Intellectual Ventures: Revealing Investors

XILINX, Inc. v. Intellectual Ventures LLC (N.D. Cal. 2011)

XILINX is a billion dollar company that manufactures programmable memory chips. In February 2011, XILINX filed a declaratory judgment lawsuit against Intellectual Ventures and its subsidiary corporations – asking the Northern District of California court to rule that it could not be liable for infringing a set of fifteen (15) intellectual ventures patents. The case will be interesting to watch, although it will most likely end with a confidential license well prior to a judgment on the merits.

Intellectual Ventures is important because they are now one of the Top-Five owners of US Patents. Although the company has played extensive games in an attempt to stifle the utility of the patent ownership recording system, it has been reported to hold at least 30,000 patents. Intellectual Ventures is quickly becoming more aggressive at packaging and licensing its broad patent portfolio.

One interesting aspect of the case is each party’s choice of litigation counsel. XILINX has hired Jones Day, which is one of the largest law firms in the world. Intellectual Ventures has hired John Desmarais and his small upstart firm of patent litigators. (Desmarais was formerly a top litigator at Kirkland & Ellis). IV’s local counsel is Bradford Black who also has his own two-person law firm. Over the past two years, the largest law firms shed about 10% of their lawyers (not even counting the complete collapse of Howrey LLP). During that time, Desmarais & Black left big-law and founded their own small firms focused on providing very high quality services and costs naturally controlled by a limited overhead and limited number of lawyers available. This trend appears likely to continue over the next several years as the market for top-quality lawyers resets itself.

Another interesting aspect of the case is Intellectual Ventures recent filing that lists its major investors as required by Fed. R. Civ. Pro. R. 71. (File Attachment: Financial Interest in IV.pdf (104 KB)) These include:

  • Technology Companies – For the most part, these tech companies appear to have invested in intellectual ventures as part of a licensing agreement.
    • Adobe
    • Amazon.com
    • American Express
    • Apple
    • Cisco Systems
    • Detelle Relay KG
    • eBay, Inc.
    • Google
    • Microsoft
    • Nokia
    • Nvidia
    • OC Applications Research (merged with IV)
    • SAP
    • Sony Corp.
    • TR Technologies
    • Verizon
    • Xilinx (yes, the plaintiff is also an investor)
    • Yahoo
  • Universities – It appears that the university ownership is not directly related to any transfer of patent rights from the Universities to IV.
    • Brown University
    • Cornell University
    • Grinnell College
    • Mayo Clinic
    • Northwestern University
    • Stanford University
    • University of Minnesota
    • University of Pennsylvania
    • University of Southern California
    • University of Texas
  • Individuals
    • Peter Detkin (IV Co-Founder and Vice-Chairman)
    • Eric Dobkin (Goldman Sachs; IV Board of Advisors)
    • Richard Fields
    • Gregory Gorder (IV Co-Founder and Vice-Chairman)
    • Paul Gould
    • Adam Holiber (IV Licensing Executive)
    • Edward Jung (IV Co-Founder and CTO)
    • Nathan Myhrvold (IV Co-Founder and CEO)
    • Nancy Peretsman (leading Investment Banker)
  • Investors
    • Allen SBH (Updated: Apparently Not Paul Allen)
    • Bush Foundation
    • Charles River Ventures
    • Commonfund Capital Venture Partners
    • Dore Capital
    • Flag Capital
    • Flora Family Foundation
    • Hewlett Foundation
    • Howard Hughes Medical Institute
    • Legacy Ventures
    • McKinsey and Co.
    • Next Generation Partners
    • Noregin Assets
    • Reading Hospital
    • Rockefeller Foundation
    • Roldan Block NY
    • Seqouia Holdings
    • Skillman Foundation
    • Sohn Partners
    • Taichi Holdings
    • TIFF Private Equity
    • White Plaza Group

99 thoughts on “Intellectual Ventures: Revealing Investors

  1. The above message brought to you by Pathetic Sockpuppets, Inc. No animals were harmed during the creation of this pointless advertisement on behalf of greedy multi-millionaires.

  2. Actually, I just checked Pub. 20110119759 and noticed it does have a section discussing background art, and it is rather lengthy at nearly a full page of text.

  3. Actually, my question was patent, not patent application publication. In the above IV application, the examiner is requesting background info, making me wonder if anyone has successfully pulled-off obtaining a patent without a background. Thanks for the hard work searching though.

  4. That then would have been penned by “Ironic SCOTUS.”

    Are you confused by the meaning of “confused”?

  5. I had taken it that Confused SCOTUS was being ironic, and was implying that a high proportion of ALL recently written specifications lack a Background section.

    So, I for one am not surprised it took you less than 3 minutes.

  6. Confused SCOTUS,

    I just took a very very quick look at recent publications and the first one I looked at (Pub 20110119759) has a mere 34 words in the background – and ALL of those are describing the field of invention, rather than the actual background art.

    It took less than three minutes.

    Is that close enough?

  7. Does anyone know of a patent that does not have a section discussing background art?

  8. I certainly don’t blame all of these entities for having invested in Intellectual Ventures; in fact, I’ve considered doing so myself. Whether you want to call the company a “patent aggregator” or a “patent troll,” IV has recently demonstrated the success of the NPE (erstwhile “patent troll”) business model. IV has simply proven that it’s ahead of the curve in realizing and capitalizing on this way of earning revenue.

  9. For some reason, I have this image in my head of the caveman wounded and saddened over Geico’s “So Simple a Caveman Could Do It” signage. In my version, he’s carrying a black briefcase case and wearing an IRS ID badge.

  10. This is a fine example of an enjoyable back-and-forth exchange.

    I am looking forward to the answers that may come from this.

  11. You may petition quickly, but such a move is quite meaningless as the response to the petition has no required timeframe.

    Petition away, but that cannot be, and should not be, counted on as an avenue of redress.

    The petition process, as is. is fatally flawed and basically inoperative.

  12. Patents – the new food stamps program.

    Last I checked, the patent right has ZERO actual explicit dollar value, being a negative right and all.

    To set one of your goalposts back to where it belongs – a known person (not even a corporation (yet) MUST be identified on a patent application. It is the subsequent (and fully legal) treatment of the item as property that can be treated JUST LIKE ANY OTHER property.

    You seem to have a hard time grasping this, and now ae seeing ghosts amongst your shadows.

    You want to know of A reason – how about the right to privacy? Ever hear of that?

    And I would love to hear what you think of just what those limiting provisions of “subject to other provisions” actually means – you make a big noise about giving answers, but YOU don’t seem to actually give any (and I did, after all, give you the proper law). You are going to have to a lot more than simply state “at any moment” in order to actually establish you do (much less should) have this right. As for any other reasons, just take any that apply to any other property that you yourself acknowledge that people don’t have a right to know – chances are pretty good that such reason also can apply.

    So let’s bring the answers, my philosophical friend. That is, if you really have any answers (of the non-philosophical kind).

  13. Picking on tax collectors and dragging them through the mud isn’t nice – they have things tough enough

  14. You seem to have a dificult time with this general concept of “property.”

    Not at all. I simply disagree with treating patents as if they are no different from other kinds of property, which is what 35 USC 261 appears to do (“subject to other provisions”).

    Patents are different from other kinds of property. For starters, an individual entity’s patent rights are literally created by my government. Until that happens, the patent right in question has no existence. Insofar as the rights are created by my government, as a citizen of the US and a taxpayer I should have the right to know, without undue effort, exactly who owns any US patent right that exists, at any moment.

    I’ll ask the question again simply to demonstrate the difference beween responding to a comment and answering a question (which I have done repeatedly in this exchange with you) and scampering away and/or kicking up dust (which you have done repeatedly in this exchange):

    Since 35 USC does not provide any reason that patent ownership should be hidden from the public (it simply allows such a condition to be the case, without explanation) let me know if you are aware of a reason. Can you do this without repeating your non-answer? Try using your brain.

    Also let me know how that “reason” squares with the provisions of 35 USC which appear to discourage the withholding information about patent ownership and, more importantly, be clear about why my government should be handing out 20 year monopolies on technology potentially worth billions of dollars to unknown entities.

  15. because my government is in the mood to do so.

    The legal insight from this one is shocking.

  16. Hey, I’m just using the anti-patent crowd’s (i.e, your) own analogy. Aren’t you guys the ones reciting the mantra that “patents are a tax on business?”

  17. I didn’t notice because it didn’t happen.

    Actually it did happen. Here, let me repeat my question and your quoted answer:

    Do you have a right to know who owns any (every) other piece of property? (my question)

    Nope.” (your answer)

    See. It did happen. But then you got all crosswise with the notion of property.

    You seem to have a dificult time with this general concept of “property.” I am not sure how you reach over to quoting the Bible for jusitifcations of discrimination (that’s a pretty wild tangent). The law I showed was pretty clear and very much on point, and your response was pretty unfounded(imagine that the “idjits” have never never been sought to have been corrected – the world must seem like a very strange place to you for such an egregious error to go unnoticed for so long).

    When you can admit what patents are, then we can proceed with our discussion. Until then, it is rather pointless to talk about real things when you are so stuck on your philosophical shadows.

    Let me know when you are ready.

  18. someone needs to read the HTML 5 std, or maybe just apply due care when posting.

    fixed?

