patent engineering berkeley-lavian week 1 1 patent engineering ieor 190g cet: center for...
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Patent Engineering Berkeley-Lavian
Week 1 1
Patent Engineering IEOR 190G
CET: Center for Entrepreneurship &Technology
Dr. Tal Lavian(408) 209-9112
45 Evans (may change)Mondays 4:00-6:00
Patent Engineering-Berkeley-Lavian
Week 1 2
Today’s Agenda – Introductions
• Introduction to the course• Course administration• Schedule• Some info about yourself• Introduction to Intellectual Property• Introduction to Patents
Patent Engineering-Berkeley-Lavian
Week 1 3
Patent Engineering Course • This is an engineering class not a law class• The course broadly covers patents as a
business tool • The use of intellectual capital for competitive
advantage • Protection and commercialization of engineering
and scientific intellectual assets • Examination of several patent litigation case
studies• focus on invention, innovation, patent, and strategy
Patent Innovations-Berkeley-Lavian
Week 1 4
What we will do in this course?
• Mondays 4:00pm - 6:00pm• Please be on time
• Starts today - ends on May 11th• Patent – innovations, engineering, and strategy • Industry lectures • Few classes with the Law School
• Students “experts witnesses” • Field trip – court visit SF or Oakland
Patent Engineering-Berkeley-Lavian
Week 1 5
What we Will Cover?
• Overview of the Patent System• Publication, Public Use, and On-Sale
Limitations• Enablement and Best Mode Requirements • Utility, Provisional, and PCT Application • Novelty and Unobviousness Requirements • Avoiding Patent Infringement• Patentability and Infringement Comparison• Strategies for Engineers who are Witnesses
or Experts in Patent Lawsuits
Patent Innovations-Berkeley-Lavian
Week 1 6
Invited Lectures
• Duane Valz, VP & Associate General Counsel for Global Patent Strategy at Yahoo!
• Joe Beyer, VP Licensing at HP
• Professor Randy Katz, UC Berkeley EECS
• Ron Laurie, Managing Director - Inflexion Point
• Rob Aronoff – Managing Director Pluritas
• Professor Lawrence J. Udell, California Invention Center• Lowell Mead, Partner, Cooley, Godward, Kronish LLP
Patent Engineering-Berkeley-Lavian
Week 1 7
Students Presentations
• Students’ presentations• Topics on patent engineering in litigated
cases
• Some examples from last year: http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html
Patent Engineering-Berkeley-Lavian
Week 1 8
Students Presentations
• Present in 10-15 min a patent litigation case
• Case summary• Parties, dates, history, issue in dispute, results
• Engineering aspects of the dispute• The patent(s), technology, product• Engineering aspects of the infringement • The engineering view vs. the legal view
• Any proposed design around
Volunteers to start next week
Patent Engineering-Berkeley-Lavian
Week 1 9
Grading - Attendance
• 2 units credit course – (no 1,3,4)• You will be fine - • Pass/Fail (it would be very hard to fail)
• Passing grade – requires attendance at all lectures (with one allowed unavoidable absence)
• Sign in for the class • Patent blogs and mailing lists • Students presentations – 15 min• Prior Art search
Patent Engineering-Berkeley-Lavian
Week 1 10
Web Site(s)http://cet.berkeley.edu/
Http://cs.berkeley.edu/~tlavian
bSpace
Patent Engineering-Berkeley-Lavian
Week 1 11
Who are you?
• Tell us about yourself:• In about 60 seconds• Your name, education, experience• Goals for future • What should we know about you• Your patent, invention, background, experience
• What do you know about patents?• How many patents have you read?
• Why are you here?• What you would like to accomplish?
• Send me email with this info
Patent Engineering-Berkeley-Lavian
Week 1 12
Intro to Patent Engineering
Patent Engineering-Berkeley-Lavian
Week 1 13
Types of Intellectual Property
• Patents– protect ideas
• Copyrights– provide the author the right to reproduce, display,
perform• Trade Secrets
– information kept secret and has economic value • Trademarks & Service Marks
– marks used in commerce identifying origin of goods
Patent Engineering-Berkeley-Lavian
Week 1 14
Innovation: long-term health
Healthy Root System
Innovation!
