On Friday July 9, 2010, NTP Inc. filed patent infringement suits against six major smartphone companies.  NTP is suing Apple, Google, HTC, LG Electronics, Microsoft, and Motorola over eight NTP Inc. patents which relate to wireless e-mail delivery.  NTP is a patent holding company or also known as a “non-practicing entity.”  A non-practicing entity does not practice the patented technology but instead makes money from licensing the technology and damages from infringement suits.  A co-founder at NTP , Donald Stout, stated that “[t]he filing of suit today is necessary to ensure that those companies who are infringing NTP’s patents will be required to pay a licensing fee.”  The NTP patents expire in 2012.

NTP may be remembered for their lawsuit in 2000 against the Blackberry manufacturer, Research in Motion (RIM).  RIM settled the case in 2006 and paid a reported $613 million to NTP.  In return, RIM now has a license to practice NTP’s patented technology.  In 2007, NTP sued AT&T, Sprint Nextel, T-Mobile, and Verizon Wireless for similar patent infringement which are still pending in the courts.

Microsoft and Google do not manufacture smartphones but do make operating systems for smartphones.  Donald Stout stated that the “[u]se of NTP’s intellectual property without a license is just plain unfair to NTP and its licensees.”  The defendant companies have yet to comment about the suit.

Filed under: Alive Patents, In the Courts, Patent by brandond
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On June 28, 2010, the Supreme Court of the United States released a long-awaited opinion regarding the patentability of business method patents.  The Supreme Court upheld a decision which found a process for hedging commodities was non-patentable subject matter.  In 1997, Bernard Bilski and Rand Warsaw filed a patent application for a procedure for hedging commodities.  The United States Patent and Trademark Office (USPTO) rejected the application, and the Federal Circuit upheld the rejection because the application claimed non-patentable subject matter. The Federal Circuit Court of Appeals created a “machine-or-transformation” test which required a process to be tied to a machine or transform an article from one form to another.  The Federal Circuit found that the process claimed in Bilski’s application only manipulated abstract ideas and was neither tied to a machine nor transformed an article into another form.

The Supreme Court upheld the ruling that Bilski’s application claimed non-patentable subject matter.  The Supreme Court rejected the Federal Circuit’s holding that the “machine or transformation” test was the sole test for determining patentability.  Instead, the Court stated that the test was merely a factor to consider.  Kennedy’s majority opinion specifically stated that “[t]his Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101.”  Additionally, the Court held that business method patents could still be patentable, but Bilski’s application was not patentable.  35 U.S.C. 101 states that a “process” is patentable subject matter; however, the statute states that laws of nature, physical phenomenon, and abstract ideas are not patentable.  The Supreme Court held that Bilski’s patent application only  manipulated an abstract idea and was, therefore, unpatentable.  In conclusion, the Supreme Court seems to have established that processes or business method claims which do not satisfy the machine-or-transformation test may still be patentable if they do not claim abstract ideas.

The USPTO released an internal memo to examiners explaining that they should continue to “examine patent applications for compliance with section 101 using the existing guidance concerning the machine-or-transformation test as a tool for determining whether the claimed invention is a process under 101.”   If a claimed method satisfies the test, then the method is likely patentable unless it is clearly an abstract idea.  On the other hand, if the claimed method does not meet the test, the examiner should reject the application unless there is a clear indication that it is not an abstract idea.

For more information, the actual opinion can be found at: http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

Image from:  http://static.fsf.org/fsforg/img/bilski.jpg

Filed under: In the Courts, In the USPTO, Patent, Uncategorized by brandond
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The United States Patent and Trademark Office (USTPO) is requesting comments and input from the general public about a potential multi-track examination initiative.  The proposed “Three Track” initiative will give applicants better control over their examination process while increasing efficiency in the Patent Office.   The proposed “Three Track” initiative would classify examination tracks in three categories.  An applicant may request:

Track I:  prioritized examination (which would require an associated fee in addition to the filing fee)

Track II:  traditional examination under the current procedures

Track III:  for non-continuing applications first filed in the USPTO, an applicant-controlled delay for up to 30 months prior to docketing for examination (applicant must request examination and pay examination fee within 30 months of filing)

By giving applicants better control over the timing of examination, the proposed initiative will decrease pendency and allow the USPTO to employ its resources more efficiently. Specifically, one thing the initiative could change is how applications which are based on foreign priority are examined.

“For applications filed in the USPTO that are based on a prior foreign-filed application, no action would be taken by the USPTO until the agency receives a copy of the search report, if any, and first office action from the foreign office as well as an appropriate reply to the foreign office action as if the foreign office action was made in the application filed in the USPTO.  Following or concurrent with the submission of the foreign office action and reply, the applicant may request prioritized examination or obtain processing under the current procedure. This proposal would increase the efficiency of the examination of these applications by avoiding or reducing duplication of efforts by the office of first filing and the USPTO.”

The USPTO is holding a public meeting on July 20, 2010 at 1:30 p.m. at the USPTO’s Madison building, 600 Dulany Street, Alexandria, Virginia. Please see the USPTO press release for more information about submitting comments and attending the general meeting: http://www.uspto.gov/news/pr/2010/10_24.jsp

Image from: http://thenextweb.com/apple/files/2010/01/uspto_logo.jpg

Filed under: Events, In the USPTO, Miscellaneous, Patent by brandond
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On Friday, May 14, 2010, the United States Court of Appeals for the Federal Circuit announced that it would grant an ‘en banc’ hearing of the TiVo v. Echostar case.  An ‘en banc’ hearing is a decision made by all the judges of a court, where typically only a panel of three judges hear an appellate case.  An ‘en banc’ hearing is extremely rare.  An ‘en banc’ hearing vacates the earlier appellate decision, and the original briefs and filings will be reexamined.  The ‘en banc’ hearing in the present case will address whether a product released by Dish Networks is infringing under the previous decision or whether a new trial is necessary.

Back in 2004, TiVo sued Dish Networks (Echostar) for infringing its patent, U.S. Patent No. 6,233,389 (“the ‘389 patent”), which allows a user to record a television show while simultaneously watching or viewing another program or show.  In mid-2006, the Eastern District Court of Texas returned a jury verdict holding that Dish Networks infringed the ‘389 patent and awarded $89.6M in damages and a permanent injunction to TiVo.  The permanent injunction prohibited Dish Networks from providing its DVR service.  Dish Networks appealed this decision, and in January 2008, the United States Court of Appeals upheld the District Court’s ruling.  Throughout this period, Dish Networks continued to sell its DVR system.  Dish Networks claimed they made design-around adjustments to the DVR system that would avoid infringement of the ‘389 patent.  However, TiVo argues that the changes were insubstantial and seeks additional damages caused by Dish Networks.  If the Federal Circuit upholds the permanent injunction, it could mean the end for Dish Networks’ and DirectTV’s recording devices.

Image from:  http://lincgeek.org/blog/wp-content/uploads/2008/05/tivo.jpg

Filed under: Alive Patents, Events, In the Courts, Patent by brandond
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Recently, Interbrand, a leading brand consulting firm, released their ranking of the top 100 brands based on brand value. This is the ninth consecutive year that Interbrand has released the ranking. Interbrand reports that this is the first year that the aggregate value of the top 100 brands has declined, a loss of about 4.6% or about $55 billion. Interbrand 2009 Global Ranking Press Release.

That said, many brands increased in value. Coca-Cola maintained its #1 spot and increased in value by 3%.  And, Google increased in value by 25% giving the company the largest positive change in brand value this year.

Check out the rankings at
http://www.interbrand.com/best_global_brands.aspx?year=2009&langid=1000

Image from: http://www.interbrand.com/best_global_brands_intro.aspx?langid=1000

Filed under: Miscellaneous, Trademark by davidi
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Recently, Paice LLC filed a complaint with the U.S. International Trade Commission (“ITC”) claiming Toyota is infringing its patent. The ITC was set up to protect U.S. markets from unfair trade practices. To protect U.S. markets, the ITC has the power to order U.S. Customs and Border Patrol to block products that infringe on U.S. patents from entering the country. Paice’s complaint seeks to prevent Toyota from importing all hybrids. This includes all hybrids made by Toyota, including the best selling Prius, as well as any hybrid made by Toyota’s Lexus division.

Under ITC rules, Paice must show “that it has a market to protect.” Bloomberg.com: Toyota Patent Trade Case May Affect Hybrid Imports.  Paice does not make any products related to the patent; however, Paice does claim to have invested in vendors, suppliers, research and licensing. Currently, the ITC is looking at the standards that allow patent holders who don’t make products to file lawsuits.

This matter is not the first time that Paice and Toyota have fought over patent infringement. In 2005, Toyota was ordered to pay $4.3 million dollars to Paice for infringing on Paice’s patents related to drivetrains. The infringing products were the drivetrains of the hybrid Toyota Highlander and the Lexus RX400h.

A list of Paice’s patents relating to hybrid electric vehicles can be found at the following site: Paice’s Patents.

Image from: http://www.toyota.com/prius-hybrid/photo-gallery.html

Filed under: Trademark by davidi
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Recently, U.S. District Court Judge Garrett Brown rejected the argument made by Teva Pharmaceuticals Industries Ltd. that the patent covering the main ingredient in Merck & Co.’s asthma and allergy treatment drug Singulair® was invalid or unenforceable. The patent that covers Singulair’s® main ingredient is U.S. Patent No. 5,565,473 and can be viewed at Google patents with this link: U.S. Patent No. 5,565,473.

Teva is the world’s largest generic drug maker and has a 22% market share of generic-drugs in the U.S. (Fortune Magazine - Teva: The King of Generic Drugs). The company has a history of persuading courts to invalidate pharmaceutical patents. For example, in 2004, Teva filed and won a lawsuit against Novartis International AG. In the lawsuit, the court found that Novartis’s patent for the blood pressure medicine Lotrel® was invalid.

