United States: Interview With Mark Lemley, Facebook As A Service Of Process, Fast-Track CTM Applications

Last Updated: November 26 2014
Article by Rolf Claessen and Kenneth Suzan

Podcast: Play in new window | Download (Duration: 25:53 — 15.0MB)

Mark Lemley chats about the Alice case of the US Supreme Court and his firm Lex Machina, Ken is telling us about Facebook as a service of process in legal proceedings, Rolf tells you about the new fast-track CTM applications! Have fun!

IP FRIDAYS

Co-Presenters:
Rolf Claessen and Kenneth Suzan

Episode 15 – November 14, 2014

RC = Rolf Claessen
KS = Kenneth Suzan
IF= Ian Floyd
ML = Mark Lemley

Hi. This is Mark Lemley from Stanford Law School and you are listening to IP Fridays.

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

RC: First of all I want to thank you for tuning in to IP Fridays. Our podcast has now been downloaded over 6,500 times and the number of listeners is growing and growing. I want to already hint that we will have a Christmas present for you. Actually, we are giving away original Christmas mugs from a German Christmas market in Cologne, my hometown, and we will have more about this in our first show in December. Also, our listener, Ian Floyd, left us a really nice feedback. If you want to leave us a feedback, you can go to www.ipfridays.com/feedback or simply press on the leave voicemail button on the right of your screen when you enter our Website.

IF: Hey guys, this is Ian Floyd from the Love & Sensibility podcast and I just want to let you know that I really appreciate your show. You know, people out there that have a business are going to run into situations when you are dealing with intellectual property – you know, patents, copyrights, that type of thing, even podcasts – and I just want to let you guys know that I really appreciate what you are doing out there and to tell everybody else that you need to listen to this show and download this show and keep it as one of the shows that comes up in your podcast iTunes list every week. So guys, keep up the great work.

RC: We have a link to Ian's podcast in the show notes for you.

I am very excited to have a special guest today who has been coined, "The Most Influential Academic Person in the IP Field". Today's interview is with Mark Lemley from Stanford University and he will tell us more about the most recent Alice case of the Supreme Court and he will tell us about his company, Lex Machina. Also, I will tell you about fast track proceedings for community trademarks but, before we jump into the interview, Ken has a really interesting story about Facebook as a service of process in legal proceedings in the U.S.

KS: Suppose that you are dealing with a certain legal issue regarding divorce, or child support, but cannot get in contact with the opposing party. What methods could you use to locate them? Facebook, the world's largest social media platform, is used for connecting with old friends, new friends, and family. They say that desperate times call for desperate measures, and one New York judge recently granted permission to serve legal documents via social media platform Facebook.

A New York Judge recently granted permission to Noel Biscocho to use Facebook to serve legal documents to his wife Anna Maria Antigua since there was no other way to contact her. The plaintiff had no way to trace his ex-wife since she had moved to a different address and changed her phone number. The case was heard before Family Court in New York before Staten Island Support Magistrate Gregory Gliedman. The judge ruled "despite the absence of a physical address, Biscocho does have a means by which he can contact...namely the existence of a social media account."

In February of this year, a US Magistrate for the Eastern District of Virginia, Thomas Rawles Jones Jr. also permitted service by Facebook – in addition to email at two known e-mail addresses, as well as service via a LinkedIn account. The Court in that case ruled "Service of process through all four means of service, two email and two social networking accounts ostensibly belonging to the defendant, comports with due process because it is reasonably calculated under the circumstances to provide defendant notice of this suit." The case is Whoshere, Inc. v. Gokhan Orun d/b/a WhoNear and WHONEAR.ME.

With technology evolving and becoming more intertwined in people's everyday lives, could social media become the most convenient way to effectuate service of process? If other judges accept this method of delivery, this trend may catch on around the United States, and even around the world. For the record, it's already been accepted in Canada, New Zealand, and before the English High Court under certain circumstances, and often coupled with other requirements such as publication in a newspaper or service via electronic mail.

RC: Thank you Ken for this really cool use of social media in legal proceedings. Now we will jump into the interview with Mark Lemley.

ROLF CLAESSEN'S INTERVIEW WITH MARK LEMLEY

RC: I am very excited to be on the phone with Mark Lemley today. Mark Lemley is often coined "The Most Influential Person in Intellectual Property" and he is currently a Professor at the Stanford Program in Law and he is also the founding partner of a law firm called Durie Tangri LLP and a couple of years ago he also founded Lex Machina Before we talk about his Lex Machina firm, I want to ask Mark Lemley a little bit about the most recent Alice decision. So, first of all Mark, thank you very much for being on the program.

ML: Well I am happy to be here.

RC: So, what in your point of view are the most important take-aways from the Alice Decision rendered by the Supreme Court a couple of months ago?

