Charles R. Macedo is a partner at Amster, Rothstein & Ebenstein LLP, and the author of 
The Corporate Insider’s Guide to US Patent Practice, which provides a basic understanding of patent practice in the United States as it relates to both obtaining and enforcing patents. Macedo’s practice specializes in all facets of intellectual property law including patents, trademarks and copyrights. In the article below he looks at the Tiffany v. eBay case. Read his other OUPblog posts here. [FN: The author wishes to thank Michael J. Kasdan for his thoughtful comments on this blog entry]
One of my favorite parodies is Weird Al Yankovich’s song, “I Got It On eBay.” It reminds me of the largest garage sale outlet ever conceived, where one person’s garbage becomes another person’s gold. Anyone can hawk their old things (usually at a discount), but perhaps at a better price than one could expect by offering it on their front lawn on a sunny weekend afternoon in May.
Unfortunately, not every item sold on eBay is authentic. The large numbers of counterfeit items is a source of consternation to purveyors of authentic luxury items, apparel and consumer goods.
Over the past few years, a series of litigations have been commenced by luxury good manufacturers (such as LVMH and Tiffany and others) against eBay, seeking to hold eBay liable for damages associated with actual counterfeit sales made through its website. These cases raise the important questions of whose burden it is to police eBay for counterfeit items, and whether eBay should pay damages associated with actual counterfeit sales made through its website.
The results of these cases have been dramatically different. Some courts, most notably in France, have found that eBay should bear significant responsibility when counterfeit items are actually sold on its websites. Other courts, most notably the Federal Court in New York, have found that the precautions eBay has taken are sufficient and place a heavier burden on the brand owners to police their own marks.
In my own parody of Charles Dicken’s A Tale of Two Cities, I previously authored an article comparing the French and New York treatment of this issue entitled “eBay: A Tale of Two Defenses”, IP Law360, August 22, 2008 (available at www.arelaw.com).
On April 1, 2010, the U.S. Court of Appeals for the Second Circuit (located in New York City) weighed in on this issue, affirming for the most part the decision that eBay’s activities (at
Charles R. Macedo is a partner at Amster, Rothstein & Ebenstein LLP, and the author of The Corporate Insider’s Guide to US Patent Practice, which provides a basic understanding of patent practice in the United States as it relates to both obtaining and enforcing patents. Macedo’s practice specializes in all facets of intellectual property law including patents, trademarks and copyrights. In the article below he shares advice for patent protection. Read his other OUPblog posts here. [FN: The author would like to acknowledge the assistance of Norajean McCaffrey and Marion Metelski in preparing this Blog entry]
From 1998 until about a year ago, the law on what type of inventions could be the subject of patent protection seemed pretty clear. If a claimed invention produced a “useful, concrete and tangible result”, the invention was deemed patent-eligible subject matter. Over the past few years, that settled law began to be questioned, and in 2008 the U.S. Court of Appeals for the Federal Circuit threw out that test, and invoked a different, more restrictive “machine-or-transformation” test. Last November, the Supreme Court heard arguments in Bilski v. Kappos, where the Supreme Court for the first time in decades is expected to clarify the standard for what processes will be deemed patent-eligible. In prior Oxford Blogs, I addressed some of the questions raised by the Justices at the oral arguments.
While we wait for a decision, life continues to move on, and difficult decisions need to be made on how to proceed with efforts to obtain patent protection in this area. To help guide potential patentees during this interim period, I have put together, with colleagues of mine at Amster, Rothstein & Ebenstein LLP, the following recommended interim steps to be implemented in patent prosecution involving business-related and computer-related inventions in order to minimize risk for the future and increase the likelihood of a patent issuing and ultimately being enforceable down the road.
As a general rule, if possible, it is best to conform to the PTO’s positions on patent-eligibility. By conforming to the PTO’s positions, an applicant is more likely to both expedite a patent application’s likelihood of issuance, and probably be within a safe harbor of what processes will ultimately be deemed patent-eligible.
*Include disclosure to tie the invention to a computer or other machine. For example, if the invention is related to a financial service product which is electronically traded, disclose the computer system used to electronically trade the product. If the invention is related to a product which requires a complex calculation, disclose the computer system that performs the calculation as well as the algorithm used in the calculation.
