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 and

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.

Friday, December 19, 2014

USPTO - New Website - Beta Version

The USPTO announced its new website this week:

"The USPTO encourages you to explore the public beta version of its new website. The site is part of the agency’s rollout of “Next Generation” technologies that will improve the experience of doing business with the USPTO.

In developing the new site, we met with hundreds of users—both frequent and new visitors to the site—to learn what information they look for and study how they attempt to find it. We conducted an in-depth analysis of site navigation, extensive user experience testing of the new design, and wide-ranging best practices comparisons. The new navigation makes it easier to access services and accomplish tasks. Users will no longer need to be familiar with the USPTO’s organizational structure in order to find the content they’re looking for. The site will also become increasingly mobile friendly as we add new functionality, making it more convenient than ever to work with the USPTO.

The site is easy to use for everyone. Each tab features links for beginners, but expert users can turn to the Quick Links feature for instant access to the tools they need. Further, you can still access detailed information about the agency in the About Us section. During the beta period, the old site will continue to be available in parallel with the new site.

We are excited about this work in progress, and your feedback will help us ensure a final product that best meets your needs. Take a look around, and tell us what you think. Find a link to the feedback site within the yellow banner at the top of any page on the beta site."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, December 18, 2014

USPTO - IP Stakeholders Discuss Harmonization of Substantive Patent Law at USPTO Roundtable

If you are interested in international patent harmonization, you should read the USPTO's Chief Policy Officer and Director for International Affairs Shira Perlmutter's post:

"On Wednesday, November 19, 2014, the USPTO hosted a roundtable on International Harmonization of Substantive Patent Law at our headquarters in Alexandria, Virginia. Roundtables like this one are essential tools for the USPTO to hear and understand stakeholder views on key intellectual property topics and their effects on various stakeholder and public policy interests, and we were glad to have a broad representation of stakeholders join us for the event.

In her opening remarks, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee said that although the USPTO and offices around the world have in recent years invested significantly in work sharing, the lack of harmonized laws related to key examination issues remains a barrier to more efficient and effective reuse of work. These key issues include the definition and scope of prior art, the grace period, as well as issues related to conditions for patentability, including novelty and obviousness.

Following Deputy Under Secretary Lee’s remarks, Commissioner for Patents Peggy Focarino introduced patent experts from the USPTO, the Japan Patent Office, the European Patent Office, and the U.K. Intellectual Property Office, who presented reports on the results of recent surveys on specific harmonization issues, including the grace period.

The roundtable discussion that followed was moderated by Robert Armitage, former General Counsel for Eli Lilly and Company, and featured panelists representing a broad spectrum of U.S. stakeholder interests, including: Q. Todd Dickinson, former USPTO Director; Herb Wamsley, Executive Director, Intellectual Property Owners Association of America; Hans Sauer, Associate General Counsel, Biotechnology Industry Organization; and James Love, Director, Knowledge Ecology International.

The panelists gave their views on the importance of harmonization and its impacts on stakeholders and the public, and indicated a willingness to be flexible in achieving workable compromise solutions. We will use this input and the position of flexibility as we work with partner offices to determine an appropriate course to decrease work sharing barriers.

Throughout the next year, the USPTO Office of Policy and International Affairs will work closely with our international counterparts in Group B+, our group in the World Intellectual Property Organization (WIPO), to establish a clear path forward in patent law harmonization. Read Deputy Director Lee’s remarks to the heads of Group B+ offices at WIPO, September 23, 2014 in Geneva, Switzerland.

Learn more about the Roundtable on International Harmonization of Substantive Patent Law or watch the webcast."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, December 16, 2014

USPTO - 2014 Interim Guidance on Patent Subject Matter Eligibility

The USPTO has published the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for examiners to use when determining subject matter eligibility under 35 U.S.C. 101 in view of U.S. Supreme Court decisions, including Alice Corp. v. CLS Bank, Association for Molecular Pathology v. Myriad, and Mayo Collaborative Serv. v. Prometheus Labs., Inc..

"The Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Examination Instructions issued in view of Alice Corp. and supersedes the March 4, 2014 Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products issued in view of Mayo and Myriad."

