Monthly Archives: December 2013

Rockstar Consortium US LP et. al.v. Google Inc

Gopikrishnan M, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at Google Inc. been accused of infringing technology related to its searching technology itself.

Yet another high-tech and high-profile patent war is on, this one involving a combined attack on the search giant’s core technology. Google is being sued for direct patent infringement in a suit filed on 31st of October, 2013 in the US District Court in Texas. Plaintiffs, Rockstar Consortium and NetStar Technologies (jointly owned by Apple, RIM/Blackberry, Ericsson, Microsoft and Sony) have accused Google Inc. of infringing a patent that is related to web search advertisement. Google has been sued in the past for bypassing user privacy, but perhaps this is the first time the search giant has been accused of infringing any technology related to its searching technology itself. Google is considered to be the pioneer in web search technology and leads the searching industry by a very high margin (as of 2013, Google owns around 80% of the web search market share).

Background of Technology

Nortel Networks Corporation, a Canadian company, holds a granted patent US6098065, titled “Associative Search Engine”, which accepts user queries and produces search results in response. The results also contain advertisements that are related to the entered search query. The following figure in the patent illustrates how their algorithm works, providing search results as well as user targeted advertisements.

Gopi

Image retrieved from the Nortel Patent

Above figure illustrates different entities that constitute the patented service. A brief understanding of the patented method is provided below:

In operation, an end user enters a query into a terminal computer, which is connected to a server. The server in turn is connected to a router which connects the computer to the Internet. Search engine can be configured to process three databases, i.e. Contextual Database, Product Database, and User Profile Database. While the Database Search Engine processes search results for the entered query, an associative search Engine searches the product (advertisement) database in relation with the search query based on the user database, which has information as to the past preferences of the user. As a result, the database search engine produces results in accordance with the user query and the associative search engine enhances it by choosing between the general search results and search results based on what the user actually wants.It also generates user targeted advertisements which will be displayed along with the search results.The search engine, in a way predicts what the user would want based on his past preferences.

In an example, consider a situation depicting practical significance of the patented method. A law student uses a search engine functioning with the inventive method being spoken about. User database would have information relating to the student including his profile, preferences, interests, among other like details. When the student searches for “Europe”, advertisements displayed would be something targeted at him, for example “Study in Europe – A career launcher website”. An investment banker, on the other hand may not get the same results when he searches for the same query.

First independent claim of US ‘065 reads as follows:

  1. A method of searching for desired information within a data network, comprising the steps of:

receiving, from a user, a search request including a search argument corresponding to the desired information;

searching, based upon the received search argument and user profile data, a database of information to generate a search result; and

providing the search results to the user

wherein searching the database includes correlating, as a function of a fuzzy logic algorithm, the received search argument and user profile data to particular information in the database, and providing the particular information as the search results.

Google uses very similar technology for placing ads. The popular Google service “Google AdWords” uses user based advertisement delivering tools like ‘Contextual Targeting’, ‘Topic Targeting’, ‘Interest Targeting’ and more of such tools whose concepts of working are very similar to the patented method.

More information about the same and how Google AdWords works can be found at Google’s AdWords web page.

Fight for the Nortel Patents and the Subsequent Law Suits

When the Canadian based Nortel Corporation went bankrupt, around 6000 of their patents were auctioned. Google tried to acquire all of the patents starting their bid from $900 million dollars eventually raising them up to $4.4 billion but failed. Rockstar acquired the patents for $4.5 billion.  This was followed by Google’s acquisition of Motorola for $12.5 Billion

Now Rockstar has filed an infringement suit against Google Inc. alleging that Google has infringed their family of patents relating to ‘associative search’. They have alleged that Google already knew about the infringement and took part in the auction knowing the same.

An extract from the plaint reads as follows

Google has infringed and continues to infringe the ‘065 patent by its manufacture, use, sale, importation, and/or offer for sale of systems, methods, products, and processes for matching search terms with relevant advertising and/or information based on those search terms and other user data, including but not limited to Google’s process of receiving search requests from a user, using its search engine to generate search results based at least in part on the search request, selecting  —through Google’s AdWords and/or any other products, methods, systems, or services Google uses to store and choose relevant advertising — a relevant advertisement based on the search request and/or user data, and providing the search results together with the particular advertisement to the user; and additionally Google’s systems, methods,  products, processes of using other user  data aside from the search request to help select the search result and/or advertisement; and additionally and alternatively its contributing to and inducement of others to manufacture, use, sell, import, and/or offer for sale infringing systems, methods, products, and processes in the manners described above. Google is liable for its infringement of the ‘065 patent pursuant to 35 U.S.C. § 271

