Articles Posted in Patents


At the recent Apple iPhone unveiling event, we learned that you can Peek at it with a light press on your iPhone screen and Pop into it by pressing a little deeper. And just like that, Apple unleashed a new namespace of gestures distinguished by different amounts of force applied by the users. Developers will soon create 3D input gestures characterized both by where a user’s finger moves on screen and by how hard the user presses. For instance, you might scroll faster through your contact list based on how hard you press while drawing your finger across the screen, or control the speed of your virtual racecar based on the amount of force you apply. If history is any guide, expect savvy businesses to lay claim to the 3D gesture space with intellectual property.

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Prevent a Loss of Patent Rights when the U.S. Changes to a “First-Inventor-to-File” System on March 16, 2013

Act Now.jpgOne of the most significant changes of the 2011 Leahy-Smith America Invents Act (“AIA”) takes effect on March 16, 2013 when the U.S. transitions from a “First-to-Invent” patent system to a “First-Inventor-to-File” patent system.

Join Pillsbury for a Webinar as we take a closer look at the legal and business implications of the looming deadline. We will provide recommendations and guidance so that you can ensure your company will not be at a competitive disadvantage or, worse yet, potentially lose patent rights, when the U.S. transitions to a first-inventor-to-file system.

Bradford Blaise
Partner, Pillsbury
Patrick Doody
Partner, Pillsbury

Wednesday, January 30, 2013
Noon – 1:00 p.m. ET
9:00 a.m. – 10:00 a.m. PT

Our speakers will try to accommodate all questions on the webinar, or will follow-up individually.


The Director of the USPTO recently explained why patents are “innovation currency,” how they create jobs and how they add significantly to the economy. He also explained why this is driving the multi-billion dollar acquisitions of patents and high-profile patent wars in the mobile space. The Director also acknowledged that the patent system is not perfect, but highlighted the new patent laws that will help ensure the quality of software patents. In part, the Director said:

It is increasingly clear that intellectual property, or IP, is a key driver of economic growth, exports, and job creation. IP rights are the global currency for creating value for products and services, for all innovators, in all markets. And the protection provided by patents is critical to the innovation ecosystem. In fact, last spring, the U.S. Commerce Department released a report that found IP-intensive industries support at least 40 million jobs and contributes more than $5 trillion to our economy, accounting for 35 percent of America’s gross domestic product. So it is in this context that we are seeing multi-billion dollar acquisitions of patent portfolios and a number of high profile patent lawsuits, involving some of the most innovative companies on the planet, who are producing some of the most popular technologies ever created.

For a full copy of the speech, click here

Notwithstanding the clear value and importance of software patents, many companies still do not appreciate their value. Additionally, many people do not fully understand the types of software-based inventions that can be patented. Those that do not seek guidance from knowledgeable patent attorneys who specialize in software and internet patents fail to retain their rightful share of innovation currency.

Software and internet patents are crucial to many of today’s leading industries, including games, social media and mobile.

If you are interested in learning more about challenging software patents under the new laws, we have a team of people dedicated to these new procedures.




patent images.jpgYES! One of the often cited reasons for not pursuing patents
is that they take too long to obtain. In response to this concern, the
US Patent office has implemented a procedure that enables applicants to
make a request, when an application is field, to expedite examination of the application.

Based on recently published statistics, the vast majority of these
requests are being granted (if submitted properly) and cases are being
allowed within 11 months from filing (assuming they are patentable).

In fast moving spaces such as social games, mobile apps and social
media, this procedure can be very effective to rapidly obtain much
needed patents.


MC900250090.jpgA federal court recently found copyright infringement based on a developers copying of aspects of the popular Tetris game, even though the code itself was not copied. This ruling confirms that IP can be used to effectively prevent certain cloning practices that are prevalent with online games. While this case focused on copyright infringement, a passing note by the court highlights how patents can be instrumental to a comprehensive IP strategy as well.

In this case, Tetris sued Xio Interactive Inc. over its game Mino. Mino is a falling block game which incorporates game-play rules similar to Tetris, as well as utilizing a similar playing area and geometric block combinations. In its opinion, the court stated that game developers are free to use others’ ideas, but not the expression of those ideas. The court noted that the idea-expression dichotomy in the video game world is “simple to state- copyright will not protect an idea, only its expression – but difficult to apply, especially in the context of computer programs.”

The court summarized the law by stating generally that game mechanics and rules are not entitled to copyright protection, but courts have found expressive elements copyrightable, including game labels, design of game boards, playing cards and graphical works. Significantly however, the court noted that game mechanics and other functional game features can be patented.

