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Court Shuts Down Patent Infringement Case Against Amazon.com

court-shuts-down-patent-infringement-case-against-amazon-com

The U.S. District Court for the Northern District of California has dismissed a lawsuit against Amazon.com filed by TriDim Innovations claiming patent infringement.

TriDim filed a suit on Nov 30th 2015 for infringing two patents (U.S. Patent No. 5,838,326 and 5,847,709) on a “computer controlled display system” which it acquired from Xerox Corp. It claims that Amazon.com uses similar software for its Kindle Fire.

The patents describe a three-dimensional computer document workspace that allows users to consolidate a large number of documents by touching, dropping and flicking them into three separate places in accordance to their usage.

Amazon.com argued that the patents were invalid under section 101 as applied in the Alice Corp. Pty. Ltd v. CLS Bank Int’l in 2014. In the Alice case, the Supreme Court expressed that computer claims are eligible for patents if there is significantly more than an abstract idea.

TriDim reasoned that separating its computer display into three spaces limits their invention to a specific system, and hence it is not an abstract idea.

The judge of the case, James Donato found the patent to be invalid under Alice as it was an abstract idea of retrieval and arranging of documents. He ruled it out by saying it did not establish an inventive concept and is a “common solution to a common problem.”

The court said that the TriDim patents did not require any specific hardware or software that would help a user to move and place files within the system. Furthermore, it found that there was an overuse of the word “circuitry” but the invention had nothing to with circuitry. It also said that inclusion of smart words does not mean that the creation is an innovative concept.

Due to all of these assertions, the court gave verdict in favor of Amazon.com and dismissed the lawsuit. The ruling came out on Sept 19, 2016, just days before the patents were about to expire.

According to the USPTO data and MaxVal’s own research, here is a detailed history of this infringement case

Type Names
Case Number 3:15-cv-05477
Court California Northern District Court
Filed date 12/02/2015
Judge James Donato
Plaintiff Tridim Innovations LLC
Plaintiff Attorney Steven Todd Lowe
Plaintiff Law Firm Lowe & Associates, P.C.
Defendant Amazon.Com, Inc.
Defendant Attorney Daniel Thomas Shvodian
Defendant Law Firm Perkins Coie LLP
Product Various versions of the Kindle Fire, Kindle Fire HD, Kindle Fire HDX, and Fire phone – products that incorporate the “carousel” feature
Patent US5838326|US5847709
Closed date 9/19/2016
Basis of Termination Judgment on the Merits
Outcome of District court judgment Favor of Defendant
Comments Patent claims ruled invalid

 

 

 

 

 

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MaxVal Launches SymphonyIAM – an Innovative Intellectual Asset Management Platform

symphonyiam-bannerMaxVal, a leading IP management solution provider is pleased to announce the public launch of SymphonyIAM — its new cloud-based intellectual asset management platform.

SymphonyIAM is the complete intellectual asset management platform that enables IP counsel and IP managers to mitigate risk and manage better by providing visibility, insight and control over their intellectual assets.

SymphonyIAM integrates all aspects of intellectual asset management into one platform with capabilities including invention management, docketing, portfolio management, workflow management, annuity management, expense forecasting, analytics, reporting and more.  A key component of SymphonyIAM is MaxVal’s newly developed GFWTM global prosecution data sync technology that enables unified data collection from both public and private patent data sources including prosecution data from the U.S. as well as all major foreign patent offices. Steven Gong, patent attorney and product director for SymphonyIAM says “SymphonyIAM’s ability to build a strong data foundation through unprecedented access to U.S. and foreign patent data is a game changer for the industry, because maintaining correct, current, complete IP data is critical to any IP department.”

MaxVal CEO, D. Bommi Bommannan, says “SymphonyIAM received overwhelmingly positive response from industry thought leaders during the private launch earlier this year. Based on the positive feedback and comments from IP counsel and IP managers of some of the most innovative Internet, high-tech, biomedical and pharmaceutical companies, we are now pleased to announce the public launch of SymphonyIAM.  With SymphonyIAM, users will, a) know what assets they have, b) have the tools they need to analyze and manage those assets throughout the asset lifecycle and c) be able to generate insightful reports for key stakeholders. SymphonyIAM will reduce risk and make IP operations more efficient.”

For more information about SymphonyIAM, please visit www.symphonyIAM.com or email symphonyiam@maxval.com.


