Friday, December 2, 2016

Bloomberg BNA - China Looks to Boost Protection for Software Patents

Bloomberg BNA published an article China Looks to Boost Protection for Software Patents that is worth reading. Here's Bloomberg BNA:

"A draft revision to China’s patent examination guidelines released late last month will likely make it easier to get software and business method patents.

Other proposed changes to ease the standard for amending granted patent claims should also help patent holders and, especially, patent assertion entities, practitioners say.

The draft guidelines follow developments that some have interpreted as evidence of China’s maturing and improving environment for IP owners. The guidelines are not law but rules for instructing examiners at China’s State Intellectual Property Office (SIPO) on how to properly examine patent applications.

There is no official timeline for when to expect finalized guidelines, though some expect they could come as early as next year."

As stated in the article, "One of the biggest changes in the guidelines confirms that software and business methods are patentable. They seek to address concerns that some examiners have been too cautious in treating all references to business models or computers as red flags that signal unpatentability. A sentence in the draft explains that claims relating to a business method are not excluded from patentability if they contain sufficient technical features.

Meanwhile, another change clarifies that apparatus claims relating to software can contain both hardware and 'program' components. And the draft changed language that some examiners have interpreted as barring nearly all computer program references. The guidelines clarify that inventions relating to 'computer programs per se' are not patentable because those are rules and methods for mental activities."

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, November 22, 2016

PTAB - Results of the Post Grant Outcomes Pilot

Today, the USPTO reported on the Post Grant Outcomes Pilot, concluding it "has succeeded in making examiners aware of patents related to applications they are examining that are involved in PTAB trials, and in turn has facilitated the timely and effective examination of applications."

Chief Judge for the Patent and Trial Appeal Board (PTAB) David Ruschke and Commissioner for Patents Drew Hirschfeld stated:

"As part of the USPTO’s ongoing Enhanced Patent Quality Initiative, in April 2016 we launched the Post Grant Outcomes Pilot, focused on pending patent applications that are related to issued patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). We’d like to report that the Post Grant Outcomes Pilot has succeeded in making examiners aware of patents related to applications they are examining that are involved in PTAB trials, and in turn has facilitated the timely and effective examination of applications.

AIA trial proceedings contain prior art and arguments that might be highly relevant to the patentability determination of related applications currently under examination. This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability.

During the pilot, we notified examiners via email when they had an application related to an AIA trial, and we streamlined access to the contents of the trial by pinpointing for examiners the most relevant documents. We then surveyed the examiners to gain detailed feedback.

The survey results showed that our examiners found the PTAB information—especially the initial petition (including the prior art citations), the PTAB’s institution decision, and any expert declarations—to be highly useful. We also found that 46% of the examiners referred to at least one reference cited in the AIA trial petition during the examination of their own case, either by citing it in a rejection or as pertinent prior art. If an examiner did not use or cite the prior art from the trial, it was most likely because the claims were different between the “parent” and the “child” case, the examiner disagreed with the AIA petitioner’s analysis of the prior art and/or claims, or the examiner was able to find better art.

To further facilitate the process, in August 2016 we deployed an upgrade to examiners’ desktop application viewers which allows automated access to the contents of related AIA trials, including access to the entire file, and any cited prior art.

Our next objective with regards to the post grant outcomes process is to identify examination best practices or deficiencies that we can address through additional examiner training. To accomplish this, we are currently analyzing data gathered about the AIA trials with respect to prior art searching and claim interpretation, and are also working to thoroughly analyze how PTAB trials impact related applications.

Our final objective is to provide examiners with a periodic review of post-grant outcomes focused on Supreme Court, Federal Circuit, district court, and PTAB decisions that relate to their specific technological area. It is our hope that by providing this information, examiners will gain a better understanding of the current state of the law and what happens to a patent after it leaves the USPTO.

We are dedicated to ensuring examiners have all pertinent information, especially post grant outcomes information, easily and readily available, in order to issue the highest quality patents possible and enhance patent quality overall. Based on the program’s initial results, we can already see that our examiners are benefitting, and we will continue to identify additional ways to improve our processes."

My input is the AIA trials are a significant change in the US patent system, because they invalidate more than half of challenged US patent claims. This pilot produces prior art and arguments that are communicated to examiners handling pending applications that the USPTO determines are "related" to the US patent being challenged in the PTAB trial. Considering the best prior art makes sense, but this may tilt the playing field in favor of larger companies able to finance PTAB trials. On the other hand, patent application owners may look to any patent owner's preliminary response in the PTAB trial to address that prior art.

Copyright © 2016 Robert Moll. All rights reserved.

Thursday, November 17, 2016

PTAB - Global Tel*Link Corp. v. Securus Technologies - Covered Business Method Challenge Terminated Since Patent Not Related to Financial Product or Service

In Global Tel*Link Corp v. Securus Technologies, the Patent Trial and Appeal Board (PTAB) terminated covered business method (CBM) proceeding of U.S. Patent No. 7,860,222 B1, nearly one year after institution, because PTAB determined the '222 patent doesn't relate to a "financial product or service" as required under the American Invents Act (AIA).

See 2015 CBM00145 for details. Also see AIA § 18 (Related to 35 U.S.C. 321) stating that the Director may institute a CBM proceeding only for a patent that is a covered business method patent .... "The term 'covered business method patent' means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions."

Copyright © 2016 Robert Moll. All rights reserved.

Wednesday, November 16, 2016

USPTO - Director Michelle K. Lee at the IAM Patent Law and Policy Conference

Director Michelle Lee recently evaluated the current state and results of her tenure at the USPTO at the IAM Patent Law and Policy Conference:

"Thank you and good morning.  It’s a real pleasure to be with you here today. Throughout the day we’ll be prognosticating about what IP policy will look like in the next administration. This morning, I’d like to share with you my thoughts on: the current state of the U.S. Patent and Trademark Office, and how it situates us to meet our future challenges and opportunities.

What we all know is that IP is increasingly important to the success of our economies. That is perhaps best illustrated in a major study on the economic impact of IP intensive industries that was just published by the USPTO in collaboration with our DOC colleagues at the Economics and Statistics Administration. This report found that IP-intensive industries directly and indirectly supported more than 45 million jobs in 2014, or nearly 1/3 of all U.S. jobs. These findings parallel the recently released joint EPO and EUIPO study that found that approximately 38% of all employment in EU stems from businesses that have a higher than average use of IP rights. So, whether you’re in D.C., or London, or anywhere in between or beyond, IP remains a vital driver of economic growth. And that is why I believe the incoming administration must and will continue our effort to promote innovation fueled by a strong and robust IP system. Support for IP in the United States has a long history of bipartisanship, and there’s no reason to imagine that changing with a new president and a new Congress, both of whom have economic growth as a top priority.

