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| United States Patent Application |
20080270152
|
| Kind Code
|
A1
|
|
Menezes; Clive D.
|
October 30, 2008
|
Patent Acquisition and Assertion by a (Non-Inventor) First Party Against a
Second Party
Abstract
Methods for a first party to acquire and assert a patent property against
a second party are disclosed. The methods include obtaining an equity
interest in the patent property. The methods further include writing a
claim within the scope of the patent property. The claim is written to
cover a product of the second party where the product includes a secret
aspect. The methods further include filing the claim with a patent
office. The methods sometimes include offering a license of the patent
property to the second party after the patent property issues as a patent
with the claim. The methods sometimes include asserting infringement of
the claim by the second party after the patent property issues as a
patent with the claim. The methods sometimes include negotiating a
cross-license with the second party based on the assertion of
infringement of the claim, where under the cross-license the first party
obtains a license to an intellectual property right from the second
party. The methods sometime include attempting to obtain a monetary
settlement from the second party based on the assertion of infringement
of the claim.
| Inventors: |
Menezes; Clive D.; (Conroe, TX)
|
| Correspondence Address:
|
HOWARD L SPEIGHT
9601 Katy Freeway, Suite 280
HOUSTON
TX
77024
US
|
| Assignee: |
Halliburton Energy Services Inc.
|
| Family ID:
|
39888064
|
| Appl. No.:
|
11/741429
|
| Filed:
|
April 27, 2007 |
| Current U.S. Class: |
705/1.1 |
| Current CPC Class: |
G06Q 30/06 20130101 |
| Class at Publication: |
705/1 |
| International Class: |
G06Q 30/00 20060101 G06Q030/00 |
Claims
1. A method for a non-inventor first party to acquire and assert a patent
property against a second party, the method including the first party
performing the following acts: obtaining an equity interest in the patent
property; writing a claim within the scope of the patent property, the
claim being written to cover a product of the second party, where the
product includes a secret aspect, the secret aspect including an
unobservable aspect, where writing the claim includes performing research
using a computer to convert the unobservable aspect to an observable
aspect; filing the claim with a patent office; offering a license of the
patent property to the second party after the patent property issues as a
patent with the claim; and attempting to obtain a monetary settlement
from the second party based on the assertion of infringement of the
claim.
2. The method of claim 1 further including: distributing proceeds from
the monetary settlement to at least one of the first party and the
inventor.
3. The method of claim 1 where obtaining the equity interest in the
patent property includes at least one of: obtaining an equity interest in
a patent and/or a patent application.
4. The method of claim 1 where obtaining the equity interest in the
patent property includes at least one or: obtaining the equity interest
from an inventor of the patent property and/or obtaining the equity
interest from an owner of the patent property.
5. The method of claim 1 wherein obtaining the equity interest in the
patent property includes: paying financial consideration for the equity
interest.
6. The method of claim 1 wherein obtaining the equity interest in the
patent property includes: performing work in exchange for the equity
interest.
7. The method of claim 1 wherein obtaining the equity interest in the
patent property includes: paying less for the patent property than it is
worth.
8. The method of claim 1 wherein obtaining the equity interest in the
patent property includes: obtaining all substantial rights in the patent
property.
9. The method of claim 1 wherein obtaining the equity interest in the
patent property includes: obtaining one or more of the rights to make
use, sell, offer to sell, or import into the United States articles
within the scope of the patent property.
10. The method of claim 1 wherein obtaining the equity interest in the
patent property includes: obtaining the equity interest with the intent
of using the patent property exclusively to generate revenue from other
parties through assertions of infringement against those parties.
11. The method of claim 1 where writing the claim within the scope of the
patent property includes: writing the claim to cover a process including
an aspect practiced secretly by the second party.
12. The method of claim 1 where writing the claim within the scope of the
patent property includes: writing the claim to cover a product produced
by a process including an aspect practiced secretly by the second party.
13. The method of claim 1 where the secret aspect includes unobservable
aspects and where writing the claim includes: performing research to
convert some of the unobservable aspects to observable aspects.
