Tuesday, February 24, 2015

USPTO - Deputy Director Michelle Lee - Initiatives in 2015

Deputy Director Michelle Lee recently visited the Brookings Institution to talk about the USPTO's plans for 2015. For details see the USPTO video and Patent Quality Initiative.

Deputy Director Lee stated: "I've seen firsthand from the business side the importance that patents play, the exclusionary right they give, the protections they give innovators, businesspeople, and startups at the very early stages. If you're entering a market that is highly competitive, you need to have the assurance that you will have protection as you go up against some very steep and oftentimes well-funded competition. So for the USPTO to issue those patents promptly and accurately is critically important so that people invest in these developments."

This is absolutely right! Startups need great patents to penetrate markets. I would add that proposals to reform US patent law to defeat "patent trolls" should be viewed with the skepticism reserved for any other self-serving corporate lobbying. Why do large companies want to weaken US patents? To reduce patent license costs. You just say no to many efforts to license a patent, then knock down the audacious few who seek to enforce patent rights in court with favorable laws passed by Congress.

Copyright © 2015 Robert Moll. All rights reserved.

National Law Review - IEEE Clarifies RAND Commitment for Standard-Essential Patents: Institute of Electrical and Electronics Engineers

Tonight, I suggest reading the National Law Review article IEEE Clarifies RAND Commitment for Standard-Essential Patents: Institute of Electrical and Electronics Engineers, which describes the IEEE's policy change for patents relating to IEEE standards that was approved on February 8, 2015.

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, February 18, 2015

Professor Robin Feldman - Kimble v. Marvel Enterprises - Royalty Payments Beyond the Patent Term?

Professor Robin Feldman filed a Supreme Court amicus brief in Kimble v. Marvel Enterprises which is before the U.S. Supreme Court. This case reviews whether a patent owner's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se. 

Some of the highlights from that brief co-authored with professor Alice Armitage:

"The case concerns contracts in which the patent holder insists on receiving royalty payments after the patent expires. The doctrine of patent misuse, however, frowns on attempts to expand the time or scope of the patent.

Over the last few decades, some lower courts have tried to eliminate the doctrine of patent misuse by holding that patent misuse exists only if the behavior rises to the level of an antitrust violation

Petitioners in this case ask the Supreme Court to apply the antitrust rule of reason to patent misuse cases. The antitrust rule of reason, which is complex and burdensome, is commonly perceived to be the death knell for any antitrust case and would certainly be the death knell for patent misuse cases

In the brief, Professor Feldman argues that patent law is not antitrust law, and antitrust tests are not appropriate for patent law questions.

Antitrust law is primarily concerned with parties that have market power, but the patent rules apply to all patent holders, regardless of whether they have market power; One cannot ask the patent office to extend the patent for a few years because 20 years is not long enough to determine its true value. That is a decision for Congress to make.

Nothing changes if the 20-year term is ill-suited for a particular industry, such as the life sciences. (A number of life science groups have filed amicus briefs as ell.) Any arguments to this effect are appropriately directed to Congress.

It is certainly true that when the patent term ends, the patent holder will no longer be able to exclude all others from the use of its invention. With the patent system, however, every potential innovator matters. A contract provision that limits the capacity and incentive for even one potential innovator to make scientific leaps after the expiration of the patent disrupts the balances created by Congress in the Patent Act.

Professor Feldman urges the Court to clarify that antitrust principles are not appropriate for a patent law, and to allow the courts to develop flexible approaches, based on patent principles, to this types of licensing issues."

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, February 17, 2015

USPTO - Emod Idea Scale - Comments on Electronic Business Center (EBC)

Nearly everything at the USPTO is online today so our experience good or bad depends on the website interface. Apparently, the USPTO is aware of this and has recently upgraded the website, which so far is in my experience better. If you see things that could be better, I suggest visiting the USPTO e-commerce modernization project which has comments on what users find difficult, unexplainable, and think might improve the electronic business center (EBC).

