Software patent eligibility is a controversial topic today.
The Federal Circuit opinions in July 2012: CLS Bank International v. Alice Corporation in favor of patent eligibility and Bancorp Services v. Sun Life Assurance Company of Canada against patent eligibility highlight this controversy.
The Federal Circuit granted CLS Bank International's petition for a rehearing en banc, vacated the decision on software patent eligibility, reinstated the appeal, and invited the parties and amici to file briefs addressing the following questions:
a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
Now the amici briefs are arriving. On December 6, King & Spalding filed an amicus brief on behalf of some leading tech companies: Google Inc., Dell Inc., Facebook, Inc., Homeaway, Inc., Intuit Inc., Rackspace Hosting, Inc. Red Hat, Inc., and Zynga Inc. at the Court of Appeals for Federal Circuit.
See the Google et al. brief as well as the Electronic Frontier Foundation's brief in the Wall Street Journal AllThingsD.com article: Facebook, Google and Others Rally Against Sweeping Claims in Financial Patent Case. Thanks to Alan Cooper for sending this article!
For details see my earlier post: CLS Bank v. Alice - Federal Circuit Revisits Test for Software Patent Eligibility
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, December 9, 2012
Thursday, December 6, 2012
Patent Law Treaty and Hague Agreement Regarding International Registrations of Industrial Designs
On December 5, the House of Representatives passed S. 3486 to implement the Hague Agreement Concerning Industrial Designs Patent Law Treaty (Hague Agreement) and the Patent Law Treaty (PLT). The bill awaits President Obama's signature.
The Hague Agreement lengthens the current design patent term from 14 to 15 years from the grant date. It also allows filing for protection of up to 100 designs in a single application at the USPTO as long as in the same classification under Locarno Agreement to obtain design protection in all countries that adopt the treaty. Note this is expect to help protect design owners against knockoffs. Further, it retains the current nonobvious requirement for design patents, which patent scholar Harold Wegner suggests is inconsistent with TRIPS. A request and payment at WIPO's International Bureau will renew a design registration. The bill will add Chapter 38 International Design Applications, 35 USC 381-390.
The PLT amends 35 USC 111(a) to reduce some requirements for a nonprovisional to get a filing date. For example, a nonprovisional application will no longer require at least one claim for a filing date, but still requires payment of fees, an oath or declaration, and at least one claims within the time set by the Director to avoid abandonment.
Under new 35 USC 111(c), the Director may prescribe the conditions for filing an application with a reference to a prior filed application, but will abandon an application for failure to submit a specification within the prescribed period.
Updated February 11, 2014: The Patent Law Treaties Implementation Act of 2012.
Copyright © 2012 Robert Moll. All rights reserved.
The Hague Agreement lengthens the current design patent term from 14 to 15 years from the grant date. It also allows filing for protection of up to 100 designs in a single application at the USPTO as long as in the same classification under Locarno Agreement to obtain design protection in all countries that adopt the treaty. Note this is expect to help protect design owners against knockoffs. Further, it retains the current nonobvious requirement for design patents, which patent scholar Harold Wegner suggests is inconsistent with TRIPS. A request and payment at WIPO's International Bureau will renew a design registration. The bill will add Chapter 38 International Design Applications, 35 USC 381-390.
The PLT amends 35 USC 111(a) to reduce some requirements for a nonprovisional to get a filing date. For example, a nonprovisional application will no longer require at least one claim for a filing date, but still requires payment of fees, an oath or declaration, and at least one claims within the time set by the Director to avoid abandonment.
Under new 35 USC 111(c), the Director may prescribe the conditions for filing an application with a reference to a prior filed application, but will abandon an application for failure to submit a specification within the prescribed period.
Updated February 11, 2014: The Patent Law Treaties Implementation Act of 2012.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, December 4, 2012
America Invents Act - Proposed Bill H.R. 6621 Technical Amendment to AIA
On November 30, Congressman Smith introduced a bill H.R. 6621 to change language in the America Invents Act (AIA).
Some refer to it as a "technical amendment" that corrects errors in the AIA. However, it buries a provision that will eliminate many if not all pre-GATT applications (i.e., about 200 applications filed before June 7, 1995) if they fail to issue as US patents within one year of the bill's enactment. It does this by rendering them ineligible for a patent term that runs 17 years from grant date. Instead their patent term would only run 20 years from filing date. Even if only 0.02% of all pending applications (e.g., 1.2M) are affected, it sounds like some want to eliminate or greatly reduce their patent terms. Do the math!
On the other hand, it doesn't seek to change the estoppel standard for post grant review, which is wise given the arguments raised in its favor. See e.g., Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint.
Copyright © 2012 Robert Moll. All rights reserved.
Some refer to it as a "technical amendment" that corrects errors in the AIA. However, it buries a provision that will eliminate many if not all pre-GATT applications (i.e., about 200 applications filed before June 7, 1995) if they fail to issue as US patents within one year of the bill's enactment. It does this by rendering them ineligible for a patent term that runs 17 years from grant date. Instead their patent term would only run 20 years from filing date. Even if only 0.02% of all pending applications (e.g., 1.2M) are affected, it sounds like some want to eliminate or greatly reduce their patent terms. Do the math!
On the other hand, it doesn't seek to change the estoppel standard for post grant review, which is wise given the arguments raised in its favor. See e.g., Robert L. Stoll, Maintaining Post-Grant Review Estoppel in the America Invents Act: A Call for Legislative Restraint.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, December 2, 2012
Jeruss - Effects of Patent Monetization Entities on US Litigation
In The America Invents Act 500: Effects of Patent Monetization Entities on US Litigation Sara Jeruss of Lex Machina Inc., Robin Cooper Feldman of University of California Hastings College of the Law, Joshua H. Walker of Simpson Thacher & Bartlett LLP, Stanford Law School wrote an interesting paper that will be published in Duke Law & Technology Review.
The article explores non-practicing entities (NPE) or patent trolls or what they call patent monetizers affect on U.S. patent litigation. Although Professor Feldman is not the lead author, it bears her signature in terms of meticulous research, transparent assumptions, and careful conclusions.
The article flowed out of Congress' mandate for the Government Accountability Office (GAO) to study the effects of non-practicing entities on patent litigation. Using Lex Machina's database they collected and coded a set of patent lawsuits filed over the past five years then analyzed what it meant.
Key findings? Patent monetizers' lawsuits increased from 22% to nearly 40% of the cases in the last five years. Universities are not that big of a player, accounting for only 0.2% of the lawsuits. Patent monetizers tend to settle prior to a summary judgment decision, which points to what may be involved. Even though it calls NPE's "modern villains" of the system, it doesn't resolve for me whether patent monetizers are bad or good for the US, but does confirm their rising participation in patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
The article explores non-practicing entities (NPE) or patent trolls or what they call patent monetizers affect on U.S. patent litigation. Although Professor Feldman is not the lead author, it bears her signature in terms of meticulous research, transparent assumptions, and careful conclusions.
