Patent Law

April 8, 2014, by Mandour & Associates, APC

San Diego – As a result of a case brought before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), the patent encompassing Zillow’s popular home valuation tool has been seriously diluted.   In its ruling, the Board found 25 of the 40 claims mentioned in the patent, referred to as the ’674 patent, unpatentable.  Zillow filed for the patent back in 2006 but wasn’t granted patent protection for its “Z-Estimate” tool, which is featured prominently on its website, until 2011.

The proceedings were instituted by Washington, D.C.-based  Microstrategy, Inc., which sought a review of Zillow’s “Z-Estimate” patent claims in an effort to have the entire patent thrown out. The Board ultimately held that two of the claims included in the ’674 patent were invalidated because they were not novel and that 23 of them were obvious in light of prior inventions.

The ruling comes as a major blow for Zillow , less because of the fallout with Microstrategy, but more because of the effects that it will have on the outcome of its major lawsuit against rival Trulia.  Commenced last year, Zillow contends in its patent infringement lawsuit that Trulia’s automated property value estimates, called “Trulia Estimates,” infringe on its patented “Z-Estimate” calculations.  In response, Trulia filed a motion to dismiss the patent infringement lawsuit, arguing that “Abstract ideas and principles are not patentable.”  With much of the “Z-Estimate” patent now invalidated by the PTAB, Zillow will likely be waging an uphill battle in trying to stop Trulia from providing its own competing home value estimates.

The two biggest names in online real estate have been at each other’s throats for years.  Seattle-based Zillow will reportedly spend upwards of $65 million on its nationwide advertising campaign in 2014.  Not to be outdone, Trulia countered by announcing the hiring of its new Chief Marketing Officer in February and its plan to spend over $40 million this year on ads.  Though Zillow went public a year before Trulia, the smaller company has been giving Zillow a run for its money since its August 2012 IPO, when its stock debuted at more than 30% above its projected value.

December 3, 2013, by Mandour & Associates, APC

San Diego – A series of five patents filed on November 21st reveal Apple’s potential plans to include liquidmetal in its products.  Though the five patents leave it somewhat difficult to ascertain exactly what type of product would come out of the claims, two of the filings clearly have to do with 3-D printing methods for electronic devices.  The applications do not come as a shock to Apple enthusiasts, who were gripped by a 2012 rumor that the new iPhone might utilize liquidmetal technology.  While that rumor did not manifest in the iPhone 5s, it is now a fact that Apple is at least heavily considering implementing the material in future products.

Created in the early 2000s by a research team at the California Institute of Technology, liquidmetal is a unique form of amorphous metal alloy.  It is similar to plastic in that it cools fast and is very strong, with more than double the strength of titanium alloy.  Adding to its appeal, despite its durability, liquidmetal is flexible, lending it a unique ability to be molded into very thin shapes while remaining sturdy.

The Silicon Valley tech producer known for its simplistic designs and user friendly devices turned heads in 2010 when it signed a contact with California-based Liquidmetal Technologies.  Since then, speculation has run high that Apple would be the first to create a modern-looking smartphone made out of liquidmetal. Given that liquidmetal is more lightweight and less expensive than the metal currently used to make iPhones, it is an enticing possibility.

According to the actual patent filings, liquidmetal might be used to create new Apple products through 3-D printing and injection molding methods, which could be a cheaper alternative to the current practice of creating prototypes and using machining processes to stamp out finished products.  The first filing is entitled “Layer-by-Layer Construction with Bulk Metallic Glasses” and seems to provide the most insight into the creation of new products using liquid metal.  The other four, respectively titled “Layer-by-Layer Construction with Bulk Metallic Glasses”, “Amorphous Alloy Component or Feedstock and Methods of Making the Same”, “Bulk Metallic Glass Feedback with Dissimilar Sheath” and “Manipulating Surface Topology of BMG Feedstock” are much more technical and seem to focus on more specialized applications of the liquidmetal technology.

October 29, 2013, by Mandour & Associates, APC

San Diego – A new patent filed in Korea reveals what seems to be Samsung’s plan to rival the soon-to-be released Google Glass.  The patent, which was filed with the Korean Intellectual Property Office by Samsung Electronics Co.  shows glasses which communicate with a smartphone.  It was filed on March 8, 2013 and describes the device as, “sports glasses,” which will have the capability to let users listen to music and take phone calls through built in earphones.  Similar to Google’s product, Samsung’s will also allow for browsing of the internet on a small display screen on the eyeglasses’ lens.