I think this e-commerce modernization page is buried from the public view given the scale of the USPTO's web site. If the USPTO wants more user input, it should extend the ability to enter comments (yes it will need spam filtering) on the pages where the users go. Perhaps some tracking can be used to see where people are puzzled or having to work around issues so the USPTO can improve something many use regularly.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, February 15, 2015

USPTO - Hague Agreement - Single Design Patent Application Registers up to 100 Designs in Over 62 Territories

The USPTO announced US applicants will be able to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple countries on or about May 13, 2015.

Under the Hague system for the protection of industrial designs, US applicants will be able to register up to 100 designs in over 62 territories. Hopefully, this will greatly lower the cost of seeking foreign patent protection on designs.

Here is details from the USPTO announcement:

"U.S. innovators will soon have more options for pursuing multijurisdictional protection for new industrial designs

WASHINGTON – The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced that the United States has deposited its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO) in Geneva, Switzerland (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs). This marks the last step in the membership process for the United States to become a Member of the Hague Union. The treaty will go into effect for the United States on May 13, 2015.

Currently, U.S. applicants wishing to pursue protection for industrial designs in multiple jurisdictions must file individual applications in each of the respective jurisdictions where industrial design rights are desired. When the Hague Agreement enters into force for the United States, it will be possible for U.S. applicants to file a single international design application either with WIPO in Geneva, Switzerland, or the USPTO to obtain protection in multiple economies. The Hague system for the protection of industrial designs provides a practical solution for registering up to 100 designs in over 62 territories with the filing of one single international application.

“U.S. accession to the Geneva Act of the Hague Agreement will provide applicants with the opportunity for improved efficiencies and cost savings in protecting their innovative designs in the global economy,” said Deputy Under Secretary for Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “We are extremely excited about joining the Hague Union and contributing to the continued expansion and development of the Hague system which facilitates protection of industrial designs in design registration and examination systems alike.”

The Hague system offers applicants increased filing efficiencies and potential cost savings in pursuing protection for their innovative industrial designs. As envisioned under the Geneva Act, the United States will continue to substantively examine design applications and to grant design rights in the form of U.S. design patents, whether the application is filed pursuant to the Hague Agreement or as a United States design patent application.
USPTO will soon publish the Final Rules governing USPTO processing and examination of international design applications filed pursuant to the Hague Agreement in the Federal Register. The Agreement, Title I of the Patent Law Treaties Implement Act of 2012 (the implementing legislation for the Hague Agreement in the United States), and the USPTO’s Final Rules are all expected to go into effect on May 13, 2015. U.S. design patents resulting from applications filed on or after May 13, 2015 will have a 15 year term.

The Hague system (www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs) is expected to experience significant growth over the next few years with recent and expected additions of several countries to the member list. In addition to United States membership taking effect on May 13, 2015, South Korea became a member effective July 1, 2014, and Japan is expected to become a member in the same time period as the United States. Canada, China, and Russia are also among the countries exploring membership in the near future.

For non-press inquiries please contact David Gerk, Patent Attorney, Office of Policy and International Affairs (OPIA) at 571-272-9300."

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, February 12, 2015

USPTO - New Website - How to Guide

The USPTO has published some guidance on using its new website:

"You’ve probably seen the new user-friendly www.uspto.gov by now, and we want to make sure you know about the easy navigation tools it offers. If you would like to take a quick look at the new shortcuts, please visit About the USPTO Website where you will find a video tour of these features.

                                                          .  .  .

The new navigation makes it easier to access information about our services and learn how to accomplish tasks; for example, the Quick Links menu will connect you to the most heavily used tools for searching, filing, paying, or checking on the status of an application. We’ve also grouped together materials for specific audiences such as inventors, patent agents, and educators. In addition, the new site is responsive across more devices, such as tablets and mobile phones. This redesign is the first phase of our work to upgrade users’ USPTO online experience. Future phases will improve our 'transactional sites'—the online tools and systems where you conduct business with the USPTO, such as filing for your trademark registration or paying the fees for your patent."
 
Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, February 11, 2015

Federal Circuit - In re Cuozzo Speed Technologies, LLC - Affirms PTAB Decision on Institution of IPR and Broadest Reasonable Interpretation of Claims

In In re Cuozzo Speed Technologies, LLC, the Federal Circuit upheld the Patent Trial and Appeal Board (PTAB) decision on two issues:

1.  A decision to institute an inter partes review (IPR) is non-appealable, since 35 USC § 314 precludes all review stating a determination to institute an inter partes review shall be final and non-appealable. The Federal Circuit did leave the door open to challenge a decision if a mandamus shows PTAB "clearly and indisputably exceeded its authority" in granting a petition to institute IPR.

2.  Patent claims must be construed under the broadest reasonable interpretation, because Congress granted the USPTO authority to set the standard for claim construction in an IPR, the USPTO has long construed claims under BRI in PTO proceedings (e.g., reexamination, prosecution, and reissue), and a patent owner can amend patent claims at least according to the rules even if not in practice.

Judge Newman dissented from the majority stating claims in IPR should be interpreted narrowly as in court and 35 USC § 314(d) does not bar an appeal on institution of IPR, since it is intended to protect patent owners from harassing filings.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, February 10, 2015

Gizmodo - A Bizarre Statistical Fact About Patents and Theft in SF

Today, I suggest reading the Gizmodo article: A Bizarre Statistical Fact About Patents and Theft in San Francisco. Among other things, the article argues that the huge increase in patent filings in SF is somehow related to crime in SF. The companion book for this article? How to Lie with Statistics.

Copyright © 2015 Robert Moll. All rights reserved.

Friday, February 6, 2015

WSJ - Patent Reform Bill Arises Again in Congress

Tonight, I suggest reading the Wall Street Journal article Patent Reform Bill Arises Again in Congress, discussing Congress' latest effort to change US patent law to address patent litigation abuse.

If you want details, here's Innovation Act 2015, which I will refer to as the Bill. If you want a brief account of Congress' latest patent reform, here's the key changes with brief comments:

1. Attorney Fee Awards - Current law permits the recovery of attorney fees to the prevailing party in an exceptional case, while the new law would require an award attorney fees to the prevailing party unless a judge finds that (1) the legal position and litigation conduct of the non-prevailing party was reasonably justified in law and fact; or (2) special circumstances (e.g., severe hardship to inventor) make attorney fee awards unjust. If the patent owner cannot pay the attorney fees, the court can make "the interested parties" (e.g., investors) pay the attorney fees.

My comment - This is a major change from the American rule where each party pays its own attorney fees. It will reduce patent litigation by smaller companies as they will now have to bear the risk of paying all of the attorneys if they lose and a court decides the legal position was unjustified and cannot establish special circumstances. No doubt many defendants may want this, but the Supreme Court's Highmark and Octane decisions adequately protect the "poor defendants" who hope to reduce patent litigation to just a "sport of kings."

2. Complaints Need Claim Charts - When a patent owners sues for patent infringement, the complaint will need to include a claim chart showing how the claim(s) read on the accused product or process except if it cannot be reasonably known before filing the complaint. Form 18 governing the content of complaints is eliminated, but not if you are pharmaceutical company.

My comment - this higher pleading standard will eliminate some patent infringement suits, because preparing a claim chart makes one stare at the infringement case. If you can't do a claim chart, maybe the case should not be filed. Placing the initial cost of a claim chart on the patent owner is better than asking a court to take on a poorly researched case that wastes court resources and defendant's money. Not sure eliminating Form 18 is useful. The Judicial Conference already says it plans to eliminate Form 18 in 2015 and why give pharmaceuticals "a free pass" on Form 18?

3. PTAB Claim Construction - The Bill proposes to replace the Patent Trial and Appeal Board (PTAB)'s broadest reasonable interpretation (BRI) for claims in inter partes review, post-grant review, and covered business methods with the court's narrower interpretation of claims.

