Supreme Court Oral Hearing on Joint Infringement in Limelight Networks v. Akamai Technologies

Today, the U.S. Supreme Court held an oral hearing in Limelight Networks v. Akamai Technologies.

Here's a copy of the written transcript of the oral hearing.

As a reminder, the parties frame the issues this way: patent owners Akamai and MIT state the issue is whether a party may be liable for patent infringement under 35 U.S.C. § 271(a) or § 271(b) when two or more entities perform all of the steps of a process claim. Accused infringer Limelight Networks states the issue is whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).

For background: Supreme Court Grants Review of Joint Infringement in Limelight Networks v. Akamai Technologies.

Copyright © 2014 Robert Moll. All rights reserved.

Supreme Court Oral Hearing on Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Today, the U.S. Supreme Court held an oral hearing in Nautilus, Inc. v. Biosig Instruments Inc.

Here's a copy of the written transcript of the oral hearing.

As a reminder, Biosig states the question presented to the Supreme Court is (1) whether Petitioner has shown that the Federal Circuit's test for patent indefiniteness under 35 U.S.C. § 112, para. 2, conflicts with this Court's precedent in light of the U.S. Patent and Trademark Office recently informing this Court that there was no conflict, and (2) whether the Federal Circuit erred in giving respect to the presumption of validity specified by Congress in 35 U.S.C. § 282 in considering the invalidity defense of indefiniteness under 35 U.S.C. §112, para. 2.

Nautilus states the question presented is (1) does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations— so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming, and (2) does the presumption of validity dilute the requirement of particular and distinct patent claiming?

For background: Supreme Court Grants Review of Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Copyright © 2014 Robert Moll. All rights reserved.

Expediting Examination of U.S. Design Patent Applications - Capturing the Value at the Front of the Patent Term

Applicants are seeking U.S. design patents at record rates, but it is important to understand that design patents may be valuable for only a short time. I am not speaking of the 14-year design patent term, but the fact the world may initially "love" a design than view it as "out of date" just a few years later. For example, each new version of the iPhone somehow makes prior versions look out of date.

Thus, when the design relates to rapidly evolving technology, expediting examination may be important to quickly capture that commercial value and prevent infringement. Although the PTO examines design applications faster than utility applications, expediting examination of design applications may be worth it in certain cases.

Thus, 37 CFR  § 1.155(a), effective since September 8, 2000, established a procedure for applicants who conducted a preliminary examination search and request expedited examination along with the 37 CFR 1.17(k) fee:

(a) The applicant may request that the Office expedite the examination of a design application. To qualify for expedited examination:

(1) The application must include drawings in compliance with § 1.84;
(2) The applicant must have conducted a preexamination search;
(3) The applicant must file a request for expedited examination including:
(i) The fee set forth in § 1.17(k);
(ii) A statement that a preexamination search was conducted. The statement must also indicate the field of search and include an information disclosure statement in compliance with § 1.98.

(b) The Office will not examine an application that is not in condition for examination (e.g, missing basic filing fee) even if the applicant files a request for expedited examination under this section.

Another mundane patent procedure? Maybe, but it could increase the chance a design patent will be granted before the world moves on to something new!

Copyright © 2014 Robert Moll. All rights reserved.

Professor Hricik - Patent Attorneys Become Inventors?

Tonight, I am reading Professor Hricik's article Save a Little Room For Me: The Necessity of Naming as Inventors Practioners Who Conceive of Claimed Subject Matter. My comments will be brief.

The article is worth reading if you are a patent attorney or agent preparing US patent applications. If nothing else it will increase awareness of the issue and give guidance on how to handle a practitioner's inventive contribution to a claim of an application.

As a matter of practice, I think it's better to conduct an inventor interview so you don't increase the possibility of contributing to the conception of an invention. Ask questions rather than suggest things and listen more than talk. However, if you have contributed inventive material, Professor Dolak's proposal appears to be right: (1) add your name as an inventor to the application to satisfy US requirements that all inventors be named, and (2) assign your entire ownership to the client to satisfy your fiduciary duty.

Copyright © 2014 Robert Moll. All rights reserved.

Josh Lowensohn - Samsung hopes to make FaceTime a headache for Apple

Tonight, let's catch up on Samsung's counter-offense against Apple in the mobile computing patent war. See Josh Lowensohn's article Samsung hopes to make FaceTime a headache for Apple.

Given Apple is seeking over $2 billion for patent infringement, Samsung seeking $6.9 million doesn't sound like much of a lever for overall settlement. The PR angle is not too good either as Samsung purchased these patents from third parties. Samsung is an innovative company, but this lawsuit is not highlighting that fact.

