How To Design Around a Patent

Friday, 16 March, 2012 05:55 Written by Mark Malek 2 Comments

In this weeks episode of the question that I recently had to field at Zies Widerman & Malek is whether or not it is permissible to design around a patent. The short answer is OF COURSE! How else is there to be progress? How else can inventions get improved? This is the reason why people have come up with the better mouse trap, right – in other words, inventors have constantly improved that which came before them. How else did we evolve from the original Apple computer to this tiny little MacBook Air that I am writing this article on while sitting inside of an airplane?

A simple “yes” to the question obviously is not enough. How much is enough to design around a patent? How much do you have to change? If I hear the “10% rule” one more time, I’m going to hunt down the crazy person that started it, and do some damage. Where did that one come from? I suspect it was on the “internet” and, therefore, it must be true. There is no such thing as the 10% rule. In case you are wondering, this is the rule that several clients have told me about and wanted to know how to calculate 10%. The rule, apparently, is that all you have to do is change your invention by 10% in order to get around someone else’s patent. I have also been informed that the same applies to copyright infringement. Once and for all – THIS IS NOT TRUE. Please do not expect an attorney to go to court with that argument.

When looking at a patent, go to the end. You will notice a little section that is referred to as the claims. The claims of a patent application can be described as the “property boundary” of the patent. For a really good overview of patents, see Gene Quinn’s articles on IPWatchDog.com. The claims are the way that the invention is defined in words. The claims set forth the limitations of an invention, and defines the elements that make up the invention. For example, suppose you have invented a widget. The claims would indicate that the invention is a “widget that comprises elements A, B, C and D arranged in a particular way.” Yes, this is an extraordinarily simplistic way of describing a claim, but it’ll make sense in a second.

If you ask your attorney to determine if your invention reads on the claims of a patent, or if you have successfully defined around the claims of the patent, your patent attorney should set up a claims chart. The claims chart will likely break down the claims in a spreadsheet and try to analyze whether or not your invention includes each and every single element that is listed in the claim for the widget. If your invention is a widget that also includes elements A, B, C and D, arranged in the same way as in the claims of the patent, then you have not designed around it. Suppose, for example, you have replaced element C with element E? Now you are probably onto something. The analysis should not conclude there. You should continue the analysis to make sure that element C cannot be read broadly enough to include element E. This can usually be found in the specification, i.e., the rest of the patent. If there is a sentence in there somewhere that reads something like “those skilled in the art will appreciate that element C is meant to include element E” then you probably have not done enough.

Obviously, I can write about this topic forever, but I promise to put up some follow up articles on designing around a patent – also known as reverse engineering. In short, I hope that you take the following away from this article: It is permissible to design around a patent, but the process is not a simple one. Be very careful in what you are doing and how you are defining your invention.

Aspiring Patent Troll Yahoo Shakes Down Facebook

Monday, 12 March, 2012 06:00 Written by Aaron Thalwitzer 3 Comments

On the eve of Facebook’s heralded IPO, Yahoo is trying to shake down Facebook, demanding payment for infringement of 10-20 of its patents. Yahoo and Facebook had been buddy-buddy until Yahoo made its move, but this will at least shake things up.

Yahoo, after all, is largely irrelevant to most internet users. Aside from sending email to people who haven’t yet switched to Gmail and the occasional news article, I have not used Yahoo in years. Yahoo knows that if it can’t do an about-face now, it is on the decline. It’s only a matter of time until it is absorbed by company for essentially the value of its intellectual property (i.e., RIM, Kodak, Nokia). Seeking to reap a bid-pay day, a la the pre-IPO settlement Yahoo made with Google, whereby Google gave Yahoo 2.7 million shares in a patent settlement before the search giant’s 2004 IPO. Investors do not want the uncertainty of litigation when they buy chunks of a $100 billion company. If the prospective suit has merit – and I have no idea whether it does – Facebook will probably settle. It can afford it, and historically it has been conservative with patents, knowing that it has a relatively weak inventory of its own.

Yahoo is not keeping this a secret. On the contrary, Yahoo has told the NY Times that the two companies met, and that Yahoo, “We must insist that Facebook either enter into a licensing agreement or we will be compelled to move forward unilaterally to protect our rights.”

Yahoo’s shareholders, who will probably get a short-term dividend, should be worried; Yahoo’s innovation ended about 10 years ago. Facebook is already ten times Yahoo’s size, and keeps innovating (for better or worse).

More analysis from a guy who called this a mile away: Techcrunch.

SOPA and PIPA vs The Internet: The Epic Copyright Battle

Wednesday, 18 January, 2012 15:40 Written by Danie Roy 2 Comments

Danie Roy

Before we begin, I’d like to make some statements that you may remember from when I discussed embryonic stem cells: this article is largely meant to be informative, although it is very difficult to stay completely unbiased when I am informing you about the opinions of other people. I apologize in advance if my own opinion shines through too brightly, largely because this seems to be an issue that is polarizing people more than stem cells ever could. Add the previous sentence to the list of things I never thought I’d say. Then again, this is the internet.

