November 2010

Still a Potent Weapon

Submitted by patentadmin on Fri, 11/19/2010 - 11:32

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.)

Pleading the Facts

Submitted by patentadmin on Tue, 11/16/2010 - 22:14

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.

New Law

Submitted by patentadmin on Tue, 11/16/2010 - 22:10

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.)

Anthony Amaral, Seasoned IP Litigator, Joins General Patent Corporation as Chief IP Counsel

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.  

Oh, Gross

Submitted by patentadmin on Wed, 11/10/2010 - 22:52

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.)

A Trademark Threefer

Submitted by patentadmin on Wed, 11/10/2010 - 22:41

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.

Don't Go Where You Don't Know

Submitted by patentadmin on Wed, 11/10/2010 - 22:22

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)

We’re Number One Again

Submitted by patentadmin on Wed, 11/10/2010 - 21:23

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.

The Partner from Hell

Submitted by patentadmin on Mon, 11/08/2010 - 12:43

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.)

International Business Times - "Motorola in court, fearing Apple's wrath over patents"

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.

International Business Times - "Will Google join OpenJDK as Oracle refuses to license Project Harmony?"

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.

Wired.com - "Calling Oracle Hypocritical, Google Denies Patent Infringement"

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.

Canadian Business - "Patent licensing company Wi-LAN takes on big-name tech companies in legal suit"

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.

Law.com - "Patent Office Set to Lose $70 Million Unless Congress Acts"

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.

Wall Street Journal - "Paul Allen's Lawsuit Renews Patent Debate"

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.

E-Commerce Times - "eBay Accused of Stealing Trade Secrets in $3.8B Patent Suit"

"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.

Associated Press - "Patent holder sues smart phone makers over patents"

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.

Wall Street Journal - "Door Left Open to Business Patents"

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.

PCWorld - "Court Patent Ruling Leaves Software Patents Intact"

"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.

Intellectual Asset Management: Poltorak, Ehrlickman Among IAM Strategy 250

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.

IPLaw360 - "Sprint Sues Palm, Sanyo, Kyocera For DTL Defense"

"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.

National Law Journal - "Commerce Department voices support for patent reform bill amendment"

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.

Law360 - "Leighton Licenses RFID Patents To HID Global"

"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.

After Apple Files Patent Infringement Lawsuit, Power Cable Maker Sanho Agrees to Stop Selling MacBook Cables

Submitted by patentadmin on Wed, 11/03/2010 - 10:27

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.

Transcript of Paul Lerner's Interview with the Wall Street Reporter on December 8, 2000

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.

Time Will Tell

Submitted by patentadmin on Tue, 11/02/2010 - 15:15

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.

Conflicted

Submitted by patentadmin on Tue, 11/02/2010 - 14:58

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.

Good Assumption

Submitted by patentadmin on Tue, 11/02/2010 - 14:41

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.)

Transcript of Alexander Poltorak's Radio Interview with the Wall Street Reporter, March 17, 2000

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."

Transcript of Alexander Poltorak's Radio Interview with Bloomberg News on May 3, 2000

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.