By: Mark R. Malek
Hi all. Just a quick note to let you know that the TacticalIP Blog has not gone away. We moved it to the home page of Zies Widerman & Malek. You can access it by clicking here.
In the ever-changing world of the USPTO to comply with changes in the AIA, satellite offices are being established remote from the Alexandria headquarters. A first branch was opened July 13 in Detroit, with others to follow in Denver, Dallas, and Silicon Valley. The stated purposes are included in the enacting law, and are worth going through with a critical eye.
The first purpose is to “increase outreach activities to better connect patent filers and innovators with the Office.” The way this seems most likely to happen is with an increase in interviews, more specifically video interviews, as is indicated will be possible in the Detroit office, and hopefully will also be the case for each of the other satellite offices. Aside from that, unless the Patent Office opens up the satellite offices to in-person interviews, I cannot see how outreach will increase by that much. Mixers with examiners probably wouldn’t be social events of the season. Levity aside, reaching out to individual inventors through outreach programs at the satellite offices could be a real boon to garage-inventor types, encouraging them to start pursuing patent protection for inventions where they otherwise might not be aware or be somewhat disillusioned or discouraged from doing so.
Satellite Office – the new recruiting pools for local law firms?
The second stated purpose is to “enhance patent examiner retention.” This might be the most worthwhile of the goals of the satellite offices. Unfortunately, it might also be the most difficult to achieve. Ostensibly, it seems like the thinking is if an examiner lives near a satellite office, their satisfaction with the job will increase, hence increasing retention. However, I can easily imagine the scenario where now, an examiner can put in his time as an examiner in the technology hub of his choice, selected from any of the satellite office locations, all the meanwhile starting his search for his next position as a patent agent or attorney, depending on his education background. Time will tell which scenario plays out.
The third stated purpose is to “improve recruitment of patent examiners.” I’m not too sure how this one will play out. Will representatives from the patent office tour nearby engineering and life sciences programs at local universities, trolling for recruits? Perhaps it will be the aforementioned mixers that generates interest in employment at the satellite offices.
The fourth stated purpose is to “decrease the number of patent applications waiting for examination.” There are of course two obvious ways to reduce the backlog of applications: increase the examining core, and reduce the average pendency for applications. In announcing the opening of the Detroit office, the USPTO said 120 highly-skilled positions would be created. I don’t know how many examiners will be included in that number, but there is a good chance a significant portion of those positions will be examiners.
The fifth and final purpose is to “improve the quality of patent examination.” This seems to be a derivative benefit of the enhancing retention and improving recruitment of examiners. If in fact examiners are successfully recruited and retained as a result of the satellite offices, it stands to reason the quality of examination would go up. We’ve seen a mix of problems and solutions to attacking the backlog dilemma, with varying degree of success. However, there seems to be agreement that the satellite offices will be a net benefit to the system, with many of the questions discussed above remaining open. One thing is certain; with the increasing rate of applications being submitted, bold action must be taken to tackle the backlog of applications, before it becomes as unwieldy as some other government figures.
Having only recently become aware of the genius that is The Oatmeal, I’ve had to digest its wealth of top-shelf comics, as well as informative comics rivaling those of XKCD, in a relatively short time. My interest was first drawn when TO became embroiled in what is universally recognized as a frivolous suit filed on behalf of Funny Junk, a comedy-aggregating website, filed by Mr. Sex.com himself, Charles Carreon.
It is nothing new for a party caught red handed and exposed for making a cheap buck to get angry and sue, but what makes this story interesting is how TO redirected the venom of this blunder in a judo-like maneuver to utilize TO’s immense popularity for a charitable purpose. TO flipped Funny Junk’s demand for $20,000 on it’s head, calling on his fans to donate the money instead to WWF (not WWE for trademark fans out there) and ACS. Not only did TO’s fans pony up the asked-for 20 grand, they added 200 thousand more.
Intermixed in this tale of delicious retribution is the site indiegogo.com, a kind of Kickstarter for non-profits. This type of microfinancing, popularized by the likes of Prosper, LendingClub, and Kiva, has been adopted for the purpose of funding projects for the greater good.
It seems that, based on TO’s success in its earlier outing, he decided to take the next step by undertaking a bigger project, the creation of a museum honoring Nikola Tesla at his Wardenclyffe facility. In order to exceed a competing bid, TO set about collecting $850,000 in donations, which would be matched by the state of New York. Once again, TO’s fans answered the call, exceeding the desired amount by nearly $350,000.
We are in the midst of a shift, a realization of what the earliest internet visionaries imagined. Along with the much-reported use of social media as a vital means of communication in the Arab Spring, social change is occurring. More than that, its genesis is completely online. When a site like TO and its kind, including the likes of Penny Arcade, are able to create communities through common interest and spur action from that community. Maybe it’s just me, and maybe I’m just recently becoming aware of it, but this type of activism for causes generally unrelated to the reason for the formation of a group seems unprecedented. It’s like new societies are being created. Sure, the fact that they are created around a webcomic might make some doubt their sincerity or worth, but they would be ignoring the hard evidence, in the form of dollars and cents, that the communities are donating, taking worthwhile causes on their backs and acting out of nothing but interest in the cause. And that is something I am proud to be a part of. I encourage anyone reading this post to engage with the online communities that already exist around sites you likely visit every day, and join in their charitable efforts.
