Intellectual Property and Tech Law Reports

Congressional Budget Office: Patent bill cost exceeds expected revenue

By Andrew Noyes CongressDaily February 19, 2008

Legislation making sweeping changes in patent law that is slated for Senate debate in the coming weeks would increase federal spending by $26.9 billion and boost revenue by $25.5 billion over a nine-year period beginning in 2009, according to a CBO analysis released late last week.

The legislation sponsored by Senate Judiciary Chairman Patrick Leahy, D-Vt., would alter the rule that prioritizes the award of a patent from the "first to invent" to the first inventor to file; increase the Patent and Trademark Office's authority to collect and spend fees; and institute a number of litigation-related changes. A sizable shift on the federal balance sheet would result from language to make permanent the PTO's authority over money collected from patent and trademark applications, CBO said. Compliance costs could be $200 million annually starting in 2009, with most of the financial burden falling on the private sector, officials said.

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Kohl's settles patent dispute

The Business Journal of Milwaukee - 11:32 AM CDT Tuesday, September 11, 2007

Kohl's Department Stores Inc. has settled a patent infringement dispute with a unit of Acacia Research Corp. by agreeing to a retroactive license for credit card fraud protection technology.

Financial Systems Innovation L.L.C., a wholly owned affiliate of Acacia Research Corp., of Newport Beach, Calif., had sued Menomonee Falls-based Kohl's alleging infringement of Financial System's patent related to the technology. The retroactive license agreement resolves a dispute that was pending before the U.S. District Court for the Northern District of Georgia, Acacia said Tuesday.

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Open Call From the Patent Office

By Alan Sipress

Washington Post Staff Writer
Monday, March 5, 2007; 3:34 PM

 

The government is about to start opening up the process of reviewing patents to the modern font of wisdom: the Internet.

The Patent and Trademark Office is starting a pilot project that will not only post patent applications on the Web and invite comments but also use a community rating system designed to push the most respected comments to the top of the file, for serious consideration by the agency's examiners. A first for the federal government, the system resembles the one used by Wikipedia, the popular user-created online encyclopedia.

"For the first time in history, it allows the patent-office examiners to open up their cubicles and get access to a whole world of technical experts," said David J. Kappos, vice president and assistant general counsel at IBM.

It's quite a switch. For generations, the agency responsible for awarding patents, one of the cornerstones of innovation, has kept its distance from the very technological advances it has made possible. The project, scheduled to begin in the spring, evolved out of a meeting between IBM, the top recipient of U.S. patents for 14 years in a row, and New York Law School Professor Beth Simone Noveck. Noveck called the initiative "revolutionary" and said it will bring about "the first major change to our patent examination system since the 19th century."

Most federal agencies invite interested parties to weigh in on proceedings, and even the patent office allows some public comment, but never to the degree now suggested .

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Canon's U.S. court loss could cost it millions

Wed Feb 28, 2007 8:34AM EST

By Aiko Wakao

TOKYO (Reuters) - When Canon Inc. (7751.T: Quote, Profile, Research) was sued by a small, money-losing U.S. technology firm two years ago, the dispute was over a patent license that had cost the Japanese electronics giant a one-time payment of $5.6 million.

But now that the lawsuit has caused Canon to lose the license, a fresh agreement with Texas-based Nano-Proprietary Inc. (NNPP.OB: Quote, Profile, Research) could be worth millions of dollars more, lawyers said.

Last week a U.S. court ruled against Canon, saying the company breached its deal with Nano-Proprietary by trying to share the flat display technology with Toshiba Corp. (6502.T: Quote, Profile, Research).

The court's decision comes as a major setback and perhaps an embarrassment for Tokyo-based Canon, the third-biggest patent owner in the United States.

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Court Takes on Software Patents

Microsoft Case May Have Global Reach

By Robert Barnes and Alan Sipress
Washington Post Staff Writers
Thursday, February 22, 2007; D01

 

The name alone -- Microsoft v. AT&T-- conjures a galactic showdown. And the legal battle over a patent dispute that unfolded in the Supreme Court yesterday brought together elements of an epic.

