April 2009

Expect a "Perilous Future for Most Business Method Patents," Saith Judge Marylin Patel

April 6, 2009

Judge Marylin Hall Patel, a federal district judge in the North District of California (San Francisco/Silicon Valley) since 1980 and Chief Judge in the District from 1997 – 2004, is a well known federal judge when it comes to intellectual property matters. For example, Judge Patel decided the Grokster case at the district court level, which eventually was affirmed by the Supreme Court, and she has decided many patent cases.  When she speaks on IP matters, one would do well to listen Therefore, her March 26, 2009 decision in Cybersource v. Retail Decisions is of no small significance. In this case Judge Patel applied In re Bilski to invalidate two business method patent claims in U.S. Patent No. 6,029,154, titled “Method and system for detecting fraud in a credit card transaction over the Internet.” The CAFC’s decision in Bilski requires that a process either be tied to a machine or apparatus or involve a transformation, and Judge Patel held that the ’154 patent failed this “machine-or-transformation” test. Judge Patel held that a credit card number is not a physical object, thereby failing the “transformation” test, and she rejected the argument that because the claims were tied to the Internet they satisfied the “machine” test, since “one cannot touch the Internet.” At the conclusion of her opinion she stated: In analyzing Bilski, one is led to ponder whether the end has…

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In Search of the Perfect Search

April 3, 2009

The issues associated with Electronically Discoverable Information (ESI) hang over the legal profession like the threat of Katrina II hangs over New Orleans. Lets face it: most judges and attorneys would do anything to avoid confronting the complexities of ESI. However, judges are good at forcing lawyers to face up to bad stuff, so it’s impossible to avoid the subject. Of course, in a huge case involving large sums of money it’s no problem hiring a consulting firm that does all the work for the lawyers, and guides them every step of the way. However, that’s only 1 case in 100, if that. What about all the “little cases,” where expensive consultants are not an option? The answer, not surprisingly, is the “keyword search.” After all, if we can search a trillion documents using Google, why not use key word search to find documents relevant to litigation. Sadly, key word search is not very reliable. For example, if you have a million documents how would you formulate a key word search that would be certain to collect documents that relate to to people under age 12?  In fact, recently the courts have noted the shortcomings of key word searching and criticized its use. An excellent article in the April 2009 ABA Journal discusses these issues in some detail, and the good news is that some “very smart people” are working…

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Who Watches the Watchmen?

April 2, 2009

“How does the court have confidence that the public integrity section has public integrity?” Judge Emmett Sullivan, during the trial of former Senator Ted Stevens   Prosecutor: I already got no proof how the victim got hold of that heroin. Now you’re saying I can’t put Hodgins on the stand? Why? FBI Agent: You don’t wanna know the answer to that. Forensic Investigator: Why doesn’t she wanna know? Prosecutor: As the prosecutor in this case, I’m obliged to share everything I know with the defense. Forensic Investigator: [starts to explain...] Prosecutor: Whoa! Goodnight! From TV Show “Bones” ____________________________________________ Prosecutors have a legal duty to provide criminal defendants with exculpatory evidence. Every criminal prosecutor knows this – it’s probably Rule No.1 for prosecutors: “YOU MUST GIVE DEFENDANT EXCULPATORY EVIDENCE.” This has been a constitutional right since the 1963 Supreme Court decision in Brady v. Maryland. Rules 2 and 3 are, don’t forget Rule No. 1. Today’s decision by the Obama Justice Department to dismiss criminal charges against former Senator Ted Stevens means that prosecutors at the highest levels of the DOJ forgot this rule (or disregarded it). This is an enormous embarrassment for DOJ, and a probably a career killer for the attorneys involved, who are likely to be sacked, at the very least. (Keep in mind that former U.S. Attorney General Roberto Gonzales has been unable to find a private…

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A Blog Symposium, Hosted by Truth on the Market

April 1, 2009

Take a book: Innovation for the 21st Century, Harnessing the Power of Intellectual Property and Antitrust Law, by Michael A. Carrier.  Invite several IP and antitrust luminaries to comment on the book.  The result: a  “Blog Symposium” on the book organized by Truth on the Market.  The Symposium is described as follows: The format will be as follows.Today we’ll have posts from Crane, Manne, Weiser, and Wright on aspects of Innovation for the 21st Century which focus on competition policy.Tomorrow, Professors Frischmann, Kieff, and Crouch will focus on the intellectual property related proposals.Professor Carrier will have the opportunity to respond to the posts Tuesday evening or Wednesday.And of course, we hope that both participants and our normal group of high quality commentators will find some time to mix it up in the comments.The participants have been given broad leeway to discuss general themes in Carrier’s work or hone in on specific policy proposals. With the formalities out of the way, you can expect the first of Monday’s posts to start in the early morning and then we’ll add throughout the day with posts from Crane, Manne, and Wright. The bloggers, with links to their bios are:  Dan Crane (University of Chicago/ Cardozo), Geoff Manne (TOTM/LECG), Phil Weiser (Colorado), Dennis Crouch (Patently-O/Missouri), Brett Frischmann (Cornell/ Loyola), F. Scott Kieff (Wash U./ Hoover/ and on his way to GW), the author and…

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Hearts on Fire v. Blue Nile: Judge Gertner Rules That Keyword to Trigger Search Engine Ads Is a "Use" Under Lanham Act

April 1, 2009

The issue here, presented in the context of a motion to dismiss, is whether adoption of a trademark as a search engine keyword constitutes a “use” under the Lanham Act.  The Lanham Act requires “use in commerce” as a condition of infringement, and as Judge Gertner points out, various courts have taken different positions on whether purchase of a trademarked keyword to trigger a sponsored link on a search engine is a “use” of the trademark.  Judge Gertner surveyed the field and noted that most of the courts that have considered this issue have found that utilizing a trademark in this manner does constitute “use” under the Act, and she sided with what she considers to be the majority view (the significant exception being the Second Circuit’s decision in 1-800 Contacts v. WhenU). Hearts of Fire v. Blue Nile For earlier postings on this issue click here and here.

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