eBay and MercExchange Settle Patent Infringement Suit

It was announced on Thursday that eBay, Inc., and MercExchange have settled their patent dispute that began back in 2001. According to the Washington Post news article (link below), eBay agreed in the settlement to purchase three patents from MercExchange and licensing other technologies which collectively allow eBay to continue to offer a number of fixed-price purchase options on its top online auction website. As noted within the Jayed.us article (link below), “A jury ruled in MercExchange’s favor in 2003, awarding $35 million in damages,” which was reduced by a judge to $25M and subsequently increased to $30M because of interest. This dispute eventually ended up in the U.S. Supreme Court, which ruled (opinion link below) that an injunction is not automatic just because an infringement of a patent has occurred. eBay issued a press release as well (link below), stating that "[w]e're pleased to have been able to reach a settlement with MercExchange," and that “[i]n addition to resolving the litigation, this settlement gives us access to additional intellectual property that will help improve and further secure our marketplaces."

Washington Post News Article: LINK
Jayed.us Article: LINK
U.S. Supreme Court Decision (PDF): LINK
MercExchange Patent Descriptions: LINK
eBay Press Release: LINK

Dudas Provides Congressional Testimony

On Wednesday, Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, testified as to the progress the USPTO has made over the last couple of years. According to the USPTO (link below), the testimony, provided to the House Judiciary Committee’s Subcommittee on Courts, the Internet and Intellectual Property, focused on a number of “hot topics” within the USPTO, including “patent and trademark quality and timeliness; hiring, retention and work-life offerings such as the USPTO’s award-winning telework program; global policy and enforcement initiatives; and the pending patent modernization legislation.” Specific accomplishments were also discussed, including a recent increase in patent and trademark production (21% and 41%, respectively), the increased levels of electronic patent and trademark applications, and reduced attrition of first-year patent examiners. During the hearing, Dudas stated that “[b]oth fiscal years 2006 and 2007 were record-breaking years for the USPTO,” and “[w]e have met or broken records for production, quality, hiring, teleworking, electronic processing and more.” Additional details regarding the testimony, including comments on the proposed patent modernization legislation, are provided at the link below.

USPTO Announcement: LINK

Foo Fighters Allege Copyright Infringement

In a recent lawsuit, the Foo Fighters allege that Marvel Comics, the company behind the Spider-Man and Fantastic Four movies, infringed two of its songs by using them within a television series trailer without permission. According to Paste Magazine (link below), the Foo Fighters, along with Roswell Records Inc. (the owner of the master recordings of “Best of You” and “Free Me” from the 2005 Foo Fighters album “In Your Honor), allege infringement by Marvel, First Serve International, Toonz Animation India and First Serve Toonz, as “substantial excerpts” of those two songs were used in a trailer for the new television series “Wolverine and the X-Men.” According to E! Online (link below), the lawsuit, filed in the Los Angeles Superior Court, states that the “Wolverine and the X-Men” trailer can be watched online, and that the two songs “were copied directly from the Foo Fighters’ sound recordings.” As noted by Contactmusic.com (link below), “[t]he Foos are reportedly seeking an unspecified amount in damages and attorneys' fees, in addition to an injunction preventing Marvel from using the songs in the future.”

Paste Magazine Article: LINK
E! Online Article: LINK
Contactmusic.com Article: LINK
Foo Fighters Official Website: LINK

Calendar of WIPO Events – March, 2008

As previously referenced by the DDIP blog, the World Intellectual Property Organization (WIPO) makes available a calendar of conferences, meetings, and seminars, in Geneva, Switzerland, and elsewhere, along with event documentation when available. The following international WIPO events are scheduled for March, 2008:

February 25 – March 8 – “WIPO Regional Capacity Building Workshop on Patent Drafting” (WIPO/IP/SIN/08) in Singapore, Singapore.

March 3-7 – “Committee on Development and Intellectual Property (CDIP): First Session” (CDIP/1) in Geneva, Switzerland. The draft agenda for the program is available HERE.

March 4 & 5 – “WIPO Inter-Regional Colloquium for the Judiciary on the Protection of Intellectual Property Rights” (WIPO/IPR/KRT/08) in Khartoum, Sudan.

March 10-12 – “Standing Committee on Copyright and Related Rights: Sixteenth Session” (SCCR/16) in Geneva, Switzerland. The draft agenda for the program is available HERE.

March 31 – “Assemblies of the Member States of WIPO: Forty-Fourth Series of Meetings” (A/44) in Geneva, Switzerland.

Additional documentation may become available as each session approaches.

