COLOSSAL VERDICT

The smartphone patent wars reached a fever pitch with a record $1.05 billion jury verdict for Apple Inc. against Samsung Electronics Co. in August in the Northern District of California. Then, on December 18, Judge Lucy Koh denied Apple’s bid for permanent injunctions against 26 Samsung products. She applied a heightened standard established by the U.S. Court of Appeals for the Federal Circuit that requires patent-holders to show a direct link between lost market-share and a specific infringing feature of a competitor’s product.

GENE PATENTS

In November, the U.S. Supreme Court granted certiorari in a case about whether human genes can be patented. At issue is Myriad Genetics Inc.’s patent claims for isolated human “BRCA” genes. Their mutations are associated with breast and ovarian cancers. The Federal Circuit has already said yes to the gene question twice. The split decisions also held that Myriad’s method claims for “comparing” or “analyzing” DNA sequences are not patentable. “It’s wrong to think that something as naturally occurring as DNA can be patented by a single company,” said Chris Hansen, staff attorney with the American Civil Liberties Union, who argued for the plaintiffs both times.

UPHOLD THE MAYO

Personalized medicine got a difficult diagnosis in Mayo Collaborative Services v. Prometheus Inc. In March, the U.S. Supreme Court ruled in favor of Mayo, holding that two Prometheus patents related to a diagnostic test for autoimmune diseases treatment were not patent-eligible.
Justice Stephen Breyer noted that under court precedents, a process focused on the use of a natural law must also contain an “inventive concept” so that the patent is on more than the natural law itself. Prometheus’ process claims, he wrote, did not satisfy those conditions.

PATENT REFORM PROGRESSES

Patent reform proceeded, with several changes going into effect at the law’s one-year anniversary in September. The patent office now allows third-party submissions and supplemental information from filers during patent prosecution. Third parties can now use a post-grant review process to challenge business method patents within nine months of a patent’s issue. And the so-called inter partes review system allows third parties to challenge patents within nine months of issue or reissue or after post-grant review. Stay tuned for March 2013, when the United States adopts a first-to-file system.

THE SKY’S THE LIMIT

The international body that runs the Internet received 1,930 applications in June for upcoming generic top-level domain names, which can be almost any word in almost any language. There are currently 22 such domains, such as .com and .biz, plus 280 country-specific ones. The Internet Corp. for Assigned Names and Numbers (ICANN) is sorting out disputes. On December 17, it held a drawing to assign priority to applications because it will issue just 1,000 generic top-level domain names each year. IP trade groups are worried about the post-expansion cost of policing trademarks.

MULTIPLE INFRINGERS

The Federal Circuit issued a 6-5 en banc decision enabling more suits claiming infringement by multiple parties. The majority’s August ruling in Akamai Technologies Inc. v. Limelight Networks Inc. and McKesson Technologies Inc. v. Epic Systems Corp. held that “all the steps of a claimed method must be performed in order to find induced infringement,” but not necessarily by the same party.

DEEP DEFENSE

Amid a wave of defense verdicts in the traditionally plaintiff-friendly Eastern District of Texas, one case provided deep drama and underscored the value of putting important defense players in front of juries. In February, the jury in Eolas Technologies Inc. v. Adobe Systems Inc. found two University of California patents licensed to Eolas invalid. The patents enabled Web browsers to host embedded interactive applications. Tim Berners-Lee, who is credited with inventing the World Wide Web, and Mosaic browser co-author Eric Bina testified for the defense.

YOUTUBE

In April, the Second Circuit revived Viacom International Inc.’s copyright infringement case against YouTube Inc. The court vacated the lower court’s summary judgment ruling for YouTube under the Digital Millennium Copyright Act’s safe harbor. It held that a reasonable jury could find that YouTube “had actual knowledge or awareness” of infringement. Viacom claims $1 billion in damages.

RED SOLES REDUX

Trademark law became more nuanced following the Second Circuit’s ruling that Christian Louboutin’s red-lacquered outsole can be trademarked if the shoe is a different shade. The highly anticipated September ruling clarified the doctrine of aesthetic functionality. The panel held that a color that has acquired “secondary meaning” as a symbol of the brand can be trademarked.

PAYING DEARLY FOR DOWNLOADS

Rulings affirming the Copyright Act’s statutory damages of $750 to $150,000 per willfully infringed work were music to the recording industry’s ears. In September, the Eighth Circuit reinstated more than $220,000 in damages against Jammie Thomas-Rasset for illegally file-sharing two dozen songs. She’s now seeking review from the Supreme Court, which has already denied certiorari in a similar Massachusetts case. After the First Circuit reinstated a $675,000 award against Joel Tenenbaum for infringing 30 songs, Judge Rya Zobel of the District of Massachusetts affirmed it in August.

Sheri Qualters can be contacted at squalters@alm.com.