Because we will spend much of today looking forward, allow me to look back on what we’ve done during this administration and how it positions us for the work ahead. Back in January 2009, when President Obama was first sworn into office, the USPTO’s patent application backlog and pendency numbers were at all-time highs. Today, both our backlog and pendencies are now lower than they’ve been in more than a decade, and they continue to go down. That is hardly the only success story. But it’s emblematic of how much the USPTO has charged forward the last eight years, and how strongly it is positioned to face future challenges. This has been a team effort, with incredible work done by my predecessors including former Director Dave Kappos, Congressional cooperation, the incredibly dedicated and talented staff at the USPTO, and all of our stakeholders. Together, we have put the agency in a spot where we are well-suited to tackle the challenges and opportunities ahead.

Today, we are financially more secure thanks to the America Invents Act, a milestone of this administration, which gave us, among other things, fee setting authority. Additionally, we are more customer-service oriented and more responsive to stakeholders than ever before. We’ve constantly welcomed—in fact solicited—feedback and input, and are willing to refine and improve where needed. We’ve had more RFC’s, Proposed Rules, and roundtables than ever before – including on such topics as: our Enhanced Patent Quality Initiative, our 101 guidance, our PTAB implementation and refinements, and our transparency of patent ownership proposal.

Thank you for your input, patience and help responding to each. We’ve also brought a broader range of services to support American innovators where and when needed, including: Through four Regional Offices across the country, and over a dozen IP attaches across the globe. And, we’ve worked to provide you with more access to examiner interviews increasing the number of interview hours by more than 232% in just 8 years. Finally, and importantly, the USPTO’s relationships with all of its partners is healthier and stronger than ever before –that’s with the public, our employees, Congress, and within the administration.

I want to take a brief moment on this topic, because I really do believe it is key to the agency’s success – past and future. Thinking back to even just 10 years ago, the relationship with the public was nowhere near as collaborative, transparent, or productive as it is today. The agency often did not seek much input on examiner guidance or implementation rules. In fact, almost 10 years ago, the USPTO was sued in Tafas v. Dudas, when it decided to move ahead—over much public opposition—to adopt rules that would have placed additional burdens on patent filings. And interviews weren’t encouraged as they are today. Together, we have changed that dynamic. Second, we’ve strengthened our working relationship with our employees. All told, we have enjoyed some of the highest rankings in the Partnership for Public Service’s list of Best Places to Work in the Federal Government. And we all know, an engaged workforce produces better work product and services. We have also maintained a healthy working relationship with Congress on both policy proposals and operational issues. From the passage of AIA, to the Defend Trade Secrets Act, to technical assistance on various legislative proposals, we have engaged with our colleagues on the Hill in impactful ways and the USPTO’s voice is a respected one. Finally, the USPTO is effectively fulfilling its role as principal advisor to the president and administration on IP policy. I’ve been pleased with the confidence the president and the Secretary of Commerce have shown me and my team, allowing us to pursue policies and programs in the best interest of our innovators. All of this: the greater financial security, the increased customer service orientation, and the better relationships with all of our stakeholders, has enabled us to make real progress on our priorities, and positions us for even greater success going forward. There is strong evidence of this in a number of important areas, including patent backlog and pendencies, quality and  policy.

During this administration, we have: reduced the backlog of unexamined patent applications by approximately 30% despite an average four percent year-over-year increase in filings, reduced our first action pendency by 38% to 16.2 months, and reduced total pendency by ~25% to 25.3 months. Armed with greater finances and a shrinking backlog, we embarked on an unprecedented effort to enhance the quality of patents – a core goal of the agency. There is a cost to society when the USPTO issues a patent that we should not issue, just as there is a cost to society when we don’t issue a patent that should issue. And just as there is a cost to society when there is a patent in the system that the USPTO properly issued but that is no longer valid in light of changes in case law. Recognizing this, we have enhanced the quality of patents in our system, both before they leave our office through our Enhanced Patent Quality Initiative led by a new Deputy Commissioner and a newly created department within the Patents solely focused on this effort and after the patents return to the office through our PTAB and other post grant review proceedings.
Addressing the second prong first, the new PTAB proceedings have significantly changed the patent landscape – both litigation and prosecution. We have had more than 5,000 PTAB petitions filed to date, and these proceedings are meeting our Congressional mandate of providing a faster, more cost efficient quality check on the patents in the system. With extensive input from all of you, we have worked hard to implement and conduct these proceedings as fairly and effectively as possible. That’s why I asked my team to engage all of you in a series of listening tours that led to a set of “quick fixes” in 2015 and then more substantive revised rules last April. That’s why we took it upon ourselves to assess the frequency of motions to amend and the reasons for their grants and denials. And, that’s why, in response to input from stakeholders about serial PTAB patent challenges, I asked my team to study the data to determine whether, to what degree and under what circumstances, patents were being challenged multiple times and whether those challenges might be improper or unfair. Our study produced some interesting data that I believe will better inform our discussions on this topic. We will be publishing a request for comments within the next several weeks, sharing details of the data we gathered, asking if our data matches your experiences, and welcoming what, if any, next steps might be appropriate in light of the data. Bottom line, we’re listening to you and applying your input to identify how and where we can do better.

These PTAB proceedings have proven a valuable check on patent quality, particularly in the later part of a patent’s lifecycle. At this point, it makes sense to bring greater resources to bear if there are questions about a patent’s validity. The economics are different at the beginning of a patent’s lifecycle. The value of a patent is often not fully known at time of filing perhaps due to the nascency of the technology, industry and/or market, and the time and resources afforded during examination are typically limited. Innovation isn’t served if the USPTO only strives to issue very expensive “bullet-proof” patents after many years of examination. Extensive time and expense would mean that innovators would file too few patent applications, given finite budgets. If over time the industry and the market determine that a piece of patented technology is valuable and the public believes it is not valid under current law then there is an economic incentive to expend greater resources to test the validity of the patent.  And a panel of technically trained judges steeped in patent law is well-suited to perform this double-check quickly and efficiently. In short, to best incentivize innovation, the USPTO needs to issue IP rights that are as certain, reliable and affordable as they can reasonably be, and offer post-grant proceedings that quickly, accurately and cost-effectively test the validity of patents, proven to be of economic importance, if questions of validity arise. With all of that said, it is essential that these post-grant proceedings are properly calibrated so that they provide a quality check but do not bar deserving patentees from enforcing their patent rights. It’s why a number of the protections in the AIA are so important, such as restrictions on timing of challenges, thresholds petitioners must meet for institution, and strict estoppel provisions. It’s also why the agency is committed to revising our rules as many times as needed so these proceedings are as fair and effective as possible within our Congressional mandate. It’s why it is critical, within this framework, the USPTO issue the very best quality patents possible.

