Patent Law Practice Center

Attack On Famous Funai Digital TV Patent Among Reexamination Requests Filed Week Of January 3rd

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

Funai’s U.S. Patent No. 5,329,369 for digital television picture compression has been the subject of three District Court cases and an ITC investigation.  In October, the PTO Board of Appeals ruled in a reexamination proceeding that claims 1-18 were invalid over the prior art.  Now, a third party has requested reexamination of the remaining ‘369 patent claims 19-29 for a video signal processor (see ex parte Request No. (8)).

Apple requested reexamination of MedioStream’s U.S. Patent No. 7,843,508 (see inter partes Request No. (4)), in response to MedioStream’s infringement action against Apple, Microsoft and others.

The following inter partes requests were filed:

(1)       95/001,518 (electronically filed) – U.S. Patent No. 7,037,321 entitled MEDICAL DEVICE WITH SLOTTED MEMORY METAL TUBE and owned by EVM Systems, LLC. Filed January 5, 2011, by.  The ‘321 patent is currently the subject of a litigation styled EVM Systems, LLC v. Cordis Corp. et al., (Case No. 6:10-cv-00437 (E.D. Tex.)). Read the rest of this entry »

Court Finds 25 Percent “Rule Of Thumb” To Be A Fundamentally Flawed Patent Damages Tool

Today’s guest post was written by our friends at Foley Lardner, Cynthia J. Franecki and Rebecca J. Pirozzolo-Mellowes.

In Uniloc USA, Inc. v. Microsoft Corp., ___ F.3d ___ (Fed. Cir. Jan. 4, 2011), the Federal Circuit addressed arguments relating to a number of damages issues. Most notably, the Federal Circuit held that the 25 percent rule of thumb often used by damages experts in patent infringement cases “is a fundamentally flawed tool for determining a baseline royalty rate in a hypothetical negotiation” and “inadmissible under Daubert and the Federal Rules of Evidence.”

Background

United States Patent No. 5,490,216, assigned to Uniloc, relates to “a software registration system to deter copying of software.” Uniloc accused Microsoft of infringing the ‘216 patent. In 2007, the district court granted summary judgment of non-infringement. Specifically, the district court concluded that the algorithm used in Microsoft’s technology was different from that claimed in the ‘216 patent. On appeal, the Federal Circuit reversed and remanded the case. Thereafter, a jury found: (1) the ‘216 patent valid and infringed, and that (2) Microsoft’s infringement was willful. The jury then awarded Uniloc $388 million in damages. Microsoft filed a number of post-trial motions, including a motion for a new trial on damages based on its assertion that Uniloc’s expert improperly relied on the 25 percent rule of thumb and the entire market value rule. The district court granted Microsoft a new trial on damages based on the improper use of the entire market value rule, but rejected Microsoft’s arguments regarding the 25 percent rule. Read the rest of this entry »

Reexamination Strategies Concurrent with Litigation

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

I.  The Multi-Purpose Litigation Tool

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 vehicle to stay a district court litigation. Still other defendants initiate patent reexamination concurrent with litigation as a mechanism to leverage more acceptable settlement terms, provide additional prosecution history for claim construction, avoid injunctive relief, demonstrate the materiality of a reference subject to an inequitable conduct defense, or establish objectively reasonable behavior for use in preventing a post-complaint willfulness finding. Read the rest of this entry »

Reexamination Requests Filed The Weeks Of December 20th and 27th

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

Tivo Attack On AT&T Network Tracking Patent Among The Reexamination Requests Filed The Week of December 20th

Earlier this year, AT&T Intellectual Property sued TiVo for infringement of U.S. Patent No. 6,983,478 entitled “METHOD AND SYSTEM FOR TRACKING NETWORK USE.”  TiVo, which has enjoyed success in earlier reexaminations, has now requested reexamination of AT&T’s ‘478 patent (see Inter Partes Request No. (4)).

The following inter partes requests were filed:

(1)         95/001,514 (electronically filed) – U.S. Patent No. 7,754,023 entitled COMPOSITIONS AND METHODS USING A MICROORGANISM CONCENTRATE FOR PAINT OVERSPRAY REMOVAL PROCESSES and owned by PPG Industries Ohio.  Filed December 22, 2010. Read the rest of this entry »

Supplemental Examinations to Consider, Reconsider, or Correct Patent-Related Information

The following article was sent in by Lisa A. Dolak , an Angela S. Cooney Professor of Law, Syracuse University College of Law and Practice Center Contributor.

A recent legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.”  It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination.

The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges.  Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to provide patent owners a forum for effectively purging the taint associated with undisclosed or misrepresented information, it raises a number of questions, including questions relating to potential disciplinary consequences for practitioners. Read the rest of this entry »