I suggest reading Ronald Fierstein's book A Triumph of Genius: Edwin Land, Polaroid, and the Kodak Patent War. It's a lengthy 672 pages, with many details about patent litigation. I guess it's to be expected as Mr. Fierstein was a lawyer at Fish & Neave during the case resulting in Polaroid's $925 million award for patent infringement.
From the editor: "Apple founder Steve Jobs once hailed Edwin Land, the founder of Polaroid and the father of instant photography, as 'a national treasure' and once confessed to a reporter that meeting Land was 'like visiting a shrine.' By his own admission, Jobs modeled much of his own career after Land's. Both Jobs and Land stand out today as unique and towering figures in the history of technology. Neither had a college degree, but both built highly successful and innovative organizations."
Copyright © 2015 Robert Moll. All rights reserved.
Monday, March 30, 2015
CAFC - USPTO Revival Actions are Not Subject to Third Party Challenge
In Excela Pharma Sciences, LLC v. Lee (2015), the Federal Circuit held a third party does not have "the right to challenge, by way of the Administrative Procedure Act (APA), a ruling of the Patent and Trademark Office reviving a patent application that had become abandoned by failure to meet a filing schedule established by the Patent Cooperation Treaty."
The Federal Circuit stated the Patent Act's "intricate scheme for administrative and judicial review of PTO patentability determinations" demonstrates Congress did not intend such challenges. See Pregis Corp. v. Kappos, (Fed. Cir. 2012).
Copyright © 2015 Robert Moll. All rights reserved.
The Federal Circuit stated the Patent Act's "intricate scheme for administrative and judicial review of PTO patentability determinations" demonstrates Congress did not intend such challenges. See Pregis Corp. v. Kappos, (Fed. Cir. 2012).
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, March 28, 2015
PTAB - Changes to Rules for AIA Trials
In PTAB's Quick-Fixes for AIA Rules Are to Be Implemented Immediately, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee discusses rule changes governing America Invents Act (AIA) trials before Patent and Trial and Appeal Board (PTAB):
"As to our first 'quick fix' rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing).
Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.
As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.
Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent."
Copyright © 2015 Robert Moll. All rights reserved.
"As to our first 'quick fix' rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing).
Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.
As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.
Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent."
Copyright © 2015 Robert Moll. All rights reserved.
Friday, March 27, 2015
US Supreme Court - Oral Arguments in Kimble v. Marvel and Commil USA v. Cisco Systems on March 31
On March 31, the US Supreme Court hears oral arguments in the patent cases: Kimble v. Marvel Enterprises and Commil USA, LLC v. Cisco Systems.
The issue in Commil USA: Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).
The issue in Kimble: Whether this Court should overrule Brulotte v. Thys Co., which held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."
The SCOTUS blog will be live blogging the oral arguments at 9:45 am ET.
Copyright © 2015 Robert Moll. All rights reserved.
The issue in Commil USA: Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).
The issue in Kimble: Whether this Court should overrule Brulotte v. Thys Co., which held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."
The SCOTUS blog will be live blogging the oral arguments at 9:45 am ET.
Copyright © 2015 Robert Moll. All rights reserved.
Thursday, March 26, 2015
Tech Dirt - Patent Not Sufficiently Broad Or Generic? Cloem Will Help You By Automatically Generating Dozens Of Nearly Identical Patents
Tech Dirt's article Patent Not Sufficiently Broad Or Generic? Cloem Will Help You By Automatically Generating Dozens Of Nearly Identical Patents has "news about two startups that could upend intellectual property laws: Qentis (copyright) and Cloem (patents)."
Tech Dirt claims "Cloem's business model seems a bit more grounded in reality" and notes VentureBeat describes Cloem as providing "software that ... appears to linguistically manipulate a seed set of a client’s patent claims by, for example, substituting in synonyms or reordering steps in a process, thereby generating tens of thousands of potentially patentable inventions."
"Cloem is a mixture of patent experts and computer linguistic specialists. The key element of its potentially-patentable variations lies within 'seed lists,' which draw from a variety of sources, including (according to Cloem) 70,000,000 patent documents. Its algorithms then brute force together lists of 'new' patent claims, which can then be filed and used offensively or defensively."
Tech Dirt concludes "Cloem's business model seems custom-built for patent trolls who will be able to "expand" their already-broad patents to nail down even more IP turf. Cloem's service also makes it easy for non-inventors to jam up patent offices with me-too "inventions" based on minor iterations of existing patents."
In my opinion, the business model has significant issues:
Inventorship - The software generated claims make murky who invented. Can we safely conclude the inventor of the seed claim invented the computer generated set of claims? I am doubting the authors of the software intend to be named as inventors, read any part of the application, or interact with the inventors of the seed claim. So how could this business model scale?
