Willful Infringement: More Clarity From the Federal Circuit — Exmark v. Briggs & Stratton and More

The Federal Circuit’s recent decision in Exmark v. Briggs & Stratton echoes the central point in our prior analysis of Halo v. Pulse that timing matters in determining whether an accused infringer did so willfully. The case leaves us with two key practical implications:

  • Early investigation of patent threats can help avoid a finding of willful infringement; positions developed at the time of litigation are too late and irrelevant.
  • Prior art-based invalidity positions can form the basis for a subjective intent sufficient to defeat willfulness.

Case Summary

Exmark sued Briggs for infringement of U.S. Patent No. 5,987,863, relating to high-end lawn mowers. After a jury trial, the Nebraska district court awarded $48 million to the plaintiff after doubling the damages as a result of willful infringement. Notably, the trial took place before the Supreme Court’s decision in Halo v. Pulse, which meant that the district court applied the now-overruled Seagate standard for willfulness. After determining that Briggs’ defenses were objectively unreasonable, the trial court precluded Briggs from presenting prior art evidence at trial. Briggs’ hope was to use the prior art evidence to support a subjective state of mind that lacked willfulness.

On appeal, the Federal Circuit held that the trial court’s finding of objective unreasonableness did not comport with the Halo standard, which only requires consideration of subjective intent. The court further found that Briggs should be allowed to present prior art evidence in a new trial, conditioned on the timing at which Briggs considered it:

The district court must reconsider its decision to exclude evidence of the prior art during the jury trial on willfulness to determine whether Briggs had developed any views about the prior art at the time of accused infringement or whether the evidence only relates to Briggs’ litigation-inspired defenses.

The Federal Circuit vacated the damages award and the enhancement due to willfulness, and remanded to the district court for a new trial on those and other issues.

Analysis

The Exmark case is a straightforward but significant application of the willfulness doctrine after the Supreme Court’s standard-shifting decision in Halo v. Pulse. In Halo, the Court made it easier for a patentee to obtain enhanced damages from a willful infringer by rejecting the “objectively reckless” prong while also lowering the burden of proof from “clear and convincing” to “preponderance of the evidence.” In practice, the former standard allowed even blatant copiers to escape liability for enhanced damages if they could come up with a reasonable non-infringement or invalidity position at the time of litigation. Now, the focus is on the subjective knowledge, intent, and behavior of the infringer at the time of infringement.

Cases following Halo have begun to shape the new willfulness doctrine. While Exmark does not include an extensive discussion regarding willfulness, the takeaways are clear. If Briggs could have shown that it had developed prior art-based invalidity positions when it allegedly committed the infringement, then it would have been able to use that evidence to prove a lack of subjective willfulness and avoid enhanced damages. But if no pre-litigation analysis had taken place, then the trial court would exclude the prior art evidence, and Briggs would likely be liable for up to three times the jury’s damages verdict.

Other Recent Cases

In Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 2016-2607 (Fed. Cir. Nov. 21, 2017), the Federal Circuit affirmed the district court’s denial of enhanced damages even when the jury determined that the defendant willfully infringed. An engineer for ATC knew about the patent-in-suit for years, which knowledge contributed to the jury’s finding that ATC behaved with reckless disregard. However, due to a later re-examination that resulted in amended claims, the period of infringement was set to begin on a later date — a time when the parties were already well into litigation (the court had issued claim constructions and ATC had developed its defenses). So while the jury found that ATC’s conduct was willful, the district court recognized these “unique circumstances” and ultimately declined to enhance damages because, looking at ATC’s conduct after the relevant date, the case was a “garden-variety” patent infringement action. Had the patent not undergone a re-exam that ended up resetting the infringement period, logic suggests that enhanced damages would have been much more likely.

In Tinnus Enterprises, LLC, Zuru Ltd. v. Telebrands Corporation, 6:16-cv-00033 (E.D. Tex. Nov. 21, 2017), several defendants are currently staring down the barrel of potential liability of up to $36 million (if trebled) after a recent jury verdict of willful infringement. The facts of the case relating to willfulness have not yet come to light, as much of the briefing and trial records are under seal, but we will monitor the case as it makes its way through post-trial motions and appeal. This is a high-profile case against a so-called “knock-off company” that has garnered much attention.

 

This article is made available for educational purposes only as well as to give you general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand that there is no attorney client relationship between you and the author or ClearstoneIP. The blog site should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.

An IP Thought Leader Shares Her Experiences with Clearstone FTO

Jackie Hutter thinks differently about IP protection and business value creation, and has built her practice around maximizing businesses’ return on innovation investment. She has a unique ability to recognize and seize opportunity for her clients, rather than put up fences.

