Kevin Jakel – Clause 8 – Episode 14

Tune into Clause 8 Podcast as Harrity’s Eli Mazour delves into the unique and impressive story of Unified Patents with founder & CEO Kevin Jakel

“Either because it wants to keep patent owners on edge, does not want to provide ammunition to those who question how independently it really operates from its members, or for some other reason, Unified Patents has not publicly disclosed how it decides what patents to target. This interview with Kevin tries to resolve some of that mystery surrounding Unified Patents.”

Listen and subscribe on IPwatchdog.com.

#patents #ipnews #patentnews #unifiedpatents #interviews #patentinsights #podcast #subscribe #clause8 #elimazour #kevinjakel #patenttrolls #ptab #aia

2019 Top Patent Firms List Announced

WASHINGTON (January 14, 2020) – Harrity Patent Analytics is pleased to announce the publication of its annual list of top patent law firms.  The 2019 Top Patent Firms” list ranks industry leading patent law firms based on the total number of U.S. utility patents issued in 2019. 

The 2019 Top Patent Firms list comes with some significant changes from years prior, including an interactive dashboard and exclusive metrics.  We have collected and analyzed data on more than 300,000 patents obtained by over 3000 different law firms, which we have turned into an interactive online dashboard that allows users to filter data by firm, technology area, and USPTO technology center.  This gives both patent law firms and Patent 300 companies a better understanding of who is obtaining the most patents in the U.S.,” explains Rocky Berndsen, Head of Patent Analytics at Harrity.  “We are also offering premium analytics that delve deeper into detailed patent prosecution metrics, giving law firms and Patent 300™ companies more insights into the robust analytics of specific law firms.” 

The Top Patent Firms dashboard includes patent firms that have obtained at least 50 U.S. utility patents where the patent firms are listed on the front of the utility patents. Company legal departments have not been eliminated from the list.  The full list is available here.

About Harrity Patent Analytics 

Harrity Patent Analytics, an analytical team within the boutique IP law firm of Harrity & Harrity, LLP, uses cutting-edge capabilities to analyze patent data and extract insights for clients to use when making strategic decisions regarding patent portfolios.  Patent 300™ companies rely on Harrity Patent Analytics services to understand their patent portfolios, the patent portfolios of their competitors, and patent office trends around the world.  For more information, visit harrityllp.com/services/patent-analytics/. 

 

IPWatchdog Picks Up Clause 8 Podcast

IPWatchdog, Inc., the largest online publication for IP news, is now home to Eli Mazour’s Clause 8 Podcast.

Mazour, Partner at Harrity, LLP and host of Clause 8, began the podcast in 2017 as a way to share his passion for discussing intellectual property issues. He routinely meets with the most interesting and influential personalities in the IP field, provoking intriguing conversations on modern patent processes and legal innovation.

Stay in the know by listening and subscribing now at https://bit.ly/39TZP2y.

 

$750 Million Dollar Patent Infringement Award May Hinge on Whether a Certificate of Correction was Properly Issued to Fix a “Typo”

By Steven Underwood, Counsel

On December 15, 2019, a Los Angeles jury found that Kite Pharma Inc. (“Kite”) had willfully infringed a cancer-treatment patent licensed by Juno Therapeutics Inc. from Memorial Sloan Kettering Cancer Center and Sloan Kettering Institute for Cancer Research (collectively, “MSKCC”), and held that Kite should pay MSKCC $752 million.  The litigation (Juno Therapeutics Inc. et al. v. Kite Pharma Inc., case number 2:17-cv-07639, C.D. Cal.) was widely reported in the press as potentially hinging on whether the patent-in-suit (U.S. Pat. No. 7,446,190) contained a simple “typo.”

During the litigation, Kite argued that the U.S. Patent & Trademark Office (PTO) had erroneously issued a Certificate of Correction (CoC) because the “[t]he mistake corrected by the certificate of correction . . . was not of a clerical or typographical nature and was not of minor character,” as required under 35 U.S.C. § 255.  Kite’s position was that the CoC should not have been granted, and that if the CoC had not been granted, Kite clearly would not infringe the claims of the patent.

In order to understand the nature of the mistake corrected by the CoC, we must briefly consider the claims.  Claim 1 of the patent requires a “nucleic acid polymer encoding a chimeric T cell receptor comprising . . . a costimulatory signaling region [that] comprises the amino acid sequence encoded by SEQ ID NO:6.”  Therefore, infringement of claim 1 can be determined only by reference to the definition of SEQ ID NO:6 (which is provided in the specification of the patent) – and that definition was modified by the CoC (seven bases, out of 328, were deleted).

