Philip Brooks' Patent Infringement Updates

Former Thomson Scientific Executive Appointed to PatentCafe Top Sales Spot

The following is excerpted from a PatentCafe April 24, 2008 press release I received via email (the Company's website does not yet have the full release available):

PatentCafe.com, Inc. is pleased to announce the appointment of David M. Schab as Vice President of Sales. As the latest member of PatentCafe’s executive team, David will assume responsibility for building the company’s global sales operations, and for introducing an expanded line of enterprise level patent portfolio management solutions.

PatentCafe’s artificial intelligence based solutions provide decision-support data for intellectual property managers responsible for corporate Open Innovation initiatives. The company’s line of IP software solutions are used for patent research, infringement analysis, product R&D strategy, licensing revenue development, patent-based business intelligence, portfolio management, and technology investment.

David joins PatentCafe from Hoover’s (a Dunn & Bradstreet Company), where he was National Director of Sales.

Previously, with Thomson Scientific, he was the Director of Global Sales and Client Services for Thomson’s patent information companies (Dephion, Derwent, Micropatent, Aureka, IIS). At Thomson, David designed and executed the company-wide organizational model that resulted in the doubling of the average monthly business production.

Read the full press release here.

Collecting Evidence of Infringement

In a presentation to the Boston Entrepreneurs' Network on January 3, 2006, Brian T. Moriarty of Hamilton, Brook, Smith & Reynolds, P.C. made the following observations about patent infringement investigations:

Collecting Evidence of Infringement

• Hunches and “I know it” DON’T work
• Go get proof
• Document your search
• Keep your lawyer in the loop and keep it confidential

Market Intelligence

• Web sites
• Patent applications
• Trade shows
• Trade journals
• Sales material
• Other lawsuits
• Word-of-mouth

Collecting Evidence

• Must be honest
• No illegal collecting of evidence
• No spying or fraud
• Can be aggressive, can’t be dishonest
• Everything you do will be second guessed

Analyze the Evidence

• Critically analyze evidence
• With valid scientific tests and methods
• Compare evidence with claims
• MAKE A CLAIM CHART

Develop Your Proof

• Can your theory of infringement be clearly explained?
• If not, something is wrong
• Every element must be included

See the full presentation here.

Really Simple Competitive Intelligence

Dennis Kennedy writes in the March 2008 print issue of the ABA Journal:

Clients increasingly look to lawyers who know their business and industry well, and a common client wish is that their lawyers alert them to issues in advance, and not simply react when the client calls.

All of this has generated a new interest in something called competitive intelligence. CI addresses ways to get information you can use to be more effective in competing for business and serving clients. If you monitor court filings for your clients’ names, you might alert them to a filing and send a pleading well before they hear it elsewhere. You’re being helpful—and more likely to get the new assignment. If you monitor news items containing your firm’s name, you won’t be surprised when a client mentions the story he or she read about your firm.

While sophisticated, expensive and impressive CI tools are available, let’s look at two free tools that will give you a good taste of what CI is and how it can help you. Both tools fall into the category of alerts.

The first tool is e-mail alerts. An e-mail alert is like a customized e-mail newsletter on the subject of your choice.  A great example is Google Alerts.

If your e-mail inbox is already overflowing from other sources, then you will want to experiment with another type of free alert tool known as an RSS feed. RSS stands for really simple syndication.

These tools are very effective for patent infringement investigations as well.  Read how to set up these alerts and the rest of the article here.

Niche Search Innovation

Richard Martin wrote an article in the February 11, 2008 print edition of Information Week titled, "The Search Market Fallout of Microsoft-Yahoo."

When tigers battle, mice get fat. That pseudo-Chinese proverb well describes one likely outcome of Microsoft (NSDQ: MSFT)'s $44 billion bid for Yahoo (NSDQ: YHOO), which would reduce the top three Web search providers to just two: Google (NSDQ: GOOG) and Micro-Hoo (or whatever the mashup of Yahoo and Microsoft's MSN Live search tool would be called).

Below, far below, these consolidating giants is a proliferation of search upstarts, some of them providing consumer-oriented Web searches and some providing highly specialized forms of enterprise search. The clash of the titans atop the search pyramid is opening up new opportunities for these smaller players while helping to enable a broad flourishing of innovation in information-access technology.

The question the article provoked in my mind was, "How will this innovation benefit patent infringement investigations?"

Take Silobreaker, which debuted its contextual search engine at last month's Demo conference. Silobreaker provides search results optimized for current events, with added-value elements including "context extraction" (how the person or topic fits in with other people, institutions, or categories), geographical mapping, trend tracking (graphing numbers of mentions in the world press), and relational mapping (tracing relations between entities or people). The engine draws content on global issues, science, technology, and business from about 10,000 news, blog, research, and multimedia sources.

