The Northern District of Illinois Denies Motion to Compel for Subpoenas Seeking Non-Party IP Address Information
By Dorothy Du – Edited by Julie Dorais

Pacific Century International, Ltd. v. John Does 1-37, No. 12 C 1057 (N.D. Ill. March 30, 2012)
Slip opinion

The U.S. District Court for the Northern District of Illinois granted in part and denied in part plaintiffs’ motion to compel ISPs’ compliance with subpoenas for identifying information associated with IP addresses in a copyright infringement action against BitTorrent users.

In an opinion by Chief Judge Holderman, the court granted plaintiffs’ motion to compel ISPs to comply with subpoenas for information about Doe defendants’ IP addresses, but denied the motion in cases in which the information sought related to non-party IP addresses. The court held that subpoenas for information pertaining to non-party IP addresses are not “reasonably calculated to lead to the discovery of admissible evidence” as required by Fed. R. Civ. P. 26(b)(1), and that as such, the subpoenas would impose an “undue burden” on ISPs under Fed. R. Civ. P. 45(c)(3)(A)(iv). Pacific Century International, Ltd. v. John Does 1-37, No. 12 C 1057, slip op. at 5, 8, 9 (N.D. Ill. March 30, 2012). Moreover, the court rejected plaintiffs’ attempt to justify the subpoenas on claims of conspiracy among the Doe defendants because the plaintiffs failed to plead the existence of an agreement among the defendants. According to the court, plaintiff copyright owners were not seeking information for the purpose of litigating the copyright action at hand but rather were attempting to use discovery improperly in order to identify BitTorrent users for future copyright infringement suits or threats of suits.

Techeye praises the decision for setting back copyright trolling campaigns by Big Content. ArsTechnica explains that the decision signals judicial resistance to copyright holders’ use of conspiracy theory to gather information about ISP subscribers in order to “extort settlements.” Last week, ArsTechnica reported on two other rulings in similar cases in Florida that suggest that plaintiffs in copyright actions are likely to lose whenever ISPs raise objections to subpoenas that are “fishing expeditions” against their customers. (more…)

Supreme Court Rejects Diagnostic Process Claims as Unpatentable Laws of Nature
By Charlie Stiernberg – Edited by Dorothy Du

Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 10-1150 (U.S. Mar. 20, 2012)
Slip Opinion

In a unanimous opinion, the Supreme Court reversed a ruling by the Court of Appeals for the Federal Circuit that had held Prometheus’ claimed invention, a process that helps doctors determine whether a given dosage of thiopurine drugs is too high or low, was patentable subject matter under the “machine or transformation test.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 10-1150, slip op. at 4, 7 (U.S. Mar. 20, 2012) (citing Prometheus Labs., Inc. v. Mayo Collaborative Servs., 581 F.3d 1336, 1345–47 (Fed. Cir. 2009)).

In an opinion by Justice Breyer, the Court held Prometheus’ claimed invention was unpatentable under 35 U.S.C. § 101, because it was fundamentally a law of nature. Id. at 24. In so holding, the court reasoned “the steps in the claimed processes (aside from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field.” Id. at 4. The Court emphasized that just as a law of nature has long been held unpatentable, so too “is a process reciting a law of nature, unless that process has additional features that provide practical assurance that the process is more than a drafting effort designed to monopolize the law of nature itself.” Id. at 8–9.

SCOTUSblog provides a history of the case, briefs, and other relevant court documents. Patently-O breaks down the opinion in a section-by-section analysis. IPWatchdog criticizes the decision, admonishing that it will kill the medical diagnostics industry. The AMA praises the decision for invalidating patents that inhibit medical treatments. PharmExecBlog argues the decision may be a “harbinger” for the Myriad case now pending before the Court. (more…)

Federal Circuit invites en banc review of broadening reissue jurisprudence
By Jeffery Habenicht – Edited by Charlie Stiernberg

In re Staats, No. 2010-1443 (Fed. Cir. Mar. 5, 2012)
Slip opinion

The Federal Circuit reversed the Board of Patent Appeals and Interferences’ (“Board”) decision to reject Staats’s reissue application and remanded for further proceedings. The Board had rejected Staats’s continuing reissue application because it was filed outside of the two-year time limit imposed by 35 U.S.C. § 251 and was not sufficiently related to a previous broadening reissue application filed within the two-year limit. In re Staats, No. 2010-1443, slip op. at 5–6 (Fed. Cir. Mar. 5, 2012).

