On July 2, 2012, the USPTO announced plans to open a satellite patent office in San Jose, California. I posted on this here. I noticed on Google statistics, a number of readers were interested in this news.
Today, the SF Chronicle reports we face delay: Patent office in San Jose may take time. No one is legally "out of bounds" because the America Invents Act (AIA) only requires the satellite offices open no later than September 16, 2014. At the same time, the SF Chronicle notes progress is lacking. Representative Zoe Lofgren's office reports they are scouting around for temporary space to "plug in some computers." Meanwhile, Detroit's satellite patent office is open for business.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, August 29, 2012
Monday, August 27, 2012
Professor Hricik: 35 USC 101 Is Not An Invalidity Defense
Today, one of the most controversial topics in US patent law is whether software related inventions are patent eligible. To analyze whether the software patent is eligible, courts recite 35 USC 101, discuss the case law, then discuss whether the claim relates to an abstract idea. Too often the claim is paraphrased which can be a slippery slope, because one can always strip away claim limitations until an "invention" is too abstract then conclude it is ineligible.
Today, Professor Hricik argues courts have assumed non-statutory subject matter is an invalidity defense. Yet 35 USC 282(b) lists the following defenses: noninfringement, absence of liability for infringement, or unenforceability, and the invalidity of any patent on any ground specified in part II as a condition for patentability. When you turn to part II you see 35 USC 102 and 35 USC 103. It also says failure to comply with 35 USC 112 except the best mode is defense. The upshot is 35 USC 282 omits any mention of 35 USC 101! In other words, courts have assumed 35 USC 101 is an invalidity defense for many years when 35 USC 282 listing all defenses says no such thing.
Professor Hricik has an important point. The case law should be subject to the federal statutes it purports to interpret. And there are canons of construction that apply to federal statutes. Professor Hricik appears to use a modified version of a canon that the inclusion of "one" (35 USC 102, 103, and 112) indicates an intent to exclude "the others" (35 USC 101). So the fact many courts have held 35 USC 101 is an invalidity defense over the years does not mean they are right.
See Professor Hricik's post: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
Copyright © 2012 Robert Moll. All rights reserved.
Today, Professor Hricik argues courts have assumed non-statutory subject matter is an invalidity defense. Yet 35 USC 282(b) lists the following defenses: noninfringement, absence of liability for infringement, or unenforceability, and the invalidity of any patent on any ground specified in part II as a condition for patentability. When you turn to part II you see 35 USC 102 and 35 USC 103. It also says failure to comply with 35 USC 112 except the best mode is defense. The upshot is 35 USC 282 omits any mention of 35 USC 101! In other words, courts have assumed 35 USC 101 is an invalidity defense for many years when 35 USC 282 listing all defenses says no such thing.
Professor Hricik has an important point. The case law should be subject to the federal statutes it purports to interpret. And there are canons of construction that apply to federal statutes. Professor Hricik appears to use a modified version of a canon that the inclusion of "one" (35 USC 102, 103, and 112) indicates an intent to exclude "the others" (35 USC 101). So the fact many courts have held 35 USC 101 is an invalidity defense over the years does not mean they are right.
See Professor Hricik's post: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
Copyright © 2012 Robert Moll. All rights reserved.
Friday, August 24, 2012
Apple v. Samsung - Samsung Infringes Apple Patents
Wired: Jury Rules Samsung Violated Apple Patents
Ars Technica: Apple v. Samsung verdict is in: $1 billion loss for Samsung
CNET: Apple v. Samsung Verdict Live
The Verge: Live: Apple vs. Samsung: jury decision
Copyright © 2012 Robert Moll. All rights reserved.
Ars Technica: Apple v. Samsung verdict is in: $1 billion loss for Samsung
CNET: Apple v. Samsung Verdict Live
The Verge: Live: Apple vs. Samsung: jury decision
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, August 23, 2012
America Invents Act - Ex Parte Reexamination Fees Increase & Inter Partes Review Replaces Inter Partes Reexamination on September 16, 2012
A brief reminder the America Invents Act (AIA) makes major changes to patent reexamination on September 16, 2012.
If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.
If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.
Copyright © 2012 Robert Moll. All rights reserved.
If you are filing a request for ex parte reexamination, you should be aware the PTO fee for filing a request increases from $2,520 to $17,750.
If you are filing a request for inter partes reexamination, you should note (1) AIA inter partes review (a fast process) replaces the current inter partes reexamination (a slow process), which means legal estoppel is more likely to attach for inter partes review, and (2) September 15, 2012 is the last day to file a request.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, August 21, 2012
Google's Position on Software Patents?
I have been a fan of the Google search engine for years. It has helped level the playing field for small businesses. Patent Planet would be "invisible" on the Web, but for PageRank. I don't pay for Google advertising yet clients continue to find me searching on Google.
