Patent Cases Patent Cases

MM 350 Intellectual Property Law and New Media

Steve Baron

October 5, 2010

BILSKI ET AL. BILSKI ET AL. vv. KAPPOS, . KAPPOS,

No. 08–964. Argued November 9, 2009 No. 08–964. Argued November 9, 2009—Decided June 28, 2010 —Decided June 28, 2010

http://www.supremecourt.gov/opinions/09pdf/08-964.pdf

Business method patent on a method of hedging risk in commodities trading

By only 5-4, the USSC upholds the validity of business methods patents and denies one to Bilski

Majority Opinion: A claimed process is patent eligible if:– (1) it is tied to a particular machine or

apparatus, or – (2) it transforms a particular article into a

different state or thing.

The patent at issue failed the test and therefore was not patent eligible.

Tivo v. Echostar (Fed. Cir. 2008)Tivo v. Echostar (Fed. Cir. 2008)

Tivo sues Echostar for infringing the ‘389 patent.– Hardware and software claims relating to

DVR’sJury verdict in favor of Tivo

– $74 million!!! Lost profits and reasonable royalties

– Permanent injunction

Tivo v. Echostar (Fed. Cir. Tivo v. Echostar (Fed. Cir. 2008)2008)

Echostar appeals to Federal Circuit:– Reverses and remands on hardware claims– Affirms software claims– Affirms damages award– Affirms permanent injunction – which had been

stayed pending appeal

Tivo v. Echostar Tivo v. Echostar

2008: USSC refused the case.2009: trial judge fined Tivo an additional

103 million, plus interest.

Tivo-moreTivo-more

2009: Tivo wins another 200M. against Dish Network—roughly, same claims

2009: Tivo sues AT&T . . . .BUT– Microsoft sues Tivo (on two patents)

2009: Tivo sues Verizon….. BUT- Motorola, who supplied the sets to Verizon,

sues TIVO for infringement

Microsoft v. TomTomMicrosoft v. TomTom2:09-cv-00247 (W. Dist. Wash.)2:09-cv-00247 (W. Dist. Wash.)

Patent No.:US 6,175,789 Bl Date of Patent: *Jan.16,2001 VEHICLE COMPUTER SYSTEM WITH OPEN

PLATFORM ARCHITECTURE Inventors: Richard D. Beckert, Lake Stevens; Mark M. Moeller, Bellingtham; William S. Wong, Redmond, all of WA (US) Assignee: Microsoft Corporation, Redmond, WA (US) Filed: Sep. 10, 1999

Microsoft v. TomTomMicrosoft v. TomTom2:09-cv-00247 (W. Dist. Wash.)2:09-cv-00247 (W. Dist. Wash.)

ABSTRACT

A vehicle computer system has a housing sized to be

mounted in a vehicle dashboard or other appropriate location.

A computer is mounted within the housing and executes

an open platform, multi-tasking operating system. The computer

runs multiple applications on the operating system,

including both vehicle-related applications (e.g., vehicle

security application, vehicle diagnostics application, communications

application, etc.) and non-vehicle-related applications

(e.g., entertainment application, word processing,

etc.). The applications may be supplied by the vehicle

manufacturer and/or by the vehicle user.

Microsoft v. TomTomMicrosoft v. TomTom2:09-cv-00247 (W. Dist. Wash.)2:09-cv-00247 (W. Dist. Wash.)

Microsoft alleged:– TomTom's navigation products, which use the

open source Linux kernel, infringe on a handful of Microsoft's patents.

– Two of the patents cited by Microsoft cover legacy compatibility features in Microsoft's FAT filesystem, support for which is implemented in Linux.

TomTom responds:– Countersues Microsoft for infringing its patents for

various automobile navigation systems.

Microsoft v. TomTomMicrosoft v. TomTom2:09-cv-00247 (W. Dist. Wash.)2:09-cv-00247 (W. Dist. Wash.)

Case filed on 2/25/09 Case voluntarily dismissed on 4/2/09 Why?

MICROSOFT CORP. MICROSOFT CORP. vv. I4I . I4I LIMITED PARTNERSHIP ET AL.LIMITED PARTNERSHIP ET AL.

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT THE FEDERAL CIRCUIT

Over XML used in WORD No. 10–290. Argued April 18, 2011—Decided June 9, 2011 Microsoft lost at the trial level as well as multiple appeals. 200M judgment, and some fines for calling i41 a patent troll during

the case (had enjoined them from selling WORD for a short time) Microsoft attempted to get the USSC to lower the standard for

challenging a patent in cases in which the particular aspect within the patent had not been challenged as prior art at the time of the filing. – Wanted “preponderance of evidence” as opposed to “clear and

convincing evidence” USSC said “no thanks, the high standard is just fine