The IP Watchtower

IP GENERAL: U.S. Government Accountability Office Releases Report on Effects of Counterfeit and Pirated Goods in U.S.

2010-04-16T23:00:00.000-07:00

On April 12, 2010 the United States Government Accountability Office (GAO) released a report on its efforts to quantify the economic effects of counterfeit and pirated goods in the U.S. The report, "Intellectual Property: Observations on Efforts to Quantify the Economic Effects of Counterfeit and Pirated Goods" (GAO-10-423) is a result of the Prioritizing Resources and Organization for Intellectual Property Act of 2008, which directed the GAO to provide information on the quantification of impacts of counterfeit and pirated goods.

The GAO conducted its research during a one year period from April 2009 to April 2010, and examined pre-existing research on the effects of counterfeiting and piracy on consumers, industries, government and the U.S. economy. The GAO also interviewed officials and experts from U.S. government agencies, industry associations, nongovernmental organizations and academic institutions. The report states that "quantifying the economic impact of counterfeit and pirated goods on the U.S. economy is challenging primarily because of the lack of available data on the extent and value of counterfeit trade." The experts and literature reviewed by the GAO produced different examples of the effects of counterfeit goods and piracy on the U.S. economy, and the GAO concluded that "despite significant efforts, it is difficult, if not impossible, to quantify the net effect of counterfeiting and piracy on the economy as a whole." No recommendations were made in the report.

The GAO's report can be found here.

Information concerning the GAO generally can be found here.

IP GENERAL: Federal Circuit to Hold Judicial Conference on May 20 in Washington D.C.

2010-04-11T19:52:00.000-07:00

On May 20, 2010, the U.S. Court of Appeals for the Federal Circuit's Advisory Council will present a judicial conference, "The Federal Circuit: A National Court of Appeals: Approaching 30 Years," at the Grand Hyatt Washington in Washington D.C. The day-long conference is scheduled to cover all aspects of the Federal Circuit's jurisdiction and will include panel and individual speaker presentations.

The conference's keynote speaker is Andy Serwer, Managing Editor of FORTUNE Magazine. Chief Justice Roberts will also briefly speak at lunch.

Morning panels will consist of an update on the Federal Circuit Historical Society's new/upcoming publications; fact-finding and decision-making by administrative tribunals that are reviewed by the Federal Circuit, and an en banc panel of Federal Circuit judges moderated by Circuit Judge Alvin A. Schall with an opportunity to submit questions ahead of time to be answered by the panel.

Afternoon sessions will include discussions on the United States Court of Federal Claims and Boards of Contract Appeals, the United States Court of Appeals for Veterans Claims, the United States Merit Systems Protection Board, International Trade, and Patent and Trademark.

Information about the judicial conference can be found here.

Registration information can be found here.

Questions for the En Banc panel may be submitted on the form here.

General information concerning the Federal Circuit can be found here.

IP GENERAL: U.S. Chamber of Commerce's Global IP Center Releases 2010 Intellectual Property Agenda

2010-02-24T22:40:00.000-08:00

On February 18, the U.S. Chamber of Commerce's Global Intellectual Property Center (GIPC) released its 2010 Intellectual Property Agenda for Congress and the Administration. The GIPC's agenda includes improving enforcement of IP rights at U.S. borders by supporting passage of S. 1631, the "Customs Facilitation and Trade Enforcement Reauthorization Act of 2009"; working with the Department of Justice's new task force to fight online counterfeiting and digital theft; encouraging the Obama Administration to conclude a "substantive and enforceable" Anti-Counterfeiting Trade Agreement (ACTA); and promoting IP compliance by improving the U.S. Trade Representative's "Special 301" process. The 2010 Agenda can be found here.

According to its website, the U.S. Chamber of Commerce represents the interests of more than 3 million businesses of all sizes, sectors and regions, as well as state and local chambers and industry associations, and more than 96% of its members are small businesses with 100 or fewer employees. The Chamber's mission statement is "To advance human progress through an economic, political and social system based on individual freedom, incentive, initiative, opportunity, and responsibility."

