Patents

Massachusetts SJC Holds No Ethical Violation Based on Patent “Subject Matter Conflict”

December 28, 2015

If  a patent lawyer represents separate clients applying for patents involving the same subject matter, has she violated her ethical responsibility to either client? On December 23, 2015, the Massachusetts Supreme Judicial Court became one of the first state courts to address this issue. Maling v. Finnegan Henderson, Farabow, Garrett & Dunner, LLP. The central issue in this case was whether the simultaneous representation of clients competing for patents in the same technology area — a so-called “subject matter conflict” — was a conflict of interest.  The court found no conflict, stating, “we conclude that although subject matter conflicts in patent prosecutions often may present a number of potential legal, ethical, and practical problems for lawyers and their clients, they do not, standing alone, constitute an actionable conflict of interest that violates [Mass. R. Prof. C.] rule 1.7.” However, the court suggested a few ways in such “potential” problems might give rise to an actionable conflict of interest. First, it would be improper, without disclosure and consent, for a lawyer to represent two clients where the claims are identical or obvious variants of each other and a reasonable patent lawyer should reasonably foresee that an interference proceeding (or, under the American Invents Act, a derivation proceeding) was likely. Second, the patent lawyer must be careful to avoid a directly adverse conflict. Finnegan avoided such a conflict in this case when the plaintiff sought a legal opinion from Finnegan…

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The U.S. Supreme Court IP Year in Review

September 3, 2014

[As initially published in the September 1, 2014 issue of Massachusetts Lawyers Weekly] A lot has changed in the realm of intellectual property law following the record-breaking ten intellectual property cases decided by the U.S. Supreme Court in its 2013 term. Highlights of the six unanimously decided patent cases include suits in which the Court narrowed the scope of patent protection for inventions implemented on computers, made it easier to invalidate a patent for indefiniteness, and made it easier for the district courts to shift attorneys’ fees to prevailing defendants. The Court issued two copyright decisions, including an important ruling that may have implications for cloud computing. And, one of the Court’s two Lanham Act opinions established a new doctrine for standing in false advertising cases. Patent Medtronic v. Mirowski Family Ventures (Jan. 22, 2014) was the first of five decisions overruling the Federal Circuit outright. The Court held that in a declaratory judgment action for non-infringement brought by a patent licensee, the burden of proving infringement lies with the licensor/patent holder, not the licensee. Medtronic can be seen as an extension of the Court’s 2007 decision in MedImmune, Inc. v. Genentech, holding that patent licensees have standing to bring declaratory judgment actions for non-infringement or invalidity, even as they continue to make royalty payments for the product in controversy. By placing the burden of proving infringement on patent owners, the Court has made it…

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“Bingo-With-a-Computer” Patent Doesn’t Survive Alice

August 28, 2014

It would be difficult to find a more straightforward application of the Supreme Court’s recent ruling in Alice Corporation Pty. Ltd. v. CLS Bank International (June 14, 2014) than the Federal Circuit’s August 26th decision in Planet Bingo, LLC  v. VKGS LLC (Fed. Cir. August 26, 2014) (non-precedential). While practitioners and observers of patent law seemed to agree that Alice didn’t spell doom for software and business method patents, it was clear that it did mark the end for patents that do nothing more than recite a generic computerized implementation of an abstract idea. While it is true that a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” (link), the Supreme Court has held, in a series of decisions, that there is an implicit exception to the patent statute: laws of nature, natural phenomena, and abstract ideas are not patentable. In Alice the Court held that “abstract ideas” are not patentable unless they contain an “‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” While the precise line between an impermissibly abstract idea and a patentable process remained undefined in Alice (and may never be fully defined), one thing seems clear: once an invention is identified as an abstract idea, a generic computer implementation of that idea is not patentable. Planet Bingo filed its patent application in 2000, long before the decision in Alice, and…

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Supreme Court Overrules CAFC In Limelight v. Akamai

June 4, 2014

In September 2012 I wrote a post titled Why Can’t We All Get Along? CAFC Fractures Over Divided Infringement. The post discussed an August 31, 2012 Court of Appeals for the Federal Circuit (“CAFC”) en banc decision in two cases consolidated on appeal, Akamai v. Limelight and McKesson v. Epic Systems (link). As I described in that post, the 11 judges on the CAFC, were unable to agree on whether patent infringement occurs when separate entities perform the steps of a patented method. Six of the CAFC judges — a bare majority — formulated a new doctrine of “induced infringement”: a party can be liable for inducing infringement if it either (1) induces several parties to jointly carry out the steps necessary for infringement, or (2) performs some of the steps of the claimed method itself and induces a third party to perform the remaining steps claimed. In other words, the CAFC held that all the steps of a claimed method must be performed in order to find induced infringement, but all the steps need not have been performed by a single entity. The losing parties before the CAFC appealed to the U.S. Supreme Court, which accepted review of the case, and which had no trouble holding (unanimously) to the contrary. A defendant cannot be held liable for inducing infringement of a patent method claim when no single entity has directly infringed the claim, and direct infringement is not established…

