Friday, November 28, 2014

MIT Technology Review - Steve Jobs Lives on at the Patent Office

Tonight, I recommend reading Antonio Regalado's article in MIT Technology Review: Steve Jobs Lives on at the Patent Office.

As stated: "Years after his death, the former Apple CEO still wins patents." It is amazing that he is an inventor on 458 US patents (141 posthumously awarded). Some in the article questioned Steve Jobs role as a joint inventor, but the law only requires an inventive contribution. Beside Mr. Jobs' ability to collaborate with many others is a strength. It is also difficult to argue against his innovative contribution and influence on a tech company brought back from the brink in 1990s to the most valuable corporation in the nation building one of the largest US patent portfolios.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, November 27, 2014

USPTO - Electronic Business Center's 20 Most Frequently Asked Questions

I would like to pass along a link that may help if you have questions regarding customer numbers, becoming a registered e-filer, using EFS-Web (e.g., fixing the non-embedded font error), finding USPTO forms, and updating a list of attorneys having the power of attorney: Electronic Business Center's 20 Most FAQs.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 26, 2014

John Allison, Mark Lemley, and David Schwartz - Our Divided Patent System

Tonight, I recommend reading John Allison, Mark Lemley, and David Schwartz's article: Our Divided Patent System (October 14, 2014), which will be published in the University of Chicago Law Review, Vol. 82, 2015. This article presents evidence that different technologies have radically different patent enforcement outcomes, plus has a number of interesting footnotes tying together recent law review articles on patents.

From the abstract: "In this comprehensive new study, we evaluate all substantive decisions rendered by any court in every patent case filed in 2008 and 2009 — decisions made between 2009 and 2013. We assess the outcome of litigation by technology and industry. We relate the outcomes of those cases to a host of variables, including variables related to the parties, the patents, and the courts in which those cases were litigated.

We find dramatic differences in the outcomes of patent litigation by both technology and industry. For example, owners of patents in the pharmaceutical industry fare much better in dispositive litigation rulings than do owners of patents in the computer & electronics industry, and chemistry patents have much greater success in litigation than their software or biotech counterparts. Our results provide an important window into both patent litigation and the industry-specific battles over patent reform. And they suggest that the traditional narrative of industry-specific patent disputes, which pits the IT industries against the life sciences, is incomplete."

Copyright © 2014 Robert Moll. All rights reserved.

Tuesday, November 25, 2014

Jonathan Tamimi - Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity

Tonight, I recommend reading UC Berkeley law student Jonathan Tamimi's article, Breaking Bad Patents: The Formula for Quick, Inexpensive Resolution of Patent Validity. The 60-page article is quite comprehensive, and has loads of data and tables regarding the results obtained in the America Invents Act trials.

In the article: "Part I discusses the historical background of the AIA. Part II navigates the AIA’s updated and expanded procedures for reexamining patent validity at the PTO. The first section of Part II details the advantages of challenging patent validity via AIA reviews relative to district court litigation. The second section presents the limitations and potential drawbacks of using AIA reviews. The third section discusses additional considerations for potential petitioners. Part III concludes with a brief summary of issues surrounding AIA reviews."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, November 24, 2014

Ron Laurie - A Rush to Judgment on Patentable Subject Matter

Tonight, I recommend reading Ron Laurie's post on IP Watchdog: A Rush to Judgment on Patentable Subject Matter. I appreciate Ron Laurie's framing of the issue:

"Should a District Court decide the question of patent-eligible subject matter under Section 101 as a “threshold issue” at the outset of the case – i.e., without the benefit of expert testimony and/or claims construction?"

Copyright © 2014 Robert Moll. All rights reserved.

Friday, November 21, 2014

PTAB - Corning Optical Communications RF, LLC v. PPC Broadband, Inc. - Motion to Amend Claims

In Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, the Patent Trial and Appeal Board (PTAB) added an order on a motion to amend claims (paper 19) to PTAB's list of representative orders, decisions, and notices. In the order, PTAB gives guidance on how to meet the requirements of a motion to amend claims and authorizes a patent owner can list the substitute claims in an appendix so they do not count toward the 15-page limit for the motion.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, November 20, 2014

Federal Circuit - Ultramercial Inc. v. Hulu, LLC - Patent-Ineligible Subject Matter Under 35 USC 101

In Ultramercial Inc. v. Hulu, LLC, the Federal Circuit stated a method for offering free videos in exchange for watching advertisements is not patent eligible subject matter under 35 USC 101.

