Patent Litigation

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.

February 17, 2014, by Mandour & Associates, APC

San Diego – The nation’s two top mobile device makers will head back to court next month to duke it out yet again.  This trial, the third between the big name rivals, will start March 31st and will cover five patents and a total of twenty devices that the companies respectively claim are infringing.   The setting is familiar for both companies, as it will take place in the same courthouse and will be heard by the same judge as the last two trials.

According to several reports, Apple CEO Tim Cook and Samsung Co-CEO JK Shin attempted to resolve the dispute informally through mediation talks.  It appears that those negotiations have failed, however, as a Korean newspaper recently reported that Shin is back in Korea and has stated that he has no plans to return to the United States before the February 19th deadline for settlement talks.  This comes as little surprise, as both have remained stern in their positions against one another.  It also mirrors the situation that occurred in 2012 as the two met to try to resolve the last dispute before ultimately going to trial, where a jury ended up awarding $1 billion to Apple for patent infringement damages.

With a bitter feeling left over from 2012,  Samsung is alleging this time that Apple has infringed its patents with its iPhone 4, iPhone 4S, iPhone 5, iPad 2, iPad 3, iPad 4, iPad Mini, iPod Touch (5th generation), iPod Touch (4th generation) and MacBook Pro.  Apple, on the other hand, claims that Samsung’s Admire, Galaxy Nexus, Galaxy Note, Galaxy Note 2, Galaxy S2, Galaxy S2 Epic 4G Touch, Galaxy S 2 Skyrocket, Galaxy S3, Galaxy Tab 2 10.1 and Stratosphere are all infringing its own patents.

Depending on the result of the trial, either company could face serious problems if forced to pull products off shelves due to an injunction.  Given that many of the devices that Samsung has taken issue with are somewhat new rereleases, Apple could stand to lose more than Samsung with a loss.  Regardless, it is evident that the war between these two is far from over.

January 17, 2014, by Mandour & Associates, APC

San Diego – Blackberry Ltd. has filed a federal lawsuit in San Francisco against Typo Products LLC, alleging patent infringement of its smartphone designs.   Blackberry’s lead counsel announced the filing and said that Typo’s product “is a blatant infringement against BlackBerry’s iconic keyboard, and we will vigorously protect our intellectual property against any company that attempts to copy our unique design.”  He did not expand on whether or not his company had attempted to come to an agreement with the Los Angeles-based startup before filing its complaint.

The Typo device, which is available for sale for $99, features a keyboard that snaps onto the iPhone 5 or 5s, much like a protective case.  The full-size “QWERTY” keyboard is then attached to the bottom of the iPhone, covering the traditional touch sensor that Apple is known for.  Ryan Seacrest, who is a part owner of Typo, has said that he and his team came up with the idea for the Typo keyboard because they wanted a faster and more efficient way to type on their iPhones.  Indeed, Typo alleges that its studies have shown that testers reported up to 50% faster typing speeds when using the Typo keyboard as opposed to the standard on-screen iPhone keyboard.

Physically, when the Typo is fitted onto the iPhone, it looks strikingly similar to the Blackberry.  The keyboard is almost identical to that of Blackberry, with some subtle differences.  For example, the Typo has a Bluetooth option on the “0″ key, which Blackberry does not have.  The Typo also uniquely has light bulb and mail icons on the bottom row of keys.  Despite these minor variations, Blackberry contends that Typo “blatantly copied” the physical keyboard that it is known for, effectively allowing consumers to turn any iPhone into a Blackberry, without having to pay for a Blackberry.

This lawsuit could be Blackberry’s make or break moment, as the company has seen a steady drop in sales over the past few years, with many tech experts predicting its impending end coming soon. Despite its efforts to keep up with Apple and Samsung with its development of a few touch-screen only phones, Blackberry has been unable to resurface as a major smartphone contender.   As a result, if Typo ends up the resulting victor of this lawsuit, it could sound the death knell for the troubled mobile device maker.