In the months since Google announced the planned introduction of its Glass product, there has been wide speculation about how rival Samsung would react.  Until now, there was virtually no clue left by the Korean based company as to whether it was working on a competing electronic glasses product.   With the new filing, however, it is obvious that the tech giant is putting its own horse in the smart glasses race.

While Samsung’s new “sports glasses” appear to be a definite attempt to rival Google Glass, several differences between the two products are noticeable from the patent filing.  First, unlike Google Glass, Samsung’s device features wires on both sides, which connect at the back of the wearer’s head.  Next, while Google Glass features its display screen on the right lens, the Samsung product has its display on the left.  In its patent filing, Samsung makes more than a passing mention about how the new device will be targeted for use in sporting and outdoor activities.  While Google Glass has already been marketed as a sort of universally useful device akin to a wearable mobile phone, Samsung may be looking to set itself apart by making its new device an athletic accessory.

Outside of these differences, however, the essence of the two products is the same.  Both are efforts to take everyday devices, such as watches and eyeglasses, and make them “smart.”  Both Samsung’s “sports glasses” and Google Glass look like futuristic sunglasses with a minimalist design:  a wraparound style with a skinny metal band and clear frameless lenses.  How it all pans out for these two big names will largely depend on how the consumer market reacts to the emerging product field of wearable electronics and how the devices will fit into our everyday lives.

April 12, 2013, by Mandour & Associates, APC

San Diego – On Monday U.S. District Judge Gary Allen Feess announced a stay in a patent infringement lawsuit against Southwest Airlines Co. until the USPTO finalizes its re-examination of the patents cited in the Complaint.  Feess ruled that it doesn’t make sense to continue the case until the patent re-examination is complete.

Advanced Media Networks LLC originally filed the lawsuit against Southwest Airlines in California federal court last December.  The lawsuit concerns Southwest’s in-flight Internet service provider, Row 44 Inc. which is also named in the lawsuit.

Advanced Media believes that Southwest and Row 44 infringed on its patents, which involve technology for providing mobile telecommunications networks on commercial airline flights.  The two patents in suit, U.S. Patent No. 5,960,074 entitled “Mobile tele-computer network for motion picture, television and TV advertising production,” and U.S. Patent No. 6,445,777 entitled “Mobile tele-computer network” were approved for registration in 1999 and 2002, respectively.

Now however, the U.S. Patent & Trademark Office is re-examining the validity of the patents due to issues introduced by a third party who the USPTO felt “raised substantial new questions of patentability.”  This is the second re-examination of these two patents, which were also reviewed in 2010, and then affirmed.

Judge Feess compared this case to the recent federal court case between Apple Inc. and Samsung Electronics Co.  In the Apple v. Samsung case, the judge allowed the case to proceed to a jury decision even though a patent re-examination was still pending.   After the jury decided in favor of Apple, the USPTO made its decision that one of Apple’s patents in the case was invalid.

One of the attorneys for Row 44 agreed with Judge Feess that delaying the outcome of the trial would help everyone “avoid all this work” should the patents be deemed invalid.

Advanced Media argued that the case should move forward based on the fact that the patents may expire before the case goes to trial.

Judge Feess stated he would also delay a ruling on a Motion to Dismiss presented by Southwest and Row 44 at this time as well.

February 28, 2013, by Mandour & Associates, APC

San Diego – Qualcomm, Inc. and Microsoft Corp. told the Federal Trade Commission that Google is seeking injunctions to prevent competitors from selling goods that infringe its stand-essential patents, even though Google made an agreement with the FTC that it would not seek injunctions against companies that are willing to license the patented technology.

Qualcomm, Microsoft, Ericsson and  Apple all made public comments last week saying that Google is not living up to the promises it made in its deal with the FTC regarding how it handles the standard-essential patents it obtained when it bought Motorola Mobility Inc.

Google’s settlement with the FTC included a provision that prohibits Google from pursuing injunctions against companies that are willing to license the patents.  Apple and Microsoft, both of which have been in patent licensing wars with Google, said that Google is still seeking injunctions against them and using the threat of injunctions as a tool in negotiating past licensing fees.

“Google continues to pursue injunctive relief against Apple in federal court and seeks to exploit the injunction it obtained and enforced against Apple in Germany,” Apple said.