WIPO Calendar Webpage (Current Month): LINK
WIPO Prior Event and Documentation Archive: LINK

WIPO Publishes New PCT Statistics

On Thursday, the World Intellectual Property Organization (WIPO) published a list of statistics related to global Patent Cooperation Treaty (PCT) patent application filings. As noted in the WIPO news release (link below), the first chart discusses the number of published PCT patent applications by company, with Matsushita (Japan) leading the pack with 2,100 published applications in 2006, with Philips Electronics N.V. (Netherlands) second with 2,041, and Siemens (Germany) third with 1,644. The remainder of the top 10, in order, include Huawei Technologies (China), Bosch (Germany), Toyota (Japan), Qualcomm (United States), Microsoft (United States), Motorola (United States), and Nokia (Finland).

Statistics regarding the number of applications by countries of origin are also provided, including final figures from 2003-2006, and estimated figures for 2007 as WIPO will continue to receive PCT applications during the first half of 2008 that were filed with national patent offices in 2007. For 2006, the top ten countries (and the number of PCT applications in 2006) include the United States (50,941), Japan (27,033), Germany (16,732), France (6,242), the Republic of Korea (5,944), United Kingdom (5,090), Netherlands (4,529), China (3,951), Switzerland (3,577), and Sweden (3,316). Statistics for the next five countries on the list, as well as a sum of all remaining countries, is also provided within the first chart, and a detailed breakdown by all countries is also provided near the end of the news release.

In addition, WIPO also compiled a list of the main fields of technology in which PCT applications were published from 2003-2007. For 2007, the top fields include telecommunications (15,751 applications), information technology (15,109), pharmaceuticals and cosmetics (13,936), analysis, measurement, and control technology (instruments field; 13,531), and medical technology (11,890). A total of thirty technological fields are provided within the full list.

WIPO News Release: LINK

USPTO Seeks Technological Achievement Award Nominees

The USPTO announced yesterday that it is seeking nominations from the public for innovators to receive recognition for their technological achievements. Each year our President awards the National Medal of Technology and Innovation (NMTI) to those winning leading innovators. According to the USPTO (link below), “[t]he honorees are chosen for their outstanding contributions to the nation's economic, environmental and social well-being through the development and commercialization of technological products, processes and concepts; technological innovation; and development of the country's technological manpower.” The deadline to nominate an individual, a group, a company, or a division of a company for the NMTI is May 30, 2008.

USPTO Announcement: LINK
USPTO NMTI Website: LINK
NMTI Nomination Guidelines: LINK
NMTI Nomination Form: LINK

Activision Pursues “DJ Hero” Trademark Registration

On the heels of the wildly popular “Guitar Hero” video game, Activision recently filed a trademark application with the U.S. Patent and Trademark Office for the mark “DJ HERO.” As reported by Trademork (link below), this appears to be related to the first peripheral aside from the gaming guitars to be pursued by Activision. U.S. Trademark Application Serial No. 77392527 (“DJ HERO”) was filed on February 8, 2008, including the description of goods of “Computer game software and related instruction manual sold together as a unit; interactive video game programs; computer game discs; downloadable software for use in connection with computer games; video game controllers; Interactive video game comprised of a CD or DVD sold as a unit with a video game controller” for class 009. According to the International Business Times news article (link below), the Guitar Hero franchise in North America has eclipsed over $1B in sales in just over two years. Although no official word has been released as to when the DJ Hero game system will hit the market, I hope that it is more fun than Bag Pipe Hero and Cowbell Hero.

Trademork Article: LINK
DJ HERO Trademark Application: LINK
Activision Guitar Hero Website: LINK
International Business Times Article: LINK

DDIP Blog Vacation

Posts on the DDIP Blog will resume on Wednesday, February 20th. Thanks for visiting!

Calendar of WIPO Events – February, 2008

As previously referenced by the DDIP blog, the World Intellectual Property Organization (WIPO) makes available a calendar of conferences, meetings, and seminars, in Geneva, Switzerland, and elsewhere, along with event documentation when available. The following international WIPO events are scheduled for February, 2008:

February 4 and 5 - “International Patent Classification (IPC) Workshop” (IPC/WK/GE/08) in Geneva, Switzerland. A separate seminar webpage is available HERE, along with the revised draft program.

February 6-8 – “IPC Union - Committee of Experts: Fortieth Session” (IPC/CE/40) in Geneva, Switzerland. Available information (hyperlinked in PDF format) includes the Draft Agenda, the Implementation of the Results of the Reform in the IPC, the Publication of IPC Versions 2007.10 and 2008.01 and Related Reclassification of Patent Files, the Master Classification Database Status Report, and the Consideration of the Composition of the Special Subcommittee for the Advanced Level of the IPC.

