Articles

What Is an Intellectual Property Lawyer?

An intellectual property lawyer is a lawyer who helps people register, protect, and make money from their unique ideas. The United States prides itself on ingenuity and innovation. Accordingly, multiple protections are available to those who invent and create. Despite these protections, the IP Commission reports that pirated software, counterfeit goods, and trade secret theft cost the U.S. economy between $225 and $600 billion every year. This goes to show just how valuable intellectual property can be. Unfortunately, the ins and outs of intellectual property, or IP, law can be hard to navigate without experience. That is why you should rely on an experienced intellectual property lawyer to help you protect your ideas. How Is Intellectual Property Protected? There are four main ways to protect intellectual property in the United States. Patent A patent gives an inventor the right to prevent others from “making, using, offering for sale, or selling” an invention for a certain period of time. Utility patents last for 20 years and apply to inventions and discoveries of useful and new products or processes. Design patents, on the other hand, apply to inventions of a new ornamental design for a product and last for only 15 years. Patents are designed to allow inventors to profit from their ideas by giving them time to develop, market, and sell their invention without interference. However, patents eventually expire so as not to unduly inhibit competition and innovation. Trademark Trademarks include things like logos, company or product names, and catchphrases. They are the things that make your product or company stand out from others. A trademark can be protected even if it is not registered. However, registering your trademark gives you broader protection and puts others on notice that you own the trademark. To register a trademark, you have to actually use it or intend to use it in commerce. Additionally, the trademark must be distinctive. The more distinctive your mark, the more protection it will receive. While trademarks can last indefinitely, you need to regularly renew your registered trademarks. Copyright Copyright gives the owner the exclusive right to copy a work. It pertains mostly to creative works such as books, music, visual art, photographs, video, and other media. Rules have changed over the years regarding how long a copyright lasts. However, the current rules apply to anything created after January 1, 1978. If the author is one or more individuals, the copyright lasts for the longest surviving author?s lifetime plus 70 years. If the author is an institution or is anonymous, the copyright lasts for 95 years from the time of publication or 120 years from the time of creation, whichever comes first. Trade Secrets Trade secrets include inventions, processes, designs, compilations, etc. that have economic value to a business because of their secrecy. Trade secrets are protected by secrecy rather than registration. There is no limit on how long you can keep a trade secret as long as you take adequate steps to protect it. Even if your secret is stolen, there are laws in place that may allow you to stop others from using or profiting from your secrets. What Is an Intellectual Property Lawyer? An intellectual property lawyer can advise you on the best way to preserve your IP rights and profit from your ideas. As discussed above, there are several possible ways to protect your intellectual property, but without proper advice, it’s easy to take the wrong path. For example, let’s say you have invented a new machine that will speed up the production of widgets. In that case, there is actually more than one way to protect your invention from IP infringement. The best method for you depends on how you plan to use the invention. If you plan to market your machine to manufacturers, then you will want to file for a patent so that you maintain the exclusive right to develop and sell the machine for the length of the patent. On the other hand, if you intend to use the machine to develop widgets yourself, and it will keep the machine secret, you may be better off relying on trade secret protection rather than registering a patent. A patent will expire after 20 years, but you can keep a trade secret indefinitely.  Your IP attorney can discuss these types of questions with you and help you determine the best way to protect your ideas. Your attorney can also help you take action if someone tries to use your intellectual property illegally. They may send a letter insisting that the person stop their infringement. If the person refuses, then your attorney can file a lawsuit and seek money damages, and possibly an injunction. How Can Polasek Law Help with Your IP Needs? John (Ted) Polasek has spent the past 25 years helping clients all over the country to establish and enforce their IP rights. Ted focuses on helping inventors and companies enforce their patent, trademark, and trade secret rights or defending companies accused of violating these rights of others. Ted can also help you apply for and obtain trademarks.  He provides the type of individualized attention that you can’t find at larger firms, and he offers flexible fee arrangements to meet your personal needs. Call or contact Polasek Law today to schedule a free initial consultation and learn what Ted can do for you.

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Articles

What Does an Intellectual Property Lawyer Do?

Intellectual property lawyers focus on helping you protect and profit from your ideas and creations. Intellectual property, or IP, plays a huge role in the United States economy. According to a report by the U.S. Commerce Department in 2016, IP-intensive industries account for 38.2%, or $6 trillion, of the United States? gross domestic product (GDP) and support at least 45 million U.S. jobs. In other words, there is a lot of money at stake when it comes to intellectual property. So it is important that you take the right steps to protect yours. An experienced IP lawyer can advise you on the best way to preserve your intellectual property rights and how to use them to grow your business. If you want to learn more about what an intellectual property lawyer does, keep reading. What Does an IP Lawyer Do? An intellectual property lawyer can advise you on anything related to intellectual property. Common examples of intellectual property include: Inventions, Algorithms, Processes, Music, Client lists, Photographs and video, Books and other written material, Secret recipes or formulas, Product or company names, Unique catchphrases, and Logos. An IP lawyer can help you identify the type of protection you need for your intellectual property. They can also help you properly register your intellectual property and enforce your rights against infringement.  When Should You Consult an Intellectual Property Attorney? Any time you have a question relating to intellectual property, you can rely on an experienced IP lawyer to advise you. However, there are a few specific situations when an intellectual property attorney will be most helpful. You Want to Protect Your Intellectual Property Intellectual property protection falls into four main categories: patent, trademark, copyright, and trade secrets. Sometimes you may need more than one type of protection for your intellectual property. In other situations, you may need to choose the type of protection that makes the most sense for your needs. An IP lawyer will advise you on how to protect your intellectual property in a manner that furthers your individual goals. They can also make sure you correctly register your IP and put appropriate procedures in place to preserve your rights. You Want to Stop Someone Else from Using Your Intellectual Property If someone infringes on your intellectual property rights, it is important to take prompt action. In some cases, sleeping on your rights can weaken or bar your IP claim. Additionally, allowing IP violations to go unchallenged can cost you licensing revenue, cut into your market share, or reduce the value of your product. Your attorney may start by asking the infringer to stop using your IP. If they refuse, then your attorney can file a lawsuit and enforce your rights in court. You Want to License Your Intellectual Property One of the ways to create revenue from your intellectual property is by licensing it to others. For example, a website might pay you a fee to use a photograph you took. Or you can sell a license to use software on a limited number of devices.  Another way is to license your patent. Licensing your intellectual property can involve complicated agreements that define your rights and obligations as well as those of the licensee. Important terms may include: Limitations on how the licensee can use the IP; Whether the rights granted to the licensee are exclusive; Whether the licensee can modify or improve on the IP; The compensation that will be paid for the license;  Whether the license can be assigned;  Requirements to maintain the license; and Remedies for violating the agreement. It is important to have an attorney draft or review the terms of any licensing agreement. Your attorney can help you negotiate favorable terms and understand how the agreement will affect you. What Does an Intellectual Property Lawyer Do for You? When you hire an intellectual property lawyer at The Polasek Law Firm, you can feel confident that your IP will be protected. Attorney John (Ted) Polasek has been helping people to protect and benefit from their intellectual property for nearly 25 years. Ted understands how important responsive, hands-on service is to clients. Intellectual property can be a very personal thing, representing your individual creativity and ingenuity, and you need someone who will value your IP the way you do. Call or fill out an online form to schedule a free consultation with Ted, and learn how he can help you protect your ideas.

