April 2008

Patent Reexamination Used to Stall Patent Enforcement

April 25, 2008

Here’s a link to an interesting article in the May 5, 2008 issue of Forbes, that highlights the use of anonymous, ex parte requests for reexamination of issued patents to the Patent Office. The result of a reexamination is to stall enforcement of the patent. The article highlights the plight of Anthony Brown, a lawyer who purchased the patent for compression of an electronic file for transmission over a communications line (think JPEG, this ubiquitous). Before Brown purchased this patent it had laid dormant (the fate of the vast majority of issued patents). After Brown purchased the patent and began a licensing/enforcement program – “A petition filed in 2000 by parties unknown asked the U.S. Patent & Trademark Office to reexamine whether the processes the patent described were novel enough to deserve a patent. The feds agreed to the review, a common practice if the questions raised seem substantial. The catch is that during the review the holder of the patent can’t demand licensing fees, and the patent’s life doesn’t get extended accordingly. The reexam of the JPEG patent lasted seven years” After the patent survived that challenge, Brown hit his next roadblock – “But last year saw yet another anonymous challenge. This one was filed by Chicago patent attorney Vernon Francissen, who declines to identify his client. Francissen suggested the JPEG patent’s current version had slipped through an overburdened…

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EDTex Giveth, CAFC Taketh Away

April 23, 2008

One of the largest jury verdicts in the notoriously plaintiff- friendly Federal District Court for the Eastern District of Texas was the June 2006 $79 million jury award, enhanced for wilfulnes by $25 million by U.S. District Judge Ron Clark in the case of Finisar Corporation v. DirectTV. (Note: Texas judges often have nicknames as their legal first names. It’s a Texas thing. If he were Massachusetts bred, he’d be Ronald Harrison Clark, III). In addition to this award, the judge refused Finisar a permanent injunction (applying the USSC eBay decision), but ordered DirectTV to pay a compulsory license of $1.60/set-top box until expiration of Finsar’s patent. This judgment is no more. On April 18th the Court of Appeals for the Federal Circuit held that Judge Clark had misconstrued the term “downloading into a memory storage device.” You would think that such a simple term would be easy to construe, but apparently that wasn’t the case in Beaumont, Texas. Result: infringement verdict of over $104 million (not including interest) vacated, case remanded for a new trial. In addition to correcting the district court on the construction of the “memory storage” term, the Federal Circuit held that one of Finisar’s patent claims had been anticipated by prior art, and therefore was invalid. Moreover, the Federal Circuit ordered the district court to reconsider its holding of non-obviousness with respect to the surviving…

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Behind The Scenes at Bear Stearns

April 23, 2008

I recently wrote about the Bear Stearns v. Sharon case. (See here and here). Here is a link to a Business Week article, “Bailing out of Bear,” that tells the gruesome story behind the Bear Stearns financial debacle and Bears’ suit against Doug Sharon, the star broker at Bear Stearns who left for Morgan Stanley.

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FTC Decision That Rambus Monopolized Reversed by D.C. Circuit Court

April 22, 2008

We have followed the Rambus saga for some time. My last post linked to the Federal Trade Commission’s decision holding that Rambus had engaged in illegal monopolization and linking to an extended discussion by my partner, Andy Updegrove. Today, the Federal Circuit Court of Appeals reversed the FTC, holding that Rambus was not guilty of monopolization. Decision here. More to follow, as we have a chance to review this decision.

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Treble Damages Now Mandatory Under Massachusetts Wage Statute

April 18, 2008

Until the recent passage of a new state law (effective July 13, 2008), the Massachusetts Wage Statute contained a provision that provided for trebled damages at the discretion of the judge. An “innocent” violator had a chance of avoiding treble damages; a repeat offender was likely to get whacked. No more. As of July 13th, treble damages are mandatory. My partner Joe Laferrera has written a Client Advisory explaining in more detail this change in the law. Click here to read the Advisory.

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Evan Schaeffer's "17 Types of Lawyers"

April 16, 2008

Humor is just another defense against the universe. Mel Brooks Legal humor is almost always an oxymoron, but Evan Schaeffer, author of The Legal Underground blog, had me in silent hysterics (I was in the office) with his list of 17 types of lawyers. The descriptions are so cleverly written, and so on point, that … well, enough, here they are, with links : Types of Lawyers #1: The Big Firm Summer Associate Types of Lawyers #2: The Partner Who Talks Too Fast Types of Lawyers #3: The Lawyer Who Advertises on TV Types of Lawyers #4: The Lawyer Who Carries Another Lawyer’s Briefcase Types of Lawyers #5: The Lawyer Who Brings Her Breast Pump to the Office Types of Lawyers #6: The Mafia Lawyer Types of Lawyers #7: The Modest Lawyer Types of Lawyers #8: The Partner Who Golfs Types of Lawyers #9: The Lawyer on the Run Types of Lawyers #10: The Lawyer Who’s in the Wrong Profession Types of Lawyers #11: The Lawyer from the Planet Og Types of Lawyers #12: The Lawyer Who’s Writing a Legal Thriller Types of Lawyers #13: The Stereotypical Lawyer Types of Lawyers #14: The Lawyer Who’s on The Apprentice Types of Lawyers #15: The Associate Who Knew Where the Bodies Were Buried Types of Lawyers #16: The Lawyer with the Shiny New Gadget Types of Lawyers #17: The Associate Who Finally…

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Judge Gertner Foils RIAA, At Least For Now

April 7, 2008

Nancy Gertner is no shrinking violet. Her reputation as a lawyer and then as a judge who is willing to make hard decisions and challenge the status quo is well known. Last week she did just this when she quashed the RIAA‘s subpoena against Boston University, which was targeted at learning the identities of some Boston University students who had posted copyrighted songs. Her rationale was that there was no clear evidence the students had violated the Copyright Act, and therefore their identies should be protected. Specifically, she found that “publication” (that is, posting the tunes online) was not the same as “distribution” (that is, the tune was downloaded). No evidence of download, no violation. However, whether this ruling will become the prevalent rule under copyright law remains to be seen. The 52 page decision in Sire Records, Inv. v. Does 1-21 is available here. The estimable and erudite copyright scholar William Paltry discusses this case, and two others that raise similar issues, in more detail on his blog here.

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Decision in Bear Stearns v. Sharon – Motion Denied

April 7, 2008

Here is Judge Gorton’s decision in Bear Stearns v. Sharon, which I discussed last week. Bear Stearns’ motion for a preliminary injunction was denied. Thanks to Michael Boudett (who represented Sharon) at Foley Hoag for providing me with this decision.

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