My comment - This will help patents survive invalidity challenges in the USPTO, and better corresponds to the reality that patent owners rarely succeed on motions to amend claims.

4. Limit Discovery - This has a couple of parts: (1) claim construction must happen before much discovery occurs; and (2) only large companies or posting a bond will get discovery of non-core documents.

My comment - Claim construction before significant discovery sounds right, but saying a large company gets discovery without posting a bond only increases their advantages over a smaller company, and may raise disputes on whether certain requested discovery is "core" or "non-core."

5. Willful Infringement  - The Bill would require demand letters identify the patent, the patent owner, accused product, and importantly how the product infringes at least one claim of the patent.

My comment - This imposes another claim chart into the process of patent enforcement, which of course helps defendants avoid treble damages by merely showing a claim chart did not accompany the demand letter.

6. Transparency of Ownership - This penalizes a patent owner who fails to update the USPTO within 90 days on changes of ownership with no enhanced damages, or attorney fees and an award of attorney fees to the defendant who spent money researching the ownership information.

My comment - Patent ownership should be transparent during enforcement, but the consequences of missing the 90 day window sounds draconian. Paying the attorney fees to find out the actual ownership should suffice.

7. Stay of Customer Suits - Courts may stay (suspend) a patent infringement suit of a customer lawsuits when the manufacturer of the product challenges the patent.

 My comment - Why would anyone sue a customer?

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, February 5, 2015

USPTO - Patent Quality Initiative - Request for Comments and Notice of Meeting

Today, the United States Patent and Trademark Office (USPTO) published that it's seeking public input and guidance to direct efforts to improving patent quality.

The USPTO states it plans to "focus on improving patent operations and procedures to provide the best possible work products, to enhance the customer experience, and to improve existing quality metrics. In pursuit of these goals, the USPTO is launching a comprehensive and enhanced quality initiative. This initiative begins with a request for public comments on the set of proposals outlined in this document and will continue with a two-day “Quality Summit” with the public to discuss the outlined proposals. The conversation with the public held at this Quality Summit, complemented by written comments to these proposals, is the first of many steps toward developing a new paradigm of patent quality at the USPTO. Through an active and long-term partnership with the public, the USPTO seeks to ensure the issuance of the best quality patents and provide the best customer service possible."

In a blog post, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee stated "improving patent quality lies at the core of the U.S. Patent and Trademark Office’s mission, I’m pleased to announce the launch of a comprehensive new program, our Enhanced Patent Quality Initiative.

                                                         .      .       .             

As you may know, we’ve already been hard at work at the USPTO on numerous initiatives focused on improving patent quality. We’ve offered robust technical and legal training for patent examiners while rolling out new programs such as the Glossary Pilot, Quick Path IDS Program, First Action Interview Pilot, and After Final Consideration Pilot. We’ve worked to improve operational capabilities and information technology tools while expanding international work sharing efforts.

Our Enhanced Patent Quality Initiative allows us to further improve patent quality through direct and ongoing engagement. What do I mean by engagement? I mean robust discussions with the broader public, from a longtime patent owner to a Main Street retailer who has only recently begun to focus on these issues; from patent prosecutors to patent litigators and from patent applicants to patent licensees. We’re also having productive conversations within the agency—from examiners and IT staff to policy experts. By engaging all of these stakeholders, we are working to ensure the USPTO issues the best quality patents possible.

If you want to be a part of that process, we’d love to have you at our first-ever Quality Summit, an intense, two-day deep dive into patent quality that will include discussions among USPTO leadership, experts from the agency, industry and academia, and you. The Summit will be on March 25th and 26th at USPTO headquarters in Alexandria, Virginia. We’ll be looking at possible new initiatives the USPTO could undertake, all of which fall under our three identified Enhanced Patent Quality pillars:  (1) excellence in our work products; (2) excellence in measuring patent quality; and (3) excellence in our customer service.

