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USPTO Recap – 7 Patent Issuance Facts of 2016 [INFOGRAPHIC]

Patents have gained importance as intangible assets in an increasingly competitive technology landscape. Consequently, patent filings have shown a more remarkable increase in numbers in the past decade than ever before. In many cases the worthiness and market position of a business is valued by the IP portfolio it holds. However, patents are expensive to maintain and a company’s IP assets need to be actively managed.

This infographic features the top patent awardees of 2016 in different segments based on USPTO data. This segmentation can serve as a reference point for performing deeper analysis to support patent prosecution strategies, product marketing strategies, as well as global acquisition and licensing strategies.

uspto-recap-7-patent-issuance-facts-of-2016

MaxVal provides custom range of landscape research and analysis services customized to fit your specific use case. We work with your in-house staff or through external legal counsel. Reach us at bd@maxval.com for your landscape and competitive analysis requirements.


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Best Practices for a Comprehensive Post-Allowance Review

When a Notice of Allowance (NOA) is received by the Applicant, it means that a patent application will no longer be reviewed by the examiner and it is entitled to the patent under the law. In other words, an application is about to be issued after the prosecution phase.

However, the NOA may have errors or data missing, failing to correct them at this critical stage may impact the quality and the enforceability of the patent. Depending on the severity of the issue, an RCE may need to be filed to make necessary corrections or even defer or withdraw patent from being issued by filing a petition. Once the patent is issued the chances of correcting these errors get drastically reduced.

Once the NOA has been issued by the patent office, an applicant will have three months to pay the issue fee during which the application should be reviewed thoroughly to ensure correct.

Collating a series of checkpoints at the NOA stage with reference to various critical fields in the Image File Wrapper (IFW) before paying the issue fee, is very important.

best-practices-for-a-comprehensive-post-allowance-review

Here are a few critical sections that should be examined as a part of a post-allowance review:

  • Inventorship details
  • Cited art review
  • Application review

1. Inventorship details

The accuracy of the following matters should be checked

  • Inventor’s name (Spelling and initials)
  • Title of the patent
  • Filing date
  • Small or large entity status of the applicant

2. Cited art review

Any uncited references should be checked whether they should have been included in the application. A reference check at the post-allowance stage should include:

  • Determine if all family and related cases have been identified and cross-cited
    Identify all the related dockets and verify if all the references is cross-cited among the dockets in the family.
  • Determine if the examiner signed off/reviewed all cited art
    All IDS and 1449 from PAIR is downloaded to check if the examiner has completely reviewed the cited art or if there are any strikethroughs.
  • Determine if any uncited art is required for submission under 37 C.F.R. 1.97(D)
    Determine if the art is from a foreign OA for the corresponding docket and if it is within the purview of 37 C.F.R. 1.97(D).

3. Application review

Statutory restrictions and amendments should be reviewed including

  • Identify discrepancies
    Discrepancies in priority information, ADS, specification, filing receipt, and PAIR should be verified.
  • Determine if there were any restriction requirements
    With the help of IFW the requirement of restriction, response to restriction, detailed action, and restricted claims are checked.
  • Determine if any examiner amendments are included in the NOA
    Examiner amendment to claims should be verified with the latest claim document.
  • Determine if there are any notice to file corrected papers pending
    PAIR data should be reviewed to determine if ‘Notice to File Corrected Application Papers’ was received with or after the NOA.
  • Determine if there are any notices requiring inventor’s oath/declaration pending
    incomplete or missing middle names, transposition of names, spelling mistakes in ADS and Filing Receipt against Oath/Declaration should be verified.

Along with the above mentioned checks, there are also other portions which needs to be examined to to keep the issued patent error-free.

MaxVal provides such services to review the applications that are in allowance and provide a comprehensive report.
Please drop us a line at bd@maxval.com for a post-grant review or for a free template of NOA review checklist.

 


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Arista Wins Copyright and Patent Battle with Cisco

arista-wins-copyright-and-patent-battle-with-cisco

Recently, Arista Networks won a major ruling in the long-running patent and copyright clash with Cisco. A jury in San Jose, California federal court found that Arista owed no damages over Cisco’s claims of patent infringement. Additionally, the jurors also found that Arista did not infringe Cisco’s patent as well.