July 3, 2013, by Mandour & Associates, APC

San Diego – Innovative Display Technologies, Inc. lodged a lawsuit in federal court in the Eastern District of Texas Friday against technology giants Hewlett-Packard Co. and Dell, Inc., among others.

Innovative Display Technologies, based in Plano, Texas, alleges that the use of its invention has allowed these companies to create brighter, sleeker, and more energy efficient screens for computers and cell phones.  The defendants named in the lawsuit, along with Dell and HP, are Blackberry, Inc., Acer, Inc., Huawei Investment & Holding Co. Ltd. and ZTE Corp.

The lawsuit alleges that these technology giants knowingly utilized the technological invention patented by Innovative Display Technologies to create thinner and brighter screens for a variety of different applications.  Innovative Display Technologies alleges that the patents have been infringed in use on computers, laptops, cell phones, tablets, printers, and calculators.  The complaint also alleges further infringement on the patents by third-parties involved in manufacturing, selling, and advertising the infringing products.

The 7 patents that were allegedly violated are all titled “Light Emitting Panel Assemblies” and were issued between 2004 and 2012.  The patents named in the lawsuit are U.S. patent numbers 6,755,547; 7,300,194; 7,384,177; 7,404,660; 7,434,974; 7,537,370; and 8,215,816.

The patents are held by Ohio native Jeffrey Parker, who is named as the inventor on 85 patents in the US Patent and Trademark Office.

The lawsuit alleges that the defendants were informed in August 2012 that the technology for sleeker displays on computers and cell phones was held by Innovative Display Technologies and all use of the technology should cease.  By continuing to sell the infringing products, Innovative Display Technologies alleges that violation of the patents by these companies is now willful.

Innovative Display Technologies claims that the willful infringement of its patents entitles the company to triple damages, as well as interest and attorneys fees.  The company is also seeking an injunction barring the defendants from both direct and indirect infringement of the patents at stake.

June 13, 2013, by Mandour & Associates, APC

San Diego – On the brink of trial, TiVo Inc. reached a massive settlement agreement with Motorola Mobility Inc., Time Warner Cable Inc., and Cisco Systems Inc. to end the patent infringement disputes brought by all sides.

The $490 million settlement will bring to a close multiple cases in which TiVo claimed that its competitors infringed on its patents for set-top cable boxes.  Both brought in U.S. District Court in Texas’ Eastern District, these cases are just a few of the many patent infringement cases TiVo has brought against its competitors in recent years.  Based in Alviso, Calif., TiVo was the first major company to patent a device that digitally records live television and it has defended its patents aggressively since then.

In the case between TiVo and Motorola, Illinois-based Motorola first brought a lawsuit against TiVo in California court, alleging infringement on its U.S. Patent Numbers 5,949,948, 6,304,714, and 6,356,708.  TiVo disagreed and filed its own patent infringement counterclaims in Texas, citing its U.S. Patents numbered 7,493,015 and 6,792,195.  This settlement came just in time, as trial was set to start on June 10th.

As part of the settlement reached Friday, Motorola’s share of its dues to TiVo will be split between former owner Google and its new owner Arris Group, Inc.  Google bought Motorola in 2012, but then sold off the Motorola Home subsidiary, the manufacturers of the set-top boxes at fault, to Arris.  Both Google and Arris will pay licensing fees as terms of the agreement.

TiVo’s battle against Cisco took a similar trajectory, with Cisco attempting to invalidate TiVo’s patents, and TiVo firing back in Texas federal court with a patent infringement lawsuit of its own.  The digital recording giant accused Cisco and Time Warner of violating its patents ‘015 and ‘195, just as it did in its case against Motorola.

This continues a successful string of patent infringement cases for TiVo, which has collected $1.6 billion in patent litigation settlements.  The company had previously been awarded $250 million from lawsuits against Verizon Communications Inc. and $215 million from AT&T Inc.

