Patent Riffs and Links for 10-23-17

Hague Convention May Help Foreign Defendants in IPR | LEXOLOGY
“Another benefit of tolling the start of the one-year bar by insisting on service under the Hague Convention is that the defendant may have enough time to prepare a follow-on petition after the PTAB’s institution decision. For example, the defendant may have time to prepare a second petition if the first petition was denied based on a procedural defect. The extra time to prepare and file follow-up petitions also may also be valuable for defendants challenging covered business method patents. A CBM petition is only granted for patents that claim a method or apparatus related to a financial product or service and not directed to a technological innovation.21 When facing the one-year bar restriction, some defendants may find the risk of noninstitution of a CBM petition too threatening to attempt if the patent is not clearly eligible for CBM review, since there normally is insufficient time for a follow-on IPR petition when the defendant waives service of process. By tolling the start of the one-year bar using the Hague Convention, however, the defendant may file the CBM petition knowing that, if its institution is denied on the grounds of CBM eligibility, the defendant can still have sufficient time to rework and refile the petition as an IPR petition”

Nokia disposes of huge US portfolio as company continues to streamline its patent arsenal | LEXOLOGY
Interesting business model: ”Ever since it started to re-order its operations including the sale of its devices business to Microsoft, the Finnish company has been a relatively active seller of patents including to the likes of Acacia and Conversant. In a tough assertion market those assets have been monetised with varying degrees of success, but it’s interesting that with this latest transfer the giant telco has opted to work with one entity rather than do a series of smaller deals. The portfolio currently being sold by AQUA has been made available to buy in whole or in part.

We don’t know what Provenance’s intentions are in terms of monetising the assets…Update: IAM can confirm that Provenance Asset Group LLC has been formed by Dan McCurdy, Tim Lynch, and Laura Quatela. The company intends to provide operating companies with rights to litigation-grade patents for defensive purposes. Its business model does not include patent assertion. Initially, assets will be drawn from the portfolio it has acquired from Nokia while over time, Provenance will supplement the collection with additional patents it acquires from other IP owners. The IAM blog will have more on this story as it develops.”

Perspectives on the PTAB Newsletter | E.SKGF
”Congress granted the Board broad discretionary power to deny institution of AIA proceedings under 35 U.S.C. §325(d) – denial is discretionary if Petitioner uses “the same or substantially the same prior art or arguments previously presented to the Office.” Though infrequently given as a reason for denial for the first few years following passage of the AIA, an expanded PTAB panel recently gave §325(d) sharper teeth against follow-on petitions.[i] More specifically, the expanded PTAB panel adopted a seven-factor analysis[ii] to determine whether a follow-on petition should be instituted…Given the rise of §325(d) as a reason for non-institution in the last year, it is becoming even more imperative to know how to select and use the best prior art at the outset. Yet our experience and research indicates that each PTAB panel (and each PTAB Judge) seems to apply a different threshold when determining whether to invoke their discretionary §325(d) power. So finding prior art that offers the greatest likelihood of success may be the most important decision to be made by Petitioners. But what prior art or arguments are (or are not) the same or substantially the same as those previously presented to the Office? The answer: it depends.”

Facebook tests splitting News Feed into two | VENTUREBEAT
Much ado…? ”The test, which is occurring in six smaller countries, now offers two user feeds, according to a statement from the company: one feed focused on friends and family and a second dedicated to the pages that the customer has liked…The change could force those who run pages, everyone from news outlets to musicians to sports teams, to pay to run advertisements if they want to be seen in the feed that is for friends and family…
The test is taking place in Bolivia, Cambodia, Guatemala, Serbia, Slovakia and Sri Lanka, and it will likely go on for months, Adam Mosseri, the Facebook executive in charge of the News Feed, said in a blog post.”

Divided Infringement and Subject-Matter Eligibility: Are Mixed Diagnostic and Therapeutic Method Claims Viable and Valuable? | LEXOLOGY
“The Akamai court set a test for directing and controlling. A directing or controlling party must condition participation in an activity or receipt of a benefit on the second party’s performance of a patented method step. Additionally, the party must establish the manner or timing of performing the patented method step…Earlier this year the Federal Circuit considered a case of divided infringement in which physicians were found to have met the test of “direct or control.” Eli Lilly Co. v. Teva Parenteral Medicines, 845 F.3d 1357 (Fed. Cir. 2017). The patent claim required administering three substances, two of which the physician administers to patients and one of which patients self-administer. The court found that the physicians’ prescriptions were the means of direction or control for patients to administer a substance to themselves. Thus the court found a direct infringer: individual physicians…As a practical matter, however, rather than suing thousands of individual physicians, the patentee, Eli Lilly, sued Teva for inducing physicians to directly infringe”

Snapchat Reportedly Stuck With ‘Hundreds of Thousands’ of Unsold Spectacles – Slashdot | M.SLASHDOT.ORG
CEO ”Spiegel has tried to paint Spectacles as both relatively successful and merely an early start in hardware. He claims they outsold Apple’s first iPod — a comparison clearly meant to suggest they could eventually have enormous success. But Spiegel also said hardware would really only be important to Snap a decade from now.”