Monday, April 30, 2012

Professor Tu's Empirical Study of Examiner Allowance Rates

Dr. Tu, associate professor of law at West Virginia University, investigated the prosecution of every US patent issued over the last decade. The results are discussed in Luck/Unluck of the Draw: An Empirical Study of Examiner Allowance Rates an article forthcoming in the Stanford Technology Law Review. It appears that the article which Patently-O cited here has struck a nerve receiving 173 comments in Patently-O as of tonight.

This article supports that the final outcome of a patent application depends on the examiner as much as the applicable law, the merit of the invention, and the skill of the inventor(s) and patent attorney in preparing and prosecuting the application.

In this article, Dr. Tu identifies two populations of examiners that may be harming the USPTO: (1) some senior examiners (e.g., 5+ years in the PTO) that tend to act as a “rubber stamp” by allowing patents with little review and/or minor or no amendments to the claims; and (2) some junior examiners (e.g., less than 5 years in the PTO) that reject many “good” patent applications.

Dr. Tu notes the USPTO has an incentive system that generates these different populations of examiners.

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, April 29, 2012

Apple v. Samsung - 50+ Patent Disputes & Settlement in SF?

In April 2011, Apple filed a suit accusing Samsung Android smartphones and tablet of copying "the look and feel" of its iPad and iPhone. It sounded a bit strange for the press to refer to copying the "look and feel" since that theory of copyright infringement failed against Microsoft's Windows.

However, Apple's initial suit against Samsung was more than another copyright infringement action. It alleges infringement of seven utility patents, three design patents, three unregistered trade dress and three unregistered trade dress, and six trademarks.Whether or not each legal theory proves to be a winner, Apple and Samsung have filed a total of 50+ lawsuits against each other in ten countries in little more than one year.

Samsung is a valued supplier of hardware components for Apple products. Judge Koh of the United States District Court for the Northern District of California, noting the irony of strong business partners pounding each other in court, was able to get the CEOs agreement to meet for court-moderated settlement talks with another judge on May 21-22, 2012.

Given the stakes and range of issues, however, it is difficult to see a settlement on everything. Since Samsung's product sometimes bear a likeness to Apple's products, Apple's response to file another lawsuits also seems unlikely to end soon. So Apple and Samsung continue on "in a marriage" holding each other's hand all the while "punching each other" with their free hand. Still I don't think this marriage will end in divorce. They just need some help on defining the boundaries of the IP!

If you are interested in more details on Apple v. Samsung lawsuits, I suggest the following articles:

List of 50+ Apple-Samsung lawsuits in 10 countries - Florian Mueller of FOSS Patents gives the details of the Apple-Samsung 50+ suits filed in ten countries between April 2011 to April 2012.

Apple v. Samsung: 50 suits, ten countries -- and counting - CNET's Charles Cooper

Apple and Samsung CEOs to meet on May 21 and 22 for settlement talks in San Francisco court - FOSS Patents. Mr. Mueller says Apple's lawsuit in Spain affects the entire European Union, so the disputes extend to 31 countries!

Thanks to Alan Cooper for the CNET article!

Copyright © 2012 Robert Moll. All rights reserved.

Saturday, April 28, 2012

Yahoo v. FaceBook Patent Lawsuit - Links to Articles

The Yahoo v. Facebook case with twenty-two patents received lots of news coverage. Thus, I am supplementing my April 27 post with links to recent articles.

Yahoo escalates patent battle with Facebook - The Associated Press

Yahoo: Facebook Bought Patents Just to Countersue, They Should Be Disregarded - TechCrunch

Developments in Facebook's quest for patents ... - Washington Post

Yahoo Accuses Facebook of "Retaliation' in Patent Fight - PC Magazine

Yahoo escalates legal fight with Facebook, adds two patents to suit - LA Times

Copyright © 2012 Robert Moll. All rights reserved.

Friday, April 27, 2012

Yahoo Expands Patent Fight with Facebook

Today, Yahoo filed papers in court alleging Facebook infringes two more patents in the Yahoo v. Facebook patent infringement lawsuit. Thus, we now have 22 patents in this lawsuit.

Here are articles giving details:

Yahoo escalates patent battle with Facebook - The Boston Globe

Yahoo swings again at Facebook in patent war - CNET

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, April 26, 2012

Oracle v. Google - Copyright & Patent Trial - Days 6 - 9

Let's return to the "second happiest place" on earth: the Oracle v. Google trial. FOSS Patents here and Groklaw here continue to give detailed coverage of the trial, but each has a favorite: Groklaw is an unabashed Google cheerleader and seems at times to gush over Google's trial lawyer Mr. Van Nest plus sometimes not report unfavorable developments, while FOSS Patents falls into highly detailed analysis with at times speculation that leads to the same conclusion each time: Oracle deserves to win.

