Research-In-Motion Settles With Motorola
In late February, Motorola filed an ITC Section 337 action against Blackberry maker Research-In-Motion. On Friday, Research-In-Motion announced that it has ended all worldwide patent disputes with Motorola.
Continue Reading...What To Do When Patent Is Potentially Invalid?
Sometimes, one becomes aware of a patent that may be invalid. As an example, there is presently an online uproar about U.S. Patent No. 7,028,023, which is directed to a type of linked list. Linked lists are data structures that computer programmers commonly employ to store information that needs to be accessed sequentially.
Claim 1 of this patent recites:
1. A computerized list that may be traversed in at least two sequences comprising:
- a plurality of items that are contained in said computerized list; and
- a primary pointer and an auxiliary pointer for each of said items of said computerized list such that each of said items has an associated primary pointer and an associated auxiliary pointer, said primary pointer functioning as a primary linked list to direct a computer program to a first following item and defining a first sequence to traverse said computerized list, said auxiliary pointer functioning as an auxiliary linked list to direct said computer program to a second following item and defining a second sequence to traverse said computerized list.
Some people in the online community believe that this patent could be invalid in view of various prior art, including "skip lists." (As a coincidence - one of my assignments during my undergraduate education at the University of Toronto was to implement skip lists -- before an article explaining the data structure first published in 1990 -- as a favor to the author.)
Assuming that these people are correct and the patent is invalid, what should you do?
- If the patent has not been asserted against you, then you may choose to implement the claimed technology assuming that you can invalidate the patent later.
- If the patent is (e.g., later) asserted, you may
- request the U.S. Patent & Trademark Office to reexamine the patent based on the prior art;
- use the prior art to invalidate the patent during trial; or
- notify the patent owner that you have prior art that could invalidate their patent.
Each approach has advantages and disadvantages. As examples, the reexamination may invalidate the claims, but may result in narrower claims that are valid and that you may still infringe; the court may be convinced by the patent owner that the prior art does not invalidate the claims; or by identifying the prior art, you may give the patent owner a head start in claim construction arguments to use during trial.
As is usual, which of the many options you choose will depend on the facts of the case.
Means plus function claims
Citing a Federal Circuit decision in Intellectual Science and Technology v. Sony Electronics earlier this week, Dennis Crouch (Patently-O) first says that there is a "a long line of cases warning against the use of means-plus-function claim language," but then notes that "[t]here is nothing 'wrong' with writing means-plus-function claim language -- especially to accompany a well drafted specification."
I think the second position is probably better than the first. While means+function claims can be narrowly construed during litigation, they can nevertheless be valuable during licensing and assertion.
However, from a patent prosecution perspective, they can be difficult to appeal to the Board of Patent Appeals and Interferences because of the additional requirements the appeals rules impose on such claims. As a result, some patent practitioners prefer to avoid such claims, while others add them to broaden out the claims in applications.
The case demonstrates, however, that asserting a means+function claim requires a clear explanation of infringement on the record.
Triggering Declaratory Judgment Actions
Whenever a patent holder sends a communication to a potential defendant before filing an infringement action, the patent holder risks a declaratory judgment (DJ) action. A common question is what language must be in the communication? Must the communication threaten an infringement lawsuit? The Federal Circuit's decision yesterday in Hewlett-Packard v. Acceleron says no and provides an example of a sequence of communications between the parties.
Continue Reading...Twitterers Tweet Twitter Tangle
Several recent Twitter tweets pointed to a Justia article announcing that Texas company TechRadium has sued Twitter for patent infringement. According to TechRadium's web site, that company is in the business of providing "mass notification and emergency alerting systems to a vast array of governmental, educational, commercial and non-profit entities." According to the complaint Justia published, the relevant patents are U.S. Patent Nos. 7,130,389, 7,496,183, and 7,519,165.
