Thinking about design patents

Interesting piece at Tech.Pinions today looking at the purpose of design patents and the Apple V Samsung decision.  While the article is a bit thin on patent law, it is an interesting take on the strategy behind Apple  enforcing the design patents:

The goal again of these “rounded corners” is to maintain a unique, consistent, iconic, and easily identifiable Apple product….[I]f you were to look at a table full of notebooks, all without logos, Picking out the one that is Apple’s would be easy. This is not something I can confidently say with regards to any other PC OEM with the exception of Lenovo.

I don’t totally agree with the writer from a patent standpoint.  However, from a strategy standpoint, the use of design patents to protect “look and feel” of software is worth considering, especially as the courts continue to look into how much protection should be afforded to utility software patents.

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Patentability of software patent claims

Those looking to wittle away at the patentability of software patents, a recent decision by the Court of Appeals for the Federal Circuit (CAFC), Bancorp Services v. Sun Life states that,

To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not…. The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.

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Twitter’s free speech platform

I don’t often discuss non-IP topics here, but this article about Twitter’s chief lawyer Alexander Macgillivray and Twitter’s commitment to respecting users’ free speech rights is well worth a read:

“We value the reputation we have for defending and respecting the user’s voice,” Mr. Macgillivray said in an interview here at Twitter headquarters. “We think it’s important to our company and the way users think about whether to use Twitter, as compared to other services.”

As the article notes, Twitter’s position regarding free speech bears watching because of its potential conflict with the company’s bottom line.  As the company grows and decides whether to go public, it will be interesting to see how Twitter goes about monetizing all the data they’ve collected.  However, for now, while I don’t always agree with Twitter’s positions, I am glad to see them taking their commitment to free speech so seriously and using their resources to defend it zealously.

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Samsung V. Apple And The Obviousness Standard

Editor’s Note: This post originally appeared in TechCrunch.

In the wake of Apple’s billion-plus dollar win in their patent suit against Samsung last week, much of the focus appears to be on the flaws in the patent system. Many argue that the suit involved patents that are “obvious,” and that Apple is a bully in enforcing them. These arguments show blatant disregard for the job of Patent Examiners in reviewing patent applications and prior art, and the jury in hearing and deciding the case, which listened to both sides of the arguments and decided that the patents are valid.

The obviousness argument highlights a misconception held by many about the patent system. Patent law requires that obviousness of a patent claim be considered at the time the invention was made. This means that the Patent Examiner considering a patent application must determine whether the invention would have been obvious as of the filing date (or possibly even earlier) of the patent application. It is irrelevant whether the invention is obvious when the patent is being examined, and is even more irrelevant whether the invention seems obvious many years after the invention has been brought to market. After-the-fact obviousness arguments being presented by many of the Internet commentators are therefore improper under the current patent law system.

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Patents Are Worthwhile For Startups To Pursue In the US, But Not Abroad

Editor’s Note: Please excuse my long layoff from posting to this blog.  Other work-related matters have made focusing on writing difficult.  My latest article appeared in TechCrunch over the weekend, and I think it is very relevant to my audience so I am reblogging here as well.

A recent TechCrunch guest post by Jeffrey Shieh suggests that startups should file for international patent protection for a variety of reasons. Mr. Shieh does a great job of explaining the benefits and options for seeking international patent protection. However, based on my experience working with startups, I disagree with his conclusion that startups should expend precious early funds on international filings.

Filing for patent applications, whether in the U.S. or abroad, is an expensive proposition even for well established companies. I have previously argued here that despite these costs, filing for U.S. patents is worthwhile because U.S. patents provide an additional value proposition to potential acquirers of startups. The costs, however, come at the opportunity cost of critical needs such as engineers and designers. While I stand by my opinion regarding the value of U.S. patents to startups, it is my belief that in most cases, international patent applications cannot be considered in the same light.

Why is foreign filing not worth this expense?  Simply put, the costs outweigh the benefits. For most U.S. based companies, U.S. intellectual property rights will provide most of the feasibly attainable economic value. Many startups will also run up against European restrictions on software and business method patents, and not even be able to receive the desired coverage.

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Kelora Patent Found Obvious: Are Other “Obvious” Software Patents In Danger?

Editor’s Note: This article originally appears in TechCrunch.

As software patent litigation ramped up over the past few years, software patents have come under the microscope within the technical community. Manyinvestors and technologists believe that software patents should be abolished all together, while others take the less extreme position that many software patents are obvious over known prior art (“prior art” being earlier publications that show a patent  is obvious or not new). Courts are increasingly cognizant of these criticisms.
Though it is unlikely that software patents are going away any time soon, as the recent summary judgment in eBay v PartsRiver (PartsRiver is now known as Kelora) demonstrates, courts are beginning to do a more thorough job of applying the obviousness standard to software patents.

Kelora claims to have the patent on faceted (parametric) search. The company is a hybrid between a practicing entity and a “patent troll” in that Kelora offers a search product, but has aggressively pursued a licensing and litigation strategy against a wide range of large and small Internet retailers. Though Kelora has not received as much attention from the press as some non-practicing entities such as Lodsys, the Kelora patents have posed a significant threat to the Internet retailing infrastructure. In Kelora’s largest lawsuit, defendants include Internet giants such as Microsoft, EBay, Target, Amazon and NewEgg.

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Facebook’s Patent Acquisitions? They’re More About Google Than Yahoo

Editor’s Note: This article was originally posted in TechCrunch.

In the past few months, Facebook’s patent portfolio has grown exponentially as a result of acquisitions of patent portfolios from IBM and Microsoft. After acquiring 650 AOL patents and patent applications from Microsoft, the company now has approximately 1,400 patent assets. Amazingly, only 46 of these assets (24 issued patents and22 published applications) were originally filed by Facebook.

In recent years, Facebook has consistently looked to the outside to augment its IP holdings with strategic acquisitions of patent assets. The company paid 40 million for the Friendster social networking patent portfolio, acquired a group of patents from Walker Digital, and another from Hewlett-Packard. These deals expanded the portfolio to approximately 160 patent assets prior to Yahoo’s lawsuit being filed. After Facebook’s IPO decision, and the subsequent patent suit by Yahoo, Facebook has kicked its patent acquisition program into overdrive.

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The Twitter IPA: What does defensive really mean?

Twitter is an innovative company, and today’s introduction of the Innovator’s Patent Agreement shows that their legal department can be innovative too.  The Innovator’s Patent Agreement, a draft of which was released on GitHub, will allow inventors to retain control of their inventions to make sure that they are only used for defensive purposes.  This new agreement is a clear PR and recruiting win for Twitter, but whether it will be anything more is debatable.

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Should you devote resources to monitoring your competitors IP?

A successful business person understands that in order to stay ahead of the competition, he or she must stay informed about the competition. One way to stay informed is to monitor competitors’ publications issued by the United States Patent and Trademark Office (“USPTO”).  These publications include published non-provisional patent applications and issued patents.

Generally, non-provisional patent applications are published eighteen months after filing with the USPTO, unless an applicant requests that the application not be published. Patent applications include a specification and figures describing the technology being patented.

Reviewing published patent applications can provide important insight into technologies that competitors are developing. This information can be used to shape the research and development strategy of your own business to more effectively compete in the marketplace. For example, based on information gleaned from the patent application, a design around or improvement upon the competitor’s technology may be developed. Alternatively, such a review may help your business decide to shift a in a different direction, especially where designing around the competitor’s technology will be difficult or if the competitor appears to have a strong technical advantage.

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March 20 2012 Startup Patent Report includes, Box, Zynga, Zillow & 38 Studios

We missed last week, so hopefully this lengthy startup patent report will make up for it.  For the week of Tuesday, March 20, 2012, there were 5,414 U.S. patents issued by the USPTO.  There are a number of notable patents issued this week, including ones to (Google),, Zynga, Zillow, TopCoder, Cleversafe, 38 Studios, Spectrum Bridge, Waterfall Mobile and Skymeter.  These patents are discussed after the fold.

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