A provision in the Hatch-Waxman Act, passed by Congress in 1984, gives generic drug companies an incentive to challenge pharmaceutical patents. According to the Hatch-Waxman Act, if a generic drug maker is able to prove that a patent protecting a drug is invalid, then the generic drug maker is given a six month window of sales exclusivity to sell their generic version of the drug.

Oddly enough, even though Teva is the world’s largest generic drug maker, the company does a significant amount of research on new drugs. In fact, the company developed and patented the active ingredient in the multiple sclerosis treatment Copaxone®, the patent for which expires in 2014.

Image from: http://tevausa.com/default.aspx?pageid=31

Filed under: Alive Patents, In the Courts, Patent by davidi
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Attorney General Lisa Madigan recently filed lawsuits against three suppliers and one marketer of the Acai berry in the Circuit Court of Cook County.  The lawsuits allege that the companies use deceptive techniques to lure customers, prematurely charge their credit cards, and make it almost impossible to cancel orders of the berry. Madigan stated “[t]he acai berry supplement sales programs are among the most aggressive that we have seen using misleading sales tactics to scam consumers.”

In addition, Harpo, Inc., the producers of “The Oprah Winfrey Show,” and Dr. Mehmet Oz filed over 40 trademark infringement suits against internet marketers of the Acai berry. Last year, Dr. Oz talked about the Acai berry on an episode of the Oprah Winfrey show.  Dr. Oz did not endorse any companies or their products.  The Oprah Winfrey show is one of the most watched shows in America, and when Oprah endorses a product, it oten becomes an overnight hit.  Oprah’s approval of weight loss supplements is golden, and many Americans trust her judgment.  Internet advertisers have been using this publicity as a marketing tool by claiming that Oprah and Dr. Oz endorse and support their products.  The internet advertisers have allegedly fabricated quotes and voice recordings to sell their product.

Dr. Oz even stated “[a]nd more importantly, when consumers trusting us try to buy these products over the Web, what they end up getting are fake products, pills that don’t really have what’s promised in them. They’re often duped into paying more than they should. If my picture is next to a product, endorsing it and supporting your purchase of it, I did not give them permission.”

Oprah has posted on her website

“ *  Consumers should be aware that neither Oprah Winfrey nor Dr. Oz are associated with nor do they endorse any açaí berry product, company or online solicitation of such products, including MonaVie juice products. Attorneys for Harpo are pursuing companies that claim such an affiliation.

* Neither Oprah nor Dr. Oz are associated with nor do they endorse any specific resveratrol product, company or online solicitation of such products. Any companies that misrepresent their affiliation are making false claims. Harpo attorneys are pursuing companies that claim such an affiliation.”

http://www.oprah.com/article/health/nutrition/20090105_orig_acai

Image from:  http://x.weightlossblog2009.com/images/dr-oz-and-oprah-pic.jpg

Filed under: In the Courts, Trademark by brandond
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On August 13, 2009, Gary Locke, Secretary of Commerce, swore in David Kappos as the new Director of the United States Patent and Trademark Office (USPTO).  Kappos faces many challenges in the USPTO.  To read about the challenges that face the new director, please read the two earlier blog posts.

Possible Changes to Come in the USPTO

David Kappos Nominated as the New Director of the U.S. Patent and Trademark Office

Image from:  http://www.uspto.gov/images/newsheadlines/2009aug13kappos_sworn.jpg

Filed under: Events, In the USPTO, Miscellaneous by brandond
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On August 11, 2009, a United States District Court Judge in the Eastern District of Texas ordered Microsoft to stop selling Microsoft Word.  Judge Leonard Davis ordered the permanent injunction because Microsoft Word is infringing a patent to I4I or Infrastructures for Information Inc., namely,U.S. Patent No. 5,787,449, which is titled “Method and system for manipulating the architecture and the content of a document separately from each other.”  The permanent injunction goes into effect sixty days from the decision.  Microsoft will no longer be able to use, market, advertise, or sell Word 2003, 2007, or any other similar word processing program.

In May 2009, a Texas jury also ordered Microsoft to pay $200 million in damages to I4I for infringing the patent. Other news sources have stated that Microsoft plans on appealing.  A Microsoft spokeswoman stated that Microsoft alleges they are not infringing I4I’s patent and, in addition, the patent is invalid.

I4I is a Canadian company, and the ‘449 patent issued on July 28, 1998.  The patent discloses “[a] system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. The system, for use by computer software developers, removes dependency on document encoding technology. A map of metacodes found in the document is produced and provided and stored separately from the document. The map indicates the location and addresses of metacodes in the document. The system allows of multiple views of the same content, the ability to work solely on structure and solely on content, storage efficiency of multiple versions and efficiency of operation.”

View the patent at:  http://www.google.com/patents/about?id=y8UkAAAAEBAJ&dq=5,787,449

Image from:  http://www.aqsa.org.uk/Portals/0/Misc/Microsoft%20Word.png

Filed under: In the Courts, Patent by brandond
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