What are "Risk Patents", and how can you find and use them to improve your IP position? Case study based on Apple's Siri technology
Summary - We introduce the concept of ‘Risk Patents’, and run a case study based on Apple patents for their Siri technology. This soon leads to finding Risk Patents that have been asserted against Apple.
2 Sept 2021. Patent litigation is increasing at the moment, with White and Case reporting in March 2021 that US patent litigation cases grew to around to 4,000 cases in 2020, an increase of 13% from 2019.
Patent litigation can be broadly divided into two groups, namely:
litigation between companies both supplying goods and services in the same area of technology
litigation between patent investors (which can include universities) and technology companies.
In general, the first category of litigation is based on patents originally filed by these companies, while the second category of litigation tends to be based on patents acquired from the original applicants. But there are many variations to these general rules - technology companies often buy companies from other companies, and in some cases (particularly universities) patent-holding entities assert patents they developed themselves.
The success of patent litigation ultimately comes down to the strength of the patent(s) being litigated - how strong the claims are, and how well the claims read onto the products or services being commercialised by the technology companies. In practice, this requires a careful review by patent lawyers, but such review is expensive, and there is often a preliminary step of finding the best patents to look at.
There are over 100 million published patents, and a big number of these patents are in popular areas. So finding the best patents to look at is a process in itself, but a process complicated as there can be many thousands of potential patents to look at in popular areas.
Yet this process can be worth doing, both in relation to:
Patent investors, which may be looking for patents to assert against technology companies.
Technology companies, which may be looking for patents that may be asserted against themselves - if they can find them first, they can buy or license them, and so reduce the risk of unwanted lawsuits.
We could call these patents ‘Risk Patents’, because they could be a risk to technology companies. We could define Risk Patents in the following way:
Active patents that may claim a monopoly on valuable commercialised technology, whether this technology is used by your own company, a competitor, or a licensing prospect.
Said patents may be owned by your company, a competitor, or another party.
The combination of the claimed monopoly and the ownership of the patent leads to the potential to create a legal risk to a user of the technology - which could be your company, a competitor, or a licensing prospect.
We can assess patents we find by the above criteria.
How to find Risk Patents - a case study on patents related to Siri filed by Apple
This is where Ambercite can help, due to its ability to find similar patents to one or more starting patents, without limitations on keywords or class codes. In this case, we will look for similar patents to a group of patents filed by Apple for spoken digital assistants, i.e. Siri.
To run this search, I found a set of 57 patents owned by Apple for ‘digital assistants’ with a spoken capability, i.e. Siri. The earliest of these had a priority date of November 2004, being US7779357 Audio user interface for computing devices.
We should note that the choice of starting patents can make a big difference to the outcomes of the search - the recommended approach is to find a set of patents filed by a technology company covering a tightly defined technology. However, due to the way that Ambercite works, such a preliminary search does not need to be perfect , although obviously as good as you can.
We added these 57 patents into Amberscope, and ran a Licensing Search for the most similar 250 patents with a priority date after November 2004: (only a handful of the query patents are shown in the image below:
This returned 250 patents, as requested. 177 of these patents were filed by Apple, including the first 111 patents in the list.
Are these patents Risk Patents? It would depend on your perspective. From the viewpoint of Apple, these are not - they are already owned by Apple. From the viewpoint of a competitor, they might be regarded as a Risk Patent, which they may consider as part of their FTO analyses. And from the viewpoint of a patent investor, they can probably ignore them as it is unlikely that Apple will sell the patent to them.
Apple patents can be filtered out of the results:
Leaving 73 patents not owned by Apple. The first few of these 73 patents looked like this:
The first of these patents were owned by NewValueExchange Ltd, which is based in the UK. They may be a patent investor, and they may consider selling this patent to any one of Apple, their competitors or other patent investors. So this has the potential to be a Risk Patent, depending on the objective and plans of the current owner.
Next on the list is a patent initially filed owned by Voicebox Technologies, which is now owned by Nuance Communications, which is now owned by Microsoft.
But we can go further down the list.
The patent owners listed by Ambercite tend to be the original owners, but if we investigate this patent further, we it turns out that is is now owned by Samsung. We make this easy to check by providing links within Ambercite to the patent within Google patent, which lists the current assignee:
This is an example of how a technology company has acquired a potential patent originally filed by someone else, in order to improve its patent portfolio. This has the ability to become a risk to Apple, depending on the objectives of Samsung.
Working my way down the list, we also see some patents filed by Google - again these patents have the potential to be a risk to Apple, depending on the objectives of Google.
But we soon end up with these two patents, which both look relevant to Siri:
Which are now owned by Portal Communications LLC, which is based in Texas.
Google patent also notes that these patents have been litigated. We were able to find out that this patent, and two others, were litigated against Apple (and also Microsoft).
In a new Eastern District of Texas complaint, Portal Communications, LLC has accused Apple (2:18-cv-00061) of infringing three patents generally related to returning search results responsive to both spoken prompts and location information. The Dominion plaintiff targets a long list of Apple computing devices “running iOS 3.1 or later and/or MacOS Sierra 10.12 or later”, including smartphones, smart watches, laptop computers, tablet computers, and desktop computers, as well as Apple TV, the HomePod, and certain iPod models
Public domain information on this case is very limited, but Unified Patents reports here that the litigation was filed on 8th March 2018, and ended just five days later on 13th March. This suggests that the case may have been settled, obviously to the satisfaction of Portal (and also Apple). This in turn suggests that the suit had some merit.
In other words, these two patents meet all of the suggested criteria of Risk Patents:
Active patents that may claim a monopoly on valuable commercialised technology, whether this technology is used by your own company, a competitor, or a licensing prospect.
Said patents may be owned by your company, a competitor, or another party.
The combination of the claimed monopoly and the ownership of the patent leads to the potential to create a legal risk to a user of the technology.
So in other words, by:
Starting with a set of patents filed by Apple for a spoken voice assistant,
Running a search for similar patents in Ambercite
Filtering out the Apple patents from the results
Reviewing the remaining patents, looking up the current owners, and then making an assessment of the relevance of the patents, and whether the patents are owned by another technology company in the space, i.e Nuance/Microsoft and Google in this case - or owned by another company that may see the patents as a licensing opportunity.
We soon ended up a pair of ‘Risk Patents’ relevant to this space which have been asserted against Apple, and possibly with success.
Who might use these findings?
Identification of Risk Patents might be useful to:
Technology companies, (Apple in this case), who might run a FTO analysis on this patent, or offer to buy to either reduce the risk to itself, or to strengthen its position w.r.t. to its competitors.
Competitors (to Apple in this case) who might also run a FTO analysis on this patent, or offer to buy it to either reduce the risk to itself, or to strengthen its IP position w.r.t. to its competitors such as Apple.
Patent Investors, who might see a licensing opportunity.
The current patent owner, who might see an opportunity to either license or sell these patents.
Variations of this approach
There are a few different ways we could run this approach:
We could vary the starting patents, even one at a time if this helps.
We could search up to the 2000 most similar patents
We could combine the results from different searches, which could be scaled up by using the API version of Ambercite.
We could export the results into another patent database that has current assignee and patent status information, and analyse the patents this way.
But in every case, the starting point would be the list of similar patents available from Ambercite - followed by a careful review of the results.
How does this differ from conventional FTO searching
Searching for Risk Patents in this way is not intended to replace conventional FTO patent searching, but is instead intended to scale it, but looking for potential FTO risks for a group of patents, rather than individual patents.
This, in turn, makes it more suitable for say:
A company looking to find risk patents it can lever against its competitors if required
A company double-checking for risk patents for its own technology, before these patents are used against itself
Patent investors looking to target specific companies, for example, companies that have successfully commercialised technologies.
Would you like to try this for yourself?
Ambercite does offer free trials in a scaled-back version, but only 25 results are shown, and you really need to go beyond the first 25 patents to get the best outcomes from this approach. For this reason, I strongly suggest that you contact us if you want to test this for yourself, and we can arrange a trial of the full version:
*Thanks to www.gotcredit.com for the keyboard image