The Prior Art

Patent Litigation Weekly: Stanford Researcher Loses at PTO, Still Fights On

In the April/May issue of IP Law & Business, we reported on the plight of Bob Shafer, a Stanford University scientist embroiled in a dispute with Luxembourg-based Advanced Biological Laboratories, S.A. (ABL). ABL claimed it owned two patents that were being infringed by the world-renowned HIV-drug resistance database Shafer created, HIVdb.

To recap quickly: After ABL sent Stanford claim charts and a letter asserting its patent rights, Stanford sued to invalidate the patents. That case settled, with Stanford agreeing to post a notice on the database stating that users of HIVdb might infringe ABL's patents.

ABL subsequently sued Stanford, saying the university had violated the settlement terms; the company also sued Shafer for defamation, based largely on comments he posted on his website, harmfulpatents.org. Shafer, tapping his own savings, hired attorneys at Day Casebeer to file reexams on the two ABL patents. (Day Casebeer has since been purchased by Howrey LLP.)

ABL's counterclaims against both Stanford and Shafer individually have now been settled. And it certainly appears that Chalom Sayada, the French doctor who is ABL’s CEO, has concerns about how the litigation makes him look to HIV researchers. The joint settlement statement reads, in part:

Highlights from the August issue

Stories from the IP Law & Business August issue are online (free registration required).

Poor Little Rich Kid: Patent-holding company NTP became famous when Research In Motion (RIM), facing the possibility of a court-ordered shutdown of its BlackBerry service, coughed up $612 million to settle NTP's lawsuit. Now NTP, founded by patent lawyer Donald Stout, wants to repeat that win; it has sued AT&T, Palm, T-Mobile, Sprint-Nextel and Verizon for patent infringement. But getting its next patent paycheck will be more difficult. Its patents are caught up in re-exams at the Patent Office, and NTP says it isn't getting a fair shake there—it has filed FOIA requests to prove what it calls improper meddling by RIM.

Red Hat's New Sheriff: Richard Fontana, a lawyer who was instrumental in crafting the third version of the most popular copyleft license at the Software Freedom Law Center, recently moved to Red Hat, where he got busy fighting off a lawsuit brought by holding companies FireStar and DataTern. Now the company has reached a settlement it says will protect not just downstream customers but upstream developers as well. We talk to him about his roundabout path to Red Hat, what it's like to be Richard Stallman's IP counsel, and how open source companies can tangle with patent trolls.

Not Extinct: The long-predicted demise of the IP boutique just hasn't happened.

Highlights from the July issue

Some highlights from the IP Law & Business July issue, now available online:

Cover story is The Reexamination Gamble: Once belittled as "poor man's litigation," reexamination is now a hot defense tactic in patent infringement cases.

Should the Music Stop for iTunes? Copyright law raises questions about the license for Apple's popular download service.

Another IP Fight in Congress: Artists's groups rebel against copyright law proposals governing orphan works. (They join Lawrence Lessig, who split with some groups he's usually allied with on this one.)

Never a Dull Moment: Our wrap-up of 2007 in patent litigation. More on this to be posted shortly.

(all IPLB stories free w/ registration)

Congress to fix problem with patent judge appointments

The sky is officially not falling. The administrative law judges who decide patent appeals got a lot of attention in May, a few weeks after an Oregon chipmaker, Translogic Technology, had challenged the constitutionality of their appointments.

Translogic wants to rescue its $86 million patent infringement verdict, which was overturned when a patent appeals board found its patent invalid for obviousness. The company petitioned the Supreme Court, waving a paper by noted patent scholar John Duffy that raised the constitutional question.

But the folks I talked to about the issue didn't seem to think it was potentially "cataclysmic," as the New York Times reported in May; I wrote a story saying as much in our last issue, quoting a couple of patent litigators who said that Duffy's discovery, while a real problem, was a technicality that should be easily fixed.

Sure enough, a legislative fix is now on the way, in the form of H.R. 6362, sponsored by the chairman of the House IP committee, Howard Berman, D-CA. The bill will require the Secretary of Commerce to make these appointments in the future, together with the Director of the USPTO. It also creates a retroactive defense to any challenges of the 40-odd judges who were appointed "illegally," IPO Daily News reported on Friday.

Looks like this one can be filed under "no big deal."

 

Highlights from the June issue

The June issue of IP Law & Business is online; the cover feature story is on the debate over the patent rights that will come out of around California's $3 billion initiative funding stem cell research. There's also a story on attorney Andy Dhuey's quest to pierce the State of California's "patent shield," the sovereign immunity defense that prevents states from being sued for infringement.

This issue also includes our annual ITC survey, including a full list of last year's cases at the International Trade Commission. The ITC is an increasingly popular alternative to district court for enforcing patents; patent-holders can't get damages at the ITC, but they can get a relatively fast (18 months) decision on patent infringement that can stop goods from entering the country.

Also up is a profile of Accenture lawyer Wayne Sobon, who explains his company's support for business method patents; it's an interesting piece but some of my own questions about In Re Bilski case still linger.

Finally I have a short story about one small chip company's attempt to argue that dozens of patent appeals judges were illegally appointed; I'll write more on that in a subsequent post.

