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New Google Patent Filing Claims Heart Hand Gesture for Snapping Pictures

October 17, 2013,

Glass-google.jpgCalifornia - Google, Inc. was granted a patent on October 15th which will let users of its upcoming Google Glass take pictures simply by making hand gestures. The patent, which lists two Northern California Google employees as inventors, is aptly titled "Hand gestures to signify what is important." It describes a method compatible with its soon-to-be released Google Glass device, by which users can put their hands together to create a heart shape over a certain real life object, thereby "liking" it and creating a heart shaped picture. It goes on to detail how customers can make an L shape over an object in order to take a more traditional rectangular photo.

The method set forth in the recent patent, numbered 8,558,759 by the United States Patent and Trademark Office (USPTO), seems to build upon the current internet application trend of "liking" photos and posts. This feature is included in some of the world's most popular web-based applications, including Facebook and Instagram. By allowing Glass users to perform a physical action in relation to a real object in the world to take a picture, it seems that Google has found a way to take "liking" to the next level.

The wearable computer developed by Google is currently in the final stages of development by Google X, the secretive branch of the company known for its production of ultramodern technologies and devices. The much anticipated product features an optical head-mounted display that looks much like a pair of futuristic eyeglasses. Glass has a screen, camera, touchpad and lenses that work in conjunction on an Android operating system.

While it is uncertain if the features described in the new patent will actually come to fruition as part of the Google Glass product, it adds to the certainty that Google is doing all it can to reserve its right to protect all technological advancements related to Glass. Currently, there is no exact consumer release date for Glass and analysts have been left to speculate about the price point. However, for those who truly cannot wait to get their hands on it, a quick eBay search shows a few listings for Glass at a cool $6,000.

Frito-Lay Loses SCOOPS! Tortilla Chip Patent Fight

March 7, 2013,

chips-guacamole.jpgCalifornia - A Texas jury sided with BOWLZ chips maker Medallion Foods, Inc. saying that the company did not infringe Tostitos SCOOPS! manufacturer Frito-Lay North America Inc.'s patent for bowl-shaped tortilla chips.

PepsiCo, Inc. subsidiary Frito-Lay alleged that Ralcorp Holdings subsidiary Medallion had stolen its patented design for making the unique bowl-shaped tortilla chips and claimed that it purposely tried to confuse consumers by using similar packaging design and colors.

"Defendants' bowl-shaped tortilla chips and accompanying package are an apparent intentional effort to imitate the famous, successful trademark and packaging of Frito-Lay's Tostitos SCOOPS! tortilla chips," the complaint read.

However, the jury found that Frito-Lay had failed to prove that Medallion's store brand of chips sold at Wal-Mart stores infringed its method for making the chips, that it had infringed the packaging of the product, that Medallion's product would dilute the SCOOPS! brand in any way, or that Medallion was engaging in unfair competition by using similar packaging designs.

The food fight started when Frito-Lay sent a cease and desist letter to Medallion in early February 2012 accusing the company of infringing its intellectual property and demanding that it stop producing the BOWLZ chips within two days because of the purported infringement.

Medallion refused to comply because it believed it had not done anything wrong. When the cease and desist deadline passed, Medallion filed a lawsuit against Frito-Lay in Arkansas federal court requesting a declaratory judgment that its chip does not infringe on Frito-Lay's trademarks and patents. The case was dismissed later that year.

Frito-Lay responded to Medallion's lawsuit by filing a separate lawsuit that same month in Texas federal court, which resulted in the trial that concluded Friday. The complaint accused Medallion of infringing its patent-protected method for making the bowl-shaped chips and also accused Medallion of copying it packaging.

The jury, however, found that Medallion's methods for making its chip are different than the methods described in Frito-Lay's patent and disagreed that the packaging would cause confusion among consumers. Frito-Lay had requested $4.5 million in damages and an injunction preventing the company from continuing to make the BOWLZ chips.

OxyContin Manufacturer Sues Generics Makers for Patent Infringement

February 6, 2013,

pills.jpgCalifornia - Purdue Pharma LP and Grunenthal GmbH filed a lawsuit against two generic drug makers, claiming their planned generic versions of OxyContin will infringe two patents that cover the "abuse-proof" version of the painkiller.

