It has been over two decades since the Nikes worn by Michael J. Fox’s character Marty McFly laced themselves in “Back to the Future II.”  However despite the passage of time the web is abuzz following reports that Nike, Inc. has filed a patent for sneakers with an automatic lacing system similar to the ones featured in the film.  Filed with the World Intellectual Property Organization on May 11, 2009, the patent was only discovered and reported last week.

The invention is described as an “article of footwear with an automatic lacing system” that provides “a set of straps that can be automatically opened and closed to switch between a loosened and tightened position of the upper.”  The article also includes “an automatic ankle cinching system that is configured to automatically adjust an ankle portion of the upper.”

While the sneakers will have an on-board battery to power the lacing system, TechNewsDaily notes that the “patent reveals that Nike hasn’t decided to whether to go with a USB or a mini-USB port to charge the shoe.”

The inventors listed in the patent filing are Tiffany A. Beers, Michael R. Friton, and Tinker L. Hatfield, and the Portland Business Journal notes that Hatfield, Nike’s vice president of creative design, is “one of the industry’s most prolific designers.”

Michael S. Lee of Plumsea Law Group, LLC is listed as the agent of record.  Plumsea Law Group has offices in Portland, Oregon, and Bethesda, Maryland.

July 2, 2010, Myriad Genetic, Inc., et al., Defendants-Appellants from the now infamous summary judgment decision Association for Molecular Pathology v. USPTO, filed a response to Plaintiffs-Appellees’, The Association for Molecular Pathology, et al., Motion for Recusal of Chief Judge Randall R. Rader.

The Plaintiffs-Appellees preemptively, moved for Chief Judge Rader’s recusal, as Judge Rader may not be assigned to the panel that will hear the appeal.  Appellee argued that on two occasions the Chief Judge created an appearance of partiality. The first instance was as a panelist and attendant of the conference Patenting Genes: In Search of Calmer Waters, which was a Biotechnology Industry Organization (BIO) Conference. BIO filed an amicus curiae brief in the district court supporting Defendants-Appellants.  BNA’s Patent, Trademark & Copyright Journal reported Rader, while at the BIO Conference, as saying,

A troublesome question for me is the lack of legal standard for making this decision. In an obviousness analysis, there are some neutral steps that I can apply. But using Section 101 to say that the subject matter is unpatentable is so blunt a tool that there is no neutral step to allow me to say that there is a line here that must be crossed and that this particular patent claim crosses it or does not.

The second occasion, Chief Judge Rader asked a question at the Eighteenth Annual Conference on International Intellectual Property Law & Policy.

In the Plaintiffs-Appellants response, Appellants asserted that Appellee’s arguments as being conclusory and unreasonable.  Appellants six point response poignantly stated that attendance at a legal symposia, by itself, does not render impartiality reasonably questionable. In addition, judges are not forbidden from expressing their opinions on legal issues in general.  Appellants argued that Rader’s above quoted statement when viewed in the context is nothing more than a general legal opinion, as it was in response to a comments about the U.S. Supreme Court’s lack of detail to exceptions to patentability.  Secondly, Rader’s question at the Annual Conference on International Intellectual Property Law & Policy regarded whether water purification was a sufficient invention. As the questions are not related to the facts of the case on appeal, there was no reasonable appearance of partiality.

The European Union’s July 6th pronouncement in Monsanto Technology v. Cefetra confirms earlier concerns regarding the EU’s stance toward gene patents. Monsanto sought to prevent imports of soya meal containing traces of its patented seed, Roundup Ready soya seed, arriving into Dutch ports from Argentina. The Court of Justice of the EU found that ”the protection for a patent relating to a DNA sequence is limited to the situations in which the genetic information is currently performing the functions described in the patent.” Specifically, traces of the genetic material within soya meal could not infringe Monsanto’s patent where the soya meal was not used for the same purpose, i.e. to protect the seed from the harmful effects of herbicide.

In making its decision, the Court relied on Article 9 of the Biotechnology Directive, which states in relevant part that “the protection conferred by a patent on a product containing or consisting of genetic information shall extend to all material… in which the product in incorporated and in which the genetic information is contained and performs its function” [emphasis added]. In a press release issued by the Court of Justice, the Court made clear that Monsanto could not dispute its failure to satisfy Article 9 and that actual performance of a patent’s stated function is required for the harmonization of the Directive in the EU. This ruling will apply retroactively affecting all patents currently held in EU member countries and those obtained after the Directive was signed into law.

