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Posts Tagged ‘patent’

Baseless Fishing Lure Claims Merit Fee Award

October 19th, 2015 Alexander No comments

Fishing gear maker Normark said it deserves attorneys’ fees in patent litigation brought by rival Pure Fishing, telling a Federal Circuit panel Pure Fishing knew it had baseless claims before filing infringement suits over fishing lines and lures.

Pure Fishing originally brought the case against Normark, a subsidiary of Rapala Inc., in 2010, alleging violations of two patents.

Now, the two sides are fighting over attorneys’ fees in the wake of the U.S. Supreme Court’s Octane Fitness decision after a district court invalidated one of Pure Fishing’s patents and Pure Fishing dropped the claims on the other. Normark was awarded fees on the dropped claims, but not on those for the invalidated fishing line patent.

Normark attorney of Dorsey & Whitney LLP argued that Pure Fishing should have to pay for attorneys’ fees on claims for both patents. “They knew from the beginning they had no claim for validity,” he stated.

Normark argued that Pure knew its claims on both patents were unreasonable and that U.S. District Judge Cameron McGowan Currie abused her discretion in denying the motion for attorneys’ fees on the fishing line patent.

According to Pure, Judge Currie had on initial review found that Pure Fishing had a reasonable basis for bringing the case, but that basis only became unreasonable after a 2011 Markman hearing introduced the word “average” to describe the composition of polymers in the lures and made it impossible for the Normark products to infringe. “The first time through, the court said that was a reasonable argument. The second time through, not so much,” Pure said.

After that hearing, Pure Fishing decided to voluntarily dismiss the case, a move that was later used against it in fee litigation.

“And yet, because Pure Fishing did the right thing, the voluntary dismissal, the court ruled that Normark was entitled to fees,” Pure said.

For more information, see Law360.

Categories: Intellectual Property


Record $1.5B Marvell Verdict Slashed To $278M

August 9th, 2015 Alexander No comments

The Federal Circuit reduced the record $1.54 billion judgment that Carnegie Mellon University won against Marvell Technology Group Ltd. in a disk drive patent suit. Damages of $278 million were left intact and a new trial was ordered to recalculate the remaining amount.

Carnegie Mellon filed the suit in 2009, alleging that its patents on a way to reduce “noise” when reading information on hard disks were infringed by Marvell’s semiconductor chips.

The original award against Marvell was the largest existing judgment in the history of patent law, which hinged on sales of Marvel products outside of the U.S. The Federal Circuit affirmed that Marvell infringed and that the university’s patents are valid, but held that some of the award may improperly reach beyond U.S. borders.

The university is entitled to damages for Marvell chips that were imported into the U.S. for use in the U.S., the court ruled. However, the university is only entitled to damages on Marvell chips made and delivered abroad but never imported into the U.S. if they were sold in the U.S., the court said, and that presents a unique challenge.

The question of whether Marvell’s sales occurred in the U.S. should be part of the damages award is a difficult one, the court held. It noted that patent law covers making or using or selling an infringing product in the U.S., or importing products into the U.S., even if one or more of those activities also occur abroad.

When a physical product is employed to measure damages for the infringing use of patented method, the court concluded, “territoriality is satisfied when and only when any one of those domestic actions for that unit (e.g., sale) is proved to be present, even if others of the listed activities for that unit (e.g., making, using) take place abroad.”

“Identifying those standards, along with relevant factual development, is better undertaken in the remand we order, in part because further factual development may narrow the legal issues actually requiring decision,” the court concluded.

For more information, see Law360.



3,700-Page Expert Report In Patent Suit Not Too Long

June 4th, 2015 Alexander No comments

In August 2012, Blue Spike accused Audible Magic of infringing four patents covering digital fingerprinting techniques. Audible Magic and others allegedly infringed the patents by making and selling products that incorporate Blue Spike’s patented technology of “signal fingerprinting,” which encompasses techniques to help copyright owners more easily identify pirated songs, movies, TV shows and other forms of digital media.

