By Brad Stohry

The Government Employee Insurance Company, better known as Geico, filed a lawsuit against Tri-State Consumer Insurance Company, alleging various trademark violations as a result of certain radio advertisements broadcasted by Tri-State. Geico, who has a long running advertisement campaign that features a talking gecko lizard with an English accent, asserts that Tri-State's use of a similar talking gecko in a radio advertisement violates Geico's trademark rights. In Geico's complaint, Geico alleges that Tri-State's radio advertisement features a character identified as a gecko who discusses car insurance with the radio listener. As the gecko begins to suggest that the listener should switch their insurance coverage to Geico, the gecko is apparently crushed by a vehicle, as the listener hears an "unsavory 'splat' sound." After the untimely end to the gecko's life, "a gruff voice boldly proclaims, 'Enough with the gecko already! You want cuddly cartoon characters or better rates?"' Geico's argument is that Tri-State's use of the gecko dilutes the character's value to Geico.

Reuters News Article: LINK
Geico Website: LINK
Tri-State Website: LINK
Geico's Gecko Trademark Registration: LINK

Brad Stohry is an attorney with Ice Miller focusing his efforts on trademark prosecution and intellectual property licensing.

In an auction on eBay that started on Monday, 3rd Screen Studios is auctioning two of its Federally registered Trademarks to the public. This auction, having an opening bid of $100,000, will provide the winner with all pertinent rights to two “3rd Screen” trademarks (IC 009 and IC 038), as well as a short list of related domain names. This particular IP auction has gained attention, in part, because of Motorola’s Screen3™ technology, recognizing that the three “screens” people tend to watch the most include television, computer, and portable electronic device screens. 3rd Screen Studios will announce its new company name after the close of the auction.

3rd Screen eBay Auction: LINK
Market WIRE News Article: LINK
3rd Screen Studios Webpage: LINK

On Monday a jury in the U.S. District Court for the Northern District of California in San Jose awarded $306.9 million in damages to Rambus Inc. after finding that Hynix Semiconductor Inc. Communications Corp. infringed ten patent claims of four Rambus patents. This litigation began when Hynix sued Rambus in 2000 alleging that 11 Rambus patents were invalid or not infringed by Hynix (seeking declaratory judgment), and Rambus countered, eventually having 59 claims in 14 patents involved in the suit. The patents involve dynamic random access memory (DRAM) technology, commonly used in personal computer memory chips. Rambus has three related patent disputes pending against Samsung Electronics Co., Micron Technology Inc., and Nanya Technology Corp., regarding its patented memory technologies. Judge Ronald Whyte had earlier found two Rambus patent claims to be infringed (summary judgment), and the federal jury found eight other Rambus patent claims to be infringed by Hynix, resulting in $276.4 million in damages for DDR SDRAM memory and $30.5 for general SDRAM memory sold by Hynix.

Hynix v. Rambus Jury Verdict Form: LINK
Rambus Press Release: LINK
Bloomberg.com News Article: LINK

John Dudas and James Toupin (USPTO General Counsel) will lead likely the final Town Hall meeting on the proposed patent practice changes prior to the end of the comment period on the two proposed rules (May 3rd). Registration for the meeting at the USPTO (Madison Auditorium) in Alexandria, Virginia, is free for the meeting starting at 2:00PM local time today.

USPTO Meeting Notice: LINK
USPTO Detailed Meeting Information: LINK
USPTO “Proposed Rule Changes to Focus the Patent Process in the 21st Century” Webpage: LINK

Last Wednesday, a jury in the U.S. District Court for the Eastern District of Texas awarded $133 million in damages to z4 Technologies after finding that Microsoft Corp. and Autodesk Inc. infringed two of z4 patents (U.S. Patent No. 6,044,471, "Method and apparatus for securing software to reduce unauthorized use," and U.S. Patent No. 6,785,825, "Method for securing software to decrease software piracy"). These two patents, issued in 2000 and 2004, respectively, claim software security technologies that a jury found to be practiced within Microsoft's Office product and Autodesk's AutoCAD product. This six day trial resulted in a verdict against Microsoft and Autodesk for $115 million and $18 million, respectively. This is the second verdict in a week out of the Eastern District of Texas in favor of the plaintiffs in a patent infringement lawsuit (see the TiVo/EchoStar story below).