14. The method of claim 1 where the secret aspect includes unobservable
aspects and where writing the claim includes: performing research to
convert some of the unobservable aspects to observable aspects; and
making inferences about the remaining unobservable aspects.
15. The method of claim 1 where the secret aspect includes unobservable
aspects and where writing the claim includes: performing research to
convert some of the unobservable aspects to observable aspects; and
making deductions about the remaining unobservable aspects.
16. The method of claim 1 where filing the claim with the patent office
includes: filing the claim with the United States Patent and Trademark
Office.
17. The method of claim 1 where filing the claim with the patent office
includes: filing the claim with a patent office of a foreign country.
18. The method of claim 1 where filing the claim with the patent office
includes: filing the claim with a patent office implementing a patent
treaty.
19. The method of claim 1 where filing the claim with the patent office
includes: filing the claim as part of at least one of a continuation
application and/or a divisional application.
20. The method of claim 1 where filing the claim with the patent office
includes: filing the claim as part of a reissue application.
21. The method of claim 1 where filing the claim with the patent office
includes: filing the claim during a reexamination proceeding.
22. The method of claim 1 where filing the claim with the patent office
includes: taking over prosecution of the patent property and filing the
claim during that prosecution.
23. The method of claim 1 wherein offering a license of the patent
property to the second party after the patent property issues as a patent
with the claim comprises: informing the second party of the existence of
the claim.
24. The method of claim 1 further including: asserting infringement of
the claim by the second party if the license offer is rejected by the
second party.
25. The method of claim 24 where asserting infringement of the claim
includes: sending the second party a letter accusing the second party of
infringing the patent.
26. The method of claim 24 where asserting infringement of the claim
includes: filing a lawsuit against the second party in which the second
party is accused of infringing the patent.
27. The method of claim 24 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a suit
brought against the first party by the second party.
28. The method of claim 24 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is invalid.
29. The method of claim 24 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is not infringed.
30. The method of claim 24 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is unenforceable.
31. The method of claim 24 where asserting infringement of the claim
includes: initiating an action against the second party before the
International Trade Commission in which the second party is accused of
infringing the patent.
32. The method of claim 1 further including: determining the identity of
the second party by searching business practices of the second party
through one or more databases.
33. The method of claim 1 further including: determining the identity of
the second party by reviewing publicly accessible data regarding an
intellectual property portfolio of the second party.
34. The method of claim 33 where reviewing the publicly accessible data
regarding the intellectual property portfolio of the second party
includes reviewing a database maintained by a patent office for patent
properties filed for the benefit of the second party.
35. The method of claim 33 where reviewing the publicly accessible data
regarding the intellectual property portfolio of the second party
includes reviewing a database maintained by a patent office for patent
properties owned by the second party.
36. The method of claim 1 further including: determining the identity of
the second party by reviewing other patents that reference the patent.
36. The method of claim 1 further including: determining the identity of
the second party by reviewing other patents that reference the patent.
37. A method to assert a patent property by a first party against a
second party, the method including: obtaining by the first party an
equity interest in the patent property; asserting by the first party
infringement of a claim within the scope of the patent property, the
claim covering a product of the second party where the product includes a
secret aspect, the secret aspect including an unobservable aspect, the
unobservable aspect being converted to an observable aspect by performing
research using a computer; and attempting to obtain a monetary settlement
from the second party based on the assertion of infringement of the
claim.
38. The method of claim 37 wherein the first party is an inventor.
39. The method of claim 37 further including: distributing proceeds from
the monetary settlement to at least one of the first party and the
inventor.
40. The method of claim 37 where obtaining the equity interest in the
patent property includes: obtaining an equity interest in a patent.
41. The method of claim 37 where obtaining the equity interest in the
patent property includes: obtaining an equity interest in a patent
application.
42. The method of claim 37 where obtaining the equity interest in the
patent property includes: obtaining the equity interest from an inventor
of the patent property.
43. The method of claim 37 where obtaining the equity interest in the
patent property includes: obtaining the equity interest from an owner of
the patent property.