According to the complaints filed in New York on Friday, Watson Pharmaceuticals Inc., now owned by Actavis Inc., and Impax Laboratories Inc. filed abbreviated new drug applications with the U.S. Food and Drug Administration for a generic form of oxycodone hydrochloride extended-release tablets for seven different dosage strengths. Purdue and Grunenthal claim the planned generic forms will infringe at least one of two patents relating to the controlled-release version of OxyContin.

According to the FDA, OxyContin is a semi-synthetic opioid and a Schedule II controlled substance due to its high risk of addiction.

The patents-in-suit, both titled "Abuse-proofed dosage form" are owned by German-based Grunenthal, which licenses the patents to Connecticut-based Purdue. The patents protect a specific version of OxyContin that is coated in a plastic-like polymer to help prevent tampering and abuse of the drug. The polymer prevents the pill from being ground into a fine powder and becomes unusable if added to water, but it can still dissolve normally in the stomach.

Watson and Impax both sent a letter to Purdue in December 2012 informing the company of their plans to file ANDAs for a generic version of the painkiller and stating that the patents for the drug are not valid, unenforceable or are not infringed by their planned generics.

Purdue and Grunenthal claim the patents are valid and that the companies cannot reasonably conclude that the generic forms of the drug are not covered by the terms of the patents or that the generic versions would not infringe the patents.

OxyContin is a very profitable painkiller, making Purdue nearly $2.8 billion in U.S. sales in 2011. Purdue claimed that the infringement by the companies "will cause plaintiffs irreparable harm for which they have no adequate remedy at law and will continue unless enjoined by this court."

Purdue requested a declaratory judgment that the planned generics will infringe the patents, an injunction prohibiting the companies from releasing generic versions of OxyContin until the patents expire in November 2023, costs and attorney fees.

Both Apple and Samsung Argue That $1.05 Billion Patent Infringement Verdict is Unfair

December 11, 2012,

ipad-iphone.jpgCalifornia - After a $1.05 billion verdict was found in favor of Apple in August, both Samsung and Apple are back in court arguing that the ruling is unfair.

The arguments regarding several post-trial motions filed since the August verdict will be heard by U.S. District Judge Lucy Koh in the Northern District Court in San Francisco.
Samsung claims that the $1.05 billion verdict goes too far and is asking for a reduction in the verdict or for the verdict to be overturned all together. On the other hand, Apple wants $535 million more in enhanced damages, based on the jury's finding that Samsung willfully infringed Apple's patents.

Samsung claims that Apple has not shown it suffered any damages the jury did not account for and so it is not entitled to enhanced damages.

Beyond that argument, Samsung claims that a reasonable jury would not have found that it infringed Apple's patents and that the jury's findings and damage calculations are faulty and inconsistent, thus Apple is not entitled to the $1.05 billion in damages the jury awarded.

Samsung also claims that the jury foreman, Velvin Hogan, was biased against the company. Samsung bases this claim on the fact that Hogan sued Seagate Technology in 1993, a company Samsung recently invested in. Based on this alleged bias, Samsung is asking for a new trial due to jury misconduct.

Samsung also claims that the judge's constraints on jury time, exhibits, and witnesses prevented it from making a full and fair case against Apple's claims. Apple counters that Samsung's jury misconduct claim is based on speculation and it has not given sufficient cause to require a new trial.

In addition to greater monetary damages, Apple is asking for a permanent injunction on Samsung's allegedly infringing smartphones and tablets. It wants the injunction to ban all technology that is "not more than colorably different," which could ban Samsung products that had nothing to do with the trial.

Samsung claims that the injunction Apple wants is vague and overbroad, which could hinder competition and limit consumer choice. Samsung also claims that Apple has not shown it will suffer irreparable harm or that monetary remedies are not sufficient.
Samsung's argument also pointed out Apple's recent settlement with HTC Corp., which concerned some of the same patents at issue in the Samsung case, as confirmation that Apple's competitors can sell products containing Apple's patents through licensing without damaging the company.

Regardless of Koh's ruling on the case and the decisions on appeals that are sure to follow, Apple and Samsung's legal battles are far from over. The companies will be back in Judge Koh's courtroom in 2014 battling over patent infringement in newer smartphones and tablets.