May 17, 2013, by Mandour & Associates, APC

San Diego – Nintendo Co. Ltd. recently won a patent case against Motiva LLC when a panel of three judges rendered the decision that Nintendo’s Wii does not infringe on Motiva’s patents.  A Federal Circuit Court also rejected Motiva’s accusations that Nintendo had violated Section 337 of the Tariff Act of 1930, a trade remedy enacted to prohibit unfair methods of competition and wrongdoing in the importation of products into the United States.

The two patents at issue were No. 7,292,151 and No. 7,492,268, both entitled “Human movement measurement system”.  The patents center around “testing and training a user to manipulate the position of the transponders while being guided by interactive and sensory feedback.”  The patents are related to a wireless hand control and motion based system for controlling video games.

The Nintendo Wii interactive home video game, released in November of 2006, uses a motion sensitive game system in which the player gets up and enacts the movement demonstrated onto a screen.

Motiva, a hardware and software company dedicated to video games, filed its first complaint, currently on hold, against Nintendo with the U.S. District Court in 2008.  Motiva then filed the case with the U.S. International Trade Commission in 2010 asserting the same claims but lost the case in January of 2012, which was then appealed.

In the Federal Circuit appeal of the case, Motiva tried to argue that it needed to pursue the litigation against Nintendo as a prerequisite to luring investors.  But the three judge panel comprised of Judges Pauline Newman, Sharon Prost and Kathleen O’Malley did not buy into this idea.  All unanimously believed Motiva was seeking financial gain in initiating the litigation as opposed to initiating a product launch using the patent.

In essence, Motiva failed to meet the requirements of Section 337 because under the statute, “the importation or sale of an infringing product is illegal only if a U.S. industry producing an article covered by the relevant IP exists or is in the process of being established.”  As well, the panel was not convinced any company was waiting in line to sign a license agreement with Motiva.

The panel of judges stated, “The evidence demonstrated that Motiva’s litigation was targeted at financial gains, not at encouraging adoption of Motiva’s patented technology.”

Motiva is still hopeful it will prevail in U.S. District Court when that case resumes.

April 29, 2013, by Mandour & Associates, APC

San Diego – Last week Ericsson Inc. added eight additional patents to its patent infringement lawsuit against Samsung Electronics Co. Ltd.   The original complaint, filed last November in a Texas U.S. District Court, was spawned by Samsung’s refusal to renew a license it had to 12 Ericsson patents covering various telecommunications devices and related multimedia equipment.

Samsung responded to the claims with a counterclaim alleging that Ericsson infringed on Samsung technology covered in 12 other patents.

Ericsson’s has denied Samsung’s allegations and the addition of the 8 patents brings the total number of allegedly infringing patents to 19.  The alleged infringements relate to technology used in products such cell phones, televisions, computers, Blu-ray disc players and camera equipment.

According to Ericsson, Samsung originally licensed to the technology in 2001, and renewed the license in 2007.  Then more recently, Samsung allowed the license to lapse while refusing to pay the same rates others were paying, or FRAND (fair, reasonable and non-discriminatory) rates.  Instead of FRAND rates, Ericsson is alleging that Samsung offered Ericsson a much a smaller amount.

Samsung also has its own standard-essential patents which Ericsson has refused to license.  Samsung is claiming that the terms and fees in Ericsson’s license agreement were not at all reasonable accuses Ericsson of engaging in a “pervasive and pernicious pattern” while failing to agree to FRAND rates.  Samsung further finds Ericsson’s licensing methods unfair and designed to attempt to extort a “vastly unreasonable and discriminatory” payment, due to its exit from the mobile device market.

Ericsson’s reply to the countersuit is alleging that Samsung is holding out from allowing Ericsson to access to the standard-essential patents until Ericsson agrees to a rate more to Samsung’s liking, and one that is a reduction from the FRAND standard rates paid by others.   Ericsson alleges “Samsung rejected Ericsson’s offers and has consistently refused to grant Ericsson a license to the asserted Samsung essential patents unless Ericsson reduces its offered rate to an unreasonably low level.”

In an effort to secure more favorable licensing terms, it appears that both parties are trying to increase the downside for the other in the litigation.  Thus far however, it has not worked.