You’ll find our agenda for the Quality Summit in our Federal Register notice. But even if you can’t attend our Quality Summit in person, you can participate via webinar and the Summit will be recorded for later viewing.  Also, the Federal Register notice lets you know how you can directly provide us your written comments, including reaction to the overall effort, thoughts on the initiatives under discussion at the Quality Summit, and any other suggestions for agency initiatives or undertakings. The formal comment period will remain open until May 6, but please understand that this in an ongoing dialogue. There will be many more opportunities for us to hear from you."

One person at the USPTO who will be particularly eager to read your comments and hear your thoughts at our Quality Summit is Valencia Martin-Wallace, the USPTO’s first Deputy Commissioner for Patent Quality. This newly created leadership position ensures a dedicated focus on the agency’s patent quality efforts. Deputy Commissioner Martin-Wallace brings a wealth of experience to this position. She’s worked at the USPTO for twenty-two years, serving as an examiner, Technical Center Director, and Assistant Deputy Commissioner for Patent Operations."

Copyright © 2015 Robert Moll. All rights reserved.

Monday, February 2, 2015

PTAB - Statistics & Key Decisions - Noon - 1 pm ET

The USPTO is hosting a webcast  to discuss PTAB statistics and key decisions from noon to 1 pm Eastern Time on February 3, 2015.

Here's PTAB's instructions for the free webcast:

Event address for attendees:
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 (US/Canada)

1-650-479-3208

Access code: 994 593 512


Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, January 28, 2015

USPTO - Patent Eligibility - Example of Claims Relating to Abstract Ideas

The USPTO has published examples of claims that it thinks would be eligible (or ineligible) for patent protection under 35 USC 101. The examples should be considered in view of 2014 Interim Guidance on Patent Subject Matter Eligibility and the U.S. Supreme Court’s decision relating to abstract ideas in Alice v. CLS Bank.

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, January 22, 2015

National Journal - Obama Nominee Stays Mum on Fighting Patent Trolls

Tonight, I suggest reading the National Journal article Obama Nominee Stays Mum on Fighting Patent Trolls.

I thought Congress had finished this ... and when a nominee is apparently qualified why is the confirmation process so slow? Is anybody else mystified why Congress is grilling Ms. Lee on her views on fee shifting and other proposals for combating patents trolls? Perhaps she brought it up in talking about the White House Initiatives, but isn't Congress supposed to address patent reform and aren't the federal courts and PTAB adequate to deal with patent trolls? We need to reduce the longstanding examination backlog. Hiring more examiners has not produced that much. I also expect the "easy answer" of limiting the filing of requests for continued examination (RCEs) will only add to the huge appeal backlog.

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, January 21, 2015

US Supreme Court - Teva Pharmaceuticals USA v. Sandoz - Claim Construction

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., the Supreme Court held the Federal Circuit cannot reverse a district court's fact findings underpinning claim construction unless they are clearly wrong.

As background, patent claims define a patent owner's right to exclude others. When parties dispute whether a claim is valid or infringed, a judge will interpret the words and phrases of the claim (i.e., claim construction) in a Markman hearing. Claim construction is a big event, because many patent cases settle after the Markman hearing.

In Markman v. Westview Instruments, the Supreme Court held that a "judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury." But claim construction is not purely a legal question. Claim construction has facts underpinning the meaning of the claim that are determined by jury such as determining the credibility of experts testifying at trial, on e.g., what's molecular weight? Markman walked around this problem stating such facts are "subsumed within the necessarily sophisticated analysis of the whole document." Afterward the Federal Circuit understood claim construction should be reviewed as a question of law without deference to the trial court's fact findings. But this led to uncertainty on the meaning of the patent claim until the Federal Circuit gave its opinion, which too often reversed the trial court.