In a recent article, Jackie shared her experiences using Clearstone FTO for patent search and analysis. While the project wasn’t specifically focused on freedom-to-operate, Jackie quickly realized that the platform simply makes a number of different types of patent analysis much more efficient and actionable, including complex prior art searching:

Quite simply, because of the functional and elegant dashboard in the Clearstone FTO product, I was able to look at the relevant aspects of each patent document and make substantive notations of the relevance (or lack thereof) at a speed I never before thought possible.

Click here to read Jackie’s article.

Pirates Among Us? How Have Courts Treated Willful Infringers in the Year Following Halo v. Pulse?

 

As the Supreme Court’s Halo decision[1] recently celebrated its first anniversary, we take a look to see whether the lower courts have effectively rooted out the “wanton and malicious pirates” about whom the unanimous High Court was so gravely concerned. Have we found and singled out our swash-buckling ne’er-do-wells for public shaming, or have we discovered that the label, if defined by the reduced willfulness standard set out in Halo, might suggest that even some of the best-intentioned among us might be keeping parrots in their desk drawers and their closets well-stocked with puffy shirts? And importantly, what can we do to trade those bandannas for halos in the eyes of the court?

Recap

In Halo v. Pulse,[2] the Supreme Court made it easier for a patentee to obtain enhanced damages from a willful infringer under 35 U.S.C. § 284. The Court rejected a part of the previous requirement, under Seagate,[3] in which the patentee had to show that the infringer acted “objectively recklessly.” It also lowered the burden of proof from “clear and convincing” to “preponderance of the evidence.” In practice, the old standard allowed even willful infringers to escape liability for enhanced damages if they could come up with a reasonable non-infringement position even as late as during litigation. The Court felt that this standard was too rigorous. It ratcheted back the necessary showing to, essentially, “egregiousness,” which is centered on the subjective knowledge, intent, and behavior of the infringer.

To that end, courts will consider the nine so-called Read factors[4] in considering whether to award enhanced damages. In terms of guiding behavior outside the context of a specific dispute or litigation, three of these factors are most salient here:

  • Read Factor #1: Whether the infringer deliberately copied the patentee’s ideas or design.
  • Read Factor #2: Whether the infringer, upon knowing of the patent, investigated the scope of the patent and formed a good faith belief that it was invalid or that it was not infringed.
  • Read Factor #7: Remedial action taken by the infringer.

Enhanced Damages After Halo

If one pattern clearly emerges, it is that courts disfavor infringers who “know” about a patent but do not conduct an analysis of the scope of its claims (Read factor #2). Mere knowledge of a patent is generally not sufficient in itself to find willfulness, but knowledge in combination with copying and malicious intent, with no investigation, has proven extremely dangerous.

In Dominion v. Alstom, a Pennsylvania district court found that seven of the nine Read factors weighed in favor of enhanced damages against the defendant.[5] The court doubled the reasonable royalty findings to $972,000. The court found evidence of copying over a long period of time and took particular issue with the fact that “Alstom’s belief it did not infringe . . . is based entirely on the opinion of people without expertise in reading patent claims. On balance, it is not a good faith belief in non-infringement.”[6] The court noted that Halo played a role here and may have ultimately led to Alstom’s downfall. During the course of infringement, Alstom was operating in a Seagate world where an infringer can avoid enhanced damages if they can “muster a reasonable (even though unsuccessful) defense at the infringement trial.” But the Halo ruling did away with that post hoc safe harbor and essentially requires a good faith belief of non-infringement during the actual period of infringement.

In Imperium IP Holdings v. Samsung, an Eastern District of Texas court tripled jury verdict damages to nearly $21 million due to willfulness, the maximum enhancement allowed. The crux of the decision was that, “despite knowing of Plaintiff’s patents since at least April 2011, Defendants never undertook any serious investigation to form a good-faith belief as to non-infringement or invalidity.”[7] In deciding Samsung’s JMOL motion, the court reiterated that “evidence offered at trial established that Defendants had pre-suit knowledge of the patents-in-suit and took no steps to avoid infringement after becoming aware of the patents.”[8]

SRI International v. Cisco Systems also involved large damages numbers.[9] There, the Delaware trial court doubled the jury’s damages verdict to award more than $46 million to the plaintiff. Again, the court was swayed by a finding that the defendant did not perform a sufficient analysis of known patents, noting that evidence showed “that key Cisco employees did not read the patents-in-suit until their depositions.” The fact that Cisco knew about the asserted patents but did not investigate the technical aspects relating to infringement led to more than $23 million in additional damages.

How have defendants avoided enhanced damages?

Here is where the contrast becomes sharp. Even in cases where the Read factors might suggest some troublesome behavior, like knowing and intentional copying, defendants were spared enhanced damages because they made a reasonable investigation at the time of infringement.

