Friday, April 26, 2019

RPX - Patent Litigation and Marketplace Report - Public Excerpt

RPX's Patent Litigation and Marketplace Report - Public Excerpt (March 2019) tells us "the pendulum" is swinging back in favor of patent owners:

"The US patent system is often described as a pendulum, swinging between periods of change favoring first patent owners and then defendants. Just a few years ago, that arc bent toward defendants, as reforms implemented by the America Invents Act (AIA) and judicial decisions like Alice made it easier for companies to defend against patent suits and pushed patent prices down. However, there are now clear signs that the pendulum is swinging back ...."

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, April 24, 2019

Engadget - Amazon tries hiring lawyers for sellers claiming patent infringement - And it only costs $4,000

In Amazon tries hiring lawyers for sellers claiming patent infringement, Engadget reports Amazon has figured out how to deal with patent infringement.

In short, patent owner pays $4000 fee to have case heard by a neutral. If defendant doesn't pay $4,000 fee to enable a rebuttal, the patent owner gets fee back and defendant's product is removed from Amazon. If both parties pay their fees, the neutral evaluates the merits and rules: a winning patent owner gets $4,000 fee back and an injunction, and a losing defendant's $4,000 fee pays the neutral for evaluation. A losing patent owner's $4,000 fee is used to pay for the neutral evaluation, the defendant gets $4,000 fee back and the accused product stays on Amazon.

Liked the article but maybe short on basic details. For example, can an accused infringer to go to district court, for example, to seek reversal of a "bad decision" by an Amazon neutral? Another question, can a winning US patent owner get an injunction against foreign sales?

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, March 30, 2019

CAFC - SRI v. Cisco - Patent Eligible under 35 USC 101

In SRI International v. Cisco Systems, the Federal Circuit recently held U.S. Patent No. 6,711,615 (the '615 patent) and U.S. Patent No. 6,484,203 (the '203 patent) relating to computer network security patent eligible under 35 U.S.C. § 101.

The '615 patent abstract: "A method of network surveillance includes receiving network packets handled by a network entity and building at least one long-term and a least one short-term statistical profile from a measure of the network packets that monitors data transfers, errors, or network connections. A comparison of the statistical profiles is used to determine whether the difference between the statistical profiles indicates suspicious network activity."

The '203 patent abstract: "A computer-automated method of hierarchical event monitoring and analysis within an enterprise network including deploying network monitors in the enterprise network, detecting, by the network monitors, suspicious network activity based on analysis of network traffic data selected from the following categories: {network packet data transfer commands, network packet data transfer errors, network packet data volume, network connection requests, network connection denials, error codes included in a network packet}, generating, by the monitors, reports of the suspicious activity, and automatically receiving and integrating the reports of suspicious activity, by one or more hierarchical monitors."

The Federal Circuit explained its decision that the claims were patent eligible:

"To determine whether a patent claims ineligible subject matter, the Supreme Court has established a two-step framework.

"First, we must determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).

Second, if the claims are directed to an abstract idea, we must “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79). To transform an abstract idea into a patent-eligible application, the claims must do “more than simply stat[e] the abstract idea while adding the words ‘apply it.’” Id. at 221 (quoting Mayo, 566 U.S.
at 72.

We resolve the eligibility issue at Alice step one and conclude that claim 1 is not directed to an abstract idea. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).

The district court concluded that the claims are more complex than merely reciting the performance of a known business practice on the Internet and are better understood as being necessarily rooted in computer technology in order to solve a specific problem in the realm of computer networks. Summary Judgment Op., 179 F. Supp. 3d at 353–54 (citing ’203 patent col. 1 ll. 37–40; DDR Holdings, LLC v., L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). We agree.

The claims are directed to using a specific technique—using a plurality of network monitors that each analyze specific types of data on the network and integrating reports from the monitors—to solve a technological problem arising in computer networks: identifying hackers or potential intruders into the network."

