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A responsive patent system requires time and participation: a response to Jay Walker’s IPAS 2018 speech

GUEST COLUMN:

At the IP Awareness Summit held at the Columbia University on November 29 Jay Walker, entrepreneur, prolific inventor, TEDMED curator and founder of Priceline.com, spoke about a “broken” patent system and need for a Constitutional Convention to fix it. In the following response to Walker’s speech, Brenda Pomerance takes a different view. 

 

Improving the Patent System:

Independent Inventors Need Apply

By Brenda Pomerance

At the IP Awareness Summit held by the Center for Intellectual Property Understanding on November 29, 2018 at the Columbia School of Journalism, Jay Walker gave a keynote presentation asserting that the Patent System was irreparably broken for individual inventors lacking “deep pockets.” He based his position on five problems, and called for an entirely redesigned Patent System.

In fact, two of these problems are features, not problems. The existing Patent System can be tweaked to provide individuals with a fairer playing field for the other three problems.

First, clarity: Walker says that patent claims are impossible for him to understand.

Lack of clarity, for laypersons, is due to the need for a claim to only distinguish from the prior art, not to explain how to make an invention and to distinguish that invention from the prior art.  Walker can eliminate his clarity problem by telling his patent attorney to write claims that are essentially a production specification for the invention, but the scope of these claims will be much narrower than is needed. Examiners will love these production specification claims and prosecution will be faster.

Also, the Patent System enables a claim to encompass something that the inventor did not specifically think of when the patent application was filed, if claims are suitably written and there was no discussion of this issue in the prosecution history, but an inventor can relinquish this flexibility via clearer claims that are limited to exactly what the inventor invented.

Second, reliability: Walker says that because so many patents are invalidated, a patent is not a reliable property.

Walker can hugely improve validity by telling his patent attorney to write claims that will survive most litigation challenges (a very high standard), rather than claims that an examiner will allow (a lower standard). But, the inventor will have to (a) do the comprehensive prior art search that litigation defendants do (costing up to $100,000 for the search), then (b) figure out why it would not be obvious-to-try to combine this prior art to arrive at the invention, and finally (c) explain non-obviousness in the disclosure, which requires a detailed in-context understanding of each piece of prior art and vastly more care expended on the background section of a patent application.

An excellent prior art search along with an explanation distinguishing the claims from the prior art will speed up prosecution, but will substantially increase the cost of patent application preparation, possibly making it too costly for shallow pocket individuals.

Third and Fourth, cost and time: Walker says that it is too expensive and takes too long to enforce a patent.

Here are some tweaks to address enforcement cost and time problems:

(A) Require that all prior-art based challenges to a patent be presented in an IPR Request that is filed within nine months (not one year, to reduce gamesmanship of multiple IPR filings) of the lawsuit’s filing, unless plaintiff consents to addressing prior art invalidation in litigation, with a prohibition on staying the lawsuit for the IPR until the IPR Request is granted, and an automatic lawsuit stay after the IPR Request is granted unless the parties agree to concurrent litigation.  During litigation, this would leave mainly inequitable conduct available to invalidate a patent during litigation unless and until defendant negotiates for prior art, perhaps via accelerated discovery or payment.  It requires that the PTAB consider as prior art more than merely printed publications.

(B) If PTAB denies the IPR Request (the current PTAB denial rate is 40%), the patent is presumed valid over prior art against the challenger in all Patent Office and court proceedings.   This will speed up enforcement against defendants who make only small changes but keep infringing to force patent owner to file new lawsuits.

(C) If all claims, asserted in litigation at the time of IPR Request filing, are invalidated in an IPR based on a prior art rejection (references and motivation to combine) that the patent owner was notified of by the patent challenger at least three months prior to the filing of the IPR Request, then the patent owner has to pay the challenger’s attorney fees for preparing and filing (but not prosecuting) the IPR Request.  This encourages defendants to quickly share their most relevant invalidity arguments, and punishes plaintiffs who ignore relevant prior art and waste defendants’ resources in an IPR, but the punishment is limited by not including prosecution costs so as not to be too scary for good faith plaintiffs.

(D) After an IPR Request has been disposed of via denial or an IPR, a deep pocket defendant must begin paying half of the monthly cost of litigation attorney fees for a shallow pocket plaintiff based on redacted attorney invoices.   If the judge or jury finds the defendant is not liable for any infringement damages, then the plaintiff must repay the attorney fee payments.

