The return of
The long-running Ultramercial v Hulu case could be
set to run for a while longer. Ultramercial has petitioned the
Federal Circuit for en banc review on the grounds that the
November Federal Circuit verdict in the case went beyond the
limits of the Supreme Court’s Alice
ruling and that the Federal Circuit’s subsequent
December decision to not invalidate the patent at issue
in DDR Holding v Hotels.com means 101 is in a state of
After twice finding the claims at issue in the
Ultramercial case patent-eligible, the Federal Circuit
in its November decision found them to be ineligible in
light of Alice.
In its petition, Ultramercial argues that any clarity
brought to 101 jurisprudence after Alice has been shattered by
the two Federal Circuit decisions, as outlined in
an analysis piece on the Patents Doc blog.
The company says that its claims are similar to those in
DDR and thus the Federal Circuit is just as divided as
it was before Alice. It added that its invention was
counter-conventional and new. In addition, it said the Federal
Circuit previously found the "claims recite more than the
age-old idea that advertising can serve as currency, but
instead disclose a practical application of this idea" that was
an "improvement to prior art technology".
Michael Borella on the Patents Doc blog said it is not
surprising that Ultramercial is not ready to give up, given the
long history involving its patent.
"Ultramercial's position that the dispositions of its claims
and those of DDR are incompatible may be enough to convince the
Federal Circuit judges to meet en banc, but ultimately may not
win the day," wrote Borella. "The Court may instead take the
opportunity to synthesize these cases, and could point out that
Ultramercial merely added use of the Internet to an otherwise
disembodied transaction, while DDR fundamentally changed how an
aspect of the Internet operates."
He added: "But, given the gray area at issue, the Federal
Circuit might decide that the claims of Ultramercial and DDR
rise or fall together. As DDR is the only post-Alice § 101
case reviewed by the Court that has found claims to be
patent-eligible, it is a currently valuable data point for
applicants and patentees. Losing this data point would deepen
the mystery of what claims incorporating an abstract idea need
to recite in order to be patentable."
aggressive IP team
NFL team the Seattle Seahawks last week aggressively came
from behind to book a spot in this year’s Super
Bowl. But, as the
Seattle Times reported this week, the team is also
extremely competitive when it comes to intellectual
The Seattle Times reported entertainment lawyer Scott
Andresen as saying: "They’ve always been a little
aggressive about securing intellectual property for themselves.
They’ve really taken the position that the more
intellectual property, the better."
The Seahawks have filed two dozen trade mark applications
since October 2013, including seeking to trade mark "boom", "Go
Hawks" and even the number "12".
Both the NBA and NHL have objected to the attempt to trade
mark "Go Hawks" because of the Atlanta Hawks and Chicago
Blackhawks teams. The Seahawks’ owners were also
sued by Texas A&M University in 2006 for the use of the
phrase "12th Man" to describe its loud fans, with the Seahawks
agreeing to pay a licence fee to use the term in limited
The Seahawks have also been active objecting to other
companies’ attempts to trade mark terms similar to
the ones they want to trade mark. This includes a movie
company’s efforts to trade mark the use of the
phrase "District 12" from the Hunger Games movies and Heritage
Distilling Companies’ vodka and gin products under
the "Batch No. 12" name.
saga can’t, won’t, don’t
The Beastie Boys are seeking legal fees from Monster
Energy in the copyright case in which the rap group was awarded
a $1.7 million jury award.
the ABA Journal reports, the Beastie Boys lawyers from
Sheppard Mullin Richter & Hampton wrote in
a motion for fees that the conduct of Monster
Energy’s legal team was "objectively unreasonable"
and "exceeded the bounds of zealous advocacy".
The energy drink maker used a number of Beastie Boys songs
in a video promoting a snowboard event.
The Beastie Boys’ filings claims
Monster’s lawyers failed to engage in good-faith
settlement negotiations, and deliberately tried to increase the
plaintiffs’ legal costs. One example given in the
filings is Monster’s attorneys disputing the
Beastie Boys’ copyright ownership, of which the
filing said there could be "no reasonable dispute". The Beastie
Boys hired a musicologist to testify as a result.
