Google Foe Ends Unique Trademark Suit Over Keywords

After four years of locking horns with Google in court, Michigan-based American Blind and Wallpaper Factory has abandoned its unique trademark infringement case against the Silicon Valley titan.

The end comes just a couple of months shy of a scheduled trial date. Such a trial would have been the first time a jury took a crack at an important question in today's trademark law: whether a search engine infringes when it lets one company pay to place its ad alongside search results on a competitor's name.

In a settlement reached late last week, both sides agreed to halt their claims. American Blind won no concessions whatsoever.

American Blind's chief executive, Joel Levine, said Tuesday the company pulled out for financial reasons, and because American Airlines, which has more money in its litigation coffers, has recently filed a very similar suit.

"American Airlines is more well-suited to take on Google than we are," Levine said. "We sell blinds and wallpaper and that's what we do best. We're not litigators."

American Blind did hire some heavy hitters to handle the Northern California federal court case on its behalf -- New York-based Kelley Drye & Warren and Howrey. Google hired Keker & Van Nest.

Keker partner Michael Page said American Blind's decision wasn't just about money.

"They had a terrible case and they decided it wasn't worth pursuing," he said. "They quit and went home."

Indeed, American Blind suffered some serious setbacks this year, including being sanctioned in June for failing to preserve and hand over relevant documents. Magistrate Judge Richard Seeborg found that, "even though the evidence does not support a conclusion of intentional document destruction or that American Blind or its employees specifically intended to deprive Google of relevant evidence, the record demonstrates a willful indifference at American Blind towards ensuring that relevant documents were preserved, collected, and produced."

The company was ordered to pay Google $15,000 in compensation.

The judge also allowed Google to present evidence at the upcoming trial about American Blind's alleged purchase of its own competitors' trademarked keywords.

Levine, to whom Howrey attorneys referred all comment Tuesday, said the sanctions had "zero" effect on their decision to pull out of the litigation. The CEO pointed out that the case began when Google filed a declaratory judgment complaint against American Blind.

Levine said he thinks Google chose to file suit against American Blind because it is small.

"They chose us," he said. "It's a legal strategy. They picked a sizable company but not a huge one."

Keker's Page disputes this, saying Google filed suit only after American Blind had been threatening to sue for 18 months.

"We didn't pick them because they were a small guy," he said.

In April, U.S. District Judge Jeremy Fogel found that two of American Blind's allegedly infringed trademarks were not well-known enough to support a trademark infringement case. This greatly limited the number of marks at play in the litigation.

Courts across the country have given mixed rulings on whether the search engine advertising model at issue -- which, for Google, is called AdWords -- constitutes trademark infringement, said Eric Goldman, a professor at Santa Clara University School of Law. All other cases of this nature have also ended pretrial, said Goldman, who closely tracks such litigation.

Google has not yet filed a response to American Airlines' complaint, which was brought in North Texas.

Greenberg v. National Geographic - the latest [Copyright, International]

After separate three-judge panels in the 11th U.S. Circuit Court of Appeals ruled for -- and then against -- a freelance photographer suing the National Geographic Society over copyright claims, the full court has agreed to consider the case.

The Aug. 30 decision to vacate the latest ruling in Greenberg v. The National Geographic Society means that the 11th Circuit could reinstitute a conflict between the 11th and the 2nd Circuits about whether publishers, specifically National Geographic, may reproduce publications in digital CD-ROM format without paying more royalties to freelance photographers for additional use of their work. The U.S. Supreme Court tends to favor consideration of cases on issues in which circuit courts disagree.

The copyright litigation was first addressed by the 11th Circuit in 2001 in a decision penned by Judge Stanley F. Birch Jr., the court's resident intellectual property expert. That opinion found in favor of freelance photographer Jerry Greenberg, whose photos had been published by National Geographic and then reproduced in its digital library. In similar cases in New York against National Geographic, the 2nd Circuit has taken the opposite stance, ruling that reproducing the magazine's library on CD-ROM does not violate freelancer copyrights.

Two months ago a new 11th Circuit panel overruled Birch's 2001 decision in the Greenberg case, saying instead that National Geographic should prevail. The latest decision was written by U.S. District Judge David G. Trager, a visiting senior judge from New York, which is part of the 2nd Circuit. He was joined by 11th Circuit Judge Rosemary Barkett and Senior Judge Phyllis A. Kravitch.

Trager's ruling also sidestepped a precedent which generally binds appellate panels to earlier circuit decisions addressing the same issue of law unless it has been overturned either by the entire 11th Circuit or by the U.S. Supreme Court.

