Patent Troll Panel at Yale Law School

Guest post by Lisa Larrimore Ouellette, Postdoctoral Associate in Law and Thomson Reuters Fellow, Yale Law School Information Society Project

Last month I moderated a panel discussion hosted by the Information Society Project at Yale Law School on what are variously (and ambiguously) called patent-assertion entities (PAEs), non-practicing entities (NPEs), or patent trolls (video here). These entities have attracted significant recent attention: they are the target of a GAO report required by the AIA (now nearly eight months overdue), a DOJ/FTC workshop (which may lead to subpoenas), and the proposed SHIELD Act (mandating fee-shifting for some losing NPEs). But several panelists at Yale argued that this focus on trolls is misplaced.

Professor Michael Risch (Villanova), described his finding in Patent Troll Myths that the patents enforced by trolls look “basically like the patents you see in the rest of the world.” NPEs drive up product costs by suing operating companies over what are sometimes weak patents—but so do operating companies, and if this a problem, any solution should target both. He said his views are nicely illustrated by the case of Innovatio targeting thousands of Wi-Fi end users:

My first thought upon hearing about these folks was “the gall of these people, to think that they invented wireless LANs.” [But] it turns out they got all their patents from Broadcom. You know what? Broadcom did invent wireless LANs, along with a bunch of other people … It’s unclear whether [Innovatio is] doing bad things by going after these end users, I don’t know. But the question I have is, would it be so much better if Broadcom were doing this? I don’t think so. … A lot of [NPE] patents come from people who have spent money developing them, real research dollars, which is the exact kind of thing we have patents for. … We have to do something about the behavior, and not the owner.

Christina Mulligan (Yale ISP Fellow, starting as a professor this fall at Georgia Law) countered that extreme trolling behavior—in which the patent is simply hidden “in a submarine-like way” until an operating company independently invents and commercializes—is necessarily harmful because society gains nothing from the patent. This problem could be alleviated with an independent invention defense, or with solutions more directly targeting trolls (including private solutions such as Colleen Chien’s proposed patent litigation insurance for small companies, which Mulligan thinks might “starve the [troll] beast”). Professor Tun-Jen Chiang (George Mason) agreed that trolls often assert normatively unjustified patents, and noted that the same problem can exist when an operating company holds the patent. The problem of legally valid but negative-net-welfare patents is not an NPE problem—it is a systemic problem. NPEs simply make enforcement of such patents more effective, but “if we are going to a bad destination I don’t want to get there faster.” And even though the problem is broader than NPEs, in the absence of real patent reform, a narrower solution that targets NPEs might be “a second-best solution.”

Manny Schecter (IBM Chief Patent Counsel) disagreed, arguing that reforms that target particular business strategies (or particular technologies) are a mistake. But that doesn’t mean that NPEs are not causing an enormous shift in the patent landscape. IBM has been the top annual US patentee for the past 20 years and licenses its IP “to the tune of a billion dollars a year,” but it has only brought litigation to enforce its patents “once or twice a decade.” NPEs are now driving a “dramatic increase” in the amount of patent litigation (most of which does not affect IBM because it is no longer in the consumer electronics space). This isn’t necessarily bad, but it is definitely changing the dynamic—because legal departments are “overwhelmed,” NPEs “can impede the ability of the genuine competitors from enforcing their patents.” Still, an independent invention defense like Mulligan suggests would be a “mistake” because it would create an incentive to not look at patents and to reinvent the wheel. “Some of the academics here will say, ‘Well, studies show people don’t look at patents to figure out what others are doing.’ … Don’t believe it.” [Note from Lisa: I agree!] Instead of focusing on NPEs, “to the extent we can do anything to improve the patent system’s certainty and clarity, we should be doing that … Removing some of those uncertainties from the system will in turn take away a tool that is in fact sometimes leveraged in the very types of litigation we are talking about here.”

Nathan Kelley (PTO Deputy Solicitor) described two such PTO initiatives to improve the patent system’s clarity: First, improving ownership information in PTO databases from the current “antiquated system of recording” so that people know who owns patents throughout their lifecycle and “who is the controlling entity behind accusations of infringement.” Second, working during prosecution to make sure claims have “understandable scope,” which is “particularly problematic when it comes to functional claiming … a problem that arises more frequently—I think it’s fair to say—in the NPE world and the software world.” He specifically mentioned Mark Lemley’s work on how § 112(f) needs to be applied more rigorously, and said they are working on having examiners specify on the record whether they think claims trigger § 112(f) or not. But he agreed that specifically targeting NPEs is a mistake:

We have history in our country of making our patent laws technology neutral, and maybe even business-model neutral as well. And to extent that we want to step away from that, and start to make laws that discriminate either on technology or on the business entity asserting the rights, we’re going to cause some problems, and we’re going to some extent devalue patents that already are there. … If we tip the balance against patentees, inevitably we are going to lower the incentive factor. And whether that’s a good thing or not I guess is something we’ll continue to debate.

The debate about patent trolls thus really seems to be a debate about the patent system. None of the panelists seemed to believe that patent assertion by NPEs is per se a problem—if there is a problem, it is that normatively unjustified patents are disproportionately asserted by trolls (though trolls also assert “good” patents, and “bad” patents do not exclusively belong to trolls). How you feel about trolls will depend on how prevalent you think those “bad” patents are—where “bad” means that the patent has negative net social welfare, even though it might be completely legally valid—a question that is frustratingly hard to resolve empirically. In the meantime, the best we might be able to do is improve patent clarity and certainty, a goal that is hard to argue against (though some have tried). Unfortunately, given current divisions on the Federal Circuit, improving clarity is sometimes easier said than done.

Intellectual Ventures Flexes Some Patent Muscle

The following is a guest post by Patrick Anderson of Patent Calls. Patrick originally published this on his own blog, GametimeIP.

Intellectual Ventures made a name for itself by (originally) negotiating patent licenses outside of litigation.  However, when those prospects started to run dry, IV launched a warning shot–which later appeared a bit underwhelming for a mass aggregator holding tens of thousands of patents.  This opening blow was followed by a series of targeted rifle shots, like their ITC enforcement action against Hynix and Elpida.  What these lawsuits collectively lacked was shock-and-awe, like Jay Walker's bold protestation against widespread, uncompensated use of his company's IP.  Until now, that is.

Intellectual Ventures has now sued AT&T, T-Mobile, and Sprint Nextel in a single lawsuit over fifteen different patents.  Breaking the news on its IV Insights Blog, the patent owner provided a copy of a complaint and a relatively simple statement noting that the aggregator "previously attempted to discuss licensing options with each of these companies, but none were responsive." The technology appears to mainly deal with techniques for managing cross-carrier text and multi-media messages, hence the combination of carriers in a single suit despite patent reform's partial ban on the practice.  Perhaps even more interesting are the various original sources of patents used in IV's most recent attack.

This week's lawsuit, more than the others IV previously waged, demonstrates the obvious power of massive patent aggregation.  The fifteen patents identified in the suit come from at least 10 different sources, including major companies, research institutions, one university and some individual inventors.  Separately, any given patent could be vulnerable to non-infringement arguments, or susceptible to a momentum-killing reexamination.  Combined, however, the patents are inherently much stronger.  Assume, for example, that for each patent asserted, the wireless carriers believed they had a 90% chance of invalidating all relevant claims at trial.  To prevail, the carriers must prevail in fifteen independent events, which carries only about a 20% likelihood of success.  And there is good reason to treat invalidation and infringement of each patent as an independent event because, although the patents are all related in general subject matter, most come from different sources and thus describe distinct inventions.

