Posts in Guest Contributors

Nike saw the largest increase in grants of any company. The Oregon company secured 159 more design patents than in 2012, and jumped from 10th to 3rd. Accompanying the resurgence of the U.S. automotive industry, Ford improved its standing among top design patent recipients by more than any other company. The company – ranked 36th previously – secured 10th position in this year’s ranking. The top ten list is completed by other consumer product mega-corporations including Apple, LG, Procter & Gamble, Panasonic, Research in Motion (RIM), and 3M. In 2013, seven companies held onto their top ten status. This change awarded Panasonic, 3M, and Ford the opportunity to break into the top 10, meanwhile, Toyota, Philips and FIH, a subsidiary of Foxconn, fell to 12th, 14th, and 25th respectively.

Certainly, Gen. Alexander can seek to leverage his NSA experience and expertise in developing a lucrative post-government career, however, the filing of the patent applications so soon after leaving government service and their cybersecurity subject raises serious questions about who actually owns these inventions and whether Gen. Alexander is seeking to profit from inventions that actually belong to the government. In interviews, Gen. Alexander has asserted that he discussed the ownership of these patent applications with lawyers at the NSA and has been assured that his inventions are not related to any work he did for the NSA, and, consequently, the inventions belong to him and not to the government. That NSA lawyers have purportedly concluded that his inventions are unrelated to his work is cold comfort in this era of Edward Snowden revelations.

Very few would argue that broader scope is easier in Asia than in the US. Not surprisingly, this is because the laws and practice are different. The US law entitles an inventor to a patent unless the USPTO carries the burden of showing that the claims lack novelty, are obvious, or lack utility… But no patent laws in Asia are so strongly on the side of the inventor as compared to the US. So oftentimes the practice is that the burden of proof is on the inventor/applicant to show that they deserve a patent. Saying it another way, in the US it is your right to get a patent, while in Europe or Asia it is more like a privilege.

From a patent challenger’s perspective, Alice further reinforces the need to evaluate whether an early dispositive motion under § 101 can end the litigation. In crafting such motions, it is important to clearly define the abstract idea and to demonstrate how it is merely well-understood, routine, conventional activity. Additionally, it may be helpful to articulate how the claims do not recite any technological improvement. Another strategy is to petition the PTO to institute a covered business method (CBM) patent review. A CBM proceeding may be preferred as the evidentiary burden is lower compared to district court litigation. Currently, the PTO has taken the position that § 101 is an available basis for challenging claims in a CBM proceeding. However, please note that the availability of §101 is being challenged at the Federal Circuit.

A troubling aspect of the analysis in the Alice opinion is the suggestion that an invention, once patent eligible, can become patent ineligible simply based on the passage of time and public adoption. Dialogue in the oral argument as well as statements in the Court’s opinion suggest this line of reasoning, which arguably originated in Bilski, has become an accepted principal . . . An invention may initially be susceptible to patenting but may later become ineligible for patenting (as opposed to becoming unpatentable due to lack of novelty or obviousness) as it becomes more adopted, ubiquitous, successful or commonplace. Ubiquity, it would seem, is now the touchstone not only for patentability but for patent eligibility too.

Whether innovation benefits the masses or just the elites has major policy ramifications. If the later, shouldn’t government insure a fair division of the economic pie? And is the patent system critical for economic growth or a tool for the powerful to plunder the helpless? — How to create a prosperous economy– and the appropriate role of government– is a pivotal issue of our time… The Wright brothers disdained government funds because of the bureaucratic micromanagement that came with it. Langley blamed his failure on inadequate government funding— still the favored excuse when federal programs flop.

Dave Kappos did more for PTO-academic relations than any other Commissioner or Director in the history of the Office. This is a true statement, but hardly does credit to his real contributions in this area. That’s for the simple reason that very few former leaders of the Patent Office had much if anything to do with academics. The bar was so low in fact that had Dave been merely cordial and refrained from open derision of academics and their research, he might well have set a new standard with only that. He did much more, of course. Director Kappos actively sought out academic researchers. He brought them into formal roles in the PTO.

With the Supreme Court’s most recent foray into the patent-eligibility world in Alice Corp. v. CLS Bank International, we now have a complete and utter disaster as to what data processing claims can (or more unfortunately cannot) survive scrutiny by Our Judicial Mount Olympus under 35 U.S.C. § 101. I once had respect for Justice Thomas’ view on patent law jurisprudence, having considered his substandard opinion in Myriad on the patent-eligibility of certain “isolated” DNA claims to be an “isolated” aberration. But having now read his mind-boggling Opinion for the Court in Alice Corp., I’ve now thrown my previously “cheery” view of Thomas’ understanding of patent law jurisprudence completely into the toilet. I have even less kind words to say about the three Justices that signed onto Justice Sotomayor’s disingenuous concurring opinion that accepts retired Justice Steven’s equally disingenuous suggestion in Bilski that 35 U.S.C. § 273 (in which Congress acknowledged implicitly, if not explicitly the patent-eligibility of “business methods” under 35 U.S.C. § 101) is a mere “red herring.” See Section 273 is NOT a Red Herring: Steven’s Disingenuous Concurrence in Bilski.

There is nothing wrong with academics obtaining research funding from corporate sponsors, and to Professor Tucker’s credit, she fully discloses her funding sources. It is important, however, to fully vet and scrutinize the resulting work product of such sponsored studies. The underlying data and methodology should be independently verified by subject-matter researchers and experts. Yet, no peer review of this paper had been made before Professor Tucker’s “results” were broadcast to the world. Because of the publicity this paper received, it is the purpose of my full paper to fill that void. Indeed, closer scrutiny of this article reveals that it can support none of the claims of the author or sponsors quoted above. This is because the study is fundamentally flawed and is fraught not only with methodology and analytical errors, but with fatal factual errors due to the assumption of false information.

Professor Love has concluded that universities do not earn returns on their investment in patents and at the same time concluded that more than half of all respondents to his survey admitted they do not know anything about what the survey was purporting to study… This paper by Professor Love should never have been presented at a conference at Stanford. It should not be published by any journal, let alone the prestigious Yale Journal of Law & Technology. It is sloppy, careless work like this that produces worthless published papers and incorrect theories and encourages academics to simply reinforce their own beliefs without requiring any form of review, replication, or confirmation.

The Supreme Court’s Alice decision has again left the IP bar without a clear, repeatable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none,” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948). This is perhaps not surprising as Alice is a case more about so-called “business method” patents than software patents! (In fact, three justices in a succinct, 116-word concurring opinion indicated that they would impose a per se ban on patenting business methods!) With respect to software patents, however, we still find ourselves with a myriad of USPTO Section 101 guidelines, flowcharts and presentation slides – the latest of which is a March 4, 2014, 19-pager which may very well get fatter after Alice!