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False Testimony Leads to Triple Damages Award by EDTX against Samsung

edtx-samsung_blog_banner

Samsung Electronics was punished with a $21 million enhanced damages award after finding egregious willful infringement of patents held by Imperium IP Holdings of the Cayman Islands.

Judge Mazzant cited the US Supreme Court’s decision this June in Halo Electronics v. Pulse Electronics while making his determination to triple the damages. At Halo, the majority opinion held that the two-step Seagate test is inconsistent with § 284, which has no explicit limit or condition on when enhanced damages are appropriate. Imperium IP Holdings v. Samsung Electronics in E.D. Tex. is the first case to apply with Halo standard for awarding enhanced damages.

The original complaint was filed on June 2014 by Imperium IP seeking damages from Samsung for infringing the patents. On February 2016, the jury verdict delivered that Samsung had willfully infringed upon the following  patents-in-suit:

1 – U.S. Patent No. 7092029 titled Strobe Lighting System for Digital Images.

2 – U.S. Patent No. 6271884, titled Image Flicker Reduction with Fluorescent Lighting.

An initial complaint of Imperium IP against Samsung seeking relief targeted Samsung products which allegedly infringed Imperium’s patents ‘029 and ‘884.

In this case, the court decided to award enhanced damages to Samsung, because of egregious behavior on the part of Samsung,  including attempts to copy the technology and  moreover, false testimony given by Samsung. Samsung’s representatives testified under oath that they only became aware of Imperium IP’s patents in June 2014, the first time the infringement action was brought to court. However, this was proved incorrect by depositions and other discovery during trial.  Previously, Samsung had also made an attempt to purchase the patents-in-suit from Imperium, concealing its identity through a patent broker. The court thus found that Samsung was aware of Imperium’s patents since at least April 2011 instead of June 2014.

While deciding to award enhanced damages, the court was guided by the non-exclusive factors developed by the U.S. Court of Appeals of the Federal Circuit decided in 1992. Likewise, Samsung has also made an attempt in defense to declare that it wasn’t liable for infringing on imaging sensors which it purchased from Tokyo-based Sony Corporation. During September 2015, a damages expert for Imperium deposed that the company wasn’t targeting sensors which Samsung purchased from Sony, but an infringement report on the same day which used a citation only listing Sony sensors.

Court decided that Samsung’s decision not to declare the Sony license defense until November 2015, post the deadline to file for summary judgement and months after receiving the Sony license agreement in April 2015, was evidence that Samsung vigorously intended to not assert the Sony license.

According to USPTO data  and MaxVal’s own research, Imperium accused Samsung in 3 PTAB cases out of which 1 wasn’t instituted.

 

Case Number Petition document Institution document Status
IPR2015-01231 Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (Petitioners) hereby petitions for inter partes review of claims 1-6, 14, and 17-19 (“Challenged Claims”) of U.S. Patent No. 6,271,884. The petition was denied by order due to all challenged claims of the 884 patent  and adding further to the case, that no inter partes review was instituted. Not-instituted
IPR2015-01232 Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (Petitioners) hereby petitions for inter partes review of claims 1, 6, 7, 14, and 16 (“Challenged Claims”) of U.S. Pat. No. 7,092,029 (“the ’029 Patent”), issued to
ESS Technology, Inc. (“ESS”).
Petitioner demonstrates that there is a reasonable likelihood of prevailing in showing the unpatentability of claims 1, 6, 7, 14, and 16 of the ’029 patent. Consequently, we institute inter partes review of claims 1, 6, 7, 14, and 16 as unpatentable over Shimada. ORDERED that inter partes review is instituted as to claims 1, 6, 7, 14, and 16 of the ’029 patent. Instituted
IPR2015-01233 Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung Semiconductor, Inc. (Petitioners) hereby petition for inter partes review of claims 1 and 10 (“Challenged Claims”) of U.S. Patent No. 6,836,290. Petitioner has demonstrated a reasonable likelihood that it would prevail at trial in showing the unpatentability of claims 1 and 10 of the ’290 patent on certain of the grounds asserted in the Petition.
ORDERED that an inter partes review is instituted as to claims 1 and 10 of the ’290 patent.
Instituted

 


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Deploy Patent Prosecution Analytics to Accelerate the Product Development Cycle: A Comparative Case Study

Patent prosecution analytics can provide valuable insight into the performance of an organization’s IP operations just as other forms of analytics help in reducing cost, in making better decisions and in creating new products and services. Technology companies who are actively filing patents can achieve cost savings and faster times to grant through prosecution analytics. I will illustrate what I mean by looking at two leading technology companies with different prosecution performance – Cisco and Juniper Network.

The patent prosecution analytics can illustrate areas for improvement, how a company compares with direct and indirect competitors, patent prosecution trends, and areas the company is performing well.

There are multiple ways to measure how well an organization’s patent prosecution processes perform. MaxVal and its clients have had good success with these methods:

  • Prosecution Success Score – The number of issued cases divided by the number of abandoned cases in a given year.
  • Application Abandonment before an Office Action
  • Rate of Issued Cases with 2 or more RCEs
  • Average Pendency

To illustrate these methods and the insight they can provide, MaxVal took a look at Cisco Systems and Juniper Networks, two competitors within the Computer Communications Equipment Industry. MaxVal used publicly available data for its analysis.

Patent Prosecution Score

A Prosecution Success Score is simply the number of issued cases divided by the number of abandoned cases in a given year. The higher the score, the better it is for the company. Higher prosecution success scores can be attributed to more efficient prosecution methods, a better invention disclosure screening process, and possibly fighting harder to get patent issuance.

Prosecution Success Score
Year Cisco Juniper
2013 12.3 15.6
2014 5.9 16.1
2015 5.9 47.8

While we see Cisco and Juniper had comparable Success Scores in 2013, Juniper has continued to improve their Success Score while Cisco’s Success Score has dramatically declined. Cisco is still getting patents issued at a high rate but many more applications are being abandoned. It would be useful for Cisco to further investigate and see what the reasons for these patent application abandonment are.

Rate of Abandonment Prior to an Office Action

Another telling metric would be the rate of abandoned cases prior to receiving an Office Action. If a case is abandoned prior to receiving even a single Office Action, then it is likely that the case should not have been filed in the first place or the company did not fight hard enough for the case. An option to reduce the number of abandonment prior to an OA would be to invest in pre-filing searches to become aware of the prior art.

Rate of Abandonment Prior to an Office Action
Year Cisco Juniper
2013 1.6% 9.1%
2014 4.2% 50%
2015 5.8% 40%

Cisco seems to have a very low rate of abandonment prior to an OA while Juniper’s rate in 2014 and 2015 seems rather high. However, Juniper only abandoned 14 and 5 cases, respectively, in 2014 and 2015 so the sample size is too small to make a proper assessment of their rate.

Rate of Issuance with 2+ RCEs

The next metric to look at is the number of issued cases prior to filing a Request for Continued Examination (RCE). A high rate in this metric is a strong indicator of inefficient prosecution methods (broader claims among other things). Since the application was ultimately issued, it can be inferred that it was inefficient prosecution by the practitioner that led to a number of RCEs prior to issuance.

Rate of Issuance with 2+ RCEs
Year Cisco Juniper
2013 3.3% 12.2%
2014 6.0% 6.6%
2015 4.0% 5.4%

Both Cisco and Juniper seem to have pretty good rates in this metric suggesting that their patent practitioners use efficient prosecution methods. While Juniper’s rate in 2013 was on the higher end of the spectrum, there has been a noticeable decrease in their rate.

The final metric to look at today is the average pendency between a first OA and issuance. While looking at the pendency from filing to issuance is a normal metric to look at, it doesn’t give the best insight to prosecution methods. Much of the time from filing to first OA is a result of the patent office delays in working on the application. So, a better indicator of an applicant’s prosecution methods is to look at the time from the first OA to issuance. A higher pendency can be attributed to receiving more OAs, taking longer to respond to OAs, and filing RCEs.

Average Pendency from OA to Issuance

Average Pendency from OA to Issuance
Cisco Juniper
Overall 13 months 18 months

As evidenced by the table above, Cisco seems to be getting their applications issued, on average, 5 months quicker than Juniper. Juniper should look closer at factors that can be attributed to this increase in pendency.

Overall Cisco and Juniper seem to employ reasonably efficient patent prosecution practitioners and methods. They both have high issuance rates and low abandonment rates. Cisco’s low abandonment prior to OA rate indicates a good invention disclosure screening process. And the low rate of issuance with 2+ RCEs indicates efficient patent prosecution methods.

These metrics, and others, illuminate a company’s patent prosecution process strengths and weaknesses. It allows companies to see how their competition is faring and what areas they need to improve.

By Bharath Venkat, MaxVal


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MaxVal’s SymphonyIAM Will Enable Better IP Management

By Steven Gong JD, MSCE
Director, MaxVal, SymphonyIAM Product Manager

I am excited to announce the preview of MaxVal’s SymphonyIAMTM.  SymphonyIAM is a complete Intellectual Asset Management solution built on the foundation of correct, current, and complete asset information by leveraging unparalleled access to both public and private data sources.  Based on this foundation, SymphonyIAM provides IP managers full visibility to their patent portfolio.  This  allows  them to make insightful decisions, take informed actions and mitigate risk.

As described in our recent article “Intellectual Asset Management Should be Affordable and Easy”, for innovative companies, intellectual assets are the ultimate source of competitive advantage.  These assets usually underpin a company’s valuation and must be managed carefully.  At MaxVal, we often see IP managers struggle with juggling docketing systems, spreadsheets and patent workflow management in general.  Furthermore, as the patent portfolio grows, having that critical visibility of the assets in the portfolio becomes a challenge.

MaxVal has built SymphonyIAM by bringing together over a decade of experience in working with intellectual asset data and automating IP lifecycle management processes.  SymphonyIAM enables direct access to public patent data of all the major patent offices around the world as well as your private data through MaxVal’s patent pending technology.  SymphonyIAM enables IP Managers to finally see a complete view of their portfolio to unleash the strategic value of their assets with data-driven insights.

Leveraging one of the most powerful and secure cloud platform, SymphonyIAM helps companies  streamline their IP management processes. From invention capture, portfolio management, docketing, renewals, reporting, workflow automation, and analytics, SymphonyIAM provides the best-in-class solution for inventors, IP managers, in-house counsel, outside counsel and IP operations staff.

To learn more about SymphonyIAM, please see this short video.

MaxVal is now running an invitation-only beta test of SymphonyIAM.  If you would like to experience SymphonyIAM as a beta-tester, please submit your e-mail address at our SymphonyIAM preview page.

Thank you for your support.  I am excited to share SymphonyIAM with you soon.


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Why do Korean Companies Care About US Patent Litigation?

South Korea’s WIPS Co. Ltd. has licensed MaxVal’s Litigation Databank to provide comprehensive information on US patent litigation to their clients.  WIPS is the leading online patent information service provider in South Korea.  WIPS Global is a web based patent search system with comprehensive global patent data coverage, including the US, Europe, Japan and China.

Why is US patent litigation data of interest to Korean companies?   The answer is that Korean companies are frequently involved in US patent litigation.  The information provided by MaxVal’s Litigation Databank enables Korean companies to keep up to date on their cases and to monitor litigation that affects their industry and provides them insight into the US patent litigation environment.

The table below shows the leading Korean technology companies that have been involved in patent litigation in 2015, and over the last five years.

Trimmed name used for search

Cases in 2015

Cases in the last  5 Yrs

Plaintiff

Defendant

Plaintiff

Defendant

Samsung Electronics

1

61 11

249

LG Electronics

1

41 5

200

SK Hynix

0

1 0

8

Hyundai Motor

0

10 0

46

Kia Motors

0

5 1

24

Nautilus Hyosung

0

1 1

2

The ongoing patent litigation between Apple and Korea’s Samsung Electronics is well known.  Samsung Electronics has been involved in a large number of cases – mostly as a defendant.   IPR2015-01135 is an interesting PTAB case involving Samsung Electronics and NVIDIA (MaxVal’s Litigation Databank includes PTAB cases).

LG Electronics was sued in California Central District Court ( case 8:13-cv-00134) in which Digitech Image Technologies charged infringement of its US 6,128,415 relating to capturing, transforming or rendering color images.

In 1.11:cv-04356 Korean semiconductor memory maker SK Hynix was sued in Illinois Northern District Court by Cascades Computer Innovation LLC over US patent 6,366,130 “High speed low power data transfer scheme”.

