Thursday, May 31, 2012

Google Complains Microsoft and Nokia Using Patent Trolls to Attack Android

Tonight, CNET has an interesting article Google blasts Microsoft, Nokia for hiding behind patent trolls that discusses Google's submission of reports to the FTC and European Commission that claim Microsoft and Nokia are acting anticompetitively by using patent trolls to wage litigation against companies that might otherwise adopt the Android operating system. The reports are private to Google and the agencies.

Thanks again to Alan Cooper for sending the article my way.

Copyright © 2012 Robert Moll. All rights reserved.

America Invents Act - Proposed Rules to Implement Micro Entity Provision of the America Invents Act

On May 30, 2012, the USPTO published proposed rules for the micro entity reduced fees of the America Invents Act (AIA). The proposed rules tell how to: (i) claim micro entity status; (ii) notify of loss of micro entity status; (iii) pay micro entity fees; and (iv) correct erroneous claims for micro entity status. If you qualify as a micro entity, you get 75% reduction in certain PTO fees (not in attorney fees).

For details see the Federal Register Notice: Changes to Implement Micro Entity Status for Paying Patent Fees

The sixty-day public comment period runs from May 30, 2012.

Also see the AIA micro-site for other details.

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, May 30, 2012

Apple's Touchscreen Patent - Google Requesting Ex Parte Reexamination?

Florian Mueller of FOSS Patents suggests that Apple's U.S. Patent No. 7,479,949, Touch Screen Device, Method, And Graphical User Interface for Determining Commands by Applying Heuristics (the '949 patent) "probably scares the living daylights out of Google's Android Team."

Very funny, but I am having difficulty imagining Google's Android team quaking in fear over the '949 patent after its patent victory in Oracle v. Google.

At the same, Florian may be right that Google is the real party behind the request for ex parte reexamination (Enter 90/012,308 in PTO PAIR for the papers) of the '949 patent filed on May 24, 2012. Here are a few reasons the speculation may be correct:

1. In Oracle v. Google, Google used reexamination to eliminate five of seven Oracle patents from trial.

2. Google must continue to protect the Android ecosystem (e.g., the handset manufacturers). This summer Motorola (now Google) and Samsung, the leading Android handset manufacturer must defend themselves against the '949 patent, which relates to how to interpret user swipes on a touchscreen into computer commands. It would be extremely beneficial to attack the '949 patent before the parties go to trial.

3. Although  the ‘949 patent is currently the subject of an ITC investigation, Certain Electronic Digital Media Devices and in federal district court litigation Apple v. Motorola, Google may be reluctant to directly attack Apple's patent due to exposure it may have on other Apple patents. This goes to why ex parte reexamination rather than inter partes reexamination was requested.

4. Perhaps the weakest point is the Bryan Cave law firm that filed the request for ex parte reexamination has recently represented Google on another IP matter.

Yes, the inferences and scant evidence highlight we don't know who is the real party in interest for ex parte reexamination.

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, May 29, 2012

Apple CEO Tim Cook on Patents - D: All Things Digital Interview

Apple CEO Tim Cook is the first speaker at the D: All Things Digital Conference. He is being interviewed by Walt Mossberg and Kara Swisher today.

Here are WSJ's Ina Fried's notes of Tim Cook's interview. The patent part of the interview runs from 6:51 - 6:58 p.m. Tim Cook notes Apple can’t afford to paint a painting and then have someone else sign their name to it." And it is important for Apple not be the developer for the world. We just want other people to invent their own stuff. Walter replied but lots of folks are suing Apple, too. Cook replied yes, and the vast majority of those are standards-essential patents and no one should be able to get an injunction based on those patents. This makes sense to me as the threat of an injunction reduces the probability that the parties can efficiently reach an agreement on what is a fair reasonable and non-discriminatory (FRAND) royalty rate.

If you read the interview, it is clear Walter Mossberg and Kara Swisher of The Wall Street Journal are the the right people for the job. See the New Yorker article Critical Mass - Everyone listens to Walter Mossberg. Although Walter is pro on Apple in recent years, I don't think he is willing to just accept whatever Tim Cook says. He does provide an opportunity for Tim to state his view, but questions him if it doesn't make sense.

I haven't attended but judging from the speakers the annual D: All Things Digital conference also appears to be a good choice for the interview. In the last decade Walter Mossberg has partnered with Journal columnist Swisher and they strike the right blend of empathy and skepticism in interviewing people. For example, their interview of Bill Gates and Steve Jobs is priceless.

Copyright © 2012 Robert Moll. All rights reserved.

Monday, May 28, 2012

I Programmer - Free Online Magazine for Software Programmers

Tonight, I read a few articles on I Programmer, an online magazine for software programmers. In general, the magazine covers lots of topics that should be interesting to programmers plus to a lesser extent those seeking software patents.

