Wednesday, May 27, 2015

PWC's 2015 Patent Litigation Study - A change in patentee fortunes

I suggest reading PWC's 2015 Patent Litigation Study - A change in patentee fortunes.

Here are PWC's observations for what happened in 2014 with a few comments:
  1. Patent lawsuits filed dropped 13%. Congress should consider this with respect to patent reform.
  2. Median damage awards second-lowest point in two decades. Is the median skewed by lack of mega damage awards in 2014?
  3. Juries decided 67% of the patent cases and median jury award were 31 times greater than median bench awards, which indicates patent owners should request jury trials 100% of the time. 
  4. Differences exist in awards based on industry; from highest to lowest: biotech /pharma, telecommunications, and medical devices, and consumer products. 
  5. Median time to trial grew to about 2.4 years.
  6. Top five districts favoring patents remain: ED Texas, Virginia Eastern, Delaware, Wisconsin Western, Florida Middle. Northern District of California has lots of cases filed, but is not as favorable to patent owners.
  7. Damages for non-practicing entities (NPEs) 4.5 times greater than for practicing entities. This is surprising given the media fed to the public (see juries) about "patent trolls."
  8. Federal Circuit modifies some ruling of the trial court in about 50% of the cases.
Copyright © 2015 Robert Moll. All rights reserved.

Fortune - Let Oracle Own APIs, Justice Dept Tells Top Court in Surprise Filing

I suggest reading the Fortune article: Let Oracle Own APIs, Justice Dept Tells Top Court in Surprise Filing and DOJ's filing.

The DOJ filing which is worth reading encourages the US Supreme Court to deny Google's petition to hear its arguments to deny copyright protection to Oracle's Java related application programming interfaces (APIs). It does a good job of explaining the scope of copyright protection for software.

DOJ stated, among other things, in the filing: "The Android platform uses the Java programming language, but [Google] purposely designed Android not to be compatible with the Java platform or interoperable with Java programs."

Google's response: "We still look forward to defending the concepts of interoperability that have traditionally contributed to innovation in the software industry."

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, May 26, 2015

Supreme Court - Commil USA, LLC v. Cisco Systems - Belief of Patent Invalidity No Defense to Induced Infringement Claim

In Commil USA, LLC v. Cisco Systems, the US Supreme Court held that a defendant's belief that a patent is invalid is not a defense to a claim it induced infringement.

Commil USA, LLC, the owner of a patent relating to a method of implementing wireless networks, had sued Cisco Systems, Inc., for making and selling wireless networking equipment that directly infringed and for inducing others to infringe the patent by selling them infringing equipment.

Cisco was found liable for direct and induced infringement, but had raised the defense to induced infringement that it had a good-faith belief Commil’s patent was invalid. The trial court ruled evidence to show the belief inadmissible. On appeal, the Federal Circuit stated the trial court erred in excluding Cisco’s evidence of its good-faith belief.

The Supreme Court has had a pattern of reversing the Federal Circuit in recent years, and this case was no different. It held a defendant’s belief that a patent is invalid is not a defense to a claim of induced infringement. Induced infringement under 35 U. S. C. §271(b) only applies when a defendant knew of the patent and that the induced acts constitute infringement. Similarly, contributory infringement under 35 USC §271(c) requires knowledge of the patent and knowledge of patent infringement.

This contrasts with direct infringement under 35 USC §271(a), which is a matter of strict liability where the defendant’s mental state is irrelevant.

The Supreme Court reminded that Global-Tech requires knowledge that the induced acts constitute patent infringement and that the defendant's actions demonstrated it knew it would be causing customers to infringe patent.

The Supreme Court said induced infringement and validity are separate defenses, and said it was unwilling to undermine the presumption that a patent is valid under 35 USC §282(a) proof otherwise must rebut the presumption by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. Partnership.

