Tag Archives: USPTO

London IP Summit will feature transaction leaders; Washington patent policy event, a US Senator

Two timely IP conferences, one in London focusing on patent deals, and the other in Washington, looking at patent policy issues, will take place in this fall. 

This year’s London IP Summit will be held at the London Stock Exchange on October 16,and feature several of the leading figures in patent licensing and transactions.

So far, they include Stephen Pattison, ARM; Kasim Alfalahi, Avanci; Gustav Brismark, Ericsson; Roberto Dini, Sisvel; Tim Frain, Nokia; and Manny Schecter, IBM.

“The London IP Summit is an industry leading event dedicated to bringing together IP owners, experts and investors to address key challenges and operational issues faced by companies and IP professionals today,” reports LIPS.

“Due to the sensitive nature of the topics discussed, LPS-London IP Summit is the only IP event organised under the Chatham House Rule*, offering safe and secure environment to speakers and to attendees in order to encourage openness and sharing of information. Participation at the event is by invitation only

 * When a meeting, or part thereof, is held under the Chatham House Rule, participants are free to use the information received, but neither the identity nor the affiliation of the speaker(s), nor that of any other participant, may be revealed.

For the full program or to register go here.

*****

In Washington, DC on November 14, IAM is presenting the 3rd annual Patent Law and Policy conference, “Courts, Congress and the Monetization Landscape,” at the Reagan International Trade Center, across the street from the White House. The event will provide the political background needed to put IP into better context amidst changes.


Coverage includes the latest Supreme Court decisions and the machinations in Congress, to the policies of the Trump administration, the event provides delegates with timely and relevant insights from panelists representing a broad cross-section of the patent community.

Senator Chis Coons (D-Delaware) will be a speaker, as will interim USPTO Director Joseph Matal.  Laurie Self of Qualcomm, a passionate defender of the right to license patents, also will present.

For the Patent Law and Policy program or to register, go here.

Register by October 6 using code ONLINEEB to receive $100 off the standard rate. (CLE credit is available.)

 

Image source: 10times.com; qualitytalks.com

Blockchain patent publications picked up speed in August

An uptick in recent blockchain patent publications may be an indication that the technology is quietly picking up steam, with competing big banks and tech businesses vying for leadership.

“The US Patent and Trademark Office (USPTO) published in late August 2017 nine additional patent applications related to blockchain technology that was filed by Bank of America,” reports The Coin Telegraph, an industry publication.

The patents, which relate to the carrying out and settling transactions within a payment network, were all filed on Feb. 22, 2017, so the process took only seven months. So far, BofA has filed over 30 blockchain technology-related patent applications, including some 18 in 2016.

“The various patents already filed by the bank mainly focused on the whole cryptocurrency exchange and payment process. Among them were the areas of real-time conversion, transaction validation, risk detection, and online and offline storage.

“The other patents involved the use of distributed ledgers to validate the factualness of information and those who handle it, as well as a peer-to-peer payment system that operates on the blockchain.”

In September 2016, the bank partnered with Microsoft for a joint project aimed at developing and testing blockchain applications for trade finance.

“Under the deal,” reports The Coin Telegraph, “the bank will collaborate directly with Microsoft Treasury for the creation of a Blockchain system that can speed up transactions between the partners.The partners have already hinted that they are already testing how the system can facilitate the letter of credit process.”

***** 

Leading cryptocurrency startup Coinbase received in mid-August a patent related to a security system for storing and distributing private keys.

The USPTO approved and published the patent on August 15, reports Econotimes.com. Entitled “Key ceremony of a security system forming part of a host computer for cryptographic transactions’, the patent lists former Coinbase engineers James Hudson and Andrew Alness as inventors, CoinDesk reported. The patent application for “key ceremony” was submitted in 2015. The startup has filed a number of patents related to security of private keys in the past.

*****

Also last week, the USPTO published the details of Visa’s new patent application. The biggest credit card company’s plans for the digital asset network are quite broad, reports Bitcoin Magazine. However, it might be possible that the company is planning to file a patent for the Visa B2B Connect.

The blockchain enterprise company Chain and Visa announced their new partnership in October 2016, in which the two firms decided to develop “a simple, fast and secure way to process B2B payments globally.” The Visa B2B Connect platform’s pilot is expected to launch in 2017, indicating a connection between the USPTO digital asset network patent and the new B2B solution.

*****

Coincidence? Maybe. Publication dates cannot be controlled, but they can be managed. A spate of controversial financial transaction patents publishing in mid-August should draw more attention than they would otherwise deserve.

 

Image source: datafloq.com; cointelegraph.com

Passage of STRONGER Patent Act is likely to spur innovation and jobs

A bi-partisan bill introduced by Senators Coons, Cotton and others is one of the most important pieces of legislation for American competitiveness and innovation to come along in recent memory.

So why has it gotten almost no coverage from the leading business, technology and general news media? It may have to do with perspective, as well as how the media and its constituents wish readers to regard more certain patents, which are potentially more expensive to license.

Washington Examiner, IP Watchdog and a few others, who are generally pro-strong patents, provided extensive coverage. Others did not cover the STRONGER Patent Act at all.

The Hill ran the following headline: “Senate Dem Offers Patent Reform Bill.” It’s actually a bi-partisan effort, between Chris Coons (D-Del), and Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hirono (D-Hwi), and is supported by conservative members of the House, as well as business groups, like the Innovation Alliance, the Chamber of Commerce, inventors and others.