(E) For a patent that has survived IPR, via IPR Request denial or an IPR, and that a defendant has been shown to infringe, restore the presumption of irreparable damage for patent infringement that was destroyed by eBay v. MercExchange, 547 U.S. 388 (2006), leading to an injunction absent exceptional circumstances, regardless of whether patent owner licenses or practices the patent.

(F) Provide a rebuttable presumption that the patented technology is frequently used by all accused products and services of an infringer, and require that damages be based on how often a technology is actually used to provide a product or service, so that rarely used features have relatively small damages awards, while frequently used features can have large damage awards.   The incentive of rebuttal should encourage defendants to provide discovery, instead of the current gamesmanship of withholding discovery.

(G) For a prevailing shallow pocket individual plaintiff, a deep pocket defendant must pay 200% of the plaintiff’s attorney fees absent exceptional circumstances.  This penalizes deep pocket litigants for litigation gamesmanship.

Fifth, price discovery: Walker says that it is difficult to predict what infringement damages will be.

The pre-litigation part of this difficulty is because parties like to keep confidential the cost of licenses and settlements; but confidentiality should be their right.

The litigation part of this difficulty is because defendants are extraordinarily reluctant to provide discovery on what portion of their business infringes and the revenue associated with doing so; D-G above, especially F, will reduce such reluctance.

Conclusion

I agree with Walker that, at present, the enforcement part of the Patent System is hostile towards under-funded individual inventors.  However, the Patent System is still quite viable and can evolve to be friendlier towards individuals. Independent inventors are a fabulous source of ideas and patents reflect the diligence to make the fruits of their ideas available in commerce, which benefits all of us.

_____________________

The audio file for Jay Walker’s speech can be found at https://www.ipawarenesssummit.com/recorded-speakers

Brenda Pomerance has almost 30 years of experience in prosecution of approximately 2,000 patents, including Appeal, Ex-parte Re-examination, Reissue, Inter Partes Review and Interference. Clients have included Research in Motion (now Blackberry), MIT, AT&T, Lucent, IBM, Sony and Canon. Ms. Pomerance has represented clients in licensing, in several patent infringement lawsuits and in a software copyright infringement lawsuit. She is a solo patent attorney in the Law Office of Brenda Pomerance in New York City. b.pomerance@verizon.net

Image source: canadaipblog.com

To encourage investors the IP system must provide stability and predictability, says USPTO head

IP is the engine that makes economic and cultural developments work and the USPTO keenly focused on facilitating this goal.

That was the message delivered by Undersecretary of Commerce and Director of the United States Patent and Trademark Office, Andrei Iancu, at the Second Annual Intellectual Property Awareness Summit in New York on November 29.

CIPU, CTV, Columbia University

IPAS was held by the Center for Intellectual Property Understanding (CIPU), an independent non-profit, in conjunction with the Columbia Technology Ventures, at the Columbia University’s School of Journalism.

“For the IP system to work as intended,” Director Iancu told the audience of IP owners, creators, executives and educators, “we must make sure future IP laws are predictable, reliable and carefully balanced.”

Director Iancu, who holds degrees in aerospace and mechanical engineering and who has taught at UCLA, said he believes that it is really important for new members of congress coming into office in January, as well as existing ones, be informed about the importance of intellectual property.

“They should be aware why IP is important to the economy and to America’s standing in the world and competitive position.”

“I would urge folks in this room,” he said referring to the IP professionals and educators present, “to talk about these issues with members [of Congress] in ways that relate to their priorities and constituents.”

A Different World

The Director told the audience that the battle for 5G is not likely to be limited to giant American companies but is international and being waged by the smallest and biggest countries; from Singapore, for example, to China.

“We live in a different world,” he concluded. “For the United States to maintain its competitive leadership it is critically important that we have an IP system and innovation and entrepreneurship ecosystem that encourages innovation; that provides stability and predictability, so folks can invest here in the U.S. confidently.”

The audio file of Director Iancu’s remarks and q&a is available at www.ipawarenesssummit.com.

IBM, Priceline, George Mason University

Other featured speakers at IPAS 2018 included Manny Schecter, Chief Patent Counsel of IBM and a member of the board of directors of the Center for Intellectual Property Understanding (CIPU); Jay Walker, inventor, entrepreneur, TEDMED curator and founder of Priceline.com; and Adam Mossoff, Director of the Center for the Protection of Intellectual Property (CPIP) at George Mason University College of Law.

IPAS also included 17 other speakers, four panels and three workshops focused on the IP literacy requirements of IP owners, creators, educators, investors and the public. For the full IPAS 2018 program, presenters and partners go here.

