Posts Tagged: "patents"

One Inventor’s Story and Hopes for Kathi Vidal

On Wednesday, May 25, United States Patent and Trademark Office (USPTO) Director Kathi Vidal and a panel of academics from Silicon Valley participated in a 90-minute, live Q&A webinar regarding the state of the USPTO. I attended virtually. I am a five-time world jump rope champion and the only jump roper to design and patent a jump rope handle technology. I was granted my two patents (US 7,789,809 B2 and US 8,136.208 B2) in 2010/2012. I started my jump rope manufacturing business, JumpNrope, in 2010 here in Louisville, Colorado. I am proud to also say that I source all my jump rope parts and pieces from U.S. vendors. We make all our jump ropes by hand in Colorado. My technology not only changed the sport of jump rope by offering a precision speed jump rope handle, but it also changed the fitness industry. To date, hundreds of companies have infringed on my patent, including Rogue Fitness, the largest fitness distributor for CrossFit and Strongman. As detailed in my case, I believe that Rogue has willfully infringed on my patent since 2012 by selling tens of millions of dollars’ worth of infringing jump ropes per year.

Protecting Intellectual Property in Augmented Reality

Augmented Reality (“AR”), along with Virtual Reality (“VR”), is rapidly growing in prominence and will be transformative to the way we live, work, learn and play. Both AR and VR will undoubtedly bring a whole set of novel IP issues for individuals, companies, IP practitioners and the courts. Like any new technological area, such as cyber law for the nascent internet technology in the early 1990s, many legal issues need to be addressed and many more are yet to be discovered as this area evolves.  

SEP Licensing is Not a Promise, It’s a Two-Way Street

“For 200 years, the world was getting along just fine without a policy statement on SEPs [standard essential patents],” said Andrei Iancu earlier this week at Patent Litigation Masters™ 2022, discussing Biden Administration attempts to revisit the 2019 SEP policy agreement among the U.S. Patent and Trademark Office (USPTO), National Institute of Standards and Technology (NIST) and Department of Justice (DOJ). “Standard essential patents are patents too… the regular rule of law should apply.” Iancu, former USPTO Director, and current partner at Irell & Manella, went on to say that the real goal of those constantly chipping away at patent rights is simple: “Weaken patents so that the big entities can have freer reign to get bigger, to infringe patents in a less encumbered way.”

More Mandamus Maneuvering at the CAFC in Latest Venue Transfer Win for Apple

The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Apple’s petition for a writ of mandamus asking the court to direct the U.S. District Court for the Western District of Texas to transfer a case brought by BillJCo, LLC to the Northern District of California. BillJCo owns six patents directed to beacon technology, with Bill Johnson and his son Jason Johnson, who lives in Waco, Texas, named as inventors or co-inventors. The suit was brought against Apple for infringement based on its iBeacon protocol. Apple argued that it “researched, designed, and developed the accused technology from its headquarters within the [Northern District of California]; that evidence and witnesses would likely be in Northern California; and that neither BillJCo nor this litigation had any meaningful connection to Western Texas.”

Federal Circuit Continues Transfer Trend, Orders Gilstrap to Send Google and Samsung Cases to Northern California

On May 23, the U.S. Court of Appeals for the Federal Circuit issued an order in In re: Google, LLC granting petitions by Google, Waze and Samsung seeking writs of mandamus to direct the Eastern District of Texas to transfer a trio of patent infringement suits brought by patent owner AGIS Software Development to the Northern District of California. Although the Federal Circuit’s order is non-precedential, it continues the appellate court’s recent penchant for exercising mandamus relief in venue issues that some commentators have found questionable, at best.

Tips From a Former Examiner: Pre-Appeal Brief Review

After two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.

Federal Circuit Rules Against Microsoft Claim Construction Arguments, Reverses Denial of Prejudgment Interest for Inventor

On May 20, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Kaufman v. Microsoft Corp. affirming a jury verdict of $7 million in reasonable royalty damages against Microsoft’s Dynamic Data for generating web applications. The Federal Circuit denied various claim construction arguments advanced by Microsoft on appeal, including several raised on the proper meaning of “automatically generating” within the preamble to asserted claim 1, and reversed the Southern District of New York’s denial of prejudgment interest to Kaufman.

Day One of Patent Litigation Masters: We Must Become Ambassadors for the U.S. Patent System Again

Speakers on day one of IPWatchdog’s Patent Litigation Masters program acknowledged that it’s easy for patent owners to become frustrated and disconsolate about how far the pendulum has swung away from encouraging effective patent protection but urged attendees to continue speaking up. As program sponsor and co-chair David Henry of Gray Reed put it, “I think we all have to become ambassadors for the patent system.” Henry spoke Monday on a panel about the U.S. Court of Appeals for the Federal Circuit’s recent habit of granting petitions for writ of mandamus to order Judge Alan Albright of the U.S. District Court for the Western District of Texas to transfer cases out of his court, largely to the U.S. District Court for the Northern District of California. Panelists speculated about the motivation for this focus on both the Eastern and Western Districts of Texas, with several agreeing that at least part of the trend is rooted in anti-patent sentiment. “Every time there’s a favorable forum for patentees, it gets harder to get into,” Wendy Verlander of Verlander LLP said.

