Friday, November 21, 2014

PTAB - Corning Optical Communications RF, LLC v. PPC Broadband, Inc. - Motion to Amend Claims

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, the Patent Trial and Appeal Board (PTAB) added an order on a motion to amend claims (paper 19) to PTAB's list of representative orders, decisions, and notices. In the order, PTAB gives guidance on how to meet the requirements of a motion to amend claims and authorizes a patent owner can list the substitute claims in an appendix so they do not count toward the 15-page limit for the motion.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, November 20, 2014

Federal Circuit - Ultramercial Inc. v. Hulu, LLC - Patent-Ineligible Subject Matter Under 35 USC 101

In Ultramercial Inc. v. Hulu, LLC, the Federal Circuit stated a method for offering free videos in exchange for watching advertisements is not patent eligible subject matter under 35 USC 101.

Let's examine part of this opinion that indicates how the abstract idea exception to patent eligibility gives wide latitude to judges:

Federal Circuit: "We first examine the claims because claims are the definition of what a patent is intended to cover. An examination of the claim limitations of the '545 patent shows that claim 1 includes eleven steps for displaying an advertisement in exchange for access to copyrighted media. Without purporting to construe the claims, as the district court did not, the steps include: (1) receiving copyrighted media from a content provider; (2) selecting an ad after consulting an activity log to determine whether the ad has been played less than a certain number of times; (3) offering the media for sale on the Internet; (4) restricting public access to the media; (5) offering the media to the consumer in exchange for watching the selected ad; (6) receiving a request to view the ad from the consumer; (7) facilitating display of the ad; (8) allowing the consumer access to the media; (9) allowing the consumer access to the media if the ad is interactive; (10) updating the activity log; and (11) receiving payment from the sponsor of the ad."

Bob: Okay, claim 1 requires eleven steps that define the invention. 

Federal Circuit: "This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form."

Bob: What happened to the eleven steps of claim 1?

Federal Circuit: "The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application."

Bob: Why does claim 1 recite an abstraction? If the method allows the public to see free videos in exchange for watching ads how is this merely an abstract idea? It may not be novel or unobvious, but the claimed invention is in the real world. It would read on a service (e.g., YouTube) that allows people to watch ads (nobody likes) so they can watch they want to watch (e.g., soccer, real guitars) on a computer display. The method is implemented on the Internet, a global network of networked computers. This is a concrete and tangible application. So a judge gets to decide that it all adds up to an abstract idea, devoid of a concrete or tangible application, but what constrains that decision?

I don't see a real constraint exists on a judge's decision to make up an abstract idea, once we begin the process of allowing dissection of the claim. And once we allow the judge to split the claim into an abstract part and non-abstract part, what determines the "line" between abstract and non-abstract in the claim? Unlike 35 USC 103, a judge applying Alice doesn't have to consider the subject matter of the claim as a whole. Instead, step 1 of Alice says identify if the claim recites an abstract idea. How by reading the patent or "lift" a subset of the claim (e.g., the preamble). Step 2 then asks if the non-abstract part is an inventive concept? The judge is not required under Alice to review any prior art. If the judge think it conventional, the judge concludes "no inventive concept." And now the test is completed, the claim is ineligible. The two-part Alice test can be done as a mental process without reference to the prior art requirements of 35 USC 102. Thus, it appears this patent eligibility test is the ultimate "abstract idea."

And as long as we ignore the broad language of 35 USC 101 that was purposely framed that way to promote innovation, bootstrap the novelty (35 USC 102) and obviousness (35 USC 103) analysis into 35 USC 101, we will see too many software inventions held ineligible for patents. I don't think any reasonable person wants obvious subject matter to get patent protection, but when we eliminate the requirement to assess the subject matter against the real world, i.e., prior art, we are left with just a judge's opinion with inadequate constraints.

Note Judge Mayer in concurrence goes further seeking to establish patent eligibility is a threshold question, arguing we give no presumption of validity to the USPTO's determination that the claims satisfy 35 USC 101, and ultimately arguing Alice establishes a "technological arts test for patent eligibility."

Also see WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 19, 2014

Ron Katznelson - A Century of Patent Litigation in Perspective

Tonight, I suggest reading Ron D. Katznelson's article: A Century of Patent Litigation in Perspective, which provides ammunition if you suspect lobbyists and public relations firms foisted a patent litigation explosion myth on the White House (and others) to help them "understand" the urgency of implementing a plan to rein in US patents in recent years.