Patents that are issued correctly, clearly and consistently across the Patent Examination Corps. And, it’s why I launched the Enhanced Patent Quality Initiative in 2015, so patent owners can have greater confidence and certainty of their rights in this new environment. Today we’ve got about a dozen initiatives underway that, we believe, will meaningfully move the needle on enhancing patent quality. This includes making sure we’re getting the most relevant prior art before our examiners as early as possible by: making prior art cited in our PTAB proceedings available to the examiner handling a related pending child application, and transitioning our all our examiners from the decades old, antiquated U.S. Patent Classification System to the updated, increasingly global Cooperative Patent Classification System. It also includes drilling down on best practices such as clarity of the record, developing new and better ways to measure our progress, through our Master Review Form and new Quality Metrics, and, importantly, reviewing the amount of time our examiners need to do their work in light of these changes and other larger changes within the patent system.

So, this is what we’re doing at a high level, but I’d like to share more specifics about one of our programs, our “Clarity of the Record Initiative” and some of the great progress we have been making on our Clarity of the Record pilot program. The goal of this program is to develop best practices on how much detail to include in certain key parts of the prosecution history, for example: Interview summaries, or reasons for allowance, or construction of 112(f) limitations. Regarding interview summaries: How many times have you reviewed a file history, noted the patent rejected and then seen the patent allowed after an interview with minimal or no changes to the claims and little or no explanation for the allowance? In this pilot, we worked to provide more detailed summaries including the substance of the examiner’s position, details of any agreement reached, and a description of next steps following the interview. After the pilot concluded, we measured 22 data points focused on clarity, and found an average of 15% improvement in clarity between the pilot examiners and a control group. On reasons for allowance: How many times have you reviewed a prosecution history, and there is nothing in the record to indicate why the claims were allowed by the examiner? Because it is at the discretion of the individual examiner to set forth reasons for allowance, those reasons have not always been included in every Notice of Allowance. In this pilot, we trained participants on setting forth reasons for allowance in every Notice of Allowance. At the conclusion of the pilot, we found a 25% improvement in the clarity of reasons for allowance between the pilot and control group. On claim interpretation:  How many times have you seen a prosecution history, where there was clearly an issue about how a claim was interpreted, but the record was devoid of any explanation of the interpretation? In the pilot, the examiners were given training on explicitly setting forth key claim interpretations to minimize ambiguities. For example: Explaining all Section 112(f) presumptions and whether the presumptions were overcome, Identifying on the record the structure in the specification that performs the function, and when a prior art reference is used to reject multiple claims, clearly addressing specific limitations in each claim that provide the basis for the rejection. With our trainings on interview summaries, reasons for allowance and claim interpretations, we saw a statistically significant improvement in clarity when examiners used these best practices. Also, the clarity of the record initiative furthers the goal of compact prosecution by encouraging the applicant to rebut the examiner’s on-the-record position promptly and directly if there is disagreement. In short, we are already taking steps to clarify the record and you will see our examiners doing so increasingly over time. And importantly and necessarily, we are simultaneously reviewing the amount of time needed for this effort, and will work with the public to determine the desired amount of additional clarity and appropriate time to achieve the goal.

Of course, patent quality also means applying the law accurately and clearly even in areas of the law that are evolving including, for example, the 101 jurisprudence on what is patent eligible subject matter. As many of you know, we’ve spent a fair amount of effort on this in recent months and years. Following major court rulings, we’ve revised our examination guidance, with input from all of you, multiple times and trained our examiners on the new guidance. And, we just announced in a Federal Register Notice two roundtables focused exclusively on the topic of patent eligible subject matter. At the first roundtable, held just yesterday, we discussed potential updates to our examination guidance, and at the second roundtable, on Dec. 5, we will discuss the impact of the current 101 jurisprudence on innovation, what changes might be considered to further support innovation, and whether such changes are best achieved legislatively, judicially or administratively. We thought it would be helpful to begin the public discussion, to create a record of where there is agreement or disagreement and what, if any, improvements would be helpful to make. We welcome your participation on this important and complex issue. As I hope you can see from this quick run-down of our initiatives, we are very excited about our Enhanced Patent Quality Initiative. It is an ambitious effort that is yielding some results now and will yield even more in the future. To learn more about our progress to date, please join us – on December 13, at the USPTO, where we will spend a good part of the day sharing details of the results of each of the dozen or so Enhanced Patent Quality Initiatives. We think you will like what you hear.

We’ve clearly made tremendous progress over the past eight years, but of course, we have more work to do to further strengthen our patent system’s ability to promote innovation in our ever changing environment. As I said earlier, I’m optimistic the incoming administration will share our appreciation of the importance of intellectual property as a driver of economic growth. As I look ahead, I foresee legislative patent reform changes will continue to be discussed in Congress, though those conversations will likely occur later in the term after some of the other priorities including filling a Supreme Court vacancy, immigration and tax reform are addressed, and any legislative patent reform will likely be more targeted, rather than the comprehensive reforms we’ve seen in prior Congresses. I would hope any legislative proposal will take into account the numerous positive changes that have occurred recently in the patent system including: through the courts, including on attorneys fees, pleading requirements and discovery limits, and at the USPTO through the PTAB and the agency’s efforts to improve the quality of patents in our system. As far as issues, I predict legislative discussions may include venue reform and possibly changes to Section 101 and PTAB. On venue, with nearly half of the patent cases filed in 2015 filed in a single district out of 94 federal judicial districts, it is easy for critics to contend that plaintiffs seek out this district preferentially for the wrong reasons. And the mere perception that there are advantages to be gained by forum-shopping challenges the public’s faith in the patent system. So there will be continuing pressure for legislative (and likely judicial) action on the issue of venue. The scope of any legislative reform remains to be determined, but I predict that the focus will be on more targeted, rather than comprehensive reform as we saw these past couple Congresses. Further, I anticipate that the USPTO’s work across the globe to ensure that other countries have strong IP protections adequate enforcement mechanisms and remedies, and appropriate technology transfer (or licensing and competition) policies, will continue in the next Administration particularly in such countries as China and others. This is a President-elect that has promised economic growth and job creation in our country, and IP will necessarily be a key piece to achieving that goal.