The GIPC was created in 2007 as an affiliate of the U.S. Chamber of Commerce. The GIPC's stated goals are to strengthen the protection and enforcement of IP rights in the United States and abroad; to promote and defend the current system of IP rights and norms in the United States, key countries, and multilateral fora; and to raise awareness and increase support among key audiences for the value of strong IP rights as a driver of innovation and creativity.

Information about the GIPC's 2010 Intellectual Property Agenda can be found here.

Information about the U.S. Chamber of Commerce and the GIPC can be found here.

United States Trade Representative's Public Comment and Request to Testify Period on U.S. IP Protection Ends

2010-02-21T21:00:00.000-08:00

February 18, 2010 marked the end of the United States Trade Representative (USTR)'s deadline to submit public comments, hearing statements and requests to testify at the Special 301 Public Hearing on the effectiveness of U.S. trading partner's protection and enforcement of intellectual property rights (IPR). The original deadline, February 12, 2010, was extended to February 18 due to inclement weather. Foreign governments must request to testify at the public hearing by February 23 and submit written comments and hearing statements by February 26. The Special 301 Public Hearing will be held on March 3, 2010 and additional days from March 4 - 8, as necessary at the United States International Trade Commission, 500 E St. SW, Washington, D.C. 20436.

The USTR called for public comment to assist in the preparation of its annual "Special 301" review of the adequacy and effectiveness of U.S. trading partners' protection and enforcement of IPR.

According to the USTR's website, "The Special 301 process pinpoints key challenges for U.S. intellectual property-based businesses from piracy, counterfeiting, and other forms of IPR theft. To help stem these losses, the Obama Administration has made improvements to Special 301 designed to focus on these threats to America's innovation and creativity - two of our greatest strengths in the global economy." "With more robust, public participation in the review, we can better achieve the goal of identifying and addressing the most serious problems with protection and enforcement of IPRs."

The 2010 Special 301 review process will allegedly include more public participation, such as a public hearing for interested persons to testify about the issues relevant to the review, and a new website for the Special 301 review process including links to current and historical information.

The “Special 301” Report is an annual review of the global state of IPR protection and enforcement, conducted by the USTR pursuant to Special 301 provisions of the Trade Act of 1974 (Trade Act). The Special 301 Report process was created in 1989 as a requirement of the Omnibus Trade and Competitiveness Act of 1988. In 2009 the USTR and IPR team reviewed 77 trading partners for the Special 301 Report. The USTR placed 46 trading partners on the "Priority Watch List," the "Watch List," or on "Section 306 monitoring."

More information on the 2010 Special 301 review process can be found here.

The USTR's website can be found here. The USTR's blog can be found here.

USPTO Holds Roundtable on Board of Patent Appeals and Interferences' Ex Parte Appeals Rules

2010-01-27T20:52:00.000-08:00

On January 20, 2010, Sharon Barner, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO), moderated a public roundtable in an effort to obtain comments on the proposed modifications the Board of Patent Appeals and Interferences (BPAI)'s ex parte appeals rules.

According to a press release on the USPTO website, “The BPAI provides critical services for the patent process at the USPTO and for the patent system generally,” noted Deputy Under Secretary Barner. “This roundtable was an important step to gather valuable insight from the public on these proposed modifications and to work together with stakeholders toward a more efficient appeal process and more timely Board decisions.”

The press release goes on to state "[i]t’s USPTO’s goal to reduce the pendency of ex parte patent appeals. The pendency of decided appeals, as measured from the time an applicant files a notice of appeal until the BPAI renders a decision, is now 29.3 months, up from 27.5 months at the end of FY 2009. One way to move toward this goal is to modify the rules of practice in ex parte patent appeals to streamline and improve the overall appeal process.

Objectives of the proposed modifications to the rules are to provide clarity so that appellants know exactly what the rules require, and so that examiners know what they need to do; to streamline the process so that cases move from notice of appeal to decision in a more efficient and timely manner; to allow appellants and examiners an opportunity to fully respond to each other’s positions; and to ensure the appeal process allows for issues to be crystallized so that the Board receives fully-developed issues to be decided."

