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Yahoo, top patent practitioner firms, Fitbit, Jawbone, PTAB, Canada, Led Zeppelin, Eastern District of Texas – the week in IP



Michael Loney


The future of Yahoo’s patent portfolio after its Verizon deal, an appeal of the Stairway to Heaven copyright case, the law firms with the most patent practitioners, an ITC ruling invalidating Fitbit patents, an interview with the Patent Trial and Appeal Board’s chief judge, a call for Canada to have a national IP strategy, and a “highly unusual” Eastern District of Texas case were in the intellectual property headlines in the past week

Also on the blog in the past week were:

GAO releases two patent reports

Guest post: Keeping the record straight

Have you explored our topic pages recently?

We’ve also posted the following articles in the past week (log in via subscription or free trial):

ASEAN: a trade mark owner’s view

How ASEAN countries rank for IP protection

USPTO issues memorandum in response to CellzDirect and Sequenom

Catching up with Canada: recent trade mark news

Catching up with Canada: recent patent news

Federal Circuit keeps 180 days’ exclusion time in patent dance

The conflict between social media and copyright


Yahoo sold, but Excalibur remains

Verizon has agreed to buy Yahoo’s core business for $4.8 billion. Not included in the deal, however, is the Excalibur patent portfolio.

Yahoo logo 200TechCrunch reported that Yahoo estimates the portfolio’s value at $1 billion upwards but may not be getting the kinds of offers it hoped.

"We didn’t want this to be an afterthought to the rest of the assets," TechCrunch quoted Tom McInerney, chair of Yahoo’s strategic review committee, as saying in a conference call.

Bloomberg reports that fewer than 10 active bidders for the portfolio remain, down from about three times that many after Yahoo first announced the patents were for sale. The bidders include standalone companies and consortia operating in the US, Europe and Asia.

IP analytics platform Aistemos commented on its blog: "The suggestion has been made that the Excalibur package was not a fire-sale, that its patents and applications were of core importance and that there was concern that the Excalibur portfolio might fall into the hands of a rent-seeking purchaser … To date, however, there does not appear to have been a rush to form a queue outside the company's door in order to place a plausible bid."

As this blog reported last week, a survey by TurboPatent estimated that 44% of the Excalibur patents have "high severity" issues. TurboPatent analysed 1,757 Yahoo patents and 896 patent applications in the Excalibur portfolio. "TurboPatent's analysis found Yahoo!'s Excalibur patent portfolio contains a much higher percentage of potentially worthless patents than the average patent portfolio," said the company in a statement.

 

Encore of Led Zeppelin case requested

Michael Skidmore has asked the Ninth Circuit to take up an appeal of the Led Zeppelin copyright case over Stairway to Heaven, reports The Wrap.

Led Zeppelin"Please take notice that Plaintiff Michael Skidmore, Trustee for the Randy Craig Wolfe Trust, hereby appeals to the United States Court of Appeals for the Ninth Circuit from the final judgment entered on June 23 2016, as well as any and all interlocutory rulings, decisions, and orders that gave rise to the judgment and are merged therein," the notice of appeal reads.

Michael Skidmore, a Trustee for the estate of the band Spirit’s guitarist, Randy "California" Wolfe, sued Led Zeppelin, claiming that the band’s famous "Stairway to Heaven" was a rip off of Spirit’s "Taurus". In June, a jury   decided there was no copyright infringement


Top firms for patent practitioners

IP network Patexia has analysed the information for all registered patent petitioners in the US, and revealed the top firms by number of patent practitioners.

Rank Firm Attorney Agent Total
1 Finnegan 206 62 268
2 Fish & Richardson 203 64 267
3 Knobbe Martens 221 33 254
4 Kilpatrick Townsend 179 41 220
5 Foley & Lardner 139 31 170
6 Wilson Sonsini 96 66 162
7 Perkins Coie 123 20 143
8 Baker Botts 117 25 142
9 Schwegman Lundberg 126 15 141
10 Morrison & Foerster 95 44 139
Source: Patexia

Patexia revealed that as of July 2016 there were 44,424 registered patent practitioners, with 75% patent attorneys and 25% patent agents.

The top 10 firms account for 4.3% of all registered practitioners. The top five firms are Finnegan, (268 attorneys and agents) Fish & Richardson (267), Knobbe Martens (254), Kilpatrick Townsend (220) and Foley & Lardner (170).