The first article I read was Mike James' The Oracle v. Google Trial IProgrammer Reads the Patents. It's refreshingly candid. Mr. James notes patents are not the easiest reading in the world. They follow a stylized format that isn't particularly designed to convey the ideas that are important in the patent and they use a form of words that attempts to make the ideas seem as clever and innovative as they can be.

Mr. Jame's candidly admits after much group discussion about the Oracle-Google trial, I suddenly realized that none of my colleagues had read the patents - neither had I and this meant we were all talking about something we didn't know anything about. So I decided to find out what the patents really cover by reading them from cover to cover - the results were interesting.

Maybe this is no big deal, but I have read articles where it seems clear the author did not stop to read the patents. Why? It is difficult reading! So the journalist/blogger reads maybe the abstract, a little background, glances at an independent claim and then not understanding the technology all that well rehashes everybody else's views. If you subscribe to Google patent alerts, you know what I am talking about. The big news item breaks (e.g., Yahoo threatens to sue Facebook) and a spate of articles are written that all say the same thing.

Mr. James states at the end of reading US Patent No. 6,061,520, entitled Method and System for Performing Static Initialization, his opinion is that if this is patentable they all could be filing about 10 patents a week, if not more.

I am uncertain with Mr. James' conclusion on this patent, but it seems genuine and based on his own understanding after reading the patent. My questions are whether or not the conclusion (1) avoids hindsight (using the invention to be a template to reconstruct the invention) and (2) evaluates obviousness using only the prior art existing when the invention was made (e.g., on the filing date of April 7, 1998) rather than what we know years later in litigation?

The second article I read Patent Wars shows graphically the big picture of the mobile patent wars. See the graph of the relationship between the tech companies, their patent suits and purchase-sale transactions in the mobile computing field.

Copyright © 2012 Robert Moll. All rights reserved.

Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use

In Leader Technologies v. Facebook the Federal Circuit held all of the asserted claims of U.S. Patent No. 7,139,761 (the '761 patent) were invalid under 35 U.S.C. § 102(b), because Leader had offered for sale and publicly demonstrated software that embodied the claims prior to the critical date.

The founder of Leader Technologies (Leader) Mr. McKibben and Jeffrey Lamb conceived the invention in 1999. Then they developed software to build a commercial product referred to as Leader2Leader®, which they completed around 2002. Around that time, Leader offered for sale Leader2Leader® and demonstrated it to a number of companies. For example, in January 2002, Leader presented a white paper to the Wright Patterson Air Force Base and offered 20,000 software licenses to Leader2Leader®.The white paper described the functionality of Leader2Leader®. Leader stated it was commercializing the product for the government, commerce and education and the platform was operational with low user volumes. In November 2002, Mr. McKibben demonstrated the Leader2Leader® software to Boston Scientific, a demonstration that he described as flawless. By December 8, 2002, Leader had demonstrated and offered Leader2Leader® to a number of other companies, including American Express and The Limited.

In seeking US patent protection, Leader initially filed a 60-page provisional application on December 11, 2002 (pages 1-7 are in the style of a patent application, but the detailed description section is sketchy and pages 8-60 have only pseudo code rather than source code for a number of claim limitations. Query how much should this matter?) and a non-provisional application on December 10, 2003.

The Federal Circuit said the central issue was whether the Leader2Leader® product admittedly in public use and on sale prior to December 10, 2002 fell within the scope of the asserted claims, rendering them invalid under 35 U.S.C. § 102(b). Given how much it would have helped it is curious the Federal Circuit did not explain why the critical date was not December 11, 2001 based on the provisional application. To understand why you have to review the trial court's opinion: Leader Techs., Inc. v. Facebook, Inc., 770 F. Supp. 2d 686 (D. Del. 2011). The trial court found that substantial evidence supported the jury's ruling that the '761 patent was not entitled to the priority date of the provisional application. The court noted claims are entitled to the earlier filing date of the provisional application only if the prior application describes the invention in sufficient detail so that one skilled in the art can conclude that the inventor invented the claimed invention as of the filing date sought.

As the court did not believe this was the case stating:

Leader contended that its expert, Dr. Herbsleb, demonstrated that each element of the asserted claims was supported by the provisional application. However, Dr. Herbsleb also admitted at trial that the source code in the provisional application on which he relied to support the presence of numerous claim elements was only a "pseudo code." According to Dr. Herbsleb, "pseudo code" is not a real programming language and cannot function if compiled into an executable program. Leader contends that one of Dr. Herbsleb's students, Dr. Cataldo, built an implementation of an embodiment of the '761 patent based on the provisional application; however, Dr. Herbsleb testified this embodiment did not actually work and, in any event, it did not rely on the code disclosed in the provisional application because that code, again, was incomplete pseudo code. Moreover, the co-inventor of the '761 patent, Jeff Lamb, testified that certain elements were missing from the provisional application, such as the tracking movement of users and the associating metadata with user created content elements. Accordingly, the Court concludes that the evidence was sufficient to support the jury's conclusion that the asserted claims of the '761 patent are not entitled to the priority date of the provisional application. Consequently, the appropriate critical date for purposes of applying the on sale bar and public use bar is December 10, 2002, which is one year prior to the filing date of the '761 patent.

