The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)). In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus. The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change. READ MORE
George’s patent agent and engineering background gives him the perspective that few litigators possess. Having spent years on the prosecution / portfolio management side as well as the contentious side, George has developed a 360-degree view of IP matters, enabling him to craft more effective strategies. Additionally, George’s years practicing in New York, Atlanta, Silicon Valley and San Francisco have broadened his jurisdictional perspective.
He represents individuals and companies ranging from startups to Fortune 500 companies, and everything in between, on all aspects of IP law and disputes, with an emphasis on litigation, due diligence and licensing. As a registered practitioner before the U.S. Patent and Trademark Office, he also has significant experience drafting and prosecuting patent applications, as well as challenging issued patents via post-grant administrative proceedings.
George has represented clients in a variety of technological fields, including the electrical arts, software and cloud computing, telecommunications, mechanical and medical devices, and financial services.
The following is a sample of George’s current and past representations.
- Auburn University v. IBM (M.D. Al.). Represented Auburn in patent infringement suit relating to reliability selection of dies on semiconductor wafers.
- CardSoft v. First Data (E.D. Tex.). Represented First Data Corporation in two-patent case involving operating systems for credit and debit card reader PoS (Point of Sale) terminals.
- CardSoft v. VeriFone and Hypercom (E.D. Tex.). Represented VeriFone et al. in infringement cases involving patents directed to Virtual Machine functionality for credit card payment terminals.
- Document Generation Corporation v. McKesson (S.D. Ill. And E.D. Tex.). Represented McKesson Information Solutions, LLC in multi-defendant patent infringement claims involving medical personnel report and notes generating systems.
- DR Systems v. McKesson (S.D. Cal.). Represented McKesson Information Solutions, LLC in multi-defendant patent infringement claim involving Picture Archiving and Communication Systems (PACS).
- Enzo Medical Systems v. Siemens (D. Del.). Represented Siemens Healthcare Diagnostics, Inc. in patent case involving RNA diagnostics equipment.
- Extricom v. Meru Networks (D. Del.). Represented Extricom in dispute involving patent infringement claims relating to WLAN and WiFi technologies and advanced managerial functions.
- GeoTag v Walmart (E.D. Tex.). Represented Walmart in multi-defendant patent infringement suit relating to store locator mapping technology.
- Intellect Wireless v. HTC (N.D. Ill). Represented HTC at trial in a post-Therasense inequitable conduct trial resulting in a full defense judgment.
- LBS Innovations v Walmart (E.D. Tex.). Represented Walmart in multi-defendant patent infringement suit relating to wireless system for providing information about proximate destinations to mobile devices.
- Mohawk Brands v. Shaw Industries Group (N.D. Ga.). Represented Shaw in multi-patent infringement suit relating to carpet tiles.
- NICE Systems and STS Software v Witness Systems (N.D. Ga. and D. Del.). Represented Witness Systems, Inc., now part of Verint, in multiple (offensive and defensive) patent infringement suits involving more than a dozen patents in the fields of telecommunications, voice recording, agent monitoring, and VOIP conferencing and recording.
- Novitaz v. Shopkick (D. Conn. and N.D. Cal.E.D. Tex.). Represented Shopkick in multi-patent case involving retail and shopping applications and technologies.
- Openwave Systems v. 724 Solutions (N.D. Cal.). Represented 724 Solutions in dispute involving mobile device web interface and data rendering systems.
- Radiant Systems v. Ameranth (N.D. Ga.). Represented Radiant Systems, Inc., declaratory judgment plaintiff, in patent infringement claim involving point of sale computing systems.
- RBIDR v. Airbnb (D. Del.). Represented Airbnb in patent case involving methods for selling time-based inventory over a communications network.
- Siemens v. SIPCO (N.D. Ga.). Represented plaintiff Siemens Industry, Inc. in license and patent infringement dispute involving networking technologies.
- Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same (ITC Investigation No. 337-TA-855). Represented respondent Monster Cable Products, Inc. before the ITC in an investigation concerning technology for manufacturing magnets deployed in audio products.
- TQ Delta v. DIRECTV (D. Del.). Represented DIRECTV in eight patent case involving DSL-related patents as applied to the MoCA (Multimedia over Coax Alliance) standards and compliant products and services.
Posts by: George L. Kanabe
Trademark portfolio owners have long known the pitfalls in securing trade dress protection for a single color. The Trademark Trial and Appeal Board recently underscored those difficulties in affirming the Trademark Office’s refusal to register the color yellow as trade dress in connection with General Mills’ Cheerios cereal. READ MORE
We’re excited to announce the recent transition of Orrick’s former NorCal IP blog into its new iteration – IP Landscape (Today’s News, Tomorrow’s Strategy)! Our new blog is more comprehensive in scope and will focus on a variety of intellectual property issues and events, both national and international, that are likely to affect the bottom line for many technology-driven enterprises. Through our blog, you’ll find information and updates to help drive business strategies.