The USPTO expects to update the guidance in view of cases and in response to public feedback and gave the following claims to illustrate the analysis in the Interim Eligibility Guidance: Nature-Based Product Examples and promises to follow with abstract idea examples soon.

The USPTO is also seeking public comments:

"The USPTO is interested in receiving public feedback on the Interim Eligibility Guidance and the claim examples.  Comments may be submitted in writing.  Additionally, a public Eligibility Forum will be held where stakeholders will have an opportunity to provide oral feedback.  Details on submitting written comments and attending the Eligibility Forum follow below.

Any member of the public may submit written comments on the Interim Eligibility Guidance and claim example sets by electronic mail message over the Internet addressed to  Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format.  The comments will be available for public inspection here at this Web page.  Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments.  Comments will be accepted until March 16, 2015.

A public forum will be hosted at the Alexandria campus of the USPTO on Jan. 21, 2015, to receive public feedback from any interested member of the public.  The Eligibility Forum will be an opportunity for the Office to provide an overview of the Interim Eligibility Guidance and for participants to present their interpretation of the impact of Supreme Court precedent on the complex legal and technical issues involved in subject matter eligibility analysis during examination by providing oral feedback on the Interim Eligibility Guidance and claim example sets.  Individuals will be provided an opportunity to make a presentation, to the extent that time permits.

Date and Location:  The Eligibility Forum will be held on Jan. 21, 2015, from 1pm – 5pm EST, in the Madison Auditorium North (Concourse Level), Madison Building, 600 Dulany Street, Alexandria, VA 22314. The meeting will also be accessible via WebEx.

Requests for Attendance at the Eligibility Forum:  Requests for attendance to the Eligibility Forum should be submitted by electronic mail through the Internet to by JAN. 9, 2015.

Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number.  An Internet e-mail address, if available, should also be provided. When requesting attendance, individuals should indicate whether they wish to make a formal presentation.  The Office will attempt to accommodate all persons wishing to make a presentation, but may need to limit the length or number of presentations given time constraints.  Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting.  Space is limited.  Accordingly, it may not be possible to accommodate all requests, and only those with an accepted attendance request will be permitted to attend.  If necessary, non-accepted requesters will be notified by the USPTO.  The meeting will also be accessible via WebEx. Access instructions will be posted on this page by the forum date.

In order to ensure a broad cross-section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm.  Therefore, organizations and law firms must designate their official representatives."

For more information, the USPTO recommends calling Raul Tamayo at (571) 272-7728 or Jennifer Lo at (571) 272- 7640 or sending an email to or

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, December 14, 2014

IP Watchdog - Secret Examination Procedures at the USPTO: My Experience with SAWS

If you are interested in the USPTO's Sensitive Application Warning System (SAWS), I recommend reading entrepreneur Devon Rolf's guest post on IP Watchdog: Secret Examination Procedures at the USPTO: My Experience with SAWS.

Does SAWS have a basis in statutory law and/or regulatory rules? The article makes it sounds like SAWS is, among other things, designed to disallow US patent applications that could generate "undue publicity" or "embarrassment." I am not sure how much latitude Congress is granting the USPTO, but perhaps the USPTO can help applicants understand how this all works.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, December 12, 2014

Supreme Court - Kimble v. Marvel Entertainment - Reviewing If A Patent Licensee Must Pay After Patent Expiration

Today, the US Supreme Court granted a petition for certiorari in Kimble v. Marvel Entertainment Inc. to review if a patent licensee has an obligation to pay royalties after patent expiration.

As background, U.S. Patent No. 5,072,856 to Kimble (Kimble) relates to a Spider-Man glove, which Kimble discussed with Marvel's predecessor. Marvel decided it could make the "Web Blaster" without Kimble's help. Kimble sued for patent infringement and breach of an oral agreement. A district court granted summary judgment of non-infringement, but a jury decided Marvel breached the agreement. This led to a settlement where Marvel agreed to buy the patent and pay royalties on future sales. The patent expired but the contract required Marvel to continue to pay royalties for sales. Kimble sued for breach of contract when the settlement unraveled. Marvel filed a DJ arguing successfully that Kimble couldn't get royalties for post-expiration sales. The Ninth Circuit opinion affirmed. Kimble filed a petition for certiorari to the Supreme Court.

