Dots, Inc.'s ("Dippin' Dots"'s) method of making frozen ice cream pellets was invalid because it was obvious. Moreover, Dippin' Dots was liable for antitrust violations for inequitable conduct based on not disclosing its pre-filing use of the patented method to the USPTO. In its decision, the Federal Circuit also noted that the transition phrase "comprising the steps of" does not render every word and phrase therein open-ended.

Patent - Federal Circuit Holds Request For Interference Is Waiver of Sovereign Immunity

On January 23, 2007, the Federal Circuit in Vas-Cath, Inc. held that the district court erroneously dismissed Vascath, Inc.'s ("Vascath"'s) appeal of its appeal of an interference decision between Vascath and the University of Missouri (the "University"). The district court contended that the Eleventh Amendment shielded the University from appeal; however, the Federal Circuit stated that by the University requesting and participating in the interference proceeding into the United States Patent and Trademark Office, the University waived its constitutional immunity not only in the proceeding but also in the appeal taken by the losing party.

Patent - Federal Circuit Issues Decision "About" Claim Construction

On January 19, 2007, the Federal Circuit affirmed a district court's ruling in Ortho-McNeil Pharmaceutical, Inc. v. Caraco Pharmaceutical Labs., Ltd. In particular, the Federal Circuit found that the claim construction of "about 1:5" was intended to comprise a range of 1:7.1 to 1:3.6 based on an expert's district court testimony identifying the range as not statistically different from the claimed language. The court reasoned that "about 1:5" must have a narrow meaning because ratios of "1:1" and "1:5" were specifically claimed and to find otherwise would be to render those claims meaningless. Because the alleged infringing product had a ratio of 1:8.67, the Federal Circuit affirmed the district court's summary judgment finding of noninfringement.

Recognition - STAAS & HALSEY LLP is a Top 8 Law Firm in Patent Quality for 2003

The March 2004 issue of IP Law & Business magazine reported rankings by PatentRatings LLC, an independent patent research and rating service, for quality of patents issued in 2003. STAAS & HALSEY LLP ranked third overall in patent quality, making STAAS & HALSEY LLP among the eight (8) "most mentioned" law firms in the United States with regard to quality of issued patents. The study considered patent quality in six (6) technical categories, with the firm being ranked sixth in both electrical and computer/software patents and seventh in mechanical patents. PatentRatings LLC ranks firms based on Intellectual Property Quotients (IPQ) of patents produced by the firm. An average IPQ is 100, and is based on an analysis of 50 objective factors in issued patents. In 2003, STAAS & HALSEY LLP scored an average IPQ of 131.0 in the 159 electrical patents issued, 141.8 in the 411 computer/software patents issued, and 114.1 in the 124 mechanical patents issued. For further information, click here .

Staas & Halsey helps Alias|Wavefront secure their Intellectual Property

Staas & Halsey is pleased to be associated with Alias|Wavefront^TM, the 2003 winner of the Academy of Motion Picture Arts and Sciences Oscar^® for Scientific and Technical Achievement, awarded for Alias|Wavefront's development of Maya^® software. Maya is a 3D animation and effects package used to produce animation and effects for many major motion pictures, such as The Matrix and The Lord Of The Rings: The Two Towers. Staas & Halsey helps Alias|Wavefront secure their Intellectual Property, including patents covering technical innovations in Maya.

Alias|Wavefront is a trademark of Alias|Wavefront, a division of Silicon Graphics Limited in the United States and/or other countries worldwide. Maya is a registered trademark of Silicon Graphics, Inc. in the United States and/or other countries worldwide, exclusively used by Alias|Wavefront, a division of Silicon Graphics Limited. Oscar is a trademark and service mark of the Academy of Motion Picture Arts and Sciences.

Patent - Computer Display Method Infringed

On May 1, 2002, a jury awarded Adobe Systems $2.8 million in damages against Macromedia for patent infringement. The jury found that Macromedia's web design software infringes Adobe's U.S. Patent No. 5,546,528 by providing a user interface feature that allows users to rearrange the workspace on their PC screens. A related trial is also scheduled involving a counter-suit by Macromedia against Adobe Systems for patent infringement. The counter-suit alleges that Adobe's image-editing software infringes two Macromedia patents covering editing tools.

