Ten years ago, Amazon sued Barnes & Noble for allegedly infringing the now-infamous “1-click” patent. This suit created a frenzy among techno-geeks who vomited up a mountain of prior art and vituperative rant in an unsuccessful attempt to invalidate the Amazon patent. Now, Amazon is being sued by Cordance Corp. which has a patent on – you guessed it – a “1-click” ordering system. Cordance claims that its patent predates the Amazon patent.
Recently, a small software company, i4i Limited Partnership, won a patent infringement lawsuit against Microsoft Corporation. i4i was awarded Two Hundred Million Dollars ($200,000,000.00) in compensatory damages plus Fifty Million Dollars ($50,000,000.00) in post-verdict damages, prejudgment interest and post-judgment interest. Yes indeed, folks, a quarter of a BILLION dollars. This, in itself, is a joyous and newsworthy item. But, it gets even better.
The ever increasing incidence of unauthorized uploading and downloading of copyrighted material on the internet has given rise to a very significant question, namely: ‘what court has jurisdiction over the offending parties?’ Stated in law school terms, if party A, in State B, enters an unauthorized copy of a copyrighted work onto the internet and party C, in State D, where the copyright owner resides, prints a copy of this material, can the copyright owner sue party A in State D?
Who is an inventor or, more specifically, a co-inventor? The law provides that “each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice.” Inventors A and B had jointly developed a belief that, under certain circumstances, stem cells would transdifferentiate into various other types of cells (the nauseating details are unnecessary). They were not, however, “scientifically certain” of their theory and lacked sufficient evidence to support a patent on their invention. Along comes Mr.
Large corporations are constantly railing against the alleged unethical conduct of NPEs (Non-practicing Entities, also pejoratively known as “trolls” and “those X!#?Z”) which have the temerity to sue when their patents are being infringed.
Now, in a surprising and long overdue turn of events, one of the NPEs has moved for sanctions against a large corporate defendant, claiming that the defendant’s allegations of inequitable conduct, leveled against the plaintiff’s founder and inventor, were a baseless smear campaign. (Intellect Wireless Inc. v. LG Electronics Inc. et al.)
In elementary school and Sunday school, we were repeatedly instructed that it was good – maybe even a religious obligation – to share what we had. Unfortunately for Jammie Thomas-Rasset, the federal court in Minnesota takes a decidedly different view. Capitol Records Inc. et al. v. Thomas.
In litigation, failure to meet a deadline may sometimes be excused if the tardy party can show “good cause” for its untimeliness. In a recent case, Hill v. Abercrombie & Fitch, the plaintiff sought leave to amend its preliminary infringement contentions (PICs), explaining that the infringement theory upon which it was now relying was not previously available. The Court, not surprisingly, inquired as to the nature of this theory.
It has become the fashion these days to bemoan the poor quality of American public school education (occasionally correct), American popular music (mostly correct), and American political leadership (presently correct). Now, one percipient voice is addressing the poor quality of American patents (frequently correct).
As the reader undoubtedly knows – or should know – applicants for patents and their attorneys owe a duty of candor to the patent office. As part of this duty, they are obligated to disclose to the patent examiner all material prior art of which they are aware. That sounds fine, but exactly how far does that duty extend? If a patent examiner has been directed to consider a certain apparently pertinent prior art reference, but inexplicably fails to do so, is it the duty of the applicant’s attorney to bring this failure to the examiner’s attention?
Back in the dark ages, when I was in high school, my English literature class studied The Catcher in the Rye. Since at that time I planned to be an engineer, I made a point of showing no interest in literature. As the semester ended before we finished studying the book, I never did find out how it ended.
We have frequently decried the actions of patent infringers (slimeballs). Now, it seems that even when they take a license, the actions of some companies may remain questionable. Discovision Associates v. Toshiba Corporation. Discovision granted a patent license to Toshiba and its subsidiaries.
A previous blog post discussed the eBay decision, about which we will not comment further, except to note that it effectively removed one weapon from the arsenal of the NPE – the dreaded “non-practicing entity” (also, pejoratively known as a “troll”). No longer could the NPE threaten a patent infringer with the legal equivalent of a neutron bomb – a permanent injunction.
If a patent claim is indefinite, it is invalid. The key question, of course, is what constitutes indefiniteness. Well, patent draftspersons, rejoice. In a rare, precedential opinion, Ex parte Kenichi Miyazaki, the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (USPTO BPAI) has decided that if a claim term is not used or defined in the specification, and the meaning of the term is not discernable, the claim is indefinite. Moreover, any inconsistency between a claim term and the patent specification may make the claim indefinite.
Under the common law, intellectual property, created by an employee in the course of his employment and pertaining to the business of his employer, belongs to the employer. Nevertheless, in order to leave no question as to this, most employers require employees to sign an agreement to this effect (the well known Employee Invention Assignment Agreement).
Patent licenses typically allow the licensee to “make, use and sell” the patented product. Often, they are silent as to the right of the licensee to have the licensed product made by a third party. In such a circumstance, does the license also include the right to “have made,” i.e. the right of the licensee to use third-party contractors to manufacture licensed products for its own use?
A recent blog commented on a case where the defendants were lawyers. We now have a case, Tailored Lighting Inc. v. Osram Sylvania Products, Inc., where the lawyers for the defendant are deposing lawyers for the plaintiff. Yes, indeed. It seems that the lawyers have reached a point where they only need lay persons (f/k/a “laymen”) to pay their bills.
The Bilski decision is to patent attorneys what politics is to late night television – an unending source of material.
A school of barracudas, having entered into a feeding frenzy, will turn on their own weakened or injured members, when the original prey has been consumed. Apparently, it is the same with land barracudas, i.e. lawyers.
Quickie LLC v. Greenberg Traurig LLP et al.
In patent law, a “product” or “article” claim covers (well, duh) a product. A “process” claim covers a method of doing something – like making a product. A product claim is infringed by the unauthorized making, using, selling, offering for sale or importing the patented product. A method claim is infringed by the unauthorized practice of the patented process. A third, less well-known, type of patent claim is the “product-by-process” claim which covers a product produced by a particular process¹. What infringes a product-by-process claim?
Recently, we noted that one of the most contentious provisions of the proposed patent reform act pertained to the manner in which damages would be determined. At one point, the proposed senate bill would have required that a “reasonable royalty” be applied “only to the portion of the economic value of the infringing product or process properly attributable to the claimed invention’s specific contribution over the prior art.” As we pointed out previously, the courts are already doing this.