It is somewhat surprising to see how many cases Hyundai and Kia Motors are involved in.  Interesting cases include:

  • 1:11-cv-00934– Delaware District Court.  Beacon Navigation GmbH charged Hyundai with infringement over vehicle navigation  patent USPN 5,878,368.  Kia Motors was sued over the same patent in case 1:11-cv- .  Beacon Navigation also filed suit against Ford, GM, BMW, Honda, Mazda and other auto manufacturers.
  • 1:13-cv-00275 In Delaware District Court, 911 Notify LLC sued Hyundai Motor over USPN6,775,356, which claims system for notification relating to an emergency call from a telecommunication device. Ford Motor and other manufacturers were also sued by 911 Notify.
  • 6:09-cv-00479 Clear with Computers, LLC sued Hyundai in the Texas Eastern District Court over three US patents, including USPN 5,367,627 “Computer-assisted parts sales method”.

Finally, Diebold sued Korea’s Nautilus Hyosung over ATM machine patents in 2015.  In Ohio Northern District Court case 1:15-cv-02153 Diebold charged that the Nautilus line of HALO ATM machines infringed six of its US patents.

A manufacturer in any industry doing business in the highly competitive US market faces the risk of patent infringement suits. These examples show that Korean companies are no exception.   Given that patent litigation is a reality, it is important to stay current on specific cases and general trends.  MaxVal’s Litigation Databank makes it easy for companies to do so.

The Litigation Databank is a searchable database of US patent litigation.  Litigation Databank covers the US District Court, the US Court of Appeals, the US Supreme Court and the ITC.  MaxVal has recently added coverage of the USPTO’s Patent Trial and Appeal Board (PTAB).  Subscribers receive daily alerts and access to a web based search and reporting system.  The Litigation Databank is also available as an Application Programming Interface (API).  The API allows subscriber patent databases and tools interface directly with the Patent Litigation Databank database.

A video demonstrating the system is available Litigation Databank Demo.

For more information on Litigation Databank, contact MaxVal at bd@maxval.com.


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MaxVal Releases the PTA Wizard – A DIY Tool to Calculate USPTO Patent Term Adjustments

MaxVal has just released the PTA Wizard – a powerful do-it-yourself tool for verifying the patent term adjustment calculations of the US patent and trademark office.

The USPTO extends the normal term of a patent with a patent term adjustment that is based on delays in prosecution. The calculation is complicated and is supported by data that resides in the USPTO PAIR system. The PTA Wizard allows users to view all the data and see how it has been used to compute the PTA. Users can make changes to the data to see the impact of missing data or mistakes that may have been made on the PTA.

How the PTA Wizard works

After logging in, users have to enter the patent number. The PTA Wizard then imports the relevant information from the USPTO PAIR system. Clicking “Import PTA Data” retrieves all the current PTA-related data from PAIR, which is saved in the database of the PTA Wizard. Your work is listed on the home screen allowing you to save your work and resume your analysis at any time.

PTA Wizard_1

Once the data is loaded, the PTA Wizard shows the PTA calculation of the PTO, and a new PTA is calculated based on the updated contents of the PAIR file. Users can access the application data, the PTO calculation details, and the updated calculation using tabs. These tabs are laid out in a manner that is similar to the PAIR record layout.

PTA Wizard_2

To see the details behind the PTA value, users can check each type of delay. The “A Delay” activities are shown below. The delays are color coded and linked. Yellow activities are those entered by the USPTO, orange by the applicant, and red activities denote an RCE (Request for Continued Examination).

PTA Wizard_3

Users can add new activities or edit existing activities. Users can change the delay value directly, or change the activity date or start/stop value. The PTA Wizard will then automatically calculate a new delay value based on the new activity date or start/stop value.

PTA Wizard_4

When you are done analyzing and editing the delay data, you can click “Export to Excel”. A summary of the PTA calculation is shown in the “Extension” tab. All the activity details are shown in the “IFW” tab.

PTA Wizard_5

If you wish to petition for a change to the PTA, you can use this information in your petition.

PTA Service

MaxVal offers a Patent Term Adjustment Calculation Service where an expert staff member at MaxVal goes directly into PAIR to recompute and verify whether the PTA calculation of the PTO is correct. With the PTA Wizard, users themselves can easily verify the computations. By this, users gain insight into the underlying data and are able to reduce costs.

If correct patent term adjustments are important to your business, you should try the PTA Wizard.

See a video demonstration of the PTA Wizard

Contact bd@maxval.com for more information.


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MaxVal’s Litigation Databank Now Includes PTAB Search and Alerts*

MaxVal’s Litigation Databank contains a comprehensive database of over 71,000 cases from the U.S. District Courts, the Court of Appeals, the Supreme Court and the ITC.  Litigation Databank subscribers can search cases, produce reports on cases and parties, set watches and download case related documents.

Existing and new Litigation Databank subscribers registered before Jan 31, 2016, can access USPTO Patent Trial and Appeal Board (PTAB) cases at no extra cost.

PTAB cases cover AIA post-grant, interference and interpartes reviews. Within Litigation Databank, users can search PTAB court proceedings, see details about the case, see the final decision and purchase case related documents.

Here is a short video demonstration of Litigation Databank


The Litigation Databank is available from MaxVal through a low priced subscription. It is a SaaS application with no software to install. The API connection is through SSL.

The Litigation Databank helps patent attorneys every day as they prepare for litigation and monitor the progress of their cases through the courts.  With the Litigation Databank, you can:

  • Proactively monitor and query whether patents of interest have been litigated.
  • Gain analytical insights on plaintiffs, defendants, filing trends, courts, etc.
  • Stay updated with patent litigation alerts.
  • Query and analyze over 20 litigation fields including patents, products, plaintiff, defendant, court, judge, law firm and case outcome.
  • Minimize PACER expenses.

Litigation API

An API (Application Programming Interface) service is available for the Litigation Databank. The API allows your patent databases/tools to interface with our database and populate litigation data based on your specific requirements.

PTAB Alert

MaxVal also offers a PTAB Alerting Service.  PTAB Alerts are an e-mail notification of changes to cases you are following.  *Please contact us with your custom request for an estimate.

Contact MaxVal today for more information at bd@maxval.com.


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MaxVal’s Max-IDS: New Features Make It Easier Than Ever For Your Team To Manage Information Disclosures

Max-IDS is MaxVal’s cloud-based, hosted, Information Disclosure/Reference Management solution.  Max-IDS is much more than a form generator.  Max-IDS stores your references in a centralized database together with information about the cases citing each reference. This promotes consistency, reduces confusion and makes ad-hoc solutions (such as individual spreadsheets) unnecessary.

MaxVal is constantly looking for ways to improve Max-IDS.  Based on user feedback, we have recently added the following enhancements to Max-IDS:

  • Reference source comments
  • Reference comparison chart enhancement
  • Case and Group functionality

Reference Source Comments

Max-IDS helps you keep your references organized.  Reference “Source Comments” are tags users can assign to their references. For example, relevant tags may include “search result”, “PTO” or “Inventor”.   Source Comments make references easier to find and sort, and communicate the source of the references.  MaxVal has just added the following new source related functionality:

  • “Additional Source Comments” – Your Max-IDS administrator can now define tags specifically for your organization, and add new tags at any time.
  • “Copy Source Comments from One Case to Another” – Users can compare cases, copy and append source comments from one case to another.

We have also added a handy “Reference Extractor”.  Users can import references directly from the Max-IDS PDF viewer. This eliminates the time consuming and error-prone process of OCR-ing documents to extract references. The Reference Extractor complements the existing Max-IDS bulk import tools.

Max-IDS Reference Extractor

 

Reference Chart Enhancements

Reference Charts are one of Max-IDS’ most powerful features.  Reference Charts show all references shared between a set of documents, and show which documents cite the reference.  This makes inconsistencies immediately visible.  This is extremely valuable when working with foreign filings and patent families.

The Status of each application is now visible in the Comparison Chart.   For example “Abandon”, “Filed Pending”, “Pending Published”, “Allowed” or “Issued”.

Max-IDS Reference Comparison Chart

 

Case and Group Functionality Enhancements

In addition to tracking references, Max-IDS tracks the cases that use the references.  These cases contain the patent applications, granted patents and related foreign family filings.  Cases can be grouped to enable outside counsel can see just their cases.  MaxVal has just released these enhancements to the Case and Group features:

  • “Search within a Case Group” – A new feature is the ability to search for references within a group of cases. This makes it easy for outside counsel to find the references for their cases.
  • “Group List Asset Count Report” – Clicking on the Export option in the List View will now download the group list along with the asset count for each group into an Excel spreadsheet.  Users can also export all the IDS records from a search result in a single instance.

Finally, we have improved security by enhancing the password security policy.

Support and Managed Services

Of course, MaxVal continues to provide Live Support to Max-IDS users and administrators.

Max-IDS is a cloud-based hosted software product.  Users and administrators access Max-IDS through a browser based interface.  MaxVal provides support and training for Max-IDS administrators.  MaxVal also offers Max-IDS as a fully managed service.  We can configure, maintain and administer your Max-IDS server for you.

If you would like more information on these new features, or you would like to see a Max-IDS demonstration, please contact us at bd@maxval.com.


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Twelve Things to Consider When Choosing a Patent Life Cycle Management Vendor

Partnering with a Patent Life cycle Management Company lets you outsource routine administrative responsibilities.  This allows you to focus your time and resources on strategy and achieving your business objectives.  It is a big commitment with a big payoff.  But how do you choose the right Patent Life Cycle Management Vendor?

At MaxVal, based on the decade plus experience partnering with our clients, here are the vendor attributes that we found to be important for our clients in choosing a vendor.

Patent Lifecycle Management Infographic

1.  Vendor’s Vision and Mission

Does the vendor have a clear mission and vision that aligns with your IP business? Many vendors have vague mission statements or are focused on very broad business objectives. Look carefully to see that they have a distinctive mission statement that is aligned with your company’s IP management needs.

2.  Strong Leadership

An experienced leadership team with relevant industry background to steer the company in the right direction.  A strong management team acts as the backbone for the vendor.  They make strategic decisions that ensure win-win outcomes for themselves and their clients.

3.  Technology

Make sure that the vendor uses robust, scalable technology that is capable of managing a portfolio of any size. From prior-art search through patent issuance, each stage in the patent life cycle has different needs. Some stages need highly accessible, simple tools for patent term estimation, IDS form generation, etc., while others need full-featured management software for annuity payment, portfolio management, IDS management, etc. Hence, check if the vendor offers end-to-end solutions and services to address and solve your different patent management needs.

4.  Expertise

Does the vendor have in-house expertise, including scientists and engineers, trained legal professionals and operations specialists? This diverse and experienced team should support the clients  by identifying and understanding client needs and suggesting and implementing the right solutions for them.

5.  Industry Best Practices

Industry best practices should be evident in the design of the solutions and in everyday practices.  Following best practices results in high quality.   Best practices also help the service provider be more competitive.  Over time, following best practices results in lower costs, higher productivity, improved quality and timely delivery.  All of which will benefit you as a client.

6.  References

Look for strong references from companies in your industry. Feel free to ask the vendor if they can provide references and introduce you to their existing clients. Through this you can learn how each reference has benefited from the relationship.

7.  Consistent Support

24/7 support and immediate attention to issues and problems. This is one of the critical factors to consider upfront with any service provider. In today’s business climate, even apparently small issues need to be addressed quickly. So, ask them about their different modes of support; whether they offer round-the-clock assistance and their turn-around time for addressing critical cases.

8.  Tenure

Look for a strong history of serving the patent industry. A veteran vendor will have weathered industry changes and gained a greater understanding of the IP industry.  They can adapt to changes better than less experienced vendors. This means that they not only act as a service provider but also as a seasoned consultant.

9.  Global Partnership

Look at the vendor’s worldwide network of external technology providers, database partners and international agents. It’s very common in today’s global economy that businesses have strategic partnerships or joint ventures with other businesses to leverage various resources worldwide. Your service provider’s network will consequently mitigate risks and add value to your business too.

10. Innovation

Innovation always disrupts the status quo in any business and addresses clients’ needs in better ways. Look for a development program and solutions roadmap that ensures that the choice you make today will still be the right choice in the future. When your service provider strives to be innovative, it directly gives a meaningful value to your business.

11. Reputation

Look for participation in professional organizations, awards and honors. Reputation doesn’t come on its own for any business; it has to be earned by being competent. You will feel more secure when you work with someone with a good reputation and who is respected by others in the same field.

12. Pricing

Look for a simple, transparent and flexible pricing model. Ask them clearly what are all the factors included in their pricing and if there are any hidden costs like maintenance, training, upgrades, etc. There are different pricing models among patent management solutions provider.  These include one-time fees, project based fees, time based model, flat fees, etc. Whatever their model is, make sure it’s transparent and you know what you pay for.

Contact us at MaxVal to see how we can help you.  Ask about our experienced staff of attorneys, IP professionals, scientists, engineers and software professionals. Ask to see our IP Lifecycle Management Technology.  Technology is the key to the quality and efficiency of our unique service.