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On the Record with Mark Lemley: The Presumption of Validity

Posted: Wednesday, Sep 29, 2010 @ 9:15 pm | Written by Gene Quinn | 15 comments

Professor Mark Lemley

On Friday, September 17, 2010, I had the opportunity to chat with Professor Mark Lemley, who is the William H. Neukom Professor at Stanford Law School and partner in the San Francisco law firm Durie Tangri LLP.  Lemley is well known both in the academic community and the practice community.  In fact, he is one of only a select few that have managed to simultaneously have a stellar career both in academia and in private practice.  I chat with Lemley via e-mail from time to time on various matters, and we have talked about an interview for some time.  Then a draft of a amicus brief Lemly filed today with the United States Supreme Court arrived in my inbox and I knew this was the issue that would make for an excellent interview.  Lemley is leading the charge  for 36 law, business and economics professors who are asking the Supreme Court to review i4i v. Microsoft and address the presumption of validity enjoyed by an issued patent.  Lemley et al would tie the presumption of validity to those references considered by the patent examiner during prosecution.

Is It Time to Privatize the Patent Office?

Posted: Wednesday, Sep 29, 2010 @ 11:57 am | Written by Gene Quinn | 40 comments

I am in New York City for the next few days for the PLI Patent Bar Review CourseJohn White and I traveled up from Virginia together yesterday and we did what we so often do — talk patents.  A fun life we lead no doubt, but someone has to do it!  In any event, increasingly as we were talking about things we have heard from attorneys, retired patent examiners we know and frustrated clients, something that has been occurring to me with more frequency came to mind once again.  Is it time for us to seriously consider privatizing the United States Patent Office, or at least turning it into a quasi-governmental body that has autonomy to run as it sees fit?  I think the answer is a resounding yes.  This is a discussion long over due and I tend to think that objectively reasonable minds at the end of the discussion will come to the conclusion that a Patent Office controlled by Congress has little or no chance of ever fulfilling its Constitutional responsibility again.

News, Notes and Announcements

Posted: Tuesday, Sep 28, 2010 @ 2:55 pm | Written by Gene Quinn | 1 Comment »

In this edition of News, Notes & Announcements, the USPTO announces it has signed an agreement with the Russian Patent Office to act as an International Searching Authority; the USPTO announces expansion of the Patent Prosecution Highway; PLI’s Patent Litigation 2010 starts next week and will travel across the US with stops in Virginia, Atlanta, Chicago and New York; BIO is hosting a Technology Transfer Symposium next week in San Francisco; Howard University will hold an IP Empowerment Summit on November 5, 2010, aimed at trying to help indigent inventors — USPTO Director David Kappos will participate; and BackWeb Technologies sues two computer giants — IBM and HP — on patents covering methods for transmitting information between a remote network and a local computer.

Breakthroughs & Abandonment: Patent Abandon Rate is a Reliable Measure of Speculative Portfolios

Posted: Monday, Sep 27, 2010 @ 10:15 pm | Written by Mark Nowotarski | 10 comments

Everyone thinks they have a great idea when they file a patent application. Some applications, however, are more speculative that others. We propose that the rate at which patent applications are abandoned is a reliable measure of just how speculative a given portfolio of applications is. We also propose that breakthrough inventions are more likely to be found in portfolios with high abandonment rates than in less speculative portfolios with lower abandonment rates. We support these propositions with data from PAIR.

LegalZoom and Washington State Reach Agreement Over Unauthorized Practice of Law

Posted: Saturday, Sep 25, 2010 @ 3:09 pm | Written by Gene Quinn | 40 comments

The State of Washington has just entered into an Assurance of Discontinuance with LegalZoom relating to charges that LegalZoom is engaging in the unauthorized practice of law. The Attorney General of the State of Washington initiated an investigation into the business practices of LegalZoom, who offers certain legal forms over the Internet to consumers throughout the United States and including the State of Washington. As a result of this investigation LegalZoom offered and the Attorney General accepted an Assurance of Discontinuance.  The Assurance of Discontinuance is not considered a finding of fact or admission of any violation or the commission of any particular act, but the failure to comply with the Assurance of Discontinuance would constitute prima facie evidence of such violations.  Notwithstanding the unauthorized practice of law charges, LegalZoom was also investigated for turning over sensitive, privately identifying personal and financial information to third parties.

Increasing Web Site Traffic and Visibility

Posted: Friday, Sep 24, 2010 @ 7:15 am | Written by Renee C. Quinn | 2 comments

In today’s technologically advanced world, all businesses should have an internet presence. But it’s quite daunting really to see how many businesses still do not see the benefits of having and maintaining a current website.  Think about this; when you want to learn about a company what is the first thing you do? Most people go to the Internet open up a search engine and type in the name of the company or industry. When people look for a company or business online, they will usually search Google or Bing often returning pages and pages of company websites on the topic that was searched. Do you ever go to the second or third pages of the list? How about the fourth, fifth or sixth page or beyond? Seldom, right? Did you know that the more popular your site is, the more popular it will become? The trick is getting people to find you amidst the hundreds of other similar websites on the net.  So how do you increase your search engine ranking to stand out?

