Posts Tagged: "Josh Malone"

The latest episode of the Clause 8 podcast features an interview with Josh Malone – the inventor of Bunch O Balloons and America’s foremost advocate for reliable patent rights. Josh came up with the idea for Bunch O Balloons to help his kids fill up 100 water balloons in less than one minute. It eventually became the most popular toy in America. However, before Bunch O Balloons even came to market, another company copied it and started selling its own versions of the product. Luckily – or so he thought at the time – Josh filed a patent application for his Bunch O Balloons invention. He did not know the enormous amount of time, money, and luck it would take to successfully enforce patents that covered his invention. This episode tells the story of what it took, including taking a trip to Bentonville, AR in the middle of the night to try to convince Walmart to stop selling knock offs of his product.

This year has included many twists and turns for IP stakeholders, particularly on the patent side. Most recently, the Federal Circuit’s decision in Arthrex has called into question the constitutionality of Patent Trial and Appeal Board decisions, and perhaps the Board itself. Elsewhere, Congress has been—unsuccessfully—attempting to step in and clarify U.S. patent law since early in the year, while the courts have continued to muddy the waters of patent eligibility law. The Federal Trade Commission’s case against Qualcomm, and Judge Lucy Koh’s decision in the case, have further called into question the United States’ ability to compete on the innovation front going forward. And yet, there have been some wins in other areas this year, including at the U.S. Patent and Trademark Office (USPTO), and there remain many reasons to be hopeful about the year ahead. IPWatchdog asked some IP experts to share what they have to be thankful for on the IP front this Thanksgiving, despite all the uncertainty. Hopefully, as those of you who celebrate the holiday enjoy your Thanksgiving dinners, these sentiments will inspire you to be thankful too.

Yesterday, the Federal Circuit once again breached a fundamental boundary of our American system of law. This particular transgression has occurred only a handful of times, but each is more ominous than the last. If this is allowed to stand, we can no longer be considered a democratic republic, but will have become a banana republic. What is rapidly becoming routine to the patent litigation industry will create shockwaves throughout the other 12 circuit courts, upend the rule of law, and damage our nation. In Chrimar Systems, Inc. v. Ale USA, Inc. FKA Alcatel-Lucent Enterprise USA, Inc. (Fed. Circ. Case No. 18-2420), the Federal Circuit allowed the Patent Trial and Appeal Board (PTAB) to overrule an Article III court and jury. That is, the Executive Branch of government directly and unequivocally has overruled the Judicial Branch, including a jury.

On October 25, the AIPLA Annual Meeting will host a Patent Trial and Appeal Board (PTAB) Inter Partes Review (IPR) trial to determine the fate of a pair of patents issued by the U.S. Patent and Trademark Office (USPTO) to Zaxcom for a Digital Recording Wireless Microphone. Zaxcom is a U.S. manufacturer of high-end, specialized wireless microphones and recording equipment for the film and television industries. The company was founded in 1986 by Glenn Sanders, the named inventor on the challenged patents. The Zaxcom case caught my attention for several reasons. First, this was not a patent troll asserting a stack of vague, overly broad patents, but was an inventor-owned company that was producing the invention. Second, Glenn was manufacturing his invention and creating jobs in the United States. Third, the technology has won Engineering Emmy Awards and has been honored by the Academy of Motion Picture Arts and Sciences with a Technical Achievement Award. Finally, Chief Administrative Patent Judge Scott Boalick was on the panel. How could the USPTO grant a patent, the claimed invention earn Emmy and Academy awards, and then the USPTO decide the patent was likely to be invalid? Especially when Director Iancu is traveling throughout the country and testifying in Congress that it is a new day at the USPTO and that he has restored balance at the PTAB?

Last week, the Patent Trial and Appeal Board (PTAB) issued 18 institution decisions based on petitions for inter partes review (IPR) proceedings, instituting 10 and denying eight. One of those denials ended a petition from Apple to challenge a touch screen patent owned by Nartron, although the PTAB instituted two other IPRs on the same patent the following Monday, giving rise to questions about whether the U.S. Patent and Trademark Office is effectively dealing with the issue of multiple petitions at the PTAB. Elsewhere, a pair of KOM Software patents asserted in separate district court proceedings against NetApp and Hewlett Packard each had two IPRs instituted against them after the patent infringement defendants teamed up to file petitions.

One of the more dramatic moments in my $20 million dollar patent brawl occurred in the pivotal preliminary injunction hearing at the courthouse in downtown Tyler, Texas. I learned that Walmart was coming to monitor the proceedings. I think they were curious to meet the crazy inventor who dared to sue the largest retailer on the planet. The proposal on the table was that I dismiss the suit with prejudice (i.e., drop the suit and waive all my rights) or else Walmart would never buy another product from my exclusive licensee, Zuru—no balloons, no robotic fish, no dart guns. Distraught, I hid in a side room and didn’t show for the meeting where my lawyers had advised me to capitulate. Curiosity heightened; the Walmart attorney unexpectedly suspended all demands and invited me to sit down and explain my point of view. I pointed to the infringing spiral-faced Battle Balloons and told her they were selling my invention without permission, thereby harming me and my family. The Walmart attorney was flummoxed and suggested that I didn’t understand how the patent system worked and was overreaching. Here I was claiming to have invented this apparatus that looked different than mine. It had a spiral face and mine was flat. This is the problem with our patent system; it is run by people who don’t understand invention. Think about it, we have to use this bizarre legal document not only to describe our discovery but to describe the boundaries of it. For inventors, there are no boundaries—why would we stop applying and extending our discoveries? We do our best to describe it, but in the end, non-inventors write and interpret the laws that determine our rights.