Recently, Florian Mueller of FOSS Patents disclosed he is consulting with Oracle in the future. Some of Groklaw's commenters were so unhappy about Mr. Mueller's disclosed conflict of interest they insisted he not post on this trial. I think the real reason is Mr. Mueller disagrees with their views.

Thus, we have some interesting articles on days 6 - 9 of the Oracle v. Google trial:

Day 6 (April 23rd):

Oracle Java patent rises like Phoenix from the ashes, can still be asserted at trial - FOSS Patents

Oracle asks court to clear up potential confusion over Apache license and Apache Harmony project - FOSS Patents

Week 2, Day 6 of Oracle v. Google ~ pj - Updated 2Xs - Groklaw

Day 7 (April 24th):

Google's Andy Rubin dodges David Boies' bullets - CNET

Copyrightability of Java APIs would be consistent with law and practice, not a 'substantial departure' for industry - FOSS Patents

Week 2, Day 7 at the Oracle v. Google Trial ~ pj - Updated 5X - Groklaw

Day 8 (April 25th):

Judge plans to inform jury that structure, sequence and organization of Java APIs are copyrightable - FOSS Patents

Oracle 'intends to assert [revived] patent in Phase Two', asks court to confirm -- Google opposes - FOSS Patents

Judge denies assertion of revived Oracle patent but Google still needs to take a license to it - FOSS Patents

Oracle v. Google - Day 8 Filings; Google (Potentially) Blows the Door Off Oracle's Copyright Claims - Updated with text document - Groklaw

Day 9 (April 26th):

Former Sun CEO Jonathan Schwartz says Google's Android didn't need license for Java APIs - CNET

Open-sourcing of Java and API copyrightability are entirely unrelated issues - FOSS Patents

Day 9 at the Oracle v. Google Trial ~ pj - Updated 5Xs - Groklaw

Trial: Former Sun CEO gets into catty fight with Oracle lawyer - ZDNet

Oracle tries to rebound with help from Sun co-founder (Scott McNealy) - ZDNet

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, April 25, 2012

Oracle Can't Reinstate the Reexamined Patentable '702 Patent In Trial

Today, Judge Alsup issued an order here rejecting Oracle's request to reinstate US Patent No. 5,966,702 (the '702 patent) in the trial.

To understand why Judge Alsup would not reinstate the patent, you have to consider the events leading up to the order. Before the trial was scheduled, the question arose whether to wait until the PTO had finished the reexaminations of certain Oracle patents. Google wanted to delay the trial until the PTO finished the reexaminations which could reduce the Oracle patents it would face at trial. Oracle wanted an early trial date so offered to dismiss with prejudice all patents that remained rejected "at the time of trial." An early trial must have been important to Oracle, because a dismissal with prejudice meant it could not sue Google for infringement of the '702 patent on the same technology in another lawsuit.

Judge Alsup's order stated in granting an early trial date he acted in reliance on Oracle's offer to dismiss the patents under a final office action if not reversed prior to trial.

Judge Alsup says Oracle is required to stand by its word, but what exactly was Oracle's word? In the order, Judge Alsup interprets Oracle's "at the time of trial" as beginning on April 16, but maybe it should be when the trial began with respect to patents. Oracle had argued the '702 patent is subject to reinstatement since the PTO reversed itself prior to the "patent trial." Only three days after the copyright phase of the trial started, on April 19, and well before the patent phase of the trial starting next week, the PTO mailed a notice of intent to issue an Ex parte reexamination certificate confirming the patentability of the asserted claims of the '702 patent.

Google argued it would be prejudiced if it had to prepare for a third patent, but aren't both parties intimately familiar with the '720 patent? Further, Judge Alsup has not balanced Google's prejudice against the prejudice to Oracle if it cannot assert the '702 patent against the Android. Is it a matter of balancing the parties respective interests or sticking someone with an interpretation that streamlines the trial?

Nonetheless, unless Oracle can successfully appeal or overturn this order, I don't see how Oracle can assert the '702 patent against Google for Android in the trial.

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, April 24, 2012

Apple's Tim Cook - When will you stop the patent litigation?

