Archive for the ‘Patents/IP’ Category

Dorsey-Flehr: A Merger That Didn’t Take

October 31, 2006

With merger mania gripping the legal community this week, it’s worth remembering that sometimes these ventures don’t work out so well.

Take the news this week that Dorsey & Whitney may shutter its San Francisco office. That office is itself the result of a 2002 merger between what was then 750-lawyer Dorsey & Whitney and 27-lawyer IP boutique Flehr Hohbach Test Albritton & Herbert of San Francisco.



EFF & Jurassic Snark v. Barney’s Lawyers

August 28, 2006

The Electronic Frontier Foundation just couldn’t resist.

In a lawsuit filed in federal court in New York last week over Barney the dinosaur, the San Francisco nonprofit threw a pointed punch at the company that has claimed copyright ownership of the children’s TV character. Then, the EFF took a swipe at Barney’s lawyers.


Congress Gets Patent-Training Bill for Judges

May 19, 2006

Late Thursday, Republican Congressman Darrell Issa finally introduced his long-rumored legislation that would create specialized patent courts around the country. H.R. 5418, co-authored by Democratic Congressman Adam Schiff, proposes to establish “pilot programs” in at least five U.S. district courts where judges handle the highest volume of patent cases.

The bill is designed to widen the pool of experienced patent judges by proposing to fund “educational and professional” development programs for designated judges. The bill would provide $5 million annually over the next 10 years to train judges in the intricacies of patent prosecution and patent law. It will also pay salaries of new law clerks with expertise in patent law or with technical background.

Citing the Federal Circuit U.S. Court of Appeals' 40 percent reversal rate of all patent cases decided by district courts, Issa said in a statement that the bill is designed to “help courts reduce errors that lead to appeals.”

Issa, who has patented several inventions himself, said he’s been involved in a number of patent cases during his time as CEO of a car alarm company and he was not impressed by the quality of adjudication at all.

“I was often struck by the fact that many district court judges either knew little of the applicable law, or were bored by the subject matter involved,” Issa said. “Patent litigation often costs litigants over $10 million and can inject crippling uncertainty into a business. This legislation will help courts and help businesses and individual inventors who patent ideas.”

George Mason University School of Law professor Kimberly Moore, who may soon be appointed to the CAFC bench, was the first to propose designating certain judges in each judicial district to handle patent cases. In her testimony before Congress last year, Moore recommended that the judge appointed must be technically educated or trained and/or have a patent background. She told lawmakers that the experience and expertise gained by the judges will “increase predictability, reduce litigation, improve patent case adjudication and enhance the integrity of the legal process.”

Xenia P. Kobylarz


Now You Can Be a A Patent Examiner!

May 9, 2006

The U.S. Patent and Trademark Office is trying something innovative to tackle the growing problem of poor quality patents being issued. On May 12, the office will unveil a pilot project that would let the public review pending patent applications online and submit relevant prior art.

The so-called patent peer review project seeks to ensure that patent examiners will have improved access to all available prior art during the patent examination process. It’ll also help the massively overworked examiners by putting applications in front of a lot more eyes.

The project grew out of a paper published by New York Law School’s Beth Simone Noveck. IBM and other tech companies are supporting the initiative by sponsoring community workshops to teach the public about the new system and to gather input. The pilot will only cover patents in the tech industry, and applications will only be reviewed after receiving the patent applicant’s permission.

Commissioner for Patents John Doll will kick off the pilot on Friday during a public briefing from 9:00 a.m. to noon at the agency’s Madison Building in Alexandria, Va. The briefing will provide more information on how the system works and a tutorial on what constitutes prior art. The agency will take public comments and will launch the full magilla in early 2007.

Veteran patent attorney David Ritchie, a partner at Thelen Reid & Priest, calls it an interesting idea but says he suspects that the vast majority of patent applications will still go unnoted by the public.

“With most applications, only the applicants will care,” he wrote in an e-mail. “But for some of the more high-profile patent applications (e.g. the Amazon One-Click Patent) everyone will have an opinion and many will attempt to provide that opinion directly to the examiner.”