TiVo vs. Dish at the Federal Circuit: Examining TiVo’s Brief

Posted: Thursday, Sep 23, 2010 @ 6:45 pm | Written by Gene Quinn | 5 comments

Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be heard en banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the Eastern District of Texas, alleging that its receivers infringe “hardware” claims (claims 1 and 32) and “software” claims (claims 31 and 61) of US Patent No. 6,233,389. The jury found there was willful infringement and the district court entered an injunction ordering EchoStar to cease infringing. It is this injunction that now is at the root of the dispute to be heard by the Federal Circuit. TiVo did not believe EchoStar lived up to the Order of the district court. The district court, seemingly out of an abundance of caution, decided not to utilize its summary contempt powers but held a year long proceeding to determine if infringement was ongoing. The district court found EchoStar was violating the injunction Order and acted accordingly. EchoStar appealed and argued that only a full patent infringement trial would suffice. The panel sided with TiVo over a strong dissent by Judge Rader, now Chief Judge of the Federal Circuit, who felt the summary proceedings were inadequate. For more see Looking Ahead to TiVo v. Dish at the Federal Circuit. So as the full Federal Circuit hears this case it is anticipated that the inherent powers of a district court to enforce their own Orders and administer justice will be front and center.

Don’t Copy My Blue Suede Shoes: Copyright Protection for Fashion Designs

Posted: Thursday, Sep 23, 2010 @ 2:25 pm | Written by Beth Hutchens | Comments Off

As I discussed briefly a couple of weeks ago on my blog, in the United States, the current copyright statute (Title 17, United States Code) does not offer protection to fashion designs. This is because, among other things, one cannot gain copyright protection for anything utilitarian. Also, copyright protection is only offered to original works of authorship. This is a complicated topic, but the best way to sum it up is that the standard for “original” means it can’t be “routine” or “mundane”.  Historically, fashion designs have been deemed utilitarian because one cannot sever the unique design features from their functionality. For example, a particular type of sleeve may have some unique design aspects to it, but its primary function is to cover an arm.   Further, it would be difficult to argue that a purple skirt is original. Yes, fashion designers, even if it’s Versace- a purple skirt is just not original. So, in addition to myriad other arguments, including if a design is actually a work of authorship, there is a question as to whether a fashion design is sufficiently original for protection.  But new legislation pending proposes to change that.

PTO Seeks to Incentivize Release of Humanitarian Technologies

Posted: Wednesday, Sep 22, 2010 @ 6:09 pm | Written by Gene Quinn | 5 comments

On Monday, September 22, 2010, the United States Patent and Trademark Office announced via Federal Register Notice that the Office is considering pro-business strategies for incentivizing the development and widespread distribution of technologies that address humanitarian needs. One proposal being considered is a fast-track ex parte reexamination voucher pilot program to create incentives for technologies and licensing behavior that address humanitarian needs. Under the proposed pilot program, patent holders who make their technology available for humanitarian purposes would be eligible for a voucher entitling them to an accelerated re-examination of a patent.  Given that patents under reexamination are often the most commercially significant patents, it is believed that a fast-track reexamination, which would allow patent owners to more readily and less expensively affirm the validity of their patents, could provide a valuable incentive for entities to pursue humanitarian technologies or licensing.

IPWatchdog Social Networking Diva Presents at Association of Patent Law Firms Annual Meeting

Posted: Wednesday, Sep 22, 2010 @ 3:10 pm | Written by Gene Quinn | 3 comments

Renee C. Quinn, Social Networking Expert

The Association of Patent Law Firms (APLF) will present its 2010 Annual Meeting in Chicago from September 29 to October 1 at the Hyatt Regency. The event will bring together lawyers and professionals whose practices are dedicated to patent, trademark and copyright law. Renee C. Quinn, of IPWatchdog, Inc., will be one of the speakers on the program this year, discussing Social Networking for the IP Lawyer on Friday, October 1, 2010. In addition to discussing the Social Networking phenomenon, the APLF Annual Meeting program will address contemporary IP law firm management issues in addition to current substantive IP topics. IP experts from Whirlpool, INVISTA and Clorox will share their IP experiences and issues and how they relate to recent IP developments.

Obviously Non-Obvious: Pay Congress from Surplus

Posted: Tuesday, Sep 21, 2010 @ 4:57 pm | Written by Gene Quinn | 46 comments

Over the last several days I was in Northwest Ohio, where I spoke at the University of Toledo College of Law and at Ohio Northern University College of Law; discussing with patent law students the patent bar exam, the PLI patent bar review course, resumes that work and careers in patent law.  During the 2001/2002 academic year I was a Visiting Professor at UT College of Law, so I still have a number of friends up there on the faculty, so a good time was had by all.  But one of the conversations I had with my friend John Barrett, Associate Professor of Law at UT College of Law, got my wheels spinning and reminding me that it has been a while since I wrote about obviously unpatentable but yet patentable inventions (see College Football Playoff System and Method to Spur the Economy by Cutting Taxes).  John and I frequently talk politics, and not sharing identical politics our conversations are always lively and entertaining.  But one thing we are definitely in agreement with is that the spending in Washington DC needs to stop, and John proposed what I believe is a brilliant solution!

News, Notes & Announcements

Posted: Monday, Sep 20, 2010 @ 10:54 am | Written by Gene Quinn | 1 Comment »

In this edition of News, Notes & Announcements, the mother of all patent trolls, Acacia Research Corporation, scores two more licensing agreements, one with IBM the other with US Cellular.  Samsung Electronics and Stanford Law School are combining forced to co-sponsor a patent prize for excellent writing about patent law, with real money awarded to the winner and runners-up; $10,000 and $5,000 respectively.  AIPLA announced that David Kappos will give the keynote speech at the annual meeting on Thursday, October 21, and Judge Gajarsa will speak on Friday and Chief Judge Rader will participate in a panel on the amicus process. The Wall Street Journal is reporting about new challenges to cookies tracking our every move online, and BIO is the charter sponsor of a new weekly public affairs television program called BioCentury This Week, which premiered yesterday and is available on the web.