Millions of dollars, at a minimum, ride on the outcome. The companies have hired two of Washington's most prominent Supreme Court gladiators, who together have argued nearly 100 cases before the high court, to present their cases. Some justices were on the edges of their seats as they absorbed a mind-bending blend of law and abstract thought, of computer-code poetry and patent-law banality.

The case even involves a "golden disk."

So what if that disk only contains Microsoft's Windows operating system?

"I hope we can continue calling it the golden disk," Justice Antonin Scalia said, when one justice blandly referred to it as the master disk. "It has a certain Scheherazade quality that really adds a lot of interest to this case."

At issue is whether Microsoft can be held liable for violating an AT&T patent on technology that condenses speech into computer code, similar to that found on Microsoft's Windows program.

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Microsoft fined $1.5 billion on MP3 patent abuse

Microsoft fined $1.5 billion for infringing MP3 encoding/decoding patent
Elizabeth Montalbano

Microsoft must pay $1.5 billion in damages to Alcatel-Lucent for infringing on patents for MP3 encoding and decoding technology, a US jury declared on Thursday.

Some reports are calling the decision, which could make other companies that use the same technology vulnerable to suits by Alcatel-Lucent, the largest patent decision in history. Neither Microsoft nor Alcatel-Lucent would confirm that statement.

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Spectranetics announces unfavorable jury verdict in a patent litigation dispute

Spectranetics Corporation has announced that it has received an unfavorable jury verdict in a patent litigation dispute with Dr. Peter Rentrop in the U.S. District Court in the Southern District of New York. Spectranetics has filed several post-trial motions seeking to overturn the verdict.

The last of these motions was filed on February 5, 2007, and the jury award is not final until the judge rules on the post-trial motions.

Dr. Rentrop alleged that the patent issued to him on January 6, 2004 was infringed by the Spectranetics' Point 9 millimeter catheters. Spectranetics does not believe that Dr. Rentrop's patent was infringed and has asserted counter-claims of invalidity, breach of contract and inequitable conduct.

Dr. Rentrop was seeking damages of $7,500,000, which consists of treble damages on a base royalty of $2,500,000.

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AT&T, Microsoft argue patent case

By CHRISTOPHER S. RUGABER

A lawyer for AT&T argued before a skeptical Supreme Court on Wednesday that Microsoft Corp. is violating one of its patents when it sends its Windows software overseas to be copied and placed on personal computers.

Microsoft acknowledged that it violated AT&T's patent on speech encoding technology when it sold Windows in the United States, but disputes that it should be held responsible for infringement when the software is copied by foreign computer manufacturers.

Justice Stephen Breyer expressed sympathy for Microsoft Corp.'s argument, suggesting AT&T Inc. should pursue its infringement complaint in overseas markets where the copies are made.

"The whole question here is whether (the company) has to get a patent" abroad, Breyer said.

At issue in the dispute is a section of patent law that bars companies from shipping components of a patented invention overseas for assembly. The intent of the provision, which became law in 1984, was to prevent companies from circumventing patents by sending parts offshore to assemble them in a way that would infringe the patent in the United States.

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Adverse patent ruling could cost Genentech millions

PAUL ELIAS Associated Press

SAN FRANCISCO - Federal regulators rejected a valuable Genentech Inc. patent that protects how it makes some biotechnology drugs, the company said Wednesday. While the U.S Patent and Trademark Office ruling could cost the company millions of dollars in royalty payments, the South San Francisco-based company said the patent would remain valid while it pursues appeals at the USPTO and the courts. The appeals process could last longer than two years.

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IRS Issues Guidance on Use of Net Consideration Method for Certain Patent Cross Licensing Agreements (Rev. Proc. 2007-23)

In response to its request for comments in Notice 2006-34, I.R.B. 2006-14, 705, the IRS has provided rules that allow taxpayers to change to or to continue to use the net consideration method for a qualified patent cross licensing agreement (QPCLA). A QPCLA is a nonexclusive, nontransferable patent cross licensing arrangement among uncontrolled parties, the subject matter of which is limited to the parties' present or future patent rights as specified in the arrangement. If the parties to an arrangement also engage in more than de minimis licensing or other transfer of other intangible property, including copyrights, trademarks and know how, pursuant to the arrangement, the arrangement is not a QPCLA.

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