A large patent-holding company called Unwired Planet reached a settlement with Apple at 1 a.m. on Monday, just hours before a jury trial was set to start in San Francisco, reports Ars Technica.

“Unwired Planet is the patent-holding remains of early mobile company Openwave, which acquired several hundred U.S. patents from Ericsson in early 2013, with Ericsson getting 20 percent of any patent settlements. Later that year, Unwired Planet sued Apple,” explains reporter Joe Mullin.

Law360, which first reported the settlement, said that Unwired Planet was seeking $33 million in royalties.

Read the Ars Technica article.

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Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Full Disclosure: Bridging the Information Gap Between Inventors and the Patent System,” featuring Fitch Even partner Michael J. Krautner.

The webinar will take place on Thursday, April 27, 2017, at 9:00 am PDT / 10:00 am MDT / 11:00 am CDT / 12:00 noon EDT.

In a release, the firm said patents can be extremely valuable business assets, but only as valuable as the information they convey. Before a patent can be monetized, it will be scrutinized by myriad individuals — inventors, attorneys, examiners, judges, juries, and business leaders — each of whom will interpret the patent in the light most favorable to their objective. As a patent filer, it’s vital to ensure inventors provide clear, detailed, and accurate descriptions of their inventions so they’ll withstand scrutiny and generate the optimal return on investment.

Inventors can provide abusiness with a true competitive advantage, but because of the technical and legal complexities involved, attempting to capitalize on their innovations can be both expensive and risky. By educating inventors to recognize patentable innovations, the expense can be reduced and the risk mitigated.

This webinar will provide tips and strategies on how to
• Educate inventors on how to identify viable inventions and distinguish them from unpatentable ideas and concepts
• Ask the right questions to get inventors to divulge the unique details of an invention
• Tell a story that clearly illustrates why a patent is warranted

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request. There is no fee to attend, but registration is required.

Following the live event, a recording of the webinar will be available to view for one year at www.fitcheven.com.

Register for the webinar.

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BlackBerry said Wednesday it has been awarded a preliminary $814.9 million in royalty overpayments made to Qualcomm, according to a CNBC report.

“BlackBerry argued that it was overpaying Qualcomm in royalty payments,” writes Todd Haselton. “Last April, BlackBerry and Qualcomm entered discussions to settle the dispute and analyze an existing ‘agreement to cap certain royalties applied to payments made by BlackBerry under a license agreement between the two parties.'”

Apple also has a suit pending against Qualcomm, claiming the company is “withholding nearly $1 billion in payments from Apple as retaliation for responding truthfully to law enforcement agencies investigating them.”

Read the CNBC article.

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An East Texas jury has awarded Whirlpool Corp. $7.6 million, finding that a California company willfully infringed the patent protecting Whirlpool’s replacement water filters for refrigerators.

The jury delivered the verdict against TST Water, LLC, on March 10 in the U.S. District Court for the Eastern District of Texas in Marshall. The finding that the patent infringement was “willful” means the award total could be tripled, a decision to be made by Judge Rodney Gilstrap, according to a release from the firm.

Longview, Texas-based Ward, Smith & Hill founder Johnny Ward represented Whirlpool as lead counsel alongside attorneys from the San Francisco office of Morrison & Foerster LLP.

“The evidence clearly showed that TST Water willfully infringed Whirlpool’s patent,” said Ward. “The jury rightfully discounted TST’s claims that the patent was invalid. The amount the jury awarded demonstrates that.”

The lawsuit involved Whirlpool “Filter 3” refrigerator filters, which carry  U.S. Patent No. 7,000,894. The company claimed TST Water intentionally copied the Filter 3 design in the development of its WSW-5 and HDX FMW-5 refrigerator filters, which were sold under the brand name WaterSentinel and the label “HDX.” TST Water promoted the installation and use of the filters as an alternative to the Filter 3 in Whirlpool refrigerators.

The case is Whirlpool Corporation v. TST Water, LLC, case 2:15-cv-01528-JRG in the U.S. District Court for the Eastern District of Texas.

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The U.S. Supreme Court heard arguments this week over whether to impose limits on the filings of patent lawsuits in a federal court in East Texas with a reputation for friendliness to plaintiffs, according to a New York Times article.

Reporter Adam Liptak writes that more than 40 percent of patent lawsuits are filed in the East Texas federal district.

“In recent years, a single judge based in Marshall, Tex., oversaw about a quarter of all patent cases nationwide, more than the number handled by all federal judges in California, Florida and New York combined,” Liptak writes.

