Wednesday, August 20, 2014

PriceWaterhouseCooper's 2014 Patent Litigation Study

Tonight, check out PWC's 2014 Patent Litigation Study - As case volume leaps, damages continue general decline. This study is interesting.

IP Navigator argues the explosion in patent litigation is a myth. IP Navigator's article states the study fails to support big tech's claim that patent litigation is out of control. Instead, big tech pushes the myth to pressure Congress to pass new laws that limit US patents. This makes sense as an incumbent wouldn't want strong patents held by startups. It may shake up the status quo.

Some observers have concluded that what looked like an increase in cases was due to the American Invents Act making it difficult to join multiple defendants in a single lawsuit. In addition, what appears to be an increase in patent litigation is actually the result of an increase of patent grants.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, August 19, 2014

USPTO - Patent Trial and Appeal Board Update

The USPTO's Patent Public Advisory Committee held a quarterly meeting and published a Patent Trial and Appeal Board Update on August 14, 2014.

In the Update, Chief Administrative Patent Judge Mr. James Donald Smith provides 41 PowerPoint slides that describe the operation of the PTAB.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, August 17, 2014

Jay Walker's Patent Properties the ASCAP of Patent Licensing?

Jay Walker, Priceline founder, is launching a startup Patent Properties to produce a marketplace for patent owners much like ASCAP which represented musicians and publishers to reach an agreement where radio stations paid a reasonable fee to play songs licensed by ASCAP. Since 1920, ASCAP has collected nearly $1 billion in royalties.

Patent Properties hopes to make a marketplace for patent owners that will broker low cost deals between inventors and users. Mr. Walker states, "we believe that by using simplicity, technology and common sense that works for everybody, and especially by keeping prices very low, we can replicate in the intellectual property and patent world what ASCAP did in the music world." Walker notes only 5% of 2.3 million U.S. patents enforce are licensed due to the high cost of patent litigation and companies unwillingness to take a patent license until forced.

Patent Properties asks that a patent owner agree to a no-fault system that makes the patented invention available to companies that pay a monthly fee of $1,000 to license 100 patents deemed statistically relevant to the company's business. Mr. Walker states each time a patent gets packaged an inventor can expect on average $100/year.

Mr. Walker notes since it won't have permission to use all US patents, the subscribers will be provided insurance that covers 50% of legal costs arising from infringement lawsuits up to, of course, a limit.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, August 16, 2014

Friday, August 15, 2014

I/P Engines, Inc. v. AOL, Google et al. Federal Circuit Holds US Patents Invalid & Stock Drops 70%

One of the more interesting software patent cases decided this year is I/P Engines, Inc. v. AOL, Google, et. al., because of the large damages at stake that led extensive arguments related to patent defenses (e.g., invalidity, non-infringement, laches, etc.).

Today, Mr. Joe Mullin reports the Federal Circuit (CAFC) agreed with some of the arguments and reversed Vringo's $30M damages and cut off future royalties on Google Ad words. See Mr. Mullin's article: After years of hype, patent troll Vringo demolished on appeal: Vringo stock drops 70%, as Google shuts down dreams of a billion-dollar payday. Note Vringo established I/P Engines as a patent holding company.

For a PDF copy of the CAFC decision: I/P Engines, Inc. v. AOL, Google, et al.

Although this per curiam decision is non-precedential, it reminds that sufficient legal resources can overturn even fact findings underlying a judgment of non-obviousness.

The concurrence showed how 35 USC 101 and 103 analysis continues to be conflated: "There is, of course, some 'overlap' between the eligibility analysis under section 101 and the obviousness inquiry under 35 U.S.C. § 103. Section 103, however, asks the narrow question of whether particular claims are obvious in view of the prior art. By contrast, the section 101 inquiry is broader and more essential:  it asks whether the claimed subject matter, stripped of any conventional elements, is ‘the kind of discovery that the patent laws were intended to protection."

