When patent examiners examine patent applications, they will look at whether there exists certain prior art in related field to decide whether the patent application is novel.  Novelty is one of the requirements a patent application must meet in order to become a valid patent.  It is important for practitioners to understand the standard for determining a legitimate prior art, in order to evaluate the chances of winning a patent infringement dispute.

A recent Federal Circuit case, In re Giacomini, 2010 U.S. App. LEXIS 13804 (Fed. Cir. July 7, 2010), extended the scope of the secret prior art defined in 35 U.S.C. 102 (e).  A secret prior art means a prior art filed before but published after the subject patent application is filed.  Under the decision, a US patent or published application will be considered prior art as of the filing date of its qualifying provisional application.  In this case, the Federal Circuit held that, agreeing with USPTO’s position, when a provisional application is used as a prior art, the filing date is the 102(e) priority date, rather than the actual filing date of the later formal application.

35 U.S.C. 102(e)(2), bars the patentability if the invention was described in a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent.  Giacomini’s patent application was first filed on Nov. 29, 2000 and the USPTO examiner found a prior art, U.S. patent 7,039,683 (the “Tran Patent”), against Giacomini’s patent application.   The Tran Patent was filed in December 2000 (after Giacomini) and issued in 2006. However, the USPTO asserted that the patent should be considered as a 102(e) prior art because it claims priority to a U.S. provisional application that was filed in September 2000.

In a prior case, In re Klesper, 397 F.2d 882 (C.C.P.A. 1968), the United States Court of Customs and Patent Appeals (CCPA, the  Federal Circuit’s predecessor court) held that the 102(e) follows the prior precedent of treating a prior art disclosure found in an issued patent as being disclosed as of the “filing date of the earliest U.S. application to which the patent is entitled, provided the disclosure was contained in substance in the said earliest application.”  The Federal Circuit agreed that this provision applies equally to provisional patent applications.  Thus, the Tran Patent shall have the same patent-defeating effect as to the claimed invention as though it was filed on the date of the Tran Patent’s provisional application.

Patent practitioners should be aware of this current development while conducting their prior art search.  Provisional applications could be another source of legitimate prior arts, and should not be overlooked.

WASHINGTON–D.C. District Court Chief Judge Royce C. Lamberth issued a preliminary injunction blocking stem-cell research funding on grounds theresearch violates a Congressional order, the Dickey-Wicker Amendment, that prohibits federally-funded research in which human embryos are destroyed. In particular, the court concluded the plaintiffs, which included the Christian Medical Association, “demonstrated a strong likelihood of success that the [National Institutes of Health Guidelines for Human Stem Cell Research promulgated in response to President Obama’s executive order] violate [the Amendment].”

The National Institute of Health had argued the Amendment was ambiguous and therefore the court should defer to the agency’s interpretation of the statute under Chevron U.S.A., Inc., v. Natural Resources Defense. In particular, the Institute argued the term “research” is ambiguous so its interpretation of the term should be entitled to Chevron deference. But the Court rejected that argument because Congress had directly spoken to the issue so the court gave effect to this Congressional intent:

Congress has spoken to the precise question at issue—whether federal funds may be used for research in which an embryo is destroyed. The Dickey-Wicker Amendment provides that no federal funds shall be used for “research in which a human embryo or embryos are destroyed, discarded, or knowingly subjected to risk of injury or death greater than that allowed for research on fetuses in utero under45 C.F.R. § 46.204(b) and section 498(b) of the Public Health Service Act (42 U.S.C. 289g(b)).”Pub. L. No. 111-8, § 509(a)(2). Thus, as demonstrated by the plain language of the statute, the unambiguous intent of Congress is to prohibit the expenditure of federal funds on “research in which a human embryo or embryos are destroyed.” Id. Contrary to defendants’ argument, the term “research” as used in the Dickey-Wicker Amendment has only one meaning, i.e., “a systematic investigation, including research development, testing and evaluation, designed to develop or contribute to generalizable knowledge.” 45 C.F.R. § 46.102(d) . . .

Volokh Conspiracy blogger Russell Korobkin argued the court’s interpretation of the Amendment is incorrect on the merits. In particular, he argued the Amendment only bars spending federal dollars on research “in which” embryos are directly destroyed, but does not prevent research involving hESC stem cell lines created by replication of existing stem cells:

The key language here is not the word “research,” but rather the phrase “in which.” That is, Dickey-Wicker does not prohibit federal funding of research that is “related to,” “associated with” or “has a connection to,” or “builds upon the fruits of” embryo destruction. It only prohibits funding of research “in which” embryos are destroyed. It is important to remember that Dickey-Wicker is an appropriations rule, so the reasonable interpretation of the scope of the “research” in question is to follow the money in the grant request. If the grant application seeks money for an acitivity that directly results in embryo destruction, this proposal constitutes research “in which” the embryo is destroyed. If an applicant seeks money to study an existing hESC line, the research in question is not research “in which” the embryo is destroyed.

NEW YORK–Artists United, a coalition of New York City artists has sued the New York Department of Parks and Recreation in federal court to challenge the constitutionality of a limit on the number of vendors allowed in Central Park and other heavy-traffic areas.

