December 2010

Not Even Close

Submitted by patentadmin on Thu, 12/30/2010 - 14:55

Sometimes a patent claim is drafted in such a way that, as a practical matter, it can’t be infringed. Without such direct infringement, there can be no indirect infringement, i.e. no contributory infringement, nor any inducement to infringe. Sometimes this annoying little detail escapes patentees eager to enforce their patents. Moreover, some patentees seem to confuse the possibility an item was used in an infringing manner with actual infringement. (PrivaCash, Inc. v. American Express Company et al.)

The Last Word

Submitted by patentadmin on Thu, 12/30/2010 - 14:43

In its recent landmark Bilski non-decision, the Supreme Court held that the now-famous “machine-or-transformation test” (MOTT), although “a useful and important clue,” is not the sole test for determining the patentability of process claims. Fortunately for the legion of lawyers who will now earn vast sums of money litigating the question, the Court did not indicate what other test might apply. Well, to the chagrin of the lawyers, the Court Of Appeals For The Federal Circuit (CAFC) has now stepped in to fill the vacuum.

Measure Of Damages

Submitted by patentadmin on Thu, 12/30/2010 - 14:17

For some time we have been writing about lawsuits alleging that a manufacturer has “mismarked” its products. Generally, these cases involve venerable products formerly covered by patents which are now expired. If the manufacturer neglects to remove the expired patent numbers from the product, ZAP, they get sued by some “marking troll.” As the reader may have discerned, we disapprove of such lawsuits. Now, however, we have come across a claim of mismarking of which we most heartily approve. (Polytree (Hong Kong) Co., Ltd., et al. v. Forests Manufacturing, Ltd.)

Not The A-Team

Submitted by patentadmin on Thu, 12/30/2010 - 13:23

By now, every “non-practicing entity” (NPE) in the country must be aware of the impact of the Supreme Court’s eBay decision, compelling the courts to apply the dreaded “four-factor” test to determine whether a prevailing patentee is entitled to an injunction barring further infringement by the scum-sucking defendant. In case anyone has been comatose for the past year and is unaware of the implications of this decision, I will briefly summarize – if you’re an NPE, the courts will NOT grant you an injunction.

God Is On Our Side

Submitted by patentadmin on Thu, 12/23/2010 - 21:53

From the ridiculous to the sublime. Last week we wrote about a lawsuit alleging, inter alia, infringement and dilution of the trademark HUSTLER, used in respect of nudie bars (see All You Ever Wanted to Know About HUSTLER - And More). This week we report on a lawsuit alleging infringement and dilution of two servicemarks used in respect of “religious services or works.” (Episcopal Diocese Of Fort Worth v. The Rt. Rev. Jack Leo Iker).

Real Chutzpah

Submitted by patentadmin on Mon, 12/20/2010 - 15:23

Today we write about a company that truly knows no shame. Having defrauded a supplier and its own customers – and, incidentally, trampling on the intellectual property rights of both – it now compounds its shame. Rather than quietly pay the penalty – which it had negotiated with the offended supplier – it seeks to have the penalty paid by its insurance carrier. Hartford Casualty Insurance Company et al. v. SoftwareMedia.Com., Inc. et al.

Plaintiffs With No Shame

Submitted by patentadmin on Mon, 12/20/2010 - 15:16

Sometimes a defendant need not actually present its defense in order to prevail. Sometimes the plaintiff seemingly goes out of its way to destroy its own case. Advanced Magnetic Closures, Inc. et al. v. Rome Fastener Corporation et al.

Advanced Magnetic sued Rome, alleging infringement of a patent directed to magnetic snap fasteners commonly used in women’s handbags. The patent-in-suit identified Irving Bauer, the president of Advanced Magnetic, as the sole inventor.

Kodak Files Patent Infringement Lawsuit Against Shutterfly

Submitted by patentadmin on Wed, 12/15/2010 - 09:27

December 15, 2010 - Eastman Kodak Co. filed a patent infringement suit against Shutterfly Inc., an online photo sharing service, and has been sued in return.

Kodak alleges that Shutterfly infringes its patent(s), but did not specify which patents were infringed in its complaint, only that it is seeking an injunction plus damages, legal fees and other costs.

Microsoft Co-founder Paul Allen's Patent Infringement Lawsuit Dismissed

Submitted by patentadmin on Wed, 12/15/2010 - 09:27

December 15, 2010 - In August of this year, a company called Interval Licensing LLC (founded by Microsoft co-founder Paul Allen) sued 11 Internet giants - AOL, Apple, eBay, Facebook, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo and YouTube - alleging infringement of four patents. That lawsuit was dismissed on December 10.

Quite Appealing

Submitted by patentadmin on Tue, 12/14/2010 - 13:23

This is the latest chapter in the continuing saga of The Travails Of Kiwi Camara and his unending efforts to defeat the forces of the record industry and make recorded music available to all, at no cost – record companies and recording artists be damned.

The Luck of the Draw

Submitted by patentadmin on Tue, 12/14/2010 - 12:56

Recently we wrote of a case (see A Lack of Control) wherein the method claims of the patent-in-suit were found to be not infringed because, in the Court’s analysis, “the claims require multiple actors … and … there is no dispute that the parties involved do not control or direct each other’s actions …” Well, now we have another case, from a different court, decided only 13 days later, which seemingly comes to the opposite result. (Kenexa BrassRing Inc. v. Taleo Corporation et al.)

