1. Patent Engineering Berkeley-Lavian Week 2 1 Patent Engineering IEOR 190G CET: Center for Entrepreneurship &Technology Dr. Tal Lavian (408) 209-9112 Tlavian@cs.berkeley.edu 225A Bechtel Mondays 4:00-6:00

2. Patent Innovations- Berkeley-Lavian 2nd week 2 Some administrations Sign up for your presentation date 3 units class –All students participate, 4-6 students work on the project –Registration over at Telebear – same registration as for the 2 units Wednesday Oct 8 th – instead of Monday Oct 6 th Taking the deposition – at the Law School Subject line on your emails to me: “IEOR 190G” – your subject line Field Trip to Court at SF Dyslexia

3. Patent Engineering- Berkeley-Lavian Week 2 3 Patent Engineering Course This is an engineering class not a law class The course broadly covers patents as a business tool The use of intellectual capital for competitive advantage Protection and commercialization of engineering and scientific intellectual assets Examination of several patent litigation case studies focus on invention, innovation, patent and strategy

4. Patent Innovations- Berkeley-Lavian Week 2 4 What we will do in this course? Mondays 4:00pm - 6:00pm Please be on time Starts today - ends on May 11th Patent – innovations, engineering, and strategy Industry lectures Few classes with the Law School Students “experts witnesses” Field trip – court visit SF or Oakland

5. Patent Engineering- Berkeley-Lavian Week 2 5 What We Will Cover? Overview of the Patent System Publication, Public Use, and On-Sale Limitations Enablement and Best Mode Requirements Utility, Provisional, and PCT Application Novelty and Unobviousness Requirements Avoiding Patent Infringement Patentability and Infringement Comparison Strategies for Engineers who are Witnesses or Experts in Patent Lawsuits

6. Patent Engineering- Berkeley-Lavian Week 2 6 Reading last week Patently-O Mailing list Other patent blogs

7. Patent Engineering- Berkeley-Lavian Week 2 7 Who are you? Send me email with the information Tell us about yourself: In about 60 seconds Your name, education, experience Goals for future What should we know about you Your patent, invention background experience What do you know about patents? How many patents have you read? Why are you here? What you would like to accomplish? Send me email with this info

8. Patent Engineering- Berkeley-Lavian Week 2 8 Grading - Attendance 2 units credit course – (no 1,3,4) You will be fine - Pass/Fail (it would be very hard to fail) Passing grade – requires attendance at all lectures (with one allowed unavoidable absence) Sign in for the class Patent blogs and mailing lists Students presentations – 15 min Prior Art search

9. Patent Engineering- Berkeley-Lavian Week 2 9 Students Presentations Present in 10-15 min a patent litigation case Case summary Parties, dates, history, issue in dispute, results Engineering aspects of the dispute The patent(s), technology, product Engineering aspects of the infringement The engineering view vs. the legal view Any proposed design around Volunteers to start next week

10. Patent Innovations- Berkeley-Lavian 2nd week 10 Students Presentations Some examples from last semester: http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html

11. Patent Innovations- Berkeley-Lavian 2nd week 11 Today’s Student’s Presentations Immersion vs. Sony - Abhinav Gupta Invitrogen Biotechnology - Christine

12. Patent Engineering- Berkeley-Lavian Week 2 12 Example of a patent Cover page Diagrams Writing description Claims

13. Patent Engineering- Berkeley-Lavian Week 2 13 Intro to Patent Engineering

14. Patent Engineering- Berkeley-Lavian Week 2 14 Types of Intellectual Property Patents –protect ideas Copyrights –provide the author the right to reproduce, display, perform Trade Secrets –information kept secret and has economic value Trademarks & Service Marks –marks used in commerce identifying origin of goods

15. Patent Innovations- Berkeley-Lavian 2nd week 15 Recent Patent Verdicts & Settlements Or – Why it is really important? Alcatel/ Lucent v. Microsoft. - (2007) - $1.5 Billion NTP – Settled with RIM for $612M (plus $53M litigation plus verdict) Intergraph – over $880M in settlement from patent litigation with Intel, HP and others Eolas v. Microsoft (2003). $506M Jury verdict Immersion v. Sony (2004). $82M jury verdict plus royalties –increased (2007) to $150M –vibration game controller - Microsoft settlement on $26 Freedom Wireless v. BCGI (2005) $128 jury verdict Finisar v DirectTV (2006). 103M (79+24)Jury verdict plus injunction Tivo v. EchoStar (2006). $74M jury verdict plus injunction Acacia - $60M in licensing revenue (2004-2—6) Forgent - $100M in licensing revenue 2004-2006

16. Bell Labs Case - The Technology  Late 1980’s, Inventors James Johnston and Joseph Hall (Bell Labs, division of AT&T)  Quantizing noise – approximation of continuous range by values by relatively small set of discrete values.  Invented method and apparatus to produce quantized audio signal using interpolated scale factor. V. Advantage - Data compression – Same or similar signal can be represented with less data

17. Bell Labs Patents Filed: Dec 1988 Assignee: Bell Laboratories U.S. Patent No. 5,341,457, Perceptual Coding of Audio Signals, to Joseph L. Hall and James D. Johnston (Dec 1988) U.S. Reissue Patent No. RE39,080, Rate loop processor for perceptual encoder/decoder, to James D. Johnston (Dec 1988, Reissued Sep 1994)

18. Bell Labs MS Case In 2003, Lucent files suit against Gateway, Dell, and eventually Microsoft in U.S. District Court, San Diego, CA. Claim: Infringed two patents developed by Bell Labs in MP3 compression and playback within Microsoft Windows Media Player Sought 0.5% royalty of total Windows computers sold

19. The Case Microsoft claims: Received license for MP3 technology from Fraunhofer Institute (Bell Lab’s parent research organization) for flat $17 million. Loop processor not applicable for WMP application. 0.5% rate exorbitant! “Only one of 10,000 features”.

20. The Results Ruling agreed that patents were developed by Bell Labs before joining with Fraunhofer to create MP3 Rights to patents exceeded value of $17 million paid for license February 22, 2007, Alcatel-Lucent awarded record $1.5 billion in damages from Microsoft. Jury unable to find ‘willful’ infringement for $4.5 billion damages. August 6, 2007, Microsoft granted retrial. Verdict overturned based on insufficient evidence by Judge Rudi Brewster..

21. PatentEng-Berkeley-Lavian 2nd week 21 Patent History Created by Congress in 1790 –“…to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Article 1, Section 8 July 31, 1790 – 1 st Patent –Samuel Hopkins patents potash –Cost : $4.00 Reviewed by Cabinet Members –Thomas Jefferson – Secretary of State –Henry Knox – Secretary of War –Edmund Randolph – Attorney General –George Washington – President www.uspto.gov, www.ipo.org

22. Patent Engineering- Berkeley-Lavian Week 2 22 More Patent History 3 Patents Awarded in 1790 –First patent law enacted 1802 – US Patent and Trademark Office Created –Responsibility of granting patents/registering trademarks Atomic Energy Act of 1954 –Excludes nuclear purposes/atomic weapons American Inventors Protection Act (1999) –Most recent revision of patent laws New Legislation debate - 2008

23. Patent Engineering- Berkeley-Lavian Week 2 23 US Constitution Rights are derived directly from US constitution, Article 1, section 8 –granting congress the power to promote the progress of science and useful arts by securing for a limited time to authors and inventors the exclusive rights to their respective writings and discoveries

24. Patent Engineering- Berkeley-Lavian Week 2 24 What is a Patent? A form of intellectual property A grant of property right to an inventor by the government Prevents the invention from others for the duration of the patent In return, the inventor must fully disclose the details of the invention to the public

25. Patent Engineering- Berkeley-Lavian Week 2 25 What is a Patent? (Cont.) Right to Exclude the Making, Using, Selling, Offering for Sale or Importation of a Specified Invention –Limited Time (Typically 20 Years from date of filing with USPTO) –Limited Geographic Territory (issuing country) Monopoly awarded by the Government for sharing the Invention with the public

26. Patent Engineering- Berkeley-Lavian Week 2 26 Protecting the Idea Protecting the idea, not the embodiment Allowed to claim broader than the physical embodiment Protection: –Limited rights during the life of the patent Filing to end Issue to end