Here's the introduction of the article:

"Recent years brought a proliferation of articles that describe and quantify a purported 'explosion' in patent litigation. The causes for this purported explosive rise are often attributed to technological change, the Federal Circuit 'patent-friendly' court, the growth of patenting, poor 'patent quality,' and to litigation tactics of non-practicing entities (NPE), or the ill defined 'Patent Assertion Entities (PAEs), pejoratively called 'patent trolls.' A recent White House report on PAEs states without supporting sources that 'the increased prevalence of PAE suits, and patent suits in general, in recent years stands in contrast to the 20th century, when suits for patent infringement were relatively rare.' However, without the context of the general scale of commercial activity, this statement is meaningless because the number of all federal civil suits 'in recent years stands in contrast to the 20th century,' when civil suits 'were relatively rare: about 283,000 Federal civil suits were filed in 2010 compared to only about 54,600 filed in 1950; in Federal district courts, about 3,700 trademark suits were filed in 2010 compared to only about 200 filed in 1950; and about 2,000 copyright suits were filed in 2010 compared to only 165 filed in 1950."

Here's Dr. Katznelson's abstract:

"When comparing patent litigation rates or "rarity" across decades, one must take into account the proportion to the actual scale of commercial activities that give rise to patent disputes. Such normalizing scales are preferably national metrics of commercial activity such as (a) the number of patents issued in the year,(b) the total number of patents in force over which disputes may arise, (c) the total number of Federal civil suits, or (d) the economic scale of the Gross National Product (GDP) in real dollars. This paper marshals for the first time information on all patent litigation in Federal district courts spanning almost a century. The patent lawsuit filing information is newly obtained from the Judicial Conference Annual Reports going back to 1937 and further collected from the weekly Official Gazette of the Patent Office going back to 1923. In addition, an estimate for the number of US patents in force in each of the years covered is derived. Using non-parametric statistical tests, it is shown that, with the exception of the AIA-caused litigation anomaly of 2011-2013 explained in the paper, for all four normalizing metrics, patent litigation intensities during this century had not exceeded those experienced during the 20th century. High patent litigation intensities in the 1920s-1930s and the 1960s have been comparable to, if not higher than, those in the 2000s. These litigation activities are thought to be consistent with major shifts in technological developments such as the development of radio and electronics and chemical advances in the 1920s-1930s, the development of semiconductor transistor electronics in the 1960s and the wireless communications and internet-based technologies at the turn of the 20th century."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, November 17, 2014

USPTO - Roundtable on International Harmonization of Substantive Patent Law on November 19, 2014

The USPTO is hosting a roundtable on international harmonization of substantive patent law on November 19, 2014:

"The United States Patent and Trademark Office (USPTO) is seeking input on certain matters relating to the international harmonization of substantive patent law. In view of the importance of harmonization of substantive patent law to the successful reutilization of the examination work of one intellectual property office by another, or work sharing, the USPTO is particularly interested in stakeholder comments on the following key patent examination-related issues the definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step. To assist in gathering this information, the USPTO is holding a public roundtable which interested members of the public are invited to attend."

When: Registration at 8:00 am and roundtable at 8:30 am

Where: USPTO, 600 Dulany Street, Madison Auditorium, Concourse Level, Alexandria, VA 22314.

It seems the international harmonization discussion should include 35 USC 101 patent eligibility.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, November 16, 2014

Federal Circuit - In re Cuozzo Speed Technologies - Oral Arguments

In re Cuozzo Speed Technologies, the Federal Circuit heard oral arguments on what should be the standard for interpreting patent claims in America Invents Act (AIA) trials.

One advantage for petitioners is the claims are currently subject to the broadest reasonable interpretation (BRI), which makes it easier to invalidate the claims. The policy underlying BRI is the claims can be amended to overcome prior art so should be subject to the broadest reasonable interpretation to avoid the claims being later interpreted too broadly in court. However, only one party has successfully amended claims in an IPR! This calls into question whether we should use a broad standard suitable for the original prosecution in the AIA trials. In the meantime, here is the Federal Circuit's MP3 audio recording of the arguments.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, November 14, 2014

PTAB - American Invents Act (AIA) Trials Statistics

Tonight, I recommend reading the PTAB statistics regarding AIA trials. In short, the number of petitions filed for post-grant validity challenges has increased from about 25 petitions in September 2012 to nearly 200 petitions in October 2014. As long as people are getting favorable results, the relative low cost of inter partes review (IPR) will motivate the continuing increase, while post-grant review filings remain miniscule. Post-grant review filings should increase as more patents become eligible for challenge, but post-grant review may never reach the filing of IPR, because it is viewed as a costly solution compared to IPR. Most of the IPRs are being filed against software, electrical, and/or mechanical patents, and no petitions were filed to challenge the validity of design patents.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, November 13, 2014

Harvard Journal of Law and Technology Digest (JOLT)

Tonight, I recommending browsing the Harvard Journal of Law and Technology. It has law review articles on law and technology worth reading. Also see the Harvard JOLT Digest, which has law and technology news and summarizes patent case law. Note, however, since Harvard JOLT covers many intellectual property law topics, the patent law digest has only a limited volume of cases.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 12, 2014

Joe Mullin - Startups can now buy insurance against threat of patent trolls

Tonight I recommend Joe Mullin's article: Startups can now buy insurance against threat of patent troll. Mr. Mullin says "RPX wants to protect small companies from patent threats. Premiums start at $7,500." I guess you call RPX-- no wait these are modern times ... visit its website-- to get the cap and deductible on this bottom offering.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, November 9, 2014

IP Watchdog - A Strong Innovation Ecosystem is Needed for Job Creation

Tonight, I recommend reading Gene Quinn's article: A Strong Innovation Ecosystem is Needed for Job Creation, which summarizes Jay Walker's talk at the 2014 IP Dealmakers Forum on November 6, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, November 8, 2014

USPTO Crowdsourcing for Prior Art Roundtable on December 2, 2014

The USPTO is conducting a roundtable to get public input on its use of crowdsourcing to find prior art.

The USPTO will discuss: (1) how it can use the crowdsourcing tool to find prior art to improve the quality of issued patents; (2) ways it can use private sector solutions to provide that prior art to examiners; and (3) responses to the March 19, 2014 crowdsourcing notice and April 10, 2014 crowdsourcing roundtable. Also see crowdsourced non-patent literature hosting.

See Request for Comments and Notice of Roundtable on USPTO Use of Crowdsourcing to Identify Relevant Prior Art.

The roundtable will be held at the Moot Court Room, Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York, NY 10003 from 1 pm to 5 pm EST, December 2, 2014. The meeting will be also webcast.

Signing up is by email

November 18, 2014: speaking requests

November 25, 2014: requests to attend the roundtable or webcast

December 9, 2014: written comment on topics identified or discussed at the roundtable

For details visit the Crowdsourcing Roundtable page on the USPTO website or contact Mr. Harvey, Director, TC 2800 at 571-272-8004 or email

Copyright © 2014 Robert Moll. All rights reserved.

Friday, November 7, 2014

FTC Settlement Bars Patent Assertion Entity Deceptive Patent Licensing Effort

On November 6, 2014, the FTC announced that MPHJ Technology Investments, LLC, and its law firm reached a settlement that barred the patent assertion entity from sending letters making phony claims in licensing its patents and that each letter in the future would cost $16,000.

As background, MPHJ Technology had purchased patents that purported to cover network scanning then sent letters to more than 9,000 small businesses claiming they likely infringed and faced an infringement lawsuit if they failed to purchase a license. The letters gave a two-week deadline and included a complaint ready to file in closest federal court, but no complaints were filed and no preparation was made to file the complaints. This is the FTC first action against a "patent assertion entity."

For details see the agreement and consent order, the other FTC documents, and the FTC press release.

Also see Mr. Joe Mullin's FTC ends first case again a "patent troll" with a slap on the wrist - MPHJ owner Jay Mac Rust won't pay a fine, can sue all he likes.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 5, 2014

IP WatchDog - Exclusive Interview with Jaime Siegel of Acacia Research

Tonight, I suggested reading Gene Quinn's interview with Jaime Siegel of Acacia Research, which indicates where US patent monetization has been, is, and will be heading in the future.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - First Cybersecurity Partnership Meeting at Silicon Valley USPTO on Nov. 14, 2014

The USPTO first partnership meeting with the cybersecurity and network security community will be held at the temporary location of the Silicon Valley USPTO satellite office, that is, the US Geological Survey Campus, Building 3, second floor, 345 Middlefield Road, Menlo Park, CA from 8:30 am to 3 pm on Friday, November 14, 2014.

As stated in the USPTO notice: "The Cybersecurity Partnership meeting creates a collaborative forum for USPTO stakeholders seeking patent protection in the cybersecurity and network security sector to share ideas, experiences, and insights with USPTO staff. Members from the public are invited to attend. For this inaugural event, the USPTO has partnered with the National Institute of Standards and Technology (NIST), who will present information on their voluntary Framework for Improving Critical Infrastructure Cybersecurity. USPTO staff will also discuss cybersecurity patent initiatives, key computer security patent application statistics, and examination guidelines for patent eligible subject matter following the Alice Corp. v. CLS Bank Supreme Court decision. In addition to the presentations from NIST and the USPTO, several key stakeholders will present their views on topics focusing on the intersection of Intellectual Property and Cybersecurity." 

Confirmed speakers appear below:
  • Mohammad H. Qayoumi, President of San Jose State University and member of the Department of Homeland Security Academic Advisory Council
  • Angela Ziegenhorn, Senior Director for Intellectual Property at Symantec Corporation
  • David Kinsinger, Vice President and Chief Patent Counsel at L-3
  • John Vandenberg, Partner at Klarquist Sparkman
It's free but you must request to attend by email to by November 10, 2014. In the request, include "Cyber Registration" in the subject line, and the attendee name, affiliation, title, mailing address, and telephone number in the body. The USPTO says it will let you know if you are in November 11.

For the live webcast click HERE

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, November 2, 2014

Method Claims - Should They Recite Computer Terminology?

Although the Supreme Court stated it wouldn't give much weight to whether a method claim recites a computer in Alice v. CLS Bank, it may be a good idea to recite computer language in the claim in some cases.

During examination, an examiner should give a claim the broadest reasonable interpretation consistent with the specification. For example, in Phillips v. AWH Corp. the Federal Circuit stated an examiner should determine the scope of claims not solely on the claim language, but on the broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."

The logic for the broadest reasonable interpretation standard is an applicant can amend claims during prosecution, and giving a claim the broadest reasonable interpretation reduces the possibility the issued patent claim will be interpreted more broadly than justified.

Let me explain now how this might apply using an example. In Application of Prater the CCPA considered a patent applicant pursuing a claim reciting a process of analyzing data generated by mass spectrographic analysis of a gas. The specification said the process included subjecting the data to be analyzed in a mathematical manipulation. The examiner rejected the claim as anticipated, because "analyzing data generated by mass spectrographic analysis" could be read on a mental process using a pencil and paper. The court agreed the claim was not limited to implementation on a machine, since the claim did not expressly recite it. The court explained "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." In short, Application of Prater indicates you cannot import subject matter (e.g., a machine or a computer) described in the specification into the claim where that subject matter is not recited in the claim.

Thus, if you want a method implemented in software to not read on a mental process, it may be better to recite the computer language in the body of the claim if you can live with the narrower claim.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, November 1, 2014

Washington Post - Google has gotten more fast-track patents than any other company

Tonight, I suggest reading the Washington Post's article Google has gotten more fast-track patents than any other company. As stated, "Google has obtained 875 fast-track patents, about 14 percent of the 6,187 expedited patents that have been issued by the U.S. Patent and Trademark Office since the program began in 2011, according to data provided by the agency."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, October 30, 2014

Professor Dennis Crouch - Rise of Computer Patents

Tonight, I suggest reading Professor Dennis Crouch's Rise of Computer Patents.

Professor Crouch says it's difficult to define "software patents," but has a graph that indicates US patents with an independent computing claim (i.e., reciting "computer, processor, software, machine readable, information, memory, data, virtual, or storage media") increased from about 5% in 1976 to 35% in 2014. The graph also shows 40% of US patent will include an independent computing claim in 2015, but it's not clear how this can be determined.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, October 29, 2014

USPTO - Deputy Director Michelle K. Lee's Our Shared Stewardship of a Gold-Standard IP System

Tonight, I suggest reading Deputy Director of the USPTO Michelle K. Lee's Our Shared Stewardship of a Gold-Standard IP System prepared remarks for a speech before the AIPLA.

The remarks are lengthy, but show how much Ms. Lee cares about the USPTO, provides a comprehensive vision for the USPTO, and has the potential to be a great leader like her predecessor David Kappos.

"Thank you, Wayne, and good morning everyone. Before I begin, I just wanted to say, it’s been a busy week, and that I am beginning to lose my voice, but it means a lot to me to be here today and to speak to you all of you, so I hope you will bear with me and hopefully my voice will hold through the speech.

With that, I’d like to congratulate Q. Todd Dickinson for his successful leadership of AIPLA, and for his past service as Director of the United States Patent and Trademark Office.

We at the USPTO appreciate his support of our agency over the years, and I personally want to thank Todd for his warm welcome of me when I took the helm of the agency in January.  I know we all wish him the very best in his future endeavors.

I also want to commend Vince Garlock for his recent stewardship of the Association, and congratulate Wayne for his successful tenure as the 106th president of AIPLA.

And congratulations, Sharon Israel! I look forward to working with you in the months ahead on many of the big issues I’ll be talking about here today.

As always, I see a number of familiar faces out there in the audience—friends and colleagues who’ve made a difference in the world of IP through their dedication and professionalism.

And that’s why it’s a pleasure to speak to AIPLA, which has played such a critical role in shaping our nation’s intellectual property system for one hundred and seventeen years.

On a more personal note, it was truly an honor when President Obama announced his intention to nominate me for the helm of the USPTO—America’s innovation agency—as it navigates a sea of transformative change.

As some of you know, I’ve spent my entire career engaged in innovation. I grew up a tinkerer, always looking to learn how things worked and how things could be improved. That passion led me to become an engineer, which then later led me to become an intellectual property attorney and advisor to high-tech companies.

I’ve prosecuted patents; asserted patents; defended against infringement; and licensed, bought, and sold patents, sometimes for very large sums of money. So I share your conviction, gained through years of firsthand experience, that IP has tremendous value and is a driver of innovation.

I believe we also share an understanding that we are living in a pivotal moment in the history of intellectual property. IP is on the minds of many, from the most powerful policymakers to the youngest of innovators. It’s the subject of articles in Vanity Fair and episodes of This American Life.
And through a special partnership with the IPO Education Foundation, today even Girl Scouts can get badges for demonstrating a working knowledge of IP.

Of course, an ever-expanding ecosystem of interested parties leads to an ever-expanding range of viewpoints on the appropriate contours of IP protection. 

As we move forward in this critical moment in our history, it can be helpful to compare our efforts to sailing. To reach our destination, we must sail into the wind. And we must do so with all hands on deck.

In other words, it’s incumbent that we all work together as responsible stewards of our IP system. We must ensure its continued role in promoting the innovation that defines our society, and our economy.

What does it mean to be a responsible steward? Well, for those whose role it is to draft our nation’s IP laws, they must do so sensibly, with input from experts and with a focus on balanced laws that promote innovation across industries now and for the long run.

For those whose role it is to interpret our nation’s IP laws and render legal decisions resulting from that review, they must do so in a clear and consistent manner.

For those whose role it is to advocate before lawmakers and argue before judges, they must do so with an eye toward not just what is good for one’s client in a particular case, but also what is right for our system in the long run.

And, finally, for those of us whose role it is to implement both new laws and new judicial interpretations of those laws, we must do so with care, precision, and transparency.
So are we all meeting our respective obligations? That’s a question I ask myself every day.

Let me share four priorities the USPTO is undertaking as a responsible steward of our IP system.

First, the USPTO is now even more focused on quality. Quality yields certainty in the marketplace, reduces needless litigation and fuels innovation.

Second, in the increasingly online commerce-driven world in which we live, it’s incumbent upon the USPTO to advance cost-effective and strong global IP protections.

Third, the USPTO must remain a leader in operational excellence.  We owe our customers nothing less.

And finally, all three of these priorities must be accomplished transparently, with active public engagement.

So let's start with the agency’s first priority: quality. As you know, a high-quality patent clearly sets out the boundaries of a claimed invention, and encourages other innovators to come up with something transformative and new.

I’m hardly the first USPTO leader to stand before you emphasizing that quality is a priority. And I certainly won't be the last. But for too long, due to uncertain budgetary conditions and limited resources, the USPTO has had to make do with less. No longer. Thanks to the efforts of my predecessors at the USPTO—and all of you—to achieve a sustainable source of funding and a reduction in our application backlog and pendency, for the first time in a long while the USPTO doesn’t just have to make do. It can focus on building the workforce and tools it needs to support a world-class patent quality system.

That’s why, at the most recent Patent Public Advisory Committee meeting, Commissioner for Patents Peggy Focarino outlined the contours of our new Patent Quality Initiative.

We will roll out the initial results of this initiative early next year.  Let me give you a brief preview today. This new initiative is built around three core elements: excellence in prosecution products and services; excellence in customer service; and excellence in measurement of quality.

I’ve asked that teams of employees from across the agency—from examiners to IT staff to policy experts—be put together to take a hard look at patent quality from every angle.

We’re considering all options—big and small—before examination, during examination, and after examination.

This includes upgrading IT tools for our examiners, such as fully implementing our Patents End-to-End system and expanding international work-sharing IT capabilities.

It includes increasing resources to improve patent examination quality, for example, by expanding focused reviews of examiner work products to measure the impact of training; improving the effectiveness of interviews between examiners and applicants; and providing training to all of our employees that interact with customers.

It also includes comparing best practices and collaborating to improve quality with our foreign counterpart offices; more on that in a bit.

And it includes using big data techniques to measure and improve every stage of the examination process. What do I mean by big data?

Well, we collect a lot of data during the examination process, but we haven’t had the resources to fully capitalize on its potential. Now we do. We can not only analyze data effectively, but apply lessons learned throughout the examination process, improving quality from the first touch of an application, and providing more precise training to our examiners to fill any specific gaps identified.

Of course, when measuring results we need to better understand what quality means to our customers. That’s why we will start that conversation with you early next year through a series of discussions across the country, explaining how we currently measure quality and seeking your input on how we can do better.

All of this is in addition to the existing quality initiatives we have underway, including increased technical training for our examiners; more legal training, including on Section 112(f) on functional claiming; a glossary pilot program; easier ways for third parties to submit prior art; and enhanced use of crowdsourcing techniques.

Further, the USPTO is being a responsible steward of our IP system by ensuring that our AIA trails testing patents of questionable validity are efficient and cost-effective. This is our mandate from the AIA.

Based on the number of petitions we have been receiving, our stakeholders seem to value the service we provide.  But we are looking to make these proceedings even better. That’s why the Patent Trial and Appeal Board held public outreach events in eight cities earlier this year, and plans to hold six more next month. We’re sharing the Board’s progress and experiences so far, while also seeking input on improvements.

So as we engage in the admittedly challenging task of improving patent quality, I have an ask of all of you as members of the IP bar, professionals who prosecute and litigate patents every day: Work with us to create a world-class patent quality system.

It is what we must do to maintain a healthy and respected IP system. It is what we must to do to be good stewards of our IP system.

The agency’s second priority is a continued commitment to supporting U.S. innovators competing in the global economy.

As Secretary of Commerce Penny Pritzker and I hear from businesses of all sizes looking to manufacture and export their products overseas, they frequently express their need for cost-effective access to strong IP protection abroad.

Now one thing that remains clear is that our IP system is considered by many around the world to be the “gold standard.” More than ten thousand innovators and consumers in seventeen countries said so in a recent survey by Time Magazine.

And that belief resonated in conversations I had in Geneva during the most recent World Intellectual Property Organization meetings.

In those meetings I discussed with peers from IP offices around the world our desire to move forward on operational coordination to streamline procedures and reduce costs for our innovators who are seeking foreign IP protection.

As many of you know, we’ve spent the past two years implementing the Cooperative Patent Classification system, which we developed with the European Patent Office. President Battistelli will speak to us today at lunch and he may have more to say about this then.

The system permits more effective prior art searches while reducing duplication of work. That should make patent examination both faster and better, supporting our focus on patent quality.

While in Geneva, I signed an agreement with the Korean IP Office, or KIPO, obligating them to reclassify their entire patent collection under the CPC. This is a huge step forward for international worksharing, and I encourage other offices will follow Korea’s lead.

All of these provide excellent examples of how important streamlined and coordinated operations are in achieving our goals. And that’s why one of the agency’s priorities moving forward is operational excellence.

At the USPTO I have the privilege to serve alongside of some of the hardest-working, most committed civil servants around.

And I’m excited about the steps we’re taking to further modernize our workforce, increase our production capacity, and ensure quality patent and trademark examination. You’ve seen some results of these efforts over the past several years.

We reduced the backlog of unexamined patent applications from a high of over 750,000 in January 2009 to barely more than 600,000 as of September 22 of this year. That’s a decrease of more than 17%, despite an average 5% increase in filings every year since 2010. And when it comes to trademarks, our performance measures are every bit as impressive, with a first action pendency of 3 months, and pendency from filing to registration or abandonment at an historic low of 9.8 months. We were able to achieve this, in part, due to increased hiring and retention of skilled examiners.

As IP becomes even more important and our filings continue to increase, we must continue to invest in our workforce to help them perform their mission to the best of their ability.

Our award-winning telework program—which aligns the agency’s needs with a dispersed 21st Century workforce—has been, and will continue to be, a key component of these improvements and our agency’s success.

It provides significant benefits in recruiting and retaining highly skilled employees while saving the agency money. It’s allowed us to more than double the number of patent examiners since 2005 without increasing our real estate footprint.

But as innovators know, the cost of being a trailblazer is that you are always the first to encounter obstacles in your path.

No program is perfect, and the USPTO’s telework program is no exception. Recent events have helped shine a light on areas where our telework program can be improved.

We’ve already moved forward with a number of concrete steps to bolster the management of the telework program to ensure the integrity of our operations.

These actions will help ensure this incredibly valuable program continues to provide enormous value to our agency, your clients, and the American people.

But our focus is on improving all operations, including those that directly impact our customers. Many of our ongoing IT improvements will make your lives easier, from filing a patent or trademark application to managing your fees. We’ll be holding a series of roundtables soon to share our work in this area and seek your input.

You are hearing a recurring theme here. Each of the agency’s priorities—quality, global leadership, and operational excellence—demand real-time engagement with the public.

Like my predecessor David Kappos, I come from the private sector, where customer service, input and feedback reign supreme. As a long-time user of the services of the USPTO, I watched with admiration and appreciation as the agency tacked in the direction of serving USPTO’s customers through transparency and engagement. The Agency will continue to sail that path.

We've valued your participation in our various partnerships, such as the long-standing Bio-Chem-Pharma Partnership and one we created last year, the Software Partnership. I’m looking forward to seeing the fruits of our latest effort, the Cybersecurity Partnership, which we just announced on Monday.

Our new satellite offices also provide opportunities to engage with more of you than ever before.

And let’s not forget our public roundtables held around the country, which allow us to hear directly from you on a range of important subjects. I've mentioned our PTAB roadshows and our forthcoming events on patent quality; those are but a few examples.

I also mentioned earlier the role of the federal court system as one of the stewards of our IP ecosystem. As you know, the Supreme Court has been very active on the patent front this past year.

Recent changes in case law on various topics have required us to issue new guidance to our corps of more than 8,500 examiners.

As responsible stewards of our IP system, we have an obligation to ensure that any change to the law is implemented faithfully and uniformly. We have valued your guidance in these areas.

Finally, we look forward to hearing from all of you on the ways we can further strengthen our system through balanced and meaningful legislative reforms.