Image source: Russell Cusick Studio 

IP Awareness Summit update: keynotes to include top-ten inventor, Jay Walker, USPTO Director Iancu and IBM’s Schecter

Priceline.com founder and one of the most prolific and successful U.S. inventors in history will join USPTO Director Andrei Iancu and IBM Chief Patent Counsel Manny Schecter as featured speakers at the IP Awareness Summit in NYC on November 29.

The Summit will is being held by the Center for IP Understanding, an independent non-profit, at Columbia University’s famed Pulitzer Hall in the School of Journalism in conjunction with Columbia Technology Ventures.

Mr. Walker, an owner of TEDMED, which bridges the gap between science and the public, has long held that despite increases in U.S. technology and innovation, the patent licensing system is broken.

“The fact is that without a functioning licensing system we really don’t have what need to compete,” Mr. Walker, a former member of the Forbes 400, has stated. “Licensing is the way that inventions get into the economy; it’s the way they get used and brought into the marketplace and creates jobs and helps our economy to be more competitive.”

Mr. Walker is number eight on the U.S. all-time U.S. inventor list with 950 issued utility patents. Thomas Edison had 1,084. At the current pace, Walker will surpass Edison sometime in 2023. Many of his patents cover gaming and risk calculation.

Iancu and Schecter, too

Joining Mr. Walker as an IPAS 2018 featured speaker is USPTO Director Andrei Iancu, who will present at 1:30 and is likely to touch upon U.S. and China IP issues. Another featured presenter is Manny Schecter, Chief Patent Counsel of IBM, who will speak about the impact of a faster, more digitized world on IP and how it is seen.

Other speakers and panelists include a range of IP thought-leaders, owners, educators and organizations from the U.S., Europe and Asia, who will present and serve on panels. Luncheon breakout sessions will permit IP holders, creators and others to consider specific IP leadership challenges. Registration for IPAS 2018 is now open to the public but space is limited.

The IPAS 2018 theme – IP Literacy in a Digital World will be the basis for examining the impact of information and speed on how intellectual property is seen and often taken for granted, as well as ways to address the disconnect through education and the media.

To view the IPAS 2018 program and event website, visit www.ipawarenesssummit.com.

To register, go here.

The current list of IPAS 2018 participants and partners can be found on the home page. Persons who wish to apply for a discounted registration, contact explore@understandingip.org.

To learn more about the Center for IP Understanding, www.understandingip.org.

Image source: bloomberg.com; TEDMED

Vision meets commerce is focus of the 50th LES annual meeting in NY

Big Ideas: The Intersection of Innovation & Business is the theme of  this years Licensing Executives Society annual meeting to be held in New York, October 25-28.

Speakers from  Google, GE Ventures, J&J, Columbia Technology Ventures and Samsung will participate in the plenaries at this year’s 50th anniversary meeting at the Marriott Marquis.

Plenary Session – “Big Money is Back”

A cross industry panel of experts will explore and discuss how the changing financial climate is impacting innovation. There is money out there so, what are stakeholders doing and how is investment and licensing shaping innovation?

Speakers:
Orin Herskowitz, Executive Director, Columbia Technology VenturesVice President for Intellectual Property & Technology Transfer, Adjunct Professor, Columbia Business and Engineering Schools (Moderator)
Sang Ahn, Managing Director, Global Innovation Center, Samsung Electronics
Patrick Patnode, General Counsel, GE Ventures and Healthymagination
James Sledzik, Energy Ventures US, Inc.

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IP CloseUp’s Bruce Berman will be moderating a panel on Tuesday October 27, at 3:45 focusing on patent quality.

“Defining Patent Quality – Distinguishing Between Validity, Value and Invention Quality”

Patent quality has become more than a simple black or white definition of validity. Patent quality is often in the eye of the beholder. Some believe there is an inevitable market component or need associated with patent quality, which affects its defensive, licensing and sales value. This workshop will look at the changing definition of patent quality and the role that the PTAB and recent decisions like Alice have played. The workshop also will examine the influence of market forces like demand on patent quality and in distinguishing patent quality from value.

Speakers:
Bruce Berman, Brody Berman Associates (Moderator)
Julia Elvidge, President, Chipworks
Christi Guerrini, Baylor College of Medicine; University of Houston Law Center
Sean Reilly, Askeladden. L.L.C./ the Clearing House Payments Company

Christi Guerrini is the author of a provocative paper on patent quality, “Defining Patent Quality.” She teaches ethics as Baylor College of Medicine Center for Medical Ethics and is a Fellow at the University of Houston Law Center; Julia Elvidge heads one of the leading patent analysis firms, and Sean Reilly, is General Counsel and director of IP strategy for Askeladden, LLC and The Clearing House. He is also chief strategist of the Patent Quality Initiative. TCH members are many of the largest banks in the world.

