Tuesday, June 24, 2014

USPTO to Host Software Partnership Meeting

The United States Patent and Trademark Office (USPTO) will host its next Software Partnership meeting Tuesday, July 22, 2014. The public is invited to attend. Software Partnership meetings are an opportunity to bring stakeholders together to share ideas, experiences, and insights and to provide a forum for an informal discussion of many topics specific to the software community.

The meeting will be at the USPTO in Alexandria, Virginia, from 1:00 pm – 4:30 pm.

As stated in the USPTO press release:

On June 4, 2013, the White House issued five executive actions designed to reduce abusive litigation and level the playing field for innovators. The second of the five executive actions focuses on clarity in patent claims and functional claiming in patents. The meeting on July 22 will feature a focused discussion on claim clarity and functional language. In particular, USPTO officials at the meeting will present details of four examiner training modules on functional language, discussed below, that were delivered this past year, and will provide an opportunity for an interactive discussion on the goals and effectiveness of the training.  A stakeholder presentation on claim clarity will follow. The public will have an opportunity to provide input on the training and ask questions regarding claim clarity. Public attendees are invited to provide individual input on these topics and additional ideas during the interactive discussion portion of the meeting.

The training modules that will be discussed cover the basics of interpreting functional limitations under 35 U.S.C. § 112(f) (so-called “means-plus-function” claim limitations), including identifying when § 112(f) is or is not invoked, establishing the broadest reasonable interpretation of the limitation, and determining whether a § 112(f) limitation, especially a software-related limitation, has definite boundaries. The training also provides tools for examiners to clarify the prosecution record and thereby positively affect the clarity of the claims. The training that will be the focus of the Software Partnership Meeting discussion is publicly available on USPTO’s website at the Examiner Guidance and Training Materials webpage. In addition to a detailed discussion of the USPTO’s efforts on executive action #2 on claim clarity and functional claiming, the USPTO will also provide updates on the other executive actions.

Media is welcome to attend the event. Others must submit a request to attend, as space is limited. The event will be available for viewing via WebEx. For more information and to register by email, visit the event page on the USPTO website."

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, June 19, 2014

USPTO - Request for Comments on Virtual Marking

On June 16, 2014, the USPTO published a notice seeking public comments on virtually marking.

The America Invents Act (AIA) provides for virtual marking as an alternative to physically marking to give notice to the public that a product is subject to patent protection.

As stated in the notice:

"United States patent law provides that marking a product with a patent number gives the public notice of a patent. Under 35 U.S.C. 287(a), if a patented product is not marked with the patent number by the patent owner, damages for infringement will be limited to the time period after the patent owner gives actual notice to an alleged infringer.

Section 16 of the AIA provides a new way to comply with the requirements for patent marking by allowing patentees to mark their products virtually rather than physically. Instead of printing the actual patent number on the product, businesses can display the term “patent” or “pat.” along with an accompanying URL address of a Web site where the actual patent number will be located.

Section 16 of the AIA also requires the Director of the USPTO to prepare a report for Congress analyzing:

(A) The effectiveness of “virtual marking” as an alternative to the physical marking of articles;

(B) whether such virtual marking has limited or improved the ability of the general public to access information about patents;

(C) the legal issues, if any, that arise from such virtual marking; and

(D) the deficiencies, if any, of such virtual marking.

The report is due to Congress not later than three years after the date of enactment of the AIA, which is September 16, 2014.

Interested members of the public are invited to submit written comments they deem relevant to the above-mentioned issues. The USPTO would particularly welcome observations and comments on any of the following topics:
1. Experiences with creating and maintaining adequate and effective virtual marking Web sites;
2. effectiveness of virtual marking, including experiences using virtual marking Web sites to locate relevant patent information;
3. challenges presented by virtual marking in providing sufficient notice to the public, including sufficiently associating patent numbers with the corresponding product within the virtual marking Web site;
4. economic impacts of virtual marking, including costs differences between physical marking and virtual marking;
5. advantages and disadvantages of virtual marking in comparison with physical marking;
6. identification of other practical or legal concerns with virtual marking; and
7. any other issues or experiences regarding virtual marking.

