SparkIP Launches Monthly Intellectual Property Index

SparkIP, an online intellectual property (IP) network for the scientific community, today announces the creation of the SparkIP Index, a monthly report highlighting the top five SparkClusters^TM, SparkSearch terms, and new innovative technologies found on the site. The Index will provide a snapshot of emerging trends in the scientific community and provide researchers insight into today's marketplace.

SparkIP is the world’s largest actively managed marketplace for top institutions, corporations and individual inventors. The site currently hosts more than 5,500 fully-searchable licensable technologies. The Index identifies the top SparkClusters^TM, SparkSearch terms, and new technologies available for licensing.

• SparkClusters^TM, self-categorizing and self-naming contextualized information, are SparkIP’s proprietary groupings of patents and new innovation. As of December 2007, there are 40,000 SparkClusters^TM on the site.
• SparkSearch terms are crucial to the scientific and corporate communities, illustrating what people are examining for future research and development opportunities.
• The top new available technologies, listed on SparkIP's marketplace, emphasize new innovation available from contributing universities and research institutions across the U.S. and abroad, giving SparkIP users access to relevant intellectual property from leading inventors.

"Our SparkIP Index provides a snapshot of top-of-mind technologies and research relevant to the scientific community," says Ed Trimble, CEO of SparkIP. "It provides an easy way for researchers to make an immediate connection to key research and provides a gauge for what technologies are likely to make waves in the marketplace during the coming months.”

Sex, Science & Profits: How People Evolved to Make Money by Terence Kealey [International]

What does marijuana tell us about the government funding of science? Well, a vast amount of taxpayers’ money around the world is spent on agricultural research to improve yields. Yet, according to Terence Kealey, pot-growers manage nicely without that aid and have developed “ever stronger and ever more disease-resistant strains” of literally mind-blowing potency.

The case of the cannabis cultivators is characteristic of the irreverence and eclecticism that make Sex, Science & Profits such an absorbing read. The author, who is a clinical biochemist at the University of Buckingham, seeks to demolish the myth that the advancement of scientific learning depends in any way on government intervention.

Four centuries ago, Francis Bacon wrote that “the benefits inventors confer extend to the whole human race”. Economists deem science to be what they call a “public good”, that is, a good of general benefit for which it is impossible to charge. What the market can’t charge for, say the economists, the market won’t provide. They go on to claim that scientific and technological progress will be arrested unless the government provides funds for pure research and companies are rewarded with patents for innovations in applied science. It is also often suggested that government funding of science drives technology which, in turn, generates economic growth.

Kealey disagrees. Rather than science driving technology, the opposite is true. The great inventors in Britain’s industrial revolution, including the steam-engine pioneers Thomas Newcomen and Richard Trevithick, were not fellows of the Royal Society. They were barely literate artisans who found intuitive solutions to practical problems (in Newcomen’s case, how to remove water from Cornish tin mines). Technological breakthroughs often lead science. At the moment of its invention, the steam engine designed by James Watt disobeyed the laws of contemporary physics.

Where property rights are protected and markets are allowed to thrive, technology and science advance together. Merchants invented writing and mathematics in Babylonian times in order to keep their accounts. Science stagnated during the anti-commercial Middle Ages, but re-emerged in renaissance Italy, along with commercial innovations such as double-entry book-keeping, bills of exchange and banking. Kealey identifies the Glorious Revolution of 1688, which guaranteed property rights and the rule of parliament, as the key moment in Britain’s scientific and industrial revolutions. Free markets and competition spur technological innovation and economic progress. Patents are not necessary to drive research and development. Companies, says Kealey, will innovate in order to differentiate their products and boost profits even without patent protection. Philips, one of the world’s largest electronics concerns, was founded in Holland in the 19th century at a time when the Dutch had dispensed with patent laws. During the same period, Swiss chocolatiers innovated successfully despite the absence of domestic patent protection. Many of the great technological advances weren’t made for the love of money but spurred by the joy of invention. Today, computer scientists around the world provide their expertise without charge to develop open-source computer programs, such as the Linux operating system.

Technology and science advance by copying. Yet patents hinder copying, prevent competition and thereby reduce innovation. That leads to slower economic growth. James Watt’s fierce enforcement of his patents held back the development of steam technology by 25 years, says Kealey. During the first world war, the American government decided to suspend the aeronautical patents held by the Wright Brothers in order to promote aircraft innovation. From 1917 to 1975, American aircraft companies collectively pooled their patents. That didn’t stop Boeing from becoming the world’s leading aircraft manufacturer. Kealey also maintains that the American motor industry took off only after Henry Ford breached the patents held by an automobile consortium. A key feature of Apple’s iPod, which has revolutionised the world of digital music, was taken from a competitor’s product.

What about the government funding of pure science? That’s also unjustified, says Kealey. For a start, the distinction between pure and applied science is artificial. Scientists at Bell Labs, the research institute of the telephone giant AT&T, discovered the science of radioastronomy and developed the first semiconductors. In America, IBM boasts the second largest output of published academic papers after Harvard University. Furthermore, there is some evidence that government funding of science leads to less private research. In the 1980s, Mrs Thatcher was attacked for cutting the British government’s science grants. Yet private companies stepped into the breach. As a result, spending on research and development in the UK actually increased.

Scientists have long claimed that science was suffering from the lack of public funds. In 1830, Charles Babbage, the supposed father of the computer, published The Decline of Science in Britain. But the following year, as Kealey points out, Michael Faraday discovered electromagnetic induction and Charles Darwin boarded HMS Beagle. The great advances of Victorian science occurred without government support.

Sex, Science & Profits is a gloriously idiosyncratic work. In developing his argument, Kealey discusses, among other matters, the banking systems of Ptolemaic Egypt, game theory, 12th-century English windmills, the mating calls of humpback whales, and the functioning of ball-valve flushing lavatories. His intellectual enthusiasm is infectious — one is half persuaded when he writes that “it is impossible to read WH Long’s article ‘The Low Yields of Corn in Medieval England’ without astonishment”. His approach is polemical, witty and fearless. Only once does he wobble, when admitting that drug research is now so expensive and time-consuming that patent protection may be justified.

In The Wealth of Nations, Adam Smith claimed that the public interest was best served when the government ceased attempting to direct the economy. Kealey has brilliantly extended his hero Smith’s argument to the world of science, which, like that of commerce, involves much “truck, barter and exchange”. The twin trends of globalisation and digitalisation have enormously benefited certain holders of intellectual property rights, such as Bill Gates’s Microsoft. We need an informed debate on the extent to which those windfall gains are deserved. Sex, Science & Profits provides an excellent starting point.

SEX, SCIENCE & PROFITS: How People Evolved to Make Money by Terence Kealey
Heinemann £20 pp455

E-mail and Paper: Equated in Law

A recent Massachusetts Appeals Court ruling enforcing an e-mail settlement agreement of a contractual dispute is a reminder to lawyers that e-mail settlements carry the same weight as deals on paper.

The court ruled on Jan. 7 that a midtrial, e-mail settlement between Basis Technology Corp., a Cambridge, Mass.-based company that makes software for multilingual Web sites, and e-commerce giant Amazon.com Inc. was binding.

Associate Justice Mitchell J. Sikora Jr. wrote that the trial judge correctly ruled that a March 23, 2005, e-mail from Basis to Amazon.com was a "sufficiently complete and unambiguous statement as a matter of law, and that both parties intended to be bound by that communication of settlement terms." Basis Technology Corp. v. Amazon.com Inc., No. 06-P-1048 (Mass. App. Ct.).

Thomas J. Gallitano, a lawyer for Basis, said a statement in the e-mail exchange confirming that six different points in the e-mails contained the essential business terms of the settlement agreement was pivotal to the court's decision.

The Power of Paper

Amazon.com spokeswoman Patty Smith said the company wouldn't comment on the case. Basis sued Amazon in May 2003, for alleged breach of fiduciary duty, and violations of the state's consumer protection laws for not paying for work that fell outside the scope of a contract between the two companies. At the time, Amazon was creating an e-commerce system to sell products in Japan. It hired Basis for technical services.

The two companies were also linked through a stock purchase agreement that involved Amazon.com's purchase of Basis preferred stock and a seat on the private company's board of directors. The settlement required Amazon to give up its board seat and relinquish its rights as preferred shareholder. Basis Technology Corp. v. Amazon.com Inc, No. SUCV2003-02246 (Suffolk Co., Mass., Super Ct.).

