There’s no rule that says smartphones have to be boring rectangular-ish blocks. And Apple’s latest patent application filings show the company may be looking at some new shapes in its future phones.

The company filed two patents (also here) that show a new battery that’s curved and features an irregular shape. Presumably, Apple is experimenting with the look for a future line of iPhones or iPod Touch devices. And this wouldn’t exactly be the first time the concept has been mentioned. Past rumors indicate Apple was interested in producing a curvier iPhone, which you can see above in the design mockup commissioned by Josh Topolsky back in 2011.

As for the patent filings, both describe different processes for creating a battery with a curved cell that would fit snugly into a more shapely, curved device. The battery would essentially be top-heavy to facilitate the non-rectangular, thin device.

Here’s a description from the filing:

“In some embodiments, the curve is formed to facilitate efficient use of space inside a portable electronic device. For example, the curve may be formed at one or more ends of the battery cell to allow the battery cell to occupy a curved and/or rounded space within the enclosure of a laptop computer, tablet computer, mobile phone, personal digital assistant (PDA), digital camera, portable media player, and/or other type of battery-powered electronic device.”

But regardless of Apple’s tinkering, we’re unlikely to see this type of battery implemented for the iPhone 6 (or whatever the company decides to call its next iPhone).

Via AppleInsider

Microsoft announced Tuesday evening that Foxconn has licensed its patents so that it can be free in clear from a legal view when it makes products that run Google’s Android or Chrome operating systems.

Hon Hai Precision Industry, the Taiwan-based parent of the huge contract manufacturer Foxconn, has agreed to pay Microsoft for a license for any product it produces that run the rival software.

Microsoft has said for years that any company making Android phones has to license its patents or face litigation. As of 2011, Microsoft’s campaign was so successful it that was making more money from patent licensing than its own mobile phones.

And now Microsoft said that more than 50 percent of the Android phones in the world come from companies that have agreed to license its patents. These include Samsung, LG, and HTC. The companies didn’t disclose how much money Foxconn will pay Microsoft under the deal. The agreement will cover Foxconn’s smartphones, tablets, and televisions.

Google’s Motorola division, meanwhile, is still fighting Microsoft in court.

“We are pleased that the list of companies benefiting from Microsoft’s Android licensing program now includes the world’s largest contract manufacturer, Hon Hai,” said Horacio Gutierrez, the head of Microsoft’s intellectual property group, in a statement. “By licensing both brand name companies and their contract manufacturers, we have successfully increased the overall effectiveness and global reach of the program.”

“We recognize and respect the importance of international efforts that seek to protect intellectual property,” said Samuel Fu, director of IP at Hon Hai. “The licensing agreement with Microsoft represents those efforts and our continued support of international trade agreements that facilitate implementation of effective patent protection.”

Before Microsoft’s Surface made kickstands (questionably) cool on tablets, Nokia had its own version under development.

A patent revealed recently, entitled “Apparatus Cover with Keybord,” shows images of Nokia’s early tablet design.

We heard last year that Nokia has a Windows RT-based tablet in the works, but it’s tough to tell if this patent is related to it. Last year’s rather flimsy rumor involved a 10-inch Windows 8 tablet running an ARM-based processor.

While we didn’t find the rumor itself too hard to believe, sources in the manufacturing and supply chain said that model was scheduled to hit the market by the end of 2012. Around a year ago, Nokia’s own design chief admitted he was spending a huge amount of time on tablet designs.

But at the end of 2012, while rumors about keyboard covers continued to swirl, no actual product had yet materialized.

However, Nokia hasn’t made any official announcements about putting a kickstand tablet in stores anytime soon.

Nokia is no stranger to mobile and tablet technology, launching one of the first tablets, the Nokia N800, in 2004. (It’s still available on Amazon for those of you interested in tablet dinosaurs).

In March Apple licensed patents from the original Palm smartphone and PalmOS, which the Japanese company Access Co currently holds. The patents include technology also developed by Bell Communications Research and Geoworks.

The sale was worth $10 million, according to an announcement by Access.

AppleInsider notes that Microsoft licensed some of the same patents in 2010 and that this is likely a defensive move to give Apple legal coverage in its ongoing patent battles with Samsung and others.

Palm ushered in the brief but exciting world of personal digital assistants that originally did little more than manage calendars and schedules, and eventually it became one of the early smartphones. HP acquired Palm in 2010 for over a billion dollars, and its software powers the HP TouchPad, which was discontinued 50 days after launching. Palm OS has since been open-sourced and is now HP WebOS.

Access Co. did not provide any detail about which patents were actually bought, other than that they are smartphone-related.

photo credit: Pinot & Dita via photopin cc

Ever scrolled to the bottom of a long page on your iPhone, then watched the page lift up from the bottom of the screen and then bounce back? Apple patented that rubber-banding effect, and it was reportedly one of Steve Jobs’ favorite things about the iPhone, since it adds verisimilitude, making what is virtual act as if it is real.

That specific iPhone behavior was one of the issues in Apple’s billion-dollar courtroom victory over Samsung, seven months ago. Now, that patent is on shaky ground, and so is Apple’s legal win — or at least part of the proceeds of that win.

According to a recent Samsung court filing, Apple patent 7,469,381 patent has been invalidated by the U.S. Patent and Trademark Office in a statement called a “Final Office Action:”

This Final Office Action by the USPTO is relevant because it finally rejects multiple claims of the ‘381 patent …

This final rejection includes claim 19, which is the only claim of the ‘381 patent at issue in this action. The jury found at trial that 21 accused Samsung products infringed claim 19 of the ‘381 patent.

Claim 19, along with 18, comprise the bounce-back portion of this patent — the ability of the iPhone to show a surface “beneath” a document when the end of the document is reached and then bounce the document back over it.

Apple’s original billion-dollar victory, of course, was reduced by Justice Koh a month ago to $450 million. And a new trial is expected to determine the final value of the judgement. With Samsung arguing that one of Apple’s key patents has now been ruled invalid, the amount could go down yet again. Both companies are, of course, posturing, with Apple claiming in late 2012 that the billion dollar settlement was $700 too little. Originally, Apple had requested $2.5 billion in compensation.

According to Samsung, the USPTO rejected the patent on March 29 of this year. Apple is likely to appeal the ruling.

The never-ending trial of the smartphone giants continues …

Image credit: Devindra Hardawar/VentureBeat

Do you believe in coincidences?

The genesis of Microsoft’s patent tracker is the company’s desire to improve the patent system without completely destroying it, a Microsoft lawyer that I spoke to today told me. Three problems the company sees in the current system are knowing who actually owns or controls a patent, litigation abuse by non-practicing entities (lawyerese for patent trolls who don’t actually make anything with the patents they control), and poor patent quality.

The new tracker is designed to fix the first problem, while making patent abuse more difficult. And it’s built around Microsoft’s goal of working within the patent system, while seeking to improve it. As Microsoft’s general counsel Brad Smith said, roughly translated: “Fix what’s broken, not break what’s working.”

The two initiatives show a different approach to patents, at least on the surface, from the two software giants.

