IPR appeal hearing, Facebook, MPHJ, Eiffel Tower, Federal Circuit – the week in IP
The oral hearing of the first appeal of an inter partes review decision, 24% of Facebook ads linking to counterfeit goods, Vermont continuing its fight against patent troll MPHJ, whether the Federal Circuit is anti-patent, and the Eiffel Tower’s copyright were among the intellectual property stories hitting the headlines this week
Let the USPTO eat cake
The PatentDocs blog this week had a good summary of the oral arguments of the Federal Circuit appeal of the first ever inter partes review filed.
Andrew Williams in a PatentDocs blog post noted the USPTO advanced three arguments at the hearing: the decision to institute is unappealable and unreviewable; the broadest reasonable interpretation standard is consistent with the legislative history and prior case law; and the denials of motions to amend have been proper.
On the issue of motions to amend, Williams said that USPTO expressed two positions. First, he USPTO said in the hearing that the principle difference between an IPR trial and a district court trial is the ability for patentees to amend their claims.
Second, when pressed by Judge Newman, who pointed out that amending claims is not very easy (only one motion to amend has been granted so far), the USPTO’s solicitor said:
“It is not so easy, your honor, and it should not be so easy because having a motion to amend granted by the Board means that's a claim in an issued patent. There is no further examination. There is no search of the prior art. So the Board has done something that is entirely reasonable and has put the public on notice. They have told the patentees – ‘If you want to amend your claims, tell us why your new claim is patentable over what you know to be in the prior art.’ Now, we don't think that's asking too much, particularly where if we were to grant that motion, the claim would become a claim in a US patent.”
Williams on the PatentDocs blog, noted: “The fact that these two positions could be expressed in almost the same breath demonstrates the apparent disconnect that the Office has with regard to these concepts. Even though many of us commenting on these types of proceedings have already pointed out this apparent inconsistency, it was somewhat surprising to hear them both advanced in such quick succession.”
Will counterfeiters be unfriended?
A study by two Italian cyber security specialists has estimated that a quarter of the fashion and luxury advertisements on Facebook are for counterfeit goods, reports Bloomberg. The research is based on more than 1,000 advertisements, 180 of which are in the luxury and fashion category.
Bloomberg quoted a Facebook spokeswoman responding: "We prohibit fraudulent or misleading claims or content, and to enforce our terms and policies, we have invested significant resources in developing a robust advertising review program that includes both automated and manual review of ads.”
USPTO goes crowdsourcing
The USPTO is holding a roundtable on December 2 and requesting comments on the use of crowdsourcing to identify relevant prior art. This was one of a series of executive actions issued by the White House in February intended to strengthen patent quality.
The roundtable will address the executive action by exploring: (1) How the USPTO can utilize crowdsourcing tools to obtain relevant prior art in order to enhance the quality of examination and issued patents; and (2) ways the USPTO can leverage existing private sector solutions for the electronic receipt and hosting of crowdsourced materials as a means to provide prior art to examiners.
Still gunning for MPHJ
MPHJ’s settlement with the FTC will not deter Vermont’s attorney general from continuing his fight against the patent troll. William Sorrell told the Am Law Litigation Daily that he welcomes the deal but complained that it could have been tougher.
He said: "The agreement helps us. The company has claimed over and over again that they have a constitutional right to do what they've been doing, but now they're saying they won't do it anymore."
Sorrell sued MPHJ on behalf of the state of Vermont last May, claiming that the company violated the Vermont Consumer Protection Act by sending deceptive letters to Vermont businesses saying they infringed MPHJ's scan-to-email patent.
The FTC settlement bars MPHJ and its law firm Farney Daniels from making deceptive representations when asserting patent rights.
Sorrell referred to the settlement as a “weaker first cousin” to the settlement MPHJ reached with New York’s attorney general in January, which banned it from using deceptive tactics to get businesses to pay for licenses.
Does the Federal Circuit hate patents?
The Federal Circuit has received a lot of criticism this year, with a common complaint being that the court of appeals is too pro-patent, and some have even called for it to be closed down. This week, Gene Quinn on his popular IP Watchdog blog pushed back on this, and questioned whether the opposite may be true.
In a blog post titled “Is There an Anti-Patent Bias at the Federal Circuit”, Quinn said he thinks there are judges that hold-anti patent views.
“Indeed, there are Judges on the Federal Circuit who would significantly restrict what innovations are patent eligible, doing so even before the Supreme Court’s most recent decision in Alice v CLS Bank. There are also Judges on the Federal Circuit that have a peculiar understanding of obviousness. For at the last decade, probably longer, the Federal Circuit has also been increasingly enamored with de novo review, providing district court judges and juries absolutely no deference even with respect to findings of fact. The fact that a patent has been through multiple rounds of reexamination at the Patent Office and emerged unscathed seems completely irrelevant to some. I am not making this up, although the truth no doubt does sound harsh.”
Quinn noted increased bickering between the judges and said that: “Gone are the days when you could count on the Federal Circuit to fulfill their original mandate, which was to infuse certainty into the patent laws of the United States and recognize that patents can actually contain valid claims.”
Quinn backed up his case by analyzing three instances he believes support the proposition that there is a philosophical and ideological view point that disfavours a patent protection: Bristol-Myers Squibb v Teva Pharmaceuticals USA; I/P Engine v AOL; and Soverain Software v Newegg. The whole post is worth a read.
Copyright in Paris
This week it emerged that tourists posting photos of the Eiffel Tower at night may be infringing copyright. The Société d’Exploitation de la Tour Eiffel has clarified that photos taken of the tower at night are under copyright and those who post the photos on Facebook or elsewhere could be fined for violating the law.
The actual tower was built in 1889, so is in the public domain, but the nighttime light show was added later.
“Daytime views from the Eiffel Tower are rights-free. However, its various illuminations are subject to author’s rights as well as brand rights,” the Société said in a post. “Usage of these images is subject to prior request from the Société d’Exploitation de la Tour Eiffel.”
Also on the blog this week:
And in our news and analysis: