E-TIPS

In a case that will have far reaching implications for patent practitioners and owners, on July 21, 2004, the US Court of Appeals for the Federal Circuit ordered an en banc re-hearing of a previous three-member panel decision (Phillips v AWH Corp, 363 F 3d 1207 (Fed Cir 2004)). The plaintiff had sued the defendant for infringement of its patent (US Patent No 4,677,798) directed to vandalism-resistant building modules with internal baffles.

In an effort to ensure Canadian passports continue to be travel identification which is "internationally respected", the federal Passport Office has announced the introduction of the next generation of passport – a so-called "e-passport", containing embedded microchips to store images and personal information.

CAPPS II, the US plan to prescreen and rank airline passengers according to risk level, is being dismantled, but another plan may be introduced in its place.

Digital Media Europe reports that the UK government has launched a new central database project for civil registrations – births, deaths and marriages – which will allow citizens to register online or by telephone. The database will hold up to 250 million records, making it one of the largest such IT projects in the world.

The UK Court of Chancery recently held that the act of selling modification chips for the Sony PlayStation 2 is illegal. Highlights of the decision (Kabushiki Kaisha Sony Computer Entertainment Inc et al v. Ball et al, [2004] EWHC 1738 (Ch)), include a finding that a copy of software in a computer's RAM is a copyright-infringing copy, even though the copy exists "ephemerally", that is, only for a very short time. This argument could not be made in Canada, as the Canadian Copyright Act specifically excludes from infringement copies made by a program during its execution. However, the decision is based on a newly adopted European Union Directive on Copyright, which has no such exception. Thus, in the UK, RAM that contains a copy made during execution is a reproduction in a material form, and is caught under the UK Copyright, Designs and Patents Act, 1988.

A recent report prepared by the United States General Accounting Office (GAO) has dispelled many of the safety concern arguments raised by opponents to the importation of drugs from Canadian Internet pharmacies.

Questions regarding the admissibility of computer-generated evidence have re-emerged following two recent cases in the US and Canada. In a lengthy analysis, the Connecticut Supreme Court outlined a six-part test for admitting computer-generated information into evidence. In contrast, an Ontario decision discussed admissibility in much broader terms. An earlier Canadian decision in the Saskatchewan Court of Appeal had included a number of observations similar to those made in the Connecticut case. The divergent approaches raise admissibility and reliability concerns which Canadian courts will want to consider in the future.

VoIP (Voice over Internet Protocol), often touted as the future of telephony, is a method by which phone calls are transmitted over the Internet. Instead of establishing a direct, continuous link between parties to a phone call, as in conventional telephony, VoIP involves a computer of one party digitizing the person's voice information, breaking it into small packets, and then sending the packets via the Internet to the other party's computer. The other party's computer puts the packets back together in the correct order, and converts the digital information back into audio, which the second party can understand. A key cost advantage over conventional telephony results from the ability to have multiple phone calls proceed down a single path simultaneously. The main disadvantage is a reduction in quality, as compared to a conventional phone line.

In a split, 7-5 decision en banc (University of Rochester v G D Searle & Co Inc et al), the US Court of Appeals for the Federal Court has refused to review a lower court ruling against the University of Rochester in a patent dispute which raises an important principle. The contentious issue is what precisely is required in a patent specification under US law. Some courts have held that if a person skilled in the art can reproduce the invention from the information in the patent specification, that is sufficient. However, other decisions have suggested that the precise nature of the invention itself, and not just how to produce it, must be disclosed in the specification.

Recently, the CRTC announced that it intends to examine three applications for satellite radio service in Canada. Two of the three applications are in partnership with existing US satellite radio providers. Each applicant would provide service across Canada, and would offer signals from at least 50 radio stations.

As the reported by New York Times earlier this month, the Chinese State Intellectual Property Office (SIPO) ruled Pfizer's popular Viagra brand of sildenafil citrate to be unpatentable for lack of novelty. Pfizer was granted a Chinese patent in 2001 for the use of Viagra. Local generic manufacturers protested that the compound and its use were known to academics in that country prior to the Chinese filing date in 1994. Indeed, while the original Pfizer patent on the compound sildenafil citrate was granted in Europe, a subsequent patent on the use of the compound was revoked in the UK for obviousness. (Until recently, China did not allow patents on medical compounds, which may explain Pfizer's failure to file the compound patent there.)

© 2004, Deeth Williams Wall LLP. All Rights Reserved. By: Colin Adams, Student at Law (July 8, 2004) Questions regarding the admissibility of computer generated evidence have re-emerged following two recent cases in the US and Canada. In a lengthy analysis, the Connecticut Supreme Court set down a detailed six-part test for the admission of computer generated evidence. In contrast, an Ontario decision discussed the criteria for the admission of computer generated evidence in broad, generalized terms.

Internet Service Providers were able to celebrate a day early for Canada Day. On June 30, 2004, the Supreme Court of Canada handed Canadian ISPs a 9-0 victory in what has been an almost decade-long copyright battle with music rights collectives over the Copyright Board's proposed "Tariff 22". The issue has been who should be liable for royalties on copyright-protected music transmitted over the Internet. (For more background, see "Tariff 22 Decision Heading to Supreme Court" in an earlier issue of E-TIPSâ„¢, (Vol 1, No 22, April 10, 2003) and see also the article by Colin Adams: "Supreme Court of Canada Begins Hearing Arguments on Tariff 22" (http://dww.local/?page_id=1017)).

The US Court of Appeals for the Fourth Circuit has ruled that an Internet Service Provider (ISP) does not copy material in direct contravention of the US Copyright Act (the Act) when it passively stores material at the direction of its users.

The First Circuit Court of Appeals has upheld the decision of the US District Court for the District of Massachusetts to dismiss a federal wiretapping indictment against an ISP based on its reviewing the contents of customers' e-mail messages for competitive commercial purposes.

On June 22, 2004, the US Patent Office issued a patent (serial no. 6,754,472) to Microsoft Corp for a method for networking devices coupled to a human body by using the body as both a power conduit (providing power to the devices) and a data bus (for data exchange to and between the devices).

The Electronic Frontier Foundation (EFF) has formed a coalition of lawyers, researchers and software experts to attempt to invalidate patents in the digital sector that it claims are overreaching and will stifle innovation. Initially, the program has targeted 10 patentees in the field of Internet- and software-related patents.

A deceptive mail-out for the apparent renewal of Internet domain names has ended with the imposition of a $40,000 fine and a five-year prohibition period. The sentences resulted from a investigation by the Canadian federal Competition Bureau under the misleading representations provisions of the Competition Act into Mr. Daniel Klemann of Toronto and a numbered corporation carrying on business as the Internet Registry of Canada (IROC).

In a proceeding (Eastmond v Canadian Pacific Railway and Privacy Commissioner of Canada) outlined in some detail in an earlier issue of E-TIPS™ (Vol 2 No 24 May 12, 2004), on June 11, 2004, Justice François Lemieux of the Federal Court (Trial Division) held that, contrary to an earlier ruling by the Privacy Commissioner, the action by Canadian Pacific Railway (CP Rail) in using video surveillance cameras to monitor a rail yard in Toronto did not violate the Personal Information and Electronic Documents Act (PIPEDA), and the Court declined to order any relief against the conduct complained of.

The Ontario Court of Appeal released its judgment in Barrick Gold Corporation v Lopehandia on June 4, 2004, indicating that defamatory statements made over the Internet may justify significant damage awards.