CES 2012: Innovations in Communications Technologies

CES 2012 is just few days away and as always even this year some never heard before innovations will be unveiled at Las Vegas from 12-14th Jan. In this article we are throwing lights on exciting products in communications field that we might see at CES 2012.

Local area connectivity:

Wireless local area networks were confined to speed of 1Gbps as of now. But come CES 2012 and you will find implementations of 802.11ac by Buffalo, Broadcom and Redpipe which can offer data transfer speeds of 4Gbps. If 4Gbps is not enough for you then you might wanna have a look at Wilocity’s display of 802.11ad implementation which pushes data transfer speeds to 7Gbps.

These were the products which enhanced the underlying technology. Now let’s have a look at products which are using existing local area connectivity technologies in newer innovative way. Samsung’s Dual View Camera can send photos over wi-fi so no need to worry about memory getting full. Taztag is coming up with Tazpad which they claim is first NFC tablet in the market. Wohoo fitness has comeup with BlueHR product which when strapped on waist can monitor your heartbeats and send it over blueotooth to your iPhone and some other supported smartphones.

Apart from this Wi3 has come up with WiPNET which can convert traditional coax cable communications to Ethernet/WiFi based digital communication

Also NXP has planned some NFC demos where in use of NXP NFC chips for MCU and automotive applications will be displayed.

Our Favorite: Wilocity’s 802.11ad implementation

Sector Focus: Higher Speeds

Wide Area Connectivity:

4G LTE based handset was introduced in CES 2011. This year WAC has gone one step ahead and Wilson Electronics has come up with Signal Booster for 4G LTE. Novatel wireless has developed MiFi which sets up mobile hotspots to which 4-5 devices can be connected. Pegastick has combined 4G 3G nd 2G i.e. EDGE, HSPA+ and LTE respectively on one USB datacard.OnStar is displaying prototype where in 4G LTE technology is optimized for use in automobiles.

Microsoft, Nokia, Samsung and HTC are expected to launch 4G LTE supporting headsets.

Our Favorite: Pegastick

Sector Focus: Integration and enhancement

pegastick.JPG

Cloud Based Services

Cloud based services seems like a theme of CES 2012, with number of conferences on cloud based services and many other products implementing it. Lenovo is gonna display functioning of its new cloud based storage system while Oplink Communications has come up with C4MI (Cloud for Mobile Interactive) which will allow sensors to access cloud enabling them to process outputs. Fordela has developed a platform for stream multimedia content over the cloud to any device. One outstanding innovation has come from Sanyo, product is called HyperDriveCloudFTP. When USB drive is connected to CloudFTP, drive can act as a wireless file server.

Our Favorite: CloudFTP

Sector Focus: Richer content on cloud

cloud-ftp.JPG

Written by:

Premraj Narkhede

Premraj is a Senior Business Research Analyst at Dolcera with expertise in communications and emerging technologies

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How much money does Universal Display Corporation really make?

Universal Display Corporation announced its financial results for the third quarter of 2011 in the past week. This is the first release of financial information that Universal Display Corporation has made since it signed a new agreement with Samsung Mobile Display. Dolcera presents an analysis of the announcement and the events surrounding it.

Universal Display Corporation reports its revenues in two segments: commercial revenue and developmental revenue. Commercial revenue relates to the incorporation of the company’s OLED technologies and materials into its customers’ commercial products, and includes commercial chemical revenue, royalty and license revenues, and commercialization assistance revenue. Developmental revenue related to OLED technology and material development and evaluation activities for which the company is paid, and includes contract research revenue, development chemicalrevenue and technology development revenue. Here, we mainly look at the commercial revenue of Universal Display Corporation.

Commercial revenue is reported in three parts: commercial chemical revenue, royalty revenue and license fees. In the results of third quarter of 2011, the revenue from royalty and license fees have been reported together. Unfortunately, since the past two years, Universal Display Corporation has been reporting only the change in revenues in each of these categories instead of the actual revenue figures. Some financial results announcements in the past have failed to provide quarterly information at all, instead providing information for the past 9 months or the past year as a whole.

