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

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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