Presentation is loading. Please wait.

Presentation is loading. Please wait.

Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C. AIPLA MWI, Japan Practice Committee, Jan. 29-30, 2013, Tampa, FL Patent Trolls Comin’ to JP Courts.

Similar presentations


Presentation on theme: "Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C. AIPLA MWI, Japan Practice Committee, Jan. 29-30, 2013, Tampa, FL Patent Trolls Comin’ to JP Courts."— Presentation transcript:

1 Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C. AIPLA MWI, Japan Practice Committee, Jan , 2013, Tampa, FL Patent Trolls Comin’ to JP Courts - NO Living Space in Japan??

2 2 Who’s a troll? Why evil?

3  Hard to define…  If ask businesses, “Yes, they’re trolls”, if ask NPEs, “No, we’re not.”  All NPEs are trolls?  Hard to differentiate universities, individuals and other good NPEs from harmful NPEs 1.1. So-called “Patent Trolls”… 3

4  Patent aggregators/ patent holding companies/ patent funds/ even “patent terrorists”…  Good or evil?  Investment purpose or defensive purpose?  Profit-oriented or nonprofit?  New business models on IP are not necessarily evil  Spooky NPEs who seek for outrageous compensation and/or reckless injunction  Once NPEs start to offer fancy license royalty, the other party calls them “trolls” So-called “Patent Trolls” 4

5  NO chance of cross licensing  “Patent thicket” favors trolls  Trolls cleverly choose end product manufacturers/distributers as target  Bulk offer for patent licensing without showing infringement analysis and technical discussion  Early bird incentive on royalty rate  Simultaneous/serial attacks 1.2. Why Aliens for Businesses? 5

6  Patent litigation aspects:  IP High Court with exclusive jurisdiction  NO chance of forum shopping  NO ITC  Higher predictability  NO punitive damages/”entire-market- value-rule”  NO presumption of validity  NO contingency lawyers 1.3. Disincentive to Bring Lawsuits in Japan… 6

7  Other aspects:  NO big collapse of IT bubbles  Less active IP liquidation  Higher threshold of patentable subject matter  Higher threshold of inventive-step  NO continuing application practice  Long- and well-established invalidation trial system before the JPO  NO limitation to grounds for invalidation 1.3. Disincentive to Bring Lawsuits in Japan 7

8  Plaintiff: ADC Technology, Inc.  Pioneering “Troll” born in Nagoya, Japan  The most litigious Japanese troll  Lost “Dual-display mobile phone” case  Claiming \100M damage compensation  Defendant: SONY Computer Entertainment, Inc.  Manufacturing/selling PlayStation3 (PS3) and “torne” (PS3 dedicated terrestrial digital TV broadcasting video-recording kit), and providing related Internet-based service  …The troll beaten again 2.1. PS3 w/ ”torne” Case -Tokyo Dist. Ct. 2011(wa)3572, Decided on Nov. 30,

9 2.1. PS3 w/ ”torne” Case -Long History 9 “VIEWING RATING SURVEY SYSTEM” JP Filed Sep.18, 2001 JP Patented Feb. 20, 2009 G1: “SERVER, USER DEVICE, PROGRAM AND INDEX PROCESSING METHOD” (Pat.#2) JP Filed Dec.19, 2008 JP Patented Dec. 10, 2010 Invalidation Trial demanded Sep. 30, 2011 (MUKO ) Decided Mar. 30, 2012 Claims 2-10 Invalidated Claim 1 Found valid On Appeal at IP High Court SONY launched “torne” service Mar G2: “SERVER, USER DEVICE, PROGRAM AND INDEX PROCESSING METHOD” (Pat.#1) JP Filed Jul.14, 2010 JP Patented Oct. 22, 2010 Invalidation Trial demanded Sep. 30, 2011 (MUKO ) Decided Mar. 30, 2012 Claims 2-10 Invalidated Claim 1 Found valid Divisional G2: “USER DEVICE, PROGRAM, INDEX PROCESSING METHOD AND TUNER” JP Filed Nov.5, 2010 Pending On Appeal at IP High Court G3: “SURVEY SYSTEM” JP Filed Aug.31, 2012 Pending t

10  Problem to be Solved: To survey viewing rating/ video recording rating by collecting user’s choice on TV program through Electric TV Program Guide (EPG)  Server (survey agent) - client (users) based viewing rating survey system  Users select TV program through EPG to transmit channel selection  A survey agent collect users channel selection to calculate viewing rating  Displayed EPG may contain viewing rating/ video recording rating 2.1. PS3 w/ ”torne” Case -What’s originally disclosed… 10

11  Original Claim 1 (sum.) A viewing rating survey system for surveying a viewing rating based on data sent from users to a survey agent, comprising: at a user side, means for displaying an EPG; means for designating TV program to be viewed by users through the EPG; means for showing the designated TV program; and means for transmitting channel data of the designated TV program to the survey agent side, at a survey agent side, means for receiving the channel data; means for counting a number of users viewing a TV program identified by the channel data for each channel; and means for calculating a viewing rating based on a number of all users to be surveyed and a counted number of users PS3 w/ ”torne” Case -What’s originally disclosed 11