The agenda, presentation slides, webcast and participant list for the roundtable can be found here.

Information on the proposed rule changes can be found in the Federal Register, here.

ICANN's New URDP "Electronic-Only" Filing Rules Go Into Effect March 1

2010-01-12T22:30:00.000-08:00

On October 30, 2009 the Internet Corporation for Assigned Names and Numbers (ICANN) approved amending its Uniform Domain Name Dispute Resolution Policy (URDP) rules to require that effective March 1, 2010, URDP complaints and other pleadings be submitted in electronic format only. Historically URDP complaints and responses were required to be submitted to the opposing party and the domain provider in paper or electronic format. Providers will still be required to forward a hard copy notice that a UDRP complaint has been filed.

The new electronic-only rules will apply to complaints filed with providers on or after March 1, 2010. The current rules will apply to complaints filed with providers up to and including February 28, 2010. Providers may adopt the new rules prior to March 1 but parties who do not wish to submit documents in electronic format will have the option of filing documents in paper format until March 1. The ICANN website states that "[p]roviders may allow, but must not require, UDRP complainants and respondents to submit complaints and responses in electronic form prior to 1 March 2010. For all UDRP proceedings filed on or before 28 February 2010, complainants and respondents may elect to submit their documents in hard copy form, as set forth in the original Rules."

Organizations such as the World Intellectual Property Organization (WIPO) have already implemented the new electronic-only rule to be effective March 1. According to the WIPO website, "[t]he modified Rules become mandatory on March 1, 2010, and prior to that, provision is made for the optional filing of UDRP pleadings in electronic-format by email and notification in accordance with the new Written Notice provisions in the modified Rules. The WIPO Center will be inviting such filings and commencing use of the Written Notice provisions as of December 14, 2009. Parties who elect not to make use of this new WIPO facility may continue to file pleadings in hard copy up until February 28, 2010."

Read ICANN's press release regarding the new rules here.

Read WIPO's announcement implementing the rules here.

COPYRIGHT: Viacom's $1 Billion Copyright Lawsuit Against YouTube Moves Toward Summary Judgment Stage

2010-01-11T21:21:00.000-08:00

According to cNET News and All Things Digital, Viacom and YouTube recently sought permission from the court to file motions for summary judgment in a $1 billion copyright action brought by Viacom against YouTube. Originally filed in federal court (Southern District of New York) in 2007, Viacom's lawsuit alleges that YouTube, now owned by Google, infringed Viacom's copyrights by allowing YouTube users to display over 63,000 clips from over 3,000 of Viacom's copyrighted television shows.

YouTube is claiming protection under the "safe harbor" provision for online service providers (OSPs) in the Digital Millenneum Copyright Act (DMCA). The "safe harbor" provision gives OSPs a defense from copyright infringement committed by users of the service. Viacom claims that YouTube willfully facilitated copyright infringement and therefore is not protected under the safe harbor provisions of the DMCA.

Read more about the Digital Milleneum Copyright Act in Wikipedia, here.

COPYRIGHT, TRADE SECRETS: CYBERsitter, LLC Sues Peoples Republic of China, PC Manufacturers, Others for Software Piracy

2010-01-06T23:10:00.000-08:00

According to PC Magazine's security blog, Security Watch and Reuters, CYBERsitter, LLC (formerly known as Solid Oak Software) recently sued the Peoples Republic of China, PC manufacturers Sony, Lenovo, Toshiba, ACER, ASUSTeK, Haier Group and BenQ, and software developers Zhengzhou Jinhui Computer System Engineering and Beijing Dazheng Human Language Technology Academy for "misappropriation of trade secrets; unfair competition; copyright infringement; and civil conspiracy."

According to Security Watch, CYBERsitter, LLC is alleging that China (via its contracted software developers) illegally appropriated thousands of lines of code from CYBERsitter, an internet-filtering software that helps parents control websites accessed by children, then incorporated the code into Green Dam Youth Escort, China's Internet-filtering software.

