The Dolcera Blog

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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The objective and target of any organization is growth at 45 degree on x & Y axis through best products, best services etc… with latest innovations. Ever since recession has hit the western market the economy and jobs are melting like never before, chapter 11 filing cases are increasing. After all to run an organization revenue has to be generated. As newspapers across North America and the globe continue to flood with stories of economic downturn and businesses fighting to survive, organizations this month are placing a renewed focus on innovation and revenue generation.

Revenue generation through patent lawsuits is the new trend. 35 patent lawsuits have been filed just in 5 plus month time during 2009, wonder how many more are there. Surely first half of 2009 is not good for Google in terms of lawsuits, total 14 lawsuit are been battled.

Lawsuit filing cases of 2009:

1. Aloft Media, LLC v. Yahoo! Inc. et al
2. Performance Pricing, Inc. v. Google Inc. et al
3. Leader Technologies Inc. v. Facebook Inc.
4. Actus, LLC v. Bank of America Corp. et al
5. Paid Search Engine Tools, LLC v. Google, Inc. et al
6. ESN LLC v. Cisco Systems, Inc. et al
7. Heartland Recreational Vehicles LLC v. Forest River Inc
8. Software Rights Archive, LLC v. Google Inc. et al
9. Northeastern University et al v. Google, Inc.,
10. Polaris IP, LLC v. Google Inc. et al
11. Function Media, L.L.C. v. Google, Inc. et al
12. Aloft Media, LLC v. Google, Inc.
13. GraphOn Corporation v. Google Inc.
14. Google, Inc. v. EMSAT Advanced Geo-Location Technology, LLC et al
15. Picsel (Research) Ltd. et al v. Apple Inc.
16. Web Tracking Solutions, Inc. et al v. Google, Inc.
17. Association For Molecular Pathology et al v. United States Patent and Trademark Office et al
18. Cygnus Systems, Inc. v. Microsoft Corporation, et al
19. Google Inc. et al v. Egger et al
20. Certicom Corporation et al v. Sony Corporation et al
21. Klausner Technologies Inc v. Verizon Wireless et al
22. Clark v. The Walt Disney Company et al
23. HYPERPHRASE TECHNOLOGIES, LLC v. GOOGLE INC.
24. BabyAge..com, Inc. v. Leachco, Inc.
25. IP Innovation LLC et al v. Google, Inc.
26. Elan Microelectronics Corporation v. Apple, Inc.
27. Bid for Position, LLC v. AOL, LLC et al
28. Soilworks LLC v Midwest Industrial Supply Inc
29. Priest et al v Google Inc.
30. 21 srl v. Apple Inc. et al
31. PACid Group, LLC v. Apple Inc. et al
32. Accolade Systems LLC v. Micron Technology Inc et al
33. Affinity Labs of Texas, LLC v. Apple, Inc.
34. Clear With Computers, LLC v. Bassett Furniture Industries, Inc. et al
35. Motorola Inc v. Research In Motion Limited et al

Posted in Power of Patent. Tags: Apple, bankruptcy, chapter 11, economy downturn, facebook, Google, innovation, intellectual property, IP innovation, Jobs, Lawfirm, microsoft, North America, patent, patent attorney, patent infringement, Patent invalidation, Patent lawsuits, recession, revenue generation, USPTO.

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University of Florida professor Michael Moulton thinks copyright law protects the lectures he gives to his students, and he’s headed to court to prove it.

Moulton and his e-textbook publisher are suing Thomas Bean, who runs a company that repackages and sells student notes, arguing that the business is illegal since notes taken during college lectures violate the professor’s copyright.

Faulkner Press filed suit in a Florida court Tuesday against the the owner of Einstein’s Notes, which sells “study kits” for classes, including Professor Michael Moulton’s course on “Wildlife Issues in the New Millennium.”

Those notes are illegal, Faulkner and Moulton contend, since they are derivative works of the professor’s copyrighted lectures.

If successful, the suit (.pdf) could put an end to a lucrative, but ethically murky businesses that have grown up around large universities to profit from students who don’t always want to go to the classes they are paying for.

The suit could also have ramifications for more longstanding businesses such as Cliffs Notes, which summarize copyrighted novels.

Faulkner Press publishes two e-textbooks that Moulton wrote and uses in his classes, and sells its own set of class notes for the course.

But James Sullivan, Faulkner Press’ attorney, says the suit isn’t about money for the professors, it’s about protecting its intellectual property.

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