Let's examine part of this opinion that indicates how the abstract idea exception to patent eligibility gives wide latitude to judges:

Federal Circuit: "We first examine the claims because claims are the definition of what a patent is intended to cover. An examination of the claim limitations of the '545 patent shows that claim 1 includes eleven steps for displaying an advertisement in exchange for access to copyrighted media. Without purporting to construe the claims, as the district court did not, the steps include: (1) receiving copyrighted media from a content provider; (2) selecting an ad after consulting an activity log to determine whether the ad has been played less than a certain number of times; (3) offering the media for sale on the Internet; (4) restricting public access to the media; (5) offering the media to the consumer in exchange for watching the selected ad; (6) receiving a request to view the ad from the consumer; (7) facilitating display of the ad; (8) allowing the consumer access to the media; (9) allowing the consumer access to the media if the ad is interactive; (10) updating the activity log; and (11) receiving payment from the sponsor of the ad."

Bob: Okay, claim 1 requires eleven steps that define the invention. 

Federal Circuit: "This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible form."

Bob: What happened to the eleven steps of claim 1?

Federal Circuit: "The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application."

Bob: Why does claim 1 recite an abstraction? The Federal Circuit makes a conclusion without much analysis. If the method allows the public to see free videos in exchange for watching ads how is this merely an abstract idea? It may not be novel or unobvious, but the claimed invention is in the real world. It would read on a service (e.g., YouTube) that allows people to watch ads (nobody likes) so they can watch they want to watch (e.g., soccer, real guitars) on a computer display. The method is implemented on the Internet, a global network of networked computers. This is a concrete and tangible application. So a judge gets to decide that it all adds up to an abstract idea, devoid of a concrete or tangible application, but what constrains that decision?

I don't see a real constraint exists on a judge's decision to make up an abstract idea, once we begin the process of allowing dissection of the claim. Unlike 35 USC 103, a judge applying Alice doesn't have to consider the subject matter of the claim as a whole. And once we allow the judge to split the claim into an abstract part and non-abstract part, what determines the "line" between abstract and non-abstract in the claim?  Step 1 of Alice says identify if the claim recites an abstract idea. How does a judge decide? The judge selects a subset of the claim (e.g., the preamble) and thus the judge sets the line. Step 2 then asks if the remainder of the claim, that is, the non-abstract part of the claim is an inventive concept. If the judge thinks the non-abstract part is conventional, the judge concludes "no inventive concept." And now the test is completed, and the claim is deemed ineligible. The two-part Alice test is a mental process without reference to the prior art requirements of 35 USC 102. This patent eligibility test is the ultimate "abstract idea."

And as long as we ignore the broad language of 35 USC 101 that was purposely framed that way to promote innovation, bootstrap the novelty (35 USC 102) and obviousness (35 USC 103) analysis into 35 USC 101, we will see too many software inventions held ineligible for patents. I don't think any reasonable person wants obvious subject matter to get patent protection, but when we eliminate the requirement to assess the subject matter against the real world, i.e., prior art, we are left with just a judge's opinion with inadequate constraints.

Note Judge Mayer in concurrence goes further seeking to establish patent eligibility is a threshold question, arguing we give no presumption of validity to the USPTO's determination that the claims satisfy 35 USC 101, and ultimately arguing Alice establishes a "technological arts test for patent eligibility."

Also see WildTangent v. Ultramercial - Supreme Court Rejects Federal Circuit Decision on 35 USC 101.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 19, 2014

Ron Katznelson - A Century of Patent Litigation in Perspective

Tonight, I suggest reading Ron D. Katznelson's article: A Century of Patent Litigation in Perspective, which provides ammunition if you suspect lobbyists and public relations firms foisted a patent litigation explosion myth on the White House (and others) to help them "understand" the urgency of implementing a plan to rein in US patents in recent years.

