Interview Finale: Manny Schecter, IBM Chief Patent Counsel

Manny W. Schecter, Chief Patent Counsel, IBM Corporation

On April 4, 2011, I interviewed Manny Schecter, the Chief Patent Counsel for IBM Corporation.  In part 1 of the interview we discussed patent reform, what affect prior user rights might have on IBM’s patenting decisions, working for David Kappos (who is an IBM veteran), the Supreme Court in general and the Microsoft v. i4i case in particular. We also talked a little about patent office reforms, and that is where we pick up part 2 of the interview, which is the final segment. More specifically, we talked about Peer to Patent, Watson on Jeopardy, where the Supreme Court is heading with patent law, the usual fun questions to get to know Schecter on a personal level and more.  As we moved into the “fun stuff” you will learn that one famous IBM invention was tested out in the early stages by the inventors on a Thanksgiving turkey one year, proving that innovation never takes a holiday!  We also learn that Schecter is something of a James Bond fan, and selected one recent Academy Award winning film as his favorite movie.

Without further ado, the final installment of my interview with Manny Schecter.

QUINN: Do you have any thoughts about who’s that going to be most attractive to? Because I think it’s in the right situation very attractive. But I hear people complain about the money, and if the patent reform does go through they would be able to offer the discounts for the small entity and then they’d be able to offer 25 cents on the dollar for the micro entities as well.

SCHECTER: I haven’t thought that much about the fee situation. But it would seem to be of most value where one’s need for the patent is most urgent, right? So if one was already aware of an infringement somehow, or thought it was coming, or had short product cycles in one’s particular industry, I could see where maybe that would make one more inclined to use it. But what’s not clear to me is exactly what volume of use it will end up getting.

QUINN: Yes, I agree. And with some of the other initiatives I think they thought they were going to have some great uptake on, like some of the green acceleration initiatives and then the project exchange. There hasn’t really been a lot of interest, or at least not nearly the interest that they thought there was going to be. So it’ll be interesting to see what interest that they do get in that. But I personally don’t see anything wrong with the patent office having more avenues for you to self direct.

SCHECTER: Well, as somebody that has to manage a very large pipeline of patent applications, tools from the PTO that help us do a better job of managing it are certainly appreciated. Whether this particular one will turn out to be one that we get great use out of in IBM because of the expense, that’s another matter. But the concept of tools to help companies or individual inventors or whoever better manage their pipeline, I think that’s a great thing.

QUINN: Well, let me ask you about Peer-to-Patent, because I know you’re involved in that. I don’t exactly know how much you are involved in that, but that also seems like a particularly exciting avenue as well. At least the way it seems to be being handled. I had questions about it initially, but it seems to be turning into something that could be quite useful.

SCHECTER: Yeah, I am very involved in Peer-to-Patent. I serve on the steering committee and I was involved at the earliest stages of helping to get the project going. It is going rather well. I think at times people have lost sight of the project because it has drifted in and out of public awareness or public consciousness, at least in the patent world. But the project ran a series of early pilots in four different countries including the U.S., which was the first pilot, but also including Australia, Japan, and Korea. And each and every one of those pilots reached the same conclusion which is confirmation that the public has the ability, given the tools to access prior art and collaborate, to find prior art that can be helpful to patent examiners in performing patent examination. And so now what’s happened is we’ve moved to a second stage of pilots, in which the U.S. is again on the leading edge, but some other countries are on the verge of following. And in which some small adjustments have been made to the parameters of the system to see if it can be improved. And in which we’ve changed the focus from validating the concept to testing scalability.

Along the way I should point out, Gene, one other thing, which is we had a particularly successful rate of citation of non patent prior art in the United States during the pilot. And that’s I think really significant. For one, many of us have long wondered why patent examiners don’t more frequently cite non patent prior art. And here we actually received an acknowledgement by the USPTO that the rate of relevant non patent prior art citation by the public was significantly higher than that of their own examiners. Meaning that maybe the USPTO itself needs to question whether they can do a better job of finding non patent prior art when they do their own searching.

QUINN: I think that that’s a good point. And one of the things, and it’s been a while since I’ve actually looked at the numbers, but one of the things that when I first saw the pilot I thought to myself, you know, there’s only, not an overwhelming percentage of cases had the examiner find that the prior art was useful. I think in a poll of the examiners they found, I’m going to throw it out there and this may not be right, but there was something like maybe 35-40% found that the prior art that came in was useful. And then another subset of that was the prior art that they thought was so good that they actually used it to create a rejection. And initially I thought that, well, you know, I would have expected it to be higher and maybe this is just too much for not enough benefit. But then the more I think about it now reflecting on it, is it seems to me that if that’s the case that maybe the patent examiners and the patent office are in a lot of ways doing a much better job than we or the courts give them credit for. And maybe a simple tweak like focusing on non patent prior art is really all that it takes. What are your thoughts on that?

