For attorneys, this is the one annual conference that IP lawyers cannot afford to miss. Now in its 25th anniversary year, the Annual Intellectual Property Law Conference of the ABA Section of Intellectual Property Law provides a gathering of the foremost authorities on the state of intellectual property law, including judges, government officials, in-house counsel, academics, and private practitioners. The conference is April 7-10, 2010, at the Crystal Gateway Marriott in Crystal City (Arlington), Virginia.

Pick up an entire year’s worth of CLE credits during the 2 ½ days of quality IP programming on the issues critical to your practice. Some program highlights include:

• The future of patent reform
• ITC IP mediation project
• Google books settlement
• Defending depositions in trademark cases
• Duty of disclosure to USPTO
• Patent damages
• Opinion of counsel
• Legal aspects of social media marketing
• Biosimilars
• Venue transfer & forum selection
• Interfacing with clients

The conference will also feature ample opportunities to network with your IP colleagues, whether at our Young Lawyers Welcome Reception, Corporate Counsel Reception, Women’s Networking Dinner, or the popular reception at the Dolley Madison House at the U.S. Court of Appeals for the Federal Circuit. In addition, a very special 25th Anniversary Gala Dinner with entertainment and dancing is planned to fete a quarter century of this preeminent conference.

Registration details will be available on the website soon.

Back in 2007, Fenner Investment Ltd. sued Microsoft, Nintendo and Sony for infringement of U.S. Patent No. 6,297,751, relating to low voltage joystick port interfaces. Claim 1 is reproduced below:

1. An interface between a joystick device having a first source voltage and
a processor, comprising:
a Resistor-Capacitor (RC) network, connected to the joystick device, said
RC network having a capacitor that generates an analog joystick position
measurement signal; and
an interface circuit having a second source voltage that is lower than the
first source voltage, including
a buffer circuit, in a first operation mode of said interface, receiving
said analog joystick position measurement signal, outputting a first logic state
as a digital signal before said analog joystick measurement signal exceeds said
predetermined threshold, and outputting a second logic state as said digital
signal after said analog joystick measurement signal exceeds said predetermined
threshold; and
a pulse generator generating a pulse based on said digital signal in said
first operation mode of said interface, a width of said pulse representing a
coordinate position of said joystick device, the capacitance value of said
capacitor being a function of said predetermined threshold that prevents
deviation of the width of said pulse from expected values.

In 2009, the U.S. District Court in the Eastern District of Texas held in favor of the defendants, finding that summary judgment was appropriate with respect to both the issue of direct infringement and and the issue of the doctrine of equivalents. A summary of the issues and the District Court's decision can be found here.

Subsequently and as noted here, Fenner Investments filed a notice of appeal in the U.S. District Court for the Eastern District of Texas on July 15, 2009. Specifically, Fenner appealed the final order granting summary judgment of noninfringement to Microsoft and Nintendo made in March 2009 and an August 2008 opinion interpreting the patent claim language at issue in the case.

Unfortunately for Fenner Investments (and fortunately for the defendants), the Federal Circuit issued its opinion on March 15, 2010, upholding the District Court's decision. In addition to affirming the District Court's findings, the opinion also indicates that the Federal Circuit does not address Fenner Investments' arguments with respect to the construction of the term "processor." The opinion does not provide an explanation as to why Fenner Investments' arguments were not addressed by the court. The opinion can be found here.

On Friday, March 5, 2010, the U.S. District Court for the Northern District of California granted Sony’s motion for summary judgment in Bissoon-Dath v. Sony Computer Entertainment of America, Inc., Case No. 08-cv-012350MHP.

Bissoon-Dath and a fellow plaintiff are screenwriters who previously accused Sony of copying elements of several of the plaintiff’s stories in developing Sony’s God of War video game.

In considering this motion for summary judgment, the court evaluated the plaintiffs’ claims for copyright infringement to determine whether “no reasonable juror could find substantial similarity of ideas and expression” between the plaintiffs’ stories and God of War. In particular, the court explained that the legal standard for copyright infringement required a plaintiff to show ownership of the copyright and copying of protected elements.

This case turned on the issue of copying, and the court evaluated whether the plaintiffs’ stories and God of War were “substantially similar,” which the plaintiffs had to establish to prove copying. In doing this, the court compared the plot, themes, dialogue, mood, settings, pace, characters, and sequence of events of the works.

In addition, the court noted that general plot ideas and other scenes that flow naturally from “unprotectable basic plot premises” are not protected by copyright law and thus not considered when the works are compared. As the court put it:

“In such a case, it is particularly important for the court to use its own ‘Blade of Chaos’ to slice or filter out the unprotectable elements. Greek gods, dialogues among them about mortal affairs, rivalries among the gods, and mythical beasts such as the Hydra or the Nemean Lion are unprotectable elements; it is uncontroversial that they have been used widely in both ancient and modern artistic works, in the naming of astronomical bodies and spacecraft, and in other fields.” Slip Op. at 19-20.

Ultimately, after comparing all of the elements listed above (i.e., the plot, themes, dialogue, mood, settings, pace, characters, and sequence of events of the works), the court concluded that no reasonable juror could find substantial similarity between the plaintiff’s stories and God of War, and the court therefore ruled in favor of Sony.

Hey everyone, if you're at GDC 2010, I will be speaking at the following two sessions:

Video Game IP - What You Need to Know NOW
Speaker: Ross Dannenberg (Partner, Banner & Witcoff, Ltd)
Date/Time: Thursday (March 11, 2010) 9:00am — 10:00am
Location (room): Room 130, North Hall
Track: Business and Management
Format: 60-minute Lecture
Experience Level: All

Session Description
Intellectual property can be a powerful asset for any company, young or old. Trademarks protect your brand; copyrights protect your content; and patents can be used to broadly protect your ideas, while company critical information can be safeguarded as a trade secret. However, companies must perform certain actions in order to enforce their IP, because some forms of IP require that certain steps are taken at specific times or a company might inadvertently dedicate its IP assets to the public. Don't let this happen to you! This seminar will discuss what you need to know NOW to protect your intellectual property, and will discuss proactive steps you can take to ensure that you maximize your intellectual property rights in your video game and software.

Intended Audience
Any video game developer interested in IP. However, the seminar will concentrate on proactive steps that smaller companies can take so they can effectively compete with the big boys in the intellectual property arena.

Takeaway
Steps companies (and individuals) can take to ensure that they don't inadvertently give away their intellectual property or dedicate their intellectual property to the public domain.

Speaker Evaluations None available.

IGDA: Intellectual Property Rights SIG
Speaker: Ross Dannenberg (Partner, Banner & Witcoff, Ltd)
Date/Time: Saturday (March 13, 2010) 9:00am — 10:00am
Location (room): Room 228, East Mezzanine
Track: Business and Management
Format: 60-minute Roundtable
Experience Level: All

Session Description
The roundtable will include a discussion of proactive steps that young companies should take to ensure that they don't inadvertently donate their IP to the public domain, and will include plenty of Q&A time to answer questions posed by the audience. The roundtable will include perspectives offered by successful independent game developers, and will include a discussion of resources and topics managed by the IGDA's IP Rights Special Interest Group. Old, new, and non-members welcome!

Speaker Evaluations None available.

Hope to see you there!

So word has hit the Internet that Facebook's U.S. Patent No. 7,669,123, entitled “Dynamically Providing a News Feed About a User of a Social Network,” issued last week, and it’s certainly created quite the buzz in chat rooms and web sites all over. Some folks seem outraged at the patent system, some are outraged at businesses who seek patents, and others seem outraged that those folks are outraged at the patent system.

This happens several times a year, whenever a high profile patent is issued, and I figured it might be helpful to provide some sort of Patent Outrage Guide, to help people understand their rage (or lack thereof). So if you’re outraged and want to know why, or if you simply want to be outraged and want to know how, please read on …

I. What’s it “Cover”?

First of all, you can’t be outraged about a patent if you don’t know what the patent actually “covers.” A patent’s scope is determined by the claims that appear at the end of the document. Think of each claim as a standalone list of things or steps that a product would have to have or do in order to infringe that claim. If your product has every limitation in one claim, then congratulations, you infringe that claim and that patent. If your product is missing at least one of the limitations of a claim, then congratulations, you don’t infringe that claim.

That sounds simple, but we’re lawyers, so it can’t be simple. The claims are not read in a vacuum. Instead, they are read and interpreted in the context of the rest of the description in the patent. So if a patent describes a “nut” as being the kind you screw on a bolt, the patentee probably can’t say that a peanut infringes that limitation.