With that, let me conclude by saying that I firmly believe that the USPTO is healthy, well-functioning and poised to successfully handle whatever challenges and opportunities lie ahead.  Our issues are important, complex and nuanced. And while not everyone will always agree with all that the agency does, we are well prepared and poised to work together to accomplish our shared priorities and address the challenges ahead. When President Obama was inaugurated in 2009, his focus was on leading this nation’s recovery from the Great Recession. One of his first acts was to ask the Smithsonian to provide for display in the Oval Office some patent models that demonstrated past American innovation that led to new jobs and new industries. The president said that throughout our history, Americans solved problems through innovation and IP. He wanted to see reminders of that every day as he encountered the challenges he faced. The Smithsonian provided him with three models: Samuel Morse’s telegraph (1849),  John Peer’s gear cutter (1874), and Henry Williams’ steamboat wheel (1877). As I stood behind the President in the Oval Office earlier this year when he signed the Defend Trade Secrets Act, I couldn’t help but notice those three models along the wall to my left—still there almost eight years later—and feel extraordinarily humbled and honored. I feel that same honor and humility today standing before all of you and reflecting on just how much we have accomplished under this administration.  I’ve been fortunate to lead the USPTO at a time when intellectual property issues have been front and center on the consciousness of the American public and President and to have had the opportunity to help guide the direction in a small way. My hope is that the President-elect keeps the patent models from Morse, Peer and Williams in his office as a reminder of the importance of intellectual property to the economic prosperity that I know he wants for our country.

Thank you for all your support of the work of my team and I know that we all will continue to work together to ensure that our greatest inventions are yet to come. Thank you."

Copyright © 2016 Robert Moll. All rights reserved.

Sunday, November 13, 2016

Federal Circuit - AmDocs (Israel) Limited v. Opennet Telecom - Software Patent Claims Eligible

In Amdocs (Israel) Limited v. Opennet Telecom, the Federal Circuit reversed the district court decision that the claims are patent ineligible under 35 USC 101.

In Amdocs, the Federal Circuit stated that patent eligibility under Mayo is a two-step framework: (1) Is the patent claim directed to a patent-ineligible exception (e.g., abstract idea); and (2) if so, do elements of the claim both individually and as an ordered combination transform the nature of the claim into a patent-eligible application that is have an inventive concept.

The Federal Circuit observed although the framework is familiar courts have not articulated a single universal definition of abstract idea. "Instead of a definition, then, the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided ... That is the classic common law methodology for creating law when a single governing definitional context is not available. See generally Karl N. Llewellyn, The Common Law Tradition: Deciding Appeals (1960). This more flexible approach is also the approach employed by the Supreme Court. See Alice. We shall follow that approach here."

The Federal Circuit started its analysis by asserting claim 1 is representative:

1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising:

computer code for receiving from a first source a first network accounting record;

computer code for correlating the first network accounting record with accounting information available from a second source; and

computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

The Federal Circuit stated "claim 1 is therefore distinct from the ineligible claims in Digitech, Content Extraction ... The claim in Digitech was not tied to any particularized structure, broadly preempted related technologies, and merely involved combining data in an ordinary manner without any inventive concept. See 758 F.3d at 1350-51. In contrast, claim 1 of the '065 patent is tied to a specific structure of various components (network devices, gatherers, ISMs, a central event manager, a central database, a user interface server, and terminals or clients). It is narrowly drawn to not preempt any and all generic enhancement of data in a similar system, and does not merely combine the components in a generic manner, but instead purposefully arranges the components in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks. '065 patent at 4:29-33, 4:43-54, 3:56-65, 4:33-42, 7:51-57, 10:45-50, 7:7-8, 7:62-67, 11:1-7.

Similarly, claim 1 is distinct from the representative claim in Content Extraction, which involved the generic, well-known steps of collecting data, recognizing data, and storing data.776 F.3d at 1347. Unlike the claim in Content Extraction, claim 1 of the '065 patent depends upon a specific enhancing limitation that necessarily incorporates the invention's distributed architecture—an architecture providing a technological solution to a technological problem. This provides the requisite `something more' than the performance of "well-understood, routine, [and] conventional activities previously known to the industry." at 1347-48 (quoting Alice, 134 S. Ct. at 2359. Claim 1 is similar to the claims in DDR Holdings and BASCOM. As in DDR Holdings, when the claim limitations were considered individually and as an ordered combination, they recited an invention that is not merely the "routine or conventional use" of technology.

Here, claim 1 solves a technological problem (massive dataflows requiring huge databases) akin to the problem in DDR Holdings (conventional Internet hyperlink protocol preventing websites from retaining visitors). Cf. Intellectual Ventures I LLC v. Capital One Bank (USA) (Fed. Cir. 2015). Claim 1 involves some arguably conventional components (e.g., gatherers), but the claim also involves limitations that when considered individually and as an ordered combination recite an inventive concept through the system's distributed architecture.

Claim 1 is also like the claims in BASCOM because even though the system in the '065 patent relies upon some arguably generic limitations, when all limitations are considered individually and as an ordered combination, they provide an inventive concept through the use of distributed architecture. This is similar to the design in which permitted the invention to have a filtering tool with the benefits of a filter on a local computer and the benefits of a filter on an ISP server. The benefits in were possible because of customizable filtering features at specific locations remote from the user. Similarly, the benefits of the '065 patent's claim 1 are possible because of the distributed, remote enhancement that produced an unconventional result—reduced data flows and the possibility of smaller databases. This arrangement is not so broadly described to cause preemption concerns. Instead, it is narrowly circumscribed to the particular system outlined. As in BASCOM, this is a technical improvement over prior art technologies and served to improve the performance of the system itself.

For all these reasons, and with the understanding that claim 1 is representative, we reverse the district court's judgment that claims 1, 4,7, 13, and 17 of the '065 patent are ineligible under § 101."

Thus, the Federal Circuit is limiting the lower court and USPTO finding of patent ineligibility based on Alice/Mayo when the claims provide "an inventive concept" and "a technological solution to a technological problem."

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, November 8, 2016

Federal Circuit - SAS v Complementsoft - PTAB's Partial Institution of Inter Partes Review

In SAS Institute v Complementsoft , the Federal Circuit denied SAS's petition for a rehearing en banc to consider the Patent Trial and Appeal Board (PTAB) practice of institution of an inter partes review of less than all of the claims challenged by petitioner.

Copyright © 2016 Robert Moll. All rights reserved.

Friday, November 4, 2016

USPTO - Memo on Recent Subject Matter Eligibility Decisions - November 2, 2016

The USPTO published a memo Recent Subject Matter Eligibility Decisions that seeks to clarify the Federal Circuit's recent decisions on patent eligibility of software-related inventions.

As stated in the USPTO memo:

"The U.S. Court of Appeals for the Federal Circuit (Federal Circuit) has issued a number of subject matter eligibility decisions since the May 2016 Update to the USPTO's subject matter eligibility (SME) guidance. These decisions do not change the basic subject matter eligibility framework explained in the SME guidance and training examples, but provide additional information about finding eligibility for software claims. Accordingly, the USPTO will be updating its SME guidance in view of these decisions and feedback from patent stakeholders.

This memorandum provides a discussion of two of the recent decisions identifying eligible subject matter, namely McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&TMobility LLC, 827 F .3d 1341 (Fed. Cir. 2016). Yesterday, the Federal Circuit issued another precedential decision finding eligibility Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016)), which will be discussed further in the forthcoming update to the SME guidance, along with McRO, BASCOM, and other recent decisions concerning patent eligibility. These decisions have also been added to the chart of court decisions available on the·USPTO's SME Webpage."

Thus it appears the Federal Circuit is formulating a more favorable patent eligibility test in 2016. However, 35 USC 101 has a broad definition of what is patent eligible subject matter. The Supreme Court has introduced a judicial abstract exception to this broad statutory language, but has not clearly defined it. Until we get clarification from the Supreme Court and/or Federal Circuit or a legislative fix I expect to see this issue to be "decided" case by case.

Copyright © 2016 Robert Moll. All rights reserved.

Thursday, November 3, 2016

TTAB - Enhancements to Trademark Trial and Appeal Board Proceedings

Today, Chief Administrative Trademark Judge Gerard F. Rogers posted on the TTAB rule changes:

"The Trademark Trial and Appeal Board (TTAB) announced the culmination of an in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal and trial processes. In a Notice of Final Rule-Making (NFRM), published in the Federal Register on October 7, 2016, the USPTO said new rule changes will benefit the public by providing more clarity in the rules, flexibility for parties involved in Board proceedings, and increased procedural efficiency. At the same time, the rules further a USPTO strategic objective to increase end-to-end electronic processing of trademark matters, which reduce costs to the USPTO and the public, and helps avoid errors that may creep into records during manual entry of data contained in paper filings.

The last major set of TTAB rule changes took effect in 2007. Since then, there have been case law developments, changes in the Federal Rules of Civil Procedure, and the rollout of the USPTO’s Accelerated Case Resolution (ACR) process. Therefore, it is an ideal time to update the rules to make the benefits of ACR available to all parties, as well as to promote electronic filing and communication. The rule changes, major provisions of which are summarized below, reflect significant input from the Trademark Public Advisory Committee, individual stakeholders, and professional associations, and have been well-received since publication in the Federal Register.

One of the most overarching rule changes involves the Board assuming responsibility for service of the complaint filed to initiate an inter partes proceeding. This rule change shifts responsibility for service of the complaint in an opposition or cancellation proceeding from the plaintiff to the Board, in an effort to reduce the responsibilities of litigants during the commencement of a proceeding.

Another exciting change is the Board moving exclusively to use of electronic filings and communication. In this new all-electronic environment,instead of mailing hard copies of institution orders and complaints, the Board forwards an order by email, with a link to both the proceeding file and the complaint, as displayed in the Board’s electronic docketing system known as TTABVUE. The rule changes also mandate that parties file documents through ESTTA, the Board’s electronic filing system. That requirement results in cost-savings to the USPTO and to private litigants, and will increase the efficiency with which the Board can process matters. Finally, filings and papers are now required to be exchanged between parties by email, with exceptions made for technical problems or extraordinary circumstances; and to allow the parties flexibility, they may agree to alternate methods of communication or exchange of documents and information that work best in their particular circumstances.

Reflecting recent amendments to the Federal Rules of Civil Procedure, new discovery provisions in the rule changes help curtail abuse and reduce litigation expense for stakeholders. The number of requests for production of documents and requests for admission are now limited to 75, paralleling the current limitation on interrogatories. To avoid disadvantaging parties that use requests for admission to authenticate produced documents, the changes provide for one comprehensive request for admission to the producing party to seek authentication of identified documents or specification of those documents which cannot be authenticated. This option facilitates introduction of produced documents at trial by notice of reliance, rather than through painstaking witness identification and testimony, thereby providing the parties more flexibility during trial. Finally, the rule changes afford the parties substantial flexibility to stipulate to various limitations on discovery in terms of duration, number of requests, and the elimination of discovery altogether.

Additionally, the rule changes establish new deadlines in discovery, paving the way for another significant change -- a requirement that motions to compel discovery or to determine the sufficiency of responses to requests for admission be filed prior to the deadline for plaintiff’s pretrial disclosures. These revisions help parties avoid the expense and uncertainty that arise when discovery disputes erupt on the eve of trial and ensure parties make pretrial disclosures and engage in trial preparation only after all discovery issues have been resolved. As with the timing of motions relating to discovery disputes, motions for summary judgment must be filed prior to the deadline for plaintiff’s pretrial disclosures. This avoids disruption of trial planning and preparation which can occur by filing such motions late in the process.

ACR procedures have proven particularly effective at streamlining trial proceedings. These include agreements to limit discovery and to shorten trial periods or the time between trial periods, and stipulations to certain facts or to the admissibility of documents or other evidence. Accordingly, parties are still able to enter into stipulations regarding proffers of testimony, but the rules allow any party unilaterally to choose to present trial testimony by affidavit or declaration, subject to the right of cross-examination by the adverse party or parties.

Finally, the rule changes include expanding the parties’ options through which evidence is submitted during trial. Parties may now make of record, via notice of reliance, pleaded registrations and registrations owned by any party by submitting a current copy of information from the USPTO electronic database records showing current status and title; and the rule changes codify this option. In addition, parties may now also use the notice of reliance method for submitting internet materials.

The rule changes become effective January 14, 2017, and apply to all proceedings pending at that time or begun thereafter. All employees at the Board, including our 243 information specialists and paralegals, our 245 attorneys, and our judges, have been involved in identifying these improvements, and we strongly believe that these changes help streamline our trial proceedings and avoid unnecessary expense and complications for parties involved in our cases.  We continue to welcome any feedback you have on TTAB trial proceedings in order to increase clarity, efficiency, and effectiveness of our processes."

