Litigation Quality Patent PatentCast

Invention2Exit: Patent Case Study Interview with Lynette Robinson Lynette is a sought-after speaker & performer, entrepreneur, and business coach who specializes in helping entrepreneurs go from lightbulb moment to launched in a fraction of the time, so they can skyrocket their sales and create the life and business of their dreams. Site: https://www.successacceleratorlive.com/join 

Craige interviews Alex Hargrove who talks about how he is buildng a fast growing business around his patented software technologies and developing a patent portfolio to protect his software. If you are interested in geting your own patents for your software patents, call (512) 649-1046 or visit us at ThompsonPatentLaw.com or schedule your Patent Needs Assessment now. If you would like to learn more about Alex or Netlaw please visit them at https://www.netlaw.com/ or connect with Alex on Twitter @HargroveAlex

In this episode of "Ask The Patent Attorney," Martin Schweiger interviews Craige Thompson, JD, EE, PE. Craige explains the golden key to avoiding multiple office actions.   

Summary:   ​In this episode of "Ask The Patent Attorney," Martin Schweiger interviews Craige Thompson, JD, EE, PE explains how to  secure IP rights for a series of inventive concepts.   The Patent Offense Book: Portfolio Manager's Guide to 7 Steps to a Safe, Secure Patent Portfolio

Summary: In this episode of "Ask The Patent Attorney," Martin Schweiger interviews Craige Thompson, JD, EE, PE explains his thoughts on the America Invents Act.  This show was originally posted in full here: ip-lawyer-tools.com Martin Schweiger´s firm Schweiger & Partners

Summary: What is the R&D Tax Credit?  Welcome to this special edition of the Litigation Quality Patent PatentCast. I’m Your Host Craige Thompson of Thomson Patent Law. This is a very special podcast because we're joined by Jeff Holmberg who's a manager a CPA with Froehling Anderson, out of the Minneapolis Minnesota office. He's going to teach us something very important for in the inventors and innovators who are seeking patents and are doing R&D.  We are going to talk about the very important R&D tax credit program. Jeff is an expert in he has been doing this for a long time in his career and specializing in the area and on this R&D Tax Credit. The R&D Tax Credit is especially important to people who get patents, because you know, we want to pay as little to the government as possible. That's the idea here when you're doing research and development.

Although ZeroClick's finger gesture patents were temporarily brought back to life on appeal, Apple has ample avenues to kill it off permanently on remand back to the trial court in the Northern District of California.  The patent, which was drafted pro se by a doctor who wanted to improve the patient charting process without having to click on a pointer, was not invalid on the ground that it should be interpreted in means plus function form (if it were so interpreted, it would likely have stayed dead).  Apple does not appear worried.  Apple appears to have simply used the opportunity on a relatively weak patent to try to undermine a huge swath of all software patents that might have been subject to means plus function rules.  Had Apple been successful, many more software patents would have been put on life support.  However, the Federal Circuit reversed Apple's win below, and the result is that software patent claims are more likely to survive if they recite terms like "User Interface Code" or "Program Code," which makes them more likely to be considered sufficiently definite structure (like "circuit" is for hardware), and less likely to fall under the more challenging means plus function rules.

As the CEO of a technologies company, have you thought about what would happen if your top engineers walked out the door with a patentable idea and started a very profitable business? Every employment agreement these days should have a clause obligating employees to assign their rights and invention to your company. However, this doesn’t always happen. Every engineer will leave their current position at some point, and some of them will leave with extremely valuable ideas in their heads that they have been moonlighting on. In today’s PatentCast, discover how an engineer walked out with valuable patentable ideas when his company was focused on GPS technologies for surveying applications. This former employer lost out on the “Big Win” when they could have had a very profitable idea without expensive or risky litigation.  

Is Your Patent Attorney Getting You the Right Claims? The first episode was about Litigation Quality Patent Claim Criteria. We went through the twelve, high-level claim criteria areas that you can use as a checklist to assess Litigation Quality Patent claims. Whether you’re getting those claims that have been through those considerations or not. And today, we’re going to ask the other half of that question: what about claim scope? Am I getting Litigation Quality Patent Claim Scope when I’m filing my patent application? How can you tell?   If you missed it, click here to listen to episode 1.

Today we have a special Ask the Patent Attorney two-episode edition, answering the question: "Is my patent attorney getting me the right claims?" To answer that question, we’re going to break this up into two parts. The first part is the Litigation Quality Patent Claim Criteria, and the second part is the Litigation Quality Patent Claim Scope. You need to have both to assess and give you a proper answer to the question that maybe isn’t frequently asked but should be asked. If I were a client of a patent attorney, this is the top of my asked questions.  