It comes as a surprise to nobody that adversaries in litigation disagree over nearly everything they can come up with contrary positions for. Along with infringement and invalidity, the determination of damages is one of the most crucial determinations made in the course of a patent infringement suit. As such, when it is time for damages to be addressed, much time and effort is expended by both parties in conjuring up a monetary figure that represents the damage done to the patent holder in the case. The methods used by each party can result in drastically different figures being reached by each of the parties. The two main methods of calculating damages are lost profits and reasonable royalties.
THAT’S where the lost profits went!
Lost profits are a very patentee-friendly damage calculation that attempts to determine how many sales were diverted from the patentee by the infringement, and how much profit was “lost” as a result of the diversion. Practitioners use the Panduit factors to inform their calculation, which include: 1. the demand for the patented product; 2. the absence of accepted non-infringing substitutes, meaning there is nothing on the market or that could be on the market that would essentially similarly divert the sales from the patented product without infringing the patent; 3. the manufacturing and marketing capability of the patentee to exploit their patent; and 4. the amount of profit made from each diverted sale, essentially revenue minus cost.
In contrast, the reasonable royalty school of thought uses a hypothetical negotiation between the patentee and the infringer, wherein the court does its own conjuring in determining what royalty the infringer would have paid the patentee before any infringing activity. Among the presumptions made by this method are that the negotiation takes place as the infringing activity begins, that both parties are willing to come to an agreement, and that the activity will indeed infringe the patent. This method results in substantially lower damages, and hence is favored by infringers, whereas lost profits is favored by patent holders. One interesting and sensible concept should be kept in mind when using the reasonable royalty method, which is that the infringer can, and indeed likely should, make a profit. Even a court is unlikely to engage in a thought experiment where a purveyor of goods would enter into a deal where they would not profit.
Recently, Bernard Chao posted an article at patentlyo.com that discussed the Dr. Evil-like award of
One BILLION dollars! MUHAHAHAHA!
damages in the Monsanto v. DuPont patent infringement case where DuPont was determined to have practiced the RoundUp Ready soy bean patent without a license. No fireworks there. However, DuPont never sold any soy beans produced by such infringing activity. Nonetheless, the jury arrived at damages of one billion dollars. As Dr. Chao’s article points out, because the relevant court documents are under seal, nobody outside that courtroom has the foggiest idea as to what damages theory led to such an award. Unsurprisingly, DuPont is appealing this decision, and time will tell what the ultimate damages will be. However, it is clear that as long as money in sums of this magnitude are at stake (or, perhaps more precisely, can be put at stake), damage theories are a critical element in end-phase patent litigation.
Most people have a pretty good grip on the basics of criminal law; however, civil law tends to give people a little more trouble. Criminal law covers crimes, prosecution, and defense. That’s really as good a definition as any. However, more specifically, criminal law encompasses the dealings with any criminal activity that causes harm to another individual or the general public. Within the criminal law realm, there are written rules and statutes that set out the punishment to be imposed on people who do not obey the law. Civil law, on the other hand, deals with disputes between individuals or organizations, in which compensation may be awarded to the victim.
First and foremost, civil and criminal cases begin in two different places. In criminal law, a person accused of a crime is charged in a formal accusation, and the government, on behalf of the people of the United States, prosecutes the case. In civil law, a private party (the plaintiff) claims that another person or entity (the defendant) has failed to carry out a legal duty owed to him/her.
One of the biggest differences between civil and criminal law is the idea of punishment. Typically, a losing defendant in civil litigation reimburses the plaintiff for losses caused by the defendant’s behavior. In contrast, a criminal law defendant is punished by incarceration in jail (and in exceptional cases, execution of the defendant) and/or a fine made payable to the government.
Defendants in criminal cases are presumed innocent while parties in a civil case stand on even ground. In civil law cases, the burden of proof requires the plaintiff to convince the trier of fact (whether judge or jury) of the plaintiff’s entitlement to the relief sought. This means that the plaintiff must prove each element of the claim, or cause of action, in order to recover. In criminal law cases, the burden of proof is always on the state. The state must prove that the defendant is guilty beyond a reasonable doubt, while the defendant must prove nothing.
It is worth dissecting this difference between criminal and civil law in a bit more detail. Legal authorities tend to believe that “beyond a reasonable doubt” means that there is at least a 98% or 99% certainty of guilt. In that case, the triers of fact in a criminal case have to be essentially CERTAIN that the defendant is guilty. On the other hand, in civil cases, if the trier of fact believes that there is more than a 50% chance that the defendant is liable, the plaintiff wins. Therefore, it is basically a balancing act, where the trier of fact must decide which side they believe more, even if only a touch more.
Bad Behavior has blocked 10403 access attempts in the last 7 days.