IP Strategy Archives - Foresight Valuation Group

Lynn’s Picks: Foresight’s Patent of the Week – US Granted Patent 11,858,498: Autonomous Vehicle Loading with Smart Transportation Platforms (Ford Global Technologies)

Posted on February 2, 2024 9:36 pmModified on February 2, 2024 9:36 pmby Lynn Dudinsky

Disclaimer: This blog was created for informational purposes only and does not represent Foresight’s or the author’s opinion regarding the validity, quality or enforceability of any particular patent covered in this blog. Foresight is not a law firm and no portion of the information contained in this blog was intended to serve as legal opinion.

One of the most memorable scenes from the HBO cult show “Silicon Valley” has a character named Jared summon an autonomous car which, in a twisted turn of events, had its route hijacked by its operator who rerouted it into a container ship, leading poor Jared to find himself unable to break free and finally emerge in the middle of the ocean surrounded by containers and robots! This week we are looking at a patent held by Ford Global Technologies carrying the patent number 11,858,498 and titled Autonomous Vehicle Loading with Smart Transportation Platforms, which could have prevented the situation that Jared found himself in. Ford Global Technologies operates as a subsidiary of Ford Motor Company and owns, manages, and commercializes patents and copyrights for Ford Motors. This patent was selected because it highlights a feature of autonomous operations that many people likely overlook, the benefit and cost savings such features can bring to the automotive manufacturer as opposed to the purchaser. Moreover, it highlights the potential revenue generation potential that intellectual property can bring to a patent holder.

Ford Global Technologies’ patent is focused on an application of self-driving that has been featured by other automotive companies, such as “Smart Summon” by Tesla, where the owner can activate this function and have their vehicle drive itself to your location, or a target destination, autonomously. These features have been marketed as a convenience tool to help move your vehicle out of a tight parking spot, through puddles, or to bring your vehicle closer to you while you are carrying packages. However, based on the details contained in the Ford patent, if these features are used by the manufacturer, it is possible to increase the speed of transporting vehicles as well as increase the safety and efficiency of a process that nearly all vehicles go through prior to arriving at the dealership. As seen in the image below, the concept behind this patent is relatively straightforward, by using autonomous driving to load vehicles onto transportation platforms, no longer is there a need for human drivers to move vehicles one-by-one onto the platform.

The patent itself describes the problem that this patent is seeking to solve; namely, the logistical hurdles inherent with loading and unloading vehicles at the scale and throughput required of a major automotive manufacturing company. The logistical hurdles mentioned in the patent specification include damage due to accidents or carelessness when loading and unloading vehicles on transportation platforms such as rail cars, shipping containers and trailers. Additionally, the description notes that this process of loading and unloading vehicles that are being shipped from manufacturers to dealerships or customers requires significantly manpower and time. According to information published on Ford’s website, the company assembled more than 1.8 million vehicles in the US in 2022 and every one of these vehicles need to be transported to a dealership or customer and this process currently involves an employee of physically sitting in each vehicle to load and another person responsible for the unloading process at the point of destination.

The patent is targeting this time, manpower and cost of damage issue by leveraging current and future autonomous features. The embodiments described in the patents do not require autonomy of this process. One example found in the patent requires a driver to be present to select the vehicle to be loaded and then has the option of activating a self-loading system found on the infotainment system and then the driver acts in a supervisory role, having that ability to take control of the vehicle if needed. However, the real benefits to Ford, and other manufacturers or transportation entities that may license the technology, is found in the fully autonomous embodiment. In this embodiment, a small number of employees act as coordinators who are able to select vehicles to activate a self-loading program. Once activated, the vehicle turns on, identifies the instructions related to the assigned transportation platform and order of loading and then the system will orchestrate the loading sequence of one or more vehicles. Within this embodiment, human involvement is limited to designing the specific program for loading on a given day and a confirmation process to ensure that the process is running smoothly. Such a process removes the requirement for a 1:1 ratio of human interactions per loaded vehicle and enables a small number of employees to act in a supervisory role. Not only does Ford benefit from the reduced manpower and time needed for loading, but also benefits from the precision driving that is expected from a vehicle once full autonomy is achieved. An additional benefit to Ford would be the ability to license this technology to its network of dealerships and transportation partners to increase efficiencies across the entire network while also having the option to license the technology to other automotive companies who have embraced full autonomous driving capabilities within their vehicles. So next time you summon an autonomous ride, you can rest assured that you will not end up like Jared!

Have you come across any interesting patents you would like us to feature in future blogs or did you invent a technology you would like featured? Please send us an email at media@foresightvaluation.com or call our office at (650) 561-3374.

Lynn’s Picks: Foresight’s Patent of the Week – US Granted Patent 11,861,255: Wearable Device for Facilitating Enhanced Interaction (Apple Inc.)

