Microsoft Corp. v. i4i …. the short version.

Microsoft v. i4i (or Microsoft v. small Toronto technology company) has been making big waves in the patent law community. Here is the gist of it.

The United States Supreme Court has decided, 8-0, no Justice Roberts, that the Patent Act requires invalidity to be proven by “clear and convincing” evidence. Microsoft Corp. v. i4i Limited Partnership.

Justice Sotomayor, writing for the court said that when Congress stated in § 282 of the Patent Act of 1952 that a patent is “presumed valid,” the presumption of validity had a “settled meaning.” This meaning, according to which “a defendant raising an invalidity defense bore ‘a heavy burden of persuasion,’ requiring proof of the defense by clear and convincing evidence.”

The Court concluded that the Act codified the settled meaning of the presumption, including the heightened standard of proof, regardless of the fact that § 282 of the Patent Act “fails to reiterate it expressly.”

The Court also rejected Microsoft’s alternative argument that the preponderance standard should at least apply in those situations where the evidence relied on to establish invalidity was not before the PTO. The court stated that “the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate,” and that it may “consider that fact” when deciding whether the clear-and-convincing standard has been met.

American Invents Act – What’s The Deal, yo.

So America is at the precipice of major patent reform, here’s the important deals for y’all.  Congress will likely complete patent law reform legislation before the August recess. It appears that the Senate is likely to endorse most or all of the provisions in H.R, 1249, now called the America Invents Act.

There are some major changes—such as first inventor to file priority, and the new post grant and inter partes procedures—will not be effective for 12 to 18 months. Many changes, however, will be effective when President Obama signs the law or shortly thereafter.

Fees

• A 15% increase in almost all fees, including maintenance fees (SEC. 11, amending 35 U.S.C. § 41);
• A $4,800 fee for filing a prioritized application (effective 10 days after enactment) (SEC. 11(h), amending 35 U.S.C. § 41); and
• A $400 fee for non-electronic filing (effective 60 days after enactment) (SEC. 10(h)).

PTO Proceedings

• A higher threshold for requesting inter partes reexamination (until that procedure is abolished): showing a reasonable likelihood that the requester will prevail with respect to at least one claim (SEC. 6(c)(3), amending 35 U.S.C. § 312(a));
• District court review of reexamination decisions under 35 U.S.C. § 145 will be eliminated (SEC. 6(h), amending 35 U.S.C. § 306);
• Certain tax strategies will be defined as within the prior art with respect to both existing patents and pending applications (SEC. 14); and
• Calculation of patent term extension will be modified in pending applications and matters subject to judicial review (SEC. 37).

Litigation

• A prior user defense will be available with respect to patents issued on or after the date of enactment (SEC. 5, amending 35 U.S.C. § 273);
• The best mode defense will not be applicable in proceedings commenced on or after the date of enactment (SEC. 15, amending 35 U.S.C. § 282);
• Virtual marking, by reference to a website, will be effective as of enactment, including pending cases (SEC. 16(a), amending 35 U.S.C. § 287(a));
• Private false marking claims will require proof of competitive injury and the relief will be damages, and marking with the number of a patent that covered that product but has expired will no longer be false marking, effective on enactment and including pending cases (SEC. 16(b), amending 35 U.S.C. § 292(a));
• Joinder of unrelated accused infringers will be limited in actions commenced on and after enactment (SEC. 19(d), adding 35 U.S.C. § 299); and
• Issuance of patent claims directed to or encompassing a human organism will be barred as of enactment (SEC. 33).

Apple and Nokia duke it out at the ITC

The ITC is a great forum for patent litigation, I hope to have some more about this topic a little later, but, I came across a pretty good article about the latest Apple v. Nokia dispute. Turns out, back in April 2011, the ITC had recommended that HTC and Nokia shouldn’t be held liable for patent infringement.

Apple had been seeking to bad imports of HTC smartphones that run the Google developed Android operating system, as well as some Nokia phones. The ITC staff recommendations are not binding here, they are only recommendations.  This is the first case involving a patent dispute over smartphones using the new Android OS to reach this level at the ITC. The ITC is a quasi-judicial federal agency that arbitrate international trade disputes. There are many advantages to litigation at the ITC, one of which is that some of the binding precedent at district court does not apply at the ITC. The smartphone industry is estimated to be a $100 billion market.

Apple’s dispute is that Taiwan-based HTC infringes five of its patents. The patents are described as being important for the “seamless integration of hardware and software.”  Stay tuned for August 5, when Judge Carl Charneski is scheduled to release his findings. The court’s order is subject to review by the ITC, which can bar imports of products found to infringe U.S. patents.

The patents including those related to signal processing and inter-process communications are from technology developed in the early 1990s and “were, at best, a very narrow distinction” from the invention of others.

HTC

The Ultimate Road Trip (2009) Re-posted from e-Veritas

By 23991 David Chee (RMC 2008)

There are vacations, and then there are road trips. In a typical vacation, the journey is short, and lacks spontaneity. Elements of challenge and adventure are absent. The path less traveled is not taken, and risks are avoided. A road trip, by contrast, is a journey of uncertainties. It involves leaving your comfort zone and flying by the seat of your pants. It goes against the grain.

This past summer, 24074 John Im (RMC 2008) and I spent the month of July traveling across western North America on what can only be described as the ultimate road trip. As outdoors enthusiasts, we were more interested in exploring the mountains, forests, and deserts of the continent, rather than wandering around the urban sprawl of the cities. We cooked our own food, surfed the ocean, squeezed in Cross-Fit workouts whenever possible, and took the time to enjoy the natural wonders of North America. There was no GPS, and (almost) no hotels. We spent our time in the wilderness camping out underneath the stars, took refuge in the hospitality that was offered to us, and tamed the jungles of Las Vegas (A road trip becomes the ultimate road trip with a stop at Vegas).

The 11,000-km journey extended across two provinces, and seven American states. The trip began in Edmonton, continuing through the Canadian Rockies to Vancouver. We then followed U.S. Route 101 from Seattle, Wash., south along the entire U.S. Pacific Coast. Scaling giant sand dunes in Oregon, to catching waves on the rough and rocky Malibu coast, we definitely had our fill of (mis)adventure. Driving along the Oregon coast is riveting, the curves are tight, the cliffs are steep and deadly, and the ocean is endless. We arrived at our destination just north of Reedsport, Ore., in the evening, with a few hours of daylight to spare. Not knowing much about sand dunes, we drove onto a sandy cliff, and disembarked for dune exploration. Unfortunately, shorts and a t-shirt didn’t offer much protection against the howling 30 knot winds, and we were tamed by the stinging blasts of sand. The next day we stopped at the world’s largest sea lion cave, and returned back to the dunes. This time, we arrived prepared. With sand protection, goggles, and of course a dune buggy, we subsequently tamed the dunes.

The Redwood Forest, near California’s border with Oregon, contains the largest collection of redwood trees in the world. Not only are the trees very old, they are gigantic and surrounded by lush vegetation. The giant ferns, and abundant wildlife make the Redwood Forest seem like it belongs in Jurassic Park. Lt. Im and I quenched our thirst for fitness here, Cross-Fitting on ancient tree stumps for box jumps, tree branches for chin-ups, and running along the meandering forest trails. In this oxygen rich environment, novice athletes will have no trouble, and experienced athletes will feel bulletproof.

We proceeded east to Lassen Volcanic Park, which is peppered with hydrothermal and geothermal features, making it one of the most unique places in North America. From sulfur springs to mud pots, and lava beds, there is no shortage of interesting things to see. We found a good way to experience the park is by running one of the mountain trails. Parking the car at the visitor centre, we laced up a good pair of sneakers, and jogged the trail down to Bumpass Hell. Travel on the trail is actually not recommended; a slip off the side of the cliff could prove fatal. The slippery snow covered trail descends down semi-mountainous terrain, around giant boulders, and snakes through a forest of pine trees, to one of the main highlights of the park – Bumpass Hell. It contains many thermal vents, steaming pools of water, and colourful patches of mineral stained snow.