According to Reuters, "[i]n mid-2009, China issued a requirement that all PCs sold in the country would have to carry the Green Dam software, which it said was designed to prevent the country's youth from watching pornography but was seen by some as a veiled move at broader censorship." The requirement was later rescinded after criticism and protests from human rights groups and others, but the manufacturers had already complied with the government mandate. CYBERsitter alleges that the manufacturers continued to distribute computers with the preloaded Green Dam Youth Escort software even after they became aware of the misappropriated code.

CYBERsitter is seeking over $2.2 billion in damages, representing 56.5 million unauthorized copies of CYBERsitter at $39.95 per copy.

More information about the lawsuit can be found on the Security Watch blog here and from Reuters, here.

PATENT: ITC Commences Section 337 Investigation into Research In Motion's Alleged Infringement of Prism Technologies Patent

2010-01-02T20:05:00.000-08:00

On December 29, 2009 the U.S. International Trade Commission (ITC) commenced a Section 337 investigation concerning Research In Motion Ltd. (Canada) and Research in Motion Corp. (Irving, Texas)(RIM)'s alleged unlawful importation into the United States, sale for importation into the United States and/or sale within the United States after importation certain authentication systems, including software and handheld electronic devices.

Prism Technologies LLC (Prism) filed a complaint with the ITC on December 2, 2009, alleging that RIM violated Section 337 by importing goods and services that infringed Prism's U.S. Patent No. 7,290,288 for a "Method and System for Controlling Access, by an Authentication Server, to Protected Computer Resources Provided Via an Internet Protocol Network."

According to Prism's complaint, "Prism's '288 Patent covers an innovative way of controlling access to protected electronically stored data and information requested by a device using an Internet Protocol network. More specifically, the method and system disclosed by the '288 Patent controls access to protected electronically stored data and information using an authentication server. The authentication server has an associated database that stores authentication data associated with a user device and authorization data associated with the protected electronically stored data and information. The user device requests access to the protected electronically stored data and information by sending its' authentication data to an access server which, in-turn, forwards the data to the authentication server in order to authenticate the user device. If the user device is authenticated, the authorization server then authorizes the user device to receive access to the protected electronically stored data and information. Upon successful authentication and authorization of the user device by the authentication server, the authentication server permits the device to access the protected electronically stored data and information." Prism alleges that RIM's BlackBerry Desktop and Administrator Activations of the BlackBerry Enterprise Solution infringe various claims in the '288 patent.

Prism is seeking a limited exclusion order barring RIM's infringing authentication systems from entry in the U.S. including software and handheld electronic devices; cease and desist orders prohibiting RIM Corp. from importing infringing products into the U.S.; and that the ITC impose a bond on RIM's importation of allegedly infringing authentication systems.

Prism also filed a patent infringement action against RIM and Microsoft Corporation on December 29, 2008 in the U.S. District Court for the District of Nebraska (case No. 8:08-CV-537) in connection with the ‘288 Patent. According to the ITC complaint, Prism apparently settled with Microsoft; however, the district court action against RIM is still pending. A copy of Prism's federal district court complaint against Microsoft and RIM can be found here.

Prism's patent can be found here and Prism's complaint filed with the ITC can be found here.

Details concerning the ITC's investigation can be found here. General information about the ITC can be found here.

PATENT: USPTO's New Pilot Program for Small Entity Inventors-Acceleration of Patent Applications, With a Price

2009-12-27T21:49:00.000-08:00

The USPTO announced a pilot program that will give small entity inventors with two or more pending patent applications greater control over the priority in which their applications are examined, but at a cost.

The new program, announced by Undersecretary David Kappos during the 14th Annual Independent Inventors Conference on November 5-6, aims to reduce the backlog of unexamined patent applications by giving accelerated status to a pending patent application in exchange for the inventor abandoning a pending but unexamined application. The start date of the program will be announced in the near future.

More information on the program can be found on the USPTO website by clicking here.