I must confess since Steve Jobs passed away, I have intermittently worried about Apple's future. Why? I buy all my computer gear from these guys! And it's no fun to switch vendors. I had to do this before. I had bought a string of Dell notebooks 1996 - 2004 then Michael Dell handed over the reins and things began to flounder, prompting me to investigate and switch my business to Apple. I hope Dell roars back, but for now am not looking to switch again.

Tonight, I read an article in ars technica about CEO's Tim Cook's response to an analyst's question about Apple's patent litigation that made me feel less concerned:

"I've always hated litigation and I continue to hate it," Cook said, but "we just want people to invent their own stuff." Cook went on to say that the company is open to the possibility of settling with the likes of Samsung, Motorola, et al "if we could get to some kind of arrangement where we'd be assured [they are inventing their own products] and get a fair settlement on the stuff that's occurred," but emphasized that such a thing would only happen as long as "Apple does not become the developer for the world."

Somebody handed me a ringing phone in the locker room today, and asked is this your phone? I did a double take: it looked just like my Apple iPhone 4S; it was a competitor's phone. Why do they slavishly copy even the physical appearance of the Apple iPhone?

Having been involved in several major patent litigation cases, I understand someone who says "I've always hated litigation and I continue to hate it." I also cannot blame a CEO who hates litigation but understands in the world it is necessary to avoid free-riding copyists.

Thinking Apple is overly litigious misses that copyists have forced this response and to not support its practice of protecting its inventions with patents undermines the profits allowing Apple to do great things in the future.

Copyright © 2012 Robert Moll. All rights reserved.

Monday, April 23, 2012

Intellectual Ventures and Patent Aggregators - Jeff Hartgarten

Last week Jeff Hartgarten, a student at the University of Minnesota, sent an email asking if  I could talk to him about patent aggregators. Soon after we had an interesting discussion, and Jeff published the article: U Invests in a 'Patent Troll' - Several schools worldwide either invest in or license patents through Intellectual Ventures. I noticed that when Google patent alerts listed the article. We probably don't agree on whether or not Intellectual Ventures is a benefit to society, but I appreciate Jeff interviewed quite a few people and took the time to listen to me. Jeff, good luck to you, I expect you will do well!

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, April 22, 2012

Google Patent Search Not Shut Down - GUI Modified

This modifies my post on April 22, 2012.

Jon Orwant of Google was nice enough to point out Google Patent is not being shut down, which I think is good news.

Here's Jon's email to me, which he gave me permission to post today

From: Jon Orwant [
Sent: Tuesday, April 24, 2012 7:58 AM
Subject: Google isn't shutting down Patent Search

Hi Robert,

Searching for patents on Google is the same as before; it's just that the entry screen looks different.  When you go to, that redirects you to in "Patents Mode" -- you can tell by the gray "Search patents" text in the search box, and by the red "Patents" on the left of pages of search results.  All of this is just cosmetics: patent search works the same and all the results are still there.

I had read Time Magazine's What Are You Doing to Google Patents, Google? as noting Google was shutting down Google Patent Search and redirecting search queries from Google Patent Search to Google's homepage. The Official Google Code blog had a post entitled: Spring cleaning for some of our APIs notifying the Patent Search API would be shut down per the following: Google Patent Search API (Deprecated) and Google patent search deprecation policy.

If you read the deprecation notice it is a bit confusing, but having tried Google Patent Search at that Jon emailed today, it appears Google has only modified the user interface and still limits a patent search to just patents and published applications.

Again thanks to Jon for clarifying this today. Thus, I can recommend searching on Google Patents as well as

Copyright © 2012 Robert Moll. All rights reserved.

Friday, April 20, 2012

Oracle v. Google - Copyright & Patent Trial - Day 5

It's day 5 of the Oracle v. Google trial for copyright and patent infringement. Here are the more interesting articles that I read tonight:

Android, Java, and the tech behind Oracle v. Google (FAQ). CNET - Stephen Shankland explains how Sun/Oracle's Java relates to Google's Android, the history leading up to the case, and some of Oracle slides presented to show how Google is infringing its copyrights. Mr. Shankland is a great tech writer and gives a nice introduction to this case.

Day 5 - Oracle v. Google Trial  - Groklaw is an unabashed Google cheerleader, but if you forgive them of that fact it can be fun reading.

The Lindholm testimony and the reality of Java licensing options - FOSS Patents. Florian Mueller gives detailed coverage of Timothy Lindholm's "famous" email and his testimony on day 4 of the trial, plus the details of the Java licensing options that drove Google into a collision with Oracle.