In Greatbatch Ltd. v. AVX Corp.,[10] a Delaware district court found no willfulness in relation to three patents infringed by AVX. Even though AVX knew about all three patents at the time of the culpable activity, the court held that the conduct was not egregious or wanton because AVX performed a reasonable investigation at the time. The court distinguished a Federal Circuit case in which enhanced damages were awarded by noting that “here, by contrast, AVX sought and obtained invalidity and non-infringement opinions of counsel before litigation and developed designs and processes to avoid infringement” (court’s emphasis).[11] AVX relied upon opinions of counsel with respect to two of the three asserted patents, and “made significant efforts to avoid infringement of the [third] patent” (i.e., design around) according to the court.

In another remarkable case, Sociedad Espanola de Electromedicina y Calidad v. Blue Ridge X-Ray Co.,[12] the jury explicitly found that the defendants “knowingly and intentionally copied Sedecal’s transformer,” and the court upheld a finding of willful infringement.[13] However, the trial court has discretion to award enhanced damages even when infringement conduct is egregious and willful. Using this discretion, the court appreciated that the defendants “conducted a reasonable investigation of Sedecal’s patent claims and made a good faith determination that the patent was not infringed by their activities and that the patent was likely invalid,” and did not enhance damages. In other words, the defendants here blatantly copied the plaintiff’s product but escaped increased willfulness liability because they made the pre-suit effort to formulate reasonable (though ultimately incorrect) non-infringement positions. In this case, the pre-litigation investigation was conducted by a head engineer.

Similarly, in Koninklijke Philips v. Zoll Medical,[14] a plaintiff’s request for enhanced willfulness damages was rejected on summary judgment because the defendant had evaluated the asserted patents before the lawsuit and established a reasonable non-infringement position. After a portion of the case was appealed, the court quoted the Federal Circuit’s binding finding “that [although] Zoll’s claim construction argument against the jury’s direct infringement verdict . . . was incorrect, [its] argument was based on a reasonable interpretation of the claims in light of the specification and the prosecution history. . . . [T]his belief in non-infringement was reasonable . . . .”

Conclusion

An important practical result here is that Halo has effectively shifted the point in time at which an accused infringer should establish reasonable non-infringement or invalidity positions. We can no longer rely upon arguments that were first conjured up after being sued. By and large, future patent defendants stand a good chance of avoiding enhanced damages if they have a process in place to competently evaluate asserted patents at an early stage. They should have systems to collect relevant information such as analysis, documents, technical information, and relevant discussions in order to bolster a good faith belief of non-infringement or invalidity. That, or else they may find themselves walking the plank.

This article is made available for educational purposes only as well as to give you general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand that there is no attorney client relationship between you and the author or ClearstoneIP. The blog site should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.


[1]Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.Ct. 1923 (2016).

[2] Id.

[3] In re Seagate Technology, LLC, 497 F.3d 1360 (2007).

[4] The Read factors include: (1) whether the infringer deliberately copied the patentee’s ideas or design; (2) whether the infringer, upon knowing of the patent, investigated the scope of the patent and formed a good faith belief that it was invalid or that it was not infringed; (3) the infringer’s litigation behavior; (4) the infringer’s size and financial condition; (5) the closeness of the case; (6) the duration of the infringer’s misconduct; (7) remedial action taken by the infringer; (8) the infringer’s motivation for harm; and (9) whether the infringer attempted to conceal its misconduct. See Read Corp. v. Portec, Inc., 970 F.2d 816, 826-27 (Fed. Cir. 1992).

[5] Dominion Res. Inc. v. Alstom Grid, Inc., Civil Action No. 15-224 (E.D. Pa. Oct. 3, 2016).

[6] Id. at *52-70.

[7] Imperium IP Holdings (Cayman), Ltd. v. Samsung Elecs. Co., Civil Action No. 4:14-CV-00371, at *12 (E.D. Tex. Aug. 24, 2016).

[8] Id. at *33.

[9] Sri Int’l, Inc. v. Cisco Sys., Inc., Civil Action No. 13-1534-SLR (D. Del. May. 25, 2017).

[10] Greatbatch Ltd. v. AVX Corp., Civil Action No. 13-723-LPS (D. Del. Dec. 13, 2016).

[11] Id. at *5 (distinguishing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1340-41 (Fed. Cir. 2016) (“as the Supreme Court explained in Halo, timing does matter. Kohler cannot insulate itself from liability for enhanced damages by creating an (ultimately unsuccessful) invalidity defense for trial after engaging in the culpable conduct of copying, or ‘plundering,’ WBIP’s patented technology prior to litigation.”)).

[12] Sociedad Espanola de Electromedicina y Calidad, S.A. v. Blue Ridge X-Ray Co, No. 1:10-cv-00159-MR, at *19-23 (W.D.N.C. Dec. 28, 2016).

[13] Id.

[14] Koninklijke Philips N.V. v. Zoll Med. Corp., Civil Action No. 10-11041-NMG (D. Mass. Jun. 26, 2017).

Three Keys to Effective Freedom-to-Operate Management

Freedom-to-operate is a murky world where the quality of the investigation greatly depends on the skills and resourcefulness of the lawyer or analyst doing the work. Best practices and standards of care are not very well defined and, even when systems exist, they are rarely adaptable to changing needs.

It is our mission at ClearstoneIP to gather, implement, and standardize best practices in FTO and patent risk management. This article is a step in that process and sets forth three basic foundational concepts for effective FTO management.

  1. Well-defined product parameters. For an effective FTO investigation, it is important to define the product or project parameters at the outset. FTO is necessarily carried out with regard to a specific subject. Thus, the analyst should create or ascertain a detailed definition of the product, process, system, or future concept that is being cleared  in order to memorialize the current state of the product. This contrasts with the sort of “invention harvesting” that might be done as part of growing a patent portfolio, where the goal is to identify broad inventive concepts and build on them in creative, but not necessarily actualized, ways. In FTO, the more that is known about the actual product intended to be sold, the more effective the investigation will be. Also, as a product evolves over time, past FTO analysis on that product may change radically. We should document parameters and features at a specific point in time in order to establish a clear historical record.
  2. Patent analysis must focus on the claims. More critically than perhaps any other activity in patent law, an FTO investigation must be centered on patent claims. Prior art patents might include any number of embodiments, alternatives, and everything else under the sun in its specification, but the claims define the exclusive rights. If we can point to a single element of a claim that is not present in the product being investigated, then the claim is cleared and we can move on. There may be some exceptions to this when, for example, we’d want to monitor a cleared patent and its family when the subject matter is particularly close. But the point remains that infringement analysis is all about the claims. Losing sight of this, and using systems that make it difficult to access and act upon claims, can result in inefficiency and wasted time.
  3. A mechanism to tie products to claim determinations. Building on the first two keys, it follows that the investigation would fall apart if we don’t use an effective mechanism to track, memorialize, and manipulate our work product. If we only had one simple product that never changed, this part wouldn’t be too difficult. But as products become more complex, upgrades and modifications are implemented, and product lines grow larger, our need for a robust system to handle the different permutations of product-analysis combinations becomes critical.

There is, of course, much more to the process, such as how to locate relevant patents, how to properly interpret patent claims, when to dismiss patents or merely flag them for monitoring, how to strategically assess relative risk among critical sets of patents, and more. We will touch on specific nuances and more in-depth analysis techniques in future articles.

ClearstoneIP Announces New FTO Platform

ClearstoneIP is proud to announce the beta release of its next generation freedom-to-operate management platform, Clearstone FTO. With guidance and feedback from IP industry leaders, we’ve infused this new web-based application with the ideal combination of best practices, workflows, and collaboration features to bring much-needed efficiency to a critical process.

Some of the core features of the platform include:

  • Product-focused organization of FTO reviews – all reviews for a product easily locatable in one place.
  • Claim-by-claim FTO determinations with integrated patent review interface.
  • Team collaboration – messaging, workflow management, asset sharing, all easily handled between team members.
  • Patent history review – easily see what decisions were made on a patent, in any prior review and any other product.
  • Customizable reporting – user-configurable to report the most essential information.

With state-of-the-art security features, Clearstone FTO makes it simple and safe to access vital information from anywhere. It’s an intuitive and powerful approach to manage and interact with information that was previously relegated to hundreds of spreadsheets scattered throughout organizations.

Click here to learn more.

Accuracy and Speed in Patent Infringement Searching Need Not Be “One or the Other”

“Faster and better results at lower cost!”

A claim so common it blends in with the hum of office chatter. We’d like to believe that patent searches could be turned around within a day or two, but it typically takes much longer.  We’d like to believe that the work returned to us includes everything we need to know.  But, at some level, we sense there are shortcomings.

This is particularly true in the case of freedom-to-operate investigations (FTO).  Searchers often fail to consider certain product features.  Claims are not always afforded their full scope.  And sometimes key patents are just plain missed.  Despite relying on highly competent and experienced analysts, “faster, better and cheaper” just does not seem a reality.

But a departure from conventional methods can overcome the trade-off between speed and accuracy. We can achieve both.  Clearstone Elements is that departure.

Why is there a speed/accuracy trade-off when using conventional search methods?

Imagine for a moment that you have been asked to carry out an FTO analysis.  Let’s also say that, as is often the case, you must complete this analysis under budget, say $3,500.  Assume a billing rate of $75/hour (you have overhead and a boss) and that you’re able to review a patent every 6 minutes.  That means you only have budget to manually review about 470 patents.

