Wednesday, October 24, 2012

ITC Judge Decides Samsung Infringes Four Apple Patents

Today, Joe Mullin reports Samsung loses another big patent case to Apple, this time at ITC.

Mr. Mullin asserts the ITC judge's decision Samsung infringes four U.S. patents is "another sign Samsung is losing its global patent battle with Apple" and that the decision may result in a ban of Samsung products in 2013.

I am not so certain this much can be drawn from the ITC judge's decision. The ITC Commission must approve the ITC judge's decision, which may not happen. Even if approved, the Federal Circuit may reverse the Commission's decision. All the legal machinations give Samsung time to design around the Apple patents.

Apple and Samsung have many lawsuits around the globe. Apple has won some key battles, but recently lost in the Netherlands and in the UK. Even when Apple wins Samsung fights back: in Apple's victorious $1B case in San Jose, Samsung managed to get the Federal Circuit to reverse the entry of an injunction against the Samsung Galaxy Nexus. Samsung alleged jury misconduct that could cause a mistrial in San Jose. And just this month the PTO rejected all the claims of Apple's rubber band patent.

So I am not seeing signs Samsung is losing the global patent battle with Apple. Does it matter? Both companies have made and will continue to make great products. However, if Apple and Samsung let the patent battles affect their customer-supplier relationship, perhaps we will have losers: consumers who get less than the best products.

Copyright © 2012 Robert Moll. All rights reserved.

Saturday, October 20, 2012

Belkin International v. Kappos - Inter Partes Reexamination - Scope Limited to Prior Art Raising the Substantial New Question of Patentability

On September 16, 2012, the America Invents Act ended the ability to request inter partes reexamination.

However, inter partes reexamination requests filed prior to September 16 could remain for years. So it is worth looking at In Belkin v. Kappos and Optimum Path. In this case, the Federal Circuit affirmed the Board cannot consider prior art references that don't raise a substantial new question of patentability.

A policy limiting the scope of reexamination may seem harsh, but you have to consider the PTO's burden in examining all the arguments and prior art in requests for inter partes reexamination even when they don't raise a substantial new question of patentability. I reviewed one request that was over 600 pages!

Here's what the Federal Circuit had to say:

If the Director determines that any references does not raise a substantial new question of patentability, one must petition the Director to review the determination pursuant to 37 C.F.C. § 1.927. If this is not done that decision becomes final and nonappealable, and renders those issues beyond the scope of the reexamination.

Belkin requested inter partes reexamination of U.S. Patent No. 7,035,281 stating four prior art references raised new questions of patentability regarding claims 1-32. The Director determined the first three references did not raise a substantial new question of patentability, but the fourth reference did with respect to claims 1-3 and 8-10. Thus, the Director ordered reexamination of claims 1-3 and 8-10.

The Director denied Belkin's petition to review the denial of reexamination of claims 4-7 and 11-32. Belkin for reasons stated below, did not, however, file a petition to review the determination that the first three prior art references failed to raise substantial new questions of patentability concerning claims 1-3 and 8-10.

The examiner issued an action closing prosecution in the reexamination addressing only Belkin's proposed rejection of claims 1-3 and 8-10 as anticipated by the fourth reference and a right of appeal notice issued addressing only the fourth reference. Belkin appealed to the Board to challenge the examiner's not rejecting claims based on the first three references.

The Board determined that it lacked jurisdiction to decide whether a substantial new question of patentability existed regarding the first three references since that determination is non-appealable under 35 U.S.C. § 312(c). The Board held that it had no final decision on patentability and nothing to appeal regarding the three references. The Board affirmed the examiner's regarding the fourth reference. On rehearing, the Board declined to modify its decision and noted Belkin had not petitioned under 37 C.F.R. § 1.927 to review the Director's determination that there was no substantial new question of patentability for the issues based on the three references regarding claims 1-3 and 8-10.

Belkin unsuccessfully argued the Board has jurisdiction to consider the first three prior art references because once a substantial new question of patentability affecting a claim is found, all prior art must be considered including prior art found previously not to raise a substantial new question of patentability.

The Director responded 35 USC § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even if a substantial new question of patentability was found with respect to other references. The Director argued reexamination is limited to resolve the substantial new question of patentability, not questions raised by the requester that have been determined not to rise to that level. As only one reference raised a substantial new question of patentability, the Director argued the reexamination was limited to that question.

The Federal Circuit agreed and stated such an issue is nonappealable. At the outset, an inter partes reexamination is a two-step process. First, the Director must determine whether a substantial new question of patentability affecting any claim of the patent is raised by the request under § 311, with or without consideration of other patents or printed publications. 35 U.S.C. § 312(a). The statute is clear that decision is final and nonappealable. § 312(c).