Microsoft requested the FTC clarify the pending consent decree to demand Google to abandon all injunctive relief actions that have already been filed.

“We assume that Google’s refusal to withdraw its pending claims for injunctive relief means that it interprets the proposed order to permit it to continue its existing claims for injunctive relief, notwithstanding the commission’s public statement to the contrary,” Microsoft said.  “Clarification of the decree in this regard would be appropriate.”

The companies expressed concern that if the consent decree were to be adopted for all standard-essential patent owners there would be far-reaching consequences and the companies urged the FTC to limit the proposed consent decree just to Google’s case.

“Ericsson believes that the specific procedures described in the order, if widely adopted, may cause unintended and undesirable consequences,” Ericsson said.  “Unnecessary restrictions on the availability of injunctive relief against unwilling licensees may discourage companies such as Ericsson from contributing to open standards.”

Trade groups such as the American Intellectual Property Law Association and the Intellectual Property Owners Association also opposed the consent decree.  The groups expressed concern that the consent decree limits the patent owners’ First Amendment right to seek injunctive relief from the courts in the case of infringement.

January 9, 2013, by Mandour & Associates, APC

San Diego – The deal Google struck with the Federal Trade Commission last week has received a lot of attention and many are hoping it will curtail the ongoing technology patent wars, which most agree have gotten out of control.

In the deal struck between the two entities, the FTC ruled that Google has not violated antitrust law, much to the disappointment of many of the company’s critics.  The decision came after a two-year investigation of the way Google handles licensing of its industry-standard patents to its competitors.  Google had to agree to allow its competitors access to its industry standard patents, something it had previously fought hard to prevent.

FTC chairman Jon Leibowitz said during a press conference that the patent agreement could serve as a model for other patent disputes and it could reduce patent litigation, at least in the technology sector.

As Google and Apple, two of the largest players in the technology world, spent more money on acquiring and protecting their intellectual property last year than they did on research and development, anything that can decrease those costs may benefit the companies and their customers.

At the center of the deal between the FTC and Google is the technology giant’s purchase of Motorola Mobility, which Google bought in part for Motorola’s 17,000 tech patents.  Many of these patents are standard-essential patents, which Google is required to license to its competitors on fair, reasonable, and non-discriminatory (FRAND) terms.

The FTC’s investigation began when Motorola reneged on its agreement to license its patents according to FRAND terms.  When Google acquired Motorola, it continued to refuse licensing of industry-standard patents and began seeking injunctions to prohibit competitive products that contained its patented technology from entering the country.  Conduct like this may decrease competition and increase prices, which could hurt consumers.

Google senior vice president and chief legal officer David Drummond said, “We will seek to resolve standard-essential patent disputes through a neutral third-party before seeking injunctions.  This agreement establishes clear rules of the road for standard-essential patents going forward.”

Though the FTC’s deal with Google is not binding on any other company, it is speculated that other technology companies will use the terms of the agreement as a guide for the licensing of industry-standard patents.

December 14, 2012, by Mandour & Associates, APC

San Diego – A jury in San Diego found that Apple Inc. and LG Electronics Inc. did not infringe patents for electronic devices including phones and computers owned by Multimedia Patent Trust, an Alcatel-Lucent SA subsidiary.  The verdict was issued Thursday after a trial that lasted more than two weeks in the Southern District of the United States District Court. The trial was presided over by U.S. District Judge Marilyn L. Huff.

The Paris-based Multimedia Patent Trust filed the lawsuit in December 2010 and it asked the jurors to award $9.1 million in royalty damages from LG Electronics and $172.3 million in royalty damages from Apple.

The Plaintiff accused LG Electronics of infringing two of its patents and Apple of infringing three of its patents for video-compression technology, which aids in sending data via satellite and over the Internet and allows for increased media storage on DVDs and Blu-Ray disks. The patent trust claimed the patents were infringed by multiple devices including LG Electronics’ Chocolate Touch VX8575, Touch AX8575, Bliss, UX700, Mystique UN610, Samba LG8575, and Lotus Elite LX610 as well as Apple’s MacBook, iMac, iPhone, iPod, and iPad. The patent trust also claimed that at least 33 different companies have paid more than $190 million to license the patents in question and Apple and LG Electronics should have to pay the licensing fees as well.

Apple and LG Electronics argued that they had in fact compensated the Multimedia Patent Trust because they are members of an industry-wide patent pool. The companies also claimed that the trust was attempting to expand the scope of its expired patents to cover technology that it does not own.

