Loading...

Follow OC Patent Lawyer on Feedspot

Continue with Google
Continue with Facebook
or

Valid

Orange County is a hotbed of innovation, especially considering its size.? For 2017, Orange County companies were granted 1,619 patents, whereas Los Angeles companies were granted 1,731 patents.? Considering the relative populations of Orange County (3.19 million) and Los Angeles County (10.4 million), the intensity of innovation at companies based in Orange County is high.? Per capita, Orange County is three times (3) more innovative than our Los Angeles neighbor.

The rapid pace of innovation in Orange County seems to be accelerating.? The number of patents granted to Orange County companies from December 2017 to May 2018 exceeded the number granted in all of 2017 – both in terms of total patents granted, and in terms of the rate at which those patents were granted.? As mentioned above, 1,619 patents were granted to Orange County companies in the year of 2017.? In the following six months, as of May 28, 2018, 2,083 patents were granted to Orange County companies.? That is an increase in the rate of patent grants by 28%.

Top cities with companies focused on patenting their ideas

Which Orange County cities have the most companies focused on patenting their ideas?

CityCompany with most granted patents (Number of patents assigned to Company)Total Number of Granted Patents (Utility and Design) per City for the past 1 yearTotal Number of Design Patents per City
IrvineAllergan, Inc. (83 Patents)88393
Santa Ana Universal Electronics Inc. (39 Patents)18315
Aliso Viejo Microsemi Corp.i Corp. (37 Patents)1531
Lake Forest Oakley, Inc.y, Inc. (31 Patents)11627
Newport Beach Newport Fab, LLC (12 Patents)10912
San Clemente ICU Medical, Inc.l, Inc. (26 Patents)8110
Huntington Beach C&D Zodiac, Inc. Inc. (11 Patents)6321
Anaheim Hestan Commercial Corporation (12 Patents)6114
Rancho Santa Margarita Applied Medical Resources Corporation (25 Patents)592
Costa Mesa CONSUMERINFO.COM, INC. (11 Patents)5514
Fountain Valley Kingston Digital, Inc. (21 Patents)4821
Yorba Linda Vyaire Medical Capital LLC (8 Patents)334
Brea Beckman Coulter, Inc. (17 Patents)318
Buena Park ALMEX USA INC. (6 Patents)

Orora Packaging Solutions
(6 Patents)
2311
Tustin Dynalloy, Inc (3 Patents)222
Cypress Christie Digital Systems USA, Inc. (13 patents)212
Laguna Niguel Urban Armor Gear LLC (8 Patents)187
Orange Kerr Corporation (4 Patents)180
Laguna Hills LINQ3 Technologies LLC (5 Patents)170
Garden Grove Allied Wheel Components (9 Patents)1611
Mission Viejo UBRANDS, LLC (7 Patents)142
Fullerton Raytheon Command and Control Solutions LLC (3 Patents)132
San Juan Capistrano Agouron Pharmaceuticals, Inc. (3 Patents)91
Dana Point Atlantis Technologies (2 Patents)71
BCAT, LLC (2 Patents)
Laguna Beach Tropare, INC. (3 Patents)71
Ladera Ranch EmiSense Technologies, LLC (4 Patents)50
Westminster SYPHERMEDIA INTERNATIONAL, INC. (3 Patents)51
Los Alamitos Cleland Sales Corporation (2 Patents)40
La Palma HydroNovation, Inc. (3 Patents)30
Placentia 20
Seal Beach Cosmodyne, LLC (1 Patent)20
La Habra EYES4LIVES, INC. (1 Patent)10
Villa Park MotorMood, LLC (1 Patent)11
Top technologies being patented in Orange County

Based on the categories defined by the Cooperative Patent Classification system, the top 3 industries in Orange County, California with respect to the number of patents granted are:

  1. ?Medical? (CPC Section A61: Medical or Veterinary Science; Hygiene)
  2. ?Computers? (CPC Section G06: Computing; Calculating; Counting)
  3. ?Communications? (CPC Section H04: Electric Communication Technique)

Side Note: The CPC is a classification system similar to the Dewey Decimal Classification.? Every patent document (i.e., granted patent and pre-grant publication) is categorized by the United States Patent and Trademark Office (USPTO) under a system referred to as the Cooperative Patent Classification (CPC).? The classification is managed by the USPTO and the European Patent Office.? The patent offices around the world has a common interest in working together to ensure that only new and nonobvious inventions are protected by a patent.? By harmonizing the databases at the various patent offices, examiners have more information at their fingertips when examining an application for patent.

