JOLT Digest

By Tyler Lacey

Australian State Backpedals on Anonymous Online Political Speech Ban

On February 2, Ars Technica reported that following a harsh public reaction, South Australia’s Attorney General Michael Atkinson has pledged to repeal a recently enacted law that banned anonymous online political speech. The new law is particularly controversial because it applies specifically to bloggers and online commentators, but not to online newspapers or magazines. Atkinson noted that “the blogging generation believes that the law supported by all [Members of Parliament] and all political parties is unduly restrictive” and promised to make efforts to repeal the law. Ars Technica’s Nate Anderson concluded the article with the thought that while the vow to repeal the law was a “victory for people power,” the dangers inherent in anonymous speech should not be ignored.

United States Patent and Trademark Office to Receive Budget Increases

On February 1, Reuters reported that President Obama’s new budget proposal includes a 23% increase in the operating budget of the United States Patent and Trademark Office (PTO) in 2011 as compared to 2010. The proposal also includes a 15% increase in statutory patent application fees and an allowance for the PTO to invest all of its fee revenues internally rather than turning over a portion of them as it had done in the past. The budget proposal urges the PTO to invest its increased budget and fee allowance in efforts to “improve the speed and quality of patent examinations.” According to the article, the PTO currently takes an average of 34.6 months to fully review a patent application and is hampered by an “antiquated” computer system and high staff turnover.

British Online Surveillance Website Stalled While Under Review

On January 28, the BBC reported that the Internet Eyes website has been restricted from offering surveillance camera feeds pending an investigation by the Information Commissioner’s Office (ICO). The ICO is a United Kingdom government agency that takes responsibility for “uphold[ing] information rights in the public interest” and “promoting openness by public bodies and data privacy for individuals.” Internet Eyes’ business model is to pay interested citizens to spot and report crime that they spot in surveillance camera feeds on the Internet Eyes website. The ICO is reportedly reviewing Internet Eyes’ compliance with the United Kingdom’s Data Protection Act by verifying that the footage is used appropriately and that the citizen observers are properly trained. Internet Eyes has promised to comply with any demands issued by the ICO as a result of the investigation.

Federal Circuit Reverses and Remands District Court Ruling in Obviousness-type Double Patenting Case
By Kassity Liu – Edited by Joey Seiler

Boehringer Ingelheim Int’l. v. Barr Laboratories, Inc., No. 2009-1032 (Fed. Cir. 2010).
Opinion

The Federal Circuit reversed and remanded the District Court for the District of Delaware, which had ruled that U.S. Patent No. 4,866,812, owned by the appellant Boehringer, was invalid because Boehringer’s terminal disclaimer did not overcome obviousness-type double patenting with respect to an earlier expired patent, and because the safe harbor provision of § 121 of the Patent Act does not protect the current patent.

The District Court had ruled that the terminal disclaimer filed by Boehringer on the last day of the trial was inoperative because it was filed after the original patent, U.S. Patent No. 4,843,086, had expired. The court also concluded that the safe harbor provision of § 121 did not apply to the ‘812 patent because it was not filed as a result of any restrictions in the ‘086 patent but rather due to a restriction in another patent, U.S. Patent No. 4,731,374. On appeal, the Federal Circuit agreed with the District Court on the issue of the terminal disclaimer, but found that the safe harbor provision did apply.

271 Patent Blog and Patently-O Blog provide brief overviews of the case. Patent Docs gives a more detailed analysis of the case as well as a short summary of the dissenting opinion. IPWatchdog talks about the practical nature of the decision and criticizes the dissent’s narrow interpretation of the safe harbor provision. (more…)

Federal Circuit Vacates Lower Court Ruling in Elevator Patent Case
By: Helen (Ye) He – edited by Davis Doherty

Schindler Elevator Corp. v. Otis Elevator Co., No. 2009-1146 (Fed. Cir. Jan. 15, 2010)
Slip opinion

The Federal Circuit vacated the District Court for the Southern District of New York’s grant of summary judgment of noninfringement in favor of Defendant Otis Elevator.  The Federal Circuit concluded that the district court constructed Schindler Elevator’s patent claims too narrowly by construing the terms “hands-free,” “information transmitter” and “recognition device” “to exclude any ‘personal action’ by an elevator user other than ‘walking into the monitored area’.”  The case was remanded in light of the Federal Circuit’s broadened claim construction.

Gray on Claims provides an overview of this case.  717 Madison Place comments on the case and raises some questions. (more…)

Federal Circuit Rules Against PTO’s Interpretation of Patent Term Adjustments
By Gary Pong – Edited by Dmitriy Tishyevich

Wyeth and Elan Pharma Int’l Ltd. v. Kappos, No. 2009-1120 (Fed. Cir. Jan. 7, 2010).
Slip Opinion

The Federal Circuit affirmed the District Court for the District of Columbia, which had granted summary judgment for the plaintiffs, and held that they were “entitled to extended patent term adjustments under 35 U.S.C. § 154(b) due to the Patent and Trademark Office’s (“PTO’s”) delay in prosecuting their patent applications.”

In promulgating 37 C.F.R. § 1.703(f), the PTO had interpreted § 154(b) as limiting the length of patent term adjustments to the greater of the statutory delay periods, without the possibility of ever combining the two.  The Federal Circuit concluded that this reading was “contrary to the plain language of the statute,” and declined to afford Chevron deference to the agency’s interpretation, holding that the PTO “does not have authority to issue substantive rules, only procedural regulations regarding the conduct of proceedings before the agency.”

Patent Docs provides an overview of the case.  In another article, Patent Docs also provides insight into the PTO’s future course of action.  Patent Prospector features a thorough analysis of the judicial opinion. (more…)

By Kassity Liu JD ‘12
Edited by Joey Seiler
Editorial Policy

On October 6, 2009, Eolas Technologies Inc., a research and development company specializing in web solutions, filed a federal lawsuit in the Eastern District of Texas against 23 prominent companies in the software and Internet industry. Eolas claims that these companies are infringing on two of its patents, U.S. Patent No. 5,838,906 (‘906 Patent) and U.S. Patent No. 7,599,985 (‘985 Patent). These two patents cover technology that enables websites to act as platforms for fully integrated embedded applications. The ‘906 Patent was granted in November 1998. It defines a system that would allow Internet users to access and execute an embedded program. The ‘985 Patent, which was granted on the same day that the company filed its present lawsuit, extends the reach of the older patent to AJAX (asynchronous JavaScript and XML) applications.

The present suit is not Eolas’ first. In a previous patent infringement suit, Eolas targeted Microsoft, claiming that the company had infringed on its ‘906 Patent. Eolas alleged that its invention, which was first demonstrated at a SIGWEB meeting in 1994, was the “first instance where interactive applications were embedded in Webpages.”[1] The district court sided with Eolas, and the jury awarded Eolas $521 million in damages.[2] Microsoft appealed this decision, but after unsuccessful attempts at moving the case to the Supreme Court and invalidating the patent, the software giant chose to settle with Eolas. (more…)