Wednesday, October 1, 2014

PTAB - Guidance on Discovery in AIA Trials

The PTAB published guidance on discovery practice in America Invents Act (AIA) trials:

Message From Administrative Patent Judges Jacqueline Bonilla and Sheridan Snedden: Routine and Additional Discovery in AIA Trial Proceedings: What Is the Difference?

Briefly, the article discusses routine and additional discovery, PTAB considerations in deciding whether to grant motions for additional discovery and how to succeed on discovery motions in AIA trials.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, September 30, 2014

USPTO - America Invents Act Virtual Marking & Satellite Reports

The USPTO submitted its Virtual Marking Report (September 16) and Satellite Office Report (September 29) to Congress.

As stated in the USPTO press release: "In the Virtual Marking Report, the agency addressed the effectiveness of virtually marking an article with the word "patent" or abbreviation "pat." followed by a website address where the article is associated with the relevant protective patents as an alternative to physically marking the article with the patent information. The Report also addressed whether virtual marking has limited or improved the public's access to patent information along with potential legal issues that arise from virtual marking. Lastly, the agency considered possible deficiencies in constructive notice arising from virtual marking as compared with physical marking. Information contained in the Virtual Marking Report was drawn from public input provided in response to a Federal Register Notice.

In the Satellite Office Report, the agency explained the criteria used to select the location of its four satellite offices as well as the process and timing to build out those offices. The Report also delved into the achievements of the satellite offices, including their impact on the patent application backlog and pendency, examiner recruitment and retention, and stakeholder outreach.

The PTO has one final AIA report to complete dealing with the agency's overall implementation of the AIA. That report is not due until September 2015."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, September 29, 2014

Apple is Being Sued for Infringing 13 SanDisk Patents

Tonight, check out Apple is Being Sued for Infringing 13 SanDisk Patents. This article caught my attention because the title makes it appear SanDisk is suing a customer, but instead it is a story about non-practicing entities in Europe that purchased some of SanDisk's flash memory patents and are busy trying to monetize the patents.

As stated in the article: "Ireland's Longitude Licensing Ltd and Luxembourg's Longitude Flash Memory Systems S.a.r.l. have filed a joint patent infringement lawsuit against Apple. The lawsuit involves a whopping 13 counts of infringement covering most iDevices and iPod models. The plaintiffs are using former SanDisk patents that they now own against Apple."

If Apple products use SanDisk flash memory, it makes me wonder why patent exhaustion, implied licensing and/or laches won't become an issue.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, September 28, 2014

Adobe Acrobat Tips for Patent Attorneys

Tonight, check out Adobe Acrobat Tips for Patent and Trademark Practitioners which has a long list of links to a number of Adobe Acrobat features that may be useful to your practice.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, September 27, 2014

Anna Smith - Inter Partes Review -- Parties Favor Settlement Over Board Decisions

Tonight, check out Inter Partes Review -- Parties Favor Settlement Over Board Decisions. Consistent with the article the top block of the first diagram should be: 167 Patents Petitions Terminated.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, September 26, 2014

PTAB - Denial of Inter Partes Review Under 35 USC 325(d) - Seven Informative Decisions

The Patent Trial and Appeal Board (PTAB) does not usually deny a petition for inter partes review, but can under 35 U.S.C. § 325(d), which permits denial when a petition raises the same or substantially the same prior art or arguments previously presented to the USPTO.

As stated in 35 U.S.C. § 325(d) Multiple Proceedings.—  Notwithstanding sections 135 (a), 251, and 252, and chapter 30 sections 135 (a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office (emphasis added).

Today, the Patent Trial and Appeal Board (PTAB) designated the following decisions as "informative" as to denial of institution of inter partes review under 35 USC § 325(d). 

Medtronic, Inc. v. Nuvasive, Inc. (September 2014)

Unified Patents, Inc. v. PersonalWeb Techs. (July 2014)

Prism Pharma Co., Ltd. v. Choongwae Pharma Corp. (July 2014)

Unilever, Inc. v. Procter & Gamble Co. (July 2014)

Medtronic,Inc. v. Robert Bosch Healthcare Systems, Inc. (June 2014)

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited (November 2013)

ZTE Corp. v. ContentGuard Holdings, Inc. (September 2013)

For copies of other PTAB decisions

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, September 25, 2014

USPTO - America Invents Act First-to-Inventor to File Roadshow Fall 2014

The USPTO has started the AIA First Inventor to File Roadshow Fall 2014.

According Alexandra Roberts, Executive Director of the Franklin Pierce IP Center, "the presentation provided attendees with an invaluable opportunity to improve their understanding of recent changes in patent law, gain insight into USPTO procedure, get exposure to practical concerns in patent prosecution, and cement their new knowledge by applying it in a hands-on way."

Here are the upcoming dates:

Dallas - September 30
Denver - October 2 (also webcast from Rocky Mountain Office)
Silicon Valley - October 7
Atlanta - October 9

See AIA Roadshow for more information on the upcoming live and webcast roadshow dates, which are free on a first-come first-serve basis.

See the USPTO first inventor to  file page for the roadshow presentations after October 9, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, September 24, 2014

Professor Duffy - In Favor of "Good Property-Defining Institutions" and Opposed to Bad Reforms

Tonight, I suggest reading Professor Duffy In Favor of "Good Property-Defining Institutions" and Opposed to Bad Reforms. Professor Duffy is once again right and stands out from the crowd.

He starts by noting the America Medical Association opposition to patented medicines in the 19th century. Patented medicines weren't only bad, they were unethical! An AMA member, congressman, and head of a congressional committee "recommended as an important measure of reform legislation banning all patents on medicines." That sounds like what I am hearing about software inventions.

But as Professor Duffy notes we should be skeptical of sweeping reform: "Worrying about matters such as patent law’s obviousness doctrine has none of the flamboyance of a call to eliminate all software patents, but the targets of reform can be the same. Eli Dourado rightly criticizes Amazon’s 1-click patent as an example of a “low-quality software patent.” So have I—repeatedly. But the problem with the 1-click patent is not that it’s on software but that it’s “low-quality”—it’s trivial; it’s obvious. The right solution to such “low-quality software patents” is not to get rid of all software patents (low-quality and high-quality), but to do a better job of getting rid of all low-quality patents (software or not). That’s not a flashy “let’s-kill-all-the-software-patents” approach. It’s boring; it’s incremental. But if the goal really is to get “good property-defining institutions” rather than simply to abolish property rights across fields of innovation, such incremental, boring improvements are what’s needed."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, September 22, 2014

Forbes - New IP Company Marathon Patent Group Promises Diversification Amid Risky Environment

Tonight, I suggest reading Richard Finger of Forbes New IP Company Marathon Patent Group Promises Diversification Amid Risky Environment.

As stated in Forbes, the Marathon Patent Group has a distinctive strategy:

"Although Marathon Patent Group certainly carries its share of risks, like any small company, it is undeniably differentiating itself in the patent sector. Most IP enforcement and licensing groups are focused on big-dollar patents, recruiting a law firm on contingency, and then awaiting their luck in the courtroom or negotiation table. There have been notable success stories, such as Vringo (VRNG) and VirnetX Holdings (VHC) with their well-publicized lawsuits against Google and Microsoft. Yet these companies (and there are many others like them) have no predictable cash flow. They receive a jolt of cash at random times, but it is very difficult, if not impossible, to place an ongoing enterprise value onto these companies. Mr. Croxall, in contrast, by purchasing patent portfolios with proven licensing history, will create some predictability for his company. Likewise, if he can acquire enough performing portfolios, then there will be sufficient diversification such that no single court case or licensing event will hurt his earnings needle significantly. Moreover, the consulting division of Marathon Patent Group will also be producing a stream of revenue- entirely independent from litigation. As a consultancy, it simply charges advisory fees. Thus, although Marathon Patent Group operates in an IP sector that has traditionally defied valuation metrics, with predictable earnings, it could prove to be a more stable company."

I have no relationship with Marathon Patent Group nor with the author of the article, but liked the article's details regarding a patent monetizing model that may become more popular in the future.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, September 20, 2014

IP Watchdog's Big Banks Get Software Patents Despite Alice

Tonight, I suggest reading IP Watchdog's Big Banks Get Software Patents Despite Alice, which indicates with the right claims Alice may not prove a substantial barrier to patenting of financial software. See US Patent No. 8,805,740 to Wells Fargo for an example of claims that the USPTO issued after Alice.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, September 19, 2014

Intellectual Asset Management - Biggest Impact from Passage of America Invents Act?

Tonight, I suggest reading Intellectual Asset Management's The AIA is 3 today and there’s only one winner for what has been its biggest impact.

As stated by IAM, "Three years ago today President Obama signed the Leahy-Smith America Invents Act into law, heralding the first major shake-up of US patent law in over 50 years. To mark the occasion we thought we would ask a range of people in the market what the AIA's biggest impact has been. The result was unanimous - the new post-grant proceedings at the USPTO’s Patent Trial and Appeal Board (PTAB) has been the game changer."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, September 18, 2014

USPTO Extends Comment Period on AIA Trials to October 16, 2014

The USPTO is extending the time for public comments on procedures of the America Invents Act (AIA) trials before the Patent and Trial and Appeal Board (PTAB).

