More IP-related Stories

  • Gunn v. Minton came down last week, holding that the issue of patent law involved in the malpractice claim of that case did not constitute a federal question and thus did not strip the state of jurisdiction.There’s a fair bit of analysis already.
  • Dan Burk has an article up on Stanford Law Review Online exploring patentable subject matter. The discussion is focused around the Myriad Genetics case, which astute readers will recall was previously discussed here. On a related note, Jeffrey Leftsin discusses Myriad’s “pre-history” in a guest post at Patently-O. H/T Concurring Opinions.
  • We previously reported that oral arguments in Bowman v. Monsanto were available. There’s some commentary now at Patently-O and Groklaw. The consensus seems to be that the Court will side with Monsanto – bearing in mind it is hard to predict anything from oral arguments. That said, the questions are interesting and dive into the heart of the case. Good reading for anyone interested.
  • Julie Hopkins writes at IPWatchDog about emerging patent law policy issues for 2013. This would be a good place to look for SIPS members interested in patent law topics. She discusses the patentability of a human gene (see the Myriad discussions referenced above), potential new legislation regarding NPEs and patent pools, the implementation of the AIA first-to-file system, and implementation of the Patent Law Treaties Implementation Act of 2012.
  • In trademark news, Ilya Somin over at the Volokh Conspiracy is amused that the Yankees claim ownership of the phrase Baseballs Evil Empire. “In short, the record shows that there is only one Evil Empire in baseball and it is the New York Yankees. Accordingly, we find that [the Yankees] have a protectable trademark right in the term . . . as used in connection with baseball.”

More IP-related Stories

  • An interesting discussion of jurisdictional issues with respect to assignor estoppel by Jason Williams – a 3L at W&M and Events Chair for SIPS. I’ll let the article speak for itself, but briefly it concerns whether a patentee can assert a claim of assignor estoppel in an independent action against a party who was not himself a party to previous litigation. The conclusion is that it is only an affirmative defense.
  • Pro-piracy (anti-copyright) group The Pirate Bay is suing an anti-piracy (pro-copyright) group for copyright violations. The alleged copyright violations refer to a parody website; no word on whether the lawsuit is itself parody.
  • Oral arguments in Bowman v. Monsanto are now available. H/T Josh Blackman, who notes a reference to Buck v. Bell.
  • Another (much narrower) constitutional objection to the AIA, courtesy the Federalist Society’s IP Working Group. The essay discusses the bar against patenting after secret commercial use – which may not apply after changes to section 102 made by the AIA.
  • A President’s Day reminder about how Presidents have supported IP law. (Notably absent is any discussion of Thomas Jefferson, although his birthday isn’t for another month.)
  • For those wanting a global perspective about the law – and having worked in-house last summer for a large corporation, I can tell you that global IP issues are very much relevant to practice – here’s a look at the global spread of IP law, noting that with only very few exceptions every country recognizes some sort of intellectual property regime. H/T The Legal Theory Blog.

More IP-related Stories

  • Chubby Checker (real name Ernest Evans), a musician, is bringing a half-billion dollar suit against HP, alleging among other charges trademark infringement and dilution. The reason? A $0.99 novelty app by the same name used to estimate penis size. Discovery will be interesting.
  • In other trademark infringement news, Tiffany sues Costco over alleged counterfeit diamond rings.
  • Patently-O reports on a constitutional challenge to the AIA, based on the switch to a first-to-file system. The complaint argues a “second inventor” is an oxymoron.

More IP-related Stories

  • A judge rules that because a Batmobile is itself a fictional character, selling custom Batmobiles can violate copyright protections. H/T Prof. Heymann, who adds that this would make a good case to blog about in depth for anyone interested in a topic.
  • James Alexander has posted at SSRN a new look at the Statute of Anne, in the context of a particular novel, examining how early copyright doctrine evolved in mid-18th century England. H/T The Legal History Blog.
  • Oracle has filed its appeal in Oracle v. Google. Longtime readers will recall that case was previously discussed here. Oracle lost rather spectacularly, and in its desperation has produced a spectacularly amusing brief. Amusing in that it is an example of how to mislead and obfuscate. (Full disclosure: I had no involvement in the case, but was at Google last summer and participated heartily in the celebration after the case was decided.)
  • IPWatchDog has a discussion about Bowman v. Monsanto, the case pending before the Supreme Court about patent exhaustion and genetically modified seeds.

Upcoming Oral Argument in Myriad

  • Oral arguments have been set in Myriad for April 15, 2013. You may recall from an earlier post here that the Supreme Court recently remanded Myriad back to the Federal Circuit to reconsider in light of its holding in Prometheus. The Federal Circuit issued basically the same opinion, with little weight given to Prometheus (as the dissent noted in rather critical terms). Should be interesting to see what the Court does with it. Make sure to keep an eye on the SCOTUSBlog page.
  • In other oral argument news, the Federal Circuit recently heard CLS Bank v. Alice sitting en banc. This is another big Section 101 case to pay attention to, here relating to software patents. Rumors are that the Federal Circuit will split – with Senior Judge Richard Linn making for 10 sitting judges on the panel. See also Patently-O’s coverage.

