Category Archives: High Tech Patent Litigations

Blogs in this Category would include all Patent Litigations in Hi-Tech Technology Domain with focus on IIPRD’s analysis and key take away strategies from the Litigation.

Nokia & IPCOM

The claimant, Nokia Corporation, seeks revocation of European Patent (UK) No. 1 841 268 (“the patent” or “268”) which belongs to the defendant IPCom. This action is yet another stage in the litigation which is pending in a number of jurisdictions in relation to the mobile telephony patent portfolio which IPCom purchased from Robert Bosch GmbH. Earlier this year, the company lost an appeal over another patent claim. The company was seeking to claim EUR12 billion (US$16 billion) from Nokia based on the calculation of 5 percent of Nokia’s mobile phone sales in countries covered by the patents, or EUR 600 million (US$840 million) a year over 20 years.

Nokia had been seeking the revocation of European Patent (UK) No. 1 841 268 (‘268 Patent) belonging to IPCom. In addition, by counterclaim, IPCom alleges infringement of 268 in respect of a number of mobile phones sold by Nokia. Nokia denies infringement. The ‘268 patent is itself a patent which was divided out of European Patent No. 1 186 189 (“the parent patent”). Like the parent patent, ‘268 is concerned with managing the problem of contention on a random access radio channel uplink between mobile phones and a network base station.

Regarding the validity of the patent, Judge held that “It is of course always necessary, at the end, to take a step back and ask whether the claim embodies an inventive step, both in the case of the attacks based on specific publications and in the case of the common general knowledge. Nokia submitted that the invention achieved nothing in terms of functionality as compared with, say, IS-95. That is correct as far as it goes, but it does not follow that IPCom’s approach to achieving that functionality is obvious. It is entirely possible that invention lies in achieving the same functionality in a different way. In the end I was not satisfied that any of Nokia’s four starting points rendered IPCom’s solution obvious. It follows that I reject all the attacks on the 268 patent based on obviousness”

Infringement

There is a Product and Process Description for each of 14 types of Nokia device. The High Court held that the ‘268 Patent was infringed by two Nokia devices: “the A1″and “the A2″,but Nokia were granted a declaration of non-infringement in respect of Nokia’s devices, labeled B1,B2,C1,C2,D1,D2,E1,E2,F1,F2,G1 and G2.

High court clearly analysed the infringement by mapping the features of devices A1 and A2 of Nokia with the Independent claim 1 of ‘268. Independent claim1 of ‘268 patent is broken as follows:

[A] Mobile station for operation in a UMTS mobile radio network

[B] in which multiple user classes are distinguished

characterised in that the mobile station is arranged

[C] to read a user class from a SIM card

[D] to receive access threshold value bits and access class information over a broadcast control channel

[E] to determine an access threshold value from the access threshold value bits

[F] to use the access class information relevant for the user class to determine whether

[G] the mobile station is permitted to access a random access channel, for example RACH, independent of the received access threshold value bits

[H] or whether the access permission for the random access channel, for example RACH, is determined on the basis of an evaluation of the access threshold value.

Infringement

  • The Nokia device described as A1 operates as follows. The mobile is designed to receive two parameters of relevance. These are the dynamic persistence level, N, and the AC to ASC mapping information.
  • Any device operating in accordance with the A1 method must be a member of at least one Access Class (AC). There are 10 normal ACs, numbered from 0-9. Every device must be a member of one of those normal ACs and the number of the particular AC to which the device belongs is stored on its SIM card. There are another 5 special Access Classes (11-15) designated for use by special groups of users such as emergency services and network staff. All access classes may be barred at any time by the network.
  • The next thing which it is necessary to understand is how the A1 selects an Access Service Class (“ASC”) which it will use for its access attempt. These ASCs are different from the AC stored on the SIM.. The transmitted data includes an element entitled “AC-to-ASC mapping”. This allocates each AC to an ASC. There are 8 ASCs numbered from 0-7. The mapping is carried out by the device reading the information element (IE) in the System Information Block appropriate to its AC. The way this is done is set out in Table 2 taken from the A1 Product and Process Description. ACs 0-9 look at the first IE in the block, 10 the second, 11 the third and so on.

  • Depending on which ASC has been allocated by the mapping process, the device works out a “persistence value” known as P(i), (not the same as the dynamic persistence level, N, sent by the network). The way this is done is set out in Table 1 taken from the A1 Product and Process Description.

  •  It can be seen that there is a difference between ASC 0 and the other ASCs. If a device is in ASC 0 the device automatically sets its persistence value, P(i), to 1. This conclusion is arrived at directly from the AC to ASC mapping and not from the other parameter of importance, the dynamic persistence level, N.
  • On the other hand, if a device is in one of the other ASCs (1-7), it has to carry out a calculation using the dynamic persistence level, N, sent by the network.
  • So P(N) is a function of (i.e. mathematically dependent on) the transmitted dynamic persistence level.
  • Devices which are mapped to ASC 0 by the network will automatically pass the persistence test because the random number can never exceed 1. Those devices which are mapped to ASC 1 or higher may or may not pass the persistence test. Whether they pass the persistence test depends on the value N sent by the network.

The judge held that Nokia device A1 in summary held that:

i) the bits used to transmit the dynamic persistence level, N, constitute the access threshold value bits;

ii) the AC to ASC mapping information constitute access class information;

iii) P(N) is an access threshold value which is determined from the access threshold value bits;

iv) the AC to ASC mapping information is used to determine whether the device is in:

a) ASC 0, in which case it is permitted to access the RACH independent of the received access threshold value bits because it has a P(i) value of 1 which is not a function of the persistence level N which is being broadcast by the network; or

b) an ASC other than 0 in which case it must determine access permission on the basis of an evaluation of P(N) which comprises a comparison of P(N) with a randomly generated number.

In the A1device the random number comparison gives a win/lose determination on permission, whereas in the A2 it determines the extent to which permission will be delayed. However, the judge held that, in both cases access permission is determined on the basis of an evaluation of the access threshold value and thus infringing ‘268 patent.

About the Author: Mr. Veera Raghavan, Patent Specialist at IIPRD and can be reached at: Raghavan@iiprd.com

ENERCON INDIA LTD. (EIL) VS. ENERCON GMBH (EG)

This article is directed to interested persons who have not been regularly following the Enercon Case, one the few patent litigation battles which have seen the light of day and is setting new standards in decision making on issues relating to formality rejections and obviousness/inventive step issues. This article puts a quick snapshot of what has happened so far in the contention along with the facts involved in the case:

Introduction Facts:

  1. EG is among the world’s leading wind turbine manufacturers and had set up EIL in 1995 having 56% stake in the company. After company level disputes EIL litigated against EG with as a result retaining control of EIL and Mr. Mehra remaining the Managing Director of the company.
  2. Disputes over certain Licensing agreements led to EIL filing invalidation appeals/revocation petitions at the Intellectual Property Appellate Board for 23 patents (in the name of Mr. Wobben) of EG in Jan 2009. After hearing both parties through October and November, 2010, a bench of the IPAB, consisting of Mr. S. Chandrasekharan sitting as Technical Member and Ms. S. Usha sitting as Judicial Member revoked 12 EG’s patents. Decision of IPAB on the preliminary matters relating to Misc. petitions, dated 27’th July 2010, can be seen here in which IPAB directed miscellaneous petitions to be considered along with the respective original Revocation applications thereby dismissing the writ petition.
  3. EG made an appeal against this preliminary order of the IPAB, praying for the Madras High Court to issue a writ of certiorari to strike down the impugned order. Judgment is made available here. The issue at discussion was the whether Mr. Yogesh Mehra, MD, of EIL, had the locus standi to maintain the application for revocation. On the one hand, according to the respondent, Mr.Yogesh Mehra relied on a Board resolution dated 27.04.2007, which according to them authorized him to institute suits and proceedings on behalf of the company. This was contraverted by the writ petitioner EG by stating that the resolution dated 27.04.2007 was void and non-est. The Madras High Court relied on the decision by the Hon’ble Supreme Court in the case of M/s. Fomento Resorts and Hotels Ltd. and specifically took note of the fact that when, there is a possibility of appeal all issues have to be taken up and decided. As the facts of the case clearly indicate that there is a definite possibility of appeal against the decision of the Tribunal and the present writ petition itself is one such illustration. Therefore, court ordered that the Tribunal rightly directed miscellaneous petitions to be considered along with the respective Original Revocation Applications thereby dismissing the writ petition.
  4. Substantive disclosures of how the 12 patents were striked down have not been right now made available but one such order was for Patent No. 199045 dated 3’rd December 2010 has been shared by MIPR.
  5. Furthermore, even though issues relating to locus standi were raised by the EG’s counsel which discussed on whether Mr. Mehra could be considered as an interested person, our discussion is strictly on the technical side of patent revocation and not on the legalities relating to authorization of Managing Director who has not been duly authorized by the Board of the Indian Company viz. EIL to sign the revocation application and further his ability also to file the affidavit in respect of the revocation application for the revocation of the subject patent..