It is an important decision, but I am not entirely sure it's not mostly for lawyers, since it may just produce: (1) greater certainty that a trial court's claim interpretation will "stick," (2) less work for those lawyers in Federal Circuit practice, and (3) a greater role for expert witnesses. Although academics and lawyers are talking up a storm about this case right now, Teva should not be surprising since it is consistent with the Supreme Court's string of decisions that again try to rein in the considerable clout of the Federal Circuit, which has developed a substantial body of patent law.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, January 18, 2015

Zackees - Turn Signal Gloves Making Bikers Safer

Zach Vorhies, CEO of Zackees, agreed I should post something about the Zackees turn signal gloves. Initially, I wanted my readers to know about a great product. But I soon realized much more is at stake. Let me explain it this way many of us know someone who was seriously injured in a biking accident that involved a car. Sometimes it's a careless driver or biker, but other times the driver may simply misread where the biker is headed and things happen fast. I see people riding bikes at all hours in the SF Bay Area and believing others share this problem want to share how to make biking safer.

Zackees turn signal gloves make biking safer, because drivers won't need to guess where the biker is headed. The gloves have super bright LEDs that form a clear turn signal drivers can readily see. Further, the gloves use a microprocessor controlled ambient light sensor to adjust to the LEDs to the outdoor lighting conditions while conserving a rechargeable battery. The on-off switch never requires the biker compromise his steering as the hands remain on the handlebars while turning the turn signal on and off. The gloves fit and work well according to my high schoolers and can be had for less than the price of dinner for two in SF where they are based. The founders Zach Vorhies, formerly a software engineer at Google, and Murat Ozkan, an electrical engineer from Toronto Canada are terrific engineers and have built a product that will help the world.

By the way Zackees made 200% of its funding goals on Kickstarter, has received rave reviews around the world, and has been featured in Huffington Post, Women's Health magazine, and the Wall Street Journal.

If you are interested in "being seen," see www.zackees.com and https://www.youtube.com/watch?v=iUZ89t1FctY.

Further interested? Zackees turn signal gloves on Amazon.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, January 13, 2015

Professor Risch - Challenges Conventional Wisdom That Citing More Prior Art Makes for a Better Patent

In Citing References at the PTO (2012), Professor Dennis Crouch tells "as part of the application process, patent applicants have a duty to identify prior art references that are material to patentability."

Citing prior art references is not legally required in the USPTO, but nearly all applicants submit prior art references, and not submitting prior art references is a risky way to save money. As Professor Crouch notes only 13% of applicants submit no prior references January - October 2012. Thus, just ~ 1 out 10 were willing to travel this "brave" road and I doubt things have changed. And it appears to be a brave road indeed as these "no disclosure" patents may end up in litigation. It's true wonder if any survive.

Professor Crouch notes the average of 36 references is skewed by the fact about 10% of patents together cited millions of prior art references. The median is eight prior art references. Of course, those with great resources can implement the conventional wisdom that a patent will less vulnerable to an invalidity attack by submitting more prior art references.

Despite all of this, we now have an article with findings that challenge the conventional wisdom of "gold-plating" patents by submitting lots of prior art. Professor Michael Risch's A Generation of Patent Litigation: Outcomes and Patent Quality(2015) is an interesting study, and in particular challenges the convention wisdom that citing more references at the PTO will result in a better US patent. See finding 3 in the Abstract below.

Here is Professor Risch's abstract:

"This study compares twenty-five years of litigation and patents of the ten most litigious NPEs (as of 2009) with a random group of cases and patents in the same yearly proportions. All cases involving every patent was gathered, allowing the life cycle of each asserted patent to be studied. The data includes litigation data, patent data, reexaminations, and other relevant data. This paper considers outcomes and patent quality. A future paper will examine innovation and markets.

