Tuesday, December 22, 2009

Microsoft Word (custom XML) injunction upheld

As reported a few months ago (here, here, here, here & here), Microsoft lost a patent infringement trial to i4i for Microsoft's custom XML feature of Word. A permanent injunction was entered preventing Microsoft from selling, offering to sell, importing or using certain copies of Word with the infringing custom XML editor. The jury also awarded $200 million in damages.

Earlier today, the Federal Circuit affirmed the damages award, and kept the injunction intact, except for modifying its effective date to January 11, 2010. In all other respects, the Federal Circuit affirmed (including the jury's determination that Microsoft's infringement was willful.)

Friday, December 18, 2009

The North Face vs. The South Butt

The North Face, Inc.Image via Wikipedia


ABA Journal has an article about this interesting dispute here. James Winkelman (whom I believe is 17 years old) started selling hiking apparel under the name "South Butt." His website, http://www.thesouthbutt.com/ includes the following disclaimer:
We are not in any fashion related to nor do we want to be confused with The North Face Apparel Corp. or its products sold under "The North Face" brand. If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.
The North Face has sued, under theories of trademark infringement, trademark dilution, false designation of origin, trade dress infringement and unfair competition.

He has also started a Facebook app, he's called "The South Butt Challenge on Facebook." According to his website, the app "allows you [to] see the difference between a face and a butt."

If this case goes anywhere, Winkelman's parody argument will be interesting to watch.

Read the complaint here. (via The Riverfront Times blog, the DailyRFT).
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Tuesday, December 1, 2009

Keep it cool, Google

As reported by Slashdot this morning, Google is pursuing a patent application aimed at improvements in cooling computer systems. Entitled "Targeted Cooling or Datacenters," this applicants explain that "Power consumption is ..., in effect, a double whammy. Not only must a data center operator pay for electricity to operate its many computers, but the operator must also pay to cool the computers."

As originally claimed, the application seeks to protect a method of cooling electronic equipment which includes circulating air across a number of electronic devices located in a rack, monitoring the temperature of air, and providing cooler air to the devices when a high cooling load is sensed. The applicants also seek to protect a cooling system which includes air circulation fans, a sensor and a cooler-than-ambient air distributor.

This application was filed on February 26, 2007 and was published more than a year ago on August 28, 2008. (It's not entirely clear to me why this application made Slashdot this morning.) As of today, the application is currently under a non-final rejection for lack of novelty and obviousness.

Us 20080204999

Patent license "no challenge" clause can be enforceable, but this one was "clumsily and ineffectively constructed."

Alzheimer's Institute of America ("AIA") licensed certain patents to Mayo Clinic Jacksonville. Through this license, Mayo agreed "not to initiate or voluntarily participate in, or knowingly permit its Affiliates to initiate or voluntarily participate in, any action directed at undermining, invalidating, or declaring unenforceable any claims under" AIA's patents. A dispute erupted and AIA sued Mayo for patent infringement. In defense, Mayo asserted the affirmative defense of patent invalidity and counterclaimed for a declaration of patent invalidity. AIA amended its pleadings to assert a breach of contract claim, arguing that by challenging the validity of AIA's patents (via the affirmative defense and counterclaim), Mayo had breached the license. Mayo sought dismissal of this counterclaim.

The Court initially presented a thorough analysis concerning the enforceability of no-challenge clauses. After explaining that Courts must balance public policy interests in enforcing contracts, permitting full and free competition, and federal patent policy, the Court turned to the merits of this particular no-competition clause and held:
Even assuming for a moment that federal patent policy permits enforcement of the no-challenge clause, the no-challenge clause, which gravitates against patent policy in a manner reminiscent of Lear [Inc. v. Adkins, 395 U.S. 653 (1960)], receives the strict construction warranted by a provision that constrains a constitutional, statutory, or other legal right. Applying a strict construction to the no-challenge clause and confining the reach of the clause to that defined by its terms, count three fails to state a claim because the facts of this case present no event of breach of the no-challenge clause. In amended count three of AIA's counterclaims, AIA asserts (Doc. 130, ¶ 31) that Mayo breaches the no-challenge clause by counterclaiming—in Mayo's answer to AIA's counterclaim—for patent invalidity and thereby "initiating" an "action" in violation of the no-challenge clause. AIA's claim fails for several reasons. AIA—not Mayo— "initiated" the claim of patent invalidity by suing Mayo for patent infringement. Mayo has initiated nothing; Mayo merely defends itself. Neither is Mayo "voluntarily participating" in this action. In response to AIA's claim, Mayo asserts both an affirmative defense of invalidity and a defensive counterclaim seeking a declaration of patent invalidity. A counterclaim is a claim within an action, but not itself an action. Also, despite the meaning of the "no-challenge" clause, Mayo undoubtedly remains at liberty to challenge validity by the assertion of an affirmative defense (the traditional method of raising an assertion of invalidity). If intended to bar a challenge to AIA's patent validity, the no-challenge clause is clumsily and ineffectively constructed, omits to preclude even the typical challenge of invalidity by affirmative defense, and overlooks the potential for a counterclaim. If intended to prevent Mayo's aggressive attack on patent validity, the no-challenge clause perhaps persists, although subject to the vagaries of Lear.
AIA's counterclaim was dismissed with prejudice.