JOLT Digest

Federal Circuit Says Patent Preamble Not Limiting
By Debbie Rosenbaum – Edited by Jad Mills

Marrin v. Griffin, Appeal 2009-1031 (Fed. Cir., Mar. 22, 2010)
Slip Opinion

On March 22, 2010, the Federal Circuit affirmed the district court’s summary judgment that U.S. Patent No. 5,154,448, which related to a beverage cup scratch-off label, was invalid because it was anticipated under 35 U.S.C. § 102(b).

Judge Dyk, writing for the majority held that the use recited in the preamble, namely that the scratch-off label was “for permitting a user to write thereon without the use of a marking implement.” was not to be treated as a claim limitation. In finding that this use statement in the preamble was not limiting, the court noted that “use descriptions such as this are rarely treated as claim limitations.” The court held that “the mere fact that a structural term in the preamble is part of the claim does not mean that the preamble’s statement of purpose or other description is also part of the claim.”  Because the preamble was not limiting, the patent owner could not use it to distinguish the patent from the prior art, thus allowing the court to invalidate the patent under section 102(b).

Inventive Step and Patent Hawk both offer good overviews of the case. Patent Case Review provides a summary of the legal issues.  Gary Odom of Patent Hawk argues that “Judge Newman got it right, which is to say that this nicely self-contained issue is ripe for en banc review. The inconsistent treatment of preambles begs for clarity.” (more…)

By Davis Doherty

GoDaddy Follows Google out of China

On March 25, the Washington Post reported that GoDaddy.com would cease registering Chinese domain names in response to intrusive new regulations. The leading Internet registrar’s decision was spurred by concerns that the rules, requiring registrants to provide extensive personal information and photos, would strengthen China’s ability to censor its citizens. CNET reports that GoDaddy has also been the subject of an increasing number of cyber attacks based in China. Reuters provides analysis connecting GoDaddy’s move to Google’s decision to relocate its search services to Hong Kong.

The “Hot News” Doctrine — Not Dead Yet

The Citizen Media Law Project (“CMLP”) blog reports that a recent decision in the District Court for the Southern District of New York, Barclays Capital Inc. v. TheFlyOnTheWall.com, 06 Civ. 4908 (S.D.N.Y. Mar. 18, 2010), may revive the flagging “hot news” doctrine. That doctrine, based on unfair competition laws, provides some protection against copying of time-sensitive facts that are uncopyrightable. TheFlyOnTheWall.com fell afoul of the rule by including the plaintiffs’ stock recommendations in real time on its financial newsfeed, and under the court’s ruling must now delay publication of that information by several hours. CMLP discusses the possibility that the court’s reasoning may apply to news aggregators, but ultimately argues that the ruling will not apply to such websites.

Not-So-Trusted Authorities?

On March 24, computer security specialists released a research paper suggesting that Certificate Authorities (“CAs”) may be assisting government efforts to spy on encrypted communications. The Electronic Frontier Foundation analyzes the report and extensively discusses CAs — a collection of over 100 companies and governments who provide electronic certificates for secure websites such as Gmail and Bank of America. These certificates verify that no third party is impersonating either end of the communication in a “man-in-the-middle” attack, an approach that would bypass the encryption normally protecting the user’s data against interception. Since web browsers only check whether a certificate issuer is on the trusted list, one CA could provide false certificates that would enable attacks at any secure site.

Wired’s Threat Level reports that Arizona company Packet Forensics manufactures hardware to automate this sort of attack, suggesting that false certificates may indeed be available. Commentators are also concerned that some CAs may be particularly vulnerable to governmental pressure to issue forged certificates, which could then be used to spy on dissidents or steal intellectual property.

Federal Circuit Reaffirms Separate Written Description and Enablement Requirements for Patents
By Tyler Lacey – Edited by Jad Mills

Ariad Pharm., Inc. v. Eli Lilly & Co., Appeal 2008-1248 (Fed. Cir., Mar. 22, 2010)
Slip Opinion

The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), in a 9-2 en banc decision, affirmed a panel decision holding Ariad’s patent claims invalid for lack of written description. In so holding, the Federal Circuit reaffirmed that the first paragraph of 35 U.S.C. § 112 (“§ 112”) contains  two separate requirements: written description and enablement.

The patent, which related to “the regulation of gene expression by the transcription factor NF-κB,” encompassed a genus of substances. In holding the patent invalid for lack of written description, the court agreed that the ”doctrine disadvantages universities to the extent that basic research cannot be patented,” because of the difficulty of providing a written description for a complete invention embodying basic research, but noted that this is the law’s “intention”.