Software patent cases such as this one may be difficult to decide, but it's hard to applaud rewriting a claim, concluding "the claim" is a patent-ineligible abstract idea, and labeling that activity as defending our Constitution. Is it just a concurring judge or the precursor of 35 USC 101 analysis?

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, August 14, 2014

USPTO Requests Public Comments on Optimum First Office Action (Examination) and Total Patent Pendency

I am often asked how long will it take to get examination of US patent application. People know that issuance of a US patent is not guaranteed, but also want a sense of how long it will take on average if all goes well. The USPTO is aware this is a common concern so published Request for Comments on Optimum First Action and Total Patent Pendency seeking the public's input on the optimal time from the filing date to get the first Office action and a US patent.

Five years ago, the USPTO targeted ten months for the first action and twenty months for issuance. The USPTO states in the last four years it reduced average first action pendency from 25.7 months to 18.1 months, and reduced average total pendency from 35.3 months to 28.1 months.

This sounds like good news for patent applicants, however, the USPTO concedes that the average pendency in both cases does not include applications in which a Request for Continued Examination (RCE) has been filed. Since RCE's constitute nearly half of all of the applications pending, it seems that it would be appropriate to see how they affect the pendency values.

Patent Public Advisory Committee (PPAC) notes it "supports reducing pendency and while the proposed levels are laudable, there is nothing magical about the proposed pendency times."

I am glad the patent pendency problem is being reviewed, but note reducing patent pendency to the target amounts (e.g., 10/20 months) is ultimately in the USPTO's hands, not ours. At the same time, the America Invents Act (AIA) has a number of options to reduce pendency:
  • Prioritized Examination: Payment allows a final disposition of an application within a year.
  • Patent Prosecution Highway: Advances an application if its claims were allowable in an earlier counterpart application.
  • First Action Interview: Grants an interview before the first Office action.
  • After Final Consideration Pilot (AFCP) - authorizes additional time for examiners to consider after final rejections.
  • Quick Patent IDS - Eliminates need for a RCE to submit an information disclosure statement for consideration by the examiner after issue fee payment.
Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, August 13, 2014

Conversant Offers Help: Patent Troll Letter or Notice Letter?

Tonight, Conversant's ad on IP Watchdog asks if we have received a patent troll letter. Here's what Conversant offers:

1. A quiz, a video, two articles, and two letters to help us understand the difference between a patent troll demand letter (bogus) from a patent notice letter (legit);

2. An opportunity to share one's patent troll experiences with others; and

3. An opportunity to see a streaming RPX ad and Professor Rubin Feldman's quote that 70% of VC-backed startups have received a demand letter.

Unfortunately, I don't feel like taking a quiz or sharing with others at 11 pm. Also not to fixate on a typo, but it's Professor Robin Feldman not Rubin.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, August 12, 2014

USPTO Statistics on AIA Procedures

Tonight, I was curious how many people are taking advantage of the America Invents Act (AIA) procedures such as inter partes review and preissuance submission. I started by checking on the USPTO web site, which has a page AIA statistics that gives the raw number of filings for the AIA procedures from their inception on September 16, 2012 up to June 30, 2014.

First, some AIA procedures are being increasingly used while others are ignored. For example, inter partes review is more often than not the key strategy to consider if you have been sued for patent infringement.  Thus, I expect patent infringement actions without a concurrent inter partes review to become even more rare (i.e., Concurrent court/USPTO cases are about 2/3) as defendants become aware of the benefits. In contrast, covered business method patent review filings don't appear be increasing in a big way due to the subject matter restriction, and perhaps because inter partes review is more cost effective. We don't know much about post-grant review just yet, since the first petition was just filed and we still don't have that many issued US patents filed after March 16, 2013.

As far as the other administrative procedures, preissuance submission is seeing only a modest number of filings (e.g., 100 filings is a good month!) given the number of applications pending in the USPTO. Supplemental examination has seen surprisingly little use (e.g., 7 filings per month).