Recently, a Texas federal judge said she would allow a nearly 3,700-page expert report filed by an anti-piracy technology company, saying the report’s length merely reflects the complex nature of the issues in the case. U.S. Magistrate Judge Caroline Craven denied an April motion by Blue Spike to strike the 3,676-page report for being too long to read and digest.

“Here, although [the] report is lengthy, the size of the report alone does not make it improper warranting the court to strike it,” Judge Craven said. “There are many complex issues involved, and the facts of this case require a detailed invalidity analysis.”

The expert report at issue supported Audible Magic’s contention that 32 claims across the four patents at issue in the case are invalid under a number of legal theories.

In its filings to strike the report, Blue Spike said it “careens into the realm of the absurd,” arguing that it is too long to provide Blue Spike with reasonable notice of the criticisms against its case, increases rather than reduces costs, and obfuscates rather than narrows the issues in the case.

To highlight the report’s purportedly excessive length, Blue Spike said it would take an average person reading two pages per minute three weeks to make it to the final page and that a printed copy on lightweight paper would weigh nearly 145 pounds.

“Reading [the] 3,676-page report is equivalent to reading ‘War and Peace’ two and a half times over — but with little of the literary majesty of Tolstoy’s masterpiece,” Blue Spike said.

But in a subsequent opposition, Audible Magic called Blue Spike’s anecdotes about the report’s size “irrelevant, misleading and inaccurate,” while saying the report’s length was necessary in order to lay out the facts necessary to prove invalidity by clear and convincing evidence.

Judge Caroline Craven also pointed out that Blue Spike didn’t state in its motion that it couldn’t understand the report, that the report was convoluted or lacking in substance, or that it was premised on technical or legal inaccuracies.

“Rather, plaintiff’s only complaint is the report is objectively too long,” the judge said. “As explained by Audible Magic, it is required to present evidence of the invalidity of all 32 claims asserted against its customers as that issue will be included in the trials against the supplier defendants.”

For more information, see Law360.



Attorneys In ‘Frivolous’ Filing To Pay Sanctions

May 11th, 2015 Alexander No comments

A Texas federal judge has ordered three attorneys involved in a patent infringement case deemed to be frivolous to pay a total of $451,382 to Complus Data Innovations Co., Casio America Inc. for what the attorneys collected from a settlement, plus an additional 50 percent.

The company that filed the frivolous claims, Raylon LLC, was declared insolvent, so U.S. District Judge Leonard Davis ruled the remaining issue was the sanctions to be imposed on three lawyers who represented the company in the suits against Complus, Casio, EZ Tag Corp. and other related companies. The patent in question related to hand-held computers with a display screen “pivotally mounted” on its housing that read magnetic tape on an identification card, display and transmit information, and print tickets.

Judge Davis ordered D. Scott Hemingway to pay $352,486, Corby Bell to pay $70,066 and Carl Roth to pay $28,830.

The lawyers had argued that the “devastating negative impact on the professional careers” of everyone involved in representing Raylon should be sufficient punishment.

“A nonmonetary sanction would only show others similarly situated that they can file frivolous cases, from which they may ultimately profit by exacting cost-of-defense settlements, with the only consequence being harsh words from a court,” Judge Davis wrote.

Initially, in 2011 Judge Davis denied imposing sanctions because “while Raylon’s claim construction arguments and infringement theory do stretch the bounds of reasonableness … they do not cross that line.” However, the federal circuit remanded the case back to Judge Davis, which led to a reversal.

“If the worst result that one could expect when filing a frivolous lawsuit is that one might not profit from the venture, then one is not deterred from attempting the pursuit,” Judge Davis wrote. “A disgorgement sanction alone has no greater deterrent effect than the risk that any plaintiff’s attorney takes when embarking on a nonfrivolous case under a pure contingency fee arrangement.”

For more information, see Law360.



Biosig Heart Monitor Patent Not Indefinite

May 2nd, 2015 Alexander No comments

The Federal Circuit recently ruled that a Biosig Instruments Inc. heart rate monitor patent asserted against Nautilus Inc. is not indefinite.

