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More On NVR, DVR Patent - Infringement Case
Ken
With respect to Mitch’s comment, it appears that the manufacturers, distributors, and end clients being sued for patent infringement are the victims of a patent troll. Patent trolls are people and companies that obtain patents and do nothing with them except try to collect licensing fees and file lawsuits for patent infringement.
Patent trolls present a complicated problem that has plagued numerous industries a cost of billions in recent years. The US Constitution grants inventors the right to obtain patents on their inventions. Patents are very complicated to obtain, but as long as the claims examiner at the Patent Office is feels that the invention meets the required criteria, the patent will issue. Patents last for 20 years, and during that time, the inventor has a legal monopoly on all uses of the invention. Even though patent trolls don’t use the patented inventions themselves, they are legally entitled to licensing fees from anyone else that does. Without a license, anyone who uses the patent troll’s invention can be sued for statutory damages and legal fees, which are typically at least several million dollars per case.
There are calls for patent law reform to limit abuse by patent trolls, but for now, everything they are doing is legal. Currently, patent trolls can be dealt with by paying them or by fighting them either in court or at the Patent Office. Requesting that the Patent Office reexamine a patent for validity is less expensive than going to court, but if the argument doesn’t work at the Patent Office, it can’t be used by the challenger again in court. In court however, one can either invalidate the patent or at last obtain a ruling that whatever is being done is not a violation of the patent.
The good news for the alarm industry is that patent law reform restricting patent trolls will be coming sooner rather than later, and some states have already passed laws allowing legitimate businesses to sue patent trolls. Also, the invention does not appear to meet the criteria for a patent – meaning it must be new, useful, and not obvious. Using a computer to record CCTV footage is something that should be obvious in the alarm industry.
If you are being sued or sent demand letters from a patent troll, contact Gene Rosen, Esq. at (516) 747-6700 Ext. 303.
Kirschenbaum & Kirschenbaum, P.C.
200 Garden City Plaza, Suite 500
Garden City, NY 11530
Tel (516) 747-6700 Ext. 303
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Ken
As I sent you an email before - my customer is accused under the same pattent of infringement. We as the integrator who installed the system stepped in and took the suit from the end user and hired counsel. We are in federal court as we speak.
Talking to Hawk Technology - their intention is to create as many cases they can and go after the low hanging fruits......most of the large customers wants this to go away with a quick settlement. We decided to fight back. They have a pattent but it will not huh old......they didn't do their homework to check if the sysyem installed is actually infringing their theory......
Check out Avigilon vs. Hawk Technology.
Levy Acs
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Ken,
Interesting email…( Dec 4 2013 article)
Issues are with the product manufacturers out there who are in violation of the issued patent, their exposure, not that of a dealer. Although products can be pulled back as a settlement… rare but it does happen..
Some background first:
I have been in the alarm industry since 1974. I am a dinosaur of sorts. What’s a vibrator? We used them in the 60’s and 70’s… I was regional manager for Aritech in the days of ultrasonics in 1978 as well as sales manager of Sur-Gard in Canada in 1983 , have seen many of the changes over 3 decades, some good, some bad, to our industry.
Now we are box marketers…ugh! …Remember that a 25 x 25 ‘ PIR was $280 in those days!
Now, $9 ???
Migrating to CCTV: I introduced the first digital video recorder back in 1989 for both mobile and stationary applications. This while at the video alarm verification systems company, TVX, in Broomfield Co. (FYI: Founded by industry pioneer Ted Waibel, (he’s in the NBFAA Book) who also founded Sontrix in the heyday of ultrasonic competing against Advisor/Aritech/DS/Bagnall,… by the way he passed away 3 years ago Oct 6th.) … Hmm, video alarm verification, the big boy’s poo pooed on this in 1993 and killed our business, we sold to GE our mobile dvr product, and its evolution is still in their mobile video portfolio, we gave up on alarm verification. We were the first. And the best!
To the matter at hand, review of the evolution of video and patents:
I was digital video recording system product sales manager at Loronix in 1995 as well as responsible for the transfer of DVR technology from Korea (DiSS/Sungjin C&C) with Vicon, creating the “Kollector” DVR line. I myself at TAW Security have 9 patents applied for in 2003 with one issued as it relates to mobile digital video recording, and now two patents issued as it relates to gps and situational awareness and text messaging over two way radio and cellular.
I read your email broadcast with interest. All of your broadcasts are very good. thank you for your service to our industry!
Time for me to assist you, and your followers!
To answer your question: A patent is a valuable business tool when it can be used to protect a Company’s profit stream. That was crucial for all of my businesses. Emerging manufacturers with an idea spend significant amounts of money on product development, and bankers or investors only lend on profitability or assets, or intellectual property especially at the start up sage, so if a patent does not and cannot protect a profit stream in any fashion it is totally worthless for anyone. If an invention or process is commercially viable, then a patent should be looked at.
Manufacturers do not have RMR to bank on.
