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Posts Tagged ‘patents’

Apple Hit With $22M Verdict In Acacia Patent Trial

September 18th, 2016 Alexander No comments

A jury recently found that Apple Inc.’s iPhones and iPads infringe a patent on wireless communication technology owned by Cellular Communications Equipment LLC, a subsidiary of major patent licensing firm Acacia Research Corp.  The jury ordered Apple to pay $22.1 million in damages.

That patent was originally issued to a Nokia Corp. engineer and then acquired by Cellular Communications Equipment. It covers technology for managing the resources used to send data over a communications network and increasing the efficiency of communicating.

Apple argued that it does not infringe and that the patents are invalid as obvious or because the applicant omitted inventors from the patent.

In addition to Apple, the suit named as defendants the mobile carriers that resell Apple devices and configure them to make them compatible with their networks: AT&T Mobility LLC, Verizon Wireless, Sprint Solutions Inc., Boost Mobile LLC and T-Mobile USA Inc.

However, U.S. Magistrate Judge K. Nicole Mitchell granted the carrier’s motion to sever the claims against them and stay them until completion of the trial against Apple, finding that the claims are peripheral to the claims against Apple.

The carriers can only be liable for patent infringement if Apple is found to infringe, but if Apple were found liable and ordered to pay damages, Cellular Communications Equipment cannot recover damages from the carriers because it is barred from receiving a double recovery for the same sales.

For more information, see Law360.



Fed. Circ. Recognizes Non-Lawyer Patent Agent Privilege

March 13th, 2016 Alexander No comments

In a case over smartphones, a split Federal Circuit ruled that communications between U.S. patent applicants and their non-attorney patent agents should be afforded some degree of privilege.

For the first time, the appeals court recognized a patent agent privilege, affording the same type of protections in attorney-client privilege to communications between registered patent agents and their clients.

Patent agents are not licensed attorneys, but they are certified to prepare and prosecute patent applications before the U.S. Patent and Trademark Office.

“We find that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law, and the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege,” Circuit Judge Kathleen McDonald O’Malley wrote on behalf of the majority panel.

The scope of this privilege is limited to exclude communications that are not “reasonably necessary and incident to the prosecution of patents before the Patent Office.” For example, an opinion about the validity of someone else’s patent is something that would not be protected.

The ruling comes from a case between Queen’s University at Kingston, a research university in Ontario, Canada, and Samsung Electronics Co. Ltd.

Queen’s University sued Samsung, claiming Samsung’s Galaxy S4 and Galaxy Note 3 smartphones infringe its patents for technology that allows humans to communicate with computers with their eyes. Samsung the year before had unveiled its SmartPause feature, which enabled users to pause a video simply by looking away from the screen.

During the course of discovery, Queen’s University refused to hand over certain documents, including communications between university employees and registered patent agents talking about the prosecution of the disputed patents.

After Samsung protested, the district court ordered Queen’s University to produce the communications, finding they were not protected by attorney-client privilege and that a separate patent agent privilege did not exist. The ruling was stayed until the Federal Circuit could hear the university’s mandamus petition.

The Federal Circuit said an applicant has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application” will be privileged.

“Whether those communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment,” the judge wrote. “Indeed, if we hold otherwise, we frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.”

For more information, see Law360.

Categories: Intellectual Property


Alice Kills 3 MicroStrategy Data Storage Patents

August 1st, 2015 Alexander No comments

Three three data storage patents owned by MicroStrategy Inc. have been ruled invalid under the U.S. Supreme Court’s Alice ruling for claiming only abstract ideas. This was good news for accused infringer Apttus Corp., MicroStrategy’s rival in the business intelligence software industry.

MicroStrategy alleged that Apttus’ contract management software infringed three patents covering an intelligence server system, a method of providing business intelligence Web content and a system of remotely manipulating analytic reports.

Alice held that abstract ideas implemented using a computer are not patent-eligible. U.S. District Judge John A. Gibney Jr. noted that recent high court rulings have put limits on what can be patented. As a result, patents like MicroStrategy’s, which were granted before those rulings were issued, are now doomed, since “many inventors drafted their patents for an age of patent law that no longer exists.”

“Patentees relied on a low bar when writing applications to the U.S. Patent and Trademark Office, but since Bilski, Mayo and Alice, the rules have changed,” he said. “Unfortunately for the patentees, this results in ineligible patents.

Judge Gibney ruled that all three patents were directed at the abstract idea of report generation and data storage and do not include any elements that transform the idea into something patent-eligible.

With regard to one of the patents, which says it refers to data warehousing, the judge wrote that “this can mean nothing else but data storage, a concept that is absolutely an abstract idea.”

He rejected MicroStrategy’s arguments and claimed that doing something on a computer does not make it patent-eligible if it would not be eligible without a computer.

“Large amounts of data existed before the use of computers and the Internet,” he wrote. “The patent describes how individuals can gather information and identify trends within that data, just as people have done for many years.

For more information, see Law360.

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