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 Chilling Effects Clearinghouse > Patent > Notices > KAM claims patent to run over model railroads (NoticeID 2432, http://chillingeffects.org/N/2432) Printer-friendly version

KAM claims patent to run over model railroads

March 08, 2005

 

Sender Information:
KAM Industries
Sent by: [Private]
Chernoff, Vilhauer, McClung & Stenzel, LLP
Portland, OR, 97204, US

Recipient Information:
Bob Jacobsen
UC Berkeley
Berkeley, CA, 94707-240, USA


Sent via: postal mail
Re: Re: KAM Industries U.S. Patent 6,530,329 B2

We represent KAM Industries ("KAM") with respect to their intellectual property matters. KAM is the owner of U.S. Patent No. 6,530,329 B2, issued March 11, 2003, a copy of which is enclosed herewith for your convenience.

Our preiminary analysis of the JMRI software indicates that it currently includes separate distinct programs (e.g. interface instances), namely Throttle, PanelPro, DecoderPro and Loco Tools. Each of these programs appears to be a separate Java application instance that may be run simultaneously on a computer. During operation of the JMRI software programs, our analysis indicates that the software includes the functionality to communicate over a TCP/IP connection with an installed JMRI server. The JMRI server in turn communicates with a command station for a model railroad. Our analysis further indicates that the JMRI server is capable of receiving commands from all the Java application instances anad then the commands are forwarded to the command station, and likewise retrieving commands from the command station and providing them to the corresponding separate Java application instance.

Claim 1 of U.S. Patent No. 6,530, 329 claims a method of operating a digitally controlled model railroad comprising the steps of: (a) transmitting a first command from a first program to an interface; (b) transmitting a second command from a second program to said interface; and (c) sending third and fourth commands from said interface representative of said first and second commands, respectively, to a digital command station.

It is our opinion that the JRMI software may infringe claim 1 of the '329 patent.

By way of assistance, in order to avoid further infringement of claim 1 of the '329 patent, I would suggest rewriting all of the Java application instance in a single instance where JMRI instance manager can only satisfy one creation request.

KAM currently has an active licensing program for each copy of infringing software downloaded or otherwise installed on a computer at $19 per copy. KAM would be interested in licensing its patent rights to the JRMI software.

Please provide us a response within 10 days.

 
FAQ: Questions and Answers

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Question: What is intellectual property?

Answer: Intellectual property consists of property created through human creativity. It includes, for example, literature, the visual arts, music, drama, compilations of useful information, computer programs, biotechnology, electronics, mechanics, chemistry, product design, and trade identity symbols. Intellectual property law is designed to promote human creativity without excessively restricting dissemination of the fruits of such creativity. Intellectual property rights are embodied in patents, trade secrets, copyrights, and trademarks.


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Question: Who may own patents?

Answer: The presumptive owner of an invention is the human inventor(s). The inventor may transfer ownership to anyone (including a corporation). Employees often assign the rights to their invention to their employers as part of their employment contracts.


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Question: What can be patented?

Answer: [not yet answered]


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Question: Where can I find U.S. patent law?

Answer: The Patent Act is codified at 35 U.S.C. 100 and following, available from http://www4.law.cornell.edu/uscode/35/pII.html.


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Question: How can I search for a U.S. Patent?

Answer: Issued U.S. patents can be found on the United States Patent and Trademark Office website, at http://www.uspto.gov/patft/index.html. They are also available at patent depository libraries around the country. For more information on libraries, see http://www.uspto.gov/go/ptdl/.


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Question: How long is a patent's term?

Answer: For patents filed on June 8, 1995 or later, the protection lasts for 20 years from the date the patent application is filed. For patents filed prior to June 8, 1995, the term is 17 years from the date of issuance or 20 years from the date of application, whichever is longer.


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Question: Can software technology be protected by patent law?

Answer: Yes. Software technology development is highly incremental in nature and, as a result, truly unique designs, methods or approaches are rare. In addition, prior art with respect to software technology is not centralized or even easily discovered. However, patents can and do often issue on software-based technology that is not, in fact, novel. Computer technologies can be patented as processes (software), machines, even articles of manufacture (the CD containing the software, for example).


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Question: If abstract ideas and mental processes cannot be patented, how can software based on a mathematical algorithm receive patent protection?