But Greenberg asked the full court for an en banc review, and a majority of the active judges voted to rehear the case. En banc orders do not identify how the judges voted, but this one noted that Judge Frank M. Hull recused and that Kravitch, who joined Birch's 2001 decision with Judge Gerald B. Tjoflat, would participate.

"You can imagine how gratified we were to hear about that," Greenberg's attorney, Norman Davis of the Miami firm Squire, Sanders & Dempsey, said last week of the en banc order. "It doesn't happen very often."

"Had the prior decision stayed in place, the case would essentially have been done," said Davis. "Now, it's not. I look forward to learning what issues they [the circuit judges] want briefed and to engaging in responding to those issues."

In response to the 11th Circuit action, the National Geographic Society released a statement saying that the organization and its attorneys "now look forward to presenting our arguments in this important case to the full U.S. Court of Appeals for the 11th Circuit and believe that the full court will agree with the three-judge panel and the U.S. Court of Appeals for the 2nd Circuit that the National Geographic Society is entitled to make past issues of its magazine available in CD-ROM format without violating the copyright laws."

The Greenberg case raises on behalf of freelance photographers many of the same issues raised by freelance writers in another landmark copyright suit decided by the Supreme Court in 2001. That case, New York Times v. Tasini, 533 U.S. 233, favored freelance writers and came three months after the 11th Circuit panel ruled in favor of freelance photographer Greenberg.

In the closely watched Tasini case, freelance writers of articles previously published in newspapers and magazines brought copyright infringement claims against publishers and owners of electronic databases that had made the articles widely available via the Internet and services such as Lexis-Nexis. In a 7-2 opinion issued June 25, 2001, the Supreme Court ruled in favor of the writers.

For a decade, the Greenberg and Tasini cases have pitted publishers against freelance photographers and writers -- all of them seeking to define copyright law in a digital age. At stake are royalties and fees that publishers could be forced to share with freelancers whenever they reproduce and sell those freelancers' previously published works in merchandise designed for computer access.

In 2001 in the 11th Circuit, the Birch panel found for the photographers, specifically dismissing arguments offered by National Geographic that a 30-disc CD-ROM set containing reproductions of every National Geographic magazine was not a new product but was merely a reprint of a previously published work.

"The critical difference, from a copyright perspective, is that the computer, as opposed to the machines used for viewing microfilm and microfiche, requires the interaction of a computer program in order to accomplish the useful reproduction involved with the new medium," Birch wrote in what is now called Greenberg I. "These computer programs are themselves the subject matter of copyright, and may constitute original works of authorship, and thus present an additional dimension in copyright analysis."

Birch emphasized his point by attaching to 2001 opinion a copy of National Geographic's copyright application for the CD-ROM library.

$400,000 AWARD

On remand, a district judge in Florida, using Greenberg I as a guide, awarded Greenberg damages of $400,000. That ruling came in 2004, three years after Tasini. National Geographic appealed, resulting in the June opinion by Trager in what is called Greenberg II.

His panel sided with Trager's home circuit -- which since Tasini, has rejected claims against National Geographic by other freelance writers and photographers -- and bluntly labeled the earlier Birch opinion as "wrong."

The 2nd Circuit in those cases has interpreted Tasini as "an intervening (post-Greenberg I) change in the law" even though Trager acknowledged in his opinion that Tasini was decided on different facts than either Greenberg or the other National Geographic cases in New York.

After the en banc order was issued last week, Greenberg lawyer Davis said that an opinion issued by another 11th Circuit panel on Aug. 23 in an unrelated case has given him hope that the full court may restore Greenberg I.

In the case, which deals with maritime law, the panel showed that the court clearly frowns on reversing its own previous rulings, even in cases where a Supreme Court ruling has intervened.

The central question in Atlantic Sounding Co., Inc, v. Townsend, No. 06-13204, is whether the 11th Circuit can, or should, depart from a prior circuit ruling based on the Supreme Court's intervening decision in a similar case.

"We conclude that we may not," wrote Chief Judge J.L. Edmondson, joined by Edward E. Carnes and Senior Judge Peter T. Fay. "Under our prior panel precedent rule, a later panel may depart from an earlier panel's decision only when the intervening Supreme Court decision is 'clearly on point.'"

Edmondson added that the 11th Circuit had concluded in a 2003 case that "an intervening Supreme Court decision did not 'implicitly overrule' a prior circuit decision because the cases dealt with different issues and were not 'clearly consistent.'"

