Federal Circuit Finds Revolutionary Non-Invasive Fetal DNA Test Method …Mondaq News Alerts (registration)On June 12, 2015, in Ariosa Diagnostics, Inc. et. al. v. Sequenom, Inc. et. al., the Court of Appeals for the Federal Circuit invalidated claims …Continue Reading ...
On about 16 June 2015, Joule Unlimited issued a press release which begins
Joule, the pioneer of liquid fuels from recycled CO2, today announced the issuance of an additional patent on the direct, continuous production of hydrocarbon fuels – extending its ability to target the highest-value molecules of the petroleum distillation process and generate them on demand from sunlight and CO2.
U.S. Patent #9,034,629, issued on May 19, covers both the cyanobacterium and the process for directly converting CO2 into medium-chain alkanes, which are the molecular basis of diesel, jet fuel and gasoline.
The first claim of US 9,034,629
An engineered cyanobacterium,
wherein the engineered cyanobacterium comprises recombinant genes encoding an alkane deformylative monooxygenase having EC number 220.127.116.11, a thioesterase having EC number 18.104.22.168, and a carboxylic acid reductase having EC number 22.214.171.124, wherein the alkane deformylative monooxygenase is encoded by adm, the thioesterase is encoded by fatB or fatB2, and the carboxylic acid reductase is encoded by carB, wherein the thioesterase converts C(.sub.8-12) acyl-ACP to C(.sub.8-12) fatty acid, wherein the carboxylic acid reductase converts C(.sub.8-12) fatty acid to C(.sub.8-12) aldehyde, wherein the alkane deformylative monooxygenase converts C(.sub.8-12) aldehyde to C(.sub.7-11) alkane, and wherein the engineered cyanobacterium produces at least one of heptane, nonane, and undecane in an amount greater than an otherwise identical cyanobacterium, cultured under identical conditions, but lacking recombinant genes encoding alkane deformylative monooxygenase, thioesterase, and carboxylic acid reductase.
Example 4 includes the text:
One or more recombinant genes encoding one or more enzymes having enzyme activities which catalyze the production of medium chain-length alkanes are identified and selected. The enzyme activities include: an alkane deformylative monooxygenase activity, a thioesterase activity, a carboxylic acid reductase activity, and a phosphopanthetheinyl transferase activity, a long-chain fatty acid CoA-ligase activity, and/or a long-chain acyl-CoA reductase activity. Such genes and enzymes can be those described in Tables 1 and 2.
The selected genes are cloned into an expression vector. For example, adm-carB-entD-fatB or adm-acrM-fadD-fatB (or combinations of homologs thereof) are cloned into one or more vectors. See FIG. 6. The genes can be under inducible control (such as the urea-repressible nir07 promoter or the cumate-inducible cum02 promoter). The genes may or may not be expressed operonically; and one or more of the genes can be placed under constitutive control such that when the other gene(s) are induced, the genes under constitutive control are already expressed. For example, one might express adm, carB, and entD constitutively while placing fatty-acid-generating fatB under inducible control; thus when fatty acids are made by fatB after induction, the remainder of the pathway is already present.
One or more vectors are selected and transformed into a microorganism (e.g., cyanobacteria). The cells are grown to a suitable optical density. In some instances cells are grown to a suitable optical density in an uninduced state, and then an induction signal is applied to commence alkane production.
Alkanes are produced by the transformed cells. The alkanes generally have 7, 8, 9, 10, or 11 carbon atoms. In some instances, alkanes are detected. In some instances, alkanes are quantified. In some instances, alkanes are collected.
The claim to priority: This application is related to U.S. Provisional Application No. 61/756,973, filed Jan. 25,2013.
There was a final rejection in the case on 9 October 2014. Among other items, there were rejections over Roessler, including US 8,633,002. Joule Unlimited, in papers and in an interview on 13 January 2015, pointed to the lack of working examples in the cited prior art of Roessler.Continue Reading ...
As to patent reform, the Innovation Act of Congressman Goodlatte currently before the House is the same Innovation Act that passed the House in the last session, and includes the presumption of “loser pays”. The PATENT Act, proposed in the Senate this session, responded to criticism of “loser pays,” and modified the provision to make the situation more acceptable to smaller entities.
