On appeal to the Board of Patent Appeals and Interferences, the patent applicants argued that their “ball having integrated timers for measuring or counting at least one time period” was novel over the asserted prior art. The Board agreed that the device was patentable because the prior art did not use a predetermined countdown time period.
Sample Claim from the Patent Application:
21. An apparatus comprising:
a ball having a surface and at least one internal cavity; at least one timer for measuring at least one predetermined time period; and the timer integrated with the ball.
According to USPTO records, the patent application (10/014,297) is assigned to the Classic Sports Company of Denver.
A reader asked about how I find news to post. Here are some tips and rules that I follow:
1. The primary sources for the Patently-O Blog are judicial opinions released by the Federal Circuit and various district courts.In addition, I pay attention to rule changes at the Patent Office and legislative changes in Congress.My policy is to post a review of every appellate opinion directly related to patent law, most rule/legislative changes, and some district court opinions.
2. Secondarily, the world of blogs (or blawgs) provides lots of interesting points of interest. For example, I read about the recent patent lawsuit against the RIAA on Stephen Nipper’s blog. I use the online news reader “Bloglines” check for new items from blogs around the world. I have about 35 blogs in my list. There are millions of blogs, so 35 is quite culled.
There are definitely other blogs that should be on my list, but I just don’t have time to process that much information. Here are four patent related blogs that I often use as sources. (in no particular order).
3. I look to the mainstream media to uncover some items more related to the business of patents and patent law.For example, I read about the patent suit against Major League Baseball on c-Net News. Generally, I try to add to the story in a meaningful way. For example, for the MLB case, I downloaded the patent from the USPTO and looked at the claim language and figures. Then, I contacted the plaintiff’s attorney to get his comments about the case.
Google and Topix are both news aggregators. They seem to use quite different algorithms for ranking news stories. Thus, it is unlikely that a scan of the top 10 stories will reveal more than 2 or 3 overlapping repeats. Apparently, Yahoo News is more popular, but I don’t really like it.
4. Other. I get lots of e-mails from readers about various items of interest. This often spurs me to delve into the story to see whether I can provide some insight. In addition, I just do what seems interesting to me. For example, Last year I drove through the hills of western North Carolina and truly enjoyed the scenery and people. On a whim, I looked for recent patents issued to inventors located in Asheville — and posted a brief article on the topic.
A few months ago, David Nelson of Asheville, North Carolina received a patent on his device for capturing insects. (U.S. Patent No. 6,651,379). Essentially, David has created a stack of extra sticky pads — like Post-It® notes on steroids — that can be used to capture flies and other bugs.
Each sheet has a region is coated with a mild compression adhesive material capable of trapping of an insect in response to the physical manipulation by a human being…. For increasing the maneuverability of the device, the device can be attached to an elongated rod such as a fly swatter’s handle.
In his recent article “Patent and Trademark Searching Via the Web,” Robert Ambrogi provides a concise guide for using the Internet to find both U.S. and international patents and trademarks. Robert’s first stops are the USPTO and the EPO. These sites are free, easy to use, and fairly comprehensive. Several fee-based services, such as Delphion and Micropatent are good second options if a more comperhensive search is required. Finally, Robert mentions the ROSSCO website that provides a matrix of patent search options.
Major League Baseball (MLB) is the subject of a new patent infringement lawsuit. A Texas based patent holding company has sued MLB Advanced Media for infringement of its patents covering “computer simulation” of live events, such as baseball games. (e.g., Patent No. 6,204,862). The case, filed in Austin, revolves around MLB’s Internet-based products.
The following specific MLBAM products and services are implicated in the lawsuit: (1) Gameday, (2) Condensed Games, (3) Searchable Video (formerly called Custom Cuts), (4) Highlight Reels and (5) Fantasy Player Tracker. (DDB Press Release).
The four asserted patents are members of a single “patent family” and date back to a patent application filed in 1990. David Barstow, Plaintiff DDB Technologies’ head honcho, is listed as an inventor.
Last year CBS’s SportsLine settled with DDB — licensing its patent portfolio on a non-exclusive basis. (Link).
