Florida Patent Lawyer Blog

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..." »

Bullying amongst children and teenagers - a hot topic lately - has also recently played out in the business world. Microsoft and Apple have recently filed a complaint against Motorola (soon to be owned by Google) over unfair competition in the EU. The complaint states that Motorola's aggressive enforcement actions and high royalty fees are hindering market competition. These tech giants are battling over the use of patents related to technologies necessary to connect wirelessly to the internet and to stream video. Is Motorola being a bully or are they engaged in a legitimate enforcement of patent rights?

As of late, large technology companies are taking aggressive action to protect their patents by stopping competitors from selling products that are in their patent space. Microsoft and Apple have stated that the royalty fees offered by Motorola are way to high and therefore unfair. The argument in favor of Motorola is the free-market argument. The free market says that companies should be able to sell their technology at whatever price they desire or to charge any royalty they like. The consumers will decide whether the products, and the royalty rates, are worth what Motorola is asking. The argument against Motorola is the fair competition argument. How can competitors freely compete when Motorola has a monopoly on a particular product or space? How can consumers benefit from price competition when there is only one seller of a particular good or service? Whatever side you take, it is important to know that the parties involved - Microsoft, Apple, etc. - have all been on both sides of the argument at different points in time.

Tech companies spend a lot of money creating new technologies and obtaining patents to protect them. Money and finances are the main motivators behind these activities. But when it comes to enforcement of patent rights, there are various additional factors that must be considered. Some of those factors include the cost of the lawsuit, fair competition, the risk of a counter suit, anti-trust, public relations and business relationships. In light of the currently-ongoing 20-way mobile patent wars, tech companies may be wise to weigh all of the aforementioned factors before getting involved in a drawn out fight.

Continue reading "High Tech Bullying or Legitimate Enforcement?" »

I'm honored to be speaking at ITEXPO today at the Miami Beach Convention Center. ITEXPO is a telecommunications industry conference billed as "The World's Communications Conference and Expo." The conference is the largest and longest telecommunications industry trade show.

I will be speaking today at various SUITS (Synopsis Under IP/Patents Telecom Sourcing Conference) panel discussions. Some of the topics I'll be discussing are telecom industry patents, defending patent suits and patent trolls.

I look forward to seeing you there!

The unfortunate death of Michael Jackson and the trial of Dr. Conrad Murray has made a little-known drug, propofol (marketed as Diprivan by AstraZeneca), into a household name. What is fundamentally important about drugs like propofol may not only be what they're used for but their impact on the economy.

Propofol was originally developed in the UK by Imperial Chemical Industries (see U.S. Patent No. 4056635). Though clinical trials followed in 1977, due to negative reactions, the formulation was withdrawn from the market and subsequently reformulated as an emulsion of a soya oil/propofol mixture in water. The emulsified formulation, which is not a complex formula, was relaunched in 1986 by ICI (now AstraZeneca) under the brand name Diprivan. Propofol emulsion is a highly opaque, white fluid due to the scattering of light from the tiny oil droplets that it contains. There are 4 patents (5714520, 5731355, 5731356, 5908869) for Diprivan that are set are to expire in 2015.

The relatively simple formula for Diprivan, which generates annual sales of $400 - $500 Million for AstraZeneca, may make it easy for generics to enter the propofol market. True generics are not expected until 2015, but generics with different formulas are expected to come to market before 2015. It has been reported that propofol is a low profit-margin product. Thus, once generic-like products and generics hit the market, the margins will likely fall further. This brings up fundamental questions about the patent system. Should patent protection be extended in order to protect a patent owner's investment in a drug? Inventors and investors must justify the return on investment (ROI) on millions and billions of dollars spent on developing new drug products, otherwise, they simply won't do it anymore. Is 20 years enough time to obtain an adequate return on those large R&D expenditures? For instance why has Pfizer drastically cut its research and development spending and why has Amgen decided to buy back $5 billion of its stock? Are those indications that they don't have the incentive to invest in new products?

Creating an incentive to invent, via recovery of R&D expenditure and production of profits, is the premise of the U.S. patent system. We would be wise to review the current system to make sure this is still the case.

Continue reading "Propofol and the Economy" »

Companies like Eastman Kodak sell products that are protected by valuable patents. The importance of the patents used to protect these products is highlighted by Kodak's recent financial troubles. Kodak, with a current market cap of about $295 million, might only be able to save itself by selling a portfolio of 1,100 digital imaging patents for an estimated $2-$3 Billion.

Kodak obtained one of its first patents (No. 1588082) in 1926. The invention was aimed at creating a photographic process that could fit into a portable, small box. Kodak went on to become one of the biggest patent filers in history. Consequently, Kodak's name became synonymous with photography for the better part of a century. But since the late 1900s, Kodak's dominance in the film business has been replaced by new technology. Due to the change in photographic technology and heavy competition, the Kodak name seems to have lost its prestige. But although the name may have less value these days, the patent royalties it generates, and the ultimate value of the company, is still high. Notably, Kodak may be collecting $1 billion in royalties soon.

