Posts Tagged: "Gene Quinn"

This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result. The problem with that reasoning, however, is that not all of the elements were found within the prior art. In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.

It is still extraordinarily hot throughout most of the United States today. Some relief is on the horizon for tomorrow, at least for the greater Washington, DC and Northern Virginia area, with even more relief next week. After getting up early to go for a long walk with my 5 pound weights in each hand (yes, trying to lose weight) and it was 88 degrees first thing in the morning I knew I had to return to the topic of cool or cold inventions. I know I’m a geek, a nerd and extremely corny! But after the article from yesterday about Cool Wearable Innovations, I couldn’t resist writing an article titled “Cooler Innovation.”

It is fair to say that the eastern half of the United States is experiencing prolonged heat like few can ever remember. With that in mind I thought it might be an interesting time to take a look at some of the innovations that attempts to beat summer heat have lead to over the years. The theme here is wearable coolness. So sit right back in your chair, hopefully in a heavily air conditioned office or home, and get in touch with your inner inventor. These individuals came up with something patentable, and necessity is certainly the mother of innovation. Who knows, perhaps this prolonged heat agony will lead to a who new crop of gadgets associated with keeping one cool and refreshed during the dog days of summer.

The World Intellectual Property Organization (WIPO), in conjunction with INSEAD, released the 2012 Global Innovation Index (GII) on July 3, 2012. The GII model included study of 141 economies, which represent 94.9% of the world’s population and 99.4% of the world’s GDP (measured in US dollars). Once again, for the second year in a row, Switzerland, Sweden and Sinagpore top the list, which measures overall innovation performance. The report ranks countries on the basis of their innovation capabilities and results. The United States ranked 10th.

It seems that at least one major component of the restructuring is being driven by the company’s attempts to move forward with open source, but doing so in such as way that insulates the vast majority of its patent portfolio. Essentially, Qualcomm appears to be creating a corporate shield to make sure that there are not any claims, legitimate or frivolous, that its open source initiatives will come back to take a bite out of their propriety business build on an extensive patent portfolio. If this is indeed what Qualcomm is doing it seems like an exceptionally smart move. Once you open up to open source there can be many strings attached and if you take you allow others to take from you.

It was less than two weeks ago that AOL announced that it completed a $1.056 billion patent transaction with Microsoft Corporation (NASDAQ: MSFT). At the time of the announcement of the Microsoft transaction AOL explained that the company expected to provide additional details to shareholders by the end of June. Earlier today, AOL Inc. (NYSE: AOL) announced that it has commenced a modified Dutch auction tender offer to repurchase shares of its common stock up to an aggregate purchase price of $400 million, making good on its earlier promise to shareholders. Indeed, this announcement is being touted by the company as a first step in returning 100% of the proceeds of its recent patent transaction to its shareholders by the end of calendar 2012.

Last week, on Friday, June 15, 2012, Merck (NYSE: MRK) announced the U.S. District Court for the District of New Jersey (Judge Peter G. Sheridan) ruled against the company on the issue of patent infringement in its suit against Apotex Inc. According to Merck, global sales of Nasonex® in 2010 topped $1.2 billion. See Merck News. A variety of Internet sources place the Nasonex® market share of the inhaled steroid market at 47%. Therefore, this patent loss some 6 years before the Nasonex® patent expires is a big deal.

Just because a company has a patent portfolio and interesting technology does not mean that the portfolio, or the company behind the portfolio, will be able to tap into the “perfect storm” we are seeing in certain high-tech industries. “I’m not seeing how the Konarka situation exemplifies the ‘Perfect Storm Effect’ at the upper end of the current patent market,” Laurie says. “On the demand side, the multi-billion dollar portfolio valuations in the mobile device and social media markets are being driven by huge, and ever expanding, consumer demand, and large gross margins neither of which factors would seem to apply to solar.”

As a result of this announcement today, AOP will help Appsterdam accomplish the organizations mandate of supporting ongoing innovation and business success in the mobile app development community through research projects sent to its global, diverse and highly educated community. The Appsterdam Foundation attorneys and developers will work with AOP to conduct patent research, harnessing the global reach of the AOP community, which has been used by many Fortune 500 companies to locate prior art that can be used against patents asserted against them. While note every search conducted by Article One results in prior art that can be used to invalidate patent claims, many searches have found prior art that is then used in both federal court and at the United States Patent and Trademark Office during reexamination proceedings.

It has come to my attention that earlier today in his e-mail newsletter Hal Wegner has once again attempted to take a cheap shot at yours truly. Yes, I know that truth and accuracy are not the hallmarks of Hal’s newsletter, and normally I do look the other way when I learn of cheap shots by Hal, which are a dime a dozen. When Hal challenges my business and makes blatantly inaccurate statements I do find it necessary to respond.

It is one thing to cut costs, but to borrow a popular political phrase – you want to cut with a scalpel, not a cleaver. Thus, keeping in mind the ultimately end goal at every step will allow you to engage cost cutting strategies without compromising your patent project. Of course, the end goal is to obtain the broadest, strongest patent portfolio; obtaining patents in a variety of jurisdictions where meaningful business opportunities exist.

Despite the reality that history teaches about the high-tech industry, shareholders/investors and the popular press will dive in and report what is being said by the newsmakers. Little is ever done, however, to figure out what all this actually means. Perhaps this is because the very nature of preparing a patent strategy is something that requires both understanding of the patent laws and a healthy understanding of business realities and evolving technologies, and not just business realities or technological advances in the abstract. Rather, in order to truthfully plot a course calculated to succeed company leaders need to be cognizant of the actual business realities facing the company, not the talking points of lobbyists or those who write SEC filings. Furthermore, a comprehensive understanding of the companies own research and development, as well as where the industry is heading, is crucial when attempting to create the patent strategy.

The thing that struck me most from these survey results was the superiority of USPTO searches. I’m sure you have heard the same criticisms and joking that I have. Many, particularly Europeans, love to criticize and even make fun of the searches done by the USPTO. If anything these survey results suggest that the USPTO does a better search than is done in the UKIPO. After all, under UKIPO practice, examiners only cite extra documents if they are more relevant than those already found by the UK search. So when they rely on US references that means they must have been more relevant than what they found. So much for the alleged inferiority of USPTO searches.

Protecting trade secrets is critically important if for no other reason than making sure that the time, money and energy you spend building your business is not wasted. If your employees could simply leave without having any contractual obligations that would prevent them from taking information, stealing employees away and/or soliciting your existing customers then they would be able to set up a business and compete with you for a fraction of what it cost you to do the same. After all, you were the one who spent the time and money for marketing to attract customers in the first place, and you were the one who spent the time and money necessary to train your employees. Without the cost of acquiring new customers and the costs associated with training employees that new business set up by your former employee would compete with you and have only a fraction of the start-up and overhead costs you faced. That can make it difficult for any business to keep the doors open.