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, November 1, 2016

USPTO - EFS Authentication Update

The USPTO has taken steps to expand browser choices for the electronic filing system (EFS) beyond Microsoft Internet Explorer notifying:

"As a reminder, EFS-Web and Private PAIR users should have the latest Java 8 version, which is needed for the current authentication Java Applet.

On Oct. 24, a new interim authentication method using Java Web Start will be available to provide access to EFS-Web and Private PAIR. You must have Java 8 to use the new Java Web Start authentication method. The interim authentication solution provides a new, plug-in-free option for users to authenticate, and will expand browser options until a new permanent solution is in place.

While you can continue to authenticate using the existing method (Java Applet), you will be given an option to utilize the new method. This interim solution uses Java Web Start technology, allowing users to authenticate into EFS-Web and Private PAIR utilizing their current digital certificate. The new option will provide users more flexibility in browser choice as it reduces the dependency on the Java Applet plug-in. Digital Certificate Management (DCM) tools will also be supported on Java Web Start in a subsequent release."

The USPTO notes if "you have questions, please contact the Patent EBC at (866) 217-9197 or send an email to To provide feedback, please email us at, or you can visit our eCommerce Modernization web page."

Copyright © 2016 Robert Moll. All rights reserved.

USPTO - System Maintenance on Nov. 5 – 6

Today the USPTO notified:

"EFS-Web and EFS-Web Contingency Maintenance EFS-Web and EFS-Web Contingency will undergo maintenance and will be unavailable from Saturday, Nov. 5 at 12:01 a.m. to Sunday, Nov. 6 at 6 a.m. ET.

If you need to file a new application, follow-on submission, or fees during the maintenance period, please use an alternative filing method. NOTE: Saved submission packages created prior to this maintenance period may not work properly afterwards. To avoid potential loss of saved data, please submit saved submissions Saturday, Nov. 5 before 12:01 a.m.

If you have any questions, please contact the Patent EBC at (866) 217-9197 or EBC@uspto.gov6 a.m. to midnight ET, Monday through Friday."

Copyright © 2016 Robert Moll. All rights reserved.

Monday, October 31, 2016

USPTO - Proposal to Change the Rule on Duty of Disclosure of Prior Art

The USPTO is proposing to change the rule on the duty of disclosure of prior art in examination of patent applications and reexamination of patents. For details see the Federal Register Notice.

Copyright © 2016 Robert Moll. All rights reserved.

Saturday, October 29, 2016

TTAB - Trademark Trial and Appeal Board Rules Change on January 14, 2017

The Trademark Trial and Appeal Board Rules (TTAB) has amended its rules of practice for all cases pending on or filed after January 14, 2017. For the amended rules see Notice of Final Rulemaking (NFRM) and summary chart.

Copyright © 2016 Robert Moll. All rights reserved.

Thursday, October 27, 2016

Federal Circuit - Medtronic v. Robert Bosch Healthcare Systems - PTAB Decision to Discontinue IPR Not Reviewable on Appeal

In Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., the Federal Circuit recently held a Patent Trial and Appeal Board (PTAB)'s decision to discontinue an inter partes review (IPR) due to the petitioner's failure to disclose the real party is not reviewable on appeal under 35 U.S.C. § 314(d). Section 314(d) states "The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."

The Federal Circuit found nothing contrary in the Supreme Court's decision in Cuozzo Speed Technologies, LLC v. Lee stating the "Board's vacatur of its institution decisions and termination of the proceedings constitute decisions whether to institute inter partes review and are therefore 'final and nonappealable' under § 314(d)."

Copyright © 2016 Robert Moll. All rights reserved.

Wednesday, October 26, 2016

USPTO - Patent Quality Forum Series - November 2016

Today, the USPTO announced its Patent Quality Forum Series in a variety of locations in November 2016. This is an opportunity to learn about USPTO efforts to increase patent quality.

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, October 25, 2016

PTAB - AIA Review Decisions Now Available Daily

Today, the USPTO notified that "PTAB AIA review decisions are now available daily at the AIA Review Decisions webpage, which displays the current and previous business day’s decisions. The reports will be updated twice a day at 11 a.m. and 4 p.m. ET and do not include Derivation proceedings."

Copyright © 2016 Robert Moll. All rights reserved.

Friday, October 21, 2016

Stanford Technology Law Review - Predictably Expensive: A Critical Look at Patent Litigation in the Eastern District of Texas

Brian Love of Santa Clara University Law School and James Yoon of Wilson Sonsini Goodrich & Rosati's article Predictably Expensive: A Critical Look at Patent Litigation in the Eastern District of Texas to be published in the Stanford Technology Law Review is worth review.

Here is the abstract:

"In this Essay, we compare U.S. patent litigation across districts and consider possible explanations for the Eastern District of Texas’s popularity with patent plaintiffs. Rather than any one explanation, we conclude that what makes the Eastern District so attractive to patent plaintiffs is the accumulated effect of several marginal advantages — particularly with respect to the relative timing of discovery deadlines, transfer decisions, and claim construction — that make it predictably expensive for accused infringers to defend patent suits filed in East Texas. These findings tend to support ongoing efforts to pass patent reform legislation that would presumptively stay discovery in patent suits pending claim construction and motions to transfer or dismiss. However, we also observe that judges in the Eastern District of Texas tend to exercise their discretion in ways that dampen the effect of prior legislative and judicial reforms that were aimed (at least in part) at deterring abusive patent suits. Given the broad discretion courts have to control how cases proceed, this additional finding suggests that legislation restricting venue in patent cases may well be the single most effective reform available to Congress."

Copyright © 2016 Robert Moll. All rights reserved.

Thursday, October 20, 2016

IAM - Despite recent CAFC decisions, say some, a strong case remains for legislative action on Section 101

Richard Lloyd's post on IAM blog: Despite recent CAFC decisions, say some, a strong case remains for legislative action on Section 101 is worth reading if you are wondering if software related inventions are still eligible for US patents -- the short answer is yes. 

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, October 18, 2016

PTAB - Proposed Rule Recognizing Privileged Communications Between Clients and Patent Practioners at the Patent Trial and Appeal Board

Today, the USPTO published a proposed rule: Rule Recognizing Privileged Communications Between Clients and Patent Practitioners at the Patent Trial and Appeal Board (PTAB).

