July 2012

July 31, 2012, by Mandour & Associates, APC

San Diego – Six years may seem like a long time to wait for the award of a patent. However, Facebook CEO Mark Zuckerberg patiently waited for approval on an application governing certain privacy settings for six long years. There was definitely cause for celebration by Zucks when it was announced last week that he had been granted his first patent. Patent number 8,225,376 is listed as “a system and method for dynamically generating privacy summary” and was awarded to inventors Zuckerberg and Facebook’s former Chief of Privacy Officer, Chris Kelly.

In layman’s terms, the patent was designed to create a display for a person’s profile on Facebook. The profile is affected by certain privacy settings that are chosen by the user, displayed to the user, and are viewable by other people using the same social networking website. Essentially, the technology would let Facebook users customize the way their profile appears to other users. The patent was originally rejected by the USPTO because examiners thought it was too obvious. However, when Facebook went public, Zuckerberg’s team redoubled their efforts and pushed the patent through. And after numerous interviews with the Examiner the USPTO finally granted the patent.

Even to the most basic of computer networking users, the patent seems awfully simplistic. Some experts are going as far as to say that it is no more than a fancy accessory. But these days it seems that the larger the patent portfolio the better. Last month Facebook bought hundreds of patents from IBM and Microsoft to provide a better defense against the threat of ongoing litigation, including its lawsuit against Yahoo. The Yahoo lawsuit was later settled, but the patents should serve the company well into the future.

July 24, 2012, by Mandour & Associates, APC

San Diego – Carfax is known for its comprehensive vehicle history database which allows customers to verify that new vehicle purchases haven’t been in an undisclosed accident. According to the United States Patent and Trademark Office, Carfax has embarked upon a foray into the patent world. From the patent it appears that Carfax is moving toward further assistance with the insurance industry. To that end, Carfax announced this week that it received a Notice of Allowance from the United States Patent and Trademark Office for its patent application for a “system and method for insurance underwriting and rating” identified as Serial number 13/181,736. The USPTO typically issues a Notice of Allowance once it comes to an initial determination that a patent can be granted from a review of a patent application.

A representative from Carfax expressed excitement that it will soon be able to initiate its plans to provide cutting edge services to customers in the insurance industry. Currently, Carfax’ technology systems contain over 10 billion records which cover cars, light trucks and SUV’s in the United States since 1981. In addition to a massive data collection from over 34,000 data sources, Carfax uses a pool of information from state DMVs, police departments, service facilities and collision repair centers. Data is also verified by vigorous quality control analysis that is conducted at regular intervals to weed out irrelevant or inaccurate data.

The new invention would provide greater accuracy and more options for consumers when selection insurance options. If granted, the patent would allow Carfax to use its significant amount of knowledge and experience to assist insurance underwriting companies and offer insurance customers new insurance options. The Carfax patent could lead to more accurate rate options for consumers.

July 18, 2012, by Mandour & Associates, APC

San Diego – In a scenario akin to a science-fiction movie script, the coffee filtration system marketplace could soon be flooded with clones. Fortunately, it is anticipated that the clones won’t be dangerous to anyone except perhaps those folks attempting to brew the perfect cup of coffee. For the connoisseur of that perfect cup of freshly brewed joe, there will be an anxious watch on the grocery store isle very soon, since Green Mountain Coffee Roaster’s (GMCR) patents 5,325,765 and 5,840,189 will either partially or completely expire in September 2012.

When the initial patents for K-Cup’s expire, industry experts are predicting a glut of cheap K-Cup knock-offs. As a result, company shares were down and investors appear worried. However, GMCR insists that there is no reason for investors or consumers to fret. It points to evidence provided by Keurig, the original creator of the K-Cup coffee filter system. Upon hearing of concerns, Keurig acknowledged that the method initially utilized by the K-Cup coffee filter is mediocre at best and has since been replaced by a better cartridge (patent 6,645,537) which will not expire until 2020. However, even its most recent patents did not completely satisfy Research and Development at GMCR.

Pending patent application 20050051478 is intended to protect the superior coffee filtration system utilized in the most recent version of the K-Cup, which is currently in the marketplace. Moreover, the filter design covered in the two expiring patents has not been used since the inception of the K-Cup. The coffee company anticipates that research on the demographic for Keurig buyers indicates that its customers would not likely sacrifice quality for a few pennies per cartridge. Consequently, GMCR insists that consumers educate themselves and be aware that clones of the products covered in original K-Cup patents may reap cost savings, but will brew a lower quality cup of coffee.