Using historical financial results, we have reconstructed the commercial revenue earned by Universal Display Corporation in the three categories. The following table shows the quarterly commercial revenue by category in the past 5 years:

Quarter

Total
Commercial Revenue

Commercial
Chemical Revenue

Royalty
Revenue

License
Fees

Q1 ‘07

$1,440,900

$1,313,000

$0

$127,900

Q2 ‘07

$392,926

$229,631

$31,395

$131,900

Q3 ‘07

$1,368,201

$1,185,050

$16,051

$167,100

Q4 ‘07

$1,226,021

$871,996

$13,871

$340,154

Q1 ‘08

$1,555,065

$985,560

$267,565

$301,940

Q2 ‘08

$1,395,487

$938,330

$176,447

$228,570

Q3 ‘08

$1,324,924

$1,025,000

$148,261

$151,663

Q4 ‘08

$1,355,282

$803,000

$204,565

$232,959

Q1 ‘09

$1,369,137

$686,165

$278,179

$237,895

Q2 ‘09

$1,239,056

$569,600

$257,959

$244,600

Q3 ‘09

$1,621,416

$808,200

$401,718

$244,600

Q4 ‘09

$1,888,490

$705,900

$623,699

$367,676

Q1 ‘10

$1,830,147

$728,400

$565,877

$344,655

Q2 ‘10

$1,951,892

$841,170

$591,523

$327,984

Q3 ‘10

$2,836,587

$1,642,600

$810,017

$244,600

Q4 ‘10

$4,511,121

$2,527,500

$1,503,647

$177,532

Q1 ‘11

$4,744,075

$1,864,485

$1,796,705

$871,965

Q2 ‘11

$5,278,704

$2,402,130

$1,753,685

$911,970

Q3′11

$9,881,553

$5,107,213

$4,615,245

Source: Company filings

As expected, the revenues have shown a huge jump in the last quarter. Much of this can be attributed to the new agreement between Universal Display Corporation and Samsung Mobile Display. This agreement runs till 2017.  For the first time, Universal Display Corporation has explicitly mentioned the exact revenue it has received from Samsung Mobile Display from license fees. The company has received $3,246,315 from Samsung Mobile Display under its license agreement so far.

Apart from licensing fees, the agreement also increases the commercial chemical sales of Universal Display Corporation. Under the 2005 agreement, the company was the supplier of red PHOLED materials to Samsung Display Corporation. With the August 2011 agreement, Universal Display Corporation now supplies both red and green PHOLED materials to Samsung Display Corporation. Prior to August, Samsung Display Corporation sourced green PHOLED materials from Duksan, a Korea based company. There are no competing manufacturers of red and green PHOLED materials. The new agreement effectively doubles the per unit chemical sales of Universal Display Corporation.

In the following section we calculate the revenue that Universal Display Corporation receives from each display unit sold. All calculations have been performed using publically available data.

In the third quarter of 2010, 413.20 million mobile phone display units were shipped amounting to total revenue of $ 3,380 million. AMOLED display panels had a revenue share of 10.7% of the mobile display market. This results in the AMOLED mobile display panel revenue to be $ 361.66 million. The volume of AMOLED displays was 13.5 million units. In the AMOLED display market, Samsung Mobile Display had a market share of 98.3%. Thus, Samsung Mobile Display sold 13.27 million AMOLED display units and revenue from AMOLED displays units was $ 355.51 million. (Source: DisplaySearch)

Universal Display Corporation announces in all its filings that Samsung Mobile Display is the chief source for all of its commercial revenue. We consider that Samsung Mobile Display is solely responsible for all of Universal Display Corporation’s commercial revenue. The assumption is reasonable given that the period under study is the third quarter of 2010 when Samsung Mobile Display was the only major customer of Universal Display Corporation.

Universal Display Corporation’s royalty revenue for the fourth quarter of 2010 was $ 1,503,647 million. The royalty revenue is considered from the fourth quarter as royalty is paid by Samsung Mobile Display for goods sold in the previous quarter. As calculated earlier, Samsung Mobile Display’s third quarter 2010 revenue from sale of AMOLED display panels was $ 361.66 million. The royalty rate for the agreement between Universal Display Corporation and Samsung Mobile Display thus works out to be 0.423%.

