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.
- 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)).
- 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).
- 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).
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.
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.
I’ve read quite a bit about Facebook in the news recently, and most of the stories are about trademark infringement lawsuits. I thought it would be interesting and informative to briefly summarize a few of these law suits and discuss some of the trademark issues and black letter law.
Recently, Facebook began to offer customized URL addresses to its users. It was a helpful option that allowed people to share their pages with others without long, cryptic and incomprehensible URL strings most often associated with generic, computer assigned URLs. For example, a user named John Doe could choose to have his personalized URL read http://www.facebook.com/johndoe. Various companies and trademark holders were concerned that users could choose to register well known trademarks and brand names instead of their own names. If users then sold these popular name URLs, they derived a benefit unfairly by exploiting the good will of a company and a registered trademark. If a personal user chose to register the URL http://www.facebook.com/starbucks that would constitute a trademark infringement, cyber squatting and possible dilution.
Facebook has taken steps to prevent such use. It will not allow users to select a personalized URL during the early registration if they joined the social networking site after June 9, 2010. This well prevent a flurry of users seeking to register different types of names. Also, Facebook has given all companies registered with their site an early registration window where they can register their personalized URL before any other user. Facebook has also made these URLs non-transferable so that no user may buy or sell or derive any profit from the registration. Facebook will also hear complaints from companies who allege users have unfairly pirated their name as a URL.
Facebook has also been on the prowl, actively searching for trademark infringers. It found one target, a consortium of teachers and educators who created an online “Teachbook” using a similar social networking concept as Facebook. Facebook’s greatest fear is that using the “-book” suffix could create many other groups that would dilute their brand. Indeed, as we have learned in class through examples such as Xerox, Aspirin and Shredded Wheat that effective policing is critical to the survival of a brand. Facebook is undoubtedly a trademark savvy company and recognizes that maintaining its intellectual property requires active policing to prevent third party use of confusingly similar or the same marks.
Clearly, Facebook cannot afford to hale into court each and every infringer as the cost of litigation makes such a course of action highly impracticable and disagreeable. For example, at my previous law school, we had an online “Face Book” where our school mug shots were stored on the University of Ottawa intranet and only law students and professors could access the site. Given the recent successes of Facebook in federal court on the issue of the suffix “-book” it is not unlikely that Facebook may have a strong chance of success.
Facebook sued “Teachbook” for cyber-squatting, trademark infringement, unfair competition and trademark dilution in the U.S. District Court for Northern California. Facebook’s complaint reads that “book” has no descriptive meaning but it is arbitrary, and highly distinctive in the context of social media and networking sites. Facebook argues that its use in commerce of the work “book” has gained secondary meaning and therefore deserving of protection. Facebook goes on to state that allowing “book” to be used by other social networking “would dilute the distinctiveness of the Facebook marks, impairing their ability to function as unique and distinctive identifiers of Facebook’s goods and services.”
Within the last week, Facebook has successfully registered the word “face” as it applies to Facebook. The U.S. Patent and Trademark Office on Tuesday issued a Notice of Allowance and to get final approval, Facebook must show that the mark is used in commerce. This protection only extends to “telecommunication services, namely providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter.” This marks a success in Facebook’s quest to trademark the word “face.” For over 6 years it has sought such protection, beginning in 2005 when it challenged Faceparty.com, a U.K. social-networking site that launched in 2000.
Facebook is not the only one doing the suing. Recently “Lamebook” (which is an online parody of Facebook which features funny pictures, comments and wall-to-wall conversations) pre-emptively sued Facebook seeking an injunction presumably to prevent Facebook from suing it on the basis of trademark infringement. It appears that dispute resolution efforts have failed and Facebook filed a counterclaim within days. Facebook’s recent court appearances and lawsuits demonstrates that the company not only is serious about protecting its intellectual property, but it has felt threatened by the recent growth of “facebook-like” social networking sites.
The Court of Appeals for the Federal Circuit issued its decision in Pequignot v. Solo Cup in mid-July.
The court commented on the burden of proof on the element of intent to deceive the public, and confirmed that marking with expired patents constitutes false marking under the statute.
This subject matter of this case surrounds a pretty mundane topic – plastic cup lid molds that were marked with an expired patent. Solo Cup is the defendant cup lid manufacturer based in Lake Forest, Ill., with its Canadian subsidiary office located in Scarborough, Ont. Solo cup is a dominant player in the “cup and lid market” – manufacturing lids for prominent companies such as Starbucks, DQ, Wal-Mart and many universities and colleges. Interestingly, the red plastic cups most often used in “beer pong,” or “flip cup” are manufactured by Solo.
An individual named Matthew Pequignot decided to sue the lid company on the basis that Solo was falsely marking their products. Mundane a topic it may be, the case demonstrates an important legal concept; marking products with expired patents. Under the statute, a company can be charged with false marketing if it sells products with expired patents.
False marking, as defined by statute, occurs when one labels an “unpatented article” as being under patent “for the purpose of deceiving the public.” Any person may sue for the maximum of $500 for “every such offense,” of which the U.S. government would receive half.
