There is no doubt about it. Even a casual glance at patent litigation statistics shows a sharp increase in the number of patent cases being initiated over the last several years. For example, see the following three charts. The data for which comes from the Office of Administrative of the United States Courts, and dates back to research I initially started in 1997 while working on my Master’s thesis, which dealt with patent litigation and the use of alternative dispute resolution.

Fish & Richardson recently scored a victory in a patent infringement case in favor of the Chicago Board Options Exchange Incorporated (CBOE). The case was initiated by CBOE as a declaratory judgment brought against International Securities Exchange LLC (ISE) in the U.S. District Court for the Northern District of Illinois. The parties have had an ongoing patent battle in the Northern District dating back to at least 2006, when ISE sued CBOE alleging that CBOE infringed its patent on an automated exchange.

Those who watch the Federal Circuit may recall that the battle between these two parties reached the CAFC, which issued a decision in May 2012, which affirmed-in-part, reversed-in-part, vacated-in-part and remanded the case for further consideration. In a nutshell, the Federal Circuit determined that the district court erred in construing “system memory means,” “matching,” and “automated exchange,” and did not abuse its discretion in denying CBOE’s motions for leave to amend its Complaint.

So what is unique about this particular victory at the district court that caught my attention? The timing of the victory and circumstances surrounding the culmination of the case seemed peculiar to me. Moments before opening arguments were set to begin and after the jury had been selected ISE consented to entry of a judgment of non-infringement in favor of CBOE. ISE had been seeking over $400 million in actual damages and was requesting those damages be tripled. But why throw in the towel right before trial on a case that had already once gone up to the Federal Circuit?

The Boeing Company is an American corporation that is heavily involved with the development of innovations in the fields of aerospace and defense technology. In fact, the U.S. Patent & Trademark Office regularly receives applications and issues patents for various aircraft and communication technologies developed by the Chicago-based firm. Notwithstanding, the breadth of the types of innovations that they pursue may surprise you. Boeing is an innovative company that is not afraid to pursue innovation wherever it leads.

Recent patent applications assigned to Boeing show the company’s desire to create more adaptive in-flight management in response to unforeseen conditions. Another patent application describes a new system of solar energy collection that can generate energy from a very wide spectrum of light waves. One patent issued to Boeing also provides an interesting new development in the arena of laser light communication for data transmission. Given Earth Day is only two weeks away, let’s start by exploring the solar collection patent application.

During a recent trip organized by AIPLA’s Special Committee on Intellectual Property Practice in Israel, I had the pleasure of meeting the enthusiastic and tireless Asa Kling, who is the Director of the Israel Patent Office and Commissioner of Patents, Trademarks & Designs.  Since stepping into the role in 2011, he has focused on ensuring that Israel’s patent office matches Israel’s status as one of the world’s foremost technological innovators.

In 2012, the Israel Patent Office examined nearly 7,000 (6,800) new applications and reduced the time to first examination to less than 3 years (32.5 months).  Leading American companies, such as Raytheon, Qualcomm, and Genentech, have signaled their faith in the importance of the Office by filing hundreds of patent applications in Israel within the last year.  Additionally, since June 2012, the Israel Patent Office has become one of only sixteen active offices to operate as an International Searching Authority (ISA)/ International Searching and Preliminary Examination Authority (IPEA) for international Patent Cooperation Treaty (PCT) applications.

After the trip, I had the honor of asking Commissioner Kling a few questions over the phone.  The transcript of our conversation is below, and is edited for length and clarity.

By now you are probably aware that on March 19, 2013, the United States Patent and Trademark Office issued U.S. Patent No. 8,401,009 to Twitter, and more specifically to Jack Dorsey and Christopher Isaac Stone. The Twitter patent is titled: Device Independent Message Distribution Platform. In other words, Twitter was awarded a patent on “Tweeting”!

Now those of you who know me and have read my posts in the past, know that I am not a patent attorney myself (although I am married to one who is rather well known).  Rather, I am a social media strategist — sometimes called The Social Media Diva™ — who uses Twitter and other social media platforms to assist my clients in their online marketing strategies. Quite frequently we will feature posts that analyze the technologies of an issued patent from the IP attorney perspective.  We thought it would be fun for me to analyze this patent from a non-attorney standpoint as it pertains to social media platforms as a whole.

