Friday, December 19, 2014

USPTO - New Website - Beta Version

The USPTO announced its new web site this week:

"The USPTO encourages you to explore the public beta version of its new website. The site is part of the agency’s rollout of “Next Generation” technologies that will improve the experience of doing business with the USPTO.

In developing the new site, we met with hundreds of users—both frequent and new visitors to the site—to learn what information they look for and study how they attempt to find it. We conducted an in-depth analysis of site navigation, extensive user experience testing of the new design, and wide-ranging best practices comparisons. The new navigation makes it easier to access services and accomplish tasks. Users will no longer need to be familiar with the USPTO’s organizational structure in order to find the content they’re looking for. The site will also become increasingly mobile friendly as we add new functionality, making it more convenient than ever to work with the USPTO.

The site is easy to use for everyone. Each tab features links for beginners, but expert users can turn to the Quick Links feature for instant access to the tools they need. Further, you can still access detailed information about the agency in the About Us section. During the beta period, the old site will continue to be available in parallel with the new site.

We are excited about this work in progress, and your feedback will help us ensure a final product that best meets your needs. Take a look around, and tell us what you think. Find a link to the feedback site within the yellow banner at the top of any page on the beta site."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, December 18, 2014

USPTO - IP Stakeholders Discuss Harmonization of Substantive Patent Law at USPTO Roundtable

If you are interested in international patent harmonization, you should read the USPTO's Chief Policy Officer and Director for International Affairs Shira Perlmutter's post:

"On Wednesday, November 19, 2014, the USPTO hosted a roundtable on International Harmonization of Substantive Patent Law at our headquarters in Alexandria, Virginia. Roundtables like this one are essential tools for the USPTO to hear and understand stakeholder views on key intellectual property topics and their effects on various stakeholder and public policy interests, and we were glad to have a broad representation of stakeholders join us for the event.

In her opening remarks, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee said that although the USPTO and offices around the world have in recent years invested significantly in work sharing, the lack of harmonized laws related to key examination issues remains a barrier to more efficient and effective reuse of work. These key issues include the definition and scope of prior art, the grace period, as well as issues related to conditions for patentability, including novelty and obviousness.

Following Deputy Under Secretary Lee’s remarks, Commissioner for Patents Peggy Focarino introduced patent experts from the USPTO, the Japan Patent Office, the European Patent Office, and the U.K. Intellectual Property Office, who presented reports on the results of recent surveys on specific harmonization issues, including the grace period.

The roundtable discussion that followed was moderated by Robert Armitage, former General Counsel for Eli Lilly and Company, and featured panelists representing a broad spectrum of U.S. stakeholder interests, including: Q. Todd Dickinson, former USPTO Director; Herb Wamsley, Executive Director, Intellectual Property Owners Association of America; Hans Sauer, Associate General Counsel, Biotechnology Industry Organization; and James Love, Director, Knowledge Ecology International.

The panelists gave their views on the importance of harmonization and its impacts on stakeholders and the public, and indicated a willingness to be flexible in achieving workable compromise solutions. We will use this input and the position of flexibility as we work with partner offices to determine an appropriate course to decrease work sharing barriers.

Throughout the next year, the USPTO Office of Policy and International Affairs will work closely with our international counterparts in Group B+, our group in the World Intellectual Property Organization (WIPO), to establish a clear path forward in patent law harmonization. Read Deputy Director Lee’s remarks to the heads of Group B+ offices at WIPO, September 23, 2014 in Geneva, Switzerland.

Learn more about the Roundtable on International Harmonization of Substantive Patent Law or watch the webcast."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, December 16, 2014

USPTO - 2014 Interim Guidance on Patent Subject Matter Eligibility

The USPTO has published the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for examiners to use when determining subject matter eligibility under 35 U.S.C. 101 in view of U.S. Supreme Court decisions, including Alice Corp. v. CLS Bank, Association for Molecular Pathology v. Myriad, and Mayo Collaborative Serv. v. Prometheus Labs., Inc..

"The Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Examination Instructions issued in view of Alice Corp. and supersedes the March 4, 2014 Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products issued in view of Mayo and Myriad."

The USPTO expects to update the guidance in view of cases and in response to public feedback and gave the following claims to illustrate the analysis in the Interim Eligibility Guidance: Nature-Based Product Examples and promises to follow with abstract idea examples soon.

