Lighting up the law web pages these days is the lawsuit by the law firm Jones Day against BlockShopper LLC and two individuals associated with the website, for allegedly using Jones Day’s service marks and linking to its website in at least two articles discussing Chicago real estate transactions of Jones Day associates.  Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

Jones Day claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition. Jones Day also moved for a temporary restraining order (TRO), which the parties stipulated to, ordering defendants not to:

1. use Jones Day’s service mark;
2. use any content from or link to Jones Day’s website; or reference Jones Day in Blockshopper headlines.

BlockShopper.com is a web site that reports on real estate purchases in two upscale Chicago neighborhoods (as well as in Las Vegas, Palm Beach, and St. Louis).  It’s a little like the People Magazine of real estate web sites.  Postings generally appear something like:

Patent Lawyer Sells Condo in Metropolis

Jane Doe sold her two-bedroom, 2.1-bath condo at 123 Maple St. in Metropolis for $500,00 to John Smith.  Doe paid $10,000 for for it back in January 2005. Doe is a partner in the Metropolis office of West Coast law firm Reely, Big and Hat LLP. She specializes in intellectual property law for the firm, including patent litigation involved with the gardening arts. She joined the firm in 2006.

Apparently, in serving up info about purchases by Jones Day associates Dan Malone and Jacob Tiedt, BlockShopper used the name Jones Day to identify the employer of each of the two associates, and linked from each associate’s name to Jones Day’s web site. According to the complaint, the defendants used Jones Day’s name, posted information and pictures from the Jones Day web site and put links in the articles to the Jones Day web site.

Paul Alan Levy from Public Citizen describes the scenario thusly:

According to Jones Day, linking to its web site dilutes its trademark and creates a likelihood of confusion. But that is preposterous. The link is in connection with a comment on Jones Day; when a trademark is used to comment on the trademark holder, the use reinforces the association with the trademark holder, rather than blurring it, and besides use for commentary is expressly protected as fair use under the Lanham Act as amended in 2006. Moreover, nobody could visit the BlockShopper web site and think that it is sponsored by or affiliated with Jones Day, even if they follow the links from BlockShopper’s mention of Jones Day associates to Jones Day’s own web site. That is what web sites do — they link to other web sites (that’s what makes it a “World Wide Web”).

Blockshopper filed a motion to dismiss and public interest groups (Public Citizen and the Electronic Frontier Foundation) have filed an amicus brief in support of Blockshopper arguing that the trademark claims are barred by the First Amendment, which protects the right to publish truthful information even if the information is about a trademark holder and hence uses the trademark to convey the truth .

In response, Jones Day ups the ante by filing a response against the brief saying the judge should not consider the amicus brief because the groups are “partisan.” It also states that the groups should not be able to file the amicus brief because it doesn’t add anything beyond what the defendant has already filed– while simultaneously saying that the brief shouldn’t be allowed because it adds a new argument.

It is difficult to understand how such a well regarded, multi-national law firm could get caught up in such a no-win situation.  Unfortunately, Jones Day may have boxed themselves in.  It will be difficult to extract themselves from the suit without looking like they made a mistake getting into it in the first place even as they gain a growing body of negative press every day it continues.

(More at: Chicago IP Litigation Blog, Ambrogi, Legal Blog Watch, Citizen Media Law Project).

Posted September 30th, 2008 by Stephen Albainy-Jenei in Trademarks, Current Affairs
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Blawg Review #17 is up on Securing Innovation, the business blog of IP.com Inc. SInce September 29th is Día del Inventor in Argentina, this week’s Review is in commemoration of Hungarian inventor Laszlo Biro. Biro brought us the ballpoint pen 70 years ago this summer (designed in his garage in Buenos Aires).

After obtaining the patent rights to a ball pen, Marcel Bich introduced his own ball pen in France in December 1950 under the name BIC, a shortened, easy-to-remember version of his own name. In 2002, the BIC® Cristal® ballpoint pen entered the permanent collections of the Museum of Modern Art of New York (MOMA), at the Department of Architecture and Design. By 2005 BIC had sold its hundred billionth ballpoint pen. (Did you ever wonder where the BIC® logo comes from?)

