Columbia Professor Latest To Go On The Patent Offensive

from the very-offensive dept

Mon, Mar 24th 2008 12:25am — Mike Masnick

Over the last year or so, we've seen two disturbing trends in enforcing patents. The first, is seeing patent holders suing a bunch of companies at once rather than just one or two, as used to be standard. They do this because they fear that some type of patent reform is coming, either via Congress or the courts. So they want to get as many patent suits in as quickly as possible. The second trend is that, rather than taking patent infringement cases through the court system (which is bound by the recent precedents set by the Supreme Court that loosen patent rules), they use a loophole: taking patent infringement claims to the US International Trade Commission (ITC). The ITC has the authority, if it believes that infringement occurs, to block the import of infringing goods. The ITC doesn't need to pay attention to what the courts say, and doesn't need to wait for the USPTO to review a patent. It can simply decide infringement occurred and ban the import of the goods. This is, effectively, the equivalent of an injunction against the product (just the sort of thing the Supreme Court said should be used more cautiously).

A Columbia professor has now picked up on both of these trends, getting the ITC to investigate 30 companies for violating her patents on LED and laser technologies. Among the companies investigated: Sony, LG Electronics, Hitachi, Toshiba, Panasonic, Motorola, Nokia, Pioneer, and Samsung. Whether or not these patents turn out to be valid, it's a cheap tactic to use the ITC rather than going to the courts to fight this battle.

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Filed Under: itc, lasers, lawsuits, leds, loophole, patents
Companies: hitachi, lg, motorola, nokia, panasonic, pioneer, samsung, sony, toshiba

26 Comments

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Iron Chef, 24 Mar 2008 @ 1:41am

I saw this story over the weekend, and it's difficult to comment on, specifically because the assigned agent appears to be well respected in academia research.

I would have thought that academics would have understood the purpose of the patent system better than the business guys who are looking to make a quick buck-- you know, those ones who file and wait for an innovation to be included in another company's strategy. Who is the winner in these types of cases? Just because you capture twenty ideas out of a brainstorming session doesn't immediately entitle a registered agent to a royalty. There are manufacturing capabilities, supply chain, marketing and go to market strategies that need to be flushed out before a product launch. Does their patent also address these business activities, and furthermore, with lack of said strategies, are they entitled to the royalty?

This case may be interesting because the Professor could have background in the manufacturing process. But a ultraviolet LED is only a small, small piece to bringing a BluRay DVD player to market. Does it warrant blocking imports of the product?

It continues to show that until there's incentive to license, or some mechanism that allows inventions and patents to be extended, the system will continue to be flawed.
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Anonymous, 24 Mar 2008 @ 4:16am

You continue to misstate the law for the ITC. It's not a "loophole" but a specific statutory provision for enforcement of patent rights. The ITC is bound by the same patent laws as the regular courts and appeals go to the Federal Circuit. Issues of infringement and validity are heard by the ITC. What do you mean by "it doesn't need to wait for the USPTO to review a patent"? Are you saying there doesn't have to be an issued patent for it to enforce? That's balderdash. It's just a different (and speedier) venue with ADDITIONAL requirements (not less), so what's you beef with it?
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angry dude, 24 Mar 2008 @ 6:23am

another week, another BS from Mikey
Hey, Mikey

your corporate buddies are already happy
-you are doing a great job misinforming techdirt lemmings on patent issies
Just give it a break already
Enough bullshitting
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Overcast, 24 Mar 2008 @ 6:43am

Oh wow, what kind of people does Columbia hire? Seems to be nothing but a bunch of fruitcakes out there as so called 'professors'. Just another of many prime examples.

I'm not so sure outside of Academia's self-loving circle that anyone would really consider Columbia "well respected".
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DanC, 24 Mar 2008 @ 6:56am

Re:
The ITC is bound by the same patent laws as the regular courts

They are bound by the same laws certainly, but not necessarily the same rulings. Because the ITC does not consider damages in it's rulings, it cannot apply the four factors test set forth by the Supreme Court in eBay v. MercExchange. Thus, it is far easier to obtain an injunction against the alleged infringer through the ITC.

While there are some additional costs and requirements involved in bringing a complaint before the ITC, the main goal of doing so is to force the supposed infringers into entering a licensing deal.

What do you mean by "it doesn't need to wait for the USPTO to review a patent"? Are you saying there doesn't have to be an issued patent for it to enforce?

