Florida Patent Lawyer Blog

On Monday of this week, Microsoft filed a patent infringement suit against Robocast alleging infringement of the 6,632,248 patent, which covers customization of network documents. Robocast, a New York based company, enables users to see more web pages, more easily and turns the act of browsing into an automated, interactive experience.

The 6,632,248 patent covers the customization of network documents by accessing customization information on a server computer using unique user. User-selected customization information for a network (e.g., HTML) document is stored at a server with reference to user identifying information that uniquely identifies the user. Whenever the user navigates back to the network address of the HTML document, the user is identified automatically and receives a customized HTML document formed in accordance with the customization information. This invention allows HTML sites to customize their site to a user's preferences based on previous visits to a website. Not a bad idea in today's multi-platform world where web site viewing problems are common.

The value of the 6,632,248 patent is proportional to the e-commerce industry. According to research firm IDC, the size of total worldwide e-commerce, when global business-to-business and consumer transactions are added together, will equate to $16 trillion in 2013. IDate, another research firm, estimates the global market for digital products and services at $4.4 trillion in 2013. A report by Oxford Economics adds those two together to estimate the total size of the digital economy at $20.4 trillion, equivalent to roughly 13.8% of global sales.

What is the motivation for this lawsuit? Microsoft, the 800 pound gorilla, is obviously protecting its patent and its share of the worldwide e-commerce industry, which it routinely does by keeping a close eye on firms of any size that may pose a threat to their market share. Robocast, which has a single U.S. Patent No. 7,155,451 and other patents pending, may be validated by this lawsuit as it may indicate Robocast is on to something big enough - customization of internet searches - to attract Microsoft's attention. Thus, this lawsuit could affect Robocast's value both negatively, as well as positively,

In Microsoft's favor is the statistic that most patent cases (75.5%, to be exact) settle. When cases do go to final judgment, and almost 15% do, patentees win 989 out of 3,043, or 32.5%, of those cases. Thus, when you look at the general statistics, there is a good chance that Microsoft can either settle this case, or obtain a final judgment in its favor. Of course, these statistics can also be viewed as weighing in Robocast's favor, since it would be to their benefit, as Defendants, to settle this case and continue operating its business.

Continue reading "Microsoft Sues Robocast for Infringement of Software Patent" »

The high tech world is continuing its 20-way patent infringement war, but it's not the usual suspects - it's Yahoo vs. Facebook. Yahoo's lawsuit claims that Facebook is infringing on Yahoo's social networking patent (US7599935), which may be the basis of Facebook's networking platform. As of late, the superstar high tech companies have been aggressively taking it to their competitors to protect their current revenue streams, but also, more importantly, to secure a dominant position in the future.

Yahoo, which has been struggling over the last three years, recently lost ground to Facebook in the online advertising market. There is no doubt that the battle for online advertising is intense and there may not be enough room for all of the current players. Online advertising is extending into the smartphone phone industry, which is one of the motivators behind the 20-way mobile patent war including Microsoft, Apple, Google and Motorola. Control over the internet, cell phones and television (set top-box wars coming soon) is the ultimate goal. Yahoo, which holds about 1,100 patents, is suing Facebook, which holds about 56 patents, over ten Yahoo patents on the eve of Facebook's IPO. Recall that about ten years ago, Yahoo sued Google just before its IPO and settled for Google stock, which was eventually cashed in for $200M.

Is Yahoo being smart about enforcing its patents at this point in time or are they just playing dirty in order to squeeze money from Facebook before its IPO? Why did Yahoo wait until now? If their social networking technology is so good, then why didn't Yahoo get into the social networking business? Maybe the founder of Yahoo and the last Yahoo CEO missed the social networking boat and now the new CEO is playing catch up. Perhaps Yahoo was looking for a nice pay day if they get a similar result as the one they did with Google (though it may take a couple of years). In any case, one can see that there are a myriad of factors and parties that must be considered when enforcing patent rights - not the least of which are the financial or monetary considerations.

Continue reading "The High Tech Patent Wars Continue..." »

Much has been written about the Pfizer Viagra patent. Recently, a District Court held the patent to be valid. All the fighting about this patent is directly related to Pfizer's $1 billion a year in U.S. Viagra sales. The patent itself has been valuated somewhere in the neighborhood of $10 billion.

But have you taken a look at the famous Pfizer Viagra patent? I did, and following are some interesting observations. Click here to see Pfizer's Viagra patent.

First, I am surprised to see how short the detailed description is. At less than six columns, it's one of the shorter patents out there. This goes to show, being brief is a virtue - even when you're dealing with a $10 billion patent. Second, notice how many pages of cited references there are. At 6 pages, that's a lot of references, and no doubt led to a stronger and more valuable patent. Lastly, note there are only two inventors. Though the testing and development of this drug probably cost somewhere in the billions of dollars and involved hundreds or thousands of people, it was only two guys that invented this drug and only two guys that will go down in history.

