Wednesday, April 16, 2014

US Design and Utility Patents - How Do They Differ?

Don't let the term "patent" confuse you, design patents and utility patents are different forms of legal protection. Generally, a utility patent, which is what most people mean when they don't specify what type of patent, protects the way an invention works or is used (35 U.S.C. 101). In contrast, a design patent protects the way the invention looks (35 U.S.C. 171). Making it confusing at times, an invention may be eligible for one or more design patents and/or utility patents!

Some of the other differences between US design and utility patents are as follows:

1. Patent term: An utility patent application filed on or after June 8, 1995 has 20-year patent term from the earliest effective U.S. filing date (subject to any patent term adjustment, e.g., for PTO delay), while the term of a design patent is 14 years from the issue date (35 U.S.C. 173).

2. Maintenance fees: For a utility patent to remain in force, one must pay maintenance fees 3.5., 7.5., and 11.5 years (extendible six months with a surcharge fee) from the issue date (37 CFR 1.20), while design patents require no maintenance fees.

3. Claims: Design patents have a single claim, while utility patents typically have multiple claims.

4. Restrictions: The Examiner has discretion whether to restriction on multiple inventions in a utility application, but it's mandatory in design patent applications (MPEP § 1504.05).

5. International applications: the Patent Cooperation Treaty (PCT) permits extending foreign deadlines for multiple countries for utility patents, while design patents await implementation of Hague agreement hopefully late 2014.

6. Foreign filing deadlines: utility patent applications have up to 12 months after the first filing, while design application only have up to 6 months (35 U.S.C. 172). Don't forget this difference!

7. Provisionals: Utility patent applications may claim the benefit of a provisional application, while design patent applications cannot.

8. Request for Continued Examination: Available for utility patents application, but not for design applications.

9. Continued Prosecution Application (CPA): only available for design applications today.

10. Publication of Application: Required for all utility patent applications unless foreign filing rights are waived by the applicant, but design applications are not subject to publication.

This is a plain English version of MPEP 1502.01. See MPEP 1500 Design Patents for details.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, April 14, 2014

Patent Bolt - Google Patent Applications - Smart Contact Lenses

Patent Bolt states the USPTO published Google seven patent applications describing smart contact lenses in An Avalanche of New Google Contact Lens Patents Come to Light. That's a smart way to expand the market for Google Glass, right? And it may also help with people who don't like Google Glass, as long as the user keeps the public at a "undetectable distance" while he or she snaps photos with the camera embedded in the contact lenses.

More seriously, the smart contact lenses could have real value in certain contexts. As stated in Patent Bolt: a blind person wearing Google's contact lens with a built-in camera may be walking on a sidewalk and approaching an intersection. The analysis component of the contact lens #265 (noted further below) can process the raw image data of the camera to determine processed image data indicating that the blind person is approaching intersection with a crosswalk and establish that there is a car approaching the intersection."

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, April 12, 2014

SCOTUSblog - GW Law Professor Orin Kerr - US Supreme Court

In the last decade the U.S. Supreme Court has been granting certiorari on patent cases at an increasing rate. And the cases can have a long term impact on patent law. Thus, it is useful to step back and consider how the Court operates, the value of predictability in the law, the politics of the decisions, and how a generalist court contends with technology. It is especially important as the Court works through a standard for what computer implemented inventions are patentable in Alice v. CLS Bank

SCOTUSblog is publishing a five-part interview with former Supreme Court clerk, now Professor Orin Kerr of George Washington Law School that gives real insight into the Court:

SCOTUSblog on camera: Orin Kerr – Part one

SCOTUSblog on camera: Orin Kerr – Part four

I will update after Part five is published.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, April 10, 2014

USPTO - America Invents Act Patent Trials Roundtables

The Patent Trial and Appeal Board (PTAB) has invited me (as well as many others) to attend roundtables on the new America Invents Act (AIA) patent trials (e.g., inter partes review, post-grant, covered business method review and derivation). It sounds like a timely conference.

Here's the invitation with the dates and locations if you are interested.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, April 8, 2014

WSJ - The Wright Brothers and a Patent-Law Dogfight

In The Wright Brothers and a Patent-Law Dogfight Mr. Goldstone argues that the US patent system is not adept at dealing with new techologies. He says look at the Wright brothers patent wrangling and argues that it led to their demise which should be instructive to innovators.

Mr. Goldstone has taken on quite the task. To get started he says federal courts are now awash in patent infringement suits that they seem to have little real notion of how to resolve. Referring to Alice v. CLS Bank, it is not that clear he isn't right, but generally federal district courts know how to resolve cases. I think it is more a uncertainty problem as the Federal Circuit and Supreme Court are not shy to express different notions on how to resolve cases.