Posted on January 18, 2024 3:38 pmModified on January 18, 2024 3:38 pmby Lynn Dudinsky

In this week’s blog, we are following up on our first post in the series highlighting Rivian’s Spare Wheel Containers for a Vehicle (link to blog) patent application with a newly issued patent from Apple titled Wearable Device for Facilitating Enhanced Interaction. Apple Inc. designs, manufactures, and markets smartphones, personal computers, tablets, wearables and accessories worldwide and reported $383 billion in total revenues in fiscal year 2023, based on the company’s most recent annual report. In addition to the traditional offerings many of us use throughout our day, Apple is debuting a new form of content consumption, computer usage and productivity called the Vision Pro which is set to start accepting pre-orders on January 19^th. The Vision Pro is a form of spatial computing that utilizes artificial intelligence and computer vision to combine virtual content with the physical world. Many will view this technology as the next step in Augmented Reality/Virtual Reality (AR/VR) and we have seen early forms of this technology in products such as Magic Leap or Oculus (now Meta Quest). While this blog is not an endorsement of the future of spatial computing, Apple’s participation in the market is a sign of market traction and likely growth in rollout of consumer products targeting the typical use of personal computers rather than being driven by gaming applications, which is the reason this patent was selected to be highlighted in this blog series.

As seen in the images below, the issued patent, which was filed in 2018, addresses the person to person interaction element that is anticipated when a user has a computing device covering the majority of their face. Given the intent of this device to be used in a similar manner in which our phones and computers are currently being used, there needs to be a way to allow personal interaction in a fashion that is not currently available in most VR or other head devices. To overcome this issue and to provide the user with awareness of and engagement with the real-world, the patent presents a system with internal and external cameras and displays to facilitate interaction between the wearer and another person or environment.

In order to allow the device to be a practical device for any number of targeted uses, isolating the wearer from the environment while also preventing those surrounding the user to interact with the user in a traditional way, requires the device to have the ability to show human expression which is a critical component of person to person interaction. One could easily argue that such a system is unnecessary but the same has been said about a myriad of technologies that have emerged over the past 10-20 years that we utilize every day, whether that is a personal assistant like Siri or a toaster with an interactive display. The inventive process should not be limited by current habit of the consumer, but rather, the inventive process should anticipate and nudge the consumer into seeing the value and purpose of the underlying inventive concept. This can be seen in other images from the patent copied below. Is it necessary to display the wearer’s facial expressions as if the wearer’s eyes were that of a lion? No, but it is a feature that consumers immediately understand due to the similarity to the endless number of filters we can apply to our faces during facetime or other video calls. Will this lead to enjoyable mishaps like the lawyer on a zoom conference in District Court that could not figure out how turn off the cat filter? It remains to be seen how the consumer interacts with the facial features of the Vision Pro and whether these features are “facilitating enhanced interaction” as the patent’s title says.

Masimo vs. Apple: The Role of the ITC in Patent Disputes

Posted on January 5, 2024 6:44 pmModified on January 5, 2024 6:46 pmby Lynn Dudinsky

As referenced in our previous blog, Demystifying the International Trade Commission (ITC), Apple made headlines in December 2023 for halting the sale of its latest Apple Watch Series 9 and Ultra 2 models in the US on December 21^st. The reason behind this was a patent dispute between Apple and Masimo Corp. related to a blood oxygen sensor in which the ITC ruled Apple violated Masimo’s patents. While this came to media attention in late 2023, this case had been working its way through the court system for years, starting when Masimo won a patent infringement case against True Wearable in 2022. True Wearables’ founder and CEO Marcelo Lamego worked at both Masimo and Apple where he developed similar technologies before founding True Wearables. True Wearables’ founder first worked at Masimo and then contacted Apple CEO Tim Cook in 2013, offering to help with the Apple Watch. He subsequently joined Apple in 2014. At Apple Mr. Lamego was a named inventor on several health-related Apple patents before leaving to start True Wearables in 2014, after only a few months at Apple. So Masimo found itself in a situation where both companies, True Wearables and Apple, were allegedly infringing its patents, which led to it taking legal action against both companies

In conjunction with the patent dispute against True Wearables which resulted in a permanent injunction against the sale of True Wearables infringing devices, Masimo also filed a Section 337 action at the ITC against Apple alleging that the company was importing into the US devices that infringed multiple patents held by Masimo. In Section 337 actions, the complainant must establish that a domestic industry for articles protected by the asserted patent(s) exists or is in the process of being established. There are two requirements that must be met in regards to the ITC domestic industry analysis: an economic element and a technical element. The complainant (Masimo) must show that one of the economic activities identified in 19 U.S.C § 1337(a)(3) has occurred to fulfill the economic requirement. These activities include: significant investment in plant and equipment, significant employment of labor or capital, or substantial investment in exploitation, including engineering, R&D or licensing. In regards to the technical element, the complainant must establish that it practices at least one claim in each asserted patent. One of the main arguments made by Apple was whether Masimo’s W1 smartwatch, or any product by Masimo, was actually released prior to the complaint being filed by Masimo. This is an area of active development and will likely feature prominently in the appeal by Apple which was filed on December 23, 2023.