This is an important case from 2014. It is part of our post-Alice software series of Litigation Quality PatentCasts because it’s about an important decision that’s often cited in prosecution literature, in IPRs, and in litigation in favor of patent eligibility for software claims in certain circumstances. Alice is the Supreme Court decision, and it has set the bar and the two-step Alice test for analyzing whether claims are patent-eligible subject matter, or whether they’re too abstract, to be patentable.

In this installment of the Post-Alice Software Series, the Federal Circuit burns off some of the fog surrounding software claims at Step 2 of the Alice inquiry.  The case of SAP vs. Investpic appears to directly answer, for the first time, whether a claim can lack the “inventive concept” needed to survive Alice, even though the claims are “groundbreaking, innovative, or even brilliant” as well as non-obvious.  Now we know that an “inventive concept” cannot be found in the non-abstract realm, e.g., the claimed improvement can’t be an improvement to merely abstract “math.” 

In this enlightening review of Microsoft's successful non-infringement defense against Mastermine's software patent relating to pivot tables, Craige exposes the 4 layers that must be considered to properly interpret a patent claim.  Craige provides crucial insights into the subtleties of each layer that make the difference between successful patent enforcement and just getting close but falling short, as Mastermine did with their claims.  As a bonus, Craige takes this case as a rare opportunity to explore hybrid claiming techniques, showing the factors that courts look at to decide when to permit both method and apparatus elements to be recited in the same claim - which can produce very powerful claims, for example, to protect software! 

When is software that automates a human task patentable? When is it too abstract to be patentable? In this special edition of the post-Alice software PatentCast series, Craige explains how the automation software claims were indeed patentable. Craige extracts key themes that pop up in many software litigations, and explains how to apply the lessons learned to create and enforce Litigation Quality Patents®

No! Common sense or ordinary creativity cannot substitute for reasoned analysis and evidence! This puts a bar, albeit a low bar, on the PTO’s ability to waive their hands and find patent claims obvious. Listen to Craige explain how Apple and the PTO could not get over this bar to invalidate an early “IOT” claim. Visit us at https://thompsonpatentlaw.com/

Disaster befalls a patent owner whom they decided not to tell the Patent Office about 61 sales using the claimed intervention before the patent’s critical date. Craige explains how they hurt themselves in the patent office, which led to them losing their patent, getting sued for tortious interference, and paying the competitors legal fees on top of damages!

Did you know... fear from being sued and future business losses does not give you the right to sue a patent owner to get their patent declared invalid/ not infringed? Craige explains how manufacturers can defend themselves by a “DJ” (declaratory judgment) attack under some facts, but not others

visit: https://thompsonpatentlaw.com/patent-process-flowchart/ to get your copy of the Patent Flowchart. Most patents get rejected at least once. What is going on? Axiom during patent prosecution: "The key is to get out of the PTO as fast as possible with Litigation Quality Patent claims that cover a Commercially Valuable Choke Point."

Good news! You could be sued in fewer places! Business owners will be relieved to know that their risk of being sued for patent infringement in some far away and unfriendly court just went down! Find out how a patent spat over supercomputers can keep you from traveling so far to defend against a charge of patent infringement.    

In this episode of Ask The Patent Attorney Craige analyzes Michael Powell v Home Depot to answer one of our most frequently asked question, “How can I Monetize my patent asset?”   Please visit us at ThompsonPatentLaw.com.

In this episode, Craige Thompson answers the frequently asked question "How do international patents work?" Craige discusses his perspective about the international patent process.

Should you file a provisional or a non-provisional? There is no one size fits all answer. The best choice depends on your unique business situation and strategy. Craige explains what makes these two filings similar and different from each other so you can make a more fully informed decision.  

The Alice barrier to software just got cut down a couple notches!  Is this sleepy little case going to shake up prosecution and litigation of software patents? Tawfiq uncovers how it might have just become harder to invalidate software claims, under step 2 of Alice in District Court, while Craige explains the potential sea change that promises to hold the patent examiners back from sloppy Alice rejections. Help is on the way for protecting software.

 Did the word "couple" really need to be interpreted twice by the PTO, twice by the Federal Circuit, and once by the District Court? In today’s IPR PTABCast, Craige explains how the proper constructions of a single word can toggle a patent between validity and invalidity, and what you can do to avoid millions of dollars of litigation expenses by adding one clarifying word. 

Patent claims can be invalid if a prior art reference teaches almost all the claimed features and any missing features must “necessarily” be present when you follow the Prior art teachings.   In this IPR PTABCast Craige explains how Southwire’s industry-changing process patent defeated the inherence attack but succumbed to the “obviousness” attack.