It may sound like another typical case where someone lost its US patent because the invention was commercialized too early, but this is not why the Leader Technologies v. Facebook is so instructive. Instead, it tells us the specification of a provisional application must support each claim that is subsequently submitted with the nonprovisional application to maintain the provisional filing date. Finally, a provisional specification may not support the claims which may not be discovered until invalidating commercialization has occurred.

Copyright © 2012 Robert Moll. All rights reserved. 

Saturday, May 26, 2012

Plasmart v. Kappos & Wang - Federal Circuit Reverses Validity in Inter Partes Reexamination - Non-Precedential Opinion

Let's talk about the Federal Circuit's recent decision Plasmart, Inc. v. Kappos & Wang that reversed the Board of Patent Appeal's decision that all claims were patentable during an inter partes reexamination.

Unlike many of the tech inventions, you may have seen this one ... at least it's in my driveway -- it's the ever present twistcar. It's not recommended for adults, but you simply twist the handlebars to make it go. See U.S. Patent No 6,722,674 (the '674 patent). Briefly, the invention relates to a safety wheel 24 added to prevent a scooter from flipping over. The wheel 24 is connected to the free end of a supporting arm (23) that extends frontwardly from a twister member (2) to which a pair of driving wheels (21 and 22) are also attached. See col.3, lines 30-45 and Figures 4 and 5.

Even though Plasmart is "low tech" some real money is at stake, the case was worth reading and 55 comments on Patently-O's article suggested others felt the same way. I was surprised that the case was so analyzed and discussed and yet only one comment noted it is a non-precedential opinion.

As a non-precedential opinion Plasmart has limited utility, because it is not the law and cannot be cited in legal briefs. Despite its depth of analysis, what it would add to the body of the law and how prospective defendants might like to cite it, Federal Circuit Rule 47.6(b) says it cannot be be cited as precedent. One commentator recently noted 80% of federal court opinions are designated non-precedential. Yet, the Federal Circuit warns any attorney using a non-precedential opinion in a brief (See In re violation of Rule 28(c)) would violate the Federal Rules of Appellate Procedure or the CAFC Local Rules of Practice and likely be sanctioned.

Copyright © 2012 Robert Moll. All rights reserved. 

Wednesday, May 23, 2012

Oracle v. Google - Jury Rules No Patent Infringement

Yesterday, I read about the jury's struggle to understand the patent claims and how they apply to the Android software. For details see CNET's Oracle-Google jury stymied by more technical questions.

Today, I read the jury found no infringement. It is difficult to assess how much complexity led to this result, but whatever occurred non-infringement tends to be a potent defense. For details see Ars technica's Oracle v. Google: no patent infringement found and CNET's Jury verdict: Android doesn't infringe Oracle's patents.

Also see FOSS Patents Jury doesn't find Google to infringe two Oracle patents -- but the litigation is far from over for ramifications and a copy of the patent verdict.

Further, see Ars technica's Oracle v. Google jury foreman reveals: Oracle wasn't even close and Oracle poured millions into failed patent trial, but will fight on.

Thanks to Alan Cooper for emailing: CNNMoney Google vanquishes Oracle in Android patent fight.It's a nice summary of the case, but the title is hyperbole.

Finally, see Google Scores Victory in Battle with Oracle.

Copyright © 2012 Robert Moll. All rights reserved. 

Monday, May 21, 2012

WIldTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101

The Supreme Court is pushing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. ___ (2012)(Mayo) as the standard to use in assessing whether software/Internet related subject matter is eligible for patent protection.

In WildTangent v. Ultramercial, the Supreme Court recently wrote: The petition for a writ of certiorari is granted [G]. The judgment is vacated [V], and the case is remanded [R] to the United States Court of Appeals for the Federal Circuit for further consideration in light of Mayo.

The question presented? Whether, or in what circumstances, a patent's general and indeterminate references to 'over the Internet' or at 'an Internet website' are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 USC 101? Supreme Court Rule 14 requires the questions presented for review should not be argumentative, but apparently it didn't matter.

In Mayo, the Supreme Court rejected a medical diagnostic patent as encompassing an unpatentable law of nature once you remove the conventional steps. Justice Breyer's analysis dissects the claim: (1) to determine what is conventional in the claim; (2) to subtract the conventional part from the claim; and (3) to determine if the remaining part of the claim sets forth a law of nature (i.e., scientific principle). If the answer is yes to (3), the claim is ineligible for a patent according to Justice Breyer, since judicial law says you can't patent a law of nature. However, this conflates the patent eligibility of 35 USC 101 with the rejected point of novelty test.