Apple Applies For Patent On iPad Smart Cover

August 13, 2012,

iPad.jpgCalifornia - Apple announced last week that it has applied for a patent to protect its slick new iPad cover. The application lists the patent as "Cover Attachment with Flexible Display". The new technology offers such useful additions as a keyboard, an extra row of apps, and the option of having special notifications appear on the cover space.

Undoubtedly, iPad users have reason to be excited at the possibility of a new Apple issued accessory for the iPad. Some of the cool new features possibly offered will be an ambient power collector, a keyboard and touch screen integrated into the cover flap, a rear display with controls in the back of the iPad, and additional alerts that could be displayed on the cover such as calendar notifications. Many iPad users end up purchasing separate keyboards for use with their iPad, so the keyboard option could prove to be a useful addition when the user folds the cover back. In addition, ambient power has become a popular new option for consumers who would prefer to use solar power to boost displays, particularly when using the iPad outdoors. The cover alert portion of the patent would allow users to display calendar events, notifications and alerts on the cover. The rear display function seems like the least likely of the options to actually come to pass. Industry experts say that locating controls on the back of the product would be impractical since the user would constantly have to turn the product around to see what buttons they were pushing.

The timing of the patent is interesting considering the recently unveiled Microsoft Surface tablet which will be sold with a cover that includes a kick stand and keyboard. The Apple patent could result in a single cover for the iPad, or several smart covers with different feature options. The new iPad smart cover should come out in time for the 2012 Christmas shopping season. The manager of product design at Apple, Fletcher Rothkopf, is listed as the inventor.

California Gets U.S. Patent & Trademark Regional Office

July 18, 2012,

USPTO Image.jpgCalifornia - The U.S. Commerce Department made the announcement earlier this month that it has decided to open four regional United States Patent & Trademark Offices. The new offices will be located in Dallas, Texas, Denver, Colorado and Silicon Valley, California. These offices join the previously announced satellite office in Detroit, Michigan that is scheduled to open on July 13, 2012. According to the United States Patent & Trademark Office ("USPTO") website, the locations selected were based on significant studies that analyzed geographical diversity, regional economic impact, ability to recruit and retain employees, and the ability to engage the intellectual property community.

In September 2011, President Obama signed the Leahy-Smith America Invents Act of 2011 (AIA), which requires the USPTO to select regions for its satellite locations. This Act will also change the U.S. rights for filing patent applications from as it stands today which is a "first-to-invent" system to a "first inventor-to-file" system. The changes regarding the "first inventor-to-file" will take effect on March 16, 2013.

Acting U.S. Commerce Secretary Rebecca Blank stated regarding the USPTO changes, "Intellectual property protection and innovation are engines of economic growth and the bedrock of America's private sector. The Obama administration is committed to making certain that our businesses and entrepreneurs have the resources they need to grow, create jobs and compete globally. These new offices are an historic step toward further advancing our world's best IP system, and reinforcing the United States as the number one destination for innovation capital, and research and development around the world."

The USPTO's office in Silicon Valley will not only create jobs here in California but it is also expected to positively change the economy as well. The satellite office in Silicon Valley will be located among many of its Applicant's who hold enormous intellectual property portfolios. Among the top 100 companies listed on the 2012 Fortune 500 list include companies in Silicon Valley such as Palo Alto-based Hewlett Packard (HP), Santa Clara-based Apple, and San Jose-based Cisco Systems.

David Kappos, Director of the USPTO states, "By expanding our operation outside of the Washington metropolitan area for the first time in our agency's 200-plus year history, we are taking unprecedented steps to recruit a diverse range of talented technical experts, creating new opportunities across the American workforce. These efforts, in conjunction with our ongoing implementation of the America Invents Act, are improving the effectiveness of our IP system, and breathing new life into the innovation ecosystem."

With changes such as these that aim to boost the economy, things are looking a bit brighter here in the Golden State.

