Monthly Archives: February 2011

Microsoft Corp V/s TiVo, Inc

The present case relates to an infringement petition filed by Microsoft Corp against TiVo, Inc. in California Northern District Court, for infringing its two patents, Patent No. US 6,008,803, (‘803) and Patent No. 6,055,314, (‘314). The case was filed on January 19, 2010. The case is still waiting for its decision and its next hearing is on March 30, 2011. The patents in context relate to an information display, for an user, for purchasing and display of video contents. As TiVo manufactures related products such as, TiVo premiere and TiVo Premiere XL, which are basically set top boxes, the products and its related software are said to be infringing the patents.

‘803 Patent:

In the ’803 patent titled “System for displaying programming information”, Microsoft claims that defendant is infringing ‘803 patent by way of using, selling, offering for sale, and/or importing products, systems and/or processes in US and within the scope of the ‘803 patent. Such infringement products, services and software’s include defendants TiVo Premiere and TiVo Premiere XL.

‘803 claims a method for retrieving and displaying items of electronic information. The electronic information has a list of programs arranged in categories to which they belong. A category display contains an array of related channels and subcategories contain programs related to that channel. Arrangement is made in a panel to display these categories and sub-categories. User can scroll through the panel and select the category of channel that he wishes to access and watch the information about it. User can also select the desired channel based on the obtained information.

‘314 Patent

In the ’314 patent titled “System and method for secure purchase and delivery of video content programs”, Microsoft claims that defendant is infringing ‘314 patent. Such infringement products, services and software’s include defendants set top box products, services and software.

‘314 patent relates to purchase and delivery of video content via internet. The video content is delivered by secured methods and by using cryptographic methods. Decryption capabilities of data are kept with video merchant. When a buyer asks for a particular video, the decryption capabilities of the video program are downloaded to an IC card, further used to authenticate and decrypt the data. The video can be downloaded and distributed to the user. The IC card uses the decryption capabilities to partly decrypt the video content without exposing the capabilities to decrypt it.

Microsoft claims a system for purchasing video content programs including a merchant computing unit at a video merchant and a purchaser integrated circuit (IC) card that compatibly interfaces with the merchant computing unit. The purchaser selects a video content program and the merchant computing unit downloads decryption capabilities unique to the selected video content program to the purchaser IC card for use in decrypting the selected video content program. These decryption capabilities include a program key unique to a related video content program and a policy concerning decryption protocols.

TiVo has products in set top boxes domain such as TiVo Premiere and TiVo Premiere XL. These products are having features such as

ü      program recording,

ü      on demand video store,

ü      HD user interface,

ü      online or mobile scheduling of video recording, among others

As the concerned patents relate to online video requests and program display systems, which map to TiVo’s products, it would be interesting to see how the case proceeds.

IIPRD would, based on its preliminary analysis, soon be coming up with its own claim mapping for one of the patents with respect to one TiVo’s products to render its brief opinion on level of literal infringement.

Author: Nagraj Mannikeri, Patent Consultant

The author can be reached: iiprd@iiprd.com

Due Diligence Search Strategies…2

This article is in continuation with the blog “Due Diligence Search Strategies for Determining Patentability of Exemplary Indian Patent Applications”  by IIPRD (Please click here to read the blog), an initiative from IIPRD to randomly pick up recently published Indian patent application and try and understand the chances of getting a valid patent. IIPRD made note of an Indian Patent Application, which has been recently been published in the Indian Patent Journal relating to methods and systems for selecting a mobility anchor point for a mobile node in a network.

In summary the patent discloses, a Multi-node (MN) that connects to an access point for performing communication. The communication may be performed by transmitting and receiving messages between the access point and the mobile device. When the MN moves out of the coverage area of an access point, then a handoff process occurs. During the handoff process, the MN tries to select another possible access point, according to the present invention, by determining speed of the mobile node in the network and by determining a domain of migration of the mobile node.

The Applicant is intended to claim the following:

1. A method for selecting a mobility anchor point for a mobile node in a network, the method comprising:

determining speed of the mobile node in the network; determining a domain of migration of the mobile node; and selecting the mobility anchor point based on the speed and the domain of migration.