Google’s initiative today showcases a kind of patents-are-a-necessary-evil mentality. Google doesn’t want to be left defenseless in a patent nuclear war, so it has loaded up on patents by acquiring Motorola, by buying them from IBM, and by joining a consortium to purchase them from a bankrupt Kodak. But it also wants to be seen as a friend of open systems and open software — after all, Android is built on an open-source foundation — so donating patents to open source is kind of motherhood and apple pie.

But it’s also a pretty easy step: ten patents on fairly obscure data analysis technologies are not going to make many in the patent industry think that Christmas has arrived early.

Microsoft’s initiative showcases a new openness, stripping away the cloak of corporate secrecy, while embracing the existing patent system. The company has gone so far as to provide a downloadable data file of all Microsoft patents: all 40,786 of them as of March 25. The list is massive and extensive, from ZL201020107444.8, a kidney disease detection method which it acquired from Zhongshan Baoyuan Biotechnology Engineering Co., Ltd., to 314229, a media player technology that Microsoft developed internally.

That’s unprecedented, and it would be a major benefit to business and technology executives if all companies did that … or if the U.S. Patent and Trademark Organization made patent information that easily — and transparently — available. While the USPTO makes all patents searchable, it’s not always clear who owns or controls a patent. And that’s a scenario that lends itself to patent trolls, who thrive on the gamesmanship that opacity allows.

It’s a move that Microsoft invites other companies to follow, the company lawyer I spoke to made clear.

The question is: Will companies follow Microsoft’s model or Google’s? Will they start offering patents for free open-source use, or focus on offering greater transparency around the patents they do own? And of course, there are multiple other alternatives, such as eliminating the patent system entirely, revamping it, or determining simple standard licensing terms.

As in many other scenarios, I’m sure that where companies stand will be greatly determined by what they currently own, and how powerful they feel they are currently within the existing situation.

Image credit: John Koetsier

At least, on a whopping ten patents.

Google says it is “committed to promoting innovation” and that therefore, it is “pledging the free use of certain of its patents” used in both software and hardware products. Open systems eventually win, Google says, but open platforms like Android have faced increasing levels of attack via what Google calls “bogus patents” in the hands of Apple, Microsoft, and Oracle. Therefore, to protect innovation and everyone’s ability to deliver great products and services, Google says, it’s announcing the Open Patent Non-Assertion Pledge.

But don’t take that to mean that Apple is now in the clear.

The ten lonely patents Google is starting with are not mobile patents, they aren’t focused on Android, and are therefore not in the most litigious arena of the current era which has seen Apple and Google proxy Samsung pitted in numerous patent infringement cases across the globe: smartphones. Don’t forget that Google-owned Motorola sued Apple with its 17,000-strong patent portfolio just last year in an attempt to ban the import of pretty much Apple’s entire product line: iPhones, iPads, and iPod touches.

Oh, and one more massive caveat? The project or product using Google’s patented technologies must be open source. Good luck with that one, Apple and Microsoft.

Still, it’s a start. And it’s a noble endeavor.

But it’s interesting, even odd, that Google chose to cite the Android-under-attack example, because right now, given the patents that Google has added to the pledge, what this is really about is open source software projects like Linux or Apache. The ten patents Google is pledging are all about data management, data analysis, and data processing. Which means that technologies like Hadoop (an open source technology for processing large amounts of data across multiple distributed servers) which will not now have to worry about stepping on Google’s patented toes when building in new capabilities.

And that’s all good and excellent.

But it’s not going to do anything for Android or to create patent peace between warring competitors like Apple and Samsung, or Apple and Google for that matter. To do that, the pledge would need to be broadened to closed-source products and tailored a little to be more comfortable to for-profit enterprises.

This is at least a start, and Google will add more patents to the pool over time.

But it’s also probably reflective of an internal Google ethos that not only believes that open systems win, but that in a world where open systems increasingly dominate, Google wins.

Here’s Google’s open patent non-assertion pledge:

Google promises to each person or entity that develops, distributes or uses Free or Open Source Software (a “Pledge Recipient”) that Google will not bring a lawsuit or other legal proceeding against a Pledge Recipient for patent infringement under any Pledged Patents based on the Pledge Recipient’s (i) development, manufacture, use, sale, offer for sale, lease, license, exportation, importation or distribution of any Free or Open Source Software, or (ii) internal-only use of Free or Open Software, either as obtained by Pledge Recipient or as modified by Pledge Recipient, in standalone form or combined with hardware or with any other software (“Internal-Only Use”). The preceding Pledge does not apply to any infringement of the Pledged Patents by hardware or by software that is not Free or Open Source Software, or by Free or Open Source Software combined with special purpose hardware or with software that is not Free or Open Source Software (except Internal-Only Use).

It is Google’s intent that the Pledge be legally binding, irrevocable (except as otherwise provided under “Defensive Termination” below) and enforceable against Google and entities controlled by Google, and their successors and assigns. Thus, Google will require any person or entity to whom it sells or transfers any of the Pledged Patents to agree, in writing, to abide by the Pledge and to place a similar requirement on any subsequent transferees to do the same.

The Pledge is not an assurance that any of the Pledged Patents cover any particular software or hardware or are enforceable, that the Pledged Patents are all patents that do or may cover any particular Free or Open Source Software, that any activities covered by the Pledge will not infringe patents or other intellectual property rights of a third party, or that Google will add any other patents to the list of Pledged Patents. Except as expressly stated in the Pledge, no other rights are waived or granted by Google or received by a Pledge Recipient, whether by implication, estoppel, or otherwise.

photo credit: Cre8iveDoodles ~ Has been ill…Back Soon! via photopin cc

July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

Behind every billion dollar product is a billion dollar patent, and we could see lots of those in 2013 from mobile companies.

Roughly a quarter of patents filed in the U.S. this year will be mobile-related, according to a report from analyst Chetan Sharma (PDF). In 2001, that number was just five percent.

While that increase is interesting, it’s not particularly surprising: Mobile patents are, after all, big money. A big part of the reason Google spent $12.5 billion on Motorola last year was because of Motorola’s patents, for example. Elsewhere, companies are going to court left and right over patents.

Source: Google

It might be easier if we just patented money.

As any patent troll can tell you, a good patent can net a company millions of dollars in licensing fees from third parties if it’s positioned right. This is more than just protecting your intellectual property — this is about making gobs of money from it.

But while the increase in mobile patents is a good sign that the mobile industry won’t stop growing anytime soon, the news here isn’t all good. A big question on many minds is how many of the patents filed this year will be poorly conceived, overly broad, or plain dumb. Many lawyers, activists, and even game execs, have argued that the current patent system is broken, which means that it might be bad news if the numbers continue to increase at this rate.

But this isn’t just about mobile. The increase in mobile patents comes as the overall number of patent applications has increased by 61 percent over the past decade, according to the US Patent Office. Clearly our patent system is still alive and well, and for a lot of people, that’s exactly the problem.

To get an idea of which companies are leading the pack in getting mobile patents, check the chart below.

If you’re a 3D printing pioneer with a focus on innovation, patents are probably the last thing on your mind. And that could be your undoing.

While lots of experts have argued that our current patent system is almost irrevocably broken across all industries, it poses a particular problem for young ones like 3D printing. Why? Because 3D printing folk are so busy innovating that they’re not paying enough attention to how existing patents factor into their work.

It’s a big problem, but fortunately organizations like the Electronic Frontier Foundation (EFF) are paying attention to it.”We don’t want the 3D printing industry to become a minefield of patent holders going after tinkerers. That’s a dangerous spot to be in,” EFF attorney Julie Samuels told me.

While overly broad patents aren’t too much of an issue for 3D printing now, it won’t be long until the industry grows to the point where it makes financial sense for patent holders to start suing growing 3D printing companies. (Just consider what’s already happening with the podcasting industry, for example.)

To avoid this fate, the EFF asked a bold, albeit slightly tough question: How do we figure out which patents are the most overreaching and could pose the most trouble down the line?

Answering the question has proved difficult for two reasons: One, the process of going through the patent archives is as slow as it is onerous (just look at the patent office’s website!), and, two, it’s often tough to figure out which patents are worth going after.

This has something to do with chocolate … I think.

To help figure this out, the EFF recently teamed up with AskPatents, a Stack Exchange site for patent applications where lawyers, experts, and enthusiasts can submit evidence against broad patent claims.

Core to this effort is the fairly new “preissuance submissions” process, which allows anyone to refute a patent’s legitimacy by submitting evidence (i.e, “prior art“) proving that the patented idea already exists. So when the EFF submits a questionable patent (as it’s done here and here), it also asks users to do some detective work. How legit are these claims?

“We really wanted to take advantage of the tight relationships and institutional knowledge of the 3D printing community,” Samuels said.

While all of this sounds promising, lots of concerns remain. For one, because the procedure is so new, Samuels says she’s not entirely sure how things are going to work out. In theory, once the EFF submits a valid claim, the patent examiner will then send the patent back to its applicant and ask them to narrow their patent’s focus.

But some of the patents in question are so broad that making them any narrower would render them completely unrecognizable. Consider “Additive Manufacturing System and Method for Printing Customized Chocolate Confections” a patent filed by 3D printer maker Stratasys that describes a system for — you guessed it — printing with chocolate.

As commenters in the AskPatents thread point out, that’s a pretty broad, obvious claim, and there’s tons of prior art that predates (and possibly invalidates) Stratasys’s application.

The other thing to hammer home here is that broad patents are a problem with all industries — not just 3D printing. Samuels and the EFF know this, which is why they intend to use their current project as an example for efforts in other industries.

“We need to raise awareness about the larger problem of improperly-granted patents. People in all industries have to pay attention now,” Samuels said.

July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

LG can’t beat Samsung in smartphones, so it’s turning to something else: patents.

The new Samsung Optimus G Pro.

The Korean electronics maker is going after Samsung over the eye-tracking technology found in their phones, according to Yonyap News. Samsung’s Galaxy S IV offers a feature called Smart Pause, which allows users to pause videos simply by looking away from the screen. That looks conspicuously like the Optimus G Pro’s Smart Video, LG says, which does just about the same thing.

Samsung has denied LG’s claims, arguing that its eye-tracking tech works differently from LG’s own. So no infringement done.

It’s a funny situation for both parties because, while LG says it has the patent to the technology, it’s Samsung that’s made the biggest effort to tell the world about it. (The move is also funny considering the overwhelming similarities between the Galaxy S III and Optimus G Pro, which could easily be confused as something Samsung itself created.)

Samsung, of course, is no stranger to being accused to coping its competitors — and neither is LG. The companies’ are just coming off an extended patent spat over the technologies in their displays. That feud ended relatively peacefully, but it’s clear that neither party has much interest in making a permanent truce.

Photo: Devindra Hardawar/VentureBeat

THX, a speaker and sound technology company founded by Star Wars’ George Lucas, is suing Apple saying the iPhone-maker is using its speaker patents in a number of iPhones, iPads, and other Apple technologies.

THX brought the suit against Apple on March 14, saying specifically that Apple is infringing upon its 2008 speaker patent number 483. This patent refers to THX’s “narrow profile speaker configurations and systems.” The company names the iPhone 4, iPhone 4S, iPhone 5, as well as “iPad and iMac products” that “incorporate narrow-profile speaker units that output sound through a duct or aperture having a narrow dimension.”

The company goes on to say that the illegal use of this patent has caused money and other damages, which THX seeks to repair through monetary relief in “an amount adequate to compensate THX for Apple’s infringement.” It also, of course, wants Apple to admit to its alleged infringement.

As Apple Insider notes, however, Apple does own a number of speaker-related patents as well, one of which includes a patent for “low profile” speakers.

Check out the complaint below:

via Bloomberg; THX speaker image via William Hook/Flickr

The life of the inventor is a rough one. Not only do inventors have to create products that are both compelling and safe, but they have to do so within a patent system that is, at best, inconvenient and, at worst a total bureaucratic nightmare.

Helping them along, however, is inventor-friendly Kickstarter alternative Christie Street, which is launching its own in-house patent filing system to help inventors protect their products both easily and cheaply

“When we launched Christie Street, we wanted to help protect inventors and create credibility. Patents are one area where inventors need help, so this fits nicely with what we’re doing,” Christie Street founder and lead inventor Jamie Siminoff told me.

The timing of the announcement is no accident. The United State’s new First-to-File legislation goes into effect tomorrow. With the new system, if two inventors both file a patent for the same product, the first one to file the patent will be granted the claim — regardless of which of them invented the product first.

The change will have some major effects on the way inventors approach patents. For one, they’re going to have to work a lot faster. “There’s definitely an increased sense of urgency now. It’s going to be a lot easier for other parties to come along and scoop up patent rights from the original inventors,” said patent attorney Frank Bruno, who is working with Christie Street on the new initiative.

Christie Street wants to make devices like the DoorBot easier to patent.

“It’s more important now than ever to file fast and early,” Bruno said.

But that new focus on speed is going to run into a big obstacle  The price of patent applications. Filing a patent can cost inventors anywhere from $5,000 to upwards of $25,000, which is often a deal-breaking amount for a first-time inventor selling her first product.

As a result, inventors have traditionally held off on patenting products until they were sufficiently convinced that was a market for what they were creating. Plus, any funds they raised from that initial interest could be used for filing the eventual patent.

That model, however, flies out the window with the new first-to-file system, which is likely to create big headaches for broke inventors who have good ideas.

“With first-to-file, the lack of big investment off the bat can stop you from doing a product. What we’re doing allows a lower barrier for entry,” Jamie Siminoff said, noting that inventors can expect to spend sufficiently less money through Christie Street’s service.

But Siminoff is also quick to note that, just because an inventor files a patent with Christie Street, that doesn’t mean they have to fund their product through the platform. “We’re not tying the two systems together. If inventors want to work with us on the patent and then crowdfund on other platforms [like Kickstarter], that’s fine,” he said.

For inventors, what Christie Street is doing is both unique and necessary. While Kickstarter has risen as the go-to place for crowdfunding your favorite gadget, the site was never built with physical products in mind. This gives Christie Street a huge chance to draw hopeful inventors away from Kickstarter with a platform that is looking at more than just funding a product, but protecting it as well.