After the settlement, Amazon tried to rescind a provision that called for it to convert preferred stock to common stock. Amazon.com also objected to a separate Basis request that Amazon retroactively approve Basis' preferred stock issuance to a separate company and approve a new sale of stock to the same company.

Amazon opposed the sales and filed a separate lawsuit in the Delaware Court of Chancery, because it claimed the other stock sales would reduce its ownership stake in Basis. Amazon appealed the Massachusetts case on the grounds that the judge incorrectly ruled that the e-mail exchange "created a complete and unambiguous agreement" and that Amazon had intended to be bound by the terms of the e-mail.

Copyright law joy awaits music fans

Proposed changes to copyright laws will allow owners to move their music legally from CDs to MP3 players.

They would also let owners copy music from a PC to a portable player or to CDs.

The proposals, released on Tuesday, amend the Copyright, Designs and Patents Act 1988 which technically makes it illegal for people to shift their music and films from one format to another.

The changes would apply only to content copied for the owner's private use.

Multiple copying and file sharing on the internet would still be banned.

Owners would not be allowed to sell or give away their copies.

"To allow consumers to copy works and then pass on the original could result in a loss of sales for right holders," the proposals warn.

The consultation on proposed changes to UK copyright exceptions were launched on Tuesday by Intellectual Property Minister Lord Triesman.

It follows the Gowers Review of Intellectual Property, which recommended that certain aspects of the system should be reformed.

The proposals are designed to provide clarity about copyright issues in light of changing technologies.

Patent Problems [India]

The country’s intellectual property protection regime has seldom been sans controversy, despite amendment of the Patent Act in 2005 to broadly align it with global norms. The latest salvo has been fired by about 150 patent experts and industry representatives, who have written to Prime Minister Manmohan Singh and demanded greater transparency and accountability in the granting of patents. A few weeks prior to this, the National Knowledge Commission had submitted a report to the government, pointing out several systemic problems with the patent office and commended an overhaul of patent-granting processes. Indeed, what is striking is that, though the number of applications being filed for patents has spurted several-fold, especially after the amended law came into effect and provided for product patents in addition to process patents, neither the patent office network nor the facilities available there have been adequately augmented. The patent application examiners are clearly not adequate to handle the swollen volume of work. It is no wonder then that the Knowledge Commission’s recommendation for creating an online database, containing complete information on patent applications and grants, copies of patent office decisions, and patent examination details, has not been implemented as yet. Such information is vital for pre-grant challenge. All that is done usually is to publish abstracts of claims which often happen to be the same as given by the patent seekers in their applications. The details of the patent examiners’ reports, indicating the reasons for accepting or turning down a claim, are mostly not disclosed, rendering the system opaque. This obviously leaves little room for public scrutiny, leave alone peer review, of the patent office’s decisions. Consequently, no more than a fraction of the total patent requests get contested at the pre-grant stage.

The disabilities of the patent office aside, the amended legal framework for patents has run into its own problems. The most direct reference to this was made in the report of the technical experts committee on patents, headed by the noted scientist, R A Mashelkar. It categorically stated that limiting the scope of patentability to new chemical entities alone violates Article 27 of the trade related intellectual property rights (TRIPs) agreement of the World Trade Organisation (WTO). Though this report was subsequently withdrawn by the committee following allegations of plagiarism, that does not make a material difference to the issue raised.

Under such circumstances, the scope for misleading the patent office to get frivolous patents or even ever-greening patents through selective information disclosure cannot be ruled out. It is, therefore, important for the patent office to provide electronic access to the proceedings leading to the grant of patent, including examination reports, so as to ensure transparency and fair play. Also needed is expansion in the staff, notably application examiners, and an upgrade of their technical competence through regular training. Such a measure has become all the more critical following the Indian patent office’s recognition by the WTO’s World Intellectual Property Organisation (WIPO) as the international searching authority and the international preliminary examining authority.

Intellectual Property Protection: Key to Entrepreneur Success

Ensuring your intellectual property is safeguarded against theft is one of the first steps every entrepreneur should
take. From processes to ideas to inventions, intellectual property is often
more valuable than physical assets.