"The Supreme Court reminds us that '[t]here is, of course, an important difference between the holding in a case and the reasoning that supports that holding,'" Edmondson continued. "So, that the reasoning of an intervening high court decision is at odds with that of our prior decision is no basis for a panel to depart from our prior decision. As we have stated, [o]bedience to a Supreme Court decision is one thing, extrapolating from its implications a holding on an issue that was not before that Court in order to upend settled circuit law is another thing."

Intellectual Property in Mergers and Acquisitions [International]

The nation is witnessing an increasing trend towards mergers and acquisitions. One of the most important factors in ensuring the success of an M&A deal is for the acquiring company to conduct proper "due diligence," lawyer-speak for the process whereby the potential buyer evaluates the target company and its assets.

While lawyers have long focused due diligence efforts on tangible assets, including land, buildings, and equipment, little attention has been paid to intangible assets, such as intellectual property, which can in some instances be as or more valuable to the company’s operations and profitability.

Due diligence should extend to a wide range of intangible assets related to intellectual property, including business information, employee know-how, licence agreements, marketing and distribution agreements, domain names and even intellectual property which is not legally protectable, e.g., business ideas. Like customer "good will", these types of intangible assets can be important elements of a target enterprise’s value, although evaluation of their worth is not an easy task.

Intellectual property itself is a term that has traditionally referred to copyrights, patents, trademarks and trade secrets. The concept of industrial property is further understood as including industrial designs, utility solutions, layout-designs of semi-conductor integrated circuits, trademarks, trade names, geographical indications, trade secrets, and rights to repression of unfair competition under the IP Law.

Well-known trademarks established on the basis of use, however, may be protected independent from registration procedures. However, a claim for protection of a well-known mark is complex, as it is normally made during cancellation or infringement proceedings. Therefore, the protection afforded by registration is more effective in most ordinary cases.

Unlike industrial property objects such as industrial designs and trademarks, objects which are protected by copyright do not need to be registered to afford protection. In this respect, Vietnamese law is consistent with international definitions of copyright which provide that copyright adheres in an original work of authorship published or fixed in a particular medium. Registration of the copyrighted work serves purposes of providing notice and evidence of the copyright.

When conducting due diligence into these types of intangibles, a lawyer must ask two fundamental questions: (1) what are the key rights and intangible assets needed to operate the business successfully? and (2) how can the business be assured the benefits of those rights and assets following the acquisition?

The lawyer then must confirm licences and ownership records, evaluate contracts and licensing agreements, and check for existing litigation and infringement notices. Issues uncovered in the course of due diligence may significantly alter the terms of an acquisition. For example, if the prospective buyer discovers the target company’s trademark is in use by another firm and rights cannot be secured to the target company, this could lead to significant costs involving re-branding and re-working marketing and promotional materials. Such information, revealed in the course of due diligence, could dramatically affect the target company’s value in the eyes of the prospective investor.

IP rights owned by another division within the target group would also need to be assigned or licensed to the target if the acquiring investor wants to secure these rights. Lawyers conducting due diligence must also ensure target company employees have signed confidentiality agreements and agreed in writing to assign inventions to their employer. This prevents critical copyrights, patents, and trade secrets from leaving the company with departing employees. For instance, a company might sell off a software division, only for the buyer to learn that it owns the copyright in original software but not in any modifications after the developer became an independent contractor.

In addition to ensuring control of IP rights before and during a merger or acquisition, lawyers must also consider what happens after the sale. Following any acquisition, patents will usually need to be re-assigned, licence agreements may need amendment, and notices about the transfer of rights may need to be issued.

Depending on the type of intellectual property, the lawyer must determine whether a particular form of intangible asset is transferable as a matter of contract or under the IP Law. For instance, most industrial property objects such as trademarks, patents, and industrial designs may be transferable, but the moral rights in a copyrighted work cannot be transferred, except under certain circumstances, pursuant to the IP Law.

In short, investigating IP issues in the course of due diligence is of paramount importance during an acquisition. Though often time-consuming and resource-intensive, solid IP due diligence will lessen risk, make valuation more accurate, and give an investor a better understanding of the target company’s business.

Legal framework on sharing of IP [India]

Corporate houses that use government funds for research, particularly in the pharmaceutical and biotechnology sectors, will soon have a legal framework to share the intellectual property generated by these joint efforts.

At present, the government provides assistance in the form of non-repayable grant in aid and as soft loans for specific research projects undertaken by industry, universities and other public and private entities. The move is set to give a major boost to publicly funded research which has started picking up recently.