Copyright © 2019 Robert Moll. All rights reserved.

Friday, March 15, 2019

Reuters - U.S. judge rules Qualcomm owes Apple nearly $1 billion rebate payment

The mobile computing patent war never stops (too much money at stake).

This week Reuters reports: "A U.S. federal judge has issued a preliminary ruling that Qualcomm Inc. owes Apple Inc. nearly $1 billion in patent royalty rebate payments, though the decision is unlikely to result in Qualcomm writing a check to Apple because of other developments in the dispute."

As background, Qualcomm threatened to withhold mobile chips if Apple refused to pay a significant increase in the patent royalty rate. I don't think it is the smartest move to attempt to strong arm Apple with patents, but then life is about learning.

As stated in Reuters: "contract factories that built Apple’s iPhones would pay Qualcomm billions of dollars per year for the use of Qualcomm’s patented technology in iPhones, a cost that Apple would reimburse the contract factories for. Separately, Qualcomm and Apple had a cooperation agreement under which Qualcomm would pay Apple a rebate on the iPhone patent payments if Apple agreed not to attack in court or with regulators. In a lawsuit filed two years ago, Apple sued Qualcomm, alleging that the chip supplier had broken the cooperation agreement by not paying nearly $1 billion in patent royalty rebates."

Apple instructed the contract factories to quit paying the royalties to Qualcomm offset the missing rebates.

"Qualcomm in turn alleged that it stopped paying the rebate payments because Apple had broken the agreement by urging other smartphone makers to complain to regulators and making “false and misleading” statements to the Korean Fair Trade Commission, which was investigating Qualcomm over antitrust allegations. Apple responded that it was making lawful responses to regulators in an ongoing investigation."

So mobile computing patent war continues global, and expensive. For now the court has sided with Apple so maybe settlement would be smart especially as Intel moves into position with another source of mobile chips.

For details see U.S. judge rules Qualcomm owes Apple nearly $1 billion rebate payment

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, February 6, 2019

BigPatent Data - Research Tools for Smarter Patent Prosecution

This BigPatent Data website and blog promises "tools for smarter patent prosecution." How can I object to that much less the chutzpah to illustrate two cases each having four ex parte appeals with a dung beetle pushing "it" up the hill?

Copyright © 2019 Robert Moll. All rights reserved.

Thursday, January 31, 2019

USPTO - 2019 Revised Subject Matter Eligibility Guidance: Advanced Module

Today, the USPTO reminds:

"Sunday, February 3 is the last day to sign up for the February 26, 27, and 28 vILT course entitled “2019 Revised Subject Matter Eligibility Guidance: Advanced Module.” Trainers from the USPTO will lead this course. The materials are based on recent training delivered to patent examiners.

If you are interested in attending, use the vILT interest form to sign up.

There is limited capacity and selection for attendance is based on a first-come, first-served basis. The USPTO is applying for three hours of CLE credit in Virginia for this course.

Information on upcoming training courses is available on the vILT webpage of the USPTO website."

Copyright © 2019 Robert Moll. All rights reserved.

Monday, January 28, 2019

Harvard Business School Working Paper - Some Facts of High-Tech Patenting

Michael Webb, Nick Short, Nicolas Bloom, Nicholas and Josh Lerner's Harvard Business School (HBS) Entrepreneurial Management Working Paper No. 19-014 and HBS Finance Working Paper No. 19-014 Some Facts of High-Tech Patenting (July 2018) provides an overview on technologies people are seeking to patent. See the charts on pages 5-7.

