USPTO - Updated Interim Guidance on Patent Eligibility

The USPTO updated and provided new material to assist applicants seeking patents in technologies being rejected as seeking to patent "abstract ideas." See the 2014 Interim Guidance on Subject Matter Eligibility in July 2015.

As stated: "the USPTO has issued the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) for USPTO personnel to use when determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme Court, including Alice Corp., Myriad, and Mayo. The Interim Eligibility Guidance supplements the June 25, 2014 Preliminary Examination Instructions issued in view of Alice Corp. and supersedes the March 4, 2014 Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature/Natural Principles, Natural Phenomena, and/or Natural Products issued in view of Mayo and Myriad.

The USPTO has produced another update pertaining to subject matter eligibility "July 2015 Update: Subject Matter Eligibility in response to the public comment on the 2014 Interim Patent Eligibility Guidance.  The July 2015 Update includes a new set of examples and discussion of various issues raised by the public comments, and is intended to assist examiners in applying the 2014 Interim Patent Eligibility Guidance during the patent examination process. The USPTO is now seeking public comment on the July 2015 Update."

Copyright © 2015 Robert Moll. All rights reserved.

USPTO & AIPLA - Co-host Roadshows on Patent Quality and AIA Trials August 24, 26, and 28, 2015

The USPTO notified of the following events:

"The USPTO is pleased to co-host with AIPLA a series of cross-country roadshows in August with stops in Santa Clara, California; Dallas, Texas; and Alexandria, Virginia. The full-day program will focus on enhancing patent quality (morning session) and conducting AIA trials (afternoon session) with numerous speakers from the USPTO as well as private practice.

CLE is available, and lunch is included. To register to attend, please visit: http://www.aipla.org/learningcenter/AIARoadShows/Pages/default.aspx

Hope to see you there for a full day of learning from the experts

Schedule:

Monday, August 24, 2015

• Santa Clara University, Locatelli Center
• Co-sponsored by the High Tech Law Institute of Santa Clara Law

Wednesday, August 26, 2015

• Belo Mansion, Dallas
• Co-sponsored by the IP Section of the Dallas Bar Association

Friday, August 28, 2015

• USPTO headquarters, Madison Auditorium

Agenda:

9:00 - 9:10 am: Opening Remarks

9:10 to 9:45 am: Track 1: Patent Quality Initiative Overview

9:45 to 10:45 am: Track 2: Clarity of the Record and Drafting High Quality Applications

10:45 to 11 am: Break

11:00 to Noon: Track 3: Interviews and Measuring Quality

Noon to 1:30 pm: Lunch - Luncheon Speaker: Russell Slifer, Deputy Director of the USPTO

1:30 to 1:50 pm: Track 4: PTAB State of the Board

1:50 to 2:45 pm: Track 5: Proposed AIA Trial Rule Changes

2:45 to 3:30 pm: Track 6: Hot Issues in AIA Trials

3:30 to 4 pm: Break

4 to 5 pm: Track 7: Actual AIA Trial Hearing

Speakers Include:

USPTO:

• Valencia Martin Wallace, Deputy Commissioner of Patent Quality
• Sandie Spyrou, Senior Quality Assurance Specialist in the Office of Patent Quality Management
• Bob Bahr, Senior Patent Counsel in the Office of the Deputy Commissioner for Patent Examination Policy
• Tim Callahan, Director of Technology Center 2400
• Marty Rater, Chief Statistician in the Office of Patent Quality Assurance
• Vice Chief Judge Scott Boalick
• Lead Judge Susan Mitchell
• Judge Peter Chen
• Judge Miriam Quinn
• Judge Linda Horner
• Lead Judge Matt Clements
• Judge Tina Hulse
• Judge Stacey White
• Judge Georgianna Braden
• Lead Judge Mike Tierney
• Judge Sally Medley

Practitioners

• Tom Irving, Finnegan Henderson
• Courtenay Brinckerhoff, Foley Lardner
• Ken Nigon, RatnerPrestia
• Professor Collen Chien, Santa Clara Law School
• Brad Pederson, Patterson Thuente
• Erika Arner, Finnegan Henderson
• Sharon Israel, Mayer Brown
• David McCombs, Haynes and Boone
• Todd Baker, Oblon
• Dorothy Whelan, Fish & Richardson
• William Noon, Illumina"

