May 2012

May 30, 2012, by Mandour & Associates, APC

Los Angeles – Last week, three ex parte requests were filed with the United States Patent and Trademark Office (USPTO) challenging patents held by tech giants Apple and Facebook. One of the challenges concerned Apple’s Patent for touchscreen interfacing (patent number 7,479,949). A second challenge against Apple was related to the document presentation on a touchscreen display (patent number 7,469,381). The challenge against Facebook was in regard to a dynamic news feed about users of social networks (patent number 7,669,123). The parties filing all three challenges are unknown at this point.

Some have speculated that Yahoo is involved in the challenge for the Facebook patent because of a counter suit filed by Facebook against Yahoo in March 2012. Patent 7,479,949 was recently involved in ongoing litigation between Motorola and Apple. The second Apple patent is involved in the Apple versus Samsung lawsuit which is still in process. However, due to their absorption of Motorola and pending litigation, many people believe that Google is the third party filing both Apple challenges. The same Apple patents have been challenged in the past, when they were most likely requested by Nokia.

An ex parte reexamination can be requested when a third party has evidence or examples of previous use of a patented invention. The holder of the challenged patent has 30 days to respond to any action for reexamination filed with the USPTO. Unless the delay was unintentional or unavoidable, the patent is automatically invalidated if the holder fails to respond to the challenge in a timely manner. There are many potential reasons for a patent challenge, but many times patent holders request a reexamination to confirm the validity of their own patent. This self-ordered reexamination may seem strange, but it is often used as a strategic method in anticipation of an upcoming lawsuit. Alternatively, the USPTO can decide to issue an ex parte challenge independent of a third party filer.

May 16, 2012, by Mandour & Associates, APC

Los Angeles – In a partnership with Talk About Curing Autism (TACA), Los Angeles-based GTX Corp. has been granted a utility patent that will focus on GPS tracking location based solutions aimed at aiding families living with autism. TACA is a non-profit organization which provides valuable information and resources to parents whose children have been diagnosed with autism.

As the leader in customizable, two-way GPS tracking technology, GTX will be bolstering its growing intellectual property platform that includes 11 issued patents and 5 pending patents. Its new patent titled “System and Method for Communication with a Tracking Device” covers many vital communications with its processes that are currently being used everyday by the company’s licensed partners and consumers, which will give GTX increased market share in the growing $13 billion location based services industry.

“With our award winning multi-patented GPS Smart Shoe and patent-pending Alertag, we have been at the forefront of connective health for years, providing new levels of functional oversight, security and peace of mind to a variety of audiences and needs,” stated Patrick Bertagna, CEO of GTX Corp. “We look forward to developing and bringing to market new, innovative products that both satisfy the ever-increasing consumer demand for location based solutions and that will help support the families challenged with a special needs child.”

The patent has thirty claims, including two independent claims. One of the independent claims involves a tracking device with remotely configurable settings and the other independent claim relates to a method of communicating configuration data to a tracking device. This patented technology will provide extra safety and security to individuals afflicted with autism. Recent research has shown that forty-eight percent of autistic children wander from their homes, making them more prone to injury, death, and other safety issues.

The technological innovation covered by the new patent, along with the partnership between GTX and TACA, will enhance the level of healthcare and safety that is becoming integrated into our phones, homes, and even our clothing with the convergence of digital and medical tracking technologies.

In addition to providing technology to keep developmentally disabled children safe, GTX Corp. also develops miniaturized GPS tracking technology for a wide variety of consumer branded products. Founded in 2002, the company is well-known for its patented GPS shoe, a smart shoe that includes a smartphone GPS tracking feature.

Los Angeles – In a surprising twist from an ongoing patent infringement dispute between Microsoft and Barnes & Noble, the two companies have agreed to a new partnership with one another to focus on e-reading and the education market.

The new subsidiary yet to be named will include Barnes & Noble’s digital and college businesses. Microsoft’s Windows 8 program will be included in a Nook e-reading application to be created by the subsidiary.

The largest book retailer in the United States will reportedly own the lion’s share of the subsidiary, with an 82.4 percent stake, while Microsoft will make an initial investment of $300 million at a post-money valuation of $1.7 billion in exchange for a 17.6 percent equity share. The subsidiary will apparently have an ongoing relationship with Barnes & Noble’s retail bookstores, however it is not clear how much of a role the stores will have in promoting it, considering that the subsidiary’s goal is to accelerate the transition from tangible books and publications to e-reading.

The inclusion of its college division in the new subsidiary is said to be a very crucial component of the strategic vision of the partnership. Under the venture, Barnes & Noble’s Nook Study software will offer college students and educators an outstanding technology platform for the distribution and management of digital education materials. The goal of the subsidiary is to revolutionize the way people consume, create, and share digital information.

Back in March 2011, Microsoft sued Barnes & Noble, Foxconn and Inventec (the companies that manufacture the Nook), claiming that the Android-based device infringed several Microsoft patents. Barnes & Noble responded to the patent infringement complaint by counter-suing with the U.S. International Trade Commission.

Neither company has offered much information relating to the settlement details. In the past, Barnes & Noble has been quite stubborn when it comes to paying Microsoft royalties for the patents it allegedly infringed, however it was confirmed that the bookseller will be paying the software giant royalties for every Nook sold as a result of the subsidiary.

Los Angeles – It was ruled a win for Finland’s Nokia and Taiwan’s HTC when the European Patent Office stated its judgment that the IPCom patent ’100A’ was “invalid in its current form.” However this ongoing battle of over five years likely won’t end here as IPCom has stated that it will challenge the ruling.

In 2007, IPCom purchased the mobile telephony patent portfolio of Bosch, which led to licensing agreements with multiple top phone makers. However, Nokia and HTC were not among that list due to the fact that a licensing agreement could not be reached. Therefore, IPCom claimed that Nokia and HTC products were infringing on patents owned by the company and decided to proceed accordingly. While IPCom attacked the two companies for patent and licensing infringement which includes infringement of the ’100A’ patent, Nokia has said that IPCom’s “licensing fee demands are excessive and unjustifiable.”

This five year battle has included mostly victories for IPCom. In 2009, IPCom challenged HTC for infringement and won in a German court. HTC appealed the ruling at first but then decided to put a halt to its pursuit of the appeal. Also, last week a German court ruled that Nokia had in fact committed infringement on IPCom’s intellectual property. Nokia is challenging the ruling.

During the court proceedings and investigation of this particular infringement, a decision was made that the ’100A’ patent was invalid. The patent relates to 3G users access of channels and the assignment in its networks.

Paul Melin, the Vice President of Intellectual Property at Nokia stated, “We are pleased that the European Patent Office has confirmed that this IPCom patent is invalid,” and added that IPCom “needs to recognize its position and end its unrealistic demands for what remains of this significantly diminished portfolio.” A representative from HTC stated, “This ruling undermines IPCom’s license infringement claim against us. We trust IPCom will now reconsider its opportunistic dispute with HTC and withdraw its legal action against us.”