Friday, November 22, 2019

PTAB - Consolidated AIA Trial Practice Guide November 2019

On November 20, 2019, the USPTO published the consolidated edition including the 2018-2019 updates and the original America Invents Act (AIA) Trial Practice Guide of 2012:
For additional information see the PTAB home page.

Copyright © 2019 Robert Moll. All rights reserved.

Friday, November 15, 2019

Supreme Court - Google v. Oracle - Copyright & Fair Use API

Today, the US Supreme Court granted Google's petition to review its copyright case with Oracle involving Google’s use of Oracle's application program interface (API).

Google's petition states two issues: (1) whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

See SCOTUS blog for details.

Google used 37 API packages and 7,000 lines of code to make it easier for Java programmers to write applications for the Android operating system. Given Google's resources, maybe not the best decision given this protracted legal battle.

Many amicus briefs supporting Oracle's APIs are not copyrightable and/or Google is making fair use. On the other hand, the Federal government recommended the Supreme Court deny Google’s petition. Finally, the Federal Circuit held the APIs are copyrightable and Google use is not fair use, but the Supreme Court has a track record of not affirming the Federal Circuit. Some commentators believe this case may be heard in early 2020.

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, November 13, 2019

District Court - Jury awards $200 million in damages for Wells Fargo's US patent infringement

Here's a sizeable US patent damage award relating to mobile devices. An ED Texas court jury awarded USAA $200 million in damages after finding Wells Fargo willfully infringed its patents that allow customers to use mobile devices to photograph and deposit checks without visiting a branch.

The complaint asserted: US Patent Nos. 8,699,7799,336,5178,977,571, and 9,818,090. I haven't studied these patents, but what jumps out is the substantial disclosure of prior art.

The press release says nearly every US bank and credit union uses this technology, benefiting 87 million US consumers so USAA isn't a patent troll. See press release for details.

Of course, this case is not over yet. Wells Fargo filed petitions for inter partes review (IPR) seeking to invalidate the USAA patents in the USPTO right after the jury decision. Given the stakes, one would expect that IPRs were filed within one year of the service of the patent infringement complaint filed in June 2018. See 35 U.S.C. § 315(b).

PTAB refused to institute covered business method (CBM) which would have permitted an Alice challenge in October 2019.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, November 12, 2019

USPTO - How to use DOCX in EFS-Web and PAIR

The USPTO is hosting free public seminars on filing US patent applications in the DOCX format.

The first DOCX Information Session is 11 am - noon on Wednesday, November 13 (PST).

The USPTO says DOCX as an efficient way to file a patent application in structured text and plans to explain the DOCX format, how you can use it, and its benefits.

The USPTO says "a problem" is the abstract, specification, and claims reside in three files. PDF files can be combined in seconds (click three boxes in PAIR) so maybe a solution in search of a problem, but I will update if there is a more significant advantage to this filing format.

Please register for available dates and times.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, October 22, 2019

PTAB - Proposed Rules on Burden of Persuasion on Motions to Amend Claims

Today, the USPTO published a Notice of Proposed Rulemaking (NPRM) concerning burdens of persuasion on motions to amend claims in trials (e.g., inter partes review) before the Patent Trial and Appeal Board (PTAB).

It proposes a petitioner challenging a patent bear the burden to show unpatentability of substitute claims proposed in the motion and the patent owner bear the burden to show that a motion complies with rules and the statutory requirements. Further PTAB can determine the patentability of the substitute claims based on the record. Note this proposed rule is favorable to patent owners.

The USPTO invites public comments on the rule by December 23, 2019.

Copyright © 2019 Robert Moll. All rights reserved.

Friday, October 18, 2019

USPTO - Update on Subject Matter Eligibility - October 17, 2019

Yesterday, the USPTO published an October 2019 update to the 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) published on January 7, 2019.

The update is based on public comments on the (2019 PEG), and may be helpful for patent applicants. The USPTO explains and gives examples to respond to five major themes in the comments:

"(I) evaluating whether a claim recites a judicial exception;
(II) the groupings of abstract ideas enumerated in the 2019 PEG;
(III) evaluating whether a judicial exception is integrated into a practical application;
(IV) the prima facie case and the role of evidence with respect to eligibility rejections; and
(V) the application of the 2019 PEG in the patent examining corps."

The USPTO states the update is primarily directed to examination procedures and "all USPTO personnel are expected to follow the guidance."

