Category: Amberblog

The US Supreme Court has famously just invalidated US5970479, filed by Alice Corporation for Methods and apparatus relating to the formulation and trading of risk management contracts, or a method of managing counter party risk during exchange of contract. The reason for this judgement can be summarised by the following extract from the judgement:

An instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer is not “enough” to transform the abstract idea into a patent-eligible invention

The judgement has been reviewed by many others, with a common theme in the commentary being that the judgement failed to clearly define what an abstract idea is. Another theme is that this ruling is thought to have left the door open for software inventions, although of note the word ‘software’ was not mentioned once in the entire judgement.

Here are Ambercite we might leave the detailed intepretation of US Supreme Court judgments to others better qualified. But it is worth asking the question – who might be most affected by this judgement?

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One way of answering this question is by asking – which patents are most similar to the Alice judgement?

Ambercite believes that similarity can be assessed to a good degree of reliability by considering overlapping citation between patents. This is the principle behind the similarity filter found in our Amberscope web app – a case study for this similarity filter is found here. Similar principles can even be used to find similar patents not directly connected to the patent in question, and this is the principle behind the Automated Patent Searches now available from Amberscope

One of these searches. a Similar Patent Finder, lists up to 50 earlier and 50 later patents similar to your patent of interest, including similar patents not directly connected to your patent of interest.

At a case study of this automated search, we have looked for similar patents to the Alice patent. These results of the Automated Search can be downloaded here, or by clicking on the image below:

So what does a ‘Similar Patent Finder’ patent search tell us about which companies might be directly affected by the Alice judgement?

1) Altogether this patent has 287 forward citations, with 67 of these filed in the last 5 years. There has been a lot of follow up activity in this area.

2) The most common owners of forward citation patents include

• JP Morgan (23 forward citations)
• Chicago Board Exhange Options (14)
• Weather Risk Solutions LLC  (12)
• BCG Partners (10)

3a) The owners of the 20 most similar backward citations include

• World Energy Exchange
• Merrill Lynch (3 patents)
• Reuters (3 patents)
• Citybank 
• College Savings Bank (2 patents)

The most predicted to be similar patent was US4903201, for an Automated futures trading exchange. While now expired, asking whether claim this would fall foul of the Alice judgement could be a good question for law students. While claim 1 does refer to the use of the computer in a general way, claim 1 also refers to criteria for system for detecting illegal trade practices or patterns.

All of these patents, like many others listed in this search resuults, all appear to be related to securties trading.

3b) The owners of the most similar forward citations include

• Alice Corporation (10 patents)
• Longitude Inc
• Blackbird Holdings Limited (2)
• International Securities Exhange (3)
• Weather Risk Solutions (3)

The most predicted to be similar patent not owned by Alice Corporation was US632121, for Financial products having a demand-based, adjustable return, and trading. Claim 1 of this patent covers a method for conducting demand-based trading – whether this would be regarded as an ‘abstract idea’ similar to ‘intermediated settlement’ in the light of the Alice judgement could be a very interesting question.

4a) The owners of the potentially similar earlier patents, not cited by the examiner or applicant, include some larger well known companies as well as some smaller companies.

4b) The owners of the potentially later earlier patents, not cited by the examiner or applicant, include, besides some earlier mentioned companies:

• Chicago Mercentile Exchange (3)
• Canter Fitzgerald (2)
• Microsoft Corporation
• HSX, Inc
• Optimark Technologies Inc. (6)
• ITG
• Boston Options Exchange Group

Of course, we would all recognise that whether the patents listed in this search are actually at risk of invalidation in the light of the Alice judgement is a complex decision depending on the details of the claims for these patents and other contributing factors. 

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Other parties that might be affected

Almost all of the patents listed are in the area of securties trading or related technlogies. This patent has been assigned a CPC patent code of G06Q 40/02, G06Q 40/04, G06Q 40/08  all which relate to data processing in banking or similar. A search on Espacenet for US patents that fell into this classfication has identified 26,270 such patents in total, so there might be a lot more patents affected by this ruling.

Many other patent owners in other business related areas besides security trading might also be at risk from this judgement, athough this will depend on how later courts choose to interpret the Alice ruling. This will no doubt play out over time, but it is safe to say that many of the patent owners that could be at risk are those with similar patents to the Alice patent.

Other uses for ‘Similar Patent Finder’ automated patent searches

Besides identifying companies that also might be affected by adverse judgements on patentability, these searches can be used for:

• To understand the general area around a patent of interest. This patent of interest could be
  • a patent similar to an invention you considering whether to patent, or how to patent
  • a patent belonging to your organisation or your client
  • a patent belonging to a competitor
• To help invalidate a patent. You might have searched and found a priar art patent which is very relevant – but does not fully disclose the patent you are trying to invalidate. Nonetheless, some of the patents close to this may be the knockout patent you are looking
• To strengthen your legal position around a patent of interest. This patent might be your patent, or a competitors patents. By identifying the most similar patents, you might be able to license or acquire these to strenghten your legal position. 

It should also be noted that AmberScope can also be effectively used for similar seaches. We do recognise though  that some users prefer the option of an automated patent search, and the Similar Patent Finder has been developed for this reason.

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Other patents of interest to yourself or your clients?

Want to understand the most similar reports to a patent you are interested in? Our Similar Patent Finder searches are available from just US$300 – further details are found here.

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Back in September 2013 we showed how the tools available in AmberScope can assist with this type of search, with a case study based on a lowly cited patent owned by Cornell University for a “Flavourful Low Cheese‘, being US6808735. 

