Thursday, April 30, 2020

Supreme Court - Thyrv, Inc. v. Click-to-Call Technologies, LP - No Appeal from PTAB's One Year Time Bar Decision on IPR

In Thyrv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that a Patent Trial and Appeal Board (PTAB) determination on whether a petition is filed timely for inter partes review (IPR) is not appealable.

As background, an IPR permits a petitioner to request the review the validity of claims in view of written prior art. To institute the review, PTAB must find that the petitioner is likely to succeed with respect to at least one claim and the petition was timely filed (within one year of service of an infringement complaint).

In other words, the Supreme Court states 35 USC § 314(a) permits the patent owner no appeal to the Federal Circuit from an incorrect PTAB decision that a petition was timely filed as required in 35 USC § 315(b). Note in this case the infringement complaint (dismissed without prejudice) was filed 12 years before the IPR petition!

Thus, a patent owner must make every effort to win on the merits of the institution decision and the untimeliness of the petition before PTAB. On the other hand, if the IPR is instituted, the patent owner can still appeal a final decision of invalidity to the Federal Circuit.

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, April 29, 2020

Federal Circuit - Hologic v. Minerva Surgical - Assignor Estoppel Does not Bar PTAB Invalidity Decision

In Hologic v. Minerva Surgical, the Federal Circuit held assignor estoppel barred the assignor from asserting invalidity of a patent in district court, but not the assignor relying on the Federal Circuit's affirmance of PTAB invalidating claims of another patent in an inter partes review (IPR).

See further details in the opinion. One detail caught my eye as a patent attorney, Judge Stoll questioning if it is time to revisit assignor estoppel en banc (entire panel) on the construction of the America Invents Act (AIA) due to the illogical regime being perpetuated.

In the opinion on page 30:

"In Arista, we held that the judge-made doctrine of assignor estoppel does not apply in the context of an inter partes review. In other words, an assignor who sold his patent rights may file a petition for IPR challenging the validity of that patent. Arista Networks, Inc. v. Cisco System, Inc. At the same time, we continue to bar assignors from challenging in district court the validity of the patents they assigned. See, e.g., Mentor Graphics Corp.v. EVE-USA, Inc. 

Our precedent thus presents an odd situation where an assignor can circumvent the doctrine of assignor estoppel by attacking the validity of a patent claim in the Patent Office, but cannot do the same in district court. Do the principles underlying assignor estoppel—unfairness in allowing one
who profited from the sale of the patent to attack it—apply in district court but not in Patent Office proceedings?

Should we change the application of the doctrine in district court, or should we revisit our construction of the America Invents Act and reevaluate our interpretation of the statute as prohibiting the doctrine of assignor estoppel? Given the odd circumstance created in this case, I suggest that it is time for this court to consider en banc the doctrine of assignor estoppel as it applies both in district court and in the Patent Office.

We should seek to clarify this odd and seemingly illogical regime in which an assignor cannot present any invalidity defenses in district court but can present a limited set of invalidity grounds in an IPR proceeding. A petitioner in an IPR proceeding may request to cancel as unpatentable one or more claims of a patent, but “only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b)."

Copyright © 2020 Robert Moll. All rights reserved.

Friday, April 24, 2020

USPTO - Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International

The USPTO published a report: Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International. Here's a link to the Supreme Court's Alice v. CLS Bank decision.

The report indicates that the USPTO has taken measures (e.g., January 2019 Revised Patent Subject Matter Eligibility Guidance, "2019 Guidance") to increase the predictability of determinations of patent eligibility. For example, one year after the 2019 Guidance based on the Federal Circuit's Berkheimer v. HP decision, the likelihood of Alice-affected technologies receiving a first office action with a rejection for patent-ineligible subject matter had decreased by 25%.

This should encourage innovators with software related inventions to consider patenting.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, April 20, 2020

USPTO - Patent Center Beta Available

Today, the USPTO announced:

"Patent Center Beta is now available for all users. Patent Center is a new tool for electronic filing and management of patent applications in a single unified interface.

Patent Center and DOCX filing features:
Single unified interface for patent applicants
Use of existing accounts and sponsorships
Submission of the specification, claims, and abstract in a single DOCX document without the need to manually separate sections
Elimination of user conversion from DOCX into a PDF for filing
Security of documents through automatic DOCX metadata detection and scrubbing
Practice filing in DOCX format in Patent Center training mode

Electronic filing provides multiple benefits, such as immediate routing of documents to USPTO internal systems, an acknowledgement receipt to show that the USPTO has received the submission, reduced manual processing and paper waste, elimination of wait times associated with conventional mailing, and the ability to save your submission package to complete, review, or submit at a later time.

We encourage you to provide feedback on Patent Center Beta by visiting the eMod IdeaScale. Additionally, you can send questions and comments to

More information about Patent Center Beta is available on the Patent Center information page or you can register for an upcoming Patent Center Beta and DOCX training session.

For technical questions or assistance, please contact the Patent Electronic Business Center at or 866-217-9197."

Note this announcement arrived after all but April 21 and 23 USPTO training sessions had occurred. Also the USPTO plans to charge a $400 fee for non-DOCX applications. As a patent attorney, I think the USPTO has not shown any user benefit in filing an application in DOCX rather than PDF other than avoiding a fee. And early feedback from users is not favorable. Further electronic filing over paper is a red herring as both PDF and DOCX are electronic filing.

On April 27, the USPTO added training session dates but must register to attend:

  • April 30: 1-2 pm ET
  • May 4: 10:30-11:30 am ET
  • May 6: 2-3 pm ET

Copyright © 2020 Robert Moll. All rights reserved.

Friday, April 17, 2020

Federal Circuit - CardioNet, LLC v. InfoBionic, Inc. - Reversal of Patent Ineligibility of Cardiac Monitoring Technology

In CardioNet, LLC v. InfoBionic, Inc., the Federal Circuit reversed a district court decision that held CardioNet’s U.S. Patent No. 7,941,207 (the '207 patent) patent ineligible under 35 U.S.C. § 101 and CardioNet had filed a complaint that failed to state a claim under Federal Rule of Civil Procedure 12(b)(6).

The Federal Circuit concluded the claim 1 and other asserted claims of the ’207 patent related to a patent-eligible improvement to cardiac monitoring technology rather than an abstract idea, and reversed and remanded the case to the district court for further proceedings.

Claim 1 includes broad language that may be subject patent eligibility challenges reciting:

A device, comprising:
    a beat detector to identify a beat-to-beat timing of cardiac activity;
    a ventricular beat detector to identify ventricular beats in the cardiac activity;
    variability determination logic to determine a variability in the beat-to-beat timing of a collection of beats;
    relevance determination logic to identify a relevance of the variability in the beat-to-beat timing to at least one of atrial fibrillation and atrial flutter; and
    an event generator to generate an event when the variability in the beat-to-beat timing is identified as relevant to the at least one of atrial fibrillation and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector.

However, the Federal Circuit stated: "the language of claim 1 indicates that it is directed to a device that detects beat-to-beat timing of cardiac activity, detects premature ventricular beats, and determines the relevance of the beat-to-beat timing to atrial fibrillation or atrial flutter, taking into account the variability in the beat-to-beat timing caused by premature ventricular beats identified by the device’s ventricular beat detector. In our view, the claims 'focus on a specific means or method that improves' cardiac monitoring technology; they are not 'directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.'"

The patent owner's favorable outcome appears to be based on facts indicating the patent claims related to a technological improvement in cardiac monitoring rather than merely implementing known systems and techniques on a computer. The concurrence brought up the problem of determining whether an invention is long standing (conventional) without reference to prior art in step one of Alice v. CLS Bank.

Copyright © 2020 Robert Moll. All rights reserved.