The article flowed out of Congress' mandate for the Government Accountability Office (GAO) to study the effects of non-practicing entities on patent litigation. Using Lex Machina's database they collected and coded a set of patent lawsuits filed over the past five years then analyzed what it meant.
Key findings? Patent monetizers' lawsuits increased from 22% to nearly 40% of the cases in the last five years. Universities are not that big of a player, accounting for only 0.2% of the lawsuits. Patent monetizers tend to settle prior to a summary judgment decision, which points to what may be involved. Even though it calls NPE's "modern villains" of the system, it doesn't resolve for me whether patent monetizers are bad or good for the US, but does confirm their rising participation in patent litigation.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, November 30, 2012
PTO Seeking Transparency in Patent Ownership Roundtable
The PTO is considering regulations to require greater transparency concerning ownership of patents and patent applications. I am interested to see patent aggregators or patent monetizers views on this topic.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
For details see Notice of Roundtable on Proposed Requirements for Recordation of Real-Party-in-Interest Information Throughout Application Pendency and Patent Term.
Copyright © 2012 Robert Moll. All rights reserved.
Microsoft v. Motorola Mobility - Google's Motorola Standard Essential Patents Not Entitled to Injunction or Hefty Royalty Rate
Today, in Microsoft v. Motorola Mobility, the federal district court judge granted Microsoft's summary judgment motion that Motorola Mobility's standard essential patents (SEP) are not entitled to injunctive relief and will be subject to FRAND. We may see a consensus that we cannot have patent hold ups on SEPs since that gives SEP owners too much negotiating leverage against competitors.
I am a little surprised at how this case evolved. Google's Motorola Mobility would not sign up under Microsoft's patent licensing program despite the vast majority of Android makers doing so. Second, after Motorola Mobility was sued it didn't think maybe it should settle. Instead it counterclaims that Microsoft XBox infringed patents essential to the H.264 (video codec) or IEEE 802.11 (WiFI, or WLAN) standards. We were talking about my Android, but let's talk about your XBox? Then Motorola insists on injunctive relief and unreasonably high royalty rates on those SEPs?
Despite this Groklaw suggests the judge's decision is based on local bias: Surprise Surprise ... Seattle Judge Grants MS Motion, Bans Injunctions for Motorola's RAND Patents
Groklaw argues the Seattle judge is in Microsoft's home court and handed out a predictable victory to Microsoft based on a sealed motion (i.e., who knows what) that is likely to be appealed. In my opinion, the judge is being unfairly impugned. Motorola lost because it pushed beyond the outer limits of remedies available for SEPs.
Also see other reviews of this decision such as Joe Mullin' In a blow to Android, judge says Moto patents can't get injunctions - Motorola can't use standard-based patents to enjoin Microsoft's Xbox and FOSS Patents' Google's Motorola loses a summary judgment decision after Microsoft FRAND trial.
Copyright © 2012 Robert Moll. All rights reserved.
I am a little surprised at how this case evolved. Google's Motorola Mobility would not sign up under Microsoft's patent licensing program despite the vast majority of Android makers doing so. Second, after Motorola Mobility was sued it didn't think maybe it should settle. Instead it counterclaims that Microsoft XBox infringed patents essential to the H.264 (video codec) or IEEE 802.11 (WiFI, or WLAN) standards. We were talking about my Android, but let's talk about your XBox? Then Motorola insists on injunctive relief and unreasonably high royalty rates on those SEPs?
Despite this Groklaw suggests the judge's decision is based on local bias: Surprise Surprise ... Seattle Judge Grants MS Motion, Bans Injunctions for Motorola's RAND Patents
Groklaw argues the Seattle judge is in Microsoft's home court and handed out a predictable victory to Microsoft based on a sealed motion (i.e., who knows what) that is likely to be appealed. In my opinion, the judge is being unfairly impugned. Motorola lost because it pushed beyond the outer limits of remedies available for SEPs.
Also see other reviews of this decision such as Joe Mullin' In a blow to Android, judge says Moto patents can't get injunctions - Motorola can't use standard-based patents to enjoin Microsoft's Xbox and FOSS Patents' Google's Motorola loses a summary judgment decision after Microsoft FRAND trial.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, November 29, 2012
American Invents Act Driving More Provisional Application Filings
Professor Dennis Crouch's Provisional Patent Applications as a Flash in the Pan: Many are Filed and Many are Abandoned contains a graph showing provisionals have steadily increased from 1995 to 2012. In FY 2012, we are up to 160,000 filings! In a smaller study he found that 35% of provisionals do not include a single claim. Claims aren't required so this is not surprising, but it is surprising that 15% of the provisionals are a stack of presentation materials (e.g., PowerPoint?) since a provisional must enable the claimed invention. See my articles for an explanation:
The Benefits of Provisional Applications: Slip, Sliding Away
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
Whether or not we love or hate provisionals, we should expect the annual filing rates to rise. The AIA first inventor to file provisions contained in 35 USC 102 and effective on March 16, 2013 retain a one year grace period for inventor (and inventor derived) disclosures, but do not expressly shield a pre-filing offer for sale, a public use, or a publication that cannot be traced back to one of the inventors.
Harold Wegner says the scope of the AIA grace period is an open question. See Wegner, The 2011 Patent Law: "Leahy-Smith maintains the concept of a one year grace period for inventor's pre-filing activities but defines the grace period as limited to the applicant's 'disclosures' of the invention, making it an open question whether a secret commercialization or other 'public use' or 'on sale' events fall under the grace period because they may not constitute 'disclosures' of the invention."
For now it's safer to take a narrow view of the grace period. Thus, a provisional or a nonprovisional satisfying 35 USC 112 must be filed before an offer for sale or public use of the invention. If an examiner assumes a nonprovisional is entitled to the provisional filing date, a sketchy provisional may as well have a flag: "litigators here is a promising date range for prior art to invalidate a patent-- between the provisional and the nonprovisional filing dates" (i.e., when the technology is most developed and time-wise qualified). Many provisionals do not satisfy 35 USC 112 and nonprovisionals depending on them for priority may find the effective filing date is the nonprovisional filing date.
The fact more than half of provisionals are abandoned without the filing of a nonprovisional is consistent with the PTO's stated purpose: to give inventors one year to explore whether the invention has commercial prospects before filing a more expensive nonprovisional. The AIPLA Report of the Economic Survey 2011 says a typical charge for a provisional is $3,500, while the typical charge for a nonprovisional is $7,000 - $12,000. I see the cost savings, but given the price difference note it isn't realistic to expect both are equal to the task of satisfying 35 USC 112.
Copyright © 2012 Robert Moll. All rights reserved.
The Benefits of Provisional Applications: Slip, Sliding Away
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
Whether or not we love or hate provisionals, we should expect the annual filing rates to rise. The AIA first inventor to file provisions contained in 35 USC 102 and effective on March 16, 2013 retain a one year grace period for inventor (and inventor derived) disclosures, but do not expressly shield a pre-filing offer for sale, a public use, or a publication that cannot be traced back to one of the inventors.
