Can U.S. Customs Police Patent Infringement?

The U.S. Bureau of Customs and Border Protection fails to appropriately police imports for patent infringement, according to a recent lawsuit by Microsoft Corp. The company alleges that the agency is allowing Motorola Mobility Inc. to import devices that infringe certain Microsoft patents violation of an order from the U.S. International Trade Commission.

Pursuant to a May 2012 ITC order, Motorola Mobility, now owned by Google, infringed a Microsoft patent for generating and synchronizing calendar items. The order also banned any infringing device from entering the United States.

However, according to Microsoft’s complaint, the U.S. Bureau of Customs and Border Protection (CBP) continues to allow infringing devices into the country. “The CBP has allowed the important of infringing devices based on claims that Microsoft made on an ex parte basis, and that CBP has accepted without providing Microsoft with notice of those claims, much less an opportunity to address them,” the complaint alleges.

“Most egregiously, CBP has allowed Motorola to relitigate—in secret—issues that Motorola lost before the Commission, and has granted Motorola precisely the relief that the Commission expressly refused to grant after full, fair, and open litigation,” Microsoft further argues. Meanwhile, Google maintains that Microsoft is seeking to impermissibly expand the scope of the ITC order.

While Microsoft’s allegations against the CBP must be decided in court, the case raises the larger question of whether the agency is equipped to deal with the recent influx of patent infringement cases. As former ITC chairman, Deanna Tanner Okun, told Reuters, the customs bureau may lack the expertise to enforce the orders. “Problems have increased. The system is outdated,” she said. “They’re using practices and procedures that are 20 years old.”

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

What Are Standard-Essential Patents?

Motorola (now owned by Google, Inc.) and Microsoft Corp. are the latest high-tech companies to square off in the so-called “patent wars.” In the lawsuit, Microsoft alleged Motorola tried to excise excessive licensing fees, while Motorola claimed that Microsoft infringed its standard-essential wireless technology patent.

A standard-essential patent is a patent that claims an invention that must be used to comply with a technical standard. Standard-essential patents are integral to the tablet and smartphone industry because they form the backbone of the basic technology they need to operate. While most owners of these patents have voluntarily pledged to grant licenses to other companies on “reasonable and nondiscriminatory” (RAND) terms, it is often easier said than done.

In a recent decision, U.S. District Judge James Robart established some useful guidelines for determining reasonable royalties for standard essential patents (SEPs). Since his opinion runs over 207 pages, it is impossible to outline all of them here. However, there are a few key takeaways.

To arrive at “reasonable” royalty, Robart conducted a hypothetical, bilateral negotiation between the parties. In doing so, the judge highlighted the need to consider the importance of the SEPs to the standard as well as the importance of the standard and the SEPs to the products at issue. The specific “economic guideposts” he cited included the following:

  • A RAND royalty should be set at a level consistent with the standard setting organization promoting widespread adoption of their standards.
  • In the context of a dispute concerning whether or not a given royalty is RAND, a proper methodology used to determine a RAND royalty should therefore recognize and seek to mitigate the risk of patent hold-up that RAND commitments are intended to avoid.
  • Likewise, a proper methodology for determining a RAND royalty should address the risk of royalty stacking by considering the aggregate royalties that would apply if other SEP holders made royalty demands of the implementer.
  • To induce the creation of valuable standards, the RAND commitment must guarantee that holders of valuable intellectual property will receive reasonable royalties on that property.
  • From an economic perspective, a RAND commitment should be interpreted to limit a patent holder to a reasonable royalty on the economic value of its patented technology itself, apart from the value associated with incorporation of the patented technology into the standard.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Microsoft’s Name Game.

So how much is a trademark worth?  A lot if you are on the loosing side of a trademark battle.

After loosing a trademark battle earlier this year to Sky Broadcasting (BSkyB) in the England and W ales High Court, Microsoft agreed to stop using the SkyDrive brand for its cloud-based storage service.


The companies agreed that Microsoft could use the name for “a reasonable time” after the decision was handed down four months ago.

So what will be the new name of Microsoft’s product?  No one knows for certain, but hopefully the company performs more due diligence is selecting a name that will not land them in another trademark battle here or abroad.

This just points out how important a clearance search for a trademark is prior to filing the application.  Although the name was registered in the United States without any opposition, it apparently was not cleared for international conflicts.

If you intend to take your brand global, it is important to identify your target markets and plan your brand accordingly.  Issues often arise during the translation of a seemingly innocuous mark into a foreign language where it suddenly becomes offensive.

For instance, German makers of knapsacks refer to them as “Body Bags,” or when GE used the mark GPT for GEC-Plessey Telecommunications, the French pronunciation is  “J’ai pété” or “I’ve farted”.