“I doubt that even ten applications per year will rise to that level of common public interest, so it shouldn’t have a big effect in the larger picture, but it might keep some mistakes from happening,” he added.

Xenia Kobylarz

Another Patent Suit for RIM

May 2, 2006

Maybe it’s time to switch to a new wireless e-mail provider. Blackberry maker Research in Motion has been hauled into court once again for patent infringement. This time the accuser is no mere patent-holding company. Redwood Shores’ Visto Inc. makes wireless e-mail software for handheld devices such as PDAs, smart phones and cellular phones. The 10-year-old venture-backed company sued RIM on Friday, the same day it won a $3.6 million jury verdict in Marshall, Texas against rival Seven Networks of Redwood City for infringing three Visto patents.

“Based on Visto’s sweeping victory in court against Seven Networks on Friday, RIM must understand there is no place in the mobile e-mail space for this sort of behavior,” Visto CEO Brian Bogosian said in a statement. “Under the law, which protects consumers from products that contain infringing technology, RIM should not be able to sell the Blackberry system.”

Visto is asserting four of its patents against RIM. The company is seeking an injunction and unspecified monetary damages. It’s been reported that NTP Inc., the patent-holding company that won a $612.5 million settlement from RIM, has invested in the company.

Visto spokeswoman Suzanne Panoplos, however, said NTP owns only a “tiny percentage” of the company. The company has also recently sued Microsoft Corp. and Good Technology over the some of the same wireless e-mail patents.

The company has filed all of its patent suits in the Eastern District Court of Texas, which has earned a reputation for being patentee-friendly.

Prior to its foray into patent enforcement, the company has happily sold its products to some of the biggest names in the wireless phone industry, such as AT&T Wireless, Nextel Communications, and Vodafone Global. Panoplos said the company has 25 issued patents and 57 pending applications, but has not licensed its technology in the past.

Manatt, Phelps & Phillips’ litigation partners Ronald S. Katz and Robert D. Becker are representing Visto in the case.

Xenia P. Kobylarz

Patent Litigators Punditize for News Network

April 3, 2006

Is the world ready for patent litigators on live TV? Well, apparently, yes. Scott Baker, a partner at Reed Smith, and Edward Reines, a partner at Weil, Gotshal & Manges, have both recently appeared on CNBC to talk about patent cases. Yes, patent cases.

With the U.S. Supreme Court hearing five patent cases this term and the BlackBerry patent dispute hogging headlines day after day, patent attorneys have achieved celebrity status.

Baker appeared as a guest commentator on CNBC’s “On the Money” to talk about Research in Motion’s $612.5 million patent settlement with NTP Inc., and plagiarism allegations against “Da Vinci Code” author Dan Brown. Reines appeared twice on CNBC’s “Squawkbox,” an early morning financial talk show, to discuss important patent cases before the U.S. Supreme Court. Both attorneys are veteran patent litigators used to performing before a jury, but television is not quite the same, they said.

“I was a raw rookie and definitely nervous until my spot actually started — then it was fun,” said Baker. “I had some help in preparation from our internal PR people and from the CNBC producer for ‘On the Money’ as to the general topics. But no one told me the specific questions and I didn't know the point of view of the other commentator, so the show itself was pretty free-wheeling.”

Reines, who had to be ready by 3 a.m. to appear on the 6 a.m. show, had a similar experience.

“It was unbelievable, because there was a lot of potential for things to go wrong and I was a bit concerned, but it went really well,” Reines said. “My wife was surprised at how well I did, and my mom thought I looked great. I also got calls from long lost friends who saw me on TV.”

Baker said his wife was also surprised at how well he performed on camera. But the funniest line he heard came from one of his firm’s internal PR folks. “He told me I was so box office,” Baker said. “"I'm not sure if the world is ready for patent litigators on live TV, but I'm moving to Hollywood.”

— Xenia P. Kobylarz