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Electronic Filing System (EFS-Web) FAQs - Each PDF File Limited to 25 MB

The EFS-Web has made life slightly easier, but it strikes me as quirky. Let me give a few examples. Recently, I received larger files (e.g., over 30 MB) to submit in an information disclosure statement. Even if my email server didn't return them as undeliverable it made me consider if they could be uploaded to the USPTO. Google search pulled up the USPTO EFS-Web FAQs web page that says each PDF copy must not exceed 25 MB. I can't think of too many web sites that would tolerate the hours of downtime each weekend to perform maintenance. I don't want to be sound like a curmudgeon, but even the lingo is a bit confusing. As stated in the FAQs a person cannot file in EFS-Web Contingency during scheduled EFS-Web outages" because "EFS-Web and EFS-Web Contingency share a common backend system." Wait why is it called contingency? Oh yeah weekend maintenance trumps contingency. Don't make me think!

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Trial Statistics 1998-2015

The Patent Trial and Appeal Board (PTAB) trials have become a major factor in resolving patent disputes. To see what is going on, you may want to check out the USPTO statistics: PTAB recent statistics and graphical AIA trial statistics and PTAB/BPAI statistics 1998-2013. If you have questions on the statistics, the USPTO recommends calling 571-272-7822.

Copyright © 2015 Robert Moll. All rights reserved.

Amazon Web Services Agreement's Intellectual Property Non-Assert Clause

Reading a cloud service provider contract is no fun. It is typically written in hyper-technical legalese, tiny font, and long convoluted sentences. And this style helps cloud service providers structure customer relationships to their advantage in surprising ways. How many of us are willing to slug through the fine print? Maybe this is the point since the service provider can remind a customer to not forget "our agreement" when a dispute arises leading to the customer read the "agreement" for the first time too late.

Amazon Web Services is a popular service for software startups, but the customer agreement appears to have some IP issues. In Beware the IP non-assert clause in AWS cloud service agreement, warns ex-Microsoft patent chief, Joff Wild flags a problematic non-assert clause in the standard Amazon Web Services (AWS) customer agreement. It states "during and after the Term, you will not assert, nor will you authorize, assist, or encourage any third party to assert, against us or any of our affiliates, customers, vendors, business partners, or licensors, any patent infringement or other intellectual property infringement claim regarding any Service Offerings you have used" (Section 8.5). Aren't many of us customers of Amazon? If so are we shielded from patent infringement for any AWS service used?

As noted by Joff Wild, the non-assert clause appears to be way too broad. And now we will see how it is interpreted by a court, because Amazon seeks to dismiss a patent infringement suit based on the AWS customer agreement. For details see Todd Bishop of GeekWire's article Amazon fights patent suit using little-noticed clause in standard AWS customer agreement.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - MasterImage 3D, Inc. v. RealD Inc. - Patent Owner Must Prove Patentability in Motion to Amend Claims

In MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (PTAB July 15, 2015), the Patent Trial and Appeal Board (PTAB) discusses requirements for a patent owner seeking to establish the patentability of substitute claims in a motion to amend.

This is intended to clarify the patent owner's burden to set forth a prima facie case of patentability of narrower substitute claims in a motion to amend as described in Idle Free Systems, Inc. v Bergstrom, Inc., IPR2012-00027, Paper 26 (PTAB June 11, 2013)(informative).

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Multiple Systems Down for Maintenance on July 18 - 19, 2015

The USPTO announced it will "perform maintenance affecting multiple systems beginning at 8 p.m., Saturday, July 18 and ending at 5 p.m., Sunday, July 19 ET." This will affect public and private PAIR. For further details see USPTO Systems Status Page.

Copyright © 2015 Robert Moll. All rights reserved.

Google’s Patentability Search Improvements - Extending CPC codes to NPL

The initial step in assessing whether or not an invention qualifies for patent protection is to find the closest prior art in a pre-filing patentability search. For search I like using a variety of sites including www.freepatentsonline.com, www.uspto.gov and Google for patents and non-patent literature (NPL).

Today, Google announced some improvements to its prior art search engine. I think the most important is it has associated the USPTO's new classification codes CPC to NPL. This might be viewed as "obvious to do" but should prove helpful since free online patent databases do not relate NPL to the USPTO classification codes such as CPC, which is now used by both the USPTO and the EPO. Kudos to Google on this as long as they don't retain your search queries.

