PATENT LITIGATION SUPPORT CASE STUDIES

Location. Location. Location.

Our mission was to locate the owner of a 25 year old patent to determine the current status of the invention. We were given the last known address of the owner, which yielded that the address had new residents with no forwarding information, that the telephone number had been reassigned, and that the neighbors had no idea of whom were we talking about. The patent holder's name was unusual enough that we checked on-line genealogy sites and found a man with the same name living in the same general region of the country as the outdated address for our guy. There was also a listing of this man's family members. Since there were no clues on the genealogy site regarding this man's location or background (other than he enjoyed snow skiing), our investigative staff tracked down one of the listed family members who turned out to be the patent owner's son. We persuaded the son (an adult) to give us his dad's phone number (non-published and in another state), called the patent owner and learned that he had never sold his invention, never developed it, and we relayed his blessings to whomever wanted to now "make a go at it".

Hunting Software Actually

We were asked to track down the owner of a limited liability company that offered computer software used by risk managers, financial analysts and actuaries for insurance data processing and analysis. We were then suppose to find out what we could about the software and order a product anonymously for our client to analyze it. Starting with only a company name and address, we checked cross-referenced directories, and learned that the address corresponded to the residence of a man we learned (through Internet research) was a Russian Ph.D. Further research let us know that the Russian doctor was experienced in both financial and actuarial software design as well as 3-D computer animation applications. He also dabbled in computer operations, actuarial coding and mathematical physics. We cooked up a plausible story and called the doctor, who informed us that he sells the product internationally, and that it is used by actuaries in insurance or reinsurance and anyone who needs to generate "modeling through data processing". He mentioned he sold his product primarily through insurance industry contacts, conventions and seminars and provided us with a purchase price. He sent us a demonstration disk for our review and we later successfully purchased the software in question without arousing suspicion. Case closed.

Patent Marking

We were instructed to determine if either or both of two target companies (which seemed to be related but were no longer in existence) had ever manufactured or sold any products utilizing a particular patent. If products were located, we were asked to get evidence of patent marking on the products. The client supplied us with the registered number in question. We reviewed the patent abstract and browsed over 200 archived online news articles (some dating back 15 years or better) to learn more about the technology and to develop leads. We found no mention of the target companies as they related specifically to the technology we were pursing, but did note the company products in the articles and identified key players in the industry as well as possible employees/ex-employees of the target companies. Many of the leads proved fruitless as company numbers had been disconnected or reassigned to unrelated businesses.

We searched the USPTO trademark database by owner name, which revealed several trademarks for the target companies. More Internet searching revealed additional information on the inventors of the target patent, a white paper on standards by one of the inventors and an old press release which announced an agreement to sell the assets of the product line (which described the functionality of the patent we were pursing) to another company. We soon learned that some of the products identified in our research were being sold on a web auction site. We emailed the sellers directly and convinced them to describe the products, provide us with their working knowledge of the products functionality (as it related to the target patent) and once we learned that the patent numbers in question were marked on the product, arranged for the sellers to send us digital photographs. Mission accomplished.

Tight Jeans And Blonde Hair

We were instructed to attend the World Championship Quarter Horse Show and investigate a company that was potentially selling a horse trailer with a latch that infringed our client's patent. The offending trailer latch was advertised as appealing to women with long fingernails. We sent our resident "dumb blonde" in a pair of tight jeans, cowboy boots to Oklahoma and had her visit the horse trailer displays with her hands glittering with fake fingernails. She determined that the company in question was not "able to get into the horse show" but had a sales office with horse trailers on display less than one mile from the championships. Our investigator visited the target company and was given a demonstration of the trailer latch's functionality which included a black plastic rectangle in the wall of the trailer, into which one can reach on the right, pull it out, and the left side dips into the trailer wall and releases the divider from a groove in the trailer wall. We asked other specific questions requested by our client regarding the horse trailer and latch, collected business materials and photographs, saddled up and went on our way. Done deal.