Sunday, December 30, 2018

CAFC - Application in Internet Time v. RPX - Real Party In Interest

In Application in Internet Time v. RPX, the Federal Circuit vacated inter partes review (IPR) decisions invalidating two US patents because the Patent Trial and Appeal Board (PTAB) applied an unduly restrictive test for determining whether an entity (i.e., a RPX member) is a real party in interest within the meaning of 35 U.S.C. § 315(b) and failed to consider the entire evidence in assessing whether § 315(b) barred institution of the IPRs filed by RPX.

The Federal Circuit stated the PTAB erred in not further investigating whether the RPX member was the real party in interest even though RPX had communications back and forth with the RPX member and received a large payment from the RPX member just before the IPR petitions were filed.

In short, a defendant in a patent infringement suit that waits more than one year after being served is time barred from filing an IPR. 35 U.S.C. § 315(b). Thus, a defendant that is a member of an organization that files IPR to avoid the one year time bar might expect that PTAB will permit discovery on the relationship between the organization and the defendant to see if the defendant is a real party in interest and the organization is its proxy. The discovery may encompass the communications and the funding of the organization. Once the facts are ascertained it may affect the final IPR decision. Thus, a defendant should expect that it needs to file an IPR petition within one year of being sued rather than rely on a third party organization which may be held to be its proxy.

Copyright © 2018 Robert Moll. All rights reserved.

Friday, December 28, 2018

CAFC - In Re: Marco Guldenaar Holding B.V. - Dice Game Patent Ineligible under 35 USC 101

In Re: Marco Guldenaar Holding B.V., the Federal Circuit held a game with specially marked dice patent ineligible under 35 U.S.C. § 101.

Representative claim 1 recited:

A method of playing a dice game comprising:

providing a set of dice, the set of dice comprising a first die, a second die, and a third die, wherein only a single face of the first die has a first die marking, wherein only two faces of the second die have an identical second die marking, and wherein only three faces of the third die have an identical third die marking;

placing at least one wager on at least one of the following: that the first die marking on the first die will appear face up, that the second die marking on the second die will appear face up, that the third die marking on the third die will appear face up, or any combination thereof;

paying a payout amount if the at least one wager occurs.

The Federal Circuit held claim 1 was directed to the abstract idea of rules for playing a dice game. While a set of game rules may be patent-eligible if the claims contain an inventive concept sufficient to transform the abstract idea into a patent-eligible application, the claim recited placing a wager, rolling the dice, and paying a payout amount if at least one wagered outcome occurs none of which appellant disputes is conventional, either alone or in combination and special markings on the dice constituted printed matter outside the scope of § 101.

In an attempt to satisfy the second part of the Alice test, appellants argued the dice had markings on the die faces that were not conventional and their recitation in the claims amounted to "significantly more” than the abstract idea.

The Federal Circuit noted each die’s marking or lack of marking communicates information whether the player has won or lost a wager, similar to the markings on a typical die or a deck of cards. Further, the claim limitations are directed to information that is not functionally related to the substrate of the dice. In short, the markings constituted printed matter.

Just as the claimed steps of shuffling and dealing playing cards fell short in In re Smith, the Federal Circuit held the claims conventional and the markings insufficient to recite an inventive concept.

The Federal Circuit observed other games might be patent eligible, but I think games that are novel in the informational content may struggle to avoid that content being treated as "printed matter" and the game being held patent ineligible.

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, December 26, 2018

Chien & Wu - Decoding Patentable Subject Matter

Colleen Chien & Jiun Ying Wu's Decoding Patentable Subject Matter (2018) quantifies 35 U.S.C. § 101 rejections across different technologies and shows how the Supreme Court's decisions in Alice and Mayo affected the patent eligibility of software and medical diagnostics in the USPTO.

From the Abstract:

"The Supreme Court’s patentable subject matter jurisprudence from 2011 to 2014 has raised significant policy concerns within the patent community. Prominent groups within the IP community and academia, and commentators to the 2017 USPTO Patentable Subject Matter report have called for an overhaul of the Supreme Court’s “two-step test.”

Based on an analysis of 4.4 million office actions mailed from 2008 through mid-July 2017 covering 2.2 million unique patent applications, this article uses a novel technology identification strategy and a differences-in-differences approach to document a spike in 101 rejections among select medical diagnostics and software/business method applications following the Alice and Mayo decisions.

Within impacted classes of TC 3600 (“36BM”), the 101 rejection rate grew from 25% to 81% in the month after the Alice decision, and has remained above 75% almost every month through the last month of available data (2/2017); among abandoned applications, the prevalence of 101 rejection subject matter rejections in the last office action was around 85%.

Among medical diagnostic (“MedDx”) applications, the 101 rejection rate grew from 7% to 32% in the month after the Mayo decision and continued to climb to a high of 64% and to 78% among final office actions just prior to abandonment.

In the month of the last available data (from early 2017), the prevalence of subject matter 101 rejections among all office actions in applications in this field was 52% and among office actions before abandonment, was 62%. However outside of impacted areas, the footprint of 101 remained small, appearing in under 15% of all office actions. A subsequent piece will consider additional data and implications for policy."

Copyright © 2018 Robert Moll. All rights reserved.

Sunday, December 23, 2018

IAM - After China Win, Qualcomm Follows Up with A German Injunction

Joff Wild's article IAM After China Win, Qualcomm Follows Up with A German Injunction suggests China is stepping up its patent enforcement game.

China has been more lax in enforcing patents than the United States until recently. For many years, US courts automatically granted injunctions after a patent was held valid, enforceable, and infringed. 35 U.S.C. §154 suggested that they should be granted given a patent grants the right to exclude others from making, using, offering for sale, or selling the invention in the United States during the patent term.

But that routine grant of injunctions really stopped after EBay v. MercExchange. There the Supreme Court repudiated the Federal Circuit's practice of automatically granting injunctions. It recognized courts should grant injunctions in accordance with equity to prevent violation of patent rights on such terms as the court deems reasonable. 35 U.S.C. § 283. EBay basically set up some hurdles after a patent owner won its case. Going forward the patent owner seeking a permanent injunction would also need to demonstrate it satisfied a four factor test:

(1) that it has suffered an irreparable injury;

(2) that remedies available at law are inadequate to compensate for that injury;

(3) that considering the balance of hardships between the plaintiff and defendant, a remedy in equity
is warranted; and

(4) that the public interest would not be disserved by a permanent injunction.

Courts can grant permanent injunctions as part of a final judgment between competitors, but proving the four factors can be a challenge for patent owners when it involves non-competitors in the United States. Even though injunctions are becoming more common in China and Germany it was surprising to see how rapidly a chip designer such as Qualcomm was granted a preliminary injunction (not easy to get in the USA) against the Apple iPhone in China and a permanent injunction in Germany with no injunctive relief in sight in United States. Yes, these events suggest key patent litigation disputes may be decided on the "other side" of the earth.

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, December 18, 2018

Frakes & Wasserman - Irrational Ignorance at the Patent Office

Frakes & Wasserman, Irrational Ignorance at the Patent Office (2018) revisit the merit of Lemley, Rational Ignorance at the Patent Office (2001).

From the Abstract:

"There is widespread belief that the Patent Office issues too many bad patents that impose significant harms on society. At first glance, the solution to the patent quality crisis seems straightforward: give patent examiners more time to review applications so they grant patents only to those inventions that deserve them. Yet the answer to the harms of invalid patents may not be that easy. It is possible that the Patent Office is, as Mark Lemley famously wrote, “rationally ignorant.” In Rational Ignorance at the Patent Office, Lemley argued that because so few patents are economically significant, it makes sense to rely upon litigation to make detailed validity determinations in those rare cases rather than increase the expenses associated with conducting a more thorough review of all patent applications. He supported his thesis with a cost-benefit calculation in which he concluded that the costs of giving examiners more time outweighs the benefits of doing so.

