Patent Law Insights : Software Patent Lawyer & Attorney : Perkins Coie Law Firm : Intellectual Property & Technology Law

If you share your digital photos online like many people, you may have used a service such as Smugmug.  Smugmug's recently filed complaint caught my eye because of my interest in photography.  Smugmug has filed a declaratory judgment action in the Northern District of California, where its offices are located, against Illinois-based Virtual Photo Store (VPS). 

According to Smugmug's complaint, VPS's attorneys sent a letter to Smugmug putting it on notice of at least one of VPS's patents. Smugmug requests the court to declare that Smugmug does not infringe any valid claim of the following three VPS patents:

• Patent No. 6,321,231 directed to an asset (e.g., photograph) "data management and order delivery system";
• Patent No. 6,332,146 directed to "storing and printing digital images"; and
• Patent no. 7,487,155 directed to "routing and distributing digital images."

It will be interesting to see how this case progresses. The identified patents are not very old and there are several online photo sharing sites that will probably be watching closely.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Green energy and smart grid technology continue to provide green pasture for patent applicants. Southern California Edison, which is a large power utility, filed a patent application in 2008.  The application published as Patent Pub. No. 20080177678 and claims:

A method for communicating between a utility and individual customer locations comprising the steps of:

• (a) communicating between the utility and customers and between the utility and customer equipment located at each individual customer location via the Internet or via an advanced utility meter;
• (b) providing each individual customer location with an advanced utility meter; and
• (c) using each individual utility meter to communicate between the utility and the advanced utility meter, to communicate between the advanced utility meter and individual customers and to communicate between the advanced utility meter and equipment located at each individual customer location;
• wherein the utility is an electrical utility and wherein electrical usage data from individual pieces of equipment located at each individual customer location is communicated to the advanced utility meter.

In a first Office Action, the USPTO rejected all claims as not being a novel invention in view of a patent application that was filed three years earlier that published as Patent Pub. No. 20060031180 and is assigned to USCL Corp. One of SCE's claims was rejected as being obvious in view of both the USCL Corp. patent publication and a patent owned by a family trust: Patent No. 7,069,161.  The USCL patent publication is directed to a system for informing subscribers of utility commodity costs and usage, and for controlling the utility commodity usage.  The '161 patent is directed to monitoring and managing the resource consumption and infrastructure of a building in real time.  

As most patent applicants know, Office Actions having rejections are fairly common.  They are communications from the patent examiner in a sometimes protracted negotiation of appropriate claim scope.  SCE can respond to the Office Action by either (1) amending its claims so that they do not cover the USCL patent application's disclosure as far as the USPTO is concerned; or (2) explaining to the patent examiner why SCE's claims are patentable despite USCL's disclosure.

SCE and USCL are not the only patent applicants in smart grid technology.  For example, Tendril Networks filed a patent application in 2005 directed to network-aware power management, which published as Patent Pub. No. 20060200542.

I worked for four years for a very large power utility in the early 1990's.  The company -- which no longer exists in the form it was in when I was there -- was Ontario Hydro, which generated and distributed power across the province of Ontario, Canada.  Back then, Ontario Hydro provided some industrial customers preferential rates based on the time of consumption and the right to shut off consumption.  I remember asking my manager why the company did not provide preferential rates to residential customers as well (which it had very few of because it worked with regional transmission companies in metropolitan areas and only distributed power to residential customers in remote areas).  I don't remember the answer, but it was probably because the technology would have been prohibitively expensive to install and monitor back then.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

A company that is threatened by a potential patent infringement lawsuit can file a declaratory judgment action in a federal district court that has jurisdiction. Generally, the threatened company can seek to have the action heard by a court that may be more friendly towards the company than the patent holder. For a court to hear the action, the patent holder must have some minimal contacts in that court's area of jurisdiction. 

Many foreign entities will generally not have the minimal contacts needed. For example, the Federal Circuit Court of Appeals decided in Autogenomics v. Oxford Gene Technology that the foreign patent holder did not have sufficient contacts in California and so the threatened company must file its action in the Federal District Court for the District of Columbia.

The USPTO publishes a report that identifies where the first-named inventor of each patent resides. When the inventor resides outside the United States, it is a reasonable indicator that the patent is owned by a foreign entity. In 2008, 50.3% of the patents fell in this category whereas in 1977, only 35.5% of patents did. This makes sense because an increasing amount of R&D and manufacturing funds are spent overseas. (When I completed my MBA in the early '90s, we were trying to make sense of the service-based economy.)

