Tag Archives: IP litigation

Patents and Innovation: Friends or Foes?

A thought-provoking article by Charles Duhigg and Steve Lohr in Monday’s New York Times caught our eye for its detailed look into what some see as a flawed, if not broken, patent system, particularly when it comes to the ownership of broad technologies or basic software concepts.  The authors explore various aspects of the patent process, and question whether patent litigation is stifling innovation in technology, especially among start-ups.

Created in a world that was eager to patent mechanical inventions, the nation’s patent system was never conceived to deal with ownership issues over software and indeed, initially the patent office refused to patent most software.  That has changed thanks to several court cases, and now the patent office routinely grants patents for software that “are often so broad and so vague that they theoretically give inventors ownership over much more than a single invention.”

“There’s a real chaos,” said Judge Richard A. Posner, of the Seventh Circuit Court of Appeals, when interviewed by the Times.   “The standards for granting patents are too loose.”

In fact, the number of patent applications in the U.S. – 535,188 in 2011 – is more than 50 percent higher than a decade ago.  The Times reports that Google has received 2,700 patents since 2000, according to an analysis by M-CAM, a patent analysis firm, and that Apple has received more than 4,100 patents.

And while everyone agrees that companies have the right to protect their intellectual property, the article suggests that the marketplace for innovation has been tainted by companies using software patents not defensively, but as destructive weapons.  Concomitant with their growing patent portfolios, the authors contend that companies are increasingly wielding the threat of patent litigation against competitors.

Whether that litigation involves technology giants such as Apple and Samsung or whether it is waged against small entrepreneurs, the number of patent lawsuits is on the rise.  Patent actions filed in 2011 increased 22% over the number of filings in 2010, reaching 4,015 – the highest number of annual filings on record.  Most recently, media attention has focused on the high profile lawsuits involving Apple and smartphone manufacturers HTC and Samsung, both of which are Google partners and together make up 39 percent of U.S. smartphone sales.

Despite signs that patent litigation may be slowing this year, IP practitioners still foresee a long-term trend of increased IP filings.  The latest  figures from the International Trade Commission (ITC) show that patent cases filed in fiscal year 2012 fell by 30 percent (to 48 versus the record 70 cases filed in fiscal year 2011), according to the Blog of Legal Times.  The BLT points out that some of the decline can be attributed to a cooling off in the number of ITC filings involving Apple and Samsung, Motorola, and HTC, which peaked in 2011 and have since tapered off.  Section 337 practitioners interviewed by the BLT, while surprised at the figures, are bullish on the long-term trend.  Ruffin Cordell at Fish & Richardson said he would not read too much into the numbers and added, “In my experience, the commission seems as busy as they have ever been, and is deciding some of the most important cases in the country.”

Apple may make the headlines, but almost every major technology company is involved in ongoing patent litigation.  In addition, while the giants of technology may be battling each other in court, tiny start-ups can get caught in the crosshairs, too.  One result of this litigation, according to policy makers and academics “is that patent disputes are suffocating the culture of start-ups that has long fueled job growth and technological innovation.”

So, what’s to be done to fix a system that appears, at least to some, to be tilted toward large hi-tech companies with deep pockets, eager to protect their patent portfolios at any cost?  Among the several ideas outlined in the article are proposals from Twitter and the law school faculty at the University of California, Berkeley.

In April, Twitter released a draft of its Innovator’s Patent Agreement, which promises that the company will not use its patents in offensive litigation without permission from the inventor. The patents will only be used for defensive purposes and furthermore, if the patents are sold, they can only be used as the inventor intended.

The UC, Berkeley law school professors have a similar proposal called the Defensive Patent License.   Participating companies would contribute their patents to a common pool, shielding them from litigious aggressors and they would be allowed to participate as long as they did not file suit first as a plaintiff.

Judge Posner also suggests that the duration of patents on digital technologies is too long (they can be as long as 20 years) and that perhaps shortening the period of protection would help.   “That would make a big difference,” he said. “After five years, these patents are mainly traps for the unwary.”

Posted by Marianne Purzycki

The America Invents Acts and IP Litigation

The second phase of the America Invents Act (AIA) takes effect this week and IP practitioners are predicting that it could change the face of patent litigation, according to a recent article in Corporate Counsel

Signed into law on September 16, 2011 by President Obama, the historic legislation is the most significant change to the US patent system in half a century.  Most notably, the third and final phase of the AIA, which takes effect next March, will convert the US patent system from a “first-to-invent” to a first-inventor-to-file” system.