The USPTO is also seeking public comments:

"The USPTO is interested in receiving public feedback on the Interim Eligibility Guidance and the claim examples.  Comments may be submitted in writing.  Additionally, a public Eligibility Forum will be held where stakeholders will have an opportunity to provide oral feedback.  Details on submitting written comments and attending the Eligibility Forum follow below.

Any member of the public may submit written comments on the Interim Eligibility Guidance and claim example sets by electronic mail message over the Internet addressed to 2014_interim_guidance@uspto.gov.  Electronic comments submitted in plain text are preferred, but also may be submitted in ADOBE® portable document format or MICROSOFT WORD® format.  The comments will be available for public inspection here at this Web page.  Because comments will be available for public inspection, information that is not desired to be made public, such as an address or a phone number, should not be included in the comments.  Comments will be accepted until March 16, 2015.

A public forum will be hosted at the Alexandria campus of the USPTO on Jan. 21, 2015, to receive public feedback from any interested member of the public.  The Eligibility Forum will be an opportunity for the Office to provide an overview of the Interim Eligibility Guidance and for participants to present their interpretation of the impact of Supreme Court precedent on the complex legal and technical issues involved in subject matter eligibility analysis during examination by providing oral feedback on the Interim Eligibility Guidance and claim example sets.  Individuals will be provided an opportunity to make a presentation, to the extent that time permits.

Date and Location:  The Eligibility Forum will be held on Jan. 21, 2015, from 1pm – 5pm EST, in the Madison Auditorium North (Concourse Level), Madison Building, 600 Dulany Street, Alexandria, VA 22314. The meeting will also be accessible via WebEx.

Requests for Attendance at the Eligibility Forum:  Requests for attendance to the Eligibility Forum should be submitted by electronic mail through the Internet to 2014_interim_guidance@uspto.gov by JAN. 9, 2015.

Requests for attendance must include the attendee's name, affiliation, title, mailing address, and telephone number.  An Internet e-mail address, if available, should also be provided. When requesting attendance, individuals should indicate whether they wish to make a formal presentation.  The Office will attempt to accommodate all persons wishing to make a presentation, but may need to limit the length or number of presentations given time constraints.  Individuals will be notified of accepted requests for attendance by the USPTO no later than one week prior to the date of the meeting.  Space is limited.  Accordingly, it may not be possible to accommodate all requests, and only those with an accepted attendance request will be permitted to attend.  If necessary, non-accepted requesters will be notified by the USPTO.  The meeting will also be accessible via WebEx. Access instructions will be posted on this page by the forum date.

In order to ensure a broad cross-section of attendees, the USPTO reserves the right to limit the number of attendees from any single organization or law firm.  Therefore, organizations and law firms must designate their official representatives."

For more information, the USPTO recommends calling Raul Tamayo at (571) 272-7728 or Jennifer Lo at (571) 272- 7640 or sending an email to raul.tamayo@uspto.gov or jennifer.lo@uspto.gov.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, December 14, 2014

IP Watchdog - Secret Examination Procedures at the USPTO: My Experience with SAWS

If you are interested in the USPTO's Sensitive Application Warning System (SAWS), I recommend reading entrepreneur Devon Rolf's guest post on IP Watchdog: Secret Examination Procedures at the USPTO: My Experience with SAWS.

Does SAWS have a basis in statutory law and/or regulatory rules? The article makes it sounds like SAWS is, among other things, designed to disallow US patent applications that could generate "undue publicity" or "embarrassment." I am not sure how much latitude Congress is granting the USPTO, but perhaps the USPTO can help applicants understand how this all works.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, December 12, 2014

Supreme Court - Kimble v. Marvel Entertainment - Reviewing If A Patent Licensee Must Pay After Patent Expiration

Today, the US Supreme Court granted a petition for certiorari in Kimble v. Marvel Entertainment Inc. to review if a patent licensee has an obligation to pay royalties after patent expiration.

As background, U.S. Patent No. 5,072,856 to Kimble (Kimble) relates to a Spider-Man glove, which Kimble discussed with Marvel's predecessor. Marvel decided it could make the "Web Blaster" without Kimble's help. Kimble sued for patent infringement and breach of an oral agreement. A district court granted summary judgment of non-infringement, but a jury decided Marvel breached the agreement. This led to a settlement where Marvel agreed to buy the patent and pay royalties on future sales. The patent expired but the contract required Marvel to continue to pay royalties for sales. Kimble sued for breach of contract when the settlement unraveled. Marvel filed a DJ arguing successfully that Kimble couldn't get royalties for post-expiration sales. The Ninth Circuit opinion affirmed. Kimble filed a petition for certiorari to the Supreme Court.