Referring back to the article, Mr. Goldstone says it should be instructive to see how the patent system did not work that well with regard to a watershed innovation: flight. Yes, the Wright brothers did seem to lose their way in seeking patent royalties from "everyone." But it appears the real problem is their technology was inferior. And the Wright brother's situation gets overblown because it seems to say tech companies should "quit patent wrangling and get back to innovation" as "Orville Wright died penniless after attending too many depositions and micromanaging patent litigation." Never mind that they brought an inferior solution to the marketplace, it's about the risks of focusing on patent enforcement.

On the other hand, the article highlights an important point that isn't typically realized: the non-infringement defense is a potent one. Stanford University law professor Mark Lemley stated in Does Familiarity Breed Contempt Among Judges Deciding Patent Cases: "We find that judges with more patent experience are less likely to rule for patentees on infringement, though not on validity. Familiarity, it seems, breeds contempt – not necessarily of patents, but of the breadth patentees sometimes claim for their legal rights."

In the end the article tries to support a conclusion about the patent system not dealing with new technology with unrelated and/or shaky premises: (1) the courts are swamped; and (2) the courts are clueless, and suggests seeking patent royalties could result in the fate of Orville -- incurable disease and dying penniless.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, April 6, 2014

UC Berkeley Professor Suzanne Scotchmer: 1950 - 2014

UC Berkeley Professor Suzanne Scotchmer, a leading economist on intellectual property law and policy and innovation, passed away after a bout with cancer on January 30, 2014.

We probably have different stories about how we discovered Professor Scotchmer's writing. I was searching for "something else" on the Web and I stumbled across her articles on intellectual property: each article was unique and brilliant, which compelled me to read more. If you are not familiar, you might start with Standing on the Shoulders of Giants: Cumulative Research and the Patent Law, which elegantly describes patent incentives we should attribute to cumulative innovation.

If you are interested, UC Berkeley Center for Law & Technology is hosting a program to honor Professor Scotchmer on May 1, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, April 4, 2014

USPTO - Crowdsourcing and Third-Party Preissuance Submissions Roundtable on April 10, 2014

The USPTO is hosting a roundtable to discuss the use of crowdsourcing and third-party preissuance submissions to identify prior art and increase the quality of examination leading to higher quality patents.

These are noble goals, but so far the number of third-party submissions is relatively small compared to the number of pending US patent applications. Finding pertinent prior art can be time consuming, and tends to not get done unless that effort is compensated. How about micro-entity fees on one application in exchange for submission of prior art that becomes the basis of a prior art rejection?

The roundtable will be held at USPTO's Madison Auditorium South Concourse Level in Alexandria, VA from 12:30 pm to 5:00 pm ET on April 10, 2014. The roundtable can be also accessed by WebEx. Registration is on a first-come, first-served basis if you email

The USPTO requests written comments on any topic in the Federal Register notice no later than April 25, 2014. For details on written comments click here.

The Crowdsourcing Roundtable page gives directions, the agenda, and RSVP details. For more information you can also contact Mr. Jack Harvey: or 571-272-8004.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, April 1, 2014

Apple v. Samsung - Apple Seeks $2 Billion for Patent Infringement

Today, the federal district court for San Jose, California heard opening arguments in Apple v. Samsung which is their second major trial for patent infringement. Apple is now seeking Samsung pay $2 billion for infringement of five U.S. patents. Aggressive lawyering, the hyperbole - we could have sued on 50 patents and the judge has instructed you ... (when Judge Koh hadn't), an embarrassing "Holy war" email, each companies unabated ambition to be #1, and the billions at stake suggest this trial (like the first trial) will go to judgment.

See Joe Mullin's Apple lawyer to jury: Samsung "crossed into the dark side"

Copyright © 2014 Robert Moll. All rights reserved.

Monday, March 31, 2014

Supreme Court - Alice Corp. v. CLS Bank - Computer-Implemented Inventions Patent Eligibility, 35 USC 101 - Today's Hearing Transcripts

Today, the U.S. Supreme Court held an oral hearing in Alice Corporation v. CLS Bank International which will determine the patent eligibility standard for computer-implemented inventions.

Here's a copy of the written transcript of the oral hearing.

Here's a copy of the audio of the oral hearing from The Oyez Project at IIT Chicago-Kent College.

Here's Columbia law professor Ronald Mann's summary of the hearing: Argument analysis: Justices seeking path between Scylla and Charybdis for financial services patent in SCOTUSblog.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, March 29, 2014

USPTO - Manual of Patent Examining Procedure (MPEP) 9th Edition Released on March 28, 2014

The USPTO published the latest version of the Manual of Patent Examining Procedure (MPEP), 9th Edition on March 28, 2014.

The MPEP is based on the USPTO rules, 37 Code of Federal Regulations, federal court cases, and federal patent law, Title 35 of the United States Code.