From within The Anti–Innovation Patent Act of 2015
Under the terms of the Innovation Act the losing party would have to pay the attorney’s fees of the prevailing party, unless the court finds that the positions taken by the losing party were objectively reasonable. This is a giant step beyond the PATENT Act that would allow a court to award attorney’s fees to the prevailing party if the position or conduct of the non-prevailing party was not objectively reasonable and, thus does not create a presumption of fee shifting. In either case, though, it alters the “American rule” that attorney’s fees should be borne by the respective parties absent exceptional circumstances. It ignores the recent Supreme Court decisions giving district courts greater discretion to award attorney’s fees. Indeed, courts have recently begun to grant more motions seeking attorneys’ fees. Fee shifting will likely deter legitimate owners of enforcing their patent rights by making the risk of enforcement prohibitively high.
Smaller companies also will be less financially able to enforce their patent rights. In order to finance a patent enforcement proceeding now, small firms with limited resources often turn to “funders” that agree to cover costs and expenses in return for a share of the recovery. The PATENT Act would let the defendant join individual “interested parties,” who have a financial interest in the patent, such as funders, and would make them personally liable to satisfy any award of attorney’s fees and expenses if the party owner cannot pay the award. This provision is likely to dry up most sources of patent litigation funding making it even harder, if not impossible, for small companies and individuals to assert their patent rights against infringers. In essence, by creating disincentives to enforce patent rights, Congress is providing certain large businesses with royalty free licenses.
The bills pending in Congress go far beyond what is necessary to address the limited abuse of the system by patent trolls. According to Dana Rohrabacher, (R-Calif.), the Innovation Act is “actually anti-innovation” and “in reality makes it harder for small inventors to protect their patents and easier for big corporations to steal them.” He added: “In all my years [in Congress] I have never seen a bill so deserving of the description crony capitalism.”
The piece concludes
The winners here would be large companies and corporations that will find it much easier to willfully ignore patent rights and be freed from having to pay royalties to patent owners. Apart for small patent owners, the loser will be the American public that will be deprived of jobs and new technology.
From a previous post on IPBiz:
An AP story notes that doughnut selling lawyers were partly to blame for the demise: A county commissioner who owns a doughnut shop and two lawyers who own a new Dunkin’ Donuts on Panama City Beach turned against him … After the lawyers threatened to sue, his bosses at the Florida Health Department made him remove the anti-fried dough rants and eventually forced him to resign, [Newsom] says.
This little story evokes themes in the story of patent reform, although the patent reform saga has added complexity. In patent reform, the big doughnut sellers (eg, IBM, Cisco) are complaining about the little doughnut sellers (“trolls”) and are trying to implement “reform” to favor the big doughnut sellers, rather than to get rid of the doughnuts. The popular press would have the public believe that the little doughnut sellers are the only ones selling doughnuts, and that “reform” will get rid of the doughnuts. Anybody who actually advocated getting rid of the doughnuts would meet the same fate as Dr. Newsom, likely from doughnut selling lawyers. Furthermore, the position of the big doughnut sellers would do significant harm to smaller vendors, who aren’t selling doughnuts at all.Continue Reading ...
National security implications of international collaborationsLexology (registration)The patent laws of many countries contain security provisions that either (i) require the filing of a patent application in that country before the filing of a patent …Continue Reading ...
Business TodayThe Hidden Pharma BillionairesBusiness TodayThe company is also planning to launch patented drugs of multinational pharma companies in the Indian market and has started exporting its products to developing markets, including Africa. It ha…Continue Reading ...
Appeal Number: 14-1411Continue Reading ...
Appeal Number: 14-1292Continue Reading ...
Wal-Mart Has $76 Billion in Overseas Tax Havens, Report Says
All of Wal-Mart’s roughly 3,500 stores in China, Central America, the U.K., Brazil, Japan, South Africa and Chile appear to be owned through units in tax havens such as the British Virgin Islands, Curacao and Luxembourg, according to the report from …
Sioux Falls Argus LeaderINVENTORS CORNER: Beresford man patents golf simulatorSioux Falls Argus LeaderThe U.S. Patent and Trademark Office recently released a report on the numbers of patents that are not assigned to a company when issued and thus are …Continue Reading ...
Federal Circuit finds revolutionary non-invasive fetal DNA test method …Lexology (registration)On June 12, 2015, in Ariosa Diagnostics, Inc. et. al. v. Sequenom, Inc. et. al., the Court of Appeals for the Federal Circuit invalidated claims in U.S. Pa…Continue Reading ...
Biosimilars at the Federal Circuit – Will this be the Last Dance?