The takeaway from the Eastman Kodak story is that it's important for technology companies to patent their inventions and protect their patents. Eastman Kodak's patents may be their only saving grace at this juncture.

Continue reading "Patents are the Heart of Many Companies - Eastman Kodak Case Study" »

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 Lin reveals a common patent prosecution error -especially before the BPAI - failing to properly address a rejection.

The lesson here is that you must address an Examiner's rejection head-on. Don't respond to a rejection with a tangential or side-issue. And specifically, when dealing with a § 112, 1st paragraph, rejection, the issue you must confront head-on is the issue of whether the specification teaches POSITA how to make and how to use the invention. Addressing anything else will only serve to draw attention away from the central issue.

Continue reading "Common Patent Prosecution Mishap: Failing to Address a 35 U.S.C. 112 Rejection" »

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 Zurcher highlighted the problems associated with using functional language in claims, especially when claiming an apparatus. I, a Patent Lawyer in Miami, have written about this before in my article about intended use claim language.

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.

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.

Today the Court of the Appeals for the Federal Circuit issued a decision that plainly answers the question of who is a person of ordinary skill in the art - Extreme Networks v. Enterasys Networks (Fed. Cir. 2010). As a Florida Patent Attorney who routinely deals with this question, I found it refreshing to read a Federal Circuit decision that tackles this issue head on.

The case of Extreme v. Enterasys involved a two-way patent dispute over router-based technologies. At issue was whether the lower court erred in excluding one party's expert because he was not a person of ordinary skill in the art.

The previous case law on this subject is a little ambiguous: The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include: (A) "type of problems encountered in the art;" (B) "prior art solutions to those problems;" (C) "rapidity with which innovations are made;" (D) "sophistication of the technology; and" (E) "educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate." In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986 ); Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983).

But today's Federal Circuit decision was much more understandable: "Frederiksen would not qualify as a person of ordinary skill in the relevant art even under her own proposed definition. Frederiksen received an Associate of Applied Science degree in Computer Programming. She worked as a system administrator for several corporations, but she never seems to have worked on 'the design or development of high speed switches, bridges, or routers.' General experience in a related field may not suffice when experience and skill in specific product design are necessary to resolve patent issues. See, e.g., Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1360-61 (Fed. Cir. 2006) (affirming exclusion of an ergonomics expert where the invention at issue related to an ergonomic keyboard design). Therefore, the district court did not abuse its discretion by ruling that Frederiksen was an unqualified expert."

How's that for a straight answer? The educational moment here is that a person of ordinary skill in the art in a technology area should probably have a graduate degree, or higher, and should have probably have some extensive work experience designing or developing a product. Otherwise, you risk a finding that he or she is deemed to be a person WITHOUT ordinary skill in the art.

As a Florida Patent Attorney with a sizable docket of patent cases, I constantly worry about the effect my amendments have on the enforceability of the resulting patents. As you know, the doctrine of patent prosecution history estoppel limits the scope of a patentee's claims due to things that happened during patent prosecution. Last week, the Court of Appeals for the Federal Circuit issued an illuminating decision in Funai v. Daewoo on the doctrine of prosecution history estoppel and when it is applied.

At issue in this case was whether the patentee, Funai, lost its range of equivalents with regard to a claim term when Funai cancelled the relevant claim after it was rejected by the Patent Examiner. Does cancelling a claim after a rejection invoke prosecution history estoppel and lead to a loss of a range of equivalents?

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) is the landmark case we consider when discussing prosecution history estoppel. Festo tells us that no estoppel exists with respect to a claim term if this aspect is unrelated to or "merely tangential" to the prosecution. In Festo, 535 U.S. at 741, the Court stated: "There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. . . . [T]he rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; . . . . In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence."

In the Funai case, the Federal Circuit reviewed the patentee's amendment and decided the following:
"It is apparent that the nature of the [claim term at issue] was not a factor in the allowance of claim 4, for this aspect was not at issue during prosecution. This limitation is in the category that the Court called "merely tangential" to the prosecution, as discussed in Festo. Thus the district court correctly held that the cancellation of claims 1 and 2 did not surrender access to equivalency with respect to the [claim term at issue]."

The moral of the story here is that prosecution history estoppel only applies to aspects of a claim that are directly related to prosecution. Aspects that are merely tangential or secondary to a main issue are not subject to prosecution history estoppel and do not lose their range of equivalents due to an amendment. As a practice tip, if you see this issue come up during patent prosecution, I would explicitly state in the Remarks section of an amendment whether you consider certain aspects of the claim tangential and not at at issue.

As a Miami Patent Lawyer specializing in intellectual property issues, I frequently host clients who tell me their patent is being infringed upon. What kinds of letters can I send out to infringers without worrying about a declaratory judgment action in their forum? The Federal Circuit chimed in on this issue this past December and it has (at least somewhat) changed the rules of the game.