From 1st to 10th Place

The U.S. patent system is now ranked tenth worldwide by the U.S. Chamber of Commerce, in a tie with Hungary. Until this year, it had always been ranked first.

Mostly, the business, technology and general news media have been silent on the best thing to come out of Washington in support of U.S. competition and jobs in a decade. Conservative groups are supporting the bill. Internet and some large tech companies who favor weaker, less challenging patents are not likely to support the bill in its current form, and may try to oppose it.

“This bill is totally worth getting behind,” a Washington observer told IP CloseUp. “Reforming the PTAB and restoring injunctions, what’s not to like? Frankly, just the injunction issue alone gives Coons great leverage over all other legislation.”

Key points in the STRONGER Patent Act in its current form include:

  • Restore injunctive relief for infringed inventions
  • Reform unfair Patent Trial & Appeal Board (PTAB) reviews
  • Allow the USPTO to retain its fees for faster, higher quality examinations
  • Protect consumers and small businesses from patent abuse

This STRONGER bill is a more robust version of the Coons-proposed STRONG Patents Act that was introduced in 2015.

The Washington Examiner article can be found here. The IP Watchdog piece by Brian Pomper of the Innovation Alliance, hereFor the Hill article go here.

“Coons wants to get ahead of Goodlatte in the House and Grassley in the Senate,” the IP CloseUp contact said. “He would like to seize the momentum from TC Heartland (driving more patent litigation to Delaware) and encourage Republicans to join the cause. During last year’s campaign, Trump voiced pro-patent sentiments, a change from Obama.  Cotton is on board, and I hear that Kennedy [Louisiana] and others are interested and willing to go against Grassley.”

For a one-page summary of the bill, go here.

For a section-by-section review, here. 

For more on the subject of media coverage of patents, see the Center for Intellectual Property Understanding report, “Patterns in Media Coverage of Patent Disputes,” here.

Image source: cpip.gmu.edu; ipwatchdog.com

Gene-editing break-through: can a collision of science, ethics and (patent) ownership be avoided?

The USPTO decided in February that the rightful intellectual property owner of CRISPR in eukaryotes, a time-saving tool that makes it cheaper and easier to edit gene sequences, should be Feng Zhang, Ph.D., and The Broad Institute of MIT and Harvard, not Jennifer Doudna, Ph.D., and the University of California, Berkley, who had conducted the earlier research.

However, Doudna and her team, which included Emmanuelle Charpentier, now with Max Planck Institute in Berlin, are on track to obtain a European patent for CRISPR. They recently filed an appeal against the USPTO’s decision, setting the stage for a showdown.

CRISPR will allow an organism’s DNA to become “almost as editable as a simple piece of text.” Using CRISPR, scientists will have the capacity to alter, insert and delete genes in plants, animals and, even in humans.

The implications are very big indeed, both in terms of science and profits, and, especially, ethics. Universities and businesses stand to generate potentially billions of dollars. Medical research will never be the same.

[For a good description of how CRISPR-Cas9 works, go here. ]

The battle lines are being drawn to determine the rightful owner of aspects of the development: Berkeley and Dr. Charpentier vs. Broad Institute/MIT and Harvard. It could mean an eventual pay-out of billions of dollars.

World-Changing

In 2012, Cal biochemistry and molecular biology professor Jennifer Doudna and microbiologist Emmanuelle Charpentier, now of the Max Planck Institute, changed the world. They invented CRISPR-Cas9 (as opposed to eukaryotes, which is any organism with a nucleus enclosed in membranes), a gene editing tool that uses a protein found in Streptococcus bacteria to chop up and rearrange viral DNA with precision.

“The implications of the technology were immediately apparent, astonishing, and perhaps just a wee bit scary.” 

“The implications of the technology were immediately apparent, astonishing, and perhaps just a wee bit scary,” reports California Magazine. “Ultimately, CRISPR applications might be developed to wipe out genetic diseases, produce bespoke bacteria that could pump out everything from hormones to biofuels, and engineer exotic animal chimeras.”

It is one thing to use an editor to eliminate genetic mutations, such as those found in sickle-cell anemia, writes the Wall Street Journal, however, “it is quite another thing to edit the germ line—that is, to make changes that would be passed on to future offspring.

“Would it be permissible, Ms. Doudna asks, to lower an unborn child’s risk of Alzheimer’s disease? If so, would it also be permissible to edit for greater intelligence or athleticism or even, say, for a particular hair color? While all such uses would ultimately require regulatory and institutional review, it is the notion of building a social consensus that is particularly fraught.”

The three main researchers involved in these patent cases have developed their own companies that focus on CRISPR: Doudna developed Intellia Therapeutics, Zhang developed Editas Medicine and Charpentier, now at a Director at Max Planck’s Infection Biology, developed CRISPR Therapeutics. So, both universities and businesses stand to benefit.

These university-based cases often result in sharing through cross-licensing. Remicade, for example, a highly successful biologic for treating auto-immune responses like Crohn’s disease which has generated over a $1 billion so far, has multiple university participants, but is primarily owned by NYU.

Who Benefits?

Yet another question that is raised: Is it right for highly endowed universities like Harvard to get richer as a result of government-funded research? Almost 70% of university research is provided by the U.S. government. Harvard’s 2016 endowment was $36.4 billion.

With the potential impact on society so great, patents may play much more than a financial role. They depending who controls them, they may turn out to be the lynch-pin for ethical application of advanced gene-editing.

In the most interesting chapters of her new book, “A Crack in Creation,” Ms. Doudna wrestles with her ambivalence about the tool she has helped create. She concludes that she no longer feels comfortable operating inside her “familiar scientific bubble”: She must take on a role as a public citizen and address not just the power of gene editing but the ethics of it. At stake, she believes, is “nothing less than the future of our world.”

Image source: bloomberg.com; rsb.org.uk

Michelle Lee to keynote “Patents for Financial Services Summit,” 7/19

The 14th Annual Patents for Financial Services Summit being held July 19-20 at the Sheraton Times Square Hotel will examine recent developments affecting banks and other financial institutions. 

The featured speaker for 2017 is Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office (USPTO).

Ms. Lee will address “The Current State of U.S. Patent Law.”

IP CloseUp readers can save $200. Use code IPCNYC. 

2017 program highlights include:

  • Consider the impact of recent and pending Supreme Court cases, including TC Heartland LLC v. Kraft Foods (venue and forum shopping), SCA Hygiene Products AB et al. v. First Quality Baby Products LLC (the availability of the doctrine of laches as a defense in patent litigation), and of Impression Products Inc. v. Lexmark International Inc. (patent exhaustion)
  • Evaluate best practices in oral argument before the PTAB and pinpoint the necessary information to communicate in an efficient and complete manner
  • Identify where changes have occurred in patentability and if additional clarity is available
  • Provide practical advice for weighing the costs and value of opinions of counsel, including when they should be obtained and from whom
  • Review the law of patent eligibility as it relates to FinTech in a number of jurisdictions outside of the U.S., including Canada, Australia, Japan, Singapore, and China
  • Earn CLE: This program was designed to satisfy approximately 13 hours of Continuing Legal Education credit requirements and is appropriate for both newly admitted and experienced attorneys

For a full list of speakers, go here; for the conference agenda, here.

To register as an individual or group, please go here.

Image source: worldcongress.com

Fixing the patent system/ promoting jobs is focus of Capitol Hill event

An increasing number of experts say the U.S. has lost its edge in the battle to secure and defend meaningful patents that stimulate competition.

It is with making U.S. patents important again that “Promoting Innovation, Investment and Job Growth by Fixing America’s Patent System” is being held on Monday May 8 at the United States Capitol Building, Washington, D.C.

The invitation-only event hosted by the U.S. Chapter of the International IP Commercialization Counsel (IIPCC), will feature an all-star list of presenters from business, government and law.

Speakers Include

Dr. Carl J. Schramm, University Professor, Syracuse University; Former President of the Ewing Marion Kauffman Foundation for Entrepreneurship; Board Member IIPCC; David Kappos, Partner, Cravath, Swaine & Moore LLP; Former Under-Secretary of Commerce and Director of the USPTO; Q. Todd Dickinson, Senior Partner, Polsinelli, PC; Former Under-Secretary of Commerce and Director of the USPTO; Judge Randall Rader, Former Chief Judge of the U.S. Court of Appeals for the Federal Circuit; Board Member IIPCC;  Judge Paul Michel, Former Chief Judge of the U.S. Court of Appeals for the Federal Circuit; Charles Henry Giancarlo, Former CTO and Chief Development Officer Cisco Systems and former Managing Director Silver Lake Partners; Phil Johnson, Former Senior VP, Intellectual Property Strategy & Policy, Johnson & Johnson; Marshall Phelps, Vice-Chairman, Center for IP Understanding; former VP IP for Microsoft, IBM, Bob Pavey, Partner Emeritus, Morgenthaler Ventures; former Chairman of the National Venture Capital Association;

Manny W. Schecter, Chief Patent Counsel, IBM Corporation; Laurie C. Self, VP and Counsel, Governmental Affairs, Qualcomm; Bill Elkington, Chair & President Elect, LES USA and Canada; Senior Director, IP Management, Rockwell Collins; Orin Herskowitz, SVP of IP & Tech Transfer, Columbia University; Executive Director of Columbia Technology Ventures; Teaches ‘IP for Entrepreneurs’ in Columbia’s Engineering School; Professor Adam Mossoff, Director, Center for Protection of Intellectual Property, George Mason; Professor Jeffrey A Lefstin, Associate Academic Dean and Professor of Law, UC Hastings; Robert B. Aronoff,  U.S. Executive Director, International IP Commercialization Council; Managing Partner, Pluritas; Damon Matteo, CEO, Fulcrum Strategy; Robert P. Taylor, President, RPT Legal Strategies; Venture Advisor, New Enterprise Associates, Bruce Berman, Chairman, Center for IP Understanding; Publisher, IP CloseUp; Principal, Brody Berman Associates; Elvir Causevic, Managing Director, Houlihan Lokey Tech+IP Advisory, Art Monk, VP IP Transactions, TechInsights; Rob Sterne, Founding Director at Sterne, Kessler, Goldstein & Fox

Opening Panel

IP CloseUp publisher and editor, and Center for Intellectual Property Understanding Chairman, Bruce Berman, is moderating the opening panel at 2:00 pm: The business impact of IP uncertainty and negative attitudes. Panelists include:

  • Manny W. Schecter (IBM)
  • Phil Johnson (J&J)
  • Marshall Phelps (Center for IP Understanding)
  • Laurie Self (Qualcomm)
  • Bob Pavey (Morgenthaler Ventures)

“Our patent system may no longer be providing the protection and incentives necessary to entice investors and entrepreneurs to assume the enormous risks that inhere in the creation of many new technologies and new companies,” said Rob Aronoff, IIPCC U.S. Chapter Chair.

“In recent years patent reform initiative have resulted in significant unintended consequences, including a decline in the reliability of patents is contributing to a waning of entrepreneurial energy and a decline in the risk tolerance of American investors and entrepreneurs.

Profound Implications

“This shift has profound implications for the long-term U.S. economy, as China, Korea, Germany and other countries expand the role that patents play in their economies with ambitious plans to displace American dominance of technology in the years to come. This program will explore the direct and essential role that strong and enforceable ‘good patents’ play in allowing investors and entrepreneurs to justify the high levels of risk that drive innovation.”

Conference sponsors include Houlihan Lokey, TechInsights, Qualcomm and Pluritas.

Partners include IAM Magazine, the Licensing Executives Society, the Center for IP Understanding, USIJ Alliance for Startups & Inventors for Jobs and IP CloseUp.

For more information, go here.

Those interested in attending can request and invitation, availability permitting, by emailing rob.aronoff@iipcc.org.

Image source: iipcc.org; west-windsor-plainsboro.k12.nj.edu

 

 

PTAB fairness data is misleading, say more patent holders

Not all patent owners agree the Patent Trial and Appeal Board (PTAB) is a fairer forum for vetting patent quality today.

While some believe that the United States Patent and Trademark Office (USPTO) board is no longer the “death squad” that it was described as by the former Chief Judge of the Court of Appeals, most patents subject to multiple inter partes reviews are, with an uncanny frequency, either invalidated or severely weakened. Few, emerge as clear winners.

The USPTO established the PTAB, an administrative law body, as part of the America Invents Act in 2012 to eliminate issued patents that should not have been granted because prior art way overlooked. IPRs are said to be a patent office “second look,” but while patent office re-examinations (an earlier review process superseded by IPRs) eliminated many patents that should not have seen the light of day, they also strengthened some, making them easier to license. To date, IPRs effectively have been a one-way street, eliminating many patents that should not have been issued but ineffective at identifying good ones.

An article that appeared last week, “How IPR Gang Tackling Distorts PTAB Statistics,” takes the recently reported data to task for misleading about the ultimate effect of multiple IPR filings on a single patent.

“If you use the PTAB published statistics, they’ll tell you that the institution rate was 50% – because only 1 of 2 petitions was granted. That’s true, as far as it goes. But from the patent owner’s perspective, they used to have 10 claims, and now they have 0.  That’s a 100% kill rate!”

“Assume 10 petitions and one institution,” wrote Peter Harter in IP Watchdog. “A 10% institution rate seems terribly biased towards [in favor of] the patent owner. But if all 10 claims get killed, that’s still a 100% kill rate – pretty good for challengers. When both sides think the deck is egregiously stacked against them, it’s easy to see why there’s no middle ground for compromise and improvement. And the way the PTAB is reporting statistics is to blame.”

An article that appeared recently in Law 360, “Inter Partes Reviews Becoming Friendlier to Patent Owners,” argues that holders whose patents are subjected to IPRs today have a better chance of survival than in the past.

“The PTAB also now institutes inter partes reviews less frequently,” writes Law 360. “Looking at all institution decisions made by the PTAB, the board decided to institute trials more than 85 percent of the time in the first year after inter partes reviews became available (2013) according to data from the U.S. Patent and Trademark Office, but only 68 percent of the time in its 2016 fiscal year.”

Statistically Valid

The decline in the institution rate may be statistically valid, but some patent holders argue that it does not tell the whole story. The statistics do not explain that some of the worst, most easily invalidated patents came before the PTAB in the first year of its existence, so the institution rate was destined to go down as it became clearer the weakest patents had been terminated.

Results from a November-December 2016 Bloomberg Law and AIPLA research study asserts that “progress has been made in patent owner attitudes towards IPRs.” However, it really depends on which patent owners you ask: those that have large portfolios that they rarely enforce or those with a small number of quality patents that they wish to license.

Brad D. Pendersen, former chair of AIPLA’s IPR Committee and co-author Bloomberg Law-AIPLA’s Patents After the AIA: Evolving Law and Practice (2016) believes that there is an opportunity for patent holders subject to IPRs to strengthen their patents, despite evidence to the contrary.

“Given the potential gold-plated downstream advantages (in litigation and/or settlement) of surviving an IPR (either at the Decision or Institute stage, at the Final Written Decision stage), and given that one-third of patents survive at the Decision to Institute Stage, it is surprising – but not completely unexpected – that some portion of patent owners are starting to look more favorably on the IPR process.”

It is not clear that most patent owners who license would agree with the “gold-plated” reasoning. If it were true, there would be even fewer patent suits and more owners seeking IPRs of good patents. In fact, it is a bit of a mystery what happens to patents that pass PTAB muster. A significant number appears to move on to district court litigation, and there is little data analyzing if they have greater value or fare any better licensing than patents that are less successful running the IPR gauntlet.

Leading IPR Target

Finjan is an example of an IP holder that engages in licensing whose patents are frequently subject to IPRs. The company has fared surprising well in defending itself at the PTAB, but that success does not seem to have translated into significant shareholder success for the cybersecurity company which also frequently out-licenses its patents.

On March 15, 16 and 17, as reported in The Patent Investor, Finjan won three more IPR rulings, involving Palo Alto Networks. Shares of Finjan (FNJN) currently sell at just $1.54. The company has a micro market capitalization of $35M, $18M on 2016 revenues. Its shares are up significantly over 12 months vs. for the S&P 500 Index, but the company, which lost $12.6M in 2015, showed its first profit in 2016, $350K or .02 per share. Finjan has executed a difficult IP strategy. If successful IPRs have gold-plated its patents, the value has yet to shine through.