The Supreme Court noted accused inducers who believe a patent is invalid can seek ex parte reexamination of the patent by the USPTO and that district courts can dissuade frivolous suits by sanctioning attorneys, e.g., under Rule 11 or awarding attorney fees under 35 USC 285.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Patents Dashboard: Tracks Pendency, Quality and Timeliness of US Patents

US Commissioner of Patents Peggy Focarino informs the USPTO recently updated the Patents Dashboard that estimates examination dates and pendency of applications. See Redesigned and Updated Patents Dashboard.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, May 25, 2015

Federal Circuit - Akamai Technologies, Inc. v. Limelight Networks, Inc. - Infringement by Inducement Requires Direct Infringement

In Akamai Technologies, Inc. v. Limelight Networks, Inc. the Federal Circuit held that the patent owner Akamai failed to prove infringement by inducement by Limelight, because Akamai failed to show direct infringement.

The Federal Circuit held that direct infringement only occurs when a single party or a joint enterprise performs all of the steps of the method. Further, encouraging or instructing others to perform an act is not the same as performing the act and will not result in direct infringement. Instead, multiple entities must be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

This case relates to U.S. Patent No. 6,108,703 (the '703 patent). It describes an invention that, among other thing, stores web pages at the content provider (web site) and stores their embedded objects at another domain closer to the client. This is one of inventor Daniel Lewins' contributions to the Web: store popular web pages at the web site so hits can be tracked, but store their embedded objects at domains closer to the browsers to reduce page latency.

Claim 19 of the '703 patent recites a content delivery service, comprising:
  • replicating a set of page objects across a wide area network of content servers managed by a domain other than a content provider domain;
  • for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain;
  • responsive to a request for the given page received at the content provider domain, serving the given page from the content provider domain; and
  • serving at least one embedded object of the given page from a given content server in the domain instead of from the content provider domain.
Limelight performed all the steps of claim 19 except for the step of "tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain," which it encouraged customers perform.

Such is insufficient, and the Federal Circuit explained: "In the present case, the asserted claims were drafted so as to require the activities of both Limelight and its customers for a finding of infringement. Thus, Akamai put itself in a position of having to show that the allegedly infringing activities of Limelight’s customers were attributable to Limelight. Akamai did not meet this burden, because it did not show that Limelight’s customers were acting as agents of or otherwise contractually obligated to Limelight or that they were acting in a joint enterprise when performing the tagging and serving steps. Accordingly, we affirm the district court’s grant of Limelight’s motion for JMOL of non-infringement under § 271(a)."

In general, a method claim should be written so that a single entity performs each step to avoid the requirement that the multiple entities that perform the claim be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, May 11, 2015

USPTO - Transition from the United States Patent Classification (USPC) to the Cooperative Patent Classification (CPC) System

In a blog post Successful Transition to the Cooperative Patent Classification System, the USPTO Commissioner for Patents Peggy Focarino informs of the USPTO's adoption of an international classification scheme and addition of prior art documents from the EPO, China, and Korea:

"On January 1, 2015, the USPTO successfully transitioned to the Cooperative Patent Classification (CPC) system from the United States Patent Classification (USPC) system. The CPC is a collaborative venture between the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO), designed to develop a common, internationally compatible classification system for technical documents used in the patent granting process. It offers a more robust and agile classification system for both offices’ user communities and enables more technical documents to be classified, because the USPTO and EPO are both entering documents into the system. Since its launch, the USPTO has successfully issued about 47,000 U.S. patent documents under the CPC.

As we transitioned to the CPC, we made sure to keep patent applicants and owners updated on the transition process. Leading up to the changeover, throughout 2013 and 2014, numerous bilateral CPC events were held with external stakeholders, providing notice that the USPC would become a static document collection for utility patents after December 2014. Stakeholders may continue to see a limited number of U.S. patent grants still issuing with USPC symbols due to allowed applications already in the publication cycle, but the USPTO will no longer actively assign USPC symbols to issued utility patents. However, plant and design patents are not covered in the CPC, so they will continue to be published with USPC symbols.

