By: admin on January 11th, 2012
By Wendy Marsh
AT&T has agreed to pay TiVo over $215 million to settle patent infringement litigation pertaining to TiVo’s digital video recorder, or DVR, technology. In August of 2009, TiVo sued AT&T in the U.S. District Court for the Eastern District of Texas alleging that AT&T had infringed three of its patents, and the trial was scheduled to begin on January 9th. Under the terms of the settlement, AT&T will pay TiVo $51 million initially, followed by quarterly payments through June 2018 totaling $164 million, for a grand total of $215 million. The settlement agreement further provides that should AT&T’s DVR subscriber base exceed certain levels, AT&T will pay TiVo recurring per subscriber monthly license fees through July 2018. The settlement with AT&T follows recent settlements by TiVo in similar cases with Dish Network and EchoStar.
TiVo’s was the first digital video recorder to enter the market in 1999. Since its introduction, cable companies and satellite television providers have made DVRs a standard feature in their cable and satellite packages. TiVo’s patent portfolio on the DVR technology includes U.S. Patent No. 6233389 for a “Multimedia Time Warping System,” which issued on May 15, 2001. The settlement with AT&T does not resolve all of TiVo’s legal disputes relating to its DVR patents as it is still litigating DVR patent infringement claims against Microsoft Corp. and Motorola Mobility Inc. TiVo is also suing Verizon Communications Inc. for patent infringement in Texas.
Posted in Intellectual Property, Patent Law | No Comments »
By: admin on December 2nd, 2011
By Wendy Marsh
While the “Occupy Wall Street” demonstrations have been dubbed a “revolution” by sympathizers, they have also seemed to spark a revolution of trademark applications filings in the U.S. Patent and Trademark Office (USPTO). The filers have seen the potential for profit by selling T-shirts, coffee mugs, various other merchandise emblazoned with one or more catch-phrases made popular during the protests, including “Occupy Wall Street,” “Occupy the Vote 2012,” and “We are the 99%.” The USPTO filings include over 15 trademark applications filed just within the past month that include the term “Occupy.”
The USPTO now has the challenge of sorting through the flood of applications to determine who (if anyone) is entitled to the ownership rights in these slogans. When the USPTO is confronted with numerous applications for the same mark, it normally awards the trademark rights to the person or entity that was the first to file. The USPTO, however, will also have to take into consideration other issues, including whether the mark was already in widespread use prior to the filing and whether the filer is actually using the name as a “trademark”. As it typically takes about three to six months for the USPTO to perform its initial review and examination of a particular trademark application it will be some time before the issues relating to these applications are sorted out and determined.
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By: admin on October 25th, 2011
By Wendy Marsh
As you may be aware, the America Invents Act (“Act”) was signed into law by President Obama on September 16, 2011. This Act has created and will continue to create sweeping changes in U.S. patent laws. We have prepared a summary below to inform you of some of the most significant provisions of this law.
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By: admin on October 14th, 2011
The San Francisco Giants baseball team is being sued by Gogo Sports due to the use of the term “San Francisco” in an eerily similar script. For logos, click here.
Gogo Sports obtained a federal trademark registration from the U.S. Trademark Office on its “San Francisco California” logo on March 15, 2011 for caps and clothing items, claiming a date of first use of 2008. Prior to that time, Gogo had been threatened repeatedly by Major League Baseball (MLB) and the San Francisco Giants to cease use of the Giants’ mark to which Gogo refused, claiming its own rights in the mark. Now, Gogo has attempted to turn the tables on MLB and the Giants and is suing them for a declaratory judgment of non-infringement.
While ownership of a federal trademark registration would make most people think Gogo has the upper hand in this lawsuit, Gogo’s case appears to be full of pitfalls, the most obvious of which being that trademark rights exist even for unregistered trademarks. Thus, even though the Giants never bothered to register its script logo, it has been using it in the San Francisco market and elsewhere on its uniforms, hats, and associated merchandise since 1993. Thus, the Giants’ rights in the script logo still trump those of later users in the Giants’ geographic area of use including Gogo, regardless of Gogo successfully convincing the U.S. Trademark Office to register its logo. So while Gogo Sports may be have believed itself savvy in the filing of its lawsuit, it appears likely that its asserted legal claim may wind up sinking in the San Francisco Bay of frivolous lawsuits. On the flip side, the lesson to the San Francisco Giants and other unregistered trademark users is to get your marks federally registered early to prevent later users from attempting to sabotage your established trademark rights.