The long-running case began in 2004, when Biosig sued Nautilus over the patent, which covers a device that can give a reading on a person’s heart rate while on a stationary bike, treadmill or other cardio machine.

The justices held the Federal Circuit’s old test that a patent is only invalid if it is “insolubly ambiguous” did not ensure that patents are definite and instead held a patent is indefinite if it fails to inform a person skilled in the art about the scope of the invention “with reasonable certainty.”

The case hinged on the meaning of the phrase “spaced relationship” between two electrodes in Biosig’s patent. The circuit court ruled that the phrase passed under the new test.

“The term ‘spaced relationship’ does not run afoul of the innovation-discouraging ‘zone of uncertainty’ against which [the Supreme Court] has warned, and to the contrary, informs a skilled artisan with reasonable certainty of the scope of the claim,” the court said.

Mark Harris of Proskauer Rose LLP, an attorney for Biosig, said the company was very pleased with the decision. “The Federal Circuit confirmed what we argued, which is that the patent is valid and definite and there is no problem with lack of clarity,” he said.

In addition, Harris said the justices recognized that the phrase “insolubly ambiguous” could be confusing to lower courts and the patent bar.

The Federal Circuit had always used “insolubly ambiguous” as a kind of shorthand for the type of analysis the Supreme Court called for to determine whether a person skilled in the art would understand the claims, Harris said. “This decision today confirms that all they were doing is getting rid of a confusing phrase and didn’t radically change course.”

John Vandenberg of Klarquist Sparkman LLP, an attorney for Nautilus, said that the company was evaluating the decision, but noted that there has only been a decision on indefiniteness, not on infringement or any other invalidity theory.

He said it was “unfortunate” that the Federal Circuit based its decision that the patent was reasonably clear in part on evidence presented during a re-examination of the patent 13 years after it was issued. The Supreme Court ruling made clear that the correct analysis is whether the patent would be clear to a skilled artisan at the time it was issued, he said.

After several re-examination proceedings the case resumed in 2010, and the district court judge granted summary judgment to Nautilus in 2012 that the patent was indefinite because it was not clear what was meant by a “spaced relationship” between the electrodes. The Federal Circuit reversed in 2013, holding that the patent was not insolubly ambiguous.

That led Nautilus to appeal to the Supreme Court, which held that the insolubly ambiguous test was unclear and “can leave courts and the patent bar at sea without a reliable compass.”

The Federal Circuit said that as a result of the high court’s ruling “we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity,’” but still concluded that Biosig’s patent was reasonably clear.

For more information, see Law360.

Categories: Uncategorized


Google Says Alice Kills Priceline Founder’s Photo Tag Patent

April 10th, 2015 Alexander No comments

Google Inc. recently invoked the Supreme Court’s Alice decision in its bid to throw out a suit brought by the founder of Priceline.com over a patent for photo tagging technology, saying the patent does nothing more than identify a person in a photograph.

Google asserts that Inventor Holdings LLC is trying to claim an abstract idea that doesn’t disclose any new technology. Instead, the patent merely attempts to monopolize the high-level steps for taking two images, comparing them, determining the name of the person in the photo and asking the user if that name is correct.

“This method has been applied by any person who has ever put together a scrapbook,” Google said. “The patent does not claim or even disclose any new technology or algorithm for recognizing or comparing faces.”

Google argued in that the U.S. Supreme Court’s June 2014 ruling in Alice v. CLS Bank International should translate into a win for the tech giant.

The claims in the patent add “no inventive concept” to the abstract idea of identifying and labeling photographs based on the name of the person in the photo and should therefore be invalidated, Google argued.

Inventor Holdings, which owns the patents developed by inventor Jay Walker’s Walker Digital LLC, accused Google in a February 2014 lawsuit of infringing its patent, which covers technology that suggests and stores metadata of photos online.