GMCR has developed a reputation for guarding its patents very carefully and lists all applicable patent information on its product packing, including those patents still pending. Additionally, the coffee company has been known to vigorously defend itself using patent infringement litigation (several cases are still ongoing) whenever necessary.

July 10, 2012, by Mandour & Associates, APC

San Diego – After a long and vicious battle over competing patent infringement claims, two of the Internet’s most popular destinations – Facebook.com and Yahoo.com – have agreed to drop respective lawsuits and license patents to each other. The original Yahoo lawsuit was initiated in March 2012, during the short-lived leadership of its controversial CEO, Scott Thompson. Facebook fought back by filing its own patent infringement lawsuit in April.

Thompson was subsequently let go as a result of a resume scandal, but the parties were already knee deep in litigation. Yahoo’s patent infringement complaint was premised on the allegation that Facebook was profiting from Yahoo’s ideas and claimed that Facebook infringed on 10 critical Yahoo Internet technology patents. Two additional patents were later added to the case. The patents covered Internet advertising, privacy controls, social networking and other important Yahoo technology. However, before the two combatants could step into the courtroom, both Facebook and Yahoo issued statements indicating that both companies had agreed to settle their disputes outside of court.

Despite the fact that no money will change hands, the new patent alliance will allow Facebook and Yahoo to share advertising and content. Experts further anticipate that the new agreement will help Yahoo recover some of the revenue it recently lost when large marketers decided to spend less on Yahoo advertising and increase spending on Facebook.

In anticipation of the partnership, both parties have already begun work on ads for the other’s website and Yahoo has agreed to feed coverage of major news events through the social networking website. In addition to saving countless dollars in litigation expenses, Facebook will now have a greater opportunity to tailor ads to fit the more specific interests of its over 900 million users in heavily trafficked Yahoo owned areas. It is anticipated that the new partnership will also help the flagging financial status at Yahoo and assist Facebook in winning over skeptical investors. Experts hope that the new agreement between Facebook and Yahoo will set a positive example for corporate America and encourage creative compromise, rather than settling disputes with litigation.

July 3, 2012, by Mandour & Associates, APC

San Diego – The leading cellular phone chipmaker, Qualcomm, has announced its plan to create a subsidiary company in order to protect its patents. In light of increasing cellphone technology patent infringement lawsuits, such as the cases that Samsung and Apple are currently facing, it has been reported that Qualcomm’s move to use two different companies is to avoid similar lawsuits in the future.

The new structure of the organization will include Qualcomm Incorporated, which will consist of Qualcomm Technology Licensing (QTL), Qualcomm’s corporate functions, as well as the majority of its patent portfolio. The newly formed Qualcomm Technologies, Inc. (QTI) will include the semiconductor department, Qualcomm CDMA Technologies (QCT), research and development as well as the product and services division. This transition is said to take effect at the end of the 2013 fiscal year.

Chairman and Chief Executive Paul E. Jacobs stated, “Our internal reorganization will provide even greater protection for our industry-leading intellectual property portfolio as our products and services businesses seek to accelerate innovation and deliver our products to market quickly” and “we are confident that this change to our corporate structure will be accomplished with little to no disruption to employees and customers.”

In a statement released on behalf of the organization the company stated, “QTI and its subsidiaries will have no rights to grant licenses or other rights to patents held by Qualcomm Incorporated. There will be no changes to the intellectual property that is currently owned by Qualcomm Innovation Center, Inc., which works closely with the open source community to accelerate the advancement of the wireless industry as a whole.”

When it comes to patent infringement lawsuits, Qualcomm is no stranger to them. In the past it has been involved in lawsuits with Nokia and Broadcom. In fact, according to a settlement with Broadcom in 2009, Qualcomm is still paying off the millions of dollars. In its settlement to end the patent infringement lawsuit Qualcomm agreed to pay $891 million to Broadcom over a span of four years. The lawsuit was originally filed in 2005.

Qualcomm’s patents are essentially known as the company’s ‘bread and butter’ and so it is understandable as to why the company is willing to go to great lengths in order to protect its intellectual property portfolio.