When the application was filed on May 28, 2003, the SEQ ID NO:6 listing was, as explained by MSKCC to the PTO, incorrect.  On September 4, 2007, after receiving a Notice of Allowance, MSKCC submitted a Request for Continued Examination (RCE) with an Amendment that requested the same changes to the specification that were subsequently requested by the CoC.  In the Amendment, MSKCC argued that the changes were not new matter, since one skilled in the art would have recognized, as clerical errors, the errors being corrected.  As required, a copy of the revised sequence listing on a computer-readable disk was submitted with the Amendment.  However, on November 2, 2007, the Amendment was rejected by the PTO, on the ground that the sequence listing disk submitted with the Amendment was “flawed technically.” After two attempts, in April 2008 MSKCC submitted, along with a corrected paper copy of the sequence listing, a copy of the disk that was accepted, and on November 4, 2008, the patent issued.

However, while the April 2008 submission made corrections that were requested by the PTO, those corrections were made to the original, not the amended, specification.  Consequently, the changes requested in the September 2007 Amendment/RCE were undone by the April 2008 submission.  As summarized in MSKCC’s Request of Correction: “Sequence ID Nos. 4 and 6 in the printed patent therefore contain the same errors that the RCE was filed to address.”  Thus, MSKCC argued, “The resubmission of the incorrect Sequence listing occurred through clerical error . . . and was not made in bad faith. The correction requested does not involve such changes in the patent as would constitute new matter . . . as it was the change that was presented to the Examiner in the initial amendment and arguments filed with the RCE.”

Regardless of the ultimate outcome of this case (an appeal seems likely), the clear takeaway for clients and practitioners is that a second pair of eyes should carefully review each filing with the PTO, including patent applications and responses.  Such a review will substantially reduce the risk of a patent application being filed with the wrong information, and better ensure that any mistakes are properly corrected.  As this case demonstrates, whether errors are properly (and promptly) corrected during prosecution may affect the validity or enforceability of a corresponding patent.

Harrity Team Helps Stock Santa’s Secret Workshop Shelves

Duffy House is a non-profit organization that provides a supportive safe haven to women and children who have survived abuse. Santa’s Secret Workshop is a holiday event that allows survivor children to “buy” gifts for their families at no cost to them, so that they can celebrate the holidays without the worry of financial burden. 

The team at Harrity has pulled together gifts and dollar donations to ensure the workshop shelves are stocked with a variety of items to allow every child to find just the right gift for their family members. We extend our warmest wishes to Duffy House families this holiday season.

To learn more about Harrity 4 Charity or to become involved in our charity initiative, visit harrityllp.com/charity.

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

 

Elaine Spector Named Harrity Diversity Committee Chair

We are proud to announce Elaine Spector as the new Chair of the Harrity Diversity Committee.

Elaine is already involved in several diversity-focused initiatives and we look forward to seeing her next accomplishments as she continues to promote inclusion within the patent law field.

Of the new role, Elaine states:

“I am honored to assume the position of Diversity Chair of Harrity’s Diversity Committee. Like our firm, our diversity team members are innovators, collectively finding solutions to address not only diversity issues within our firm, but also diversity issues within the patent profession at large. With the introduction of our Minority Firm Incubator, we are committed to not just talking the talk, but walking the walk.”

To learn more about the progressive work of Elaine and our Diversity Committee, and how you can become involved, please visit harrityllp.com/diversity.

Harrity Continues to Expand, Adding Four Patent Attorneys, Two Law Clerks

Harrity & Harrity, LLP, a leading patent preparation and prosecution law firm, is pleased to announce the addition of four highly skilled patent attorneys and two law clerks to its legal team. This includes Joseph Lentivech, a former Administrative Patent Judge with the U.S. Patent and Trademark Office (USPTO) and Marine Corp. Veteran, who the firm announced last week returned as counsel.

“We are excited for this seasoned group of superstars to join our team and assist the firm in continuing to provide excellent customer service to our Patent 300 clients,” said Partner Paul Harrity. “It’s great to have Joe back as he brings highly valuable experience and insights through his recent work as a USPTO Administrative Patent Judge that will greatly benefit our clients.”

Patrick Hansen, based in Raleigh, NC, specializes in the preparation and prosecution of patent applications in electrical, computer, and mechanical technologies.  Hansen has represented petitioners and patent owners in post-grant proceedings before the Patent Trial and Appeal Board.  He utilizes his comprehensive understanding of the industry and extensive legal experience to build high quality patent portfolios.

Joseph Lentivech, based in Mobile, AL, specializes in the preparation and prosecution of patent applications in electrical and computer technologies, including telecommunications and computer hardware and software systems.  Lentivech returns to the firm, where he was a patent attorney for four years, after working as an Administrative Patent Judge at the USPTO, where he decided appeals from adverse examiner decisions in patent applications directed to electrical and computer-related technologies and business methods.

McCord Rayburn, based in Charlotte, NC, has significant experience in all aspects of patent preparation and prosecution for U.S. and international applications, including leading teams of patent attorneys to efficiently obtain high-value patent protection.  Rayburn brings extensive technical knowledge and international legal experience, including the coordination of inbound U.S. national stage patent application filings for foreign corporations with global patent portfolios.