Walker Digital assigned its patents to Inventor Holdings as part of a corporate restructuring in September 2013. In the restructuring, Inventor Holdings became a wholly owned subsidiary of Patent Properties Inc., a public company controlled by Walker and Walker Digital.

For more information, see Law360.

Categories: Intellectual Property


Apple Gets Partial Fed. Circ. Win In Sony-Nokia Patent Case

March 19th, 2015 Alexander No comments

The Federal Circuit recently cleared Apple Inc. of infringing three smartphone patents held by a company formed by Sony Corp. of America and Nokia Corp., but sent the case back to the district court for further proceedings on another patent.

In a complex, mixed ruling, the appeals court sided with Apple on some issues, while agreeing on other issues with plaintiff MobileMedia Ideas LLC, a patent licensing firm formed by Sony, Nokia and MPEG LA LLC.

MobileMedia accused Apple’s iPhone of infringing four patents related to camera phone and phone call technology. The Federal Circuit reversed both of the district court’s findings that Apple infringed and affirmed that the third patent was invalid. However, it agreed with MobileMedia that the district court’s noninfringement finding on the fourth patent was based on an incorrect claim construction and vacated that ruling.

The Federal Circuit said that the district court wrongly found infringement of two patents. The two patents are U.S. Patent Numbers 6,427,078, which covers a notebook computer that includes a camera unit, and 6,070,068, which covers the display of call handling options like “hold” and “disconnect” on a mobile phone display.

With regard to the ’078 camera phone patent, the appeals court said that because the iPhone’s camera module has no internal memory for storing data, it does not infringe the patent, which describes a “means for processing and for storing” information.

“Although MobileMedia contends that the ‘main memory of the iPhone’ is the camera unit’s means for storing, this ‘main memory’ is not located within the iPhone camera module, which is what [the patent] requires,” the Federal Circuit wrote. “Therefore, we reverse the district court’s judgment that Apple infringes.”

With regard to the ’068 call handling patent, the appeals court held that it was invalid as obvious and reversed the finding that Apple infringed.

The two patents that the district court found Apple did not infringe are U.S. Patent Numbers 6,253,075, which covers a way of rejecting an incoming call when the user is already on a call, and RE 39,231, which covers a way of permitting a user to stop a ringtone for an incoming call without notifying the caller.

The Federal Circuit held that the lower court correctly found that the ’075 call rejection patent was obvious. However, it found that the judge misconstrued the claims of the ’231 ringtone patent.

For more information, see Law360.



Smartflash Hits Apple With Patent Infringement Suit Again

March 2nd, 2015 Alexander No comments

Smartflash LLC filed suit, once again alleging infringement of three patents that recently won them a $533M victory against Apple Inc., this time on newer products, and adding four additional patents related to the Apple Store Kit.

The company claims that Apple is indirectly infringing by inducing infringement by product assemblers, resellers, app developers and publishers, digital content publishers and end-user customers.

Smartflash says Apple induces the alleged infringement with the iPhone 6, iPhone 6+, iPad mini 3 and iPad Air 2 — which can access the iTunes Store or any version of the App Store app — its internal servers involved in operating the iTunes Store, its App Store, and other servers involved in the payment function of the iTunes Store, App Store or content via iCloud, as well as servers involved in Apple’s iAd Network.

“This lawsuit is intended to make sure that those products are adequately accounted for,” Cassady, an attorney for Smartflash, said.

“Apple has known these components to be especially made or especially adapted for use in an infringement of the patents-in-suit and that these components are not a staple article or commodity of commerce suitable for substantial non-infringing use,” the complaint says. “Alternatively, Apple believed there was a high probability that others would infringe the patents-in-suit but remained willfully blind to the infringing nature of others’ actions.”

When Smartflash sued Apple, Samsung Electronics Co. and HTC Corp. in May 2013, accusing them of infringing six anti-piracy patents, the tech companies argued that the patents were invalid as abstract under the U.S. Supreme Court’s Alice standard on the patentability of computer-implemented inventions. They had argued the patents, which describe a system to pay for and download digital content, simply described paying for something to gain access to it, a “building block” of the modern economy.