For further details see Tech Crunch's article Google’s New, Simplified Patent Search Now Integrates Prior Art And Google Scholar and Google's Public Policy Blog Improving Patent Quality One Search at a Time.

Copyright © 2015 Robert Moll. All rights reserved.

Stanford Technology Law Review - Functional Claiming and the Patent Balance

I suggest reading David Kappos and Christopher P. Davis' Functional Claiming and the Patent Balance in the recently published Stanford Technology Law Review volume 18, issue 2. Functional claiming has become an important issue in software patenting.

See STLR online for other IP articles.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Google Chrome No Longer Able to Access EFS-Web and Private PAIR After September 2015

On June 22, the USPTO announced "Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts your ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that will allow you to use the Java plug-in so that you can continue to log into EFS-Web and Private PAIR: https://support.google.com/chrome/answer/6213033(link is external).

This workaround will only work through September 2015, when Google Chrome plans to end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users using version 45 and above will no longer be able to use the workaround and thus will not be able to log into EFS-Web or Private PAIR.  Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari. For additional information regarding Java and Chrome please visit https://java.com/en/download/faq/chrome.xml(link is external)."

Let's see if Google develops a permanent solution for Chrome users that require these USPTO services.

Also the USPTO announced PAIR is unavailable 4:30 to 5:30 AM Eastern daily, i.e., no problem.

Copyright © 2015 Robert Moll. All rights reserved.

FOSS Patents - US Supreme Court Denies Google's Petition on Android's Use of Oracle's Java API

I suggest reading Oracle v. Google Android-Java copyright case goes back to San Fran: Supreme Court denies Google petition at FOSS Patents. Google's petition for certiorari (Supreme Court review) has failed despite substantial efforts and numerous amici briefs arguing Oracle's Java API are a method of operation rather than copyrightable subject matter. The case next considers if Google's use of the APIs in Android is nonetheless a "fair use." FOSS Patents expects Google will lose.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Patent Quality - Examiner Interviews & USPTO Tools - Tuesday, July 14

The USPTO announced Face-to-Face Examiner Interviews: A Demonstration of USPTO Tools runs noon - 1 pm Eastern, July 14.

In this second webinar in the Patent Quality series, the USPTO Director Timothy Callahan will demonstrate: "USPTO tools for virtual, face-to-face interviews and discussing various initiatives for enhancing the quality of examiner-Applicant interviews while collecting feedback and listening for new stakeholder ideas on the same."

Note - USPTO interviews are an important tool for reducing costs of patenting. 

In case you missed it, the first webinar was held on June 9: Clarity of the Record and videos and slides. Deputy Commissioner for Patent Examination Policy Drew Hirshfeld discussed examiner training on 35 U.S.C § 112, functional claiming, which is an important topic in software patenting, making the record clear, and the USPTO's clarity of record quality initiative.

Copyright © 2015 Robert Moll. All rights reserved.

Supreme Court - Kimble v. Marvel Entertainment - Patent Owner Cannot Charge Royalties After Term Expires

In Kimble v. Marvel Entertainment, LLC, the U.S. Supreme Court declined to overrule its earlier decision in Brulotte v. Thys Co. that a patent owner cannot charge royalties for use of a patented invention after the patent term expires.

Brulotte has been the law for fifty years so I don't think this recent decision is that surprising. Perhaps more interesting is the fact the Supreme Court granted little credit to the economic arguments raised to overrule Brulotte and the idea "bad economics" should trump long standing US patent law.

Copyright © 2015 Robert Moll. All rights reserved.

PTAB - Expediting Ex Parte Appeal

The USPTO announce a pilot program where the Patent Trial and Appeal Board (PTAB) will expedite an ex parte appeal if appellant withdraws another appeal (e.g., abandons or files a RCE).

The pilot program is available to June 16, 2016 or PTAB expedites 2,000 appeals, whichever occurs first.

Here's the USPTO announcement:

"The PTAB is pleased to announce a new pilot program, beginning on June 19, 2015, that will allow appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (Board) to expedite review of one appeal in return for withdrawing another appeal. The Expedited Patent Appeal Pilot will allow appellants having multiple ex parte appeals currently pending before the Board to have greater control over the priority with which their appeals are decided and reduce the backlog of appeals pending before the Board. Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge under 37 C.F.R. § 41.3. The Office has waived the petition fee and provided a form-fillable PDF (Form PTO/SB/438) for use in filing the certification and petition."