TeleCommunication Systems Receives 35 More U.S. Patents in Mobile Mapping Technology

May 14, 2012,

navigate_directions.jpgCalifornia - TeleCommunication Systems is known for its groundbreaking advancements in mobile communication technology. It has recently been granted 35 more patents by the U.S. Patent and Trademark Office related to messaging, wireless data, and public safety. Maurice Tose, the chairman, CEO, and president of TeleCommunication Systems stated, "TCS has long been a pioneer and leading innovator in messaging, mobile location/mapping, public safety and wireless technology" and "these 35 new patents - including the 13 mapping & location patents - demonstrate our continued commitment to apply innovative engineering solutions to improve mobile device communications."

The patents related to "Navigation and Route Determination" include U.S. Patent No. 8,090,534 a "Method and System for Enabling an Off-Board Navigation Solution" and U.S. Patent No. 8,169,343 a "Method and System for Saving and Retrieving Spatial Related Information", as well as three other patents. These patents will allow users to request a particular navigation route by voice while also saving the request. The user will also be able to affiliate a certain image to a specific destination or route.

Also added to TeleCommunication's intellectual property portfolio are patents related to the location of a caller and receiver. For example, a person making a phone call will be able to allow the receiver to view the caller's location by viewing their GPS coordinates. The patents associated with the "Locating a User Technique" include U.S. Patent No. 8,165,603 for a "Personal Location Code", U.S. Patent No. 8,126,889 for a "Location Fidelity Adjustment Based on Mobile Subscriber Privacy Profile" and U.S. Patent No. 8,032,112 for "Location Derived Presence Information". With regard to security, the user will also be able to adjust the security settings on their phone to enable or disable a receiver from viewing the location of the user.

Bob Held, a senior director of intellectual asset management for TeleCommunication Systems stated, "there are significant opportunities to leverage our company's 200+ patents and other intellectual property around the world, through both licensing and partnership arrangements in core and non-core business areas." By this statement we can be sure that TeleCommunication Systems has no plans to stop filing patent applications.

Patents, Trademarks and Copyrights Play a Pivotal Role in the U.S. Economy

April 19, 2012,

ideadice.jpgCalifornia - The Department of Commerce has released a new report titled "Intellectual Property and the U.S. Economy: Industries in Focus," which sets out the pivotal role that intellectual property plays in the U.S. economy.

According to the report, IP related jobs are at the top of the list for newly created jobs and IP-intensive jobs are said to pay at least 42% higher in wages than other popular job sectors at this time. The Department of Commerce Secretary John Bryson stated, "It's clear that intellectual property protection is more critical than ever" and "When Americans know their ideas will be protected, they have greater incentive to pursue advances in technologies. That helps keep us competitive and makes us competitive into the future." According to the Commerce Secretary, "industries affected by intellectual property account for more than 40 million jobs, 61% of exports and more than $775 billion in goods and services."

Most companies want to protect their intellectual property rights whether it is through a patent, copyright, or trademark. A company's intellectual property portfolio is a vital asset to its growth. Therefore, jobs in IP related fields are widely expanding. According to the Economics and Statistics Administration and U.S. Patent and Trademark Office, in 2010 the 75 IP-intensive related industries produced approximately 35 percent of the gross domestic product in the U.S. or about $5.06 trillion.

The report released from the Department of Commerce, which emphasizes the importance of intellectual property protection, comes just one year after the US International Trade Commission disclosed in a similar report that the lack of monitoring and enforcing of IP rights in China cost U.S. IP-intensive companies $50 billion a year. The report made by the Trade Commission also reports that the lack of worldwide IP protection might also jeopardize up to 2.1 million jobs.

Thomas Donohue, president of the U.S. Chamber of Commerce stated, "In laboratories and studios and research hubs, and even in home garages, entrepreneurs and innovators are hard at work turning their ideas into real products," and "innovation can't create jobs without strong IP protection."

According to the Department of Commerce report, IP jobs in the U.S. are mainly clustered on the West and East Coasts.

U.S. Patent Office Re-Affirms "Zamore Design Rule" Patents

March 20, 2012,

dna-strand.jpgCaliornia - The United States Patent and Trademark Office re-affirmed four patents (US 7,459,547, US 7,732,593, US 7,772,203 and US 7,750,144) known as the "Zamore Design Rule" patents following a re-examination requested by an anonymous third party, which previously issued as patents last year. The "Zamore Design Rule" patents are owned by the University of Massachusetts and are exclusively licensed to Silence Therapeutics. What makes these patents important is that they cover methods of promoting the incorporation of a desired guide strand into the RNA-Inducing Silencing Complex (RISC) through structural modifications, resulting in more effective and selective RNAi knockdown. By increasing the effectiveness of RNAi therapeutics, unwanted cellular activity and side effects are minimized.