In a July 7,  2010 ruling (In re Giacomini), the Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and Interference’s rejection of U.S. Patent Application No. 09,725,737 (”the ‘737 application”) pursuant to 35 U.S.C. § 102(e) as being anticipated by U.S. Patent No. 7,039,683 (”the ‘683 patent”) which was issued to Vinh Tran.  The ‘737 application was filed on November 29, 2000 and was directed to a method of efficiently populating a cache with resources.  The ‘683 patent was filed on December 29, 2000 as a Non-Provisional Application, but claimed priority to a Provisional Application which was filed on September 25, 2000.  Consequently, the filing date of the Provisional would make the ‘683 patent prior art under 35 U.S.C. § 102(e) whereas the filing date of the Non-Provisional would not.

The Board determined, and the Applicants did not dispute, that the ‘683 patent taught all of the claimed features of the ‘737 application.  Section 102(e) states that a person shall be entitled to a patent unless the invention was described in “(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent” (emphasis added).  Applicants argument was that since a Provisional Patent Application does not itself lead to the issuance of a patent, that its filing date cannot be used in formulating a rejection under 35 U.S.C. § 102(e).  However, the Federal Circuit sided with the Board’s ruling and quoted 35 U.S.C. § 111(b)(8) , the pertinent part of which states that “[t]he provisions of this title relating to applications for patent shall apply to provisional applications for patent.”

The Federal Circuit clarified an important limitation in that the Provisional must have support for the invention disclosed and claimed in the Non-Provisional.  Furthermore, since Applicants did not argue a lack of written description support before the Board, the argument was waived because Applicants failed to timely raise it below.  The Federal Circuit’s ruling was also distinguished over In re Hilmer, which clarified that a U.S. Patent Application claiming priority to a foreign application has a priority date as of the filing date of the foreign application, but is only effective as 102(e) prior art as of its U.S. filing date.  This difference arises from the wording of Section 102(e) wherein the application for patent must be “filed in the United States.” These subtle distinctions should be included among the considerations given precedence when determining whether to file first in the U.S. or abroad.

The U.S. Patent and Trademark Office (USPTO) recently released new interim guidelines to its patent examining corps in view of the U.S. Supreme Court’s decision in Bilski v. Kappos. The interim guidelines, which were issued on July 27, 2010, provide factors to be considered by Patent Examiners in determining whether method claims contain patentable subject matter under 35 U.S.C. § 101. As set forth in the U.S. Supreme Court’s Bilski decision, the “machine or transformation test” is no longer the sole test for patent eligibility, but rather is used as “useful and important clue” as well as an “investigative tool” in determining whether a claimed process is patent-eligible.

According to the guidelines issued by the USPTO, if the claim either expressly or inherently recites a machine or transformation, then this is a factor pointing towards patent-eligibility. If the claim does not recite a machine or transformation, then this is considered a factor weighing against an indication of patentable subject matter. An ultimate determination of patentability under 35 U.S.C. § 101 requires that a number of additional factors be carefully analyzed and weighed to determine whether the claimed process recites an abstract idea. Examples of factors which weigh for and against patent eligibility are provided at the end of the interim guidelines.  Under the proposed guidelines, there may be situations where a claim that satisfies the “machine or transformation test” may, in fact, be patent-ineligible, whereas a claim that does not meet the “machine or transformation test” is still determined to be patent-eligible. There is no single bright-line rule, but rather the claim as a whole and all relevant factors must be considered in determining patent eligibility.

The concept that an abstract idea is not patent-eligible is not new. However, the removal of the “machine or transformation test” as the sole test for determining whether a process is patent-eligible now requires a more detailed analysis of all relevant factors in order to determine whether a process is directed to an abstract idea. The interim guidelines are the USPTO’s attempt to define these factors. The public is invited to comment up to September 27, 2010, such that a final set of guidelines may be issued.

How much of a sample is too much?  That is what a Sixth Circuit District Court will have to decide when considering the copyright infringement claim filed by jazz legend, Michael Henderson, against Snoop Dogg and a number of other rappers.  In his July 6, 2010 complaint, Henderson alleges that the defendants “have been and are engaging in copyright infringement by redistributing, sampling, and offering the general public the opportunity to download, stream, listen to, and/or purchase the infringing work.”