Top companies innovating in the top technologies

Twenty-six (26) % of the total number of patents are for medical-related inventions.? Companies that invent in that area include:

Fifteen (15) % of the total number of patents are related to computers.? Companies in that area of technology include:

10% of the total number of patents were related to communications.? Companies in that space include:

  • MBIT Wireless, Inc.
  • Newracom, Inc.
  • Quest Software, Inc.,
Top 10 companies granted a patent

The 10 highest-patenting companies – as defined by number of patents granted – in Orange County, California are:

CompanyNumber of Patents past 1 year
Allergan, Inc.83
Abbott Medical Optics Inc.26
Applied Medical Resources Corporation25
BSH Home Appliances Corporation43
Edwards Lifesciences Corporation65
ICU Medical, Inc.26
MBIT WIRELESS, INC.28
NEWRACOM, INC.52
Oakley, Inc.31
Quest Software, Inc.31
Universal Electronics Inc. 43
An Orange County patent attorney?s summary: the non-legalese version

Orange County has an unusual depth of innovation.? The number of patents per capita is 3 times greater compared to Los Angeles which is remarkable.? The breadth of technological innovation is equally impressive: Orange County companies are not focused only on software or computer technology as in other areas of California such as Silicon Valley. The numbers from the Patent Office (USPTO) suggest that Orange County can look forward to even more innovation, expansion, and growth.

Should you have any questions or want more data, please do not hesitate to contact me at (949) 433-0900.

The post Orange County Patent Statistics for 2018: Midyear Report on Top Innovators appeared first on Patent Attorney | Orange County | OC Patent Lawyer.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 

Components, parts and aspects of a device (i.e., invention) which are described as important or necessary to the invention can be used to limit the scope of the patent.? When preparing a patent application, the goal is to describe an invention so that the important or necessary parts are highlighted but not necessarily described as important or necessary.? In this way, aspects and embodiments of the invention can be flexibly claimed during examination.? However, a component described as important and critical can be used to narrow the scope of the patent claims.

Scroll down for?tips and examples of how to mitigate the risk of a ill-prepared patent application from narrowing your patent claims.

In Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. 2018), the defendant attempted to narrow the scope of the claims by arguing that the specification taught a particular arrangement of the components of the patented device.? The Federal Circuit reviewed the patent specification and found that the particular arrangement of parts was not ?clearly? described as being ?important.?? As such, the Federal Circuit held that it was an error for the District Court to limit the scope of the patent to the particular arrangement based on the description of the invention, and not based solely on the language of the claims.

Fact pattern of Blackbird Tech

The patent owner (Blackbird Tech LLC) sued the accused infringer (ELB Electronics, Inc.) for patent infringement based on US Pat. No. 7,086,747.? To narrow the scope of the claims, the accused infringer argued that the patent claims should be interpreted to include a requirement that the attachment surface be secured to the ?ballast cover? even though the claims did not recite this arrangement.? The language of the claims stated that the attachment surface is secured to the ?illumination surface.?

Below is a figure from the patent which shows the attachment surface secured to the illumination surface.? The ballast cover is not shown in the drawings.

Here is the accused infringer?s logic.? The accused infringer pointed to the prosecution history of the patent, namely, US Pat. No. 7,086,747.? Prosecution history refers to the back and forth communication between the patent owner and the examiner.? In particular, when the patent application was first filed, the original claims required the attachment surface be secured to the ?ballast cover.?? However, in response to a rejection based on indefiniteness by the examiner, the patent owner had amended the claim to recite an attachment surface secured to ?a ballast cover an illumination surface.?? (markups show the amendment to the claim).

Although the opinion of the court didn?t fully explain the accused infringer?s logic, it appears that the accused infringer was arguing that the amendment to the claims were being done for the purposes of ?clarification? and not to ?change? the scope of the patent claim.? The claim had been rejected based on indefiniteness.? An indefiniteness rejection merely means that by the words of the claim, the scope of the claim is unclear and cannot be determined.? As such, when the patent owner changed the claims presumably to make the language of the claims ?clear,? the patent owner was not trying to ?change? the scope of the claims but merely “clarify” the meaning of the words.? Hence, the interpretation of the amended claims should be the same or similar to the old claims.

The Federal Circuit disagreed.

