by Mike Oliver | Oct 28, 2013 | Intellectual Property, Patents, Uncategorized
Earlier this year, the United States Patent Office (USPTO) implemented a “Micro Entity” applicant status pursuant to the 2011 America Invents Act (AIA). This rule allows qualifying applicants to receive a 75% fee reduction of certain fees—including fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and issued patents. See the USPTO Fee Schedule for a complete listing of fees.
An applicant may qualify for “Micro Entity Status” based on: (1) experience and gross income; or (2) status as an Institution of Higher Education.
(1) Micro Entity Qualification Based on Experience and Gross Income:
An applicant must certify to the following four criteria:
- Small Entity Status: The applicant qualifies as a small entity under 37 C.F.R 1.27 (generally, an entity that has less than 500 employees, see 13 CFR 121.802); and
- No More than Four Previous Applications: The applicant or any joint inventor has not filed more than four previously filed US non-provisional patent applications (exceptions: applications filed in another country; international applications for which the National Stage fee 35 U.S.C. 41(a) was not paid – PCT applications which did not go past the International Stage; applications from a prior employment or assigned to the prior employer); and
- Gross Income Limitation: The applicant or any listed inventor did not have a gross income for the previous year that was greater than $184,116. The “Maximum Qualifying Gross Income” will change annually based upon median US household income. Check the current USPTO Qualifying Gross Income eligibility fee; and
- Grant of Rights (if any) must be to another Micro Entity: The applicant or any listed inventor has not promised, assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) to a non-micro entity.
(2) Micro Entity Qualification for Institution of Higher Education Status:
An applicant must certify to one of the following criteria:
- Employee of Institution: The applicant is an employee of an Institution of Higher Education from which the applicant obtains the majority of the applicant’s income—(Institution of Higher Education as defined in Section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)) (not the same as a “not for profit” or school); or
- Grant of Rights to Institution: The applicant has assigned, granted, or conveyed a license or other ownership interest (or is obligated to do so) directly to the Institution of Higher Education itself (not a research institute, foundation or technology transfer office). ** Under the current USPTO rules, an assignee can be listed as the named application, however, in order to qualify for reduced micro entity fees, an Institution of Higher Education (with current or promised ownership interest) should list the inventors as the named as applicants until discrepancies in the law are resolved.
Moving forward, applicants can secure (or lose) reduced fees at anytime throughout the life of a filed application or issued patent. Keep in mind that each time fees are paid the applicant must certify that it has “Micro Entity” status. Therefore, it’s best to conduct to review of these requirements prior to each fee filing.
For more information on this topic, please contact Pamela K. Riewerts, Esq. (U.S. Registered Patent Attorney) at pamela@olivergrimsley.com
by Mike Oliver | Aug 22, 2013 | Intellectual Property, Patents
Oliver & Grimsley, LLC recently revived an abandoned patent application for a client. We come across this issue from time to time, and wanted to discuss this topic, as many patent holders or applicants may not be aware that a technically abandoned application or patent can often be revived, long after the abandonment occurs.
This issue also affects freedom to operate opinions, as technically abandoned patents that might read on a particular device, system or process could be revived and come into play – and hence, patent searches for these opinions often must take into consideration abandoned patents.
Failure to take certain actions required by the USPTO can result in the abandonment of a U.S. patent application or issued patent. Some of these required actions include, among other things: (1) replying to an office action within six months of issuance; (2) paying an issue fee within three months of the issuance of a Notice of Allowance; and (3) timely paying a maintenance fee for an issued patent.
A question arises after a technical abandonment whether the application or issued patent can be revived? Section 711.02 of the Manual of Patent Examining Procedures (MPEP) outlines this issue.
Fortunately, the USPTO provides for two types of petitions to revive a technically abandoned U.S. patent application or issued patent depending on the circumstances: (1) a petition to revive for “unavoidable” abandonment; and (2) a petition to revive for “unintentional” abandonment.