Copyright © 2014 Robert Moll. All rights reserved.

Evan Schwartz - Juice the Creative Fuel That Drives World-Class Inventors

I have ordered books at Amazon.com way too often. They make it too easy with sneak-a-peek, reader reviews, one-click ordering, and free shipping with an order > $35. So I admit I have books on the shelf that I thought would be good, but never got around to reading.

Evan Schwartz's Juice the Creative Fuel That Drives World-Class Inventors is just such a book. Tonight, looking for something for the blog, I resumed reading it and I would say so far (not done yet) this is an excellent book on the process of invention. It is not a theoretical tome, but a series of stories how various people invented important technologies in the last 60 years or so.

I will give one example from Mr. Schwartz's book, because it shows invention happens despite corporate trappings. The inventor's name was Nick Holonyak, who by his own admission was not 100% smart, and got lucky to be the first graduate student of John Bardeen, who co-invented the transistor at Bell Labs.

Later Mr. Holonyak joined GE to improve semiconductors, and heard something odd that distracted him from his work. Semiconductors could produce invisible IR. He began testing (i.e., playing around) with various semiconductors and learned that gallium arsenide phosphide when "juiced" with electricity emitted a speck of red light.

Mr. Schwartz tells us Mr. Holonyak "created this opportunity in his mind. My colleagues thought I was a bit nutty." He had to "keep his secret from his boss" and "worked on the sly for two years" noting if management discovered him working on this, "I would have been in trouble and gotten fired."

It sounds a bit crazy, right? But I was told by another semiconductor pioneer Armen Sahagen that his company had tasked him, and his team to establish the "right conditions" so the semiconductor they were using would quit generating that annoying light! He laughed and laughed after he told me this story.

Mr. Holonyak is widely credited with inventing the light-emitting diodes-- the LED. Of course, today LEDs are in use everywhere. Why? They can last ten years or longer, are incredibly efficient, and produce little heat. Mr. Schwartz tells us there are "twelve LED-based products sold for every person on earth."

Thanks to Mr. Holonyak having the insight and guts to invent something that matters. Corporate management can "juice" innovation not by tightly "managing" the people, but giving them the support to really innovate.

Although I am still reading Mr. Schwartz book, I can recommend it because this story and others match what I have observed in over two decades of working with inventors. Most of the good ones are just like this. They "create opportunities in the mind," are a "little sly," and at times must shield their nascent work from skepticism and corporate objectives, while having the sense to "spring it on management" once it is ready.

Copyright © 2014 Robert Moll. All rights reserved.

Startups Face Obstacles Protecting Innovation with US Patents

I was visiting Professor Hricik's blog tonight, and noticed his post with a link to an IP Today article by Joseph Hosteny on prosecution bars. Prosecution bars prevent prosecuting attorneys from viewing confidential information that is discovered during litigation that could be used to guide the strategy for patent prosecution of pending applications. When I arrived at IP Today it required a login, etc. I decided to sidestep all of that by visiting the Niro, Scavone, Haller & Niro's web site where Mr. Hosteny works to see if I could download the prosecution bar article and noticed he has his own website with publications. Although it didn't include the prosecution bar article, the articles were interesting.

Tonight, I mention one of them because it may cause some to think differently about how Congress is striking the balance in favor incumbents over startups with respect to patents. Lobbyists have Congress' attention on patent trolls, but startups interests tend to be ignored. This may be because they cannot afford lobbyists and must focus on innovation rather than changing laws. At the same time, the innovation needs legal protection from larger entities that can take it. Congress needs to give startups favorable patent laws to help them grow and if they deserve it, become incumbents. If we reform patent law in ways that generates obstacles for startups protecting their patentable innovation, we produce a world where only incumbents win.

In The Long Walk From the Gobi Desert to the River Styx Mr. Hosteny paints a stark detailed picture of the obstacles inventors face in profiting from patents. Although Mr. Hosteny talks about inventors, I think the ideas can be extended to startups which are built on inventions. He notes they have a long march to succeed. They have to invent something valuable, hire a patent attorney to prepare and file patent applications timely, build prototypes (let's assume real inventions), convince the examiner of the merits, then persuade skeptical companies to license the patent, and at times enforce the patent against companies with much more resources. Unfortunately, defendants' attorneys often treat inventors worse than robbers or embezzlers during enforcement. Don't expect to see it in court -- the judge is watching, but you do see it in depositions, where inventor's character is too often called into question. And the battle to enforce patents can stretch over years as it goes back and forth between the district court and the Federal Circuit on various issues. Definitely worth reading as it may help some realize that the playing field is not at all level for small companies and inventors that seek to license and enforce their patents.