As a patent holder myself, any new invention that creates something new that could be broadly applied as either a process or invention as a utility patent etc. allows smaller companies with “street smarts’ to eventually license the patent to multiple users in the industry.
It also positions one for financing, and also a buyout. I am in the processor selling one of my patents to one of the largest industry players in the field of my patent, 3 years after issuance and as there are many players that are now violators, past damages or fees can be collected, but alas, only a multinational has the legal resources to enforce a patent. It cost $80,000 to issue, multiple times to enforce but there is a profitable return if you have the cash to pursue.
Sounds like this is the case here.
To the matter at hand: Mobile Vision in Texas did this back in the late 80’s, early 1990’s, when they patented an enclosure for a VCR and multiplexer with an integrated power supply and fan in a lock box. (police vcr in a lock box). I remember receiving at TVX a notice from “Patco”, another IP like company, who contacted all police car and bus video system manufacturers with their patent. If the patent has merit and there was no prior art and where defense was expensive and useless: we paid a reasonable royalty.
Also at times, if there was prior art ahead of an issued patent and where one has no access to funds to overturn the patent, users (manufacturers) then also still license, and by keeping a so called “questionable patent alive” in the hope this thwarts others from entering into the market as they would have to overturn the patent, needing significant funds and time.
Patent defense or overturning a valid patent is expensive: $100,000, $200,000, $800,000 to defend one's position, and wasting time on defense rather than sales.
Valid Patents protect the patent holder and licensees from others entering the business, limiting the number of competitors in the field.
In reading your note: if large companies who are in the digital video recording business have paid a license or have settled, this adds merit to the enforceability of the patent. They must have evaluated the patent. This makes it difficult for others to challenge the patent as time goes on. I have not reviewed this patent nor the date of the provisional or actual patent, as in one case where I was an expert witness on a digital video patent case, I have personally presented prior art to the defense that predated the plaintiff’s issued patent, which I believe assisted in the parties to negotiate a settlement rather than continue down the path of litigation and keeping the patent alive, and for “others” then to spend money and overturn, atleast in my opinion. Keeping the “small fry” out..
That is the only mechanism where one can overturn a patent, irrespective who owns it, is to prove prior art.
In my experience with patents and the USPTO, I believe where a large number of issued patents are not fully scrutinized prior to patent issuance, and unfortunately litigation is the only way to clear any patent infringement and annul the patent.
It is up to any manufacturer or designer to do a patent search and see if a new product or invention violates any patent out there. Obviously we as a society do not do this. Heaven forbid the Chinese entrants doing this! (that is another story…)
I myself in a patent issue spent $100,000 back in 2009 to impede another company from interfering in my marketplace with a like product, a testament to the workings of the patent process.
There are always two sides to a coin, and as it relates to a patent, if you have a valid patent, then others are violators. If the patent was preceded with prior art, then the patent should be invalidated. Or, parties come together with a license although they know that a patent is predated by other patents or industry prior art, and keeping the smaller businesses from coming into the market by enforcement and rolling the dice...
It could well be the situation here.
Interesting read,
I will take some time and look at the dates etc as there are many digital patents out there, some can be nullified or a free license arranged if there was prior art available.
It’s an interesting matter...
All the best of the season Ken, and thank you for your very good broadcasts over the years and your involvement with the industry.
Sincerely
Charles Kirmuss, Principal
Kirmuss & Associates LLC
6800 N Broadway, Suite 103
Denver Co 80221
303 263 6353
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Ken
Patent litigation from non-manufacturing entities is becoming a huge issue. Your readers can do something about it. The Consumer Electronics Association is backing efforts to stop this. Congress is voting on this issue
Eric Davidson
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Ken
The patent trolls are also at it as well in the Broadcast radio stations and automation software we use to operate stations programming since 2011 so I am not surprised to see them going after the alarm industry these patent trolls need stopped but as you know our courts are still set in 1950's when it comes to technology .
Nick Markowitz, Owner
Markowitz Electric & integration
Contracted Broadcast Engineer for Family Life Media
910 AM WAVL- 1380 WTYM
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AZ alarm dealers due refund
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Ken,
The Arizona Board of Technical Registration collected $65 from approximately 3,000 Alarm Agents / Controlling Persons for applications, without properly following procedure. The Board is required to make a public posting of any new fees and the Board has to approve such fees, prior to collecting such fees. Any Alarm Agent application fees paid to the Arizona Board of Technical Registration, prior to November 20th, 2013, will be returned upon the Board receiving a request for a refund.
The Arizona Alarm Dealers Association finds this outrageous and feels the Board should make refunds without any request for refund being made. Why should the Board keep money they are not entitled to? Our Association is working towards the State of Arizona requiring the Board to refund all money the Board collected without following procedure.
To request a refund, send a request to:
Board of Technical Registration
Att: Licensing
1110 W. Washington Street, Suite 240
Phoenix, AZ 85007
Roger D. Score
President, Arizona Alarm Dealers Association, LLC
(520) 419-4677
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