In SCA Hygiene Products v. First Quality Baby Products, the Federal Circuit held the defense of laches (unreasonable, prejudicial delay in commencing suit) may bar recovery of damages on a patent infringement claim brought within 35 USC §286's six-year limit after considering the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. on laches in a copyright case.
The SCA court noted A.C. Aukerman Co. v. R.L. Chaides Construction Co. stated the following principles regarding the defense of laches:
1. Laches is cognizable under 35 U.S.C. § 282
(1988) as an equitable defense to a claim for
patent infringement.
2. Where the defense of laches is established, the
patentee’s claim for damages prior to suit may
be barred.
3. Two elements underlie the defense of laches:
(a) the patentee’s delay in bringing suit was
unreasonable and inexcusable, and (b) the alleged
infringer suffered material prejudice attributable
to the delay.
4. A presumption of laches arises where a patentee
delays bringing suit for more than six
years after the date the patentee knew or
should have known of the alleged infringer’s
activity.
5. A presumption has the effect of shifting the
burden of going forward with evidence, not the
burden of persuasion.
The SCA court stated laches can prevent an injunction, but in such a case the infringer could be required to pay an ongoing royalty. The majority (6 to 5) issued a 60-page opinion that in the end states the US Patent Act of 1952 codified the case law which included the laches defense as one of the "unenforceability defenses."
Also see my related article: CAFC - SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC - Reviewing Laches and Equitable Estoppel.
Copyright © 2015 Robert Moll. All rights reserved.
Wednesday, September 23, 2015
Monday, September 21, 2015
PTAB - Webinar Proposed AIA Trial Rules on Thursday, October 1
Today, PTAB notified it is hosting a free webinar on the proposed AIA trial rules noon to 1 pm ET on Thursday, October 1.
As stated in the notice: "Lead Judge Susan Mitchell will walk through the proposed rule changes followed by a discussion with Lead Judge Mike Tierney and Lead Judge Tom Gianetti about the background, rationale, and implications of the proposed rules. To review the proposed rules in advance, please visit the Federal Register Notice.
On Tuesday, October 6th, AIPLA is holding a companion webinar to address the proposed rule changes from AIA trial practitioners' perspectives, including views from Todd Baker of Oblon and Joe Palys of Paul Hastings. The practitioners will address the practical implications of the rules and how they may alter current AIA trial practice and strategy.
For more information about AIPLA's webinar.
Together, these two programs are designed to address the proposed AIA trial rules from all angles. And at the conclusion of each webinar, viewers will have the opportunity to pose questions to the judges and practitioners. Please attend to participate in the development of the AIA trial rules and share your input."
Webinar Access Information:
As stated in the notice: "Lead Judge Susan Mitchell will walk through the proposed rule changes followed by a discussion with Lead Judge Mike Tierney and Lead Judge Tom Gianetti about the background, rationale, and implications of the proposed rules. To review the proposed rules in advance, please visit the Federal Register Notice.
On Tuesday, October 6th, AIPLA is holding a companion webinar to address the proposed rule changes from AIA trial practitioners' perspectives, including views from Todd Baker of Oblon and Joe Palys of Paul Hastings. The practitioners will address the practical implications of the rules and how they may alter current AIA trial practice and strategy.
For more information about AIPLA's webinar.
Together, these two programs are designed to address the proposed AIA trial rules from all angles. And at the conclusion of each webinar, viewers will have the opportunity to pose questions to the judges and practitioners. Please attend to participate in the development of the AIA trial rules and share your input."
Webinar Access Information:
| Event address for attendees |
|
| Event number: |
994 593 512 |
| Event password: |
123456 |
| Audio
conference: |
1-650-479-3208 |
| Access code: |
994 593 512 |
Copyright © 2015 Robert Moll. All rights reserved.
Thursday, September 17, 2015
USPTO - Interview Practice - New Automated Interview Request (AIR)
Today, the USPTO released "a new online interview scheduling
tool Automated Interview Request (AIR) that allows applicants to request an
interview with an Examiner for their pending patent application. By submitting this type of interview request, the pending patent application will be in compliance with the written authorization requirement for Internet communication in accordance with MPEP §502.03. This authorization will be in effect until the Applicant provides a written withdrawal of authorization to the Examiner of record."
The USPTO AIR form is available on the interview practice page, which gives tips on interviews, which can help applicants efficiently prosecute patents and a link to video conferencing.
The USPTO directs questions to examinerinterviewpractice@uspto.gov and interview specialists.
Copyright © 2015 Robert Moll. All rights reserved.
The USPTO AIR form is available on the interview practice page, which gives tips on interviews, which can help applicants efficiently prosecute patents and a link to video conferencing.