Initially, in 2014 Cisco sued Arista for infringing its copyright and patent which included Cisco Internetwork Operating System (IOS) 11.0, Cisco IOS 11.1 and Cisco IOS 11.2. Further, Cisco named one patent in the suit, US number 7,047,526, titled “Generic command interface for multiple executable routines”.

Cisco was roughly seeking $335 million for all the statutory damages and a trial by jury.

Cisco said that “rather than invest in the expensive and time-consuming effort that would have been necessary to develop its own features for Arista’s products, and specifically instead of investing the time and expense of developing its own CLI, Arista decided to simply copy Cisco’s unique approach and pioneering proprietary technologies”.

The command line interface (CLI) was the main part of the software in question and Cisco argued that Arista had illegally copied it. However, Arista claimed that the CLI is used by many rival companies and that Cisco’s attack was due to personal enmity.

On December 14th the jury absolved Arista of infringing any of Cisco’s copyrighted technical manuals. They also said that Arista did not induce infringement of two claims of the ‘526 patent. It also said that Arista was protected by “scenes a fair” doctrine, a legal principle in the copyright law that states, if there is no other way to make a product, the value of it cannot be credited to the creator of work. Arista stated, “the outcome represents an important victory not only for Arista but for the entire industry.”

 “Our goal has always been to protect technological innovation, and stop Arista from using our copyrighted and patented technology. We will look to Judge Freeman to determine whether there was sufficient evidence to warrant the conclusion reached by the jury, as well as other grounds for setting aside the trial result.” said Mark Chandler SVP, General Counsel and Secretary of Cisco.  

Case details

Type Names
Case Number 5:14-cv-05344
Court California Northern District Court
Filed date 12-05-2014
Judge Beth Labson Freeman
Plaintiff Cisco Systems, Inc.
Plaintiff Attorney John M. Desmarais
Plaintiff Law Firm Desmarais LLP
Defendant Arista Networks INC.
Defendant Attorney Ajay Krishnan
Defendant Law Firm Keker & Van Nest LLP
Product Arista 7010 7048 7050 7050X 7100 7150 7200 7250X and others (Networking products)
Patent US7047526|US7953886
Basis of Termination Judgment on the merits
Outcome of District court judgment Defendant

For more details on this case, click here.


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Tech Giants Including Samsung Sued by KAIST Over Infringement of FinFET Technology

kaist_finfet

Samsung Electronics, Qualcomm and Global Foundries are being sued in the Federal Court of Texas by the US-based Korea Advanced Institute of Science and Technology (KAIST) for usage of their FinFet technologies without any permit.

Qualcomm had recently announced that its Snapdragon 835 processor will be produced using Samsung’s advanced 10nm FinFET technology. Both the companies made an announcement by conducting an event and giving out press releases.

The incident happened when Samsung invited FinFet developer and one of the partners of KAIST, Lee Jong-ho, to show Samsung engineers how the FinFET process works.

KAIST IP said, “Samsung Electronics could save time and costs to develop the technologies by duplicating Lee’s invention without paying royalties. It continued to expropriate Lee’s achievements without consideration of his rights or proper compensation.

Samsung is known to use the FinFet technology on most of its phone models including the Galaxy series. “We proposed a contract when we developed FinFet but Samsung did not accept it. Though it started to make mobile phones using FinFet it resisted paying patent fees,” said KAIST IP. Due to this lawsuit, there might also be a delay in the launch of Samsung’s Galaxy S8 phone.

Additionally, in 2014 Global Foundries also collaborated with Samsung to manufacture semiconductor chips based on FinFET. Thus, KAIST has also named Global Foundries in the lawsuit for infringing its technology.

The FinFET technology is already lawfully used by many companies including Intel Corporation. In 2011 Intel applied the FinFet technology to its products and in 2012 acknowledged its use of the  technology  and signed an official license contract with KAIST.

Based on data analyses from MaxVal’s Litigation Databank, we see that the judgements awarded in past by the Judge Rodney Gilstrap favours both the plaintiff and the defendants, depending upon the nature of suit and allegations.

