Marine Polymer v. Hemcon - Federal Circuit Limits Intervening Rights to Amended Claims

In Marine Polymer Tech. v. Hemcon, the Federal Circuit held claims must be amended or new to trigger intervening rights during reexamination. Intervening rights are derived from 35 USC 252 and 307(b) which indicate following reexamination a patent owner cannot claim damages for pre-reexamination infringement if the claims were amended and not substantially identical to the original claims.

In this case, Marine Polymer's arguments narrowed the scope of the claims, but stopped short of amending them. The Federal Circuit rejected Hemcon's request for intervening rights based on this, because (1) the PTO confirmed the original claims were patentable; (2) Sections 252 and 307(b) state intervening rights follow reexamination only as to amended or new claims; (3) the PTO is unlikely to consider a patent claim to be narrowed based on an argument; and (4) if claims require amendment for allowance, the examiner would require it.

Although the intervening rights vote was split 6 to 4, the majority appears to have it right. The public and patent owners need to know when intervening rights can be raised as a defense. Too much money changes hands to have it any other way. Thus, the statute requires a claim be new or amended to trigger intervening rights. If we accept any narrowing argument can raise intervening rights, I expect requests for intervening rights in many cases, i.e., whenever an argument is raised for patentability. Of course, examiners should interpret claims as broad as is reasonably consistent with the specification and require an amendment when necessary to distinguish a claim over the prior art rather than settle for arguments that have no correspondence to the claim language.

Copyright © 2012 Robert Moll. All rights reserved.

Ex Parte Adelman - Board Reverses Patent Eligibility Rejections Because Claims Indefinite

In the post on Myspace v. Graphon Corp. I noted the Federal Circuit invalidated claims as not novel (35 USC 102) and obvious (35 USC 103) and sidestepped what some consider a threshold concern: Are the claims directed to subject matter that is eligible for patent protection (35 USC 101)? The Federal Circuit seemed to justify the avoidance of addressing the section 101 defense by noting the law is currently a "murky morass"

The Board of Patent Appeals also recently decided patent eligibility is not a threshold concern. In Ex Parte Adelman the Board reversed the examiner's rejections under 35 USC 101, because the examiner failed to address the critical lack of a concrete definition of the invention. Go Daddy Group appealed claims relating to a system for designating membership in an online business community. Claim 1 recites, among other things, "means for designating a plurality of members" and "means for providing a ... membership designator." The Board stated it wastes resources to consider whether claims are eligible for patent protection or overcome the prior art, when the claims cannot be reasonably understood without resort to speculation. The Board stated the claims were indefinite under 35 USC 112, because the specification failed to disclose algorithm(s) supporting the recited functions in claim 1.

Thus, the "new" threshold concern may be that applicants particularly point out and distinctly claim the invention as required by section 112. See Aristocrat Techs. Australia Party Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1337 (Fed. Cir. 2008); Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008).

Copyright © 2012 Robert Moll. All rights reserved.

Patent Reexamination Has Arrived for Both Parties - Oracle v. Google

Judge Alsup has ordered the Oracle v. Google trial start on April 16. As noted in my blog post on March 12, reexamination has reduced both Oracle's patent case and the advantage of having Mr. Boies as the trial lawyer.

As I stated, Oracle has agreed to withdraw three patents if  they remain rejected when the trial starts. That's about one month for Oracle to get the "final" rejections withdrawn. It's possible but difficult to achieve. Of course, Oracle could appeal the final rejection to the Board of Patent Appeals, but this seems unlikely. Thus, Oracle's lawsuit is based on just two patents and its copyright infringement claim.

Judge Alsup seems to be tough on Oracle at times, but the start date is what Oracle wanted. Further, Judge Alsup believes that streamlining the trial is good for both parties. Thus, Judge Alsup ordered:

"Google is hereby encouraged to withdraw its invalidity defenses that have failed in the reexamination ... to further streamline the trial on the two patents remaining in suit."

Reexamination has become a two-edged sword in this case. If you are a patent owner and suffer rejection of all infringed claims before trial you won't be able to turn that around. And if you are a defendant and you lose on invalidity in reexamination, you will be forced to drop invalidity defenses at trial.

Copyright © 2012 Robert Moll. All rights reserved.

Yahoo! Sues Facebook for Patent Infringement!

