Wednesday, November 17, 2010

You can not use a pizza cutter to shave your legs or beard.

I learn something new everyday. Thanks, Anticipate This!™

For my non-patent attorney/litigator readers -- the inventor's patent application is directed to a new type of razor-head. The razor-head has a cross shape, which imparts a cutting and rotary action on the hair being shaved.

The Examiner said it wasn't new and it was obvious in light of the prior art. What was the prior art? A pizza cutter.

The applicant's argument -- you can't use a pizza cutter as a razor to shave. The Examiner said the pizza cutter is inherently capable of being used for shaving. But the Examiner went even further -- an experiment was conducted! The Examiner used a rotary pizza cutter and an elongated pizza cutter to shave a block of pork with skin on it. Seriously, that had to be a fun day at work.

Co-worker: "Hey, what's that slab of pork doing in here?"
Examiner: "I'm going to shave it with a pizza cutter."
Co-worker: "Ok. Have fun. Let me know how that goes."

Unfortunately, the Examiner didn't swear to the accuracy of his experiment, or provide sufficient details, so the Board of Patent Appeals and Interferences found it unpersuasive. Rather, the Board held that the applicant rebutted the Examiner's argument.
In particular, we agree with Appellant that Romanoff's pizza cutter is not capable of being used to shave hair because Romanoff's pizza cutter, which is the size of at least one pizza, is too large and unwieldy to be suitable for use for shaving, and because the "blade" of a pizza cutter is typically much duller than a razor blade and thus is not inherently capable of being used for shaving.
I think I'll try shaving tomorrow with my rotary pizza cutter. Or maybe I won't, because the Applicant also conducted an experiment.
The declaration evidence further establishes that pizza cutters do not inherently possess the capability of being used for cutting hairs during shaving. See Elmore Decl. (in which Ms. Elmore declared that she was unable to remove hair by shaving her leg or her dog using an ordinary, household, rotary pizza cutter.")
Rejections reversed.

Thursday, November 11, 2010

No "internet radio" mastermind means no patent infringement.

Zamora Radio owns a patent (U.S. Patent No. 6,349,339) directed to "internet radio" technologies. It sued a number of internet radio companies (, CBS radio, Slacker, Pandora, Rhapsody, Realnetworks, DKCM, Soundpedia, AOL, Accuradio, and Yahoo).

As with all patent infringement lawsuits, claim construction was key. The technology at issue generally allows an internet radio provider to stream content (music, video, whatever) to a user, allowing the user to pause or skip forward, but not allowing the user to rewind. Thus, the system presents the user with a predetermined order of content and prevents the user from modifying that order or replaying particular content.

A key claim phrase in claim 1 concerned whether the user's computer or the internet radio company's computer set the predetermined order. The Court's earlier claim construction required the user's computer to set the order. Each of the defendants' systems used the defendants' servers to set the predetermined order. Plaintiff agreed that, given this claim construction, there was no infringement of claim 1.

Plaintiff requested a "consent judgment" be entered finding no infringement of claim 1. Presumably, plaintiff wanted judgement against it so it could seek appellate review from the Federal Circuit on the trial court's claim construction. Defendants opposed this request because they wanted a judgment of non-infringement on other claims as well (not just claim 1). The Court refused to enter the consent judgment because "there was obviously no consent from Defendants."

Each defendant asked for summary judgment of non-infringement on the remainder of the claims. The Court agreed and found various non-infringement arguments of the different defendants convincing for various reasons. But for each of the defendants (other than Pandora), the Court found that the doctrine of "divided infringement" was controlling. (I am guessing that Pandora did not make this argument (the briefs are under seal) because the Court did not address it in the order granting Pandora's summary judgment motion.)

Divided Infringement

Direct patent infringement requires that each element of a claimed invention is performed by a single entity. Sometimes, a claim is not directly infringed by a single entity, but 2 or more entities combined perform all of the steps of a claimed invention. If the 2 entities don't know if each other, and don't have any relationship, it can't be said that they jointly infringe the patent. But where 1 of the parties is the "mastermind" exercising "control or direction" over the entire infringement, liability will be found.

Here, 6 defendants (CBS and its parent company, AOL,, Realnetworks, and Rhapsody) argued that there was no such mastermind, and thus there could be no infringement.
“Infringement requires, as it always has, a showing that a defendant has practiced each and every element of the claimed invention.” BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1380 (Fed. Cir. 2007) (internal citation omitted). Under the “divided infringement” theory, if a third party carries out one or more steps of the claim on the defendant’s behalf, the defendant can still be held liable if it controlled or directed the conduct of the acting third party. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1330 (Fed. Cir. 2008) (The “control and direction” standard is satisfied “where the law would traditionally held the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.”). Moreover, “[m]aking information available to the third party, promoting the third party, instructing the third party, or facilitating or arranging for the third party’s involvement in the alleged infringement is not sufficient.” Emtel, Inc. v. Lipidlabs, Inc., 583 F. Supp. 2d 811, 839 (S.D. Tex. 2008); Muniauction, 532 F.3d at 1329-30.

Every asserted system claim of the ‘399 Patent requires, among other things, a “server arrangement” that provides data packets and a “user computing arrangement” that receives, stores, and executes instructions to use the data packets. Also, every asserted independent method claim requires that some steps of the method are performed at the server arrangement, while other steps must be performed at the user’s computer. Here, the “server arrangements” are provided by Defendants, while the accused “user computing arrangement” - the personal computers used by end-users of the Radio 2.0/ and Last.FM server application systems - are not provided by any of the Defendants. Furthermore, it is undisputed that there is nothing akin to an agency relationship between Defendants and users of Defendants' systems who provide and use the UCAs.

Accordingly, because the claims require multiple actors to meet the limitations of the accused claims and because there is no dispute that the parties involved do not control or direct each others' actions or their computers, Defendants are entitled to summary judgment of no infringement on this basis as well.
(The Court entered 3 separate orders on summary judgment. The above quote is from the Order granting summary judgment in favor of CBS, AOL, and

Summary judgment of non-infringement granted in favor of each defendant.

Zamora Radio, LLC v., et al., Case No. 09-20940, slip op. (S.D. Fla. Nov. 5, 2010) (Mag. Torres)

Tuesday, November 9, 2010

Lamebook v. Facebook


Every few months, an interesting and fun trademark dispute bubbles up to national news. I've previously talked about The North Face v. The South Butt and Geeknet's "Unicorn meat - the other white meat" campaign. The South Butt case is settled (and apparently, they're still selling South Butt stuff). Geeknet didn't challenge the National Pork Board's charge.

Now comes Lamebook, which posts "lame and funny pictures, status updates, and other gems found on your favorite social networking site." Its tagline: "Lamebook. the funniest and lamest of facebook." Guess who'd rather Lamebook stop?

Facebook sent some cease and desist letters. As I tell all of my clients seeking to enforce their intellectual property, if you send a cease and desist letter, you're opening yourself up to a potential declaratory judgment action where the recipient of the letter sues you, asking the court to decide whether or not there is a violation of the intellectual property at issue. This is exactly what Lamebook did.

Lamebook wants a declaration that it doesn't infringe Facebook's marks, doesn't dilute Facebook's marks, and that Lamebook's activities are protected by the First Amendment.

This should be another interesting opportunity to observe a parody defense. Facebook puts forward some law from the 9th Circuit that a parody defense requires the parody to be directed at the original work. Lamebook isn't making fun of Facebook -- Lamebook is making fun of Facebook users.

The complaint is below. Enjoy!

Friday, November 5, 2010

"Any person" may pursue a patent false marking claim on behalf of the government.

SDJP Patent Group, LLC sued Macho Products, Inc. for allegedly falsely marking some of its martial arts products. As you may know by now, false marking litigation has become a cottage industry for plaintiffs allowing the recovery of up to $500 for each offense of falsely marking a product as patented with an intent to deceive.

Macho asked the court to stay the proceedings until after the Federal Circuit rendered its Stauffer decision, addressing who can bring a false marking suit. The court said no.

Macho then sought dismissal, arguing that SDJP has no standing because there has been no injury. The Stauffer decision was dispositive:
Defendant's primary defense that the United Slates did not suffer an "injury in fact" is erroneous, in light of the Stauffer decision. Therefore, Defendant's motion to dismiss is DENIED for the following reasons.

Section 292 (b) is a qui tam provision authorizing "any person"' to pursue an action on the government's behalf. A qui tam provision is a statutory assignment of the United States' rights, and the assignee of a claim has standing if the United States has suffered an injury in fact, even if the assignee has suffered no injury himself. Vt. Agency of Natural Res. v. United States ex rel. Stevens, 529 U.S. 765, 773 (2000). According to the Federal Circuit a violation of section 292 inherently constitutes an injury to the United States:
In passing the statute prohibiting deceptive patent mismarking. Congress determined that such conduct is harmful and should be prohibited. The parties have not cited any case in which the government has been denied standing to enforce its own law. Because the government would have standing to enforce its own law, [the plaintiff], as the government's assignee, also has standing to enforce section 292.
Stauffer, 2010 U.S. App. LEXIS 18144. at *11-12. Macho asserts that Plaintiff has been unable to allege any specific injury to Plaintiff or to the United States. However, Defendant violated section 292, which is sufficient to show an "injury in fact" to the United Slates. Consequently, Plaintiff has sufficiently alleged (1) an injury in fact to the United States that (2) is caused by Macho's alleged conduct, marking its equipment with expired patent numbers, and (3) is likely to be redressed, with a statutory fine, by a favorable decision. Plaintiff's standing arises solely from his status as "any person," under section 292 (b) and he need not allege more for jurisdictional purposes.
Macho's next argument was that it didn't intend to deceive anyone. But as I argued in an earlier post, that's not going to work for dismissal. That's a fact question. You can't get out of these suits by saying "I didn't intend to deceive anyone." You've got to prove it.
Further, Defendant's assertion that there was no intent to deceive the public is a matter of fact. A trial judge may resolve factual disputes when subject matter jurisdiction turns on the resolution of contested facts. Arbaugh. 546 U.S. at 514. However, if the contested facts are also central to the cause of action then jurisdiction will be found and the trier of fact will resolve the contested facts. Here, the contested "intent to deceive the public" is an element of the cause of action (False Marking) and a matter for a jury to decide.
Motion to dismiss denied.

SDJP Patent Group, LLC v. Macho Products, Inc., Case No 8:10-cv-01232, slip op. (M.D. Fla. Nov. 2, 2010) (J. Kovachevich)

Thursday, November 4, 2010

"Nice try toots." Photographer's self-portrait at age 14, on the cover of a pornographic movie, is copyright infringement.

Lara Jade Coton is a professional photographer. (She has an interesting blog here.) When she was 14, she took a picture of herself playing dress up. She put that picture on a website. In 2007, when she was 17, she learned that her picture was being used to market a pornographic movie. Understandably, she was shocked. She found that TVX Home Video produced the movie and contacted them demanding they remove her image.

In response to her first email, TVX said they'd investigate her claim. She then responded and demanded money and confirmation that they wouldn't use her images again in the future. TVX's response was obnoxious:
Not only will you not be compensated for your photo we have turned this problem over to our attorney it seems the company my graphic company got the photo from on the internet is a public domain operation. You knew this when you originally sent us your scheming letter. Nice try toots. We are still going to remove you from the art, not because of your claim but let's face it your picture means very little to the film.
[Note to potential defendants -- if you think snarky responses like this are likely to make a plaintiff go away, you're wrong. Practice pointer. If your response includes the phrase "Nice try toots," you should probably take a day before you send it and then rephrase. Just my $0.02] . Coton responded to this email, which TVX couldn't resist responding to either (in all caps no less)
* * *
(errors in original). After some exchanges with the graphics company, Coton sued for a number of theories, including copyright infringement, misappropriation of an image, and defamation. TVX didn't respond, and thus defaulted. A trial was held on damages.

Copyright damages

There are 2 different types of damages you can get in a copyright case: (1) actual damages & defendant's profits; and (2) statutory damages. Statutory damages can be very good and helpful. But there is a catch. You must timely register your copyright with the Copyright Office in order to try to get them. If you author original works, do yourself (or your future litigation counsel) a favor and register them. Do it now. It might help you. And it's cheap. You can try it yourself at the Copyright Office's Electronic Copyright Office. Seriously, you might thank me later on. (Statutory damages range from $750 to $150,000 (if infringement was willful). That's a pretty big stick to carry around and threaten against infringers.)

Coton didn't have a timely registered copyright registration on her picture. So the only damages she could pursue were her actual damages and TVX's profits attributable to the infringement. She had previously licensed one of her pictures for £2000 (about $3k U.S. at the time of trial). So, that's what she got in actual damages.

Regarding infringer's profits, a plaintiff must put forward the defendant's gross revenue, and then the defendant must prove what parts of the revenue are attributable to things other than the infringement. TVX had sold 189 DVDs for an average of $6.50/DVD, with $0.70/DVD attributable to things other than the infringement. Do the math and this yields another $1k in damages.

So, her total copyright infringement damages award is just over $4k.

Misappropriation of an Image

Florida law also protects against the unauthorized commercial use of another's name, portrait, photograph, or other likeness. See Fla. Stat. § 540.08. No question on liability here (remember, TVX had defaulted), so again just a question of damages.

Coton sought $770 for a licensing fee, $25k for harm to her professional reputation, and $25k in punitive damages. The Court refused the $770 request as Coton was already paid a license fee by way of the copyright damages. The Court found the $25k for harm to her reputation was reasonable. The Court refused the punitive damages request because there was no evidence that the defendants had been willful in infringing the copyright.

Defamation by Implication

Coton's final damage claim was for defamation by implication. Coton asked for $100k as "fair compensation for the humiliation she suffered as a result of having her photograph used in connection with the ... pornographic movie and related marketing materials." The Court found this figure reasonable.

Thus, total damages: copyright ($4k), misappropriation of portrait ($25k), defamation by implication ($100k).

Coton v. Televised Visual X-ography, Inc., Case No. 8:07-cv-1332, slip op. (M.D. Fla. Sept. 16, 2010) (Magistrate Judge Wilson)

Wednesday, November 3, 2010

No sales? Doesn't matter. Offering to sell is still patent infringement.

Del Zotto Products of Florida makes building forms and precast concrete products. Its Gold Rock blocks include a protruding lifting device on the top surface, and a recess on the bottom surface. It is possible to position the Gold Blocks, one on top of the other, using the lifting device and recess to align the blocks. Problem is, Stone Strong, LLC owns a number of patents directed generally to concrete blocks which have a lift loop on the top of the block which fits into a recess in the bottom of the block above to assist with aligning blocks. Stone Strong sued for patent infringement.

Del Zotto argued that: (1) it never sold the Gold Rock blocks (although it had built a wall using these blocks at its facility in Ocala); and (2) the lifting hook on the Gold Rock blocks is not used for aligning blocks.

After a non-jury trial, the Court concluded that the Gold Rock infringes:
The key factor in resolving this determinative issue is the size of the recess or notch on the bottom of the blocks in relation to the size of the lift loop on the top of the blocks. Obviously, as the tolerance between the two features increases, the efficiency of the alignment function rapidly decreases to a point that it becomes nonexistent. Clearly, however, a notch or recess that is one foot wide at the bottom, decreasing to 9½ inches at the top, with a height of 5 inches receiving a steel loop 4 inches in diameter, provides a capability of being used as an aid in alignment, and the claims of the patents in suit (as previously quoted) were literally infringed when Del Zotto offered to sell its Gold Rock forms and blocks. See Bell Communications 10 Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622-23 (Fed. Cir. 1995) (“[A]n accused product that sometimes, but not always, embodies a claimed method nonetheless infringes.”); Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 20 (Fed. Cir 1984) (“[I]mperfect practice of an invention does not avoid infringement.”); Roche Prods., Inc. v. Bolar Pharmaceutical Co., 733 F.2d 858, 861 (Fed. Cir. 1984) (“Section 271(a) prohibits, on its face, any and all uses of a patented invention.”).
And it didn't matter that Del Zotto never actually sold any of its Gold Blocks. Patent infringement protects against unauthorized using, making offering to sell, and selling a patent invention.

Injunction to be entered in favor of Stone Strong.

Stone String, LLC v. Del Zotto Products of Florida, Inc., Case No. 5:08-CV-503, slip op. (M.D. Fla. Oct. 25, 1010) (J. Hodges)