PATENT: Microsoft Seeks Patent For Invention that Embeds Advertisements in Operating Systems

2009-11-22T20:44:00.000-08:00

Apple, Inc. is seeking patent protection for an invention that would embed advertisements in a device's operating system, with the ability to disable the device until the advertisement is acknowledged. The patent application, bearing serial number 105916, was originally filed on April 18, 2008 and was published on October 22, 2009.

Claim 14 of the patent application states that the invention involves "A computer-implemented method for providing an advertisement in a device, the method comprising: providing an operating system of a device with at least one advertisement, the operating system configured to temporarily disable a function thereof and present the advertisement in the device while the function is disabled; and receiving a report from the device confirming that the advertisement has been presented." Purchasers might be allowed to access and use the operating system at a reduced cost by viewing or listening to the advertisements.

The invention would not be limited to operating systems on personal computers. Paragraph 0031 of the Detailed Description states that the invention could extend to any electronic device, such as "...portable and desktop computers, servers, electronics, media players, game devices, mobile phones, wireless devices, email devices, personal digital assistants (PDAs), embedded devices, televisions, set top boxes, etc."

While the buying public may find the forced viewing of advertisements out of character for Apple and unacceptable to say the least, the idea seems novel, and Apple's potential advertising income no doubt would be astronomical. No word yet on whether Apple actually intends to exploit the invention itself or develop a licensing scheme.

Apple's patent application can be found here.

TRADEMARK: New York City Seeks to Recover "Tavern on the Green" Trademark From Restaurant Operator in Bankrupcty Court

2009-11-01T23:09:00.000-08:00

The City of New York recently filed suit against the operator of the famous Tavern on the Green restaurant, claiming ownership of the trademark "Tavern on the Green" and seeking to recover the restaurant's famous name. Tavern on the Green Limited Partnership, the restaurant's operator, filed for bankruptcy in September, 2009 after the City failed to renew the lease for the restaurant. The City alleges the operators fraudulently obtained federal trademark registration in 1981 without the City's knowledge or permission, and the restaurant's operators misled creditors, the public and the bankruptcy court by listing the trademark in the bankruptcy estate. The "Tavern on the Green" trademark is valued at approximately $19 million.

According to the City, the restaurant was originally named in 1934 by then Commissioner of Parks Robert Moses, and the limited partnership did not take over the restaurant's operations or use the famous name until 1973.

The LeRoy family, equity owners of the limited partnership, claims to have owned the famous trademark since 1978. The partnership obtained federal trademark registration for the name in 1981 which became incontestable in 1987. A second federal registration was obtained in 2007 for cooking oils and other products.

The LeRoy family has maintained the lease for the restaurant's location since 1974. The lease expires December 31 of this year. The City selected Dean Poll, owner and operator of the Loeb Boathouse in Central Park, to take over restaurant's operations and granted Poll a 25-year lease commencing January 1, 2010.

See In re: Tavern On The Green Limited Partnership, U.S. Bankruptcy Court, Southern District of New York (Manhattan) Bankruptcy Petition, No 09-15450 and 09-1513.

TRADE SECRETS: Rare Economic Espionage and Trade Secret Trial Underway

2009-10-22T23:01:00.000-07:00

An American citizen and a Chinese national are facing more than 60 years in prison for economic espionage and theft of trade secrets. The defendants, Lan Lee and Yuefei Ge, are charged with violating the Economic Espionage Act of 1996 by allegedly stealing confidential computer chip information from former employer NetLogic Microsystems, Inc. and another company, Taiwan Semiconductor Manufacturing Company. NetLogic Microsystems, Inc. is a computer chip design and development company in Mountain View, California. Taiwan Semi-Conductor Manufacturing Company is a computer chip manufacturing company with offices in San Jose, Washington, Singapore and Taiwan. Trial is currently underway in the matter.