*Don’t claim software as software. Software can instead be claimed as programming stored on a computer readable medium that is run on one or more processors. Process claims which act on various parts of the computer syste
Charles R. Macedo is a partner at Amster, Rothstein & Ebenstein LLP, and the author of The Corporate Insider’s Guide to US Patent Practice, which provides a basic understanding of patent practice in the United States as it relates to both obtaining and enforcing patents. Macedo’s practice specializes in all facets of intellectual property law including patents, trademarks and copyrights. In the article below he looks at “patent worthiness.” Read his other OUPblog posts here.
Speed Dating is not the only issue that our nine Justices of the Supreme Court raised on November 9, 2009 to determine what types of processes should be entitled to “patent worthiness.” Justice Scalia wanted to know why, if the patent laws were intended to cover broad processes, weren’t there any patents filed in the 1800s relating to training horses.
At the time, as Justice Scalia rightly observed, the American economy was completely dependent on horses. In fact, during the late 19th Century commerce came to a standstill when approximately 99% of all horses in America contracted equine influenza. According to Greg Sabin’s February 13, 2009 article, “Nightmare on Wall Street: 4 Other Times Our Economy Tanked“, at the height of the pandemic “as many as 20,000 businesses failed, a third of all railroads went bankrupt, and unemployment spiked to almost 15 percent.”
Not surprisingly, as Justice Scalia suggested, there were many U.S. Patents issued in the late 1800s that taught different methods of training or breaking horses:
* U.S. Patent No. 247,296, to G.W. Blake, entitled “Harness” (patented September 20, 1881);
* U.S. Patent No. 381,745, to H. C. Woodnutt, entitled “Device for Assisting in Training Horses” (patented April 24, 1888);
* U.S. Patent No. 453,727, to H. Sample, entitled “Apparatus for Treating or Taming Horses” (patented June 9, 1891);
* U.S. Patent No. 478,513, to C.C. Kelly, entitled “Apparatus for Training Animals” (patented July 5, 1892); and
* U.S. Patent No. 545,228, to J.W. Green, entitled “Horse-Breaking Apparatus” (patented August 27, 1895).
While admittedly none of these patents claimed a method of training or breaking a horse, they all obtained patent protection for such methods by claiming the apparatus to do it.
There are various explanations of why these patents claimed apparatus instead of methods:
* In the 1800s, most patents were drafted in the form of apparatus or system claims, and not method claims, although the law allowed for method claims in the form of “arts.”
* It was much easier to detect infringement of an apparatus that was sold than to detect a method of performing acts. Thus, not surprisingly, one would be less likely to invest in method claims.
* Perhaps more importantly, the law was in flux as to what type of method claims were available. For example it was not until 1909, in Expanded Metal Co. v. Bradford, 214 U.S. 366 (1909), that the Supreme Court made clear that patent eligible method claims did not merely need to have chemical transformations, but could also include mechanical transformations.
Indeed, when the 1952 Patent Act was adopted, the law was drafted to define patent-eligible methods broadly. See 35 U.S.C. § 100(b). Thus, perhaps Justice Scalia would find it interesting to note that since the Act was enacted, many patents have issued which claim methods of training animals (including horses):
* U.S. Patent No. 3,099,248, to J.K. Giles et al., entitled “Methods of Training Horses” (patented July 30, 1963) (claiming “a method of breaking and training horses preparatory to racing”);
* U.S. Patent No. 5,566,645, to T.H. Cole, entitled “Animal Training Method and Apparatus” (patented October 22, 1996) (claiming “[a] method for training animals”);
* U.S. Patent No. 6,311,645, to J.S. Brown, entitled “Animal Training Method and Apparatus” (patented November 6, 2001) (claiming “[a] method of training an animal”);
* U.S. Patent No. 6,352,053, to D. Records et al., entitled “Apparatus and Method for Animal Testing and Training” (patented March 5, 2002) (claiming “[a] method permitting an observer to determine the bucking propensity of an animal such as a bull or horse”);
* U.S. Patent No. 6,568,940, to M. Mack, entitled “Equestrian Training Method” (patented May 27, 2003) (claiming “[a] method for equestrian training”);
* U.S. Patent No. 6,602,209, to D.H. Lambert et al., entitled “Method and Device for Analyzing Athletic Potential in Horses” (patented August 5, 2003) (claiming “[a] method for predicting potential performance in a selected racing or training animal”);
* U.S. Patent No. 7,107,939, to L.J. Lady, entitled “Animal Training Apparatus and Method” (patented September 19, 1996) (claiming “[a] method for training a four-legged animal”); and
* U.S. Patent No. 7,331,310, to K. Sersland et al., entitled “Domestic Animal Training Method” (patented Feb 19, 2008) (claiming “[a]n animal training method”).