All IPLB links in this post are free with registration.

 

Americans can't defeat Wal-Qaeda, but Brits will duel with Google: Trademarks stateside and across the pond

Google's feeling tough enough to fight its wars on two fronts when it comes to trademark law.  As I mentioned below, our May issue includes a story about the Rescuecom v. Google lawsuit at the 2nd Circuit, where Google is looking for a big win; today, Slashdot points to this TV news story about how Google intends to allow U.K. advertisers to buy ads on trademarked keywords, as they already do in the U.S. Of course, some mark-holders already are threatening to sue, as several have in the U.S. (they've all either lost, or lost badly.) No word in this story on when Google will implement this new policy, or such changes are in the works anywhere else.

Currently, if a British searcher types in "Ford cars," she'll see an organic link to Ford and possibly a paid ad for Ford, but won't see an ad for, say, Honda, while an American making the same search may see such competitors advertising. (Yahoo doesn't sell trademarked keywords in the U.S., but they'd like to—they weighed in with an amicus brief supporting Google in the Rescuecom case, together with eBay.)

Last month, I talked to Keker & Van Nest lawyer Michael Page, who is representing Google against Rescuecom in New York, and we talked about the differences between American & European trademark laws.

"European trademark laws are very different beasts," says Page. "They really think of it as owning the words, and you can’t use them. American laws are about protecting consumers." Some of the European trademark decisions have been "very harsh," he notes. "Germany and France are very both anti-speech; it's a sort of thought control. eBay has lost a series of decisions... They can’t allow anyone to list for sale World War II or Nazi memorabilia anywhere. It’s a fairly hostile environment for commerce and speech."

So, for example, it might be tougher for Georgia computer store owner Charles Smith to sell T-shirts and beer steins with slogans like Wal-Qaeda and Wal-ocaust outside a Wal-Mart in, say, Paris. (Is there such a thing?) But Smith resides in Georgia, where he is free to thumb his nose at the world's largest retailer and create bizarre and disturbing images like the ones pictured here. After Wal-Mart told him to cease and desist, Stanford Professor Larry Lessig hooked Smith up with lawyers from Public Citizen and the ACLU, who helped Smith win a complete victory in March after a two-year battle against the mega-store. In an 82-page smackdown, a federal judge basically told Wal-Mart that 1) Smith is a parodist, 2) it's a free country, and 3) deal.

Wal-Mart apparently paid $200,000 just to conduct a survey to measure alleged "consumer confusion," and probably paid millions to their Quinn Emanuel lawyers. And for what? Here's the best part: Smith sold all of 62 T-shirts, including 15 to one of Wal-Mart's outside law firms! Not exactly a weapon of mass dilution. (which law firm bought the shirts?? Inquiring minds want to know! Please email pics of any lawyers seen wearing Wal-Qaeda T-shirts.) Wal-Mart lost more than just money in this litigation: the judge ruled that the store has no common-law trademark claim to its yellow smiley face; that's not good timing, since the company's trademark on that symbol is being challenged at the Trademark Trial and Appeal Board.

Speaking personally, I think the term "Walocaust" is a heavy-handed and unfortunate metaphor that's likely to offend folks with connections to the real Holocaust. Using a Holocaust reference to discuss anything that's not actual genocide just isn't helpful to anyone, including would-be parodists and critics.

But Wal-Mart's attempt to label Smith as a lawbreaker for "diluting" and tarnishing their trademark is a good example of how trademark laws, like copyrights and patents, today reach far beyond their historical roots. Unlike copyrights and patents, which are monopolies granted as incentives to creators, trademarks are granted so that consumers clearly understand the true source of a good or service they're buying. We're all better off with only Wal-Mart being allowed to slap up a sign on its stores that says "Wal-Mart," because we know who we're buying from; but the thinking is, we're also better off knowing that if push comes to shove, we can always start selling Wal-Qaeda T-shirts.

Highlights from the May issue

The May issue of IP Law & Business is out. The cover story profiles 50 top IP people  under 45, and is available online. (free reg. required)

More highlights from the May issue:

• Protecting the American Way of Suing: The patent bar speaks to E.D. Tex: enough is enough. AIPLA has filed a brief urging the U.S. Court of Appeals for the 5th Circuit to force East Texas judges to transfer more cases out of the district. It's an effort to head off more heavy-handed venue reform that could come from Congress, but there are already early signs that the local judiciary is thinking of ways to keep the patent docket heavy even if they lose this case, which involves a product liability lawsuit against Volkswagen. In Re Volkswagen AG and Volkswagen of America, Inc. 07-40058.  (see 5/21 follow-up on E.D. Texas lawyers' response to AIPLA)

• High Stakes at the 2nd Circuit: Google brings in the big guns for a keyword-advertising showdown in Manhattan. If the search giant pulls off a solid win in Rescuecom v. Google, it will be clear that selling trademarked keywords is perfectly legal, pro-consumer—and not so different than traditional advertising practices.

• Copyright revolt in Academia: How the Internet is shaking up the staid, and costly, world of academic publishing.

Note: This post updated on 5/21 to include links to newly posted stories.