The MPEP informs patent attorneys, agents, and examiners how to interpret rules and laws in detailed situations that arise during prosecution of a patent application in the PTO. For example, Chapter 2100 of the MPEP tells how to persuade an examiner as to the basis for granting a patent for a given US patent application. I have found it helpful in my practice as a patent attorney.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, March 28, 2014

USPTO - Public Hearings on Proposed Attributable Ownership Rules - Professor Feldman's Written Testimony

As a follow up to USPTO - Public Hearings on Proposed Attributable Ownership Rules, Professor Feldman of UC Hastings Law School sent a link to her written testimony on the proposed attributable ownership rules on March 26, 2014.

Professor Feldman persuasively argues why it is important to identify the parties to a transaction. As she puts it: "shell games and hide-and-seek rarely make for an efficiently functioning market." She also points out the asymmetry in discovery that allows patent trolls to assert patents and obtain nuisance settlements as part of why transparency is important.

I don't see a reasonable argument in favor of allowing parties to purposely cloak ownership. However, from my perspective as a patent attorney, the proposed rules to identify patent ownership numerous times would impose a burden on many patent owners. It may help solve an aspect of the patent troll problem, but at a significant cost. For example, a patent term running 20 years from the filing date can "out live" management of a tech company, the inventors, and the patent attorneys. Thus typical discontinuity that can occur multiply times during the patent term will impose an administrative burden to ensure ownership changes are promptly reported over the patent term. The time we need to know attributable ownership is when monetizing activity ensues (e.g., licensing negotiations or patent infringement suit filed or threatened).

It will be interesting to see if the USPTO modifies the proposed rules as they appear likely to raise patent prosecution costs for all and result in patent loss for what may be in many cases an inadvertent mistake.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, March 26, 2014

USPTO - PTAB Patent Trial Roundtables in April - May 2014

The Patent Trial and Appeal Board (PTAB) is hosting roundtables regarding America Invents Act patent trials at eight locations in April - May 2014. America Invents Act (AIA) patent trials (inter partes review, post-grant review, and covered business method review) can significantly reduce the cost of challenging patent validity. The Silicon Valley roundtable will be hosted at Santa Clara University. See links below for details. The USPTO is hosting the roundtables and webcasts for free.

As stated in the notice the PTAB roundtables will "share information about the new AIA trials (i.e., inter partes reviews, post grant reviews, covered business method reviews, and derivations) including statistics, lessons learned, and techniques for successful motions practice.  The Board is interested in receiving feedback about the trials and will feature a panel discussion to elicit public input.  At each roundtable, at least five administrative patent judges will participate and be available for questions and conversation."

Tuesday, March 25, 2014

USPTO - Been Sued or Gotten a Demand Letter?

In July 2013, President Obama, upon being informed about abusive patent litigation, directed the USPTO "to empower those who have received a demand letter or may be threatened with a patent lawsuit with information about their options." In response, the USPTO recently published an online toolkit for defendants: Been Sued or Gotten a Demand Letter? that gives strategies, options, legal resources, a glossary and private resources such as Lexa Machina and RPX.

What should we expect now that we are leaving the world of procuring patents to the topic of patent litigation? Do you think the USPTO will provide an online toolkit for US patent owners "Is Your Patent Being Infringed?" that gives strategies, options, legal resources, and private resources such as Intellectual Ventures and contingency fee law firms to help patent owners license and enforce patents?

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, March 22, 2014

Professor Sichelman - The Vonage Triology: A Case Study in "Patent Bullying"

University of San Diego Law Professor Ted Sichelman published an interesting article The Vonage Trilogy: A Case Study in "Patent Bullying" on February 18, 2014.

Professor Sichelman tells us "patent bullies are large, established operating companies that threaten or institute costly patent infringement actions of dubious merit against smaller companies, usually in order to suppress competition or garner licensing fees." 

Professor Sichelman states "patent bullies have scarcely been discussed in the academic literature or popular press, especially in recent years."

Professor Sichelman examines Sprint, Verizon and AT&T patent infringement suits against Vonage, a startup providing Internet telephone services. Yes, whatever happened to Vonage? The article says the patent infringement suits sank Vonage. How many startups are hampered not by patent trolls but by the incumbents' patents? We should figure this out, because incumbents patent portfolios may not just capture innovation, but generate a patent thicket for startups seeking to enter the marketplace. Congress should take a look at patent bullying -- is Vonage an isolated instance or an all too frequent occurrence? 

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, March 20, 2014

USPTO - Prioritized Examination

USPTO prioritized examination enables an applicant to get a final decision on patentability of an application within 12 months.

Prioritized examination can be made for original applications (Track One) and for a request for continued examination (RCE).

The USPTO fees for prioritized examination are $1,000 for a micro entity, $2,000 for a small entity, and $4,000 for a large entity. Legal fees are typically small, because the request form is easy to complete and more importantly requires no pre-filing search.

Although prioritized examination limits requests to applications with no more than four independent claims and 30 total claims, most US patent applications fit within the limits.

In a backlogged field such as software where delays in initial examination can stretch over years, prioritized examination can result in competitive advantage.

Caveats: if the invention lacks patentability, prioritized examination will rapidly inform of the unhappy news, which may not be consistent with a wish to merely report "I have a patent pending." It also will front-load the prosecution fees.

See USPTO Prioritized Patent Examination Program for the request form, a quick guide, the final rules for prioritized examination, and some FAQs.

Also see the USPTO Notice Changes to Permit Delayed Submission of Certain Requirements for Prioritized Examination.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, March 18, 2014

USPTO - Java 8 May Cause EFS-Web and Private PAIR Authentication Issues

The USPTO has alerted the community that Oracle's first version of Java 8 may cause authentication issues for users of Private PAIR and EFS-Web.  If Java 8 is an issue, the USPTO says revert to Java 7 update 51.

Here's the USPTO notice that arrived late last night:

"Oracle has announced that the first version of Java 8 will be released on Tuesday, March 18, 2014. This version will not be an automatic update, however if you install Java 8 and encounter authentication issues, you will need to revert to Java 7 Update 51.

USPTO technical teams are coordinating closely with Oracle and Entrust for a solution.

Contact the Patent EBC at 1-866-217-9197 (toll-free) or if you need further assistance."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, March 17, 2014

Federal Circuit - Verderi v. Google - District Court's Claim Construction Error Vacates Non-Infringement Judgment

In Verderi, LLC v. Google, Inc., the Federal Circuit vacated a judgment of non-infringement of four U.S. patents owned by Verderi, LLC because the district court erred in claim construction.

On October 15, 2010, Vederi LLC sued Google alleging Google Street View infringed U.S. Patent No. 7,239,760U.S. Patent No. 7,577,316U.S. Patent No. 7,805,025, and U.S. Patent No. 7,813,596 describe methods for creating synthesized images of a geographic area that can be displayed on a computer.

As background, Google Street View produces images and view that are curved or spherical, and never flat because it combines images of a wide range of views recorded by multiple cameras having wide-angle lenses mounted on a moving vehicle. Those photographs are overlapping pictures taken from a single location at approximately the same time. These images are stitched together into a virtual spherical composite image. The resulting image is a two-dimensional representation of a spherical shape.

Claim 1 of the '760 patent is representative of the claims:

1. In a system including an image source and a user terminal having a screen and an input device, a method for enabling visual navigation of  geographic area from the user terminal, the method comprising:
  • receiving a first user input specifying a first location in the geographic area;
  • retrieving from the image source a first image associated with the first location, the image source providing a plurality of images depicting views of objects in the geographic area, the views being substantially elevations of the objects in the geographic area, wherein the images are associated with image frames acquired by an image recording device moving along a trajectory;
  • receiving a second user input specifying a navigation direction relative to the first location in the geographic area;
  • determining a second location based on the user specified navigation direction; and
  • retrieving from the image source a second image associated with the second location (emphasis added).
In the Markman hearing, Google argued "views being substantially elevations of the objects" in claim 1 required "vertical flat (as opposed to curved or spherical) depictions of front or side views." Verderi stated that it merely meant "front and side views of the objects." The district court stated the patents "did not disclose anything about spherical views" and entered summary judgment in favor of Google.

The Federal Circuit stated when it interprets claims it relies primarily on intrinsic evidence: the claim language, the specification, and the prosecution history and apart from the claims, the specification is the single best guide to the meaning of a claim term. After considering the intrinsic evidence, a court may seek guidance from extrinsic evidence, but should understand it may be less reliable than intrinsic evidence (quotations and citation omitted).

The Federal Circuit noted that the district court erred by not relying the intrinsic evidence: (1) the claims broadly recited "substantially elevations," but the court adopted an architect's strict definition of an elevation view, which read "substantially" out of the claims; (2) Figure 16 of the patents depicted buildings with depth and perspective not just front and side, which is more than an elevation view; and (3) The specification described taking a photo with a fish-eye lens, which produces photos which are not flat and not an elevation. 

After reading the opinion, I think the specification was contrary to Google's "substantially elevations" = "flat images" argument at the Markman hearing so the decision was not surprising. On the other hand, using a relative term such as "substantially" in a claim is not risk free as it may raise an indefiniteness defense.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, March 14, 2014

Supreme Court - Alice Corp. v. CLS Bank - Computer-Implemented Inventions Patent Eligibility, 35 USC 101 - 41 Amicus Briefs

As we approach the oral hearing in Alice Corp. v. CLS Bank, many companies are filing amicus briefs to influence the Supreme Court's views on patent eligibility of computer-implemented inventions. See the ABA Supreme Court Preview: 41 amicus briefs (3 briefs support petitioner, 16 support respondent, and 21 briefs favor neither party).

The question presented: "Whether claims to computer-implemented inventions-including claims to systems and machines, processes, and items of manufacture-are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?"

For additional information see Donald Chisum's Article - Patents on Computer-Implemented Methods and Systems and U.S. Supreme Court Grants Certiorari in Alice v. CLS Bank.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, March 12, 2014

Juniper Networks v. Palo Alto Network Patent Suit Ends in Mistrial

This week Juniper Networks failed to convince a jury that Palo Alto Network's PA-500, PA-2000, PA-4000 and PA-5000 Series Firewalls infringe US Patent No. 7,779,459US Patent No. 7,650,634, and US Patent No. 7,302,700.

For details see Juniper Networks not giving up firewall patent fight vs. Palo Alto Networks and Juniper vs. Palo Alto Networks: Firewall court battle set to begin 

Juniper claims Palo Alto firewalls are based on intellectual property (IP) that Juniper obtained when it paid $4 billion for Netscreen in 2004. Juniper claims Palo Alto knew all about this infringement given Nir Zuk now at Palo Alto, developed the firewalls with Yuming Mao, when they worked at Netscreen.

Professor Tanenbaum says firewalls are the I/O police that inspect data packets on computer networks. The data packets are routed to a "digital drawbridge." Data packets meeting requirements are forwarded into the "castle" and those that don't are "unceremoniously dumped in the moat." In short, firewalls keep the "good bits" (e.g., confidential information) inside the network and keep the "bad bits" (e.g., viruses, worms and other digital pests) outside of the network.

Juniper says Mr. Zuk was a key developer of the IP in question, so it's curious he is not a named inventor of the '459 patent or the '700 patent given US law requires naming all inventors, but the articles don't say much more to support an improper inventorship defense. Juniper might argue assignor estoppel bars that invalidity challenge, but Palo Alto should be able to file a petition for inter partes review to sidestep assignor estoppel.

Juniper immediately promised to refile this lawsuit, but what's the likelihood the jury will rule in favor of Juniper after a mistrial? It reminds me of a boxer immediately claiming a punch that landed didn't hurt. The larger the protest, the more it hurt. Not to say we know the mistrial stung Juniper, but its insistence it wants to keep go another round may suggest a bluffing boxer on the way out.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, March 10, 2014

USPTO - Guidance Memorandum on Subject Matter Eligibility of Claims Reciting or Involving Laws of Nature, Natural Phenomena, and Natural Products

On March 4, 2014, the USPTO published a memorandum, Guidances for Determining Subject Matter Eligibility of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and/or Natural Products.

As stated in the memorandum "the new procedure set forth in the Guidance will assist examiners in determining whether a claim reflects a significant difference from what exists in nature and thus is eligible, or whether a claim is effectively drawn to something that is naturally occurring, like the claims found ineligible by the Supreme Court in Myriad."

As some commentators have pointed out the US Supreme Court is not the origin of the "significant difference test," but as a practical matter I expect many applicants in the chemical and biotech industries will be required to show how the claims are significantly different than the judicial exceptions to persuade examiners that the claims are patent eligible under 35 USC 101.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, March 8, 2014

USPTO - Public Hearings on Proposed Attributable Ownership Rules

The USPTO will hold public hearings to get input on the proposed attributable ownership rules on March 13 and 26, 2014. The USPTO is apparently addressing the criticism regarding the lack of public input and the likely impact of these proposed rules. Losing a valid patent due to someone missing a change in ownership is draconian even if you have the right to petition against that result. It will be interesting to see if the USPTO modifies the rules in response as they appear likely to raise patent prosecution costs and may result in loss of patent rights for what will be in many cases an inadvertent mistake.

Here's the USPTO notice:

"The public is invited to attend the hearings in person or via Webcast. Additionally, the public is invited to give testimony in person at the hearings and/or to submit written comments about the proposed rules. The deadline for requesting to give testimony has been extended to Wednesday, March 12, 2014, and the deadline for submitting written comments has been extended until Thursday, April 24, 2014.

The attributable ownership proposed rules require that the attributable owner, including the ultimate parent entity, be identified during the pendency of a patent application and at specified times during the life of a patent. More details about the attributable ownership proposed rules are available here:
Hearing Thursday, March 13, 2014, from 1 to 4 p.m. (ET)

USPTO Madison Auditorium North, Concourse Level

Madison Building

600 Dulany Street

Alexandria, VA 22314

Webcast Access Information:

Event number: 990 499 952

Event password: 12345"

Event address for attendees:

Hearing Wednesday, March 26, 2014, from 9 a.m. until noon (PT)

UC Hastings College of the Law

Louis B. Mayer Lounge

198 McAllister Street

San Francisco, CA 94102

LiveStream Access Information:

Draft agendas are available here:
San Francisco:"

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, March 6, 2014

Stanford Technology Law Review - Design Patents in the Modern World

Design patents have become an important topic in US patent law. Formerly viewed as the "weak sister" of utility patents, the large damage awards in design patent infringement cases such as Apple v. Samsung have a way of changing everybody's mind.

