Apple talks tough to handset

Some new commentary on the Apple v. HTC show down and Apple's IP portfolio.

Apple talks tough to handset makers

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Think The Way They Search - Installment 2

More on classifications and why they can help you learn to Think the Way USPTO Searches and how they think about what's in a patent.

In our first installment we talked about the Original or Primary classification on a patent or application respectively. This is the classification that appears in BOLD on in the US CL section of the patent or application. This classification determines which Group Art Unit at USPTO is going to examine your patent.

But what do the other classifications tell you? They are supposed to give you insight into rest of the inventive art that is disclosed in a patent or application. The classifications tell you what USPTO believes is in your patent or application is all about.

When the patents are classified, the person looking at the patent looks at every claim. Every single claim. They classify each claim independently and then pick the controlling claim which in turn determines which class/subclass pair will be the primary or Original classification.

Once that's done, they assemble the rest of the class/subclass data they created by classifying each claim and then create the mandatory classifications - the rest of the classes that appear to the right of the classification in BOLD on the front page of a patent or application. These classes describe the rest of the inventive art in the patent.

If you look at patent 5,960,411, Method and System for Placing a Purchase Order Via a Communications Network - the Amazon One Click Patent, it has three classifications.

705/26 - Electronic Shopping (e.g., remote ordering): ...enabling a user to inspect or select from a plurality of different items, or effect a purchase of one or more items at location geographically separated from the system user. This is the Original Classification that appears in BOLD.

This subclass is indented under Automated Electrical Financial or Business Practice or Management Arrangement (705/1). So it requires that the invention use an electrical apparatus and its methods which perform data processing operations.

705/27 - This class is indented under 705/26. This invention also includes presentation of image or description of sales items (e.g., electronic catelog browsing.) The invention includes the ability to inspect a listing or other visual or audiable representations of plural items available for purchase.

345/962 - The final classification is in Class 345 - Computer Graphics Processing ad Selective Visual Display Systems. This class appears on the image of the patent. It also appears on the Google Patents version of the patent above. And here is the rub. This class was abolished and replaced somewhere along the line. So, if you are looking at the image or the data on Google Patents you are not getting the correct information.

The USPTO full text database shows the final classification on the One Click patent as 715/962. This is an operator interface with visual structure or function dictated by the intended use. In particular it calls for a system with an operator interface for marketing and sales. To be in this class the invention will include features "wherein the given task is a commercial function involving user response."

So based on the claims, that's what USPTO says this patent is all about. Claim 6 is provided as an example. For anyone who has been following it or is licensing it this patent covers: (Comments in RED)

6. A client system for ordering an item comprising:

an identifier that identifies a customer; (this is the part where the system knows who you are and has stored info about you.)

a display component for displaying information identifying the item; (this is the part where you can see the items for sale.)

a single-action ordering component that in response to performance of only a single action, sends a request to a server system to order the identified item, the request including the identifier so that the server system can locate additional information needed to complete the order and so that the server system can fulfill the generated order to complete purchase of the item; and (Single-action - the one click part)

a shopping cart ordering component that in response to performance of an add-to-shopping-cart action, sends a request to the server system to add the item to a shopping cart. (the electronic shopping cart)

As anyone who's used Amazon's One Click feature, bought a song on iTunes, or ordered a pay per view movie with their remote control, what this is really about is being able to order an item using a single action where only a single action is required to complete the sale because the system already knows who you are.

I'm sure our business methods guys will be able to shine some light on how the reclassification of the Business Methods section of the classification schedule, Class 705. But in the meantime this gives you a feel for how to use the classifications to see what USPTO thinks a patent is about. When you load your invention disclosure into Cognition IP we return the patents that are the closest as well as the class they are in. It helps you figure out where your work might wind up.

So the classifications got you close but you are going to have to look at the patents in that space, the ones assigned those classifications, to figure out what has already been invented and the boundaries of what would be novel invention in light of what is already classified.

Bad Actors in Patent Prosecution?

We were having a conversation with a very smart patent guy. He was asking about how to cull through many thousands of patents to see how many of them had the same specification. When I asked him what's up he said Cold Spring Harbor Labs. He added he needs to find patents and patent applications with the same specifications.

"The same specification like when there is a continuation in part or a divisional patent application where the inventor uses the same specification but just changes the claims?" (Arleen)

"No" (Smart Guy)

"The "same" as in the specification that discusses the same art. Like in a hunt for powerful prior art?" (Arleen)

"No. The same as in verbatim passages, think plagiarism, think stolen from another inventor. Passages of one patent that show up in someone else's application. There are bad actors out there." (Smart Guy)

Cold Spring Harbor Laboratory (CSHL) is suing its patent prosecution law firm and one of the firms attorneys for fraudulent prosecution of its patent applications because the attorney copied portions of prior art patent applications verbatim into one of CSHL's patent applications instead of writing an original specification for the new invention. It took a while for CSHL to figure it out but by the time they did, the damage was done.

Then add the "I need a shower after reading this thing" element of this case, the attorney created a patent search company without disclosing it to his clients or his partners at the law firm. His patent search company then billed CSHL for over $700,000 in services that weren't performed. The attorney approved the bills which were then paid by the law firm and CSHL to his do nothing search company. Talk about adding insult to injury.

The patent plagiarism was discovered by one of CSHL's licensing associates and patent attorneys well after the patent applications were filed. This was not a eureka moment of discovery. It was probably one of those the room is spinning, nauseous, am I really seeing what I think I'm seeing moments.

One has to wonder how much more of this is going on when the tools to look for this type of plagiarism are so limited. We've been doing it for a while to protect trade secrets and the techniques are used in the intelligence space to make sure that classified documents aren't released in emails or inadvertently (or deliberately) copied into new documents and printed or emailed.

CSHL is seeking $82M in damages because its inventor, Dr. Gregory Hannon and his colleagues were deprived of the benefits of their inventions and the ability to commercialize their inventions.

I wonder about the harm that may have been done to Dr. Hannon's and CSHL's s reputation within USPTO as the examiner discovered the patent plagiarism that was repeated over and over again by the bad actor. Did this result in the examiners who worked on applications from CSHL questioning the integrity of other applications as they worked their way through the system? The filing shows that the examiners did a good job and knew the art in the area so well that they found the plagiarism. CSHL also made efforts to clarify what was happening with USPTO but sometimes impressions can be lasting.

You can read the filing here. It will be interesting to see if other victims of this patent malpractice surface.

Finding Bargains - Business Methods Monday

Last week I wrote about the changes to the Discounts or Incentive portion of the USPTO Class 705 schedule. Today we'll review major changes to the Advertisement section (705/14.4 -- 705/14.73) of the schedule.

As with discounts, the USPTO greatly expanded the detail concerning advertising inventions. They expanded from one subclass (705/14) to 34. You might want to refer to the Class 705 Schedule Page in another window and locate subclass 705/14.4 as we examine the recent changes to advertisement patents.

To be classified as an advertisement, the claimed art must include the act "of promoting or calling to the attention of the public any goods or services to induce the public to buy or use the goods or services." As of today, March 3, 2010 as I write this post, the USPTO has placed 1,680 patents with an original or cross-reference classification within the 705/14.4 array, including all its subclasses. 164 patents (10%) are located within the advertisement subclass (705/14.4).

The advertising art section of the business methods schedule is composed of several major sub-arrays. Indented immediately below Advertising is a section dealing with analysis, introduced by subclass 705/14.41, determination of advertisement effectiveness. The key to being classified in this array is that "an analysis is conducted in order to ascertain the degree to which the intended or expected result of a promotion is achieved." Note that an analysis must be conducted by the claimed art. If the claimed art allows classification here, then additional detail may require classification in one of the four further indented subclasses:

• Comparative campaigns (705/14.42) in which two or more promotions are evaluated to determine which one attains the highest degree of intended or expected results
• Optimization (705/14.43) where there is an analysis of a constraint of a promotion resulting in a reworking of that promotion to improve its current or future effectiveness
• Survey (705/14.44) which is a collection of public opinion about a promotion in order to determine its effectiveness
• Traffic (705/14.45) in which the commercial activity generated by a promotion is analyzed. 89 patents (5%) are found in this array.

Immediately below the analysis section are three subclasses which address calculation of past, present, or future revenue (705/14.46), avoiding fraud (705/14.47), and advertising based on a budget or funds (705/14.48). 58 patents are currently assigned to these subclasses.

This brings us to the largest, most complex portion of the advertising schedule. Targeted advertisements (705/14.49 -- 14.67) cover 19 subclasses, and 678 patents (40%). Inventive art must include "a promotion . . . directed at or to an individual or individuals based on predetermined criteria" to be classified here. Several of the key subclasses in this area include:

• Based on an event or environment (e.g., weather, festival, etc.) (705/14.5)
• During e-commerce (705/14.51)
• Based on user history (705/14.53), and its indented child subclass, user search (705/14.54)
• Based upon a schedule (705/14.61)
• Wireless device (705/14.64)
• At Point of Sale (705/14.65)
• Based on user profile or attribute (705/14.66), and its indented child subclass, personalized advertisement (705/14.67).

The next section of the advertising schedule deals with fees for advertising (705/14.69); inventions classified here must include "compensation or billing for the promotion of a good or a service." Two subclasses are indented under fees: split fees (705/14.7) and auctions (705/14.71). 171 patents (10%) are found here.