44. The method of claim 37 wherein obtaining the equity interest in the
patent property includes: paying financial consideration for the equity
interest.
45. The method of claim 37 wherein obtaining the equity interest in the
patent property includes: performing work in exchange for the equity
interest.
46. The method of claim 37 wherein obtaining the equity interest in the
patent property includes: performing legal work in exchange for the
equity interest.
47. The method of claim 37 wherein obtaining the equity interest in the
patent property includes: paying less for the patent property than it is
worth.
48. The method of claim 37 wherein obtaining the equity interest in the
patent property includes: obtaining all substantial rights in the patent
property.
49. The method of claim 37 wherein obtaining the equity interest in the
patent property includes: obtaining one or more of the rights to make
use, sell, offer to sell, or import into the United States articles
within the scope of the patent property.
50. The method of claim 37 wherein obtaining the equity interest in the
patent property includes: obtaining the equity interest with the intent
of using the patent property exclusively to generate revenue from other
parties through assertions of infringement against those parties.
51. The method of claim 37 where asserting infringement of the claim
includes: sending the second party a letter accusing the second party of
infringing the patent.
52. The method of claim 37 where asserting infringement of the claim
includes: filing a lawsuit against the second party in which the second
party is accused of infringing the patent.
53. The method of claim 37 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a suit
brought against the first party by the second party.
54. The method of claim 37 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is invalid.
55. The method of claim 37 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is not infringed.
56. The method of claim 37 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is unenforceable.
57. The method of claim 37 where asserting infringement of the claim
includes: initiating an action against the second party before the
International Trade Commission in which the second party is accused of
infringing the patent.
58. The method of claim 37 further including: determining the identity of
the second party by searching business practices of the second party
through one or more databases.
59. The method of claim 37 further including: determining the identity of
the second party by reviewing publicly accessible data regarding an
intellectual property portfolio of the second party.
60. The method of claim 59 where reviewing the publicly accessible data
regarding the intellectual property portfolio of the second party
includes reviewing a database maintained by a patent office for patent
properties filed for the benefit of the second party.
61. The method of claim 59 where reviewing the publicly accessible data
regarding the intellectual property portfolio of the second party
includes reviewing a database maintained by a patent office for patent
properties owned by the second party.
62. The method of claim 37 further including: determining the identity of
the second party by reviewing other patents that reference the patent.
63. A method for a non-inventor first party to acquire and assert a
patent property against a second party, the method including the first
party performing the following acts: obtaining an equity interest in the
patent property; writing a claim within the scope of the patent property,
the claim being written to cover a product of the second party where the
product includes a secret aspect, the secret aspect including an
unobservable aspect, where writing the claim includes performing research
using a computer to convert the unobservable aspect to an observable
aspect; filing the claim with a patent office; asserting infringement of
the claim by the second party after the patent property issues as a
patent with the claim; negotiating a cross-license with the second party
based on the assertion of infringement of the claim, where under the
cross-license the first party obtains a license to an intellectual
property right from the second party.
64. The method of claim 63 where obtaining the equity interest in the
patent property includes: obtaining an equity interest in a patent.
65. The method of claim 63 where obtaining the equity interest in the
patent property includes: obtaining an equity interest in a patent
application.
66. The method of claim 63 where obtaining the equity interest in the
patent property includes: obtaining the equity interest from an inventor
of the patent property.
66. The method of claim 63 where obtaining the equity interest in the
patent property includes: obtaining the equity interest from an owner of
the patent property.
67. The method of claim 63 wherein obtaining the equity interest in the
patent property includes: paying financial consideration for the equity
interest.
68. The method of claim 63 wherein obtaining the equity interest in the
patent property includes: performing work in exchange for the equity
interest.
69. The method of claim 63 wherein obtaining the equity interest in the
patent property includes: performing legal work in exchange for the
equity interest.
70. The method of claim 63 wherein obtaining the equity interest in the
patent property includes: paying less for the patent property than it is
worth.
71. The method of claim 63 wherein obtaining the equity interest in the
patent property includes: obtaining all substantial rights in the patent
property.
