Monday, November 30, 2015

PTAB - Responding to New Grounds of Rejection on Appeal

The PTAB has published an article that provides guidance on responding to new grounds of rejection on appeal. The article reviews PTAB rules for responding to new grounds in an examiner's answer, undesignated new grounds, and tolling for filing a reply while awaiting a decision on a petition for review of the examiner's answer.

Copyright © 2015 Robert Moll. All rights reserved.

Friday, November 27, 2015

PTAB - Summary in Fiscal Year 2015

The USPTO gave the following summary of PTAB opinions, pilot programs, and events in Fiscal Year 2015:

Informative/Representative Opinions

"The PTAB issued the following five informative opinions in FY2015:

Cisco Systems, Inc. v. C-Cation Techs, LLC, IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) (impermissible incorporation of arguments into petition by reference)

TRW Automotive US LLC v. Magna Electronics, Inc., IPR 2014-00293, Paper 18 (PTAB June 27, 2014) (meaning of “serv with a complaint” under 35 U.S.C. § 315(b))

Conopco, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 25 (PTAB Dec. 10, 2014) (addressing request for expanded panel on rehearing)

AOL Inc. v. Coho Licensing LLC, IPR2014-00771, Paper 12 (PTAB Mar. 24, 2015) (addressing request for expanded panel on rehearing)

Arris Group, Inc. v. C-Cation Techs, LLC, IPR2015-00635, Paper 10 (PTAB May 1, 2015) (granting motion for additional discovery on privity issue)

The PTAB issued the following representative opinions in FY2015:

Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, Paper 19, (PTAB Oct. 30, 2014)(guidance on requirements for motion to amend)

Dell, Inc. v. Electronics and Telecomms. Res. Inst., IPR2015-00549, Paper 10 (PTAB Mar. 26, 2015) (applying estoppel under 35 U.S.C. § 315(e)(1)

Westlake Services LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) (discussing estoppel under 35 U.S.C. § 325(e)(1))

MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015) (guidance on requirements for motion to amend)

The PTAB implemented and/or announced the following Pilot Programs during FY2015:
  • Expedited Patent Appeal Pilot (implemented June 19, 2015)
  • Proposed Pilot Program Exploring an Alternative Approach to Institution Decisions in Post Grant
  • Administrative Reviews (announced Aug. 25, 2015, with request for comments due Nov. 18, 2015)
  • Streamlined, Expedited Patent Appeal Pilot for Small Entities (implemented Sept. 18, 2015)
  • PTAB-Related Topics Covered in USPTO articles
  • The PTAB published the following articles on its Web page during FY2015:
  • Effective Use of Claim Grouping in Appeals to the Patent Trial and Appeal Board (published Mar. 11, 2015)
  • Organizational Structure and Administration of the Patent Trial and Appeal Board (published May 2015)
  • USPTO Announces Streamlined, Expedited Patent Appeal Pilot for Small Entities (published Sept. 17, 2015)
  • Proposed Changes to Rules Governing PTAB Trial Proceedings (published Aug. 19, 2015)
  • PTAB’s Quick-Fixes for AIA Rules Are to Be Implemented Immediately (published Mar. 27, 2015)
  • PTAB Hits the Road Again in November 2014 for Detroit Region Roadshows about the AIA Trials (published Oct. 28, 2014)
In addition to the many speaking events in which PTAB judges participate monthly, the PTAB hosted several noteworthy Outreach Events during FY2015:
  • PTAB Statistics and Key Decisions (Feb. 3, 2015)
  • Do’s and Don’ts for Ex Parte Appeals (Apr. 7, 2015)
  • Discovery in AIA Trials (July 14, 2015)
  • Ask the Judges panel (August 4, 2015)
  • PTAB Bench & Bar Conference (June 18, 2015)
  • AIPLA/USPTO Roadshows(San Jose, Dallas, and Alexandria) (August 24‒28, 2015)
For more information on any of the items mentioned in this email, please see the PTAB’s Web page at If you have suggestions for other topics that you would like to see covered by the PTAB in a future Outreach event, please email your suggestions to"

Copyright © 2015 Robert Moll. All rights reserved.

Friday, November 20, 2015

Crouch - AIA Patents: 20% of New Patents - Brief Comment

Professor Dennis Crouch's post: AIA Patents: 20% of New Patents includes a chart that graphically shows a steep rise in US patents that have issued under the America Invents Act (AIA). As a reminder, an AIA patent is not entitled to a filing date earlier than March 16, 2013.

I expect a rise in litigation on how 35 USC 102 should be interpreted for AIA patents given the different language of Section 102 of the AIA and given the paucity of court or PTAB decisions to date. I am not certain if the rise in AIA patents will trigger a similar rise in litigation rather than settlement on Section 102 disputes, but it seems likely.

Also see Professor Crouch's First AIA Lawsuits and my article America Invents Act, On Sale Bar, 35 USC 102.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, November 17, 2015

USPTO - New Application Data Sheet Form for Submissions On or After November 30, 2015

The USPTO has a new Application Data Sheet (ADS) form PTO/AIA/14 for any ADS submission on or after November 30, 2015:

"The changes to the ADS form were announced in the Federal Register. See Changes to Facilitate Applicant’s Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices; found on Final Rule (October 27, 2015).