Silobreaker is being introduced as a free Web tool, but CEO Kristofer Mansson sees opportunities for use by large companies and government agencies--including those in intelligence. Mats Bjore, the company's director of business development, comes out of the intelligence world: He helped set up intelligence efforts involving publicly available data for the Swedish Armed Forces.

I have just recently tried Silobreaker and it has some very interesting features that I believe maybe useful additions.  Has anyone spent time using Silobreaker?  What about some of the others mentioned in the article, such as, Attivio, ChaCha and Eyealike?  Please provide your input by adding a comment.  The full Information Week article is available here.

What Makes a Compound Obvious?

A reader has posited the following scenario:

If there is a patent claiming a composition consisting of A and B ingredients. wherein by adding B ingredient, the efficacy of A is enhanced.

In this case if we are able to find a patent or research articles talking about the combination of A and B, but they do not say anything about an "increase in efficacy," then:

1) Is this information sufficient to invalidate the said patent?
2) Should we consider composition application or property during invalidation searches or not?

Since I am not an attorney, I asked Jim Singer, a friend, fellow blogger (IP Spotlight) and partner with Pepper Hamilton LLP, to respond.  Jim writes:

You reader's question will be fact-specific, and it will depend on the precise language of the claim and the contents of the prior art.  Based on the information that he provided, it sounds like the question will be "is the claimed use of the compound obvious in view of the fact that the compound was already known."  The standard for obviousness depends on numerous factors, and the application of those standards is undergoing some change in view of the U.S. Supreme Court's recent decision in KSR v. Teleflex.

I suggest that he ask a patent attorney to review the patent, its file history and the prior art to provide an informed response to the situation at hand.

Anyone else want to weigh in on this scenario?  For more on KSR v. Teleflex, see Gene Quinn's blog (PLI Patent Blog) live from the 2nd Annual Patent Law Institute in New York City.

The English Logic Kernel (tm) for Patents

Dr. Richard G. Cooper's English Logic Kernel or ELK is available as a free beta download.  At his website Dr. Cooper provides the following description of ELK:

• Prior art keyword search made easy and intuitive
• Background process downloads patents while you work
• Supports synonyms for keywords integrated with search
• Instant claim dependency tree generation
• Instantly generate two column support claim charts for prosecution
• Instant generate three column challenge claim charts for litigation
• Context sensitive help for each tab section of the program
• Complete user's guide documentation
• Designed for security of information so you never have to fear loss of competitive knowledge
• Comments from happy customers show that we deliver quality results and world class technical support 

Who can benefit: Patent agents, patent attorneys, expert witnesses, patent paralegals, scientists, engineers, inventors, M&A agents, corporate counsel, intellectual property investors, and anyone else who works with patents!

I am interested in any feedback you can offer from your experience in using ELK - just post a comment here.

How Do I Determine Whether a Patent is Infringed?

Wolf Greenfield's brochure titled, "Questions and Answers on IP Litigation" contains the following:

How Do I Determine Whether a Patent is Infringed?

There are two steps involved: (1) discovering details of the accused activity and (2) assessing whether that activity infringes.

In some cases, the first step is easy. For example, to learn about a mechanical device being sold to the public, you may simply purchase and examine it. In addition to reverse engineering, useful information can also be found in advertising materials or web sites and in patents owned by the suspected company.

In other cases, more investigation is required, such as when the patent covers a particular manufacturing process and there are many ways to make the product.

Care must be taken when investigating a possible infringement, however, not to violate any of the competitor's rights. For example, you may not induce a competitor's employees or its customers to violate a confidentiality agreement.

Assessing whether an accused activity actually infringes requires a fair amount of expertise. In general terms, a patent's scope is defined by its "claims," listed at the end of the patent. If any one claim is infringed, the patent as a whole is infringed. To literally infringe a claim, each and every limitation of the claim must be met. The analysis proceeds word-by-word or clause-by-clause to see if each is met in an accused device or process.

For a simple example, consider a patent that describes a typical four-legged dining room chair and has a claim for: 1. (a) a sitting device, comprising: (b) a substantially planar surface to support a person's hindquarters; and (c) at least three legs, each coupled to the surface, to support the sitting surface.

A stool with three legs would likely infringe, even though its appearance (no back, three legs) is different than a dining room chair (which has a back and four legs). The stool (a) is a sitting device, (b) has a flat top which can be sat upon and (c) has at least three legs, connected to the bottom of the flat surface, to support the surface. A bean bag chair or a large cylinder, however, would not likely be found to infringe -- neither has "at least three legs."

When a claim limitation is not met literally, a plaintiff may have a second chance to prove infringement (depending on the prosecution history of the patent) -- by asserting the "doctrine of equivalents."

