A student-run resource for reliable reports on the latest law and technology news

Federal Circuit Court Provides Clarity on Patent Preemption Post-Alice

By Seán Finan – Edited by Grace Truong

The decision of the Federal Circuit Court clarified the SS101 exceptions to patentability relating to preemption and abstract ideas. The decision has important implications for the application of the Alice test and for software patents.



By Alex Noonan – Edited by Filippo Raso

California Supreme Court to Determine if Courts Can Require Non-Party Content Hosts to Remove Defamatory Reviews


Half of American Adults are in Law Enforcement Facial Recognition Databases


Californian Residents Whose Data Were Exposed in Yahoo Data Breach to Bring Class Action Suit in California State Court




By June Nam – Edited by Ding Ding

The heirs of William Abbott and Lou Costello filed suit against the creators of a Broadway play, Hand to God for using—verbatim—a portion of the iconic comedy routine, Who’s on First?. The Second Circuit affirmed the judgment but rejected the reasoning of the district court, which dismissed allegations of copyright infringement. The Circuit Judge, Reena Raggi, held that the use of the routine in the play was not a fair use under the Copyright Act of 1976. However, the heirs did not have a valid copyright to allege any copyright infringement.



Flash Digest: News in Brief

By Wendy Chu – Edited by Kayla Haran

Delaware Supreme Court Dismisses a Case For Lack of Online Personal Jurisdiction

California District Court Dismisses Trademark Dilution Claim Because of Limited Recognition

eLaw Launches an On-Demand Lawyer Service for Court Appearances




Federal Circuit Flash Digest

By Haydn Forrest – Edited by Henry Thomas

Affinity Labs of Texas, LLC, v. Amazon.com, Inc. (Fed. Cir. Sep. 23, 2016)

Affinity Labs of Texas, LLC, v. DirecTV, LLC (Fed. Cir. Sep. 23, 2016)

Intellectual Ventures v. Symantec Corp. (Fed. Cir. Sep. 30, 2016)

Apple v. Samsung (Fed. Cir. Oct. 7, 2016)



smartphone-fingerprintBy Nehaa Chaudhari – Edited by Ellora Israni

Commonwealth v. Onyx White SJC-11917 (Massachusetts Supreme Judicial Court September 28, 2016)

The Massachusetts Supreme Judicial Court (SJC) affirmed last month a lower court’s decision to suppress information found on a cell phone seized without warrant or probable cause. (more…)

Posted On Oct - 17 - 2016 Add Comments READ FULL POST

UnknownBy Daniel Etcovitch – Edited by Emily Chan

Florida Judge Rules Bitcoin Is Not Equivalent to Money

In Florida’s first money-laundering case to involve Bitcoin, Miami-Dade Circuit Judge Teresa Mary Pooler declared that Bitcoin do not qualify as a “monetary instrument” and that their transfer is not a “financial transaction” under state criminal law. While this precedent is only binding in Florida, the analysis may be a signal to federal regulators who have yet to take a definitive stance on this issue, catalyzing them to take some action. It is certainly an important consideration for tech industry players with an interest in Bitcoin. The judge decided bitcoins are not equivalent to money because they “are not a commonly used means of exchange,”  “does not have a central authority” managing them in the way a currency would, and they are not “tangible wealth.”

Illinois Governor Signs Bill Restricting Use of Stingrays

With a new law that will take effect on January 1, 2017, Illinois joins the growing group of states that are limiting law enforcement use of cell-site simulators (also called Stingrays). These devices emulate cell towers and collect data from unsuspecting phone users in the area. Under the new law, entitled the “Citizen Privacy Protection Act,” in order to use a Stingray, law enforcement not only must submit to the court an application that describes the device and its intended use, such as “whether it will obtain data from non-target communications devices,” but also must immediately delete any data that is obtained using the Stingray from non-target communications devices.

DMCA DRM Circumvention Provision’s Constitutionality Being Challenged

The Electronic Frontier Foundation (EFF) is suing the federal government, challenging the constitutionality of the portion of the Digital Millennium Copyright Act (DMCA) that prohibits circumventing digital locks on content (often called DRM). Their case centers around the fact that the only way to get an exception to the DRM ban is to apply to the Librarian of Congress, a process that takes place only once every three years and sometimes leads to inconsistent results. According to EFF, the current law does sufficiently allow content to be used in ways that would qualify for the fair use exception, including for political commentary or creation of educational content, conflicting with freedom of speech under the First Amendment. EFF also challenges the anti-trafficking provision of the DMCA, which bans distribution of tools that would help circumvent DRM, on the basis that there is absolutely no way to get an exception. Under that provision, even if the Librarian of Congress gave an exception allowing the petitioner to legally circumvent DRM, nobody is allowed to distribute the technology by which to do so. JOLT Digest provides more in-depth coverage.


Posted On Aug - 4 - 2016 Add Comments READ FULL POST

hammerBy Yuan Cao – Edited by Frederick Ding

Mere Commercial Benefit Not Enough to Trigger The On-Sale Bar

In The Medicines Company v. Hospira, Inc., Nos. 2014-1469, 2014-1504 (Fed. Cir. July 11, 2016) (en banc), the Federal Circuit held that a contract manufacturer’s sale to the inventor of manufacturing services where neither title to the embodiments nor the right to market the same passes to the supplier does not constitute an invalidating sale under 35 U.S.C. § 102(b) (2010) (pre–America Invents Act). § 102(b) set a statutory bar: it provided that an invention that was “in public use or on sale in this country, more than one year prior to the date of the application for patent” would be ineligible for patent protection. In Pfaff v. Wells Electronics, Inc., 525 U.S. 55 (1998), the Supreme Court had clarified that the on-sale bar under § 102(b) applies when, before the critical date, the claimed invention was (1) the subject of a commercial offer for sale, and (2) ready for patenting.

MedCo is a specialty pharmaceutical company that contracted with Ben Venue Laboratories in late 2006 to manufacture commercial quantities of Angiomax under a new process. The manufacturing protocol governing the produced batches stated that “the solution will be filled for commercial use.” In August 2007, MedCo released the batches for sale. On July 27, 2008, MedCo filed applications for two patents claiming the producing process. In August 2010, MedCo sued Hospira, alleging that the latter’s two ANDA filings infringed the said two patents. Hospira contended in response that MedCo’s patents were invalid because the on-sale bar had been triggered when MedCo paid Ben Venue to manufacture the medicine before the critical date.

Because the district court found the invention was “ready for patenting”, satisfying the second prong of Pfaff, the dispute thus focused on whether there was a sale under the first prong. Hospira argued that MedCo’s transactions with Ben Venue constituted a commercial sale because “this arrangement constituted commercial exploitation.” MedCo asked the Federal Circuit to hold en banc “that the on sale bar is not triggered by a inventor’s retention of a third party to develop or manufacture the claimed invention confidentially and under the inventor’s direction and control.” A merits panel of the Circuit Court found that the on-sale bar applies where the evidence clearly demonstrated that the inventor commercially exploited the invention before the critical date. In reaching this conclusion, the panel found no distinction between the offer to sell products prepared by a patented method and the commercial sale of services that result in a patented product-by-process. MedCo petitioned for rehearing en banc.

The court, sitting en banc, clarified that mere commercial benefit is not enough to trigger the on-sale bar under § 102(b). Instead, when assessing the first prong of Pfaff, the court must focus on those activities that would be understood to be commercial sales and offers for sale “in the commercial community.” Specifically, the court held that the on-sale bar will not be triggered if 1) only manufacturing service but not the invention was sold to the inventor; 2) the inventor maintained control of the invention; or 3) the purpose of the transaction is “stockpiling.”

By providing a clear guidance in interpreting the implication of the on-sale bar under the two-step Pfaff test, MedCo will likely assure patent holders that they can continue their partnership with other contract manufacturing organizations. Commenters also noted that MedCo may be another example of how the Federal Circuit may be making an attempt to reassert its earlier patent law preeminence and provide the benefit its expertise in this area to the patent community, and even the Supreme Court.

