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Top Intellectual Property Law Issues of 2005, by Wolf, Greenfield
Thursday, January 06 2005 @ 02:29 PM EST

It's usual at this time of year to try to figure out what the future holds. I asked Henry Stimpson if he'd poll the folks at Wolf, Greenfield & Sacks, a Boston IP law firm (with a really lovely website), and give us the firm's assessment of what to keep an eye on for the coming year, as far as IP law is concerned. He graciously agreed. What I found most interesting is what they say about more conflict expected between patents and antitrust law.

In connection with patents, the Washington Post's Jonathan Krim is reporting a major scoop today (reg req'd):

"Several of the world's largest high-tech corporations plan to urge Congress today to force Internet service providers to crack down more aggressively on their users who swap copyrighted software, music or video files online.

"The move is a significant escalation in the campaign by the software and entertainment industries to squelch widespread file sharing by millions of users through services such as Kazaa, Grokster and Morpheus. If successful, it could reshape a long legal tradition of shielding phone, cable and other communications companies from liability for the actions of their customers."

Yes, you heard right. The BSA is asking Congress to change the DMCA to make it possible for the entertainment industry to get subpoenas from a clerk process instead of a judge and use them to force ISPs to turn over user information.

They are releasing a paper about it later today, and when it's released, here's where you will be able to find it.

The RIAA just lost a second appeals court case, this one in Michigan, on that very issue, the court [PDF] ruling that ISPs are conduits and not responsible for copyright infringements by users and that the RIAA, the plaintiff, could not use the easier subpoena process to out ISP customers but would have to use the John Doe method, which gives John Doe an opportunity to be heard before a judge first, prior to any subpoena issuing. You probably remember the Verizon case [PDF] we covered here on Groklaw, which was the RIAA's first loss on the same issue. You might also like to review the exclusive interview Groklaw did with Sarah Deutsch, the lead attorney on the Verizon case, on why it matters how the RIAA gets subpoenas. Think stalkers.

Anyway, the RIAA rep said after the loss that their enforcement efforts wouldn't miss a beat, and today I read the BSA is asking Congress to change the DMCA to let them do what the RIAA wants to do. Members of the BSA include Microsoft and IBM, the article points out. Here is the BSA Members list.

Here is the remarkable part. The BSA is also asking for patent reform:

One problem is that as patents have proliferated, a new kind of business has emerged in which companies seek to enforce patents solely to make money, not to use the technology. Even when the patents are not likely to stand up in court, companies often settle with the patent owners rather than go through costly legal battles.

The BSA wants administrative procedures to allow third parties to be able to challenge patents after they are granted, and to limit damage awards for willful patent infringement.

That tells you just how bad the patent system has become, does it not?

So, I think that situation also bears watching, and here are Wolf Greenfield's picks for the coming year:


Top Intellectual Property Law Issues of 2005 --
Internet-Related Cases, Higher Filing Fees, Antitrust-Law Conflict To Reshape Landscape, says Wolf Greenfield

The intellectual property arena bubbled with activity last year. AutoZone, a LINUX user, was sued by the SCO Group, which claims to own copyrights allegedly infringed by LINUX.

A top court ruled on the Knorr-Bremse case 1, overturning the necessity of obtaining a lawyer’s opinion to avoid a finding of willful patent infringement. Several companies filed lawsuits against Google and other search engines claiming trademark infringement for selling trademarked search terms.

This year promises more intense activity. The Boston law firm Wolf, Greenfield & Sacks, P.C., an intellectual property specialist, sees the following issues and cases as reshaping the IP landscape in 2005.

Supreme Court to rule on Grokster music file-sharing case. 2

The high court will reconsider the 9th Circuit U.S. Court of Appeals’ ruling that Grokster, a file-sharing network, is not responsible for copyright infringement by its users.

“I predict the Supreme Court will uphold the decision and that copyright holders will need to pursue alternate strategies to protect their rights,” says Michael Albert, head of litigation at Wolf Greenfield. “This case is part of the clash between digital-rights advocates and ‘right-to-copy’ advocates that’s playing out all over the world in litigation and legislation,” he adds.

More conflict between intellectual property law and antitrust law.

Antitrust law promotes open competition while IP law restricts it by giving owners of IP exclusive rights. Has the pendulum swung too far toward the IP side? Some companies use patents solely as a litigation program. Antitrust law could be enforced to crack down on that. The Federal Trade Commission held hearings on the issue last year and issued a report. “Expect some major movement—a court decision or legislation—in 2005,” says Edmund Walsh, counsel.

Fewer but higher-quality patents because of higher filing fees. In December, the US Patent and Trademark Office raised its filing fees significantly—particularly for patent claims, which define the scope or “boundaries” of an invention.3 Companies of all sizes must think harder about which patents and claims are worth pursuing, Walsh says. While the impact on a small business is obvious, even big technology companies are affected because they file so many patents.

Phillips v. AWH case 4on standards for patent claim interpretation.

The U.S. Court of Appeals for the Federal Circuit (CAFC), the nation’s top patent court, will decide on Phillips v. AWH, which will clarify the interpretation of patent claims—and possibly lead to more restrictive interpretations. Today, different judges use different standards to interpret claims. Some rely on the patents and drawings; others use dictionary definitions of words in the claims. The decision will enforce consistent standards and have a major impact on how broadly claims are interpreted and on future litigation, says James J. Foster, a senior litigator at Wolf Greenfield.

Fallout from Knorr-Bremse decision on willful patent infringement.

This landmark 2004 CAFC case reversed a longtime precedent that presumed a company might be deemed guilty of willfully violating a patent unless its lawyer had filed a letter certifying its innocence. But the devil is in the details as the lower courts apply it case by case in litigation, Foster says.

Decision on Tiffany’s trademark-infringement lawsuit against eBay.5

Tiffany & Company last year sued eBay, claiming the Internet site infringes on its trademarks by allowing users to sell fake Tiffany jewelry and “actively encourages the sale of counterfeit merchandise.” The U.S. District Court of the Southern District of New York will hear this first-of-a-kind case and is expected to issue a decision sometime in 2005.

4 5

Wolf, Greenfield & Sacks, P.C., Boston, (, is one of the most experienced law firms devoted to the practice of intellectual property law, including patents, trademarks, copyrights, trade secrets and related litigation.

Henry Stimpson writes on IP law. Contact him at HStimpson at

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