Dr. Tal Lavian 

Patent Engineering IEOR 190G

Spring 2009

Class Presentations

Week 1 - Introduction to Intellectual Property

Week 2 - Introduction to Patents

Week 3 - Patent Engineering

Week 4 - The Patent System

Week 5 - Obviousness and Invalidity

Week 6 - Class 6

 

Students' Presentations

As part of the class requirements, each student is instructed to prepare a short presentation related to the class material. The list of topics are provided in the sign-up sheet.

Title Description

Patriot Scientific/TPL Group v. Matsushita Electric

By George Shaw

Matsushita Electric +Fujitsu, Panasonic, JVC, Toshiba, NEC…David vs. Goliath. Long delayed, combination of ring oscillator and CPU, contested as obvious

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

By Srikanth Kondragunta

Linde Air Products took Graver Tank Manufacturing Company to court.

The United States district court found infringement and the Court of Appeals upheld the infringement claim.

Supreme Court upheld the decisions of the lower court
Created the doctrine of equivalents.

 

Kearns v Auto Industry

By Sarah Scott

The Invention of the Intermittent Windshield Wiper and Infringement by the Big Three.

Litex Inc. v. Delphi Automotive Systems Inc

By Stephen Silveira

Litex, Inc. filed suit against Delphi in federal court in the District of Massachusetts.
It said the auto-parts maker infringed its patents for methods to reduce exhaust pollutants.

MathWorks v. National Instruments

By Samuel Choi

NI sued for infringement of its patented method of creating data flow diagrams.

KSR v. Teleflex

By Simon Xu

A relatively well known Supreme Court case happened in 2007, KSR vs. Teleflex, where Teleflex claimed that KSR had infringed on its patent on connecting an adjustable vehicle control pedal to an electronic throttle control.

Specialized v. Scott USA

By Kenny Rakestraw

Patent dispute over its FSR four-bar linkage suspension patent with ‘Horst Link’ Bicycle companies.

eBay v. MercExchange

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 thru the bidding process; >30% of eBay’s business.

Immersion v. Sony Presentation

By Jerry Zhang

Immersion claimed Sony and Microsoft infringed on claims
in U.S. Patent 6,424,333 and U.S. Patent 6,275,213.

KSR v. Teleflex

By Miguel Chan

A relatively well known Supreme Court case happened in 2007, KSR vs. Teleflex, where Teleflex claimed that KSR had infringed on its patent on connecting an adjustable vehicle control pedal to an electronic throttle control.

IRobot v. Robotic FX

By Alan Lum

A case between IRobot and Robotic FX which was started by a former IRobot employee.

DSU Medical Corp. v. JMS Co.

By Joshua Miller

 

DSU sues JMS for direct infringement.
District Court rules that JMS directly and indirectly infringes.

KSR v. Teleflex

By Olek Pawlowski

Explaining the basic concepts of the landmark Supreme Court patent case of KSR vs. Teleflex and specifically looking in to the TSM test and how motivation for combining prior art has changed.

OFI v. Parker-Hannifin Corp.

By Holland Smith

OFI sues Parker for infringement, Parker moves for invalidity because of obviousness.

Patent Lottery Effects

By Shahil Patel

Legal studies research paper written by Dennis D. Crouch.
The main Idea: “The benefits of using intellectual property as an innovation incentive must be balanced with concerns of holdup costs and potential monopoly harms.  The lottery effect provides a tool that may help weaken the connection between these otherwise linked pros and cons.”
   

 

Invited Lecturers

We have invited lecturers to our classes in order for the students to be able to view situations from various perspectives. The lecturers focused on their point of view, whether industrial, legal, or business.

Name Description
Ron Laurie Managing Director - Inflexion Point Survey & Comparison of Established and Emerging IP Business Models
Professor Randy Katz, UC Berkeley EECS The role of Expert Witness in patent litigations
Duane Valz, VP & Associate General Counsel for Global Patent Strategy at Yahoo Duane Valz, a graduate of UCB's Boalt Hall School of Law, is VP & Associate General Counsel for Global Patent Strategy at Yahoo! In that role, he leads a team of attorneys and engineers responsible for the company's worldwide invention harvesting, patent filings, and portfolio management. Additionally, Mr. Valz advises on IP-related litigation and licensing.

Kathleen McCowin UC Berkeley OTL

 

UCB-Industry Research Alliances
and Intellectual Property at UC Berkeley Kathleen McCowin, Licensing Officer, UC Berkeley Office of, Intellectual Property & Industry Research Alliances (IPIRA).

The Industry Alliances Office works with UC Berkeley employees and companies to enable innovative research relationships. The IAO is responsible for negotiating all research contracts with private industry.

David Barkan, Partner Fish & Richardson P.C.

Presentation: The Role of Engineering in Patent Litigation.

Brief : US Court of Appeals - Brief of Def-Cross Appellant

Memo of P and A ISO Mtn for SJ

Block v Yodlee 03-2-19-Markman Order

Block v Yodlee Order Granting MSJ

Optima v Sonic Markman Decision

Optima v Sonic Order Granting MSJ

Patent US 5,706,442, patent US 6,131,115, patent US 5,666,531

   

 


Silly Patents

Just for our entertainment, we will start each class with short presentations of silly patents. Unfortunately, too many silly patents issued. Please find a patent that shouldn't have been issued and present it to the class. Hopefully, in the process of creating your own silly patent presentations, you will learn more about the patent system.

Title Description

Method for Exercising a Cat

US 5,443,036

By George Shaw

A method for inducing cats to exercise consists of directing a beam of invisible light produced by a hand-held laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.

