Patently-O Bits and Bytes No. 95

  • Injunctive Relief: I re-read Michelle Lee's (Google) statement about the need for patent reform. One issue that jumped-out this time: No mention of injunctions. Money is still at stake, but Google appears confident that it won't face a shut-down even if it loses a patent case. In that sense, Google is lucky that it is being sued by non-practicing entities who as a de facto rule don't get injunctive relief against infringers who have a major market share.
  • Benefit of Trade Secrets: Avoid Charges of Infringement. In some senses, google is very public. Yet, its actual operation is quite secretive. One benefit of that type of operation is that it helps avoid charges of patent infringement. If patentee's can't tell how you operate, it makes it much more difficult to assert charges of infringement.
  • Warranties and Copyright: My colleague Marc Roark has an interesting new paper: Limitation of Sales Warranties as an Alternative to Intellectual Property Rights: An Empirical Analysis of Iphone Warranties' Deterrent Impact on Consumers.
  • The BPAI Watchdog: http://bpaiwatchdog.blogspot.com/. So far, Leigh Martinson is focusing on the BPAI's application of Bilski.
  • European Bilski: The Enlarged Board of Appeal of the EPO is looking for third-party input on four issues:
    1. Is it only proper to exclude patents covering computer programs as such when explicitly claimed as a "computer program"?
    2. Does a claim avoid the computer program as such exclusion by mentioning a computer or data storage medium? (If not, what technical effect is needed?)
    3. Can a technical effect be non-physical? Is it sufficient if the physical entity is an unspecified computer?
    4. Does the activity of programming a computer necessarily involve technical considerations?
  • Input on the European questions are due by the end of April. http://www.epo.org/topics/news/2009/20090219.html.
  • Application for the job of PTO Director (by Prof Morris) http://www.stanford.edu/~rjmorris/pto.htm. I maintain that it is possible to find an excellent nominee who is not a patent attorney. However, any nominee who does not have extensive experience with the patent prosecution process will face an uphill credibility battle from day one.

13 thoughts on “Patently-O Bits and Bytes No. 95

  1. CSIRO v. Buffalo, Inc. would suggest that at least in one parallel courtroom universe in eastern Texas there is not a de facto rule, but in fact nonpracticing patent owners (and ones that have actually licensed to others) do get injunctive relief against infringers with actual products and market share.

    Reply
  2. TJ – As you know, the supreme court expressly stated that the rule for injunctive relief cannot be categorical, but the de facto rulings appear to lean against NPEs.

    I would challenge your observation about reality: We do see would-be NPEs making all sorts of moves to create a justification for injunctive relief.

    Of course, the beauty of an NPE is that it is essentially immune from an infringement countersuit. If M$ became a patent plaintiff, it would quickly be countersued for infringement as well.

    Reply
  3. “In that sense, Google is lucky that it is being sued by non-practicing entities who as a de facto rule don’t get injunctive relief against infringers who have a major market share.”

    This is exactly the wrong rule. The larger the infringing entity, the greater the need for the injunction. The troll “myth” notwithstanding, if there was a way to accurately determine whether there was really such a thing as a frivolous, as opposed to merely inconvenient, patent infringement law suit then those could somehow be prevented. Otherwise, let’s put the teeth back into the exclusive right – and focus on establishing more realistic guidelines on what really constitutes a reasonable royalty.

    Reply
  4. Dennis, I wonder about the observation. Sure, everyone thinks after Ebay the de facto rule is that NPEs do not get injunctions against major market participants. But if the rule really is keyed off the entity, and not the patent, then the logical strategy is for Acacia to assign the patent to, for example, Microsoft after winning the case. Then you substitute Microsoft as the plaintiff moving for the injunction and argue MS is a direct competitor. Of course, we don’t see that happening. So that makes me question whether the rule really is as settled as you make it seem.

    Reply
  5. “The pre-filing investigation may be more difficult, but the showing that needs to be made is in fact LOWER.”

    That’s absurd to me. The patentee who claims something that it can’t detect doesn’t deserve a windfall, that is, the ability to make a lower showing with the hope there’s infringement somewhere.

    If you can claim something detectable (i.e., inputs matched with outputs), so be it. If you can’t, don’t ask the courts to humor you while you blindly push forward on a fishing expedition.

    It’s neither the court’s, nor the accused infringer’s fault that you claimed something that you couldn’t reasonably detect. You shouldn’t be able to waste their time based on your flawed claiming strategy.

    Reply
  6. Dear Gideon,

    Re: “Just look for the little man behind the curtain.

    No magic here folks.”

    I offer a companion theory which is menacing for a different reason — it happened right in plain sight!

    I posted my companion theory below the asterisks on another thread; it was addressed to Mr. Lionel Hutz.

    I agree with you: Of course, the little man behind the curtain also had a hand in screwing up our strong American patent system. Politics as usual.

    * * * * *

    Dear Lionel,

    Re: “The ability to threaten an injunction against a company with a profitable business by an opportunistic patent holder was unfair.”

    Let’s look at the other side of that coin: If a self-employed independent inventor cannot threaten injunction, why would a dirty farkin’ international patent pirate (i.e., big businesses that need to maximize profits so its executives can reap- rape the rewards) take a reasonable license without litigation the inventor can ill afford, especially considering lower damage awards? And under these circumstances, how the hello can the inventor find a contingency firm?

    Moreover, given the stigma inventors must endure, created by incessant covert and overt “lobbying” by international powerhouses like Cisco, Symantec, Google and their ilk in the “Coalition for Patent Fairness” in the mass medias, Congress and Executive agencies including the PTO (at least the management thereof), given all that, and KSR to boot, District, Federal Circuit and Supreme Court Judges and the vast “pool” of jurors – they all have been poisoned against the independent inventor.

    I know, I’ve been there and I’ve been royally screwed even with legal representation as good as it gets.

    Please, please wake up and smell the coffee.

    Posted by: Just an ordinary inventor(TM) | Mar 07, 2009 at 08:14 AM

    Reply
  7. “”””Google is lucky that it is being sued by non-practicing entities who as a de facto rule don’t get injunctive relief against infringers who have a major market share.””””

    Oh, I strongly suspect that luck has little to do with it.

    The Ebay case had about as much to do with luck as the current financial “crisis.”

    Just look for the little man behind the curtain.

    No magic here folks.

    Reply
  8. Yes indeed me,

    Something ugly is happening over at Mason Law. First indulging what I consider to be a naive thesis of the Patent Lottery, then not only legitimzing the notion of trolls, but inventing a whole new category of patent boogey men, e.g. the troll patent.

    /cue Night of the Living Dead

    Reply
  9. “However, any nominee who does not have extensive experience with the patent prosecution process will face an uphill credibility battle from day one.”

    And an uphill learning curve.

    (Sort of like moving to a small Mexican village and having to learn Spanish)

    Reply
  10. “If patentee’s can’t tell how you operate, it makes it much more difficult to assert charges of infringement.”

    I disagree.

    Rule 11(b) is rather clear that the certification is “to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances.”

    If an organization is a trade secret black box, there is going to be very little basis to claim that a pre-filing investigation consisting of “inputs match” and “outputs match” and “public statements support” is not reasonable under the circumstances. The pre-filing investigation may be more difficult, but the showing that needs to be made is in fact LOWER.

    Reply
  11. Relying on trade secrets to avoid patent infringement charges does not work against trolls.

    Since the courts refuse to enforce Rule 11 sanctions against trolls, they sue first and then take discovery to see if they have a case.

    If the courts would impose sanctions for filing a suit without pre-filing basis how many troll suits would go away?

    Reply
  12. Decided you need to move Chiang’s terrible, unthoughtful post down a bit Dennis?

    Google’s lack of a push for injunctions shows exactly why patent reform is not needed – the courts are dealing with the issues already and will come to a much better decision than an economy damaging, slef cnetered, Google only law.

    Again, please do your searches on ixquick.com and skip Google.

    Reply

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