The petitioner asked Brulotte v. Thys Co. (1964) be overruled. Brulotte had held a royalty agreement that goes beyond patent expiration is unlawful per se. The petitioner argued "Brulotte is the most widely criticized of this Court’s intellectual property and competition law decisions. Three panels of the courts of appeals (including the panel below), the Justice Department, the Federal Trade Commission, and virtually every treatise and article in the field have called on this Court to reconsider Brulotte, and to replace its rigid per se prohibition on post expiration patent royalties with a contextualized rule of reason analysis."

Note the Solicitor General's brief advised against review, since it said Brulotte is not about competition, but the Court's interpretation of federal patent law of allowing free access to an invention after the patent expires.

Also see Marvel's opposition brief.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, December 11, 2014

World’s Five Largest Intellectual Property Offices Release Annual IP5 Statistics Report

The USPTO announced the following:

"A coalition of the world’s five largest patent offices – the IP5 – recently announced the release of the 2013 IP5 Statistics Report. The Report has been designed to facilitate an understanding of operations and patent procedures among the Offices, while providing a means for gauging inventive activity, technology flow, and comparing procedures. The IP5 is comprised of the U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO).

According to the Report’s Executive Summary, the IP5 Offices granted almost 957,000 patents in 2013 – an increase of 4 percent compared to 2012. In addition, 2.1 million patent applications were filed in the IP5 Offices in 2013, which represents an 11 percent increase over the previous year.

In addition to the report itself, the IP5 offices also provide detailed statistical data sheets for historical numbers of patent application filings going back to the 1980s and patent grants broken down by International Patent Classification (IPC) codes and country of origin. The additional statistical data also includes an office by office comparison of fees associated with the patent process, including those associated with services by the World Intellectual Property Organization (WIPO).

The IP5 Offices, which together handle about 89 percent of the world’s patent applications, began meeting in 2007. They have since worked together to explore ways to further optimize joint efforts to improve quality and efficiency of the examination process and to explore and optimize work sharing opportunities between the Offices.

The IP5 Statistics Report was first released in 1983 as a project of the Trilateral Cooperation –EPO, JPO, and USPTO. In 2008, KIPO joined the effort and the first Four Office Statistics Report was produced. The 2011 IP5 Statistics Report represented a milestone in IP5 cooperation, encompassing the full cooperation of all the IP5 Offices including SIPO. The IP5 Offices intends to continue holding discussions on statistics and improving IP5 cooperation for next year’s Statistics Report."

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, December 10, 2014

Professor Robin Feldman - Transparency - US Patent Ownership

If you are interested in the problems arising from the ability to hide US patent ownership, I recommend reading Professor Robin Feldman's article Transparency proposing regulation borrowed from corporate securities law to identify the owners of US patents. Professor Feldman asks: "Who stands to win and lose when a patent system created to foster innovation is being utilized to hide and distort patent ownership?"

From the abstract of the article:

"The United States patent regime is a quintessential notice system. Implicit in its design is the concept that one attempting to license a patent can identify those who hold the requisite rights and the territory that the patent holders claim as their own. As the system has evolved, however, it bears little resemblance to the idealized form. Little scholarship has addressed problems related to notice within the modern patent system, largely because these problems have sprung up so recently. In the last five to seven years, an entire Hobbit’s world has been created under the foliage. Moreover, historic scholarly discussions of notice generally have focused on the role of governmental actors in ensuring that a patent can be properly understood and interpreted. In contrast, this article argues that market information is a critical element of the notice function of patents. One can think of the mechanisms for providing that market information as 'Transparency'.

To address transparency insufficiencies, one need not write on a blank slate. Rather, this article suggests borrowing from the substantial body of well-developed doctrine and literature concerning disclosure in the realm of corporate securities and explores how these doctrines could be molded to patent concerns.

The patent asset is imbued with public interest by virtue of the fact that it is a government grant, bestowed for constitutional purposes. As with the trading of public securities, the trading of an asset imbued with the public interest must be sufficiently regulated to ensure proper functioning of that trading market."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, December 9, 2014

Yahoo Tech News - The US Government Has a Secret System for Stalling Patents

Tonight, I suggest reading the Yahoo News article The US Government Has a Secret System for Stalling Patents.

The article notes that documents obtained under the Freedom of Information Act (FOIA) reveal the USPTO's Sensitive Application Warning System (SAWS).has been imposing extra scrutiny and delay on any US patent application designated as containing sensitive subject matter. The USPTO may do this without publishing that the application is a SAWS case. What makes subject matter sensitive? An application might be designated if it describes (1) a business method; (2) algorithms rejected under 35 USC 101; (3) claims that might be used (i.e., infringed) by the USPTO; (4) subject matter embarrassing to the USPTO; and (5) subject matter likely to trigger media attention.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, December 8, 2014

District Court Judge Orders Nebraska to Pay Patent Owners' Attorney Fees

In Activision TV Inc. v. John Bruning, the US District Court for the district of Nebraska ordered the state of Nebraska to pay $725,000 in attorney fees, because the state attorney general (AG) violated the First Amendment in sending cease and desist letters to the law firm representing two non-practicing entities: (1) stating their patent enforcement letters could be in violation of the Nebraska Consumer Protection Act; and (2) barring the law firm from initiating any new patent infringement enforcement efforts. The court held that the attorney general failed to prove the patent owners' actions were "objectively and subjectively baseless and done in bad faith."

Initially this AG's action may seem strange. But at the time the AG took action, the media blitz regarding patent trolls was in full force. Now the ruling states in so many words the AG's "strong arming" patent litigant was not saving the public from harm, but damaging the patent owner's federal rights to enforce their patents. Perhaps the judge perceived this was also little more than political grandstanding based on little or no fact investigation. Now the public whom this AG allegedly sought to protect gets to pay the patent owner's attorney fees.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, December 7, 2014

Cisco Systems Sues Arista Networks for US Patent and Copyright Infringement

Cisco Systems recently sued Arista Networks alleging its networking products infringe 14 Cisco patents and a number of copyrights. Arista stock dropped -7%.

Cisco claims Arista Network's rapid ascent is due to patent infringement and extensive copying from Cisco user manuals and over 500 Cisco commands used to configure networking products. Whether any of this proves true, Arista appears to be a rising competitor which Cisco would like to slow down. Arista includes a number of key people that left Cisco, went public six months ago, and has a market valuation of nearly $5 billion. It will be interesting to see if Arista files any counterclaims.

Cisco's Mark Chandler tells us his view in Protecting Innovation: "In the thirteen years I've been General Counsel of Cisco, I can count on one hand the number of times we've initiated suit against a competitor, supplier or customer. It's therefore only after thoughtful and serious consideration that we are today filing two lawsuits to stop Arista’s repeated and pervasive copying of key inventions in Cisco products. These suits cover key Cisco proprietary patented features and Cisco's copyrighted materials."

Cisco's patent infringement complaint including patents

Cisco's copyright infringement complaint

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, December 6, 2014

Supreme Court - Commil USA, LLC. v. Cisco Systems - Is Defendant's Good Faith Belief of Patent Invalidity A Defense to Induced Infringement?

Yesterday, the US Supreme Court granted Commil's petition for certiorari to review the Federal Circuit decision in Commil USA, LLC v. Cisco Systems Inc.. There the Federal Circuit held a defendant's good-faith belief a patent is invalid is a defense to induced infringement under 35 USC § 271(b). The Federal Circuit stated it could "see no principled distinction between a good-faith belief of invalidity and a good faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent."

Generally, a defendant can be liable for actively inducing (encouraging) infringement: (1) if the party induced directly infringes a patent claim; and (2) if the defendant has specific, knowing intent to encourage infringement of the patent claim which is more than intent to cause acts later held to infringe. Intent can be proven through circumstantial evidence or deliberate indifference to a known risk a patent exists.

Cisco Systems' brief in opposition

Solicitor General's brief

Copyright © 2014 Robert Moll. All rights reserved.

Friday, December 5, 2014

Federal Circuit - DDR Holdings v. Hotels.com, LLP - Software Patent Claim Held Patent Eligible

In DDR Holdings v. Hotels.com, LLP, the Federal Circuit applying Alice v. CLS Bank found a software patent claim that satisfies 35 USC 101. Here's the representative claim:
A system useful in an outsource provider serving web pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages;
(i) wherein each of the first web pages belongs to one of a plurality of web page owners;
(ii) wherein each of the first web pages displays at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants; and
(iii) wherein the selected merchant, the outsource provider, and the owner of the first web page displaying the associated link are each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer server is coupled to the computer store and programmed to:
(i) receive from the web browser of a computer user a signal indicating activation of one of the links displayed by one of the first web pages;
(ii) automatically identify as the source page the one of the first web pages on which the link has been activated;
(iii) in response to identification of the source page, automatically retrieve the stored data corresponding to the source page; and
(iv) using the data retrieved, automatically generate and transmit to the web browser a second web page that displays: (A) information associated with the commerce object associated with the link that has been activated, and (B) the plurality of visually perceptible elements visually corresponding to the source page.
Here's some commentary on DDR Holdings:

