The Prior Art

Patent Litigation Weekly: Upstairs, Downstairs in Marshall

This week: Both floors of the best little courthouse in Texas have been busy—producing very different results.

Taking A Big Bite Out of Apple

OPTi, Inc. v. Apple, Inc.
07-cv-00021, E.D. Texas (Marshall), filed 1/17/2007.

OPTi Inc. is a Palo Alto company that used to manufacture chipsets for computers. In 2002, after Intel decided to stop using OPTi’s chipsets, the company shuttered its operations and moved into the patent-licensing business. Since then, as OPTi said in its SEC filings, the company has been “engaged in perfecting its intellectual property position" by investigating the unlicensed use of its technology, and filing lawsuits against alleged infringers. As of now, OPTi—still a public company, although it's not traded on any major exchange—has only one full-time employee: CEO Bernard Marren. (The OPTi we discuss here should not be confused with OPTI Canada, an operating energy company.)

Last week, OPTi wrapped up the first jury trial of its new incarnation—and wound up a winner. In ruling for OPTi and against Apple, a Marshall jury awarded the former more than $19 million for willfull infringement. It's a remarkable victory, in part because the jury gave the plaintiff exactly what it had asked for and accepted its testimony on damages wholesale. OPTi's lawyers interviewed by TPA said Apple’s expert witnesses suggested that—if the computer maker had infringed—it only owed OPTi about $300,000.

Patent Litigation Weekly (April 13-17)

This week: Consultant/blogger/inventor Gary Odom sees infringers everywhere, AOL and Yahoo move a little bit closer to "mutually assured destruction," and more.

Patent Hawk Swoops In Again

• Odom v. Attachmate Corporation et al, 09-cv-00406 D. Oregon. [PDF]

Gary Odom is a litigation consultant, and an inventor. Last year, he used his 7,363,592 patent to sue Microsoft—a company that once employed him as an adviser on patent lawsuits—in the Eastern District of Texas. In February, The Prior Art wrote about how Odom's employment contracts with Klarquist Sparkman, one of the firms Microsoft regularly taps as outside counsel, became an issue in Odom v. Microsoft. 

In that case, which has since been transferred to Oregon, Odom is demanding that a royalty be paid to him for each copy of Microsoft Office 2007 that is sold in the United States. In February, Odom sued Autodesk, seeking a similar royalty on Autodesk 2009. Odom v. Autodesk. [PDF]

Last week, Odom followed up those suits by filing one in Oregon that names 28 additional software makers. Each of the companies, he claims, owes him royalty payments. The list of defendants includes companies that range in size from British aerospace giant BAE Systems to smaller entities such as Emportal and San Diego-based SmartDraw.

Intellectual Ventures Still Buying Patents: Q&A with the Purchaser-in-Chief

As The Prior Art recently reported, Ocean Tomo’s last San Francisco patent auction was a bust. Still, as was true last year, there was plenty of scuttlebutt about what role giant patent-holding company Intellectual Ventures (IV) might play at the event. TPA reported on some of that speculation, which prompted a note from Kevin Barhydt, director of IV's acquisition program.

Intellectual Ventures does not publicly talk about specific patent purchases or its licensing activity—a policy that was in full effect when TPA spoke with Barhydt last week. Despite the lack of specifics, Barhydt did have some interesting things to say about IV's acquisition program. Over the past several years, the company has acquired more than 20,000 patents. About 15 percent were purchased at auction, 20 percent were bought when sellers approached IV directly, and the rest were acquired via brokers representing sellers or agents representing IV.

Another note: in this interview, Barhydt uses the term 'asset' synonymously with patent, which might be confusing to some. The interview was edited and condensed.

Patent Litigation Weekly (April 6-10)

This week: The empire strikes back--Cisco Systems and Citibank file counter-suits against the patent holders making claims on videoconferencing and check-imaging, respectively; a defunct company with a less than stellar track record in the patent lawsuit business keeps filing; and a familiar player with a new name in E.D. Texas.

• Cisco Systems, Inc. v. Teleconference Systems, Llc Et Al. 09-cv-01550, N.D. California.

Teleconference Systems is a shell company set up by Acacia Research Corp., the Orange County-based patent-holding company that has, by one estimation, filed more patent suits than any other. Teleconference Systems was set up to enforce the 6,980,526 patent, which is related to videoconferencing; the patent is owned by Margalla Communications, a consulting company in Woodside, California, which presumably will share in any licensing booty Acacia wins.

On March 27, Teleconference filed its first patent lawsuit in Delaware, alleging that several companies in disparate industries have infringed the '526 patent. Teleconference is represented by Anthony Simon of The Simon Law Firm in St. Louis (formerly Simon Passante).

Patent Litigation Weekly (March 30-April 3)

This Week: A once-sanctioned patent lawyer's latest lawsuits; a sudden change to a Web site; and judicial disagreements over "cookie cutter" patent lawsuits.

Last week was so full of interesting patent lawsuits, I just didn't have a chance to write about Mural Comm, LLC. The mysterious new patent-holding company sued three large retailers on March 24 and 25. The man prosecuting the Mural Comm lawsuits, once-sanctioned patent lawyer Jean-Marc Zimmerman, is keeping busy on many fronts; he was helping another holding company, GBM, LLC, file suit last week in New Jersey against an online food distributor, Foodgalaxy.com.

Zimmerman hasn't responded to TPA's phone and e-mail requests for comment over the last two weeks. But Martin Welt--the co-owner, with his son, of GBM, and the inventor of the patent being used to sue food companies--did pick up when contacted Tuesday.