The total number of AMOLED display units sold by Samsung Mobile Display in the third quarter of 2010 was 13.27 million. The royalty received by Universal Display Corporation for these units was $ 1,503,647 million. Thus, the royalty revenue per unit is $0.1133. The chemical sales revenue of Universal Display Corporation for the third quarter of 2010 was $1,642,600. Thus, the chemical sales revenue per unit is $0.1238. The key assumption in this case that the PHOLED material inventory levels of Samsung Mobile Display did not significantly change during the period.

The total revenue that Universal Display Corporation received from sale of each mobile display unit is $0.2371. It is to be noted that the period considered in this analysis is the third quarter of 2010 which is prior to the signing of the new agreement between Universal Display Corporation and Samsung Mobile Display. The August 2011 agreement doubles the chemical sales revenue per unit of AMOLED display panel sold for Universal Display Corporation. Thus, Universal Display Corporation receives $0.3609 for each AMOLED mobile display sold.

The above scrutiny only covers a part of an exhaustive industry analysis. For a detailed analysis of the subject matter, write to us at: info@dolcera.com

Written by: Kunal Krishna

Kunal is a Senior Business Research Analyst at Dolcera with expertise in cleantech and emerging technologies

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The Great Auto Electrification Race

Electric cars have been around for quite some time but taking forever to become a mainstream way of life. With the increased awareness about global warming, greenhouse gases, and rising gas prices there are stronger and stronger incentives every year for them to become a reality.

The US government, and auto industry have realized the same and thus you see the likes of the Chevy Volt (beautiful car, and love the ad) especially coming with a tax credit of 7.5 K on electric cars pitting them very competitively in the 20-30K range. California, and some other states provide a further subsidy of 5K i.e. 12.5K the government is spending on incentivising every electric car.

Which is great, but US is not the only country which has woken up to the reality. US contributes to about 17% of the greenhouse emissions globally, but China contributes about 24%. The Chinese government has realized the importance of Clean Tech and investing heavily into the same already being the biggest market for Wind Energy, and expected to leapfrog US & Europe in Electric Car penetration.

The electrification race has been compared by many to the space race in the 60s, and if that is true US is losing out. China has 120 domestic car companies compared to US’s 13, and there are 33,200 employees working in Lithium battery industry in China compared to 1,100 in the US. But the most important part is the money the Chinese government is putting behind the industry. US govt has decided to invest 5 Bn USD, but the Chinese government is pumping 17 Bn USD.

China is also being slightly smarter (or cunning) about how it gives the money away, they now have 19,300 USD in subsidies on each electric vehicles. GM has decided to develop cars in China with it’s partner SAIC. This combined with the fact that gasoline is twice as expensive in China than in US explains a lot. China has a lot of coal, and able to produce electricity cheaper. It is not just about a more sustainable option environmentally but also economically.

The catch though is China realizes that it is set to be the biggest Auto market in the world (GM already sells more cars in China than in the US), and that it has a lot of bargaining power in allowing foreign players to play in China. It is asking for technology transfer in one of the three core technologies
1. Electric Motors
2. Complex Electronic Controls
3. Power Storage Devices (whether batteries or fuel cell)
to qualify for the subsidy.

This is the same way China built it’s industries in big industries like Wind Turbines, High Speed Trains, and Water Purification.

It’s not a bad deal for the players also, China is hoping to have 5 Mn electric cars on roads by 2020, assuming that GM can get 15-20% market share i.e. 14.475 Bn USD in licensing for the technology! This is thus a model where those confident on their success would be more than happy to share, while others will prefer to stay out e.g. Nissan

By: Pramath Malik

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Sources of Apple’s Innovation

The Tech world is buzzing in 2011. Apple, Android, and Patents seems to the most recurring themes conversations converge too. Apple is a great success story, and literally becoming the apple of everyone’s eye by becoming one of the most valuable companies in the world, consistently innovating and generating higher and higher revenues. They recently posted one of their best quarters ever.

Many see Apple’s rise as a challenger to the Open Innovation theories, and positing that in technology a closed system offers you much more strength and sustainable innovation coming up with products which have completely re-shaped markets.

Of course Apple had a visionary in the form of Steve Jobs, but technologies don’t just develop “magically” and systems don’t just fall into “amazing” perfect tandem on their own. So, we at Dolcera decided to look into what exactly are the sources of Apple’s innovation.

Apple being a very secretive company, it was hard to find a lot of inside information. But one of the best sources of “innovation” data is the legal document which one gets for innovating - a patents. We decided to look at the patents of Apple and get an idea of the true sources of Apple’s innovation.

In our opinion, the key sources of Apple’s innovation are :
1. Expenditure on research,
2. Acquisitions, and
3. Patent Deals
Apple definitely has a strong in-house research. But every time Steve Jobs wished to make one of his “visions” a reality, it often required Apple to go out and spot “sources” which can be acquired, or taken the technology from. Some prime examples are acquisition of Fingerworks which developed the Multi-Touch for iPhone, and technology licensing from LiquidMetal which gave Apple products their great aesthetics among many others.

We have tried to provide a basic story flow in the visual below.

We are also conducting web seminars to detail on the findings of our research, and how you too can do the same. For details contact us at - info@dolcera.com

Sources of Apple's Innovation

 Author: Pramath Malik

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Google Acquires Motorola Mobility to Fortify its Presence in the Mobile Market

Google Inc., the Internet giant, has signed a $12.5 billion agreement to acquire Motorola Mobility, the legendary mobile phone and set-top box manufacturer. As per the agreement, Google will pay $40 per share in cash, which was a 63% premium to the closing price of Motorola Mobility shares on August 12, 2011.

But what is impressive about the deal is the purpose behind it. After all, Google generates its revenue from searches i.e. it auctions off search words to clients that want to advertise alongside the responses. On the other hand, Motorola Mobility manufactures handsets and set-top boxes that carry TV channels to homes. Interestingly, Motorola Mobility is the No.2 provider of set-top boxes after Cisco.

So why an Internet mogul be interested in acquiring a hardware company?

The key to the story is Android, Google’s OS for mobile devices. At present, Android has surpassed Apple and Nokia smart phones and already has signed deals with 39 handset manufacturers such as Samsung, HTC, LG Electronics, Sony Ericsson, etc. As we can see from this, Google is not just an Internet-based company but is part of the mobile business in full swing. Although Google offers the Android OS for free to handset manufacturers, it is a cynosure when it comes to patent infringement lawsuits. Companies from the likes of Microsoft, Oracle, and Apple have filed multiple lawsuits against Android.

As a result, in a bid to strengthen its patent portfolio, Google has acquired Motorola’s 17,000 patents (Click here for information on Motorola Mobility’s patent portfolio). The acquisition not only eliminates Motorola from being a potential threat in terms of filing a lawsuit but also arms Google so that it can defend itself in lawsuits as well as launch suits of its own.

In a latest turn of events, just last week HTC, the Chinese handset manufacturer, filed a patent infringement lawsuit against Apple. As per the appeal, HTC stated that Apple was infringing nine US patents related to wireless communications and mobile phone displays. The interesting bit is that Google had assigned those patents to HTC and some of those patents it had acquired from Motorola Mobility.

The ownership pathway for the nine patents is shown below.

The first five patents were used to strengthen HTC’s Delaware suit against Apply while the other four have been used for a new lawsuit against apple.

Patent Ownership Pathway

S.No

Patent No.

Title

1

US6473006 Method and apparatus for zoomed display of characters entered from a telephone keypad

2

US6708214 Hypermedia identifier input mode for a mobile communication device

3

US6868283 Technique allowing a status bar user response on a portable device graphic user interface

4

US7289772 Technique allowing a status bar user response on a portable device graphic user interface

5

US7020849 Dynamic display for communication devices

6

US5418524 Method and apparatus for over-the-air upgrading of radio modem application software

7

US5630152 Communication protocol between master and slave device with register information sharing

8

US5630159 Method and apparatus for personal attribute selection having delay management method and apparatus for preference establishment when preferences in a donor device are unavailable

9

US5302947 Method and apparatus for loading a software program from a radio modem into an external computer

Clearly, Google is out to avenge the lawsuits against its adopted child Android and defend itself in any way.

In addition, the other side of the story is the set-top box business, the acquisition of which will facilitate Google becoming a significant supplier of Internet-borne TV content on Android-equipped mobile devices and also generate revenues from TV advertising, which is worth $70 billion.

In all, Google’s deal with Motorola Mobility is not just a defensive action against infringement lawsuits but also a smart move in terms of boosting its ad revenues from Internet-borne TV content.

