The recent dispute involving Lindsay Lohan and ETrade (see AP report on YouTube) provides an opportunity for critically examining the right of publicity. The right of publicity is one of the newest intellectual property rights available under U.S. law. It allows a celebrity, such as Ms. Lohan, to control the commercial use of her name and/or likeness. This right is a distinct right that exists in addition to unfair competition and trademark rights.

Existing unfair competition law allows a celebrity to object to use of her name and/or likeness in a commercial context if the use is likely to confuse members of the intended market such that they believed the celebrity was endorsing the product. (See, e.g., 15 U.S.C. sec. 1125(a)). Additionally, a celebrity may be able to assert trademark rights in her name. But a trademark infringement action would also require demonstrating a likelihood of confusion among consumers. The right of publicity provides an additional right which enables a celebrity to object to use of her name and/or likeness even if no confusion exists among consumers.

Earlier this afternoon the United Inventors Association, a 501(c)(3) not-for-profit founded in 1990 and dedicated to providing inventor education and support, wrote to Congress to set the record straight on the UIA stance on patent reform efforts.  UIA Executive Director Patrick Raymond sent a letter to Senator Patrick Leahy (D-VT), who is Chairman of the Senate Judiciary Committee, and an identical letter to Congressman John Conyers (D-MI), who is Chairman of the House Committee on the Judiciary.  The primary purpose of the letter, as stated in the letter itself, was to make clear that the primary mission of the UIA is to provide reliable information to inventors and not to undertake lobbying efforts.  The letter makes clear that the UIA is “not involved in any campaign against this proposed legislation.” The letter goes on to explain that while some “coalitions” and “alliances” are claiming to speak “on behalf of all independent inventors nationwide,” they do not speak for or on behalf of the United Inventors Association or its membership.

By now most are likely aware that patent reform is back, once again, with the current draft legislation available for everyone to read.  It is becoming harder and harder to take patent reform seriously, given that it has started to become a little like a bad horror movie where the villain is killed only to reappear in the next episode, a la Jason from the Friday the 13th movie franchise.  Over the last 5 years or so we have been told that patent reform is a done deal, only to have it called off and proclaimed dead due to lack of compromise.  Is this time different?  At the risk of sounding extremely naive, I think this time is different and it is going to happen.  It looks like most of the contentious issues have been ironed out enough to have generated a bill that can be passed and become law.  However, the continued focus on health care reform by the Obama Administration promises to cripple Congress for at least a few more weeks, likely longer.  By the time Congress is operational again, will there be enough interest to do something, even anything?

Intellectual Property Today has once again come out with its much anticipated list of the top patent law firms. The 2010 list has many of the usual suspects on it, and the complete list of patent law firms is available in PDF for $25. You can also obtain the list by getting a copy of the March 2010 IP Today magazine, which will be provided on a complimentary basis while supplies last for those who subscribe to IP Today.

Even if you are not interested in the entire list, I do recommend visiting the IPToday.com blog where the top 25 patent firms are listed, together with information on the number of patents obtained during by these firms in 2007, 2008 and 2009, along with a percent increase in 2009 over 2008.

At the top of the list was Oblon Spivak, McClelland, Maier & Neustadt, LLP, with 4043 utility patents, 72 design patents, which represents an increase of 6.5% in 2009 over 2008.  When reached for comment Bradley D. Lytle, Partner, and Member of the firm’s Management Committee told me:

We are proud of our record accomplishment of obtaining over 4000 U.S. patents in 2009, the most by any law firm. In a challenging year of economic downturn affecting companies, law firms and the USPTO, we view our success as a product of the dedicated efforts of our staff to work collaboratively and effectively with the USPTO and our clients to promptly identify allowable subject matter of sufficient scope to protect our clients’ innovation.

The Federal Circuit’s recent decision in SEB S.A. v. Montgomery Ward & Co., Inc. (Fed. Cir. Feb. 5, 2010) (“SEB”) addresses a defendant’s liability for inducement as well as for direct infringement. It is significant in that it may expand the scope of infringement liability, particularly for foreign defendants, in multiple respects.  What follows is an Executive Summary of SEB v. Montgomery Ward: Extending the Reach of U.S. Patent Laws to Foreign Defendants—Developments in the Law of Direct Infringement and Inducement. A PDF copy of the full article is available here.