Welt, a physicist and CEO of a New Jersey food distributor called Kariba Farms, was eager to talk about the software product described by the 7,184,987 patent. It's called Karibex and it allows buyers of products to shop from a variety of vendors through a single Web site. It also accommodates ads to be placed so that prospective buyers will see them. Welt filed for a patent on the software in 2001 with the help of lawyers from Morgan, Lewis & Bockius; the patent was granted in 2007. 

TPA Reading for the Week

A TPA extra edition--our mix of IP-related notes from this week:

• PatentFreedom, the patent defense consultancy run by Dan McCurdy, first talked to us about its database of NPEs (patent trolls) when the firm launched almost a year ago. Now, PatentFreedom is offering some of the basics from its database to the public--interesting stuff. Take a look, via Against Monopoly.

• French reject "three-strikes" law that would ban copyright infringers from the Internet. Lots of artists and content-side lawyers thought this one was going to pass. Not this time. Via Wired.com.

• Big Verdict: Mintz Levin won a $388 million patent infringement verdict against Microsoft for a case brought on behalf of a small California outfit, Uniloc. But will it stick?

• Big Verdict II: W.L. Gore & Associates (of Gore-Tex fame) must pay out $410 million to medical device company C.L. Bard. Via The Am Law Litigation Daily. Gore will appeal.

• Big Verdict III: A U.S. Court of Federal Claims judge has ordered NASA to pay a 1.25 percent royalty to Boeing because an aluminum alloy it used to build the space shuttle infringes Boeing patents. Damages still being briefed but looks like 9 digits. Seattle Times via IPO News, and The Am Law Daily.
  

• EFF senior attorney Fred Von Lohmann asks if President Obama violated copyright law when he gave an iPod to Queen Elizabeth.

• U.K. newspaper The Guardian showcases 15 years of anti-piracy videos.

Photo: L. Hine / Wikimedia

 

Gregory Bender Fires Off More Patent Lawsuits in N. D. California

The Gregory Bender barrage of patent lawsuits continues to grow in the Northern District of California. I reported in last week's Patent Lit Weekly that Bender had filed against 19 companies over a one-week period; he now has added nine more companies to the list, in three lawsuits.

All the suits are against high-tech firms and involve Bender's 5,103,188 patent, issued in 1992. The newest defendants are:

• AT&T
  
• AT&T Mobility
  
• Sony-Ericsson Mobile
  
• Panasonic
  
• Samsung Semiconductor  
• Toshiba America
  
• Hitachi America
  
• Seagate Technologies
  
• Western Digital
  

That brings the total to 28 companies sued in 22 lawsuits. In terms of number of defendants sued over a single patent at one time, Bender's '188 patent surely is pushing some kind of record. And there may be more. "I think there certainly are additional potential infringers out there," says Bender's lawyer, David Kuhn.

Challenges to the Google Book settlement, and a connection to Microsoft

The New York Times noted Friday that some challenges are being raised to the Google Book settlement; my colleagues at The Recorder are more interested in the fact that some of the opposition is funded by Google's rival, Microsoft. One of the New York Law School professors whose research is funded by Microsoft is James Grimmelmann. I've never spoken to him, but his lengthy analysis of the Google Book settlement, published in November, is the most insightful thing I've read about it. After reading the post, it really struck me how important this settlement will be to the future of reading as we know it.

Grimmelmann is also a former Microsoft employee, and wrote a great essay about working for the company back in 1997. The law professor made it clear to the NYT that he doesn't believe he or his colleagues' work has been influenced by Microsoft. He generally supports the settlement but also noted that he had concerns about antitrust and consumer rights, and suggested:

The Week in Patent Litigation (March 23-27)

This week: an inventor files nearly 20 lawsuits just months before his patent expires; a pair of patent-holding lawyers go after the iPod and iPhone; and two weeks after complaining to Congress about patent trolls, a tech company is sued by... a patent troll.

On A Bender

Last week we briefly mentioned inventor Gregory Bender and his suits alleging that several technology companies had infringed his patent 5,103,188. Bender filed the patent, which describes a type of electrical circuit, in August 1989.

On March 23, a week after filing his initial batch of 11 suits, Bender filed eight more in federal district court in Oakland. His targets this time: IBM, Agilent, Cirrus Logic, Siemens, Nokia, Sony, Motorola, and ST Microelectronics. Add those names to the others he’s already accused of infringement, which include Freescale, National Semiconductor, and AMD, and you’re looking at a pretty nice chunk of the tech sector. (Is it just us, or is Intel notably absent from the list?)

"Hot News" claims fail against Perez Hilton and newspaper obituaries

In February, I wrote about how a judge allowed The Associated Press' "hot news" lawsuit against an online news service to move ahead. I also wrote up a bit of the history of the "hot news" doctrine, which was created to give news organizations a "quasi-property" right in certain facts, even though facts cannot be copyrighted.

Readers who were interested in that post, and there were quite a few, would be interested to know that cyberlaw guru Eric Goldman has written recently about two more cases that involved "hot news" claims; that's three times it's come up in one month, leading Goldman to conclude that it must be "something in the water." One of those "hot news" claims was against celebrity gossip writer Perez Hilton, while another was part of a newspaper-on-newspaper fight in Pennsylvania over obituaries.

In one way, it's hard to think of anything less "hot" than an obit, but as the judge in that case notes, they do contain certain time-sensitive information. I can confirm, without any joy in my heart, that obits and funeral notices are some of the more popular content in smaller newspapers. When I worked at The Bakersfield Californian as an intern reporter, the funeral notices for the week frequently made it on to the "most read stories" list on the paper's web site. The "hotness" of that feature was always a bit depressing to us reporters, who spent the day pounding pavement to report news that was only occasionally more popular than a list of people have recently died. 

Image: Wikimedia / Sensor