Monday, November 30, 2015

PTAB - Responding to New Grounds of Rejection on Appeal

The PTAB has published an article that provides guidance on responding to new grounds of rejection on appeal. The article reviews PTAB rules for responding to new grounds in an examiner's answer, undesignated new grounds, and tolling for filing a reply while awaiting a decision on a petition for review of the examiner's answer.

Copyright © 2015 Robert Moll. All rights reserved.

Friday, November 27, 2015

PTAB - Summary in Fiscal Year 2015

The USPTO gave the following summary of PTAB opinions, pilot programs, and events in Fiscal Year 2015:

Informative/Representative Opinions

"The PTAB issued the following five informative opinions in FY2015:

Cisco Systems, Inc. v. C-Cation Techs, LLC, IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) (impermissible incorporation of arguments into petition by reference)

TRW Automotive US LLC v. Magna Electronics, Inc., IPR 2014-00293, Paper 18 (PTAB June 27, 2014) (meaning of “serv with a complaint” under 35 U.S.C. § 315(b))

Conopco, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 25 (PTAB Dec. 10, 2014) (addressing request for expanded panel on rehearing)

AOL Inc. v. Coho Licensing LLC, IPR2014-00771, Paper 12 (PTAB Mar. 24, 2015) (addressing request for expanded panel on rehearing)

Arris Group, Inc. v. C-Cation Techs, LLC, IPR2015-00635, Paper 10 (PTAB May 1, 2015) (granting motion for additional discovery on privity issue)

The PTAB issued the following representative opinions in FY2015:

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19, (PTAB Oct. 30, 2014)(guidance on requirements for motion to amend)

Dell, Inc. v. Electronics and Telecomms. Res. Inst., IPR2015-00549, Paper 10 (PTAB Mar. 26, 2015) (applying estoppel under 35 U.S.C. § 315(e)(1)

Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) (discussing estoppel under 35 U.S.C. § 325(e)(1))

MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015) (guidance on requirements for motion to amend)

The PTAB implemented and/or announced the following Pilot Programs during FY2015:
  • Expedited Patent Appeal Pilot (implemented June 19, 2015)
  • Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant
  • Administrative Reviews (announced Aug. 25, 2015, with request for comments due Nov. 18, 2015)
  • Streamlined, Expedited Patent Appeal Pilot for Small Entities (implemented Sept. 18, 2015)
  • PTAB-Related Topics Covered in USPTO articles
  • The PTAB published the following articles on its Web page during FY2015:
  • Effective Use of Claim Grouping in Appeals to the Patent Trial and Appeal Board (published Mar. 11, 2015)
  • Organizational Structure and Administration of the Patent Trial and Appeal Board (published May 2015)
  • USPTO Announces Streamlined, Expedited Patent Appeal Pilot for Small Entities (published Sept. 17, 2015)
  • Proposed Changes to Rules Governing PTAB Trial Proceedings (published Aug. 19, 2015)
  • PTAB’s Quick-Fixes for AIA Rules Are to Be Implemented Immediately (published Mar. 27, 2015)
  • PTAB Hits the Road Again in November 2014 for Detroit Region Roadshows about the AIA Trials (published Oct. 28, 2014)
In addition to the many speaking events in which PTAB judges participate monthly, the PTAB hosted several noteworthy Outreach Events during FY2015:
  • PTAB Statistics and Key Decisions (Feb. 3, 2015)
  • Do’s and Don’ts for Ex Parte Appeals (Apr. 7, 2015)
  • Discovery in AIA Trials (July 14, 2015)
  • Ask the Judges panel (August 4, 2015)
  • PTAB Bench & Bar Conference (June 18, 2015)
  • AIPLA/USPTO Roadshows(San Jose, Dallas, and Alexandria) (August 24‒28, 2015)
For more information on any of the items mentioned in this email, please see the PTAB’s Web page at If you have suggestions for other topics that you would like to see covered by the PTAB in a future Outreach event, please email your suggestions to"

Copyright © 2015 Robert Moll. All rights reserved.

Friday, November 20, 2015

Crouch - AIA Patents: 20% of New Patents - Brief Comment

Professor Dennis Crouch's post: AIA Patents: 20% of New Patents includes a chart that graphically shows a steep rise in US patents that have issued under the America Invents Act (AIA). As a reminder, an AIA patent is not entitled to a filing date earlier than March 16, 2013.