Analysis of scope of claims

The Federal Circuit recognized that limiting the claims to an attachment surface secured to the ballast cover would be importing a limitation not based solely on the claim language itself but on the specification.? The language of the claims only recited that the attachment surface be secured to the illumination surface, not the ballast cover.

After a review of the patent specification, the Federal Circuit repeatedly stated that the patent specification did not describe an attachment surface secured to the ballast cover as being important or critical to the invention.? As such, the Federal Circuit held that it was error to limit the claims to require the attachment surface be secured to the illumination surface.

The Federal Circuit vacated the judgement by the District Court and remanded the case for further proceedings.

Possible Lessons Learned

The way that the components, parts, aspects, and embodiments of an invention are described can have a significant negative impact on the scope of the claims of the patent.? After the patent application is filed, the emphasis placed on the various parts of the invention cannot be shifted, amended or altered.? As such, it is important to mitigate these risks of a limiting disclosure in the way that the invention is described in a patent application.

1. Deemphasize important and critical parts of the invention in the specification but emphasize them in the claims

If features that are described as important and critical can limit the scope of the patent, then it would be prudent to limit or not described any part of the invention as critical or important.? That is sometimes difficult.? Inventors might be caught up in their own invention and want to make sure that the examiner understands the critical and important parts of the invention.? Certainly, the examiner needs to know what the critical and important parts of the invention are.? However, the primary means to accomplish that is through the claims, not necessarily the detailed description section of the invention.? The claims define what the inventor is seeking a patent for.? The description informs the public what the meaning of the language of the claims.

a) Use words such as ?may?

A way to mitigate placing too much of an emphasis on any part of the invention is to merely describe the device as ?may? having a component.? In this way, the component is described as an optional part of the inventive device, not a critical or important part of the invention.? Inventors might worry that proper emphasis is not being placed on what really is the crucial part of the invention.? However, they need to understand the role of the specification versus the claims.? The claims draw the attention of the examiner to the critical and important inventive aspects.? The specification provides written description support for the claims.

b) Use words such as ?Typical?

Another method of mitigating a narrow description is to describe the feature as being preferred or typical such as a ?typical or preferred adhesive.?? Or, the patent specification can state that the attachment is with an adhesive but other fastening mechanism are also contemplated such as [fill in the blank].

c) Describe other ways to accomplish the same function

Sometimes a part needs to be highlighted in a patent application because it really is important and critical to the invention.? Nevertheless, consider deemphasizing the important and critical part.? For example, other ways may be disclosed that achieve the same part.? A patent specification can describe a preferred adhesive but mention other suitable attachment mechanisms (e.g., welding, nut and bolt, etc.) to deemphasize the importance or criticality of the thing being described.

2. Identify the point of novelty properly

Not all patent applications are equal.? Some cover the invention much better than others.? There is no recipe or standard form for crafting a patent application.? Hence, the range of quality from attorney to attorney is wide.? One of the crucial steps in determining whether the patent claims well written is by reviewing how well the patent attorney you are working with identified the point of novelty.

If the point of novelty is identified properly, then all other aspects can be described as being optional.? Also, the point of novelty of the invention can be highlighted but not in terms of being important or critical.

3. Do not use the word ?invention? in the patent specification

In my opinion, very little good comes from referring to the product to be patented as the ?invention.?? Once you identify the invention then it narrows one?s understanding of what the invention is.? If the patent specification describes that the invention is X, then the courts are more likely to construe the claimed invention as requiring X.? Instead of using the word ?invention,? the product or service can be merely identified as the product or service.? For example, an inventive car can be referred to as the car having various features.

4. Examiner?s interview

During review of the prosecution history of the instant case, the Federal Circuit reviewed the indefiniteness rejection and the patent owner?s response of amending the claims to overcome the rejection.? Because the patent owner did not fully explain why they made the claim amendment, the Federal Circuit did not allow them to speculate as to the reason.? The Federal Circuit stated that:

?A person of ordinary skill in the art may not be able to divine what transpired between the applicant and the examiner in that interview that caused the change in claim language and scope.? That is irrelevant to the issue.? We look at what an ordinarily skilled artisan would understand about the claim scope from reading the prosecution history.?

The patent owner and the examiner had a telephonic interview.? The exact contents of the interview was not written down or fully explained in writing.? In my opinion, this is beneficial to the patent owner.? Whenever you write something down, those words can and will be used against you when you assert the patent against an accused infringer or defendant.