More specifically, the "Zamore Design Rule" patents describe methods of enhancing the ability of an antisense strand of an RNAi agent to act as a guide strand; codify RNAi and siRNA agents for enhancing silencing of a target mRNA in an organism; and cover the composition of siRNA duplexes, pre-miRNA and shRNA in the process of RNA interference.

With this ruling, Silence Therapeutics will receive broad patent coverage for all structural and chemical approaches that incorporate bioinformatics pre-selection sequence algorithms in finding efficacious RNAi triggers. Any company using modified nucleotides for any purpose may have to be concerned that their process will infringe on Silence's patents.

Dr. Phillip Zamore, innovator of this process and professor of biochemistry and molecular pharmacology at the University of Massachusetts Medical School in Worcester, stated, "the initial granting of these patents was a significant milestone in the translation of the basic science of RNA interference into the real world of RNA therapeutics."

After a patent has been unsuccessfully challenged through re-examination, its value is considered higher. Knowing its proven value, companies such as Novartis are expressing interest in licensing the "Zamore Design Rule" patents.

Employee Claiming Employer Patent Theft Denied Relief In State Courts

November 14, 2011,

constitution-flag.jpgCalifornia - Suzanne Brown, employee for Tuscon, Arizona based Lisa Frank, Inc. is not entitled to relief for alleged patent theft by her former employer in state court, an Arizona appellate court held. Instead, she must pursue her claim in federal court which has exclusive jurisdiction over patents granted by the United States Patent and Trademark Office (USPTO).

Brown returned to work at Lisa Frank after a ten year absence in 2009. Once she began work, she notified the company that she had conceived of an idea for a child-safe oven. Working with other employees, Brown created a sketch of the oven and its details. The company submitted the sketches to its patent attorney who filed a patent and trademark application with the USPTO for the oven without notifying Brown. Brown was later terminated.

Brown originally brought the action in Arizona's Pima County Superior Court alleging several causes of action for breach of contract, unjust enrichment, and wrongful ownership and control of the invention. That original action, however, was dismissed upon motion by Lisa Frank for lack of subject matter jurisdiction. Brown then appealed the case to an Arizona appellate court which affirmed the lower court's dismissal of the case.

Under the Supremacy Clause found in the United States Constitution, federal law preempts state law when congress expressly provides for preemption, federal law leaves no room for state law, or where state law and federal law conflict. 28 U.S.C. § 1338 provides that "The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents..." That jurisdiction is exclusive to the extent that it involves federally issued patents.

In this case, Brown argued that though federal law has preempted the patent system, inventors still maintain common law state rights over their inventions and that these rights are enforceable in state court. The appellate court disagreed, holding that Congress reserved the determination of inventorship to the USPTO and that such a determination is within the exclusive jurisdiction of the federal courts. As Brown's action depended on the resolution of a "substantial question of federal patent law," federal law preempted the state court's jurisdiction in this matter.

Senate Approves Major Changes to Patent Reform Act

September 12, 2011,

flag.jpgCalifornia - After years of debates over patent reform, the U.S. Senate finally passed the America Invents Act Thursday, making major changes to America's patent laws. The 89-9 vote will be signed by President Obama just days after the United States Patent and Trademark Office (USPTO) issued its 8 millionth patent.

There are five key changes taking place in the new patent reform that will affect entrepreneurs, inventors, tech companies, and the USPTO. The five key pieces include:

First to File: The current patent system operates under the first to invent rule, which means that whoever can prove to a court of law that they invented something first can force another party into a legal battle over the patent. With the new first to file system under the America Invents Act, whoever files the patent first will get protection. Although much more clear-cut, some small businesses and entrepreneurs argue that it gives an advantage to large businesses that have the money to quickly file for patents.

Post-Grant Review: Currently, the USPTO has a procedure to re-examine patents after they have been issued, but it is very limited in its scope. Under the new process, inventors will have the ability to challenge a patent within nine months of its issuance by presenting the USPTO with evidence against the patent's validity. The upside is that this could potentially reduce some of the expensive patent litigation lawsuits, but opponents say that it is just another responsibility that will be placed on an already over-burdened Patent Office.