Harold Wegner says the scope of the AIA grace period is an open question. See Wegner, The 2011 Patent Law: "Leahy-Smith maintains the concept of a one year grace period for inventor's pre-filing activities but defines the grace period as limited to the applicant's 'disclosures' of the invention, making it an open question whether a secret commercialization or other 'public use' or 'on sale' events fall under the grace period because they may not constitute 'disclosures' of the invention."
For now it's safer to take a narrow view of the grace period. Thus, a provisional or a nonprovisional satisfying 35 USC 112 must be filed before an offer for sale or public use of the invention. If an examiner assumes a nonprovisional is entitled to the provisional filing date, a sketchy provisional may as well have a flag: "litigators here is a promising date range for prior art to invalidate a patent-- between the provisional and the nonprovisional filing dates" (i.e., when the technology is most developed and time-wise qualified). Many provisionals do not satisfy 35 USC 112 and nonprovisionals depending on them for priority may find the effective filing date is the nonprovisional filing date.
The fact more than half of provisionals are abandoned without the filing of a nonprovisional is consistent with the PTO's stated purpose: to give inventors one year to explore whether the invention has commercial prospects before filing a more expensive nonprovisional. The AIPLA Report of the Economic Survey 2011 says a typical charge for a provisional is $3,500, while the typical charge for a nonprovisional is $7,000 - $12,000. I see the cost savings, but given the price difference note it isn't realistic to expect both are equal to the task of satisfying 35 USC 112.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, November 27, 2012
Oracle v. Google - Patent and Copyright Cases - Groklaw's Timeline and Court Papers
Wikipedia says "Groklaw is an award-winning website covering legal news of interest to the free and open source software community." Its slogan: "digging for the truth" is accurate in that Groklaw does a great job of posting legal documents that would be typically not found inexpensively; it seems less accurate if it means the opinions of a blog that functions as a bully pulpit for paralegal Pamela Jones ("PJ") to articulate the rightness of the free and open source software communities opposition to intellectual property and particularly software patents.
Still Groklaw is an excellent resource for tech people having to deal with intellectual property law. For example, I spent many evenings reading about the Oracle v. Google patent and copyright trials then news coverage vanished after Oracle lost its case. Thus, I appreciate Groklaw's effort in doubling back and posting the complete trial transcripts: Oracle v. Google Timeline when it is not a hot topic. There is lot to learn from them.
The trial transcripts suggest why billing by the hour is so profitable for litigation attorneys: "If you are paying by the hour, I see where I can file another paper to advance your cause." Joking aside, they don't have much choice. The Federal Rules of Civil Procedure and modern patent litigation dictate a number of the filings. If an attorney files a motion, the opposing litigator must reply to avoid conceding unless the client authorizes it. And when you have mobile computing at stake, and Oracle's and Google's financial resources, the massive transcripts are inevitable and indicates why this litigation was so expensive despite reexamination eliminating all but two Oracle patents.
Updated November 30, 2012: FOSS Patents reports: Oracle's appeal of ruling in Google/Java case focuses entirely on copyright, drop patents
Copyright © 2012 Robert Moll. All rights reserved.
Still Groklaw is an excellent resource for tech people having to deal with intellectual property law. For example, I spent many evenings reading about the Oracle v. Google patent and copyright trials then news coverage vanished after Oracle lost its case. Thus, I appreciate Groklaw's effort in doubling back and posting the complete trial transcripts: Oracle v. Google Timeline when it is not a hot topic. There is lot to learn from them.
The trial transcripts suggest why billing by the hour is so profitable for litigation attorneys: "If you are paying by the hour, I see where I can file another paper to advance your cause." Joking aside, they don't have much choice. The Federal Rules of Civil Procedure and modern patent litigation dictate a number of the filings. If an attorney files a motion, the opposing litigator must reply to avoid conceding unless the client authorizes it. And when you have mobile computing at stake, and Oracle's and Google's financial resources, the massive transcripts are inevitable and indicates why this litigation was so expensive despite reexamination eliminating all but two Oracle patents.
Updated November 30, 2012: FOSS Patents reports: Oracle's appeal of ruling in Google/Java case focuses entirely on copyright, drop patents
Copyright © 2012 Robert Moll. All rights reserved.
Monday, November 26, 2012
Director David Kappos to Leave USPTO in January 2013
Professor Dennis Crouch reports: USPTO Director Kappos will leave in January 2013. Many in the patent community will miss his leadership of the USPTO over the last three and half years.
Hopefully, USPTO Deputy Director Ms. Teresa Stanek Rea will continue his standard of excellence, which helped the USPTO tackle the application backlog, work with applicants to determine patentable subject matter, and adopt reasonable final rules implementing the America Invents Act.
Thanks for such a great job Director David Kappos!
Copyright © 2012 Robert Moll. All rights reserved.
Hopefully, USPTO Deputy Director Ms. Teresa Stanek Rea will continue his standard of excellence, which helped the USPTO tackle the application backlog, work with applicants to determine patentable subject matter, and adopt reasonable final rules implementing the America Invents Act.
Thanks for such a great job Director David Kappos!
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, November 25, 2012
FTC and DOJ Workshop - Patent Assertion Entities
The FTC and DOJ is hosting a workshop to consider the impact of patent assertion entities (PAE) on innovation, competition, and any implications for antitrust enforcement.
It's a free workshop, with a great set of panelists, including academics, attorneys, economists, and industry representatives in Washington DC on December 10, 2012.
If you are interested in attending, submitting comments, or learning more, see Federal Trade Commission, Department of Justice to Hold Workshop on Patent Assertion Entity Activities and Patent Assertion Entity Activities Workshop Page.
Copyright © 2012 Robert Moll. All rights reserved.
It's a free workshop, with a great set of panelists, including academics, attorneys, economists, and industry representatives in Washington DC on December 10, 2012.
If you are interested in attending, submitting comments, or learning more, see Federal Trade Commission, Department of Justice to Hold Workshop on Patent Assertion Entity Activities and Patent Assertion Entity Activities Workshop Page.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, November 22, 2012
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.
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.
Wednesday, November 21, 2012
Director Kappos: An Examination of Software Patents Speech on Nov 20, 2012
Under Secretary of Commerce for IP and Director of the USPTO, David Kappos strongly defended valid software patents in a keynote address at the Center for American Progress on November 20, 2012.
Director Kappos' speech: An Examination of Software Patents sets forth a convincing case for software patenting and the U.S. patent system. This speech should be considered by all who think or hear the U.S. patent system is broken.
Copyright © 2012 Robert Moll. All rights reserved.
Director Kappos' speech: An Examination of Software Patents sets forth a convincing case for software patenting and the U.S. patent system. This speech should be considered by all who think or hear the U.S. patent system is broken.
Copyright © 2012 Robert Moll. All rights reserved.
Sunday, November 18, 2012
Vringo v. Google - Laches Dashing Expectations - From $493M to $31M?
The recent Vringo v. Google patent infringement case illustrates an issue that may arise for prospective licensors and licensees. In a nutshell, Vringo purchased U.S. Patent No. 6,314,420 and U.S. Patent No. 6,775,664 from Lycos, filed a lawsuit in September 2011 claiming Google's system of advertising infringed the patents, and stated it expect to recover $493 million. At the end of trial, the jury held the patents infringed and not invalid, but only awarded $31 million against Google et al. based on a 3.5% royalty rate on a 20% increase attributable to the invention.
Why didn't Vringo receive $493 million? You might think it wasn't realistic and mere saber rattling to encourage Google to settle before trial. But as I looked further, I learned Vringo assumed it would get damages for infringement from 2005 to 2011, since U.S. patent law permits damages up to six year prior to the filing of the lawsuit (i.e., September 2011).
During this trial, there was a fair amount of trading going on. On the last day of a two-week trial, Mr. Dan Ravicher disclosed he was shorting Vringo (VRNG) in Vringo vs. Google: Outcome Probabilities. In his opinion, Vringo had not established Google was aware of the patents and had failed to elicit sufficient jury sympathy to support damages of $493 million. He estimated the net present value to Vringo was $95 million.
Vringo's facts would not generate much jury sympathy. Vringo had not invented anything and had bought the patents from a search engine company that Google had passed long ago. Its press releases saying Google's revenue would go to zero and Vringo would make billions sounded of hubris. Vringo trial slides were cartoon-like. Vringo told the jury Google's SmartAdServingSystem ("Google's SmartASS") infringed the patents. For some of the slides see Mr. Mullin's article: Google infringes old Lycos patents, must pay $30 million.
Much more than lack of jury sympathy, laches reduced Vringo's damages. Under the equitable doctrine of laches defense: (1) if a patent owner unreasonably and inexcusably delays filing an infringement suit, and (2) the alleged infringer has been materially prejudiced by the delay, a patent owner cannot recover damages that occurred before the complaint was filed. The statute says Vringo could get damages up to six years prior to filing the complaint, but a judge can rule in equity to supplement statutory law to achieve a fair result.
The Vringo lawsuit had laches written all over it from the beginning. The '420 patent issued 11 years ago, November 6, 2001, and the '664 patent issued over eight years ago, August 10, 2004. Even six years of delay raises a rebuttal presumption of laches. It's true a patent owner may "burst" the presumption by producing evidence sufficient to raise an issue the delay was reasonable or excusable under the circumstances, but Vringo was unable to do it. Thus, laches precluded recovery before the complaint was filed in September 2011. A six year period of infringement was reduced to one year. I guess the judge wasn't sympathetic.
Whenever a patent is enforced near the end of its term, you must consider laches. For more about laches, I suggest the Federal Circuit's case A.C. Aukerman Co. v. R.L Chaides Construction and cases citing Aukerman.
Copyright © 2012 Robert Moll. All rights reserved.
Why didn't Vringo receive $493 million? You might think it wasn't realistic and mere saber rattling to encourage Google to settle before trial. But as I looked further, I learned Vringo assumed it would get damages for infringement from 2005 to 2011, since U.S. patent law permits damages up to six year prior to the filing of the lawsuit (i.e., September 2011).
During this trial, there was a fair amount of trading going on. On the last day of a two-week trial, Mr. Dan Ravicher disclosed he was shorting Vringo (VRNG) in Vringo vs. Google: Outcome Probabilities. In his opinion, Vringo had not established Google was aware of the patents and had failed to elicit sufficient jury sympathy to support damages of $493 million. He estimated the net present value to Vringo was $95 million.
Vringo's facts would not generate much jury sympathy. Vringo had not invented anything and had bought the patents from a search engine company that Google had passed long ago. Its press releases saying Google's revenue would go to zero and Vringo would make billions sounded of hubris. Vringo trial slides were cartoon-like. Vringo told the jury Google's SmartAdServingSystem ("Google's SmartASS") infringed the patents. For some of the slides see Mr. Mullin's article: Google infringes old Lycos patents, must pay $30 million.
Much more than lack of jury sympathy, laches reduced Vringo's damages. Under the equitable doctrine of laches defense: (1) if a patent owner unreasonably and inexcusably delays filing an infringement suit, and (2) the alleged infringer has been materially prejudiced by the delay, a patent owner cannot recover damages that occurred before the complaint was filed. The statute says Vringo could get damages up to six years prior to filing the complaint, but a judge can rule in equity to supplement statutory law to achieve a fair result.
The Vringo lawsuit had laches written all over it from the beginning. The '420 patent issued 11 years ago, November 6, 2001, and the '664 patent issued over eight years ago, August 10, 2004. Even six years of delay raises a rebuttal presumption of laches. It's true a patent owner may "burst" the presumption by producing evidence sufficient to raise an issue the delay was reasonable or excusable under the circumstances, but Vringo was unable to do it. Thus, laches precluded recovery before the complaint was filed in September 2011. A six year period of infringement was reduced to one year. I guess the judge wasn't sympathetic.
Whenever a patent is enforced near the end of its term, you must consider laches. For more about laches, I suggest the Federal Circuit's case A.C. Aukerman Co. v. R.L Chaides Construction and cases citing Aukerman.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, November 2, 2012
Solutions to the Software Patent Problem - Santa Clara University - November 16, 2012
Tonight, I signed up for the Santa Clara University conference Solutions to the Software Patent Problem, which is premised on the idea software patents are a problem, and asks what should be done. Whether or not you agree with the premise, I think it is a good to listen to what this group has to say.
Wired has published two of the speakers' opinions in The Patent Fix series: Richard Stallman, founder of GNU and the Free Software Foundation, and Stanford professor Mark Lemley:
Stallman, Let's Limit the Effect of Software Patents, Since We Can't Eliminate Them
Lemley, Let's Go Back to Patenting the 'Solution,' Not the 'Problem'
If you wish to register to attend the Solutions to the Software Patent Problem conference, here's the link. It will be held at the Locatelli Center, Santa Clara University, 8:45 am - 5:30 pm.
Copyright © 2012 Robert Moll. All rights reserved.
Wired has published two of the speakers' opinions in The Patent Fix series: Richard Stallman, founder of GNU and the Free Software Foundation, and Stanford professor Mark Lemley:
Stallman, Let's Limit the Effect of Software Patents, Since We Can't Eliminate Them
Lemley, Let's Go Back to Patenting the 'Solution,' Not the 'Problem'
If you wish to register to attend the Solutions to the Software Patent Problem conference, here's the link. It will be held at the Locatelli Center, Santa Clara University, 8:45 am - 5:30 pm.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, October 31, 2012
Surfcast Sues Microsoft Claiming Windows 8 and Windows Phone Infringe US Patent
Yesterday, Surfcast, Inc. announced it sued Microsoft claiming Windows 8 and Windows Phone infringe U.S. Patent No. 6,724,403 B1
For details see the CNET article: Microsoft sued over Windows Live Tiles
For more information about Surfcast see the following pages:
(1) Founders and directors with former / current affiliations;
(2) Three other issued US patents and law firms who prepared and/or prosecuted them; and
(3) Press release announcing the patent infringement suit filed in Maine dated October 30, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
For details see the CNET article: Microsoft sued over Windows Live Tiles
For more information about Surfcast see the following pages:
(1) Founders and directors with former / current affiliations;
(2) Three other issued US patents and law firms who prepared and/or prosecuted them; and
(3) Press release announcing the patent infringement suit filed in Maine dated October 30, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
Wednesday, October 24, 2012
ITC Judge Decides Samsung Infringes Four Apple Patents
Today, Joe Mullin reports Samsung loses another big patent case to Apple, this time at ITC.
Mr. Mullin asserts the ITC judge's decision Samsung infringes four U.S. patents is "another sign Samsung is losing its global patent battle with Apple" and that the decision may result in a ban of Samsung products in 2013.
I am not so certain this much can be drawn from the ITC judge's decision. The ITC Commission must approve the ITC judge's decision, which may not happen. Even if approved, the Federal Circuit may reverse the Commission's decision. All the legal machinations give Samsung time to design around the Apple patents.
Apple and Samsung have many lawsuits around the globe. Apple has won some key battles, but recently lost in the Netherlands and in the UK. Even when Apple wins Samsung fights back: in Apple's victorious $1B case in San Jose, Samsung managed to get the Federal Circuit to reverse the entry of an injunction against the Samsung Galaxy Nexus. Samsung alleged jury misconduct that could cause a mistrial in San Jose. And just this month the PTO rejected all the claims of Apple's rubber band patent.
So I am not seeing signs Samsung is losing the global patent battle with Apple. Does it matter? Both companies have made and will continue to make great products. However, if Apple and Samsung let the patent battles affect their customer-supplier relationship, perhaps we will have losers: consumers who get less than the best products.
Copyright © 2012 Robert Moll. All rights reserved.
Mr. Mullin asserts the ITC judge's decision Samsung infringes four U.S. patents is "another sign Samsung is losing its global patent battle with Apple" and that the decision may result in a ban of Samsung products in 2013.
I am not so certain this much can be drawn from the ITC judge's decision. The ITC Commission must approve the ITC judge's decision, which may not happen. Even if approved, the Federal Circuit may reverse the Commission's decision. All the legal machinations give Samsung time to design around the Apple patents.
Apple and Samsung have many lawsuits around the globe. Apple has won some key battles, but recently lost in the Netherlands and in the UK. Even when Apple wins Samsung fights back: in Apple's victorious $1B case in San Jose, Samsung managed to get the Federal Circuit to reverse the entry of an injunction against the Samsung Galaxy Nexus. Samsung alleged jury misconduct that could cause a mistrial in San Jose. And just this month the PTO rejected all the claims of Apple's rubber band patent.
So I am not seeing signs Samsung is losing the global patent battle with Apple. Does it matter? Both companies have made and will continue to make great products. However, if Apple and Samsung let the patent battles affect their customer-supplier relationship, perhaps we will have losers: consumers who get less than the best products.
Saturday, October 20, 2012
Belkin International v. Kappos - Inter Partes Reexamination - Scope Limited to Prior Art Raising the Substantial New Question of Patentability
On September 16, 2012, the America Invents Act ended the ability to request inter partes reexamination.
However, inter partes reexamination requests filed prior to September 16 could remain for years. So it is worth looking at In Belkin v. Kappos and Optimum Path. In this case, the Federal Circuit affirmed the Board cannot consider prior art references that don't raise a substantial new question of patentability.
A policy limiting the scope of reexamination may seem harsh, but you have to consider the PTO's burden in examining all the arguments and prior art in requests for inter partes reexamination even when they don't raise a substantial new question of patentability. I reviewed one request that was over 600 pages!
Here's what the Federal Circuit had to say:
If the Director determines that any references does not raise a substantial new question of patentability, one must petition the Director to review the determination pursuant to 37 C.F.C. § 1.927. If this is not done that decision becomes final and nonappealable, and renders those issues beyond the scope of the reexamination.
Belkin requested inter partes reexamination of U.S. Patent No. 7,035,281 stating four prior art references raised new questions of patentability regarding claims 1-32. The Director determined the first three references did not raise a substantial new question of patentability, but the fourth reference did with respect to claims 1-3 and 8-10. Thus, the Director ordered reexamination of claims 1-3 and 8-10.
The Director denied Belkin's petition to review the denial of reexamination of claims 4-7 and 11-32. Belkin for reasons stated below, did not, however, file a petition to review the determination that the first three prior art references failed to raise substantial new questions of patentability concerning claims 1-3 and 8-10.
The examiner issued an action closing prosecution in the reexamination addressing only Belkin's proposed rejection of claims 1-3 and 8-10 as anticipated by the fourth reference and a right of appeal notice issued addressing only the fourth reference. Belkin appealed to the Board to challenge the examiner's not rejecting claims based on the first three references.
The Board determined that it lacked jurisdiction to decide whether a substantial new question of patentability existed regarding the first three references since that determination is non-appealable under 35 U.S.C. § 312(c). The Board held that it had no final decision on patentability and nothing to appeal regarding the three references. The Board affirmed the examiner's regarding the fourth reference. On rehearing, the Board declined to modify its decision and noted Belkin had not petitioned under 37 C.F.R. § 1.927 to review the Director's determination that there was no substantial new question of patentability for the issues based on the three references regarding claims 1-3 and 8-10.
Belkin unsuccessfully argued the Board has jurisdiction to consider the first three prior art references because once a substantial new question of patentability affecting a claim is found, all prior art must be considered including prior art found previously not to raise a substantial new question of patentability.
The Director responded 35 USC § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even if a substantial new question of patentability was found with respect to other references. The Director argued reexamination is limited to resolve the substantial new question of patentability, not questions raised by the requester that have been determined not to rise to that level. As only one reference raised a substantial new question of patentability, the Director argued the reexamination was limited to that question.
The Federal Circuit agreed and stated such an issue is nonappealable. At the outset, an inter partes reexamination is a two-step process. First, the Director must determine whether a substantial new question of patentability affecting any claim of the patent is raised by the request under § 311, with or without consideration of other patents or printed publications. 35 U.S.C. § 312(a). The statute is clear that decision is final and nonappealable. § 312(c).
The Federal Circuit noted the statute requires the Director order reexamination for resolution of the substantial new question of patentability found by the Director under § 312(a). The statute thus requires that an issue must raise a "substantial new" question of patentability with respect to cited prior art before it can be considered during inter partes reexamination. And an issue that has been determined to raise a substantial new question of patentability with respect to certain other prior art cannot be considered by the examiner and ultimately the Board. Instead if a requester disagrees with the decision that no substantial new question of patentability has been raised, 37 C.F.R. § 1.927 only permits the requester to petition the Director for review of that decision. Belkin didn't file a petition with respect to claims 1-3 and 8-10.
The Federal Circuit held:
Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See 35 U.S.C. § 303(a) ("On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him . . .."). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability.
Belkin unsuccessfully argued that such a result is inconsistent with the appeals statutes, 35 U.S.C. §§ 134(c) and 315(b), and regulations such as 37 C.F.R. § 41.61(a)(2). Those statutes grant rights to the requester to appeal a "final decision. . . favorable to the patentability of any . . . claim." §§ 134(c), 315(b). Similarly, § 41.61(a)(2) specifically allows the requester to appeal "any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any . . . claim." Id. Belkin argues that the examiner's decision not to reject claims 1-3 and 8-10 based on the issues determined not to raise a substantial new question was a decision favorable to patentability.
Belkin argued it did not petition for review of claims 1-3 and 8-10 because the Manual of Patent Examination and Procedure ("MPEP") § 2648 states: No petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.
The Federal Circuit responded that provision does not discuss the preclusive effect of a determination that an issue does not raise a substantial new question of patentability. Instead, MPEP § 2648 states the uncontroversial proposition that no petition may be filed to review a decision granting a request for reexamination.
Belkin also argued that 37 C.F.R. § 1.104 supports its interpretation because that regulation requires the examiner to make a "thorough investigation of the available prior art" during reexamination. The Federal Circuit maintained section 1.104 wouldn't help Belkin as the "available prior art" is only that which the Director has indicated constitutes a substantial new question of patentability.
The Federal Circuit noted a reference to "all prior art" in the MPEP or the regulations cannot trump the statute. Statutes rank higher than regulations, which rank higher than the MPEP.
Belkin relies on a decision of the Director denying a petition for review of the denial of four substantial new questions of patentability relating to a different patent to assert that it could not have petitioned the Director concerning his decision on the substantial question of patentability. Decision Expunging Petitions, In re Schwindt, Reexamination Control No. 95/001,743 (Mar. 5, 2012) (J.A. 1840-43). Belkin notes that the decision denied the petition because reexamination was ordered for the same claims on a different ground than proposed by the requester pursuant to MPEP § 2648. However inconsistent that decision may or may not be with the Director's current position, it must yield to the statute, which denies appealability of the Director's decisions on substantial questions.
Belkin raised concerns a third-party requester in an inter partes reexamination is estopped from later asserting the invalidity of any claim "finally determined to be valid and patentable on any ground which the thirdparty requester raised or could have raised" during the reexamination. Belkin argues that once reexamination has been granted, the requester must put forward all eligible prior art or face that estoppel. Belkin's concerns are unwarranted.
The Federal Circuit replied the estoppel was not before it. As Belkin merely asserted that the three references raised substantial new questions of patentability as to claims 1-3 and 8-10— which the Director rejected—Belkin's arguments regarding estoppel are thus not persuasive.
The Federal Circuit concluded Belkin should have petitioned the Director to review the determination that the arguments relying on the other references did not raise a substantial new question of patentability pursuant to 37 C.F.C. § 1.927. Belkin didn't and the decision became final and nonappealable, rendering those issues beyond the scope of the reexamination. Accordingly, it affirmed the Board.
The Federal Circuit also cautioned that America Invents Act amended the inter partes reexamination provisions and the request for inter partes reexamination in this case was filed before the date of enactment, September 16, 2011. Thus, the Federal Circuit expressed no opinion on the applicability of the AIA to the case, and did not reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.
Copyright © 2012 Robert Moll. All rights reserved.
However, inter partes reexamination requests filed prior to September 16 could remain for years. So it is worth looking at In Belkin v. Kappos and Optimum Path. In this case, the Federal Circuit affirmed the Board cannot consider prior art references that don't raise a substantial new question of patentability.
A policy limiting the scope of reexamination may seem harsh, but you have to consider the PTO's burden in examining all the arguments and prior art in requests for inter partes reexamination even when they don't raise a substantial new question of patentability. I reviewed one request that was over 600 pages!
Here's what the Federal Circuit had to say:
If the Director determines that any references does not raise a substantial new question of patentability, one must petition the Director to review the determination pursuant to 37 C.F.C. § 1.927. If this is not done that decision becomes final and nonappealable, and renders those issues beyond the scope of the reexamination.
Belkin requested inter partes reexamination of U.S. Patent No. 7,035,281 stating four prior art references raised new questions of patentability regarding claims 1-32. The Director determined the first three references did not raise a substantial new question of patentability, but the fourth reference did with respect to claims 1-3 and 8-10. Thus, the Director ordered reexamination of claims 1-3 and 8-10.
The Director denied Belkin's petition to review the denial of reexamination of claims 4-7 and 11-32. Belkin for reasons stated below, did not, however, file a petition to review the determination that the first three prior art references failed to raise substantial new questions of patentability concerning claims 1-3 and 8-10.
The examiner issued an action closing prosecution in the reexamination addressing only Belkin's proposed rejection of claims 1-3 and 8-10 as anticipated by the fourth reference and a right of appeal notice issued addressing only the fourth reference. Belkin appealed to the Board to challenge the examiner's not rejecting claims based on the first three references.
The Board determined that it lacked jurisdiction to decide whether a substantial new question of patentability existed regarding the first three references since that determination is non-appealable under 35 U.S.C. § 312(c). The Board held that it had no final decision on patentability and nothing to appeal regarding the three references. The Board affirmed the examiner's regarding the fourth reference. On rehearing, the Board declined to modify its decision and noted Belkin had not petitioned under 37 C.F.R. § 1.927 to review the Director's determination that there was no substantial new question of patentability for the issues based on the three references regarding claims 1-3 and 8-10.
Belkin unsuccessfully argued the Board has jurisdiction to consider the first three prior art references because once a substantial new question of patentability affecting a claim is found, all prior art must be considered including prior art found previously not to raise a substantial new question of patentability.
The Director responded 35 USC § 312(c) bars the Board from considering prior art not found to raise a substantial new question of patentability even if a substantial new question of patentability was found with respect to other references. The Director argued reexamination is limited to resolve the substantial new question of patentability, not questions raised by the requester that have been determined not to rise to that level. As only one reference raised a substantial new question of patentability, the Director argued the reexamination was limited to that question.
The Federal Circuit agreed and stated such an issue is nonappealable. At the outset, an inter partes reexamination is a two-step process. First, the Director must determine whether a substantial new question of patentability affecting any claim of the patent is raised by the request under § 311, with or without consideration of other patents or printed publications. 35 U.S.C. § 312(a). The statute is clear that decision is final and nonappealable. § 312(c).
The Federal Circuit noted the statute requires the Director order reexamination for resolution of the substantial new question of patentability found by the Director under § 312(a). The statute thus requires that an issue must raise a "substantial new" question of patentability with respect to cited prior art before it can be considered during inter partes reexamination. And an issue that has been determined to raise a substantial new question of patentability with respect to certain other prior art cannot be considered by the examiner and ultimately the Board. Instead if a requester disagrees with the decision that no substantial new question of patentability has been raised, 37 C.F.R. § 1.927 only permits the requester to petition the Director for review of that decision. Belkin didn't file a petition with respect to claims 1-3 and 8-10.
The Federal Circuit held:
Inter partes reexamination is not totally limited to those issues suggested by the requester that present a substantial new question of patentability. Indeed, the PTO may make any new rejection, as long as that rejection also meets the substantial new question of patentability requirement. See 35 U.S.C. § 303(a) ("On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him . . .."). Thus, the scope of reexamination may encompass those issues that raise a substantial new question of patentability, whether proposed by the requester or the Director, but, unless it is raised by the Director on his own initiative, it only includes issues of patentability raised in the request under § 311 that the Director has determined raise such an issue. It otherwise may not include other prior art than what constituted the basis of the Director's determination of a substantial question of patentability.
Belkin unsuccessfully argued that such a result is inconsistent with the appeals statutes, 35 U.S.C. §§ 134(c) and 315(b), and regulations such as 37 C.F.R. § 41.61(a)(2). Those statutes grant rights to the requester to appeal a "final decision. . . favorable to the patentability of any . . . claim." §§ 134(c), 315(b). Similarly, § 41.61(a)(2) specifically allows the requester to appeal "any final decision favorable to the patentability, including any final determination not to make a proposed rejection, of any . . . claim." Id. Belkin argues that the examiner's decision not to reject claims 1-3 and 8-10 based on the issues determined not to raise a substantial new question was a decision favorable to patentability.
Belkin argued it did not petition for review of claims 1-3 and 8-10 because the Manual of Patent Examination and Procedure ("MPEP") § 2648 states: No petition may be filed requesting review of a decision granting a request for reexamination even if the decision grants the request as to a specific claim for reasons other than those advanced by the third party requester. No right to review exists as to that claim, because it will be reexamined in view of all prior art during the reexamination under 37 CFR 1.937.
The Federal Circuit responded that provision does not discuss the preclusive effect of a determination that an issue does not raise a substantial new question of patentability. Instead, MPEP § 2648 states the uncontroversial proposition that no petition may be filed to review a decision granting a request for reexamination.
Belkin also argued that 37 C.F.R. § 1.104 supports its interpretation because that regulation requires the examiner to make a "thorough investigation of the available prior art" during reexamination. The Federal Circuit maintained section 1.104 wouldn't help Belkin as the "available prior art" is only that which the Director has indicated constitutes a substantial new question of patentability.
The Federal Circuit noted a reference to "all prior art" in the MPEP or the regulations cannot trump the statute. Statutes rank higher than regulations, which rank higher than the MPEP.
Belkin relies on a decision of the Director denying a petition for review of the denial of four substantial new questions of patentability relating to a different patent to assert that it could not have petitioned the Director concerning his decision on the substantial question of patentability. Decision Expunging Petitions, In re Schwindt, Reexamination Control No. 95/001,743 (Mar. 5, 2012) (J.A. 1840-43). Belkin notes that the decision denied the petition because reexamination was ordered for the same claims on a different ground than proposed by the requester pursuant to MPEP § 2648. However inconsistent that decision may or may not be with the Director's current position, it must yield to the statute, which denies appealability of the Director's decisions on substantial questions.
Belkin raised concerns a third-party requester in an inter partes reexamination is estopped from later asserting the invalidity of any claim "finally determined to be valid and patentable on any ground which the thirdparty requester raised or could have raised" during the reexamination. Belkin argues that once reexamination has been granted, the requester must put forward all eligible prior art or face that estoppel. Belkin's concerns are unwarranted.
The Federal Circuit replied the estoppel was not before it. As Belkin merely asserted that the three references raised substantial new questions of patentability as to claims 1-3 and 8-10— which the Director rejected—Belkin's arguments regarding estoppel are thus not persuasive.
The Federal Circuit concluded Belkin should have petitioned the Director to review the determination that the arguments relying on the other references did not raise a substantial new question of patentability pursuant to 37 C.F.C. § 1.927. Belkin didn't and the decision became final and nonappealable, rendering those issues beyond the scope of the reexamination. Accordingly, it affirmed the Board.
The Federal Circuit also cautioned that America Invents Act amended the inter partes reexamination provisions and the request for inter partes reexamination in this case was filed before the date of enactment, September 16, 2011. Thus, the Federal Circuit expressed no opinion on the applicability of the AIA to the case, and did not reach the issue of what prior art references the PTO may or may not consider during reexamination in response to an amended or substituted claim.
Copyright © 2012 Robert Moll. All rights reserved.
Friday, October 19, 2012
USPTO Proposed Professional Conduct Rules
Director Kappos has posted an explanation relating to the USPTO's proposed ethics rules: USPTO Harmonizes Professional Conduct Rules. This proposal is a smart and overdue move that will better align the PTO rules with the ABA Model Rules adopted by 49 states and DC. I think the logic is unassailable: why should we have two sets of ethic rules governing patent attorney conduct?
For additional detail see the following: Proposed USPTO Rules of Professional Conduct for the Notice of Proposed Rulemaking, the ABA and USPTO rule comparison chart, and the ABA Model Rules and Comments.
These rules are open for public comment: ethicsrules.comments@uspto.gov until December 17, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
For additional detail see the following: Proposed USPTO Rules of Professional Conduct for the Notice of Proposed Rulemaking, the ABA and USPTO rule comparison chart, and the ABA Model Rules and Comments.
These rules are open for public comment: ethicsrules.comments@uspto.gov until December 17, 2012.
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, October 18, 2012
USPTO - Provisional Application for Patent
The USPTO published an introduction to the topic of provisionals: Provisional Application for Patent.
I like the introduction, but what isn't covered are the pitfalls. The most common is based on the myth that a "sketchy" provisional locks in a filing date and gives one the ability to wait up to 12 months to file a detailed nonprovisional application. You have 12 months to file a nonprovisional, but only if the provisional meets the requirements of 35 USC 112. Many provisionals don't warrant a filing date.
Here's a scenario likely to repeat itself many times this year: an inventor prepares a sketchy provisional then after a long passage of time (e.g., nearly 12 months) contacts a patent attorney to file a nonprovisional to meet legal requirements. If no offer for sale, public use, or publication occurred prior to filing the provisional, the patent attorney can add any missing details in the nonprovisional. If not, one must file a nonprovisional within 12 months of the first activity or the patent will be lost.
False reliance on provisionals may be the leading cause of patent death once the one-year grace period is further limited under the first-to-file system of the America Invents act on March 13, 2013. And this is why patent attorneys require an invention disclosure with all activities pinned to a date.
For additional information under current US patent law, see my blog posts:
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
The Benefits of Provisional Applications: Slip, Sliding Away
Copyright © 2012 Robert Moll. All rights reserved.
I like the introduction, but what isn't covered are the pitfalls. The most common is based on the myth that a "sketchy" provisional locks in a filing date and gives one the ability to wait up to 12 months to file a detailed nonprovisional application. You have 12 months to file a nonprovisional, but only if the provisional meets the requirements of 35 USC 112. Many provisionals don't warrant a filing date.
Here's a scenario likely to repeat itself many times this year: an inventor prepares a sketchy provisional then after a long passage of time (e.g., nearly 12 months) contacts a patent attorney to file a nonprovisional to meet legal requirements. If no offer for sale, public use, or publication occurred prior to filing the provisional, the patent attorney can add any missing details in the nonprovisional. If not, one must file a nonprovisional within 12 months of the first activity or the patent will be lost.