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Crouch Quoting Chisum on CLS Bank

December 11, 2013

I can’t resist quoting Dennis Crouch, quoting Don Chisum, on the the Supreme Court’s pending review of the CLS Bank case: The Supreme Court often intervenes to resolve splits among the various courts of appeal. Here a split exists within a circuit that the circuit itself is unable to resolve. The circuit judges’ varying interpretations of a body of recent and not-so-recent Supreme Court precedent riddled with fuzzy language and inconsistent results caused the split. Now, the Court has the opportunity (and the obligation) to clean up a mess that is, to a major extent, of its own making.

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TomTom Unable to Preempt Suit In Texas By Seeking Declaratory Judgment in Massachusetts

September 11, 2012

As I’ve written before, getting sued for patent infringement in Texas (often the Eastern District, or “EdTX”) is generally viewed as undesirable by corporate America. Apparently seeking to avoid this unpleasantness, TomTom, Inc. filed a suit in Massachusetts, asking the court to declare that it did not infringe several patents held by Norman IP Holdings, Inc., over which Norman had already sued TomTom in EdTX. As its name suggets, and as best I can determine, Norman is a non-practicing entity that has been active in the courts of EdTX. However, TomTom’s strategy of avoiding Texas appears to have failed. Massachusetts U.S. District Court Judge Saylor has upheld a decision by Magistrate Judge Judith Dein concluding that the Massachusetts court did not have jurisdiction over Norman, and therefore could not force Norman to confront it over these issues in Massachusetts. It appears that Texas is where TomTom will have to defend itself against Norman. I will quote, not for the first or last time, the words of General Phillip Sheridan: “if I owned Texas and Hell, I’d rent out Texas and live in Hell.” Words that ring true for Texas patent defendants. TomTom, Inc. v. Norman IP Holdings, LLC (D. Mass. September 4, 2012)  

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Why Can’t We All Get Along? CAFC Fractures Over Divided Infringement

September 9, 2012

“. . . the intolerable wrestle with words and meanings . . .” East Coker, by T.S. Eliot __________ Congress enacts laws.  The courts interpret and apply them in cases. Often, there is disagreement over what the words mean, and judges debate the meaning in published decisions. Judges on the same court may agree, disagree, dissent, concur, and form shifting majorities and minorities. Occasionally, congress will take notice and attempt to clarify a law by amendment. Sometimes, this only adds to the confusion. The eleven active judges on the Court of Appeals for the Federal Circuit, the patent appeals court, exemplify this dynamic in their August 31, 2012 en banc decision in two cases consolidated on appeal, Akamai v. Limelight and McKesson v. Epic Systems (link). The decision, totaling over 100 pages, is comprised of three opinions, each with dramatically different views of a fundamental issue in patent law. The core issue the judges on the CAFC were unable to agree upon on is this: does patent infringement occur when separate entities perform the steps of a patented method? To take a simple example, assume that a patent claim involves just two steps: first, delivering a web page to a customer’s server, second, the some form of manipulation of the page by the customer (e.g., tagging or data hashing).* In fact, this is, in highly simplified form, analagous to some of…

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Apple v. Samsung Jury Verdict Form. Huh?

September 3, 2012

I’ve been meaning to post a link to the jury verdict form in the Apple v. Samsung patent case. Here it is, linked at the bottom of the post. And no, that’s not some weird crossword puzzle on the left, it’s a tiny section of the verdict form. If this isn’t the most complex jury verdict form in American legal history, I can’t imagine what is. The Verge did a nice job of dissecting the jury verdict form pre-verdict, and concluded that a decision on the approximately 700 decision points would “not go quickly.” Turns out The Verge was mistaken; the jury was able to wrap things up in just over two days, awarding over $1 billion to Apple. They did this with the help of a jury foreman who had applied for and obtained a patent – the only juror who had even the slightest familiarity with patents before this trial. Do you think his (presumably) pro-patent views influenced the outcome in this case? Did Apple get really, really lucky? Could make a person wonder …. Jury verdict in Apple v. Samsung (on Groklaw)

