Claims


Once upon a time there is a company.  They purchase patents cheaply from entities not actively seeking to enforce them and then enforce patents against purported infringers to obtain bucks.  We called the company, a patent troll.

Generally, patent trolls do not seek out new applications for the technology nor commercialize products related to patents they owned.  Their focus is buying patents to monetize them.  Here is a classic example of a well-known patent troll, St. Clair Intellectual Property Consultants (“St. Clair“) in Grosse Pointe, Michigan.

still camera

Between 1995-2001, St. Clair purchased U.S. patents: No. 5,138,459; No. 6,094,219; No. 6,233,010; and No. 6,323,899 (collectively, “patents-in-suit”) relating to electronic still video camera from a group of inventors (Marc K. Roberts, Matthew A. Chikosky, and Jerry A. Speasl) for $65,000.00And then they sued major electronics and smart-phones corporations (Sony, Canon, Casio, Seiko, Epson, Fuji Photo, Fuji Film, Kyocera, Minolta, Nikon, Olympus, Samsung, Panasonic, JVC, Nokia, Eastman Kodak, Siemens, BenQ, Audiovox, UTStarcom, Sprint Nextel, Cingular, Verizon, Vodofone, Cellco, LG, Motorola, Palm, Sanyo, Concord, Vivitar, Petters, Polariod, Aiptek, HTC, Deutsche Telekom, T-Mobile, Research in Motion (RIM), and General Imaging), alleging infringement of its patents.

St. Clair also sued Eastmen Kodak and requested that U.S. International Trade Commission (ITC) institute an investigation into violation of Section 337 arising from the unlawful and unauthorized importation into the United States, the sales for importation, and/or the sale with the United States after importation, of certain digital cameras that directly contributory, or by inducement, infringe one or more claims of its patents.

In the Section 337 complaint, St. Clair indicated that certain asserted claims of the patents cover (1) technology that relates to formatting of captured images in a digital camera in a choice of file formats such as JPEG, MPEG, or TIFF, to make it easy to use the captured images in popular software programs on personal computers and (2) technology that relates to a digital camera’s formatting of storage media such as a memory card from an Apple-compatible memory format to an IBM-compatible memory format.

St. Clair seek an exclusion order and a cease-and desist order to prevent Eastmen Kodak from continuing to import products that infringe its patents into the United States and sell those products once imported.

During the course of the complaint initiated by St. Clair, Sony filed multiple reexamination requests 90/006,435; 90/006,436; 90/006,437; and 90/006,438 and for all four patents in litigation.  The United States of Patent and Trademark Office (USPTO) issued ex parte reexamination certificates confirming the patentability of all claims in all four patents in litigation.

So far St. Clair has collected in excess of $60 millions from Sony ($25 millions), Canon ($35 millions), and (Fuji Photo and Fuji Film ($3 millions), alleging infringement of its patents.

Sony, Canon, Casio, Koycera, Minolta, Nikon, Olympus, Seiko Epson, Eastmen Kodak, Samsung, LG, Motorola, Sanyo, General Imaging, Pentax have since entered into an agreement with St. Clair to license the patents-in-suit.

On October 26, 2009, St. Clair filed a patent infringement lawsuit against Apple Inc. in Federal District Court in Delaware, alleging that Apple has, by its advertising, product instruction, import and/or sale of electronic still video cameras in the United States infringes on the patents-in-suit.

In the complaint, St. Clair claims that the infringement by Apple of the patents-in-suit has injured St. Clair and will cause St. Clair added irreparable injury and damage in the future unless Apple is enjoined from infringing the patents-in-suit.  However, the complaint does not specify which hardware is believed to be in violation of the patents-in suit.

Tune in for further updates…

DrunkAttorney

A patent practitioner represents an inventor Atsushi Ishihara filed the patent application on a display control apparatus for image forming apparatus.  On July 21, 2003 the patent application was published by the U.S. Patent & Trademark Office.  Everything seems fine, right?  Not exactly.

Apparently, there was a bogus claim (claim 9) included in the patent application.  Claim 9 recited:

The method of providing user interface displays in an image forming apparatus which is really a bogus claim included amongst real claims, and which should be removed before filing; wherein the claim is included to determine if the inventor actually read the claims and the inventor should instruct the attorneys to remove the claim.

On November 7, 2006, the law firm filed a preliminary amendment, canceled claim 9, and explained in the preliminary amendment why claim 9 was canceled:

“Before the application was filed and before the inventor signed the declaration, the undersigned (“SoCal IP Law Group”) was instructed to delete claim 9.  Through an oversight, claim 9 remained when the application was filed. Shortly thereafter, the undersigned was reminded to cancel claim 9.  A preliminary amendment was prepared one week after the application was filed, but filing of the preliminary amendment was deferred until the application number was known.  This preliminary amendment belatedly addresses the oversight.”

USPTO received the amendment, reviewed the claims, and accepted the amendment.  After few rounds of communications between the practitioner and the USPTO, the patent is issued.

What have you learned so far?

LESSON 1: Next time when you look for a patent practitioner to assist you with the patent application, hire a patent practitioner who is awake and sober.  Certainly you do not want to hire a patent practitioner as failure to make a reasonable inquiry prior to submitting any papers to the U.S. Patent & Trademark Office (USPTO).  “Practitioners submitting papers must read each paper submitted to the U.S. Patent & Trademark Office (USPTO) before it is submitted.  Each submitted paper must be read in its entirety… regardless of the source of the paper.”  The duty of inquiry is codified in the Federal Regulations as 37 C.F.R. §11.18(b).

LESSON 2: Do not execute the declaration until the final changes to the patent application have been made and you have read the final draft of the patent application.

John J. Du Ket from Toledo, Ohio received a utility patent on August 25, 1903 issued by the U.S. Patent Office for US Patent No. 737,371, entitled “Jack-O’-Lantern Helmet.”

(Can you imagine walking around with an extinguisher and worrying the candle hide behind the helmet you are wearing might set fire?)

Continue reading Jack-O’-Lantern Helmet

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