Note the raw filings do not indicate they complied with US patent law and regulations.

Also see the USPTO data for the administrative trials at the PRPS Filing System.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, August 10, 2014

Professor Dennis Crouch - A Few Problems at PTAB

Professor Dennis Crouch has an interesting article on problems at the Patent Trial and Appeal Board (PTAB). See A Few Problems at PTAB. Among other things the article discusses the ballooning backlog of ex parte appeals before PTAB. Professor Crouch notes "In 2006, there were fewer than 1,000 pending ex parte appeals at any given time. That figure steadily and rapidly ballooned to a seeming high-point of over 25,000 pending ex parte appeals."

Despite the fact administrative judges must also handle AIA Trials, this ballooning backlog of ex parte appeals is startling. Professor Crouch states the ex parte appeals face a three-year delay to get a decision. Of course, this is why many applicants file a request for continued examination (RCE) rather than appeal. Note 46% of all applications are based on RCE's today.   

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, August 9, 2014

AIPLA's Response to Request for Guidance Pertaining to Patent Eligible Subject Matter (re:Alice)

As a follow up to how the USPTO will interpret software patent eligibility post-Alice, the AIPLA has published its comments:

AIPLA Reponse to "Request for Comments and Extension of Comment Period on Examination Instruction and Guidance Pertaining to Patent Eligible Subject Matter (re: Alice), July 31, 2014

Because those against software patents may consider the Alice decision a victory, it is worth reading the AIPLA's comments. Beside being I think the largest organization of US patent attorneys, its moderate views are more likely to be adopted by the USPTO.

Note it is becoming apparent many of the criticisms against patenting software inventions could be made against patents in general. So why the attack on software patents? Big tech lobbying by the incumbents.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, August 8, 2014

WSJ Article - Bose Sues Beats Over Noise-Cancelling Patents

The WSJ article reports that Bose Sues Beats Over Noise-Cancelling Patents:

"Bose is suing Beats Electronics, the headphone and speaker maker that Apple agreed to acquire for $3 billion earlier this year, for infringing on patents related to its noise-cancelling technology."

"Bose filed the lawsuit on Friday in U.S. District Court in Delaware, saying that Beats – known for its colorful and flashy headphones – had infringed on five of its patents pertaining to its noise-cancelling headphones. Bose also filed a complaint to the U.S. International Trade Commission, seeking to halt the sale and import of certain Beats products."

I have not studied the merits of this suit, but it seems the delay in filing the suits won't help. Bose must have known of the infringement before the acquisition by Apple and if so, lost an opportunity to get a favorable settlement and now faces a very experienced patent defense team.

Copyright © 2014 Robert Moll. All rights reserved.

What is the Probability of Receiving a US Patent?

Tonight I point to What is the Probability of Receiving a US Patent? which gives insight into US patent examination, including the fact different technologies and entities have different allowance rates. Worth reading if you trust in big data for strategy decisions, but at the same time a bit out of date for an article published in 2014, since it is based on applications filed in 1996 -2005.

Here is more detail taken from the author's abstract:

"We follow the prosecution histories of the 2.15 million new patent applications filed at the US Patent and Trademark Office between 1996 and 2005 to calculate patent allowance rates. 55.8% of the applications emerged as patents without using continuation procedures to spawn related applications. The success rate of applications decreased substantially from 1996 to 2005, particularly for applications in the “Drugs and Medical Instruments” and “Computers and Communications” fields. Applications filed by large firms are more likely to emerge as patents than those filed by small firms. We discuss the implications of our findings for inventors, policy makers, and social scientists who use successful patent applications as indicators of innovation."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, August 7, 2014

USPTO Patent Examiners Stressed Out!

