AmberBlog

Back in March 2011 Ambercite and its partner Griffith Hack published a widely viewed patent landscape report of the smartphone patent wars, including a patent landscape map, part of which is reproduced below.

This report covered a broad range of areas, including a patent analysis on a Motorola (since acquired by Google) patent being asserted against Apple, US6246862 Sensor controlled user interface for portable communication device, invented by Grivas et al ('Grivas') . But at the time, we did not have our AmberScope search engine available for patent searching.

The patent itself concerns a function that should be familiar to many users of touchscreen based smartphones, namely how the touchscreen switches off when the phone is brought close to your body, such as when it is held up to your ear when making a phone call. In this way, body parts such as your ear are prevented from accidently hitting any of the virtual buttons normally found on a touchscreen during a call, and perhaps ending the call. Next time you are using a touchscreen phone to make a call, note how the screen blanks out when brought very close to your head - this is this function in action.

This function is obviously very important for touchscreen phones, and so the patent could have been a key Google patent in the smartphone patent wars.

In its ruling published 22 April 2013, the United States International Trade Commission has found in relation to this dispute that claim 1 of Grivas:

1. A portable communication device comprising:

 a processing section to control operation of the portable communication device in response to an input signal;

 a user interface comprising a touch sensitive input device coupled to the processing section, the touch sensitive input device actuatable to generate the input signal; and

 a sensor coupled to the user interface, the sensor to disable communication of the input signal to the processing section when the portable communication device is positioned in close proximity to a user, thereby, preventing inadvertent actuation of the touch sensitive input device.

was infringed by Apple - but that this claim was obvious in view of Motorola owned US6052464 Telephone set having a microphone for receiving or an earpiece for generating an acoustic signal via a keypad (first inventor Harris, hereafter 'Harris'), both in combination with ordinary general skill and combination with US Patent No. US5894298 Display apparatus to Hoeksma.

Harris discloses: 

In the case of the earpiece 18 being ported through the keypad 20, the controller 88 disables the plurality of key input signals responsive to one of: the ear cup 78 being positioned proximate to the person's ear 84 or the person's head 86 responsive to a signal from the proximity sensor 92,

Which raises the question - if AmberScope was available at the time of the dispute, could it have been used to find the Harris patent?

The answer is yes, via a simple two step process shown below:

1) Enter US6246862 into AmberScope, and use the Next button to systematically review the patents in this network, working from the highest ranked (automatically computed AmberScore) patent to the lowest, reviewing these patents for documents that are particularly relevant to the claimed invention. As we identify relevant patents, we manually assign a relevancy score of 0 (green) to 4 (red) and then explore the neighborhood of these patents.

In 10th highest ranked position, with an AmberScore of 2.5,we find US5729604  Safety switch for communication device filed by Nortel, which discloses in its abstract:

A communication device such as a portable wireless terminal for a telephone system having a proximity sensor to automatically switch the receiving transducer from receiver mode to loudspeaker mode. The proximity sensor is positioned in the handset such that the associated circuitry switches the transducer from loudspeaker mode to receiver mode in response to the handset being brought into proximity with the user's ear.

The relevance to the Grivas patent is quite obvious, although this does not disclose disabling the keypad via the proximity sensor.

2) Since the Nortel patent is clearly relevant, we make this the focus, and again start reviewing its connected patents in order of AmberScore value using the Next button.

And in 10th position we find US6052464, the Harris patent. Which as a matter of interest has the US patent codes 379/433, in contrast to the 455/566 and 455/95 US patent codes for the Grivas patent (and which further confirms the risks of searching patents using patent codes alone).

This is yet another example of how quick and simple seaching patent networks using powerful search engines such as AmberScope can be a very effective means of finding prior art.  

AmberScope is a new patent search engine that allows you to easily search for similar patents to a known patent via its network of citation connections. But given the many already excellent patent search engines out there, why did we decide to develop a new, and very different way to search patents?

1) Because there are many undeserving patents out there

As discussed in an earlier post, there is evidence that suggests that many patents are being granted which may not deserve to be granted:

• Only 54% of litigated US patents are valid: Allison and Lemley, 1998
• Only 22% of US patents have all claims unchanged after re-examination: USPTO, 2012
• 40% of oppositions to granted European patents lead to full or partial loss of claims: EPO, 2012
• Only 47% of litigated Australian patent claims survive invalidity proceedings: Wetherall and Jensen, 2005
• Many patent attorneys believe that non-litigated patents are also of doubtful validity: "the percentage of invalid patents -probably more than 60%" - US patent litigator, 2012

Yet these undeserving patents can have a distortionary effect on the markets they are filed in. Competitors may be discouraged from releasing products and services they have the right to release, or need to commit time and money to file undeserving patent assertions.

