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Garcia v Google, Verizon, Uber, Eat More Kale, Federal Circuit – the week in IP



Michael Loney


Uber’s attempts to get patents, the Garcia v Google rehearing, a Google/Verizon licence deal, a trade mark victory over Chick-fil-A, and the Federal Circuit's “terribly poor decision” were among the intellectual property stories hitting the headlines this week

Uber tries to pick up patents

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 matter.

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 patent issued.

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 report.

"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 Google

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 Rings movies.

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.

As the Electronic Frontier Foundation noted, Judge Kozinski suggested that the Beijing Treaty on Audiovisual Performances requires courts to recognise Garcia’s claimed copyright interest.

"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 cannonball’."

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 Verizon?

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 patent litigation.

"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 collect."

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 kale

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. As 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."


CAFC’s "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 nullified.

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.

In a 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 library?

How goes the trade mark filing race?

The wait for the new USPTO 101 guidance is over

The IP highlights of 2014



In our news and analysis this week:

More work to be done on EU trade mark reforms

Websites take action ahead of Spanish copyright change

Zimbabwe joins Madrid Protocol

Battistelli and Kongstad respond to EPO criticisms

The background to the EPO dispute

China’s Guangzhou IP court is open for business

CJEU clarifies law on stem cells and patents

Australia seeks public submissions on proposed IP amendments

Kilpatrick urges USPTO to release SAWS programme statistics

A judge’s tips for winning in court

How to use social media to get ahead

Goodwin Procter hires litigator in San Francisco

Gowlings adds a partner to Waterloo office

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 2014

In-house counsel on the need for more patent reform

India’s Supreme Court declines to hear compulsory licence appeal

Big win for brand-name pharma companies in PTAB final decision

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