Copyright © 2019 Robert Moll. All rights reserved.

Monday, September 30, 2019

PTAB - Webinar Changes to PTAB Practice and Procedures in 2019

The USPTO is holding a free webinar on changes to PTAB practice and procedure. It is scheduled from noon to 1 pm ET on October 10, 2019: 

"We will review all the improvements to ex parte appeal and AIA trial procedures that have been made over the past fiscal year. These changes include a Motion to Amend pilot program, new update to the Trial Practice Guide, establishment of a revised process to issue precedent, and release of several new informative and precedential decisions. Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Lead Judge Kal Deshpande will present during this webinar.

The webinar is free and open to all. There will be a Q&A session at the end of the presentation, so please send questions in advance or during the webinar to PTABBoardsideChat@uspto.gov.

More information, including the webinar access information, is available on the PTAB Boardside Chat webpage"

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, September 3, 2019

IP Watchdog - Alice: Benevolent Despot or Tyrant? Analyzing Five Years of Case Law Since Alice v. CLS Bank: Part I & II

Mr. Robert Sachs recently published a two-part article on IP Watchdog related to U.S. software patents before and after the U.S. Supreme Court's Alice v. CLS Bank decision. This is an interesting article which rolls out lots of data and charts. Good job by Mr. Sachs!

Part I - Alice: Benevolent Despot or Tyrant? Analyzing Five Years of Case Law Since Alice v. CLS Bank relates to litigation trends.

Part II - Alice: Benevolent Despot or Tyrant? Analyzing Five Years of Case Law Since Alice v. CLS Bank relates to how courts decide 35 U.S.C. 101 motions for different technologies.

Copyright © 2019 Robert Moll. All rights reserved.

Monday, August 26, 2019

USPTO - Federal Register Notice on Artificial Intelligence

Artificial intelligence (AI) has been around decades, but has gotten lots of recent press. Less known is the USPTO has issued several thousand patents on AI technologies.

The USPTO recognizes AI raise issues so announced it "will be publishing a notice in the Federal Register that poses questions regarding the intersection of patent law with AI that the public may respond ... to gather information on AI patent policy issues for purposes of evaluating whether further guidance is needed and informing the development of any such guidance.

Questions the public is invited to reply to include:
  • Do current patent laws and regulations regarding inventorship need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an AI invention or any other invention? 
  • Are there any patent eligibility considerations unique to AI inventions? 
  • Does AI impact the level of a person of ordinary skill in the art? 
  • Do the disclosure rules (enablement, specification, etc.) need to be altered for AI-related patent applications?"
For details: Federal Register Notice on Artificial Intelligence Patent Issues

Copyright © 2019 Robert Moll. All rights reserved.

Thursday, August 15, 2019

ED Texas - Judge Gilstrap Changes Playing Field with Patent Eligibility

Here's something to raise the expense of the patent eligibility defense.

An article in Law 360, Judge Gilstrap Changes Playing Field with Patent Eligibility (subscription required), describes an ED of Texas local rule requiring a defendant to state its factual contentions of what is "known" and "conventional" in support of any patent ineligibility defense under 35 U.S.C. 101 within 45 days of receiving the patent owner's disclosure of the asserted claims and infringement contentions.

Sure it's ED Texas local rule, and thus not governing other courts, but this rule appears to implement the CAFC's Berkheimer v. HP decision that among other things states whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. If other courts adopt this local rule, it would increase the defendant's cost of asserting the patent ineligibility defense.

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, August 10, 2019

USPTO - Foreign-domiciled Trademark Applicants and Trademark Registrants Require US Attorney

On August 3, 2019, the USPTO announced:

"If you are a foreign-domiciled trademark applicant, registrant, or party to Trademark Trial and Appeal Board proceedings, in all U.S. trademark matters you must now be represented by an attorney who is licensed to practice law in the United States. This includes Canadian applicants, registrants, and parties.

In addition to this change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are now required to confirm they are an active member in good standing of their bar and to provide their bar membership information.

Learn more about this federal trademark law change."

Copyright © 2019 Robert Moll. All rights reserved.

Monday, August 5, 2019

USPTO - Setting and Adjusting Patent Fees During Fiscal Year 2020

The USPTO proposes to increase patent fees in fiscal year 2020:

For example, the USPTO proposes (1) a practitioner fee: $240/year with continuing legal education (CLE) and $340 without CLE to defray the Office of Enrollment and Discipline's costs; (2) an increase of the maintenance and surcharge fees; and (3) an increase in inter partes review (IPR) petition and post institution fees to cover the work of ruling on the validity of each challenged claim as required by the US Supreme Court's holding in SAS Institute Inc. v. Iancu.

See Setting and Adjusting Patent Fees During Fiscal Year 2020 for the USPTO presentation why many patent fees need to increase. Note some of the same IPR fees increased in January 2019.

The public has 56 days to comment on the fee proposal.

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, July 31, 2019

USPTO - Webinar on Updated AIA Trial Practice Guide

The USPTO's webinar on the updated AIA Trial Practice Guide is 9-10 am PT on August 8.

Here's the topics: (1) when additional discovery is granted; (2) Phillips claim construction; (3) testimonial evidence for a patent owner's preliminary response; (4) information to provide if multiple petitions are filed about same time; (5) motions to amend; (6) determining whether to grant a motion for joinder; (7) procedures when a case is remanded; and (8) procedures for requests for modifications to a default protective order.

Send questions before and during webinar: PTABBoardsideChat@uspto.gov.

The webinar access information: PTAB webinars.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, July 23, 2019

USPTO - Trial Statistics IPR, PGR, CBM, Patent Trial and Appeal Board June 2019

The USPTO Trial Statistics IPR, PGR, CBM, Patent Trial and Appeal Board June 2019 gives a quick view of what's happening with validity challenges in the USPTO.

From October 1, 2012 to June 30, 2019:
  • 93% petitions were filed for inter partes review (IPR), 5% for covered business methods (CBM), and 2% for post grant review (PGR) 
  • Overall institution rates have decreased from 87% to 62%
  • Institution rates for all technologies are about 60-70% except design at 40% 
  • Technologies lacked granularity (e.g., business methods and mechanical clumped together)
  • Electrical engineering & software patents are frequent targets for petitioners 
  • Pre-Institution settlements rose from 9% to 18%
  • Post-institution settlements fell from 90% to 28%
  • Status of Petitions for instituted claims: no claims unpatentable 19%, some claims unpatentable 18%, and all claims unpatentable 63%  
The relative low cost of USPTO Trials compared to seeking declaratory relief in court, and the high institution and invalidity rates explain why defendants file petitions with a request to stay any pending court proceedings.

Copyright © 2019 Robert Moll. All rights reserved.

Thursday, July 18, 2019

USPTO - AIA Trial Guide Updated in July 2019

The USPTO updated the America Invents Act (AIA) Trial Practice Guide (TPG) for attorneys practicing before the Patent Trial and Appeal Board (PTAB).

The updates include guidance on:
  • "Factors that may be considered by the Board in determining when additional discovery will be granted 
  • The revised claim construction standard to be used in IPR, PGR, and CBM proceedings 
  • The submission of testimonial evidence with a patent owner preliminary response 
  • Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent
  • Motion to amend practice
  • Factors that may be considered by the Board in determining whether to grant a motion
  • Procedures to be followed when a case is remanded
  • Procedures for parties to request modifications to the default protective order"
Also see the AIA Trial Practice Web page.

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, July 3, 2019

IP Watchdog - As Congress Contemplates Curbing Alice, More Than 60% of Issued U.S. Patents are Software Related - Brief Comment

Congress needs to pass predictable patent eligibility law for software related inventions, but not at all sure this will happen in 2019.

Patent eligibility is too unpredictable since the U.S. Supreme Court's Alice decision. Sure, some software inventions don't deserve a U.S. patent as the claims lack novelty or would have been obvious, but once we step away from a prior art analysis under 35 U.S.C. 102/103 and clarity, enablement and written description requirements of 35 U.S.C. 112, decision-makers (i.e., judges and examiners) have opportunity to abstract (generalize) a patent claim based on subjective opinion then assert without evidence the rest the claim language isn't significantly more.

We also need clarity on patent eligibility for the sake of industries that are not part of the traditional software industry. For example, Raymond Millien's As Congress Contemplates Curbing Alice, More Than 60% of Issued U.S. Patents are Software Related and McKinsey's Ondrej Burkacky's Rethinking car software and electronics note the growing importance of software in the car industry. Could it be true that a car contains 150 million lines of code?