Here is a summary from the USPTO:

"This proposed rule would amend the rules of practice before the Patent Trial and Appeal Board to recognize that, in connection with discovery conducted in certain proceedings at the United States Patent and Trademark Office (USPTO or Office), communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent as communications between clients and U.S. attorneys. The rule would apply to inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This rule would clarify the protection afforded to such communications, which is currently not addressed in the rules governing Board proceedings at the USPTO. This new rule will not affect the duty of disclosure and candor before the Office under 37 CFR 1.56.

Comment date: The Office solicits comments from the public on this proposed rulemaking. Written comments must be received on or before December 19, 2016 to ensure consideration.

Comments should be sent by electronic mail message over the Internet addressed to:

Comments may also be submitted by postal mail addressed to: Mail Stop OPIA Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of "Soma Saha, Patent Attorney, Patent Trial Proposed Rule on Privilege."

Copyright © 2016 Robert Moll. All rights reserved.

Monday, October 17, 2016

USPTO - Patent Subject Matter Eligibility - Roundtables on November 14 and December 5, 2016

The USPTO is conducting two roundtables on patent subject matter eligibility. See Federal Register Notice or press release.

The first roundtable will discuss how the USPTO can improve subject matter eligibility guidance and the training examples. It will be held at the USPTO headquarter in Alexandria, VA at 1-5 pm ET on November 14. To attend or participate as a speaker in the first roundtable.

The second roundtable will discuss the Supreme Court decisions on patentable subject matter. It will be held at Stanford University at 8 am - 5 pm on December 5. To attend or participate as a speaker in the second roundtable.

Each of the USPTO satellite offices will participate in these roundtables.

Copyright © 2016 Robert Moll. All rights reserved.

Thursday, October 13, 2016

Supreme Court - Apple v. Samsung - SCOTUS Blog - Justices cautious about resolving Samsung-Apple dispute over design of cell phones

Professor Ronald Mann's blog post Justices cautious about resolving Samsung-Apple dispute over design of cell phones indicates the Supreme Court was unsettled at the oral hearing on the legal standard to apply to the $400 million damages awarded for Samsung's infringement of Apple's design patents.

The case turns on the proper interpretation of 35 USC 289 stating: "whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design ... to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit ...."

As Professor Mann stated: "The issue is whether the 'article of manufacture' to which the infringing design feature has been applied is the cell phone itself (as the court of appeals concluded) or some difficult-to-specify subsidiary portion of the phone, perhaps the case or exterior."

The Federal Circuit previously decided the article of manufacture is the iPhone, but all at the Supreme court hearing seem to agree it's too much to conclude "the article of manufacture" for calculating profits is the entire iPhone. We have the infringement of design patents that show the exterior screen and case. Should that infringement include the value of thousand of features in the software/hardware inside? I don't think so but it is also important to consider what drove the sale. I think just talking about how much physical structure is shown in the design patent misses this. Whatever way you come out, I think design patent damages is important to fairly resolve in an environment where injunctive relief is not awarded even when a competitor appears to have applied design patent to its product.

Copyright © 2016 Robert Moll. All rights reserved.

Tuesday, October 11, 2016

Stanford Technology Law Review - Octane Fitness: The Shifting of Patent Attorneys' Fees Moves Into High Gear

Scott Flanz's article Octane Fitness: The Shifting of Patent Attorneys' Fees Moves Into High Gear published in the Stanford Technology Law Review is worth reading.

Here is the abstract:

"In 2014, the United States Supreme Court decided Octane Fitness. LLC v. ICON Health Fitness, LLC, significantly altering the standard for granting attorneys' fees shifting at the close of a patent litigation. Combine with precedent announced on the same day in Highmark Inc. v. Allcare Health Management Systems, scholars have opined that under the new regime, the standard for proving entitlement to attorneys’ fees in patent litigations will be considerably relaxed. Despite the widespread acceptance of the viewpoint, few empirical analyses—if any—have objectively confirmed it.

This paper provides a first glimpse into whether the Supreme Court’s decision in Octane changed the attorneys’ fees standard in practice. By investigating the rate at which courts have granted attorneys’ fees motions before and after Octane, broken down by whether the movant was a patentee or accused infringer, the technology of the patent asserted, the circuit and district where the suit was decided, and what factors were considered by each court in its opinion, this research confirms that Octane’s reinterpretation of § 285 has had observable effects. In particular, this study finds a statistically significant increase in the rate of attorneys’ fee shifting after Octane, particularly for motions filed by accused infringers and in motions concerning electronics and software patents. The results of this study shed light on meaningful and recent changes to the patent litigation incentive structure and will be helpful in predicting future changes to the patent litigation landscape."

Copyright © 2016 Robert Moll. All rights reserved.

Monday, October 10, 2016

FTC - Patent Assertion Entity Activity: An FTC Study

The Federal Trade Commission (FTC) published a report that investigates patent assertion entities (PAEs) that acquire patents then try to monetize them and makes recommendations for patent reform.

Here is the FTC press release:

"This report is a big step forward in enhancing our understanding of PAEs and provides an empirical foundation for ongoing policy discussions,” said FTC Chairwoman Edith Ramirez. The recommendations we are proposing are designed to balance the needs of patent holders with the goal of reducing nuisance litigation.

The report, Patent Assertion Entity Activity: An FTC Study, examines non-public information and data covering the period 2009 to 2014 from 22 PAEs, 327 PAE affiliates, and more than 2100 holding entities (those entities that did not assert patents) obtained through compulsory process orders (subpoenas) using the agency’s authority under Section 6(b) of the FTC Act.

The report found two types of PAEs that use distinctly different business models. One type, referred to in the report as Portfolio PAEs, were strongly capitalized and purchased patents outright. They negotiated broad licenses, covering large patent portfolios, frequently worth more than $1 million.

The second, more common, type, referred to in the report as Litigation PAEs, frequently relied on revenue sharing agreements to acquire patents. They overwhelmingly filed infringement lawsuits before securing licenses, which covered a small number of patents and were generally less valuable.

The report found that, among the PAEs in the study, Litigation PAEs accounted for 96 percent of all patent infringement lawsuits, but generated only about 20 percent of all reported PAE revenues. The report also found that 93 percent of the patent licensing agreements held by Litigation PAEs resulted from litigation, while for Portfolio PAEs that figure was 29 percent.

The study found that the royalties typically yielded by Litigation PAE licenses were less than the lower bounds of early stage litigation costs. This data is consistent with nuisance litigation, in which defendant companies decide to settle based on the cost of litigation rather than the likelihood of their infringement.