This might seem like a reasonably-sized lot.  However, experienced FTO searchers would likely feel that it’s not nearly enough to guarantee a high level of recall (i.e., the ratio of the number of relevant patents retrieved to the total number of relevant patents), say of about 95%.  This will of course vary case-by-case.  But, for many competitive industries, you’d need a starting set in the range of about 2,500-5,000 patents to achieve a sufficiently high recall.

Why must so many patents be manually reviewed in FTO?

Certainly, products don’t typically infringe thousands of patents.  Else, industries would come to a grinding halt.  Indeed, out of a robust set of patents to be reviewed, a searcher is likely to only uncover a handful of relevant ones.

The short answer to the above question is that it’s very difficult for a searcher to anticipate whether a patent is relevant without actually reading and understanding its legal claims.  Products may be described in countless ways, many of which will go unnoticed to a searcher.  Claims of a patent may be written in much broader terms than used to describe the specific embodiments of the patent’s technical disclosure.  For these and other reasons (see here for more information), conventional search tools are imprecise blunt instruments in the FTO context.  Thus, a broad net must be cast.

It should now be obvious why inaccuracy seeps in.

A searcher will typically approach a search with the best of intentions, considering every angle of attack.  Patent classes will be reviewed, important ones selected and queried.  Key assignees will be queried.  Citation, clustering, and family analysis will be conducted on patents flagged as relevant.  Natural language queries, perhaps using semantic analysis, will also be applied relating to key product features.

These tools are all great at robustly representing technology areas.  However, most likely, this aggregation will far exceed, in number, what could be reviewed under budget in an FTO context.  Accordingly, the searcher will necessarily have to take additional steps to downsize this set.  And this is where it goes awry.  The searcher may do as follows:

  1. limit all results by requiring the inclusion of certain key terms;
  2. exclude unknown or small-scale assignees;
  3. exclude patents based on Title, Abstract and/or Drawings; and/or
  4. limit patents by relevancy score cut-off (if relevancy scores are provided).

These processes are generally arbitrary in nature and bare little correlation with relevance.  They are simply not sound bases for reducing a large aggregation of patents in an FTO search.  Inevitably, they cause omission of critical patents.

How does Clearstone Elements overcome this dilemma?

Clearstone Elements is a fundamentally unique search platform.  In Clearstone Elements, associations between patents and technical attributes are memorialized, forming specialized data files called workspaces.  Notably, these technical attributes are associated with patents on the basis of their claims and using human analysis.  These attributes (or elements) are then presented to a searcher as an interactive taxonomy.  A searcher may than effortlessly eliminate swaths of patents from a robust patent set by selecting elements not embodied by the product undergoing search (more on this process here).  In contrast to the arbitrary procedures discussed above, the Clearstone process is objective, reliable, and deliberate.

In fact, current users of Clearstone Elements are typically able to reduce a robust patent set by 90-95%.  This means that, once a workspace is put in place, provided the same constraints as in the above example, a searcher using Clearstone Elements is actually able to objectively consider upwards of 4,700-9,400 patents.  We are essentially empowering searchers to cast significantly broader nets with significantly reduced manual effort.  By replacing the conventional tools that are blunt and arbitrary with Clearstone Element’s logic-based reduction process, “faster, cheaper and more accurate” is no longer an empty promise.

Enfish v. Microsoft: The Pendulum Might Be Changing Direction For Software Patents, But Challenges Still Exist

The Federal Circuit’s recent decision in Enfish v. Microsoft Corp. was significant in that it was the first time that the court reversed a trial court’s finding of invalidity under § 101 based on the Supreme Court’s Alice decision, and only the second time that it upheld validity under that section post-Alice (the first being DDR Holdings v. Hotels.com).

The opinion was well-received by the patent bar, and the software industry in particular, as powerful precedent that can be used to fight rejections by the USPTO, defend counterclaims of invalidity in court, and otherwise strengthen the value of software patents. While the line between eligible and ineligible subject matter has become somewhat clearer, there is still ambiguity in certain areas, and questions exist regarding practical implications.

The Claimed Invention

Enfish involved patent claims directed to a “self-referential” database. The court referred to the following representative claim:

A data storage and retrieval system for a computer memory, comprising:

means for configuring said memory according to a logical table, said logical table including:

a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;

a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and

means for indexing data stored in said table.

Enfish's "self-referential database"
Enfish’s “self-referential database”

The court referred to the invention generally as “an innovative logical model for a computer database.” The primary contribution to the art of the invention was the “self-referential” aspect, which purportedly avoided the need in conventional “relational database model” systems to define and maintain many separate tables. Instead, the claimed invention can store the pertinent information in a single table. According to the patents, the new approach improved searching efficiency and resulted in more-effective storage of unstructured data.

