Patent, Trademark & Copyright : Law Office of Kloss, Stenger & LoTempio

Even though a jury ruled that the software that runs the famous Facebook site infringed on the patent of Leader Technologies, Facebook still won the case. The reply appeal brief was just filed last month.

I think the issues in this case are relevant for all inventors. Inventors should be aware that disclosure of their invention prior to filing a patent application could invalidate the patent after it is allowed.

If you are an inventor and you have an idea and you want to "get it out there" into the market, you better file a patent application less than one year after you offer it for sale, publish it anywhere or use it in public.

On November 19, 2008, Leader filed a patent infringement suit against Facebook alleging infringement of United States Patent No. 7,139,761 (Leader Technologies, Inc. v. Facebook, Inc., (D.Del. 2008). Fed. Cir. Case No. 2011-1366). On July 28, 2010, the jury rendered a verdict that Facebook infringed all of the asserted patent claims and that the claims were neither anticipated nor obvious in light of the prior art. But the jury also ruled that even though Facebook directly and literally infringed on the patent...the patent was invalid because of 102(b) disclosures.

A patent is invalid under 35 U.S.C. § 102(b) if the patentee publicly used or offered for sale a product that embodied the patented invention more than one year before filing the patent application.

The jury found the patent invalid on the theory that Leader had publicly used the patented invention and offered it for sale more than one year before filing the patent application.

Leader Technologies is an innovative software company based in Columbus, Ohio. Chairman and founder Michael McKibben created Leader in 1997 with the goal of using "the internet as a platform for doing large scale communications and collaboration."

At that time, the internet was in its infancy, with the number of users measured in the mere millions. Leader recognized the untapped potential of the internet-"an unclaimed market space"-and moved to enter that marketplace.

Leader won the part of the trial that most people would think would be the most important: Leader won on "literal infringement" of 11 of 11 patent claims and no published prior art regarding Leader's U.S. Patent No. 7,139,761 (PDF).

In other words, the engine running Facebook is Leader's invention. But Facebook won because of a statutory bar called "on sale bar and public disclosure."

The case is now on appeal to the Federal Circuit Court of Appeals in Washington, D.C. The appeal briefs have been filed and a date for oral argument is going to be set. The Leader brief (PDF) argues that Facebook had no evidence of sale/public disclosure and confused the jury with court room theatrics. The Facebook brief (PDF) argues their evidence was "substantial."

It is pretty unbelievable that this case has not gotten more publicity.

The case raises many questions:

• Could  Mark Zuckerberg have invented Facebook in "one or two weeks" while studying for finals?
• Is it just a coincidence that Leader inventor's son Max was in the dorm next to Zuck?
• Could Zuckerberg have hacked into the inventor's son's Harvard email account that described McKibben's invention which Zuck just mimicked and launched a month later?
• Is there evidence that Facebook had to wait until the Leader patent published in the summer of 2004 to add the "groups functionality" in Facebook because they couldn't figure out how to do it without the patent?

But none of the questions of who invented really matter now because of the statutory bar. Perhaps Leader can overturn the jury's decision. The blog "Origin of Facebook's Technology?" breaks down the appeal briefs and points out all the weaknesses in the Facebook arguments. Perhaps the blog is a little one-sided, I wonder what the agenda is? But who knows what's going happen in this case.

The lesson every inventor should take away from this case is: file your patent application as soon as possible.

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Inventor Robert N. Noyce  

Born Dec 12 1927 - Died Jun 3 1990

Invention: Semiconductor Device-and-Lead Structure Integrated Circuit
Patent Number 2,981,877 (PDF)

Inducted into National Inventors Hall of Fame™ in 1983

Often referred to as the Mayor of Silicone Valley, Robert Norton Noyce developed the integrated circuit chip, or the microchip, that makes personal computers and other everyday technologies that we take for granted possible.

 Noyce not only left a legacy through his inventions, but also through mentoring fellow Silicone Valley entrepreneurs among the ranks of Steve Jobs.

This past week on the anniversary of his birthday, Google honored Noyce, making their Google doodle resemble an integrated circuit.

Invention Impact

Noyce was truly a visionary, revolutionizing the world of electronics; today, integrated circuits are used in almost all electrical equipment.

The invention was a major improvement over the manual assembly of electric circuits, and mass production made electronic devices cheaper and more common.

Now the integrated circuit is broken into many more categories based on what the chip does. For example, the microprocessor is an integrated circuit that processes all the information in a computer.

One of the most mind-boggling characteristics of these microchips is the evolution of the integrated circuit has continued in respect to the size; the most advanced circuits contain several hundreds of millions of circuit components on an area no larger than a fingernail!

The former Apple Inc. CEO told Leslie Berlin, author of "The Man Behind the Microchip",

"Bob Noyce took me under his wing. I was young, in my twenties. He was in his early fifties. He tried to give me the lay of the land, give me a perspective that I could only partially understand." The late Jobs continued, "You can't really understand what is going on now unless you understand what came before."

Inventor Bio

An Iowa native, he received degrees in Physics and Mathematics from Grinnell College (Iowa) in 1949 and a Ph.D. in physical electronics from the Massachusetts Institute of Technology in 1953. He studied the first transistors, developed at Bell Laboratories, in a Grinnell College classroom.

Up until 1956, he did research at Philco Corporation. After leaving Philco he joined Shockley Semiconductor Laboratory in Palo Alto, California, to work with transistor technology.

As research director of Fairchild Semiconductor, he was behind initial development of the firm's silicon mesa and planar transistor product lines.

In 1957 Noyce co-founded the Fairchild Semiconductor Corporation in Mountain View, California where he also served as research director until early 1959 when he became vice president and general manager.

In July 1968 he co-founded Intel Corp. another co-founder of Fairchild Semiconductor and a member of the Shockley laboratory staff. Noyce served as president of Intel until 1975 and chairman of the board from 1975 to 1979.

Noyce held 16 patents for semiconductor devices, methods, and structures.

After suffering a heart attack in his home, Noyce died on June 3, 1990.

Posted with the permission of the National Inventors Hall of Fame™

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The United States Patent and Trademark Office released its "Performance and Accountability Report" and one thing is obvious from the report is that the number of patent applications filed in the United States is going up. 

Record numbers of United States inventors and businesses find it more important than ever to protect their intellectual property by filing a patent application.

Here's a table from the report that shows the number of patent applications that were filed every year since 2007 has gone up.

So, over 500,000 new patent applications were filed in 2011. As much as the patent office wants to become more efficient the number of patents filed each year keeps the 6,664 patent examiners very busy.

With this great number of applications filed, the patent office discusses its goals and difficulties in trying to achieve a more efficient way to keep up with the huge numbers of patents filed every day in the United States.

In the report it is stated that the patent office has

"undertaken a series of initiatives to improve the speed and quality of patent processing in an ongoing effort to further strengthen the examination capacity of the USPTO."

For the first time in several years, the number of patent applications awaiting first action has fallen below 700,000. Even so doesn't a backlog of 671,409 seem like a pretty big number to you? Well it is, and even if the number of pending applications is much lower than it has been in the past, it still takes over two years for a new patent application to be looked at for the first time.

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