Ride the Lightning
Cybersecurity and Future of Law Practice Blog
by Sharon D. Nelson Esq., President of Sensei Enterprises, Inc.
Recommind's "Predictive Coding Patent" Generates a Firestorm
June 15, 2011
After Monday's post about Recommind's "predictive coding patent," there has been a lot of feedback. I got a note from Ron Chichester, an IP attorney in Texas whom I met once at ABA TECHSHOW. Here's a portion of his note regarding Recommind's recent patent, #7,933,859:
"According to 35 U.S.C. 282, a patent enjoys the presumption of validity. The validity of a patent can be overturned, but only with clear and convincing evidence according to the U.S. Supreme Court, which reiterated that old standard in Microsoft v. i4i just last week.
Moreover, patent cases are notoriously expensive (usually in the high 6-figures and low 7-figures). It is that clear and convincing standard and the cost of litigation that makes overturning a patent so difficult, and enables patent trolls and companies like Recommind to press for licensing royalties even when the patent appears thin.
Perhaps more instructive of Recommind's intentions are found in the prosecution history of the '859 patent. For instance, the filing date of the application was on May 25, 2010 and the patent issued on April 26, 2011. That is stunningly fast. Normally, the backlog in that art unit at the Patent Office is between 5 and 7 years. Why such a quick prosecution? Because Recommind filed a "Petition to Make Special" along with the other filing papers. Their patent attorney bungled that petition, but the Patent Office gave her leave to amend and perfect, which she eventually did. This enable accelerated prosecution within the Patent Office. Normally, the only time you do this (expensive) process is so that you can sue someone sooner rather than later. In other words, Recommind clearly had lawsuits in mind *before* they filed that patent application.
In your blog posting, you made it seem that no one would think that the patent would hold up in court. That is a bit cavalier. When I get involved in a patent lawsuit as a defendant, the first think that I look at is the plaintiff's balance sheet. Do they have enough money to see a patent lawsuit to fruition? If so, then you have a problem– regardless of whether you think the patent is worth a damn. So much of a problem that settlement, even for a hefty sum, might be the way to go."
Best wishes,
Ron
Ronald Chichester, P.C.
http://www.txcomputerlaw.com
When I wrote Ron back, I was carefully and appropriately humble in expressing my ignorance of patent law and thanked him for his insights. However, I did tell him that there are very major players in this arena who would have no problem with undertaking high-priced litigation rather than pay license fees for a patent which they don't believe to be valid. I continue to predict a challenge will ensue.
Stay tuned – tomorrow, I will post a comment from OrcaTec.
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