Patent Quality

InterDigital patent in SISVEL AV1 pool appears not essential

As part of an ongoing series examining the patent holders and pools erroneously designating patents as essential, we highlight U.S. Patent 9,277,243 titled “Methods and apparatus for in-loop de-artifact filtering.” This patent is owned by InterDigital VC Holdings, Inc. InterDigital has designated the ’243 patent as essential to the AV1 standard as a part of SISVEL’s AV1 Patent Pool. See AV1 Patent List, AV1 Family AV1-056, available at https://www.sisvel.com/images/documents/Video-Coding-Platform/PatentList_AV1.pdf.

InterDigital’s ’243 Patent should not be considered to be essential to the AV1 standard. The ’243 Patent contains a single claim directed to in-loop artifact filtering, and in particular, two filters for successively performing in-loop filtering:  (1) “a deblocking filter for performing a first pass to reduce blocking artifacts” and (2) “an adaptive sparse de-noising filter for performing a second pass to reduce noise.” ’243 Patent, claim 1.

The AV1 standard uses a de-ringing filter called CDEF as its second filter, not the ’243 Patent’s claimed “de-noising filter.” In detail, the AV1 standard employs a distinct process known as the CDEF (constrained directional enhancement filter) process. According to the AV1 standard, the “purpose of the CDEF is to perform deringing….” See AV1, § 7.15 (emphasis added). Contemporaneous research confirms the CDEF works to reduce ringing artifacts. See Midtskogen et al., “The AV1 Constrained Directional Enhancement Filter (CDEF),” arXiv:1602.05975 [cs.MM], Feb. 18, 2016, p. 1, available at https://doi.org/10.48550/arXiv.1602.05975.

Although InterDigital cites the CDEF provisions of the AV1 standard as part of its claims for essentiality, the applicant expressly disclaimed de-ringing filters from the scope of its claims. The ’243 Patent explicitly distinguishes between de-ringing filters (e.g., CDEF) and its claimed “de-noising” filters, listing them as separate filtering options: “At least one of the filters includes, for example, a deblocking filter, a de-ringing filter, a de-noising filter…” ’243 Patent, 10:2-5. The difference was confirmed by the applicant during prosecution of the ’243 Patent’s application, U.S. Patent Application No. 12/312,386, in which the applicant stated that an applied reference’s “deringing filtering does not disclose or suggest a sparse de-noising filter for performing a second pass to reduce noise,” which is similarly included in the ’243 Patent’s claims. See Prosecution History of U.S. Patent Application 12/312,386, Response to Office Action filed June 3, 2014, p. 10 (italics in original).

Moreover, AV1 standard’s use of (1) a deblocking filter followed by (2) de-ringing filter was already well known in the art prior to the ’243 Patent. For example, U.S. Patent 7,738,563 to Pelc, filed over two years prior to the ’243 Patent’s earliest priority date, disclosed a “filter 430 [that] applied [1] deblocking filtering operations and then [2] de-ringing filtering operations.” Pelc ‘563, 5:49-52. Similarly, U.S. Patent 8,537,903 to Lim, filed over a year prior to the ’243 Patent’s earliest priority date, disclosed a decoding system with “[1] a de-blocking system configured to receive decoded video data and decoding information and remove blocking artifacts from the decoded video data, and [2] a de-ringing system configured to remove ringing artifacts from the de-blocked video data.” Lim ‘903, Abstract. Again, this is similar to the operations described in the AV1 standard and distinct from a second-stage “adaptive sparse de-noising filter” in the ’243 Patent.

Thus, the ’243 Patent does not appear to be essential to the AV1 standard even though it has been declared essential and actively licensed as being so. The public would benefit from appropriate scrutiny of patent pools that allegedly cover critical technical standards.

The Adoption and Benefits of Royalty-Free Licensing

As part of the efforts of Unified Edge, John Jarosz and his team of economists at the Analysis Group have published a paper on the benefits of royalty-free licensing. Read the abstract below and follow the link to download the paper.

Abstract

Much licensing of patented technology is royalty-bearing, allowing innovators to be compensated for their investments in researching, developing, and then in commercializing the resulting products.

However, over the last couple of decades, standards-based technologies have expanded, in part, due to the increased need for device interoperability, communication, and replacement. Though some of the licensing of patents covering such technologies bears royalties, royalty-free licensing of standards-based technology has grown increasingly common. Indeed, perhaps only a small percentage of today’s widely adopted standards-based technologies are subject to royalty payments. Furthermore, there has been a proliferation of non-standards-based patented technologies and protocols that companies offer on a royalty-free basis (e.g., Adobe PDF and Thunderbolt, discussed further below).