The court determined that Xio did more than just incorporate Tetris‘ underlying rules in Mino. In looking at the similarity of the look and feel of the two games, the court stated that “[t]here is such similarity between the visual expression of Tetris and Mino that it is akin to literal copying” regardless of the fact that Xio did not actually copy the underlying Tetris code.

If you are a game developer and want to maximize your ability to shut down clones, it is critical to have a comprehensive IP strategy that incorporates both patents and copyrights. If you rely just on copyright, a more skillful game cloner can change the expressive elements enough to avoid copyright infringement. But if you patent core mechanics of your novel game, you can prevent others from copying that functionality regardless of how different they make the expressive elements.


One of the primary concerns that companies have regarding patent filings is the time it takes to get a patent. Recent changes to the patent laws have created a fast track option to “whisk” your patent through the process. To use this option you must file a petition and pay a fee.

According to the PTO:

Following passage of the Leahy-Smith America Invents Act in
September 2011, the United States Patent and Trademark Office (USPTO)
began accepting requests for prioritized examination of patent
applications through the Track I Prioritized Patent Examination Program.
Simply put, Track I allows inventors and businesses, for a fee, to have their patents processed to completion in 12 months.

According to a recent update from the PTO many applicants have used the fast track process and the results are summarized as follows:

  • 1,218 of the 1,231 requests for prioritized examination that have
    been decided were granted, which represents a 98.9% approval rate.
  • 648 have already received a first office action, and
    another 34 will be mailed within days.
  • On average, the PTO is getting a
    first action out in Track I cases just 30.7 days after approval of the
    petition – for a total elapsed period to first action of 66.4 days after filing of the request-petition, with the longest time to  first action being 70 days from grant of the
  •  23 allowances have already been mailed on Track I applications, the fastest of which was mailed just 37 days after the
    application was filed and 7 more allowances are currently in the pipeline.
  • Of the Track I cases
    allowed so far, the average time to allowance is 39.2 days from petition approval.
  • As for rejections, so far there have been three final
    rejections issued on Track I applications. The average time to final
    rejection has been 34.3 days, and the longest time to final was 50 days,
    both measured from approval of the Track I petition.
  • The first Track I application is due to issue on Jan. 10, 2012.
    This application was filed Sept. 30, 2011.

Given the fast paced developments in areas such as social games, augmented reality, mobile applications and other hot sectors, it may be worth considering use of this procedure to get your patents issued more quickly.


A weekly wrap up of interesting news about virtual worlds, virtual goods and other social media.

Virtual Justice

Rutgers University law professor Greg Lastowka looks at whether players can and should be granted legal ownership of virtual items, whether or not there’s any existing legal precedent and how the virtual item landscape may change in the near future.

Italian court: Online editors not responsible for reader comments

Online commentators Wednesday welcomed a ruling by Italy’s highest court that the editors of online publications cannot be held legally responsible for defamatory comments posted by their readers. In a ruling handed down at the end of October, the Court of Cassation acquitted a former online editor of L’Espresso news magazine of the crime of failing to prevent defamation committed by one of her readers.

OUII Seeks Clarity On ‘Process Of Establishment’ Claims

The U.S.
International Trade Commission

should review a recent finding in a video game patent infringement case and clarify how to determine if a domestic industry is in the process of being established in Section 337 cases, the ITC’s Office of Unfair Import Investigations said in a petition publicized Tuesday.

Germany’s Merck wants Facebook page back

Germany’s Merck KGaA has threatened legal action after it said it lost its Facebook page apparently to rival Merck & Co. in the U.S., though it has yet to identify defendants in the case.

Virtual World Startups Seek Refuge From Patent Attacks

The developers behind the next evolution of the Internet — linked,
immersive, 3D environments — are trying to think of ways to minimize the adverse impact of software patents on their industry.

Social media in for worse cyber attacks in 2012

Social media sites and cellphones will prove to be fertile grounds for cyber criminals to exploit globally important events in 2012 to steal personal information and data and make financial gains, cyber security firm Websense has said. The Websense document, ” 2012 Cyber Security Threats,” has said identity information posted by users of sites such as Facebook, Twitter or LinkedIn may prove more valuable to cybercriminals than even credit cards.


