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