Here's the introduction of the article:

"Recent years brought a proliferation of articles that describe and quantify a purported 'explosion' in patent litigation. The causes for this purported explosive rise are often attributed to technological change, the Federal Circuit 'patent-friendly' court, the growth of patenting, poor 'patent quality,' and to litigation tactics of non-practicing entities (NPE), or the ill defined 'Patent Assertion Entities (PAEs), pejoratively called 'patent trolls.' A recent White House report on PAEs states without supporting sources that 'the increased prevalence of PAE suits, and patent suits in general, in recent years stands in contrast to the 20th century, when suits for patent infringement were relatively rare.' However, without the context of the general scale of commercial activity, this statement is meaningless because the number of all federal civil suits 'in recent years stands in contrast to the 20th century,' when civil suits 'were relatively rare: about 283,000 Federal civil suits were filed in 2010 compared to only about 54,600 filed in 1950; in Federal district courts, about 3,700 trademark suits were filed in 2010 compared to only about 200 filed in 1950; and about 2,000 copyright suits were filed in 2010 compared to only 165 filed in 1950."

Here's Dr. Katznelson's abstract:

"When comparing patent litigation rates or "rarity" across decades, one must take into account the proportion to the actual scale of commercial activities that give rise to patent disputes. Such normalizing scales are preferably national metrics of commercial activity such as (a) the number of patents issued in the year,(b) the total number of patents in force over which disputes may arise, (c) the total number of Federal civil suits, or (d) the economic scale of the Gross National Product (GDP) in real dollars. This paper marshals for the first time information on all patent litigation in Federal district courts spanning almost a century. The patent lawsuit filing information is newly obtained from the Judicial Conference Annual Reports going back to 1937 and further collected from the weekly Official Gazette of the Patent Office going back to 1923. In addition, an estimate for the number of US patents in force in each of the years covered is derived. Using non-parametric statistical tests, it is shown that, with the exception of the AIA-caused litigation anomaly of 2011-2013 explained in the paper, for all four normalizing metrics, patent litigation intensities during this century had not exceeded those experienced during the 20th century. High patent litigation intensities in the 1920s-1930s and the 1960s have been comparable to, if not higher than, those in the 2000s. These litigation activities are thought to be consistent with major shifts in technological developments such as the development of radio and electronics and chemical advances in the 1920s-1930s, the development of semiconductor transistor electronics in the 1960s and the wireless communications and internet-based technologies at the turn of the 20th century."

Copyright © 2014 Robert Moll. All rights reserved.

Monday, November 17, 2014

USPTO - Roundtable on International Harmonization of Substantive Patent Law on November 19, 2014

The USPTO is hosting a roundtable on international harmonization of substantive patent law on November 19, 2014:

"The United States Patent and Trademark Office (USPTO) is seeking input on certain matters relating to the international harmonization of substantive patent law. In view of the importance of harmonization of substantive patent law to the successful reutilization of the examination work of one intellectual property office by another, or work sharing, the USPTO is particularly interested in stakeholder comments on the following key patent examination-related issues the definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step. To assist in gathering this information, the USPTO is holding a public roundtable which interested members of the public are invited to attend."

When: Registration at 8:00 am and roundtable at 8:30 am

Where: USPTO, 600 Dulany Street, Madison Auditorium, Concourse Level, Alexandria, VA 22314.

It seems the international harmonization discussion should include 35 USC 101 patent eligibility.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, November 16, 2014

Federal Circuit - In re Cuozzo Speed Technologies - Oral Arguments

In re Cuozzo Speed Technologies, the Federal Circuit heard oral arguments on what should be the standard for interpreting patent claims in America Invents Act (AIA) trials.

One advantage for petitioners is the claims are currently subject to the broadest reasonable interpretation (BRI), which makes it easier to invalidate the claims. The policy underlying BRI is the claims can be amended to overcome prior art so should be subject to the broadest reasonable interpretation to avoid the claims being later interpreted too broadly in court. However, only one party has successfully amended claims in an IPR! This calls into question whether we should use a broad standard suitable for the original prosecution in the AIA trials. In the meantime, here is the Federal Circuit's MP3 audio recording of the arguments.

Copyright © 2014 Robert Moll. All rights reserved.