Technology-Based Software Solution Can Be Patentable

In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, No. 2015-1763 (Fed. Cir. June 27, 2016), the Circuit Court held that information filtering system that overcomes certain shortcomings in previous filtering systems should be a patentable subject matter under 35 U.S.C. § 101. In Mayo Collaborative Servs. v. Prometheus Labs., Inc., the Supreme Court set forth a two-step analytical framework for such an inquiry. 132 S. Ct. 1289, 1293 (2012). First, the court must “determine whether the claims at issue are directed to a patent-ineligible concept.” If so, the court must then “consider the elements of each claim both individually and “as an ordered combination to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. at 1298, 1297.

The patent-in-suit involves filter for Internet traffic. Previous filters were either susceptible to hacking and dependent on local hardware and software, or confined to an inflexible one-size-fits-all scheme. By comparison, BASCOM had developed a filtering system, for which it obtained U.S. Patent 5,987,606, that allows individual network accounts to customize the filtering of Internet traffic associated with the account. BASCOM sued AT&T Mobility LLC for patent infringement. AT&T moved to dismiss the complaint on the basis that BASCOM’s patent was invalid as a matter of law under 35 U.S.C. § 101 because it claimed unpatentable subject matter. AT&T argued that the claims were directed to the abstract idea of “filtering content,” which is a well-known “method of organizing human activity.”. Furthermore, AT&T argued that none of the limitations transforms the abstract idea of filtering content into patent-eligible subject matter because the claim limitations merely recite routine and conventional activities performed by generic computer components. BASCOM responded that the claims of the patent addressed a problem arising in the realm of computer networks, and the invention provides a solution entirely rooted in computer technology.

After concluding that information filtering is an abstract idea, the district court looked at each limitation individually and noted that all elements were “well known generic computer components.” The district court thus concluded that the claims did not adequately disclose an inventive concept because the limitations “considered individually, or as an ordered combination, are no more than routine additional steps involving generic computer components and the Internet, which interact in well-known ways to accomplish the abstract idea of filtering Internet content.” BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 107 F. Supp. 3d 639, 655 (N.D. Tex. 2015)

In vacating the district court’s order dismissing BASCOM’s complaint, the Federal Circuit noted that the district court’s analysis ignored the distinction between the inventive concept inquiry under  § 101 and the obviousness analysis under § 103. Specifically, the court held that “the inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” While the panel agreed that filtering content is an abstract idea because it is a long-standing, well-known method of organizing human behavior, it found that the patent-in-suit recites a “specific, discrete implementation of the abstract idea of filtering content” and constitutes an improvement to an existing technological process because “BASCOM asserts that there could be a filter implementation versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location”. Thus, the court held that the information filter mechanism should be patentable.

By holding that “an inventive concept can be found in the non-conventional and on-generic arrangement of known, conventional pieces,” BASCOM will likely provide some good news to patent applicants. On the other hand, commenters also opined that BASCOM rightly emphasized on the civil procedure aspects of a 12(b)(6) motion in a patent-infringement case, which was in contrast with previous cases that had been dismissed all too easily in district courts despite the rule that claims should be construed in favor of the nonmovant – usually patent holders faced with infringement in these cases.

Patent Disputes about Siri, iTunes, Notification Push, and Location

In Unwired Planet, LLC v. Apple Inc., No. 2015-1725 (Fed. Cir. July 22, 2016), the Federal Circuit resolved four claim construction issues in a dispute between Unwired Planet and Apple.

First, Unwired alleged that Apple’s Siri service infringed Unwired’s patent for extending speech recognition capabilities to mobile devices with limited resources by first allowing the mobile device to send a user’s voice input to a remote speech recognition server and then having the server translated the received voice input into a data file that can be processed by the mobile device. The parties disputed the construction of the claim term “voice input.” Unwired argued that the plain and ordinary meaning should be given to the term. Apple argued that the term should be construed to mean “speech provided over a voice channel,” and that because Siri sends a user’s speech over TCP/IP, the signal is not conveyed over a voice channel and does not infringe the disputed patent. Claim terms are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art with only two exceptions: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a term either in the specification or during prosecution. Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, the court concluded that the term “voice input” should be construed in accordance with its ordinary meaning on two grounds. First, the term “voice input”, by its plain language, does not dictate the manner in which voice is to be transmitted from a mobile device to a server. Second, there is no clear and unmistakable disclaimer of claim scope that supports the narrower construction that Apple proposed.