To facilitate searching for documents, the USPTO’s existing tools have been modified to provide all users the ability to search documents classified in the CPC, the USPC (now a static document collection), and the International Patent Classification (IPC) systems. USPTO examiners are now required to classify and search using the CPC, and we want our user community to understand that the CPC will be continuously updated through bilateral revision and reclassification projects between the USPTO and the EPO. We are also working on creating a bilateral examiner-focused collaborative environment for discussions, work-sharing initiatives and training opportunities.

As a leader in the global patent community, the USPTO is dedicated to providing a quality classification system for employees and stakeholders, and one that is compatible with the international patent community. Most importantly, we will ensure that the quality of the classification system remains strong and agile.

The CPC provides a more comprehensive search result set that includes national documents from China and Korea, as well as several other countries that are classifying their national documents into the CPC; documents that were not previously available for viewing or retrieval under the USPC. We intend to keep the quality of the CPC documents at a high level by helping more countries classify their national documents into the CPC, and we will continue to work with the EPO to perform an ongoing number of CPC revision projects.

We welcome your thoughts on the transition from the USPC to the CPC. More information, including frequently asked questions, is available on the CPC page ...."

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, May 10, 2015

Hague Agreement Concerning the International Registration of Industrial Designs - Effective on May 13, 2015

As a reminder, US applicants will be able to file an international design application with either the World Intellectual Property Organization (WIPO) or the USPTO through the Hague Agreement concerning the International Registration of Industrial Designs (the Hague Agreement) on or after May 13, 2015.

The design application filed under the Hague agreement can contain one or more inventions and designate one or more of the 64 countries that are party to the Hague agreement. A US design patent resulting from an application filed under the agreement will have a 15-year patent term from the issue date.

USPTO website details: Hague Agreement Concerning International Registration of Industrial Designs.

See my related articles: USPTO - Hague Agreement - Single Design Patent Application Registers up to 100 Designs in Over 62 Territories and USPTO - US Residents Filing A Design Application under Hague Agreement?

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, May 9, 2015

Supreme Court - Amendments to the Federal Rules of Civil Procedure - Reducing Litigation Costs

Chief Justice Roberts of the United States Supreme Court submitted amendments to the Federal Rules of Civil Procedure to Congress on April 29. The amendments most likely to impact US patent litigation are as follows:

1. Rule 26 is amended so that it no longer permits discovery of any information that may reasonably lead to the discovery of admissible evidence. Further, discovery must be proportional to the needs of the case. This sounds like a helpful change, but it's hard to predict if this will reduce the discovery costs in patent litigation.

2. Rule 84 is deleted, including Form 18, the standard patent infringement complaint form. This may promote greater specificity in the patent infringement complaint, which is helpful.

Unless Congress objects the amendments become effective on December 1, 2015. I expect lobbyist to face an uphill battle if they challenge these two amendments given they are intended to make litigation less costly.

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, April 29, 2015

WSJ - Data Storage Startup Infinidat Raises $150 Million at $1.2 Billion Valuation

Tonight, I suggest reading the Wall Street Journal article Data Storage Startup Infinidat Raises $150 Million at $1.2 Billion Valuation. So an Israeli makes a major contribution to EMC, leaves and sells a startup to IBM in 2008, and forms yet another data storage company with 200 employees and 100 software patents? That's an argument to respect your elders!

Copyright © 2015 Robert Moll. All rights reserved.

WSJ - Senate Tees Up Bipartisan Bill Aimed at Patent Litigation

Today, I suggest reading the WSJ article Senate Tees Up Bipartisan Bill Aimed at Patent Litigation:

"Last year, the House of Representative cast a vote in support of patent reform, specifically for measures intended to clamp down on a flood of patent lawsuits. Corporate defendants, academics and others thought plaintiffs were abusing the court system, filing 'nuisance' lawsuits that were likely to trigger quick settlements. But the Senate's effort to play ball with the House died amid a flurry of finger-pointing. Earlier this year, the House reintroduced its bill — the Innovation Act — and Wednesday afternoon, the Senate offered up a companion to the House bill that seems to have bipartisan support among some influential senators. The bill was introduced by Sens. Charles Schumer (D., N.Y.); John Cornyn (R., Texas);Senate Judiciary Chairman Charles Grassley (R., Iowa) and that committee’s ranking Democrat, Patrick Leahy (D., Vt).

