Tuesday, July 7, 2020

USPTO - Fast-Track Appeals Pilot Program - Decision within Six Months?

The USPTO announced a program to expedite decision for patent applications on appeal.

From the Federal Register:

"The United States Patent and Trademark Office (USPTO) is initiating the Fast-Track Appeals Pilot Program to provide for the advancement of applications out of turn in ex parte appeals before the Patent Trial and Appeal Board (PTAB). An appellant who has filed an ex parte appeal and received a notice that the appeal has been docketed may file a petition, accompanied by a petition fee, to expedite the review of his or her appeal. The Fast-Track Appeals Pilot Program sets a target of reaching a decision on the ex parte appeal within six months from the date an appeal is entered into the Pilot Program."

"The Fast-Track Appeals Pilot Program is offered on a temporary basis, and petitions to request inclusion of an ex parte appeal in the Pilot Program will be accepted until 500 appeals have been accorded fast-track status under the program, or until July 2, 2021, whichever occurs earlier. The USPTO may extend the Fast-Track Appeals Pilot Program (with or without modification) on either a temporary or a permanent basis, or may discontinue the program for either insufficient usage or after July 2, 2021."

For more details see the Federal Register Notice.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, July 6, 2020

Federal Circuit - Extensive Revisions to Rules and Forms

The Federal Circuit published Revisions to the Rules of Practice and the filing forms that must be respectively followed and used for cases pending on or after July 1, 2020.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, June 30, 2020

USPTO - Manual of Patent Examining Procedure (MPEP) Revised

Today, the USPTO announced:

"The ninth edition of the Manual of Patent Examining Procedure was revised to include updated information on patent examination policy and procedure related to a number of issues, including subject matter eligibility and examination of computer-implemented functional claim limitations.

The June 2020 revision updates sections of chapters 100-1000, 1200-1500, and 1700-2800. The updated sections have a revision indicator of [R-10.2019], meaning these sections have been updated to reflect USPTO patent practice and relevant case law as of October 31, 2019. In addition, the June 2020 revision updates Chapter FPC - Form Paragraphs Consolidated, the Foreword, the Introduction, the Subject Matter Index, and all Appendices, except Appendix I and Appendix P."

See Details at the MPEP page of the USPTO website.

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, June 25, 2020

Federal Circuit - Facebook v. Windy City Innovations LLC - No Same-Party Joinder In Inter Partes Review

In Facebook v. Windy City Innovations LLC, the Federal Circuit held that 35 U.S.C. § 315(c) does not authorize same-party joinder, and does not authorize joinder of new issues (e.g., for cancellation), including issues that would otherwise be time-barred under 35 U.S.C. § 315(b) from inter partes review (IPR).

Unless Federal courts require infringement contentions well within one year of the service of an infringement complaint, this seems to increase legal fees for effective IPR petitions and increase the value of US patents with diverse claims.

See Bloomberg Law Patent Challengers Reassess Strategies After Ruling Bars Tactic.

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, June 17, 2020

Federal Circuit - Anneal v Almirall - Reverses Attorney Fee Award for Work on Inter Partes Review

In Anneal v Almirall, the Federal Circuit held that a court cannot award attorney fees under 35 U.S.C. § 285 for work incurred on an inter partes review (IPR) and on appeal from IPR decision, because 35 U.S.C. § 285 is limited to "judicial proceedings."

Copyright © 2020 Robert Moll. All rights reserved.

Saturday, June 13, 2020

N.D. Cal. - Google Countersues Sonos for Infringement of Five US Patents

On June 11, Google countersued Sonos for infringement of US patents related to mesh networks, echo cancellation, digital rights management, content notification and search:
  • 7,899,187 Domain-based digital-rights management system with easy and secure device enrollment 
  • 8,583,489 Generating a media content availability notification
  • 10,140,375 Personalized network searching
  • 7,065,206 Method and apparatus for adaptive echo and noise control
  • 10,229,586 Relaying communications in a wireless sensor system
See Patently Apple article: The Sonos vs. Google Court Battle has Escalated with Google filing a Countersuit yesterday in a California Court

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, June 9, 2020

Federal Circuit - Munchkin v. Luv n’ Care - Reverses Attorney Fee Award

In Munchkin, Inc. v. Luv n’ Care Ltd. the Federal Circuit reversed a district court's award of attorney’s fees to defendant Luv n’ Care, because the court had abused its discretion in determining the case "exceptional."

The Federal Circuit noted Munchkin's attorney fee motion failed to present facts and the analysis required to establish "Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional."

See 35 U.S.C. § 285 and 15 U.S.C.§ 1117(a) which require an "exceptional case" to award attorney fees to a prevailing party in patent and trademark cases.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, June 1, 2020

USPTO - Patents 4 Partnerships - A New IP Marketplace

On May 4, the USPTO launched an intellectual property (IP) marketplace Patents 4 Partnerships. Initially, the marketplace will focus on patents and applications related to the COVID-19 pandemic.

Privately run IP marketplaces have been not been very successful, but the USPTO doesn't take a commission so this would reduce transaction costs (e.g., broker's fee 30%) . Further, the USPTO, unlike a private marketplace, may have more time to grow the IP listings to attract buyers/licensees.

For details see Anthony Trippe's Forbes article: Companies Miss Out On Billions In Value, New Patent Marketplace Could Change That.

Copyright © 2020 Robert Moll. All rights reserved.

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 for those that need an introduction or review of US patent law. I like the Kindle version so its on several devices, but if you like things in paper here's the link. To get a Kindle version just click on the e-textbook 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.