SCHECTER: First, let me just say, I do give the examiners credit. They have an incredibly difficult job finding prior art. And that’s not an easy task given that prior art can come from anywhere in the world. And we know that examiners actually do get it right most of the time. Unfortunately, we all tend to focus on the situations that present themselves to us where they don’t. And so sometimes we lose that perspective. So we’ve tried to maintain that perspective throughout. That said, of course we’d like to see them be as accurate as possible. We’d like to see examination be as robust and thorough and correct as it possibly can be. And so when you consider that an examiner finds strong prior art in some percentage of cases already, a rather high percentage I might add, you wouldn’t necessarily then expect the public to find better prior art than the examiner on a routine basis. On the other hand, seeing the public find prior art that patent examiners do in fact cite in rejecting 20 or 30% of those cases, I think that’s actually pretty significant. If the examiner’s already rejecting 60- 70- 80%, I don’t know what the numbers are already, well, another 20 or 30% actually sounds pretty good to me.

QUINN: I know, I agree. And some of my thinking has changed and morphed over the years. For example, when I interviewed Gary Michelson, who was the inventor that ultimately sold his portfolio out to Medtronic, and he told me, and he always tells me every time I talk to him: “why would I ever want an invalid claim?” He says, “I want the broadest valid claim I can possibly get.” And he is extremely successful and has over 900 patents world wide. And I think that really when you stop and think about it is what’s going on with Peer-to-Patent, to some extent, and Article One Partners who is in this space as well, is using crowd sourcing capabilities to see if we can supplement what the true professionals at the office are already doing.

SCHECTER: That’s exactly right. The fact is that the patents that exist that aren’t valid simply needlessly threaten the public and cause a diversion of resources away from innovating and instead into what really is a needless defense against a patent – designing around it or defending in litigation or what have you. We don’t want invalid patents in IBM, we want valid patents, we want strong patents. And so the fact of the matter is by getting rid of the weak ones, by helping ensure that the weak ones don’t issue, the ones that do issue in theory ought to be stronger, right? And the integrity of the system overall ought to improve. We as members of the patent community want a system that people are proud of, that people look at and realize that it does a good job of protecting innovation, not protecting faux innovation, so to speak, right?

QUINN: I can hear you’re very passionate about this. How did you get involved with Peer-to-Patent?

SCHECTER: Oh, wow. That’s probably a longer story than you have time for interview. But it so happens that within IBM we had some discussions about this kind of a thing during some brainstorming. And then Professor Noveck of New York Law School appeared in the press and she seemed to be having similar thoughts. And we got together and compared notes and found that we had a lot of common ground and in some conversations with the USPTO convinced them that there was something worth looking at here.

QUINN: That’s good, that’s good. Now, I know our time is not limitless, and there’s a couple more things I’d really like to get to. Not that I wouldn’t want to talk about Peer-to-Patent more, but I see you guys are getting into the blogosphere. Are you trying to cut into my business end here? What’s the story with IBM and their IP blog?

SCHECTER: Well, the IP blog activity for IBM is not likely to be as frequent as on your blog. We launched our blog last fall and it goes back to something you asked me about earlier, which is that because we’re the leading U.S. patentee and because many parties know that we generate a considerable amount of intellectual property income, we frequently get asked for positions on various IP matters, particularly matters of IP policy. And in many cases we don’t mind responding or discussing. But it’s just impossible sometimes to respond to everyone. A number of people will ask us the same question. And so it began to occur to us that a blog, even if it’s not with daily entries such as with your blog, would be an opportunity for us to reach out to a bit broader of a constituency and ensure that we convey the same message to everybody.

QUINN: And that also seems sort of in keeping with what has always been the IBM philosophy on the science end, which is publish, to get information out to people and to partake in the debate. Whether it’s law or whether it’s science. Do you think that’s fair to say as well?

SCHECTER: You’re right, we do publish quite a lot. Both for scientific reasons and as part of a defensive publication program within our intellectual property strategy.

QUINN: Okay. Now, I can’t let an interview with you go by without bringing up Watson and Jeopardy. Pretty amazing stuff you got going on there. And I was just reading just this weekend in the latest Scientific American there was a little article about Watson and all of the things that, I’ll say “he” I don’t know what to call him, but he could be doing, you know, maybe helping for medical diagnosis and really just mining vast arrays of information. This has got to be an exciting time for you all there?