Typically, an interview will consist of a written statement of what is to be discussed.? Normally, I provide a draft response to the office action and through the interview, get feedback as to the direction that I?m trying to take the claims.? The draft response might be filed and entered into the prosecution ?history but the back and forth discussion with the examiner is never transcribed.? At most, a brief summary of the content of the interview might be written down in an interview summary which can be objected to later on if it is not accurate.

The bottom line is that the telephonic interview allows the patent owner and inventor to expedite the prosecution without having all of the words in the interview used against the inventor/patent owner later.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post Components described as important can narrow scope of patent claims appeared first on Patent Attorney | Orange County | OC Patent Lawyer.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
Apportionment versus Entire Market Value Rule

Damage calculations for patent infringement are based on an apportioned value of the patented feature to the overall accused product.? Damages can be based on the entire market value which would increase the damages calculations.? However, the patent owner has a satisfy a high bar before being allowed to do so.

Apportionment limits damages so that damages are tailored to the harm incurred by the patent owner and the patent owner does not get a windfall for more than the value of the patented feature.? Using the entire market value of the accused product, not just the patented feature in the accused product would increase the damages calculation.

Entire Market Value Rule if other features did not influence

Damage calculations based on the entire market value is appropriate only if the patent owner can show that the patented feature was the sole driver of customer demand or substantially creates the value of the component parts.? Or, if the patented feature alone motivates customers to purchase the infringing product in the first place.? The patented feature cannot just be ?essential? to many customers.??In Power Integrations, Inc. v. Fairchild Semiconductor (Fed. Cir. July 3, 2018), the Federal Circuit raised the standard by stating that the patent owner must show that the other features did not influence purchasing decisions.

The Federal Circuit set the bar very high before damage calculations are based on the entire market value of the overall accused product and not just the apportioned value of the patented feature.

Facts of Power Integrations v. Fairchild

In Power Integrations, the patent owner (Power Integrations) and the infringer (Fairchild) both manufactured and sold power supply controller chips (i.e., accused product).? These chips are used in power supplies, such as chargers for electronic devices.? To improve energy efficiency, these chips would regulate the power with a switching regulator. Prior art switching regulators would skip on/off cycles in some instances which would create a loud noise and provide intermittent power.? The patented feature was for a switching regulator that would reduce the frequency of on/off cycles rather than skip cycles.

The patent owner argued that damage calculations for patent infringement should be calculated based on revenues generated by sales of the power supply controller chips (i.e., overall accused product), not just the switching regulator (i.e., patented feature) of the power supply controller chips.? In order to show that damage calculations should be based on the entire market value, the patent owner showed that the patented switching regulator was ?essential to many customers, as it allowed the products to meet the federal government?s Energy Star program.? (emphasis added).

Evidence for Damage Calculations based on EMV Rule raised higher

The Federal Circuit disagreed and held that the evidence presented by the Power Integration (patent owner) was insufficient to invoke the entire market value rule.? The Federal Circuit raised the bar even higher before a patent owner can avail themselves of the entire market value rule.

The power supply controller chip is a multi-component product.? The chips had multiple features which customers were looking for.? During litigation, the patent owner and the infringer agreed that the accused infringing chips had other valuable features.? For example, jittering was also an important feature in these types of chips.

The patent owner did not show what effect those other valuable features had on consumer demand.? Although the patent owner showed that the patented feature was essential to a customer?s buying decision, more was needed. The patent owner needed to show that ?those other features did not influence purchasing decisions.? (emphasis added).

The Federal Circuit describe the entire market value rule as ?a demanding alternative to our general rule of apportionment.?? It certainly is and it appears that they have made it even more.

In my opinion, by having to further prove a negative (i.e., did not influence), the Federal Circuit may have set the bar so high that it would be very difficult to secure damage calculations based on the entire market value of the overall accused product.

Potential problems of raised standard

How do you prove a negative?? What percentage of consumers must have been not influenced by the other features?? 100%, 99%, etc.? How about aesthetics, fit and feel or other non-patented features?? How many products do we buy just because of one feature?? Not many.? What happens if the patent owner advertises that the product has many benefits, one of which is the patented feature?? These are all issues that need to be resolved in future litigation but leaves open many ways for infringers to argue for a lower damage calculations.

Maximizing damages for inventions

How do we try to maximize damages for our clients?? A possible way to maximize the value of a patent may be to craft a claim to the overall system and not just to the inventive feature.? In Power Integrations, the patent?s claim was for an inventive switching regulator for a power supply, not a power supply having an inventive power supply.? In this way, the lawsuit against the infringer would be against the infringer?s sales of power supplies or the overall accused product.