From the abstract: "Patenting in software, cloud computing, and artificial intelligence has grown rapidly in recent years. Such patents are acquired primarily by large US technology firms such as IBM, Microsoft, Google, and HP, as well as by Japanese multinationals such as Sony, Canon, and Fujitsu. Chinese patenting in the US is small but growing rapidly, and world-leading for drone technology. Patenting in machine learning has seen exponential growth since 2010, although patenting in neural networks saw a strong burst of activity in the 1990s that has only recently been surpassed. In all technological fields, the number of patents per inventor has declined near-monotonically, except for large increases in inventor productivity in software and semiconductors in the late 1990s. In most high-tech fields, Japan is the only country outside the US with significant US patenting activity; however, whereas Japan played an important role in the burst of neural network patenting in the 1990s, it has not been involved in the current acceleration. Comparing the periods 1970-89 and 2000-15, patenting in the current period has been primarily by entrant assignees, with the exception of neural networks."

The article notes "the growth of software patents increased sharply after 2000, particularly when patent applications are considered. The number of software patent applications grew by 168.6% between 2000 and 2013. This growth mirrors that of patents more generally: patent applications overall grew by 122.6% over the same period. As we move into more recent technologies, such as cloud, drones, machine learning, and self-driving cars, the growth is far more dramatic. Meanwhile, the number of issued awards in internal combustion engines and pharmaceuticals, included for the sake of comparison, has been nearly flat."

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, January 22, 2019

Supreme Court - Helsinn Healthcare S.A. v. Teva Pharmaceutical USA, Inc. - Secret Commercial Sales of Invention Can Bar Patent

In Helsinn Healthcare v. Teva Pharmaceutical, the United States Supreme Court held that a commercial sale to a third party who is required to keep the invention confidential may place the invention "on sale" under the American Invents Act.

Justice Thomas speaking for a unanimous Court stated that the "America Invents Act (AIA) bars a person from receiving a patent on an invention that was 'in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.' 35 U. S. C. §102(a)(1). This case requires us to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention 'on sale' within the meaning of §102(a)."

"More than 20 years ago, this Court determined that an invention was 'on sale' within the meaning of an earlier version of §102(a) when it was 'the subject of a commercial offer for sale' and 'ready for patenting.' Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public. In light of this earlier construction, we determine that the reenactment of the phrase 'on sale' in the AIA did not alter this meaning. Accordingly, a commercial sale to a third party who is required to keep the invention confidential may place the invention 'on sale' under the AIA."

For additional commentary see Professor Ronald Mann's Opinion analysis: Justices affirm ruling that secret sales of invention bar later patent and my post America Invents Act - On Sale Bar, 35 USC 102.

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, January 19, 2019

IP Watchdog - Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility

Here's a fresh analysis of patent eligibility law. See IP Watchdog: Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility for an interesting interview and article.

From the abstract of the article: "A or B” is inconsistent with “A not B.” This describes why the application of 35 U.S.C. § 101 by the U.S. Supreme Court is inconsistent with the U.S. Constitution, and thus unconstitutional. This article tracks the legislative history of patent eligibility from 1790 to 2011, and the parallel but inconsistent U.S. Supreme Court case law during this period. In following its own case law, the Court has shown extraordinary judicial activism, has penciled out two words of the federal statute (“or discovers”), and has penciled a word out of the U.S. Constitution (“discoveries”)."

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, January 16, 2019

Patently-O - How is the USPTO Operating During the Federal Government Shutdown?

Dennis Crouch of Patently-O's post: How is the USPTO Operating During the Federal Government Shutdown? discusses, among other things, what happens if the shut down continues.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, January 15, 2019

Venture Beat - Apple and Qualcomm offer billion-dollar sob stories at FTC antitrust trial

In Venture Beat, Jeremy Horwitz reports Apple and Qualcomm offer billion-dollar sob stories at FTC antitrust trial.

The article gives more details on the negotiations leading to the FTC trial than what is described in Wired - The FTC Thinks You Pay Too Much For Smartphones. Here’s Why. For example, the article mentions initially Apple was willing to pay $7.50/phone in 2011 and meet other conditions including advocate against a budding wireless standard WiMax. Then Qualcomm decided to leverage the need for the CDMA chips used by Verizon on the sale of other chips and increase the patent license from $7.50/phone to $8-10/phone plus retain exclusivity. It looks like the "straw that broke the camel's back" as Apple had further developed Intel as a second source for the chips.

