Gene has asked me to write an executive summary that conveys the essence of my new book, The Software IP Detective’s Handbook: Measurement, Comparison, and Infringement Detection. While I definitely appreciate his request, I hope I’m not completely successful because that would mean that the two years of nights and weekends I spent writing the book, not to mention the years developing the mathematical algorithms and the methodologies described in the book, could have been done in a single evening.
I’ve personally been working as an expert witness in intellectual property disputes, specializing in software cases, for about 15 years. When I began working in this area, I found that most experts used a combination of off-the-shelf computer code analysis programs, home-grown analysis programs, and lots of long hours and late nights poring over lines of code. Some experts used tools available from universities that are called “software plagiarism detection tools” that produced dubious results even when they executed correctly. Expert reports were then written and rebutted. Arguments often got very technical and detailed and could easily confuse a non-technical judge or jury. Different experts often had different definitions of plagiarism or found different signs that they considered markers for copied code. Some parties to a litigation, and some experts they hired I’m sad to say, seemed to purposely cloud the issue to justify illicit or at least questionable behavior. I decided that a standard measure of software copying that could be objectively tested was needed, and so I developed code correlation.
Social media is quickly become THE way to market your business. In the US, more than two thirds of all adults who are active online are also actively using social media today, However, there is still a whopping 57% of businesses who, for one reason or another do not understand the real impact that social media can have on their businesses. Gaining new and retaining old customers, sharing your products and services to a broader audience and giving your customers a voice, are just a few of the many benefits that using social media can bring to your business. There are many myths and misconceptions that keep business owners and marketers from reaping the benefits that social media. If you are one of these businesses, let me “set you free” to explore all that social media has to offer.
Recently Costco Wholesale prevailed, once again, in its ongoing copyright litigation with Omega. After the United States Supreme Court deadlocked on whether the first sale doctrine authorized the reselling of lawfully purchased products abroad by Costco the case returned to the Eastern District of California for further proceedings. On November 9, 2011, Costco again prevailed, again on summary judgment, but this time thanks to the copyright misuse defense. With copyright misuse being successfully used as a defense I thought it would be worthwhile to explore misuse defenses in general, which I believe are an under utilized defense and one of the places courts should be looking to stomp out the abuses that we all know are prevalent in the intellectual property litigation arena. it is worth taking a moment to revisit the basics of patent misuse. With misuse defenses historically being closely associated with Antitrust theory yesterday we published Antitrust Law Basics, promising to follow up and with discussion of patent misuse.
The term “patent misuse” refers to specific types of prohibited behavior engaged in by the owner of the patent rights. Patent misuse is an affirmative defense that recognizes that it is possible for a patent owner to abuse the exclusive right enjoyed as a result of the issuance of a patent. As an affirmative defense, patent misuse cannot be used as a sword, but can only be used by an alleged infringer if and when the patent owner seeks to enforce the exclusive right of the patent in a patent infringement suit.
Earlier this month the United States District Court for the Eastern District of California extended the copyright misuse doctrine to the benefit of Costco, finding that an overzealous manufacturer of watches was attempting to use a copyright on a small logo stamped onto its watches to prohibit the resale of lawfully purchased watches by Costco. See Costco Prevails in First Sale Case Thanks to Copyright Misuse. Misuse defenses, such as copyright misuse and patent misuse, have historically be applied sporadically at best. This may be because misuse has been frequently found only when there is an underlying Antitrust violation. That is, however, not a prerequisite. A misuse defense is really about the unjustified extension of either a copyright or patent beyond the legitimate boundaries of the property right.
With copyright misuse having recently been successful in a rather high profile case I thought it would be worthwhile to revisit patent misuse and misuse concepts generally. To do that in a way that allows the casually interested reader to follow along probably requires first taking a step back away from the intellectual property centric theories to discuss some basic antitrust law concepts. This seems particularly appropriate since many of the misuse cases have a distinct antitrust flavor.
On Monday, December 13, 2010, the United States Supreme Court issued a non-decision in the matter of Costco Wholesale Corporation v. Omega, S.A. The Per Curiam decision simply read: “The judgment is affirmed by an equally divided Court. Justice Kagan took no part in the consideration or decision of this case.” That meant that the 2008 decision of the United States Court of Appeals for the Ninth Circuit remained unchanged. But this was not the last to be heard of this controversial case.
On November 9, 2011, the United States District Court for the Eastern District of California, per Senior Judge Terry J. Hatter, Jr., granted Costco a summary judgment victory due to the fact that Omega engaged in copyright misuse. Yes, the plot thickened. The district court originally granted summary judgment to Costco on the basis of the first sale doctrine, which was overturned by the Ninth Circuit and then affirmed by the Supreme Court in the tie decision, or non-decision of December 2010. That meant that the case would proceed because the first sale doctrine summary judgment victory was erased. But not so fast! Judge Hatter had other ideas!
The unfortunate truth is that many inventors and entrepreneurs have had their share of difficulty with the various invention promotion companies out there. You have probably seen them advertised on television, usually in the extremely late night or extremely early morning hours. They promise free information, and tell you that they will help you patent your idea, make your invention and/or market your product. Many inventors and entrepreneurs have learned the hard way that many of these companies talk big and perform little, but sometimes charge exorbitant fees.
Just the other day I had someone contact me about a design patent and he claimed he had been quoted $12,500. I don’t know the particulars around the quote, maybe there was a lot of product design work associated with the quote, but what I can tell you is that $12,500 for a design patent is outrageous — nearly 5 times what it would likely cost from start to finish. Inventing and pursuing a patent can be expensive, and usually is if you do it properly from start to finish, but inventors need to be particularly careful when there are those in the industry that price gouge. There is no substitute for arming yourself with information and being cautious.
You may have noticed that there is a new addition to IPWatchdog’s extensive arsenal of information available to IP professionals, employees and employers alike. This week IPWatchdog.com has launched its newest brand, the JobOrtunities™ Help Wanted Section; which will feature available career opportunities within the IP world.
In view of the growing need for innovator companies to obtain patent protection in multiple Patent Office around the world simultaneously, leaders of the most heavily used patent regimes continue to seek ways to streamline the process and engage in work sharing. In an effort to continue to move forward in the absence of true global cooperation, the Trilateral Offices at their 29th Trilateral Conference considered proposals to reduce the burden for patent applicants by increasing cooperation on procedures and improving the exchange of procedural information.
Meeting for their Annual Trilateral Conference near Paris, France, the heads of the European Patent Office (EPO), the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) – collectively known as the Trilateral Offices – pushed forward earlier this week with efforts to further harmonize global patent systems. The Trilateral Offices agreed on steps to enhance efficiency in patent-related procedures.