Patent litigation often turns on obscure and long-buried facts, and some private investigative firms are developing expertise that can help patent counsel – on both the defendant and plaintiff sides – find information to support and even shape litigation strategy.

Below are five examples of common problems that patent counsel often face in contemplating, bringing or defending lawsuits, and how investigative firms can help. Think of the cases described below as hypothetical – but we believe they capture how the fact-gathering in actual patent litigation cases can unfold, and how fact-gathering specialists are actually being used.

Last week a patent application on an energy efficient device that provides enhanced copyright protections was published, not surprisingly with Apple, Inc. as the assignee. On Thursday, February 4, 2010, US Patent Application 20100030928 published, titled Media processing method and device. Certainly not the most sexy title possible, but the thrust of the invention is a device that allows the central processing unit (CPU) to “loosely” connect multiple media devices in such a way that the CPU does not need to be in a constantly powered on state. Among other things, this will extend the life of the battery charge for the device, and it also enables the digital music, for example, not to be streamed through the CPU. This in turn provides enhanced protection for digital media, making it more difficult to capture the digital media for later unauthorized distribution.

Judge Pauline Newman, CAFC

Yes, a message from the shameless commerce division no doubt, but there are a handful of excellent PLI patent related programs coming up in February and March that deserve a mention.  After all, how often can one attend a program, get CLE credits and meet Federal Circuit Judge Pauline Newman?  Not all that often to be sure, but Judge Newman will be attending and presenting at the Reexamination and Reissue program in New York City on February 11-12, 2010.  If you cannot make it to New York for the live program the event will be broadcast live via webcast.

The United States Patent and Trademark Office wants YOU, at least if you are  an intellectual property professional willing to apply for a rewarding and challenging position as a US patent examiner.  Yes, the USPTO is once again hiring patent examiners, at least in a targeted way (whatever that means) as part of an initiative to help reduce the application backlog.  As of now the #1 news story on USPTO.gov is the launching of a targeted effort to recruit patent examiners.  The job description says there are “many vacancies,” the starting salaries range from $69,899.00 to $90,866.00 per year and applications will be accepted through March 2, 2010.

Below is a screen shot of the rotating #1 news story complete with Uncle Sam, wearing what appear to be stereotypical nerdy glasses above the caption “I want YOU for the patent examining corp.”

On January 21, 2010, the United States District Court for the Central District of California issued a ruling in Big Baboon, Inc. v. Dell, Inc. et al, staying further consideration on the motion for summary judgment for invalidity until such time that the United States Supreme Court issues its much anticipated decision in Bilski v. Kappos.  This is exactly what suggested (see Offering Help), and it has amazed me that other district courts and the United States Patent Office are plowing ahead and making Bilski rulings.  Reality be damned, many district courts and the United States Patent and Trademark Office would rather waste their own time, the time and money of litigants and patent applicants, knowing full well that the United States Supreme Court will issue a ruling that will change the Federal Circuit machine or transformation test announced in Bilski.

Did you know that while a total of 4,849 ex parte and inter partes patent reexamination requests were filed from 1999 to 2009, only 55 are reexaminations of patents associated with FDA approved products and listed in the FDA’s Orange Book? This is just one of the most surprising and interesting facts that emerged from our first of its kind study – “Reexamination Practice of Biotech/Pharma Patents in Group Art Unit 3991.” (For a full analysis and discussion, download the full paper at The Reexamination Center.) Other interesting facts emerged from our study, including:

• The patent owner is much better off putting its own patent into reexamination than having a third party do it.
• Of the 55 reexaminations, the top 5 patent owners were attacked by third parties almost 40% of the time.
• Of the 55 reexaminations, 36% were owner initiated, whereas 64% were third-party initiated.
• 21 of the 55 reexaminations went abandoned either for failing to respond to an office action or file an appeal brief (all were third-party initiated).
• 30% of owner initiated reexamination proceedings are associated with litigation as compared with 46% of third-party initiated reexamination proceedings.
• In 31% of owner initiated reexaminations all the original patent claims were confirmed, as compared to just 11% of third-party initiated proceedings.

EDITOR’S NOTE: President Obama’s recently submitted budget would allow the USPTO to hire 1,000 patent examiners during both FY 2011 and FY 2012.  It would also provide an interim fee increase on certain patent fees which is estimated to generate $224 million.  There is no mention of fee diversion, but reading between the lines it seems the budget would allow the USPTO to keep all, or at least more, of the fees collected.  More to come, but below is a press release issued by the USPTO on February 1, 2010.  It is worth a read.

########## PRESS RELEASE STARTS HERE ##########

Washington – February 1, 2010 – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos today announced President Obama’s $2.322 billion fiscal year 2011 (FY 2011) budget request for the USPTO.

The president’s budget request for FY 2011 will support a five-year plan designed to enable the USPTO to achieve the strategic objectives laid out by Under Secretary Kappos and Commerce Secretary Gary Locke – a significant reduction in patent pendency periods and the existing patent inventory backlog; improvement in patent quality; enhanced intellectual property (IP) protection and enforcement; global IP policy leadership; and investment in information technology (IT) infrastructure and tools to achieve a 21st Century system that permits end-to-end electronic processing in patents and trademark IT systems.

This case comes to light courtesy of the Docket Report daily e-mail newsletter.

On Tuesday, January 26, 2010, the United States Federal District Court for the Middle District of Florida, per Magistrate Pizzo, granted summary judgment against Solomon Technologies, Inc. and in favor of Toyota Motor Corporation relating to claims of infringement relative to U.S. Patent No. 5,067,932. The case already had an interesting history prior to this stage, having been pursued unsuccessfully by Solomon through the United States International Trade Commission and up to the United States Court of Appeals for the Federal Circuit. In fact, soon after initiating this action for damages and injunctive relief, Solomon lodged a complaint with the ITC pursuant to 337 of the Tariff Act of 1930, 19 U.S.C. § 1337(a)(1)(B), alleging that Toyota and its affiliates imported and sold hybrids that infringed its ‘932 patent. At the joint request of Solomon and Toyota, the Middle District of Florida stayed the federal court litigation pursuant to 28 U.S.C. § 1659(a) so that the administrative proceedings could run their course. After an extensive investigation, the ITC’s ruling against Solomon as to infringement, and an unsuccessful appeal to the Federal Circuit, Solomon renewed its claim of infringement with the Middle District. The Magistrate summarized the dispute by noting that the same parties were arguing about whether the same hybrid vehicles infringed the same claim in the same patent as they argued previously before both the ITC and the Federal Circuit.

Some may recall my “dissertation” on the case of Amgen Inc. v. F. Hoffman-La Roche Ltd. See CAFC: A Divisional By Any Other Name Is Not a Divisional .  In Amgen, the Federal Circuit made it clear that you had better characterize an application as a “divisional” if you wanted the benefit of the “safe harbor” provided by 35 U.S.C § 121.  And if you didn’t, you would face the consequence of an obviousness-type double patenting issue.

So does this “safe harbor” apply if you file a divisional of a divisional?  What if each of these divisionals has claims to more than one of the groups restricted in the original patent application?  Those were the questions that confronted the Federal Circuit in Boehringer Ingelheim International GMBH v. Barr Laboratories, Inc.  In responding to these questions, the entire Federal Circuit panel agreed that this “safe harbor” could apply to a divisional of a divisional.  Where the majority (Judges Linn and Prost) and dissent (Judge Dyk) diverged was on whether each of these divisionals, and especially the subsequent second divisional, could have claims to more than one of the restricted groups and still receive the benefit of this “safe harbor.”

As many undoubtedly know, Invention Submission Corporation has sued IPWatchdog, me personally and my wife Renee.  I learned moments ago that they have filed paperwork requesting a preliminary injunction and filed a Motion for Summary Judgment.  Presumably at some point I will be served and the fight will commence.

I am in talks with counsel to represent us and hope to soon have settled on a firm to defend the case.  I appreciate the encouraging messages I have received.  In some of the messages I have received, some in the patent bar have suggested that I consider opening a defense fund.  I have some funds myself and IPWatchdog, Inc. also has funds to mount a defense, but Invention Submission Corporation is an enormously large company with seemingly vast resources, at least enough money to advertise in many outlets that presumably are quite expensive.

By now many in the patent and inventing community know that Invent Help has sued IPWatchdog, Inc., me personally and my wife Renee personally.  The InventHelp complaint alleges, among other things, that IPWatchdog competes with InventHelp in the same industry.  This is, of course, nonsense.  I am a Registered Patent Attorney and have been since 1998.  I provide patent related legal services to clients, just like so many other patent attorneys and patent agents.  I do not, nor have I ever, engaged in invention submission or competed with InventHelp or any of the other invention submission companies in the industry. I am an attorney and the services I provide are all aimed at providing clients legal representation or legal advice, which is something InventHelp simply cannot do, at least legally.  When a client requires assistance that I cannot provide I do not pretend to have the ability to adequately assist the client, but rather refer the client to other professionals at other companies that specialize in whatever is needed.  If that makes me an invention submission company, which is absurd to even assert, then every patent attorney, patent agent and law firm in the country is an invention submission company that competes with InventHelp.  How ridiculous!

Those who are readers of IPWatchdog.com on a regular basis are familiar with the jousting that goes on in the comments between myself and a core group of patent believers and those who are, shall we say skeptical of the value of patents and would prefer that patents simply not exist, or at least not exist in certain areas, such as software. Without getting into that debate directly here and now allow me to observe that if you are an independent inventor, start-up or small business one successful way to responsibly move forward is to pattern yourself on successful companies. There is no mileage in following the lead of a company in decline, so lessons can be learned by observing successful companies and weaving together a strategy that will lead to market success. Perhaps no other company today so aggressively pursues patents on core technologies and products than Apple, and they enjoy enormous success. So why not take a page from the Apple playbook? Innovate, patent, commercialize and dominate.

I learned earlier today that IPWatchdog, Inc. has been sued by Invention Submission Corporation (dba Invent Help) in the United States Federal District Court for the Northern District of New York.  The complaint was filed yesterday, January 21, 2010, by attorneys at Bond, Schoeneck & King, PLLC, alleges that I have engaged in false and misleading advertising that has cost Invent Help business.  They apparently do not like the fact that I have written about invention submission scams and have recounted the many stories that I have heard from inventors who feel they have been taken advantage of by Invent Help. They mention the articles I have written in the complaint, and you can view IPWatchdog.com Blog articles about Invent Help here — Articles Tagged Invent Help.  Rest assured, I will vigorously defend.

Apple, Inc., the tech giant that has revolutionized how we listen to music and the functionality of a cell phone, is now seeking to expand its extremely popular iPod and iPhone products into greener pastures. Specifically, in a US Patent Application No. 20100013309, which published earlier today, Apple is seeking a patent on a solar powered electronic device, such as an iPod or iPhone.

Every week Apple obtains patents and every week more pending patent applications are published where Apple is the assignee (i.e., owner). Apple aggressively pursues patent protection because quite frankly patents make good business sense. There is a reason that the iPod and iPhone dominate the market, and other alleged substitutes lag far behind. It is because Apple has a well developed and ever expanding patent portfolio that protects these core products and prevents competitors from getting too close.

I have been asked to create a patent curriculum that will have at a minimum 24 credit hours of patent related legal education, perhaps more.  As you might expect, I have some ideas about how to fill the curriculum, but thought I might open this up for discussion here to gain the collective thoughts, wisdom and insights of IPWatchdog.com readers.

While I know it is unrealistic to expect that even the best, most robust patent law school education will make it possible for new attorneys or patent agents to hit the ground running and able to accomplish all things, I do think that with the right mix of reading, lecture and practical exercises the learning curve can be substantially bent.  Students should even be able to meaningfully provide assistance day one at a law firm assisting more senior attorneys, assuming of course they take their studies and exercises seriously. This being the case, I am interested in hearing from patent attorneys and patent agents with any level of experience.

Senator-Elect Scott Brown (R-MA)

If you are unaware that Massachusetts Republican Scott Brown was victorious last night via special election to fill the remaining term of the Senate seat held by the late Senator Ted Kennedy you must be living under a rock.  Over the last month or so Brown has surged in the polls and took Massachusetts and the nation by storm, claiming a Senate seat long believed to be practically owned by Democrats.  In a matter of days, perhaps weeks, the Democrats will no longer hold a filibuster proof majority in the Senate, which likely all but assures a death to health care legislation and a dramatic slow down in the Obama agenda.  Already Senators and Representatives on the Democrat side of the aisle are talking about perhaps slowing down on health care, perhaps even starting over, and in the meantime focusing on jobs, which is after all what the overwhelming majority of Americans want Congress and the President to do.  As a policy wonk and political observer I would love to get into a discussion about what this election means, and I have over at BlatantlyTrue.com, where I wrote MA Republican Scott Brown and his Truck Head to DC, but for the pages of IPWatchdog.com, general political discussion is a bit too much off topic.  But one story that certainly is not off topic is patent reform, so allow me to ponder what this political tectonic shift may mean for the future of patent reform, which if done right could and should lead to job growth and economic prosperity.

Last week a US Patent Application No. 20100010893 published detailing an invention relating to digital advertising, and more particularly to creating video overlay advertisements suitable for use with digital videos. The owner is Google and the patent application was originally filed on July 9, 2008. It seems that the Internet giant and purveyor of the extraordinarily popular YouTube video sharing website, is attempting to make it easier to create multimedia advertisements.  The screen shots in the patent application show that YouTube video is, in fact, what Google has in mind.  Just what we need, more advertising!  But advertising does pay the bills and allows individuals and businesses to create unique content for the Internet while making a living, thereby enabling for additional creation.  This, after all, is the justification for intellectual property rights.  Grant to businesses and individuals exclusive rights that they can monetize, if in fact there is a market.  Through monetization they can, hopefully, make enough to engage in further original creation, and so goes the cycle.

It has been just over two months since the Supreme Court heard oral arguments in Bilski v. Kappos, and we likely have at least several more months to wait for a ruling. Notwithstanding, pundits and commentators are certainly trying to figure out what the Supreme Court will do, engaging in thought exercises and gazing into crystal balls. The crystal ball of preference is history, tied together with a healthy bit of speculation based on how similar cases and issues were previously addressed by the Court. No single case could be more telling with respect to how the Supreme Court may rule than a case in which they did not rule — Laboratory Corporation of America v. Metabolite Laboratories. In this case the United States Supreme Court decided not to issue a ruling, which may not seem noteworthy at first glance. After all, approximately 8,000 petitions are filed with the Supreme Court each year, and an additional 1,200 applications of various kinds are filed per year that can be acted upon by a single Justice. There is simply not enough time to consider each case where Supreme Court review is sought, so the Court has historically been very selective in choosing cases, normally only issuing full opinions in roughly 80 to 100 cases each year. But, as is frequently the situation with the Supreme Court, there is more than meets they eye with respect to Lab Corp.

Just last week I wrote an article about district courts being increasingly reluctant to order a stay of a pending patent infringement litigation even when the United States Patent Office has granted reexamination. To quote the words of Lee Corso of ESPN College Football fame, “not so fast my friend!” Courtesy of the Docket Report daily patent litigation newsletter, I recently stumbled across the Order of the United States Federal District Court for the Southern District of Georgia in E-Z-Go v. Club Car, Inc. On January 12, 2010, the Southern District of Georgia issued a stay even though the United States Patent and Trademark Office has not yet granted the request for inter partes reexamination of the patent in suit. Holy psychosis Batman! Obviously there is a wide difference of opinion among district court judges with respect to whether to stay pending patent litigation pending reexamination.

In news that has already spread across the Internet like a wildfire, Eastman Kodak Company has sued Apple, Inc., alleging that Apple infringes numerous Kodak patents associated with the iPhone, iPod Touch and various Mac computers. News reports also indicate that Kodak has sued Research in Motion (RIM), maker of the Blackberry. As yet I have not seen a copy of the complaint filed by Kodak against RIM, but courtesy of the Docket Report, the two complaints filed by Kodak against Apple in the United States Federal District Court for the Western District of New York appeared in my inbox this morning. As should be apparent to everyone, the Docket Report is a new advertiser on IPWatchdog.com, so you can take this with a grain of salt if you like, but the truth is the Docket Report is exceptionally detailed and shows up every morning with dozens of patent complaints and district court Orders. If you are trying to keep up with what is going on in the world of patent litigation it is an absolute must, and the best part is you can try it for free for a full month.

Returning to the matter at hand here, there is one thing that must be said immediately about Kodak suing Apple and RIM. Typically when large corporations sue other large corporations there is not all that much interest in taking the matter all the way through litigation to a court ordered disposition. Most times large companies sue each other for posturing purposes and to facilitate getting a better deal at the bargaining table. While there is some evidence to suggest that could be the case, with the presence of Kodak in any patent litigation one must stand up and take notice. Kodak was the defendant in the 15-year patent battle with Polaroid over instant camera technology. Kodak ultimately paid $925 million to Polaroid in 1991, and both Kodak and Polaroid spent several hundreds of millions of dollars in attorneys fees. So make no mistake, Kodak is no stranger to high stakes patent litigation. So pundits and observers can sit back and be thankful for a true heavyweight match of epic proportions could well be on the horizon and could well run for many years to come.