In the article Inside the stressed-out, time-crunched patent examiner workforce, the Washington Post reports on what the patent community knows too well -- the emphasis on production quotas is stressing out US patent examiners. Until the USPTO can assess quality of examination and values it more than quantity of applications processed, there is no easy way out of the current environment.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, August 5, 2014

USPTO Commissioner for Patents Explains the USPTO Implementation of Alice v. CLS Bank

The Supreme Court decision in Alice v. CLS Bank has had lots of critical commentary. Perhaps the most warranted is Alice affords at best murky guidance for decision makers (e.g., judges and examiners) seeking to determine if a software invention is an abstract idea. Many are puzzling over what the USPTO will consider patent eligible in the realm of business software. And this is not an academic point.

At least the USPTO is seeking to help the public. Recently, USPTO Commissioner for Patents Peggy Focarino posted Update on USPTO's Implementation of 'Alice v. CLS Bank'.

The Commissioner states the Supreme Court held the claims to "a computerized scheme for mitigating settlement risk" patent ineligible because they are drawn to an abstract idea. Somehow this reminds how the Court deleted many claim limitations to find the claim was a "scheme for mitigating settlement risk" then an abstract idea. This analysis has no objective principle and it gives no real credit to way applicant wrote the claimed invention. The scope of the claim is entirely up to the decision-maker. If the decision-maker is "anti-patent" the claim is paraphrased to a pithy gist that is abstract, the stripped out limitations are then brought back into the analysis but somehow deemed to be insufficient to render the claim patent eligible, and the applicant or patent owner is turned away for the audacity of seeking a patent on an abstract idea. 

On June 25, 2014, she notes the USPTO "issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp." Nice document but I don't see how to resolves what is an abstract idea anymore than the case.

Ms. Focarino notes the USPTO examiners reviewed a small group of applications (note actual number was not given) likely affected by the Alice and withdrew notice of allowances (i.e., withdrew from issuance) if the application includes one or more claims reciting an abstract idea and no more than a generic computer to be reexamined by the original examiner in light of Alice.

Of course, the USPTO can withdraw applications from issuance, but should probably just send all applicants a check rather than saying they must now request refunds.

I expect the public comments on the preliminary examination instructions to sound much like Sean Sullivan's comment to Ms. Focarino post:

"The problem with the preliminary examination instructions and the withdrawal of the notices of allowance is that there is no guidance as to how an "abstract idea" is determined. The post-Alice office actions have offered no analysis of whether a claim is drawn to an abstract idea, but rather a mere conclusory statement that the claim is abstract. This appears to have resulted in a per se exclusion of business method patents, which impermissibly broadens the scope of the Supreme Court decisions on subject matter eligibility."

Copyright © 2014 Robert Moll. All rights reserved.
               

Monday, August 4, 2014

PTAB Rejects Petition for Covered Business Method Patent Review Because Previously Filed DJ for Invalidity

No surprise in the first precedential decision of the Patent Trial and Appeal Board (PTAB) SecureBuy, LLC v. CardinalCommerce Corporation. PTAB denied a petition to institute a covered business method patent review, because petitioner had previously filed a declaratory judgment action in court that challenged the validity of the patent claims.

I say no surprise, since 35 USC 321-329 states covered business method patent review shall employ all statutory standards and procedures of post-grant review (i.e., 35 U.S.C. §§ 321–29) except for those expressly excluded (i.e., 35 U.S.C. §§ 321(c); 325(b), (e)(2), (f)).

Of course, this left the door open to applying 35 U.S.C. § 325(a)(1) which wiped the petition in all respects: (1) POST-GRANT REVIEW BARRED BY CIVIL ACTION-- A post-grant review may not be instituted under this chapter if, before the date on which the petition for such review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.

Yes it's first love or no love when it comes to the USPTO.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, August 3, 2014

USPTO Request Public Comments on American Invents Act Covered Business Method Review, Derivation, Inter Partes Review, and Post Grant Review

As a follow up to the eight USPTO roundtables held across the country this spring, the USPTO issued a request for public comments on covered business method review, derivation proceedings, inter partes review, and post grant review before the Patent Trial and Appeal Board (PTAB) under the America Invents Act. 

