Uber tries to pick up
Uber is attempting to get
patents to cover its surge pricing platform,
according to Bloomberg.
The transportation company has
filed for at least 13 patents in the US. The USPTO has rejected
10 of them for obviousness or for covering ineligible subject
One of the patent applications was
for "dynamically adjusting prices for service" using mobile
devices. Other patent applications include ones for determining
the most likely travel path of a vehicle, providing on-demand
services through portable computing devices, and providing a
receipt on a portable device.
Maulin Shah, managing director of
Envision IP, told Bloomberg: "If they’re able to
overcome all these regulatory hurdles, having ownership of
patents that go on this business model means those companies
will do well." He said rival company Lyft has no published
applications with the USPTO, while Sidecar Technologies has one
In all, Uber has filed for 24
patents worldwide, according to Innography.
A Deloitte University Press
report on the new era of IP this year identified the taxi
and limousine industry as a potential IP battleground because
of the entry of Uber, Lyft, Sidecar, Ridecharge, and several
other ride-sharing providers.
"These new entrants, as well as a
few companies that hold broad patents strictly for the purpose
of extracting value through licensing or litigation –
non-practicing entities (NPEs) sometimes referred to as
'trolls’ – hold several patents in this
space and have blocked the ability of the taxi and limousine
industry to respond effectively with mobile offerings of its
own. Trolls have initiated lawsuits resulting in heated patent
battles, in some cases suing any incumbents with deep pockets
that may be within the sphere of their patent claims," said the
"The taxi and limousine industry
now finds itself reeling. An innovation that they did not
foresee, from non-traditional competitors they did not
anticipate, has been increasingly stealing market share, and
the space has been locked up with patents. The industry has
been making its plea to legislators to regulate and thereby
perhaps stem the onslaught of the wizards."
9th Circuit rehears Garcia v
The en banc rehearing of the
controversial Garcia v Google case was heard this week. As
reported by The Recorder, the discussion touched on the
copyright owned by Celine Dion and extras in the Lord of the
Judge Margaret McKeown asked
whether the threats Cindy Garcia had received since appearing
in the "Innocence of Muslims" film have any bearing on whether
she holds copyright to her performance. She also asked
Garcia’s lawyer Cris Armenta: "Could any person
who appeared in the battle scenes of the Lord of the Rings
claim rights in the work?" Armenta said they likely could but
only moviemakers that defraud actors into performing would be
subject to injunctions such as she was seeking for her client.
Judge McKeown wondered whether the case was really an issue of
possible fraud, and not copyright infringement.
Google’s lawyer Neal
Katyal from Hogan Lovells faced tough questions from Judge Alex
Kozinski, who wrote
the controversial 2-1 decision in February.
the Electronic Frontier Foundation noted, Judge Kozinski
suggested that the Beijing Treaty on Audiovisual Performances
requires courts to recognise Garcia’s claimed
"However, the treaty is not yet in
force, in the US or anywhere else," EFF noted. "In any event,
as Google counsel explained, it is not clear that the treaty
would create a copyright interest in a five-second performance
that was part of a much longer work. Judge Kozinski also
compared Ms Garcia’s claim to a 1977 case
involving a short performance by a 'human
Judge Kozinski also noted the
large amount of amicus briefs in favour of Google and asked
what the fear was.
"Ms Garcia has never alleged,
Judge Kozinski, to my knowledge that she wanted her performance
to be a separate stand-alone work," Katyal said. "She could
have put that in her complaint. She could have put in her
briefs. But it's not in there."
More licence deals on the
Google also made headlines this
week when it revealed it had entered into a long-term patent
cross-licence agreement with Verizon Communications covering a
broad range of products and technologies. The companies said
the agreement allows each company to reduce the risk of future
"Verizon has long championed
patent reforms and industry actions that promote innovation,"
said Verizon General Counsel Randal Milch. "We look forward to
striking similar deals with other high-tech companies also
concerned with the innovation tax that patent trolls often
Kirk Dailey, head of patent
transactions at Google, added: "We're pleased to enter into
this agreement with an industry leader like Verizon, and we
welcome discussions with any company interested in a similar
arrangement." Google has agreed similar deals this year with
Samsung, Cisco and LG Electronics.
Trade mark more
In what is being hailed as a
"David and Goliath victory, Vermont artist Bo Muller-Moore has
been issued a notice of allowance by the USPTO for "EAT MORE
KALE". Chick-fil-A had been attempting for years to stop
Muller-Moore from using the prhase.
The fast food company said it was
likely to cause confusion with its "eat mor chikin" trade mark.
reported on the Trademarkologist blog, Chick-fil-A listed
30 examples of third parties that previously tried to use the
"eat more" phrase but stopped after Chick-fil-A intervened.
Muller-Moore enlisted the help
of pro-bono lawyers and also won the support of state
officials, including Governor Peter Shumlin. Governor Shumlin
commented: "This is more than just about a victory for 'eat
more kale’. It’s a victory for grow
local. It’s a victory for Vermont’s
small food and farm agricultural renaissance, and
it’s a victory for Vermont."
"terribly poor decision"
Gene Quinn on the IPwatchdog
blog this week reported on an interesting Federal Circuit case
that he says is "the epitome of reaching the right legal
decision instead of doing what is fair and just" in
Japanese Foundation for Cancer Research v Lee.
A paralegal made a mistake and
instructed the US representatives to file a terminal disclaimer
abandoning a patent. The paperwork was filed by the attorney of
record and then the error was identified. Attempts were made to
mitigate the mistake before the filing appeared in the PAIR
system at the USPTO. Despite this, the patent was
The USPTO had appealed an
Eastern District of Virginia ruling to grant summary judgment
to the foundation and order the USPTO to delete the disclaimer.
The court ruled the USPTO abused its discretion in refusing to
withdraw the terminal disclaimer.
blog post, Quinn said: "In what can only be described as an
academic treatment of the rules governing terminal disclaimers,
correcting mistakes and whether this was a final agency
determination by the USPTO, the Federal Circuit per Chief Judge
Prost determined that the Eastern District of Virginia reached
the wrong legal conclusion."
He added: "I think the Federal
Circuit made a terribly poor decision; one that flies in the
face of common sense, and frankly common decency. If the legal
system cannot fix a mistake like this before the mistake has
even been made public then the system is broken.
Also on the blog this week:
Work in London and want to enhance your IP
How goes the trade mark filing race?
The wait for the new USPTO 101 guidance is
The IP highlights of 2014
In our news and analysis this week:
More work to be done on EU trade mark
Websites take action ahead of Spanish
Zimbabwe joins Madrid Protocol
Battistelli and Kongstad respond to EPO
The background to the EPO dispute
China’s Guangzhou IP court is
open for business
CJEU clarifies law on stem cells and
Australia seeks public submissions on proposed
Kilpatrick urges USPTO to release SAWS
A judge’s tips for winning in
How to use social media to get ahead
Goodwin Procter hires litigator in San
Gowlings adds a partner to Waterloo
IP Clinic: Our trade mark sounds very similar
to the acronym of a new organisation we don’t want
to be associated with. What can we do?
Five cases that shaped IP protection in
In-house counsel on the need for more patent
India’s Supreme Court declines to
hear compulsory licence appeal
Big win for brand-name pharma companies in
PTAB final decision