The information contained in this article should not be construed as legal advice.

The third and final wave of provisions of the America Invents Act (AIA) will become effective on March 16, 2013, completing the overhaul of United States patent law that began with enactment of the AIA on September 16, 2011. These provisions will move the United States to a first-to-file system, greatly expand the definition of prior art and usher in the use of post grant review.

First-to-File

Beginning in mid-March, the United States Patent Office (Patent Office) will use a first-to-file system rather than the first-to-invent system that is currently in place. This means inventors will no longer be able to “swear behind” the date that they first conceived of their invention. Rather, priority will be determined by the patent application’s effective filing date — the date the application was filed or the filing date of the earliest application for which the application can claim priority. As a result, once the AIA takes full effect on March 16, 2013, speed to the Patent Office will be paramount, and clients will likely need to file patent applications earlier and may need to file follow-on applications more often than their current procedures require.

One way to avoid the AIA is to claim priority to an application filed before March 16. Non-provisional applications filed on or after March 16 will remain under current law if they claim priority to an application that was filed before March 16 and contain the same material as that prior application. If the non-provisional application filed on or after March 16 includes new material, it will be subject to the AIA and its first-to-file system, expanded prior art provisions and other procedures.

For private venture-backed companies, this will mean that they may need to spend money on patents, the patent process and the development of patent strategies earlier and more often than what is typical in the first-to-invent system.

Expansion of Available Prior Art

Under the AIA, prior art is defined as any invention that was patented, described in a printed publication, in public use or on sale or otherwise available to the public before the effective filing date of the patent application. There are no geographic requirements for prior art, thus, for applications filed on or after March 16, prior art can come from anywhere in the world and be in any language. Even more expansive is the catch-all phrase “otherwise available to the public,” which inserts a great deal of uncertainty as to how it will be interpreted.

There is a very narrow exception for disclosures that are made within one year of the effective filing date by the inventor or an individual who derived his/
her invention from the inventor’s disclosure. However, this exception should not be relied upon due to, for example, the uncertainty surrounding interpretation of “derive” and the difficulty one is likely to encounter when trying to prove derivation.

Post Grant Review

Anyone who has not first initiated a civil action will be able to challenge a patent filed after March 16 through post-grant review. In order for review to be granted, the petitioner must request review within nine months after the patent is granted and demonstrate that it is more likely than not that one of the patent’s claims is unpatentable.

The combination of the expansion of available prior art and post-grant review means that obtaining a patent for an application filed on or after March 16 will likely be much more difficult than under current law. On the other hand, petitioners will be estopped from bringing a civil action or proceeding in the Patent Office on any ground that was raised or reasonably could have been raised during the postgrant review.

Takeaways and Recommendations

• Avoid the expanded prior art provisions and the uncertainty of the new AIA procedures by ensuring that the company’s patent is subject to the current first-to-invent rules.
  • For inventions that have early invention dates, file patents before March 16.

• Prioritize applications that have conception dates prior to September 16, 2012 (the date the first wave of AIA provisions became effective).
  • Consider providing as much detail as possible in any provisional applications that the company intends to file before March 16.
  • Before March 16, file applications that add new material to previously filed applications.
  • For child applications filed on or after March 16, consider filing two applications, with one application containing the most well-supported claims, in order to maximize the company’s ability to maintain pre-March 16 priority.

• Consider revising internal policies and procedures to account for the new prior art provisions.
  • Evaluate the company’s policies regarding prior approval of public disclosures to ensure that the company will not need to rely on the one-year exception. This includes policies regarding publications, conferences, press releases and social media. If the company does not currently have such policies, consider putting them in place.
  • Evaluate the company’s procedures for developing and patenting new technology. Updated timelines may be necessary to enable the company to be the first to file. Consider filing follow-on provisional applications for all important developments in order to secure earlier effective filing dates.

Endnotes

1 35 U.S.C. § 102(a), as amended.
2 35 U.S.C. § 100(i), as amended.
3 35 U.S.C. § 102(a), as amended.
4 35 U.S.C. § 102(b), as amended.
5 35 U.S.C. § 325(a)(1).
6 35 U.S.C. §§ 321(c), 324(a).
7 35 U.S.C. §325(e).

Invention image via VLADGRIN/Shutterstock

Richard G. Frenkel: Rick Frenkel is a litigation partner in the Silicon Valley office of Latham & Watkins. He has experience in every aspect of patent litigation, from initial investigations through trial and appeals. Prior to joining Latham, Mr. Frenkel served as the Director of Intellectual Property for Consumer and Emerging Technologies at Cisco Systems.

Shoney H. Blake: Shoney Blake is an associate in the Silicon Valley office of Latham & Watkins. Ms. Blake received her JD in 2009 from the University of Chicago School of Law. In 2006, she received her BA in International Relations from Stanford University.

A federal jury in New York on Wednesday decided that Nintendo infringed an inventor’s patent on glasses-free 3D displays on the Japanese company’s handheld 3DS game system.

The jury awarded $30.2 million in compensatory damages to Seijiro Tomita, a Japanese inventor who patented a system for producing 3D images on a screen with requiring the user to wear cumbersome 3D glasses.

Last month, Tomita’s attorney Joe Diamante told the jury in U.S. District Court in Manhattan that Nintendo infringed the technology created by Tomita, a former Sony employee. Nintendo’s attorney argued otherwise. Tomita sued Nintendo in 2011.

Nintendo said the patent did not related to 3D games playable on the 3DS. In statement, the company said, “Nintendo is confident that the result will be set aside.  The jury’s verdict will not impact Nintendo’s continued sales in the United States of its highly acclaimed line of video game hardware, software and accessories, including the Nintendo 3DS. Nintendo has a long history of developing innovative products while respecting the intellectual property rights of others.”

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GamesBeat 2013 is our fifth annual conference on disruption in the video game market. You'll get 360-degree perspectives from top gaming executives, developers, and analysts on what’s to come in the industry. Our theme this year is “The Battle Royal.” Check out full event details here, and grab your early-bird tickets here!

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This post was written by Josh Hartwell, the CEO of game company Mobile Deluxe.

We have an incentive system at work in the apps ecosystem. Angry Birds has been downloaded one billion times, and Temple Run more than 150 million. Other developers see the potential for great financial reward with their work, which encourages further development, risk taking, and invention. This benefits not only developers but also smartphone owners and our economy.

Ideally our patent system would be humming alongside this app freight train, rewarding original and unique ideas, conferring exclusivity on the truly novel. Unfortunately, it has been doing the opposite in many cases, creating undue burdens on this vibrant sector due to a few bad actors. Developers have grown fearful of receiving letters from patent trolls seeking nominal license fees for seemingly unrelated patents, written long ago in many cases.

Our system facilitates, even encourages, the two business models of patent trolls. Some trolls seek overly broad patents and pursue large tech companies for hefty paydays. Other trolls seek similarly weak patents, but choose thousands of small tech companies as their quarry, seeking seemingly small “license” payments. With both types the initial math is simple: Convince the target company that fighting in court is hundreds of times more expensive than merely licensing the dubious patent, even if they win.