Having toured with Stevie Wonder and Miles Davis, Henderson is considered one of the most influential jazz musicians of the past forty years, which is why his music has been sampled by artists like Jay-Z, Eminem, Notorious B.I.G., and others.  With that kind of notoriety one would guess that if you are to use nearly half of the first verse of one of Henderson’s songs (i.e., “Riding” from Henderson’s Do It All album) you would pay him.  Apparently Snoop thought differently.  Perhaps that is because sampling can be legal, if, for example, it is fair use or de minimus.  We will have to wait to see what the Sixth Circuit thinks of Snopp’s sampling.

In response to an interlocutory appeal filed by Mattel Inc., on July 22, 2010, in Mattel Inc. v. MGA Entertainment Inc., Ninth Circuit Chief Judge Kozinski vacated a grant of equitable relief in favor of Mattel, which included, among other things, an injunction prohibiting Defendant MGA Entertainment Inc. from producing or marketing virtually every current and future Bratz doll substantially similar to Mattel’s copyrighted Bratz works.  Judge Kozinski justified his ruling by pointing to errors in the jury instruction and the district court’s copyright infringement analysis.

Introduced in 2001, the Bratz line of dolls have proven to be wildly successful and a significant competitor with Mattel’s Barbie – which is why Mattel is not happy that their former employee, Carter Bryant, designed the preliminary Bratz sketches and sculpt while still employed with Mattel.  In fact, Mattel argues that it owns Bryant’s preliminary drawings and sculpt.  Assuming Mattel does own the drawings and sculpt, Mattel’s copyrights in the works would cover only its particular expression of the bratty-doll idea, not the idea itself.  In determining if MGA impermissibly copied the expression of Mattel’s bratty-doll or permissibly lifted the ideas, the district court applied the “extrinsic/intrinsic” test, which Judge Kozinski ruled was incorrectly applied.

Specifically, Judge Kozonski posited that the expression of an attractive young, female fashion doll with exaggerated proportions is highly constrained and falls within a narrow range of expression, which means the preliminary sculpt is entitled to only thin copyright protection against virtually identical copying; not the broad protection against substantially similar works that the district court afforded.  Regarding the drawings, Judge Kozonski found that the district court erred in applying the substantially similar test in that the court did not “filter out all the unprotectable elements of Bryant’s sketches.”

Though it may sound bratty, in light of the fact that Mattel is the number one toy maker in the world, with its top-selling line being the Barbie dolls – which accounts for 80% of the company’s revenue – the final words of Judge Kozinki’s opinion amount to much more than child’s play: “America thrives on competition; Barbie, the all-American girl, will too.”

The Federal government’s new cybersecurity program, dubbed “Perfect Citizen” is raising Big Brother concerns.  According to a Wall Street Journal article published in early July, the US National Security Agency (NSA) is planning to spend $100 million on this program, whose purpose is to detect cyber-attacks on private companies and government agencies that run critical infrastructure.

“Perfect Citizen” will monitor nuclear power plants, train stations, subway systems, and the electric power grid to help safeguard against a cyber-attack.  According to the Journal report, people familiar with the program explain that surveillance would be accomplished via a set of sensors.  The sensors would be deployed in computer networks for critical infrastructure and triggered in cases of unusual activity, thus suggesting an impending cyber-attack.  Additionally, information gathered from “Perfect Citizen” could serve as a data bank to help companies and agencies who call upon the NSA for help with investigations of cyber-attacks.

Some industry and government officials view the program as an “intrusion by the NSA into domestic affairs,” the Journal reports.  An article on FoxNews.com further raises the question that if the “Perfect Citizen” sensors are used to monitor cyber-attacks, “it’s easy to envision how this same network could be used for monitoring everyday citizens.”  Others, however, consider it an important step in defending against the increasing security threat.  In the Journal article, one official characterized the intrusion into privacy as “no greater than what the public already endures from traffic cameras.”

The “Perfect Citizen” program appears to have evolved from a smaller project, code-named “April Strawberry” that was used to address the problem years ago.  The current program is being expanded with funding from the Comprehensive National Cybersecurity Initiative.  However, the program is still in its early stages, and much still needs to be worked out.

