Category: Patent Enforcement

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Ten Facts about Patents

Written by Mark Terry Patents grant you the right to exclude others from making, using, selling or importing a patented product or process. Without a patent, others can typically use your ideas and monetize them without any recourse. Patents can be used to protect many different things including products or innovative new ways of doing things, i.e., a process that offers a new solution to a complex problem. It is highly recommended that you enlist the services of a legal professional who will help you through the patent process. I, Mark Terry, am a patent lawyer located in Miami, Florida. In

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Can Filing a Patent Infringement Suit Hurt You in a Re-Exam?

Written by Mark Terry I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have on a re-exam. But the BPAI used uncharacteristically harsh words to reject the Appellant’s arguments, which made it amusing. It’s rare to see any emotion in a BPAI decision, so when you see Jones Day get a verbal spanking, you can’t help but write about it. In the Smuckers v. Mack-Ray case, the patent owner had sued the defendant for patent infringement

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Federal Circuit: You Are Not A Person of Ordinary Skill in the Art

Written by Mark Terry Today the Court of the Appeals for the Federal Circuit issued a decision that plainly answers the question of who is a person of ordinary skill in the art – Extreme Networks v. Enterasys Networks (Fed. Cir. 2010). As a Florida Patent Attorney who routinely deals with this question, I found it refreshing to read a Federal Circuit decision that tackles this issue head on. The case of Extreme v. Enterasys involved a two-way patent dispute over router-based technologies. At issue was whether the lower court erred in excluding one party’s expert because he was not a person of ordinary skill

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Patent Reform: Will It Protect Your Inventions?

Written by Mark Terry The Patent Transparency and Improvements Act (Bill, S. 1720), seeks to improve transparency and to remedy problems associated with patent trolls and others that file frivolous lawsuits using their patents. Trolls are turning out to be a formidable opponent to the patent reform process by engaging in some heavy lobbying. Trolls have cost companies billions of dollars due to weaknesses in the patent system. As a practicing patent attorney I walk a fine line between writing a claim that is so broad it is enforceable, and writing a claim that is so narrow, an  infringer can

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How to lose your “ordinary dictionary meaning” argument at the Board of Patent Appeals

Written by Mark Terry Today’s first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a claim that turned on the construction of the claim term “embedded.” As a Patent Attorney in Miami with a full docket of patent cases, BPAI decisions that involve claim construction are highly topical for me. In Ex parte Benson, the BPAI explored the issue of how the claim term “embedded” should be construed. The Applicant argued the claim term should be given the

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Can a Product Infringe a Method of Manufacture Patent?

Written by Mark Terry Yes, it can. A product can most definitely infringe a method of manufacture patent. I recently sent a cease a desist letter to a retailer of a luggage product that was manufactured using my client’s patented method of manufacture. His attorney – a patent attorney who’d been practicing for many years – responded with a letter that tersely stated, “all of the claims of the ‘226 patent are method claims and this no product could infringe a claim, only the practicing of a method could infringe.” That’s it – that’s all he had to say about

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The Value of Patents in the World of IT

Written by: Mark Terry Alibaba Group Holding Ltd. is preparing its estimated $16 Billion IPO by fortressing itself with patents. Although Alibaba has more than 1,900 issued patents and pending applications in Asia, it has also been aggressively filing patent applications in the U.S. China’s largest e-commerce company has obtained 102 U.S. patents, including 20 purchased from IBM Corp. Alibaba has 300 pending patent applications for technologies like product recommendations, payment processing and picture searches. Why the patent buying spree? If you’re an innovator like IBM, you obtain patents to protect the hard work and millions of dollars that has

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SHOULD PATENTS BE TREATED AS JUST ANOTHER INVESTMENT VEHICLE?

Written by: Mark Terry In light of all of the news about patent reform legislation and the backlash against Non-Practicing Entities (NPE) [you know … patent trolls], did you know that large corporations like Microsoft, Sony, Apple, Intel, and Google invest or have invested in patent funds? Why do they do it? Has it helped fuel infringement lawsuits? We explore these issues here.   Intellectual Ventures (IV) has opened funds to investors since 2000 and is currently courting investors to invest in its planned $3 billion fund for investing in patents. Microsoft and Sony have subscribed, but Intel and Apple

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Board of Patent Appeals: The Problem with Using Functional Language in Claims – Florida Patent Lawyer Blog

Written by: Mark Terry Yesterday’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Zurcher highlighted the problems associated with using functional language in claims, especially when claiming an apparatus. I, a Patent Lawyer in Miami, have written about this before in my article about intended use claim language. The Ex Parte Zurcher case involved an electrical-type socket invention. The claim element at issue included functional language. The Examiner asserted a prior art reference that included structure that performed the same function as described in Appellant’s functional language. I.e., the Examiner found the claimed functional language inherent in the prior art reference. The ensuing arguments can be separated

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The High-Tech Patent Wars Continue…

Written by: Mark Terry The high-tech world is continuing its 20-way patent infringement war, but it’s not the usual suspects – it’s Yahoo vs. Facebook. Yahoo’s lawsuit claims that Facebook is infringing on Yahoo’s social networking patent (US7599935), which may be the basis of Facebook’s networking platform. As of late, the superstar high tech companies have been aggressively taking it to their competitors to protect their current revenue streams, but also, more importantly, to secure a dominant position in the future. Yahoo, which has been struggling over the last three years, recently lost ground to Facebook in the online advertising market. There is

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