Articles Posted in Patent Litigation

Michael Jackson undeniably lived a troubled life, but he was also a music icon that left his mark on popular culture through his dance moves and videos. People often incorrectly credit him with inventing the moonwalk. Although he made it famous, he copied the move from other break-dancers. Michael Jackson, however, did invent a dance move for which he was awarded U.S. Patent No. 5,255,452, thereby also contributing to intellectual property culture. In his “Smooth Criminal” video, MJ and his backup dancers lean forward in a gravity-defying manner to an impossible angle.

By filing a patent application for the “Method and Means for Creating Anti-Gravity Illusion,” Michael Jackson let the cat out of the bag. The heel of the shoe is designed to detachably engage a hitch that retractably projects through the stage floor. By anchoring the heel to the floor, the dancer can lean forward and the illusion of defying gravity is achieved. His untimely death has subjected Michael Jackson’s personal choices to debate, but his dedication to creating and protecting his art is unquestionable.

Here’s video of MJ live in concert using the patented shoes to perform the lean and one of the backup dancer’s shoe getting stuck:

Yesterday, the Supreme Court agreed to hear the In Re Bilski case (now renamed Bilski v. Doll), which is on appeal from the Federal Circuit. The Board of Patent Appeals and Interferences (BPAI) previously denied a business method patent for hedging in commodities trading. The Federal Circuit – largely overturning the 1998 State Street Bank case, which allowed business method patents – affirmed the BPAI ruling that the applicants’ invention did not meet the “machine-or-transformation” test. The Supreme Court’s agreement to hear the appeal is a rarity in patent law, leaving patent attorneys to ruminate whether the Supremes will curtail or expand the scope of business method patents. Bilski’s Petition for Certiorari can be viewed here and the Government’s Opposition to Certiorari can be viewed here.

UPDATE 1-4-2011: Appeals court finds Microsoft infringed Uniloc’s patent, click here for details.

After over five years of patent litigation, Uniloc was awarded $388 Million in damages as a result of Microsoft’s willful infringement of Uniloc’s 5,490,216 Patent, which intentional infringement allows for trebling of the monetary damages award. (Jury’s verdict available here). The ‘216 patent relates to a software registration system that allows digital data or software to run on a computer platform only after the appropriate registration number has been entered and licensing procedure followed. The invention basically prevents distribution and use of unauthorized software.

The Court of Appeals for the Federal Circuit previously overturned the Court’s summary judgment of non-infringement and remanded the case back to Rhode Island. (Order available here). Microsoft has indicated that it will appeal the jury’s verdict. According to Professor Colin Miller, Microsoft may have an argument with respect to the Court’s order allowing Uniloc’s damages expert’s testimony. The case is Uniloc USA Inc. v. Microsoft Corp., CV03-440 S (D.R.I. 2003).

Los Angeles, CA – Magician Yigal Mesika filed a patent infringement lawsuit at the Federal District Court in Los Angeles – no magic here – through his attorneys. I thought the magician’s code was to never reveal their secrets. Maybe I’m wrong because Mesika filed a patent application for his invention and was issued U.S. Patent No. 7,311,609, entitled “Miniature Spooling Apparatus.” The patent generally relates to a miniature electrically powered thread reel and spooling mechanism discretely hidden inside a pen. There goes the secret. The pen is used by magicians in routines requiring “invisible” thread to control small objects and the “Electric Spider Pen” is sold through authorized magic shops and websites.

Magic seems to be a popular legal topic lately, including a motion in limine to prevent opposing counsel from performing magic tricks during closing arguments (article here). And now back to our regularly scheduled legal magic programming:

Defendant Bogunia sells an “iThread” product which allegedly infringes on one or more claims of the ‘609 patent. In addition, Defendants are set to release a modified product called the “iThreadX,” which is also believed to infringe. In May of 2008, Plaintiff informed Defendants of their allegedly infringing activity and attempts were made to settle the matter. When negotiations went up in a cloud of smoke, Plaintiff filed this lawsuit. Don’t worry, that was my last pun for now. I am saving “Defendant Magician To Make Lawsuit Disappear” pun until a motion to dismiss is filed. The case is titled Yigal Mesika v. Sean Bogunia et al., CV09-1580 JFW (C.D. Cal. 2009).

