Tag Archives: Licenses

Patently-O Patent Prosecution TipCast No. 1

Patent, Patent Prosecution

PatentlyOImage010The first Patently-O Patent Prosecution TipCast has just been released.  The TipCast series is an audio lecture series that is intended to provide helpful hints and information to patent attorneys and agents.  TipCast No. 1 provides a tip relating to revival of abandoned applications.

Click to Download and Listen to TipCast No. 1. (2.9 MB, mp3 format, 3 minutes audio).

Show-notes:

Thanks goes to Evan Brown and the rethink(ip) group for their inspiration and encouragement.  For those interested in the creation of the TipCast — I used my laptop computer hooked to a Logitech USB microphone ($14) and a software package titled Media Wizard (CDH Productions, $50) to record my voice.  I also used Media Wizard to mix-in the music.  Although I have some radio experience from my days as an announcer at WPRB Princeton, this was my first digital recording.

A client who is also a Patently-O reader sent me a note this morning that the recording was very nicely done, but that it seems like a lot of work on my part — She asks, “why the audio form rather than visual?”

My Response: There is new technology coming along that is going to make the audio format very easy to use — although right now only the real techno-geeks and audiophiles are involved. I have to admit that I still know very little about this, but there is technology available to allow your hand-held device, such as your iPod or even your cell phone, to subscribe to an audio feed. Each time the feed is updated, the device would download the mp3 file and allow you to listen to the newest update. With a touch of a button, you could listen while on your morning commute or while working out at the gym.

 Thank you for all the comments and complements on the TipCast.  Even my wife was very nice this morning to mention that I certainly have the face for Podcasts. . .

Do not copy this article!

Patent

Today’s "blog-flog" in the world of intellectual property concerns the notion of copyright.  Writing for Between Lawyers, the newest Corante weblog, trademark attorney Marty Schwimmer discusses a recent spate of case-summary copying.  For the most part, I agree with Marty’s conclusions:

Forget about copyright. Think of it in terms of manners. Do not copy word for word without credit. Show respect for the small things of others.

You should note, that I just copied part of Marty’s post — However, I used proper copying etiquette by letting the reader know the origin of the quote.  Over at the TTABlog, John Welch talks about his recent experiences:

The TTABlog strives to provide well-written, readily understandable case summaries and commentary. It takes a considerable amount of work to produce that kind of writing, and it is quite upsetting to find someone else using that work product without permission, or even attribution. Just such an incident occurred today.

Kevin Heller, the Tech Law Advisor, gets into the fray as well, as does Bill Heinze, who comments that he provides links to all of his sources.

I have seen entire posts from Patently-O copied and posted in other blogs, on robot-built websites, in other languages, on newsgroups and in other locales as well.  I have even given a few people, such as the editors of IPFrontLine, the freedom to copy entire posts for their own use.  The copycat activity is often good publicity for me, the blog, and my firm (MBHB).  However, if there is no source identifier, then there is no publicity value. 

I have received nice notes from half a dozen law school professors and even a few high-school teachers who asked to copy portions of the blog for their courses.  In another instance, I talked with an attorney who wanted to use information from the blog in a bar association presentation.  Each time I have said yes.  The best part is that, on several occasions, this initial contact was the beginning of a growing friendship — just another example of how copyright is a public good. (I.e., this is an example of how copyright is good for the public.)

In one particularly bad case of copying, I saw a nicely written IP blog post reviewing a new case (not from Patently-O).  A few weeks later, I received a mailer from a major law firm reviewing the same case.  (No, the particularly bad element is not that it took the major firm several weeks to write a case review.)  The particularly bad element is that the major law firm’s case review was almost an exact copy of the the blog post. The greatest difference being that the name of the blogger as author had been replaced with the name of an attorney at the major firm.  We IP bloggers are too polite to name names, but the copycats should be on their toes.

An old friend e-mailed me about this post — his comments are valid:

Your note about blog plagiarism is about the same old stuff of simple plagiarism in any form. "Copying" is too neutral a word. . . . This is serious, serious stuff.

The truth is that if you are a professional and you plagairize, it will come back to haunt you one day.

Here is my copyright policy: Anyone should feel free to copy a short snippets from the blog, so long as you attribute the material source. Shoot me an e-mail if you want to copy an entire post or a series of posts.  You can print out individual posts and send them to a client — just don’t white-out my name or replace my name with your own. 

Kevin Heller e-mailed to ask why I don’t use the creative commons license?  The truth is that I love the CC licensing system — my problem is that I like to get an e-mail or telephone call from the person/organization that wants to use the material.

CAFC: Licensee must hold all substantial rights under a patent to bring an infringement suit.

Patent, Patent Cases 2005,

Aspex Eyewear v. E’lite Optik (Fed Cir. 2005) (04-1292)(NON PRECEDENTIAL).   PatentlyOImage001

by Joseph Herndon

In general, a licensee is not entitled to bring suit in its own name as a patentee, unless the licensee holds all substantial rights under the patent.

