Posts in Guest Contributors

There is a further gulf between those who view In re Alappat as sound logic and engineering (ABL, AIPLA, Alice, Mr. Ronald Benrey, BSA, CCIA, Mr. Dale Cook, Prof. of Computer Science Lee A. Hollaar, IEEE-USA, Microsoft) and those who it as mistaken (Electronic Frontier Foundation, Prof. Robin Feldman, Red Hat) and primarily responsible for an increase in such patents (Electronic Frontier Foundation, Google, “Law, Business and Economics Scholars”). The IEEE-USA provides an excellent analysis of the relationship between software and hardware, pointing out the incontrovertible principle of equivalency, that “special-purpose programming of general-purpose hardware” is “equivalent to special-purpose hardware,” though IEEE-USA fails to mention that this is a fundamental principle of computer science, as established by Alan Turing in the 1930s. To assert, as does the EFF, that the Federal Circuit “concocted” the equivalency of hardware and software goes beyond denying the foundational work of Turing and others. The equivalency of software and hardware is what makes it possible for Java to run on any type of computer using the Java Virtual Machine, as well the electronic design automation industry, which enables complex electronic circuits to be entirely designed in software before being implemented in hardware.

The fractured views of the world begin with the question presented, and reflect how different parties frame the debate in very different terms. Alice’s merits brief presents the question before the Court as “whether claims to computer implemented inventions…are patent-eligible.” Putting the question this way allows Alice to place its inventions and claims in the larger context of all computer-implemented inventions, the subtext being that if the Supreme Court holds that computer-implemented inventions are patent eligible—which is a fair bet—then Alice’s patents should be valid. Further, phrasing it this way allows Alice to distance itself from pure business method claims from the invalid claims in Bilski v. Kappos.

As a result of filing the world’s highest number of patent applications, China is often attacked for trading in quality for quantity. However, Michael Lin of Marks&Clerk explains that a better understanding of the State Intellectual Property Office (SIPO) and the Chinese patent system shows that patent quality is in fact, not declining but increasing.

Opponents of the rule point out that it could lead to unwilling and unnecessary joinder — a point raised particularly by universities and venture capitalists who fear they may be hauled into costly patent litigation against their will if their licensees/startups ever need to enforce their patent rights in court. Still others point to the fact that these joinder provisions would only apply to patent cases — and only against plaintiffs — and would thus create a litigation process unique to patents in district courts. Furthermore, district court judges would lose most of their existing broad discretion to determine whether the facts truly warrant joinder in each unique case.

U.S. patent litigation has followed the centuries-old “American Rule” under which each party to a litigation pays its own legal fees and costs, regardless whether it wins or loses the litigation. A narrow exception exists in patent cases, but only in “exceptional cases” under 35 U.S.C. § 285, such as where the losing party engaged in litigation misconduct, or if the patent was fraudulently procured, or if the losing party raised arguments that were both objectively baseless and made in bad faith. Despite the long tradition of litigants paying their own legal fees and costs, Congress has shown interest in changing the playing field and deviating from the American Rule in patent cases. This comes at a time when the U.S. Supreme Court is already considering two cases that relate to the definition of “exceptional cases” in § 285 that may well alter how this existing exception to the American Rule is applied in practice.

And the game goes on, with sophisticated tactics and subterfuges. Some patent holders obfuscate their patent ownerships behind shell companies, including some large technology companies who find it useful to play the part of the NPE to harass competitors. Others use negotiations as fishing expeditions with the intent to prepare stronger cases in the court room – making escalations go even faster. Complaints are prepared before a first contact is made. Even those who would prefer to negotiate rather than sue are forced to sue to capture the attention of the accused infringer, many of whom simply refuse to discuss licensing or settlement unless they are sued. The IP game becomes a race to the courtroom. There are no obvious winners (except for the attorneys representing the parties) as legal fees keep escalating. Litigation could be avoided in many circumstances, but the IP game fosters a power struggle in which each party assumes the worst from the other and defends itself, at high legal expenses, against imaginary threats. Both sides, the users and owners of patented technologies, are antagonized.

The government is funding basic research at universities, not drug development. Bayh-Dole allows schools to own resulting inventions and license them for commercialization. These discoveries are more like ideas than products. The expense and risk of development falls on the private sector. A study in Nature Biotechnology on drugs commercialized from federally-funded inventions finds: “the private sector spends 100-fold or more to bring the product to market than the PSRI (public-sector research institution) spends in research directly leading to the invention.” Here’s why: for every 10,000 compounds about 250 make it to preclinical testing, 5 go to clinical trials, and one enters the marketplace. Of these just 20% turn a profit– and they must pay for all those which died in the pipeline.