Though Apple and LG Electronics have a verdict, the two-year patent war is far from over between the companies. The patent trust has already motioned for mistrial, sighting the behavior of Apple’s counsel during closing arguments as reason to retry the case. Apple received the ruling just hours after losing a separate, unrelated case against MobileMedia, a subsidiary of Sony, MPEG-LA and Nokia. In that case a Delaware jury found Apple had infringed three patents dealing with the operation of the phone’s camera and call handling.

December 12, 2012, by Mandour & Associates, APC

San Diego – Apple and Google are reportedly working together to offer Eastman Kodak more than $500 million for its imaging patents, which are being sold as part of Kodak’s bankruptcy proceedings.

The two technology giants are bidding on an undisclosed amount of Kodak’s 1,100 patents related to capturing, manipulating and sharing digital images.  Kodak valued the patents at $2.21 billion to $2.57 billion in its court documents, claiming it has made more than $3 billion by licensing the patents to companies such as Samsung Electronics, Google’s Motorola Mobility unit, LG Electronics and other technology companies.

Bidding entities disagreed with the figure Kodak assigned to its patents, as the first round of bids were reported to be in the $150 to $250 million range, likely because the value of the patents has been diluted due to Kodak’s excessive licensing.

Kodak is unwilling to sell its patents for that low of a figure as its $850 million loan offer, which it needs to pull out of bankruptcy, is contingent upon its patents selling for no less than $500 million.

In the first round of bidding, California-based companies Apple and Google were bidding against each other.  Apple is teaming up with Microsoft and Intellectual Ventures while Google is working with RPX Corp. and Asian manufacturers of Google’s Android phones.

Though Apple and Google are major competitors in the smartphone market and have had patent disputes in the past, partnering to purchase the patents allows both companies to not only reduce the cost but also limit the likelihood of patent infringement claims in the future.

This will not be the first time Apple has teamed up with a major competitor to purchase patents.  Apple teamed up with Research in Motion, maker of the Blackberry, to buy 6,000 patents from Nortel Network’s Corp. for $4.5 billion.  The companies were able to out bid Google, who only offered $900 million.  Google and Apple refused to comment on the alleged bid, as each company said it would not comment on rumors.  New York-based company Kodak would not comment on the purchase either, due to a court ordered confidentiality agreement.

Once Kodak secures its exit financing, it plans to shrink the company and move its focus away from photography, as the company was unable to keep up with the switch to digital.  Instead, it plans to focus on commercial, packaging and functional printing services.

November 13, 2012, by Mandour & Associates, APC

San Diego – For the first time, a federal judge will determine what constitutes a reasonable royalty rate for patents that have become an industry standard.  The case, which begins Tuesday in the U.S. District Court in Seattle, started when Microsoft filed a lawsuit against Motorola in November 2012 claiming that Motorola breached its contract to provide use of its patents at a reasonable rate.  The technology relates to online-video viewing and wireless usage.

Private companies that hold industry-standard patents may be required to license them under FRAND or “fair, reasonable, and nondiscriminatory” terms as part of joining international-standards groups.  Microsoft claims that Motorola Mobility, a subsidiary of Google, demanded excessive royalties for the use of its industry-standard patented technologies.  Microsoft claims that Motorola required 2.25 percent of the sale price of every Xbox and Windows sale, which it claims would amount to Microsoft paying Motorola $4 billion annually.

Motorola disputes the $4 billion figure and claims that the 2.25 percent royalty rate was simply an opening figure for negotiations.  Judge Robart is expected to give an opinion about what constitutes a reasonable royalty fee for all industry-specific patents.  A jury trial, planned for the spring, will then compare the reasonable rate determined by Judge Robart with Motorola’s rate.

The decision will have an impact on other cases between the two companies in Washington, D.C. and in Germany.  Motorola is currently seeking an import ban on Xbox consoles from the U.S. International Trade Commission (ITC), as they contain some of the industry-standard patents being disputed in the Seattle trial.  Motorola has already won an injunction from a German court that bans the sale of certain Windows and Xbox products in those countries.  Judge Robart has barred Motorola from enforcing the injunction until the Seattle case is settled.

Microsoft has already said that it will pay Motorola whatever the court decides is a reasonable royalty rate.  If Motorola agrees, the cases before the ITC and the injunction in Germany will likely go away.

 

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.

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