Federal Circuit Upholds Damages Award Against Echostar

By Andrew Ungberg — Edited by Wen Bu

TiVo, Inc. v. EchoStar Commc’n Corp.
Federal Circuit, January 31, 2008, No. 2006-1574
Slip Opinion

The U.S. Court of Appeals for the Federal Circuit upheld in part and reversed in part an Eastern District of Texas jury verdict finding that EchoStar’s DVR machines infringed hardware and software claims of TiVo’s patent.

Writing for a unanimous panel, Judge Bryson found that EchoStar’s devices infringed TiVo’s software claims, but not the hardware claims. The court noted that the trial jury did not award separate damages for each kind of infringement and found the software infringement sufficient to support the entire damages award. Finally, the stay of the trial court’s permanent injunction against EchoStar that the Federal Circuit issued pending appeal will dissolve once the judgment becomes final.

Dennis Crouch of Patently-O adds commentary, including EchoStar’s reaction to the verdict.

Christopher S. Rugaber of the Associated Press examines the business consequences for TiVo.

Bloomberg provides further reporting on the decision.

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UK Patents Court Holds Software Patents May Be Enforceable

By Sarah Sorscher — Edited by Wen Bu

In re Astron Clinica, High Court of Justice, Chancery Division, Patents Court (EWHC (Pat)), January 25, 2008, Case No. CH/2007/APP/0466
Opinion

On January 25, the United Kingdom High Court ruled that the U.K. Intellectual Property Office (IPO) cannot categorically reject patent claims for computer programs under Section 1(2) of the Patents Act of 1977 (designed to implement Article 52 of the European Patent Convention), which prohibits “programs for computers” from being considered inventions for the purposes of patenting. Noting the “apparent illogicality of allowing claims to a suitably programmed computer and to the method performed by the computer so programmed but not to the program itself,” Justice Kitchin, writing for the court, held that computer programs themselves (as recorded on suitable storage media) may be patentable if the program makes a conventional computer deliver a new technical effect.

The WLR Daily offers a synopsis of the decision.
David Pearce of IPKat expressed surprise at the decision in light of the strong language that had been used in the earlier U.K. Court of Appeal ruling in Aerotel/Macrossan and noted that this decision, if left intact, amounts to “falling into line with the EPO.”
Andres Guadamuz criticizes both this decision and the earlier EPO decisions for changing the meaning of an otherwise clear treaty provision.
The Register’s Kelly Fiveash takes a more positive view, commenting that the ruling “could open up the playing field for small UK businesses looking for a leg-up.”
Finally, Emma Barraclough of Managing Intellectual Property predicts that the ruling might reverse the trend of UK companies applying for patents through the EPO instead of directly through the UKIPO.

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European Court of Justice holds that EU law does not require ISPs to disclose subscriber information

By Daniel Ray — Edited by Wen Bu

Productores de Música de España (Promusicae) v. Telefónica de España S.A.U.
European Court of Justice (Grand Chamber), January 29, 2008
Case C-275/06, 2008 CELEX no 62006J0275 (Jan. 29, 2008)
Opinion

On January 29, the European Court of Justice issued a Grand Chamber ruling in Promusicae v. Telefónica. The court held that European law does not require Internet service providers (ISPs) to disclose their subscribers’ identities to trade organizations for the purpose of civil litigation against them, but that European law also does not prohibit member states from imposing such requirements if the legislation sufficiently balances IP and privacy rights.

David Meyer of ZDNet UK summarizes the decision, and quotes a British ISP spokesperson who claims the ruling vindicated ISPs’ self-policing efforts.
Nikki Tait of the Financial Times cites mixed opinions from copyright holders on whether the Court’s leaving open to member states the option of legislating stricter controls will help protect copyrighted content.
Eric Bangeman of Ars Technica notes that copyright holders still have recourse because criminal charges may be brought against infringers, but that some European nations have been unwilling to press charges for copyright infringement.
Gwen Hinze of the Electronic Frontier Foundation notes that any victory for privacy advocates may be short-lived, as the decision may impel copyright holders to step up their legislative efforts to impose intermediary liability on ISPs or pan-European criminal penalties on filesharers.

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Federal Circuit Holds Patent Unenforceable Following Patentee’s Failure to Disclose Material Notes

By Michelle Yang — Edited by Wen Bu

Monsanto Corp. v. Bayer Bioscience N.V.
Federal Circuit, January 25, 2008, No. 2007-1109
Slip Opinion

On January 25, the Federal Circuit affirmed the District Court for the Eastern District of Missouri’s holdings: 1) that Bayer’s patent for certain chimeric genes was unenforceable for inequitable conduct, and 2) that the district court had jurisdiction to declare three related patents unenforceable.

The Federal Circuit held that Bayer’s patent was unenforceable for inequitable conduct. Judge Gajarsa’s opinion held that Bayer breached its duty of candor and good faith to the United States Patent and Trademark Office in failing to disclose its employee’s notes on another researcher’s poster at a scientific conference.

The court also upheld the district court’s jurisdiction over three other patents relating to the chimeric genes, holding that the district court still retained jurisdiction because of Monsanto’s request for attorney fees, despite Bayer’s motion to dismiss the claims on the other patents and subsequent signing of a covenant not to sue Monsanto for infringement of those patents.

Dennis Crouch of Patently-O summarizes the opinion.
Lawrence B. Ebert of IPBiz mentions some interesting aspects of the case’s procedural history.
Stephen Albainy-Jenei of Patent Baristas warns that “note-taking can come back to bite your patent.”

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Second Circuit Holds Copyright Class Action Claims Must Be Based on Registered Copyright

By Andrew Ungberg — Edited by Wen Bu

In Re Literary Works in Electronic Databases Copyright Litigation
Second Circuit, November 29, 2007, No. 05-5943-cv(L)
Slip Opinion

On November 29, the Court of Appeals for the Second Circuit vacated and remanded a decision of the District Court for the Southern District of New York to certify a class of freelance authors and accept a settlement of their copyright infringement claims. The claims arose from unauthorized reproduction of the authors’ works on internet sites and web databases.

The Second Circuit vacated the district court’s ruling on jurisdictional grounds. Citing Section 411(a) of the Copyright Act, which provides that claims will not be instituted until preregistration or registration of the copyright claim has been made, the court held that the district court lacked jurisdiction over the claims raised by the majority of the class members, who had not registered their works. The court held that because § 411(a) requires each class member’s claims to be based on a registered copyright, the district court lacked the authority to both certify the class and accept any settlement.

Richard Pérez-Peña of the New York Times reports on the decision.
Google’s William Patry sharply disagrees with the court’s reading of § 411(a).
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