Copyright © 2019 Robert Moll. All rights reserved.

Monday, January 14, 2019

Wired - The FTC Thinks You Pay Too Much For Smartphones. Here’s Why

In Wired, The FTC Thinks You Pay Too Much For Smartphones. Here’s Why, FTC is investigating if Qualcomm has committed an antitrust violation (a "tax" on cell phones that drives up prices and hurts competition) in demanding 5% of the value of a cell phone up to $20 max for licensing its patented wireless technology to Apple and Huawei.

From the article:

"Qualcomm charges companies like Apple a set percentage of the total price of a phone in exchange for the right to use its technology, according to the antitrust suit filed by the FTC. The percentages vary, but Qualcomm generally charges 5 percent of the value of a device, up to a maximum of about $20 per device, according to a legal brief filed by Qualcomm. Phone makers like Apple and Huawei argue that Qualcomm demands a larger cut of each phone sale than is fair, but that they pay because Qualcomm essentially threatens to cut off their supply of important wireless chips if they don’t. The FTC describes this as a "tax" on cellular phones that drives up prices and hurts competition.

In court Friday, Apple executive Tony Blevins accused the chipmaker of strong-arm tactics. Blevins said that during negotiations in 2013, Qualcomm president Cristiano Amon told him, "I'm your only choice, and I know Apple can afford to pay it,” CNET reports."

It appears Apple was able to buy its replacement chips from its second source Intel but incurred some delays as it scrambled to integrate the Intel chips to cover for Qualcomm's refusal to reduce its price. It sounds like the mobile computing patent wars have resumed.

Copyright © 2019 Robert Moll. All rights reserved.

Thursday, January 10, 2019

Time - How America Risks Losing Its Innovation

The Time article How America Risks Losing Its Innovation highlights how the Federal government and military have played an important role in funding (i.e., long-term venture capital) technological innovation such as the Internet. Not exactly a new insight, but a well written article with some new stuff and high definition photos of American history.

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, January 9, 2019

USPTO - Webinar - Revised Subject Matter Eligibility Guidance

Today, the USPTO announced:

"Our Patent Quality Chat webinar kicks off the 2019 series on Jan. 10, from 2 – 3 p.m. ET, with "Revised Subject Matter Eligibility Guidance."

The discussion will focus on the USPTO’s recently-issued guidance published in the Federal Register [84 FR 50] on Jan. 7, implementing changes to USPTO procedures for determining subject matter eligibility under 35 U.S.C. § 101 for claims in patents and patent applications. This webinar will be helpful for anyone prosecuting patent applications or with an interest in statutory compliance with 35 U.S.C. § 101.

The USPTO’s Deputy Commissioner for Patent Examination Policy Bob Bahr and Senior Legal Advisor Matthew Sked will be discussing the revised guidance and the changes it makes to how USPTO personnel apply the first step of the U.S. Supreme Court’s Alice/Mayo test (Step 2A in Office guidance) for subject matter eligibility. Specifically, the revised guidance creates a new inquiry in Step 2A, in which a claim is not “directed to” a recited judicial exception if the claim integrates the judicial exception into a practical application. The revised guidance also groups the types of subject matter that are considered abstract ideas and directs USPTO personnel to use these groupings to identify abstract ideas in revised Step 2A. We look forward to hearing your thoughts and answering your questions about this revised guidance.

Please send your input and questions to

No registration is necessary to attend. More information, including how to attend, is available on our event page on the USPTO website.

The Patent Quality Chat webinar series is presented as a part of the USPTO’s continuous efforts to improve patent quality."

