Microsoft Word (custom XML) injunction upheld

As reported a few months ago (here, here, here, here & here), Microsoft lost a patent infringement trial to i4i for Microsoft's custom XML feature of Word. A permanent injunction was entered preventing Microsoft from selling, offering to sell, importing or using certain copies of Word with the infringing custom XML editor. The jury also awarded $200 million in damages.

Earlier today, the Federal Circuit affirmed the damages award, and kept the injunction intact, except for modifying its effective date to January 11, 2010. In all other respects, the Federal Circuit affirmed (including the jury's determination that Microsoft's infringement was willful.)

i4i Ltd Partnership v. Microsoft Corp., Case No 2009-1504 (Fed. Cir. Dec. 22, 2009)

The North Face vs. The South Butt

Image via Wikipedia

v.

ABA Journal has an article about this interesting dispute here. James Winkelman (whom I believe is 17 years old) started selling hiking apparel under the name "South Butt." His website, http://www.thesouthbutt.com/ includes the following disclaimer:

We are not in any fashion related to nor do we want to be confused with The North Face Apparel Corp. or its products sold under "The North Face" brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.

The North Face has sued, under theories of trademark infringement, trademark dilution, false designation of origin, trade dress infringement and unfair competition.

He has also started a Facebook app, he's called "The South Butt Challenge on Facebook." According to his website, the app "allows you [to] see the difference between a face and a butt."

If this case goes anywhere, Winkelman's parody argument will be interesting to watch.

Read the complaint here. (via The Riverfront Times blog, the DailyRFT).

Keep it cool, Google

As reported by Slashdot this morning, Google is pursuing a patent application aimed at improvements in cooling computer systems. Entitled "Targeted Cooling or Datacenters," this applicants explain that "Power consumption is ..., in effect, a double whammy. Not only must a data center operator pay for electricity to operate its many computers, but the operator must also pay to cool the computers."

As originally claimed, the application seeks to protect a method of cooling electronic equipment which includes circulating air across a number of electronic devices located in a rack, monitoring the temperature of air, and providing cooler air to the devices when a high cooling load is sensed. The applicants also seek to protect a cooling system which includes air circulation fans, a sensor and a cooler-than-ambient air distributor.

This application was filed on February 26, 2007 and was published more than a year ago on August 28, 2008. (It's not entirely clear to me why this application made Slashdot this morning.) As of today, the application is currently under a non-final rejection for lack of novelty and obviousness.

Us 20080204999

Patent license "no challenge" clause can be enforceable, but this one was "clumsily and ineffectively constructed."

Alzheimer's Institute of America ("AIA") licensed certain patents to Mayo Clinic Jacksonville. Through this license, Mayo agreed "not to initiate or voluntarily participate in, or knowingly permit its Affiliates to initiate or voluntarily participate in, any action directed at undermining, invalidating, or declaring unenforceable any claims under" AIA's patents. A dispute erupted and AIA sued Mayo for patent infringement. In defense, Mayo asserted the affirmative defense of patent invalidity and counterclaimed for a declaration of patent invalidity. AIA amended its pleadings to assert a breach of contract claim, arguing that by challenging the validity of AIA's patents (via the affirmative defense and counterclaim), Mayo had breached the license. Mayo sought dismissal of this counterclaim.

The Court initially presented a thorough analysis concerning the enforceability of no-challenge clauses. After explaining that Courts must balance public policy interests in enforcing contracts, permitting full and free competition, and federal patent policy, the Court turned to the merits of this particular no-competition clause and held:

Even assuming for a moment that federal patent policy permits enforcement of the no-challenge clause, the no-challenge clause, which gravitates against patent policy in a manner reminiscent of Lear [Inc. v. Adkins, 395 U.S. 653 (1960)], receives the strict construction warranted by a provision that constrains a constitutional, statutory, or other legal right. Applying a strict construction to the no-challenge clause and confining the reach of the clause to that defined by its terms, count three fails to state a claim because the facts of this case present no event of breach of the no-challenge clause. In amended count three of AIA's counterclaims, AIA asserts (Doc. 130, ¶ 31) that Mayo breaches the no-challenge clause by counterclaiming—in Mayo's answer to AIA's counterclaim—for patent invalidity and thereby "initiating" an "action" in violation of the no-challenge clause. AIA's claim fails for several reasons. AIA—not Mayo— "initiated" the claim of patent invalidity by suing Mayo for patent infringement. Mayo has initiated nothing; Mayo merely defends itself. Neither is Mayo "voluntarily participating" in this action. In response to AIA's claim, Mayo asserts both an affirmative defense of invalidity and a defensive counterclaim seeking a declaration of patent invalidity. A counterclaim is a claim within an action, but not itself an action. Also, despite the meaning of the "no-challenge" clause, Mayo undoubtedly remains at liberty to challenge validity by the assertion of an affirmative defense (the traditional method of raising an assertion of invalidity). If intended to bar a challenge to AIA's patent validity, the no-challenge clause is clumsily and ineffectively constructed, omits to preclude even the typical challenge of invalidity by affirmative defense, and overlooks the potential for a counterclaim. If intended to prevent Mayo's aggressive attack on patent validity, the no-challenge clause perhaps persists, although subject to the vagaries of Lear.

AIA's counterclaim was dismissed with prejudice.

Mayo Clinic Jacksonville v. Alzheimer's Institute of America, Inc., Case No 8:05-CV-00639-SDM-TBM (M.D. Fla. Nov. 24, 2009)

Federal litigators -- weekends count starting tomorrow

As of today, when you have a time period that is less than 11 days, you do not count the intermediate weekends and holidays. So in the Middle District of Florida, where we have 10 days to respond to a motion, we do not count weekends or holidays in docketing our response date. Starting tomorrow, December 1, 2009, the Federal Rules of Civil Procedure have been amended so intermediate weekends and holidays do count.