Unsurprisingly, the data shows that the studied NPE patents were found invalid and noninfringed about twice as often as the comparable nonNPEs. But there is more to the story. First, summary judgment challenges were denied at about the same rate. Second, most cases never tested the patent at all: the invalidations were bunched into 3% of the cases. Third, about 17% of the NPE cases involved a patent that was later invalidated, as compared to 3% for the nonNPEs. This left 75% of NPE cases with patents that were never tested and did not involve a patent invalidated at any time (as compared to 90% of nonNPE cases). Thus, one’s view of the data will depend on views about motivations in asserting patents that wind up invalid later and the merits of settlements. The paper presents data about settlements, consent judgments, defaults, and the like, but ultimately takes no position on the quality of untested patents.

Other major findings include:

1. NPE cases are shorter duration than nonNPE cases, even though they are transferred and consolidated more often. Even with transferred cases, NPE cases are shorter.

2. A patent’s likelihood of being invalidated has almost nothing to do with objectively observable patent metrics – including reexamination data. Instead, the odds of invalidation are driven by those cases that are more likely to have a challenge, like the number of defendants or number of patents in the case. Once variables that indicate challenges are considered, a party's status as NPE added no explanatory power.

3. One patent metric was statistically significant in predicting invalidation: backward citations, or the number of prior patents that a patent refers to. But the sign was surprising: the more citations in the patent, the more likely it was found invalid. This may mean that backward citations are another selection variable – patents citing many other patents may be more likely to be highly controversial and thus challenged. This finding implies, however, that “gold plating” patents may not be as beneficial as first thought."

Thus, Professor Risch's findings suggest that the recent practice of citing massive amounts of  prior art during the prosecution of a patent application to make it less vulnerable to an invalidity challenge may have an opposite effect, that is, too much "gold plating" can sink a patent!

Copyright © 2015 Robert Moll. All rights reserved.

Friday, January 9, 2015

USPTO - 2014 Interim Guidance on Subject Matter Eligibility

Tonight, I suggest following the changes on the USPTO's 2014 Interim Guidance on Subject Matter for the USPTO's evolving position on patent eligibility requirements of 35 USC 101.

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, January 8, 2015

CAFC - SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC - Reviewing Laches and Equitable Estoppel

The Federal Circuit agreed to review en banc SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC to determine whether the Supreme Court's copyright laches decision in Petrella v. Metro-Goldwyn-Mayer affects the Federal Circuit's law for patent laches and equitable estoppel set forth A.C. Aukerman Co. v. R.L. Chaides Constr. Co.

In Petrella, the Supreme Court examined whether the defense of laches (unreasonable, prejudicial delay in commencing suit) may bar relief on a copyright infringement claim brought within 17 USC §507(b)'s three-year limit.  The Court held that laches cannot be invoked to preclude adjudication of a claim for damages brought within the three-years, but copyright owner's delay in bringing the suit may be relevant to  injunctive relief and in assessing profits of the infringer.

In contrast, the defense of patent laches says if (1) the patent owner unreasonably delays filing its patent infringement suit; and (2) the alleged infringer (defendant) was materially prejudiced by the delay, the patent owner may not recover damages prior to filing the suit, but may get an injunction. It is an equitable defense, and once the patent owner is aware or should have known of infringement, the clock is running. If, for example, the defendant can prove the delay is greater than six years, the patent owner has the burden to show the delay was not unreasonable.

The defense of equitable estoppel says if (1) the patent owner misleads defendant it will not enforce the patent; (2) the defendant relies on it; and (3) the defendant will be materially prejudiced by allowing the patent owner to enforce the patent, the patent owner may not recover any damages.

This case is important, because it may enhance (or detract from) defenses that can reduce or eliminate patent damages.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, January 6, 2015

USA Today - Tech firm Monster sues Beats and founders Dre and Iovine

Tonight, I suggest reading the USA Today article Tech firm Monster sues Beats and founders Dre and Iovine.

"The suit claims that Iovine and Dre (Andre Young) committed fraud in pirating the headphones away from Lee and Monster.

The suit, filed in San Mateo (Calif.) County Superior Court, charges that the Beats co-founders concealed the role of Monster and Lee in designing and engineering the headphone line, as well as educating them about engineering, manufacturing, distributing and selling the headphones that Monster and Lee invented."