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Patents

Reasonable Royalty Damages For Patent Infringement

Damages for Patent Infringement If you have a patent that you believe is being infringed, you may have questions about recoverable damages. You may be asking what are the damages for patent infringement, and how do I prove damages Or if you are being accused of infringement, you may be asking what is the value of this patent The Federal Circuits opinion in Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., decided July 3, 2018, provides a good analysis of damages for patent infringement. The Statute 35 U.S.C. Section 284 provides that the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer Appointment Power Integrations is another case that considers apportionment between the infringing and non-infringing features of the accused product, and application of the entire market value rule. The Federal Circuit stated As a substantive matter, it is the value of what was taken that measures a reasonable royalty and it is only the patented technology that is taken from the owner, so the value to be determined is only the value that the infringing features contribute to the value of an accused product. When the infringing device has multiple components, the Court stated: [w]e have articulated that, where multi-component products are accused of infringement, the royalty base should not be larger than the smallest salable unit embodying the patented invention. Yet, this may not end the inquiry in deciding the appropriate royalty base. In Power Integrations, the Court stated that even if the smallest salable unit is used, the patent owner must still establish what portion is attributable to the patented technology when the smallest salable unit itself contains several non-infringing features. Entire Market Value Rule In Power Integrations, the Court described the entire market value rule (EMVR) as a demanding alternative to our general rule of apportionment. The EMVR allows patent owners to recover damages based on the value of the entire apparatus containing multiple features when the patented feature constitutes the basis for the consumer demand. However, there are strict requirements that limit the EMVR: If the product has other valuable features that also contribute to driving consumer demand patented or unpatented- then the damages for the patent infringement must be apportioned to reflect only the value of the patented feature. This is so whenever the claimed feature does not define the entirety of the commercial product. In some circumstances, for example, where the other features are simply generic and/or conventional and hence of little distinguishing character, it may be appropriate to use the entire value of the product because the patented feature accounts for almost all of the value of the product as a whole. Although this sounds helpful to patent owners, the Federal Circuit cautioned that the EMVR is appropriate only when the patented feature is the sole driver of customer demand or substantially creates the value of the component parts. If the accused infringer provides evidence that its product has other valuable features, the patent owner has the burden to establish those features are not relevant to consumer choice those other features did not influence purchasing decisions. The Court’s opinion provides a good summary of the evidence (and argument) on these issues and is certainly worth reading to consider how a potential case will measure up. If you have a patent that you believe is being infringed or if someone is alleging that you owe damages for patent infringement, please see Polasek Law Firm’s Litigation page and contact the team at 832-485-3560.

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Articles

US Supreme Court Allows Recovery Of Lost Foreign Profits

In WesternGeco LLC v. ION Geophysical Corp, decided today, the U.S. Supreme Court held that 35 U.S.C. Sections 271(f)(2) and 284 allow a patent owner to recover damages in the form of a reasonable royalty and lost foreign profits for patent infringement. In this case, the defendant manufactured the components in the United States, but then shipped those components (unassembled) abroad to companies for assembly and subsequent use of the assembled system. At trial, the plaintiff presented evidence that it had lost 10 contracts due to this activity. The jury awarded $12.5 million in royalties and $93.4 million in lost profits. At issue was the extraterritoriality reach of U.S. patent law. Authoring the opinion for the Court, Justice Thomas stated [t]he conduct in this case that is relevant to that focus clearly occurred in the United States, as it was IONs domestic act of supplying the components that infringed?WesternGeco?s?patents.? The Court held that the lost-profits awarded to the patent owner was a domestic application of Section 284: Taken together, [Section] 271(f)(2) and [Section] 284 allow the patent owner to recover for lost foreign profits.

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Articles

Pick Your Registered Agent Carefully

Domestic companies incorporated in the state of Texas (and other multi-judicial district states) accused of patent infringement have an additional tool in their venue arsenal. The Federal Circuit ruled last week in In re BigCommerce that a domestic company incorporated in a state having multiple judicial districts (such as Texas) resides for purposes of the patent venue statute only in the single district within that state where it maintains a principal place of business, and if it does not maintain a principal place of business in the state, in the judicial district where its registered agent is located. The decision also provides direction on what constitutes a company’s principal place of business. In this case, the defendant accused of patent infringement maintained its principal place of business in the Western District of Texas. This case originated from litigation filed in the Eastern District of Texas. This is an interesting decision because under the facts of the case it appears the Federal Circuit did not have to include the registered agent aspect in its test. Many companies retain an outside company to act as their registered agent. This part of the Court’s ruling suggests that a company incorporated under Texas law (but not having its principal place of business in Texas) that is concerned about being sued for patent infringement in Texas, such as East Texas, may be able to impact venue through its choice of its registered agent.

