Patent Engineering

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Patent Engineering IEOR 190G CET Center for
Entrepreneurship Technology
2nd Week Dr. Tal Lavian (408)-209-9112 Tlavian_at_cs
.berkeley.edu
225A Bechtel Mondays 400-545
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Some administrations

• Sign up for your presentation date
• 3 units class
• All students participate, 4-6 students work on
  the project
• Registration over at Telebear same registration
  as for the 2 units
• Wednesday Oct 8th instead of Monday Oct 6th
• Taking the deposition at the Law School
• Subject line on your emails to me
• IEOR 190G your subject line
• Field Trip to Court at SF
• Dyslexia

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Students Presentations

• Immersion vs. Sony - Abhinav Gupta
• Invitrogen Biotechnology - Christine

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Students Presentations

• Students presentations
• Topics on patent engineering in litigated cases
• Some examples from last semester
  http//www.cs.berkeley.edu/tlavian/spring2008/pat
  entEngineering.html

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Students Presentations

• Present in 10-15 min a patent litigation case
• Case summary
• Parties, dates, history, issue in dispute,
  results
• Engineering aspects of the dispute
• The patent(s), technology, product
• Engineering aspects of the infringement
• The engineering view vs. the legal view
• Any proposed design around

Volunteers to start next week
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Students Presentations

• Present in 10-15 min a patent litigation case
• Case summary
• Parties, dates, history, issue in dispute,
  results
• Engineering aspects of the dispute
• The patent(s), technology, product
• Engineering aspects of the infringement
• The engineering view vs. the legal view
• Any proposed design around

Volunteers to start next week
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Todays Students Presentations

• Immersion vs. Sony - Abhinav Gupta
• Invitrogen Biotechnology - Christine

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Last Week Review

• Patents as a business tool

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Recent Patent Verdicts SettlementsOr Why it
is really important?

• Alcatel/ Lucent v. Microsoft. - (2007) - 1.5
  Billion
• NTP Settled with RIM for 612M (plus 53M
  litigation plus verdict)
• Intergraph over 880M in settlement from patent
  litigation with Intel, HP and others
• Eolas v. Microsoft (2003). 506M Jury verdict
• Immersion v. Sony (2004). 82M jury verdict plus
  royalties
• increased (2007) to 150M
• vibration game controller - Microsoft settlement
  on 26
• Freedom Wireless v. BCGI (2005) 128 jury verdict
• Finisar v DirectTV (2006). 103M (7924)Jury
  verdict plus injunction
• Tivo v. EchoStar (2006). 74M jury verdict plus
  injunction
• Acacia - 60M in licensing revenue (2004-26)
• Forgent - 100M in licensing revenue 2004-2006

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NTP

• Patent Troll A company with no products and
  little infrastructure that amass patents with the
  intention of prosecuting offending companies
• NTP is considered by many to be a patent troll
• Co-founded by a Chicago Engineer and his patent
  attorney in 1990 to protect his inventions.
• Main attraction was a system to send emails
  between computers and wireless devices

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The NTP Case

• Late 90s, RIM hit the market with the BlackBerry
• Had around 850 worth of sales that was
  considered to infringe upon NTPs patents
• NTP contacted RIM and offered to license their
  patent, RIM didnt respond
• NTP and RIM at first agreed to settle for around
  450 million, but the agreement disintegrates
  over the summer

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The Case

• US Patent Trade Office decides to reexamine the
  patents that NTP held after RIM presents evidence
  of prior art.
• After dragging their feet in court, RIM agrees to
  a settlement of around 650 million, and to
  license the technology from NTP.
• Agreement is that the money will not be returned
  even if the US PTO finds the patents held by NTP
  to be invalid
• RIM was losing customers and companies and law
  firms were delaying Blackberry upgrades until the
  case was resolved, so it was in their best
  interest to resolve it quickly.

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Patent History

• Created by Congress in 1790
• to promote the progress of science and the
  useful arts by securing for limited times to
  authors and inventors the exclusive right to
  their respective writings and discoveries.
• Article 1, Section 8
• July 31, 1790 1st Patent
• Samuel Hopkins patents potash
• Cost 4.00
• Reviewed by Cabinet Members
• Thomas Jefferson Secretary of State
• Henry Knox Secretary of War
• Edmund Randolph Attorney General
• George Washington President

www.uspto.gov, www.ipo.org
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Bell Labs Case - The Technology

• Late 1980s, Inventors James Johnston and Joseph
  Hall (Bell Labs, division of ATT)
• Quantizing noise approximation of continuous
  range by values by relatively small set of
  discrete values.
• Invented method and apparatus to produce
  quantized audio signal using interpolated scale
  factor.

Advantage - Data compression Same or
similar signal can be represented with less data
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Bell Labs Patents

• Filed Dec 1988
• Assignee Bell Laboratories
• U.S. Patent No. 5,341,457, Perceptual Coding of
  Audio Signals, to Joseph L. Hall and James D.
  Johnston (Dec 1988)
• U.S. Reissue Patent No. RE39,080, Rate loop
  processor for perceptual encoder/decoder, to
  James D. Johnston (Dec 1988, Reissued Sep 1994)

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Bell Labs MS Case

• In 2003, Lucent files suit against Gateway, Dell,
  and eventually Microsoft in U.S. District Court,
  San Diego, CA.
• Claim Infringed two patents developed by Bell
  Labs in MP3 compression and playback within
  Microsoft Windows Media Player
• Sought 0.5 royalty of total Windows computers
  sold

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The Case

• Microsoft claims
• Received license for MP3 technology from
  Fraunhofer Institute (Bell Labs parent research
  organization) for flat 17 million.
• Loop processor not applicable for WMP
  application.
• 0.5 rate exorbitant! Only one of 10,000
  features

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The Results

• Ruling agreed that patents were developed by Bell
  Labs before joining with Fraunhofer to create MP3
• Rights to patents exceeded value of 17 million
  paid for license
• February 22, 2007, Alcatel-Lucent awarded record
  1.5 billion in damages from Microsoft. Jury
  unable to find willful infringement for 4.5
  billion damages.
• August 6, 2007, Microsoft granted retrial.
  Verdict overturned based on insufficient evidence
  by Judge Rudi Brewster.