I expect a rise in litigation on how 35 USC 102 should be interpreted for AIA patents given the different language of Section 102 of the AIA and given the paucity of court or PTAB decisions to date. I am not certain if the rise in AIA patents will trigger a similar rise in litigation rather than settlement on Section 102 disputes, but it seems likely.

Also see Professor Crouch's First AIA Lawsuits and my article America Invents Act, On Sale Bar, 35 USC 102.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, November 17, 2015

USPTO - New Application Data Sheet Form for Submissions On or After November 30, 2015

The USPTO has a new Application Data Sheet (ADS) form PTO/AIA/14 for any ADS submission on or after November 30, 2015:

"The changes to the ADS form were announced in the Federal Register. See Changes to Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices; found on Final Rule (October 27, 2015).

Applicants are no longer required to select an opt-in check box on the ADS form to provide the USPTO with authorization to permit a foreign intellectual property office participating in the priority document exchange (PDX) program access to a U.S. priority application. Instead, the revised ADS form contains by default the authorization to permit access to the U.S. priority application via the PDX program. Including a properly signed ADS form on filing will provide applicant’s authorization for the PDX program. Should applicant wish not to provide authorization for the PDX program, applicant can select the opt-out check box for this authorization on the ADS form. The revised ADS form also contains by default the authorization to permit access to the search results from a U.S. priority application by the European Patent Office (EPO). Like the PDX program, should applicant wish not to provide the EPO access to the search results, applicant can select the opt-out check box for this authorization on the ADS form.

Please note that a revised ADS form submitted after the filing of an application CANNOT be used to provide or revoke any of the authorizations to permit access discussed above. Instead, forms PTO/SB/39 and PTO/SB/69, as applicable, should be used to provide or revoke these authorizations to permit access after the filing of an application."

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, November 11, 2015

USPTO - Raising Patent and Trademark Fees - 2016

The USPTO has notified that it plans to increase many patent and trademark fees in 2016:

"As part of the USPTO’s continued commitment to fiscal responsibility, financial prudence and operational efficiency the agency reviews fee levels on at least a biennial basis. The fee review process incorporates a thorough evaluation of the existing fee schedule as well as significant research and analysis on potential revisions to the schedule.

Section 10 of the AIA authorizes the Director of the USPTO to set or adjust by rule all patent and trademark fees established, authorized, or charged under Title 35 of the U.S. Code and the Trademark Act of 1946 (15 U.S.C. § 1051 et seq.), respectively. When fees are set, the aggregate revenue from the patent fees may only recover the aggregate estimated cost of the patent operations, including administrative costs to the USPTO. Likewise, the aggregate revenue from the trademark fees may only recover the aggregate estimated cost of the trademark operations, also including administrative costs to the USPTO.

When the USPTO proposes to set or adjust fees for "filing, searching, examining, issuing, appealing, and maintaining patent applications and patents" as permitted by the AIA, those proposed fees will include a 50% reduction for small entities and a 75% reduction for micro entities as provided for in section 10(b) of the AIA. The applicants qualifying for a small entity discount (50%) will be those who meet the "small entity" definition in 35 U.S.C. § 41(h)(1). The applicants qualifying for a micro entity discount (75%) will be those who meet "micro entity" definition outlined in Section 11(g) of the AIA.

The AIA outlines the process that the USPTO will use when setting or adjusting fees by rule. This process is intended to be inclusive with two different points in time for the public to comment on proposed fee amounts."

Here's the USPTO's details:

Patent Fee Setting and Adjusting Proposal
80 FR 63543 - Notice of Public Hearing - PPAC (link is external)
Letter from the Director to PPAC
Table of Patent Fee Adjustments
Table of Patent Fees – Current, Proposed and Unit Cost
PPAC Executive Summary
PPAC Detailed Appendix

Trademark Fee Setting and Adjusting Proposal
80 FR 63542 - Notice of Public Hearing - TPAC (link is external)
Letter from the Director to TPAC
Table of Trademark Fee Adjustments
Table of Trademark Fees - Current, Proposed and Unit Cost
TPAC Executive Summary
TPAC Detailed Appendix
TPAC Hearing Agenda

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, November 7, 2015

USPTO - Enhanced Patent Quality Initiative - USPTO Director Michelle K. Lee

Director of the USPTO Michelle K. Lee continues to focus on the topic of patent quality:

"Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.

Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality.

We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative.

First, we are preparing to launch a Clarity of the Record Pilot under which examiners will include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record. We also will be launching a new wave of in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).

Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public.

What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.

The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiativepage on our website.

Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.

To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information. The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to Thank you for collaborating with us on this exciting and important initiative!"

Copyright © 2015 Robert Moll. All rights reserved.

Friday, November 6, 2015

Congress - Copyright Review Listening Tour - Santa Clara University Law School - November 9, 2015

On Monday November 9, Santa Clara Law will host the House Judiciary Committee's Copyright Review Listening Tour about the future of U.S. copyright law.

As Chairman Goodlatte and Ranking Member Conyers stated: "Two years ago, the House Judiciary Committee launched a comprehensive review of our nation’s copyright laws, which have not been updated since 1976. As technology continues to rapidly advance, we have a responsibility to ensure that our laws are keeping pace with these developments. The Committee is traveling to locations across America to hear directly from creators and innovators about the challenges they face in their creative fields and what changes are needed to ensure U.S. copyright law reflects the digital age in which we live. We look forward to continuing the productive dialog that we had in Nashville, the first stop of the Committee’s listening tour."

The following members of Congress, academics, and other stakeholders will speak at this event:

Laura Covington, Vice President of Intellectual Property Policy, Yahoo

Clint Cox, VP of Technical Operations, Ultimate Fighting Championship

Tony Falzone, Deputy General Counsel, Pinterest

Alex Feerst, Attorney, Legal Team, Medium

Brewster Kahle, Founder and Digital Librarian, Internet Archive

Zoe Keating, Cellist, Composer and Technologist

Michael Keller, University Librarian, Stanford University

Lisamaria Martinez, Director of Community Services, Lighthouse for the Blind of San Francisco

Tyler Ochoa, Professor of Law, Santa Clara University School of Law

Matthew M. Sarboraria, Vice President of Intellectual Property, Oracle

Brianna Schofield, Teaching Fellow, Berkeley Center for Law & Technology

Ellen Seidler, independent filmmaker

Ted Ullyot, Partner, Andreesen Horowitz

Ruth Vitale, Chief Executive Officer, Creative Future

Timothy Vollmer, Manager of Public Policy, Creative Commons

Kit Walsh, Staff Attorney, Electronic Frontier Foundation

Kyle Wiens, Founder and CEO, iFixit

Matt Zinn, General Counsel, TiVO

This event is free and open to the public.

Register here

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, November 5, 2015

Supreme Court - Amended Federal Rules of Civil Procedure - Effective December 1, 2015

The amendments to the Federal Rules of Civil Procedure (FRCP) become effective on December 1. The amendments will impact non-practicing patent owners who are used to filing form patent infringement complaints with little pre-filing research and leveraging the fact they have little to produce in discovery compared to the defendants. 

The amendments eliminate the patent infringement form, and require patent owners state additional facts in support of infringement, and in some cases file claim charts.

The amendments will also reduce the scope of discovery to "any non-privileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit."

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, November 4, 2015

Eric Spangenberg - Have We Hit Bottom in the Patent Market?

In the IP Watchdog article: Have We Hit Bottom in the Patent Market? Mr. Eric Spangenberg gives his frank assessment of what has adversely impacted the US patent market:

"Big tech used small companies hit with abusive lawsuits as the 'poster boy' to push through changes that do far more to help big companies efficiently infringe 'little guys' intellectual property than they do to prevent abuse. The market is still struggling to adapt to the rule changes that were pushed through in the AIA."

I would add companies have not been transparent on the funding of academic papers, studies, and articles in the press. Often the studies have lots of numbers, surveys, and statistics. The authors should disclose if they are compensated. Otherwise, these publications get presented to Congress right before hearings as objective evidence from disinterested observers of a problem that requires further patent reform.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, November 3, 2015

USPTO - Efficient Patent Prosecution Program - San Jose - November 17, 2015

The USPTO is hosting a program: Efficient Patent Prosecution at its new Silicon Valley Office at 26 South Four Street, San Jose, CA at 3:30 to 4:45 pm on Tuesday, November 17.

The following classes will be presented three times so you can see it all (if you have the time): (1) virtual interviews and tips for examiner interviews from San Jose; (2) searching for prior art using tools available at the Silicon Valley Office; and (3) using the Patent Ombudsman to resolve prosecution issues.  

