By Audrey A. Millemann

On May 8, 2008, the Federal Circuit Court of Appeals heard oral argument in a case that may significantly change the patent landscape. The court is expected to clarify, and perhaps narrow, the test for business method patents.

The case is In re Bilski, case no. 2007-1130. The patent claims are directed to a method of hedging the costs of a commodity, specifically, a method of managing risks for consumers of commodities, such as energy, and for commodity providers. The patent application was filed in 1997 and rejected by the PTO under 35 U.S.C. §101 as nonstatutory subject matter. The applicant appealed to the Board of Patent Appeals and Interferences, who affirmed the PTO’s decision in March 2006. The Board held that the applicant’s process was an abstract idea and therefore unpatentable. 

Continue Reading What is a Patentable Business Method? Federal Circuit to Decide

By: Dale C. Campbell and Serena Crouch, Third Year Law Student at McGeorge School of Law

Internet users and privacy advocates across the nation fear they are losing the continuing battle to protect internet privacy rights.  A court decision in a lawsuit between Viacom and YouTube.com is the most recent battlefield regarding data likely to provide the video viewing habits of millions around the world.  

In March 2007, Viacom sued YouTube and Google, Inc. in the United States District Court, Southern District of New York, seeking at least $1 billion in damages for alleged copyright infringement.  Viacom claims that YouTube built its business by willfully offering Viacom’s copyright protected material such as episodes of “The Daily Show with Jon Stewart” and the cartoon “SpongeBob SquarePants.”  Viacom claims that neither YouTube nor its users are licensed to upload its material in the manner it is being used.

Continue Reading Viacom V. Youtube: Are Our Internet Privacy Rights Really In Danger?

By Dale C. Campbell

Search engine websites sell keywords as a component of their advertising programs. By purchasing an advertising keyword, a business’s advertisement will appear next to the search results whenever a person enters the advertising keyword as a search term. Trademark questions arise whenever a competitor purchases an advertisement keyword that is confusingly similar to the protected mark of another competitor, thereby causing its advertisement to pop up next to the search results.

Continue Reading Internet Search Adwords: Are Your Trademarks Protected?

By Scott Hervey          

The First Circuit recently decided a case that exemplifies the downfall of building a brand around merely generic terms. No matter how long the mark owner may use a mark in commerce, it is going to be next to impossible to prevent competitors from using those generic components, even where the use is part of the competitor’s trademark.

Boston Duck Tours operated a sightseeing tour operation of the Boston area since 1994 and used renovated WWII amphibious vehicles commonly referred to as “ducks.” In 2001, Super Duck Tours began operation of a sightseeing land and water tour. Super Duck Tours originally operated its business solely in Portland, Maine. In 2007, Super Duck Tours expanded its operation and began to offer tours in certain parts of Boston not serviced by Boston Duck Tours. 

Continue Reading Court Couldn’t Give A Quack About Generic Mark

By Scott Cameron

After more than 150 years, the U.S. Supreme Court recently took exhaustion, or at least the doctrine of patent exhaustion, to new levels. The doctrine of patent exhaustion, also known as the first sale doctrine, has been used routinely to limit the patent rights that survive the initial authorized sale of a patented item. In QuantaComputer, Inc. v. LG Electronics, Inc., decided June 9, 2008, the Supreme Court reaffirmed the doctrine and held that it applied not only to patents on an apparatus, but on a method as well. 

Continue Reading Even After 150 Years, Exhaustion Is Not Too Tired To Be A Good Defense