Author: Delain Law Office

SEB, S.A. v. Montgomery Ward & Co, Inc.

Posted on by Delain Law Office

There’s a new patent infringement case in effect now. In SEB, S.A. v. Montgomery Ward & Co., Inc., the Federal Circuit held that the “knowledge-of-the-patent” requirement for proving inducement of patent infringement can be satisfied by a showing of “deliberate indifference” on the part of the accused infringer, such as when the accused infringer copies a patentee’s product and fails to inform its patent attorney of that fact when obtaining a “right to use” opinion.

USPTO Pilots Program to Accelerate the Patent Process for Small Entity Inventors, USPTO Press Release, 09-26

Posted on by Delain Law Office

Backlog Reduction for Small Entity Inventors Pilot Will Allow Small Entities to Gain Advancement for a Pending Application In Exchange for Abandoning Another Application.

Now isn’t this interesting. If a small inventor (presumably this means someone who can legitimately click “SMALL ENTITY” on the patent application forms) abandons one application, they can get another application moved up in the system.

I’m not quite sure how abandoning one invention in favor of another protects an inventor, but it’s certainly an option worth discussing with your patent attorney. It’ll save you the cost of a double patent prosecution, if nothing else, but it doesn’t sound like it will protect the abandoned invention at all, so I intend to advise my clients to consider this very carefully before proceeding.

The USPTO is always trying to come up with ways to diminish their backlog of patent applications that await first office actions. Certainly getting an inventor to abandon an application would do that, but at what cost to the inventor?

Clearly, this option is not for everyone. Maybe for some, yes, but not for everyone.

The other thing they’re doing may work better for the reduction of the backlog in the long run: they’ve got a hiring frenzy going on right now. They’re looking for warm bodies to throw at the backlog (not always a good thing, but not always a bad thing, either). If you have any sort of technical expertise at all, and you like the idea of living in the DC/northern Virginia area, visit their website at www.uspto.gov to apply for the position of Patent Examiner. They have many open slots.

Taxing the Internet

Posted on by Delain Law Office

The US Supreme Court yesterday (25 January 2010) decided Hemi Group, LLC v. City of New York,, ___ US ___ (2010). (The link goes to the slip opinion of the Court, which is a .pdf).

Hemi Group sells cigarettes over the internet. They are based in New Mexico, well outside of the usual jurisdictional reach of New York City and its ordinances.

New York City has a city ordinance putting a surcharge tax of $1.50 per pack on all cigarettes sold within the five boroughs.

New York City likes the $1.50 it gets for every pack of cigarettes sold in the City; that’s a lot of $1.50 payments rolling in, and it produces significant income to the City. They are backed up by federal law: the Jenkins Law 15 U. S. C. §§375-378, requires out-of-state sellers to
submit customer information to the States into which they ship cigarettes, and New York State has agreed to forward that information to the City.

Hemi Group sells its cigarettes over the internet without registering with anybody and they certainly do not disclose their customer list to some City agency. After all, customer lists are commonly acknowledged to be trade secrets, and Hemi’s customers don’t need the City chasing them down to tax them for their packs of cigarettes: why should Hemi divulge just so New York can collect its surcharge?

New York City sued Hemi Group, LLC under RICO to recover the lists to enable them to go after the City residents who bought tax-free cigarettes.

The City’s theory went something like this:

Hemi committed fraud by selling cigarettes to City residents and failing to submit the required customer information to the State. Without the reports from Hemi, the State could not pass on the information to the City. Therefore, some customers who were legally obligated to pay the cigarette tax to the City failed to do so. Because the City did not receive the customer information, it could not determine which customers had failed to pay the tax. Without that information, the City could not pursue those customers for payment. The City thereby was injured in the amount of the portion of back taxes that were never collected.

