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Marvell to pay $1.5 billion in damages
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in 2009, accusing Marvell of selling chips incorporat-ing the technology.
After a four-week trial, the jury rendered its verdict in December 2012 in favour of the university on infringe-ment, validity and willfulness.
Marvell tried to have the $1.17 billion damages slashed in half during post-trial motions, but Judge Fischer rejected the plea.
The chipmaker “consistently” took a ‘no liability’ posi-tion throughout the case, and “exhibited no interest in even attempting to design around the patented meth-ods until very recently”, wrote Judge Fischer.
It also failed to investigate the scope of the “pat-ents vis-à-vis its products”, and continued to pro-duce infringing products despite inquiries from the university.
A US judge has ordered chipmaker Marvell Technol-ogy to pay $1.5 billion in damages to Carnegie Mel-lon University for infringing two hard-disk patents.
A jury had already awarded $1.17 billion in damages to the university, but district Judge Nora Barry Fischer had to rule on “hotly contested” post-trial proceed-ings, leading her to add $400 million to the award.
Marvell has said that it plans to appeal. The $1.5 billion award is one of the largest ever handed down in the US.
In her 31 March decision, Judge Fischer said that she raised the damages award because Marvell “deliberately and willfully” infringed the patents, which relate to hard-disk data detection.
Carnegie Mellon brought the case to the US Dis-trict Court of the Western District of Pennsylvania
Movie studios take Megaupload to court over infringementMajor movie studios are stepping up the fight against Megaupload and its owner Kim Dotcom with a civil lawsuit in a bid to recoup more than $500 million allegedly lost to the copyright infringing operation. US investigators took down Megaupload in January 2012. It brought criminal copyright charges against Dotcom and others, accusing them of encouraging users of their site to share infringing files.
The 7 April copyright infringement complaint, brought by Twentieth Century Fox, Disney, Paramount Pictures, Universal, Columbia Pictures and Warner Brothers, repeats claims that Megaupload rewarded users who uploaded movies and TV shows to the file sharing site.
Google is the senior user of Android trademark
The owner of Android Data Corporation abandoned his rights to the company’s name when he went out of business in 2002, leaving ‘Android’ open for Google to use as the brand for its mobile operating system, the US Court of Appeals for the Seventh Circuit has affirmed.
The Seventh Circuit ruled on Erich Specht’s appeal against the US District Court for the Northern District of Illinois’s summary judgement in favour of Google on 4 April.
Specht, who set up e-commerce software provider Android Data Corporation in the 1990s during the dot-com boom, challenged the lower court’s ruling that he abandoned the trademark to his company’s name.
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IPzen
Latest newsSingapore is considering implementing new laws to tackle online copyright infringement
p3Latest newsLenovo purchases more patents, this time from NEC Corporation
p4Latest newsChina leads the world in trademark registrations, with more than 860,000 granted in 2013 p5E-commerce protectionAlibaba is looking to globalise its businesses. What does this mean for rights owners? p8Alice v CLS BankThe Supreme Court holds its first hear-ing on the case that could make or break software patents in the US p10People movesIrwin Mitchell appoints former Kering IP director, Valipat lands its own rocket man, and more p13
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Marvell to pay $1.5 billion in damagesContinued from page 1
Judge Fischer decided to increase the original damages award by 23 percent, adding $287 million to the total awarded.
But she did stop short of granting treble damages, as Carnegie Mellon had requested.
Ordering Marvell to pay $3.5 billion in damages could compromise the chipmaker’s solvency, wrote Judge Fischer, as it is not “sufficiently capitalised to withstand a penalty of treble or even double damages”.
Carnegie Mellon also “unreasonably and inex-cusably delayed” litigating the case because “it failed to timely conduct a sufficient investi-gation into infringement allegations brought to its attention by the inventors”.
Judge Fischer also ordered Marvell to pay an ongoing royalty 50¢ per chip incorporating the university’s technology.
Movie studios take Megaupload to court over infringementContinued from page 1
The movie studios are demanding $150,000 per infringement, the sum of which allegedly netted Dotcom and others more than $175 million in criminal proceeds. They filed their case in the US District Court for the Eastern District of Texas.