It is also expected to boost nano-technology research, for which the government has allocated a massive fund which has received lukewarm response till now.

At present, universities and autonomous research institutions that get government funding lack the mandate to commercialise their research results that is largely done by the industry. Innovations also get wasted as the it belongs to the funding agency and there is no incentive for the innovators.

The new legislation would provide a legal framework that would develop an active interface between the funding agencies, academia and the industry, which has been lacking so far.

“One reason why our country lags behind in generating IPs is that our innovations remain within the confines of R&D institutions and fail to get commercialised. The department of bio-technology has now drafted the Public Funded R&D Projects (Protection, Utilisation and Regulation of Intellectual Property) Bill, 2007 for giving a fillip to government aided R&D and promotion of the culture of innovation in the country,” an official source said.

As per the provisions of the draft bill, R&D institutions funded by the government would be permitted to make applications to protect the IP developed by them in countries of their choice and use the revenue generated from such commercialisation. The funding agency (government) could apply for IPs only in such countries not selected by the institutions.

Microsoft settles IE patent dispute with Eolas [International]

The long-running legal battle over web-browser technology is over, but neither side is talking about the details

Microsoft has settled a long-running and expensive lawsuit with Eolas Technologies, a start-up backed by the University of California, that alleged Internet Explorer infringed a patent.

"We're pleased to be able to reach an amicable resolution in this long-running dispute with Eolas and the University of California," the company said in a statement on Thursday, though it declined to share further details. Eolas couldn't immediately be reached for comment.

The suit concerned technology that lets web browsers call up separate applications or plug-ins, such as Flash or Java, within a web page. While at the University of California at San Francisco, Eolas chief executive Michael Doyle led a team that worked on the technology in the patent, and he spun off Eolas to help commercialise it, according to Eolas.

Microsoft revamped Internet Explorer to work around the patent in 2005.

Eolas prevailed earlier in the case, with a court awarding damages of $521m (£258m) in 2003US Patent and Trademark Office upholding the validity of the Eolas patent in 2005. However, a US Supreme Court decision this year weakened Eolas' case, and Microsoft said it expected the damages in the case to be revisited. and the

The Seattle Post-Intelligencer reported the settlement on Thursday and published on Monday a letter from Eolas chief operating officer Mark Swords to shareholders that said: "We are very pleased that we can now focus our resources on commercialising our existing intellectual property portfolio and developing new technologies." It didn't offer details of the settlement, but said Eolas anticipates paying shareholders a dividend by the end of 2007.

Although Microsoft has been a target in several intellectual property cases, the company affirmed its support for intellectual property in the computing industry.

"Microsoft values intellectual property and believes that the proper protection and licensing of IP enables companies and individuals to obtain a return on investment, sustain business and encourages future innovations and investment in the IT industry," the company said.

Source: ZD Net [United Kingdom]

Apple Files Movable-Interface Patent for iPhone [International Patents]

Even if you're not currently blown away with the iPhone, there's more to come.

According to MacNN, Apple has reportedly filed a patent with the World Intellectual Property Organization covering a user interface on portable devices with touchscreen interface that would allow for quick, tactile reconfiguration of on-screen elements such as icons.

In this case, a user could drag an icon to a desired location, such as with a widget under Dashboard. The method would allow for easy reconfiguration of icons as well as allow them to be automatically displaced by other icons.

The patent is currently filed under application number 60,755,368, was filed on December 30th of 2005 and credits Marcel Van Os, Freddy A. Anzures, Scott, Forstall, Greg Christie, Bas Ording, Imran Chaudhri and Stephen Lemay as inventors of the patent.

Australia's data privacy landscape questioned [Data Privacy - Australia]

When it comes to privacy, bank customers in Australia are left to choose between garbage, trash or junk. That is how Gartner's vice president of research, Rich Mogull, describes the current data privacy landscape in Australia.

A strong advocate of the introduction of disclosure laws which force banks to notify customers of a security breach, Mogull said the Australian government needs to act by implementing legislation that includes penalties to ensure compliance.

Without these laws, Mogull said customers cannot make an informed decision when seeking a financial services provider.

He said breaches are occurring in Australia but it is impossible to get meaningful statistical data that could provide some insight into the current IT security landscape.

"There is no legislative protection in Australia just the National Privacy Principles [under the Privacy Act] which are not enforced; the current landscape in Australia is what it was like in the United States pre-2005 before the first breach notification law was introduced in California," he said.