Google search engine is also a phenomenal tool for finding obscure information. If I need to review a point of law (e.g., how should a terminal disclaimer be processed on a jointly owned application, and will it raise a standing issue later?), it is better to search on Google than inside a massive document such as the Manual of Patent Examining Procedure (MPEP). Let Google take me to the right page out of several thousand pages.
Or around the house, if something goes wrong with an appliance (e.g., the Subzero refrigerator is blinking, but appears to be at the right temperatures), should I call a repairman today or can it wait? If a DVD gets stuck in the MacBook Pro, should I grab it with tweezers and/or shake the computer. Google search results tells me neither. You should reboot while holding down eject button and if necessary use a credit card to depress the DVD. Or if an iPhone gets wet when I jump in the pool to pull a kid out of danger, is it salvageable? Google search indicates skip blow drying it, and head to the AT&T retailer for an upgrade. In many situations, Google has saved time and money.
Further, Google has generated tremendous wealth for shareholders, and given us YouTube, Google scholar, and Google docs, etc.
What's less certain is Google's patent strategy.
Google's strategy has changed radically since 1998. This month Google subsidiary Motorola Mobility sued Apple for infringement of seven US patents in the ITC. Earlier this year Google loaned/transferred US patents to Android partner HTC to sue Apple. Google has filed for thousands of software patents. Google's SEC papers indicate it paid $5.5 billion for thousands of computer related patents and technology when it paid $12.5 billion for Motorola Mobility. It appears Google is engaging in mutually assured destruction with respect to Apple.
At the same time Google appears to stockpile and assert patents, it makes statements that they are suspect in the press: (1) Google's GC Kent Walker tells us that software patents don't help innovation in Software patents 'gumming up innovation'; and (2) Google's public policy Director Pablo Chavez suggests software patents are problematic: Google: Time to ditch our current software patent system?
Copyright © 2012 Robert Moll. All rights reserved.
Google search engine is also a phenomenal tool for finding obscure information. If I need to review a point of law (e.g., how should a terminal disclaimer be processed on a jointly owned application, and will it raise a standing issue later?), it is better to search on Google than inside a massive document such as the Manual of Patent Examining Procedure (MPEP). Let Google take me to the right page out of several thousand pages.
Or around the house, if something goes wrong with an appliance (e.g., the Subzero refrigerator is blinking, but appears to be at the right temperatures), should I call a repairman today or can it wait? If a DVD gets stuck in the MacBook Pro, should I grab it with tweezers and/or shake the computer. Google search results tells me neither. You should reboot while holding down eject button and if necessary use a credit card to depress the DVD. Or if an iPhone gets wet when I jump in the pool to pull a kid out of danger, is it salvageable? Google search indicates skip blow drying it, and head to the AT&T retailer for an upgrade. In many situations, Google has saved time and money.
Further, Google has generated tremendous wealth for shareholders, and given us YouTube, Google scholar, and Google docs, etc.
What's less certain is Google's patent strategy.
Google's strategy has changed radically since 1998. This month Google subsidiary Motorola Mobility sued Apple for infringement of seven US patents in the ITC. Earlier this year Google loaned/transferred US patents to Android partner HTC to sue Apple. Google has filed for thousands of software patents. Google's SEC papers indicate it paid $5.5 billion for thousands of computer related patents and technology when it paid $12.5 billion for Motorola Mobility. It appears Google is engaging in mutually assured destruction with respect to Apple.
At the same time Google appears to stockpile and assert patents, it makes statements that they are suspect in the press: (1) Google's GC Kent Walker tells us that software patents don't help innovation in Software patents 'gumming up innovation'; and (2) Google's public policy Director Pablo Chavez suggests software patents are problematic: Google: Time to ditch our current software patent system?
Copyright © 2012 Robert Moll. All rights reserved.
Apple v. Samsung - Closing Arguments
For a summary of closing arguments in the Apple v. Samsung patent case, you should read CNET: Apple's closing shot hits as Samsung 'copycat' docs.
Copyright © 2012 Robert Moll. All rights reserved.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, August 19, 2012
Google's Patent Search Tool - Improvements in 2012
Google deserves a big thank you for improvements to the Google patent search tool in 2012.
Google's patent search tool has always had fast page downloads, but has not always appeared to have a complete database. For example, more than few times Google patent searches produced less hits than the PTO patent database for the same search query. Saying it's only a beta only goes so far if the US patent database is incomplete.
However, Google announced improvements to Google Patents worth noting including:
It's already a great patent search tool for companies, patent attorneys and inventors seeking to know the prior art, but let's hope Google keeps thinking of additional improvements. It can only help.
Google's patent search tool has always had fast page downloads, but has not always appeared to have a complete database. For example, more than few times Google patent searches produced less hits than the PTO patent database for the same search query. Saying it's only a beta only goes so far if the US patent database is incomplete.
However, Google announced improvements to Google Patents worth noting including:
- Plans to allow searching the entire body of US patents and work with the PTO to add to its repository of USPTO bulk data. Hopefully this will be fixed. Incompleteness is the reason it cannot be a stand alone searching tool today.