Patently-O provides an overview of the case. Inventive Step argues that § 112 is “not a model of clarity” and that the court errs when it “seems to argue that the statute is not ambiguous and that its interpretation is clear from the language.” Chris Holman, a law professor at the University of Missouri-Kansas City who filed an amicus brief arguing against separate requirements, criticized the decision by noting that “any positive policy aspects of [written description] can be better accomplished using the enablement requirement, and that the courts have failed to articulate any coherent standard for compliance with [written description] beyond the requirements of enablement.” Holman believes that the court retained the separate written description requirement because “it has developed into a useful tool for invalidating clearly objectionable patent claims precisely because it lacks any coherent standard.” (more…)

By Kassity Liu

Third Circuit Dismisses “Sexting” Charges Against Minor

On March 18, the WSJ Law Blog reported that the Court of Appeals for the Third Circuit dismissed charges against a teenage girl for distributing sexually explicit images of herself. The court had originally stated that they would address whether the First Amendment protects minors from sending these types of images of themselves through their cells phones, but the court refused to consider this issue in the case. Instead, the three-judge panel concluded that the prosecutor could not charge her for appearing in a sexually explicit photo without evidence that she had helped to distribute it. The court’s ruling appears to protect minors from liability for “sexting,” the act of “sending or posting sexually suggestive text messages and images . . . via cellular telephones or over the internet,” so long as there is “no evidence as to whether that person possessed or transmitted the photo.” The case name is Miller v. Mitchell, No. 09-2144 (3d. Cir. Mar. 17, 2010).

California Appeals Court Holds Threatening Online Speech is not Protected

On March 18, Wired reported that a California appeals court held that hateful and threatening online speech was not protected by the First Amendment. The father of the student who was targeted by the online postings had sued six students and their parents after hearing from the police that the threatening comments posted to his son’s website were protected forms of speech and could not be criminally prosecuted. One of the defendant students claimed that he had made the comments jokingly and did not seriously intend them to be harmful. However, the appellate court refused to accept this defense and instead upheld a lower court’s finding that the defendant had failed to “demonstrate that the posted message is free speech.” The majority judges felt that the defendant’s posting was “a serious expression of intent to inflict bodily harm” both because the posting contained a clear threat and the defendant student spent ample time writing it. The case name is D.C. v. R.R., No. BC332406 (Cal. Sup. Ct. Mar. 15, 2010).

Science Journalist fights libel suit in effort to campaign for British libel law reform

On March 15, the Citizen Media Law Project reported that science journalist Simon Singh has given up his Guardian column to fight a libel lawsuit that the British Chiropractic Association (“BCA”) brought against him for writing an article that denounced some of the BCA’s medical claims. Singh plans on using his case to campaign for British libel law reform, which currently places the entire burden of proving the truth of an allegedly libelous statement on the defendant. The lawsuit, which has been ongoing for two years, has garnered a significant amount of public attention and generated some talks of reform within the British Parliament. Last May, an English court had ruled that Singh would have to prove that the BCA was being “consciously dishonest” when it made the medical claims that Singh had called “bogus” in his article. Singh has appealed this ruling and foresees that his case could “easily continue for another two years.”

By Jyoti Uppuluri

Public Battle Between Google and China Continues

On March 12, Wired reported that the friction between Google and China over the censorship of search results and issues of cybersecurity is ongoing as Google keeps pushing for greater Internet freedom for users. China’s Minister of Information and Technology, Li Yizhong, told the press “Google has made its case, both publicly and privately,” and explained “[i]f you don’t respect Chinese laws, you are unfriendly and irresponsible, and the consequences will be on you.” Eric Schmidt, CEO of Google, stated that he hopes that talks with the Chinese government will yield a result soon.

Netflix Cancels Prize Contest Over Privacy Concerns

On March 12, Ars Technica reported that Netflix has cancelled its second Netflix Prize contest in order settle a lawsuit and alleviate concerns by the Federal Trade Commission. In December, a user sued Netflix, alleging that the data provided by the company to contest participants was insufficiently anonymized. According to Ars Technica, the suit claims that Netflix “violated fair-trade laws and a federal privacy law designed to protect video rental records.” Neil Hunt, Netflix’s chief product officer, stated that company has “reached an understanding with the FTC and ha[s] settled the lawsuit with plaintiffs,” noting that the agreement “involves certain parameters for how [the company] use[s] Netflix data in any future research programs.”

More Freedom for Social Media Services to Operate in Iran, Cuba, and Sudan

On March 10, the Electronic Frontier Foundation reported that the United States Treasury Department’s Office of Foreign Assets Control (“OFAC”) has announced “key amendments” regarding export controls on social media software. The new rules clarify that the export of certain personal communication services and software over the Internet, including “instant messaging, chat and email, [and] social networking,” is now permitted in Iran, Cuba, and Sudan. Prior to these amendments, OFAC’s regulations had been a source of legal ambiguity for companies such as Google and Microsoft, causing them to block some personal communication services in these nations.