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By: admin on October 6th, 2011
By Wendy Marsh
Steve Jobs, co-founder of Apple Inc., died yesterday of pancreatic cancer at the age of 56. Jobs’ technological and marketing expertise is legendary, but he will also be remembered as a remarkable and prolific inventor, who is already being compared to the likes of Thomas Edison and Henry Ford, not only in terms of sheer number of issued patents, but more important, in terms of their effect on technological innovation. Comparatively, only nine Microsoft patents carry the name of Apple’s other co-founder, Bill Gates.
Steve Jobs is listed as an inventor or co-inventor of 317 Apple patents, which range in technology from the company’s iconic devices, such as the iPod and iPhone, to the company’s glass staircases featured in many Apple stores. The New York Times today published a detailed summary of Mr. Jobs’ numerous patents, the link to which is below:
http://www.nytimes.com/interactive/2011/08/24/technology/steve-jobs-patents.html
The Jobs’ patents include both utility and design patents, which may be broadly categorized as Desktop Computers, iPods, iOS Based Devices, Laptops, Packaging, Keyboards and Mice, Monitors, Macintosh Operating Systems, NeXT, Display Devices, Apple TV, and miscellaneous patents on various items such as power adapters, adapter plugs, device holders and, of course, the glass staircase. Long after the patents on these inventions expire, Mr. Jobs’ impact on the way people interact with technology will be felt for many years to come.
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By: admin on September 16th, 2011
By Wendy Marsh
Today, President Obama signed into law the America Invents Act. The President said the bill will ease the backlog of patent applications to be examined, and shorten the approval process which now he said is on average about three years. This legislation, which marks the most significant change to patent law since 1952, will transition the United States from a “first to invent” system to a “first to file” system whereby the first to file their patent application will be granted patent rights to a particular invention. Obama touted the bill as a job creator with the reasoning that it will help startups and small business owners turn their ideas into patented products more quickly and boost businesses.
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By: admin on September 9th, 2011
By Wendy Marsh
The Leahy-Smith America Invents Act was passed by the House of Representatives on June 23, 2011, and yesterday, in a showing of bipartisanship, the U.S. Senate passed H.R. 1249 by a vote of 89-9 without amendment. The Senate final vote took place just over an hour before President Obama appeared before a joint session of Congress to present his plan for job growth. The bill has been sent to President Obama, who is expected to sign the legislation. Sen. Lamar Smith, R-Texas, co-sponsor of the bill, hailed it as, “one of the most significant job creation bills enacted by Congress this year.
Many of the provisions of the America Invents Act will take effect shortly after enactment, including new fee provisions, elimination of district court review of reexamination decisions, a higher threshold for inter partes reexamination, a new prior-user defense and removal of the best mode defense in patent infringement litigation. Also notable, in view of the rash of recently filed false patent marking lawsuits, are new provisions that, 1) require private false marking claims to show proof of competitive injury; and 2) eliminate as actionable under the patent false marking statute marking a product with the number of a patent that covered the product but has expired.
Other portions of the bill set to take effect 12-18 months following passage include the measure whereby the U.S. will switch from a “first-to-invent” to a “first-to-file” system, which will place the U.S. in line with other industrialized countries. This proposal has been met with resistance by small-scale inventors who say it will place them at a disadvantage with big corporations. In this regard, Sen. Maria Cantwell, D-Wash., said, “This is not a patent reform bill. This is a big corporation patent giveaway that tramples on the rights of small inventors.” Supporters of the bill say it will add certainty to a system now riddled with costly lawsuits relating to the complex determination of first to invent.
A link to the full text of the bill is provided below:
http://www.uspto.gov/patents/init_events/BILLS-112hr1249eh.pdf
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By: admin on August 17th, 2011
By Wendy Marsh
Victor Willis, the original lead singer of the Village People, has filed paperwork to regain control of his ownership share of songs by the band, including the hits “Y.M.C.A.”, “In the Navy”, and “Macho Man” by the year 2013. A little-known provision of the 1978 Copyright Act could provide such a basis for Mr. Willis, otherwise known as the Village People “Cop”.
