USPTO - Corrected Web-ADS and Enhanced Initial Web-ADS

Today, USPTO notified of a better way to correct an application data sheet (ADS). The old ADS form in PDF was difficult to read, but the worse feature was it did not permit underlining the data to show changes forcing applicants to get out a pen and underline the added language.

Here is the USPTO notice:

"In December 2015, the USPTO implemented the Corrected Web-ADS and Enhanced Initial Web-ADS in EFS-Web in response to customer feedback. Since then, EFS-Web has received over 8,000 ADS submissions using the Enhanced Web-ADS and over 5,000 Corrected ADS submissions using the Corrected/Updated Web-ADS.

For information about these features, please see the Quick Start Guides linked below. (1) Corrected Web-based Application Data Sheet (Corrected Web ADS) -- Registered eFilers may use this option to provide a Corrected/Updated ADS per 37 CFR 1.76(c)(2), where changes will be identified with underlining for insertions and strike-through for deletions. EFS-Web will generate and attach the Corrected ADS PDF, which will be reviewed and processed by the Office of Patent Application Processing (OPAP). See the EFS-Web Corrected Application Data Sheet Quick Start Guide. (2) Enhanced Initial Web-based Application Data Sheet (Web ADS)-- EFS-Web eFilers have the option to import Inventor information, Domestic Benefit/National Stage data, and/or Foreign Priority data from a parent application(s) when completing their Web ADS submission.

Data may be retrieved for eFilers who either have power of attorney in the parent application or if the parent application is made available to the public, i.e., published or patented.  See the EFS-Web Web-based Application Data Sheet Quick Start Guide.

If you have any questions or suggestions for improvement, please contact the Electronic Business Center at 1-866-217-9197 or at ebc@uspto.gov."

Copyright © 2016 Robert Moll. All rights reserved.

Stanford Technology Law Review - Patent Trolls: Moral Panics, Motions in Limine, and Patent Reform

If you are skeptical of articles applying the label "patent troll" to yet another patent owner, you may not be crazy. See Edward Lee, Patent Trolls: Moral Panics, Motions in Limine, and Patent Reform in the Stanford Technology Law Review.

From the abstract: "This Article provides the first empirical study of the use of the term "patent troll" by U.S. media-specifically, examining leading newspapers and online publications. The study offers several key findings: (1) First, starting in 2006, the U.S. media surveyed used "patent troll" far more than any other term, despite the efforts of scholars to devise alternative, more neutral-sounding terms. The tipping point was the combination of the controversial Blackberry and eBay patent cases in 2006—prior to that time, "patent holding company" was the most popular term. (2) Second, the media more often portrayed such patent entities in a one-sided, negative light with very little analysis or empirical support. For example, few works provided statistics or discussion of any studies to support their negative portrayal. Practically no articles mentioned the lack of a working requirement in U.S. patent law, which permits all patentees not to practice their inventions. These findings provide support for the recent judicial decisions that have barred, at trial, the use of the term "patent troll" as unfairly prejudicial."

Copyright © 2016 Robert Moll. All rights reserved.

Federal Circuit - Enfish v. Microsoft - 35 USC 101 - Software Patent Eligibility

In Enfish, LLC v. Microsoft Corp., (2016) the Federal Circuit recently held that a claim directed to database software was patent eligible under 35 U.S.C. §101, because it was not directed to an abstract idea. This decision is worth discussing because Enfish clarifies whether a claim is an abstract idea.

In Alice Corp. v. CLS Bank Int’l (2014), the Supreme Court set forth a two-part test under 35 U.S.C. §101 to determine if a claim to a software-related invention is patent eligible. The test asks: (1) is the claim directed to an abstract idea; and (2) if so, does the claim recite "significantly more" (an "inventive concept") than the abstract idea?

The Supreme Court did not establish a definitive rule to determine what constitutes an "abstract idea." Instead, the Supreme Court found it sufficient to compare a claim to claims found to be directed to an abstract idea in previous cases.  For example, fundamental economic and conventional business practices are often held to be an abstract idea, but comparing a claim to a claim directed to a process for curing rubber or hedging a risk only takes one so far.