The awareness of these undeserving patents is now starting to become a public issue, recognised by the general public as well by the patent profession. In turn, this is starting to lead to political pressure to change the patent system. So it may be in the interest of all of us in the patent profession to improve the quality of granted patents, so that patent laws are not changed in a detrimental fashion as a knee-jerk reaction to undeserving patents.

2) Because searching long lists of patents can be boring and unproductive - and risky

Many likely readers of this blog would have had to search long lists of patent for relevant art. We all know that it can be a boring and unproductive use of our time. So we try to reduce the length of the lists by making certain assumptions about keywords and IPC codes, but these can create the risks that these assumptions lead to relevant prior art patents being missed.

To minimise these risks, patent examiners can be very careful about patent searching, one of the key parts of their job. This can lead to patent examination taking longer than it otherwise might, creating a backlog of patent examinations that can run to 5 years or more in some offices. This in turn provides greater uncertainty to both patent applicants and in particularly their competitors.

3) Because searching by keywords and patent classification codes can miss relevant patents

Whether intentional or not, different patent applicants (and their patent attorneys) can use different keywords for the same technical concepts. As but one example, a cardboard box can be also be described as a container, carrier, carton, receptacle, package, packaging, and there are probably terms I have missed. This can be repeated for almost every technical concept, and means that even the most diligent of searchers can miss relevant patents, even allowing for the dictionaries of synonyms now available in some search engines.

The same applies to patent classification codes such as IPC or USPTO classifications. Because there is always a degree of subjectivity in the allocation of these codes by patent examiners, different patent examiners (for examples in different patent offices) can allocate different IPC codes to very similar inventions. Further errors can result when patent codes are automatically converted from say the USPTO patent classification system to the IPC system.

So the current patent searching system can be boring, unproductive, and still miss relevant patents for a variety of reasons. This can lead to undeserving patents being granted and long examination backlogs, which can have a variety of economic and even political consequences. Clearly improved patent searching processes are required, and AmberScope is our contribution to improving patent searching.

The patent system is an exchange of value, where innovators are given a monopoly of up to 20 years to practice an invention, in return for disclosing to the public a new and inventive innovation. But what if the claimed invention is not new or inventive - is this monopoly fair? Particularly on all of the competing businesses who are preventing from offering a product or service due to this undeserved patent?

Determining whether a patent is new or inventive enough to be granted is the role of patent examiners. I have met a number of patent examiners in my time, and all have struck me as very professional and careful. However patent examiners are like the rest of us, and under pressure to achieve (examination) outputs in a reasonable time. No examiner has unlimited time to search for prior art, and so it is possible they miss relevant prior art which may have affected their decision to grant a patent, whether for all of the claims in the patent, or even for just some of the claims. But considering that all granted claims can block legitimate competitors, even just one undeserving claim (particularly for a broad undeserving claim) can comprise an unfair monopoly.

As a result, there may be patents out there which have claims which are undeserved and at risk of being invalidated in court. But how many such patents are there?

Arguably the best data for the validity of the claims of granted patents comes from contested patents, which may come from patent re-examinations, oppositions or litigation. Luckily, there is reasonably good data covering the validity of contested patents:

United States

• The most commonly cited figure for patent invalidity in the US is the 1998 publication of Allison and Lemley, who reported that in only 54% of the 300 validity decision they reviewed that the patent was found to be valid. 
• An opposing point of view is given by Kesan and Ball in 2005, who suggested that 98% of all claims were valid in their review of 2000 patent disputes, see Table 8. However this figure is derived from the fact that out of these 2000 cases, only 2% ended up with a court handing down an invalidity decision. This methodology is questionable though. Only a small percentage of patent disputes end up in court at all, with the vast majority being settled. Patent settlements can cover a wide variety of outcomes, and it is entirely possible that many of these settlements may have been influenced by arguments of invalidity put forward by the alleged infringing party. This weakness is confirmed by Table 7, which shows that only 5.3% of cases end up with a court ruling of infringement. The authors then argue that many of the settled cases are in fact implicit or explicit admissions of infringement. Again this is only speculation - it is not uncommon for alleged infringers to settle because this can be cheaper than contesting the allegation in court, or a settlement may comprise the parties agreeing to go their separate ways, as will be discussed further below..
• A more recent point of view is given by Mann and Underweiser in 2010, who reviewed 266 cases covering the validity of 366 patents, and reported that 40% of patents were held to be valid. 
• According to a 2012 review by the USPTO of 11,415 re-examinations of US patents from 1982 to 2011, 66% of the patents had their claims changed, and 11% had all of their claims rejected. In other words, only 22% of re-examined patents had all claims confirmed as valid.