This bipartisan bill shifts the legal burden back onto those who would abuse the patent system in order to make a quick buck at the expense of businesses that are playing by the rules," said Sen. Schumer, in a statement. 'I'm hopeful we can move quickly and in a bipartisan way to get this bill passed in committee and on the Senate floor this summer.'"

The article gives a summary of the Innovation Act that loses me on several points. The article never talks the dramatic decrease in patent infringement lawsuits last year. Is this carelessness or related to the sources of the article? It fails to talk about the defendants overwhelming success in the America Invents Act (AIA) trials. Defendants have had a long losing streak there, and the Innovation Act seeks to remove the estoppel provisions. Why isn't this discussed? The article exaggerates support for patent reform in 2014. It didn't die because of "finger pointing" in Congress. It died because it changed decades of how we conduct patent litigation. Congress hit a snag because it tried to pass laws that would weaken patent owner rights. Each party pays its own attorney fees unless it's an exceptional case in the USA to encourages patent owners to come to court if they cannot settle a patent infringement case. However, the Bill proposes mandatory attorney fee shifting for losers in patent litigation. Mandatory fee shifting would reduce patent troll lawsuits, but would also discourage patent owners with legitimate claims. It proposes to tilt the playing field further in favor of big companies who can shift all their legal fees on small companies who make the mistake of suing for patent infringement and losing the case.

I don't know if patent reform will pass this year. What seems more certain to me is tech lobbyists will push for patent reform (even reviving what failed) and present it as in the public interest and protecting us from those patent trolls. It's getting impossible to not conclude it's really about lowering costs of doing business (e.g., paying patent licenses) of big tech in the USA.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, April 26, 2015

Congresswoman Kaptur - The Innovation Act is Bad News for America's Patent System

Today, I suggest reading Congresswoman Marcy Kaptur's article in IP Watchdog: The Innovation Act is Bad News for America’s Patent System. Ms. Kaptur states certain ways this proposed Act would weaken US patent owners rights. I agree this Act is not what is needed today.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, April 19, 2015

Professor Shawn Miller - "Fuzzy" Software Patent Boundaries and High Claim Construction Reversal

Tonight, I suggest reading "Fuzzy" Software Patent Boundaries and High Claim Construction Reversal in the Stanford Technology Law Review.

Here is the author's summary:

"Bessen and Meurer theorize that a breakdown in notice of patent boundaries caused the patent litigation surge of the 1990s. They argue that a prime source of this breakdown was the proliferation of software patents with particularly uncertain scope. In this Article I seek evidence that software patent scope is more uncertain by extending the empirical literature on claim construction reversal rates to determine whether the Federal Circuit has been more likely to find error in district court construction of software patents. Not only do I find that it has, but since 2002 software patents account for 40% of the difference between the Federal Circuit’s high claim construction reversal rate and its lower average reversal rate on all other patent issues. These results are cause for optimism because, in general, the application of existing claim construction law has been more predictable than many have feared. However, that optimism does not extend to software claim construction, which is highly unpredictable."

In my view, the article supports that one might reasonably appeal to the Federal Circuit a software patent case lost on claim construction since you have a 40% chance of reversal. However, the Federal Circuit's 40% reversal rate does not establish the software patent owner and prospective defendant disagreed regarding claim scope leading to a litigation surge in the 1990's. I think it only says why we had a lot of appeals to the Federal Circuit. Moreover, should anyone care about a litigation surge in the 1990's-- more than 15 years ago-- given the big decrease in patent litigation in recent years?

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, April 12, 2015

Professor Robin Feldman and Reseach Fellow Evan Frondorf - Patent Demands and Initial Public Offerings - A Comment

In a study Patent Demands and Initial Public Offerings, forthcoming in the Stanford Technology Law Review, Professor Robin Feldman and Research Fellow Evan Frondorf of UC Hastings law school state a "significant majority of information technology companies received patent demands near their IPO and "almost all of that activity originated from patent NPEs." Sounds like a problem, right?

