The Eleventh Plague
It looks like someone may finally stop that annoying Energizer bunny. (Turek v. Energizer Holdings, Inc.)
It looks like someone may finally stop that annoying Energizer bunny. (Turek v. Energizer Holdings, Inc.)
"Casio Settles Video Patent Infringement Suit" (November 19, 2010), an article published on Law360.com, details the settlement between Advanced Video Technologies LLC (AVT) and Casio America Inc.
Occasionally, having read a legal brief and agreed therewith, we subsequently read the Court’s decision in the matter and find that our initial view was entirely wrong. Sometimes this change of position is due to the Court’s clear legal analysis. Sometimes it is the result of critical facts cited by the Court but somehow omitted from the brief. Sometimes both. (Lawrence B. Lockwood et al. v. Sheppard, Mullin, Richter & Hampton, LLP et al.)
November 19, 2010 - Pragmatus AV, a Virginia company, has sued four Internet giants - YouTube, FaceBook, LinkedIn and Photobucket - for infringement of three of its digital video patents.
November 18, 2010 - A company called Patent Harbor LLC sued several Hollywood studios for infringement of a patent related to the way DVDs and Blu-Ray discs use a menu to organize and skip to chapters and scenes.
IP Frontline carried an article on the addition of Anthony Amaral to our management team (November 15, 2010).
Last year the Court of Appeals For The Federal Circuit (the “C.A.F.C.”) handed down its Exergen decision which increased the level of detail required when pleading inequitable conduct. Now the pleading must set forth “the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” This heightened requirement has, on at least one occasion, led a patentee to file what can most diplomatically be described as “ill advised” motions to dismiss inequitable conduct affirmative defenses and counterclaims. (Mediostream, Inc. v.
As a general rule, a plaintiff in a civil action has a duty to “mitigate” (lawyerspeak for “minimize or alleviate”) damages. If the defendant can show that the plaintiff failed to mitigate damages, the plaintiff’s recovery may be reduced. Note the use of the qualifying phrase, “[a]s a general rule.” Recently a plaintiff argued that the duty to mitigate damages did not apply in cases of patent infringement. (IMX, Inc. v. E-Loan, Inc. et al.)
Alexander Poltorak was one of ten intellectual property experts who contributed to an article called "10 Tips for Licensing Intellectual Property" on urbanmogullife.com (November 10, 2010). Dr. Poltorak warns of the hidden pitfalls of assignable paid-up licenses.
Amaral Brings 25 Years of Patent and Trademark Litigation Experience to the Leading Contingency Patent Licensing and Enforcement Firm
Suffern, N.Y. − November 11, 2010 − General Patent Corporation (GPC), a leading patent licensing and enforcement firm, announced that Anthony Amaral, Jr. has joined the Legal Department of the company as Chief IP Counsel.
November 11, 2010 - Akamai Technologies Inc. sued Cotendo Inc., a startup company and competitor of Akamai's. Akamai alleges that Cotendo's services infringe three patents related to web content delivery methods.
We have said it often, but it bears repetition, “don’t get greedy.” Although it may be difficult for the layperson to believe, even attorneys sometimes forget this advice. Fortunately for the attorneys, when they do forget, it is often not they who suffer – the clients do. (Goodman Ball, Inc. et al. v. Mach II Aviation, Inc. et al.)
If a federally registered trademark has been in continuous and substantially exclusive use for five years – and if the trademark owner files the appropriate “Declaration” in the Trademark Office – the mark becomes “incontestable” and, henceforth, is immune from attack on most grounds. Note the use of the word “most” in the preceding sentence. “Incontestable” is NOT synonymous with “invincible,” a fact that three trademark owners have recently learned, much to their chagrin.
There is a vast gulf between expanding your practice and undertaking matters in areas where you lack qualification. There is, however, a clear line between what is acceptable practice and what is unethical. Unfortunately, some attorneys do not recognize the former and, as a result, wind up on the wrong side of the latter. (The Florida Bar v. Adorno)
Last month we wrote (see “A Bargain”) of a Mr. Vernor who, ultimately (by “ultimately” we meant “by an appellate court”), was shown to have been selling used computer software which he did not own. He thought that he owned it, but he didn’t. The folks from whom he had purchased it thought they had owned it, but they didn’t. They were merely LICENSEES, a fact which a trial court missed but which was caught by the appellate judges.
Over the past several months we have twice written about Joel Tenenbaum (most recently, here), a college student who was sued by Sony BMG Music for using file-sharing software to download and share 30 songs in violation of their copyrights.
A couple of weeks ago, we wrote of a law firm accused of simultaneously representing multiple parties with adverse interests (known to us in the law biz as a “conflict of interest”). Well, now we have a case where a law firm has been found guilty of, among other things, what amounts to a conflict of interest. (S. Lavon Evans, Jr. et al. v. Baker & McKenzie, LLP et al.)
