Tuesday, July 28, 2020

Federal Circuit - Packet Intelligence LLC v. NetScout Systems, Inc. - Claims Patent Eligible under 35 USC 101

In Packet Intelligence LLC v. NetScout Systems, Inc., the Federal Circuit held claims patent eligible under 35 USC § 101.

Athough Packet Intelligence alleged infringement of three US patents, the patent eligibility issue was analyzed using representative claim 19 of US Patent No. 6,954,789:

19.  A packet monitor for examining packets passing through a connection point on a computer network, each packet conforming to one or more protocols, the monitor comprising:

    (a) a packet acquisition device coupled to the connection point and configured to receive packets passing through the connection point;

    (b) an input buffer memory coupled to and configured to accept a packet from the packet acquisition device;

    (c) a parser subsystem coupled to the input buffer memory and including a slicer, the parsing subsystem configured to extract selected portions of the accepted packet and to output a parser record containing the selected portions;

    (d) a memory for storing a database comprising none or more flow-entries for previously encountered conversational flows, each flow-entry identified by identifying information stored in the flow-entry;

    (e) a lookup engine coupled to the output of the parser subsystem and to the flow-entry memory and configured to lookup whether the particular packet whose parser record is output by the parser subsystem has a matching flow-entry, the looking up using at least some of the selected packet portions and determining if the packet is of an existing flow; and

    (f) a flow insertion engine coupled to the flow-entry memory and to the lookup engine and configured to create a flow-entry in the flow-entry database, the flow-entry including identifying information for future packets to be identified with the new flow-entry, the lookup engine configured such that if the packet is of an existing flow, the monitor classifies the packet as belonging to the found existing flow; and if the packet is of a new flow, the flow insertion engine stores a new flow-entry for the new flow in the flow-entry database, including identifying information for future packets to be identified with the new flow-entry, wherein the operation of the parser subsystem depends on one or more of the protocols to which the packet conforms.

The Federal Circuit stated in analyzing patent eligibility, we consider the claim as a whole and read it in light of the specification. The Federal Circuit observed patent-eligibility of computer and network technology often turns on whether claims recite a specific improvement in computer capability or an abstract idea for which computers are merely invoked as a tool.

The Federal Circuit stated that claim 19 was not directed to an abstract idea. Instead, it met a unique challenge to computer networks by describing how to identify disjointed connection flows in a network environment. In other words, the specification presented a new technological solution to a technological problem.

Copyright © 2020 Robert Moll. All rights reserved.

Friday, July 24, 2020

Federal Circuit - Uniloc 2017 LLC v. Hulu LLC - PTAB May Review Proposed Substitute Claims for Patent Eligibility in IPR

In Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit affirmed PTAB's determination that the patent owner's substitute claims proposed in a motion to amend were patent ineligible under 35 U.S.C. § 101 in an inter partes review (IPR).

As a reminder, IPR only permits challenges of US patent claims based on prior literature under 35 U.S.C. § 102 and 35 U.S.C. § 103. However, the Federal Circuit is now making a distinction with issued and substitute claims proposed in an IPR and states that PTAB may review substitute claims proposed by the patent owner for patent eligibility.

The dissent stated: "the majority breathes life into a dead patent and uses the zombie it has created as a means to dramatically expand the scope of inter partes review (“IPR”) proceedings. Because the Patent Trial and Appeal Board (“Board”) is estopped from issuing substitute claims in place of the invalidated claims of U.S. Patent No. 8,566,960 ("'960 patent") and because, even if the Board could issue such claims, it would be improper for it to consider 35 U.S.C. § 101."

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, July 15, 2020

USPTO - PTAB Motion to Amend Study Updated

The USPTO released an update to the PTAB Motion to Amend Study today.

It seems the data on motions to amend filed under the pilot program is insufficient at this stage to support it is less than a challenge to amend patent claims in PTAB trials.

Here's the USPTO summary:

"The Patent Trial and Appeal Board (PTAB) has published the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.

This installment completes the data on all motions to amend filed before the effective date of the New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board (84 FR 9497).

Highlights from the installment include:

Some limited data on motions to amend filed under the motion to amend pilot program that the office implemented for cases instituted on or after March 15, 2019.

Of the 5,359 trials that have gone to completion or settled, patent owners sought to amend the claims in 562 trials—504 pre-pilot program trials and 58 pilot program trials.

Of the 504 trials with pre-pilot motions to amend, the PTAB decided the merits of 335 motions. In the remaining 170 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or contained an amendment that only sought to cancel claims.

Of the 335 pre-pilot motions to amend that the PTAB decided, the PTAB granted or granted-in-part 46 motions. For 92% of the 289 motions denied or denied-in-part, the PTAB determined that the proposed amended claims did not satisfy at least one statutory requirement of patentability—akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter—or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. §§ 316(d) or 326(d).

For the limited number of motions to amend filed under the pilot program and included in the study, patent owners requested preliminary guidance in 83% of motions and filed a revised motion to amend in 58% of trials after receiving preliminary guidance (when taking into account cases that terminated, cases in which the motion to amend was withdrawn, or cases in which the deadline to file a revised motion to amend had not yet passed)."

Copyright © 2020 Robert Moll. All rights reserved.

Monday, July 13, 2020

Supreme Court - USPTO v. Booking.com - Generic.com can be federally registered

In USPTO v. Booking.com, the Supreme Court held a term styled "generic.com" can be federally registered as a mark if evidence supports that consumers consider the term to not mean a generic name of a class of goods or services.

Booking.com provides travel-reservation services and sought federal registration of the domain name: "Booking.com." The USPTO refused registration because it considered it a generic name for online hotel-reservation services. The courts below the Supreme Court sided with Booking.com.

It should be noted, the Supreme Court expressly rejected the USPTO's argument for a per se rule when a generic term (e.g., booking) is combined with an Internet-domain name suffix like “.com,” the resulting combination remains generic. Thus, we may see trademark surveys being filed in support of domain names.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, July 7, 2020

USPTO - Fast-Track Appeals Pilot Program - Decision within Six Months?

The USPTO announced a program to expedite decision for patent applications on appeal.

From the Federal Register:

"The United States Patent and Trademark Office (USPTO) is initiating the Fast-Track Appeals Pilot Program to provide for the advancement of applications out of turn in ex parte appeals before the Patent Trial and Appeal Board (PTAB). An appellant who has filed an ex parte appeal and received a notice that the appeal has been docketed may file a petition, accompanied by a petition fee, to expedite the review of his or her appeal. The Fast-Track Appeals Pilot Program sets a target of reaching a decision on the ex parte appeal within six months from the date an appeal is entered into the Pilot Program."

"The Fast-Track Appeals Pilot Program is offered on a temporary basis, and petitions to request inclusion of an ex parte appeal in the Pilot Program will be accepted until 500 appeals have been accorded fast-track status under the program, or until July 2, 2021, whichever occurs earlier. The USPTO may extend the Fast-Track Appeals Pilot Program (with or without modification) on either a temporary or a permanent basis, or may discontinue the program for either insufficient usage or after July 2, 2021."

For more details see the Federal Register Notice.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, July 6, 2020

Federal Circuit - Extensive Revisions to Rules and Forms

The Federal Circuit published Revisions to the Rules of Practice and the filing forms that must be respectively followed and used for cases pending on or after July 1, 2020.

Copyright © 2020 Robert Moll. All rights reserved.