Europe

• The 2011 Annual Report of the EPO states that out of the 1010 oppositions settled in 2011, 40% of the oppositions were allowed in full or in part (in other words, some or all claims were judged invalid), 30% were dismissed (all claims were judged valid) and 30% were 'settled otherwise' (which often meant that claims were amended during the opposition process).

Australia

• Wetherall and Jensen reported in 2005 that out of 53 decisions of patent validity in Australian courts from 1997 to 2003, in 47% of the cases all litigated claims were confirmed as valid. In 9% of the cases some litigated claims were upheld, while in 44% of the case no claims were upheld.
• Weatherall et al reported in 2011 that 25% of patents opposed in Australia (via the opposition process used in Australia) do not proceed to grant. Weatherall et al also noted that  many of the 75% of patents that do proceed to grant do so with amended claims, although no specific data is available. Certainly, my personal experience of Australian patent oppositions is that claim amendment is reasonably common. So we can treat 25% as a minimum figure for patents with claims that are invalidated as part of the Australian opposition process.

But what were the patents ruled invalid for? 

United States

• Allison and Lemley (1998) also reported that obviousness was the leading cause of patent invalidity in the 138 cases they reviewed, at 42%. The second most prevalent cause of invalidity was lack of novelty over prior art ,at 32%.
• Patstats.org is a collection of US patent ligitation statistics dating back to the year 2000, and maintained by the University of Houston Law Centre. A variety of statistics are given, including the causes of invalidity decisions. Novelty (s102) was a factor in around 40% of 1029 invalidity causes listed, with obviousness (s103) a factor in around 27%, and a further 30% of invalidity rulings due to defects in the patent specification (s112).

Australia

• Weatherall and Jensen (2005) reported for the 20 decisions they considered, 47% of the cases including rulings on novelty, and 35% on inventive step, Table 6 (it was possible in this analysis for a case to be decided on both novelty and inventive step, so these categories are not exclusive).

So there appears to be a body of data showing that for re-examined, opposed or litigated patents, many (between 25% and 77%) of these patents contain granted claims that are invalidated during one of these processes. Novelty and obviousness are dominant causes for invalidation, and both are dependent on the availability of relevant prior art, i.e. patent "123" can be ruled to be invalid because it is either disclosed, or obvious in the light of, a relevant piece of prior art.

But what about patents that are not re-examined, opposed or litigated (hereafter just 'litigated')? It can be argued that such litigated patents come from a biased dataset, because at least one party is of the view that the patent is worth challenging all the way to final hearing. But what about the reminder, which comprise the vast majority of patents?

Unfortunately it is impossible to say for sure, without a full random review of these granted and not-litigated patents. However many patent attorneys review such patents on a regular basis, and anecdotal evidence can be revealing:

• More than 50% invalid due to prior art. This is based on personal experience in doing due diligence for over twenty years - US patent attorney
• More than 50% could be invalidated - US patent strategist
• I would suggest that it’s closer to 75% invalid (perhaps some partial invalidity in there). The biggest killer is non-patent prior art. - UK patent attorney, who then went on to clarify that this was highly dependent on who filed the patent, as patents filed by larger companies tended to be more robust becasue the applicants took care to properly research the prior art prior to filing the patent, and then prepared patents that avoided the identified prior art. In contrast, many smaller companies did not do this prior art searching, and so their patents were at more risk of being invalidated.
• Our success rate in finding good prior art is around 85% to 90% - Indian patent searcher, referring to studies done for US clients
• Since only a small percentage of patents are litigated, there is no meaningful data on the percentage of issued patents that are invalid. But as a patent litigator who is asked regularly to take a quick look at all kinds of patents, my sense is ... least 80% of the patents that I see over time could be challenged in Court, primarily on grounds of obviousness, lack of novelty, and lack of utility. In a relatively high percentage of cases in which I advise clients that the patent is invalid, the patentee backs off the demand that my clients take a license, and no litigation, therefore, is necessary. Thus, I think it is very clear that the percentage of invalid patents quite high---probably more than 60% - US patent litigator.
• My view is that is doubtful that more than a small percentage of issued patents are so invalid - A contrasting view from a US patent attorney

So there are a range of views on the likely validity of granted and not-litigated patents, and to be fair, such analysis should really look at patents on a claim by claim basis - many patents may contain a combination of valid and invalid claims.