ML: Well, I think that Alice does a couple of things that are very significant. The first thing that it does is it cements as the test for patentable subject matter the frame work that the Supreme Court set out in Mayo two years previously and I think a lot of patent lawyers had more than half persuaded themselves that Mayo was an aberration and it couldn't really be the right result and now it seems that it is not only confirmed when it comes to medical diagnostic patents, but it is the rule we apply across all areas and when you apply that rule, the Court says in Alice that if the claim is directed to an abstract idea, and all you do to that abstract idea is you implement it in a conventional way, such as by using standard computer hardware, that invention is not patentable subject matter. I think that is quite significant because a large fraction of the software and business method patent claims that are being litigated in the United States today fit that description. We have taken a basic idea, a problem we want to solve, and rather than filing a patent claim that covers a particular algorithm or a particular solution to that problem, the claims are phrased in the form of any computer programs to achieve this result; programs to reach this particular outcome. In the wake of Alice, we have now seen in the software and business method world fifteen lower court decisions. In thirteen of those lower court decisions the courts have invalidated the patents and in the other two they have said, "Well, procedurally it is too early to make this decision but come back later." So, the record of these patents since Alice has not been very strong. That doesn't mean that I think all software is unpatentable, but it does mean that my guess would be that the majority of the software and business method patent claims that are being asserted in court today are going to be held invalid.

RC: Yes, and the USPTO recently, or actually right after the decision, issued a statement or kind of rules for their examiners for assessing these kinds of patents in the field of business methods and software and the rules seem to be very similar to the rules in Europe. In Europe, you first look at the claim and see which features are of technical nature and then use these to assess inventive step or, in the U.S. they would say obviousness, and the rules in the U.S. are now quite similar. What is your point of view about this?

ML: Yeah, I do think there has been a substantial move in the United States towards the European approach. If anything, I think as we see Alice being applied in the courts, the U.S. might now be more restrictive when it comes to software patentable subject matter than Europe is because the leeway we give for technical effect seems to be much more limited. The courts have been saying, "Well, if all you are using are standard pieces of computer hardware, even if you have programed them in a new way, your invention as a whole is not going to be patentable."

RC: Right, for example, in Germany there was a case where a robot for placing welding spots in the car manufacturing industry to put cars together, the robot was known but the algorithm was changed and it was just a piece of software that made the robot make more precise welding spots. I think if I applied the rules by the USPTO, that would really not be patentable because it was just a piece of software. What is your opinion?

ML: So, I think that may be right. And one of the things that we need to figure out as the court decisions continue, are: What are the logical limits of Alice? I think if you take seriously what Alice says, we would say that was unpatentable because the robot hardware technology was well-known. With that said, I do think that at some point when the courts confront inventions that really do look more like real technology, that they are going to start putting limits on the Alice principal because, if they don't, if you take it to its logical extreme, virtually nothing is going to be patentable because, you know, you can reduce a wide variety of claims to the basic idea and then say well I took this idea and I implemented it by using materials out there in the world.

RC: Right. Okay. So, another aspect that struck me is that a lot of the large companies in the U.S., like Google and Apple and the like, they have large portfolios of patents and many of these patents are not entirely software patents, some are entirely software implemented, and some are just business methods. Are these all worthless now, in your opinion? Probably not, or do you think that the companies will enforce them, or not? Will they be write-offs, or not? What do you think? Do you have any opinion about this?

ML: I think there is going to be a much greater premium on how the claims are drafted. I think there are a number of what are just very broad business method patents out there or patents that are written without a lot of technology underlying them that are not going to be salvageable after Alice. But I also think that there are a number of patents in which there is real advance in computer technology in software in a new algorithm and I am at least hopeful if the patent claims that are being asserted are directed to those algorithms are limited to those technical improvements that courts will find ways for them to survive. So, I have argued in a paper last year that part of the problem that the court is trying to address is this problem of functional claiming; of trying to claim the problem that you solved, rather than the particular way in which you solved the problem. So, I think we will see the growth of narrower, more specific claims that try to incorporate more clearly the new algorithms that people have developed, we may see more use of means plus function claim language, so, you know, I think all of the companies in the software world need to take a look at their portfolio and say, not only going forward, how am I drafting these claims, but do I have patents where some of the dependent claims may be more likely to survive than the independent claims. Do I have a real technological invention here that I could go back and claim in a reissued proceeding for example. I think for the companies that are thinking of asserting patents, that becomes really important. Now, I also think that in the Silicon Valley, a lot of the large patent owners are not companies who ever really planned to assert the patents but they have the patent portfolios primarily for defensive or trading purposes and they may not be as concerned about this. I suspect that the "Googles" of the world, even though they are large patent owners, look at the Alice decision as a good thing because when they show up in court, it's primarily as a defendant in a suit filed by a patent troll and those patents are much more likely to be invalidated.

