Oracle v. Google - EFF Amicus Brief - Java APIs not copyrightable

EFF attorneys Julie Samuels and Michael Barclay filed an amicus brief for certain prominent computer scientists. Although not a patent topic, it involves IP protection of Java APIs, which have functional aspects so deserves a quick pointer. The amicus brief supports Google's position that Oracle's Java APIs cannot be copyrightable for reasons of software development. The table of contents of the brief outlines some of the PC history as support for the position.

I expect Oracle faces an uphill battle in getting the Federal Circuit to reverse the district court's decision that the Java APIs are uncopyrightable. But some are quite sure this is wrong. See e.g., FOSS Patents EFF's amicus briefs in Oracle v. Google suggest non-copyrightability is only path to interoperability. Florian Mueller concludes "The right balance must be struck, and in my opinion Google and the EFF's positions are too far on the anti-IP side. That's why I can't support them, though I support the cause of interoperability (more consistently than they do)."

Copyright © 2013 Robert Moll. All rights reserved.

David Kappos - Investing in America's Future Through Innovation

Former USPTO Director David Kappos, now a partner at Cravath Swaine & Moore, LLP, recently wrote an interesting article in The Stanford Technology Law Review: Investing in America's Future Through Innovation: How the Debate over the Smartphone Patent Wars (Re)Raises Issues at the Foundation of Long-Term Incentive Systems.

Copyright © 2013 Robert Moll. All rights reserved.

Last Resort for the Prior Art - The Weird Stuff Warehouse

When we talk about assessing validity of a computer-related patent, we typically search on patent databases and Google. And if you can't find the prior art there, it better be an important case to rummage through the prior art repository of last resort: The Weird Stuff Warehouse! If the photos at the prior link don't convince you, look at this month's featured items. Old tech doesn't die, it retires.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO - After Final Consideration Pilot (AFCP) 2.0 to Reduce RCEs

The USPTO has a growing backlog of requests for continued examinations (RCEs). Professor Crouch's article USPTO Takes Action to Reduce RCE Backlog has a chart showing consistent growth from about 20,000 RCEs in March 2009 to 110,000 RCEs in March 2013.

As Professor Crouch noted, the USPTO is interested in reducing the RCE backlog so decided to return to the prior practice of giving examiners the same credit for examining RCEs as original applications. This will help, but the USPTO recognizes it will take more than that.

Thus, recently the USPTO published a Notice on After Final Consideration Pilot Program 2.0 (AFCP 2.0), which is also intended to tackle the RCE backlog. AFCP 2.0 basically allots time for the examiner to consider responses filed after a final rejection. AFCP 2.0 is effective May 19, 2013 to September 30, 2013.

To participate the AFCP 2.0 papers must reply to a final rejection and include (1) a transmittal form (e.g., PTO/SB/434) that requests AFCP 2.0 consideration; (2) an amendment to an independent claim that does not broaden its scope; (3) a statement applicant can interview the case with the examiner; and (4) use of the Electronic Filing System (EFS). Other PTO fees (e.g., an extension or extra claim fees) for the response must still be paid, but AFCP 2.0 request doesn't entail another PTO fee.

Upon receipt of the AFCP 2.0 submission, the examiner will verify if it's complete. If incomplete, the submission is handled according to after final practice, 37 CFR 1.116. If the examiner determines the AFCP 2.0 submission is complete, but doesn't result in allowance, the examiner will request an interview. The examiner will use the AFCP 2.0 time allotted (e.g., three hours) to review the response and interview. The AFCP 2.0 may help reduce the RCE backlog, but not if examiners hold the responses typically require further search or consideration that exceeds the allotted time. Further, allotting three hours to review a response, search the prior art, determine patentability, and interview the case may prove insufficient for examination of complex subject matter.

Copyright © 2013 Robert Moll. All rights reserved.

Judge Richard Posner and Former Chief Judge Paul Michel Clash - Is the Patent System Working or Broken?