Invent Blog: An online music distributor has reportedly sued the Recording Industry Association of America (RIAA) for patent infringement. The asserted patent claims a method for generating a unique identifier based on content of a datafile, then later using the identifier to track files containing identical content. (U.S. Patent No. 5,978,791). The RIAA is accused of using the patented technology to track down peer-to-peer (P2P) copyright violators.
In a suit filed with the Los Angeles District Court, Altnet maintains that the RIAA, Loudeye subsidiary Overpeer and a fellow anti-piracy operation, MediaDefender, have all violated a patent it holds covering the identification of files on a P2P network using digital fingerprint technology. (The Register).
Altnet is a partner with Kazaa, and according to cNet news, “has been trying for several years to persuade record labels and music studios to allow Altnet to sell authorized versions of their products through the Kazaa file-swapping network.”
The lawsuit was filed in the Southern District of California.
The National Institutes of Health (NIH) has proposed a program of full public access to clinical results from agency funded research.
Establishing a comprehensive, searchable electronic resource of NIH-funded research results and providing free access to all, is perhaps the most fundamental way to collect and disseminate this information.
Although lauded by many, it is expected that publication of results would injure the market for journals and other publications.
Pinpoint v. Amazon. (N.D. Ill. Aug 31, 2004) (Conlon, J.).
Pinpoint has sued Amazon and others for infringement of its patented system for scheduling broadcast and providing access to video programs. (E.g., U.S. Patent No. 5,758,257). Pinpoint claims that Amazon’s website infringes by providing personalized book and music video suggestions.
In an August 31 decision, Judge Conlon of the Northern District of Illinois (E.D.) granted in-part Amazon’s motion for summary judgment — holding that claims 1-7 of one asserted patent to be invalid over several prior art references. However, Conlon’s decision will allow Pinpoint’s other claims, based on two additional patents, to move toward trial.
Amazon is entitled to judgment as a matter of law as to the invalidity of claims 1-7 of U.S. Patent No. 5,754,939. Pinpoint’s claims with respect to U.S. Patent Nos. 5,758,257 and 6,088,722 must proceed to trial.
Trial is scheduled in Chicago for December 6, 2004.
Chicago based Boeing recently patented a method of assembling a wing using a pair of wing spars. (U.S. Patent 6,779,272). According to patent office records, the Boeing Company holds thousands of patents on various aerospace technologies. Boeing also has several hundred more patents applications on file at the Patent Office awaiting action. In 2003, Boeing received 266 issued patents — slightly more than the country of Norway.
The USPTO along with the Alexandria Small Business Development Center are offering a workshop entitled “How to Do Business with the USPTO.” The workshop, running from 8:00 – 11:00 a.m. is intended to “educate and guide Alexandria’s small business community about the contract opportunities available at the USPTO by providing information on how the agency acquires its goods and services.”
Wednesday, September 8, 2004 8:00 – 11:00 a.m. Jefferson Building Conference Room 500 Dulany Street, Alexandria, VA
National Instruments (NI) sued MathWorks overs for infringement of its patented method of creating data flow diagrams. The jury sided with NI and the district court denied Mathworks’ subsequent motion for JMOL.
On appeal, MathWorks raised several issues and argued that the permanent injunction issued by the district court went impermissibly beyond the jury’s findings. Specifically, MathWorks argued that its Simulink software had many non-infringing use and that a product based injunction was unduly broad. However, the Appellate Panel, reviewing for an abuse of discretion, affirmed — holding that the trial court was sufficiently cognizant of MathWorks arguments in its decision.
MathWorks VP Richard Rovner outlined their position going forward:
First, The MathWorks will abide by the decision of the court and will make modifications to the Simulink product.
Second, the decision affirms that customers can continue to use previously purchased Simulink products and that The MathWorks can continue to provide technical support for these products.
Third, The MathWorks remains fully committed to the Simulink product family and, consistent with the court’s decision, will continue to support and enhance it.
