Saturday, May 30, 2020

Mueller - Patent Law Sixth Edition 2020

Janice Mueller's Patent Law (2020, Sixth Edition) was released on May 18, 2020. It looks like another useful edition. It is an introduction to US patent law with lots of detail (1296 pages). It also looks complete based on my review of the table of contents.  I am not affiliated with the author nor her publisher and only post because it has merit. I suggest the Kindle version but if you like things in paper here's the link. To get a Kindle version just click on the e-book tab.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, May 26, 2020

Professor Lemley - Without Preamble

Professor Mark Lemley's article Without Preamble (2019-2020) relates to the topic of claim construction, which can determine the outcome of patent litigation.

As background, a US patent claim has three parts: (1) a preamble, which states what the invention is or its environment, (2) a transitional term (e.g., comprising), and (3) a body that lists the steps of a method or the structure of a system. Generally, courts hold a preamble is a claim limitation "if it gives life, meaning and vitality" to the claim or recites essential structure or steps. Yes, it's a case by case determination. Perhaps a more practical test is whether the preamble is referenced repeatedly in the body. If so, the preamble is a claim limitation, i.e., for purpose of determining validity and infringement. See Mueller, Patent Law (2020).

Turning to Professor Lemley's Abstract:

"The Federal Circuit is ignoring a significant share of the words of patent claims. That's a bad idea as a matter of policy. It is virtually impossible to tell when the court is going to do it. And it’s inconsistent with the idea that the claims define the scope of the invention, and with how the Supreme Court thinks about claim construction and its closest analogies, statutory interpretation and construing contracts.

The culprit is a labyrinthine set of rules the Federal Circuit uses to decide whether or not to include the 'preamble' to a patent claim as a part of the claim. The words of the preamble, which can sometimes amount to more than half of the whole claim, might or might not be treated as part of the invention depending on a complex of factors, including whether the claim reads as a complete sentence without it, whether the same words are used in both the preamble and the body of the claim, whether the body of the claim includes the magic word 'said,' whether the preamble merely claims a use, benefit, or environment for the claim, and whether the preamble 'is necessary to breathe life and meaning into the claim.'

In Part I I discuss the bizarre body of law around patent claim preambles and how the law got to its current confused state. In Part II I suggest that the rule serves no useful purpose, and that if and when the Supreme Court gets such a case it should and will sweep the rule away. Patent applicants should be drafting patents with that fact in mind, and the rest of us should be interpreting claims with one eye on the fact that this is a doctrine whose days are numbered."

In short, this article asks courts drop the case by case determination test we use today on whether the preamble is a part of the claim just as much as the body of the claim. Saying the preamble always counts as proposed removes uncertainty, but means more patent claims will be held to not infringe. Further, this helps defendants rather than patent owners since a non-infringement defense is preferred to proving invalidity in court.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, May 25, 2020

National Law Review - To promote Innovation, Congress Should Lessen Restrictions on Injunctive Relief for Patent Owners

In a National Law Review article: To promote Innovation, Congress Should Lessen Restrictions on Injunctive Relief for Patent Owners, Paul Michel, retired Chief Judge of the US Court of Appeals of the Federal Circuit, tackles the issue of injunctive relief for valid and infringed US patents.

Read the article for the argument, but here are a few of his observations:

"For much of our country’s history, permanent injunctions were the norm once patent infringement and validity were proven at trial by the patent owner. And getting an injunction depended on facts, not the patent owner’s business model – for example, whether they manufactured or licensed their invention. The practice was stable for all of that time – until recently."

"In 2006, in the Supreme Court’s eBay Inc. v. MercExchange, L.L.C. decision, the Court upended this settled practice, ruling that injunctions should not be automatically issued in patent cases and clarifying that courts must apply a four-part test to determine whether an injunction should be granted."

"For some years after, the pattern of injunction grants changed little. But eventually, it shifted greatly, as lower courts began to make injunction determinations based primarily on the patent owner’s identity. Those who manufacture products continued to get injunctions, while those who chose to license their patents instead, no longer did."

