Nike, Schlumberger, ABA, Wiley: Intellectual Property

Nike Inc. (NKE) said it can make a golf shirt that could replicate what a coach does.

The world’s largest maker of sporting goods obtained about a dozen patents on Aug. 27, including one invention with the potential to irk golf pros.

“A coach or trainer can greatly improve an athlete’s form or body positioning, which can result in improved athletic performances,” Nike said in patent 8,516,616, issued by the U.S. Patent and Trademark Office. “For most people, however, a coach or trainer is not always available” and there isn’t an easy way to check positioning on your own, the company said.

The patent covers “articles of apparel providing enhanced body position feedback.” The clothing will have tighter material in areas key to a repetitive movement, like a golf swing. The snug fit increases muscle stimulation, giving a better feel that will improve form, according to the patent.

Obtaining a patent doesn’t mean for certain that the invention will be used in a product. Companies are granted millions of patents a year and many never become a reality.

In the golf patent, Nike describes thin elastic material embedded into the part of the garment that covers the lower back to heighten sensation. That part of the body is essential to a swinging motion and is impossible to see and difficult to feel while performing, which is why a coach is needed to give feedback, the document said.

Besides boosting performance, the shirt also could lower injury risk by keeping athletes in proper form as they swing a golf club or a baseball bat over and over again, Nike said.

Mary Remuzzi, a company spokeswoman, declined to comment on the patent.

Under U.S. Golf Association rules, compression and posture garments are allowed during competition while clothes designed to store and release energy aren’t, said Joe Goode, a spokesman for the Far Hills, New Jersey-based group that governs golf rules in the U.S. and Mexico. He declined to comment on whether a product based on the Nike patent would be permitted.

Oil Patch Follows Smartphone Makers in Patent Defenses

Battles for supremacy in the $680 billion oil and gas industry are moving from the hardhats and steel-toed boots of the drilling rig to the Brooks Brothers suits of law firms representing the biggest patent holders.

Schlumberger Ltd. (SLB), Halliburton Co. (HAL) and Baker Hughes Inc. (BHI), the world’s largest oil service providers, secured a total of 1,257 patents last year, more than twice the annual number of a decade earlier. In the past three years, Exxon Mobil Corp. (XOM) doubled its revenue from technology it licenses to others.

The impulse to patent harks to Silicon Valley as companies stake their claims to new techniques and equipment for hydraulic fracturing, automated drilling and computer software that helps find and reach oil and gas deposits. As research and development expenses rise, stronger patent defense is part of the arsenal energy companies deploy to win or maintain market share, said Bart Showalter, a partner at Baker Botts in Dallas.

The world’s four largest oilfield service providers spent a combined $21.8 billion on research and development since 1997, according to Barclays Capital. Patent protection gives companies exclusive rights to use or sell their technology, and to sue if someone else copies it.

Baker Hughes was granted 368 patents last year, compared to 138 in 2002. During the same period, Schlumberger patents rose to 588 from 235. Halliburton’s patents rose 80 percent to 301.

Among the oilfield innovations that have won protection in the past few years: lasers to help drill wells, wired drill pipe for high-speed data transfer, and a subsea “glider” robot that delivers gear to the seafloor.

The patent race may lead to a swell of litigation as the energy industry follows a pattern established by smartphone manufacturers, said Dean Becker, chief executive officer of ICAP Patent Brokerage, the world’s largest. At least a dozen lawsuits have been filed in federal courts over the past year including two pitting the world’s largest service companies against one another.

“This is the beginning of a tsunami to come,” he said. “You’ve got a big marketplace for people to figure out how to fit in.”

For more patent news, click here.

Trademark

University of Oregon Steps Back From $500,000 Royalty Demand

The University of Oregon has dropped plans to require licensees to guarantee $500,000 in royalty payments to the school each year in return for being able to use its trademarks, the Register-Guard newspaper reported.

The royalty requirement would have caused job losses at a number of Oregon licenses who, while they have made licenses products for years, weren’t big enough to generate the $5 million in annual sales necessary to yield that large a royalty, the newspaper reported.

Matt Dyste, director of the Eugene, Oregon-based school’s marketing and brand-management program told the newspapers that only four or five companies were able to submit proposals that would meet the guarantee requirement.