 

The Court’s Reasoning

The court began with the two-step analysis set forth in Alice and prior cases, in which the first step determines whether the claims are directed to a patent-ineligible concept, such as an abstract idea, and the second step considers whether the particular elements of the claims transform the nature of the claim into a patent-eligible application.

There is no doubt that the Federal Circuit took aim at some of the more egregious gaps that Alice left open. Primary among these gaps was the perceived Alice takeaway that there was no real limit on the height of abstraction that can be carried out on software claims in step one. In other words, one could conclude from Alice, and courts often did conclude, that a software claim is abstract if it can be summarized into something reasonably conventional, specific claim limitations be damned.

Enfish at least partly rectified this misconception by recognizing that “[t]he ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon—after all, they take place in the physical world.” Further, “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule.” Instead, claims must be considered as a whole and in light of the specification.

Accordingly, the Enfish panel carefully considered each element of the claims, including applying § 112, sixth paragraph, to interpret means-plus-function limitations, and examined the patent specification to both (i) shed light on the claim language; and (ii) express the advantages of the claimed invention over the prior art.

The court ultimately held that the relevant question is “whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.” It concluded that the claimed self-referential database logic model is “a specific type of data structure designed to improve the way a computer stores and retrieves data in memory” and is therefore not an abstract idea. Having satisfied the first step of the Alice inquiry in the patentholder’s favor, the court did not need to address step two.

The Enfish holding gives teeth to the first step of the Alice inquiry and requires that the analysis take into consideration the nature of the invention and how it affects computer capabilities. In cases where the claims simply add conventional computer components to “well-known business practices,” they might be more likely to be found abstract under step one of the Alice inquiry.

Implications

Enfish is certainly a useful precedent for owners and seekers of software patents and should serve to strengthen patents as a general matter, but it does not (and cannot) fix the real havoc that was wreaked by the Supreme Court in Alice. Namely, the biggest problem with Alice is that it conflated and blurred the lines between questions of eligibility and those of prior art (i.e., novelty and obviousness).

Questions as to whether a claimed idea is “conventional,” “well known,” or is a “fundamental practice” have no place in an abstractness inquiry. These are questions that can be answered only by proving the existence or absence of prior art, not by some common sense-based purely mental exercise. Whether a claimed invention is abstract or practical is completely independent of novelty. The “abstractness” question should rely predominantly, if not entirely, on an isolated analysis of the actual features of the invention and whether it has some technical or practical component that makes it more than a mere idea in the ether. But that is a battle for another day, and one which the Federal Circuit does not appear to have the authority to fight until Alice is overturned or distinguished by future Supreme Court decisions.

Know Your Portfolio

swords-shield-icon-psd

“Which of our patents cover what the competitors are doing?”

“Where are the holes in our patent coverage?”

“Which of our patents cover our products?”

What the heck is in our patent portfolio?!?!”

 


A patent portfolio is both a sword and a shield; leverage

your analysis with Clearstone Elements to wield both with agility.

These are some of the most critical questions asked of in-house patent counsel, but they can also be the most dreaded. Experienced practitioners know there are no easy answers. Reliable results can be expensive and are often reached only after a significant investment in time.

ClearstoneIP is changing all of that.

In any strategic patent assessment, whether defensive or offensive, it is critical to know what technologies, products, or processes are actually covered by a particular portfolio. Patent metrics based on bibliographic and other surface data only go so far; these critical questions can only be answered with an in-depth analysis of patent claims.

For example, the cornerstone to any successful licensing program is “to have a detailed understanding of what you own and where the most value lies. It is also important to have an understanding of the technologies within your patent portfolio and how they are connected (a “taxonomy”).” In an effective defensive strategy, “good portfolio management requires monitoring of your competition’s patent holdings to identify opportunities and threats.” Key to these efforts is not just having a vague sense of generally protected subject matter, but identifying specific product-to-patent correlations with confidence and agility.

That’s why we’ve built the ideal platform for capturing and interacting with patent portfolio analysis. After a one-time effort to index a patent collection, Clearstone Elements leverages that analysis to yield powerful results, including the ability to:

  • Map competitor products to your patent portfolio in minutes to discover the patents that are most likely to be infringed. The process can be repeated for any number of products, with each mapping typically taking less than 30 minutes (even for large portfolios that include thousands of patents).
  • Map your products to your patent portfolio to determine whether your portfolio provides adequate protection for your product line and to discover gaps in coverage. This is also a convenient way to manage patent marking.
  • Mix and match product mappings to different portfolios or collections of patents to assess offensive and defensive strategies with respect to various alignments. In Elements, users perform a product mapping by interacting with a hierarchy of technical elements irrespective of the underlying patents. The user can map a product once and apply the mapping to different patent sets interchangeably, a truly unique capability that only ClearstoneIP can offer.
  • Quickly adapt product mappings to account for product changes over time to zero in on which patents become relevant due to the changes.
  • Apply saved product mappings to patents and portfolios indexed later in time. The unique nature of Elements offers a mechanism that instantly compares saved product mappings to any patents that are indexed at a later time. So when newly issued/acquired patents are indexed, Clearstone Elements will instantly inform the user which of these patents are likely to cover previously mapped products.