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, May 21, 2020

Federal Circuit - Uniloc v. LG - Software Claims Not Patent Ineligible

In Uniloc v. LG, the Federal Circuit held the claims were not patent ineligible under 35 U.S.C. § 101.

As background, Uniloc sued LG for infringement of U.S. Patent No. 6,993,049 ('the 049 patent) and LG moved to dismiss the complaint under FRCP 12(b)(6) arguing the claims of the '049 patent are ineligible under 35 U.S.C. § 101.

Section 101 provides that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may obtain a patent, but the Supreme Court has held that "abstract ideas are not patent eligible." Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).

In Alice, the Supreme Court stated two-steps for determining patent eligibility. A court: (1) determines whether the claims are directed to an abstract idea; and (2) if so, considers the claim elements individually and as an ordered combination to determine whether the additional elements transform the claim into a patent-eligible application.

In cases relating to software, step one often turns on whether the claims focus on specific improvements in computer or network capabilities or instead focus on a process or system that is an abstract idea for which computers are invoked merely as a tool.

The Federal Circuit reminded it has "routinely held software claims patent eligible under Alice step one when directed to improvements in the functioning of computers or network platforms itself."  The Federal Circuit then buttressed this statement by summarizing some of its patent eligibility decisions: DDR Holdings v. Hotels.com, Enfish v. Microsoft, Visual Memory v. NVIDIA, Ancora v. HTC, Data Engine v. Google, Core Wireless v. LG.

The Federal Circuit then held the claims are directed to a patent-eligible improvement to computer functionality, namely the reduction of latency experience in parked secondary stations in communications systems.

The Federal Circuit explained:

"The claims at issue do not merely recite generalized steps to be performed on a computer using conventional computer activity. Instead, they are directed to 'adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station.' See, e.g., ’049 patent at Claim 2. And this change in the manner of transmitting data results in reduced response time by peripheral devices which are part of the claimed system.

As the patent explains, for secondary stations joining a piconet in the prior art systems, “it could take half a minute or more from the time a user moves a mouse to a cursor moving on a screen.” Id. at 2:10–12. Because polling was “suspended during this cycle, for up to 10.24 seconds at a time,” parked secondary stations in prior art systems could experience similar delays after each period of inactivity. Id. at 2:13–16. The claimed addition of a data field for polling to the inquiry message significantly reduces the response time, enabling secondary stations to respond a fraction of a second later. See, e.g., ’049 patent at 5:36–41. Even LG concedes that this reduction in latency 'is the very reason for polling during the inquiry process in the first place.' Appellees’ Br. 54 (citing, e.g., J.A. 1375–77, 1394). To the extent LG argues that the claims themselves must expressly mention the reduced latency achieved by the claimed system, LG is in error.

Claims need not articulate the advantages of the claimed combinations to be eligible. We conclude that the claims at issue are not directed to the abstract idea of performing additional polling in wireless communication systems or performing additional polling using inquiry messages. These claims are directed to a specific asserted improvement to the functionality of the communication system itself.

The claimed invention’s compatibility with conventional communication systems does not render it abstract. Nor does the fact that the improvement is not defined by reference to “physical” components."

As a patent attorney, Uniloc and its predecessors define a significant patent eligibility space for claims directed to "computer and network specific improvements."

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, April 30, 2020

Supreme Court - Thyrv, Inc. v. Click-to-Call Technologies, LP - No Appeal from PTAB's One Year Time Bar Decision on IPR

In Thyrv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that a Patent Trial and Appeal Board (PTAB) determination on whether a petition is filed timely for inter partes review (IPR) is not appealable.

As background, an IPR permits a petitioner to request the review the validity of claims in view of written prior art. To institute the review, PTAB must find that the petitioner is likely to succeed with respect to at least one claim and the petition was timely filed (within one year of service of an infringement complaint).

In other words, the Supreme Court states 35 USC § 314(a) permits the patent owner no appeal to the Federal Circuit from an incorrect PTAB decision that a petition was timely filed as required in 35 USC § 315(b). Note in this case the infringement complaint (dismissed without prejudice) was filed 12 years before the IPR petition!

