Defensive Patent Research Articles

Application of Sound Intensity to the Measurement of Aeroacoustic Noise Sources in Flow

In the late 1970's and early 1980's, Jing-Yau Chung along with Joseph Pope published several external General Motors reports on the then novel measurement of sound intensity (SI) using the two-microphone, cross-spectral method. Application of this measurement method was then extended to sound intensity measurements in flow. Through component wind tunnel measurements, it was determined that the intensity of noise sources could be accurately measured up to a level of 15 dB below the sound pressure level generated by flow noise on microphones. An initial application of this method was to the identification of noise sources alongside rolling truck tires. It was then extended to the measurement of the aerodynamic noise generated by protrusions added to automotive vehicle designs. These included items such as outside rearview mirrors, windshield wipers, A-pillar offsets, grille whistles, roof racks, underbodies, and fixed-mast radio antennas. Many of these could be applied on the early full-size clay models or other mock-ups as well as actual vehicles. An application of sound intensity was the development of the straked antenna design leading to a GM Defensive Patent and its now universal application to virtually all vehicles with simple fixed-mast antennas. The development of this design is highlighted along with the background on the application of sound intensity to measurements in air flow.

“Idealists and capitalists”: ownership attitudes and preferences in genomic citizen science

The perspectives of genomic citizen scientists on ownership of research outputs are not well understood, yet they are useful for identifying alignment of participant expectations and project practices and can help guide efforts to develop innovative tools and strategies for managing ownership claims. Here, we report findings from 52 interviews conducted in 2018 and 2019 to understand genomic citizen science stakeholders’ conceptualizations of, experiences with, and preferences for ownership of research outputs. Interviewees identified four approaches for recognizing genomic citizen scientists’ ownership and related credit interests in research outputs: shared governance via commons models; fractional ownership of benefits; full and creative attribution; and offensive and defensive patenting. Interviewees also agreed that the model selected by any project should at least maximize access to research outputs and, as appropriate and to the extent possible, broadly distribute rights of control and entitlements to research benefits.

Defensive Patenting and Portfolio Synergies: the Impact of Patent Invalidation on the Renewal of Citing Patents

Defensive Patenting and Portfolio Synergies: the Impact of Patent Invalidation on the Renewal of Citing Patents

Patent Validity and Follow-on Patenting: Evidence From Ex Parte Reexamination at the USPTO

The paper analyzes the effects of ex post declarations of patent validity, a component of patent quality, on follow-on patenting decisions by both assignees and rivals to a given patent. Using a DiD-matching estimator, this chapter estimates the effects of validation, or an increase in the probability of validity through ex parte reexamination on follow-on patenting. I find that validation increases for overall and external follow-on patenting but the results are mixed for internal follow-on patenting. The increase in follow-on patenting by rivals can be attributed to an increase in defensive patenting based on the positioning of follow-on patents in technology space after validation. The positioning of external follow-on patenting is unaffected by validation. Finally, I find that the validation effect is more prominent in complex relative to discrete technologies.

Lady Ada: Limor Fried, Adafruit industries, intellectual property and open source hardware

This paper provides a profile of Limor Fried of Adafruit Industries – as an advocate of open source hardware, and a policy campaigner for intellectual property law reform. This work considers the copyright challenges for open source hardware – particularly with the US Supreme Court decision on copyright subsistence in Star Athletica LLC. v Varsity Brands Inc., and ongoing conflicts over intermediary liability and technological protection measures. It reviews the trademark disputes of Adafruit Industries – looking at the matter of Fried v Linco Inc. It explores the intervention of the Open Source Hardware Association in the design patent dispute in Luxembourg v Home Expressions Inc. It analyses how Adafruit Industries has engaged in defensive patenting, and pushed for patent law reform in dialogues with President Barack Obama. The conclusion considers how open source hardware advocates such as Limor Fried and Adafruit can play an important role in intellectual property law reform in the future. It also explores current and future challenges for Adafruit and open source hardware – including the current coronavirus COVID-19 public health crisis.

Managing intellectual property: Strategies for patent holders

Too often, firms depend on the traditional strategies of exercising market power, while alternative strategies could create greater value. Researchers concentrate mostly on offensive and defensive patent strategies, which is associated with two issues. Firstly, little attention is devoted to leveraging strategies. Secondly, the literature on leveraging strategies and external patent commercialisation is dispersed, and there is little coverage of the strategic choices left to managers in IP-rich industries. This article fills that gap, as it aims to provide a guide on strategies for patent holders with emphasis on various forms of cooperation. The paper analyses various forms of cooperation: sale, licensing and cross-licensing, patent-pooling, cooperation (alliances and joint-ventures), donation of patent rights and abandoning them, as well as deterring competitors from litigation (mutual hold up) from the point of view of the patent owner. By highlighting the strategies' pros and cons, as well as examples of their introduction, this article provides a framework of strategic choices left for managers.

Lady Ada: Limor Fried, Adafruit Industries, Intellectual Property and Open Source Hardware

This paper provides a profile of Limor Fried of Adafruit Industries – as an advocate of open source hardware, and a policy campaigner for intellectual property law reform. This work considers the copyright challenges for open source hardware – particularly with the US Supreme Court decision on copyright subsistence in Star Athletica LLC. v Varsity Brands Inc., and ongoing conflicts over intermediary liability and technological protection measures. It reviews the trademark disputes of Adafruit Industries – looking at the matter of Fried v Linco Inc. It explores the intervention of the Open Source Hardware Association in the design patent dispute in Luxembourg v Home Expressions Inc. It analyses how Adafruit Industries has engaged in defensive patenting, and pushed for patent law reform in dialogues with President Barack Obama. The conclusion considers how open source hardware advocates such as Limor Fried and Adafruit can play an important role in intellectual property law reform in the future. It also explores current and future challenges for Adafruit and open source hardware – including the current coronavirus COVID-19 public health crisis.

Defensive Patent Aggregators as Shields against Patent Assertion Entities? Theoretical and Empirical Analysis

Defensive Patent Aggregators (DPA) are a new patent intermediary that aims to counter the threat of Patent Assertion Entities (PAEs) to technology practicing firms by preempting patents that can be utilized by PAEs. In this study, we investigate whether and to what extent DPAs are in competition with PAEs for patent aggregation.In our theoretical analysis, we develop a game theoretic model that illustrates the selection of patents for aggregation by DPAs and PAEs, and derive four testable hypotheses regarding differences between the DPAs and PAEs aggregated patents. The model shows that DPAs are unlikely to be in complete competition with PAEs for patent aggregation and there are systematic differences in the characteristics of patents acquired by PAEs and DPAs. Our empirical analysis using U.S. patents aggregated by large PAEs and DPAs from 2008 to 2014 presents corroborating evidence for our hypotheses. Our findings imply that DPAs' patent preemption business model alone may not be sufficient to mitigate the threat of PAEs for technology firms, and point to the important role of public policy intervention. We discuss implications for technology firms and policymakers who seek to establish state-run DPAs.

Standardization, Open Source, and Innovation: Sketching the Effect of IPR Policies

Open Source and standardization can be described as two ‘stewards of innovation’ (Kapos 2017). Although practically two different ecosystems with a diverging set of rules and objectives, they, however, meet in their purpose to push the frontier of innovation. The latest technological developments are increasingly incentivizing firms and individuals participating in these ecosystems to work more closely together. However, under whose rules? And with what consequences for the innovation ecosystem? In this contribution, I try to sketch answers to these and related questions with the focus on IPR policies of two ecosystems. Based on the outlined trade-offs, a number of specific points are offered. First of all, patent and copyright royalties may discourage use of standards within Open Source projects. For patent royalties, these effects can be also addressed outside of the standardization process by means of defensive and licensing patent pools or aggregated individual commitments. It depends on the cost and benefits of a particular project whether such solutions should be in-built ex-ante or created externally ex-post. Second, Open Source licenses with royalty-free patent grants might accelerate diffusion of specifications, especially if done within the reference implementations of SDOs, and encourage a new set of innovators to join the process. At the same time, it might discourage a set of pure R&D firms which heavily rely on royalties to recoup the investment. SDOs steering the process might want to consider the likely pool of innovators on both sides when launching a project. Third, given that we observe that both royalty-free and royalty-bearing layers are able to sustain innovation investments in the ICT, none of two approaches seems inherently superior. However, the choice can influence the make-up of innovators and technological trajectories. From this perspective, they both have their place in the innovation ecosystem. SDOs should, therefore, promote a choice between them on a project basis.

Open models for patents: Giving patents a new lease on life?

This essay investigates the development of peculiar models in patents: “Open patent” licenses, patent pledges, defensive patent strategies and the like. Although using patents in an unconventional way, these models do not dispute the very existence of patents, but rather the way patents are being used. These models are not entirely new—some have been around for over a decade—but seem to find an echo with the growing criticisms of the “broken patent system”. These models might be able to go beyond the pro‐patent/against patent debate, by reconciling exclusive/inclusive mechanisms and eventually reveal the strong plasticity of patents, offering patents a new lease on life.

