D.C. Circuit Rejects Challenge to Revival of Copyright for Works Previously in the Public Domain

Case: Luck's Music Library v. Gonzales, No. 04-5240 (Fed. Cir. 5/24/05).

The One Sentence Summary: The restoration of copyright by the Uruguay Round Agreements Act ("URAA") (17 U.S.C. section 104A, 109) for works that had fallen into the public domain was constitutional according to the D.C. Circuit Court of Appeals.


D.C. Circuit Rulings:

• Section 514 of the URAA, establishing copyrights of foreign holders whose protected works fell into the public domain in the U.S. for a variety of reasons, passes muster under the Copyright and Patent Clause of the U.S. Constitution.
• Section 514 provides extra incentive to authors to create new works, consistent with the requirement that legislation must "promote the progress of science."
• Looking to cases such as Eldred v. Ashcroft, 537 U.S. 186 (2003), the court reasoned that even if the incentive is not direct, it is sufficient that section 514 may help secure better foreign protection for U.S. intellectual property. For example, in Eldred, the Supreme Court had upheld extending copyright terms for protected works, where the extension might provide as little total present value as 7 cents.
• The court also held there was no bright line rule precluding the removal of works from the public domain, finding no substantive distinction from extending a copyright term that is about to expire, as was done in Eldred, and extending protection to material that has fallen into the public domain.

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Varied Ranges for Alloy Components in Patent Claim Were Obvious

Case: In re Harris, No. 04-1370 (Fed. Cir., 5/25/05).

The One Sentence Summary: The Patent Office properly denied a claimed superalloy for high speed turbine blades as obvious where the claimed ranges overlapped ranges disclosed in the prior art, the prior art did not teach away from the invention, and the claimed invention did not produce unexpected results.

Federal Circuit Rulings:

• Whether prior art teaches away from an invention or produces unexpected results are questions of fact that are reviewed under a substantial evidence standard.
• The patent office established a prima facie case of obviousness justifying rejection of the claimed alloy where the claimed ranges overlapped the ranges in the prior art, certain of the ranges were completely encompassed by the prior art ranges, and there was significant overlap between the preferred embodiments of the prior art patent and the claimed ranges.
• There was substantial evidence supporting the Board's finding that the prior art did not teach away from the claimed alloy range where the prior art encompassed the range claim, stated that the range was "appropriate" and used the word "about" in describing the range indicating that the prior art was not limited.
• The Board properly concluded that the applicant did not show unexpected results rebutting obviousness where the applicant failed to show a "difference in kind" rather than degree in its results, applicant failed to show unexpected results across the entire scope of claimed alloy concentrations, and applicant "did not compare an embodiment representative of the claimed range to an embodiment of the closest prior art."

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Federal Circuit Affirms on All Grounds After Second Jury Verdict Awarding Patent Infringement Damages

Case: Imonex v. W.H. Munzprufer, No. 04-1262 (Fed Cir. May 20, 2005).

The One Sentence Summary: In a second jury trial after remittitur, the court affirmed the award of damages for infringement of coin selector patents.

What They Were Arguing About: Imonex holds United States patents No. 4,911,280 and No. 5,988,349 on coin selectors that sort coins based on size. Imonex sued laundry machine manufacturers for infringing the patents. The jury found that defendants willfully infringed and awarded damages in a first trial. The district court determined that the damages award was improper, and a second damages trial was conducted. The second jury awarded damages of $1,396,872 to Imonex.

Federal Circuit Rulings:

• Applying the standard of the Fifth Circuit, there was sufficient evidence to support the jury's verdict that the defendants' machines infringed so that denial of a motion for judgment as a matter of law (JMOL) was appropriate. (Slip opinion at 3).
  
  
• The panel affirmed the district court's denial of a JMOL on wilful infringement. There was sufficient evidence that defendants had actual notice of Imonex's patent:

  "The record shows that Imonex disclosed its coin selection devices to employees of the original equipment manufacturer, or OEM, defendants at trade shows years before it filed suit. Those Imonex devices were marked with the numbers of both of the patents in suit. Imonex also distributed advertising literature which stated that the products were patented. Imonex corresponded with employees of the OEMs about use of the patented devices in the OEMs’ products. " (Slip opinion at 4-5).




