Don Chisum (left) and Janice Mueller (right) at the United States Patent and Trademark Office.
I’ve known Janice Mueller for a number of years dating back to when she was a full time Professor of Law. Mueller wrote, in my opinion, one of the best summaries of patent law and I recommended it to my patent law students, as well as new practitioners, inventors and entrepreneurs. She has now left full time teaching, but she has not left patent scholarship behind. She is now the author of a patent treatise and she co-teaches in the Chisum Academy with Donald Chisum, who everyone in the patent world knows from his definitive encyclopedia of patent law titled simple Chisum on Patents.
Recently Mueller wrote to me to let me know about the upcoming Advanced Patent Law Seminar that the Chisum Academy will host in Cincinnati from March 5, 2013 through March 7, 2013. I floated the idea of doing an on the record conversation with her and Don Chisum, which they both accepted.
In this two-part conversation we discuss everything patents, from patent reform legislation, to patent litigation abuse, to how the Supreme Court and Federal Circuit are handling patent matters and much more.
Without further ado, here is my conversation with these two preeminent patent scholars.
Earlier today the United States Supreme Court declined to accept Soverain v. Newegg, which will allow one of the more pronounced travesties of justice to stand as if the Federal Circuit got it correct in the first place. Soverain President Katharine Wolanyk said, “We are obviously disappointed by the Supreme Court’s denial of our Cert. petition, and are troubled by the precedent it leaves in place.”
Everyone who has objectively looked at the case knows that the Federal Circuit made a terrible mistake, but now that won’t be corrected and a serial patent infringer that has made a business practice of ignoring patent rights gets to use the Soverain technology for free. And just when you think things couldn’t get more strange, Newegg makes a bizarre comment with misogynistic undertones.
“The witch is dead, hurray,” said Lee Cheng, Newegg’s Chief Legal Officer. It doesn’t take a rocket scientist to realize that Cheng is calling Wolanyk a witch. Of course he will deny such a charge and he and his supporters will proclaim their innocence. But this is no different than liberals working “weight” into every comment or tweet they make about New Jersey Governor Chris Christie. This type of not so subtle dig is what those familiar with Newegg have come to expect. It is this juvenile, over the top, holier-than-thou attitude that Newegg personifies.
In the American legal system, the popular notion is that the courts should be equitable and fair to all parties, both plaintiffs and defendants, regardless of the issue at stake. This is reflected in our system’s handling of lawsuit legal fees, which typically keeps the costs of engaging in litigation with the party who contracted those costs during the legal process. Only in the most special of circumstances does the losing litigant have to pay the attorneys fees of the prevailing party in the United States. This has long been believed to be the best way to make sure that even those of modest means have meaningful access to seek redress in Court for wrongs suffered.
The American concept that each party should ordinarily pay for legal representation regardless of whether they win or lose has developed in sharp and direct contrast to legal fee rules in other countries. The two contrasting regimes are named for the two countries that most clearly represent these differing views: the United States and England. In recent days, the United States Congress, urged on by certain high-tech corporations, has considered legislation that would create new rules regarding fee shifting for patent lawsuits as a way to discourage so-called “patent trolls” from engaging in litigation. Unfortunately, the legislative proposals currently being considered are not at all narrowly tailored to address the patent troll problem, even assuming there is a patent troll problem, which the objectively available data calls into question in the first place.
Certainly, there is abusive litigation that occurs in the patent world. This abusive litigation does not, however, signal a problem with the patent system. Rather, the abusive litigation tactics leverage judicial inefficiencies to force litigants into paying exceptionally paltry sums rather than pay to fight a patent litigation that on average could cost $2 million to see through to the end. Those sending demand letters for $500 or $1,000 to small entities should be stopped. Those that sue large entities without care of whether there is infringement and settle for $25,000 or $35,000 should be stopped.
