Apple launches a cellphone. Nokia releases a laptop. Apple buys an online advertising division and Google moves aggressively into software and hardware. With the release today of Google’s nexus one phone, which positions itself as an iPhone competitor, the ongoing battle for the smartphone market heats up another few degrees. 

Nokia and Apple are already locked in patent litigation with each claiming the other has infringed its portfolio of patents.  Nokia raised the stakes when it broadened its legal attack to include all of Apple’s popular iMac desktops as well as the iPhone.  Meanwhile, with the release of Google’s branded nexus one phone (manufactured by HTC), the search-engine titan elbows into the cellphone market with its own Android-based device. Android apps will compete head-to-head with iPhone apps. In the midst of all this market positioning, intellectual property litigation is one more tool; it is reminiscent of the battle in the late 1980s when Motorola effectively declared war on upstart Nokia and used patent infringement as its main weapon. It also recalls the use of copyright in the turf wars between Apple and Microsoft in the 1990s. 

The lessons for business? Don’t ignore the value of intellectual property protection as both an offensive and defensive tool.  If you don’t know where to start, then obtain an intellectual property audit and come up with a budget and a list of priorities.

Calgary – 15:35 MST

2009 was a fascinating year in the world of intellectual property and internet law. Here are a few issues to watch in 2010:

Olympic Marks:  The next few months will focus attention on the uses and abuses of both Olympic marks, as well as the Olympic and Paralympic Marks Act. 

Canadian Copyright Reform and Anti-Spam Law: The Canadian copyright reform process has stalled yet again. The government undertook a public consultation process in the fall but any prospect of movement on this issue has again died in the wake of Parliament’s prorogation.  This also applies to proposed anti-spam legislation that died on the order paper. Political pundits are speculating about a fall 2010 election, and if that happens, we won’t see any developments in copyright reform or anti-spam laws until 2011 at the earliest.

US Patent Reform: As we predicted in IP & Internet Law in 2009, a proposed patent reform bill was introduced early in 2009, but since then, the patent reform process in the US is stalled. House and Senate bills are inching through Congress.

The Development of App Law: The surprise of 2009 was the rapid development of app law – the law of mobile applications. This trend can be expected to continue as legal disputes help clarify the law in this growing area.

Copyright Class Action: Though this lawsuit was commenced in 2008, it has the potential to become headline news in 2010 if it proceeds through the courts – it’s the ghost of Chet Baker vs the Recording Industry in a copyright claim for unpaid royalties (see: Canadian Copyright Class Action… Against the Recording Industry).

Business Method Patents: In both Canada and the US, the patentability of business methods is being contested, and a decision in the Bilski case (in the US), as well as an appeal of the rejection of the Amazon 1-click patent (in Canada) should come in 2010.  We can finally expect to get some clarity in this area.

Calgary – 11:45 MST

 

On Tuesday, Microsoft lost at the U.S. federal court of appeals in a landmark case that will force the software maker to redesign its flagship word-processing program. The US appeal court upheld a $290-million US judgment against Microsoft in the patent battle launched by Canadian company i4i Inc.  The injunction comes into effect in January to stop sales of Microsoft Word software which infringes i4i’s software patent for XML editing. Microsoft claims it is reviewing its legal options.

Calgary – 09:00 MST

The US Patent and Trademark Office (USPTO) has announced a pilot project to provide accelerated examination of certain clean technology (cleantech) patent applications. The program is aimed at “green technology” though so far there are no details on what inventions will qualify. The current wait-time for a patent application is roughly 2.5 years just to get to a first office action, and over 3 years to obtain a final decision.

Now that the US has joined the UK, South Korea and Australia, the question of Canada’s response becomes more pressing. When will Canada adopt a fast track for cleantech patents?

Click here for the PDF of: Tips and Trends in CleanTech Licensing.