• The failure to solicit legal advice after learning of plaintiff's patent does not give rise to an inference of willful infringement, citing Knorr-Bremse, 383 F.3d at 1345-46.
  
  
• There was no clear error in the district court's finding of an exceptional case justifying the award of attorneys' fees from the time of the first verdict of infringement to the end of the case. (Slip opinion at 6).



• In the first trial, the district court properly excluded plaintiff's damages testimony based on the "entire market value" rule.

  "The entire market value rule allows calculation of damages based on the value of an entire apparatus containing several features, when the patent-related feature is the 'basis for customer demand.Without any evident record that the patented features were the basis for customer demand for the laundry machines as a whole, the trial court properly foreclosed further evidence on this unsupported theory."

  (Slip opinion at 9-10).
  
  
• The trial court properly ordered a remittitur and a second trial on damages after improper closing argument affected the first damages verdict.
  
  
• In the second trial, the district court properly admitted defendants' expert testimony on the income attributable to the coin selection feature. In seeking to exclude the expert testimony, plaintiff should have presented evidence impeacing the reliablity of the expert under Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 592-95 (1993).
  

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Jury to Determine Likelihood of Confusion and Fair Use Issues in Make-Up Trademark Battle

In a May 19, 2005 decision, KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., the Ninth Circuit continued to uphold the rights of a trademark holder with the incontestable mark "micro colors." Ruling after a remand from the United States Supreme Court, the Ninth Circuit again reversed a summary judgment ruling and sent the case to the district court for a trial on likelihood of confusion and fair use issues.

The case marks the Ninth Circuit’s second decision favoring the trademark owner in a case involving competitors selling permanent tattoo-like make-up. First, in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061 (9th. Cir. 2003) (“KP I”) ,the Ninth Circuit reversed a district court grant of summary judgment against the trademark holder, Lasting Impression I, Inc. (“Lasting”). The district court had ruled that Lasting’s composite trademark of its logo with the word “micro-colors” was either generic or descriptive and that KP Permanent Make-up Inc. (“KP ”) had made fair use of the term. The Ninth Circuit Court of Appeals held it was error for the district court to find fair use as a matter of law without analyzing likelihood of confusion. This was in line with decisions in Fifth and Sixth Circuits a holding that use cannot be “fair” if it causes likelihood of confusion.

The Supreme Court granted certiorari in 540 U.S. 1099 (2004) (“KPII”) and vacated the judgment, holding fair use was consistent with “some degree” of confusion and that KP need not negate likelihood of confusion in order to prevail.

In this most recent decision on remand, the Ninth Circuit conceded that KP need not negate the likelihood of confusion, but, that is was for a jury to decide the fairness of KP’s use in light of the degree of likely confusion, the strength of the mark, the descriptive nature of the term, the availability of alternative terms and the extent and type of use KP made.

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Federal Circuit Teaches a Lesson About Teaching Away From a Claimed Invention in a Patent

Case: Syntex v. Apotex, Inc. , No. 04-1252 (Fed Cir. May 18, 2005)

The One Sentence Summary: In a patent infringement dispute, the district court had erred in factual findings of the non-obviousness of using a chemical component in eye drop formulas where the chemical had been previously used in pharmaceuticals, it was listed in reference manuals, expert testimony said it was an obvious choice, and the prosecution history had omitted other data in arguing that the chemical produced unexpected results.

What They Were Arguing About: Syntex holds patent 5,110,493 for a formulation of eye drops to treat eye inflammation. Syntex markets the eye drops under the trade name Acular. The '493 patent claims the use of a compound, octoxynol 40, as a surfactant (a compound that allows the ingredients to mix with water). Apotex had filed an ANDA application stating that it intended to market a generic version of the eye drops,and asserting that the '493 patent was invalid for obviousness. Syntex sued Apotex in the Northern District of California. After a bench trial, Judge Martin Jenkins ruled for Syntex, rejecting Apotex's argument that the formulation was obvious.