72. The method of claim 63 wherein obtaining the equity interest in the
patent property includes: obtaining one or more of the rights to make
use, sell, offer to sell, or import into the United States articles
within the scope of the patent property.
73. The method of claim 63 wherein obtaining the equity interest in the
patent property includes: obtaining the equity interest with the intent
of using the patent property exclusively to generate revenue from other
parties through assertions of infringement against those parties.
74. The method of claim 63 where writing the claim within the scope of
the patent property includes: writing the claim to cover a process
including an aspect practiced secretly by the second party.
75. The method of claim 63 where writing the claim within the scope of
the patent property includes: writing the claim to cover a product
produced by a process including an aspect practiced secretly by the
second party.
76. The method of claim 63 where the secret aspect includes unobservable
aspects and where writing the claim includes: performing research to
convert some of the unobservable aspects to observable aspects.
77. The method of claim 63 where the secret aspect includes unobservable
aspects and where writing the claim includes: performing research to
convert some of the unobservable aspects to observable aspects; and
making inferences about the remaining unobservable aspects.
78. The method of claim 63 where the secret aspect includes unobservable
aspects and where writing the claim includes: performing research to
convert some of the unobservable aspects to observable aspects; and
making deductions about the remaining unobservable aspects.
79. The method of claim 63 where filing the claim with the patent office
includes: filing the claim with the United States Patent and Trademark
Office.
80. The method of claim 63 where filing the claim with the patent office
includes: filing the claim with a patent office of a foreign country.
81. The method of claim 63 where filing the claim with the patent office
includes: filing the claim with a regional patent office.
82. The method of claim 63 where filing the claim with the patent office
includes: filing the claim with a patent office implementing a patent
treaty.
83. The method of claim 63 where filing the claim with the patent office
includes: filing the claim as part of a continuation application.
84. The method of claim 63 where filing the claim with the patent office
includes: filing the claim as part of a divisional application.
85. The method of claim 63 where filing the claim with the patent office
includes: filing the claim as part of a reissue application.
86. The method of claim 63 where filing the claim with the patent office
includes: filing the claim during a reexamination proceeding.
87. The method of claim 63 where filing the claim with the patent office
includes: taking over prosecution of the patent property and filing the
claim during that prosecution.
88. The method of claim 63 where asserting infringement of the claim
includes: sending the second party a letter accusing the second party of
infringing the patent.
89. The method of claim 63 where asserting infringement of the claim
includes: filing a lawsuit against the second party in which the second
party is accused of infringing the patent.
90. The method of claim 63 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a suit
brought against the first party by the second party.
91. The method of claim 63 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is invalid.
92. The method of claim 63 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is not infringed.
93. The method of claim 63 where asserting infringement of the claim
includes: filing a counterclaim against the second party in a declaratory
judgment suit brought against the first party by the second party in
which the second party asserts that the patent is unenforceable.
94. The method of claim 63 where asserting infringement of the claim
includes: initiating an action against the second party before the
International Trade Commission in which the second party is accused of
infringing the patent.
95. The method of claim 63 further including: determining the identity of
the second party by searching business practices of the second party
through one or more databases.
96. The method of claim 63 further including: determining the identity of
the second party by reviewing publicly accessible data regarding an
intellectual property portfolio of the second party.
97. The method of claim 96 where reviewing the publicly accessible data
regarding the intellectual property portfolio of the second party
includes reviewing a database maintained by a patent office for patent
properties filed for the benefit of the second party.
98. The method of claim 96 where reviewing the publicly accessible data
regarding the intellectual property portfolio of the second party
includes reviewing a database maintained by a patent office for patent
properties owned by the second party.
99. The method of claim 63 further including: determining the identity of
the second party by reviewing other patents that reference the patent.
Description
BACKGROUND
[0001] For the purposes of this application, a patent property is a United
States or foreign patent, design patent, utility model, patent
application, or other similar intellectual property. A patent property
may exist before filing. For example, a patent property may include the
intellectual property embodied in a patent application as it is being
prepared and before it is filed. Patent properties have certain property
rights that accrue to their owners. Such rights can be asserted against
other parties in law suits. For example, a patent owner may file a law
suit against another entity claiming that the other entity's product is
infringing the patent owner's patent.