  19. Nothing in 35 USC, 37 CFR (including Rule 78(c)), or the case law discussed in MPEP 704.10 and 804.03 gives the examiner of 11/880,432 “explicit power” to require the applicant to “to identify any and all applications owned by Intellectual Ventures or any subsidiary entity, regardless of their status, which are related to surgical feedback systems and methods.”

    ” These sections are just not MPEP sections, but cite 35 USC, 37 CFR and case law as necessary.”

    So because those MPEP sections cite 35 USC, 37 CFR and case law “as necessary,” the examiner has “explicit power” to require the applicant to disclose the corporate relationships of the assignee, its parent(s) and any other subsidiaries?

    Talk about not getting it.

    Lulz.

  20. Please cite anything

    Already done at 10:42 and 10:53 AM.

    Please read what I have already provided before asking for the same material. These sections are just not MPEP sections, but cite 35 USC, 37 CFR and case law as necessary.

    If you “don’t get it,” just say so, but don’t pretend that the answers are not there in front of you.

  21. You provided that answer when you answered my question about property, or didn’t you notice?

    I didn’t notice because it didn’t happen. 35 USC does not provide any reason that patent ownership should be hidden from the public. None. Nada. Zilch.

    It’s like quoting the bible to justify discrimination. Otherwise known as “unfounded philosophy.”

    So, do you have any other “reason”? Let me know. Also let me know how that “reason” squares with the provisions of 35 USC which appear to discourage the withholding information about patent ownership and, more importantly, be clear about why my government should be handing out 20 year monopolies on technology potentially worth billions of dollars to unknown entities.

  22. Cy Nical stated, “There is no legal basis that I’m aware of for forcing an applicant to disclose its corporate relationships.”

    Please cite anything that gives the examiner “explicit power” to require the assignee of an application to disclose its corporate relationships.

  23. OK, thanks. I was wondering why American corporations don’t bother to record changes of title on the registers of Patent Offices outside the USA. Now I’m wondering whether the unregistered transactions that bother me are between companies within a corporate group. thus, the vendor won’t sell the property again, but the purchaser might still have difficulty recovering back damages arising from acts prior to the change of ownership. So, I am still thinking that the ROW solution might help Malcolm, with a less drastic treatment for his problem

  24. “Your statement of ‘apply…if…then’ is not correct. The power to ask for such information is explicit.”

    It is, huh? Cite me something from 35 USC or 37 CFR where that “power” is explicit. And don’t waste my time with Rule 105 as the examiner’s allegation that IV’s ownership of some “unidentified” number of subsidiaries presents an “undue search burden” is complete bullsh!t. All of the information the examiner needs to consider OTDP issues is available to the examiner without requiring any information from the applicant.

    It seems that you’re an examiner with an uncontrollable habit of thinking that you can make up the law. Please seek therapy for this.

  25. It only takes one unscrupulous inventor to teach you a lesson.

    My point was that US assignees DO record their ownership, so your “ROW solution” isn’t necessary. I don’t think Malcolm is claiming otherwise. His concern was that the “actual” ownership might be obscured by complicated corporate relationships. That’s a completely different problem that is not solved simply by requiring title registration.

  26. You are not a searcher and do not understand the MPEP either.

    Your statement of “apply…if…then” is not correct. The power to ask for such information is explicit.

    I suggest you re-read teh sections provided without any preconceptions of what those sections say in order to actually understand what you currently do not understand.

    Also, in your lack of diligence you have missed the fact that in this case the examiner did perform the inventor and assignee searches. Those searches did reveal at least one other application 12/002,304.

    It seems that you have an uncontrollable habit of spouting off in ignorance. Please seek therapy for this.

  27. Neither of those MPEP sections applies to the request for information in 11/880,432. MPEP 804.03 applies if the examiner’s search turns up another pending application having different inventors, a common assignee, and claiming the same invention as the application being examined. Then the examiner can require the assignee to state which inventive entity invented the subject matter. It doesn’t give the examiner the power to require the applicant to identify every application of every parent and/or subsidiary company that might disclose or claim an application in the field of endeavor of the application being examined. Neither does Rule 105.

    The examiner of 11/880,432 should do the search as directed by the MPEP, including a name search for each inventor. If there are potential OTDP and/or 102(e)/103(c) issues to be resolved based on the results of the search, then the examiner can require further information if it’s necessary to resolve the issues.

  28. Well, Cy, I think it is what MM is talking about but not what he is demanding. I was moved to suggest the ROW solution as the pragmatic one, to get on the public Register the identity of the party that will come after you for back royalties. I was thinking that loss of back royalties would be incentive enough, to prompt most purchasers (and their legal advisers) to go for prompt registration of title.