The article doesn't give a link to the complaint or mention a patent infringement claim. Could it be that Monster was so busy inventing this new category of $300+ headphones that it had no time to seek patent protection?

Copyright © 2015 Robert Moll. All rights reserved.

Monday, January 5, 2015

RPX - The Prevalence of Software Patent Assertion

The defensive patent aggregator RPX published a white paper The Prevalence of Software Patent Assertion. It analyzes what type of software claims were asserted (e.g., computer implemented inventions v. covered business method) and by whom (e.g., non-practicing entities (NPEs) v. operating companies) before the Supreme Court decided patent eligibility of software related inventions in Alice v. CLS Bank.

Although the paper appears to aim at which software patents pose the greater threat to businesses, it should have another utility to patent prosecutors. On pages 5-9, RPX presents reasons why a set of representative software claims constitute "a computer implemented invention" or "a covered business method." Initial assignments to art units can play a big role on what happens next. For example, the art units examining business methods are rejecting them under 35 USC 101 at much higher rates. The Supreme Court voted 6-3 business methods are not categorically excluded, but the reality is different art units have different interpretations of 35 USC 101. One can attempt to draft the claim so as to not fall within business methods, but sometimes the subject matter doesn't give much latitude. Thus, during prosecution what type of claim may be more important than the details of the claim.

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, January 4, 2015

Reuters - China aiming to triple patents by 2020

Tonight, I suggest reading China aiming to triple patents by 2020.

Reuters tells us "China is targeting 14 invention patents per 10,000 habitants by 2020 compared to four in 2013." Note China published 629,612 patents in 2013, which is 200,00 more than the USA.

China Central People's government says it wants to be a bigger player in tech so aims to triple the number of patents it files by 2020 as Beijing looks to boost the country's high-tech economy in areas, reduce the length of the review process, and boost IP protection to address foreign firms contentions that IP law in China sometimes favors local players.

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, January 3, 2015

Thursday, January 1, 2015

Zachary Crockett - The Man Who Invented Scotch Tape

Happy New Year! Here's an article by Zachary Crockett The Man Who Invented Scotch Tape.

Zachary is a gifted storyteller, and his article about 3M's Richard Drew convinced me to buy his coauthored book Hipster Business Models: How to make a living in a modern world.

Here's the tail end of the article:

"In 1980, at age 81, Richard Drew passed away. He’d spent more than 40 years at 3M as an inventor, two decades more as a contractor, and had 30 patents to his name.
 
Today, the technologies he created in Pro-Fab Labs account for more than 20 percent of 3M’s sales. His Scotch Transparent Tape remains the crown jewel of 3M’s immense, multi-billion dollar product line, and can be found in nearly 90% of American homes.

But Drew’s legacy extends deeper than the manifestation of a physical product, says old co-worker Paul E. Hansen.The reward for persistence is internal,” he writes. "The person who is persistent and eventually succeeds is usually only recognized for accomplishing the feat; seldom does anyone appreciate all that went into making the success a reality."

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, December 25, 2014

PTAB - Cisco Systems, Inc. v. C-Cation Techs., LLC - Declines to Consider Declaration Arguments

This week the Patent Trial and Appeal Board (PTAB) designated Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (Paper 12)(Aug. 29, 2014) an informative opinion. In the opinion, an expanded five-judge panel denied Cisco's petition for inter partes review, because the petition was not likely to prevail against a single claim. The opinion stated the petition position for unpatentability was not sufficiently explained and merely cited to some parts of a 250-page declaration. The cites were characterized as prohibited incorporation by reference and an attempt to sidestep the 60-page limit on inter partes review petitions.

The opinion suggests to me to institute inter partes review requires the petition not the declaration do the "heavy lifting" and the last place to look for help in supporting conclusory arguments is the currently overloaded PTAB.

Copyright © 2014 Robert Moll. All rights reserved.