Category Archives: Infringement

Apple Wins Injunction Against the Sale of Samsung’s Galaxy Nexus Phone

On Friday, June 29, 2012 the Federal District Court in San Jose granted a pretrial injunction prohibiting Samsung electronics from selling its new Galaxy Nexus phone. The judge ruled that Apple was likely to succeed in its patent infringement claim against Samsung’s S Voice digital assistant software. This is a major element in establishing exclusivity of Apple’s marquee feature, the “Siri” voice-automated virtual assistant. This patent relates to a key element in the implementation of “Siri.” Apple’s US Patent No. 8,086,604 describes a technique in which a phone’s computer processor searches multiple databases, and uses a heuristic function to determine relevant responses. Heuristic functions use real-life experience gained through trial and error rather than performing comparisons in a mechanical manner.

Grant of a pretrial injunction is a stunning victory for Apple. Pretrial injunctions against patent infringement are difficult to obtain, and the Supreme Court has made them even more difficult to obtain in recent years. Apple must post a $95.6 million bond to cover the possible losses of Samsung if Apple loses the lawsuit.

The week before this decision, Chicago federal court judge Richard Posner ruled that Apple could not pursue an injunction against Google’s Motorola Mobility. It is likely that the patent battles will continue at least until the technology becomes obsolete.

Copyright Registration as a Strategic Tool

“Statutory damages” is a remedy that strengthens the hand of copyright owners against infringers. Infringers may take advantage of the difficulty, expense, and delay of having to file suit to use as a bargaining chip. Statutory damages decrease the value of this bargaining chip, and can help a copyright owner reach a desired result without having to file suit.

In a copyright suit, the copyright owner must prove copying and must also prove economic loss. The connection of the owner’s loss to the infringer’s actions must be demonstrated. The amount of loss must be proven. The accounting method used and many other factors may be raised by the infringer to “muddy the waters.” Each additional complication adds to the cost of proving damages. Once a case is completed, appeals are possible based on the calculation of damages.

If the copyright owner has qualified to seek statutory damages, only copying need be proved. The legal requirements for proof are comparatively well defined. In the absence of special circumstances, the award ranges from $750 to $30,000, in the court’s discretion, for each work infringed. The number of copyrighted works infringed, not the number of copies, determines the amount of statutory damages. However, if infringement is willful, the award may be increased to a maximum of $150,000. Demonstrating that the infringement is innocent may reduce the award to as low as $200.

The court has discretion to award attorney’s fees to the prevailing party. A copyright owner seeking statutory damages is more likely to be a prevailing party. The infringer runs a greater risk of having to pay attorney’s fees. Increased liability exposure may encourage an infringer to compensate the copyright owner without the necessity of a suit. Even if suit is necessary, it will be simpler and less expensive. There have been situations in which an infringer capitulated early on.

Statutory damages are available when a copyright is registered prior to the infringement. The statue says when the registration application must be filed. It is simplest and most reliable to file a copyright registration application on a work when the work is published. Prompt registration provides a copyright owner a much stronger position against future infringers.

Copyright registration is accomplished by filing the appropriate application. Different types of works, e.g., text, three-dimensional works, or music, require different application forms, each requiring a filing fee of $35.00 – $65.00.  Consultation with counsel may help in making strategic choices such as deciding how many items to include in one registration application.

Many copyright owners have sought advice of counsel after discovering infringement only to find out that their options were limited. The relatively low-cost of copyright registration at the time of publishing can strengthen the copyright owner’s legal position when infringement is later discovered.

Are you an Apple iOS App Developer?

Lodsys, LLC is a “non-practicing entity.” It makes no products. Its business model is structured to earn revenue  by enforcing patents against operating companies which Lodsys contends infringe upon its patents. It is enforcing a group of four patents against Apple iOS app developers. Lodsys says the claims “are directed to systems and methods for providers of products and/or services to interact with users of those products and services to gather information from those users and transmit that information to the provider.”

Lodsys has sued a number of large companies, including Adidas and Best Buy, for patent infringement. It appears that Lodsys has been sending information packages to individual developers. This package includes a patent infringement charge giving developers 21 days to respond to Lodsys’ demand that the recipient take a revenue-bearing license.

 New developments in this situation continue to unfold. On May 23, 2011, Bruce Sewell, Senior Vice President & General Counsel of Apple, sent a letter to the CEO of Lodsys, LLC.  Sewell wrote, “Apple requests that Lodsys immediately withdraw all notice letters sent to Apple App Makers and cease its false assertions that the App Makers’ use of licensed Apple products and services in any way constitute infringement of any Lodsys patent.”

Consultation with counsel can help a developer that has received an infringement charge  to make informed business decisions regarding its position and to avoid undue harm to its business.

New Supreme Court Opinion Strengthens Patents

In Microsoft Corp. v. I4I Limited Partnership, Case No. 10–290, the Supreme Court rejected Microsoft’s attempt to make patents more difficult and expensive to enforce. The Court did this by reinforcing the principal that clear and convincing evidence is necessary to invalidate a patent. 

A patent must be valid to be enforceable. Section 282 of Title 35 of the United States Code states, “A patent shall be presumed valid.” Therefore, if the Patent Office has decided that the invention is patentable, this decision should not be overruled unless the evidence against patentability is  “clear and convincing.” The decision of the Patent Office is entitled to deference because it has examined the patent application and, in its expertise, has judged that the patent application was worthy of issuance as a patent.

However, problems arise when the accused infringer presents evidence that the Patent Office did not consider. Should the clear and convincing standard disappear? Is the decision of the Patent Office now suspect? Should a lower level of evidence now be required to show that the patent is invalid?

The Supreme Court said “No” to these questions.  New evidence presented to the Patent Office must be considered. It will be given more significance than evidence already considered. However, the “clear and convincing” standard remains in place.

This is important for a number of reasons.  A patent defense attorney can virtually always find prior publications related to patentability  that were not considered by the Patent Office. The defense  will insist that the new evidence is material and that it renders the original decision of the Patent Office meaningless. Because the “clear and convincing” evidentiary standard must be met, the cost for the accused infringer to prove its case is higher. Also, the patentee faces a lower bar to demonstrate that the accused infringer’s arguments of invalidity are inadequate. This translates into a cost saving for the patentee.

These considerations are very significant when an infringement suit begins. A great deal of legal maneuvering occurs early on, perhaps years before a case is in a posture for trial. This Supreme Court decision will be helpful to a patentee who is formulating a legal and financial strategy for a suit.