Applicants are no longer required to select an opt-in check box on the ADS form to provide the USPTO with authorization to permit a foreign intellectual property office participating in the priority document exchange (PDX) program access to a U.S. priority application. Instead, the revised ADS form contains by default the authorization to permit access to the U.S. priority application via the PDX program. Including a properly signed ADS form on filing will provide applicant’s authorization for the PDX program. Should applicant wish not to provide authorization for the PDX program, applicant can select the opt-out check box for this authorization on the ADS form. The revised ADS form also contains by default the authorization to permit access to the search results from a U.S. priority application by the European Patent Office (EPO). Like the PDX program, should applicant wish not to provide the EPO access to the search results, applicant can select the opt-out check box for this authorization on the ADS form.

Please note that a revised ADS form submitted after the filing of an application CANNOT be used to provide or revoke any of the authorizations to permit access discussed above. Instead, forms PTO/SB/39 and PTO/SB/69, as applicable, should be used to provide or revoke these authorizations to permit access after the filing of an application."

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, November 11, 2015

USPTO - Raising Patent and Trademark Fees - 2016

The USPTO has notified that it plans to increase many patent and trademark fees in 2016:

"As part of the USPTO’s continued commitment to fiscal responsibility, financial prudence and operational efficiency the agency reviews fee levels on at least a biennial basis. The fee review process incorporates a thorough evaluation of the existing fee schedule as well as significant research and analysis on potential revisions to the schedule.

Section 10 of the AIA authorizes the Director of the USPTO to set or adjust by rule all patent and trademark fees established, authorized, or charged under Title 35 of the U.S. Code and the Trademark Act of 1946 (15 U.S.C. § 1051 et seq.), respectively. When fees are set, the aggregate revenue from the patent fees may only recover the aggregate estimated cost of the patent operations, including administrative costs to the USPTO. Likewise, the aggregate revenue from the trademark fees may only recover the aggregate estimated cost of the trademark operations, also including administrative costs to the USPTO.

When the USPTO proposes to set or adjust fees for "filing, searching, examining, issuing, appealing, and maintaining patent applications and patents" as permitted by the AIA, those proposed fees will include a 50% reduction for small entities and a 75% reduction for micro entities as provided for in section 10(b) of the AIA. The applicants qualifying for a small entity discount (50%) will be those who meet the "small entity" definition in 35 U.S.C. § 41(h)(1). The applicants qualifying for a micro entity discount (75%) will be those who meet "micro entity" definition outlined in Section 11(g) of the AIA.

The AIA outlines the process that the USPTO will use when setting or adjusting fees by rule. This process is intended to be inclusive with two different points in time for the public to comment on proposed fee amounts."

Here's the USPTO's details:

Patent Fee Setting and Adjusting Proposal
80 FR 63543 - Notice of Public Hearing - PPAC (link is external)
Letter from the Director to PPAC
Table of Patent Fee Adjustments
Table of Patent Fees – Current, Proposed and Unit Cost
PPAC Executive Summary
PPAC Detailed Appendix

Trademark Fee Setting and Adjusting Proposal
80 FR 63542 - Notice of Public Hearing - TPAC (link is external)
Letter from the Director to TPAC
Table of Trademark Fee Adjustments
Table of Trademark Fees - Current, Proposed and Unit Cost
TPAC Executive Summary
TPAC Detailed Appendix
TPAC Hearing Agenda

Copyright © 2015 Robert Moll. All rights reserved.

Saturday, November 7, 2015

USPTO - Enhanced Patent Quality Initiative - USPTO Director Michelle K. Lee

Director of the USPTO Michelle K. Lee continues to focus on the topic of patent quality:

"Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.

Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality.

We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative.

First, we are preparing to launch a Clarity of the Record Pilot under which examiners will include as part of the prosecution record definitions of key terms, important claim constructions, and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record. We also will be launching a new wave of in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).

Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public.

What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.

The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiativepage on our website.

Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.

To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information. The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to Thank you for collaborating with us on this exciting and important initiative!"

Copyright © 2015 Robert Moll. All rights reserved.

Friday, November 6, 2015

Congress - Copyright Review Listening Tour - Santa Clara University Law School - November 9, 2015

On Monday November 9, Santa Clara Law will host the House Judiciary Committee's Copyright Review Listening Tour about the future of U.S. copyright law.

As Chairman Goodlatte and Ranking Member Conyers stated: "Two years ago, the House Judiciary Committee launched a comprehensive review of our nation’s copyright laws, which have not been updated since 1976. As technology continues to rapidly advance, we have a responsibility to ensure that our laws are keeping pace with these developments. The Committee is traveling to locations across America to hear directly from creators and innovators about the challenges they face in their creative fields and what changes are needed to ensure U.S. copyright law reflects the digital age in which we live. We look forward to continuing the productive dialog that we had in Nashville, the first stop of the Committee’s listening tour."