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, April 19, 2012

Oracle v. Google - Copyright & Patent Trial - Day 4

It's day 4 of the Oracle v. Google trial for copyright and patent infringement. Today, the media focused on Oracle's lawyer David Boies' questioning of Google's software engineer Tim Lindholm and Google's use of Java API's in Android.

Part of the questioning was particularly revealing. Shortly before Oracle sued Google in 2010, Google software engineer Tim Lindholm emailed a response to Google executives that had requested he investigate alternatives to Java for Android: "We've been over a bunch of these, and think they all suck. We conclude that we need to negotiate a license for Java under the terms we need." When Oracle's trial lawyer David Boies asked about this, Mr. Lindholm acknowledged his email, but claimed he was not referring to a license from Sun. It was "not specifically a license from anybody." David Boies had no further questions.

If you are interested in more detail about the Lindholm questioning, I suggest the following articles:

If you are interested in detail about the Java APIs, I suggest the following articles:

If Java APIs are copyrightable and Google has admitted using Java API's without a license, Oracle may have established liability for copyright infringement. However, this is hotly contested case, the trial is in the first week, and other issues may surface affecting liability.

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, April 18, 2012

Oracle v. Google - Copyright & Patent Trial - Day 3

Today is the third day of the Oracle v. Google trial for copyright and patent infringement. Media primarily focused on Oracle's trial lawyer David Boies' questioning of Google's CEO Larry Page.

If you are interested in the details, I suggest these articles:

Has the copyright case shifted in Oracle's favor?

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, April 17, 2012

Oracle v. Google - Copyright & Patent Trial - Day 2

Today is the second day of the Oracle v. Google trial for copyright and patent infringement.

If you are interested in the details, please see the following articles:

Tech titans testify in federal court - San Jose Mercury News.

Copyright © 2012 Robert Moll. All rights reserved.

Monday, April 16, 2012

Oracle v. Google - Copyright & Patent Trial - Day 1

Today, is the first day of the Oracle v. Google trial for copyright and patent infringement. The trial lawyers are making opening statements.

Here are Oracle's slides and Google's slides suggesting their respective cases.

If you are interested in the details, please see the following articles:

Today's the Day: Day 1 of the Oracle v. Google Trial in San Francisco. Groklaw beats many IP blogs for detail, but aims for the approval of the free and open source community. Thus, Google is cheered while Oracle jeered.

Oracle: Google used 'somebody else's property' when it created Android - San Jose Mercury News.

Silicon Valley Show Trial - CNET

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, April 15, 2012

America Invents Act (AIA) - Proposed PTO Fees for Post-Grant Procedures

If the USPTO wants the post-grant procedures of the AIA widely adopted, it must reduce the proposed PTO fees. Consistent with USPTO budgetary policy, the PTO does not need to charge the actual cost of a post-grant procedure. Instead, the PTO needs to only ensure that the total in user fees cover the aggregate of fees. It's just too expensive to ask that a third party pay $38,000 to petition for post-grant review of a patent with 20 claims. Worse, if the patent contains 41 claims, the petition to start post-grant review is $71,600. This way of structuring PTO fees only encourages patent attorneys to file more claims. It may become conventional wisdom: if you want to greatly increase the cost of challenging your patent, you should file more claims! Of course, more claims, means more work for examiners and attorneys, and more waiting while the examiners examine the additional claims.

The USPTO attempts to explain its fees and budgetary issues on the PTO web site here but I don't think many companies will spend the time to read it. So how much should the post-grant procedure cost? Perhaps inter partes reeexamination fees (prior to passage of AIA) can guide on setting the fee for inter partes review, and post-grant review might be a factor of three larger.

Copyright © 2012 Robert Moll. All rights reserved.

Saturday, April 14, 2012

Chief Judge Smith - Addressing Key Aspects of the America Invents Act

The Leahy-Smith America Invents Act Implementation web page contains news and information regarding the USPTO's implementation of the America Invents Act (AIA). As part of that effort, Chief Judge Smith of the Board of Patent Appeals and Interferences recently gave a message explaining the proposed rules for inter partes review (IPR), post grant review (PGR), covered business method review, and derivation under the AIA.

Chief Judge Smith says the public is regularly raising certain issues such as: (a) standards necessary to trigger inter partes (IPR) and post grant reviews (PGR), (b) the real party in interest requirement for an IPR/PGR petitioner, (c) timing for completion of a new trial, (d) the pro hac vice admission of non-registered practitioners, and (e) the definition of the term technological invention.