Here, the plaintiff would argue that the accused product or process is so close to meeting the literal language of a claim that it would be unreasonable to find no infringement. In our example above, if a chair had three legs coupled to a post, or platform, which was coupled to the sitting surface, it might be argued that such a chair infringes the hypothetical patent described above under the doctrine of equivalents.

Read the full brochure here.

Patent Infringement Analysis

Vinod Kumar Singh writes at his Competitive & Technical Intelligence Toolbox blog:

Each patent is assessed and tentatively rated with respect to its suitability for assertion against products of the opposing party. The rationale for each patent selected and the claims argument is articulated in a written summary. The object of these exercises is to assign to each inventor's patent a value, in terms of degree of confidence of the likelihood that the target company's products infringe that patent according to [six] criteria.

He continues by describing the elements of the "Infringement Survey:"

1. Becoming technically conversant with the claims of the patent, typically in collaboration with the client's engineering personnel.
2. Examining target company literature to identify the likelihood of claims infringement.
3. Analyzing target company technical publications and actual product samples.
4. Creating claims charts and written infringement arguments.
5. Developing patent analyses including the technology subject-matter expert's interpretation of the patent's claims and structure of the invention and how the patent's claim should be asserted, vis-a-vis the target company's products.
6. Company profiles are analyzed to identify present negotiation opportunities, especially in the context of the client's marketing and development strategy. The company's strengths are assessed with regard to product technology, component technology, design tools and manufacturing technology and quality and reliability. The target's weaknesses are also appraised relative to competition, R&D and distribution channels.

Read the rest of the post here as well as many other interesting posts at his blog.

WizPatent Express Launches

I wrote a post about WizPatent Express in March.  I received word on Thursday, November 15, 2007, that WizPatent Express has launched and is now available for download.  I downloaded it this morning and have just begun to use it.

Victor Lin of WizPatent writes:

We have taken an entirely new approach to the layout and our design philosophy for WizPatent Express is Simplicity, Usability and Structural Elegance. The layout is now totally revamped from the beta version and we believe that users will find it incredibly easy to use.

WizPatent Express is the industry’s first patent search and management system fully integrated with Internet Explorer, and it abstracts search results directly from USPTO, Espacenet, FreePatentsOnline and Google Patent Search. There is no need for users to learn a separate search interface and you can search in the way you are used to! 

Some highlights include:

• You can open the same WizPatent Express Project in multiple IE tabs.
• With batch download capabilities and extensive drag-and-drop features, you can build your collection quickly and effectively.
• WizPatent Express allows you to store your collections locally on your harddrive for confidentiality and rapid access.
• View the INPADOC status of EP patents as well as the PAIR status of US patents from the right click menu.
• Tired of typing out lists of patent numbers? Just copy a block of text into your clipboard and WizPatent Express automatically abstracts out the relevant patent numbers immediately.
• Sharing documents is a simple copy and paste operation.

More information and the dowload link are available here.  If you try the software, I would appreciate you providing a comment to this post with your reaction.

System, IC Teardowns Critical to 'Business Intelligence'

The following is excerpted from an August 29, 2007 posting by Patrick Mannion of TechOnline at EE Times Asia:

With engineers stretched by extreme competition, accelerated time to market pressures, increasing cost and performance requirements and global patent-protection concerns, teardowns of ICs and systems have moved from being a hobby or a back-room skunks works activity to being a critical part of the electronics company's "business intelligence."

That intelligence can provide anything from time-saving clues as to how competitors solved the problems engineers are currently grappling, to identifying potential patent infringements, to full cost analysis. With enough information over time, teardowns can even provide insight into a competitor's business strategy.

It was this rising interest in IC and systems intelligence that spurred CMP Technology into acquiring SI in a $26 million deal. The acquisition was the biggest in the history of CMP Technology's Electronics Group (which includes TechOnline and EETimes) and marries SI's expertise in the technical investigation of ICs and electronic systems with CMP's electronics media and services. It also caps a four-year working relationship between the two companies that culminated recently with the popular Apple iPhone and gaming-platform teardowns for TechOnline and EETimes.

For its part, SI has carved a niche for itself reverse engineering ICs and performing everything from circuit extraction to patent infringement research. Though some cry foul and questioning the legality of reverse engineering, Markey stipulates that the practice is well known and protected under the U.S. Chip Protection Act of 1984. "It might seem counterintuitive, but you can't protect your IP [intellectual property] without doing the [reverse] engineering," she said. Using advanced preparation techniques and cutting-edge equipment, the company can look at a device to extract information pertaining to structure, functionality, circuit-design techniques, performance and estimated cost. "We can also check to see if a company has done what they said they would in a press release two years ago," said Markey.

Read the full article here.