The Federal Circuit had held US Patent No. 7,346,545 (the '545 patent) patentable subject matter. It relates to a particular method of giving a copyrighted product to a consumer for watching an advertisement over the Internet.

Claim 1 is representative for this analysis:

1. A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

first step of receiving, from a content provider, media products that are covered by intellectual-property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data;

a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

Frankly, Judge Rader understands 35 USC 101 and correctly held claim 1 patentable, since it requires a computer executing a software program with considerable complexity. This is not an abstract idea. It may have not been so great, however, to say the '545 patent discloses a practical application of an idea, because it sounds like State Street rather than In re Bilski. Anyway, now that the Federal Circuit has to deal with the GVR, it will be reconsidering whether or not claim 1 is patentable subject matter under 35 USC 101. At least the Federal Circuit refused the temptation to talk about the gist of the '545 patent being an idea that advertising can be used as a form of currency. Too often the press, the courts, and the patent community give a pithy summary of the claim that sticks to everyone's mind and never get back to the actual claim language, which impacts the legal analysis.

35 USC 101 does not support the Supreme Court's willingness to jump into the long standing software patent debate (Congress had an opportunity to legislate software patents out of existence in the recently passed America Invents Act, but remained silent), and require the Federal Circuit instead apply this new Mayo test that dissects a patent claim, discards whatever a court thinks is conventional then determines subject matter eligibility with whatever remains in the claim. Instead, Mayo's point of novelty patent eligibility test merely helps the Supreme Court implement its desire to rein in patents.

Copyright © 2012 Robert Moll. All rights reserved. 

Sunday, May 20, 2012

Kappos v. Hyatt - 35 USC § 145 Proceedings Allow New Evidence Beyond Record in PTO

In Kappos v. Hyattt, 132 S.Ct. 1690 (2012), the Supreme Court gave a favorable standard for patent appellants that need to introduce evidence after losing on appeal to the Board of Patent Appeals and Interferences (Board).

If the Board affirms the examiner's rejections under 35 USC  §131 a patent applicant has two options: (1) a direct appeal to the Federal Circuit under 35 USC §141; or (2) an action against the PTO Director in federal district court under 35 USC §145. One can also abandon the application or file a continuation, but one unwilling to narrow the rejected claims in the continuation should not expect much.

Harold Wegner notes that a direct appeal to the Federal Circuit is a long shot, because an appellant will not be able to challenge the facts if there is "substantial evidence" to support the facts, which means the Federal Circuit will not reverse the Board’s decision on facts if a reasonable mind might accept the evidence as adequate to support a conclusion. For example, this standard would apply to the Board's factual findings underlying a legal conclusion of obviousness.

In Kappos v. Hyatt, the Supreme Court found no limits on applicants ability to introduce new evidence in a 35 USC § 145 proceeding beyond the limits set forth in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Further, Supreme Court held if new evidence is presented on a question of fact, the district court must make de novo (i.e., anew) findings that consider the new evidence and the USPTO record.

Companies are stretching to keep legal costs low. The majority had reasoned that "purposely concealed evidence" in the PTO was unlikely since it would undermine the case. However, given today's tight budgets, some may want seek to not file all of the favorable evidence such as that contained in declarations to avoid the expense and risk. However, holding back some favorable evidence may risk some court holding it was "purposely concealing evidence" rather than "reasonable management of legal costs" and that the evidence should not have been admitted by the district court.

In the past, appellants rarely filed a 35 USC § 145 action. Instead, most appealed directly to the Federal Circuit. Now I expect Kappos v. Hyatt will encourage more to file a 35 USC 145 action when (1) a continuation is unlikely to result in claim coverage that properly protects the invention, and (2) appellants need to introduce new evidence in the record in support of patentability.

Finally, I should note those losing an AIA post-grant proceeding at the Board will need to appeal directly to the Federal Circuit and will not be allowed to file a 35 USC § 145 actions

Copyright © 2012 Robert Moll. All rights reserved.

Saturday, May 19, 2012

Oracle v. Google - Copyright & Patent Trial - Groklaw Posts Trial Exhibits

To his credit Judge Alsup has insisted that the Oracle v. Google trial be as public as possible. Because of this stance, Groklaw was able to collect and post a PDF copy of the publicly available trial exhibits today. They are currently grouped by trial date but Groklaw is talking about matching each exhibit to the appropriate Groklaw article.

See Groklaw's The Oracle v. Google Trial Exhibits - Can You Help List Them?

Copyright © 2012 Robert Moll. All rights reserved.

