Sunday, August 29, 2010

The Patent Battles Have Begun

2 recently filed, and large, patent cases have made the news lately.  NPR referred to one of them as the "a full employment act for patent attorneys."

Interval Licensing LLC v. AOL, Inc. et al, Case No. 2:10-cv-01385 (W.D. Wash)

Paul Allen (co-founder of Microsoft), sued 11 companies.  You know all of them:  Apple, AOL, eBay, Yahoo, Google, Netflix, Staples, YouTube, Facebook, Office Depot, and Officemax.  Allen's company is asserting 4 patents:
  • U.S. Patent No. 6,263,507: "Browser for use in navigating a body of information, with particular application to browsing information represented by audiovisual data"
  • U.S. Patent No. 6,034,652: "Attention manager for occupying the peripheral attention of a person in the vicinity of a display device"
  • U.S. Patent No. 6,788,314: "Attention manager for occupying the peripheral attention of a person in the vicinity of a display device"
  • U.S. Patent No. 6,757,682: "Alerting users to items of current interest"
You'll note 2 of the patents (the '652 and '314 patents) have the same title.  The '314 patent is a continuation of the '652 patent.

For those of you who don't deal with patents, the key information that will be debated is the scope of coverage of the claims of the patents.  And these 4 patents have a lot to fight about.  The '507 patent has 129 claims, the '652 patent has 18, the '314 patent has 15 and the '682 patent has 20.  That's 182 patent claims potentially at issue.  As a sampling, the 1st claim of the '507 patent provides:

A system for acquiring and reviewing a body of information, wherein the body of information includes a plurality of segments, each segment representing a defined set of information in the body of information, the system comprising:
means for acquiring data representing the body of information;
means for storing the acquired data;
first display means for generating a display of a first segment of the body of information from data that is 5 part of the stored data;
means for comparing data representing a segment of the body of information to data representing a different segment of the body of information to determine whether, according to one or more predetermined jrj criteria, the compared segments are related; and
second display means for generating a display of a portion of, or a representation of, a second segment of the body of information from data that is part of the stored data, wherein the second display means displays the portion 15 or representation of the second segment in response to the display by the first display means of a first segment to which the second segment is related.
Thus, there are at least 5 main limitations to this system claim.  And each of those 5 are likely written in means-plus-function form governed by 35 U.S.C. § 112, ¶ 6.  So Interval will have to show what function is performed by the limitation, and then explain what structural elements in the specification are there to perform that function.  And since this is a software issue, Interval will need to show that the specification adequately discloses enough of an algorithm for performing the limitation.

That's a lot of stuff to fight about.  This will certainly generate a lot of work for patent attorneys.

NPR questioned the timing of why Allen waited approximately 10 years to file this dispute.  No answer to that question.  Pure speculation, but I think that the Supreme Court's Bilksi decision could have been a small factor here, as had the Court tanked all software claims, this case wouldn't have begun.  This will certainly be an interesting one to watch.

Oracle America, Inc. v. Google, Inc. Case No. 4:10-cv-03561 (N.D. Cal.)

This is certainly a clash of the titans.  And Oracle isn't playing around.  Lead counsel is David Boies.  He's a serious trial attorney.  He represented Al Gore in Bush v. Gore.  He just scored a victory challenging California's prop 8.  Oracle is taking this seriously.  Oracle views Google's Android as a threat to Oracle's Java (which it acquired from Sun). It's asserting 7 patents:

  • U.S. Patent 6,125,447: "Protection domains to provide security in a computer system"
  • U.S. Patent 6,192,476: "Controlling access to a resource"
  • U.S. Patent 5,966,702: "Method and apparatus for preprocessing and packaging class files"
  • U.S. Patent 7,426,720: "System and method for dynamic preloading of classes through memory space cloning of a master runtime system process"
  • U.S. Reissue Patent 38,104: "Method and apparatus for resolving data references in generated code"
  • U.S. Patent 6,910,205: "Interpreting functions utilizing a hybrid of virtual and native machine instructions"
  • U.S. Patent 6,061,520: "Method and system for performing static initialization"
Oracle is also asserting copyright infringement for the code, documentation, specifications, libraries, and other materials that comprise the Java platform.  Oracle's allegation is that the Android operating system is built on top of Java, and is distributed with a Java Virtual Machine (the Dalvik VM).

Collectively, there are well over 100 claims potentially at issue.  This will be a big fight.  Stay tuned.

Monday, August 9, 2010

Everybody was IP fighting ...

Does Susan G. Komen, Race for the Cure own the phrase "for the cure" for all charities?  [ BlawgIT,  Wall Street Journal]

Is that olive oil as virgin as you think it is? [ Wall Street Journal, AP ]

Are politicians done using copyrighted songs without permission? [ BBCWall Street Journal ]

Friday, August 6, 2010

First comes marriage, then comes conception, next we're fighting about who owns patent rights.

As this is an intellectual property blog, your mind quickly and correctly thought of the act of conceiving an invention when you read the above title.  Good work.  This is a pretty exciting post for me to write.  My brother, Frederick Pollack, is a family law attorney here in Tampa.  I'm a patent attorney.  Our fields don't cross that much.  I've joked with him that they should.  Well, they did.  And you, lucky reader, get to learn how.

You'll recall that under the American patent system, you need to overcome two hurdles to "invent" something.  First, you must conceive it.  Then, you must reduce it to practice.  Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.  Reduction to practice, as you might guess, is reducing that thing to practice.  You can do that in one of two ways: (1) actually do it; or (2) constructively do it.  You constructively reduce an invention to practice by filing a patent application which sufficiently describes your invention to enable one of skill in the art to practice it.  So what's this got to do with marriage?  Read on.

Some time before 1997, Mundi Fomukong and Fonda Whitfield were married in California.  In 1997 (the year I got married, btw), Fomukong conceived a way to use GPS and ground control stations to determine the location of someone, and disclose that location only to certain users.  On June 29, 1999, Fomukong (and his co-inventor) were awarded U.S. Patent 5,918,159 for this invention.  A few months earlier, he filed a continuation-in-part application.  In 2001, Fomukong and his wife Whitfield filed for divorce in California.

They did a "quickie divorce."  Under California law, this meant the couple must either have no community property, or have signed a property settlement agreement listing and dividing all of their community assets and liabilities.  Presumptively, everything you acquire during your marriage in California is community property.  Fomukong and Whitefield told the state of California that they had no community assets or liabilities.  In October, 2002, their divorce became final.  Several months later, Fomukong's second patent application (the continuation-in-part application) issued as U.S. 6,560,461.  He then formed a company (Enovsys) and assigned the patents (and the right to sue for past infringement) to the company.  Enovsys then sued Sprint Nextel for infringing the patents.

I will ignore the infringement issues in this decision, and instead just focus on the standing issue.  Sprint Nextel sought to dismiss the complaint, arguing that Enovsys did not have standing to sue for patent infringement.  The Court explained standing:
A party’s standing to sue for patent infringement derives from the Patent Act, which provides that “[a] patentee shall have remedy by civil action for infringement of his patent.” 35 U.S.C. § 281 (emphasis added). “Patentee” includes not only the party to whom the patent was issued, but also the successors in title to that party. 35 U.S.C. § 100. When a patent is co-owned, a joint owner must join all other co-owners to establish standing.
So, did Enovsys have to join Whitfield (Fumoko's ex-wife) as a plaintiff?  Sprint's argument: Fumoko filed both patent applications while he was married.  Presumptively, all assets acquired during marriage are community property.  This ownership survived the divorce, and thus Whitfield was an owner of the patents and needed to be joined in the litigation.  Enovsys's response: the divorce judgment constituted a final determination by the state of California -- Fumoko and his wife didn't own anything as community property anymore.

The Court went on to address California state law on this issue, and held that Enovsys was right.  Fumoko and his wife stated at the time of their divorce that they didn't own any community property.  So that's how it ends up.
Pursuant to the California divorce decree, Whitfield retained no property rights in the patents, so Enovsys had standing to bring and maintain this suit.