Finjan was the fourth most IPR’d patent holder in 2016 and the third most in 2015. It is the most successful company in successfully defending against IPR petitions. Of 47 total IPRs against Finjan patents to date, 32 have been denied institution.

With that track record at the PTAB, one would think Finjan would have a field day licensing its patents, but the IPRs continue to come, and it still must win hard-fought victories in district court litigation. In September, a California jury found that cybersecurity firm Sophos infringed all eight patents asserted in a lawsuit brought by Finjan over software that identifies new computer viruses, awarding the company $15 million in damages.

“We have a portfolio of patents that has been proven durable in light of the increasing number of administrative pathways to challenge validity largely due to two factors,” says Finjan CEO, Phil Hartstein.  “First, our patents were developed jointly and alongside product development of technology that was disruptive to a market.  Second, we do not deviate from the intrinsic record of the assets themselves and vigorously defend our patent rights on the merits.”

Coordinated Challenges

Editor and patent attorney Gene Quinn of IP Watchdog believes that Finjan and other businesses that attempt to out-license their patents are frequently subject to repeated, coordinated attacks.

“At least several patent owners, including Finjan, are routinely subject to serial, harassing IPR challenges,” writes Quinn. “The Patent Office doing something about harassing IPR challenges is long overdue. If the Director is not going to exercise the discretion vested in that Office by the America Invents Act (AIA) hopefully more panels of the Board will take it upon themselves to do just that.

“Patent owner harassment needs to stop. Patent owners shouldn’t have to be subjected to many dozens of IPR challenges before someone recognizes there is coordinated harassment – perhaps even collusion – against certain patent owners who have the audacity to want to be paid for blatant, ongoing, willful infringement.”

23 IPRs Filed on a Single Patent

Zond makes plasma generators, the kind used in manufacturing semiconductors. Pulsed DC plasma generators for magnetron discharge were first introduced in the late 1990s to reduce arcing during for the purpose of improving the quality of thin-film materials. A big breakthrough came in September 2002, when Zond applied for what it describes as a “revolutionary” pulsed technology approach.

Zond is a Massachusetts-based company that wholly owns Zpulser LLC, which commercializes its patent technology by making and selling high-power plasma generators. The patent at issue relates to methods for generating magnetically enhanced plasma.

Over the last three years, Zond’s patents have challenged an average of 12.5 times in IPRs and as many as 23 times.  The patent research firm, Patexia, writes that it is difficult for holders of good patents to survive multiple IPR challenges. In the case of Zond, it has made licensing pretty much impossible.

A study last year, reported in Law 360, showed that Zond’s patents have been challenged in AIA reviews more than those of any other patent owner, including largest patent licensing company, Intellectual Ventures, which owns more than 70,000 patents and took second place on the list.

Zond’s large number of infringement suits, reports Law 360, spurred many companies to band together to challenge the patents in AIA reviews. In addition to Fujitsu and Gillette, petitioners have included Toshiba Corp., Advanced Micro Devices Inc. and Taiwan Semiconductor Manufacturing Co. Ltd.

Were potential licensees and defendants in patent suits lining up against Zond’s patents because they were bad and its case without merit, or did they want to destroy some potentially good patents that would have cost them to license?

For IPRs the devil certainly is in the details, as Patexia’s Pedram Sameni points out in a case study, “Can Patents Survive Multiple IPR Challenges?”

“Some have been suggesting that solely relying on the denial rates reported by the patent office is not enough to conclude that patents are surviving the IPR challenge,” writes Sameni. “Many have called PTAB, the patent death squad. Our study shows that in some cases, patents are challenged many times.

“The reality is that it only takes one successful IPR to completely kill all the claims of one patent. Therefore, the case-level status is not the best indication of PTAB performance and patent survival rate. While as IPR’s Final Written Decision usually means that some of the claims were invalidated, it does not necessarily mean that all claims were canceled.”

Not the Full Story

If claims still exist, they could be threats. And potential licensees/defendants will go to lengths to “kill” a patent to avoid paying a license or being dragged into court, including teaming on multiple petitions. Repeat IPRs are an efficient way to make a potential infringement suit or royalty payment disappear for multiple parties.

“The statistics that show that the PTAB is becoming fairer for patent holders do not tell the full story,” a prominent NPE told IP CloseUp. “IPRs are frequently unfair fights between several, well-funded petitioners and a single patent owner who has to run the gauntlet, repeatedly.  Surviving an IPR doesn’t mean anything if subsequent challenges can be filed at any time, especially in coordinated fashion.”

Once a patent is challenged multiple times with different prior arts, it is highly unlikely that any of its claims will survive – no matter how good it is.

“The PTAB may not be a death squad, but challenged patents are put in a kind of headlock that can render them useless. Where are the patents that emerge from IPRs generally intact or whose petitions against them for review are not instituted? They should be eminently licensable, but they are nowhere to be found. The ‘normalization’ statistics that are being cited to show that the PTAB is becoming a fairer forum for patent holders are highly misleading.”

Lack of Uniformity

Another patent licensing business, one whose petitioned patents have survived multiple IPRs, still believes that the lack of uniformity among the many PTAB panels and administrative law judges is a major factor in the continued unfairness that has effectively destroyed patent licensing for many companies and independent inventors.

“It’s difficult to predict how the PTAB will rule,” says the executive, a lawyer. “The first year or two that patents were subjected to IPRs there was a lot of low-hanging – really, rotting –  fruit. Those petitions were almost universally instituted, and many bad patents were appropriately eliminated.”