Mogull's comments delivered at Gartner's IT security summit in Sydney today are part of a broader push for changes to the Privacy Act currently being reviewed by the Australian Law Reform Commission (ALRC).

The ALRC is releasing a discussion paper next month recommending the introduction of security breach disclosure laws in Australia with the final report to be delivered to the federal Attorney General, Philip Ruddock in March, 2008.

The recommendation also has the support of the Federal Privacy Commissioner, Karen Curtis.

Mogull said disclosure laws in the US have been the biggest single driver in improving the IT security landscape. Under the Californian law, which he said is the first of its kind in the world, if a specific combination of data is disclosed then customers must be notified. That combination includes the customer's first and last name, along with credit card and banking details, and social security number. "The law was ignored for two years until the Choice Point breach then the flood gates opened," Mogull explained.

"Previously there was no external pressure to act. If an organization is losing customer data and it doesn't affect the business then there is no impact.

"The customer suffers but the business doesn't. There is a built-in market force to keep your mouth shut. Basically, market forces are working against privacy protection."

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Mogull said 40 states in the US now have disclosure laws providing customers with a level playing field to make informed decisions.

"The IT security landscape here today has been reduced to a choice of garbage, trash or junk but bad publicity about breaches can change that, it can force change," he said.

"Australia isn't any safer than the US when it comes to data protection I know breaches are occurring as I work with the financial services sector here and know what security programs the banks have in place.

"In fact I think it is a much harsher environment here, especially when it comes to phishing and Australia's proximity to Asian economies; it is just hidden more from consumers.

"There are no market forces pushing organizations to do better."

Mogull said disclosure laws are a good starting point to improve the IT security landscape because it would enable the collection of valuable data and to understand how breaches occur.

"With good stats we can make good decisions," he added.

While Mogull believes the laws should include penalties, he said there should also be a built-in mechanism that allows consumers to take legal action themselves.

He admits organizations may need to increase budgets to be compliant.

"If an organization is currently spending five percent of their budget on security they may have to bump that up to seven percent; but this usually involves a shifting of funds rather than new money," Mogull said.

The Australian Bankers Association (ABA) CEO, David Bell, told Computerworld banks already have a legal duty to protect customer data under a number of laws without the introduction of data disclosure legislation.

Bell said confidentiality and privacy is at the core of customer relationships.

He went on to say it would be premature to comment on the introduction of data disclosure laws before the ALRC's final report is handed down next year.

"But we are certainly awaiting the outcome of the report as the ABA has made a submission to the ALRC on the privacy review," Bell said.

Britain's Information Commissioner's Office Worried Over Data Privacy [Data Privacy - United Kingdom]

The UK's data protection watchdog has warned that greater transparency about data collection is needed as more personal information is shared between different organisations.

The Information Commissioner's Office (ICO) has published new guidelines for individuals to better understand how and why organisations use their data under the current Data Protection Act.

People are not always aware of the extent to which their personal data can be shared by different organisations, according to the ICO -- between, for instance, the police and a local authority.

Iain Bourne, head of data protection projects at the ICO, said in a statement: "More and more information is being shared about us, often for useful and wholly legitimate purposes. It is important that individuals are aware of their rights under the Data Protection Act."

Responding to the ICO's warning, Graham Hann, a technology partner at European law firm Taylor Wessing, said UK data protection laws "are not clearly interpreted in many areas" which can make it difficult for people to understand their rights. Wessing warned that although the general legal requirement is that companies cannot use individuals' data in ways they have not consented to, there are exceptions.

He said in a statement: "New laws brought in recently require that customers opt in to sharing of data for marketing purposes where the marketing would be by email. However not all organisations have caught up to speed with these laws and individuals may find their details being used by businesses wishing to sell them goods or services that they have no interest in receiving."

Businesses should be wary of buying data from third-party sources, he said, and be sure to verify they have legal right to use the data in the way they intend.

The law firm added that consumers' awareness of data protection issues has "risen dramatically in recent years".

The latest data warning from the data protection watchdog follows the launch of silicon.com's Full Disclosure campaign - which is aiming to persuade the UK government to change the law on data breaches so that companies have a legal requirement to inform individuals when their data has been put at risk by a security breach.