The Federal Circuit noted the statute requires the Director order reexamination for resolution of the substantial new question of patentability found by the Director under § 312(a). The statute thus requires that an issue must raise a "substantial new" question of patentability with respect to cited prior art before it can be considered during inter partes reexamination. And an issue that has been determined to raise a substantial new question of patentability with respect to certain other prior art cannot be considered by the examiner and ultimately the Board. Instead if a requester disagrees with the decision that no substantial new question of patentability has been raised, 37 C.F.R. § 1.927 only permits the requester to petition the Director for review of that decision. Belkin didn't file a petition with respect to claims 1-3 and 8-10.

The Federal Circuit held:

Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See 35 U.S.C. § 303(a) ("On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him . . .."). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability.

Belkin unsuccessfully argued that such a result is inconsistent with the appeals statutes, 35 U.S.C. §§ 134(c) and 315(b), and regulations such as 37 C.F.R. § 41.61(a)(2). Those statutes grant rights to the requester to appeal a "final decision. . . favorable to the patentability of any . . . claim." §§ 134(c), 315(b). Similarly, § 41.61(a)(2) specifically allows the requester to appeal "any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any . . . claim." Id. Belkin argues that the examiner's decision not to reject claims 1-3 and 8-10 based on the issues determined not to raise a substantial new question was a decision favorable to patentability.

Belkin argued it did not petition for review of claims 1-3 and 8-10 because the Manual of Patent Examination and Procedure ("MPEP") § 2648 states: No petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.

The Federal Circuit responded that provision does not discuss the preclusive effect of a determination that an issue does not raise a substantial new question of patentability. Instead, MPEP § 2648 states the uncontroversial proposition that no petition may be filed to review a decision granting a request for reexamination.

Belkin also argued that 37 C.F.R. § 1.104 supports its interpretation because that regulation requires the examiner to make a "thorough investigation of the available prior art" during reexamination. The Federal Circuit maintained section 1.104 wouldn't help Belkin as the "available prior art" is only that which the Director has indicated constitutes a substantial new question of patentability.

The Federal Circuit noted a reference to "all prior art" in the MPEP or the regulations cannot trump the statute. Statutes rank higher than regulations, which rank higher than the MPEP.

Belkin relies on a decision of the Director denying a petition for review of the denial of four substantial new questions of patentability relating to a different patent to assert that it could not have petitioned the Director concerning his decision on the substantial question of patentability. Decision Expunging Petitions, In re Schwindt, Reexamination Control No. 95/001,743 (Mar. 5, 2012) (J.A. 1840-43). Belkin notes that the decision denied the petition because reexamination was ordered for the same claims on a different ground than proposed by the requester pursuant to MPEP § 2648. However inconsistent that decision may or may not be with the Director's current position, it must yield to the statute, which denies appealability of the Director's decisions on substantial questions.

Belkin raised concerns a third-party requester in an inter partes reexamination is estopped from later asserting the invalidity of any claim "finally determined to be valid and patentable on any ground which the thirdparty requester raised or could have raised" during the reexamination. Belkin argues that once reexamination has been granted, the requester must put forward all eligible prior art or face that estoppel. Belkin's concerns are unwarranted.

The Federal Circuit replied the estoppel was not before it. As Belkin merely asserted that the three references raised substantial new questions of patentability as to claims 1-3 and 8-10— which the Director rejected—Belkin's arguments regarding estoppel are thus not persuasive.

The Federal Circuit concluded Belkin should have petitioned the Director to review the determination that the arguments relying on the other references did not raise a substantial new question of patentability pursuant to 37 C.F.C. § 1.927. Belkin didn't and the decision became final and nonappealable, rendering those issues beyond the scope of the reexamination. Accordingly, it affirmed the Board.

The Federal Circuit also cautioned that America Invents Act amended the inter partes reexamination provisions and the request for inter partes reexamination in this case was filed before the date of enactment, September 16, 2011. Thus, the Federal Circuit expressed no opinion on the applicability of the AIA to the case, and did not reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.

Copyright © 2012 Robert Moll. All rights reserved.

Friday, October 19, 2012

USPTO Proposed Professional Conduct Rules

Director Kappos has posted an explanation relating to the USPTO's proposed ethics rules: USPTO Harmonizes Professional Conduct Rules. This proposal is a smart and overdue move that will better align the PTO rules with the ABA Model Rules adopted by 49 states and DC. I think the logic is unassailable: why should we have two sets of ethic rules governing patent attorney conduct?

For additional detail see the following: Proposed USPTO Rules of Professional Conduct for the Notice of Proposed Rulemaking, the ABA and USPTO rule comparison chart, and the ABA Model Rules and Comments.

These rules are open for public comment: ethicsrules.comments@uspto.gov until December 17, 2012.

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, October 18, 2012

USPTO - Provisional Application for Patent

The USPTO published an introduction to the topic of provisionals: Provisional Application for Patent.

I like the introduction, but what isn't covered are the pitfalls. The most common is based on the myth that a "sketchy" provisional locks in a filing date and gives one the ability to wait up to 12 months to file a detailed nonprovisional application. You have 12 months to file a nonprovisional, but only if the provisional meets the requirements of 35 USC 112. Many provisionals don't warrant a filing date.

Here's a scenario likely to repeat itself many times this year: an inventor prepares a sketchy provisional then after a long passage of time (e.g., nearly 12 months) contacts a patent attorney to file a nonprovisional to meet legal requirements. If no offer for sale, public use, or publication occurred prior to filing the provisional, the patent attorney can add any missing details in the nonprovisional. If not, one must file a nonprovisional within 12 months of the first activity or the patent will be lost.

False reliance on provisionals may be the leading cause of patent death once the one-year grace period is further limited under the first-to-file system of the America Invents act on March 13, 2013. And this is why patent attorneys require an invention disclosure with all activities pinned to a date.

For additional information under current US patent law, see my blog posts:

Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use

The Benefits of Provisional Applications: Slip, Sliding Away

Copyright © 2012 Robert Moll. All rights reserved.

Friday, October 12, 2012

Joe Mullin - People's Choice for Patent Journalist

Joe Mullin writes about patent law as it might appear in People magazine. But let's also give him credit: (1) he has own views based on fact research; (2) he dutifully trudges into "patent land" often enough to not get lost; and (3) he captures what's funny, human, or interesting in a topic that has the potential to bore people. His articles attract reader comments such as "software patents are bad" that "trip on hurdles" (1), (2) and (3), but the signal coming from Joe Mullin is worth that noise.

Here are links to Mr. Mullin's recent articles:

Jury finds patent on "look and feel" for online stores valid, infringed - Two defendants will pay much less than the plaintiff asked for $750,000 each

In Texas, an e-commerce pioneer fights patent on "look and feel" of websites - Digital River tells patent troll: we beat you by two years

Do it "on the Internet," get a patent, sue an industry-- it still works - At Texas trial, a defunct dot-com wrangles royalties from a swatch of e-commerce

Pioneering patent troll seeks Supreme Court's ear, and a cool $12 million

Copyright © 2012 Robert Moll. All rights reserved.

Thursday, October 11, 2012

America Invents Act - USPTO Extends Time For Public Comment On Proposed Rules for First-To-File

Today, the USPTO announced one can still submit comments on the proposed rules for the first-to-file provision of the America Invents Act (AIA). The comment period ended October 5, but the PTO reopened the time for comments until November 5. I have provided a PDF copy: First-Inventor-to-File Proposed Rules. The final rules will become effective on March 16, 2013.

The USPTO prefers any comment submissions by email, preferably in plaintext, but also accepts email with PDF and Word attachments at the following email address: fitf_rules@uspto.gov. 

Copyright © 2012 Robert Moll. All rights reserved.

Tuesday, October 9, 2012

CLS Bank v. Alice Corp. - Federal Circuit Revisits Test for Software Patent Eligibility

Today, the Federal Circuit granted appellees CLS Bank International and CLS Services Ltd.'s petition for a rehearing en banc, vacated the Federal Circuit's Alice Corp. v. CLS Bank decision on software patent eligibility, and reinstated the appeal. The en banc decision may be significant to software patent owners and anyone facing software patent assertions.

Representative claim 1 of U.S. Patent No. 7,149,720 describes a data processing system that includes a computer configured (i.e., programmed) to perform certain steps:

1. A data processing system to enable the exchange of an obligation between parties, the system comprising:

a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and

a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

The Federal Circuit majority held when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101…Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101.

So the "nothing more" test lasted three months. How apt! And now the Federal Circuit invites the parties and amici to file briefs addressing the following questions:

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

The court invites the views of the USPTO as amicus curiae. Other amici curiae briefs may be filed without consent and leave of court in compliance with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.

I expect many amici briefs will be filed seeking to influence the Federal Circuit's test for software patent eligibility.

Copyright © 2012 Robert Moll. All rights reserved.

Monday, October 8, 2012

Apple's Smartphone Patent War Strategy

Today, Ars technica has an article that ponders why Steve Jobs decided to file over 200 patent applications to protect the features of the iPhone. The article argues this strategy arose from the sting of paying Creative $100 million to license a patent that related to the user interface of the Apple iPod. It sounds plausible, but I think Apple's strategy evolved from more than one event and may have originated when copyrights failed to protect the "look and feel" of the windows interface in Apple v. Microsoft. See Wikipedia Apple v. Microsoft for details.

Here's a link to the article: Creative pushed Steve Jobs to armor up for the smartphone patent war - Apple's patent zeal was apparently triggered by a long-forgotten MP3 player

Copyright © 2012 Robert Moll. All rights reserved.