Intellectual Ventures on appeal rules

In its letter to the USPTO on the proposed appeal rules, Intellectual Ventures noted: Intellectual Ventures typically employs firms in the upper quartiles of the spectrum for work involving complex issues and risks...the AIPLA third quartile billing rate for associates in San Francisco in 2006 was $413 [ per hour]. The USPTO had estimated $310 per hour for appeals.

The letter had an appendix with representative cases of Intellectual Ventures. The application with the fewest claims (20060047435) had twenty claims, that with the most claims (20060116824) had 194 claims. One notes that there was also 20060047433 and 20060047434.

The letter is signed by Casey Tegreene, Roy Diaz and Dale Cook. The date of the covering email was 8 Aug. 08.

Of the 20 claim application, 20060047435, there was a final rejection mailed on August 7, 2008 to Clarence Tegreene of Searete LLC. There was a provisional double patenting rejection over application 11/004,446. There was an obviousness rejection over Chirino (20030022285). Applicants filed an RCE on 31 Oct. 08. In applicant remarks, received on 3 Nov 08, applicant did attempt to overcome the obviousness rejection, citing, among other things, MPEP 2143.03.

A similar saga exists for 20060047433, with a final rejection on May 22, 2008 and an RCE request on 25 Aug. 08. There was a provisional double-patenting rejection over 11/044,656 and over other applications. There were rejections under 112 P2 and under 112 P 1 (enablement)


****See also

http://ipbiz.blogspot.com/2008/11/on-intellectual-ventures.html

http://ipbiz.blogspot.com/2008/11/intellectual-ventures-and-universities.html

****UPDATE

ROBERT Z. CASHMAN asks about the significance of the above post. One notes that Intellectual Ventures (operating sometimes as Searete) had a number of patent applications at the time of their letter to the USPTO that had a lot of obviousness-type double-patenting rejections. The interested reader might more fully investigate the applications.

In his blog, Cashman wrote about RPX:

The issue here is two-fold: 1) whether RPX can control itself regarding costs to its own members and not become a mafia-type of organization extorting funds from corporations who have the choice of "join or be sued," and 2) what RPX will do to companies who choose NOT to join their organization.

As per the question of whether RPX can control itself internally, I see from looking at Wall Street that companies do not and can not control themselves when there is opportunity to get away with an abuse.

He wrote about Ocean Tomo:

I have spoken to guys at Ocean Tomo, and my opinion is that what they intend to do is quite innovative. Right now patents are generally valued by analysts who work either independently and know the technology field or work for the company doing the purchasing. The problem with valuation in its current form is that there are usually only a few people looking at the value of a particular set of patents before an offer is presented for the purchase and/or sale of the patents. However, with Ocean Tomo's method, the value of a patent is not only (hopefully) valued initially by an analyst, but that value is then CONFIRMED by bids and valuations by those looking to purchase the patents and/or by those who have some sort of input as to the value of the patents.

IPBiz observes that a patent CANNOT be analyzed independently from a business plan. IBM looked at Chester Carlson's patents again and again (and had Arthur D. Little look at them, too) and concluded xerography wasn't going anywhere. Nobody, but one small company in Rochester, placed ANY value on Carlson's patents. In turn, Xerox in the 60s and 70s had great ideas, but no business plan, but others used the ideas, profitably.

The information in a patent is made publicly available, so that people can made deals. The people that match the patent with the business plan are the winners.

***ALSO

PatentFools has another negative post about RPX, Tilting at Windmills: Patent Troll Style.