Florida Intellectual Property Law Blog

       As a Florida Patent Attorney, I know where I'll be this Groundhog Day, and It won't be looking out for anyone's shadow. Inventors in the South Florida area are invited to showcase their inventions at the upcoming "Latest Inventions Under the Moon Expo" at the Broward County Library. And, I, for one, will be there. Participants are invited to share their patented and patent pending inventions, and I'm excited to see what new innovations Florida consumers and businesses can expect to see in the near future.

        The Inventors Society of South Florida is hosting the event, which will take place on February 2, 2008 from 10:00 to 2:00 on the sixth floor of the library. If you'd like to present your invention, reserve your display space by January 25, 2008 by downloading a registration form from the Inventor Society's website or requesting one from bmiller@browardlibrary.org.

       Registration forms should be returned to Eva Thomas, 1521 SW 13 Drive; Boca Raton, FL 33486 or via fax at 561-391-7805. I hope to see you there. For more information about the Inventors Society of South Florida, click here.

As a Florida Patent Attorney, I have a number of friends (and a sister) that went to the University of Central Florida and find patenting news relating to the school of special interest. 

As recently reported, the University of Central Florida patents specially designed zoom lenses for digital cameras that replicate the working of the human eye according to UCF News and Information. 

At least five Florida patents filed by Florida patent attorneys for the University, have been granted to the University and the technology is licensed to a manufacturing company, Holochip Corp., based in Alburquerque, New Mexico.

 The complete article is available here and reproduced below in the event that the link changes or is broken:

As a Florida patent attorney with an interest in medical and dental device patents, I try to keep an ear to the ground on new patenting and industry developments in Florida that are relevant to my practice of intellectual property law.  The potential increase in Florida's medical patent and dental patenting activity is one such development.
In a recent post in the BioHealth Investor, Florida is touted as one of the country’s next biotech hubs. According to the article, it all began when the Scripps Research Institute accepted a proposal for $500 million in financing to establish a biotech research hub in the state on the western fringes of Palm Beach County. 

Although Scripps has focused a lot of attention on Florida's life science industry, there is much to Florida's medical and dental manufacturing industry that is unrelated to Scripps.

As a Florida patent attorney with 3 kids dragging me to Orlando regularly to visit Mickey, I found this AP News Alert of special interest.  The Shijingshan Amusement Park in Beijing, China, is having to explain why their round-eared mouse dancing with kids is not a knock off of Disney's Mickey Mouse according to an AP News Alert issued Wednesday, May 9, 2007.  According to the article, they also happen to have a "raven-haired" woman with seven men in elf suits.

Many see the Beijing theme park as evidence of rampant Chinese copying of U.S. intellectual property.  According to the article, the industry group - International Intellectual Property Alliance - estimated losses to Chinese piracy of books, films, music and software last year at $2.2 billion.  Beijing has penalties for violators of patents, trademarks, copyrights, and other intellectual property but infringement is allegedly growiing faster than enforcement.

Florida patent holder and intellectual property company, Every Penny Counts, Inc., has sued Bank of America for patent infringement in the United States District Court for the Middle District of Florida.  As a Florida patent attorney, I find this case of particular interest. 

Every Penny Counts, Inc. is the owner of U.S. Patent No. 6,112,191 which describes a business method patent focusing on a savings/investing/donating program in its patent issued in August, 2000.

This case is just one more in a series of high profile patent infringement actions filed recently that illustrate the importance of securing patents for new business methods.  Patents are not just for "widgets" anymore.  According to a quote in Businessweek:

"In October, 2005, Bank of America brought out a radically different product that broke the paradigm. It's called 'Keep the Change.' The concept solves a critical banking problem -- how to get consumers to open new accounts. The product works like this: Every time you buy something with a BofA Visa debit card, the bank rounds up your purchase to the nearest dollar and transfers the difference from your checking into your savings account. It also matches 100% of transfers for the first three months, and 5% of the annual total, up to $250 a year. Since the launch, 2.5 million customers have signed up for 'Keep the Change.' Over 700,000 have opened new checking accounts and 1 million have signed on for new savings accounts."