The USPTO is seeking public input on all of these proceedings, but especially issues raised at the roundtables: claim construction, motions to amend, patent owner preliminary responses, obviousness, real party in interest, additional discovery, multiple proceedings, extensions of 1 year period to issue a final determination, and oral hearings.

Written comments must be submitted no later than September 16, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, June 24, 2014

USPTO to Host Software Partnership Meeting

The United States Patent and Trademark Office (USPTO) will host its next Software Partnership meeting Tuesday, July 22, 2014. The public is invited to attend. Software Partnership meetings are an opportunity to bring stakeholders together to share ideas, experiences, and insights and to provide a forum for an informal discussion of many topics specific to the software community.

The meeting will be at the USPTO in Alexandria, Virginia, from 1:00 pm – 4:30 pm.

As stated in the USPTO press release:

On June 4, 2013, the White House issued five executive actions designed to reduce abusive litigation and level the playing field for innovators. The second of the five executive actions focuses on clarity in patent claims and functional claiming in patents. The meeting on July 22 will feature a focused discussion on claim clarity and functional language. In particular, USPTO officials at the meeting will present details of four examiner training modules on functional language, discussed below, that were delivered this past year, and will provide an opportunity for an interactive discussion on the goals and effectiveness of the training.  A stakeholder presentation on claim clarity will follow. The public will have an opportunity to provide input on the training and ask questions regarding claim clarity. Public attendees are invited to provide individual input on these topics and additional ideas during the interactive discussion portion of the meeting.

The training modules that will be discussed cover the basics of interpreting functional limitations under 35 U.S.C. § 112(f) (so-called “means-plus-function” claim limitations), including identifying when § 112(f) is or is not invoked, establishing the broadest reasonable interpretation of the limitation, and determining whether a § 112(f) limitation, especially a software-related limitation, has definite boundaries. The training also provides tools for examiners to clarify the prosecution record and thereby positively affect the clarity of the claims. The training that will be the focus of the Software Partnership Meeting discussion is publicly available on USPTO’s website at the Examiner Guidance and Training Materials webpage. In addition to a detailed discussion of the USPTO’s efforts on executive action #2 on claim clarity and functional claiming, the USPTO will also provide updates on the other executive actions.

Media is welcome to attend the event. Others must submit a request to attend, as space is limited. The event will be available for viewing via WebEx. For more information and to register by email, visit the event page on the USPTO website."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, June 19, 2014

USPTO - Request for Comments on Virtual Marking

On June 16, 2014, the USPTO published a notice seeking public comments on virtually marking.

The America Invents Act (AIA) provides for virtual marking as an alternative to physically marking to give notice to the public that a product is subject to patent protection.

As stated in the notice:

"United States patent law provides that marking a product with a patent number gives the public notice of a patent. Under 35 U.S.C. 287(a), if a patented product is not marked with the patent number by the patent owner, damages for infringement will be limited to the time period after the patent owner gives actual notice to an alleged infringer.

Section 16 of the AIA provides a new way to comply with the requirements for patent marking by allowing patentees to mark their products virtually rather than physically. Instead of printing the actual patent number on the product, businesses can display the term “patent” or “pat.” along with an accompanying URL address of a Web site where the actual patent number will be located.

Section 16 of the AIA also requires the Director of the USPTO to prepare a report for Congress analyzing:

(A) The effectiveness of “virtual marking” as an alternative to the physical marking of articles;

(B) whether such virtual marking has limited or improved the ability of the general public to access information about patents;

(C) the legal issues, if any, that arise from such virtual marking; and

(D) the deficiencies, if any, of such virtual marking.

The report is due to Congress not later than three years after the date of enactment of the AIA, which is September 16, 2014.