Analysis of One Exemplary Patent:

Indian Patent No. 199045 (Corresponding WIPO Application can be accessed here)

Abstract:

The present invention concerns a wind power installation having a tower head of the wind power installation, comprising a flange for receiving a connection which is suitable for receiving the tower head ,f the wind power installation. Therefore the object of the invention is to provide a tower of a wind power installation having a flange for receiving a connection, wherein the tower does not suffer deformation in respect of its cross-section, in particular in the region of the flange, by virtue of the inherent weight of the tower, during manufacture and/or transport. A tower of a wind power installation for carrying a tower head of the wind power installation, comprising a flange for receiving a connection which is suitable for receiving the tower head of the wind power installation, characterized in that there is provided a partition or a ring bulkhead in the tower interior at a spacing of between preferably 1.0 m and 7.0 m from the flange, and the partition or the ring bulkhead substantially forms a disc which is connected to the tower wall in the tower interior and passes through the tower.

First Independent Claim as granted:

1. A wind power installation having a tower head of the wind power installation, comprising: a tower for supporting the tower head, the tower having an interior and a flange for receiving a connection that is suitable for receiving the tower head of the wind power installation; and a ring bulkhead in the tower interior at a spacing of between 1.0 m and 7.0 m from the flange, wherein the ring bulkhead substantially forms a disc that is connected to an interior wall of the tower.

Reliance was made on US Patent No. 3,761,067 having cited portions Col 1 (Lines 3-5) disclosing cooling towers, Col 1 (Lines 25-30, and Lines 43-44) for giving relation to the same problem that patent under revocation is attempting to provide a solution for, Col 1 (Lines 46-54) and Col 1 Lines 62-65 disclosing stiffening rings for force distribution, wherein the rings are ring or disc shaped.  ‘067 therefore disclosed the proposed inventive step of the subject patent by disclosing a ring structure in the tower, wherein the ring is disc shaped.

It was furthermore stated that a tower having a flange was already admitted by the Applicant of the patent under contention to be existing in the art and hence made part of the Background section of the patent application by stating that “A flange is usually provided at the end of the tower, in the case of the steel towers. That flange forms the flat support surface of the tower for receiving an azimuth mounting, in which respect ball-type rotational connections as are known in the general art are predominantly used as the azimuth mounting. This is shown in Figure 1.” Hence a flange for receiving a connection of a tower head couldn’t be considered as an inventive step.

Reliance was also made on US Patent No. 1,947,515 titled Elevated Tank wherein Page 2 Lines 90-99 was submitted to have disclosed use of a ring 27 which was riveted or welded circumferentially within the tower.

Reliance was also made on US Patent No. 4,261,931 titled “Cooling tower with fluted wall” discloses with cited portion being Col 5, Lines 30-40 wherein horizontal circular rings were disclosed to withstand the compressive loads.

Reliance was also made on US Patent No. 4,010,580 on similar inventive step grounds.  It was also stated that all the above four cited prior art references have not been discussed or been deliberated before in the prosecution for the corresponding patent in other geographies including US, EP, or India and hence the prior arts are valid and should be considered relevant.

It was finally concluded that “Comparing the inventive features in ’067 patent and the inventive features as construed from the principal claim 1, no difference in the invention claimed in the claim of the impugned patent could be perceived or notices.” It was therefore ordered by Mr. S. Chandrasekharan sitting as Technical Member and Ms. S. Usha sitting as Judicial Member that the application for revocation of patent has been allowed.

  1. After having 12 of its patents striked down by IPAB, EG, in Feb 2011, surprisingly filed an appeal before the writ jurisdiction of the Delhi High Court against the Orders of the IPAB striking down 12 patents belonging to Dr. Wobben even though the case would typically have come under the jurisdiction of Madras High Court as IPAB that heard the revocation proceedings was based on Chennai and not in Delhi.
  1. In April 2011, it has also been reported that Enercon GMBH has also filed further writ appeals before the Madras High Court against the Orders of the IPAB revoking several of his patents. The appeals have therefore been filed in both the jurisdictions
  1. In the latest bit of update on the progress of the case, Enercon GMBH filed applications for withdrawal of three of its appeals for counterclaim against 3 of its revoked patents were accepted by the Delhi High Court. As the appeals against the other 9 revoked patents are going on in Madras High Court, it is quite possible that these 3 withdrawn appeals might get filed at the Madras High Court for consistency and other possible reasons.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.

