Doug Croxall on panel at IP Dealmakers on Nov. 7, 2014.
Doug Croxall is Chairman and Chief Executive Officer of Marathon Patent Group (NASDAQ: MARA), which is a patent acquisition and licensing company. Prior to joining Marathon, Croxall was the CEO and Chairman of Firepond from 2003 – 2009. He acquired the public company in 2003, taking Firepond private in an all cash tender offer. While CEO of Firepond, the Firepond patents generated approximately $90 million in licensing revenues.
I met Croxall in New York City in November 2014, at the IP Dealmakers Forum. Croxall has been successful in the patent monetization business for years and had a unique prospective on patents as an asset. “If you are going invest your family’s fortune, I don’t think you will put all your money in one equity,” Croxall explained in a panel discussion at the event. “So it is the same thing with respect to an asset or a portfolio of assets.” He would go on to say that Marathon Patent Group has learned from “what worked in other asset areas and applied it to this one.”
While this philosophy may not be considered earth shattering within he investment community, talking about patents like they are similar to any other asset and applying tried and true investment principles struck me as quite enlightened. Yes, patents are becoming a more widely known asset class, but within the patent industry, or at least the day-to-day patent attorney industry, I haven’t heard many (if any) speak of patent assets in this way. I was immediately intrigued for many reasons, perhaps most directly because I always preach to inventors and entrepreneurs that they should look at what succeeds in business and apply those lessons to their own endeavors, which was at the heart of what Croxall was talking about. I knew right away I wanted to interview him.
Recently I had the opportunity to speak with Sherry Knowles on the record. Knowles is the former the Senior Vice President and Chief Patent Counsel of GlaxoSmithKline who took on the USPTO and prevailed during the claims and continuation saga in 2007-2008. She has since moved on to found her own strategic consulting firm. I caught up with her in advance of her speaking at Managing IP’s European Patent Reform Forum, which will take place in Silicon Valley on December 10 and New York on December 12. Part 1 of our interview was devoted primarily to a discussion of what lies ahead as Europe embarks on substantial procedural reform and harmonization across the EU.
What appears below is the final segment of my interview with Knowles. In this installment we get into a passionate discussion of obviousness, addressing recent Federal Circuit decisions that really should have everyone scratching their heads. While the law is not always applied as written, if the law of obviousness were ever applied literally as written by the Supreme Court and Federal Circuit could anything ever be patented any more?
Sherry Knowles is a name that everyone in the patent community either knows, or should know. From 2006-2010, Knowles was the Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, where she served as the worldwide head of patents for all litigation and transactional matters. Those familiar with recent patent history know that this time frame coincides with the failed attempt by the United States Patent and Trademark Office to limit the number of claims a patent could have and limit the number of continuation applications in any patent family. Knowles was on the front lines of that important fight when GlaxoSmithKline sued the USPTO and prevailed.
In 2008, Managing IP Magazine named Knowles one of the top 10 most influential people in Intellectual Property, and in 2010, the New Jersey Intellectual Property Lawyers Association awarded the Jefferson Medal for exceptional contribution to Intellectual Property. In November 2011, Intellectual Asset Management Magazine listed Knowles among the top fifty individuals, companies and institutions that have shaped the IP marketplace over the preceding eight years.
I recently had the opportunity to chat on the record with Knowles, who now fronts her own strategic consulting firm, and we had a wide ranging discussion about European patent reforms and the law of obviousness as interpreted by the Federal Circuit. The first half of our interview, which appears below, is devoted to discussion of European patent reform and what it means from a strategic standpoint for patent owners. In part 2 we get into a very spirited discussion of obviousness and the Federal Circuit.
Jaime Siegel is Executive Vice President of of Licensing and Litigation at Acacia Research. He joined Acacia in 2013, coming to the company after serving as Vice President and Senior IP Counsel for Sony Corporation. Siegel has extensive experience in international IP monetization, enforcement and strategic acquisitions, and he agreed to chat with me on the record. Our interview took place on Thursday, October 23, 2014.
Siegel will be attending the IP Dealmakers Forum in New York City from November 6-7, 2014. He will also be on a panel on Friday morning titled Evaluating Public Market IP Investment Opportunities, which will discuss how investors can measure market value and performance of public IP companies, as well as exploring the various business models and strategies currently seen in the marketplace.
My conversation with Siegel was for the purpose of discussing these topics. As you will read below, while our discussion starts there it became a far ranging discussion of the issues facing the industry more globally. If there is a theme that shines through from our discussion it is about the undeniable reality that early stage investors always want to see patents before investing.
On August 28, 2014, I had the opportunity to speak with Professor Mark Lemley on the record. Lemley and I share the opinion that Alice v. CLS Bank represents a significant change in the law relevant to software patents. To my surprise this truth is not understood or appreciated by many in the patent community.
If you review the Alice form paragraph rejections from the USPTO, the reality that the USPTO is withdrawing Notices of Allowance and issuing Alice rejections, the latest decisions from the Patent Trial and Appeal Board, and a handful of post-Alice Federal Circuit cases the landscape is extraordinarily adverse to software patent applicants. Still there are those who protest and say that little or nothing has changed despite the objective reality facing applicants and patent owners.