Reordering steps of a method - In general, the order the steps are recited in a method claim does not dictate a certain order. Yet the assumption is reordering the steps gets you different protection.
Lack of accounting for prior art - You must be aware of the prior art to draft a claim that maximizes the protection.
No value in filing dozen of nearly identical patents - Filing dozens of nearly identical patents will only trigger double patenting rejections and if not caught in examination will serve as a valid defense in court.
No perceived users - Cloem is not a startup, but the article doesn't identity a single patent troll that uses the software much less file dozens of nearly identical patents with thousands of claims using this software.
Copyright © 2015 Robert Moll. All rights reserved.
Tech Dirt claims "Cloem's business model seems a bit more grounded in reality" and notes VentureBeat describes Cloem as providing "software that ... appears to linguistically manipulate a seed set of a client’s patent claims by, for example, substituting in synonyms or reordering steps in a process, thereby generating tens of thousands of potentially patentable inventions."
"Cloem is a mixture of patent experts and computer linguistic specialists. The key element of its potentially-patentable variations lies within 'seed lists,' which draw from a variety of sources, including (according to Cloem) 70,000,000 patent documents. Its algorithms then brute force together lists of 'new' patent claims, which can then be filed and used offensively or defensively."
Tech Dirt concludes "Cloem's business model seems custom-built for patent trolls who will be able to "expand" their already-broad patents to nail down even more IP turf. Cloem's service also makes it easy for non-inventors to jam up patent offices with me-too "inventions" based on minor iterations of existing patents."
In my opinion, the business model has significant issues:
Inventorship - The software generated claims make murky who invented. Can we safely conclude the inventor of the seed claim invented the computer generated set of claims? I am doubting the authors of the software intend to be named as inventors, read any part of the application, or interact with the inventors of the seed claim. So how could this business model scale?
Reordering steps of a method - In general, the order the steps are recited in a method claim does not dictate a certain order. Yet the assumption is reordering the steps gets you different protection.
Lack of accounting for prior art - You must be aware of the prior art to draft a claim that maximizes the protection.
No value in filing dozen of nearly identical patents - Filing dozens of nearly identical patents will only trigger double patenting rejections and if not caught in examination will serve as a valid defense in court.
No perceived users - Cloem is not a startup, but the article doesn't identity a single patent troll that uses the software much less file dozens of nearly identical patents with thousands of claims using this software.
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, March 24, 2015
Mullin - Life360 CEO tells others how to beat patent trolls in three not-so-easy steps
In Life360 CEO tells others how to beat patent trolls in three not-so-easy steps, Mr. Joe Mullin passes along the CEO's advice on how to beat patent trolls: "go nuclear" which means publicize the law firms and trolls involved, share the prior art with others in your industry, and "go with your gut" knowing you fight for what is right.
Whatever you think about this advice, my question is why doesn't the article talk about the option of filing a petition to invalidate the patents in the USPTO? Maybe this occurred, but the article never mentions it. It talks about sharing prior art, but the case was won on non-infringement. Either way about 2/3 of patents litigated in court have a concurrent USPTO proceeding (e.g., inter partes review). Thus, whatever happened here, many defendants are turning to this approach to invalidate patents and significantly reduce costs when the court stays the litigation.
Copyright © 2015 Robert Moll. All rights reserved.
Whatever you think about this advice, my question is why doesn't the article talk about the option of filing a petition to invalidate the patents in the USPTO? Maybe this occurred, but the article never mentions it. It talks about sharing prior art, but the case was won on non-infringement. Either way about 2/3 of patents litigated in court have a concurrent USPTO proceeding (e.g., inter partes review). Thus, whatever happened here, many defendants are turning to this approach to invalidate patents and significantly reduce costs when the court stays the litigation.
Copyright © 2015 Robert Moll. All rights reserved.
Monday, March 23, 2015
USPTO - Patent Quality Summit March 25 - 26
The USPTO has announced a Patent Quality Summit at the USPTO headquarters in Alexandria, VA on March 25 - 26, 2015. Each segment will be also accessible on WebEx. The intent is to provide an opportunity for the public to discuss proposals to ensure efficient prosecution and issuance of the highest quality of patents.
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, March 17, 2015
Stanford Law School - The PTO and Courts - April 17-18
Stanford Program in Law, Science & Technology, Samsung, and Stanford Technology Law Review are co-sponsoring The PTO and the Courts on April 17-18.
This event will discuss administrative procedures (e.g., inter partes review, post-grant review, and covered business methods) before the USPTO as an alternative or a concurrent procedure with litigation.