Second, Unwired alleged that Apple’s App Store and iTunes Store infringed its patent for provisioning a two-way mobile communications which receives user information required to establish a user account and generates a provisioning request comprising the user information and the user’s selection. When an iOS device user with an iTunes account first enters his Apple ID and password to the iOS device when she wishes to make a purchase, Apple’s servers will respond with an “X-token” which contains a hashed version of the user’s password and a timestamp generated by the servers. The X-token will stay valid for 15 minutes, and if the user wants to make another purchase within this time period, the iOS device will simply send a purchase request based on the previously entered user information. Unwired argued that the hashed version of the user’s password contained in the X-token corresponds to the claimed “user information.”  The district court entered summary judgment for Apple on the ground that the hashed password could not be “the user information.” Unwired appealed and argued that a hashed password is merely a mathematical function applied to the user’s password. The Federal Circuit disagreed and opined that the plain meaning of the term “user information” does not require such information to be in a particular format.

Third, Unwired alleged that Apple’s Push Notification Service infringed its patent for securely transferring data, which requires a wideband channel to first exchange security information and a narrowband channel to then transmit encrypted data. The iOS device only needs to connect to APNS servers rather than connecting with multiple app provider servers because the multiple app providers all send messages to APNS servers which then relays the messages to the iOS devices. Unwired argued that the channel that carries communications between an app provider server and an iOS device is a narrowband channel because it is at a meaningfully lower data transfer rate. The district court entered summary judgment for Apple and Unwired appealed. The Federal Circuit affirmed the decision as to this term, on the ground that while the stipulated construction of the narrowband channel requires “a meaningfully lower data transfer rate or bandwidth than the wideband channel,” the characteristics of the data being transmitted by APNS cannot transform the wideband channel based on TCP/IP into a narrowband channel.

Fourth, Unwired alleged that Apple’s location-finding technology infringed its patent for identifying the location of a wireless station by receiving a plurality of device dependent location inputs provided by said location finding equipment. Apple argued that its iOS devices only use a single “location input.” The district court granted Apples motion for summary judgment of no induced or contributory infringement because it concluded that Apple’s non-infringement argument is strong enough that no reasonable juror could conclude that Apple acted with actual knowledge that it was inducing or contributing to infringement. The Federal Circuit held that the proper focus of indirect infringement analysis should be on the subjective knowledge of the accused infringer, not the district court’s own estimation of the objective strength of Apple’s defense. The order of summary judgment as to indirect infringement was vacated.

The Circuit Court’s decision revived the disputes between Unwired and Apple which have been brought to court in 2012. Moreover, as some commenters have pointed out, the Unwired decision provided important insights in considering mens rea in patent infringement cases, since it pointed out that “a noninfringement position that is objectively unreasonable cannot foreclose a finding of fault regardless of whether that unreasonable position was developed before infringement began or later on during litigation.”


Posted On Aug - 4 - 2016 Add Comments READ FULL POST

3293465641_b6c5081e87_qBy Filippo Raso – Edited by Ariane Moss

Detroit Free Press, Inc. v. U.S. Dep’t of Justice, — F.3d — (6th Cir. 2016).

In a 9-7 en banc decision, the U.S. Court of Appeals for the Sixth Circuit reversed the lower courts’ ruling, holding individuals have a privacy interest in their booking photos for the purposes of Exemption 7(C) of the Freedom of Information Act (“FOIA”), 5 U.S.C. § 552. In so doing, the Court overruled Circuit precedent established two decades ago in Detroit Free Press, Inc. v. Dep’t of Justice, 73 F.3d 93 (6th Cir. 1996) (“Free Press I”).