Clear and Convincing …Says US Apex

This blog is just an update of the US Supreme Court hearing in the case “Microsoft Vs. i4i”.  For more details about the initial proceedings, please click here to visit my earlier blog “Clear and Convincing evidence” posted on January 10th 2011.

The patent act indicates that issued patents are “presumed valid.” 35 U.S.C. § 282. In this case, Microsoft challenged the strength of that presumption — arguing that a low “preponderance” standard for proving invalidity should be sufficient rather than the higher “clear and convincing” standard required by the Court of Appeals for the Federal Circuit. The Supreme Court verdict was “We consider whether §282 requires an invalidity defense to be proved by clear and convincing evidence. We hold that it does.” Microsoft will now likely be forced to pay the $290 million judgment for infringing i4i’s patents.

The Supreme Court has rejected Microsoft’s argument and affirmed the Federal Circuit’s strong presumption of proof. Justice Sotomayor delivered the opinion for seven of the justices. By the time Congress enacted §282 and declared that a patent is “presumed valid,” the presumption of patent validity had long been a fixture of the common law. According to its settled meaning, a defendant raising an invalidity defense bore “a heavy burden of persuasion,” requiring proof of the defense by clear and convincing evidence. That is, the presumption encompassed not only an allocation of the burden of proof but also an imposition of a heightened standard of proof. Under the general rule that a common-law term comes with its common-law meaning, we cannot conclude that Congress intended to “drop” the heightened standard proof from the presumption simply because §282 fails to reiterate it expressly.

The Supreme Court similarly rejected Microsoft’s alternative proposal that the presumption of validity be weakened for validity challenges that were not considered by the USPTO during prosecution of the application. However, the Court did agree with Judge Rich’s American Hoist opinion that “new evidence” of invalidity likely carries more weight than evidence that had been previously considered and rejected by the Patent Office. In what may become the most litigated aspect of the decision, the Supreme Court says:

“Simplifying, if the PTO did not have all material facts before it, its considered judgment may lose significant force. And, concomitantly, the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain. In this respect, although we have no occasion to endorse any particular formulation, we note that a jury instruction on the effect of new evidence can, and when requested, most often should be given. When warranted, the jury may be instructed to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent. When it is disputed whether the evidence presented to the jury differs from that evaluated by the PTO, the jury may be instructed to consider that question. In either case, the jury may be instructed to evaluate whether the evidence before it is materially new, and if so, to consider that fact when determining whether an invalidity defense has been proved by clear and convincing evidence. Although Microsoft emphasized in its argument to the jury that S4 was never considered by the PTO, it failed to request an instruction along these lines from the District Court. Now, in its reply brief in this Court, Microsoft insists that an instruction of this kind was warranted. That argument, however, comes far too late, and we therefore refuse to consider it.”

In its opinion, the court acknowledged policy arguments both for and against a strong presumption of validity (Citing Lemley & Lichtman), but in the end decided that it was bound to follow Congress and the common law precedent.

Author – Veera Raghavan Rajendran,
Patent Specialist, IIPRD.
The Author of the Blog can be reached: Raghavan@iiprd.com.

DataCard Corporation Vs Eagle Technologies – Part 1

Introduction:
It is a direct Patent Infringement case, claimant “Data card Corporation” (Datacard) sued Eagle technologies for infringing its couple of patents: UK 1458572 (‘572) and UK 1534530 (‘530) and also couple of trademarks: UK 1399698 (‘698) and UK 1399699 (‘699). When I was searching case laws to understand the degree of obviousness, especially in the field of mechanical engineering, from English courts I came across this wonderful case and hence thought of blogging on the same. In Part – I, I have decided to pen down the insight arguments between the claimant and the defendant and also to summarize the judgment for the ‘530 Patent. Although, Eagle accepts the infringement of its products, it questions the validity of the “530 patent. The case principally involves thermal transfer printing.

‘530 Patent:-
The ‘530 patent entitled “Supply items for printers and the like, and method of loading supply items” has a priority date of 31st July 2002. The invention relates to printers, laminators and other equipment to produce data bearing identification. In particular, the invention relates to supply items (Ribbon, webs that carry laminate patches, cleaning tape, holographic overlays, and other exhaustible web materials) in such equipment and to a method for facilitating the loading of the supply item into the equipment.

The patent describes a supply item and a carrier that are modified to facilitate loading of the supply item onto the carrier in the proper orientation, and the carrier can be more easily loaded into the production equipment in the correct orientation.