Yahoo is suing Facebook for infringement of ten patents just before its IPO. I don't see this lawsuit as a show stopper and submit it's typical when a tech company prepares for an IPO. Thus, the case is likely to proceed as follows: (1) Facebook licenses the patents; (2) Facebook challenges the patents in the PTO (requests reexamination) and requests a stay of the court case; and/or (3) Facebook defends itself in federal district court. Yahoo only hopes this tactic that resulted in 2.7M shares before Google's IPO works again.

Here's links to articles with details below:

Yahoo sues Facebook over patents -- USA Today

Yahoo sues Facebook in patent battle - San Jose Mercury News

Yahoo Sues Facebook for Patent Infringement, Which Social Network Calls "Puzzling" (Including Filing) - Allthingsd.com (WSJ)

Yahoo sues Facebook for infringing 10 patent - Reuters

Yahoo sues Facebook in a patent row - BBC News

Thanks to Alan Cooper for notifying of this development last night.

Copyright © 2012 Robert Moll. All rights reserved.

Patent Reexamination Has Arrived - Oracle v. Google

Reexamination has nearly knocked out Oracle's patent case against Google. It crystallized on March 1 when Judge Alsup stated "Oracle should state a clear answer to the following question: given that the examiners have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and Oracle still wishes to have an instruction that those patents must be presumed valid and can only be found invalid by clear and convincing evidence, would it be better to postpone trial until after final decisions by the PTO on administrative appeal? Also please answer: to avoid this problem, will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205?" In short, does Oracle want to delay the trial for the results of reexamination or nearly drop the entire patent case?

Oracle's reply?  If the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, and '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO.

It is no longer sufficient to hire the best trial lawyer and go from there. Oracle engaged David Boies, an amazing trial lawyer. After graduating Magna cum laude at Yale Law School, Mr. Boies became a partner at Cravath Swaine & Moore and later founded his own firm and successfully handled many notable cases. For example, Mr. Boies was the key attorney assisting the late Thomas Barr in his stunningly successful defense of IBM in the Department of Justice's 13-year antitrust case. The DoJ learned from this and hired Mr. Boies in the United States v. Microsoft case. Again, Mr. Boies won, and Bill Gates claimed during trial that Mr. Boies was "out to destroy Microsoft" after observing his devastating use of Microsoft emails to impeach Microsoft witnesses. When he defended CBS in a $120M libel suit by General Westmoreland, the general abandoned his case during the trial. Although Mr. Boies lost in representing Al Gore following the 2000 presidential elections in Bush v. Gore, his engagement on this high stakes matter and others reveal he was (and is) considered one of the premier trial lawyers in the country.

Oracle v. Google tells us the outcome of reexamination can be pivotal to the patent case. Despite Oracle's  wise decision to engage Mr. Boies, it did not halt the effects of reexamination. Oracle's patent case was greatly contracted and Mr. Boies has much less to work with at trial. Yes, patent reexamination has arrived.

Copyright © 2012 Robert Moll. All rights reserved.

Bankruptcy Judge Bars Apple's Patent Suit Against Kodak

Today, the media gave lots of coverage to the bankruptcy judge's ruling to bar Apple's patent infringement suit against Kodak. It's appears to be an act of mercy, but could complicate assessing the value of Kodak patents since Apple may have a legitimate claim for joint ownership. Here's links to articles giving the details below:

Apple barred from pursing Kodak patent claims now - Reuters

Apple Loses Attempt to Pursue Patent Fights Against Kodak - Bloomberg

Apple barred from pursuing patent claims against Kodak - CNET

Judge Orders Apple to Stop Pursuing Kodak Patent Fight - PC Magazine

Judge orders Apple to halt patent litigation against Kodak - Apple Insider

Copyright © 2012 Robert Moll. All rights reserved.

Contingent Fee Representation - Patent Litigation Will Never Be the Same

Professor Kayton once explained to us that whether a patent is litigated has nothing to do with whether it is strong or weak, but is based on the expected return = probability of success in patent litigation multiplied by the total amount produced if the litigation is successful. Thus, if the damages for patent infringement is $100M and the probability of the holding the infringer liable is 25%, it is rationale to spend up to $25M to enforce the  patent. Of course, not many companies are prepared to spend that much money.