In fact, only three patents come from the same original owner–Conexant–who provided 6,977,944, 7,343,011 and 7,136,392.  Remaining contributors to IV's pool of asserted patents are responsible for only one patent each, and include Verizon (the only major wireless carrier absent from the suit), Motorola, Nokia, Telecordia Technologies (formerly BellCore, the Baby Bell's version of Bell Labs), and Hong Kong University of Science and Technology.

Interestingly, while Verizon contributed patents to IV's collection, and managed to avoid this latest lawsuit, Motorola's deal with IV apparently did not come with rights, at least to some portfolios.  Motorola's contribution was part of a 344-asset sale to Torsal Technology Group back in 2008.  Torsal subsequently transferred the Motorola patent to Antozskij Research LLC, which merged with Intellectual Ventures I LLC earlier this month.  All three transactions used the same law firm to record the deal: Schwabe, Williamson & Wyatt in Portland.  Telecordia's contribution is part of a transaction involving 45 assets sold to TTI Inventions B LLC in 2010.  TTI Inventions merged with Intellectual Ventures II, LLC earlier this month as well.  Telecordia is currently owned by Ericsson, but the sale to IV's holding company occurred during the ownership tenure of two notable private equity firms: Providence Equity Partners and Warburg Pincus.

Listed as lead counsel for IV is Martin Black of Dechert LLP, marking the sixth different law firm used as lead counsel for the aggregator.  Several are large, well-known law firms (including Susman Godfrey Weil Gothshall, and Irell & Manella).  This is the first lawsuit filed in 2012 for IV, and the first in nearly four months (John Desmarais' firm sued Nikon over five different patents in late October).  While IV's next move remains to be seen, it's safe to say things just got a lot more interesting.

IPCom Wins by Waiver – Federal Circuit Temporarily Revitalizes IPCom Case Against HTC

By Dennis Crouch

HTC v. IPCom (Fed. Cir. 2012)

IPCom is the German version of a “patent troll.” Or, as Lord Justice Jacob wrote in Nokia v. IPCOM, EWCA Civ 6 (2011), “IPCom is a ‘non practising entity’, i.e. a patentee with no business of its own in products covered by the patents.” The company is run by Bernhard Frohwitter, one of the most successful German patent litigators and backed by New York private equity. As suggested by this introduction, IPCom is pursuing patent battles against telecommunications device manufacturers around the world. [Even though I used the word “troll” here, I certainly believe that non-practicing entities should generally have a right to enforce their patents.]

In 2011, IPCom sued the Taiwanese company HTC Corporation in the US for infringement of its Patent No. 6,879,830. The patent covers an apparatus for solving the wireless communications problem of handing-over a data-stream connection to another base station as the wireless device travels geographically. The patent was originally owned by the German company Bosch who transferred rights to IPCom as part of a major IP asset purchase.

IPXL: The district court held the asserted claims invalid on summary judgment as indefinite under 35 U.S.C. §112. Following IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), the district court rejected the claims as reciting an apparatus with method steps. On appeal, the Federal Circuit has reversed – holding that the lower court misconstrued the language of the claims.

I have reproduced a representative claim below, but the basic gist is that a mobile station apparatus is claimed that operates with a network. The network provides a number of functions regarding the handover process, including storing data, holding information in reserve, and then later deleting the information after the handover. The claim includes only one element for the mobile station – requiring that the mobile station comprises “an arrangement” for reversing the handover if it is unsuccessful.

Claim 1. A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by: storing link data for a link in a first base station, holding in reserve for the link resources of the first base station, and when the link is to be handed over to the second base station: initially maintaining a storage of the link data in the first base station, initially causing the resources of the first base station to remain held in reserve, and at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising: an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

In IPXL, the court held a claim invalid that was structured as an apparatus claim that also required the performance of method steps. Here however, the Federal Circuit interpreted the claim language as having an apparatus defined by its capability to perform a set of defined tasks. The legal distinction here is in whether the apparatus must perform the step or merely be capable of performing the step. In addition, the language discussing the function of the network does not create any problem because the claim itself is actually claiming a mobile station. Thus, the “prohibition on hybrid claiming” identified in IPXL does not apply to this case.

In interpreting the claim, the court relied on its old rule of construction that claim terms “are generally given their ordinary and customary meaning.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). Using ordinary meaning as a starting point ,the court also walked through the specification and prosecution history in reaching its conclusion that the seeming action-items were directed to the network rather than the mobile device itself.

Prosecution History: One basis of HTC’s argument came from the prosecution history where the applicant referred to the six action elements in the claim as a “process” and the examiner called them “steps.” The Federal Circuit held that HTC (and the lower court) placed too much emphasis on those statements – especially because “in most cases” the examiner was referring to parallel method claims not at issue here. In looking at the prosecution history, the court also sent the reminder that prosecution history is less important in interpretation than claim and specification language. “Although the district court was correct in considering the prosecution history, the claim language and specification in this case are better sources for the correct construction.”

Because the court identified the source of error claim construction rather than indefiniteness, the case was reviewed

Means-Plus-Function and Waiver: HTC also offered a separate invalidity challenge based on the claimed “arrangement for reactivating.” HTC argued that – as a means-plus-function limitation – the scope of the term is defined by the corresponding structure found in the specification. Further, HTC argued that the specification did not include any supporting structure and that the claim must therefore be held invalid as indefinite. The district court rejected that argument – holding that the disclosed processor and transceiver served as the corresponding structure. On appeal, the Federal Circuit identified that holding as in error because the claimed function must be tied to a more particular structure. Here that structure would ideally be an algorithm that defines in some terms how the arrangement would work. See Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008).

After identifying the error, the appellate panel refused to reverse because HTC had failed to properly preserve an objection for the appeal. The problem: At the trial court, HTC had argued that more hardware disclosure was necessary beyond the “processor and transceiver,” while on appeal, HTC (and in the reply brief) shifted its argument to focus on the need for an algorithm. The appellate court held that this late-stage argument was too late.

To be clear, HTC had argued that the means-plus-function limitation was indefinite because it lacked sufficient corresponding structure in the specification. HTC’s error was that it identified the patent’s problem as lacking sufficient description of the hardware that would perform the claimed function while the Federal Circuit saw the patent’s problem deriving from lacking a sufficient description of the algorithm that would perform the claimed function. The Federal Circuit’s point was that no more hardware need be disclosed so long as the algorithm is there. This result is a bit odd for a few reasons. The practical reason for this failing is likely that these issues were litigated before the Federal Circuit’s 2008 decision on point. However, from a factual standpoint I suspect that HTC is absolutely correct – the lack of disclosed structure could-have been entirely solved by further disclosure of specific hardware designed to achieve the claimed function and without any further disclosure of the particular algorithm. Thus, the disclosure of a video graphics processor would likely serve as sufficient structure for a computer graphic processing function with a known solution even without disclosing the particular algorithm used for the processing. In the same way a nail could serve as the structure of a fastening claim even without a description of the particular process for hammering the nail into place. Likewise here, a particularly designed and disclosed circuitry could serve as the structure for achieving the claimed reactivating function even without disclosing its process flow per se. The fact that the Federal Circuit here chooses a different structure that should-have-been disclosed does not suggest that HTC waived its argument that the claimed function lacked sufficient structure. This leads me to a second and broader point about the accused infringer’s role in the invalidation process. It is not normally the accused infringer’s role to identify what the patentee should have invented or disclosed. Rather, invalidity is more simply based on a showing that the patentee did not do enough. In this sense, the accused infringer takes on a role parallel to a food critic who can identify poorly presented food even if she herself cannot cook. In my world, this is akin to my own low level spelling prowess. I usually know when a word is misspelled. However, I can only rarely posit the correct spelling formulation without assistance. Thus, the Court’s ruling here leaves a bad taste because it puts a new burden on accused infringers to take the additional step of identifying what the patentee should have said in the patent and then binds them to their suggested counterfactual.