'The FTC recognizes that infringement litigation plays an important role in protecting patent rights, and that a robust judicial system promotes respect for the patent laws. Nuisance infringement litigation, however, can tax judicial resources and divert attention away from productive business behavior,' the report states. With this balance in mind, the FTC proposes reforms to:
  • Address the imbalances between the cost of litigation discovery for PAE plaintiffs and defendants;
  • provide the courts and defendants with more information about the plaintiffs that have filed infringement lawsuits;
  • streamline multiple cases brought against defendants on the same theories of infringement; and
  • provide sufficient notice of these infringement theories as courts continue to develop heightened pleading requirements for patent cases.
The report examined the types of patents held by PAEs, and found that 88 percent were in the information and communications technology sectors; more than 75 percent of those patents were software-related patents.

The report also looked at whether PAEs were able to make money by mass-mailing so-called 'demand letters'; however, the FTC observed an 'absence of large demand letter campaigns for low-revenue licenses among the Study PAEs.'

To gain a better understanding of how PAE behavior compares with the behavior of other firms that assert patents, the report also looked at  the wireless chipset sector, examining how reported PAE assertion behavior compared to certain manufacturers and non-practicing entities (NPEs) (who primarily seek to develop and transfer technology ). For this study, the FTC obtained non-public data from eight manufacturers and five NPEs, for the same timeframe using its 6(b) authority.

The wireless case study found that Litigation PAEs and manufacturers behaved differently. Within the study, Litigation PAEs brought far more infringement lawsuits involving wireless patents—nearly two-and-a-half times as many as manufacturers, NPEs, and Portfolio PAEs combined. Litigation PAE licenses involved simple lump-sum payments with few restrictions, if any, whereas the reported manufacturer licenses frequently included field-of-use restrictions, cross-licenses, and complicated payment terms.

This new report furthers the Commission’s commitment to addressing patent policy issues, that began with its 2003 report, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, and continued with its 2011 report, The Evolving IP Markeplace: Aligning Patent Notice and Remedies with Competition."

Copyright © 2016 Robert Moll. All rights reserved.

Sunday, October 9, 2016

Apple loses patent retrial to VirnetX, owes $302.4 million

On September 30, a federal jury ordered Apple to pay $302.4 million for its infringement of VirnetX's patents relating to virtual private networks and secure communications links.

This retrial occurred after Judge Schroeder vacated VirnetX's $625.6 million win over Apple in a previous trial, because jurors may have been confused. The patents are complex, and even if not it appears patent litigation with big money at stake is likely to stretch for years. As noted, Apple's continued fight may have saved over $300 million less its attorney's fees.

For further details see Reuters Apple loses patent retrial to VirnetX, owes $302.4 million

Copyright © 2016 Robert Moll. All rights reserved.

Friday, October 7, 2016

Federal Circuit - Apple v. Samsung - Apple Wins Appeal Reinstating $199.6M Samsung Verdict

Today in Apple v. Samsung Electronics the Federal Circuit reinstated a $199.6M jury verdict for Samsung's infringement of Apple's US Patent Nos. 5,946,647, 8,046,721, and 8,074,172  because the verdict was supported by substantial evidence in the record and the trial court didn't err in denying Samsung's judgment as a matter of law (JMOL).

The Federal Circuit stated it must limit its appellant function to the trial court's record:

"We granted Apple's en banc petition to affirm our understanding of the appellate function as limited to deciding the issues raised on appeal by the parties, deciding these issues only on the basis of the record made below, and as requiring appropriate deference be applied to the review of fact findings. There was no need to solicit additional briefing or argument on the question of whether an appellate panel can look to extra-record extrinsic evidence to construe a patent claim term. “The Supreme Court made clear that the factual components [of claim construction] include ‘the background science or the meaning of a term in the relevant art during the relevant time period.’” Teva Pharms., Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015) (quoting Teva Pharms., Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)). After Teva, such fact findings are indisputably the province of the district court. ... We likewise did not need additional briefing or argument to determine that the appellate court is not permitted to reverse fact findings that were not appealed or that the appellate court is required to review jury fact findings when they are appealed for substantial evidence. The panel reversed nearly a dozen jury fact findings including infringement, motivation to combine, the teachings of prior art references, commercial success, industry praise, copying, and long-felt need across three different patents. It did so despite the fact that some of these findings were not appealed and without ever mentioning the applicable substantial evidence standard of review. And with regard to objective indicia, it did so in ways that departed from existing law.

The dissents, and Judge Dyk’s dissent in particular, raise big questions about how aspects of the obviousness doctrine ought to operate. But no party—at the panel or the petition for rehearing en banc stage—invited this court to consider changing the existing law of obviousness. We did not take this case en banc to decide important legal questions about the inner workings of the law of obviousness."

See Gene Quinn's IP Watchdog article Federal Circuit recognizes its role as only an appellate court in Apple v. Samsung and Susan Decker's Bloomberg article Apple Wins Appeal Reinstating $199.6M Samsung Verdict.

Copyright © 2016 Robert Moll. All rights reserved.

Thursday, October 6, 2016

Stanford Program in Law, Science & Technology - The Changing Patent Landscape Conference - October 7, 2016

Stanford Program in Law, Science & Technology and Samsung Electronics are co-sponsoring a conference: The Changing Patent Landscape 8:30 am - 4:15 pm tomorrow.

Here's the details: "The patent system has gone through some dramatic changes in the last decade. This conference will explore the impact of those changes on patent litigation, patent prosecution, and management, and will look at alternatives to patent protection.

Topics that will be covered at the conference include:

o The Changing Nature of Patent Prosecution and PTO Review
o The Changing Nature of Patent Litigation
o What Does the Future Hold?

Keynote Speaker - Chief Judge David P. Ruschke, USPTO


o Judge Leonard Davis, Fish & Richardson P.C.
o Christen Dubois, Facebook
o Kenneth S. Korea, Samsung Electronics
o Kathy Ku, Stanford University
o Mark A. Lemley, Stanford Law School; Durie Tangri LLP
o Sonal N. Mehta, Durie Tangri LLP
o Lisa Larrimore Ouellette, Stanford Law School
o James Pooley, Orrick, Herrington & Sutcliffe
o Ashok Ramani, Keker & Van Nest LLP
o Teresa S. Rea, Crowell & Moring LLP
o Lee Van Pelt, Van Pelt, Yi & James LLP
o Judge Christa Zado, Silicon Valley USPTO"

It is free and open to the public at the Paul Brest Hall, Munger Graduate Residences.


Copyright © 2016 Robert Moll. All rights reserved.