Tag Archives: Inventors

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

December 10, 2018 by Bruce Berman 1 Comment

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.

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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

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Family Entertainment: This “Rube” saw the future and its foibles

April 10, 2018 by Bruce Berman 0 Comments

San Francisco-born Reuben Garrett Lucius “Rube” Goldberg, an American cartoonist, sculptor, author, engineer, and inventor, best known for satirical cartoons that depicted complicated devices that performed simple tasks in creatively complex ways.

But Goldberg, born on July 4, 1883, was also a visionary, who saw the impact of personalized communications decades before it occurred. His Forbes cover,“After Color TV: The Future of Home Entertainment,” from March 15, 1967 (below) depicts a family with each member engaged with its own mostly flat screen and targeted content – including the baby and cat. Recall that in 1967 the idea of the color TV, aka “talking furniture,” was still relatively new.

Future Family: Alone Together

Note the types of content, the different screens and the interactive controller used by the father. The baby’s wind-up truck does not have a chance.

The Fun of Getting There

Goldberg is associated with popular cartoons depicting gadgets that perform simple tasks in indirect or complicated but imaginative ways, giving rise to the term “Rube Goldberg machine” for s similar gadget or process. Goldberg received many honors in his lifetime, including a Pulitzer Prize for his political cartooning in 1948.

Goldberg was a founding member and the first president of the National Cartoonists Society, and he is the namesake of the Reuben Award, which the organization awards to the Cartoonist of the Year.

He is the inspiration for various international competitions, known as Rube Goldberg Machine Contests, which challenge participants to make a complicated machine to perform a simple task (kind of the opposite of an invention, which attempts to solve a problem or improve efficiency).

The contest, in which college or high school students build devices to complete a simple task in a minimum of twenty steps in the style of Goldberg, is held throughout the United States, and local winners are eligible to compete in the national contest.

Rube Goldberg reminds us that how a simple problem gets solved can be as fascinating as the solution.

Source: imgur.com

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Study finds that black, hispanic and women inventors lack opportunity and role models

February 5, 2018 by Bruce Berman 0 Comments

Economic hardship and lack of exposure to innovation are preventing minorities, low-income backgrounds and women from becoming inventors. 

Those are the findings of “Lost Einsteins: Innovation and Opportunity in American,” conducted by the Equality of Opportunity Project (EOP). The study was conducted by researchers from Stanford, Harvard, the London School of Economics and MIT.

EOP analyzed the lives of more than one million inventors in the United States to understand the factors that determine who becomes an inventor in America.

“If women, minorities, and children from low-income families invent at the same as high-income white men,” the study concluded, “the innovation rate in America would quadruple.”

Patent Grants vs. Patent Success

Dramatic differences in patent grants do not account for lack of patent success.

The report did not examine reasons for the failure of  “advantaged” inventors – those from better socio-economic background – to establish businesses, generate licenses and otherwise contribute successfully to innovation and technology. This may more likely be a result of weakened IP laws under the American Invents Act and a general lack of support for inventors, including those associated with corporate research departments and research institutions.

The study concluded that children who excelled in math were far more likely to become inventors but that being a math standout was not enough. Only the top students who also came from high-income families had a decent chance of becoming an inventor.

Low-income students who are among the very best math students – those who score in the top 5% of all third graders – are no more likely to become inventors than below-average math students from affluent families.

While minority inventors certainly should be nurtured, the high failure rate of innovators who had the benefit of and privilege raises serious questions about whether financial support and role-models are the only resources bright people from minority groups need to succeed.

The full Intangible Investor, “Minority Inventors ‘Lost,'” in the March IAM magazine, go here. 

Study documents for the Equal Opportunity Project – including an executive summary, slides and a paper – can be found here. 

For the summary slides alone, from which the above images were generated, go here.

Image source: equality-of-opportunity.org

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IP CloseUp visits were up 81% in 2016, breaking previous record

January 2, 2017 by Bruce Berman 0 Comments

It was the second record-breaking year in a row for IP CloseUp readership, with 43,946 visits in 2016, an 81% increase from 24,273 in 2015. The previous record increase was 31% in 2015, up from 2014.

The most popular51yeitvgpal post was “Kearns’ son still fuming over wiper blade suit,” with 21,652 views. Other popular posts included “For Samsung charity begins at home, Marshall, TX,” coming in with 5,464.

The Kearns article, detailing his 12-year patent suit with Ford and other auto companies, has generated 31,081 hits since it was originally posted in 2011.

Renewed interest in the Kearns biopic detailing the inventor’s patent suit, “Flash of Genius,” starring Greg Kinnear and Alan Alda, likely stimulated interest in the topic, as well as new obstacles to patent licensing.

 

Image source: amazon.com; hippajournal.com

 

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Named on 40+ patents chemist sleeps in car on a Brooklyn Street

March 4, 2016 by Bruce Berman 2 Comments

For more than a year a man slept in his SUV parked on the upscale Park Slope section of Brooklyn.