In 2011, for the first time ever, more information technology patent lawsuits were filed by non-
practicing entities (NPEs) than by practicing entities. I don’t mean to imply that all NPE’s are bad actors. To the contrary, they play a vital role in a properly functioning system.

However, more NPE’s have turned to trolling, taking the tack of accumulating older technology patents,devising creative and over-broad interpretations of what exactly is covered by the patent, then

threatening hundreds or thousands of practicing businesses with lawsuits if the patent is not licensed.

The license fees are always nominal when compared to the cost of a federal court defense, which is what makes trolling such an attractive numbers game for these unscrupulous actors.

The U.S. Patent and Trademark Office is in the business of granting patents. As a rule, it lets the courts handle everything else. But with an expensive legal system and the granting of overly broad patents, the current system is simply untenable for the average entrepreneur.

Congress attempted to address the problem in 2011 with the America Invents Act, which gives additional methods for patent invalidation. However, in many troll cases the patents are valid and they simply don’t pertain to the target company’s business. Trolls seek expansive and creative definitions of their patents’ scope, sometimes pretending that new technologies are analogous or equivalent to the old technologies that the patent actually covers.

The first step in the solution is simple. We must offer an alternative to the two current choices: a full-blown federal court defense or caving to the patent trolls’ demand for a license. The oft-proposed small claims court for patent matters needs to be implemented now. It should be set up as a one-defendant court so that trolls can’t sue multiple parties at one time. It should also be set up as a loser-pays court to bring the scales back in balance for the current patent system.

Further, threatened companies should be capable of bringing trolls to court preemptively, for a ruling regarding the scope of patents asserted by trolls against them. Such a system would preserve the rights of bona-fide patent holders while discouraging the growing scourge of trolls that threaten to derail this vibrant and growing sector of our nation’s economy.

Our country’s spirit of entrepreneurship and our technological leadership have given rise to an incredible tech industry, and in particular, a booming apps ecosystem. As an entrepreneur, this has helped me create a vibrant company of more than 25 full-and part-time employees. Our patent system must work in concert with entrepreneurs, providing further incentives without undue burdens.

Living under the threat of being sued for an irrelevant patent is no way to grow a business, or in this case, tens of thousands of businesses. I have immense faith in our entrepreneurs and startups. I am a believer in our intellectual property system, and I believe that we can and must change our patent system such that it is part of this growth engine — not part of the problem.

With more than a decade of experience in the mobile game industry, Josh Hartwell is the CEO of one of the leading independent mobile game publishers in the United States. Hartwell evangelizes premium casual games on the mobile platform and has been instrumental to the development and publication of titles such as the Solitaire Deluxe® franchise, JAMDAT Bowling, and the Number 1 seller on Verizon’s deck, Daily Blackjack. Follow him on twitter: @Josh_Hartwell

Image: Patent troll/Shutterstock, Nathan Myhrvold/Lisa Padilla

For most of history, the relationship between buyer and seller has been pretty simple: You buy something, and then the seller leaves you alone — forever — to enjoy it.

With the rise of digital goods, that relationship has been turned on its head. Now, when you buy something, you’re really buying the rights to access it, and using measures like Digital Rights Management (DRM), the seller can dictate how you use your purchase.

Amazon and Google want to complicate that relationship a bit more. According to a pair of patent applications, the two companies are looking into ways to allow people to re-sell their digital goods — or, more precisely, the licences to their digital goods.

The system would give content makers a major foothold into the content resell market, which they’ve traditionally been unable to profit from. “A portion of the proceeds of the ‘resale’ may be paid to the creator or publisher of the digital content item and/or the entity that originally sold the digital content item to the original owner,” Apple’s patent reads.

Amazon’s patent, which was awarded to it last month, says that the company could even limit the number of times a file could be transferred, adding a bizarre sort of obsolescence to digital goods. “When a digital object exceeds a threshold number of moves or downloads, the ability to move may be deemed impermissible and suspended or terminated,” the company says.

It’s crazy, interesting stuff, but it comes with its own set of questions.

For one, the problem with applying “pre-ownership” to digital goods is that ownership itself is based on the idea of scarcity: Once I give you what I have, I no longer have it.

That idea is out of place in the digital word, which has eliminated — in theory, anyway — the notion that we can run out of copies of something. With digital goods, even if I give you what I have, I still have it. (And it’s still in great shape.)

That, of course, is what you call “copying,” and it’s the very thing copyright law exists to police. For a lot of people, the end of scarcity is a fulfillment of the digital promise, but rights holders (and companies like Apple and Amazon) miss out on revenue when their customers make unsanctioned copies of their products (i.e., pirating), so an enforced digital scarcity could be a money maker.

But a bigger problem with the digital resell model is that it would require some pretty Draconian measures to police. According to Apple’s patent, the company could prevent the transferrer ”from accessing the digital content item after the transfer occurs.” What’s to prevent the transferer from making a copy of the content, and then transferring it? Apple’s’ parent doesn’t address that possibility.

In a way, though, Apple and Amazon are fighting a war of attrition that they’ll inevitably win. As the rise of services like Spotify has shown, people are becoming increasing comfortable with the idea of having ubiquitous, cloud-based access to music rather than outright ownership of it. Perhaps it’s the cloud that will be at the core of the digital resell market as well.

Photo: Thriftshop/Shutterstock

Apple has filed a patent application with the U.S. Patent and Trademark Office to do some new things with the iPad, including a dual-iPad notebook and a magnetic iPad stand for cars, treadmills, and more.

The patent application, first spotted by Patently Apple, was filed back in August 2011 and details “a way for securely attaching a tablet device to a stand where it can be removed and replaced with ease.” As the iPad sometimes hard to mount and easily remove it from that mount, a magnetic stand specifically for the iPad could open it up new uses.

One of the most interesting uses for the magnetic attachment would be for attaching two iPads. Once together, two iPads could be used for reading books, playing games, and things we haven’t thought of yet. The idea is reminiscent of Microsoft’s failed Courier project.

Outside of the dual-iPad concept, the magnetic stand is also shown off inside of a car, on top of a treadmill, and being used as a music stand. Additionally, there’s a drawing of an iPad being used on an all-purpose stand that might be good for photographers, restaurants, and more.

Check out a few more uses of the iPad magnetic stand in the photos below.

July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

The U.K. judge who ruled that Samsung’s tablets did not ape the iPad and forced Apple to apologize to Samsung on its website and in advertisements has been hired by Samsung to help it defend itself against patent infringement complaints by Ericsson.

This isn’t illegal, apparently, but it is a bit of a shake-your-head moment.

FOSS Patents uncovered Sir Robin Jacob’s new gig in documents relating to the new Erisson-Samsung case. One positive: He’s not working on projects — that we know of — that affect Apple. But it’s obviously something that has massive potential for conflict of interest if judges who make rulings affecting companies start getting hired by those very same companies.

Sir Robin was one of the judges that forced Apple to acknowledge publicly on its website that Samsung’s tablet was not a copy of the iPad. When Apple did not comply satisfactorily, he and two other judges then admonished Apple for doing it in confusing, roundabout legalese, and they also told Apple to place ads in U.K. newspapers (how antique!) with a similar message.