(1) Petition to Revive for “Unintentional” Abandonment
This petition is usually the more commonly selected petition and although it is the more expensive, usually costing about $1900, applicants and patent holders generally select this option because it is the least burdensome petition to complete and file and usually ends with successful results. The petition is an executable form and the USPTO rarely requires any factual showing of delay. Instead, in the vast majority of petitions under 37 CFR 1.137(b), the USPTO relies upon the applicant’s duty of candor and good faith and accepts the statement that “the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR 1.137(b) was unintentional” without requiring further information. Note, a petition to revive for unintentional abandonment is only available within a two-year time period from the time the application or patent went abandoned.
(2) Petition to Revive for “Unavoidable” Abandonment
This type of petition is less likely to be granted than a petition for unintentional abandonment. While these petitions are less expensive, generally running about $640 (three times less expensive than a petition to revive for unintentional abandonment), these petitions are nearly impossible to prove.
A petition to revive for unavoidable abandonment requires a showing that the abandonment could not have been avoided. This is difficult to prove because the applicant must supply foundational evidence and provide the details of the events as to why the application was unavoidably abandoned.
A showing of unavoidable delay requires: (1) evidence concerning the procedures in place that should have avoided the error resulting in the delay; (2) evidence concerning the training and experience of the persons responsible for the error; and (3) copies of any applicable docketing records to show that the error was in fact the cause of the delay.
The showing required to establish that abandonment was “unavoidable” is so stringent that many times it is not worth the time and effort (or attorney’s fees) required to file the petition.
With either petition, it is important to seek a revival of the application or patent as soon as possible. Excessive delay between discovery of the abandonment and the filing of a petition may not qualify as being “unintentional” or “unavoidable” for the purposes of filing a petition to revive the application or patent. In addition, both petitions require that the applicant submit the response that was originally due at the time of abandonment (e.g., the office action response or issue fee payment). If all goes well, the Petitions Office with revive the application or patent and will leave the application or issued patent in the position it was in at the time of abandonment (less the time of delay) for any issued patent or application that moves forward to issue.
An applicant that has had the unfortunate mishap of having his or her application or patent go abandoned may be able to revive the application or patent by taking timely action and filing a petition with the USPTO. While the petition for unintentional delay is more costly to file, it is generally the least expensive and most successful procedure in reviving an application or patent in the long run.
For more information on this topic, please contact Pamela K. Riewerts, Esq. at pamela@olivergrimsley.com
by Mike Oliver | May 1, 2013 | Case law, Intellectual Property, Litigation, Patents, Uncategorized
On January 10, 2013, the United States District Court, N.D. California, San Jose Division entered a permanent injunction against a patent-infringing defendant in BROCADE COMMUNICATIONS SYSTEMS, INC. v. A10 NETWORKS, INC., Dist. Court, ND California 2013 – Google Scholar. The ruling restrained the defendant and parties in active concert with it from “making, using, selling, or offering to sell in the United States, or importing into the United States any AX series application delivery controller that includes features that infringe claim 25 from U.S. Patent No. 7,454,500, claims 13 and 24 of U.S. Patent No. 7,581,009, or claim 1 of U.S. Patent No. 7,558,195.”
While this result would not have seemed odd before May of 2006, Brocade is now one of the few cases where permanent injunctions have been issued since the decision in eBay, Inc. v. Mercexchange, LLC, 547 U.S. 388 (2006). While the Supreme Court was careful to make it clear that permanent injunctions remained a viable remedy in patent cases, the eBay case changed somewhat well established case law that a prevailing patent infringement plaintiff was virtually always entitled to a permanent injunction.
A successful patent plaintiff must meet its “burden of showing that the four traditional equitable factors support entry of a permanent injunction: (1) that the plaintiff has suffered irreparable harm; (2) that “remedies available at law are inadequate to compensate for that injury”; (3) that “considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted”; and (4) that “the public interest would not be `disserved’ by a permanent injunction.”
While those factors might seem easy to meet, in practice, it is often very hard to show that legal remedies (damages) are inadequate. In Brocade, the court found that Brocade “practices its patent, that [the defendant] is its direct competitor, and that Brocade does not license its patents,” and therefore that “Brocade has shown that it suffers the type of irreparable harm that a permanent injunction is intended to remedy” (emphasis added).
For more information on patent licensing contact Mike Oliver.
Brocade is a district court case and may be subject to an appeal, but it now stands as one of the relatively few cases post eBay in which a permanent injunction was issued.