In today’s Briefing, Craige discusses six options that you can choose from when launching your idea into the market. If you want to safely maintain proprietary control and ownership of your idea, you need to understand the trade-offs and benefits of each of these 6 choices.

Craige reviews a case study of obviousness by tracing how common errors in lazy drafting and greedy claiming that lead inexorably to weak patents. In Owens Corning v. Fast felt, the federal Circuit shoots down a patent on gravure deposited nail tabs for roof shingles, even though the claims survived the inter partes review process.

3 lessons on How to Patent Software Claims Since the Supreme Court tightened the law for patenting software inventions in a case called Alice, businesses have been uncertain about the fate of software patents. In the years since Alice, the law has started to settle. In this PatentCast, Craige explains why Microsoft was unable to kill off software claims owned by Enfish, and he shares 3 valuable Litigation Quality Patent lessons and 3 business takeaways from Enfish decision by the Federal Circuit.

Software is patentable – we do it here at TPL all the time. But many software inventions die a slow, and painful death in the patent office. Many others are killed off in litigation – all due to a Supreme Court case called Alice. Alice shapes which software claims thrive, and which don’t survive. In today’s EPG case, Craige explores how to identify whether claims will survive Alice. Craige also offers some Litigation Quality Patent practice pointers – including “red flag” phrases that are symptoms of potentially weak claims.  

Businesses accused of patent infringement have some sophisticated strategies at their command. Conversely, patent owners must have litigation savvy counsel who knows how to think strategically (i.e., chess rather than checkers). In this PatentCast,™ Craige draws business and patent lessons involving an infringed capacitor patent.

On this episode of LQP Ask the Patent Attorney Craige answers this FAQ "Can I even get a patent on my idea?" 

In this episode of the Litigation Quality PatentCast Craige explains how Arctic Cat Successfully enforced and monetized its patent with a patent license to Honda and in litigation against BRP, the maker of an infringing “Sea-Doo” personal watercraft. This case has 4 great business lessons involving how to 1) Overcome obviousness 2) Mark your products with your patent number 3) Get an on-going royalty and 4) Treble damages from the infringer!

3 Keys to protect your important business deals Proper due diligence and contracts can protect a business deal from dragging you, your company into a risky position though protracted patent litigation that scares your customers, shareholders, suppliers, employees, and licensees, not to mention the exorbitant legal expenses and potential money damages. In this PatentCast, Craige explains how a recent expansion of the “Single Actor Rule” exposes more businesses to patent infringement risk and 3 cost-effective steps you should consider to avoid patent litigation- even if you are just licensing a trademark or selling an unpatentable product.

Many sophisticated patent clients have learned from other patent attorneys that long claims are bad and short claims are good.  Craige explodes this fallacy with case studies about how a long claim can be ideal or a raw deal, depending on its structure.  Craige exposes the secret ingredient that is essential for every claim, irrespective of its word count.

Software is patentable when you follow the rules. Craige analyzes how the Patent Trial and Appeal Board (PTAB) invalidated issued software claims because the claim drafter simply framed the claims in a way that was too abstract. This illustrates an avoidable, but all too common, flaw that leads to the demise of many software claims.

Man Bites Dog! Shocking news! It’s not every day the USPTO stands up for owners of patents. This episode of the IPR PTAB Cast describes the hurdles that the PTAB has erected to stop harassment of patent holders so they don't have to suffer unwarranted serial IPR attacks.

Craige answers this FAQ and adds a bonus answer to a should ask question (SAQ) for an often-overlooked way to monetize your invention.

Patent owners gain another small victory! The Patent office’s strongest weapon against patent claim is BRI or “Broadest reasonable interpretation”, but BRI is “unreasonable” when it is contrary to general claims construction principles. The Federal Circuit finds “body: does not mean whatever the examiner thinks it means under BRI especially when the specification uses that term in a very consistent way. Lesson: it pays to be consistent.

A 44 Million Dollar award to a patent owner, Ultratec was wiped away by the Patent Office that invalidated eight patents in an Inter Partes Review (IPR). However, the federal circuit slapped away the IPR because the accused infringer’s expert told one story to the jury and a different story to the patent office. The Expert’s inconsistent testimony may lead to the patent owner getting back that 44 Million Dollars, and keeping eight patents intact!

Pendulum starts to swing to the Pro-patent direction  In IPR (inter partes review), a Patent is being attacked is invalid. One move a patent owner can make is to narrow some claims so they are not found invalid. Until now, the PTO made this very difficult by requiring the patent owner to prove the narrower claims are patentable. Now, the Federal Circuit stepped in and shifts that heavy Burden off of the patent owner and on to the petitioner who is challenging the patent. Good News!