The Federal Circuit held that the Board’s decision was inconsistent with its predecessor court’s decision in In re Doll, which concluded the two-year time limit in § 251 only applied to the initial broadening reissue application — not to properly filed continuation applications. Id. at 9 (citing In re Doll, 419 F.2d 925 (C.C.P.A 1970)). The court rejected the PTO’s argument that Doll only applied if the continuation application was “related” to a reissue application filed within the two-year window. Id. The court stated that this type of test would be “unmanageable,” because, by definition, every claim must be different in scope than the other claims. Id. at 10. In so holding, the court relied almost exclusively on Doll. The court concluded that if the PTO wanted to overrule Doll it would have to petition for a rehearing en banc. Id. at 11.

IPBIZ summarizes the case. Patently-O provides an overview and analysis. PharmaPatents criticizes the court’s broad interpretation of § 251, arguing that it will result in “twenty years of uncertainty” and a resurgence of post-grant strategic maneuvering. Patents Post-Grant, however, argues that Staats will have little effect because relying on broadening reissue applications as a matter of course has its own inherent drawbacks. (more…)

California Considers Regulation of Autonomous Vehicles

By Yana Welinder – Edited by Albert Wang

California S.B. 1298 – Autonomous Vehicles
Bill
Leginfo.ca.gov summary

On February 23, California Sen. Alex Padilla (D-Pacoima) introduced S.B. 1298. This bill would direct the Department of the California Highway Patrol to adopt “safety standards and performance requirements” with respect to autonomous vehicles that use “computers, sensors, and other technology and devices that enable [them] to safely operate without the active control and continuous monitoring of a human operator.” The bill would further expressly permit the operation of such a vehicle on California roads if its manufacturer shows that the vehicle meets all the adopted requirements and standards. According to Sen. Padilla’s news release, this bill seeks to provide for safe use of vehicles that “have the potential to significantly reduce traffic fatalities and improve safety on [California] roads.”  Similar legislation was introduced in Nevada last year and is currently being considered in Florida, Hawaii, and Oklahoma.

Wired provides an initial overview of the bill. Stanford CIS further compares the bill to legislative developments in other states.
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State Appeals Court Rules for Online Ticketing Site Under Federal Communications Law
By Geng Chen – Edited by Lauren Henry

Hill v. StubHub, Inc., NO. COA11-685, 2012 WL 696223 (N.C. App. Ct. March 6, 2012)
Slip Opinion

The Court of Appeals of North Carolina reversed the Guilford County Superior Court’s grant of summary judgment for the plaintiffs in an unfair and deceptive trade practices case arising out of the 2007 “Miley Cyrus as Hannah Montana” concert tour. The trial court found StubHub in violation of N.C. Gen.Stat. § 14–344, which prohibits a seller from reselling tickets for more than $3 over their “face value.” It also rejected StubHub’s argument that it was immune from liability under 47 U.S.C. § 230, which provides immunity to liability to providers or users of interactive computer services, who act as publishers or speakers of information provided by another information content provider.

The Court of Appeals conducted a de novo review of the trial court’s summary judgment decision on the issue of the scope of 47 U.S.C. § 230 immunity, an issue of first impression in North Carolina. The court held that StubHub acted not as a seller but as a broker, making § 230 immunity applicable. The court also held that StubHub was not liable under North Carolina law for the fees it charged the ticket-seller for use of the site because it was not the seller or the seller’s agent in the transaction.

Eric Goldman provides an overview of the case and discusses the holding in light of other §230 cases. (more…)