    How much legitimate fear is there in the USA then, that inventors will sell the same parcel of land over and over again, until the latest purchaser puts a stop to it by registering its title. Tell me Cy, just how unscrupulous are American inventors.

  29. Then follow up with MPEP 704.10 (and the sections following).

    Each has the appropriate citations to the law that establishes the legal basis.

    You really should be aware of these.

  30. There is no legal basis that I’m aware of

    You need to brush up then.

    I suggest you start with MPEP 804.03.

  31. Would such a provision, to encourage patent owners to register their title, if brought in to domestic US patent law, be deemed Unconstitutional?

    No. And we already have a provision to encourage patent owners to register their titles. It’s the last paragraph of 35 U.S.C. 261. This provision says that if you don’t record your ownership, then you lose the patent if the previous owner (e.g., the inventor) sells it again to someone else. It’s a very bad idea not to record your assignment, and as far as I know, every sensible company does it.

    This is not what Malcolm is complaining about, however.

  32. Seeing as how the registered owner, successfully suing for infringement, can recover retrospective damages only as far back as the date when he registered his title on the local Patent Office Register, it is a wonder to me that American owners of patents round the world don’t bother to register their title.

    But now I have a better idea why they think like that.

    Does any reader see any scope for malpractice suits against US law firms who fail to advise their clients to record their title, round the world, thereby depriving them of damages awards for years of infringing activity?

    Would such a provision, to encourage patent owners to register their title, if brought in to domestic US patent law, be deemed Unconstitutional?

  33. We are talking about patents. That is the publically (i.e., government) granted right I was referring to in my 5:41 post. I thought that was crystal clear. But maybe not to you?

    Oh, that’s right – you were the one talking about patents based in real law and I was the jrrk-off musing in unfounded philosophy.

    No, wait – that’s reversed.

    How quaint.

    I’m still waiting for a single reason that patent ownership should be hidden from the public. Have you thought of one yet?

    You provided that answer when you answered my question about property, or didn’t you notice?

  34. We are talking about patents. That is the publically (i.e., government) granted right I was referring to in my 5:41 post. I thought that was crystal clear. But maybe not to you?

    I’m still waiting for a single reason that patent ownership should be hidden from the public. Have you thought of one yet?

  35. You can talk about whatever you want, or not.

    That’s nice.

    So (obviously) can you.

    And here I thought we were talking about patents.

  36. I have not noticed anyone, and I mean absolutely anyone, clamoring to change the property nature of patents

    That’s nice.

    I’m talking about changing the law to require that the ownership of a publically granted right be made public.

    You can talk about whatever you want, or not.

  37. Dennis – isn’t there a way that you can make tags automatically close and not carry over to another post?

    Nothing more annoying than an entire thread in italics. Luckily, as of late, this hasn’t been much of a problem.

  38. Bloated patent trolls have a way of encouraging other to change the laws.

    Or haven’t you noticed?

    I have noticed, thank you. And yet, still, I have not noticed anyone, and I mean absolutely anyone, clamoring to change the property nature of patents.

    Have you noticed that?

  39. Whether in all the time that law has been on the books and nobody – and I mean absolutely nobody – has made a move to change it…

    Bloated patent trolls have a way of encouraging other to change the laws.

    Or haven’t you noticed?

  40. With IV, inventors of crxppy software patents and small businesses who have no products of value except for their crxppy patents have an efficient way to monetize their patents

    Fixed.

  41. I am a patent attorney who has had very good experiences with IV. With IV, inventors and small businesses have an efficient way to monetize their patents, and corporations have an efficient way to obtain license rights under relevant patents, all without the irrationally high costs, burdents and uncertainty of litigation. Bulk licensing without litigation seems an efficient way to promote progress in the useful arts.

  42. Whether I think it quaint or not does not matter.

    Whether in all the time that law has been on the books and nobody – and I mean absolutely nobody – has made a move to change it…

    Well, that I would call quaint.

  43. If there were truly no reason, none whatsoever, for patent ownership to be able to be kept secret, then it would have been made so in the law.

    How quaint of you to think so.

    Obviously, 35 USC 261 is a piece of shxt and was drafted by idjits who were mentally incapable of seeing (or intentionally blind to) the potential for abuse of the patent system by trolls like Intellectual Ventures.

  44. Just as I thought.

    You may need to talk to the Hardworking Lawyer, though:

    35 U.S.C. 261 Ownership; assignment.
    Subject to the provisions of this title, patents shall have the attributes of personal property.

    If there were truly no reason, none whatsoever, for patent ownership to be able to be kept secret, then it would have been made so in the law.

    It was not.