Facts about EDTX Judge Rodney Gilstrap since 2010:

No. of cases handled 4,703
No. of cases given judgment based on merits 31
No. of cases in which plaintiffs won 15
No. of cases in which defendants won 16

Case details:

Type

Names

Case Number 2:16-cv-01314
Court Texas Eastern District Court
Filed date 11/29/2016
Judge/Magistrate Judge Rodney Gilstrap/Roy S. Payne
Plaintiff KAIST IP US LLC
Plaintiff Attorney Elizabeth L DeRieux
Plaintiff Law Firm Capshaw DeRieux LLP
Defendants Samsung Electronics Co., LTD.| Samsung Electronics America, Inc.| Samsung Semiconductor, Inc.| Samsung Austin Semiconductor, LLC| GlobalFoundries, Inc.| GlobalFoundries U.S. Inc.| Qualcomm Inc.
Product Samsung FinFET Technology, Chips, and Products; GloFo Chips; and Qualcomm Chips – Processor chips (Semiconductor devices, processor chips incorporating such semiconductor devices, and/or consumer products incorporating such processor chips, 14 nm bulk FinFET technologies, Exynos series of chips, e.g., Exynos 7 Octa 7420, Exynos 7 Quad 7570, Exynos 7 Octa 7870, Exynos 8 Octa 8890, and Exynos 8895, and Defendant Qualcomm’s Snapdragon series of chips, e.g., 820 and 821 chips, Galaxy line of mobile devices, e.g., Galaxy S6, Galaxy S6 Edge, Galaxy S6 Active, Galaxy S6 Edge+, Galaxy Note 5, Galaxy Tab A 10.1, Galaxy J7, Galaxy S7, and Galaxy S7 Edge)
Patent US6885055

For more details on this case, click here.


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6 Things Startups Need to know about IP

Intellectual property (IP) protection is as important today as it has ever been for start-ups. For beginners, the prospect of where to start can be daunting.

Why do startups need IP protection? Registering IP can do several things, including:

  • Creates an asset that will have value even if the business model fails
  • Creates an asset that can be used as collateral for commercial loans
  • Justifies a higher valuation when seeking venture capital
  • Provide higher value for its products/services when listed in  public market by facilitating licensing or sale
  • Identify  more contribution margin which could reduce the need to raise investment fund
  • Helps in making strategic choices when new opportunities or change of direction is required

Here are a few IP-related approaches a start-up can should consider while formulating strategy.

6 Things Startups Need to know about IPStart early
In 2013, the United States IP system changed to a first-come-first-served basis. So regardless of who actually invented, the first one to file the patent gets all the protection. And more importantly, the one-year grace period given by the USPTO to file an application is not applicable outside the US. Therefore, start-ups planning to seek IP protection abroad should not publicize their invention before filing an application. File early and keep your invention under wraps until you do so.

Additional filing
The initial patent filing is not enough, since  the technology  will evolve as the company goes about refining the product before entering the market.  As the product evolves, the patent protection therefore needs periodic re-evaluation.  Continuations are an effective way to extend the coverage of the initial filing.

Prioritize
Initially, start-ups may not be able to afford broad IP protection. Compared to larger corporations, startups must have a better understanding of the impact that IP can have on their business. In some cases, IP may be their only asset. So prioritizing the revenue spend on IP protection according to the overall business plan may be necessary.

Trade secrets
While all the concentration is on patents, trade secrets can be  an important option, if feasible. Generally, patent protection lasts up to 20 years but, trade secrets continue indefinitely as long as the concerned party decides not to disclose it to the public. Companies like Coco-Cola and KFC are well known to have benefited from their well-protected trade secrets (recipes). However, maintaining secrecy of valuable information could be a challenge.

Worth of the invention
Patents are without doubt intended to protect the assets most valuable to a startup. So startups must assess the potential of the invention through suitable metrics before venturing to protect it.

Types of IP protection
Understanding the benefits, expenses, and the level of protection offered by various forms of IP is crucial. Trademark or service mark protection is necessary to protect each unique business or product identify. Another important area where startups need to have clarity is in ownership of IP assets. The company needs to have well-drafted agreements with its employees as to ownership of IP, non-disclosure of valuable information or avoidance of conflict in the event of separation.

Startups must engage with a skilled intellectual property counsel so that their business can meet the due diligence requirements of investors. This will also prepare them for commercialization of their product or service, when it would be required to ensure freedom from third party conflicts that can jeopardize that step. Being IP-savvy will prepare start-ups for the next phase in their journey.


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Patent: Use of Common Sense in an Obviousness Analysis

patent-use-of-common-senseThe Federal Circuit decided Arendi S.A.R.L vs Apple Inc. in August of this year.  The Court ruled that the Patent Trial and Appeal Board misapplied the law on permissible use of common sense in an analysis. While reversing the PTAB’s final decision, the Federal Circuit held that the PTAB’s application of common sense to supply a limitation missing from a prior art reference was conclusory and unsupported by substantial evidence. The Federal Circuit explained the proper use of common sense in an obviousness finding and helpful guidance for practitioners.

Being sued by Arendi in district court for infringement of US Patent 7917843, the defending parties Apple, Google, and Motorola Mobility filed a petition for inter partes review of the declared claims. The district court proceedings were then stayed pending completion of the inter partes review proceeding.

The claims of the ’843 patent are generally directed to techniques for locating information in a displayed document. Petitioners maintained that a single prior art reference “Pandit” rendered the claims obvious. Pandit discloses methods for recognizing predetermined types of text in a body of text and performing operations pertinent to the recognized text.  Petitioners cited the recognition of telephone numbers as text and the operation performed as adding the recognized telephone number to an address book, in the specific embodiment of Pandit. The PTAB, agreed with Petitioners that, as a matter of common sense, the technique disclosed in Pandit can be presumed to perform a search of the address book using the identified telephone number in order to avoid duplicate telephone number entries.

The Appellees argued that the process of searching for data in a database was well known at the time of the invention. But, they were unable to provide a reason as to why it would be proper to extrapolate from this general knowledge to specifically add a telephone number search to the Pandit reference.

In sum, the Appellees’ conclusory statements and unspecific expert testimony were insufficient to invoke common sense to supply this key limitation.

The Federal Circuit’s opinion provided guidance regarding the application of common sense in an obviousness analysis for patent prosecution lawyers and patent litigators.

On the patent prosecution front, an applicant confronting an obviousness rejection based in part on common sense can use this case as leverage and press the patent examiner to explain, specifically, and with evidentiary support and the reason of  limitation absent from the prior art. For patent litigators, the decision is a helpful guide for parties on both sides of an invalidity case.

Criticality of claims in an infringement case

Preparing the claims comparison chart is a primary step in studying a patent infringement case. MaxVal’s Claims Set Comparison tool and Claim Chart Generator help in analyzing and especially illustrating the elements of the claims.  Claim charts are automatically generated in a ready-to-use format.

Patent and litigation attorneys have relied on MaxVal’s Claim Set Comparison and Claim Chart Generator tools for several years.

Key features of the Claim Chart tools:

  • Automatically creates a downloadable claim chart for a U.S. patent or published U.S. application.
  • View the Independent claims separately for a better view
  • Compares two sets of claims and highlights the difference between them
  • Helps figuring out the difference between the U.S. claims and the foreign counterpart claims
  • The claim charts (including PCT and EP patent/publications) can be generated in three different formats: Word, Excel or HTML.

The illustration below shows a comparison of claims sets and patent drawings for the patent #791843

Claims Set Comparison - Patent US7917843.PNG

Fig-1: Snapshot shows comparison of the claims at publication and granted stages for patent #791843

Patent drawings-843.PNG

Fig-2: Patent drawings of ‘843

Create your Max-Insight account today to start your free trial and access a bundle of patent tools trusted by hundreds of patent professionals.


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Media Outlets Including Forbes Hit With Lawsuit

Many reputed media stations including, Forbes, Inc., American Broadcasting Companies, Inc., and Discovery Communications, Inc. have been targeted with a lawsuit for willful patent infringement filed by Texas-based Bartonfalls LLC.

The lawsuit was filed with the US District Court of EDTX on October 11, 2016, where Bartonfalls claims that the companies have infringed the US patent 7,917,922.  The patent relates to a method that integrates a plurality of television signal sources into a cohesive audio/video environment.

Claim 1 of the ‘922 patent describes a “method for automatically changing from a first TV program to an alternate TV program at a TV viewer location.” The accused companies in the suit either sell or provide a method for automatically changing from one TV program to another.

Bartonfalls stated that the companies have willfully infringed claim 1 of the ‘922  patent, “with knowledge of the patent and in spite of an objectively high likelihood that its actions constituted infringement.”

According to the USPTO and MaxVal’s own research, the accused companies haven’t given any indication as to how they are going to tackle the alleged infringement.  Below are the details of the cases.

Case Number Court Lawsuit URL
2:16-cv-01126 Texas Eastern District Court Bartonfalls, LLC    v.  American Broadcasting Companies, Inc. http://bit.ly/2ej18NN
2:16-cv-01127 Texas Eastern District Court Bartonfalls, LLC    v.  Allrecipes.com, Inc. http://bit.ly/2f9ceUH
2:16-cv-01128 Texas Eastern District Court Bartonfalls, LLC    v. Bloomberg, L.P. http://bit.ly/2f9ceUH
2:16-cv-01129 Texas Eastern District Court Bartonfalls, LLC    v. CBS Interactive, Inc. http://bit.ly/2fAt5lS
2:16-cv-01130 Texas Eastern District Court Bartonfalls, LLC    v. Turner Broadcasting System, Inc. http://bit.ly/2evDpaM
2:16-cv-01131 Texas Eastern District Court Bartonfalls, LLC    v. Consumers Union of United States, Inc. http://bit.ly/2fAu1GV
2:16-cv-01133 Texas Eastern District Court Bartonfalls, LLC   v. Forbes, Inc. http://bit.ly/2f97CxX
2:16-cv-01134 Texas Eastern District Court Bartonfalls, LLC    v. Advance Publications, Inc. http://bit.ly/2eXi4Yt
2:16-cv-01135 Texas Eastern District Court Bartonfalls, LLC    v. Scripps Networks Interactive, Inc. http://bit.ly/2e9y08i
2:16-cv-01136 Texas Eastern District Court Bartonfalls, LLC    v. NBCUniversal Media, LLC http://bit.ly/2f5OtyM
2:16-cv-01137 Texas Eastern District Court Bartonfalls, LLC    v. Viacom, Inc. http://bit.ly/2fAtzII
2:16-cv-01138 Texas Eastern District Court Bartonfalls, LLC    v. New York Times Company http://bit.ly/2eiSUFm
2:16-cv-01139 Texas Eastern District Court Bartonfalls, LLC    v. Ziff-Davis, LLC http://bit.ly/2dYyvXj


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Court Shuts Down Patent Infringement Case Against Amazon.com

court-shuts-down-patent-infringement-case-against-amazon-com

The U.S. District Court for the Northern District of California has dismissed a lawsuit against Amazon.com filed by TriDim Innovations claiming patent infringement.

TriDim filed a suit on Nov 30th 2015 for infringing two patents (U.S. Patent No. 5,838,326 and 5,847,709) on a “computer controlled display system” which it acquired from Xerox Corp. It claims that Amazon.com uses similar software for its Kindle Fire.

The patents describe a three-dimensional computer document workspace that allows users to consolidate a large number of documents by touching, dropping and flicking them into three separate places in accordance to their usage.

Amazon.com argued that the patents were invalid under section 101 as applied in the Alice Corp. Pty. Ltd v. CLS Bank Int’l in 2014. In the Alice case, the Supreme Court expressed that computer claims are eligible for patents if there is significantly more than an abstract idea.

TriDim reasoned that separating its computer display into three spaces limits their invention to a specific system, and hence it is not an abstract idea.

The judge of the case, James Donato found the patent to be invalid under Alice as it was an abstract idea of retrieval and arranging of documents. He ruled it out by saying it did not establish an inventive concept and is a “common solution to a common problem.”

The court said that the TriDim patents did not require any specific hardware or software that would help a user to move and place files within the system. Furthermore, it found that there was an overuse of the word “circuitry” but the invention had nothing to with circuitry. It also said that inclusion of smart words does not mean that the creation is an innovative concept.

Due to all of these assertions, the court gave verdict in favor of Amazon.com and dismissed the lawsuit. The ruling came out on Sept 19, 2016, just days before the patents were about to expire.