“But anyone can file and IPR and they can keep filing them. Reliable patents don’t seem to emerge from the process, only ‘bad’ ones, which are eventually neutralized. Few patent holders have the time or money to repeatedly defend themselves in IPRs. This has made otherwise licensable patents pretty much worthless and daily infringement, at least to some, an acceptable way of doing business.”

Image source: patentlyO.com; patentacademyonline.com; 

Three notable IP events coming up in NY, SF and Bangalore

IP event season is upon us and at least three conferences are worth noting. 

The first takes place this week in New York, March 21-22, the 9th annual Corporate IP Counsel Forum. The USPTO Keynote will be given by Mary Boney Denison, Commissioner for Trademarks and Mark Powell, Deputy Commissioner for International Patent Cooperation.

The featured session will be “Reconsidering Patent-Eligibility under Section 101.” Speaker faculty can be found here and the conference agenda here. I understand that there are only a few seats left.

IP CloseUp readers can save $200 by using registration code IPCNYC.

*****

The World IP Forum will take place this year April 26-28 at the Shangri-La Hotel in Bengaluru (Bangalore), India.  The theme for the conference is “Harnessing the Power of Intellectual Property.” The fourth edition of this three-day conference will focus on recent developments in intellectual property and its syncing with business objectives. Past participants have include Judge Randall Rader and former USPTO Commissioner Q. Todd Dickinson.

For more information about the World IP Forum, go here.

*****

On May 18 San Francisco’s Golden Gate Club (at the Presidio) will be the site for IAM’s IP Software Summit.  The Summit is the first event to provide a platform for professionals from the software industry to discuss open innovation, open source and proprietary systems, collaboration, the scope of patent protection, and monetization.

The list of speakers can be found here and the full agenda here.

Speakers include senior IP executives from Cisco, Qualcomm, Mozilla, SAP, Open Invention Network, Google, Uber, LinkedIn, Ericsson and IBM.

Experts: Void from U.S. patent “train wreck” is being filled by China’s patent system

In a few short years China’s patent system has gone from an IP rights wannabe to one of the most responsive and patent-friendly systems in the world.

Leading U.S. IP experts say that underlying this rapid evolution is a desire for China to become a science and technology powerhouse, with the ability to create new and formidable industries that employ many of its 1.4 billion people.

“China wants to be an innovation leader for multiple reasons,” Irv Rappaport, former Chief Patent Counsel at Apple and National Semiconductor, who served on the Uruguay Round of GATT, told IP CloseUp recently. “It is fascinating to see how the U.S. patent system is imploding, while the Chinese system is exploding with activity and purpose.

“For more than a decade the U.S. has been emasculating its patent system, while the Chinese have been studying it and adopting the benefits of a well-coordinated and fast-moving one. The U.S. has gone from being on the global cutting edge in IP in the 1990s, to becoming a patent backwater, because of a well-heeled, anti-patent faction among technology companies that want to stifle competition.

“Train Wreck”

“China has watched the U.S. train wreck and is moving fast to fill the void,”continues Rappaport. “It wants to become the world’s ‘Eastern District of TX,’ that is, a fair and fast adjudicator of disputes that respects patent holders’ rights. China will soon be the world’s largest economy with the biggest population and a middle class the size of England, France and Germany combined. Their commitment to innovation can not be ignored.”

oj-am734_cpaten_9u_20160720061809

Peter Holden, CEO of ipCreate and former managing director with London-based Collar Capital and a founding executive with IP Value, has worked extensively with Asian companies and patents. He has traveled to Korea, China and Japan more than 100 times over the past twenty years. “The Chinese have learned from the U.S. and are sincere about making their IP system the best — one that will encourage innovation and help their nation to become the economic leader. It is not merely a thought. It’s an idea that they are dedicated to.

“China’s attitude towards foreign patent enforcement may not always be as generous as it is currently. It knows that it needs to bend over backwards to be fair if it is to be taken seriously on a global scale. To encourage competition there needs to be a level playing field.”

Counterfeits Still Rule

But China’s record on counterfeits is poor, with everything from luxury goods to pharmaceuticals sold domestically and exported globally. According the U.S. International Trade Commission, Chinese theft of U.S. IP in 2009 alone cost almost one million U.S. jobs and caused $48 billion in U.S. economic losses.

“Counterfeit goods are still an issue for China,” says Erick Robinson, a patent attorney in Beijing and author of Defending a patent case in the brave new world of Chinese patent litigation, in the current issue of IAM magazine. “However, sales of fake goods are no longer openly accepted and the government has been on the war path trying to stop them in different ways. Authorities know that in order to be taken seriously about IP rights, they cannot ignore the problem of counterfeit goods.”

For a prior IP CloseUp post summarizing the Robinson article, go here.

“Go-To” Jurisdiction

China is just beginning to build its giant tech companies. They have succeed with Alibaba and Huawei, and acquired Lenovo from IBM, which is now a $45 billion (USD) business. Their big businesses currently have less to lose from strong patents and quick dispute resolution than those in the U.S. and Europe. To create successful businesses and attract investment, incentives need to be provided, and strong patents and a reliable legal system for adjudicating disputes are great for encouraging that.

Perhaps when China has as many big tech players as the U.S. it will start to think more defensively, but for now it is the perfect setting for encouraging new ideas with strong patents and courts that make it easy to obtain injunctions.