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Articles

Foreign Companies Are Subject to Patent Infringement Lawsuits In Any Judicial District

Subsequent to the Supreme Court’s ruling in TC Heartland, some foreign corporations were advancing the contention that the venue for patent infringement lawsuits naming them as a defendant was not proper in any court in the United States. Today, the Federal Circuit addressed that contention in In re HTC Corporation, ruling that foreign corporations are subject to suit in any judicial district. This ruling will likely give patent owners more flexibility in deciding where they file patent infringement cases against foreign companies. Whether there is any appreciable increase in patent cases filed in Delaware, the Eastern District of Virginia, the Eastern District of Texas or other particular venues remains to be seen. In the underlying case, HTC Corporation, a Taiwanese corporation, asked the District Court in Delaware to dismiss a patent infringement case filed against it, arguing that the venue was improper in Delaware. The District Court held that HTC Corp, as a foreign corporation, was subject to suit in any judicial district. The Federal Circuit looked at the patent venue statute (28 U.S.C. Sec. 1400), the general venue statute (28 U.S.C. Sec. 1391), legislative histories, and prior Supreme Court decisions, and determined there was no error in the District Court’s analysis.

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Articles

How much Detail Is Required from Patent Owners To State A Claim for Patent Infringement?

The Federal Circuit’s opinion in Disc Disease Solutions Inc. v. VGH Solutions, Inc. et. al., handed down on May 1, 2018, may very well change the specificity that patent owners and patent attorneys provide in filing a lawsuit to enforce their intellectual property rights. It suggests that, at least for simple technology, there is not much difference, if any, between the old Form 18 requirements and the Iqbal/Twombly standard. This case was an appeal of a dismissal with prejudice of the plaintiff’s case for patent infringement. The Federal Circuit determined that by specifically identifying the accused products (and attaching pictures of the products) and alleging that the accused products meet each and every element of at least one claim, the patent owner had provided fair notice of the asserted infringement.

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Articles

Fact Issues Preclude Dismissal Under Alice

The Federal Circuit recently handed down two decisions that give guidance to patent owners contemplating patent litigation in the post-Alice world. The first was Berkheimer v. HP Inc. which was decided on February 8, 2018. Berkheimer was an appeal from the Northern District of Illinois court granting summary judgment in favor of the accused infringer, in part, that claims were patent-ineligible under 35 U.S.C. Section 101. The Federal Circuit held the claims were directed to an abstract idea, and then moved on to the second part of the Alice analysis. The second part of the Alice analysis requires that patent owners, accused infringers, and courts consider the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into something patent-eligible. Citing precedent, the Berkheimer Court recognized that the second step may be satisfied when the limitations of the claim involve more than the performance of well-understood, routine and conventional activities previously known to the industry. The Court then stated the question of whether a claim element or combination of elements is well-understood, routine, and conventional to a skilled artisan in the relevant field is a question of fact. Any fact, such as this one, that is pertinent to the invalidity question must be proven by clear and convincing evidence. However, the Court then proceeded to acknowledge that whether a claim recites patent-eligible subject matter is a question of law that may contain underlying factual disputes that can be decided on summary judgment. In that case, the Federal Circuit determined that the district court erred in concluding there were no underlying factual questions, stating the mere fact that something is disclosed in a piece of the prior art, for example, does not mean it was well-understood, routine, and conventional. This ruling turned on the improvements in the specification, to the extent they are captured in the claims, create a factual dispute regarding whether the invention describes well-understood, routine, and conventional activities.? On February 14, 2018, the Federal Circuit handed down its decision in Aatrix Software, Inc. v. Green Shades Software, Inc. This was an appeal of Rule 12(b)(6) ruling of the district court, and the district court’s refusal to allow the patent owner to amend its complaint. In this case, the Court stated that although patent eligibility can be determined on a 12(b)(6) motion, this is true only when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law. In that case, the Court decided the patent ineligibility was not properly decided at Rule 12(b)(6)stage and the district court erred when it denied the patent owner leave to amend the complaint with allegations that, if accepted as true, establish the claimed combination contains inventive components and improves the workings of the computer. The court’s opinion analyzing the proposed amended complaint is an interesting read.

