Last night at the National Portrait Gallery, which is the modern day site of the Old Patent Office Building, the IPO Educational Foundation awarded Dean Kamen the 40th National Inventor of the Year Award, and recognized Doug Henderson with the 6th Distinguished IP Professional Award. Also honored were the teenagers who won the 3rd IP Video Contest in three separate age categories. In attendance, however, was Senator Kelly Ayotte (R-NH), who is the Junior Senator from Kamen’s home State of New Hampshire, who promised to carefully consider patent reform and pledged to listen to the concerns of innovators.

U.S. Secretary of Commerce Penny Pritzker today announced the appointment of Michelle K. Lee as the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office (USPTO). Lee currently serves as the Director of the USPTO’s Silicon Valley satellite office and will begin her new role at USPTO headquarters in Alexandria, VA, on January 13, 2014.

There are several varieties of a stay. With post grant proceedings we’re talking mostly about discretionary stay. Every district court has inherent right to do this. Judges are generally favorable to granting stays with more being granted than not. “All a judge has to do is get burned once by not granting a stay, going to trial to the end, and then having claims invalidated by the Board and then having to have an appeal,” says John J. Marshall, law professor at Villanova University School of Law, previously Of Counsel at Drinker Biddle. The initial stay before a petition is granted is short. Then after the petition is granted, the district court judges are more likely to grant a stay, because IPR will simplify issues that might be important to the district court judge. That quick timeline is one of the factors that helps you get a stay for concurrent litigation and getting ammunition for use in district court claim construction. In fact, you may find that these factors are so persuasive that if a defendant in district court case files a petition for IPR, and you, as another defendant, can’t join because you are past the one month joinder cutoff, you still may be asked to stay your case until other defendant’s IPR concludes. As of October 2013, contested stay motions pending IPR petitions have a 68.5 percent grant rate and those pending CBM petitions have an 83 percent grant rate, according to a Finnegan infographic based on the published PTO AIA statistics. Those are really good rates. It’s something to consider even in districts like Delaware or East Texas.

The major beneficiaries are not the patent trolls- but the thousands of single patent owners and small high tech start ups who for the first time ever-are able to monetize the enormous investments in time, money and ingenuity that they have made in their inventions. The fact is- today, small patent owner and small tech start ups have real options to liquidate their intellectual property assets that they didn’t have before Intellectual Ventures and Acacia Research Group entered the market in the mid-2000s. If patent trolls sue big companies- then the owners of these patents were able to liquidate their investments. When the multinationals have to worry about these entities suing them it is good for the owners of the patents.

A goal of nearly every defendant is to lower the total cost of resolution of any legal issue. As counsel for the defendant, you have to weigh the settlement and licensing costs of a patent dispute against the total defense cost and how long it takes to resolve the dispute with certainty. Today, CBM, IPR, and PGR are the lowest possible cost options. Speed is one of the biggest benefits. The statute requires that a PGC proceeding must be completed in 12 months after institution, and in rare cases this extends to 18 months if the PTAB exercises a good cause exception. APJs are motivated to stay on deadline.

A brake-down of the major provisions, the Amendments that passed and some key Amendments that failed… On Thursday, December 5, 2013, the United States House of Representatives passed the Innovation Act by a vote of 325-91. Surprisingly, the Innovation Act (HR 3309) had only been introduced on October 23, 2013, and was marked-up on November 20, 2013. “This schedule suggests the fix was in,” said Congressman Dana Rohrabacher (R-CA) on December 3, 2013, “The clear message to little inventors: give thanks for your intellectual property rights, because you may not have them by this time next year.”

As the year quickly comes to a close, I recently engaged in some file cleanup. During this cleanup, it struck me that the most common type of agreement – by far – I worked on for my clients in the past year was the Non-Disclosure Agreement (NDA). While NDAs are no doubt considered “routine” or “standard” by practitioners and business clients alike, I suggest that each time you engage in the drafting and negotiating of one in the New Year, you actually question the forms you normally use by considering…

If this is a conspiracy to bring down Gurry it is one that includes a bipartisan group of highly experienced and very well respected Members of Congress. Having become a political watcher of sorts, it seems almost laughable to believe there is a conspiracy at play. The United States Congress cannot agree on anything any more, so when long serving, distinguished Members from both sides of the aisle uniformly agree and seek action and answers from the Obama Administration I take notice. Bipartisanship seems to so rarely happen any more, so when Members of Congress set aside party politics and unite there has to be at least some legitimate reason for careful scrutiny.