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, January 8, 2019

IP Watchdog - Exclusive: A Conversation on Self Driving Vehicles at the EPO with Roberta Romano-Götsch - Comment

Waymo will be testing self-driving cars in the SF Bay Area. Safe? I don't know, but you wonder compared to the ridiculous drivers texting down the road. And perhaps a way to "pack cars" into "tight traveling groups" to help address the crushing commuter traffic in SF Bay Area. Time will tell.

Interested in the patenting of self-driving vehicles in the European Patent Office (EPO)? I suggest reading the IP Watchdog interview: Exclusive: A Conversation on Self Driving Vehicles at the EPO with Roberta Romano-Götsch. It contains an interview with an EPO official, an EPO Study Patents and Self-Driving Vehicles (2018), and a graph showing the increase in EPO filings from 2011-2017.

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, January 5, 2019

USPTO - Revised Guidance for Determining Subject Matter Eligibility

Yesterday, the USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 and for application of 35 U.S.C. § 112 to computer-implemented inventions effective on January 7, 2019:

Section 101 guidance

Section 112 guidance

"These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu. "The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered."

"The 2019 Revised Patent Subject Matter Eligibility Guidance makes two primary changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is 'directed to' a judicial exception.

  • First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
  • Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is 'directed to' a judicial exception. In such a case, further analysis pursuant to the second step of Alice/Mayo test is required.
The Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).

These guidance documents have been issued concurrently to ensure consistent, predictable, and correct application of these principles across the agency.

The USPTO is seeking public comment on all the issues addressed by the two guidance documents. Additionally, we invite the public to submit suggestions to address future guidance supplements as part of their comments. Please submit written comments on these issues to on or before March 8, 2019."

Copyright © 2019 Robert Moll. All rights reserved.

Sunday, December 30, 2018

CAFC - Application in Internet Time v. RPX - Real Party In Interest

In Application in Internet Time v. RPX, the Federal Circuit vacated inter partes review (IPR) decisions invalidating two US patents because the Patent Trial and Appeal Board (PTAB) applied an unduly restrictive test for determining whether an entity (i.e., a RPX member) is a real party in interest within the meaning of 35 U.S.C. § 315(b) and failed to consider the entire evidence in assessing whether § 315(b) barred institution of the IPRs filed by RPX.

The Federal Circuit stated the PTAB erred in not further investigating whether the RPX member was the real party in interest even though RPX had communications back and forth with the RPX member and received a large payment from the RPX member just before the IPR petitions were filed.

In short, a defendant in a patent infringement suit that waits more than one year after being served is time barred from filing an IPR. 35 U.S.C. § 315(b). Thus, a defendant that is a member of an organization that files IPR to avoid the one year time bar might expect that PTAB will permit discovery on the relationship between the organization and the defendant to see if the defendant is a real party in interest and the organization is its proxy. The discovery may encompass the communications and the funding of the organization. Once the facts are ascertained it may affect the final IPR decision. Thus, a defendant should expect that it needs to file an IPR petition within one year of being sued rather than rely on a third party organization which may be held to be its proxy.

Copyright © 2018 Robert Moll. All rights reserved.

Friday, December 28, 2018

CAFC - In Re: Marco Guldenaar Holding B.V. - Dice Game Patent Ineligible under 35 USC 101

In Re: Marco Guldenaar Holding B.V., the Federal Circuit held a game with specially marked dice patent ineligible under 35 U.S.C. § 101.

Representative claim 1 recited:

A method of playing a dice game comprising:

providing a set of dice, the set of dice comprising a first die, a second die, and a third die, wherein only a single face of the first die has a first die marking, wherein only two faces of the second die have an identical second die marking, and wherein only three faces of the third die have an identical third die marking;

placing at least one wager on at least one of the following: that the first die marking on the first die will appear face up, that the second die marking on the second die will appear face up, that the third die marking on the third die will appear face up, or any combination thereof;

paying a payout amount if the at least one wager occurs.