We left Lassen, Calif., following a winding two lane highway through the ranges of the Sierra Nevada Mountains, towards the Mojave desert. Our next destination was the hottest and lowest point in North America, the Badwater basin of Death Valley. After gassing up at a small outpost in Jawbone Canyon, Calif., we set off to explore some of the 13,628-sq km park. Taking extra gas and a plentiful supply of water, it took two full days. We drove from Panamint Springs, on the western edge of the park, to Stovepipe Wells, via the remote backcountry desert trails. During the day, the sun-scorched terrain of Death Valley is extremely harsh, but it offers a great number of places to explore. We found hidden caves along the Armagosa Mountain range, and walked across superheated salt flats. At night, the park transformed itself into a completely different world. Cottontail rabbits, rattlesnakes, and scorpions are just a few of the many creatures that emerge under the cover of darkness. With not a drop of water left, needless to say, Death Valley kept us busy and exhausted enough to skip the Cross-Fit of the day. Making our way back to Highway 101, we continued to San Diego, Calif., the southern most extent of the road trip. Precluded from crossing the border into Mexico, we turned east, driving across Arizona’s Sonora desert, and through Navajo country in New Mexico. Setting our sights north to Alberta, we traversed the Great Plains in Colorado, and crossed the empty Wyoming countryside on our way back home. At many instances throughout the road trip, I couldn’t help but consider the hardships endured by the early explorers such as Capt. Meriwether Lewis and William Clark, during the Corps of Discovery. On their mission of exploration, they, too, at times must have felt insignificant alongside some of the most awe-inspiring places on the continent.

California’s national parks are fantastic places to explore, camp out, and enjoy nature. The Pacific Northwest offers similar opportunities to satisfy the outdoorsman’s hunger for adventure. Next year, if you have difficulty deciding how to spend block leave, consider embarking on a road trip. This means going off the grid. Leave the big city comforts and convenience behind, take a few emergency rations, leave an itinerary in the hands of someone trustworthy, and journey into the rugged, unpredictable, and breathtaking wilderness of North America.

RIP
2x Digital Cameras
1x Disposable Camera (MIA)
1x Sea Lion
1x Flashlight
1x Off-road Tire
1x Cottontail Rabbit
1x Kit Fox
1x GPS
1x Awesome Road Trip

Nortel patents will play key role in your next smartphone

Waiting for that new iPhone5? Excited to see what Samsung’s new Galaxy Phone is all about, or anxious about the latest Droid? We all are, in some way. But the truth is all these shiny new goodies will incorporate many of the patents from a failed hi-technology juggernaut – Nortel Networks. The Ottawa, Ont. based company rapidly expanded in the nineties and was a world leader in technological innovation. Its souffle like collapse ignited a firesale of useful patents that many of its formal rivals, like Nokia, Apple and RIM have been eager to snap up. The treasure trove of riches that is Nortel wireless technology  will help shape your next smart phone and the network it will run on for the next ten years, at least.

Duncan Stewart, director of research at Deloitte, said as smart phones grow ever more popular, the patents behind the technology in them will grow ever more important.

Waterloo, Ont.-based RIM has been eager to access this technology. RIM has struggled recently to compete with Cupertino, Calif. based Apple.

RIM executives have stated “These are crucial things that are going to be at the core of networks almost certainly for at least the next decade.”

A Globe and Mail news article reports that:

A consortium of companies which includes RIM, Apple, EMC, Ericsson, Microsoft and Sony, won the auction Friday with a bid of $4.5-billion. The bid beat Google’s attempt at acquiring the valuable technology. Google has been rapidly gaining market share in the wireless market with its Android operating system.

There is also concern the patents may fall into the wrong hands, spurring a cascade of expensive litigation.

“Certainly litigation by entities colloquially known as patent trolls in the United States has become something of an epidemic,” he said. But, Ullmann noted, that at $4.5-billion, it was difficult to believe that the purchase was a purely defensive move. “There must be inherent value for them in this stuff as well,”

The immediate effect of Nortel’s patents is still unclear, and whether it will effect the race between RIM and Apple is yet to be seen. These  patents are the remnants of a once powerful telecommunications company. The company may no longer exist, but it’s valuable intellectual property is still leading the industry years after its collapse.

….and we’re back!

Alright folks, after a little break there, it’s time to start blogging again. I’m going to try to focus a bit more on what this blog was originally designed for – patent litigation and other cool IP stuff – instead of hockey, music and random stuff that I’ve put on here recently. There are several interesting developments in the IP world that I will try to keep everyone appraised of in the next few weeks.

— DWA