Buffalo patent attorney James J. Ralabate

Respected and beloved longtime Buffalo patent attorney James J. Ralabate passed away last week at the age of 84. James was part of the "greatest generation." As a patent attorney he held many high patent attorney positions in the industry, most notably he was the director of patents for Xerox Corp.

Since 1982 Ralabate practiced in a private patent law practice in Williamsville near Buffalo, New York. He purchased a beautiful old building which was a historical landmark and turned it into a multi-office building.

According to patent agent Arthur S. Cookfair who worked with Ralabate for many years in Ralabates patent law office,  "during the refurbishing process, he worked with the local historical preservation authorities to maintain the historical integrity of the building."

Mr. Ralabate started writing patents in 1959 and to date had authored more than 1,000 U.S. patents.

In 1950 he graduated from Canisius College with a bachelor’s degree in chemistry, and was a chemical engineer in the chemical weapons division of the Army from 1952 to 1954.

From 1955 to 1958, while at law school at American University he was an examiner in the United States Patent and Trademark. In 1958 he became registered patent attorney and became a member of the New York Bar in 1959.

Between 1958 to 1962 Ralabate was employed as patent attorney for Hooker Chemical Corp.

Ralabate was the general patent counsel and director of patents at Xerox Corp. At the time, he was the youngest director of patents at any major corporation in the U.S.

During his 17 years at Xerox, he had technical expertise in all aspects of Xerox’s chemical and mechanical operations, and managed all domestic and foreign patents, as well as the company’s licensing and litigation activities. He supervised a staff of 84 patent attorneys.

In 1980, Mr. Ralabate was a candidate for a federal judgeship with the U.S. Court of Customs and Appeals and a candidate for commissioner of the U.S. Patent and Trademark Office. Until recently he was the director of Xybernaut Corp., a maker of wearable computers, which he advised on patent and trademark matters.

He was a past president and member of the board of governors of the Connecticut Patent Law Association, a founder and past president of the Connecticut Patent Counsels Association and a member of the American Bar Association, the American Intellectual Property Law Association and the Niagara Frontier Patent Law Association. 

Free Patent Tools

I just got another e-mail from my friends at MaxVal telling me about a new free patent tool that they came up with: the "Reference Annotator". Free is nice.

I believe that the MaxVal patent  tools I've used in the past have saved me time. I like the IDS Creator and the USPTO widget that lets you look up patent maxval patent toolsmaintenance fees with just typing in the patent registration number. Every time I use them they work magnificently.

I think the United States Patent and Trademark Office should incorporate some of these tools right into their webpage.

The new tool is the reference annotator. I think it's a great tool to review an entire patent document that uses the same element over and over.

Because you have to make sure that you consistently call each numbered element the same thing throughout the patent and sometimes when you're drafting a patent application the terms get a little mixed up. This tool helps you double check your work seamlessly.

MaxVal Free Patent Tools:

Reference Annotator

This reference tool allows you to search many different terms in the document and assign each term a color. Once a term is assigned a color the document can be easily reviewed at a glance without fear of missing any of the references. It truly is a very helpful tool for drafting a patent application.

IDS Generator

I've used this generator now for the last few patents that I filed. It really works seamlessly. All I have to do is fill in the patent numbers and it does the rest. I think the US PTO should use this form instead of the one that they have. It generates a USPTO-approved EFS-ready document with only inputting a minimal amount of information. Definitely a time saver!

Claim Set Comparison Tool

This tool compares two sets of claims and highlights the difference between them. The comparison chart can be displayed in a new browser window or downloaded as a Word or Excel file. I have not used this tool yet.

USPTO Widget

Without a question the USPTO should adopt this tool. I can't see how anybody would not want to use this one. I don't know how many times I've had to search around the patent webpage just to find out if there was an assignment. The patent office should have a place like this; where you only have to type in one number and get all the necessary information about that patent.

This widget gives you the following information with only having to type in one number:

Bibliographic Details

Publication - Full Text

Patent - Full Text

Assignment

Patent Maintenance Fees

PAIR

 

Someone should tell the United States Patent and Trademark Office about this widget!