Because the Texas court is a favorite venue of patent trolls, many tech companies filed supporting briefs in the case, TC Heartland v. Kraft Foods Group Brands, No. 16-341. Those companies urged the Supreme Court to limit the places where defendants in patent cases may be sued.

Read the NYT article.

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By Christopher Barnett
Scott & Scott LLP

Image by Peter Kaminski

Oracle maintains what I consider to be the most aggressive audit program of any major software publisher. Its licensing rules can be extremely difficult to understand, and they frequently are not clearly stated in the applicable license agreements. Moreover, Oracle’s License Management Services (LMS) team typically is unforgiving when it comes time to apply those rules, and it often uses Oracle’s ambiguous license terms and confusingly constructed contracts to prepare audit findings that can cause heart palpitations for business owners.

Companies that have been audited by Oracle can (and sometimes do) attest to its distinctiveness in this regard. Among other publishers, Microsoft is similarly inflexible in the application of its license rules, but those rules generally are more clearly stated and accessible for software asset management teams. Conversely, IBM’s licensing rules can be even more byzantine than Oracle’s, but my experience is that it often is more willing to work toward a fairer compromise when an audited company can point to mitigating factors that resulted in audit shortfalls. In contrast, Oracle really does seem to be unique in insisting on rigid and uncompromising application of unreasonably complex licensing rules and metrics.

Oracle’s audit practice also is noteworthy for the fact that it usually conducts all of its audit in-house, through LMS. By contrast, Microsoft, IBM and many other publishers often work with officially impartial, third-party accounting firms, such as Deloitte, KPMG, PwC and E&Y, to conduct their reviews. Participation of such external fact-finders typically affords a better opportunity to provide meaningful clarification and comment before the publishers receive the audit findings.

Given those facts, business and IT leaders of companies that have invested in any quantity of Oracle software products need to pay special attention to their usage of those products, and they also need to be mindful of what to expect when Oracle eventually pulls their number eventually for an audit by LMS. Here are some of the most important audit risks to keep in mind when using Oracle products:

Tread Carefully When Virtualizing – Oracle’s requirements when using its products in virtualized environments can be daunting, depending on the hardware where the Oracle solutions are to be deployed. Oracle allows its licensees to us “Hard Partitioning” to limit the number of software licenses required for a server or a cluster of servers. However, while Hard Partitioning may mean different things to different IT administrators, it means a set of specific requirements for Oracle, all of which must be carefully controlled in order to avoid unpleasant licensing surprises. In particular, Oracle does not recognize any VMware technology as a satisfactory “Hard Partitioning” technology, even though VMware is a recognized market leader for virtualization solutions.

Here are the requirements set forth in Oracle’s current Partitioning Policy:

1. You must use Oracle-approved technologies to hard-partition your servers. Those technologies currently include the following:
   • Physical Domains (also known as PDomains, Dynamic Domains, or Dynamic System Domains),
   • IBM’s LPAR (adds DLPAR with AIX 5.2),
   • IBM’s Micro-Partitions (capped partitions only),
   • vPar,
   • nPar,
   • Integrity Virtual Machine (capped partitions only),
   • Secure Resource Partitions (capped partitions only),
   • Fujitsu’s PPAR,
   • Solaris Zones (also known as Solaris Containers, capped Zones/Containers only) (provided additional requirements are satisfied), and
   • Oracle VM Server (provided additional requirements are satisfied)
2. If the software is to be deployed on certain Oracle Engineered Systems, then the licensee needs to use Oracle VM Server and Oracle Enterprise Manager (OEM) to set up and report on “Trusted Partitions” where the software will be running. OEM can be deployed in either “Connected” or “Disconnected” mode: in the former, OEM reports on software usage directly to My Oracle Support, while in the latter the licensee is required to generate quarterly usage reports and to retain those reports for at least two years.
3. In every case where an Oracle technology is to be used as a Hard Partitioning technology, it is necessary to follow Oracle’s technical instructions for the use of that technology:
   • Oracle Solaris Zones
   • Oracle VM Server for x86
   • Oracle VM Server for SPARC

Failure to adhere to Oracle’s requirements can result in the virtualized environment being licensed for installed Oracle products based on all physical cores used to support the infrastructure, even if there is only one VM running the product on a single host in a virtualization cluster. Never mind the fact that this effective prohibition on the use of VMware with Oracle products may not be mentioned anywhere in the applicable license agreements or in any document incorporated in those agreements. In effect, LMS merely applies the assumption that since VMware makes it so easy for VMs to migrate to other hosts, the processors on those hosts must be licensed for the Oracle software.