This would be an easy claim drafting exercise to do.? Many laypeople or inventors may believe that this is just semantics.? However, the words of the claims matter.? My mentor used to say that in patents, everything begins and ends with the claims.

The downside to switching up the claim?s focus from switching regulator to power supply would be that it limits the number of competitors could infringe the patent.? Only sellers of power supplies could infringe the patent.? Switching regulators might be employed in several applications other than just power supplies.? A claim directed to power supplies could not be used to sue others that make and sell those other types of products, just power supplies.? In Power Integration?s case, this may not have been significant because damages were calculated at $140 million for the overall accused product.

Fortunately, patent owners can have their cake and eat it too.? By filing a continuation patent application, the patent owner can seek a patent for a switching regulator for a power supply in a first patent application then a power supply with a switching regulator in a continuation patent application.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post When are damage calculations based on EMV rule? appeared first on Patent Attorney | Orange County | OC Patent Lawyer.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 
Why innovation matters to Orange County?

Innovation matters to the local economy where innovation occurs.? Innovation brings jobs and revenue to the local economy.? We can see that innovation has helped develop new products that otherwise would not have been created.? But for the incentive of a patent, many new drugs that have high research and development costs but are easy to copy once they are available to the public would not have been invented and brought to market.? The patent data for Orange County, California shows that the top 2 innovative companies are in the fields of medical devices and pharmaceutical.? Patent protection also offers inventors and businesses the opportunity to secure new funding for startups and small businesses.? New products and processes mean new businesses, more jobs, increased efficiencies and more opportunities.

The data below focuses on the 4 most innovative OC companies.? Why the top 4?? The reason is that the number of patents for each company below the top 4 dropped off significantly compared to the top 4.

Source: USPTO filing and patent grant data

The companies in the top 4 are based on the number of patents issued to the companies for the year of 2017, according to data at the United Stated Patent & Trademark Office.? The data below cover not only the number of patents issued, but also the top areas of innovation, the top innovators at those companies, and other statistics.? The data show the relationship between the important areas of innovation in each company, as well as the more-prolific inventors in the company.

How far above ?average? are OC?s top innovators?

The top 4 most-innovative companies in Orange County were granted 66 patents on average in 2017.? To put that into context, the average number of patents held by a company that received at least 1 patent in 2017 was 3.43 patents per company.? Compared in those terms, the top 4 most-innovative companies were granted about 19 times more patents than were granted ?average? company that is granted patents.

Most companies in Orange County, California were not awarded even a single patent in 2017, because relatively few companies apply for patents at all.? Based on 2016 Census data, there were 94,703 businesses in Orange County, California.[1]? Assuming that this statistic stayed roughly the same for 2017, only 471 companies were granted a patent in 2017.? This means that only 0.5% of all Orange County companies were granted a patent in 2017.

What industries are the top innovators in?

The data below shows that the top innovators in Orange County, California invent in the areas of pharmaceuticals, medical devices, software and electronics.

Which companies are the top innovators in Orange County?

The most innovative companies in Orange County, California are:

  1. Allergan, Inc.
  2. Broadcom Corp.
  3. Edwards Lifesciences Corp.
  4. Universal Electronics, Inc.
Allergan, Inc.

Allergan plc (NYSE:AGN) is a global pharmaceutical company.? On its website, Allergan boasts commercial operations, manufacturing and R&D in more than 100 countries.? Although Allergan is headquartered in Dublin, Ireland, the company assigns most of its patents to Allergan, Inc., based in Irvine, California.? A search of the USPTO database shows that the USPTO assigns a few patents to Allergan Industrie SAS in Pringy, France and Allergan Pharmaceuticals International Limited or Allergan Holdings Unlimited Company, which are located in Dublin, Ireland.

The United States Patent and Trademark Office categorizes all ideas into 8 different sections, known as the Cooperative Patent Classifications (CPC).? Each of these 8 different sections is further categorized into smaller subsections.? The CPC sections are:

A: HUMAN NECESSITIES

B: PERFORMING OPERATIONS; TRANSPORTING

C: CHEMISTRY; METALLURGY

D: TEXTILES; PAPER

E: FIXED CONSTRUCTIONS

F: MECHANICAL ENGINEERING; LIGHTING; HEATING; WEAPONS; BLASTING

G: PHYSICS

H: ELECTRICITY

You can find out more information about the CPC at the Patent Classification homepage.

