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The Walt Disney Company – An Innovative and Creative Pioneer

Posted: Saturday, Dec 20, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »

The Walt Disney Company (NYSE: DIS) is a multinational mass media corporation headquartered in Burbank, CA, and is one of the few companies in the world that could be considered beloved by its customers. Disney has thrived for decades on offering family friendly experiences at its many amusement parks and in movie theaters across the globe. So far, 2014 has been a banner year for the company thanks in large part to box office successes from films such as Guardians of the Galaxy, Captain America 2 and Frozen; a resulting rise in dividends extending from this success is seen as a sign of increased corporate strength for Disney. In 2015, Disney’s movie business is expected to reap even more from what are expected to be great returns from the next movie installments of The Avengers and Star Wars, both of which are coming out next year. Disney is also heavily into the development of video games, which we’ll discuss in more detail below, as is evidenced by the recent announcement of a Disney research initiative completed in partnership with the Institute of Technology Zürich for better quality in eye capture for building digital face models in video games.

Disney may not be as prolific in patenting activities as many other corporations featured in the Companies We Follow series, but the company did place 211th overall during 2013 in terms of U.S. patents received by entities worldwide; statistics released by the Intellectual Property Owners Association show that Disney earned 137 patents that year, almost 25 percent more than they received the year prior.

Surprising to some may be that the effects of the Supreme Court ruling in Alice v. CLS Bank has negatively impacted the patent holdings of Disney as a series of patents protecting lip-sync animation technologies were declared invalid in September by a U.S. district judge in California, which found that the patents only protected an abstract set of rules. Over the years, Disney has patented a wide array of technologies, from drink dispensers to amusement rides with spinning passenger cars to irrigation control systems. But they do have a variety of software related innovations that have been patented, so like everyone else in the space they are not immune to the uncertainty created by the Supreme Court.





Mary Denison Appointed as New Commissioner for Trademarks

Posted: Friday, Dec 19, 2014 @ 12:01 pm | Written by U.S.P.T.O. | No Comments »

WASHINGTON – Today, U.S. Secretary of Commerce Penny Pritzker appointed Mary Boney Denison to be the new Commissioner for Trademarks at the United States Patent and Trademark Office (USPTO) effective January 1, 2015.

“Mary Denison has done a stellar job serving the American people as the U.S. Patent and Trademark Office’s Deputy Commissioner for Trademarks,” Pritzker said. “I know from experience that trademarks play a vital role in all forms of commerce, and Mary’s experience both at the USPTO and in the private sector will be of tremendous service to our nation’s economic growth. I look forward to working with her in her new capacity as Commissioner.”

Since June 2011, Denison has served as the Deputy Commissioner for Trademark Operations, where she has been responsible for USPTO trademark application, legal examination and registration processes.  She has led outreach to the trademark legal community, small businesses and applicants without legal counsel.  Denison is also an active participant in meetings with the world’s largest trademark offices, promoting projects aimed at harmonization of trademark practices and procedures.  While at the USPTO she has initiated several projects to enhance and expand internal and external communications as well as employee career development.





Unlocking Patents: The Cost of Failure, The Benefits of Success

Posted: Friday, Dec 19, 2014 @ 11:00 am | Written by Gene Quinn | No Comments »

Robert Litan

Robert Litan is an extraordinarily accomplished lawyer, economist and author. Indeed, through his research and writings he has become a nationally recognized expert in the field of economics. Along with co-author Hal Singer, Litan recently published a study that concluded that modestly increasing the number of patents under license could generate social benefits ranging between $100 and $200 billion per year. See $200 Billion Could Be Added to Economic Output Annually by Unlocking Patents. I caught up with Litan for an interview on December 1, 2014, and published part 1 of our conversation yesterday.

What follows is the final segment of my conversation with Litan, in which we discuss the importance unlocking the patents that are not being monetized. We specifically discuss Jay Walker’s brainchild — dubbed the Patent Utility — and what it could mean for the U.S. economy and innovation more generally.