However, some attorneys realized they could make enormous sums as long as one could stomach the risk and venture their time to take cases on contingency: If I lose, you don't owe a thing (i.e., costs and legal fees); on the other hand, if I win, you pay me a percentage, for example, 35% of the damages.

Contingent fee representation changed things. Now a range of patent owners had access to the courts as long as they could convince an attorney to handle their case. Success stories drove attorneys to take cases on contingency. In 1998, I met one of the early successful contingent fee litigators, Gerald Hosier, who represented Lemelson in the 1980s and 1990s. As we sat in the conference room, Mr. Hosier received call after call interrupting our meeting (presumably the calls wasn't staged for our benefit) from Silicon Valley companies who had decided it made sense to settle rather than risk paying for infringement of  Lemelson's complex labyrinth of patents (e.g., assembly line manufacturing, bar coding, and local oxidation of silicon, so-called LOCOS).

Mr. Hosier was wealthy when we met that day, and Silicon Valley was his third "gig." He had reached a settlement with the Japanese companies in the 1980s then the US auto industry. Mr. Hosier appeared on the cover of the American Lawyer tramping through the snow with his huskies in Aspen Colorado. Yes, he had a Gulfstream jet and had earned more than the Cravath Swaine & Moore law firm one year. Yet something was missing as Mr. Hosier gleefully recounted how Mr. Lemelson conceived LOCOS while watching a space capsule re-enter earth's atmosphere. It was impossible to believe. I decided coming out of that meeting I should help clients understand the nature of the Lemelson patents, but before I could write the opinions, nearly all of the companies had settled and returned to business.

Also see Schwartz The Rise of Contingent Fee Representation in Patent Litigation.

Copyright © 2012 Robert Moll. All rights reserved.

PTO's Proposed Fees Will Deter Use of America Invents Act Procedures

The PTO has proposed major increases in fees to implement the America Invents Act (AIA). The argument is the PTO fees should match the service provided. But this can lead to surprising results. For example, Harold Wegner suggested a patent that has hundreds of claims will be effectively insulated from challenge because the PTO proposes to charge half a million in PTO fees. We need to return to reason. The user based system only needs to work at the aggregate level. We don't make litigants pay the true cost of litigating in federal district court, and it doesn't make sense to hold users of the AIA contested procedures to this standard either. If we raise the PTO fees as proposed, smaller companies will not use them because they are no longer affordable. And we don't need a patent system that can be only accessed by the largest companies. Startups should also have access to ex parte reexamination, post grant review, and inter partes review to challenge doubtful patents and implement Congress' objective to give all of us an inexpensive alternative to litigation.

Also see America Intellectual Property Law Associate (AIPLA) comments on the proposed fee increase.

Copyright © 2012 Robert Moll. All rights reserved.

Myspace v. Graphon - Federal Circuit Sidesteps Patent Eligibility under 35 USC 101

In the 2010 Bilski decision, the Supreme Court attempted to state a test for what is patent-eligible under 35 USC 101. The Supreme Court rejected that certain categories of subject matter such as business methods or software would be automatically ineligible and that the Federal Circuit's machine-or-transformation test should be the exclusive test. Instead the Supreme Court looking to its own precedent stated laws of nature, natural phenomena, and abstract ideas would be unpatentable.

Since that time the Federal Circuit has struggled to develop a working test for what is an unpatentable abstract idea. Part of the problem is a patent claim is an abstraction of an embodiment of the invention. And the Supreme Court abstract idea test is the ultimate penalty if the abstraction is too great (i.e., the claim is too broad).

In Myspace, Inc. v. Graphon Corp., the Federal Circuit assessed the validity of a software patent relating to creating, modifying, and storing database records over a computer network. The Federal Circuit made several candid and surprising statements: (1) it conceded section 101 is a murky morass that should be avoided when possible; (2) the USPTO may become the source of a workable test (note the Supreme Court implied that the Federal Circuit would further develop the law); (3) patent eligibility was not a threshold question (Bilski states otherwise); and (4) courts should initially evaluate a patent under section 102 (novelty), section 103 (obviousness) and section 112 (written description and enablement) to avoid "the swamp of verbiage that is section 101." Note sidestepping the section 101 defense didn't help as the Federal Circuit then held the patent invalid under sections 102 and 103.