Fee collection Overhaul: Under the existing system, Congress establishes the fees that are collected by the Patent Office and also controls its budget. With the America Invents Act, the USPTO will be able to determine its own fees. Congress will continue to have budgetary power but the collected fees exceeding the budget will be placed into escrow and the USPTO can petition for their release. The reformed patent laws will stop Congress from siphoning money out of the USPTO budget, and allow the entity to keep all of the fees it collects.

Lack of Patent Lawsuit Reform: Although it was suggested and included in some earlier versions of the new patent bill, there is no new process in the America Invents act for determining damages in a patent infringement case. For the foreseeable future, juries may continue to award large sums of money for patent violations.

Software and Business Method Changes: There are a few minor provisions in the America Invents Act that clear up the debate over the propriety of software patents. One provision, for example, specifically excludes tax preparation software from a rule prohibiting the patenting of tax strategies, and another provision creates a way to defeat patents related to financial products, with the goal of eliminating a certain group of patents for check-imaging software.

Patent Standard for Dropping the "Atomic Bomb" of Inequitable Conduct Raised

June 3, 2011,

cloud-bomb.jpgCalifornia - Reversing an earlier panel judgment, the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Company reviewed en banc the standards for inequitable conduct in patent infringement cases. A judge-made equitable defense that originated from the doctrine of unclean hands, proving inequitable conduct can completely bar the enforcement of a patent. To show inequitable conduct, an accused infringer needs to show that the patent applicant had "misrepresented or omitted material information with the specific intent to deceive the PTO."

The court sought to reduce inequitable conduct as a significant litigation strategy, as its use had led to undesirable consequences such as expanding discovery into corporate practices, discouraging settlement, and taking attention away from issues of patent validity and infringement, due to its focus on the moral character of the patentee. Describing inequitable conduct as "the atomic bomb of patent law," the court noted that where most defenses are claim specific, inequitable conduct is able to render entire patents unenforceable, with the potential to even endanger other patents in a patentee's portfolio. The en banc decision addressed both the "intent to deceive" and "materiality" elements of the defense.

While courts in the past have often used a gross negligence standard to determine the intent element for inequitable conduct, the Federal Circuit raised the bar to a clear and convincing standard. The patentee needs to be shown to have known of a reference, known that the reference was material, and made a deliberate decision to withhold it from the PTO. Due to the difficulty of finding direct evidence of intent, the Court held that intent could be inferred from indirect and circumstantial evidence, but the clear and convincing standard meant that the specific intent to deceive be "the single most reasonable inference" that could be drawn from the evidence.

In addition to intent, the Court also raised the standard of materiality. To satisfy the materiality standard, the misrepresentation had to be the but-for cause for the patent claim's issuance. The Court held that the preponderance of evidence standard would apply and that claims would be given their broadest reasonable interpretation when determining whether the PTO would have allowed a claim had it been aware of the undisclosed material.

The Court also rejected the intent-materiality sliding scale that had been used in earlier cases. No longer can a weak showing of intent be allowed based on a strong showing of materiality; the two elements must be determined independently.

In making its ruling, the Court hoped to achieve better proportionality between the violation and the remedy. Because the doctrine of inequitable conduct could render an entire patent, potentially even an entire family of patents, unenforceable, the Court sought to restrict its use and ensure that it would only be applied in situations where a patentee through its misconduct has gained an "unfair benefit."

Issue of Joint Patent Infringement Creates Divided Ruling

May 13, 2011,

courthouse.jpgCalifornia - In April, the Federal Circuit decided the case of McKesson Technologies Inc. v. Epic Systems Corp., ruling that to show infringement of a patented method, the performance of all the steps of the method must be attributable to a single party. The decision, which included a majority opinion, a concurrence, and a dissent, illustrates the division in the court in dealing with interactive method patents and new technologies.

McKesson's patent described a method involving personalized web pages in order to facilitate the communication between doctor and patient. Epic Systems manufactures a software product called MyChart, which it licensed to software providers and allows medical providers to associate a patient's medical records with a personalized web page. None of the providers require the patient to use the MyChart software; the patient must initiate the communication. "Initiating a communication" is an essential step in McKesson's patented method, and it is around this step where most of the argument lies.