Should the United States let more than half the U.S. patent filings which related to software languish under the unpredictable patent eligibility Alice test? Arguing Alice is not all that bad and consistent with centuries of court precedent or that we now have a Chinese foreign patent troll problem are the latest shaky excuses. See e.g., career patent litigator John Vandenberg's hearing testimony.

Congress has not acted on this issue for five years since the Alice decision. As Justin Bieber might say: "What up Congress?" Unfortunately, the 35 U.S.C. 101 reform bill is tied to a proposal to modify 35 U.S.C. 112(f) that is likely to increase means-plus-function treatment of functional elements in claims.

Copyright © 2019 Robert Moll. All rights reserved.

Monday, July 1, 2019

PTAB - Four More Informative Decisions applying the 2019 Patent Eligibility Guidelines Pertaining to 35 USC 101

Today, the USPTO designated four more decisions informative in applying Revised Patent Subject Matter Eligibility Guidelines (2019).

As stated in the USPTO press release today:

"Ex Parte Olson, Appeal 2017-006489 (PTAB Mar. 25, 2019)
The claims at issue recite a method of registering a catheter navigation system to a three-dimensional image. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.

Ex Parte Kimizuka, Appeal 2018-001081 (PTAB May 15, 2019)
The claims at issue recite a method for fitting a golf club. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mental process, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.

Ex Parte Savescu, Appeal 2018-003174 (PTAB Apr. 1, 2019)
The claims at issue recite a method for creating a life cycle workflow for a project. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a method of organizing human activity, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.

Ex Parte Fautz, Appeal 2019-000106 (PTAB May 15, 2019)
The claims at issue recite a magnetic resonance tomography apparatus. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.

These informative decisions can be found on the PTAB’s Precedential and Informative Decisions page of the USPTO website."

Copyright © 2019 Robert Moll. All rights reserved.

Thursday, June 13, 2019

Big Data - Floodgates opened? Follow-up on the 2019 Subject Matter Eligibility Guidance

Chad Gilles of Big Data published an interesting article showing a significant increase in allowance of inventions impacted by the Alice decision in last six months: Floodgates opened? Follow-up on the 2019 Subject Matter Eligibility Guidance. Mr. Gilles says it relates to the USPTO Guidelines on patent eligibility released earlier this year.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, June 11, 2019

Supreme Court - Federal Government Can't Challenge Patent Validity in US Patent Office

In Return Mail v. U.S. Postal Service, the Supreme Court held the Federal Government cannot file petitions for inter partes review, post grant review, and covered business methods at the Patent Trial & Appeal Board (PTAB) under the American Invents Acts because the AIA statute does not define the term "person," a presumption arises a federal agency is not a "person" and the U.S. Postal Service failed to rebut that presumption.

Justice Breyer, joined by justices Ginsberg and Kagan, unsuccessfully argued legislative history, among other things, demonstrated Congress intends "person" to include Federal Agencies.

Due to the low volume of Government petitions for AIA trials (less than 20 petitions in 8 years) I don't expect this decision to impact many in the future, but it is favorable to patent owners given the invalidation risk at PTAB.

Copyright © 2019 Robert Moll. All rights reserved.

Monday, June 10, 2019

USPTO - Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112

The USPTO has a free webinar 12-1 PM ET, Tuesday, June 11: Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112.

The USPTO will discuss examination of computer-implemented functional claim limitations under 35 U.S.C. § 112(f) (the step or means plus function clause) and 35 U.S.C. § 112(a) (the enablement and written description clause).

The USPTO requests questions be sent to patentquality@uspto.gov.

Registration is not necessary to attend. More information is available on the USPTO's event page.

Interesting in view of Congress' proposal to revise 35 U.S.C. § 112.

Copyright © 2019 Robert Moll. All rights reserved.

Monday, May 27, 2019

Congress - Draft Bill for Revising 35 U.S.C. § 101, Patent Eligibility and 35 U.S.C. § 112(f)

The Congressional Senate and House Intellectual Property Subcommittees released a draft bill for revisions to 35 U.S.C. § 101 and 35 U.S.C. § 112(f) "to solicit feedback" and discuss in hearings.

The draft bill for revised 35 U.S.C. § 101:

(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.

Section 100 (Definitions):

(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.

The draft bill for revised 35 U.S.C. § 112(f):

(f) Functional Claim Elements Element in Claim for a Combination— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The proposal also suggests further language be added to construe the statute “in favor of eligibility” and to expressly eliminate the non-statutory exceptions to eligibility.