Facebook recently filed a Patent Application that Triggered a Congressional inquiry.  The patent application, which describes technology for tracking users on other websites,
resulted in a letter from Reps. Edward Markey, D- Mass., and Joe Barton,
R-Texas, seeking information on its current privacy practices and future intentions for tracking user activity and data. Markey and Barton co-chair the Congressional Bipartisan Privacy Caucus.

The application
was published on Sept. 22, 2011 and describes a method “for tracking information about the activities of users of a social networking system while on another domain.”

In the letter to facebook CEO Mark Zuckerberg, Markey and Barton sought clarification on the purpose of the patent and how Facebook intends to use it. They also inquired about how Facebook intends to integrate the location data of its users into its targeted advertising system, noting that Facebook has previously stated that it does not track people across the Internet.

It is important to note that just because Facebook has filed a patent does not necessarily mean that they have commercially implemented what the patent discloses. However,  this action is just one of the latest from Washington focusing on privacy. There seems to be a very focused effort by legislators and regulators to ensure that companies only collect user information needed for legitimate business purposes and that the information collected is not retained indefinitely. 

As with many other aspects of social media, the laws and regulatory climate are continuing to evolve.  If you have not recently reviewed your data collection, privacy practices and privacy policies, now is a good time to do so. 


Pepsi.jpegSocial media took a step into the real world with Pepsi’s announcement of a social vending machine. According to the press release, Pepsi will launch its Social Vending System, a state-of-the-art networked
unit that features full touch screen interactive vending technology, enabling
consumers to better connect with PepsiCo brands right at the point of purchase.
A prototype of the Social Vending System will debut at the National Automatic
Merchandising Association’s One Show in Chicago, April 27-29. According to the release:

Using digital technology, PepsiCo’s Social Vending System enables any user to
gift a friend by selecting a beverage and entering the recipient’s name, mobile
number and a personalized text message. There’s also the option to further
personalize the gift with a short video recorded right at the machine. The gift
is delivered with a system code and instructions to redeem it at any PepsiCo
Social Vending system. When the recipient redeems his or her gift, they’re given
the option of either thanking the original sender with a gift of their own or
paying it forward and gifting a beverage to someone else.

A promotional video is available.

This innovative approach to integrating social media into everyday activities and to devices and appliances is part of a growing trend that is resulting in social media going well beyond just Facebook and other internet sites.

Judging from the patent filings that we monitor in this area, there is much more to come!. Many companies are filing patents for innovative uses of social media integrated into everyday activities and to use of social media for innovative advertising and brand engagement concepts.




On March 15, hours after its asserted
patent was issued (U.S. Patent No. 7,908,342), Wireless Ink Corp. filed a
complaint for patent infringement against Facebook, Google, YouTube, and MySpace
in the U.S. District Court for the Southern District of New York, Case No.
1:11-cv-01751-PKC. Wireless Ink is a mobile content management and social
networking software company that operates

If this scenario sounds familiar, it’s
because Wireless Ink has a pending lawsuit against Facebook and Google in the
same court, before the same judge, and for
infringement of a related patent (U.S. Patent No. 7,599,983), Case No.
1:10-cv-01841-PKC (filed Mar. 9, 2010). 

In this newest action, Wireless Ink
alleges that each Defendant directly infringes several claims of its ‘342 patent
(titled Method, Apparatus and System for Management of Information Content
for Enhanced Accessibility over Wireless Communication Networks
) by, among
other things, (i) providing a user-accessible content management website, (ii)
generating a mobile website that is accessible independently of the content
management website via a mobile device, (iii) where the mobile website is
configured to receive data automatically from external data sources designated
by the user at the content management website, and (iv) where the content
management website permits the user to upload information items and enter
messages which are included in the mobile website.

Wireless Ink also alleges that
Defendants’ infringing activities are willful, and that Defendants have induced
infringement by actively encouraging their users to use their mobile websites,
even after having knowledge of Wireless Ink’s patent rights. As characterized in
the complaint, the Defendants’ alleged infringing activities “involve hundreds
of millions of users and potentially billions of acts of

Interestingly, in exhibits to its
complaint, Wireless Ink points out that all of the known relevant prior art to
the related ‘983 patent produced by
Facebook and Google in the 2010 litigation was disclosed by Wireless Ink to the
U.S. Patent & Trademark Office during prosecution of the application that
issued as the now-asserted ‘342 patent. The ‘342 patent’s application was a
continuation of the ‘983 patent’s application. Whether this has any impact on
the validity of the ‘342 patent remains to be seen. 

This action is currently scheduled to
have its initial pretrial conference on May 9, 2011.