For more information refer to the Federal Register Notice and PTAB web page.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Improvements to Private PAIR

Today, the USPTO announced improvements to Private PAIR, which gives online access to records of unpublished patent applications:
 
"Users can now self-administer, in real time, a number of routine administrative tasks that previously required the submission of a paper form. The new Private PAIR features enable self-administration of the following items:

• Entity status changes (Micro, Small, or Regular Undiscounted)
• Update Correspondence Address
• Update Maintenance Fee Address
• Request a new customer number

Entity status and correspondence address updates will be visible in the transaction history, and a copy of each change request will be uploaded to the Image File Wrapper (IFW).

Users may notice that all applications are set to Regular Undiscounted entity status by default upon initial filing until the application completes formalities review. Once this review is complete, the entity status will be updated based on any assertion of small or micro entity status.

The Address & Attorney/Agent tab has also been enhanced to include complete information for Correspondence Address, Maintenance Fee Address and Power of Attorney information."

Learn more at the PAIR Announcements page.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Progress on Intellectual Property (IP) Rights

In a blog post, Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee addresses IP rights issues in China:

"It was clear during my recent trip to Beijing, China, that the timing for the visit could not have been better. China is at a crossroads in its economic evolution, and as such governmental officials are considering changes to every aspect of intellectual property law. After a series of high-level meetings, what was clear to both me and my China team—led by Senior Counsel Mark Cohen—was an increased recognition in China of the value of IP to the nation’s economic ambitions. It is through a mutual respect for the importance of IP rights and protections that U.S. companies will be able to fully and successfully compete in the Chinese market.

From May 25th to the 27th, I met with senior leaders across China’s IP landscape, starting with Vice Premier Wang Yang. The Vice Premier stated quite clearly that China aspires to be an innovation-based economy. China is no longer content with manufacturing goods invented by others, he and other leaders said, as the country aims to move up the economic value chain and compete in the global marketplace of inventors. As such, we were told that China recognizes that improving IP rights and enforcement is not just in the interest of the U.S., it is also in the interest of China. We heard this not just from the Vice Premier but in meetings with China’s State Intellectual Property Office (SIPO), the Ministry of Commerce (MofCOM), the State Administration for Industry and Commerce (SAIC), the National People’s Congress (NPC), and the Supreme People’s Court (SPC).

Much progress needs to be made in China in all forms of IP law, from patents and trademarks, to copyrights and trade secrets. I made clear in my meetings that we seek to work with China to develop a market-oriented, business-driven innovation environment that allows businesses the freedom to license and contract as conditions warrant. Those businesses need to be free from governmental interference in an environment comprising transparency and rule of law. Already assisting U.S. businesses in China are three USPTO IP attachés, including Beijing-based Joel Blank, who was part of my delegation.

We discussed with our counterparts China’s new IP specialized courts, offering input on how to ensure this reform guarantees justice for IP owners. We pushed for reforms to ensure effective protection and enforcement of trade secrets that would include revisions to its criminal law. We emphasized the need for increased protection for copyright and trademark owners while recognizing the importance of reforms already enacted, offering feedback on further reform efforts being discussed in China on those issues. And we did so, in each case, by emphasizing how these changes would be mutually beneficial for both countries.

I also had the unique opportunity to meet with U.S. industry representatives while in Beijing. It’s invaluable to hear about the IP challenges and issues faced by those “on the ground,” and to discuss the ways in which the U.S. government can help them.

This visit built on a successful trip by Deputy Director Russell Slifer to the IP5 Heads meeting in Suzhou, China, a week earlier. Along with signing a Memoranda of Cooperation with the Korean IP Office and the Japanese Patent Office, Deputy Director Slifer met with SIPO Commissioner Shen Changyu. Deputy Director Slifer and I had just hosted Commissioner Shen at the USPTO in April, and I had a productive meeting with him on this recent trip.

During that meeting, I signed a Memorandum of Understanding with Commissioner Shen that commits the USPTO and SIPO to a general framework of bilateral cooperation. We both committed to educational programs on how best to protect patents in each country’s legal system, and could organize activities related to USPTO programs such as the Patent Prosecution Highway and the Global Dossier initiative. SIPO and the USPTO process more patent applications than any of the other IP offices in the world, and I am encouraged by the furthering of our agencies’ collaboration.