“Megaupload was built on an incentive system that rewarded users for uploading the most popular content to the site, which was almost always stolen movies, TV shows and other commercial entertainment content,” commented Steven Fabrizio, senior executive vice president and global general counsel of the Motion Picture Association of America.
“It paid users based on how many times the content was downloaded by others—and didn’t pay at all until that infringing content was downloaded 10,000 times. Megaupload wasn’t a cloud storage service at all, it was an unlawful hub for mass distribution.”
Dotcom, who resides in New Zealand, is still facing extradition to the US over his involvement in Megaupload.
Despite the Megaupload case, Dotcom launched a new hosting service in January 2013.
Mega attempts to avoid the legal difficulties that plagued its predecessor by employing a system of user encryption, meaning that the hosting service cannot reportedly discover the content of users’ files.
Google is the senior user of Android trademarkContinued from page 1
The trademark infringement case was brought against Google after it released the Android operating system in 2007 and the internet giant failed to convince the US Patent and Trademark Office to grant its application for Android.
In the appeal to the Seventh Circuit, Specht argued that he attempted to sell his business’s assets in 2003 and 2004, suggesting that this signified continued use of the mark, but this is not the same as use in the course of commerce, according to the appellate court.
He also contented that he kept Android Data Corporation’s website running until 2005 and made sales efforts in 2007, but the site did not identify any goods or services and the “efforts were isolated and not sustained; spo-radic attempts to solicit business are not a ‘use in commerce”.
“With respect to Specht’s discontinued use of the mark, the evidence is conclusive that Specht ceased using the Android Data mark at the end of 2002. That is the year that Android Data Cor-poration essentially shut down after losing five clients, laying off its one employee, and transfer-ring its assets to Android Data Corporation,” said the Seventh Circuit.
Google, on the other hand, became the senior user of the Android mark when it released its operating system in 2007, as the lower court was correct in pointing out, according to the Seventh Circuit.
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“By [November 2007], the Android mark lay abandoned. Once a mark is abandoned, it returns to the public domain, and may be appropriated anew.”
“By adopting the abandoned mark first, Google became the senior user, entitled to assert rights to the Android mark against the world. Its use since November 2007 has been uninterrupted and continuous.”
Singapore plans permanent block on piracy sitesThe Ministry of Law in Singapore is con-sidering implementing new laws that could see websites hosting infringing content permanently blocked.
The proposal posted on 7 April, which is entitled Public Consultation on Proposed Amendments to the Copyright Act, aims to target websites that show “a blatant disregard for, and that clearly infringe, copyrights”.
Legitimate search engines and content shar-ing sites such as Google and YouTube will not be affected, according to the proposal.
The Ministry of Law hopes the reforms will streamline the city-state’s Copyright Act. The
changes are open for public consultation, ending on 21 April.
Currently Singapore only allows rights holders to issue takedown notices to ISPs. If they fail to respond to the notice, rights holders can sue for copyright infringement and seek an injunction.
The changes will allow rights holders to apply directly to the courts for injunctions without having to establish ISPs’ liability, according to the proposal.
“The injunction is proposed to be permanent. The site owners, ISPs or rights holders can apply to the courts to overturn an injunction, and the courts will decide on such applications based on merit,” said the proposal.
The Ministry of Law wants to replicate existing UK and EU practices. “This will ensure that rights ownership is clearly established prior to application, and provide a fair balance of rights under the Copyright Act,” it added.
Canadian IP and competition agencies agree to cooperate
The Canadian Intellectual Property Office (CIPO) and the country’s Competition Bureau have signed a memorandum of understanding (MOU)
to help manage respective enforcement and IP activities, training, and IT.
The agencies hope that the agreement will foster communication between staff members to ensure the sharing of best practices and lessons learned from dealing with marketplace counterparts in different jurisdictions.
Competition commissioner John Pecman commented on the agreement: “The signing of this MOU will allow both agencies the opportunity to collaborate on IP issues while delivering on our respective mandates.”
Sylvain Laporte, head of CIPO, also made a statement: “We are looking forward to strengthening our partnership with the Competition Bureau to promote an efficient marketplace economy.”