Be sure to stop by on Tuesday afternoon for what promises to be a thought-provoking panel.

For the full meeting agenda, including more than 50 workshops and special events, go here.

To register online, go here.

*****

Lawrence (Larry) J. Udell, inventor, lecturer and creator of more than 40 new ventures, has been named the 2015 Frank Barnes Mentor Award recipient by the Licensing Executives Society (USA & Canada), Inc. The award will be presented during the Society’s upcoming Annual Meeting in New York.

Mr. Udell has been an active member of the Licensing Executives Society since 1982 and is the founder and chairman emeritus of the Silicon Valley Chapter of LES www.les-svc.org. He also resurrected the San Francisco Chapter five years ago. He is the founder and chairman of the California Invention Center (1995) www.CaliforniaInventionCenter.org. Mr. Udell is associated with several Hall of Fame inventors, including James Ferguson (he developed the LCD or Light Crystal Display) and Forrest Bird (portable ventilator).

Image source: lesusacanada.org

In Memoriam: Andrew Sarris, An American Original

Film Historian & Critic Broke New Ground

Andrew Sarris, who died recently, was the greatest American film historian and, over a more than fifty year career, one of its most accomplished critics. He also was my teacher and mentor at Columbia University in the 1970s, where I studied with him and taught alongside him for several years in the graduate program.

Searching for himself in Paris in the 1950s Andy discovered the French New Wave, which included critic-cineastes like Francois Truffaut and Jean-Luc Godard, who were also filmmakers. Andy’s passion was not for making movies but understanding them and their creators in the context of film history and the body of their work. He was equipped with the intellect and film-going experience that permitted him to be authoritative in ways that others could not.

Many Mortals, Few Gods

Andy’s American Cinema: Director and Directions 1929-1968 was and still is a bible for anyone serious about movies.  It remains on Time’s one of the 100 most important works of non-fiction.  Wryly opinionated and dismissive, only 14 directors made Sarris’ original Pantheon.  In it are both obvious and innovative choices like Howard Hawks and Buster Keaton, and for me the most compelling one, Robert Flaherty, a documentary filmmaker with the vision of an artist.  (In the 1990s Andy began reviewing and ranking annually non-fiction films for the New York Observer, coverage that he and I had discussed twenty years earlier.)

While I was to go on to receive the masters and complete my course work for the Ph.D., but not the doctorate, I don’t think Andy saw me as anything less than a colleague.  He was less interested in academic credentials than in having something to say.  While he was obsessed with films, he did not expect everyone else to in precisely the same way. I believe that he was somewhat puzzled when they were.  He did not see film history as aAndrewSarris2 competition but as a journey and, for him, at least, a calling — something that I have adopted in 30 years of looking at intellectual property.

Andy never quite knew what to make of me. Like most of his students students, I was a little afraid of his brilliance and intrigued by his demeanor.  Shy and aloof, he also could be quick with a kind word or a helpful observation.  We were friendly but not close, yet not a day goes by or a word I write that is not influenced by him.

Andy was a jumble of contradictions and a challenging if seemingly under-prepared lecturer.  A 1951 Columbia alum, his school was more new journalist-gunslinger, something of the outsider-cum-good guy that he so admired in Westerns and film noir.  If he shot before he looked, and occasionally he did, he was usually man enough to admit he was wrong, or that his opinion was more personal than theoretical.

Innovative Educator

In addition to Columbia where he taught for over 40 years, he lectured at Yale and NYU. Often cryptic and frequently engaging, highly literate and intellectually honest to a fault, following Andy’s eccentric logic could be a challenge. His lectures were like modern jazz: long solos sprinkled with moments of unbridled brilliance.  He had extraordinary recall, a mixed blessing for a film critic who when he was at the top of his game considered to be the man to topple.  Often when you thought you had agreed with his position, he would gently pull the rug out from under you, pointing out your misinterpretation, and leaving you with more to think about.

Despite his strong polemics Andy did not necessarily want his students to agree with him all of the time. He was too confident an historian and innovative a teacher for him to expect total reverence.  Still, for the many readers and students worshiping at the church of Sarris, and who memorized his directors’ categories in American Cinema like a catechism, angsting over who should be moved where and why, he was not the only thing, he was everything.

