For a long time (actually until 1998), “methods of doing business” were legally deemed ineligible for patent protection. Then came the decision of the Court of Appeals for the Federal Circuit (C.A.F.C.) in State Street Bank, which held that “business methods” are patentable subject matter.
Recently patentees nationwide celebrated the decision in Broadcom Corp. v. Qualcomm, Inc., which seemed to suggest that a prevailing nonpracticing entity (NPE) could secure a permanent injunction barring the defendant from further infringement of the patent(s)-in-suit. Alas, the celebration is unwarranted. The holding in this case resulted from its rather unique facts. The general rule still remains that an NPE likely will not be awarded a permanent injunction.
October 29, 2008 - Pioneer Corp. was awarded $59 million following a verdict of willful infringement against South Korea's Samsung SDI Co. Ltd. and Samsung Electronics Co. Ltd., as well as Samsung Electronics America Inc., based on Ridgefield Park, New Jersey.
The verdict was the result of an eight-day trial in the U.S. Court for the Eastern District of Texas in Marshall, TX. The jury ruled in favor of Pioneer on every count, affirming the company's allegations of willful infringement against Samsung.
In patent infringement litigation, there can be few things as frustrating to a prevailing patentee as to see a generous damages award struck down “as a matter of law” because the judge decided that “a reasonable jury would not have a legally sufficient evidentiary basis” to support it.
Inequitable conduct, f/k/a fraud on the patent office, is a defense often raised by defendants accused of patent infringement. Simply stated, inequitable conduct involves either an intentional misrepresentation of material fact to – or an intentional withholding of material information from – the patent office (in layman’s terms: lying or hiding the ball). As a practical matter, the penalty for inequitable conduct is the loss of the patent (if you lie, you die). The courts have been increasingly likely to declare patents unenforceable due to inequitable conduct – until recently.
Thomas Jefferson, a prolific inventor, was the first patent examiner. (He didn’t spend all of his time with Sally Hemings.)
Abe Lincoln was the only president to be awarded a United States patent. (Al Gore eat your heart out.)
Albert Einstein was once a patent examiner in the Swiss patent office. (He was fired for refusing to get a decent haircut.)
Patent attorneys are reputed to have a great sense of humor. (This may be the most difficult to believe.)
Broadly speaking¹, patent claims may cover either products (article claims) or processes (method claims). Method claims have become increasingly common as inventors seek to patent various methods of conducting business operations, especially conducting business via the internet – the infamous “business method patents.” Infringement of a method claim occurs when each step recited in the claim is performed in the practice of the accused process. Moreover – and an aspect frequently overlooked by both patentees and patent draftspeople,² each step must be performed by the same party.
A recent decision of the United States District Court for the District of Delaware (In Re: `318 Patent Infringement Litigation) has cast new light on the tension between two sometimes conflicting requirements for patent validity: “nonobviousness” and “enablement.”
In order to be valid, a patent must claim subject matter that, as a whole, would not have been obvious, at the time the invention was made, to a person having ordinary skill in the art to which the subject matter pertains.¹
Plaintiffs in patent infringement lawsuits invariably seek a permanent injunction – a court order barring the defendant from future infringement of the patent or patents in suit. Until recently, such an injunction was granted automatically to a prevailing plaintiff. No question.
The patent statute provides that damages for patent infringement begin to accrue when “the infringer was notified of the infringement.” Obviously, it is to the advantage of the patentee to establish the earliest possible date of notice.
An article appearing in IPO Daily News bemoans a recent decision (Voda v. Cordis Corp.) of the Court of Appeals for the Federal Circuit – the patent appeals court – as upholding the “categorical rule” that a “patent owner cannot obtain a permanent injunction by showing irreparable harm to its exclusive licensee.” The anguish is misplaced for two reasons: (1) the Court did not so hold; and (2) the entire problem could have been avoided if the patentee had employed better legal tactics.
On August 2, Tucson-based company Research Corporation Technologies (RCT) won a reversal of a federal court decision that had found RCT's six patents-in-suit unenforceable due to "inequitable conduct" and denied RCT's charges of patent infringement by Microsoft. The U.S. Circuit Court of Appeals had also granted Microsoft a summary judgment finding the patents invalid and non-infringed.
RCT has also licensed its "Blue Noise Mask" digital imaging patents to HP, Lexmark, and Epson.
March 30, 2008 - Zap Media, an Atlanta-based media services company, is suing Apple for patent infringement. Zap's patent, U.S. patent no. 7020704, covers a "system and method for distributing media assets to user devices via a portal synchronized by said user devices."
The company claims that its patent is infringed by iPod and iTunes.
June 30, 2008 - Typhoon Touch Technologies and its licensee Nova Mobility Systems have filed an amended complaint in their lawsuit against Dell and Xplore Technologies. The new complaint adds 12 more defendants to the lawsuit - including Apple - and claims that nearly every company making a touchscreen phone or tablet PC infringes on its two patents, 5,379,057 and 5,675,362, both titled "Portable computer with touch screen and computing system employing same."
May 18, 2008 - Apple has filed a lawsuit against Atico International USA, alleging patent and trademark infringement resulting from Atico's sales of various unauthorized iPod accessories.
Atico's iPod accessories are marketed under the name "Living Solutions" and are sold online and in stores such as Walgreen's drug stores.
Apple charges manufacturers a royalty on all official iPod accessories.
May 16, 2008 - Eastman Kodak announced that it has settled its patent dispute with St. Clair Intellectual Property Consultants, Inc., which had filed a complaint against Eastman Kodak with the US International Trade Commission in January 2007. The complaint alleged that Kodak infringed St. Clair's patents pertaining to certain digital cameras and component parts.
May 15, 2008 - A federal judge has ordered Nintendo of America to pay $21 million to Anascape, a Texas company that owns a portfolio of patents related to game controllers.
Anascape sued Nintendo in 2006, claiming that Nintendo's Gamecube controller, the Wavebird wireless pad and the Wii Classic add-on infringed several of Anascape's patents.
Microsoft was also sued by Anascape in 2006, but settled with them earlier this month for an undisclosed amount.
May 13, 2008 - Jibbitz LLC, the maker of ornamental charms for Crocs shoes, won a $56 million default judgment against a Chinese company that was found to infringe on 179 of Jibbetz's copyrighted designs, had 33 additional designs that were "identical or deceptively similar" to Jibbetz designs and even used the Jibbetz name and logo on their website.
The defendants - Jeffrey Ye, Yuanhui Chen, Jinjiang Huakai Shoes & Garments Co. Ltd. and Xiamen Unibest Import & Export Co. Ltd. - did not respond to the complaint and failed to appear at a March hearing for a preliminary injunction.
April 1, 2008 - A U.S. court has thrown out the new U.S. Patent and Trademark Office rules designed to limit the size of patent applications, a ruling that pleased GlaxoSmithKline Plc.
The company, Europe's largest drugmaker, had been concerned that many of their patent applications would exceed the maximum application size and need to be refiled.
As the patent office takes an average of 32 months to approve or reject a patent, having to refile would deal a major blow to Glaxo and other large pharmaceutical companies with large patent portfolios.
March 28, 2008 - In a lawsuit filed by Hynix Semiconductor and two other firms (Micron, a U.S. company, and Nanya, a Taiwanese company), a court in San Jose, California decided that Rambus did not violate an anti-trust law with its patent on DRAM manufacturing technology.