U.S. Patent No. 6,044,471: LINK
U.S. Patent No. 6,785,825: LINK
Reuters News Story (on ZDNet): LINK
z4 Technologies Website: LINK

I was recently preparing an office action response, making sure I was using the correct claim status identifiers, when I came across a reference in the MPEP (Section 714, subsection II(C)(E) to be exact) that lists several additional "acceptable alternatives" above and beyond the ones commonly used as stated under MPEP § 714(II)(C)(A), namely "original," "currently amended," "previously presented," "canceled," "withdrawn," "new," "not entered," and "withdrawn – currently amended." According to the MPEP, "To prevent delays in prosecution, the Office will waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c)." Those alternative status identifiers are as follows:

Original: "Original Claim" and "Originally Filed Claim"

Currently amended: "Presently amended" and "Currently amended claim"

SteelCloud, Inc. was recently awarded U.S. Patent No. 7,020,476 (“Wireless network security”) by the USPTO, claiming a secure wireless network and method. This patent, issued late last month, states that it “can be applied to the problem of wireless LAN security when considering unauthorized attempts to access a wireless LAN by an unknown intruder from a position falling geographically outside a permissible geographic boundary” where the then-current disclosed technology was insufficient. The main network claim discloses a system comprising “plurality of receiver nodes coupled to corresponding high-precision clocks and configured to receive unsolicited wireless frames transmitted both from within and outside a secured geographic area covered by the secure wireless network,” a precise clock linked to additional precise clocks, a position location system that is linked to the received nodes that computes positioning information, and “access management logic” coupled to the system with specific configurations to manage wireless network access. Brian Hajost, the President of SteelCloud, has stated that this patent “addresses that problem effectively and was created through practical experience and extensive research.”

U.S. Patent No. 7,020,476: LINK
Wireless IQ Press Release: LINK
SteelCloud Security Products Webpage: LINK

Payment Data Systems, Inc. recently announced that it received a patent on its bill payment technology. U.S. Patent No. 7,021,530, entitled “System and method for managing and processing stored-value cards and bill payment therefrom,” issued to this electronic payments company on April 4th. This patent discloses a “system and method for managing and processing stored-value debit, check card, signature debit, PIN based card or automatic teller machine (ATM) cards and bill payment from a variety of access points” once a user has enrolled with a bill payment card issuer. Once this has occurred, the method provides bill payment account information, establishes a “fund source” through the issuer of the card to the cardholder, inputs identifying information on to an input device, and transmits the information to the card holder for verification. The method continues to discloses bill payment options that are then selected (along with a particular biller from a list), and after the input of data the transaction is created through a bill payment network that is processed and an output is provided to a biller. This patent states that it “solves the problem” of persons who do not use banking services but still wish to engage in electronic bill payment.

U.S. Patent No. 7,021,530: LINK
Payment Data Systems Press Release: LINK
Payment Data Systems Website: LINK
BillX Website (Payment Data’s Electronic Payment Portal): LINK

Last Thursday, a jury in the U.S. District Court for the Eastern District of Texas, Marshall Division, awarded $73.9 million in damages to TiVo Inc. after finding that EchoStar Communications Corp. infringed one of TiVo’s patents (U.S. Patent No. 6,233,389, “Multimedia Time Warping System”). After the two week trial, the jury determined that EchoStar had willfully infringed TiVo’s patent regarding digital video recorder (DVR) technology, known by the public as being able to “pause” live television. This finding of willful infringement could potentially triple the award to almost $240 million. TiVo had sought $87 million in damages in its complaint filed in January, 2004, a figure calculated representing the amount TiVo would have allegedly earned had EchoStar not sold approximately 4 million DVRs utilizing the technology claimed by TiVo to be infringing its patent. EchoStar is commonly known by its Dish Network brand and satellite television and internet services. According to its press release, TiVo intends to pursue a permanent injunction against EchoStar regarding EchoStar’s DVR product line.

U.S. Patent No. 6,233,389: LINK
TiVo Press Release: LINK
Yahoo! News Article: LINK
Bloomberg.com News Article: LINK

The United States Patent and Trademark Office is currently looking for public advisory committee nominees. There are two committees (the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC)) that have three positions available for each committee. If selected, the new member would serve on a committee for the next three years. The most recent PPAC Public Session Meeting transcript is available here and the most recent TPAC Public Session Meeting transcript is available here, so that any interested and qualified individual may have a better understanding about the work accomplished by the committees. Nominations are being accepted until May 8, 2006.

