Robert Litan is an extraordinarily accomplished lawyer, economist and author. Indeed, through his research and writings he has become a nationally recognized expert in the field of economics. Along with co-author Hal Singer, Litan recently published a study that concluded that modestly increasing the number of patents under license could generate social benefits ranging between $100 and $200 billion per year. See $200 Billion Could Be Added to Economic Output Annually by Unlocking Patents. I caught up with Litan for an interview on December 1, 2014, and published part 1 of our conversation yesterday.
What follows is the final segment of my conversation with Litan, in which we discuss the importance unlocking the patents that are not being monetized. We specifically discuss Jay Walker’s brainchild — dubbed the Patent Utility — and what it could mean for the U.S. economy and innovation more generally.
QUINN: I think that what you said there is definitely a fair point. As you were saying it I recall an interview I did with Manny Schechter, who is Chief Patent Counsel at IBM. I asked him at one point in time about how they constantly stay in front of everybody else with respect to a true commitment to research and development? I asked him if they ever look at what others do and wonder why they haven’t figured it out? And his answer to me was basically — why we would look at what anybody else does, we’re confident in what we’re doing, our management is in tune with our overall IP strategy and objectives, and we just do our own thing, do our research and development on our own. So IBM doesn’t spend time considering the competition.
Before the Supreme Court’s decision in Alice Corp. v CLS Bank Int’l , Judge Moore said “this case is the death of hundreds of thousands of patents, including all business method, financial system, and software patents as well as many computer implemented and telecommunications patents.” This concern is premised on about twenty years of patent practice grounded in the en banc 1994 Federal Circuit decision in In re Alappat which previously established the “special purpose computer” justification for patent eligibility under 35 USC §101 for computer-implemented inventions. Alice makes clear that although a computer is recognized as a machine which would fall under one of the statutory categories of §101, that isn’t the end of the inquiry under §101. Instead, the Mayo 2-part test applies to computer-implemented subject matter. The game-changing new rationale, contrary to Alappat, is that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Simply “doing it” on a generic computer isn’t enough to satisfy §101.
We often feature Cisco here on the Companies We Follow series and our latest search of patent applications filed by this company showed us a great amount of research into video communications. One patent application we feature discusses a method for automatically recognizing videoconferencing callers. Improved collaboration systems, including those which can alert online collaborators to an emergency situation being experienced by a person on the other end of a communication link, are discussed in a couple of other applications. We also discuss one filing for a technology that provides local content of interest in response to global searches for information.
The patenting activities of Cisco are very strong and the past few weeks saw the addition of many valuable patents to this company’s portfolio. Videoconferencing technologies, including technologies for better eye contact or subject mobility during video calls, are discussed in a collection of patents we’ve shared below. Methods of providing callers with a default language of their choice while visiting foreign countries, as well as security features to be implemented by smart electrical grids, are also explored in more detail.
Robert Litan is an economist and attorney with decades of experience as an executive in both the private, public and government sectors. He is currently a non-resident Senior Fellow at the Brookings Institution, and he also serves on the research advisory boards of the Smith Richardson Foundation and the Committee for Economic Development. Litan has also served as Deputy Assistant Attorney General in the Antitrust Division of the Justice Department and as Associate Director of the Office of Management and Budget. In short, Litan is extraordinarily accomplished and has seen the world from many different vantage points.
Litan is also a prolific author, having authored or co-authored over 25 books and numerous articles in professional and popular publications. His latest books include The Trillion Dollar Economists (Wiley Press, 2013), The Need for Speed (Brookings Institution Press, 2013, co-authored with Hal Singer); Better Capitalism (Yale University Press, 2012, co-authored with Carl Schramm), and Good Capitalism, Bad Capitalism (Yale University Press, 2009, co-authored with William Baumol and Carl Schramm). Thanks to his writings and Congressional testimony Litan has become a widely recognized national expert in regulation, antitrust, finance, and a variety of other policy subjects.
Most recently, however, Litan co-authored a study that concluded that modestly increasing the number of patents under license could generate social benefits ranging between $100 and $200 billion per year. See $200 Billion Could Be Added to Economic Output Annually by Unlocking Patents. It is through his work on this study that I met Litan. I asked if he would be interested in doing an interview and he graciously accepted.
The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms. These ideas are set out in detail in the book Rules of Patent Drafting: Guidelines from the Federal Circuit Case Law, excerpted in IPWatchdog at Joseph Root on Patent Claim Drafting .
This process has continued apace during 2014. This piece rounds up some Federal Circuit cases that illustrate the highlights.
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.
Michelle Lee, Dec. 10, 2014, at Senate confirmation hearing.
It has been brought to my attention that I inaccurately characterized USPTO Deputy Director Michelle Lee’s position on patent reform. I write today to correct the record.
At her confirmation hearing on December 10, 2014, I wrotethat Lee’s position on patent reform seemed to shift throughout the hearing, pointing to what seemed to be contradictory answers to the questions of different Senators. In truth, I missed the full answer to the second question Lee received, focused on the first part of her answer, and unintentionally winded up quoting her out of context.
Near the beginning of the hearing Lee explained to Senator Charles Grassley (R-IA) “there can and should be further legislation” to address patent trolls.
Later on during the hearing, Senator Dick Durbin (D-IL) explained that he was very skeptical about additional patent reform, reading a letter sent to him that morning from the Innovation Alliance, BIO, PhRMA, MDMA and 6 university associations, and explaining that he is continually told by constituents that Congress should go slow and proceed with extreme caution on patent reform. Durbin then, reading from the letter, said: “Taken together, these judicial and administrative developments, and the plunge in the patent litigation rate, have fundamentally changed the landscape under which patent legislation should be considered.” Durbin then turned to Lee and asked: “Do you agree?”