The advantages of royalty-free licensing of technology are obvious for competition broadly and can be numerous for both consumers and companies, specifically, those who benefit from, inter alia, reduced costs and lowered barriers to market entry. But royalty-free licensing can be appealing to innovators as well, as it can result in faster adoption, increased usage, and further innovations that incorporate the standardized technologies. Using some well-known examples, this paper examines the widespread adoption of, motivations behind, and benefits associated with royalty-free licensing in standards-based settings, and even, in some cases, outside of a formal standard-setting organization (“SSO”). Though royalty-free licensing has many perceived and actual advantages, it is not the optimal route for all technology licensing. It can be and is, of course, optimal in many settings.

Open source rules engine for patent prosecution, PATCEPTA, kick off on Feb 9

Unified Patents and the Linux Foundation Announce Patcepta

Original article from THE LINUX FOUNDATION | 30 NOVEMBER 2022

Patcepta is a new open source rules engine for improving patent prosecution and management through automation.  Any interested party can join to help foster a new generation of IP management practices using open source software.

Unified Patents decided to work with The Linux Foundation in making the Patcepta project open source to remove critical barriers to entry that attorneys and entrepreneurs face in managing their patent portfolio. This project is the first of its kind in that it provides an open, understandable, and auditable ruleset and toolkit for enabling more efficient and innovative processes and tools for managing IP portfolios.

“We are excited to see this fundamental capability become an open source project for collaboration and shared dependency'' said Mike Dolan, Senior Vice President of Projects at the Linux Foundation. “Jurisdiction rules and a common rules engine are shared challenges faced by in-house and outside counsel trying to manage patent portfolios - a perfect opportunity to develop collaboratively and maintain in an open source community.”

“A key barrier to entry was made very clear in the beginning around docketing rules, which just in the US are over 500, while only about 80 represent almost 80% of the ones used,” said Shawn Ambwani, Co-Founder and COO of Unified Patents. “The number of rules is one of the reasons why the market is so fragmented and why the software is mainly provided as a loss leader to lock in services contracts for paying patent annuities. Another issue IP managers face is concerns associated with bad rules or missing a deadline – now the rules data and code will be transparent and open for any IP manager to see or update.  Finally, integrating such docketing software into larger processes and accounting systems makes switching costs high.  

Software providers, law firms, and even some corporations develop their code and maintain it as the rules change, which can be expensive and repetitive. 

After talking to The Linux Foundation (TLF) and a few members to gauge interest, we decided a potential course would be to help make the rules / code open source so anyone can build on top of it. In addition, having open source allows for collaboration and updates and, most importantly, allows everyone to see the code to get confidence that it is safe to rely upon.

Ultimately, the goal is to foster better and more innovative patent management processes by eliminating a major barrier.  

Patcepta is now an official project hosted by the Linux Foundation. You can view the project here or go to www.patcepta.org. It is the first legal industry codebase, open rules data, and project ever hosted by the foundation. We hope it will not only complete publishing all the United States rules and code, but there are opportunities for the open source community to add international jurisdictions and perhaps an interface down the road.”

We hope all parties interested in making patent and IP management easier evaluate and contribute to this project and help remove docketing rules as a barrier to managing their portfolio.

An initial kickoff meeting is scheduled for February 9th, 10a PT, so participants can join and help in moving this project forward or getting access to the repository. Please contact info@patcepta.org for any questions.

Patcepta Kick-Off Call - January 26

Patcepta is a new open source rules engine for improving patent prosecution and management through automation. As the first of its kind, Patcepta’s goal is to provide an open, understandable, and auditable ruleset and toolkit for enabling more efficient and innovative processes and tools for managing IP portfolios.

Patcepta is hosted by Unified Patents and The Linux Foundation. Any interested party can join to help foster a new generation of IP management practices using open source software. The rules and code are open source which allows for worldwide collaboration and builds trust and confidence in those who use it.

Patcepta will hold a Kick-Off Call on January 26, 2023 at 1:30PM PST.

Invitation Details and Link Below:

Patcepta Kick Off Meeting Thursday, January 26 · 1:30 – 2:30pm

Improving Patent Quality by Changing the USPTO’s RCE and Continuation Practices

The U.S. patent system affects the work of every company and individual in the country, but can be highly technical and difficult to understand. Unified Patents is proud to celebrate Patent Quality Week - June 6-10, 2022 with a few blog posts on why patents matter and educate others about the effects of low-quality patents that can create barriers to innovation and competition.

