Wednesday, August 29, 2012

USPTO Satellite Office in San Jose Delayed

On July 2, 2012, the USPTO announced plans to open a satellite patent office in San Jose, California. I posted on this here. I noticed on Google statistics, a number of readers were interested in this news. 

Today, the SF Chronicle reports we face delay: Patent office in San Jose may take time. No one is legally "out of bounds" because the America Invents Act (AIA) only requires the satellite offices open no later than September 16, 2014. At the same time, the SF Chronicle notes progress is lacking. Representative Zoe Lofgren's office reports they are scouting around for temporary space to "plug in some computers." Meanwhile, Detroit's satellite patent office is open for business.

Copyright © 2012 Robert Moll. All rights reserved.

Monday, August 27, 2012

Professor Hricik: 35 USC 101 Is Not An Invalidity Defense

Today, one of the most controversial topics in US patent law is whether software related inventions are patent eligible. To analyze whether the software patent is eligible, courts recite 35 USC 101, discuss the case law, then discuss whether the claim relates to an abstract idea. Too often the claim is paraphrased which can be a slippery slope, because one can always strip away claim limitations until an "invention" is too abstract then conclude it is ineligible.

Today, Professor Hricik argues courts have assumed non-statutory subject matter is an invalidity defense. Yet 35 USC 282(b) lists the following defenses: noninfringement, absence of liability for infringement, or unenforceability, and the invalidity of any patent on any ground specified in part II as a condition for patentability. When you turn to part II you see 35 USC 102 and 35 USC 103. It also says failure to comply with 35 USC 112 except the best mode is defense. The upshot is 35 USC 282 omits any mention of 35 USC 101! In other words, courts have assumed 35 USC 101 is an invalidity defense for many years when 35 USC 282 listing all defenses says no such thing.

Professor Hricik has an important point. The case law should be subject to the federal statutes it purports to interpret. And there are canons of construction that apply to federal statutes. Professor Hricik appears to use a modified version of a canon that the inclusion of "one" (35 USC 102, 103, and 112) indicates an intent to exclude "the others" (35 USC 101). So the fact many courts have held 35 USC 101 is an invalidity defense over the years does not mean they are right.

See Professor Hricik's post: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, August 23, 2012

America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012

A brief reminder the America Invents Act (AIA) makes major changes to patent reexamination on September 16, 2012.

If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.

If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, August 21, 2012

Google's Position on Software Patents?

I have been a fan of the Google search engine for years. It has helped level the playing field for small businesses. Patent Planet would be "invisible" on the Web, but for PageRank. I don't pay for Google advertising yet clients continue to find me searching on Google.

Google search engine is also a phenomenal tool for finding obscure information. If I need to review a point of law (e.g., how should a terminal disclaimer be processed on a jointly owned application, and will it raise a standing issue later?), it is better to search on Google than inside a massive document such as the Manual of Patent Examining Procedure (MPEP). Let Google take me to the right page out of several thousand pages.

Or around the house, if something goes wrong with an appliance (e.g., the Subzero refrigerator is blinking, but appears to be at the right temperatures), should I call a repairman today or can it wait? If a DVD gets stuck in the MacBook Pro, should I grab it with tweezers and/or shake the computer. Google search results tells me neither. You should reboot while holding down eject button and if necessary use a credit card to depress the DVD. Or if an iPhone gets wet when I jump in the pool to pull a kid out of danger, is it salvageable? Google search indicates skip blow drying it, and head to the AT&T retailer for an upgrade. In many situations, Google has saved time and money.

Further, Google has generated tremendous wealth for shareholders, and given us YouTube, Google scholar, and Google docs, etc.

What's less certain is Google's patent strategy.

Google's strategy has changed radically since 1998. This month Google subsidiary Motorola Mobility sued Apple for infringement of seven US patents in the ITC. Earlier this year Google loaned/transferred US patents to Android partner HTC to sue Apple. Google has filed for thousands of software patents. Google's SEC papers indicate it paid $5.5 billion for thousands of computer related patents and technology when it paid $12.5 billion for Motorola Mobility. It appears Google is engaging in mutually assured destruction with respect to Apple.

At the same time Google appears to stockpile and assert patents, it makes statements that they are suspect in the press: (1) Google's GC Kent Walker tells us that software patents don't help innovation in Software patents 'gumming up innovation'; and (2) Google's public policy Director Pablo Chavez suggests software patents are problematic: Google: Time to ditch our current software patent system?

Copyright © 2012 Robert Moll. All rights reserved.

Apple v. Samsung - Closing Arguments

For a summary of closing arguments in the Apple v. Samsung patent case, you should read CNET: Apple's closing shot hits as Samsung 'copycat' docs.

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, August 19, 2012

Google's Patent Search Tool - Improvements in 2012

Google deserves a big thank you for improvements to the Google patent search tool in 2012.

Google's patent search tool has always had fast page downloads, but has not always appeared to have a complete database. For example, more than few times Google patent searches produced less hits than the PTO patent database for the same search query. Saying it's only a beta only goes so far if the US patent database is incomplete.