Other important changes, as outlined in a policy brief prepared by The Brookings Institution include:

  • A new proceeding in the USPTO for third-party challenges to the validity of a recently issued patent
  • An expanded mechanism for a third party to provide information to the PTO that could be used to narrow or eliminate claims in a pending patent application being prosecuted by a commercial rival
  • The introduction of a new, broadly applicable patent infringement defense based on prior commercial use

The third party inter partes review – the new trial proceeding conducted at the Patent Trial and Appeal Board  – has the potential to be a powerful tool reports Corporate Counsel because “the review takes place in front of judges rather than examiners, and there is a statutory time limit placed on the process: a ruling must be made within one year from the time the patent was granted.”  Matt Kreeger, co-chair of the patent interferences practice group at Morrison & Foerster, said:

“This is a real, viable option that could change the face of patent litigation. . . . The review can run parallel to litigation filed in a district court, and the court will stay the case while the patent is under review at the PTO.”

While it is highly likely that the AIA will impact the ways that patents are filed, challenged and litigated in the coming years, the exact effect that such changes will have on IP activity in the US is currently unknown. However, what is clear now is that patent litigation is still on the uptick according to data from PwC and the Hildebrandt Institute’s Peer Monitor program. 

According to the latest Patent Litigation Study from PwC, the number of patent actions in 2011 increased 22% over the number of filings in 2010, reaching 4,015 – the highest number of annual filings on record.  At the same time, the number of patents granted has also grown steadily to 244,430 in 2011, increasing at a CAGR of 4.5% since 1991, the trend closely paralleling patent cases filed, with a CAGR of 6.4%.

Peer Monitor’s data tells a similar story.  While the legal industry is still experiencing weak demand overall, Peer Monitor’s 2011 report revealed that demand for IP litigation was up 6.2% last year.  While demand has remained sluggish this year, the Peer Monitor Economic Index for the second quarter reports that IP litigation work was up 0.2%, albeit only a slight uptick, but still one of the few bright spots in litigation. 

While it will take some time to understand the full impact of the AIA,  in-house counsel in particular,should take note of the new rules.   As Brookings notes: “Companies that overhaul their intellectual property strategies in light of the provisions of the AIA will be in a better position to maximize the value of their patent portfolios and to strengthen their options in patent litigation matters.”

Posted by Marianne Purzycki

The ITC: Patent Forum Remains Red Hot

The July issue of Corporate Counsel reveals the results of the magazine’s annual International Trade Commission (ITC) Survey, noting that the ITC remains a “hot forum” for patent disputes, especially for the IP boutiques holding the top spots in the ranking.  V. James Adduci II, co-founder of Adduci, Mastriani & Schaum­berg, the top-ranked firm on the list, agrees.  “The last four to five years, things have taken off like a skyrocket,” said Adduci, when interviewed by The National Law Journal earlier this year. “The ITC has become the hottest forum for litigating IP rights of U.S. and foreign companies.”  The survey ranks law firms by the number of ITC intellectual property infringement cases filed that they were involved in, a number that hit a record in 2011.

The ITC’s own statistics reported that the Commission’s caseload under section 337 of the Tariff Act of 1930 grew to 70 new investigations in FY 2011.  That’s up from 51 new investigations begun in FY 2010 and is a record for the number of new investigations instituted.

Two reasons are most frequently cited for the increase in filings. The first is that the ITC is able to issue automatic injunctions in the form of exclusion orders, a form of relief against infringing imports that is not available through the federal district courts.  The second is the speed with which the investigations have been completed at the agency. 

While the Commission’s workload has been increasing, the average time it takes the agency to complete a case has dropped significantly.  For investigations concluded during FY 2011, the average completion time from institution to a decision was 13.7 months. That is down from 18.4 months in FY 2010 and 17.9 months in FY 2009, according to ITC statistics.  And compared to the federal district courts, where patent cases can take years to be decided, the ITC moves with almost lightning-like speed. 

The Commission also instituted a number of other improvements in 2011 according to ITC 337 Law Blog.

[T]he ITC increased the number of attorneys in its Office of the Administrative Law Judges and Office of the General Counsel, hired two new administrative law judges to replace two that had retired, and allocated funds to build a third courtroom and related work areas.

Other firms at the top of the ITC Survey in addition to Adduci, Mastriani & Schaumberg are Kenyon & Kenyon in second place; Finnegan, Henderson, Farabow, Garrett & Dunner in third; Fish & Richardson in fourth; and Foster, Murphy, Altman & Nickel (a new ITC boutique formed in May 2011 by attorneys who were formerly with Miller & Chevalier) in fifth.  The top general practice firms on the list include Quinn Emanuel Urquhart & Sullivan, Steptoe & Johnson LLP, Alston & Bird and Mayer Brown.