The supply item 10 includes a print ribbon 12 wound onto a supply cylinder 14. The supply cylinder 14 includes first and second ends 20a, 20b and is generally hollow from the first end to the second end. Likewise, the take-up cylinder 18 includes first and second ends 22a, 22b and is generally hollow from the first end to the second end. Preferably, the ends 20a, 20b, 22a, 22b of the cylinders 14, 18 are designed to facilitate loading of the cylinders 14, 18 onto a carrier 24 in the proper orientation, thereby simplifying ribbon replacement. Mostly a difference in the geometry of the ends of the cylinders 14, 18 is used to achieve the simplified replacement.

With reference to Figures 1, the ends 20a, 20b of the cylinder 14 each define an opening having an area, with the area of the opening at the end 20a being substantially equal to the area of the opening at the end 20b. In addition, the ends 22a, 22b of the cylinder 18 each define an opening having an area. However, the end 22a of the cylinder 18 is closed by a wall 26 that forms part of a cap 28 that is connected to the end 22 of the cylinder 18. An opening 30 is provided in the wall 26. Thus, the area of the opening 30 at the end 22a is different than the area of the opening at the end 22b, and the area of the opening 30 is different than the area of the opening at the end 20a of the cylinder 14. The difference in the geometry of the openings at the ends 20a, 22a of the cylinders 14, 18 limit how the cylinders 14, 18 can be connected to the carrier 24. While the end of the cylinder 18 is described as having an opening 30 with an area less than the opening at the end of the cylinder 14, it is to be realized that the reduced area opening can be provided on the cylinder 14 rather than on the cylinder 18.

The inventive concept of claim 1, after amendment, explains that one end of one of the cylinders of a supply item has a different geometry to that of the other three ends so that the supply item can be correctly loaded onto a carrier having appropriately-shaped spindles.

Obviousness over Fargo Pro-L (US Patent No 5,755,519):

The Fargo Pro-L printer has four hubs, three of which are large and one of which is smaller. The ribbon is supplied on two cylinders. One of the ends of the cylinders is different to the other three ends in that it is fitted with a closely fitting circular insert. This insert has an aperture which is concentric with the circumference of the insert and the inner circumference of the cylinder. The insert contains a number of metal pins disposed in a circle concentric with the aperture. The aperture enables the end of the cylinder with the insert to fit onto the smaller of the four hubs, but is not large enough to fit properly onto the other three hubs.

Difference between ‘530 and Fargo Pro-L:
The differences are that, in Fargo Pro-L the cylinders are directly loaded onto hubs in the printer. On the other hand, in amended claim 1 of ‘530 the cylinders are loadable onto spindles on a carrier, the cylinders have ribs on their interior surfaces and the differences in the ends of the cylinder are capable of limiting how the cylinders can be connected to a carrier.

Defendants Arguments:

Eagle contends that there is a disadvantage with the method of loading the ribbon used in the Fargo Pro-L as it was fiddly to fit the cylinders onto the four hubs inside the printer. A well-known and obvious alternative method of loading a ribbon in 2002 was direct loading onto two spindles in the printer. Once the skilled team decided to adopt the direct loading onto spindles approach, it would have been immediately apparent to them that the cylinders would need to have ribs on the inside so as to enable the spindles to drive the cylinders. At that point they would have arrived at a supply item within amended claim 1, because the geometry of the ends of the cylinders would be capable of limiting loading onto spindles on an appropriate carrier.

Judge dismissed Datacard five arguments that were crucial in determining the obviousness:
First, DataCard argues that the skilled team would have no motive to change from the hub design of the Fargo Pro-L. Judge did not accept this arg. and said that the absence of motive is not conclusive Changing from one well-known ribbon loading arrangement to another one is not something that requires a specific motive, because they are technically obvious alternatives to each other. Furthermore, in the present case there would be a motive, namely the desire for a less fiddly method of loading the ribbon.

Second, the skilled team would have motive not to change it. Judge refused this arg. and said by changing the loading method from hubs to spindles would not necessitate changing the insert, nor prevent the ribbon being identified by means of a Hall Effect sensor.

Third, if the skilled team decided to change from hubs to spindles, it would be into a complete re-design of at least the ribbon-loading aspects of the machine. Judge refused this point by saying if differential geometry of the ends of the cylinders in terms of preventing error loading when combined with suitable hubs would be apparent to the skilled team, then it would not take invention to appreciate that precisely the same advantage could be obtained when replacing hubs driven by means of notches with spindles driven by ribs.

Fourth, judge, for the above reasons, refused to accept Expert witness evidence that the two systems involved a different constructional principle, and therefore a wholesale re-design would be required.