The petitioner asked Brulotte v. Thys Co. (1964) be overruled. Brulotte had held a royalty agreement that goes beyond patent expiration is unlawful per se. The petitioner argued "Brulotte is the most widely criticized of this Court’s intellectual property and competition law decisions. Three panels of the courts of appeals (including the panel below), the Justice Department, the Federal Trade Commission, and virtually every treatise and article in the field have called on this Court to reconsider Brulotte, and to replace its rigid per se prohibition on post expiration patent royalties with a contextualized rule of reason analysis."

Note the Solicitor General's brief advised against review, since it said Brulotte is not about competition, but the Court's interpretation of federal patent law of allowing free access to an invention after the patent expires.

Also see Marvel's opposition brief.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, December 11, 2014

World’s Five Largest Intellectual Property Offices Release Annual IP5 Statistics Report

The USPTO announced the following:

"A coalition of the world’s five largest patent offices – the IP5 – recently announced the release of the 2013 IP5 Statistics Report. The Report has been designed to facilitate an understanding of operations and patent procedures among the Offices, while providing a means for gauging inventive activity, technology flow, and comparing procedures. The IP5 is comprised of the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO).

According to the Report’s Executive Summary, the IP5 Offices granted almost 957,000 patents in 2013 – an increase of 4 percent compared to 2012. In addition, 2.1 million patent applications were filed in the IP5 Offices in 2013, which represents an 11 percent increase over the previous year.

In addition to the report itself, the IP5 offices also provide detailed statistical data sheets for historical numbers of patent application filings going back to the 1980s and patent grants broken down by International Patent Classification (IPC) codes and country of origin. The additional statistical data also includes an office by office comparison of fees associated with the patent process, including those associated with services by the World Intellectual Property Organization (WIPO).

The IP5 Offices, which together handle about 89 percent of the world’s patent applications, began meeting in 2007. They have since worked together to explore ways to further optimize joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.

The IP5 Statistics Report was first released in 1983 as a project of the Trilateral Cooperation –EPO, JPO, and USPTO. In 2008, KIPO joined the effort and the first Four Office Statistics Report was produced. The 2011 IP5 Statistics Report represented a milestone in IP5 cooperation, encompassing the full cooperation of all the IP5 Offices including SIPO. The IP5 Offices intends to continue holding discussions on statistics and improving IP5 cooperation for next year’s Statistics Report."

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, December 10, 2014

Professor Robin Feldman - Transparency - US Patent Ownership

If you are interested in the problems arising from the ability to hide US patent ownership, I recommend reading Professor Robin Feldman's article Transparency proposing regulation borrowed from corporate securities law to identify the owners of US patents. Professor Feldman asks: "Who stands to win and lose when a patent system created to foster innovation is being utilized to hide and distort patent ownership?"

From the abstract of the article:

"The United States patent regime is a quintessential notice system. Implicit in its design is the concept that one attempting to license a patent can identify those who hold the requisite rights and the territory that the patent holders claim as their own. As the system has evolved, however, it bears little resemblance to the idealized form. Little scholarship has addressed problems related to notice within the modern patent system, largely because these problems have sprung up so recently. In the last five to seven years, an entire Hobbit’s world has been created under the foliage. Moreover, historic scholarly discussions of notice generally have focused on the role of governmental actors in ensuring that a patent can be properly understood and interpreted. In contrast, this article argues that market information is a critical element of the notice function of patents. One can think of the mechanisms for providing that market information as 'Transparency'.

To address transparency insufficiencies, one need not write on a blank slate. Rather, this article suggests borrowing from the substantial body of well-developed doctrine and literature concerning disclosure in the realm of corporate securities and explores how these doctrines could be molded to patent concerns.