The following links give Chief Judge Smith's input on these key aspects of the AIA:
Copyright © 2012 Robert Moll. All rights reserved.

Friday, April 13, 2012

Apple's Former Chief Patent Counsel Chip Lutton Named General Counsel of Nest Labs

Today, Nest Labs announced Chip Lutton (former Apple patent chief) joined as general counsel. Mr. Lutton's arrival appears timely as Honeywell sued Nest Labs for patent infringement in February 2012. Because Mr. Lutton did a good job for Apple last decade, I became curious. Who is Nest Labs? I visited its web site here. Looks like an amazing collection of talent from Apple, Google, Logitech, and Microsoft making beautiful and smart digital energy efficient thermostats. Sure, it's a mudane topic, but as an owner of a big (drafty) house I am interested in reducing the PG&E bill.

I hope Nest Labs comes out on top in the patent litigation as my Honeywell thermostat is lousy. I would love to find out it makes sense to buy a Nest Labs thermostat. They look fantastic and who wouldn't like saving on the next PG&E bill.

For further details see the New York Times (blog) Apple's Former Patent Chief Joins Nest Labs

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, April 12, 2012

Importance of U.S. Patents: Evolving Views?

The Commerce Department released an economic report:  Intellectual Property and the US Economy: Industries in Focus in March 2012. A related USPTO news release says the report indicates that industries with intensive intellectual property (IP) contributed 40 Million Jobs and $5 trillion to the US Economy. Patent scholar Harold Wegner states it shows the importance of patents in creating jobs in the USA.

Harold Wegner states it is interesting to see the evolution of PTO Chief Economist Stuart Graham's thinking from the recent report to what he wrote in 2010: The Commerce Department White Paper (Patent Reform) and the High Technology Entrepreneurs and the Patent System: Results of the 2008 Berkeley Survey (Berkeley Patent Study).

More than an evolution Professor Rai's views influenced Mr. Graham in Patent Reform. Professor Rai is an eloquent writer who tends to influence others views. If you read Patent Reform it is classic Professor Rai setting forth these are our problems with the US patent system (e..g, application backlog), and here's how patent reform will fix them (e.g., grant PTO fee making authority).

UC Berkeley law professors Merges and Samuelson also influenced Mr. Graham in the Berkeley Patent Study. While Professor Merges does have an above the fray approach, Professor Samuelson has written negatively about software patents over the years. A large tech executive survey that indicated software patents are not that important would tend to influence all of the author's views.

As a patent attorney working with software and tech companies, the Berkeley Patent Study didn't greatly influence my thinking. Sure it was interesting hearing what tech executives think. But as Larry Ellison has pointed out in business "following a group" will not make you rich. The Berkeley paper did not prove software patents are not that important; it merely indicated some thought them not so important in 2008. And it didn't prove the group's thinking was right. It certainly offered no insight how a company can deal with the patents in the IT industry. If anything the Berkeley Patent Study lulled some into thinking software patents are not that important before the mobile patent war started in earnest. I guess when you don't have many patents it's easier to say they aren't so important.

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, April 11, 2012

Amazon Exposure to Lodsys' In-App Purchase Patents?

Tonight, Alan Cooper sent me a CNET article: Amazon's new Appstore feature could be patent suit baitAmazon had announced an in-app purchase feature that offers software developers the ability to give users the option of spending money inside an app. Even if I don't like such a feature on my kids' iPad that can in a series of taps ring up a bill, the in-app purchase feature appears to be a billion dollar cash revenue source. Of course, if there is money to made, someone will claim patent protection on it.

So the article notes that Amazon has not entered into a licensing agreement with Lodsys Group LLC.  Lodsys (web site here) is the owner of the U.S. Patent Nos. 5,999,908, 7,133,834, 7,222,078 and 7,620,565. Lodsys has not been well received in the press as Lodsys (1) seeks compensation from sometimes tiny software developers; (2) has rebuffed Apple's position that the app developers have a license through their relationship with Apple; (3) has its headquarters in Marshall, Texas; and (4) has presumably been already well compensated from license agreements reached with hundreds of companies including American Express, Apple, eBay, Google, Intuit, Microsoft, Nokia-Siemens, Nvidia, SAP, Sony-Ericsson, Verizon, and Nokia. I don't haven't studied and therefore cannot quibble with the patents, but wonder about the wisdom of a strategy of chasing tiny software companies for licensing fees especially in view of the reexaminations pending against some of the patents.

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, April 10, 2012

AOL's $1.1B Sale and License with Microsoft - What's Next?