As evidence of this collaboration, SIPO also participated in a cause close to my heart. On May 25, I gave a speech at Columbia University's East Asia Center in Beijing to an audience of 60 people, mostly women between the ages of 25 and 40, on the importance of women in STEM (science, technology, engineering, and mathematics) fields. A representative from SIPO echoed my remarks, and emphasized the link between a strong STEM education system and an innovative society.

Engagement with SIPO—and Chinese policymakers more broadly—will continue later this year with the next meeting of the U.S.-China Joint Commission on Trade and Commerce that I co-chair with Deputy U.S. Trade Representative Robert Holleyman. This trip helped lay the groundwork for that very important bilateral trade dialogue, in which IP is a top priority. We’re moving forward on plans for that meeting with a commitment to continue to encourage China’s evolution to an innovative economy that increasingly respects and promotes IP rights."

Copyright © 2015 Robert Moll. All rights reserved.

PWC's 2015 Patent Litigation Study - A change in patentee fortunes

I suggest reading PWC's 2015 Patent Litigation Study - A change in patentee fortunes.

Here are PWC's observations for what happened in 2014 with a few comments:

1. Patent lawsuits filed dropped 13%. Congress should consider this with respect to patent reform.
2. Median damage awards second-lowest point in two decades. Is the median skewed by lack of mega damage awards in 2014?
3. Juries decided 67% of the patent cases and median jury award were 31 times greater than median bench awards, which indicates patent owners should request jury trials 100% of the time. 
4. Differences exist in awards based on industry; from highest to lowest: biotech /pharma, telecommunications, and medical devices, and consumer products. 
5. Median time to trial grew to about 2.4 years.
6. Top five districts favoring patents remain: ED Texas, Virginia Eastern, Delaware, Wisconsin Western, Florida Middle. Northern District of California has lots of cases filed, but is not as favorable to patent owners.
7. Damages for non-practicing entities (NPEs) 4.5 times greater than for practicing entities. This is surprising given the media fed to the public (see juries) about "patent trolls."
8. Federal Circuit modifies some ruling of the trial court in about 50% of the cases.

Copyright © 2015 Robert Moll. All rights reserved.

Fortune - Let Oracle Own APIs, Justice Dept Tells Top Court in Surprise Filing

I suggest reading the Fortune article: Let Oracle Own APIs, Justice Dept Tells Top Court in Surprise Filing and DOJ's filing.

The DOJ filing which is worth reading encourages the US Supreme Court to deny Google's petition to hear its arguments to deny copyright protection to Oracle's Java related application programming interfaces (APIs).

It does a good job of explaining the scope of copyright protection for software:

Petitioner (Google) contends, however, that even if the declaring code is an “original work[] of authorship” under Section 102(a), it is not entitled to copyright protection because it constitutes a “method of operation” or “system” within the meaning of Section 102(b). That argument is incorrect. . . . Section 102(b) is not a limitation on what kinds of expressive works may be protected by a copyright. Rather, it is a limitation on how broadly the copyright extends.

DOJ stated, among other things, in the filing: "The Android platform uses the Java programming language, but [Google] purposely designed Android not to be compatible with the Java platform or interoperable with Java programs."

Google's response: "We still look forward to defending the concepts of interoperability that have traditionally contributed to innovation in the software industry."

Copyright © 2015 Robert Moll. All rights reserved.

Supreme Court - Commil USA, LLC v. Cisco Systems - Belief of Patent Invalidity No Defense to Induced Infringement Claim

In Commil USA, LLC v. Cisco Systems, the US Supreme Court held that a defendant's belief that a patent is invalid is not a defense to a claim it induced infringement.

Commil USA, LLC, the owner of a patent relating to a method of implementing wireless networks, had sued Cisco Systems, Inc., for making and selling wireless networking equipment that directly infringed and for inducing others to infringe the patent by selling them infringing equipment.

Cisco was found liable for direct and induced infringement, but had raised the defense to induced infringement that it had a good-faith belief Commil’s patent was invalid. The trial court ruled evidence to show the belief inadmissible. On appeal, the Federal Circuit stated the trial court erred in excluding Cisco’s evidence of its good-faith belief.