Copyright - IEEE Removes Requirement that Authors Comply with DMCA

On April 22, 2002, the Institute of Electrical and Electronics Engineers Inc. (IEEE) announced that it would no longer require authors to stipulate that they have complied with the provisions of the Digital Millennium Copyright Act (DMCA). The IEEE stated that the requirement was dropped in response to criticism that the DMCA could prohibit authors from publishing articles addressing digital protection, encryption, and cryptography technologies. The IEEE produces over 100 magazines and journals each year in electrical and electronics engineering, computing and information technology, and related fields.

Trademark - NYSE Architectural Logo May be Entitled to Dilution Protection

On April 1, 2002, the U.S. Court of Appeals for the Second Circuit ruled that the New York Stock Exchange (NYSE) building façade may serve as a trademark that is subject to protection against dilution. The Second Circuit affirmed the dismissal of a traditional trademark infringement claim by the Southern District of New York because the "obvious pun" used by the casino defendant was not likely to cause consumer confusion. The court also agreed that other NYSE trademarks lacked the inherent distinctiveness necessary for a claim of dilution, but disagreed with the lower court's finding that the mark containing the NYSE building facade lacked distinctiveness. In addition, the court held that the NYSE's state law dilution by tarnishment claim was not without merit and remanded the case to the lower court.

Trademark - Supreme Court to Decide Standard for Proving Trademark Dilution

Since the passage of the 1996 Federal Trademark Dilution Act, federal circuit courts have developed inconsistent decisions regarding whether the plaintiff must prove that the defendant's activities have caused actual dilution, i.e., current economic harm, or whether a showing of a mere likelihood of dilution is sufficient. In Moseley v. V Secret Catalogue, Inc., the district court and the Sixth Circuit Court of Appeals enjoined defendant's use of "Victor's Little Secret" with lingerie and "adult" videos and novelties because it was likely to dilute "Victoria's Secret", a famous mark used with lingerie. Due to the clear split in the Circuits, the Supreme Court announced on April 15, 2002 that it will decide which standard of proof is appropriate under the Act.

Patent - CAFC Holds Unclaimed Subject Matter in Public Domain

On March 28, 2002, the Court of Appeals for the Federal Circuit (CAFC), in an en banc decision, held that a patentee "cannot assert the doctrine of equivalents to cover ... [a] disclosed but unclaimed" feature. The court noted that "a patentee cannot narrowly claim an invention to avoid prosecution scrutiny by the PTO, and then, after patent issuance, use the doctrine of equivalents to establish infringement because the specification discloses equivalents." The unclaimed subject matter will enter the public domain only if it is not claimed in another patent. As the court noted, "[w]ithin two years from the grant of the original patent, a patentee may file a reissue application and attempt to enlarge the scope of the original claims to include the disclosed but previously unclaimed subject matter ... [or] file a separate application claiming the disclosed subject matter" prior to issuance of the patent. To request a copy of the decision or for further information about filing reissue and continuation applications, press the following button.

Trademark - Judge Denies Preliminary Injunction in Windows® v. Lindows

On March 15, 2002, a U.S. District Court judge denied Microsoft's motion to preliminarily enjoin Lindows.com, Inc. from using the term "Lindows" with a software product during the ensuing trademark infringement trial. The judge indicated that Microsoft had not met its' burden to prove a likelihood of success at the trial and there were "serious questions" whether the Windows® mark was generic, and thus ineligible for trademark protection. The trial is expected to begin sometime in 2003.

Patent - British Telecom's Asserted "Hyperlink" Patent

On March 13, 2002, the U.S. District Court for the Southern District of New York issued an opinion and order following a claim construction or "Markman" hearing in the patent infringement litigation between British Telecommunications (BT) and Prodigy Communications. In June of 2000, BT sent letters to the top Internet service providers (ISPs) asserting that U.S. Patent 4,873,662, issued in 1989, covers hyperlinks as used on the Internet. BT subsequently filed suit for patent infringement against Prodigy in the Southern District of New York. The '662 patent is based on an application filed in 1977 and thus, patent rights outside the U.S. have expired. Commentators have speculated that the limiting claim construction ruling has set the stage for an early dismissal of the suit. Additionally, the delay in attempting to enforce the '662 will limit BT's past damages, but licensing revenue or damages could be received from now through October 2006.

Patent - "1-Click" Patent Infringement Lawsuit Settled

On March 5, 2002, Amazon.com and Barnes&Noble.com filed a settlement to the "1-Click" patent infringement action with the U.S. District Court for the District of Washington. Amazon.com had sued Barnes&Noble.com shortly after the issuance of the patent in November of 1999. The suit alleged that Barnes&Noble.com illegally copied the "1-Click" technology which allows website visitors to shop without re-entering shipping and billing information each time they make a purchase through the website. Neither company has released the terms of the settlement.

