Guest Post by Prof. Contreras: Shepardizing Patents

Shepardizing Patents, a guest post by Professor Jorge L. Contreras

 A Patent Information Experiment

On Saturday, June 12, I did a little experiment to see what information I could find about patents that I knew to have been challenged.  I first searched for U.S. Patent No. 7,446,338, issued in 2008 to Casio for a “Display Panel.”  As expected, the official USPTO Patent Full-Text and Image Database provided me with the text of the patent document and a link to its PDF image.  The USPTO’s new PatentsView interface gave me a bit more information, mostly about forward citations of the patent, including a spiffy world map locating the citations geographically.  Google Patents indicates when a patent has expired or is scheduled to expire and displays a timeline of litigation involving the patent. The ’338 patent was subject to litigation in the Western and Eastern Districts of Texas and at the Patent Trial and Appeal Board (PTAB).  Clicking on these entries took me to a database run by Unified Patents, which lists docket entries in these matters and is accessible via a free sign-up. But to see the Complaint in one of the West Texas matters, Unified Patents redirected me to a database operated by MaxVal-IP, which, on the day I searched, gave me the dreaded error “404- File or directory not found.”  I then moved on to PTAB action IPR2020-00320, filed on Dec. 18, 2019.  The Unified docket showed the IPR as terminated following a Mar. 12, 2021 settlement between Apple and the patent owner (now a company called Solas OLED) and allowed me to access the Termination Order.  But when I searched Lex Machina, the paid IP litigation analysis engine now owned by LexisNexis, I found that Samsung, one of the IPR plaintiffs, continued the IPR action after Apple settled, and that on June 6, the PTAB issued a Final Written Decision finding all challenged claims (1-3 and 5-13) to be unpatentable (the patent has a total of 22 claims).

When I searched for U.S. Pat. No. 5,710,001, one of Myriad Genetics’ BRCA1 gene patents issued in 1998, several claims of which were invalidated in Assn. for Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013), Google Patents displayed the initiation of the earlier district court litigation on its timeline, but the link took me to the paid Darts-IP database run by Clarivate, to which I don’t have access. Lex Machina only includes data about district court cases, but did correctly report that the District Court found all challenged claims of the Myriad patent to be invalid. The LexisNexis TotalPatent One service, which also allows patent searches, added information about patent families, fee status, assignees and, not surprisingly, links to judicial decisions and dockets.

And when I searched for U.S. Pat. No. 10,533,994, one of the fluidic system patents originally assigned to Theranos and asserted in 2020 against the maker of a COVID-19 diagnostic test, I found no indication that the founders of Theranos were under federal indictment for fraud, that they never developed the patented device, or that the current owner of the patent, Fortress Investments, had publicly pledged to license it royalty-free to anyone offering COVID-19 tests.

 

Contextual Patent Information

All of the information about a patent beyond its four corners – the validity status of its claims, whether it has been pledged to the public, licensed, made available for licensing, abandoned, declared essential to a technical standard, declared unenforceable for inequitable conduct and much more – is what Professor Colleen Chien has termed “contextual” patent information (Contextualizing Patent Disclosure, 69 Vand. L. Rev. 1849 (2016)).  This type of information can be extremely useful to innovators, researchers, litigants, businesses and other members of the public.  As Professor Chien writes, “contextual information can … signal which inventions are important from an economic point of view, are unimportant from a risk management perspective (insofar as they are expired or pledged to defensive uses), and may be the subject of broader technology and know-how transfers” (p. 1854).

Some contextual information, to the extent that it has been properly reported by the patent holder, is already relatively easy to find – this includes patent assignment records (through USPTO Patent Assignment Search and TotalPatent One), government interest statements (through the USPTO’s Patent View system), and maintenance/expiration data (through Google Patents and TotalPatent One).  This is a good start.

But as my informal Saturday morning experiment illustrates, contextual information is not always readily accessible or consistent, and even in the best case it is spread across a variety of public and private data sources (even the USPTO could do a better job of consolidating available information about a patent into a single record).  Thus, there is significant room for improvement.