We hope to see patent reform move forward on the congressional agenda next year. All of us, as stewards of our IP system, have an obligation to engage in that process responsibly, thoughtfully, and with the goal of ensuring balance—regardless of your monetary self-interest on an issue.

So we all have roles to play as responsible stewards of our IP system. Congress. Courts. Agency leaders. And advocates like you.

I’m confident that, together, we can chart a path into the wind that avoids the shoals, sandbars, and storms.

We have a model to follow. You may recall that one of the biggest comebacks in sports history happened last year out in my part of the country, when the multi-day America’s Cup sailing competition was held on the San Francisco Bay.

A team of Silicon Valley innovators pulled off that win. In interviews after their victory, team members said that every night after a win or a loss they would analyze the data from that day’s race.

They then made real-time adjustments for next day, with each team member knowing exactly what they had to do to meet their shared goal.

We should remember that lesson as we find ourselves at this unique moment in the history of IP. None of us can succeed on our own. We need to work together as we—responsible stewards—tack toward our shared goal, an IP system that will continue to promote innovation across industries now and in the long run.

Thank you again for having me here today, and best wishes for another great year in the exciting world of IP."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, October 28, 2014

USPTO - PTAB AIA Trials Road Show in November 2014

Today, the USPTO sent a blog post from Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee:

"Stakeholder engagement is a critical mission of the USPTO, and I am excited to share that the Patent Trial and Appeal Board will visit the Great Lakes region to provide more training about the AIA trials. In November, the board will visit Detroit, Cleveland, Pittsburgh, Chicago, Milwaukee, and Minneapolis for afternoon, interactive programs.

Earlier this spring, the board engaged with stakeholders in a variety of cities on a listening tour to consider revisions to the AIA trial rules and guidance. In these upcoming sessions, the board is focused on teaching the public how to strengthen their AIA trial filings.

In particular, stakeholders will hear a 'State-of-the-Board' address, providing an update on recent developments including the volume of AIA trial filings and administrative patent judge hiring. The board also will host a “PTAB Feud” game show in which members of the public compete to answer questions and learn about the AIA trials. Lastly, the board has developed an AIA trial workshop involving a mock scenario in which a petitioner wishes to assert a challenge against a patent. The audience will break into teams, each facilitated by a judge, to discuss which type of petition to file and what issues might arise from both the petitioner’s and patent owner’s perspectives.

Topics of discussion will include bars to filing, real party-in-interest and joinder considerations, and claim construction. The teams likewise will decide whether to institute an AIA trial, and if so, on what grounds and for which claims. In Detroit, the PTAB will host an actual AIA trial hearing in lieu of the workshop.

Besides the roadshows, the PTAB continues to hire more talented IP practitioners as judges. In fiscal year 2014, the board brought on 44 new judges, raising the total to 214. This fiscal year, the board is eager to continue growing, both in the Alexandria headquarters as well as all our satellite office locations. If you enjoy high end legal work involving cutting edge science, then an administrative patent judge position may be just for you.

In sum, I encourage you to take part in one of the Detroit Region Roadshows so that you can become even more versed in the nuances of the AIA trials. To learn more about a judge position, please visit Our AIA trial proceedings help strengthen our patent system, and we're thankful for the stellar leadership demonstrated by our administrative patent judges on the PTAB."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, October 23, 2014

Love & Ambwani - Inter Partes Review: An Early Look at the Numbers

Tonight, I suggest reading Santa Clara University assistant law professor Brian Love and Unified Patents' COO Shawn Ambwani's Inter Partes Review: An Early Look at the Numbers.

The abstract of the authors: "In the roughly two years since inter partes review replaced inter partes reexamination, petitioners have filed almost two-thousand requests for the Patent Trial and Appeal Board to review the validity of issued U.S. patents. As partial data on inter partes review (IPR) has trickled out via the blogosphere, interest from patent practitioners and judges has grown to a fever (and sometimes fevered) pitch. To date, however, no commentator has collected a comprehensive set of statistics on IPR. Moreover, what little data currently exists focuses on overall institution and invalidation rates — data that, alone, gives us little idea whether IPR is thus far accomplishing its original goal of serving as a quick, efficient alternative to defending patent suits filed in federal court, particularly those initiated by non-practicing entities (NPEs).

This Essay aims to fill both gaps by reporting the findings of an empirical study tracking the outcome of IPRs and their impact on co-pending litigation. As described in greater detail below, we find that: Petitions for IPR are instituted for at least one challenged claim 84 percent of the time; Among instituted IPRs, all challenged claims are instituted 74 percent of the time; Among IPRs that reach a final decision on the merits, all instituted claims are invalidated or disclaimed more than 77 percent of the time; IPRs challenging NPE-owned patents are more likely to be instituted and, on average, are instituted for a larger share of challenged claims, but have their claims invalidated at a lower rate; Litigation proceeding in parallel with an instituted IPR is stayed about 82 percent of the time.

Though it is too early to draw sweeping conclusions from these statistics, they suggest that inter partes review promises to be considerably more potent than inter partes reexamination and, moreover, to have a substantial impact on co-pending patent litigation, particularly suits filed by NPEs."

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, October 22, 2014

Dolak - Patent Office Contested Proceedings and the Duty of Candor

Tonight, I suggest reading Professor Lisa Dolak's Patent Office Contested Proceedings and the Duty of Candor. Professor Dolak has been speaking on ethics issues in intellectual property for years, and this is a nice contribution to AIA trial work.

Here's the abstract: "The implementation of post-grant trial proceedings in the U.S. Patent and Trademark Office is one of the most significant aspects of the Leahy-Smith America Invents Act. Practitioners have a great deal of new subject matter to master, including the governing statutes and rules, and instructive Patent Trial and Appeal Board decisions. All of this new law is superimposed, however, on an existing legal landscape relating to the practitioner’s duty of candor and potential consequences for candor violations. Furthermore, the new law creates additional candor and disclosure obligations specifically applicable in post-grant contested proceedings.

This paper discusses the “old” and “new” candor obligations of practitioners – their sources, their reach and applicability, and the potential consequences for their breach – in the context of the representation of clients in the new USPTO post grant contested proceedings. It identifies several examples of statements and conduct in post-grant proceedings that may particularly implicate the practitioner’s duties of candor and/or disclosure and, accordingly, warrant heightened care on the part of practitioners (registered and unregistered) and parties who participate in the new proceedings."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, October 21, 2014

AIPLA - Comments on PTAB Rules and Trial Practice Guide

On October 16, 2014 the American Intellectual Property Law Association (AIPLA) filed comments on the PTAB Rules and Trial Practice Guide on rules for post-grant review and inter partes review before the Patent Trial and Appeal Board (PTAB).

The AIPLA presents some pro-patent owner positions in the comment letter. I will list a few with quick comments.

AIPLA argues PTAB values efficiency more than fairness to the participants. My comment is this sounds correct, but in view of the PTAB heavy workload and statutory deadlines, PTAB can't fix this soon. Beside extending the length of these proceedings require Congressional law be modified and ultimately might benefit lawyers more than the parties.

Second, the AIPLA argues it's time to abandon the "broadest reasonable interpretation" for claims, since AIA trials are adjudicative rather than prosecution. I expect powerful forces to push back on this because they would face infringement of narrowly interpreted claims in court that might otherwise be held invalid in the USPTO.

In another place, the AIPLA argues PTAB should not require a motion to amend claims be grounded on a proof of patentability of the amended claim, since it distorts the presumption of validity of US patents and "short-circuits the burden" of the petitioner to prove unpatentability. Since nearly all motions to amend claims are denied, something should be done to make it possible to enter amendments to claims. One approach might be the patent owner could be just required to prove the narrow amended claim satisfies 35 USC 112 rather than prove it satisfies the requirements of 35 USC 102 and 35 USC 103, which were met when the broader claim was allowed.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, October 20, 2014

IAM - The US has not come close to abandoning software patents

Tonight, I suggest reading Josh Wild's Intellectual Asset Management (IAM) blog post The US has not come close to abandoning software patents, former Microsoft chief patent counsel tells IAM.

In the post, former Microsoft Chief Patent Counsel Bart Eppenauer seeks to rebuts those claiming Alice wiped software patents. Mr. Eppenauer notes the Alice decision held software patents are eligible as a category (thank you for noting it) and that invalidity decisions applying Alice were for weak patents (e.g., Internet Bingo) written before Alice was handed down.

I mostly agree with Mr. Eppenauer's observations that we have uncertainty to work through in the USPTO and courts, but note the initial results indicate the law has changed. I would add Alice missed an opportunity to eliminate some uncertainty when it declined to give guidance on how to determine what is an abstract idea other than say Alice is like Bilski.

However, my comment if someone (no matter how smart) argues something sweeping and contrary to the past has changed, the person might not know. What am I talking about? How about the statement that Alice resulted in the invalidity of hundreds of thousands of software patents? For example, see Big US tech companies face major patent losses in the post-Alice world, IAM research reveals. But who has read all of these US patents? Sure, an Internet Bingo patent was held invalid, but this doesn't prove anything about "many software patents." Mr. Eppenauer is smart to say let's see how the software patent eligibility standard develops in the USPTO and courts in the coming years. It might sound stodgy, but it's going to be far less embarrassing than explaining to others why you believed that "smart chicken little" shouting the sky is falling. Yes, we have clouds, but let's follow along and see what the community develops in response.

Trade secret and copyright can complement, but not replace patents which provide the broadest intellectual property protection. So I expect many to continue to pursue patent protection on software inventions despite the uncertainty presented by Alice. 

Copyright © 2014 Robert Moll. All rights reserved.