- A Prior Art Finder that allows a single click on a "Find prior art" button to search on Google Patents, Google Scholar, and Google Books. Note the button appears at the top of the display when you open a patent on the list of search results. This is another way to find relevant documents beyond the search query initially invoked.
- Searching on the European Patent Office database. This makes a more convenient to search the EPO database in conjunction with a Google patent search.
- Google Translate improvements to eliminate the language barrier of EPO documents written in parallel languages, e.g., English, French, and German.
It's already a great patent search tool for companies, patent attorneys and inventors seeking to know the prior art, but let's hope Google keeps thinking of additional improvements. It can only help.
Saturday, August 18, 2012
America Invents Act - USPTO Publishes Final Rules Post-Grant Procedures
On August 14, 2012, the USPTO published its final rules on post-grant procedures for challenging US Patents. If you want to learn more about the rules governing post-grant challenges in the PTO, I suggest starting with this article:
PTO's Final Rules for Post-Grant Challenges Show Little Change From Original Proposals - Bloomberg BNA
Bloomberg BNA published the rules (here), which become effective on September 16, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
PTO's Final Rules for Post-Grant Challenges Show Little Change From Original Proposals - Bloomberg BNA
Bloomberg BNA published the rules (here), which become effective on September 16, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, August 12, 2012
Apple v. Samsung - News Coverage August 6 - 10, 2012
If you are interested in what happened last week in the Apple v. Samsung patent infringement trial:
August 6, 2012:
Disruptions: At Its Trial, Apple Spills Some Secrets - NY Times
Apple expert says Samsung infringed patents but gets relentless grilling in court - San Jose Mercury News
August 7, 2012:
Apple witness: Samsung copied patents - SF Chronicle
The iPhone patent Steve Jobs particularly cared about - inertial scrolling - Network World
Apple product design witness says Samsung infringed patents - Washington Post
Disruptions: At Its Trial, Apple Spills Some Secrets - NY Times
Apple expert says Samsung infringed patents but gets relentless grilling in court - San Jose Mercury News
August 7, 2012:
Apple witness: Samsung copied patents - SF Chronicle
The iPhone patent Steve Jobs particularly cared about - inertial scrolling - Network World
Apple product design witness says Samsung infringed patents - Washington Post
August 8, 2012:
Apple-Samsung patent trial: 'I mistook one for the other,' designer says - San Jose Mercury News
Payback: Samsung says Apple destroyed evidence - CNET
Apple-Samsung patent trial: 'I mistook one for the other,' designer says - San Jose Mercury News
Payback: Samsung says Apple destroyed evidence - CNET
August 9, 2012:
Apple patent trial: Samsung scrutinised iPhone to improve Galaxy - ZDNet
Samsung's Analysis of iPhone Hits Trial File - WSJ
Apple patent trial: Samsung scrutinised iPhone to improve Galaxy - ZDNet
Samsung's Analysis of iPhone Hits Trial File - WSJ
August 10, 2012:
Apple Licensing Offer to Samsung Quantified in Patent Case - WSJ (blog)
Copyright © 2012 Robert Moll. All rights reserved.
Apple Licensing Offer to Samsung Quantified in Patent Case - WSJ (blog)
Copyright © 2012 Robert Moll. All rights reserved.
Saturday, August 11, 2012
America Invents Act - Final Rules for Citation of Prior Art and Written Statements and Reexamination Estoppel
The PTO announced final rules to implement post patent provisions in the America Invents Act (AIA): the citation of prior art and written statements and the estoppel attaching to an ex parte reexamination request filed after a final decision in an inter partes review or post grant review. The provisions are effective on September 16, 2012, and will apply to any U.S. patent issuing before, on, and after September 16, 2012. The Federal Register Notice on the final rules is here.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
The AIA modified 35 USC 301 to expand the information a third party could submit in the official file of a patent. Currently, a party can only submit prior art. Beginning September 16, a party may also cite any patent owner's statement that was filed in federal court or in the PTO that takes a position with respect to the scope of a patent claim.
The final rules also give details on how the PTO may use a patent owner statement during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or business method review.
Finally, the final rules require an ex parte reexamination request contain a certification that the statutory estoppel of inter partes review and post grant review do not bar the request for ex parte reexamination. Note due to public comments the PTO decided to allow a real party to not identify itself in a request for ex parte reexamination.
The PTO will discuss the AIA provisions and the final rules in eight road shows in September 2012. See the AIA Roadshow Page for the locations, dates, and details.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, August 10, 2012
Kodak Patent Auction - Low Bids and No Bidding War
Tonight, the Wall Street Journal article Kodak Patent Bidding Is Tame tells us Kodak's patent auction has not generated the bids Kodak expected. Instead, all initial bids are low, no apparent bidding war is ongoing like occurred over the Nortel patents, the bids are for a subset of the 1,100 Kodak patents and well below $500 million.
Note if you enter the article through Google news you get the full article, but the WSJ only gives you a snippet of the article apparently to encourage us to become paid subscribers.