Table 1 below shows the number of patents granted to Allergan in each of the subsections of the CPC and their respective % with respect to the total number of patents granted to Allergan.? This should give you a sense of their focus areas of innovation.

Top areas of innovation for Allergan

CPC Subsection Title

Number of patents categorized in CPC section % of total number of patents

A61: Medical or Veterinary Science; Hygiene

49

62%

C07: Organic Chemistry

23

29%

C08: Organic Macromolecular Compounds

3

4%

G01: Measuring and Testing

1 1%

B01: Physical or Chemical Processes or Apparatus in General (e.g., furnaces, kilns, ovens)

1

1%

A47:? Furniture 1

1%

Grand Total: 79

Table 1

A patent will list the inventors that contributed to the invention.? Collectively, they are known as the inventive entity.? At Allergan, an average of 2.3 inventors were listed on each patent granted.[2]? In a sense, this indicates the level of cooperation between departments and innovators within the company.? A higher number might indicate a more collaborative environment between people in the R&D department of the company.? A lower number might indicate that people in the R&D department work independently and in silos instead of collaboratively.

When the same inventor is listed on multiple documents, this may indicate that the individual is the main driver of innovation for the company, a group, or a particular technology within the company.

Table 2 lists the top 4 inventors based on the number of patents for which they were included as part of the inventive entity.

Inventor

Number of Patents

John E. Donello

12

Michael E. Garst

11

Richard L. Beard

9

Veena Viswanth

9

Table 2

As noted above, Allergan was granted the most number of patents in CPC subsection A61.? In particular, they were granted 49 patents in this subsection.? A61 relates to Medical or Veterinary Science and Hygiene.? To get a feel for the specific types of invention in this subsection, the list below is a sampling of the Allergan patents in this section.

9763958 Preservative free bimatoprost and timolol solutions
9763959 Compositions and methods for stimulating hair growth
9764009 Treatment of psychological trauma
9765065 Therapeutic substituted cyclopentanes
9775846 Hypotensive lipid-containing biodegradable intraocular implants and related implants
9775849 Implants and methods for treating inflammation-mediated conditions of the eye
9782492 Stabilization of therapeutic agents to facilitate administration
9782517 Crosslinked hyaluronic acid-collagen gels for improving tissue graft viability and soft tissue augmentation
9795615 Methods for fat reduction

Top Allergan inventors in CPC Subsection A61 are shown in Table 3.

Inventor

Number of Patents

Chetan P. Pujara

6

John E. Donello

5

Table 3

John E. Donello made both lists.? He was named on the most number of patents and listed on the most number of patents within the primary area of innovation for Allergan.? Moreover, although Chetan P. Pujara was not identified as a prolific inventor, Pujara is a prolific inventor within the primary area of innovation for Allergan.

Broadcom Corp.

In 2016, Broadcom Corp. (NASDAQ:AVGO) located in Irvine was merged with Avago Technologies located in San Jose, California.? As such, the current patent assignment data for Broadcom appears to be the remains of the merger between Broadcom and Avago, and may not accurately reflect the total number of patents granted to Broadcom.? Eventually, I suspect that Broadcom?s patent applications will eventually be assigned to Avago Technologies, not Broadcom.? Just as an FYI, in 2017, Avago was granted 874 patents.

Broadcom primarily innovates in electric communication techniques.? As shown in Table 4, They were awarded 53 patents in 2017 in this area of technology.? This represents 64% of the total number of patents granted to Broadcom.? This is aligned to their core business as a supplier of semiconductor technologies within four primary markets: wired infrastructure, wireless communications, enterprise storage and industrial and others.

CPC Subsection Title Number of patents categorized in CPC section % of total number of patents

H04: Electric Communication Technique

53

64%

H01: Basic Electric Elements

8

10%

H03:? Basic Electronic Circuity

6

7%

H02: Generation: Conversion or Distribution of Electric Power

4

5%

G01:? Measuring; Testing

4

5%

Y02

2

2%

G10:? Musical Instruments; Acoustics 1 1%
G11:? Information Storage 1 1%
G02: Optics 1 1%
G05: Controlling; Regulating 1 1%
B60:? Vehicles in General 1 1%
A63:? Sports; Games; Amusements 1 1%
Grand Total: 83

Table 4

On average, 2.3 inventors were listed on each patent.[3]? Broadcom and Allergan reflect the same level of teamwork to innovate between departments and innovators within the company.

Table 5 lists the top 3 inventors based on the number of patents for which they were included as part of the inventive entity.

Inventor Number of Patents
Xuemin Chen 10
Ahmadrez (Reza) Rofougaran 6
John Walley 5

Table 5

As noted above, Broadcom was granted the most number of patents in CPC subsection H04.? In particular, they were granted 53 patents in this subsection.? H04 relates to Electric Communication Technique.? To get a feel for the specific types of invention in this subsection, below is a sampling of the Broadcom patents in this section.

9537684 Adaptive transmit beamforming for frequency division duplexing systems
9538199 Data transmission across independent streams
9544074 Time-shifting distribution of high definition audio data
9544095 Channel estimation for phase-only feedback and methods for use therewith
9544117 Adaptive reference signal mapping in wireless multi-access communication networks
9544586 Reducing motion compensation memory bandwidth through memory utilization
9544638 Method for reconstructing system time clock (STC) without carrying PCR
9544665 Providing multiple ABR streams using a single transcoder

Top Broadcom inventors in CPC Subsection H04 are shown in Table 6.

Inventor Number of Patents
Xuemin Chen 9
Rajesh Shankarrao Mamidwar 4

Table 6

Edwards Lifesciences Corp.

Edwards Lifesciences Corp. (NYSE: EW) is a global leader in patient-focused medical innovations for structural heart disease, as well as critical care and surgical monitoring.

Edwards Lifesciences innovates in the same technology area as Allergan because its primary area of innovation is in CPC Subsection A61, as shown in Table 7.? However, it does not appear that the two companies are direct competitors.? Moreover, Edwards Lifesciences is highly focused in its pursuit for patent protection. As shown in the table below, Edwards Lifesciences received 90% of its patents in the CPC Subsection A61, whereas Allergan received 62% of its patents in this area.

CPC Subsection Title Number of patents categorized in CPC section % of total number of patents
A61: Medical or Veterinary Science; Hygiene 44 90%
Not categorized 4 8%
A01: Agriculture; Forestry; Animal Husbandry; Hunting, Trapping; Fishing 1 2%
Grand Total: 49

Table 7

On average, 2.5 inventors were listed on each patent.[4]? The data suggests that Edwards Lifesciences has the greatest level of cross pollination of ideas between departments and innovators within the company compared to Broadcom and Allergan.

Table 8 lists the top 5 inventors based on the number of patents for which they were included as part of the inventive entity.

Inventor Number of Patents
Manouchehr A. Miraki 5
Scott Heneveld, Sr. 4
Louis A. Campbell 4

Table 8

As noted above, Edwards Lifesciences was granted the most number of patents in CPC subsection A61.? In particular, they were granted 44 patents in this subsection.? A61 relates to Medical or Veterinary Science and Hygiene.? To get a feel for the specific types of invention in this subsection, below is a sampling of the Edwards Lifesciences patents in this section.

9675452 Artificial heart valve with scalloped frame design
9675453 Methods of identifying and replacing implanted heart valves
9675455 Method of positioning a minimally-invasive heart valve with cusp positioners
9693862 Holders for prosthetic heart valves
9707074 Method for treating an aortic valve
9707078 Expansion device and method for treating vascular passageways
9717591 Prosthetic valve for replacing mitral valve

Top Edwards Lifesciences inventors in CPC Subsection A61 are the same as the list above because Edwards focuses their patenting efforts to be narrowly tailored into their niche area of innovation.

Universal Electronics, Inc.

Universal Electronics Inc. (NASDAQ: UEIC). is a worldwide leader in universal control and sensing technologies for the smart home.? They have four main innovative areas of technology: connectivity, device discovery and control, voice control and advanced navigation and integrating smart devices into home entertainment, as shown in Table 9.? According to the USPTO database, their primary area of innovation is in CPC Subsection G06 which is related to Computing; Calculating; Counting.? 50% of their patents in 2017 where related to this field.

CPC Subsection Title Number of patents categorized in CPC section % of total number of patents
G06: Computing; Calculating; Counting 17 50%
????????????????? G08: Signalling 8 24%
G05: Controlling; Regulating 4 12%
None 4 12
G11: Information Storage 1 3
Grand Total: 49
Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 

Lost foreign profits are defined as profits that the patent owner could have made overseas or outside of the United States.? Normally, patent owners can only recover for lost profits that they incur based on a competitor?s activity within the United States.? To put it differently, patent owners generally cannot recover for lost foreign profits based on activity outside of the United States.? In WesternGeco LLC v. Ion Geophysical Corp (S. Ct. 2018), the Supreme Court held that recovery of lost foreign profits is permissible in some cases, as discussed below.