Federal Circuit Rulings:

• The panel affirmed the district court's claim construction that the term "in a stabilizing amount" did not limit the scope of a claim when the claim then defined a concentration of the chemical ("in a stabilizing amount between 0.001% and 1.0% wt/vol"). The panel affirmed the conclusion that "in a stabilizing amount" just stated the intended result of the weight - volume amounts stated.



• The panel remanded the case for a reconsideration of factual findings regarding defendant's obviousness tests. The panel held that the district court had erred in several factual findings underlying the obviousness determination.



• The panel held that the district court had erred in finding that the component in the claims, octoxynol 40, had not been used in pharmaceuticals before the patented invention. A report issued just five days after the priority date of the patent stated that the compound was "well known . . . in pharmaceutical products." The panel held that this was "an important fact to consider in assessing the obviousness of the claims in suit."



• The panel also held that prior art references did not "teach away" from the patented invention simply because they did not specifically discuss it. Rather, teaching away requires "clear discouragement" of the invention:

  What a reference teaches or suggests must be examined in the context of the knowledge, skill, and reasoning ability of a skilled artisan. What a reference teaches a person of ordinary skill is not, as Syntex's expert appears to believe, limited to what a reference specifically "talks about" or what is specifically "mentioned" or “written” in the reference. Under the proper legal standard, a reference will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the applicant's invention. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination. In re Fulton, 391 F.3d at 1199-1200.
  
  Slip Opinion at 14-15. Applying these standards, the panel held that the listing of octoxynol 40 in a reference manual coupled with expert testimony that it would have been obvious to consider octoxynol 40 as an ingredient required the district court to revisit its obviousness findings.

• The panel also directed the district court to look again at the prosecution history regarding "unexpected results". During prosecution, Syntex had traversed an obviousness rejection using a declaration stating that octoxynol 40 produced unexpected results. However, this declaration did not disclose that another similar chemical also produced the desired effect. While the declaration did not rise to a finding of inequitable conduct, the panel did find that "the unvarnished view of the prosecution history shows some weakness in the conclusion that the patentee established unexpected results for the claimed surfactant."

• The panel further directed the district court to revisit its finding that the commercial success of Accular indicated that the invention was not obvious. Citing Merck & Co. v. Teva Pharmaceuticals. USA, Inc., 395 F.3d 1364 (Fed. Cir. 2005), the panel noted that "evidence of commercial success resulted in a particularly weak inference because prior art patents prevented others from competing to reach the solution embodied in the claims at issue."

• The panel affirmed the district court's finding of no inequitable conduct in submission of the declaration regarding unexpected results. The panel held that the district court's finding of "no intent to deceive" rested upon credibility findings that should not be disturbed.

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Aggressive Patent Prosecution Strategies Described in Recent Article Would Be Limited by Proposed Patent Act of 2005

Today's San Francisco Recorder includes an interesting article by two patent prosecutors, Michele Liu and Dennis Fernandez, entitled "Managing a Patent Portfolio." The article discusses various techniques to obtain the maximum patent protection for inventions, including using amendments, continuation or divisional applications that include "claims to cover alternative ways in which competitors can (or do) address the trends or needs" in the industry. Click here to view the article (subscription required).

Aggressive patent prosecution strategies are among the targets of proposed patent reform legislation now under consideration in Congress.

For example, proposed section 123(a) would provide that no claim shall be patentable if it is broader in scope than the broadest claim that is first published or issued in the patent or related patents. This measure would limit the ability of patentees to broaden the scope of their claims in pending applications to cover the products of competitors.

More on the Patent Act of 2005 can be found in Julie Fieber's earlier posting about the proposed law here.

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Antitrust and False Advertising Lanham Act Claims by Dog Club Have No Bite According to Ninth Circuit

Case: Jack Russell Terrier Network v. American Kennel Club, Inc. (5/17/05, 9th Cir., No. 02-17264).

The One Sentence Summary: In the Ninth Circuit, "a national dog club's policy banning members that register their dogs with an alternative club" does not raise cognizable claims of group boycott under the Sherman Act, nor did banned dog owners or a former regional affiliate of the national club have standing under the Lanham Act.