The patent asset is imbued with public interest by virtue of the fact that it is a government grant, bestowed for constitutional purposes. As with the trading of public securities, the trading of an asset imbued with the public interest must be sufficiently regulated to ensure proper functioning of that trading market."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, December 9, 2014

Yahoo Tech News - The US Government Has a Secret System for Stalling Patents

Tonight, I suggest reading the Yahoo News article The US Government Has a Secret System for Stalling Patents.

The article notes that documents obtained under the Freedom of Information Act (FOIA) reveal the USPTO's Sensitive Application Warning System (SAWS).has been imposing extra scrutiny and delay on any US patent application designated as containing sensitive subject matter. The USPTO may do this without publishing that the application is a SAWS case. What makes subject matter sensitive? An application might be designated if it describes (1) a business method; (2) algorithms rejected under 35 USC 101; (3) claims that might be used (i.e., infringed) by the USPTO; (4) subject matter embarrassing to the USPTO; and (5) subject matter likely to trigger media attention.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, December 8, 2014

District Court Judge Orders Nebraska to Pay Patent Owners' Attorney Fees

In Activision TV Inc. v. John Bruning, the US District Court for the district of Nebraska ordered the state of Nebraska to pay $725,000 in attorney fees, because the state attorney general (AG) violated the First Amendment in sending cease and desist letters to the law firm representing two non-practicing entities: (1) stating their patent enforcement letters could be in violation of the Nebraska Consumer Protection Act; and (2) barring the law firm from initiating any new patent infringement enforcement efforts. The court held that the attorney general failed to prove the patent owners' actions were "objectively and subjectively baseless and done in bad faith."

Initially this AG's action may seem strange. But at the time the AG took action, the media blitz regarding patent trolls was in full force. Now the ruling states in so many words the AG's "strong arming" patent litigant was not saving the public from harm, but damaging the patent owner's federal rights to enforce their patents. Perhaps the judge perceived this was also little more than political grandstanding based on little or no fact investigation. Now the public whom this AG allegedly sought to protect gets to pay the patent owner's attorney fees.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, December 7, 2014

Cisco Systems Sues Arista Networks for US Patent and Copyright Infringement

Cisco Systems recently sued Arista Networks alleging its networking products infringe 14 Cisco patents and a number of copyrights. Arista stock dropped -7%.

Cisco claims Arista Network's rapid ascent is due to patent infringement and extensive copying from Cisco user manuals and over 500 Cisco commands used to configure networking products. Whether any of this proves true, Arista appears to be a rising competitor which Cisco would like to slow down. Arista includes a number of key people that left Cisco, went public six months ago, and has a market valuation of nearly $5 billion. It will be interesting to see if Arista files any counterclaims.

Cisco's Mark Chandler tells us his view in Protecting Innovation: "In the thirteen years I've been General Counsel of Cisco, I can count on one hand the number of times we've initiated suit against a competitor, supplier or customer. It's therefore only after thoughtful and serious consideration that we are today filing two lawsuits to stop Arista’s repeated and pervasive copying of key inventions in Cisco products. These suits cover key Cisco proprietary patented features and Cisco's copyrighted materials."

Cisco's patent infringement complaint including patents

Cisco's copyright infringement complaint

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, December 6, 2014

Supreme Court - Commil USA, LLC. v. Cisco Systems - Is Defendant's Good Faith Belief of Patent Invalidity A Defense to Induced Infringement?

Yesterday, the US Supreme Court granted Commil's petition for certiorari to review the Federal Circuit decision in Commil USA, LLC v. Cisco Systems Inc.. There the Federal Circuit held a defendant's good-faith belief a patent is invalid is a defense to induced infringement under 35 USC § 271(b). The Federal Circuit stated it could "see no principled distinction between a good-faith belief of invalidity and a good faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent."

Generally, a defendant can be liable for actively inducing (encouraging) infringement: (1) if the party induced directly infringes a patent claim; and (2) if the defendant has specific, knowing intent to encourage infringement of the patent claim which is more than intent to cause acts later held to infringe. Intent can be proven through circumstantial evidence or deliberate indifference to a known risk a patent exists.

Cisco Systems' brief in opposition

Solicitor General's brief

Copyright © 2014 Robert Moll. All rights reserved.