As inventors and developers of technology, we can only hope to have successful inventions. But it is certain that in order to realize a return on R&D investment, individuals and companies must pursue patents for their inventions. Thus, my recommendation to inventors and technology companies is to seriously consider pursuing patents for their inventions with the U.S. Patent and Trademark Office, especially in cases involving inventions that may generate significant revenue.

Continue reading "The Famous Pfizer Viagra Patent" »

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Peng highlighted the most effective way of reversing a Patent Examiner's 103 obviousness type rejection - contesting the presence of one of the claim elements in the cited prior art. I, a Patent Lawyer practicing in the City of Miami, am always interested in reading about how other attorneys have gotten rejections reversed at the BPAI.

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Chin reversed a Patent Examiner's 35 U.S.C. 102 anticipation rejection, thereby rejecting the Examiner's inherency argument. As a working Patent Lawyer in Miami Florida, I like reading BPAI decisions that show me how to reverse a Patent Examiner's rejection.

Last week's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Roher affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, thereby rejecting the Appellant's commonly used non-obvious argument. As a Patent Lawyer in Miami Florida, the Ex parte Roher decision was educational in that it highlighted a common losing non-obviousness argument.

Last week's Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, teaches an important lesson - obviousness rejections must address both references - not just one. As a Miami Patent Attorney that reads BPAI decisions frequently, I'm surprised that any practitioners even try this argument anymore.

In short, the answer is "by a preponderance of the evidence." The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Hochsmann did a good job of highlighting this axiom. As a Miami Patent Lawyer, I found the Ex parte Hochsmann decision interesting because it reminded me of the burden I must carry when I practice before the BPAI.

What does this mean to practitioners? This means that in order to reverse an Examiner's decision at the BPAI, you must present slightly more evidence than the Examiner. Technically, that should suffice. Of course, in practice, you probably want to show a bit more, to make it clear you have met your burden

What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow.

You are well aware that last year's Bose decision - In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) - has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: "in order to prove fraud, [the charging party] must show that [1] a statement was false, [2] the falsity was intentional, and that [3] the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven [4] to the hilt with clear and convincing evidence." Slaska Wytwornia Wodek Gatunkowtch "Polmos" SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (TTAB 2010).

In light of the above, it is no surprise that since the Bose decision, there is not one reported District Court or Federal Circuit case regarding fraud on the Trademark Office (as of early Dec. 2010). Further, since Bose, there have been 43 cases involving fraud at the TTAB (as of early Dec. 2010), and of those 43, none have resulted in a finding of fraud. This illustrates how difficult it has become post-Bose to succeed in cancelling a registration based on fraud. As a result, a finding of fraud in any District Court or TTAB case could be negative legal history for Bose, would almost certainly be a reported decision and would surely be written about and scrutinized by the legal journals. But don't hold your breath, I suspect it will be a very long time before we see any forum find fraud after Bose.

I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have on a re-exam. But the BPAI used uncharacteristically harsh words to reject the Appellant's arguments, which made it amusing. It's rare to see any emotion in a BPAI decision, so when you see Jones Day get a verbal spanking, you can't help but write about it.

But the scolding didn't stop there. Here are a few samples of the Board's stinging language. In response to a Appellant's unreasonable request for a factual finding, the Board states: "It is not the PTO's responsibility, nor does the PTO have the resources, to evaluate such factual matters." In response to the Appellant's argument that the Examiner should elaborate his reasoning: "We do not subscribe to the view that such plain and unambiguous terms need further construction." And most notably, in response to the Appellant's argument that the Patent Owner shouldn't stay silent: "The Appellant also ... points out the Patent Owner's "extraordinary decision to remain silent throughout these proceedings" ... While the Patent Owner's silence is atypical, we observe that it was the Appellant that initiated this inter partes reexamination proceeding and the Patent Owner is on record as to what the ... reference ..., does, and does not disclose. To the contrary, after hundreds of pages of arguments and exhibits as well as an oral hearing, it is the Appellant's silence with respect to where the ... reference discloses the "key limitation" that is deafening." TKO!

Today's first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a claim that turned on the construction of the claim term "embedded." As a Patent Attorney in Miami with a full docket of patent cases, BPAI decisions that involve claim construction are highly topical for me.

In Ex parte Benson, the BPAI explored the issue of how the claim term "embedded" should be construed. The Applicant argued the claim term should be given the more narrow ordinary dictionary meaning. And the Examiner, as usual, argued it should be given a broader meaning that supported the 35 U.S.C. 102 anticipation rejection. The Applicant argued the Examiner's claim construction was over-broad and unreasonable.

