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) surprisingly notes: "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."

Copyright © 2020 Robert Moll. All rights reserved.

Sunday, February 23, 2020

Federal Circuit - Arctic Cat v. Bombardier Recreational - Patent Owner and Licensees Failure to Mark Product Eliminates Pre-Complaint Damage

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. Thus, 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.

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 Ventures flags the increase of US patents issuing on software-related inventions in 2019. It contradicts the assertion that the Supreme Court Alice v. CLS Bank decision eliminated or made it quite difficult to obtain software patents.

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.  

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.