The Supreme Court has had a pattern of reversing the Federal Circuit in recent years, and this case was no different. It held a defendant’s belief that a patent is invalid is not a defense to a claim of induced infringement. Induced infringement under 35 U. S. C. §271(b) only applies when a defendant knew of the patent and that the induced acts constitute infringement. Similarly, contributory infringement under 35 USC §271(c) requires knowledge of the patent and knowledge of patent infringement.

This contrasts with direct infringement under 35 USC §271(a), which is a matter of strict liability where the defendant’s mental state is irrelevant.

The Supreme Court reminded that Global-Tech requires knowledge that the induced acts constitute patent infringement and that the defendant's actions demonstrated it knew it would be causing customers to infringe patent.

The Supreme Court said induced infringement and validity are separate defenses, and said it was unwilling to undermine the presumption that a patent is valid under 35 USC §282(a) proof otherwise must rebut the presumption by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. Partnership.

The Supreme Court noted accused inducers who believe a patent is invalid can seek ex parte reexamination of the patent by the USPTO and that district courts can dissuade frivolous suits by sanctioning attorneys, e.g., under Rule 11 or awarding attorney fees under 35 USC 285.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Patents Dashboard: Tracks Pendency, Quality and Timeliness of US Patents

US Commissioner of Patents Peggy Focarino informs the USPTO recently updated the Patents Dashboard that estimates examination dates and pendency of applications. See Redesigned and Updated Patents Dashboard.

Copyright © 2015 Robert Moll. All rights reserved.

Federal Circuit - Akamai Technologies, Inc. v. Limelight Networks, Inc. - Infringement by Inducement Requires Direct Infringement

In Akamai Technologies, Inc. v. Limelight Networks, Inc. the Federal Circuit held that the patent owner Akamai failed to prove infringement by inducement by Limelight, because Akamai failed to show direct infringement.

The Federal Circuit held that direct infringement only occurs when a single party or a joint enterprise performs all of the steps of the method. Further, encouraging or instructing others to perform an act is not the same as performing the act and will not result in direct infringement. Instead, multiple entities must be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

This case relates to U.S. Patent No. 6,108,703 (the '703 patent). It describes an invention that, among other thing, stores web pages at the content provider (web site) and stores their embedded objects at another domain closer to the client. This is one of inventor Daniel Lewins' contributions to the Web: store popular web pages at the web site so hits can be tracked, but store their embedded objects at domains closer to the browsers to reduce page latency.

Claim 19 of the '703 patent recites a content delivery service, comprising:

• replicating a set of page objects across a wide area network of content servers managed by a domain other than a content provider domain;
• for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain;
• responsive to a request for the given page received at the content provider domain, serving the given page from the content provider domain; and
• serving at least one embedded object of the given page from a given content server in the domain instead of from the content provider domain.

Limelight performed all the steps of claim 19 except for the step of "tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain," which it encouraged customers perform.

Such is insufficient, and the Federal Circuit explained: "In the present case, the asserted claims were drafted so as to require the activities of both Limelight and its customers for a finding of infringement. Thus, Akamai put itself in a position of having to show that the allegedly infringing activities of Limelight’s customers were attributable to Limelight. Akamai did not meet this burden, because it did not show that Limelight’s customers were acting as agents of or otherwise contractually obligated to Limelight or that they were acting in a joint enterprise when performing the tagging and serving steps. Accordingly, we affirm the district court’s grant of Limelight’s motion for JMOL of non-infringement under § 271(a)."

In general, a method claim should be written so that a single entity performs each step to avoid the requirement that the multiple entities that perform the claim be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

Copyright © 2015 Robert Moll. All rights reserved.

USPTO - Transition from the United States Patent Classification (USPC) to the Cooperative Patent Classification (CPC) System

In a blog post Successful Transition to the Cooperative Patent Classification System, the USPTO Commissioner for Patents Peggy Focarino informs of the USPTO's adoption of an international classification scheme and addition of prior art documents from the EPO, China, and Korea:

"On January 1, 2015, the USPTO successfully transitioned to the Cooperative Patent Classification (CPC) system from the United States Patent Classification (USPC) system. The CPC is a collaborative venture between the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO), designed to develop a common, internationally compatible classification system for technical documents used in the patent granting process. It offers a more robust and agile classification system for both offices’ user communities and enables more technical documents to be classified, because the USPTO and EPO are both entering documents into the system. Since its launch, the USPTO has successfully issued about 47,000 U.S. patent documents under the CPC.