GPC's General Counsel, Paul Lerner, is quoted in a Forbes.com article, "AT&T Says Cellfone Patent Invalid Over Lies" (November 3, 2010). Mr. Lerner discusses whether the "inequitable conduct" defense is overused in patent infringement litigation.
Alexander Poltorak explains the various reasons companies file patent infringement lawsuits in "Google's Android lawsuit ghost returns" (International Business Times, October 26, 2010).
An article called "Motorola in court, fearing Apple's wrath over patents" (International Business Times, October 19, 2010) featured Alexander Poltorak's commentary on Motorola Mobility's preemptive strike against Apple: "According to Alexander Poltorak, the Chairman and CEO of General Patent Corporation, Motorola was once a dominant player in mobile industry but lost its market share to Apple.
In "Will Google join OpenJDK as Oracle refuses to license Project Harmony?" (International Business Times, October 18, 2010), Alexander Poltorak explains why Oracle's refusal to license the technology compatibility kit (TCK) to Project Harmony is a legitimate use of its intellectual property.
Alexander Poltorak was quoted in "Internet retailer Amazon wins fight to patent `one-click' technology in Canada" (October 14, 2010), an article which appeared in Canadian Business Online and the
In this in-depth interview with Fast Company, "Why Apple's Patent Infringement Payout Is Still in Play" (October 5, 2010), Alexander Poltorak discusses the recent jury verdict against Apple in favor of Mirror Worlds LLC. "Relative to the booming sales of the infringing products," Dr.
GPC's Alexander Poltorak defines "patent trolls" and explains patent rights in a Wired.com blog post, "Calling Oracle Hypocritical, Google Denies Patent Infringement" (October 5, 2010): "A patent troll is someone who acquires a patent they didn’t invent and acquire for litigation only...but whether you acquire or invent, it is still property and there’s no difference or morality in how you came to possess the patent,” Dr.
Alexander Poltorak was interviewed by Canadian Business regarding the lawsuit Wi-LAN filed against big-name wireless companies including Alcatel-Lucent, Ericsson, Sony Ericsson, LG Electronics, HTC and others ("Patent licensing company Wi-LAN takes on big-name tech companies in legal suit," October 5, 2010). Dr.
In an article called "Patent Office Set to Lose $70 Million Unless Congress Acts" (Law.com, September 28, 2010), Alexander Poltorak speaks out about the practice of diverting fees from the Patent Office, calling it "a tax on innovation." "This is not what we want to do in our country whose only competitive advantage is innovation," Dr. Poltorak says.
GPC's Alexander Poltorak was quoted in a Wall Street Journal article, "Paul Allen's Lawsuit Renews Patent Debate," August 31, 2010 − Regarding Microsoft co-founder Paul Allen's lawsuit against several major Internet companies: "'He had incredible foresight into the future of this technology,' said Alex Poltorak, chief executive of General Patent Corp., which assists plaintiffs in patent suits.
GPC's Alexander Poltorak quoted in Bloomberg News article, "Facebook Wins Infringement Trial as Jury Finds Leader Patent Is Invalid," July 28, 2010 - Dr. Poltorak comments on the lawsuit between Leader Technologies Inc. and Facebook.
"eBay Accused of Stealing Trade Secrets in $3.8B Patent Suit," a July 14, 2010 article in E-Commerce Times, features commentary from GPC's Alexander Poltorak. "When juries can't understand the technology in dispute or the nuances of patent law, they try to simply figure who are the 'good guys' and who are the 'bad guys,'" Dr.
July 9, 2010 - GPC's Chairman and CEO Alexander Poltorak was quoted in "Patent holder sues smart phone makers over patents," an Associated Press (AP) article that was published by dozens of outlets internationally, including Yahoo!Finance, CBSNews.com, ABCnews.com, The Miami Herald, The Huffington Post, The San Francisco Chronicle, NPR.org, St. Petersburg Times, The Chicago Tribune, MSNBC.com, and The Australian.
In a July 2, 2010 Portfolio.com article called "Patent Issues Still Unsettled After Bilski Decision," Alexander Poltorak acknowledges the difficulty of establishing a single test for patentability. The article was also published by the Washington Business Journal.
Alexander Poltorak was quoted in a Wall Street Journal article, "Door Left Open to Business Patents," June 29, 2010, about the U.S. Supreme Court's decision on the landmark Bilski v. Kappos case. Dr. Poltorak said that the decision is "a major relief" for inventors and patent owners, as the Court largely left unchanged the patentability of software and business methods.