Michael Borella - DDR Holdings, LLC v. Hotels.com, L.P. (2014)

Gene Quinn - Federal Circuit Finds Software Patent Claim Patent Eligible

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, December 4, 2014

Professor Ronald Mann - Is the Patent Act more like the Sherman Act or the securities laws?

Professor Ronald Mann has a thought provoking article Is the Patent Act more like the Sherman Act or the securities laws? He discusses how the Supreme Court interprets various sections of the US Patent Act in very different ways.

As Professor Mann puts it: "In some areas, the Justices view the language of the statute as calling for them to pour judicially created content into vague and general words in the statute: the most obvious examples are patentability cases like Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, and Alice Corp. v. CLS Bank. I’d probably put the Court’s analysis of definiteness in Nautilus v. Biosig in the same pile."

"In other situations, the Court seems much more inclined to treat cases as purely statutory, to be resolved almost entirely by parsing the statute, however detailed or general it might be. Here I’m thinking of cases like Octane Fitness v. Icon and Highmark v. Allcare, cases that (in Justice Sonia Sotomayor’s words) “begin and end with” the language of the Patent Act. Limelight Networks v. Akamai Technologies – or at least Justice Samuel Alito’s explanation of the result – is another example."

In my opinion, Professor Mann is right. And we have watched the Supreme Court pour more judicial content into 35 USC 101. But why not resolve software patent eligibility standard by parsing the literal broad terms of 35 USC 101? I know talk about 150 years precedent, but also consider when Benson added an abstract idea exception to the broad language of 35 USC 101, the Supreme Court in effect wrote a "narrower 35 USC 101." Justice William Douglas apparently was seeking to not allow wholly preempting mathematical algorithm and expressed that patenting of software programs in general was a policy question and the Court was not competent to decide.

Further, Justice Douglas stated: "If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed."

It has been a while since the suggestion was made, but it seems maybe this is where the entire issue needs to go now-- before Congress.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, December 3, 2014

Robert Sachs - The Day the Exception Swallowed the Rule: Is Any Software Patent Eligible After Ultramercial III?

In The Day the Exception Swallowed the Rule: Is Any Software Patent Eligible After Ultramercial III? Robert Sachs argues that the Federal Circuit misinterpreted the US Supreme Court's Alice v. CLS Bank decision on patent eligibility under 35 USC 101.

It is encouraging to read a patent attorney eloquently point out the flaws in the Federal Circuit's decision rather than concede, but these type of arguments must be presented before the Federal Circuit not just posted in a blog to change its understanding of software patent eligibility.

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, December 2, 2014

After Alice v. CLS Bank - Software Patent Eligibility & 3D Printing?

In evaluating the impact of Alice v. CLS Bankit is important to recognize that "all software is not created equal."

1. In both Alice and Bilski, the US Supreme Court held business methods are not categorically excluded and patent ineligibility arose from improperly claiming an "abstract idea." Yet lower courts are interpreting Alice as nearly always preventing patent eligibility of business methods. Thus, you may get a business method patent in the USPTO, but expect both issuance and enforcement to be a challenge.

2. Non-business method software patents are still issuing in great numbers. In Patent Reform: Impact of Alice on Business Method Professor Dennis Crouch observes a chart in James Bessen's article that indicates a slow-down in issuance of business methods, but no decline in other software categories.

3. Software invention claimed properly in conjunction with a physical process are not likely to held an abstract idea under Alice v. CLS Bank. For example, Diamond v. Diehr held a method for curing synthetic rubber including steps using a mathematical formula and a programmed digital computer was patentable subject matter under 35 U.S.C. §101.

4. US patent claims like those in Diamond v. Diehr will issue may play a role in 3D printing technology because a great patent portfolio define the industry leadership.

Here's some commentary on what other attorney's think:

In 3-D Printing: Challenges and Opportunities (Part I), Michael Rosen describes how 3-D printer technology likely relates to IP and patents in the US.

In Many 3D Printing Patents Are Expiring Soon: Here’s A Round Up & Overview of Them, John Hornick and Dan Rowland discuss key 3D printing patents that are expiring and the recently settled 3D Systems v. Form Factor case.