Another big issue is that once a patent has been granted, the onus is on a party trying to invalidate it to prove to the appropriate legal standard that the patent is invalid. This means that merely finding what appears to be very relevant prior art may not be enough by itself to invalidate a patent.

Regardless, what these views do suggest is that there is likely to be a lot of patents out there with claims at risk from prior art, which appears to be one of the key reasons for patent invalidity. This is consistent with the available data for patents that are litigated, opposed or re-examined. 

Which is another way of saying that there is scope for improved prior art searching processes, whether by the applicant, examiner, or affected parties. These need to cover both non-patent and patent based prior art.

In terms of non-patent prior art, the likes of Google, Google Patent with the new prior art search function, Wikipedia (I recently found a very powerful piece of non-patent prior art in a Wikipedia entry for a particular topic), and crowd sourcing companies such as Article One and CrowdIPR can all make a big difference. However there still may be scope for improvement in searching for patent prior art in an efficient and effective fashion. Ambercite is working on developing such improvements, and we look forward to making these improvements publically available in the near future.

Acknowledgements - The author acknowledges the contributions of a number of contacts who have made comments on this topic, and the variety of viewpoints that were expressed. All views were very helpful.

An issue that we encounter from time to time is where clients ask:

         Can Network Patent Analysis (NPA) predict claim quality?

As we all know, claims are one of the key aspects of any patent. A well drafted claim will be broad enough to provide a good degree of protection for the invention being patented, yet narrow enough to avoid the prior art. Experienced patent attorneys take great care in drafting claims, knowing that, if the patent is ever litigated, the legal teams from both sides will sweat over every word in the claims. In addition, judges will base judgements that could be worth many millions on these same words. Claim quality also gets determined when the claim is referenced to competing products – a given set of claims may precisely read onto a competing, similar product, whilst it entirely misses a second competing and similar product. For good reasons, opinions regarding infringement of a given patent claim are best given by skilled attorneys and patent lawyers.

Given the importance of the wording of patent claims, it would be a big ask for a fully objective approach like NPA to predict claim quality. And for this very reason, Ambercite is careful to avoid suggesting that we can predict claim quality.

Having said that, a patent can, in simple terms, also be considered as a public disclosure in addition to the legal monopoly as defined by the claims. And underlying this disclosure is the invention being protected. Assuming that the patent owner is using skilled patent attorneys/agents to draft its patents, a 'better' (e.g. more innovative, valuable, novel) invention should bring with it the basis for stronger claims and hence stronger legal protection.

The relationship between invention quality and legal quality can be expressed by the figure below. A higher quality invention brings with the potential for stronger claims that take advantage of the breadth of the invention. It is the role of the patent attorney to maximise the legal quality of the patent by drafting strong claims based the quality of the invention.

Figure: Two alternative definitions of patent quality

Unlike legal quality, we believe that 'invention quality' can be predicted using NPA, for one or both of two reasons:

1. Important inventions are more likely to attract imitators (or even improvements by the same applicant) and this will increase the number of forward citation connections.
2. Broad inventions (or at least claims to a broad invention) may well attract a large number of backward citations during examination.

A greater number of forward or backward citations should help to increase the influence of the patent within the patent network, and so increase its NPA ranking and predicted quality. In turn, a high quality invention brings with it the potential for high quality claims and a legally strong patent. It will remain the role of the skilled patent attorney or patent lawyer to interpret the strength of the patent claims, but NPA can help this skilled professional understand the quality of the underlying invention.

The above figure also helps to explain what happens to the 'quality' of a patented invention once the patent expires (or is abandoned). Legally, an expired patent has little value. However an expired patent publication can still be a record of a high quality invention, and this can continue to influence the field around it. Similarly, a patent only ever filed in the US can still influence its field of technology in other countries, such as during patent prosecution, litigation or research.