IPWatchdog’s coverage of the November 2017 Bunch O Balloons district court trial left off with an Eastern District of Texas jury awarding $12.3 million in damages to patent owner Tinnus Enterprises and its partner ZURU against major U.S. telemarketing firms Telebrands and its subsidiaries. The jury found that Telebrands had willfully infringed Tinnus’ patents that protected Tinnus’ Bunch O Balloons invention, and that those patents were not invalid. But even with the November 2017 jury award in place, Tinnus still faced the upcoming specter of patent validity trials for which Telebrands had petitioned the Patent Trial and Appeal Board (PTAB) for the patents-in-suit. Additionally, the Eastern District of Texas had not yet ruled on post-trial motions regarding the jury’s verdict.

This week in Other Barks & Bites: a trio of U.S. Senators introduce a bill for countries and municipal governments that want to register trademarks; Williams-Sonoma and Amazon go to court in trademark case over rights to resell merchandise; Apple wins a ruling that ends a seven-year long dispute over the iPad trademark; Prenda Law attorney at the center of a copyright settlement mill scheme could receive a prison term of 12.5 years; the Kardashians avoid an adverse ruling in a trademark case over the Khroma cosmetic line; the World Intellectual Property Organization unveils new AI-powered tools for trademark searches; and Poland’s ruling conservative party indicates freedom of speech concerns over the new EU copyright reforms.

Apple made headlines with its recent decision to close its stores in Frisco and my home town of Plano, Texas. The rumor is that Apple was afraid of the dreaded “patent troll.” However, Apple is not afraid of patent trolls. They are afraid of inventors. Whenever you hear the term patent troll, think of inventors. Inventors like my friend Bob Short, who solved an important technical problem in 1998 with his invention—a protocol that encrypts real-time audio and video transmissions. Apple wanted his technology for their FaceTime app, so they took it. Bob’s company, VirnetX, has spent six years trying to stop them and make them pay. Meanwhile Apple, Google, and other tech titans have spread propaganda and paid lawyers, academics, lobbyists, and politicians to destroy the U.S. patent system.

USPTO Director Andrei Iancu participated in a fireside chat, titled “The Crossroads of Technology and Innovation,” hosted by the Consumer Technology Association (CTA) at its sixth annual Innovation Policy Day on Tuesday, March 12 at SXSW in Austin, Texas. Sitting with Director Iancu was host Michael Hayes, Sr. Manager of Government Affairs for the CTA. The chat was quite short and briefly touched on topics such as celebrating the 10 millionth-issued patent, the preparedness of the patent system for the future, artificial intelligence and patent eligibility, and the availability of patenting for all peoples. Then, in what some may consider to be an unscrupulous move, Hayes introduced the narrative of patent trolls.

There is near unanimity that the Supreme Court’s decisions in Oil States Energy v. Greene’s Energy Group, 138 S.Ct. 1365 (2018) was among the most significant events of the year. Several also point to the Federal Circuit’s decisions in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and Aatrix Software v. Green Shades Software, 882 F.3d 1121 (Fed. Cir. 2018), the impact Director Iancu has had on the USPTO and the patent system, and Congress passing the The Music Modernization Act. Beyond those events, there were others identified by this diverse panel that might have gone unnoticed if we were to focus only on the top-line events of the year.

Since America’s earliest days, a lot of creative and innovative toys have come through the consumer marketplace. Many becoming so iconic they have become household names and synonymous with a moment in time for America’s youth. Some of the most popular of these toys that continue to show up year after year under Christmas trees were patented… It wouldn’t be a traditional Christmas at IPWatchdog unless we spent some time profiling some cool innovations that relate to the holiday season. So today, I return to one of our all time favorite articles. Five years ago we published The Top 10 Most Iconic (and Patented) Toys and last year we published The Most Iconic (and Patented) Games. With Christmas firmly in mind, it is time to revisit and expand these lists. When initially published some truly iconic classic toys and games were inexplicably left missing. So, with the hours winding down before Santa Claus makes his way down chimneys across the world, join us as we look back at some of the most popular toys and games of all time, as well as the patents behind them.

Recently, the Inventor Protection Act, H.R.6557, was introduced to Congress.  It’s a very well intentioned piece of proposed legislation.  However, it may actually do more harm than good to efforts to strengthen patent rights in the aftermath of the AIA. We need to fix what is wrong with the patent system for everyone, not merely carve out exceptions for a few.  Is H.R.6557 a step in the right direction, gaining momentum for stronger patent property rights for everyone, or will it harm the ability to reach that goal?  We think the answer is clear that H.R. 6557 as written doesn’t do what the patent laws were intended to do.

Lisa Jorgenson, executive director of the American Intellectual Property Law Association (AIPLA), asked the agency to better justify the increased surcharge for late maintenance fee payments as well as the increases to IPR and PGR trials. Jorgenson noted that much of the additional work required by SAS Institute would take place after the institution decision and thus it might make more sense to divide the fee increase such that the pre-institution fees bear less of the increase than those charged post-institution. Roland McAndrews of the Intellectual Property Owners Association (IPO) also sought additional justification for the 525 percent increase to the late payment surcharge for maintenance fees, noting that the desire to encourage on-time payments alone didn’t support that increase… Josh Malone, inventor of Bunch O Balloons, noted that the day’s hearing on fee increases was “based on an unrealistic and aspirational value proposition,” namely that the fees paid for obtaining a patent would actually result in the grant of a patent which was backed by the full faith of the U.S. government.”