Laser Cats

US 5,443,036

By Holland Smith

A method for inducing cats to exercise consists of directing a beam of invisible light produced by a hand-held laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.

Dog Stick

US 6,360,693

By Stephen Silveira

Can you patent a simple dog-stick?? No way, this is not patentable... You are wrong here is the patent. An “apparatus” for use as a toy by an animal (e.g. - a dog)

Used to “fetch, carry, or chew”
Has the ability to float
Can be composed of basically any material possible

Concealing Partial Boldness

US 4,022,227

By Samuel Choi

A method of styling hair to cover partial baldness using only the hair on a person's head. The hair styling requires dividing a person's hair into three sections and carefully folding one section over another.

Electric Shock To Stop Snoring

US 3,480,010

By Miguel Chan

An anti-snore device consisting of a neck band to be worn by a sleeper.

Retractable Table Top For A Toilet

US 6, 983, 493

By Jerry Zhang

A device for providing a working surface while a user is seated on a toilet.

Dust Cover For Dog

US 3,150,641

By Abhishek Gupta

The cover provides a barrier between the dog and the rest of the world and keeps pest sprays and powders in tact longer.

 

Jet Powered Surfboard

Des 289,031

By Kenny Rekestraw

A design of a Jet Powered Surfboard.

 

Indoor Resistance Training

US 6,837,830

By Kenny Rakestraw

A multi-directional resistance means for providing a user of said apparatus the ability to duplicate actual athletic procedures.

 

Godly Powers

US 2007/0035812

By Vivian Tang

Christopher Anthony Roller is the godly entity powering Earth with godly powers.

 

Frameless Glasses

US 6,557,994

By Sarah Scott

Body piercing in both eyebrows is used to attach glasses to face.

Facilitating Labor By Centrifugal Force

US 3,216,423

By Srikanth Kondragunta

Child delivery apparatus comprising a centrifuge, means for supporting said centrifuge for rotational movement about a vertical axis.

A Toy From Bottle Caps and Beverage Cans

US 4,202,456

By Shahil Patel

The toy…would be an assembly of bottle caps attached in practically any way which one can imagine.  Moreover, the structure can comprise a mix of bottle caps and beverage cans as well to further add to the flexibility of the toy.

 

Pet Display Clothing

US 5,901,666

By Alan Lum

A vest or belt is integrally formed with tubular, pet receiving passageways which extend around the wearer's body and terminate in pocket-like chambers for feeding and retrieval. Outer wall portions of the passageways are transparent so that a pet moving along the passageways can be seen by a spectator.

Delivery of Caffeine Through An Inhalation Route

US 7,078,016

By Joshua Miller

Aerosols containing caffeine that are used in inhalation therapy.
   

 

Students' Project Apple v. Palm

Apple revolutionized the smart phone market with their iPhone product, which has proven to be quite financially successful. In order to receive a slice of the financial pie, Palm unveiled the Palm Pre, which directly targets the iPhone market. Apple sued Palm on the basis of patent infringement. The students are instructed to analyze the patent infringement case for validity and infringement.

Title Description

For Infringement:

"Apple vs. Palm: the in-depth analysis"

by Nilay Patel ( pdf )

 

An in-depth analysis of Palm's patent infringement of Apple's multi-touch iPhone/iPod touch patents.

For Invalidity:

"Multi-Touch Systems that I Have Known and Loved"

by Bill Buxton ( pdf )

This article reviews multi-touch technology since 1984.

Articles from the Web:

"Apple Hints at a Tough Legal Stance;
Is It Patently Risky?"

by Eric J. Savitz ( pdf )

An article about Apple tough legal stance and is it patently risky.

"Patent Face-Off: Palm Pre, Apple"

by Maisie Ramsay ( pdf )

An article about Apple's Palm and Apple's patent face off over the Palm Pre use of multi-touch technology similar to Apple's iPhone/ iPod touch technology.

"What's Apple Planning to Fend Off iPhone's Rivals?"

by David Needle ( pdf )

An article of how Apple is planning to fend off iPhone rivals by not letting them use multi-itouch technology that they claim to have patents on.

"Shiny, Shiny Patents"

by Tal Pinchevsky ( pdf )

An article about Apple being awarded with the mutitouch patent.

"Can Apple's Multi-Touch Patent Withstand Scrutiny -- or Challenge?" by Erik Sherman ( pdf )

An article discussing if Apple mutitouch patent could withstand the challenges that it can face. Because it may have missed including some seminal prior art, at least some of which was known to the inventors. That could cause spell problems in trying to enforce the patent.

Patents:

7,479,949

7,469,381

Apple's two patents

Example Of Similar Case:

Microsfot vs ITC

Claim Chart Examples: Microsoft v. ITC over Alcatel.

Palm Pre Invalidity of

Apple Patent US 7,479,949 

and US 7,469,381

By Abhishek Gupta and Joshua Miller

Touch Screen Technology: Touch Screen technology refers to using fingers to manipulate objects on a touch screen. Achieved through variety of ways: heat, finger pressure, infrared light, and optic capture.

For invalidity on the two patents, touch screen only refers to single touch methods on the Apple IPhone and Palm Pre.
This includes:
Flicking Left/Right
Locking the screen
Diagonal movements
Document edge in screen auto-display

 

Apple 7,479,949 Claim Chart

 

 

Palm Pre Infringement

By Samuel Choi

Apple has stated publically that the prototypes of the Palm Prē infringe its patents, and that it will protect its IP.

Palm Pre Infringement Combined

By Samuel Choi and George Shaw

 
Apple 7,469,381 Claim Chart  
Palm Pre Infringement Video This is a video file that shows the patent infringement.