Tag Archives: patent trolls

Request for prior art to help defeat Uniloc Patent Claim

By Nancy Wolff Esq., PACA Counsel

flying-paper

On December 10, 2013, the patent troll Uniloc filed ten new patent infringement actions against image licensing companies based on United States patent 7, 099, 849 entitled INTEGRATED MEDIA MANAGEMENT AND RIGHTS DISTRIBUTION APPARATUS. The invention is described in a broad and ambiguous manner, which has enabled Uniloc to sue many companies that offer digital license in copyrighted content.  The patent summary describes the “invention”  as an integrated rights management and licensing system for storing, researching, buying, and selling intellectual property rights.” It was written with the film industry in mind, where one film will have multiple rights owners. As further described in the summary, the invention utilizes a rights owner application, a central repository, and a licensing application to integrate the management, researching and licensing of intellectual property. The patent contemplates that a request to license will be sent back to rights owner to determine if the rights can be granted and then negotiated.

PACA would like to assist in helping the companies that have been sued and their respective attorneys defeat this patent if possible.

One way to defeat a patent is to show that the process used by the image licensing industry is not infringing because it is not the same “invention” or process. While I am not a patent attorney, it appears from my read that the process of online licensing of images is not conducted in the same manner as outlined in the patent . But that is for a patent expert to review.

The other way to defeat a patent is to show that it is not novel an the process or invention is obvious because it only builds on what already was being done in the market. In patent speak this is called “prior art”.

This is where industry knowledge may be very effective. PACA would like to assist the industry in looking for companies that may have had databases where one could search for rights owner information and potentially license copyrighted work that existed prior to the filing of the invention and ideally one year before the invention was filed. The patent was granted in 2006 but the initial provisional patent was filed December 28, 2000. Ideally, if anyone has information about databases that search for rights owners for licensing purposes that existed prior to December 28, 1999 it would be very helpful in defeating this patent.

The more the industry can share information, the less expensive the patent will be to fight for all the individual parties. If anyone has any information or knows of databases that might be considered prior art for purposes of defeating a patent please contact Nancy Wolff nwolff@cdas.com as PACA Counsel.  We will make sure that his information is passed along to attorney’s representing the various parties.

Previously, the industry, thanks to Corbis and Getty Images cooperating in defending a patent claim, was able to defeat a similarly over broad patent, known as the Freeny patent.  Hopefully our cooperation will be a sign to patent trolls that the industry will fight them and may discourage others.

 

Uniloc and Patent Trolling

By Nancy Wolff, Esq., PACA Counsel

At the PACA 2013 Conference this October, we held a panel on patent trolls that are targeting this industry, and in particular, the Company Uniloc that alleges to have a patent on licensing images online and had targeted 4 companies in the micro stock space. Patent trolls are companies that purchase patents for the sole purpose of bringing claims against third parties. These cases are almost always brought in the Eastern District if Texas, which is a favorable jurisdiction for plaintiffs. Patent litigation is extremely expensive, and many companies will settle just to avoid costs. Many of these patent trolls acquire business method patents, which unlike inventions, merely describe a system for doing business and can be quite vague and overly broad. In the early days of the internet, many of these patents were issued as examiners did not have access to information regarding prior art in many industries.

On the  panel was Tamany Bentz, patent attorney from Venable, who represented Dreamstime, as well as Ellen Boughn,  who worked as an expert to provide information to the attorneys as to early online business practices in the industry. With  patent cases, you can attempt to invalidate a patent if you can establish prior art. Other defenses include showing how your process is different from the one described in the patent. (Dreamstime in fact settled with the plaintiff but Ellen’s report was apparently used by the other defendants. As noted below, those cases were dismissed with prejudice before any judicial ruling on the patent claim.)

The initial claims were brought against the following companies:

Former Defendants:
Dreamstime — settled
Inmagine — dismissed
RevoStock — dismissed
Depositphotos — dismissed

During the panel discussion,  it was recommended that PACA help be a source if business information, and that if other claims are brought by Uniloc or others, the industry collaborate together in order to defeat these claims. Since the meeting Uniloc has filed new patent claims in Texas against a numbers of other companies, listed below.

Getty, Corbis, iStockPhoto LP, Age Fotostock America Inc., SS SPV LLC, Envato PTY Ltd., Fotolia LLC., PhotoShelter, Inc., Photo Stock Plus, and VectorStock Media Limited

It may be helpful the join forces and share as much information as we are able to publicly, to discourage these claims.  PACA is willing to be the central point for collecting information.

Tamany has agreed to speak to any PACA member and can be reached below. We will continue to update members as we learn more about these filings.

Tamany Vinson Bentz, Esq.
Venable LLP
t 310.229.9905
f 310.229.9901
2049 Century Park East, Suite 2100
Los Angeles, CA 90067