Given the import of the rational ignorance concept to the debate on how best to address bad patents, the time is ripe to revisit this discussion. This Article seeks to conduct a similar cost-benefit analysis to the one that Lemley attempted nearly fifteen years ago. In doing so, we employ new and rich sources of data along with sophisticated empirical techniques to form novel, empirically driven estimates of the relationships that Lemley was forced, given the dearth of empirical evidence at his time, to assume in his own analysis. Armed with these new estimates, this Article demonstrates that the savings in future litigation and prosecution expenses associated with giving examiners additional time per application more than outweigh the costs of increasing examiner time allocations. Thus, we conclude the opposite of Lemley: society would be better off investing more resources in the Agency to improve patent quality than relying upon ex-post litigation to weed out invalid patents. Given its current level of resources, the Patent Office is not being “rationally ignorant” but, instead, irrationally ignorant."

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, December 12, 2018

IP Watchdog - Christmas Gifts for Patent Attorneys and Inventors - One More to the List - David Hricik and Mercedes Meyer Patent Ethics: Prosecution

Today, Gene Quinn of IP Watchdog says "no need to panic" and lists: Christmas Gifts for Patent Attorneys and Inventors.

I am not looking for a gift, but wish to add: David Hricik and Mercedes Meyer Patent Ethics: Prosecution (2016-2017). As stated in chapter 1: "This book comprehensively addresses ethical issues that face patent lawyers, patent agents, companies, and firms that prosecute and opine about patents. This edition also now includes a chapter devoted to post-disposition proceedings, including inter partes review under the AIA."

Not seeing anything like it on Amazon I ordered the Kindle version this week. I am still browsing this substantial book, but so far it appears very useful. I suggest review of the table of contents on Amazon to see what's covered. My mild criticism is this Kindle book is expensive, but still consider it money well spent given what's at stake. It's not the issues on "our ethics radar" that tend to cause problems -- it's the issues that aren't. This book should help spot ethics issues before they cause harm, which is "a gift that keeps on giving."

Copyright © 2018 Robert Moll. All rights reserved.

Monday, December 10, 2018

AIPLA/IPO/ABA-IPL Joint Principles Paper on Section 101

AIPLA/IPO/ABA-IPL Joint Principles Paper on Section 101 calls for Congress to remedy uncertainty in 35 U.S.C. §101 and return balance to the U.S. patent system.

Copyright © 2018 Robert Moll. All rights reserved.

CNBC - Apple recovers losses after Chinese court bans sale of most iPhones

The CNBC article Apple recovers losses after Chinese court bans sale of most iPhones tells us Qualcomm was able to get an injunction that bans sale of iPhones in China. A few infringed Qualcomm patents can apparently shut down significant iPhone sales in China. Even if the injunctive relief is overturned this sounds disruptive.

Copyright © 2018 Robert Moll. All rights reserved.

Saturday, December 8, 2018

Bloomberg Law - Justice Department Exits Joint Patent Policy with PTO

If you own or deal with standard essential patents (SEP), you may want to read the Bloomberg Law article Justice Department Exits Joint Patent Policy with PTO:

"The Department of Justice has withdrawn from a joint policy with the Patent and Trademark Office on standard-essential patents.

The 2013 agreement, in which the two agencies said it should be difficult for patent owners to block sales or imports of products based on their use of patents in industry standards, no longer reflects the department’s policy on anticompetitive behavior, Assistant U.S. Attorney General Makan Delrahim said in a Dec. 7 speech in Palo Alto, Calif.

Delrahim, the department’s antitrust chief, said his division will work with the PTO to replace the policy."

Copyright © 2018 Robert Moll. All rights reserved.