   Types of intellectual property
   There are four legally defined categories of intellectual property:
patents, trademarks, copyrights and trade secrets. Each category offers
entrepreneurs special protections and violators on state and federal levels
are subject to prosecution.
   -- Copyrights protect your ideas and how you express them. Books, songs
      and movies are common examples covered by copyright protection.
   -- Trade secrets cover the information giving you a commercial advantage
      the general public doesn't possess. A good example is Coca-Cola:
      trade secrets protect everything from Coca-Cola's formulas to
      customer lists to manufacturing processes.
   -- Trademarks protect the visual aspects of your business that distinguish
      you from competitors, including logos, names and general visual
      attributes.
   -- Patents cover inventions that are useful to the public and prevent
      anyone else from making, using or selling these devices or processes.
      Business method patents protect a method of doing business, like
      Amazon.com's "one-click" ordering. Receiving a patent can take several
      years, so it's important to apply as soon as possible.


   Ensuring your legal bases are covered through copyrights, patents and
trademarks is a solid start to protecting your intellectual property. But
catching and prosecuting offenders is difficult and expensive, and often times
by then the damage has been done -- your critical information is now in the
public domain. Consider these steps to further protect your company's ideas,
processes and inside secrets for success:
   -- Prioritize your intellectual property. What company assets would sting
      the most if stolen and which are most at risk?
   -- Tag it. If it's yours, put your name on it. Otherwise you'll have a
      difficult time proving the information was protected.
   -- Lock it. Lock up servers and storage, and control the keys.
   -- Educate employees. Humans are often the weakest link in the
      intellectual property protection chain. Make sure your team is aware of
      what's at stake and how to protect it.
   -- Think like a competitor. If you were a competitor and wanted to steal
      secrets from your company, how would you do it? Use your own insights
      as an entrepreneur to further identify what intellectual property needs
      protection as you refine your plan for doing so.

E-Business Patent Infringement Cases: Complex Issues to Unravel

Certainly, Google has already earned its place in history as the most-sued Internet Company. Every novel intellectual property ("IP") cause of action has been filed against the search engine giant. First, we witnessed the copyright infringement round. Google has been sued for every type of copyright infringement on thumbnails, meta-tags, keywords, etc. Concomitant with these copyright infringement lawsuits, Google was also accused of trademark violations in keywords, sponsor links, etc. Now, it is the time for the e-business patent round. Google was sued for business patent infringement and, like in most of the other IP lawsuits, it was triumphant (well, partially) this time.

A United States Court of Appeals recently held that Google is not liable for patent infringement when it uses two methods that link online records and provide users with relevant web pages. The plaintiff, Hyperphrase Technologies, LLC, and Hyperphrase, Inc. ("Hyperphrase"), held two business patents related to some systems and methods that linked online records. The technical process used by these systems and methods is similar to the one used by Google through its "AdSense" and "AutoLink" methods. "AdSense" is an advertising method used by Google that combines the advertiser's content with contextually related websites. AutoLink is an online application incorporated into people's computer browser that that helps Google identify relevant web addresses and information according to some ‘string of characters' that they call tokens. Hyperphrase claimed that Google violated its online linking and patented methods through the use of "Autolink" and "AdSense."

"We're very pleased that the Federal Circuit agreed that AdSense does not infringe any of Hyperphrase's patents. We continue to believe the remaining claims in the lawsuit are without merit, and will vigorously defend against those claims," Michael Kwun, Google's managing counsel for litigation, recently said after the US Court of Appeals held (on December 26, 2007) that Google's ‘AdSense' did not infringe on Hyperphrase's patent. Yet, the case was remanded as to Google's business patent infringement with respect to the use of "Autolink" system.

This intriguing case so far has two significant juridical teachings. First, we learned that business patents and its electronic use are slowly but steadily becoming the object of intellectual property litigation. For the time being, this litigation is centered at a domestic level; but, the legal community must be vigilant of how transnational litigation and jurisprudence on e-business patents evolves. Second, we also learned that business patents, especially e-business patents, create extremely complex litigation cases. E-business patent infringement cases involve highly technical computer methods and systems (some related to mathematical equations) and sharp legal and semantic analysis. In other words, computer/business science and sophisticated legal reasoning merge when dealing with a business patent case.

