obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Archive for June, 2010

Bilski Decision Shows The Tension Between Fostering Innovation And Restraining Business Method Patents

by Orlando Lopez

Today, the US Supreme Court rendered its long awaited decision in Bilski v. Kappos.  The tension between fostering innovation and restraining business method patents, which is apparent during the oral argument, surfaces again in the opinion. The entire Court agreed that the machine or transformation test, which could hinder innovation, was not the sole test for patentability but only a clue to patentability. This returns the patentability question to the decisions of the court in Benson, Flook and Diehr (as suggested, among others, by the LegalOn-Ramp Amicus Brief, in which I was a co-author). Repealing the machine or transformation test, although a victory for fostering innovation, introduces uncertainty in the determination of patentability since the Benson, Flook and Diehr provide guidelines but not definite tests. Read the rest of this entry »

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CAFC Weekly: June 25, 2010

by Orlando Lopez

There was only one precedential opinion this week and it involved a patent related to a computerized method for administering variable annuity plans.  In Lincoln Natl v. Transamerica Life, the CAFC reversed the judgment of infringement.  Although Transamerica’s benefit riders required making scheduled payments even if the account value was exhausted, which was an element of the patent claim, there was no evidence that the payment was made by a computerized method.  On the contrary, the evidence indicated that a manual check was produced, and the claim at issue recited a computerized method.

After finding that Transamerica did not infringe, the CAFC did not consider whether the denial of Transamerica’s request to amend the complaint to include invalidity, due to lack of patentable subject matter after the CAFC’s Bilski decision, was erroneous.  By not considering that issue, the CAFC avoided considering the effect of its Bilski decision, in view of the expected (June 28, 2010) Supreme Court decision on Bilski.

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Zombie Copyrights Survive First Amendment Attack

by Bruce Jobse

Expressions of ideas, such as books, music, photographs, paintings, movies, etc. are protected by US and international copyright laws, including a number of trade treaties to which the US is a signatory party. Through one of these treaties, the Uruguay Round Agreements Act, the US enacted section 514 (17 U.S.C. 104A) which allows for the “restoration” of copyright protection for foreign works that previously had passed into the public domain due to various informalities. The copyright protection for these works was “dead,” but suddenly came back to life, much like an arising zombie with a missing nose or ear, dragging its leg and moaning something about restricting further derivative works. Upset at the possibility of being terrorized by droves of zombie copyrights looking for a feast of royalty payments, a group of conductors, musicians and publishers, who had previously relied on the dead state of copyright protection for these works, filed suit in the US District Court of Colorado alleging that the restoration terms were too broad and severe. The US District Court agreed with the terrorized plaintiffs, ruling that section 514 violated the plaintiff’s freedom of expression under the First Amendment. On appeal however, the US Court of Appeals for the Tenth Circuit reversed the US District Court decision and remanded the case with instructions to grant summary judgment in favor of the US government. Read the rest of this entry »

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"Any problem can be solved using the materials in the room."
Edwin Land, inventor of instant camera

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CAFC Weekly: June 18, 2010

by Orlando Lopez

One of the two precedential opinions of this week reminds us of the importance of keeping the chain of priority intact. The second opinion relates to the shielding, by the corporate structure, of employees and officers of a corporation from liability.

In Encyclopaedia Britannica v. Alpine, the importance of keeping the integrity of the chain of priority in a string or applications is underscored.  Read the rest of this entry »

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