12 2.1. PS3 w/ ”torne” Case -Accused SONY’s service… 12 PS3 “torne”: Digital TV tuner for PS3 EPG 2) Owner PS3 receives access information of PS3s to calculate “MIRU” information 3) Owner PS3 sends “MIRU” information to the matching SVR Query/room Owner PS3 Matching/storage SVRs 1)PS3s access the matching SVR 4) PS3s obtain “MIRU” information from SVR to incorporate into EPG data to be displayed EPG

13  SONY launched “torne” with PS3 around March 2009, peer-to-peer service to provide users with real time popularity of on-air TV program  Accused feature was “MIRU” and “TORU” information to be displayed  “MIRU (viewing)” information: number of audience watching on- air TV program  “TORU (TV recording booking)” information: number of audience who have booked the TV program 2.1. PS3 w/ ”torne” Case - Accused SONY’s service 13 “MIRU” information “TORU” information

14  Patented Claim 1 of #1 (corrected after grant) A server comprising: means for receiving from a plurality of user devices viewing status information identifiable of an on-air TV program being viewed through the user devices; means for receiving from a plurality of user devices TV recording booking status information identifiable of a TV program being booked; means for calculating viewing index comprehensible of whether a number of viewers viewing the on-air TV program is large or small based on the viewing status information; means for calculating TV recording booking index comprehensible of whether a number of booking is large or small based on the TV recording booking status information; and means for transmitting the viewing index and the TV recording booking index corresponding to the on-air TV program to be displayed on EPG on the user devices.  Claims 4,5: user device claims, claims 6,7: program claims 2.1. PS3 w/ ”torne” Case - How the troll tried to trap “torne”? 14

15  Issue 1: Does SONY’s SVRs on PlayStation network, “torne” w/ PS3 and its program infringe patents at issue?  Server claims, user device claims and program claims  Issue 2: Does SONY’s “torne” indirectly infringe patented user device claims (Art. 101 (i), (ii))?  Issue 3: Validity (Art.104 ter (1))  Issue 4: Damages 2.1. PS3 w/ ”torne” Case -Issues 15

16  Issue 1: Does SONY’s SVRs on PS network, PS3 w/ “torne” and its program infringe patents at issue?  Court ruled non-infringement of server claim (Claim 1), because neither SONY’s SVRs on PlayStation network nor PS3 w/ “torne” constitutes claimed “server”  NON infringement of other user device claims and program claims both claiming the same “server”  Issue 2: Does SONY’s “torne” indirectly infringe patented user device claims (Art. 101 (i), (ii))?  NON indirect infringement of user device claims  Issue 3: Validity (Art.104 ter (1))  Issue 4: Damages 2.1. PS3 w/ ”torne” Case -Court Decision 16

17  Issue 1: Does SONY’s SVRs on PlayStation network, PS3 w/ “torne” and its program infringe patents at issue?  Neither SONY’s SVRs on PlayStation network nor PS3 w/ “torne” constitutes claimed “server”, because:  The SVR on PS network does not calculate “MIRU” information and “TORU” information, but the PS3 does which is comparable to claimed “user device”  Claimed “server” is construed as a server independent/separate from “user devices” according to claim language  Original disclosure clearly differentiate “survey agent (server)” from “users (user devices)”, so that “survey agent” could not be “users” who are survey target in light of transparency of the viewing rating survey  Plaintiff, ADC’s infringement claim was dismissed 2.1. PS3 w/ ”torne” Case -Reasoning 17

18  Plaintiff: IPCom GmbH  Highly litigious German “Troll”  Run by Bernhard Frohwitter, “one of the most successful German patent litigators”  Pursuing patent battles against telecom companies around the world  NPEs purchased patents originally filed by Bosch GmbH  Claiming injunctive relief and \151M damage compensation  Defendant: eAccess Ltd. (merged eMobile Ltd. by absorption)  Manufacturing/selling mobile communication devices with “EMnet mail”, Multimedia Messaging Service (MMS)  …The troll beaten 2.2.”EMnet Mail” Case -Tokyo Dist. Ct. 2009(wa)8390, Decided on Aug. 30,

19 2.2.”EMnet Mail” Case -Long History 19 “TRANSMISSION FRAME AND RADIO UNIT WITH TRANSMISSION FRAME” DE Filed Dec.8, 1998 in DE PCT/DE1999/ Filed Oct. 16, 1999 eMobile launched “EMnet mail” service Mar JP National Entry Jun. 8, 2001 JP Patented Aug. 24, 2007 Transferred from Bosch to IPCom Apr. 28, 2008 Divisional Priority claiming G1: “TRANSMISSION FRAME AND TRANCEIVER” JP Filed Jun. 27, 2007 Refusal decision Sep. 21, 2012 IPCom sued eMobile Mar. 16, 2009 t

