INVENTIVE STEP

There has been a great deal of news recently about large patent portfolio acquisitions, such as Google’s $12.5 billion acquisition of Motorola Mobility that includes a portfolio of more than 17,000 patents and patent applications, or Apple, Microsoft, and RIM pooling resources to acquire Nortel’s 6,000 patent portfolio for $4.5 billion.

In a new study with results recently published in the Stanford Technology Law Review, Tom Ewing and Robin Feldman, law professor at the University of California-Hastings, discuss specifically the case of Intellectual Ventures and patent mass aggregators.  Intellectual Ventures has become one of the top 5 owners of U.S. patents.  The authors estimate that their portfolio includes 30,000-60,000 patents worldwide.  Their study recites potential positive and negative effects of such large numbers patents being owned by a single entity.

An Abstract of their article is below.  The complete article is available at:  http://stlr.stanford.edu/category/articles/

The Giants Among Us

Tom Ewing & Robin Feldman

2012 Stanford Technology Law Journal 1

Abstract

The patent world is undergoing a change of seismic proportions. A small number of entities have been quietly amassing vast treasuries of patents. These are not the typical patent trolls that we have come to expect. Rather, these entities have investors such Apple, Google, Microsoft, Sony, the World Bank, and non-profit institutions. The largest and most secretive of these has accumulated a staggering 30,000-60,000 patents.

Investing thousands of hours of research and using publicly available sources, we have pieced together a detailed picture of these giants and their activities. We consider first the potential positive effects, including facilitating appropriate rewards for forgotten inventors, creating a market to connect innovators with those who can manufacture their inventions, and most important, operating as a form of insurance – something akin to an Anti-Troll defense fund.

We turn next to the potential harmful economic effects, including operating as a tax on current production and facilitating horizontal collusion as well as single firm anticompetitive gamesmanship that can raise a rival’s costs. Most important, we note that mass aggregation may not be an activity that society wants to encourage, given that the successful aggregator is likely to be the one that frightens the greatest number of companies in the most terrifying way.

We argue that mass aggregators have created a new market for monetization of patents. It is vast, rapidly growing, and largely unregulated. We conclude with some normative recommendations, including that proper monitoring and regulation will require a shift in the definition of markets as well as a different view of corporations and their agents.

Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition

 The Intellectual Property Section of the Virginia State Bar has a total membership of over 1,400, including both lawyers and members of the judiciary. The Intellectual Property Law Student Writing Competition seeks to promote academic debate and the dissemination of ideas and scholarly writing in the field of intellectual property. The Competition is sponsored by the Intellectual Property Section of the Virginia State Bar.

 Prize

$4,000 cash and publication on the Section’s website.

 Eligibility

The Competition is open to all students enrolled and in good standing during the 2010-11 academic year (including December 2009 graduates) at (i) any Virginia law school, or (ii) a law school outside Virginia as a resident of Virginia (with proof of residency). Articles must have been written solely by the entrant while enrolled in law school.

View the complete rules at http://www.vsb.org/site/sections/intellectualproperty/.  

More information:  flyer and rules.

Here’s a recent podcast that is a debate by Professor John Duffy of George Washington Law School and Professor David Olson of Boston College Law School.  The podcast was sent to me by the moderator, Professor Adam Mossoff of George Mason School of Law.

http://www.fed-soc.org/publications/pubid.1919/pub_detail.asp

My wife, Kristen Osenga, is a law professor at the University of Richmond School of Law.  She writes in the area of patent law and has recently written a paper about a different way to look at claim construction using linguistics.  She concludes that claim construction would be improved if there were more cooperation between the inventor and the Patent Office and provides some suggestions to increase cooperation.  Here is a link to the paper and the abstract:

Conversation is easy. We communicate with other people every day without giving conscious thought as to how we understand the information exchanged in the course of the conversation. Patents, by contrast, are hard. Understanding information conveyed by a patent is difficult, despite deliberate and conscious efforts to shape or improve the process. Scholars have not yet seen the connection between the two concepts. We have not viewed patents as conversation – but perhaps we should. Viewing patents as conversations allows us to tap into a rich body of scholarship from the pragmatics branch of linguistics – the study of language and how we understand it – and turn traditional wisdom about interpretation of patents on its head. Understanding patents can be as easy as having a conversation. What needs to change is not the interpretation process, but rather the conversation itself. The key difference between everyday conversation and patents is the lack of cooperation in patent prosecution, the conversations that give rise to patents. If we can create a greater air of cooperation in the patent acquisition process, then we can rely on linguistics to help understand what is being conveyed. We can make interpretation of patents much more like understanding everyday conversation – easy.

Feel free to leave me any comments you might have or e-mail her.  Also, the paper represents her personal thoughts and opinions and does not represent my views nor those of my clients or my law firm.