By now virtually everyone in the patent industry is aware of the Supreme Court’s decision in Alice v. CLS Bank. What is less universally understood is the full extent of the decision. My immediate reaction was that this would be extremely bad for software patents. Many others thought I was engaging in extreme exaggeration. Since then, however, the Patent Office has started issuing Alice rejections where no previous 101 patent eligibility rejection stood, they have been withdrawing notices of allowance after the issue fee has been paid in order to issue Alice rejections, and the Federal Circuit is strictly applying the nebulous “Alice standard” to find software patent claims patent ineligible.
It is now clear that the Supreme Court’s decision in Alice fundamentally changed the law and future of software patents, at least those already issued and applications already filed, which cannot be changed without adding new matter. Those applications were filed at a different time and under a substantially different regime.
Bob Zeidman is the president and founder of Zeidman Consulting, and he is also the president and founder of Software Analysis and Forensic Engineering Corporation. Zeidman is a software expert that I have known for several years and in the wake of the Supreme Court’s decision in Alice v. CLS Bank we talked on the record about the decision, software in general and writing patent applications. What follows is part 3 of our 3 part conversation.
In this final installment we spend time talking about the problems associated with creating software that actually works. For something that Judges and mathematicians seem to say is so trivial software sure doesn’t work nearly as well as it should. Copied code cobbled together leads to broken systems, and programmers simply throw code up without proper vetting and let consumers find the bugs. Sure doesn’t sound like it is all that trivial to me, but then again, I’m not an ivy league educated Supreme Court Justice who is so computer illiterate that I don’t use e-mail.
Recently I had the opportunity to interview Bob Zeidman, the president and founder of Zeidman Consulting, who is also the president and founder of Software Analysis and Forensic Engineering Corporation, Zeidman is an software expert. In fact, in addition to consulting with lawyers and technology companies, he is an testifying and consulting expert witness. The premise of our conversation was the upheaval in the patent industry thanks to the Supreme Court’s decision in Alice v. CLS Bank. In part 1 of our conversation we discussed the decision and ways that attorneys can build a specification to satisfy the Alice standard. In part 2 of our 3 part discussion, which appears below, we wrap up our discussion of the Alice decision and dive into a discussion about the fact that many in the computer science world don’t believe what they do to be particularly innovative or even special.
QUINN: And then there’s always the fear that if you put in code then you’re gonna be limiting yourself. I don’t think that’s really a justifiable fear as long as it’s put in properly as illustrative instead of limiting. You know, I mean the folks in the chemical world, they do this all the time. They have example after example after example after example, which is a great way to disclose what it is that you have, what it is that you’ve tried, what it is that you know that works.
ZEIDMAN: Exactly. It seems like if there is some ambiguity in the claims then you would go back to the specification to see if the code there could clarify the claims.
On August 12, 2014, I had the opportunity to speak with Zeidman on the record. As the dust begins to settle from the Supreme Court’s Alice v. CLS Bank decision I thought it might be interesting to talk about the issues with a computer expert who regularly works with patent attorneys and technology clients, and who has been advising both attorneys and clients how to handle the Alice decision from a technical standpoint. In our three part interview we discuss the decision and various ways attorneys might be able to move forward to provide disclosure sufficient to satisfy even the Alice standard.
This is the third and final installment of my recent interview with former Federal Circuit Chief Judge Paul Michel. In this installment of the interview we discuss the future of the Federal Circuit now that Judge Rader is a private citizen. We discuss the type of candidate that should be appointed to replace him, and the always concerning panel dependency.
QUINN: So now we still have one topic still to discuss. Perhaps, if you have the time, we could talk about the Federal Circuit. I don’t want to get into any of the touchy subjects, which some people are diving into. I’m more interesting in talking about moving forward, you know, Judge Rader is now a private citizen and he was clearly one of the champions of the patent system and a believer in the power and the importance of patents. And now he’s not on the Court any more. I wonder what that’s going to mean moving forward. I wonder— and then I can’t help but wonder about panel dependency, which is a problem that a lot of people talk about. And particularly in light of the fact that the Supreme Court has remanded Ultramercial to the Federal Circuit. And Judge Rader was on that panel. So you already have people talking about whether that outcome in what could be a very important case will become panel dependent.
MICHEL: Right. Well, first of all I think Judge Rader will continue to play a very constructive role as a vocal spokesman now in the private citizen realm. And in fact being a private citizen he can be much more frank and candid than he was able to be as a sitting judge. So his voice may get even more interesting and even louder as a part of the overall debate. His replacement will be very important. So just as people are focused on is Phil Johnson going to become the new patent director, will he get nominated, can he get confirmed, how will he do? All those interesting very important questions, people should also be asking who will replace Judge Rader? Who will get nominated, can that person get confirmed, can they get confirmed as fast as they need to get confirmed so the Court is at full strength?
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.