Federal Circuit holds that Honeywell’s duplication of a previously-invented process does not qualify the company as “another inventor” under 35 U.S.C. § 102(g)(2)
By Abby Lauer – Edited by Janet Freilich

Solvay S.A. v. Honeywell Int’l, Inc., No. 2009-1161 (Fed. Cir. Oct. 13, 2010)
Slip Opinion

The Federal Circuit affirmed-in-part, reversed-in-part, and remanded the U.S. District Court for the District of Delaware, which had invalidated plaintiff Solvay’s patent on a process for making non-ozone-depleting refrigerant gas based on a finding that defendant Honeywell had previously invented the process addressed in five of the patent’s claims. The district court also found that Honeywell had not infringed the patent’s other claims.

In reversing, the Federal Circuit held that Honeywell did not qualify as an “inventor” of the patented process under 35 U.S.C. § 102(g)(2) because the company had merely copied the work of a Russian agency that it had hired to develop the process. The court agreed with Solvay’s argument that Honeywell could not be an “inventor” of the gas manufacturing process because it did not itself invent the subject matter of the process. Writing for the unanimous three-judge panel, Judge Schall emphasized that the originality provision of 35 U.S.C. § 102(f) requires that “the conception of an invention be an original idea of the inventor.” Because Honeywell did not itself conceive of the gas manufacturing process, Honeywell was not a prior inventor of the process and Solvay’s patent on the process is valid.

The Patent Prospector provides an overview of the case with excerpts from the Federal Circuit opinion. PatentlyO describes and analyzes the case. (more…)

By Daniel Doktori

Philadelphia School District Settles Laptop Spying Case

The Philadelphia Inquirer reported on Tuesday that the Lower Merion school district has settled with two students whose school-issued laptops had webcams that were remotely activated by school officials. Plaintiff Blake Robbins’ parents initiated the suit in February after a school administrator confronted Robbins of wrongdoing using photo evidence of his home taken from the computer’s webcam. CNN reports that the school agreed to pay $175,000 to the family of Blake Robbins and $10,000 to student Jalil Hassan, as well as $425,000 in legal fees to attorney Mark Haltzman. The laptop program, begun in 2008, sought to provide each of the district’s 2,300 students with laptops to be used in school and at home. The Lower Merion school district intends to continue the program but will disable the webcam function on issued computers. Following investigations by the FBI over the summer, school officials were cleared of any criminal wrongdoing.

Supreme Court grants Certiorari for Patent Infringement Intent Case

SCOTUS Blog reported on Tuesday that the Supreme Court granted certiorari in the case of Global Tech v. SEB to clarify the legal standard for intentional patent infringement. The court will hear arguments to address whether the legal standard for intent to “actively induce” infringement is “deliberate indifference of a known risk” or “purposeful, culpable expression and conduct.” As Patently-O explains, the Supreme Court seeks to address inconsistent results in the Federal Circuit regarding the proper standard.

France to Discourage Illegal Downloads with Digital Music Subsidies for Youths

On Thursday, Arstechnica reported that the European Union has approved a French Government program to subsidize purchases of digital music for residents aged 12–25. As Reuters reports, the program would issue one 50 Euro (approximately $70) card per year to eligible residents, at a cost of only 25 Euros. The European Commission, indicating that the program does not violate any anti-competition rules, praised France’s two-year, $35 million program for its cultural and legal benefits.

Chippendales’ “Professional and Classy Sexy Fun” Deemed Not Inherently Distinctive.
By Phillip Hill – Edited by Ian C. Wildgoose Brown

In re Chippendales USA, Inc., Serial No. 78/666,598 (Fed. Cir. Oct. 1, 2010)
Opinion

On October 1, the United States Court for the Federal Circuit affirmed the Trademark Trial and Appeal Board, which ruled that Chippendales USA, Inc. could not register its “abbreviated tuxedo” costume, the “Cuffs & Collar,” as an inherently distinctive mark.

The Court held that even though live adult entertainment typically involves “revealing and provocative” costumes, individual costumes can nevertheless be inherently distinctive. The Cuffs & Collar only qualified for acquired distinctiveness, however, because of shared heritage with the Playboy Bunny costume.

Both the Trademark Trial and Appeal Board and the Federal Circuit applied the test articulated in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342 (C.C.P.A. 1977) for determining inherent distinctiveness. In applying the Seabrook test, the court agreed with the U.S. Patent and Trademark Office (“PTO”) that inherent distinctiveness must be measured at the time of registration as opposed to the time of first use. The court reasoned that it would be unfair to allow applicants to delay registration and then “preempt intervening uses that might have relied on the fact that registration . . . had not been sought at an earlier time.”

PatentlyO provides an overview of the case. The TTABlog speculates that Chippendales will petition for certiorari. (more…)

By Emily Hootkins

New Law Improves Access to Technology for Disabled

Bloomberg Businessweek and The Associated Press report that President Obama has signed into a law a bill requiring the telecommunications industry to enhance the accessibility of devices and programming for Americans with vision and hearing loss.  The bill could improve the quality of life for an estimated 61 million disabled people.  Among other requirements, the law sets new federal guidelines regarding accessible user interfaces on smart phones, telephone compatibility with hearing aids, and captions and audible descriptions for TV programming.

UAE’s Threatened Ban on Blackberries Averted

The United Arab Emirates has backed off from its threat to cut certain BlackBerry messaging and Internet services, reports The Washington Post.  The planned ban was cancelled just days before it was to take effect. According to The Associated Press, the ban would have affected half a million users.  The proposed ban threatened to harm the economy and reputation of this typically business-friendly country.

Apply May be Liable for $625.5 Million Patent Infringement Award

PC Magazine reports that a Texas district court has found Apple liable for both accidental and willful infringement on three patents owned by Mirror Worlds.  A jury awarded Mirror Worlds $625.5 million in damages for the infringement.  Computer World reports that Judge Davis postponed his final ruling in this case to allow post-trial motions disputing the $625.5 million award.  If the verdict is upheld, it will be one of the largest awards in patent lawsuit history.

U.S. appeals court affirms district court decision that a download is not a performance under the Copyright Act
By Greg Tang – Edited by Ian C. Wildgoose Brown

United States v. Am. Soc’y of Composers, Authors & Publishers, No. 09-0539 (2d Cir. September 28, 2010)
Opinion

On September 28, the United States Court of Appeals for the Second Circuit affirmed the ruling of the Southern District of New York that a digital download of a song does not constitute a public performance under section 106(4) of the Copyright Act. The court also vacated the district court’s assessment of fees for the blanket licenses that Yahoo! Inc. and RealNetworks Inc. sought from The American Society of Composers, Authors and Publishers (“ASCAP”), and remanded for further proceedings.

The holding in this case prevents ASCAP from “double-dipping” by receiving compensation for both copies and performances of its members’ musical works. It also provides much needed clarification on how license fees should be calculated for music streamed over the Internet.

JOLT Digest previously reported on the district court’s ruling that cell phone ringtones do not constitute public performances. BroadbandBreakfast.com and Bloomberg Businessweek each provide an overview of the case. The 1709 Blog and Internet Cases examine the court’s reasoning in detail. (more…)