Earlier today Intellectual Ventures (IV) sued Motorola Mobility for patent infringement in the United States Federal District Court for the District of Delaware. At issue are six patents that IV claims relate to Google’s Android operating system — US Patent Nos. 7,810,144, 6,412,953, 7,409,450, 7,120,462, 6,557,054 and, 6,658,464.
This litigation is worth noting for several reasons. First, this is yet another patent infringement complaint against Google’s Android operating system. It seems that practically every month there is another lawsuit claiming that Android infringes this or that patent, which has to raise eyebrows with respect to the underlying intellectual property Google owns in its operating system that is intended to compete against Apple. Second, once upon a time Google funded IV and vouched for the company and its founder, Microsoft alumnus Nathan Myhrvold. Now IV has turned the tables on Google, is going after Android and in so doing is suing the company that Google is set to acquire for $12.5 billion.
Prior art research is playing an increasingly important role for companies with potential exposure to IP litigation. Companies are spending millions of dollars in legal expenses to understand the true value of patents. In some cases, entire industries are threatened by growing litigation from non-practicing entities (NPEs). Look no further than the now infamous Lodsys lawsuit filed against the App Developer community, including Angry Birds developer Rovio, which is facing a much bigger threat than pesky evil pigs. It is essential that these companies perform the most complete prior art search to defend in this litigation.
Crowdsourcing for prior art has recently emerged to revolutionize the patent research space and overcome the limitations of traditional search techniques. Traditional searches generally involve Western-language based digitized searches. For foreign non-patent publications, only the abstracts are digitized for inclusion in Western-language based digitized databases. The research thus misses the full text and footnotes. It also is important to note that, for digitized publications, critical content is not digitized – such as tables, figures, graphs and photographs. In addition, whole classes of publications besides historical publications (e.g., out-of-print books) are not digitized. These include editorials, business materials, physical products, out-dated manuals on products, software, and standards meeting notes.
On Monday, April 30, 2007, the United States Supreme Court issued its much anticipated decision in KSR International Co. v Teleflex, Inc. For many months patent pundits tried to predict how the Supreme Court would handle the Federal Circuit “teaching, suggestion and motivation” test, used to determine whether a particular patent claim is obvious. Predictions of this sort are usually no more reliable than predictions of any other kind, and while everyone had an opinion, few actually anticipated what the Supreme Court would do. Whether the surprise that was KSR was owing to the patent bar being willful blind or simply having misplaced hope is another story for another day.
The Supreme Court dislikes bright line rules, but surely they wouldn’t opt for a totality of the circumstances approach to obviousness and throw away TSM, thereby leaving some 6,000+ patent examiners to make their own determinations about the qualitative value of an invention? Isn’t that what erasing “flash of creative genius” was meant to do away with? Sadly, the Supreme Court put on display their severe lack of understanding for all to see, believing obviousness to be about common sense. But who’s common sense? What boundaries would be put in place? As is all to familiar, the Supreme Court took the “we decide, you figure it out” approach. I guess they loathe showing their work, which is probably why they aren’t mathematicians!
Companies accused of patent infringement are increasingly looking at patent reexamination at the Patent Office as an attractive avenue for challenging the patent’s validity. Reexamination offers a number of well-known advantages as a forum for such validity challenges over District Court, among them the absence of a presumption of validity and a lower burden of proof. Less well-known, however, is the potential for reexamination to eliminate an accused infringer’s liability for past damages – even if the PTO confirms the validity of a patent in reexamination, the accused infringer might be entitled to “intervening rights,” effectively eliminating past damages, if the patent owner amends its claims to distinguish its invention over the prior art. Even when the patent owner succeeds in the reexamination, if it also amends its claims, it can lose its right to collect damages for infringement occurring prior to the end of the reexamination.
This possibility of “intervening rights” received a big boost last week with the CAFC’s decision in Marine Polymer Techs. v. HemCon, finding that such rights may be created even without an amendment of the claims if the patent owner presents arguments in reexamination that “effectively amend” the claims.
Now that the “ink is dry” on the American Invents Act (which I refer to as the “Abominable Inane Act” or AIA), it’s now time to consider how to cope with (and even take advantage of) the AIA. See my prior article — American Davids of Innovation, Start Your Engines: Strategies for Coping with First to File Under the America Invents Act. Take advantage of the AIA? Oh, yes. I’m referring to the new “grace period” provision in Section 3(b)(1) (Exceptions for Disclosures Made 1 Year Or Less Before The Effective Filing Date Of The Claimed Invention) which will eventually become new 35 U.S.C. 102(b)(1) which may allow the inventor/patent applicant to have his/her cake and eat it too, come March 16, 2013 when this provision of the AIA goes into effect.
By now virtually everyone in the patent and innovation communities knows that on September 16, 2011, President Barack Obama signed into law the Leahy-Smith America Invents Act. This is an enormous change to U.S. patent laws, likely the largest change in U.S. patent law since at least 1790. The last major re-write was in 1952, and that wasn’t a re-write so much as a codification of case law that had developed over the previous decades. This is a major change and one that must be thoroughly and completely respected in terms of breadth and depth.
A lot of arguing has been going on here on IPWatchdog.com about certain portions of the so-called first to file provisions contained in the Act. Truthfully, the new 102(b)(1)(B) is not written as clear as it probably could be, but I have steadfastly maintained that it provides only a personal grace-period, nothing more. Many have criticized me at great lengths, and some have even told me via private e-mail they have stopped reading IPWatchdog because I am dead wrong. I have even had a variety of entertaining discussions with Staffers on the Hill and a variety of senior attorneys and high ranking corporate counsel. Notwithstanding those who vehemently disagree with me, with every new statement made by the United States Patent and Trademark Office my position seems to be further confirmed.
The grace-period provided to inventors is only a personal grace-period and subsequent disclosure that is not derived from the inventor will create a statutory bar to patentability. My source? The United States Patent and Trademark Office.
During his contemporaneous, unscripted speech, Chief Judge Randall Rader made several remarks about the access to justice that raised some eyebrows. On Friday we were told that we need to tolerate the injustice of certain rules that might lead to an unfair result, but then on Saturday morning during the Judges’ panel we were told that rules of thumb couldn’t and shouldn’t apply to the law of damages. Rader on one hand was saying that certainty and relatively bright line rules are necessary to control the process of litigation, but then on the other hand saying that a flexible, case-by-case approach needs to be what we pursue. In short, it seems to me that Judge Rader wants to have his cake and eat it too!
I dissented in person, and I dissent here and now.
How to Write a Patent Application is a must own for patent attorneys, patent agents and law students alike. A crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more.
Without hesitation I recommend One Simple Idea and think it should be required reading for any motivated inventor. There is so much to like about the book and so much that I think author Stephen Key nails dead on accurate. The book is educational, information and inspirational. For the $14 cover price it is essential reading.
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