Harmless Error on Remand: The Federal Circuit identified an error in the lower court’s judgment but, because of waiver, did not require the lower court to re-open this issue on remand. Odds are that the lower court will not stick to its original opinion that has now been adjudged legally incorrect. Instead the court will more likely assert its discretionary power to take a fresh look at the issue of indefiniteness. This is especially likely if the district court broadly considers Supreme Court precedent such as Leer v. Adkins and the associated policy that “bad patents” should be invalidated even if that means bending some of the norms of civil procedure.

Court of Appeals: For Judge O’Malley (the opinion’s author), the waiver portion of the opinion appears to be written as a reminder to patent litigators that the Federal Circuit is a Court of Appeals rather than a trier of fact or court of first instance. This legal reality continues to be lost on some of her colleagues on the appellate bench.

Means-Plus-Function in Combination: A final MPF issue that could also create trouble for IPCom involves the fact that the Federal Circuit’s new construction of the claim includes only one element and that element is a means-plus-function language. The basis for means-plus-function claiming is found in 35 U.S.C. § 112¶6. That paragraph includes an apparent limitation that MPF elements are available only in “a claim for a combination.” The result: single element claims may not use MPF language to define that lone element. In re Hyatt, 708 F.2d 712 (Fed. Cir. 1983).

Challenging the Clear and Convincing Standard of Proof for Invalidating Patents in Court

Microsoft Corp. v. i4i Limited Partnership (on petition for certiorari 2010)

By Dennis Crouch

In 2009, an Eastern District of Texas jury awarded $200 million to i4i after finding that Microsoft willfully infringed the Canadian company’s patent. Judge Davis subsequently added-on $40 million of punitive damages for willful infringement.  The judge also issued an injunction ordering Microsoft to stop selling Word products with the capability of using “custom XML.” That injunction was stayed by the Federal Circuit pending appeal.  On appeal, the Federal Circuit affirmed the lower court’s findings of validity, willful infringement, enhanced damages, and permanent injunctive relief. Despite the injunction, Microsoft continues to sell its software based on a “patch” that apparently prevents the use of custom XML in Word.

Meanwhile, the USPTO conducted a reexamination of the i4i patent and confirmed that the claims at issue were properly patentable.   However, the reexamination did not consider what Microsoft's (now) argues is its key invalidity argument.  That invalidity argument is based on a prior offer-for-sale, and offers-for-sale are excluded from consideration during reexaminations.  The prior offer-for-sale was likewise not considered during the original prosecution of the i4i patent.

This summer, Microsoft petitioned the Supreme Court to take a fresh look at the case —  specifically asking the Court to reject the Federal Circuit's requirement that invalidity be proven with “clear and convincing evidence” when the invalidity argument is one that was not specifically considered by the Patent Office when granting the patent.  Microsoft raised the following  question:

The Patent Act provides that “[a] patent shall be presumed valid” and that “[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” 35 U.S.C. § 282.The Federal Circuit held below that Microsoft was required to prove its defense of invalidity under 35 U.S.C. § 102(b) by “clear and convincing evidence,” even though the prior art on which the invalidity defense rests was not considered by the Patent and Trademark Office prior to the issuance of the asserted patent. The question presented is:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

This petition is one similar to that raised by Microsoft in z4. That petition was withdrawn when the parties settled

Eleven parties have filed amicus briefs supporting the petition for certiorari.  Microsoft's counsel makes the point that the companies signing in their own name “employ more than three million people and the publicly-traded companies have a combined market capitalization of more than $1.2 trillion.”  Briefs opposing the petition as well as i4i's opposition appear to be due on October 29, 2010.

Chief Judge Roberts has recused himself from the case.

A review of the briefs follow.  Many of the briefs cover similar material and I have attempted to point out some of the differences. Of course, all of these briefs listed argue that the current evidentiary standard is too-high.

* * * * *

Briefs in support of the Petition:

36 Professors led by Mark Lemley:  The professors suggest that the clear and convincing standard does not make sense based on the known bureaucratic difficulties of the USPTO and the result that many issued patents would not survive a serious Section 103(a) analysis. The professors also write that the Supreme Court offered a signal in KSR that the Federal Circuit should reconsider its standard, but that the Federal Circuit has refused to do so.

Brief by Acushnet, SAP, and Others: James Dabney and John Duffy collaborated to examine the history of invalidity defenses. The brief does an especially good job of spelling out different aspects of an invalidity argument that may need a higher standard of proof.  Thus, Acushnet seemingly argues that uncorroborated oral testimony should still be excluded even if the general standard of proof was lowered.  This is one of the more nuanced briefs.

Teva, Cisco, and the Generic Pharma Association: The current standard creates an incentive for patent applicants to conceal material information from the USPTO. An issued patent is valuable — even if it would eventually be found invalid. The cost of invalidating a patent is so high that a patentee can usually obtain significant settlements even for a patent that should have never issued.

Google, Verizon, Dell, HP, Wal-Mart: A preponderance-of-the-evidence is the default burden of proof in civil cases.  The Federal Circuit has no legal justification for its clear-and-convincing standard that unduly burdens accused infringers.  The USPTO normal examination of patents is insufficient to warrant a high level of deference.

Yahoo!: “In requiring clear and convincing proof of facts bearing on patent invalidity, the Federal Circuit’s rule conflicts with this Court’s teaching that a heightened evidentiary standard should not apply where a statute does not prescribe the heightened standard.”

Intel: We have “a thicket of invalid patents that stifles competition and impedes further innovation.”

Securities Industry and Financial Markets Association:  “The Federal Circuit’s stance is contrary to the guidance of this Court as well as to the standards applied by the regional circuits before 1982.”  The flood of bad patents is especially troublesome in the area of business methods and financial software. New transparency laws make it more likely that these patents will be enforced.

Facebook, Netflix, et al.: An important goal of the patent system is to encourage innovation without disrupting other-innovation through mistaken government “grants of monopolies.” To harmonize with the reexamination statute, court's should at least lower the threshold for proving invalidity once a substantial new question of patentability is established.  (I wonder if Facebook's loose use of the “monopoly” term here will come back to haunt them.).

EFF et al.: Giving value to illegitimate patents creates perverse incentives.  These problems are particularly concerning in the software and internet realms for several reasons, including that they impede alternative innovation models such as FOSS.  In addition, the clear and convincing standard is a non-statutory extension of the law.

Apple: Apple argues that the current system makes it too difficult and costly to obtain a judicial decision that a patent is invalid. “”The clear and convincing standard shields a growing number of poor quality patents from the truthseeking function of our adversarial system.”

CTIA –  The Wireless Association: The clear and convincing standard makes a difference in litigation — making it much more likely that a patent will survive validity attacks.  This reality has created practical problems in dealing with holders of low-quality patents who seek large damage awards.

Documents:

Links


 

Fujitsu Ltd. v. Netgear

By: Jason Rantanen

Fujitsu Ltd. v. Netgear (Fed. Cir. 2010)
Panel: Lourie, Friedman, and Moore (author)

Indirect infringement claims are particularly relevant in the context of industry-wide interoperablity standards, because frequently companies simply manufacture products capable of particular behavior while the relevant methods are actually carried out by end users.  Patent No. 4,974,952 raises an example of this issue.  The '952 patent claims a method of sending wireless messages involving fragmenting the messages in a particular manner.  Philips, the patent holder, contended that any product that complied with certain sections of the IEEE 802.11 standard infringed the asserted claims, and that by complying with the standard Netgear indirectly infringed the '952 patent (presumably by selling the accused products).

The district court granted summary judgment of noninfringement in favor of Netgear, determining that Phillips had failed to establish either contributory infringement or inducement.  On appeal, the Federal Circuit determined that the district court had erred on some points, but nevertheless affirmed summary judgment of noninfringment with respect to all but four products. 