Based on quick due diligence, IIPRD identified few prior arts that can be considered material for invalidation on the present patent application. The prior arts include:

  1. Mobility anchor point selection based on user mobility in HMIPv6 integrated with fast handover mechanism – Published in 17 March 2005
  2. A performance comparison of mobility anchor point selection schemes in Hierarchical Mobile IPv6 networks – Published in 07 October 2005.
  3. History based Auxiliary Mobility Management Strategy for Hierarchical Mobile IPv6 networks – Published in 07 July 2005.

Discussing further, part of claim mapping is cited below for the first prior art.

Claim 1 of Patent Application Cited Portions of Prior art(Non Patent Literature 1 by E. Natalizio et al)
A method for selecting a mobility anchor point for a mobile node in a network, themethod comprising: In the context of Hierarchical Mobile IPv6 integrated with Fast Handover mechanism, this paper proposes two Mobility Anchor Point (MAP) selection algorithms, both based on the classification of users depending on their mobility (Abstract)
determining speed of the mobile node in the network; Furthermore reference [8] foresees the use of the mobile user speed combined with the preference field of the MAP as an input for MAP selection.The algorithms presented in this work follow this specification, classifying users depending on their “mobility” (Page 3, Map Selection Algorithms).
determining a domain of migration of the mobile node; To avoid this situation FHMIP-NH considers a direct effect of users high mobility: the time needed to perform a certain number of handovers (from this the suffix NH). The shorter this time, the higher the estimated user’s mobility, and, consequently, the higher the hierarchy level to be assigned to the MN. The values of the time thresholds are in Table II and the procedure to calculate them is described in the previous section. (page 4, FHMIP-NH)
and selecting the mobility anchor point based on the speed and the domain of migration. Reference [8] suggests a distance-based method of MAP selection, where a mobile node may choose to register with the furthest MAP to avoid frequent re-registrations. Furthermore reference [8] foresees the use of the mobile user speed combined with the preference field of the MAP as an input for MAP selection.The algorithms presented in this work follow this specification, classifying users depending on their “mobility”. (Page 3, Map Selection Algorithms).

It is further to be noted that there are many valid grounds to reject a patent under section 25 of Indian Patents act, 1970.  Few Important grounds are stated here:

Important Grounds under Opposition to grant of patent:

Section 25 (1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground –

(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim

(i)  in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or

(ii)  in India or elsewhere, in any other document; provided that the  ground specified  in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue if sub-section (2) or sub-Section(3) of Section 29;

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Pre-grant Opposition under Section 25(1) (b) (i) and under Section 25 (1) (e) under the grounds that the patent publication in light of the above cited prior art(s) can be rendered non-novel/obvious and hence non-patentable.

We believe that it is the right time to conduct a comprehensive due-diligence to understand the type of patents being filed currently by Indian and International Corporates, analyze the scope of protection that might be accorded from a functional and structure/construction perspective, and also assess the manner in which they might later impact the products/services being launched by Corporates and specially start-ups in the same domain.

Please note that the above analysis and the opinion presented are solely performed by IIPRD professionals and the views are solely their own and not be relied and intended to be legal advice about particular problems and. Corporates who are interested in filing a pre-grant oppositions are advised to carry out further due diligence for the same. For any comments or queries, please mail us to iiprd@iiprd.com.

Author – Veera Raghavan Rajendran,

Patent Specialist, IIPRD.

The Author of the Blog can be reached: Raghavan@iiprd.com.

Due Diligence Search Strategies for Determining Patentability of Exemplary Indian Patent Applications

When Patent experts advise to Large and Small Corporations and Institutes to focus on Due-Diligence before filing patent application, it’s not without any substantive motive. What is the point of having a patent, even though it gets a grant, if the same is not enforceable? It’s almost like having a piece of paper with no economic and commercial viability. Its known that almost 40% of the total number of patents granted in US are challenged on validity at some point or the other of their legal life. With the increasing load of the respective country’s patent offices, an increasing percentage of such patents being challenged are actually held invalid. This leaves the patent owner with the complete risk and responsibility to ensure that a thorough search is conducted prior to any processing of preparation and filing of a Patent Application.