For details - Senator Tillis et al. Press Release.

If Congress passes this proposed revision to 35 U.S.C. § 101, it may prove favorable to the current problem of novelty issues being analyzed without reference to specific prior art in determining patent eligibility, while the proposed revision to 35 U.S.C. § 112 may prove favorable to defendants seeking to significantly narrow claims by invoking Section 112 treatment whenever the claim recites a function without reference to structure.

Copyright © 2019 Robert Moll. All rights reserved.

Friday, April 26, 2019

RPX - Patent Litigation and Marketplace Report - Public Excerpt

RPX's Patent Litigation and Marketplace Report - Public Excerpt (March 2019) tells us "the pendulum" is swinging back in favor of patent owners:

"The US patent system is often described as a pendulum, swinging between periods of change favoring first patent owners and then defendants. Just a few years ago, that arc bent toward defendants, as reforms implemented by the America Invents Act (AIA) and judicial decisions like Alice made it easier for companies to defend against patent suits and pushed patent prices down. However, there are now clear signs that the pendulum is swinging back ...."

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, April 24, 2019

Engadget - Amazon tries hiring lawyers for sellers claiming patent infringement - And it only costs $4,000

In Amazon tries hiring lawyers for sellers claiming patent infringement, Engadget reports Amazon has figured out how to deal with patent infringement.

In short, patent owner pays $4,000 fee to have case heard by a neutral. If defendant doesn't pay $4,000 fee to enable a rebuttal, the patent owner gets fee back and defendant's product is removed from Amazon. If both parties pay their fees, the neutral evaluates the merits and rules: a winning patent owner gets $4,000 fee back and an injunction, and a losing defendant's $4,000 fee pays the neutral for evaluation. A losing patent owner's $4,000 fee is used to pay for the neutral evaluation, the defendant gets $4,000 fee back and the accused product stays on Amazon.

Liked the article but appears short on basic details. For example, can an accused infringer go to district court to seek reversal of a "bad decision" by an Amazon neutral? Another question, can a winning US patent owner get an injunction against foreign sales?

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, March 30, 2019

CAFC - SRI v. Cisco - Patent Eligible under 35 USC 101

In SRI International v. Cisco Systems, the Federal Circuit recently held U.S. Patent No. 6,711,615 (the '615 patent) and U.S. Patent No. 6,484,203 (the '203 patent) relating to computer network security patent eligible under 35 U.S.C. § 101.

The '615 patent abstract: "A method of network surveillance includes receiving network packets handled by a network entity and building at least one long-term and a least one short-term statistical profile from a measure of the network packets that monitors data transfers, errors, or network connections. A comparison of the statistical profiles is used to determine whether the difference between the statistical profiles indicates suspicious network activity."

The '203 patent abstract: "A computer-automated method of hierarchical event monitoring and analysis within an enterprise network including deploying network monitors in the enterprise network, detecting, by the network monitors, suspicious network activity based on analysis of network traffic data selected from the following categories: {network packet data transfer commands, network packet data transfer errors, network packet data volume, network connection requests, network connection denials, error codes included in a network packet}, generating, by the monitors, reports of the suspicious activity, and automatically receiving and integrating the reports of suspicious activity, by one or more hierarchical monitors."

The Federal Circuit explained its decision that the claims were patent eligible:

"To determine whether a patent claims ineligible subject matter, the Supreme Court has established a two-step framework.

"First, we must determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).

Second, if the claims are directed to an abstract idea, we must “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79). To transform an abstract idea into a patent-eligible application, the claims must do “more than simply stat[e] the abstract idea while adding the words ‘apply it.’” Id. at 221 (quoting Mayo, 566 U.S.
at 72.

We resolve the eligibility issue at Alice step one and conclude that claim 1 is not directed to an abstract idea. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).

The district court concluded that the claims are more complex than merely reciting the performance of a known business practice on the Internet and are better understood as being necessarily rooted in computer technology in order to solve a specific problem in the realm of computer networks. Summary Judgment Op., 179 F. Supp. 3d at 353–54 (citing ’203 patent col. 1 ll. 37–40; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). We agree.

The claims are directed to using a specific technique—using a plurality of network monitors that each analyze specific types of data on the network and integrating reports from the monitors—to solve a technological problem arising in computer networks: identifying hackers or potential intruders into the network."

Copyright © 2019 Robert Moll. All rights reserved.