Los Angeles, CA – Last year, after being threatened with infringement of Gibson Guitar’s U.S. Patent No. 5,990,405 (“the ‘405 Patent”), Activision, the maker of the popular video game “Guitar Hero,” filed a declaratory judgment complaint of non-infringement (details here). After two rounds of claim construction briefing, a technology tutorial, and a Markman hearing – in addition to Gibson’s counsel withdrawing from the case, the Court granted Activision’s summary judgment of non-infringement.

It did not bode well for Gibson merely reading the Court’s introductory statement: “As a general observation, no reasonable person of ordinary skill in the relevant arts would interpret the ‘405 Patent as covering interactive video games.” The ‘405 Patent generally covers playback of prerecorded music by playing back the “musical sounds” of an “actual musical instrument,” and once the musician has mastered a particular song, the ‘405 Patent’s system is no longer necessary.

The Court quickly dismissed Gibson’s contention that the sound made by the Guitar Hero controller was potentially musical because Gibson’s interpretation would extend coverage to a “button of a DVD remote…to a pencil tapping a table.” Gibson conceded that the guitar controller did not produce “musical sounds,” but argued that the drum set did in fact produce “musical sounds.” The Court, however, concluded that musical sounds must have more definite characteristics than a thud produced from striking a piece of rubber or plastic. Indeed, Gibson’s own expert testified that musical sounds have articulable characteristics, e.g. “timbre” and “pitch.”

Los Angeles, CA – Patent attorneys for Hanger Corporation filed a patent infringement lawsuit at the Federal District Court in Los Angeles, accusing KP Fashion Company and Universal Display and Design, Inc. of patent infringement. In 2003, the Plaintiff invented a new hanger design for high end clothing. U.S. Design Patent No. D502,008, entitled “Clothes Hanger Body” was duly issued by the U.S. Patent & Trademark Office on February 22, 2005. The Plaintiff claims that it marks every one of its hangers with its design patent number.

The complaint alleges that Defendant Universal Display previously requested and was sent a quote for the subject hanger by Plaintiff. In addition, Defendant KP Fashion was provided with a quote by the Plaintiff, which included samples of the product with KP Fashion’s logo emblazoned thereon. Both Defendants, however, indicated to Plaintiff that they were not interested in purchasing the hangers. In August of 2008, Plaintiff saw hangers in Defendant KP Fashion’s retail stores which allegedly were exact copies of Plaintiff’s patented hangers. When an employee was asked regarding the source of the hangers, Defendant Universal’s box containing the hangers was allegedly provided. Needless to say, this lawsuit followed. The case is titled Hanger Corporation v. KP Fashion Company, Inc., CV 08-07342 SVW (C.D. Cal. 2008).

Los Angeles, CA – Patent attorneys for Maxon Lift Corp. (“Maxon”) filed a declaratory judgment lawsuit, at the Federal District Court in Los Angeles, against The Braun Corporation and its U.S. Patent No. 7,422,408. Braun is the assignee of the inventions covered by the ‘408 patent, entitled “Lighted Vehicle Access System and Method,” which issued on September 9, 2008. The patent generally relates to vehicle access lifts, such as for wheelchair access to buses and vans.

The complaint alleges that shortly after the patent issued, counsel for Braun contacted counsel for Maxon and offered a non-exclusive license to practice the invention covered by the ‘408 patent because Maxon’s wheelchair lifts were believed to infringe thereon. Thereafter, Maxon allegedly received a draft non-exclusive license agreement from counsel for Braun. Because of Braun’s previous patent infringement lawsuit against Maxon, it believes that a justiciable controversy exists, thereby establishing jurisdiction for the declaratory relief action. The case is titled Maxon Industries, Inc. v. The Braun Corporation, CV 08-06730 PA (C.D. Cal. 2008).