To RSVP, send an email: 

For more information: Silicon Valley Office

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, November 1, 2015

NY Times - The Patent Troll Smokescreen - A Comment

In the NY Times article The Patent Troll Smokescreen, Joe Nocera nicely sums up where big tech lobbying has taken the US patent system since passage of the AIA:

"But what if, in the name of cracking down on trolls, Congress passes an anti-troll law that winds up having huge negative consequences for legitimate inventors? What if a series of Supreme Court rulings make matters worse, putting onerous burdens on inventors while making it easier for big companies to steal unlicensed innovations As it happens, thanks to the 2011 America Invents Act and those rulings, big companies can now largely ignore legitimate patent holders.

Of course, they don’t call it stealing. But according to Robert Taylor, a patent lawyer who has represented the National Venture Capital Association, a new phrase has emerged in Silicon Valley: “efficient infringing.” That’s the relatively new practice of using a technology that infringes on someone’s patent, while ignoring the patent holder entirely. And when the patent holder discovers the infringement and seeks recompense, the infringer responds by challenging the patent’s validity.

Should a lawsuit ensue, the infringer, often a big tech company, has top-notch patent lawyers at the ready. Because the courts have largely robbed small inventors of their ability to seek an injunction — that is, an order requiring that the infringing product be removed from the market — the worst that can happen is that the infringer will have to pay some money. For a rich company like, say, Apple that’s no big deal."

Exactly, and with the effectiveness of AIA trials, we now have a legal framework where it is relatively inexpensive and quick (at least compared to in court) to invalidate a US patent that is the subject of a lawsuit. So why do I need a license again Mr. small time inventor? This is not an argument against patents per se because once the typical big tech acquisition occurs -- the new ownership gives financial parity making the pushback to the validity challenge worthy of serious consideration.

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, October 31, 2015

WSJ - Supreme Court to Consider Standard for Increased Damages for Willful Infringement

The US Supreme Court opinions in the last decade have made life let's call it more challenging for patent owners. I have no reason to expect this to change soon, but now the WSJ reports the "Supreme Court is jumping back into the world of patent law, this time to decide whether to make it easier for patent holders to win increased damages when someone willfully infringes their inventions." But since it involves a chance to reverse the Federal Circuit which vacated damages for willful infringement, who knows!

See WSJ article: The Supreme Court to Consider Patent Damages, New Electricity Case

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Extends Time for Comments for Proposed Amendments to Rules for AIA Trials to November 18, 2015

The USPTO has extended the period for comments on the proposed amendments to the rules governing practice for AIA Trials to November 18, 2015:

"The USPTO published a notice of proposed rulemaking in the Federal Register on August 20, 2015, seeking public comment on proposed amendments to the rules of practice for trials before the Patent Trial and Appeal Board. See Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, 80 Fed. Reg. 50,720–47 (Aug. 20, 2015).

The USPTO initially indicated that written comments must be received on or before October 19, 2015. In view of stakeholder requests for additional time to submit comments on the proposed amendments to the rules of practice for trials, the USPTO is now extending the period for public comment until November 18, 2015.

Any comments on the proposed amendments to the rules of practice for trials must be emailed to, and must be received on or before November 18, 2015.

More information about trials under the America Invents Act before the Patent Trial and Appeal Board is available at"

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Manual of Patent Examining Procedure (MPEP), 9th Edition, Revision 07.2015 - Published on October 29, 2015

Today, the USPTO announced it has published new revisions to the MPEP:

"On October 29, 2015, the USPTO issued the Ninth Edition, Revision 07.2015, of the MPEP, which incorporates changes to the laws, rules, and practice necessitated by, or made as a result of, the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012) as well as other revisions. The Hague Agreement Concerning International Registration of Industrial Designs as set forth in Title I of the PLTIA is effective as of May 13, 2015; the Patent Law Treaty Implementation as set forth in Title II of the PLTIA is effective as of December 18, 2013. For a listing of all the revised sections, see the “Change Summary” document that is posted as part of the MPEP."

Here is a link to the latest version of the MPEP.

This revision covering the Hague Agreement should help those seeking international design patents.

Copyright © 2015 Robert Moll. All rights reserved.

Friday, October 16, 2015

PTAB Hearings Locations - Alexandria, Detroit, Denver, and San Jose - In future Dallas

Today, the USPTO notified: "Patent Trial and Appeal Board (PTAB) hearings now take place in multiple USPTO locations across the United States. The hearing location is listed on correspondence from the PTAB. For America Invents Act trial hearings, refer to the Oral Hearing Order. For appeal hearings, refer to the PTAB’s Notice of Hearing.

Hearing locations include Alexandria, Virginia; Detroit, Michigan; Denver, Colorado; and San Jose, California. In the near future, hearings will also take place in Dallas, Texas.