To further complicate things, the claims are also interpreted in view of the prosecution history. The prosecution history of a patent is the back-and-forth written record between the applicant (inventor) and the patent office that ultimately resulted in the patent getting granted. As many of you know, the patent office is charged with examining patent applications, and only granting the ones that claim new and non-obvious inventions. If the applicant had to make arguments about the scope of his/her claims to get it to issue (e.g., “my claimed ‘nut’ refers only to a peanut, and not a walnut”), then the claim will be interpreted with those arguments in mind – as a member of the public, you have the right to rely on those arguments in determining the proper scope of the patent’s claims.

II. That’s Too Broad!

Ok, so now you’ve got a handle on the patent’s scope, and you think it’s too broad (e.g., you think it describes something that’s been around forever). Should you be outraged? Maybe, but let’s put things in perspective. First of all, you might be reading the claims incorrectly. A claim is interpreted as a hypothetical “person of ordinary skill in the art” would, in view of the specification and file history mentioned above, so it’s quite possible that there are one or two key words lurking in the claims that are interpreted more narrowly than you think, rendering the patent narrower than you think.

However, it’s certainly possible that the PTO has issued a claim that is too broad. But before you get outraged at this, some perspective may be helpful. The PTO handles a MASSIVE number of patent applications. Over 17,000 were issued last month, and another 26,000 were published (new applications are typically published 18 months after filing). Each application probably has, on average, about 20 different claims (since that’s what you get “for free” when you file the application), and each claim can have a dozen or more limitations. To reject these claims for not being novel, the PTO has to search for evidence that every feature in these claims can be found in the prior art, and in the arrangement claimed. It’s certainly possible that, in the relatively limited amount of time an examiner can spend searching a particular case, the examiner might be unable to find evidence for one of those words. If that happens, the applicant deserves the patent.

Don’t know if that’s outrage-worthy, though. We aren’t outraged at the postal service for occasionally losing a letter – we understand it’s a necessary cost of having the service at all. Doesn’t the PTO deserve the same understanding?

III. The Companies are Evil!

Some critics argue that the companies seeking broad patents are somehow unethical for doing so. I’m no expert on defining what is or is not ethical for a business, but it seems to me that a business’s main goal is to stay in business. Part of that involves not doing things (e.g., kicking puppies, pulling wings off of flies, etc.) that would cause it to lose customers and go out of business, but the main goal has to be to stay in business. Indeed, a public company’s directors can be SUED by their shareholders if they don’t do a good job keeping the company afloat.

Patenting its own innovations helps companies stay in business in several ways. First of all, they can assert them to keep competitors out of the same market space. Second of all, simply having a collection of patents is useful when doing business with those competitors. Nobody wants to have to sue, so if two competitors each have formidable patent portfolios, they will be more likely to find a business solution to their differences.

So I’m afraid that on the whole “evil” front, I can’t fault the companies for seeking to protect their inventions. Of course, I’m a patent attorney, so I may be biased there.

IV. Patenting Software, Are you MAD?

Some of the posters clearly feel that software should not be eligible for patent protection. I can understand where they’re coming from. Good software programming practice involves writing code and modules that can be re-used, saving time the next time around. Sharing and building on each others’ work is just an integral part of good programming practice.

The tough part for those posters, though, comes from the fact that not everyone feels the same way. The developer who spent 6 months coming up with a novel and useful software routine doesn’t always want to just share that with everyone, especially if they don’t get anything comparable in return. Sure, it could be a nice thing to do, but is it worth going out of business, or getting sued by shareholders?

If you must get outraged at the patentability of software, then the target of your outrage shouldn’t be the PTO, or the companies, it should be Congress. They’re the ones responsible for writing the laws, and they alone have the power to rewrite them.

V. Conclusion – Be Happy

So as you’ve figured out by now, this biased patent attorney happens to think that most of the patent outrage is misplaced and/or undeserved. We all live and work under the laws and rules that are in place, and everyone’s just trying to get by. Thanks for reading!

The Patent Arcade is pleased to announce that a new book co-edited by our own Ross Dannenberg (i.e., me), and partly authored by our own Steve Chang, is now available for purchase from the ABA website:

BUY YOUR COPY TODAY!!! (the authors do not receive any royalties for this book--all proceeds benefit the American Bar Association's IP Section)