Writing the majority opinion, Judge Linn based his holding on three previous cases: BMC Resources v. Paymentech LP, Muniauction v. Thomson, and Akamai Technologies v. Limelight Networks Inc. In order for McKesson to successfully allege induced infringement, there must first be direct infringement, which for a method patent, according to BMC, requires the performance of each step in the method by a single party. When multiple parties come together to perform the steps of the method, it is only directly infringed if one party exercises "control and direction" over the entire process. Muniauction held that the "control and direction" element would be satisfied when the accused direct infringer could be found to be vicariously liable for the acts committed by the other parties. Akamai stated that for the actions of one party to be attributable to another, there must be an agency relationship or contractual obligation between the parties.

Finding no such relationship between the medical providers and the patients, as the patients were neither agents of the providers nor contractually obligated to use MyChart, Judge Linn found that no direct infringement had occurred as the performance of the method could not be attributed to a single entity under the "control and direction" test.

Judge Newman's dissent asserted that creating an absolute "single-entity rule" was an unacceptable enlargement of the holding in BMC, and that none of the cases the majority cited "turned on whether different entities independently or interactively perform different steps of the method claim." Instead, the existence of joint liability needed to turn on "participation, collaboration, or other relevant facts." Newman wrote that the majority holding, by limiting infringement for interactive method patents, "eliminates the patent incentive" for such methods, by making them "open for infringement without redress."

Judge Bryson's short concurrence opinion stated that decision was correct in light of BMC, Muniauction, and Akamai, but questioned whether the three cases were themselves correct, and expressed the opinion that an en banc review might be needed to resolve the issue.

If you have a patent infringement matter, we are patent litigation attorneys so please feel free to contact us.

America (Possibly) Reinvents Ex Parte and Inter Partes Reexamination

May 4, 2011,

flag.jpgCalifornia - The "America Invents Act" (the "Act") (S. 23 & H.R. 1249), formerly known as the Patent Reform Act of 2011, are two similar bills currently making their way through the Houses of Congress. This is the fourth consecutive session in which Congress has attempted to alter the U.S. patent system, and proposed changes include switching patent priority from "first to invent" to "first to file". The U.S. system has not undergone a serious change since the enactment of the American Inventors Protection Act in 1999.

The Act would provide a transition period of several years during which inter partes reexamination could still be requested but does not propose to alter ex parte reexamination. Therefore, according to the USPTO's announcement appearing in the Federal Register on April 25, 2011, it must "continue its efforts to improve the existing reexamination system." (http://www.gpo.gov/fdsys/pkg/FR-2011-04-25/html/2011-9805.htm).

In any event, David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, reaffirmed the importance of reexamination recently in a press release: "We recognize that [it] is one of the most important functions of the USPTO, because these patents often have significant commercial value and are usually involved in concurrent litigation. [And] [b]y resolving these disputes more quickly, we can make patent reexamination a better mechanism for reviewing patent validity." (http://www.uspto.gov/news/pr/2011/11-28.jsp).

A public meeting will be held on June 1st at the USPTO in order to solicit public opinions on several changes under consideration concerning the streamlining of the procedures governing ex parte and inter partes reexamination proceedings. These changes have ostensibly been designed to achieve faster and more efficient resolution of the substantial new question of patentability (SNQ) for which reexamination has been ordered. The proposed changes fall into three categories: 1) changes which affect both ex parte and inter partes reexaminations, 2) changes which only affect ex parte reexamination and 3) changes affecting only inter partes reexamination.