Related Reading: More CleanTech articles on ipblog.ca 

Calgary – 09:45

Canadian patent examiners will now be assessing patent applications under a new guideline which applies a four-part test on obviousness.  This flows from the 2008 Supreme Court of Canada decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61. The following test is being applied pursuant to CIPO’s new Practice Notice on Obviousness – November 2, 2009:

1. Who is the “person skilled in the art” and what is the relevant common general knowledge of that person?
2. What is the inventive concept of the claim contained in the application?
3. What difference, if any, exists between the prior art and the inventive concept contained in the application?
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?

Related reading: SCC Decision on Selection Patents

Calgary – 10:00 MST

The battle over patentability of software and business-methods is continuing in both Canada and the US.  In the US, the Bilski case and its “machine-or-transformation” test is currently undergoing review at the Supreme Court level. Earlier this month the Free Software Foundation (FSF) and Red Hat each submitted amicus curiae briefs in support of the proposition that software is not patentable.  Briefs have been filed by Yahoo, IBM, the Business Software Alliance and dozens of others.  A decision is expected sometime in 2010.

In Canada, the Commissioner of Patents refused Amazon’s Patent Application No. 2,246,933 covering Amazon’s so-called “one-click” e-commerce patent.  Amazon is now appealling to the Federal Court.  This case will be closely watched to clarify the Canadian position on patentability of software and business-method patents.

Related Reading: Update: Business Method Patents , and USPTO Publishes Interim Guidelines for Subject Matter Eligibility

Calgary 11:45 MST

In some countries (notably, the UK and South Korea, and now Australia) cleantech inventions are being earmarked to receive expedited examination in the patent office (See for example: Green Channel for Patent Applications (UK), and this announcement about changes at the Korean IP Office, plus this post about Australia’s plans). This practice covers “environmentally-friendly technologies”, such as those in the fields of prevention of water pollution and air pollution, waste disposal technologies, recycling, and others.  Sure, this should be a good thing for the environment, but make no mistake – this is also about maintaining a national competitive edge as patented cleantech inventions gain importance in the global economy. 

Should Canada implement such a procedure?

Calgary – 10:30 MST

A small Canadian company, Infrastructures for Information Inc. (i4i), won a significant damage award earlier this year in its patent infringement fight wth Microsoft.  The lawsuit claimed that MS Word 2003 and Word 2007 contained custom XML tagging features that infringed the Canadian company’s patent.  Although the jury found in favour of i4i in May to the tune of $200 million, the heat was turned up this week when a U.S. judge added $40 million to the damages for Microsoft’s “willful infringement”, along with pre-judgment interest of $37 million. To top it off, the Court also issued a permanent injunction prohibiting Microsoft from selling its flagship Word program in the US. Microsoft has 60 days to comply with the injunction.  Not surprisingly, Microsoft has announced plans to appeal the ruling.

 

Calgary – 09:45 MST

This month the US Patent and Trademark Office opened an exhibit of Michael Jackson’s patents and trade-marks which is scheduled to run through the summer of 2009. One of Mr. Jackson’s more famous intellectual property assets – besides his songs and brands – is his patented “Method and means for creating anti-gravity illusion” (Michael J. Jackson et al, Patent number: 5255452), comprising a special boot (shown at left) used in connection with a device set into the stage.

Calgary – 09:00 MST

In both Canada and the US, the business method patent is, at the moment, on the run (see our previous post: Business Method Patents Under Review). Business method and software patents have been the subject of fierce debate in the intellectual property community. Last October, the US Court of Appeals for the Federal Circuit ruled in the Bilski decision that a process for managing risk in commodities markets did not deserve a patent, because it was not tied to a machine, did not result in a “physical transformation”, and therefore did not meet patentability requirements.   

In Canada, business method patents are not automatically unpatentable – they are assessed according to the usual patentability criteria and CIPO’s Manual of Patent Office Practices. But a recent ruling by the Canadian Patent Appeal Board has denied Amazon’s “one-click” patent, throwing doubt on the patentability of business methods in Canada. Essentially, the CPAB found that, as in the Bilski case, there was no “physical transformation” so the application did not meet Canadian patentability requirements. (For further discussion, see: Amazon’s One-Click Patent Application Gets Bilski’d.)

Now,  the US Supreme Court has decided to weigh in by agreeing to review the Bilski decision. The decision may finally determine whether business methods are patentable. 

 

Calgary – 9:45 MST

A year ago we posted a Patent Infringement Update on this case; earlier this month the USPTO rejected all 57 claims in a course-management software patent that US-based Blackboard Inc. used to successfully sue its Canadian competitor, Desire2Learn. The most recent rejection relates to claims added during the re-examination process [copies of the documents are posted here].  Blackboard originally obtained the software patent in 2006, but the patent was criticized for its broad claims covering technology that had been used by educational institutions and others for years at the time of filing. The battle is likely to continue, as Blackboard has since filed a new patent, and is suing its rival again for infringement of the new patent.

Calgary – 11:00 MST

The Eastern District of Texas has gained notoriety as a magnet for patent lawsuits.  Plaintiffs will commence lawsuits there with the hope that pro-patent-owner juries will be convinced to decide the case in favour of the patent owner and award significant damages.  The district also has a reputation for moving patent cases along efficiently, which can benefit a well-prepared plaintiff.

The Fifth Circuit Federal Court of Appeals issued its decision in the case of Re TS Tech USA Corp. a few weeks ago, and agreed to transfer a case from the Eastern District of Texas to the Southern District of Ohio, on the basis that the lawsuit had more of a connection to Ohio than Texas.  This could trigger transfers of other patent lawsuits that do not have the required level of connection to Texas. Defendants TS Tech USA Corp, TS Tech North America, Inc. are based in Ohio and the Plaintiff Lear Corporation is a Delaware corporation based in Michigan.

In earlier posts ( Welcome to Texas: Keep Your Powder Dry ; Patent Infringement Update ), we noted cases involving Canadian companies caught up in patent lawsuits commenced in Texas.  The case of Re TS Tech USA Corp. also dealt with a Canadian defenant, auto-parts manufacturer TS Tech Canada, Inc., based in Ontario.  The TS Tech decision is one more strategic tool for Canadian defendants to challenge jurisdiction.

Calgary – 10:00 MST

To follow-up on our post last year [IP and Internet Law in 2008 ], here are a few issues to watch in ’09:

US Patent Reform 

Although the US Patent Reform Act of 2007 stalled in the US Senate in 2008, it is expected to be brought back onto the government agenda in 2009 as part of the Obama administration’s plan for innovation.  Look for this to be moved forward once the burning economic issues have been addressed. 

Filesharing 

The recording industry tried multiple tactics in 2008. They pursued file-sharing sites rather than individuals. Their lawsuit against Quebec Torrent resulted in a win-by-default, and it is likely that they will pursue other file-sharing sites in Canada, citing this as a precedent. As expected, the recording industry also made a move against individuals using new anti-piracy legislation.  This trend can be expected to continue in 2009. 

Canadian Copyright Reform

While the government continues to grapple with economic and constitutional issues, it is unlikely that copyright reform will be high on the list.  If we do get a revised copyright reform bill, debate can be expected to drag on until the end of the year. 

Olympic Marks

With the 2010 Olympics coming to Canada in a little over a year, ambush marketing and Olympic advertising will likely generate lots of interesting trade-mark disputes.  As seen in Beijing, the efforts of the Olympic “trade-marks police” will bring this issue to the fore, and will provide an opportunity to test the new Olympic and Paralympic Marks Act.

Calgary – 2:45 MST

 

In the battles between generic and brand-name pharmaceutical companies, this decision can be considered a major clarification of the law.

Last week the Supreme Court of Canada (SCC) released its decision in Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61. This patent litigation case centres around so-called “selection patents”. Selection patents claim “an advantage for a compound within a previously disclosed class of compounds which has not been disclosed in the prior patent”, as described by the court. Unlike originating or genus patents, which cover an originating invention involving a new reaction or a new compound, selection patents build on previously disclosed classes of compounds but identify a new use or benefit of the compound undisclosed in the originating patent. In this particular circumstance, Apotex (the generic manufacturer) claimed that one of Sanofi’s selection patents was invalid because it was covered within one of Sanofi’s earlier originating patents. The court disagreed with Apotex and upheld Sanofi’s selection patent. The win is significant for Sanofi since it covers the drug company’s second-best-selling drug, and the patent does not expire until 2012, giving the company 4 more years of monopoly over generic manufacturers.

As for the complaint from generics that big pharma is engaging in “evergreening” to continue their monopolies long past the time intended by the Patent Act, the court stated: “Strategies that attempt to extend the time limit of exclusivity of a patent may be contrary to the objectives of the Patent Act, depending on the circumstances, but a generalized concern about evergreening is not a justification for an attack on the doctrine of selection patents. A selection patent may be sought by a party other than the inventor or owner of the original genus patent so that evergreening does not arise. In addition, selection patents encourage improvements over the subject matter of the original genus patent because that selection does something better than or different from what was claimed in the genus patent.”
Related Reading: Pharma Patent Decision Released

Calgary – 17:45 MST

DBC Marine Safety Systems Ltd. invented an inflatable reversible life raft and applied for a patent (No. 2,233,846).  During the course of any patent application, it is common for the Patent Office to send an examiner’s letter to the applicant, requesting further information or amendments to comply with the Patent Act. In its reply to one such letter, DBC’s patent agent responded to one of the requests, but overlooked the other request.  The Patent Office and Patent Act are both clear that if a response is completely silent in respect of any of the requests in an examiner’s report, then the application will be deemed to be abandoned. 

The initial 6-month time period lapsed, and the notice of abandonment was issued after the 12-month reinstatement period had expired. In other words, the patent agent made a mistake by overlooking the one request, and the Patent Office failed to follow their normal practice of providing a “courtesy” notice of impending abandonment. The result was that the application was treated as abandoned and could not be reinstated.  In the recent Federal Court of Appeal decision in DBC Marine Safety Systems Ltd. v. Canada (Commissioner of Patents) (Trial Decision here ), the Federal Court of Appeal dismissed the appeal and upheld the decision of the Patent Office to treat the application as having been abandoned.   

Calgary – 10:30 MST

 

We posted last month about a Canadian company that lost a patent infringement suit in Texas to competitor Blackboard Inc.  The Canadians lost another round a few weeks later when the judge barred them from selling the infringing products in the US.  In a recent reversal of fortune, the U.S. Patent and Trademark Office has now issued a preliminary decision that rejects all 44 patent claims made by Blackboard Inc. in its software patent. 

This shows the value of a coordinated patent litigation defence – fighting the patent infringement claim both in the courts and in the USPTO. 

 

Calgary – 15:30 MST

 

You win some, you lose some.

An injunction is essentially a court order which prevents a company from doing something, such as using a trade-mark or a patent.  It can be a very useful tool in intellectual property litigation.  However, as we’ve reviewed in other cases, the test in Canada for obtaining – and maintaining – an injunction is not easy to meet.  The test derives from the Supreme Court decision in RJR-Macdonald Inc. v. Canada (A-G), 1994 CanLII 117 (S.C.C.) .  Two recent Canadian cases illustrate this – one win and one loss:

• Trade-Mark Case: In a recent decision out of Manitoba, the Court decided that the Plaintiffs in Marlborough Hotel Corporation et al. v. First Canadian Hotels & Entertainment Ltd. et al. were entitled to an interlocutory injuction in a battle over the use of the “Skyview Ballroom” mark for hotel services.
• Patent Case: In the recent Alberta decision in Core Laboratories Canada Ltd. v. Lonkar Services Ltd., 2008 ABCA 76 (CanLII), the Court of Appeal overturned an injunction granted by the lower court.  At the lower court, the judge had granted an interim injunction prohibiting the appellants from marketing and providing services which include the use of a gamma ray spectral memory tool. On appeal, the court decided the test had not been met.

Calgary – 10:45 MST

A promising Canadian company is hit with a dubious software patent owned by a US competitor. The Canadian company is based in Ontario; the US patent-holder is headquartered in Washington, DC.  But the lawsuit takes place in the infamous Eastern District of Texas: the plaintiff-friendly outback of patent infringement litigation.  

Without commenting on the merits of the case, the recent decision in Blackboard Inc. vs. Desire2Learn Inc. illustrates the perils for Canadian businesses of facing a patent lawsuit in the US. The Canadian company lost last week and is now reviewing its options to appeal the $3.1 million ruling.  The lessons for business?

• defensive patents may provide leverage for settlement or cross-licensing; 
• a successful challenge to the vailidity of the plaintiff’s patent will deep-six the patent infringement claim; developments in US law are bringing clarity to the patentability of software and business-methods and the grounds for challenging such patents (See: Business Method Patents Under Review);
• experienced patent litigation lawyers will review other options, including interim injunction orders which, if successful, can effectively put the defendant out of business.

Meanwhile, draft US patent reform legislation attempts to control forum-shopping, and may force litigants to commence their lawsuits in jurisdictions which are more closely connected to their headquarters or their actual place of business. In other words, Washington-based Blackboard Inc. would have to sue in Washington.  What a thought.  Until then, the patent battles will continue in Texas, and Canadian companies will have to keep their powder dry. 

Calgary – 9:45 MST

The US Federal Circuit Court of Appeals has decided to review a number of issues that go to the heart of business-method patents in the In re Bilski case. Essentially Bilski has claimed a method for managing risk.  The claim is not tied to any software or “machine”; it is merely a mental process of how to conduct business.  The court will review:

(1) Whether the business method claim in Bilski’s patent application is “patent-eligible subject matter”?

(2) What standards should be used to determining whether a process or method is eligible for patent protection?

(3) Whether the claimed method is not patent-eligible because it is an abstract idea or mental process; when does a claim that contains both mental and physical steps create patent-eligible subject matter?

(4) Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under US patent law? and

(5) Whether it is appropriate to reconsider or overrule the leading business-method-patent decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., (Fed. Cir. 1998)?

The State Street Bank case has been held up for the last 10 years as authority for the patentability of software and business methods.  For those watching the business-method-patent and software-patent debate, this is the front line and will impact patent holders in both the US and Canada. 

For related reading, see: US Patent Reform

 

Calgary – 10:50 MST

There was a time when the words “Made in Japan” were synonymous with cheap, low quality trinkets. Today those words are the hallmark of high-quality electronics. The words “Made in China” are on the same path. From an intellectual property and trade-mark perspective, there are cheap knock-offs – like Mickey-Mouse t-shirts and pirated DVDs. And then there are legitimate, cutting-edge imitators that just might beat the original product in its own backyard.

Case in point: the Meizu M8 or miniOne (the one on the right, if you were wondering) is in the vanguard of made-in-China products that will soon be competing directly against Western technologies like the Apple iPhone (on the left). Not only in the US, Canada and Europe, but perhaps more importantly, in the ballooning consumer markets in China and India.

The miniOne is no slouch in the technology department and it appears to be backed up by its own IP portfolio – Meizu’s patent application in China was laid bare earlier this month (See images from the patent application from the State Intellectual Property Office of the PRC or SIPO). In this arena the game for IP owners is no longer one of trying to squelch cheap knock-offs, but to compete head-to-head, armed with IP protection for patents, trade-marks and copyright, at home and overseas.  And to watch out for the miniOne in a store near you.

Related reading: China’s iClone
Calgary – 11:30 MST