February 18-21 – “Standing Committee on Information Technologies - Standards and Documentation Working Group: Ninth Session” (SCIT/SDWG/9) in Geneva, Switzerland. Eleven documents are available at the seminar link.

February 18-21 – “WIPO Audit Committee - Eighth Meeting” (WO/AC/8) in Geneva, Switzerland.

February 21-23 – “WIPO National Specialized Symposium for Members of the Jordanian Judiciary” (WIPO/IP/JU/JO/08) in Dead Sea, Israel.

February 25-29 – “Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore: Twelfth Session” (WIPO/GRTKF/IC/12) in Geneva, Switzerland.

February 25 – March 3 – “WIPO Regional Capacity Building Workshop on Patent Drafting” (WIPO/IP/SIN/08) in Singapore, Singapore.

Additional documentation may become available as each session approaches.

WIPO Calendar Webpage (Current Month): LINK
WIPO Prior Event and Documentation Archive: LINK

USPTO Proposed FY2009 Budget Announced

On Monday, the USPTO announced its request of a $2B+ budget for FY2009, marking the first time the $2 billion level has been requested by the office. The FY2009 request of $2.075 billion represents an 8% increase over the FY2008 level of $1.916 billion, and as referenced within the USPTO announcement (link below), this budget proposal will support the anticipated hire of 1,200 patent examiners during that period and will allow for the expansion of web-based business transactions with the USPTO. Jon Dudas, the Under Secretary of Commerce for Intellectual Property, stated that “[t]he President’s budget request for 2009 will support the goals of the USPTO’s five-year strategic plan: optimizing patent and trademark quality and timeliness, improving intellectual property protection both domestically and abroad, and achieving organizational excellence.” Additional details regarding the budget request, including recent USPTO statistics for 2007, are included within the USPTO link below.

USPTO Announcement: LINK

Patent Reform Act Teleconference Scheduled for Today

Starting at 10:30AM today, the USPTO will be holding a conference call to discuss details regarding the Patent Reform Act of 2007. This teleconference, highlighted by Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, will include a discussion on the Bush administration’s position on S. 1145, noting that the administration does not support the legislation in its current form but is in favor of revising the patent system. According to the USPTO notice (link below), “The Administration opposes S. 1145 because it does not strike the right balance for all innovators,” and “[u]nless the provisions limiting inventors’ rights to obtain damages are significantly revised, the Administration believes the resulting harm to the U.S. intellectual property (IP) system would outweigh the bill’s many useful reforms.” In a letter from Nathaniel Weinecke of the office of the Assistant Secretary for Legislative and Intergovernmental Affairs for the U.S. Department of Commerce, to Pat Leahy, the Chairman of the Committee on the Judiciary (link below), the administration details its opposition to Section 4 of S. 1145 (“Right of the Inventor to Obtain Damages”), noting that this section “limits the discretion of the Federal courts in determining how damages are calculated to compensate a patent holder for patent infringement,” and that “such a dramatic change from current jurisprudence may have the unintended consequence of reducing the rewards of innovation and encouraging patent infringement.” Information for reporters to call in and listen to the teleconference is available at the first link below.

USPTO Notice: LINK
Bush Administration Letter: LINK

EP Translation Requirements to Ease on May 1st

By Bill Lyon, Ph.D.

The London Agreement, which was originally crafted in October, 2000, to curb the costs of acquiring patent rights in member countries of the European Patent Organization ("EPO"), was ratified on January 29, 2008, and will go into force on May 1, 2008. Currently, while the EPO will accept patent applications in one of its three official languages (English, French and German), upon grant the patent will need to be translated into the language of that specific country to effect ratification. Under the London Agreement, however, any member state having English, German or French as its official language agrees to waive the translation requirement of a patent which was granted in one of those languages.

In an estimate provided by the EPO, translation fees for a granted patent into another language would cost on average EUR 1,400. Considering that most granted European patents are ratified in several countries, it is estimated that this will amount to a considerable cost savings.

As of now, the provisions of this agreement will affect Australia, Belgium, France, Germany, Ireland, Luxembourg, Monaco, Switzerland, and the United Kingdom. Under Article 2 of the London Agreement, and in the case of a patent dispute, the patent proprietor must, at his own expense, supply a full translation of the patent to the alleged infringer and to the competent court. Inclusion of additional countries into this agreement beyond those listed above is still possible through agreement of the party country.

EPO News Article: LINK
London Agreement (PDF): LINK

Bill Lyon is a Practice Group Specialist with Ice Miller LLP, focusing his efforts on domestic and foreign patent prosecution.