As we transitioned to the CPC, we made sure to keep patent applicants and owners updated on the transition process. Leading up to the changeover, throughout 2013 and 2014, numerous bilateral CPC events were held with external stakeholders, providing notice that the USPC would become a static document collection for utility patents after December 2014. Stakeholders may continue to see a limited number of U.S. patent grants still issuing with USPC symbols due to allowed applications already in the publication cycle, but the USPTO will no longer actively assign USPC symbols to issued utility patents. However, plant and design patents are not covered in the CPC, so they will continue to be published with USPC symbols.

To facilitate searching for documents, the USPTO’s existing tools have been modified to provide all users the ability to search documents classified in the CPC, the USPC (now a static document collection), and the International Patent Classification (IPC) systems. USPTO examiners are now required to classify and search using the CPC, and we want our user community to understand that the CPC will be continuously updated through bilateral revision and reclassification projects between the USPTO and the EPO. We are also working on creating a bilateral examiner-focused collaborative environment for discussions, work-sharing initiatives and training opportunities.

As a leader in the global patent community, the USPTO is dedicated to providing a quality classification system for employees and stakeholders, and one that is compatible with the international patent community. Most importantly, we will ensure that the quality of the classification system remains strong and agile.

The CPC provides a more comprehensive search result set that includes national documents from China and Korea, as well as several other countries that are classifying their national documents into the CPC; documents that were not previously available for viewing or retrieval under the USPC. We intend to keep the quality of the CPC documents at a high level by helping more countries classify their national documents into the CPC, and we will continue to work with the EPO to perform an ongoing number of CPC revision projects.

We welcome your thoughts on the transition from the USPC to the CPC. More information, including frequently asked questions, is available on the CPC page ...."

Copyright © 2015 Robert Moll. All rights reserved.

Hague Agreement Concerning the International Registration of Industrial Designs - Effective on May 13, 2015

As a reminder, US applicants will be able to file an international design application with either the World Intellectual Property Organization (WIPO) or the USPTO through the Hague Agreement concerning the International Registration of Industrial Designs (the Hague Agreement) on or after May 13, 2015.

The design application filed under the Hague agreement can contain one or more inventions and designate one or more of the 64 countries that are party to the Hague agreement. A US design patent resulting from an application filed under the agreement will have a 15-year patent term from the issue date.

USPTO website details: Hague Agreement Concerning International Registration of Industrial Designs.

See my related articles: USPTO - Hague Agreement - Single Design Patent Application Registers up to 100 Designs in Over 62 Territories and USPTO - US Residents Filing A Design Application under Hague Agreement?

Copyright © 2015 Robert Moll. All rights reserved.

Supreme Court - Amendments to the Federal Rules of Civil Procedure - Reducing Litigation Costs

Chief Justice Roberts of the United States Supreme Court submitted amendments to the Federal Rules of Civil Procedure to Congress on April 29. The amendments most likely to impact US patent litigation are as follows:

1. Rule 26 is amended so that it no longer permits discovery of any information that may reasonably lead to the discovery of admissible evidence. Further, discovery must be proportional to the needs of the case. This sounds like a helpful change, but it's hard to predict if this will reduce the discovery costs in patent litigation.

2. Rule 84 is deleted, including Form 18, the standard patent infringement complaint form. This may promote greater specificity in the patent infringement complaint, which is helpful.

Unless Congress objects the amendments become effective on December 1, 2015. I expect lobbyist to face an uphill battle if they challenge these two amendments given they are intended to make litigation less costly.

Copyright © 2015 Robert Moll. All rights reserved.

WSJ - Data Storage Startup Infinidat Raises $150 Million at $1.2 Billion Valuation

Tonight, I suggest reading the Wall Street Journal article Data Storage Startup Infinidat Raises $150 Million at $1.2 Billion Valuation. So an Israeli makes a major contribution to EMC, leaves and sells a startup to IBM in 2008, and forms yet another data storage company with 200 employees and 100 software patents? That's an argument to respect your elders!

Copyright © 2015 Robert Moll. All rights reserved.