Friday, November 14, 2014

PTAB - American Invents Act (AIA) Trials Statistics

Tonight, I recommend reading the PTAB statistics regarding AIA trials. In short, the number of petitions filed for post-grant validity challenges has increased from about 25 petitions in September 2012 to nearly 200 petitions in October 2014. As long as people are getting favorable results, the relative low cost of inter partes review (IPR) will motivate the continuing increase, while post-grant review filings remain miniscule. Post-grant review filings should increase as more patents become eligible for challenge, but post-grant review may never reach the filing of IPR, because it is viewed as a costly solution compared to IPR. Most of the IPRs are being filed against software, electrical, and/or mechanical patents, and no petitions were filed to challenge the validity of design patents.

Copyright © 2014 Robert Moll. All rights reserved.

Thursday, November 13, 2014

Harvard Journal of Law and Technology Digest (JOLT)

Tonight I recommend browsing the Harvard Journal of Law and Technology. It has law review articles on law and technology worth reading. Also see the Harvard JOLT Digest, which has law and technology news and summarizes patent case law. Note, however, since Harvard JOLT covers many intellectual property law topics, the patent law digest discusses a limited number of cases.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 12, 2014

Joe Mullin - Startups can now buy insurance against threat of patent trolls

Tonight I recommend Joe Mullin's article: Startups can now buy insurance against threat of patent troll. Mr. Mullin says "RPX wants to protect small companies from patent threats. Premiums start at $7,500." I guess you call RPX-- no wait these are modern times ... visit its website-- to get the cap and deductible on this bottom offering.

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, November 9, 2014

IP Watchdog - A Strong Innovation Ecosystem is Needed for Job Creation

Tonight, I recommend reading Gene Quinn's article: A Strong Innovation Ecosystem is Needed for Job Creation, which summarizes Jay Walker's talk at the 2014 IP Dealmakers Forum on November 6, 2014.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, November 8, 2014

USPTO Crowdsourcing for Prior Art Roundtable on December 2, 2014

The USPTO is conducting a roundtable to get public input on its use of crowdsourcing to find prior art.

The USPTO will discuss: (1) how it can use the crowdsourcing tool to find prior art to improve the quality of issued patents; (2) ways it can use private sector solutions to provide that prior art to examiners; and (3) responses to the March 19, 2014 crowdsourcing notice and April 10, 2014 crowdsourcing roundtable. Also see crowdsourced non-patent literature hosting.

See Request for Comments and Notice of Roundtable on USPTO Use of Crowdsourcing to Identify Relevant Prior Art.

The roundtable will be held at the Moot Court Room, Benjamin N. Cardozo School of Law, 55 Fifth Avenue, New York, NY 10003 from 1 pm to 5 pm EST, December 2, 2014. The meeting will be also webcast.

Signing up is by email

November 18, 2014: speaking requests

November 25, 2014: requests to attend the roundtable or webcast

December 9, 2014: written comment on topics identified or discussed at the roundtable

For details visit the Crowdsourcing Roundtable page on the USPTO website or contact Mr. Harvey, Director, TC 2800 at 571-272-8004 or email

Copyright © 2014 Robert Moll. All rights reserved.

Friday, November 7, 2014

FTC Settlement Bars Patent Assertion Entity Deceptive Patent Licensing Effort

On November 6, 2014, the FTC announced that MPHJ Technology Investments, LLC, and its law firm reached a settlement that barred the patent assertion entity from sending letters making phony claims in licensing its patents and that each letter in the future would cost $16,000.

As background, MPHJ Technology had purchased patents that purported to cover network scanning then sent letters to more than 9,000 small businesses claiming they likely infringed and faced an infringement lawsuit if they failed to purchase a license. The letters gave a two-week deadline and included a complaint ready to file in closest federal court, but no complaints were filed and no preparation was made to file the complaints. This is the FTC first action against a "patent assertion entity."

For details see the agreement and consent order, the other FTC documents, and the FTC press release.

Also see Mr. Joe Mullin's FTC ends first case again a "patent troll" with a slap on the wrist - MPHJ owner Jay Mac Rust won't pay a fine, can sue all he likes.

Copyright © 2014 Robert Moll. All rights reserved.

