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Archive for August, 2011

Proof that First to File (FTF) will HURT not HELP small inventors – it happened in Canada

31 Aug

Facts not BS. An empirical study shows a drop in Canada in the percentage of patents issued to small inventor filings following switch in Canada from first to invent (FTI) to first to file (FTF). Proponents of FTF spout all sorts of baseless predictions about how switching from FTI to FTF will “help” spur small business inventions, but the facts show the opposite. http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1919730.  Will the Administration and Congress downgrade the US Patent System and sacrifice small businesses in order to have something to falsely tout in their political spin machines as a job creation measure?  Probably yes.  Such is the nature of the best Congress that corporate money can buy and a President desperate to improve his ratings in the polls.  But never can either honestly say they were not warned or made aware of the facts.

 
 

.xxx domain sure to create new trademark disputes

30 Aug

With the expansion of the generic top level domains gTLD comes a new problem for trademark owners. No longer will having .com, .net, and .org be enough. yourbrand.xxx may give IP counsel a new item of concern.

The .xxx domain is being administered by ICM Registry LLC.  Their website announces that there will be a Sunrise A and Sunrise B period for established brands to claim domains. Sunrise A will be for established porn brands to claim .xxx domains.  Sunrise B, which will run simultaneously with Sunrise A, will be for non-porn brands to block registration of their brands as .xxx domains.  ICM Registry will charge a one time fee for Sunrise B applicants to block a domain.  Since this domain caters to the porn industry, all cases of conflicting Sunrise A and Sunrise B will be resolved in favor of registrability and the fees will not be refunded, which incidentally maximizes the money ICM makes.  As ICM states it, “If both Sunrise A and Sunrise B applicants want the same domain name, priority will be given to the qualified Sunrise A applicant to register the domain name. The Sunrise A applicant will have received notice of Sunrise B applicant’s interest in the domain name and cannot claim lack of notice in any subsequent dispute between Sunrise A and Sunrise B applicants.” Of course, in the meantime, ICM will get fees from both sides in order to maximize the money ICM makes.  Likewise, if there are multiple Sunrise B applicants (say WILSON sporting goods and WILSON meats). ICM will keep the fee from both even though only one blockage will occur. If there are competing Sunrise A applicants, ICM will auction off the domain name in order to maximize the money ICM makes.

So, let’s take a fictional example where  there are 10 applicants for 6 APPLE variants, as follows apple.xxx (2 A applicants-Applesex LLC and Pornapple LLC, 2 B applicants-Apple Inc & Business Software Alliance), xxxapple.xxx(1-Pornapple LLC), GayApple.xxx (1-GayApple LLC), iphone.xxx(1 A – iPadSex LLC), ipad.xxx (1A – iPadSex LLC), SexAppStore.xxx (2 A – Applesex LLC & SexApp LLC).  This will produce 10 fees for ICM plus ICM will auction off apple.xxx and auction off SexAppStore.xxx and make lots more money for that.  Apple Inc and BSA will both pay Sunrise B fees but get nothing except a notification to the other applicants for apple.xxx.  There will be 6 new registrations: apple.xxx (to highest bidder), SexAppStore.xxx (to highest bidder), xxxapple.xxx, GayApple.xxx, iphone.xxx, and ipad.xxx.  So, let’s say Applesex LLC wins auction for apple.xxx and SexApp LLC wins SexAppStore.xxx. Apple Inc would have to sue 5 separate parties to get these taken down, with uncertain prospects for success.

I think ICM is taking a legal risk in not blocking domains that it knows or should know are infringements in case of conflicting Sunrise A & B applications.

Winners in this: ICM and trademark litigation lawyers.

Lesson to be Learned: Protecting a trademark requires constant vigilance and significant expense.

 
 

Lamebook vs Facebook – settled favorably to parody site Lamebook

29 Aug

http://www.law.com/jsp/ca/PubArticleCA.jsp?id=1202512471193&slreturn=1&hbxlogin=1

Facebook Settles Trademark Fight with Lamebook

Amy Miller

The Recorder

August 25, 2011

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SAN FRANCISCO — The trademark battle between Facebook Inc. and the parody site Lamebook.com is over.

The companies have reached an agreement that lets Lamebook continue to operate under its current name. But Lamebook, which mocks the funny and “lame” things people post on Facebook, will add a disclaimer to its website and will not seek trademark protection for its name.