Thus, it's understandable why many have found it tricky to decide what constitutes an abstract idea. Some say the abstract ideas is the preamble while others say it's some or all of the body of the claim. Some even assert the abstract idea is the entire body of the claim except the "processor" and "memory." Who knows? This shifting definition of the abstract idea defeats all inventions from being patented. Yet Alice itself noted we should tread carefully in construing this exclusionary principle of abstract ideas lest it swallow all of patent law. See Alice, 134 S. Ct. at 2354. Compare to Diamond v. Diehr, 450 U.S. 175, at 189 (1981) (cautioning that overgeneralizing claims, "if carried to its extreme, make[s] all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious").

Given these kind of difficulties, the Federal Circuit in Enfish  cautions it is not enough to ask whether a claim involves a patent-ineligible concept. For all inventions at some level embody, use, reflect, rest upon, or apply ... abstract ideas. Rather, the directed to inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether 'their character as a whole is directed to excluded subject matter.

The Supreme Court stated claims that improve the functioning of the computer itself or improve an existing technological process might not succumb to the abstract idea exception. See Alice, 134 S. Ct. at 2358-2359. The Supreme Court in Bilski noted improvement not defined by reference to "physical" components do not doom the claims and to hold otherwise risks resurrecting a bright-line machine-or-transformation test or a categorical ban on software patent Bilski v. Kappos, 561 U.S. 593, at 603-604 (2010).

It is one thing to say you have added "a processor" and "a memory" to a fundamental economic practice such as Bilski or Alice or mathematical equation. It is quite another to say the claim is patent ineligible when it is directed to a specific implementation that improves the functioning of the computer itself or improves an existing technological process.

The Federal Circuit gets this in Enfish and says the claims were not directed to an abstract idea under step one of the Alice analysis, thus didn't need to proceed to step two. Even if we proceed to step two, the Supreme Court has stated whether the additional elements recite "significantly more" than an abstract idea is a search for an "inventive concept."  Thus, if the claim is not disclosed, suggested, or made obvious by the prior art, it should be understood the claim recites "significantly more" or "an inventive concept." Otherwise, we maintain an illogical position that claim is novel (35 U.S.C. §102) and non-obvious (35 U.S.C. §103) yet somehow doesn't recite an inventive concept. Surely, the meeting all of the requirements of 35 U.S.C. § 102 and §103 indicates that the claims encompass an inventive concept. The Supreme Court has imported the novelty requirement of 35 USC 102 into 35 USC 101, and hopefully won't take a further step "off the cliff" by judicially constructing an inventive concept hurdle that exceeds the novelty requirements of 35 USC 102 and obviousness requirement of 35 USC 103.

See the recent USPTO Memo Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC).

Washington Post - Google Beats Oracle on Copyright, Defeating $9 Billion Claim

Today, Washington Post reports Google Beats Oracle on Copyright, Defeating $9 Billion Claim based on a jury verdict that Google made only fair use of Oracle's APIs in the Android operating system.

Congress states four factors determine if the fair use defense exists. The jury must consider: (1) the purpose and character of the accused use; (2) the nature of the copyrighted work; (3) the amount or substantiality of the part used in relation to the copyright work as a whole; and (4) the effect of the accused use on the potential market or value of the copyrighted work.

The Supreme Court has stated elsewhere that factor (4) is "undoubtedly the single most important element of fair use." Thus, a jury verdict for fair use which appears to impact the potential market for Java in mobile devices is a bit surprising. Perhaps the $9B damages Oracle sought worked against the jury's sensibilities.

Copyright © 2016 Robert Moll. All rights reserved.

Congress - Defend Trade Secrets Act of 2016 (DTSA)

Trade secret is now governed by Federal law rather than state law. This is a major shift in trade secret law. Further, compared to changes we have seen in U.S. patent law, the Defend Trade Secrets Act of 2016 (DTSA), signed by President Obama on May 12, 2016, passed with little controversy.