Rulings by the Ninth Circuit:

• The Ninth Circuit affirmed the trial court's ruling that plaintiffs did not allege sufficient facts to support a claim that a national dog club and its regional entities were capable of conspiring as separate entities under Section 1 of the Sherman Act. Plaintiffs did not allege in what manner the national club and its affiliates had divergent economic interests or what goals the affiliates pursued other than those of the national club. Nor did plaintiffs allege that the national club and its regional affiliates were actual or potential competitors, or conspired for some competitive advantage.
• The trial court also correctly concluded that plaintiffs lacked standing under the Lanham Act. Neither the banned dog owners nor a former affiliate of the national club were competitors of the national club that suffered a competitive injury. The trial court's ruling for defendants after a bench trial was correct because a claim under the second "false advertising" prong of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B) must be brought by a competitor that has suffered a competitive injury.
• The trial court's denial of costs to defendant national club was within its discretion. The plaintiff's lack of financial resources and the substantial profits of the national dog club were adequate grounds for denying an award of costs.

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Tangled Dispute Over Ribbon Curling Patents Visits Federal Circuit for Third Time (and It Will Be Back)

Case: Group One, Ltd. v. Hallmark Cards, Inc. (Fed. Cir. 5/16/05, No. 04-1296, 04-1297)

Question for the "What Were They Thinking" Department: How could a plaintiff suing for infringement of a patent forget to pay its maintenance fees on the patent while the litigation is pending?

The One Sentence Summary: In the third Federal Circuit review of this patent infringement case filed in 1997, the panel held that a jury's verdict that ribbon-curling patents were not obvious should have been allowed to stand.


The Patents and the Dispute: Group One holds a method and a system patent for ribbon curling machines (Patents 5,518,492 and 5,711,752). In 1997, Group One filed this patent infringment litigation against Hallmark. This was the third Federal Circuit decision in the case, and not the last. After a jury trial, the jury awarded Group One $8.9 million in damages and found Hallmark's infringement willful.

Rulings by the Federal Circuit:

• The panel affirmed the trial court's ruling that the '492 patent was invalid due to a printing error by the patent office. The PTO had failed to print the patent correctly, and the PTO could correct the error. However, the district court did not have the power to correct the patent because the appropriate correction was not evident from the face of the patent (the prosecution history needed to be examined).
• The trial court erred in setting aside a jury verdict for Group One on obviousness grounds. The testimony of plaintiff's expert that it was not obvious to combine an air blower with other prior art provided a sufficient basis for the jury's verdict. Accordingly, the Federal Circuit panel reversed the grant of judgment as a matter of law.
• The patentee's late payment of maintenance fees reinstated the '752 patent which had lapsed due to failure to pay the fees since 2002. The district court properly took judicial notice of the reinstatement.
• The district court properly granted summary judgment of non-infringement for Hallmark as to a modified machine that had been modified so that it did not include some of the claim limitations.
• The district court properly refused to grant prejudgment interest as to the time that the patent was lapsed.
• The panel remanded the case to the district court for further proceedings on enhanced damages and attorneys' fees for wilfulness.

Click here to read more.

False Patent Marking Liability Requires No Reasonable Belief That Products Were Properly Marked

Case: Clontech Lab. Inc. v. Invitrogen Corp. (Federal Circuit, 5/5/05 - No. 03-1464)

The One Sentence Summary: Liability for falsely marking a product with a patent under 35 U.S.C. § 392 requires intent to deceive which can be shown by evidence that the marking party "did not have a reasonable belief that the articles were properly marked (i.e., covered by a patent)."

Patents and Dispute: Invitrogen held 4 related patents sharing the title "Cloned Genes Encoding Reverse Transcriptase Lacking RNase H Activity." Clontech sued in the District of Delaware claiming that Invitrogen had falsely marked products with these patents in violation of 35 U.S.C. § 292. After a trial, the district court found that Invitrogen had falsely marked the products.

The Statute at Issue:

Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word 'patent' or any word or number importing that the same is patented for the purpose of deceiving the public . . . [s]hall be fined not more than $500 for every such offense. 35 U.S.C. § 292(a) (2000).