Patexia noted that about 15,000 of the 44,424 patent practitioners are not active.

The analysis followed Patexia also recently revealing that demand for patent attorneys is "generally healthy and strong" while the number of trained patent professionals is "rapidly declining". 

In a blog post, the company said about 7,700 law school applicants were qualified for patent bar in 2009. By 2015, this number had fallen by 47% to about 4,100.


The patent world’s women problem

Only 8% of primary patent holders are women, reports Fortune citing an analysis by the Institute for Women’s Policy Research

The analysis also found women were listed as primary or non-primary inventors in 18.8% of patents in 2010.

Fortune noted one potential reason for the disparity is that women are underrepresented in patent-intensive fields such as engineering and computer science.


ITC invalidates Fitbit patents

In the latest twist in the dispute between wearable device makers, an International Trade Commission judge has ruled that three Fitbit patents in a case against Jawbone are invalid, reports Bloomberg.

A trial scheduled for August has been cancelled as a result. Judge Thomas Pender ruled that the patents do not cover patent-eligible ideas.
"Fitbit will continue to assert its IP against Jawbone as appropriate to protect the innovations central to our product offerings," Bloomberg quoted the company saying in a statement.

The two companies have sued each other in district courts for patent infringement. Jawbone also accuses Fitbit of a plan to hire its key employees and steal trade secrets.

In April, the ITC terminated two Jawbone patents covering sleep monitoring and data output from its investigation for being directed to ineligible subject matter under Section 101. These were the last of the patents that Jawbone had claimed Fitbit had infringed in an ITC complaint seeking a halt to US imports of Fitbit’s wearable devices.


PGR’s bright future

David Ruschke PTABLaw.com ran  an interview with the new chief judge of the Patent Trial and Appeal Board, David Ruschke. 

Ruschke noted that the Supreme Court’s Cuozzo decision was "very, very well-received by the board".

He also revealed enthusiasm about post-grant reviews. Very few PGRs have been filed so far.

"I think clients would be very, very excited about a process where they could get out a decision on freedom to operate within a year," said Ruschke.

"Once the US practitioners get their minds set around what that looks like, I think there’s going to be a lot of gravitating toward that as an incredible tool."


Should Canada have a national IP strategy?

Bereskin & Parr’s James Hinton and the DEEP Centre’s Warren Clarke wrote an op-ed in The Globe and Mail outlining why they think Canada should adopt a national IP strategy.

"Other countries are already embracing this strategy," they wrote. "As international standards in IP have increasingly converged, national governments have implemented systems to protect national firms through state-backed or "sovereign" patent funds. Japan, South Korea and France have all created such funds as mechanisms to intervene in the patent landscape by acquiring, licensing and even occasionally enforcing patents."

In a May report, the authors examined the holdings and strategies of these funds and found that they are actively protecting domestically generated IP abroad, particularly in the US.

The piece points to Japan’s IP Bridge, South Korea’s Intellectual Discovery and France’s France Brevats as sovereign patent fund models.

The article concludes: "We wouldn’t expect our national athletes to succeed internationally without the proper coaching and training, and we shouldn’t expect our innovators to succeed without national IP support. It is time to own the innovation podium."

 

Gilstrap slams "highly unusual case"

Judge Gilstrap of the Eastern District of Texas recently dismissed a case for failure to adequately plead infringement, reports EDTexweblog.com.  

In Ruby Sands v American National Bank, the court said the plaintiff "plainly fails to state a claim for relief on its face" and that the court was "left to wonder whether Ruby Sands performed a thorough pre-suit investigation, as required by the Federal Rules, to craft a plausible infringement theory before filing its complaint".

It seems that the complaint included bits cut and pasted from an entirely unrelated complaint.

The court wrote: "This is a highly unusual case, which presents the court with a serial litigant who not only failed to plead plausible claims of direct infringement but also repeatedly filed (and failed to correct) pleadings containing indirect infringement allegations replete with extraneous language clearly lifted from some unrelated case."

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RT @abelimray: Number of green energy patents issuing on the slide - a cause for concern? https://t.co/BHeySZ69LX

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Analysis of yesterday's Filmspeler case on communication to the public via @TaylorWessing @adramIP @markowen1 https://t.co/EScEozVuBc

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