Review means review, not issue. For instance, the USTPO rejected the five NTP patents that were used to sue RIM upon review. In that case, the judge decided to speed through the trial, and did not wait for the final rejections to be issued. Likewise, because the ITC follows strict timelines for resolving cases, the ability to wait for USTPO patent review is limited.

so what's you beef with it?

With the current trend in patent litigation, the ITC is behaving similarly to rocket dockets such as Marshall, with the added benefit of not needing to apply the Supreme Court's four factor test. It's a circumvention of the court system to obtain leverage to force a licensing deal.
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BillGod, 24 Mar 2008 @ 7:03am

I hope it works!!
think of it this way. If this actually gets through and all products that contain LED's or lasers are banned from being imported into the USA. It will DEFINITELY raise awareness to the problems we are facing with the patent office.
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Anonymous Coward, 24 Mar 2008 @ 8:21am

Re: I hope it works!!
think of it this way. If this actually gets through and all products that contain LED's or lasers are banned from being imported into the USA. It will DEFINITELY raise awareness to the problems we are facing with the patent office.

which could very well be the reasoning behind the professors actions, but we'll just have to wait and see
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MLS, 24 Mar 2008 @ 8:54am

ITC
Merely a summary that compares and contrasts infringement claims in US courts versus claims before the ITC.

http://www.dlapiper.com/global/publications/detail.aspx?pub=412
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DanC, 24 Mar 2008 @ 8:55am

Re: Re: I hope it works!!
which could very well be the reasoning behind the professors actions

Highly doubtful. She's been in court over infringement claims before, and hasn't shown any inclination of promoting a patent reform position.

If her claims are valid, then she's entitled to compensation. But the ITC is not the correct place to do it.
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jaundiced reader, 24 Mar 2008 @ 9:39am

Professor story
Dudes, that story's from last weeek. Second point, curious that you don't credit CNET - even though you link. Hmmm. Odd
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Mike (profile), 24 Mar 2008 @ 9:51am

Re: Professor story
Dudes, that story's from last weeek.

And when you run Techdirt, you can decide when we post stories. While this story did break last week, this is when we decided to write about it.

We're not (and never have been) about timely breaking of news. It's about the analysis of the story after the fact.

Second point, curious that you don't credit CNET - even though you link. Hmmm. Odd

Er, not odd at all. If you look at our history of over 30,000 posts, we always link to the source where we found the story, but rarely "announce" where it's from. We figure our readers are smart enough to understand that the link is the credit. So, no, not odd at all. Quite standard.

Btw, I can see your IP address... ;)
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Nick (profile), 24 Mar 2008 @ 9:52am

Her last name says it all: Rothschild.
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Mike (profile), 24 Mar 2008 @ 9:54am

Re: another week, another BS from Mikey
Enough bullshitting

As per usual, the only one doing so is you.

You KNOW that we don't do any advocacy work.
You KNOW that we don't have any clients who agree with our position on patents.
You KNOW that we don't even do any work on patent related stuff right now.

I have told you all this. Yet you repeat your lies, because you have no ability to make a real argument.

So, angry dude, grow up.
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Mike (profile), 24 Mar 2008 @ 9:56am

Re: Re:
DanC answered all the points for me (thanks!). I don't have anything else to add, other than my "beef" with it is that this gives patent holders two cracks at litigating over the same patent. That's not how our justice system is supposed to work.
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Joe Smith, 24 Mar 2008 @ 10:32am

ITC
As I recall, the ITC has a statutory mandate to be biased in favor of American producers over foreign producers. A continuing sore point with America's trading partners.
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Anonymous, 24 Mar 2008 @ 10:49am

Re: Re:
"Thus, it is far easier to obtain an injunction against the alleged infringer through the ITC." Last time I read about it, decisions post-eBay are granting injunctions where the patent owner is an operating company, just not against NPE's. An ITC complainant must have domestic industry to have standing (I'd be curious to see how the prof satisfies that requirement), so the chances that you won't be enjoined against a competitor with domestic industry are pretty slim in a federal court too. You're going to be enjoined (or barred from importation) either way. "In that case, the judge decided to speed through the trial, and did not wait for the final rejections to be issued." You point out federal courts do the same thing -- so how does that make the ITC any worse than federal court? As you say, it's just a rocket docket. Is the alternative, without a rocket docket, no "good" patent complainant will be able to stop copyists for years. Is that a better solution? If you disfavor patents, fine, but the ITC is not more evil than regular courts.
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Richard, 24 Mar 2008 @ 11:00am

Re: Re: Re:
She is satisfying the "domestic industry" requirement by saying that importation of infringing goods interferes with her ability to license her patents. The complaint is available on the ITC website, BTW, if anyone wants to take a look. The Commission started an investigation on this one last week anyway, so, off to the races!
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DanC, 24 Mar 2008 @ 11:55am

Re: Re: Re:
You point out federal courts do the same thing -- so how does that make the ITC any worse than federal court?