In this study the authors checked with lawyers at recently public companies about exposure to patent demands as their company developed. Mr. Frondorf explains "Patent trolls thrive on extracting settlements from startup companies that don't have the time or money to litigate, even if the claims are dubious. An IPO is new leverage that can be used against a company that wants to avoid the negative effects that pending litigation might have on its offering price or public reputation. The results are consistent with monetizers issuing demands based on the economics of patent litigation, rather than on the legitimacy of the claims. It's more evidence of the need for comprehensive patent reform."

I appreciate the research of Professor Feldman, but I am not seeing that a study revealing patent demands occur before IPOs is more evidence supporting the need for comprehensive patent reform being considered by Congress.

Patent demands made before IPOs is not a new tactic, but a long standing strategy of patent owners. As a patent lawyer at Wilson Sonsini Goodrich & Rosati from 1993 - 1998, I saw a number of tech companies get hit with patent demands and even patent lawsuits before going public. That does not prove, however, whether the patent claim is legitimate or not. Patents owners simply show up when they have the most leverage to get paid. Whether the patent owner practices the invention is not relevant to whether or not a patent is valid or infringed.

I also question the suggestion that companies near an IPO have no time or money to fight illegitimate patent claims. Many tech companies have pending patent litigation or threatened lawsuits but have the resources to handle that as well as go public. How many of them withdraw from going public because the patent lawsuit drained their resources? I would venture rarely if ever. A patent lawsuit may be resolved before the IPO, but it is not required. Instead, the risk of that patent lawsuit is disclosed in the prospectus. Whether or not it settles is up to the parties. One notable example is Yahoo's online advertising patent lawsuit before Google's IPO. Google disclosed the risk in the prospectus, and settled with Yahoo, then went public, and life went on. Sure Google had to pay a chunk of stock, but a number of observers believed Yahoo had a legitimate claim. Google had the legal talent, financial resources and considerable momentum in the search engine space that enabled it to settle that patent case on its own terms.

If a company is successful to the point of going public, it usually also has smart management, a viable business, legal talent, and the financial resources to settle or fight the patent demands before, during, and after the IPO. Further, the AIA trials give a relatively low cost way to deal with dubious patent demands today. Just before a company goes public is not when it's vulnerable to illegitimate patent demands. Higher vulnerability occurs at a much earlier stage, but as the study notes "almost no companies received demands near another important funding moment-- obtaining the first round of venture capital funding." Another vulnerable time for a startup to receive a patent demand is when seeking a first round of funding, since investors do not want to invest in that situation, but of course you have exceptions.

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, April 8, 2015

EFF - Bringing Transparency to Patent Law

Tonight, I suggest reading Electronic Frontier Foundation's (EFF's) article Bringing Transparency to Patent Law.

I worked with Michael Barclay while at WSGR 1993-1998, and he is a great guy. Here's part of the article:

"Previously, the Federal Circuit issued many of its orders for free on its website. They were not necessarily easy to search, but it was at least possible to search by party name or download all orders they issued. But at the end of 2014, the Federal Circuit announced a new policy. Instead of publishing most orders, the Federal Circuit would only publish “selected” orders. (To be clear, PACER is still available, but it is notoriously difficult to navigate and charges both to search and download information. We’re not fans of PACER.)

Unfortunately, “selected” orders seems to mean “few if any” orders. Since the new policy went into effect, only 6 orders have been made freely available (compare that to the quarter from July 1, 2014 to September 30, 2014, where the Federal Circuit published over 180 orders).

We’re concerned that the new Federal Circuit practice is limiting the availability of the public to understand how our courts work. The Federal Circuit hears all appeals in patent cases so its recent practice is especially disappointing since it comes at a time when interest in patent law, and possible reform, is very high."