Patent Term Estimator

The term of a patent is 20 years from the earliest claimed priority date (or longer of 17 years from the issue date or 20 years from the earliest claimed priority date if the patent application was filed on or before June 8, 1995). 35 USC § 154.

Claim Chart Generator

The claim chart generator tool creates a claim chart template for any United States patent. I used it the other day for an infringement analysis and it provided me with a Microsoft Word document (it also gave you the choice of an Excel or HTML format ) with a very nice neat claim chart. The chart came with some additional information such as the number of dependent and independent claims in the patent.

By simply checking a box I was able to tell it that I only wanted to include the independent claims. I copied and pasted it right into my analysis and it only took me a couple of minutes. If I was to create it from scratch it would've taken me much longer. And it was in a nice format that complemented the rest of the analysis. I give it a thumbs up!

Patent Family Tree

The Patent Family Tree tool (PFTT) generates a graphical tree representation of the patent family based on Genealogy and Timeline.

Reference Picker

This is a downloadable software tool that extracts the US references, foreign references and other references from any United States patent specification (.rtf, .doc). I have yet to use this tool.

IFW File Splitter

This is a downloadable software tool that extracts the bookmarks from the File History PDF file into individual PDF files. Bulk IFW File Splitter will split more than one File History PDF file. This tool merges many PDF files in a folder into a single file. I have yet to use this tool. If you tried it please share your comments below about how it performed.

Facebook files Counterclaims against Yahoo

The Facebook and Yahoo patent battle continues. Just last week Facebook answered the Yahoo complaint of patent infringement and issued the Facebook counterclaims.

Facebook claims that Yahoo is infringing on 10 patents that Facebook now owns.

Of course these counterclaims probably would never have been asserted had it not been for the fact that Yahoo sued Facebook. (Facebook Counterclaim filed PDF).

Facebook is about to go public and it logical to assume the Yahoo strategy of filing the law suit at this time would be to put pressure on Facebook to settle the Patent law suit quickly before the Facebook public offering.

But Facebook has not shown any inclination to settle and fired back with infringement claims of its own. These claims may be the leverage in settlement negotiation that will even the playing field. One doesn't get a great settlement if you fold your cards early in the game. 

Amy Miller from Law Technology News reported that Facebook general counsel Theodore Ullyot said in an emailed statement:

"From the outset, we said we would defend ourselves vigorously against Yahoo's lawsuit, and today we filed our answer as well as counter-claims against Yahoo for infringing ten of Facebook's patents. "While we are asserting patent claims of our own, we do so in response to Yahoo's short-sighted decision to attack one of its partners and prioritize litigation over innovation."

Ten Facebook patents cited in the counterclaim:

  1. 6216133 Method for enabling a user to fetch a specific information item
  2. 6236978 System for dynamic profiling of users in one-to-one applications
  3. 6288717 Headline posting algorithm
  4. 6411949 Customizing database information for presentation w/media selections
  5. 7603331 Method for dynamic profiling of users in one-to-one applications
  6. 7827208 Generating a feed of stories personalized for members of a social network
  7. 7945653 Tagging digital media
  8. 8005896 System for controlled distribution of user profiles over a network
  9. 8150913 System for controlled distribution of user profiles over a network
  10. 8103611 Architectures, systems, apparatus, methods, and computer-readable medium for providing recommendations to users and applications using multidimensional data

Three of the Facebook patents  were invented by Facebook engineers, and the patent  for Tagging digital media was co-invented by Mark Zuckerberg

The remaining patents were acquired from New York University, IPG Electronics, and Cheah IP LLC. The patent for "System for controlled distribution of user profiles over a network" is so new that it was only was assigned to Facebook in March and granted on April 3, 2012.

The counterclaims assert that specific pages on the Yahoo website infringe the above listed patents. Here are a few examples of uses of innovation by Yahoo that allegedly infringed patents now owned by Facebook:

  • Photostream,
  • Recent Activity and Groups Activity,
  • People in Photos feature on the Yahoo!
  • Flickr photo sharing service,
  • Yahoo! Home Page, and
  • ads displayed on My Yahoo!