“It’s interesting that the Chinese are encouraging large foreign corporations to sue non-Chinese companies in China,” opines Rappaport. “This suggests that they are looking to become the patent litigation go-to jurisdiction.” As their innovation grows and becomes more complex, I believe they will have less interest in exporting cheap knock-
china-is-receiving-the-most-invention-patent-applications-in-the-world-insideiim-rishikeshakrishnan-1024x792

offs.  Their IP path is similar to that followed by many of today’s developed economies, such as Japan and South Korea.  You start off copying others and gradually move to internal innovation.”

Despite China’s success in facilitating stronger patents and more decisive courts, a huge question is just how prominent a role will patents play in new companies in a data-driven information age.

“Given the accelerating pace of technology development and nature of discoveries, which are frequently software driven, it’s not clear whether existing patent systems can remain relevant in the longer term,” says Rappaport. ” This effect may partially explain why patents currently seem to be less relevant in the U.S.  It remains to be seen whether this is a longer term development. It is a development that needs to watched.”

“100% Win Rate”

“Trust the Chinese government to do what is best for the Chinese people,” reminds Beijing-based Robinson. “It’s less about assisting foreign patent holders than establishing a really viable IP system that encourages innovation and growth, and that attracts foreign investment. Forty-percent of the smart phones in India are currently manufactured by Chinese companies. Innovation coupled with enforcement will drive China’s new businesses and help them grow.”

As reported by Robinson in IAM, “foreign plaintiffs notched a 100% win rate [65 – 0] in civil cases heard by the Beijing IP Court last year, according to a judge who has been on its roster since it was established in 2014.”

Wake-Up Call

A decade of weakening has taken its toll on the U.S. patent system and patent holders. It will not be quick to recover unless a concerted effort can be made to take IP rights seriously. Allowing U.S. patent policy to be dictated by those with the greatest financial success and market share may be appealing to shareholders, but it is not necessarily what is needed for the nation to remain competitive in a global economy, and to generate new businesses and jobs.

Hopefully, the wake-up call comes soon for the U.S. and it can retain the title of innovation leader it has held since the 19th Century but is slipping away.

Image source: insideiim.com; chinapatentblog.com; wsj.com

Gov’t study of economic impact of patent infringement is needed ASAP, experts say

There are abundant statistics on the cost of counterfeit goods, copyright infringement and even the negative impact of patent “trolls,” but nothing on the estimated extent of U.S. patent infringement and the cost in lost jobs, failed businesses and unpaid taxes. 

Global trade in counterfeits or fake goods, such as fashion, automobile parts and pharmaceuticals, has reached $600 billion annually, or about 5%-7% of GDP.  

The U.S. economy alone loses $58 billion each year to copyright infringement (2011 estimate) — crimes that affect creative works. That includes $16 billion in the loss of revenue to copyright owners and $3 billion in lost tax revenue.

The Recording Industry Association of America (RIAA) reports that the U.S. economy loses $12.5 billion in total output annually as a consequence of music theft and that sound recording piracy leads to the loss of 71,060 U.S. jobs, as well as losses in tax income.

Statistics on the cost of counterfeits and copyright infringement are conducted fairly regularly. There is even biased research on the cost of non-practicing entities. (Claims of $29 billion in damage from “trolls” are wildly inflammatory, says a former USPTO commissioner, which despite having been debunked are still cited by academics and reporters.)

Surprisingly, there are no estimates of the extent of patent infringement in the U.S., and the cost in lost jobs, failed businesses, unpaid taxes and other economic impact.

____________________

“There have been no studies that I am aware of devoted to quantifying the amount of patent infringement in the United States,” said Gene Quinn, patent attorney and publisher of IP Watchdog told IP CloseUp.

_________________

“”It would be extremely helpful to get some kind of quantification of the amount of harm that befalls innovators through the concerted and calculated ‘efficient’ infrdataingement business practices of those who use technology and simply refuse to pay for their ongoing, and frequently willful, patent infringement.”

Tip of the Iceberg?

Patent damages paid may be the tip of the infringement iceberg. The real damage may be below the waterline.

To provide some context, 15 leading technology companies paid patent litigation damages of more than $4 billion over as 12-year period from 1996-2008.

That’s just a little over a dozen companies who had to pay damages. The figure presumably does not include settlements, licenses, and all of the times they and thousands of other businesses paid nothing for the inventions that they used.

The Impact of Undetected Infringement 

  • Today, with more issued U.S. patents, and much greater difficulty securing a license or winning a patent law suit, the amount of patent infringement that actually takes place but remains unidentified could exceed a trillion dollars.
  • There is no known government, academic or privately commissioned study of the extent of patent infringement in the U.S., and the cost in lost jobs, failed businesses and economic loss.

_________________

“It is not enough just to be aware that there is harm caused by undetected patent infringement,” said Paul R. Michel, Chief Judge of the Court of Appeals for the Federal Circuit (ret.). “The government needs to conduct a proper empirical study ASAP to determine its scope and impact.”

___________________

 

Image source: ltrdigitalgroup.com

 

 

Post-election “Patent Law & Policy” conference to be held in Washington

Many businesses are wondering what the patent terrain will look like after the U.S. elections in November.

Will further reforms will be forthcoming, or will there be a move toward stronger patents and greater certainty?

On November 15, the Tuesday following election day, at Washington DC’s Reagan Conference Center, those attending the 2016 Patent Law and Policy will be in a better position to find out.

Capitol Building in Washington DC USASpeakers assembled for this year’s IAM Patent Law and Policy conference will include senior government officials, members of the judiciary, corporate patent leaders, private practitioners and investors, who will discuss how court decisions and legislation are affecting US patent values and strategies.