USPTO Proposes New Rules for Alternative Claim Language [International Patent Law]

As part of its ongoing efforts to enhance patent quality and reduce pendency in accordance with its "21st Century Strategic Plan," the U.S Patent and Trademark Office published a Notice of Proposed Rulemaking on August 10, 2007 to revise its treatment of claims that recite alternatives, including claims use Markush groups and/or other forms of alternative language. To be ensured of consideration, written comments must be received on or before October 9, 2007. No public hearing will be held. For further official information, contact Kathleen Kahler Fonda, Legal Advisor, Office of the Deputy Commissioner for Patent Examination Policy, by telephone at (571) 272–7754; by mail addressed to: Box Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450; or by facsimile to (571) 273–7754.

Current Office policy requires examination of all species of a claim that recites a Markush group when the alternatives are sufficiently few in number or so closely related that search and examination can be made without serious burden. Even where the search and examination of a claim that has "unity of invention" would require serious burden, the examiner must determine the patentability of the claim. In such case, however, the examiner may require applicant to elect a single species under 37 CFR 1.146 for initial search and examination to facilitate examination on the merits. If the elected species is not allowable, examination of the Markush claim will be limited to the elected species and any species not patentably distinct therefrom, and any separate claims to the elected species and any species not patentably distinct therefrom. Claims that drawn to species patentably distinct from the elected species are held withdrawn from further consideration. If the elected species is allowable, then the search and examination of the Markush claim will be extended to non-elected species to the extent necessary to determine patentability of the claim. See MPEP 803.02.

According to the Notice, Markush and other alternative formats are being used to claim multiple inventions and/or to recite hundreds, if not thousands, of alternative embodiments of a single invention in one claim. Proper search of such complex claims often consume a disproportionate amount of Office resources as compared to other types of claims. The prosecution of these complex claims likewise requires separate examination and patentability determinations for each of the alternatives within the claim, e.g., if the alternatives raise separate prior art, enablement, or utility issues. Furthermore, the variety and frequency of alternatives recited in claims filed in applications pending before the Office, driven in part by trends in emerging technologies, have exacerbated problems with pendency.

Under the proposed rules, claims that recite alternatives will have to meet two new requirements:

1. Each Claim Must Be Limited to a Single Invention

In addition to proposing a requirement limiting a claim to a single invention, the Office is proposing to specify that when subject matter that reads on multiple species is defined in a single claim using alternative language, the claim is limited to a single invention when at least one of the following two conditions is met: (1) All of the species encompassed by the claim share a substantial feature essential for a common utility, or (2) all of the species are prima facie obvious over each other. The Office proposes to encourage applicants, when filing a claim that employs alternative language, to provide an explanation as to why the claim is directed to a single invention.

The Office also proposes that applicants using alternative formats in continuation-in-part applications must identify which claim or claims in the application are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-filed application. This proposal would reduce examination complexities and identify situations wherein a prior art reference that anticipates or renders prima facie obvious at least one species within the scope of a claim would not be available as prior art against another species if that species was set forth in a separate claim.

2. New Format Requirements for a Claim With Species Presented as a Set of Alternatives

A simplified format for the presentation of such claims must be met by any claim that uses alternative language. The Office proposes to adopt language similar to that in the PCT Guidelines, specifically requiring that the number and presentation of alternatives in the claim not make the claim difficult to construe, and requiring that each alternative within a list of alternatives must be substitutable one for another. (PCT Guidelines (paragraph 5.18) specifies that a claim can contain alternatives ‘‘provided those alternatives are of a similar nature and can fairly be substituted one for another, and provided also that the number and presentation of alternatives is a single claim does not make the claim obscure or difficult to construe.’’)

In addition, to reduce the complexity of determining whether a claim is directed to a single invention, the Office proposes to specify that no alternative may itself be defined as a set of further alternatives. Finally, the Office proposes to specify that no alternative may be encompassed by any other alternative within a list of alternatives, unless there is no other practical way to define the invention. In other words, applicants should file a series of individual claims from the broadest scope that they feel they are entitled to the narrowest scope they are willing to accept. Put differently, applicant should narrow the scope of protection sought via separate claims, and not via nested sets of overlapping alternatives.

Scirus - the Science Search Engine [International]

Scirus is a science-specific search engine on the Internet for searching more than 415 million science-related pages. According to their site, Scirus helps you quickly locate scientific information on the Web:

• Filters out non-scientific sites. For example, if you search on REM, Google finds the rock group - Scirus finds information on sleep, among other things
• Finds peer-reviewed articles such as PDF and PostScript files, which are often invisible to other search engines.
• Searches the most comprehensive combination of web information, preprint servers, digital archives, repositories and patent and journal databases. Scirus goes deeper than the first two levels of a Web site, thereby revealing much more relevant information.

