Facebook Patent Unleashed!

Facebook obtains potentially powerful patent on Newsfeed technology

In 2006, Facebook filed a patent application on its much-imitated Newsfeed technology. Last week the patent was granted. Facebook has yet to announce any plans for legal action, but Web sites all over must be feeling more than a little apprehensive. After all, Twitter is essentially one big news feed. Google, Myspace and Flickr all use a similar technology.

The USPTO granted coverage to “the generation of activity elements associated with a user through a social network, tethering an information link associated with at least one these activities, limiting access to material in question to a predetermined list of users and assigning an order of publication for these different elements.”

Before Facebook sues anyone for patent infringement, it must consider the potential fallout from such a drastic move. In 2007, when Facebook tried out its first News Feed technology, called Beacon, users felt violated and many deleted their accounts. Mark Zuckerberg, Facebook CEO, issued a public apology and rescinded the service (although it slowly crept back in without any large-scale reactions). Facebook better use its new weapon of mass destruction tactfully. But it probably will use it. Stay tuned…

Software Patents and Business Methods Patents, Are They Patentable?

Are software and business methods patentable? If you have been Googling the topic recently, you may have heard that the US Supreme Court and the Federal Circuit have heard a series of different cases during the past few years regarding it. Before I get into the history below, the short answer is still generally yes for software patents, with exceptions, but probably not for pure business methods, with exceptions of course!

Some of the earliest cases in the 70’s held that abstract ideas are not patentable, thus computer software which is composed of algorithms/mathematical concepts were held not to be patentable. This was an initial strike against software patents! Later in the 80’s the Supreme Court ruled on Diamond v. Diehr. The patent in question related to an invention for a method to determine how rubber is heated so it can be best “cured.” The invention was tied to a computer that calculated heating times of the rubber. The claims included a computer program claim and method claims. The Supreme Court held that the invention was not simply a mathematical algorithm, but was a valid process and
therefore patentable.

Throughout the years however, other cases came out that conflicted with Diehr. It wasn’t until the 90’s, in the seminal Supreme Court case of State Street Bank v. Signature Financial Group, which seemed to clarify the patentability of software patents. This patent related to a method of running mutual funds. Again, the issue revolved around the patentability of a mere mathematical algorithm or business method. The Supreme Court held the patent as valid and thus allowing a business method to be patentable subject matter. A key point was that the software must yield a “useful, concrete and tangible result”. So for many the feeling was that the patent claims needed to be drafted such that the software or processes were tied to a computer or processor to achieve a useful, concrete and tangible result to be patentable.

Fast forward to 2008, the Federal Circuit ruled on the In re Bilski matter which garnered a lot of media attention as to the patentability of business methods and computer software. The main claim at issue in the Bilski patent was for a method of hedging risk in the field of commodities trading. The claim was considered to be a pure business method because it dealt with simply a mental process (information that is analyzed and acted upon). The Court walked away with a new test requiring that a process is patentable if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." This new machine-or-transformation test really called into question pure method claims, and software method claims as well.

Then in late 2009 the Bilski matter was pushed to the Supreme Court to decide if the machine-or-transformation test is a proper test to determine patentability of business methods. The Supreme Court will rule on the case sometime in mid 2010. Upholding of Bilski will likely require all business method patent claims to be tied to a machine and require processes to either transform an article or be timed to a machine. More will follow after the Bilski decision later this year!

Copyright Infringement Harry Potter Style

A 36 page children’s book from a now-deceased and totally obscure British author may have lead to Harry Potter. Last week, the Associated Press reported that J.K. Rowling and her publisher are being sued for copyright infringement.

The estate of Adrian Jacobs, who died penniless in 1997, alleges that Rowling’s fourth book, “Harry Potter and the Goblet of Fire,” was lifted from “The Adventures of Willy the Wizard,” written by Jacobs in 1987. The trustee of Jacobs’ estate, Paul Allen, is suing for over $500 million pounds.

According to Rowling: “The claims that are made are not only unfounded but absurd, and I am disappointed that I, and my UK publisher Bloomsbury, are put in a position to have to defend ourselves.” Unfortunately for Jacobs’ estate, it will be hard to prove that Rowling did in fact plagiarize. Mere ideas are hard to copyright, and from the sound of it, that’s all Jacobs had. Wizard and magic lore is hardly unique intellectual property. Copyrights are given for the execution of a work.
Apparently, Allen’s attorney, Max Markson, has a different view. He was quoted saying he thinks it’s a billion-dollar case

Trademark Oppositions Cancellations Get Accelerated Case Resolution

If you know about trademark oppositions and cancellations before the Trademark Trial and Appeal Board (TTAB), then here is a new procedure that may be right for you. The TTAB has recently introducted Accelerated Case Resolution (ACR).

ACR is streamed line procedure used during an existing opposition and cancellation. It works like this: In the preliminary stages of a TTAB proceeding, the parties agree that only a small amount of evidence or testimony will be used, and that the overall record is not extensive. ACR is then requested from the TTAB. Generally, notice should be given to the TTAB during the required settlement and discovery conference of a proceeding which is held within 30 days of the close of pleadings. Disclosure and discovery schedules are tailored to fit ACR, and evidence and briefs are provided to the TTAB for review. A decision from the TTAB will be made within 50days of submittal. This is an incredibly short amount of time considering that some of may oppositions/cancellations have lasted more than 3 years.

The pro of ACR is that it can shorten a TTAB proceeding, and therefore the cost as well. So what type of case would be good for ACR? One example would be oppositions/cancellations where priority is not at issue and the parties are not relying on extensive testimony and documentary evidence. Many people are aware of summary judgment, and often want to go that route to expedite a case, and avoid a costly and lengthy trial. But summary judgment only works if there are no material facts in dispute (ie: no disagreements on evidence). With ACR, the TTAB will review any material facts in dispute, and issue a decision.

Probably the biggest issue with ACR is that the parties must stipulate that the Board can resolve any issues of material fact in lieu of trial.

Legalzoom Complaint, Again

In its nine years or so of business, Los Angeles-based Legalzoom.com has earned praise, awards, quite a bit of money, and most recently…a 5-million dollar class-action petition.

In 2008, a Missouri man, Todd Janson, used Legalzoom to prepare a Last Will and Testament. Perhaps dissatisfied with the service, Janson filed a petition against Legalzoom in the District court of Cole County, Missouri titled Todd Janson on Behalf of Himself and all other Missourians similarly Situated v. Legalzoom, Inc. In January 2009, a class-action petition was filed, which included Todd Janson and C&J Remodeling (and any other Missourians who had used Legalzoom since 2004). C& J had used Legalzoom to create Articles of Organization for their business. Todd Janson, et al. are seeking $5 million in damages from Legalzoom.

The plaintiffs argue that Legalzoom is not authorized to practice law in the state of Missouri. Legalzoom has responded with a pleading to take the case to the federal level, on the grounds that: (1) there are more than 100 people involved, (2) defendants and plaintiffs are from different states, and (3) according to Legalzoom’s calculations, the amount of money sought by the plaintiffs would be well over $5 million, when all Missouri Legalzoom users since 2004 are accounted for.

The outcome of this dispute may not be realized for some time, but the case has interesting implications for service-based online businesses. Poor service may be the real complaint Janson and his associates have, not the unauthorized practice of law. Certain statutes may need to be re-examined as technology continues to change the way business operates.

Legalzoom.com has an A+ rating with the BBB.

Orange County Trademark Lawyers New Office in Irvine

We our proud to announce the opening of our second location in Orange County in Irvine California. Our attorneys will extend the same trademark, patent, copyright, business and other Intellectual Property services at this location.

Chinese Trademarks Are More Important Than You Think

As a Los Angeles patent and trademark attorney, many of my clients ask about the possibility of getting their invention stolen when manufacturering in China. Sorry to scare you, but now you have something else to worry about. Recently, companies manufacturing in China have come across some costly and time-consuming trademark predicaments. It seems that certain players in the Chinese market are using the Chinese trademark system to swindle unsuspecting American companies.

These hucksters sell trademarks back to companies, manipulating the Chinese legal and trademark system. It works something like this: An American company decides to manufacture their product in China, and instructs the manufacturer to affix the American trademark. This company however fails to file a Chinese trademark application. A Chinese trademark trafficker then quickly registers a trademark (a duplicate version of the American trademark) with the Chinese trademark office. Then, with production already going on, this trademark trafficker appears on the scene. In order to either manufacture the product or export it after manufacture, the swindler must be paid off. Additionally, if the American company wants to switch manufacturers in China, someone must be paid.

Lately, Chinese trademark and patent laws have become a hot topic in the international business arena. It is important to know what you are getting yourself into if you are thinking of outsourcing or contracting there. Registering a Chinese trademark is crucial before any steps are taken towards manufacturing or production.