The American Bar Association Section of Intellectual Property Law has launched Landslide™, a bi-monthly magazine that offers news and analysis on patents, trademarks, copyrights and related topics. Written by and for an audience of intellectual property lawyers, the magazine will cover this rapidly evolving legal specialization through an emphasis that includes business, technology, the arts, legislation and international developments.

In this IP-heavy edition of Blawg Review, we note that on the Patent Librarian’s Notebook, there’s a comparison of free patent databases.  Meanwhile, David Pearce at IPKat explains how the USPTO/EPO clogs up the prosecution highway with red tape. This test scheme will allow patent applications that have been examined and allowed in either the USPTO or the EPO to be fast-tracked in the other office.

We’re still trying to understand how some fruit now comes with an end-user license agreement to protect the intellectual property (Jeremy Telman at the ContractsProf Blog).

Posted September 30th, 2008 by Stephen Albainy-Jenei in Blawg Reviews
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It’s not often that a fiction thriller comes along featuring a patent attorney as the lead character so I was anxious to see such a combination in Paul Goldstein’s novel “A Patent Lie.”  Labeled as “Owning the truth is a matter of life and death,” the book melds technology, ethics and law.

Paul Goldstein is an intellectual property law professor at Stanford Law School and the author of Goldstein on Copyright and Copyright, Patent, Trademark And Related State Doctrines.  A Patent Lie is the second novel by Goldstein (his first is Errors and Omissions) and features a plot that unfolds around forty-seven year old attorney Michael Seeley, a solo practitioner patent attorney in Buffalo, NY.

When his estranged younger brother, Leonard, stops by to see him, we find that Leonard works as the chief medical officer for a small biotech company that has developed and patented a promising AIDS vaccine (AV/AS).  Leonard wants Michael to step in to help but his motivation is left unclear.

We learn that the company, Vaxtek, has filed a patent infringement lawsuit against a traditional big-pharma drug company named St. Gall Laboratories.  But, Vaxtek’s lead attorney has seemingly committed suicide in a nasty “threw himself in front of a train” incident. Leonard now wants his brother to take over this case — presumably because of familial bonds and not because of lack of lawyers in the world.

Putting aside the various family problems between the two siblings, Michael goes out to San Francisco to try the case with the assistance of another attorney, Chris Palmieri.  Michael’s preparation for the trial and the subsequent trial make up the meat of the novel.  Fortunately, the book is an easy read with a David vs. Goliath story line that keeps you engaged.

“A Patent Lie” is a good legal thriller with a variety of characters to keep you engrossed including love interest Lily Warren, a vaccine researcher, supposed inventor of the AIDS vaccine Alan Steinhardt and Joel Warshaw, the owner of Vaxkek.  The story weaves together patent inventorship along with questions on immigration — a source of many of the top biotech scientists in the U.S.

In many ways the story is, like patent attorneys in general, intellectual and methodical in its execution so it sometimes gets bogged down in more legal information than some readers may want from their fiction.  However, I suspect purchasers of this book will be those looking for books with plenty of substance to enjoy.

If you want patent law in more pulp fiction packaging, try Mission: Impossible 2 where IMF member Ethan Hunt must stop the villainous Sean Ambrose, a former fellow-agent gone bad who’s trying to make billions of dollars by unleashing a deadly virus on society while holding the patent on the antidote.

In the only movie I can think of where the super-villain in a (so-called) patent troll, director John Woo delivers all the explosions, bullet fire, car crashes and adrenaline-fueled visuals without being bogged down with details like plot lines and dialog.

For what it’s worth, the only other fictional story about a patent attorney I found is “Notes of a Patent Attorney: The Wally Mason Stories,” (Paperback) by Brian C. Coad.

Posted September 29th, 2008 by Stephen Albainy-Jenei in Book Reviews
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The Starbucks Coffee Company has apparently decided not to protest the logo of the Rat City Rollergirls, a Seattle-based roller derby league.  According to Starbucks, the company had concerns about a “very similar look and feel of the logo.”

Under trademark law, Starbucks had asked for an extension to file an official objection to the Rollergirls’ logo with the U.S. Patent & Trademark Office.  However, since Starbucks has not follow-up with a challenge and and their trademark inquiry has been automatically terminated.

We won’t know why Starbucks dropped the issue but it probably has something to do with the (lack of) likelihood of confusion between a coffee shop and what amounts to female “wrestling on wheels.”  But, Starbucks has been know to be aggressive in protecting its mark and has sued plenty of others over trademark issues.

Earlier, Starbucks has won a trademark infringement suit against a Chinese company which opened a chain of coffee shops under the name Xingbake - Chinese for Starbucks.  The Chinese court ordered Shanghai Xingbake to stop using its name, to pay RMB500,000 ($62,000) in compensation to Starbucks and to issue an apology in a local newspaper.

In another case, a federal court ruled that Sam Buck had change the name of her Astoria, Oregon coffee shop and pay hundreds of thousands of dollars to Starbucks to cover its legal fees following a legal battle that lasted three and a half years.

The Rat City Rollergirls have, by default, the green light to use their trademark and will not have to change their logo.

More at Slog.

Posted September 28th, 2008 by Stephen Albainy-Jenei in Light Roast, Current Affairs
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R.I.P. Heller

The San Francisco law firm Heller Ehrman will formally vote today to dissolve, chloroforming a law firm that survived earthquakes, a depression, wars and social upheavals but was unable to compete in a new global economy. An overview of “What have we learned from this collapse of a century old, over $500-million in revenue firm” is presented by Adam Smith, Esq.  The Wired GC also reports on Law Firm Mergers: Bridesmaid Revisited.

Doctor Perks

In a preemptive strike against likely regulations to curb influence of money on medical research and practice, the NY Times reports that two pharmaceutical companies say they will begin publicly reporting payments to doctors. Eli Lilly & Company announced that starting next year it intended to post an online database of all its payments to doctors for speaking and consulting services. The postings will likely include the names of the doctors, or will provide some other identifying information about them, along with the reason for the payments.  Merck & Company said that it would disclose speaking fees it pays to doctors, also beginning in 2009.

In other news related to medical perks, The Wall Street Journal reports on a federal lawsuit filed by a former company lawyer claiming Medtronic allegedly furnished spine surgeons illegal incentives including visits to strip clubs, undeserved patent royalties, and lavish trips.  According to the lawsuit, Medtronic used the perks to encourage spine surgeons to use its spinal products, including its Infuse Bone Graft. Senator Charles Grassley (R-Iowa), who has been investigating whether Medtronic has been using illegal kickbacks to encourage off-label use of the Infuse Bone Graft, has repeatedly asked Medtronic to supply an un-redacted copy of the Memphis lawsuit.  So far, the company has refused to do so.

The ‘Wearing Down Examiners’ Fallacy

Just a Patent Examiner has a rebuttal to the argument that patent reform is needed to prevent applicants from “wearing down” the Examiners.  The theory is that by taking advantage of (or abusing) the unlimited continuations available to applicants, applicants can wring an undeserved allowance from an examiner simply by refusing to abandon the application.  According to JAPE, this is wrong.  Every time an applicant files an RCE (or a straight continuation), the examiner receives a count for the express abandonment, and another count for the first action after RCE.  It also makes the Examiner’s job easier:  “Speaking for myself, examining a continuation really does give me a serious head start.”

Barack Obama In 18 Science-Related Questions

Barack Obama recently answered 18 science-related questions for Nature (John McCain’s campaign declined).

Excerpt: What would you do to help restore impartial scientific advice in government?

Obama: I will restore the basic principle that government decisions should be based on the best-available, scientifically valid evidence and not on the ideological predispositions of agency officials or political appointees.

In addition he propose to:

• Strengthen the role of the President’s Council of Advisors on Science and Technology (PCAST) by appointing experts who are charged to provide independent advice on critical issues in science and technology; and
• Restore the science integrity of government and restore transparency of decision-making by issuing an Executive Order establishing clear guidelines for the review and release of government publications, guaranteeing that results are released in a timely manner and not distorted by the ideological biases of political appointees.

McCain has similarly pledged to fill key technical positions in his administration with qualified scientists and engineers, including having a science adviser working directly with the president.  Obama’s answers to additional questions (on topics including biosecurity, the nuclear weapons laboratories and US participation in international projects) can be found here.