Thus, a patent owner must make every effort to win on the merits of the institution decision and the untimeliness of the petition before PTAB. On the other hand, if the IPR is instituted, the patent owner can still appeal a final decision of invalidity to the Federal Circuit.

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, April 29, 2020

Federal Circuit - Hologic v. Minerva Surgical - Assignor Estoppel Does not Bar PTAB Invalidity Decision

In Hologic v. Minerva Surgical, the Federal Circuit held assignor estoppel barred the assignor from asserting invalidity of a patent in district court, but not the assignor relying on the Federal Circuit's affirmance of PTAB invalidating claims of another patent in an inter partes review (IPR).

See further details in the opinion. One detail caught my eye as a patent attorney, Judge Stoll questioning if it is time to revisit assignor estoppel en banc (entire panel) on the construction of the America Invents Act (AIA) due to the illogical regime being perpetuated.

In the opinion on page 30:

"In Arista, we held that the judge-made doctrine of assignor estoppel does not apply in the context of an inter partes review. In other words, an assignor who sold his patent rights may file a petition for IPR challenging the validity of that patent. Arista Networks, Inc. v. Cisco System, Inc. At the same time, we continue to bar assignors from challenging in district court the validity of the patents they assigned. See, e.g., Mentor Graphics Corp.v. EVE-USA, Inc. 

Our precedent thus presents an odd situation where an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office, but cannot do the same in district court. Do the principles underlying assignor estoppel—unfairness in allowing one
who profited from the sale of the patent to attack it—apply in district court but not in Patent Office proceedings?

Should we change the application of the doctrine in district court, or should we revisit our construction of the America Invents Act and reevaluate our interpretation of the statute as prohibiting the doctrine of assignor estoppel? Given the odd circumstance created in this case, I suggest that it is time for this court to consider en banc the doctrine of assignor estoppel as it applies both in district court and in the Patent Office.

We should seek to clarify this odd and seemingly illogical regime in which an assignor cannot present any invalidity defenses in district court but can present a limited set of invalidity grounds in an IPR proceeding. A petitioner in an IPR proceeding may request to cancel as unpatentable one or more claims of a patent, but “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b)."

Copyright © 2020 Robert Moll. All rights reserved.

Friday, April 24, 2020

USPTO - Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International

The USPTO published a report: Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International. Here's a link to the Supreme Court's Alice v. CLS Bank decision.

The report indicates that the USPTO has taken measures (e.g., January 2019 Revised Patent Subject Matter Eligibility Guidance, "2019 Guidance") to increase the predictability of determinations of patent eligibility. For example, one year after the 2019 Guidance based on the Federal Circuit's Berkheimer v. HP decision, the likelihood of Alice-affected technologies receiving a first office action with a rejection for patent-ineligible subject matter had decreased by 25%.

This should encourage innovators with software related inventions to consider patenting.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, April 20, 2020

USPTO - Patent Center Beta Available

Today, the USPTO announced:

"Patent Center Beta is now available for all users. Patent Center is a new tool for electronic filing and management of patent applications in a single unified interface.

Patent Center and DOCX filing features:
Single unified interface for patent applicants
Use of existing USPTO.gov accounts and sponsorships
Submission of the specification, claims, and abstract in a single DOCX document without the need to manually separate sections
Elimination of user conversion from DOCX into a PDF for filing
Security of documents through automatic DOCX metadata detection and scrubbing
Practice filing in DOCX format in Patent Center training mode

Electronic filing provides multiple benefits, such as immediate routing of documents to USPTO internal systems, an acknowledgement receipt to show that the USPTO has received the submission, reduced manual processing and paper waste, elimination of wait times associated with conventional mailing, and the ability to save your submission package to complete, review, or submit at a later time.

We encourage you to provide feedback on Patent Center Beta by visiting the eMod IdeaScale. Additionally, you can send questions and comments to eMod@uspto.gov.

More information about Patent Center Beta is available on the Patent Center information page or you can register for an upcoming Patent Center Beta and DOCX training session.

