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.
The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea. While ideas are not patentable, there will be a point in time when the idea you are working on comes into vision with enough detail to cross what I call the idea / invention boundary. To have a protectable invention you have to be able to describe it with enough detail so that someone of skill in the relevant technical field can understand how to both make and use the invention. Once you can do that, or once the patent attorney or patent agent you hire can, you are ready to file a patent application. If you are struggling at the idea phase please see Turning Your Idea into an Invention and Moving from Idea to Patent.
The first step in the patent process should really be a patent search. Doing a patent search is the only way to get a realistic idea about whether the invention is likely able to be protected. There is nothing wrong with inventors doing their own preliminary search, and in fact that is very useful task. SeePatent Searching 101. At some point as your project proceeds you should have a professional patent search done. Only with a professional patent search will you really discover everything that can be found. Just like a novice in your field would make mistakes, as a novice patent searcher won’t find everything that can be found, including many things that really need to be considered during the drafting stage of a patent application. After all, the whole point of a patent application is to articulate how the invention is unique. How can you do that without a comprehensive knowledge of what exists in the prior art?
In many cases, if not most cases, a patent search will suggest that at patent could be obtained. The critical question, however, is not whether a patent can be obtained, but rather whether a useful patent can be obtained. If you layer on enough specifics to any invention you will cross the point where the patent examiner will say your invention is new and non-obvious. But a patent that has such narrow claims is hardly useful for anything other than framing and hanging on the wall.
The United States Patent and Trademark Office has recently released the latest information about the number of post grant trial proceedings that have been initiated. The clear, resounding verdict is that post grant administrative trials are extraordinarily popular. In fact, they are far more popular than Congress anticipated they would be at the time the America Invents Act (AIA) was passed.
Scott McKeown, a partner with Oblon Spivak who co-chairs the firm’s Post Grant practice group and is the primary author of the Patents Post Grant Blog, recently posted his analysis of the latest post grant trial statistics announced by the Patent Trial and Appeals Board (PTAB). See March 2014 Update to PTAB Trial Statistics. Here is what the chart looks like:
According to McKeown these numbers are significant because they are significantly higher than the numbers originally anticipated by Congress, showing that the industry finds these administrative trials to be extremely useful, even more so than predicted. His article explains: “These numbers are well beyond the 281 filing limit per year Congress envisioned…”
The multinational Internet service corporation Yahoo!, Inc., is headquartered in Sunnyvale, CA, just one of many technology developers populating this corridor of Silicon Valley in Santa Clara County. Anyone who has visited Yahoo!’s main website is familiar with the wide breadth of online services offered by the company, including messaging services, online gaming, news readers and more. Recently, Yahoo! has been trying to break away from other social networking services offered by Facebook and Google by announcing that users can no longer access Yahoo! services through these login credentials. Yahoo!’s recent acquisition of Vizify, an online visual identity service, and their decision to shut the service down is a bold move to try and reduce competition in their online markets.
In today’s Companies We Follow column here at IPWatchdog, we’re taking a stroll down the Silicon Valley to see how Yahoo! has been faring recently at the U.S. Patent and Trademark Office. What we found were plenty of interesting inventions regarding consumer Internet technologies that will interest plenty of our readers, so we’ve gathered some of the best patent applications and issued patents assigned to Yahoo! by the USPTO.
We start our tour today with a look at a novel system of providing map information to a mobile device user. Using spatial metadata collected from a plurality of smart and “dumb” devices, users can access this system to pull contextual map information about individual buildings. We also discuss a couple of patent applications directed towards systems of collecting contact information for a user’s profile as well as a couple of systems for mood analysis.
Former CAFC Chief Judge Paul Michel filed an amicus brief in Alice v. CLS Bank.
In a few weeks, the Supreme Court of the United States will begin to hear arguments in Alice Corp. v. CLS Bank International. This case involves the very basics of U.S. patent law, namely what is considered patent eligible, and will have wide-reaching effects in the American technological sector. The case before the Court will ask it to decide upon the patent eligibility of software based on the most foundational aspects of patent law: Section 101 of U.S. Code Title 35. If a category of innovation is not patent eligible under Section 101 it does not matter whether the invention is highly useful, new and non-obvious. In fact, an invention can even be pioneering and revolutionary and not deserve a patent if it is deemed patent ineligible under Section 101. Because a determination that an entire area of technological pursuit can be deemed patent ineligible under Section 101 historically that has been only infrequently used so as to not unnecessarily kill innovative developments in their infancy.
In recent years, however, the Supreme Court has shown far more willingness to find things patent ineligible, which is a disturbing trend. In fact, In Mayo v. Prometheus, the Supreme Court conflated Section 101 with 102 to say that something that a patent claim that does not related to a law of nature was still nevertheless patent ineligible as a law of nature because the additional steps added that made it different than a law of nature were merely conventional. Up until Mayo such an analysis had been mandated by the Supreme Court to occur under Section 102. Indeed, the statute the Supreme Court ostensibly must follow requires novelty and conventionality to be addressed under 102. Thus, as the result of Mayo, and the Supreme Court’s decision in Myriad, there is great concern about the future of patent eligibility because it seems the Supreme Court now seems to prefer to find inventions patent ineligible without the mandated statutory analysis under 102, 103 and 112.
Software innovations are ubiquitous in our country, in use by machines and systems from consumer devices on to basic utility grids. There are numerous individuals who are keenly interested in the outcome of this case, and many have volunteered to participate and provide their insight, opinions and arguments to the Supreme Court. With this in mind we wanted to share some of the most informative amicus curiae briefs that have been filed with the U.S. Supreme Court. We have already published articles about the IBM amicus brief, the brief filed by the Solicitor General and the Trading Technologies amici brief joined by another 45 companies. Now as a part of our ongoing coverage of this case, we’ll look at what several other interested parties have to say about the patentability of software, and how our country’s patent system should be treating this issue.
On March 25, 2014, Managing IP will hold its annual US Patent Forum at the Willard InterContinental, in Washington, DC. I will be at the event, which should be quite interesting.
The Keynote Address will be given at 9:00 am by Michelle Lee, the new Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. Deputy Director Lee joined the USPTO on January 13, 2014, but has yet to have much of a public schedule. Instead, Deputy Director Lee has largely been engaging in a series of one-on-one private meetings with various stakeholders. This will be one of her first public appearances, which in and of itself makes this even noteworthy.
The programming for the event is full of presentations by attorneys from major law firms and major corporations. Nevertheless, one other panel of particular note is the panel that will be lead by Todd Dickinson, the former Director of the USPTO who is now the Executive Director of the American Intellectual Property Law Association. Those familiar with AIPLA meetings and programs have no doubt seen Dickinson as moderator before, and in this role he engages in what you might call a round table discussion or interview of the top newsmakers in the industry. This program will be no exception. Dickinson will engage in something akin to a fireside chat with Judge Prost of the United States Court of Appeals for the Federal Circuit. Also participating will be Blair Jacobs of McDermott, Will & Emery.
EDITORIAL NOTE: A diverse group of 46 amici, spearheaded by Trading Technologies International, filed an excellent amici brief worth reading in Alice v. CLS Bank at the United States Supreme Court. The Summary of the Argument is republished here with permission. Charles J. Cooper is the Counsel of Record, but is joined on the brief by Vincent J. Colatriano and William C. Marra (both of Cooper & Kirk), as well as Steven Borsand and Jay Knobloch (both of Trading Technologies)
In keeping with the Constitution’s expansive grant to Congress of power to secure for “Inventors” exclusive patent rights to “promote the Progress of Science and useful Arts,” U.S. CONST. art. I, § 8, cl. 8, Congress has since 1790 broadly defined the subject matter of inventions eligible for patent protection. For nearly as long, this Court has applied exceptions, of its own making, to Congress’s designation of these “broad patent-eligibility principles.” Bilski v. Kappos, 130 S. Ct. 3218, 3225 (2010). This case focuses on one of those judicial exceptions – the “abstract ideas” exception.
The Court granted certiorari to decide “[w]hether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?” Importantly, the patent claims in this case do not recite “a scientific truth, or the mathematical expression of it,”  Mackay Radio & Tel. Co. v. Radio Co. of Am., 306 U.S. 86, 94 (1939), and no court below entertained any evidence relating to whether the claims are novel and non-obvious under Sections 102 and 103 of the Patent Act. Thus, the question here is whether computer-implemented inventions that are not directed to a scientific truth should be deemed ineligible even if such inventions are novel, non-obvious, and otherwise patentable. 
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.
Typically blog roll links are not helpful to a website's rank. To give some additional "link love" to those we think you might be interested in reading we have moved our blog roll and links to a dedicated page. Go to IPWatchdog Blog Roll & Links.