Between 2009 and 2010, 30,187 patent applications were filed at CIPO, but this figure dropped slightly a year later to 29,077.
During 2012, Research In Motion, which is now known by the same name as its flagship product BlackBerry, was the highest-ranking patent applicant, with 827 applications that year.
It also topped the list of patentees in 2012, with 372 applications being granted.
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Record labels had their fill of vKontakteSony Music Russia, Universal Music Russia and Warner Music UK have finally had enough of vKontakte.
The record labels have filed three separate complaints against the Russian social network in the Saint Petersburg & Leningradsky Region Arbitration Court, claiming that its digital music service deliberately facilitates copyright infringe-ment on a large scale.
“We have repeatedly highlighted this problem over a long period of time. We have encour-aged vKontakte to cease its infringements and negotiate with record companies to become a licensed service. To date the company has taken no meaningful steps to tackle the problem, so … legal proceedings are being commenced,” explained International Federation of the Phono-graphic Industry chief executive Frances Moore.
The social network, which has more than 88 million registered users from Russia and 143 million worldwide, operates an unlicensed music service with “a huge library of copy-right-infringing tracks that are stored on its website”, say the record labels.
Its music service contains thousands of copies of most of the tracks in the Russian and US Top
20 Charts, they added. Repeated attempts have also been made to persuade the social network to tackle the copyright infringement allegedly taking place on its service.
The record labels have filed their cases citing a sample of artists. They want the court to force vKontakte to remove infringing music, and to require it to implement effective industry-stand-ard measures, such as audio fingerprinting, to prevent infringement from happening again in the future.
They are also seeking just over RUB 50 million ($1.4 million) in damages.
“For the music industry to grow and prosper, it needs digital partners that are licensed, that respect copyright and which pay artists and producers for their work and investment,” commented Moore.
“vKontakte’s music service, unlike others in Russia, is an unlicensed file-sharing service that is designed for copyright infringement on a large scale.”
Leonid Agronov, CEO of Russia’s National Federation of the Music Industry, said: “Music companies in Russia need a secure environ-ment where they can invest in artists, offer new music to consumers and develop a viable busi-ness. Today this is extremely difficult due to the
unlicensed service of vKontakte, which is earn-ing revenues from music without respecting the rights of those who created and produced it.”
The social network has been criticised inter-nationally for its users’ copyright infringement.
In February, the US Trade Representative’s annual notorious markets for piracy report named vKontakte for the fourth year running.
Lenovo splashes out on mobile patentsChinese company Lenovo has purchased a portfolio of patents from NEC Corporation.
The patent portfolio covers 3800 international patent families, including essential patents for 3G and LTE mobile technologies and features and technologies in smartphones. The financial details of the deal were not disclosed.
Lenovo is planning to use its in-house engi-neering and external sources to acquire more intellectual property assets in the future, to support its growing PC Plus business.
Ira Blumberg, vice president of IP at Lenovo, commented on the investment: “As Lenovo expands its mobile PC Plus business into new markets, this investment shows it is committed to having the IP we need for global success.”
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Lenovo is actively expanding its patent portfo-lio following its purchase of Motorola Mobility from Google for $2.91 billion in January.
In March, it bought patents from Unwired Planet for $100 million.
In a recent press release, CEO Yuan Yuanqing commented: “Lenovo’s recently announced investments in Motorola Mobility and the IBM server business are logical steps in the successful ‘PC Plus’ strategy.”
“Leveraging strong execution of our strategy, innovative products and growth in our PC Plus business, we continue delivering on our com-mitment to improve our profitability and we are confident we will maintain this momentum in our existing businesses.”
China top of the trademark pileChina leads the world in trademark registra-tions, with more than 860,000 granted in 2013, according to Thomson Reuters CompuMark.
Its third-annual State of Trademarks Report: Global Insights on Trademark Trends report tracks trademark activity across 186 coun-tries, covering more than four million marks published across all classes in 2013.
The US, Brazil, South Korea, Turkey and Ja-pan follow prolific granter China, while India,
Mexico and Taiwan replaced the UK, Germa-ny and Canada in the top 10.
