Lecture 6 Internet Patents Determining Infringement Each claim

Lecture 6: Internet Patents

Determining Infringement • Each claim is a separate mini-patent • If any claim of a patent is infringed the patent is infringed • Literal infringement occurs if a claim “reads on” the accused device • “All elements” rule – literal infringement requires every element of a claim to be present in the accused device

What is Infringement? [W]hoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. 35 U. S. C. § 271(a) Whoever actively induces infringement of a patent shall be liable as an infringer. 35 U. S. C. § 271(b)

What is Infringement? Whoever offers to sell or sells … a component of a patented [invention] or a material or apparatus for use in practicing a patented process. . . knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple. . . of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. 35 U. S. C. 271(c)

Infringement Remedies • Preliminary injunction (PI) • Money – Compensatory damages – TREBLE DAMAGES – Prejudgment interest + costs • Permanent injunction • Attorney’s fees (“exceptional cases”)

Methods of Doing Business • Business Method Patent Improvement Act of 2000 • Business method determination by Patent Office – Applications are published 18 months after application • Standard of obviousness for business methods – Using a computer for an old business method is obvious • Opposition procedure – public may oppose issuance of a business method patent • Prior invention defense – normally, someone who conceals or suppresses an invention has no defense against a later patentee – exception for business methods: prior secret invention is a defense

US 6, 019, 393, issued Feb. 1, 2000 Planar means for indicating a gratuity as a function I claim: 1. An article of manufacture comprising a gratuity sheet to enable a customer in a restaurant or the like to record the value of an optional gratuity as a function of the cost of the meal; said gratuity sheet comprising a planar sheet having displayed thereon a first set of indicator means for defining a second set of indicator means for representing the gratuity as a percentage function. “PRINTED MATTER” LITTLE CHANCE THIS IS A VALID CLAIM

US 6, 019, 393, issued Feb. 1, 2000 Planar means for indicating a gratuity as a function IMPROVEMENT CLAIM TO A PEN COMPUTER – MAY BE VALID: 5. In an article of manufacture comprising a pen computer used in a restaurant or the like to record the cost of at least one meal and at least one optional gratuity, said pen computer comprising (A) at least one planar surface defining a coextensive information receiving and information display surface; (B) means for internal digital storage of data and program instructions; (C) processor means to execute said instructions; (D) display means to display said internally stored data upon said planar surface; and (E) stylus detection means for recording the x, y position of a stylus relative to said planar information receiving surface; the improvement comprising (F) means to input the value of said at least one gratuity as both a percentage function of the cost of the at least one meal and as an absolute monetary value; and (G) processing and display means to display upon said planar surface the value of the gratuity both (H) as a percentage and (I) as an absolute monetary amount.

Warranty Against Infringement “Unless otherwise agreed, a seller who is a merchant regularly dealing in goods of the kind warrants that the goods shall be delivered free of the rightful claim of any third person by way of infringement or the like but a buyer who furnishes specifications to the seller must hold the seller harmless against any such claim which arises out of compliance with the specifications” 13 P. S. § 2312 (Pa. U. C. C. )

Amazon. com v. Barnesand. Noble. com U. S. Patent 5, 960, 411 issued Sept. 28, 1999, suit filed Oct. 22, 1999 preliminary injunction issued Dec. 1999 injunction vacated on appeal Feb. 2001 1. A method of placing an order for an item comprising: • under control of a client system, • displaying information identifying the item; and • in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system; • under control of a single-action ordering component of the server system, • receiving the request; • retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and • generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and • fulfilling the generated order to complete purchase of the item whereby the item is ordered without using a shopping cart ordering model.

Priceline Online Bidding Patent U. S. Patent 5, 794, 207 Priceline. com v. Microsoft Corp. (re Expedia. com) (D. Conn. , filed 10/13/99) 1. A method for using a computer to facilitate a transaction between a buyer and at least one of sellers, comprising: • inputting into the computer a conditional purchase offer which includes an offer price; • inputting into the computer a payment identifier specifying a credit card account, the payment identifier being associated with the conditional purchase offer; • outputting the conditional purchase offer to the plurality of sellers after receiving the payment identifier; • inputting into the computer an acceptance from a seller, the acceptance being responsive to the conditional purchase offer; and • providing a payment to the seller by using the payment identifier.

US 6, 209, 130, issued Mar. 27, 2001 System for collecting television program data 1. A system for electronically collecting program data over a data network, comprising: • a facility with a database of program data that is provided to multiple television distribution facilities for use in electronic program guides; and • a plurality of television system computers at which program schedules are constructed for submission to the facility by accessing program data at the facility database over the data network.

US 6, 208, 996, issued Mar. 27, 2001 Mobile device having notification database 1. A method of maintaining a notification database in a mobile device, the mobile device including a notification system which accesses entries in the notification database and causes user notifications to be presented based on the entries in the notification database, the method comprising: • running a notification scheduling program at a predetermined time, the notification scheduling program being configured to perform the following steps; • obtaining information indicative of a plurality of notifications to be presented in the future; • entering in the notification database only those notifications, of the plurality of notifications, which are to be presented within a limited predetermined time period; and • scheduling the notification scheduling program to be rerun in response to expiration of the limited predetermined time period.

International Issues • Patents are territorial. A U. S. patent is not valid anywhere else. • There is no such thing as a worldwide patent • Patent Cooperation Treaty – Allows filing initially in one country “designating” any number of other countries – PCT application must be followed up by an application in each country • European Patent Office

International Patent Issues • Patents are territorial. A U. S. patent is not valid anywhere else. • There is no such thing as a worldwide patent • Patent Cooperation Treaty – Allows filing initially in one country “designating” any number of other countries – PCT application must be followed up by an application in each country • European Patent Office

Q&A 46 -840 ECOMMERCE LAW AND REGULATION SPRING 2002 COPYRIGHT © 2002 MICHAEL I. SHAMOS

Amazon. com Referral Patent U. S. Patent 6, 029, 141, Issued Feb. 22, 2000 1. A method of selling items with the assistance of associates, the method comprising: • providing a Web site system that includes a browsable catalog of items and provides services for allowing customers to electronically purchase the items; • providing an associate enrollment system which allows users to electronically apply to operate as associates that select and recommend items from the catalog and refer customers to the Web site system in exchange for compensation; • in response to a submission to the enrollment system by a user, assigning an associate identifier to the user and recording the associate identifier within a computer memory; • electronically providing to the user instructions for generating hypertextual documents with itemspecific links that, when selected by a customer, cause the user's associate identifier and an identifier of a recommended item to be transmitted to the Web site system in a request message; • receiving a request message which contains an associate identifier and an item identifier and extracting the associate and item identifiers from the message, the request message generated by a computer of a customer in response to selection by the customer of an item-specific link provided by an associate in conjunction with a recommendation of the item; • transmitting to the customer's computer a Web page which corresponds to the item identifier extracted from the request message; • transacting a sale of the item and/or other items of the catalog with the customer through the Web site system; • using the associate identifier extracted from the request message to identify the associate; and • determining and recording within a computer memory compensation for the associate for the sale.

Priceline Airline Ticket Patent U. S. Patent 5, 897, 620. Issued April 27, 1999 1. A method comprising the steps of: • viewing, using a computer, special fare listing information for air travel to a specified destination location from a specified departure location within a specified time range, said special fare listing information excluding a specified departure time; • transmitting, using a computer, a request to purchase a commitment for carriage corresponding to said special fare listing information; • receiving a commitment for carriage, including an obligation by an airline to provide a seat on a flight, that satisfies said request but does not specify a departure time; • accepting said commitment for carriage; and • receiving at a time subsequent to said accepting an identification of said departure time.