In November 2017, Rosebud filed a patent lawsuit against Salesforce asserting that Salesforce’s Quip product allegedly infringes two of Rosebud’s patents. Quip is a popular cloud-based collaborative software suite built for desktop and mobile devices that allows people to create and edit documents as a group.
In its Complaint, Rosebud specifically alleges that Quip infringes two patents (one issued as recently as April 2017) by:
(1) tracking application level events in a stand-alone application that creates and edits documents in response to user actions reflecting user actions that make changes to a native document file in the stand-alone application,
(2) transmitting data about the native document file and application level events to another instance of the stand-along application,
(3) causing the second instance of the stand-along application to display a local copy of the document, receive data about changes, mirror the user actions to reflect changes, and display those changes, and
(4) providing this collaboration in a secure manner.
When you boil down Rosebud’s assertion and strip away all the patent-speak, Rosebud is basically describing online document collaboration, something that’s been available and in use for years by many products and services. So how (you might ask) did Rosebud just get a patent in 2017 on this now common idea? The answer is by filing a series of “continuation applications” over the course of many years. Here’s how it works.
A patent applicant can file a continuation application when the applicant desires to pursue additional patent claims for an invention disclosed in an earlier application (the “parent” application). A key requirement for filing a continuation application is that the parent application cannot be issued or abandoned, i.e., the parent patent needs to be pending at the USPTO. Other requirements for a continuation application are that the continuation uses the same specification as the pending parent and must have at least one of the same inventors as in the parent. Importantly, the major benefit of a continuation is that it has the same priority date (the same effective filing date) as the parent. And applicants can string along a series of continuation applications for years and years.
Rosebud most definitely took full advantage of continuation patent strategy to reach back and claim a priority date to roughly 15 years ago. Rosebud obtained its first patent in late 2008 (claiming priority to 2002), and subsequently has filed multiple continuation applications granted in late 2010, late 2013, and early 2017. All of these later issued patents also have a priority date all the way back to 2002, and Rosebud still has at least one other pending application.
Over the past few years, Rosebud has filed lawsuits asserting its slowly growing family of patents. Rosebud began its litigation campaign with three lawsuits filed against Adobe between 2010 and 2014 before moving on to filing lawsuits against other large players in collaborative cloud technology (Oracle, Dropbox, Microsoft) in 2016. In each of those cases, Rosebud asserted its staple patent from 2008, and added its latest “growth” (the 2017) patent against Quip.
From a business and technology perspective, continuation applications are used strategically to protect a company’s own products as the products develop and change over time. Additionally, a patent owner can use claims in a continuation application to target and cover later-developed competitive products that use the patent owner’s technology. As long as a specification has support for a new patent claim, and the above discussed requirements are met, a patent owner can file claims that will encompass a competitive product brought to market years after the priority date of the original patent application.
Some may argue that such extensive use of continuation patent practice is unfair and gaming the system. In actuality, however, this approach is a perfectly valid and lawful use of the patent laws. That said, some unscrupulous patent holders do in fact try to game the system in an attempt to improperly broaden out continuation patents well beyond the disclosure in the original priority application. This is particularly true the longer the timeframe between the new filing and the priority application. Rosebud appears to be yet another patent owner that has recast its “internet era” patent portfolio (via continuation patents) and directed it toward cloud computing technologies.
Contributing Author: Bart Eppenauer