Posted September 26th, 2008 by Stephen Albainy-Jenei in Friday Round-Up, Current Affairs
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We don’t usually plug movies around here but not too many movies have patent infringement as the major plot line.  Universal Pictures’ upcoming film titled Flash of Genius, starring Greg Kinnear, Lauren Graham, Dermot Mulroney and Alan Alda, tells the story of the landmark patent case of inventor Robert Kearns.

Billed as educational while also inspiring and entertaining, the early reviews have been positive.  The story is based on the true story of college professor and part-time inventor Robert Kearns’s (Greg Kinnear) long battle with the U.S. automobile industry and his fight to receive recognition for his invention.  Kearns took on a battle that nobody thought he could win.

Kearns invented and patented the intermittent windshield wiper mechanism for use in light rain or mist and tried to license it to the big automakers. They all rejected his idea and then some went ahead and put intermittent wipers in their cars beginning in 1969. In 1967, he received the first of more than 30 patents for his wipers.   He sued Ford in 1978 and Chrysler in 1982 for patent infringement.

Ford argued that Kearns’ patents were overly broad and therefore invalid.  In 1990, a jury decided that Ford infringed on Kearns’ patent, though it concluded the infringement was not deliberate. Ford had contended the patent was invalid because the windshield system contained no new concepts. But Kearns argued a new combination of parts made his invention unique.

That jury failed to reach agreement on how much he should be awarded, and another jury later ordered Ford to pay Kearns $6.3 million, trimmed by a judge to $5.2 million. To settle the case, Ford agreed to pay $10.2 million and to drop all appeals.  Chrysler ended up paying Kearns $18.7 million plus interest.

It is noteworthy that Kearns did not want to just collect license fees (what some would call a patent troll today) but instead wanted to be a manufacturer of the devices and supply that system to the automotive industry.  When Chrysler appealed to the Supreme Court, it ruled that Kearns was entitled to the money but rejected his argument that Chrysler should be prohibited from using his design

Interestingly, intermittent wipers came about after Kearns was hit in his left eye by a champagne cork on his wedding night in 1953. Later, Kearns was driving his Ford Galaxie through a light rain, and the constant movement of the wiper blades irritated his already troubled vision. He modeled his mechanism on the human eye, which automatically blinks every few seconds.

Some of the patents at issue:

• United States Patent 3,351,836, Windshield Wiper System with Intermittent Operation.
• United States Patent 3,602,790, Intermittent Windshield Wiper System.
• United States Patent 4,544,870, Intermittent windshield wiper control system with improved motor speed.

See the Flash of Genius trailer here. See more “flash of genius” here.

Posted September 25th, 2008 by Stephen Albainy-Jenei in Current Affairs
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It appears that no matter who wins the presidential election this November, both Barack Obama and John McCain back expanded use of generic drugs as a way to lower drug costs,  According to their advisers, both campaigns have pledged their support to help create a market for generic biotech drugs or biosimilars.

As a part of their respective strategies to contain healthcare costs, both candidates want shorter exclusivity periods for branded biologics.  When generic biologic treatments (biogenerics) find a pathway in the U.S., the introduction of a biogenerics will put a serious damper on biopharmaceutical revenues.  I say when and not if since the government is the largest consumer of medical care via medicare and medicaid and given the fact that sales of biotech drugs were $40.3 billion last year.

The sticking point is (in general) that the brand name drugmakers and generics are unable to agree over just how long a biotech drug should be on the market before a generic drugmaker can market a generic. The Biotech Industry Organization has called for 14 years of market exclusivity, while  generic makers want the period limited to no more than five years of protection.

Not to be confused with patents, data exclusivity is the period after the FDA approves a product during which an imitator can’t rely on the innovator’s clinical data for safety and effectiveness. It can run during and longer than the period of patent protection.

The generic and biotech drug industries have spent a lot of cash lobbying Congress over how generic biotech drugs should be approved although McCain has not been the the sector’s favorite in terms of donations.  This is probably because McCain has also argued for re-importation to save money and he voted against the expansion of Medicare to include a drug benefit because it didn’t allow direct price negotiations by the government and because the program covers too many people.  You can see a complete side-by-side comparison of healthcare policy positions here.