 

The Genius of Shepard’s

I am pretty sure that every law student in the United States still learns to use the venerable Shepard’s citation system.  Those of us who were educated during the Bronze Age and earlier know Shepard’s as a set of ponderous, maroon-bound volumes that were last seen as set pieces for Harry Potter.  Today’s law students recognize Shepard’s as a component of the ubiquitous LexisNexis legal search engine.  But its basic function has remained the same.  Look up a judicial decision and Shepard’s will tell you, using simple color-coded icons (red stop sign, yellow triangle, green diamond, etc.) whether the case has been overruled, upheld, questioned and/or cited.  (For a fascinating history of Shepard’s and legal citation indices in general, see Patti Ogden, Mastering the Lawless Science of Our Law: A Story of Legal Citation Indexes, 85 L. Libr. J. 1 (1993)).

Source: http://lexisnexis.custhelp.com/app/answers/answer_view/a_id/1088155/~/shepards-signals-and-analysis

 

Shepard’s for Patents?

Trademark issues aside, there is no reason that Shepard’s (or a variation thereof – maybe using yellow moons, orange stars, pink hearts and green clovers?) can’t be adapted for patents.  The concept is simple.  The record for every U.S. patent could include a set of regularly-updated signals conveying key contextual information for that patent.  As with cases, the signals themselves would not convey detailed information, but would indicate that the interested reader should seek additional information (preferably through a hyperlink within the signal itself).

The implementation of such a system would admittedly require substantial up-front work, but several organizations including LexisNexis/Shepard’s/Lex Machina, Google and the USPTO, or some combination thereof, would be well-situated to undertake such a project.

If implemented, here are some of the contextual information categories that would be useful for such a patent signaling system:[1]

Invalidity – have some or all of the patent claims been disclaimed as invalid under 35 U.S.C. §§ 253(a) or 288, or challenged or invalidated by the PTAB or a court, or have claims survived challenges in litigation?  The appealability/finality of these determinations could be indicated, as could the ground for invalidity (e.g., 101, 102, 103, 112).

Enforceability – has the patent been rendered, or challenged as, unenforceable for other reasons, such as inequitable conduct, patent misuse or standards deception?

Licenses – has the patent been licensed on an exclusive or non-exclusive basis?  While many licenses are not publicly disclosed, licenses that are material to the business of publicly-traded companies are accessible through the Securities and Exchange Commission’s EDGAR database.  Other licenses can become available through litigation discovery, freedom of information requests and other means (see discussion here).

Available for licensing – is the patent holder willing to consider granting licenses to third parties, as shown in the USPTO’s recent Patents 4 Partnerships platform (discussed in a prior Patently-O post by Chien).

Pledges and Dedications to the Public – has the patent been pledged by its owner for public use (see, e.g., the Open COVID Pledge, which I discuss at length here, subjected to a binding “covenant not to sue” (as was the trademark in Already, LLC v. Nike, Inc., 568 U.S. 85 (2013)), or dedicated to the public under 35 U.S.C. § 253(b)?  There is currently no centralized repository for information regarding such commitments (see my proposal for creating a registry of pledges here), though various academic and nonprofit organizations maintain informal lists.

Standards Declarations – has the patent been declared essential to a technical standard?  If so, the patent holder may have committed to license it on royalty-free or fair, reasonable and non-discriminatory (FRAND) terms.  While some SDOs have searchable public databases of declared essential patents (e.g., ETSI and IETF), and some academic projects have consolidated some of this information, it is not generally linked to individual patent records.

***

In a world where patents play an increasingly important role in the technology development and innovation landscape, it is critical that reliable information about the status and history of patents be made available to the public.  The USPTO has made a public commitment to the “discoverability, accessibility, and usability of public patent and trademark data”, and as such it can help to collect, organize and display contextual patent data in a simple and user-friendly fashion. A uniform “Shepardization” system for patents, which clearly flags issues for potential licensees, defendants and innovators and alerts the public to the potential investment and threat value of individual patents, would help to make the markets in which patents exist more transparent and efficient.