The man, call him Gene, a Ph.D. and organic chemist who did his post-doctoral work at Columbia, is named on 44 patents. How he found himself in this unenviable position is the subject of an provocative page-one feature today in The New York Times.

By last summer word and rumor were spreading on Fifth Street’s email exchange, ordinarily used for organizing block parties. An unnamed Man Living in His Car on Fifth Street was causing a problem. He was pouring urine from a bedpan onto the curb. The woman fostering his cats learned that he had copied her key. And what about the small children on the block?

Who is this Person?

Neighbors organized and went to bat for Gene, said Caroline Batzdorf, a Fifth Street resident, who said she was gratified by the positive shift in attitudes.

“Some of the people who were literally saying, ‘What’s this person doing on our block?’ are now, ‘Thank God there’s humanity in people,’” she said. “But what if this were a person of a different race? Who didn’t have a Ph.D.? Who someone didn’t know?”

According to New York Times a grant from the National Institutes of Health paid for Gene’s postdoctoral work. At a large (unnamed) pharmaceutical company, he worked with a team on variations of an immunosuppressant, and compounds useful in treating diabetes.

Records list the Boise, Idaho-born chemist as a co-inventor on at least 44 “composition of matter” patents in the United States and Europe. The patents, the article reminds us, are owned by the company.

“Making the Journey from Menace to Neighbor, All on One Brooklyn Block,” can be found here.

Image source: nyt.com; dailycamera.com (person in featured image is not Gene)

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“Men of Progress” depicts U.S. inventing’s past, present and future

August 4, 2015 by Bruce Berman 2 Comments

A group portrait honoring America’s rich invention history captures its greatest inventors in a moment in time that never occurred.  

The painting hangs in the grand, neo-classical National Portrait Gallery in Washington, once home of the United States Patent & Trademark Office. It depicts a symbolic gathering that honors America’s innovative past, while encouraging observers to speculate on its future.

Men of Progress (1862) is a study of how America saw its leading technologists in the 19th century. The romanticized gathering of great minds never took place but was a virtual product of artist Christian Schussele’s imagination and his patron, Jordan Lawrence Mott, that took four years to compile from individual portraits. (This was a century and a half before Photoshop.)

800px-Christian_Schussele_-_Men_of_Progress_-_Google_Art_Project“Men of Progress”

The National Portrait Gallery, a Greek-revival building that was impeccably restored in 2006, housed the United States Patent Office from at least 1867 to 1932. (The official NPG history has the USPTO appearing in 1842, before construction was completed.) Work on the building was started in 1831.

For my account of why Schussele’s vision of America’s visionaries remains timely, please read “Fathers of Invention”in the September IAM Magazine. Both print and digital editions are available.

Necessity and Ego

“If necessity is the mother of invention,” I write in the Intangible Investor, “then ego is the likely father.” The U.S. industrial revolution spawned an innovation age prior to the Civil War that helped to transform the United States from a wannabe nation to one of greatness.

“In 1857 the inventor of a coal-burning stove, Jordan Mott, commissioned Alsace-born portraitist Christian Schussele to paint a group portrait of 19 U.S. scientists and inventors who ‘had altered the course of contemporary civilization’”.

Those depicted in the portrait had never met as a group. The artist sketched separate studies of each subject before combing them in his final, formal composition. Image altering software would have made it easier, but that was some 140 years in the future.

The subjects’ eyes in the portrait are never fixed on each other or the artist, as if to distinguish each inventor’s singular vision.

Fathers of Invention

The following list identifies the inventors and their primary contributions, starting from the left side (The Father of the Fathers of Invention, Benjamin Franklin, hovers on the wall in the background):

Dr. William Thomas Green Morton: surgical anesthesia
James Bogardus: cast-iron construction
Samuel Colt: revolving pistol
Cyrus Hall McCormick: mechanical reaper
Joseph Saxton: coal-burning stove, hydrometer, ever-pointed pencil
Charles Goodyear: vulcanization of rubber
Peter Cooper: railway locomotive
Jordan Lawrence Mott: coal-burning cooking stove
Joseph Henry: electromagnet design
Eliphalet Nott: efficient heat conduction for stoves and steam engines
John Ericsson: armored turret warship
Frederick Sickels: steam-engine gear and steering device for ships
Samuel F. B. Morse: electric telegraph
Henry Burden: horseshoe manufacturing machine
Richard March: rotary press
Erastus Bigelow: power loom for carpets
Isaiah Jennings: threshing machine, repeating gun, friction match
Thomas Blanchard: irregular turning lathe
Elias Howe: sewing machine

*****

I encourage those visiting Washington – students, tourists, inventors, government workers, IP holders and anyone interested in the rich innovation history of the U.S. – to stop by the National Portrait Gallery and take in this inspiring portrait. Admission is free.