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How to Follow the Apple v. Samsung Patent Trial

August 2, 2012

The Internet has made following trials in real time feasible, more or less.  For the press to cover controversial trials is nothing new, but in the past these were mostly criminal cases.  Today, thanks to sites like groklaw.net, people can follow technology industry cases in detail – descriptions of what is going on in the courtroom, documents and (in the case of groklaw), unsparing commentary. Groklaw is following Apple v. Samsung from a distance (at least compared to its recent coverage of Oracle v. Google), and the traditional press appears to be covering the case heavily, but only at a general level of detail.  However, someone has put together a twitter feed consolidating the tweets of several industry reporters.  It’s almost like a shadow jury, but a jury of people more knowledgeable about the companies involved than the average juror.  And, in some cases, openly opinionated. The lawyers involved in this case, and certainly in any case covered in detail by groklaw, must dread the possibility that jurors are reading these materials. The twitter feed is here.

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Apple’s “Bounce Back” Patent

August 2, 2012

It seems that Google’s “bounce back” patent is going to play a big role in the trial between Apple and Samsung, underway in federal district court in Palo Alto.  References to it in Apple’s opening statement highlighted this patent. I wasn’t sure what the “bounce back” was, but I think I’ve tracked it down. How do you know that you’ve reached the bottom or top of a page on an iPhone or iPad?  The screen “bounces back” in the opposite direction.  Or, as described in patentese in U.S. patent  7,469,381, issued to Apple in December 2008: In accordance with some embodiments, a computer-implemented method for use in conjunction with a device with a touch screen display is disclosed. In the method, a movement of an object on or near the touch screen display is detected. In response to detecting the movement, an electronic document displayed on the touch screen display is translated in a first direction. If an edge of the electronic document is reached while translating the electronic document in the first direction while the object is still detected on or near the touch screen display, an area beyond the edge of the document is displayed. After the object is no longer detected on or near the touch screen display, the document is translated in a second direction until the area beyond the edge of the document is no…

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Judge Posner Puts the Kabosh on Apple/Google Smartphone Patent Suit

July 6, 2012

“It’s not clear that we really need patents in most industries . . .. You just have this proliferation of patents. “It’s a problem.” Judge Richard Posner, Silicon Valley MercuryNews.com, July 5, 2012   Do you recall the final scene in Monty Python and the Holy Grail?  After 90 minutes of farcical medieval/King Arthur-inspired humor the film concludes with a big attack scene (cliché visuals of swords, spears and knights in armor, opposing armies lined up in a field, battle music ….).  King Arthur makes a Crusades-inspired speech and yells charge.  Just as the armies are about to engage a police car pulls up with siren blaring.  20th century British bobbies jump out and arrest some of the knights, who put up no resistance.  Others are simply told to go home.  The war is cancelled.  (video). This is not very different from what just happened in the patent war between Apple and Motorola Mobility (owned by Google) over smartphone patents.  In that case, initially filed in federal court in Wisconsin in late 2010, a year before Steve Jobs’ death, each side accused the other of multiple patent infringements. To put things in context, this case was part of the war against Google’s Android OS that Jobs initiated before his death.  According to the Isaacson biography of Steve Jobs, Jobs stated that Android’s use of Apple’s ideas equated to “grand theft,” and that…

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Judge Young Issues Mea Culpa on Expert Witness Testimony in Patent Case, Orders a Do-Over

January 27, 2010

Massachusetts U.S. District Court William Young has been teaching evidence law for as long as I can recall, even as far back as his pre-federal court days, when he was on the Superior Court bench (Judge Young was appointed to the federal bench in 1985, and had been a Massachusetts Superior Court Judge from 1978 to 1985). So it comes as a surprise to many when Judge Young admits he made an evidence-related error during a recent patent trial, and that as a result he will order a new trial. The case is NewRiver, Inc. v. Newkirk Products, Inc.  In brief, NewRiver’s patent claimed as an invention a computer-assisted method for manipulating securities information in the SEC EDGAR database to extract only certain information, such as mutual fund prospecti.  After trial the jury held some claims to have been infringed, and others to be invalid as obvious. The issue that has attracted attention is contained in Judge Young’s decision addressing the usual tsunami of post-trial motions for judgment notwithstanding the verdict. The problem arose in connection with NewKirk’s challenge to the validity of NewRiver’s patent. On this issue Newkirk’s expert testified as follows: Q:  Dr. Szymanski, please read claim 9. This is the independent claim. It states: A system for providing access to mutual fund compliance information comprising: An obtainment subsystem for acquiring securities information from one or more database sources and…

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