Most notably, Russia was absent from the world’s top-10 trademark granters in 2013.
The report also found that Brazil (53 per-cent), South Korea (23 percent) and Turkey (18 percent) showed the sharpest year-over-year growth in new trademark filings.
Across all international trademark classes, advertising and business management (Class 35) was the most active, with more than 440,000 published trademarks globally.
Scientific, nautical, surveying and other life-sav-ing and teaching apparatus (Class 9) followed. It had more than 280,000 published marks, up from its third-place ranking in 2012.
“Trademarks provide a valuable window into the world’s expanding economy via the filing data of today’s multinational corporations,” said David Brown, managing director of the Thomson Reuters IP solutions business.
“This report provides strategic insight into macro business trends and expansion in new markets globally.”
The data in the report was compiled using the Thomson Reuters CompuMark SAEGIS on SERION online screening tool to identify
trademark filings worldwide from 1 January 2007 through to 19 December 2013.
The UK focuses on enforcementEffective intellectual property enforcemen is a top priority for the UK government, according to Lord Younger.
Members of the software industry and parlia-mentarians joined the IP minister, who was speaking at a Federation Against Software Theft (FAST) reception on 1 April, to underline the importance of IP to the UK economy and to reiterate the need for industry cooperation and market education.
In his keynote address, Lord Younger said: “A key priority for the government is the effective enforcement of IP rights.”
“And coupled with the challenge of IP crime, is the somewhat crowded IP enforcement land-scape; this includes government enforcement agencies such as Trading Standards, the police … and the private sector, and of course not forgetting the role of the legal profession.”
The key to effective enforcement is teamwork, said Lord Younger. “It is crucial that all stakeholders work together.”
“The UK Intellectual Property Office (IPO) plays the lead role in developing our IP crime
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strategy by linking government agencies and industry bodies, such as FAST.”
“I’m delighted that the UK government is doing more than ever before across the whole range of issues that affect IP rights, ensuring IP crime is tackled, IP rights are enforceable, and disputes are managed and resolved more efficiently.”
The Police Intellectual Property Unit (PIPCU), a City of London Police team set up with £2.5 million in funding from the UK IPO, has al-ready taken down 40 UK and international websites providing access to pirated content.
The PIPCU, along with a number of organisa-tions, recently launched the Infringing Website List, which sets out to disrupt the advertising revenues on illegal websites globally.
The joint initiative is part of the unit’s Op-eration Creative, launched to prevent web-sites from providing unauthorised access to copyrighted content.
The Infringing Website List is an online por-tal providing the digital advertising sector with an up-to-date list of copyright infringing sites, identified by the creative industries and evi-denced and verified by PIPCU, so that adver-tisers, agencies and other intermediaries can cease placing adverts placement on them.
While enforcement is important, Mike Weather-ley MP, who is the prime minister’s IP advisor, said that education also helps to protect rights.
“Education is key. Education must be one of the main priorities and this means educating pub-lic at large; stealing digital intellectual property is the same as stealing physical property. Our country’s economic growth depends on IP. This should be underpinned by fair and reasonable IP law where legislation and enforcement meet to foster growth, protect and deter.”
A number of regulatory initiatives are also un-derway, at the national and EU levels.
An IP bill recently passed in the House of Commons will see changes to UK patent, copyright and design law.
It is proposing criminal penalties for those who “intentionally” infringe registered designs. The clause was carefully worded in a bid to protect those who accidentally infringe.
Infringers could be given a 10-year jail term if found guilty.
The EU is also working on trademark reform and the unitary patent system.
FAST CEO Alex Hilton said: “The IT, software and computer services sector accounted for
the employment of 791,000 people in the cre-ative economy in 2012, which is 31 percent of the total UK creative economy employment, having increased from 11.6 percent in 2011.”
“IP sits at the heart of this industry, so it’s encouraging that the government is commit-ted developing and enforcing legislation that will help to protect and support the creators of content.”
“IP regulation is going through some signifi-cant change in the UK and it is important that FAST and its members influence the highest levels of government,” added Hilton.
Music labels win seven-year copyright case
A jury in the US District Court for Southern District of New York has found MP3tunes guilty of willful copyright infringement, capping a three-week trial.