[0002] Intellectual property rights can also be used in licensing
negotiations. For example, the owner or licensee of a pending patent
application may send a letter to another entity warning the other entity
that the patent application is on file. The owner may suggest that the
other entity pay a licensing fee to continue producing a product that the
owner contends will infringe when the patent application issues as a
patent.
[0003] In the United States, a patent application initially belongs to the
inventor or inventors. In many instances, inventors assign patent
applications to their employers upon filing. The patent that issues from
a patent application is typically owned by the owner of the patent
application.
[0004] Rights in a patent property can be assigned or licensed. A
recipient of such an assignment or license is said to own an equity
interest in the patent property.
[0005] Typically, before initiating licensing discussions concerning a
patent property, such as a patent or a patent application, a party
insures that it has standing to bring a lawsuit over the patent property.
Otherwise, the party will be negotiating from a weak position because the
party will be unable to sue if the entity on the other side of the
negotiations refuses to enter into a license. Under the law at the time
of filing, a party has standing to bring a lawsuit over a patent if the
party owns "all substantial rights" in the patent. A party has all
substantial rights if, for example, it has received ownership of the
patent by way of an assignment from the inventors, assuming that the
inventors had not previously assigned the patent. In addition, a party
may receive all substantial rights in a patent through a license. One of
the rights that must be conferred through such a license in order to
create standing is the right to sue under the patent.
[0006] In addition, under the Rules of Federal Procedure in effect at the
time of filing a party is obligated to perform a pre-suit investigation
before filing a law suit on a patent. Often, a party will perform the
same pre-suit investigation before initiating licensing negotiations. A
pre-suit investigation often involves drafting a "claim chart." In the
United States, a patent includes claims, which set out the metes and
bounds of the patent property associated with the patent. A claim often
is made up of a set of "elements" or "limitations," which together define
the scope of the claim. A patent is infringed by a product, which may be
an object, a process, or the product of a process, if every element or
limitation of one of the patent's claims is satisfied by the product. A
claim chart is created to show the correspondence between the patent
claim and the infringing product.
[0007] In many situations, it is possible to create a claim chart applying
a patent claim to a product by simply examining the product. For example,
if the product is an object it is usually possible to physically examine
the object, possibly after disassembling it, and create the claim chart
based on that examination.
[0008] Other products, however, may include an aspect that the party
producing the product seeks to keep secret. For example, if a party
provides a web-based service that uses software that runs on the party's
computers, the party may intend for the operation of the software to be
secret.
[0009] Similarly, a party may sell an object that automatically destroys a
part of itself if the object is disassembled. The intention of the party
may be to keep that destroyed part secret.
[0010] It is a challenge to engage in licensing negotiations or a patent
lawsuit where a product asserted to be infringing includes a secret
aspect.
BRIEF DESCRIPTION OF THE DRAWINGS
[0011] FIGS. 1-3 are flow charts illustrating example embodiments of
aspects of methods for patent acquisition and assertion by a
(non-inventor) first party against a second party.
DETAILED DESCRIPTION
[0012] The inventor and the assignee of this patent have no intention of
applying the techniques described herein offensively but instead intend
to use the patent defensively to discourage patent trolls and the like
from extortionist practices.
[0013] Some embodiments of methods for patent acquisition and assertion by
a non-inventor first party against a second party, illustrated in FIG. 1,
begin with a first party obtaining an equity interest in a patent
property (block 105). In some embodiments, the first party is a company,
such as a holding company, represented by a law firm. For example, the
first party may be a company that is in the business of acquiring and
licensing patents and patent applications. That company may hire one or
more law firms to help with or actually perform the method activities. In
some embodiments, the first party is a law firm. The law firm may perform
the method activities directly or it may form an entity that performs the
activities. The law firm may be a partner in such an entity with one or
more licensing experts, investors, or other entities or individuals
interested in participating in such activities.