Mr. Ralph appealed from a Missouri court judgment imposing sanctions for discovery abuses, violation of court orders, repeated attempts to conceal misconduct and a three million dollar damage award for patent infringement and an alternative award of liquidated damages for breach of contract.
This case falls in line with the recent McFarling opinion involving Monsanto’s Roundup-Ready seeds. Mr. Ralph owns a Tennessee farm. He purchased Roundup-Ready seeds and then reportedly saved seeds from the F1 generation — a violation of the patent and the licensing agreement. During discover, Ralph burned some seed stockpiles — apparently to avoid discovery.
The Federal Circuit agreed with Monsanto that the district court properly applied sanctions for discovery abuses and properly calculated a reasonable royalty. However, the Appellate Panel did find that Monsanto’s “one-size-fits-all” 120 multiplier for breach of contract failed to distinguish between various modes of breach — and thus was not enforceable.
Conclusion
Although we have determined that the contract-based damages are excessive in light of our recent decision in McFarling, the trial court did not abuse its discretion in its choice of sanction or its denial of Ralph’s post-judgment motion, and Ralph has not shown that the jury award for patent infringement is “grossly excessive or monstrous,” clearly not supported by the evidence, or based only on speculation or guesswork. Accordingly, the decision of the district court is
From Promote The Progress: As the figure shows, the use of Chapter II demands in PCT filings is in sharp decline. The driving force is that many countries no longer requre the Chapter II proceedings for the 30 month national stage filing extension. At the same time, the number of international patent applications continues to rise. (Data from WIPO).
Many Internet standards are initially developed in papers known as Requests for Comments (RFCs). A purpose of an RFC is to collect propose a common language for facilitating development and to collect commentary. Often, however, the RFCs become the authoratitive document describing a particular function. For example, RFC-1738 was created by Berners-Lee in 1994 and is thought of as an authoritative, unbiased source relating to the meaning of the term “URL.” The Federal Circuit, however, has refused to allow RFCs to take an authoritative position in claim construction. ACTV v. Disney, 346 F.3d 1082 (Fed. Cir. 2003). In ACTV, the Appellate Court differentiated RFC documents that attempt to shape meaning of terms from dictionaries that reflect established usage.
This is the latest appeal in the lengthy litigation between Juicy Whip and Orange Bang. (U.S. Patent No. 5,575,405). On remand to determine damages, the district court rejected Juicy Whip’s argument that it would have sold more syrup “but for” Orange Bang’s infringement. Juicy Whip appealed.
Juicy Whip claimed that there exists a functional relationship between its patented dispenser and the unpatented syrup, a link adequate to justify recovery of lost profits. The CAFC agreed and vacated the jury’s award and remanded this case back to the district court for a third time to allow Juicy Whip to prove lost profits on its syrup sales.
The CAFC followed the “functional unit” test set forth in Rite-Hite, e.g., that the entire market value rule is a principle of patent damages that defines a patentee’s ability to recover lost profits on unpatented components typically sold with a patented item, if both constitute a functional unit.
The CAFC found that Juicy Whip’s dispenser and the syrup were analogous “to parts of a single assembly … as the syrup functions together with the dispenser to produce the visual appearance that is central to Juicy Whip’s ’405 patent.”The Court explained that “a functional relationship between a patented device and an unpatented material used with it is not precluded [from profit determination] by the fact that the device can be used with other materials or that the unpatented material can be used with other devices.”
Note: Joseph Herndon is a law clerk and at the intellectual property firm McDonnell Boehnen Hulbert & Berghoff and is a registered patent agent. Joe has a stellar background in electrical engineering and plans to graduate from law school in 2005. herndon@mbhb.com.
Lighting World v. Birchwood Lighting (Fed. Cir. 2004).
In its complaint, Lighting World asserted that Birchwood’s fluorescent lamp fixtures infringed Lighting World’s patents. At the close of Lighting World’s case-in-chief, the court granted Birchwood’s motion for JMOL on the ground that Lighting World had not shown equivalence under the doctrine of equivalents.
Lighting World appealed the District Court’s claim construction determination that the term “connector assembly” was a means-plus-function limitation. The unanimous Appellate Panel vacated, finding that Birchwood did not demonstrate that section 112 ¶ 6 should apply.