However, because of the differences between these two types of drugs, stemming from the increased complexity in manufacturing and patent protection, unique provisions were included in the BPCIA. Unfortunately, as Judge Lourie of the Federal Circuit put …
ECJ Rejects Challenge Against Unitary Patent Package
Mondaq News Alerts (registration)
On 5 May 2015, the Court of Justice of the European Union (“ECJ”) handed down its judgments on Spain’s challenges of the legality of the “unitary patent package” (Cases C-146/13 and C-147/13). In its judgments, the ECJ followed the opinions of the …
For those who thought that the US Court of Appeals for the Ninth Circuit had embraced a new theory of copyright in Garcia v Google in February 2014 (here), such expectations were disappointed last month when the Court reversed its decision, denying Garcia’s copyright interest in her acting performance within the highly controversial video Innocence of Muslims.
In brief, actress Cindy Lee Garcia, right, featured a five-second clip for a film entitled Desert Warrior. Her performance was subsequently used by the film’s producer, a Mark Youssef (formerly known as Nakoula Basseley Nakoula), in Innocence of Muslims, a movie that was offensive to the Islamic prophet Muhammad. Youssef introduced the dubbed version of Garcia’s performance into the video, thus making her a participant in his anti-Islam message. Then he uploaded the video on to YouTube, securing a volume of viewers’ visits which ran at the rate of more than one billion per month. The video, translated into Arabic, spread throughout the Middle East where it generated violent protests. As a result Ms Garcia received several death threats.
Garcia tried to get the video removed from YouTube by sending a take-down request to Google alleging violation of her state law rights to privacy and to control her likeness. She also sent Google five take-down notices under Article 17 USC, the Digital Millennium Copyright Act, all in vain. Garcia then sued Google and Youssef before a Los Angeles State Court on the basis of a selection of torts that included invasion of privacy and violation of her right to publicity. After dropping that action, she sought a temporary restraining order and an order for a preliminary injunction against the same co-defendants before the District Court of the Central District of California on the basis of copyright infringement, which is where the copyright story begins. The court held that Google was not prohibited from hosting Innocence of Muslims, either because Garcia’s copyright interest in the video was not established or because she was taken to have granted an implied licence of her contribution in the video to Youssef.
All in all, Garcia did not prove that the injunction would have prevented any harm, since she did not act promptly by commencing legal proceedings as soon as the video was online and did not establish that she had a copyright interest that was enforceable in the proceedings on the merits. On appeal the Federal Court granted Garcia an injunction, ordering Google to remove all copies of the video. The Court subsequently amended this injunction, instead allowing only versions of the video which did not include Garcia’s performance to be distributed on YouTube.
On 18 May last, the Court of Appeals for the Ninth Circuit reheard the case and took a different view. The importance of this final decision in Garcia v Google can be explained in relation to three main points:
* definition of what is copyright-protectable in audiovisual works, refusing to accept that the existence of an autonomous copyright interest in a single acting performance constituted authorship of the whole work;* the exercise of seeking to balance copyright with freedom to speech and * the consequences of copyright claims on the monitoring of uploaded materials by internet service providers (ISPs).In holding that no preliminary injunction should have been granted, the Court applied the factors construed in Winter v NRDC, which would require the plaintiff to show (1) that she is likely to succeed on the merits, (2) that she is likely to suffer irreparable harm in the absence of a preliminary injunction, (3) that the balance of equities is in her favour and (4) that granting an injunction is in the public interest. On this basis, said the Court, neither the law nor the facts favoured Garcia’s application for relief.
Why couldn’t Garcia’s copyright claim prevail? Said the Court, Innocence of Muslims was a motion picture, this being an “audiovisual work … consisting of a series of related images which, when shown in succession, impart an impression of motion, together with accompanying sounds, if any”. However, citing the Copyright Office’s expert witness, it affirmed that for the purposes of copyright protection a motion picture is a single integrated work and that the Office recognises no copyright claim by an actor or actress in his or her performance within a motion picture. This being so, Garcia’s contribution in Innocence of Muslims could not be considered as joint authorship in the video. If it did, it would pave the way to a dispersion of copyright interests by recognising as many works as the number of contributors involved in them, making “Swiss cheese” of the copyright (at p.20).
Equally, Hollywood relies on contract law to limit actors’ copyright claims, and actors are deemed to have given implied licences to film-makers in the absence of a contract. The Court took the view that Garcia’s performance was a work-made-for-hire and that she thus granted an implied licence to Youssef.