Note if you enter the article through Google news you get the full article, but the WSJ only gives you a snippet of the article apparently to encourage us to become paid subscribers.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, August 9, 2012
Apple v. Samsung - iPhone Innovation Revealed at Trial
Smart inventors may have different characteristics, but in my experience many have something in common: they can't stop inventing.
As a patent attorney working with budgets, I initially found it a bit frustrating-- the invention kept evolving or even fundamentally changed between drafting sessions. But later I realized the same restless mind unwilling to live with a problem leading to the initial invention drove the inventor to improve the solution.
Tonight, Alan Cooper sent an article CNN Money 19 incredible Apple secrets revealed in court reminding me that the best inventors continually innovate. The article notes that the Apple v. Samsung trial has lifted secrecy surrounding Apple product development. It shows the final design of the Apple iPhone did not come after a few iterations. No, the photos and article show it was the multiyear major effort involving generation of many "good" intermediate designs that were rejected.
Apple's advantage? It's ability to reject many good designs that stood before the final design.
Copyright © 2012 Robert Moll. All rights reserved.
As a patent attorney working with budgets, I initially found it a bit frustrating-- the invention kept evolving or even fundamentally changed between drafting sessions. But later I realized the same restless mind unwilling to live with a problem leading to the initial invention drove the inventor to improve the solution.
Tonight, Alan Cooper sent an article CNN Money 19 incredible Apple secrets revealed in court reminding me that the best inventors continually innovate. The article notes that the Apple v. Samsung trial has lifted secrecy surrounding Apple product development. It shows the final design of the Apple iPhone did not come after a few iterations. No, the photos and article show it was the multiyear major effort involving generation of many "good" intermediate designs that were rejected.
Apple's advantage? It's ability to reject many good designs that stood before the final design.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, August 5, 2012
SHIELD - Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012
In view of 35 USC 285 allowing for attorney fees in exceptional cases, Congressman DeFazio's bill: "Saving High-Tech Innovators From Egregious Legal Disputes Act of 2012" strikes me as superfluous with a highfalutin title to boot. Congressman DeFazio refers to this bill as the SHIELD Act, and proposes a patent owner of a software or hardware patent pay all litigation costs including attorney fees if a court later thinks a patent owner did not have a reasonable likelihood of succeeding. Congressman Chaffet is co-sponsoring the bill.
What about defenses that did not have a reasonable likelihood of succeeding? Should patent owners have a claim to defendant paying its attorney fees? Apparently not under the SHIELD Act.
The SHIELD bill also defines software broadly as "a process that could be implemented in a computer" regardless of whether or not computer is mentioned in the patent so this bill may have more reach than one might expect.
Congressman DeFazio talks lots about how patent trolls are harming small high tech companies in his press release here, but the language of the bill has no such limitations. "Patent trolls don’t create new technology and they don’t create American jobs,” said DeFazio. “They pad their pockets by buying patents on products they didn’t create and then suing the innovators who did the hard work and created the product. These egregious lawsuits hurt American innovation and small technology start ups, and they cost jobs. My legislation would force patent trolls to take financial responsibility for their frivolous lawsuits."
The bill not only fails to limit its application to trolls, it may prevent small businesses from pursuing rightful claims of patent infringement against a large company with greater resources to litigate even the meritious claim to death, e.g., in discovery and to apply to court for the small company to pay its costs of defense.
Congressman DeFazio's proposal fails to suggest how it squares with the American Rule: each party is responsible for paying its own attorney's fees unless a statute allows assessment of attorney fees against the other person. But such are the times. Special interests run to Congress and Congress proposes laws to placate them even when interests run contrary to many decades of court cases and 35 USC 285.
I am not expecting this bill to pass, but expect if it does it will serve well as a "big company club."
Copyright © 2012 Robert Moll. All rights reserved.
What about defenses that did not have a reasonable likelihood of succeeding? Should patent owners have a claim to defendant paying its attorney fees? Apparently not under the SHIELD Act.
The SHIELD bill also defines software broadly as "a process that could be implemented in a computer" regardless of whether or not computer is mentioned in the patent so this bill may have more reach than one might expect.
Congressman DeFazio talks lots about how patent trolls are harming small high tech companies in his press release here, but the language of the bill has no such limitations. "Patent trolls don’t create new technology and they don’t create American jobs,” said DeFazio. “They pad their pockets by buying patents on products they didn’t create and then suing the innovators who did the hard work and created the product. These egregious lawsuits hurt American innovation and small technology start ups, and they cost jobs. My legislation would force patent trolls to take financial responsibility for their frivolous lawsuits."
The bill not only fails to limit its application to trolls, it may prevent small businesses from pursuing rightful claims of patent infringement against a large company with greater resources to litigate even the meritious claim to death, e.g., in discovery and to apply to court for the small company to pay its costs of defense.