Bret Tingey, based in Raleigh, NC, focuses his practice on patent preparation and prosecution for inventors in mechanical and electrical technology fields.  He began his legal career with a specialty in IP litigation and wrote memos and briefs, including those for submission to the United States Supreme Court.  He primarily focuses on patent preparation and prosecution, applying his litigation experience to every patent that he drafts or prosecutes.

Sora Ko, based in the Washington, D.C. metro area, is a law clerk specializing in patent preparation and prosecution before the USPTO. She has experience in different aspects of patent prosecution, including assisting with the preparation and prosecution of patent applications related to computer software, telecommunications, networking devices, and mechanical devices.  Ko previously served as Editor-in-Chief of The University of Richmond Law Review and worked as a summer associate at Harrity & Harrity before joining the firm full-time.

Abigail Troy based in the Washington, D.C. metro area, joins Harrity as a law clerk specializing in the preparation and prosecution of patent applications with a focus on computer hardware and software, telecommunications, computer networking, business methods, and consumer products.  She is a former Primary Patent Examiner at the USPTO, where she worked for nearly a decade examining patent applications directed to mechanical devices, including jewelry and fasteners. Troy also worked as a training assistant in the Patent Training Academy and as a technology center trainer in TC 3600.

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

 

Joseph Lentivech Harrity Counsel

Former USPTO Administrative Patent Judge and Marine Corp. Veteran Joseph Lentivech III Rejoins Harrity as Counsel

WASHINGTON (December 5, 2019) – Harrity & Harrity, LLP is pleased to announce that Joseph P. Lentivech III, a former administrative patent judge with the U.S. Patent and Trademark Office (USPTO), has returned to the firm as counsel. He was a patent attorney at Harrity & Harrity from July 2010 until late 2014 when he joined the USPTO.

“We are thrilled to welcome Joe back to our firm,” said Harrity & Harrity Managing Partner John Harrity. “Joe brings highly valuable experience and insights through his recent work as a USPTO administrative patent judge that will greatly benefit our clients.”

Lentivech will be joining Harrity’s patent application drafting team, where he will draft patent applications for the leading technology companies in the world.  He will also oversee all PTAB appeals at the firm.

As an administrative patent judge, Lentivech served as a member of the Patent Trial and Appeal Board (PTAB) of the USPTO. The PTAB conducts trials, including inter partes, post-grant, and covered business method patent reviews and derivation proceedings; hears appeals from adverse examiner decisions in patent applications and reexamination proceedings; and renders decisions in interferences.

Lentivech also was a patent attorney at Brouse McDowell L.P.A. before his earlier stint at Harrity & Harrity. Prior to his law career, Lentivech served with the U.S. Marine Corp., most recently as a captain/artillery officer.

Lentivech received his J.D. (cum laude) from the University of Akron School of Law and his Bachelor of Science from State University of New York at Buffalo.

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Harrity’s Elaine Spector Named AIPLA’s Women in IP Law Outreach Subcommittee Chair

Congratulations to the newly named chair of the American Intellectual Property Law Association (AIPLA)‘s Women in IP Law Outreach subcommittee, Harrity’s own Elaine Spector.

“I am excited to take on my new role as chair of AIPLA’s Women in IP Law Outreach subcommittee. The Outreach subcommittee is responsible for coordinating the Women in IP breakfast at each stated meeting, as well as overseeing the Global Networking Event and Community Events. This position has also allowed me to become part of the Executive Team within AIPLA’s Women in IP committee, and to work with some truly amazing women in our field. In my new role, I am looking forward to further advancing the needle for women IP practitioners,” states Elaine.

To learn more about Elaine’s roles in driving diversity in the IP legal field, visit harrity.com/diversity.

 

In Design Patents, Claim Language Matters

By Ryan Thelen, Associate

Often when a design patent application is prepared, the primary focus and effort of the drafting process is given to the drawings, while little thought is given to the wording of the actual claim.  However, the Federal Circuit recently issued a decision in a case of first impression in Curver Luxembourg, SARL v. Home Expressions Inc., 2018-2214 (Fed. Cir. Sep 12, 2019), in which the Federal Circuit highlighted how the words in a design patent claim can limit the scope of a design illustrated in a patent drawing.

Curver is the assignee of U.S. design patent no. D677,946 (’946 patent), which claims an “ornamental design for a pattern for a chair.”  However, the drawings of the ’946 patent do not show a chair and merely illustrate an overlapping Y design.  The term “chair” was added to the claim and title during prosecution as a result of an examiner objection to the use of the term “furniture part.”