“The parties are now satisfied that users are not likely to be confused,” the companies said in a joint statement Thursday.

After receiving cease-and-desist letters from Facebook attorneys in March 2010, Lamebook sued the social networking site in November in federal court in Austin, Texas, asking the court to declare that the term “Lamebook” does not infringe Facebook’s trademarks.

Lamebook attorneys argued that the site isn’t a social network; it’s an obvious parody that is protected by the First Amendment.

Four days later, lawyers for Cooley in San Francisco and Palo Alto Facebook sued Lamebook for trademark infringement in federal court in San Jose. That legal team included Anne Peck, Gavin Charlston, Jeffrey Norberg, Lori Mason and Michael Rhodes.

Facebook unsuccessfully tried to have Lamebook’s suit in the Western District of Texas transferred to the Northern District. So Facebook dismissed the California suit in June without prejudice, and then filed counterclaims against Lamebook in the Texas suit. That suit was dismissed Thursday without prejudice.

Lamebook was represented by attorneys from Durie Tangri in San Francisco, including Mark Lemley and Joseph Gratz, as well as attorneys from Bracewell & Giuliani in Austin.

 
 

US issues Patent No. 8,000,000

17 Aug

http://www.uspto.gov/news/pr/2011/11-47.jsp
WASHINGTON – The Department of Commerce’s United States Patent and Trademark Office (USPTO) today issued its 8 millionth patent to Second Sight Medical Products, Inc., for a visual prosthesis apparatus that enhances visual perception for people who have gone blind due to outer retinal degeneration. The invention uses electrical stimulation of the retina to produce the visual perception of patterns of light. The product – the Argus® II – is currently in U.S. clinical trials and has received marketing approval in Europe.

 
 

Google buys Motorola Mobility for $12.5B – patents key to deal

16 Aug

Google has struck back in the smartphone patent war with a $12.5B purchase of MotoMob and its patent portfolio of 17,000+ patents and 7500+patent applications, trumping Apple/Microsoft/Intel’s $4.5B purchase of 6000+ Nortel patents, and showing its intention to defend Android.  Also, this gives Google a hardware manufacturing platform for Android to compete toe to toe with Apple.  Big loser in this – Microsoft and RIM, who will now likely fade as the Android push gets even stronger.  This is a bet the company move by Google and shows its dedication to and confidence in Android.

 
Question: Will Google use this to defend HTC and Samsung or to compete with them? Google is saying it will run MotoMob as a separate business and use the patents to defend all Android makers.

 
 

Would FTF have caused America to lose the industrial revolution?

09 Aug

In a recent blog discussion on this blog and on another blog (IPWatchdog.com) there was heated discussion as to whether the United States ever has had a first to file system. Gene Quinn contended it had. I contended it had not. In researching process patents to respond to a ludicrous statement by Mark Cuban on his MaverickBlog.com site that there has never been any benefit from process patents, I came across the following article dated 1857 from Scientific American (did you know that famous authoritative magazine dated that far back?) on the great patent dispute over the basic process patent on the blast furnace, the key patent in steel making, between Englishman Henry Bessemer (for whom the process is often named “the Bessemer process”) and American William Kelly. Bessemer was first to file and Kelly was second to file, but in a priority dispute Bessemer’s patent was declared invalid leaving Kelly with the only valid patent.

So here is what I wrote on Gene Quinn’s blog:

“I came across a very telling real case of huge commercial importance that clearly shows a taking of a patent from a first inventor and giving it to a second, just as I posited, so I felt it valuable to share it to close this old, but still relevant, discussion out.

After just today reading the 1857 Scientific American article on the Kelly v Bessemer patent dispute, where Kelly (as second to file) was awarded a patent after Bessemer’s (as first to file) was, 8 years after issuance, declared invalid, it becomes even clearer that the patent law has always been first to invent, as Scientific American stated back in 1857 in this article. Being a metallurgical engineer, I know this was no small matter, as the Bessemer process (or, as the US Comm. of Patents determined, the Kelly Process) often called the “blast furnace”, is one of the world’s greatest inventions, a process that revolutionized steel making and led to the ability to make the steel of the industrial revolution and the steel of sufficient strength for the weapons of WW1 and WW2 and was the dominant steel-making process for a century until replaced by the basic oxygen furnace and the electric arc furnace about 50 years ago.
http://www.todayinsci.com/B/Bessemer_Henry/BessemerSciAmArticle.htm

I see that not only did the level of debate not rise after my departure six weeks ago, it ended.