Also see Donald Chisum's Weeds and Seeds in the Supreme Court's Business Method Patents: New Directions for Regulating Patent Scope on this topic.

Copyright © 2012 Robert Moll. All rights reserved.

PTO Publishes Proposed Rules for Inter Partes Review, Post Grant Review, etc.

In February 2012, the USPTO announced publication of its proposed rules for contested cases, including inter partes review, post grant review, the transitional program for covered business methods, and derivation to implement the America Invents Act (AIA). See the details in the links below:

• Proposed Rule of Practice for Trials before the PTAB (77 Fed. Reg. 6879, Feb. 9, 2012)
• Proposed Trial Practice Guide (77 Fed. Reg. 6868, Feb. 9, 2012)
• Proposed Rules for Inter Partes Review (77 Fed. Reg. 7041, February 10, 2012)
• Proposed Rules for Post Grant Review (77 Fed. Reg. 7060, February 10, 2012)
• Proposed Rules for the Transitional Program for Covered Business Methods (77 Fed. Reg. 7080, February 10, 2012)
• Proposed Rule for the Technological Invention Definition (77 Fed. Reg. 7095, February 10, 2012)
• Proposed Rule for Derivation Proceedings (77 Fed. Reg. 7028, February 10, 2012)

Publication opens a sixty-day comment period on the proposed rules. Director Kappos encouraged the patent community to comment on the rules and attend an AIA roadshow where the PTO will discuss proposed rules and receive public feedback.  

See the Leahy-Smith America Invents Act Implementation web page for details and the AIA Roadshow schedule in 2012.

Copyright © 2012 Robert Moll. All rights reserved.

Apple Waterproofing the iPhone?

I realized how much I loved my iPhone the day it got wet. I felt stupid as it failed to turn on, but then thought surely this has happened to others let's Google how to dry it. I got it dry but ... it still didn't work. No surprise on this as I grew up in my Dad's electronic shop. Later driving to the AT&T store I partly convinced myself it was "broken" anyway as it had a mere 16 GB of memory and a decent music collection requires at least 32 GB.

So this article Patently Flash: Will the iPhone ever be Waterproof? caught my attention tonight. Framed in terms only a geek would love, US Application No. 2012/0048589 A2, Inhibiting Moisture Intrusion in a Very Small Form Factor Consumer Electronic Product reveals Apple has invented a package for waterproofing an iPod shuffle which can be applied to other devices ... to the iPhone.

Copyright © 2012 Robert Moll. All rights reserved.

Apple Patents Secure Microsoft Investment and Continued Development of Mac Office

Recently, Apple joined the $500B club. However, in 1997, Microsoft was the dominant company and Apple was nearly out of business. Local press discussed whether Sun or Oracle might acquire Apple. Then Microsoft invested $150M in Apple and agreed to continue Mac Office. Microsoft's surprising agreement was pivotal for Apple. What was behind that event? The following article states it was Steve Job's skillful negotiations and use of the Apple patents.

Steve Jobs used patents to pressure Bill Gates into 1997 investment in Apple.

Copyright © 2012 Robert Moll. All rights reserved.

Intellectual Ventures and Patent Aggregators - Mr. Rosoff's Article

After I posted Intellectual Ventures and Patent Aggregators on February 29, I read Matt Rosoff's REVEALED: How Giant Patent Troll Intellectual Ventures Does Business. At first I thought nice summary of the Giants Among Us article, but now Mr. Rosoff's article seems too negative:

1. Read the title: ... Giant Patent Troll Intellectual Ventures .... The author doesn't waste any time before branding Intellectual Ventures a giant patent troll.  
2. The author states Intellectual Ventures "does very little inventing," but according to many articles IV is busy inventing in many technology areas.   
3. He states IV uses more than 1,200 shell companies. This makes IV sound sneaky but it's legal. So why can't IV use shell companies to reduce its purchase costs?   
4. He asserts about half its patents originated outside the U.S. and IV exploits the disparities in IP valuations between the US and the rest of the world. Don't inport/export businesses exploit disparities in valuations between the US and the rest of the world?
5. Mr. Rosoff states big companies invest in IV then use its patents for defense. Boo hoo some company pays for patent rights then has the audacity to file a counterclaim when it is sued. Sounds like self-defense to me.
6.  He notes IV's activities are compared to "privateering" in the Giant article, a now-abolished kind of warfare where countries would encourage private sailors to attack enemies ships and auction off the proceeds. This appears to refer to IV's willingness to license its patents to third parties who do the "dirty work of licensing and suing." But why is licensing and suing "dirty work?" This "dirty work" argument sounds truly lame.
7. Mr. Rosoff concludes IV's business is referred to as "an ugly business, but also perfectly legal." So there you have it: "Giant Patent Troll" labeling at the front end and "ugly business" at the rear end. 
8. It's this negative slant that makes the siren song for more government regulation such a clunker. 
9. After the REVEALED article was published, Intellectual Ventures pointed Mr. Rosoff to the Intellectual Ventures corporate blog for the other side and in my opinion some necessary balance.     

Copyright © 2012 Robert Moll. All rights reserved.

Law Review Circulations Drop?

In the last two decades the information explosion has driven many of us to move from paper to data storage so we can keep information organized, searchable, and distributable to others. This concept is not recent, but appears missed in the recent Wall Street Journal article, Law Review Circulation: A New Low.

There  Professor Davies calls out law reviews for exaggerating their paid circulations and noting they dropped in 2011. The article does not discuss why the drop. Instead it gives a chart showing the drop is across the board for the top ranked law schools starting with Harvard Law. In particular, Professor Davies notes "The Harvard Law Review remains the top journal, but its paid circulation has declined from more than 10,000 during much of the 1960s and '70s to about 5,000 in the 1990s to 1,896 last year."

My initial reaction? Oh too bad as law reviews have impacted the development of the law and influenced courts for decades. And too bad we have become a nation of non-readers. I am not so sure of my initial reactions, however, as the drop appears to coincide with the time frame law review papers became free at websites like Social Science Research Network - see download ranking among top law schools and could be downloaded, searched and emailed to clients and colleagues with a few mouse clicks.

Copyright © 2012 Robert Moll. All rights reserved.

Intellectual Ventures and Patent Aggregators

Whatever one may think about Intellectual Venture's merit, it has never lacked press coverage. Because of this when it was taking off I told Peter Detkin, a co-founder, at a WSGR alumni get together, "you have become famous." Peter politely denied it, but I think it is true and what Peter has built with Nathan Myhrvold and others is a radical and significant change to the U.S. patent system. Despite all the press, however, it has been difficult to fully understand the method of operation and activities of Intellectual Ventures, which has rapidly accumulated 30,000 - 60,000 patents, making it the fifth largest patent portfolio of any US company.

Tom Ewing and Professor Robin Feldman answer many questions about Intellectual Ventures and patent (the authors say mass) aggregators such as Acacia Research and RPX in Stanford Technology Law Review's The Giants Among Us. I expect more coverage on patent aggregators, but this article is the best I have seen so far.

Also see Patrick Anderson's guest post on Patently-O: Intellectual Ventures Flexes Some Patent Muscle discussing how Intellectual Ventures is increasing its patent litigation effort today.

Copyright © 2012 Robert Moll. All rights reserved.

Yahoo! Threatens to Sue Facebook for Patent Infringement

Today, we have news coverage on Yahoo's threat to sue Facebook for infringement of 10-20 social networking patents unless Facebook pays for a license as Facebook approaches its IPO. This tactic to sue for patent infringement right before the IPO is a well known tactic for reaching settlement (who wants to risk a lower evaluation and/or amend the S-1 document to describe a major patent suit?). Here's links to articles giving the details below:

Yahoo Warns Facebook of a Potential Patent Fight - New York Times

Yahoo Picks Patent Fight with Facebook - CNET

Yahoo Stabs Facebook in the Back, Says Pay for Its Patents or Get Sued - TechCrunch

Why Yahoo! Should Seek at least $3 Billion from Facebook for Patent Violations - Forbes

Copyright © 2012 Robert Moll. All rights reserved.