Thanks to MaxVal for providing my daily litigation alert and the actual counterclaim filed by Facebook.

LXBN TV interview: Yahoo/Facebook patent case

I spoke with with Colin O'Keefe of LXBN TV  about the patent infringement suit Yahoo recently filed against Facebook. In the interview, we discuss:

  1. the numerous patents Facebook allegedly infringes upon,
  2. why Yahoo chose to file suit now and
  3. the current relationship between Yahoo and Facebook. 

Funny how people want to ask is "Yahoo a patent troll?" As it turns out Facebook just purchased 750 patents from IBM.Bloomberg reported that Facebook purchased IBM patents and "the deal involved 750 patents for software, networking and other technologies."

I wonder if we are going to see Facebook going after other social networking sites in an attempt to make money. Or is Facebook going to useuse their new patent portfolio as defensive patents. Remember patents don't give you a right to make or use the invention it only gives you a right to stop others from using it.

 

Yahoo patent case against Facebook

Yahoo filed an infringement lawsuit against Facebook based upon 1yahoo facebook law suit0 patents. Some of the patents have been around for a few years. What took them so long to make this claim?

Or is it just coincidence that Facebook is about to go public with huge IPO. Facebook filed for a $5 billion initial public offering which could be one of the largest technology IPOs ever.

Do you think Yahoo is thinking that a few shares of Facebook would be nice addition to their Stock portfolio?

The Yahoo complaint (PDF) lists 10 patents in which they argue Facebook has infringed. Barring a settlement it will be up to a jury to decide if the Yahoo claims are valid.

Yahoo released a statement that Yahoo has

“invested substantial resources in research and development through the years, which has resulted in numerous patented inventions of technology that other companies have licensed. These technologies are the foundation of our business that engages over 700 million monthly unique visitors and represent the spirit of innovation upon which Yahoo! is built. Unfortunately, the matter with Facebook remains unresolved, and we are compelled to seek redress in federal court. We are confident that we will prevail.”

Facebook and Yahoo have recently teamed to provide a SOCIAL BAR which allows Yahoo users to know what their Facebook friends are reading about on Yahoo.

Because of this new relationship Yahoo is benefited by the increasyahoo facebook teamed traffic to their website.

I remember when I was in law school and Prof. Fisher my Wills and Trust teacher said to us "money makes people funny".

The learned professor meant that just because a bequest is to a family member don't think that they're not going to fight over the assets when the estate is settled. 

Even though Yahoo and Facebook have recently been playing nice together, I guess Yahoo just wants a little bit more money. In response, Facebook has released a press release stating: 

“We’re disappointed that Yahoo, a longtime business partner of Facebook and a company that has substantially benefited from its association with Facebook, has decided to resort to litigation. Once again, we learned of Yahoo’s decision simultaneously with the media. We will defend ourselves vigorously against these puzzling actions.” 

I was asked my opinion recently by reporter Rachelle Dragani of the E-Commerce Times about the case and wondered out loud "Is Yahoo a patent troll?"

What makes someone a patent troll?

I think patent trolls are nonpracticing entities (NPE) that file patent dubious patent infringement lawsuits for the sole purpose of squeezing money out of profitable businesses when there's just a mere possibility that there's an infringement. This seems obvious when there is no active business selling that product that needs protection. I guess if the complaint is valid and there is actual infringement taking place then the accuser is not a patent troll.

Even when there is no valid infringement the lawsuit takes a life of his own. Usually in these huge cases settlement is inevitable.This is so because it will cost more to fight and win than to just settle now.

I wonder if it's a good idea to upset a giant like Facebook? Lawsuits like these often cost millions of dollars and if you're suing somebody that has billions of dollars a few million dollars in a lawsuit isn't such a big deal. Can the giant Facebook brush aside the smaller Yahoo?

Or will the fact that the IPO is pending and the risk factor that those billions of dollars can be lost to Yahoo become a big enough incentive for Facebook to settle? It will be interesting to see what happens. But I believe Yahoo is playing with fire.