Any comments must be emailed to trialsrfc2014@uspto.gov by October 16, 2014.

As stated by the USPTO, it "published a request for comments in the Federal Register on June 27, 2014, seeking public comment on all aspects of the new administrative trial proceedings, including the administrative trial proceeding rules and trial practice guide. See Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board, 79 Fed Reg. 36474-77 (June 27, 2014). The USPTO initially indicated that written comments must be received on or before September 16, 2014. In view of stakeholder requests for additional time to submit comments on the new administrative trial proceedings, the USPTO is now extending the period for public comment until October 16, 2014."

For additional information regarding AIA Trials:

www.uspto.gov/aia_implementation/bpai.jsp

www.uspto.gov/ip/boards/bpai/ptab_trials.jsp.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, September 17, 2014

Professor Robin Feldman Coming of Age for the Federal Circuit

Tonight, I just finished reading Hasting Law Professor Robin Feldman's article Coming of Age for the Federal Circuit, which discusses the patent law tug-of-war that is going on between the US Supreme Court and the Federal Circuit.

Here's the abstract:

"This has been a watershed year for the Federal Circuit, with the Supreme Court granting cert. in more patent cases than any term since the Circuit’s creation in 1982. Moreover, in case after case this year, the Justices soundly and unanimously rejected the Federal Circuit’s logic.

Some attribute the tension between the Federal Circuit and the Supreme Court to a clash between rules and standards, but that view misses the heart of what is occurring. Rather, a strong message echoes through the six Supreme Court decisions. It is a message about restraint, about carefully constructed logic, and about coming into the fold of judicial decision-making. This is a coming of age for the Federal Circuit — or at least the Supreme Court seems determined to coax, cajole and, when necessary, club the Federal Circuit into coming of age.

This article examines the messages evident in recent Supreme Court decisions and evaluates whether the Court appears to be gaining ground. Although some indications are positive, others suggest that the Federal Circuit may not be entirely ready to relinquish its role as the judiciary’s enfant terrible."

The article is thought provoking, but if the Federal Circuit is the "terrible child," the Supreme Court may just be that "parent" who issues vague orders then "punishes" the child for "disobedience" at least on the application of the abstract idea. The Supreme Court on patent eligibility law (e.g., Alice v. CLS Bank) is unclear and that is why many are struggling with it. It is easy to blame the Federal Circuit for being recalcitrant, but the early Supreme Court patent eligibility cases have plenty of flaws. For example, Benson seems to not understand the claims recite hardware such as registers and mask bits and that the patent owner stipulated that the hex to binary conversion algorithm was executed in special hardware. Justice Douglas, who never did find that patent he liked, ignores the hardware and asserts the claim totally preempts the algorithm. In the end, although we are talking about capable judiciary, it may be time to note Benson said software patent protection (or not) is a policy question best decided by Congress.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, September 16, 2014

USPTO - Patent Lawsuit Threats or Demand Letters - What to Do

Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee wrote an article USPTO’s Plain Language Toolkit Empowers Public on Patent Litigation "to empower and inform 'Main Street' retailers and consumers that may have been threatened with a patent lawsuit or received a demand letter. It was developed to provide plain language answers to key questions.

Ms. Lee says "The online toolkit features several Web pages containing plain language answers to commonly asked questions about demand letters and patent infringement complaints, such as:
• what a patent is,
• what to do if sued for patent infringement, and
• what to do after receiving a demand letter.

To the extent that legal terms are included, the toolkit has a useful glossary to ensure that consumers and 'Main Street' retailers are on the same page. By presenting the information in as straightforward a manner as possible, the USPTO sees this toolkit as a first-stop for people learning about their rights and trying to understand the various courses of action available under their circumstances."

For more details see USPTO's Patent Litigation Toolkit and join the Webinar Thursday September 18 at 12:00pm ET.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, September 15, 2014

IP Navigator - Did the Supreme Court Intend to Kill Software Patents?