Section 203 of the Copyright Act (17 U.S.C. Section 203) allows the creator of a copyrighted work, who, during his/her lifetime, has transferred all or some of the rights to the work on or after January 1, 1978, to terminate the transfer and regain the rights after a certain period of time, which is generally at least 35 years from the date of grant or from publication. The earliest Section 203 terminations of transfers will take effect in 2013. Section 203 of the Act was enacted to give authors the opportunity to regain rights they may have signed away earlier without fully understanding their rights and/or while they had little bargaining power.
Section 203, however, has some important exceptions, including the fact that it does not apply to works made for hire. This exception could potentially “arrest” Mr. Willis’ claim as the two companies that administer publishing rights in the Village People’s songs, Scorpio Music and Can’t Stop Productions, are contesting his claim on the basis that it was a work for hire. More particularly, the companies have asserted that Mr. Willis was hired to join the Village People, a concept band created by the music label. If this is found to be the case then, as an employee, Mr. Willis’ contributions to the Village People songs would likely be considered a work for hire and therefore not covered by the provisions of Section 203 of the Copyright Act.
For more information, click here.
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By: admin on June 28th, 2011
By Wendy Marsh
On June 26th, the U.S. House of Representatives passed the Leahy-Smith America Invents Act by a vote of 304-177. As the bill differs slightly from the text that was approved overwhelmingly by the Senate (95-5), it will not yet be going to President Obama for signature. Instead, the bill will now go back to the Senate where Senators will be asked to approve the changes adopted by the House.
One of the chief differences in the bill involves funding for the United States Patent and Trademark Office (USPTO). While the Senate bill put an end to the practice of fee diversion which occurs when Congress appropriates the USPTO less than what it collects in fees, the bill passed by the House does not provide such guarantees. The final bill will include a first-to-file provision whereby the first person to file a patent application on a particular invention will be entitled to patent protection, rather than the first-to-invent as provided by current U.S. law.
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By: admin on June 14th, 2011
By Wendy Marsh
In a unanimous decision dated June 9th, the U.S. Supreme Court upheld a $290 million jury verdict against Microsoft Corporation for patent infringement in Microsoft Corp. v. i4i Limited Partnership and Infrastructures for Information Inc. In doing so, the Court rejected Microsoft’s contention that a patent infringement defendant need only demonstrate that the patent at issue is invalid by a preponderance of the evidence rather than by the long-standing standard of “clear and convincing” evidence.
The battle between Microsoft and i4i began in 2007 when i4i sued Microsoft for infringement of its patent relating to text manipulation software. A federal jury awarded i4i $290 million after finding that Microsoft’s 2003 and 2007 versions of its word processing application, Word, infringed i4i’s patent. A U.S. court of appeals affirmed the lower court’s verdict that upheld the validity of the i4i patent. Microsoft then appealed to the Supreme Court. Microsoft has long since removed the i4i technology from Word but continued to fight i4i, believing its patent to be weak and one that should never have been granted. Microsoft twice requested reexamination of the i4i patent by the U.S. Patent and Trademark Office (USPTO) and the USPTO upheld its validity both times.
In its appeal, Microsoft argued that a lower standard involving a “preponderance of the evidence” was appropriate as it would make some “bad” patents easier to invalidate while still promoting innovation and competition. Writing for the majority, Justice Sonia Sotomayor said the Court rejected Microsoft’s proposed lowering of the standard of proof for patent invalidity, noting that Congress had prescribed the governing standard of proof, and any decision to change the standard in patent infringement cases would therefore have to come from Congress.
Many members of the software industry, including Google Inc., and Yahoo! Inc., supported Microsoft in its quest to lower the standard for invalidating software-related patents (which likewise would have lowered the standard for all patents), while the Obama administration, Bayer AG, 3M Company, and groups representing biotechnology companies and pharmaceutical manufacturers supported i4i. Chief Justice Roberts, who owns Microsoft stock, recused himself from the case. Louden Owen, i4i’s chairman, characterized the decision as “one of the most significant business cases the [Supreme Court] has decided in decades.” In any event, the Supreme Court’s decision maintains the higher evidentiary standard for invalidating any patents, software-related or otherwise.
For the complete decision, click here.
Posted in Intellectual Property, Patent Law | No Comments »