See Professor Dennis Crouch's [Updated] Defend Trade Secrets Act of 2016: Markup and Commentary for a marked up version and series of articles on DTSA.

Copyright © 2016 Robert Moll. All rights reserved.

US Supreme Court - Standards for Ordering Attorney Fees in Intellectual Property Cases

Professor Ronald Mann of Columbia Law has an interesting article on the US Supreme Court's effort to clarify when attorney fees should be granted in intellectual property cases. The Court will hear the parties arguments next week.

See Professor Mann's article in the SCOTUS blog: Argument preview: “The first thing we do, let’s pay all the lawyers!” – Justices return, again, to standards for ordering attorney’s fees in IP cases.

Copyright © 2016 Robert Moll. All rights reserved.

US Supreme Court - Cuozzo Speed Technologies, LLC v. Lee

The U.S. Supreme Court's case Cuozzo Speed Technologies, LLC v. Lee is getting lots of attention. One indicator is the numerous amicus briefs filed in support of either party (see above link to the SCOTUS blog). Here are the legal issues being considered by the Court:

(1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

The legal issues are technical, but how they are resolved will impact the value of US patents. If you don't want to "step into the jungle" of reading the conflicting amicus briefs, I recommend reading Professor Ronald Mann of Columbia Law's recent article on SCOTUS blog, which is concise, explains why we have the issues, and gives a balanced view of the controversy.

Updated April 26: Professor Mann has another interesting article on the SCOTUS blog: Argument analysis: Justices struggle to read “tea leaves” in Congress’s slipshod drafting of Patent Act provisions for inter partes review.

Copyright © 2016 Robert Moll. All rights reserved.

Professor Mark Lemley - Rethinking Assignor Estoppel - A Comment

In Rethinking Assignor Estoppel, Professor Mark Lemley argues assignor estoppel interferes with invalidating bad patents and employee mobility. I don't completely agree with Professor Lemley, but think this article is definitely worth reading.

Assignor estoppel bars an inventor who has assigned a patent from challenging its validity in a patent infringement suit. It is an issue an employee may face after filing a patent application(s) at a company and leaving for a competitor. The article argues that assignor estoppel should be granted less often in patent infringement cases.

As stated in the abstract, assignor estoppel may not make complete sense: "The Supreme Court and the Federal Circuit have repeatedly emphasized the public interest in testing the validity of patents, weeding out patents that should not have been issued. But there is one important group of people the law systematically prevents from challenging bad patents. Curiously, it is the very group patent law is supposed to support: inventors themselves. The century-old doctrine of assignor estoppel precludes inventors who file patent applications from later challenging the validity or enforceability of the patents they receive. The stated rationale for assignor estoppel is that it would be unfair to allow the inventor to benefit from obtaining a patent and later change her tune and attack the patent when it benefits her to do so. The Supreme Court has traditionally disfavored the doctrine, reading it narrowly. But the Federal Circuit has expanded the doctrine in a variety of dimensions, and applied it even when the benefit to the inventor is illusory. Further, the doctrine misunderstands the role of inventor-employees in the modern world. 

More important, the expansive modern form of assignor estoppel interferes substantially with employee mobility. Inventors as a class are put under burdens that we apply to no other employee. If they start a company, or even go to work for an existing company in the same field, they will not be able to defend a patent suit from their old employer. The result is a sort of partial noncompete clause, one imposed without even the fiction of agreement and one that binds anyone the inventor comes in contact with after leaving the job. Abundant evidence suggests that noncompetes in general retard innovation and economic growth, and several states prohibit them outright, while all others limit them. But assignor estoppel is a federal law doctrine that overrides those state choices.

It is time to rethink the doctrine of assignor estoppel. I describe the doctrine, its rationale, and how it has expanded dramatically in the past 25 years. I argue that the doctrine is out of touch with the realities of both modern inventing and modern patent law, and that it interferes with both the invalidation of bad patents and the goal of employee mobility. Should the Supreme Court take up the doctrine, it is unlikely to survive in its current form. Rather, it should – and will – return to its much more limited roots."

Yes, assignor estoppel may give an overly generous shield against a challenge to patent validity. and why bar a challenge to patent validity when an inventor's awareness of the prior art is many times incomplete when signing the inventor declaration? However, the argument that assignor estoppel substantially interferes with employee mobility seems like a real stretch.

Copyright © 2016 Robert Moll. All rights reserved.

PTAB - Final Rules for Rules of Procedure for AIA Trials

Today, the USPTO published changes to the Rules of Procedure for America Invents Act (AIA) trials before the Patent Trial and Appeal Board (PTAB).

As stated in the Federal Register: "This final rule amends the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office or USPTO) trial practice for inter partes review (“IPR”), post-grant review (“PGR”), the transitional program for covered business method patents (“CBM”), and derivation proceedings that implemented provisions of the Leahy-Smith America Invents Act (“AIA”) providing for trials before the Office."

Specifically, PTAB rules address claim construction, permit a patent owner to submit testimony evidence in the preliminary response on whether to institute an inter partes review, establish Rule 11 certification and sanctions for violations of the duty of candor, and replace the 60-page limit on a petition with a 14,000 word limit. A key change is how Board should interpret patent claims in AIA trials. The final rule state a party may request a narrow district court standard for claim construction if the patent is expected to expire within 18 months from the filing date of the petition challenging its validity. The logic is claims cannot be amended in an expired patent. The final rules state if a US patent is not expired it can be amended (so they say!) so should be given the broadest reasonable interpretation (BRI) which tends to result in invalidity.

In the meantime, in Cuozzo Speed Technologies, LLC v. Michelle Lee, Director of USPTO, the Supreme Court is considering claim construction in AIA trials. See the SCOTUS blog for details.

Also see the PTAB blog for other details on the final rules.

Copyright © 2016 Robert Moll. All rights reserved.

Reuters - Yahoo exploring sale of $1 billion-$3 billion in 'non-core assets': CFO

In Reuters: Yahoo exploring sale of $1 billion-$3 billion in 'non-core assets': CFO

Yahoo hopes to obtain $1-3 billion in a sale of its patents, property and other "non-core assets" rather than spin off its core business. The core businesses have suffered steady decline from competition with Facebook and Google. It is looking at quick sales. Not sure this alone will help turn things around, but Yahoo has had success with patent sales in the past. According to Yahoo CFO Ken Goldman, Yahoo has sold or licensed more than $600 million in patents over the last three years.

Copyright © 2016 Robert Moll. All rights reserved.

Federal Circuit - Apple v. Samsung - Obviousness

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

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

Copyright © 2016 Robert Moll. All rights reserved.

Professor Ronald Mann - Justices Unsettled on Standard for Enhanced Damages in Patent Cases

Professor Ronald Mann has an interesting post: Argument aalysis: Justices unsettled on standard for enhanced damages in patent cases on the SCOTUS blog.

More specifically, the Supreme Court hearing revisits how to interpret 35 U.S.C. 284, which states "Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed."

Commentators are speculating this case will change the standard in favor of patent owners, but I think Professor Ronald Mann has a more realistic view based on the hearing that the justices are unsettled and struggling as to the standard for enhanced damages.

In my opinion, Justice Scalia "irreverent" and insightful views were missed. At least Justice Breyer's insistence that big companies are often threatening little companies with enhanced damages is an "EFF balloon" that needed to be "burst" by someone. Justice Breyer's narrow interpretation when to award enhanced damages makes it too difficult to obtain them and would encourage patent infringement by big companies.

Copyright © 2016 Robert Moll. All rights reserved.

Federal Circuit - Mentor Graphics v. Synopsys - Approves PTAB's Policy of Partial Review of Challenged Patents

In Synopsys, Inc. v. Mentor Graphics Corp., the Federal Circuit in a split panel (2-1) rejected Synopsys' argument that Patent Trial and Appeal Board (PTAB) must review all of the challenged claims raised in its petition for inter partes review. The Federal Circuit stated 35 U.S.C. § 318(a) only requires PTAB address claims as to which review was granted.

This blesses PTAB's current practice which reduces the value of IPR challenges in that those claims not accepted for review are "still out there" and may serve as grounds for patent infringement.

Copyright © 2016 Robert Moll. All rights reserved.

Carnegie Mellon v. Marvell - Settle Patent Infringement Suit for $750M

Today, Carnegie Mellon University and Marvel Technology Group settled a patent infringement suit for $750 million.

Last year the Federal Circuit had vacated a $1.54 billion damage award in favor of Carnegie Mellon University (CMU) based on Marvell Technology Group's  infringement of U.S. Patent No. 6,201,839 and U.S. Patent No. 6,438,180 relating to improved accuracy of reading data from hard disk drives.

For additional details, please see my post: Federal Circuit - Carnegie Mellon University v. Marvell Technology Group - $1.5 Billion Damage Award and Joe Mullin's Marvell agrees to pay record-breaking $750M to university to end patent lawsuit.

Copyright © 2016 Robert Moll. All rights reserved.

WSJ - Patent Litigation Up in 2015, Despite Efforts to Rein it In

In the Wall Street Journal article Patent Litigation Up in 2015, Despite Efforts to Rein it In, Ashby Jone's refers to a RPX report as supporting that non-practicing entities (NPEs) lawsuits seeking to monetize patents are flourishing in 2015 despite Congress' patent reform efforts and the Supreme Court decision making it more difficult to get a software patent in Alice.

The article is interesting, but doesn't explain why patent infringement lawsuits filed vary in 2013-2015:

2015: NPEs filed 3,604 lawsuits

2014: NPEs filed 2,891 lawsuits

2013: NPEs filed 3,733 lawsuits

Despite lots of activity, Congress didn't pass any significant patent reform in 2013-2015. Further, although the Supreme Court's heightened standard for software patent eligibility in Alice might explain why less software patent owners would want to file a lawsuit in 2014, it doesn't explain the rise in lawsuits in 2015.

Copyright © 2016 Robert Moll. All rights reserved.

BTLJ - Strategic Decision Making in Dual PTAB and District Court Proceedings

In Strategic Decision Making in Dual PTAB and District Court Proceedings, Saurabh Vishnubhakat, Arti K. Rai, and Jay P. Kesan investigate how litigants are using inter partes review and covered business method review in conjunction with federal court litigation. The link above leads to a 61-page PDF copy of the article, which will be published in the Berkeley Technology Law Journal (BTLJ).

From their abstract:

"The post-grant review proceedings set up at the U.S. Patent and Trademark Office’s Patent and Trial Appeal Board by the America Invents Act of 2011 have transformed the relationship between Article III patent litigation and the administrative state. Not surprisingly, such dramatic change has itself yielded additional litigation possibilities: Cuozzo Speed Technologies v. Lee, a case addressing divergence between the manner in which the PTAB and Article III courts construe patent claims, will soon be argued at the U.S. Supreme Court.

Of the three major new PTAB proceedings, two have proven to be popular as well as controversial: inter partes review and covered business method review. Yet scholarly analysis of litigant behavior in these proceedings has been limited thus far to descriptive data summaries or specific policy perspectives on these types of post-grant challenges, such as their impact on the well-rehearsed patent troll debate. In this article, we present what is to our knowledge the first comprehensive empirical and analytical study of how litigants use these inter partes review and covered business method review relative to Article III litigation.

A major normative argument for administrative ex post review is that it should be an efficient, accessible, and accurate substitute for Article III litigation over patent validity. We assess the substitution hypothesis, using as our unit of analysis the individual patent. Our data indicate that the “standard model” of explicit substitution—wherein a district court defendant subsequently brings an administrative challenge to patent validity—occurs for the majority (70%) of patents challenged in inter partes review. An important implication of this effect is that the PTAB should use a claim construction standard that mirrors that of the district court, so that substituting administrative process for judicial process does not lead to substantively different outcomes.

