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Oracle 弁護士、Sr. Patent Counsel & Innovator エリック・サットン


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― What is your main role and responsibility at Oracle IP team?

For the Oracle team, I manage a significant patent portfolio for various business units relating to cloud analytics, Java, business applications, and the data and marketing clouds. I am also responsible for promoting patent quality both within the company and outside of the company. Within Oracle, I conduct company-wide patent quality studies to find and fix problems in our patent portfolio. Outside of Oracle, I conduct patent quality studies to shed light on the importance of quality attorney workmanship and big data analytics on the patent practice.

―You are (were) a member of USPTO roundtable. Do you have any example case wherein you provided an observation to USPTO or other entities?

At the second Patent Subject Matter Eligibility: Roundtable, the first hosted in California, I was invited by the USPTO to speak about questions concerning the legal contours of eligible subject matter in the U.S. patent system. During my talk, I focused on the intersection of patent eligibility under 35 U.S.C. 101 and software-related technologies. My approach in this regard is balanced in that it emphasizes several aspects of the patent eligibility landscape that have actually improved post-Alice, before addressing the high level of variance in the post-Alice analysis at the USPTO.
After the Roundtable, in the Patent Eligible Subject Matter: Report on Views and Recommendations from the Public, the USPTO cited me for the fact that “forum-shopping” occurs when practitioners steer their claims towards USPTO examiners (via art units) that are less likely to raise patent eligibility issues.
Examples of using data-driven approaches to steer patent prosecution at the USPTO are prevalent on my blog as we continue to learn more about this space.

― Please describe the overview of recent Oracle’s patent portfolio and feature.

Oracle’s patent portfolio covers a wide variety of technologies in both the software and hardware spaces. If you search for emerging technologies across all companies in the software space, or look at the technologies Oracle markets in our products, you are likely to find a robust Oracle patent portfolio behind them. This results from identifying key concepts that are important to the various lines of business and evaluating innovations developed by Oracle’s engineers.

― What is your policy for developing/managing your patent portfolio? What is the most important thing for building your patent portfolio?

The most important thing about building a strong patent portfolio is to have clear policies and efficient tools in place that ensure complete coverage of the company’s technology stack, while proactively seeking out and correcting the inevitable limitations of aspects of manual review and processing, including attorney recommendations or approaches that may be based on incomplete or insufficient information.

― Why use PatentAdvisor on your patent portfolio management (includes USPTO Office Action handling)?

PatentAdvisor fills several key gaps that would otherwise make intelligent portfolio management an unattainable goal. PatentAdvisor is well-known for providing examiner metrics that offer insights not just on when to abandon a case, but also how to approach a case, what amendments to propose in an examiner interview, and whether or not to file an after-final reply or pre-appeal brief for a particular examiner.
What is less known is that PatentAdvisor provides tools for automatically alerting the portfolio manager of patent prosecution patterns that are either ill-advised according to the company’s policies, or require consideration and approval by the portfolio manager. This allows the portfolio manager to keep a close eye on the patent portfolio and react quickly if those alerted patterns are occurring without a discussion between the prosecutor and the portfolio manager.
PatentAdvisor also allows the portfolio manager to full-text search for cases where similar arguments were made, or do a pattern-based search for similar circumstances, and evaluate the likelihood of success for those arguments or circumstances.

― Through decision making with fact data based predictive analysis:
Do you think you got relevant result on the quality of your patent portfolio?
Do you think it helped your team Improve time and cost management?

Yes, the number one benefit of PatentAdvisor is being able to lead off with the right strategy directed to the right person at the patent office. This ensures that patent prosecution never skips the track into unexpected and, in some scenarios, possibly unsalvageable territory, and instead it keeps the strategy focused where it needs to be. This benefit allows the applicant to obtain the best patent rights available for the invention, and, to most applicants, that benefit is invaluable.
The tool also allows those rights to be obtained more efficiently, not just by abandoning cases that have no hope but also by fast-forwarding to the end of the patent prosecution movie for cases where the interim back-and-forth with the examiner is mostly predictable. Applicants not using these tools often waste cycles (and, in turn, thousands of dollars at a time) on amendments that had almost no chance of success.

― Do you think you (and your team) got new insights through fact data based decision making in the process of US patent prosecution?

Yes, for example, we detected some cases where outside counsel were filing claims that, statistically, had little chance of allowance. We addressed these claims with preliminary amendments and trained the outside counsel on how to avoid these pitfalls going forward. Each application where we corrected the course early likely saved the company thousands of dollars in unnecessary office actions and RCEs.

― From the perspective of patent litigation, please tell us what is the most important point when assignee get granted a high quality patent and build strategic patent portfolio?

The state of the union of patent quality is actually pretty low. The allowance rate for cases filed since 2010 in the U.S. is 76%, and the overall allowance rate is at an all-time high. An assignee should currently not assume that a granted patent is high quality just because it was granted. Instead, the assignee needs to have checks and tools in place to ensure that, for them, all granted patents are of high quality. Low quality patents will not withstand the very high scrutiny of litigation or post-grant review.

Patent quality needs to be taken into account more often when determining the value of a patent in a portfolio. Here, I define “patent quality” as (a) the value of the relative contribution of the patent claims to the products or services covered by the patent claims, (b) discounted proportionally by the likelihood that a patent will be held invalid, uninfringed, or unenforceable in a final court proceeding, and (c) further discounted by the total legal cost to reach the final court proceeding in light of the likelihood that such a proceeding will be needed to obtain a remedy.

― You are invited as one of the speakers of panel discussion on incoming seminar in Japan. Do you feel difference between US and JP companies regarding mindset or strategy of patent litigation?

In the U.S., patent litigation is extensive and expensive but has high potential rewards. In Japan, patent litigation seems to be more compact and cheaper but with lower potential rewards. In both patent systems, patentees win less than half of the time. As a result, I think U.S. companies tend to approach patent litigation hesitantly as a matter of last resort, but U.S. companies do rely on the patent system to resolve the top-line disputes that cannot be resolved otherwise. While the patent system in Japan seems to be capable of resolving disputes more efficiently, companies do not seem to often rely on the system to resolve top-line disputes.
As a result, I think Japanese companies tend to rely more on keeping core technologies secret; whereas, U.S. companies often patent core technologies.



Eric Sutton

A Senior Patent Counsel at Oracle, Adjunct Professor at Chicago-Kent College of Law, author of the textbook, “Software Patents: A Practice Perspective,” and owner of the Patnotechnic blog on the big data analysis and automation of patent work, which is where my passion lies.

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