The news coverage on AOL's $1.1B sale and licensing agreement with Microsoft continues. Most of that coverage attempts to place the agreement in context with a litany of patent transactions. However, what appears to be missing is a cohesive story on what to expect next. With that caveat, here are some links to that news coverage and my comment on what may be next for Microsoft:

Microsoft's AOL Deal Intensifies Patent Wars - New York Times

Microsoft fires latest salvo in patent war with $1 billion purchase from AOL - Washington Post

Microsoft deal with AOL part of patent scramble - BusinessWeek

Microsoft to snag over 800 patents from AOL - CBS News

Insight into AOL's Patent Portfolio - Envision IP

The last article published prior to the AOL sale gives the subject matter of the patents, but not the patent numbers. It would be nice to see how the purchased patents and licensed patents fall into the categories. This is not an academic exercise as purchased patents will translate into standing to sue for patent infringement, while non-exclusive licensed patents will not.

One may wonder why Microsoft, owning over 20,000 US patents, is willing to spend $1.1B to own 800 additional patents and obtain a non-exclusive license to 300 patent. Based on Microsoft's strategy to build a "bridge to collaborate" with other firms as described in Marshall Phelps and David Kline's Burning the Ships - Intellectual Property and the Transformation of Microsoft it appears Microsoft plans to (1) monetize the patents (e.g. sell or license), and/or (2) use the patents as leverage to get cross-licenses or non-assertion agreements from other software and Internet companies. For stronger firms such as Microsoft, this patent deal appears to be an exercise of option (2) to obtain freedom of operation. For weaker firms such as AOL, this patent deal appears to be an exercise of option (1) which is in essence giving up their patent portfolios to survive. The final outcome looks like a consolidation around the major IT companies.

Copyright © 2012 Robert Moll. All rights reserved.

Monday, April 9, 2012

AOL's Patent Sale and License: Microsoft to Pay $1.1 billion

Today, AOL signed an agreement with Microsoft to sell 800 patents and grant a non-exclusive license to 300 patents AOL retains for $1.1B. This works out to nearly $1 million per patent. And AOL's stock jumps 43%!

Here are a few links to news coverage on the AOL patent sale:

AOL surges 43% on $1 billion patent deal - CNN Money

AOL to make over $1 billion in patent sale to Microsoft - CNET

AOL Sells 800 Patents For $1.1 Billion To Microsoft [Memo to Staff] - Techcrunch

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, April 8, 2012

America Invents Act - New Inter Partes Reexamination Standard

As I noted on December 31, 2011, the America Invents Act (AIA) is implemented in a staggered way. Inter partes reexamination remains available until September 16, 2012, with a new standard for initiating an inter partes reexamination under 35 USC 312 that applies to all requests that are filed between September 16, 2011 and September 16, 2012.

The new standard is requests for inter partes reexamination must be based on "a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request" (RLP) rather than a "substantial new question of patentability" (SNQ). The House Committee Report indicated this new standard RLP should be viewed as an elevated threshold over SNQ, which had resulted in the PTO granting 95% of all inter partes reexamination requests.

However, the PTO's decision in In re Flaherty to deny patent owner's petition to vacate an order granting an inter partes reexamination on April 4, 2012 suggests that the new standard for inter partes reexamination is not so much an elevated standard but a different one.  

Under SNQ, a request had to be based on a question of patentability that was substantially new with respect to the original prosecution which gave deference to  examiner for issues considered in the original prosecution. 

Now we get a surprise as the "new" of SNQ is removed. Now the basis for granting the inter partes reexamination request can be grounded on the same issues considered in the original prosecution as long as the PTO believes that the requester has a reasonable likelihood of prevailing with respect to at least one claim. I expect this removal of deference to the examiner to further open the door for requesting inter partes reexamination for an original examination that misinterpreted pertinent prior art. Thus, I view this new standard as a lowered threshold for this common case despite the House Committee Report.

Copyright © 2012 Robert Moll. All rights reserved.     

Saturday, April 7, 2012

Rambus' Patent Roller Coaster Ride

I tend to post late at night. With kids and clients, it doesn't make sense to start before 10 pm to read articles and papers, select a topic and write up the post. If it's been a long day, however, sometimes I just give a link to the article that was the best of the set. Tonight that article is: Corporate Counsel's Inside the Failed Patent Litigation of Rambus, Inc. Whether you like or don't like Rambus, it is clearly a company built on the idea that patents matter.

Copyright © 2012 Robert Moll. All rights reserved.