So be sure to have your mark cleared for the markets you want to brand your product(s), otherwise, you may be making a costly mistake.

How Can I Help?

If you, or someone you know, need any help with Intellectual Property issues, from filing a patent, trademark or copyright, or just need advice regarding how best to protect your inventions, ideas or your brand, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California and I am a Rising Star as rated by Super Lawyers Magazine.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Microsoft supports End Anonymous Patents Act

In a strange twist, Microsoft has thrown its support for a recently introduced bill titled “End Anonymous Patents Act,” introduced by House of Representatives member Ted Deutch (D-Fla.)

The act, if passed, would supposedly solve a problem regarding the recordation of patents in the U.S. Patent and Trademark Office.  Currently, recording the owner of a patent is voluntary.

Microsoft’s general counsel stated that:

Some patent owners take advantage of this obscurity to try to hide what they own for tactical advantage in licensing negotiations or to avoid complying with patent licensing commitments.

This is rather ironic considering that Microsoft has used anonymous patents for years to threaten both the Open Source community and now anyone producing an Android device.

To show it is serious, Microsoft launched its own web based Patent Tracker that allows anyone to quickly view and search through all of the patents that the company currently holds.

However, Microsoft has refused to divulge what patents it owns that “scare” handset makers in to licensing Microsoft’s portfolio, or those patents that it has licensed to other companies.

Currently, Microsoft makes more money from patent licenses on Android phones that it has made in total for its own brand of phones.  They are in fact becoming one of the world’s largest patent licensing entities, and in many cases, a non-practicing entity (or patent troll by some definitions).

This apparent transparency about face, is nothing more that smoke and mirrors, and is not the solution to the problem.

In fact, Microsoft can easily skirt the new bill by transferring their patents to patent assertion entities (i.e trolls) to attack their competitors.

Microsoft has strong ties with Intellectual Ventures, Rockstar and MOSAID, three of the world’s largest patent trolls.  When Microsoft transfers its patents to these trolls, Microsoft is no longer identified as the  “owner” of the patent.  So the recordation required by the new law does nothing to protect other companies from a shakedown and does not list Microsoft as the recorded owner.  Very convenient.

For example, Microsoft transferred more than 2,000 wireless patents from Nokia to MOSAID in 2011. Microsoft’s new “transparent” patent trackinging software will not show these patents because they don’t technically own the patents or control MOSAID.  However, Microsoft will benefit from the transfer because they and Nokia still maintain the ability to reclaim control over the patents transferred if MOSAID fails to satisfy preset revenue targets.

But don’t think Microsoft is alone in this endeavor.  In a similar fashion, Rockstar Consortium, Inc,formed by Microsoft, Apple, Ericsson and others, is now one of the largest patent trolls in the world, with more than 4,000 patents acquired the collapse and bankruptcy of Nortel.

A better bill to put before Congress would require companies to disclosure not only patent ownership, but patent royalties recieved from a particular patent (i.e. A companies patent “interest”) and a stiff penalties to companies that participate in patent privateering.  But with all the large companies that have become patent trolls themselves (while crying about the bad effects that patent trolls have on the economy), there isn’t any real change on the horizon.

How Can I Help?

If you need help to patent an idea, or protect  yourself from a claim of patent infringement, or know someone that can use my help, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney in Pasadena, California. As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities. Connect with me on Google +

Norman

Google Vows to Stand Behind Android Vendors in Patent Lawsuits

Android vendors face a growing number of patent lawsuits from competitors, including formidable opponent Apple Inc. However, help may be on the way. Google executive chairman Eric Schmidt recently stated that his company will stand by those firms in any patent lawsuit.

“We tell our partners, including the ones here in Taiwan, we will support them. For example we have been supporting HTC in its dispute with Apple because we think that the Apple thing is not correct,” Schmidt told reporters during his first visit to Taipei.

In addition to Apple, companies using Google’s Android operating system are currently facing patent infringement lawsuits by Microsoft and Oracle. For instance:

  • Apple is suing HTC Corp., Motorola Mobility, and Samsung Electronics Co. for patent infringement reacted to their mobile devices.
  • Microsoft is suing Barnes & Noble, whose popular Nook e-book reader runs on Android.
  • Google itself is also being sued by Oracle over claims that Android violates Java-related patents, as we mentioned in a previous blog post.

So, what should Android vendors expect from Google? According to Reuters, Schmidt said his company is ready and willing to provide information, industry expertise, and Google patents to help its partners.

Source: Reuters

If you have an invention and need to protect your idea, or know someone that can use my help, please contact me for a free 30 minute consultation at nvantreeck@usip.com or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –