Patent Law Practice Center

ITC Finds Kodak’s Digital Capture Patent Invalid

On May 21, 2012, the U.S. International Trade Commission’s Judge Thomas Pender issued a notice in the patent infringement battle brought by Eastman Kodak against Apple, Inc. and Research In Motion, Ltd. The decision noted that Apple and RIM infringed upon one of the claims in Kodak’s digital capture patent, but that Kodak’s patent was invalid because of the “obviousness” of claim 15 of the patent. As such, Apple and RIM did not violate 19 U.S.C. § 1337(a)(1) with respect to Kodak’s patent.

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NPE Gets Crafty, Sues Etsy For Patent Infringement

For those who haven’t searched for handmade crafts online, Etsy.com is possibly the most popular online marketplace for handmade and vintage goods. Etsy Inc., a Brooklyn-bred start-up, provides users the opportunity to buy and sell crafts online. The Wall Street Journal recently reported that the company raised $40 million from their existing venture capital investors and now has an estimated value of $600 million dollars. It is of no coincidence then that a non-practicing entity waited only a week after the investment news to file a patent infringement claim against Etsy Inc. (more…)

Crowd-Sourcing for Prior Art

A recent Wall Street Journal article takes a look at the latest application of crowd-sourcing, this time within the patent industry. As the patent wars rage on, tech companies are soliciting help from the public to crowd-source evidence of prior art. Such evidence is used in patent infringement litigation to invalidate the patents these tech companies are allegedly infringing. The article highlights Article One Partners LLC, a New York-based company hired by major tech-companies to conduct research or prior art in hopes of invalidating the underlying patent.

Here is an excerpt from the Wall Street Journal article entitled, Tech Firms Crowd-Source to Fight Suits, which can be read in full here.

Article One, a New York-based company founded 3½ years ago, opened its Silicon Valley office last August in Palo Alto and has benefited as patent suits have proliferated in the region. With tech companies chasing hot technologies like smartphones and social networking, rivals are increasingly looking to settle their differences in court. Article One says its largest concentration of clients—some 15%—are in Silicon Valley.

Overall, about three-quarters of Article One’s cases are related to high-tech. The site currently features studies seeking prior art on technologies ranging from virtual keyboards to digital payments. Clients pay about $25,000 a study, or they pay varying annual subscription fees. The amount includes the awards for the people who find the best research.

Twitter’s Innovator’s Patent Agreement: The Future or Foolish?

Tech companies’ battles over patent portfolios have become the new norm in patent litigation. Yahoo sued Facebook over the alleged infringement of 10 patents, Oracle and Google are battling over operating system patents, Apple and Samsung have patent litigation in 10 countries simultaneously, and Microsoft just purchased 800 patents from AOL for over $1.1 billion dollars. We have previously reported on the growing use of patents as more than just defensive tools. But last week, Twitter announced it would not participate in such litigation.

Twitter’s Innovator’s Patent Agreement proposes that if a patent is assigned to Twitter, Twitter promises it won’t use that patent to sue anyone, except for defensive purposes or unless the engineers grant permission to the company to do so. According to Twitter’s announcement,

The IPA is a new way to do patent assignment that keeps control in the hands of engineers and designers. It is a commitment from Twitter to our employees that patents can only be used for defensive purposes. We will not use the patents from employees’ inventions in offensive litigation without their permission. What’s more, this control flows with the patents, so if we sold them to others, they could only use them as the inventor intended.

This is a significant departure from the current state of affairs in the industry. Typically, engineers and designers sign an agreement with their company that irrevocably gives that company any patents filed related to the employee’s work. The company then has control over the patents and can use them however they want, which may include selling them to others who can also use them however they want. With the IPA, employees can be assured that their patents will be used only as a shield rather than as a weapon.

Twitter’s proposed patent litigation model has received support as well as criticism. Supporters applaud Twitter for actively promoting creativity and innovation via its promise to not actively pursue legal recourse. Such a business model also reduces the amount of money spent by the company for litigation. Critics, including frequent PLI speaker Mark Radcliffe, on the other hand, question whether Twitter made a wise decision considering they could end up needing to pursue patent infringement litigation in the future. By granting technology engineers with the right to veto a legal action, Twitter would essentially be granting the power to make legal decisions to non-lawyers. Meanwhile Twitter’s plan gets implemented, the patent wars will rage on in courts all over the world. Time will tell what impact Twitter’s stance will have on patent litigation.

David Boies Argues for a Second Bite of Apple

Written by Brandon Baum,  of Agility IP Law and Practice Center Contributor.

Readers of this blog will recall that Mirror Worlds won a $625 million jury verdict against Apple, only to have it taken away in post-trial motions.  The trial judge found that Mirror Worlds had neglected to introduce evidence of direct infringement of the asserted claim by any end-user, observing “Mirror Worlds may have painted an appealing picture for the jury, but it failed to lay a solid foundation sufficient to support important elements it was required to establish under the law.”  Therefore, the damage award could not be sustained and Mirror Worlds was left with nothing.

Mirror Worlds retained David Boies of Boies, Schiller, who argued for reversal before the Federal Circuit on March 8, 2012.  Boies was somewhat hamstrung, however, because the record is the record and good oral advocacy cannot overcome an absence of evidence that end-users of Apple products actually used the patented invention. So Boies took a clever tack—combing the record for evidence that Apple itself had infringed, and therefore the trial court was in error, at least to the extent that it concluded that there was no evidence of infringement by any end-user.

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