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Phosita IP Blog

RUMORS OF THE ANTICIPATED XBOX 720 INCORPORATING A DVR SYSTEM COME IN THE MIDST OF A SWIRL OF LITIGATION INVOLVING DIGITAL VIDEO RECORDING TECHNOLOGY.

As reported by Gamezone on January 4, a new rumor has surfaced about the development of the next generation Xbox, or Xbox 720 – a clever twist on the current Xbox 360 title, due to a patent recently granted to Microsoft. 

United States Patent No. 8,083,593 was issued on December 27, 2011, and describes the implementation of a DVR system allowing for the recording of media, including television programs. The following abstract briefly describes the DVR application as implemented in the new system:

                “An integrated gaming and media experience is disclosed, including recording of content on a gaming console. A digital video recorder (DVR) application running alongside a television client component allows users to record media content on the gaming console. The DVR application also integrates itself with the console menu. Once integrated, users can record media content while playing games. Alternatively, users can record content when the gaming console is turned off. The recorded content can include television programming, gaming experience (whether local or online), music, DVDs, and so on. When in the recording state, users can also switch between various other media modes, whether gaming, television, and so on.”

Although the new Xbox 720 sounds pretty cool, this patent gives rise to yet another issue in the current controversy between Microsoft and TiVo regarding digital video recorder (DVR) technology. As you may have heard, Microsoft filed a lawsuit back in January 2011 and in subsequent motions alleged that TiVo violated seven of Microsoft’s patents concerning digital video recording.  There is currently, however, a stay on the case due to the court’s having granted TiVo’s request for reexamination of the allegedly infringing patents. See Microsoft Corp. v. Tivo Inc., 2011 U.S. Dist. LEXIS 52619 (N.D. Cal., May 6, 2011).

What really makes this interesting is that AT&T (one of Microsoft’s major customers) was sued in 2009 for infringing TiVo’s DVR patents 6,233,389, 7,493,015, and 7,529,465 which ultimately resulted in a settlement on January 3, 2012.  Forbes reports that TiVo will receive approximately $215 million from AT&T with $51 million up front and recurring quarterly payments until 2018 to cover the rest. To add to the controversy, it has been suggested that Microsoft filed its suit in January 2011 in response to TiVo’s suit against AT&T because AT&T’s technology runs Microsoft’s Mediaroom client software. Thus, it raises the question that since AT&T settled and AT&T’s technology uses Microsoft’s technology, is it still feasible that Microsoft could win its suit against TiVo and be able to defend against TiVo’s counterclaim of patent infringement? Although I have not researched in depth the patents at issue in these cases, the settlement by AT&T, if anything, might shed some light on how Microsoft’s case will unfold once reexamination is complete.
Now back to the important stuff: video games. In light of all this litigation surrounding DVR technology, it seems like the video game community might have to wait even longer than the 2013-2015 projected release date of the Xbox 720 so that Microsoft can incorporate the rumored DVR feature without the risk of impending litigation. If Microsoft ends up winning the suit against TiVo before then, however, I, for one, hope that Microsoft passes some of the winnings on to the consumer in the form of discounted prices for the new system.

 Image by Fanchile on Flickr Creative Commons- some rights reserved.

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DC On Film Row

About DC on Film Row

DC on Film Row is a free event space open to everyone in our community.

We like to say that the space is a “home for creatives and innovators, home builders and the homeless, celebrators and the celebrated” so people understand that we are inclusive and want everyone from throughout our community using our space.

Our goal is to celebrate the incredible diversity of creativity, innovation, and passion within Oklahoma City and to provide a venue—free of charge—to those groups and individuals working to bind us all together and make our home a cooler and better place. No strings attached—no extensive rules to follow. We simply ask that all of our neighbors be honored and that all viewpoints be respected. Our criteria for use is simple: If the event, group, or meeting is something which strengthens our community and brings us all together, the space is available for use.

The space has hosted everything from charitable fundraisers to an underground nightclub party to celebrate Canterbury Choral Society’s 45th anniversary season. We host dinners for the OKC homeless population most Monday evenings where upwards of 250 people are served—we provide the space and soft drinks and a local church provides the food. We’ve hosted university planning retreats and monthly local rock concerts.