Finally, at the bottom of the advertising array, we find a subclass for creating advertisements (705/14.72), and one for online advertisements (705/14.73). This last subclass contains 462 patents, 28% of all the patents found in advertising.

In today's business climate, strong competition for customers might be expected to drive more innovation in advertising, particularly in light of converging technologies such as cell phones that receive text messages, serve as web browsers, and contain GPS transceivers that allow highly targeted, location-specific advertising using "geofencing" concepts -- using a defined geographic area of a map. The increased complexity of the advertising art, as revealed in USPTO's class 705/14.4 schedule array, provides more opportunity for inventors to submit unique patent applications. The U.S. Supreme Court's upcoming decision in the Bilski v. Kappos case could drastically change the patent landscape for advertising, along with all other business methods patents.

Let us know your thoughts.

Until next Monday -- Mike

Battle of the Smart Phone Titans

The latest salvo in wireless war came from Apple this week with it's patent lawsuit filed against HTC. There's plenty of speculation about this being an indirect hit against Google and the visit to the ITC to stop any further imports of infringing Android smart-phones which must be creating major acid indigestion for the organizations investing in marketing the technology. The patents are pretty interesting and so are the dynamics in the patent lawsuit arena. Soon all these guys will run out of lawyers aren't already "taken" as a result of their conflicts checks. I read all the articles. Aside from the annoying fact that most of the reporting didn't have even the most basic explanation of what the patents are all about and what features in particular are in play; the dynamics of the battle of the titans should make for interesting IP theater.

Here are my two favorite quotes from opposite ends of the intellectual property spectrum:

From Steve Jobs:

"We can sit by and watch competitors steal our patented inventions, or we can do something about it. We decided to do something about it...We think competition is healthy, but competitors should create their own original technology, not steal ours."

From Douglas Rushkoff's article, "The iPhone Becomes a Bully", from the DailyBeast:
"Still, in an increasingly crowded smart-phone industry, it's hard to tell if Apple's claims are more about protecting innovation, or merely protecting market share. In fact, these two aims may even be at odds."

Last time I checked I thought that one of the major reasons of protecting innovation with patents was to protect your market share - at least if you are someone who actually makes stuff or at least get license revenue from the folks who make stuff that uses your innovations.

Wheel Reinvention Prevention:

To avoid "wheel reinvention", which is not good IP practice, here are two excellent links. Nick Bilton of The New York Times provides a compelling visual on who is suing who. The second is a link from engadget.com which provides a technical breakdown of the patents in suit by Nilay Patel.

Stay tuned.

Think the Way They Search - Installment 1

Coronado Group is an evangelist driven to teach people to Search the Way You Think. Our Cognition IP suite lets you use detailed and nuanced text that represents your complex ideas, inventions, products, and research to search and find patents. Once you find the patents that are conceptually and semantically closest to what you are looking for, we add in other tools to help you navigate through the US and International patent world. One of the more useful tools is the patent class trees.

One of the most challenging and daunting skills to develop is how to take advantage of is the US and International Classifications systems. We've worked with a lot of patent attorneys who have told us flat out that it's just to hard to deal with using the schedules so they use other methods for hunting down prior art and information on new patents. "Classifications are just number mumbo jumbo that clutter up the front page of the patent," says one of our classification handicapped colleagues.

So, we bring you Coronado's Classification Crash Course.

There are two classifications systems. The one maintained and used by the USPTO - the US Patent Classification system (USPC). The second classification system is the one maintained by the World Intellectual Property Organization (WIPO). The WIPO International Patent Classification System (IPC) is used by the rest of the world the International Patent Classification system (IPC), or at least most of the rest of the world.

Understanding how USPTO uses the patent classification schedules and how you can use the content of our invention disclosure and other important patent application documents to get an idea of which Group Art Unit at USPTO is likely to examine your patent can be important information as you move through the patent prosecution process.

So we'll take a shot at explaining the patent classification system and teach you how to think the way they search -- to understand the basics of the US Patent Classification system and how to use it to find important information.

The Basics...

On the front page of each granted patent and published patent application you'll find the classification data. Let's start with the US Patent Classification data. The US patent classification information looks like this:

(52) U.S. Cl. ..... 705/7; 705/30; 705/14.1

What's the most important piece of information in this sting of data? The classification in BOLD. This is the classification that determines which Group Art Unit at USPTO that is responsible for examining your patent.

It's not such a big deal when it's your patent or patent application because you already know who has your patent application or who examined your patent. Where it comes in handy and can be a very big deal is when you want to figure out where one of your competitors patents is being examined or where subject matter you think is similar is placed. Knowing this information can provide insight into how USPTO is thinking about certain types of inventive art and where your invention fits into the scheme of things.

On patents the classification in BOLD is called the Original Classification or the OR in Patent Office parlance. On patent applications the classification in BOLD is called the Primary Classification. The classification in BOLD is also called the CONTROLLING CLASS.