[0014] In some embodiments, the patent property is a patent. In some
embodiments, the patent property is a design patent. In some embodiments,
the patent property is a utility model, a patent of addition, a
confirmation patent, an importation patent, or some other form of patent
recognized by a country in the world. In some embodiments, the patent
property is an application for one of the forms of property described
above. The patent property may be property interest recognized in the
United States, a property interest recognized in a foreign country, or a
property interest recognized in a group of countries. A patent
application in the European Patent Office is an example of the latter.
[0015] In some embodiments, the patent property includes claims directed
to a process, products, or products that are derived from a process. In
some embodiments, a second party is secretly using the process as part of
its operations. The secret use may be the second party's trade secret.
[0016] In some embodiments, the equity interest is obtained from an
inventor or inventors of the patent property. In some embodiments, the
equity interest is obtained from the current owner of the patent
property. For example, the inventors of the patent property may have
assigned their ownership interest in the patent property to their
employer, a corporation. In that case, the equity interest would be
acquired from the employer-corporation. Further, in some countries of the
world title to a patent property may initially reside in the inventor's
or inventors' employer. In that case, the equity interest would be
acquired from the employer-corporation. As another example, the
employer-corporation, having received an equity interest in the patent
property from an inventor or inventors, may have transferred the equity
interest in the patent property to another entity, such as a corporation
or an individual. In that case, the equity interest would be acquired
from the new owner-entity. Other similar situations would be apparent to
persons of ordinary skill in the art.
[0017] In some embodiments, the equity interest acquired by the first
party is sufficient so that the first party would have standing to file a
law suit, or to bring some other action through the United States
government or through a foreign government or regional government, under
the equity interest. In the United States, the equity interest may be in
all substantial rights in a patent. If other countries or regions of the
world, the equity interest may be in other rights. In some embodiments,
the equity interest may be insufficient to confer standing without
joining another person or entity in a lawsuit filed under the patent
property.
[0018] In some embodiments, the equity interest is acquired by an
assignment. In some embodiments, the equity interest is acquired by a
license. In some embodiments, the equity interest is acquired by some
other means of transfer.
[0019] In some embodiments, the equity interest is acquired by paying
financial consideration. For example, the first party may acquire the
equity interest by paying cash, securities, bonds, or some other form of
financial consideration.
[0020] In some embodiments, the equity interest is acquired by performing
work. For example, the first party may acquire the equity interest by
preparing the patent application that led to the patent. Alternatively,
or in addition, the first party may acquire the equity interest by
agreeing to prosecute a patent lawsuit under the patent without charging
for time and/or expenses. Further, the first party may acquire the equity
interest by agreeing to pay the law firm that prosecutes a law suit under
the patent.
[0021] In some embodiments, the equity interest is acquired by paying less
for the patent property than it is worth.
[0022] In some embodiments, the equity interest is acquired by obtaining
all substantial rights in the patent property. The first party may make
this acquisition through an assignment or through a license. The license
may be an exclusive license.
[0023] In some embodiments, the equity interest is acquired by obtaining
one or more of the rights to make, use, sell, offer to sell, or import
into the United States articles within the scope of the patent property.
[0024] In some embodiments, the equity interest is obtained with the
intent of using the patent property exclusively to generate revenue from
other parties through assertions of infringement against those parties.
For example, the first party may be a law firm and it may acquire a
patent that covers certain technology that the law firm has no intention
of practicing. Instead, the law firm may have acquired the patent for the
purpose of licensing it to companies that are practicing the invention
described in the patent.
[0025] Referring again to FIG. 1, in some embodiments the method continues
with the first party writing a claim within the scope of the patent
property that covers a product of the second party, where the product
includes a secret aspect (block 110). In some embodiments, the scope of
the claim is determined by the then-prevailing laws of the country or
countries where the patent property is recognized. For example, in the
United States, the law of claim interpretation arises from the Patent
Statute, 35 U.S.C. .sctn. 101, et seq., and case law. The first party
would be aware of the law of the country or countries where the patent
property is recognized and tailor the claim to the desired scope.