I submit this reference as a post note to prove that the US Patent System has always been first to invent, as the Englishman, Henry Bessemer learned in a most famous and bitter priority battle where the PTO took away his patent and granted it to the second to file, American William Kelly. Under FTF, the British Bessemer and not the American Kelly would have had the key steel making patent.

As the Scientific American stated in 1857, “. . . our laws recognize the legal and moral rights of the first inventor, and do not hold out the slightest encouragement to outside parties to steal and patent inventions not their own.” I dare say, that cannot be said once first to file becomes law, as there will be every incentive to steal and patent inventions.

FTF will no doubt pass, Gene, thanks to you and other misguided souls like you and thanks to the money and power of Big Software sycophants and lobbyists and the need of Congress and the President to make believe they are creating jobs. But with FTF will also pass into history the American leadership once provided by the individual American inventor and Yankee ingenuity. My conscience will be clear, but for you, look back in a decade and see what you helped do to the American inventor and American technical leadership. Soon the PR “spin” will begin on how patent reform is creating American jobs and spurring Americans to invent. Too bad it is only spin, as mostly it will just be churning of half-baked ideas in huge numbers like the Japanese experienced with their FTF system and their delayed examination.”

So, to those who support FTF, realize that had it been law 160 years ago, England might well have dominated the industrial revolution and not America by controlling the basic patent on the “blast furnace.”  Congress, 160 years after that important lesson, has learned little and now will turn over the next century of technical and commercial leadership to who — the Chinese — all in the hope for some fictitious claim of “creating jobs” to falsely claim in the next political election, trading the loss of the engine of America’s technical leadership for the short term political gain of illusory political soundbites and PR spin. Thank goodness the founders and every Congress for the last 221 years were smarter than that and did not, like the lowest rated Congress in history, trade away our first to invent patent system that Lincoln famously said “adds the fuel of incentive to the fire of genius”.

 
 

Apple blocks Samsung Android Tab in Australia with patent injunction.

07 Aug

ARS reports that Apple, which is part of the conspiracy to degrade the US Patent System, has bet heavily on winning a patent infringement suit in Australia against Samsung blocking the Galaxy Tab 10.1.  Apple got a patent injunction against the Galaxy Tab 10.1 being sold in Australia, but had to agree to pay damages to Samsung if Apple loses the suit, which claims infringement of 10 Apple patents.  This comes on the heels of Apple leading the group that spent $4.5 billion to buy 6000+ Nortel patents.  For one that chose trade secrecy over patents for software, Apple has done a major about face on patents.

 
 

PTO Ombudsman Program Goes Permanent

06 Aug

In his blog, Director Kappos has announced that the pilot ombudsman program has been very positively received by users so it is made permanent. It is a resource both applicants and their attorneys should take into account as a possible source in procedural questions. It is much better to get a quick response (normally they are taking under 2 days) than to submit something wrong that could have been prevented by asking an ombudsman.

 
 

Patent Extorter Fined over $600K

06 Aug

The CAFC upheld the sanctions award of $631,135.18 July 29 in a unanimous panel ruling in Eon-Net v. Flagstar Bancorp in an opinion by Judge Lourie affirming Judge Ricardo Martinez of the District of Washington and his exceptional case finding and order for patent lawyer Jean-Marc Zimmerman and Eon-Net to pay $631,135.18 in sanctions and fees. The award was assessed as punishment for an extortion scheme using bogus patent litigation to extract nuisance value settlements from alleged infringers despite knowledge there was no infringement.

This is one where the patent enforcement entity can truly said to be a patent troll, since the finding was that they filed hundreds of cookie-cutter suits seeking to obtain $25K-75K in settlement to avoid expensive patent litigation defense, such as the $631, 135.18 Flagstar proved it paid. It is to be expected that others will seek damages from Eon-Net & Zimmerman.  Zimmerman pleaded poverty to try to avoid the judgment, but the Court did not buy it.

This shows that so-called patent trolls and their attorneys are at risk for sanctions if they over-reach in enforcing patents.