1. DMCA Notices and Patents CasesMM450 February, 2008 And now, for something new, useful and not obvious…

2. DMCA Notice and Take Down Elements of notice –Physical or electronic signature –Identification of copyrighted work –Identification of material claimed to be infringed –Information to allow ISP to contact complaining party –Statement of good faith belief that use of material not authorized –Statement that information accurate and complaining party authorized to act.

3. DMCA Notice and Take Down Time frame: ISP must respond “expeditiously to remove, or disable access to, the material that is claimed to be infringing.”

4. DMCA Counter Notification Elements of valid counter notice: Physical or electronic signature Identification of material that has been removed Statement under penalty of perjury that subscriber has good faith belief that material removed or disabled by mistake Subscriber’s name, address and telephone number Statement of consent to jurisdiction in federal court of subscriber’s address or, if out of U.S., where ISP is found.

5. DMCA Counter Notification Time frame: ISP has 10 business days to replace or restore the removed material unless the party seeking removal notifies the ISP that the party has filed a suit in court seeking to restrain the subscriber from the infringing activity.

6. eBay v. MercExchange (2006) The parties: –Petitioners = eBay and Half Moon - operate auction sites on Internet –Respondent = MercExchange – owns patents, including business method patent for an electronic market designed to facilitate sale of goods between private individuals by establishing a central authority to promote trust among participants.

7. eBay v. MercExchange (2006) –The facts: MerchExchange asks eBay and Half Moon to enter into a license to use MercExchange’s patented business methods. The parties fail to reach agreement. MercExchange sues for patent infringement and prevails in a jury trial. The trial court denies MercExchanges request for permanent injunctive relief. The Federal Circuit reverses – permanent injunction will issue absent exceptional circumstances.

8. eBay v. MercExchange (2006) Supreme Court decision –Reviews four factor test for permanent injunction: Irreparable injury Inadequate remedy at law (i.e. $$ not enough) Balance of hardships Public interest

9. eBay v. MercExchange (2006) Supreme Court decision –Criticizes district court for being to restrictive on injunctions in patent cases. –Criticizes appeals court for not being restrictive enough (i.e. permanent injuctions should not automatically issue after finding of infringment) –Holds: whether to issue injunction is in discretion of trial court, which should apply the four factor test. –Kennedy concurrence: Beware the patent troll who uses the threat of injunction to exact money.

10. Tivo v. Echostar (Fed. Cir. 2008) Tivo sues Echostar for infringing the ‘389 patent. –Hardware and software claims relating to DVR’s Jury verdict in favor of Tivo –$74 million!!! Lost profits and reasonable royalties –Permanent injunction

11. Tivo v. Echostar (Fed. Cir. 2008) Echostar appeals to Federal Circuit: –Reverses and remands on hardware claims –Affirms software claims –Affirms damages award –Affirms permanent injunction – which had been stayed pending appeal

12. Tivo v. Echostar (Fed. Cir. 2008) Observations: –A lot of money at stake –Linguistics and semantics are critical in patent prosecution and litigation –Expert testimony is critical –Juries and judges with little technical expertise are called upon to make important decisions about technology. –Permanent injunctions are alive and well after the eBay case

13. Quote of the Day “Four things belong to a judge: to hear courteously, to answer wisely, to consider soberly, and to decide impartially.” –Socrates