Patent Law Practice Center

YouTube Attacks On Pragmatus’s Media File Storage Patents Among Reexamination Requests Filed Week Of 6/6/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Earlier this year, Pragmatus sued Facebook, LinkedIn, Photobucket, and YouTube for infringing three patents for systems for storing media files.   YouTube has now requested reexamination of those patents (see inter parte Request Nos. (6), (8) & (9)).

Apple has requested reexamination of Softview’s U.S. Patent No. 7,831,926 related to systems for “zooming and panning” images from the Internet on mobile devices.  Softview has sued Apple and AT&T Mobility in Delaware for infringing the ‘926 patent.  Softview is also involved in a separate case with HTC in Washington state regarding the ‘926 patent.

IDT requested reexamination of Alexsam’s U.S. Patent No. 6,000,608 which relates to activation of “stored value” card (see ex parte Request No. (3)). In February, Alexsam won a $9.06 million jury verdict against IDT in the Eastern District of Texas for infringement of the ‘608 patent and a second patent. Read the rest of this entry »

Judicial Panel: Best Practices in IP Litigation (Part 2)

R. David Donoghue, author of Chicago IP Litigation blog and Practice Center Contributor, recently attended the 9th Annual Rocky Mountain IP & Technology Institute.  David will be writing several articles discussing highlights from the Institute.  In the first of the series, David focuses on the Judges panel wherein they discussed best practices in intellectual property litigation.

One of the highlights of the Institute was a panel of sitting and retired federal judges sharing their views on intellectual property litigation, with a focus upon patent litigation. What follows is the second and final installment of the highlights from that panel. Last week, I provided highlights from Judge Philip Brimmer (D. Col.) and retired Judge James Rosenbaum (D. Minn.).  What follows is the highlights of the thoughts from the two other panelists, Magistrate Judge Boland (D. Col.) and retired Judge McKelvie (D. Del.). Read the rest of this entry »

Microsoft v. i4i – The Supreme Court Keeps the Clear and Convincing Standard

In the Microsoft Corp. v. i4i, the Supreme Court had to determine whether the burden of proof for parties alleging patent invalidity should be changed from a clear and convincing standard to a preponderance of the evidence standard.  Yesterday, the Court unanimously decided no!!  Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP, sent in this article discussing  the decision and possible ramifications.

Yesterday in Microsoft v. i4i __ U.S. __ (2011)(Sotomayor, J.), opinion below, i4i Ltd. v. Microsoft Corp., 589 F.3d 1246 (Fed. Cir. 2009)(Prost, J.), the Supreme Court gave a unanimous decision affirming the Federal Circuit’s interpretation of 35 U.S.C. §282 requiring clear and convincing evidence for an invalidity defense.

The statute at issue was 35 U.S.C. §282 which states:

A patent shall be presumed valid…. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity. Read the rest of this entry »

Patent Reform Update: Will the House Pass America Invents Act?

The U.S. Senate passed its version of patent reform, S. 23, in March, and on April 14, the House Judiciary Committee advanced H.R. 1249, sending the revised legislation to the House floor for further debate and a vote on the long-awaited bill’s final passage. The  House vote is expected some time next week.

While the Obama Administration endorsed the latest patent reform proposal last week, saying it would strengthen patent rights and finally grant the USPTO the power to set its fee rates and spend the fees it collects; heads of the U.S. House of Representatives Budget and Appropriations committees said Tuesday that proposed patent reform legislation would give the agency too much power.  Just how this weeks developments will effect next week’s expected House vote remains to be seen.

Check out the following blogs, video and more on the latest Patent Reform news. Read the rest of this entry »

Stanford v. Roche and Ownership of Federally Funded Research: Navigating the Vagaries of Contract Law

Mary Hess Eliason, an Associate with Birch Stewart Kolasch and Birch, sent in this article discussing the recent Supreme Court decision of Stanford v. Roche .  The article highlights key points in both Chief Justice Roberts’ majority opinion and Justice Breyer’s dissent and questions whether this case presented the appropriate fact situation to address the issues at hand.

When an invention is conceived, it is generally presumed to be owned by the inventor under U.S. patent law.[1] The Supreme Court Opinion of Stanford v. Roche reinforces this maxim in the context of federally funded research.  The issue brought before the Supreme Court was, in the context of federally funded research, whether the ownership of the invention automatically arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with any right of the federal contractor by assigning the invention to a third party.[2]

In their recent majority opinion, the Supreme Court decided that, based on contract law, an Inventor could assign an invention to a third party, even if the invention was federally funded under Bayh-Dole. Read the rest of this entry »