Congressman DeFazio's proposal fails to suggest how it squares with the American Rule: each party is responsible for paying its own attorney's fees unless a statute allows assessment of attorney fees against the other person. But such are the times. Special interests run to Congress and Congress proposes laws to placate them even when interests run contrary to many decades of court cases and 35 USC 285.
I am not expecting this bill to pass, but expect if it does it will serve well as a "big company club."
Copyright © 2012 Robert Moll. All rights reserved.
Friday, August 3, 2012
Apple v. Samsung - News Coverage July 30 to August 3, 2012
If you are interested in what happened this week in the Apple v. Samsung patent infringement trial:
August 3, 2012:
Trial gives a sneak peek into Apple's inner workings - CNN Tech - Thanks for the link Alan Cooper!
Tough talk for Samsung's lawyers, but no sanctions - ars technica
August 2, 2012:
Apple Says It Will Seek Sanctions Over Samsung Statement - Businessweek
August 1, 2012:
Apple-Samsung trial involves design - SF Chronicle
Patent Dispute: Apple claims Samsung stole iPhone technology - Christian Science Monitor
July 31, 2012
July 30, 2012
Copyright © 2012 Robert Moll. All rights reserved.
Monday, July 30, 2012
Applicants Must Consent to Release PTO Search Results of Unpublished Applications to the EPO
The European Patent Office (EPO) requires search results from a priority application be filed with the EPO if the European application that claims priority was filed on or after January 1, 2011. See Amended Rule 141(1) EPC.
Last year the USPTO and EPO agreed the USPTO would deliver its search results to the EPO at no charge to applicants. For details see Electronic Delivery of Search Results From the United States Patent and Trademark Office to the European Patent Office, 76 FR 82279 (December 30, 2011).
Tonight the USPTO reminds applicants must consent to release search results of an unpublished US patent application to avoid delivery charges.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, July 29, 2012
Software Patent Eligibility - Ending 40 Years of Controversy?
Today, one of the most controversial topics in US patent law is whether and when software related inventions are patent eligible.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.
Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).
Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.
Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.
Copyright © 2012 Robert Moll. All rights reserved.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility illustrate the controversy today.
Professor Crouch's article Ongoing Debate: Is Software Patentable? notes the different results seem to stem from differences in how to construe what is the invention (by the claim as a whole or by its "core inventive concept") and the frustration of watching the controversy remain unresolved after 40 years of case law. (Groklaw's Does Programming a Computer Make a New Machine? citing In re Prater in 1969 suggests this controversy goes back at least 43 years).
Because of the uncertainty associated with a Supreme Court that finds it difficult to affirm the Federal Circuit (See WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101), the PTO community (applicants, attorneys, and examiners) should not keep chasing down if a claimed invention (or the slippery "core inventive concept") is an abstract idea.
Instead, let's address software patentability under tests that are readily applied as recommended by Director Kappos' Some Thoughts on Patentability under 35 USC 102 (novelty/statutory bars), 35 USC 103 (obviousness), and 35 USC 112 (written description, enablement, and definiteness), and recast the abstract idea exception to 35 USC 101 as an overclaiming test as proposed by Professors Mark Lemley, Michael Risch, Ted Sichelman, and Polk Wagner in the Stanford Law Review article Life After Bilski.
Copyright © 2012 Robert Moll. All rights reserved.
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Friday, July 27, 2012
Apple v. Samsung - Trial Briefs and News Articles
The Apple v. Samsung patent infringement trial starts next week. Each party accuses the other party's smartphones and tablets of infringement of U.S. patents.
For details and the trial briefs, see the following articles:
WSJ Law Blog: The Apple-Samsung Trial: What Apple Will Attempt to Prove and The Apple-Samsung Trial: What Samsung Will Attempt to Prove
Law.com Tablet Takedown: Apple-Samsung Patent Spat Headed to Trial
WSJ article: Apple v. Samsung: The Patent Trial of the Century
NY Times: Apple-Samsung Patent Battle Shifts to Trial - updated July 29
Copyright © 2012 Robert Moll. All rights reserved.
For details and the trial briefs, see the following articles:
WSJ Law Blog: The Apple-Samsung Trial: What Apple Will Attempt to Prove and The Apple-Samsung Trial: What Samsung Will Attempt to Prove
Law.com Tablet Takedown: Apple-Samsung Patent Spat Headed to Trial
WSJ article: Apple v. Samsung: The Patent Trial of the Century
NY Times: Apple-Samsung Patent Battle Shifts to Trial - updated July 29
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, July 26, 2012
America Invents Act - Proposed Rules and Examination Guidelines for First Inventor to File
Today, the USPTO published the proposed rules and examination guidelines for the first-to-file provision of the America Invents Act (AIA). This was a much debated change in U.S. patent law from first to invent. PDF copies of the PTO's proposed rules and examination guidelines and discussion on how this will impact novelty and obviousness can be obtained by clicking on the following links:
First-Inventor-to-File Proposed Rules
First-Inventor-to-File Proposed Examination Guidelines
Public comment on the proposed rules and guidelines are due no later than October 5, 2012, and the final rules will become effective on March 16, 2013.