Know What is Installed and Running – Another favorite tactic is to surprise customers with licensing fees associated with product options that the company never actually used. Many Oracle products – such as its ubiquitous Database software – are deployed from installation files that include a catalog of added-cost options and packs. Those options sometimes inadvertently may be enabled during the installation process or at some point thereafter and then turned off without ever having been used. However, the software’s usage logs record the enabling of the options, and that log data often is among the information demanded by LMS during an audit. If LMS determines that the options were enabled at any time – even if only once, seven years or more before the audit data were collected – it is common for those options to be included among the audit findings.

Companies using Oracle Database products therefore are well-advised to work with knowledgeable consultants when setting up their systems, to ensure that only those product features licensed and intended to be used are enabled on the company’s computers. To the extent that Oracle products have been running in the environment for some time, it may be worthwhile to undertake an initiative to confirm what is currently enabled and what the logging date say about the options that may have been enabled in the past.

Know How to Scan – Finally, Oracle audits also are noteworthy for the limited set of tools that LMS will accept as sources of audit data. The auditors’ first choice is always a set of proprietary LMS scripts and other tools that it will make available to the company at the outset of the review. However, those tools do not generate outputs in a format that is easy for anyone other than Oracle to review, so companies that use them may not know what they are telling LMS about the environment. We typically do not recommend that our clients share any deployment information with any auditor without first reviewing that information internally for accuracy and completeness.

Fortunately, LMS also accepts outputs from a limited number of third-party tool providers, as follows:

• Easytrust
• Flexera Software
• Hewlett Packard Enterprise
• iQuate
• Lime Software
• Nova Ratio

However, the tools published by those vendors typically are not free for larger organizations to use. Furthermore, even though they may gather information that LMS is willing to accept, they may not gather all of the information that LMS says it requires to complete an audit.

Therefore, it is a wise practice for companies using Oracle products to consider engaging and periodically working with a knowledgeable, third-party Oracle licensing consultant as a necessary cost of business for using Oracle’s products. Many consultants have experience working within LMS, and they typically can provide insights regarding the best tools and methodologies for staying on top of how many Oracle products require licensing within an environment.

In a recent client alert, Reed Smith offers tips for dealing with audit provisions involving payment of a license fee or royalty.

Audit provisions are commonly found in commercial contracts, write Carolyn E. Pepper and Matthew Y. Kane.

“They are often not the clauses which attract the most attention during contract negotiations. However, they are important clauses which warrant careful consideration,” according to the authors.

They then list 10 points that need to be considered when dealing with such clauses.

Read the article.

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Eolas Technologies, which has been called a “patent troll,” has continued to file against big companies, even after losing a landmark 2012 trial. But following an appeals court order, Eolas will have to pursue its lawsuits in California — not its preferred patent hotspot of East Texas, reports Ars Technica.

Joe Mullin writes that the move could reduce Eolas’ chances of winning a settlement or verdict when the case is heard in a court outside the plaintiff-friendly East Texas system.

Eolas claims rights to a patent on features related to the interactive Web, including online video, user-manipulated images on shopping websites, and suggestions that pop up in search bars. Google defeated the claim in trial. Yet, Eolas lawyers were able to continue to get more patents granted as “continuations” of that original patent, even after a jury invalidated it.

Read the Ars Technica article.

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Fitch, Even, Tabin & Flannery LLP will present a free one-hour webinar, “Fueling Your Business Strategy with Patents,” featuring Fitch Even attorneys Allen E. Hoover and George N. Dandalides.

The webinar will take place on Wednesday, March 15, 2017, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

In its invitation, Fitch Even asks: Do you know why your competitors are obtaining all those patents? What value does a patent bring, and how do you leverage it? Patents can provide a wide range of potential benefits, from market protection to licensing to defensive value—as well as other key benefits you may not be aware of. Geared toward IP practitioners as well as business owners, our webinar will cover the following topics and more:

• What a patent is, and why, when, and how to get one
• The many potential benefits of patent protection
• Why and how to enforce a patent, and what to expect
• Timetable and costs

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request.

Following the live event, a recording of the webinar will be available to view for one year at www.fitcheven.com.

Register for the webinar.

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My Other Bag sells inexpensive canvas tote bags that are obvious parodies of pricey designer bags. Luxury handbag maker Louis Vuitton doesn’t get the joke. In a post on its website, Androvett Legal Media & Marketing explains the company filed a trademark infringement suit in New York that was tossed out because the judge said it was clear the canvas bag wasn’t a typical knockoff copy. Earlier this week, an appeals court judge said he wouldn’t reconsider that decision.

