Posts Tagged ‘patent infringement’

Patent Grabs Continue – Why?

Thursday, 12 April, 2012 06:00 Written by Dan Pierron 0 Comments
Share via email

The latest major acquisition of patents by a big computer software corporation has been agreed to between AOL and Microsoft.  The sticker price this time: $1.06 billion.  The purchase includes more than 800 patents, putting the per-patent price north of $1 million.  On the heels of purchases by Google, buying Motorola Mobility and its attending intellectual property, and the Nortel portfolio sale, major corporations continue building their IP war chests.  More than this, they are doing so largely by raiding the portfolios of other large companies that are either distressed or worse.  If it has its way, Kodak will be the next big seller.  The question becomes: to what end?

In the battle between tech giants, the power afforded by a patent potentially allows the owner to prevent the manufacture, import, or sale of products that infringe the invention described in the patent.  Scale this power by the thousands of patents owned by companies like Google and Apple, and the opportunity to hobble a competitor is manifest.  Hence, tech companies are tripping over themselves to amass greater and greater numbers of patents in the areas of electronics, software, and, as in the case between AOL and Microsoft, advertising.  Given the numbers of patents owned by the major players, and the complexity of a given product, it’s a safe working assumption to say that every major product released by the likes of Apple, Goole, Microsoft and others of that ilk infringe on at least one patent owned by a competitor.

So what is keeping patent owners at bay, permitting infringing products to enter the market?  Essentially, mutually-assured destruction.  Given an increasing number of patents owned by a given competitor, the probability of that competitor owning a product that one or more of your products infringes approaches 1.  If one tries to assert patent rights, that will in turn spur a counter-assertion.  This gives rise to a stand-off; although there is potentially much to be gained by excluding a competitor’s product from the marketplace, the consequences of that action could substantially outweigh the benefits.

 

Continuing the Cold War allusion, patent acquisitions like those mentioned above are tantamount to an arms race between nations.  Nobody wants to be left behind, so everyone commits more and more resources to protection.  Consortiums are even arising, akin to treaty organizations, to the chagrin of those that are excluded.  In sum, barring major changes in the philosophy in the business practices driving the tech industry, the one with the biggest patent portfolio looks to be king of the hill.

Does My Patent Infringe On Another Patent?

Friday, 06 April, 2012 05:45 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

My last article discussed the possibility of obtaining a patent, but that the patent may still infringe on the claims of an existing patent.  Yes, this is a rare situation, but one that is possible nonetheless.

The scenario that was laid out in the last article indicated that you have invented a chair with five legs.  The clear advantage is that this chair is much more stable than the typical chair that you normally sit on with four legs.  You have now filed a patent application on your chair with five legs.  During the examination, the Examiner has cited a chair with four legs as prior art.  Although the Examiner allows your patent, the Examiner indicates in the “reasons for allowance” that none of the cited prior art discloses the advantageous fifth leg and, therefore, the claims in your patent application define over the cited prior art.

Fantastic – you now have a patent.  You now also start manufacturing and selling your chair with five legs.  All of a sudden, you one day receive a letter from the owner of the patent on the chair with four legs.  The patent owner is accusing you of infringing on the claims of the patent, and instructs you to cease & desist from further infringement.  The letter explains that your chair, although it has five legs, still infringes on the claims of the patent.  It goes on to specifically indicate that your chair has four legs, and other stuff, i.e., a fifth leg.

Now you must engage in an investigation to make sure that the claims of the letter are founded.  You probably go to your favorite website on intellectual property, Tactical IP, or even your other favorite website on intellectual property, LegalTeamUSA, you will read one of my articles about what it takes to infringe a patent.  In the above article, it was noted that in order to infringe a patent, you must meet the claim limitations of at least one of the claims.  In other words, your invention has to include all of the elements of at least one of the claims in the patent.  You quickly figure out that your chair with five legs does meet the claim limitations.  Now what?

Now you engage in some sort of settlement negotiation that will hopefully end in a mutually beneficial license for you to continue manufacturing and selling your very lucrative chair with five legs.  You also do some investigation into the success of the patent on the chair with four legs.  Perhaps there is a cross licensing opportunity here.  I will discuss cross licensing in another post.  In short, cross licensing is where you grant a license to the owner of the patent on the chair with four legs a license to your patent so that the four leg chair patent owner can make chairs with five legs, and the four leg chair patent owner grants you a license so that you can continue to manufacture and sell your five leg chair patent.  Much of this is also laid out in my article about the various ways to make money from your invention.