Lost foreign profits are permissible

To clarify the holding, the Supreme Court emphasized that this opinion only deals with the permissibility of awarding lost foreign profits.? Lost foreign profits are not mandatory.? For example, to limit exposure, competitors are free to argue that the infringing activities was not the proximate cause of the lost profits.? In support thereof, footnote 3 of the opinion stated that ?In reaching this holding, we do not address the extent to which other doctrines, such as proximate cause, could limit or preclude damages in particular cases.?? As such, this opinion is good news for patent owners but has its limits.

Fact pattern of WesternGeco LLC

The specific facts of this case are discussed below.? The patent owner (Westerngeco) owns patents related to a system for surveying the ocean floor.? The system uses lateral-steering technology to produce higher quality data than prior art survey systems.? In its business structure, the patent owner ?does not sell its technology or license it to competitors.? Instead, it uses the technology itself, performing survey for oil and gas companies.?

The infringer (ION Geophysical Corp.) ?began selling a competing system.? It manufactured the components for its competing system in the United States and then shipped them to companies abroad.? Those companies combined the components to create a surveying system indistinguishable from WesternGeco?s and used the system to compete with WesternGeco.?

The patent owner (WesternGeco) lost 10 contracts outside of the United States because of the infringer?s activity of selling a component part and exporting such components overseas for assembly into the infringing product.? The patent owner could have made a profit of $12.5 million on those contracts, and thus was awarded that amount in damages.

Activities that constitute patent infringement

A patent provides a patent owner a right to exclude others from making, using, offering to sell, or selling within the United States or importing any patented invention into the United States.? When patent attorneys explain the rights that a patent gives the patent owner, this is the bundle of rights that are listed and is based on 35 USC 271(a).? These rights are all based on activities based within the United States and any damage award is based on a competitor?s activity within the United States as well.? However, Section 271 has other sections that provide other patent rights which if violated constitutes patent infringement.

Under Section 271(b), inducing someone else to infringe a patent constitutes patent infringement.

Under Section 271(c), importing a unique component especially made for a patented machine constitutes patent infringement.

Under Section 271(f)(1), whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

Under Section 271(f)(2), ?whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

Under Section 271(g), importing a product made by a patented process into the United States constitutes patent infringement.

In the instant case, the infringer was found to infringe the patent based on Section 271(f)(2) listed above. They supplied a unique component of the patented invention from within the United States which was then assembled outside of the United States into a product that infringed the patent.

Analysis of whether lost foreign profits is permissible

Now, the issue before the court was whether the infringer is liable for the lost profits that the patent owner would have made on those 10 lost foreign contracts or for something less such as the lost profits for the unique component sold by the infringer to others.? Presumably, the profit on 10 components would be substantially less than the service contract using those components.

In general, courts presume that federal statutes like the patent statute apply only within the territorial jurisdiction of the United States.? However, this presumption can be overcome which in this case it was.? The basic reason was that the type of infringing activity that was being regulated was that of ?exporting? components from the United States.? The court also referenced Section 284 which sets an award of damages for patent infringement so that the damage aware completely compensates the patent owner due to the infringement.? To compensate the patent owner, this includes lost profits but also includes lost foreign profits.

This case dealt with the availability of lost foreign sales based on infringement under Section 271(f)(2) but the court expressly stated that this holding does not apply to infringement under Section 271(f)(1).? Section 271(f)(2) addresses the activity of supplying a unique component of a patented invention from the U.S. to outside the U.S., whereas Section 271(f)(1) addresses activities of supplying a generic component from the United States to a foreign country and inducing others to infringe use the component outside of the U.S. to infringe the patent.? Because of the differences in standards for what constitutes infringement under the two subsections, the court reserved the decision as to whether recovery of lost foreign sales for infringement under Section 271(f)(1) for a later date.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

The post Lost foreign profits recoverable by patent owners appeared first on Patent Attorney | Orange County | OC Patent Lawyer.

Read Full Article
  • Show original
  • .
  • Share
  • .
  • Favorite
  • .
  • Email
  • .
  • Add Tags 

Separate tags by commas
To access this feature, please upgrade your account.
Start your free month
Free Preview