When the school announced last spring that it was moving to a $500,000 royalty requirement, small businesses, public commentators and one state legislator all reacted negatively, saying the $500,000 figure was unattainable for all but the largest national companies, according to the Register-Guard.

For more trademark news, click here.

Copyright

Website Fights ABA’s Copyright Claim to Bank Routing Numbers

A six-lawyer Vermont firm is providing pro-bono representation to a website operator accused of copyright infringement by the American Bankers Association.

Greg Thatcher drew the bankers group’s ire when he began publishing bank routing numbers on his GregThatcher.com website.

The site contains an assortment of computer games, math and physics-themed calculators, animations, the periodic table of elements, and sets of fractals created by Thatcher, a software engineer at Reprise Apps LLC of Lafayette, California.

In June, Thatcher received a cease-and-desist letter from Washington-based Covington & Burling LLC, counsel for the association. In the letter, partner Nigel Howard said that each ABA number “is an original copyright work carefully selected and arranged as a result of the ABA’s creativity.” He also said that while the banker’s group is considering whether to develop a licensing program for the numbers, the group “does not have a licensing program available for websites like yours at the current time.”

Andrew B. Delaney of Barre, Vermont’s Martin & Associates responded Aug. 23. In his letter to Howard, he said “Because Greg is very concerned about potential copyright infringement and your letter actually scared him, we want to set the record straight.”

In one footnote he said the firm wasn’t charging Thatcher because “we used to use his site a lot. And we never paid him anything. But then you wrecked it for everyone. That wasn’t nice.”

Delaney pointed out that routing numbers are like telephone numbers, and that part of each number is the Federal Reserve’s routing symbol, which, as a government work, isn’t afforded copyright protection. He also referred to a 1991 copyright case in which the court said that a directory of phone numbers wasn’t protectable either.

Thatcher’s site is provided as a public service, Delaney said, arguing that the use of any copyrighted material should fall within copyright law’s “fair use” provision.

Delaney asked that the bankers’ group allow Thatcher to put his site back up, and to quit “intimidating our client.” He said the public “will see you and your client as big bullies” if the banker’s group continues to press the infringement issue.

Below his signature, Delaney appended a copyright notice. Then he added “But wait ... fair use allowed and encouraged. Actually go ahead and publish the whole thing as is. We don’t care.”

Schwegman Firm Defeats Copyright Claim by John Wiley & Sons

Schwegman Lundberg & Woessner PA, a Minneapolis-based IP specialty firm, has prevailed in a copyright suit brought by John Wiley & Sons Inc. (JW/A) and the American Institute of Physics.

Hoboken, New Jersey’s Wiley is a publisher of scientific, technical and medical books. The publisher and the AIP filed suit in federal court in Minnesota in February 2012, claiming that the firm’s inclusion of 18 articles from the publisher’s journals to the U.S. Patent and Trademark Office constituted copyright infringement.

Wiley later amended the complaint to say that it wasn’t the submission to the patent office that infringed the copyright. Instead, the publisher argued that the infringement lay in Schwegman’s downloading, storing, making internal copies and distributing them by e-mail.

U.S. District Judge Richard H. Kyle disagreed. He said that the way that the firm used the journals’ content “remains intertwined with Schwegman’s practice as a patent prosecution firm.”

An applicant for a patent is required to submit what is known as “prior art.” This is information related to the patentability of the invention for which the patent is sought. This requires the submission of a legible copy of non-patent literature relevant to the invention.

Judge Kyle said that the publisher submitted no evidence that the use of the articles to meet their obligations to submit prior art didn’t have any effect on the traditional market for those articles.

He said that Schwegman’s use of the journals’ articles constituted fair use, and that submitting them with the patent applications “promoted the progress of science and useful arts” which is the purpose of U.S. copyright law.

He dismissed the case with prejudice, which means that the publisher is not free to re-file it.

The case is American Institute of Physics v. Schwegman Lundberg & Woessner, 12-00528-RHK-JJK, U.S. District Court, District of Minnesota.

For more copyright news, click here.

To contact the reporter on this story: Victoria Slind-Flor in Oakland, California, at vslindflor@bloomberg.net.

To contact the editor responsible for this story: David E. Rovella at drovella@bloomberg.net.

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