Since 2006, DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc) (“DSU”), has significantly improved defendants’ chances of defeating a charge of inducement. In DSU, the en banc Federal Circuit held that the “specific intent” requirement necessary to establish inducement requires that the plaintiff prove that the defendant either knew or should have known that his acts would induce actual infringement, and that this necessarily required the defendant to have knowledge of the patent at issue. Merely establishing that the defendant intended to induce the acts that happened to constitute infringement is not sufficient.

Over the weekend I was doing some research on stocks that I might be interested in purchasing.  In a previous life I was somewhat active in the stock market, and I am starting to once again get involved in the market.  It might be news to some, but back in 1999 when I acquired IPWatchdog.com the thought was that it would be used by me and a group of friends who together with me formed a think tank to build a business evaluating companies and stocks based on their intellectual property portfolios, of which patents are a primary component.

Obviously, that didn’t go as planned.  Many of those involved in our fledgling think tank went on to bigger and better things with high paying jobs.  Having acquired the domain name personally, after the think tank fell apart I decided to take IPWatchdog.com in a different direction, particularly after the bubble burst.  In any event, I have long wanted to try to at least occasionally get back to what was to be the IPWatchdog.com roots.  With this in mind I figured I would give it a try when I came across something interesting.  I think I have, but of course you will be the judge no doubt.  What I can say is that I have not been paid to write anything positive about this or any other company I may write about in the future, and the analysis is mine alone, relying on information available to the general public.

Many inventors operate under the misunderstanding that getting a patent is like owning Boardwalk and Park Place in the popular board game “Monopoly.” Unfortunately, turning a patent grant into cash is much more complicated than simply placing hotels on Boardwalk and Park Place.  Those who are against patents always seem to argue that a patent is a monopoly, or at least use those terms interchangeably.  Don’t be fooled into thinking that a patent is a monopoly.  Simply obtaining a patent will not result in the arrival of a money truck to your doorstep.

Would you go on the Internet, or look in the phone book, search for a Family Doctor, call them or email them and then ask him or her, “Can you recommend a good Family Doctor to me?”  Here’s another question for you, would you search on the Internet for a Family Doctor in another state, call them and ask them if they can recommend a good doctor to you in your geographical area? Do you honestly think that a doctor, who is, let’s say,  in NY would really know and could recommend a Family Doctor to you in say, Seattle, Washington?  More often than I’d like to admit, we get emails through our contact form only to be asked these exact questions.  I decided to Twitter about this, because I thought it was hilarious, but then it was suggested to me that I write a blog post on this very topic.  Hmmm, why didn’t I think of that?!?

On March 2, 2010, Apple, Inc. (NASDAQ: AAPL) filed two lawsuits against High Tech Computer Corp.(PINK: HTCCF) (aka HTC Corp.), HTC (B.V.I.) Corp, HTC America, Inc. and Exeda, Inc. HTC Corp. is a Taiwanese corporation and the parent company of the other defendants. According to a statement from Apple, HTC is infringing “20 Apple patents related to the iPhone’s user interface, underlying architecture and hardware.” According to Steve Jobs, Apple’s CEO, “[w]e can sit by and watch competitors steal our patented inventions, or we can do something about it. We’ve decided to do something about it. We think competition is healthy, but competitors should create their own original technology, not steal ours.”  The Apple press release and complaints make it clear that this dispute if about the “revolutionary iPhone®.”  Some have started speculating that because of this Jobs comment the matter is personal and perhaps Apple is whining in an unjustified fashion.  Let’s not kid ourselves though.  The big target here is Google NASDAQ: GOOG) and a patent battle of epic proportions may well be unfolding.  Given that Apple has sold over 40 million iPhones worldwide, if they do believe there is infringement they can hardly let Google muscle in on this lucrative technology turf.

TiVo, Inc. (NASDAQ: TIVO), owner of U.S. Patent 6,233,389, titled “Multimedia Time Warping System,” was a big winner today at the United States Court of Appeals for the Federal Circuit when the CAFC handed down its decision in Tivo, Inc. v. EchoStar Corp.  A majority of the 3 judge panel hearing the case agreed with the district court and ratified the contempt order against EchoStar (NASDAQ: SATS) and Dish Network (NASDAQ: DISH).  EchoStar’s business focuses on digital Set-Top Boxes and and Satellite Services, and was spun-off from DISH Network on January 1, 2008. The patented technology involved allows television users to simultaneously record and play television broadcasts using what is commonly known as a digital video recorder. On news of the Federal Circuit ruling TiVo stock immediately surged ahead well over $5, up over 50%. Within less than 1 hour TiVo stock when from trading just over $10 a share, trading at $10.31 at 11:06 am EST, to trading at $16.07 at 11:42 am EST, hitting an intra-day high at 1:18pm EST at $16.36, and establishing a trading range plus or minus $15.65, where it is at as of 2:46pm EST.