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.

March 21, 2013, by Mandour & Associates, APC

San Diego – THX Ltd. filed a lawsuit against Apple, Inc. in California federal court claiming that the technology giant is infringing its patent that covers technology for narrow-profile speakers.

The complaint filed in San Francisco alleges that various Apple devices, including the popular iPhone 4 and the iPad, infringe U.S. Patent Number 7,433,483.  The ‘483 patent covers technology for narrow-profile speakers that can be used in small devices to improve sound without the need for external speakers.

San Rafael, CA-based THX told U.S. District Judge Jeffrey S. White that Apple is “among other things, making, using, importing, offering to sell, and/or selling in the United States products covered by one or more claims of the ‘483 patent…including but not limited to Apple’s iPhone4 and later models, as well as its iPad, and iMac products.”

THX’s patent, titled “Narrow profile speaker configurations and systems” was granted in 2008 and covers speakers that are meant to be used in small electronic devices including computers and flat-screen devices.  According to the patent description, the speakers can also be used in cars.  The narrow-profile speakers emit sound through a narrow opening and the size of the opening modifies the shape of the sound waves, altering the sound emitted, according to the patent description.

THX claims that Apple has been making and importing various electronic devices that infringe its ‘483 patent and that Apple’s patent infringement will cause irreparable harm to THX and therefore the technology giant must be stopped immediately.

“Apple’s infringement of the ‘483 patent has cause and will continue to cause THX both monetary damage and irreparable harm for which it has no adequate remedy at law.”

THX is seeking a declaratory judgment that Apple has infringed the ‘483 patent, a permanent injunction prohibiting Apple from continuing to infringe the patent, damages, prejudgment interest, costs and attorney fees.

THX is a cinema acoustics company started by “Star Wars” creator George Lucas.  THX began after Lucas realized that the state-of-the-art technology used to record sound while filming was being lost on cinema audiences, as theaters were using antiquated acoustic technology incapable of playing the sound the way the producers had envisioned.

The company went on to revolutionize the way movies are heard on both the big screen and more recently on devices in the home.  Today the company is known for its certification standards for cinema sound quality.


February 20, 2013, by Mandour & Associates, APC

San Diego – eBay Inc. was sued in the Southern District of California in San Diego for allegedly infringing patents that cover technology related to the display of auction information online.

Patent-holding company Advanced Auctions LLC took issue with the way in which eBay displays price and time information for auctions held on its website.  Advanced Auctions specifically pointed to the technology eBay uses to update bid and pricing information in the last hour of an auction as infringing its patents.

In the complaint filed in San Diego, Advanced Auctions alleges that eBay’s website shows the highest current bid and the time remaining in the auction for every active auction.  Before the final hour of the auction, the website does not automatically update this information.  It is up to the user to manually refresh the browser to get the most current time and bid information.

Once the last hour of the auction hits, the highest bid and time remaining in the auction is automatically updated by the website, which Advanced Auctions claims infringes its “Real Time Auction with End Game” patent.

Del Mar, California-based Advanced Auctions claimed it sent a cease and desist letter to eBay regarding its alleged patent infringement, but the company claims eBay never responded to the letter or ceased using the technology that Advance Suctions claims infringes on its patents.

According to the complaint, eBay’s 2012 annual report shows that 37 percent of the San Jose, California-based online auction house’s gross merchandise volume was handled through its online auctions.  Since those auctions use Advanced Auctions’ patented technology, the company claims, eBay is also contributing to direct infringement by its users.

Advanced Auctions alleged that since eBay has continued to use the automatic auction updating technology after it received notice of Advanced Auctions’ patent, eBay’s infringement is willful.

Advanced Auctions is asking the court for a judgment that eBay infringed its patents, an injunction preventing eBay from continuing to infringe its patent, an accounting of damages suffered by Advanced Auctions, treble damages, attorney’s fees and costs.

Judge John A. Houston of the Southern District of California in San Diego will hear the case.

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