Ofgs newsletter jj09.pub

Yahoo! Infringes Patent for Background Advertising System On May 15, 2009, Creative Internet Advertising the jury returned an award of over $6.5 million, or Concepts, Inc. received a unanimous jury verdict against Yahoo! Inc. in a patent infringement trial in According to Yahoo! ’s web site, an IMVironment the Federal District Cout for the Eastern District of (IMV) in its Messenger software is a “themed environment that you can choose to show in the Creative Internet Advertising Concepts, Inc., a conversation area of your [Instant Messaging] IM subsidiary of Acacia Research, Corp., a large patent window while instant messaging a contact. The holding company, asserted U.S. Patent No. contact sees the same IMV and has the option of 6,205,432 (the “‘432 patent”) against Yahoo! on turning it off or selecting a different IMV to share the grounds that Yahoo! ’s Messenger program, with you. Each time you instant message this including “IMVironments” was infringing. contact, the same IMV displays in your IM window The jury decided that Yahoo! infringed the until you change it or turn it off.” Yahoo! allegedly patent both literally and under the Doctrine of inserted advertisements into the background of e- Equivalents, and further that such infringement was willful. Although a defense expert witness testified The ‘432 patent, which was filed in November, that the total amount of damages to compensate for 1998, and issued in March, 2001, is directed to an infringement should be approximately, $300,000, advertisement system and method for “inserting into an end user communication message a background reference to an advertisement.” The advertisement is often a graphical file that is stored at the message server. The message server maintains records on each end user recipient, to allow for “selective enablement of background reference insertion and overwriting based upon end Federal Circuit Decision Sharply Limits 2
Acacia had previously named America Online as District Courts Reach Opposite Conclusions 3
a defendant in the suit. America Online has since Yahoo! was reportedly weighing its options, including whether to appeal the Decision. Federal Circuit Decision Sharply Limits Scope In an unusual move, the Court of Appeals for the a ruling could have on the enforcement of similarly Federal Circuit ("CAFC") acted sua sponte, (on its drafted patent claims currently in force. own accord) en banc to address the construction of On the merits of the en banc holding, Judge a product-by-process claim, without taking Newman described the long history of product-by- additional briefing and holding no additional oral process claiming. The practice is rooted in what had argument. In Abbott Laboratories v. Sandoz, Inc. been called the “rule of necessity”, i.e., that in (Fed. Cir., May 18, 2009), the court construed a certain circumstances, no more can be known about product-by-process claim including a crystalline a product except the process by which it was made. form of cefdinir "obtainable by" specified process In those cases, the policy encouraging early to treat bacterial infection of the ear, composition that is "obtainable by” process is limited to the composition Public Domain; http://en.wikipedia.org/wiki/File:PropyleneGlycol-stickAndBall.png The dissent takes issue with out those steps. The Court held that the same characterization of the precedents upon which they product (e.g., chemical composition) created by a relied, and detailed extensive contrary decisions of different process, even though the product is the Federal Circuit and its predecessor, the CCPA, identical, would does not infringe the claim. holding that product-by-process claims extend to The procedural and doctrinal peculiarities of the no more than the product, including that a known case are brought forth in a stinging dissent product cannot be ‘re-patented’ in terms of a authored by Circuit Judge Pauline Newman, and product-by-process claim including a new method of joined by Circuit Judges Mayer and Lourie. Judge Judge Lourie wrote separately to note that his In her dissent, Judge Newman pointed out that dissent from the en banc holding would also have the the Court departed from the Federal Rules of considered the particular language by which the Appellate Procedure and its own operating process steps were invoked. For example, he procedures by giving no notice of the en banc considered the present case of a compound consideration of the matter. It received no “obtainable by”, distinguished from a compound additional briefing from the parties, nor any from “obtained by” or “when made by” certain steps. amici that might advise the Court of the effects such by Joel J. Felber & David J. Torrente District Courts Reach Opposite Conclusions The Federal Circuit may soon be called to of qui tam actions, and found both that §292 was resolve two opposing rulings on whether a member properly considered a qui tam statue, and further of the public has Article III standing to bring a qui that as applied in this case, the statue did not tam action for false marking under 35 U.S.C. §292. undermine separation of powers. The Court noted Section 292 prohibits marking “an unpatented that in this case, the qui tam action was for civil article” with “the word ‘patent’, or any word or damages, not criminal enforcement — generally number importing that the same is patented, for the considered the province of the executive. Moreover, purpose of deceiving the public”, and prescribed a the executive branch, acting as intervenors, fine of “not more than $500 for every such offense.” Moreover, and at issue in the present decisions, “Any person may sue for the penalty, in which event A similar Issue came before District Judge one-half shall go to the person suing and the other Sidney H. Stein in Stauffer v. Brooks Brothers, Inc., District Judge Leonie M. Brinkema addressed the issue in Pequingnot v. Solo Cup Co., 2009 U.S. Dist.LEXIS 26020 (E.D.Va, Mar 27, 2009). Plaintiff Matthew A. Penquignot, a licensed patent attorney, brought suit under §292 against Solo, alleging that the company marked several of its products with two expired patents, No. RE 28,797 (“Lid”), and No. 2009 U.S.Dist.LEXIS 40785 (S.D.N.Y., May 14, 4,589,569 (“Lid for Drinking Cup”). In a second 2009). In that case, plaintiff Raymond Stauffer also motion to dismiss, Solo alleged Pequingnot lacked alleged §292 violations, in this case against Brooks standing, and if not, then §292 was unconstitutional Brothers and its parent Retail Brand Alliance, Inc. At for violating the separation of powers doctrine, and issue here were bow ties marked “The Original specifically the “Take Care” clause of U.S. Const., Art. Adjustolox Tie Reg’d & Pat’d U.S. Pat. Off. 279346 - II, § 3. Judge Brinkema denied the motion. 2083106 - 2123620”. Each patent was expired The court rejected Solo’s contention that “any person” should be construed narrowly to mean a In Stauffer, Judge Stein dismissed the complaint competitor. It contrasted the language of §292 with, for lack of standing. He cited, but differed with, the for example, the Lanham Act, giving standing to any result in Pequingnot, holding that Stauffer had only Resolution of regional differences, instilling national uniformity, was the primary animating purpose for the creation of the Court of Appeals for the Federal Circuit in 1982, and for vesting the new court with exclusive jurisdiction over all appeals in cases arising under the U.S. patent laws. relator. The court 3
OSTROLENK FABER Proud to Bring Back Historic Name, Debuts New Logo Samuel Ostrolenk left his position as a Patent Today, we are proud to announce that we have Examiner with the United States Patent Office in changed the firm name to OSTROLENK FABER LLP. 1928 to began his private practice in Washington, Our new firm name, reminiscent of our beginnings, D.C, later moving his practice to New York. Some 10 is mindful of over 80 years proud history serving clients in intellectual property matters, making litigation case, Mr. Ostrolenk met New York OSTROLENK FABER one of the country’s oldest trial lawyer Sidney Faber. Mr. Faber’s substantial litigation experience and his At the same time, we are by no means lingering aptitude for understanding new technologies in our past. Therefore, we are also proud to and complicated inventions founded the basis debut a new logo (left). This simple, modern and effective symbol communicates who we are, both now and then. With the new “OF” logo, formally signed papers to change the firm name to our version of “Something old, something new” even includes something blue. Look for our new name and logo in all future firm communications.

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