Monthly Archives: November 2010

First Invented in a Foreign Country and Later “Invented” Again “in this Country:” Solvay v. Honeywell on 35 U.S.C. 102(g)(2)

Posted on November 12, 2010 by Robert Yeh under The Bolt

In the recent Solvay v. Honeywell (PDF) decision, the Federal Circuit dealt with the issue of who qualifies as a prior inventor for the purpose of 35 U.S.C. § 102(g)(2).  In particular, this case concerns an invention that was invented in Russia but later duplicated in the United States (“U.S.”).  One key invalidity inquiry here is whether an invention first invented in a foreign country and then later duplicated in the U.S. qualifies as § 102(g)(2) prior art on the date of duplication (or re-invention) in the United States.

Fact Summary

Solvay sued Honeywell for infringement of Solvay’s U.S. Patent No. 6,730,817 (“the ’817 patent”).  The patent claims methods of making non-ozone depleting fluorinated hydrocarbons.  Compounds derived from the claimed methods are used as blowing agents for polymers such as expanded foam insulation.  These compounds are valuable because the Montreal Protocol (PDF) on alleviating the ozone-hole problem required phase-out of all ozone depleting chloro-fluoro-hydrocarbons (CFCs) from the marketplace.

Leaving aside the infringement arguments in this discussion, Honeywell argued that some of the asserted claims in the ’817 patent are invalid for anticipation under 35 U.S.C. § 102(g)(2).  Priority date of Solvay’s ’817 patent is October 23, 1995.  According to Honeywell, Allied Signal (Honeywell’s predecessor) made the claimed invention before Solvay’s priority date.  The controversy over Allied Signal’s alleged invention date stems from Honeywell’s assertion that the invention was first made in Russia in 1994 under a research contract, and later duplicated in the U.S. in 1995 by Allied Signal.

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Capitol Records v. Thomas-Rasset: Trial Three

Posted on November 4, 2010 by Margaret Grazzini under The Bolt

Not only was the landmark peer-to-peer file-sharing trial involving Northern Minnesotan Jammie Thomas-Rasset the first of its kind to reach trial; Thomas-Rasset’s file-sharing litigation will likely come to its third trial on November 2, 2010. Thomas-Rasset downloaded 24 pop hits of the 1980s and 1990s and was found liable in 2007 for $222,000 in statutory damages. Judge Michael Davis threw out the previous trial’s jury verdicts. In 2009, there was a second trial where the damages awarded increased to $1.92 million. Judge Davis reduced the award to $2,250 per song, totaling $54,000, under the power of a district judge to remit statutory damages.  In so doing, he rejected the plaintiff’s argument that the U.S. Supreme Court’s decision in Feltner v. Columbia Pictures TV, 523 U.S. 340 (1998) restricts that authority if the damage award is within the statutory range. The $2,250 per song liability imposed by Judge Davis is based on a legal theory that treble damages (triple the minimum in this case) are appropriate for willful behavior.

It is not under dispute that the plaintiff willfully infringed the plaintiff’s copyright through use of KaZaA, a peer-to-peer network, as decided by a previous trial (See Jury Instructions) (PDF). The defendant’s attorneys moved to include a jury instruction on “reasonable damages” and also sought after the court to consider the constitutionality of statutory damages (even at the minimum level) as a due process violation. The court denied both motions. As to the instruction, the judge declined the defendant’s suggestions that the statutory damage award must bear a reasonable relationship to the actual damages, and, rather, instructed the jury that statutory damage for this offense is between $750 and $150,000 per work. (The defendant claims the actual damages are merely $.05 per work.)  Typically, the maximum statutory damage per act of infringement is $30,000. The decided fact that the defendant’s conduct was willful increases potential liability as “[the jury] consider[s] just” (Jury Instruction No. 24) (PDF). Jury Instruction No. 24 does call for some thought on the part of the jury, not simply compelling the maximum amount of damages for the plaintiff:

In determining the just amount of statutory damages for an infringing defendant, you may consider the willfulness of the defendant’s conduct, the defendant’s innocence, the defendant’s continuation of infringement after notice or knowledge of the copyright or in reckless disregard of the copyright, the effect of the defendant’s prior or concurrent copyright infringement activity, whether profit or gain was established, the value of the copyright, the need to deter this defendant and other potential infringers, and any mitigating circumstances.

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Privacy Expectations in the Use of GPS Tracking Devices: United States v. Maynard

Posted on November 4, 2010 by Musetta Durkee under The Bolt

Privacy Expectations in the Use of GPS Tracking Devices: United States v. Maynard, No. 1:05-cr-00386-ESH-10 (Aug. 6, 2010)

The recent D.C. Circuit Court decision United States v. Maynard (PDF) is one in a series of Circuit Court decisions addressing the legality of federal authorities monitoring a citizen using a GPS tracking device without obtaining a warrant. Unlike previous decisions in the 9th, 8th, and 7th Circuits finding that the Fourth Amendment does not limit federal authorities’ ability place a GPS tracking device on a vehicle without a warrant, the D.C. Circuit Court rejected the use of such tracking devices for continuous and prolonged periods of time without a warrant. The Maynard court concluded that because the Fourth Amendment requires a warrant for private information, and because the sum of information garnered from GPS tracking is outside the scope of public view, federal authorities must obtain a warrant for using GPS tracking devices. In about a month following this ruling, the Department of Justice has urged the Maynard court to reverse its decision.

The facts in Maynard involve the owner, Jones, and manager, Maynard, of a nightclub in Washington, D.C. who were charged with and convicted of conspiracy for cocaine to distribute and to possess with intent to distribute. On appeal, Jones and Maynard raised several joint issues (none of which warranted reversal), but Jones also individually argued that “the [district] court erred in admitting evidence acquired by the warrantless use of a Global Positioning System (GPS) device to track his movements continuously for a month.” The Circuit Court was therefore faced with the following issues: (i) whether the continuous use of the GPS tracking device constituted a “search” under the Fourth Amendment, and (ii) if so, whether the search was “unreasonable.”

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The Anti-Counterfeiting Trade Agreement

Posted on November 4, 2010 by Hannah Minkevitch under The Bolt

The Anti-Counterfeiting Trade Agreement (“ACTA”) has been under negotiation since October 2007. Over the past three years a group of nations, including the United States, have deliberated the specific contents and composition of this document designed to establish stronger intellectual property enforcement on a global scale. At the Tokyo round of negotiations this month, a near final draft was published and the intellectual community has responded with a balanced spiritedness.

What is the ACTA?

The purpose of the ACTA negotiations is to create a plurilateral agreement establishing an international system that improves intellectual property rights (“IPR”) enforcement laws. The primary objective of the treaty is to create a legal framework with international standards that can enforce IPR laws against large-scale infringement as a means to further innovation, quality and creativity within knowledge based economies (PDF). According the United States Trade Representative (PDF) the

ACTA will bring together countries that recognize the critical importance of strong IPR enforcement for a prosperous economy. The ACTA is envisioned as a leadership effort among countries that will raise the international standard for IPR enforcement to address today’s challenges of counterfeiting and piracy. The ACTA will build upon the Administration’s prior bilateral and regional cooperation successes.

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