Copyright © 2012 Robert Moll. All rights reserved.
First-Inventor-to-File Proposed Rules
First-Inventor-to-File Proposed Examination Guidelines
Public comment on the proposed rules and guidelines are due no later than October 5, 2012, and the final rules will become effective on March 16, 2013.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, July 25, 2012
Google's SEC Form 10-Q Blurs Patent Valuation: Motorola Patents and Developed Technology Valued at $5.5 Billion
When Google announced its intent to buy Motorola Mobility in 2011, Larry Page stated Motorola had a strong patent portfolio capable of protecting Android. The speculation immediately arose Google was acquiring Motorola primarily for its patents to fight the patent infringement suits that Apple had filed against Android hardware manufacturers Samsung and HTC.
Google's Form 10-Q indicates this speculation was not off-base. In the Form 10-Q, Google notes it acquired Motorola expecting it would protect and advance the Android ecosystem. The "it would protect" suggests defensive use of the Motorola patents. One problem is Motorola's SEP will be fairly limited protection as any damages will be subject to FRAND and any injunctions would be unlikely.
Although it's a preliminary valuation, the Form 10-Q attributes $5.5 billion of $12.4 billion Google paid for Motorola to "patents and developed technology." The media somehow has converted this to Google paid $5.5 billion for the patents, but developed technology is not the same as patents. I am not certain why they are lumped together but it does blur the valuation of the patents. If you don't put an exact value on the patents, however, it makes it more difficult to evaluate the ROI, which in turn would allow Google more space with respect to investors to limit the Motorola patents to counterclaims to protect the Android ecosystem. Still Google should consider if a "Microsoft type patent licensing program" is in its own long term interest.
Copyright © 2012 Robert Moll. All rights reserved.
Google's Form 10-Q indicates this speculation was not off-base. In the Form 10-Q, Google notes it acquired Motorola expecting it would protect and advance the Android ecosystem. The "it would protect" suggests defensive use of the Motorola patents. One problem is Motorola's SEP will be fairly limited protection as any damages will be subject to FRAND and any injunctions would be unlikely.
Although it's a preliminary valuation, the Form 10-Q attributes $5.5 billion of $12.4 billion Google paid for Motorola to "patents and developed technology." The media somehow has converted this to Google paid $5.5 billion for the patents, but developed technology is not the same as patents. I am not certain why they are lumped together but it does blur the valuation of the patents. If you don't put an exact value on the patents, however, it makes it more difficult to evaluate the ROI, which in turn would allow Google more space with respect to investors to limit the Motorola patents to counterclaims to protect the Android ecosystem. Still Google should consider if a "Microsoft type patent licensing program" is in its own long term interest.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, July 24, 2012
Apple v. Samsung - The Battle over Damages
Joe Mullin's article Apple v. Samsung: hammering out details before a giant patent battle explains what happened at the pretrial hearing and the factors that may have prevented a settlement earlier this year. Huge money is at stake (e.g., several billions), the parties have different positions on damages and patent rights, and the outcome of this trial may be the tipping point on who is the long term dominant player since they currently share 54% of the market for mobile computing devices.
Barring settlement, the Apple v. Samsung trial will begin the third major mobile computing case to be heard in 2012. The first Oracle v. Google, covered in my blog posts (blog search: Oracle v. Google), resulted in Google winning both the copyright and patent trials. Judge Posner cut off the second case by dismissing Apple v. Motorola with prejudice. Both cases are on appeal to the Federal Circuit.
Copyright © 2012 Robert Moll. All rights reserved.
Barring settlement, the Apple v. Samsung trial will begin the third major mobile computing case to be heard in 2012. The first Oracle v. Google, covered in my blog posts (blog search: Oracle v. Google), resulted in Google winning both the copyright and patent trials. Judge Posner cut off the second case by dismissing Apple v. Motorola with prejudice. Both cases are on appeal to the Federal Circuit.
A damage award is intended to place a patent owner in the same economic position it would occupy if the infringement had not occurred. Here are some of the highlights on the damage cases:
- Apple seeks $2.525 billion in damages (mostly based on lost profits) for Samsung's "illegal copying" of Apple's utility and design patents, but it's not clear if Apple bases damages on the smallest unit containing the accused functionality
- Apple says Samsung's royalty rate of 2.4 percent of the entire device (e.g., an iPhone) for its wireless standard essential patents is far too high
- Apple offers about 1/2 a cent for each infringed standard essential patent (SEP), because a reasonable royalty should be based on the smallest unit containing the accused functionality (e.g., $10 baseband processor) rather than the entire device
- Samsung says Apple’s 1/2 cent per patent is ludicrous, because without Samsung's SEPs Apple would not have a functioning iPhone
- Samsung argues Apple is attempting to stifle competition, limit consumer choice and maintain its historically exorbitant profits
Copyright © 2012 Robert Moll. All rights reserved.