Since then we have developed our Automated Reports, which include a licensee search report targeted at finding later patents that are similar to a patent of interest – but where existing citation links may not be published.

With the release of these reports, it is now time to return to the above case study. By returning to the same patents, we can directly compare the Automated Search Reports to what is possible in AmberScope.

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Further details of the Automated Search Report service are found here. Of the available reports, we have chosen the “Licensee Finder” report, which is available for just $300 and a one to two day turnaround. The resulting report can be downloaded here, or by selecting the image below.

So what can we learn from this report?

1) There are just three forward citation patents – and two of them are filed by Cornell University

These apatents are, ranked in order of predicted similarity to US6808735:

• Cornell University US20080233236, Simple mozzarella cheese-making methods, and US20080226767, Uniformly moist cheese
• Schreiber Foods

So a more traditional patent citation analysis might presume that there is one interested party, namely Schrieber Foods. 

2) But there are a good number of later patents covering similar areas – even if these do not directly cited the Cornell cheese patent

The Licensee Finder report has identified these as being owned by:

• Leprino Foods (13 patents)
• Kraft Foods (3 patents)
• New Zealand Dairy Board/[closely related] Fonterra  (2 patents)
• Merchant Schmidt Incorporated
• Spezialitäten-Käserei De Lucia 
• Frito Lay
• Tetra Lavel
• Allied Blending and Ingredient
• Spezialitäten-Käserei De Lucia 
• Merchant Schmidt Incorporated
• Arla Foods
• Bel Fromageries 
• Morinaga Milk Industry Co Ltd

This increases the number of potential licensing candidates up from 1 using conventional citation analysis up to 14 when using our Automated Reports.

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Comparison to finding licensing candidates on Amberscope

The earlier blog, which applied a variety of search techniques within Amberscope,  had identified the following additional licensing candidates (when compared to conventional citation searching):

• Leprino Foods
• Land O’Lakes Inc, but this finding was based on an earlier filed patent – and so this information may be out of date.
• Kraft Foods
• Foremost Farms
• Nestle
• Cumberland Packing Company.

So the Automated Search Reports produce a slightly different set of results to what we we found on Amberscope. But the difference with the Automated Report is that:

• The process is completely automated, so taking away the reliance of the operator when using AmberScope
• The algorithms in the Automated Reports are highly tuned to find the licensees filing the most similar patents to the patent of interest – not just patents in the area.

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Do you have a lowly cited patent(s) you are looking to find commercial opportunities for? Or even highly cited patent?  (our algorithms can easily deal with both)

If so, please send us the details of this patent(s) and within just one or two days you will have a similar list of potential licensing candidates for you to consider.

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Ambercite has previously covered both a prior art and licensee search for the patents behind the 1 billion patent judgement against Marvell, recently raised by Judge Nora Fischer to $1.54 billion. No doubt patent owners all over the world have looked at their patent portfolio and asked ‘do I have anything similar?’

To answer these sorts of questions, Ambercite has recently developed a portfolio review service. Advanced citation analytics are used to predict the relative importance of all of the patents in a portfolio, allowing rapid screening of what can be thousands of patents. To demonstrate the value of this review, we might go back to the Carnegie Mellon portfolio and ask the following two questions:

• Would these advanced analytics suggest that the two patents successfully asserted against Marvell be worth investigating?
• What other patents do Carnegie Mellon have? 

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A portfolio report for the Carnegie Mellon is found here (or click on the image below).

Note that the report has two tabs:

• A tab listing all patents, sorted in order of Amberscore, our predictor of patent importance
• A tab only listing patents filed after 1995, again sorted in order of importance.  In this second tab, the two asserted patents are colour coded in yellow.

You will note a number of fields. Some of these are self-explanatory, and some require some explanation. Some of these fields are listed below, along with the values of these for the two Carnegie Mellon patents.

This table suggests that it is not just the number of citations that matters, but also whom the citations are to. This model in turn allows us to review the rest of the Carnegie Mellon patents in the same light, namely looking for patents with:

• Higher than average Amberscore values
• Dominant in their field, i.e high Local Dominance values
• Filed after 1995, so that there is some remaining patent left
• Interesting list of leading owners of forward citation patents, maybe with a good number of forward citation patents from leading owners
• Maybe the closest forward citation patent be to an interesting patent, or a patent owned by an interesting owner
• And making some obvious checks that there is remaining life left in the patent and that it has not been abandoned.

These patents might have a greater than average chance of being licensed.

Or in other words, you should judge a patent not only by its numbers, but by its ‘friends’ as well.

From the tab of post 1995 patents included with the Carnegie Mellon spreadsheet , we can pick some patents that meet these criteria:

Of course, none of this should be taken as a suggestion that any of the companies in the above table infringes any of the patents listed. Instead this is simply a demonstration of a systematic process that can be used to help identify patents in a large portfolio that may be worth investigating further.

And this is a simple and cost effective process. Thanks to our large and existing database of citation connections, Ambercite can produce a similar table to the Carnegie Mellon results for prices starting from US$500 for 200 patents, and we aim to produce this in less than 24 hours. Larger portfolios or multiple reports can attract further discounts.

Like to know more? Please contact us you would like one of these reports for a portfolio you might be managing or are interested in.

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On another note, frequent readers might note that the Ambercite website has just had a big makeover. We hope that the new website is more user-friendly, and would be interested to hear any feedback that you have.

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19 June 2014 update – Portfolio review of ~300 Microsoft “Android” patents

In a more recent blog, we apply a similar portfolio analysis to almost 300 patents licensed out to Android phone and tablet devices by Microsoft  – with this portfolio thought to earn Microsoft around $2 billion per annum.

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