Finally, DataCard submitted that account should be taken of Expert Witnesses evidence in his reports as well as his evidence in cross-examination. Although Judge have taken Witnesses evidence and its reports into account, this does not assist DataCard for the simple reason that in his reports Expert Mr Klinefelter did not consider the case which was put to him in cross-examination.

Obviousness over Brother (US Patent No. 6,257,780):
Judge is of the opinion that the arguments in relation to Brother are similar to those in relation to Fargo Pro-L. So far as amended claim 1 is concerned, Eagle’s case is that an obvious alternative to the different notches on the spools in Brother would be to drive the cylinders by means of ribs inside and to change the geometry of one end in a different way by making one of the apertures of the cylinders smaller than the others. Judge agreed to Eagles argument.

Obviousness over Sharp (Japanese Unexamined Patent Application No. H10-329378):
Sharp is a similar proposal to Brother. Counsel for Eagle accepted that Eagle’s case in relation to Sharp was virtually identical to its case in relation to Brother.

It is seen that the case laws, for obviousness, interpret the evidence and the prior arts from the person who is skilled in the technology. From his point of view Judge questions the Expert witnesses of both the parties. Infact Judge questions the witnesses as to whether the prior art leads a motive to develop to the present patent in question? Whether, skilled team can arrive only to this technology as an alternative to the existing technology in the prior art? and so on. There are certain differences in the degree of obviousness from US courts and English courts point of view. Graham factors, the core factors for finding the obviousness include many factors and are very rigid in nature.

In the next part, we will see the obviousness case of ‘572 patent to assess the degree of obviousness in the UK courts in a detailed manner.

Author – Veera Raghavan Rajendran,
Patent Specialist, IIPRD.
The Author of the Blog can be reached: Raghavan@iiprd.com.

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.

“Clear and Convincing Evidence”

Case “Microsoft Vs i4i” interests me as I saw the recent Supreme Court decision to hear this case again.

Long story in short, i4i filed a patent in 1994 and gets granted on 07/98 (US 5,787,449). ‘449 relates to a system and method for the separate manipulation of the architecture and content of a document, particularly for data representation and transformations. Interestingly, Microsoft, in its new product, described the new feature as “truly integrate your documents with business processes and business data,” and explained the role of XML Data Store in MS Office 2007 documents. Unfortunately, description of the MS Office document XML Data Store basically equates to the i4i patent’s description of the “raw content area.” Similarly, Microsoft description of the “relationship from the main document” to the data stored in the XML Data Store relates to the i4i patent’s metacode mapping.

I4i sued Microsoft for Patent infringement and in turn Microsoft requested and filed a Re-examination of the ‘449 Claims citing Prior arts ”DeRose” and “Cowan”. The Lower court said that the ‘449 Claims are valid and Microsoft decided to appeal to the Federal court. Even CAFC, affirmed the lower courts decision and ordered a heavy injunction on Microsoft. With a clear infringement, Microsoft has got less or no space in fighting for technicality or Novelty requirements of ‘449 Patent.

Knowing this, Microsoft has appealed to the apex court in an interesting manner. Microsoft is expected to attack the system of validating patents itself.  For sure, it will request the apex court to consider and lessen the burden of defendants to show prior arts for“clear and convincing evidence”. On the other hand i4i Chairman Loudon Owen warned about Microsoft’s argument that patent invalidity should be held to a lower standard. “The attack on patent holders and the adverse implications from the standard Microsoft is proposing is unprecedented and would deal a devastating blow to any U.S. patent holder, large or small,” Owen said. “Naturally, the proposed standard would be particularly destructive to the value of patents for inventors, technology pioneers and entrepreneurial companies that don’t have the resources of Microsoft and other giants.

We will come to know, whether the Supreme Court will nod for the change in Legal system, particularly the burden of Proof section, when the case to be heard in Spring 2011.

Author – Veera Raghavan Rajendran,

Senior Patent Consultant, IIPRD.

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

 

 

Claim Construction – Interpretation to Determine Obviousness

The present case relates to reexamination (Reexamination No. 90/008,482) of US Patent No. 5, 236, 503, referred to as ‘503 hereinafter. The concerned Applicant GLATT AIR TECHNIQUES, INC. (referred to as Glatt hereinafter) appealed against the order of the Board of Patent Appeals and Interferences, which was decided on 5’th Jan 2011.

As an introduction, a third party requested ex parte reexamination of the patent. The U.S. Patent and Trademark Office (“PTO”) granted reexamination as to claims 5-8 and 10 of the ’503 patent. During reexamination, Glatt canceled claims 6, 7, and 9-11, limiting the reexamination to un-amended claim 5 and amended claim 8. The examiner rejected claim 5, but allowed amended claim 8. Glatt appealed the examiner’s rejection of claim 5 to the Board, which affirmed the examiner’s rejection.