Recent patent/copyright infringement cases filed in U.S. District Courts

Beneficial Innovations Inc. vs. AOL LLC et al Beneficial Innovations alleges it owns the inventions claimed in U.S. Patent Nos. 6,712,702 for Method and System for Playing Games on a Network and 6,183,366 for Network Gaming System. The suit names AOL, The Dallas Morning News, Google, IGN Enterprises, Morris Communications, Tribune Interactive, Yahoo! and YouTube as defendants in a patent infringement suit. The original complaint states that defendants have infringed the patents through Web sites including www.aol.com; www.google.com; www.yahoo.com; www.youtube.com and others. "Plaintiff has been damaged by defendants' infringement of the patent and will suffer additional irreparable damage and impairment of the value of its patent rights unless defendants are enjoined from continuing infringement," the complaint states. The plaintiff is seeking compensatory damages, treble damages, fees, costs, interest and other relief as justice requires. Charles Ainsworth of Parker, Bunt & Ainsworth PC in Tyler is representing the plaintiff. The case has been assigned to U.S. District Judge T. John Ward and referred to Magistrate Charles Everingham. Case No. 2:07-cv-555-TJW-CE Dec. 21 Paul Bennett et al vs. Alcoa Closure Sytems International et al Paul H. Bennett of California and Thom M. Perlmutter of Rhode Island allege they are co-inventors and co-owners of U.S. Patent No. RE39,867 for a Tamper-Evident Container Closure. The plaintiffs allege that Alcoa Closure Systems International, Bericap LLC, Blackhawk Molding Co., CG Roxane, Crystal Geyser Water, Erie County Plastics, International Plastics, Rexam Closure Systems and Seaquist Closures infringe the '867 Patent through manufacture, use and sales of tamper evident closures. Various push/pull, thumb pop and twist types of tamper-evident closures are named in the suit as infringing products. Plaintiffs are asking that defendants "account for and pay … all damages caused by the infringement of the '867 Patent, which by statute can be no less than a reasonable royalty." They are seeking enhanced damages from the defendants as a result of their willful infringement, interest, fees, costs and other just and proper relief. Edward W. Goldstein of Goldstein, Faucett & Prebeg LLP of Houston is representing the plaintiffs. The case has been assigned to U.S. District Judge T. John Ward. Case No. 2:07-cv-558-TJW Dec. 28 Parallel Networks LLC vs. Netflix Inc. et al Plaintiff Parallel Networks is a Texas limited liability company with its principal place of business in Dallas. It claims to have the rights to U.S. Patent Nos. 5,894,554 and 6,415,335 B1, which concern systems and methods for managing dynamic Web page generation requests. Parallel Networks alleges that Netflix, SkyMall, ATA Airlines, John Wiley & Sons, E*Trade Financial Corp. and The Finish Line make and/or use systems within the scope of one or more claims of the patents-in-suit. "Parallel Networks has suffered damage by reason of defendants' infringement and will continue to suffer additional damage until this court enjoins the infringing conduct," the original complaint states. Plaintiff alleges that the defendants' infringement is willful and deliberate, which entitles Parallel Networks to increased damages. The plaintiff also seeks an injunction, fees, costs and other just and proper relief. Larry D. Carlson of Baker Botts LLP in Dallas is lead attorney for the plaintiff. Attorneys from Ireland, Carroll & Kelley in Tyler; Brown McCarroll LLP in Longview; Jones & Jones of Marshall; and Ward & Smith Law Firm of Longview are also of counsel for the plaintiff. The case has been assigned to U.S. District Judge Leonard E. Davis. Case No. 2:07-cv-562-LED PACT XPP vs. Xilinx Inc. and Avnet Inc. PACT is a German corporation and claims it is the owner of eight patents at issue; including U.S. Patent No. 6,088,795 for a Process for Automatic Dynamic Reloading of Data Flow Processors and Units with Two- or Three-Dimensional Programmable Cell Architectures. PACT was assigned the eight patents by co-inventors Martin Vorbach and Robert Munch. "Defendants have infringed and continue to infringe the patents by the Virtex and Spartan lines of FPGAs," the original complaint states. "Defendants' acts of infringement have caused damage to PACT, and PACT is entitled to recover from defendants the damages sustained by PACT as a result of defendants' wrongful acts in an amount subject to proof at trial." The plaintiff alleges that the infringement is willful and deliberate, entitling PACT to increased damages, attorney fees and costs. The plaintiff is also seeking interest and other relief the court may deem just and proper. Robert Christopher Bunt of Parker, Bunt & Ainsworth PC in Tyler is representing the plaintiff. Attorneys from Susman Godfrey LLP and Jones & Jones of Marshall are also representing the plaintiff. The case has been assigned to U.S. District Judge T. John Ward and referred to Magistrate Charles Everingham. Case No. 2:07-cv-563-TJW-CE Media Technologies Licensing LLC vs. Tristar Productions Inc. et al Plaintiff Media Technologies claims to own the inventions described in U.S. Patent Nos. 5,803,501 and 6,142,532 for a Memorabilia Card. The U.S. Patent and Trademark Office issued Ex Parte Reexamination Certificates for the '501 and '532 Patents in November 2007. Media Technologies alleges that defendants Tristar Production, Press Pass Inc., Ace Authentic, Bench Warmer International, Stellar Collectibles, SA-GE Collectibles and Razor Entertainment Group have infringed on the patents. The plaintiff is seeking a decree permanently enjoining defendants, compensatory damages, enhanced damages, attorney fees, court costs, interest and other relief as justice requires. S. Calvin Capshaw of Brown McCarroll LLP in Longview with attorneys from Parker, Bunt & Ainsworth in Tyler and Dovel & Luner LLP of Santa Monica, Calif., are representing the plaintiff. The case has been assigned to U.S. District Judge T. John Warner. Case No. 2:07-cv-564-TJW Dec. 31 Mondis Technology Ltd. vs. LG Electronics Inc. et al Mondis Technologies is a corporation organized under the laws of England with its principal place of business in London. The original complaint refers to seven patents, including U.S. Patent No. 6,057,812, for computer monitors and image display units. Mondis Technologies names LG Electronics, Hon Hai Precision Industry Co., FoxConn and Innolux Display Corp. as defendants in the patent infringement suit. "Mondis has been damaged by defendants' infringing activities," the complaint states. "Defendants will continue their infringing activities, and continue to damage Mondis, unless enjoined by this court. Mondis has no adequate remedy at law." Mondis is asking that the court enjoin defendants from further infringement of said patents, award damages sufficient to compensate it for the infringement, treble damages, interest, attorney fees, costs, expenses and other relief. Otis W. Carroll of Ireland, Carroll & Kelley PC in Tyler is representing the plaintiff with attorneys from Dechert LLP in Philadelphia, Pa., of counsel. The case has been assigned to U.S. District Judge T. John Ward and referred to Magistrate Charles Everingham. Case No. 2:07-cv-565-TJW-CE