Interested members of the public are invited to submit written comments they deem relevant to the above-mentioned issues. The USPTO would particularly welcome observations and comments on any of the following topics:
1. Experiences with creating and maintaining adequate and effective virtual marking Web sites;
2. effectiveness of virtual marking, including experiences using virtual marking Web sites to locate relevant patent information;
3. challenges presented by virtual marking in providing sufficient notice to the public, including sufficiently associating patent numbers with the corresponding product within the virtual marking Web site;
4. economic impacts of virtual marking, including costs differences between physical marking and virtual marking;
5. advantages and disadvantages of virtual marking in comparison with physical marking;
6. identification of other practical or legal concerns with virtual marking; and
7. any other issues or experiences regarding virtual marking.

Commenters are requested to include information identifying how they are impacted by virtual marking, e.g., whether they are patent owners, licensees, or any other type of user, business, or manufacturer."

Copyright © 2014 Robert Moll. All rights reserved.

Friday, June 13, 2014

Elon Musk - All Our Patents Are Belong to You?

In All Our Patents Are Belong to You Elon Musk explains why he is giving away the entire Tesla patent portfolio to grow the market for electric cars. It might be just the thing to grow a nascent market, but who knows. It is also less sweeping than it sounds as the dedication is conditioned on competitors acting in "good faith." Does that mean Tesla can still enforce the patents as long as it is sued first, that is, defensively? Whatever the case, this is a bold step as the Tesla patents I have read seem to be well written and on commercially important topics (i.e., valuable). One wonders why Tesla didn't simply license the patents for a zero fee for a certain time period.

Despite the hero worship in the comments to Mr. Musk's post, this "patent dedication" may not have the desired affect. How much of the automakers' decision to enter the electric car market is based on the barrier presented by Telsa's patents? My guess is this patent risk factor is far outweighed by current unfavorable economics. I hope we all drive electric cars in the future, but if you buy a Tesla and cannot tap into a free charging station let me know how much your electric bill increases.

Tesla's competitors may be able to freely use Tesla's patented technology, because of the doctrine of equitable estoppel. Furthermore, even if Tesla thinks it smart, what about the competitors? I guess they can take advantage as long as they act in good faith.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, June 9, 2014

Michelle K. Lee - Progress Continues with Our Patent Trial and Appeal Board

Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, had an interesting blog post Progress Continues with Our Patent Trial and Appeal Board:

"Transparency and public involvement in building an even better patent system are hallmarks of this administration and pervade all aspects of the USPTO. A current example of that is the ambitious outreach the Patent Trial and Appeal Board, or PTAB, is conducting with the public. The Board is in the middle of a series of eight roundtables to engage the public about our AIA trial proceedings, our continued hiring of new judges, and our redesigned PTAB web pages, which contain decisions, operating procedures, and interesting statistics to date. Several hundred engaged individuals have already attended our first few roundtables over the last two weeks."

Ms. Lee noted at "these roundtables, we’re particularly focused on receiving feedback on our new trial proceedings created by the Leahy-Smith America Invents Act of 2011. The statute set the framework for these trial proceedings, and the agency promulgated rules and issued guidance thereafter. In promulgating those rules and guidance, the agency worked carefully and diligently, issuing final rules and guidance in a mere one year after the AIA became law. Those rules and guidance were implemented after the USPTO visited 18 cities to solicit input from our stakeholders, just as we are doing now. Also, when we issued the AIA final rules, we committed to re-visiting the rules and guidance after both the Board and the public operated under them for some period."

Ms. Lee stated it was time to revisit the rules as "PTAB began conducting inter partes review and covered business method review proceedings nearly 18 months ago. During this time, the Board has received more than 1,200 petitions, issued more than 500 decisions on whether to institute a trial, and released more than 40 final written decisions following a trial. For such a short period of time, that is a lot of hands-on experience, and the Board has gained a fair amount of wisdom about these processes as a result. But we know that participants in these new AIA proceedings, as well as seasoned observers of our patent system, have also been focused on these new trials and have their own wisdom to share. Through these roundtables, we are hearing from interested parties their thoughts on what we can do to make trial proceedings even more effective going forward by adjusting the rules and guidance where necessary."