The Center for Responsive Politics reports that McCain has received $39,797 in donations from pharmaceutical manufacturers. That puts him behind Obama ($154,710), Clinton ($140,544), Mitt Romney ($103,825), Rudy Giuliani ($91,550) and even Chris Dodd ($68,200)

Unlike traditional chemical drugs, biotech companies currently face no generic competition in the U.S. because the Food and Drug Administration lacks authority to approve copies of biotech medicines. Generally, biotech drugs are more complicated than regular drugs because they are made from living cells or bacteria.

For a generic drug manufacturer to win approval of a generic version of a traditional prescription drug, the product must have the same active ingredient, strength, dosage form and route of administration as the original drug. This means that generic drugs are the exact same chemically as their brand name counterparts and they act the same way in the body.

Such a process is not possible with biologics. Biologics manufacturers must ensure that the manufacturing process remains the same over time by controlling the source and nature of starting materials and controlling the manufacturing process. When a follow-on biologic is created, it requires a new manufacturing process with new starting materials. As a result, it will produce a product that is different from and not therapeutically equivalent with that of the brand name biologic.

In an earlier proposed update in the regulatory pathway for FDA approval of follow-on biologics, the Senate’s Senate Health, Education, Labor and Pensions HELP Committee gave the thumbs up to the Biologics Price Competition and Innovation Act of 2007 (S. 1695), which would address the scientific, regulatory and legal issues involved in bringing generic biologics to the marketplace.  See also H.R. 5629: Pathway for Biosimilars Act.

The legislation includes standards for the FDA to approve follow-on biologics as well as a period of exclusivity for the brand name drug company. The Act amends section 351 of the Public Health Service Act to provide for an approval pathway for safe biosimilar and interchangeable biological products (relying in part on the previous approval of a brand product):

• A biosimilar applicant is required to demonstrate that there are no clinically meaningful differences in safety, purity and potency between its product and the brand product. A demonstration of biosimilarity includes analytical data, animal testing and one or more clinical studies, unless such a requirement is determined by the FDA to be unnecessary.
• The Act provides incentives for the development of both new life-saving biological products and interchangeable biosimilar products: 12 years of data exclusivity for the brand company during which a biosimilar product may not be approved, and 1 year of exclusivity for the first interchangeable biological product.
• The biosimilar applicant must provide its application and information about its manufacturing process to the brand company. A series of informational exchanges then occur in which the biosimilar applicant and the brand company identify patents in question and explain their views as to their validity or infringement.

Earlier, BIO released a set of principles to guide the development of a pathway for the approval of follow-on biologics. BIO also developed a detailed rationale supporting the need for substantial data exclusivity. Meanwhile, generic manufacturers expressed concern that a 12 year exclusivity for the brand company is too long.

This issue will continue to be hotly debated.

See Primer for Follow-On Biologics.

Posted September 24th, 2008 by Stephen Albainy-Jenei in Generic drugs, Biogenerics, Biotech
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Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office has (proudly?) highlighted the fact that the allowance rate for patents is currently 42%.  This is in contrast to allowance rates in excess of 70% just eight years ago.  So, did patent applications really get that much worse in just a few years?

Also, the percentage of Board of Patent Appeals decisions in which the examiner is affirmed or affirmed in part has increased from 51% to 69%. Finally, since the pre-appeal brief program was established in midyear 2005, the percentage of applications reviewed under the program in which the examiners action is deemed correct has increased from 45% to 56%.

The drop in the approval rate of patent applications has increased the need for filing appeals, making patent protection more complicated, expensive and difficult to obtain.  In response to the changing winds, Prof. Kayton’s Patent Resources Group is introducing a new comprehensive course designed to train professionals to effectively manage appeals to the USPTO.

The course, entitled “When, Why and How to Effectively Appeal to the USPTO Board of Appeals and Interferences,” will teach attendees when to file an appeal to the USPTO, considering the nature of the examiner’s rejection(s) and the legal and technological issues involved.

The course rolls out on October 18 during Patent Resources Group’s upcoming Advanced Courses program in Santa Ana Pueblo, N.M.  The course will be taught by William F. Smith, who was an Administrative Patent Judge on the Board for 19 years.

The course comes at an opportune time, with the BPAI’s new rules going into effect in just a few months.  This course could help patent law practitioners save their companies millions of dollars in appeals prosecution.

Posted September 23rd, 2008 by Stephen Albainy-Jenei in Conferences
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