Curver sued Home Expressions on the basis that Home Expressions sells baskets that incorporate an overlapping “Y” shape that infringes the ’946 patent.  The United States  District Court for the District of New Jersey first construed the scope of the ’946 patent to include the design illustrated in the drawings as applied to a chair, and then determined that Home Expressions’s baskets do not infringe under the “ordinary observer” test.  The District Court reasoned that the scope of the ’946 patent is limited to the article of manufacture listed in the ’946 patent, and found that an ordinary observer would not purchase Home Expressions’s basket with the ornamental “Y” design believing that the purchase was for an ornamental “Y” design applied to a chair, as protected by the ’946 patent.”

On appeal, Curver took issue with the claim construction aspect of the District Court opinion, arguing that the District Court improperly limited the scope of the claim due to the word “chair” in the claim, rather than focusing on the design shown in the drawings in which no chair is present.  35 U.S.C. § 171 permits patent protection for a “new, original and ornamental design for an article of manufacture” (emphasis added), yet no article of manufacture was illustrated in the drawings of the ’946 patent.  Thus, the issue before the Federal Circuit is how to construe the scope of a design patent in which the claimed design is illustrated in the abstract (i.e., is not applied to an article of manufacture in the drawings).

The Federal Circuit held that “claim language can limit the scope of a design patent where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.”  The Federal Circuit cited various persuasive sources to support its decision, such as Gorham Co. v. White (Sup. Ct. 1871), Ex parte Cady (USPTO 1916), 37 C.F.R. § 1.15, and the MPEP.  The Federal Circuit specifically noted that 37 C.F.R. § 1.15 permits the scope of a design patent to be defined by a combination of the drawings and the language of the design patent.

This case makes clear that when filing and prosecuting a design patent application, applicants and practitioners should ensure that the claimed design is tied to an actual “article of manufacture,” and should carefully choose the words that will be used in the claim, description, and title.

Analytics Chart on Laptop

WIPO Releases 2019 World Intellectual Property Indicators Report

Last month the World Intellectual Property Organization released the 2019 World Intellectual Property Indicators Report, a report showing considerable increase in worldwide patent applications.  Nearly half of all patent applications in 2018 were filed in China, with that number increasing to 66.8% if you consider all filings in Asia.  The top five countries receiving patent applications in 2018 were China (1.54 million), U.S. (597,141), Japan (313, 567), South Korea (209,992) and the European Patent Office (174.397).

Although US applicants lead the charge in foreign filings, applications filed at the USPTO are down slightly from 2017.  The last time the USPTO saw a decrease in patent applications was 2009. Despite the recent decrease in applications, the US maintains the top spot for patents in force, with 3.1 million out of 14 million active patents worldwide.

For more information on 2018 intellectual property trends, read the full report at the WIPO website, here.

 

Mind the Gap Analysis

Portfolio Gap Analysis of Globalfoundries and Taiwan Semiconductor

Globalfoundries and Taiwan Semiconductor announced an agreement to cross-license each other’s patents and those patents filed over the next ten years.

Below is gap analysis portfolio comparison of each company’s active U.S. patent families with the ability to filter the data by type of application, publication date, filing date, and cpc subclass description.

To learn more about how Harrity Patent Analytics can help you find insights into the patent world, contact us via email HERE.

TRY OUR INTERACTIVE DASHBOARD

 

USPTO October 2019 Update On Subject Matter Eligibility

By Tim Hirzel

The PTO’s Revised Patent Subject Matter Eligibility Guidance (2019 PEG) has been generally well received for providing a more reliable manner of applying the Alice/Mayo test used by the courts.  Even so, the 2019 PEG still left some matters unclear and the PTO has now responded to public feedback by providing further clarification in the October 2019 Update.  Below, we discuss the updates and how practitioners can use the updated guidance in practice.

Step 2A Prong One

In Step 2A Prong One, the 2019 PEG instructs examiners to evaluate whether a claim recites an abstract idea by a) identifying specific limitations in the claims believed to be an abstract idea, and b) determining whether the identified limitations fall within any of the three specific groupings of abstract ideas (mathematical concepts, certain methods of organizing human activity, and mental processes).

However, there was some question as to how explicitly limitations in the claims have to recite an abstract idea.  The October 2019 Update clarifies that “recites” should broadly be construed to mean that the claims either explicitly set forth the abstract idea or merely describe the abstract idea without explicitly using words that identify the abstract idea.  The PTO further clarifies that claims may recite multiple abstract ideas, which may fall in the same or different groupings, and that the groupings are not mutually exclusive (i.e., a single claim limitation may fall into more than one abstract idea grouping).

The October 2019 Update also provides clarification on what the three groupings of abstract ideas entail.