Trademark - Fraudulent .INFO Registrations Revoked

In late February 2002, Afilias, Ltd., the official registry of the new ".info" generic top level domain ("gTLD"), succeeded in challenging 741 fraudulent .info registrations. The fraudulent registrations were obtained from July 25, 2001 to August 27, 2001, when the .info domain name registry accepted a limited number of registrations for the new gTLD. The "sunrise" period was created to provide owners of registered marks with an opportunity to reserve their marks prior to the .info domain names being made available to the general public. However, many of the most coveted, and now revoked, domain names were acquired by persons falsely alleging they owned the corresponding trademarks. Afilias has stated that it plans to challenge approximately 10,000 fraudulently obtained registrations.

Copyright - Summary Judgment Denied & Further Discovery by Napster Permitted

On February 22, 2002, U.S. District Court Judge Marilyn Hall Patel denied a motion for summary judgment filed by music industry representatives alleging Napster willfully engaged in copyright infringement. The court held that the music industry representatives had not adequately demonstrated ownership of the copyrights in question to justify granting the motion. Further, the judge granted Napster's request for additional discovery, stating that Napster's counterclaims raise serious questions of possible copyright misuse by the music industry representatives. These are merely the latest actions in this copyright infringement battle that began in late 1999.

Patent - European Union: "Technical Contribution" Required for Software Patents

On February 20, 2002, the Commission of the European Union published a proposed directive on software patents intended to harmonize the requirements for obtaining a software patent in the various European Union member states. Under the proposed directive, computer-implemented inventions would only be patentable if they make a "technical contribution" to a technological field that is not obvious to a person of normal skill in that field. The Commission explained that the technical contribution requirement may be satisfied if there was some improvement in the way that processes are carried out, how resources are used in a computer, or if the exercise of technical skills beyond "mere" programming was necessary to arrive at the invention.

Copyright - Supreme Court Will Hear Challenge to Copyright Term Extension Statute

On February 19, 2002, the United States Supreme Court granted certiorari of a lower court's ruling that upheld provisions of the Copyright Term Extension Act of 1998 (CTEA) that extended the terms of all copyrights by twenty additional years. The Supreme Court will decide whether either the retrospective or prospective term extension provisions of the CTEA violate the First Amendment or the Copyright Clause of the Constitution.

Patent - Court Paves the Way for Enforcement of Internet Download Patent

On February 8, 2002, a U.S. magistrate judge released a claim construction report and recommendation from a "Markman" hearing upholding a patent owner's interpretation of a patent as possibly covering the downloading of music and movies from the Internet. The judge rejected the defendants' argument that the patent did not apply to the transmission of information via the Internet. The case is currently proceeding towards trial.

Copyright - Internet Display of "Thumbnails" Is Not Copyright Infringement

On February 6, 2002, the United States Court of Appeals for the Ninth Circuit held that an Internet search engine's display of miniaturized "thumbnail" images did not infringe the copyrights of the images' owner. The search engine used web crawling software to download full sized copies of images from the Internet and then created smaller lower-resolution images to be displayed in response to search engine queries. The Ninth Circuit held that although the use of thumbnail images constituted fair use defense to infringement, the search engine's display of full-sized images did infringe the copyright owner's exclusive right to display the images publicly.

Trademark - Failure to Conduct Trademark Search May Be Evidence of Bad Faith

On January 17, 2002, an arbitration panel of the World Intellectual Property Organization ruled that under the Uniform Dispute Resolution Policy (UDRP) a domain name registrant's failure to conduct a trademark search prior to the registration of a domain name might satisfy the bad faith requirement of the UDRP. In Kate Spade, LLC v. Darmstadter Designs, the arbitration panel found that in addition to the registrant's bad faith failure to conduct a trademark search, the domain name was identical to the complainant's trademark and the registrant had failed to use the domain name or otherwise establish legitimate rights to the domain. Thus, the requirements for ordering the transfer of the domain name under the UDRP were deemed satisfied.

Patent - W3C Addresses Patent Issues in Standards

The World Wide Web Consortium (W3C), the organization that defines many of the technological standards for the web, is considering revising its policies to allow for patented technologies to be incorporated into web standards. The policy shift would be a significant change for the organization and could allow for royalty fees to be charged whenever certain web operating standards are used. The W3C has stated that where patented technologies are used, the new policy would provide for royalty fees based upon reasonable, non-discriminatory licensing terms.