CAFC Gives Google Second Shot at PTAB in Challenge of Communications Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today vacated and remanded three decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that had found Google failed to prove the relevant claims of IPA Technologies, Inc.’s patents to be unpatentable. The CAFC found that the PTAB “failed to resolve fundamental testimonial conflicts in concluding that the relied-upon reference was not prior art.” The patents in question are U.S. Patent Nos. 6,851,115 (“the ’115 patent”) and 7,069,560 (“the ’560 patent”). They cover “a software-based architecture . . . for supporting cooperative task completion by flexible, dynamic configurations of autonomous electronic agents.” Specifically, the patents disclose that “[c]ommunications and cooperation between agents are brokered by one or more facilitators” and that “[t]he facilitators employ strategic reasoning for generating a goal satisfaction plan to fulfill arbitrarily complex goals by users and service requesting agents.” The patents list David L. Martin and Adam J. Cheyer as inventors.

Patent Filings Roundup: Petitions on Key Dupe Patents Denied Under Fintiv; Taxidermy Patent Filings Stuffed

It was a slow week at the Patent Trial and Appeal Board (PTAB) and a fast one in the district court, with 82 new patent complaints and 85 terminations, but just 18 patent filings at the PTAB. Those few filings were mostly a battery company challenging Maxell patents, a few bigger NPE cases, and Apple and Samsung filing against assertor Smart Mobile Technologies from the middle of last year. Askeladden had a petition denied on the merits, Microchip Technology had a petition denied on General Plastics, and The Hillman Group got four inter partes reviews (IPRs) denied under Fintiv, guaranteeing they will head to trial in the Eastern District of Texas; more below.

Tips from a Former Examiner on How to Conduct Interviews at the USPTO

The “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner. Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?

Catapulting BlackBerry: A Data-Intensive Look – Part I, Quantity

At the end of January, BlackBerry announced it had completed the sale of the majority of its patents to Catapult IP Innovations, a special purpose vehicle specifically formed for the acquisition. Approvals for the transaction were granted under the 1985 Investment Canada Act and the 1976 Hart-Scott-Rodino Antitrust Improvements Act. More information on the transaction can be found here on the SEC website. The value of the deal was reported to be $600 million, a figure that makes it one of the largest patent acquisitions in the last ten years and spurs a great deal of speculation about whether it is worth it. This article explores Blackberry’s divested portfolio and disassembles some of the assumptions surrounding the portfolio and the deal’s value.

Hyatt Returns to SCOTUS with Request to Clarify Standard for Summary Judgment, APA Scope of Review Provisions

Gilbert Hyatt, an inventor who has been granted more than 70 patents and has filed more than 400 applications with the U.S. Patent and Trademark Office (USPTO), has petitioned the U.S. Supreme Court asking the Justices to weigh in on his challenge of a policy he alleges the USPTO implemented in the 1990s to categorically deny him issuance of any additional patents. Hyatt has been embroiled in litigation with the USPTO for decades and won a previous Supreme Court appeal in 2012.  

LG’s Recent Infringement Fight Against TCL Could Take Some Tips from DivX’s Approach

On April 21, 2022, LG Electronics Inc. filed suit against Chinese television manufacturer, TCL, through several of its affiliates and related entities, in the Eastern District of Texas for patent infringement. See LG Electronics, Inc. v. TCL Electronics Holding Ltd. et al, Case: 2:22-cv-00122 (EDTX). The patents relate to display hardware, wireless transmission technology, and user interface controls. Several of TCL’s 4-Series, 5-Series, and 6-Series TVs are accused of infringement. The patents asserted by LG are U.S. Patent Nos. 7,982,803, 9,080,740, 9,788,346, 10,334,311 and 10,499,431. LG requests a jury trial, seeks a permanent injunction, and a finding that the infringement is willful (for enhancement purposes) and exceptional (for the awarding of attorneys’ fees).

Opinion: Growing Misuse of Patent Protections Threatens U.S. Competitiveness and Security

The chaotic state of the world today makes it increasingly difficult for American companies to compete. Russian hostility has the democratic world on edge, U.S. inflation is at a 40-year high and hitting consumers hard, and China continues its aggressive push for economic and technological dominance.  To stay on top, the United States must out-innovate our competitors. America needs to lead the world in cutting-edge products and new technologies, and those are made possible by policies that support the innovation economy. The Ukraine crisis makes it clear that energy and cyber policy is crucial. Recently, the U.S. Trade Representative told Congress that supporting and protecting the full range of our innovators from China’s distortive practices is critical to our nation’s future.