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Articles

A Recent Opinion From The Eastern District Of Texas Addresses Numerous Alice/Section 101 Issues

In its September 24, 2018 opinion in Intellectual Ventures v. Sprint, et. al., the Eastern District of Texas Court made several rulings that touch on a number of issues that patent owners and parties defending patent infringement allegations should consider. This opinion was the result of two identical Section 101 Motions to Dismiss filed in two companion cases involving multiple asserted patents. The first issue addressed by the Court was whether the three claims that the defendant’s motion analyzed were in fact representative of all the asserted claims in the six asserted patents. Noting the brevity with which this was addressed by the defendants (in two footnotes of their motions), the Court determined that defendants failed to sufficiently demonstrate that the three claims were representative of the other claims. The Court then turned to its Alice analysis of the three claims addressed in the defendant’s motions. Here, the Court found one claim to be directed to an abstract concept and failed to contain an inventive concept. (The patent owner’s argument that it would prove an inventive concept at trial didn’t seem to gain much traction). Addressing the second claim, the Court found it directed to an abstract idea but that there was a question of fact as to whether the claim contained an inventive concept. And finally, with respect to the third claim, the Eastern District of Texas Court determined the claim was not directed to an abstract concept under Alice.

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Articles

Supreme Court Follows ?On Sale? Bar Precedent in America Invents Act Decision

Earlier this year, the Supreme Court addressed the on-sale provision of the AIA, 35 U.S.C. Sec 102(a), in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. In this case, the patent owner, Helsinn, entered into a license agreement and a supply and purchase agreement with a third party. These agreements gave the third party the right to distribute, promote, market, and sell the drug in question. In return, Helsinn received upfront and future royalty payments. The agreements required the third party to keep Helsinn’s proprietary information confidential. The effective filing date of Helsinn’s patent was nearly two years after the two agreements were executed. The District Court held that the on-sale bar did not apply, concluding that under the AIA, an invention is not on sale unless the sale or offer made the claimed invention available to the public. The Federal Circuit reversed, concluding that if the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of the sale to fall within the AIA on-sale bar. The Supreme Court affirmed. The issue as phrased by the Court was whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. The Court concluded such a sale can qualify as prior art. As noted by the Supreme Court in its Pfaff decision over twenty years ago, every patent statute since 1836 included an on-sale bar provision. Under Pfaff, the Court had ruled (pre-AIA) the on-sale bar applies if two conditions are met. First, the product must be the subject of a commercial offer for sale. Second, the invention must be ready for patenting (which can be shown by proof of reduction to practice, or drawings or descriptions of the invention that are sufficiently specific to enable a person of skill in the art to practice the invention). The Court noted it had previously suggested that a sale or offer need not make an invention available to the public. It also noted the Federal Circuit’s decisions had made explicit that secret sales could invalidate a patent. The court’s decision was based on its determination that when Congress reenacted the on-sale bar language in the AIA that was found in the pre-AIA statute, that Congress had adopted the earlier judicial construction of that phrase. The fact that additional language appears in the AIA statute (otherwise available to the public) did not change that body of precedent according to the Court. The Court also noted that Helsinn was not asking the court to re-visit pre-AIA precedent. Since it had concluded that Congress did not alter the meaning of on-sale when the AIA was enacted, the court held an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential can qualify as prior art under Section 102(a).

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