[1] Chien, p. 1877, Table 2, offers a comprehensive taxonomy of many types of contextual patent information that exist, though not all of these lend themselves to the simple signaling system suggested here and some (such as assignment, maintenance, expiration and government interest status) are already be available in a relatively (though not perfect) format.

56 thoughts on “Guest Post by Prof. Contreras: Shepardizing Patents

  1. 8

    Happy Juneteenth, all. There were some of our colleagues who woke up on Thursday morning thinking that they had a Friday deadline, and then went to bed on Thursday with that deadline shifted back to the day after tomorrow. An excellent way to start the nation’s inaugural instance of the federal holiday.

    Meanwhile, between today’s Juneteenth celebrations and tomorrow’s Father’s Day observances, this should be an excellent weekend for barbecues. I hope that everyone has a fine time of both.

  2. 7

    If you read below, you see that I made a point that cannot be contradicted with facts. Chien’s paper is not even close to being a fair representation of how information is disseminated by the disclosure of a patent application. It is an argument presented by the anti-patent judicial activist and an intentional misrepresentation. Chien is obviously unfit to be a professor or have any role in IP policy of the USA.

    1. 7.1

      And the response to my assertions is any attempt by the defamers to smear me.

      But facts are facts. And Chien’s paper is g a r b a ge.

    2. 7.2

      I hear you – and would add that we really need an ethics oversight (with teeth) to control the level of wokeness from academia — while certainly within our neck of the woods in patent law matters, but widespread as well.

      1. 7.2.1

        I’d like to see Professor Jorge L. Contreras defend positively citing Chien’s paper because we all know he cannot.

        1. 7.2.1.1

          meh, academia citing academia is a pitfall of Peer Review when there is no teeth in the first play making sure that “the peers are being ethical.

          The Venn diagram of Meritocracy and Academia has a very narrow overlap.

  3. 6

    What about patents prosecuted by disbarred attorneys where the disbarment was for reasons of fraud?

    Perhaps those should be flagged as well.

      1. 6.1.1

        Is that something personal for you , Malcolm?

        Or do you just like to paint the picture that even patent attorneys can be (gasp) bad people?

        Your specific example indicates that the fraud involved robbed people of their chance to HAVE patented protection. You seem to want to make a different implication in wanting actual patents tracked for some other (unnamed) type of fraud.

        Or was this merely some odd attempt at gaslighting?

        Your year away did not do anything for your memes and scripts.

  4. 5

    Colleen Chien writes reprehensible nonsense below. This person has an intent to misinform people to weaken patents. The way it works is that the patent disclosure discloses the information and enables the inventor and others to write and discuss the information. What I see frequently is that I write a patent application based on a paper being presented at an academic conference. The act conveying the information to others skilled in the art is perform through technical magazines, conferences, blogs on the internet, and so forth. The patent application also is not meant for lay people to read and comprehend the information but people of ordinary skill in the art. And I have worked with 1000’s of inventors from start-ups in biotech to internet inventions from the huge SV corporations. The people of ordinary skill in the art can easily figure out the information from a patent application.

    Chien is a machine of misinformation to weaken patents. She is currently trying to get “stronger” trade secret legislation passed to dismantle the patent system in the USA. Chien is perhaps the greatest enemy of innovation in this country right now.

    “One of the main justifications for a patent system is that patents disclose
    useful technical information that others can learn from. However, patents are
    not performing this function well. The average patent is written in legalese, uses
    vague language, and is hard to connect to commercial activity. Legal scholars
    have responded with calls to improve the patent document through better
    writing, more examples, and better enforcement of patent doctrines. The courts
    have sought to ensure that patent specifications are robust and justify the grant
    of a monopoly. This follows from the Supreme Court’s characterization of
    technical teachings within a patent as the “quid pro quo” for the patentee’s
    exclusive rights.”

    1. 5.1

      And techdirt should take the practical note. If Chien gets her way and we end up with more trade secret legislation, then it will mean that the average inventor in SV will not be able to discuss their inventions, will not be able to move to another company without spending years learning new systems, and innovation will become company centric with huge walls preventing the sharing of any information. Your blog posts will be monitored and you will face criminal penalties for sharing the information you share with one another now.

      1. 5.1.1

        And get what you will be facing technical people.

        You will be some person alone in the world and the corporation will write you a certified letter telling you what you can and can’t do if you quit your job.

        You will be facing depositions about what you have and haven’t done at a new job, discovery of your emails and blog posts, and so forth to make sure that the technology that you developed at the old company is not used at the new company or disclosed.

        1. 5.1.1.1

          Notice too what Chien has done. What she is doing is trying to support stronger Trade Secret legislation by misrepresenting how patents work within the information sphere. She is trying to say that the information is only shared by the actually disclosure of the patents and then that the patents do a poor job of sharing the information, so we can just get rid of patents. This is specious argument and has no–NO–basis in the reality of information sharing.

          The patent application takes the invention and makes it public. Specialized people can read and understand the patent application. And it enables all to share the information and write it in other forms for other to learn.

          Either Chien so ignorant as to not know the basic facts of how a patent disclosure works, or she is working to get Trade Secret legislation passed by intentionally misrepresenting the effects of a patent application.

          1. 5.1.1.1.1

            I agree with you 100% on your assessment of Chien’s ignorance about the role of patents in advancing the disclosure of information.

          2. 5.1.1.1.2

            Some Chien context:
            link to law.scu.edu

            As I have postulated previously, attorneys operate under a code of ethics due in part to our proximity to law and the fact that our actions influence law.

            How in the world is it that teacher’s of law – those that influence those that may influence law – and are active in trying to influence law directly, do not have at least a double level of ethical constraints?

            What Chien writes is indeed misinformation – of an onerous and devious nature.

            And she should know better.

            She is well-decorated, well-schooled**, and FAR too imbued with Activist Privilege.

            ** The Academia bug does tend to go hand in hand with that Activist Privilege.

            1. 5.1.1.1.2.1

              I looked at the bio information at the link you provided. I did not see where she has ever represented a client in a patent application.

              Did I miss anything? If not, what does that tell us about the state of her expertise? And what does it tell us about her motivations?

            2. 5.1.1.1.2.2

              Wiper: “ The Academia bug does tend to go hand in hand with that Activist Privilege.”

              Does obsessive patent maximalism tend to go “hand in hand” with anything?

              Asking for a friend.

              LOL

              1. 5.1.1.1.2.2.1

                Oops, I got the Bobbsy Twins confused. Easy error to make …

              2. 5.1.1.1.2.2.2

                You say “patent maximalist” almost as if that were a bad thing.

                Since patents involve a Quid Pro Quo, and both sides benefit, you must realize that being a patent maximalist therefore must be a good thing.

                Or are you just resembling an arse?

        2. 5.1.1.2

          as for those certain technical people…

          Night Writer,

          The lemmings won’t understand that. They have been conditioned too well to stay in line and march over that cliff edge.

          The dystopia of Corporatacrazy already is upon us.

    2. 5.2

      And if any of the defamers (AAA JJ, the prophet, Ordinary, ipguy) wish to comment, note the factual assertions that I making and try to address them. Your responses have devolved into you merely calling me names. I guess the old adage on the internet holds, if you can’t fight the facts, defame the person.

      1. 5.2.1

        You defamers are just a disgusting lot. I don’t see why DC doesn’t ban all of you.

        MM and Martin had started to say that people on here were pedophiles with zero evidence as a way to defame them. Note to Martin: I will sue you and you will lose. Before you start calling me a pedophile again I suggest you consult an attorney you will find that calling someone a pedophile with no evidence has special statutory rights for the accused.

        The rest of you are about at that level where you don’t even bother to try to address facts. You just start calling me names.

        1. 5.2.1.1

          “MM and Martin had started to say that people on here were pedophiles with zero evidence as a way to defame them”

          Just as a bit of history, I recall you implying the same of MM.

          Really a shame that DC removes all these beyond-the-pale posts. I wonder if he keeps an archive of them somewhere?

          1. 5.2.1.1.1

            Ben that is a flat out lie. I never said that about MM nor did I imply it about MM. You just fabricated that to give cover for MM. You are just as bad as MM–you foul liar.

            1. 5.2.1.1.1.1

              It is not at all my intent to provide cover for MM. I was severely disappointed when he returned. While I would prefer a website that banned everyone who makes such accusations, I would happily settle for a website that included you and excluded him.

            2. 5.2.1.1.1.2

              I suppose it’s possible I’m misremembering or mistook another commenter for yourself. That doesn’t seem likely since I have a memory of being amazed that Dennis would allow someone to both 1) accuse other posters of child harm and 2) assert that a federal judge has a personality disorder. You’ve previously posted that one of the CAFC judges has a personality disorder, right?

              Perhaps you’d join me in asking Dennis to open up his archive (if it exists) of your deleted posts?

              1. 5.2.1.1.1.2.1

                NW has stated that J. Stoll is mentally unstable. Based on his personal interactions with her and on what others who have had personal interactions with her have said.

                But he’s the victim on this site.

                1. and here I though only those with Activist Privilege could deem someone a victim…

                  Oh wait….

                2. AAA JJ:

                  You have fallow. Take some time off and recalibrate yourself.

                  You have become like MM.

                3. … as I have noted, the moment that AAA JJ focuses on something outside of patent law, he becomes a mirror of Malcolm.

                  Something about the Far Left that turns off the ability to actually employ reasoning….

                4. So are you denying that you stated, on this site, that J. Stoll is mentally unstable? Because if you are then you are a liar.

                5. AAA JJ,

                  I did not read his reply to you as a denial of the statement.

                  That does not mean that you are NOT acting like Malcolm in your replies to his earlier comments.

                  Ad hominem attacks on a writer need not be false attacks to be ad hominem.

                6. AAA JJ:

                  Why did you add “but he is the victim on this site”?

                  The point of outing Stoll is that she is a public figure appointed to one of the most important position in innovation in this country. She was not fit nor were many of the others that Obama appointed. And you want to equate my comments with legally actionable defamation from anti-patent judicial activists that are probably paid bloggers.

                  Please recalibrate yourself. You used to be one of the solid people on this blog. You have lost your way.

                7. How are any of the comments about you “legally actionable defamation”?

                  I would say you’re losing it, but I’m not sure you ever had it, so…

                8. Decent enough counter point, AAA JJ.

                  Can there be “legally actionable defamation” on a blog in which the aggrieved party operates under a pseudonym not linked to that person’s true identity?

                  Regardless of the answer to that question, YOUR tactics when you go ‘off patent’ DO resemble Malcolm Mooney.

                  That you seem entirely oblivious to this only reinforces the mental shutdown associated with being ‘woke’ (and the evident 1984 effects of the Far Left).

              2. 5.2.1.1.1.2.2

                Ben, I have a large number of comments here archived for historical reasons, going back many many years.

                1. Ah yes, the “Golden Malcolm someday I will publish these” archives.

                  Your “year off” almost made me forget about all of these ancient script items.

              3. 5.2.1.1.1.2.3

                Ben, you are a l i a r. And a defense against defamation is not that you misremembered.

                Just any attempt at smea ring me because I am not anti-patent.

        2. 5.2.1.2

          Having the editor treat those that choose NOT to address counterpoints (and merely repeating the same propaganda points) was the cornerstone of one of my suggestions to Prof. Crouch quite some time ago in the cycles of “let’s have a better ecosystem.”

          No response (likely because comment count would plummet – look at the recent 300 comment thread).

          I have pointed out how some blogs ‘control’ the type of ad hominem propaganda drive-by posting by kicking people out. At that site, Marty HAS been kicked out and banned.

          1. 5.2.1.2.1

            “ Having the editor treat those that choose NOT to address counterpoints (and merely repeating the same propaganda points) was the cornerstone of one of my suggestions to Prof. Crouch quite some time ago in the cycles of “let’s have a better ecosystem.”

            ROTFLMAO

            Anyone here care to identify a single “counterpoint” of “anon’s” that has not been “addressed”?

            Projection like this is a major tool in the gaslighters aresenal, of course.

            1. 5.2.1.2.1.1

              For YOU directly, let’s start with the exceptions to the printed matter doctrine and then move on to the Grand Hall experiment.