Accusation Made

Plaintiffs here have accused Google of infringing their patents submitting that they own the IP and technology used by Google to sell advertisements, which overlaps with their ‘065 patent and hence according to 35 U.S.C. § 271, they are liable of patent infringement. The plaintiffs Rockstar consortium have filed suits against Google for infringing 7 patents all relating to the same family. The other patents are US 7,236,9697,69,2457,672,9707,895,1787,895,183 and 7,933,883. Moreover they have specifically mentioned, that Google despite losing an attempt to acquire the patent-in-suit(i.e. all the above 7 patents) at the auction, infringed and continues to infringe the patents-in-suit. The plaintiffs have accused Google of willful infringement and have asked for enhanced damages of past and future loses under 35 U.S.C. § 284 and attorney charges for prosecution under 35 U.S.C. § 285.

A general non-technical reading into Google’s technology shows that its concept is similar to ‘065 patent. But the page ranking and ad ranking algorithms used by them are very different and way more complex and efficient. Google’s desperate effort to acquire Nortel’s patents and their subsequent accession of Motorola Mobility shows how critical it was for them to have access to the technology. Plaintiffs have pointed out the same in their plaint, leading to a situation wherein Google might have a tough time defending themselves in this face off. Another interesting development is the introduction of Patent Litigation Integrity Act by the US Congress (an anti trolling law which is heavily backed by Google), which protects active inventors and innovators against patent trolls. Google may even defend the case using the provisions of this act. With all these developments in progress, it will be interesting to see how this lawsuit turns out.

Copyrights Enjoyed By Musicians

Sanyukta Biswas, an intern at Khurana and Khurana, Advocates and IP Attorneys, looks at the rights of singer, lyricist and composer that have been incorporated by the 2012 amendment.

Once upon a time in India even the most noted of film artists and musicians could not secure themselves financially despite their brilliance. In an infamous legal battle, in the dark ages, the rights of royalty of the performers were offered to the producers in a platter. In the recent years, the likes of Javed Akhtar, lobbied for securing the rights of people associated with the entertainment industry. The amendment saw light 7th June 2012 when it received the assent of the President on. The amendment did bring the Copyrights Act in confirmation with the WIPO Copyrights Treaty and WIPO Performances and Phonograms Treaty and reach way beyond that. This article specifically deals with the rights of singer, lyricist and composer that have been incorporated by the 2012 amendment. The main objective behind the article is to describe and reflect upon the newly acquired copyrights of people related to the music industry and why is it a reason to rejoice.

Q1. What is a live performance and who is covered under it?

Answer: The definition of a performance in Section 2(q) of the Copyright Act is: ‘performance’, in relation to performer’s right, means any visual or acoustic presentation made live by one or more performers. The terms ‘made live’ are not defined in the statute. Hence the meaning of live performance is completely dependent on the interpretation that is done by the judiciary when it comes to recorded performance of a singer in a film. The definition of a ‘performer’ in Section 2(qq) of the Act as amended by the 2012 Act contains an inclusive definition which stated that a performer ‘includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance’. The 2012 Act added a Proviso to the Section which would disable those performers not mentioned in a film’s credits (including film ‘extras’) from being able to claim all but one of the rights granted to performers by the Act. They are entitled only to the protection accorded under section 38B. The Amendment Act 2012 has also sought to amend the definition of ‘Communication to Public’ (Section 2 (ff)) extending the right to performances. The definition explicitly states that it does not matter whether the communication is simultaneous or at places and times chosen individually. The rights under this head hitherto limited to authors have been extended to performers by the present amendment.

Q2. What are moral rights of performers and how are they protected?

Section 38B is a new provision in the Act which deals with the moral rights of performers. Moral rights of copyrights creator are recognized in civil law jurisdiction and also to some extend in common law jurisdiction. Moral rights of a copyright owner includes incidental rights such as right to attribution, the right to have worked published anonymously or pseudonymously, and the right to the integrity of the work. The preserving of the integrity of the work bars the work from alteration, distortion or mutilation. It must be noted that moral rights associated to copyrights work, is different from the economical rights. Even when assignments are made moral rights of the copyright owner remains. This particular provision — Section 38B(b) of the Act — states that ‘the performer of a performance shall, independently of his right after assignment, either wholly or partially of his rights, have the right to restrain or claim damages in respect of any distortion, mutilation or other modification of his performance that would be prejudicial to his reputation’. The other right which a performer would have — under Section 38B(a) of the Act — is the right to claim to be identified as the performer of his performance except where omission is dictated by the manner of the use of the performance. This right under the proposed Section 38B(a) obviously cannot apply to extras in films as they are not credited by definition.

