Patent Law Practice Center

Reexamination Requests Filed the Weeks of August 16th and 23rd

Here is the latest  installment of Reexamination Requests from Scott M. Daniels, of Reeaxamination Alert and Practice Center Contributor which includes the requests for the weeks of August 16th and August 23rd….

Reexamination Requests Filed the Week of August 16^th

Most notable among last week’s requests is one filed by Sprint attacking an EMSAT patent for a cellular telephone system.  EMSAT’s patent is the subject of no less than eight separate law suits.  Let’s not forget Rambus, whose patents are reexamined more often than those of any other company.  Last week the requester was Hynix, not NVIDIA.

The following inter partes requests were made:

(1)  95/001,420 (electronically filed) – U.S. Patent No. 6,163,816 owned by FlashPoint Technology, Inc. and entitled SYSTEM AND METHOD FOR RETRIEVING CAPABILITY PARAMETERS IN AN ELECTRONIC IMAGING DEVICE.  Filed August 18, 2010.

(2)  95/000,562 (paper filed) – U.S. Patent No. 7,002,533 entitled DUAL-STAGE HIGH-CONTRAST ELECTRONIC IMAGE DISPLAY.  Filed August 2, 2010 by Dolby Laboratories, Inc. Read the rest of this entry »

CAFC Rules For False Marking Plaintiff In Stauffer Case

Written by Scott Daniels (partner in Westerman Hattori Daniels & Adrian and Practice Center Contributor)

The CAFC (Lourie, Rader & Moore) today removed one of the major hurdles facing individuals pursuing qui tam actions against others for false patent marking.  In Stauffer v. Brooks Brothers, the CAFC ruled that 35 U.S.C. § 292 permits individuals to “stand in the government’s stead, as assignees of the government’s own claims.” There is no requirement for standing under Rule 12(b)(1) that the individual qui tam plaintiff have, itself, suffered injury from the alleged false marking.

Raymond Stauffer had sued Brooks Brothers and its parent company, Retail Brand Alliance, for marking the mechanism on their bow ties with the numbers of two patents, both of which had expired in the 1950’s.  Stauffer asserted that this identification of the patents constituted false marking under § 292, which provides for a fine of not more than $500 per violation.  It also provides that “any person” may sue for that fine, splitting any recovery with the United States.

Defendants moved to dismiss under Rule 12(b)(1), arguing that Stauffer lacked standing.  The trial judge first stated that Stauffer, as a qui tam plaintiff representing the United States, must establish that U.S. has suffered “an injury in fact,” that the injury was caused by Brooks Brothers, and that a court could redress that injury.  The trial judge then found that Stauffer had failed to allege injury to the U.S. in his complaint, and any assertions that Stauffer himself had been injured would not satisfy the standing requirement.  The judge therefore dismissed the case. Read the rest of this entry »

Federal Circuit Restricts Joint Infringement Doctrine in Golden Hour Data v. emsCharts

Brandon Baum, partner in Mayer Brown and Practice Center Contributor, passed along this analysis on the Federal Circuit decision Golden Hour Data Systems, Inc. v. emsCharts, Inc.

In the recent case of Golden Hour Data Systems, Inc. v. emsCharts, Inc., the Federal Circuit reiterated—and arguably restricted—its jurisprudence concerning “joint infringement.”  The joint infringement doctrine is an exception to the general rule that “[d]irect infringement requires a party to perform or use each and every step or element of a claimed method or product.”  BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007).  Where the steps or elements are performed by multiple actors, there may still be a finding of direct infringement under the joint infringement doctrine if the accused infringer had “direction or control” over the other actors.  Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008).  In a 2-1 panel decision, the court found that the fact that the defendants collaborated to sell their software together as part of a “strategic partnership” was insufficient, as a matter of law, to establish joint infringement.

In the underlying district court case, plaintiff Golden Hour Data Systems, Inc. (“Golden Hour”) accused two defendants, emsCharts, Inc. (“emsCharts”) and Softtech, LLC (“Softtech”) of acting jointly to infringe its patent (U.S. 6,117,073) on systems and methods for emergency medical management.  emsCharts provides software that charts patient diagnosis and billing information, but does no flight dispatching.  Softtech provides flight dispatch software used in emergency helicopters to coordinate patient pickup and delivery, but offers no billing, charting or diagnosis.  emsCharts and Softtech formed a strategic partnership to enable their two programs to work together, and collaborated to sell the two programs as a unit. Read the rest of this entry »

Patent Reexamination As A Form Of Litigation Damage Control

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Threat of Injunction Dissolves in Flexiteek Litigation

The initiation of patent reexamination for patents subject to concurrent litigation can provide strategic benefits independent of the ultimate outcome of the reexamination. These litigation inspired applications of patent reexamination can be thought of as falling into one of two categories, namely, pre-trial maneuvers or post-trial, damage control.

Pre-trial Maneuvers are those patent reexaminations initiated to potentially enhance a defendant’s battle in the district court.  For example, patent reexamination may be sought as an avenue to establish objectively reasonable behavior for use in preventing a willfulness finding. (see e.g., the yesterday’s Fairchild Semiconductor press release). Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional fodder for claim construction, or to demonstrate the materiality of a reference subject to an inequitable conduct defense.

Post-trial (damage control) on the other hand, is a litigation inspired use of patent reexamination that seeks to undo the damage inflicted by the ruling of the district court. One of the more well known uses of a patent reexamination filed after a district court judgment was illustrated in In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Translogic had secured an earlier verdict for significant damages against Hitachi, the appeal reached the CAFC at the same time as the appeal rejecting all claims in reexamination, as a result, the infringement verdict was vacated. Read the rest of this entry »

The Role for Open Source in Paradigm Shifting Innovation

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

My writings about open source and software patents have earned me a special place in the hearts and minds of those who harbor irrational hatred of software patents. But I am here to tell you that open source is not all bad and, in fact, should be embraced. Open source, however, is hardly something new to the patent community. Perhaps it is better to say that where open source software is heading is nothing new, and it will come as a shock to those who hate patents, but patents will be completely necessary in order for the open source community to continue to advance and live up to its full potential.

Of course, many in the open source community simply do not want patents and would rather they go away altogether. They choose to believe that “innovation” is synonymous with “independent creation,” which is just straight up intellectually dishonest. In order to innovate one must create a new device or a new process. Simply stated, copying the work of others is not innovative; and neither is ignoring what others have done and independently creating something with careless disregard of whether it is new or used. Read the rest of this entry »