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, April 7, 2015

Federal Circuit - Carnegie Mellon University v. Marvell Technology Group - $1.5 Billion Damage Award

Today, the Federal Circuit heard oral arguments on whether it should uphold $1.54 billion damage award in favor of Carnegie Mellon University (CMU) based on Marvell Technology Group's  infringement of US Patent No. 6,201,839 and 6,438,180 relating to improved accuracy of reading data from hard disk drives.

Some commentary thinks this case will have impact on the extraterritorial scope of US patents.

Here are links to more information on this case:

CMU v. Marvell Technology Group - district court opinion (2012)

Patent Lawsuit - Carnegie Mellon v. Marvell Technology Group

Marvell Technology Group Ltd. Frequently Asked Questions Concerning the Status of the CMU Litigation

TribLive.com Article - CMU patent technology lawsuit may set precedent as it moves to federal appeals court

Copyright © 2015 Robert Moll. All rights reserved.

Friday, April 3, 2015

US Supreme Court - Oral Arguments Transcript - Kimble v. Marvel Enterprises, Inc.

The US Supreme Court heard oral arguments in Kimble v. Marvel Enterprises, Inc.

The issue in Kimble: Whether this Court should overrule Brulotte v. Thys Co., which held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."

Here's a PDF copy of the transcript of the oral arguments.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Program for Ex Parte Appeals

The Patent Trial and Appeal Board (PTAB) is hosting a free program on ex parte appeal from 9 - 10 am Pacific Time, Tuesday, April 6. Judges Bradley Garris, Linda Horner, and John Jeffery will discuss the ex parte appeal process, statistics, and tips for winning appeals.

For more information about the Boardside Chats and to access all slide materials:

Webinar Access Information:

Event address: uspto-events.webex.com/uspto-events/onstage/g.php?MTID=ee4b8faff5a188332aaa6a752f4b6c292

Event number: 994 593 512

Event password: 123456

Audio conference: Call-in toll number is 1-650-479-3208, access code is 994 593 512

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, April 2, 2015

US Supreme Court - Oral Argument Transcript Commil USA v. Cisco Systems

The US Supreme Court heard oral arguments in Commil USA, LLC v. Cisco Systems.

The issue in Commil USA: Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).

Here's a PDF copy of the transcript of the oral arguments.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, March 30, 2015

Fierstein - A Triumph of Genius: Edwin Land, Polaroid, and the Kodak Patent War

I suggest reading Ronald Fierstein's book A Triumph of Genius: Edwin Land, Polaroid, and the Kodak Patent War. It's a lengthy 672 pages, with many details about patent litigation. I guess it's to be expected as Mr. Fierstein was a lawyer at Fish & Neave during the case resulting in Polaroid's $925 million award for patent infringement.

From the editor: "Apple founder Steve Jobs once hailed Edwin Land, the founder of Polaroid and the father of instant photography, as 'a national treasure' and once confessed to a reporter that meeting Land was 'like visiting a shrine.' By his own admission, Jobs modeled much of his own career after Land's. Both Jobs and Land stand out today as unique and towering figures in the history of technology. Neither had a college degree, but both built highly successful and innovative organizations."

Copyright © 2015 Robert Moll. All rights reserved.

CAFC - USPTO Revival Actions are Not Subject to Third Party Challenge

In Excela Pharma Sciences, LLC v. Lee (2015), the Federal Circuit held a third party does not have "the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and Trademark Office reviving a patent application that had become abandoned by failure to meet a filing schedule established by the Patent Cooperation Treaty."

The Federal Circuit stated the Patent Act's "intricate scheme for administrative and judicial review of PTO patentability determinations" demonstrates Congress did not intend such challenges. See Pregis Corp. v. Kappos, (Fed. Cir. 2012).

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, March 28, 2015

PTAB - Changes to Rules for AIA Trials

In PTAB's Quick-Fixes for AIA Rules Are to Be Implemented Immediately, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee discusses rule changes governing America Invents Act (AIA) trials before Patent and Trial and Appeal Board (PTAB):

"As to our first 'quick fix' rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing).

Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.

As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.

Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent."