The Federal Circuit held claim 1 was directed to the abstract idea of rules for playing a dice game. While a set of game rules may be patent-eligible if the claims contain an inventive concept sufficient to transform the abstract idea into a patent-eligible application, the claim recited placing a wager, rolling the dice, and paying a payout amount if at least one wagered outcome occurs none of which appellant disputes is conventional, either alone or in combination and special markings on the dice constituted printed matter outside the scope of § 101.

In an attempt to satisfy the second part of the Alice test, appellants argued the dice had markings on the die faces that were not conventional and their recitation in the claims amounted to "significantly more” than the abstract idea.

The Federal Circuit noted each die’s marking or lack of marking communicates information whether the player has won or lost a wager, similar to the markings on a typical die or a deck of cards. Further, the claim limitations are directed to information that is not functionally related to the substrate of the dice. In short, the markings constituted printed matter.

Just as the claimed steps of shuffling and dealing playing cards fell short in In re Smith, the Federal Circuit held the claims conventional and the markings insufficient to recite an inventive concept.

The Federal Circuit observed other games might be patent eligible, but I think games that are novel in the informational content may struggle to avoid that content being treated as "printed matter" and the game being held patent ineligible.

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, December 26, 2018

Chien & Wu - Decoding Patentable Subject Matter

Colleen Chien & Jiun Ying Wu's Decoding Patentable Subject Matter (2018) quantifies 35 U.S.C. § 101 rejections across different technologies and shows how the Supreme Court's decisions in Alice and Mayo affected the patent eligibility of software and medical diagnostics in the USPTO.

From the Abstract:

"The Supreme Court’s patentable subject matter jurisprudence from 2011 to 2014 has raised significant policy concerns within the patent community. Prominent groups within the IP community and academia, and commentators to the 2017 USPTO Patentable Subject Matter report have called for an overhaul of the Supreme Court’s “two-step test.”

Based on an analysis of 4.4 million office actions mailed from 2008 through mid-July 2017 covering 2.2 million unique patent applications, this article uses a novel technology identification strategy and a differences-in-differences approach to document a spike in 101 rejections among select medical diagnostics and software/business method applications following the Alice and Mayo decisions.

Within impacted classes of TC 3600 (“36BM”), the 101 rejection rate grew from 25% to 81% in the month after the Alice decision, and has remained above 75% almost every month through the last month of available data (2/2017); among abandoned applications, the prevalence of 101 rejection subject matter rejections in the last office action was around 85%.

Among medical diagnostic (“MedDx”) applications, the 101 rejection rate grew from 7% to 32% in the month after the Mayo decision and continued to climb to a high of 64% and to 78% among final office actions just prior to abandonment.

In the month of the last available data (from early 2017), the prevalence of subject matter 101 rejections among all office actions in applications in this field was 52% and among office actions before abandonment, was 62%. However outside of impacted areas, the footprint of 101 remained small, appearing in under 15% of all office actions. A subsequent piece will consider additional data and implications for policy."

Copyright © 2018 Robert Moll. All rights reserved.

Sunday, December 23, 2018

IAM - After China Win, Qualcomm Follows Up with A German Injunction

Joff Wild's article IAM After China Win, Qualcomm Follows Up with A German Injunction suggests China is stepping up its patent enforcement game.

China has been more lax in enforcing patents than the United States until recently. For many years, US courts automatically granted injunctions after a patent was held valid, enforceable, and infringed. 35 U.S.C. §154 suggested that they should be granted given a patent grants the right to exclude others from making, using, offering for sale, or selling the invention in the United States during the patent term.

But that routine grant of injunctions really stopped after EBay v. MercExchange. There the Supreme Court repudiated the Federal Circuit's practice of automatically granting injunctions. It recognized courts should grant injunctions in accordance with equity to prevent violation of patent rights on such terms as the court deems reasonable. 35 U.S.C. § 283. EBay basically set up some hurdles after a patent owner won its case. Going forward the patent owner seeking a permanent injunction would also need to demonstrate it satisfied a four factor test:

(1) that it has suffered an irreparable injury;

(2) that remedies available at law are inadequate to compensate for that injury;

(3) that considering the balance of hardships between the plaintiff and defendant, a remedy in equity
is warranted; and

(4) that the public interest would not be disserved by a permanent injunction.