[0026] In some embodiments, the first party would also be aware that the
product of the second party includes a secret aspect and would write the
claim to cover that secret aspect. For example, the product of the second
party may include observable aspects and unobservable aspects, the latter
of which would also be classified as secret aspects. The first party may
research the product of the second party to a reasonable extent to
convert as many unobservable aspects to observable aspects as possible.
The first party may then make reasonable inferences or deductions about
the unobservable aspects and write the claim accordingly.
[0027] Referring again to FIG. 1, in some embodiments the method continues
with the first party filing the claim with a patent office (block 115).
In some embodiments, the patent office is the United States Patent and
Trademark Office. In some embodiments, the patent office is the patent
office of a foreign country, such as Germany or the United Kingdom. In
some embodiments, the patent office is that of a region, such as the
European Patent Office. In some embodiments, the patent office may be
implementing a patent treaty, such as the United States Patent and
Trademark Office or the European Patent Office operating under the Patent
Cooperation Treaty.
[0028] In some embodiments, the claim may be filed as part of a
continuation application. In some embodiments, filing the claim may be
filed as part of a divisional application. In some embodiments, the claim
may be filed as part of a reissue application. In some embodiments, the
claim may be filed as part of a reexamination proceeding. In some
embodiments, the first party may take over prosecution of a patent
application and file the claim as part of that activity.
[0029] Referring again to FIG. 1, in some embodiments the method
continues, after the patent property issues as a patent including the
claim, with the first party offering a license of the patent property to
the second party (block 120). In some embodiments, this is accomplished
by informing the second party of the existence of the claim. In some
embodiments, the method includes asserting infringement of the claim by
the second party if the license offer is rejected by the second party. In
some embodiments, this is accomplished by the first party sending the
second party a letter accusing the second party of infringing the patent.
In some embodiments, the letter includes an invitation for the second
party to enter into licensing discussions with the first party. In some
embodiments, the letter does not include such an invitation but instead
simply purports to bring the patent to the attention of the second party.
In some embodiments, the letter offers the second party an opportunity to
purchase the patent.
[0030] In some embodiments, the first party may assert infringement of the
claim by filing a lawsuit in which the second party is accused of
infringing the patent. In some embodiments the second party may have
previously sued the first party, and the first party asserts infringement
of the claim by filing a counterclaim against the second party in that
lawsuit accusing the second party of infringing the patent. In some
embodiments the previous law suit brought by the second party may have
been a declaratory judgment law suit against the first party asserting
that the patent is invalid. In some embodiments the previous law suit
brought by the second party may have been a declaratory judgment law suit
against the first party asserting that the patent is not infringed by the
second party. In some embodiments the previous law suit brought by the
second party may have been a declaratory judgment law suit against the
first party asserting that the patent is not enforceable.
[0031] In some embodiments, the first party may assert infringement of the
claims by filing an action before the International Trade Commission in
which the second party is accused of infringing the patent.
[0032] In some embodiments, the first party determines the identity of the
second party by searching the business practices of the second party
through one or more databases. For example, the first party may determine
the identity of the second party by performing research on the Internet
using a search engine such as Google.TM.. Further, the first party may
use databases available through the Internet, such as those provided by
the Securities Exchange Commission (the "SEC") or Dunn & Bradstreet. Such
databases may include descriptions of the business practices of the
second party authored by the second party or its representatives or by
one or more third parties.
[0033] In some embodiments, the first party may determine the identity of
the second party by reviewing publicly accessible data regarding the
intellectual property portfolio of the second party. For example, the
first party may use the search tools available on the United States
Patent and Trademark Office's web page or other similar search tools that
allow a user to research and view the contents of patent properties in
the United States and throughout the world.
[0034] In most cases, such databases allow the user to search for patent
properties owned by the second party. Further, many of such databases
allow the user to search for patent properties prepared for the benefit
of the second party but which are now owned by another entity. For
example, the second party may have had a patent application prepared for
an invention owned by one of its employees. The employee may have
assigned the patent application to the second party, which may have then
assigned the patent application or the patent that issued from that
application to another entity. The first party may use such patent
properties as sources of information about the business practices of the
second party. For example, a patent may describe a particular technology
that the second party uses in its business. In addition, a patent
application may describe a business method that the second party employs
in its business. In some embodiments of the method described herein, such
information is useful in identifying the second party.