Copyright © 2014 Robert Moll. All rights reserved.

US Design and Utility Patents - How Do They Differ?

Don't let the term "patent" confuse you, design patents and utility patents are different forms of legal protection. Generally, a utility patent, which is what most people mean when they don't specify what type of patent, protects the way an invention works or is used (35 U.S.C. 101). In contrast, a design patent protects the way the invention looks (35 U.S.C. 171). Making it confusing at times, an invention may be eligible for one or more design patents and/or utility patents!

Some of the other differences between US design and utility patents are as follows:

1. Patent term: An utility patent application filed on or after June 8, 1995 has 20-year patent term from the earliest effective U.S. filing date (subject to any patent term adjustment, e.g., for PTO delay), while the term of a design patent is 14 years from the issue date (35 U.S.C. 173).

2. Maintenance fees: For a utility patent to remain in force, one must pay maintenance fees 3.5., 7.5., and 11.5 years (extendible six months with a surcharge fee) from the issue date (37 CFR 1.20), while design patents require no maintenance fees.

3. Claims: Design patents have a single claim, while utility patents typically have multiple claims.

4. Restrictions: The Examiner has discretion whether to restriction on multiple inventions in a utility application, but it's mandatory in design patent applications (MPEP § 1504.05).

5. International applications: the Patent Cooperation Treaty (PCT) permits extending foreign deadlines for multiple countries for utility patents, while design patents await implementation of Hague agreement hopefully late 2014.

6. Foreign filing deadlines: utility patent applications have up to 12 months after the first filing, while design application only have up to 6 months (35 U.S.C. 172). Don't forget this difference!

7. Provisionals: Utility patent applications may claim the benefit of a provisional application, while design patent applications cannot.

8. Request for Continued Examination: Available for utility patents application, but not for design applications.

9. Continued Prosecution Application (CPA): only available for design applications today.

10. Publication of Application: Required for all utility patent applications unless foreign filing rights are waived by the applicant, but design applications are not subject to publication.

This is a plain English version of MPEP 1502.01. See MPEP 1500 Design Patents for details.

Copyright © 2014 Robert Moll. All rights reserved.

Patent Bolt - Google Patent Applications - Smart Contact Lenses

Patent Bolt states the USPTO published Google seven patent applications describing smart contact lenses in An Avalanche of New Google Contact Lens Patents Come to Light. That's a smart way to expand the market for Google Glass, right? And it may also help with people who don't like Google Glass, as long as the user keeps the public at a "undetectable distance" while he or she snaps photos with the camera embedded in the contact lenses.

More seriously, the smart contact lenses could have real value in certain contexts. As stated in Patent Bolt: a blind person wearing Google's contact lens with a built-in camera may be walking on a sidewalk and approaching an intersection. The analysis component of the contact lens #265 (noted further below) can process the raw image data of the camera to determine a blind person is approaching intersection with a crosswalk and establish that there is a car approaching the intersection.

Copyright © 2014 Robert Moll. All rights reserved.

SCOTUSblog - GW Law Professor Orin Kerr - US Supreme Court

In the last decade the U.S. Supreme Court has been granting certiorari on patent cases at an increasing rate. And the cases can have a long term impact on patent law. Thus, it is useful to step back and consider how the Court operates, the value of predictability in the law, the politics of the decisions, and how a generalist court contends with technology. It is especially important as the Court works through a standard for what computer implemented inventions are patentable in Alice v. CLS Bank. 

SCOTUSblog is publishing a five-part interview with former Supreme Court clerk, now Professor Orin Kerr of George Washington Law School that gives real insight into the Court:

SCOTUSblog on camera: Orin Kerr – Part one

SCOTUSblog on camera: Orin Kerr – Part two

SCOTUSblog on camera: Orin Kerr – Part three

SCOTUSblog on camera: Orin Kerr – Part four

I will update after Part five is published.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - America Invents Act Patent Trials Roundtables

The Patent Trial and Appeal Board (PTAB) has invited me (as well as many others) to attend roundtables on the new America Invents Act (AIA) patent trials (e.g., inter partes review, post-grant, covered business method review and derivation). It sounds like a timely conference.

Here's the invitation with the dates and locations if you are interested.

Copyright © 2014 Robert Moll. All rights reserved.