Over the last week Scott Adams, the creator of Dilbert, has been out doing himself in a series of laugh out loud funny cartoons. I realize that as a patent attorney my sense of humor is, well… challenged, at least in the view of many who are not in the patent field. That being the case I figured I would share a few of these cartoons with an audience that I figured would be able to appreciate the humor. What is even better is that Dilbert cartoons can be embedded into a blog or website for free, so no copyright infringement was engaged in during the creation or publication of this post.  Which is always nice!

As you can see from the first cartoon in the series, the creator of a project has left the company and his unfinished project is being passed on to the hapless Dilbert.  Scott Adams, through Dilbert, teaches us not only that no one should ever trust Dilbert, but also about the importance of documenting your invention.  I then take this opportunity to also opinion about the impending first to invent changes to US patent laws.   What fun!

February 27, 2010

Below is the current list of events posted on the IPWatchdog Social Network.  Joining is free, and you can add your industry events for free as well.  The plan is to periodically post an upcoming list of events on the IPWatchdog.com blog taken from the current list over on the IPWatchdog Social Network.  So if you have a program at a law school, an inventor group meeting, CLE or expo join the group and let everyone know about your event.

Global Inventors Conference
March 6, 2010 all day – Online & Live at Oahu Veterans Center

Inventors Network of the Capital Area Monthly Meeting
March 15, 2010 from 5:30pm to 10pm – Tysons-Pimmit Regional Library

PLI Patent Bar Review – Chicago, IL
March 17, 2010 to March 21, 2010 – John Marshall Law School

Every so often I do a post from the shameless commerce division, plugging the Practising Law Instituted (PLI), their programs, books or patent bar review.  PLI is a major sponsor of IPWatchdog.com, and I have taught their popular patent bar review course for the last 9 years, so my personal and professional connection with PLI is deep.  Over the past couple weeks I have been getting a number of e-mails from PLI and I wanted to bring attention to them in whatever high profile way I can.  PLI is, in my opinion, a great organization and I am proud to be associated with them.  They have great programs, particularly in the intellectual property, antitrust and securities areas.  Now they are making it as easy as possible for attorneys stressed by the economic downturn to participate and perhaps get some new training to make themselves more marketable, and to keep up with CLE requirements that don’t go away just because the market is bad.

PLI is offering scholarships for unemployed attorneys and they are also hosting Winning Strategies for Managing Your Career 2010 for the special price of $25.  From time to time PLI also gives away ethics credits for free, and pro bono training.  In reality, an announcement of scholarships and $25 programs hardly comes from the shameless commerce division, and for that reason I hope that you will consider helping spread the word.

On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll.  Chief Judge Michel wrote for the court and was joined by Judge Dyk, with Judge Moore providing a strong dissent.  The primary issue in Hyatt v. Dudas was whether the district court properly excluded evidence.  An appeal was taken from the Board of Patent Appeals within the Patent Office to the United States Federal District Court for the District of Columbia pursuant to 35 U.S.C. 145.  Hyatt argued that a plaintiff in a § 145 action is entitled to submit additional evidence subject to no limitations other than those imposed by the Federal Rules of Evidence.  Not surprisingly, the Patent Office disagreed, arguing that § 145 actions are at least partly a form of appeal of PTO decisions and that evidence not submitted to the PTO through negligence must be properly excluded at the district court.

Last week Inc.com published an article titled How to Find a Good Patent Lawyer.  Unfortunately, if you follow this advice you are likely to do exactly the opposite.  If you can believe it, Inc.com suggests that you not ask business associates or others for reliable recommendations, which goes completely against the well established best practices in the industry.  The article also suggests that if you have an Internet business you might want to find a patent attorney who also specializes in First Amendment law, almost as if those types of lawyers readily exist, which they don’t.  The article also suggests that you interview your patent attorney like you would interview your doctor.  This is something I hear all the time.  Can someone please tell me exactly who conducts interviews of doctors prior to scheduling an appointment and paying fees?  I have never met a doctor that would subject themselves to interviews prior to scheduling an appointment, have you?  If you are honest I know the answer, and so do you, but those who claim to know better routinely suggest this as a responsible step.