Authenticating E-Mail Discovery as Evidence [International]

With the recent passage of the amendments to the US Federal Rules of Civil Procedure, the legal press has been filled with articles containing e-discovery advice. At some point, "e-discovery" will need to be converted into "e-evidence" for the purposes of summary judgment or trial. When you're faced with having spent your clients' time and money to both produce e-discovery and mine your opponents' e-discovery to find the "smoking gun," it's critical to ensure you can get those e-mails into evidence -- or keep them out.

Many practitioners think that e-mails are like business letters and will be admitted into evidence just as easily. E-mails, however, may be more prone to problems of authenticity and hearsay than traditional written documents. People often write e-mails casually, dashing off comments with an informality they'd never use with a letter. Little care is given to grammar and context. Their signature or even their name may be omitted. Authenticating an e-mail presents issues not faced with a traditional letter with its formal letterhead, paragraph structure and signature block. Additionally, e-mails are arguably more susceptible to after-the-fact alteration.

Most e-mail systems, for instance, allow a person forwarding an e-mail to edit the message being forwarded. Such alteration wouldn't be discernible to the recipient. E-mails are also more prone to a kind of hearsay-within-hearsay problem: an "e-mail chain" attaches to an e-mail every e-mail that came before it in a discussion. It isn't enough to get the most recent e-mail into evidence when that e-mail attaches a string of previous e-mails. All of the prior e-mails may need to be separately authenticated and found admissible.

Given the dramatic shift toward the use of e-mails in business communications, courts and practitioners are likely to encounter issues of e-mail evidence more frequently than in the past. Are e-mails so different from traditional written documents that the rules of evidence are out of date? We think that there are practical ways to employ the rules of evidence to confront the special admissibility problems posed by e-mails.

AUTHENTICATION

In order to ensure that an e-mail will be admitted into evidence, a proper foundation for its authenticity must be laid.

Authentication is necessary not only at trial but also at the summary judgment stage.

Although challenges to the admissibility of evidence are not always raised in response to summary judgment motions, a lawyer should be prepared to submit evidence in the form of affidavits to support the authenticity of any e-mail that he or she intends to introduce. In several instances, courts have excluded e-mails at the time of dispositive motion -- not because the e-mails were clearly inauthentic, but because evidence wasn't submitted to support their authenticity in the face of a challenge. One such case is the Western District of Pennsylvania's Bouriez v. Carnegie Mellon University.

Similarly, a lawyer may need to depose a witness to establish the authenticity of an e-mail, based on the witness' personal knowledge, or to have that witness available at trial. Stipulations and requests for admissions can eliminate authentication issues or narrow the scope of those e-mails that will be problematic. In federal court, the parties may choose at their Rule 26(f) conference to agree to a process for stipulating to the authenticity of e-mails each party produces during discovery to avoid unnecessary expense.

The bar for establishing authenticity is not high under Federal Rule of Evidence 901. In the 3rd U.S. Circuit Court of Appeals, a court need only be able to legitimately infer that a document is genuine to find it to be "authentic." Deeper questions concerning trustworthiness might go to the weight of the evidence. In U.S. v. Safavian, faced with a mountain of e-mails, the court refused to require detailed authentication.

Some e-mails can be self-authenticated under Rule 902(7). Business labels, including signature blocks, that evidence the company from which an e-mail was sent, or even the name of a company in an e-mail address, might be sufficient proof of authenticity on their own. Other circumstances, such as the distinctive characteristics of an author's e-mail address or the subject matter and style of the e-mail itself, may also be sufficient to establish authenticity.

An e-mail often has attached to it the e-mail or series of e-mails to which it is responding, creating an e-mail "chain," also known as a "string" or "thread." Some courts have found that each e-mail in a chain is a separate communication, subject to separate authentication and admissibility requirements. A lawyer should thus be prepared to authenticate every step of a chain.

The Pennsylvania Superior Court, however, has noted that uncertainties of authenticity for e-mails are the same as for traditional written documents: "A signature can be forged; a letter can be typed on another's typewriter; distinct letterhead stationary [sic] can be copied or stolen," according to In re F.P. The court therefore rejected the notion that e-mail is inherently more unreliable than traditional written documents, as well as the argument that e-mail cannot be properly authenticated within the existing framework of Pennsylvania law.

HEARSAY

The second major hurdle for getting an e-mail into evidence is the hearsay rule. By definition, hearsay is an out-of-court statement "offered in evidence to prove the matter asserted." The first way, therefore, to overcome a hearsay challenge to the admission of an e-mail is to claim that it's not hearsay at all.