In the Florida patent infringement lawsuit, the Cape Coral, Florida inventor, Bertram Burke, claims that he contacted Bank of America in December 2001 to gage the bank's interest in a licensing agreement that would allow the bank to use the system to generate new accounts.

The patent infringement complaint is available on Every Penny Counts, Inc.'s website.

Florida: Boca Raton Patent Holder Files Patent Infringement Lawsuit Against InfoUSA, Inc.

Boca Raton patent holder, Perfect Web Technologies, Inc. filed a patent infringement lawsuit against infoUSA, Inc. of Omaha , NE in the US District Court for the Southern District of Florida according to a press release I received today.  The infringement lawsuit seeks damages and an injunction against further infringement.

The patent asserted in the lawsuit is U.S. Patent No. 6,631,400 entitled "METHOD FOR MANAGING BULK E-MAIL DISTRIBUTION" and protects key elements of processes used in the e-mail marketing and management industry.

A copy of the patent infringement complaint is available online.

From the perspective of a Florida patent attorney, patent infringement litigation within Florida is always of special interest.  Recently, clearwater, Florida based biotech manufacturer, BioQuate, Inc., has been sued for patent infringement by Pall Corporation according to a press release on Pall Corporation's website this morning.

The suit alleges that BioQuate is manufacturing and selling disposable aseptic connector devices (see image to the left) that infringe on a patent on Pall's Kleenpak ( trademark ) aseptic connector and seeks damages and an injunction preventing BioQuate from selling the infringing product.

The patent infringement lawsuit against Clearwater, Florida based BioQuate, Inc. has been filed in the United States District Court for the Eastern District of Pennsylvania.

According to Pall Corporation's website, its business has been organized into segments: life sciences and industrial and they provide products relating to biotechnology, pharmaceutical, transfusion, medicine, energy, electronics, municipal, industrial water purification, aerospace, transportation, and broad industrial markets.  Revenues for 2006 were $2.0 billion and the company is headquartered in East Hills, New York.

Bioquate, Inc., on the other hand, is a Clearwater, Florida, based biotech manufacturer providing the biotech industry with a narrowly focused line of disposable devices products. 

View the complete press release by Pall Corporation here.

As a Florida patent attorney, I try to keep an ear to the ground on new developments in Florida that are relevant to my practice of intellectual property in the state.  The potential increase in Florida's biotech patenting activity is one such development.

In a recent post in the BioHealth Investor, Florida is touted as one of the country’s next biotech hubs. According to the article, it all began when the Scripps Research Institute accepted a proposal for $500 million in financing to establish a biotech research hub in the state on the western fringes of Palm Beach County.

After encountering some problems with environmental groups, Scripps made a decision to move their research center to Jupiter, Florida just north of West Palm Beach, Florida, one of Florida Atlantic University’s campuses. 

In an article reprinted in the Orlando Sentinel, Phil Milford of Bloomberg News reports a patent infringement suit has been filed against  Walt Disney, Universal Studios, Busch Gardens, and other theme-park operators for allegedly infringing patents on magnetic brakes used on roller coasters.  Florida patent attorneys should find the complete article of interest:

Disney, GE, others face patent suit

General Electric Co.'s NBC Universal Inc., Walt Disney Co. and three other U.S. theme-park operators were accused of infringing patents on magnetic brakes used on roller coasters.

Safety Braking Corp., based in Newport Beach, Calif., claims the companies infringed patents won in 1994 and 2003. The defendants also include Busch Entertainment Corp., Six Flags Inc. and Cedar Fair LP.

Safety Braking holds exclusive licenses to the patents, one from Magnetar Technologies Corp., based in Seal Beach, California, and the other from G&T Conveyor Co., based in Tavares.

As a Fort Lauderdale patent attorney, I closely follow patenting news relating to the medical device industry as we have several clients in this technology group.  Of particular interest is new patent infringment cases filed and their successful resolutions.  In this regard, I recently came across a press release by Ft. Lauderdale diabetes testing equipment and supply manufacturer, Home Diagnostics, Inc. regarding a summary judgment in their favor for non-infringement of patents held by Roche Diagnostics Corporation.

The case was filed in the United States District Court, Southern District of Indiana and a link to the full press release by the Ft. Lauderdale, Florida company's website can be accessed by clicking here.

Interesting read from BusinessWire for those active in Florida's home innovation industry.  The complete article follows below:

ARLINGTON, Va., BUSINESSWIRE -- More than 45 Florida-based technology companies will showcase their latest home technology products at the Electronic House Expo (EHX) Spring 2007. Sponsored by the Consumer Electronics Association's TechHome Division, the show runs March 8-10 at the Orange County Convention Center in Orlando, Florida.

 Named by Tradeshow Week magazine as one of the fastest growing tradeshows in America, EHX introduces the latest technologies, products and market trends in the custom electronics industry to a growing number of attendees each year. This March, EHX will draw more than 11,000 industry professionals from across the custom electronics world and showcase more than 325 exhibitors, conference sessions and full-day educational boot camps.

EHX Spring 2007 is gearing up to be the largest in show history and a must-see event for the custom electronics industry. In addition to cutting-edge technology and product debuts, EHX serves as a meeting ground for networking opportunities with peers and industry leaders.

    The dialogue this week among patent attorneys and others interested in patenting centers around a recent letter from the Department of Commerce in reference to the Patent Reform Act of 2007. This act effects patenting across the U.S. and here in Florida. Patent Attorneys and other innovators are relieved, in particular, at the rejection of section 4. For the entire congressional letter, click here.

    Section 4 of the Patent Reform Act contains language that would decrease the barriers to patent infringement. As a Florida Patent Attorney, I am in agreement with those who believe section 4 would not only reduce those barriers--it would likely encourage patent infringement.

    Continual innovation is something for which I am ardently supportive, and I have been concerned about the potential detriments of section 4 throughout the Patent Reform Act's passage. Amid the stir of response and commentary, I am delighted that others are as pleased with this outcome as I am.

    As of now, we can keep the innovations flowing from my home town of Ft. Lauderdale, Florida, and nationwide.  Florida Patent Attorneys, patent attorneys nationwide, and the clients we serve can all rest a little easier.

Secrecy News reports that a Florida company names Space Propulstion Systems, Inc. announced recently that it had peitioned the U.S. Government to lift a secrecy ban that has been imposed on two of its rocket propellant concepts.

The government may restrict the publication and dissemination of information regarding new inventions under the Invention Secrecy Act of 1951, if their disclosure could be "detrimental to the national security."

According to an article in The Journal News, Mark Eichenbaum had previously struggled to assist his grandmother haul groceries from the car to her apartment.  He then hit upon a good idea.

Last year, he set about turning his idea into a reality.  Presently, his invention is hitting the stores, and he is about to quit his job as a longtime car salesman.

Eichenbaum invented the Baggler - an ergonomic handle with hooks that makes carrying plastic bags a lot less cumbersome.  Daniel Becker, store owner and manager of the Jefferson Valley Pharmacy, said he almost sold out of the 24 packages he started with a few weeks ago.  They retail for $4.99. 

An excellent resource for Miami and Florida intellectual property issues is the Counterfeit Blog, concentrating on anti-counterfeiting law and policing.  The blog is published by Miami, Florida Attorney Leora Herrman, who has been fighting counterfeiters for more than a decade.

Ms. Herrmann's legal expertise includes anti-counterfeiting, copyrights, licensing of trademarks,  patents and celebrity rights of publicity, U.S. and international trademark protection, and copyright law.  For interesting, informative, and insightful articles, this is definitely a site to check out at www.counterfeitblog.com.

More Florida patent infringement lawsuit news today on PRNewswire.  Read the complete article about PetMed Express, Inc.'s alleged patent infringement lawsuit and settlement via license agreement on PRNewswire or below:

According to an article posted on Reed Electronics.com, Kent Rossman of Orlando, Florida, along with Zhong Qiang Hua of Saratoga, California, Zhengquan Tan of Cupertino, California, and Zhuang Li of San Jose, California, has developed a new multistep remote plasma clean process which was originally filed on May 21, 2002 and has now become a registered patent.