Patents
Software
Ideas
Knowledge
Work Processes
Creativity
Skills
Trade Secrets
Inventions
Secret sauce
For the tree to flourish
Concepts
Patent Engineering-Berkeley-Lavian
Week 1 15
Patents as a Critical Business Tool
• Good patents are the cornerstone of almost any technology business
• Patent protection can provide significant incentive and motivation for further research expenditures
• An understanding of patents is critical to the successful commercialization of most technologies
Patent Engineering-Berkeley-Lavian
Week 1 16
Some facts
• Microsoft assets: IP: 95% Working capital: 4% Fixed assets 1%Other: 1%
Patent Innovations-Berkeley-Lavian
2nd week 17
Recent Patent Verdicts & SettlementsOr – Why it is really important?
• Alcatel/ Lucent v. Microsoft. - (2007) - $1.5 Billion
• NTP – Settled with RIM for $612M (plus $53M litigation plus verdict)• Intergraph – over $880M in settlement from patent litigation with Intel, HP
and others• Eolas v. Microsoft (2003). $506M Jury verdict• Immersion v. Sony (2004). $82M jury verdict plus royalties
– increased (2007) to $150M– vibration game controller - Microsoft settlement on $26
• Freedom Wireless v. BCGI (2005) $128 jury verdict• Finisar v DirectTV (2006). 103M (79+24)Jury verdict plus injunction • Tivo v. EchoStar (2006). $74M jury verdict plus injunction • Acacia - $60M in licensing revenue (2004-2—6)• Forgent - $100M in licensing revenue 2004-2006
Patent Troll: A company with no products and little infrastructure that amass patents with the intention of prosecuting offending companies
NTP is considered by many to be a patent trollCo-founded by a Chicago Engineer and his
patent attorney in 1990 to protect his inventions. Main attraction was a system to send emails
between computers and wireless devices
NTP
Late 90’s, RIM hit the market with the BlackBerry
Had around $850 worth of sales that was considered to infringe upon NTP’s patents
NTP contacted RIM and offered to license their patent, RIM didn’t respond
NTP and RIM at first agreed to settle for around $450 million, but the agreement disintegrates over the summer
The NTP Case
US Patent Trade Office decides to reexamine the patents that NTP held after RIM presents evidence of prior art.
After dragging their feet in court, RIM agrees to a settlement of around $650 million, and to license the technology from NTP.
Agreement is that the money will not be returned even if the US PTO finds the patents held by NTP to be invalid
RIM was losing customers and companies and law firms were delaying Blackberry upgrades until the case was resolved, so it was in their best interest to resolve it quickly.
The Case
Bell Labs Case - The Technology
Late 1980’s, Inventors James Johnston and Joseph Hall (Bell Labs, division of AT&T)
Quantizing noise – approximation of continuous range by values by relatively small set of discrete values.
Invented method and apparatus to produce quantized audio signal using interpolated scale factor.
V.V.
Advantage - Data compression – Same or similarsignal can be represented with less data
Bell Labs Patents
• Filed: Dec 1988 • Assignee: Bell Laboratories• U.S. Patent No. 5,341,457, Perceptual
Coding of Audio Signals, to Joseph L. Hall and James D. Johnston (Dec 1988)
• U.S. Reissue Patent No. RE39,080, Rate loop processor for perceptual encoder/decoder, to James D. Johnston (Dec 1988, Reissued Sep 1994)
Bell Labs MS Case
• In 2003, Lucent files suit against Gateway, Dell, and eventually Microsoft in U.S. District Court, San Diego, CA.
• Claim: Infringed two patents developed by Bell Labs in MP3 compression and playback within Microsoft Windows Media Player
• Sought 0.5% royalty of total Windows computers sold
The Case
• Microsoft claims:• Received license for MP3 technology from
Fraunhofer Institute (Bell Lab’s parent research organization) for flat $17 million.
• Loop processor not applicable for WMP application.
• 0.5% rate exorbitant! “Only one of 10,000 features”
..
The Results• Ruling agreed that patents were developed by
Bell Labs before joining with Fraunhofer to create MP3
• Rights to patents exceeded value of $17 million paid for license
• February 22, 2007, Alcatel-Lucent awarded record $1.5 billion in damages from Microsoft. Jury unable to find ‘willful’ infringement for $4.5 billion damages.
• August 6, 2007, Microsoft granted retrial. Verdict overturned based on insufficient evidence by Judge Rudi Brewster.
..