Today, Ms. Anna Sallstrom, Editor in Chief, Stanford Technology Law Review, sent an email that the Stanford Technology Law Review has published the presentations given in Design Patents in the Modern World conference held at Stanford Law School in 2013:

Progress and Competition in Design
by Mark McKenna & Katherine Strandburg

Functionality and Graphical User Interface Design Patents
by Michael Risch

Virtual Designs
by  Jason Du Mont & Mark Janis

(R)evolution in Design Patentable Subject Matter: The Shifting Meaning of “Article of Manufacture”
by Andrew Torrance & William Seymour

A Rational System of Design Patent Remedies
by Mark Lemley

Overlapping Intellectual Property Doctrines: Election of Rights Versus Selection of Remedies
by Laura Heymann

Design Patents: Law Without Design
by Peter Lee & Madhavi Sunder

Moving Beyond the Standard Criticisms of Design Patents
by Sarah Burstein

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, March 4, 2014

USPTO - Third Party or Preissuance Submissions

Congress sometimes establishes laws that in theory should be helpful but for a variety of reasons fail to get much use such as the preissuance submission provision of the America Invents Act (AIA).

Preissuance submissions became available about a year and half ago. They allow a third party to submit prior art in a patent application.  

The USPTO received 1,414 preissuance submissions as of January 17, 2014. Note this is a fraction given the USPTO Patent Dashboard states 600,053 applications are in the unexamined backlog as of January 2014. In any event, the largest number of submissions were filed in Technology Center (TC) 1700, which relates to mechanical engineering. Surprisingly, the fewest were filed in TC 2400, which relates to electrical engineering.

The remainder of this article is from the USPTO:

"Figure 1 below shows the distribution of submissions across technology centers.

Number of Submissions Per Technology Center
Figure 1

Proper Preissuance Submissions
Most third-party submissions received as of January 17, 2014, have met the eligibility requirements and been categorized by the Office as proper.  Figure 2 below shows the percentage of proper and improper submissions, and Figure 3 below shows the proper submissions categorized by technology areas.  The most common reasons for non-compliance relate to a failure to meet the timing, concise description of relevance, and signature requirements.  Statistics show, however, that the number of improper submissions is leveling off, and in turn, that the number of proper submissions is rapidly increasing.

Total Preissuance Submissions
Figure 2

Number of Proper Submissions per Technology Center
Figure 3

Distribution of Documents in Proper Preissuance Submissions
In the total number of proper preissuance submissions received as of January 17, 2014, the public presented 3,339 documents for consideration by the Office.  Figure 4 below shows the submitted documents categorized by type.

Submitted Documents for Proper Cases
Figure 4

Third-Party Submission Usage by Examiners
When the Office receives a compliant preissuance submission in a particular application, the examiner must consider the submission as a matter of course.  For the submissions made as of January 17, 2014, examiners have relied upon the prior art contained in them to make a rejection in 12.50% of the impacted applications.  Figure 5 below depicts all the applications where a rejection issued after a proper submission was received.  Additionally, in the applications where rejections were made based upon the art contained in a preissuance submission, the examiner rejected 50% of the time for obviousness under 35 U.S.C. 103; 18% of the time for anticipation under 35 U.S.C. 102; and the remainder of the time for both obviousness and anticipation.  Figure 6 below features the applications having rejections using third-party submissions broken down by the type of rejection under the statute.  Lastly, with respect to the type of rejection made after receipt of a proper third-party submission, most were First Actions on the Merits followed by Final Rejections.

Applications with Office Actions after receipt of Proper Third-Party Submission
Figure 5

Applications having Rejections (by Statute) and Using Third-Party Submissions
Figure 6


The public has shown interest in locating potential prior art for submission to the Office by utilizing crowdsourcing Web sites, such as Ask Patents by Stack Exchange.  Indeed, members of the public have been posting requests for prior art in published applications on these sites.  The Office feels confident that the number of proper third-party submissions will continue to increase as users become more familiar with the ability to make such submissions as well as the resources available to locate prior art such as crowdsourcing.  The Office will continue to monitor the number third-party submissions and periodically update statistics on these filings."

The USPTO did a decent job showing what is happening with preissuance submissions, but what is missing is a graph that shows if the rate of filing preissuance submissions is increasing over the last year and a half. Without this it is hard to share the USPTO's confidence submission will increase. I have felt the risk is you give up your prior art in an ex parte environment, which will not allow you to participate, plus alert the application owner that "somebody cares" which may lead to the application owner filing one or more continuations which could cause problems down the road.