The leading exponent of the auteur theory in the U.S., Sarris’ categories in American Cinema are, I believe, not meant to be taken as literally as some readers do. The book came at a time in new journalism of Tom Wolf and the divisive anti-war politics of Vietnam and the counter-culture. Young people were challenging the norm, and Andy was no exception. His movie analysis was a simultaneous leap-ahead and a throw-back that provided a semblance of order amidst chaos of new. It was something to believe in. The Pantheon, ultimately, was a tool to help viewers reconsider cinema’s brief history, and genre movies as art, and their directors as artists, the way some Europeans did. Westerns, screwball comedies and crime dramas, through consistency of theme and quality of vision, could transcend their conventions.

The critics Andy despised most were “middle brow” reviewers who felt compelled to provide a social or literary context in order to elevate a film’s importance.  First and foremost Andy was an historian. Simultaneously understanding the body of a filmmaker’s work within movie history and the conventions of genre was what interested him most.

“Psycho,” he once said, “will be admired long after A Man for All Seasons is forgotten.”

Entertainers as Artists  

The auteur theory could elevate those who appeared to be mere genre entertainers like Hitchcock, and cut down respected movie makers like David Lean and Stanley Kubrick. It favored the thematically obsessed and visually consistent, and disdained literary heft and political correctness.

The New Yorker film critic Pauline Kael’s public attacks on Andy and the auteur theory in the 1960s helped to fuel both of their careers. They left emotional scars on Sarris. Fortunately, Andy never sank to Pauline’s level of vitriol, and I’m glad that history has proved him the more enduring analyst and generous person. (See the incisive exploration of Kael’s life and work, Pauline Kael: A Life in the Dark by Brian Kellow to understand the nasty competition between film critics and approaches in the 1960s and 1970s.)

I respected Andy for many reasons, and in retrospect, especially for succeeding as a political moderate at the Village Voice in the 1960s.  Sartorially conservative in his perennial blue blazer and grey slacks, he refused to politicize his criticism when all around him were either dropping out or dropping acid.  Far from apolitical, he was able to acknowledge the changing world around him, without letting it dominate his aesthetics.  Politics was not Andy’s focus nor did he believe it should be an artist’s.  It is no accident The Voice featured much of the best non-fiction writing of the era, and to its credit, its editors had the good sense to support Andy and let him be himself, a gift for any writer.

A Old Way of Seening New

Sarris’ Pantheon, like the one built in Rome as a temple to the gods, helped to form a method for looking at the best by linking a director’s vision to his thematic focus and visual style.  Ford, Hawks and his beloved Max Ophuls were up there, directors of singular, if obsessive vision.  Andy celebrated the quirky and unconventional. In American Cinema important but content-driven directors like Stanley Kubrick John Huston, and fellow Greek, Elia Kazan, were relegated to second or even third class status. (“The Far Side of Paradise,” “Less Than Meets the Eye,” “Strained Seriousness.”)

*     *     *

Andy’ aesthetic was based in part on the work of French film theoretician Andre Bazin. Some directors got it and some did not; only a few could achieve god-like heights, while others were relegated to the status of mere

mortals, albeit sometimes intriguing ones. A large oeuvre was not necessarily meaningful, but it could help to discern an artist. In movies, as in pop music, there were plenty of one-hit wonders but few Beatles. For Andy, great artists’ lesser work could be among their most interesting — something that could not be said for the best work those “metteurs” (roughly translated at “stagers”) who failed to rise above the material.

Andy believed that a single film alone could have meaning. However, seen within the body of an artist’s work it could achieve transcendence. Andy’s own body of work reach similar heights.

Forever in the Pantheon. Rest in peace.

Image sources: hollywoodreporter.com; fandor.com; pressblog.uchicago.edu

“Additional Thoughts on Sarris, the Pantheon and Creative Vision”

USPTO Chief Lists Challenges at Columbia Gathering

Kappos: Make Patents More Relevant

United States Patent and Trademark Office Commissioner David Kappos said last week at a Columbia University Technology Ventures gathering that the USPTO is getting more involved in facilitating the use of IP rights for humanitarian and other social issues.

Kappos spoke for about 45 minutes as part of a monthly discussion of issues open to business, law, engineering students and faculty, as well as other members of the college community. Kappos suggested that IP rights can have a greater role in jobs creation and quality of life issues. He said the Office’s Fast Track Examination Procedure and  Green Technology Pilot Program have facilitated examinations for patent applications covering timely inventions. He cautioned about the need for these priorities to be granted fairly.

Commissioner Kappos also discussed highly critical issues such as patent examination backlogs, pendency and the need “to at least maintain the current level of patent quality” as well as improve it.

For the full video of Commissioner Kappos presentation at Columbia and audience questions, click on the image above.


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