In today’s Companies We Follow column, we return for a quick look at Texas Instruments, who we’ve profiled in the past. This corporation always has a healthy number of innovations traveling through the halls of the U.S. Patent and Trademark Office on any given week. Like always, we’ve done our part to identify the most intriguing innovations coming out of the research and development activities of this manufacturer for our readers’ enjoyment.
We begin today’s profile with an in-depth look at a featured patent application describing better security systems for smart batteries in use by a wide array of mobile electronic devices. The advanced circuitry of these batteries would allow for the same amount of compatibility among generic chargers while dissuading would-be copiers from cloning batteries. We also discuss some interesting innovations related to computerized key fobs for secure vehicle access and a couple of improvements to integrated circuit and semiconductor manufacturing.
Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure. But there are also true inventions that use a computer as part, or all, of the implementation of the invention. There is no reason to throw out the baby with the bathwater. So it is of utmost importance that we examine the many falsehoods related to software patents.
In this new article I intend to provide facts about software and the software industry to debunk these misnomers, myths, misconceptions, and just pure misunderstandings about “software patents”.
What follows is the final segment of my interview with Steven Kunin, the former Deputy Commissioner for Patents for Patent Examination Policy and current partner at Oblon Spivak. In part 1 of our interview we discussed the Federal Circuit, de novo review and how to manage patent examination policy when the Supreme Court refuses to allow bright line rules. In part 2 we discussed administrative patent trials brought into being by the America Invents Act (AIA). In this final segment we discuss the role of a patent expert and particularly focus on inequitable conduct since Therasense.
Without further ado, what follows is the interview finale.
QUINN: Let’s shift gears a little. I know one of the reasons that we wanted to sit down and talk today is to talk about the role of an expert witness in patent cases post-Therasense. So maybe we could just jump right in with your initial thoughts and then we can go from there.
KUNIN: I think there is a significant misunderstanding of the value of patent office practice expert witnesses in patent litigation. Some people have the misperception that all of the work of patent office practice experts has been in support of or defending against inequitable conduct allegations in the federal courts . Some believe that as a result of the Therasense case patent office practice experts have no longer any role to serve. Certainly a patent office practice expert cannot testify as an expert on the law; that is the province of the judge. But there are lots of aspects of PTO practice and procedure, which are a black box to both juries and judges in patent litigations. In those cases, a patent office practice expert will serve a valuable role to help navigate the judge and jury through the patent examination process and the intricacies of what happened through the lens of the applicable practices and procedures governing the process.
The American Invents Act (AIA) created three new ways to challenge the validity of claims in already issued patents. While the AIA was signed into law on September 16, 2011, the new post grant proceedings did not become effective until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review and covered business method review, which is a variety of post-grant review that is limited to business methods relating to the financial industry. Because post-grant review was specifically limited in applicability to patents that were examined under the new first to file law, only patents that have an effective filing date on or after March 16, 2013, are capable of being reviewed in a post-grant review proceeding. Therefore, so far the USPTO has only seen inter partes review and covered business method cases.
On August, 14, 2012, the United States Patent and Trademark Office promulgated final rules applicable to these new proceedings, and at that time the USPTO said that they anticipated that 420 petitions for inter partes review would be filed in fiscal year 2013. The USPTO also said they anticipated that in fiscal year 2014 there would be 450 petitions for inter partes review filed. See 77 FR 157 (August 14, 2012) 48713. The Patent Office severely under estimated the popularity of post grant proceedings, particularly inter partes review. Indeed, the PTAB is on pace to reach more than 1,100 administrative trials in FY 2014.
Inter partes review has been extraordinarily popular due to the fact that the rules are stacked in favor of the challenger. Indeed, recently Scott McKeown who is a partner at Oblon Spivak and co-chair of the Oblon post grant practice group wrote on his blog that the Patent Trial and Appeals Board (PTAB) “offers unprecedented speed with none of the patentee safeguards of the district court.” The biggest safeguard that a patentee enjoys at the district court is a presumption of validity. In other words, during a patent litigation in the district court the patent is presumed valid and will remain valid unless and until the challenger can demonstrate by clear and convincing evidence that the claim (or claims) are invalid. At the Patent Office, however, the patent does not enjoy any presumption of validity and the challenger need only meet a preponderance of the evidence standard, which is substantially less onerous than the clear and convincing standard in a patent litigation in the district court.
As some will know, there are primarily two law firms that are handling the majority of administrative trials at the United States Patent and Trademark Office. While many firms practice in this area, Oblon Spivak and Sterne Kessler far and away do more administrative trials than anyone else. Kunin is co-char of the Oblon Spivak post grant practice group, so during our conversation we spent considerable time discussing Patent Office administrative trials. What follows is the part of our conversation relating to post grant proceedings.
Without further ado, here is part 2 of my interview with Steve Kunin.
QUINN: I get the fact why the PTAB is instituting such a high number of the petition. Because the fee is not insignificant, but it’s certainly a whole lot cheaper than fighting in district court.
KUNIN: So you’ve answered the question. That is the people who are willing to pay for inter parties review petitions are willing to pay for a high quality job of patentability review by the PTAB by filing petitions that will easily beat the reasonable likelihood of prevailing standard.
Late in the day on Monday, March 17, 2014, the USPTO said that Oracle’s first version of Java 8 will be released on Tuesday, March 18, 2014. If you install Java 8 and encounter authentication issues when trying to use EFS Web or Private PAIR the USPTO says that you will need to revert to Java 7 Update 51. The USPTO says that Java 8 will not be an automatic update.
The USPTO is working with Oracle and Entrust “for a solution,” which sounds more ominous than the rest of the announcement that Java 8 may create authentication issues.
When it comes to patent holdings from the U.S. Patent and Trademark Office, the International Business Machines Corporation (IBM) of Armonk, NY, is far and away the major player in this field. During 2012, IBM received a record 6,478 patents, eclipsing the combined totals of Symantec, Oracle/SUN, Amazon, Apple, HP, EMC and Accenture. For more than 20 years, IBM has been the top recipient of American patents, allowing it to flex some serious muscles in intellectual property law. For example, the U.S. Securities Exchange Commission just released documents that show IBM received $36 million from Twitter for selling the latter 900 patents in January. First announced in January, this deal was struck to avoid an IBM lawsuit for patent violations on behalf of Twitter. Recent comments from the company’s CEO, Ginni Rometty, indicates that the company will continue its shift towards cloud-based services and data analytics.
Whenever we return to cover IBM for the Companies We Profile series here at IPWatchdog, we realize that there’s no way to adequately report every innovation coming from that technological giant. Today, we’ve gone through and snagged some of the most interesting patent applications and issued patents published by the USPTO from just the past two weeks. What we’re noticing are a number of novel inventions designed to improve the computing experience at a very personal level for many, so we spend some time focusing on those inventions in particular.
We begin today’s analysis with a look at our featured patent application, which features a system for digitizing human physiological inputs in order to determine emotion. This computer analysis program could detect negative and positive behavioral evidence through facial expressions and voice inputs to determine a more exact emotional state for a user. We also profile some patent applications discussing better means of providing online content and communication services to users.
Steve Kunin has been in private practice at Oblon, Spivak for over a decade. Today he is on the firm’s Management Committee, serving as General Counsel, and he also co-chairs the firm’sPost-Grant Patent Proceedings practice group. Prior to entering private practice Kunin worked at the United States Patent and Trademark Office, rising to the level of Deputy Commissioner for Patents in charge of Patent Examination Policy. As a result of this experience at the USPTO, Kunin is a sought after expert who has testified as an expert witness by report, deposition or at trial on patent examination policy, practice and procedure in more than 80 cases.
I have known Kunin for years. We occasionally get together and swap e-mails. During one of our latest meetings I suggested that our conversation would make excellent reading. He agreed to once again go on the record for a wide ranging discussion of patents.
My interview with Kunin occurred on Wednesday, February 26, 2014, at his office in Alexandria, Virginia. We discussed everything from the Federal Circuit’s recent decision in Ballast Lighting, the CAFC’s continued love affair with de novo review, the Supreme Court refusing to allow bright line rules, patent office administrative trials, the role of a patent procedure expert in patent litigation and more.
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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