  • Mathematical Concepts – The 2019 PEG defines “mathematical concepts” as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The PTO interprets the courts as having declined to distinguish between types of math when evaluating claims for eligibility, and the PTO will do the same.  For example, math used to solve a particular technical problem (e.g., an engineering problem) will still be considered to fall within the mathematical concepts grouping.  However, a claim does not recite a mathematical concept if it is only based on or involves a mathematical concept.
  • Certain Method of Organizing Human Activity – The PTO clarifies that not all methods of organizing human activity are abstract ideas, and this grouping is limited to only fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people.
  • Mental Processes – Under the 2019 PEG, “mental processes” are concepts performed in the human mind, such as observations, evaluations, judgments, and opinions. A footnote in the 2019 PEG indicates that a claim limitation is not a mental process when it “cannot practically be performed in the mind.”  The October 2019 update expanded on this and clarified that this is “when the human mind is not equipped to perform the claim limitations.”  The PTO reemphasized that claims can recite a mental process even if they are performed by a computer in the claim and further clarified that there is no requirement that the claim be performed entirely in the human mind to fall into the mental processes grouping.

The 2019 PEG also allows for the possibility that a claim limitation that does not fall into one of the three groupings of abstract idea may be still determined to be an abstract idea upon TC Director approval.  The October 2019 update indicates that the public will be notified once such an office action issues.  At this time, the PTO has not provided any such notification.

Step 2A Prong Two

In Step 2A Prong Two, the 2019 PEG instructs examiners to evaluate whether the claim as a whole integrates the abstract idea into a practical application and gives several considerations in making this determination, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The October 2019 Update reemphasized that this analysis considers the claim as a whole, and that the additional elements of the claim (i.e., those not identified as an abstract idea) are not to be evaluated separately from the limitations reciting the abstract idea.  Moreover, the PTO clarified that merely claiming a specific way of achieving a result is not a stand-alone consideration in Step 2A Prong Two and is not enough by itself to integrate the abstract idea into a practical application.  However, the specificity of the claims is relevant to the considerations related to using a particular machine, a particular transformation, and whether the limitations are mere instructions to apply an exception.

The October 2019 Update devotes lengthy discussion to how a claim improves the functioning of a computer or a technical field and provides a two-step procedure for how examiners are to perform this analysis.

  • Step One – Examiners are to evaluate the specification to determine if sufficient details are provided to establish the claimed invention provides an improvement to technology. However, there is no requirement that the specification explicitly recite the improvement.  The improvement is not relative to what is well-understood, routine, conventional activity in the field, but rather relative to existing technology.  Importantly, the PTO noted that an improvement to an abstract idea is not an improvement to technology.
  • Step Two – If the specification sets forth an improvement in technology, the claims must be analyzed to determine if the claims recite features that provide the improvement described in the specification. However, there is no need for the claims to explicitly recite the improvement.

Step 2B

In Step 2B, examiners are to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  The October 2019 Update itself provides almost no discussion or clarification of Step 2B other than to reemphasize that well-understood, routine, conventional activity will only be considered under Step 2B and not Step 2A.  However, the PTO provided Example 43 along with the October 2019 Update that shows how a claim can fail Step 2A but still be determined eligible under Step 2B.  Such an example was notably absent from the examples provided with the 2019 PEG.

Example 43 is a hypothetical based on the well-known Diamond v. Diehr case.  Example 43 is directed to a controller for an injection molding apparatus that repeatedly obtains temperature measurements of a mold, calculates an extent of curing completion based on the temperatures and an equation, and determines a percentage of curing completion.  Claim 3 specifies that the controller is connected to a means for temperature measuring (which is specifically interpreted to be an ARCXY thermocouple).  Under Step 2A Prong One, the claim is determined to recite a mathematical concept.  Under Step 2A Prong Two, the step of obtaining the temperature measurements is deemed to be insignificant extra-solution activity of data gathering and does not integrate the abstract idea into a practical application.  Notably, the fact that claim 3 uses an ARCXY thermocouple to obtain the temperature measurements is not considered in Step 2A Prong Two (not even to establish use of a particular machine).  Thus, claim 3 is determined to be directed to the abstract idea.

However, the consideration of whether the ARCXY thermocouple feature is mere insignificant extra-solution activity is reconsidered under Step 2B taking into account whether such extra-solution activity is well-known.  The PTO found that while use of ARCXY thermocouples is known in the aeronautical industry, the use of ARCXY thermocouples was not routine or conventional in injection molding apparatuses.  Because the ARXCY thermocouple resulted in better long-term performance, durability, and response time than other thermocouples, the result of using the unconventional thermocouple in the claimed manner amounts to significantly more than the abstract idea (i.e., mathematical concept) and the claim is patent eligible.

Key Takeaways

The October 2019 Update reinforces the idea that the best practice when drafting a patent application is to describe the invention as providing a technical solution to a technical problem.  In this way, should a Step 2A Prong One argument fail, practitioners can rely on a Step 2A Prong Two argument that the claims improve the functioning of a computer or other technology.  This argument seems to be the argument preferred by examiners and often cited by the courts as a basis for patent eligibility when there is a 101 issue.