[W]e have seldom held that a limitation not using the term “means” must be considered to be in means-plus-function form. In fact, we have identified only one published opinion since Greenberg (Fed. Cir. 1996) in which we have done so, and that case provides a useful illustration of how unusual the circumstances must be to overcome the presumption that a limitation lacking the word “means” is not in means-plus-function form.
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IBM and Intel have announced a general license agreement on their patented blade server technology. This move is expected to create a level of standardization in the blade server market. (The Register).
The license (PDF) is directed at “copyright and trade secret rights in the Specification, to use the Specification for the limited purpose of designing and manufacturing Licensed Products, and to reproduce a limited number of copies of the Specification as is reasonably necessary to design and manufacture Licensed Product.”
Most notably, the license does not extend to patents, patent application, or trademarks.
Licensors grant no license … under any patents, patent applications, mask works or trademarks of the Licensors. Licenses under any patents of IBM or Intel will be addressed in separate patent license agreements.
Instructions for registering for a license are available here.
Note: This move falls in line with IBM’s open source philosophy. However, it is important to note that IBM and Intel may likely retain control over much of this technology through their vast patent portfolios.
Declan McCullagh at Cnet News is one of the best tech-law reporters on the scene. In his recent report on the Digital Millennium Copyright Act (DMCA) case Chamberlain v. Skylink, McCullagh begins:
A federal appeals court has reaffirmed what might seem obvious: Replacement garage door openers are legal to sell.
More particularly, a Federal Circuit Appellate Panel found that the encrypted code that allows your garage door receiver to recognize a signal from your remote control opener is not subject to copyright law — and thus not subject to the DMCA.
The so called “anticircumvention provision” of the DMCA bars attempts to circumvent technological measures that are put in place to control access to copyrighted works. In this case, the court dismissed the plaintiff’s appeal because the encrypted code garnered no underlying copyright protection.
CPI (Guidant) controls several patents relating to implantable cardiac defibrillators (ICDs) that are permanently installed under the skin, and that determine abnormal cardiac activity and treat that activity by delivering electrical shocks to the heart muscle in appropriate strengths. CPI charged St. Jude with infringement of two of these patents.
A jury found both patents valid and enforceable, but only one infringed. After trial, the district court granted St. Jude’s motions for JMOL — holding both patents invalid and not infringed. The court also granted a new trial (in the event of reversal) and awarded sanctions for witness misconduct. CPI appealed the judgment of invalidity and non-infringement.
The Appellate Panel agreed with CPI and reversed, finding that the district court improperly granted JMOL. With respect to obviousness, the Federal Circuit found a nonobvious difference between the prior art’s recognition of a problem and the patented solution.
We think that the district court, in granting JMOL, applied an incorrect standard to the ultimate question. Recognition of the problem of treating complex heart arrhythmias does not render obvious the eventual solution. Recognition of a need does not render obvious the achievement that meets that need. There is an important distinction between the general motivation to cure an uncured disease (for example, the disease of multiple forms of heart irregularity), and the motivation to create a particular cure.
The lower court had also invalidated the patent based on a failure to state a best mode for supplying batteries. However, the Appellate panel found that there was “evidence before the jury that persons knowledgeable in the field of the invention would know the sources of batteries for pacemakers and related devices. There was no evidence of concealment, and the jury had evidence that the Honeywell battery was published in a publication for battery specialists. There was substantial evidence whereby a reasonable jury could have found that the best mode requirement had not been violated. The grant of JMOL on this issue is reversed, and the jury verdict is reinstated.”
The Appellate Panel continued: “The jury verdicts on the issues of obviousness and best mode were not against the manifest weight of the evidence.” Thus, no new trial may be held on the issues of obviousness or best mode. However, a new trial was warranted with respect to infringement because the district court erred in its claim construction.
AFFIRMED IN PART, REVERSED IN PART, AND REMANDED.
Update: Peter Zura at the 271 Patent Blog has more information on the case. Reuters story.