According to the New York Post, the new regulations, which went into effect July 19, allot the 120 daily vending locations on a first-come, first-serve basis.  Chelsea Now reports that Federal Judge Richard Sullivan reserved decision on a preliminary injunction to stop the rules from becoming effective. But the Judge said he would hold another hearing  if lawyers for the artists or the city requested it.

Information about the new rules is available from the City of New York Parks & Recreation. The rules revise §§1-02 and 1-05(b) of Title 56 of the Official Compilation of Rules of the City of New York.

BOSTON–The First Circuit has rejected an effort by prescription drug analysts to challenge Maine’s law  allowing doctors to keep prescription drug histories secret. The three-judge panel in Boston upheld the constitutionality of 22 Me. Rev. Stat. tit. 22, section 1711-E(2-A), which allows Maine physicians to keep identifying information away from those marketing prescription drugs to doctors.

The district court had granted plaintiffs’ motion for an injunction prohibiting enforcement of Maine’s law ongrounds the ban violated First Amendment rights. The Circuit court reversed because: (1) the statute regulates conduct, not speech; (2) even if the statute regulates commercial speech, the regulation satisfies constitutional standards; (3) the Maine statute constitutionally protects Maine prescribers’ choice to avoid unwanted solicitations based on their identifying data; (4) the statute was not vague; (5) the statute does not violate the Dormant Commerce Clause because it regulates prescription drug information intermediaries’ out-of-state use or sale of Maine prescribers’ data; and (6) the statute does not impose disproportionate burdens on interstate commerce.

The case, decided August 4, 2010, is IMS Health Inc. v. Mills, 08-1248.

WASHINGTON — The Library of Congress today added five new exemptions to the Digital Millennium Copyright Act (DMCA) to protect consumers who modify their cell phones, artists who remix videos, documentary filmmakers, and students. The exemptions lift the prohibition in 17 U.S.C. section 1201(a)(1) against circumvention of technological measures that control access to copyrighted works.

DMCA is a US copyright law that criminalizes attempts to bypass digital copyrights. The 1998 Act is revisited every three years, with new exceptions added based on changing technology. These landmark exceptions were carved out for  consumers who modify their cell phones, artists who remix videos, documentary filmmakers, and students who, until now, could have been liable for non-infringing or fair use.

The immediate effect of these key new exemptions is to permit: (1) jailbreaking cell phones (2) college professors, students, and documentary filmmakers to circumvent DVD copyright protection for “criticism or comment” (3) breaking e-book protection to enable text to speech and (4) breaking video game protection for testing. The exemptions also define obsolete computer software more clearly.

The headline-grabbing change is the legalization of jailbreaking, or the process by which cell-phone users can modify their software to bypass copyright protection and customize their phones. Users can now legally break copyright protection to execute software applications if circumvention is solely for enabling interoperability. One significant effect is that cell-phone users will be able to unlock their phones to make them compatible with different wireless networks.

The new exemption will stifle Apple’s efforts to shut down so-called “jailbreak” sites that offer alternative software and customization for the popular i-Phone. Apple had fought hard to argue jailbreaking violated copyright law. But the Copyright Office rejected Apple’s claim that copyright law prevents installing unapproved programs on iPhones: “When one jailbreaks a smartphone in order to make the operating system on that phone interoperable with an independently created application that has not been approved by the maker of the smartphone or the maker of its operating system, the modifications that are made purely for the purpose of such interoperability are fair uses.”

Apple could still potentially ban jailbreaking indirectly by add new conditions to its user agreement.  But those agreements, governed by contract, would force Apple to sue its own customers to recover any actual damages. Meanwhile, unofficial “app” stores like Cydia and RockYourPhone are poised to grown in popularity as a result of the new exemptions.

Another important change is that college professors, students, documentary filmmakers, and those making noncommercial videos are now able to circumvent copyright protection on DVDs “in order to accomplish the incorporation of short portions of motion pictures into new works for the purpose of criticism or comment, and where the person engaging in circumvention believes and has reasonable grounds for believing that circumvention is necessary . . .” The exemption, which previously only applied to professors, has now been expanded to include students and filmmakers. The new rules will also likely protect video remix artists who rework commercial videos on websites like YouTube. These artists will no longer violate the DMCA when they use short clips from DVDs to create new, noncommercial works for purposes of criticism or comment. The exemption rejects Hollywood’s longstanding argument that “ripping” DVDs always violates the DMCA.

The user may take only a “short portion” of the original work for purposes of criticism and commentary, and the user must reasonably believe it is necessary to break the digital rights management. The exemptions doe not apply to K-12 educators and students who aren’t in film and media studies classes. The bottom line, however, is that it is clearly fair use to use short portions of a movie for purposes of criticism or comment in a noncommercial video.

Another new exception to the DMCA allows users to break copyright protection on e-books in order to enable text-to-speech functionality. Text-to-speech functionality of the Kindle was an issue with the Authors Guild who felt it took away from potential audio book sales. The exemption does not apply if a publisher offers an option for an audio version. Nevertheless the exception is a significant victim for individuals with visual impairment and other disabilities.

The last new exemptions allows breaking copyright protection on video games “when circumvention is accomplished solely for the purpose of good faith testing, for investigating or correcting security flaws or vulnerabilities.” This addition was added specifically to advance research in the area of SecuROM and SafeDisc.