The San Jose federal court case, U.S. vs. Lan Lee and Yuefei Ge (Case No. C 06-0424 JW), alleges that the pair illegally downloaded secret technical descriptions of an unreleased computer chip. Lee and Ge then started a company called SICO Microsystems, Inc. and solicited venture capital funding from China under its “863 Program” and its General Armaments Department to fund the company and commercially exploit the stolen information, in competition with their former employer. The FBI was apparently tipped off though e-mails sent by Ge's wife. The pair were originally arrested in 2006 and indicted in September, 2007.

The Economic Espionage Act of 1996 was enacted to prevent illegal technology transfer to foreign governments. The case is one of only a handful brought under the Act and only the second to be decided by jury trial. Prior cases under the Act were decided almost exclusively by judges and most involved domestic espionage.

China's “863 Program,” also known as the “National High Technology Research and Development Program of China” and the “State High-Tech Development Plan,” was created to stimulate the development of advanced technologies and eliminate China's dependence on foreign technologies. The program focuses on developing communications and laser technology for military applications.

Electronic court filings and further procedural and docket information on the case are available at https://ecf.cand.uscourts.gov/cgi-bin/login.pl. Court calendars with schedules for upcoming court hearings can be viewed on the court’s website at www.cand.uscourts.gov.

IP GENERAL: Boalt Hall IP Professor Stephen Barnett Passes Away

2009-10-22T15:04:00.000-07:00

Stephen Barnett, Boalt Hall School of Law Professor Emeritus, passed away after a heart attack on October 13. He was 73. Mr. Barnett taught at UC Berkeley for 36 years and was an authority on intellectual property law. Boalt Hall School of Law is planning a memorial service in November. Donations in Mr. Barnett's memory may be made to the Parkinson Association of Northern California, 900 Fulton Ave., Suite 100-5, Sacramento, CA 95825.

COPYRIGHT, TRADEMARK: NBC sued for Copyright and Trademark Infringement of Typeface Font Software

2009-10-14T22:27:00.000-07:00

The Font Bureau, Inc., a well known typeface font designer and provider of typeface font software, sued NBC Universal, Inc. and CNBC, Inc. ("NBC") for trademark and copyright infringement of its typeface font software. NBC allegedly used the font software on NBC's websites and distributed the software to third parties in breach of its end user license agreement and without obtaining The Font Bureau's permission. The Font Bureau is seeking an injunction, $150,000 in actual damages or $2 million in statutory damages, whichever is greater, plus attorneys' fees and costs. The Font Bureau has designed typeface fonts for Apple, American Express, Palm Computing, Hewlett Packard and The Wall Street Journal.
Read more about the case here.

PATENT: Red Hat Urges Supreme Court to Uphold Federal Circuit's "Machine-or-Transformation" Test in Bilski Case

2009-10-11T21:57:00.000-07:00

Red Hat, Inc. recently filed an amicus brief in the Bilski vs. Kappos matter, urging the Supreme Court to uphold the Federal Circuit's "machine-or-transformation" test for software patents. A leading provider of open source software solutions, Red Hat argued that the proliferation of software patents has resulted in new and unknown risks of infringement that many inventors are not willing or financially able to take. Without the test's limitation on the scope of patentable subject matter, software patents will stifle innovation due to the sheer number of patents granted and the vague boundaries existing in software patent claims. Bilski v. Kappos is set for oral argument before the Supreme Court on November 9.

Red Hat's amicus brief is available by clicking here

PATENT: USPTO Rescinds Controversial New Patent Regulations

2009-10-09T22:11:00.000-07:00

The USPTO announced yesterday that it will rescind its highly controversial new patent regulations that were published in the Federal Register in August, 2007 and the subject of a two year battle. The new rules set limits on the examination of claims in patent applications, continuation applications and requests for continued examinations. Tafas v. Dudas (now Tafas v. Kappos), 511 F. Supp. 2d 652 (E.D. Va. 2007) sought to invalidate the new rules on the grounds that the USPTO lacked substantive rulemaking authority. A motion to dismiss and vacate the district court decision will be filed jointly by the USPTO and co-plaintiff/appellee, GlaxoSmithKline.
Read more in the USPTO's 10-8-09 press release, here.