MP3tunes and its CEO Michael Robertson have been ordered to pay damages of approximately $41 million to the music label plaintiffs in the case, which include EMI Records Music.
The publishing plaintiffs will receive an addi-tional $7 million to $8 million.
Register Now for INTA’s 136th Annual MeetingMay 10–14, 2014 | Hong Kong
Expand your professional knowledge and grow your portfolio of international clients at the world’s largest and most widely attended trademark conference of the year. And whether you are a newcomer or a seasoned IP professional in Asian markets, the International Trademark Association’s Annual Meeting in Hong Kong presents the perfect opportunity to explore new opportunities in this dynamic and fast-growing region.
Register Now at www.inta.org/2014AM
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8
E-commerceProtection
With Alibaba Group planning to globalise its e-commerce platforms, should rights owners be worried?
Alibaba Group’s decision to list its initial pub-lic offering in the US, rather than Hong Kong, signals the e-commerce giant’s intent to build on the massive success its platforms have achieved in China.
Announcing its plans in March through a state-ment posted on its website, Alibaba said that a US IPO, which could raise up to $15 billion, “will make us a more global company and en-hance the company’s transparency, as well as allow the company to continue to pursue our long-term vision and ideals”.
The company, in which Yahoo owns a signifi-cant stake, is behind some of China’s most popular e-commerce sites, including consum-er-to-consumer platform Taobao Marketplace, one of the most frequently visited websites in the world. Some 400 million Chinese consum-ers shopped on Taobao using mobile devices in 2013, with 127 million spending 5.35 billion yuan ($875 million) in a single day in Novem-ber, according to Alibaba.
Now, the company appears to be planning to replicate its success elsewhere. “Alibaba’s glo-balisation will not only help Chinese consum-ers have access to famous western brands online but also help those famous brands gain more profits from the huge Chinese market through those platforms,” says Xiang Gao, a partner and head of the trademark department at Peksung Intellectual Property.
Despite the obvious attractions of an expan-sion in the US and other markets, Alibaba’s platforms have been a concern to rights own-ers, because they have been used to buy and sell huge quantities of infringing goods.
The company’s expansion into other markets, and the possibility that its platforms could at-tract new users, will no doubt be worrying those same rights owners that stand to gain the most from increased access to the Chinese market.
Indeed, Taobao has been considered such a nuisance in the past that the US Trade Repre-sentative (USTR) included it in its precursor to the Special 301 Report that identifies physical
and digital markets that are infamous for trade in fake American products.
The Review of Notorious Markets names and shames international infringers of US IP, aiming to pressure governments into doing more to tackle the problem. And that pressure, at least as far as Taobao is concerned, appears to be working.
The marketplace signed an agreement with the International AntiCounterfeiting Coalition (IACC) in August 2013, following more than a year of negotiations. Under the deal, the IACC and its participating members are assisting Taobao with identifying listings for infringing products of-fered for sale on the platform, and of repeat or high-volume infringers, which are now subject to expedited removal procedures. They are also assisting law enforcement with follow-up inves-tigations and offline enforcement.
Speaking in August 2013, Alibaba’s John Spelich said: “Our goal at Taobao is to be synonymous in consumers’ minds with trust and value; this collaboration, and all of our efforts with intellectual property owners, are key components to achieving that goal.”
Before that deal was done, Taobao agreed to work with the Motion Picture Association of America (MPAA) to combat trade in pirate movies on its platform.
“The agreement between Taobao and the MPAA in 2012 was a significant step towards promoting the legitimate sale and distribution of audio-visual content online. We have a mutual understanding with Taobao regard-ing the importance of strengthening content protection efforts,” says MPAA Asia Pacific president and managing director Mike Ellis.
“The measures relate to the identification and removal of copies of MPAA member company content from Taobao.com platform that our members have identified as counterfeit or otherwise infringing. The e-commerce platform has also banned sales of pre-recorded DVDs and CDs to curb the sale of counterfeit discs on the site (this ban is on Alibaba and not Taobao).”
“Although challenges remain, Taobao has continued working with us to rid its market-place of infringing MPAA member company content through the procedures established in 2012,” adds Ellis.
