The Supreme Court issued a decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. a few days ago. How unfortunate for all of us that the decision, which holds that the diagnostic processes described in the two patents of issue are ineligible for patent protection under 35 U.S.C. § 101, reveals in the Supreme Court an utter failure to grasp even some of the most basic concepts of patent law and contains an analysis so flawed that it has the potential to largely inhibit innovation in a wide range of industries.

As a solo attorney, I am often hired to provide counsel and other services to inventors and startup companies. A majority of the time these clients are coming to me to help them find and evaluate potential investors and partnership opportunities designed to bring cash into the startup so that it can move from the prototype stage to marketing and selling like an actual business. I have found more often than not that inventors in this situation carry some common misconceptions regarding how they should approach potential investors and partnership opportunities. The following points will hopefully be useful to any inventor or company to keep in mind while working toward that critical first funding stage.

John Wiley & Sons, Ltd, a UK-based publishing company, and American Institute of Physics, a New York-based, nonprofit membership organization for the scientific community, have filed two complaints alleging copyright infringement against intellectual property law firms in Illinois and Minnesota. The interesting feature of these two lawsuits is that the law firms are being sued for keeping copies of scientific articles showing “prior art” that they were required to submit to the USPTO during the course of obtaining patents for their clients.

According to Satoru "Miles" Kobayashi, he had an vision one night in the form of the late, great Miles Davis in which the latter told the former he should change his first name to Miles and name his cafe accordingly. Not one to ignore the wishes of a jazz legend, whether corporeal or not, Kobayashi did as was requested and opened a New York spot called "Miles' Cafe." Unfortunately for Mr. Kobayashi, Miles Davis Properties LLC, which owns trademark rights in Miles Davis' name and likeness, got wind of Kobayashi's establishment and promptly filed suit. Miles Davis Properties, whose members include two of Mr. Davis' children and one of his nephews, said in its complaint that "Defendants are intentionally free-riding off the goodwill associated with the Miles Davis marks by using them to promote a jazz club entitled Miles' Cafe in a way that is likely to mislead the public."

I have seen quite a few opinions floating around in various blogs on the Internet about Google's apparent, new-found evilness, now that it has been sued by Oracle for infringing a number of patents. I have had more than one discussion in which I have had to remind someone that being accused of infringing patents is not the same as infringing patents. In this case, before Oracle can even bring its argument to court, many of its claims must first survive reexamination. After reexamination even those claims that survive are still subject to various arguments and defenses that will be brought forth by Google to persuade the Court that it is not actually infringing. To put a little perspective on the matter, the subject patents contain a total of 168 claims. Of those claims, 132 of them are subject to reexamination. The USPTO is not yet done reexamining all of those claims, but thus far it has rejected 83 claims and confirmed only 18; not a very good rate for Oracle. The takeaway from this is that one should refrain from making judgment against or for either party in this mess until the process has moved forward enough that any such judgment may be considered more than just a wild guess. Additionally, if you happen to find yourself at the receiving end of a cease and desist letter or demand for royalties based on patent (or copyright, or trademark, or any) infringement, you would do well to consult an expert before simply caving in to the other party's demands.

The United States Court of Appeals for the Federal Circuit recently issued a disturbing opinion regarding the patentability of isolated gene sequences in Ass'n for Molecular Pathology v. PTO, No. 2010-1406 (Fed. Cir. Jul. 29, 2011). While the Court went to great pains to explain the reasoning behind its decision affirming and reversing several different, prior rulings from the Southern District of New York, I am of the opinion that the Court completely missed the ball in reversing the prior court's holding that the defendant's patent claims over isolated DNA were invalid.

I have a number of bands as clients and to me it is always striking when I sit down for that initial consultation and realize the extent to which a band's members or founders are really in the dark regarding some of the most basic concepts behind forming a successful group. I think this is because all band members are artists, or at least, one would hope, musicians, so the majority of them are going to look at a band in a completely different light than say, an attorney like myself. Instead of focusing on some of the more practical issues, the dynamics of the entity as a whole and the more business-like aspects of a group, musicians are more likely to focus on producing the music, social dynamics between the band members and other more “artistic” concerns. With that in mind, the following five concepts are usually the ones that I end up having to address first with my clients before getting on to the issues they originally thought were the most important to address.

To any readers who were here by the end of last year and who are still around:

First off, thank you for hanging around! Secondly, I sincerely apologize for my extreme, 7-month hiatus from posting anything new. In December, 2010 I unexpectedly had to admit myself to the local emergency room for a surgery and a two week stay at the hospital. I had no sooner gotten done recovering when someone very dear to me in my family passed on in late January. These two major events and many less-major ones collaborated to remove my focus from the blog, which would have been okay, except that my focus remained away for far too long.

At any rate, the hiatus is at an end as I am posting the first new article in the past 7 months shortly after I post this one and, I rejoin all of you with a renewed vigor to deliver on the purpose of this website, which is to follow interesting cases, concepts and developments in select areas of law. I am hoping to usher in a dramatic increase in the frequency of stories to levels far above what they were before the hiatus, and I am also hoping that, as time goes on, readership continues to grow and we start to see some community activity by way of suggestions, comments and questions.

Thank you,

Justin

Viacom filed a somewhat scathing appeal what I see as a sound decision in its ongoing case against Google's YouTube for copyright infringement. If you would like to see the point of few of people who do not think the case should have gone in Google's favor, you can find Viacom's YouTube Litigation Homepage here. Part I of this article recounts the history of the case, and Part II contains my analysis of Viacom's appeal.

This case is a good example of the wide variety of legal issues that can be implicated under the umbrella of "Technology Law." In Boring v. Google, Inc., No. 08-694 (W.D. Pa. 2009), Aaron and Christine Boring brought a suit against Google after discovering that a picture of their house that had been taken from one of Google's vehicles from the Borings' private driveway was posted on Google's Street View web application. The Borings sued under a variety of state laws, including "intrusion upon seclusion," "publicity given to private life," and trespass, and also for negligence and unjust enrichment. Google filed a 12(b)(6) motion to dismiss and the District Court granted it. The Borings appealed and, in its decision, the Circuit court upheld the District Court's dismissals for all but the trespass claim which, the Circuit Court noted, is a strict liability offense. Boring v. Google, No. 09-2350 (3d Cir. 2010). Back at the district level, Google and the Borings stipulated to a consent judgment for $1 in damages, which was approved by the Magistrate Judge last Thursday.