The lesson here is that when you launch an "unreasonable interpretation" attack on an Examiner's rejection based on an "ordinary dictionary meaning" premise, you must make sure your specification didn't broaden the scope of the claim term at issue. If your specification did, in fact, broaden the scope of the claim term, then you would be wise to use another claim term that explicitly limits its scope to the ordinary dictionary meaning you assert. This is yet another reason why a precisely drafted claim is so important in patent prosecution. I had previously expounded on the issue of precise claim drafting in a blog post here.

Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I'm often asked about.

As the prevailing party under the Lanham Act, a party is entitled to an award of attorney's fees in "exceptional cases." 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an "exceptional case." See, e.g., Playboy Enterprises, Inc. v. P.K. Sorren Export Co., 546 F.Supp. 987, 999 (S.D.Fla.1982) (attorneys' fees awarded where infringement was deliberate); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 999 (W.D.Mo.1986) (deliberate and intentional infringement makes the case "exceptional").

How to determine attorney's fees is another matter altogether. The Court normally applies the "lodestar" approach set forth in Hensley v. Eckerhart, 461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) and Norman v. The Housing Authority of the City of Montgomery, 836 F.2d 1292 (11th Cir.1988). To arrive at the lodestar amount, the Court is required to multiply the number of hours reasonably expended on the litigation by a reasonable hourly rate for the services of the prevailing party's attorney. Norman, 836 F.2d at 1299. Once the Court arrives at the lodestar figure, it may be adjusted according to whether the results were excellent, whether the fee was fixed or contingent, and other factors. In intellectual property cases, other courts have held that "a party should be entitled to retain the most competent counsel available" because the issues are difficult and require great skill and experience on the part of the attorneys. Howes v. Medical Components, Inc., 761 F.Supp. 1193, 1196, 1199 (E.D.Pa.1990).

Can you get punitive damages in a Trademark Infringement case? In short, the answer is yes, but only in certain cases and certain jurisdictions. This is an issue that often comes up in trademark infringement cases where compensatory damages are not adequate to compensate the aggrieved party. As a Miami Trademark Lawyer currently litigating trademark infringement cases in the Southern District of Florida, I am constantly dealing with the subject of damages.

Punitive damages are damages intended to reform or deter the defendant and others from engaging in conduct similar to that which spawned the lawsuit. The purpose of punitive damages is not to compensate the plaintiff. The plaintiff in a trademark infringement case, however, will in fact receive the punitive damage award. Often, punitive damages are awarded where compensatory damages are deemed an inadequate remedy. The public policy behind punitive damages is that the court may impose them to prevent under-compensation of plaintiffs, to allow redress for undetectable torts.

HAPPY THANKSGIVING!!

Consequently, a Plaintiff in a trademark infringement suit (federal or Florida state) may elect damages under 15 U.S.C. § 1117 and Florida common law, wherein Plaintiff's financial information is irrelevant. Therefore, the financial data of the Plaintiff may not be discoverable by the Defendant in a trademark infringement suit and such attempts by the Defendant should be resisted in compliance with the Federal Rules of Civil Procedure. This is especially concerning in cases where the financial information being sought can be used by the Defendant to gain a competitive edge over the Plaintiff.

Does the type of advertising employed by a Defendant in a trademark infringement case matter? Yes it does. In fact, it is one of several key factors that are central to a trademark infringement case. As a Miami Trademark Attorney currently representing litigants in multiple trademark infringement cases in the Southern District of Florida, advertising and its relation to the trademark infringement analysis are subjects that have come up more than once in a dispute.

It is standard in a trademark infringement case to discover information about advertising employed by the Defendant, since similarity in advertising media is one of the seven factors used in assessing whether likelihood of consumer confusion - the touchstone of trademark infringement - has occurred. Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 122 F.3d 1379, 1382 (11th Cir.1997).In determining the likelihood of confusion between two marks, the 11th Circuit requires a district court to analyze the following seven factors:
(1) type of mark,
(2) similarity of mark,
(3) similarity of the products the marks represent,
(4) similarity of the parties' retail outlets and customers,
(5) similarity of advertising media used,
(6) defendant's intent and
(7) actual confusion.

As such, the type of advertising (element 5 in the seven factor test above) employed by the infringing party is probative of whether there was similarity between the advertising used by the infringer, as compared to that of the Plaintiff. Frehling Enterprises v. Int'l Group Select, 192 F.3d 1330, 1339 (11th Cir., 1999). Consequently, it is important that all information pertaining to the advertising used by the Defendant in a trademark infringement case is requested and produced during the discovery period of a lawsuit, since similarity in advertising media is crucial to the trademark infringement inquiry