The Elements platform provides a degree of patent omniscience that some of our users have likened to “seeing the matrix.”

Sign up for a Clearstone Elements trial account today to start leveraging your patent portfolio analysis for insight and efficiency.

Legaltech New York Wrap-up

What a week! Our first trip to Legaltech was a whirlwind, but a ton of fun. It was amazing to meet so many people who are excited about new ways that technology can improve our work in the legal industry. The show took place at the Hilton NY Midtown on Feb. 2-4. With thousands of attendees and hundreds of exhibitors, Legaltech is the largest trade show in the industry.

First we’d like to thank ALM, the organizer of the huge show, and the Stanford CodeX Center for inviting us to exhibit as part of the much-buzzed-about CodeX Pavilion. It was an honor to be part of such an amazing group of innovators (keep an eye out for Casetext – these guys are doing amazing things by crowd-sourcing legal commentary in a free research platform!).

Our exhibit attracted a lot of attention from patent professionals, press, and tech aficionados alike. Here is Jesse being interviewed by Larry Port of Rocket Matter:

We also had the privilege to participate in CodeX’s Legal Disruption Pitch Lightning Round, where we presented ClearstoneIP in front of a packed ballroom.

ClearstoneIP
Click to read CodeX’s Recap of the Lightning Round, by Monica Bay.

See more write-ups about the CodeX session at:

The next Legaltech conference is just a few months away here in the San Francisco area on June 13-14, 2016. Hope to see you there!

Why Semantic Searching Fails For Freedom-to-Operate (FTO) and What You Should Be Doing Instead (PART 3)

Hammer-and-ScrewPart 3 of 3: What You Should Be Doing Instead

This three-part series explains why conventional techniques, particularly “semantics-based” searching, fall short for freedom-to-operate (FTO) searching and analysis.  It then puts forth a solution for avoiding these problems. Part I was an introduction to the differences between the searches. Part II identified the deficiencies of semantic searching in relation to FTO analysis. Part III explains how these deficiencies can be overcome. Click here to download a PDF of the entire series.

 

Part I and Part II of this series explained how semantic and similar keyword-based platforms are ill-suited for freedom-to-operate analysis. We saw how, for various reasons, these platforms show little for their cost.

We can overcome the shortfalls of conventional search tools by building a new FTO solution from the ground up.

Let’s take a look at some necessary characteristics of such a solution:

1.  The solution must recognize claim scope, not just patent disclosure.

Easier said than done, right? Patent claims are notoriously complex and are often intentionally vague or broad. Despite its complexity, claim scope could be effectively navigated with the right platform.

First, the solution ultimately must leverage human analysis in some form. We should dispel the notion that artificial intelligence, such as semantic-based algorithms, can properly interpret claims. Sure, they may be fine at retrieving patents that disclose pertinent subject matter, but there is a fatal disconnect when it comes to claim coverage. Semantic algorithms simply cannot read and process delineations of scope. They are essentially language-similarity detectors and can’t differentiate between claimed concepts and those that are merely disclosed.

Second, the solution needs to handle claim concepts in an eliminatory or deductive framework. This is a significant departure from the status quo. Conventional platforms amass or aggregate sets of potentially relevant patents to create a large set for deeper review. However, in FTO, it is far more efficient to arrive at a review set by first eliminating irrelevant patents from a large initial set based on a claim scope determination. Several reasons for this were discussed in a previous blog post.

The correct framework places the most relevant question at the forefront, not the back end. For FTO, the question is whether a particular product embodies each claim element of a patent. It is not whether a patent discloses similar subject matter.

2.  The ideal FTO solution accounts for the infinite ways of describing a product.

The ideal FTO solution should not require an analyst to identify keywords or specific terms ahead of time because, as discussed in Part II, there is never a single “right” way to do so. And if an analyst were to try to capture all of the ways, semantic platforms would retrieve an impossible amount of results.

The solution to this problem must remove this guesswork from the equation. Building on the eliminatory framework described above, the solution should present to the analyst an organized menu of claim concepts. Instead of considering what to bring into a search, an analyst only needs to consider which of the displayed claim concepts do not correspond to the product.

The menu of concepts should be displayed in an organized manner, for example an index-based system that an analyst can navigate. The index will present a list or taxonomy of technical concepts that each represent patent claim elements. In this way, the analyst can simply make a determination on an element-by-element basis as to whether it relates to the product at issue.