Use of Standards to establish Direct Infringement: The court's discussion of the use of industry-wide standards to prove infringement may become the most widely-cited portion of this opinion.  After considering the parties' arguments, along with that of amicus Association of Corporate Counsel Intellectual Property Committee, the court held that:

[A] district court may rely on an industry standard in analyzing infringement. If a district court construes the claims and finds that the reach of the claims includes any device that practices a standard, then this can be sufficient for a finding of infringement. We agree that claims should be compared to the accused product to determine infringement. However, if an accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product….An accused infringer is free to either prove that the claims do not cover all implementations of the standard or to prove that it does not practice the standard.

We acknowledge, however, that in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement. Or, as with the ’952 patent, the relevant section of the standard is optional, and standards compliance alone would not establish that the accused infringer chooses to implement the optional section. In these instances, it is not sufficient for the patent owner to establish infringement by arguing that the product admittedly practices the standard, therefore it infringes. In these cases, the patent owner must compare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard.

Slip Op. at 8-9. Applying this holding, the panel concluded that because the fragmentation feature in the 802.11 standard was optional, and (although present in the Netgear devices) was turned off by default, Phillips was required to prove that customers actually used the infringing feature. On this point, the Federal Circuit agreed with the district court that there was only evidence of actual infringing use with respect to four products.

Substantial Noninfringing Uses: The Federal Circuit applied the analysis of i4i v. Microsoft, focusing on the specific feature at issue.  Here, because the specific feature was infringing when it was activated, there was no substantial noninfringing use.

Material Part of the Invention: Phillips accused two classes of products: those that only fragmented messages and those that only defragmented messages.  Because the claims of the '952 patent were specifically drawn to the fragmenting steps, not the defragmenting steps, the district court concluded that the accused defragmenting products could not infringe.  Phillips argued that because fragmentation necessarily infringes the asserted claims, than the defragmenting products are useful only for infringement, and Netgear should be liable for them.  The panel rejected this argument: even though the usefulness of the claimed method would be lost without data receivers capable of defragmenting messages, the lack of defragmentation steps in the claims means that products that only defragment messages cannot constitute a "material part" of the invention. 

Mental State Components of Indirect Infringement: In analyzing the respective mental state components for contributory infringement and inducement of infringement, the panel found that Netgear's receipt of letters identifying the '952 patent and alleging infringement by any 802.11 compliant standard were sufficient to survive summary judgment.

Comment: my current research focuses on mental state issues in patent law, including in the context of indirect infringement.  In the near future, I'll discuss this subject in more depth. 

Other issues: In addition to the above indirect infringement issues, the Federal Circuit also concluded that the district court had erred in limiting damages based on the patent marking statute (35 U.S.C. § 287), because the claims covered a method and § 287 does not apply where the patent is directed to a process or method.  The Federal Circuit also analyzed the district's construction of relevant claim terms in Patent Nos. 6,018,642 and 6,469,993, and affirmed its grant of summary judgment of noninfringement of those patents.  The analysis in this section may be particularly relevant to those operating in the wireless technology area.

Follow-up comment: Michael Barclay also noted the importance of the standard-as-evidence holding on his blog, IPDuck.  See http://ipduck.blogspot.com/2010/09/federal-circuit-approves-use-of.html

Design Patents: Functionality and a Trade Dress Gap Filler

Bissell Homecare v. Wildwood Industries (W.D. Mich. 2009)

This case is not likely to move much beyond the pleadings because the accused infringer (Wildwood) has declared bankruptcy. Wildwood sells replacement filters for Bissell vacuums. Earlier this year, Bissell sued Wildwood for infringement of its design patent (D565818) as well as trademark infringement for advertising “Bissell style” filters. [Link]. Of course, the validity of this design patent is questionable because the shape appears to be almost completely dictated by a need for the removable filter to fit within the standard compartment. “[I]t has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not “ornamental” – was not created for the purpose of ornamenting. In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964); Hueter v. Compco Corp., 179 F.2d 416; Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996); Static Control Components, Inc. v. Lexmark Int’l, Inc., 487 F. Supp. 2d 830 (E.D. Ky. 2007).

In recent years (and in the wake of Wal-Mart v. Samara), design patents have begun be more aggressively asserted by manufacturers in place of (or alongside) trade dress claims. See Coach, Inc. v. Brown Shoe Company, Inc., 09-cv-05051 (S.D.N.Y., Complaint Filed May 29, 2009) (handbag); Hubbell v. Dynamic Lighting (light fixture); Deckers v. Bon-Ton (Kona Boot); NetGear v. Tong Ho Fong (wireless router); Nufix v. Bacterin Int’l. (surgical implant); Oakley v. Pacific Trade (sunglasses); Nike v. Not for Nothi’n (Air Jordan shoes); Poof-Slinky, Inc. v. Ja-Ru, Inc. (toy rocket); Lowes Co Inc, et al v. Pelican Products Inc (flashlight); Williams-Sonoma, Inc. v. Linen Source Inc (lamp – Indian design patents asserted in US court); Olivet International, Inc. v. Skyway Luggage Company (luggage wheel rims); Cartier et al v. Egana of Switzerland (watch); Plantronics, Inc. v. Wireless Connections NY, Inc. (earloop receiver); BELL HELICOPTER TEXTRON INC. et al v. ISLAMIC REPUBLIC OF IRAN et al (helicopter design).

  

Joint Patent Infringement Occurs When Infringement Results From Participation and Combined Action Of Multiple Parties

AIPLATalk182On Demand Machine v. Ingram and Amazon.com (Fed. Cir. 2006, 05–1074).

One aspect of this case involves the concept of “joint infringement.”  The district court instructed the jury as follows:

It is not necessary for the acts that constitute infringement to be performed by one person or entity. When infringement results from the participation and combined action(s) of more than one person or entity, they are all joint infringers and jointly liable for patent infringement. Infringement of a patented process or method cannot be avoided by having another perform one step of the process or method. Where the infringement is the result of the participation and combined action(s) of one or more persons or entities, they are joint infringers and are jointly liable for the infringement.

On appeal, the appellate panel found “no flaw in this instruction as a statement of law.”  This raises a number of interesting questions.  Many of these questions will be answered in the Freedom Wireless appeal that is currently being briefed. In that case, the lower court gave the following jury instructions:

if separate companies work together to perform all the steps of a claim of a patent, the companies are jointly responsible, that is, responsible as a group for the infringement of the patent.  Even if no single company performs all the steps of the claim, the companies are jointly responsible.

Based on these instructions, the jury found infringement.  In an unpublished order (Dec 05), the CAFC granted a stay of the injunction because of the questionable theory of joint infringement — noting that the CAFC has not directly addressed addressed the theory of joint infringement and there is relatively no precedent on that issue.

Notes:

 

Patent Attorney (2-8 years) – Law Firm – Denver, Boulder, Salt Lake City, Boise, or Remote

Holland & Hart is looking for experienced patent attorneys to join our dynamic, growing electronics and software focused patent practice.

Want to push the boundaries of patents and super-charge your practice?

Our team has the privilege of helping some of the world’s greatest technology companies create a smarter, better planet. Clients trust us to strategically protect and position their business-critical innovations using our unmatched expertise in wireless communications, memory technology, electronics, software (including AI and cloud computing), complex medical devices, and standards-essential patents. Our team of lawyers, patent agents, and patent engineers operates like a sophisticated technology team—we’re reinventing patent prosecution using AI and automation solutions created with our in-house developers.

Our relentless commitment to our clients is the hallmark of what we do. We intentionally cultivate a close-knit team culture that prioritizes people, client service, and technical excellence. Collaborative teamwork, innovation, diversity and inclusion, and maintaining a great work/life balance are core values and key to our success.

Tired of being bogged down in monotony and ready to focus on today’s and tomorrow’s most exciting technologies?

