Re: Re: Re: Digital Audio: first-use patent rights

Subject: Re: Re: Re: Re: Digital Audio: first-use patent rights

Comments:
: : Therefore, from my understanding of the law, I have "first-use rights" to the technology, in that I can continue to use it without having to pay any license fees (hmmph!). : This is a complicated question, and you should really consult a patent attorney on this in greater detail. : That said, I believe the "first use" you're referring to is the newly enacted defense in 35 U.S.C. 273(b). (There has long been a "first sale" doctrine that doesn't seem to apply there: subsequent sales of a patented item does not count as infringment.). I see two immediate problems with trying to use this provision. : First, the defense is limited to methods of doing business (35 U.S.C. 273(a)(3)), so I don't think downloading digital audio would count, but you'd need an attorney to see if it could fit within the definition. Because the provision is so new, I'm not aware of any judicial or regulatory interpretation of what counts as a business method thus far. : Second, the provision explicitly states that the defense is a "personal defense" meaning that "the defense shall not be licensed or assigned or transferred to another person except as an ancillary and subordinate part of a good faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates." : What the heck does that mean? My best guess is that you can't just transfer the defense by itself; it has to be part larger package that involves something like the sale of a whole business. Sale of just I.P. rights probably wouldn't cut it. But as you can see, there's wiggle room here, and there hasn't been any cases yet to test exactly what is covered. : I would think your best bet would be to decline to pay license fees, saying that their patents are invalid. Your best defense may be that the patents are invalid as not new in view of your publications. If necessary, you could file a Declaratory Judgment action to render the patent unenforceable, but that seems like more trouble than necessary. : As I said before, be sure to consult a patent attorney on this. It sounds like you need a grand strategy tailored to your business goals. Best of luck

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