Monday, July 23, 2012
NTP Settles with Apple, Microsoft, Google, et al.
NTP announced it has reached a settlement with AT&T, Verizon Wireless, Sprint Nextel, T-Mobile, Apple, HTC, Motorola Mobility, Palm, LG, Samsung, Google, Microsoft, and Yahoo to license eight patents "relating to the delivery of electronic mail over wireless systems."
Ron Epstein who represented NTP mentioned he has been traveling around the world since 2010 to reach this settlement. The settlement terms are confidential.
Some readers may remember NTP settled with RIM maker of the Blackberry for $612.5 million in 2006.
For details, please see NTP to get patent cash from "pretty much" entire cell phone industry - Ars Technica
Copyright © 2012 Robert Moll. All rights reserved.
Ron Epstein who represented NTP mentioned he has been traveling around the world since 2010 to reach this settlement. The settlement terms are confidential.
For details, please see NTP to get patent cash from "pretty much" entire cell phone industry - Ars Technica
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, July 22, 2012
Google's Patent Strategy - Some of Apple's Patented Inventions Are De facto Standards
John Paczkoski's Some Apple Inventions Are So Great They Ought To Be Shared explains Google's and Apple's respective patent strategies. I found Google's patent strategy interesting in view of the on-going discussions regarding remedies available for infringement of standard essential patents in the ITC.
As most readers know, Google paid $12.5 billion for Motorola Mobility obtaining many standard essential patents (SEP). Apple may be concerned that Google's strategy is to enforce the SEPs to get a cross-license to Apple's commercially successful non-SEP patents on the iPhone.
Apple and Google's GC's have now staked out positions on how their respective patents should be viewed before the Senate Judiciary Commitee.
Google's GC Kent Walker's letter to the Senate Judiciary Committee argues "proprietary non-standardized technologies that become ubiquitous due to their popularity with consumers should be considered de facto standards."
Apple's GC Bruce Sewell responded in a letter to the Senate Judiciary Committee: "That a proprietary technology becomes quite popular does not transform it into a ‘standard’ subject to the same legal constraints as true standards."
As Mr. Paczkoski states: "Standardized technologies facilitate interoperability among disparate devices by giving them the same core functionality. They create a platform for competition. Non-standardized technologies differentiate those devices, create competition and drive innovation in the marketplace. Subjecting non-standards-essential patents to the same rules as those governing standards-essential ones will hamper innovation and harm consumers."
In my view, if a U.S. patent is not encompassing an industry standard, commercial success should not subject the patent to FRAND and limit a patent owner's rights to an injunction. Otherwise, free riders will eliminate the incentive to spend resources to innovate.
Copyright © 2012 Robert Moll. All rights reserved.
As most readers know, Google paid $12.5 billion for Motorola Mobility obtaining many standard essential patents (SEP). Apple may be concerned that Google's strategy is to enforce the SEPs to get a cross-license to Apple's commercially successful non-SEP patents on the iPhone.
Apple and Google's GC's have now staked out positions on how their respective patents should be viewed before the Senate Judiciary Commitee.
Google's GC Kent Walker's letter to the Senate Judiciary Committee argues "proprietary non-standardized technologies that become ubiquitous due to their popularity with consumers should be considered de facto standards."
Apple's GC Bruce Sewell responded in a letter to the Senate Judiciary Committee: "That a proprietary technology becomes quite popular does not transform it into a ‘standard’ subject to the same legal constraints as true standards."
As Mr. Paczkoski states: "Standardized technologies facilitate interoperability among disparate devices by giving them the same core functionality. They create a platform for competition. Non-standardized technologies differentiate those devices, create competition and drive innovation in the marketplace. Subjecting non-standards-essential patents to the same rules as those governing standards-essential ones will hamper innovation and harm consumers."
In my view, if a U.S. patent is not encompassing an industry standard, commercial success should not subject the patent to FRAND and limit a patent owner's rights to an injunction. Otherwise, free riders will eliminate the incentive to spend resources to innovate.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, July 20, 2012
Eolas Web Browser Plug-in Patent Falls Short?
Joe Mullin's article Patent troll takes last shot at owning "interactive web," but falls short reminds us high stakes patent litigation often involves multiple defendants and can stretch on for years. Mr. Mullin's article is about the Eolas patent involving browser plug-ins asserted against Microsoft in 1999 and later many other tech companies. The subject matter is described in U.S. Patent Nos. 7,599,985 and 5,838,906.
I tuned into the case after a federal court awarded Eolas and the University of California $565 million for Microsoft's browsers infringement of the Eolas patent in 2004. I was hunting for a topic at the time, because U.C. Berkeley had invited me to speak in exchange for three nights at the Lair of the Bear family camp. Since the University of California stood to gain major money, and it involved the Web and Microsoft, the Eolas case sounded like a good topic. The University of California agreed and gave us a "speaker's cabin" with a faded tie dyed sheet door.