The Rulings by the Federal Circuit Panel:

• In a case of "virtual first impression" under the statute, the court held that the defendant must intend to deceive by its marking. Mistaken marking will not create liability under 35 U.S.C. § 292. (Slip Opinion at 6-7)
• A reasonable good faith belief that the marking of a product with a patent is accurate will prevent liability under the statute. (Slip Opinion at 7).
• The test for false marking is an objective one - asserting no intent to deceive will not escape liability. (Slip Opinion at 7).
• It was "preposterous" for Invitrogen to assert a defense based on the honest belief of employees "unfamiliar with the patent laws" that products were correctly marked. (Slip Opinion at 8).
• The trial court clearly erred in finding that Invitrogen's experiments in 2000 deprived it of a reasonable belief that two of the accused products (SS and SSII) were covered by the patent's claims. Although certain test results showed that the products had RNase H activity (thereby falling outside the patent claims for "substantially no RNase H activity"), these tests were explained away as aberrant results by the unchallenged testimony of Invitrogen's expert. (Slip Opinion at 9-12).
• The court rejected Invitrogen's argument that incorrect marking caused no harm. The court noted the costs of investigation imposed on users of the product, and the benefit of accurately conveying the scope of intellectual property rights. (Slip Opinion at 14-15).
• The court upheld a finding of improper marking as to the cDNA libraries. Invitrogen had failed to raise its claim construction defenses until too late, thereby waiving the defenses on appeal. (Slip Opinion at 16).
• The panel remanded for further findings on marking on Invitrogen's kits as the basis of the district court's findings was unclear.

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Electrosurgery Patent Dispute Generates Rulings on Patent Invalidity and Corrections to Patents

The case: Arthrocare Corp v. Smith & Nephew, Inc. (Fed. Cir. 5/10/05, No. 04-1323, 04-1487).

The patents and dispute: Arthrocare sued Smith & Nephew over 3 electrosurgery patents. Electrosurgery uses high frequency electric current to cut or ablate body tissue, and the patents concern controlling the electric path through the tissue in the presence of conducting fluids. After a jury trial, the district court held that the patents were valid and infringed. The district court also dismissed an antitrust counterclaim.

Rulings by the Federal Circuit:

• One of the patents was invalid and anticipated by prior art.
• A feature of a patent claim can be anticipated by a photograph and diagram in a prior art article (slip opinion at 15);
• In deciding whether a prior art patent discloses a feature of an invention, the court should not focus on just one embodiment of the prior art patent - any of the embodiments can disclose the feature claimed in the later patent. (slip opinion at 11).
• A district court cannot grant a motion to dismiss a defendant's antitrust counterclaim without giving the defendant an opportunity to respond to the motion for dismissal (the defendant had reasonably assumed that no response was necessary because the antitrust claim was stayed) (slip opinion at 4-8);
• There is no "legally tenable distinction between a fluid that provides electrical conductance and 'an electrically conducting fluid.'" The claim was anticipated by the prior art disclosing a fluid providing electrical conductance. (slip opinion at 9). [This seems pretty obvious - I would say that the losing argument on this did not pass the "red-face test".]
• A patent was not impermissibly broadened by a certificate of correction issued after examination which corrected typographical errors that would have been obvious to one of ordinary skill in the art. (slip opinion at 16-18).

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New-fangled Flash Memory Connectors Do Not Infringe Patent Claim for Traditional and Conventional Connectors

New types of flash memory connections do not infringe patent claims for "traditionally connectable," "conventional" and "standard" connections. These terms in the patent claim refer to the types of computer connectors in existence at the time of the patent's filing in 1988 according to the decision of a panel of the Federal Circuit in PC Connector Solutions LLC v. Smartdisk Corporation (Fed. Cir. 5/6/05, No. 04-1180).

PC Connector Solutions holds United States Patent 5,224,216. PC Connector sued SmartDisk and Fuji Photo Film for infringement of the patent.

The patent claims at issue described

"an end user computer peripheral device having an input/output port normally connectible to a conventional computer input/output port . . ."

and a

"separate end user computer peripheral . . . traditionally connectable to a computer by means of an input/output port of the computer and the standard input/output port of the particular separate computer peripheral" . . ..

Slip Opinion at 2.

The district court granted summary judgment against PC Connector, holding there was no infringment, and PC Connector appealed.

The Federal Circuit panel affirmed the district court's claim construction and grant of summary judgment of non-infringement. The court held that the terms "traditional", "conventional" and "standard" have ordinary meanings that are implicitly time dependent, and there was no record in the specification that these terms were used in any other sense.

The panel also affirmed summary judgment under the doctrine of equivalents on two rationales. First, the plaintiff had failed to fully develop an equivalents argument in the district court and had therefore waived it. Second, any equivalents argument that removed the time-dependency of the claim language must fail because it would "vitiate" the claims.

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Air Freshener Companies Sent to a Jury to Air the Issues in a Trade Dress Infringement Case

Be careful when you ask for a jury in federal court - you may get a jury trial even after you have changed your mind.

That is the lesson that Pestco, a Lanham Act trade dress infringement defendant, learned last week in California Scents v. Surfco (9th Cir. 5/6/05 - No. 03-56116). The Ninth Circuit's decision sent the case back for trial on plaintiff's claims of trade dress infringement, unfair competition, and false advertising under the Lanham Act, 15 U.S.C. § 1125(a).

In its complaint, the plaintiff California Scents alleged that it had developed and marketed an “inherently distinctive and non functional” trade dress for its air freshener.

California Scents further alleged that after it sent Pestco a cease-and-desist letter, Pestco continued to manufacture a “nearly identical air freshener product, in nearly identical color-coded cans, with nearly identical color coded ‘scratch and sniff’ labels,” and “exhibited [its] air fresheners in counter top display boxes which are nearly identical to [California] Scents’s display box.” California Scents did not demand a jury trial in its complaint.

Pestco counter-claimed alleging that California Scents had disparaged and defamed Pestco by falsely representing to sales representatives and competitors that Pestco had copied from California Scents.

After the district court granted summary judgment on plaintiff's claims, Pestco dropped its counterclaims. However, in an earlier trip to the Ninth Circuit in 2002, the court had reversed the grant of summary judgment and sent the case back to the district court for a trial.

On remand, the district court held that California Scents had waived its right to a jury trial by not demanding a trial in its complaint. The court then held a bench trial and ruled against California Scents.

On appeal, the Ninth Circuit held that the district court had erred in finding that jury trial had been waived. The court noted that Federal Rule of Civil Procedure 38(b) provides that a party seeking to have a disputed issue tried before a jury must serve a jury demand upon the other parties “at any time after the commencement of the action and not later than 10 days after the service of the last pleading directed to such issue.” Fed. R. Civ. P. 38(b).

The court further noted that once a jury trial demand has been made as to the factual issues in a given claim, the other party is entitled to rely upon the demand as to those issues.

In analyzing the overlap, the court first noted that the legal elements of each claim were different:

The legal issues asserted by each party are distinct, as is evident from a comparison of the elements of the parties’ respective claims. To prevail in its business defamation and business disparagement counterclaims, Pestco would have had to prove facts that were unnecessary to California Scents’s trade dress infringement claims, and vice-versa. Compare 4 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 27:99 (4th ed. 2004) (defining elements of common law product disparagement as (1) publication, (2) of a false and disparaging statement of fact about the product of plaintiff, (3) made with either knowledge of falsity or with reckless disregard of its truth or falsity, (4) with intent to harm plaintiff’s interest, and (5) specific damages), with Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1005 (9th Cir. 1998) (requiring plaintiff in trade dress infringement suit to prove that (1) the trade dress is nonfunctional, (2) the trade dress is inherently distinctive or acquired distinctiveness through secondary meaning, and (3) there is a likelihood that the public will confuse the alleged infringer’s trade dress with that of the plaintiff’s).

Slip Opinion at 5000.

However, despite the difference in the legal elements of the claim, the court found overlap in the factual issues of the claim. This overlap arose because Pestco's disparagement claim was that California Scents falsely claimed copying of its trade dress. Thus, the truth of the trade dress infringement claims was a factual issue underlying the disparagement claim, and Pestco's request for a jury trial entitled California Scents to rely that a jury would decide this issue.