For technical questions or assistance, please contact the Patent Electronic Business Center at ebc@uspto.gov or 866-217-9197."

Note this announcement arrived after all but April 21 and 23 USPTO training sessions had occurred. Also the USPTO plans to charge a $400 fee for non-DOCX applications. As a patent attorney, I think the USPTO has not shown any user benefit in filing an application in DOCX rather than PDF other than avoiding a fee. And early feedback from users is not favorable. Further electronic filing over paper is a red herring as both PDF and DOCX are electronic filing.

On April 27, the USPTO added training session dates but must register to attend:

  • April 30: 1-2 pm ET
  • May 4: 10:30-11:30 am ET
  • May 6: 2-3 pm ET

Copyright © 2020 Robert Moll. All rights reserved.

Friday, April 17, 2020

Federal Circuit - CardioNet, LLC v. InfoBionic, Inc. - Reversal of Patent Ineligibility of Cardiac Monitoring Technology

In CardioNet, LLC v. InfoBionic, Inc., the Federal Circuit reversed a district court decision that held CardioNet’s U.S. Patent No. 7,941,207 (the '207 patent) patent ineligible under 35 U.S.C. § 101 and CardioNet had filed a complaint that failed to state a claim under Federal Rule of Civil Procedure 12(b)(6).

The Federal Circuit concluded the claim 1 and other asserted claims of the ’207 patent related to a patent-eligible improvement to cardiac monitoring technology rather than an abstract idea, and reversed and remanded the case to the district court for further proceedings.

Claim 1 includes broad language that may be subject patent eligibility challenges reciting:

A device, comprising:
    a beat detector to identify a beat-to-beat timing of cardiac activity;
    a ventricular beat detector to identify ventricular beats in the cardiac activity;
    variability determination logic to determine a variability in the beat-to-beat timing of a collection of beats;
    relevance determination logic to identify a relevance of the variability in the beat-to-beat timing to at least one of atrial fibrillation and atrial flutter; and
    an event generator to generate an event when the variability in the beat-to-beat timing is identified as relevant to the at least one of atrial fibrillation and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector.

However, the Federal Circuit stated: "the language of claim 1 indicates that it is directed to a device that detects beat-to-beat timing of cardiac activity, detects premature ventricular beats, and determines the relevance of the beat-to-beat timing to atrial fibrillation or atrial flutter, taking into account the variability in the beat-to-beat timing caused by premature ventricular beats identified by the device’s ventricular beat detector. In our view, the claims 'focus on a specific means or method that improves' cardiac monitoring technology; they are not 'directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.'"

The patent owner's favorable outcome appears to be based on facts indicating the patent claims related to a technological improvement in cardiac monitoring rather than merely implementing known systems and techniques on a computer. The concurrence brought up the problem of determining whether an invention is long standing (conventional) without reference to prior art in step one of Alice v. CLS Bank.

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, March 26, 2020

USPTO - Filing Patent Documents

The USPTO strongly encourages customers to file via EFS-Web:

"EFS-Web for Registered eFilers - Enhanced filing of new patent applications, follow-on submissions, saved submissions, and more.

EFS-Web for Unregistered eFilers - Basic initial filing of new patent applications. Note: Unregistered eFilers are not permitted to file follow-on submissions/fees in EFS-Web. Unregistered eFilers are advised to pay fees online as part of the initial application submission or use an alternative filing method to pay fees, such as including a deposit account authorization with the application papers or mailing the payment using the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 CFR 1.10.

If you have questions about filing via EFS-Web, please contact the Patent Electronic Business Center (EBC) at ebc@uspto.gov or (866) 217-9197."

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, March 18, 2020

USPTO - Artificial Intelligence (AI) Web Page

Today, the USPTO posted a web page for artificial intelligence (AI) information.

The web page includes AI initiatives, public notices and responses, AI-related events, and resources and nearly 200 responses from companies, law firms, and individuals to Requests for Comment on AI (See Request for Comments on Patenting Artificial Intelligence Inventions: 84 FR 44889 and Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation: 84 FR 58141).