In outline form, they are (see the relevant CFR for more detail at http://www.gpo.gov/fdsys/pkg/FR-2011-04-25/html/2011-9805.htm):

1) Proposed Changes to Both Ex Parte and Inter Partes Reexaminations:
A. Requester Must Separately Explain How Each SNQ Presented in the Request Is ``New'' Relative to Other Examinations of the Patent Claims.
B. Requester Must Explain How the References Apply to Every Limitation of Every Claim for Which Reexamination Is Requested.
C. Requester Must Explain How Multiple SNQs Raised in the Same Request Are Non-Cumulative of Each Other; Cumulative SNQs Will Be Deemed to Constitute a Single SNQ.
D. The Examiner May Select One or More Representative Rejections From Among a Group of Adopted Rejections.
E. Requester's Declaration and Other Evidence Will Be Mainly Limited to the Request.
F. Patent Owner's Amendments and Evidence Will Be Mainly Limited to the First Action Response.
G. Claim Amendments Will Not Be Entered Unless Accompanied by a Statement Explaining How the Proposed New Claim Language Renders the Claims Patentable in Light of an SNQ.
H. Petitions Practice Will Be Clearly Defined.

2) Proposed Changes Specific to Ex Parte Reexamination:
A. Make Permanent the Pilot That Allows the Patent Owner to Optionally Waive the Patent Owner's Statement.
B. Where the Patent Owner Does Not Waive the Statement, the Order Granting Reexamination Will Include a Provisional FAOM, Which May Be Made Final in the Next Action.

3) Proposed Changes Specific to Inter Partes Reexamination:
A. Third Party Requester May Dispute the Examiner's Designation That a Rejection is "Representative" of Other Rejections in the Group.
B. Final Office Action Closes Prosecution and Triggers Appeal Rights.
C. Third Party Requester's Appellant Brief is Limited To Appealing An Examiner's Decision That a Claim is Patentable; Additional Bases To Cancel A Rejected Claim Can Only Be Argued in a Respondent Brief Following Patent Owner's Appellant Brief.

The USPTO invites comments on the proposed changes as well as thirteen other specific questions posed at the end of the notice in the April 25th CFR. If you are interested, now is the time to weigh-in on the possible reinvention of the U.S. ex parte and inter partes reexamination process.

Federal Circuit Requires High Particularity Standard for False Marking Claims

April 11, 2011,

bottles.jpgCalifornia - In In re BP Lubricants USA Inc., the Federal Circuit Court of Appeals held that a false marking claim must satisfy the particularity standard of Fed.R.Civ.P. 9(b), which requires that complaints alleging fraud or mistake "state with particularity the circumstances constituting fraud or mistake." A complaint containing only "conclusory allegations that a defendant is a 'sophisticated company' and 'knew or should have known' that the patent expired" was ruled to be insufficient to meet that standard. Granting in part Petitioner BP Lubricants USA, Inc.'s request for mandamus, the Court ordered the district court to dismiss relator's complaint with leave to amend.
Petitioner BP distributed products using a bottle design for which they had received a design patent. BP was alleged to have continued to mark its bottles with the patent numbers, even after its expiration in 2005, despite being a "sophisticated company" that had "experience applying for, obtaining, and litigating patents," for the purpose of deceiving the public.

The purpose of the Rule 9(b) standard is to weed out frivolous claims. To survive dismissal, a plaintiff must show "some objective indication to reasonably infer that the defendant was aware that the patent expired." If this awareness is established, the combination of actual misrepresentation and awareness of the falsity of the representation would be enough to infer the required "intent to deceive" element of the crime.

The Court found that relator's argument that BP was a "sophisticated company" that "should have known" of the patent's expiration was not enough to reasonably infer that BP had actual awareness. In addition, the mere fact that the mark on the bottles was false and misrepresentative was insufficient to show the Petitioner's possessed intent to deceive, the relationship between factual falsity and state of mind not being strong enough.

Addressing the relator's concerns that the anonymous nature of false marking meant that specific individuals could not always be named to show deceptive intent, the Court stated that there were other types of evidence from which deceptive intent can be reasonable inferred. For example, evidence that Petitioner had sued third parties for infringement after the expiration of the patent or had revised its markings after patent expiration would in the Court's eyes be sufficient.

Lastly, the Court addressed its earlier ruling in Pequignot v. Solo Cup, 608 F.3d 1356, which held that "the combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public." While the Pequignot presumption can be an important factor in meeting the Rule 9(b) pleading standard, the Court ruled that by itself it is not enough.

This case marks the first time the Federal Circuit has ruled conclusively on whether false marking is subject to the pleading standards of Rule 9(b). In determining that the heightened standard of Rule 9(b) is necessary, courts will now have an easier time dismissing false marking cases deemed to be frivolous.