|New Billy Bluejay |
(U.S. Application Serial No. 86067719)
|Toronto Blue Jays Logo|
(U.S. Registration No. 4314078)
Old Billie Bluejay
(U.S. Registration No. 3080408)
Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Birgit Clark, Merpel, Jeremy Phillips, Eleonora Rosati, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here
|New Billy Bluejay |
(U.S. Application Serial No. 86067719)
|Toronto Blue Jays Logo|
(U.S. Registration No. 4314078)
Old Billie Bluejay
(U.S. Registration No. 3080408)
"Chinese intellectual property law has been one of the fields in which it has been most difficult to obtain an accurate, reliable and intelligible perspective. The achievement in putting together Patent Law in Greater China is therefore all the more laudable. Chapters from practitioners, administrators, academics and the business world give this work a degree of relevance and immediacy and show how the complex and initially puzzling interplay of law and practice in China and the economies within her orbit can be depicted and understood".This is how the publishers describe it, in part:
"This book provides a comprehensive introduction to patent policy, law and practice in Greater China [which for these purposes includes Taiwan, Hong Kong and Macau] and will be a go-to book for patent practitioners who have client interests in that region. Features [include]:Not listed by the publishers but of potential interest and value to the reader are the book's coverage of design patents and utility models; the text is also replete with references and further reading -- in a wider variety of languages than this Kat can cope with. The presentation of this volume has a genuine practitioners'-work feel to it, with numbered paragraphs and a handsome font. Well done, everyone!
• Introduction to Chinese patent policy.
• Detailed coverage of technology transfer and substantive patent law in China, including prerequisites for protection, exceptions and limitations.
• Practical analysis of patent law relating to three specific fields of invention: employee inventions, biotechnological and pharmaceutical inventions, and software inventions.
• Overview of the patent application and examination procedure, with a particular view on PCT applications.
• Insight into specific characteristics of enforcement mechanisms and jurisprudence in China, including the dual enforcement system, claim interpretation, infringement types, and invalidity procedures.
• Invaluable section on the relationship between patent and antitrust law, including practical realities in the sphere of anticompetitive licensing. ...
This Kat has received information concerning the publication in a national Dutch newspaper of a double page item calling for crowd-funding of opposition proceedings against a European patent. The patent in question, granted last year to Syngenta, relates to EP2140023 relating to insect-repellent pepper plants. Or, to put it another way:
Jeremy kindly informed me of a very interesting case about the ownership of the “likes” generated by a social media account created by a fan of the television show The Game. Spoiler alert: the fan lost.
On August 20th, the Southern District Court of Florida granted Defendant Black Entertainment Television LLC (BET)’s motion to dismiss in a case where the network was sued by Stacey Mattocks over the control of her Facebook fan page dedicated to The Game television show. The case is Stacey Mattocks v. Black Entertainment Television LLC., 0:13-cv-61582.
|This Kat Has to Ask: Is this Alsatian Pinot ?|
|I Could Have Been A Contender...|
Sharks in the courtroom are nothing new according to some critics of the legal system, but they are usually referring to the lawyers who appear there, charging inflated fees and ruining their clients. In this note, occasional guest blogger Paul England (senior associate, Taylor Wessing, and definitely not a shark) gives us the low-down on a recent fairly economical patent dispute in which the only things inflated were the products made by the respective parties. This is what he tells us:
Sharks and Jets here
The recent decision of His Honour Judge Hacon in the Intellectual Property Enterprise Court, England and Wales, in William Mark Corporation & Another v Gift House International Ltd  EWHC 2845 (IPEC) is a very largely fact-based patent action concerning flying fish toys. The first claimant devises and markets toys and is the proprietor of the two patents in suit: GB 2482275 ("275") and a divisional of 275, GB 2483596 ("596"). Both are entitled "Flying shark", the invention of which is described in 275 in these terms: "flight of the toys can be controlled in both horizontal and vertical direction. Most preferably, such flying toys simulate with a high degree of realism movement of a fish in its natural habitat". The most important features of these are:
The Great White Infringer
* 275, claim 1 - this can be summarised as a flying toy, comprising a body that includes a portion filled with lighter than air gas, in order to give neutral buoyancy; a moving surface and tail assembly, coupled to a first actuator and the body portion by an elastic element, such that it can move at variable and different angles to the forward motion of the body portion (ie a moving tail fin, but not necessarily one that propels the fish forward); a second actuator coupled to the body that can move a weight so as to change the pitch of the toy to allow for controlled ascent and descent (ie the fish can point its head down or up);The defendant also devises toys, and imports for sale in the UK a flying fish known as a “Mega Flier”, which the claimants alleged, infringed its patents. The defendant argued that the patents were invalid.