A Touching Case

Submitted by patentadmin on Fri, 12/10/2010 - 11:36

All too often, patent cases are dry, tedious and just plain BORING. Occasionally, however, we encounter a case which provides “excitement” and “stimulation” and, ultimately, “satisfaction” – or at least the patented invention does such. (Hassex, Inc. and New Frontier Technologies Corporation v. Internet Services, LLC, Inc. and WMM Holdings, LLC.)

Reuters - "Final bids due for Nortel patents - sources"

Alexander Poltorak commented on the pending sale of blocks of former telecom giant Nortel Networks' patents in "Final bids due for Nortel patents - sources" (, December 9, 2010).

"It is certainly a very significant stockpile of potent weaponry, and whoever lays their hands on it is going to gain significant advantage," Dr. Poltorak observed. Read the full article here.

Dream The Impossible Dream

Submitted by patentadmin on Thu, 12/09/2010 - 16:54

You may dream the impossible dream, but you can’t patent the impossible invention. (Mformation Technologies, Inc. v. Research In Motion Limited, et al.)

Mformation sued R.I.M., alleging infringement of a patent directed to “the remote management of wireless devices, such as smartphones.” In its defense, R.I.M. filed a blizzard (lawyerly hyperbole meaning “four”) of summary judgment motions, two of which are highly technical and fact-specific – and boring. The other two are more widely applicable and, hence, are the subject of this blog.


Submitted by patentadmin on Thu, 12/09/2010 - 16:48

Some time ago, we wrote of Jammie Thomas (now Jammie Thomas-Rasset) and her attorney, Kiwi Camara (still Kiwi Camara), who are locked in apparently unending combat with Capitol Records, Inc. et al. As the reader may remember, in October 2007 Ms. Thomas-Rasset was found guilty of illegally – and willfully – downloading 24 songs (see previous blogs, The Cost Of Free Music and Damned If They Do, Damned If They Don’t).

A Lack Of Control

Submitted by patentadmin on Wed, 12/08/2010 - 21:55

By now the reader should be aware that a method claim of a patent is only infringed when ALL of the steps are performed by a single party – known in the trade as the “scum-sucker.” If different claim steps are performed by different parties, infringement occurs only when the actions of ALL of the parties are controlled or directed by a single entity – known in the law as the “mastermind.” Fine; so what constitutes the necessary “control or direction,” especially in the context of methods practiced on the internet? (Zamora Radio, LLC v. Last.FM, Ltd., et al.)

Verdict Reversed in Patent Infringement Lawsuit Between Western Union and MoneyGram

Submitted by patentadmin on Wed, 12/08/2010 - 09:27

December 8, 2010 - Last year, Western Union Co. won a $16.4 million verdict against MoneyGram in a patent lawsuit over a method of transferring money via telephone. Recently, the Court of Appeals for the Federal Circuit (CAFC) reversed that ruling and found the Western Union patents invalid based on obviousness.

General Patent Corporation Settles Patent Infringement Lawsuit with Casio

General Patent’s Subsidiary, Advanced Video Technologies, Licensed Casio under Its Full Duplex Single Chip Video Codec Patent

Suffern, N.Y., December 7, 2010 − General Patent Corporation (GPC), a leading patent licensing and enforcement firm, announced today on behalf of its subsidiary, Advanced Video Technologies LLC (AVT), that it settled patent infringement lawsuits between AVT and Casio America Inc. of Denville, N.J. and Casio Computer Co. Ltd. of Tokyo, Japan.


Submitted by patentadmin on Thu, 12/02/2010 - 16:57

There has been a long-standing practice that a suit filed in the Eastern District of Texas stayed in the Eastern District of Texas. Well, no longer. There are limits, although they are apparently only recognized by the appellate court. (In Re Microsoft Corp.)

For Shame

Submitted by patentadmin on Thu, 12/02/2010 - 14:18

We have written several blogs about legal malpractice cases – cases wherein clients sue their former attorneys, alleging negligence and malpractice. Of late, such cases have become so common as to no longer merit comment. A recent case, however, has caught our attention because, as far as we can determine, the only negligence and malpractice in this sorry affair was committed by the plaintiffs’ new attorneys when they drafted the complaint alleging negligence and malpractice on the part of the plaintiffs’ former attorneys.

Think Responsibly

Submitted by patentadmin on Thu, 12/02/2010 - 13:17

Some time ago, we recounted the sad history of a trademark dispute between Maker’s Mark Distillery – producers of fine bourbon – and Diageo North America Inc. – purveyors of outrageously overpriced tequila. Briefly stated, Maker’s Mark had sued Diageo, alleging infringement and dilution of the assertedly famous Maker’s Mark trademark, namely the “red dripping wax seal” on the tops of the Maker’s Mark bottles.

Supreme Court to Hear Appeal in Patent Infringement Lawsuit between Microsoft, i4i

Submitted by patentadmin on Wed, 12/01/2010 - 09:27

December 1, 2010 - Last year, i4i won its lawsuit against Microsoft, complete with an award of over $200 million (which has since increased with interest) and an injunction against the company's Word software that forced Microsoft to make changes to the program in order to remove the infringing code. Last month, the U.S. Supreme Court agreed to hear Microsoft's appeal.