Today, we hear the US patent system is broken, but there are also arguments that it just needs to be recalibrated. On May 14, 2013, The Federalist Society had a panel discussion with Court of Appeals for the Seventh Circuit judge Richard Posner, former Federal Circuit judge Arthur J. Gajarsa, former Federal Circuit Chief judge Paul R. Michel, and Court of Appeals for the DC Circuit judge Douglas H. Ginsburg:  Is the Patent System Working or Broken A Discussion with Four Distinguished Federal Judges. This discussion had lots of interesting contrasting viewpoints. The video runs one hour and 26 minutes.

Copyright © 2013 Robert Moll. All rights reserved.

Alcatel-Lucent v. Newegg - Comment on Joe Mullin's Article Newegg nukes "corporate troll" Alcatel in third patent appeal win this year

In Newegg nukes "corporate troll" Alcatel in third patent appeal win this year Joe Mullin reports that Alcatel-Lucent had e-commerce on the ropes in 2011 given favorable settlements with Amazon, Intuit, Kmart, Lands End, Overstock.com, Sears, QVC, and Zappos for infringement of US Patent No. 5,649,131. However, things changed as a jury invalidated the '131 patent and the Federal Circuit affirmed the judgment.

Newegg's chief legal officer Lee Cheng appears to have earned Mr. Mullin's respect. Mr. Cheng now laments having insufficient patent troll lawsuits to generate favorable law. Most may not think reducing lawsuits is bad news, but would agree it is good news when a bogus patent is invalidated. But invalidating the '131 patent may not "nuke" Alcatel-Lucent given it owns 27,000 patents, many of which were acquired from Bell Labs.

I am uncertain why Alcatel-Lucent is a "corporate patent troll." Mr. Mullin notes: "Even though Alcatel-Lucent has billions in revenue from real businesses, when it comes to patent battles Cheng doesn't see them as being so different. Since Alcatel is asserting patents in markets it's nowhere near actually participating in he sees them as a kind of "corporate troll. 'It's an operating company that happens to hold a patent,' said Cheng. 'But it does nothing at all to bring the benefit of that patent to society.'" So one cannot license a patent and leave manufacturing to a licensee without being a troll?

I like to hear why you are right, not why the other party is bad. Mudslinging makes me suspect the merits of the case are lacking. It reminds me when a senior associate insisted I read his legal brief not so much for input but for my admiration: you know, young lawyer here's how we do it around here. I recall it didn't dwell on the merits but argued: (1) Your honor I appreciate your fine record; (2) the other party is a bad actor; (3) you hold a big stick your honor and I respect you for that; and (4) now without delay may it please you to stick the other party with the full measure of your judicial wrath! Yes, let me see you swing that big stick so the other party understands. Yes, all this in a civil case. It was embarrassing to read as I think he expected a compliment. But what could I say? Good job ... the other party will get the big stick for sure!

Also see Professor Michael Risch's article in Wired Don't Blame the Trolls for the Patent Problem.

Copyright © 2013 Robert Moll. All rights reserved.

Richard Hill Don't Turn My Company Into A Patent Troll!

Mr. Richard Hill, Chairman and interim CEO of Tessera Technologies, a designer of semiconductor technologies wrote an article in Forbes Don't Turn My Company Into A Patent Troll that does a nice job of explaining why non-practicing entities who seek to license US patents should not be lumped together with the bad actors, i.e., the so-called patent trolls.

It is not a matter of politeness to refer to a company like Tessera as a NPE rather than a patent troll. As Mr. Hill notes he is defending against a Board takeover with Starboard Value LP which seeks to defund company R&D and focus on seeking contingency fee patent litigation dollars. He calls this "cutting down the apple tree to harvest the apples."

I haven't met Mr. Hill nor do I have any involvement with Tessera, but he appears to be headed in the right direction and I wish Tessera well in its effort to continue to innovate and license its innovation in the semiconductor industry.

Updated May 28, 2013: Mercury News - San Jose's Tessera Technologies loses proxy showdown with hedge fund, agrees to sweeping management changes.

Copyright © 2013 Robert Moll. All rights reserved.