SCHECTER: It’s very exciting. Obviously, the Jeopardy match itself was exciting for us. We really didn’t know—I really didn’t know the outcome of the match when it was filmed. I learned about the results when you did – watching it on TV. I know some people have called it kind of a watershed moment in the advancement of computing or man versus machine kind of a thing. I guess only time will tell with that. But you are correct that we’ve had a tremendous outpouring of interest in our analytics capability by customers and potential customers and partners who have not taken long to realize that the ability of Watson is tremendous.

QUINN: Now, not to geek out too awful much, but you know I suppose on some level all of us in this space are science fiction fans, you know, what bigger writer than Isaac Asimov. Has there been any kind of attempt that you know of to talk about some of these ethical issues inside in the way that in his I Robot series they had the laws of robots, so forth. Because I suspect that there are people not only perceiving what it could do for the good, but people wondering oh, my goodness, is this the beginning of the end.

SCHECTER: I’m sure there are some people that have raised those issues. But they’ve not raised them specifically with me.

QUINN: Now, are you guys going out and trying to protect and patent, file patent applications on Watson per se, or on some of the various unique features? Because I supposed there’s just a ton of things that could be patented there.

SCHECTER: Yes. Well, of course, I’m not at liberty to talk about patent applications that we have pending that haven’t published and that kind of thing. But I think it’s safe to say that it’s new technology. We file a lot of patent applications, so generally one would expect, of course, that we would have filed patent applications relating to Watson, and we did.

QUINN: Okay. That’s fair enough. Because I figured as much and I didn’t really expect you to talk about it anymore than that. What an amazing invention. How does that sort of groundbreaking thing happen at IBM? Because I suppose that that had to start a number of years ago just almost like in a dream or in a brainstorming imagination kind of scenario. And there’s got to be a ton of time and money between that moment and when you’re going to make money commercially out of the product. So how does IBM get involved in that type of product or project?

SCHECTER: Well, I don’t know how long ago planning for the Watson Jeopardy match began. But I think the thing that is a bit unique here is the retained focus we have on longer term, more fundamental research in IBM. It certainly can’t be the bulk of our focus. We have to earn a profit and pay our bills. But the fact is we’re the only true corporate research organization, at least in our industry. And we retain a small amount of long term projects that have less certain return on investment. And Watson is one such project where at the time that we began the project, the return that we would receive wasn’t at all clear. We weren’t designing a product for a customer or a solution for a customer, we were trying to take on a sort of a grand challenge and move computing to another level. And fortunately for us this one worked quite well. And we are now seeing that there will be some return on investment and we’re very pleased by that.

QUINN: But I just wonder, and maybe it’s just as simple as just being committed to science and moving innovation forward, but I just wonder over such a long period of time how IBM has been able to maintain that focus. And through particularly this last downturn was pretty hard. And the companies so frequently the first place they cut is research and development. I mean, what is IBM’s secret or philosophy or pearl of wisdom, whatever you want to call it?

SCHECTER: We have a maniacal focus on innovation. Our focus on innovation has never gone away. So, yeah, obviously we have to deal with the downturns in the economy and whatever difficulties those bring, but when our customers told us innovation is what’s critical to them, when our surveys of others told us innovation is what’s critical to them, we knew we had to maintain that focus throughout the entire downturn.

QUINN: Well, good for you guys. Now, I don’t know whether you’d be interested or not, but a lot of times when I do interviews with folks, at the end I try and mimic a bit of what James Lipton from Inside the Actor’s Studio might do with the celebrities he interviews and ask them some questions to find out a little bit more about you as a person. Are you game for that?

SCHECTER: I’ll take a shot at it.

QUINN: Okay. They’re pretty softball, easy questions, really. Favorite pastime or hobby?

SCHECTER: Well, you know, I used to play soccer. And I had an objective to be able to play effectively until a certain age. And I’m sorry to say that I’ve met that age. And so the last few years I’ve not been playing. I say since then my favorite pastime, if this counts as one, would be spending time with my family.

QUINN: Oh, yeah, that’s always a good answer. Favorite sport?

SCHECTER: Well, I just mentioned soccer. If I were playing it would be soccer. If I’m watching, I’m a big sports fan and I enjoy watching almost any sport. I particularly like baseball and football and hockey, you name it.

QUINN: Okay. How about your favorite movie?

SCHECTER: I can’t honestly tell you I have a favorite movie. When you consider the, you know, hundreds or thousands or whatever of movies one sees in a lifetime, that’s a pretty tough one. I’ll tell you that the favorite movie I’ve seen recently is The King’s Speech. I really enjoyed that.

QUINN: Okay. How about who would you most like to meet? And the theme is famous American inventors. Benjamin Franklin, Thomas Edison, or the Wright Brothers. Or you could go off the board.

SCHECTER: Maybe I can retool the question a little bit?

QUINN: Sure.

SCHECTER: I don’t know which of the inventors I would most like to meet, but what I would most like to see is, I’d like to have been around for not only the ah-ha moment that they had, but to see the skepticism that some of them must have faced from the public or from parties when they went to commercialize their invention. Most inventions that are made today we’ve gotten science to the point where when an inventor comes in and says, oh, I’ve got this idea for X, Y, and Z, we relatively quickly can come to grips with the possibility that the inventor actually made such an invention. But I can imagine when someone was trying to say, yeah, I invented this thing that glows and creates light, or something that can fly that the amount of skepticism that was present must have been tremendous. And so rather than pick a particular inventor, what I would really like to have been able to do would have been to see that process playing out in real time.

QUINN: That’s a great answer. That’s why I ask these questions, because they frequently seem to provoke great insights. Now, how about the coolest invention of all time? And feel free to name one from IBM if you like.

SCHECTER: Oh, wow. The coolest invention of all time. I honestly don’t know.

QUINN: To give you some time to think about it, Judge Rich, apparently, when asked this question was fond of saying disposable diapers.

SCHECTER: Well, you know, there are an awful lot of parents who thank their lucky stars for disposable diapers. And I guess I was one of them when my son was born. But I guess the way I’d answer your question, I don’t know what the invention is that I think is coolest, but the invention in IBM that maybe we talk about the most because it’s an invention that’s very well known but at the same time is one which people don’t usually associate with IBM since we’re an information technology company, is the laser ablation eye surgery for which three of our inventors were inducted into the National Inventors Hall of Fame a few years back.

QUINN: Yeah, that’s a good answer, too.

SCHECTER: That grew out of their work on trying to deal with shaping materials for the semiconductor industry and some experimentation they did one year on their Thanksgiving turkey.

QUINN: Really, no kidding?

SCHECTER: Absolutely.

QUINN: You never know where innovation is gonna strike. How about the best fictional inventor of all time? And I’ve got some choices for you. Emmett Brown from Back to the Future. Q from James Bond. Tony Stark from Iron Man. The Professor from Gilligan’s Island. Or MacGyver?

SCHECTER: Wow. Well—

QUINN: And you can go off the board here, too, if you have a different one that I didn’t name.

SCHECTER: I’ll stay on the board with this one and go with Q. And the reason being that not only was I a fan of James Bond growing up, but I once had an inventor who had a lab that after seeing his lab for the first time I analogized to some of my colleagues that his lab reminded me of Q. Not that they were developing weapons, because they weren’t. But the very impressive number of gizmos in the lab when one walked through it was startling. And I remember thinking the only place I could picture that was when Q shows James Bond all of his trickery early on in each of the James Bond movies.

QUINN: All right. How about favorite science fiction visionary? Jules Verne, Gene Roddenberry, George Lucas, Isaac Asimov, or H. G. Wells?

SCHECTER: Oh, gosh, I enjoy science fiction, but I’m not a huge science fiction fan. I don’t make a particular point of reading a lot of science fiction. I can pick any of those. They’re all wonderful.

QUINN: Yeah, I’ve almost stopped asking this question because overwhelmingly people pick Jules Verne. And that’s who I think I would pick as well. But they all just have contributed in very, very different ways. Are you a Star Trek or Star Wars fan?

SCHECTER: Well, I’ve seen Star Trek and I’ve seen, certainly seen some of the Star Wars movies, I’m not sure if I’ve seen every single one. I enjoyed them both.

QUINN: Okay.

SCHECTER: I don’t consider myself a trekkie or Star Wars groupie, though.

QUINN: Okay. But if I had to force you to pick one, Star Trek or Star Wars?

SCHECTER: Well, there’s probably nothing like the old original classic, so probably Star Trek.

QUINN: And then I think I know what the final answer will be. Captain Kirk or Captain Piccard?

SCHECTER: Captain Kirk.

QUINN: Okay. And that brings us to an end. I really appreciate you taking the time to talk to me about patent stuff and also to play along and have some fun with some of these interesting questions as well.

SCHECTER: No problem at all, Gene, I was happy to do it.