Friday, May 18, 2012

In re Baxter International - Federal Circuit Affirms Ex Parte Reexamination Invalidity Over Litigation Validity

In the recent case In re Baxter International, the Federal Circuit affirmed the Board's decision in an ex parte reexamination that claims 26-31 of U.S. Patent No. 5,247,434 (the '434 patent) are invalid despite the fact the Federal Circuit previously affirmed a federal court's decision that claims 26-31 were not invalid. That's startling! Doesn't the Federal Circuit agree with its previous decision? And no, it is not a matter of a different CAFC panel.

The Federal Circuit explained as follows:

"Lest it be feared that we are erroneously elevating a decision by the PTO over a decision by a federal district court, which decision has been affirmed by this court, the following additional comments must be made. When a party who has lost in a court proceeding challenging a patent, from which no additional appeal is possible, provokes a reexamination in the PTO, using the same presentations and arguments, even with a more lenient standard of proof, the PTO ideally should not arrive at a different conclusion. However, the fact is that Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings. Usually one would expect that any such reexamination, such as the one before us, would raise new issues. In this case, the patent examiner relied on new prior art that had not been raised in the prior district court proceeding. Why Fresenius [the defendant in related litigation] did not present that prior art before the district court we do not know. But the Director apparently found that a substantial new question of patentability had been raised and the examiner was then entitled to conduct a reexamination on the basis of the new art presented and her search of the prior art. Thus, this case is not about the relative primacy of the courts and the PTO, about which there can be no dispute. Finally, we could not conclude that the PTO was barred from conducting the reexamination of the ’434 patent because of the final judgment in Fresenius without over-ruling Ethicon and Swanson, which we cannot do."

In re Baxter International highlights ex parte reexamination is not subject to a legal estoppel from the court decision such as applies to inter partes reexamination. Further, it reminds that patent challengers have a lower evidentiary standard in ex parte reexamination than in federal court. In ex parte reexamination, the challenger must only prove invalidity by a preponderance (i.e., it's more likely than not); in court, the challenger must prove invalidity by clear and convincing evidence. Accordingly, ex parte reexamination may be preferably over litigation if you seek to prove a US patent is invalid over written prior art.

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, May 17, 2012

AOL Giving Shareholders $1B Cash From Patent Sale

Last month AOL agreed to sell 925 patents to Microsoft for $1.1 billion and granted Microsoft a non-exclusive license to its remaining software patents relating to advertising, search, social networking, mapping, streaming and security. Next Facebook agreed to buy 625 patents from Microsoft for $550 million. This month AOL announced a plan to give shareholders 100% of the proceeds from its $1.1 billion patent sale, but the details are being worked out. AOL stated it could think of no better use for the money. AOL may have gained investor goodwill on this transaction, but now it has no extra cash on hand to address the major challenges ahead.

See details in CNNMoney's article: AOL to give shareholders all proceeds from patent bonanza

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, May 16, 2012

Post-Grant Proceedings Under the America Invents Act - The 12 Month Rule

On May 15, 2012, Teresa Stanek Rea of the USPTO posted: Building a Better Post Grant on Director Kappo's Blog. She talks about how the USPTO plans to build a better post-grant proceedings under the America Invents Act (AIA) that will serve as an efficient alternative to patent litigation. 

Ms. Stanek Rea states "Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals." Ms. Stanek Rea notes the AIA establishes post-grant review, inter partes review and the transitional program for covered business method patents by the Board of Patent Appeals and Interferences (Board) which will be referred to as the Patent Trial and Appeal Board.

Congress has limited the length of these post-grant proceedings to 12 months, plus six months for exceptional cases. To explain how the PTO will complete a post-grant proceedings in 12 months Ms. Stanek Rea states:

1. The PTO is adding many judges with considerable patent prosecution and litigation experience to the 120 judges currently on the Board.

2. The PTO's rule making will incorporate input from the user community, the PTO,  the federal court, the ITC,  and interferences.

3. The AIA's post-grant procedures rules will be streamlined to what is essential to decide the case. Thus, dilatory practices, wasteful motions, and procedural traps that drove older interferences to last 4-7 years will not be permitted.

4.  Judges will be given great latitude to shepherd cases to stay on schedule.

Although Ms. Stanek Rea envisions reaping the benefits of a straightforward process (e.g., a trial), implemented by experienced judges, resulting in a fair and efficient proceeding, the post doesn't address how the PTO will keep stay on such a tight schedule plus reduce the backlog of more than 30,000 ex parte appeals now pending.

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, May 15, 2012

Nvidia and Intellectual Ventures' Joint Purchase of Nearly 500 Wireless Patents

As Nvidia shifts into mobile computing, it has purchased nearly 500 wireless patents presumably to help reduce exposure to patent infringement lawsuits. Privately held IPWireless initiated the deal when it offered the patents to Nvidia, which contacted Intellectual Ventures to evaluate the patents, resulting in Intellectual Ventures and Nvidia agreement to jointly purchase the patents from IPWireless. IPWireless will retain a license to the patents and Nvidia will license the patents it did not purchase. The financial terms were not released. Intellectual Asset Management stated senior IV executives told it why the market should expect more such deals.