WSJ - The Wright Brothers and a Patent-Law Dogfight

In The Wright Brothers and a Patent-Law Dogfight Mr. Goldstone argues that the US patent system is not adept at dealing with new techologies. He says look at the Wright brothers patent wrangling and argues that it led to their demise which should be instructive to innovators.

Mr. Goldstone has taken on quite the task. To get started he says federal courts are now awash in patent infringement suits that they seem to have little real notion of how to resolve. Referring to Alice v. CLS Bank, it is not that clear he isn't right, but generally federal district courts know how to resolve cases. I think it is more a uncertainty problem as the Federal Circuit and Supreme Court are not shy to express different notions on how to resolve cases.

Referring back to the article, Mr. Goldstone says it should be instructive to see how the patent system did not work that well with regard to a watershed innovation: flight. Yes, the Wright brothers did seem to lose their way in seeking patent royalties from "everyone." But it appears the real problem is their technology was inferior. And the Wright brother's situation gets overblown because it seems to say tech companies should "quit patent wrangling and get back to innovation" as "Orville Wright died penniless after attending too many depositions and micromanaging patent litigation." Never mind that they brought an inferior solution to the marketplace, it's about the risks of focusing on patent enforcement.

On the other hand, the article highlights an important point that isn't typically realized: the non-infringement defense is a potent one. Stanford University law professor Mark Lemley stated in Does Familiarity Breed Contempt Among Judges Deciding Patent Cases: "We find that judges with more patent experience are less likely to rule for patentees on infringement, though not on validity. Familiarity, it seems, breeds contempt – not necessarily of patents, but of the breadth patentees sometimes claim for their legal rights."

In the end the article tries to support a conclusion about the patent system not dealing with new technology with unrelated and/or shaky premises: (1) the courts are swamped; and (2) the courts are clueless, and suggests seeking patent royalties could result in the fate of Orville -- incurable disease and dying penniless.

Copyright © 2014 Robert Moll. All rights reserved.

UC Berkeley Professor Suzanne Scotchmer: 1950 - 2014

UC Berkeley Professor Suzanne Scotchmer, a leading economist on intellectual property law and policy and innovation, passed away after a bout with cancer on January 30, 2014.

We probably have different stories about how we discovered Professor Scotchmer's writing. I was searching for "something else" on the Web and I stumbled across her articles on intellectual property: each article was unique and brilliant, which compelled me to read more. If you are not familiar, you might start with Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, which elegantly describes patent incentives we should attribute to cumulative innovation.

If you are interested, UC Berkeley Center for Law & Technology is hosting a program to honor Professor Scotchmer on May 1, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Crowdsourcing and Third-Party Preissuance Submissions Roundtable on April 10, 2014

The USPTO is hosting a roundtable to discuss the use of crowdsourcing and third-party preissuance submissions to identify prior art and increase the quality of examination leading to higher quality patents.

These are noble goals, but so far the number of third-party submissions is relatively small compared to the number of pending US patent applications. Finding pertinent prior art can be time consuming, and tends to not get done unless that effort is compensated. How about micro-entity fees on one application in exchange for submission of prior art that becomes the basis of a prior art rejection?

The roundtable will be held at USPTO's Madison Auditorium South Concourse Level in Alexandria, VA from 12:30 pm to 5:00 pm ET on April 10, 2014. The roundtable can be also accessed by WebEx. Registration is on a first-come, first-served basis if you email crowdsourcingRoundtable2014@uspto.gov.

The USPTO requests written comments on any topic in the Federal Register notice no later than April 25, 2014. For details on written comments click here.

The Crowdsourcing Roundtable page gives directions, the agenda, and RSVP details. For more information you can also contact Mr. Jack Harvey: jack.harvey@uspto.gov or 571-272-8004.

Copyright © 2014 Robert Moll. All rights reserved.

Apple v. Samsung - Apple Seeks $2 Billion for Patent Infringement

Today, the federal district court for San Jose, California heard opening arguments in Apple v. Samsung which is their second major trial for patent infringement. Apple is now seeking Samsung pay $2 billion for infringement of five U.S. patents. Aggressive lawyering, the hyperbole - we could have sued on 50 patents and the judge has instructed you ... (when Judge Koh hadn't), an embarrassing "Holy war" email, each companies unabated ambition to be #1, and the billions at stake suggest this trial (like the first trial) will go to judgment.

See Joe Mullin's Apple lawyer to jury: Samsung "crossed into the dark side"

Copyright © 2014 Robert Moll. All rights reserved.