In the Indian context, even though pre-grant oppositions are not a very common phenomenon right now and are typically restricted to the pharmaceutical sector, mostly because of legacy and “react when you get hit mentality”, the time is not far when Corporates realize the importance that a granted patent could have on the business execution. Such patent might not stop the complete business functioning of a Corporate but sure can make a small dent by a legal suit followed by certain damages or injunctions. Why not take an easier route and be diligent in filing a pre-grant opposition as a proactive step and negate th patent itself in the first place. Any Person, according to section 25 of Indian Patents act, 1970, can apply for a Pre-grant opposition for a published patent application in India.  In the recent past, Potential people (including Potential Infringers!) can file an Pre-grant Opposition under Section 25(1) in the Indian Patent Office against this concerned Patent Application by presenting relevant prior arts/documents based on which this patent can be rendered non-novel/obvious and hence non-patentable. This pre-grant opposition needs to be filed before the grant of this Indian Patent Application.

This article is merely an effort and initiative from IIPRD to randomly pick up recently published Indian patent application and try and understand the chances of getting a valid patent. IIPRD made note of an Indian Patent Application, which has been recently been published in the Indian Patent Journal, relating to a web guide and particularly to a method and system for dynamically presenting a website.

In summary, the patent disclosure relates to a user specifying his initial interests which are collected to generate a preference profile for the website. Given the preference profile, a web guide automatically restructures the website presentation in such a way that the website looks as if it has been ‘made for me’. That is, the presentation of the website is personalized for the user. Unlike conventional personalization which only allows the user to select a background, font color, and other limited choices, the web guide leads navigation of the website. That is, the web guide synchronizes the displayed web content (data, information, etc.) with the specified interests of the user. The web guide further provides the user with queries and prompts based on the user’s preferences, and the returned content is subsequently used to further guide the user in his navigation. These queries and prompts are designed to follow the logic of a human tour guide. That is, the queries and prompts of the web guide focus further searching by providing guidance that is related to the preferences already expressed by the user and thus more likely to be relevant to the user.

The Applicant is intended to claim the following:

1. A server comprising:
computer executable instructions configured to:
present an initial home page, the initial home page including initial preference options;
receive initial preference option data corresponding to the initial preference options;
retrieve select first data based on the initial preference option data; and
structure a first presentation of a website based on the select first data, the first presentation including a closed set of subsequent preference options based on the select first data.

Based on quick due diligence, IIPRD identified few prior arts that can be considered material for invalidation on the present patent application. The prior arts include US Patent publication no. 2008/0209336, US Patent No. 7,353,460 and US Patent No. 7,743,334.

Discussing further, part of claim mapping is cited below for the first prior art.

Claim 1 of Patent Application
Cited Portions of Prior art(US7,743,334)
A server comprising computer executable instructions configured to: A method for dynamically adding and removing elements from a web-application list module in a web server, comprising: (Independent Claim 5)
present an initial home page, the initial home page including initial preference options; providing a web page with a set of configurable elements to be viewed by a user; using an iFrame element to display content of the web page;
retrieve select first data based on the initial preference option data; and receiving at least one of a user preference into an edit box with a button within an initial display of the web page to add a configurable element and the user preference at the initial display of the web page to remove the configurable element;
structure a first presentation of a website based on the select first data, the first presentation including a closed set of subsequent preference options based on the select first data. communicating with another computing device using XMLHTTP to obtain one or more data in response to the user preference to add or remove the configurable element; (Independent Claim 5).

It is further to be noted that there are many valid grounds to reject a patent under section 25 of Indian Patents act, 1970.  Few Important grounds are stated here:

Important Grounds under Opposition to grant of patent:

Section 25 (1) Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground –

(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim

(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or

(ii) in India or elsewhere, in any other document; provided that the  ground specified  in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue if sub-section (2) or sub-Section(3) of Section 29;

(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant’s claim;

Pre-grant Opposition under Section 25(1) (b) (i) and under Section 25 (1) (e) under the grounds that the patent publication in light of the above cited prior art(s) can be rendered non-novel/obvious and hence non-patentable.

We believe that it is the right time to conduct a comprehensive due-diligence to understand the type of patents being filed currently by Indian and International Corporates, analyze the scope of protection that might be accorded from a functional and structure/construction perspective, and also assess the manner in which they might later impact the products/services being launched by Corporates and specially start-ups in the same domain.

Please note that the above analysis and the opinion presented are solely performed by IIPRD professionals and the views are solely their own and not be relied and intended to be legal advice about particular problems and. Corporates who are interested in filing a pre-grant oppositions are advised to carry out further due diligence for the same. For any comments or queries, please mail us to iiprd@iiprd.com.

Author – Veera Raghavan Rajendran,

Patent Specialist, IIPRD.

The Author of the Blog can be reached: Raghavan@iiprd.com.