Author: Charanjeet Singh

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Broadcom acquires Netlogic

Broadcom plans to acquire chipmaker Netlogic Microsystem, a maker of networking equipment. At USD 50 per share, Broadcom has agreed to invest 3.7 Bn USD in the deal. This is the biggest acquisition by Broadcom hence has many scratching their heads to understand the motivations of Broadcom, and their future plans as Broadcom has agreed to pay a 57% premium over the closing price on September 9th, 69% premium over average trading price for last 20 days.

Strategically, CEO Scott McGregor stated that the deal will double Broadcom’s market in networking equipment, which takes a substantial 23% share of their sales.

Financially it seems to make sense, as Netlogic has higher gross margin (55%) than Broadcom (52%), and the deal is expected to increase EPS (earning per share) by 10 cents as claimed by Broadcom.

Netlogic is known for it’s processors which help transfer multimedia (video), and other data over the internet efficiently. With a surge in consumption of data due to smartphones, and requirements of these has been on a rise.

This in effect is thus one of the three biggest deals caused by “smartphone phenomenon” with the other two being
1. Nortel patent portfolio sale for 4.5 Bn USD
2. Google’s acquisition of Motorola Mobility for 12.5 Bn USD

The exorbitant price tags associated with all of these deals have shocked many. So while Nortel, and MMI had patents being the primary asset, we decided to dig into Netlogic’s patent portfolio.

Patent by Priority year

Patents published every year

Netlogic though not a giant portfolio like Nortel, has been slowly chugging about and innovating in the areas of :
1. Accessing, addressing or allocating withing memory systems or architectures
2. Associative or content-addressed stores
3. Transmission of digital information
4. Methods for processing data
5. Digital computing or data processing equipment for specific functions

Patent Taxonomy for NetLogic

These are closely related to the knowledge-based processors, multi-core embedded processors, and digital front-end processors which Netlogic will bring to Broadcom.

Some of the key patents of Netlogic too are in these areas. The 5 most cited documents of Netlogic are as following :
1. US6154384 - Ternary content addressable memory cell -  119 patent citations
2. US6237061 - Method for longest prefix matching in a content addressable memory - 117 patent citations
3. US6137707 - Method and apparatus for simultaneously performing a plurality of compare operations in content addressable memory device - 105 patent citations
4. US6317350 - Hierarchical depth cascading of content addressable memory devices - 64 patent citations
5. US6240485 - Method and apparatus for implementing a learn instruction in a depth cascaded content addressable memory system - 52 patent citations

Broadcom has 214 patent families in IPC classes G06F 12, and G11C 15. And it gains 106 patent families from Netlogic. These two are the key technology areas in which the patents of NetLogic fall.

But besides the intellectual assets, Broadcom is also gaining the employee, among whom will be prolific inventors :

Key inventors at NetLogic

Given the trend of increasing data consumption, the move makes perfect sense from Broadcom’s perspective. Wether 3.7 Bn USD is a fair price, only time will tell

Author: Pramath Malik

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Apple veering away from Samsung for supplies of A6 processors from 2012

Samsung had been a long term supplier for Apple Inc for the products -LCD screens, flash memory & processors for mobile devices. In January 2011, Apple Inc placed an order on Samsung for mobile processors, forcing Samsung to quadruple their capacity from 5,000 sheets of chips a month to20, 000 sheets of chips a month. In Feb 2011, Apple Inc and Samsung signed a deal worth $7.8B for supplying various components. In Apr 2011, Apple Inc filed a law suit against Samsung, alleging that Samsung copied the design of its mobile devices and developed Galaxy series of mobiles. The Taiwan Semiconductor Manufacturing Company (TSMC) may hamper the chances of Intel introducing world’s first 3D chips into the market, bringing the chip to the market towards the end of 2011 before Intel. Industry sources suggest that Apple Inc is going to place orders on TSMC for A6 processors towards mid 2012 shunning Samsung which is the present supplier of A4 & A5 processors for mobile devices.

What is happening?

Apple Inc has been known throughout the history of the company for multi-pronged strategy resulting in destroying the competition, superior technology and increasing the shareholder value under the hegemony of Steve jobs, the founder. The company usually attacks from all the directions to maintain its position in the market. It is evident from the sequence of events detailed above; that the strategy of Apple Inc is slowly evolving in the fast changing technical environment.