And what determines the Controlling Class? The Most Comprehensive Claim in the patent or application. The claim that the classifier believes contains the most comprehensive subject matter, the most extensive (greatest in USPTO speak) combination of elements and subject matter. The one that discloses the invention in the most comprehensive way.

And..the Most Comprehensive Claim can be a dependent claim. In fact it usually is a dependent claim because they tend to have all the bells and whistles attached. So when you write your most extensive claim, the one with the most comprehensive subject matter, remember that may be the very claim that decides who is going to examine the application.

Stay Tuned.

Bargains, Bargains, Where Are My Bargains?

Business Methods Monday

In last Monday's post I talked about how the USPTO significantly increased the resolution and complexity of the Discounts and Advertising portions of Class 705. Discount or incentive art are encompassed within subclasses 705/14.1 (Discount or Incentive) through 705/14/39 (Online Discount or Incentive). Advertisements are covered in subclasses 705.14.4 (Advertisement) through 705/14/73.

How much detail has been added? The discount portion of the schedule no includes 30 subclasses. All of that inventive art had previously been classified within a single class - 705/14.

Today we'll explore the broad outline of the Discount and Incentive subclass array.

To help you understand the new complexity in this Business Method Area you might want to open the Class 705 Schedule Page in another window and scroll down to subclass 14.1 as we walk through how discount and incentive patents are classified. You can also CLICK HERE.

Most of the new granularity in this area of the Class 705 schedule is indented one level further than that of the discount or incentive subclass (705/14.1) that introduces it. To be classified in this array, the claimed art must include a "price reduction of, or premium credit resulting from, the purchase of a good or service, or a commercial offer to incite, stimulate, or provoke an increase in business, through a commercial transaction" It is important to note that the mere mention of discount or incentive in name only, a nominal recitation in USPTO parlance, like just mentioning a "coupon" or "rebate" in the claims, is insufficient to classify are in this subclass.

The upper portion of the discount section of the Business Methods Schedule incorporates aspects such as specific activities required to receive an incentive (705/14.11 - trade or exchange of a good or service, 705/14.12 - playing a video game, 705/14.16 - referral reward, and 705/14.19 - giving input on a product or service, to name a few); analysis (705/14.13 - determining discount or incentive effectiveness); and finance or budgets (705/14.17 - financial account, 705/14.21 - based on funds or budget.)

Inventions dealing with re-usable coupons (705/14.22), incentives provided or redeemed during online transactions (705/14.23), incentives based on inventory (14.24), on user history (705.14.25), or on avoiding fraud (705/14.26) are found in the central portion of the schedule.

The most complex area of the Discount or Incentive art is related to frequent usage incentive systems (705/14.27). These systems include frequent flyer miles programs, point reward systems, and other incentives that require an individual to meet predetermined criteria for showing loyalty to a product, merchant, or service. The array of subclasses indented below frequent usage systems incorporate:

• Frequent usage incentive value reconciliation between diverse systems
• On-line clearinghouse
• Multi-merchant loyalty card system
• Awarding of a frequent usage incentive independent of monetary value of a good or service purchased, or distance traveled
• Frequent usage reward other than merchandise, case, or travel
• Method of redeemng a frequent usage reward
  

The bottom of the schedule includes subclasses addressing rebates after a completed purchase (705/14.34; timing of the incentive award or usage (705/14/35); requiring user registration or identification (705/14.36; at a kiosk (705/14.37) or point of sale (705/14.38;) or online discounts or incentives (705/14.39).

As of February 24, 2010, as I am writing this post, USPTO has placed 1,639 patents with an original classification within the discount or incentive area of Class 705. The majority of these patents (75%) are contained within eight of the 30 total subclasses into which USPTO has placed 99 or more patents. The subclasses are:

• 705/14.1 -- Discount or incentive (e.g. coupon, rebate, offer, upsale, etc.)
• 705/14.14 -- Chance discount or incentive
• 705/14.26 -- Avoiding fraud
• 705/14/27 -- Frequent usage incentive system (e.g. frequent flyer miles program, point system, etc.)
• 705/14.35 -- Including timing (i.e limited awarding or usage time constraint)
• 705/14.36 -- Incentive or reward received by requiring registration or ID from user
• 705/14.38 -- At Point of Sale (POS)
• 705/14.39 -- Online discount or incentive

Online discount or incentive (705/14.39) the last subclass in this list, contains 266 patents by far the largest number of any subclasses in the discount or incentive array. If inventors claim art that they believe falls within one of these eight subclasses, they will need to be diligent in searching for prior art to insure that they are applying for a unique invention.

Let us know your thoughts on these business methods patents by sending a comment.

Until next Monday - Mike