General Nominee Information: LINK
Current Public Advisory Members: LINK
Agenda for Next Meeting (April 18th): LINK
Federal Register Notice: LINK

Arrowhead Research Corporation, a nanotechnology company researching life sciences and semiconductor technologies, recently received a patent regarding therapeutic compositions and methods for delivery. U.S. Patent No. 7,018,609 ("Compositions containing inclusion complexes"), issued late last month, discloses "a composition containing a polymer, a therapeutic agent, and a complexing agent where the polymer interacts with the complexing agent in a host-guest or a guest-host interaction to form an inclusion complex," along with compositions to deliver the therapeutic agent to treat a number of disorders. The patent discloses the use of cyclodextrins as being "a preferred host," because they are "able to interact with a great variety of ionic and molecular species." The first claim of the patent is directed to a method of preparing such a composition, comprising a therapeutic agent, a cyclodextrin-containing polymer, and a complexing agent "comprising at least one functional group and at least one host/guest moiety that forms an inclusion complex with a host/guest moiety of said cyclodextrin-containing polymer to form the composition," wherein the three individual components are separate molecules. This patent states that it answers the need "for a more effective non-viral delivery systems exhibiting properties such as, for example, increased stability (e.g. under physiological conditions) and effective targeting abilities."

U.S. Patent No. 7,018,609: LINK
BusinessWire Press Release: LINK
Arrowhead Research Website: LINK

Earlier this week, Google Inc. received a patent regarding several methods and systems to provide search results directly from a voice search query. U.S. Patent No. 7,027,987 ("Voice interface for a search engine"), issued on April 11th, discloses methods and systems “for supporting voice queries in information retrieval systems. The first method that provides search results includes “receiving a voice search query from a user; deriving one or more recognition hypotheses from the voice search query, each recognition hypothesis being associated with a weight; constructing a weighted boolean query using the recognition hypotheses; providing the weighted boolean query to a search system; and providing results of the search system.” Aside from the addition of including one or more search terms regarding the aforementioned recognition hypotheses, the first independent claim is described in that fashion, with additional detail regarding the construction of the weighted boolean query including “determining a length of a shortest recognition hypothesis, pruning a length of each recognition hypothesis up to the length of the shortest recognition hypothesis, determining a length of a longest pruned recognition hypothesis, selecting a number of recognition hypotheses based on one or more query parameters, determining term weights, and forming a weighted boolean query.” This patent states that it addresses the need of a voice interface effective for search engines, addressing the problems of high word error rates and limited sets of word choices used in some voice interfaces.

U.S. Patent No. 7,027,987: LINK
ars technica News Article:LINK

It was announced in the March 28, 2006 Federal Register that the Copyright Office of the Library of Congress has proposed new fees for general services, special services, and Licensing Division services. According to the announcement, "[t]he proposed fees would recover a significant part of the costs to the Office of registering claims and provide full cost recovery for many services provided by the Office which benefit only or primarily the user of that service." Some of the proposed fee changes include the fee for Registration of a basic claim in an original work of authorship (increase from $30 to $45) and an increase of the filing fee for recordation of license agreements under 17 U.S.C. § 118 (from $50 to $125). A full list of the proposed fees is included in the Federal Register link below. Written comments received by April 27, 2006, will be considered.

March 28, 2006 Federal Register Announcement: LINK
Current Copyright Office Fee Listing: LINK

The USPTO recently announced the top ten college and university patent recipients for 2005. The University of California (sum of all campuses) held the top spot with 390, down slightly from the year before (424). The Massachusetts Institute of Technology and the California Institute of Technology swapped positions from the year before, with MIT receiving 136 patents and CIT receiving 101 patents in 2005, respectively. The university in the top 10 with the highest rank increase from 2004 was the University of Pennsylvania, receiving 43 patents in 2005 and entering the top 10 (tied for 9th) from 24th in 2004.

USPTO Press Release: LINK
University of California Office of Technology Transfer Website: LINK
MIT Technology Licensing Office Website: LINK
CIT Office of Technology Transfer: LINK

In the April 6, 2006 Federal Register, the USPTO announced its plan to eliminate the Disclosure Document Program. This Program, initiated in 1969, provided a mechanism for inventors to evidence conception of an invention as of a particular date by, for example, the mailing of a self-addressed envelope including an invention disclosure. The USPTO contends that this program provides little if any benefit to inventors, and that it causes some confusion to inventors as they may believe they are actually filing a patent application by using the Program. The proposed statutory modification is to remove 37 CFR § 1.21(c), the section that sets forth the $10.00 fee for filing a disclosure document, from the patent rules, reserving that section for potential future use. The USPTO is allowing comments regarding this proposed change to be considered if received on or before May 8, 2006.

Federal Register Notice (April 6, 2006): LINK
37 CFR § 1.21: LINK

Registration for the American Intellectual Property Law Association (AIPLA) 2006 Spring Meeting is still open and available through the AIPLA website. This meeting, held at the Hilton Chicago from May 3-5, will cover items like electronic patent filing (U.S. and Europe), notice and cease and desist letters, new client development (corporate and law firm), open source software licensing, legal ethics, and several additional intellectual property law topics. The general registration fee for AIPLA members registering before April 18th is $535, with other rates and event fee options available.

AIPLA 2006 Spring Meeting Website: LINK
Full Program Agenda: LINK
Registration Form: LINK

On Tuesday, Netflix Inc. sued Blockbuster, Inc. in the U.S. District Court for the Northern District of California, alleging that Blockbuster has infringed two of its patents related to DVD rental subscriptions. Netflix obtained U.S. Patent No. 6,584,450 ("Method and apparatus for renting items") in June of 2003, and was awarded U.S. Patent No. 7,024,381 ("Approach for renting items to customers") on the same date it filed suit against blockbuster (April 4th). This more recent patent claims a "computer-implemented method for renting movies to customers," comprising the display of digital information regarding movie attributes, establish a "movie rental queue" including at least two movies associated with a particular customer, delivering a number of movies to the customer, allowing the customer to then select additional movies, thus updating the customer's movie queue. Netflix and Blockbuster are competitors in the DVD subscription service market, with Netflix offering its service since 1999 and Blockbuster since 2004.

U.S. Patent No. 6,584,450: LINK
U.S. Patent No. 7,024,381: LINK
Reuters News Story: LINK

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the twenty-sixth through the thirtieth cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Aspex Eyewear, Inc., et al. v. Miracle Optics, Inc., et al. (03/03/2006, non-precedential): claim construction (and appellate standard of review), prosecution history disclaimers

Fiber Optic Designs, Inc., et al. v. Seasonal Specialties, LLC (03/03/2006, non-precedential): preliminary injunctions, claim construction (and appellate standard of review), specification information impacting claim construction

Amini Innovation Corp. v. Anthony California, Inc., et al. (03/03/2006): copyright & design patents (and appellate standards of review), copyright access and similarity, design patent claim construction, infringement, and novelty

Kwik Products, Inc., et al. v. National Express, Inc., et al. (03/13/2006, non-precedential): (dismissal of appeal not from final decision), standard of review for appeals in patent matters, ripeness

Microchip Technology v. The Chamberlain Group (03/15/2006): existence of actual controversy, covenants not to sue, adverse legal interests & legal risks, declaratory judgments

MusicIP, the California based digital music technology company, recently obtained a patent regarding audio fingerprinting. U.S. Patent No. 7,013,301 ("Audio fingerprinting system and method"), issued on March 14th, discloses several methods and systems for "automatically identifying unknown audio pieces, and more specifically, to a system and method for efficiently identifying unknown audio pieces via their audio fingerprints." The independent claim of the patent teaches a method for audio fingerprinting comprising the receipt of an audio signal, obtaining frequency measurements, building a matrix based on those measurements, and decomposing the matrix to generate a digital fingerprint to be stored and used for the identification of audio pieces. In its patent, MusicIP stated its invention as satisfying the need for "a fingerprinting system that provides a reliable, fast, and robust identification of audio pieces," whereby "[s]uch a system should be configured to reduce the search space in performing the identification for a better matching accuracy and speed."

U.S. Patent No. 7,013,301: LINK
PRWeb Press Release: LINK
MusicIP Website: LINK

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). This posting covers the twenty-first through the twenty-fifth cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

MAG-NIF, Inc. v. Royal Sovereign Int'l, Inc., et al. (02/17/2006, non-precedential): settlement agreements & violations thereof, standard of review of patent case and settlement agreement

Forcillo v. Lemond Fitness, Inc., et al. (02/17/2006, non-precedential): inequitable conduct, exceptional cases, attorney’s fees and legal costs

Lawman Armor v. Winner International (02/22/2006): design patents, ordinary observer and points of novelty tests, summary judgment (and standard of appellate review)

M. Eagles Tool Warehouse (doing business as S&G Tool Aid Corp.) v. Fisher Tooling Co. (doing business as Astro Pneumatic Tool Co.) (02/27/2006): inequitable conduct (and intent to deceive element), Lanham Act, tortious interference, unfair competition

Bonzel v. Pfizer, Inc., et al. (03/02/2006): forum non conveniens, jurisdiction (and appellate standard of review), judicial estoppel