Every Wednesday, we open up the courtyard for lunch, invite a local food truck to set up outside our gates, and welcome our downtown neighbors into the space for a bit of socialization.

Our never-ending soda fountain seems to be the biggest hit with some of our neighbors while others spend time playing pool or simply chatting about what is happening on the weekend.

For October we turn the space into a haunted house and invite the neighborhood children to come out and trick-or-treat.

Got an idea for how to use the space? Just ask us – we’re almost certain to say yes!

Who we are.

Jordan Sigale

Contact

PH: 312-651-6744 CHICAGO 225 West Washington Street
Ste. 2200
Chicago, IL 60606

Jordan A. Sigale

Attorney–Director | Chair of Litigation Practice Group
patent trade secret

Jordan Sigale practices in intellectual property, computer, and patent law with a focus on patent and trade secret litigation and alternative dispute resolution. His work also extends to client counseling on issues of corporate and strategic planning involving copyrights, patents, trademarks, and trade secrets. He is extensively involved in patent prosecution for a variety of clients with specific focus on the interface between computers and end-users in an array of situations and transactions.

A hallmark of Jordan’s work is his approach to finding creative, practical ways to achieve clients’ immediate and long-range business goals by applying intellectual property licensing, procurement, and litigation strategies. He first strives to understand his clients’ business histories and goals through in-depth conversations and then collaborates with and guides clients through strategic decision-making processes.

As a result of the breadth of Jordan’s experience, he frequently counsels clients on intellectual property acquisition and development, portfolio management, licensing, joint ventures, and trade regulation issues.

Contract Negotiation, Litigation, and Alternative Dispute Resolution
Jordan’s broad understanding of business and intellectual property coupled with his deep experience in contract negotiation and litigation has placed him in the middle of significant contract matters in the boardroom, the courtroom, and before arbitration panels. He has been involved in strategy and drafting of thousands of agreements for hundreds of clients across dozens of industries (e.g., acquisition, assignment, development, indemnification, joint venture, license, merger, sales, service, settlement, termination, and transfer). He has also been actively involved in the negotiation of the same broad variety of agreements. As a result of his broad exposure to contract issues, clients have also sought Jordan’s counsel in resolving differences that arise in the implementation of agreements, which he has often resolved without the need for third-party intervention.

Where third-party dispute resolution of contract problems has been required, Jordan has been there too. For example, he recently served as co-counsel to a Los Angeles-based mega law firm in a JAMS arbitration in Los Angeles alleging millions of dollars in damages for breach of a design, development, marketing, and distribution agreement involving an international product development and marketing company. Jordan was also recently involved in disputes involving the alleged underpayment of royalties in biotech, children’s products, consumer products, and music.  In a number of instances, Jordan has been lead counsel on these disputes. For example, in an AAA Arbitration involving allegations of breach of contract and fiduciary duty by a Southern California technology start-up, Jordan represented the respondent, a wholly owned subsidiary of a Fortune 250 laboratory equipment company. In another example, Jordan represented Taiwanese-based DBTEL in a litigation in U.S. District Court filed by Motorola, following its termination of a manufacturing agreement with DBTEL.

Intellectual Property Litigation
Jordan has served as lead litigation and trial counsel in district courts throughout the U.S. involving a variety of intellectual property issues including computer intrusion, copyright infringement, false advertising, design and utility patent infringement, trade secret misappropriation and trademark infringement. He has also served as lead litigation and trial counsel on a variety of antitrust claims, usually focused on the antitrust-intellectual property interface. Jordan has been extensively involved in coordinating foreign intellectual property litigation strategy in Australia, China, Europe, and Hong Kong.

His litigation work has involved diverse technologies including cable television systems; chemical compositions (ceramics, ink, and pharmaceuticals, for example); consumer electronics (DVD players, small kitchen electrics, personal care devices, and toys, among others); lab equipment (spectrophotometers, for example); LED devices; lighting fixtures and power supplies; medical devices (for example, laser devices, orthopedic devices, and radiological devices); packaging; software; and telephony (including cellular, cordless, and wired).