Other details are given in the following articles:

Nvidia picks up wireless patents in mobile push - Baltimore Sun

Nvidia, Intellectual Ventures buy wireless patents - Marketwatch

Nvidia Grabs Wireless Patents - Forbes

Nvidia, Intellectual Ventures Jointly Purchase 500 Wireless Patent - PC Magazine

Nvidia, Intellectual Ventures partner to acquire 4G patents - Engadget

Nvidia teams with Intellectual Ventures to acquire patents - Venture Beat

NVIDIA buys 500 patents to take on Qualcomm -

Copyright © 2012 Robert Moll. All rights reserved.

Monday, May 14, 2012

Board of Patent Appeals Backlog Enormous and Growing

On May 3, 2012, Director Kappos noted that the Board of Patent Appeals and Interferences (BPAI) has a large backlog of ex parte appeals. How large? In April 2012, Chief Administrative Judge Smith gave a presentation with slides at the AIPLA Spring Conference that indicates the growing backlog is over 30,000 cases.

The USPTO has made various attempts to attack the enormous backlog. In December 2011, Chief Judge Smith proposed various ways to streamline the appeals process in a blog post here but the backlog continues to grow. In the AIPLA presentation in April 2012, Chief Administrative Judge Smith suggests per curiam decisions and hiring more administrative judges would help.

Hiring more administrative judges, streamlining the appeal process, and per curiam decisions will help, but to really reduce the backlog the USPTO must increase the quality of initial examination. One way to increase quality is to liberally encourage PTO interviews. Interviews to discuss concrete detailed proposed amendments and replies are the best way to identify issues, reach a mutual understanding, and proceed on how to claim an  invention with respect to the prior art. Examiners should initiate interviews and never refuse a request for an interview even after a final Office action. One reason applicants appeal is they have grown frustrated with a revolving door of prior art rejections, i.e., a paper exchange that goes round and round and is even at times sustained by some examiner's desires to get another RCE on their docket. Until we address this type of  problem in examination, the appeal backlog is not going away.

This is not to suggest every application interviewed contains patentable subject matter and should result in a patent. Instead, the result should be that applicants and examiner understand what claims, if any, are patentable. And examination should end with a mutual understanding that nothing further would be gained by an appeal to the Board. Reaching a mutual understanding requires listening to someone with contrary views. It is difficult work, but I don't see how to avoid it. We don't need to hire more administrative judges or examiners, but retain and hire better examiners and administrative judges, who can rapidly assimilate the technology, the legal arguments and are paid sufficiently that they can make a career at the PTO. If we retain the best examiners, we will see the backlog reduced. And everyone should benefit from their experience. Otherwise, we accept that some of the best examiners opt to leave for law firms after working a few years at the PTO, that we have large backlog at the examination which includes 42% RCEs, and that we have an appeal backlog of about 30,000 cases.

On September 16, 2012, the America Invents Act (AIA) will add new post-grant procedures to the ex parte appeal workload being handled by the BPAI (later the Patent Trial and Appeal Board (PTAB)). Thus, the PTO needs to turn this around in the next six months to avoid further growth of the appeal backlog.

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, May 13, 2012

The Patents and Trademarks of Steve Jobs at the Smithsonian

The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World is being exhibited at the Smithsonian's Ripley Center Museum, Concourse, sublevel 3 from May 11 to July 8, 2012. Steve Jobs is best known as the Apple and Pixar CEO rather than as a prolific inventor. Yet he was granted over 300 U.S. patents that have affected many lives. He also is responsible for many Apple trademarks that are associated with Apple worldwide. The link above and below show part of the exhibit, but if you visit the Smithsonian, please take photos and send to my email address (on the  right hand side) so we can post it.

Steve Jobs Didn't Invent Design, But He Patented It - NPR

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, May 10, 2012

Twitter's Innovator's Patent Agreement - Unlikely Adoption

Tech companies require employees assign inventions related to the company's business. It has been this way for many decades. Last month Twitter's innovator's patent agreement (the Twitter agreement) seeks to change all that by giving its employee-inventors control how their patent will be enforced. In short, a company adopting the Twitter agreement cannot enforce a patent unless: (1) the inventor gives permission; or (2) the company is acting defensively.