The FOIA requires federal agencies to make their records available to any requester unless the documents fall within the statutory exemptions. Exemption 7(C) allows agencies to refuse requests for “records or information compiled for law enforcement purposes” if public release “could reasonably be expected to constitute an unwarranted invasion of personal privacy.” The burden rests on the agency. Free Press I held there is no privacy interest in booking photos in ongoing criminal proceedings. Following Free Press I, the United States Marshals Service (“USMS”) allowed booking photos to be released by requesters under the Sixth Circuit jurisdiction. Following opinions by the Tenth and Eleventh Circuits disagreeing with Free Press I, the USMS refused booking photos nationwide. This suit followed. Both the District Court and a Panel of the Sixth Circuit, bound by Free Press I, ordered the USMS to disclose the photos. The Sixth Circuit granted rehearing en banc.

Writing for the Court, Circuit Judge Deborah Cook relied heavily on U.S. Dep’t of Justice v. Reporters Comm. for Freedom of the Press, 489 U.S. 749 (1989). Reporters involved a request for a defendant’s rap sheet. In finding there is a privacy interest in rap sheets, the Supreme Court in Reporters required “balance[ing] the public interest in disclosure against the interest Congress intended the Exemption to protect.” Following the Supreme Court’s reasoning in Reporters, Judge Cook found that Exemption 7(C) protects citizens’ interest in avoiding disclosure of “[e]barassing and humiliating facts—particularly those connecting an individual to criminality.” Booking photos “fit squarely within this realm.”

To justify overruling a twenty-year precedent, Judge Cook explained the impacts booking photos have and new realities from modern technology. For example, Judge Cook highlighted that booking photos “convey guilt to the viewer.” This is why the Sixth Circuit disfavors showing juries booking photos in criminal trials. Booking photos also persist longer than before—“an idle internet search reveals the same booking photo that once would have required a trip to the local library’s microfiche collection.” Finally, Judge Cook cited the “online-reputation-management industry,” specifically websites that aggregate booking photos and remove them for a fee, as demonstrating a privacy interest.

The Sixth Circuit endorsed the “case-by-case” balancing requested by USMS. Because the FOIA is meant to provide understanding of the operations or activities of government, it may be inappropriate to disclose a private citizen’s information that reveals little or nothing about the agency’s conduct. The Sixth Circuit leaves open two methods to receive booking photos through the FOIA. First, where the public interest outweighs the individual privacy interest. Second, where the defendant waives her privacy interest in the booking photo.

Chief Judge Cole joined in full with the Court, but wrote a concurrence to emphasize two points. First, Exemption 7(C) “plainly extends to a private individual’s desire to avoid disclosure of personal details that may be humiliating, embarrassing, or painful.” Second, that the Court’s opinion does not foreclose a requester making a “meaningful showing of the significant public interest.” Instead, the opinion merely provides a “workable formula” for lower courts to balance the interest.

Circuit Judge Boggs dissented, joined by Circuit Judges Batchelder, Moore, Clay, Griffin, Stranch, and Donald. Judge Boggs argued that the Supreme Court looked to history, common law, and both state and federal practice to determine whether Congress intended to protect that privacy interest. Since the “rogue’s galleries” of early police forces, dangers people would have their likeness on public display—even if cleared of wrongdoing. Courts routinely rejected privacy interests in booking photos, even after the creation of an invasion of privacy tort. “[O]nce indicted, individuals become figures of public interest. Publishing their photographs is thus not an invasion of privacy.” The majority of state laws permit disclosure and the former federal practice was disclosure. Judge Boggs concluded that upon indictment and appearance in open court, there is no cognizable privacy interest in the booking photo. Even if, according to Judge Boggs, there was a privacy interest, the public has a strong interest in knowing whom the government is prosecuting.

Josh Gerstein of Politico provides a summary of the case. Noah Feldman in Bloomberg argues that democracy demands government actions be open to scrutiny, even at the cost of permanent embarrassment. Feldman recognizes the baggage a booking photo can have on someone, but insists that the photos are central to informing the public an arrest was made. Additionally, the USMS can still voluntarily disclose the booking photo—the ruling only limited “what the government must disclose.”

The ruling has been extensively covered, including reports by ABA Journal, LawNewz, and Reuters.

Filippo Raso is a rising 2L at Harvard Law School and a summer clerk at the Electronic Privacy Information Center (EPIC).


Posted On Aug - 4 - 2016 Add Comments READ FULL POST

free-speechBy Priyanka Nawathe – Edited by Kayla Haran

17 U.S.C § 1201 – The Anti-Circumvention Provision

Electronic Frontier Foundation Complaint

In 1998, Congress enacted 17 U.S.C § 1201, better known as the anti-circumvention provision. This legislation prohibits bypassing technological measures that control access to a work and includes a process to create exceptions to this general rule. On October 28, 2015, the Library of Congress denied a motion to create an exception for “speech using clips of motion pictures, for the shifting of lawfully-acquired media to different formats and devices, and for certain forms of security research.” On July 21, 2016, the Electronic Frontier Foundation (EFF) sued the government on behalf of researchers and persons affected by this denial claiming the legislation is unconstitutional. The EFF seeks an injunction enjoining the Department of Justice from enforcing this legislation.

A summary of the history surrounding EFF’s lawsuit is available here. Online commentary is generally in support of this lawsuit, calling the anti-circumvention provision “broken” and “one of the worst US copyright rules.”

The EFF claims that the anti-circumvention provision is unconstitutional because it violates the First Amendment. This provision, primarily designed to “fight music and movie piracy” is written so broadly that it restricts access to lawfully purchased copyright material, prohibits fair use of accessed materials, and even hinders people’s ability to speak about copyrighted materials. This law can make it a crime to “tinker” or repair your own devices, remix a video, and conduct independent security research to reveal security flaws, fueling the EFF’s argument that this legislation is creating a chilling effect and is preventing the right to freedom of expression.

Although there is a process to create exceptions to the anti-circumvention provision, the EFF complaint states that this process is unhelpful and “is itself an unconstitutional speech-licensing regime.” The process for creating an exception is long, complex, and impermanent. Only once every three years may members of the public approach the Copyright Office to create an exception. The Copyright Office then forwards the recommend exceptions to the Librarian of Congress who then makes an ultimate decision based on certain factors included in the legislation. However, the EFF claims that the “rulemaking defendants” have imposed several additional onerous requirements, including requiring evidence that “people are already engaging in circumvention,” and that “there is no viable alternative means of engaging in that use.” On top of that, the exceptions expire within three years requiring members of the public to go through this onerous process repeatedly. The exemptions that are granted, according to the Verge, are oddly limited and specific, for example allowing phones to be jailbroken but not tablets. The EFF finds this process to be “arbitrary, capricious, and contrary to law.”

In this lawsuit, the EFF is representing three clients that have been negatively impacted by this legislation and the Librarian of Congress’s refusal to create certain exceptions. The first client is Mathew Green, an Assistant Professor and Johns Hopkins University. According to the EFF and Ars Technica, his research is focused on investigating security and encryption devices but he has avoided certain research that would help increase our understanding of how secure our systems are for fear of litigation. The second client is Andrew Huang, an electrical engineer, hacker, and the owner of Alphamax, LLC, an audiovisual media company. Alphamax creates devices for editing television, opening up a world of new types of non-infringing speech. However, in order to do this, the “lock” on HDMI signals has be circumvented which he cannot do for fear of being sued. The final client is Alphamax itself.

It is hard to counter EFF’s arguments. 17 U.S.C § 1201(c)(1) states that this legislation will not affect defenses to copyright infringement, including fair use, but that is not much help when certain courts hold this provision to apply even when the circumvention has no relation to copyright infringement. As Kerry Sheehan, Policy Fellow at Public Knowledge, stated “This suit highlights the fundamental failures by the Copyright Office in the DMCA exemption process.” There definitely seem to be some problems with this out of date law, and it will be interesting to see what happens moving forward.

Priyanka Nawathe is a 2L at Harvard Law School.


Posted On Aug - 4 - 2016 Add Comments READ FULL POST
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