By now, you’re probably aware that you can’t access Wikipedia or Craigslist as you normally would. You’ve gone to see teh lolcats or hang with your bronies, and you’ve been greeted with a popup begging you to take action. The Google doodle is now a black box. Even the news stations are talking about the sites going down. What’s going on? Just a preview of what could happen if SOPA and PIPA pass in their current forms.

SOPA and PIPA are bills in the House of Representatives and Senate, respectively, that were intended to stop online piracy from overseas sites like The Pirate Bay. Currently, nobody can touch The Pirate Bay, as evidenced by their response letters (or, as Scott called them, f/u letters). The language of the bills is entirely too broad, however, and reeks slightly of “did not do the research.” For instance, you don’t have to infringe to be taken down, you just need to be capable of infringing: that is, have a comment box, text, links, a link to someone else’s link, etc. And you may be guilty until proven innocent.

These are popping up everywhere today.

I’ll be the first to admit that most people have no idea what’s going on in Congress most of the time. I personally would rather read image file wrappers, watch paint dry, or have a root canal than watch C-SPAN. It’s boring, and in a language called “legalese.” Great for curing insomnia, though.

Before I get too far into this, I’m going to be perfectly clear: I am FOR protecting intellectual property. I’d be an out-of-work hypocrite if I wasn’t; protecting intellectual property is my job as a patent agent. However, I personally believe that SOPA and PIPA can’t protect intellectual property in their current forms.

Here’s why people are protesting and your favorite sites are dark:

A site does not necessarily have to infringe to be taken down. A site that could infringe, in other words, has a comment box, links, or any upload capability, can be targeted.
If you’ve been accused, there is no real defense: you’re assumed guilty until proven innocent, and the bill makes proving yourself innocent extremely difficult. In order to be innocent, your website must not have the functionality to infringe; which of course, all websites have. So, you’re either infringing or you’re perjuring yourself. Take your pick.
Takedowns are incredibly easy to initiate. The RIAA already has a history of using questionably ethical legal tactics to take out legitimate businesses. Imagine what they can do with SOPA and PIPA on their side.
Ever posted anything to any website? YouTube, ICanHasCheezburger?, even Facebook? Yep, you’re a potential target.
Ever used Gmail, Yahoo! mail, or AOL mail? Same deal.
Fair use will be practically considered obsolete… and ignorance will not be a defense.
Anyone working for the government (like our wonderful Congresspeople) is immune from the consequences of violating SOPA and PIPA.
The link I posted to the f/u letters? That could be a violation of SOPA/PIPA, due to The Pirate Bay’s unsavory activities.
Earlier versions (and possibly later versions) allowed for destabilizing the infrastructure of the internet in order to “protect” IP. That is, addresses could be removed from the universal internet lookup system, DNS, which would make site spoofing that much easier… hello viruses and stolen personal info!

To quote a godly entity, you “should pretend like it is a big deal, because it is.” Whether you’re for or against SOPA/PIPA, you really need to speak up about this issue. It affects the internet as we know it, and it affects intellectual property, too. If you’re like me, you’re for protecting intellectual property, but against seriously inhibiting the free flow of the internet.

Wikipedia’s two working English pages: SOPA and PIPA

LA Times: Three congresspeople drop support, including FL Senator Marco Rubio

PCWorld’s rather factual take

I Got Sued By A Copyright Troll, Part IV: Discovery Shenanigans

Monday, 26 December, 2011 05:55 Written by Aaron Thalwitzer 0 Comments

We’ve discussed the basics of pre-suit strategy, defenses both procedural and on the merits. Now let’s follow these cases through their usual trajectory to try and answer a common question: “What if I don’t settle AND the troll obtains my identity from my ISP?” We know that the IP address often leads to a rabbit hole of defenses, so where will they go next? Surely they don’t expect a defendant to personally admit to infringement — in fact, the defendant may assert his or her Fifth Amendment right not to incriminate him or herself, since there are potential criminal penalties for copyright infringement. But there are other ways to discover what’s lurking in a defendant’s closet, so to speak.

I will rule out depositions, requests for admissions, and interrogatories, since the Fifth Amendment may be asserted in most of these cases. (But note that in civil cases, there is no Constitutional prohibition on inferring a reasonable adverse inference from a party’s invocation of the privilege. This is the subject of many a law review article, the telling of which I will mercifully spare you. See Baxter v. Palmigiano, 96 S. Ct. 1551 (1976).). The trolls will serve requests for production of documents, inspections of defendants’ computers and other digital devices, and subpoenas to produce documents and other things. It’s asking a lot from a judge to inspect all connected devices in a home after already having asked for the identities of defendants based solely upon an IP address and the name of the ISP account holder (the “subscriber”). It’s not that it’s unusual to inspect hard drives the like, but to do all this without even knowing who did it is pushing the limits of most judges willingness to exercise their sound discretion. Even if such discovery is ordered on an expedited basis, it only takes a few minutes to destroy a computer, as one alleged doe defendant reportedly said he’d do. Without inspecting the connecting devices, the troll will probably find it very difficult to prove the infringer’s identity.