Now you are asking how this could have been avoided.  The answer is a clearance search – also known as a freedom to operate search.  These searches are quite thorough and quite expensive.  This is a really good article on patent searches on IPWatchdog.  I will go into more detail about clearance searches in another post.  Until then, happy inventing!

What It Takes To Infringe a Patent

Friday, 23 March, 2012 05:00 Written by Mark Malek 0 Comments
Share via email

By: Mark R. Malek

My last article discussed the permissibility of designing around a patent. To summarize, in order to design around a patent, also known as reverse engineering a patent, the product/device/method, etc., in question must not include all of the elements of just one of the claims of the patent in question.  If your product includes three of the four elements that can be found in the claims, then you should be in the clear.

Naturally, the next question comes from the perspective of the patent holder.  At this point, the patent holder may have discovered your invention that has purportedly designed around the patent.  The only issue is that the patent holder does not necessarily believe that your invention does design around the patent.  More particularly, the patent holder thinks that your invention reads on at least one of the claims in the patent.  Time to conduct an investigation.

The investigation for the patent holder is very similar to the investigation that I discussed in my previous article about designing around a patent.  In other words, the patent holder’s first step should be to create a claims chart and analyze every element of each claim to make sure that the allegedly infringing device meets all the claim limitations.   Please don’t begin to think that I am insisting that the patent holder much go through the chore of doing a claims chart – it is just that I cannot think of a better way to ensure that the patent holder is sure that the device in question actually infringes.  When analyzing the limitations of the claim, the patent holder may try to broadly interpret certain portions of the claims, i.e., the patent holder may try to give some elements of the claims a broader interpretation than would be normally provided just by looking at the English language.  This could be possible depending on the way that these terms are defined in the specification.  For example, suppose that one of the elements of the claim is that a portion of the device must have a rounded shape, but in the specification, there is a specific note that although the device is depicted as having a rounded shape, the term “rounded shape” is intended to include shapes that have rounded corners.

Prosecution history estoppel, however, is something that could prevent broader interpretations of claims, but that is a topic for another article – actually, it is a topic that can fill up several articles.  For more information on prosecution history estoppel, check out this article by Gene Quinn on IPWatchdog, which includes a discussion on the doctrine of equivalents.  A more updated article on the doctrine of equivalents can be found here.

As you can see, the analysis for the patent holder is similar.  In short, if the allegedly infringing device does not include all of the elements of at least one of the claims, then the patent holder should not go running down the path of patent infringement yet.  In another article, I will start to discuss the various options available for the patent holder once it is determined that the device in question does infringe.  In that article, I will also discuss some strategies (all opinion) for patent holders that find a device that is pretty darn close to the claims of the patent.

 

How To Design Around a Patent

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

By: Mark R. Malek

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.

THE KING OF BEERS IS A PATENT INFRINGER?

Tuesday, 13 December, 2011 18:40 Written by danieldavidson 0 Comments
Share via email

By Daniel Davidson

Every morning during the week, I peruse a list of the previous days lawsuits that were filed against alleged patent infringers.  Most mornings, while sipping a cup of black coffee, I lazily move from one case to the next, with no real enthusiasm.  Today, was different.

My eye was caught by a case that included defendants Anheuser-Busch Companies, LLC, Amstel Brewery, Brown-Forman Corporation d/b/a Jack Daniels Beverage Company, Heineken, etc.  As I am sure may have crossed your mind, my thoughts were, “what might all these fine beverage companies be doing that would be infringing on a company’s, called Laughing Gas Enterprises, LLC, patent?”  Upon further investigation, and another cup f coffee, it proved to be nothing to do with an ice cold substance at all.  Instead, Laughing Gas Enterprises, LLC, in their four page complaint, allege that the bottling companies are infringing on patent 7,967,945 for Cross-Carrier Content Upload, Social Network and Promotional Platform.

The short and sweet complaint complains that the beverage kings are stepping on their patent through their conducting of a promotion which infringes a claim of their patent.  No particular claim is mentioned, but from reading the patent, I would assume it has something to do with uploading pictures.  I anticipate motions to dismiss and/or motions for more definite statements from the defendants in this case.

All this talking about alcohol has got me ready to change out the coffee mug with a sweat.  I hope this information finds you well.  Cheers.

« Older Entries

FRIDAY, MAY 18, 2012

Bad Behavior has blocked 1146 access attempts in the last 7 days.