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Google Seeks Patent for Ranking of News Search Results by the Quality of the Source

A recently published Google patent application claims an invention of ranking news search results by the "quality of the identified sources." Thus, more reputable news sources would be ranked higher in a search return.

The patent application was filed on September 16, 2003 and was published 18 months after filing. It is still under examination by the patent office.

The first set of claims of the patent read as follows:
What is claimed is:

1. A method for ranking results, comprising: receiving a list of links; identifying, for each of the links, a source with which the link is associated; and ranking the list of links based at least in part on a quality of the identified sources.
2. The method of claim 1 wherein the identifying a source includes: identifying the source based at least in part on a uniform resource locator (URL) associated with the link.
3. The method of claim 1 wherein at least some of the identified sources are news sources.
4. The method of claim 1 wherein the ranking includes: retrieving a source rank value for each identified source, the source rank value being based at least in part on one or more of a number of articles produced by the identified source during a first time period, an average length of an article produced by the identified source, an amount of important coverage that the identified source produces in a second time period, a breaking news score, network traffic to the identified source, a human opinion of the identified source, circulation statistics of the identified source, a size of a staff associated with the identified source, a number of bureaus associated with the identified source, a number of original named entities in a group of articles associated with the identified source, a breadth of coverage by the identified source, a number of different countries from which traffic to the identified source originates, and a writing style used by the identified source.
5. The method of claim 1 wherein the list of links is a ranked list of links, and wherein the ranking includes: adjusting the ranked list of links based at least in part on a quality of the identified sources.
6. The method of claim 1 wherein the links include links to on- line news articles.

The full patent application is available here.

A Yahoo! news story about the patent application is at Google trying to patent news ranking by quality - Yahoo! News

Click here to read more.

San Francisco Chronicle Article About Blogging Includes iplawobserver.com

On May 5th, an article about blogging by Ilana DeBare appeared in the San Francisco Chronicle. Ilana reports on how a number of businesses are getting into blogging, and mentions this blog. Check the article out by clicking here.

Ilana notes that iplawobserver has a more "factual, serious tone" than other blogs. That is right, but we think that the tone matches the subject matter. We try to make the postings interesting with some catchy titles (e.g., this one), but it is ultimately factual and serious material that we are talking about on the blog.

Thanks to the UCL Practitioner blog for picking up the story and welcoming us to the blogosphere. http://17200blog.blogspot.com/2005/05/business-of-blogging-small-companies.html This blog is a great resource for 17200 cases.

Click here to read more.

House Passes Trademark Dilution Bill to Overrule Moseley v. V. Secret

On April 19, 2005, the House passed HR 683, The Trademark Dilution Revision Act of 2005. Congressional Record-House, 4/19/05 at H2121 to H2123. The bill would replace the requirement of proving actual dilution with an easier burden of showing likely dilution in response to the Supreme Court decision in Moseley v. V Secret Catalogue, Inc., 123 S. Ct. 1115 (2003).

HR 683 defines a "famous" mark and sets factors the court may consider in determining it. The bill also clarifies the definition of dilution by blurring, as well as by tarnishment. The bill enumerates specific defenses to a dilution action: comparative commercial advertising or promotion to identify competing goods; all forms of news reporting and news commentary; and traditional fair uses pertaining to parody, criticism, and commentary. The bill also would set limits on injunctive relief, allowing it in cases of willful intent to trade on the famous mark.

The bill has been referred to the Senate Judiciary Committee.

Click here to read more.

Surfvivor's Trademark Action Voted Off the Island by Ninth Circuit

In a decision issued today, May 4, 2005, the Ninth Circuit upheld a summary judgment ruling against the owners of the registered mark Surfvivor® in a trademark infringement action against the producers of the CBS television show, Survivor. Surfvivor Media, Inc. v. Survivor Productions, No. 02-17064 (9th Cir. May 04, 2005).