The keynote speaker is US Patent and Trademark Office Director Michelle Lee. Other speakers include the chief judge of the Patent Trial and Appeal Board, David Ruschke, ex-USPTO Director David Kappos, and former Federal Circuit Chief Judge Paul Michel.

Also participating as speakers or panelists will be senior representatives from companies closely involved in the ongoing patent reform debate, including: GoogleQualcomm, Johnson & Johnson, Bristol-Myers Squibb and IBM. Lead counsel in two of the pivotal Supreme Court patent cases of the last decade, KSR v Teleflex and Cuozzo v Lee. Also present will be as several high-profile patent investors.

IP CloseUp readers are able to receive $100 off the $895 fee if they use the discount code PLAP100 (offer valid until October 7 2016).

For the complete program and speakers, go here. For registration go here.

Image source: ipo.org; ipwatchdog.com

 

 

Reporter: Patent system failed heart valve inventor

One of the biggest obstacle to inventors today may the system created to protect them. Research cardiologist Tory Norred thinks so.  

In a recent post on IP Watchdog, excerpted below, I summarize how investigative reporter Scott Eden skewers the U.S. patent system in the July-August Popular Mechanics article, “How the U.S. Patent System Got So Screwed Up.”

Eden, an award-winning reporter, whose credits include the Wall Street Journal, ESPN and TheStreet, examines the devastating impact of recent changes to the patent system by focusing on an inventor who got caught up in it.

The NPR-style article tells the story of Tory Norred, a fellow in the cardiology program at the University of Missouri cardiologist, who in 1998, came up with the idea for a collapsible prosthetic aortic valve that could be fished up through an artery with a catheter, and implanted in the hearts of patients who suffered from failing aortic valves. Unlike previous valves, Norred’s stent disperses the force needed to hold it in place against the aorta’s walls, requiring no sutures.

gallery-1466458424-pmx07116-patentoffice15In November 2002 he received U.S. Patent No. 6,482,228, “Percutaneous Aortic Valve Replacement.” Norred knew that he was onto something important, but that was not the beginning of success, it was the start of a nightmare that led to repeated frustration.

“That’s my valve!”

Norred spent the next four years talking to venture capitalists, medical products companies and even a Stanford University consultant, in an effort to finance his invention. Despite many quality meetings, no one was interested in providing capital or product development – including the product-development people he signed non-disclosure agreements with at Medtronic, Edwards Lifesciences, Johnson & Johnson, and Guidant.

“By September 2003,” writes Eden, “Norred had all but given up on his dream when he and a colleague were strolling the exhibition hall at an important cardiology congress held annually in Washington, D.C. They came upon a booth occupied by a California startup called CoreValve. With increasing alarm, Norred studied the materials at the booth. He turned to his colleague: ‘That’s my valve!'”

The rest of the story is not unfamiliar: CoreVale basically ignored him, and Norred settled into private practice. Then, in 2009, Norred saw the news online: CoreValve had sold itself to Medtronic for $775 million in cash and future payments.

In fact, collapsible prosthetic valves fished up through an artery with a catheter and implanted in the aorta are well on their way to becoming the standard method of replacing worn-out heart valves. Thee annual market has already surpassed $1.5 billion and is expected to grow.

Immediate Suspicion

The remainder of “How the U.S. Patent System Got So Screwed Up,” is devoted to the slow decline of the patents system over the past decade, and how a handful of patent “trolls” have been used as the reason to systematically dismantle much of the patent system. The same system that was the envy of the free-world and spawned many breakthrough inventions, as well as successful businesses that employ millions.

“Norred wasn’t a troll,” continues the article, “and the decision to sue did not come easily for him. His lawyer told him that the cost to litigate could exceed half a million dollars. Norred did not have half a million dollars. He considered letting it drop and moving on with his life, but in the end he couldn’t. ‘It’s gallery-1466458804-pmx07116-patentoffice17hard to give up on something you’ve worked so hard on,’ he said.”

“Whenever an independent inventor sues for infringement today, an immediate suspicion attaches to the case,” states Eden. “The anti-patent feeling is such that to assert one is to become stigmatized as a troll or, worse, a con artist or a quack. But there’s another way to look at these litigants. It could be that an inventor-plaintiff is a modern-day Bob Kearns, the Michigan engineer who spent decades fighting the global automobile manufacturing industry over the intermittent windshield wiper. They made a movie about it called Flash of Genius.

Greater Uncertainty

Inter partes reviews (IPRs) were supposed to clear up much of the uncertainty surrounding patents that are thought to be infringed, by determining which, if any, of their claims are valid in the first place. But IPRs also have had an unfortunate side effect. IPR tribunals make it easier for sophisticated defendants to kill patents held by legitimate inventors.

“The IPR isn’t an effort to figure out whether an inventor invented something,” says Ron Epstein, the former Intel attorney. “It has turned into a process where you use every i-dot and t-cross in the law to try to blow up patents… There isn’t a patent that doesn’t have some potential area of ambiguity.”

Go here to read, “How the U.S. Patent System Got So Screwed Up.”

___________ 

Popular Mechanics was first published in 1902. It is known as the monthly bible of the independent inventor. 

In 2011, two of Scott Eden’s pieces received “Best in Business” awards from the Society of American Business Editors and Writers (one for investigative reporting and one for feature writing). Eden is former staff reporter for TheStreet and Dow Jones Newswires.

Image source: popularmechanics.com

%d bloggers like this: