Federal Circuit - Apple v. Samsung - Obviousness

In Apple v. Samsung, the Federal Circuit reversed a jury verdict awarding Apple $119 million and invalidated two Apple's patents for obviousness on February 26, 2016.

The Federal Circuit held the asserted claims of US Patent No. 8,046,721 (slide-to-unlock) and US Patent No. 8,074,172 (automatic spell correction) would have been obvious given: (1) a strong prima facie case of obviousness (claims reciting a predictable use of prior art elements according to established functions), and (2) weak evidence of secondary considerations. For details see pages 14-35 of the opinion.

Copyright © 2016 Robert Moll. All rights reserved.

USPTO - Roundtable on International Harmonization of Substantive Patent Law on November 19, 2014

The USPTO is hosting a roundtable on international harmonization of substantive patent law on November 19, 2014:

"The United States Patent and Trademark Office (USPTO) is seeking input on certain matters relating to the international harmonization of substantive patent law. In view of the importance of harmonization of substantive patent law to the successful reutilization of the examination work of one intellectual property office by another, or work sharing, the USPTO is particularly interested in stakeholder comments on the following key patent examination-related issues the definition and scope of prior art; the grace period; and standards for assessing novelty and obviousness/inventive step. To assist in gathering this information, the USPTO is holding a public roundtable which interested members of the public are invited to attend."

When: Registration at 8:00 am and roundtable at 8:30 am

Where: USPTO, 600 Dulany Street, Madison Auditorium, Concourse Level, Alexandria, VA 22314.

It seems the international harmonization discussion should include 35 USC 101 patent eligibility.

Copyright © 2014 Robert Moll. All rights reserved.

Professor Duffy - In Favor of "Good Property-Defining Institutions" and Opposed to Bad Reforms

Tonight, I suggest reading Professor Duffy In Favor of "Good Property-Defining Institutions" and Opposed to Bad Reforms. Professor Duffy is once again right and stands out from the crowd.

He starts by noting the America Medical Association opposition to patented medicines in the 19th century. Patented medicines weren't only bad, they were unethical! An AMA member, congressman, and head of a congressional committee "recommended as an important measure of reform legislation banning all patents on medicines." That sounds like what I am hearing about software inventions.

But as Professor Duffy notes we should be skeptical of sweeping reform: "Worrying about matters such as patent law’s obviousness doctrine has none of the flamboyance of a call to eliminate all software patents, but the targets of reform can be the same. Eli Dourado rightly criticizes Amazon’s 1-click patent as an example of a “low-quality software patent.” So have I—repeatedly. But the problem with the 1-click patent is not that it’s on software but that it’s “low-quality”—it’s trivial; it’s obvious. The right solution to such “low-quality software patents” is not to get rid of all software patents (low-quality and high-quality), but to do a better job of getting rid of all low-quality patents (software or not). That’s not a flashy “let’s-kill-all-the-software-patents” approach. It’s boring; it’s incremental. But if the goal really is to get “good property-defining institutions” rather than simply to abolish property rights across fields of innovation, such incremental, boring improvements are what’s needed."

Copyright © 2014 Robert Moll. All rights reserved.

I/P Engines, Inc. v. AOL, Google et al. Federal Circuit Holds US Patents Invalid & Stock Drops 70%

One of the more interesting software patent cases decided this year is I/P Engines, Inc. v. AOL, Google, et. al., because of the large damages at stake that led extensive arguments related to patent defenses (e.g., invalidity, non-infringement, laches, etc.).

Today, Mr. Joe Mullin reports the Federal Circuit (CAFC) agreed with some of the arguments and reversed Vringo's $30M damages and cut off future royalties on Google Ad words. See Mr. Mullin's article: After years of hype, patent troll Vringo demolished on appeal: Vringo stock drops 70%, as Google shuts down dreams of a billion-dollar payday. Note Vringo established I/P Engines as a patent holding company.

For a PDF copy of the CAFC decision: I/P Engines, Inc. v. AOL, Google, et al.

Although this per curiam decision is non-precedential, it reminds that sufficient legal resources can overturn even fact findings underlying a judgment of non-obviousness.

The concurrence showed how 35 USC 101 and 103 analysis continues to be conflated: "There is, of course, some 'overlap' between the eligibility analysis under section 101 and the obviousness inquiry under 35 U.S.C. § 103. Section 103, however, asks the narrow question of whether particular claims are obvious in view of the prior art. By contrast, the section 101 inquiry is broader and more essential:  it asks whether the claimed subject matter, stripped of any conventional elements, is ‘the kind of discovery that the patent laws were intended to protection."