The NSA classified the Journal report as “inaccurate” in a later article.  “There is no monitoring activity involved and no sensors are employed in this endeavor,” NSA spokesperson Judith Emmel told TechNewsWorld.

According to Steve Gibson, CEO of Righthaven, Copyrights are the biggest assets in the world of journalism. So he’s buying them, then suing anyone who re-hosts the articles on their blog or website. His business model essentially is to use the threat of statutory damages, up to $150,000 per willful infringement, to force bloggers and other online sites to settle for a fraction. A Google search for Gibson’s company reveals a torrent of litigation against various entities, ranging from marijuana legalization group NORML to the conservative blog Free Republic, though there doesn’t seem to be a website for the group as of yet.

This strategy echoes that of U.S. Copyright Group, a coalition of independent movie producers to enforce their P2P lawsuit claims, though the infringements vary significantly. For Righthaven, they are targeting the wholesale plagiarism of online news content from for-profit media outlets. According to Gibson in an article from Wired Magazine, there are, “millions, if not billions, of infringements out there”. While going after publishers who re-post content is a valid claim for a right holder to pursue (especially if the blog is making money off content they did not create), using the Copyright Act to intimidate those who utilize RSS feeds or other forms of linking is more dubious. Mediapost.com ran a story in March pointing out Rightshaven is suing without even following the §512(c)(3) DMCA take down procedures, simply making its demand to settle or go to Court. This is likely a cost-saving measure designed to avoid spending more in legal fees than it makes in settlements, unlike the RIAA.

The issue here arises in light of cases such as Arriba Soft, Perfect 10, and the recent Google-Viacom dispute: at what point does using content published somewhere else infringe on those rights, and what is sufficient to avoid liability? Arribasoft and Perfect 10 both stand for the prospect that deep linking, where content from one site is displayed as a link on another, is protected Fair Use. Specifically, the Court in both cases relied on the highly transformative nature of the link combined with the relatively marginal market harm caused by the linking. Google recently had a summary judgment granted in its favor in a case brought by Viacom over content on YouTube, where DMCA take down procedures weighed heavily in a finding that Google did not infringe on Viacom’s Copyrights. So, in these cases, where a blogger merely links to a case should be distinguished from one who copy-pastes content from another site without proper quotations or citations. It is unclear if this distinction is part of Righthaven’s plan.

So, is Righthaven merely being brazen in their approach, or just economic? Practices such as this are an effective way of enforcing rights online when done right (by respecting the various rights and defenses available to using other people’s content). When not done right, it makes for good litigation. However, in the context here, the combination of a deep pocked and strong philosophical conviction makes decreases the odds of anyone mounting any serious defense in Court.

Capitol Records and Jammie Thomas-Rassett have agreed to disagree when it comes to mediation on the file-sharing case brought against her. As Copyright Guru and Attorney Ben Sheffner points out on his blog, Campaigns and Copyrights, the two sides failed to reach an agreement in court-ordered mediation, and as a result the case will proceed to trial for a third time this coming October.

This news comes just as the Judge in another high-profile file sharing case slashed the damages owed by file sharer Joel Tenenbaum by a factor of 10. In a July 9th order, District Court Judge Nancy Gertner set the damages for each infringed work to $2,500 for each of the 30 files at issue, an amount mirroring the damages awarded in Capitol v. Thomas.

What sets Tenenbaum’s case apart from Jammie Thomas’ is his team of lawyers and law students who took on his cause. Their argument focuses not on the legitimacy of Joel’s actions, but on the constitutionality of the excessive damages permitted in current copyright law. As Tenenbaum’s team puts it,

We believe that 1) the extent of the damages this statute permits are unconstitutional; and 2) the music industry is abusing federal power by using the court system capriciously

The cases underscore the trend in Federal courts towards a more rational approach to enforcing copyright. While it is essential to give rights holders adequate means to protect their property, Judges are recognizing the disparity in damages between non-commercial and commercial infringement. As of yet, such cases have not made their way to the Supreme Court yet, nor has there been an explicit constitutional ruling on the Constitutional issues. However, instances such as this indicate that Judges may be starting to show some frustration with the way cases brought by members of the RIAA are handled, hinting the “abusive lawsuit” argument is growing some teeth.