An e-mail that is an admission by a party-opponent is "not hearsay." If your opponent is an individual, this is a simple test. In the corporate setting, however, damaging admissions may be authored by lower-level employees who do not have the authority to be making such statements. In order for the e-mail to qualify as a party admission, the author needs not only to be acting in the scope of his or her employment but also to have the proper authority.

Party-opponent admissions would also include statements by "a party's agent" concerning matters within the scope of the agency, i.e., "vicarious admissions." In addition, if your opponent's e-mails contain statements of others without reservation, e.g., when a party forwarded e-mails received from others, the e-mails may be introduced in evidence as "adoptive admissions," according to Safavian. This kind of statement has indicia of reliability because "the party has manifested an adoption or belief in its truth."

Another way to overcome a hearsay challenge is to fit the e-mail into one of the exceptions to the hearsay rule. These exceptions are permitted because their context makes them likely to be reliable.

Many practitioners would consider e-mails as classic examples of business records for corporate entities that routinely use e-mail for both internal and external communication. Under Federal Rule of Evidence 803(6), however, only "if it was the regular practice of that business activity" to make that record can a document come into evidence under the exception. An e-mail might fit this "business records" exception if the company -- not just the individual, but the company itself -- has a reliable practice of sending, receiving and storing that kind of e-mail. A company might have that kind of practice if it takes and records purchase orders via e-mail. Notably, an e-mail that fits into the "business records" exception may also be self-authenticating, under Rule 902(11), if its authenticity is supported by an affidavit.

Many e-mails, however, do not meet the "business records" exception because they are merely chatter, statements that are made casually and not as a matter of obligation or even routine. An e-mail sent at an employee's sole discretion is not likely to have the necessary indicia of reliability and trustworthiness to be admitted as a "business record." If an employee sends off a quick e-mail to a colleague commenting on the substance of a meeting with a business partner, it may not be admissible. By contrast, minutes of the same meeting kept by the same employee and circulated to all in attendance, in e-mail form, at the request of management could qualify under the "business records" exception. Although there is not yet a well-established line of cases on this issue, courts appear concerned that if they allow e-mails into evidence as "business records" too easily, people will begin to use the convenience of e-mails to write self-serving internal communications.

With the advent of handheld devices as well as the ubiquity of laptop computers, e-mails may actually be admitted into evidence on the basis of "present sense impressions," or even as "excited utterances," as in Lorraine. People are often using e-mail to comment on events as they are transpiring, even during meetings. If one can show that an e-mail was written while perceiving an event or immediately thereafter, or while under the stress caused by a startling event, it might meet the "present sense impression" or "excited utterance" standards of rules 803(1) and 803(2).

Of course, these standards are difficult to meet because contemporaneousness or near-immediacy is necessary. An e-mail might still meet the "present sense impression" standard if written 10 minutes after an event, but many e-mails are written hours or days later.

Just as with authentication, one should be prepared to argue for the admissibility, under the hearsay exceptions, of every e-mail in an e-mail chain, as in New York v. Microsoft Corp. One should also be aware, as with authentication, that evidence that is clearly inadmissible at trial cannot be considered by a court on summary judgment.

Although Rule 56 does not require an unequivocal ruling that an e-mail will be admissible at trial for a court to consider it on summary judgment, one should be prepared to support its admissibility with an affidavit.

The special problems posed by e-mails do not change the rules of impeachment. A lawyer's ability to cross-examine a witness with a prior inconsistent statement does not change merely because the statement is contained in an e-mail.

BE PROACTIVE

The admissibility problems related to e-mail extend to other forms of electronically stored information, too. Text messages, instant messaging, chat rooms or "team rooms" (in which all materials concerning a project are preserved electronically for the entire project team to access) all present unique evidentiary challenges.

Practitioners need to be proactive in their efforts to ensure that key pieces of evidence can be admitted at trial. From the time of the initial review of documents through discovery, lawyers need to focus on how to get in or keep out such evidence.

Sony and 3M settle intellectual property dispute [International]

The bickering that boiled over into a patent dispute earlier this year between 3M and Sony has finally ceased, but it seems like Lenovo and friends may actually still be fighting their own battles with the innovative giant.

Nevertheless, Sony Corporation and Sony Electronics are now "licensed sources of batteries containing 3M's cathode technology," and while specific terms of the settlement shall remain confidential, we're sure it was no small sum that Sony was required to pay out.