Friday, April 6, 2012

Ergo Licensing v. CareFusion - Federal Circuit Finds Means-Plus-Function Claims Invalid Again!

This week Professor Crouch has a graph that confirms that patents with at least one means-plus-function claim (indicated by "means for") have steadily dropped for decades, e.g., from 45% in 1989 to 10% today. It's no wonder since 35 USC 112 will not permit them to be broadly interpreted and recently the Federal Circuit tends to hold them indefinite and invalid. 

The Federal Circuit describes means-plus-function claim in its recent decision: Ergo Licensing v. CareFusion: "Section 112, ¶ 2 requires that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 (2006). An applicant may express an element of a claim "as a means or step for performing a specified function . . . and such claim shall be construed to cover the corresponding structure . . . described in the specification and equivalents thereof." 35 U.S.C. § 112 ¶ 6. In exchange for the ability to use a generic means expression for a claim limitation, "the applicant must indicate in the specification what structure constitutes the means." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007). Such structure "must be clearly linked or associated with the claimed function." Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003). Failure to specify the corresponding structure in the specification amounts to impermissible pure functional claiming. Id. at 1211. "Although [§ 112 ¶ 6] statutorily provides that one may use means-plus-function language in a claim, one is still subject to the requirement that a claim `particularly point out and distinctly claim' the invention." In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). If an applicant does not disclose structure for a means-plus-function term, the claim is indefinite."

Let's see how this law plays out with respect to the facts in Ergo. There the '412 patent is described as a system to meter and deliver fluids into a patient. Each fluid is metered so different fluids may be delivered at different rates. To meter the fluids, adjusting means are associated with each fluid source to influence the fluid flow for each source. The adjusting means are coupled to a control device, which permits the selective actuation and control of individual fluid flow sources via adjusting means. The control device has data fields that describe the metering of the individual fluid flows. A screen and keypad  can input information into the control device such as the metering rate for each fluid flow source. 

For our discussion claim 1 is representative:
1. Multichannel metering system for metering preselected fluid flows, comprising:
a plurality of individual fluid flow sources;
a plurality of discharge lines, each line of said discharge lines being connected to a corresponding one of said fluid flow sources;
adjusting means associated with said fluid flow sources for acting on said fluid flow sources to influence fluid flow of said fluid flow sources;
programmable control means coupled with said adjusting means for controlling said adjusting means, said programmable control means having data fields describing metering properties of individual fluid flows;
an operating surface connected to said control means;
data input means for input of data into said control means, said data input means being at least partially connected to said operating surface;
data output means for output of data from said control means, said data output means being connected to said operating surface;
selector switch means forming a part of said data input means, said selector switch means including a plurality of selector switches, each selector switch being associated with a set of said fluid flow sources for representing segments of data fields belonging to a corresponding set of fluid flow sources on said operating surface, said each selector switch functionally connecting said data input means with said data fields belonging to said associated set of fluid flow sources.
(emphasis added)

The Federal Circuit focused on the "programmable control means" italicized in claim 1. Ergo, the patent owner, argued the "control device" was a general purpose computer and the corresponding structure for the function recited in the programmable control means in claim 1. The Federal Circuit noted a general purpose computer could not perform the function recited in the programmable means. The Federal Circuit held saying the control device included memory did not help, because memory is not a structure capable of performing the function of controlling the adjustment means. Yet the Federal Circuit noted if the specification recited an algorithm to perform the function, the patent would have satisfied the definiteness requirement of 35 USC 112.

The Federal Circuit stated: "Until recently, we have consistently required "that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor." See Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). "Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to `the corresponding structure, material, or acts' that perform the function, as required by section 112 paragraph 6." Id. Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.

In re Katz Interactive Call Processing Patent Litigation identified a narrow exception to the requirement that an algorithm must be disclosed for a general-purpose computer to satisfy the disclosure requirement: when the function "can be achieved by any general purpose computer without special programming." 639 F.3d 1303, 1316 (Fed. Cir. 2011). In In re Katz, we held that "[a]bsent a possible narrower construction" of the terms "processing," "receiving," and "storing," the disclosure of a general-purpose computer was sufficient. Id. We explained that "[i]n substance, claiming `means for processing,' `receiving,' and `storing' may simply claim a general purpose computer, although in means-plus-function terms." Id. at 1316 n.11. In other words, a general-purpose computer is sufficient structure if the function of a term such as "means for processing" requires no more than merely "processing," which any general-purpose computer may do without any special programming. Id. at 1316-17. If special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed."

