Archive | Patent

Convinced by Patent Pending or Will They Search Before Licensing Your Invention?

When you approach a potential purchaser or licensee of your invention, the potential purchaser or licensee might do their own research to determine whether they think you are likely to obtain a patent. They can do that in the same way that you can do it, by performing a novelty search on your invention.

Consider again the case of Penalty Kick Management v. Coca-Cola Company, 318 F.3d 1284 (11th Cir. 2003), which I discussed yesterday. Penalty Kick Management (PKM) wanted to license its Magic Windows invention to Coca-Cola. And Coca-Cola was interested to the point of proposing to pay PKM $1 million plus a per label royalty for an exclusive global license. Not bad.

The Magic Windows invention consisted of “a scrambled message on the inside of a beverage container …

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Why They Won’t Sign Your Nondisclosure Agreement

You want to pitch your invention to a company. Sure, its possible they won’t sign your Nondisclosure Agreement (NDA) because they want to steal your invention. But, how could they want to steal your invention if they know little or nothing about it?

Even if they know a little about the general subject area and are interested in learning more, there may be a less nefarious reason they won’t sign the NDA. And that reason arises from the old saying “the left hand doesn’t know what the right hand is doing.”

If you approach a larger company, the person or department you are talking to might not know what another person or department in the company is doing or has done in a particular technology space.

The left-hand-right-hand-saying above is generally …

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The Case for Excluding Solely Oral Disclosures from Nondisclosure Agreement Coverage

“If the orally disclosed confidential information is important, then the disclosing party probably should confirm it in writing to protect itself from the hell of trying to prove a solely oral disclosure.”

Nondisclosure Agreements (NDAs) sometimes specify that the confidentiality obligations cover disclosures in any form, whether that be oral or written. On one level this make some sense. Why should it matter how I disclose it to you? If its confidential, you need to keep it secret.

However, practically, enforcing or defending an alleged breach of an NDA in connection with a solely oral disclosure can be difficult and expensive. Therefore, solely oral disclosures may be completely excluded from NDA coverage. However, it is more common to allow coverage of oral disclosures, but only if they are confirmed in writing to …

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Problems with Nondisclosure Agreements: Lack of Subject Matter Limits

Can you send me a form Nondislcosure Agreement (NDA)? Lawyers get this question often. But, ideally you don’t want a form NDA, you want one or more NDAs tailored to the situations where they will be used.

People often sign NDAs without thinking too much about them. But not all NDAs are the same. And there are situations where an NDA can come back to bite you in ways you might not expect. Let’s look at the subject matter scope of an NDA.

Many form NDAs will have very broad definitions of what is considered confidential information that should not be disclosed. You might see something like:

Confidential Information shall mean any data or information that is competitively sensitive material and not generally known to the public, including, but not limited to,

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Burstein on Determining Relevant Article of Manufacture for Design Patent Damages

The US Government proposed, and the Apple v. Samsung trial court adopted, a four factor test to determine the “article of manufacture” for calculating total profit damages for design patent infringement. But, Professor Sarah Burstein says the four factor approach “is built on a legally and logically flawed foundation and … [the] proposed test—like any other multi-factor, factual inquiry—will increase the cost and complexity of design patent litigation without being likely to produce more just or more predictable outcomes.”

Instead, Burstein proposes an alternative method of determining the relevant article in her paper titled, The “Article of Manufacture” TodayThere she makes the case that courts should adopt a historical definition of “article of manufacture.” After reviewing the history of the term she concludes:

…for a design patent claiming a design for surface ornamentation, the

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Four Factor Test for Determining the Article for Total Profit Damages in Apple v. Samsung

USD0618677_fig1In a 2016 decision in Samsung v. Apple, the Supreme Court determined that the relevant “article of manufacture” for calculating total profits damages for design patent infringement could be either (1) the product (e.g. the Samsung phone) sold to a customer or (2) a component of that product.

Previously, the “article of manufacture” for calculating total profits damages for design patent infringement was the entire product sold to a customer. The profits to the entire product are usually likely to be greater than profits to a component of the entire product.

The case was sent back to the trial court and a new trial was ordered on damages. In October 2017, the trial court ruled that a four factor test would be used to determine what is the article of manufacture for …

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Total Profit Damages on Entire Product or Component for Design Patent Infringement

USD0593087_Fig1In 2007, Apple released its first generation iPhone. After Apple released its iPhone, Samsung released as series of smartphones “that resembled the iPhone.” In 2011, Apples sued Samsung alleging various infringement claims, including that Samsung’s smartphones infringed Apple’s D593,087, D618,677, and D604,305 design patents. A jury awarded Apple $399 million in damages for design patent infringement, the entire profit Samsung made from its sale of the infringing smartphones.

Samsung appealed arguing “that the profits awarded should have been limited to the infringing ‘article of manufacture’—for example, the screen or case of the smartphone—’not the entire infringing product’—the smartphone.” The court of appeals rejected that argument reasoning that “’limit[ing] the dam- ages’ award was not required because the ‘innards of Samsung’s smartphones were not sold separately from their shells as distinct articles of …

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Lack of Capitalization of “internet protocol” in Claim Contributes to Invalidity Over Prior Art

US07269247_Fig1The importance of the wording of a patent claim is paramount. And, even the capitalization of the words of the claims can matter as shown in the case of AIP Acquisition LLC v. Cisco Systems, Inc., No. 2016-2371 (Fed. Cir. 2017).

Cisco Systems challenged the validity of U.S. Patent No. 7,269,247, owned by AIP Acquisition. The patent is directed to systems and methods for interconnecting otherwise incompatible telephone networks using the Internet, for example, for the purpose of placing a phone call through various networks including the “Internet or other data networks.”

A disputed portion of claim 1 provided “the second format being internet protocol” and a disputed portion of claim 16 provided “wherein said second format is Internet protocol.”

In order to distinguish the prior art and save the validity …

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Can Benefit to Provisional Patent Application be Restored When the One Year Deadline to File a Nonprovisional is Missed?

A provisional patent application is not examined by USPTO and will not result in a patent. In order to gain the benefit of the provisional application, a non-provisional application must be filed within one year of the filing date of the provisional application and must claim priority to the provisional application. But what if you fail to file the non provisional application within one year of the provisional filing date? Is all benefit of the provisional application lost? Maybe not.

The law provides a two month window after the one year deadline where the benefit of the provisional application can be restored. 35 USC 119(e), 37 CFR 1.78(b), MPEP 211.01(a)(II). But there are important limitations on the option to restore the benefit of the provisional application.

The first limitation is that the delay …

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Don’t Admit that A Human Can Manually Perform the Claimed Process to Help Avoid Abstractness

US7757298_Fig1Intellectual Ventures I sued Erie Indemnity Company for infringing U.S. Patent No. 7,757,298 (the ‘298 patent). The ‘298 patent is directed to a method and apparatus for identifying and characterizing errant electronic files. It seeks to improve the prior art by providing a method and apparatus to detect “undesirable files” (such as copyrighted music files) “stored on computer storage devices” “according to pre-set criteria.”

Claim 1 provided three section criteria, “any one of which may be used to identify errant files, with selection based on: (1) size, i.e., ‘whether an aggregate size of plural identically-sized files exceeds a predetermined threshold,’ … (2) content, i.e., ‘whether content . . . matches a [certain] file type,’… and (3) naming convention, i.e., ‘whether the file comprises data beyond an end of data marker.’”

The court found that the claims of the ‘298 patent were …

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