See my related post: Third Party Preissuance Submissions of Prior Art

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, March 2, 2014

Supreme Court - Award of Attorney Fees, 35 USC 285 - Professor Mann's Article on Octane Fitness and Highmark Hearings

Today, the award of attorneys fees is a hot issue in patent law. 35 USC 285 states that "the court in exceptional cases may award attorney fees to the prevailing party," but courts rarely award attorneys under 35 USC 285. Thus, some corporations are lobbying Congress to redefine that standard to increase the risk of paying "humongous" attorney fees to cut off patent licensing / troll activities.

Redefining the standard may just generate uncertainty and not help long term. Another approach is to wait for the Supreme Court to clarify the standard. Last week the Supreme Court conducted hearings to consider the substantive standard for awarding attorney fees in Octane Fitness and the standard of review for appeals in Highmark.

I started to read through the Supreme Court hearing transcripts this weekend, but found a nice argument recap by Columbia law professor Ronald Mann Justices hard to read in twin disputes about attorney's fees in patent litigation, which can help one navigate where we are going in this area of the law.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, February 27, 2014

PTAB - Administrative Patent Judges Message on Patent Owner's Preliminary Response in an Inter Partes Review

Administrative Patent Judges Sheridan Snedden and Jacqueline Bonilla had the following message on the America Invents Act web page regarding patent owner's preliminary response in an inter partes review proceedings before the Patent Trial and Appeal Board (PTAB):

"Inter partes review (IPR) proceeding provides an opportunity to challenge the patentability of claims in an issued patent for anticipation or obviousness under 35 U.S.C. §§ 102 and 103, respectively, based on prior art patents or printed publications.  An IPR proceeding is conducted before the Patent Trial and Appeal Board and is divided into two stages:  (i) a preliminary stage; and (ii) a trial stage.  The preliminary stage begins with the filing of a petition to institute a trial.  To proceed to the trial stage, a petition must demonstrate that there is a reasonable likelihood that the petitioner would prevail as to at least one of the challenged claims.  A patent owner has a waivable right to file a preliminary response to the petition setting forth reasons why trial should not be instituted.  The preliminary stage ends with a decision from the Board on whether to institute a trial.

A preliminary response provides a patent owner with an opportunity to be heard before the Board decides whether to institute trial.  If the petition does not meet the standard set for instituting a trial, the petition will be denied, regardless of a preliminary response.  That said, a preliminary response may help the Board when deciding whether to institute a trial.  To provide the most benefit, a preliminary response should identify clear procedural and substantive reasons why the petition should be denied.  To follow is a discussion of potential arguments that a patent owner might raise in a preliminary response, if appropriate, to help the Board’s consideration.

Petitioner Is Statutorily Barred from Pursuing an IPR

A preliminary response may challenge the standing of a petitioner under 35 U.S.C. 315.

Under 35 U.S.C. 315(a)(1), a patent owner may provide evidence that the petitioner filed a civil action challenging the validity of a claim of the patent, e.g., in a declaratory judgment action in district court, prior to filing the petition.  Such action by the petitioner bars the institution of an IPR under 35 U.S.C. § 315(a)(1).  Board decisions providing guidance on the application of § 315(a)(1) include the following:
  • Anova Food, LLC v. Sandau, IPR2013-00114, Paper No. 17 (PTAB) (a civil action for a declaratory judgment dismissed with prejudice filed by a predecessor-in-interest to the petitioner bars an IPR under § 315(a)(1)).
  • Cyanotech Corporation v. The Board Of Trustees of the University of Illinois, IPR2013-00401, Paper No. 30 (PTAB) (a civil action involuntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
  • Clio v. The Procter and Gamble Co., IPR2013-00438, Paper No. 9 (PTAB) (a civil action voluntarily dismissed without prejudice does not bar an IPR under § 315(a)(1)).
  • Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper No. 24 (PTAB) (a civil action for a declaratory judgment of non-infringement is not a civil action challenging the validity of a patent barring an IPR under § 315(a)(1)).
Alternatively, a patent owner may provide evidence that the petitioner is barred from challenging the patent owner’s claims under 35 U.S.C. § 315(b).  As outlined in § 315(b), the Board may not institute an IPR if the petition was filed more than one year after the petitioner, real party in interest, or a privy, was served with an infringement complaint.  Board decisions providing guidance on the application of § 315(b) include the following:

  • Macauto U.S.A. v. BOS GmbH & KG, IPR2012-00004, Paper No. 18 (PTAB) (a dismissal without prejudice nullifies the effect of service for purposes of § 315(b)).
  • St. Jude Medical, Cardiology Division, Inc. v. Volcano Corp., IPR2013-00258, Paper No. 29 (PTAB) (a counterclaim is a “complaint alleging infringement of the patent” within the meaning of § 315(b)).
  • Accord Healthcare v. Eli Lilly and Co., IPR2013-00356, Paper No. 13 (PTAB) (service of a second complaint does not nullify the effect of a first served complaint for purposes of § 315(b)).
  • BioDelivery Sciences Int’l, Inc. v. MonoSol RX, LLC, IPR2013-00315, Paper No. 31 (PTAB) (challenged claims amended by a reexamination certificate issued after service of the complaint does not affect the “date on which the petitioner . . . is served with a complaint alleging infringement of the patent” under § 315(b)). 
Highlight Weaknesses in Petitioner’s Case of Unpatentability