QUINN: I think that what you said there is definitely a fair point. As you were saying it I recall an interview I did with Manny Schechter, who is Chief Patent Counsel at IBM. I asked him at one point in time about how they constantly stay in front of everybody else with respect to a true commitment to research and development? I asked him if they ever look at what others do and wonder why they haven’t figured it out? And his answer to me was basically — why we would look at what anybody else does, we’re confident in what we’re doing, our management is in tune with our overall IP strategy and objectives, and we just do our own thing, do our research and development on our own. So IBM doesn’t spend time considering the competition.





Surviving 101 Challenges After Alice Gone Wild

Posted: Friday, Dec 19, 2014 @ 9:30 am | Written by John Kong | 4 comments

Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l [2], Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.”[3] This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions.[4] Alice makes clear that although a computer is recognized as a machine which would fall under one of the statutory categories of §101, that isn’t the end of the inquiry under §101.[5] Instead, the Mayo 2-part test applies to computer-implemented subject matter.[6] The game-changing new rationale, contrary to Alappat, is that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”[7] Simply “doing it” on a generic computer isn’t enough to satisfy §101.[8]





Video Conferencing and Software Dominate Cisco Patent Activity

Posted: Friday, Dec 19, 2014 @ 7:30 am | Written by Steve Brachmann | No Comments »

Cisco Systems, Inc. (NASDAQ: CSCO), of San Jose, CA, is a dominant force in the market of developing and commercializing computer networking solutions for many types of organizations. The month of December marks the 30th anniversary of the establishment of this company first founded in San Francisco, from which Cisco derives its name. Cisco offers plenty of evidence that intellectual property protection is not mutually exclusive with open source ideals, such as its recent decision to expand the resources freely available through its OpenSOC (Security Operation Center) project, which utilizes Big Data techniques to enhance security analytics. Cisco has faced plenty of competition over the past few months from Microsoft in the area of enterprise collaboration infrastructure, although third quarter data available from both companies showed that Cisco has lately widened its lead in this market.

We often feature Cisco here on the Companies We Follow series and our latest search of patent applications filed by this company showed us a great amount of research into video communications. One patent application we feature discusses a method for automatically recognizing videoconferencing callers. Improved collaboration systems, including those which can alert online collaborators to an emergency situation being experienced by a person on the other end of a communication link, are discussed in a couple of other applications. We also discuss one filing for a technology that provides local content of interest in response to global searches for information.

The patenting activities of Cisco are very strong and the past few weeks saw the addition of many valuable patents to this company’s portfolio. Videoconferencing technologies, including technologies for better eye contact or subject mobility during video calls, are discussed in a collection of patents we’ve shared below. Methods of providing callers with a default language of their choice while visiting foreign countries, as well as security features to be implemented by smart electrical grids, are also explored in more detail.





An Exclusive Interview with Robert Litan

Posted: Thursday, Dec 18, 2014 @ 10:00 am | Written by Gene Quinn | No Comments »

Robert Litan

Robert Litan is an economist and attorney with decades of experience as an executive in both the private, public and government sectors. He is currently a non-resident Senior Fellow at the Brookings Institution, and he also serves on the research advisory boards of the Smith Richardson Foundation and the Committee for Economic Development. Litan has also served as Deputy Assistant Attorney General in the Antitrust Division of the Justice Department and as Associate Director of the Office of Management and Budget. In short, Litan is extraordinarily accomplished and has seen the world from many different vantage points.

Litan is also a prolific author, having authored or co-authored over 25 books and numerous articles in professional and popular publications. His latest books include The Trillion Dollar Economists (Wiley Press, 2013), The Need for Speed (Brookings Institution Press, 2013, co-authored with Hal Singer); Better Capitalism (Yale University Press, 2012, co-authored with Carl Schramm), and Good CapitalismBad Capitalism (Yale University Press, 2009, co-authored with William Baumol and Carl Schramm). Thanks to his writings and Congressional testimony Litan has become a widely recognized national expert in regulation, antitrust, finance, and a variety of other policy subjects.

Most recently, however, Litan co-authored a study that concluded that modestly increasing the number of patents under license could generate social benefits ranging between $100 and $200 billion per year. See $200 Billion Could Be Added to Economic Output Annually by Unlocking Patents. It is through his work on this study that I met Litan. I asked if he would be interested in doing an interview and he graciously accepted.





The Disclosure Revolution – A Report from the Front, 2014

Posted: Thursday, Dec 18, 2014 @ 8:00 am | Written by Joseph Root | 1 Comment »

The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms. These ideas are set out in detail in the book Rules of Patent Drafting: Guidelines from the Federal Circuit Case Law, excerpted in IPWatchdog at Joseph Root on Patent Claim Drafting .

This process has continued apace during 2014. This piece rounds up some Federal Circuit cases that illustrate the highlights.





USPTO Reduces Fees for Trademark Applications and Renewals

Posted: Wednesday, Dec 17, 2014 @ 2:49 pm | Written by Gene Quinn | No Comments »

Section 10(c) of the Leahy-Smith America Invents Act (‘‘AIA’’) authorized the Director of the United States Patent and Trademark Office (USPTO) to consult with the Trademark Public Advisory Committee (‘‘TPAC’’) on the advisability of reducing trademark fees and, following the required consultation, to reduce such fees if it was determined to be appropriate.

The USPTO and TPAC did, in fact, determine that it would be advisable to reduce trademark filing fees for: (1) Trademark, certification mark, collective membership mark, and collective trademark applications for registration on both the Principal or Supplemental Register that are filed using the Trademark Electronic Application System (‘‘TEAS’’), if applicants authorize email communication and file specified documents electronically throughout the application process; (2) TEAS Plus applications for registration; and (3) TEAS applications for renewal of a registration.

Yesterday, as authorized by the AIA, the USPTO published the final rule in the Federal Register that will work to reduce certain trademark fees. According to the USPTO, the fee reductions will both reduce total trademark fee collections and promote efficiency for the USPTO and customers. Clearly, the emphasis is on encouraging use of USPTO electronic systems, which is light-years ahead on the Trademark side of the Office compared with the patent side of the Office.





Exclusive Interview with Doug Croxall of Marathon Patent Group

Posted: Wednesday, Dec 17, 2014 @ 11:00 am | Written by Gene Quinn | No Comments »

Doug Croxall on panel at IP Dealmakers on Nov. 7, 2014.

Doug Croxall is Chairman and Chief Executive Officer of Marathon Patent Group (NASDAQ: MARA), which is a patent acquisition and licensing company. Prior to joining Marathon, Croxall was the CEO and Chairman of Firepond from 2003 – 2009. He acquired the public company in 2003, taking Firepond private in an all cash tender offer. While CEO of Firepond, the Firepond patents generated approximately $90 million in licensing revenues.

I met Croxall in New York City in November 2014, at the IP Dealmakers Forum. Croxall has been successful in the patent monetization business for years and had a unique prospective on patents as an asset. “If you are going invest  your family’s fortune, I don’t think you will put all your money in one equity,” Croxall explained in a panel discussion at the event. “So it is the same thing with respect to an asset or a portfolio of assets.” He would go on to say that Marathon Patent Group has learned from “what worked in other asset areas and applied it to this one.”

While this philosophy may not be considered earth shattering within he investment community, talking about patents like they are similar to any other asset and applying tried and true investment principles struck me as quite enlightened. Yes, patents are becoming a more widely known asset class, but within the patent industry, or at least the day-to-day patent attorney industry, I haven’t heard many (if any) speak of patent assets in this way. I was immediately intrigued for many reasons, perhaps most directly because I always preach to inventors and entrepreneurs that they should look at what succeeds in business and apply those lessons to their own endeavors, which was at the heart of what Croxall was talking about. I knew right away I wanted to interview him.





Correction: Michelle Lee on Patent Reform

Posted: Wednesday, Dec 17, 2014 @ 9:30 am | Written by Gene Quinn | No Comments »

Michelle Lee, Dec. 10, 2014, at Senate confirmation hearing.

It has been brought to my attention that I inaccurately characterized USPTO Deputy Director Michelle Lee’s position on patent reform. I write today to correct the record.

At her confirmation hearing on December 10, 2014, I wrote that Lee’s position on patent reform seemed to shift throughout the hearing, pointing to what seemed to be contradictory answers to the questions of different Senators. In truth, I missed the full answer to the second question Lee received, focused on the first part of her answer, and unintentionally winded up quoting her out of context.

Near the beginning of the hearing Lee explained to Senator Charles Grassley (R-IA) “there can and should be further legislation” to address patent trolls.

Later on during the hearing, Senator Dick Durbin (D-IL) explained that he was very skeptical about additional patent reform, reading a letter sent to him that morning from the Innovation Alliance, BIO, PhRMA, MDMA and 6 university associations, and explaining that he is continually told by constituents that Congress should go slow and proceed with extreme caution on patent reform. Durbin then, reading from the letter, said: “Taken together, these judicial and administrative developments, and the plunge in the patent litigation rate, have fundamentally changed the landscape under which patent legislation should be considered.” Durbin then turned to Lee and asked: “Do you agree?”





From Tesla to Zenith, the Birth of Television Remote Controls

Posted: Wednesday, Dec 17, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »

Nikola Tesla, circa 1890.

The remote control has become a device that is equal parts practical and frustrating. Many gripe that their remotes have too many buttons and are easily misplaced, and it’s inconvenient to sit down in a dark room and realize that the remote’s beneath you and you unwittingly changed the channel. Of course, it’s almost impossible to consider what the television viewing experience would be without a remote control. We’d much rather snoop around for that elusive plastic housing and its myriad of unused buttons than stand and walk to our television sets every time we want to change the channel or the volume.

December 17th of this year marks the 57th anniversary of the U.S. Patent and Trademark Office’s issue of a seminal patent in the field of television remote controls. Today, we want to feature the story behind the development of perhaps the earliest wireless technology to enter the American home. Greater than 95 percent of American households own a television set, although that percentage has dropped in recent years. As a result, television remote controls have enjoyed an incredible rate of permeation into the American household; as of 2012, Americans were using approximately 335 million TV remotes, a rate of about three per household.

The ability to control devices through the transmission of a wireless signal was first demonstrated over a century ago but it wasn’t until the 1950s that the technique would be developed for television, the most successful embodiment of the remote control to date. In some ways, the television remote control introduced the American household to the idea of a connected home with appliances responding to user commands from a distance.





Form Over Substance: CAFC Kills Patent Due to Paralegal Mistake

Posted: Tuesday, Dec 16, 2014 @ 2:18 pm | Written by Gene Quinn | 6 comments

Every once in a while  you stumble across a situation where what is fair seems obvious. At those moments we are all too frequently reminded that we do not have a fairness system, but rather we have a justice system. Which is one way to say that I think the Federal Circuit made a terribly poor decision; one that flies in the face of common sense, and frankly common decency. If the legal system cannot fix a mistake like this before the mistake has even been made public then the system is broken.

The case I am referring to is the recent decision from the United States Court of Appeals for the Federal Circuit in Japanese Foundation for Cancer Research v. Lee, which is the epitome of reaching the right legal decision instead of doing what is fair and just. A paralegal made a mistake, instructed the U.S. representatives to file a terminal disclaimer abandoning a patent, the paperwork was signed and filed by the attorney of record, and then immediately the error was identified. In fact, the mistake was identified and attempts made to mitigate the mistake even prior to the filing ever appearing in the PAIR system operated by the United States Patent and Trademark Office. Yet, at the end of the day, even though there was no question that the chain of events was caused by a paralegal misunderstanding what she was asked to do, the patent still winds up effectively nullified.