If the trend in patent ownership continues, the District Court of DC court may see an increasing number of declaratory judgment actions in patent cases.

• Email This
• Print
• Comments
• Trackbacks (1)
• Share Link

"Green energy" is a hot topic in the energy sector and many companies in that sector are filing patent applications to stake claims to their piece of that green pasture.  Google recently received a patent of its own. 

U.S. Patent No. 7,525,207 issued on April 28, 2009.  It is directed to "[a] system [that] includes a floating platform-mounted computer data center comprising a plurality of computing units, a sea-based electrical generator in electrical connection with the plurality of computing units, and one or more sea-water cooling units for providing cooling to the plurality of computing units," and issued with a couple of quite broad claims:

1. A system, comprising:

• a computer data center proximate to a body of water comprising a plurality of computing units;
• a sea-based electrical generator in electrical connection with the plurality of computing units; and
• one or more sea-water cooling units for providing cooling to the plurality of computing units

16. A method of maintaining a computer data center, comprising:

• generating electrical power using the wave, tidal, or current motion of water adjacent a data center;
• providing the generated electrical power to the data center; and
• circulating the water adjacent the data center through a heat exchanger to produce cooling for the data center equipment.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Most people who are familiar with patents know that the fewer words a claim has, the broader its scope.   New clients who are not familiar with patents sometimes mistakenly think that the more features a patent's claim recites, the "broader" the claim is.  They quickly learn the truth.

Even when they have few words in their claims, many patents have quite long specifications.  For example, a patent a client is thinking of asserting is huge by any stretch of the imagination.  Its specification is scores of pages long.  An advantage to a long specification is that it probably describes multiple "embodiments" of the claimed inventions.  That can become important during licensing negotiations.

On the other hand, I've also seen some very short patents asserted.  For example, CNET reports that a company called Tune Hunter is asserting a patent that is 6 1/2 pages long (including 3 figures, about 3/4 page for 2 claims, the cover bibliographic page, and a short description) against some huge companies:  Samsung, Apple, Motorola, Amazon, Verizon Wireless, LG Electronics, AT&T Mobility, and others.  The patented technology "provides the listener with convenient means to record a segment of the music in which he/she is interested. The recorded music segment is played back into an apparatus which can identify the song based on the play back and provide the user with information on the identified song such as title, singer or artist, composer, producer, etc., and provide related purchasing information. "  (U.S. Patent No. 6,941,275, Abstract.)  Apparently Tune Hunter's iPhone application is quite popular. 

• Email This
• Print
• Comments
• Trackbacks (1)
• Share Link

In a debate that parallels one in the software patents space, some argue that gene patents stifle innovation.  A recent New York Times article reports that a cancer patient is suing the owner of a gene patent, Myriad Genetics, and the USPTO.  She is joined in her suit by other cancer patients and medical professionals, and is represented by the ACLU.  According to the plaintiffs, a gene patent promotes mediocrity rather than progress.  Some argue that software patents similarly stifle innovation. 

The debate is an old one.  The framers of our Constitution gave power to Congress under Article I "[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries" and so Congress enacted the Patent Act.  Many in the past have opined that patents prevent progress because competitors are precluded from practicing the patented claims.  However, that's exactly how patents promote progress.  Companies that cannot be assured of being able to protect their innovations from copycats have much less incentive to innovate and describe their innovations to others openly.  When innovations are openly described, competitors and others can build on the innovations to further advance their fields.

By enabling innovators to protect their innovations "for limited times," the Constitution and our patent laws have created an environment in which innovation is encouraged rather than stifled.
 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

After losing at the Federal Circuit, Bilski filed its appeal with the U.S. Supreme Court.  Last week, the USPTO filed its Opposition to the appeal.  The Opposition quotes the following language from the Federal Circuit decision:

[W]e agree that future developments in technology and the sciences may present difficult challenges to the machine-or-transformation test, just as the widespread use of computers and the advent of the Internet has begun to challenge it in the past decade. *** And we certainly do not rule out the possibility that this court may in the future refine or augment the test or how it is applied. At present, however, and certainly for the present case, we see no need for such a departure.

(Pages 14-15 of the decision.)  However, the Opposition leaves out the following sentence from that passage:  "Thus, we recognize that the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies."

The Opposition makes a good argument on why Bilski is not the appropriate case for determining whether software is patent eligible.

• Email This
• Print
• Comments
• Trackbacks
• Share Link