Hal Wegner is reporting that District Judge Kathleen McDonald O’Malley is being vetted by the Obama Administration to fill Judge Alvin Schall’s seat on the Federal Circuit.  Judge Schall took senior status in October.  Hal cites to a report in The Reporter, a California legal news source.

Judge O’Malley was appointed to the district court for the Northern District of Ohio by President Clinton in 1994.  Prior to that, she had worked in the Ohio Attorney General’s office and as a litigator at several law firms including Jones Day.

Biographical information on Judge O’Malley is available here.

While Judge O’Malley is not a patent attorney, she does have experience in patent litigation.

Judge O’Malley is a frequent lecturer and panelist on topics involving patent litigation, use of technology in the courtroom, multi-district litigation and mass torts. Among many other programs, Judge O’Malley is a regular faculty member at the Intellectual Property Seminar for Federal Judges co-sponsored by the Federal Judicial Center and the Berkeley Center for Law and Technology, and at ALI/ABA’s annual “Trial of a Patent Case” program. 

Judge O’Malley is a Visiting Distinguished Jurist at Case Law School in Cleveland where she teaches patent litigation.  She is also a member of the University of Maryland Law School’s Intellectual Property Advisory Board.

WIPO has announced that PCT filings were down 4.5% in 2009 compared to 2008.  This comes on the heels of 2008, when PCT filings grew at a much smaller rate than prior years. 

WIPO is the international organization that oversees PCT patent application filings and acts as a clearinghouse for international applications prior to the applications being filed in individual countries.

Although the US remained the top PCT-filing country, US-based PCT applications dropped by 11.4% in 2009.  East Asian countries, by contrast, continued to increase filings.  Japan filed 3.6% more applications, the Republic of Korea filed 2.1% more applications, and China increased its filings by 29.7%.  Most other industrialized countries saw declines, led by Israel (-17.2%), Canada (-11.7%), Sweden (-11.3%), and Germany (-11.2%).

Among the top PCT-filing companies, the US saw a significant increase from Qualcomm, which moved into 5th place.  It was the only US company in the top 10.  Four of the top ten companies were from Japan, and one each from China, Germany, the Netherlands, the US, Sweden, and Korea.

Among industry sectors, computer technology saw the largest decline (-10.6%) in filings, followed by pharmaceuticals (-8.0%), and medical technology (-5.95).  The largest increases were in micro-structural and nano-technology (+10.2%), semiconductors (+10%), and thermal processes and apparatus (+7.2%).

Impact

The reduction in filings is certainly no surprise given the economic situation.  What is concerning is that the US is losing its place of prominence in the global marketplace.  It is certainly not time to panic yet, as the US still files nearly 30% of all PCT applications.  For the first time in 2009, Japan, Korea, and China together filed more PCT applications than those that originated in the US.  If this trend continues, global innovation may be shifting to the Pacific Rim.

It is vital that US lawmakers focus on strong intellectual property rights and incentives for US companies to increase research and innovation.  Otherwise, we will lose our place as the world leader in these areas.  Our economic recovery depends on it.

Virginia State Bar Section on Intellectual Property Law Law Student Writing Competition

 The Intellectual Property Section of the Virginia State Bar has a total membership of over 1,400, including both lawyers and members of the judiciary. The Intellectual Property Law Student Writing Competition (the “Competition”) seeks to promote academic debate and the dissemination of ideas and scholarly writing in the field of intellectual property. The Competition is sponsored by the Intellectual Property Section of the Virginia State Bar.

 Prize

$4,000 cash and publication on the Section’s website.

 Eligibility

The Competition is open to all students enrolled and in good standing during the 2009-10 academic year (including December 2009 graduates) at (i) any Virginia law school, or (ii) a law school outside Virginia as a resident of Virginia (with proof of residency). Articles must have been written solely by the entrant while enrolled in law school.

View the complete rules at http://www.vsb.org/site/sections/intellectualproperty/.  

More information:  flyer and rules.

 The University of Richmond Law School’s Intellectual Property Institute will be hosting its third annual Evil Twins Debate series on Friday, October 9 at noon.

The debate is entitled:  Bilski and Patentable Subject Matter:  Method or Madness?

Professor John Duffy of George Washington Law School will be arguing against the Federal Circuit’s machine-or-transformation test developed in Bilski, while Professor Jay Thomas of Georgetown Law Center will be arguing in support of the test.

Professor Duffy is intimately familiar with Bilski.  In 2008, he argued the case at the Federal Circuit for one of the amici who favors continued patentability of software and business methods and has also written an amicus brief at the Supreme Court. 

Thomas

Duffy

Professor Thomas has long advocated against patenting business methods.