Strategic Patent Acquisition of Patent Assertion Entities and Defensive Patent Aggregators

Defensive Patent Aggregators (DPA) are a new patent intermediary that aim to counter the threat of Patent Assertion Entities (PAEs) against technology practicing firms with its unique business mode...

Patent thickets, defensive patenting, and induced R&D: an empirical analysis of the costs and potential benefits of fragmentation in patent ownership

Patent thickets are sets of overlapping intellectual property rights that occur in fragmented technology markets. Their potential impacts on innovation have become an increasing concern in recent years. I estimate the direct and indirect effects of patent thickets on market value of publicly traded manufacturing firms. I find that patent thickets decrease the market value of firms, holding R&D and patenting activities of these firms constant. I also find that while firms do not change their R&D activities in response to patent thickets, they do reduce negative cost effects of patent thickets on market value through defensive patenting.

The Defensive Patent Playbook

After the dot-com bubble collapsed, non-practicing entities (“NPEs”) emerged on the patent playing field. Patent thickets and aggressive litigation by non-practicing entities turned the patent system on its head. As a result, companies developed an array of defensive options and strategies to counter the changing use of patents. However, the tactics needed to navigate the patent system evolved as the landscape shifted. The analysis below follows the chronological evolution of defensive strategies and sets forth a defensive patent playbook for practitioners in the patent field.The analysis below follows the chronological evolution of defensive strategies and sets forth a defensive patent playbook for practitioners in the patent field.This Note proceeds in four parts. Each Part reviews the development of the patent landscape as a necessary backdrop for an analysis of various defensive patent plays. The issues from each era cumulated to shape the current patent landscape. Part I evaluates early defensive methods used to navigate webs of overlapping patent rights. Part II describes the rise of NPEs, changes in substantive doctrines, and additional strategies introduced in the wake of the dot-com bubble. Part III discusses the current trend towards increased monetization, and assesses defensive options in the current landscape. Part IV explores defensive tactics that may become widely used in the future.

Defensive Disclosure of Patentable Inventions under Antitrust Enforcement

Why do large firms disclose patentable inventions defensively? We study IBM's disclosure and patenting activity and find that stronger antitrust enforcement and consent decrees limiting patent protection lead to more defensive disclosure. We extend our analysis to Xerox and show, using a differences-in-differences approach, a decline in patent propensity and an increase in patent scope in patent classes affected by the 1975 consent decree. We extend our analysis to include AT&T, the other exceptionally large firm with defensive-disclosure activity, and show that their patenting propensity declined under increased antitrust enforcement relative to other firms in the industry. Overall, we show how these firms used defensive disclosure as a strategy to balance the benefits of patenting with the costs of uncertain antitrust enforcement. Our results are especially relevant in light of the defensive patent strategies many firms employ to preempt and cope with patent litigation.

Are Prior User Rights Good for Software?

The America Invents Act (“AIA”) gave modern patent law in the United States a general prior user rights defense. The patent right is enforced via infringement litigation, but enterprises sometimes obtain patents for defensive purposes. Alternately, an enterprise that does not pursue a patent for an invention may choose to use the invention under trade secrecy protection. However, trade secrecy protection leaves a prior user vulnerable because a later inventor may patent the innovation and enjoin the prior user from further use. Styled as an infringement defense for a “prior commercial use,” the AIA defense replaces a decade old “earlier inventor” defense that arose from a software system patent infringement case and applied only for business method patents. This article assesses the AIA’s prior use defense from the perspective of software technology in view of the contentious issues around software patenting. It concludes, first, that courts should interpret the defense, or congress should alter it, to ensure its efficacy for software. Facially, the defense suggests a manufacturing motif, although its applicability to commerce in software may be stronger than suggested at first glance. Second, this article assesses the potential impact of a prior use defense on intellectual property protection in software. Some have posited that, as a general matter, the defense may create an incentive to favor trade secrecy over patenting. Regardless of the strength of that logic for other technologies, it seems lacking for software. While the use of the defense for software patent infringement will depend on the defense’s efficacy, there is also the question as to the defense’s impact on software patenting. One potential impact is on defensive patenting. Will software firms engage in less defensive patenting if there is an efficacious prior use defense?

"Patent Acquisition Services: A Market Solution to a Legal Problem, or Nuclear Warfare?"

We study the novel business models of patent acquisition services and assess their implications for intellectual property markets and patent litigation. Through qualitative case studies and descriptive analyses of patent and litigation data, we find that the recent innovations in the area of defensive patent acquisition business models are indeed distinct from the more offensive models and from practicing entities’ strategies in the markets for intellectual property. There are also substantial differences between the defensive business models themselves, in particular, depending on their for-profit vs. non- profit objectives, and public vs. private ownership. In the patent and litigation data, defensive acquisition services stand out particularly in terms of the higher quality of their patents and their impact on the settlement and timing of lawsuits. We finish by discussing the broader context of the patent wars, and how defensive patent acquisition business models may endogenously evolve or be forced to change through competitive and regulatory pressure. We conclude that in the IP industry, business models are an essential dimension of competition.

Complement or Substitute? Assessing Proprietary vs. Defensive Patent Litigation in Two Industries

Research has suggested that firms engage in a number of different patent strategies to protect and even gain competitive advantage. Two important generic patent strategies have been described as pr...

A Proposal for a Defensive Patent License

This is a draft op-ed for Wired, for purposes of discussion at Santa Clara University's November 16, 2012 conference,“Solutions to the Software Patent Problem.”It is a very brief discussion of the argument presented in my paper with Jason Schultz, “Protecting Open Innovation: A New Approach to Patent Threats, Transaction Costs, and Tactical Disarmament,” forthcoming 26 Harvard Journal of Law and Technology __ (2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2040945.Please do not cite or quote this draft. I look forward to talking with everyone at the conference about this idea!

An Early Response to a Recent Proposal for a Defensive Patent License (DPL)

Jennifer Urban and Jason Schultz have proposed a Defensive Patent License (the “Original DPL”). The Original DPL is essentially a standardized, networked, non-negotiated, portfolio-wide, royalty-free, patent cross license. The Original DPL takes advantage of the fact that certain companies and many individuals are primarily interested in pursuing patents for defensive purposes, e.g., to achieve freedom to operate. In this article, we focus on the perspective of a substantial portfolio company (an “SPC”) and we suggest modifications to the Original DPL that may make SPCs more willing to participate in it. After a brief summary of the Original DPL, we describe the advantages of a robust DPL if successful – i.e., if the DPL is reasonably widely adopted, at least by one industry. We then describe our suggested modifications making reference to a model Modified DPL; a primary suggested modification provides that, if a member withdraws, the withdrawing member’s license is automatically revoked, both inbound and outbound, at the end of a withdrawal notice period. We discuss potential criticisms of the Original DPL and Modified DPL and end with a brief comparison of the Modified DPL to the standardized, networked, royalty-free, patent license provided by the Open Invention Network. Appendix I provides a model Modified DPL that reflects our suggested modifications. Appendix II includes some additional/related ideas for potential further modification/supplementation of the DPL idea that are not reflected in the model Modified DPL set forth in Appendix I. For example, in modification 10 of Appendix II we note that instead of (or as a precursor to) the Modified DPL, companies could join a License On Transfer (LOT) agreement. Under the terms of the LOT agreement, every LOT User agrees that when it transfers a patent, the transferred patent automatically becomes licensed to the other LOT Users existing at the time of the transfer, except (i) a transfer that is part of a legitimate spin out or of a Change of Control to a Non-Assertion Entity or (ii) a transfer to another LOT User. The license would be subject to defensive termination. Such an agreement, i.e., a License On Transfer (LOT) agreement, would protect companies that sign the agreement from the extraction of patent rents by an entity (e.g., a non-practicing entity) to which the patent is sold. Appendix III provides a model LOT agreement.

<i>AstraZeneca</i> and the EU Sector Inquiry: When Do Patent Filings Violate Competition Law?

In its Pharmaceutical Sector Inquiry Report of 2009, the European Commission identified ‘defensive patent strategies’ as a potential anti-competitive abuse in the sense of Article 102 TFEU. Such strategies include in particular patent filings that may delay the market entry of generic drugs or obstruct innovation activity of other originator companies. Yet the Report refrains from a an in-depth legal analysis of such behaviour. With the objective of clarifying the legal implications of the Sector Inquiry Report, the article analyses the AstraZeneca judgment of the General Court of 2010 as a precedent for assessing the anti-competitive character of patent filings under EU competition law. Thereby, it is argued that patent law does not insulate filings against competition-law liability. Yet the judgment, which is limited to ‘static’ price competition between originator companies and generics producers, does not provide sufficient guidance for analysing harm to ‘dynamic’ competition in innovation among originator companies. In this regard, the article advocates a cautious approach, according to which a violation of EU competition law requires anti-competitive intent for which the party arguing a violation should carry the burden of proof. The article also refers to the Boehringer case, which was settled by the Commission in Summer 2011, after Boehringer agreed to give up its allegedly anti-competitive blocking patents.