Helferich vs. New York Times Patent Decision

A decision was issued on August 14, 2013 in the Helferich case against the New York Times.  The court held that Helferich's prior licenses to cell phone makers exhausted its patent rights in relation to delivery of content to cell phones.  In other words, the devices are licensed and Helferich cannot go back for a second payment from the companies that push content to cell phones.  There may well be further litigation (including appeal), however this ruling is a positive precedent for marketers.

The court's memorandum opinion and order is attached:

Helferich vs. New York Times Patent Decision - Memorandum Opinion and Order - (PDF)

Updates to Legislative & Regulatory Information

The 4A's has updated the Legislative & Regulatory section of this website to reflect several recent developments. New information is available on the following topics:

1) Obama Administration Patent Proposals
2) Overview of Proposed Patent Legislation
3) House Judiciary Committee Chairman Goodlatte (R-VA) draft legislation
4) Senator Cornyn (R-TX) "Patent Abuse Reduction Act."
5) Senator Schumer (D-NY) “Patent Quality Improvement Act.”
6) Vermont Takes the Lead on Patent Trolls

Read More

4A's Issues New Patent Guidance Recommendation

The 4A's has issued a new patent guidance recommendation: Digital Functions, Patent Liability and the "Wayback Machine".

This is the third in a series of similar recommendations. For more information, see the "4A's Advisory" section of this website, or view the new recommendation directly here.

How to Avoid Patent Trolls

Brian Heidelberger, Chair of the Advertising, Marketing and Privacy Law Practice at Winston & Strawn LLP in Chicago shares an overview of the patent troll problem and discusses recommendations for managing patent risk. Mr. Heidelberger's informative 8 minute video (How to Avoid Patent Trolls) references examples of recent patent troll assertions, discusses 4A's guidance for agencies and comments on client patent risk perspectives.

You can view the Brian Heidelberger patent video here.

Functional Media, LLC v. Google Inc

One of the challenges presented by software patents asserted by patent trolls is determining what the patent covers. Often times the invention is described in nomenclature that is difficult to decipher. A recent case in involving advertising patents may force patent applicants to describe their invention with particularity and assist in invalidating unduly vague patents.

According to 4A's patent attorneys at Venable LLP, the court determined that the patent claim is indefinite. The patent “does not describe the means or steps taken to accomplish the end result,” and “is merely a black box that accomplishes the claimed function.” “Simply disclosing software … ‘without providing some detail about the means to accomplish the function[,] is not enough.’” The algorithm for performing the transmitting function must be disclosed.However, in this case there is no specific algorithm disclosed in any form. No explanation of how the software performs the function is provided.

Venable's Jeffri Kaminski note, perhaps this is the start of a trend of the courts taking a hardened stance on vague software patents. To read more about the United States Court of Appeals for the Federal Circuit ruling Download FM v Google or visit PatentlyO

http://www.patentlyo.com/patent/2013/02/fm-v-google-indefiniteness-and-functional-claiming.html