It is pertinent to note that the provision also contains a safeguard against abuse of moral rights in the form of an Explanation which would state that ‘the mere removal of any portion of a performance for the purpose of editing, or to fit the recording within a limited duration, or any other modification required for purely technical reasons shall not be deemed to be prejudicial to the performer’s reputation’. This too is analogous to the rights granted to authors: the moral right of an author would not be considered to have been violated merely because his or her work has, not been displayed to his or her satisfaction.

Illustration 1: A is the original singer of a certain song “ Gullu ke gubbare” who was appointed by the music company XYZ. He assigned his rights to B. Despite the assignment, A would have the rights to be acknowledged for being the singer and he can also prevent others from distorting it.

Illustration 2: P sang in the film “Cocoa” about addiction of chocolate. Later on it was decided by the production unit of the film that due to the entire length of the movie, some scenes containing songs of P had to be modified. Due to this modification, the moral rights of the singer would not be effected.

Q3. What are the positive rights of the performers now and how can they be enforced and protected?

Answer: Section 38A of the Act enumerates acts similar to those listed in Section 14 which defines copyright, but instead of stating that performing them without consent would cause one to violate the performer’s right, it states that it is the exclusive right of the performer to perform or authorize the performance of these acts or any substantial part thereof. So it can be conclusively stated that earlier the rights were proscriptive in nature and now it is prescriptive. Earlier the performers were not entitled to royalties because they only had a negative right to prohibit ‘fixation’ of their live performances. A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, revproduced. The fixed work does not have to be directly perceivable by a person but can be one that requires some machine or device for its display.

The Act, however, does not completely do away with the performer’s right. Firstly, it contemplates that the consent of a performer for the incorporation of his performance in a cinematograph film would be in writing, and would not merely be oral.

Further, once a performer gives valid consent for the incorporation of his performance in a film, he would not generally be able to object to the enjoyment by the film’s producer of his performer’s right in it. There are two important caveats under the Act though: firstly, the performer may enter into an agreement to the contrary i.e. there would be no statutory prohibition to his entering into an agreement which stated that he could object to the producer enjoying his performer’s right in the film. Secondly, the producer’s enjoyment of the performer’s right in the film may be interpreted to be limited to the film, so that the producer would not be able to enjoy the performer’s right for the purpose of retaining all the revenues generated through the commercial use of a performance (assuming the performance was live).

Further, the prohibition on the producer’s enjoyment of the performer’s right in respect of commercial use is buttressed by a Proviso which states that ‘notwithstanding anything contained in Section 38A(2), the performer shall be entitled for royalties in case of making of the performances for commercial use’. It thus appears that the intention is to accord to performers the benefits analogous to those which the 2012 Act accords to the authors of underlying works incorporated in sound recordings for live performances. This would make available to performers revenue stream which has thus far not been known to have been accorded to them, particularly since applying the provisions of Sections 18 and 19 to the performers right would give performers an ‘equal share of revenues’ for live performances analogous to the ones which the authors of underlying works in films and sound recordings enjoy.

Illustration 1: S, an upcoming singer was performing at a Christmas party. The audience cannot record the song without taking due permission from S.

Illustration 2: A certain producer can generate revenue through the signing performance of a certain singer, only limited to the film or the album. He is prohibited from generating revenue through using the song as ringtone and caller tune.

No Work Person Amount Use
1 Film (and possibly sound recording) Performer Unspecified Commercial use of their perfomance
2 Non film sound recordings LyricistComposer Royalties to be shared on an equal basis with the assignee of the copyright Any utilization on the underlying works in any form

Q4. What are the relevant provisions with regards to assignment?

Answer: Under Section 18(1) a second proviso has been inserted. It provides that no such assignments shall apply to any mode of exploitation that did not exist or was not known in commercial use when the assignment was made. This amendment strengthens the position of the author if new modes of exploitation of the work come to exist and prevents them from being misused. Section 18(1) provides that the owner of a copyright in any work or prospective owner of a future work may assign the copyright, and the proviso to this sub-section clarifies that in the case of future work, assignment will come into force only when the work comes into existence. Another proviso under S. 18(1), provides that the author of a literary or musical work incorporated in a cinematograph film or sound recording shall not assign the right to receive royalties in any form other than as a part of the film or sound recording. Section 19 relates to the mode of assignment. Sub-section (3) has been amended to provide that the assignment shall specify the ‘other considerations’ besides royalty, if any, payable to the Assignor. Therefore, it indicates that only monetary compensation by way of royalty could lead to assignment. A new sub-section(8)has been inserted making the assignment of copyright void if contrary to the terms and conditions of the earlier assignment to a copyright society in which the author of the work is a member. This amendment is an attempt to streamline the business practices.