Because, as I noted, a federal court must consider the Supreme Court's four factor test, while the ITC does not, thus making it far easier to gain an injunction against an alleged infringer.

Additionally, the ITC has deadline rules for it's investigations, which limits the ability of the ITC to wait for a patent review from the USTPO.

If you disfavor patents, fine, but the ITC is not more evil than regular courts.

Where did you pull 'evil' from? I never said it was evil, just that it's being abused by those wishing to circumvent the federal courts. If a patent holder can't meet the Supreme Court's four factor test, then they don't deserve an injunction, period.
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Anonymous, 24 Mar 2008 @ 12:01pm

Re: Re: Re: Re:
Do you have a link to the complaint? I couldn't find it, and the docket page http://info.usitc.gov/sec/dockets.nsf/6d369b122be91d368525669000713afd/8a90b5c791d867bc852573f5005df f87?OpenDocument says it's confidential.
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Anonymous, 24 Mar 2008 @ 12:22pm

Re: Re: Re: Re:
You call it a "loophole," which suggests that patent owners are doing something that the law was not designed for. The only remedy provided by Section 337 is to exclude goods from importation and that's what the ITC grants. It's hardly a "loophole" for someone to ask for the only remedy the law provides.
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Mike (profile), 24 Mar 2008 @ 12:38pm

Re: Re: Re: Re: Re:
You call it a "loophole," which suggests that patent owners are doing something that the law was not designed for. The only remedy provided by Section 337 is to exclude goods from importation and that's what the ITC grants. It's hardly a "loophole" for someone to ask for the only remedy the law provides.

It's a loophole in that this works outside of the court system, during which there are the differences that Dan noted.

I could understand this being used AFTER a court has ruled that there is infringement, but doing so beforehand gives people two ways to litigate the same case.
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Peter, 24 Mar 2008 @ 1:05pm

Meh
Good for her. I hope she gets millions. It's high time that someone benefits from this other than sleazy lawyers and megacorps.

Sometimes, especially in American culture, you need to yell at someone at the top of your lungs to get them to listen.

Maybe this will cause Congress and the USPTO to listen when people say "the patent system is broken".
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Richard, 24 Mar 2008 @ 1:37pm

Re: Re: Re: Re: Re:
Try this:

http://searchapp.usitc.gov/edis3/app;jsessionid=18723A226182BA6D662655460F6916A4?service=di rect/1/InvestigationDocuments/next&sp=2&sp=StabularResult

It's #12.

If this doesn't work, try searching in the public filings under "Short wavelength" -- the investigation # is 360
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Steve R. (profile), 24 Mar 2008 @ 1:50pm

Academics and Patents
Was her research paid for with the use of public funds?
Did she do this research under salary that was paid for by the university?

If this research received funding through a Federal grant, there should be no patent. The technology should be in the public domain.

If she did this research as a paid university employee the patents should belong to the university.
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Iron Chef, 25 Mar 2008 @ 11:11pm

Re: Re: Professor story
Mike,

>
>Btw, I can see your IP address... ;)
>

I thought we already had this conversation. In one sentence you lost the audience you needed. Man, you need to get rid of the tracking shit. Consider replying to the post, not to the IP address.

I'm going to take some time off while you think things over.

http://www.youtube.com/watch?v=xk5jIDzWv_s
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terry wagar, 30 Jun 2008 @ 6:33pm

open murder conspiracy in portland oregon
In portland oregon, Joan Wagar and Eric Carlson are in A Murder conspiracy together.
And Clackamas Walmart are acttively helping them by hideing Eric's employment there from me and my family.
For over A year now Eric Carlson has been going by the name gashel, last name unknown by me, he dyed his hair black, and Walmart agreed to hide his Identity from my daughter, who also worked at that store.
Joan and Eric have friends in Authority protecting Joan and Eric from prosecution.
I have reported this repeatedly to the Authority's and they are ignoring Joan and Eric's CONSPIRACY.
I would be more than happy to Testify to this but the Authority's are covering this up so my testimony would simply dissapear.
My name is Terry Wagar and Im backing up these charges.
Nomatter how many people Joan and Eric poisoned the Authority's here in portland Oregon refuse to arrest them.
Im making these charges public because of the blatent coverup of these charges.
why is Walmart hideing A BodyDouble?
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