Lobbying to Block ITC from Hearing Non-practicing Entities

When I worked at Wilson Sonsini Goodrich & Rosati in 1993 -1998, I met Barney Cassidy. Barney is a Harvard Law graduate and was a well respected, busy, and well liked attorney at WSGR. Where is he now? Barney Cassidy is General Counsel at Tessera Technologies, Inc., which develops, and patents next-generation electronic devices and related packaging. Tessera has become an important voice in Silicon Valley that believes the US patent system is valuable and under attack by special interests. In Follow the Money - Will the ITC Lose its Patent Jurisdiction? Barney discusses the ITC Working Group's lobbying effort to (1) keep the ITC from hearing non-practicing entities patent infringement cases, and (2) weaken the ITC's ability to block importation of infringing products. Who are members of the ITC Working Group? Apple, Avaya, Broadcom, Cisco, HP, Intel and Oracle. It's best to read Barney's article, but Barney's point is high tech companies have an interest to prevent NPEs (e.g., Universities, independent inventors, and companies who do not manufacture all they patent) from accessing the ITC. Yet preserving the NPE's right to seek ITC enforcement is in America's interest. I am not happy with all the patent infringement actions filed in the ITC, but agree all patent holders deserve the right to file a complaint in the ITC and have it considered on the merits. I know from personal experience that sometimes the companies patents are ahead of the market. Later the company makes what is described in the patent. Should we exclude that company before it begins manufacturing? As Barney asks would we block one of America's most prolific inventors Thomas Edison from filing in the ITC, because he was a non-practicing entity?

Copyright © 2012 Robert Moll. All rights reserved. 

iPhone Stripped Bare!

Geoff McCormick, director of UK design firm The Alloy, breaks open an iPhone to explain the hardware and the hundreds of patents contained in a smartphone in the following 5-minute video:

Patent Wars: Stripping the iPhone bare

I loved all the smartphones (even those a few years back look ancient) and blueprints strewn across Geoff's desk, but be prepared to hit mute (get a cup of coffee) after you click on my link to avoid a 2-minute commercial which must be "consumed" to see the video.  Also later when I ran video again it complained I didn't have the latest version of Flash. Didn't Steve Jobs lead Adobe to kill that off?

Thanks to Alan Cooper for sending this article my way tonight! 

Copyright © 2012 Robert Moll. All rights reserved. 

Fired CEO Claims Benchmark Stole His Ideas

Here's a cautionary tale if you are seeking VC funding for your startup: Fatdoor Founder Sues Benchmark Capital, Saying It Stole His Idea for Nextdoor.
The startup (Fatdoor) had plans to be the "Facebook" of local neighborhoods, had filed many patents applications, had thousands of viewers, an experienced entrepreneur as the CEO, had allegedly impressed Benchmark only to see it then pass on funding ... and fund another startup (Nextdoor) six months later on the "same idea." Because Benchmark signed no NDA, and the CEO's applications were assigned to the startup and later sold to Google, the fired CEO was reduced to filing a trade secret, interference, and fraud lawsuit. I read the complaint and it sounds like this will be a difficult case. Because you won't find many VCs willing to sign NDAs, and assignment of your patents and applications to the startup, only raises the defense of assignor estoppel if you leave the place, contracts and patents cannot protect against investors from "taking your idea." For one, it will be difficult to define what is your idea. Surely, the companies have differences. So how does one protect self-interest? If you are going to spend the time and effort that this CEO allegedly put into the venture, you need to be well advised and have a corporate structure that allows you to retain management and voting control while satisfying the VCs interest.

Thanks to Suzie Lipton-Moll on this article! 

Copyright © 2012 Robert Moll. All rights reserved.

Apple v. Motorola - Patentability of User Software Interface in Europe

The US PTO and the EPO have some important differences when it comes to protecting software related inventions. Thus it is important to consider what European attorneys tell us is required to protect a software invention in Europe. 

Paul Cole of the UK firm Lucas & Co. wrote a blog post on Patently-O that has some insight into what the EPO requires to protect a user software interface using two well known features to iPhone users. With respect to the slide-to-unlock patent, the EPO Examining Division believed the invention satisfied a technical problem, but was still obvious over windows dragging and dropping. As Paul states, Apple argued an "objective technical problem was to provide a more efficient user-friendly procedure for unlocking a portable device and to provide a sensory feedback to the user regarding progress towards satisfaction of a user input condition that was required for unlocking to occur. As set out in the claim, the unlock image signalled to the user that the device was locked and simultaneously indicated a contact point that a user had to touch in order to unlock the device. The displayed path indicated to the user where and how the unlock image had to be moved and the current position of the image indicated progress already made towards the unlocked condition. The method was easier than in the prior art where a sequence of operations had to be memorised." With respect to the camera roll patent, the EPO considered it was patentable because the invention allowed a user to navigate within an image and switch between images with a minimum of inputs. Paul suggests choosing the EPO as the International Searching Authority and International Preliminary Examination Authority was also a factor. 