More IP-related stories

  • Shining some sunlight on patent trolls: Company claims patent on podcasting, “[a]pparatus for disseminating a series of episodes represented by media files via the Internet as said episodes become available.” TechDirt has more.
  • David Post explores copyright nonsense that made its way into a 9th Circuit case.
  • In other news, Justice Scalia doesn’t much care for the Federal Circuit’s specialized patent docket. H/T Josh Blackman.

    What cases should the Court hear more of? “Easy cases,” said Justice Scalia, half-joking. “I am not one for prowling around for cases I want to take.” His current colleagues don’t seem to do that either, he says. They take them as they come. If there is no circuit conflict, the court almost certainly will not take the case. That is why he thinks the Federal Circuit is a problem. Justice Scalia does not like specialized courts. In every other jurisdiction, he sees the significant issues that need attention; good judges disagree. But the Federal Circuit has exclusive jurisdiction over patents, “and I don’t know squat about patents.” How is he to know which patent cases to take? “Lawyers always say ‘this is a significant departure.’ You can’t believe the lawyers.”

Interesting IP-related Links

We’re instituting a new policy at the SIPS blog, designed to highlight interesting IP-related news or other material that may be of interest to members, and to keep the blog contents from getting too stale. Members are encouraged to either submit their own posts, or to e-mail the blog editors links that may be of general interest. Here’s a quick round-up of goings-on around the web:

  • Over at Prawfs Blawg, there is a “book club” discussion going on about Robert P. Merges new book, Justifying Intellectual Property.
  • Patently-O links to a Georgia State University College of Law IP writing competition – prizes of $3,000, $2,000, and $1,000 available.
  • Patently-O also has a post about an intersting slide-to-unlock patent – interesting, at least, in that it has priority over Apple’s slide-to-unlock patent, which readers may recall was asserted against Samsung recently.
  • The USPTO is requesting comments on how to improve software patent quality, with particular reference to functional language. Groklaw has posted a response.

lululemon athletica Files Suit for Yoga Pant Patent Infringement

By Rachel Cannon.

On August 13, lululemon athletica, the dominant name in designer yoga apparel, filed suit against Calvin Klein, alleging infringement on three patents for yoga pants and capris. While the infringing pants ($60) are no longer available on Calvin Klein’s website, yoga apparel enthusiasts can still purchase lululemon’s astro pant ($98), depicted in the accompanying photo.

This litigiousness may seem unbecoming in the eyes of many of lululemon’s devotees, given the company’s reminders to “breathe deeply,” and other such affirming statements that comprise their “manifesto.” This follows closely on the heels of lululemon’s PR fiasco from last year, as the yoga community clutched their prayer beads in horror when the company’s founder and chairman professed his admiration for Ayn Rand’s free market philosophy.

The patents’ issuance, on June 19th and 26th of this year, only narrowly preceded lululemon’s counsel’s written notice of infringement to Calvin Klein on July 5th. Given the difficulty of prevailing in an apparel-based patent infringement lawsuit, it appears lululemon primarily intends to deter would-be imitators from copying their designs (not to mention selling them at a lower price point) by communicating that they are prepared to take legal action.

The case is 1:12-cv-01034 in District of Delaware. More information on the lawsuit is available here.

Update: Yoga as Copyrightable IP

By Rachel Cannon.

Following up on a previous post, the Copyright Office has taken an official position on registering compilations, which was at issue with Bikram’s yoga-posture-sequencing lawsuits. According to the policy statement published in the June 22 Federal Register, the Office will refuse registration unless a compilation of materials results a work of authorship that falls within one or more of the eight categories of authorship listed in section 102(a) of title 17. As applied to the Bikram suits, the Copyright Office makes explicit in this policy statement that compilations of yoga poses will be refused registration, because exercise is not among those 8 categories.

Prometheus plays with fire, gets burned

By Mark Rawls.

Prometheus, the unrepentant Titan who gave fire to mankind, suffered severely for that crime. Mayo Collaborative Services v. Prometheus Laboratories, Inc., in what may be a Titan of a case, among Supreme Court cases on patentability, has similarly – if in somewhat less dramatic fashion – come down against Prometheus. And although the Nine lack thunderbolts to hurl, the decision has, notwithstanding, shocked many in the patent community. Prometheus Laboratories, for its part, would like you to think it has brought fire to mankind. This post will look at what is at issue in the case, and what the possible consequences are of the Court’s unanimous opinion, in particular with respect to the Myriad Genetics case recently remanded.

