Every patent
document has a prior art section, consisting of lists of patents and other
publications which were considered during the patent prosecution at the US
patent offfice. Cited prior art patents are provided by the applicants or may
be identified by the patent examiners in an effort to limit and define the
scope of a new patent.
Measuring the number of forward citations of a
published patent is a vital indicator for establishing the importance of a
strategic patent [1]. Frequently cited
patents typically represent key technologies that have led to many subsequent
innovations, and are often correlated with various measures of success
[2]. Breschi et al. stated in their research
on highly-cited patents that identifying the 5% most cited US patents "imply
selecting USPTO patents receiving 20 citations or more" [3].
In a New York
Times article reflecting on the purchase of Palm by HP, writer Jenna Wortham
interviewed Mr. Pete Conley, a managing partner at MDB. Mr. Conley said that
his firm valued Palm's portfolio of patents at about $1.4 billion. In
particular, Mr. Conley pointed out that "Palm has a multitasking patent issued
in December 2003 that has been cited by other companies 48 times in the last
seven years". He pointed out that 48 citations is "roughly 10 times the average
of any patent and is indicative of its high value".[4]
RotoView Citation
Analysis Results
This
updated citation analysis was conducted based
on the USPTO web site as of July 31, 2012. The first RotoView patent US
6,466,198 was published in October 2002 and was cited 136 times (almost three
times the citation count for the Palm multitasking patent mentioned above). The
second RotoView patent US 6,933,923, published in 2005, was cited 77 times
(including 35 citations as 2002/0190947). In addition, the RotoView web site
was cited by 6 US patents, bringing the total citations count to 219. After
accounting for patents that cite both RotoView patents, there are 170 unique
citing patents.
While
forward-citation analysis is a crucial metric for valuing patents, experts have
indicated the need for a multi-stage evaluation to insure that a highly-cited
patent really points to a major innovation [5]. One must first verify that the citing
patents significantly relate to the teaching and claims of the cited patent.
Since RotoView teaches specific hardware structures and related methods, it is
easy to determine that most citing patents in this case strongly relate to the
RotoView technology.
When the number
of citations is very high, it is important to ascertain that the citing patents
belong to a diverse number of quality companies. If only a few companies own
most of the citing patents, then the high citation count may not be indicative
of a true innovation that is widely applicable to a main industrial field. In
the case of the present RotoView forward-citation analysis, it is readily
established that the citing patents belong to quality owners. Major companies
(listed alphabetically) whose patents cite RotoView include: Apple Computer,
Black & Decker, Casio Computer, Fujitsu, HP, Google, HTC Corporation, Intel
Corp, Koninklijke Philips Electronics, Kyocera Corp, LG Electronics, LM
Ericsson, Matsushita Electrical Industrial Co, Memsic Inc., Microsoft, Motorola
Mobility, NEC Corp, Nintendo, Nokia, Palm, Research In Motion, Samsung, Seiko
Epson, Sharp, Siemens Corp and Sony.
A Peek Into
Related Pending Patent Applications
A multi-stage
evaluation to insure that a highly-cited patent really points to an evolving
major innovation must analyze related pending patents. Although all pending
patent applications are routinely published, their pre-grant publications do
not show the prior art citations until (and if) the patents are granted.
Without prior art citation, one can verify the importance of a highly cited
patent on pending applications using special keywords. In the present case of
RotoView, we have searched the patent applications of the companies that cite
RotoView patents and found hundreds of applications that relate to the major
components of the RotoView technology in the context of mobile devices with
small screens. Of course, only a portion of these patent applications will
mature as patents that directly relate to tilt-based view navigation. However,
the vast number of of these patent applications show that RotoView patents are
indeed indicative of a major field of R&D activity.
Conclusions
The high
forward-citation count of the RotoView patent by 170 unique patents
belonging to a diversed group of major companies clearly reflects on the
potential value of the RotoView patents. This high citation count significantly
exceeds the number of citations of many of the valuable patents that have been
in the news due to a high purchase price or major settlements. Analysis of
pending applications indicates that the RotoView patent pioneered a major field
of innovation and that the citation count is expected to climb rapidly. Please
follow this link to review the RotoView IP
portfolio.
Note: This page was
originally published on May 26, 2010,
when the RotoView patent citation count just exceeded the 100 unique patent
citations mark.
References
1. Anthony Breitzman and Patrick Thomas, "Using
patent citation analysis to target/value M&A candidates", In Research
Technology Management, September 2002.
2. Albert, M. B., Avery, D., McAllister, P. and Narin, F.
"Direct Validation of Citation Counts as Indicators of Industrially Important
Patents." Research Policy, 20, pp. 251-259, 1991.
3. Setfano Breschi et al,"Highly
Cited Patents, Highly Cited Publications, and Research Networks",
CESPRI-BOCCONI University, December 2006. (Quote from page 43).
4. Jenna Wortham, "Will
Other Bidders Emerge for Palm?", The New York Times, April 29,
2010.
5. I. Vonwartburg et al.,"Inventive progress measured by
multi-stage patent citation analysis", In Research Policy, Volume: 34, Issue:
10, Pages: 1591-1607. 2005.
6. Narin, F., and D. Olivastro, "Technology Indicators Based
on Patents and Patent Citations." In Handbook of Quantitative Studies of
Science and Technology. Holland: Elsevier Science Publishers B.V.
1988.