Wednesday, November 5, 2014

IP WatchDog - Exclusive Interview with Jaime Siegel of Acacia Research

Tonight, I suggested reading Gene Quinn's interview with Jaime Siegel of Acacia Research, which indicates where US patent monetization has been, is, and will be heading in the future.

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - First Cybersecurity Partnership Meeting at Silicon Valley USPTO on Nov. 14, 2014

The USPTO first partnership meeting with the cybersecurity and network security community will be held at the temporary location of the Silicon Valley USPTO satellite office, that is, the US Geological Survey Campus, Building 3, second floor, 345 Middlefield Road, Menlo Park, CA from 8:30 am to 3 pm on Friday, November 14, 2014.

As stated in the USPTO notice: "The Cybersecurity Partnership meeting creates a collaborative forum for USPTO stakeholders seeking patent protection in the cybersecurity and network security sector to share ideas, experiences, and insights with USPTO staff. Members from the public are invited to attend. For this inaugural event, the USPTO has partnered with the National Institute of Standards and Technology (NIST), who will present information on their voluntary Framework for Improving Critical Infrastructure Cybersecurity. USPTO staff will also discuss cybersecurity patent initiatives, key computer security patent application statistics, and examination guidelines for patent eligible subject matter following the Alice Corp. v. CLS Bank Supreme Court decision. In addition to the presentations from NIST and the USPTO, several key stakeholders will present their views on topics focusing on the intersection of Intellectual Property and Cybersecurity." 

Confirmed speakers appear below:
  • Mohammad H. Qayoumi, President of San Jose State University and member of the Department of Homeland Security Academic Advisory Council
  • Angela Ziegenhorn, Senior Director for Intellectual Property at Symantec Corporation
  • David Kinsinger, Vice President and Chief Patent Counsel at L-3
  • John Vandenberg, Partner at Klarquist Sparkman
It's free but you must request to attend by email to by November 10, 2014. In the request, include "Cyber Registration" in the subject line, and the attendee name, affiliation, title, mailing address, and telephone number in the body. The USPTO says it will let you know if you are in November 11.

For the live webcast click HERE

Copyright © 2014 Robert Moll. All rights reserved.

Sunday, November 2, 2014

Method Claims - Should They Recite Computer Terminology?

Although the Supreme Court stated it wouldn't give much weight to whether a method claim recites a computer in Alice v. CLS Bank, it may be a good idea to recite computer language in the claim in some cases.

During examination, an examiner should give a claim the broadest reasonable interpretation consistent with the specification. For example, in Phillips v. AWH Corp. the Federal Circuit stated an examiner should determine the scope of claims not solely on the claim language, but on the broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art."

The logic for the broadest reasonable interpretation standard is an applicant can amend claims during prosecution, and giving a claim the broadest reasonable interpretation reduces the possibility the issued patent claim will be interpreted more broadly than justified.

Let me explain now how this might apply using an example. In Application of Prater the CCPA considered a patent applicant pursuing a claim reciting a process of analyzing data generated by mass spectrographic analysis of a gas. The specification said the process included subjecting the data to be analyzed in a mathematical manipulation. The examiner rejected the claim as anticipated, because "analyzing data generated by mass spectrographic analysis" could be read on a mental process using a pencil and paper. The court agreed the claim was not limited to implementation on a machine, since the claim did not expressly recite it. The court explained "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from 'reading limitations of the specification into a claim,' to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." In short, Application of Prater indicates you cannot import subject matter (e.g., a machine or a computer) described in the specification into the claim where that subject matter is not recited in the claim.

Thus, if you want a method implemented in software to not read on a mental process, it may be better to recite the computer language in the body of the claim if you can live with the narrower claim.

Copyright © 2014 Robert Moll. All rights reserved.

Saturday, November 1, 2014

Washington Post - Google has gotten more fast-track patents than any other company

Tonight, I suggest reading the Washington Post's article Google has gotten more fast-track patents than any other company. As stated, "Google has obtained 875 fast-track patents, about 14 percent of the 6,187 expedited patents that have been issued by the U.S. Patent and Trademark Office since the program began in 2011, according to data provided by the agency."

Copyright © 2014 Robert Moll. All rights reserved.