Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by the United States Patent and Trademark Office (PTO) and the federal courts.  Patents themselves are sometimes almost unintelligible and, if intelligible, may require many hours of reading to understand.  It is no wonder that there are a lot of misconceptions or myths about patents.

 

This is the first of two columns in which I will discuss a few of the most common aspects of patent law that are misunderstood.

 

1.       Ideas Are Not Patentable.

Clients often want to patent an idea.  Ideas are not patentable – inventions are patentable. Continue Reading Patent Myths Corrected – Part One

By: Audrey A. Millemann

Over the last 15 years, the United States Patent and Trademark Office has issued many business method patents.  Many of these patents seem overly broad or obvious, and the tech industry has been strongly critical of the PTO for issuing these patents.

Congress has been listening.  Under a new program enacted as part of the America Invents Act (“AIA”), business method patents can be challenged in a specific procedure in the PTO.  The program, called the “Transitional Program for Covered Business Method Patents” and referred to as CBM Review, is set forth in section 18 of the AIA.  CBM Review went into effect in September 2012 and has a sunset provision of September 2020.

Under the CBM Review program, a defendant accused of infringement of a patent covering a business method may challenge the validity of the patent in the PTO.  CBM Review is conducted before a new administrative law board, the Patent Trial and Appeal Board (“PTAB”).     Section 18 (d)(i) of the AIA defines a covered business method to be a method or apparatus directed to data processing or other activities used in financial products or services.  The statute excludes patents covering “technological inventions,” which the PTO has defined as inventions that solve a technical problem using a technical solution.

The purpose of CBM Review is to provide a quick and less costly alternative to federal court litigation for determining the validity of business methods patents.  Under the CBM Review program, a patent may be challenged as invalid on any number of grounds, including that the claims are directed to unpatentable subject matter under 35 U.S.C. section 101, in particular, abstract ideas.  Business method patents can also be challenged on the basis or prior art.  Continue Reading Challenging Business Method Patents

The U.S. District Court for the Central District of California handed a big victory to Warner Bros. when it ruled that Gotham Garage violated Warner Bros.’ intellectual property rights in the iconic Batmobile.  There was a question whether Warner Bros.’ rights in the Batman franchise would prohibit the production of an automobile designed like the Batmobile since the Copyright Act does not protect automobile designs.  The Court found that the Batmobile was a protectable character of the Batman franchise and the replicas manufactured by defendant were infringing derivative works.

Gotham Garage manufactured and produced custom cars modeled after vehicles found in various television shows and movies. It had been producing and selling replica vehicles based on the 1966 and 1989 Batmobiles. Gotham Garage also manufactured automobile parts featuring the Batman trademarks and did business in a manner utilizing various Batman trademarks. Warner Bros. filed a lawsuit In May 2011 alleging that Gotham Garage infringed the copyrighted versions of the 1966 and 1989 Batmobile and infringed various Batman trademarks in the marketing and selling of its custom vehicles.

The court made easy work of the trademark claims. The Court noted that Gotham Garage did not contest Warner Bros.’ trademark claims, and did not dispute that it manufactured and distributed parts and accessories featuring the Batman trademarks and used the Batman trademarks in connection with the operation of its business.  The Court found that Gotham Garage’s use of the Batman trademarks caused a likelihood of confusion; that consumers were likely to be confused as to the source of the products.  The defendant admitted that “most of his potential customers ask if he had a relationship with Warner Bros. or was licensed by Warner Bros.”   The Court found that this initial interest and confusion impermissively capitalizes on the goodwill associated with the Batman trademarks. Continue Reading Holy Lawsuit Batman

Most law students learn early in law school the old maxim: “Bad facts make bad law.” A recent Ninth Circuit case, Garcia v. Google, Inc., seems certain to test this propositionwith its incredibly sympathetic facts.

Ms. Garcia, an aspiring actress, was paid approximately $500 to appear in a minor role that she believed to be an Arabian adventure movie titled, “Desert Warrier.” Instead, a clip of her performance was used in an anti-Islamic film titled, “Innocence of Muslims,” which was posted to YouTube. (Google is the owner of YouTube.) Not only was her performance included in this movie, but her lines had been “dubbed over” so that the line audiences heard her say was “Is your Mohammed a child molester?” The film and this line provoked anger worldwide and an Egyptian cleric issued a fatwa calling for the killing of everyone involved with the film. Shortly thereafter, Ms. Garcia began receiving death threats.

Continue Reading A Bit Part, A Fatwa and Copyright Infringement

The United States Supreme Court was presented with the question of who has the burden of proof when a licensee files an action seeking a declaration of non-infringement against the patentee. In Medtronic Inc. v. Mirowski Family Ventures, 187 L.Ed.2d 703 (Jan. 22, 2014), the Supreme Court reviewed a decision by the Federal Circuit Court, which held that the plaintiff licensee has the burden of proving non-infringement. The Federal Circuit Court, in interpreting the Declaratory Judgment Act, found that Medtronic, as the plaintiff, carried the burden of proof to prove all elements of its claim, as does any other plaintiff. The Supreme Court reversed.

The defendant, Mirowski Family Ventures (“Mirowski”), owned numerous patents relating to implantable heart stimulators. Medtronic entered into a license with Mirowski to practice certain of Mirowski’s patents in exchange for royalties. Pursuant to the terms of the license, Mirowski notified Medtronic of Mirowski’s contention that several of Medtronic’s products violated Mirowski’s patents and, therefore, additional royalties were due. Medtronic disputed the claim, filed an action for declaratory relief, and accrued the disputed unpaid royalties in an escrow account as permitted under the license.

Continue Reading PATENT HOLDERS BEAR THE BURDEN OF PROOF EVEN AS A DEFENDANT