False reliance on provisionals may be the leading cause of patent death once the one-year grace period is further limited under the first-to-file system of the America Invents act on March 13, 2013. And this is why patent attorneys require an invention disclosure with all activities pinned to a date.
For additional information under current US patent law, see my blog posts:
Leader Technologies v. FaceBook - Provisional Fails to Save Patent from On Sale Bar and Public Use
The Benefits of Provisional Applications: Slip, Sliding Away
Copyright © 2012 Robert Moll. All rights reserved.
Friday, October 12, 2012
Joe Mullin - People's Choice for Patent Journalist
Joe Mullin writes about patent law as it might appear in People magazine. But let's also give him credit: (1) he has own views based on fact research; (2) he dutifully trudges into "patent land" often enough to not get lost; and (3) he captures what's funny, human, or interesting in a topic that has the potential to bore people. His articles attract reader comments such as "software patents are bad" that "trip on hurdles" (1), (2) and (3), but the signal coming from Joe Mullin is worth that noise.
Here are links to Mr. Mullin's recent articles:
Jury finds patent on "look and feel" for online stores valid, infringed - Two defendants will pay much less than the plaintiff asked for $750,000 each
In Texas, an e-commerce pioneer fights patent on "look and feel" of websites - Digital River tells patent troll: we beat you by two years
Do it "on the Internet," get a patent, sue an industry-- it still works - At Texas trial, a defunct dot-com wrangles royalties from a swatch of e-commerce
Pioneering patent troll seeks Supreme Court's ear, and a cool $12 million
Copyright © 2012 Robert Moll. All rights reserved.
Here are links to Mr. Mullin's recent articles:
Jury finds patent on "look and feel" for online stores valid, infringed - Two defendants will pay much less than the plaintiff asked for $750,000 each
In Texas, an e-commerce pioneer fights patent on "look and feel" of websites - Digital River tells patent troll: we beat you by two years
Do it "on the Internet," get a patent, sue an industry-- it still works - At Texas trial, a defunct dot-com wrangles royalties from a swatch of e-commerce
Pioneering patent troll seeks Supreme Court's ear, and a cool $12 million
Copyright © 2012 Robert Moll. All rights reserved.
Thursday, October 11, 2012
America Invents Act - USPTO Extends Time For Public Comment On Proposed Rules for First-To-File
Today, the USPTO announced one can still submit comments on the proposed rules for the first-to-file provision of the America Invents Act (AIA). The comment period ended October 5, but the PTO reopened the time for comments until November 5. I have provided a PDF copy: First-Inventor-to-File Proposed Rules. The final rules will become effective on March 16, 2013.
Copyright © 2012 Robert Moll. All rights reserved.
The USPTO prefers any comment submissions by email, preferably in plaintext, but also accepts email with PDF and Word attachments at the following email address: fitf_rules@uspto.gov.
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, October 9, 2012
CLS Bank v. Alice Corp. - Federal Circuit Revisits Test for Software Patent Eligibility
Today, the Federal Circuit granted appellees CLS Bank International and CLS Services Ltd.'s petition for a rehearing en banc, vacated the Federal Circuit's Alice Corp. v. CLS Bank decision on software patent eligibility, and reinstated the appeal. The en banc decision may be significant to software patent owners and anyone facing software patent assertions.
Representative claim 1 of U.S. Patent No. 7,149,720 describes a data processing system that includes a computer configured (i.e., programmed) to perform certain steps:
1. A data processing system to enable the exchange of an obligation between parties, the system comprising:
a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and
a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.
The Federal Circuit majority held when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101…Unless the single most reasonable understanding is that a claim is directed to nothing more than a fundamental truth or disembodied concept, with no limitations in the claim attaching that idea to a specific application, it is inappropriate to hold that the claim is directed to a patent ineligible “abstract idea” under 35 U.S.C. § 101.
So the "nothing more" test lasted three months. How apt! And now the Federal Circuit invites the parties and amici to file briefs addressing the following questions:
a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
The court invites the views of the USPTO as amicus curiae. Other amici curiae briefs may be filed without consent and leave of court in compliance with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.
I expect many amici briefs will be filed seeking to influence the Federal Circuit's test for software patent eligibility.
Copyright © 2012 Robert Moll. All rights reserved.
Representative claim 1 of U.S. Patent No. 7,149,720 describes a data processing system that includes a computer configured (i.e., programmed) to perform certain steps:
1. A data processing system to enable the exchange of an obligation between parties, the system comprising:
a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and
a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.
So the "nothing more" test lasted three months. How apt! And now the Federal Circuit invites the parties and amici to file briefs addressing the following questions:
a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible "abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?
b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?
The court invites the views of the USPTO as amicus curiae. Other amici curiae briefs may be filed without consent and leave of court in compliance with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29.
I expect many amici briefs will be filed seeking to influence the Federal Circuit's test for software patent eligibility.
Copyright © 2012 Robert Moll. All rights reserved.
Monday, October 8, 2012
Apple's Smartphone Patent War Strategy
Today, Ars technica has an article that ponders why Steve Jobs decided to file over 200 patent applications to protect the features of the iPhone. The article argues this strategy arose from the sting of paying Creative $100 million to license a patent that related to the user interface of the Apple iPod. It sounds plausible, but I think Apple's strategy evolved from more than one event and may have originated when copyrights failed to protect the "look and feel" of the windows interface in Apple v. Microsoft. See Wikipedia Apple v. Microsoft for details.
Here's a link to the article: Creative pushed Steve Jobs to armor up for the smartphone patent war - Apple's patent zeal was apparently triggered by a long-forgotten MP3 player
Copyright © 2012 Robert Moll. All rights reserved.
Here's a link to the article: Creative pushed Steve Jobs to armor up for the smartphone patent war - Apple's patent zeal was apparently triggered by a long-forgotten MP3 player
Copyright © 2012 Robert Moll. All rights reserved.
Tuesday, October 2, 2012
America Invents Act - Preissuance Submissions - Revisited
On September 25, Groklaw posted a detailed article on the mechanics of filing a preissuance submission in the USPTO.
USPTO Third Party Prior Art Submissions System - Now Live - Groklaw
Copyright © 2012 Robert Moll. All rights reserved.
USPTO Third Party Prior Art Submissions System - Now Live - Groklaw
Copyright © 2012 Robert Moll. All rights reserved.
Apple v. Samsung - Juror Lied v. No, I Didn't!
So you ask what's the latest on the Apple v. Samsung patent infringement suit?
Samsung claims foreman lied about his past to get on Apple v. Samsung jury - Ars Technica
Samsung Demands New Apple trial -WSJ AllThingsD
Copyright © 2012 Robert Moll. All rights reserved.
Samsung claims foreman lied about his past to get on Apple v. Samsung jury - Ars Technica
Samsung Demands New Apple trial -WSJ AllThingsD
Copyright © 2012 Robert Moll. All rights reserved.
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