It's open to the public and free, but Stanford recommends registration.
April 17 will feature judges, lawyers, and academics speaking on issues lawyers face, and April 18 will feature academics.
Here is a list of speakers confirmed for April 17:
This event will discuss administrative procedures (e.g., inter partes review, post-grant review, and covered business methods) before the USPTO as an alternative or a concurrent procedure with litigation.
It's open to the public and free, but Stanford recommends registration.
April 17 will feature judges, lawyers, and academics speaking on issues lawyers face, and April 18 will feature academics.
Here is a list of speakers confirmed for April 17:
- Steve Baughman, Ropes & Gray LLP
- Judge Scott Boalick, USPTO
- Aaron Capron, Finnegan, Henderson, Farabow, Garrett & Dunner
- Judge Peter Chen, USPTO
- Professor Dennis Crouch, University of Missouri School of Law
- Andy Culbert, Microsoft
- Professor John Duffy, University of California, Irvine
- Ian Feinberg, Feinberg, Day Alberti & Thompson
- Professor Robin Feldman, Hastings College of the Law
- Judge Paul Grewal, United States District Court Northern District of California
- Naveen Modi, Paul Hastings
- Judge Kimberly Moore, United States Court of Appeals for the Federal Circuit
- David O'Brien, Haynes and Boone
- Karl Renner, Fish & Richardson
- Sasha Rao, Maynard Cooper & Gale
- Clement Roberts, Durie Tangri
- Laura Storto, Genentech, Inc.
- Lee Van Pelt, Van Pelt, Yi & James
Wednesday, March 11, 2015
PTAB - Effective Use of Claim Grouping in Appeals
The Patent Trial and Appeal Board (PTAB) published an article Effective Use of Claim Grouping in Appeals that presents how to effectively present arguments to the Board.
The article states "when transitioning from examination to appeal, an appellant moves from negotiating patentable claims to resolving disputed patentability issues. The appeal brief normally is the Board’s first exposure to an appellant’s case, and it is the appellant’s first opportunity to persuade the panel to rule in its favor. Therefore, an appellant should take care to craft a clear and persuasive brief that quickly educates the Board panel about the issues and technology, and focuses on appellant’s strongest arguments, while avoiding the introduction of any new issues."
Although the article has some good advice -- focus most if not all of your appeal brief on winning issues, I think its advice to group claims is risky because many PTAB decisions use claim groupings as a mechanism to support affirmance of rejection of the entire group.
Copyright © 2015 Robert Moll. All rights reserved.
The article states "when transitioning from examination to appeal, an appellant moves from negotiating patentable claims to resolving disputed patentability issues. The appeal brief normally is the Board’s first exposure to an appellant’s case, and it is the appellant’s first opportunity to persuade the panel to rule in its favor. Therefore, an appellant should take care to craft a clear and persuasive brief that quickly educates the Board panel about the issues and technology, and focuses on appellant’s strongest arguments, while avoiding the introduction of any new issues."
Although the article has some good advice -- focus most if not all of your appeal brief on winning issues, I think its advice to group claims is risky because many PTAB decisions use claim groupings as a mechanism to support affirmance of rejection of the entire group.
Copyright © 2015 Robert Moll. All rights reserved.
Sunday, March 8, 2015
Los Altos Town Crier - Robert Showen - Los Altos Scientist and Inventor of the Year 2014
I suggested reading Los Altos scientist named inventor of the year 2014 for a story on how US patents can play a role in a tech startup.
The Silicon Valley Intellectual Property Lawyers Association named Robert Showen for his inventions for ShotSpotter Inc. (now SST Inc.), a gunfire alert and analysis company, which has set up a vast network of microphones that detect gunfire, record the audio, map the location and send alerts to local patrol officers. It had a humble beginning with a computer on the grand piano connected to the rest of the prototype set up in rooms of his house, but is now a system implemented in 90 cities across the United States to reduce gun violence.
"'It was sort of a shot out of the blue,' Showen said of the honor. 'I hadn’t expected it.'"
Copyright © 2015 Robert Moll. All rights reserved.
The Silicon Valley Intellectual Property Lawyers Association named Robert Showen for his inventions for ShotSpotter Inc. (now SST Inc.), a gunfire alert and analysis company, which has set up a vast network of microphones that detect gunfire, record the audio, map the location and send alerts to local patrol officers. It had a humble beginning with a computer on the grand piano connected to the rest of the prototype set up in rooms of his house, but is now a system implemented in 90 cities across the United States to reduce gun violence.
"'It was sort of a shot out of the blue,' Showen said of the honor. 'I hadn’t expected it.'"
Copyright © 2015 Robert Moll. All rights reserved.
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