The Beastie Boys have a policy of not allowing their music
to be used for commercial purposes. This was also requested in
the will of Beastie Boy Adam Yauch, who died in 2012 from
It was a busy week for IP cases at the SU Supreme Court. On
the Court outlined a new rule for the Federal Circuit when
reviewing the underlying facts in a district
court’s claim construction, in its Teva v
Sandoz opinion. And, on Wednesday, it held that the
question of whether two trade marks may be tacked for purposes
of determining priority
was a question for the jury, in its Hana Financial v
Hana Bank opinion.
It was timely, then, that this week the New York Times chose
to shed some light on the personalities involved in the Supreme
Court. The newspaper revealed
that Justice Antonin Scalia is the most sarcastic of the
This claim is backed up by a Sarcasm Index developed by law
professor Richard Hasen. Justice Scalia’s 2.78
score on the index put every other Justice in the shade, with
Justice Samuel Alito registering a mere 0.43 in second
anticipating the publishing of the index, Justice Scalia
displayed his sarcasm just last week in
oral argument for Clyde Reed v Town of Gilbert when a
lawyer commented that the Justice was right, but only "in a
literal sense". Justice Alito shot back: "Oh, I see. What sense
are we talking here? Poetic?"
A number of groups are marking the second annual Copyright
Week this week.
Electronic Frontier Foundation sums up: "This week, we'll
be talking about critical copyright issues, and highlighting
some of the key principles that should guide copyright policy.
To emphasise the importance of public engagement, Copyright
Week follows just after the three-year anniversary of the SOPA
blackout protests, in which millions of people in the U.S. and
around the globe pushed back against dangerous and unfair
copyright restrictions – and won."
The organisers of the week believe that "copyright policy
should foster the freedom to truly own your stuff: to tinker
with it, repair it, reuse it, recycle it, read or watch or
launch it on any device, lend it, and then give it away (or
re-sell it) when you're done". You can read all the articles
that have been posted this week by various parties for
Copyright Week on the dedicated page here.
Lee back before the Senate
Michelle Lee, the nominee for USPTO director, attended a
second confirmation hearing at the Senate this week, following
first one in December.
the IPWatchdog blog reported, Lee was subjected to
questioning by Senators on many issues such as fee shifting and
post-grant proceedings. Inevitably, the subject of patent
reform came up. "I believe there can and should be additional
improvements to the patent system through legislation," Lee
Lee also commented that the quality of patents issued by the
USPTO needs to be improved. This is a topic she doubled down on
the next day in a speech at the Brookings Institute, when she
enhancing the quality of issued patents was a priority for
2015. The Office is launching an enhanced patent quality
initiative, and has this month appointed Valencia
Martin-Wallace to the newly-created role of deputy commissioner
for patent quality.
Also on the blog this week:
Why IP needs events aimed at women
In our news and analysis this week:
Considerations on big data licensing
IP Clinic: Should I set up my own IP
Shifting attitudes to injunctions in patent
Rihanna wins appeal in passing off
UK presses ahead with plain packaging
Gilead's rejected patent application
highlights Section 3(d) uncertainties
USPTO creates new patent quality role
CJEU clarifies copyright rules on exhaustion
Supreme Court rules that juries should
determine trade mark tacking
55% of PTAB petitions in 2014 filed against
NPEs – report
Russia: Medieval indulgence
EPO: No novelty for new use of known medical
Supreme Court overhauls Federal
Circuit’s standard of claim construction
The Unitary Patent for non-litigators
European patents expand to Africa
A mixed year for EU design cases
Rader lays out internationalist vision for
Why international IP rights just got more
Pirate Party copyright report set for MEP
Ellis Terry adds patent partner
China’s Ministry of Industry and
Information Technology weighs in on FRAND obligations