* 275, independent claim 9 - concerned with the tail fin assembly for a flying toy this can be summarised as comprising: a base plate with an actuator coupled to a moving surface such that the surface can move as described in claim 1; an elastic element that allows reversible coupling of the tail fin assembly to an inflatable and compressible body portion of the toy; and, configuration to allow application of a compressive force to the body via the elastic element (so as to maintain rigidity between body and tail fin);
The patented Mark Shark
* 596, claim 1 – primarily concerned with the movement of the weight to control pitch and provide for the weight element to comprise removable ballast;
* 596, claim 2 – contains the additional feature that "…the toy has a moving surface that is configured to move side-by-side for forward propulsion of the toy".
Further to an Order of Mr Justice Birss following this action's Case Management Conference, there were two issues to be decided on infringement, one of which was argued: did the defendant's products have an 'elastic element' within the meaning of claim 1 of 275? Judge Hacon held that the defendant's toys had plastic strips which were sufficiently elastic to serve as elastic strips as required by claim 1 of 275.
Our guest blogger has left his mark
Invalidity was alleged on grounds of lack of inventive step over two items of prior art:
* Slater – disclosing an anchoring means on a full-sized airship. This comprises a magnet which, when the airship is brought to rest, attaches to an anchoring member on the ground. The airship also has a track support mounted lengthways along the underside of the main body, which allows the airship's gondola to slide forwards or backwards.The judge held that claim 1 (and dependent claims) of 275 was not obvious over Kinishita, particularly as regards the second actuator and moving weight to control pitch claimed in 275. Further, there was no expert evidence to suggest that it was obvious on the basis of Slater to add a flapping tail to a toy. As regards independent claim 9, there was no evidence that it was obvious to adapt the base plate and plastic strip in Kinoshita to make the plastic strip elastic and have the surface move at variable and different angles. Slater also did not render claim 9 obvious. The result was that all claims of 275 were valid and the defendant's product infringed claim 1.
* Kinoshita – disclosing a mechanism for propelling a floatable structure filled with lighter than air gas. Such as a flying toy (exemplified by a flying fish in the specification). A powered fin swings to and fro in a vertical plane propelling the toy forward.
From Katfriend and long-time respected IP commentator Ken Moon (AJPark) comes news of a 13 August ruling of the New Zealand Court of Appeal (Harrison and Miller JJ) in a software copyright and trade secrets dispute, Karum Group LLC v Fisher & Paykel Finance  NZCA 389, which was heard this June. Ken takes us through the IP aspects of this dispute as follows:
This case, which relates to alleged copying and misuse of confidential information arising from a system integration and data migration project, is the first New Zealand case on non-literal software copyright infringement. In short, the Court of Appeal upheld the judgment of the High Court that Fisher & Paykel Finance (FPF), in modifying its own credit software, had not infringed any copyright in Karum’s CMS software; nor had Karum proved a claim of breach of confidence through FPF incorporating Karum's trade secrets into its own software.[Merpel adds: the Coco v Clark three-step test is as follows: (i) the information itself must have the necessary quality of confidence about it; (ii) that information must have been imparted in circumstances importing an obligation of confidence; (iii) there must be an unauthorised use of that information to the detriment of the party communicating it. This is hardly rocket science and it's scarcely even a test, but judges, lawyers and litigants alike have clung to it like limpets for generations, almost to the point of making excuses for it when it doesn't quite fit ...].
COBOL, had been supplied by California based Karum in 1994. FPF secured a licence from Karum to continue to operate CMS temporarily on RFS mainframes while FPF modified its own credit system software called "Lending" (written in Ingres) to support Farmers Card functionality and allow the two business systems to be integrated.
The court's reasoning
The Court of Appeal noted the duration of the trial in the High Court – eight weeks with numerous expert witnesses – and the complexity of the action due to its technical detail and the ‘novelty of the copyright claim’. The latter remark arose because Karum did not claim its CMS source code had been copied, but rather that FPF had copied non-literal design elements and logic.
• The underlying factor in deciding whether copyright protection could extend to something beyond or more abstract than program code was observed to be the principle that copyright did not protect ideas, but rather protected the expression of ideas. While this was trite law it was reinforced by the TRIPS Agreement, to which New Zealand had been a signatory since 1994.
Computer Associates v Altai which had agreed that, just as in traditional literary works, copyright could in principle extend beyond code to cover 'structure', although only to the extent that it was limited to structure as such and did not extend to any ideas or functions behind the structure – or for that matter at any other level of abstraction. The US Court of Appeals also said 'structure' referred to 'the functions of the modules in a program together with each module's relationships to other modules'.
• The judgments in SAS Institute v World Programming were then considered and the Court of Appeal observed that while the courts of England and Wales [here and, on appeal, here] and the Court of Justice of the European Union [here] had admitted the possibility of copyright protection for non-literal elements such as structure, the copied functionality in that case was not protectable expression.
[here] because a computer program has no plot, merely a set of operations intended to achieve desired functionality: that Court had held that such functionality may be replicated precisely in another program because functionality is not protected by copyright as it lies on the ideas side of the line between idea and expression. And nor were business rules or business logic, these not being original to the programmer and in any event falling into the category of functions or ideas.
• In summarising the English and US cases the Court of Appeal concluded that the scope of any copyright in non-literal elements is constrained: a plaintiff would likely find it difficult to distinguish expression from idea or to prove specified elements were not mere functionality or business rules.
• Applying this law to what Karum had claimed were copied by FPF (namely character string displays of payment and delinquency calendars, and the use of 'buckets' for storing aged debt with payments being assigned to the bucket containing the oldest debt), the Court said that the CMS calendars and aged debt module were no more than mere functionality or business rules as the codes used to represent age of debt or payments as a proportion to debt were not distinctive and were not literary works whether taken singly or together.
• In particular, on the facts this case could not be distinguished from the English cases even though -- unlike those cases -- FPF did have access to the CMS source code. The Court categorised this as 'a distinction without a difference' as the CMS source was not copied by FPF.
• The Court concluded its findings on copyright infringement by observing that, for copyright to be infringed, the Copyright Act required that a substantial part of the work must be copied. In this case, even if FPF had copied any original expression in CMS software, it was not a substantial part of the CMS software package.
Breach of confidence
• In addition to the calendars and aged debt, Karum's claim extended to FPF's use of what it called 'special codes' and 'intercept codes'. The first were some of the codes used in a customer account to indicate the status of the account, examples being '4' meaning 'account with a collection agency' and '7' meaning 'closed'. Some of the claimed codes were in fact mapped into CMS during the changeover from the Farmers previous software, F-Credit. The Court held all these codes to be non-substantive content: they were simply arbitrary characters representing business rules and did not amount to trade secrets.
Cats may be difficult to herd, but they respond
well to modern farming techniques if properly fed
• The intercept codes were codes sent with customer statements electronically to the agency retained to print and mail out the statements, such as '54' indicating hold the statement (and not mail it). FPF did use some of these codes because it used the same interface file with the printing agency that Farmers had used. There was no proof that the interface file format was owned by Karum as it was an agreed format worked out with the print agency by Farmers.
• The Court observed that Karum had chosen to sue FPF for breach of confidence in equity and had itself expressly cited the three-step test established in the 1969 English case of Coco v AN Clark (Engineers) [noted here] which had been long adopted by New Zealand courts.
It therefore rejected Karum's argument that establishing the necessary quality of confidence for the first step should solely be carried out by interpreting the relevant trade secret stipulations in the CMS software licence (which formed part of the settlement agreement). The Court added that, while the licence clauses should be taken into account, the determination was ultimately a question for the court, taking into account policy considerations as in Yates Circuit Foil Co v Electrofoils Ltd  FSR 345.
• The Court found that there was no disagreement between the parties that FPF was entitled to examine CMS for the purpose of identifying business rules and functionality and that entitlement extended to testing both systems to ensure nothing was lost in translation. In any event the Court agreed with the High Court judge that there was nothing confidential about the codes -- which were arbitrary and trivial, both singly and collectively.
• In assessing the third Coco test, misuse of information to Karum's detriment, the Court confirmed that equity would require a showing of detriment in commercial cases, as in such cases it was the normal measure of fairness. The Court did not accept that Karum had suffered detriment because equity would not intervene where FPF only did what it had the right to do so.
It was not surprising that the idea/expression dichotomy dominated the reasoning for the first time in New Zealand copyright case instead of the usual subsistence and infringement considerations. However, the Court of Appeal rejected the opportunity to elaborate on what protectable expression might lie above source and object code, simply holding that the non-literal elements of software it was presented with fell on the idea side of the dividing line as being either functionality or business rules.
On breach of confidence it could be argued that the Court of Appeal has raised the bar in New Zealand for the first Coco test in appearing to require a higher quality of confidence than simply that the information be more than mere trivia. The Court has ruled that at least for commercial cases in New Zealand, a showing of detriment is a required part of the third Coco test. It was interesting also that the Court of Appeal recognised that, in the interests of commercial efficiency courts should resist 'the attempts of legacy system owners to leverage intellectual property rights so as to inhibit competition from second comers'.
There are still a lot of legacy banking systems requiring replacement over the coming few years because of brittle over-modified third generation code and/or mainframe hardware well past its use-by date.Disclaimer of personal interest: Ken was part of the legal team representing Fisher & Paykel Finance.
|There are easier ways ...|
Masala movie, albeit with the only difference that the author casts his mojo by interweaving the legal aspects of the copyright law debate within its theatrical setting of Bollywood in Mumbai
It has won my rave review as it is a very riveting story which explores and educates the reader about the perils of piracy that plague our modern day technologically driven society. Most certainly, this book would wield its impact on the reader's understanding of the nexus between Bollywood actors, producers, entertainment lawyers and cops which has been revealed through a blizzard of investigation with the motive to pare down piracy. The author seamlessly introduces themes of Free Software, Open Source Software, and Creative Commons while giving an insight into how piracy operates (i.e from persons pirating films to persons distributing the content). At the core of the debate is the Copyleft Foundation which was founded in order to make creative works freely available for use, modification, and sharing by everyone in the society and a file sharing website called SHARE, built by students of the International Institute of Technology, Bombay.
The protagonists of this story are Arjun. the famed IP lawyer, and Helen Joseph, the young, energetic and dynamic Assistant Commissioner of Police in Mumbai. The reader’s attention would also be caught by the hapless character of Ilahi who is a teen selling pirated DVDs. The author manages to evoke the reader's sympathy for the likes of Ilahi as well as the assassin who commits cold-blooded murder in the story, by justifying their venality: the former is the only bread-winner for the family of six and the latter had a little sister suffering from spastic cerebral palsy, a physical disability due to brain damage.
Ultimately yours truly hopes that this crisp read will prove to be not only informative but also relished by one and all during their summer holidays or on a short distance flight (as it is all of 164 pages).
|The AmeriKitten may be one paw down, |
but thankfully has nine lives to go.
|Congressman Henry Waxman -|
the second half of the
(i) alleged that Mylan infringed the '064 Patent for the paper act of filing the ANDA pursuant to Section 271(e)(2) (i.e. that the purpose of filing the ANDA was to launch pre-expiry of the patent); andMylan applied to dismiss the declaration for lack or subject-matter jurisdiction or to terminate the automatic 30-month stay.
(ii) sought a declaration pursuant to the Declaratory Judgment Act, under Section 271(a)-(c) that Mylan will directly or indirectly infringe the '064 Patent.
"The Federal Circuit has not resolved this issue. Moreover, the Federal Circuit has not addressed the question of whether district courts may exercise jurisdiction over a claim asserting future infringement of a non-Orange Book patent under the Declaratory Judgment Act when such a claim is based solely on the filing of an ANDA by a generic manufacturer. "The Answer:
|Judge Koh warning against |
throwing in the "kitchen sink"
in patent litigation
"As discussed below, the legal precedent regarding these questions is unsettled. However, even assuming that a sufficiently immediate and real controversy exists for purposes of [the declaratory action], the Court exercises its discretion to decline declaratory judgment jurisdiction because [the declaratory action] is duplicative of [the infringement action] and serves no useful purpose in this case."Her reasons were as follows:
|The kitchen sink - not to be|
thrown lightly in the 9th Circuit
* Recommended by the European Patent Office as reading material for candidates for the European Qualifying Examinations 2013
* Listed as a "Top Legal Blog" in The Times Online, March 2011
* One of only two non-US weblogs listed in the 2010 ABA Journal Blawg 100
* Court Reporter Top Copyright Blog award winner, November 2010
* Number 1 in the 2010 Top Copyright Blog list compiled by the Copyright Litigation Blog, July 2010
* Selected by United States Library of Congress for inclusion in its historic collections of Internet materials related to Legal Blawgs 2010
* Top Patent Blog poll 2009: 3rd out of 50 in the "Favourite Patent Blog" poll and 2nd out of 50 in the "Most-read" poll
* ComputerWeekly IT Law and Governance Blog of the Year 20 August 2008
* Best of the Blogs, Times Online, 21 August 2008
* Listed as one of Managing Intellectual Property magazine's Fifty Most Influential People of 2005, 2011, 2013 and 2014