Congratulations to the Dade County Bar Association's IP Committee

I am currently serving as the Hillsborough County Bar Association's representative to the 13th Judicial Circuit's pro bono committee. As such, I'm trying to figure out ways to get lawyers in our committee more involved and aware of pro bono opportunities (and any other way we can help). For starters, we should all be aware of the Florida Bar's One Campaign. If every Florida lawyer took ONE pro bono case...imagine where we'd be. If you haven't already, watch the video (it's embedded below).

Our neighbors and colleagues in southern Florida have found a good way to help. Gene Quinn writes of a great event put on by the Intellectual Property Committee of the Dade County Bar Association. Under the leadership of their president, Jamie Rich Vining, they selected a patent (a design patent directed to a toy catapult), gathered the parts, and then had a number of contestants build the device. First to finish and launch a penny across a marked line won. Read the article for details. They were able to raise $8,000 for the local Legal Aid Society. Congratulations to the Dade County Bar Association. What a great idea!

If you have ideas for how we can help, please email me (or drop a comment). And now, spend a few minutes and watch the ONE video. If you've seen it before, watch it again.

PriceWaterhouseCoopers 2010 Patent Litigation Study -- M.D. Fla. has been a successful place for plaintiffs...

I learned via The 271 Patent Blog that PriceWaterhouseCoopers published its annual 2010 Patent Litigation Study. An interesting read indeed. The Middle District of Florida featured prominently:

Success rates for patent infringement plaintiffs 1995-2009

1. M.D. Fla - 59.1%
2. E.D. Tx. - 55.3%
3. D. De. - 47.3 %

Success rates for patent infringement plaintiffs that survive summary judgment and go to trial 1995-2009

1. M.D. Fla - 80.0%
2. E.D. Tx. - 66.7%
3. D.De. - 64.5%

Median time-to-trial from 1995-2009

1. E.D. Va. - .93 years
2. W.D. Wi - 1.07 years
3. M.D. Fla. - 1.71 years
4. D. De. - 1.89 years
5. S.D. Tx. - 2.0 years

Some additional interesting observations:

• median damages of $2.4m to $10.5m between 1995 and 2009
• reasonable royalties continue to be predominant measure of damages
• non practicing entities (f/k/a patent trolls) have been successful 31% of the time, compared with a 40% success rate for practicing entities

Lots of other interesting stuff in the report. I'd encourage you to go read it.

Evidence of patent infringement settlement agreement in another case, for another patent, is not relevant.

Alps South is suing The Ohio Willow Wood Company for allegedly infringing U.S. Patents 6,552,109 and 6,867,253 each generally directed to gel products which are apparently used in prosthetic products. Ohio Willow is suing another company in Texas for infringing one of its patents -- U.S. Patent 7,291,182 directed to a cushion liner for enclosing an amputation stump.

Alps believes that Ohio Willow settled its litigation in Texas, and wanted a copy of the settlement agreement. Indeed, the Texas litigation had proceeded to the Federal Circuit on appeal, after the defendant there won summary judgment that the asserted claims of the '182 patent were obvious. Ohio Willow had filed its appeal brief, and Alps had filed an amicus brief in that appeal. But the defendant in that case did not file its answer brief, leading Alps to conclude that the case had settled. Additionally, Alps and Ohio Willow are fighting over the '182 patent in yet another case (but that case is stayed pending reexamination of the patent).

Ohio Willow did not concede that the other litigation had settled. It then argued that the sought after information (if it existed) was not relevant to the present dispute. The Court agreed with Ohio Willow:

Although Alps argues that the '182 patent at issue in the Texas case is "directly relevant" to the '109 and '253 patents at issue in this case, I find that Alps has only shown that the '182 patent is one of a myriad of patents owned by OWW relating to prosthetic products that use a gel and substrate liner issued by Bruce G. Kania....I find the relationship between the '182 patent at issue in the Texas case too tenuous to be considered relevant to this litigation, and that Alps has not demonstrated that the sought-after information is admissible at trial, or that it is likely to lead to the discovery of admissible information.

The Court also held that if such agreement existed, it would not be discoverable because of the strong federal policy favoring the confidentiality of settlement agreements.

Motion to compel denied.

Alps South, LLC v. The Ohio Willow Wood Co., Case No. 8:08-cv-01893, slip op. (Nov. 19, 2010) (Mag. Pizzo)

Selling a product that can be used in a patented method does not constitute infringement

Minsurg markets and sells to physicians the TruFUSE system for use in spinal fusion surgeries. Minsurg also owns U.S. Patent No. 7,708,761 protecting a method for performing spinal surgery. The method protected generally requires the following steps:

1. place a portal into a human patient through a minimally invasive opening
2. access a spinal joint through the portal
3. insert a drill bit into the portal
4. drill a hole into the spinal joint
5. remove the drill bit
6. insert a joint fusion plug into the hole drilled
7. insert a tamping instrument into the portal
8. tamp the fusion plug

(while not claimed in the patent, presumably the surgeon should also remove the tamping instrument.)

Minsurg sued a number of defendants who sell competing surgical systems. Minsurg sought a preliminary injunction. Magistrate Judge Jenkins conducted an evidentiary hearing recommended denial of Minsurg's motion. The decision turned on how important "minimally invasive" was.

First, to get a preliminary injunction, Minsurg needed to establish that it was: (1) likely to succeed on the merits; (2) likely to suffer irreparable harm without the injunction; (3) the balance of hardships favored Minsurg; and (4) the public interest would be best served by granting the injunction.

A problem for Minsurg was that the '761 Patent protects a method of performing surgery, but the defendants were not the surgeons who allegedly practice the method. The defendants sell products which can be used to practice the method. So Minsurg asserted three theories of liability: (1) Defendants directly infringed the patent; (2) Defendants actively induced their customers to practice the method; and (3) Defendants contributed to the infringement.

To have patent infringement (under any of the theories), there must be an act of direct infringement. And with a method patent, direct infringement happens "only by one practicing the patented method." Joy Techs., Inc. v. Flakt, Inc., 6 F. 3d 770, 775 (Fed. Cir. 1993).

Direct Infringement

Because the Defendants themselves do not perform the steps of the method, they are not direct infringers:

Defendants do not perform the steps of the process set forth in the '761 Patent because they do not perform spinal fusion surgeries. Rather, Defendants sell systems used by physicians to perform such surgeries. Consequently, Plaintiff is not likely to succeed on its claims of direct infringement.

(This does not seem to have been a tough part of the decision, and skimming Plaintiff's motion, it does not appear Plaintiff really pursued direct infringement as a grounds for preliminary injunction here.)

Indirect Infringement - Induced infringement and Contributory infringement

Even though a defendant does not directly infringe a patent, it can still be held liable if it actively induces others to infringe the patent or contributes to another's infringement of the patent (where the piece the defendant contributes has no alternative non-infringing uses). Minsurg's theory here was that Defendants sold their kits and instructed their customers (the surgeons) on how to use them. And using the kits required practicing the claimed method. The Court did not agree.

As a factual matter, the claimed method requires the portal to be placed into a patient through a "minimally invasive" opening. Defendants offered testimony that the vast majority of spinal surgeries are done through an "open incision," as opposed to through a "minimally invasive incision." Thus, none of the Defendants' systems necessarily infringe because they can be used in non-infringing ways -- specifically when they are used through an "open incision."

Because there is a substantial, non-infringing use, Minsurg's only hope was to show evidence of active and willful inducement. "Evidence of active steps taken to induce infringement, such as advertising an infringing use, can support a finding of an intention for the product to be used in an infringing manner." Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009). Minsurg presented evidence of Defendants' advertising showing their systems being used in both open incisions and minimally invasive incisions. But Minsurg did not have any evidence of any physicians actually using the equipment in a minimally invasive procedure. And the advertising evidence did not appear to be sent out after the '761 Patent issued. (Thus, how could one market infringing steps before the patent laying out what infringement entailed issues. Presumably, there is an argument that whatever intervening rights attached to the '761 Patent during prosecution could help Minsurg here, but that is a topic for another post.)

Motion for preliminary injunction denied.

Minsurg International, Inc. v. Frontier Devices, Inc., Case No. 8:10-cv-1589, slip op. (Feb. 7, 2011) (J. Covington) adopting Report & Recommendation of Mag. Jenkins

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.

Ex parte Colthurst, Appeal 2009-013331 (Aug. 30, 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 (Last.fm, 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, Last.fm, 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/play.it 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 Last.fm).

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

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

Lamebook v. Facebook

v.

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!

Lamebook v Facebook - Txwd