Turning back the patent law to the uncertainty of the 1800s, when our economy was based on agrarian and early industrial technology, is not what our nation needs in this time of economic crisis.
The point is that any subject should be available for patent protection, whether it is Speed Dating, Horse Training, or Hedging Risk, so long it does not claim the subject in an abstract manner.
Charles R. Macedo is a partner at Amster, Rothstein & Ebenstein LLP, and the author of The Corporate Insider’s Guide to US Patent Practice, which provides a basic understanding of patent practice in the United States as it relates to both obtaining and enforcing patents. Macedo’s practice specializes in all facets of intellectual property law including patents, trademarks and copyrights. In the article below he looks at speed dating in a whole new light.
On Monday, November 9, 2009, the nine Justices of the US Supreme Court heard oral argument in the case of Bilski v. Kappos. This case, involving what many think to be the dull and arcane subject of patent law, can have a profound effect on the US economy, including potentially allocating research funds and investments and limiting what information our society will learn through the use of patents.
In the US, a patent can be granted to the first and true inventor(s) of a novel (new) and non-obvious invention. A patents provides a limited right to exclude others for a limited period of time, in exchange for telling the world how to practice the claimed invention. In other words, if the inventor teaches the rest of society what he or she knows, our government gives him or her an exclusive window of time during which to commercialize that invention. The assumption of the patent law is that granting a patent will foster innovation in two significant ways: (1) by encouraging investment in exchange for the limited monopoly rights, and (2) by providing disclosure of what might otherwise be maintained in secret and/or forgotten.
The issue the Supreme Court is deciding in Bilski is what types of inventions are “patent worthy” (as Elaine in Seinfeld might have phrased it), and what types of inventions do not even get considered for a patent. This debate is so important that apparently it is rumored that more amicus curiae briefs (including a submission prepared by me) were submitted to the Supreme Court than any other patent case in US history.
In an effort to divine where to draw the line on patent eligibility, the Justices posed a variety of hypothetical inventions to test patent worthiness using a proposed rule from the Appellate Court, to see whether that Court got the right answer. As an apparent example of an invention that should not be patent worthy, Justice Sotomayor, the newest member of the Court, is crediting with asking “why not speed dating?” [Court observers note that the transcript may be in error as to whether she said “speed dating” as reported in the media or “speaking”, but “speed dating” is a more interesting hypothetical].
In response to Justice Sotomayor, I say, “why not?” A brief review of Wikipedia on the subject, as it is at least in Wikipedia’s eyes deserving of its own web page, shows that “Speed dating is a formalized matchmaking process or dating system whose purpose is to encourage people to meet a large number of new people.” Certainly, this is a worthy goal for society to encourage.
“Speed dating” (two words with a space, in contrast to the single word which is a registered trademark of Speeddating Foundation., see US Trademark Registration No. 2,463,420) is a recent innovation. According to Wikipedia, “the first speed-dating event took place at Pete’s Café in Beverly Hills in late 1998” and “several commercial services began offering secular round-robin dating events” thereafter.
Many different techniques of speed dating have developed, with different themes and rules, all with the lofty goal of introducing two hopefully compatible people, who might not have otherwise met, in a time efficient manner. Each has its own process – a series of steps performed – many of which have proven profitable for their organizers and the individuals who pay to participate in these events.
It is not just Wikipedia that has found the topic worthy of investigation: the University of Pennsylvania and others have studied the events, and published their research findings. Further, pop culture has featured the concept in television shows like Sex in the City and in movies like Hitch.
Finally, perhaps Justice Sotomayor will be surprised to learn that the US Government has recognized that, at least when a speed date was tied to a computer in a manner conceived by Mordechai Teicher, the invention was entitled to patent protection in US Patent No. 7,305,398, entitled “Apparatus and Method for Managing Social Games”.