With a venue so popular, could the Commission’s caseload expand even further?  Yes, writes Jan Wolfe in Corporate Counsel:

In fact, the ITC’s caseload may even get higher. While the agency is best known for patent cases, its enabling statute grants it broad investigative responsibilities in matters of trade, so it can also hear claims of false advertising, trade secrets theft, copyright infringement, and trademark infringement. Now that the ITC is getting so much mainstream attention, experts say we could see more of those cases.

As more companies turn to the ITC for speedy results and relief against infringing imports, there appears to be no shortage of work for lawyers with ITC experience. And that’s good news for lawyers at boutiques and general practice firms alike.

Posted by Marianne Purzycki

Twitter Aims to Curb Use of Patents in Litigation

Heralding a “new way to do patent assignment that keeps control in the hands of engineers and designers,” Twitter released a draft of its Innovator’s Patent Agreement (IPA) on Tuesday.  Typically, employees sign an agreement that grants the company the legal right to any patents filed that relate to the employee’s work.  The patent can then be used by the company in litigation, either offensively or for defensive purposes. Twitter’s IPA is unique in that the company promises not to use the patents in offensive litigation without permission from its employees.  They will only be used for defensive purposes.  Furthermore, “this control flows with the patents” so if the patents are sold, they can only be used as the inventor intended.

For many law firms, intellectual property litigation is an area that is thriving.  Demand for IP litigation continues to buck the negative trends in the overall legal market, as we noted earlier this year.  Peer Monitor data reported a 6.2% increase in demand for IP litigation in 2011. Fending off patent trolls, high stakes litigation involving market equals – especially in the high tech industry, and more global IP litigation have all been cited as some of the factors contributing to growth in this practice area.

Associate professor Eric Goldman at Santa Clara University School of Law and blogger on Internet law matters was interviewed by Reuters regarding the Twitter announcement.  He believes the company’s reputation could rise among software engineers, some of whom have not been happy about having their patents used in litigation against other companies.  He said, “Unquestionably, it’s an effort to define Twitter’s brand in the marketplace and to signal that its perhaps more engineering-friendly than companies that wouldn’t make such a promise.”

The IPA will be implemented by Twitter later this year and “it will apply to all patents issued to [their] engineers, both past and present.” The company has posted the IPA on GitHub in an effort to encourage discussion and share feedback among companies that might want to implement a similar arrangement.  It will be interesting to see if other companies adopt this approach or something similar in the future.

Posted by Marianne Purzycki

IP Litigation Looks Bright

Tomorrow we will be reporting on data from Peer Monitor’s Q4 2011 Peer Monitor Index (PMI), and the picture is dim.  Productivity and demand both fell to 12-month lows, due in large part to sluggish demand for transactional work and increases in lawyer headcounts.  But there is a bright spot.  Despite negative trends in both the legal market and the broader economy, intellectual property is actually seeing significant growth.  Demand for IP litigation was up 6.2% for 2011, including a 1.6% increase in December.

Within the AmLaw 100 and AmLaw 200 segments, the numbers are even more interesting. AmLaw 100 firms saw the biggest boost in IP litigation in 2011, with a strong 6.9% increase.  The AmLaw 100 also saw gains in IP patent work, which was up 6.2% in 2011.  Meanwhile, the AmLaw 200’s IP litigation numbers were more stagnant – up just .8% for the year.  At the same time, the AmLaw 200 posted impressive gains in IP patent work, with a 7% increase over all of 2011 (including a 6.2% increase in December.

What’s driving IP litigation and patent work up when so many other legal sectors are seeing declines?  The rising stakes of competitive technologies are one factor.  In a recent article on the biggest IP litigation wins of 2011, Corporate Counsel cites the struggle between two technology powerhouses for helping to fuel the fire:

Another recession-proof phenomenon is Apple Inc., known lately for must-have mobile gadgets—and now, apparently, for employing legions of IP lawyers in its battle to take down Google Inc.’s Android operating system.

These sorts of battles of equals are changing the patent landscape, raising the stakes and thus the amount of money companies are willing to invest in IP litigation.  Brian Busey of Morrison Foerster, whose clients include Toshiba and Sharp, explains in a new article in Inside Counsel:

A couple of years ago, we were fending off trolls, but now it seems like we’re doing global warfare for competitors… Trolls haven’t gone away, but now at the same time companies have to manage larger litigation involving competitors, and it’s gone global.

It’s been a boon for IP litigation departments across the board.  Companies must now combat IP threats at multiple levels, from the patent trolls that result in multiple, nearly identical cases in several jurisdictions, to high stakes patent lawsuits against market equals.  And as Inside Counsel points out, IP litigation has indeed “gone global,” with the International Trade Commission initiating a record number of new investigations in 2011.  The result is more opportunities for more firms, a rarity in our current economic environment.

Posted by Emily Fisher