The invention relates to a coating apparatus known as a “Wurster Coater” used to coat particles, e.g., pharmaceutical ingredients. Wurster coaters work by spraying the desired coating material onto particles circulating within the apparatus. The existing coating apparatus suffer from particle agglomeration, which increases the amount of time it takes to coat the particles. This agglomeration occurs because the circulating particles prematurely enter the stream of coating spray before the spray pattern has fully developed. This premature entry causes the particles to become overly wet and to stick together thereby causing blockages in the apparatus.

Glatt’s solution to this problem involves shielding the coating spray nozzle to prevent the particles from entering the spray prematurely. Glatt does this by creating a cylindrical partition that surrounds the coating spray nozzle and acts as a physical shield to prevent premature entry of the circulating particles. Col 5 Lines 3-12 of the Specification of Glatt’s patent additionally notes that “other shielding arrangements may be utilized. For example, shielding of the spray nozzle may be accomplished by formation of an air wall or stream that surrounds the nozzle and prevents particles from prematurely entering into the spray pattern.”

Following is the contested claim 5 of Glatt:

5. In a fluidized bed coater having a product container opening upwardly into an expansion chamber and downwardly into a lower plenum chamber through an air distribution plate/screen having openings formed therethrough for upward air flow from said lower plenum chamber into said product container, said product container including a substantially cylindrical partition spaced above said air distribution plate/screen for defining an inner upbed area and an outer downbed area, and an upwardly discharging spray nozzle mounted substantially centrally within said cylindrical partition,

the improvement comprising

shielding means positioned adjacent said spray nozzle for shielding the initial spray pattern developed by said nozzle against the entrance of particles moving upwardly through the upbed.

As can be seen, Claim 5 of the Glatt is written as a Jepson Claim, wherein the preamble is rendered as the prior art and the invention is the improvement. i.e., a shield used in the Wurster coater. Improvement portion of claim 5 also has a means-plus-function limitation—a “shielding means.”, wherein in a means-plus-function claim, scope of the claim is limited to the embodiments listed in the specification of the patent.

As the proposed novel part of the claim was considered as “shielding means positioned adjacent said spray nozzle”, during the re-examination procedure, the examiner identified DE 3323418 (“Naunapper”) and rendered Claim 5 (Jepson Claim) as obvious keeping in mind the embodiment put across in the specification of ‘503 Patent, which stated “shielding means” to include “formation of an air wall or stream that surrounds the nozzle and prevents particles from prematurely entering into the spray pattern”. The examiner contended that Naunapper discloses “an air wall, or air jacket, surrounding said spray nozzle” thereby rendering the Applicant’s invention obvious. After an appeal to the  board, the board of appeals too affirmed with the examiner and contended that the claimed subject matter was obvious as an air wall that surrounds the nozzle as disclosed by Naunapper would render all possible physical or air wall based shielding mechanisms of Glatt obvious.

When the matter was appealed to the US Court of Appeals, the Circuit Judges held that as Glatt does not contest that the preamble to claim 5 is admitted prior art, the inquiry is limited to whether Glatt’s invention as a whole would have been obvious to a person of ordinary skill in the art in view of the prior art Wurster coaters described in the claim and the Naunapper reference. It was understood that both Glatt’s invention and Naunapper’s coating apparatus contain coating spray nozzles and that both also include an air source located below the coating spray nozzle. Further, the air is used to circulate the particles in the apparatus into the spray of coating material.

However, additionally, Glatt’s invention includes an element that reduces particle agglomeration, described and claimed as “a shielding means that prevents the circulating particles from prematurely entering the initial spray pattern”. Naunapper, on the other hand, contains no such element and the PTO argues that the air source itself can be used to generate an air wall that shields the particles from the initial spray pattern. It was further held that the PTO indicates that Naunapper combats the particle agglomeration problem by temporarily increasing the airflow from the air source. The modulated “burst” of air/gas flow generated by this technique clears blockages by blowing through the agglomeration and dispersing the particles.

It was finally held that, that the proposed technique of Naunapper does not shield circulating particles from entering the initial spray pattern and rather merely teaches to remedy the blockage caused by particle agglomeration using bursts of air. In contrast, Glatt’s invention prevents the agglomeration from occurring in the first place. This led to the decision that the Board’s finding that Naunapper teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because Naunapper does not teach shielding but instead discloses the prevention technique of using airflow for combating and clearing of blockages by blowing through the agglomeration. Because Naunapper does not teach shielding, the federal circuit concluded that the Board has failed to make a proper prima facie case of obviousness.