Chris Schwegmann, an intellectual property partner at Dallas-based Lynn Pinker Cox Hurst, agrees Louis Vuitton missed the joke:

“This case is very different from most counterfeit litigation. Just by looking at them, the products sold by My Other Bag are clearly not Louis Vuitton bags. That is part of the joke.

“This lawsuit is a cautionary tale that trademark holders need to pick and choose their targets carefully. Sometimes by suing, you bring more attention to the alleged infringer, and in this case, it seems that Louis Vuitton is the butt of the joke. There are several examples of trademark holders sending silly cease and desist letters, only to have the action backfire on them in a very public way.”

Yerra Solutions has selected Béatrix de Russé for the IP Hall of Fame.

A paper in Yerra’s People in IP series details how de Russé was able to transform a struggling IP department into a key driver of revenue for her company, elevating her to the executive committee of the major international corporation and qualifying her for the IP Hall of Fame.

The paper begins with de Russé writing:

Most IP people that I know just seem to fall into IP along the way. Well, I am no exception. Having graduated with Masters in English and Law, I accepted my first position as an attorney with Thomson CSF where I was in charge of drafting standard contracts for training foreign students to become qualified professionals in their countries’ factories.

Read the article.

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Hugh Marbury, a partner in DLA Piper’s Baltimore Litigation practice, has joined the Members Consultative Group for the American Law Institute’s Restatement of Copyright law project. The Restatement strives for clear formulations of common law and its statutory elements and reflects the law as it presently stands or might appropriately be stated by a court. Marbury joins approximately 60 top intellectual property practitioners, professors and judges from around the country to contribute to this important scholarly work.

Founded in 1923, ALI is the nation’s leading independent organization that produces citable clarification and modernization of the law. The Copyright project is expected to include 11 chapters, including: General Principles; Subject Matter and Standards; Scope of Protection; Ownership; Duration; Formalities; Rights and Limitations; Infringement; Secondary Liability; Remedies; and Copyright Protection and Management Systems.

Marbury’s business litigation practice focuses on complex financial transactions and commercial disputes. His intellectual property litigation practice includes patent, trademark, copyright and trade secret litigation. He was first elected to be a member of ALI in 2009.

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A client alert from Cowan Liebowitz & Latman discusses two recent developments conveying similar messages regarding the need to maintain supporting evidence at both the trademark application and registration stages.

According to the report by William M. Borchard and Vanessa P. Costantini, “if you file an application alleging an intention to use the mark in commerce, you may be required to support that allegation if it is challenged in an opposition, cancellation or infringement proceeding.”

They added that the United States Patent and Trademark Office may now require proof of the actual use of the mark in connection with all of the goods and services listed in the trademark application or registration.

Read the article.

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Dylan O. Adams, a senior patent attorney and author of “Patents Demystified: An Insider’s Guide to Protecting Ideas and Inventions,” presents an on-demand webinar on patent protection.

The complimentary 53-minute video is available at BrightTalk.com.

Adams has experience with U.S. and foreign patents in a wide variety of technology fields, including software, computer hardware and biotechnology.

This webinar explores which patent protection strategy best fits a company’s business goals, both short and long-term. It also covers best practices on how to work with patent attorneys to craft the strategy that fits current and future budget constraints, and how to leverage patent assets and derive the most value from them.

Watch the on-demand video.

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Beatle Paul McCartney has sued Sony/ATV in federal court in New York to get his songs back to where they once belonged, according to a post on the website of Androvett Legal Media & Marketing.

The Beatles songs were sold to Michael Jackson in 1985 and then to Sony, but U.S. laws have changed since that happened. That could mean “Ticket to Ride” and “Hey Jude” revert to Sir Paul in 2018. But the band Duran Duran is having some trouble in the U.K. invoking the same rule, so Mr. McCartney filed a lawsuit hoping to make it clear he gets the tunes back.

“When Lennon and McCartney sold their copyrights, some might not have imagined that Beatles music would still be popular – much less still under copyright – by the second decade of the next millennium,” said lawyer Steve Mitby, a partner in the Houston law firm Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C., or AZA.

“In the 1998 copyright extension, Congress tried to give the original artists and authors the benefit of the longer 95-year term. But it is far from clear that Congress can modify private contracts – like those between the Beatles and Sony – through that retroactive legislation,” Mitby said.

McCartney followed the congressional rules to reclaim his music and served advance notice to the U.S. Copyright Office starting back in 2008 that he was coming for “She Loves You” and more.

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Apple sued Qualcomm, its longtime partner,  over what it said was $1 billion in withheld rebates on Qualcomm’s smartphone technology, according to The New York Times.