The remote control has become a device that is equal parts practical and frustrating. Many gripe that their remotes have too many buttons and are easily misplaced, and it’s inconvenient to sit down in a dark room and realize that the remote’s beneath you and you unwittingly changed the channel. Of course, it’s almost impossible to consider what the television viewing experience would be without a remote control. We’d much rather snoop around for that elusive plastic housing and its myriad of unused buttons than stand and walk to our television sets every time we want to change the channel or the volume.
The ability to control devices through the transmission of a wireless signal was first demonstrated over a century ago but it wasn’t until the 1950s that the technique would be developed for television, the most successful embodiment of the remote control to date. In some ways, the television remote control introduced the American household to the idea of a connected home with appliances responding to user commands from a distance.
Every once in a while you stumble across a situation where what is fair seems obvious. At those moments we are all too frequently reminded that we do not have a fairness system, but rather we have a justice system. Which is one way to say that I think the Federal Circuit made a terribly poor decision; one that flies in the face of common sense, and frankly common decency. If the legal system cannot fix a mistake like this before the mistake has even been made public then the system is broken.
The case I am referring to is the recent decision from the United States Court of Appeals for the Federal Circuit in Japanese Foundation for Cancer Research v. Lee, which is the epitome of reaching the right legal decision instead of doing what is fair and just. A paralegal made a mistake, instructed the U.S. representatives to file a terminal disclaimer abandoning a patent, the paperwork was signed and filed by the attorney of record, and then immediately the error was identified. In fact, the mistake was identified and attempts made to mitigate the mistake even prior to the filing ever appearing in the PAIR system operated by the United States Patent and Trademark Office. Yet, at the end of the day, even though there was no question that the chain of events was caused by a paralegal misunderstanding what she was asked to do, the patent still winds up effectively nullified.
In June of 2014, the Supreme Court held, in Alice Corporation Pty. Ltd. v. CLS Bank International (“Alice Corp.”), that claims directed to a technique for mitigating settlement risk failed to comply with the patentable-subject-matter requirement of 35 U.S.C. 101 (“101”). Alice Corp. involved four patents that had been assigned to business-method art units (characterizing business-method art units as 3621-29, 3681-89, 3691-95 and those in former technology center 2700). The Court found that the claims at issue were directed to an abstract idea and did not sufficiently transform the idea to become a patentable invention.
One question is whether Alice Corp., in essence, strips patent prospects from business-method inventions. Another question is whether the analysis in Alice Corp. will invalidate patents in other areas under 101. The author thus examined all cases citing and/or including Alice Corp. and identified outcomes of analyses of compliance with 101. Further, the patents at issue were segregated based on the technology center to which the corresponding patent application had been assigned and/or whether it was assigned to a business-method art unit.
This summer, the United States Patent and Trademark Office (PTO) responded t0 Alice Corp. by issuing Preliminary Examination Instructions in view of the case, and impact on examination of business-method patent applications was essentially immediate. Using LexisNexis PatentAdvisor, data was collected for a January time period (January 13-27, 2014) and July time period (July 13-27, 2014) that identified, for each Office Action issued during the time period, whether the Action included a 101 rejection and the corresponding art unit.
Earlier today the United States Patent and Trademark Office released its much anticipated 2014 Interim Guidance on Patent Subject Matter Eligibility, which the in the industry has largely been dubbed USPTO 101 guidance. The guidance, which was signed on December 10, 2014, by USPTO Deputy Director Michelle Lee, will officially publish in the Federal Register on December 16, 2014. This eligibility guidance will become effective immediately upon publication in the Federal Register.
The USPTO explains in the Notice that this guidance is “for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U. S. Supreme Court.” This latest interim guidance supplements the guidance given by the office in June 2014 relative to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). This guidance supersedes the March 4, 2014, eligibility guidance for claims involving laws of nature, natural phenomena and natural products, which was issued relative to the Supreme Court’s decisions in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013).
The USPTO guidance, which in large part is reminiscent of the KSR Guidelines put out by the Office in 2010, goes through cases one by one. The USPTO explains the facts, provides representative claims and then explains the holding in each case so that patent examiners can understand the teaching point of the case and how to apply the holding to similar situations moving forward. Perhaps most notable, at least on the first review, is that the USPTO incorporated the recent Federal Circuit decision in DDR Holdings, where the Federal Circuit (per Judge Chen) found that the software patent claims at issue in the case were patent eligible.
The Companies We Follow series has been busy reviewing the R&D activities of some corporations which we haven’t featured before, and today we have the intellectual property development activities of 3M in our sights. Patent applications assigned to this company which have been filed with the U.S. Patent and Trademark Office disclose a number of unique chemical compositions, including an anti-fogging compound for better visibility through vehicle windows. A couple of electronic data systems are also disclosed, including one designed to enable community monitoring of local criminal offenders.
3M has a very strong patent portfolio and the past few weeks saw the addition of many intriguing technologies to its IP holdings. A couple of patents protect improvements to orthodontics and dental treatment, including a system designed for better digital modeling of interior mouth structures. Another more general medical innovation involves the use of a nylon article including a dye that provides antimicrobial properties when light passes through the dye. We also discuss a self-priming wall spackle compound and a software system for the digital management of sticky notes, such as Post-it notes.