Tonight, check out IP Navigator's Did the Supreme Court Intend to Kill Software Patents? It may sound a crazy question until you notice examiners, PTAB, and lower federal courts have consistently interpreted Alice v. CLS Bank to prevent software inventions from being held patent eligible.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, September 14, 2014

US Supreme Court - Alice v. CLS Bank - Software Inventions Patent Eligible Under 35 USC 101

The Supreme Court decision Alice v. CLS Bank on patent eligibility of software related inventions continues to generate controversy and loads of critical commentary. Here's a sample:

Some argue Alice greatly impacted software patenting. For example, Supreme Court ruling has wiped out 11 " do it on a computer" patents so far, and The Ramifications of Alice: A Conversation with Mark Lemley

Some argue it hasn't or the impact is unclear: For patent litigants, Court affirms status quo, Supreme Court leaves patent protection for software intact, and The uncertain expansion of judge-made exceptions to patentability

While other articles advise on how to obtain software patents despite the Alice decision: Alice v. CLS Bank: Supreme Court Issues Decision in Alice Corp. V. CLS Bank,  and How to Correctly Apply the Alice Examination Guidance

Copyright © 2014 Robert Moll. All rights reserved.

Friday, September 12, 2014

Scott McKeown - Why Motions to Amend at the PTAB Are of Such Great Interest

Tonight, check out Scott McKeown's article Why Motions to Amend at the PTAB Are of Such Great Interest noting the Patent Trial Appeal Board (PTAB) practice to deny amendment to the claims in nearly all cases and suggesting solutions.

Mr. McKeown notes "there have been 66 motions to amend filed at the PTAB to date, roughly 50% of the final decisions to date. (5 CBM, 61 IPRs). The current success rate (where patent owner tried to substitute new claims as opposed to simple claim cancellation) is 4.1%. In other words, 95.9% such motions were denied. Clearly such statistics create a public relations issue for the PTAB as being anti-patent."

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, September 7, 2014

Gene Quinn - The Software Patent Problem: Not Emphasizing the Technological Contribution of the Innovation

Tonight, let's return to Gene Quinn's final segment of his interview with Mark Lemley. One exchange suggests the motive for a highly restrictive 35 USC 101 eligibility standard. Tech wanted a tool to cheaply kill patent infringement actions. No discovery required for this coarse filter!

QUINN: "But by the same token I would be so much more comfortable handling these cases under 102, 103, and 112 because like Judge Newman says, if you handle technologies under 101 you’re potentially forestalling an entire avenue of innovation and preventing an entire industry from developing."

LEMLEY: "I think that’s right. The problem is 101 is an attractive tool to people who are confronting those nuisance suits because it’s early and it’s easy, right? And it doesn’t require going through a lot of the facts, discovery, and work that can cost a lot of money if there were better mechanisms to try to get at those weak suits earlier and more cheaply you know then people could use those mechanisms. But the problem is that I’ve got somebody who shows up and says it’s going to cost you $3 million to get the summary judgment on your obviousness claim and probably courts aren’t going to grant summary judgment and they’ll send it to trial anyway. So why don’t you pay me a million dollars to go away. Everybody’s decision is to pay million dollars."

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, September 6, 2014

Janice M. Mueller - Patent Law, 4th Ed.

Tonight, if you want a nice introduction to US patent law, I would check out Janice Mueller's Patent Law, Fourth Edition (2012). It is well written, understandable, and concisely explains many aspects of US patent law, including the America Invents Act of 2011, without being boring.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, September 4, 2014

Gene Quinn - The Ramifications of Alice: A Conversation with Mark Lemley

Tonight, check out The Ramifications of Alice: A Conversation with Mark Lemley.

Here's Professor Lemley's initial comment during the interview:

"Well, I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software” so it doesn’t really change anything, but I honestly think that’s wishful thinking. Here’s what it seems to me Alice does that’s significant. The first thing it does is it makes it clear that Mayo wasn’t a one-off thing, but rather is the fundamental test going forward for all kinds of patentable subject matter issues. I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea we want proof of an inventive concept beyond that idea before we’ll grant you a patent. You’ve got to add new steps or new hardware, not just conventional hardware or conventional steps. Not just computer technology that is generic or functionally described. And if you can’t do that not only your method claims but also your article of manufacture claims are going to be invalid."

Where's the support for grafting "an inventive concept" requirement into 35 USC 101." Sounds like  "inventive concept" is a synonym for nonobviousness. If not, maybe someone can explain how they differ. If it is the same, why are we performing the obviousness analysis without reference to 35 USC 103, which requires the decision-maker compare the claim as a whole to the prior art?

So let me get this straight, 35 USC 101 allows the decision-maker to identify a portion of the claim that is an abstract idea (and ignore the other part) then decide if the ignored part contains "significantly more" or "an inventive concept?" What's a patent attorney to do? Professor Lemley suggests writing means-plus-function claims .... How about we agree "inventive concept" should be assessed by consideration of the entire claim as required by 35 USC 103?

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, September 2, 2014

Vinod Khosla - The Case For Intelligent Failure To Invent The Future

Tonight, check out Vinod Khosla's The Case For Intelligent Failure To Invent The Future that tells why Silicon Valley has succeeded.

As Mr. Khosla states it, "I have experienced the power of doers, the chaotic and na├»ve world of optimistic entrepreneurs who just try things, admit mistakes, fail, learn, iterate, try again and find solutions – often out of necessity. Accepting, even encouraging, the right kind of failure is the best way to discover the solution to our problems and close the resource gap."

George Bernard Shaw said, "The reasonable man adapts himself to the world: the unreasonable one persists in trying to adapt the world to himself. Therefore all progress depends on the unreasonable man." People like Steve Jobs and Steve Wozniak who held onto the unreasonable belief they could start a company in a garage that would bring computing to the world.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, September 1, 2014

Allison Orr Larsen - The Trouble with Amicus Facts

Associate Professor Allison Orr Larsen's The Trouble with Amicus Facts does a great job describing the problem with amicus briefs at the US Supreme Court (e.g., over 40 amicus briefs in Alice v. CLS Bank) and Federal Circuit. These friend of the court briefs are not just friendly input, but financial orchestrated efforts to influence a court's decision. As Judge Posner puts it, amicus briefs are advocacy docs.

Here's Professor Orr Larsen's abstract:

"The number of amicus curiae briefs filed at the Supreme Court is at an all-time high. Most observers, and even some of the Justices, believe that the best of these briefs are filed to supplement the Court’s understanding of facts. Supreme Court decisions quite often turn on generalized facts about the way the world works (Do violent video games harm children? Is a partial birth abortion ever medically necessary?) and to answer these questions the Justices are hungry for more information than the parties and the record can provide. The consensus is that amicus briefs helpfully add factual expertise to the Court’s decision-making. The goal of this article is to chip away at that conventional wisdom. The trouble with amicus facts, I argue, is that today anyone can claim to be a factual expert. With the Internet, factual information is easily found and cheaply manufactured. Moreover, the amicus curiae has evolved significantly from its origin as an impartial “friend of the court.” Facts submitted by amici are now funneled through the screen of advocacy. The result is that the Court is inundated with eleventh-hour, untested, advocacy motivated claims of factual expertise. And the Justices are listening. This article looks at the instances in recent years when a Supreme Court Justice cites an amicus for a statement of fact. It describes the way the brief, rather than the underlying factual source, is cited as authority and the failure of the parties to act as an adequate check. I challenge this process as potentially infecting the Supreme Court’s decisions with unreliable evidence, and I make suggestions for ways to reform it. It is time to rethink the expertise-providing role of the Supreme Court amicus and to refashion this old tool for the new purpose to which it is currently being used."

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, August 30, 2014

USPTO - Prioritized Examination - That Rare and Controversial Bird!

Yesterday, Harold Wegner emailed his readers regarding the USPTO's prioritized examination which permits a final disposition (allowance or final Office action) within 12 months of the filing date. It's a pay to play procedure: a large entity pays $4,000, a small entity pays $2,000, and a micro entity pays $1,000.  But pre-filing search is avoided which can be expensive and risk a court challenge.

Given prioritized examination may result in allowance five months after the petition and the USPTO rarely declines it, I found it surprising only 1% of applications are requesting prioritized examination. Mr. Wegner says the USPTO granted prioritized examination for 6,693 applications of about 600,000 applications filed in FY 2014. The USPTO dashboard indicates traditional pendency is about 27 months.

Part of the answer may be a cost-benefit decision. Applicants are unwilling to pay these fees to get a final disposition sooner, since it might not result in an US patent, but a final action rejecting all of the claims. Harold Wegner notes "an informed colleague disputes prioritized examination as a metric to judge how many applicants want a speedy patent grant: 'A great majority of my clients would like a decision within one year. The problem is that the USPTO has never been able to play it straight. All of the programs that speed examination have had a much lower success rate for the applications that were expedited. To get a final rejection sooner is not the point at all.'"

In contrast, Mr. Wegner said another claims: "we use the prioritized examination system quite regularly. With every application, so far, we have received a Notice of Allowance, usually within 6 months. The trick is to file the prioritized application as a continuation of an already pending application and submit narrow, picture claims directed to the commercial embodiment, and leave the broader claims to the parent application.  I’m a huge fan of the prioritized system and it has worked very well for my clients."

Here's a couple of factors one might consider during the cost-benefit analysis: (1) will the patent claims be infringed upon issuance; (2) will investors or acquirers give you an increased valuation that will pay for having patents vs. applications (note you may see your valuation decrease a bit if the application(s) are under a final rejection); and (3) does the technology have a short "half-life," i.e., is having a patent within one year much better than two years from now?

Copyright © 2014 Robert Moll. All rights reserved.