In Formlabs, 3D Systems settle their 3D printing patent battle, Signe Brewster notes the 3D Systems v. Form Factor settlement after two years of litigation, but cautions that startups should not draw too much comfort given the patenting efforts in this industry.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, November 28, 2014

MIT Technology Review - Steve Jobs Lives on at the Patent Office

Tonight, I recommend reading Antonio Regalado's article in MIT Technology Review: Steve Jobs Lives on at the Patent Office.

As stated: "Years after his death, the former Apple CEO still wins patents." It is amazing that he is an inventor on 458 US patents (141 posthumously awarded). Some in the article questioned Steve Jobs role as a joint inventor, but the law only requires an inventive contribution. Beside Mr. Jobs' ability to collaborate with many others is a strength. It is also difficult to argue against his innovative contribution and influence on a tech company brought back from the brink in 1990s to the most valuable corporation in the nation building one of the largest US patent portfolios.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, November 27, 2014

USPTO - Electronic Business Center's 20 Most Frequently Asked Questions

I would like to pass along a link that may help if you have questions regarding customer numbers, becoming a registered e-filer, using EFS-Web (e.g., fixing the non-embedded font error), finding USPTO forms, and updating a list of attorneys having the power of attorney: Electronic Business Center's 20 Most FAQs.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 26, 2014

John Allison, Mark Lemley, and David Schwartz - Our Divided Patent System

Tonight, I recommend reading John Allison, Mark Lemley, and David Schwartz's article: Our Divided Patent System (October 14, 2014), which will be published in the University of Chicago Law Review, Vol. 82, 2015. This article presents evidence that different technologies have radically different patent enforcement outcomes, plus has a number of interesting footnotes tying together recent law review articles on patents.

From the abstract: "In this comprehensive new study, we evaluate all substantive decisions rendered by any court in every patent case filed in 2008 and 2009 — decisions made between 2009 and 2013. We assess the outcome of litigation by technology and industry. We relate the outcomes of those cases to a host of variables, including variables related to the parties, the patents, and the courts in which those cases were litigated.

We find dramatic differences in the outcomes of patent litigation by both technology and industry. For example, owners of patents in the pharmaceutical industry fare much better in dispositive litigation rulings than do owners of patents in the computer & electronics industry, and chemistry patents have much greater success in litigation than their software or biotech counterparts. Our results provide an important window into both patent litigation and the industry-specific battles over patent reform. And they suggest that the traditional narrative of industry-specific patent disputes, which pits the IT industries against the life sciences, is incomplete."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, November 25, 2014

Jonathan Tamimi - Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity

Tonight, I recommend reading UC Berkeley law student Jonathan Tamimi's article, Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity. The 60-page article is quite comprehensive, and has loads of data and tables regarding the results obtained in the America Invents Act trials.

In the article: "Part I discusses the historical background of the AIA. Part II navigates the AIA’s updated and expanded procedures for reexamining patent validity at the PTO. The first section of Part II details the advantages of challenging patent validity via AIA reviews relative to district court litigation. The second section presents the limitations and potential drawbacks of using AIA reviews. The third section discusses additional considerations for potential petitioners. Part III concludes with a brief summary of issues surrounding AIA reviews."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, November 24, 2014

Ron Laurie - A Rush to Judgment on Patentable Subject Matter

Tonight, I recommend reading Ron Laurie's post on IP Watchdog: A Rush to Judgment on Patentable Subject Matter. I appreciate Ron Laurie's framing of the issue:

"Should a District Court decide the question of patent-eligible subject matter under Section 101 as a “threshold issue” at the outset of the case – i.e., without the benefit of expert testimony and/or claims construction?"

Copyright © 2014 Robert Moll. All rights reserved.

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? The Federal Circuit makes a conclusion without much analysis. 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. Unlike 35 USC 103, a judge applying Alice doesn't have to consider the subject matter of the claim as a whole. 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?  Step 1 of Alice says identify if the claim recites an abstract idea. How does a judge decide? The judge selects a subset of the claim (e.g., the preamble) and thus the judge sets the line. Step 2 then asks if the remainder of the claim, that is, the non-abstract part of the claim is an inventive concept. If the judge thinks the non-abstract part is conventional, the judge concludes "no inventive concept." And now the test is completed, and the claim is deemed ineligible. The two-part Alice test is a mental process without reference to the prior art requirements of 35 USC 102. 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.