The invention relates to a "process for removing unwanted deposition build-up from one or more interior surfaces of a substrate processing chamber after depositing a layer of material over a substrate disposed in the chamber," according to the United States Patent & Trademark Office.

According to an article in the Miami Herald, Texas athletic shoe maker Heelys has targeted Miami-based Levy Marketing in a patent infringement lawsuit filed in federal court.  Similar suits by Heelys have been filed in Orlando, Los Angeles, and Sherman, Texas over the past month.

Heelys is attempting to try and stop what it calls "knockoff" versions of its product from unauthorized sales.  The lawsuit against Levy Marketing accuses the company of selling knockoffs of the Heelys to "kiosk retail outles in various malls" throughout the country.

According to an article in MITechNews.com, a website owned by the Michigan News Network, three hurricanes prompted CEO John Bonaccorso of 9thXchange to look for gentler climates within which to conduct business.  The Florida technology company moved from Melbourne, Florida, to Ann Arbor.

Many of the company's more than twenty five developers and system architects are leaving Florida to join the new headquarters in Ann Arbor.  Click here for the complete article.

News like this illustrates that we may never be able to measure the full impact that the past few stormy hurricane seasons have had on Florida's technology industry (and likewise Florida patent attorneys).

The Tampa Bay Business Journal reports the approval of the nation's first legal specialty in intellectual property law by the Florida Supreme Court.  This certification will be one of 22 certification areas available in the state.

Florida Bar president, Henry M. Coxe III, appointed a nine-member certification committee to review credentials of applicants, develop policy implementation standards approved by the Florida Supreme Court, and draft and administer the first examination to those lawyers whose practices primarily consist of patent application prosecution, patent infringement litigation, trademark law, and copyright law.

Appropriate certificates identifying lawyers as "Board Certified Intellectual Property Lawyers," will be issued to attorneys in good standing of The Florida Bar who meet the standards prescribed by the state's Supreme Court.

West Palm Beach, FL. - According to a Press Release posted on the United States Patent & Trademark Office website, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Jon Dudas today told members of the Business Development Board's Life Sciences Cluster Committee that protecting intellectual property against piracy and counterfeiting is a key part of economic growth, particularly in southeast Florida.

In his Intellectual Property Counsel Blog post entitled " A Litmus Test to Identify Exceptional Patent Attorneys ", in-house Florida intellectual property attorney Todd Mayover provides a good overview of things that distinguish a " good patent attorney "from an "exceptional patent attorney ". 

In particular, he writes:

Adding value to patents requires a complete understanding of an invention, knowledge of the current state of the field of art, the ability to identify how an invention fits in to the industry or market, and the ability to identify and distinguish the closest competitors.

I could not agree more with this statement but feel the need to question sometimes the way that in-house attorneys make their hiring decisions for patent prosecution work.  Many times, outside counsel are chosen on the basis of firm and name partner reputations without any inquiry at all on who will actually be doing the work. 

There is nothing wrong with this, of course, as long as the attorney and partners that were responsible for building a law firms reputation are the same ones that will work on your matter.  If they are not the ones actually doing the work on a company's application, however, in-house intellectual property lawyers should question why they are paying for a senior partner's billing rates when a "wet behind the ears" new associate is actually the one doing the "heavy lifting" on the patent application draft.

According to a press release on PJM News, M. Ship Co. has filed a patent infringement lawsuit against ICE Marine Ltd., a UK company. The suit was filed in the U.S. District Court for the Southern District of Florida. M Ship Co. is seeking to enforce its patent rights regarding its M-hull boat technology.

According to an article appearing in Genetic Engineering News, Neptune Industries, Inc. announced they have initiated a patent search in preparation for filing a patent application with the United States Patent & Trademark Office for a proprietary nutritional component and animal diet with significant applications.

The Sun-Herald reports that southwest Florida entrepeneurs are launching a hurricane self-help network, prompted by the last two hurricane seasons and the government's limited ability to provide relief.

The Los Angeles Bizjournal reported that Venali, Inc. has filed a suit agains J2 Global Communications, Inc. and Catch Curve, Inc. alleging violations of Federal Antitrust, trademark competitiveness, and patent laws.