Apple said the money had been promised in conjunction with an agreement not to buy chips from other suppliers or to divulge ualcomm’s intellectual property licensing practices, writes reporter Quentin Hardy.

The suit follows the Federal Trade Commission’s accusation that Qualcomm used anticompetitive practices to guarantee its high royalty payments for advanced wireless technology.

“The commission cited Qualcomm’s deals with Taiwanese companies that manufacture Apple iPhones over semiconductors it sells for the iPhone,” writes Hardy.

Read the NYT article.

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Fitch, Even, Tabin & Flannery LLP will present a free webinar, “Alice in Chains? Lessons Learned from Recent Federal Circuit Opinions on Patentable Subject Matter,” presented by Eric L. Broxterman and David A. Gosse.

The webinar will take place on Wednesday, Jan. 25, 2017, at 9:00 am PST / 10:00 am MST / 11:00 am CST / 12:00 noon EST.

The Federal Circuit has overruled several district court opinions finding patents invalid for lack of patentable subject matter, most recently in Enfish v. Microsoft, BASCOM v. AT&T Mobility, and McRO v. Bandai Namco Games America. This webinar will review these and other Federal Circuit opinions that have begun to define the boundaries of “abstract ideas” under the Supreme Court’s Alice test.

The event will cover the following topics and more:
• The test for patentable subject matter under Alice v. CLS Bank
• A survey of recent Federal Circuit cases
• Considerations when responding to a motion for dismissal based on Alice
• How claim construction can alter the analysis of patentable subject matter

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request.

Following the live event, a recording of the webinar will be available to view for one year at fitcheven.com.

Register for the webinar.

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South Korea’s antitrust regulator fined Qualcomm Inc $854 million for what it called unfair business practices in patent licensing and modem chip sales, a decision the U.S. chipmaker said it will challenge in court, reports Reuters.

The Korea Fair Trade Commission ruled that Qualcomm abused its dominant market position and forced handset makers to pay royalties for an unnecessarily broad set of patents as part of sales of its modem chips, according to the report by Se Young Lee and Stephen Nellis.

The commission also claimed Qualcomm restricted competition by refusing or limiting licensing of its standard essential patents related to modem chips to rival chipmakers. Those action negatively affected the rivals’ sales and left their products vulnerable to lawsuits, according to the complaint.

Read the Reuters article.

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In a dispute that touches on the intersection of copyright, contract law and cloud technology, the Second Circuit affirmed the dismissal of copyright claims against Barnes & Noble related to ebook samples stored on a user’s B&N-provided cloud-based locker, writes Jeffrey Neuburger in Proskauer Rose LLP’s New Media and Technology Law Blog.

“Notably, the Second Circuit dismissed the case on contractual grounds, declining the opportunity to opine on two important modern copyright doctrines that are often implicated when users store copyrighted content on the cloud,” he explains.

Neuburger discusses the case, concluding with, “[T]he dispute underscores the importance for copyright holders to understand the scope of any content distribution license involving cloud storage by users, particularly when broad language is used with respect to the rights of the licensee.”

Read the Proskauer article.

Fitch, Even, Tabin & Flannery LLP will present a complimentary webinar, “Determining the Value of One Patented Feature: A Behavioral Alternative to a Consumer Survey,” featuring Jacob Jacoby, Ph.D., and Alison Aubry Richards and moderated by Edward W. Gray Jr. The webinar will take place on Thursday, Nov. 17, 2016, at 9 a.m. PST / 10 a.m. MST / 11 a.m. CST / 12:00 noon EST.

In a release, the firm said recent Federal Circuit decisions have made it more difficult to prove damages in litigation. This is especially true when the infringed patent relates to just one feature in a product with multiple features. Before a patent owner can obtain damages based on the entire market value of a product (patented and unpatented components sold together), the patent owner may be required to prove that the patented feature is the basis for consumer demand for the entire product. Other decisions require the patent holder to apportion the value of the whole product down to the patented feature.

Whether a damages expert’s opinion can meet these requirements is a critical question for all patent litigants. Ultimately, the persuasiveness and reliability of the factual data on consumer demand for a patented feature underlying the damages case can determine the financial outcome of the case.

This webinar will cover these topics and more:

• Relevant case law
• Why proving consumer demand is key to receiving monetary damages
• The shortcomings of typical survey approaches to measuring consumer demand
• An alternative behavioral methodology for reliably measuring consumer demand

CLE credit has been approved for California, Illinois, and Nebraska. Other states may also award CLE credit upon attendee request.

Following the live event, a recording of the webinar will be available to view for one year at fitcheven.com.

Register for the webinar.