Want to leverage sophisticated patent drafting and prosecution tools to work faster and better?

Do you thrive in a supportive work environment where your ideas are encouraged, heard, and valued?

Then you’re a perfect fit for our cutting-edge team! Come reinvent your future with us.

Applicant Requirements:

  • Subject matter experience in Electrical Engineering, Physics, Computer Science/Engineering, Software, Mechanical Engineering, or comparable technologies.
  • Collaborative attitude and mindset—you will work daily with patent agents, patent engineers, IP specialists, software developers, and business professionals.
  • Top academic performance and aptitude to learn new technology required.
  • Wireless communications experience is a plus, but not required.

How do I apply? • Please be prepared to submit your resume, cover letter, brief writing sample (publicly available patent application, office action response, or other technical writing) and law school and undergrad transcripts via the online application portal. • To learn more about what makes our patent group unique and to apply please visit: https://hhpatentcareers.com/patent-attorneys-careers. • Contact Ceanne Price, Recruitment & Client Care Coordinator at CAPrice@hollandhart.com if you experience any issues or have questions.

Additional Info
Employer Type: Law Firm
Job Location: Denver, Boulder, Salt Lake City, Boise, or Remote

Patent Attorney (EE or Life Sciences) – Law Firm – Gaithersburg, MD

Edell, Shapiro, & Finnan is an intellectual property law firm located in the Washington, DC metropolitan area. We specialize in all areas of intellectual property law with particular emphasis in patent and trademark law.

Responsibilities:

  • Draft patent applications for U.S.-based and some non-U.S.-based companies. Meet in-person or virtually with inventors, discuss the technology, and draft patent applications. Understand a wide range of technologies, or be able to quickly get up to speed on technologies.
  • Prosecute patent applications before the USPTO, including conducting examiner interviews, filing responses, appeals, etc.
  • Instruct non-U.S.-based law firms in the prosecution of patent applications in various countries outside the U.S.
  • Conduct patentability, infringement/clearance and validity studies, and related client counseling and opinion rendering.
  • Participate in IPR proceedings at USPTO.
  • Communicate with outside counsel in connection with all activities mentioned above.
  • EE candidate will work in a wide range of technologies including wired and wireless networks and devices, wireless communication protocol technologies, media communication systems, network security, optical networks and devices, as well as medical electronic devices, and database systems.
  • Life Science candidate will work in a wide range of life science technologies including gene silencing, genetic analysis, recombinant antibodies, proteomics, transfection, and protein and small molecule pharmaceuticals.

Qualifications:

A successful applicant must possess:

  • At least 2 years of substantial patent application drafting experience, particularly in the technology areas listed above;
  • Registration as a U.S. patent attorney and knowledge of U.S. patent practice and procedures;
  • J.D. degree from an accredited law school and a license to practice in at least one U.S. state;
  • Excellent academic credentials;
  • Strong writing, communication, organizational and analytical skills; and
  • EE candidate must have undergraduate focus areas in electrical engineering, physics or computer science.
  • Life Sciences candidate must have Graduate-level experience in molecular or cell biology, genetics, or organic chemistry.

Apply via email to:
careers@usiplaw.com

Include a resume, cover letter, writing sample, and transcripts with your submission.

Additional Info
Employer Type: Law Firm
Job Location: Gaithersburg, MD

Patent Attorney – Large Law Firm – Gaithersburg, MD

Edell, Shapiro & Finnan, an Intellectual Property Boutique, located in Gaithersburg,
MD is seeking a full-time, immediate, Patent Attorney to join the patent prosecution team.

We are a fast growing, thriving, mid-sized IP firm that originated in the mid 80s. We are proud to boast a family friendly culture, a casual dress code, and a very convenient commute to those living in the suburbs of Montgomery County. We prefer local candidates, as face time is part of the job, but technologically offer the ability to work from home when desired. Our ideal candidate has a few years of experience at a high volume firm, that is looking for a quality of life adjustment.

We serve a diverse client base, which includes small start-up companies, academic institutions, and Fortune 500 companies having some of the world’s largest IP portfolios.  This client base values our knowledge, experience, and commitment to their objectives. While we can certainly port in your book of business, this position is primarily to support the firm’s existing client workload capacity. Training will be provided to understand client expectations.

Responsibilities:

  • Draft patent applications for U.S.-based and some non-U.S.-based companies. Meet in-person or virtually with inventors, discuss the technology, and draft patent applications.
  • Understand a wide range of technologies, or be able to quickly get up to speed on technologies.
  • Prosecute patent applications before the USPTO, including conducting examiner interviews, filing responses, appeals, etc.
  • Instruct non-U.S.-based law firms in the prosecution of patent applications in various countries outside the U.S.
  • Conduct patentability, infringement/clearance and validity studies, and related client counseling and opinion rendering.
  • Participate in IPR proceedings at USPTO.
  • Communicate with outside counsel in connection with all activities mentioned above.
  • Work in a wide range of technologies including wired and wireless networks and devices, wireless communication protocol technologies, media communication systems, network security, optical networks and devices, as well as medical electronic devices, and database systems.

    Qualifications:

A successful applicant must possess:

  • At least 2 years of substantial patent application drafting experience, particularly in the technology areas listed above;
  • Registration as a U.S. patent attorney and knowledge of U.S. patent practice and procedures;
  • J.D. degree from an accredited law school and a license to practice in at least one U.S. state;
  • Excellent academic credentials;
  • Strong writing, communication, organizational and analytical skills; and
  • Undergraduate focus areas in electrical engineering, physics or computer science.

    Benefits:

  • Fully paid employee health insurance
  • 401k matching
  • Health Club Reimbursement
  • Firm sponsored LTD/Life
  • Employee Assistance Program
  • Monthly wellness activities
  • Complimentary Parking
  • On site café and walking access to Rio Restaurant District

    To apply, please submit your resume, writing sample, and transcripts to Rebecca Reyes,
    Executive Director at careers@usiplaw.com.

 

Additional Info
Employer Type: Law Firm
Job Location: Gaithersburg, MD

Patent Attorney – Law Firm – Gaithersburg, MD

Edell, Shapiro & Finnan LLC, an established IP law firm, is seeking a patent attorney to join its Gaithersburg, MD office.

Responsibilities:

  • Draft patent applications for U.S.-based and some non-U.S.-based companies.
  • Meet in-person or virtually with inventors, discuss the technology, and draft patent applications.
  • Understand a wide range of technologies, or be able to quickly get up to speed on technologies.
  • Prosecute patent applications before the USPTO, including conducting examiner interviews, filing responses, appeals, etc.
  • Instruct non-U.S.-based law firms in the prosecution of patent applications in various countries outside the U.S.
  • Conduct patentability, infringement/clearance and validity studies, and related client counseling and opinion rendering.
  • Participate in IPR proceedings at USPTO.
  • Communicate with outside counsel in connection with all activities mentioned above.
  • Work in a wide range of technologies including wired and wireless networks and devices, wireless communication protocol technologies, media communication systems, network security, optical networks and devices, as well as medical electronic devices, and database systems.

A successful applicant must possess:

  • At least 2 years of substantial patent application drafting experience, particularly in the technology areas listed above;
  • Registration as a U.S. patent attorney and knowledge of U.S. patent practice and procedures;
  • J.D. degree from an accredited law school and a license to practice in at least one U.S. state;
  • Excellent academic credentials;
  • Strong writing, communication, organizational and analytical skills; and
    Undergraduate focus areas in electrical engineering, physics or computer science.

Contact
To apply email careers@usiplaw.com. Please submit your resume, writing sample, and transcripts.

Additional Info
Employer Type: Law Firm
Job Location: Maryland

IP Associate Attorney – Law Firm – Reston, Va. or Burlington, Mass.

logoThe Marbury Law Group, PLLC is seeking an experienced, highly qualified IP associate attorney for our Reston, Virginia or Suburban Boston (Burlington, MA) offices.

The candidate will focus mainly on the preparation and prosecution of patents in one or more of the following areas: telecommunications (i.e., wired and wireless communications, hardware and software, networking, etc.), computer engineering, electrical engineering or software for U.S. based clients, and will interface with foreign counsel to obtain international patents for our U.S. based clients.

Portable business is not required. However, the ideal candidate should possess strong client communication and development skills with the desire and ability to take a lead role in managing and growing client accounts.

Education Background:

The ideal candidate is a registered U.S. patent attorney with at least a B.S. in electrical engineering, computer science, computer engineering, or mechanical engineering. However, candidates with a B.S. or advanced degree in other technical fields will be considered.

Experience:

The ideal candidate has at least 2 years of patent experience in prosecuting existing and drafting new patent applications or patent examination, preferably with patent or technical experience in one of the fields noted above.

Duties:

The candidate will focus mainly on the preparation and prosecution of patents in one or more of the following areas for U.S. based clients:

- Electrical: telecommunications (i.e., wired and wireless communications, hardware and software, networking, etc.), electrical engineering, computer engineering and software;
- Mechanical:  medical devices, clean technology.

Duties may also include the drafting and analysis of patent re-examinations as well as opinions of counsel; management and direction of foreign counsel; client counseling, infringement analysis, validity analysis, re-examination and reissue request drafting, IP licensing, IP due diligence, and assistance with marketing and client development efforts; possible review and management of junior associate work product for senior candidates; and direction of paralegal staff.  In addition, duties may include occasionally supporting our firm’s commercial litigation practice in the litigation of IP matters, including the drafting of pleadings, discovery requests, motions, briefs, reports, etc.

Salary:

We offer a unique compensation structure which provides a generous base salary with an expectation of 1550 minimum billable hours per year.

For employees who generate over 1550 billable hours per year, we also offer a formula-based bonus for each billed hour over 1550 hours. Total compensation is based on productivity and billable hours, and is projected to be similar to that of large law firms for candidates interested in billing large law firm hours (e.g., ~ 2000 billable hours).

Benefits:

We offer a professional, relaxed, supportive office environment, casual dress, flexible work hours, with a low minimum billable hours requirement, free parking and comprehensive benefits including paid vacation, health and disability insurance, 401(k), profit sharing, et cetera.

We encourage and support associate attorneys in marketing and developing their own clients. Associate attorneys receive credit for client origination, manage the client relationship with supervision from our partners, and receive a bonus based on the amount of client origination.

Contact
Please email cover letter, resume, two letters of reference and writing sample (published patent application preferred) to careers@marburylaw.com.

Additional Info
Employer Type: Law Firm
Job Location: Reston, Virginia or Burlington, Massachusetts

Patent Attorney – Law Firm – Washington, D.C.

Rabin & Berdo, PCRabin & Berdo, PC, an intellectual property law office in Washington, DC, is seeking a patent attorney to prepare and prosecute patent applications.  We are a boutique IP law firm specializing in United States patent preparation, prosecution and counseling.  The firm represents clients working on the cutting edge of a wide range of technologies, including network technology, software, data storage, Internet applications, wireless and other communications, and digital signal processing.  Potential candidates are referred to the our website for further information about the firm's practice.

The firm offers a relaxed working environment both in terms of hours and adaptation to family lifestyle, while offering a competitive salary and bonus structure commensurate with education/experience, opportunities for advancement, and benefits including a 401(k) plan, health, dental, vision and long term disability insurance, as well as flexible work hours.  Also, an interstate telecommuting option is available for the right candidate.  Our goal is maintain the firm as a place where everyone feels intellectually challenged, professionally rewarded, and excited to come to work each day.

The job offers an opportunity for someone with a suitably technical background to develop a rewarding career in intellectual property law.  Candidates should have a strong technical background, possess excellent English writing, language and communications skills, pay meticulous attention to detail, have a demonstrated ability to work well with colleagues and clients, and to work efficiently, independently and productively, and show a strong interest in advancing a career in intellectual property law.

We are seeking a Patent Attorney who will be responsible for drafting and prosecuting patent applications in the electrical and computer arts, as well as occasionally preparing patentability, invalidity, and infringement analyses.  An advanced degree in electrical engineering, computer science, physics or equivalent experience is preferred.  Registration to practice before the U.S. Patent and Trademark Office is required.

Candidates should have at least three years of patent drafting and prosecution experience in the electrical arts and a background of knowledge or experience facilitating work in a broad range of electrical engineering, computer hardware and software, wireless communications, microprocessors, mobile devices and memory devices, and be able to easily understand circuit diagrams.

Contact
To apply, please email Steven Rabin at: srabin@rabinberdo.com.

Additional Info
Employer Type: Law Firm
Job Location: Washington, D.C.

Patent Attorney – Large Corporation – Santa Clara, Calif.

Intel Intelis seeking a Patent Attorney with wireless expertise to:

  • Assist with portfolio management tasks including harvestings, committee meetings and dispositions, quality reviews, outside counsel oversight, notice of allowance and post issuance reviews
  • Prosecute selected US and foreign matters
  • Counsel inventors on legal questions in areas such as bars to obtaining a patent, patentability and inventorship requirements
  • Provide harvestings and trainings to engineers and business units and establish and maintain relationships with key inventors and business units
  • And oversee areas of strategic interest and provide substantive feedback to end users in litigation, licensing and analysis.

Key Qualifications

  • A Juris Doctor Degree (J.D.)
  • Experience: 5+ years of directly relevant experience
  • Admission to a state bar for US-based attorneys
  • Technical background focused on wireless

The ideal candidate must also demonstrate:

  • Excellent problem-solving skills
  • Ability to multitask
  • Strong written and verbal communication skills
  • Ability to work in a dynamic and team oriented environment

Intel prohibits discrimination based on race, color, religion, gender, national origin, age, disability, veteran status, marital status, pregnancy, gender expression or identity, sexual orientation or any other legally protected status.

Contact
Apply online by visiting this link: http://www.intel.com/content/www/us/en/jobs/job-search/js2.html?job=764346.

Additional Info
Employer Type: Large Corporation
Job Location: Santa Clara, California

Legal and Corporate Affairs offers unique opportunities to work in a variety of areas, including counsel to Intel businesses; technology and intellectual property licensing; patent prosecution; trademarks and brands; litigation, mergers, acquisitions and investing; legislative and regulatory lobbying; and corporate compliance.

IP Associate Attorney – Law Firm – Reston, Va. or Suburban Boston, Ma. (Burlington)

The Marbury Law Group, PLLC Marbury Lawis seeking an experienced, highly qualified IP associate attorney for our Reston, Virginia or Suburban Boston (Burlington, MA) offices.

The candidate will focus mainly on the preparation and prosecution of patents in one or more of the following areas: chemistry (primarily organic) or chemical engineering, pharmaceuticals, medical devices, semiconductor devices and processing, materials science/nanotechnology, clean technology, telecommunications (i.e., wired and wireless communications, hardware and software, networking, etc.), electrical engineering or software for U.S. based clients, and will interface with foreign counsel to obtain international patents for our U.S. based clients.

Portable business is not required. However, the ideal candidate should possess strong client communication and development skills with the desire and ability to take a lead role in managing and growing client accounts.

Education Background
The ideal candidate is a registered U.S. patent attorney with at least a B.S. in electrical engineering, computer science, physics, materials science, chemistry, chemical engineering, or mechanical engineering. However, candidates with a B.S. or advanced degree in other technical fields will be considered.

Experience
The ideal candidate has at least 2 years of patent experience in prosecuting existing and drafting new patent applications or patent examination, preferably with patent or technical experience in one of the fields noted above.

