Patent Law in the Age of IoT The Landscape Has Shifted. Are You Prepared?

1. Patent Law in the Age of IoTThe Landscape Has Shifted. Are You Prepared? Jeffrey A. Miller, Esq. Jeffrey.a.miller.esq@gmail.com 1

2. Topics Significant Changes In The America Invents Act (AIA) New Strategies Under The AIA Significant Infringement Issues for IoT 2

3. The America Invents Act • The AIA (The America Invent Act) • Enacted on Sept. 16, 2011 came into full effect on March 16, 2013 • Broadly Speaking the AIA Did 2 Things: • First, it transitioned the United States from a 1st to invent to 1st to file • Part of ongoing effort to harmonize the U.S. laws with those of the rest of the world that began in the 1995 with the 20 year patent term measured from filing date as opposed to the 17 year patent term from the date of grant, and the changes to Proving Invention Abroad under 35 USC 104so as to allow a patent applicant the right to prove the date of invention (i.e., conception and reduction to practice in an interference proceeding) using activities that occurred outside the United States • It continued in 2000 with the 18 month publication • And now, as of March 16, 2013, with the first to file system 3

4. The America Invents Act • The second thing the AIA did is that it created the new Post Grant Proceedings: • IPRs or Inter Partes Review • PGRs or Post Grant Reviews, and • CBMs – or Covered Business Methods • Derivation Proceedings; and • Supplemental examination • Available to the patent owner to correct or cure warts e.g., citation of additional prior art, unenforceability issues, etc. 4

5. First To File • The AIA creates a two tiered system: • First to invent claims (old law): • A claim with an effective filing date on or before March 16, 2013, or • A claim in a patent application which at any time claimed U.S. priority to such an application • First to file claims (new law): • For all claims with an effective filing date after March 16, 2013, a first to file system will apply • This is really a first to publically disclose/first to file system 5

6. First To File – Significant Change In Definition of Prior Art • §102(a)(1): Before the effective filing date, the claimed invention was: • Patented • Described in a printed publication • In public use • On sale, or • Otherwise “available to the public” • These activities are not limited to the U.S. They could have happened anywhere in the world. • §102(a)(2): The claimed invention was described in an issued or published U.S. application, which: • Names another inventor; • has an effective filing date prior to the application’s effective filing date; and • is not commonly owned • The statute defines the “effective filing date” as the earliest U.S. or foreign (i.e., PCT or foreign national) application to which the application is entitled priority 6

7. First To File – Significant Change In Definition of Prior Art • Any disclosures before the Priority Date are prior art, with three exceptions: • An inventor’s (or joint inventor’s) own public disclosure and/or sales/public uses within 1 year before the Priority Date; • Third party disclosures within 1 year before the Priority Date ONLY IF the inventor (or a joint inventor) publicly disclosed the invention before the third party disclosure; and • Third party disclosures within 1 year before the Priority Date IF that third party disclosure was obtained directly or indirectly from the inventor Priority Date 1 year before Priority Date 7

8. Grace Period – Effectively Gone • The Act includes a 12-month grace period prior to the “effective filing date” (i.e., the earliest priority date) for “disclosure” by an inventor (or a joint inventor) • “Disclosure” during the 12-month grace period by another party who did not obtain the subject matter from the inventor will not prevent the inventor from obtaining a patent ONLY IFthe inventor made a “disclosure” of the subject matter first • Note (and it’s a big one): New law is not clear as to whether a third party “on-sale” or “public use” event will be treated as a “disclosure” for grace period purposes (see new § 102(b)(1)). 8

9. Grace Period – Effectively Gone • The Act includes a 12-month grace period prior to the “effective filing date” (i.e., the earliest priority date) for “disclosure” by an inventor (or a joint inventor) • “Disclosure” during the 12-month grace period by another party who did not obtain the subject matter from the inventor will not prevent the inventor from obtaining a patent ONLY IFthe inventor made a “disclosure” of the subject matter first • Note (and it’s a big one): New law is not clear as to whether a third party “on-sale” or “public use” event will be treated as a “disclosure” for grace period purposes (see new § 102(b)(1)). 9

10. Takeaways for IoT • You are in a race to the Patent Office Complete report available at: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informatics-internet.pdf 10

11. Takeaways for IoT Complete report available at: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informatics-internet.pdf 11

12. Takeaways for IoT Complete report available at: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informatics-internet.pdf 12

13. Takeaways for IoT Complete report available at: https://www.gov.uk/government/uploads/system/uploads/attachment_data/file/343879/informatics-internet.pdf 13

14. Post Grant Review • Ex parte Reexamination • Supplemental Examination • Post Grant Review • Inter partes Review • Review of Business Method Patents 14

15. Inter Partes Review (IPR) • Who Can File: With Rare Exceptions, Anyone Except Patent Owner • Grounds: Anticipation and Obviousness • With What: Printed Publications Only • Burden Of Proof: Preponderance Of The Evidence • Lower Than District Court Clear And Convincing Standard • But: Cannot raise any ground that was raised or reasonably could have been raised w/r/t claim subject to a final written decision • Known To Lawyers As “Estoppel” 15

16. Inter Partes Review (IPR) Source: http://www.uspto.gov/sites/default/files/documents/012915_aia_stat_graph.pdf 16

17. Inter Partes Review (IPR) Source: http://www.uspto.gov/sites/default/files/documents/012915_aia_stat_graph.pdf 17

18. Inter Partes Review (IPR) Source: http://www.uspto.gov/sites/default/files/documents/012915_aia_stat_graph.pdf 18

19. Takeaways for IoT • There are now more cost-effective defenses to infringement claims • IPRs level playing field for startups and smaller companies • However, this works both ways! • Your patents may be more vulnerable to validity attack may not give you the exclusivity you want 19

20. Divided Infringement – A Real Issue For IoT • IoT involves devices with interoperability with other connected devices • Patents will be directed to this interoperability • Claims of patents may need to recite use of multiple devices, some of which are not supplied by same suppliers or are operated by separate users • This can lead to what is known as “Divided Infringement” 20

21. Divided Infringement – A Real Issue For IoT • 35 U.S. Code § 271 - Infringement of patent (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. (b) Whoever actively induces infringement of a patent shall be liable as an infringer. (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. 21

22. Divided Infringement – A Real Issue For IoT • In Limelight v. Akamai, the Supreme Court held that there must be a single actor performing all the elements of a claim before a party can be liable for indirect infringement • At least for now, all method steps in the claim must be performed under the “direction or control” of the alleged inducer • If method steps of claim performed by third parties, then likely no infringement • Requires careful patent drafting and selection for enforcement 22

23. Thank You