Most recently, Jordan successfully defended a Texas Corporation before an Oklahoma jury against trade secret claims involving the extraction of iodine from produced waters.  Before that Jordan has had a string of successful patent, trademark, and trade secret case resolutions without the need for trial. Some cases have been favorably decided at or soon-after preliminary injunction.

Patent Prosecution
Jordan has successfully combined his deep litigation experience with his extensive knowledge of U.S. and foreign patent prosecution practice. As an active member of the patent bar, he has prepared and prosecuted patent applications in the U.S. in the chemical, electrical, electrochemical, and mechanical arts including business methods; cable television equipment; computer circuits (including multiprocessor designs); computer peripherals such as laser printers and user input devices; cosmetic preparations; electronic toys, electrical testing apparatuses, fiber optics, high-end audio circuitry; kitchen appliances, medical devices, networking devices and methods, personal care devices; semiconductor design and fabrication, paperboard and plastic containers, RF equipment, signal processing software, speech recognition software, and telephony-related inventions. Jordan has also worked closely with an extensive network of foreign patent lawyers to prosecute patent and utility model applications world-wide for his clients. This experience allows him to consider multiple jurisdictions and venues, including inter partes proceedings at the U.S. Patent Office, in mapping potential client strategies.

Jordan has substantial experience in developing strategies in view of the Hatch-Waxman Act and litigating the ensuing infringement, validity, and enforceability of pharmaceutical patents on behalf of generic and branded pharmaceutical companies. For example, he took a leading role in a multi-week bench trial involving seven Orange Book-listed patents covering issues of non-infringement, invalidity, and inequitable conduct. A few months prior to trial, he briefed and argued an emergency appeal involving a case of first impression before the U.S. Court of Appeals for the Federal Circuit involving the statutory 30-month stay provided under the Act. He has also had the rare experience of litigating a pharmaceutical patent infringement case for presentation to a jury in a case that settled following a number of successful pretrial rulings, jury selection, and opening statements.

Jordan has served as lead litigation counsel on four U.S. District Court cases involving trade secret antitrust and patent antitrust claims. In these cases he successfully argued the summary judgment motions before the District Court and U.S. Court of Appeals for the Federal Circuit that led to the U.S. Supreme Court’s seminal decision in Independent Ink, Inc. v. Illinois Tool Works Inc. clearly abolishing any presumption of market power in a Sherman Act Section 1 “patent-tying” claim, thus upholding the favorable summary judgment ruling for his clients in the District Court.

His experience with the patent antitrust interface reaches back to his extensive involvement on the trial and appellate teams in the mid-1990s in C.R. Bard v. M3 Systems (a medical device patent infringement action also involving patent-based Section 1 and 2 antitrust claims as well as non-patent based monopolization claims). In between his two high-profile patent antitrust cases, Jordan has continued to work in the antitrust area providing advice and opinions involving antitrust issues related to a broad range of activities, but most particularly issues involving technology distribution and exploitation.

  • Loeb & Loeb, Chicago
  • Sonnenschein Nath & Rosenthal LLP, Chicago
  • The Law Offices of Dick and Harris, an intellectual property litigation and prosecution boutique in Chicago
  • Illinois
  • United States Patent and Trademark Office
  • U.S. District Court for the Northern District of Illinois, Trial Bar
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. Court of Appeals, Tenth Circuit
  • University of Illinois College of Law, J.D., 1992, magna cum laude
  • University of Illinois College of Electrical and Computer Engineering, B.S., 1989
  • Listed in The Best Lawyers in America 2019 for Litigation – Intellectual Property.
  • Selected by attorney peers for inclusion in Illinois Super Lawyers 2018 for Intellectual Property Litigation and Intellectual Property; listed since 2014
  • Named an IP Star for Patents and Trademarks by Managing Intellectual Property magazine again in 2018
  • Recommended among “Top Lawyers in Illinois” in Intellectual Property Law, Leading Lawyers Network, a division of Law Bulletin Publishing Company (2004-2014)
  • Speaker, “Patent False Marking:  How to Spot and Avoid Physical and Virtual Landmines in Marketing and Advertising Your Products,” November 16, 2010
  • Speaker, “Implementing Successful Approaches to IP Protection While Maximizing Business Value,” IQPC’s 4th Patent Strategies, New York, NY (2007)
  • Speaker, “Up-to-the-Minute Analysis of Court Decisions Affecting the Generic Drug Industry,” IIR’s 8th Annual Generic Drugs Summit, Washington, DC (2007)
  • “Fed. Circ. Could Ease On-Sale Bar Threat to Pharma Patents,” Law360, May 4, 2016, by Ryan Davis
  • “Justices May Weaken Design Patents in Apple-Samsung Case,” Law360, March 21, 2016, by Ryan Davis
  • “Three Reasons IP Specialists Have an Edge at Trial,” Law360, March 14, 2016, by Erin Coe
  • “Stakeholders Agree with Fed. Cir.’s Discount of Severe Patent Exhaustion Consequences,” BloombergBNA, February 16, 2016, by Tony Dutra
  • “5 Times NOT To File An AIA Petition,” Law360, November 17, 2015, by Erin Coe
  • “Apple Gets Injunction Against Samsung’s Use of Its Patented Smartphone Features, BloombergBNA, September 18, 2015
  • “6 Tips For Using An Expert Witness to Win An IP Trial,” Law360, September 14, 2015, by Erin Coe
  • “Jordan Verdict a Warning For Advertisers On Image Use,” Law360, August 24, 2015, by Zachary Zagger
  • “Patent ‘superpowers’ time limits upheld: Biopharma implications,” Scrip Intelligence, June 22, 2015, by Donna Young
  • “Justices’ Expired-Patent Royalties Ban To Spur Clever Deals,” Law360, June 22, 2015, by Ryan Davis
  • “Sup. Ct.: Cisco’s Belief Wi-Fi Patent No Good Isn’t Shield to Claim it Induced Infringement,” Bloomberg BNA, May 29, 2015
  • “En Banc ‘Innocence of Muslims’ Ruling Says Actor Didn’t Hold Copyright in Film,” Bloomberg BNA, May 22, 2015
  • Practitioner’s Playbook: The Complaint, March 18, 2015, Law360, by Erin Coe
  • High Court Claim Construction Ruling Set to Spur New Fights, January 20, 2015, Law360, by Ryan Davis
  • The Question You Need to Ask Before Jumping Ship, January 9, 2015, Law360, by Ryan Davis
  • US Perspectives: ISPs in US Face New Copyright Attack, Intellectual Property Watch, December 22, 2014, by Steven Seidenberg
  • New USPTO Guidance Has Fewer Limits on Patent Eligibility, December 15, 2014, Law360, by Ryan Davis
  • Finnegan Attorney Named to Fed. Circ. Hailed for Patent Prowess, November 13, 2014, Law360, by Ryan Davis
  • RJ Machine Sues Pipe Rival Over Expired-Patent Monopoly, July 11, 2013, Law360
  • Baxter Battle May Change IP Litigation, July 31, 2012, Law360
  • Apple, Samsung Take Road Less Traveled, July 31, 2012, Inside Counsel
  • Apple Win May Bolster Tablet Design, July 6, 2012, Chicago Daily Law Bulletin
  • Out of Chips, February 23, 2012, Corporate Counsel
  • Solo Cup Decision Makes it Easier to Defend False Ptent Marking Cases, by Steven Seidenberg, Inside Counsel
  • US Appeals Court Questions Lilly About Earlier Evista Ruling, by Jared A. Favole, CNNMoney.com
  • Speaker, “Understanding and Managing the Risks Presented by Patents and Patent Trolls,” Promotion Marketing Association webinar, October 9, 2012
  • Speaker, “Crossing the Bridge:  How to Respond to the (Patent) Trolls You Meet,” Loeb & Loeb webinar, April 10, 2012
  • Speaker, “Patent False Marking:  How to Spot and Avoid Physical and Virtual Landmines in Marketing and Advertising Your Products,” vPanel, November 16, 2010
  • Speaker, Law Bulletin Seminars Annual Corporate Intellectual Property Law Conference, February 13, 2013
  • Speaker, “Implementing Successful Approaches to IP Protection While Maximizing Business Value,” IQPC’s 4th Annual Patent Strategies, 2007
  • Speaker, “Up-to-the-Minute Analysis of Court Decisions Affecting the Generic Drug Industry,” IIR’s 8th Annual Generic Drugs Summit, 2007