Paul contrasts these two successful patents with an Apple patent application that was refused by the EPO Appeal Board. In that case, the invention related to a transition between a maximized and minimized window, e.g., an icon of the window on a task bar. The EPO held the difference between the invention and the prior art resided in an aesthetic effect that couldn't contribute to the inventive step. It didn't help that specification stated a variety of techniques apparent to those of ordinary skill that could be used to implement the invention.   


Copyright © 2012 Robert Moll. All rights reserved.

Apple's Slide-to-Unlock Patent "Blocks" Motorola and Google's Application Depicts Future Lockscreen That "Slides Away"

The BBC article Patents: Apple wins over Motorola in 'slide-to-unlock' ruling describes Apple's victory in blocking two out of three embodiments in Germany. 

But is it short-lived? The Android Community article Google patent depicts future lockscreen features on Android. It basically "slides applications" to unlock zones on the display of the Android device. And that folks is design around life!

Thanks to Alan Cooper for the BBC article; yes, I am running to keep up with him!

Copyright © 2012 Robert Moll. All rights reserved.

DOJ Closes Investigations of Google's Acquisition of Motorola Mobility and Apple, Microsoft and RIM's Acquisitions of the Nortel Patents

On February 13, 2012, the Department of Justice's Antitrust Division issued a statement that it is closing the investigations of Google's acquisition of Motorola Mobility, Apple's acquisition of patents held by CPTN (formerly owned by Novell), and Apple, Microsoft, RIM and other's acquisition of the Nortel patents. DOJ believes each acquisition is unlikely to substantially lessen competition given Apple and Microsoft's clear commitment to license its standard essential patents (SEP) on fair, reasonable, and non-discriminatory (FRAND) terms and not seek an injunction on the SEPs. In contrast, the DOJ appears to criticize Google's unwillingness to make a clear commitment on future use of its patents. The DOJ also stated a willingness to jump into the fray to stop any anticompetitive use of SEP rights. Hopefully, the DOJ's statement and analysis will bring some order in the mobile computing patent war. I think this is welcome news for consumers (Click here for the DOJ's statement)

Copyright © 2012 Robert Moll. All rights reserved.

Third Party Preissuance Submissions of Prior Art

The PTO recently proposed rules to implement preissuance submission by third parties, 35 USC 122(e) of the America Invents Act (AIA). Preissuance submission permits the public to submit relevant prior art against any US patent application pending on September 16, 2012.  

Professor Crouch comments new 35 USC 122(e) "opens the door to Peer-to-Patent style submissions for all published applications." But what is Peer-to-Patent? It was a PTO pilot that ran from 2007-2009 and 2010-2011 that permitted peers to submit prior art to examiner. It never received widespread adoption and is reported to have only affected a few hundred applications. Perhaps it was too much to expect applicants would want to submit their application to examination by "peers" in exchange for expedited examination. Preissuance submission has the potential to affect many applications since volunteering to participate is not a requirement.

Preissuance Submission by Third Parties - 35 USC 122(e):

(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—

(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—

(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.

(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—

(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.

Here are several features and pitfalls to 35 USC 122(e) preissuance submissions:

1.  Proposed PTO fees for preissuance submission are inexpensive ($180 for up to ten references) or nothing if a first submission of up to 3 references.

2.  The PTO does not require the patent application owner be served and will not identify the third party making the preissuance submission to encourage submissions.

3. On the other hand, preissuance submissions may alert the applicant getting broad claims and filing continuations is warranted because somebody infringes the application claims.

4.  You must file a preissuance submission before the PTO mails a notice of allowance. If, however, the PTO hasn't allowed an application, you can file a preissuance submission up to 6 months after the PTO first publishes the application or up to the first Office action rejecting a claim, whichever is later. However, one cannot safely rely on filing before those later events, since the PTO has no duty to inform before mailing a notice of allowance or an Office action rejecting any claim.