The following members of Congress, academics, and other stakeholders will speak at this event:

Laura Covington, Vice President of Intellectual Property Policy, Yahoo

Clint Cox, VP of Technical Operations, Ultimate Fighting Championship

Tony Falzone, Deputy General Counsel, Pinterest

Alex Feerst, Attorney, Legal Team, Medium

Brewster Kahle, Founder and Digital Librarian, Internet Archive

Zoe Keating, Cellist, Composer and Technologist

Michael Keller, University Librarian, Stanford University

Lisamaria Martinez, Director of Community Services, Lighthouse for the Blind of San Francisco

Tyler Ochoa, Professor of Law, Santa Clara University School of Law

Matthew M. Sarboraria, Vice President of Intellectual Property, Oracle

Brianna Schofield, Teaching Fellow, Berkeley Center for Law & Technology

Ellen Seidler, independent filmmaker

Ted Ullyot, Partner, Andreesen Horowitz

Ruth Vitale, Chief Executive Officer, Creative Future

Timothy Vollmer, Manager of Public Policy, Creative Commons

Kit Walsh, Staff Attorney, Electronic Frontier Foundation

Kyle Wiens, Founder and CEO, iFixit

Matt Zinn, General Counsel, TiVO

This event is free and open to the public.

Register here

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, November 5, 2015

Supreme Court - Amended Federal Rules of Civil Procedure - Effective December 1, 2015

The amendments to the Federal Rules of Civil Procedure (FRCP) become effective on December 1. The amendments will impact non-practicing patent owners who are used to filing form patent infringement complaints with little pre-filing research and leveraging the fact they have little to produce in discovery compared to the defendants. 

The amendments eliminate the patent infringement form, and require patent owners state additional facts in support of infringement, and in some cases file claim charts.

The amendments will also reduce the scope of discovery to "any non-privileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties’ relative access to relevant information, the parties’ resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefit."

Copyright © 2015 Robert Moll. All rights reserved.

Wednesday, November 4, 2015

Eric Spangenberg - Have We Hit Bottom in the Patent Market?

In the IP Watchdog article: Have We Hit Bottom in the Patent Market? Mr. Eric Spangenberg gives his frank assessment of what has adversely impacted the US patent market:

"Big tech used small companies hit with abusive lawsuits as the 'poster boy' to push through changes that do far more to help big companies efficiently infringe 'little guys' intellectual property than they do to prevent abuse. The market is still struggling to adapt to the rule changes that were pushed through in the AIA."

I would add companies have not been transparent on the funding of academic papers, studies, and articles in the press. Often the studies have lots of numbers, surveys, and statistics. The authors should disclose if they are compensated. Otherwise, these publications get presented to Congress right before hearings as objective evidence from disinterested observers of a problem that requires further patent reform.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, November 3, 2015

USPTO - Efficient Patent Prosecution Program - San Jose - November 17, 2015

The USPTO is hosting a program: Efficient Patent Prosecution at its new Silicon Valley Office at 26 South Four Street, San Jose, CA at 3:30 to 4:45 pm on Tuesday, November 17.

The following classes will be presented three times so you can see it all (if you have the time): (1) virtual interviews and tips for examiner interviews from San Jose; (2) searching for prior art using tools available at the Silicon Valley Office; and (3) using the Patent Ombudsman to resolve prosecution issues.  

To RSVP, send an email: 

For more information: Silicon Valley Office

Copyright © 2015 Robert Moll. All rights reserved.

Sunday, November 1, 2015

NY Times - The Patent Troll Smokescreen - A Comment

In the NY Times article The Patent Troll Smokescreen, Joe Nocera nicely sums up where big tech lobbying has taken the US patent system since passage of the AIA:

"But what if, in the name of cracking down on trolls, Congress passes an anti-troll law that winds up having huge negative consequences for legitimate inventors? What if a series of Supreme Court rulings make matters worse, putting onerous burdens on inventors while making it easier for big companies to steal unlicensed innovations As it happens, thanks to the 2011 America Invents Act and those rulings, big companies can now largely ignore legitimate patent holders.

Of course, they don’t call it stealing. But according to Robert Taylor, a patent lawyer who has represented the National Venture Capital Association, a new phrase has emerged in Silicon Valley: “efficient infringing.” That’s the relatively new practice of using a technology that infringes on someone’s patent, while ignoring the patent holder entirely. And when the patent holder discovers the infringement and seeks recompense, the infringer responds by challenging the patent’s validity.

Should a lawsuit ensue, the infringer, often a big tech company, has top-notch patent lawyers at the ready. Because the courts have largely robbed small inventors of their ability to seek an injunction — that is, an order requiring that the infringing product be removed from the market — the worst that can happen is that the infringer will have to pay some money. For a rich company like, say, Apple that’s no big deal."

Exactly, and with the effectiveness of AIA trials, we now have a legal framework where it is relatively inexpensive and quick (at least compared to in court) to invalidate a US patent that is the subject of a lawsuit. So why do I need a license again Mr. small time inventor? This is not an argument against patents per se because once the typical big tech acquisition occurs -- the new ownership gives financial parity making the pushback to the validity challenge worthy of serious consideration.

Copyright © 2015 Robert Moll. All rights reserved.