Copyright © 2020 Robert Moll. All rights reserved.

Friday, March 13, 2020

Bloomberg Law - $1.1 Billion CalTech Infringement Win Shows Patent Board Perils

Bloomberg Law's article $1.1 Billion CalTech Infringement Win Shows Patent Board Perils reminds inter partes review (IPR) cannot be a reflexive choice to a patent infringement suit.

Specifically, if an IPR petition fails before Patent Trial and Appeal Board (PTAB), a court may estop the petitioner from challenging the patent validity on same grounds or grounds that could have been reasonably raised. Apple is expected to appeal to the Federal Circuit.

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, March 5, 2020

PTAB - Trial Statistics - Brief Comment

The PTAB Trial Statistics 2020 is worth a quick review. It is interesting to see that institution rates of inter partes review (IPR) have steadily decreased from 87% in fiscal year (FY) 2013 to 56% in FY 2020. I am surprised how steady the decrease and that covered business methods and post grant review has not taken off since passage of AIA. Yet some advocates (pro-patent or anti-patent) have not acknowledged why these patent invalidity strategies are becoming less attractive.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, February 24, 2020

Intellectual Asset Management (IAM) - Post Issuance PTAB Proceedings and IPR Petitions Filed Decrease from 2018 to 2019

Intellectual Asset Management (IAM) notes the sharp decrease in petitions filed for inter partes review (IPR):

"One of the standout US patent trends from last year, at least in terms of disputes, was the drop in new petition filings at the Patent Trial and Appeal Board (PTAB). Overall, according to Lex Machina, the number of post-issuance proceedings fell from 1,720 to 1,322, with the number of new inter partes reviews decreasing to 1,271 from 1,608 in 2018."

Note complaints filed for patent infringement in 2019 remained mostly steady, so the drop in IPRs filed may be due to the effectiveness of asserting patent ineligibility under 35 USC § 101, which cannot be raised as a ground of invalidity in an IPR.

In addition, IPRs filed in parallel with patent litigation may have decreased due to the Supreme Court's SAS decision which required PTAB to stop its partial institution practice. After SAS, PTAB was required to consider all grounds of invalidity in an IPR. If the IPR was not instituted, the patent owner was sure to inform a jury of that failure to prove invalidity. And if the IPR was instituted, and PTAB upheld validity of any patent claim, again jury heard it and the real party in interest would be estopped from raising the same grounds or grounds that could have been reasonable raised again in court. Finally, the USPTO policy changes and PTAB's reduced IPR institution rates are factors.

Copyright © 2020 Robert Moll. All rights reserved.

Sunday, February 23, 2020

Federal Circuit - Arctic Cat v. Bombardier Recreational - Failure to Mark Eliminates Pre-Complaint Damage - $28M Subtracted from $46M Judgment

In Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., the Federal Circuit held that the patent owner Arctic Cat was not entitled to recover damage for Bombardier's watercraft steering control patent infringement occurring before the filing of the complaint, because Arctic Cat and its licensee failed to mark the patented product as required by 35 USC § 287.

Note this resulted in a $28 million reduction in Arctic Cat's $46 million judgment.

It should be noted marking is only required if the patent owner makes a product. It's also a patent owner rather than licensee obligation. Further, a non-practicing entity, or a patent owner asserting method claims, can be awarded damages up to six years prior to the filing of the complaint under 35 USC § 286. In this case, the Federal Circuit held no damages could be recovered for infringing products sold after the sale of unmarked products ceased and before filing of the patent infringement complaint.

Copyright © 2020 Robert Moll. All rights reserved.

Saturday, February 22, 2020

IP Watchdog - Six Years After Alice: 61.8% of U.S. Patents Issued in 2019 Were ‘Software-Related’—up 21.6% from 2018

Raymond Millien of Volvo flags the increase of US patents issuing on software-related inventions in 2019. It contradicts the conventional understanding that the Supreme Court Alice v. CLS Bank decision eliminated or has made it quite difficult to obtain software patents. Yes, business methods are difficult, but other software-related patenting has also increased in volume and importance.