However, Google announced improvements to Google Patents worth noting including:
  • Plans to allow searching the entire body of US patents and work with the PTO to add to its repository of USPTO bulk data. Hopefully this will be fixed. Incompleteness is the reason it cannot be a stand alone searching tool today.
  • A Prior Art Finder that allows a single click on a "Find prior art" button to search on Google Patents, Google Scholar, and Google Books. Note the button appears at the top of the display when  you open a patent on the list of search results. This is another way to find relevant documents beyond the search query initially invoked.
  • Searching on the European Patent Office database. This makes a more convenient to search the EPO database in conjunction with a Google patent search.
  • Google Translate improvements to eliminate the language barrier of EPO documents written in parallel languages, e.g., English, French, and German.
For details see Improving Google Patents with European Patent Office patents and the Prior Art Finder

It's already a great patent search tool for companies, patent attorneys and inventors seeking to know the prior art, but let's hope Google keeps thinking of additional improvements. It can only help.

Saturday, August 18, 2012

America Invents Act - USPTO Publishes Final Rules Post-Grant Procedures

On August 14, 2012, the USPTO published its final rules on post-grant procedures for challenging US Patents. If you want to learn more about the rules governing post-grant challenges in the PTO, I suggest starting with this article:

PTO's Final Rules for Post-Grant Challenges Show Little Change From Original Proposals - Bloomberg BNA

Bloomberg BNA published the rules (here), which become effective on September 16, 2012.

Copyright © 2012 Robert Moll. All rights reserved.

Saturday, August 11, 2012

America Invents Act - Final Rules for Citation of Prior Art and Written Statements and Reexamination Estoppel

The PTO announced final rules to implement post patent provisions in the America Invents Act (AIA): the citation of prior art and written statements and the estoppel attaching to an ex parte reexamination request filed after a final decision in an inter partes review or post grant review. The provisions are effective on September 16, 2012, and will apply to any U.S. patent issuing before, on, and after September 16, 2012. The Federal Register Notice on the final rules is here.

The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.

The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.

Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.

The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.

Copyright © 2012 Robert Moll. All rights reserved.

Friday, August 10, 2012

Kodak Patent Auction - Low Bids and No Bidding War

Tonight, the Wall Street Journal article Kodak Patent Bidding Is Tame tells us Kodak's patent auction has not generated the bids Kodak expected. Instead, all initial bids are low, no apparent bidding war is ongoing like occurred over the Nortel patents, the bids are for a subset of the 1,100 Kodak patents and well below $500 million.

Note if you enter the article through Google news you get the full article, but the WSJ only gives you a snippet of the article apparently to encourage us to become paid subscribers.

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, August 9, 2012

Apple v. Samsung - iPhone Innovation Revealed at Trial

Smart inventors may have different characteristics, but in my experience many have something in common: they can't stop inventing.

As a patent attorney working with budgets, I initially found it a bit frustrating-- the invention kept evolving or even fundamentally changed between drafting sessions. But later I realized the same restless mind unwilling to live with a problem leading to the initial invention drove the inventor to improve the solution.

Tonight, Alan Cooper sent an article CNN Money 19 incredible Apple secrets revealed in court reminding me that the best inventors continually innovate. The article notes that the Apple v. Samsung trial has lifted secrecy surrounding Apple product development. It shows the final design of the Apple iPhone did not come after a few iterations. No, the photos and article show it was the multiyear major effort involving generation of many "good" intermediate designs that were rejected.

Apple's advantage? It's ability to reject many good designs that stood before the final design.

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, August 5, 2012

SHIELD - Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012

In view of 35 USC 285 allowing for attorney fees in exceptional cases, Congressman DeFazio's bill: "Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012" strikes me as superfluous with a highfalutin title to boot. Congressman DeFazio refers to this bill as the SHIELD Act, and proposes a patent owner of a software or hardware patent pay all litigation costs including attorney fees if a court later thinks a patent owner did not have a reasonable likelihood of succeeding. Congressman Chaffet is co-sponsoring the bill.

What about defenses that did not have a reasonable likelihood of succeeding? Should patent owners have a claim to defendant paying its attorney fees? Apparently not under the SHIELD Act.

The SHIELD bill also defines software broadly as "a process that could be implemented in a computer" regardless of whether or not computer is mentioned in the patent so this bill may have more reach than one might expect.

Congressman DeFazio talks lots about how patent trolls are harming small high tech companies in his press release here, but the language of the bill has no such limitations. "Patent trolls don’t create new technology and they don’t create American jobs,” said DeFazio. “They pad their pockets by buying patents on products they didn’t create and then suing the innovators who did the hard work and created the product. These egregious lawsuits hurt American innovation and small technology start ups, and they cost jobs. My legislation would force patent trolls to take financial responsibility for their frivolous lawsuits."

The bill not only fails to limit its application to trolls, it may prevent small businesses from pursuing rightful claims of patent infringement against a large company with greater resources to litigate even the meritious claim to death, e.g., in discovery and to apply to court for the small company to pay its costs of defense.

Congressman DeFazio's proposal fails to suggest how it squares with the American Rule: each party is responsible for paying its own attorney's fees unless a statute allows assessment of attorney fees against the other person. But such are the times. Special interests run to Congress and Congress proposes laws to placate them even when interests run contrary to many decades of court cases and 35 USC 285.

I am not expecting this bill to pass, but expect if it does it will serve well as a "big company club."

Copyright © 2012 Robert Moll. All rights reserved.

Friday, August 3, 2012

Apple v. Samsung - News Coverage July 30 to August 3, 2012

If you are interested in what happened this week in the Apple v. Samsung patent infringement trial:

August 3, 2012:

Trial gives a sneak peek into Apple's inner workings - CNN Tech - Thanks for the link Alan Cooper!

August 2, 2012:

August 1, 2012:

July 31, 2012

July 30, 2012

Copyright © 2012 Robert Moll. All rights reserved.