The Twitter agreement is welcomed as revolutionary, noble, a trend for software startups, and a way to reduce patent litigation, but I expect the Twitter agreement will not receive widespread adoption in Silicon Valley. Reasonable minds can differ and changes to the Twitter agreement may change my mind, but I see some problems with the Tweeter agreement:

1. The Twitter agreement subjects a patent to the wishes of the inventor or to defensive use. What if an inventor's interests don't align with management? What happens if an employee (e.g., departing to work at competitor) decides to withhold permission? Does this mean decisions about enforcement will be made by an inventor who may not even work at the company?

2. The Twitter agreement allows the company to "act defensively" but this definition is broad. It appears a company can argue any patent related contact by a defendant is a "threat" and claim it is "acting defensively." It allows one to "act defensively" in offensively asserting a patent if the defendant has offensively asserted a patent in the last ten years. That opens the door for filing a patent infringement suit against many major tech companies. Given this loop hole, an inventor may disagree with the company's assessment of "acting defensively." Will this create friction as the company appears to renege on its promise of inventor control?

3. Twitter's agreement permanently encumbers a patent to reduce patent litigation, to recruit engineers who hate the thought of patents being asserted in court, and to retain valued employees. But shareholders and investors may simply see the Twitter agreement as resulting in corporate waste. This may sound harsh, but investors may question: you had patents that could be used as the company saw fit, but now they are encumbered permanently to an inventor's control? When you have joint inventorship, the inventor can sublicense the patent to the defendant that was sued if the inventor views the company has breached the Twitter agreement.

4. Last month I read that Twitter has no US patents. If so, I expect companies with large patent portfolios in a patent intensive industry (e.g., mobile computing) won't have an adequate motive to encumber their patents. Twitter gives up little while those with large patent portfolios are asked to encumber hundreds and even thousands of patents.  

5. It is not that desirable when the parties cannot settle their differences and must turn to the courts. But the Twitter agreement will not reduce patent litigation much unless many companies agree it. To get a handfulof companies to disarm (drop offensive use of patents) means they have less "ammunition" than others in the industry. Twitter won't reduce patent litigation filed by trolls, because they won't sign the Twitter agreement, and have no exposure to patent infringement suits.

6. Investors may be reluctant to invest in startups with patents that have encumbrances on how they can be enforced. A patent may be a critical asset before profits are made and if the startup fails. Patent brokers may not want to buy encumbered patents, which reduces the investors' returns if the company fails.

I enjoy hearing from family and friends through Twitter, but think this current Twitter agreement will have problems in the implementation. Supporters hope this agreement is widely adopted and software developers can produce software without fear of patent infringement lawsuits, but I don't see it. It asks companies to set aside their patent rights and pass control for an asset to any name inventor whose interest may no longer align with that of the management. Shareholders and investors will not be happy to reduce the value of patents for little in return.

For details see Twitter Gambles on a Patent Plan - Wall Street Journal

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, May 9, 2012

Oracle v. Google - Copyright & Patent Trial

The focus of the Oracle v. Google trial has clearly shifted to the patent phase: US Patent No. 6,061,520 to Yellin et al. and US Reissue No. 38,104 to Gosling.

However, considerable commentary exists on the undecided copyright issues. See FOSS Patents here and Groklaw here. It sounds like the major copyright issues will not be decided until Judge Alsup rules on whether or not Java API's are copyrightability (e.g., due to the doctrine of compatibility), Google gets a new trial on the "indivisible" question of infringement and fair use of the Java APIs or Oracle and Google stipulate Judge Alsup can decide the issue of fair use.

In the meantime, Oracle's trial lawyer questioned Mr. Rubin's decision to ignore the Sun patents while developing the Android OS. It may be intended to make Mr. Rubin look irresponsible, but many engineers ignore patents to avoid knowledge supporting willful infringement and potentially enhanced damages. Professor Lemley's Ignoring Patents suggests Mr. Rubin merely follows conventional practice. Although some companies develop non-infringement positions, many ignore patents, and learn they infringe (e.g., before an IPO) and it is expensive to invalidate a patent in court. Hopefully, this high profile case will convince companies to think about reviewing patents, designing around, and requesting post-grant procedures as part of the software development process.

Mr. Rubin's saying there are "hundreds of millions of patents" to consider begs the question: Did Google patent attorneys make any effort to design around the Sun Java patents? Is it even possible to implement the Android OS while not infringing the Java patents? Answers may have to await phase 3 on damages.

Also see the following articles for more details:

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, May 8, 2012

Oracle v. Google - Copyright & Patent Trial - Patent Phase

Google has filed a motion for a mistrial and the copyright case has issues of whether there is fair use and the Java API's are copyrightability. Nonetheless, the Oracle v. Google trial has moved to patents so let's ignore the messy partial verdict of the copyright case and focus on the patent case tonight.

