Posts Tagged: "patents"

Indeed, the bill’s co-sponsor acknowledges and states “[t]his bill combats the problem of patent trolls by moving to a ‘loser pays’ system for software and hardware patent litigation.” However, the bill’s sponsors fail to explain what makes the frequency, risk, or social harm of “egregious” patent lawsuits any different than those of other “egregious” civil suits in America so as to single out patent right enforcement for a special treatment under civil law. In fact, the following graph shows that in the last four decades the number of patent lawsuits filed per year has risen at slower pace than other IP lawsuits or when compared to all Federal civil suits. Patent lawsuits now constitute a little over 1% of all Federal civil suits – the same fraction as that in the mid 1970’s.

Kodak is continuing discussions with parties interested in acquiring the patents offered for sale through the court approved auction procedure.  These patents relate to the company’s digital imaging patent portfolio. Kodak reiterated yesterday that it has made no decision to sell the portfolio and they may, in consultation with creditors, ultimately decide to retain the portfolio as an alternative source of recovery for creditors.  If this announcement is anything other than posturing to make suitors nervous it would almost certainly signal that Kodak is not getting the high offers they feel the portfolio deserves.

A story of such potential liability is now playing out in Taser International v. Stinger, (Case No. 2:09-cv-289 (D. Nev.)). Taser, the developer of the TASER weapon for use by law enforcement, originally sued Stinger Systems for selling devices that infringed a number of Taser patents. In the course of the action, however, Stinger issued a series of press releases regarding its patent dispute with Taser, among them a press release reporting on a parallel reexamination proceeding. In a second action, Taser accuses Stinger, Stinger’s CEO and Stinger’s attorney of various business torts, all centering on allegations that Stinger, ita CEO and its attorney issued misleading press releases, damaging Taser’s reputation and stock price. According to Taser, one press release issued by Stinger in May 2007, caused its stock price to drop $40,000,000.

In this final installment, Bob Stoll and I discuss the United States Supreme Court. We spend some time talking about the Supreme Court’s recent patent eligible subject matter decisions. We also discuss the problem of bad patent applications contributing to bad law and slower, more inefficient patent prosecution. We also discuss inequitable conduct after Therasense and who might make a good addition to the Federal Circuit. Stoll says the name he keeps hearing is Todd Dickinson.

In part 1 of my interview with Stoll we discussed his adjusting to life in the private sector, the fact that he doesn’t enjoy the billable hour part of private practice (just like every other attorney I know) and we discussed politics a bit, as well as the U.S. economy and innovation policy. Part 2 of my interview, which appears below, picks up where we left off discussing Presidential politics and the buzz that engulfs D.C. every 4 years. We then move on to talk about how innovation drives the U.S. economy and I get his thoughts on why we haven’t seen a great new technology that has spawned an entirely new industry as we have coming out of so many recessions in the past. We then finish part 2 discussing changes to the patent examination process and how to streamline the examination process.

I tried to get Stoll on the record while he was at the USPTO.  I don’t think he dodged me, it just never worked out.  I travel a lot, he travels a lot and when it was convenient for one of us it was never convenient for the other.  In the time I have known Bob we have become friends.  I respect him enormously, his knowledge of all things patent is extraordinarily deep.  I always enjoy getting together with him, it is always a lively conversation.  So I am extremely happy to bring this on the record interview to you. In this conversation we talk life after the USPTO, politics, being on the famed K Street in Washington D.C., the U.S. economy, improvidently granted patents and much more. So without further ado, here is my interview with Bob Stoll.

Just over one week ago Justice Antonin Scalia of the United States Supreme Court was interviewed by Piers Morgan of CNN. See Scalia transcript.  During the interview Justice Scalia said that the hardest decision he has had to make in his time on the Supreme Court was in a patent case. I received a few responses from those who did not opine as to what case Justice Scalia might be referring to, but rather commented generally about the interview and what Justice Scalia said relative to patent cases being difficult, dull and insignificant.  What follows below are those musings from industry insiders.

One week ago, on July 18, 2012, Justice Antonin Scalia of the United States Supreme Court sat down for an interview with Piers Morgan of CNN. See Scalia interview transcript. During the interview Morgan asked Scalia what his hardest decision has been while on the Supreme Court. I thought it might be fun to ask some industry insiders what their guess was as to the unnamed case Justice Scalia was thinking of as the “hardest decision.” Some of those I asked didn’t offer a guess, but rather took the opportunity to discuss the aforementioned Scalia statements more generally. Those “musings” will be published tomorrow.

Perhaps the infringer lobby needs a refresher course on the rights granted to a patent owner. 35 U.S.C. § 271(a) says: “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” (emphasis added). So, as it turns out, importation of products covered by a patent during the term of the patent are an infringement of the patent rights granted. Let’s not forget that at the end of the day what these Silicon Valley elite are arguing is that it should be more difficult for a patent owner to stop infringement. The wrong-doers are NOT the patent owners who have the audacity to exercise rights granted by the federal government. The wrong-doers are those who infringe those rights and there is absolutely no reason to make it easier for them to engage in infringement.

The IP Professional community must find ways to work with Wall Street to help educate and protect the credibility of IP as an emerging asset class, and not allow IP assets to become cannon fodder for deals or the investment “flavor of the month.” The InterDigital-Intel deal can be viewed as call to arms. Wall Street will ultimately choose to enlist or not credible transaction analysis. In most trades there are winners, and sometimes losers. Smart IP bankers will choose to do the homework and not be so quick to determine who, in fact, the beneficial parties are. Given the inefficiencies inherent in the patent marketplace, it is quite possible for a liquidity event like a patent transaction to have multiple winners. Reminding the financial community of this will not be easy.

It almost boggles the mind, but this Federal Register Notice explains that the USPTO is undertaking a study to determine the feasibility of requiring economically significant patents to be kept under lock and key. Yes, pursuant to a request from our brilliant members of Congress the USPTO is going to study whether economically significant patents should be placed under a secrecy order, thereby scuttling any opportunity for the innovation to be patented until such time as it is no longer economically significant.

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.

An assignment indicates who owns an issued patent or pending patent application. They are registered with the USPTO and available for public inspection. There is a special type of assignment called a “security agreement”. A security agreement indicates that a patent owner has used its patents as collateral for a loan. The security agreement says that the lender will get ownership of the patent if the current patent owner defaults on the loan. The security agreement also restricts what the patent owner can do with its patent so that the value of the patent is preserved. A patent owner might be obligated, for example, to pay the maintenance fees for an issued patent. Once the loan is paid off, the security agreement is released. If the loan goes into default, however, the ownership of the patent is transferred to the lender.

The disclosure requirements for these types of patent applications has been a moving target for years, which means that whatever the most stringent disclosure requirements are should become the target regardless of the types of claims you file. To ensure your software patent application has appropriate disclosure of the invention you should accept — even embrace — the requirements for having an appropriate means-plus-function disclosure. By meeting the strict standards set forth in the mean-plus-function algorithm cases you will file more detailed applications that have better disclosure and which will undoubtedly support more claims, thus making the resulting patent or patents more valuable.

The time has now come for Kodak to attempt to shed its non-strategic patents with the sale of roughly 10% of the overall Kodak patent portfolio.  Without an acceptable initial bid already in place Kodak will roll the dice and angle for an auction that would take place in early August 2012, assuming more than one bidder emerges.