By: Sean Keller

Background

            On January 3, 2006, the United States Patent and Trademark Office (“USPTO”) published two new rules in the Federal Register to reduce the number of continuation applications and narrow the scope of patent examinations. The new rules would have required second or subsequent continuation applications to “be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted.” [1] Additionally, the new rules would have required the initial examination to focus on claims the applicant designates as “representative claims.” [2] Although the proposed rules were met with overwhelmingly negative comments, the USPTO nevertheless published the Final Rules on August 21, 2007.

            GlaxoSmithKline (“GSK”), a pharmaceutical company, joined Tafas, an inventor, in suing the USPTO to prevent the proposed rules from being implemented. [3] The day before the rules were set to take effect, Judge Cacheris of the District Court for the Eastern District of Virginia granted GSK's motion for a preliminary injunction. Judge Cacheris later ruled in favor of Tafas and GSK, finding the rules exceeded the USPTO’s statutory authority. [4]

            On March 20, 2009, the Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the case to the Eastern District of Virginia. [5] After the Federal Circuit decided to vacate its March 20 opinion, reinstate the appeal, and rehear the appeal en banc, the Director of the PTO signed a new Final Rule rescinding the controversial continuation rules. [6]

            Following the USPTO’s unsuccessful attempt to reduce the number of continuations and RCEs, the USPTO has declined to issue rules or make any internal changes that would change the status quo. In March 2020, 575,797 patent applications were unexamined. [7] As of March 2022, 672,514 patent applications were unexamined. [8] The number of unexamined applications will continue to increase unless the problems plaguing continuations and RCEs are addressed.

Proposed Changes

            One commentator has suggested the USPTO should replace its current task-based system that provides credits only for certain examining activities with an hours-based system that allocates credit for all examining activities. [9] Under the current system, patent examiners receive two credits, or counts, for each request for continued examination (“RCE”): one count for taking no action and one for a first office action on the merits. At the end of each two-week pay period, the USPTO adds up the number of disposals (two counts per disposal) the examiner received, multiplies that number by the period of time allocated to that examiner per disposal, and then divides that number by the total number of hours worked. Because most of the substantive examination research is completed during the initial prosecution, a patent examiner can obtain six to twenty-five hours of credit for about 30 minutes of work if the changes in the RCE are minor. Patent examiners, therefore, can reduce their workload and maximize the number of credits earned during each two-week pay period by encouraging applicants to file RCEs. If, however, the USPTO adopted an hours-based system that awarded credit for actions like second action non-final rejections, final rejections, restriction requirements, interviews, consideration of IDS filings, etc., examiners would not be incentivized to encourage applicants to file RCEs.

            Other commentators have suggested that the USPTO should charge a higher fee for filing RCEs and continuations, limit the number of RCEs and continuations applicants can file, or limit the time applicants have to file RCEs and continuations. The European Patent Office’s (“EPO”) divisional practice provides a framework for possible changes to the USPTO’s RCE and continuation practices. The EPO charges a much higher filing fee for divisional applications than the USPTO. EPO applicants also have 24 months from the first Examination Report or the request for restriction to file a divisional application whereas USPTO divisional applications merely need to be co-pending with the parent application. Furthermore, the number of EPO divisional applications is limited by the number of separate, identifiable inventions disclosed in an original patent application while there are no limits on the number of USPTO divisional applications. By adopting measures from the EPO’s divisional practice, the USPTO could discourage applicants from filing RCEs and continuations to delay prosecution and instead encourage applicants to file RCEs and continuations to further prosecution.

[1] Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, 71 Fed. Reg. 48 (Jan. 3, 2006).

[2] Changes to Practice for the Examination of Claims in Patent Applications, 71 Fed. Reg. 61 (Jan. 3, 2006).

[3] Tafas v. Dudas, 511 F. Supp. 2d 652, 658, 86 U.S.P.Q.2d (BNA) 1548, 1552 (E.D. Va. 2007).

[4] Tafas v. Dudas, 541 F. Supp. 2d 805, 817, 86 U.S.P.Q.2d (BNA) 1623, 1632 (E.D. Va. 2008).

[5] Tafas v. Doll, 559 F.3d 1345, 1364, 90 U.S.P.Q.2d (BNA) 1129, 1143 (Fed. Cir. 2009).

[6] Press Release, U.S. Patent & Trademark Office, USPTO Rescinds Controversial Patent Regulations Package Proposed by Previous Administration (Oct. 8, 2009) (on file with author).

[7] Patents Production, Unexamined Inventory and Filings Data March 2022, U.S. Pat. & Trademark Off., https://www.uspto.gov/dashboard/patents/production-unexamined-filing.html (last visited May 10, 2022).

[8] Id.

[9] Patrick A. Doody, How to Eliminate the Backlog at the Patent Office, 37 AIPLA Q.J. 395, 399 (2009).