However, U.S. District Judge Rodney Gilstrap adopted the recommendation of U.S. Magistrate Judge K. Nicole Mitchell, who found that the patents cleared the Alice hurdlw because although controlling access to data based on payment was abstract, the claims had meaningful limitations that transformed the idea into something patentable.

The patents addressed a problem created by the Internet: how to protect copyrighted material from being copied without permission, while still letting allowed users to access it quickly and permanently.

For more information, see Law360.

Categories: Uncategorized


Box To Pay $5M For Infringing Open Text Patents

February 23rd, 2015 Alexander No comments

A federal jury recently returned a nearly $5 million verdict against Box Inc. and its co-defendants in a suit that alleged it sold editing software that infringes Open Text SA’s file synchronization patents.

The jury found for Open Text, concluding that Box directly infringed three patents, that it contributed to infringement and induced infringement of three patents.

Furthermore, the jury found Box’s co-defendant, Carahsoft Technology Corp., contributed to and induced infringement. The jury concluded that the defendants hadn’t proven the claims at issue in the patents were anticipated by earlier technology.

In the trial, Open Text accused Box of infringing three patents, all of which relate to file synchronization. Open Text was forced to go to trial without damages expert Krista Holt’s testimony on royalty rates after U.S. District Judge James Donato found that her conclusions lacked quantifiable support and amounted to “‘I like it, I like it not’ petal-plucking.”

The defendants must pay $4.9 million in a lump sum to cover damages for past and future use of the technology covered by the patents, although the plaintiffs had sought much more.

Open Text told the jury Box should pay up to $11 million in royalties for selling editing software that infringes on the patents. Open Text said Box Edit software had some 37 million users, and that Open Text was asking for lump-sum royalty on just a fraction of that.

Box contended that Open Text hadn’t used the patents because it knew they were invalid, and that the patent office hadn’t seen some key portions of other programs that would have shown prior art.

For more information, see Law360.



USPTO Examples Show What Passes Under Alice

January 31st, 2015 Alexander No comments

The U.S. Patent and Trademark Office released a list of examples applying the U.S. Supreme Court’s Alice decision to hypothetical patents, which illustrates some of the computer-related inventions that can survive challenges under the ruling restricting the eligibility of patents involving abstract ideas.

The document includes eight examples: four inventions that are eligible for a patent under Alice and four that are not. Now, there some guidance of what the patent office is looking for.

Under Alice, abstract ideas implemented using a general-purpose computer are not eligible for a patent.

Many of the examples state that ways of performing long-standing business practices on a computer are not patent-eligible, while technological innovations dealing with the way a computer functions can pass.

For example, a method of providing a secure online sales transaction is not patent-eligible because it just a computerized way of creating a contractual relationship.

“This is simply a generic recitation of a computer and a computer network performing their basic functions,” the office wrote. “The claim amounts to no more than stating create a contract on a computer and send it over a network.”

However, a method of displaying multiple merchant websites within a single page, allowing Web users to visit several stores without leaving the page, was patent-eligible.

“The claim does not recite a mathematical algorithm; nor does it recite a fundamental economic or longstanding commercial practice,” the office said. “The claim addresses a business challenge (retaining website visitors) that is particular to the Internet.”

That theme runs through many of the examples, illustrating that in order to pass muster under Alice, inventions likely need to have a component that improves the functioning of a computer, rather than simply using a computer to make an existing process run more efficiently, said Donald Daybell of Orrick Herrington & Sutcliffe LLP.

The examples of things the USPTO found to be patent-ineligible tended to be much broader than those that were found eligible and involve things that had been done without a computer for a long time.

Nevertheless, the examination of any patent application is a fact-intensive inquiry, Daybell said, so the specific examples from the USPTO have a fairly limited practical value for determining whether any future application is patent-eligible or not. So even with this guidance, it’s tough for any practitioner to know where the line is drawn.

For more information, see Law360.

Categories: Intellectual Property