The following strategic reasons of Apple Inc may help us understand the situation better,

  1. To protect their IP with preemptive attacks on competitors and also to have a preview of the future products of Samsung.
  2. To maintain the secrecy of new launches and generate curiosity among the public about new launches. Basically, Apple is thriving on the hype generated for its smart phones and other devices apart from bringing breakthrough technologies into the market.
  3. To reduce the costs of manufacturing as TSMC is cheaper than Samsung. TSMC is a contract manufacturer of chips. They are not a threat to Apple Inc.
  4. Samsung is coming out with products which are in direct competition with Apple’s products.
  5. Apple Inc might be looking to launch a new product altogether .The details of new product has to be kept secret (Not allowing any reverse engineering efforts from Samsung).
  6. Protection of position in highly lucrative smart phones market. Apple Inc has always been ahead of competitors in terms of features of products compared to the cost.
  7. Increase the manufacturing capacity of Samsung by placing bulk orders and then withdrawing from the relationship such that Samsung is left with additional capacity. Samsung will then be forced to use this capacity by bringing out products without proper planning.
  8. As TSMC is coming out with 3D chips with higher performance to power consumption ratio, future mobile devices of Apple Inc might be using the 3D chips manufactured by TSMC. 

Then, what are drawbacks and risks associated with this strategic direction?

  1. For supplies of other products like LCD panels, Apple is still dependent on Samsung. With already strained relationships, there might be a threat from Samsung with abrupt or delayed supplies of these essential components.
  2. Samsung is free to use the additional capacity for bringing out their own products if they have already anticipated Apple Inc’s move.
  3. With the relationship between the two giants hanging on a thin thread, we may witness more law suits like Samsung trying to ban import of Apple products and Apple suing Samsung for design copy in the near future.

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i4i vs Microsoft

Microsoft was sued in 2007 by i4i, a company from Canada, or infringing on its patent for an editing tool it co-opted for MS Word. The technology gave Word 2003 and Word 2007 users an improved way to edit XML. In the initial hearings the lower courts ruled Microsoft willfully infringed on the Canadian company i4i’s patent.

Microsoft was ordered to pay i4i damages of $290 million. Also through an injunction it was prevented selling versions of Word containing i4i’s technology.

The case in point is the standard of proof that must be met by the company that challenges the validity of a patent in court. According to the law, the patents which are issued by the Patent Office solely on the basis of supporting information submitted by the patent applicant should be presumed valid. Since the 1980s, however, the Federal Circuit Court of Appeals, which oversees patent appeals, has required a challenge to a patent’s validity be proved by a heightened standard of “clear and convincing evidence,” which was an argument used by i4i and as opposed to the lower “preponderance of evidence” standard routinely applied in civil lawsuits which was used by Microsoft. The issue is far more than a technicality, as it can have far-ranging effects on innovation and technology businesses.

In the court, Microsoft argued that the patent held by i4i is invalid because the invention covered by the patent was already on sale by i4i more than a year before the patent application was even filed. Under the current patent law, a patent cannot be issued in such a situation.

However, in the case of i4i, the USPTO never considered the evidence of this sale in the first place. In this case, i4i itself discarded the evidence and hence itwasn’t available. The lawyers of i4i argued to the jury that since such evidence wasn’t available, Microsoft could not prove its invalidity case under the heightened “clear and convincing” standard. The jury agreed to this argument and an appeal was affirmed by the Federal Circuit.

Microsoft which was backed in this case by many giants like Apple, Facebook, Cisco etc. argues that creativity and innovation should be promoted and that simply patent laws should not govern such cases. They also argued for a change in the law which is being followed by the congress.

Smaller tech companies and venture capital firms, meantime, were rooting for i41. Lawyers for i4i and the Obama administration argued, however, that there’s little point in granting patents to inventors if corporations can simply infringe upon them with impunity.

Loudon Owen, i4i’s chairman said, “The bottom line is whether there’s a robust patent system, and whether or not if you get a patent, it means something. If the law goes the way Microsoft wants it to, it will mean it will be very easy to invalidate patents, which will make it hard to justify why one seeks a patent in the first place.”