The USPTO directs questions to examinerinterviewpractice@uspto.gov and interview specialists.
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, September 15, 2015
PTAB - Streamlined, Expedited Patent Appeal Pilot for Small and Micro Entities
The Patent Trial and Appeal Board (PTAB) notified of an interesting pilot program that may be useful if you are a small or micro entity facing an appeal.
"The PTAB is pleased to announce a second pilot program that will allow small or micro entity appellants with only a single ex parte appeal pending before the Patent Trial and Appeal Board (Board) to expedite review of that appeal in return for agreeing to streamline the appeal. Specifically, the appeal must not involve any claim subject to a rejection under 35 U.S.C. § 112, and the appellant must agree to the disposition of all claims subject to each ground of rejection as a single group and waive any request for an oral hearing.
The Streamlined, Expedited Patent Appeal Pilot for Small Entities will allow small or micro entity appellants who streamline their appeals to have greater control over the priority with which their appeals are decided. The streamlining of appeals under this pilot will also assist the Board to more efficiently reduce the overall inventory 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/441) for use in filing the certification and petition. For more information about the pilot program and how to participate, please refer to the Federal Register notice at https://www.federalregister.gov/articles/2015/09/15/2015-23090/streamlined-expedited-patent-appeal-pilot-for-small-entities
PTAB also notified it "has recently published statistics on the Expedited Patent Appeal Pilot program on its Web page at http://www.uspto.gov/sites/default/files/documents/Expedited%20Patent%20Appeal%20Pilot%20ending%2020150909.pdf.
The statistics show that petitions filed under the Expedited Patent Appeal Pilot program are being decided in an average of two days from the date of filing and that decisions on appeals accorded special status under this program currently are issued in an average of one month from the date of grant of the petition."
If you meet the requirements, the PTAB is suggesting you may get an appeal decision in about one month based on the statistics. Yes, appellant must agree to the disposition of all claims subject to each ground of rejection as a single group" and "waive any request for an oral hearing," but if you are willing to do that, meet all requirements, and need a quick decision it sounds useful. A caveat if many people use this procedure -- will the "one month to decision" promise hold?
Copyright © 2015 Robert Moll. All rights reserved.
"The PTAB is pleased to announce a second pilot program that will allow small or micro entity appellants with only a single ex parte appeal pending before the Patent Trial and Appeal Board (Board) to expedite review of that appeal in return for agreeing to streamline the appeal. Specifically, the appeal must not involve any claim subject to a rejection under 35 U.S.C. § 112, and the appellant must agree to the disposition of all claims subject to each ground of rejection as a single group and waive any request for an oral hearing.
The Streamlined, Expedited Patent Appeal Pilot for Small Entities will allow small or micro entity appellants who streamline their appeals to have greater control over the priority with which their appeals are decided. The streamlining of appeals under this pilot will also assist the Board to more efficiently reduce the overall inventory 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/441) for use in filing the certification and petition. For more information about the pilot program and how to participate, please refer to the Federal Register notice at https://www.federalregister.gov/articles/2015/09/15/2015-23090/streamlined-expedited-patent-appeal-pilot-for-small-entities
PTAB also notified it "has recently published statistics on the Expedited Patent Appeal Pilot program on its Web page at http://www.uspto.gov/sites/default/files/documents/Expedited%20Patent%20Appeal%20Pilot%20ending%2020150909.pdf.
The statistics show that petitions filed under the Expedited Patent Appeal Pilot program are being decided in an average of two days from the date of filing and that decisions on appeals accorded special status under this program currently are issued in an average of one month from the date of grant of the petition."
If you meet the requirements, the PTAB is suggesting you may get an appeal decision in about one month based on the statistics. Yes, appellant must agree to the disposition of all claims subject to each ground of rejection as a single group" and "waive any request for an oral hearing," but if you are willing to do that, meet all requirements, and need a quick decision it sounds useful. A caveat if many people use this procedure -- will the "one month to decision" promise hold?
Copyright © 2015 Robert Moll. All rights reserved.
Monday, September 7, 2015
USPTO - Improving Global Patent Prosecution - September 8, 2015
This arrived on Labor Day, the USPTO reminds:
September 8: IMPROVING GLOBAL PATENT PROSECUTION
October 13: Update on the Enhanced Patent Quality Initiative
November 10: Special Programs for Patent Prosecution
"The Patent Quality Chat webinar series
continues tomorrow, Tuesday, September 8th, from noon – 1pm EDT; this month’s
topic is Improving Global Patent Prosecution, hosted by Deputy Commissioner for
International Patent Cooperation Mark Powell and Director of International
Programs Maria Holtmann. Mr. Powell and Ms. Holtmann will discuss how to
improve global patent prosecution highlighting a new program the USPTO is
exploring with other IP offices – global preliminary search.