  45. Cy, I somewhat agree with this. If two applications are claiming the same or substantially the same invention, one should put a hold on both until the double patenting is resolved in some fashion. The normal course of action is to reject the one over the other, the one that is prior art to the other forming the basis of the rejection. The rejection is in the form of a 102(a) or (e) rejection with an statement from the examiner that the rejection cannot be overcome with a Section 131 affidavit.

    But in the final analysis, the PTO cannot and should not issue two patents on substantially the same invention. My only concern here is that I have seen nothing in the way of Office procedure that actually addresses this, even though I have actually experienced it — I once had a case that was held up pending another application, not prior art to my own, but claiming substantially the same invention. The examiner informed me that the other party was going to have to resolve the issue of interference by requesting an interference or cancelling the interfering claims.

    But, what happens if the other application is now a patent and it is not prior art to the still pending application? What does the Office do? Invite an interference?

    But all of this does suggest that the requirement for identifying a corporate structure is bogus.

  46. Do you have a right to know who owns any (every) other piece of property?

    Nope.

    Are you making a legal statement or a purely philosophical one?

    Logical. Patent rights are not fundamental rights. They are special rights, given to others only because my government is in the mood to do so. There is absolutely no reason for patent ownership to be kept secret from the public.

    None whatsoever.

    They should be public, and easily accessible. Anyone who argues otherwise does so for only one exceedingly transparent reason.

  47. IV is analogous to a giant bloodsucking leach who bought a tax collector costume and who shows up on a tax protester’s doorstep with a bill for back taxes certified by a twelve year old who spent five minutes double-checking the math in hand.

    Fixed.

  48. it’s my right to know

    Why?

    Do you have a right to know who owns any (every) other piece of property? Can the government force you to list all such property on a national registry?

    Are you making a legal statement or a purely philosophical one?

  49. Actually, I just thought of a much more apt analogy.

    IV is analogous to a tax collector who shows up on a tax protester’s door step with a bill for back taxes in hand. He threatens to file suit and force the tax protester to pay what he actually owes unless he pays half the back taxes and helps bring down other tax protesters? The tax protester takes the deal, and continues to vociferously protest taxes, while getting the goods on his fellow tax protesters. The truth comes out. How sympathetic is he now?

  50. That’s not an apt analogy.

    Maybe if, in addition to paying some $$$, he also was forced to kidnap someone else’s child and hold it for ransom, and additionally give the kidnapper nuclear launch codes.

    Please recall that, under the law, duress is a defense to all crimes except murder or treason. Thus, duress is not a complete defense at law. How much less is duress a complete defense to accusations of hypocrisy, or at least yellow spinery?

    If those companies fought IV as an NPE, the worst that would have happened is that they would have to pay past royalties and ongoing royalties. They would not have been forced to give IV the right to sue others on their behalf, thus granting IV the IP equivalanet of a nuke (i.e., right to injunctive relief).

  51. Sea saddle is the only Trademark that belongs to me! SEASADDLE is not what I filed! And filing it is a CRIME! Calling it a John doe is a Crime! Then trying to correct your mess by writing Trademark on the top is a Crime! But that was to stop me from realizing that Seasaddle is not SEASADDLE! So what is your problem? Is the problem the SHOOTOUT at the OK Corral.I was asked by the Big Racist Cherry… who is your Law firm.. I said they WERE my Law firm. So when XXX the first knew what they had done to me was not what I wanted filed.. They foolishly called him and then shot out my Tire. But I got a ride! Is that what this is all about! I know who has my Files AKIN to you know who! Tennessee and Virginia! OOPS and TEXAS! 08,677,556 is my Patent. 08,788,545 was S@@T put om to control my Property! You can’t change Se@##@e to SE%S%D%LE% no matter what you somehow get the Court to allow! I can’t believe the Court even allowed it!
    And stopping production doesn’t change a thing! It is still Piracy!
    The big racist Cherry Bomb beat up a Guy..I think because he appraoched me, and I told him to get lost.. But I’m not sure.. I heard he smashed his nose to pieces. He claimed it was his little Cherry Bomb that was in trouble. So they got the recently Institutionalized other Cherry to see if she could shoot straight. Thank God ,after the second shot, My tire blew out! The first one hit the Rim. I heard a Ding.. BOOM! And that is the marriage between the Whale and the Cherry. Making a Whale of a Tale. And the Postmaster in Henderson was never seen again… He had way too much sense. I hope he is still alive. I’d like to thank him for being a Professional!

  52. It’s no more or less “ironic” than the leader of Parents Against Kidnappers paying some kidnappers $10,000,000 to get his daughter back before they kill her.

  53. Such a response would be nonresponsive to the requirement. You would need to petition to have the requirement withdrawn, and you should do so quickly, because your clock is still running. See MPEP 704.14(c).