If you have questions about hearing locations, contact the Hearing Operations Team listed on the hearing notice or call 571-272-9797."

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, September 23, 2015

Federal Circuit - Laches May Bar Damages for Patent Infringement Claims Brought With the Six-Year Limit of 35 USC 286

In SCA Hygiene Products v. First Quality Baby Products, the Federal Circuit held the defense of laches (unreasonable, prejudicial delay in commencing suit) may bar recovery of damages on a patent infringement claim brought within 35 USC §286's six-year limit after considering the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. on laches in a copyright case.

The SCA court noted A.C. Aukerman Co. v. R.L. Chaides Construction Co. stated the following principles regarding the defense of laches:

1. Laches is cognizable under 35 U.S.C. § 282 (1988) as an equitable defense to a claim for patent infringement.

2. Where the defense of laches is established, the patentee’s claim for damages prior to suit may be barred.

3. Two elements underlie the defense of laches: (a) the patentee’s delay in bringing suit was unreasonable and inexcusable, and (b) the alleged infringer suffered material prejudice attributable to the delay.

4. A presumption of laches arises where a patentee delays bringing suit for more than six years after the date the patentee knew or should have known of the alleged infringer’s activity.

5. A presumption has the effect of shifting the burden of going forward with evidence, not the burden of persuasion.

The SCA court stated laches can prevent an injunction, but in such a case the infringer could be required to pay an ongoing royalty. The majority (6 to 5) issued a 60-page opinion that in the end states the US Patent Act of 1952 codified the case law which included the laches defense as one of the "unenforceability defenses."

Also see my related article: CAFC - SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC - Reviewing Laches and Equitable Estoppel.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, September 21, 2015

PTAB - Webinar Proposed AIA Trial Rules on Thursday, October 1

Today, PTAB notified it is hosting a free webinar on the proposed AIA trial rules noon to 1 pm ET on Thursday, October 1.

As stated in the notice: "Lead Judge Susan Mitchell will walk through the proposed rule changes followed by a discussion with Lead Judge Mike Tierney and Lead Judge Tom Gianetti about the background, rationale, and implications of the proposed rules. To review the proposed rules in advance, please visit the Federal Register Notice.

On Tuesday, October 6th, AIPLA is holding a companion webinar to address the proposed rule changes from AIA trial practitioners' perspectives, including views from Todd Baker of Oblon and Joe Palys of Paul Hastings. The practitioners will address the practical implications of the rules and how they may alter current AIA trial practice and strategy.

For more information about AIPLA's webinar.

Together, these two programs are designed to address the proposed AIA trial rules from all angles. And at the conclusion of each webinar, viewers will have the opportunity to pose questions to the judges and practitioners. Please attend to participate in the development of the AIA trial rules and share your input."

Webinar Access Information:

Event address for attendees     
Event number: 994 593 512
Event password: 123456
Audio conference: 1-650-479-3208
Access code: 994 593 512

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, September 17, 2015

USPTO - Interview Practice - New Automated Interview Request (AIR)

Today, the USPTO released "a new online interview scheduling tool Automated Interview Request (AIR) that allows applicants to request an interview with an Examiner for their pending patent application. By submitting this type of interview request, the pending patent application will be in compliance with the written authorization requirement for Internet communication in accordance with MPEP §502.03. This authorization will be in effect until the Applicant provides a written withdrawal of authorization to the Examiner of record."

The USPTO AIR form is available on the interview practice page, which gives tips on interviews, which can help applicants efficiently prosecute patents and a link to video conferencing.

The USPTO directs questions to and interview specialists.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, September 15, 2015

PTAB - Streamlined, Expedited Patent Appeal Pilot for Small and Micro Entities

The Patent Trial and Appeal Board (PTAB) notified of an interesting pilot program that may be useful if you are a small or micro entity facing an appeal.

"The PTAB is pleased to announce a second pilot program that will allow small or micro entity appellants with only a single ex parte appeal pending before the Patent Trial and Appeal Board (Board) to expedite review of that appeal in return for agreeing to streamline the appeal. Specifically, the appeal must not involve any claim subject to a rejection under 35 U.S.C. § 112, and the appellant must agree to the disposition of all claims subject to each ground of rejection as a single group and waive any request for an oral hearing.

The Streamlined, Expedited Patent Appeal Pilot for Small Entities will allow small or micro entity appellants who streamline their appeals to have greater control over the priority with which their appeals are decided. The streamlining of appeals under this pilot will also assist the Board to more efficiently reduce the overall inventory of appeals pending before the Board.

Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge under 37 C.F.R. § 41.3. The Office has waived the petition fee and provided a form-fillable PDF (Form PTO/SB/441) for use in filing the certification and petition. For more information about the pilot program and how to participate, please refer to the Federal Register notice at

PTAB also notified it "has recently published statistics on the Expedited Patent Appeal Pilot program on its Web page at

The statistics show that petitions filed under the Expedited Patent Appeal Pilot program are being decided in an average of two days from the date of filing and that decisions on appeals accorded special status under this program currently are issued in an average of one month from the date of grant of the petition."

If you meet the requirements, the PTAB is suggesting you may get an appeal decision in about one month based on the statistics. Yes, appellant must agree to the disposition of all claims subject to each ground of rejection as a single group" and "waive any request for an oral hearing," but if you are willing to do that, meet all requirements, and need a quick decision it sounds useful. A caveat if many people use this procedure -- will the "one month to decision" promise hold?

Copyright © 2015 Robert Moll. All rights reserved.

Monday, September 7, 2015

USPTO - Improving Global Patent Prosecution - September 8, 2015

This arrived on Labor Day, the USPTO reminds:

"The Patent Quality Chat webinar series continues tomorrow, Tuesday, September 8th, from noon – 1pm EDT; this month’s topic is Improving Global Patent Prosecution, hosted by Deputy Commissioner for International Patent Cooperation Mark Powell and Director of International Programs Maria Holtmann. Mr. Powell and Ms. Holtmann will discuss how to improve global patent prosecution highlighting a new program the USPTO is exploring with other IP offices – global preliminary search.
Attend tomorrow (Tues 9/8) at noon using this link:

Throughout the Chat webinar event, stakeholder participation will be solicited via our event email box:
More information about the Patent Quality Chat webinar series, including a recording of last month’s event on Measuring Patent Quality, can be found on the Chat Web page:

All of the webinars in this series are free and open to the public. No CLE credit will be available through the USPTO. Video recordings and presentation materials from the webinars will be posted on our Patent Quality Chat Web page accessed online through the link above after each event.
Upcoming Patent Quality Chat webinar series for 2015
October 13: Update on the Enhanced Patent Quality Initiative
November 10: Special Programs for Patent Prosecution

All events are exclusively via webinar from noon – 1 p.m. EDT on the second Tuesday of the month."

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, August 29, 2015

USPTO - PAIR Not Available 4:30 am - 5:30 am ET Daily

In August 2015, the USPTO notified PAIR unavailable 04:30 AM to 05:30 AM ET daily.

Copyright © 2015 Robert Moll. All rights reserved.

Friday, August 28, 2015

USPTO - New Patents Petitions Timeline Now Available

On August 26, the USPTO notified:

"The Office of Petitions has launched a new USPTO Patents Petitions Timeline that provides information on petition types that can be filed throughout each stage of the patent prosecution process. For each petition type, users can easily access information on average pendency over the past 12 months of decided petitions, the deciding office, petition grant rates, and link to specific sections of the Manual of Patent Examining Procedure (MPEP) or other parts of the USPTO website that relate to each petition type.
The Patents Petitions Timeline website was developed to help our customers access more detailed statistics, including grant and pendency rates, and useful information about each petition. This will help applicants make better quality decisions on when to file a particular petition type during prosecution or for the life of the issued patent.

Please visit the USPTO's USPTO Patents Petitions Timeline found on"

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - New Patent Maintenance Fees Storefront Now Available

On August 28, the USPTO notified:

"New information about the USPTO’s upcoming release of the Patent Maintenance Fees Storefront is now available online. We’ve also published a list of Frequently Asked Questions that provides further details about this new online fee payment tool. It includes information about the USPTO’s new online shopping cart, which will be available in the Patent Maintenance Fees Storefront.
If you haven’t done so already, check out the Fee Payment System Customer Survey Highlights to see how your input has helped us design our newest online fee payment tools.

If you have questions or feedback about the Patent Maintenance Fees Storefront, send an email to Your input continues to drive our plans for future systems and your question could appear on our Frequently Asked Questions page.
Having trouble using the in-text hyperlinks? You can copy and paste these URLS to your web browser:

Patent Maintenance Fees Storefront -

Frequently Asked Questions -

Fee Payment System Customer Survey Highlights -"

Copyright © 2015 Robert Moll. All rights reserved.