For the patent professionals who are reading you may find it interesting to see the complete file history for the Twitter patent.

Microsoft Corporation was a huge winner at the U.S. Patent & Trademark Office this past week, as the Washington State-based computer software developer received no fewer than 65 patents from the USPTO and had another 49 patent applications published. Many of Microsoft’s more intriguing applications deal with upgrades in responsiveness to user input, including e-mail address book synchronization and a collection manager for content users follow online. Microsoft also received a patent that improves the parsing of handwritten digital text for conversion into textual characters.

Resolving Contacts in Conflict Through Suggestion
U.S. Patent Application No. 20130080521

It’s very easy for a computer user to obtain multiple e-mail addresses from which they can send and receive e-mail. These different accounts are housed in separate servers and come with a variety of features to aid digital communication, like an address book to store contacts. These features don’t sync well between accounts and can cause conflicts in certain cases, such as when an e-mail application tries to communicate with contacts from multiple addresses. If a contact is listed in two different address books, it can cause a communication error if the e-mail application simply copies the contact lists from both addresses, and managing the application by removing duplicated e-mail addresses can be time consuming.

Recently, it has struck me that many business folks who “negotiate tons of IP license agreements,” fail to understand the difference between covenants, representations and warranties that are “standard” in many such agreements. Well, that is not too surprising. What is very surprising, however, is that many of their lawyers also fail to appreciate the differences as well!  Many think the terms are synonymous and thus use them interchangeably. They are not. So, for those of you tired of faking the funk, here is some (either fresh or refresher) “Contracts 101!”

A covenant  is a promise by a party by which it pledges that something is either done, will be done or shall not be done.

Example 1:  “Licensee shall pay Licensor a flat royalty based on 2.5% of Gross Revenues received from the sale of Licensed Products.”

Example 2: “Company A hereby covenants not to sue Company B under any patent listed in Exhibit A for infringement based upon any act by Company B of manufacture, use, sale, offer for sale or import that occurs after the Effective Date.”

On March 28, Apple Inc. appeared in court in Shanghai to defend charges that Siri, its voice-recognition, personal-assistant software, allegedly infringes a Chinese patent. The plaintiff and owner of the patent, Zhizhen Internet Technology Co., claims its version of the software has over 100 million users in China and is requesting the court to ban all manufacturing or sales of Apple’s product in China.

This was not the first time Apple faced patent infringement claims in China.  Last summer a Taiwanese man sued the company in China for alleged infringement relating to its Facetime technology; in 2010 a Shenzhen company threatened to sue concerning iPad design; in 2008 Apple was sued for the iPod; and in 2012, a Hong Kong company launched GooPhone I5, an android-based replica of the iPhone 5, reportedly based on leaked photos of the iPhone.  GooPhone claimed to have patented the design and threatened to sue Apple if it dared to sell the genuine article in China.

Nor is Apple alone.  French company, Schneider Electric lost a $48 million patent infringement verdict in China and Samsung lost one for $7.4 million.  Sony, Phillips, Canon and Dell have all had their battles and GooPhone sells knockoffs of other smartphones in China with apparent impunity.  Of course it’s possible in some cases the Chinese technology may be first and the Chinese patent legitimate.  However, foreign companies face a growing risk that Chinese entities may unscrupulously patent foreign technology in China and demand a toll to do business there.  Not only that, but in coming years companies will increasingly face challenges worldwide from the growing landslide of patents coming out of China.

The emergence of mobile computing as a technology platform has been a game changing development in many ways.  The ability to be connected anywhere and to have real time information at our finger tips has transformed the way we do business and live our lives. As this computing paradigm has gained mass market acceptance we’ve witnessed a series of patent battles among firms vying for their share of this lucrative market.  These so-called  smart phone patent wars have in turn motivated patent system critics to vociferously decry the system as an impediment to innovation, which must be eliminated or radically overhauled. Defenders of the system respond that patent battles are a characteristic of market competition occurring with other breakthrough innovations throughout our history, and that patents address the need to protect innovations to encourage investment in innovation.