I recently passed the patent bar, and I’m currently in the limbo phase before I receive my registration number. This is a big shift for me, as I believe the change will open many doors for me and my business, Simple Patents, which just launched the Simple Patent Attorney Services Department.

I had been a little uncertain about getting a background check, however. Though I’ve always kept my nose clean, both personally and professionally, you never really know what folks may have posted or tweeted about you. So I did the only thing that seemed smart: I googled myself.

Earlier this week, on February 23, 2010, Facebook was granted US Patent No. 7,669,123, which covers a patent on a method for dynamically providing a news feed about a user of a social network. The patent application was filed on August 11, 2006, and claims priority from a string of provisional patent applications and nonprovisional patent applications, the earliest being a provisional patent application filed on December 14, 2005.

The Background of the patent explains that social networking websites have systems for tailoring connections between various users, allowing for frequent, automatic notification of changes in the information posted by other users. Apparently as of the time the patent application was filed there were existing mechanisms that allowed a user to display information about other users, including news items, but these news items were disparate and disorganized, thereby requiring users to spend time researching a news topic by searching for, identifying, and reading individual news items that are not presented in a coherent, consolidated manner. Thus, what was needed was an automatically generated display that contains information relevant to a user about another user of a social network. Essentially, it seems the resulting “invention” was a news feed for a social network. While this may have been new to social networking sites in December 2005 through August 2006, automatically updating news feeds were hardly new even then.

One of the top agenda items when David Kappos took over as the new Director of the United States Patent and Trademark Office was to revise the examiner count system, something that everyone in the industry knew needed to be done.  The now old count system was leading to gaming of the system (by some) and providing incentives in the wrong places. On September 30, 2009, the USPTO announced that significant changes to the examiner count system had been collectively agreed to by management and the union. These changes took effect last week and could usher in a new era of incentives that lead to patent examiners having the appropriate incentive to issue patents when there is deemed to be at least some allowable subject matter presented in a patent application. According to Director Kappos, the USPTO is “confident the new count system will encourage quicker resolution of issues and lead to more efficient examination of patent applications.”

Fig. 1 of US Patent No. 5,147,343 (now expired), previously owned by Kimberly-Clark Corp., and which pertains to Goodnites® Sleep Shorts.

The day starts out quiet enough. I wake up and scoop my contacts out of the Clear Care® contact lens solution they’re swimming in. Blinking rapidly to settle my contacts, I focus on some tiny numbers printed on the contact solution box. Patent numbers. I’ve been using the solution for years and wonder how old the patents must be. I do a quick Google search and discover that the patents have expired. Strange that expired patents would be printed on the box…  My 3 year old interrupts my thoughts as she walks up to me still rubbing her eyes, complaining that her Goodnites® Sleep Shorts are soggy. Knowing that absorbent products containing hydrogels with ability to swell against pressure don’t change themselves, I quickly get her some dry pants. Doing so, I check the box and sure enough, more expired patent numbers. Next I head to the kitchen to look at my “to-do” list for the day. As I look over my list, I check my blood sugar with my nifty Accu-Chek® device. On it I find more expired patent numbers. I’ve never noticed patent numbers before, but suddenly the world seems populated with products stamped with the indicia of expired monopoly rights.

David Kappos speaks to Inventors on Video about Patent Reform Legislation

The United States Patent and Trademark Office is sending the message that it believes patent reform is needed and that it is not something that will harm independent inventors, and the messenger is none other than the Director of the USPTO, David Kappos.  Just this week the USPTO launched a bi-monthly e-publication aimed at the independent inventor community – Inventors Eye.  The first issue of Inventors Eye takes on the issue of Patent Reform, with a letter from Director Kappos.  A video tape of Kappos essentially explaining the same thing as said in the letter, perhaps with a little more information, is available on the USPTO Website.  The clear message is that the current patent reform proposals are a net benefit to the independent inventor community.  I personally agree with Director Kappos and think that independent inventors and small businesses should not be afraid of patent reform but view it as an opportunity for enhanced opportunity.  There are some things in the legislation that will immediately benefit inventors and small businesses, and initiatives the Patent Office is working on outside the patent reform legislation that should be beneficial as well.