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Image source: commons.wikimedia.org; Edward Sachse & Co., chromolithograph, c. 1857.

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Pandora Suit Against ASCAP May Portend Future for Inventors as well as Songwriters

February 18, 2014 by Bruce Berman 0 Comments

The royalties guaranteed to songwriters for playing their work on radio, television, and in restaurants and retail establishments are being threatened by a law suit filed by the streaming media service, Pandora, against ASCAP, the American Society of Composers, Authors and Publishers.

Pandora contends that the century-old royalty scheme governed by a Department of Justice consent decree is outdated. ASCAP says the new technology company is trying to marginalize the songwriters and publishers, effectively cutting them out of any significant revenue streams from listener plays.

The New York Times reports that the wider music world has been galvanized by the issue of the low royalties paid by fast growing streaming media companies. (See “Pandora Suit May Upend Century-Old Royalty Plan.”)

In 2012 when songwriters protested on Capitol Hill, “five writers of hits by stars like Beyoncé and Christina Aquilera showed that 33 million plays of their songs on Pandora yielded just $587.39 in royalties for them.”

pandora2-580x300For record labels and recording artists without negotiating leverage the situation is not much better. (See “Patent Holders can Learn from Angry Musician’s File Sharing Fight” in IP CloseUp.

Clear Warning

The warning for inventors and other patent holders is clear: Content providers and new tech distribution and delivery platforms, including social media, are interested in accessing the widest range of and best quality content for the lowest price. Many have an inherent disrespect for authorship and the unauthorized use of inventions by many companies, already poorly monitored and infrequently enforced, is not likely to improve.

With demand for innovation exploding tech companies are no longer able to generate internally all that they need to compete. Like streaming media companies, these businesses are hungry for ideas and motivated by access to as much innovation as possible for the lowest price (or no price). Often, they have established the distribution channels, brand recognition and capital to achieve success without having to pay licensing fees. This leaves many innovators out in the cold. Clearing houses, like publishing societies established, play an important role in generating respect for songwriters’ work.

ASCAP and BMI, music rights clearing houses establish by consent decree, have done a good job at monitoring the use of their members’ work and making certain that they are paid. For patent holders there has been no watchdog, and unauthorized use of inventions, despite NPEs, is likely to remain widespread.

Industry-Established Royalties?

With ASACPA and BMI possibly losing more ground to new media it will be interesting to see if businesses that petition_sitebanneruse the innovation rights of others, including independent inventors, SMEs and universities, will ever agree to pay industry-established royalties unless they are forced to.

Once the technology for tracking patent holders’ rights is as ubiquitous as that for monitoring music airplay, I suspect that many of those who are involved in invention disputes will want to find new ways to resolve the majority of them faster.

For now, it remains to be seen what will be learned by patent holders and lawmakers from businesses’ latest attempt to circumvent content providers.

Image source: entertainmentmanagementonline.com

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UK Inventor Burns: Torches Patent He Can’t Afford to Use

March 19, 2012 by Bruce Berman 2 Comments

The High Cost of Enforcement Compels Him to Destroy His Rights Before Parliament

Without the funds to enforce a patent it’s not worth the paper it’s written on.

We’ve all heard that before. But never was this more dramatically illustrated as when UK inventor, Michael Wilcox, recently set fire to his patent for an innovative color printing technology in front of Parliament in London.

In a symbolic act of defiance Wilcox torched the rights to what he had created, spending 150,000 GBP of his own money and  100,000 of the government’s. He knew that even if he caught infringers red-handed, he could not afford to face them in court. They get a free ride; he gets a goose egg.

Sad Story

This is a sad story that should have gotten much more play than it did.

I’ve said for years that “a patent holder can’t dial 911 and say ‘Arrest that man. He’s infringing my patent.'” Those who violate copyrights, at least, can face criminal charges. The onus of proving patent infringement is on the holder, and frequently the cost is simply too high.

I thought I would write something about the Wilcox public “execution” but Patrick Anderson at the excellent Gametime IP beat me to it. Patrick did such a fine job or reporting and tying SME abuse to what is happening in the US after the dubious America Invents Act, I am just going to link to his post and let you read it first hand.

I will add that Wilcox’s symbolic act of defiance hopefully dramatizes the patent system’s actual as opposed to imagined failings and abusers. Be sure to read The Telegraph story at the end or Patrick’s post.

While at first glance the patent burning may appear to be little more than a bit of street theater, it conveys a timely story. SMEs and inventors give up on patents on a massive scale, much to the delight of infringers, many of whom are large high-tech companies that can well afford to keep the costs of protracted litigation high.

Said a technology broker to The Telegraph: “Patenting without a realistic threat of prosecution is a toothless tiger.”

Image source: telegraph.co.uk

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