Interesting insight into the minds of a patent infringement jury

The Prior Art caught up with 3 of the jurors who heard the i4i v. Microsoft case which resulted in an injunction against certain versions of Microsoft Word and a damage award of $290 million. Most interesting to me were these 2 observations from the jurors:

First, patents carry a presumption that they are valid. The jurors were impressed with this presumption, and have a high level of confidence in what the patent office is doing.

As far as Microsoft’s claim that the i4i patent at issue should be invalidated, Greer [the jury foreperson] says she didn’t buy that argument: “I really felt like with experts in the patent office…they knew what they were doing. I suppose I really have a lot of confidence in the U.S. patent office.”

Second, the jurors felt that the case was important, and didn't think Microsoft treated it as such. They were particularly offended that none of Microsoft's higher executives participated in the trial.

A second juror, electrician Jarrett Stephenson, says he was struck that Microsoft’s lone witness was a software engineer, unlike i4i, whose founder, Michael Vulpe, testified. “I think a lot of the jurors, we all thought if this was that big a deal to Microsoft, they might have had some of their more executive-type people present."

I encourage you to read the full article.

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.)

i4i Ltd Partnership v. Microsoft Corp., Case No 2009-1504 (Fed. Cir. Dec. 22, 2009)

The North Face vs. The South Butt

Image via Wikipedia

v.

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).

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.

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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.

Mayo Clinic Jacksonville v. Alzheimer's Institute of America, Inc., Case No 8:05-CV-00639-SDM-TBM (M.D. Fla. Nov. 24, 2009)

Federal litigators -- weekends count starting tomorrow

As of today, when you have a time period that is less than 11 days, you do not count the intermediate weekends and holidays. So in the Middle District of Florida, where we have 10 days to respond to a motion, we do not count weekends or holidays in docketing our response date. Starting tomorrow, December 1, 2009, the Federal Rules of Civil Procedure have been amended so intermediate weekends and holidays do count.

Fortunately, the Judges of the Middle District have amended the local rules to change various time periods, including the period for response to a motion. Instead of 10 days, each party opposing a motion will now have (starting tomorrow) 14 days to respond. Various other time periods have been adjusted in the local rules to reflect this change in the Federal Rules. Read the amendments to the local rules here. A brief summary of some of the changes is below:

Event	Rule	Old Time Period	New Time Period
Response to motion	3.01(b)	10 days	14 days
Notice of deposition	3.02	10 days	14 days
Final pretrial conference	3.06(a)	at least 20 days notice	at least 21 days notice
Pretrial statement	3.06(c)	3 days before pretrial conference	7 days before pretrial conference
Removal of cases from state court	4.02(c)	10 days	14 days
Temporary restraining order	4.05(a)	10 days	14 days
Preliminary injunction notice	4.06(a)	5 days	14 days
Preliminary injunction opposition papers	4.06(b)(3)	day preceding hearing	7 days before the hearing
Objecting to Magistrate Judge's Reports and Recommendations	6.02(a)	10 days	14 days
Designate a mediator	9.04(a)(1)	10 days	14 days

Time magazine's 50 best inventions of 2009

As we approach year-end, everyone begins posting their N best things of 2009. Each year, Time does precisely this for the best inventions. And their 50 best of 2009 are out here. Topping the list are NASA's Ares Rockets. "The space shuttle is a flying truck: fine for the lunch-bucket work of hauling cargo a couple of hundred miles into space, but nothing more...." The top 5 rounds out with (2) Tank-Bred Tuna, (3) the $10 million lightbulb, (4) the smart thermostat and (5) controller-free gaming. I had only intended on listing the top 5, but coming in at number 6 is teleportation. (How is teleportation only number 6?)

Time also published its list of the 5 worst inventions for 2009.

Thanks to Anticipate This! for the link.