For details see IP Watchdog: Six Years After Alice: 61.8% of U.S. Patents Issued in 2019 Were ‘Software-Related’—up 21.6% from 2018.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, February 17, 2020

CAFC - In re Google - Lack of Patent Venue in ED Texas

In re Google the Federal Circuit granted Google's petition for a writ of mandamus to dismiss or transfer Super Interconnect Technologies' (SIT) patent infringement suit from the ED Texas, which is perceived as a pro-patent venue.

In TC Heartland decision, the Supreme Court held a patent owner has venue where the defendant resides (state of incorporation) or where the defendant infringes and has "a regular and established place of business." 

SIT’s argument for venue was that Google servers in the district constituted "a regular and established place of business." After the venue issue arose, Google removed its servers, but continued to stream video and ads to residents in the ED Texas using third party internet service providers (ISPs) servers.

The district court denied Google's motion to transfer venue, because the servers constituted "a regular and established place of business." However, the Federal Circuit then granted Google's petition for mandamus to resolve venue due to conflicting district court decisions on what activities constituted "a regular and established place of business."

Applying In re Cray the Federal Circuit held venue was improper in ED Texas, because Google lacked employees and an agent in the district, the ISPs were not agents, and server maintenance was ancillary to Google's business. The concurrence said it agreed with the result, but end users should be also considered. Until they are, it appears servers without employee(s) or agent(s) in a district may not be sufficient to establish "a regular and established business."

Copyright © 2020 Robert Moll. All rights reserved.

Friday, January 31, 2020

Maurer & Haber - An Empirical Analysis of the Patent Troll Hypothesis: Evidence from Publicly-Traded Firms

Professors Noel Maurer & Stephen Haber wrote an interesting article: An Empirical Analysis of the Patent Troll Hypothesis: Evidence from Publicly-Traded Firms that addresses patent monetization, innovation, and patent trolls.

From the Abstract: "Do firms that earn revenues from licensing patent portfolios, rather than producing physical products—often called patent assertion entities (PAEs)—frustrate or facilitate innovation?

Using a sample of 17 years of SEC filings by all 26 publicly-traded firms that an expert (RPX Corporation) categorized as PAEs, we estimate spending on, patent acquisition, and litigation; and their revenues, rates of return, and risk-return ratios. We also estimate an upper bound of the transfer from operating companies to those 26 firms, including the cost of defending against their lawsuits.

We find that sample firms spent twice as much on R&D (as a percentage of revenues) than the average for large high technology companies. We also find that most sample firms lost money. 

Finally, we find that the magnitude of the transfer from operating companies (including legal defense costs), represents only 0.28% of the revenues of the U.S. high technology market. These findings are inconsistent with the characterization of the PAE business model in an influential policy and academic literature."
 
Copyright © 2020 Robert Moll. All rights reserved.

Thursday, January 30, 2020

OC Register - Cal Tech wins $1.1 billion patent infringement case against Apple, Broadcom

Another huge damage award for US patent infringement:

Yesterday, a jury awarded $1.1B in damages for Apple and Broadcom's infringement of Caltech's U.S. Patent Nos. 7,116,710, 7,421,032 and 7,916,781.

For details see OC Register article Cal Tech wins $1.1 billion patent infringement case against Apple, Broadcom.

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, January 15, 2020

Professor Osenga - Saving Functional Claiming: The Mismatch of § 112 Reform in the § 101 Reform Debate

Professor Osenga's article Saving Functional Claiming: The Mismatch of § 112 Reform in the § 101 Reform Debate  discusses the state of US patent law reform. It also states linking 35 USC 112 as "part" of the 35 USC 101 patent eligibility reform effort is not a good idea especially for software related inventions.

Copyright © 2020 Robert Moll. All rights reserved.

USPTO - New Toolkit for those new to PTAB Proceedings

Today, the USPTO announced a Toolkit for those new to Patent Trial and Appeal Board (PTAB) proceedings:

"We are committed to expanding resources available to individual inventors, small businesses, and those new to or with limited experience with the patenting process. As part of that effort, PTAB has prepared a New to PTAB toolkit available on the PTAB webpage of the USPTO website.