Qualcomm hit with patent infringement injunction

A US Federal District Judge issued an injunction today against wireless giant Qualcomm, ruling that "certain of its products" for the US market infringe three Broadcom patents.

"We are very pleased with today's ruling which addresses Qualcomm's improper use of our patented technology covering cellular chips and software for advanced consumer devices," said David A. Dull, Broadcom's senior vice president and general counsel.

"Broadcom should not have to compete against companies that use Broadcom's own patented technology against us, and this injunction puts a stop to Qualcomm doing just that."

Qualcomm said that the ruling from Judge James V. Selna is "complex", and that it expects further clarification from the court on various aspects of the judgment, including the effect of Verizon's existing licence agreement with Broadcom.

The ruling provides a 'sunset' provision that stays the order until 31 January 2009 for QChat and 1x/EV-DO products that were found to infringe any of the three patents by providing Qualcomm a limited licence, subject to an ongoing royalty payment.

This licence is limited to products sold to customers on or before the jury verdict was delivered on 29 May 2007.

The '010 and '317 patents apply only to Qualcomm's QChat and 1x/EV-DO products. Qualcomm said that it is continuing the development of "workaround solutions" for the '010 and '317 patents.

"The order imposes an immediate injunction on WCDMA products for the US market that were found to infringe the '686 video encoding patent," Qualcomm stated.

"Qualcomm today announced the availability of new chips that have already been sampled to customers and expects to have hardware and software workarounds to the '686 patent commercially available in handsets before the end of the first calendar quarter of 2008."

The company added that it will attempt to obtain "further relief and clarity " from the courts on certain aspects of the order.

However, Qualcomm warned that the inability to obtain such relief will probably have an immediate, short-term impact as handset customers transition to new designs for WCDMA products relating to the '686 patent.