Commenters are requested to include information identifying how they are impacted by virtual marking, e.g., whether they are patent owners, licensees, or any other type of user, business, or manufacturer."

Copyright © 2014 Robert Moll. All rights reserved.

Friday, June 13, 2014

Elon Musk - All Our Patents Are Belong to You?

In All Our Patents Are Belong to You Elon Musk explains why he is giving away the entire Tesla patent portfolio to grow the market for electric cars. It might be just the thing to grow a nascent market, but who knows. It is also less sweeping than it sounds as the dedication is conditioned on competitors acting in "good faith." Does that mean Tesla can still enforce the patents as long as it is sued first, that is, defensively? Whatever the case, this is a bold step as the Tesla patents I have read seem to be well written and on commercially important topics (i.e., valuable). One wonders why Tesla didn't simply license the patents for a zero fee for a certain time period.

Despite the hero worship in the comments to Mr. Musk's post, this "patent dedication" may not have the desired affect. How much of the automakers' decision to enter the electric car market is based on the barrier presented by Telsa's patents? My guess is this patent risk factor is far outweighed by current unfavorable economics. I hope we all drive electric cars in the future, but if you buy a Tesla and cannot tap into a free charging station let me know how much your electric bill increases.

Tesla's competitors may be able to freely use Tesla's patented technology, because of the doctrine of equitable estoppel. Furthermore, even if Tesla thinks it smart, what about the competitors? I guess they can take advantage as long as they act in good faith.

Copyright © 2014 Robert Moll. All rights reserved.

Monday, June 9, 2014

Michelle K. Lee - Progress Continues with Our Patent Trial and Appeal Board

Michelle K. Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, had an interesting blog post Progress Continues with Our Patent Trial and Appeal Board:

"Transparency and public involvement in building an even better patent system are hallmarks of this administration and pervade all aspects of the USPTO. A current example of that is the ambitious outreach the Patent Trial and Appeal Board, or PTAB, is conducting with the public. The Board is in the middle of a series of eight roundtables to engage the public about our AIA trial proceedings, our continued hiring of new judges, and our redesigned PTAB web pages, which contain decisions, operating procedures, and interesting statistics to date. Several hundred engaged individuals have already attended our first few roundtables over the last two weeks."

Ms. Lee noted at "these roundtables, we’re particularly focused on receiving feedback on our new trial proceedings created by the Leahy-Smith America Invents Act of 2011. The statute set the framework for these trial proceedings, and the agency promulgated rules and issued guidance thereafter. In promulgating those rules and guidance, the agency worked carefully and diligently, issuing final rules and guidance in a mere one year after the AIA became law. Those rules and guidance were implemented after the USPTO visited 18 cities to solicit input from our stakeholders, just as we are doing now. Also, when we issued the AIA final rules, we committed to re-visiting the rules and guidance after both the Board and the public operated under them for some period."

Ms. Lee stated it was time to revisit the rules as "PTAB began conducting inter partes review and covered business method review proceedings nearly 18 months ago. During this time, the Board has received more than 1,200 petitions, issued more than 500 decisions on whether to institute a trial, and released more than 40 final written decisions following a trial. For such a short period of time, that is a lot of hands-on experience, and the Board has gained a fair amount of wisdom about these processes as a result. But we know that participants in these new AIA proceedings, as well as seasoned observers of our patent system, have also been focused on these new trials and have their own wisdom to share. Through these roundtables, we are hearing from interested parties their thoughts on what we can do to make trial proceedings even more effective going forward by adjusting the rules and guidance where necessary."