A rough semblance of a concept-based index exists in the form of official patent classification systems used by patent offices around the world, such as the former U.S. Patent Classification system (USPC) and the newly adopted Cooperative Patent Classification system (CPC). But these systems are still extremely cumbersome for FTO for several reasons: (i) they are not keyed to specific claim elements but, rather, general inventive concepts; (ii) they have no capacity to distinguish among different independent claims of a single patent; (iii) they are not nearly specific enough to be effective; and (iv) while they are updated from time to time, they are effectively static indices that are difficult to modify and adapt.

The ideal FTO solution includes a dynamic, easily modifiable taxonomical index of elements that are programmatically connected to specific patent claims. The index has high granularity but allows the analyst to operate as broadly or as specifically as desired without reducing efficiency.

3.  The ideal FTO solution does not sacrifice completeness for relevance.

In Part II, we discussed the problems that arise when a search platform provides results in a “ranked” order. We saw that these ranking algorithms could be arbitrary since they are based primarily on similarity of language or terminology. Highly relevant results from an FTO perspective can be placed far down the result list. Missing pertinent patents in an FTO analysis is far more consequential than missing a potentially relevant reference in a patentability search.

The ideal FTO solution should be equipped to capture all potentially relevant patents, readily bring them to the surface, and do so efficiently. It will avoid burying highly relevant patents and make them easy to locate.


Clearstone Elements™ – The Ideal Solution

Our Clearstone Elements application is the ideal FTO solution. It is an interactive platform that, as a core capability, provides a comprehensive taxonomical index of technical elements drawn directly from human analysis of patent claims. As an analyst navigates the hierarchy, he or she selects elements that are not present in a product under review. The software will automatically eliminate from the initial set the patents that require the selected element for infringement. After just a short period, typically less than an hour, 90-95% of the initial patent set is usually eliminated, leaving the most critical and relevant patents for closer review.

To see this more clearly, take a look at the below real-time video, in which more than 10% of the initial patent set is eliminated in less than 45 seconds:

These kinds of results and efficiency are simply not achievable with any other system. This is how the “noise” is removed from search results.

An interesting phenomenon occurs in FTO. A large proportion of patents tend to be dismissible from an initial patent set based on only a few, general requirements. This is due in part to the noisiness of conventional search tools, but also to the peculiarities of claim-drafting.

As an example, consider the golf club field. There are about 4,500 active patents in this field, a 100-plus year old industry. Obviously, these active patents are directed to nuanced, highly incremental improvements. Yet, of this universe of highly specific patents, the claims of about 62% require a golf club head to be an “iron-type,” “putter-type,” or “wood-type.” What this means is that, if one only applies those three broad technical concepts in Clearstone Elements, they could eliminate 30-40% of patents from any particular search. Imagine what is possible by applying a few more concepts.

Determining if this phenomenon occurs in your industry is simple enough. Review a random swath of patents from the initial patent set of your last comprehensive FTO investigation. For patents that you excluded, what were the reasons? Were they excluded for requiring broad, sweeping technical concepts (or were you compelled to dig deep to understand the fine points of novelty)? Did these reasons frequently recur (or were they unique)? I suspect that most patents were dismissible based on broader concepts that frequently recur throughout the patent set. Clearstone Elements leverages this phenomenon and more to achieve incredible results.


The graph below illustrates conceptually how the addition of a deduction-based platform such as Clearstone Elements can shift the cost-accuracy curve for FTO. Because of the ease of objectively eliminating large portions of patent references with little work, high accuracy could be achieved at little cost. Conventional tools are unable to achieve this efficiency.
Ded EngineAnother important aspect of Clearstone Elements is that the analyst does not have to know beforehand which aspects of the product may present infringement issues. The patented concepts are presented on the screen in the taxonomical index. The analyst only needs to decide whether the product embodies the concept or not. This is how the system ensures that critical patents are not missed – they are only removed from the initial set upon a deliberate decision by the analyst based on displayed concepts.

Taking this a step further, analysts can create a “product record” upon completing their review of the index. This product record is essentially a fingerprint of the product as it relates to the indexed elements, and, in turn, how the product relates to the initial set of patents. The product record can be opened and modified later on to quickly reflect any changes that are made to the product during development to achieve an incredible result: The Elements interface will instantly display a list of patents that become of issue solely due to the product changes. This capability is truly unprecedented and is key in streamlining product development through enhanced communication between product designers and the legal department. See the blog post, Bridging the Divide Between Patent and Engineers, for more.

Many more interesting and powerful results are being achieved with Clearstone Elements as a foundation, which will be discussed in future articles. The methods discussed here will pave the way for a new industry standard for all varieties of patent claim analysis since they represent the correct analytical approach (not to mention how enjoyable it is to interact with the application and watch the patent counter drop!). We hope you join us on this exciting journey.