Interestingly, Sir Robin had publicly criticized Apple for what he thought was a lack of integrity, adding that he hoped “that the lack of integrity involved in this incident is entirely atypical of Apple.”

I’m fairly sure most companies and people hope that the possible conflict of interest implicit in this judge’s new job is entirely atypical of U.K. jurisprudence.

photo credit: JD Hancock via photopin cc

Steve Jobs initiated the lawsuit against Samsung as part of a “thermo-nuclear” strategy to keep iPhone clones off the market, according to a long story in Reuters. But Tim Cook, then-lieutenant and now chief executive of Apple, never wanted to sue the South Korean electronics giant because it was a critical supplier.

Apple bought about $8 billion worth of parts from Samsung last year, the story says, even though it was locked in litigation that eventually won Apple a large settlement. Apple alleged that Samsung benefited immensely from the market insight it gained by being so tightly woven into Apple’s supply chain. The companies appear to be “frenemies” for life, where they compete on one front and cooperate in many other ways as customer and supplier. Apple’s operations chief, Jeff Williams, told Reuters last month that Samsung was an important partner and they had a strong relationship on the supply side.

There are some precedents for Cook’s concerns that Reuters didn’t mention. Back in the 1990s, various customers or suppliers of Intel considered suing the chip giant for antitrust violations. Alabama’s Intergraph sued Intel in 1997 for antitrust violations, saying that Intel threatened to choke off a supply of chips and product information if Intergraph followed through with a plan to enforce its patents against computer makers. Chief executive Jim Meadlock alleged that Intel executives . In 1999, Intel settled with the Federal Trade Commission by promising that it would no longer retaliate against companies that sued it. The lawsuit was eventually dismissed. But the much-weakened Intergraph exited the hardware business in 2000 and was eventually acquired. In other words, Intergraph spurred an important legal point with the FTC settlement, but it paid the price for going to war with its key supplier.

Of course, the difference here is that Apple probably has some alternatives to using Samsung as a supplier, whereas Intergraph was very dependent on Intel. Advanced Micro Devices provided alternative chips, but in those days, AMD wasn’t as competitive as it is today. Intel effectively had a monopoly. Today, it’s not clear whether Apple has to depend on Samsung for any single part. If it does, then Samsung has monopoly power and it would be subject to compliance with the FTC about retaliation.

Reuters said the relationship between Apple and Samsung dates back to 2005, when Apple needed a stable supplier of flash memory. Apple had tossed aside the hard drive in its small devices and needed big volumes of flash chips for the iPod shuffle, iPod nano, and the upcoming iPhone. Initially, Apple used Samsung application processors, but then it began designing its own ARM-based chips and took over full control of chip development. But Samsung still serves a key role as a foundry, or a contract manufacturer that takes the Apple chip designs and manufactures them.

By designing its own processors, Apple keeps a lot of the margin that would otherwise go to Samsung. But Samsung still rules flash memory and other key components, as it spends $21 billion a year on capital expenditures. Samsung declined to comment to Reuters, while Apple only made the terse comment about Samsung being important.

Apple’s lawsuit about Samsung’s copycat tactics illuminates the risks of being dependent on a supplier, and other systems companies in the electronics industry are likely to want alternatives to Samsung, which has a black eye for allegedly copycatting a key customer’s designs.

Patents. Nothing gets technologists going quite like the subject of patents and when — if ever — they should be implemented in software.

Now, a federal appeals court is taking a sweeping look at the topic of software patenting, especially when software takes age-old concepts and brings them to digital life without making a significant technological or novel contribution along the way.

For example, look at shoe shopping. It’s been around since, well, shoes. If ecommerce outlet ShoeDazzle wanted to patent the concept of online shoe shopping, they wouldn’t be able to do so because the concept is simply the web-based implementation of an existing activity or idea.

But that doesn’t stop patent trolls from taking advantage of a currently broken system and patenting the heck out of some very basic, universal, and even trivial technologies.

Experts feel this case may eventually reach the U.S. Supreme Court — and with the most recent spate of patent warfare between Apple, Google (and Google-related manufacturers), and Microsoft, especially in the mobile arena, we’d say it’s about damn time.

The current case pits CLS Bank International against Alice Corp. Both parties use computer software systems as intermediaries to assist buyers and sellers in foreign exchange markets. Alice thinks that idea is patentable. CLS wants the patent invalidated.

Siding with the anti-patent CLS are Google, Facebook, Microsoft, Yahoo, Sprint, and eBay. Siding with the pro-patent Alice are IBM and a small army of patent trolls.

For our part, we side with innovation. And our consistent editorial stance has been that patents — the way they’re granted and used today, at least — stifle, hinder, and smother innovation in ways that are excruciating to watch.

Here’s the document describing the case more fully:

Patent Law Case by

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A Dutch court has ruled that Samsung’s Galaxy tablets do not infringe Apple’s design patents on its iPad tablet. This new judgement follows Apple’s UK spanking over the same issue, and the Dutch judge referenced the UK ruling in his judgement.

In a statement to Reuters, Samsung twisted the knife:

We continue to believe that Apple was not the first to design a tablet with a rectangular shape and rounded corners and that the origins of Apple’s registered design features can be found in numerous examples.

While Germany has proved kinder to Apple’s design lawsuits, European courts in general have not been sympathetic to the U.S. corporations’ claims. And with U.S. courts having denied Apple’s calls for Samsung important bans, you might think that now would be a good time to seek patent peace.

Especially since Samsung unilaterally dropped all patent lawsuits against Apple in the UK, France, Italy, Germany, and, yes, the Netherlands.

Apple has of course already buried the hatchet with HTC over its Android phones, and Samsung has won the right to see many of the details of that agreement. Now if only Apple and Samsung could come up with something similar, we could report more actual technology stories and fewer riveting (not!) courtroom dramas.

photo credit: mac morrison via photopin cc

What do ATM machines, the Universal Barcode system and a fact-finding computer that won jeopardy have in common?

According to an IBM spokesperson, these inventions began with a patent secured by the company’s scientists. For the 20th consecutive year, the computer services company has held its ground as the king of patents — it acquired 6,478 in 2012.

This is in no small part due to increasing contributions from research teams abroad. Nearly 30 percent of IBM’s patients were produced by researchers outside of the U.S., an eight percent jump from 2010. Israel, Japan, Canada, and Germany are among the company’s most productive countries.

According to Efrat Kasznik, president of Silicon Valley based IP consulting firm Foresight Valuation Group, IBM has a lot of patents for three main reasons: it has been around for a long time, it invests billions of dollars annually in R&D, and it has an elaborate incentive system for its researchers to file for patents.

This year, IBM’s patent count exceeded the combined totals of Accenture, Amazon, Apple, EMC, HP, Intel, Oracle, and Symantec. On the top 10 list (see below), Asian technology giants like Samsung and Hon Hai are buying up thousands of patents. “This trend has major implications for US companies [with] foreign companies are entering the US patent market,” said Kasznik.

Racking up patents is a smart strategy. It yields about $1 billion per year in licensing revenue and reduces the risk of being sued as the company moves into new territory, such as analytics and “big data.”