"Each roundtable is staffed by at least five administrative patent judges per city (APJs). The roundtables begin with an overview of trial statistics and lessons learned followed by a mock conference call centered on motions for discovery and amendments. The overview provides a framework for the trials, while the mock conference call showcases successful techniques for winning a motion as well as missteps to avoid. The roundtables end with a panel discussion featuring APJs and local practitioners with experience and knowledge about the AIA trials. The purpose of the panel discussion is to break down the trial process and identify strengths and places for improvement. Nothing about the AIA trials is carved in stone, so the opportunity is upon us to work together to hone the AIA trials system into a true alternative to district court litigation for challenging patent validity."

"Apart from the roundtables, I’m pleased to note that PTAB continues to have great success in hiring talented new judges with strong and relevant technical and legal backgrounds. We are moving fast toward our goal of adding 60 new judges for a grand total of 200 by June 1st. New judges are joining not only at the Alexandria headquarters but also at all of the satellite office locations, namely Detroit, Denver, Dallas, and Silicon Valley. As the first director of our Silicon Valley office, I was honored to work beside the stellar judges that had already joined PTAB in service to the innovation community. If you think you have what it takes to make an excellent PTAB judge, we encourage you to apply. To learn more please visit www.usajobs.gov.

Speaking of the web, PTAB has overhauled its pages on our website, making it easier to locate information about AIA trials, ex parte appeals, statistics, operating procedures, and rulings. Additionally, PTAB is posting timely articles, such as tips for filing a preliminary patent owner statement in an AIA trial and testimonials about life as a PTAB judge."

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, June 7, 2014

Patent troll on the verge of winning 1 percent of iPhone revenue

In Patent troll on the verge of winning 1 percent of iPhone revenue, Joe Mullin reports Apple is still unsuccessfully fighting an 0.98% royalty rate to be paid to VirnetX for patent infringement by FaceTime and VPN On Demand.

In 2012, Apple lost and was ordered to pay $368 million (which Mullin says could be an annual cost) and lost its inter partes review case on June 5, 2014, because the judges held that RPX which engaged a law firm to file the petition was determined to be a proxy for Apple which was barred from filing the IPR petition more than one year after the infringement complaint. See PTAB decision.

The PTAB determined Apple was the real-party-in interest behind the RPX petitions and denied them as time-barred. Contrary to the requirements of 35 USC 315(b), the RPX petitions were filed more than 1 year after the date on which the real party in interest Apple was served with a complaint alleging patent infringement. Thus, the IPRs could not be instituted.

This article is worth reading for those considering using a third party as a proxy and highlights the risk of not filing an IPR petition timely after being sued.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, June 4, 2014

US Supreme Court - Nautilus v. Biosig Instruments - Definiteness Requirement

Because the public must understand the patent claims to determine what requires a license from the patent owner, 35 USC 112, paragraph 2, requires the specification conclude with one or more claims that "particularly point out and distinctly claiming" the subject matter which the applicant regards as the invention. In short, the patent claims must be definite to be valid under 35 USC 112.

In recent years, the Federal Circuit has held a patent claim is definite as long as the claim is "amenable to construction" and not "insolubly ambiguous."

On June 2, 2014, the US Supreme Court held in Nautilus v. Biosig Instruments involving a patent claiming a heart rate monitor used with exercise equipment that "the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement. In place of the "insolubly ambiguous" standard, we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."

In short, the US Supreme Court has made it easier to challenge the validity of patent claims for indefiniteness. 

Copyright © 2014 Robert Moll. All rights reserved.

Monday, June 2, 2014

WSJ - 5 Reasons Patents Are On the Rise

Today, the WSJ Rani Molla reports 5 Reasons Patents Are On the Rise.

Rani Molla: "The rise in patent applications has accelerated in recent years — and isn’t necessarily because of increased innovation. Patent law has come to the forefront as so-called patent trolls have increased litigation and as the Supreme Court considers whether software — a huge issue for Silicon Valley — can be patented or not. Today, the Supreme Court reversed a previous ruling in a web technology patent case that will make it harder for companies to sue rivals for encouraging patent infringement. Still, as the number of patents rises so do the stakes. Here’s a look into some reasons for the rise in patents."

Copyright © 2014 Robert Moll. All rights reserved.