In this IPR PTABCast episode, The Examiner Whisperer, Craige Thompson, breaks down three strong currents that combine to swiftly carry unsuspecting Patent Owners away from the golden "infringement" shore and out to drown in the sea of "invalidity." Craige reveals some rescue techniques, including proper drafting techniques for Litigation Quality Patents.  

Well, you better set up your patent to stand up to litigation AND draft a bulletproof licensing agreement, otherwise your license could get your patent killed, and leave you with nothing. See how this happened to Dr. Jung and take steps so it won’t happen to you.

In this episode Craige Thompson characterizes the three phases of the patent life cycle before, during, and after the patent office. Craige introduces his perspective as a veteran patent attorney on how business executives should think about each phase of the patent process. If you have found this episode helpful please support us by leaving an honest 5 star review.

When approaching a prototyping company or manufacturer, technology executives recognize that they must "open the kimono" to share intimate details of their inventions. To help technology executives avoid common mistakes that will invite expensive and unwelcome litigation, Craige introduces how a start-up won $91 Million (but lost potential billions!!) in defending its heart valve replacement technology. Listen to this real life case study that involves mistakes made with regard to handling patents, trade secrets, and non-disclosure agreements in the relationship between inventor and manufacturer   

Money in the middle of conventional extremes. One repeatable trick companies can use to mine patentable inventions is to find the "third way" that takes the best (but leaves the rest) from both extremes. In this case, the invention mining formula claims software that automatically configures a memory system to optimize performance based on the type of processor. This has the performance benefit of a custom solution with the affordable cost of a "one size fits all" approach. 

Intellectual ventures patent misses a huge potential win because the claim had gone one throw away step too far, on a technology that could have covered SMS text messaging. Craige reveals the litigation and patent drafting mistakes made by both Intellectual Ventures and Motorola and what they could have done differently to change or improve their outcome. Did you know that just characterizing the prior art negatively could narrow your claim scope in a way you didn't even mention in the patent? It's true! Find out more in this episode.   We love getting feedback from our listeners. If you have enjoyed this episode please leave a honest five star review.

Summary: In this episode of the LQP PatentCast™, Craige discusses CardiaQ v. Neovasc. This is great case for Inventors entrepreneurs and small business owners who are considering manufacturing with someone else. This case illustrates how inventors can get screwed over in the process of sharing their ideas. Highlighted are some mistakes you could make when trying to bring your ideas to market. Craige shares some strategies on how to recover when someone tries to rip-off your invention.

In this episode of the Litigation Quality Patents® Podcast, we take a look at baseless patent lawsuits. We specifically examine how much protection the Patent Fee Shifting Statute provides to innocent businesses who are dragged into lawsuits even though the owner knows the suit is baseless. Joining the discussion is Michael Heinrich, a patent attorney practicing in the Minneapolis area. Litigation Quality Patents® Podcasts The Litigation Quality Patents® Podcast, hosted each week by Craige Thompson (a.k.a., “The Examiner Whisperer”) contains substantive discussion designed to keep you current with what’s going on in the world of patents, encompassing everything from patent prosecution and re-examination to patent licensing and litigation.  

In this episode of the Litigation Quality Patents® Podcast, we find out if you can validate a claim without a claim chart. Inexplicably, this is what Motorola tried to do. We discuss how Thompson Patent Law obtained better prior art in 12 minutes of searching than Motorola had after losing an appeal to the Federal Circuit while represented by a big name firm! Also, Microsoft shows how to use different components of a product to satisfy the Domestic Industry Requirement at the International Trade Commission. Litigation Quality Patents® Podcasts The Litigation Quality Patents® Podcast, hosted each week by Craige Thompson (a.k.a., “The Examiner Whisperer”) contains substantive discussion designed to keep you current with what’s going on in the world of patents, encompassing everything from patent prosecution and re-examination to patent licensing and litigation.

In this episode of the Litigation Quality Patents® Podcast, find out how manufacturers can get the wrong patent protection for anything from Keurig coffee makers to glucose meters. For the second time this year, things get exhausted again! The Federal Circuit finds a patent on a machine that uses a highly profitable, but unpatented, consumable and disrupts the business model of the patent owner. Craige explains that if you plan to give away a patented machine to make money on selling the consumables, watch out for patent exhaustion. Litigation Quality Patents® Podcasts The Litigation Quality Patents® Podcast, hosted each week by Craige Thompson (a.k.a., “The Examiner Whisperer”) contains substantive discussion designed to keep you current with what’s going on in the world of patents, encompassing everything from patent prosecution and re-examination to patent licensing and litigation.