February 2011

A General Rule

Submitted by patentadmin on Mon, 02/28/2011 - 12:36

The “preamble,” or introductory, part of a patent claim is the portion of the claim preceding the “transition” words “comprising” or “consisting of.” Do the terms of the preamble constitute limitations of the claim? Like so much of the law, "it depends." (American Medical Systems, Inc. and Laserscope v. Biolitec, Inc.)

Steven Hoffman, Former President and CEO of ThinkFire, Joins GPC’s Advisory Board of Directors

Suffern, N.Y. – February 17, 2011 – Steven J. Hoffman, former President and CEO of ThinkFire, Inc., an IP advisory and transactions company, has joined the Advisory Board of Directors at General Patent Corporation (GPC), a leading intellectual property (IP) firm focusing on patent licensing and enforcement, patent brokerage, IP consulting, and IP valuation.

CNET - "Nokia-Microsoft tie-up could shift mobile patent wars"

GPC's Alexander Poltorak was quoted in Nokia-Microsoft tie-up could shift mobile patent wars (CNET.com, February 11, 2011).

Responding to the suggestion that Apple and Nokia might team up against Google/Android, "Alexander Poltorak, CEO of General Patent Corporation, says he sees no real possibility of that happening, for antitrust reasons and because of the self-interest of Microsoft, Nokia, and Apple."

Making It Simple

Submitted by patentadmin on Wed, 02/16/2011 - 17:45

Wouldn’t it be great, from a patentee’s perspective, if infringement could be proven without the bother and expense of comparing the asserted patent claims with an accused product? Well, good news patentees; now in some circumstances you can! (Fujitsu Limited, LG Electronics, Inc. and U.S. Philips Corporation v. Netgear Inc.)


Submitted by patentadmin on Wed, 02/16/2011 - 15:48

As the reader should be well aware by now, false marking is the marking of a patent number on an “unpatented article.” Heretofore, most such cases have involved expired patents. Occasionally, mismarking has been found where the marked patent did not cover the article on which it appeared or where the marked patent had previously been adjudicated as invalid. Fine; so what about a patent that was found not to be invalid, but unenforceable? Does marking an article with the number of such a patent constitute false marking? (Promote Innovation LLC v. Medtronic, Inc.)

Coca-Cola's Famous Trade Secret Still a Secret

Submitted by patentadmin on Wed, 02/16/2011 - 09:27

February 16, 2011 - Coca-Cola's spokeswoman and its archive director have both refuted the claim made by public radio show "This American Life" that its cola formula - one of the most famous and valuable trade secrets, and one that has lasted 125 years - had been found. But the actual formula for Coca-Cola resides in a bank vault in Atlanta.

No Little Matter

Submitted by patentadmin on Fri, 02/11/2011 - 14:00

For some reason, it appears that the folks who make tequila can’t get along with the folks who make bourbon. Some time ago, we wrote about the ongoing and increasingly bitter trademark dispute between Maker’s Mark (bourbon) and Jose Cuervo (tequila). Now, we have another Battle Of The Booze, this time between Jim Beam Brands Co. (bourbon) and Tequila Cuervo La Rojena SA de CV (tequila).

History Lesson

Submitted by patentadmin on Fri, 02/11/2011 - 13:41

Sometime ago, we wrote about a U.S. patent being enforced in Puerto Rico – yes, Puerto Rico is part of the United States. Now, we write about a U.S. patent which is not being enforced in an Indian reservation, in Oklahoma, because the reservation is a separate nation and, in that respect, not part of the United States. (Specialty House Of Creation, Incorporated v. Quapaw Tribe Of Oklahoma, a federally recognized Indian nation)

Law360 - "Kyocera Denied Stay In DTL Cell Phone Patent Suit"

A victory for GPC's client company DTL was the subject of a recent Law360 article, "Kyocera Denied Stay In DTL Cell Phone Patent Suit" (Law360, February 10, 2011 - subscription required).

Article excerpt:

Third-party defendant Kyocera Communications Inc. has failed to stay Digital Technology Licensing LLC’s infringement suit against Sprint Nextel Corp. pending the reexamination of DTL’s widely-asserted cell phone patent.

Wall Street Journal - "Patent Reform Bill (Yet Again) Makes It to Senate Floor"

Speaking about the resurrected Patent Reform Act in "Patent Reform Bill (Yet Again) Makes It to Senate Floor" (Wall Street Journal Law Blog, February 8, 2011), Alexander Poltorak comments that changing from a "first-to-invent" standard to a "first-to-file" standard would be harmful for small inventors and have a negative effect on patent quality.

Trade Undress or The Times They Are A'Changing

Submitted by patentadmin on Mon, 02/07/2011 - 13:19

The world is changing. Orange juice isn’t just for breakfast anymore and Chippendales dancers are no longer “adult entertainment” just for women. (In Re Chippendales USA, Inc.)

Before we recount the fascinating Chippendales’ saga, a brief lesson in trademark law is in order. Trademarks and service marks may be divided into four classes or categories, based upon their “inherent distinctiveness”: (1) “arbitrary” or “fanciful,” (2) “suggestive,” (3) “descriptive,” and (4) “generic.”

Politeness Is Not Enough

Submitted by patentadmin on Mon, 02/07/2011 - 13:09

If, as the saying goes, a lawyer who represents himself has a fool for a client, what can be said about a layman who represents himself in prosecuting a number of lawsuits against alleged infringers of his patent?

Samy Gharb is the inventor of a “Security System With A Mobile Telephone.” Through the services of a respectable IP law firm (Burns, Doane, Swecker & Mathis, LLP), he secured a patent on his invention, which issued in April 2003. So far, so good.

Acacia Prevails Over Yahoo in Patent Infringement Lawsuit; Awarded $12.4M

Submitted by patentadmin on Thu, 02/03/2011 - 09:15

February 3, 2010 - Acacia Research Corp.'s subsidiary, Creative Internet Advertising Group, received a $12.4 million judgment stemming from a May 2009 trial verdict in the company's patent lawsuit against Yahoo Inc.

A jury in the Eastern District of Texas found that Yahoo's messenger infringes one of Acacia's patents.