Despite all the chatter however, there is something that we have not heard in the discussions about these smart phone patent wars. The debate seems to have focused on patents and the patent system and it has ignored the fact that this current patent battle is really a battle between three competing business models advanced by the three highly competitive mobile OS providers and members of their ecosystems. Apple is pursuing a fully proprietary business model where mobile OS and mobile hardware are proprietary to Apple. This is consistent with Apple’s prior business model in traditional computing which has worked quite well for them. Similarly Microsoft is advancing a business model much like its successful traditional computing business model with a proprietary OS and an “open” hardware platform that allows third party handset makers to provide phones running the Windows mobile OS. Finally, Google is advancing an “all open” model in which it uses Android, an open source mobile OS and an open hardware approach.

The United States Patent and Trademark Office (USPTO) announced earlier today that effective May 3, 2013, it will update the USPTO Rules of Professional Conduct that govern practitioners who practice before the USPTO. These new USPTO ethics rules are based on the American Bar Association’s Model Rules of Professional Conduct, which were published in 1983, substantially revised in 2003 and updated through 2012.

The Federal Register Notice explains that currently there are approximately 41,000 registered patent practitioners, with at least 75% of the roster of patent practitioners being attorneys who are admitted in one or more States. Given that the ABA Model Rules have been adopted by 49 states and the District of Columbia, nearly all of the attorneys registered to practice at the USPTO are already professionally governed by ethics rules modeled from the ABA Model Rules of Professional Conduct. Thus, this change should not be considered to be a substantive change to the rules that apply to patent attorneys.Indeed, the Federal Register Notice explains that this USPTO efforts “benefits and reduces costs for most practitioners by clarifying and streamlining their professional responsibility obligations.” Of course, for those who are patent agents, however, the rules will be different.

In a moment of extreme weakness, I agreed to Gene’s request to doing a primer on Paragraph IV Certifications under the Drug Price Competition and Patent Term Restoration Act, commonly referred to as Hatch-Waxman.  I don’t know if you would call me an expert, but I’ve studied many, many cases involving Paragraph IV Certifications under Hatch-Waxman.  The courts have found Hatch-Waxman to be a hydra-like monster with a labyrinth of sections that are frequently confusing (or worse yet, conflicting).  Paragraph IV Certifications are a particular trouble spot in Hatch-Waxman.  So if you’re up to diving into the “belly of this beast,” let’s examine the characteristics of this most infamous of the Hatch-Waxman monsters.

To understand Paragraph IV Certifications, you must first address what an Abbreviated New Drug Application (ANDA) is.  ANDAs are how generic drug manufactures expedite the approval of their generic drugs.  To use the language of the Federal Circuit, “[g]eneric drug companies are not required to conduct their own independent clinical trials to prove safety and efficacy, but can instead rely on the research of the pioneer pharmaceutical companies.”  See the 2008 Federal Circuit case of Janssen Pharmaceutica, N.V. v. Apotex, Inc.[1] which provides an excellent explanation of what the ANDA and Paragraph IV certification process is all about.  Instead, in the ANDA process, the generic drug company may rely upon this clinical safety and efficacy of the “pioneer pharmaceutical company” if it can “show show bioequivalence of its generic drug to the NDA drug.”  “Bioequivalence” is defined by the FDA as “the absence of a significant difference in the rate and extent to which the active ingredient or active moiety in pharmaceutical equivalents or pharmaceutical alternatives becomes available at the site of drug action when administered at the same molar dose under similar conditions in an appropriately designed study.”[2]  I’ll get to where those “pioneer pharmaceutical companies” and “NDA drugs” enter the ANDA approval process next.

This past week was another very prolific one for Apple, as the California-based electronic device developer received 35 patents and had another 36 applications published by the U.S. Patent & Trademark Office. Many patent applications were concerned with the ways computer users interact with their systems, and we see a number of upgrades to graphical user interfaces coming for device address books and online stores. Of the patents issued to Apple, one protects a webpage retrieval method that can help browsers save a lot of time while searching for information on the Internet.

User Interface for Accessing Presentations
U.S. Patent No. 8407574

One of the many patents received by Apple last Tuesday involves an upgrade to the user interface for web browsing applications. Users of browsers like Internet Explorer are able to go back to previous webpage presentations that they’ve visited, often using the “Back” button. However, using this technique, users can only go back one webpage at a time. Users can view their history to pull up a webpage visited further back without having to load every webpage in between. However, in the case of search engine results or webpages with confusing URLs, identifying the proper page in this way can be difficult.

