Dr. Tal Lavian 

Patent Engineering IEOR 190G

Fall 2008

 

Class Presentations

Week 1 - Introduction to Patent Engineering

Week 2 - Patent Engineering

Week 3 - Patent Persecution

Week 4 - Busting Bad Patents

Week 5 - Bullet Proof IP

 

Students Presentation

Title Description

Agere Systems v. Sony Corporation

By Jiabao Qin

Agere Sys v. Sony Corp - case over decoding the content of music chips.

BSC v. Cordis

By Montigny Marie

Bsc v. Cordis - case over patent dispute over bare-metal and drug-eluting stents.

Creative Technology v. Apple Computer

By Zach Duff

A case between Apple and Creative Technology. Creative tried to block iPod. Apple countersued based on Creative’s infringement of 3 Apple patents.

Eastman Kodak Co. v. Sun

By David (Tavi) Nathanson

Kodak sued Sun in 2002, claiming that Sun’s Java
programming language violated three of its patents
covering OOP concepts.

eBay v. MercExchange

By Jennifer Pang

MercExchange, a Virginia-based ecommerce company owned a business method patent (USP 5,845,265) to provide an Auction Service akin to eBay’s ‘Buy It Now’ feature – which enables users to buy an item for a set price without going through the bidding process; >30% of eBay’s business.

eBay v. MercExchange

By Agustin Del Rio

MercExchange, a Virginia-based ecommerce company owned a business method patent (USP 5,845,265) to provide an Auction Service akin to eBay’s ‘Buy It Now’ feature – which enables users to buy an item for a set price without going through the bidding process; >30% of eBay’s business.

Enercon v. Kenetech Windpower Inc.

By Ben Elkin

Kenetech Windpower Inc, filed complaint with US ITC, claiming that Enercon’s E-40  turbine infringed on its existing patent, 5,083,039 (‘039), claim 131.

Eolas v. Microsoft

By Anuj Verma

In 1999 Eolas filed suit in the US District Court for the Northern District of Illinois against Microsoft over validity and use of a patent that deals with web browser supporting plug-ins.

Cross Atlantic Capital Partners v. Facebook

By Kavitha Rathnam

A lawsuit filed by Cross Atlantic Capital Partners against Facebook over a patent titled “System for Creating a Community for Users with Common Interests to Interact In".

Finisar v. DirecTV

By Nikhil Krishnan

Finisar, the maker of fiber optic systems for high-speed networks, sued DirectTV for violating its patents.

Graham v. John Deere Co.

By J Jesus Castellanos Gonzalez

Graham v. John Deere Co.- case over a patent regarding plow.

Linde Air Products Co. v. Graver Tank & Manufacturing Co.

By Allan Woodworth

Linde sued Graver Co. and others for infringing the patent on their welding composition and process.

Immersion v. Sony

By Abhinav Gupta

Issue in dispute: “Rumble” technology in Sony’s and
Microsoft’s controllers (including games and consoles)
violate Immersion’s haptic IP.

Intel v. Broadcom

By Chun Wing Yeung

Case about the patented method of selecting a transfer format in a computer communication network.

Invitrogen v. Agilent

By Christine Chen

Invitrogen sued Strategene, which was purchased by Agilent in 2007, for infringing on 3 of Invitrogen's patents. All 3 patents have to do with a gene which encodes reverse transcriptase(RT).

Forgent Inc. v. High-Tech Giants

By Gautam Altekar

Forgent, Inc. was the plaintiff and the defendants were thirty one companies, such as: Adobe, Dell, Kodak, Xerox, Microsoft, etc. for infringing the patent of JPEG. Forgent, Inc. collected $90 million in licensing royalties.

KSR International Co. v. Teleflex Inc.

By Jason Tsai

KSR is a Canadian auto parts manufacturer that supplies auto parts including pedal systems for Ford Motor Company and General Motors Corporation.
KSR’s competitor, Teleflex also designs and manufactures adjustable pedals. Teleflex sued KSR on Claim 4. KSR counter-attacked stating that Claim 4 is obvious. The Supreme Court reversed Federal Circuits ruling in favor of KSR based on Graham's analysis.

LG Electronics v. Quanta

By Winnie Menghan Kuo

LG holds patents on microprocessor chips and chip sets. Intel licensed LG’s patent to make chips. Quanta is one of many OEM’s in Taiwan and it supplies computers to companies. LG sued Quanta for infringing its patents.

In 2008 the Supreme Court ruled that Patent Exhaustion doctrine applies to patented products and patented method components. Quanta agreed to pay license fees to LG.