        3. 5.2.1.3

          The comments I made here about anon and you being “pedos” were JOKES made in mockery of your relentless b.s. accusations about me (and others).

          The point was that if it was permissible here for you and anon (et al) to gaslight and simply fabricate complete nonsense and deny reality at every turn … including pretending that you never made this or that assertion — which you still do! or pretending that people hold positions which they have expressly denounced hundreds of times — then why should anyone behave differently?

          The problem is that DC was incapable or unwilling to understand that relentless lying/gaslighting by patent maximalist types here was at least as “uncivil” as, e.g., pointing out the FACT that a lot of patent maximalists here are Faux News regurgitating cr e e pazoids with the intellectual capacity of headless snails.

          1. 5.2.1.3.1

            to gaslight and simply fabricate complete nonsense and deny reality at every turn

            A false accusation from Malcolm.

            Coupled with mindless ad hominem – dressed as a justification for mindless ad hominem…

            …. Malcolm being Malcolm.

        4. 5.2.1.4

          “ you don’t even bother to try to address facts.”

          Has the ranting about “Biden judges destroying the patent system” started yet or does that come after the red-baiting silliness that you and your bff anon (remember his endless obsessions with Jane Fonda LOL) have traded in for so many years?

          1. 5.2.1.4.1

            red-baiting silliness”….?

            It’s just not silliness.

            That you may feel otherwise has no impact on the veracity of such things.

  5. 4

    Sure it would be nice but maintaining the integrity of all that information would be a lot of work.

  6. 3

    To add to those database searching obstacles to uncovering all the things that have been done to, or done with, an issued patent, there is the difficulty in uncovering the real party in interest providing litigation funding and/or control of a patent having a recorded assignment to a shell company.

    1. 3.1

      You do realize Paul that that type of information need NOT be captured – and is the type of data that Efficient Infringers use to pound the little guys (and what actually fuels the NPEs), right?

      You certainly can tell that you have been away from obtaining patent protection for innovators for FAR too long.

    2. 3.2

      “there is the difficulty in uncovering the real party in interest providing litigation funding and/or control of a patent having a recorded assignment to a shell company”

      Respectfully Paul, this is a feature, not a bug.

      An apt analogy is that it’s no one’s business who finances my (or your) home purchase . . . or if I (or you) elect to hold title in a non-public (ala’ “shell”) trust.

      1. 3.2.1

        Not quite. Principles like res judicata and collateral estoppel require that the identities of the real parties in interest be known.

        1. 3.2.1.1

          Greg has a point here – but that point weakens Paul’s original pro-Efficient-Infringer statements.

          In other words, Paul’s complaint is nonsense, as the court system ALREADY requires identities of real parties in interest to be made known in the Article III forum.

          What Paul really wants is to have ALL “who owns” information readily available BEFORE any court action. This aligns with the ability of already established, monied interests to pick and choose which patents to simply trample. This goes hand in hand with the FALSE narrative by the Efficient Infringers of the boogeyman of “Oh N0es, Tr011s.”

      2. 3.2.2

        Pro Se, are you aware that federal legislation was just enacted to disclose the extensive secret ownership of real estate by tax dodgers and worse criminals, which you posit here as a desirable feature? Plus, concealment of the “real party in interest” in litigation is not legal or ethical.

  7. 2

    Sounds like a business opportunity. Let us know how it goes.

  8. 1

    maybe using yellow moons, orange stars, pink hearts and green clovers?

    1. 1.1

      “…and new blue diamonds!”

      Apparently now it’s a different, er, constellation of marshmallows: “All the magically delicious lucky stuff: hearts, stars and horseshoes, clovers and blue moons, unicorns, rainbows and tasty red balloons!” (link to luckycharms.com)

      We’re dating ourselves.

      1. 1.1.1

        I prefer less to call it ‘dating ourselves’ and more to refer to it as ‘classic’ (recognizing that the actual line-up of marshmallow edibles may vary depending on the whims of marketing and may include temporary additions and/or variations – including such things as ‘swirled colors’ – do you remember that phase?)

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