This decision has been much commented on. See the SCOTUSBlog coverage, for instance, which provides both the briefs filed in the case and commentary. Or Dennis Crouch at Patnetly O (also explaining the USPTO’s preliminary internal memo on the case). The decision has sparked some sharp criticism: a series of guest posts at Patently O by attorney Robert R. Sachs (1, 2, 3, and 4), goes on at length about what he calls the “logical and legal errors in the Court’s decision.” At IPWatchdog, attorney Gene Quinn begins with “The Sky is Falling!” and calls the Court’s opinion “terrible,” and even “pathetic, [and] narrow-minded” (hoping that Congress acts to affirmatively reverse the Court). In a post by Michael Risch, co-author of Life after Bilski, a paper cited by the Court’s opinion, Risch, for his part, thinks the decision is “hardly earth shattering.” And over at Groklaw, there is predictable glee about the outcome. Rob Tiller, VP and assistant general counsel at Red Had, has a brief post on the case, looking at it from the perspective of software patents. (On software patents more generally, see my previous post.) The Washington Post has also commented on the case.

So what is this case about? Prometheus Laboratories obtained a patent on a medical process, which it claimed Mayo infringed. Risch summarizes: “In short, the patent covered the following: administer a drug, measure the residual effects of the drug, decide whether more or less of the drug should be administered based on the findings.” The drug in question, a thiopurine drug, has been known for over fifty years and used for various medical purposes. But it is toxic at certain levels, and there is apparently some difference among individuals about the right level to use. As the Court’s opinion states, at the time of the patent, the medical community knew that the level of certain metabolites in a patient’s blood were correlated with the likelihood that a particular dosage would either be harmful or effective. What Prometheus Laboratories did was to identify this correlation with some precision. Thus they created a process where doctors could give a certain dosage of the drug, measure the blood level, and decide whether a further dosage was required. Prometheus marketed this test, Mayo bought and used the test for some time, but eventually decided that it would begin using and selling its own test, with somewhat altered thresholds.

Prometheus, then, contributed the knowledge of particular threshold values in monitoring certain metabolites in the blood. The drugs, their medical use, and the vague knowledge of the metabolites correlating to the effectiveness of the drugs, were all known. The Court ultimately held that these threshold values are laws of nature or natural phenomenon, and that Prometheus did not add anything inventive to those natural facts to be patentable. The Court elaborates:

A patent, for example, could not simply recite a law of nature and then add the instruction “apply the law.” Einstein, we assume, could not have patented his famous law by claiming a process consisting of simply telling linear accelerator operators to refer to the law to determine how much energy an amount of mass has produced (or vice versa). Nor could Archimedes have secured a patent for his famous principle of flotation by claiming a process consisting of simply telling boat builders to refer to that principle in order to determine whether an object will float.

This is, essentially, the reasoning of the Court. It is a long-standing doctrine that laws of nature are not patentable; Prometheus, supposedly, has only identified an existing natural condition (granted, with some specificity not before known), but all the processes it attached to that natural condition were well known and practiced before its patent application. (For a critique of this law of nature or natural phenomenon reasoning, see in particular Sach’s first post in his series at Patently O; for a critique of the argument that not “enough” is added to the thresholds, see his third post.)

In light of this decision, the court vacated and remanded the case Ass’n for Molecular Pathology v. Myriad Genetics. (See Dennis Crouch at Patently O or Groklaw about the remand.) This case concerns the question, as presented in the petition for certiorari, “Are human genes patentable.” The Federal Circuit had reached the conclusion that human genes were patentable under certain circumstances. In particular, Myriad had isolated the gene (using well known techniques), and the court reasoned that while the DNA molecules exist in a certain form naturally in the human body, they do not exist in an isolated form and so the isolated form is a distinct chemical entity. The court relied on precedent where, for instance, scientists had engineered certain microorganisms with beneficial properties, where such organisms existed in nature but not with the unique characteristics given to them. The Supreme Court had previously upheld such patents. (See Diamond v. Chakrabarty.) The losing party, for its part, argued that the DNA sequence, which is what controls the gene, is the same as that found in nature. To be sure, the Court’s remanding this case doesn’t say one way or another what it believes the outcome should be, but Dennis Crouch has speculated that one possible interpretation of Prometheus is that the gene in Myriad is unpatentable. This is a big issue because of the progress of medical biology. As the Federal Circuit’s opinion in Myriad states, while the average risk in women of breast cancer is around 12%, this climbs to 50-80% when certain gene mutations are present. On the one hand, patents may be necessary to fuel this research; on the other, the public might not be served by having critical medical testing controlled by a state enforced monopoly. This is too close a question to resolve in the confines of a blog post, especially one by a first year law student who has yet to take patents. But rest assured that in the wake of the Prometheus decision, this is a topic of active discussion in the patent community.

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