Copyright © 2015 Robert Moll. All rights reserved.

Friday, March 27, 2015

US Supreme Court - Oral Arguments in Kimble v. Marvel and Commil USA v. Cisco Systems on March 31

On March 31, the US Supreme Court hears oral arguments in the patent cases: Kimble v. Marvel Enterprises and Commil USA, LLC v. Cisco Systems.

The issue in Commil USA: Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).

The issue in Kimble: Whether this Court should overrule Brulotte v. Thys Co., which held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."

The SCOTUS blog will be live blogging the oral arguments at 9:45 am ET.

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, March 26, 2015

Tech Dirt - Patent Not Sufficiently Broad Or Generic? Cloem Will Help You By Automatically Generating Dozens Of Nearly Identical Patents

Tech Dirt's article Patent Not Sufficiently Broad Or Generic? Cloem Will Help You By Automatically Generating Dozens Of Nearly Identical Patents  has "news about two startups that could upend intellectual property laws: Qentis (copyright) and Cloem (patents)."

Tech Dirt claims "Cloem's business model seems a bit more grounded in reality" and notes VentureBeat describes Cloem as providing "software that ... appears to linguistically manipulate a seed set of a client’s patent claims by, for example, substituting in synonyms or reordering steps in a process, thereby generating tens of thousands of potentially patentable inventions."

"Cloem is a mixture of patent experts and computer linguistic specialists. The key element of its potentially-patentable variations lies within 'seed lists,' which draw from a variety of sources, including (according to Cloem) 70,000,000 patent documents. Its algorithms then brute force together lists of 'new' patent claims, which can then be filed and used offensively or defensively."

Tech Dirt concludes "Cloem's business model seems custom-built for patent trolls who will be able to "expand" their already-broad patents to nail down even more IP turf. Cloem's service also makes it easy for non-inventors to jam up patent offices with me-too "inventions" based on minor iterations of existing patents."

In my opinion, the business model has significant issues:

Inventorship - The software generated claims make murky who invented. Can we safely conclude the inventor of the seed claim invented the computer generated set of claims? I am doubting the authors of the software intend to be named as inventors, read any part of the application, or interact with the inventors of the seed claim. So how could this business model scale?

Reordering steps of a method - In general, the order the steps are recited in a method claim does not dictate a certain order. Yet the assumption is reordering the steps gets you different protection.

Lack of accounting for prior art - You must be aware of the prior art to draft a claim that maximizes the protection.

No value in filing dozen of nearly identical patents - Filing dozens of nearly identical patents will only trigger double patenting rejections and if not caught in examination will serve as a valid defense in court.

No perceived users - Cloem is not a startup, but the article doesn't identity a single patent troll that uses the software much less file dozens of nearly identical patents with thousands of claims using this software.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, March 24, 2015

Mullin - Life360 CEO tells others how to beat patent trolls in three not-so-easy steps

In Life360 CEO tells others how to beat patent trolls in three not-so-easy steps, Mr. Joe Mullin passes along the CEO's advice on how to beat patent trolls: "go nuclear" which means publicize the law firms and trolls involved, share the prior art with others in your industry, and "go with your gut" knowing you fight for what is right.

Whatever you think about this advice, my question is why doesn't the article talk about the option of filing a petition to invalidate the patents in the USPTO? Maybe this occurred, but the article never mentions it. It talks about sharing prior art, but the case was won on non-infringement. Either way about 2/3 of patents litigated in court have a concurrent USPTO proceeding (e.g., inter partes review). Thus, whatever happened here, many defendants are turning to this approach to invalidate patents and significantly reduce costs when the court stays the litigation.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, March 23, 2015

USPTO - Patent Quality Summit March 25 - 26

The USPTO has announced a Patent Quality Summit at the USPTO headquarters in Alexandria, VA on March 25 - 26, 2015. Each segment will be also accessible on WebEx. The intent is to provide an opportunity for the public to discuss proposals to ensure efficient prosecution and issuance of the highest quality of patents.

Copyright © 2015 Robert Moll. All rights reserved.