Protection of Computer Software
- Scope of Software Copyright
- Exclusive Rights in Computer Programs
- Fair Use
- Is Software Patentable Subject Matter?
- Examination & Validity of Software Patents
- Infringement
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The ideas in the Lundgren dissent did not languish, as its author feared. Instead, they were soon picked up in another Board opinion, In re Comiskey, in which the Board of Patent Appeals and Interferences upheld an examiner's final rejection of certain claims to a method and system for mandatory arbitration involving legal documents, such as wills or contracts. Some of the claims recited only the bare concept of inserting arbitration clauses in all pertinent documents and referring disputes to arbitration. The Federal Circuit affirmed the Board decision finding these claims unpatentable. See In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007). The Federal Circuit relied on two main principles: the Supreme Court's exclusion of "abstract ideas" from the domain of patentable subject matter; and the notion that arbitration and other purely mental concepts are not within the "technological arts." On the latter point, the court said:
The very constitutional provision that authorized Congress to create a patent system, Article I, § 8, also limited the subject matter eligible for patent protection to the "useful arts." According to the Supreme Court, this constitutional limitation on patentability "was written against the backdrop of the [English] practices-eventually curtailed by the Statute of Monopolies-of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public."499 F.3d 1365, at 1374 (quoting Graham v. John Deere, 383 U.S. 1 (1966), at 5). The court did reverse the examiner's rejection of a handful of claims that covered more than the bare idea of a systematic arbitration program. These claims included technological elements—namely, computers and communications devices—that the more general claims did not. As to these claims, the court noted that the addition of standard hardware elements such as these to unpatentable components creates a prima facie case of obviousness, but it stopped short of invalidating the claims, instead remanding them to the PTO. Id., at 1380.
Shortly after Comiskey the Federal Circuit decided another § 101 case, In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), reh'g denied 515 F.3d 1361 (Fed. Cir. 2008). In Nuijten the court invalidated product claims to a signal (used for watermarking) encoded on an electromagnetic wave. The court held that such a signal was neither a "machine" nor a "manufacture" as those terms are used in § 101.
A third recent case, In re Bilski, is also causing some ferment in the § 101 area. Bilski involves a claim to method of hedging economic risk. The method was developed by a company that helps clients forecast and plan for energy costs, for example by predicting winter weather trends. The claims at issue in the case center on a very general scheme for identifying a specific risk and making an investment to offset the risk—e.g., investing in something whose value will increase in the event of high energy prices, to offset the higher costs of energy. The PTO Board of Appeals and Interferences upheld an examiner's § 101 rejection of claims to this method. See In re Bilski, avail. at http://www.uspto.gov/web/offices/dcom/bpai/its/fd022257.pdf. The applicant appealed to the Federal Circuit. After a three judge panel heard oral argument, the court as a whole decided to rehear the case en banc. See Order for Rehearing En Banc, Slip Copy, 2008 WL 417680 (Fed. Cir., Feb. 15, 2008). This Order was noteworthy for a number of reasons, most importantly that it asked the parties to submit briefs on the question whether it is appropriate to consider State Street Bank and its sweeping ruling on business method patents. The parties and a host of amici filed briefs and the oral argument took place on May 8, 2008. The scope of the questions for en banc consideration, and the intense level of amici interest, create the possibility that the Federal Circuit may make some important law in Bilski.
- Protecting Programs Through Trademark
- Compatibility and Standardization
- Trademarks and the Internet
Reversing the Trademark Trial and Appeal Board’s (“Board”) decision to cancel trademark registrations involving the professional football team, the Washington Redskins, the district court in Pro-Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (D.D.C. 2003) granted Pro-Football’s summary judgment motion. The court held that the Board’s finding that the trademarks “may disparage” Native Americans was not supported by substantial evidence and that the laches defense precluded the cancellation of the trademarks. The court, however, emphasized that its conclusion was based on the review of evidence presented to the Board and did not reflect the court’s view on whether the term Washington Redskins may be disparaging to Native Americans.
The court began its analysis by reviewing the Board’s two findings of fact--the linguists’ testimony and the survey evidence—under the substantial evidence standard. Regarding the linguists’ testimony, the court found that the Board had simply summarized undisputed testimony rather than weighing conflicting evidence. As for the survey evidence, the court determined that the survey merely represented current attitudes at the time the survey was conducted and could not be extrapolated to a representation of the views of the Native American population as a whole. Moreover, the survey did not provide information about the relevant period and was therefore irrelevant.
Next, the court examined the Board’s application of the legal principles to its findings of facts. Although the court acknowledged that substantial evidence supported the finding that “redskins” refers to the football team and also alludes to Native Americans, the court nevertheless concluded that the Board’s finding of disparagement was not supported by substantial evidence. According to the court, there was no direct evidence that the trademarks “may disparage” Native Americans when used in the context of the football club. Second, the Board’s conclusion of disparagement was based on assumptions not available on the record. The court pointed out three assumptions made by the Board: a) ascribing the views of the general public to the Native Americans, rather than presenting evidence of views of a “substantial composite” of Native Americans; b) finding the word “redskins” derogatory based on usage labels in half of the dictionaries, drop in the use of the word in the last half-century and survey evidence that did not include the relevant time period—none of which, according to the court, indicates that the word is derogatory in the relevant period and context; and c) extending the derogatory connotation of the word “redskins” to its use in the context of the football club because the media and fans use the trademark in a negative manner. Pointing out the flaw in the last assumption, the court stated that the views of the general public is irrelevant in determining whether the word “may disparage” a “substantial composite” of Native Americans.
Turning to the football club’s laches defense, the court first noted that the defense was available. Dismissing the Defendant’s contention that laches defense is unavailable where a public interest is involved the court declared that such a reading is an improper interpretation of a prior caselaw. The court also made a policy argument stating that in the absence of a laches defense a party could theoretically delay filing suit indefinitely, thereby engendering inequitable results. The court then examined the three elements of laches defense—substantial delay, notice and prejudice. Observing that the defendants had waited from over twenty-five years to two years since trademark registration (the two-year old trademark had been in public use for thirty years) and had twelve separate occasions of constructive notice when the trademarks were published and registered and actual notice resulting from public use of the trademarks, the court reasoned that the substantial delay and notice requirements of the laches defense were satisfied. The court found that the prejudice requirement was also met because of a presumption of economic prejudice when there is a long delay; further, there was undisputed evidence that Pro-Football had invested heavily in the marketing and distribution of its trademarks during the delay period.
> Sui Generis Protection of Computer Technology
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