RC: Right. Well, thank you very much for your insights about Alice. I also promised our listeners that I would ask you about your company, Lex Machina. Can you tell us a little bit about the company? When it was founded? Why did you found it? What does it do? How does it make our lives easier?

ML: So, I started this project in 2006 as an academic research project. Something called "The Stanford IP Litigation Clearing House." The basic motivation was that we were starting to see all of the debates in the United States around patent reform and people were throwing around numbers in those debates – Patent trolls are 50% of all lawsuits. No, patent trolls are only 2% of all lawsuits – and I felt that this was all "anec-data", as I call it. It's not based on real statistical data. It was based on people's personal experiences masquerading as data and that there has to be a kind of knowable answer to these questions. So we started collecting information on every IP lawsuit filed in the United States since the year 2000. We quickly realized that this was a project of enormous scope. That there was so much information that we had to automate as much as possible of the data collection and analysis if we were going to hope to keep up with all of the cases that were being litigated. So, we ended up spinning it out as a private company in 2010 called Lex Machina and that company provides both law firms and corporations with access to data and information about patent litigation that is helpful in anything from pitching a client for a case to knowing when you have been sued in a new jurisdiction, what experience the judge has with patent cases, when do they do their Markman hearings, does your opponent tend to settle cases or take them to trial, and things of that nature. So we find that law firms use this tool to get intelligence about the court, about their opponent, and about their opposing counsel. We also find that companies are interested in more analytic work. So they are interested in benchmarking themselves against their competitors: Am I being sued more often? Am I settling more or less of my cases? And also in some predictive analytics: Of the 50 cases that I have pending, which three are more likely to go to trial? Or which ones are the biggest risks for me? And that allows people to make some more informed judgments. Law has been for a long time a discipline that has been resistant to efficiency to big data and to the kinds of optimization that have swept through the rest of the business world. I think we are seeing a real revolution, particularly starting here in Silicon Valley, in legal technology and in ways to improve and make more productive legal services and Lex Machina is one of the leaders in that endeavor.

RC: Yeah, very interesting. So, what kinds of clients do you have mostly with Lex Machina? Is this mostly law firms? Big ones or small ones? Or are these the large corporations? Or are these like mid-sized companies? Who is mostly paying for your services?

ML: So I would say that most of the clients are law firms. A fairly large share of the big law firms in the United States are clients. But we also have small firms and mid-sized firms. The subscription price can differ depending on the size and the number of attorneys. But most of the clients are law firms. But we have a number of corporations as well and those tend to be corporations that are heavily involved in some aspect of technology and so have a lot of patent suits or a lot of patents to worry about. The companies who have started in this area were the Silicon Valley technology and software companies. They were naturally a logical market for big data and analytics but we have branched out into the pharmaceutical industries and a number of other patent owners. We hope ultimately to expand the product beyond just patent law so we have been collecting data and copyright and trademark law as well and we may move into other areas.

RC: That's very interesting. Do you think about expanding to other territories and legislations? For example, also collecting information about case law in Europe and Germany?

ML: Yes, I think that is definitely something we are interested in doing. It comes with some challenges, both the language challenges but also different jurisdictions are at very different stages in whether or not their case records are online and available in a searchable form but our hope eventually is to reach beyond the United States into Europe and places like China and Japan where there is a great deal of interest in patent litigation and very little rigorous information about what happens.

RC: Yes, you mention China. Most patents these days are filed in China and the trend is not stopping, it's probably accelerating, so I think that would be probably a big market for you to be in, right?

ML: Yes. I think it is a very important market and I think, not just for Chinese companies, but companies in the West are very interested in what is happening in China. With the IP system it is very much in flux and it is an area in which I think if we could have access to the data, it would be a great thing.

RC: Well, thank you very much for being so kind as to spend time with me on the phone. It has been a real pleasure talking to you and I hope we can hear from you sometime in the future with updates on software patents or any other topic that might be interesting. Thank you very much for your time.

ML: Well, thank you. It was my pleasure as well.

RC: If you want to find out more about Mark Lemley, please go to www.ipfridays.com/marklemley.

Recently, OHIM has announced that they will now process community trademarks a little faster if you want. They introduced a fast track program. The fast track program will be available starting from November 24th. Currently, CTMs are published around four to eight weeks after the fees are paid. In my personal experience, sometimes that can be much, much faster. I had cases where the trademark was published actually just a week after having paid the fees. But on average the OHIM might be correct so now they are promising to cut this time in half if you are selecting the goods and services from a database of pre-validated and pre-translated terms and applicants would have to pay the application fee immediately after submission of their application. Also, the applicant should not trigger any deficiency finding at the time of submission or during the examination by the OHIM itself. If you want to read more about this you can go to http://www.ipfridays.com/fasttrackohim.

Thank you for listening and tune in next time.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions