PTAB - Appeals from Reexamination and from Examiner's Final Rejection - Webinar - Feb 2

The Patent Trial and Appeal Board (PTAB) is hosting a webinar on appeals from noon to 1 pm ET Tuesday, February 2, 2016.

It will discuss appeal practice from reexamination and from an examiner's final rejection.

Lead Judge Jeff Robertson and Judge Rae Lynn Guest will present and answer questions.

Webinar access information is below. https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=e792aa46e57a99d03d7945c393232401e

Event number: 994 178 459

Event password: 123456

Audio conference:

Call-in toll number (US/Canada): 1-650-479-3208

Access code: 994 178 459

Captions Link: http://www.captionedtext.com/client/embed.aspx?EventID=2839520

Copyright © 2016 Robert Moll. All rights reserved.

USPTO Confirms Validity All Claims of Steve Jobs Patent in Reexamination

Today, FOSS reports U.S. Patent Office confirmed all 20 claims of the Steve Jobs patent: bad for Samsung, Google.

U.S. Patent No. 7,479,949 to Steve Jobs et al. addresses the "need for touch-screen-display electronic devices with more transparent and intuitive user interfaces for translating imprecise user gestures into precise, intended commands that are easy to use, configure, and/or adapt ... in mobile computing devices."

Not only are all claims confirmed as patentable, the ex parte reexamination certificate states "no amendments have been made to the patent." Thus, an infringer cannot argue they obtained intervening rights. Of course, this allows damages up to six years before filing the patent infringement action. Further, this patent does not appear to be a standard essential patent (SEP) in any sense of the word and de facto SEPs has not caught on. So Apple may not only get damages, it may seek injunctions. Sure people are getting smarter about designing around, but tinkering with the UI risks annoying users into switching to an iPhone. I guess losing every aspect of an ex parte reexamination although rare has some not so fun implications. It may not bar validity challenges in court, but it may convince some courts that a validity challenge on similar literature should fail.

Copyright © 2013 Robert Moll. All rights reserved.

USPTO Confirms Validity of U.S. Patent No. 6,314,420, Which Vringo Asserts Against Google

On July 24, 2013, the USPTO issued a Notice of Intent to Issue Ex Parte Reexamination Certificate confirming the validity of all claims of U.S. Patent No. 6,314,420 (the '420 patent) that were challenged by Google. Despite the great results many are getting sometimes ex parte reexamination may not work as expected and could bolster the validity of the challenged patent.

For details see Vringo announces that USPTO confirms validity of the '420 patent asserted in litigation with AOL, Google, et al.

If you want to see the reexamination papers, please click on USPTO PAIR, select the control number button, and enter the control number: 90/009,991.

Some tend to place considerable importance on such reexamination decisions. In USPTO Checkmates Google Over Vringo Patents Seeking Alpha claims Google is in trouble. Really did it lose it's rights to appeal? What is at stake? You say a billion dollars? You may remember the jury upheld the validity of the '420 patent as well as another US Patent No. 6,775,664, and awarded the former owner I/P Engine $30.5 million based on a reasonable royalty of 3.5%. Why the relatively high royalty rate but modest damages given Google's scale? I discussed this in Vringo v. Google - Laches Dashing Expectations - From $493M to $31M. Let me say if unreasonable delay in bringing a patent infringement suit prejudices a defendant, a court can rule no damages accrued before the suit was filed.

Seeking Alpha claims Larry Page settled with Yahoo on the Adword related patents in 2004, but somehow bought the wrong patents. This is a silly argument. Most think Google was smart to license the Yahoo patents right before its IPO. Based on this ex parte reexamination decision, Seeking Alpha suggests Google should quickly buyout Vringo at $5-7/share before others realize Vringo is worth way more. It's funny, you disclose you are long and you will say quite a bit to "help out" your hope. Vringo's shares may have jumped this week because of the USPTO notice, but I expect the shares may settle back down as investors realize this ex parte reexamination decision hasn't resolved this dispute.

Copyright © 2013 Robert Moll. All rights reserved.

America Invents Act - Narrow Grace Period with High Cost

Under current law, the United States grace period protects an inventor from disclosure of the invention before the filing date. The grace period lasts for 12 months, is unconditional, and it doesn't matter who disclosed the invention.

Beginning March 16, 2013, the one-year grace period only protects a much more limited set of activities, namely, inventor disclosures and disclosures derived from the inventors. I discussed this in more detail in America Invents Act - Uncertain Grace Period for Filing US Patent Application. It's too bad the grace period has become so narrow especially for innovative startups that engage in pre-filing activities.

Not only is the new grace period narrow, it will be costly for applicants. The expense will show up in two ways. First, in prosecution if a prior art rejection is based on a disclosure that the inventor seeks to shield using the grace period, 37 CFR 1.130 requires a declaration describing the details and dates of inventor's disclosure and disclosure to others. Such a declarations will be time consuming and expensive, because it will require talking to all the people involved, and cross-checking facts. Second, to be effective the declaration must be 100% accurate. Even if the examiner allows the case based on the  declaration, litigators may have a large budget and time to attack the declaration as (1) incomplete; (2) inaccurate; and/or (3) misleading. Thus, it will add a large expense to prosecuting U.S. patent applications.

Further, these costs will be unavoidable if an applicants seeks to use the grace period to overcome a prior art rejection. If an applicant files a declaration that a court finds incomplete or inaccurate, the prior art that was overcome in prosecution may be used to invalidate the patent in litigation or in a post-grant proceeding. The patent owner may be forced to file reissue or reexamination papers. Of course this may result in intervening rights or no patent. If the court holds the declaration is misleading, the patent may be held unenforceable.

For a copy of the final rules, comments on the rules, and the examination guidelines please see USPTO - Final Rules and Examination Guidelines to Implement the First-Inventor-to-File Provision of the America Invents Act.

Copyright © 2013 Robert Moll. All rights reserved.

In re Baxter International - Federal Circuit Affirms Ex Parte Reexamination Invalidity Over Litigation Validity

In the recent case In re Baxter International, the Federal Circuit affirmed the Board's decision in an ex parte reexamination that claims 26-31 of U.S. Patent No. 5,247,434 (the '434 patent) are invalid despite the fact the Federal Circuit previously affirmed a federal court's decision that claims 26-31 were not invalid. That's startling! Doesn't the Federal Circuit agree with its previous decision? And no, it is not a matter of a different CAFC panel.

The Federal Circuit explained as follows:

"Lest it be feared that we are erroneously elevating a decision by the PTO over a decision by a federal district court, which decision has been affirmed by this court, the following additional comments must be made. When a party who has lost in a court proceeding challenging a patent, from which no additional appeal is possible, provokes a reexamination in the PTO, using the same presentations and arguments, even with a more lenient standard of proof, the PTO ideally should not arrive at a different conclusion. However, the fact is that Congress has provided for a reexamination system that permits challenges to patents by third parties, even those who have lost in prior judicial proceedings. Usually one would expect that any such reexamination, such as the one before us, would raise new issues. In this case, the patent examiner relied on new prior art that had not been raised in the prior district court proceeding. Why Fresenius [the defendant in related litigation] did not present that prior art before the district court we do not know. But the Director apparently found that a substantial new question of patentability had been raised and the examiner was then entitled to conduct a reexamination on the basis of the new art presented and her search of the prior art. Thus, this case is not about the relative primacy of the courts and the PTO, about which there can be no dispute. Finally, we could not conclude that the PTO was barred from conducting the reexamination of the ’434 patent because of the final judgment in Fresenius without over-ruling Ethicon and Swanson, which we cannot do."

In re Baxter International highlights ex parte reexamination is not subject to a legal estoppel from the court decision such as applies to inter partes reexamination. Further, it reminds that patent challengers have a lower evidentiary standard in ex parte reexamination than in federal court. In ex parte reexamination, the challenger must only prove invalidity by a preponderance (i.e., it's more likely than not); in court, the challenger must prove invalidity by clear and convincing evidence. Accordingly, ex parte reexamination may be preferably over litigation if you seek to prove a US patent is invalid over written prior art.

Copyright © 2012 Robert Moll. All rights reserved.

Post-Grant Proceedings Under the America Invents Act - The 12 Month Rule

On May 15, 2012, Teresa Stanek Rea of the USPTO posted: Building a Better Post Grant on Director Kappo's Blog. She talks about how the USPTO plans to build a better post-grant proceedings under the America Invents Act (AIA) that will serve as an efficient alternative to patent litigation. 

Ms. Stanek Rea states "Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals." Ms. Stanek Rea notes the AIA establishes post-grant review, inter partes review and the transitional program for covered business method patents by the Board of Patent Appeals and Interferences (Board) which will be referred to as the Patent Trial and Appeal Board.

Congress has limited the length of these post-grant proceedings to 12 months, plus six months for exceptional cases. To explain how the PTO will complete a post-grant proceedings in 12 months Ms. Stanek Rea states:

1. The PTO is adding many judges with considerable patent prosecution and litigation experience to the 120 judges currently on the Board.

2. The PTO's rule making will incorporate input from the user community, the PTO,  the federal court, the ITC,  and interferences.

3. The AIA's post-grant procedures rules will be streamlined to what is essential to decide the case. Thus, dilatory practices, wasteful motions, and procedural traps that drove older interferences to last 4-7 years will not be permitted.

4.  Judges will be given great latitude to shepherd cases to stay on schedule.

Although Ms. Stanek Rea envisions reaping the benefits of a straightforward process (e.g., a trial), implemented by experienced judges, resulting in a fair and efficient proceeding, the post doesn't address how the PTO will keep stay on such a tight schedule plus reduce the backlog of more than 30,000 ex parte appeals now pending.

Copyright © 2012 Robert Moll. All rights reserved.

Oracle v. Google - Copyright & Patent Trial

The focus of the Oracle v. Google trial has clearly shifted to the patent phase: US Patent No. 6,061,520 to Yellin et al. and US Reissue No. 38,104 to Gosling.

However, considerable commentary exists on the undecided copyright issues. See FOSS Patents here and Groklaw here. It sounds like the major copyright issues will not be decided until Judge Alsup rules on whether or not Java API's are copyrightability (e.g., due to the doctrine of compatibility), Google gets a new trial on the "indivisible" question of infringement and fair use of the Java APIs or Oracle and Google stipulate Judge Alsup can decide the issue of fair use.

In the meantime, Oracle's trial lawyer questioned Mr. Rubin's decision to ignore the Sun patents while developing the Android OS. It may be intended to make Mr. Rubin look irresponsible, but many engineers ignore patents to avoid knowledge supporting willful infringement and potentially enhanced damages. Professor Lemley's Ignoring Patents suggests Mr. Rubin merely follows conventional practice. Although some companies develop non-infringement positions, many ignore patents, and learn they infringe (e.g., before an IPO) and it is expensive to invalidate a patent in court. Hopefully, this high profile case will convince companies to think about reviewing patents, designing around, and requesting post-grant procedures as part of the software development process.

Mr. Rubin's saying there are "hundreds of millions of patents" to consider begs the question: Did Google patent attorneys make any effort to design around the Sun Java patents? Is it even possible to implement the Android OS while not infringing the Java patents? Answers may have to await phase 3 on damages.

Also see the following articles for more details:

Engineers, experts take the stand as Oracle's patent attack on Google advances - Ars Technica - Joe Mullin

Judge rejects attempt to derail Google's 'fair use' defense - CNET - Rachel King

Android developers ignored Sun patents, Google exec testifies - Computerworld - James Niccolai

Copyrights, APIs, and Oracle vs Google - ZDNet - Steven J. Vaughan-Nicols

Copyright © 2012 Robert Moll. All rights reserved.

Oracle v. Google - Copyright & Patent Trial - Patent Phase

Google has filed a motion for a mistrial and the copyright case has issues of whether there is fair use and the Java API's are copyrightability. Nonetheless, the Oracle v. Google trial has moved to patents so let's ignore the messy partial verdict of the copyright case and focus on the patent case tonight.

As background, Oracle initially asserted Google's Android OS infringed seven US patents. Google responded by requesting reexamination of the patents in the PTO, and only two emerged as patentable. This eliminated much of Oracle's patent case. Then three days after the copyright trial began, the PTO reversed the invalidity of one of the five Oracle patents taken out of the trial, but Judge Alsup rejected Oracle's request to reinstate that patent as too late based on his understanding that Oracle agreed to drop any of the reexamined patents not held patentable at the start of the trial in exchange for an early trial. I posted on this April 25, 2012 here. Thus, Oracle asserts infringement of only US Patent No. 6,061,520 to Yellin et al. and US Reissue No. 38,104 to Gosling

Oracle and Google gave opening statements, and Oracle took testimony from Google employees (e.g., Mr. Lindholm and Mr. Rubin). FOSS Patents here and Groklaw here continue to give coverage on the case. Also see the following articles for details:

Oracle, Google lawyers spar over Android's Dalvik VM as patent phase begins - Ars Technica - Joe Mullin

Andy Rubin called back in Oracle-Google trial to talk patents - CNET - Rachel King

Oracle vs. Google hits the patent phase: the opening statements - The Verge - Bryan Bishop

Google: We developed Android not knowing Sun's patents - ZDNet - Rachel King

Google and Oracle Enter Round Two of Heavyweight Legal Fight - Wired - Caleb Garling

Oracle recalls Google engineer Lindholm in trial's patent phase - ZDNet - Rachel King

After mixed copyright win over Google, Oracle looks towards patents - ZDNet - Rachel King

Copyright © 2012 Robert Moll. All rights reserved.

Oracle v. Google - Joint Statement Reveals A Weakened Patent Case

In August 2010, Oracle sued Google for infringement of Java patents and copyrights obtained from the Sun acquisition. Judge Alsup has set the matter for trial on April 16. Because the trial is scheduled for eight weeks, Judge Alsup has ordered Oracle and Google submit proposals to streamline the trial. In response, Oracle and Google filed the following joint statement of trial streamlining proposals in court yesterday.

I think the consensus is Google's primary risk is it may be required to pay major damages (e.g., hundreds of millions) for copyright infringement. The risk of paying major damages for patent infringement is less likely for the following reasons:

Google is faced with only two patents at trial. It used to be faced with seven US patents, but Google aggressively filed for reexamination of the patents. Only two Oracle patents survived for the trial: U.S. Reissue No. 38,104 (the '104 reissue patent) and U.S. Patent No. 6,061,520 (the '520 patent). My previous post: Patent Reexamination Has Arrived - Oracle v. Google gives details.

Google has limited past damages. Google was able to prove that Oracle and Sun had not marked any practice products so limited damage to those after Oracle gave Google notice under 35 USC 287. My previous post: Failure to Patent Mark - Losing Easy Money gives additional details.

Google is negotiating for a low ball amount for future damages. Google proposes to pay Oracle $2.7 million and 0.5% of Android revenues for the '104 reissue patent expiring in December 2012 and $80,000 and 0.015% for the '520 patent expiring in 2018. Since Google gives away Android free to handset manufacturers, revenue for this proposal may be based on Google ads and third party applications. I am not certain from the joint statement how Google intends the revenue be established, and why Oracle should accept the independent damages expert's royalty (0.015%) and unadjusted damages of a mere $80,000 for the '520 patent.

Google may win the judge's favor in agreeing to drop its invalidity defense to the '520 patent. Google had to prove invalidity by clear and convincing evidence so giving it up may not mean much: "Judge Alsup I am giving up this (difficult) defense and streamlining my case for trial, so please side with me...."

Google has preserved the defense of non-infringement. Oracle has to prove infringement by a preponderance of the evidence and this is often a potent defense for defendants.

Google is not engaging Oracle with its damage proposals. In my opinion, Oracle may be right to rebuff Google's "low ball" and go to trial. The proposed damages appear to be too low. I think everybody knows it, but this is positional bargaining 101.

Copyright © 2012 Robert Moll. All rights reserved.

Marine Polymer v. Hemcon - Federal Circuit Limits Intervening Rights to Amended Claims

In Marine Polymer Tech. v. Hemcon, the Federal Circuit held claims must be amended or new to trigger intervening rights during reexamination. Intervening rights are derived from 35 USC 252 and 307(b) which indicate following reexamination a patent owner cannot claim damages for pre-reexamination infringement if the claims were amended and not substantially identical to the original claims.

In this case, Marine Polymer's arguments narrowed the scope of the claims, but stopped short of amending them. The Federal Circuit rejected Hemcon's request for intervening rights based on this, because (1) the PTO confirmed the original claims were patentable; (2) Sections 252 and 307(b) state intervening rights follow reexamination only as to amended or new claims; (3) the PTO is unlikely to consider a patent claim to be narrowed based on an argument; and (4) if claims require amendment for allowance, the examiner would require it.

Although the intervening rights vote was split 6 to 4, the majority appears to have it right. The public and patent owners need to know when intervening rights can be raised as a defense. Too much money changes hands to have it any other way. Thus, the statute requires a claim be new or amended to trigger intervening rights. If we accept any narrowing argument can raise intervening rights, I expect requests for intervening rights in many cases, i.e., whenever an argument is raised for patentability. Of course, examiners should interpret claims as broad as is reasonably consistent with the specification and require an amendment when necessary to distinguish a claim over the prior art rather than settle for arguments that have no correspondence to the claim language.

Copyright © 2012 Robert Moll. All rights reserved.

Patent Reexamination Has Arrived for Both Parties - Oracle v. Google

Judge Alsup has ordered the Oracle v. Google trial start on April 16. As noted in my blog post on March 12, reexamination has reduced both Oracle's patent case and the advantage of having Mr. Boies as the trial lawyer.

As I stated, Oracle has agreed to withdraw three patents if  they remain rejected when the trial starts. That's about one month for Oracle to get the "final" rejections withdrawn. It's possible but difficult to achieve. Of course, Oracle could appeal the final rejection to the Board of Patent Appeals, but this seems unlikely. Thus, Oracle's lawsuit is based on just two patents and its copyright infringement claim.

Judge Alsup seems to be tough on Oracle at times, but the start date is what Oracle wanted. Further, Judge Alsup believes that streamlining the trial is good for both parties. Thus, Judge Alsup ordered:

"Google is hereby encouraged to withdraw its invalidity defenses that have failed in the reexamination ... to further streamline the trial on the two patents remaining in suit."

Reexamination has become a two-edged sword in this case. If you are a patent owner and suffer rejection of all infringed claims before trial you won't be able to turn that around. And if you are a defendant and you lose on invalidity in reexamination, you will be forced to drop invalidity defenses at trial.

Copyright © 2012 Robert Moll. All rights reserved.

Patent Reexamination Has Arrived - Oracle v. Google

Reexamination has nearly knocked out Oracle's patent case against Google. It crystallized on March 1 when Judge Alsup stated "Oracle should state a clear answer to the following question: given that the examiners have issued final rejections on patents ’720, ’702, ’476, and ’205, and Oracle has only withdrawn the ’476 patent, but still wishes to go to trial on patents ’720, ’702, ’205, ’520, and ’104, and Oracle still wishes to have an instruction that those patents must be presumed valid and can only be found invalid by clear and convincing evidence, would it be better to postpone trial until after final decisions by the PTO on administrative appeal? Also please answer: to avoid this problem, will Oracle irrevocably withdraw with prejudice patents ’720, ’702, and ’205?" In short, does Oracle want to delay the trial for the results of reexamination or nearly drop the entire patent case?

Oracle's reply?  If the case goes to trial this spring, Oracle will withdraw from the litigation with prejudice each claim of the '720, '205, and '702 patents asserted against Google that remains rejected at the time of trial, and proceed with the copyright case, the '520 patent, and '104 patent, and any asserted claims of the other three patents that are confirmed by the PTO.

It is no longer sufficient to hire the best trial lawyer and go from there. Oracle engaged David Boies, an amazing trial lawyer. After graduating Magna cum laude at Yale Law School, Mr. Boies became a partner at Cravath Swaine & Moore and later founded his own firm and successfully handled many notable cases. For example, Mr. Boies was the key attorney assisting the late Thomas Barr in his stunningly successful defense of IBM in the Department of Justice's 13-year antitrust case. The DoJ learned from this and hired Mr. Boies in the United States v. Microsoft case. Again, Mr. Boies won, and Bill Gates claimed during trial that Mr. Boies was "out to destroy Microsoft" after observing his devastating use of Microsoft emails to impeach Microsoft witnesses. When he defended CBS in a $120M libel suit by General Westmoreland, the general abandoned his case during the trial. Although Mr. Boies lost in representing Al Gore following the 2000 presidential elections in Bush v. Gore, his engagement on this high stakes matter and others reveal he was (and is) considered one of the premier trial lawyers in the country.

Oracle v. Google tells us the outcome of reexamination can be pivotal to the patent case. Despite Oracle's  wise decision to engage Mr. Boies, it did not halt the effects of reexamination. Oracle's patent case was greatly contracted and Mr. Boies has much less to work with at trial. Yes, patent reexamination has arrived.

Copyright © 2012 Robert Moll. All rights reserved.