Miscelaneous IP Nuggets #3

We end the year with a few random nuggets…..

1) As reported by the Seattle Times, more than 100 companies are opposing Microsoft’s position in a case pending before the U.S. Supreme Court that challenges the “clear and convincing” burden of evidnece standard used in patent infringement cases.  Briefly, in a patent infringement case, a party challenging the validity of the patent must present clear and convincing evidence that it is invalid.  This standard of proof is above that required in most litigation (which uses the preponderance of evidence standard).  If Microsoft prevails, patents will be less valuable…so, this is an important case to watch.  The companies opposing Microsoft’s position include Amgen, Eli Lilly, Genentech, DuPont and Monsanto.  Those agreeing with Microsoft include Google, Apple, and Wal-Mart.

2) Many clients have wondered if there is anything that can be done when a competitor rips off an idea after a patent application has been filed but before issuance.  While it is certainly correct that the competitor cannot be sued for patent infringement (because the patent has not yet issued), the Patent Office does allow for a filing a special petition to accellerate examination of the case.  So, if you have evidence that a competitor may be copying your invention, please bring it to your patent attorney’s attention, and ask that he or file a petition to accelerate examination of the case .  (It does require a small fee ($130), a search,  and  attorney time to draft and file the petition).

3) On the subject of accellerated examination, remember that if any one of the inventors is age 65 or over or seriously ill, the case can be accellerated with the filing of proper petition.

Judge Kathleen McDonald O’Malley Confirmed for Federal Circuit Vacancy

The Congress is slowly filling the three vacancies on the Federal Circuit.  On Wednesday, the Senate confirmed Kathleen McDonald O’Malley to fill one of the vacancies.  Two more to go.

Judge O’Malley is presently a district court judge, and will be the only judge on the Federal Circuit with district court experience.

However, it is rather disappointing that she does not have a technical background.  Her undergraduate major was in history and economics.

On the plus side, Judge O’Malley has a reputation for fairness and has taught a course in patent litigation. Also, she is a faculty member at the Intellectual Property Seminar for Federal Judges co-sponsored by the Federal Judicial Center and the Berkeley Center for Law and Technology.

Interval Licensing Saga Continues

Interval Licensing is back in the game with yesterday’s filing of an amended complaint (see below).

As noted in previous posts, Interval Licensing–formed in 1992 by Microsoft co-founder Paul Allen and computer scientist David Liddle–initially filed a patent infringement lawsuit naming 11 defendant companies (AOL, Apple, eBay, Google, Netflix, Office Depot, OfficeMax, Staples, Yahoo!,YouTube, and Facebook).  However, the law suit was later dismissed because it was deemed to not be specific enough as to the allegations of infringement.  The amended complaint appears to remedy this.

Of particular interest in this 35-page document are the specifics as to how each of the defendant companies allegedly infringes on patents 6,263,507 and 6,757,682.

In essence, Interval  Licencsing argues that the claims broadly cover the notiion of discovering related content and displaying it.  So, for example, when an eBay user selects an item of interest, a related item that may be of interest to the user is displayed. Amazon does this famously as well when the user puts an item in their online shopping cart (“Customers who bought this item also bought….”).

Interestingly, the allegation against Facebook is that it displays a related photo when the user selects a photo. This is somewhat different, and shows the length that Interval intends to go toward enforcement.  However, it appears to be a bit of a stretch because there is little support in the written description of the allegedly infringed patents for displaying related photos.  The complaint also notes that when a Facebook profile is displayed, a similar profile is  displayed.  But this also seems to be a stretch.

Finally, it is noteworthy that the amended complaint  formally requests a jury trial.

Would a jury trial be beneficial to the plaintiff?

Maybe not if the plaintiff was seen as a troll… but perhaps it would if  the plaintiff was viewed as an underdog… a billionaire underdog at that.

2010-12-28 Interval First Amended Complaint for Patent Infringement

Happy Holidays!

“Christmas Tree Ornament”
US Patent No. 5,116,648 to Martin et al.

“Christmas Tree Lights”
US Patent No. 5,813,7347 to Kale

“Star Menorah Sculture”
US Patent No. D528,941 to Cavness

Inventor’s Eye Newsletter

In case you haven’t seen it, the Patent Office publishes a bi-monthly newsletter for the independent inventor community.  Topics that have been discussed include possible changes to provisional patent applications, patent reform pending in Congress, and tips and suggestions regarding the patent process.  The latest issue can be accessed here.

There has been quite a change at the patent office in the last few years regarding the importance of patents for individuals and small entities.  Most of it has been beneficial.

Other information for independent inventors and small business can be found on the independent inventor page of the of the USPTO web site.

Detroit Chosen for First USPTO Satellite Office

As reported in today’s Detroit Free Press, the Patent Office has chosen Detroit for its first satellite office.

Unlike many federal government agencies, the Patent Office has its entire operation in a central location — Alexandria, Virginia.

The impact from opening satellite offices is to make it easier for applicants who reside nearby to have an in-person interview more easily (without having to travel to Alexandria).  It also can be easier to deal with an examiner if both the examiner and the applicant reside in the same time zone.

For the Patent Office, having satellite offices will make it easier to recruit examiners from all across the country.  At present, the Patent Office has had considerable difficulty recruiting from the West Coast.  Most examiners are originally from the East Coast, most heavily from the Northeast Corridor.  According to reports, the Patent Office will be opening two more satellite offices in the next few years… Hopefully, they will choose Phoenix … which is quite attractive for a number of reasons, including low cost of living and nice weather (except when it is 110 degrees, of course).

About 100 new examiners will be located to the new Detroit office, and the technology examined will focus on automotive and other industries concentrated in the area.

Interval Licensing Law Suit Hits Snag

We have devoted numerous blog posts to the law suit between Paul Allen’s Interval Licensing LLC and numerous technology companies, including AOL, eBay, Apple, Google, Netfix, Yahoo and YouTube.  Unlike many other commentators (such as IP Watchdog), I do not consider Mr. Allen to be a “troll” because the intent of Interval Licensing was not to go around suing, but rather to develop useful inventions in the early years of the Web.  It appears that Mr. Allen’s multi-million dollar investment in the company was not recouped by licensing opportunities, so he instead went the legal route …. that is a reasonable option, in my opinion….

Be that as it may, trollish or not, as has been widely reported, U.S. District Judge Marsha J. Pechman issued an order last Friday dismissing the complaint for lack of specificity.  Hardly surprising.

She will allow the plaintiff to amend the complaint, and it should be interesting to see the specifics.

When the amended complain is filed we are sure to follow up.   We will keep you posted.

Single European Patent Will Cover 11 Countries

Many inventors have asked about obtaining patent protection in Europe, and I have had to explain to them that, presently, there is no such thing as a true ‘European Patent’ but that it is possible to file a single application in the European Patent Office (EPO) and obtain protection in selected member states.  The downside is that once the patent is issued by the EPO, the patent has to be translated into each language used in the member countries and that the patent would have to be defended in in each of the selected countries.  In essence, although the EPO centralizes the examination process, once an EPO patent issues, it is treated separately in each member country.

Now for some breaking news.  As reported in the EU Observer, A bloc of 11 European countries — including France, Germany, and the UK — have agreed to go ahead with a plan for issuing a single patent covering these eleven jurisdictions, a ‘mini EU patent’, if you will.

This is good news and should result in considerably reduced cost for applicants.