Tuesday, April 01, 2008

Cisco's chief patent counsel is not a registered patent attorney?!?

An earlier IPBiz had quoted Rick Frenkel, the patent troll tracker and Director, Intellectual Property at Cisco Systems, Inc. , as stating:

Although my direct manager at Cisco knew I was writing the blog, the content was entirely my own, and nobody at Cisco ever wrote any content for me or made any attempts to edit me, nor was anyone up the chain above my direct manager aware that I was the author.

In an article "Trolltracker, Cisco and the Coalition for Fairness to Foxes in the Hen House," Joseph Hosteny (of Niro, Scavone) identifies Rick Frenkel's immediate superior as Mallun Yen, who previously was Cisco's director of intellectual property, and who currently is Cisco's VP of IP or Cisco Systems Inc.'s chief patent counsel (depending on which source one reads). One may find an account of Yen, titled Cisco's Top Patent Lawyer in Rarefied Air, by Brenda Sandburg. The article noted:

Barr [Yen's predecessor at Cisco] had worked with Yen at Weil, Gotshal & Manges, where Barr was a partner and Yen an associate. Yen left Weil Gotshal in 2000 and spent two years at Calient Networks Inc., an optical networking startup, where she became general counsel. Barr hired her at Cisco in 2002. A 1995 graduate of Boalt, Yen also clerked for U.S. District Judge Ronald Whyte of San Jose, Calif., for two years.

Although Sandburg's title refers to Yen as a "patent lawyer," there is no evidence that Yen is a registered patent attorney.

Michelle Lee, the head of patents and patent strategy at Google Inc. and quoted in the Sandburg article, became registered
attorney 40695 in 1997. Frenkel is 47578.

An upcoming talk by Yen on 16 April 2008 is described:

Companies are facing an ever-increasing amount of patent assertion. Most organizations have limited resources for addressing this issue other than issuing the standard "we don’t infringe and the patent is invalid" statements. This session will address the strategies that can be employed for creating a best in class defensive position including product clearance programs, preemptive patent acquisition and cross-licensing, prior art libraries, and counter assertion.

Mark Lemley, another frequently quoted attorney on IP who is not a registered patent attorney, graduated from Boalt in 1991.

Lemley was recently quoted:

“It’s rare that you’ve got a major breakthrough that wasn’t developed by multiple people at about the same time,” said Mark Lemley, professor of intellectual property at Stanford Law School.

Recall some of Lemley's writing -->

Mark A. Lemley, Patenting Nanotechnology, 58 Stan. L. Rev. 601, 611-612 (2005):

The integrated circuit was itself an improvement in the field of computing, a way of building transistors (an invention discussed above) [p. 612] directly into a computer chip by using charged silicon, a semiconductor. The invention opened up not just computing but also calculators, cell phones, and a host of other portable electronic devices. But because two different inventors working independently developed the integrated circuit at about the same time (1971), the patents were put into interference. Gary Boone was ultimately declared the winner, but not until 1999, twenty-eight years after the first patent application was filed.

While IPBiz does not think one has to be a registered patent attorney to make comments about patent reform, when one
isn't a patent attorney, one really needs to show some knowledge of the patent system to be credible. Lemley's "Ending Abuse" showed Lemley does not understand much about continuations (and now we have the decision in Tafas v. Dudas). Lemley's "Patenting Nanotechnology" illustrates Lemley doesn't know jack about technology.

Separately, note that Joe Mullin wrote in the priorartblog on 25 Feb:

Today Frenkel had no comment beyond his post. Cisco says nobody at the company knew about his double identity beyond Mallun Yen, Frenkel’s boss and the company’s VP of Intellectual Property.

Also, Niraj Chokshi-->

[Frenkel] also wrote that the only superior at Cisco who knew of the blog was his direct manager, identified by Noh as Mallun Yen, vice president of the company's intellectual property group. Noh said that Cisco had no involvement in the blog and employees are allowed to maintain personal blogs provided they don't violate the company's code of business conduct.


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