The ruling will also have a medium-term impact to certain products in the development pipeline for the US market, and longer-term ability to implement workarounds in time for commercial availability of handsets by the January 2009 'sunset' expiration.

"Qualcomm is evaluating all its options, including seeking appropriate stays and appeals, and will comply with all directives and orders of the court," the company said.

"The US Patent Office has also instituted a re-examination of the validity of the '317 patent claims."

Digg sued for patent infringement

Digg and several other companies have been sued for patent infringement in Marshall Texas by Beneficial Innovations (i.e., Sheldon Goldberg). There have actually been two lawsuits. In the first one, filed in June and amended later, Beneficial sued 9 companies including Digg and CNet, alleging that they infringed US Patents 6,712,702 and 6,183,366, which cover playing games over a network.

In the second suit, filed in late December, Beneficial accused 8 more companies including Google and Yahoo of infringement. In both suits, the plaintif claimed infringements somewhere on the defendants’ web sites, but didn’t go into detail about exactly where and how the infringements occurred. All they provided were the home page URLs for the companies in question.

In July, Digg filed for an extension to answer the suit, which was granted. In a response filed on the last day of the extension, Digg’s lawyers wrote, in part:

Digg has not and does not infringe (either literally or by the doctrine of equivalents), induce infringement, or contribute to the infringement of any valid and enforceable claim of the ’702 or ’366 Patents.

One or more of the claims of the ’702 and ’366 Patents are invalid for failure to meet one or more of the conditions of Patentability set forth in 35 U.S.C. §§ 101 et seq.

On information and belief, the ’702 and ’366 Patents are unenforceable due to an unreasonable and unexplained delay in prosecution.

Digg counterclaimed and asked the court to declare not only that Digg did not infringe upon the two patents, but also that the patents themselves are invalid. Beneficial replied in October that (surprise) it didn’t agree. The cases are still pending.

Lacoste loses crocodile trademark row [UK]

A Gloucestershire dental practice has come out smiling after defeating fashion chain Lacoste in a dispute over a crocodile trademark.

The two dentists were challenged by the French clothing giant after using a grinning reptile as the logo on their practice’s welcome sign.

Lacoste claimed the cartoon crocodile was too similar to their own globally recognised logo, and could cause confusion among shoppers which could damage their business.

The battle began in 2004 when dentists Dr Tim Rumney and Dr Simon Moore first applied to register the new logo – a plain green crocodile with white teeth – for The Dental Practice in Cheltenham.

Lacoste objected saying it was too similar to their own green crocodile logo, which is pictured side-on with gaping red jaws.

Now, following a three year battle, the UK Intellectual Property Office judge has dismissed claims the emblems are too similar.

The dentists represented themselves at an initial hearing in May at the Intellectual Property Office in Newport, where Judge Ann Corbett ruled in the practice's favour.

But Lacoste’s legal team launched a subsequent appeal, which was finally rejected late last year.

Dr Rumney said he was "astonished" his practice had encountered such difficulties.

He said: "We are happy the situation has been resolved but astonished by the length of time it took to reach this conclusion.

"I suppose it is a big success for our business but we certainly did not regard it as taking anyone on."

He added: "We do not consider ourselves to be in the same market place at all and do not see that we are treading on any toes. We chose the sign with little second thought."

Lacoste was ordered to pay £1,000 towards the dental practice's legal costs at the initial hearing as well as a further £450 towards the costs of the second hearing.

Congress Proposes to Enhance IP Enforcement and Penalties

Just before the holiday recess, the U.S. House of Representatives introduced and held hearings on the Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act, H.R. 4279. The proposed legislation would substantially increase criminal and civil penalties for copyright infringement, eliminate the registration requirement to pursue criminal penalties, and create a White House-level executive position to lead the fight to product U.S. intellectual property interests.

The proposal could be viewed either as an IP diamond in one’s holiday stocking or as a lump of coal. The analogy is fitting: Coal and diamonds are made of the same basic carbon material, and this bill offers proposals that could be beneficial or damaging depending on the final version and/or how the proposals are implemented.