One take-away from this ruling for licensing transactions, is that a patent holder must consider whether this type of remedy will be sought before engaging in licensing, particularly come one come all or non exclusive types of licenses. That was one of the three key factors the court pointed to in finding irreparable harm and lack of an adequate remedy at law.
by Mike Oliver | May 1, 2013 | Advertising, Blog, Intellectual Property, Patents, Uncategorized
In Continental Datalabel, Inc. v. Avery Denison Corp, 09 C 5980 (U.S. D. N.D. Ill 2012) the 7th Circuit considered numerous legal issues arising from a war between two companies that manufacture sticky labels.
Despite the increasing use of electronic data storage, there still seems to be a high demand for labeling things. This apparently hotly contested market is dominated by Avery Denison. Avery makes labels that are perforated, so the user can easily peel the label from the backing. This works well, but if a user is not careful, and does not need all the labels in a row, this will leave some labels without backing on the edge, and hence unusable in a printer.
So, Avery’s skilled inventors devise a new invention, the “pop up edge” which allows the user to “fold” the back, pop up some labels, and then refold it flat. This allows it to be re-printed, and also, keeps the unused labels on the backer board. It looks like this:
Avery sells its labels among other places, Staples. It advertised this new product as follows: “Only Avery label sheets bend to expose the Pop-up Edge™” and “Only Avery offers the Pop-up Edge™ for fast peeling—just bend the sheet to expose the label edge.”
Competitor Continental Datalabel also sells peel off labels. It also had perforated rows, but its labels suffered the same issue as Avery’s perforated rows. So, Continental Datalabel also marketed that its products could be folded to reveal the label, and then re-flattened.
Avery filed a patent application on the “Pop Up Edge” technology. Before the patent issued, it allegedly threatened retailers with patent suits if they sold products of Continental Datalabel. It also sent one email in which it said “Avery has made 2 rounds of patent applications for Easy Peel. The first set of patent applications were filed several years ago and the additional patent applications were filed for the pop up edge which are even stronger than the first set of filings. Once the patents are granted Avery will aggressively defend its IP.” (emphasis added).
As one might imagine, the retailers, fearing a patent suit if they sold a possibly infringing product in the future, refused to deal with Continental Datalabel. Predictably, Continental Datalabel sued. The two main arguments presented by Continental Datalabel were (1) that the two statements above stating that “only” Avery sold fast peeling label sheets was false and misleading advertising; and (2) that Avery’s threats to Staples and other retailers that it had existing patents (at a time when it did not have any) and threatening to file future lawsuits on as of yet issued patents, violated Continental Datalabel’s rights.
Continental Datalabel lost this case (at least at this phase). With respect to the false advertising claims, the claims refer to a trademarked term “Pop Up Edge” and not to a generic “easy peeling” label sheet. In false advertising cases there are primarily two types of false advertising. Literally false statements, and literally true statements that are misleading. Proof of the former eliminates the need to show any harm or actually misled consumers – because a person who makes a literally false statement is presumed to have intended to mislead. Proof of the latter, however, requires that “the plaintiff [] prove that the statement is misleading in context by demonstrated actual consumer confusion.” (emphasis added). Here, the court held that the claims were literally true, primarily because the modifier “only” modified “Pop Up Edge” which was claimed as a trademark. So, it was literally true that “only” Avery sold products with “Pop Up Edge™” technology. Thus, Continental Datalabel was required to show actual confusion. It attempted to do this via a survey, and by testimony of an expert. The expert, however, failed to survey respondents on the meaning of “Pop Up Edge” and as a result, his expert testimony was essentially disregarded.
On the claims regarding enforcement of the patent, the plaintiff was not able to provide any non hearsay evidence that anyone from Avery ever threatened Staples with patent infringement before a patent was issued. It is clear law that threatening enforcement of non existent intellectual property rights is wrongful, and that you cannot infringe a patent application. [Side note – you can however give notice of the patent that is pending, to a person who might be infringing, and indicate that you will seek a reasonable royalty for any infringements prior to the date of issuance, under 35 U.S.C. Sec 154(d) – and that is clearly protected communication – it is not clear why Avery did not use this statute here]. So, the only evidence that remained was the email noted above. That email, however, only stated that Avery would aggressively enforce rights after they were acquired.