"Each roundtable is staffed by at least five administrative patent judges per city (APJs). The roundtables begin with an overview of trial statistics and lessons learned followed by a mock conference call centered on motions for discovery and amendments. The overview provides a framework for the trials, while the mock conference call showcases successful techniques for winning a motion as well as missteps to avoid. The roundtables end with a panel discussion featuring APJs and local practitioners with experience and knowledge about the AIA trials. The purpose of the panel discussion is to break down the trial process and identify strengths and places for improvement. Nothing about the AIA trials is carved in stone, so the opportunity is upon us to work together to hone the AIA trials system into a true alternative to district court litigation for challenging patent validity."

"Apart from the roundtables, I’m pleased to note that PTAB continues to have great success in hiring talented new judges with strong and relevant technical and legal backgrounds. We are moving fast toward our goal of adding 60 new judges for a grand total of 200 by June 1st. New judges are joining not only at the Alexandria headquarters but also at all of the satellite office locations, namely Detroit, Denver, Dallas, and Silicon Valley. As the first director of our Silicon Valley office, I was honored to work beside the stellar judges that had already joined PTAB in service to the innovation community. If you think you have what it takes to make an excellent PTAB judge, we encourage you to apply. To learn more please visit www.usajobs.gov.

Speaking of the web, PTAB has overhauled its pages on our website, making it easier to locate information about AIA trials, ex parte appeals, statistics, operating procedures, and rulings. Additionally, PTAB is posting timely articles, such as tips for filing a preliminary patent owner statement in an AIA trial and testimonials about life as a PTAB judge."

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, June 7, 2014

Patent troll on the verge of winning 1 percent of iPhone revenue

In Patent troll on the verge of winning 1 percent of iPhone revenue, Joe Mullin reports Apple is still unsuccessfully fighting an 0.98% royalty rate to be paid to VirnetX for patent infringement by FaceTime and VPN On Demand.

In 2012, Apple lost and was ordered to pay $368 million (which Mullin says could be an annual cost) and lost its inter partes review case on June 5, 2014, because the judges held that RPX which engaged a law firm to file the petition was determined to be a proxy for Apple which was barred from filing the IPR petition more than one year after the infringement complaint. See PTAB decision.

The PTAB determined Apple was the real-party-in interest behind the RPX petitions and denied them as time-barred. Contrary to the requirements of 35 USC 315(b), the RPX petitions were filed more than 1 year after the date on which the real party in interest Apple was served with a complaint alleging patent infringement. Thus, the IPRs could not be instituted.

This article is worth reading for those considering using a third party as a proxy and highlights the risk of not filing an IPR petition timely after being sued.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, June 4, 2014

US Supreme Court - Nautilus v. Biosig Instruments - Definiteness Requirement

Because the public must understand the patent claims to determine what requires a license from the patent owner, 35 USC 112, paragraph 2, requires the specification conclude with one or more claims that "particularly point out and distinctly claiming" the subject matter which the applicant regards as the invention. In short, the patent claims must be definite to be valid under 35 USC 112.

In recent years, the Federal Circuit has held a patent claim is definite as long as the claim is "amenable to construction" and not "insolubly ambiguous."

On June 2, 2014, the US Supreme Court held in Nautilus v. Biosig Instruments involving a patent claiming a heart rate monitor used with exercise equipment that "the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement. In place of the "insolubly ambiguous" standard, we hold that a patent is invalid for indefiniteness if it's claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty,those skilled in the art about the scope of the invention."

In short, the US Supreme Court has made it easier to challenge the validity of patent claims for indefiniteness, which was not a viable defense until recently. 

Copyright © 2014 Robert Moll. All rights reserved.

