Friday, November 22, 2019

PTAB - Consolidated AIA Trial Practice Guide November 2019

On November 20, 2019, the USPTO published the consolidated edition including the 2018-2019 updates and the original America Invents Act (AIA) Trial Practice Guide of 2012:
For additional information see the PTAB home page.

Copyright © 2019 Robert Moll. All rights reserved.

Friday, November 15, 2019

Supreme Court - Google v. Oracle - Copyright & Fair Use API

Today, the US Supreme Court granted Google's petition to review its copyright case with Oracle involving Google’s use of Oracle's application program interface (API).

Google's petition states two issues: (1) whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

See SCOTUS blog for details.

Google used 37 API packages and 7,000 lines of code to make it easier for Java programmers to write applications for the Android operating system. Given Google's resources, maybe not the best decision given this protracted legal battle.

Many amicus briefs supporting Oracle's APIs are not copyrightable and/or Google is making fair use. On the other hand, the Federal government recommended the Supreme Court deny Google’s petition. Finally, the Federal Circuit held the APIs are copyrightable and Google use is not fair use, but the Supreme Court has a track record of not affirming the Federal Circuit. Some commentators believe this case may be heard in early 2020.

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, November 13, 2019

District Court - Jury awards $200 million in damages for Wells Fargo's US patent infringement

Here's a sizeable US patent damage award relating to mobile devices. An ED Texas court jury awarded USAA $200 million in damages after finding Wells Fargo willfully infringed its patents that allow customers to use mobile devices to photograph and deposit checks without visiting a branch.

The complaint asserted: US Patent Nos. 8,699,7799,336,5178,977,571, and 9,818,090. I haven't studied these patents, but what jumps out is the substantial disclosure of prior art.

The press release says nearly every US bank and credit union uses this technology, benefiting 87 million US consumers so USAA isn't a patent troll. See press release for details.

Of course, this case is not over yet. Wells Fargo filed petitions for inter partes review (IPR) seeking to invalidate the USAA patents in the USPTO right after the jury decision. Given the stakes, one would expect that IPRs were filed within one year of the service of the patent infringement complaint filed in June 2018. See 35 U.S.C. § 315(b).

PTAB refused to institute covered business method (CBM) which would have permitted an Alice challenge in October 2019.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, November 12, 2019

USPTO - How to use DOCX in EFS-Web and PAIR

The USPTO is hosting free public seminars on filing US patent applications in the DOCX format.

The first DOCX Information Session is 11 am - noon on Wednesday, November 13 (PST).

The USPTO says DOCX as an efficient way to file a patent application in structured text and plans to explain the DOCX format, how you can use it, and its benefits.

The USPTO says "a problem" is the abstract, specification, and claims reside in three files. PDF files can be combined in seconds (click three boxes in PAIR) so maybe a solution in search of a problem, but I will update if there is a more significant advantage to this filing format.

Copyright © 2019 Robert Moll. All rights reserved.