Duties
The candidate will focus mainly on the preparation and prosecution of patents in one or more of the following areas for U.S. based clients:

  • Electrical: telecommunications (i.e., wired and wireless communications, hardware and software, networking, etc.), electrical engineering, software;
  • Chemistry: organic chemistry, chemical engineering or pharmaceuticals;
  • Materials/Physics: semiconductor devices and processing, materials science/nanotechnology, batteries, fuel cells, solar cells;
  • Mechanical:  medical devices, clean technology.

Duties may also include the drafting and analysis of patent re-examinations as well as opinions of counsel; management and direction of foreign counsel; client counseling, infringement analysis, validity analysis, re-examination and reissue request drafting, IP licensing, IP due diligence, and assistance with marketing and client development efforts; possible review and management of junior associate work product for senior candidates; and direction of paralegal staff.  In addition, duties may include occasionally supporting our firm’s commercial litigation practice in the litigation of IP matters, including the drafting of pleadings, discovery requests, motions, briefs, reports, etc.

Salary
We offer a unique compensation structure which provides a generous base salary with an expectation of 1550 minimum billable hours per year.

For employees who generate over 1550 billable hours per year, we also offer a formula-based bonus for each billed hour over 1550 hours. Total compensation is based on productivity and billable hours, and is projected to be similar to that of large law firms for candidates interested in billing large law firm hours (e.g., ~ 2000 billable hours).

Benefits
We offer a professional, relaxed, supportive office environment, casual dress, flexible work hours, with a low minimum billable hours requirement, free parking and comprehensive benefits including paid vacation, health and disability insurance, 401(k), profit sharing, et cetera.

We encourage and support associate attorneys in marketing and developing their own clients. Associate attorneys receive credit for client origination, manage the client relationship with supervision from our partners, and receive a bonus based on the amount of client origination.

Contact
Please email cover letter, resume, two letters of reference and writing sample (published patent application preferred) to careers@marburylaw.com.

Additional Info
Employer Type: Law Firm
Job Location: Reston, Virginia or Suburban Boston, Massachusetts (Burlington)

IP Attorney – Law Firm – Salt Lake City, Utah

The Thorpe North & Western Salt Lake City, Utah office of Thorpe North & Western, a patent boutique with over 20 Patent Attorneys, is seeking highly skilled and productive Patent Attorneys. As part of our team you will be working with a diverse group of clients ranging from sophisticated startups to Fortune 100 companies. We work in the areas of electrical engineering, wired and wireless telecommunications including VOIP and 3GPP, software design, database and server technologies, and other fields. Clients have also engaged our firm to evaluate patent portfolios, draft licensing and patent sale agreements, perform re-exam evaluations, due diligence in M&A transactions, opinion work, trademark work, and litigation.

We offer exceptional benefits, training, and a competitive compensation package with guaranteed bonuses based on work performed.  Thorpe North & Western is ideal for attorneys who seek firms on a growth path.

Candidate Qualifications:
Must have passed a state bar and the USPTO patent bar. 2+ years of law practice with substantial patent preparation and US and foreign patent prosecution experience of matters. A Bachelors or Masters degree in Electrical Engineering or a comparable engineering background is preferred. Experience in RF design and wireless standards such as 3GPP is a plus. Actual engineering experience is a plus.

Contact:
Please email your resume, writing samples (in the public domain) and transcripts to patlaw@tnw.com. Submissions will be maintained confidential.

Additional Info:
Employer Type: Law Firm
Job Location: Salt Lake City, Utah

IP Attorney – Large Corporation – Atlanta, Ga.

AT&T AT&T has a position in Atlanta for an attorney with 3 - 5 years experience in private practice. The position would involve managing the continued development of AT&T's extensive portfolio of wireless technology patents, including counseling AT&T's IP business managers, as well as managing outside prosecution counsel. Over time the position will also entail counseling on a host of IP issues including patent and technology licensing, litigation support, prelitigation defensive studies, patent assertion work, as well as AT&T's customer and vendor relationships.

The candidate must be admitted to practice before the USPTO and have a degree in electrical engineering, computer science, physics or mathematics. Experience in wireless technologies is highly desirable. The candidate must also possess outstanding academic credentials, excellent communication, computer and organizational skills, as well as the ability to interact with all levels of management. 

Contact:
Apply to http://att.jobs (job number 1105859) and include law school transcript and two writing samples. AT&T views diversity and inclusion as essential to its culture and business success.

Additional Info:
Employer Type: Large Corporation
Job Location: Atlanta, Georgia 

Senior IP Attorney – Large Corporation – Bellevue, Wash.

T-Mobile USA T-Mobile has an exciting opportunity for an experienced Intellectual Property attorney to use their patent prosecution expertise. This position offers a unique opportunity to proactively shape the development of T-Mobile's growing portfolio of intellectual property assets to meet the strategic needs of a company that is passionate about delivering innovative products and services to its customers. The attorney who fills this role will demonstrate an ability to provide expert-level legal advice and support to the business relating not just to patent procurement, but a wide variety of challenging intellectual property matters in a quickly evolving and changing industry.  This attorney will report up to the Vice President, Deputy General Counsel within the Legal Department at T-Mobile's corporate headquarters in Bellevue, WA.

Responsibilities:
• Working directly with inventors and outside prosecution counsel to guide inventive concepts in a wide variety of established and emerging technology areas, from disclosure through application and issuance (which may include some internal preparation and prosecution of patent applications);
• Taking a leading role in the selection, procurement and management of the company's patents domestically and internationally, as well as managing the company's patent incentive program;
• Conducting patent due diligence analysis and advising on acquisition and licensing opportunities;
• Advising internal business clients and legal staff on company's intellectual property policies and general IP law as well as assisting in the creation, implementation and communication of corporate intellectual property policies and training materials.
• Communicating and coordinating with European affiliates' IP counsel on global intellectual property issues, policies and licenses; and
• Teaming with company attorneys to analyze and address a variety of issues impacting the company's full range of intellectual property assets, including general intellectual property claims, technology licensing and litigation;

Qualifications:
• Five+ years of total legal experience is required, of which a significant portion should have been spent in drafting and patent prosecution.
• Admission to practice before US Patent and Trademark Office
• A degree in Electrical Engineering, Computer Science/Engineering or similarly relevant technological discipline, as well as law firm and/or previous in-house experience are strongly desired.
• Deep knowledge of US Patent Law and patent prosecution techniques,  familiarity with US law regarding title transfers of patents and patent applications, and knowledge of basic PCT and some foreign Patent law and procedures.
• A demonstrated facility in prior art and assignment searching, licensing researching US and foreign patent law.
• Prior patent litigation or technology licensing experience are highly desirable.
• A passion for technology and demonstrable skills in understanding and communicating highly technical concepts quickly and accurately will be needed; specific telecommunications experience is a plus, but not required.

More generally, the successful candidate must have the aptitude for, and a strong desire to obtain, a deep and broad knowledge of wireless telecommunications products and services. A demonstrated ability to recognize and weigh business and legal risks, to advance practical solutions, and to excel while working with multiple clients in a fast-paced environment, are required. Candidate must be detail-oriented, possess excellent verbal and written communication skills, and present a positive, customer-oriented manner to all clients and co-workers.

Get ready for more with T-Mobile: career growth, personal recognition, and a diverse, high-energy culture are just the beginning. You'll also enjoy competitive pay, special employee phone plans, generous paid time off, tuition assistance, medical and dental coverage, a great company-matched 401(k) plan, advanced training, and more.

At T-Mobile everyone has a voice! We strongly support diversity in the workforce and T-mobile is an equal opportunity employer (EOE).

Contact:
Please apply by visiting http://www.tmobile.jobs/ and searching for req #235992.

