Not a lot closer to understanding when software is patent eligible

“There should be no serious question that computer-implemented inventions such as software constitute patent-eligible subject matter under § 101,” Paul Clement wrote in a brief filed on behalf of IBM to the Supreme Court in 2014. Ultimately, the IBM brief would argue that the abstract idea doctrine is unworkable, which it is. Sadly, nearly 30 months after the Supreme Court’s landmark decision in Alice v. CLS Bank we are not a lot closer to having a working understanding about when and under what circumstances software is patent eligible.

Yes, the Federal Circuit has started to issue rulings that give hope, but they also then issue non-precedential rulings that seem to just string together buzzwords too. They also continue to allow the invalidation of patent claims without a claim construction, which is antithetical to pretty much the whole of patent law. See No claim construction, CAFC rules claims ineligible.

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11.29.16 | Patent Issues | Gene Quinn

Maintaining low-quality patents isn’t a winning strategy

Getting whatever you can sneak by a patent examiner probably never was a wise strategy, but it is true that there was a time in the industry when patents were viewed as a numbers game. Once upon a time, the patent business viewed patent acquisition, whether by organic growth or outside purchase, as aking to a corporate version of global thermonuclear war. If you want to succeed, the thinking went, you needed to have more warheads (i.e., patents) than your enemies. At times, the quality of those patent assets were considered at best secondary, if not completely irrelevant.

While the size of a patent portfolio isn’t completely irrelevant, it is worse than useless to have a portfolio full of low-quality patents. Not only is there a growing cost associated with obtaining patents in the first place, but there is also a growing cost of keeping patents alive. The seldom told story in the popular press is that many patents do not enjoy the full patent term because there are three separate and increasing maintenance fee payments that must be made to keep the patent alive for its full term. Specifically, maintenance fees are due at 3.5, 7.5 and 11.5 years after a patent has issued. For a large entity, these fees are $1,600 for the first maintenance fee payment, $3,600 for the second, and $7,400 for the third.

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Federal Circuit hands pop stars defeat on attorneys’ fees

positionable-imagingThe United States Court of Appeals for the Federal Circuit recently issued a non-precedential decision in a patent infringement action involving Justin Timberlake and Britney Spears and their production companies. The Federal Circuit’s decision vacated an earlier award of attorneys’ fees to Timberlake, Spears and the other defendants based on a finding that the case was exceptional within the meaning of 35 U.S.C. 285. 

The original action in this patent infringement litigation was filed by Large Audience Display Systems (LADS), who alleged that Timberlake, Spears and their production companies infringed upon U.S. Patent No. 6,669,346, titled Large-Audience, Positionable Imaging and Display System for Exhibiting Panoramic Imagery, and Multimedia Content Featuring a Circularity of Action. This patent protects a panoramic imaging and display system in which an array of speakers is positioned around a perimeter of the system’s screen to provide audible sound which pans in such a way that can be synchronized with the movement of objects on the screen. Read the rest of this entry »

Efficient infringers should have to pay

During a recent webinar on the current state of patent valuation, Ashley Keller, co-founder and Managing Director of Gerchen Keller, and I discussed the phenomenon of efficient infringement.

Efficient infringement, which can be a rather cold-hearted business calculation, is when a decision is made to infringe regardless (or in spite of) the presence of patents and whether the underlying activity will constitute patent infringement. Rather than seek out or take an offered patent license, it is determined that it would be better, cheaper and certainly more expedient to simply infringe.

To my surprise, Keller did not really have a problem with efficient infringement. Rather, Keller’s issue is more nuanced. Efficient infringement is an acceptable business decision but those that choose to efficiently infringe should be required to pay for infringement when caught, which is where the system is breaking down presently.

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USPTO instructs examiners on patent eligibility cases

The United States Patent and Trademark Office recently issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to patent examiners provides discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.

The PTO acknowledges in the memo that the Federal Circuit even more recently issued another precedential decision in Amdocs (Israel) Ltd. v. Openet Telecom, which will be discussed in forthcoming subject matter eligibility guidance. For more on that case, please see Software eligible because it recites technical solution to technical problem.

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11.22.16 | patent eligibility, USPTO | Gene Quinn

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