Apple has invented what they call a “page snapback method” to visit a specific webpage that a browser had loaded earlier without loading the intermediate pages first. A page can be recorded either automatically or manually and restored as is when the system receives an input from the user. The language of the patent document seems to suggest that this system is optimized for search engine result page retrieval, so that a user can return to the search engine listings without having to go backwards one webpage at a time.

Wilson Sonsini Goodrich & Rosati announced last week that it was significantly expanding its patent litigation practice by hiring a team of IP litigators away from Sidley Austin.

This new lateral hiring class is lead by high-profile litigator Edward Poplawski. Poplawski is particularly known within the industry as lead trial counsel for Cornell University in winning a $184.1 million jury award against Hewlett-Packard Company and for obtaining an $81 million damages award plus attorneys’ fees against Medtronic, Inc. on behalf of Etex Corporation.

While Sidley Austin still lists some 119 attorneys who practice in the area of intellectual property litigation, it is worth nothing that this is certainly a big loss for the firm. Lateral hires come and go, and The American Lawyer recently lamented that lateral hire results are frequently lackluster. Still, Poplawski is not just any lateral hire, which requires one to take a moment to ponder what might be going on here and what prompted the move. You see, Poplawski was the head of the Sidley Austin’s West Coast Intellectual Property and Technology Practice and Global Co-Chair of the Firm’s Intellectual Property Litigation Practice. Poplawski was also a member of Sidley Austin’s Executive Committee. See Poplawski PLI faculty profile.

A critical look ahead at the en banc rehearing of Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp. through the exemplary lens of a recent jury verdict in Syntrix Biosystems, Inc. v. Illumina Inc.

Patent litigants have long expected an appeal to follow nearly every jury verdict and that a key question (if not the key question) on appeal will be the district court’s construction of one or more disputed claim terms.  Syntrix’s recent infringement verdict against Illumina[iii] would be seen as no exception if not for what happened the very next day — the Federal Circuit’s decision to rehear en banc the panel’s decision in Lighting Ballast Control LLC v. Philips Electronics N. Am. Corp.[iv] to consider whether to reset the standard of review for claim construction, long recognized as a question of law reviewed de novo on appeal.

First, some background on Syntrix’s suit against Illumina.  Illumina sells BeadArray technology that includes BeadChips used for a broad range of DNA and RNA analysis applications by self-assembling microscopic beads into microwells on a substrate slide.  The beads are covered with specific oligonucleotides that act as a capture sequence in one of Illumina’s assays.  Two days before closing arguments, Illumina asked the district court to find, as a matter of law, that Illumina’s BeadChips could not infringe the Syntrix patent, US Patent No. 6,951,682.   The district declined this request and the case went to the jury.  The jury found that the claims were infringed, not invalid, and applied a 6% reasonable royalty against BeadChip sales of approximately $1.58 billion over the relevant period, awarding Syntrix $96 million in damages.

On February 15, 2013, Tiffany and Company filed a lawsuit against Costco Wholesale Corporation in the U.S. District Court for the Southern District of New York, alleging that Costco was engaging in the sale of counterfeit TIFFANY diamond engagement rings.  The complaint filed by Tiffany alleges counterfeiting, trademark infringement, dilution, unfair competition, injury to business reputation, false and deceptive business practices and false advertising. Tiffany’s is seeking a permanent injunction, damages, treble damages and punitive damages for the alleged infringement and other alleged unlawful acts, but if you read the complaint carefully it seems pretty clear that what they really want is to make a public example out of Costco. They want everyone to know that they are watching and when they find infringers they will act swiftly. Thus, Tiffany has asked for an apology and they want the world to know that they never have and never will sell their rings to discounters or wholesalers. For more information see Tiffany Sues Costco Over Counterfeit Diamond Rings.

This should have been an open and shut case. But then Costco decided to aggressively defend what seems indefensible.

Costco is basing its defense on the belief that the “[t]he word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.” See opening paragraph of the Costco Answer and Counterclaim. In support of this position Costco submitted dictionary definitions, pages from Wedding Planning for Dummies discussing rings, online articles (such as from About.com), online sales pages (such as from Amazon.com) and other materials.