The plaintiffs Surfvivor Media, Inc. and Peter Deptula are the owners of the federally registered mark Surfvivor® which has been used on "Hawaiian beach-themed products, ranging from sunscreen, to t-shirts to surfboards." The Surfvivor® products have been sold in Hawaii for a number of years.

The defendants were Survivor Productions, CBS Broadcasting and others involved with the Survivor reality TV show. Surfvivor sued the Survivor defendants in federal District Court for the District of Hawaii, alleging federal and state trademark infringment.

The district court granted summary judgment for the Survivor defendants, ruling that Surfvivor had failed to show a likelihood of confusion.

The Ninth Circuit panel affirmed the district court ruling. The panel began by noting the difference between a "forward confusion" trademark claim and a "reverse confusion" trademark claim:

"Forward confusion occurs when consumers believe that goods bearing the junior mark came from, or were sponsored by, the senior mark holder. . . . By contrast, reverse confusion occurs when consumers dealing with the senior mark holder believe that they are doing business with the junior one." (Slip Opinion at 4846).

With respect to forward confusion, the Ninth Circuit panel refused to consider it because Surfvivor had not alleged forward confusion facts in its complaint and had not sought to amend.

With respect to reverse confusion, the panel affirmed the summary judgment ruling after an analysis of the eight factor test set out in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). The eight factors are (1) strength of the mark; (2) proximity or relatedness of the goods; (3) similarity in sight, sound, and meaning; (4) evidence of actual confusion; (5) marketing channels; (6) type of goods and purchaser care; (7) intent; and (8) likelihood of expansion.

Although the Ninth Circuit panel found that some of the factors weighed in favor of Surfvivor, the court found overall that the factors were mixed, and concluded abruptly by stating "the distribution of the Sleekcraft factors does not raise a material issue of fact regarding likelihood of confusion."

The Ninth Circuit also affirmed summary judgment on the state law claims because those claims similarly depended upon a showing of likelihood of confusion which Surfvivor did not make.

Finally, on an appeal of a discovery ruling prohibiting Surfvivor from pursuing discovery beyond sunscreen and other specific products, the Ninth Circuit panel held that the limitations on discovery were appropriate and within the trial court's discretion.

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President Bush Signs New Copyright Legislation Including Protections for Movie Filtering

On April 27, 2005, President Bush signed new copyright legislation into law. Among the provisions of the new law is the "Family Movie Act of 2005" which provides copyright protection for filtering technology used to edit out objectionable portions of movies.

ClearPlay, Inc. is a principal beneficiary of the filtering protections of the new copyright law. ClearPlay describes its service as allowing

"consumers to view DVDs, purchased or rented through conventional retailers, free of unwanted content. It gives consumers the ability to skip and mute over graphic violence, sex, nudity and profanity if they choose."

ClearPlay has been the target of copyright litigation brought by the studios. The history of that litigation is set out on ClearPlay's web site here.

The Family Movie Act of 2005 adds a section to the Code entitled "Exemption From Infringement For Skipping Audio And Video Content In Motion Pictures." The new section adds the following to the list of exemptions from infringement listed in 17 U.S.C. § 110:

the making imperceptible, by or at the direction of a member of a private household, of limited portions of audio or video content of a motion picture, during a performance in or transmitted to that household for private home viewing, from an authorized copy of the motion picture, or the creation or provision of a computer program or other technology that enables such making imperceptible and that is designed and marketed to be used, at the direction of a member of a private household, for such making imperceptible, if no fixed copy of the altered version of the motion picture is created by such computer program or other technology.

Additional provisions of the new copyright law were summarized in an earlier entry in this blog available here.

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Novell Was Behind the Secretive Purchase of E-Commerce Patents

The New York Times reported today that Novell was the secret purchaser of a group of fundamental e-commerce patents auctioned in the bankruptcy of Commerce One. "Secretive Buyer of Some E-Commerce Patents Turns Out to Be Novell", 5/2/05 NY Times.

The patents had been purchased on December 6, 2004 by a Dallas attorney on behalf of an entity named JGR Acquisitions. A Novell spokesperson stated that Novell had acquired the patents for defensive reasons and did not plan to enforce them.

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