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.
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.
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.
Posted: Tuesday, Dec 16, 2014 @ 8:00 am | Written by Kate Gaudry | 3 comments
In June of 2014, the Supreme Court held, in Alice Corporation Pty. Ltd. v. CLS Bank International (“Alice Corp.”), that claims directed to a technique for mitigating settlement risk failed to comply with the patentable-subject-matter requirement of 35 U.S.C. 101 (“101”). Alice Corp. involved four patents that had been assigned to business-method art units (characterizing business-method art units as 3621-29, 3681-89, 3691-95 and those in former technology center 2700). The Court found that the claims at issue were directed to an abstract idea and did not sufficiently transform the idea to become a patentable invention.
One question is whether Alice Corp., in essence, strips patent prospects from business-method inventions. Another question is whether the analysis in Alice Corp. will invalidate patents in other areas under 101. The author thus examined all cases citing and/or including Alice Corp. and identified outcomes of analyses of compliance with 101. Further, the patents at issue were segregated based on the technology center to which the corresponding patent application had been assigned and/or whether it was assigned to a business-method art unit.
This summer, the United States Patent and Trademark Office (PTO) responded t0 Alice Corp. by issuing Preliminary Examination Instructions in view of the case, and impact on examination of business-method patent applications was essentially immediate. Using LexisNexis PatentAdvisor, data was collected for a January time period (January 13-27, 2014) and July time period (July 13-27, 2014) that identified, for each Office Action issued during the time period, whether the Action included a 101 rejection and the corresponding art unit.
Posted: Monday, Dec 15, 2014 @ 6:41 pm | Written by Gene Quinn | 12 comments
Earlier today the United States Patent and Trademark Office released its much anticipated 2014 Interim Guidance on Patent Subject Matter Eligibility, which the in the industry has largely been dubbed USPTO 101 guidance. The guidance, which was signed on December 10, 2014, by USPTO Deputy Director Michelle Lee, will officially publish in the Federal Register on December 16, 2014. This eligibility guidance will become effective immediately upon publication in the Federal Register.
The USPTO explains in the Notice that this guidance is “for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U. S. Supreme Court.” This latest interim guidance supplements the guidance given by the office in June 2014 relative to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). This guidance supersedes the March 4, 2014, eligibility guidance for claims involving laws of nature, natural phenomena and natural products, which was issued relative to the Supreme Court’s decisions in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013).
The USPTO guidance, which in large part is reminiscent of the KSR Guidelines put out by the Office in 2010, goes through cases one by one. The USPTO explains the facts, provides representative claims and then explains the holding in each case so that patent examiners can understand the teaching point of the case and how to apply the holding to similar situations moving forward. Perhaps most notable, at least on the first review, is that the USPTO incorporated the recent Federal Circuit decision in DDR Holdings, where the Federal Circuit (per Judge Chen) found that the software patent claims at issue in the case were patent eligible.
The Companies We Follow series has been busy reviewing the R&D activities of some corporations which we haven’t featured before, and today we have the intellectual property development activities of 3M in our sights. Patent applications assigned to this company which have been filed with the U.S. Patent and Trademark Office disclose a number of unique chemical compositions, including an anti-fogging compound for better visibility through vehicle windows. A couple of electronic data systems are also disclosed, including one designed to enable community monitoring of local criminal offenders.
3M has a very strong patent portfolio and the past few weeks saw the addition of many intriguing technologies to its IP holdings. A couple of patents protect improvements to orthodontics and dental treatment, including a system designed for better digital modeling of interior mouth structures. Another more general medical innovation involves the use of a nylon article including a dye that provides antimicrobial properties when light passes through the dye. We also discuss a self-priming wall spackle compound and a software system for the digital management of sticky notes, such as Post-it notes.
Shedding further light on this program is critical to the credibility of the patent process. This article is primarily focused on the experience that my company, Gofigure, L.L.C., and its patent counsel have had with SAWS (rather than concerns and opinions that we have about this policy based on that experience).
My experience with SAWS is not a one-time circumstance, but is a body of difficult-to-obtain information that developed over a nearly five year period (and, for all we know, is likely still developing). The USPTO believes that the public has no reason to know about this internal program, which is likely why its existence is unknown to most within the patent community.
Posted: Sunday, Dec 14, 2014 @ 8:00 am | Written by Gene Quinn & Steve Brachmann | No Comments »
During the budget debates of 2013, Vice-President Joe Biden famously proclaimed: “Show me your budget and I will tell you what you value.” There is no doubt a lot of logic behind this statement. If you are spending money in one area but not in others that is the best indication of where you place the greatest importance. If that is case, it is clear that Microsoft prioritizes innovation. Between 2010 and 2012, corporate investment in R&D increased from $8.7 billion to $9.8 billion, or about 14 percent of the company’s total revenue during those years.
Posted: Saturday, Dec 13, 2014 @ 9:00 am | Written by Mark Nowotarski | No Comments »
Now that you’re interest is piqued, let me clarify that if you’re new to the world of patents, an international patent does not exist. Patents must be filed on a country-by-country basis. However, there is an international patent application (PCT), and filing with the World Intellectual Property Organization (WIPO) that allows you up to 30 months to decide which individual countries are the best fit for your product and business model.
