e-patents (May 06): Blackberry developments, EchoStar v TiVo and more
By Anthony Cowle, David Webber and Chris Carter | Wednesday, April 26, 2006
This update focuses on recent intellectual property decisions and developments impacting the field of information and communications technology.
RIM settles patent dispute, avoids Blackberry shutdown
Research in Motion (RIM), the makers of the popular Blackberry device, have avoided a shutdown of its e-mail services in the US by agreeing to a settlement of a long-running patent dispute with patent holding company NTP. The settlement is for US$612.5 million and enables Canadian company RIM to keep providing its Blackberry services in the US. This is a one-off payment and the patents in issue last until 2012. An earlier settlement for US$450 million was negotiated in 2004, however this deal fell apart.
Tech giants pledge support to the Patent Commons
The Open Source Development Labs (OSDL) group has opened its software patent library (see patentcommons.org). The Patent Commons project is a collection of patents from patent holders who have decided not to assert their patents, provided they are used to benefit the open source community. The library contains more than 500 patents and is useful for developers interested in finding out what technology is freely available for open source. The library contains patent pledges from companies including IBM, Hewlett-Packard, Sun Microsystems, Computer Associates, Ericcson, Red Hat, Novell, Nokia and others.
Tech giants pledge support to the Patent Commons
In Steven John Grant v Commissioner of Patents [2005], a case involving a business method, Mr Grant had appealed to the Australian Federal Court against refusal of his Innovation patent, for not being appropriate subject matter for a patentable invention. The invention was for an asset protection method for protecting an asset involving a trust and a secured loan, no technical features existed. It was argued by Mr Grant that the invention was indeed patentable, because it concerned an artificial state of affairs and had economic utility in practical affairs, an affirmed test in Australian patent law. However, in upholding refusal of the patent, the Court construed this to actually require weighing the social cost of granting the patent against resulting social benefits. It felt the abstract method did not warrant patent protection.
EchoStar guilty of TiVo infringement
A ten member jury in a US Federal court has found EchoStar guilty of patent infringement of TiVo’s patent relating to digital video recording. In a case purported to be crucial to TiVo’s business of providing digital video recorders that allow users to pause, rewind and fast-forward live TV shows, the jury awarded TiVo US$73.9 million in damages. The judge could potentially triple this amount as the jury found that EchoStar had wilfully infringed TiVo’s patent. EchoStar has indicated it will appeal the verdict.
Toshiba successful in Japanese action over memory chips
In Japan, Toshiba Corp has successfully obtained an order in the Tokyo District Court against Hynix Semiconductor Inc, a South Korean rival. The court found Hynix infringed a patent owned by Toshiba which covers NAND flash memory chips, commonly used in portable music players, digital cameras and mobile phones. Hynix, the second largest memory chip manufacturer in the world, was ordered to pay damages of approximately US$65,000 and halt sales of the chips into Japan.
IE modifications follow patent dispute
Microsoft has made some modifications to its Internet Explorer web browser to avoid any future liability in an ongoing patent dispute with Eolas Technologies and the University of California. The modifications involve the way Internet Explorer handles ActiveX controls and Java applets, although Microsoft continues to assert the Eolas patent in question is invalid. The modifications have been incorporated into new copies of Windows and Internet Explorer 7. In 2003, a US court awarded Eolas more than US$500 million in damages, however the decision has been appealed by Microsoft.
USPTO filing stats: technology companies still dominate
The United States Patent and Trademark Office has released its annual list of the top 10 organizations receiving the most US patents for 2005. The list, in order from 1st to 10th, is: IBM (2,941 patents), Canon, Hewlett-Packard, Matsushita Electric, Samsung, Micron Technology, Intel, Hitachi, Toshiba, and Fujitsu (1,154 patents). This list demonstrates the level of patent activity in the ICT and digital hardware fields is high compared to other industries. The list also shows an increased presence of Asian-based companies compared to previous years.
US Government weighs in on eBay / MercExchange dispute
In an ongoing patent dispute between eBay and MercExchange in the US courts, the US Federal government has weighed into the dispute. At issue is alleged patent infringement by eBay of patents owned by MercExchange, said to cover eBay’s “Buy It Now” feature, which allows users to buy products at fixed prices rather than compete in auctions. An injunction to shut down eBay’s “Buy It Now” feature is being argued for, an important outcome as it has been reported this feature accounts for about a third of eBay’s revenue. The Office of the Solicitor General, on behalf of the Federal Trade Commission and the Antitrust division of the Justice Department, has filed submissions with the US Supreme Court that the injunction should be allowed and that eBay willfully infringed on MercExchange’s patents.
Internet resources
There are some very useful Internet resources for performing preliminary patent searches on potential new inventions. Limited free keyword searches for published patent documents can be performed at:
- www.uspto.gov (United States Patent Office)
- www.european-patent-office.org (European Patent Office)
- www.jpo.go.jp (Japanese Patent Office – English abstracts)
- www.wipo.int (World Intellectual Property Office)
Australian specific patent resources:
- www.ipaustralia.gov.au (Australian Patent Office)
- scaleplus.law.gov.au (Patent legislation)
- www.austlii.edu.au (Patent court cases)
- www.ipria.org (Intellectual property research)
Other recent cases
In other reported court awards and settlements:
- Oracle v MangoSoft (Court judgment) – Oracle avoided patent infringement and having to pay US$500 million sought by MangoSoft (file-sharing product for networked PC’s)
- Toshiba v Lexar (Court award) – California superior court upheld jury verdict that Toshiba to pay US$465 million in damages for patent infringement (flash memory for digital cameras)
- Quantum v Sun Microsystems (settlement) – Quantum to pay Sun Microsystems US$25 million to settle patent infringement, and companies to cross-license patents. The patent in suit was owned by Storage Technology, a company bought by Sun in 2005 (data storage hardware).
- Rambus v Advanced Micro Devices (licensing) – AMD will pay Rambus US$75 million over 5 years to use more than 900 of Rambus’ patents (processor chip controllers).