The Court’s discussion here is instructive:
“Indeed, any state law imposing liability for warning of potential patent litigation, without more, would be preempted by federal patent law, which “preempts state-law tort liability for a patentholder’s good faith conduct in communications asserting infringement of its patent and warning about potential litigation.” Globetrotter Software, Inc. v. Elan Computer Group, Inc., 362 F.3d 1367, 1374 (Fed. Cir. 2004); see also Virtue v. Creamery Package Mfg. Co., 227 U.S. 8, 37-38 (1913) (“Patents would be of little value if infringers of them could not be notified of the consequences of infringement …. Such action, considered by itself, cannot be said to be illegal.”). The principle applies to a patent applicant’s statement that it will enforce its patent once the patent is granted. See Scosche Indus., Inc. v. Visor Gear Inc., 121 F.3d 675, 680 (Fed. Cir. 1997) (affirming summary judgment for the defendant on a California unfair competition claim where the defendant told a non-party that “[w]e believe that the product sold by [the plaintiff] falls within the scope of the pending application and that their sale of the [product] will infringe [the defendant’s] patent when it issues,” and noting that the plaintiff “points to no authority holding that it is unfair competition for a patent applicant to advise a prospective customer of the status of his pending patent application and of the applicant’s belief that competing goods will infringe the patent if and when it issues”). There is an exception to this preemption principle: “State law claims … can survive federal preemption only to the extent that those claims are based on a showing of ‘bad faith.’” Globetrotter Software, 362 F.3d at 1374.
It is true that the precise wording of Avery’s email—“Once the patents are granted”—suggests that it expected to receive a patent when in fact it could not have been certain that the USPTO would grant its applications. But, again, Continental has cited no authority for the proposition that a company’s expression of confidence that a patent will be granted can be tortious. The case it does cite, Foboha GmbH v. Gram Technology, Inc., supra [2008 WL 4619795, at *1-2 (N.D. Ill. Oct. 15, 2008)], is not on point because it dealt with flatly false statements: the defendant first demanded that the plaintiff pay to use the defendant’s “patented technology” when the defendant had not yet been granted a patent, and then, after the USPTO reexamined the defendant’s patent and rejected claims 1 through 10, the defendant published a press release stating that “the [USPTO] has confirmed the patentability of the [patent’s] 10 original claims.” Id. at *1-2. Avery’s email, by contrast, was not false; in particular, it neither asserted that Avery already had a patent nor asserted that Avery would sue for violation of its patent application before an actual patent was granted. If anything, the email acknowledged to Staples both that Avery did not yet have patents and that it could not sue on a patent application. Avery sent the email in response to a question from a Staples employee asking whether Avery had any “opinion letters from outside counsel that clears its Easy Peel patents?” Doc. 203-2 at ¶ 116. A rule prohibiting a prospective patentee from telling interested firms what it intends to do with the patent if granted would make no sense. Cf. Atanus v. Am. Airlines, Inc., 932 N.E.2d 1044, 1050 (Ill. App. 2010) (“where a business entity provides accurate and proper reports to another entity in a reasonable business transaction, providing those reports should not constitute intentional interference”).”
This case is a good example of some of the more technical issues in both advertising statements (it was somewhat critical that Avery applied the “TM” symbol by the words “Pop Up Edge”), the danger of exclusionary assertions like “Only” which is not mere puffery – or at least no party apparently asserted it was here, and the risks of warning customers that you will sue them before you actually have the intellectual property rights to do so. It is also yet another case in a long line of cases where the survey was not done correctly.
For more information on issues arising in marketing, advertising and IP enforcement statements, contact Mike Oliver.
by Mike Oliver | May 1, 2013 | Case law, Intellectual Property, Litigation, Patents, Uncategorized
In AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. (Fed Cir. August 31, 2012) the en banc court held that a person can be liable for inducement to infringe even if the direct infringement is only found by combining the acts of more than one other person. You can read all 103 pages of the case here: Akamai v Limelight
What? In English: If you are aware of a patent (inducement requires specific intent to induce, so it requires knowledge of the patent) and you either perform one step in the method and induce one or more other persons to perform the remaining steps, or if you induce two or more other persons to engage in steps that together infringe, you are liable for inducement to infringe.
This is a major change in the law. This case overruled a recent prior case that had held that inducement requires inducing a single other party to engage in the acts that constitute direct infringement.
What does this mean? It means that if you are a business that say, provides a load balanced server farm for your clients, and you make that server farm available to your clients, who use it to manage their web content, and Akamai informs you of their patent that covers this technology, you will be liable for inducement to infringe even though the mere operation of a server farm does not practice every element in the claims of the patent. It means that businesses that are made aware of patents will have to consider every conceivable set of steps, whether done by their clients or others (inducement does not require any agency between the inducer and the person engaging in direct infringement) because the patent holder can “aggregate” all of the users it needs to meet the requirement of showing infringement.
There were numerous dissenting opinions, and it is somewhat probable that the Supreme Court will take this case.
For more information, contact Mike Oliver.
by Mike Oliver | May 1, 2013 | Copyrights, DMCA, Infotech, Intellectual Property, Licensing, Patents, Software, Uncategorized
In a decision in the Oracle v Google case, the court held that APIs – application program interfaces – small amounts of human readable source code, are not sufficiently original to qualify as copyrights. This decision can impact API licenses, which most likely are based on copyrights.
What Google did. Google decided that to construct a mobile platform operating system (ultimately, the Android operating system) it wanted to be able to “interoperate” with java programs – in this way, developers could rapidly publish their programs written in Java, to the mobile platform. In order to do this, however, Google either needed a license to the Java virtual machine to allow it to “port” it to the mobile hardware, or it needed to emulate that environment. Google approached Sun (later bought by Oracle) for this license, but the parties never agreed. Google eventually copied the names of the base classes and methods, and wrote its own original code to implement the particular functions. So as an example, a Java program would call a function, using the precise identical name of the function, class or method, but the “behind the scenes” black box code in Android that returned a result, was written by Google and not copied from Java. Google did a few other things (for example, they decompiled some executable code in Java, and used the source code derived from that to test their own software compatibility, and they included verbatim 9 lines of code in a range check function, which the court utterly dismissed as De-minimis copying)
What Oracle claimed. Faced with having examined 15 million lines of code and discovering that only the structure, sequence and function was copied, Oracle took the position that it had a copyright in that structure, function and sequence.
What the court held. The parties had agreed that the issue of copyright was for the court to decide, with the jury being the arbiter of any infringement or damages. The court did a very good job of reviewing the history of protection of computer software – which really started in about 1980, with amendments to the Copyright Act that recognized computer software as a literary work. (this case is very well written and researched, so I can commend it to anyone who wants a crash course in software law)
The trouble with the copyright protection, however, is that copyrights cannot protect ideas – that is the exclusive domain of patent law. So, whenever a copyright expresses an idea, we often say that the idea is free but the expression of it may not be. However, where there is only a limited way of expressing the idea – courts hold that the idea then “merges” into the expression, becoming inseparable, and renders that particular expression free from copyright protection. That is what the court held here – essentially, the court said that if you want to protect the sequence, function and structure of how a software program works, you must use patent, and not copyright, law. This ended the case for Oracle, as Oracle had lost on patent infringement.
The court summarized the best argument as follows: “Oracle’s best argument, therefore, is that while no single name is copyrightable, Java’s overall system of organized names — covering 37 packages, with over six hundred classes, with over six thousand methods — is a “taxonomy” and, therefore, copyrightable under American Dental Association v. Delta Dental Plans Association, 126 F.3d 977 (7th Cir. 1997).” (emphasis added)
What impact does this case have? In the abstract, this case follows a fairly well defined line of cases that have denied copyright protection to such things as menu structures and programmatic access to underlying operating systems. In this regard, the case does not change the law. However, in a bigger picture view, and with particular reference to the amount of copying here – all of the main class and method calls in Java were replicated verbatim . . . it could be seen as a step toward requiring either very good contracting practice, or patenting, to protect access to a software language system. The only other way to protect access is under the Digital Millennium Copyright Act – installing and using a sufficient technological measure that must be decrypted in order to access content.
If a software developer desires to restrict access to base operating code, the Oracle v Google case poses a significant barrier to reliance on copyright alone. As stated above, the developer should consider proper contract language, patenting the system, and use of encryption technology to unlock such access.
For more information contact Mike Oliver.
