By Davis Doherty

Freedom of Speech Prevails in UK Thanks to Twitter

On October 12, the UK-based newspaper The Guardian reported it was unable to report on a question asked of a minister during Parliamentary proceedings due to “legal obstacles, which cannot be identified.” Political bloggers and tweeters quickly responded, reporting the question was related to the oil-trading company Trafigura, which is under investigation for allegedly dumping toxic waste in the Ivory Coast. Within hours, Trafigura rose to the top of the Twitter “trending topics.” The resulting publicity led the company to relax the terms of its court-ordered gag rule. On October 13, the Guardian reported the details of Trafigura’s “super-injunction,” a gag order so broad that it prevented the newspaper from revealing the injunction’s existence.

Copyright Treaty a Secret, Unless You’ve Got Connections

The next round of negotiations for the multinational Anti-Counterfeiting Trade Agreement (“ACTA”) is scheduled to run November 4 through November 6 in Korea, but the United States Trade Representative is being coy about its contents. Wired reports that although the language of the treaty is classified, forty-two individuals from the private sector are allowed access to its contents under a nondisclosure agreement. Their names, including both industry and public interest organization representatives, were revealed after Knowledge Ecology International requested the information under the Freedom of Information Act.

Winner of Patent Suit Against Microsoft Sues Internet Giants

Eolas, an internet technology company that won a patent-infringement suit against Microsoft in 2003, is now taking action against the rest of the high-tech world. Ars Technica and CNET reported on October 6 that Eolas, which holds two patents related to web browser plug-in technology, is suing twenty-three other companies for infringement in the U.S. District Court for the Eastern District of Texas. After withstanding Microsoft’s legal challenges to its patent in the 2003 case, Eolas is looking to repeat its success against the likes of Apple, Amazon, Google, Yahoo, and YouTube. However, a Supreme Court decision in the upcoming case Bilski v. Doll may reduce Eolas’ chances at court if software patents are weakened.

Back to Drawing Board for Pa. State Legislature in Protecting Trademark Holders
By Brittany Blueitt – Edited by Stephanie Weiner

Commonwealth of Pennsylvania v. Omar, No. J-162A-B-2008 (Pa. Oct. 5, 2009)
Majority Opinion (Baer, J.)
Concurring Opinion (Castille, J.)
Dissenting Opinion (Eakin, J.)
Dissenting Opinion (Greenspan, J.)

On October 5, the Supreme Court of Pennsylvania affirmed two consolidated Centre County Court of Common Pleas decisions dismissing criminal trademark counterfeiting charges on the ground that Pennsylvania’s Trademark Counterfeiting Statute, 18 Pa. Cons. Stat. § 4119, is unconstitutionally vague and overbroad.  The court held that the statute is unconstitutional because it criminalizes a substantial amount of speech protected by the First Amendment of the United States Constitution.  Commonwealth v. Omar, No. J-162A-B-2008, slip op. at 10 (Pa. Oct. 5, 2009).

IP Spotlight provides an overview of the case. CNBC features an extended analysis of the decision.  The Madisonian declares the decision overly formalistic. (more…)

Court Rules That Software License Transfers Ownership
By Kate Wevers – Edited by Anthony Kammer

Vernor v. Autodesk, Inc., No. C07-1189RAJ (W.D. Wash., Sept. 30, 2009)
Opinion

On September 30, the United States District Court for the Western District of Washington granted, in part, Vernor’s motion for summary judgment against Autodesk.After Autodesk became aware of Vernor’s attempts to sell copies of its copyrighted software, AutoCAD, on eBay, it invoked the takedown provisions of the Digital Millennium Copyright Act, causing Vernor to be barred from selling anything on eBay for a month. Vernor sued, seeking, among other remedies, declaratory judgment that these sales were not in violation of copyright. In granting summary judgment for Vernor, the Court held that a customer who had acquired AutoCAD packages pursuant to Autodesk’s software license agreement (“License”) became an owner of the physical copies of the software with the right to resell the AutoCAD packages under the first sale doctrine (17 USC § 109(a)).

The Court also accepted that the owner was protected from claims of contributory copyright infringement by 17 USC § 117. The Court had previously considered very similar issues in the context of Autodesk’s earlier motion to dismiss. See Vernor v. Autodesk, Inc., 555 F. Supp. 2d 1164 (W.D. Wash. 2008)).

A selection of briefs and relevant court documents are available here. The Technology & Marketing Law Blog provides a useful overview and analysis of the case. The outcome was heralded as pro-consumer by the Electronic Frontier Foundation, but Blog Nauseum suggests that the decision is not much of a win for consumers. (more…)

Stanford University Patent Infringement Case Is Dismissed and University Learns Lesson in Drafting Assignment Agreements
By Adrienne Baker – Edited by Anthony Kammer

Bd. of Trs. v. Roche Molecular Sys., Inc., 2008-1509, -1510 (CAFC Sept. 30, 2009) Opinion

On September 30, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed in part, vacated in part, and remanded with instructions the District Court for the Northern District of California decision. The lower court’s decision held several Stanford University patents invalid for obviousness, dismissed Roche’s counterclaim for judgment on ownership, and declined to consider Roche’s affirmative defense based on ownership.  The CAFC vacated the lower court’s decision that Stanford’s patents were invalid and ruled that the University did not have standing to sue, because of contract language indicating that the patent rights belong to an outside corporation. Additionally, the CAFC affirmed the lower court’s decision that Roche’s counterclaim for judgment on ownership was barred due to a four-year statute of limitations.  However, unlike the lower court, the CAFC held that statute of limitations does not preclude a party from raising affirmative defenses.

PatentlyO provides an overview of the case.  Inside Higher Ed expressed surprise that the case turns on the language of Stanford’s assignment agreement and not on other substantive issues, such as the interplay with federal Bayh-Dole Act and the bona fide purchaser arguments. (more…)

Massive Patent Verdict Overturned
By Jia Ryu – Edited by Stephanie Young

Uniloc v. Microsoft, No. 03-440 S (D. R.I. Sept. 29, 2009)
Opinion

The United States District Court for the District of Rhode Island vacated one of the largest patent verdicts in history, in which a jury held that Microsoft’s “Product Activation System” (“PA”) infringed on Uniloc’s patented “System for Software Registration” (the “‘216 patent”). In holding that Microsoft did not infringe as a matter of law, the District Court found that Uniloc had not shown the presence of each element of the patent claim or its substantial equivalent in the accused device as required by Lemelson v. United States, 752 F.2d 1538 (Fed. Cir. 1985). The Court, while noting that the jury’s finding deserved deference, expressed its “firm belief” that the jury failed to grasp the complex issues in the case and lacked a legally sufficient basis for the finding.

The Microsoft Blog provides an overview of the case. Betanews provides a thorough analysis of the main legal issues. Evidence Prof Blog provides a look at the admissibility of expert damages testimony.  Current Events in IP Law questions the jurors’ ability to understand the issues. (more…)