The nearly 70-page bill (available at http://thomas.loc.gov/cgi-bin/bdquery/z?d108:H.R.4279:) was introduced with bipartisan support and was sent to the House Judiciary Committee’s Subcommittee on Courts, the Internet, and Intellectual Property, which held hearings on the bill on Dec. 13, 2007. Testifying at the hearings were representatives of the Justice Department, organized labor, the Coalition Against Counterfeiting and Piracy (CACP; www.thecacp.com), and Public Knowledge (www.publicknowledge.org), a digital rights advocacy organization.

The bill proposes a number of steps to strengthen the enforcement of copyright, trademark, and patent laws and to increase criminal and civil penalties for copyright infringement.

On the enforcement side, the bill would establish an "Office of the U.S. Intellectual Property Enforcement Representative" in the White House. This office would coordinate IP enforcement activities through a number of government and international agencies. This office would also be charged with developing a "Joint Strategic Plan" to identify, disrupt, and/or eliminate persons and businesses involved in trafficking of counterfeit and pirated goods and sharing information among relevant agencies. The plan would also work with other countries to strengthen IP enforcement and reduce the number of countries that fail to enforce anti-counterfeit and piracy laws.

The bill would also create an Intellectual Property Enforcement Division within the Justice Department and would appoint IP attachés to work with foreign governments on anti-piracy efforts.

Criminal penalties for copyright infringement would be enhanced through a number of methods. The bill would eliminate the requirement that copyrighted works be registered before they could be the subject of a criminal action against an infringer. It also strengthens the government’s ability to seize property that is "used or intended to be used" for copyright infringement, and it broadens the amount of property that can be seized. Finally, it would be easier for the courts to order seized property to be forfeited to the government and disposed of.

A controversial proposal would change the civil penalties for copyright infringement of compiled works. The current law recognizes a compiled work as a single act of infringement, even though there may be more than one work that was infringed in order to create the compilation. The proposal would penalize each separate act of infringement in a compiled work. For example, a website that infringed on five copyrighted works would be subject to five times the penalty than currently applies. Other proposals would double or treble the damages available in trademark counterfeiting cases.

At the Dec. 13 hearing, all of the committee members and witnesses supported the intention of the act to strengthen anti-copyright and anti-piracy efforts. It was noted that intellectual property infringement costs the U.S. economy as much as $600 billion a year and 750,000 jobs.

Richard Cotton, general counsel for NBC Universal and chairman of CACP, pointed out that counterfeiting and piracy do not just affect the media industries. Counterfeit pharmaceuticals, auto parts, consumer goods, aircraft parts, animal foods, and other products not only create economic damage but, in some cases, result in life-threatening situations. He complained that IP enforcement often "falls off the radar screen" of law enforcement agents who are tasked with many other priorities. He said that the PRO-IP bill represents a "declaration of war" against pirates and counterfeiters.

In its testimony, the Justice Department outlined recent efforts and successes in intellectual property enforcement. The department has created 25 "Computer Hacking and Intellectual Property" units around the country with more than 230 prosecutors. These units also provide assistance to prosecutors, judges, and investigators from 107 foreign countries. While the department supported the increased criminal penalties of the PRO-IP Act, it raised concerns that the creation of the White House IP executive position and the Justice Department IP Office might actually dilute enforcement efforts and unnecessarily increase bureaucratic and administrative costs.

Gigi Sohn, president of Public Knowledge, a public interest organization representing the interests of content users, raised a number of concerns. While affirming the need for the effective enforcement of intellectual property laws, she voiced concerns that the PRO-IP Act would ensnare "ordinary consumers" in overly broad laws.

Sohn raised particular concerns about the proposal to enhance damages for compilations. She pointed out the already high damages for copyright infringement, particularly when contrasted with proposals to reduce excessive damages for patent infringement which have been incorporated into the present patent reform proposals. More to the point, she argues that higher damages will chill legitimate uses of copyrighted materials, while having little deterrent effect.

She also argued that eliminating the copyright registration prior to criminal enforcement would reduce incentives for copyright registration. This in turn could lead to an even larger "orphan works" problem than already exists. (Sohn’s written testimony is available at www.publicknowledge.org/node/1306.)

While at least one commentator suggested that this bill may be more about politics and lobbying by media interests, the bipartisan sponsorship and support of both content and technology providers may indicate otherwise. Further action is not expected until later in spring, when the proposal comes up again for committee action. What will be particularly telling is whether later versions will change to reflect the concerns raised at the December hearings.