The '389 patent's first claim is:
1. A digital notification and response system, comprising:
- a. an administrator interface for preparing and transmitting a message from an administrator to at least one user contact device;
- b. a dynamic information database for storing the message, wherein the dynamic information database comprises;
- i. user contact data comprising:
- 1. user contact device information; and
- 2. user selected priority information that indicates a contact order for the user contact device;
- ii. user selected grouping information comprising:
- 1. at least one group associated with each user contact device; and
- 2. a priority order for contacting each user contact device within the group;
- iii. response data comprising:
- 1. user response information that indicates individual user contact devices have received the message; and
- 2. response information that indicates when insufficient user contact device information exists to contact the user contact devices;
- wherein the administrator initiates distribution of the message using the grouping information, priority information, and the priority order, and wherein the message is transmitted through at least two industry standard gateways simultaneously, wherein the two industry standard gateways are selected from the group consisting of: a SMTP gateway a SIP, an H.323, an ISDN gateway, a PSTN gateway, a softswitch, and combinations thereof, wherein the message is received by the at least one user contact device, and the at least one user contact device transmits a response through the industry standard gateways to the dynamic information database.
The '183 patent's first claim is:
1. A method to provide a digital notification and response to groups of users having at least one contact device comprising:
- storing in a dynamic information database:
- user contact data for at least one group of users, wherein each user in the at least one group of users has at least one user contact device;
- user selected priority information that comprises a contact order for each user contact device; and
- user selected grouping information comprising at least one group associated with each user contact device;
- using an administrator interface to form at least one message;
- using an administrator in communication with at least one processor to initiate transmission of the at least one message simultaneously to a first group of user contact devices for all users in the at least one group of users and then simultaneously to a second group of user contact devices for all users in the at least one group of users using the user selected priority information and transmitting the at least one message through at least two industry standard gateways simultaneously; and
- using the administrator interface to ensure each user in the at least one group of users is contacted on the first group of user contact devices before the second group of user contact devices using the user selected priority information.
The '165 patent's first claim is:
1. A method to provide a digital notification and response to groups of users having at least one contact device comprising:
storing in a dynamic information database: user contact data for at least one group of users, wherein each user in the at least one group has at least one user contact device information; user selected priority information that comprises a contact order for each user contact device; anduser selected grouping information comprising at least one group associated with each user contact device;
using an administrator interface to form at least one message;
using an administrator in communication with a processor to initiate transmission of the at least one message simultaneously to a first group of user contact devices for all users in the at least one group of users and then simultaneously to a second group of user contact devices for all users in the at least one group of users using the user selected priority information and transmitting the at least one message through at least two industry standard gateways simultaneously;
using the administrator interface to ensure each user in the at least one group of users is contacted on the first group of user contact devices before the second group of user contact devices using the user selected priority information; and
receiving responses from the user contact devices through the at least two industry standard gateways simultaneously by the administrator interface and storing the responses in the dynamic information database, wherein the responses indicate the user contact devices that have received the at least one message and the responses indicate when insufficient user contact device information exists to contact the user contact devices.
What To Do With A Patent?
Some patent owners struggle in their decision of what to do with their patent. If the patent owner is not already a company that practices the invention, the patent owner may be able to generate value by licensing the patent for future use, asserting the patent to retrieve damages for past use, or creating a company or product based on the patent.
SawStop took the last approach. According to its web site, the company owns dozens of patents on its innovative technology for stopping table saw blades upon contact with flesh. It has patents in the U.S., China, and India.
I have to admire an inventor who puts his own wellbeing at risk to demonstrate his invention. See this YouTube video of a Discovery Channel segment on his invention:
http://www.youtube.com/watch?v=E3mzhvMgrLE&feature=player_embedded
What Is A Patent Worth?
Entities sometimes need to determine what a patent or a portfolio of patents is worth. Valuation of a portfolio may be useful when, among other things, an entity desires to:
- determine whether to pursue a patent application;
- evaluate a company's value (e.g., for merger, acquisition, or stock price); or
- estimate damages.
The value of a patent can depend on a multitude of factors including but not limited to:
- breadth of a patent claim;
- scope of the patent claim given up during prosecution;
- validity of the patent given changes in patent laws;
- price customers would be willing to pay for a product embodying the claimed invention;
- license fees paid for similarly important components; and
- costs to substitute the claimed technology with an alternative.
Often, the value of a patent is not publicly known because parties often settle matters out of court. Other times, the value of a patent becomes abundantly clear after a blockbuster court case. For example, a jury yesterday awarded nearly $1.7 billion to Johnson & Johnson, whose patent the jury determined was infringed by Abbott Laboratories' drug, Humira. Abbott Labs plans to appeal the verdict.
Valuing a patent can thus require the skills of someone who understands both legal as well as business issues, or at least an interdisciplinary approach.
Smugmug takes a slug at patents
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.
Small Can Be Big in Patent Law
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.