Oh well, the food was excellent, we met lots of great people, and to my surprise many showed up to hear me talk about patents at night. The question asked repeatedly was how much did the U.C. Regents stand to gain? 25% of $565 million! Everybody seemed happy to hear this.
Afterward Microsoft fought hard to overturn the judgment eventually settling with Eolas. The U.C. Regents part was reduced to a little over $30 million. After Eolas sued a number of tech companies which recently led to the patent being held invalid despite previously overcoming invalidity challenges from Microsoft in the courts and the PTO.
If you are interested in the Microsoft case, here's a link to my power point slides: Microsoft ordered to pay $565 million for infringing Eolas & UC's web browser patent. By Robert Moll Patent Planet July 11-13, 2004.
Copyright © 2012 Robert Moll. All rights reserved.
I tuned into the case after a federal court awarded Eolas and the University of California $565 million for Microsoft's browsers infringement of the Eolas patent in 2004. I was hunting for a topic at the time, because U.C. Berkeley had invited me to speak in exchange for three nights at the Lair of the Bear family camp. Since the University of California stood to gain major money, and it involved the Web and Microsoft, the Eolas case sounded like a good topic. The University of California agreed and gave us a "speaker's cabin" with a faded tie dyed sheet door.
Oh well, the food was excellent, we met lots of great people, and to my surprise many showed up to hear me talk about patents at night. The question asked repeatedly was how much did the U.C. Regents stand to gain? 25% of $565 million! Everybody seemed happy to hear this.
Afterward Microsoft fought hard to overturn the judgment eventually settling with Eolas. The U.C. Regents part was reduced to a little over $30 million. After Eolas sued a number of tech companies which recently led to the patent being held invalid despite previously overcoming invalidity challenges from Microsoft in the courts and the PTO.
If you are interested in the Microsoft case, here's a link to my power point slides: Microsoft ordered to pay $565 million for infringing Eolas & UC's web browser patent. By Robert Moll Patent Planet July 11-13, 2004.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, July 19, 2012
Bessen & Meurer - The Direct Costs from NPE Disputes
Bessen & Meurer The Direct Costs from NPE Disputes claims companies accrued $29 billion in costs due to non-practicing entity (NPE) disputes in 2011. This article was published June 28, 2012, and just before the hearing this month to limit NPE's access to the ITC. Well what can I say? Nice timing guys.
Copyright © 2012 Robert Moll. All rights reserved.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, July 17, 2012
America Invents Act - Final Rules for Third Party Preissuance Submissions
Today, the PTO announced final rules for America Invents Act (AIA) preissuance submissions of prior art by third parties in patent applications. The final rules become effective to all applications pending or filed after September 16, 2012. The Federal Register Notice of the final rules is here and the AIPLA's "red-line" version copy of changes from proposed to final rules is here.
The AIA added 35 U.S.C. 122(e) that states a third party may submit written prior art to the PTO that is potentially relevant to examination. The submission must contain (1) a concise description of relevance, (2) the PTO fee, and (3) a statement affirming the submission complies with the 35 U.S.C. 122. The submission must be filed before a notice of allowance, or if not allowed, before six months after publication or rejection of any claim, whichever is later.
The final rules add 37 CFR §1.290, Submissions by third parties in applications and delete 37 CFR 1.99, Third-party submission in published application and 37 CFR 1.292, Public use proceedings. Allegations of prior public use may be raised in post-grant review and protests under 37 CFR 1.291. No fee is required for up to three documents filed in the first submission, but a $180 fee is required for every additional 10 documents (or fraction thereof) submitted after this. The E-filing system can be used for submissions. Submissions will be allowed for even abandoned applications but won't be considered unless the application is revived. Service on an applicant is not required rather the PTO will notify applicants by email of compliant third-party submissions.
See my related article: Third Party Preissuance Submissions of Prior Art
Copyright © 2012 Robert Moll. All rights reserved.
The AIA added 35 U.S.C. 122(e) that states a third party may submit written prior art to the PTO that is potentially relevant to examination. The submission must contain (1) a concise description of relevance, (2) the PTO fee, and (3) a statement affirming the submission complies with the 35 U.S.C. 122. The submission must be filed before a notice of allowance, or if not allowed, before six months after publication or rejection of any claim, whichever is later.
The final rules add 37 CFR §1.290, Submissions by third parties in applications and delete 37 CFR 1.99, Third-party submission in published application and 37 CFR 1.292, Public use proceedings. Allegations of prior public use may be raised in post-grant review and protests under 37 CFR 1.291. No fee is required for up to three documents filed in the first submission, but a $180 fee is required for every additional 10 documents (or fraction thereof) submitted after this. The E-filing system can be used for submissions. Submissions will be allowed for even abandoned applications but won't be considered unless the application is revived. Service on an applicant is not required rather the PTO will notify applicants by email of compliant third-party submissions.
See my related article: Third Party Preissuance Submissions of Prior Art
Copyright © 2012 Robert Moll. All rights reserved.
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