CONCLUSION

It is pertinent to note that the lobbyists for the amendment were artists associated with Bollywood. As a result of which the amendments, as time would tell, would probably be beneficial for performers of Bollywood. Following the amendment there have various petitions filed challenging its validity by composers and lyricists themselves. A certain association of Bhojpuri singers claimed, that the said amendment would harm their interests. This is because of the provision for mandatory sharing of royalties with the performers. This would actually in practice reduce their single lump sum advance payment.  The reason would be the fact that regional and classical songs do not enjoy the kind of popularity Bollywood songs do. For similar reasons, people associated offbeat Hindi movies and music would also suffer, as they would have to be commercially successful in order to earn any profits. This would result in ruining of a rich and diverse culture of movies and songs in the country. The only way to avoid compulsory sharing of royalty provision seems to sign a contract which would be governed by the copyright laws of another country.  The chances of this condition being of any help to regional composer and lyricist is slim. The term “equal sharing of royalties” is also vague in the sense that it does not provide for any specific method of for computation of the share of royalties of each one involved in the process. Compulsory joining of copyrights societies is also a coercive measure and its ambiguous if the society is Indian or international.

Two-Days International Symposium on Strategies for Managing Pharmaceutical, Biotechnology & Chemical Patent Portfolios

We are happy to inform you all that IIPRD and Khurana & Khurana, in association with Cantor Colburn (US) and Fukami Patent Office (Japan) are holding an International Patent Symposium covering all major and relevant Pharmaceutical/Biotechnology Related Patent issues in the month of February, 2014 in India. The Two-Days International Symposium would be covering Strategies for Managing Pharma, Biotech & Chemical Patent Portfolios in US, Japan & India and is being held from 3′rd-4’th February 2014 at Hotel Hilton, Mumbai and 5’th-6’th February 2014 at The Gateway Hotel Ummed, Ahmedabad.

Symposium February 2014

About the Speakers: The speakers are a unique gathering of Patent Attorneys, Legal Counsels, who have extensive years of experience in their professional fields. These Speakers will put across to the delegates a real insight of Patent Laws & Practices, and Commercial perspectives as prevalent and practiced in Japan, United States, and India. The speakers include:

  • Mr. Michael Cantor, Co-Managing Partner at Cantor Colburn LLP, USA
  • Mr. Steven M. Coyle, Partner at Cantor Colburn LLP, USA
  • Mr. Jeffery Arnold, Partner at Cantor Colburn LLP, USA
  • Ms. Leslie-Anne Maxwell, Ph.D. , Counsel at Cantor Colburn LLP, USA
  • Mr. David E. Rodrigues, Ph.D., Partner at Cantor Colburn LLP, USA
  • Dr. Toshio Nakamura, Patent Attorney at Fukami Patent Office, Japan
  • Mr. Tarun Khurana, Partner at Khurana & Khurana, Advocates and IP Attorneys, India.

Please see the complete details including Program Schedule, Topics, Speakers Profiles etc. in a brochure available over here .

If you wish to attend the symposium, please send your nominations to iiprd@iiprd.com.

Sofosbuvir: The Next Pre-Grant Opposition Target by I-MAK

After anti–influenza drug Tamiflu (Oseltamivir Phosphate) and antiretroviral drug Viread, Gilead Sciences is again back in news, this time with its hepatitis C (HCV) drug Sofosbuvir. Like Tamiflu and Viread pre-grant opposition, Sofosbuvir patent application is also facing pre-grant opposition. Non-profit group I-MAK (Initiative for medicines access and knowledge) has filed a pre-grant opposition against the Sofosbuvir patent application contending that Sofosbuvir is not a new drug but a modified version of earlier known compound, and therefore not eligible for patent protection under Section 3(d). In addition, I-MAK stresses that there is a widespread apprehension among the public that if this patent is granted against this pending application the price of this hepatitis C (HCV) drug will be very high.

Under section 25 (1) of the Patents Act 1970 any person can file an opposition against the grant of patent on the specified eleven ‘mutually exclusive’ grounds. Nowhere mere public apprehension is considered to be valid ground to oppose patent application. Following the Gleevac case, here again section 3 (d) of the Patents Act 1970 is likely to play a critical part in the pre-grant opposition, questioning the patentability of Sofosbuvir under section 3(d).

Not a Drug but a Prodrug

Before debating the patentability issue of Sofosbuvir under the Patents Act 1970 it is important to explain what Sofosbuvir exactly is and how it is similar or dissimilar to earlier known compound.