The Court emphasised that, from the perspective of third party content distributors, it would not be easy to access any implied licences, meaning that no previous knowledge of possible copyright infringement can be required of them, nor any obligation to monitor the content uploaded. Finally, the fact that Garcia did not fix her performance on a tangible medium of expression ran counter to recognising her as having made any authorial contribution to Innocence of Muslims.
Although the Court might have stopped there, it went on to rule on the irreparable harm requirement. The Court did not disregard the seriousness of the death threats to Garcia but, even conceding that she suffered emotional distress because of the danger to her life, such harm was not connected with her copyright claims. Copyright serves to reward an author’s creativity and to boost new creation, not to protect privacy.
Garcia might better have sought an injunction on the basis of breach of privacy or fraud, said the Court, to provide some relief from her alleged personal and reputation harm. However, in the US there is currently nothing like the EU right to be forgotten [France has recently asked Google to expand the right to be forgotten: see here], as articulated by the Court of Justice of the European Union in Case C-131/12 Google Spain v Agencia Española de Protección de Datos (AEPD) [noted by the IPKathere]. Likewise, the Digital Millennium Act, Article 17, excludes moral right protection in respect of audiovisual works. The Court of Appeals for the Ninth Circuit therefore concluded that no take-down order should have been ordered against Google, especially since that would entail a ‘prior restraint of speech’ which clashes with First Amendment rights. As the Court stated: “copyright is not categorically immune from challenges under the First Amendment”; the injunction had the effect of depriving the public of “the ability to view firsthand, and judge for themselves, a film at the center of an international uproar”.
Judge Kozinski, dissenting, held that Garcia’s acting performance was fully copyright-protected and that she acquired copyright at the moment when Youssef fixed her performance in Desert Warrior. Of the majority decision, he considered that it sacrificed copyright interests for the sake of simplification of film-making productions and service providers’ activities.
List of Swiss cheeses here
What makes cheese Swiss here
Swiss cheese recipes here and here
Thanks to Maulin Shah (EnvisionIP), IP Finance can bring you this report on Monday’s “Banking on IP” breakout session at IPBC Global 2015. Much appreciated, Maulin! Incidentally, this post is based on Maulin’s original blogpost on PatentVue, here.
The topic of financial services patents was a focus of discussion during a panel moderated by Bruce Berman (Brody Berman Associates) during this year’s IP Business Congress in San Francisco. The panellists included Michael Chernoff (MDB Capital Group), Andrew Ramer(Cantor Fitzgerald) and Sean Reilly (The Clearing House Payments Company). Each panellist had a significant perspective on the future of patents held by banking and financial services firms, where the majority of these patents are primarily business methods and software-related.The panellists seemed to agree that, overall, values for patents in their industry have seen a reduction post-Alice Corp. Michael Chernoff stated that, over the years, he has stressed the difficulty in valuing methods patents, and the current environment is no exception. However, as history has shown, markets tend to rise and fall with the tides, and the panellists acknowledged that the near future could possibly be a low point for methods patents valuations.Research from Michael Chernoff’s firm showed that financial services companies, as well as major technology companies, continue to seek, and are receiving, methods patents, albeit not at the same rate as in previous years. For example, MDB Capital’s analysis of patent applications from 2011 to 2015 shows that eBay owns 585 patent application families related to business methods and software patents relevant to financial transactions and supporting technologies, while Bank of America owns 633.Andrew Ramer envisioned that patenting activity at his firm, and other financial firms, would continue with regard to financial service-related technology. While he believed methods-related claims will still be sought, patent application filings related to consumer and enterprise facing devices and hardware may increase in the coming months and years.Sean Reilly believed that the focus at the patent office would be on quality and clarity in terms of business methods patents; he did not feel that stricter legislation is necessarily the correct way to address issues surrounding the use of software patents.The overall tone of this year’s conference seemed to focus on a pendulum shift from the high values attributed to patents during the Nortel and Motorola patent acquisitions (here and here) just a few years ago. Many participants and speakers felt that the current environment is an extreme situation caused by an uncertainty in case law, and by the legislative issues still pending in Congress. Despite the negative headwinds, some feel this may present a unique buying opportunity –- where an increased risk may prove to yield higher returns.It’s hoped that, once some further clarity comes out of the courts and Congress, the pendulum may swing back towards a median, which may signal an increase in overall patent values, especially for software-related patents.