In February, this work prompted the USTR to leave Taobao off of its 2013 Review of Notorious Markets for a second year in a row. It has not appeared in the list since 2011.
“Although challenges remain, Taobao.com has continued working to rid its marketplace of infringing products through the procedures established in 2012,” said the USTR in its 2013 review.
These included “notable efforts” to work with rights holders to clean up its site.
Gao says: “Alibaba has its own intellectual property protection policies that are well implemented. I heard agreements were reached with the MPAA and the IACC … I believe it is only part of the IP protection mechanism and effectively gains trust.”
Rights owners must also play their part in tack-ling infringement on platforms such as Taobao, according to Gao.
“The most important issue is to have their IP rights registered in China,” explains Gao. “Gen-erally speaking, China gives legal protection to registered rights. The IP protection systems of the platforms also require the applicants to submit effective certificates of registered rights in China.”
With Alibaba taking a tougher stance on piracy and counterfeiting, rights owners should feel better about the company’s expansion plans, particularly if Gao’s prediction that the US IPO will force it to come down on infringers even more proves to be correct.
He says: “The planned IPO in the US means Alibaba must abide by the stricter rules, including IP protection, and it is foreseen that Alibaba will continue and even strengthen its IP protection strategies.” IPPro
MARK DUGDALE REPORTS
Going global
E-commerceProtection
6th China IP Counsel Congress
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10
AliceUpdate
The Supreme Court held its first hearing on Alice Corp v CLS Bank, a case that could make or break computer implemented inventions in the US
The final day of March saw the Supreme Court hear oral arguments in Alice Corp v CLS Bank, a case that commentators believe could end the debate surrounding the eligibility of software patents. But the justices, who are not new to ‘computer implemented inventions’, appeared reluctant to answer the question at all.
Under discussion at the Supreme Court is the question of whether claims to computer-imple-mented inventions—including claims to systems, methods, and items of manufacture (computer-readable media, or CRM)—are directed to patent-eligible subject matter within the meaning of 35 USC § 101, and what is the proper analysis for determining patent-eligibility.
Section 101 states that whoever invents any “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is eligible for a patent, with three judicially created exceptions: “laws of na-ture, physical phenomena, and abstract ideas.”
It is that last exception, ‘abstract ideas’, that con-tinues to plague Alice Corporation, the creator of an electronic financial marketplace for trading risk management and investment contracts, in which National Australia Bank is a major share-holder. Its patent claims relate to methods and systems for “exchanging [financial] obligations as between parties” to reduce settlement risk. Chal-lenging the patents is CLS Bank, a bank-owned financial institution that specialises in forex trad-ing settlement.
Linda Thayer, partner at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, explains: “While claims to software or a computer operating based on software would appear to fall within the definition of a ‘process’ or a ‘machine’ and there-fore be patent-eligible, a district court found that Alice’s patents claimed the ‘fundamental idea of employing a neutral intermediary to ensure that parties to an exchange can honour a proposed transaction’, and thereof was an abstract idea not eligible for patent protection.”
To the surprise of almost everyone who works in patent law, the Court of Appeals for the Federal Circuit, ruling on an appeal on 10 May 2013 for the second time after agreeing to an en banc rehearing at CLS Bank’s request, issued a fractured opinion.
Seven of the 10 judges voted to affirm the deci-sion that the method and CRM claims were in-valid, but there was no majority opinion on the reasoning. On the system claims, the court was split 5-5 on validity, so the lower court’s finding of invalidity was affirmed.
“The Federal Circuit’s inability to reach con-sensus on the method for determining wheth-er computer-implemented claims are patent eligible confirmed that the Federal Circuit was hopelessly fractured on the issue of patent-eligibility, and would likely be unable to serve its congressionally-mandated function to bring uniformity and predictability to bear on this is-sue. The Supreme Court needed to step in and provide additional guidance,” says Thayer.
“A Supreme Court ruling in favour of patentee Alice would reverse the Federal Circuit’s finding that all claims were invalid, which the court may do if it ‘returns to the statute’ as advocated by Chief Judge Rader. To reach such a conclusion, however, the Supreme Court would likely have to retreat from language used in Bilski v Kappos (2010) and Mayo v Prometheus Labs, which it would seem unlikely to do.”
Indeed, the hour-long hearing on 31 March revealed that Supreme Court judges are reluc-tant to define what an unpatentable abstract idea is. Chief Justice John Roberts, a former patent lawyer, cast doubt over the usefulness of a test proposed by the US government, which was opposed to software patents in its amicus brief, saying: “I’m just doubtful that that’s going to bring about greater clarity and certainty.”
Justice Sonia Sotomayor went further, asking: “Do you think we have to reach the patentability of software to answer this case?”
Solicitor general Donald Verrilli, arguing on behalf of the US government during the hearing, disagreed with the justices.
“I think the key is that [the six points of the government’s proposed test] are all directed to answering the question of whether the innovation that is claimed and is an innovation in either, A, the improvement of a computer’s functioning or, B, the use of computer tech-nology to improve the functioning of another technological process.”
“That’s the test that we do think can be ap-plied clearly and consistently by the courts or the USPTO. And it avoids the risk of things like frequent flier programmes or the Oakland A’s money ball methods for evaluating the contribu-tions in individual baseball players make or any one of a host of other things that our intuitions tell us just don’t belong in the patent system.”
“Drawing that line keeps them out; not drawing that line lets them in. And with all due respect, I don’t think that the novelty and non-obvious-ness filters that 102 and 103 really deal with that problem effectively, because when you get to non-obviousness in 103, for example, you’ll be asking a different question.”
In its 2010 ruling in Bilski v Kappos, the Su-preme Court found claims to a method for hedging risk covered a “fundamental economic practice”, which was an “abstract idea” and so not eligible for a patent. “As Justice Steven wrote in a concurring opinion, however, the court ‘never provide[d] a satisfying account of what constitutes an unpatentable abstract idea’”, says Thayer.
“If the Supreme Court rules in favour of CLS Bank, affirming the rejection of all claims as un-patentably abstract, it is hoped that the Supreme Court will provide additional analysis as to why this outcome is correct, and some guidance or tools that may be used to evaluate when a claim is impermissibly ‘abstract’.”
“Without additional guidance from the Su-preme Court, appeals to the Federal Circuit will continue to depend largely on the assigned panel, and district courts, patent practitioners, and examiners determining the patentability of application claims, [will be] left with conflicting guidance,” she concludes.
Final arguments before the Supreme Court in Alice v CLS Bank will be heard on 30 April. A decision in the case is expect before the end of June. IPPro
MARK DUGDALE REPORTS
Do we have to?
“ Without additional guidance from the Supreme Court, appeals to the Federal Circuit will continue to depend largely on the assigned panel, and district courts, patent practitioners, and examiners determining the patentability of application claims, [will be] left with conflicting guidance
”
Alicante201433rd Annual ConferenceJune 18-21, 2014Celebrating the 20th CTM Anniversary
We are pleased to invite you to attend ECTA’s 33rd Annual Conference in Alicante, Spain.
The ECTA Conference will deal with the latest developments in Trade Mark and Design law and will offer optimal networking opportunities with friends and colleagues.
To register please visit
www.ecta.eu
AliceUpdate
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INTA Annual Meeting
Location: Hong KongDate: 10-14 Maywww.inta.org
The Annual Meeting has made its mark as the largest and most dynamic trademark event in the world, and INTA looks forward to bringing this unique experience—which will boast more than 8,500 attendees from over 140 countries—to its growing member-ship and partners in Asia. Register today to take advantage of educational program-ming, networking and relationship building opportunities, as well as an exhibition hall filled with more than 100 organisations, all in one location!
LES International Conference
Location: RussiaDate: 18-21 Maywww.les2014.org
The 2014 LES International conference “Make the World Better through Licensing” is going to be held on 18-21 May in Moscow and The World Trade Center Moscow has been chosen as the conference venue. It will be a unique IP event combining both professionally interest-ing and productive programme and the richest social entertainment.
Global Patent Strategy ExchangeLocation: IrelandDate: 03-04 Junewww.globalpatentstrategyexchange.com
The Global Patent Strategy Exchange is an invitation-only forum providing 60 hand selected patent and intellectual property leaders the per-fect environment to formulate robust, cost ef-fective and future proofed patent strategies that protect innovations now and in the future.
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Irwin Mitchell has appointed Katrina Burchell to its intellectual property team.
Burchell previously worked for Kering, as IP director. The company owns designer brands including Gucci, Bottega Veneta, Yves Saint Laurent, Alexander McQueen and Stella Mc-Cartney, among others.
In her role as head of trademarks at Uni-lever, Burchell led a team of 18, which involved the management of more than 160,000 trademarks worldwide.
Burchell is also a non-executive director of Dot London Domains Limited, and was a board mem-ber of the International Trade Mark Association.
She was also vice chair of the In-house Prac-titioners Committee at the International Trade-mark Association and director and chair of ACG (UK Anti-Counterfeiting Group).
She will be working alongside IP partner Georgie Collins, who joined Irwin Mitchell in September 2013.
“I’m excited not only by the opportunity to work with the firm’s significant existing clients, but to build a brands-driven practice,” said Burchell of her new role.
Collins commented on Burchell’s employment: “Recruiting Burchell is a real coup for Irwin Mitch-ell in terms of her profile, extensive in-house experience and knowledge of all things brand.”
French multinational aircraft and rocket engine manufacturer Snecma’s former head of patents has moved to Valipat.
Yarrick Biron takes up the role of chief product officer at the administrative services provider.
He has more than 10 years of experience in risk mitigation, budgeting and process and change management.
Biron managed 10,000 patents covering 3000 inventions in his role at Snecma. He also re-organised its patent function to better align its portfolio with its innovation strategy.
“I am joining Valipat because of its dynamic leadership in developing innovative, efficient and professional solutions for handling admin-istrative tasks in the patenting process,” said Biron of his new role.
“The services developed so far for European patent validation, Patent Cooperation Treaty (PCT) national and regional phase entry and power of attorney forms handling have already been welcomed by practitioners.”
Patrick Duran, CEO at Valipat, commented: “He is highly respected as an intellectual property manager and is also considered an innovator in
his approach to IP workflows. We are poised to grow our business to the next level and I am convinced that Biron is the very best person to help us take that step.”
Nabarro LLP has been promoted David Parrish to partner in its London office. The promotion will take effect from 1 May.
Parrish joined Nabarro in 2008 as an associate in the firm’s IP, having qualified in 2003.
He works on brand protection and trademarks. Parrish has advised many of the firm’s high pro-file IP clients, including Oracle, Raytheon and Levi Strauss.
Paweł Lipski has been promoted to partner at Wierzbowski Eversheds. He previously served as an intern at the firm.
Lipski, along with Tomasz Zalewski, will head up Wierzbowski’s IP and e-business teams.
Lipski joined Wierzbowski in 2005, after winning the internship competition, ‘Grasz o staż’.
During the internship, Lipski worked at the firm’s London office, in the IT and outsourcing practice.
Since completing the internship Lipski achieved a distinction in postgraduate studies at King’s College London, which has further cemented his credibility in his field.
Lipski specialises in IP law and e-business. He actively participates in raising the profile of this practice at Wierzbowski and in devel-oping the growth strategy for the practice, including initiatives connected with Internet Start Up, a legal advice programme for in-ternet and high-tech projects, and the IP and internet blog IPwSieci.
Zalewski commented: “Lipski has moved from the position of a starting lawyer at the firm to senior associate, and now will become a part-ner. We are pleased because this shows that the firm is a workplace providing opportunities for growth.”
“Technology continually moves forward, creat-ing new challenges in copyright law and other areas of intellectual property. We intend to con-sistently build our position as a leader in these fields, as witnessed by our strong, coordinated team of specialists.”
Trademark and unfair competition law expert Andreas Ebert-Weidenfeller has joined Ger-man IP firm Meissner Bolte.
Ebert-Weidenfeller previously worked in the Frankfurt office of Jones Day, where he was also a partner. He moved to that firm in 2009.
He began his career at Boehmert & Boehmert, where he eventually made partner. IPPro
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