Attend tomorrow (Tues 9/8) at noon using this
link: https://uspto-events.webex.com/uspto-events/onstage/g.php?MTID=eb647eaa3698d32e22b83f833360a6b43
Throughout the Chat webinar event, stakeholder
participation will be solicited via our event email box: PatentQualityEventParticipationBox@uspto.gov
More information about the Patent Quality Chat
webinar series, including a recording of last month’s event on Measuring Patent
Quality, can be found on the Chat Web page: http://www.uspto.gov/patent/initiatives/patent-quality-chat
All of the webinars in this series are free and
open to the public. No CLE credit will be available through the USPTO. Video
recordings and presentation materials from the webinars will be posted on our
Patent Quality Chat Web page accessed online through the link above after each
event.
Upcoming Patent Quality Chat webinar series for 2015September 8: IMPROVING GLOBAL PATENT PROSECUTION
October 13: Update on the Enhanced Patent Quality Initiative
November 10: Special Programs for Patent Prosecution
All events are exclusively via webinar from
noon – 1 p.m. EDT on the second Tuesday of the month."
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, August 29, 2015
USPTO - PAIR Not Available 4:30 am - 5:30 am ET Daily
In August 2015, the USPTO notified PAIR unavailable 04:30 AM to 05:30 AM ET daily.
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
Friday, August 28, 2015
USPTO - New Patents Petitions Timeline Now Available
On August 26, the USPTO notified:
"The Office of Petitions has launched a new USPTO
Patents Petitions Timeline that provides information on petition types that
can be filed throughout each stage of the patent prosecution process. For each
petition type, users can easily access information on average pendency over the
past 12 months of decided petitions, the deciding office, petition grant rates,
and link to specific sections of the Manual of Patent Examining Procedure
(MPEP) or other parts of the USPTO website that relate to each petition type.
The Patents Petitions Timeline website was developed
to help our customers access more detailed statistics, including grant and
pendency rates, and useful information about each petition. This will help
applicants make better quality decisions on when to file a particular petition
type during prosecution or for the life of the issued patent.
Please visit the USPTO's USPTO
Patents Petitions Timeline found on http://www.uspto.gov/patents-application-process/petitions/timeline/uspto-petitions-timeline."
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
USPTO - New Patent Maintenance Fees Storefront Now Available
On August 28, the USPTO notified:
Patent Maintenance Fees Storefront - http://www.uspto.gov/learning-and-resources/fees-and-payment/patent-maintenance-fees-storefront
Frequently Asked Questions - http://www.uspto.gov/learning-and-resources/fees-and-payment/online-fee-payment-tools-faqs
Fee Payment System Customer Survey Highlights - http://www.uspto.gov/learning-and-resources/fees-and-payment/transition-resources"
Copyright © 2015 Robert Moll. All rights reserved.
"New information about the USPTO’s upcoming
release of the Patent
Maintenance Fees Storefront is now available online. We’ve also published a
list of Frequently
Asked Questions that provides further details about this new online fee
payment tool. It includes information about the USPTO’s new online shopping
cart, which will be available in the Patent Maintenance Fees Storefront.
If you haven’t done so already, check out the Fee
Payment System Customer Survey Highlights to see how your input has helped
us design our newest online fee payment tools.
If you have questions or feedback about the
Patent Maintenance Fees Storefront, send an email to fpng@uspto.gov. Your input continues to drive
our plans for future systems and your question could appear on our Frequently
Asked Questions page.
Having trouble using the in-text hyperlinks? You can copy and paste
these URLS to your web browser:Patent Maintenance Fees Storefront - http://www.uspto.gov/learning-and-resources/fees-and-payment/patent-maintenance-fees-storefront
Frequently Asked Questions - http://www.uspto.gov/learning-and-resources/fees-and-payment/online-fee-payment-tools-faqs
Fee Payment System Customer Survey Highlights - http://www.uspto.gov/learning-and-resources/fees-and-payment/transition-resources"
Copyright © 2015 Robert Moll. All rights reserved.
Sunday, August 23, 2015
PTAB - Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
On August 20, 2015, the USPTO published Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board.
As stated in the Federal Register, this proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office) trial practice for inter partes (IPR), 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.
Copyright © 2015 Robert Moll. All rights reserved.
As stated in the Federal Register, this proposed rule would amend the existing consolidated set of rules relating to the United States Patent and Trademark Office (Office) trial practice for inter partes (IPR), 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.
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, August 22, 2015
San Jose Mercury News - Apple v. Samsung: Court Rejects Latest Appeal
If you are interested on the latest on the Apple and Samsung patent infringement battle, the San Jose Mercury News reports Apple v. Samsung: Court Rejects Latest Appeal.