Big data is a buzzword used to describe the growing volume, complexity, and variety of data companies are accumulating. With global research firm Gartner projecting that big data will help drive IT spending to $3.8 trillion in 2014, it’s no surprise that IBM is making moves in this space.

According to IBM, 300 of the patents secured this year would foster innovation in the emerging big data analytics market. The company has made a name for itself in the field with its machine learning patented invention, which was implemented in “The Watson system”, a smart question-answering computer. In October, Watson hit the headlines for securing a place at medical school, where it was fed test questions from the United States Medical Licensing Exam. As VentureBeat reported, Watson is currently being positioned as a smarter successor to Apple’s Siri.

Since 1993, the company has received nearly 67,000 patents. It currently boasts a team of about 8,000 scientists residing in 35 countries.

“Most concretely, our 2012 patent record and the two decades of leadership it extends are a testament to thousands of brilliant IBM inventors — the living embodiments of our devotion to innovation that matters, for our clients, for our company, and for the world,” said Ginni Rometty, IBM’s chairman and CEO in a statement.

According to IFI Patent Services, the top patent-acquirers in 2012 are as follows:

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July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

Right now, everything RIM does is in preparation for one thing: the überimportant launch of the BlackBerry 10.

Its latest patent deal is no exception. To prepare for the operating system’s debut, RIM is expanding its existing patent agreement with wireless research company InterDigital. With the expanded deal, RIM now has the rights to InterDigital’s 4G LTE and LTE-Advanced technology.

The announcement is a significant one for RIM, which can finally bring 4G LTE to its BlackBerry phones without having to worry about getting sued by InterDigtal over the technology. (Also, in case it wasn’t clear, the deal also more or less confirms that RIM’s upcoming smartphones will indeed come with LTE chips — which should make carriers like Verizon and AT&T very, very happy.)

RIM’s patent agreement comes weeks after RIM reached a similar patent licensing deal with Nokia. While that agreement has cost RIM at least $65 million so far, it’s also further proof that RIM is aiming to make the launch of BlackBerry 10 as smooth as possible. The last thing RIM wants to do is let a patent spat screw up the launch of the most critical release in its history.

July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

Just over a month after winning the right to see details of Apple’s licensing deal with HTC, Samsung must reveal some of its private data to Apple. Justice Lucy Koh has denied the Korean company’s bid to keep detailed sales data private, according to Bloomberg.

Samsung wanted to know more about how HTC is licensing key patents from Apple to cover its Android phones. Apple wants to know exactly how many models of its many smartphones Samsung has sold in the U.S., which would of course have financial repercussions in the billion-dollar judgment that Apple won against Samsung almost half a year ago, and that Apple has been trying to increase ever since.

Koh’s judgment means that Apple will get data on model sales, but it will not see exact channel pricing or profit margin details. Interestingly, in October last year, Koh had granted Samsung to not only get data on model sales, but also the right to see key iPhone profitability data.

This latest round just adds to the complexity of the relationship between the two largest smartphone manufacturers in the world. Apple and Samsung are enemies and partners, as Apple still sources some key components from the massive multinational manufacturer — such as the iPhone 5′s central processing unit and screens for some of its phones.

Since late last year, Samsung has alternately played hardball and softball, first saying that it would not pay Apple royalties and then unilaterally dropping patent injunctions against Apple in Europe.

With these two latest private data reveals, this is turning into a unwilling corporate equivalent of an adolescent show-me-yours-I’ll-show-you-mine. Meanwhile, the rest of the industry wishes Samsung and Apple would just get a room.

Which is precisely what Koh called for in December, telling the two warring companies that “it’s time for global peace.”

Photo: Nan Palmer/Flickr

Marvell Technology Group is best known for making chips for a wide variety of devices — and it’s in hot water with Carnegie Mellon University. A Pittsburgh jury today found that Marvell has to pay around $1.17 billion in damages for infringing on two of the university’s patents.

Additionally, the jury found that the Marvell’s infringement was willful, which could lead U.S. District Court judge Nora Barry Fischer to triple the damages claim, reports Reuters. Marvell shares fell as much as 12.8 percent after the news hit.

Both of the Carnegie Mellon patents involved the use of “noise predictive detection” in high-speed hard disks. K&L Gates, the law firm representing Carnegie Mellon, said that Marvell had sold billions of chips that implemented the university’s technology without a license.

Carnegie Mellon sued Marvell back in 2009 for infringing on the two patents, and today’s verdict came after a month-long trial in Pittsburgh. Marvell, unsurprisingly, tried to argue that the patents were invalid, so it couldn’t have infringed on them. The jury didn’t buy that reasoning.

July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

Apple’s Christmas gifts this year (on top of loads of iPad and iPhone sales) included a few new patents: one covering a method for refining curved displays, and another that covers a new connector for SIM cards.

U.S. patent 8,336,334, “Glass alignment for high temperature processes,” covers a simple method for shaping glass without the need for chemicals or more complex processes. It involves an alignment system during the glass-slumping process that can shape glass around a mold without any interference.

Ultimately, the patent could allow Apple to build curved displays, similar to Samsung’s Galaxy Nexus and Nexus S Android phones. The patent doesn’t just cover phones, Apple could also use it for large monitors (and potentially even TVs).

Back in June, we reported on Apple’s triumph over Nokia in the battle for a new Micro-SIM connector. Basically, Nokia wanted a “push-based” design for removing and inserting SIM cards, while Apple was pushing for a SIM card tray. That tray is at the heart of U.S. patent 8,337,223, “Mini-SIM connector.”

From the abstract: “One example may provide a plunger system where a user can push on a plunger rod and eject a SIM card. Another example may provide contacts that are not damaged by improper insertion of a SIM card. Another example may provide a plastic housing, the housing reinforced by a metallic shield and having a relatively uniform thickness.”

Via Patently Apple 1, 2; Photo: Devindra Hardawar/VentureBeat

Monica Winghart is Executive Vice President and General Counsel for Article One Partners.

Recognizing the importance of a strong patent system and a global patent industry, President Obama signed into law the Patent Reform Act of 2011, otherwise known as the America Invents Act (AIA). With the advent of the next phase of AIA affecting the definition of prior art, patent filing rules and patent quality determinations, the key for entrepreneurs and small businesses is preparation.

A few things to consider:

1. Be the first to file

In March 2013, arguably the biggest effect on patent rights will be the change from the ‘first to invent’ standard to a ‘first to file’ system.

Currently, companies often spend years perfecting an invention before filing for patent protection. Under the old rules and the first to invent standard, with good record keeping showing the dates when a company made and pursued an invention, even if another company filed a patent application on the same invention, the first inventor could ultimately prevail by showing it invented first.

After March 2013, the US will follow suit with the European and Japanese patent systems which use a first to file standard for patent rights. Essentially, where two companies invent the same thing, it is a “race” to the patent office to see who files their patent applications first and take priority on patent rights. This cutthroat approach to patenting inventions is a motivation for inventors to quickly file for patent protection or risk losing out on those rights if another inventor files his patent application earlier.