The Board may not authorize a trial where the information presented in the petition fails to meet the requisite standard for instituting a trial—that is, fails to establish a reasonable likelihood that the petitioner would prevail with respect to at least one of the challenged claim.  35 U.S.C. § 314(a).  Thus, it is helpful to the Board if a preliminary response explains carefully the weakest parts of petitioner’s unpatentability positions.  For example, the preliminary response may include a detailed discussion or technical analysis relating to:

  • How any asserted references are not, in fact, prior art;
  • How asserted references lack at least one material limitation in one or more challenged claims; or
  • How an asserted reference teaches away from a combination of elements, as advocated by petitioner.  See, e.g., Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., IPR2013-00132, Paper No. 9 (PTAB). 
Petitioner’s Claim Construction is Improper

In an IPR proceeding, the Board construes claim terms according to their broadest reasonable construction in light of the specification of the patent in which they appear.  37 C.F.R. § 42.100(b); Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed. Reg. 48756, 48766 (Aug. 14, 2012).  Using this standard, a preliminary response may help the Board by carefully explaining claim construction positions.  The patent owner may wish to point to the specification, dictionary definitions, as well as logic in relation to the claims as a whole, to support a conclusion that petitioner’s claim construction is, for example, unreasonably broad.  In interpreting claims, however, one must take care to note the fine line between interpreting claims in light of the specification and improperly reading limitations into the claims from the specification.  Absent claim language carrying a clear narrow meaning, the Board will not limit a claim based on the specification unless it expressly disclaims the broader definition.  See, e.g., Ariosa Diagnostics, Inc. v. Verinata Health, Inc., IPR2013-00277, Paper No. 10 (PTAB).

Petition Contains Prior Art or Arguments Were Previously Presented to the Office.

Under 35 U.S.C. § 325(d), a preliminary response may wish to address whether the same or substantially the same prior art and arguments were previously presented to the Office.  Board decisions providing guidance on the application of § 325(d) include the following:

  • SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00581, Paper No. 15 (PTAB) (denying a petition as to grounds based upon substantially the same prior art and arguments as set forth in a prior IPR petition).
  • Oracle Corporation v. Clouding IP, LLC, IPR2013-00100, Paper No. 8 (PTAB) (granting a petition where new arguments and supporting evidence were presented that shed a different light on references previously considered during prosecution).
Petition Fails To Identify All Real Parties-in-Interest

Under 35 U.S.C. § 312(a)(2) and 37 CFR § 42.8, an IPR petition must identify all real parties-in-interest or privies.  A preliminary response may help the Board by pointing out how the petition fails to identify all real parties-in-interest.  The Trial Practice Guide provides guidance regarding factors to consider in determining whether a party is a real party-in-interest.  Whether a non-party is a “real party-in-interest” or “privy” is a “highly fact-dependent question” that takes into account how courts have used the phrases generally to “describe relationships and considerations sufficient to justify applying conventional principles of estoppel and preclusion.”  Trial Practice Guide, 77 Fed. Reg. at 48759.  One consideration is whether a non-party exercises, or could have exercised, control over a petitioner’s participation in an IPR proceeding.  Id. at 48759-60, 48695.  Other considerations may include whether a non-party, in conjunction with control, funds and directs the proceeding.  Id. at 48760.  Board decisions providing guidance on real party-in-interest or privy include the following:

  • Butamax™  Advanced Biofuels LLC v. Gevo, Inc., IPR2013-00214, Paper No. 11 (PTAB)(“‘common interest among litigation defendants seeking to invalidate or defend against enforcement of a patent . . . does not translate ipso facto into each defendant being a real party in interest where a request for reexamination is filed by only one of the defendants in the litigation’”) (citations omitted). 
  • Chimei Innolux Corporation v. Semiconductor Energy Laboratory Co., Ltd., IPR2013-00068, Paper No. 7 (PTAB) (patent owner failed to provide persuasive evidence that each co-defendant in a related litigation exercised control and provided funding of the IPR petition).
Supporting Evidence for the Preliminary Response

The preliminary response may cite evidence supporting the patent owner’s contentions.  Such evidence may include previously existing declarations, trial testimony, deposition testimony, and expert reports.  A preliminary response may not, however, present new testimonial evidence (i.e., testimonial evidence prepared specifically for the purpose of the IPR proceeding) without authorization from the Board.  Additionally, flooding the Board with evidence in a preliminary response is not helpful.  Rather, a preliminary response should aid the Board in navigating evidence of record cleanly and quickly."

Copyright © 2014 Robert Moll. All rights reserved.