Friday, December 7, 2018

WIPO - World Intellectual Property Indicators 2018 - Global IP Activity

WIPO recently published the World Intellectual Property Indicators 2018. It is detailed 231-page  look at global IP (e.g., patent and trademark) activity:

From the Foreword:

"Against the backdrop of solid economic growth worldwide, global intellectual property (IP) filing activity set new records in 2017. Patent filings around the world reached 3.17 million, representing a 5.8% growth on 2016 figures. Trademark filing activity totaled 12.39 million, up 26.8% on 2016. Industrial design filing activity exceeded 1.24 million. China remained the main driver of global growth in IP filings. From already high levels, patent filings in China grew by 14.2% and trademark filing activity in China by 55.2%. These high growth rates propelled China’s shares of global patent filings and trademarks filing activity to reach 43.6% and 46.3%, respectively. Japan (+24.2%) and the United States of America (+12.6%) also saw strong growth in trademark filing activity. However, both of those countries recorded almost no growth in patent filings. The Republic of Korea saw a decline in filing activity for patents and trademarks for the second consecutive year. Other notable trends include large increases in trademark filing activity in the Islamic Republic of Iran (+87.9%), the United Kingdom (+24.1%) and Canada (+19.5%). With regard to industrial design filing activity, the United Kingdom (+92.1%), Spain (+23.5%) and Switzerland (+17.9%) saw double-digit growth in 2017."

Copyright © 2018 Robert Moll. All rights reserved.

Thursday, December 6, 2018

Supreme Court - Helsinn Healthcare S.A. v. Teva Pharmaceutical USA, Inc. - Hearing Transcript

The United States Supreme Court held a hearing in Helsinn Healthcare v. Teva Pharmaceutical this week.

The issue: "Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention."

For additional details see the hearing transcript and Professor Ronald Mann's argument analysis and America Invents Act - On Sale Bar, 35 USC 102

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, December 5, 2018

USPTO - Trademark Manual of Examining Procedure (TMEP)

This Fall the USPTO announced publication of the latest Trademark Manual of Examining Procedure (TMEP):

"This revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board and court decisions reported before Sept. 15.

This revision supersedes prior versions of the TMEP, examination guides, or any other statement of USPTO policy to the extent that there is any conflict.

For a complete list of changes, see the Change Summary."

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, December 4, 2018

PTAB - Hearsay & Authentication Webinar - December 6, 2018

The USPTO announced a webinar on hearsay and authentication practice before Patent Trial and Appeal Board (PTAB):

"We are hosting a Boardside Chat webinar this Thursday, Dec. 6 from noon to 1 p.m. ET about hearsay and authentication before the board. Lead Judge Michael Zecher along with Judge Tom Giannetti and Judge Grace Obermann will present.

The webinar is free and open to all. There will be a Q&A session at the end of the presentation, so please send questions in advance or during the webinar to

More information, including the webinar access information, is available on the PTAB "Boardside Chat" webinar series webpage of the USPTO website."

Copyright © 2018 Robert Moll. All rights reserved.

Monday, December 3, 2018

United States Courts - The Patent Process: An Overview for Jurors

In 2013, the United States Courts published a video on YouTube: The Patent Process: An Overview for Jurors to help jurors. It is a nice introduction on US patents in plain English.

Copyright © 2018 Robert Moll. All rights reserved.

Sunday, December 2, 2018

Farre-Mensa et al. - What is a Patent Worth? Evidence from the U.S. Patent "Lottery"

Because of the expense of patenting in the United States, it can be a challenge for a startup to determine whether or not to seek patent protection. Some argue it's waste of money because even if a patent is obtained a startup cannot afford to enforce patent rights. If enforcement makes economic sense and the startup IPOs, it can afford it, and if the startup is acquired, the acquiring company typically has more resources.

Some argue in favor of patenting as a way to increase investor interest. For example, here's support for that view: Farre-Mensa et al., What is a Patent Worth? Evidence from the U.S. Patent "Lottery". As stated in the abstract: "We provide evidence on the value of patents to startups by leveraging the random assignment of applications to examiners with different propensities to grant patents. Using unique data on all first-time applications filed at the U.S. Patent Office since 2001, we find that startups that win the patent “lottery” by drawing lenient examiners have, on average, 55% higher employment growth and 80% higher sales growth five years later. Patent winners also pursue more, and higher quality, follow-on innovation. Winning a first patent boosts a startup’s subsequent growth and innovation by facilitating access to funding from VCs, banks, and public investors."

Copyright © 2018 Robert Moll. All rights reserved.