Just this week I had the opportunity to consult with a client that is in the process of creating unique software that is, at least in my opinion, patentable over the prior art. We were chatting over the telephone when he explained that the developer he hired was using certain open source code to supplement the original code being written. Not wanting to scare my client needlessly, but suspecting the worst, I asked him to send me information on what was being taken, in particular the license agreements that govern the allegedly free open source software. In life there are few certainties. Death and taxes are among them; as is the fact that if you are taking open source software for your proprietary project you are likely about to do a deal with the devil that might be extremely difficult, or even impossible, to undo.
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In this edition of News, Notes & Announcements, happy birthday wishes to IPWatchdog.com for celebrating our 11th year online and a heartfelt thank you to all our readers. Additionally, the TiVo patent used to sue Echostar, the litigation at question in the en banc review at the Federal Circuit, survives reexamination at the USPTO. Professor Thomas Field (UNH) publishes the 21st edition of his IP casebook, which is now online in royalty free version; the USPTO is hosting the National Trademark Expo this Friday and Saturday on campus in Alexandria; the USPTO is hosting the 15th Annual Independent Inventors Conference on November 4-5, 2010, and I will be there teaching two sessions of patent claim drafting; US Commerce Secretary Gary Locke visits the USPTO and the AIPLA will host is Annual Meeting next week.
Patenting, like politics and religion, tends to bring out the true believer in some people.
Simply mentioning the word “patent” at a technology gathering, for example, is likely to produce an absolutist harangue from someone about why intellectual property is either the single greatest innovation enhancer in human history, or conversely, the most perverse economic evil ever devised by man. For some people, it’s all black and white when it comes to patents.
Even a seemingly-inarguable fact like the 2008 Berkeley Patent Survey’s finding that most entrepreneurs find patents helpful in attracting financing for their startups can lead some anti-patent activists to suggest that perhaps entrepreneurs aren’t capable of accurately assessing their own experience with patents and are instead simply the victims of a collective delusion.
MADISON — After pulling a campaign commercial earlier this week after the National Football League accused him of copyright infringement by using NFL footage, U.S. Senator Russ Feingold (D-WI) made another ad fumble – infringing on a trademark owned by Americans for Prosperity (AFP). In his campaign commercial, “Hands Off,” Senator Feingold infringes on “Hands Off My Health Care,” an AFP trademark used during the debate over the federal health care legislation.
On Wednesday, October 6, 2010, Motorola, Inc. announced that its subsidiary, Motorola Mobility, Inc., filed a complaint with the U.S. International Trade Commission (ITC) alleging that Apple’s iPhone, iPad, iTouch and certain Mac computers infringe Motorola patents. Motorola Mobility also filed concurrent patent infringement complaints against Apple (NASDAQ: AAPL) in the Northern District of Illinois (see complaint 1:10-cv-06381 and complaint 1:10-cv-06385) and the Southern District of Florida (see complaint 1:10-cv-23580-UU). The complaints filed in the two federal district courts do little other than identify the patents owned by Motorola that are believed to be infringed by Apple, specifically identifying the following Apple products that might be infringed: Apple iPhone, the Apple iPhone 3G, the Apple iPhone 3GS, the Apple iPhone 4, the Apple iPad, the Apple iPad with 3G, each generation of the Apple iPod Touch, the Apple MacBook, the Apple MacBook Pro, the Apple MacBook Air, the Apple iMac, the Apple Mac mini and the Apple Mac Pro. This type of naked patent infringement complaint has become the standard and seems to directly contradict the requirements set forth by the Supreme Court in Bell Atlantic Corp. v. Twombly, which required the recitation of specific facts and prohibited mere speculation.
Yesterday the United States Patent and Trademark Office announced the adoption of new, more comprehensive procedures for measuring the quality of patent examination. The new measurement procedures were crafted by a joint USPTO-Patent Public Advisory Committee (PPAC) Task Force after consultation with the intellectual property community and the public, and according to the Adoption of Quality Metrics document patent blogs were also reviewed for ideas, thus it would seem that the USPTO has left no stone unturned in an effort to find a better way to measure patent examination quality.
Did you know that the Tarzan yell is a registered trademark? So is the Looney Tunes theme song. And Homer Simpson’s “D’oh!” Surprised? You shouldn’t be. People have been trademarking sounds and music for ages. It just hasn’t been very common until now. But, dear readers, applications for sound marks, like so many other issues in intellectual property are on the rise. Last week, Mr. Carl Oppedahl obtained registration for a 16 second Jazz ditty (Trademark Registration Number: 3853036). To which I respond: “So what?” But some folks in the blogosphere are apparently none too pleased with this. This is because they are confusing copyright and trademark. Again. Sigh. OK, let’s go.
Last week I attended the Association of Patent Law Firm’s (APLF) Annual Meeting at the Hyatt Regency hotel in Chicago, IL. The APLF is currently in it’s 13th year of existence and was formed as a result of IP litigation increasingly going to big firms rather than smaller boutique firms. The organization decided to add discussions on Social Media to this year’s annual meeting agenda. Those that follow me on IPWatchdog know that I write on business related topics including Brand Building, How to Build Credibility and Share Your Expertise, Increasing Website Traffic and the Importance of Social Networking for Small Business. Because of my expertise on Social Media, I was invited to speak on the topic as it pertains to the IP Attorney. I opted to speak on using social media to demonstrate expertise and build credibility. Because so many interesting topics were covered, following is a recap of day one of the event. Subsequently, the second half of the event, including my presentation will constitute part 2 of this series.
The Animal toy patent, US Patent No. 6,360,693, is one of my favorite patents to discuss. The first thing to observe here is that on March 26, 2002, the United States Patent Office issued a patent on a what can only be described as a stick. In support of this conclusion, one need only look at the picture. Yes, I know that the drawings do not define the exclusivity provided, and only the claims define the scope of the right provided to the patent owner, but this is not a case where clever claim drafting and placement allowed a crafty patent attorney to get away with claiming something fundamental and overly broad. Rather, this is a case where the picture and everything in the application is directed to a stick and the examiner seems to have missed that fact. But like all patents the pieces and parts of the patent are present and provide a good learning opportunity given the invention is easy to understand. The fact that it is also rather humorous makes it all the more likely the lesson will stick — pun intended!
On Friday, October 1, 2010, Microsoft Corporation brought a patent infringement lawsuit against Motorola in the United States Federal District Court for the Western District of Washington, which is located in Microsoft’s backyard in Seattle, Washington. The complaint filed by Microsoft alleges that the smartphones made by Motorola that include the Android operating system are infringing upon nine Microsoft patents. Simultaneously with filing in the Western District of Washington, Microsoft also filed a companion lawsuit in the International Trade Commission, which will seek an order to prohibit the importation into the United States of infringing smartphones. Damages are not available at the ITC, which is why an ITC complaint filed simultaneously with a federal district court action is becoming the en vogue thing to do these days. The ITC can and does typically wrap up its cases far quicker than most federal district courts, and that proceeding can also significantly influence a federal district court judge given that validity and infringement will already have been litigated.
Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO) David Kappos announced on Friday, October 1, 2010, that effective immediately the USPTO is reorganizing its operational structure to strengthen the agency’s management, communications and policy functions in accordance with the goals set forth in its 2010-2015 Strategic Plan. This plan, which according to the USPTO website is now available in final form, was completed with input from our public advisory committees, stakeholders, the public, and employees. According to the USPTO website, “The plan is designed to strengthen the capacity of the USPTO, improve the quality of patents and trademarks issued and shorten the time it takes to get a patent. The plan as fully implemented will enhance and accelerate the innovation and job growth needed to transform the U.S. economy, foster competitiveness and drive the creation and growth of U.S. businesses”
In part 1 of my interview with Mark Lemley, the William H. Neukom Professor at Stanford Law School and a partner in the San Francisco law firm Durie Tangri LLP, we discussed the brief he filed with the United States Supreme Court urging them to accept the i4i v. Microsoft case for the purpose of addressing the presumption of validity enjoyed by a patent. Lemley and the 35 other professors who signed the brief are urging the Supreme Court to take the case and to tie the presumption enjoyed to the references cited in the case or perhaps those reviewed by the patent examiner during prosecution. We discussed whether the Supreme Court is competent to address such an issue, and what implications such a ruling would have on the value of previously acquired property rights.
In part 2 of the interview, which appears below, we move past the presumption of validity to several other patent matters, including reverse pharma payments and In re Ciproflaxacin (see News & Notes, note 4), the Stanford Patent Prize, patent misuse, patent trolls and the usual fun questions with a heavy emphasis on science fiction.