The toolkit contains a wide variety of information about the Board and its proceedings. For example, the toolkit walks through the basics of how to file an ex parte appeal to seek review of a final rejection made by an examiner. The toolkit also details the various steps involved in post-grant proceedings, such as an inter partes review, and what options the parties have at each step to make their case. Additionally, the toolkit features videos and frequently asked questions including how to prepare for and present arguments at an oral hearing. Best of all, the toolkit provides points of contact for follow-up questions.

Check out the New to PTAB toolkit today. If you have suggestions on additional resources that we can make available regarding PTAB proceedings, please email us at trials@uspto.gov."

Copyright © 2020 Robert Moll. All rights reserved.

Monday, December 30, 2019

RPX - Executive Spotlight: RPX’s Head of Analytics on the State of Patent Litigation in 2019

Mr. Brian Howard, RPX's Vice President of Analytics, published an article that indicates patent owners are seeing certain favorable changes in US patent litigation. For details see Executive Spotlight: RPX’s Head of Analytics on the State of Patent Litigation in 2019.

RPX Corporation (Rational Patent Exchange) seeks to reduce patent litigation expense by offering patent acquisition, patent intelligence and advisory services to its clients.

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, December 28, 2019

Federal Circuit - Koninklijke v. Gemalto - Reverse Grant of Motion that Claims Ineligible under 35 USC 101

In Koninklijke KPN v. Gemalto, the Federal Circuit reversed a court's dismissal of claims as patent ineligible.

KPN sued Gemalto for infringement of US Patent No. 6,212,662 (the '662 patent). Gemalto moved for judgment on the pleadings under FRCP Rule 12(c) asserting claims 1-4 were patent ineligible under 35 USC 101. The district court granted the motion concluding that claims 1-4 recited no more than mere abstract data manipulation operations ineligible under Alice v. CLS Bank and subsequent court decisions.

On appeal, KPN only challenged the district court's ineligibility decision with respect to dependent claims 2-4, which recited:

1.  A device for producing error checking based on original data provided in blocks with each block having plural bits in a particular ordered sequence, comprising:
    a generating device configured to generate check data; and
    a varying device configured to vary original data prior to supplying said original data to the generating device as varied data;
    wherein said varying device includes a per-mutating device configured to perform a permutation of bit position relative to said particular ordered sequence for at least some of the bits in each of said blocks making up said original data without reordering any blocks of original data.

2.  The device according to claim 1, wherein the varying device is further configured to modify the permutation in time.

3.  The device according to claim 2, wherein the varying is further configured to modify the per-mutation based on the original data.

4.  The device according to claim 3, wherein the permutating device includes a table in which subsequent permutations are stored.

As to the appealed claims 2-4, the Federal Circuit reversed, stating:

"Rather than being merely directed to the abstract idea of data manipulation, these claims are directed to an improved check data generating device that enables a data transmission error detection system to detect a specific type of error that prior art systems could not.

In data transmission systems, it is common to generate something called “check data” to check whether data was accurately transmitted over a communications channel. Check data is generated based on the original data and thus serves as a shorthand representation of a particular block of data. By comparing the check data generated at both ends of the communication channel, error detection systems may be able to infer whether errors occurred during transmission. For example, if the check data from both ends match, the system infers that the content of the received data block is the same as what was transmitted and thus concludes that no errors occurred during transport.

But, as the ’662 patent recognizes, matching check data is not always a reliable indicator of accurate data transmissions. According to the patent, certain generating functions coincidentally produce the same check data for a corrupted data block and an uncorrupted data block. When this happens, the check data is functionally defective, because the system will mistakenly believe that there were no errors in the data transmission. The problem of defective check data is aggravated for a particular type of persistent error, i.e., “systematic error,” that repeats across data blocks in the same way.

According to the ’662 patent, prior art error detection systems were unable to reliably detect systematic errors. Once the prior art system generated defective check data for an initial data block with a given systematic error, the system would continue to generate defective check data for subsequent data blocks with the same systematic error, thus allowing these types of errors to persist in the system.