Key Take Away’s:

1.      Determination of scope of protection of a means plus function claim should take into consideration all embodiments disclosed in the specification of the patent application and specifically the preferred embodiments as illustrated/described in the specification.

2.      Disclosing a potentially similar structure but a completely different purpose (an air wall of Naunapper vs.  formation of an air wall or stream of Glatt) does not objectively render the concerned application obvious. The intended purpose too plays a crucial role in determining the teaching or suggestion of the claimed subject matter by the prior art.

About the Author: Mr. Tarun Khurana, Partner and Patent Attorney in Institute of Intellectual Property Research & Development (IIPRD) and can be reached: Tarun@iiprd.com.

Greif & Technocraft

The case is all about a mech. patent granted in Europe in 2008.  The Proprietor (Applicant) Grief International Holding B.V is holding the Patent EP 1467922 (‘922).  The Patent relates to an improved container closure plug having a unique gasket retaining feature.  Interestingly, Technocraft Industries, a company based out of India filed an Opposition in the year 2009 to revoke this patent.

Technical Aspects of the Invention:

The present invention in question provides a closure plug that overcomes the problem of sealing gasket gripping and looping persisted in the available art.  Particularly, the Independent claim of the present invention is given below:

1. A closure plug formed with

i) a cylindrical side wall having an external helical screw thread,

ii) a circumferentially enlarged rim,

iii) an angular gasket seat immediately under the plug rim; and

iv) a continuous circumferential radially outwardly extending gasket retaining lip below the plug gasket seat,

characterized in that:

v) the gasket seat flares radially outwardly and upwardly directly from the root of the gasket retaining lip to meet the plug rim.

From the above claim, it is clearly seen that the subject matter as described and claimed involves a closure plug that has a cylindrical side wall, an enlarged plug rim, an angular gasket seat and a gasket retaining lip.

Opponent Contention:

The Opponent Technocraft cited six new prior arts to destroy the novelty and the inventive step of the claim in question. But during the oral proceedings, Opponent majorly used D5: US 3, 255, 916 Patent (‘916) as his powerful weapon.  The opponent contested that the subject matter present in the ‘916 patent reads the claim elements (feature i – iv) of ‘922.  Opponent further argued that gasket seat 19 from the figures 1 – 3 of ‘916 patent shows a gasket seat that flares radially outwardly and upwardly from the root of the gasket retaining lip to meet a plug rim.  Opponent finally argued that the word “directly” in the characterized portion is not clearly defined in the specification (patent in question) and further suggested the figures 1 – 3 of ‘916 patent shows like the arrangement as claimed in the patent that is in question.

Also, Opponent further cited two prior arts D3 (DE 44 40 852) and D8 (US 4, 768, 677) and merely stated that these prior arts destroy the novelty of the claim in question.

Opponent further cited D8 ‘677 Patent for destroying the Inventive step of the Invention.

Further, the Opponent cited the prior art combinations (D8 + D10) and (D8 + D9) and argued that even if the claim is novel in view of the prior art, it cannot be based on the Inventive step.

[D9: US 1, 964, 603 & D10: DE 810, 413]

Oral Hearing (Feb, 2010):

It is noteworthy to mention that the Proprietor consistently, during the opposition, said that none of the prior arts describe and disclose a gasket seat that flares radially outwardly and upwardly directly from the root of the gasket retaining lip to meet a plug rim. Further, Applicant argues, it is not obvious to a person skilled in the art to combine the prior arts as argued by the opponent.

As a last bomb, the Proprietor in the oral proceeding clearly argues that flaring is the solution to the problem of gripping mentioned in the description and that the seat directly flaring from the root of the lip provides an increased area of contact between gasket seat, as mentioned in the patent, aiding in the solution of the technical problem.

The Chairman who presided the Oral Hearing said that the Opposition division has decided to reject the opposition and to maintain the patent as granted

Take-a-ways from the Author:

The case that was related in this blog reminds us simple things but very clearly.  First of all, it is not the number of prior arts cited but the mapping of each claim elements along with its function is required.  It also reminds us that the innovative elements along with its function should be explicitly described and claimed in any patent application.  Further, in the mechanical invention, keeping the Prior art combinations to a minimum level and citing a prior art that maps the patent in question, by virtue of its function will be greatly rewarded.

REF: Europe Patent Office.

Author – Veera Raghavan Rajendran,

Patent Specialist, IIPRD.

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