Sofosbuvir is a nucleotide analogue for the treatment and cure of hepatitis C belonging to the class of hepatitis C virus (HCV) polymerase inhibitor. Sofosbuvir is, in fact, a prodrug of 2′-deoxy-2′-α-fluoro-β-C-methyluridine-5′-monophosphate which is an active antiviral agent.

Sofosbuvir which is a phosphoramidate prodrug of nucleoside derivatives is disclosed in U.S. Patent No. 7,964,580 and PCT Application No. 2008121634 assigned to Pharmacist, Inc and was developed to encounter the physicochemical and pharmacokinetics properties of nucleosides, including systemic absorption. The corresponding Indian Patent Application No. is 3658/KOLNP/2009. The patent application is currently awaiting examination in India. The patent claims pertain to phosphoramidate prodrug and its stereoisomers of a nucleoside derivative for treating viral diseases, including HCV. The compounds claimed are inhibitors of RNA-dependent RNA viral replication and the HCV NS5B polymerase. The phosphoramidate prodrug claimed is of the 5’ monophosphate derivative of the β-D- 2’-deoxy-2’-α-flouro-2’-β-C methyluridine nucleoside, also known as Sofosbuvir.

(2’R)-2’-deoxy-2’-flouro-2’-C-methyl nucleoside (β-D or β-L) which was disclosed in WO2005003147 (US7429572) exhibits greater specificity for HCV and includes a method for treating various viruses included HCV, or its pharmaceutically acceptable  salt or prodrug. The corresponding Indian Patent Application No. 2079/DELNP/2011. Gilead Sciences revealed an oral prodrug of (2’R)-2’-deoxy-2’-flouro-2’-C-methyl nucleoside (β-D or β-L)  — Sofosbuvir— having better physicochemical and pharmacokinetics properties as compared to (2’R)-2’-deoxy-2’-flouro-2’-C-methyl nucleoside (β-D or β-L). Sofosbuvir when orally administered is metabolized to form pharmacologically active metabolite 2′-deoxy-2′-α-fluoro-β-C-methyluridine-5′-monophosphate responsible for antiviral activity. Hence Sofosbuvir is an new form of a known compound and thereby making Sofosbuvir not eligible for patent protection India.

Grounds of Pregrant opposition

I-MAK has filed a pre-grant opposition against Gilead’s Indian patent application no. 3658/KOLNP/2009 on the grounds of lack of novelty Section 25 (1)(b), obviousness Section 25(1)(e), Section 3(d) and failure to furnish Section 8 details.

Lack of novelty: The earlier patent i.e. WO2005/003147 discloses both the parent structure of Sofosbuvir and also the stabilized phosphate prodrug form. Hence Sofosbuvir is not a new invention.

Obviousness: It is well known to a skilled person in the art that a prodrug of the compounds claimed would have advantages such as activating the phosphate and  improving the pharmacokinetic characteristics of the parent compounds  discussed in ‘147. Hence prodrug approach for Sofosbuvir would have been obvious to try and do not amount to a technical advance over the art and lack any inventive step

Section 3(d): According to section 3 (d), the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance will not be considered as a patentable invention. I-MAK opposed that Sofosbuvir is a new form of a known substance that does not result in an enhancement of the known efficacy of the known form.  It is necessary to show that the Sofosbuvir has better efficacy than the already known form. However the applicant has not included any comparative data in the 3658’ application. The Supreme Court also in the recent Novartis case ruled that an increased bioavailability alone may not necessarily lead to an enhancement of therapeutic efficacy.

Conclusion

Now, the critical question which would remain is whether Sofosbuvir has sufficient merit to overcome the barrier of section 3d. As it is technically clear that Sofosbuvir has significantly better physicochemical and pharmacokinetics properties as compared to earlier known compound, the likelihood of Sofosbuvir to overcome the ‘efficacy’ barrier of section 3(d) will be apparent only if they can show comparative data related to increase in enhanced therapeutic efficacy.

I-MAK also stated that undeserved patents of the nature  applied for in ‘3658 affords a company, such as the Applicant, artificial exclusive rights, which then allows it to price a medicine beyond the reach of not only Indian patients, but also many in need in other developing and even developed countries. However, even if a patent is granted and Gilead launches Sofosbuvir at a higher cost, Government can curtail its price under Drug Prices Control Order, 1995 which can further be monitored and revised time to time by National Pharmaceutical Pricing Authority. Government also have the option to invoke compulsory license is case of adverse situations.

About the Author: Ms. Harsha Rohatgi, Patent Associate, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: harsha@khuranaandkhurana.com