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More Patent History

• 3 Patents Awarded in 1790
• First patent law enacted
• 1802 US Patent and Trademark Office Created
• Responsibility of granting patents/registering
  trademarks
• Atomic Energy Act of 1954
• Excludes nuclear purposes/atomic weapons
• American Inventors Protection Act (1999)
• Most recent revision of patent laws
• New Legislation debate - 2008

www.uspto.gov, www.ipo.org
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US Constitution

• Rights are derived directly from US constitution,
  Article 1, section 8
• granting congress the power to promote the
  progress of science and useful arts by securing
  for a limited time to authors and inventors the
  exclusive rights to their respective writings and
  discoveries

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What is a Patent?

• A form of intellectual property
• A grant of property right to an inventor by the
  government
• Prevents the invention from others for the
  duration of the patent
• In return, the inventor must fully disclose the
  details of the invention to the public

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What is a Patent? (Cont.)

• Right to Exclude the Making, Using, Selling ,
  Offering for Sale or Importation of a Specified
  Invention
• Limited Time (Typically 20 Years from date of
  filing with USPTO)
• Limited Geographic Territory (issuing country)
• Monopoly awarded by the Government forsharing
  the Invention with the public

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Protecting the Idea

• Protecting the idea, not the embodiment
• Allowed to claim broader than the physical
  embodiment
• Protection
• Limited rights during the life of the patent
• Filing to end
• Issue to end

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What can be patented?

• Everything under the sun made by man.
• Products things
• Processes ways to make things
• Methods ways to do things
• Improvements better things
• Defined Classes
• Article of Manufacture
• Machine
• Composition
• Process
• Some more
• Business Methods
• Services
• Software

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Criteria Legal Standards

• Novelty
• Does not exist in the prior art
• Not previously disclosed to public
• OK if Modification/Improvement of an existing
  product/process, or use of something old in
  new/different way
• Usefulness - Utility - Performs a useful function
• Non-obviousness
• Non-trivial - It would not have been obvious to
  one skilled in the art to combine multiple items
  in the public domain to arrive at or show the
  invention
• Not Engineers normal sense of obviousness!
• Enabled

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What Is Not Patentable

• Laws of nature (wind, gravity)
• Physical phenomena (sand, water)
• Abstract ideas (mathematics, a philosophy)
• Algorithms per se
• Anything not useful, Novel and Non-Obvious
  (perpetual motion machine)
• Inventions which are offensive to public morality
  or designed for an illegal activity

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Novelty

• First to invent (vs. first to file)
• Conception
• the conceiving of the idea of the invention
• Reduction to Practice
• the construction or testing of the invention
  (actual)
• or the filing of a patent application
  (constructive)

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Statutory Bars

• Patent rights to an invention will be lost if
• The invention is used publicly
• The invention is sold or offered for sale
• The invention is published in a printed
  publication or a patent
  
• Before the filing of a patent application
• (more than one year in U.S.)

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Prior Art

• Information prior to the date of a patent
  application
• Existing relevant technology
• Can be your own technology or acts

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Foreign Standards fro Prior Art

• Absolute novelty
• The invention must not have been disclosed or
  available to the public at any time before the
  filing of the application

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Obviousness

• A patent may not be obtained if the differences
  between the subject matter sought to be patented
  and the prior art are such that the subject
  matter as a whole would have been obvious at the
  time the invention was made to a person having
  ordinary skill in the art
• The obviousness standard prevents the patenting
  of relatively insignificant differences between
  the invention and the prior art

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Obviousness (contd)

• Prior art can be combined in an obviousness
  determination, that is, more than one reference
  can be cited by the examiner as showing different
  features of the invention which, taken together,
  render the invention obvious
• Obviousness is inherently a subjective
  determination, as the examiner cannot be, or know
  the mind of, the hypothetical one skilled in the
  art.

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Utility

• The invention must satisfy the useful
  requirement of the patent laws
• This is easy requirement for high-tech inventions
  
• The patent system was created as a reward for
  inventive contributions to society, not for
  merely creative ideas that have no application

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Utility Patents

• What is patentable?
• New and useful
• Process
• Machine
• Manufacture
• Composition of matter
• Improvements
• What is unpatentable?
• Prior existing technology

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Utility Patent Types

• Two types of US Utility Patents
• Provisional application
• Non-Provisional application
• Continuation
• Divisional
• CIP
• PCT International

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Other Types of Patents

• Design Patents are issued for
• Novel, non-obvious
• Ornamental design in an article of manufacture
• In other words, for its appearance
• The term of a design patent is 14 years from the
  date of grant
• Plant Patent
• new or discovered asexually reproduced plant

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Types of Patents
Type Is for Term s
Utility Function, use 20 years 6,214,874
Design Appearance 14 years D202,331
Plant Asexually reproduced 20 years PP10123