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Media Outlets Including Forbes Hit With Lawsuit

Many reputed media stations including, Forbes, Inc., American Broadcasting Companies, Inc., and Discovery Communications, Inc. have been targeted with a lawsuit for willful patent infringement filed by Texas-based Bartonfalls LLC.

The lawsuit was filed with the US District Court of EDTX on October 11, 2016, where Bartonfalls claims that the companies have infringed the US patent 7,917,922.  The patent relates to a method that integrates a plurality of television signal sources into a cohesive audio/video environment.

Claim 1 of the ‘922 patent describes a “method for automatically changing from a first TV program to an alternate TV program at a TV viewer location.” The accused companies in the suit either sell or provide a method for automatically changing from one TV program to another.

Bartonfalls stated that the companies have willfully infringed claim 1 of the ‘922  patent, “with knowledge of the patent and in spite of an objectively high likelihood that its actions constituted infringement.”

According to the USPTO and MaxVal’s own research, the accused companies haven’t given any indication as to how they are going to tackle the alleged infringement.  Below are the details of the cases.

Case Number Court Lawsuit URL
2:16-cv-01126 Texas Eastern District Court Bartonfalls, LLC    v.  American Broadcasting Companies, Inc. http://bit.ly/2ej18NN
2:16-cv-01127 Texas Eastern District Court Bartonfalls, LLC    v.  Allrecipes.com, Inc. http://bit.ly/2f9ceUH
2:16-cv-01128 Texas Eastern District Court Bartonfalls, LLC    v. Bloomberg, L.P. http://bit.ly/2f9ceUH
2:16-cv-01129 Texas Eastern District Court Bartonfalls, LLC    v. CBS Interactive, Inc. http://bit.ly/2fAt5lS
2:16-cv-01130 Texas Eastern District Court Bartonfalls, LLC    v. Turner Broadcasting System, Inc. http://bit.ly/2evDpaM
2:16-cv-01131 Texas Eastern District Court Bartonfalls, LLC    v. Consumers Union of United States, Inc. http://bit.ly/2fAu1GV
2:16-cv-01133 Texas Eastern District Court Bartonfalls, LLC   v. Forbes, Inc. http://bit.ly/2f97CxX
2:16-cv-01134 Texas Eastern District Court Bartonfalls, LLC    v. Advance Publications, Inc. http://bit.ly/2eXi4Yt
2:16-cv-01135 Texas Eastern District Court Bartonfalls, LLC    v. Scripps Networks Interactive, Inc. http://bit.ly/2e9y08i
2:16-cv-01136 Texas Eastern District Court Bartonfalls, LLC    v. NBCUniversal Media, LLC http://bit.ly/2f5OtyM
2:16-cv-01137 Texas Eastern District Court Bartonfalls, LLC    v. Viacom, Inc. http://bit.ly/2fAtzII
2:16-cv-01138 Texas Eastern District Court Bartonfalls, LLC    v. New York Times Company http://bit.ly/2eiSUFm
2:16-cv-01139 Texas Eastern District Court Bartonfalls, LLC    v. Ziff-Davis, LLC http://bit.ly/2dYyvXj


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Court Shuts Down Patent Infringement Case Against Amazon.com

court-shuts-down-patent-infringement-case-against-amazon-com

The U.S. District Court for the Northern District of California has dismissed a lawsuit against Amazon.com filed by TriDim Innovations claiming patent infringement.

TriDim filed a suit on Nov 30th 2015 for infringing two patents (U.S. Patent No. 5,838,326 and 5,847,709) on a “computer controlled display system” which it acquired from Xerox Corp. It claims that Amazon.com uses similar software for its Kindle Fire.

The patents describe a three-dimensional computer document workspace that allows users to consolidate a large number of documents by touching, dropping and flicking them into three separate places in accordance to their usage.

Amazon.com argued that the patents were invalid under section 101 as applied in the Alice Corp. Pty. Ltd v. CLS Bank Int’l in 2014. In the Alice case, the Supreme Court expressed that computer claims are eligible for patents if there is significantly more than an abstract idea.

TriDim reasoned that separating its computer display into three spaces limits their invention to a specific system, and hence it is not an abstract idea.

The judge of the case, James Donato found the patent to be invalid under Alice as it was an abstract idea of retrieval and arranging of documents. He ruled it out by saying it did not establish an inventive concept and is a “common solution to a common problem.”

The court said that the TriDim patents did not require any specific hardware or software that would help a user to move and place files within the system. Furthermore, it found that there was an overuse of the word “circuitry” but the invention had nothing to with circuitry. It also said that inclusion of smart words does not mean that the creation is an innovative concept.

Due to all of these assertions, the court gave verdict in favor of Amazon.com and dismissed the lawsuit. The ruling came out on Sept 19, 2016, just days before the patents were about to expire.

According to the USPTO data and MaxVal’s own research, here is a detailed history of this infringement case

Type Names
Case Number 3:15-cv-05477
Court California Northern District Court
Filed date 12/02/2015
Judge James Donato
Plaintiff Tridim Innovations LLC
Plaintiff Attorney Steven Todd Lowe
Plaintiff Law Firm Lowe & Associates, P.C.
Defendant Amazon.Com, Inc.
Defendant Attorney Daniel Thomas Shvodian
Defendant Law Firm Perkins Coie LLP
Product Various versions of the Kindle Fire, Kindle Fire HD, Kindle Fire HDX, and Fire phone – products that incorporate the “carousel” feature
Patent US5838326|US5847709
Closed date 9/19/2016
Basis of Termination Judgment on the Merits
Outcome of District court judgment Favor of Defendant
Comments Patent claims ruled invalid

 

 

 

 

 


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Do Semantic “Similarity” Searches Produce Better and Faster Results?

The Prior Art Search Challenge

It is difficult to identify novelty of an invention without a thorough understanding of previous work in the field. Prior art search is essential to define the boundaries between a potential invention as claimable in a patent and the published prior art. It is common practice to perform keyword-based and/or classification-based searches of the disclosed concept. Getting a comprehensive result including hidden or unexpected prior art using classic methods is challenging, particularly when working under time constraints. The quality of the search greatly depends on how much time is spent on the search, and on the technical background and skill of the searcher.

Semantic search, similarity search or citation analysis approaches could be combined to overcome the above challenges in many cases. This article emphasizes the benefits of similarity search for finding potential prior art.

Similarity Search

A number of patent databases (both public and paid) provide similarity search options. Similarity search engines may operate in one or more of the following ways:

  1. Perform text mining and machine learning to extract contextual similarities between the target patent and the assets stored in the patent databases;
  2. Search for patents that have common citations or share citations within the same family;
  3. Retrieve a list of similar records leaving out stop words and common words such as “method”, “process” or “device”;
  4. Display potentially relevant prior art documents ranked based on the relevancy.

MaxVal validated the effectiveness of a similarity search engine¹.  MaxVal conducted similarity search for a set of three patents filed under different IPCs viz. US8315756B2, US8838292B2 and US9149609B2. In each case, the similarity search retrieved a large number of patents ranked in downward order of relevancy score, starting with the most similar with 100% rating. The top results with rating above 90% relevancy were filtered using either keyword or classification-based restriction to retrieve a handy number such as 200-300 that were easy to review. In each of the three cases, the examiner-cited references were retrieved with rating above 90% relevancy through the similarity search as shown in the table below.

Target Patent

Technology Examiner Cited References

Examiner Cited References Retrieved through Similarity Search

US8315756B2 G01C 22/00

(Decentralised systems, e.g. inter-vehicle communication)

US20100121518A1
US20140039716A1
US20130325210A1
US9092987B2
US9070022B2
US8838292B2 G05D 1/00

(Control of position or course in two dimensions specially adapted to land vehicles…)

US20030225477A1
US20040024527A1
US20040254729A1
US20080269992A1
US20060106538A1
US20070043502A1
US8315756B2
US9149609B2 A61M 25/06

(Guide tubes)

US4611594A
US5074871A
US5968057A
US5688234A
US20020026203A1
US5908435A
US20020068954A1
US7169154B1
US6517551B1
US20060135987A1
US20050119668A1
US20060253145A1
US20070191878A1
US20070208351A1

In summary, similarity search augments keyword/classification-based searches and dramatically increases the quality of the results set that needs to be examined. Thus, similarity search function could enhance the efficiency of prior art search by minimizing the probability of missing relevant prior art in given time.

¹MaxVal used Questel Orbit to test the functionality of Similarity search


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Open Innovation Insights from Experts Paul Germeraad and Wim Vanhaverbeke

Open Innovation is a rapidly evolving methodology for accelerating new product development. Rather than developing innovations and new technologies secretly in a corporate laboratory, firms embracing Open Innovation actively seek new ideas from outside the firm and actively solicit ideas for their toughest challenges.

According to Wikipedia:

The central idea behind open innovation is that, in a world of widely distributed knowledge, companies cannot afford to rely entirely on their own research, but should instead buy or license processes or inventions (i.e. patents) from other companies.

Companies who have successfully implemented Open Innovation programs include AkzoNobel, P&G and GE.

Paul Germeraad is a member of MaxVal’s Intellectual Assets, Inc. (IAI) consulting unit. Paul is a recognized leader in the R&D and Licensing community.  He has helped many companies improve their R&D programs and IP Management practices.  He has seen through personal experience and the efforts of others what works and what does not. According to Paul,

When done right, Open Innovation can create huge new business opportunities! Since finding the needle in the haystack is the critical issue, our IAI practice can help any research intensive business make Open Innovation work alongside internal exploration options

Together with Wim Vanhaverbeke, business professor at Hasselt University, Paul has written a significant white paper on “How to find, assess and value open innovation opportunities by leveraging IP databases?

Paul and Wim observe that while Open Innovation initiatives are widespread, they do not always produce the desired results.  The paper places Open Innovation in the larger context of the firm’s overall strategy and patent management process.  It then provides specific suggestions for answering these three questions:

(1) How to find the right technology and partners in the available mountain of information?

(2) How to use new patent databases and patent analysis software tools to improve the speed and quality of finding exactly the right technology and partners?

(3) How to negotiate access in an equitable and timely manner after finding desirable technology and partners?

The paper includes a detailed example based on finding membrane technologies relevant to environmental protection and clean-up.

If you are interested in accelerating product development, we invite you to review Paul’s paper.

MaxVal’s Intellectual Assets consulting group offers services specifically tailored to help companies establish successful Technology Scouting and Open Innovation initiatives.  For more information, see Technology Scouting and Open Innovation.


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Why do Korean Companies Care About US Patent Litigation?

South Korea’s WIPS Co. Ltd. has licensed MaxVal’s Litigation Databank to provide comprehensive information on US patent litigation to their clients.  WIPS is the leading online patent information service provider in South Korea.  WIPS Global is a web based patent search system with comprehensive global patent data coverage, including the US, Europe, Japan and China.

Why is US patent litigation data of interest to Korean companies?   The answer is that Korean companies are frequently involved in US patent litigation.  The information provided by MaxVal’s Litigation Databank enables Korean companies to keep up to date on their cases and to monitor litigation that affects their industry and provides them insight into the US patent litigation environment.

The table below shows the leading Korean technology companies that have been involved in patent litigation in 2015, and over the last five years.

Trimmed name used for search

Cases in 2015

Cases in the last  5 Yrs

Plaintiff

Defendant

Plaintiff

Defendant

Samsung Electronics

1

61 11

249

LG Electronics

1

41 5

200

SK Hynix

0

1 0

8

Hyundai Motor

0

10 0

46

Kia Motors

0

5 1

24

Nautilus Hyosung

0

1 1

2

The ongoing patent litigation between Apple and Korea’s Samsung Electronics is well known.  Samsung Electronics has been involved in a large number of cases – mostly as a defendant.   IPR2015-01135 is an interesting PTAB case involving Samsung Electronics and NVIDIA (MaxVal’s Litigation Databank includes PTAB cases).

LG Electronics was sued in California Central District Court ( case 8:13-cv-00134) in which Digitech Image Technologies charged infringement of its US 6,128,415 relating to capturing, transforming or rendering color images.

In 1.11:cv-04356 Korean semiconductor memory maker SK Hynix was sued in Illinois Northern District Court by Cascades Computer Innovation LLC over US patent 6,366,130 “High speed low power data transfer scheme”.

It is somewhat surprising to see how many cases Hyundai and Kia Motors are involved in.  Interesting cases include:

  • 1:11-cv-00934– Delaware District Court.  Beacon Navigation GmbH charged Hyundai with infringement over vehicle navigation  patent USPN 5,878,368.  Kia Motors was sued over the same patent in case 1:11-cv- .  Beacon Navigation also filed suit against Ford, GM, BMW, Honda, Mazda and other auto manufacturers.
  • 1:13-cv-00275 In Delaware District Court, 911 Notify LLC sued Hyundai Motor over USPN6,775,356, which claims system for notification relating to an emergency call from a telecommunication device. Ford Motor and other manufacturers were also sued by 911 Notify.
  • 6:09-cv-00479 Clear with Computers, LLC sued Hyundai in the Texas Eastern District Court over three US patents, including USPN 5,367,627 “Computer-assisted parts sales method”.

Finally, Diebold sued Korea’s Nautilus Hyosung over ATM machine patents in 2015.  In Ohio Northern District Court case 1:15-cv-02153 Diebold charged that the Nautilus line of HALO ATM machines infringed six of its US patents.

A manufacturer in any industry doing business in the highly competitive US market faces the risk of patent infringement suits. These examples show that Korean companies are no exception.   Given that patent litigation is a reality, it is important to stay current on specific cases and general trends.  MaxVal’s Litigation Databank makes it easy for companies to do so.

The Litigation Databank is a searchable database of US patent litigation.  Litigation Databank covers the US District Court, the US Court of Appeals, the US Supreme Court and the ITC.  MaxVal has recently added coverage of the USPTO’s Patent Trial and Appeal Board (PTAB).  Subscribers receive daily alerts and access to a web based search and reporting system.  The Litigation Databank is also available as an Application Programming Interface (API).  The API allows subscriber patent databases and tools interface directly with the Patent Litigation Databank database.

A video demonstrating the system is available Litigation Databank Demo.

For more information on Litigation Databank, contact MaxVal at bd@maxval.com.


Pharma & Biotech – Patent Litigation Report 2014