Given these difficulties why did means-plus-function claims appear in 45% of the patents roughly two decades ago? I am not sure, but sometimes they correspond to what is invented. Further, they are easy to write. You simply recite "means for" and the function performed. Identifying a structure is not part of claim drafting. Further, it is easy to convert a method claim into a means-plus-function claim.

Despite the ease factor, most companies may want to limit their use in the broadest claim for several reasons. Recently, courts routinely invalidate mean-plus-function claims if it appears the structure is not highly detailed. Courts interpret means-plus-function claims to only cover the exact corresponding structure, i.e., no equivalents are afforded. And as a matter of experience, examiners do not interpret them so narrowly. Instead any means performing the recited function is relevant for raising a prior art rejection. Some may complain that this tendency in examination is unfair. But these problems at least in examination have been known for years. And unlike dissenting Judge Newman and patent blogger Gene Quinn, I don't think this case departs from recent Federal Circuit case law.

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, April 4, 2012

Facebook Countersues Yahoo for Patent Infringement - Links to Articles

The Yahoo v. Facebook case with twenty patents has received lots of news coverage. Thus, I am supplementing my April 3rd post with links to recent articles:

Facebook Accuses Yahoo of Infringing on Patents - New York Times

Facebook files patent countersuit against Yahoo - BusinessWeek

Facebook brings patent counterclaim against Yahoo - San Jose Mercury News

Facebook files patent lawsuit against Yahoo - USA Today

Facebook launches patent counterattack against Yahoo - Reuters

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, April 3, 2012

Facebook Countersues Yahoo for Patent Infringement

When I was an associate at WSGR, a partner advised me: "Bob, if you ever advise a client to sue for patent infringement you better first check if the defendant has its own patents... otherwise, your client may get countersued!"

Today, Facebook countersued Yahoo for infringement of ten patents. I am guessing that Yahoo expected the countersuit, but sued based on an assessment that the Yahoo patents resulting in $290 million of Google stock would do just as well in days leading up to the Facebook's IPO.

 If you are interested in more detail regarding the Facebook patents, please see the Wall Street Journal article: Yahoo v. Facebook v. Yahoo: An Early Breakdown

Copyright © 2012 Robert Moll. All rights reserved.

Monday, April 2, 2012

Australia's CSIRO Licenses Wi-Fi Patent for $229 Million

Australia's Commonwealth Scientific and Industrial Research Organization (CSIRO) reached a $229 million settlement with Acer, AT&T, Leveno, Sony, and T-Mobile for a license to its Wi-Fi patent.

Mr. Steven J. Vaughan-Nichols' Australian government patent troll collects from Wi-Fi Vendors gives the details in ZDNet today. I enjoyed this article, but found the conclusion that CSIRO is a patent troll unsupported given the industry's decision to license rather than challenge the validity of the patent.

The total for CSIRO is over $430 million given it made over $200 million licensing the patent to 3Com, Asus, Buffalo Technologies, D-Link, Dell, HP, Microsoft, Intel, Microsoft, Netgear, Nintendo, and Toshiba  in 2009. See ZDNet article for information on some of the settlements reached in 2009 here.

Note Columbia Law School Professor Richard Stern's article, Preventing abuse of IEEE standards policy.

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, April 1, 2012

Apple's Touch Screen Patent - Let Innovation Reign

Over the last decade, I have become a big fan of Apple products. They simply work; they don't make me think! In fact, we have five iPhones (will be six if son #2 gets straight A's this quarter), four Macbook Pros, a Macbook, and a number of iPods.

What's this have to do with patents? I don't like picking on Google but the Android software seems to copy some of Apple's software. In economics, we might say Google appears to be "free riding" on Apple's effort. You innovate since that is hard and expensive, you put it out in the public and I will wait to see if the market likes it, and if so, copy your innovation. In The Economic Structure of Intellectual Property Law, Judge Richard Posner and Professor William Landes state the consequence of giving expansive intellectual property protection is balanced by the potentially debilitating effect of free riding on the production of goods that involve a high ratio of fixed to marginal costs such as the iPhone. Thus, each time I hear Apple is successful in enforcing its patents on features that differentiate it, I think good for Apple (and me). Thus, I was glad to hear on Saturday that Judge Posner was siding with Apple for the most part on the touch screen patent lawsuit against Motorola Mobility.

Florian Mueller has a detailed account of Apple's victory here.

Apple Insider has a nice summary plus interesting comments here.

Copyright © 2012 Robert Moll. All rights reserved.