2. Know your prior art

Prior art — e.g. information that has been made available to the public in any way, place, state, or form before filing a patent — can be used to validate, defend, protect or invalidate a patent. It is a powerful asset to any entrepreneur looking to expand their patent portfolio. If a new invention has been described anywhere in prior art before the date a patent application has been filed, it may not be possible to secure patent rights or those patent rights may later be found to be invalid in court or by the USPTO

With non-practicing entities increasingly setting their sights on small businesses, the urgency of locating and using good prior art in patent matters is no longer solely a big company issue. The AIA changes to the definition of prior art have thrown open the door to more publications and uses outside of the US and the search for prior art is now a globalized one. Prior art from around the world in every language can now be used as a valuable asset in litigation battles or administrative review proceedings.

Beyond disputes and patentability review diligence, it makes sense that increasing your knowledge of the prior art while developing your patent strategies and filing applications can improve the chances that your patents will strongly stand up against challenges. Using traditional legal search strategies can provide significant amounts of patent prior art, but often fall short on discovery of non-patent literature and non-English documents. Crowdsourced prior art searches provide one-stop, fixed cost and time-efficient options for developing a comprehensive review of the relevant prior art in a particular technology space.

3. Be prepared to be challenged

Even if you have successfully obtained a patent, the possibility still exists that your patent rights may be challenged through litigation or administrative proceedings.

Under the AIA changes, any person can challenge the validity and scope of a patent through a process called Post Grant Review (PGR). These PGR proceedings conducted by the USPTO allow for the re-inspection of a patent, and any prior which is relevant thereto, to ensure that the patent accurately captures the content and scope of an invention over the prior art. A request for PGR consideration can be filed by anyone within the first nine months of a patent being granted.

One note to filing a PGR request is that the party wishing to challenge a patent cannot do so anonymously, but instead must disclose their identity and state why they are challenging the patent. Since PGR proceedings allow for limited discovery and positional submissions, it may offer a faster and more cost effective alternative to litigation.

4. Share with care

The way to best defend your innovation and patent strategy is to carefully watch what you publish on your blog, Facebook, Twitter, and company websites, as well as more traditional disclosures through professional organizations, partner relationships and product offerings. As more and more references fall into the guise of prior art, disclosures that may not have previously affected your priority of invention, might now impact your potential to claim that you are entitled to patent rights. Moreover, with the advent of first to file, disclosing too much information without first filing for patent protection, might ‘tip your hand’ to competitors and result in someone else filing for your invention before you do. Keeping a close eye upon your communications, patent strategy and the activities of your competitors will improve your patent positions and ensure that you have preeminent patent rights.

5. Know your timeframe

As a part of the AIA reforms, entrepreneurs and small businesses will now have a more affordable option to choose a 12-month fast track route to getting their applications through the approvals process. In an effort to promote creation of new American jobs, AIA entitles small entities and independent inventors to a 50 percent discount on the $4,800 fee for the fast track option.

As an additional incentive to promote efficiency in the patent filing process, AIA encourages e-filing of patent applications through the USPTO website. Those who wish to file patents via the traditional paper method will be charged an extra $400. Those who file electronically will not be charged the paper filing fee, and will receive instant email updates when their submission has been reviewed and approved.

Previously, patents were expensive and could take as long as three years to undergo the lengthy approvals process. The new rules can help accelerate the time to secure issued patents. With patent ownership being critical to the valuation of new technologies, securing funding and market position and the production of products, acceleration under the new rules will be helpful to growing companies.

Small businesses that understand the implications of the AIA will find themselves equipped to win in the new patent environment, while being uninformed of these changes can place smaller companies at risk from competitors and patent litigation. Awareness and preparedness will go a long way towards success.

Monica Winghart has 15 years of experience in Intellectual Property. Her experience as an executive vice president at Article One Partners and as senior counsel for The Clorox Company, combined with a previous career as an engineer, uniquely position her to understand the IP environment today. She currently serves as the Chair of the Intellectual Property Committee of The Association of Corporate Counsel for 2012-2013 and is involved with several community service and pro bono projects in the San Francisco Bay area.

July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

Once bitter patent rivals, Nokia and RIM are now hugging out their differences.

Nokia announced this morning that it’s settling its patent spat with RIM. With the deal, RIM agrees to cough up a one-time payment in addition to recurring royalty payouts. (RIM, if you were wondering, isn’t getting any cash out of this.)

“This agreement demonstrates Nokia’s industry leading patent portfolio and enables us to focus on further licensing opportunities in the mobile communications market,” Nokia chief intellectual property officer Paul Melin said in a statement.

With revenue slipping, Nokia and RIM are probably the last companies that can afford expensive patent litigation. That’s especially true for RIM, which has been heavily focused in recent months on cutting its expenses ahead of its BlackBerry 10 launch. While the exact terms of the companies’ agreement were not disclosed, the deal is certain to be a lot less costly than a protracted court battle.

“This agreement further demonstrates RIM’s effort to effectively resolve the patent complexities that face our industry. With these lawsuits out of the way, we will continue to focus on delivering BlackBerry 10 in the next calendar quarter,” RIM Chief Legal Officer Steve Zipperstein told VentureBeat in a statement.

What’s strange about the deal, however, is that RIM completely failed to mention it both its third quarter 2013 earnings report and earnings call yesterday. Given the negative investor reaction to RIM’s announcement that it could change the way it prices its BlackBerry consumer services, that reluctance is understandable. People can only take so much bad news at once, after all.

July 9-10, 2013
San Francisco, CA

Early Bird Tickets on Sale

The U.S. Patent and Trademark office has invalidated the “pinch to zoom” patent that was at the heart of a dispute between Apple and Samsung last summer.

The patent, held by Apple, concerns the use of a “pinching” gesture to zoom in and out of an image, map view, or other display on a touchscreen. While widely cited, that patent may not have been as ironclad as Apple wanted you to think. The Wall Street Journal reports that the USPTO has invalidated the patent, although its source is rather indirect: The news comes via a Samsung court filing.

Neither Samsung nor Apple have responded to our inquiries yet, and we don’t expect to hear anything enlightening from them.

Many commentators, including VentureBeat contributor Vivek Wadhwa, have pointed out the obviousness of this relatively minor patent. However, it played a key role in this year’s legal battle between Apple and Samsung. Other patents at stake in that dispute included the rubber band-like “bounce back” effect when scrolling to the end of a list and the “trade dress” of the iPhone.

Apple won an overwhelming victory in the courts, with a $1 billion judgement against Samsung, but that victory has been somewhat tempered in recent weeks.

Kodak may soon find itself $525 million richer.

The bankrupt company announced this morning that it’s finally sold off its patent portfolio. Picking up the imaging patents are patent companies Intellectual Ventures and RPX Corporation, which represent Apple and Google, respectively.

Auctioning off its patents has been a key part of Kodak’s restructuring efforts since it filed for bankruptcy earlier this year. With the cash, Kodak will be able to pay off a large part of the $793 million it borrowed from bondholders.

That, in turn, will help the company focus on its “commercial imaging” business, which includes aerial film, printed circuit boards, and surveillance products.Clearly, the Kodak of the future is going to be very different from the Kodak the world has grown to know.

Photo: Flickr/ MJ/TR