Technically Legal

In this special episode we discuss the Supreme Court’s recent ruling in Bilski v. Kappos.

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Comments Off Posted in: Podcast on June 29, 2010

Gene Patents, eBay v. Tiffany’s, and a new round of RIAA style litigation.

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Judge Invalidates Some Gene Patents

Judge: Gene Patents Are Invalid
Myriad Loses Ruling Over Breast Cancer-Gene Patents
The Opinion

Appeals Court Backs eBay

eBay Mostly Beats Tiffany in the Second Circuit, but False Advertising Claims Remanded
The Opinion

Indie Movie Producers Send 20,000 demand letters

Extortion-Like Mass Automated Copyright Lawsuits Come To The US: 20,000 Filed, 30,000 More On The Way

Comments Off Posted in: Podcast on April 5, 2010

Yesterday, Myriad Genetics expressed their disappointment and announced their plans to appeal Monday’s ruling which invalidated seven patents related to BRCA1 and BRCA2 genes and diagnostic testing for breast and ovarian cancer.

Given the highly contentious nature of patents related to human genetic material, it’s not really surprising that Myriad plans to appeal.  I would even expect this litigation to be drawn out over the next several years–potentially to the point of Supreme Court review.

Another thing to keep in mind is that because these patents involve claims over methods of diagnostic processes (which arguably consist of mental steps) and gene isolation techniques, these types of patents may be subject to the Bilski case, which is still pending before the Supreme Court.  The highly anticipated Bilski ruling is expected in the coming months.

Keep in mind we’ll be covering this case on this week’s podcast!

Comments Off Posted in: Commentary on March 31, 2010

We still haven’t gotten a chance to read through the 156 page opinion invalidating some patents relating to the Breast Cancer genes (BRCA), but Kevin Noonan has a post which echos my initial thoughts. I think the judge decided the case wrong under existing caselaw. The Supreme Court, recently, has taken a broad view of what is and is not patentable, and isolated, purified, or synthetic versions of naturally occurring substances are patentable.

I’m not passing judgment, here, on whether genes should be patentable, just commenting on the current state of the law. We’ll have more to say on this once we’ve made our way through the lengthy opinion.

Comments Off Posted in: Links on March 30, 2010

After nearly three years of litigation in ACLU v. Myriad Genetics, the Southern District of New York issued a landmark ruling today in favor of the ACLU and declared several human gene patents to be invalid.

The patents claimed ownership to methods and materials related to the isolation of BRCA1 and BRCA2, which are part of the tumor suppressor gene family in humans.  The patents further claim ownership over methods of comparing these genes to healthy genes for the purposes of detecting abnormalities or genetic mutations in DNA sequences .  A skilled clinician can then determine the presence of breast and ovarian cancer, or if a person has a strong likelihood of developing those cancers in their lifetime (somewhere around 70%, if memory serves).

Collectively, Myriad owns or has the exclusive rights to seven patents which deal with the DNA sequencing of BRCA1 and BRCA2 genes.  The effect from this ownership, the ACLU argues, is that Myriad Genetics owns a legal monopoly on all diagnostic processes, which hurts women’s public health at large and restricts cancer research and development.

We’ve yet to read the lengthy 152-page court ruling (read it here at the New York Times), but we’ll get through it over the next several days.   In the meantime, you can also find multiple articles on the ruling circulating in the media, including:  TechDirt, LATimes, Newsweek, Wired

Make no mistake, this is a huge case and a highly significant ruling.  Stayed tuned. We’ll cover it on our next podcast with detailed analysis.

1 Comment Posted in: Commentary, Links on March 29, 2010

Innocent infringement off the table, Apple sues HTC, and is it illegal to poach tickets?

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Innocent infringement off the table

5th Circuit rules innocent infringement defense not supported in Maverick v Harper
The opinion

Apple Sues HTC

Apple sues HTC over iPhone patents
Apple sues HTC–court filings
Apple HTC Complaint U.S. Google & HTC

Poaching Gaga Tickets

Couldn’t Get Those Coveted Gaga Tickets? Here’s Why
Four Charged in Bid To Buy, Resell Tickets

Comments Off Posted in: Podcast on March 9, 2010

What damages for false DMCA takedown notices, employer liability for employee statements, Facebook Patents the newsfeed.

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Damages in False DMCA takedown

Rare Ruling on Damages for Sending Bogus Copyright Takedown Notice–Lenz v. Universal
Rossi Case

FTC Guidelines on Employer Liability for Employee Blog Posts

Potential Employer Liability for Employee Online Statements: New Guidelines by the Federal Trade Commission

Facebook Patents the Newsfeed

Facebook’s news-feed patent could mean lawsuits
Facebook Patents The News Feed (Updated)
The Patent

UPDATE: There seems to have been a glitch with the first post. Hopefully this will fix it.

Comments Off Posted in: Podcast on March 3, 2010

This is still breaking, so we’ll have more coverage as the details of the litigation emerge.

Apple has sued HTC for infringement of Apple patents relating to the user interface and underlying hardware of the iPhone. While I don’t have my hands on a complaint yet, there’s a fair bet it involves the patent for capacitive touch screens Apple was recently awarded.

UPDATE: You can now download the relevant documents. I’ll try to get a look at them later today or this evening.

Comments Off Posted in: Links on March 2, 2010

On December 22, 2009, the Federal Circuit ruled all issues on appeal in favor of i4i.  The Federal Circuit reestablished the effective date of the injunction to January 11, 2010.  Microsoft is left with few avenues in terms of the litigation.  They can appeal to the Federal Circuit (again) and ask for a rehearing en banc.  Another viable option maybe to appeal the Circuit court’s ruling to the Supreme Court.  Finally, they can always wait and see what happens will the Bilski case, which was argued before SCOTUS earlier this fall, and hope the ruling affects the underlying validity of i4i’s patent (not an attractive option).

We covered the first part of this saga on our podcast back in August.  In short, i4i Limited Partnership sued the 800 lb gorilla, Microsoft, for patent infringement based on its Patent # 5,787,449.  The patent claims “a system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations.”   The target of i4i’s litigation was Microsoft’s XML document editing software which is integrated into Microsoft Word (primarily affecting Word 2003 and 2007).   More specifically, i4i claimed Microsoft willfully infringed the ’449 patent.  After a jury found Microsoft guilty of infringement, the district court awarded i4i $200M for the infringement, an additional $40M because the infringement was willful, and pre- and post-judgment interest.  Ouch.

Here’s the kicker though.  In August, i4i filed a post-judgment motion seeking to permanently enjoin Microsoft from supporting, using, or selling editions of MS Word that contained the infringing technology.  The motion was granted; and, Microsoft was dealt a serious blow to the gut.  This sparked a fury of speculation in the blogopshere and media as everyone tried to figure out the fate of MS Word.  As you might imagine, Microsoft did not lay down in defeat– instead they filed an emergency motion to stay the injunction.  The stay was granted and Microsoft filed an appeal before the Federal Circuit challenging the ruling, arguing the District Judge erroneously construed a claim– in  lay-speak, Microsoft argued that the Judge incorrectly applied meaning to a portion of the invention which made the patent broader than what was actually claimed.  Additionally, Microsoft argued that the patent should be invalidated and injunction lifted through other precedent (KSR and EBAY) and pandered about with some other evidentiary arguments that occurred during the trial.

Most importantly, the injunction became effective this week, and Microsoft was forced to comply with it. Since the appellate decision, sources are reporting that Microsoft has indeed made changes to the software to comply with the ruling.  The changes will apparently allow Microsoft to continue selling versions of Word without violating the injunction.  Fear not!  Word is here to stay– in some form.  No word yet if it is technically feasible for Microsoft to redevelop the XML editor in a way which prevents them from violating the ’449 patent.  However, I suspect Microsoft will do something to reincorporate the lost XML functionality back into future versions of Word.

Something that I have not seen covered on other blogs is how this injunction is affecting Microsoft’s corporate clients.  I’ve already received  a handful of phone calls from friends and even a family member asking about the Federal Circuit’s ruling.  Each of these people are employed at the executive or senior executive levels of Fortune 500 companies and all expressed concern about how the ruling was going to affect their company’s future revenue streams.  Undoubtedly, a large number of companies who develop products that depend on certain functionality (like XML manipulation) or proprietary file formats (DOCX and DOCM come to mind) might have just been hurt in a previously unanticipated way.  Depending on what Microsoft changes, this might end up being the focus of more lawsuits from large corporate licensees.  On a brighter note, maybe the litigation will turn around the economy? <kidding>

Stay tuned for more updates.  I’m sure they are coming.

Comments Off Posted in: Commentary on January 14, 2010

This afternoon I came across Martin Goetz’s guest article on the patent law blog Patently-O.  As a long-time software developer and recipient of the first software patent issued, Goetz provides an interesting perspective on the ongoing software patent issue presently before the Supreme Court.

As lawyers, we’ve been trained to think from the legal perspective.  This sometimes contrasts sharply with the laymen understanding of why particular laws exist and why they function as they do.  In the last couple years, I can recount multiple watercooler conversations with non-lawyers, including software engineers and corporate executives,  who have difficulty understanding the unique problem of patenting software inventions under the current standard imposed by the Federal Circuit (the “machine or transformation test“) and the close relationship to non-patentable abstract ideas.

Often, their frustrations can be simplified to: “it’s mine, I developed it with my own ingenuity and the sweat of my own brow, no one else has done it, therefore I merit a patent and the exclusive rights afforded under the law like other inventions.”  While each of these factors are among the recognized reasons in favor of issuing patents, they fail to address the precise problem found in the boundaries of non-patentable inventions and patentable subject matter when applied to software inventions.

Of course, not every layman’s justification I’ve heard falls short of addressing the problem.  In fact,  Goetz’s article confronts several core issues in the debate with a perspective based on development experience.  Though his article does not describe the legal problems, it attacks the notion that software is an abstract principle or idea through a variety of analogies and thoughtful descriptions of enterprise software development.  He notes that the similarities of software development to hardware development process and other physical items of manufacture which are clearly within the realm of patentable inventions.  Interestingly, Goetz also describes software as being closer to a machine than a mere abstract principle when one considers the amount of R&D, workmanship, problem solving, and necessary infrastructure required to achieve a functional high-technology product.

Overall, I appreciated the perspective from a seasoned practitioner in the trenches and recommend the read, especially if you already have a good grasp of the legal principles before the Supreme Court.   Though many of his arguments are compelling on certain points, the Supreme Court will likely focus on many of the nuanced patent principles in addition to other counterbalancing factors in their final decision.

Comments Off Posted in: Commentary, Links on December 2, 2009