[0035] Such databases sometimes provide for each patent property a list of
other patent properties that reference it. For example, patents in the
United States include on their first page, and sometimes on continuation
pages, a list of patents that site that patent. Such references may
practice the same technology, and in some cases the invention, described
in the patent. Consequently, to practice the technology described in such
references it is necessary to practice the invention described in the
patent. In some embodiments, the first party uses such information to
identify the second party.
[0036] Referring again to FIG. 1 in some embodiments the method continues
with the first party attempting to obtain a monetary settlement from the
second party based on the assertion of infringement of the claim (block
125). The second party may pay the monetary settlement to the first party
to settle a law suit, to avoid a law suit, or to avoid some other action
by the first party. The monetary settlement may be in the form of cash,
bonds, or securities. It may be a lump sum or in the form of a promise to
pay sums in the future. The promise to pay in the future may be sums
certain or the amount may vary depending, for example, on the revenues
earned by the second party or by another entity. The promise to pay in
the future may be contingent on an event. For example, the promise may be
contingent on a finding in another lawsuit, or in the same lawsuit
against another party, that the patent property is not invalid.
[0037] Referring again to FIG. 1, in some embodiments the method continues
with the first party distributing proceeds from the monetary settlement
to at least one of the first party and the inventor (block 130). For
example, the first party and the inventor may have a contract, such as an
engagement letter, under which the proceeds from the monetary settlement
are paid according to a formula. Under one example formula, the expenses
of the lawsuit would be reimbursed first, followed by a division of the
remainder between the inventor, who might receive sixty percent, and the
first party, who might receive forty percent. A portion of the proceeds
might be stored in a "war chest" for future lawsuits.
[0038] In some embodiments, illustrated in FIG. 2, an inventor asserts a
patent property through a first party against a second party (200). In
some embodiments, the inventor grants to a first party an equity interest
in the patent property (block 205). The inventor, through the first
party, asserts infringement of a claim within the scope of the patent
property (block 210). The claim covers a product of a second party. The
product includes a secret aspect.
[0039] The inventor then obtains a monetary settlement from the second
party based on the assertion of infringement of the claim (block 215).
The inventor then distributes proceeds from the monetary settlement to at
least one of the first party and the second party (block 220).
[0040] In some embodiments, illustrated in FIG. 3, a non-inventor first
party acquires and asserts a patent property against a second party
(300). In some embodiments, the first party obtains an equity interest in
the patent property (block 305).
[0041] In some embodiments, the first party then writes a claim within the
scope of the patent property (block 310). The claim is written to cover a
product of the second party. The product includes a secret aspect.
[0042] In some embodiments, the first party files a claim with a patent
office (block 315).
[0043] In some embodiments, after the patent property issues as a patent
including the claim the first party asserts infringement of the claim by
the second party (block 320). In some embodiments, the first party then
negotiates a cross-license with the second party based on the assertion
of infringement of the claim (block 325). In some embodiments, the
cross-license results in the first party obtaining a license to an
intellectual property from the second party. The intellectual property
may a patent property owned by the second party or a patent property to
which the second party has a license. In some embodiments, the
intellectual property is a trademark. In some embodiments, the
intellectual property is a trade secret. In some embodiments, the
intellectual property is recognized in the United States. In some
embodiments, the intellectual property is recognized in a foreign country
or region.
[0044] The text above describes one or more specific embodiments of a
broader invention. The invention also is carried out in a variety of
alternate embodiments and thus is not limited to those described here.
The foregoing description of the preferred embodiment of the invention
has been presented for the purposes of illustration and description. It
is not intended to be exhaustive or to limit the invention to the precise
form disclosed. Many modifications and variations are possible in light
of the above teaching. It is intended that the scope of the invention be
limited not by this detailed description, but rather by the claims
appended hereto.
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