In this final segment of my conversation with Ray Niro we discuss the politics of patents, starting with the reality that the Obama Administration has for some time adopted the view of Google and other similarly situated tech companies that seem comfortable with an ever weakening patent system. We also discuss the Supreme Court’s recent decision in Alice v. CLS Bank, as well as the continuing and alarming trend toward expanding the definition of patent ineligible subject matter.
QUINN: Given that the Obama Administration is already out in front anti-NPE, anti-patent troll, and seems to be taking the Google philosophy which is who their advisors are, it seems to me foolish to think the Patent Office is going to moderate that decision and limit it narrowly.
NIRO: Right. The Administration has become a shill for Google — you even have a Google person running the Patent Office. So you have a situation where any number of patents, tens of thousands of patents, are going to be affected by Alice and also by the Limelight decision on split infringement.
WALKER: Let me give you an example, Gene, that would be simple. I would like to be the nonexclusive agent for your blog in South America. All right? I think I can get people in South America to pay to read your blog. Because how it works in South America they pay to read blogs. I don’t know how much I’m gonna generate for you, Gene, but you can revoke it at any time. I won’t license to any of the major television networks, publishers, et cetera, I’ll only license to small people. And 85% of any money I collect in South America for the blog licenses that I generate for you I’m going to give you. Would you be willing to list your blog with me to try to generate revenue for you in South America?
QUINN: Yeah, I mean that’s a no brainer.
WALKER: There you go. It’s no different. Exactly the same. It’s a no brainer. Listing with us is a no brainer. The only reason you wouldn’t list with us if you didn’t want to have a nonexclusive agent. If you only wanted to license on an exclusive basis.
Ray Niro is one of the most well know patent litigators in the country. In some circles he may be referred to as “infamous,” and in other circles he may be simply referred to as famous. It all depends upon whether he is your attorney or whether he is the attorney on the other side. Regardless, he is well respected within the industry and has made a name for himself as a winner. But not only any kind of winner, but a champion for inventors who have patents infringed by some of the largest, most well funded companies in the world.
Over the past few years I have gotten to know Ray, he has written several op-ed articles for us, and about once a year we catch up with him in an on the record interview. What prompted this interview was seeing an announcement that he and his firm are now offering flat fee defense representation in patent litigation matters. Ray Niro defending a patent infringement case? I have to admit I didn’t realize he did defense work, so I wanted to talk to him about this new business model. He agreed.
In order to discussing his defense activities, we also discussed the failure of patent reform, the inevitable future patent reform efforts that are now a permanent feature of political activity in Washington, DC, and the recent Supreme Court patent decisions from the October 2013 term.
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.
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.
If you are familiar with the politics of intellectual property as it is played out inside the beltway you undoubtedly already know Marla Grossman. Grossman is an attorney and partner with the American Continental Group, and her bio page says “she helps her clients with strategic public policy planning and representation before the White House, US federal agencies and the US Congress.” She is a lobbyist who seems to most typically represent clients with a pro-intellectual property position. Her client list is a virtual whose who of the elite entertainment industry.
Grossman is “a mover and a shaker” around DC. Everyone knows Marla, and she knows everyone. You can find her at virtually every IP related event in the Greater DC area, whether it is at the Library of Congress, the United States Patent and Trademark Office, AIPLA, a black-tie affair or other industry event. We have included her in our “insiders” series and in 2013 the National Law Journal referred to her as a “leading copyright attorney and lobbyist.” She is the real deal.
Perhaps the reason Grossman has become so sought after as a representative, particularly in the copyright and entertainment industries, is because of her time working on Capitol Hill. The 1990s saw a number of legislative issues of great importance thanks to the sudden growth of the World Wide Web. During this time, from 1997-1999, Grossman served as minority counsel to the US Senate Judiciary Committee, where she worked to develop policy positions and legislative initiatives for US Senate Patrick Leahy (D-VT), who now Chair’s the Senate Judiciary Committee. During her time working on Capitol Hill Grossman worked on a variety of intellectual property, Internet usage, entertainment, online gaming and technology issues for Senator Leahy, and was directly involved with major reforms including the Digital Millennium Copyright Act; Copyright Term Extension Act; Trademark Law Treaty Implementation Act; Domain Name Amendment Act; and US Patent and Trademark Office Reauthorization Act.
On January 6, 2014, I had an on the record conversation with Donald Chisum and Janice Mueller, both exceptional and well known patent scholars in their own right. Together Chisum and Mueller form the faculty of the Chisum Academy, which offers a three-day intense seminar that is limited to ten (10) participants.
In part 1 of the interview we discussed patent reform and started to discuss patent eligibility, particularly as it relates to software. We pick up the discussion there.
QUINN:In looking back, Justice Stevens’ decision in Bilski had pieces that would have made for a much easier régime to live under because he did say in one in particular area that the innovation in question in State Street was patentable because it was a device. I’m optimistic that we’re going to get something good out of the Supreme Court in CLS Bank. But having said that, I’m still worried, because it seems to me that they totally missed the boat in Mayo where they said we’re not going to follow the solicitor’s invitation to let sections 102, 103, or 112 invalidate that claim. That wasn’t really an invitation, that’s what the statute mandates and up until then Mayo that was always what the Supreme Court had mandated. So you just never know what you’re going to get from the Supreme Court, but I can’t imagine we’re going to get anything less intelligible than the Federal Circuit en banc decision in CLS Bank. Now Janice, you have spent a lot of time teaching patent law to students. How would you describe that decision to people who are new to this field?
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.