Yale Law School - Patent Troll Panel April 2013

Today, Lisa Larrimore Ouellette's article on Patently-O: Patent Troll Panel at Yale Law School raises some interesting points that came up at Yale Law School. I appreciated whether you refer to patent-assertion entities (PAEs), non-practicing entities (NPEs), or patent trolls, we must focus on bad behavior and a patent system that sometimes issues patents that enable bad behavior not on whether the patent owner practices the invention.

Copyright © 2013 Robert Moll. All rights reserved.

Introduction to Standards - SSO, FRAND, SEP, Hold-Ups, and Royalty-Stacking

Courts have increasingly been asked to resolve disputes that relate to patents that read on industry standards. A commentator (see Economist article below) notes in the 1990's the US had only two FRAND disputes, while since 2008 the US had 17 FRAND disputes.

How patents relate to standards can be confusing. First, standards are set by committee, very technical, and once adopted taken for granted. Even well known standards such as the protocols for Wi-Fi can be quite technical for many and run thousands of pages. After you digest the technical details of the standard, you have thousands of patents that are declared essential to the standard but unsurprisingly use different terminology. Further, you have quirky terms surrounding the standards such as SSOs (standard setting organizations), FRAND (Fair, Reasonable and Non-Discriminatory) terms, SEP (Standard Essential Patents), and funny concepts like hold-up (Reach for the sky!), and royalty-stacking.

We can't blame the confusion on academics as we have had lots of informative articles on legal aspects of standards. See e.g., Stanford professor Mark Lemley and Cal professor Carl Shapiro's A Simple Approach to Setting Reasonable Royalties for Standard-Essential Patents.

If you need an introduction, I recommend The Economist article Standard procedure - If companies cannot agree on "reasonable" patent royalties, courts must decide. How? It should make standards less mystifying. The article also describes how federal district court judge Robart set the FRAND royalty rates that Microsoft should pay Google for licensing the Motorola Mobility patents relating to IEEE 802.11 (Wi-Fi) and H.264 (Advanced Video Coding).

Copyright © 2013 Robert Moll. All rights reserved.

CAFC - CLS Bank v. Alice - Software Patent Eligibility?

On May 10, the Federal Circuit delivered its 135-page opinion in CLS Bank v. Alice Corp. denying patent eligibility to Alice's software related patent claims. 6 out of 10 judges have a different view on software patent eligibility. Despite what the media says, it provides no legal precedent.

IP Watchdog reports in Federal Circuit Nightmare in CLS Bank v. Alice Corporation to not knowing what to say and being flabbergasted by the Federal Circuit's lengthy opinion. Groklaw gleefully reports "The Federal Circuit. OMG. We've worked hard for so many years to get to this point, I almost can't believe it. And I suppose it's possible it could be appealed, but this is proof of what I've always told you, that education is never a waste. Judge Rader is very upset, I gather. He has written a dissent. But he didn't prevail. And I'm sure he gave it his best effort. OMG."

Chief Judge Rader and Judge Moore wrote in dissent: "Let’s be clear: if all of these claims, including the system claims, are not patent-eligible, this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents."

I don't see this as the end, because of the lack of unanimity, which may lead to the US Supreme Court hearing this case. Even if, I don't expect the controversy to end until (1) we don't have a US patent system; and (2) patent attorneys, software inventors, and judges agree to quit thinking about it.

See Michael Barclay's CLS Bank v. Alice Corp.: Abstractness Seems to Be a Problem With No Easy Solution, professor Dennis Crouch's CLS Bank v. Alice Corp: Court Finds Many Software Patents Ineligible, and Joe Mullin's On key software decision, top patent court grinds to a stalemate - Ten judges, seven opinions, 135 pages, zero legal precedent.

Copyright © 2013 Robert Moll. All rights reserved.

Schumer Bill to Expand Post-Grant Review Beyond Business Methods Patents Used in Financial Products and Services

On May 2, U.S. Senator Charles Schumer introduced a small but important senate bill (S. 866) that would expand post-grant review (PGR) to a patent claiming a method or apparatus for performing data processing or other operations used in the practice, administration, or management of an enterprise, product, or service. Currently, the transitional business method patent review is limited to business methods used in financial products and services. This bill would allow a PGR challenge to all business method patents under 35 USC 101, 102, 103, and/or 112. Senator Schumer's press release gives details. This bill would make business method patent review a permanent law.

Copyright © 2013 Robert Moll. All rights reserved.

Subcommittee on Courts, Intellectual Property and the Internet - Hearing on Abusive Patent Litigation

In recent years, patents have become the subject of many Congressional bills. Because the House Judiciary Committee introduces many of the bills, it is a good place to look if you want an early sense where US patent law reform may go next.

Here is a recent hearing from the Subcommittee on Courts, Intellectual Property and the Internet on April 16, 2013: Abusive Patent Litigation: The Issues Impacting American Competitiveness and Job Creation at the International Trade Commission and Beyond.

If you review the statement of the Judiciary Committee Chairman Bob Goodlatte and the statements of the witnesses it suggests reasons why the SHIELD Act finds some support despite its apparent flaws.

Copyright © 2013 Robert Moll. All rights reserved.

America Invents Act - Professor Abrams and Wagner's Poisoning the Next Apple: How the America Invents Act Harms Inventors

Is the America Invents Act a misnomer? It's beginning to look that way with respect to small entities. In a Stanford Law Review article, Poisoning the Next Apple: How the America Invents Act Harms Inventors, David Abrams and R. Polk Wagner of University of Pennsylvania Law School state: "The America Invents Act, the most significant patent law reform effort in two generations, has a dark side: It seems likely to decrease the patenting behavior of small inventors, a category which occupies special significance in American innovation history."

Mr. Abrams and Wagner note: "In this paper we empirically predict the effects of the major change in the law: a shift in the patent priority rules from the United States’ traditional “first-to-invent” system to the predominant “first-to-file” system.

While there has been some theoretical work on this topic, we use the Canadian experience with a similar change as a natural experiment to shed the first empirical light on the question. Our analysis uses a difference-in-difference framework to estimate the impact of the Canadian law change on small inventors. Using data on all patents granted by the Canadian Intellectual Property Office and the US Patent and Trademark Office, we find a significant drop in the fraction of patents granted to small inventors in Canada coincident with the implementation of first-to-file. We also find no measurable changes in patent quality and perform several additional analyses to rule out alternative explanations.

While the net welfare impact that can be expected from a shift to first-to-file is unclear, our results do reveal that, contrary to the conventional wisdom, the March 2013 implementation of a first-to-file rule in the U.S. is likely to result in reduced patenting behavior by individual inventors."

Although the America Invents Act was presented by Congress as reform that would lead to the "promised land," the article paints a different picture of the likely impact of the America Invents Act: a smaller fraction of US patents granted to small entities.

I also expect the America Invents Act one-year grace period will reduce the number of US patents granted to small entities. Small entities will engage in activities that may be later viewed as on sale or public use prior to the filing date. Arguing the activities are experimental may fail or prove expensive to establish. To understand why the one-year grace period has been narrowed, it should be helpful to review part of 35 USC 102, which sets forth the conditions for patentability, novelty and loss of right to the patent:

(a) NOVELTY; PRIOR ART.--A person shall be entitled to a patent unless--

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.--

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.--A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if--

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

Some suggest inventor disclosure triggers a one-year grace period that shields against an inventor's subsequent public use or offer for sale of the invention. I am uncertain how a court will ultimately interpret 35 USC 102, but note even this favorable interpretation does not answer whether or not third party public use or sales would be shielded. What if a subsequent sale or use pertains to subject matter that overlaps the inventor's disclosure? In the past, the Federal Circuit has not equated the different categories of prior art in 35 USC 102. Thus, "public use" and "on-sale" are not the same thing and do not require "disclosure." Is it better to disclose all the details of the invention when making an offer for sale or use before the filing date? That's a decision to forego trade secret at a time patent protection is in doubt. Will the Federal Circuit equate the different categories to help broaden this seemingly narrow grace period of the America Invents Act? Court decisions may not arrive for years. Until we get answers, the safer approach is to treat the one-year grace period as only shielding direct and indirect inventor disclosures.

Copyright © 2013 Robert Moll. All rights reserved.