Microsoft’s Xbox One has already sold over 18 million units since its debut on Friday, November 22, 2013.
The holiday season is fast approaching, and we would like to spend time profiling some of the hottest developers of consumer technologies. Video gaming consoles are a major focus each year, but the impending battle between the latest generation, Xbox One and PlayStation 4, promises to be massive.
This week, we start our holiday focus by profiling Xbox developer Microsoft Corporation of Redmond, WA, for our Companies We Follow series. This multinational electronics and software developer is offering many consumer devices this Christmas, and even offers customers large discounts on its various tablets, computers and video games through its 12 Days of Deals sales. To get an idea of what kind of interesting new devices and technologies may be available to consumers these holidays, we’ve gone through the published patent applications and issued patents released by the U.S. Patent and Trademark Office and have explored a couple of them in detail.
Microsoft already has a massive patent portfolio, but it has continued to increase in recent weeks. We’ve pulled up a trio of patents related to online gaming through Microsoft’s Xbox LIVE network, including methods of using gamer profiles on multiple consoles as well as validating untrusted games for inclusion on the LIVE network. Another Microsoft patent also shows the technology developer’s interest in improving means of advertising within multiplayer games online.
If you’ve decided that a PGC is right for you, there are a few other related strategic considerations that you may want to evaluate before proceeding: preliminary response, joinder, stay, and amendment.
You may want to consider keeping your cards in your pocket by not filing a preliminary response. If you file a preliminary response, it may provide the petitioner a road map to cure their deficiencies via a second petition or reveal the defects of your position to them. So if the petition is sloppy in some respects it may be in your best interests to not file. On the other hand, not filing a preliminary response may work against you. For every petition the PTAB goes through the preliminary claim construction based upon the evidence given. So if you put in your preliminary response, that will give the APJs additional information to consider when doing claim construction. “I might [initially] be guided by the petitioner’s insights if there’s no patent owner response. If you don’t file a response some times you read between the lines, and assume petitioner[‘s argument] is better,” says Judge Michael P. Tierney, Lead Administrative Patent Judge of the PTAB at the PTO. Then again, APJs thoroughness will likely and generally trump any bias. Just to give you perspective on what other people are doing, eighty-one percent filed a preliminary response with IPR and CBM in 2013, and as of November 21st of this year 77 percent filed a preliminary response, according to a recent AIA Progress Statistics report.
What is lacking from the debate over “patent trolls” is the “other side” of the story. In other words- who is benefiting from large multinational high tech companies being forced to deal with claims of infringement against them?
The major beneficiaries are not the patent trolls- but the thousands of single patent owners and small high tech start ups who for the first time ever-are able to monetize the enormous investments in time, money and ingenuity that they have made in their inventions.
The fact is- today, small patent owner and small tech start ups have real options to liquidate their intellectual property assets that they didn’t have before Intellectual Ventures and Acacia Research Group entered the market in the mid-2000s. If patent trolls sue big companies- then the owners of these patents were able to liquidate their investments. When the multinationals have to worry about these entities suing them it is good for the owners of the patents.
Patent trolls are not bad for them. That’s for sure.
About a year after the introduction of the post grant challenge (PGC) options, you probably have some idea about PGCs and how to deal with the unique rules of this forum. (If you need a refresher on that, read here.) What a lot of us are left wondering is how exactly to decide whether to use one of these options. I’ll elaborate on one approach that may provide some guidance: 1) Weigh the pros and cons; 2) Think about the timing of filing; and 3) Evaluate the nature of your argument.
Assuming there’s enough at stake for your client to go this route, you’ll first want to weigh the pros and cons of filing a petition.
Advantages of PGCs
“From an in-house perspective there’s no question that the various new post grant challenge options under the America invents Act are really a major shift in strategy; it’s a major step in the right direction,” says Samir Pandya, Senior IP Counsel of the Global Litigation Group at SAP, at the 2013 AIPLA Annual meeting.
A goal of nearly every defendant is to lower the total cost of resolution of any legal issue. As counsel for the defendant, you have to weigh the settlement and licensing costs of a patent dispute against the total defense cost and how long it takes to resolve the dispute with certainty. Today, CBM, IPR, and PGR are the lowest possible cost options.
As the year quickly comes to a close, I recently engaged in some file cleanup. During this cleanup, it struck me that the most common type of agreement – by far – I worked on for my clients in the past year was the Non-DisclosureAgreement (NDA). While NDAs are no doubt considered “routine” or “standard” by practitioners and business clients alike, I suggest that each time you engage in the drafting and negotiating of one in the New Year, you actually question the forms you normally use by considering the following:
1.Parties. Who is the contracting party? That is, does the Non-Disclosure Agreement (“NDA” or Confidentiality Agreement) specify a parent, affiliate or subsidiary company? Does the NDA allow the party receiving your client’s confidential information to share it with a parent, affiliate or subsidiary?
2.Personnel. Does the NDA need to specifically list the employees and other personnel of the receiving party who can rightfully access the confidential information?
3.Direction. Does the NDA contemplate a mutual (i.e., “two-way”) exchange of confidential information or just a “one-way” exchange?
Located in Sunnyvale, CA, the American multinational corporation Yahoo! Inc. is a major developer of Internet services that are used worldwide. Every month, hundreds of millions of users access Yahoo! websites and services, making it one of the most popularly visited American websites on the Internet. Recently, the company announced a new online picture printing program called Flickr Photo Books that would integrate photos stored on Flickr. Yahoo!’s fiscal strength is evidenced with the announcement that the company is increasing a share buyback program by $5 billion, a decision that’s resulted in rising stock prices for Yahoo! in recent days.
We haven’t profiled Yahoo! before in IPWatchdog’s Companies We Follow series, but we’re starting to take a closer look as we notice the company showing up often in U.S. Patent and Trademark Office publishings. Recently, the company has filed a large number of patent applications and has been issued a fair amount of patents, all focused on various innovations for its array of Internet services and applications.
In today’s column, we’re going in-depth to explore a patent application that would notify mobile device users of nearby events. These events would be collected from social media applications and filtered based on a user’s interest and proximity to the user, helping that person find interesting events that they were unaware of. Also, a couple of patent applications describe improvements to social networks available through Yahoo!, both on an individual and a group basis.
When you’re dealing with any third-party patent and there’s a lawsuit pending –whether it’s against you or or your customer, from a non-practicing entity or a practicing entity– there’s no question that post grant challenge(PGC) options change strategy from the defendant’s perspective, says Samir Pandya, Senior IP Counsel of the Global Litigation Group at SAP, at the 2013 AIPLA Annual meeting.
The State of PGCs Today
Before the America Invents Act (AIA), we had inter partes reexamination, ex parte reexamination, and the option to purely litigate. Since the AIA, we’ve done away with the first one. Ex parte reexamination is still technically an option, though many find it an unappealing one. “I have had very bad experiences with it. I have yet to see one really succeed. There may be a limited use for it in certain situations, but when you think about ex parte it’s easy enough to say I’m not going to worry about it as an option,” says Pandya. The third option of purely litigating is of course still on the table, but it’s increasingly becoming too expensive, too slow, or too tedious an option to pursue.
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