The creator of one of the most popular apps for Android mobile devices has agreed to settle Federal Trade Commission charges that the free app, which allows a device to be used as a flashlight, deceived consumers about how their geolocation information would be shared with advertising networks and other third parties. In its complaint, the FTC alleges that Goldenshores’ privacy policy told consumers that any information collected by the Brightest Flashlight app would be used by the company, and listed some categories of information that it might collect. The policy, however, did not mention that the information would also be sent to third parties, such as advertising networks.

Dean Kamen: “I have a lot of concerns [that H.R. 3309] will serve to dramatically increase the barriers – especially for small inventors – to be able to get and protect their intellectual property, which as a consequence will prevent the public from getting access to what should become the next generation of great technology that will deal with all issues – health care, environment and education…If anything this country should be finding ways to strengthen the patent system in the global competitive environment, not make it harder to get and protect intellectual property. We need to add incentives, not add barriers.”

One of the things specifically alleged as demonstrating lack of control over his practice was his antiquated docketing system. Until 2005 Tachner used a “white board” system that was updated monthly and only included three months of data. It only had 3 columns, which were the client docket number, the type of action and the due date. If action were taken a handwritten line entry was placed after the due date. If action was not taken by the due date it would remain not the white board for a few months, but then ultimately removed without any action ever being taken. In 2005, this system was updated to a Word document that did not use tables, but instead included single line strings of data. There was no back-up docketing system, nor was any inventory of files ever done to ensure the integrity of the Word document docket. As you might imagine, this type of “docketing system” created problems.

Crowell & Moring LLP announces Teresa (Terry) Stanek Rea, former acting and deputy director of the USPTO and acting and deputy under secretary of commerce for intellectual property returns as a partner in the firm’s Intellectual Property Group.

We’re going in-depth to explore a patent application that would notify mobile device users of nearby events. These events would be collected from social media applications and filtered based on a user’s interest and proximity to the user, helping that person find interesting events that they were unaware of. Also, a couple of patent applications describe improvements to social networks available through Yahoo!, both on an individual and a group basis. The patent holdings of Yahoo! encompass a wide array of web services, especially those that are related to the website’s search engine. One recently issued patent protects a system of removing spam websites from search engine results, while another discusses a method of improving the accuracy of color-based searches. Collaboration on eBook documents and better notification systems for fantasy sports players are also on focus in a few other issued patents we’re exploring here.

As evidenced by the numbers above, the Board takes as many cases as they reasonably can within the statute. If there’s a good case to be made that a case could be litigated in PTAB, it’s usually accepted. As of last month, the office has instituted 192 trials and denied 32 trials for an overall institution rate of 85.7 percent, according to a statistics report compiled by the PTO. One example of this is Intellectual Venture Management, LLC v. XILINX, Inc., IPR2012-00018, Paper 12 (P.T.A.B. Jan. 24, 2013). Here, XILINX argued that IVM’s petition should be denied, because IVM failed to identify all the real parties in interest as required by 37 C.F.R. § 42.8(b)(1). XILINX pointed to another case in California where IVM was listed with 5 other defendants in a suit that had 63 entities as evidence of IVM’s failure. The Board ruled in IVM’s favor, saying that XINLINX had not given any argument for why the civil local rules of the Northern District of California are analogous to the Board’s rule on real parties in interest or for specifically why any of the 63 entities were real parties of interest.

A source with knowledge close to the situation has also told me that “there will be other shoes to drop; the DNA episode is not the last.” To the outside world Gurry is affable, knowledgeable and a perfect ambassador of the benefits of intellectual property. Internally, however, he hides things and fosters conflict so that he can rise to the moment and come to the rescue. Indeed, aside from the various scandals WIPO appears to be an extremely dysfunctional workplace, which can only hinder the mission.