According to the USPTO data and MaxVal’s own research, here is a detailed history of this infringement case

Type Names
Case Number 3:15-cv-05477
Court California Northern District Court
Filed date 12/02/2015
Judge James Donato
Plaintiff Tridim Innovations LLC
Plaintiff Attorney Steven Todd Lowe
Plaintiff Law Firm Lowe & Associates, P.C.
Defendant Amazon.Com, Inc.
Defendant Attorney Daniel Thomas Shvodian
Defendant Law Firm Perkins Coie LLP
Product Various versions of the Kindle Fire, Kindle Fire HD, Kindle Fire HDX, and Fire phone – products that incorporate the “carousel” feature
Patent US5838326|US5847709
Closed date 9/19/2016
Basis of Termination Judgment on the Merits
Outcome of District court judgment Favor of Defendant
Comments Patent claims ruled invalid

 

 

 

 

 


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Network-1 Announces Settlement of Patent Litigation With Polycom, Inc.

network-1-announces-settlement-of-patent-litigation-with-polycom-inc

Network-1 Technologies, Inc. agreed to resolve its patent litigation case against Polycom, Inc, pending in the United States District Court of EDTX, for infringement of Network-1’s Remote Power Patent (U.S. Patent No. 6218930, the ‘930 patent). Polycom was one amongst the sixteen defendants named in the litigation.

A mutual settlement was reached by both the companies to resolve this litigation. Under the settlement terms, Polycom agreed to license the ‘930 patent until March 2020 and pay a fee of $5 million for past sales on its Power over Ethernet (POE) products. Additionally, it will continue to pay royalties on the products until the patent term expires. The royalty payments also include POE products that comply with the Institute of Electrical and Electronic Engineers (IEEE) standards.

In September 2011, Network-1, filed a patent litigation against sixteen data networking equipment producers for violating its ‘930 patent. Previously Network-1 reached a settlement agreement with 11 defendants. The remaining four defendants in the lawsuit were Avaya Inc., AXIS Communications Inc., Hewlett-Packard Company, and Juniper Networks, Inc. Network-1 had decided to claim reasonable monetary damages including royalties from them.

At present, Network-1 has twenty-five license agreements in regard to the ‘930 patent which also includes added license agreements with Cisco Systems, Inc., Extreme Networks, Inc., Netgear Inc. and many other data networking sellers.


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Yahoo Patents Smart Billboard for Ad Targeting

yahoo-patents-smart-billboard-for-ad-targeting

Yahoo has filed a patent for a camera equipped “smart” billboard that has a wide array of sensors and drone-based cameras to collect information about people for ad targeting.

According to the details in the application no 14/675,004 published on Oct 6th, 2016, the billboards or drones placed in public will have audio and video collection capabilities, speech recognition, and retina scan to determine what viewers are looking at or conversing about. The aim is to make billboards smart and show people ads that are most relevant.

The sensors in the camera would detect if people are paying attention, retina scan to check if people are looking directly at the ad, use proximity and image recognition to see if pedestrians are slowing down while passing by the ad, and microphone inputs would be used to check for ad-related keywords being spoken.

The patent application states, “instead of relying on “personalization” like online advertising, the techniques described herein rely on “groupization,” i.e., selection of advertising content based on an aggregate representation of the target audience that is derived, at least in part, from real-time information.”

The patent application was submitted March 2015 and was recently made public by the United States Patent and Trademark Office (USPTO).

Ever since the birth of online advertising, companies have been monitoring clicks on ads and collecting data. But, directly observing people when they are on the go was out of the question. That’s all about to change as Yahoo has filed this patent which tracks and monitors an entirely different kind of traffic.

Even though the proposed billboard is indeed smart, the conception raises two major concerns

  • Yahoo collects information on people and uses it to show relevant ads. Good, but where does the data go? Does Yahoo delete it or do companies who have placed a bid on the billboard content get access to that information?
  • People are not given an option to opt-out and disable the ads as it’s impossible to block a billboard

The application is still pending with the USPTO and if it’s approved let’s hope that Yahoo protects the privacy of the user’s data.

Here’s a diagram from the patent document which explains the concept

yahoo-patent-image_uspto

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