We hope this new blog will be an entertaining and useful resource for those interested in the latest case law, happenings and events that affect the entire landscape of intellectual property. We’ll be covering patent, trademark and copyright rulings in what might be described as the most “popular” venues, such as the Northern and Central Districts of California, the Eastern District of Texas, the District of Delaware, the International Trade Commission (ITC), and the Patent Trial and Appeal Board (PTAB). We will also be reporting on other IP-related and newsworthy events, such as significant developments in copyright, trademark, antitrust, entertainment and trade secret litigation, not to mention legislative changes, local networking events, IP licensing issues and other hot topics of interest. READ MORE
Since the Supreme Court’s decision in TC Heartland, many defendants in earlier-filed cases have tested whether they can raise an improper venue defense, or waived the issue by failing to raise it in their answers or through later litigation conduct. A majority of district courts to consider the issue have found that TC Heartland did not change the law so as to qualify as an exception to the waiver doctrine, but some jurisdictions have taken the opposite view. (A chart of exemplary cases is included below.) Judge Rayes’ recent decision in OptoLum v. Cree leads the District of Arizona into the minority group and suggests that the question will continue to be addressed district by district.
Defendant Cree was in a position that may sound familiar to many pre-TC Heartland defendants: At the start of the case, Cree had moved to dismiss under Rule 12(b)(6) and for transfer under 28 U.S.C. § 1404. After the court dismissed certain claims and denied transfer, Cree filed an answer admitting that venue is proper. In light of TC Heartland, however, Cree moved to amend its answer to deny proper venue and to dismiss on that basis. READ MORE
Orders Granting Certain Motions to Exclude Testimony, Greatbatch Ltd. v. AVX Corp. et al., D. Del. (July 20, 2017) (Judge Leonard P. Stark)
Judge Leonard Stark recently decided several pretrial motions in this medical device patent infringement suit leading up to next month’s jury trial. In the process, he reiterated certain standards for allowing witnesses to testify at trial that future parties should keep in mind.
In one Order, Judge Stark granted Plaintiff Greatbatch’s motion to preclude Defendant AVX from presenting at trial the testimony of a former employee through his deposition. That former employee—Dr. Panlener—had been an employee-turned-consultant of AVX and testified at length in deposition. However, AVX fired him after his depositions, and Dr. Panlener thus became unavailable to testify live at trial. Greatbatch moved to exclude his deposition testimony at trial. Judge Stark granted the motion, finding that it would be unfair to permit Dr. Panlener’s testimony to be used at trial since Greatbatch “has had no opportunity to question him regarding his termination” by AVX. Judge Stark did not ultimately conclude whether AVX “procured” Dr. Panlener’s absence by terminating the relationship, which, under the Federal Rules, would prevent usage of his testimony. But he disagreed with AVX’s contention that it is “entitled” under the Rules to present the deposition testimony and kept it out based on “the Court’s discretion to manage the trial in a manner that is fair to both sides and consistent with all other applicable rules.” READ MORE
Plaintiff Shipping & Transit, LLC (“S&T”) is a non-practicing entity that filed hundreds of patent lawsuits in 2016 alone, alleging infringement of three patents directed to monitoring and reporting the location of a vehicle. One of these patents was asserted in more than 400 cases, and the other two patents were asserted in more than 90 cases. However, S&T would routinely settle or dismiss a case with prejudice prior to a ruling on the merits where a defendant challenged the validity of the patents.
In this case, Defendant Hall Enterprises, Inc. asked S&T to voluntarily dismiss the case due to perceived patent validity issues. After S&T refused, Hall Enterprises moved for judgment on the pleadings arguing that all of the claims asserted against it were invalid under 35 U.S.C. § 101 due to ineligible subject matter. Only then did S&T move to dismiss its own claims with prejudice. READ MORE
Ever since the abolition of form complaints in patent cases (see our previous reporting here, here, and here), patent defendants have been incentivized to file motions to dismiss, and many have succeeded. But as Judge Gonzalez Rogers’ recent Order in this case reminds us, even after Twombly and Iqbal, Rule 12(b)(6) still offers a relatively lenient pleading standard and, in many cases, requires development of a factual record before dismissal can be considered. READ MORE
Copyright protection can be a critical part of a company’s IP strategy, especially when that company generates time-sensitive news stories and other writings. But, as this 11th Circuit decision demonstrates, it remains unclear whether a copyright lawsuit can be filed on a work the Copyright Office has not yet officially registered.
By statute, a party can’t file suit on a copyright until after “registration.” Although the copyright registration process is relatively straightforward, it does not happen instantly. In a situation where a content creator is rapidly producing new writings, it may wish to sue a copier prior to completion of registration by the Copyright Office. READ MORE
As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted. But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE
The “on-sale bar,” codified at 35 U.S.C. § 102, may invalidate a patent where the patentee sold “the invention” more than one year before filing an application to patent that invention. The on-sale bar applies where the invention is “ready for patenting,” a standard that had caused confusion in heavily regulated industries—such as the pharmaceutical industry—where government approval is needed to sell the invention to consumers. In its recent opinion in Helsinn Healthcare v. Teva Pharmaceuticals, the Federal Circuit analyzed the interplay between the on-sale bar and the FDA’s pharmaceutical evaluation and approval processes. The decision provides a cautionary tale for patentees in the pharmaceutical industry.
It was clear in Helsinn that there was a contract to sell the “invention” more than a year before the relevant patent application was filed. But the sales contract at issue was contingent upon the FDA’s approval of the drug to be sold. Helsinn argued that because regulatory approval was uncertain at the critical time period, the sales contract should not trigger the on-sale bar. The Federal Circuit disagreed, noting that under the Uniform Commercial Code, a “purported present sale of future goods . . . operates as a contract to sell.” Furthermore, “a contract for sale that includes a condition precedent is a valid and enforceable contract.” Thus, the regulatory approval condition precedent did not affect whether the “invention” was on sale. READ MORE