Trademark applicants beware

Recently the United States Patent and Trademark Office (USPTO) issued a warning to all trademark applicants regarding “Non-USPTO Solicitations that Resemble Official USPTO Communications.”United States Patent and Trademark Office

The USPTO warned that companies not affiliated with the USPTO were using the USPTO database to find and locate new trademark applicants and are sending out letters that resemble an official notice.

When a few of my trademark applicant clients called me and asked me if they should pay a "bill"  they just received from the trademark office, I said "it was a scam solicitation" and my office provides any necessary services. I wonder how many people received a similar letter and paid it thinking they were paying an official bill.

I bet many big companies receive letters like this and it goes to their accounting department and gets paid. The companies sending out the scam letters must be making money off it otherwise they wouldn't continue to send these letters out.

Is what they are doing illegal? Probably not. Supposedly they are providing the services which they tout in the letter. Each one of those services are services that a trademark applicant could possibly use. However does every trademark applicant need those services?

The bottom line it's is a sleazy way to do business; sending out letters that confuse somebody to believe that it's an official government invoice.

Here's an example of letter that a trademark applicant received:United States Trademark Registration OfficeThe USPTO warning has examples of services which typical scam letters list, which so happen to coincide with the letter that I posted above:

  • for legal services;
  • for trademark monitoring services;
  • to record trademarks with U.S. Customs and Border Protection; and
  • to “register” trademarks in the company’s own private registry.


The USPTO indicates that the companies use names that resemble the USPTO name, including, for example, the terms "United States" or “U.S.”

The letter posted above clearly tries to confuse people by using the name "United States Trademark Registration Office."

The USPTO warning page further goes on to say:

Increasingly, some of the more unscrupulous companies attempt to make their solicitations mimic the look of official government documents rather than the look of a typical commercial or legal solicitation by emphasizing official government data like the USPTO application serial number, the registration number, the International Class(es), filing dates, and other information that is publicly available from USPTO records.

All official correspondence is from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.”

I tried a Google search using the words "United States Trademark Registration Office" and mostly legitimate sites, particularly the actual website for United States Patent and Trademark Office came up on the first page of the Google search.

Obviously the name is used to confuse the people who receive this letter; it actually confused a Google search. I did find one article recently published by David Lazarus in the Los Angeles Times where he reports about the USPTO notice and how these companies are "preying on the unwary with official looking letters."

I guess the bottom line is don't just pay official looking bills. Understand that once you file a trademark application and your application is posted on the USPTO website you'll be added to a mailing list and likely become a target of these solicitations. Before you pay anything to anyone: make sure you know what you are paying it for and who you are paying it to.

What entities sued for Patent Infringement in 2011?

Anoop Gopakumar and his group at MaxVal provide patent litigation alerts every day and today Anoop provided me with some interesting data on patent filings over the past year.

3963 patent litigation cases were filed 2011.

I've posted below a detailed chart analysis of who filed those patent lawsuits. The first chart below looks at the top-25 filers of patent infringement lawsuits during the past year. top 25 patent lawsuits

Patent Group LLC, a non-practicing entity (NPE) filed the most patent lawsuits in 2011. The PricewaterhouseCoopers (PwC) group defines NPE as

“an NPE is an entity that does not have the capabilities to design, manufacture, or distribute products that have features protected by the patent.”

The second table breaks down the number of lawsuits filed by month.

patent law suits by month 2011

If you want to get a free year of alerts you can follow this link and sign up and register for free alerts regarding patent litigation. It's free and you can also download the complaints that these companies filed to initiate the lawsuits and see the actual allegations of patent infringement and how the big-time law firms put together a complaint regarding patent infringement.

I just looked through some of the Maxval free patent tools that they provide. Clearly these free tools  can certainly help analyzing patents with regard to infringement and otherwise. I like the USPTO widget that they provide which instantly displays bibliographic details, publication full text of the document as well as assignment details and maintenance fees that are owed. It certainly worked very well the time that I tried it.

I'm going to take part in this litigation alert and make an analysis over the next couple months as to who and what types of companies are filing patent litigation complaints and perhaps even take a look at the complaints and how they are making these allegations. So keep an eye out for blog posts in the future that will analyze patent litigation based upon the alerts that I receive from MaxVal.

Getting a piece of the social media pie

The Buffalo Law Journal asked me to write a guest column in their recent edition which featured a Special Report on Legal Technology/Social Media.

Here is the article:

Getting a piece of the social media pie

Through social media, the Internet is once again profoundly changing the world in which we live and how we operate.

The social networking avenues of the Internet - such as writing a blog, connecting with other professionals on LinkedIn, Facebook, Google+ and Twitter - give virtual access to millions of potential clients to anyone who wants to take advantage of it. Lawyers are inherently conservative and loath to try anything new. But it's hard to ignore what everyone else is doing on the Internet and it's not surprising that law firms want a piece of the social media pie.

Just because the world has gone virtual, the reality that lawyers get clients by word-of-mouth hasn't changed. Word-of-mouth is still the most powerful referral mechanism and the basic tenet of networking. What's different in the age of social media is "how" an attorney's word-of-mouth reputation develops. Social networking, whether on the Internet or in person, is and always will be a matter of connecting and building relationships with thought leaders and potential clients.

Lawyers who were struggling to learn to use computers just a few years ago now realize that it's not uncommon for people who have been using social networking for a while to be "followed" in some fashion by a significant audience. What's even more obvious is that clients make the decision to hire an attorney in a particular area of law based upon social media.

Getting noticed on the Internet is similar to the old-fashioned way of getting noticed in the community for doing the right things. Lawyers publish blogs to enhance their reputation, demonstrate professional capacity and grow the firm's business and their own practices. Blogging allows potential clients to distinguish one firm from another. Clients - whether small businesses, corporate executives or in-house counsel - hire lawyers they recognize as trusted and knowledgeable authorities in their field.

By researching issues in the law and by sharing what is learned through blogging, attorneys can quickly establish a widespread reputation as an expert in that area. In a short time, a lawyer's blog can accumulate a body of easily accessed, relevant commentary to be read by potential clients and the people who influence clients, such as the media. My law blog at LoTempiolaw.com got noticed by the editors of this publication and that's how I got the opportunity to write this guest column.

Among online networking sites, LinkedIn has emerged as the online "water cooler" for professionals to gather around. LinkedIn is now publicly traded and has grown to more than 135 million members in 200 countries. LinkedIn encourages users to "Change the way you communicate. Change the way you do business."

The profile you create for LinkedIn allows you to present yourself and your law firm to millions of people. For example, my 612 connections on LinkedIn link me directly to 4,888,511 LinkedIn members.

You can log in to LinkedIn and read the most recent high-profile stories in your industry. You can join groups and discuss topics that are unique to what you do. You can follow like-minded attorneys who are discussing trends and important legal cases. You can join the conversation and build relationships for free.

Social media vehicles such as Twitter, LinkedIn, Youtube and Facebook are used by lawyers to promote their firms' Web page and articles from their blog on a personal level. Social networking sites such as these employ advanced search engines that, combined, receive billions of search queries each day from their hundreds of millions of users.

It should be noted that instead of using the traditional "Google search," more and more potential clients are using the social network search engines.

Based upon this trend alone, law firms need to ask themselves: "What are we doing to move on from a Google search world to the social media world?" People looking for a lawyer turn to people they trust. Today, relationships of trust for many people are established via social networks.

When considering taking the social media plunge, the biggest question from attorneys is: "Where do I find the time to social network? And is all the effort worth the results?" A member wrote on a LinkedIn discussion board last week that he was "looking for volunteers at his Law Firm to write on the firm's blog." Yes, blogging and social networking at the various popular social media sites take some time, effort and there is a learning curve, but it is part of requisite business development if you are interested in becoming a successful lawyer.

Successful lawyers traditionally spend time on a weekly basis on practice development. That's not time talking to existing clients - it's time spent finding ways to get in front of and to communicate with new people. Social networking online is an opportunity to extend the scope of practice development efforts to an unlimited audience. The point of any networking campaign is to be accessible and relevant, which necessarily requires some work. There is a direct correlation between the effort put into social networking and the results obtained.

Using many social networking avenues on the Internet is the first step in getting a "piece of the social media pie." I wonder if, as the social media party becomes more widespread and more and more people join in, will it be harder to get noticed? Everything in life is ever changing and there is a constant learning curve in anything we do, but I believe that no matter how many people join in, establishing relationships online is the backbone of any social media campaign in your legal community. And the reality is that the community is now virtually the whole world.

Inventions "get on the shelf" at Walmart

As a patent attorney in Erie County I often get asked, "how can I get my products on the shelf in Walmart?" Shelf space is like real estate and every inch inside the store has to be accounted for and the product on that shelf must earn a profit equivalent to the cost to keep that shelf space available in the store.

An independent inventor has to be able to sell his idea to Walmart such that Walmart will remove other things currently in the store to make room for that product. This is a very difficult thing to do for an independent inventor.

Well this might have changed because right now, on the Walmart webpage they have a contest to "get on the shelf".

Even if you don't win the contest you certainly can get some exposure on their webpage which is visited by thousands of people while the contest is going on.

You can go to the Walmart webpage and enter your invention up until February 22, 2012. If you win the contest you will get your product on the shelf at all the Walmarts throughout the country.

You can get your friends and family to vote for you and hopefully your great idea will get on the shelf at Walmart and you can be on your way to becoming a successful profitable entrepreneur with a new invention.

I think it's a great opportunity for inventors to get out there with their great ideas. Hopefully you're the next new inventor and your product is sold at all the Walmart stores. Good luck.

Top ten list of companies to get US patents in 2011

According to the United States Patent and Trademark Office “Performance and Accountability Report ibm patentsof Fiscal Year 2011” the USPTO granted an all-time high 244,430 United States utility patents in 2011.

Asian companies hold eight of the top 10 spots on the 2011 patent list and 25 or half of the top 50 U.S. patent-grant recipients with U.S. firms having17 spots. Asian countries represented in the top 50 include Japan, South Korea and Taiwan.

Most of the companies in the Top 50 were up from 2010, many shattering records and posting double-digit percentage gains.

IBM has held down the #1 patent rankings position for 19 consecutive years, with a record 6,180 patents in 2011, up from 5,896 in 2010. IBM was the first company to break 5,000-patent in a single year in 2010 and in 2011 the first to break the 6,000-patent mark in a single year.

IBM’s 2011 patent total was almost five times as many as Hewlett-Packard’s 1308 and exceeded the combined issuances of Microsoft, Hewlett-Packard, Oracle, EMC, Apple and Google.

More than 8,000 inventors residing in 46 different U.S. states and 36 countries generated the IBM's record-breaking 2011 patent tally. IBM inventors residing outside the United States were responsible for 26% of the company's 2011 patents.

Although in terms of patent grants, IBM has been No. 1 for the lat 19 years, Samsung's published applications eclipsed those of IBM in the last two years... so is the "writing on the wall" that the 19 year streak will end in the next couple years?

List of the top 10 company's to receive a US patent in 2011:

  1. International Business Machines (US) 6180
  2. Samsung (Korea) 4894
  3. Canon K K (Japan) 2821
  4. Panasonic Corp (Japan) 2559
  5. Toshiba (Japan) 2483
  6. Microsoft Corp Corporation (US) 2311
  7. Sony Corporation (Japan) 2286
  8. Seiko Epson Corp (Japan) 1533
  9. Hon Hai Precision Industry Co. Ltd (Taiwan) 1514
  10. Hitachi (Japan) 1465

Where are the most inventors with patents coming from in the U.S.? The inventors come from every state and all of the territories. In 2011, the top five states that led the list in numbers of patents were:

  1. California 30,397
  2. Texas 8,054
  3. New York 8,026
  4. Washington 5,227
  5. Massachusetts 5,003

According to the "Performance and Accountability Report of 2011" of the 244,430 patents that were issued a little bit less than half (120,178) were issued to United States citizens. The remaining 124,252 issued patents went to citizens of a foreign country.