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, August 18, 2015
Federal Circuit - Akamai v. Limelight - Joint Infringement of Method Claim
In US patent law the standard of joint infringement of method claims seems to be shifting in recent years. Although not a lengthy decision on August 13, 2015, in Akamai Technologies v. Limelight Network, the Federal Circuit made it easier to prove joint infringement.
The Federal Circuit began in safe territory by stating: "direct infringement under occurs where all steps of a claimed method are performed by or attributable to a single entity." The Federal Circuit stated if "more than one actor is involved in practicing the steps, a court must determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement. When should it be attributable? The Federal Circuit says we will hold an entity responsible for others’ performance of method steps in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise, and not just when we have a principle-agency relationship or a contract between the actors.
Copyright © 2015 Robert Moll. All rights reserved.
The Federal Circuit began in safe territory by stating: "direct infringement under occurs where all steps of a claimed method are performed by or attributable to a single entity." The Federal Circuit stated if "more than one actor is involved in practicing the steps, a court must determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement. When should it be attributable? The Federal Circuit says we will hold an entity responsible for others’ performance of method steps in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise, and not just when we have a principle-agency relationship or a contract between the actors.
Copyright © 2015 Robert Moll. All rights reserved.
Wednesday, August 12, 2015
Professor Peter Mennel et al. - Patent Case Management Judical Guide - New Third Edition
Professor Peter Mennel of UC Berkeley Law School published a new third edition of the Patent Case Management Judical Guide. I am just starting to read it this week, but based on my experience with previous editions expect this 1321-page Guide is again a valuable detailed description of US patent litigation. Part of the strength is it is based on contributions from leading practitioners and patent academics. It's amazingly a free PDF download which should prove valuable to attorneys and judges in the patent litigation trenches.
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
Tuesday, August 4, 2015
USPTO - Windows 10/Microsoft Edge: Compatibility Issue for EFS-Web and Private PAIR Authentication
Today, the USPTO announced "For users who are updating their operating
systems to Windows 10, please be aware that Windows 10 comes installed with a
new web browser, Microsoft Edge, that does not support plug-ins and will not
run Java. Because Java is required for authentication to EFS-Web and Private
PAIR, this impacts your ability to access EFS-Web and Private PAIR via
Microsoft Edge.
To access EFS-Web and Private PAIR using
Windows 10, Oracle is recommending the use of alternative browsers such as
Firefox and Internet Explorer. IE11 will also be available on Windows 10. For
additional information regarding Java compatibility and instructions on how to
access IE11 on Windows 10, please visit: http://www.java.com/en/download/faq/win10_faq.xml
The USPTO is working on a longer term plan to
improve the overall authentication process. For USPTO updates regarding this
issue please visit either of our Announcements pages:
•
EFS – Web Announcements: http://www.uspto.gov/patents-application-process/applying-online/efs-web-announcements
•
PAIR Announcements: http://www.uspto.gov/patents-application-process/checking-application-status/pair-announcements
If you need assistance with this matter, or
have questions on any eFiling topic, please visit the Patent Electronic
Business Center webpage: http://www.uspto.gov/learning-and-resources/support-centers/patent-electronic-business-center
for comprehensive contact information, FAQ’s, and other eFiling resources."
Copyright © 2015 Robert Moll. All rights reserved.
Copyright © 2015 Robert Moll. All rights reserved.
Friday, July 31, 2015
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.
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.
Wednesday, July 29, 2015
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.
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:
"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
- Belo Mansion, Dallas
- Co-sponsored by the IP
Section of the Dallas Bar Association
- USPTO headquarters, Madison
Auditorium
9:10 to 9:45 am: Track 1: Patent Quality Initiative Overview
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
1:50 to 2:45 pm: Track 5: Proposed AIA Trial Rule Changes
3:30 to 4 pm: Break
4 to 5 pm: Track 7: Actual AIA Trial Hearing
Speakers Include:
- 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
- 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"
Sunday, July 26, 2015
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.
Copyright © 2015 Robert Moll. All rights reserved.
Friday, July 24, 2015
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.
Copyright © 2015 Robert Moll. All rights reserved.
Wednesday, July 22, 2015
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.
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.
Monday, July 20, 2015
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.
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.
Friday, July 17, 2015
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.
Copyright © 2015 Robert Moll. All rights reserved.
Thursday, July 16, 2015
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.
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.
Tuesday, June 30, 2015
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.
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.
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.
Monday, June 29, 2015
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.
Copyright © 2015 Robert Moll. All rights reserved.
Saturday, June 27, 2015
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.
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.
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