As background, Oracle initially asserted Google's Android OS infringed seven US patents. Google responded by requesting reexamination of the patents in the PTO, and only two emerged as patentable. This eliminated much of Oracle's patent case. Then three days after the copyright trial began, the PTO reversed the invalidity of one of the five Oracle patents taken out of the trial, but Judge Alsup rejected Oracle's request to reinstate that patent as too late based on his understanding that Oracle agreed to drop any of the reexamined patents not held patentable at the start of the trial in exchange for an early trial. I posted on this April 25, 2012 here. Thus, Oracle asserts infringement of only US Patent No. 6,061,520 to Yellin et al. and US Reissue No. 38,104 to Gosling

Oracle and Google gave opening statements, and Oracle took testimony from Google employees (e.g., Mr. Lindholm and Mr. Rubin). FOSS Patents here and Groklaw here continue to give coverage on the case. Also see the following articles for details:

Copyright © 2012 Robert Moll. All rights reserved.

Monday, May 7, 2012

Oracle v. Google - Copyright & Patent Trial - Jury Issues Partial Verdict

Today, the jury delivered a partial verdict of copyright liability in the Oracle v. Google trial. 

FOSS Patents here and Groklaw here continue to give detailed coverage. Also see the following articles:

Oracle v. Google jury returns partial verdict, favoring Oracle - CNET - Rachel King and Dan Farber

Legal experts decipher Oracle-Google verdict - CNET - Charles Cooper, Elinor Mills, and Daniel Terdiman

Copyright © 2012 Robert Moll. All rights reserved.

Sunday, May 6, 2012

Survey Response Due Tomorrow To Avoid Removal from Roll of Active Practitioners

If you are a practitioner (e.g., patent attorney or agent) with a registration number less than 25,000, you must respond to a survey letter that was mailed earlier this year to remain on the roll of active practitioners.

If the PTO fails to get a response tomorrow, you will be removed and required to pay a reinstatement fee.

For additional details see Patently-O: Survey Response Required to Remain on USPTO Rolls

Copyright © 2012 Robert Moll. All rights reserved.

Saturday, May 5, 2012

Oracle v. Google - Copyright & Patent Trial - Jury Deliberating

The jury is still deliberating on copyright liability in the Oracle v. Google trial.

FOSS Patents here and Groklaw here continue to give detailed coverage, but you may want to also read the following articles:

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, May 3, 2012

CSIRO Wi-Fi Protocol Patent Owner - Patent Troll?

On April 2, 2012, I posted an article reporting 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 protocol patent.

As I was reading ars technica tonight, I came across Joe Mullins' article How the Aussie government "invented Wi-Fi" and sued its way to $430 million implying that CSIRO is a patent troll, e.g., a patent owner asserting a dubious patent that it does not commercially practice.

Although Mr. Mullins seems to agree with Steven J. Vaughan-Nichols that CSIRO is a patent troll, See Vaughan-Nicols' Australian government patent troll collects from Wi-Fi Vendors, Mr. Mullin's article appears to be premised on the view that a new combination of old elements has suspect validity despite contrary Federal Circuit patent law.

At the same time, Mr. Mullins' article received over 300 reader comments and not all of it positive especially from Aussies that complained that he mischaracterized it the Wi-Fi patent when the claims only covered a component of the Wi-Fi protocol. Whether all of the comments were right, Mr. Mullin felt compelled to address the comments in his Responses and clarifications.

Then in the Australian publication DeLimiter Renai LeMay wrote Is the CSIRO a patent troll? US debate turns feral favorably on Mr. Mullin's article with again lots of adverse comments by Aussies. 

Obviously a controversial topic, but the bottom line is CSIRO has obtained over $430 million given it earlier received 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.

The validity of CSIRO patent was greatly disputed at trial, but the case settled after four days of testimony. If the patent was dubious, why the settlement? What appears to be missing from the PTO PAIR records is a request for ex parte reexamination of the patent. Apparently, despite the tone in the press that the patent was dubious, none of the defendants were willing to take on that challenge in the PTO given the monetary stakes.   

Copyright © 2012 Robert Moll. All rights reserved.

Wednesday, May 2, 2012

Oracle v. Google - Copyright & Patent Trial - Day 13

The jury is still deliberating on copyright liability in the Oracle v. Google trial. FOSS Patents here and Groklaw here continue to give detailed coverage, but you may also want to read the following articles:

Thanks to Alan Cooper for the articles.

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, May 1, 2012

Oracle v. Google - Copyright & Patent Trial - Days 10 - 12

The jury is deliberating on copyright liability in the Oracle v. Google trial. FOSS Patents here and Groklaw here continue to give detailed coverage, but if you need humor or a dramatic take on what happens if Oracle wins on copyright liability read the articles: The Register, Dr. Dobbs, and Forbes below. If you want to understand the copyright issues, on the other hand, I suggest reading Edward J. Naughton's article below.

Day 10 (April 27):

Day 12 (May 1):

Copyright © 2012 Robert Moll. All rights reserved.