Patent Quality Initiative
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`Outreach (/actions/outreach)
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`Friend of the Court Briefs (/actions/friend of the court
`briefs)
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`IPRs Filed (/actions/iprs filed)
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`Amicus Briefs
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`Court rulings play a critical role in helping to address the problem of asserting
`low quality patents. The Patent Quality Initiative submits “amicus” – or “friend
`of the court” – briefs on issues of broad importance and interest in court
`cases.
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`Courts are especially important because they have the authority to impose
`costs and, in appropriate cases, issue more significant sanctions against
`NPEs who abuse the patent system.
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`Amicus briefs serve to inform courts of the perspective of small and large
`companies that rely on strong patents and aim to assist in the development of
`legal rules and standards that will improve the quality of future patents and
`decrease frivolous suits.
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`Below are summaries of recent friend of the court submissions from the
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`http://www.patentqualityinitiative.com/actions/friend%20of%20the%20court%20briefs
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`5/4/2015
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`Patent Quality Initiative
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`Patent Quality Initiative.
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`October 21, 2014: PQI files Friend of the Court Brief in
`Intellectual Ventures (IV) v. Capital One Case
`(/~/media/pqi/files/2014-10-21 - 14-1506 - askeladden amicus
`brief.pdf?la=en)
`PQI filed its amicus curaie, or friend-of-the-court brief, through Askeladden
`L.L.C. in the United States Court of Appeals in the Intellectual Ventures (IV) v.
`Capital One case. The brief supports the lower court’s decision holding that
`two patents owned by IV are invalid because they address routine online and
`computer-based financial services, and as a result impermissibly patented
`abstract concepts implemented by computers.
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`The first patent claims the idea of tailoring communications based on
`information specific to a user viewing a website. The purported invention
`selects a set of data that most closely aligns with a user’s profile and web-
`browsing history, and displays that data on a webpage for the user to see. The
`second patent claims the basic practice of budgeting — i.e., helping credit
`card users with financial planning. The user's credit card information is
`conveyed from a point-of-sale device to a processor that categorizes the
`purchases being made and stores those purchase amounts in a database. If
`the amounts in a category exceed a pre-set spending limit, the user may be
`required to give specific approval for a particular purchase.
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`PQI argues that using a computer or the Internet to perform simple,
`fundamental processes long in use are not patent-eligible under Section 101
`of U.S. Patent Law given the ubiquity of computers and the Internet. The brief
`also argues that courts should consider a plaintiff's litigation behavior and
`infringement theories when deciding whether their patents are invalid. Finally,
`PQI points out the importance of having courts address the issue of whether a
`patent is invalid because it covers an abstract concept as early as possible.
`More than half of the cost of defending patent litigation is typically incurred
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`http://www.patentqualityinitiative.com/actions/friend%20of%20the%20court%20briefs
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`5/4/2015
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`Patent Quality Initiative
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`during discovery, and failure to resolve this basic question at the outset of
`litigation places pressure on defendants to settle simply to avoid such
`discovery costs, leaving invalid patents intact.
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`Download the Friend of the Court Brief (/~/media/pqi/files/2014-10-21 - 14-
`1506 - askeladden amicus brief.pdf?la=en)
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`September 15, 2014: PQI Files Friend of the Court Brief
`in IV v. JPMC Case (/~/media/pqi/files/jpmc amicus brief sept 15
`2014.pdf?la=en)
`Right to quickly appeal a court's stay decision when a CBM petition has
`been filed with the USPTO but not yet acted on.
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`In this case PQI focuses on the narrow issue of a party’s right to immediately
`appeal a district court’s decision granting or denying a motion to stay the
`litigation before the United States Patent and Trademark Office (USPTO) has
`acted on a petition for a covered business method review.
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`This is an important issue that Congress sought to address when it created
`the covered business method (CBM) procedure, Section 18 of the America
`Invents Act (AIA), as an alternative to costly district court litigation. PQI
`believes that Section 18 clearly grants a party the right to immediately appeal
`a district court’s decision granting or denying a motion to stay litigation
`pending CBM review before the USPTO has granted (or denied) the
`corresponding petition to institute the CBM.
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`Intellectual Ventures (IV) asserts that the interlocutory appeal provision of
`Section 18 only applies after the USPTO has granted a CBM petition, and
`does not apply during the roughly six month period between filing a CBM
`petition and the USPTO acting on that petition. IV’s interpretation contradicts
`the USPTO’s interpretation and the interpretation applied in every district court
`order regarding contested motions to stay litigation pending CBM review
`(more than 40 orders have been issued). (The prior sentence is based on
`information collected as of September 22, 2014.)
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`http://www.patentqualityinitiative.com/actions/friend%20of%20the%20court%20briefs
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`5/4/2015
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`PQI filed its brief to explain why the appeal should be permitted as soon as a
`petition to the USPTO to challenge an issued patent using the CBM procedure
`is made, even if the USPTO has not yet acted on the request at the time of the
`motion to stay the infringement proceedings.
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`The Federal Circuit will likely issue a decision on this issue next year.
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`Download the JPMC Friend of the Court Brief (/~/media/pqi/files/jpmc amicus
`brief sept 15 2014.pdf?la=en)
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`September 3, 2014: PQI Files Friend of the Court Brief
`in Ultramercial Case (/~/media/pqi/files/ultramercial brief sept 4
`2014.pdf?la=en)
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`What subject matter is eligible for patenting and when should a court
`decide that issue?
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`Ultramercial, LLC and Ultramercial Inc. (Ultramercial) obtained a patent on the
`idea of inserting paid advertisements into online content and then providing
`that content to people browsing the internet for free. Ultramercial sued Hulu,
`YouTube, and other companies, claiming that they were infringing
`Ultramercial’s patent.
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`In August 2010, a federal court in Los Angeles ruled that Ultramercial’s patent
`was invalid because it only covered an abstract idea rather than a patentable
`invention. Ultramercial appealed to the United States Court of Appeals for the
`Federal Circuit, which hears all appeals of patent infringement cases. The
`Federal Circuit twice ruled that Ultramercial’s patents were valid, but each
`time the Supreme Court directed the Federal Circuit to reconsider its decision.
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`PQI has filed a friend of the court brief to explain why courts should decide,
`very early in the case, whether a patent covers subject matter that may be
`eligible for a patent or is just an abstract idea that is not eligible for
`patenting. The brief notes that many companies use patents not to innovate,
`but to start lawsuits with the goal of settling the case for a large amount of
`money. Unfortunately, this strategy is often effective because of the very high
`costs of going to court for many companies. The brief argues that courts
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`http://www.patentqualityinitiative.com/actions/friend%20of%20the%20court%20briefs
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`5/4/2015
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`should curb these extortive tactics by simply evaluating the patent soon after
`the lawsuit begins and determining whether or not it covers subject matter
`eligible for patenting.
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`The brief also argues that Ultramercial’s patent is invalid because it only
`covers an abstract idea. Putting commercials into online content is the same
`business model that television and radio have long operated on, and nothing
`in the patent adds to or builds upon that idea in any meaningful way.
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`The Federal Circuit will likely issue a decision in the coming months.
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`Download the Ultramercial Friend of the Court Brief
`(/~/media/pqi/files/ultramercial brief sept 4 2014.pdf?la=en)
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`Company L.L.C.
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`http://www.patentqualityinitiative.com/actions/friend%20of%20the%20court%20briefs
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`5/4/2015
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