    Ed Jung will call his patent attorney about this as soon as he finishes his quail and truffle sandwich.

  54. That would have to be one huge license fee to cover the “purported” 30,000 to 60,000 patents.

    There is no legally mandated minimum licensing fee for a patent so the fee does not have to be “huge.”

    one has to wonder wher you got the is so-called information

    It was Dennis who noted that Xilinx is an “investor”. The “business model” for Intellectual Ventures is not a secret. The only “secret” is the list of patents that they own.

    The law should be changed to prevent patent ownership from being kept secret. My government granted the patent rights. Absent any legitimate reason to keep the information secret, it’s my right to know who owns a given patent and I shouldn’t have to look very hard to find the information.

  55. Hallo Ned. Thanks for asking the question, because I also want to know the answer to this elementary question.

    I say “elementary” because for the EPO it goes without saying, that no patent can issue to anybody until the EPO has completely vetted ALL other patent applications that have A published in the 18 months following the filing date of the application under examination. It does this just in case another Applicant filed for overlapping subject matter one day before the Applicant in the appln under examination. Those practising before the EPO are well familiar with this progress step, which the EPO calls its “top-up” search before it sends out its Notice of Allowance.

  56. seeking clarification, the issues you raise about common ownership and assignments are precisely why the request for information about ownership is bogus. It’s not the examiner’s (or the office’s) job to worry about common ownership. The office looks for prior art. If the most relevant art has a common inventor or is obviously commonly owned, then the rejections might be styled obviousness-type double patenting, or there might not be a rejection at all if 103(c) applies. On the other hand, if the most relevant art is not obviously commonly owned, then the rejections are simple obviousness rejections. In that case, if the applicant wants to overcome the rejection on 103(c) grounds, or via a terminal disclaimer, then it is up to the applicant to establish the facts.

    As I tried to point out earlier, I believe that all of the “common ownership” provisions in the law tend to favor the owner. The most conservative (and logical) approach the PTO can take, then, is to simply assume that there is no common ownership, unless it is readily apparent.

    Sure, I understand that it might be nice to augment the standard search by checking other applications/patents filed by the same owner. But the searcher is supposed to be able to find the most relevant art anyway. There is no legal basis that I’m aware of for forcing an applicant to disclose its corporate relationships.

  57. Regardless of a search requirement, IV knows exactly what its subsidiaries are. It is a lot more efficient for the Examiner to ask the applicant to provide that information. If the goal on both sides is to define the bounds of a valid patent, then IV should have no problem providing that information to help do so.

    If the Examiner suspects that the Applicant is playing a shell game, and that an inventor name search might not return a fully accurate result, then 37 CFR 1.105 seems like a perfectly fine tool to ask for clarification, and to introduce the risk of inequitable conduct if the Applicant does not honestly disclose the requested information.

  58. Such a response would be nonresponsive to the requirement. You would need to petition to have the requirement withdrawn, and you should do so quickly, because your clock is still running. See MPEP 704.14(c).

  59. OK, thanks.

    What if there are two pending applications disclosing and claiming the same or substantially the same invention, but are invented by different inventive entitites.

    What do you do?

    Do the the examiners coordinate to make sure only one patent actually issues?

  60. Ned,

    I’m not an examiner, so I don’t search. But I know that there’s no “search requirement” that the examiner review every pending application assigned to the assignee of the application under examination, or to any parent company of the assignee, or to any other “unidentified” subsidiary of any such parent company.

    The MPEP directs the examiner to do an inventor name search. The examiner of 11/880,432 should do that, and forget about making up “undue search burdens” where they simply don’t exist.

  61. Conspiracy theories aside, presuming IV is not a puppet of a global consortium of corporations putting on a puppet show to manipulate changes in the law to disarm would be competitors while distracting everyone from the fact that they are, through their puppet, scooping up all the IP, then I do understand that these “investors” had to become “investors” as part of their license agreements to settle the threats of lawsuits, thus giving IV the ability to enforce the patents against others on their behalf, while standing in the shoes of a competing entity, instead of a non-competing entity. And, yes, I do find it ironic that companies so vocally critical of “trolls” would not put their monies where their mouths are and fight IVs threats of suit tooth and nail, rather than funding IVs further so-called “trolling,” while rendering IV no longer a non-competing entity. How do you fail to see the irony in that?

  62. what,

    do you search for patent applications held by related companies regardless of claimed subject matter; or

    do you search for patent applications held by anyone that are disclosing and claiming the same subject matter regardless that they are prior art; or

    both?

  63. It’s always amusing to see sockpuppets defend the acts of a bloated patent troll. Are they self-interested shills defending their “investment”? Or just pathetic dweebs identifying with the greedy fatcats because it’s fun (you know, the same mouth-breathers who were excited to vote for Donald Trump)?

  64. What procedures do examiners normally follow to determine OTDP issues for applications they are examining? What is it about 11/880,432 that makes following those normal procedures an “undue search burden” for the examiner? Is IV’s ownership of an “unidentified number of subsidiaries” an acceptable grounds for a requirement for information necessary to the examination of the application? Does the examiner check the ownership of every application on his/her docket, and determine if the assignee is a subsidiary or a parent company, and then go about requesting a listing of every application owned by the parent and every subsidiary?

    The examiner should: 1) perform whatever search is necessary to comply with the requirements of the MPEP; 2) apply whatever art is found under its applicable section; and 3) make any OTDP rejections that may be applicable with art found during the search that doesn’t qualify under section 102. In other words, if the examiner finds another pending application that has common inventor(s) and/or common assignee(s) as can be determined by the search tools available to the examiner, then the examiner can make the OTDP rejection. It’s hardly an “undue search burden” for the examiner to perform the normal inventor name search required by the MPEP and a search of the assignment records for any published app assigned to Searete. If a published app is assigned, but not recorded, the examiner can use the published app under 102(a) or (e) if it qualifies. What’s so unduly burdensome about that?

    The requirements for a search are set forth in the MPEP very clearly. The examiner should simply perform the search as directed.

  65. That is certainly a possible approach. I hear the phrase “not persuasive” in the future, however. Perhaps they are looking for a stronger position and/or some backing authority. But implying that there had to be a nefarious purpose to taking an extension on this one seems like a huge stretch.

  66. The examiner can easily do an inventor and assignee search for Searete for any and all commonly invented and/or assigned Searete applications.

    But this is not necessarily true.

    Common ownership and assignments are not necessarily searchable (much less less findable) on the databases because there is no requirement that all ownership and assignements be made of record.

    And while I agree that companies and their sub-entities may provide some legal separation – that too is not an assumption that can be made across the board (it very much depends on the specific facts).

    So, with these clarifications in mind, how is the entity relationship a “bullsh!t requirement” ?

  67. If the request is improper, then you can say that in the response. Either way, it is a straight forward response. Don’t you agree?

  68. What is with this commentary at the end re: top flight patent litigators? Is this some sort of advertisement or recruiting pitch? Give me a break. They don’t need “top flight patent litigators,” their business is more akin to a mafioso-style shake down: they need big fat Italian “enforcers.”

  69. Wow. An Examiner sends you a blatantly improper request and because you don’t immediately bend over and provide the information you have something to hide? Great logic there. I guess that if one has nothing to hide you should always capitulate to such things. Remind me never to hire you as my lawyer.

  70. “what’s the whatever is right – there’s no reason why the examiner needs that information to assess patentability of the claimed invention.”

    Word.

  71. Ned, if they didn’t have anything to hide, responding to this particular request should have been straight forward. Since they haven’t filed a response as yet, may be they have something to hide…

  72. “purportedly…” ??

    “over any…” ??

    That would have to be one huge license fee to cover the “purported” 30,000 to 60,000 patents.

    In fact this is so preposterous, that one has to wonder wher you got the is so-called information. Did you crrp it yourself?

  73. Methinks, Dennis, that perhaps higher ups are guiding the examiner here. I would politely suggest that the commissioner himself my be behind this, seeking to make an example of this case in order to put an end to what the commissioner may perceive as a systematic abuse of the system.

    That said, I am not so sure IV is “hiding” anything by placing its properties in different LLCs. They may be doing this for tax purposes, for accounting purposes for their respective owners, or for other very good business reasons. So, if they have nothing to hide and have legitimate business reasons for their practices, we might see a serious response.

  74. 35 U.S.C. is not a tool for a bunch of lazy, greedy billionaire jackaxxes to extort money from companies that actually create and sell products.

    Word.

  75. He/she certainly can, if Searete is owned by IV. You can’t avoid double-patenting by creating a wholly-owned shell corporation and assigning one of the applications to the shell.

    Sure you can. But what you get instead is a plain-vanilla obviousness rejection, that can’t be overcome with a terminal disclaimer unless you establish common ownership at the time of the later invention.

    what’s the whatever is right – there’s no reason why the examiner needs that information to assess patentability of the claimed invention.

    The request for background is equally bogus. If the applicant doesn’t have background readily available, it can simply say so in its response.

  76. The examiner can’t reject an application assigned to Searete for OTDP over an application assigned to Intellectual Ventures.

    He/she certainly can, if Searete is owned by IV. You can’t avoid double-patenting by creating a wholly-owned shell corporation and assigning one of the applications to the shell.