Software patent cases such as this one may be difficult to decide, but it's hard to applaud rewriting a claim, concluding "the claim" is a patent-ineligible abstract idea, and labeling that activity as defending our Constitution. Is it just a concurring judge or the precursor of 35 USC 101 analysis?

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Examination Guidance and Training Materials

The USPTO has published resources (PDF and Powerpoint slides) that should prove helpful to both applicants and examiners in working through Office actions.

For details see Examination Guidance and Training Materials that discusses:

• Guidelines for determining compliance with 35 USC 112, including identifying limitations that invoke 35 USC 112(f), means-plus-function limitations
• Evaluating subject matter eligibility under 35 USC 101
• Rules of Practice Before the BPAI in Ex Parte Appeals (also useful for PTAB)
• Examination Guidelines in view of KSR Int'l. Co. v. Teleflex Inc. (Obviousness)
• Best Practices in Compact Prosecution
• Interview Practice

Copyright © 2014 Robert Moll. All rights reserved.

USPTO - Final Rules and Examination Guidelines to Implement the First-Inventor-to-File Provision of the America Invents Act

Today, the USPTO published the final Rules implementing the first-inventor-to-file provision of the America Invents Act (AIA) effective on March 16, 2013.

See the Federal Register publications: Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act and Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines

The USPTO also published guidelines setting forth its interpretation of how the first inventor to file provision changes the current novelty and obviousness requirements. The guidelines inform how the law has changed (expanded) the scope of prior art and changed (narrowed) the scope of the grace period.

The Acting Director of the USPTO Teresa Stanek Rea states: "Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."

Usually if the law changes radically, a litigant will push for a favorable interpretation of the new law. Until the court decisions build up and limit possible interpretations, the law is likely to be less predictable. On the other hand, the first inventor to file system provision may bring greater predictability in the long term, since many priority disputes will be resolvable by filing date.

On the flip side, unpredictability may arise in the new derivation proceedings that are intended to ensure a person will not be able to obtain a patent even when filing first for an invention that he or she did not actually invent. The scope of the one-year grace period is another area to expect unpredictability. Sure patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures, but what happens when the third party disclosure is not identical to the "first" inventor's disclosure? Do we have a one-year grace period against the third party disclosure? Further, do we have a grace period for an third party offer for sale or public use? Thus, unpredictability exists on the grace period of the new law.

The migration to the first inventor to file system is another step toward harmonizing U.S. patent law with that of the rest of the world, but the US definition of prior art and scope of the grace period is different. And the steps proceed in parallel for better or worse. For example, the USPTO implemented a common classification system for the USPTO and the EPO to enhance examination on January 1, 2013. The so-called Tegernsee Group is another effort to harmonize patent law among the major offices.

The USPTO is also giving a fair level of customer support. It will give more information on the first-inventor-to-file provision at a public training session held at the USPTO in Alexandria, Virginia on March 8, 2013, which will also be available on the Web. See details at www.uspto.gov/americainventsact. Also one may contact the AIA help line at 1-855-HELP-AIA (1-855-435-7242) or send an email to helpaia@uspto.gov for first-inventor-to-file and other AIA questions. The USPTO also suggests if we have questions regarding the final rules to call Ms. Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711 and direct questions about the first-inventor-to-file final examination guidelines to Ms. Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.

Copyright © 2013 Robert Moll. All rights reserved.

Richard Stallman and Professor Duffy Clash - Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012

I signed up for the Santa Clara University Law School conference Solutions to the Software Patent Problem then nearly decided to skip it. I didn't need the MCLE and I didn't want to take the day off. It sounded like rain, traffic, etc. Further, I didn't feel like listening to proposals all day long to eliminate or reduce the value of software patents. I didn't expect a warm welcome as a software patent attorney either. Maybe I would be viewed as part of the problem! Yet I felt compelled to attend to hear how others might eliminate my job fixing the "software patent problem."

Despite these misgivings, it was a good conference with 34 presentations! The caliber of the speakers made it interesting and each had ten minutes to propose a solution to the software patent problem.

Of course part of any good conference is meeting people and seeing old friends at the breaks. I talked with my colleague and friend Michael Barclay about his hobby of learning difficult guitar pieces, Eric Clapton's habit of self-recording before he joined John Mayall, the book Guitar Zero about a NYU professor's sabbatical learning the guitar and to check out Eric Clapton's isolated track of "While my guitar gentle weeps" on Youtube.

I didn't convince Joe Mullin, the prolific journalist at ars technica, that Apple's damage award against Samsung is needed to address the free riding problem. Joe said all of the similarities between the Samsung products and Apples patents were just the result of competition.

I met Richard Stallman, founder of the Free Software movement, and fabulous hacker of Emacs and GNU used with the Linux OS. He convinced me that the latest revision of his book was worth getting and gave me "GNU and Linux - the Dynamic Duo" stickers for my kids. We have to convince the kids, right? I had an interesting talk with a patent damages expert, Elvir Causevic of Ocean Tumo, and met SCU law students such as Michael Quinn and William Jacobs, and others. No one seemed to cared if you were an academic, an executive, a public interest advocate, a businessman, an entrepreneur, or even a software patent attorney.

It is too late tonight to summarize all the proposed solutions but if you are interested, I would start by reviewing Santa Clara Law School's conference resources page. Note the conference was both streamed (except for Richard Stallman's talk - he did not want to use any Microsoft product) and videotaped.

Most speakers proposed various changes to US patent law, PTO rules, and/or how they are implemented today. For example, Professor Love argued patent trolls often assert patents near the end of the term so we could cut that problem off by increasing the cost or frequency of maintenance fees. Professor Arti Rai argued the PTO needed to rigorously apply the written description requirement. Professor Lemley argued that we need to eliminate functional claiming. Claims should not be interpreted to cover all implementations of a given function, but just the structures and equivalents described in the specification that perform the function. Some of the solutions were thought provoking, but as the day wore on, some speakers noted there would be no silver bullet.

Professor John Duffy of University of Virginia Law School proposed we must raise the nonobvious requirement. It seemed persuasive and likely to be adopted in practice. He had read some speech recognition patents and saw the value in patent protection of such complex computer software related inventions. He said patents are needed to induce these types of inventions. To Professor Duffy "worse than a patented technology that burdens the public is not having a technology at all."

Professor Duffy seemed to be building upon his paper with Professor Abramowicz's The Inducement Standard of Patentability, Yale Law Journal, 2010 that noted in Graham v. Deere the Supreme Court held the nonobviousness requirement was intended to limit patents to only those inventions which would not be disclosed or devised but for the inducement of a patent.

During the Q&A following Professor Duffy's presentation, Professor Duffy suggested something that could be taken as criticism of Richard Stallman's proposal. Richard raced from the back of the room to the front and was handed a microphone. He shouted "So many stupid insults—and mistakes! I proposed a way to solve the problem! It's elegant, and it gets right to the point. Your criticisms are completely wrong." His proposal? Deem all computer related patents not infringed. For details see: Stallman, Let's Limit the Effect of Software Patents, Since We Can't Eliminate Them

As to the need to induce inventions? Mr. Stallman's response: Consider the MP3 patent that caused a lot of harm. It's not trivial, it came from a research institute. But we can fund research institutes in other ways. Okay, but before we abolish software patent protection tell me exactly what are the other ways and how do we know it will be better? Will falling back to a trade secret regime be better?

Professor John Duffy seemed to be taken aback by Mr. Stallman's heart felt comments, but noted he respected Mr. Stallman's views to which Mr. Stallman responded don't give me your irrelevant flattery. I like Mr. Stallman's bracing honesty and he is a very smart guy, but Professor Duffy's proposal seemed more likely to be adopted than Richard Stallman's.

Given this type of exchange, the money involved, I don't expect the software patent controversy to end. We have debated solutions, and the PTO, federal courts, the CAFC, and even the Supreme Court have given inconsistent and confusing guidance on software patents for 40 years. I hear we don't even agree on the definition of a software patent. This conference was worthwhile, but mainly gave notice the software patent debate is not likely to end soon.

Updated Nov. 27, 2012: Professor Risch does a great job of articulating the software patent debate in his article today: Two Software Worlds

Copyright © 2012 Robert Moll. All rights reserved.

America Invents Act - Proposed Rules and Examination Guidelines for First Inventor to File

Today, the USPTO published the proposed rules and examination guidelines for the first-to-file provision of the America Invents Act (AIA). This was a much debated change in U.S. patent law from first to invent. PDF copies of the PTO's proposed rules and examination guidelines and discussion on how this will impact novelty and obviousness can be obtained by clicking on the following links:

First-Inventor-to-File Proposed Rules

First-Inventor-to-File Proposed Examination Guidelines

Public comment on the proposed rules and guidelines are due no later than October 5, 2012, and the final rules will become effective on March 16, 2013.

Copyright © 2012 Robert Moll. All rights reserved.

Plasmart v. Kappos & Wang - Federal Circuit Reverses Validity in Inter Partes Reexamination - Non-Precedential Opinion

Let's talk about the Federal Circuit's recent decision Plasmart, Inc. v. Kappos & Wang that reversed the Board of Patent Appeal's decision that all claims were patentable during an inter partes reexamination.

Unlike many of the tech inventions, you may have seen this one ... at least it's in my driveway -- it's the ever present twistcar. It's not recommended for adults, but you simply twist the handlebars to make it go. See U.S. Patent No 6,722,674 (the '674 patent). Briefly, the invention relates to a safety wheel 24 added to prevent a scooter from flipping over. The wheel 24 is connected to the free end of a supporting arm (23) that extends frontwardly from a twister member (2) to which a pair of driving wheels (21 and 22) are also attached. See col.3, lines 30-45 and Figures 4 and 5.

Even though Plasmart is "low tech" some real money is at stake, the case was worth reading and 55 comments on Patently-O's article suggested others felt the same way. I was surprised that the case was so analyzed and discussed and yet only one comment noted it is a non-precedential opinion.

As a non-precedential opinion Plasmart has limited utility, because it is not the law and cannot be cited in legal briefs. Despite its depth of analysis, what it would add to the body of the law and how prospective defendants might like to cite it, Federal Circuit Rule 47.6(b) says it cannot be be cited as precedent. One commentator recently noted 80% of federal court opinions are designated non-precedential. Yet, the Federal Circuit warns any attorney using a non-precedential opinion in a brief (See In re violation of Rule 28(c)) would violate the Federal Rules of Appellate Procedure or the CAFC Local Rules of Practice and likely be sanctioned.

Copyright © 2012 Robert Moll. All rights reserved. 

Kappos v. Hyatt - 35 USC § 145 Proceedings Allow New Evidence Beyond Record in PTO

In Kappos v. Hyattt, 132 S.Ct. 1690 (2012), the Supreme Court gave a favorable standard for patent appellants that need to introduce evidence after losing on appeal to the Board of Patent Appeals and Interferences (Board).

If the Board affirms the examiner's rejections under 35 USC  §131 a patent applicant has two options: (1) a direct appeal to the Federal Circuit under 35 USC §141; or (2) an action against the PTO Director in federal district court under 35 USC §145. One can also abandon the application or file a continuation, but one unwilling to narrow the rejected claims in the continuation should not expect much.

Harold Wegner notes that a direct appeal to the Federal Circuit is a long shot, because an appellant will not be able to challenge the facts if there is "substantial evidence" to support the facts, which means the Federal Circuit will not reverse the Board’s decision on facts if a reasonable mind might accept the evidence as adequate to support a conclusion. For example, this standard would apply to the Board's factual findings underlying a legal conclusion of obviousness.

In Kappos v. Hyatt, the Supreme Court found no limits on applicants ability to introduce new evidence in a 35 USC § 145 proceeding beyond the limits set forth in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. Further, Supreme Court held if new evidence is presented on a question of fact, the district court must make de novo (i.e., anew) findings that consider the new evidence and the USPTO record.

Companies are stretching to keep legal costs low. The majority had reasoned that "purposely concealed evidence" in the PTO was unlikely since it would undermine the case. However, given today's tight budgets, some may want seek to not file all of the favorable evidence such as that contained in declarations to avoid the expense and risk. However, holding back some favorable evidence may risk some court holding it was "purposely concealing evidence" rather than "reasonable management of legal costs" and that the evidence should not have been admitted by the district court.

In the past, appellants rarely filed a 35 USC § 145 action. Instead, most appealed directly to the Federal Circuit. Now I expect Kappos v. Hyatt will encourage more to file a 35 USC 145 action when (1) a continuation is unlikely to result in claim coverage that properly protects the invention, and (2) appellants need to introduce new evidence in the record in support of patentability.

Finally, I should note those losing an AIA post-grant proceeding at the Board will need to appeal directly to the Federal Circuit and will not be allowed to file a 35 USC § 145 actions

Copyright © 2012 Robert Moll. All rights reserved.