It turns out that the City chose the wrong statute under which to sue. RICO requires a direct causation link between the deed and the harm. There are just too many layers here, since the Jenkins Act goes through the State. Thus, under RICO, not only must “but-for” causation exist, but also proximate causation must be very proximate, especially when dealing with a case that transcends jurisdictional lines over the internet.

On the surface (and I haven’t had the chance yet to read this case much below the surface), I like this case. RICO is a tough statute that carries some stiff penalties, as well it should: racketeering and corruption are things that, as a society, we’d like to discourage. However, RICO is just a wee bit too much for a firm that simply fails to register with a state before doing business in that state. Heck, if RICO applies every time a business does business across state lines without registering first, many, if not most, small enterprises would be promptly out of business because their owners would be in the federal pen. This is true more than ever with the geographic seamlessness of the internet; people in California can get to the website of a small business here in Schenectady just as easily as can the next door neighbor to the business. Does the internet mean that every small business has to register in every state? This case, on first reading, indicates probably not. Thank goodness.

Chinese search engine Baidu sues Register.com

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…for allowing cyberterrorism against it.

Evidently, hackers got into the baidu.com website and posted an Iranian flag and a broken Star of David. Baidu claims that this damaged its reputation in the world marketplace, and perhaps it did.

It’s going to be interesting watching this battle. Is Register.com responsible for the activities of the hackers? Should they have taken further steps to protect the baidu.com domain? If so, what should those steps have been?

Stay tuned for the answers to these and other questions….

Microsoft Can't Sell Windows in China

Posted on by Delain Law Office

According to PC World, a Chinese court has ruled that WIndows violates a Chinese company’s IP rights.

Of course, China, where somewhere around 80% of electronic materials such as computer software, movies and DVDs, and other media are pirated copies, shouldn’t complain.

The problem is over the interpretation of a licensing agreement between Microsoft and the company in question; the company says that the fonts it owns are not included in the licensing agreement, Microsoft says they are.

We’ll see who wins in the Chinese judicial system. My best wishes and condolences to Microsoft (and I’m not usually on their side).

Google – in French

Posted on by Delain Law Office

Trademarks are always adjectives. That is the first thing I learned in trademarks class in law school. Take that as a given. Trademarks are always adjectives. By corollary then, trademarks are never verbs.

Enter GOOGLE®. GOOGLE is a search engine that prowls the internet and Finds Things with reasonable efficiency, and it is very popular. So popular, in fact, that the name of the website and company — Google — is now defined as “to search for on the internet.”

Whoa. That’s a verb. Notice the infinitive there? “To search…” That must mean that the word being defined is a verb. “To google.” I hear “google” being used as a verb in common parlance all the time: “I googled myself” instead of “I ran a GOOGLE® search on myself.” It’s shorter. It’s easier to say. It’s wrong.

By making the mark synonymous with that which the mark is meant to identify, the English speakers of the world have admitted the verb “to google” into the English language. English does that. It gloms onto new, interesting and fun words and simply swallows them whole. It did that with aspirin, cellophane and escalator. It’s doing that with XEROX® and KLEENEX®. And, it seems, English is glomming onto GOOGLE®.

French, on the other hand, does not glom. The French language is governed and controlled by a group of word scholars in Paris called >L’Academie Française. These etymologists examine every new word that comes their way to see if the word is eligible for admission into the French language (don’t ask me about the standards they use; run a GOOGLE® search on “l’academie française” and find out for yourself). Therefore, when a new word makes it into the French language, it’s a pretty big deal.

Regardez ici — that means “Look here” for you non-French-speakers — and see what has happened in French. I even heard a rumor from a French-scholar client of mine that it’s officially listed by L’Academie.

Wow. The French have admitted “googler” (pron. “goo-GLAY”) into their language. Is this admission based on usage the death knell for the GOOGLE® mark? After all, if a mark comes to mean what the product or service is, the mark can be challenged as being generic. Even fanciful marks can turn generic with usage: the list of these is long. Escalator. Cellophane. Aspirin.

Stay tuned.