    Rule 105 is not a tool for the examiner to require the applicant to do the examiner’s job

    35 U.S.C. is not a tool for a bunch of lazy, greedy billionaire jackaxxes to extort money from companies that actually create and sell products.

  77. The examiner can’t reject an application assigned to Searete for OTDP over an application assigned to Intellectual Ventures. Besides, the last published application to Intellectual Ventures was around 2007 or so. Pretty simple search.

    The examiner can easily do an inventor and assignee search for Searete for any and all commonly invented and/or assigned Searete applications.

    Rule 105 is not a tool for the examiner to require the applicant to do the examiner’s job.

  78. Hmmmmmm …. since their agreements with their “investors / members” purportedly exempts them from being sued over any of IV’s patents, how / why is IV able / willing to sue Xilinx?

  79. While the background of the invention is an optional portion of the specification (and thus cannot be required, see 37 CFR 1.51), how is the entity relationship a “bullsh!t requirement” ?

  80. It will be interesting to see how they respond to both of these bullsh!t “requirements for information.”

    Let’s hope these jokers do a better job prosecuting this application than they did in the application that resulted in the recent In re Jung decision. Of course, it’s hard to imagine they could do much worse.

  81. The listed inventors on this particular application form a veritable “who’s who” of inventors and include Paul Allen (Microsoft co-founder), Nathan Myhrvold & Ed Jung (IV co-founders), Ed Boyden (MIT neuor-professor), Daniel Hills (supercomputer expert), Casey Tegreene (IV’s Chief Patent Counsel), and others.

    The patent application claims a feedback system for surgical instruments to identify when the instrument moves beyond a particular physical position.

    The Office action referred to above was mailed on January 13, 2011. IV has not yet responded. The final due date (with extensions) is July 13, 2011.

    The bold patent examiner also demanded that the patentee include a background section:
    “As the present disclosure was submitted without a section describing the background of the invention and, more specifically, the state of the art at the time the present invention was conceived, Examiner also requests, under 37 CFR 1.105 (vi) and (viii), that Applicant submit with the response to this Office Action a detailed summary of the improvements included in the claimed invention as well as any technical information known to Applicant concerning the related art.”

    The examiner also asked for a new title — stating that the original title of “Surgical feedback system” was “not descriptive.

  82. In an Action on an IV Application (US 11/880,432), the Examiner made the following requirement:

    The present application is assigned to Searete, LLC, which appears to be owned by a larger entity, Intellectual Ventures. As the parent company appears to own an unidentified number of subsidiaries, searching for applications which may present double-patenting issues presents an undue search burden on the Office. In accordance with 37 CFR 1.105, Applicant is hereby requested to identify any and all applications owned by Intellectual Ventures or any subsidiary entity, regardless of their status. [sic] which are related to surgical feedback systems and methods.

    It appears the Patent Office is attempting to cut through some of IV’s games with 37 CFR 1.105.

  83. Thanks, D.

    From the link:

    Intellectual Ventures has been at the forefront of efforts promoting intellectual property as a legitimate business in its own right. Myhrvold even authored a white paper on the benefits of invention entitled “Invention – the Next Software.”

    More like: “Invention – the Next Pyramid Scheme”.

  84. If you think it ironic, then you have not been paying attention to who is pulling what strings for what desired ends.

  85. What delicious irony that the vast majority of the listed Technology Companies funding the so-called “Troll of Trolls” are members of the so-called “Patent Fairness Coalition” that has been so critical of the so-called “troll problem,” including:

    Adobe
    Amazon
    Apple
    Cisco Systems
    eBay, Inc.
    Google
    Microsoft
    Nvidia
    SAP
    Verizon
    Xilinx
    Yahoo

  86. we believe that the public should be able to study this portfolio as easily
    as it can study the portfolios of the world’s other great IP portfolios.

    As long as you buy it from us, that is.

  87. A recent report by Avancept attempted to look at IV’s patent porfolio.

    Based on USPTO assignment and corporation records, the report identified 1000+ shell companies associated that are believed to be associated with IV. The identified IV companies have been involved with the assignment of more than 10,000 patent families that lead the report authors to estimate that IV directly controls 30,000-60,000 patents and patent applications worldwide.

    link to avancept.com

  88. IV = World’s Fattest Troll

    the company has played extensive games in an attempt to stifle the utility of the patent ownership recording system

    More details would be welcome.

    Intellectual Ventures has hired John Desmarais and his small upstart firm of patent litigators. (Desmarais was formerly a top litigator at Kirkland & Ellis). IV’s local counsel is Bradford Black who also has his own two-person law firm.

    Anything for money, I guess.

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