Fortunately, the Judges of the Middle District have amended the local rules to change various time periods, including the period for response to a motion. Instead of 10 days, each party opposing a motion will now have (starting tomorrow) 14 days to respond. Various other time periods have been adjusted in the local rules to reflect this change in the Federal Rules. Read the amendments to the local rules here. A brief summary of some of the changes is below:

Event	Rule	Old Time Period	New Time Period
Response to motion	3.01(b)	10 days	14 days
Notice of deposition	3.02	10 days	14 days
Final pretrial conference	3.06(a)	at least 20 days notice	at least 21 days notice
Pretrial statement	3.06(c)	3 days before pretrial conference	7 days before pretrial conference
Removal of cases from state court	4.02(c)	10 days	14 days
Temporary restraining order	4.05(a)	10 days	14 days
Preliminary injunction notice	4.06(a)	5 days	14 days
Preliminary injunction opposition papers	4.06(b)(3)	day preceding hearing	7 days before the hearing
Objecting to Magistrate Judge's Reports and Recommendations	6.02(a)	10 days	14 days
Designate a mediator	9.04(a)(1)	10 days	14 days

Time magazine's 50 best inventions of 2009

As we approach year-end, everyone begins posting their N best things of 2009. Each year, Time does precisely this for the best inventions. And their 50 best of 2009 are out here. Topping the list are NASA's Ares Rockets. "The space shuttle is a flying truck: fine for the lunch-bucket work of hauling cargo a couple of hundred miles into space, but nothing more...." The top 5 rounds out with (2) Tank-Bred Tuna, (3) the $10 million lightbulb, (4) the smart thermostat and (5) controller-free gaming. I had only intended on listing the top 5, but coming in at number 6 is teleportation. (How is teleportation only number 6?)

Time also published its list of the 5 worst inventions for 2009.

Thanks to Anticipate This! for the link.

An update on Glenn Beck's domain name proceeding

Glenn Beck sought to terminate the domain name registration for glennbeckrapedandmurderedayounggirlin1990.com. Read about this dispute here.

Domain name disputes pursuant to the Uniform Domain Name Dispute Resolution policy can (and regularly do) incorporate international legal principles. After the initial complaint and response, the domain name owner's attorney sent a letter to Glenn Beck's attorney, asking him to stipulate that the principles of the American First Amendment will govern this dispute. Specifically, the domain name owner asked Beck to stipulate to 2 things:

1. The Parties hereby stipulate that the U.S. Constitution, including (and especially) the First Amendment thereto should apply to these proceedings and should govern the Panel's decision in this case.

2. The Parties hereby stipulate that the Panel shall not enter a decision in this case that would be contrary to the protections afforded to American citizens under the First Amendment, regardless of any international principles previously adopted by other UDRP panels or other international bodies.

Soon after this proposal, Beck's attorney filed a supplemental brief explaining that Beck "is an ardent supporter of the First Amendment right to free speech" and that he did not institute this action to censor the domain name owner. Beck points to some of the domain owner's other sites which contain the same information, but without the use of the trademark "Glenn Beck" in their domain names.

The domain name owner responded, renewing his arguments that no common law trademark rights have been shown, and no confusion is evident. He further argues that the UDRP proceeding is not "joke court" and the fact that Beck does not find the joke funny is entirely irrelevant. "Glenn Beck's name is not sacred, and it may be uttered with either reverence or disdain. The only way that the Respondent may not use Mr. Beck's name is to confuse the public as to the source or origin of his website -- a sin that has not been committed here."

The Panel denied Beck's complaint. For Beck to prevail, he had to prove:

1) The domain name is identical or confusingly similar to Beck's trademark rights

2) The domain name owner has no rights or legitimate interests in respect of the domain name; and

3) The domain name was registered and is being used in bad faith.

The Panel found that Beck provided substantial evidence that he has trademark rights in the mark "Glenn Beck." After noting that "even a moron in a hurry would not likely conclude" that Beck sponsored the offending domain, the Panel did find that the domain is confusingly similar with Beck's trademark.

Turning to the domain name owner's rights, the Panel found that the domain name owner is engaged in legitimate noncommercial or fair use of Beck's trademark. As such, there was no need for the Panel to address the bad faith element.

The lawyer who represented the domain name owner, Marc Randazza, also reports that the domain name owner, "Isaac Eiland-Hall voluntarily gives Beck the domain, saying 'point made, sir.'" Read Mr. Randazza's post here. The domain registrant's letter relinquishing the domain name to Beck can be found here.

Documents

• Beck's complaint
• Domain name owner's response
• Domain name owner's proposed stipulation
• Beck's supplemental filing
• Domain name owner's surreply
• Panel's decision

Happy birthday, Barcode!

On October 20, 1949, Norman Woodland and Bernard Silver filed a patent application titled "Classifying Apparatus and Method." 3 years later, on October 7, 1952, U.S. Patent 2,612,994 issued. The '994 Patent protected an apparatus for classifying articles having concentric circular light-reflective outer classification lines, and inner auxiliary lines:

The inventors sought to solve a local food chain's need to design a system for reading product data automatically. It's fair to say they succeeded. Read about their story here.

And thanks Google for commemorating this technological advance!

Read more about the bar code here.

Pro se plaintiff's attempt to get $1 billion from Nokia didn't work out so well

Tony Colida owns a number of design patents for ornamental designs relating to cellular phones. Unlike utility patents, design patents cover only the ornamental features of the protected invention, and not the functional features. Colida's 4 designs are depicted below:

Colida is no stranger to patent infringement litigation. In fact, he has unsuccessfully appealed judgments of noninfringement against him at least nine times. In this case, he sued Nokia for its Model No. 6061 phone, depicted below:

Acting pro se, Colida sought $1 billion in damages. He moved for a default judgment against Nokia. Nokia, on the other hand, asked for dismissal and sanctions pursuant to Fed. R. Civ. P. 11. The Magistrate Judge entered a 42-page report recommending Nokia's motion be granted and Colida's be denied. The Court did exactly that, and sanctioned Colida by entering an injunction preventing him from filing any infringement suit in the Southern District of New York without first getting permission from the Court. Colida appealed.

The Federal Circuit first addressed the merits of whether dismissal of Colida's complaint was proper. The Court restated its recent announcement of the test for design patent infringement:

infringement of a design patent is determined not by the design's "point of novelty," but whether an "ordinary observer" would find the design and accused product "substantially the same."

The Magistrate found that only 1 of Colida's 4 asserted designs (the right-most design depicted above) featured a "claim-shell" design. Colida offered no argument or explanation as to how Nokia's design bore anything remotely similar to his patent. The Federal Circuit stated the point bluntly:

Colida's infringement claims were facially implausible and provided the district court with no basis on which to reasonably infer that an ordinary observer would confuse the pleaded patented designs with the accused Nokia 6061 phone.

The only similarity the Court found between Colida's patents and Nokia's phone was the folding design. But this folding element is functional, not ornamental, and thus not protected with design patents.

Finally, the Court upheld the Rule 11 sanction, as Colida's infringement claims were objectively baseless. This combined with his overall pattern of filing meritless suits justified sanctions.

Decision affirmed.

Colida v. Nokia, Inc., Case No. 2009-1326 (Fed. Cir. Oct. 6, 2009) (non-precedential)

Glenn Beck v. glennbeckrapedandmurderedayounggirlin1990.com

What do you do when someone uses your trademark as the basis for a domain name? One avenue of protection is to institute a dispute pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Enter Glenn Beck. A couple of weeks ago (according to Beck's complaint), someone registered the domain name: glennbeckrapedandmurderedayounggirlin1990.com. Beck hopes to terminate this registration by way of the UDRP proceeding. To do so, he must prove 3 things:

1) The domain name at issue is identical or confusingly similar to a trademark in which Beck has rights;

2) The registrant does not have any rights in the domain name; and

3) The registrant registered the domain in bad faith.

The respondent has remained anonymous, but is represented by Marc Randazza, the Editor-in-Chief of the Legal Satyricon blog.

Here's how the 2 sides have presented their arguments on those issues:

Domain name is identical or confusingly similar to a trademark in which Beck has rights

Beck does not currently have a federal trademark registration for "Glenn Beck." The U.S. Patent and Trademark Office has accepted his Intent-To-Use trademark application, but has not yet acted on Beck's statement of use (which will permit the ITU application to mature into a federal trademark registration). Beck also relies on his common law rights in the mark.

The respondent offers 3 arguments in reply. First, personal names are not protected under the UDRP. Second, Beck has not registered rights. And third, Beck has not presented sufficient evidence of common law rights. Respondent concedes that Beck's common law rights "may" exist, but faults Beck for failing to properly evidence them.

The registrant's rights in the domain name

Beck argues that, at best, the domain name is a "protest" site, but is misleading the public regarding the nature, origin and affiliation of the Website. Beck further argues that any notion that respondent has rights in the domain is undermined by the "plainly defamatory" name.

In response, the domain name owner explains that the domain name is an internet meme, which is

a phrase used to describe a catchphrase or concept that spreads quickly from person to person via the Internet, much like an esoteric inside joke.

After identifying various other memes, the response argues "This is the price of celebrity -- you just might wind up in a meme, and you might not deserve it." (emphasis in original).

The Glenn Beck meme is, apparently, a play on Gilbert Gottfried's roast of Bob Saget where Gottfried repeatedly joked that "Bob Saget raped and killed a girl in 1990."

Because Beck uses the same style of Gottfried (the formula argued by the respondent is: Outrageous Accusation + Celebrity + Question as to why the celebrity does not deny the accusation == Confirmation of the falsity of the accusation and laughter), the respondent concludes "Quite simply, Beck's shtick is simply a cheap imitation of Gilbert Gottfried, sans the humor."

This meme grew, finally resulting in registering of the domain name.

Beck has tried to paint himself as a "babe in the woods" who has fallen victim to a vicious character attack. In reality, Beck is an accomplished and deliberate manipulator of public opinion, and it is absurd to suggest that he himself does not understand the nature and function of Respondent's website. Given his long history of using the Gottfried Technique, Beck must have recognized that the respondent has merely presented Mr. Beck with a mirror. If Beck does not like what he sees, the Respondent is not to blame.

The respondent concludes this section by arguing that the domain is merely a criticism website.

Motives in registering the domain

Beck basis his bad faith argument on 2 points: (1) Respondent must have known about Beck before registering the domain; and (2) the domain itself is defamatory. Beck explains that respondent is using the domain "to damage Mr. Beck's reputation, tarnish his trademark rights, and disrupt his business activities."

The response relies upon the argument discussed above, namely that the site is criticism and an internet meme.

Commentary

This case is interesting to me, as UDRP proceeding usually arise when the domain registrant blatantly seeks to profit from its registration, typically by trying to sell the domain name back to the mark holder. This case has none of that flavor, and will be interesting to see how Beck's defamation arguments hold up.

Documents

• Beck's Complaint
• Domain owner's Response

Waive doctrine of equivalents in the 1st litigation, you can't resurrect in the 2nd substantially similar litigation

Ron Nystrom was awarded U.S. Patent 5,474,831 entitled "Board for use in constructing a flooring surface." This wood-flooring board is shaped to shed water from the upper surface, while still maintaining a comfortable surface on which walk.

In 2001, he sued Trex for infringement. Trex's allegedly infringing product consisted of a plastic and sawdust mixture, which was compressed and then hardened into a decking board shape.

After claim construction, Nystrom conceded that he could not prove infringement. The court entered summary judgment of non-infringement, and Nystrom appealed. Nystrom was able to reverse one of the claim constructions, and attempted to prove liability through the doctrine of equivalents. But because he had moved for summary judgment of non-infringement, the district court held that he had waived his right to rely on the doctrine of equivalents. Again he appealed, but the Federal Circuit per curiam affirmed.

Shortly thereafter, Nystrom sued Trex again (and also named Home Depot and Snavely Forest Products as defendants). His allegations this time pertained to Trex's next generation wood board, which Trex sold after the first sued had originated. Nystrom based his entire infringement argument on the doctrine of equivalents. Trex sought summary judgment on the basis of res judicata because the boards at issue in this second suit were "essentially the same" as in the first.

“In its simplest construct, res judicata precludes the relitigation of a claim, or cause of action, or any possible defense to the cause of action which is ended by a judgment of the court. This aspect of res judicata, known in modern parlance as ‘claim preclusion’, applies whether the judgment of the court is rendered after trial and imposed by the court or the judgment is entered upon the consent of the parties.” Foster v. Hallco Mfg. Co., 947 F.2d 469, 476 (Fed. Cir. 1991) (citations omitted). ...

For claim preclusion in a patent case, an accused infringer must show that the accused product or process in the second suit is “essentially the same” as the accused product or process in the first suit. Foster, 947 F.2d at 480. “Colorable changes in an infringing device or changes unrelated to the limitations in the claim of the patent would not present a new cause of action.” Id. Where an accused infringer has prevailed in an infringement suit, “the accused devices have the status of noninfringements, and the defendant acquires the status of a noninfringer to that extent.” Young Eng’rs, Inc. v. U.S. Int’l. Trade Comm’n, 721 F.2d 1305, 1316 (Fed. Cir. 1983).

Defendants conceded material differences in the boards at issue in the first suit and those at issue in the second, but argued that the 2 claim limitations at issue in the first suit were in all material respects the same as those at issue in this later suit. The Court presented the issue as follows:

This case thus presents a slightly new angle on claim preclusion. It asks whether the accused infringer may assert claim preclusion when the sole claim limitations at issue in the first suit remain unchanged in the second suit. This court has previously emphasized that the focus for claim preclusion should be on “material differences” between the two accused devices, see Foster, 947 F.2d at 480, but has not addressed directly whether the focus of the “material differences” test is on the claim limitations at issue in each particular case.

Turning to that question, this court has already determined in the earlier case that Trex I boards do not infringe the ’831 patent. That judgment applies to both literal infringement and, as a result of Nystrom’s waiver, infringement by equivalents. For Nystrom to succeed on his infringement claim against the Trex II boards, he will have to prove infringement of each claim limitation. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002) (“To prove infringement, the patentee must show that the accused device meets each claim limitation either literally or under the doctrine of equivalents.”). The only claim limitations at issue in the first suit were “board” and “manufactured to have.” The constructions for these terms in this suit are the same as the constructions in the first suit. The bases of noninfringement in the first suit were these constructions. If, therefore, the accused device of the second suit remains unchanged with respect to the corresponding claim limitations at issue in the first suit, then Nystrom has no remaining avenue to pursue his claims now. In essence, Nystrom would be attempting to prove infringement of the same claim limitations as to the same features of the accused devices. As such, this case presents the exact situation that res judicata seeks to prevent. Res judicata thus bars this second attempt to adjudicate the same issues.

* * *

In sum, Nystrom made a tactical decision in his initial suit to forego any infringement theory based on the doctrine of equivalents. That choice did not pay off. Given that the Trex II boards remain materially identical to the Trex I boards with respect to the pertinent claim limitations at issue, this court cannot under res judicata permit Nystom to have a second bite at the apple.

Judge Rader's Additional Views -- Claim Vitiation

Judge Rader endorsed the panel's opinion, but wrote separately to address claim vitiation:

In Warner-Jenkinson, the Supreme Court adopted this court’s established “all-elements” rule. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997) (“[U]nder the particular facts of a case, . . . if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court . . . .”). “Informed by this guidance, we have held that in certain instances, the ‘all elements’ rule forecloses resort to the doctrine of equivalents because, on the facts or theories presented in a case, a limitation would be read completely out of the claim — i.e., the limitation would be effectively removed or ‘vitiated.’” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1017 (Fed. Cir. 2006). Nonetheless, this court has also warned that an overly broad application of the all elements rule may improperly “swallow the doctrine of equivalents entirely” and limit infringement to “a repeated analysis of literal infringement.” Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998).

Ironically, the Supreme Court adopted this vitiation limitation on the doctrine of equivalents at a point near the time that this court had learned of its internal inconsistency. Claim vitiation limits the doctrine of equivalents. The doctrine of equivalents, by definition, acknowledges that a specific claim limitation is not expressly found in the accused product or process. Claim vitiation proceeds from the same acknowledgment that a specific claim limitation is missing from the accused product or process. The doctrine of equivalents permits a finding of infringement, despite the missing limitation, because the deficit is not substantial. Claim vitiation bars infringement because the same deficit is substantial. In other words, claim vitiation, by definition, simply rewinds and replays the doctrine of equivalents test for substantiality of a missing claim limitation. Thus, a finding of insubstantial difference to show equivalency obviates any further vitiation analysis—the wholly insignificant equivalent, by definition, would not vitiate the claim. On the other hand, a finding of substantial difference renders vitiation unnecessary. Thus, the vitiation doctrine is really subsumed within the test for equivalents itself. In other words, the all elements rule is simply a circular application of the doctrine of equivalents.

While the tests for equivalents and vitiation are coterminous, the Supreme Court’s Warner-Jenkinson decision did create one difference: the identical equivalents and vitiation tests are made by different decision makers. “The determination of equivalency is a question of fact . . . .” Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1309 (Fed. Cir. 2000). Conversely, this court has instructed—as required by Warner-Jenkinson—that application of the all elements rule is a question of law. See Panduit Corp. v. HellermannTyton Corp., 451 F.3d 819, 826 (Fed. Cir. 2006) (“The determination of infringement under the doctrine of equivalents is limited by two primary legal doctrines, prosecution history estoppel and the ‘all elements’ rule, the applications of which are questions of law.”). The problem with this conflict is apparent. Judges decide vitiation; juries decide equivalents. Although the tests are the same, the testers are different, which could produce different results in application of the same rules.

This case can serve to illustrate this situation. Trex argued to the district court that a finding of equivalents on a product comprised of forty to fifty percent wood would necessarily vitiate the claim language requiring the board to be “made [entirely] from wood.” The district court agreed and barred Nystrom from pursuing an infringement theory based on equivalents. Would the result be different, however, if the accused device was comprised of fifty-five or sixty percent wood? Seventy percent? Should this question be resolved by a jury, by a judge, or by both?

Nystrom v. Trex Co., Case No. 2009-1026 (Fed. Cir. Sept. 8, 2009)

Microsoft can continue to sell Word (including Custom XML) during appeal

As reported previously (and extensively), Microsoft lost a patent infringement case brought by i4i in Texas regarding Microsoft Word's use of custom XML. The Court ordered Microsoft to stop selling infringing copies within a certain time frame. Microsoft appealed, and has asked the Federal Circuit to stay the injunction.

Yesterday, the Federal Circuit granted Microsoft's Emergency Motion to Stay Permanent Injunction Pending Appeal. I do not yet have a copy of this Order, but Patently-O quotes from it:

Without prejudicing the ultimate determination of this case by the merits panel, the court determines based upon the motion papers submitted that Microsoft has met its burden to obtain a stay of the injunction.

Looking at the Court's docket, the following schedule has been set:

8/25/2009 Appellant Principal Brief Filing Date

9/8/2009 RED BRIEF

9/23/2009 Oral Argument Date / Calendared

Stay tuned...

Links

• Patently-O's coverage (link)
• CNET story (link)
• My prior coverage
• Microsoft files appeal brief (link)
• Parties agree no bond is needed (link)
• Microsoft files emergency motion to stay (link)
• Microsoft Word + Custom XML = no more? (link)

Woah "INCA MAMA"

Inca Textiles sought a federal trademark registration for "INCA MAMA" for use with maternity apparel. Problem is, INCA GIRL (below) was already registered as a mark for use with clothing.

The Examining Attorney refused registration arguing that INCA MAMA was likely to be confused with INCA GIRL. The TTAB affirmed, and Inca Textiles appealed to the Federal Circuit.

First, the Court explained the well-settled law:

In determining whether there is a likelihood of confusion between two marks, the marks are analyzed with the guidance of the factors identified in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Not all of the DuPont factors may be relevant to any given case, and only those factors implicated by the evidence and the particular mark need be considered. In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997). Doubts as to the likelihood of confusion are resolved in favor of the prior user of a mark. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002) (resolving doubts about likelihood of confusion against the newcomer).

The Court then discussed some DuPont factors:

• Similarity in sight, sound, connotation, and commercial impression
• even though INCA GIRL was a composite mark, the INCA GIRL words were still dominant portion, and in some instances the only part of the mark shown


• similarity/dissimilarity and nature of the goods/services
• INCA MAMA = maternity clothes; INCA GIRL = women's clothing; thus, it's close enough


• similarity/dissimilarity of respective trade channels
• INCA MAMA's focus on brick & mortar sales, as opposed to INCA GIRL's web sales, was not persuasive

Decision affirmed.

In re Inca Textiles, LLC, Case No. 2008-1443 (Fed. Cir. Sept. 2, 2009) (nonprecedential)

Intellectual Property law -- "That's Hot!" -- Paris Hilton case against Hallmark can proceed

What better way to attract more attention to one's blog than to include the words "Paris Hilton." She's no stranger to our civil legal system -- read about her bff, Judge Moreno, down in the Southern District at the Southern District of Florida Blog.

Yesterday, the Ninth Circuit permitted Paris Hilton's dispute against Hallmark to go forward and decided that "California law allows a celebrity to sue a greeting card company for using her image and catch-phrase in a birthday card without her permission." Judge O'Scannlain, writing for the panel, begins as follows:

Paris Hilton is a controversial celebrity known for her lifestyle as a flamboyant heiress. As the saying goes, she is "famous for being famous."

Hallmark created a birthday card, whose front cover read: "Paris's First Day as a Waitress." Inside, an oversized photo of Hilton's head is saying "Don't touch that, it's hot." Hilton sued for misappropriation of publicity under California law, false designation under the Lanham Act, and federal trademark infringement.

Trademark Infringement

Hilton has a federal trademark registration No. 3,209,488 for the mark "THAT'S HOT" for use with apparel. Hallmark sought to dismiss the trademark infringement count because greeting cards are not apparel (and it argued its use was fair use). Hilton did not address these arguments at the trial level, and therefore abandoned her infringement claim.

False Endorsement

Hallmark also sought dismissal of this count, but was not successful. Facts would determine whether the work was a parody and whether it was a fair use. As such, dismissal would not be appropriate. The Ninth Circuit dismissed this portion of the appeal because it determined it did not have jurisdiction to hear it.

The Court rejected Hallmark's argument that the greeting card was, as a matter of law, protected free speech and sent the matter back to the trial court to proceed through litigation.

Paris Hilton v. Hallmark Cards, Appeal No. 08-55443 (9th Cir. Aug. 31, 2009)

"interactive channels" is patent eligible

David Schrader invented a method for getting advertising feedback on "interactive channels." He described interactive channels in the context of "...the Internet and World Wide Web, Interactive Television, and self service devices, such as Information Kiosks and Automated Teller Machines (ATMs)."

He claimed:

A method for obtaining feedback from consumers receiving an advertisement from an ad provided by an ad provider through an interactive channel, the method comprising the steps of:

creating a feedback panel including at least one feedback response concerning said advertisement; and

providing said feedback panel to said consumers, said feedback panel being activated by a consumer to provide said feedback response concerning said advertisement to said ad provider through said interactive channel.

The Examiner rejected the claims as failing to claim patent-eligible subject matter under 35 U.S.C. § 101. (The Examiner also rejected the claims for obviousness, but that analysis is not discussed in this post.) The applicant appealed these rejections to the Board of Patent Appeals and Interferences, which addressed the § 101 issue briefly.

After explaining that the test for determining patentable subject matter for a process is Bilski's machine or transformation test (i.e. whether the claimed process is (1) tied to a particular machine or apparatus; or (2) transforms a particular article into a different state or thing), the Board found:

We will not sustain the rejection of claims 1-12 under 35 U.S.C. § 1because one of ordinary skill in the art would understand that the claimed “interactive channels” constitutes patent eligible subject matter under § 101 because the Specification unequivocally describes interactive channels as part of an overall patent eligible system of apparatuses which include "...the Internet and World Wide Web, Interactive Television, and self service devices, such as Information Kiosks and Automated Teller Machines (ATMs)."

§ 101 rejection reversed (although obviousness rejections were sustained).

Documents

• U.S. Patent Publication 2004/0059625

Ex parte Schrader, Appeal 2009-009098 (BPAI Aug. 31, 2009)

Bose WAVE -- no evidence Bose intended to deceive the Trademark Office

Hexawave sought a federal registration for its trademark HEXAWAVE. Bose opposed that application, arguing a likelihood of confusion with Bose's prior registered trademarks, including WAVE. Hexawave then attempted to cancel Bose's registration, arguing that Bose committed fraud on the Patent and Trademark Office by claiming use on all goods listed in its registration, even though Bose had stopped manufacturing and selling certain of those goods.

Hexawave prevailed with the Trademark Trial and Appeal Board, which cancelled Bose's WAVE registration. Bose appealed to the Federal Circuit.

Evidence of "fraud"

Hexawave's evidence that Bose committed fraud was the combined Section 8 affidavit of continued use and Section 9 renewal application, filed in 2001, wherein Bose's general counsel stated that the WAVE mark was still in use on various goods, including audio tape recorders and players. As it turns out, Bose stopped manufacturing and selling audio tape recorders and players between 1996 and 1997 and Bose's general counsel knew this when he signed the declaration.

Fraud on the Trademark Office

“Fraud in procuring a trademark registration or renewal occurs when an applicant knowingly makes false, material representations of fact in connection with his application.” Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986). A party seeking cancellation of a trademark registration for fraudulent procurement bears a heavy burden of proof. W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 377 F.2d 1001, 1004 (CCPA 1967). Indeed, “the very nature of the charge of fraud requires that it be proven ‘to the hilt’ with clear and convincing evidence. There is no room for speculation, inference or surmise and, obviously, any doubt must be resolved against the charging party.” Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1044 (T.T.A.B. 1981).

The Court went on to explain that the deception must be willful in order to be fraud, and that the deceiving party must intend to deceive the Patent and Trademark Office. Here, Bose's general counsel testified that because Bose continued to repair audio tape players and recorders, he believed Bose was still using the mark in commerce on those goods. As such, he had no intent to deceive the PTO. As stated by the Federal Circuit:

There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive.

Decision reversed (with instructions for the Board to reinstate Bose's trademark with the registration updated to reflect that the WAVE mark is no longer used on audio tape recorders and players).

In re Bose, Case No. 2008-1448 (Fed. Cir. Aug. 31, 2009) (precedential)

Microsoft's appeal brief in Microsoft Word injunction matter

Dennis Crouch at Patently-O has acquired and posted Microsoft's 101-page opening appellate brief in i4i v. Microsoft. Microsoft's argument reads as a who's who in many of patent law's latest major decisions, including

• KSR v. Teleflex -- obviousness of inventions
• Cardiac Pacemakers v. St. Jude Med -- 35 U.S.C. § 271(f) does not apply to method claims (although Microsoft argues in terms of § 271(c))
• In re Seagate -- willful infringement
• eBay v. MercExchange -- injunctions in patent cases

As you will recall, a Texas judge entered an injunction preventing Microsoft from selling versions of Word which can handle custom XML, and ordering Microsoft to pay $290 million in damages. Read my earlier posts here, here, and here.

Microsoft expressed its clear discontent with the proceedings below:

In patent cases, even more than most, the trial judge’s role as a gatekeeper is crucial. As gatekeeper, the judge must define the metes and bounds of a patent through claim construction and then ensure that the evidence presented by the parties’ numerous experts is both reliable and rooted in the facts of the case at hand. And after the jury has rendered its verdict, it is the judge who, before allowing that verdict to become an enforceable judgment, must ensure that the verdict is adequately supported by the evidence and supportable under the law. This gatekeeping function is especially important in patent cases because of the delicate balance struck by patent law to achieve its objective of promoting, rather than stifling, innovation. That balance can be lost if the district court does not protect the process, and patent litigation then becomes a tax on innovation rather than its guardian.

This case stands as a stark example of what can happen in a patent case when a judge abdicates those gatekeeping functions.

* * *

By the time the plaintiffs presented their damages case, the district court had abandoned even the semblance of gatekeeping. ...

* * *

At this point, if the district court had been more faithful to its role as gatekeeper, it should have recognized a trial run amok and interceded to prevent a miscarriage of justice ...

In sum, justice was denied, and the Constitution violated:

This is not justice. If district courts are free to admit theories of infringement that nullify a patent’s claim terms, specification, prosecution history, and title; if they will allow an inventor to validate his patent by testifying without corroboration that he lied about the date of conception; if they will not intercede to preclude manifestly unreliable—indeed, concededly manipulated—surveys of infringing use, or Georgia-Pacific analyses based on “benchmarks” bearing no rational relationship to the accused product, then patent litigation will be reduced to a free-for-all, unbounded by the requirements of the substantive law or the rules of evidence or trial procedure. While that mode of dispute resolution might enrich some plaintiffs and their investors, it hardly can be said to “promote the Progress of Science and the useful Arts.” U.S. Const. art. I, § 8.

Microsoft then presents a 5-pronged attack on the proceedings below:

1. Improper claim construction read a key limitation -- the word "distinct" out of the claims
2. The claims are invalid
3. Insufficient evidence to support indirect infringement finding
4. The $200 million damage award is not "reasonable"
5. Awarding an injunction here is improper

HP and Dell Amicus Briefs

HP and Dell also weighed in. HP and Dell both argued that enjoining sales of Word would impose large hardships, as both of these companies distribute Word. Both companies explained their process for creating images, which are then copied onto new computes. For those computers that include enjoined copies of Word (presumably this number is large, but the amicus briefs are redacted to protect this confidential information), HP and Dell would need to create and test new images, which would cost time and money.

We'll see how i4i responds....

Combining drugs -- "epitome of obviousness?"

Ortho-McNeil sells the pain reliever Ultracet®, which is a combination of acetaminophen (Tylenol®) and tramadol (an analgesic). Ortho sued Teva Pharmaceuticals and Caraco Pharmaceutical Laboratories for infringing U.S. Reissued Patent 39,221, which claims combinations of acetaminophen and tramadol in certain ratios.

The defendants prevailed at the trial level by arguing that the patent was invalid for anticipation and obviousness. Basically, the prior art disclosed a pain reliever made up of acetaminophen, tramadol, and 2 other compounds at varying ratios. The trial court agreed that this rendered the patent obvious and anticipated, and granted summary judgment in favor of the defendants. Ortho appealed.

Obviousness of combining only acetaminophen and tramadol

The Federal Circuit stated the law on obviousness:

Obviousness is ultimately a determination of law, though it is based on questions of fact. [Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc. 424 F.3d 1293, 1302 (Fed. Cir. 2005] Anticipation is a question of fact. Id. Because issued patents enjoy a presumption of validity, obviousness and anticipation must be proven by clear and convincing evidence. Impax Labs., Inc. v. Aventis Pharma., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). When the patent examiner has considered the asserted prior art and basis for the validity challenge during prosecution, the burden of proving invalidity is especially heavy. Id.; Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1467 (Fed. Cir. 1990). ...

Inventions in most instances rely upon building blocks long since uncovered, and combine elements that are in some sense already known. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418-19 (2007). The combination of familiar elements according to known methods is likely to be obvious, however, when it does no more than yield predictable results. Id. at 1739. Each case must be decided in its particular context, including the characteristics of the science or technology, the nature of the choices available to one skilled in the art, the specificity of the prior art, and the predictability of results in the area of interest. Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, 1352 (Fed. Cir. 2008).

The Court then relied upon Ortho's expert testimony in deciding that there is a question of fact as to whether or not the claimed combination was obvious, and thus the Court vacated summary judgment on this issue and remanded.

Anticipation of the claimed ratio

The district court improperly resolved disputed questions of fact in reaching this conclusion. What a reference discloses is a question of fact. Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).

Thus, because the parties don't agree as to what the prior art discloses, a question of fact remains.

Obviousness of the claimed ratio

Here, the Federal Circuit was not convinced by Ortho's expert, and agreed with the trial court that no genuine issue of fact existed as to whether or not the claimed ratio was obvious. As such, claim 6 remains invalid for being obvious in light of the prior art.

The dissent -- Judge Mayer

Most interesting in this case (to me at least) is Judge Mayer's dissent. A sampling of his language conveys his opinion this matter:

The claimed invention does nothing more than combine two well-known pain relievers—acetaminophen and tramadol—in a single tablet. Since the prior art clearly and unequivocally taught that these two analgesics could be combined for effective pain relief, the claimed invention is the epitome of obviousness. I therefore respectfully dissent.

Ortho-McNeil Pharmaceutical, Inc. (“Ortho”) did not invent acetaminophen and it did not invent tramadol. ...

* * *

[A]s here, it was manifestly obvious to combine two well-known drugs -- which had previously been administered together -- in a single table...

* * *

Expert opinions must be given short shriftwhen they fly in the face of explicit disclosures in the prior art....

* * *

Simply put, there is nothing even arguably new about what Ortho claims to have invented. I would affirm.

(emphasis added, and citations omitted).

Ortho-McNeil Pharmaceutical, Inc. v. Teva Pharmaceuticals Industries, Inc., Case No. 2008-1549, -1550) (Fed. Cir. Aug. 26, 2009) (nonprecedential)

Who owns UNIX, Novell or SCO? That's up to the jury now...

In the 1960s, AT&T developed the UNIX operating system, which it sold to Novell for $300 million in 1993. Two years later, Novell decided to sell this business. Enter SCO Group. Novell and SCO struck a deal, the meaning and substance of which is at dispute.

SCO v. Linux

Fast forward 10 years. Linux is now gaining in popularity. SCO sues IBM, claiming it had incorporated its trade secrets into Linux. SCO demanded $5 billion in damages. Novell demanded SCO stop, which SCO refused. Novell then publicly announced that it, and not SCO, maintained ownership of the UNIX copyrights.

SCO v. Novell

SCO struck first and sued Novell for slander of title. Novell counterclaimed for slander of title, breach of contract, and unjust enrichment. Novell claims it continued to own the copyrights to UNIX, and licensed these rights to SCO. SCO's position is that it acquired the copyrights, leaving Novell a 95% interest in royalties as a "financing device."

That litigation proceeded to the summary judgment stage. On August 10, 2007, the District of Utah Court determined, in a 102-page order, that "Novell is the owner of the UNIX and UnixWare copyrights." SCO appealed.

Does Novell own UNIX as a matter of law?

The Court first addressed a contractual interpretation issue before getting to the question of whether SCO had been assigned the copyrights to UNIX, or if SCO merely was a licensee.

Copyright assignments must be in writing

Regarding transfers of ownership, the Copyright Act requires:

A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.

17 U.S.C. § 204(a). The Court explained:

Section 204 is intended “to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses [or transfers].” Eden Toys, Inc. v. Florelee Undergarment Co., Inc., 697 F.2d 27, 36 (2d Cir. 1982). As a result, Section 204 “enhances predictability and certainty of ownership—‘Congress’s paramount goal’ when it revised the [Copyright] Act in 1976.” Konigsberg Intern. Inc. v. Rice, 16 F.3d 355, 357 (9th Cir. 1994) (quoting Community for Creative Non-Violence v. Reid, 490 U.S. 730, 749 (1989)).

Novell argued that this obligation is akin to a statute of frauds, and that the writing must state with sufficient clarity the copyrights to be transferred. Because there was ambiguity in what the contracts between Novell and SCO said, the contracts themselves failed the writing requirement, and thus there was no valid copyright assignment. The Tenth Circuit was not convinced.

We think that Section 204’s writing requirement is best understood as a means of ensuring that parties intend to transfer copyrights themselves, as opposed to other categories of rights. See, e.g., Papa’s-June Music, Inc. v. McLean, 921 F. Supp. 1154, 1158–59 (S.D.N.Y. 1996) (although a writing need not explicitly mention “copyright” or “exclusive rights” to satisfy 204(a), the better practice is that it should). But when it is clear that the parties contemplated that copyrights transfer, we do not think that a linguistic ambiguity concerning which particular copyrights transferred creates an insuperable barrier invalidating the transaction.

The Court then decided that "[t]his case, involving a complicated, multi-million dollar business transaction involving ambiguous language about which the parties offer dramatically different explanations, is particularly ill-suited to summary judgment." After addressing a number of other contractual issues, the Court reversed (in-part) and remanded the matter back to the trial court.

Documents of interest:

• Trial court order granting summary judgment
• Description of SCO v. Linux lawsuits
• SCO is currently seeking Chapter 11 reorganization in bankruptcy
• Wiki page on SCO v. Novell
• The Court affirmed the award of $2.5 million in royalties owing from SCO to Novell

Affirmed-in-part, reversed-in-part.

SCO Group, Inc. v. Novell, Inc., Case No. 08-4217 (10th Cir. Aug. 24, 2009) (published)

Does the Patent Act contain separate requirements for enablement and written description? Fed. Cir. will decide en banc

ARIAD Pharmaceuticals prevailed at the trial level. Eli Lilly appealed. The Federal Circuit panel handling the appeal reversed, finding some claims of ARIAD's patent (U.S. Patent No. 6,410,516) invalid for lack of written description. Patently-O's writeup with more details is here.

ARIAD asked the Federal Circuit for an en banc rehearing. Yesterday, the Court granted that request, and will decide the following 2 questions:

Whether 35 U.S.C. § 112, paragraph 1, contains a written description requirement separate from an enablement requirement?

If a separate written description requirement is set forth in the statute, what is the scope and purpose of the requirement?

We'll see what happens.

ARIAD Pharmaceuticals, Inc. v. Eli Lilly And Co., Case No. 2008-1248 (Fed. Cir. Aug. 21, 2009) (en banc)

Another quick update on Microsoft Word order in Texas -- Parties agree Microsoft doesn't have to post a bond

Just another quick follow up on the judgment entered against Microsoft in Texas in i4i v. Microsoft. Read my earlier posts here, and here.

Yesterday, the Court entered a stipulated order, allowing Microsoft to avoid posting a bond or other security pending its appeal (including any appeals to the Supreme Court). Microsoft included a verification that it has the present ability to pay (approximately $290,000,000) and it will provide plaintiff with updated verifications quarterly indicating that Microsoft still has the ability to pay. If there comes a point in time that Microsoft doesn't have the ability to pay, it will notify i4i, the plaintiff, within 7 days. Finally, Microsoft agreed that, should any payments be due on the judgment after the appeal finishes, Microsoft will pay within 15 days. Additionally, the parties left open the option to come back to the Court and ask for a modification of the order.

You can read the order here.

A "classifier" is a particular machine, and thus patent eligible

George Forman (no, not that George Foreman) invented a method for selecting a predetermined number of features for a set of binary partitions over a set of categories given a dataset of feature vectors associated with the categories. Read the application here. Claim 1 and 4:

1. A computer-implemented feature selection method for selecting a predetermined number of features for a set of binary partitions over a set of categories given a dataset of feature vectors associated with the categories, the method comprising:

for each binary partition under consideration, ranking features using two-category feature ranking; and

while the predetermined number of features has not yet been selected:

picking a binary partition p;

selecting a feature based on the ranking for binary partition p; and

adding the selected feature to an output list if not already present in the output list and removing the selected feature from further consideration for the binary partition p.