Markman v. Westview Instruments Inc.

By Mahil M. Keval

Herbert Markman and Positek, Inc. patented a system in 1984 for tracking clothing through a dry cleaning system. 
Westview Instruments, Inc. created a product that similarly tracks clothing through a dry cleaning system. 
Markman sued Westview Instruments for infringement on the basis that their product did what he had patented years before.

Microsoft v. Eolas

By Dylan Caponi

It was founded in 1994 by Dr. Michael David Doyle.
His University of California team has claimed to have created the first web browser that supported plug-ins.
They demonstrated it at Xerox PARC, in November 1993, at the second Bay Area SIGWEB meeting

Myriad Genetics v. National Government Funded European Union Research Institutes

By Amir Zaher

Myriad Genetics obtained nine US patents on two genes that are linked to susceptibility for breast and ovarian cancer. The patents also applied to the use of diagnostics tools. In Europe, they were granted three patents.
The European Patent Office revoked the patenting of the two genes in 2004.

NTP v. RIM

 

NTP - Patent Troll: A company with no products and little infrastructure that amass patents with the intention of prosecuting offending companies.US Patent Trade Office decides to reexamine the patents that NTP held after RIM presents evidence of prior art.
RIM agrees to a settlement of around $650 million, and to license the technology from NTP.
The agreement is that the money will not be returned even if the US PTO finds the patents held by NTP to be invalid.

RIM was losing customers and companies and law firms were delaying Blackberry upgrades until the case was resolved, so it was in their best interest to resolve it quickly. Court ruled that RIM used NTP's patented system in the U.S. but not the method.

Qualcomm v. Broadcom et al

By Jesus Castellanos Gonzalez

Qualcomm is a pioneer of the use of code-division multiple access (CDMA) technology in wireless communications.

Qualcomm’s current intellectual property portfolio includes more than 7,200 United States patents for wireless technologies, with more than 145 telecommunications equipment manufacturers licensing them worldwide and more than 20,000 patents and applications around the globe.

Qualcomm filed suits against Broadcom, Ericsson, NEC, Nokia, Panasonic Mobile Communications , Texas Instruments and Motorola.

Sanofi-Aventis v. Apotex

By Chau Bui

Plavix is a prescription medication for heart attacks, stroke, peripheral vascular disease. Sanofi-Aventis is a multinational pharmaceutical company. Apotex is the largest producer of generic drugs in Canada.

In 2008, Sanofi wins protection for Plavix patent in Canada.

United States v. Glaxo Ltd

By Neil Chang

Glaxo Group Ltd. and Imperial Chemical Industries (ICI) each held patents that covered various aspects of the antifungal drug Griseofulvin.

In 1973, the U.S. Department of Justice Antitrust Division sued the companies, claiming that the two companies were illegally monopolizing the sale of the drug and that one of the patents was invalid.

The Supreme Court ruled that USDOJ Antitrust had standing to claim patent invalidity in antitrust cases because the validity of the patent can significantly affect which remedies are appropriate
It also ruled that mandatory selling and compulsory licensing should be used to remedy the antitrust situation.

Unocal v. Valero

By Adriana Winfield

Unocal was an independent petroleum company until 2005 when it merged with Chevron. Valero is the largest refinery in North America.

In 2002, Unocal sued Valero for patent infringement on patents dealing with cleaner-burning gasoline. U.S. Patent and Trademark Office rejected Unocal's claim to patent rights for its gasoline. It found that Unocal did not invent anything new or novel. Unocal was charged for "patent ambush" and illegal anticompetitive conduct.

 

z4 Technologies v. Microsoft Corp. and Autodesk Inc.

By Bernardo De Seabra

z4 Technologies invented product activation software to prevent illegal copying that was used in Microsoft's Office and Windows XP and Autodesk's AutoCAD. Microsoft and Autodesk claimed that they use their own software and that z4 Technologies' patents didn't contain new inventions. Microsoft had to pay z4 $142 million and Autodesk $340 million.

 

Zoltek v. USA

By Carey Lee

Federal Circuit ruled in favor of Lockheed Martin ( a defense contractor)- based on “a process cannot be used ‘within’ the United States as required by the [infringement statutes] unless each of the steps is performed within this country.” Since one of the claimed processes (fibers manufactured in Japan) occurred outside the US there was no infringement.

 

 

Invited Lecturers

Name Description

Duane R. Valz

VP Intellectual Property Yahoo

Software & Business Method Patents:
Law, Policy + Controversy
Mead Lowell Basics of
Patent Infringement Litigation