Ten years ago if you said that patent eligibility would become one of the most important, hotly debated issues in the patent field most in the industry probably would have thought you simply didn’t know what you were talking about. Five years ago some saw the issues percolating, but still many in the trenches with their day-to-day practice life would likely still have raise a cautious eyebrow and questioned why you thought even the Supreme Court might turn its back on a solid generation of well established patent law. The tone was perhaps cautious, but most couldn’t imagine that the Supreme Court and the Federal Circuit would cease their expansive view of patent eligibility.
Oh how times change!
Today, after several years of substantial turmoil, patent eligibility in a variety of economically significant technologies is extremely uncertain, including software, natural products, medical diagnostics and personalized medicine. It is with great irony that one of the few things we know with any degree of certainty is that business methods are patent eligible. We likewise know that at least some cDNA is patent eligible, except that man-made cDNA that happens to be identical to what occurs in nature. Of course, that raises more questions than it answers.
Every month I stumble across a number of items that catch my attention, so we have started publishing a monthly News & Notes column that incorporates various items of possible interest, a Pharma & Biotech Update and also a rundown of litigation, deals and licenses. Obviously, these are not intended to be an exhaustive summary, but rather interesting items that might be worth knowing in order to keep your finger on the pulse of the industry.
Welcome to the latest edition of News & Notes for October 21, 2013.
Initially I thought I might make this a monthly column, but it might become bi-monthly instead, or perhaps as I accumulate enough to warrant a full post. I’m also not sure I’m thrilled with the title News & Notes, so I’m open to suggestions. Of course, if you have some interesting news to share you can always send me an e-mail message.
Without further ado, in this edition:
Soverain Software Files Certiorari Petition with Supreme Court
Acacia Research Re-Branding Launch
Survey Shows Majority Not Familiar with New gTLDs
University of South Florida Launches Revenue Incentive Patent Cost Sharing Program
Mark Cuban Cleared of Insider Trading
European Patent Convention Celebrates 40 Years
John Marshall Law School Hosts IP Symposium – November 8, 2013
ALS Goes Into Remission with Steroid Treatments?
Trade Secret Hacking Case Results in 5 Year Prison Term
It is not uncommon for inventors to want to attempt to draft and file patent applications on their own, and I frequently get asked about sample patent applications. Here is where you as an inventor need to make a critical choice, and making a thoughtfully considered business decision is fine, but fooling yourself into believing that you can and will do as good a job as a patent professional is an enormous mistake.
I cringe at times because some inventors will make a reckless choice, or choose to represent themselves because they think you can do as well as a patent attorney who has dedicated their entire career to mastery of the art. It is true that the cost of hiring an attorney to draft a patent application can price inventors out of the market, and in that case inventors are left with no real choice, or so it seems. Either you do nothing and simply don’t pursue patent rights, or you have to do something on your own that is within your budget.
If paying a patent attorney is out of the question because of lack of funding you would serve yourself well to sit down and carefully go over your budget (which all inventors should do) and ask whether you have the financial resources and abilities to pull off the project. Inventing, patenting and making money by commercializing does not come cheap, and if you have few resources you might be better off building your savings so you can appropriately pursue your inventions in the future. If you are truly an inventor you are creative and, trust me, there will be many inventions in your future. Rarely in my experience does an inventor have only one idea/invention. Creative people create, which means it can be particularly important to manage your budget wisely. Carelessly pursuing one invention and recklessly spending funds can make it difficult, if not impossible, to move forward when you find the truly great idea/invention.
BlackBerry Limited, formerly known as Research In Motion, is a telecommunications company headquartered in Waterloo in the Canadian province of Ontario. Known for its flagship product, the BlackBerry, RIM has severely reduced its market presence in recent days and the main shareholder has even announced that the company will go private soon, removing its stock from public exchanges. Although the company still services many millions of electronic device owners, its future seems to be cloudy at best.
In IPWatchdog’s Companies We Follow series, we typically take a look at companies on the forefront of technological development. However, today we want to take a look at Research In Motion to profile a former giant in the industry before it slinks off further into obscurity. We discuss possible roads down which RIM may travel in order to make itself profitable in the next few years. We’re also featuring the companies patent applications and issued patents from the U.S. Patent and Trademark Office to get an idea of the portfolio it will still be able to protect.
BlackBerry has a lot of patent applications still going through the USPTO system, as far as we can tell all of them dealing with mobile devices or communications systems in one way or another. The company is also still amassing a portfolio of US patents. Recent patents that are intriguing in the technological sector include a few patents that improve the ability of mobile device users with limited keyboards to input text commands. Another issued patent creates a navigational tool for a mobile device that plays an audible feedback when operated. Still another patent of recent vintage displays a notification light when an event is upcoming.
This all begs the question, however, about what the future holds in store for BlackBerry. Will they regroup under private ownership? Will they morph into a licensing juggernaut? Might they give up being a manufacturing company altogether and turn their considerable portfolio on the industry? Will the patent portfolio be auctioned off to the highest bidder?
Generally speaking, a patent application will publish 18 months after the earliest priority date claimed. What gets published does become prior art, but the rights may never mature into an issued patent. Sometimes it can be quite interesting to look at published patent applications to get an idea about what a company or University may be working toward achieving, as Steve Brachmann does for us every week as part of our Companies We Follow series. But there are no doubt some bizarre patent applications that have published over the years, such as a method of walking through walls like a ghost. See Knowing When You Have Too Much Time on Your Hands. So you never know quite what you will get with a patent application, although the jokesters are typically kept at a minimum given the expense of filing a patent application.
Nevertheless, recently as I was talking with Paul Dougherty of The Patent Box, he indicated that he could run a search that identified the shortest patent claims. It seemed like it could be fun, and perhaps might become a new series here on IPWatchdog.com.
In terms of observations about these claims, although short some of them may be more detailed than you might think, particularly the synthetic gene that makes reference to a particular gene sequence, for example. Of course, biology and chemistry are beyond the scope of my expertise, so these claims are provided here for your consideration. Hopefully some of our regular community members, who I know do specialize in bio/chemical matters will weigh in with comments.
While the gene sequence claim is no doubt more narrow than you might think, others are almost laughably broad to the point where they have absolutely no chance of being issued. For example, there are a couple so-called omnibus claim on this list, although many were located. An omnibus claim is not allowed in the United States and basically says “I claim what is described in the specification.” That type of claiming is simply not allowed and will be summarily rejected without any meaningful, substantive examination. There are also other very short mechanical claims listed, which seem to have no chance of succeeding on a first review by the patent examiner.
EDITOR’S NOTE: This year I will be speaking at the AIPLA meeting on The AIA: Traps for the Unwary. I will publish my paper here on IPWatchdog.com in segments over the next week. We also have on tap a wide ranging discussion with AIPLA Executive Director Todd Dickinson, and a few other AIPLA-centric pieces are in progress. Ultimately our AIPLA coverage will culminate, as usual, with full coverage of the AIPLA annual meeting, which takes place at the Marriott Wardman Park Hotel from October 24-26, 2013.CLICK HERE to register for the AIPLA annual meeting.
The America Invents Act (AIA),  signed by President Barack Obama on September 16, 2011,  ushered in many significant changes to U.S. patent law. The USPTO summarizes the changes that went into effect on March 16, 2013 as follows:
(1) Convert the U.S. patent system from a ‘‘first to invent’’ system to a ‘‘first inventor to file’’ system; (2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country; (3) eliminate the requirement that a prior public use or sale be ‘‘in this country’’ to be a prior art activity; and (4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103. These changes in section 3 of the AIA are effective on March 16, 2013, but apply only to certain applications filed on or after March 16, 2013. 
Honestly, it is impossible to in any single article or series of articles describe the magnitude of the changes ushered in by first to file. This is because Congress has fundamentally altered the definition of what is considered prior art. An applicant is still entitled to a patent unless there is prior art that renders the claimed invention unpatentable because it is not new or because it is obvious. But what references and information can be considered prior art? That is where things have fundamentally changed.