5.  Once a preissuance submission meets all requirement, it will be treated in terms of procedure much like an information disclosure statement (IDS). However, unlike an IDS, an examiner will have the benefit of a description of the asserted relevance of each document. If nothing else, this should make it easier to write up an Office action rejecting the claims. 

6.  A preissuance submission may backfire. If the claims are not canceled or narrowed based on the preissuance submission, the third party may face a strengthened patent that is infringed, plus have lost practical benefit of the prior art. Further, any amendments that do occur to the claims to avoid the preissuance submission will not raise intervening rights such as those obtainable in reexamination or reissue. 

7.  Two reasons the preissuance submission may backfire. After submission, the third party has no right to participate further. Only the examiner and applicant get to exchange information on what it all means. If this happens in an interview, don't expect the interview summary to fully describe what was discussed. Second, examiners suffer from information overload, which tends to result in complex filings not being fully addressed. See Kuhn, Yale Journal of Law and Technology, Information Overload at the U.S. Patent and Trademark Office: Reframing the Duty of Disclosure in Patent Law as a Search and Filter Problem. Yet a presumption is raised the preissuance submission was duly considered.

8.  Although the third party is not estopped from raising the prior art in an ex parte reexamination, inter partes review, post-grant review, or in a district court, the third party will have a more challenging situation to use the references of the preissuance submission.

9.  I expect third parties to be therefore reluctant to submit the best prior art in a preissuance submission when stakes are high. Instead, they will save the prior art to support a request for ex parte reexamination, inter parties review, post-grant review, or a district court. 

10. An examiner will be required to inform of a submission when it issues an Office action, but applicant will be required to monitor applications to know at other times. 

Preissuance submissions may help to derail doubtful patents, but are best limited to when other post-grant procedures (e.g., ex parte reexamination) are too expensive and other relevant prior art can be kept out of the preissuance submission just in case.   

Copyright © 2012 Robert Moll. All rights reserved.

USPTO Satellite Office in Silicon Valley?

The America Invents Act (AIA) requires the PTO open three or more satellite offices by September 16, 2014. The first satellite office will be in Detroit. What about Silicon Valley?

In the past, Santa Clara county residents have filed and received more issued US patents than residents in 42 states of the United States. The AIA states a satellite office should "better connect patent filers and innovators with the Office." What region could better connect patent filers and innovators with the Office? 

Because of the sheer number of patent filings here, opening a satellite office would increase access to examiners and reduce the backlog. Although phone interviews work well, face-to-face interview are a more efficient way to exchange information. If the backlog impacts lots of patent filings here, especially software related patent filings, let's tackle it head on, not nip around the edges. As UC Berkeley Computer Science Professor David Patterson notes a key hardware design principle is to make the common case fast. Increasing the ability of companies to freely exchange of information with examiners will also improve the quality of patent examination.

One gainsayer told me recently, yes it would be nice, but it isn't going to happen -- the cost of living in the Bay Area is prohibitive. He may be right, but again imagine if the PTO came here.

For more about efforts to bring the PTO to Silicon Valley, see San Jose Mercury News Editorial: Silicon Valley deserves a regional patent office
 
Copyright © 2012 Robert Moll. All rights reserved.

Two Different Views - Why Investors Are Focused on Patents

Well here's two articles giving disparate views of patent deals today:

In Patent-Palooza: Why Investors Are Suddenly Focused on IP, Paul Ryan, President and CEO of Acacia Research, argues corporations need for profit is driving the recent patent deals. Patent rich companies are simply selling their under-leveraged patents to non-practicing entities such as Acacia Research that assert them against other companies.

In Crushed innovation: When patent lawyers switch to NPEs, Ruth Suehle, writer in Brand Communications + Design at Red Hat, decries patent litigators, John Desmarais and Matt Powers, switching from corporate patent defense to represent non-practicing entities against corporations. Ruth asks, "Could the sordidness of a business based on bringing patent lawsuits be outweighed by large amounts of cash?" It's not clear to me, why they are engaged in a sordid business. Is going to court to enforce patent rights and seek damages for infringement a sordid business per se or does it simply cross the open source "party line?" 

Thanks to Alan Cooper for Ruth's article. 


Copyright © 2012 Robert Moll. All rights reserved.