Courts can grant permanent injunctions as part of a final judgment between competitors, but proving the four factors can be a challenge for patent owners when it involves non-competitors in the United States. Even though injunctions are becoming more common in China and Germany it was surprising to see how rapidly a chip designer such as Qualcomm was granted a preliminary injunction (not easy to get in the USA) against the Apple iPhone in China and a permanent injunction in Germany with no injunctive relief in sight in United States. Yes, these events suggest key patent litigation disputes may be decided on the "other side" of the earth.

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, December 18, 2018

Frakes & Wasserman - Irrational Ignorance at the Patent Office

Frakes & Wasserman, Irrational Ignorance at the Patent Office (2018) revisit the merit of Lemley, Rational Ignorance at the Patent Office (2001).

From the Abstract:

"There is widespread belief that the Patent Office issues too many bad patents that impose significant harms on society. At first glance, the solution to the patent quality crisis seems straightforward: give patent examiners more time to review applications so they grant patents only to those inventions that deserve them. Yet the answer to the harms of invalid patents may not be that easy. It is possible that the Patent Office is, as Mark Lemley famously wrote, “rationally ignorant.” In Rational Ignorance at the Patent Office, Lemley argued that because so few patents are economically significant, it makes sense to rely upon litigation to make detailed validity determinations in those rare cases rather than increase the expenses associated with conducting a more thorough review of all patent applications. He supported his thesis with a cost-benefit calculation in which he concluded that the costs of giving examiners more time outweighs the benefits of doing so.

Given the import of the rational ignorance concept to the debate on how best to address bad patents, the time is ripe to revisit this discussion. This Article seeks to conduct a similar cost-benefit analysis to the one that Lemley attempted nearly fifteen years ago. In doing so, we employ new and rich sources of data along with sophisticated empirical techniques to form novel, empirically driven estimates of the relationships that Lemley was forced, given the dearth of empirical evidence at his time, to assume in his own analysis. Armed with these new estimates, this Article demonstrates that the savings in future litigation and prosecution expenses associated with giving examiners additional time per application more than outweigh the costs of increasing examiner time allocations. Thus, we conclude the opposite of Lemley: society would be better off investing more resources in the Agency to improve patent quality than relying upon ex-post litigation to weed out invalid patents. Given its current level of resources, the Patent Office is not being “rationally ignorant” but, instead, irrationally ignorant."

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, December 12, 2018

IP Watchdog - Christmas Gifts for Patent Attorneys and Inventors - One More to the List - David Hricik and Mercedes Meyer Patent Ethics: Prosecution

Today, Gene Quinn of IP Watchdog says "no need to panic" and lists: Christmas Gifts for Patent Attorneys and Inventors.

I am not looking for a gift, but wish to add: David Hricik and Mercedes Meyer Patent Ethics: Prosecution (2016-2017). As stated in chapter 1: "This book comprehensively addresses ethical issues that face patent lawyers, patent agents, companies, and firms that prosecute and opine about patents. This edition also now includes a chapter devoted to post-disposition proceedings, including inter partes review under the AIA."

Not seeing anything like it on Amazon I ordered the Kindle version this week. I am still browsing this substantial book, but so far it appears very useful. I suggest review of the table of contents on Amazon to see what's covered. My mild criticism is this Kindle book is expensive, but still consider it money well spent given what's at stake. It's not the issues on "our ethics radar" that tend to cause problems -- it's the issues that aren't. This book should help spot ethics issues before they cause harm, which is "a gift that keeps on giving."

Copyright © 2018 Robert Moll. All rights reserved.