In this tussle between a small firm and a giant of the IT industry, the ruling has been in the favor of i4i. Read the supreme court ruling here. This will not only impact Microsoft, but also smart-phone manufacturers and technology developers. With very few patent cases coming through to the supreme court, this ruling would also act as a reference for such legal cases. The decision of the jury increases the confidence of small firms in defining their progressions based on innovation and intellectual property assets.

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Examiners ignore applicant submitted prior-art

Professors Mark Lemley, Chris Cotropia, and Bhaven Sampat recently released a draft of their new article titled “Do Applicant Patent Citations Matter? Implications for the Presumption of Validity.” [Download Here.]

For the article, the trio analyzed the file histories of 1,500+ utility patents issued in 2007 and compared references used in office action rejections with the list of references cited on the patent cover-pages.  The objective was to figure-out the role of applicant-cited prior-art in the examination process.

Findings: Patent examiners rarely rely on applicant-submitted prior-art when making rejections.  Only 13% of the prior art used in office action rejections was applicant-submitted (despite the fact that 74% of cited references are applicant-submitted). Generally, the study found that examiners “effectively ignored” applicant-submitted prior art regardless of how few or how many references were cited; regardless of the timing of the IDS filing; and regardless of whether the submission included an EPO search reports identifying the references as “X-references.”

Implications: The authors suggest several implications of their findings: (1) That it likely does not make sense to find inequitable conduct when an applicant withholds prior art (since the art would not have been used in a rejection anyway); (2) That the presumption of validity associated with patents may be too strong; and (3) That studies based on patent citations likely lack merit.
There are several rational reasons for examiners to cite their own prior art. Because of the backlog, PCTs, and provisional applications, US examination often begins several years after the application was originally filed.  During that interim, many references become available that were not known at filing.  Thus, it is not surprising that applicants rarely cite 102(e) prior art, but examiners cite loads of it.  There is some reason to think that this “newer” prior art is probably better because of technological developments.  It may also be true that the applicant and examiner references are cited for different purposes — namely, applicants cite references that are generally relevant to the invention while examiners are looking for references that teach each particular element in the filed claims.  A third issue is that applicants tend to modify their claims during prosecution. That modification may make their originally cited art less relevant.

Conclusion: Most of the applicant cited references are ignored by the examiners. So, dont really trust on the citations.

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Test of enablement – An incentive for information disclosure on patent claims?

Test of enablement - “Any analysis of whether a particular claim is supported by the disclosure in an application requires a determination of whether that disclosure, when filed, contained sufficient information regarding the subject matter of the claims as to enable one skilled in the pertinent art to make and use the claimed invention.”  Source
I have always considered the CAFC judgments as one of the best repository to learn intellectual property. I happened to come across a very interesting case.
Janssen Enablement Alzheimers (pdf) - This case (relating to US Patent No. 4,663,318) goes to prove the necessity of writing very detailed specifications backed with strong experimental data for claims to be upheld in the court of law. In this case, Janssen claimed use of a certain drug ‘galanthamine’ for treating Alzheimers. At the time of submitting the patent for review, the inventor who later on licensed the granted patent to Jansen, did not have sufficient experimental data proving direct probable linkage to use of galanthamine for Alzheimers treatment. USPTO examiner also cited this point, yet issued the patent (this part is weird). Eventually, the claims of this patent were held invalid due to an ‘enablement’ clause - in simple terms, enablement here means the specification did not directly support the claims of the inventor.
The discussions were also adverting to the utility requirement which prevents mere ideas from being patented. As noted in Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997), “[p]atent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable.
Being an inventor myself, this case intrigues me that if we find a novel use for a patented compound, we can get a patent for it. From a business perspective, I feel that it would be prudent that pharmaceutical firms keep track of formulation patents/method of use patents filed by competitors over its own molecule portfolio. This is on the assumption that the competitors are trying to find novel uses of a compound patented by the inventing pharmaceutical firm. If successful, the competition would need to pay royalties to the patent holder of the novel compound (assuming the patent holder is willing to license it on fair terms).
For the patent searching fraternity, the hypothesis of determining patent quality based on disclosed experimental data is quite sound. However, it becomes difficult to retrieve if the experimental data paragraphs are added during the later stages of patent prosecution. The US PAIR information workaround to access the office actions will be of little help especially if the number of patents to be examined is large.

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