Mr. Pequignot brought this claim against Solo for marking their plastic cup lids with patents that had expired. Who knows what motivated Mr. Pequignot to launch the lawsuit, perhaps he thought he had a slam-dunk case, or maybe he wasn’t a fan of the “flip-cup” game. Who knows.
Solo owned two patents for their drink cup lids – similar to the type you’d have on your Starbucks coffee or soft drink from any fast food joint. The patent numbers were added to the mold of the lids. So in the manufacturing process, each lid was ‘marked’ with a patent number. (Check your lids next time to see if there is a patent number there, haha) However, when those patents expired, the molds were not changed and the lids were continually used with with an expired patent number.
Solo was aware of the predicament and sought legal advice on the best course of action. Solo was advised to remove the imprinting from the molds, but if that was not possible, Solo should “not further any unintentional falsity in the product literature or the like.” Based on this advice, Solo decided to replace the molds due to usage and wear and tear. Solo justified this course of action because replacing all of the molds immediately “would be costly and burdensome.” In hindsight, replacing a few molds would be far less costly and time consuming that the litigation that ensued!
Pursuant to § 292, the test for false marketing requires that a party must have marked an “unpatented article.” (i.e. placing the patent number on the product). The district court held that Solo Cup’s acts in continuing to mark articles with a patent after its expiration constituted false marking. On appeal, in its defense Solo Cup argued that products previously protected by patents that have since expired are not “unpatented articles” under the statute. They attempted to make a distinction between articles that have previously been patented, and articles that have had no patent at all. The Federal Circuit disagreed. That court stated that “articles marked with expired patent numbers are falsely marked . However, as the Federal Circuit noted, whether or not the article in question is “unpatented” does not, by itself, determine the question of liability under the statute.
What’s interesting is that the court affirmed that false marking and evidence of knowledge creates a rebuttable presumption of intent. This means that burden of proof now shifts to the defendant company to rebut that presumption of intent. If they are unable to furnish any proof to discharge their evidential burden, then the presumption stands. In addition to (1) evidence of “unpatented” articles, the statute also requires that (2) the marking party act “for the purpose of deceiving the public.”
What this means is that mere knowledge that a marking is false (i.e. patent is expired) is insufficient to prove intent if a marking party can prove that it did not consciously desire the result that the public be deceived. The company still had to prove that it did not consciously attempt to deceive the public. Rebutting the presumption requires more than a mere assertion by the party that it did not intend to deceive (proof is required, just saying “I didn’t mean to deceive the public” is not enough…) the required burden of proof is to show by a preponderance of the evidence (or on the balance of probabilities) that the party did not have the requisite purpose to deceive.
The Federal Circuit agreed with the district court that Solo Cup had not acted with an intent to deceive the public with respect to marking with expired patents. However, the court held that Solo acted “in good faith reliance on the advice of counsel and out of a desire to reduce costs and business disruption.” The following are facts that the court used in its decision:
- The good faith reliance of Solo Cup on the advice of its counsel;
- Undisputed evidence of logistical and financial inconvenience in changing the packaging;
- Evidence of Solo Cup’s compliance with the policies it had in place to remove expired patent references from molds that needed to be replaced due to wear or damage; and
- Provision of contact information by Solo Cup in its packaging, such that a consumer could verify whether a specific product was covered.
The district court held that Solo Cup had committed, at most, three offenses: two, when Solo Cup decided not to immediately stop marking each of its lids when their patents expired, and one, when it decided to add the “may be covered” language to its packaging.
Here’s a case that has the legal community buzzing in the United States. Well, at least those interested in patent law and how it relates to business methods. I had always wondered what the extent of patent eligibility was for business processes or methods. This recent ruling seems to clarify some, but not all issues.
The U.S. Supreme Court has ruled on the long awaited Bilski v. Kappos decision, a case that was expected to have wide-reaching consequences in defining the limits of patentable subject matter. In particular, this case would provide guidance with regard to patents relating to business methods and software.
The U.S. Supreme Court affirmed that business methods and software are patent protectable unless they are written to cover “laws of nature, physical phenomena, and abstract ideas.” The Court also made another interesting holding, stating that that the ‘machine-or-transformation’ test used by the Court of Appeals for the Federal Circuit is not the only test for determining patent eligibility. The decision appears to preserve the status quo and leaves the door open for patents directed to software and business methods.
Bilski, who ever he is, wanted to patent a ‘business method’ which had to do with hedging risk in the energy market. The Federal Circuit had previously held that the Bilski’s application was not eligible for patent protection. The Federal Circuit provided the following reasons; in order to make a patent claim for a process, it must (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. This is the so-called “machine-or-transformation test” which until now, was the sole test for determining patent eligibility of a process.
In an opinion authored by Mr. Justice Kennedy, the Supreme Court agreed that Bilski’s claim was not patent-eligible matter. In interpreting Section 101 of the U.S. patent laws, the Court held that:
“the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but that the test is “not the sole test for deciding whether an invention is a patent-eligible ‘process.’”
It appears that although the Supreme Court left open the door to patent eligibility, just how to pass through the door remains slightly unclear. In conclusion, the Supreme Court refrained from effecting any large change in the patentability of business methods.