4. A method in accordance with claim 1 and further comprising using the selected features in training a classifier for classifying data into categories.

The Examiner rejected claims 1-35 as nonstatutory subject under 35 U.S.C. § 101. (There were also obviousness rejections, which are not discussed in this posting). The Board of Patent Appeals and Interferences explained the law:

As the U.S. Supreme Court has noted, “‘[a]n idea of itself is not patentable[]’….‘A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.’” [Diamond v. Diehr, 450 U.S. 175, 185 (1981)] (citations omitted).

In determining whether a claim as a whole is directed to an abstract idea, a key distinction has been drawn between (1) claims that seek to wholly pre-empt the use of a fundamental principle, and (2) claims that are merely limited to foreclosing others from using a particular application of that fundamental principle. See In re Bilski, 545 F.3d 943, 957 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964).

Based on U.S. Supreme Court precedents, Bilski restated the U.S. Supreme Court’s “definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself.” Bilski, 545 F.3d at 954. This restatement, embodied as the “machine-or-transformation test,” requires that a claimed process either (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. Id. This test ensures that the claimed process does not pre-empt uses of the principle that do not use the specified machine or apparatus. The test further precludes a claimed process from pre-empting “the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article.” Id.

Claim 1 -- not patent eligible

Addressing claim 1, the Board found the recited steps were not tied to a particular machine or apparatus, nor did they transform a particular article into a different state or thing. As such, the claim failed Bilski, as was not patent eligible. The Board found the preamble's requirement that the method be "computer-implemented" was merely "a nominal structural recitation [which] would be a tantamount to a general purpose computer and would therefore not tie the process to a particular machine or apparatus." (citing Gottschalk v. Benson, 409 U.S. 63 (1972)). The Board also found no transformation in claim 1, and upheld the finding of rejection under § 101.

Claim 4 -- The Classifier is a particular machine & thus patent eligible

Turning to claim 4, the Board found that the "classifier" is a particular machine because of the following definition from the specification:

A classifier is typically constructed using an inducer. An inducer is an algorithm that builds the classifier using a training set comprising records with labels. After the classifier is built, it can be used to classify unlabeled records.” Spec. ¶ 0005.

Per the Board:

A “classifier” is therefore a particular machine in that it performs a particular data classification function that is beyond mere general purpose computing. Since the claim recites using the selected features in training this classifier, the claim is therefore tied to a particular machine, namely the classifier. Claim 4 also transforms a particular article into a different state or thing, namely by transforming an untrained classifier into a trained classifier.

Claim 15 -- A machine or article of manufacture, but still not patent eligible

First, the law:

If a claimed machine (or article of manufacture) involves a mathematical algorithm, then we must determine whether the scope of the claimed invention encompasses one of the judicially-created exceptions. This determination of claim scope requires that we make two inquiries:

(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?

(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”

If the machine (or article of manufacture) claim involves a mathematical algorithm and fails either prong of this two-part inquiry, then the claim is not directed to patent-eligible subject matter under § 101.

Claim 15 begins "A memory embodying computer program code for feature selection..." A memory is a machine or an article of manufacture, so it satisfies at least one category of § 101. But where the claimed machine involves a mathematical algorithm, the patent-eligibility analysis must go further. The Board's analysis:

Here, claim 15 is not limited to a tangible practical application in which the algorithm is applied that results in a real-world use. Although the preamble recites that the program code is “for feature selection for a plurality of categories,” this nominal intended use recitation falls well short of reciting a tangible practical application that results in a real-world use. Moreover, the remainder of the claim merely recites data manipulation steps that are performed by the processor upon execution of the program code. These limitations, likewise, fail to recite a tangible practical application that results in a real-world use. Furthermore, the sheer breadth of claim 15 encompasses substantially all practical applications of the algorithm. In essence, claim 15 merely recites a general purpose computing device intended to facilitate the future execution of the recited data manipulation functions—manipulations similar to those in claim 1 that we found to be unpatentable under § 101.

Reversed in part, affirmed in part.

Ex parte Forman, Appeal 2008-005348 (BPAI Aug. 17, 2009)

Game - Set - Match; Federal Circuit affirms dismissal of suit about dual surface tennis courts

May 2, 2007. Mallorca, Spain. On this side, the world's number 1 male tennis player -- Roger Federer -- who also happens to be considered the best grass court tennis player. On the other side, the world's number 2 male tennis player -- Rafael Nadal -- who happens to be considered the best clay court tennis player. ESPN covered the story here.

Renata Marcinkowska was awarded U.S. Patent No. 6,814,669 titled "Dual Surface for Sport Event or Game." The day before the match, Marcinkowska (herself a former professional tennis player) commenced an action against an advertising company in Spain and a sports marketing and management company in Ohio. Problem is, she filed suit in South Carolina, and neither defendant was subject to personal jurisdiction there. The defendants moved to dismiss on that basis, and also argued that Marcinkowska's complaint failed to state a claim upon which relief can be granted. The court granted the motion on both counts, and dismissed with prejudice.

Marcinkowska appealed. After walking through analysis for personal jurisdiction the Court affirmed. There was no allegation that an intentional tort (i.e. patent infringement) took place in South Carolina. So the Federal Circuit affirmed.

Regarding the 12(b)(6) motion to dismiss for failure to state a claim, the Federal Circuit noted that IMG did not make, use, sell, or offer for sale the subject matter of the '669 patent in the U.S. Marcinkowska argued that IMG promoted the match on its website, and let people in the U.S. download photos from the event. She also argued that IMG promoted its own services by broadcasting depictions of the dual surface tennis court in the U.S. The trial court found this too thin to be "use," and the appellate court agreed:

As a practical matter, the exhibition promoted on the internet and televised throughout the world was held on a tennis court built and housed in the Kingdom of Spain, and it was this Spanish tennis court that provided the playing surface for the “Battle of the Surfaces” exhibition over which IMG and other entities obtained trademarks, advertised, and licensed broadcast rights throughout the world. In this case, the hybrid tennis court was not “used” in the United States - it was “used” in Spain and that use was broadcast in the United States.

You can watch some of the match here:

Decision affirmed

Marcinkowska v. IMG Worldwide, Inc., Case No. 2009-1213 (Fed. Cir. Aug. 20, 2009)(nonprecedential)