Answer: For years, software was considered outside the scope of patent protection to the extent based on mathematical algorithms, as mathematics is the basic working tool of contemporary science and technology and algorithms can be natural laws. In 1981, the Supreme Court held that software-related inventions are not per se to be excluded from patent protection simply because the process of performing the program's function may involve underlying mathematical algorithms. Software uses a non-physical process by operating electronically through the utilization of a mathematical equation (algorithm) to control the output of the computer program. Mathematical algorithms have a functional application in computer programs, and thus can be protected under the Patent Act. To use an example from physics, electricity was not patentable, but the way in which electricity transmits information may be patentable.


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Question: What are patent "claims"?

Answer: A patent consists of an abstract, a description of the invention, disclosures of prior art, drawings, and one or more claims. The claims are the only truly enforceable part of a utility patent, and they define the property right owned by the patent holder. They are written in technical language, and must embody subject matter that is within the scope of patent law, is novel and is not obvious. The more broadly written the claims, the less likely they are to avoid rejection or invalidation on the grounds of obviousness or anticipation by prior technology. The more narrowly written, the less likely a competing technology or device infringes the claims. To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim.


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Question: What are the elements of a claim?

Answer: Patent claims generally contain an introductory paragraph called a "preamble," which is followed by a series of phrases called "elements." Elements can be recited as a means or steps for performing a specified function, but elements recited in this way may be interpreted more narrowly than if recited by name, structure or as a defined step.


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Question: What are the requirements for patent protection?

Answer: To qualify for patent protection, an invention must be new, useful and non-obvious.


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Question: What is an "algorithm"?

Answer: An algorithm is the same as a mathematical equation in its structure, but it becomes a function through its input and output. For example, the equation (a+b = c) is a simple math equation. However, if we take that equation and add values for the letters such as, a=1, b=2, c=3, and then the program starts on a computer, this equation has created a function for simple letters and a summation. When a machine uses an equation to guide its operation, this is called an algorithm and the software for doing this can potentially be patented. If the formula is related to a natural law (such as E=mc^2), it cannot be patented as such, much the same as a simple math equation. However, such natural laws can be used to make patentable inventions in the categories discussed above, including software.


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Question: What does it mean to "infringe" a patent?

Answer: If you are accused of patent infringement, you are accused of having made, sold or offered for sale an invention described in one of the claims of a valid patent, without the patent owner's authorization. To determine if infringement has occurred, a court will look at the patent's claims, interpret them, and compare them to your device, process, method etc. Infringement occurs if your accused item performs each of the elements of any of the claims. Note that you may be liable for inducing infringement or contributing to infringement, even if you did not directly infringe a patent, if you encourage or assist someone else to infringe a patent.


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Question: Does it matter if infringement is accidental or innocent?

Answer: It does not matter for liability purposes that a patented infringer was unaware of the patented technology when infringement occurred. However, willful or intentional infringement may carry a higher monetary penalty than innocent infringement.


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Question: What are the defenses to patent infringement?

Answer: There are two basic lines of defense: non-infringement and invalidity.

Non-infringement: To infringe a patent, one must practice every element of a claim. If you do not practice one or more of the elements of a claim, then you do not infringe that claim. This determination often rests on how a court interprets the language of the claims you are accused of infringing.

Invalidity: Only a valid patent can be enforced. Issued patents are presumed valid, but this presumption can be overcome if prior art exists that demonstrates an invention was not novel or that it was obvious at the time the patent application was filed. Especially in the case of software and Internet business method patents, articles disclosing or describing the patented inventions may exist in trade publications that would not have been found by the patent examiner and would not have been part of the prosecution file of an issued patent on file with the USPTO. The patent holder's failure to name all inventors may also invalidate a patent.


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Question: What does it mean to obtain a license for a patent?

Answer: A license, in its simplest terms, is a promise by the patent owner (the licensor) not to sue the licensee for exercising one of the patent owner's rights. Patent laws grant the patent owner rights to exclude others from making, using, or selling the patented invention. Using a contract called a "license," a patent owner may choose to allow one or more others to make, use and/or sell the invention, usually in exchange for payment. As long as the licensee abides by the terms of the license contract, a patent owner cannot sue the licensee for infringement. Patent infringement cases are often settled by the accused infringer entering into a license agreement with the patent owner and promising to pay the patent owner royalties.


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Question: What are the consequences of being found to have committed patent infringement?

Answer: A patent owner may recover money damages in the form of a "reasonable royalty," which is the amount the patent holder could have earned in licensing the patented technology. Under certain circumstances, the patent owner may recover lost profits as an alternative measure of damages. The money damages amount may be tripled if the infringement is found to be "willful." The patent owner may also be entitled to enjoin further use and sale of the patented invention.


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