In January of 2023, the ITC issued their Final Initial Determination that Apple was infringing on Masimo’s patents. The ITC then issued a limited exclusion order and cease and desist order against Apple in late October of 2023. Once this decision was made, the next step was a 60-day presidential review period where Apple hoped that President Biden would veto the ban as President Obama had done for Apple in 2013 in regards to the iPhone and iPad. However, as the 60-day review period approached its conclusion and there was no indication that President Biden would issue such a veto, Apple pulled the Watch Series 9 and Watch Ultra 2 from its stores and President Biden eventually declined to veto the ruling of the FTC. As a last resort, Apple filed an appeal with the United States Court of Appeals for the Federal Circuit (CAFC) and secured a temporary stay of the ITC’s importation and sales ban. On December 27, the Federal Circuit granted Apple’s request for an emergency stay. This temporary could be extended through the conclusion of the ITC appeal which could take about 18 months.

The outcome of this appeal and any further actions are important to Apple as affected watch models have been some of its best sellers, accounting for a substantial portion of the company’s overall watch sales. Although Apple hasn’t publicly disclosed revenue figures, analysts estimate that the Apple Watch alone generated approximately $17 billion in sales in fiscal 2023. Moreover, the removal of the affected watches from Apple’s online store and physical retail locations only adds another layer of complexity to the situation, as the watches will still be available through third-party retailers. Apple is working across multiple venues to overcome the decision by the ITC. As referenced above, Apple filed the appeal and won a temporary stay and will push the CAFC to find in its favor and reverse the decision of the ITC. At the same time, Apple has submitted plans to the US Customs and Border Protection for a software solution. One other possibility in this complex dispute is for Apple to pay Masimo to end the dispute and put an end to the business disruption caused by this ongoing patent dispute.

The key takeaway from the events surrounding the Masimo patents is that the ITC is an important venue for patent enforcement in the U.S., where the range of remedies may actually include a physical importation and sales ban, particularly when it comes to products where the supply chain dictates importation of products manufactured overseas. Stay tuned for more updates on this blog as the CAFC and ITC appeal proceedings continue in 2024.

Romag v. Fossil: Resolving a Circuit Split on Willfulness and Profit Awards for Trademark Infringement

Posted on June 28, 2020 5:50 pmModified on June 28, 2020 5:51 pmby Lynn Dudinsky

In the midst of the COVID pandemic, the Supreme Court resolved an issue that was split evenly between the circuit courts. The issue before the Court was whether the Lanham Act, which is the federal statute governing trademarks, required a plaintiff to prove that the defendant had willfully infringed their trademark before the plaintiff could recover the infringer’s profits. In a surprisingly unanimous decision, the Supreme Court in Romag v. Fossil held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.

This dispute began when Fossil signed an agreement with Romag that allowed Fossil to use Romag’s magnetic snap fasteners in Fossil’s handbags and other products. During the initial years of the relationship, both parties were content with the arrangement but after some time, Romag discovered that the factories Fossil hired in China to make its products were using counterfeit Romag fasteners. Romag alleged that Fossil did little to prevent the factories from continuing this practice and when both parties were not able to resolve the issue internally, Romag initiated litigation. A trademark case followed with Romag accusing Fossil of infringing its trademark and falsely representing that the fasteners came from Romag. At trial, a jury agreed with Romag and found that Fossil acted in callous disregard of Romag’s rights but rejected Romag’s claim that Fossil had acted willfully and therefore denied Romag’s recovery of Fossil’s profits. This decision by the jury was based on the definition of the district court which relied upon precedent from the Second Circuit. The Second Circuit happened to be one of the six circuits that required proof of willful infringement as a precondition to a profits award. This case was then accepted by the Supreme Court to resolve the split.

The Supreme Court was careful to rely on the plain language of the Lanham Act in describing the unanimous holding. This is important because the plain language of the Lanham Act does require willfulness as a precondition to a profits award for a trademark dilution cause of action. However, Romag’s cause of action was not for dilution (conduct that lessens the association consumers have with a trademark), it was for the false and misleading use of their trademarks and the plain language of that section does not require proof of willfulness. Fossil, and half of the circuit courts, had read into this cause of action the willfulness requirement of a dilution cause of action. The Supreme Court rejected this inclusion of willfulness language where the Act had been silent, holding that courts must be more careful when reading into statutes words that are not there when Congress has included that language elsewhere in the same statutory provision. In making its decision, the Supreme Court refused to insert this language, and noted other examples within the Lanham Act where the statutes speak to mental states and how the mental state impacts the damages award (i.e., increasing damages for intentional acts and with specific knowledge, increasing the statutory cap on damages for certain willful violations and limiting the types of awards for innocent infringers). With these references in mind, the Supreme Court made it clear that, while the mental state of a trademark defendant is a “highly important consideration in determining whether an aware of profits is appropriate,” the use of willfulness as an “inflexible precondition to recovery” cannot be read into the statute as written. Based on this determination, the Supreme Court vacated the judgment of the court of appeals and remanded the case for further proceedings consistent with its opinion and left the door open for policymakers to insert this language into the Lanham Act should it determine that this requirement for willfulness would further the goals of the statute.