Aspex appealed the decision of the District Court stating that Aspex lacked standing to sue as an exclusive licensee for infringement of two patents (one naming Richard Chao as the sole inventor and the second being a CIP of the first with brothers David and Richard Chao as the named inventors). 

Aspex entered into a written license agreement with Chic that granted Aspex an exclusive license in the U.S. to any rights Chic had acquired from third parties relating to patents involving magnetic eyewear. Later, Richard Chao granted Chic an exclusive license for two patents.

In September 2000, Aspex sued E’Lite for infringement of the two patents. Chic was not named as a party to the suit. The district court concluded that Aspex lacked standing to sue because Chic did not convey any future-acquired patent rights to Aspex, and thus Aspex was not an exclusive licensee of the asserted patents.

On appeal, the Federal Circuit held that the plain language of the Chic-Aspex Agreement makes it clear that the agreement relates only to patents then-owned by Chic, not future-acquired ones. The court contended that if the parties had intended to include future-acquired patents, it more likely would have stated “is and/or will become the owner,” within the agreement. The court also looked to use of the past tense “LICENSED” in term “LICENSED PATENTS” to suggest which patents were at issue.

The court further iterated that even though the license covered patents “relating to magnetic eyewear for eyeglasses,” a provision which certainly covers the two patents at issue, the specific grant provisions control the scope of the license agreement—not the general subject matter of the license. Thus, the court held Chic did not grant an exclusive license to either of the patents to Aspex, and as such, Aspex lacks standing to sue.

Joseph Herndon is a law clerk and at MBHB and is a registered patent agent. Joe has a stellar background in electrical engineering and will graduate from law school this year. herndon@mbhb.com.

Appeals Court Partially Reverses eBay Patent Case: Setting the Stage for a Permanent Injunction

Patent, Patent Cases 2005,

Patentlyo058

MercExchange v. eBay (Fed. Cir. 2005)

by Dennis Crouch

At the district court level, Thomas Woolston, creator of the MercExchange and Patently-O Reader, won a $35 million patent infringement suit against eBay for infringement of his patents covering live internet auctions.  On March 16, 2005, the Federal Circuit released its decision on appeal, reversing the decision in-part, but setting the stage for a permanent injunction against eBay.

On appeal, the Federal Circuit partially overturned the district court’s decision, finding that at least one of the MercExchange patents invalid but vacating the lower court’s ruling that another patent was invalid.

Perhaps most importantly, MercExchange challenged the district court’s refusal to issue a permanent injunction against eBay’s use of the invention.  The CAFC agreed with MercExchange, that the district court “did not provide any persuasive reason that this case is sufficiently exceptional to justify the denial of a permanent injunction.”  Specifically, the CAFC found that the fact that MercExchange expressed a willingness to license was not a valid reason for depriving it of the right to an injunction to which it would otherwise be entitled.

If the injunction gives the patentee additional leverage in licensing, that is a natural consequence of the right to exclude and not an inappropriate reward to a party that does not intend to compete in the marketplace with potential infringers. . . . We therefore see no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.

Of course, there is only a very small likelihood that eBay would allow its servers to be shut-down rather than settle the case.  In addition, it is unclear how an injunction would operate in this case, although it would most likely only alter e-bay’s ‘buy it now’ feature.

Finally, the appellate panel affirmed the portion of the judgment denying an award of enhanced damages or attorney fees for MercExchange.

AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, and REMANDED.

The MercExchange patents are also under reexamination at the Patent Office.  However, if the litigation concludes before the reexam is complete, there is some question as to whether the reexam can be used by eBay to re-open the case.  One issue stems from the 1803 case of Marbury v. Madison where the Supreme Court held that the Judiciary, not the Executive Branch that determined the law.  In this case, the PTO (Executive Branch) would be telling the Judiciary to change its mind.

Links:

March 16, 2005 04:02 PM US Eastern Timezone

eBay Statement on U.S. Court of Appeals Ruling in MercExchange Case

SAN JOSE, Calif.–(BUSINESS WIRE)–March 16, 2005–eBay (Nasdaq:EBAY) is pleased with today’s decision by the U.S. Court of Appeals that invalidates one of MercExchange’s patents, and as a result, throws out all the related damages. Looking forward, we believe that any injunction that might be issued by the District Court with respect to the other patent will not have an impact on our business because of changes we have made following the District Court’s original verdict. The U.S. Patent and Trademark Office is actively reexamining all of MercExchange’s patents, having found that substantial questions exist regarding the validity of MercExchange’s claims. The Patent and Trademark office has already initially rejected all of the claims of one of MercExchange’s patents. We are confident in our position against MercExchange and do not believe that these matters will have any impact on our business.