The immediate practical consequences for domain-name registration while the transition proposal is developed are likely to be limited. Nevertheless, while the Department’s current DNS stewardship is not ending in the short term, the contemplated private-sector supervision arrangement is likely to tend to bolster the influence that non-U.S. entities have on domain-name policy questions in the long run. That may please foreign critics of the current system while raising possible concerns about foreign governmental interference in Internet-management issues.

Making a startup into a successful small business venture requires more than an entrepreneurial heart and willpower. It takes a loyal base comprised of engaged, connected customers and clients to help a business go from start up to sustainable.

Whether your annual patent budget is in the tens of thousands of dollars or the tens of millions of dollars, the pressure to do more with less is becoming increasingly essential, even for critical budget items like the development and protection of patents. In addition to the competitive edge that a strong patent portfolio provides, there are many financial benefits to creating efficiencies in a patent budget. Additionally, being able to apply for patents in multiple jurisdictions will help build your patent portfolio, which is attractive to investors. Finally, well-written and well-translated patent applications can help prevent costs associated with office actions, longer time to grant and litigation.

By Martin Goetz, inventor on the first software patent granted by the USPTO: “Much of this negativism is based on the poor job the US patent examiners have done in weeding out those many patent applications where the so-called invention is just one of the almost infinite, but obvious, ways one can automate a manual or semi-automatic process or procedure. But there are also true inventions that use a computer as part, or all, of the implementation of the invention. There is no reason to throw out the baby with the bathwater. So it is of utmost importance that we examine the many falsehoods related to software patents.”

Broadly construing and applying the abstract ideas exception would jeopardize countless patents and patent-fostered innovations that are providing real, tangible benefits to all levels of society, and that are helping to fuel the domestic and global economies. Indeed, it is impossible to overstate the economic importance of software and other computer- implemented inventions. Virtually all industries now use computer-implemented inventions in some way… Notably, and notwithstanding the alarmist complaints of some interested parties that are most dependent upon computer-implemented technologies, high-tech industries are neither stagnating nor suffering from a dearth of innovation. To the contrary, these industries are highly competitive, vibrant fonts of innovation and economic vitality. The availability of patent protection for computer-implemented inventions has been a spur, not a bane, to their growth and development.

This case had been made Special on the Patent Prosecution Highway in October of 2013 because of a favorable Written Opinion from a PCT Searching Authority. For a Special case, USPTO’s case management system normally starts ringing an alarm on the Examiner’s desk after a couple of months. So we should have seen an Office Action at least a month ago, maybe two months ago. But that only works if the case has been assigned to an Examiner. Often the USPTO first assigns the case to a SPE and then it is left to the SPE to figure out which Examiner in the SPE’s art unit should actually examine the case. This case got assigned to the SPE in a particular art unit. Let’s call him “SPE V”. It seems that SPE V decided that this case had been misclassified and should not have gone to his art unit. So he tried to get rid of it.

The view of the USPTO now is that a claim to purified amazonic acid is not patent-eligible because there is no structural difference between the purified acid in the claim and the acid in the leaves, and the claim does not include features that demonstrate that the recited product is markedly different from what exists in nature. … It is, to say the least, unclear why the USPTO, without public consultation seeks to remove the patent-eligibility of isolated or purified natural products of new medical or other utility, which has been taken as a given in the US for 100 years and is consistent with practice in Europe and other major industrialised countries.

While the Lighting Ballast majority upheld the Cybor standard, even Judge Newman, who penned the opinion, seemed to recognize that the decision was on shaky legal footing, relying heavily on stare decisis and the fact that Cybor has been the law for over a decade in sustaining the rule. The majority stated, “the court is not now deciding whether to adopt a de novo standard in 1998. Today we decide whether to cast aside the standard that has been in place for fifteen years.” Opponents of the de novo standard of review in claim construction cases, as set forth in Cybor, might still have another day in court. The Federal Circuit’s ruling could be taken up by the United States Supreme Court next term, especially if the Solicitor General recommends granting the petition for certiorari that is sure to arrive at the Court in the next few months. In a prior case, Retractable Technologies v. Becton, Dickinson, and Co., the Solicitor General recommended to the Supreme Court that “in an appropriate case, this Court’s intervention might be warranted to determine the proper standard of appellate review of district court factual determinations that bear on the interpretation of disputed patent claims.” Here’s a look at the three basic arguments made to the Federal Circuit, and that would likely be made again before the Supreme Court, should it decide to hear the case.