This begs the question: Why do the demand letters demands thousands of dollars from YOU (the subscriber) pay thousands of dollars for the infringement that YOU, if the troll, even with the identity of the subscriber, is still unable to determine who is responsible?

Early discovery, that is, generally, before a Rule 26(f) conference, discovery is only granted in limited circumstances. “As a general rule, the use of “John Doe” to identify a defendant is not favored. However, situations arise . . . where the identity of alleged defendants will not be known prior to the filing of a complaint. In such circumstances, the plaintiff should be given an opportunity through discovery to identify the unknown defendants, unless it is clear that discovery would not uncover the identities, or that the complaint would be dismissed on other grounds.” See Gillespie v. Civiletti, 629 F. 2d 637 (9th Circ. 1980). The truth is, judges could go either way on this.

For reasons already discussed, if you get a subpoena from your ISP, call a lawyer! (unless you don’t mind being forever attached to a copyright infringement lawsuit related to porn).

Disney Goes After Pixar Petroleum for Trademark Infringement

Friday, 09 December, 2011 09:38 Written by Mark Malek 1 Comment

By: Mark R. Malek

If you have read my articles in the past, you may have figured out that I frequent the Disney Theme Parks often, and I watch most all of the Pixar movies (see my most recent article about Disney here). I would like to blame that on my kids but, in all honesty, I was a Disney season passholder and a fan of the Pixar movies long before I had kids. I do like most of the Pixar movies (with exception to Wall-E) and, since Steve Jobs was a majority stakeholder in Pixar, I was somewhat saddened by his passing last month.

I came across a story last week in the Wall Street Journal that caught my eye. As it turns out, an oil and gas company in Calgary, Alberta announced that it would organize its oil sands and carbonate bitumen interests into a subsidiary called Pixar Petroleum Corp. Even more interesting, however, is the name of Pixar Petroleum’s parent company – Paramount Resources Ltd. The article went on to note that Paramount Resources Ltd. also has a subsidiary named Fox Drilling Inc., and maintains an interest in MGM Energy Corp.

It seems to me that this is just a group that gets a kick out of choosing names for their companies that are similar to those of the movie industry. Who knows, maybe these folks are big movie fans. It is not as though the names are not famous. Most everyone has seen a movie made by one of these companies in the past few years. Disney Enterprises, Inc. owns a slew of trademarks on the Pixar name. There are several different variations, each directed to the different movies that Pixar has created. It is amazing to me that nobody at Pixar Petroleum stopped for a second and thought, “maybe Disney is not going to like this so much.” Besides Google and probably GE, is there another company that has deeper pockets that you are looking to pick a fight with? Probably not.

I understand that the argument for Pixar Petroleum to attempt to make is that there is no likelihood of confusion between the entertainment industry that Disney is involved in with the petroleum industry that Pixar Petroleum is involved in. The analysis does not end there. There is a trademark dilution issue that has to be addressed. Rene Dial has posted some articles on trademark dilution (see here and here). The Wall Street Journal article cited attorney Gloria Phares who noted that “just because you have a mark in one area, like in animation, doesn’t mean you have a monopoly on a mark.” Gloria’s analysis is correct, but I really hate the use of the word monopoly when referring to intellectual property.

Technically speaking, intellectual property rights do not provide a monopoly to the owner. Instead, it provides the owner with the right to exclude others from using their intellectual property. I know that you are now saying “what’s the difference?” The difference, especially in patent law, is that intellectual property does not give you the right to make and sell whatever you have protected – it merely gives you the right to exclude others from doing so. It is a subtle difference, but it is a difference nonetheless. Over time, however, it seems as though intellectual property owners have tried to over force and over interpret the rights that they have. This behavior is, in my opinion, improper, and is the driving force for much opposition to intellectual property rights. This discussion has to be saved for another article – possibly a series of articles.

Back to the issue at hand – perhaps, as indicated in the Wall Street Journal Article, this was a jab at Disney and Pixar for their recent jabs at big oil. The plot of Cars 2 (which I saw in the theater with my kids…twice) revolved around big oil trying to destroy a new company that was introducing alternative fuel. Yes, it was a bit difficult for the kids to follow, but all is forgiven when Mater does something funny.

Posts Tagged ‘intellectual property’

How To Design Around a Patent

Aspiring Patent Troll Yahoo Shakes Down Facebook

SOPA and PIPA vs The Internet: The Epic Copyright Battle

I Got Sued By A Copyright Troll, Part IV: Discovery Shenanigans

Disney Goes After Pixar Petroleum for Trademark Infringement

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