However, the question of how to protect your product in an international marketplace is increasingly common now that some of the major online retailers such as alibaba.com and aliexpress.com are based outside the United States. Having the ability to sell your product to an international market can seem like the ideal opportunity. However, you may need protection from counterfeiters who also think that selling your product outside the United States is the ideal opportunity—and trust me, they won’t be sending you revenue.
If you’re anticipating working with an overseas manufacturer, you may need to obtain a patent in that country. The other situation to consider is if you are already manufacturing your product in another country, and want to begin sales in the United States. I’ll also discuss this scenario further in this article.
In State Street Bank & Trust v. Signature Financial Group,the patent in question was U.S. Patent No. 5,193,056, which issued to Signature Financial Group on March 9, 1993. The ‘056 patent was generally directed to a data processing system for implementing an investment structure which was developed for use in Signature’s business as an administrator and accounting agent for mutual funds. In essence, the system, identified by the proprietary name Hub and Spoke®, facilitates a structure whereby mutual funds (Spokes) pool their assets in an investment portfolio (Hub) organized as a partnership. State Street was in talks with Signature Financial to acquire a license, and when talks broke down they brought a declaratory judgment action to have the ‘056 patent claims declared invalid.
There were several critical issues in play in State Street. First was the so-called mathematical algorithm exception to patentable subject matter, and the other was the business method exception to patentable subject matter.
Today, we’d like to take a little time to honor the life of a true engineering visionary, one who understood the interactive potential of television sets decades before companies were willing to jump on board. In his long life, Ralph Baer exemplified the spirit of invention, developing his own ideas with a singular focus while conceiving an incredible breadth of useful technologies. Although the proliferation of video gaming consoles would gather steam late in the 20th century with the development of semiconductors, our Evolution of Video Game Consoles shows that early video gaming development that set the stage for all of the well-known consoles with which our readers will be familiar is solely the contribution of the German-American inventor Ralph Baer.
Posted: Thursday, Dec 11, 2014 @ 10:30 am | Written by Gene Quinn | 11 comments
The past several years have been difficult on patent owners. The erosion of patent rights has continued, and with it patent value has largely collapsed in several key sectors of the U.S. economy, including in the biotechnology and software industries. There is, however, a light at the end of the tunnel and real reason to believe that the industry has hit the bottom and will experience a bounce upward in 2015.
While timing a bottom is never a good investment strategy, recognizing a bottom does present real opportunity. As the 18th century British nobleman Baron Rothschild is famously quoted as saying: “The time to buy is when there’s blood in the streets.” This contrarian philosophy is based on the realization that when things hit bottom they can’t get any worse, and can only get better. In the patent/innovation sector there are some recent signs that things may have hit the bottom and be trending up, although I recognize that it doesn’t yet feel that way for many.
It seems to me that we have largely weathered the storm. The Supreme Court did not say software is patent ineligible, and we know from previous decisions that at least some business methods are in fact patent eligible. The Federal Circuit finally found software patent claims patent eligible, and according to Michelle Lee’s testimony at her confirmation hearing, the guidance from DDR Holdings will be incorporated into the forthcoming Alice guidelines. Furthermore, Senator Dick Durbin (D-IL) seems to have no appetite for patent reform, and from what I hear the industry is poised to fight for patent eligibility in Congress if the right opening presents itself. So all things considered, as a whole the industry seems to have bottomed out in 2014. If Congress stands down on patent reform, or instead actually focuses on things that might bring change for the better, 2015 promises to be a much better year. After all, it couldn’t get much worse.
Posted: Thursday, Dec 11, 2014 @ 9:00 am | Written by Gene Quinn | 6 comments
A typical General Counsel will see a variety of patent demand letters, at least some of which are legitimate and some of which are the type of bogus demands that are so vilified in the media and on Capitol Hill. A problem for many in house attorneys, particularly those who are themselves not technology companies but are technology users, is shifting through to determine which patents pose a real risk and which letters need to be taken seriously because the patents strong, high quality and likely to be litigated.
The terms patent strength and patent quality get used frequently within the industry, but what do they really mean? To a large extent the meaning of the terms depends on your viewpoint. The United States Patent and Trademark Office has historically employed a variety of quality metrics, but is a patent that is considered high quality from the perspective of the USPTO a strong patent, or a patent that the industry would view as a high quality patent, or one that would be viewed to be a valuable patent?
Whether we like it or not, the value of a patent is related to the likelihood that it could be successfully enforced in litigation. The value of the patent is also a function of the likely damages that could be obtained in litigation, which is related to the contributions made by the innovation underlying the invention disclosed in the patent. But the overwhelming number of patents are not litigated or licensed. In fact, by some estimates less than 5% of patents will ever be licensed or litigated. Indeed, even in a portfolio that is licensed there will be a handful of anchor patents that are of primary importance, with the remainder of the portfolio there to create volume, or safety in numbers.