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Appeal Number: 14-7054Continue Reading ...
Case T‑395/14 Best-Lock (Europe) Ltd v OHIM, Lego Juris A/S is another of those intellectual property cases that hits the headlines on account of its subject matter rather than because of its intrinsic legal interest — though it is by no means lacking in legal interest. It’s a General Court of the European Union decision regarding the validity of a Lego Community trade mark that will be familiar to many readers who are children, have children or are movie buffs: the three-dimensional shape of a little Lego man.
The decision of the court has been conveniently summarised by a Curia press release, which reads like this (the bold black text is in the original; the red consists of Kat comments):
“The General Court upholds the registration of the shape of Lego figures as a Community trade mark
According to the Community Trade Mark Regulation, a sign which consists exclusively of the shape determined by the nature of the goods themselves or which consists exclusively of the shape of goods necessary to obtain a technical result may not be registered as a Community trade mark.
In 2000, Lego Juris (‘Lego’) registered the following three-dimensional Community trade marks with the Office for Harmonisation in the Internal Market (‘OHIM’) in respect of, inter alia, games and playthings:
Katnote: the illustration above is the one that appears in the text of the decision available from the Curia website. The press release also features a version that shows the little thingummy on the top of the man’s head that interlocks with other Lego pieces
Best-Lock, a competitor which uses similar figures, applied for a declaration of invalidity in respect of those trade marks, on the grounds, first, that the shape of the goods in question is determined by the nature of the goods themselves (namely, the possibility of joining them to other interlocking building blocks for play purposes) [Article 7(1)(e)(i)] and, second, that the toy figures in question, both as a whole and in their particulars, provided technical solutions (namely, being combined with other building blocks) [Article 7(1)(e)(ii)]. OHIM rejected Best-Lock’s applications for a declaration of invalidity. Best-Lock therefore applied to the General Court of the European Union for annulment of OHIM’s decisions.
By today’s judgments, the General Court dismisses Best-Lock’s actions and thereby upholds the decisions to register the shape of Lego figures as a Community trade mark.
Regarding, first of all, the complaint that the shape of the goods in question is determined by the nature of the goods themselves, the General Court rejects that complaint as inadmissible in so far as Best-Lock has not put forward any argument to support that assertion and has not provided any reasoning to show that OHIM’s findings in that regard were incorrect.
Cat Blog Friday, from Cube
Concerning the complaint that the shape of the goods in question is necessary to obtain a technical result, the General Court observes that it appears that no technical result is connected to or entailed by the shape of the essential characteristics of the figures (heads, bodies, arms and legs), as those characteristics do not, in any event, allow the figures to be joined to interlocking building blocks. In addition, the graphical representation of the hands of the figures in question, the protrusion on their heads and the holes under their feet and inside the backs of their legs do not, per se, enable it to be known whether those components have any technical function (such as enabling them to be joined to other components) and, if so, what that function is [this is the subtle point: the graphical representation, which defines the character of the mark, its registrability and its scope of protection, does not enable the consumer to know that the parts in question have any technical function — even if that function may be known to the consumer by some other means]. Lastly, there is nothing to permit the inference that the shape of the figures in question is, as such and as a whole, necessary to enable the figures to be joined to interlocking building blocks: the ‘result’ of that shape is simply to confer human traits on those figures, it being understood that the fact that the figures in question represent characters and may be used by a child in an appropriate play context cannot be described as a ‘technical result’ [in other words, an assessment of ‘technical result’ must be made by looking at the mark itself, not by projecting such a result upon mark by working backwards from the use that is actually made of it].
The General Court concludes from this that the characteristics of the shape of the figures in question are not necessary to obtain a technical result“.
The IPKat thinks that this decision, which affirms the decisions of the Cancellation Division and the Board of Appeal, must be a correct application of Articles 7(1)(e)(i) and 7(1)(e)(ii) of the Regulation. Merpel observes that this appeal decision does not concern Article 7(1)(e)(iii), which provides an absolute bar to registration where a mark consists exclusively of a shape which gives substantial value to the goods.Continue Reading ...
IPBC Global in San Francisco is now finished, but only after another compelling day of sessions, networking and discussion. Here, IAM’s editorial team – Joff Wild, Richard Lloyd, Jack Ellis and Sara Jayne Clover – pick out a few of th…Continue Reading ...
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