Additional Info:
Employer Type: Large Corporation
Job Location: Bellevue, Washington

In today's hectic environment filled with constant motion, we at T-Mobile USA pride ourselves on providing wireless communications that allow our customers to stick together with the people who mean the most to them. Based in Bellevue, Washington, T-Mobile USA, Inc. is the mobile communications subsidiary of Deutsche Telekom AG (NYSE: DT) and serves more than 30 million customers nationwide. We have more than 40,000 employees who work together to keep our customers connected through the quality of our service, the span of our coverage, the reliability of our network and the value of our plans.

Egregious Delay and Blatant Disregard for Precedent

In re TracFone Wireless, Inc. (Fed. Cir. 2021)

On mandamus, the Federal Circuit has again found that Judge Albright clearly abused his discretion in failing to rule on TracFone’s motion to transfer its case out of the Western District of Texas and to a more convenient venue.

Although Judge Albright has promised rapid progression of patent infringement cases to trial, he has been sitting on transfer motions and leaving them undecided.  Here, the appellate panel repeated its prior statement that Judge Albright’s approach “amount[s] to egregious delay and blatant disregard for precedent.”

We order the district court to stay all proceedings until such time that it issues a ruling on the motion to transfer that provides a basis for its decision that is capable of meaningful appellate review.

The court went on to particularly order that Judge Albright issue an order within 30 days. The court also ordered “that all proceedings in the case are stayed until further notice.”  Presumably, this means that the this panel of Federal Circuit judges (REYNA, CHEN, and HUGHES) will maintain supervisory authority over the case throughout this process.

Precis Group filed the original lawsuit back in April 2020 and TracFone submitted its motion to dismiss/transfer in June 2020. Since that time, the case has proceeded without any ruling on the motions. In December, the court held a Markman hearing and issued a claim construction order. (Note here, it is only a 2-page order).  In any event, the case is well underway and Judge Albright understands many of the issues at stake in the litigation.  Of course, this experience through delay appears to be strategic on Judge Albright’s part because his familiarity with the case is a reason to deny a transfer of Venue.  The Federal Circuit panel looked to avoid rewarding Judge Albright for his “bad” behavior. Thus, the court explained that “any familiarity that [Judge Albright] has gained with the underlying litigation due to the progress of the case since the filing of the complaint is irrelevant when considering the transfer motion and should not color its decision.”

= = =

TracFone’s motion is both for lack of proper venue under 28 U.S.C. §1400(b) and inconvenient venue under 28 U.S.C. §1404(a).  Regarding proper venue, TracFone does not reside in TX — it is a Delaware corporation headquartered in Miami, Florida.  In addition, TracFone argues that it “does not have any place of business” in the W.D. Texas.  TracFone does sell its products throughout the district using, but it appears to no longer have a branded store.  Rather, its products are sold within other outlets such as 7-11, Dollar General and Joyeria y Discoteca Diana.  These “independently owned and operated stores” may have franchise rights that allow them to use TracFone’s trademarks and create contractual rights on behalf of the company, but the defendant argues those agreements do not result in TracFone having a “place of business” within the district.

A Written Description of the Invention (including how it is made?)

by Dennis Crouch

CenTrak v. Sonitor Tech (Fed. Cir. 2019) is a quirky case that basically stands for the (wrongheaded) proposition that the Written Description Requirement does not usually require a description of how to make the invention actually work. Here, largely the court relied on the broad language of Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014) (“written description is about whether the skilled reader of the patent disclosure can recognize that what was claimed corresponds to what was described; it is not about whether the patentee has proven to the skilled reader that the invention works, or how to make it work, which is an enablement issue.”).  

The district court dismissed this infringement lawsuit on summary judgment — finding the asserted claims invalid for lack of written description or not infringed (or both).  On appeal the Federal Circuit reversed that determination — finding both issues ripe with “genuine disputes of material fact.”

The patent at issue here claims the use of ultrasound signals to track location of a mobile device (typically a patient in a hospital).  U.S. Patent 8,604,909.  There are several reasons why ultrasound can be a better option than WIFI or infrared (IR) signals for location detection within a small area.  For example, the steeper proximity decay makes it much less likely that a distant base-station would pick-up the signal. Thus, location can be discovered and without needing triangulation or highly precise equipment.  Both the patentee and accused infringer deal in ultrasonic location equipment.

All the claims are directed to the ultrasound approach.  However, it does not appear that the inventor initially cared much about the ultrasound approach. Rather, the original provisional application does not mention ultrasound at all [60881269].  While the subsequent priority non-provisional application also focuses primarily on the use of IR and RF signals, it does does include two-sentences disclosing ultrasound signalling:

Although IR base stations 106 are described, it is contemplated that the base stations 106 may also be configured to transmit a corresponding BS-ID by an ultrasonic signal, such that base stations 106 may represent ultrasonic base stations. Accordingly, portable devices 108 may be configured to include an ultrasonic receiver to receive the BS-ID from an ultrasonic base station.

The original priority filing also included one claim directed to ultrasonic detection.  That claim was the subject of a restriction requirement and withdrawn.  The patent at issue is the resulting divisional application filed with a set of 25 claims all directed to ultrasonic detection.

At trial, the inventor admitted that the invention did not describe an ultrasonic portable device:

Q. But there’s no ultrasonic portable device that is actually described in the ’909 patent; right?

A. This is correct, yeah.

But, the inventor indicated (supported by expert testimony) that a person of skill in the art would have little trouble adapting the disclosure to build the ultrasound system.

[To make the invention]  You have to understand how to drive an ultrasonic transmitter, how to receive an ultrasonic signal, and how to process them. But this is known art to people who are knowing ultrasound.

In its invalidity decision, the district court focused on the testimony of no example device and concluded that the mere mention of ultrasonic techniques was not sufficient to satisfy the written description requirement.  The court explained, for instance, that the claims include timing synchronization elements that were explained for IR, but that timing could be quite different for ultrasound of speed (speed of light vs speed of sound) and reflection differences.

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The written description requirement is a test of for sufficiency of disclosure — The disclosure must “reasonably convey . . . that the inventor had possession of the claimed subject matter as of the filing date.” Ariad.  The basic question is whether the specification as originally filed provides evidence that that the inventor actually invented what is being claimed.

In looking at the evidence on appeal, the Federal Circuit found a “genuine issues of material fact” as to whether “disclosure of the implementation details” is necessary to satisfy the written description requirement.  According to the court, written description does not demand examples, or actual reduction to practice. Rather, the law only requires “identif[ication] of the claimed invention . . . in a definite way” quoting Ariad.

Here, the court concluded, “the specification at least mentions base stations and receivers that use ultrasound,” and in many cases such a mention is sufficient to satisfy WD.  One question that arises from Ariad is the level of detail required. In that case, the court explained that “the level of detail required to satisfy the written description requirement varies depending on the nature and  cope of the claims and on the complexity and predictability of the relevant technology.”  Here, the court concluded that the level of complexity and predictability is a factual issue in dispute and thus that it should go to trial rather than be decided on summary judgment.

In this process, the court noted that on remand, the district court should also consider the separate doctrine enablement that may bear more teeth in this type of situation.

On infringement, the district court also dismissed the case for lack of infringement. The claims require use of wireless computer network, including a backbone, Wi-Fi access points, and server hardware. The accused infringer does not supply this material but instead piggy-backs its systems as an add-on to the already existent network.  The district court found that no single entity had “made” the system and so Sonitor could not be liable as a direct infringer.

On appeal, the Federal Circuit rejected that analysis — finding material evidence that Sonitor was the “final assembler” of the system and thus could be held liable for “making” the invention.   I’ll note here that the hospitals themselves could be held liable, but the patentee would rather extract rents from its direct competitor rather than its potential clients.