Monday, June 2, 2014

WSJ - 5 Reasons Patents Are On the Rise

Today, the WSJ Rani Molla reports 5 Reasons Patents Are On the Rise.

Rani Molla: "The rise in patent applications has accelerated in recent years — and isn’t necessarily because of increased innovation. Patent law has come to the forefront as so-called patent trolls have increased litigation and as the Supreme Court considers whether software — a huge issue for Silicon Valley — can be patented or not. Today, the Supreme Court reversed a previous ruling in a web technology patent case that will make it harder for companies to sue rivals for encouraging patent infringement. Still, as the number of patents rises so do the stakes. Here’s a look into some reasons for the rise in patents."

Copyright © 2014 Robert Moll. All rights reserved.

Friday, May 30, 2014

Allison et al. Understanding the Realities of Modern Patent Litigation

If you are interested in U.S. patent litigation, I recommend John Allison, Mark Lemley, and David Schwartz's article Understanding the Realities of Modern Patent Litigation which will be published in the Texas Law Review.

Here's the abstract of the article:

"Sixteen years ago, two of us published the first detailed empirical look at patent litigation. In this Article, we update and expand the earlier study with a new hand-coded data set. We evaluate all substantive decisions rendered by any court in every patent case filed in 2008 and 2009 — decisions made between 2009 and 2013. We consider not just patent validity but also infringement and unenforceability. Moreover, we relate the outcomes of those cases to a host of variables, including variables related to the parties, the patents, and the courts in which those cases were litigated. The result is a comprehensive picture of the outcomes of modern patent litigation, one that confirms conventional wisdom in some respects but upends it in others. In particular, we find a surprising amount of continuity in the basic outcomes of patent lawsuits over the past twenty years, despite rather dramatic changes in who brought patent suits during that time."

The authors noted the "overall picture painted by our data is complex. In many ways, patent litigation is rather different than it was when we conducted our original study. The top districts for patent litigation—the Eastern District of Texas and the District of Delaware—were not nearly as important twenty years ago. The Markman hearing did not exist in our original study. Patent assertion entities (referred to by some as “patent trolls”) were a minor feature of patent litigation in the 1990s. And the most successful validity challenges today—patentable subject matter and indefiniteness—were virtually unknown twenty years ago."

The authors stated that "ten years ago, Janicke and Ren found that patentees won only 25% of decided cases; we find that number virtually unchanged today. Forty-six percent of patents whose validity was decided in the 1990s were held invalid; today the invalidation rate is 43%. Much has changed about patent law, but the overall dynamics of patent litigation—in which patentees win at trial but not on summary judgment, and in which patentees win each individual issue but lose overall—remain remarkably similar to the patent litigation we studied twenty years ago."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, May 26, 2014

Joe Mullin - How the Patent Trolls Won in Congress - A Brief Comment

In How the patent trolls won in Congress, Joe Mullin reports that "trial lawyers and pharma companies teamed up to stop change to patent laws." This account of what stopped patent reform strains credibility.

The article revolves around anti-patent people who felt surprised and frustrated that patent reform did not pass this year. It stops short of exploring why people opposed the reform due to obstacles it raised for small businesses enforcing their patent rights. Instead it focuses on frustrated lobbyists who recount bitter disappointment on a done deal thwarted and multiple unnamed sources who blame Senator Reid as caving to special interests.

What's the evidence for this amazing claim that trial lawyers influenced Senator Reid? The article notes securities litigators met to raise funds for Senator Reid's campaign in 2010. How does this relate to patent reform in 2014? We are supposed to see Senator Reid as beholden to trial lawyers of all types now and forever. Why big pharma is to blame is not articulated.

I guess when you fail as a lobbyist, you go into damage control, casting blame on somebody (make that anybody) to avoid the perception that you failed. After all you don't want to "lose your reputation" as being effective at tailoring the law to meet your client's objectives since it could eliminate your next lucrative lobbying job.

Copyright © 2014 Robert Moll. All rights reserved.