The ’662 patent solves this problem by varying the way check data is generated by varying the permutation applied to different data blocks. Varying the permutation for each data block reduces the chances that the same systematic error will produce the same defective check data across different data blocks. Claims 2–4 thus replace the prior art check data generator with an improved, dynamic check data generator that enables increased detection of systematic errors that recur across a series of transmitted data blocks.

As with other claims we have found to be patent eligible in prior cases, the appealed claims represent a nonabstract improvement in the functionality of an existing technological process and not simply an abstract idea of manipulating data. Accordingly, we reverse the district court’s grant of Appellees’ Rule 12(c) motion that claims 2–4 are ineligible on the pleadings."

Copyright © 2019 Robert Moll. All rights reserved.

Thursday, December 26, 2019

Federal Circuit - Intellectual Ventures v. Trend Micro - Attorney Fees Awards, 35 USC § 285

In Intellectual Ventures v. Trend Micro, the Federal Circuit remanded a case to the district court to reconsider Trend Micro's attorney fees award under the proper legal standard.

Under 35 USC § 285, a court may award attorney fees to the prevailing party in "an exceptional case." An exceptional case stands out from others with respect to the (1) strength of a party’s litigating position (considering the law and facts) or (2) unreasonable manner in which the case was litigated.

Intellectual Ventures (IV) sued Trend Micro and Symantec for infringement of US patents, including US Patent No. 6,460,050, related to filtering data files (e.g., email messages).

The Symantec action proceeded first. During the claim construction and throughout pretrial IV's expert opined the "characteristic" of documents in claims should be interpreted as including "bulk email." After the court adopted the expert's opinion, the expert changed his opinion after he talked to IV's attorneys.

After the Symantec trial was complete, Trend Micro moved for clarification on claim construction and the IV attorney argued the expert's opinion had not changed. Trend Micro then moved for attorney fees due to the expert's changed opinion. The district court granted attorney fees of $444,051. It didn't appreciate the expert's last minute change and the attorney arguing nothing had changed.

The Federal Circuit vacated the attorney award stating the court must determine whether the case overall is exceptional not whether an isolated action is exceptional. Notably, the district court granted attorney fees, but conceded IV's case was not overall unreasonable. The district court relied on the circumstances surrounding the changed expert's opinion alone.

I agree that isolated mistakes must be viewed within the totality of the circumstances. Experts may change opinions and attorneys misstate their position, but the court must consider whether the overall case and manner of litigation is reasonable before granting attorney fees. Otherwise, it encourages parties to seek attorney fees for isolated acts that are "exceptional" with respect to the overall case.

Copyright © 2019 Robert Moll. All rights reserved.

Friday, December 13, 2019

Supreme Court - Applicant Not Obligated to Pay USPTO under 35 USC §145

If an applicant cannot convince the USPTO (i.e., PTAB) to grant a US patent, it can appeal the adverse decision to the Federal Circuit (35 USC §141) or file a lawsuit against the USPTO director in the US district court for the Eastern District of Virginia (35 USC §145). However, because a §145 lawsuit permits discovery, experts reports, and motions, it can be very expensive for both parties.

In Peter v. NantKwest, the US Supreme Court held that an applicant is not obligated to pay the USPTO legal personnel (e.g., attorneys and paralegals) under §145.

See the opinion for all the reasons for this holding, but some of the reasons were (1) the term “expenses” alone has never authorized an award of attorney fees to overcome the American Rule (each litigant pays his own attorney fees), (2) the term “all” in §145 cannot transform “expenses” to reach an outlay it wouldn't otherwise include, and (3) Congress has distinguished “expenses” and “attorney’s fees” in the past. Finally, history didn’t seem to help the USPTO as it was the first request for attorney fees in the 170-year history of §145.

Not a case likely to reach many, but it may help applicants faced with an adverse PTAB decision when the benefit outweighs the increased cost of your attorney fees for the lawsuit over an appeal to the Federal Circuit.

Copyright © 2019 Robert Moll. All rights reserved.