20  Patented invention is directed to Multimedia Message Service (MMS) capable of embodying e.g., text data, audio data and image data into one short message transmission frame in mobile radio communication  “Would-be essential” patent in 3GPP Global System for Mobile Communications (GSM) standard  Prior Art: ASCII text based Short Message Service (SMS) defined in 3 GPP GSM standard  eMobile devices embody “EMnet mail” function, i.e., MMS defined in 3GPP GSM standard, allowing e.g., pictogram mail, photo mail and movie mail 2.2.”EMnet Mail” Case -Patented Invention and accused device 20

21  Claim 1: A method for transmitting a message (5) including at least two data fields, comprising the steps of: including, in a first data field (15) of the message (5), data in a first data format, and including, in a second data field (20), data in a second data format, different from the first data format; inserting a first identification code (35), which identifies a makeup of the whole message (5), into the first data field (15); and including, in the first identification code (35), information about at least one of a number of data fields (15, 20, 25, 30), size of the data fields, and the data format.  Claim 11: Communication device claim 2.2.”EMnet Mail” Case -Patented Invention 21

22  Issue 1: Does eMobile device infringe a patent at issue (JP )?  Issue 2: Validity (Art.104 ter (1))  Issue 3: Is last-minute additional assertion based on originally non- asserted patented claims (Claims 2 and 12) admissible?  Issue 4: Damages 2.2.”EMnet Mail” Case -Issues 22

23  Issue 1: Does eMobile device infringe a patent at issue (JP )?  Issue 2: Validity (Art.104 ter (1))  Novelty destroying killing prior art ended the battle  “Generalized Structure for a Multimedia Messaging Service”, submitted at ETSI Standardization Committee in Hannover, Germany by Bosch itself on Dec. 2-3, 1998, just several days before the priority date  Issue 3: Is last-minute additional assertion based on originally non-asserted patented claims (Claims 2 and 12) admissible?  Issue 4: Damages 2.2.”EMnet Mail” Case -Court Decision 23

24  Issue 1: Does eMobile device infringe a patent at issue (JP )?  Issue 2: Validity (Art.104 ter (1))  Issue 3: Is last-minute additional assertion based on originally non-asserted patented claims (Claims 2 and 12) admissible ?  Mar. 16, 2009: IPCom brought lawsuit  Mar. 25, 2011: IPCom added assertion based on originally non-asserted patented claims 2 and 12, after the judge showed interim opinion of non-infringement and solicited settlement  The court dismissed as impermissible change in cause of action under Civil Procedure Act 143(1), because it will irreparably delay proceedings  Issue 4: Damages 2.2.”EMnet Mail” Case -Court Decision 24

25  Plaintiff: IPCom GmbH  NPEs purchased patent originally filed by Bosch GmbH after eMobile launched accused 3G Mobile service  Claiming injunctive relief and \151M damage compensation  Defendant: eAccess Ltd.  Manufacturing/selling W-CDMA 3G mobile embodying CODEC defined in 3GPP standard  Patent at issue: JP “METHOD FOR TRANSMITTING DIGITAL USEFUL DATA”  “Would-be essential” patent in 3GPP standard  …The troll beaten again 2.3.”3G Mobile CODEC” Case - Tokyo Dist. Ct. 2009(wa)17937, Decided on May 31,

26  Issue 1: Does eMobile’s transmission method infringe patent at issue?  Burden of proof on infringement for “would-be essential” patent  Issue 2: Indirect infringement  Issue 3: Joint infringement  Issue 4: Validity (Art.104 ter (1))  Issue 5: Is seeking an injunction abuse of right?  Issue 6: Damages 2.3.”3G Mobile CODEC” Case -Issues 26

27  Issue 1: Does eMobile’s transmission method infringe patent at issue?  Court ruled non-infringement, because:  Even if claimed transmission method is defined in 3GPP standard and eMobile’s method is in compliance with 3GPP standard, it does not necessarily mean that eMobile’s method infringes the claimed method which is optional in 3GPP  Insufficient evidence to prove that eMobile’s method uses all element in claimed invention  Burden of proof is still on a plaintiff for “would-be essential” patent  Issue 2: Indirect infringement  Issue 3: Joint infringement  Issue 4: Validity (Art.104 ter (1))  Issue 5: Is seeking an injunction abuse of right?  Issue 6: Damages 2.3.”3G Mobile CODEC” Case -Court Decision 27

28  Trolls have failed in “holdup”  Trolls have failed to pocket huge money  To date, no living space in Japan  Automatic injunction issue has not yet addressed by the Court  …But trolls are always pesky and getting smarter  …Not yet off the hook 4. …The Troll Sneaked Away? 28

29 Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C.


Download ppt "Kay KONISHI NICHI-EI Patent and Trademark Attorneys, P.C. AIPLA MWI, Japan Practice Committee, Jan. 29-30, 2013, Tampa, FL Patent Trolls Comin’ to JP Courts."

Similar presentations


Ads by Google