"Court Patent Ruling Leaves Software Patents Intact," PCWorld.com, June 28, 2010 - Alexander Poltorak is quoted in this article on the outcome of the landmark Bilski case. "The technology industry had been awaiting the Bilski decision with bated breath," he said. "It is a major relief to the technology industry that the U.S. Supreme Court disagreed ... that the machine-or-transformation test is the sole test for patentability.
Alexander Poltorak is quoted in an E-Commerce Times article, "Salesforce.com Taps Veteran Microsoft Nemesis for Countersuit," June 28, 2010, in which he speculates about what outcome Microsoft wants from its patent infringement lawsuit against Salesforce.com. The article also appeared on CRMBuyer.com.
GPC's Alex Poltorak, Rich Ehrlickman Among the IAM Strategy 250 - Two of GPC's own have been included in Intellectual Asset Management magazine's 2010 IAM Strategy 250, an elite list of "individuals who offer world-class strategic IP business advice to IP owning companies." Read more here and view PDFs of Poltorak's and Ehrlickman's IAM 250 profiles.
Alexander Poltorak’s article “Patent Enforcement: What to Do and What Not to Do,” was quoted on the IP Playing Field blog of Luzzatto & Luzzatto, one of the leading patent law firms in Israel.
"Sprint Sues Palm, Sanyo, Kyocera For DTL Defense" (IPLaw360, May 19, 2010 − Subscription required): Accused of infringing [GPC client and IP Holdings LLC portfolio company] Digital Technology Licensing LLC's patent for cell phone technology, Sprint Nextel Corp. has dragged its suppliers Sanyo North America Corp., Kyocera Communications Inc. and Palm Inc.
AOL Small Business, May 10, 2010: Alexander Poltorak is quoted in "Patents: 5 Things You Need to Know," by Darren Dahl. Dr. Poltorak discusses what patents are - and aren't - good for, what to consider when filing a patent application, and why filing an extension on a patent is not an option.
MyMidwest magazine, May 1, 2010: "Q&A with Dr. Alexander Poltorak: The CEO of General Patent Corporation wants to protect the small inventor." Download a PDF of the article or read the article on the MyMidwest website.
National Law Journal: In an April 22 article about the Patent Reform Act of 2009 ("Commerce Department voices support for patent reform bill amendment"), GPC’s CEO, Alexander Poltorak – who is also the founder and President of American Innovators for Patent Reform (AIPR) – was quoted extensively.
"Will Apple's Patents Banish HTC Phones?" PCWorld, March 3, 2010 - Alex Poltorak speculates on what effect an Apple victory at the U.S. International Trade Commission (ITC) would have on the Apple vs. HTC battle - and by extension, Android mobile phones.
"Apple Sues HTC for Patent Thievery," MacNewsWorld.com, March 2, 2010 - Alexander Poltorak quoted in a story about Apple, its rival smartphone maker HTC, and how filing a complaint with the U.S. International Trade Commission (ITC) is "an expedient way to stop what is seen as infringement until the courts can act."
"Apple Raises Stakes in Patent Duel With Nokia," MacNewsWorld.com, December 18, 2009 - Alexander Poltorak comments on the power - and limitations - of the U.S. International Trade Commission in dealing with patent disputes.
"Leighton Licenses RFID Patents To HID Global," Law360.com, November 30, 2009 (Subscription required) - General Patent Corp. announced that HID Global Corp. has entered a licensing agreement as part of the settlement of two suits it filed against patent-holding company Leighton Technologies LLC and its founder over patents related to the lamination process for contactless radio frequency identification “smart” cards.
Alex Poltorak, Chairman and CEO of General Patent Corporation, is interviewed in "Your ‘carrot’ licenses may be ‘stick’ licenses in disguise" - a blog post on the IP Marketing Blog of Intellectual Property Marketing Advisor, September 22, 2009.
General Patent Corporation Chairman and CEO Alex Poltorak discusses the serious missteps made by Microsoft's counsel in the i4i case in "Microsoft Lawyers Start to Sweep Up Word Mess," E-Commerce Times, August 19, 2009.
General Patent Corporation Chairman and CEO Alex Poltorak was interviewed by E-Commerce Times about the injunction issued against Microsoft Word in "Microsoft Loses Battle of Word in Texas Court," August 12, 2009.
“Inside the fight over US patent reform,” Intellectual Asset Management, May/June 2009 - Commentary by GPC Chairman and CEO Alexander Poltorak
"One-patent company snags deal with AT&T," EE Times, March 11, 2008 - Article about IP Holdings subsidiary Digital Technology Licensing LLC and its settlement with AT&T (GPC acted as the licensing agent).
General Patent Corporation was mentioned in "Meet the Middlemen," an article that appeared in the February/March 2008 issue of Intellectual Asset Management magazine.
Alexander Poltorak was interviewed by New York's Bloomberg Radio, Sept. 5, 2007. Audio and excerpts are here.