Notably, however, standard substitution is not the only use of the PTAB: particularly in the area of inter partes reviews, we also see a surprising percentage of cases (about 30%) where the petitioner is not the target of a prior suit on the same patent. The frequency of these nonstandard petitioners, as well as their tendency to join the same petitions as an entity that has been sued, varies by technology. Our data on nonstandard petitioners provide some insight into the extent to which patent challengers are engaging in collective action to contest the validity of patents. Depending on the details of how nonstandard petitioning and collective action are being deployed, this activity could provide a social benefit or constitute a form of harassment."

Copyright © 2016 Robert Moll. All rights reserved.

Lex Machina Patent Trial and Appeal Board (PTAB) Report 2015

The Lex Machina Patent Trial and Appeal Board (PTAB) Report 2015 summarizes what is happening in the validity challenges in the USPTO America Invents Act (AIA) trials.

Copyright © 2016 Robert Moll. All rights reserved.

Harvard and NYU Business School - The Bright Side of Patents

In The Bright Side of Patents, Joan Farre-Mensa of Harvard Business School and Deepak Hegde and Alexander Ljungqvist of NYU's School of Business investigate and conclude patents help startups. I would add this is my experience working with startups over two decades. I have seen startups mainly fail for lack of sales, but if you are a technology leader and have even moderate commercial success the world is ready to copy you. We have seen it too many times. Patents can help a startup acquire a sustainable competitive advantage. So if trade secret is not an option, you should definitely think about it.

From the Abstract: "Motivated by concerns that the patent system is hindering innovation, particularly for small inventors, this study investigates the bright side of patents. We examine whether patents help startups grow and succeed using detailed micro data on all patent applications filed by startups at the U.S. Patent and Trademark Office (USPTO) since 2001 and approved or rejected before 2014. We leverage the fact that patent applications are assigned quasi-randomly to USPTO examiners and instrument for the probability that an application is approved with individual examiners’ historical approval rates. We find that patent approvals help startups create jobs, grow their sales, innovate, and reward their investors. Exogenous delays in the patent examination process significantly reduce firm growth, job creation, and innovation, even when a firm’s patent application is eventually approved. Our results suggest that patents act as a catalyst that sets startups on a growth path by facilitating their access to capital. Proposals for patent reform should consider these benefits of patents alongside their potential costs."

Copyright © 2016 Robert Moll. All rights reserved.

Stanford Technology Law Review - Patents and Small Participants in the Smartphone Industry

Patenting in the smartphone industry? Better check out the Stanford Technology Law Review article Patents and Small Participants in the Smartphone Industry.

From the abstract: "This Article seeks to show how patent rights affect the ability of small participants to enter, compete, and exit smartphone markets. The study collected and used comprehensive empirical data on patent grants, venture funding, mergers and acquisitions, initial public offerings, patent litigation, and marketing research data. This Article shows empirically that small participants succeed in the market when they have a low and specific critical mass of patents and that this success exceeds the general norms in the startup world. Surprisingly, the analysis demonstrates that the level of financing and market success do not increase with larger patent portfolios. Lastly, despite the controversies over patent trolls, this Article demonstrates that patent litigation, whether from operating companies or NPEs, does not appear to be a significant concern for small players and does not appear to pose barriers to entry. The Article concludes by arguing that patent rights are providing incentives for innovation among small industry players and that contrary to some expectations, patent rights support competitiveness in the smartphone industry for small market players."

Copyright © 2016 Robert Moll. All rights reserved.

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.

US Supreme Court - Reviewing USPTO Patent Trials - Claim Construction & Institution of IPR

The US Supreme Court recently decided to review the USPTO's inter partes review proceedings that have been a much better way to invalidate US patents than going to federal court. 
  
Specifically, in Cuozzo Speed Technologies v. Lee the US Supreme Court is expected to address: (1) whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Why is the US Supreme Court is addressing IPR?

Greg Stohr and Susan Decker's article Patent `Death Squad' Rules Draw U.S. Supreme Court Scrutiny gives one possible explanation:

"The U.S. Supreme Court will scrutinize a new system that helps technology companies like Google Inc. and Apple Inc. eliminate troublesome patent disputes without going to court. Taking up a case involving a device that alerts drivers when they are speeding, the justices agreed to decide whether an administrative board set up by Congress in 2011 is being too quick to invalidate patents.

The reviews by the board in the U.S. Patent and Trademark Office have been described by former federal appellate Judge Randall Rader as “death squads” for patents. The board has invalidated at least part of a disputed patent 87 percent of the time, compared with a 42 percent success rate for challenges in federal court, according to a brief by the pharmaceutical industry, which opposes the board review system."

Copyright © 2016 Robert Moll. All rights reserved.

PTAB - One-Year Bar, 35 U.S.C. § 315(b), and Estoppel, 35 U.S.C. § 325(e)(1)

Today, the Patent Trial and Appeal Board (PTAB) notified it has designated two decisions precedential:

LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015), which interprets "served with a complaint" for triggering the one-year bar under 35 U.S.C. § 315(b).

Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015), which interprets estoppel under 35 U.S.C. § 325(e)(1).

Copyright © 2016 Robert Moll. All rights reserved.

USPTO - Major Power Outage and Service Interruption on December 22-25, 2015

The USPTO stated it had "a major power outage on December 22, 2015, damaging equipment that required the subsequent shutdown of many of its online and IT systems. This includes its filing, searching, and payment systems, as well as the systems used by examiners across the country. As of December 24, the USPTO estimates that these systems will be impacted through at least the Federal holiday on Friday, December 25, 2015." 

"The USPTO web site at http://www.uspto.gov/blog/ebiz/ reports that under this emergency situation, it will consider each day from Tuesday, December 22, 2015, through Thursday, December 24, 2015, to be a “Federal holiday within the District of Columbia” under 35 U.S.C. § 21 and 37 C.F.R. §§ 1.6, 1.7, 1.9, 2.2(d), 2.195, and 2.196. Any action or fee due on these days will be considered as timely for the purposes of, e.g., 15 U.S.C. §§ 1051(b), 1058, 1059, 1062(b), 1063, 1064, and 1126(d), or 35 U.S.C. §§ 119, 120, 133, and 151, if the action is taken, or the fee paid, on the next succeeding business day on which the USPTO is open (37 C.F.R. §§ 1.7(a) and 2.196). 

A subsequent notice is anticipated to be issued as needed if the USPTO’s systems are not fully operational by Monday, December 28, 2015.

Correspondence

Under 37 C.F.R. §§ 1.6(a)(2), 2.195(a)(4), and 2.198, certain correspondence deposited in the Priority Mail Express® service of the United States Postal Service (USPS) in accordance with 37 C.F.R. §§ 1.10 or 2.198 will be considered filed on the date of deposit (as shown by the “date accepted” on the mailing label) with the USPS.

Thus, any paper or fee properly deposited in the Priority Mail Express® service of the USPS on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, in accordance with 37 C.F.R. §§ 1.10 or 2.198, will be considered filed on its respective date of deposit in the Priority Mail Express® service of the USPS (as shown by a “date accepted” on the mailing label).

Under 37 C.F.R. §§ 1.6(a)(4) and 2.195(a)(2), patent- and trademark-related correspondence transmitted electronically to the USPTO will be considered filed in the USPTO on the date the USPTO received the electronic transmission.

Thus, any patent- or trademark-related correspondence transmitted electronically to the USPTO on Tuesday, December 22, 2015, Wednesday, December 23, 2015, or Thursday, December 24, 2015, will be considered filed in the USPTO on the date the USPTO received the electronic transmission.
Patent correspondence successfully received by the USPTO through the Electronic Filing System (EFS-Web) and filed in compliance with the EFS-Web Legal Framework will receive the date indicated on the Acknowledgement Receipt. 

Trademark filings properly filed through TEAS, TEASi, and ESTTA will receive the date indicated in the e-mail confirmation sent at the time of a successful filing.

Payment Processing
 

The USPTO system outage has affected the ability for customers to process Patent Maintenance Fee payments and submit Deposit Account replenishments online via the Finance Online Shopping Page. Available alternatives include the following:

Patent Maintenance Fees:  Pay by wire or mail as instructed at www.uspto.gov/patents-maintaining-patent/maintain-your-patent. The payment date will be the date received at the USPTO unless you are using the certificate of mailing procedure set forth in 37 CFR 1.8 or the USPTO Priority Mail Express procedure set forth in 37 CFR 1.10.
 

Deposit Account Replenishment: Replenish by wire or mail as instructed at www.uspto.gov/learning-and-resources/fees-and-payment/deposit-accounts/deposit-account-replenishment-options. Note that replenishments will be processed as of the date received, but deposit account balances will not reflect these replenishments until USPTO systems are restored.
 

Public and Private Patent Application Information Retrieval (PAIR) are also impacted.
Status updates will be issued on the USPTO systems alert page (www.uspto.gov/blog/ebiz/) as they become available, as well as on the USPTO Facebook (www.facebook.com/uspto.gov (link is external)) and Twitter (www.twitter.com/uspto (link is external)) accounts.

For further questions, contact the Patents Electronic Business Center (PEBC) by telephone at 1-866-217-9197 or by email at ebc@uspto.gov. PEBC hours of operation Monday through Friday, from 6 a.m. to midnight."

Copyright © 2015 Robert Moll. All rights reserved.

UC Berkeley - Intellectual Property Protection for Computer Programs

The Berkeley Center for Law & Technology (BCLT) in conjunction with the Berkeley Technology Law Journal (BTLJ) is hosting a symposium on legal protection of computer software on April 14-15, 2016.

It will be held at the Chevron Auditorium, International House at UC Berkeley. Registration opens January 2016. Full agenda, with speakers.

As announced by BCLT: "In the aftermath of the Supreme Court’s decision in Alice v. CLS Bank and its denial of Google’s petition for certiorari in the Oracle software copyright case, new uncertainties exist about the roles that patent, copyright, and other forms of IP are and should be playing in the legal protection of computer software.

It will bring together leading scholars in both law and economics, industry representatives, and practicing lawyers who will consider what the courts are getting right and wrong and how intellectual property law ought to evolve to do a better job for the industry and the public that so depends on software these days. The symposium will include sessions on the roles of patents, copyrights and trade secrecy. Also featured will be empirical research on the state of the software industry and on the evolving strategies on which software developers rely to protect their innovations."

Copyright © 2015 Robert Moll. All rights reserved.

Joe Mullin - Patent Trolls Filed Hundreds of Lawsuits to Beat December 1 Deadline - Brief Comment

In Patent Trolls Filed Hundreds of Lawsuits to Beat December 1 Deadline, Mr. Joe Mullin states the amendment to the Federal Rules of Civil Procedure effective December 1, 2015 triggered a US patent litigation spike in late-November 2015. He attributes the spike, i.e., 790 filings, to those seeking to avoid unfavorable amendments such as the heightened standard for a patent infringement complaint and elimination of FRCP Form 18.

Mr. Mullin's observations are not that surprising given a good lawyer should file a lawsuit before the law changes adversely to a client. But what is less clear is why he talks about "patent trolls" filing hundreds of lawsuits. Why are they trolls? He explains "with the exception of pharmaceutical giant AstraZeneca, all the companies appear to be patent-holding shell companies." He might be right, but the danger is labeling a company a patent troll, because they have a business of licensing patents. Can't say I understand all of his views, but it appears the assumption is patent licensing by a non-practicing entity is a suspect category of business if you are an LLC and/or have an obscure name.

Copyright © 2015 Robert Moll. All rights reserved.