Thursday, July 18, 2019

USPTO - AIA Trial Guide Updated in July 2019

The USPTO updated the America Invents Act (AIA) Trial Practice Guide (TPG) for attorneys before the Patent Trial and Appeal Board (PTAB).

The updates include guidance on:
  • "Factors that may be considered by the Board in determining when additional discovery will be granted 
  • The revised claim construction standard to be used in IPR, PGR, and CBM proceedings 
  • The submission of testimonial evidence with a patent owner preliminary response 
  • Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent
  • Motion to amend practice
  • Factors that may be considered by the Board in determining whether to grant a motion
  • Procedures to be followed when a case is remanded
  • Procedures for parties to request modifications to the default protective order"
Also see the AIA Trial Practice Web page.

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, July 3, 2019

IP Watchdog - As Congress Contemplates Curbing Alice, More Than 60% of Issued U.S. Patents are Software Related - Brief Comment

Congress needs to pass predictable patent eligibility law for software related inventions.

Patent eligibility is too unpredictable since the U.S. Supreme Court's Alice decision. Sure, some software inventions don't deserve a U.S. patent as the claims lack novelty or would have been obvious, but once we step away from a prior art analysis under 35 U.S.C. 102/103 and clarity, enablement and written description requirements of 35 U.S.C. 112, decision-makers (i.e., judges and examiners) have opportunity to abstract (generalize) a patent claim based on subjective opinion then assert without evidence the rest the claim language isn't significantly more.

We also need clarity on patent eligibility for the sake of industries that are not part of the traditional software industry. For example, Raymond Millien's As Congress Contemplates Curbing Alice, More Than 60% of Issued U.S. Patents are Software Related and McKinsey's Ondrej Burkacky's Rethinking car software and electronics note the growing importance of software in the car industry. Could it be true that a car contains 150 million lines of code?

Should the United States let more than half the U.S. patent filings which related to software languish under the unpredictable patent eligibility Alice test? Arguing Alice is not all that bad and consistent with centuries of court precedent or that we now have a Chinese foreign patent troll problem are the latest shaky excuses. See e.g., career patent litigator John Vandenberg's hearing testimony.

Congress has not acted on this issue for five years since the Alice decision. I guess I shouldn't be surprised. But as Justin Bieber might say "What up Congress?"

Copyright © 2019 Robert Moll. All rights reserved.

Monday, July 1, 2019

PTAB - Four More Informative Decisions applying the 2019 Patent Eligibility Guidelines Pertaining to 35 USC 101

Today, the USPTO designated four more decisions informative in applying Revised Patent Subject Matter Eligibility Guidelines (2019).

As stated in the USPTO press release today:

"Ex Parte Olson, Appeal 2017-006489 (PTAB Mar. 25, 2019)
The claims at issue recite a method of registering a catheter navigation system to a three-dimensional image. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.

Ex Parte Kimizuka, Appeal 2018-001081 (PTAB May 15, 2019)
The claims at issue recite a method for fitting a golf club. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mental process, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.

Ex Parte Savescu, Appeal 2018-003174 (PTAB Apr. 1, 2019)
The claims at issue recite a method for creating a life cycle workflow for a project. This decision affirms the rejection of the claims under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a method of organizing human activity, and determined that the claims do not integrate the exception into a practical application or provide an inventive concept.

Ex Parte Fautz, Appeal 2019-000106 (PTAB May 15, 2019)
The claims at issue recite a magnetic resonance tomography apparatus. This decision reverses the rejection by the examiner under 35 U.S.C. § 101. The Board concluded that the claims recite a judicial exception, a mathematical concept, but that the claims recite additional elements that integrate the judicial exception into a practical application.

These informative decisions can be found on the PTAB’s Precedential and Informative Decisions page of the USPTO website."

Copyright © 2019 Robert Moll. All rights reserved.