November 3, 2010 - Sanho Corp., a company that sells HyperMac external batteries for Apple's MacBook, iPad, iPod and iPhone, has agreed to stop selling aftermarket Apple MagSafe power cables along with its batteries.
Alexander Poltorak was quoted in Bloomberg News, September 5, 2007, "Microsoft Win in Court May Cut Chances in Congress"(Excerpt and link to full article)
Alexander Poltorak was quoted in a Fortune Small Business article that was reprinted on CNNMoney.com, June 18, 2007, "Will Congress Slam Small Inventors?" (Excerpt and link to full article)
Alexander Poltorak was featured in IP Investor, "He Wrote the Book," April 2007 (PDF)
Alexander Poltorak was featured in Rockland Magazine, "Creative Genius" (PDF)
Alexander Poltorak was interviewed by Globes, Israel's daily business magazine, in March 2006. (PDF - article is in Hebrew)
Alexander Poltorak speaks at the IPO Conference on Patent Trolls (March 2005) - GPC's Chairman and CEO spoke at the Intellectual Property Owners conference on Patent Trolls in Washington, DC in March 2005.
Excerpt from "The Patent Profiteers" by Steven M. Cherry, IEEE Spectrum, June 2004 issue
IAM (Intellectual Asset Management) Magazine, Feb./March 2004 issue - "Prickly Profits," by Bruce Berman [excerpt] - Dr. Poltorak is quoted discussing the patent system's fairness or unfairness to small inventors.
CFO Magazine, "Battling the Property Pirates," January 2004, by Ronald Fink - Article in which Dr. Poltorak is quoted about protecting American IP interests abroad.
IndustryWeek, "Intellectual Property: It's Worth
Keeping an Eye On," August 1, 2003, by John Teresko - Features Dr. Poltorak's IP strategy checklist.
CNNFn - View the video of Dr. Poltorak discussing patent law on CNNFn, May 2002
The New York Times, "Trying to Cash In on Patents" by Teresa Riordan, June 10, 2002: Dr. Poltorak discusses the patent licensing and enforcement business. Also features the history of GPC.
Alexander Poltorak quoted in EE Times article, "Patent Pangs" by Margaret Quan, February 12, 2001 - Dr. Poltorak comments on a federal circuit court decision that could have a profound impact on the IP assets of companies in the electronics industry.
Paul Lerner, Sr. VP and General Counsel of GPC, discusses patent enforcement, the increase in the number of patents being filed and litigated, and how GPC plans to handle the rapid growth of the IP industry.
Interviewer: Phillip Silverstein
Interviewee: Paul J. Lerner
Silverstein: From the studios of the Wall Street Reporter in New York City, this is Phillip Silverstein. Our guest today is Paul J. Lerner, Senior Vice President and General Counsel, General Patent Corporation. Paul, good morning.
Lerner: Good morning, Phil.
By now the reader should be aware of the prevailing scourge of “mismarking” lawsuits – suits brought against unfortunate manufacturers (known to those of us in the law biz as “poor schnooks”) who somehow forgot to delete patent numbers from their products when the patent expired. The number of such lawsuits exploded when the courts ill-advisedly held that the correct measure of damages is up to $500 per mismarked article, rather than per production run as was previously the prevailing law.
From time to time, we have reported on cases of clients suing their attorneys, to the point that such cases have become commonplace. Occasionally, however, a case still manages to attract our attention.
You can withhold affection; you can withhold support; but, you can’t withhold documents from production.
Sometimes it seems that the courts go out of their way to find that they have personal jurisdiction over an accused tortfeasor. (Protostorm, LLC et al. v. Antonelli Terry Stout & Kraus, LLP et al.)
November 2, 2010 - Last month, Motorola sued Apple for infringement of 20 patents. Now Apples is on the counterattack, suing Motorola and Motorola Mobility for infringing a total of six patents covering aspects of Multi-Touch in smartphones.
In this in-depth interview, Dr. Poltorak describes the fields of patent enforcement and technology transfer in detail, and discusses what separates GPC from our competition.
Interviewer: Sam Stone
Interviewee: Alexander Poltorak
Sam Stone: "Recorded live from our studios located in the financial district of New York City, this is Sam Stone for Wall Street Reporter magazine. My guest today is Alexander Poltorak. He is Chief Executive Officer of privately held General Patent Corporation. Alex, welcome to the program."
Dr. Poltorak discusses e-commerce and the growth - and complexity - of the new "business method" patents
Interviewer: David Zielenziger
Interviewee: Alexander Poltorak
Bloomberg: This is David Zielenziger of Bloomberg News. Welcome to Internet Action. On the line with us from Suffern, New York is Alexander Poltorak, the Chairman and Chief Executive of General Patent Corporation. Alex, welcome to Bloomberg.
Alex: Thank you David.