Specifically, practitioners should keep in mind that examiners will heavily rely on the specification to determine if such a technical solution or technical improvement is provided.  The improvement should not be merely recited in a conclusory manner (e.g., an unsupported assertion that the invention provides a specific improvement), but should be explained in sufficient detail to tie specific features of the invention to the improvement.  Importantly, the claims should be drafted in such way to include the features that provide the improvement.  Examiners have often requested, or even required, that the claims explicitly recite the improvement to overcome a 101 rejection even though these claim features are often considered intended use or given little patentable weight.  The October 2019 update makes it clear this is not necessary.

The PTO also appears to narrow at least some of the three groupings of abstract ideas in Step 2A Prong One.  Practitioners should use this to their advantage when drafting applications to characterize features that may be arguably abstract in a way that avoids falling into the three groupings of abstract ideas.  For example, when appropriate, the application could describe the complexity of steps that may be arguably mental processes (e.g., determining steps, processing steps, analyzing steps, etc.) to establish that these steps cannot be practically performed in the human mind.  However, practitioners should be careful not to try to game the system by describing a simple step, which truly could be performed in the mind, as a complex step that cannot be performed in the mind because such a characterization could have unintended consequences for potential infringement and claim interpretation.  Moreover, if a feature truly could be performed in the mind, then there is most likely a better way to establish eligibility under Step 2A Prong Two or Step 2B.

The 2019 PEG stripped Step 2B of most of its previous considerations and moved them to Step 2A Prong Two.  While the 2019 PEG indicated that Step 2B was still a viable option to establish eligibility, there was little instruction on how practitioners could actually present a successful argument and no examples of succeeding under Step 2B were given.  Given this, examiners have been reluctant to seriously consider Step 2B arguments.  Although arguments under Step 2B are likely to remain an improbable way to overcome a 101 rejection in view of the of the October 2019 Update, practitioners should keep in mind that new Example 43 provides a manner of establishing an inventive concept and a rationale that can be used as a backup position under Step 2B going forward.  Therefore, practitioners should draft their specifications to highlight how their inventions differ from what is well-understood, routine, conventional in the field, even if it is a feature that is more tangentially related to the core invention that could be considered extra solution activity.

Overall, the October 2019 Update should help the PTO continue to provide more reliable subject matter eligibility analysis and clarify what kinds of arguments will successfully overcome a 101 rejection.

Top Companies in Blockchain Patents

By Rocky Berndsen

Blockchain is an emerging technology that has taken the world by storm.  In October 2008, Satoshi Nakamoto published a seminal paper, titled “Bitcoin: A Peer-to-Peer Electronic Cash System“, and the age of blockchain was born.  Since then, entrepreneurs and large corporations have explored implementation of blockchain technology in financial transactions, smart contracts, automotive, retail, healthcare, energy, utilities, travel, supply chain, and gaming, among other industries.

Based on our analysis of active patents & pending applications, blockchain-related filings have increased significantly around the world in recent years.  For instance, there were only 126 filings in 2014, but by 2017 there were over 3,700 applications filed in the blockchain space.  In 2018, a year in which not all the filings have yet become public, there have already been over 8,200 filings.  The growth curve in blockchain filings is truly exponential.  It will be interesting to see over the coming years whether this trend continues.

TRY OUR INTERACTIVE DASHBOARD

Page 1 highlights the top players in the blockchain space, page 2 highlights the filing trends, and page 3 highlights the patent issuance trends.  You can click on elements (e.g., country code, company name, type filter, filing date filter) of the dashboard to filter the data.

The geographic distribution of filings is also very interesting.  To date, over 10,000 blockchain filings occurred in China, more than half of all blockchain related filings worldwide.  According to a recent Forbes article, nearly 70% of crypto mining activity occurs in China, creating significant interest in protecting IP in the crypto currency space.  The top ten filers of chinese patent applications in the blockchain space are as follows:

China Blockchain Patent Applications Filed (as of 10/1/2019)
RankCompanyActive Patents & Pending Applications
1Alibaba259
2CUNC189
3Hangzhou Fuzamei163
4Ping An151
5Baidu139
6Shenzhen Launch102
7Tencent102
8Zhongan IT89
9Shenzhen Oneconnect77
10Shenzhen Onething74

Notably, the U.S. has the second most blockchain filings, with over 2,700 filings.  In the U.S., the top ten filers of patent applications in the blockchain space are as follows:

US Blockchain Patent Applications Filed (as of 10/1/2019)
RankCompanyActive Patents & Pending Applications
1IBM252
2Alibaba93
3Bank of America81
4Mastercard73
5Wal-mart63
6Accenture52
7Intel46
8Nchain32
9Coinplug29
10TD Bank28

In comparison, the top ten U.S. patent owners in the blockchain space are as follows:

US Blockchain Patents Issued (as of 10/1/2019)
RankCompanyActive Patents
1IBM57
2Accenture26
3Bank of America24
4Mastercard13
5Winklevoss IP13
6Capital One12
7Dell9
8Vijay Madisetti9
9TD Bank9
10Blockchain Asics7

According to a recent report published by Accenture PLC, worldwide spending on blockchain solutions has a forecast annual growth rate (CAGR) of 76.0%, reaching $12.4 billion in 2022.  The blockchain space is still in the early stages of development, and it will be interesting to see how the technology evolves and who else enters the space.

To learn more about how Harrity Patent Analytics can help you find insights into the patent world, contact us via email HERE.

John Harrity, Harrity Team

Law360 Law Firm Leaders: Harrity & Harrity’s John Harrity

Law360 (October 16, 2019, 2:04 PM EDT) — John Harrity has served as managing partner of Harrity & Harrity LLP, the patent law firm he founded in 1999 with twin brother Paul Harrity, since 2016. During that time, the law firm’s revenue has grown by 127%, profits have gone up by 167% and the attorney headcount increased by 100%.

Here, Harrity discusses how his law firm has streamlined and automated the patent application process a la McDonald’s, why lawyers are not paid based on origination credits and why charity is such a big part of the firm’s culture.

How is your law firm different from a traditional law firm?

There’s a lot of ways that we’re different. From the very beginning, we’ve had this focus on quality. People talk about quality in our field, but one of the things we like to do when we talk about something is we want to make sure that it’s measurable. From the very beginning of our firm, my twin brother and I, we started with the traditional question: Why us? Why would anyone send us work over the thousands of firms doing patent prosecution and preparation? After some discussion, we honed in on quality. We implemented a couple of procedures, one was adopted from my brother’s former firm, Finnegan, and the other we created on our own.

We made sure everything goes through a very thorough second attorney review. It’s all about expectations here. Attorneys know that when they hand something in to me, there’s a certain level of quality that’s expected. And when we send things out to clients, there’s a certain expectation. When we send it to an inventor or in-house counsel, we’re going to send something that thoroughly, accurately and technically describes your invention and in our eyes is ready to be filed.

It’s tracking some statistics in relation to that to see: Are we succeeding or are we failing? How often, when we send out a patent application to an inventor or in-house counsel, do we get “looks good” [in response]? That’s our level of expectation. Going back to the beginning of the firm, so over the course of 20 years and having drafted over 5,000 patent applications, 67% of the time we’ve gotten a “looks good.”

The other [quality procedure] is writing style. I liken it to McDonald’s. Why is McDonald’s successful? Every McDonald’s you go to in the United States and you order their premier burger, the Big Mac, it’s going to have the same look, the exact same flavor every single time. And it’s going to come out in roughly the same amount of time. Our uniform writing style works exactly the same. Individual companies have preferences for how they want their patents to look, often the attorneys that work internally have individual preferences. We have a uniform writing style for every single attorney and every single company so that when they come to our firm, regardless of the drafting professional, they’re going to get their uniform writing style every single time.

Your firm has eliminated origination credits. Why have you done that and what kind of impact does it have?

Let’s think about origination credits. When you look inside these firms that have origination credits, what you see inside these firms are law firms within a law firm. You’ve got all of these partners with their origination credit, rowing in different directions. When you look at my firm, every client here is the firm’s client. We make business decisions about whether to bring on a client and whether to keep a client. Our firm’s mission is to be the No. 1 firm in the world doing what we do. We do patent applications and prosecution and we just do it in the electrical and mechanical space. I can tell you, every single individual at my firm, we’re all rowing in the same direction. Since we opened up 20 years ago, every single client has been the firm’s client. I might manage some of them and be the face to our firm for a particular client, but it’s the firm’s client, it’s not mine. That’s why we can be so agile, and move so quickly in the field, because we’re all rowing in the same direction.

How does the law firm then figure out how to determine whether a particular lawyer is successful?

We track some statistics internally. Every patent application that’s drafted at my firm, every response to a rejection from the patent office that’s drafted, goes through a second attorney review. And if I’m the reviewer, I fill out a scorecard and I’m grading this application or response on a little over a dozen different categories. This gives feedback to our attorneys. You can see your statistics for the year, you can compare them to last year. If you’re struggling in a particular area of drafting a patent application, don’t you want to know what that area is? There’s a quality score that all of our attorneys have.

There’s also a production element. One of the things we do is we pay our attorneys for production. We’ve experienced, in the lifetime of this firm, the same thing other firms experienced. The pricing of patent applications continually went up from 1999 until it plateaued for four to five years and then we started seeing it dip and it’s come down almost all the way to 1999 numbers. Back in 2013, one of our clients decreased their prices and we had a discussion internally and said, this is a wake-up call. We can walk away from the client and say we only do work for top-paying clients. If we do that, there will be less and less companies willing to pay top dollar and every firm in the United States is going to be lined up fighting for that work. The other route, the one we chose, is: Let’s get efficient. I put [the patent application process] in steps. Which of these steps must be performed by an attorney? All of the other steps, I hand those off to support staff members. And then, at the beginning of this year, I said: Let’s start automating some of the stuff the support staff is doing and let’s start automating some of the stuff the attorneys are doing.

2012 was before our efficiency journey. Our top drafting attorney drafted 54 patent applications that year, second place was 42. Last year, we had four attorneys draft more than 90 patent applications. We had one attorney in December draft 19 patent applications. This year our automation tools have rolled out. We have an attorney this year who is on track to draft 150 patent applications.

Let me tie that back into pay. You join our firm and when you’re assigned a patent application to draft, you’re given a number of hourly credits. If the hourly credit is 40 hours, you get that same hourly credit regardless of your actual time spent on it. So if you spend 40 hours, you’re getting hour-for-hour credit. If I can get you efficient, without sacrificing quality, down to 20 hours, now you’re drafting two patent applications. If I can get you down to 10 hours, then in that same 40 hour period you’re drafting four, which means you make four times as much money. The big producers at our firm make what partners make at other firms.

What tasks and processes have you automated?

One simple one I‘ll tell you about is form filling. There are certain forms that need to be filled out when you’re filing a patent application. And these forms were taking our staff about 15 to 30 minutes. Now it takes them about five seconds to fill them out — it’s being populated based on our docketing system.

You had a massive heart attack in 2016 at age 49, how has that impacted the way you operate your law firm?

Let me start with charity. I had this health scare back in 2016 and it really set the firm on a different course. I was in intensive care for eight weeks. It took me a couple of months after that to actually get back to the firm. I became hugely service-focused and that bled over to everything we do at the firm now. Harrity for Charity, that’s our giving back initiative. We’ve committed at the partner level to give 5% of profits to our partner charities. Those are the American Heart Association, that was my health scare, I had a heart attack; Inova Children’s Hospital; UNICEF; and Zero, which is the fight against prostate cancer. What makes Harrity for Charity infinitely better than the 5% coming out of partner profits is every single employee at my firm is committing a portion of their paycheck to one or more of these partner charities. Service is hugely important to us.

On the diversity side, we started our diversity journey kind of late in the game. We started our firm in 1999 and we started diversity efforts in November, 2015. At the time we started the conversation, we were 8% [ethnically] diverse at the attorney level. We implemented our Rooney Rule 2.0. What we’ve done is this. For every single position at my firm, support staff included, when we interview a white male for a position, we will interview a non-white male for that same position. Fast forward three years and we’ve gone from 8% diverse to 30% diverse today.

The newest thing we did is our minority firm incubator. It is a unique, innovative program. We’re willing to spend the time and money to make this thing successful. What we’re doing is creating minority-owned firms, female-owned firms that are replicas of our firm. We’re going to teach them what we do here and spin them off into their own firms. What makes the program a truly once-in-a-lifetime opportunity is we’re going to line up companies that will commit to give work to these minority-owned firms. Accenture has already made that commitment. The biggest pain point any time you start your own business is: Where am I going to get the work? We’re going to get [top patent-owning] companies to make that commitment to try them out.

They’re completely independent. They’re with us for three years; the fourth year, they leave our firm to start their own.

By Aebra Coe
Editing by Katherine Rautenberg

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

 

Harrity 4 Charity

Harrity Receives Washington Business Journal Corporate Citizenship Award

WASHINGTON (October 11, 2019) – Harrity & Harrity, LLP received the Washington Business Journal (WBJ) Corporate Citizenship Award in recognition of its partnership with the American Heart Association (AHA) of Greater Washington Region.

Part of the WBJ’s Corporate Philanthropy Awards, the Corporate Citizenship Award honors partnerships between Washington, D.C. metro area businesses and nonprofits that demonstrate positive outcomes for both organizations. Harrity and other winners will be formally honored in November at the WBJ’s annual Corporate Philanthropy Awards event.

“We greatly appreciate the Washington Business Journal’s recognition of our firm’s important work alongside the American Heart Association,” said Harrity Managing Partner John Harrity. “As a heart attack survivor, I am personally very proud of the tremendous support that the Harrity community continues to give to this cause to fight heart disease and stroke while saving and improving people’s lives.”

Harrity began its partnership with the AHA of Greater Washington in 2017, joining forces to fight heart disease by working to educate policy makers, health care professionals, and the general public, with the goal of one day ending heart disease. The partnership was borne out of John Harrity’s personal experience of suffering and recovering from a “widow maker” heart attack in 2016 at the age of 49. The following year, Harrity launched Harrity 4 Charity, through which Harrity partners pledge to give 5 percent of their profits and Harrity employees pledge to donate a portion of their paychecks to partner charities.

Since 2017, Harrity partners and employees have donated countless volunteer hours to fighting heart disease. The firm also partners with the AHA of Greater Washington for its annual Lawyers Have Heart 10K Race, 5K Run & Fun Walk, which this year raised more than $900,000 for the cause. The last two years, Harrity has not only been the top corporate sponsor of the race, but also the top fundraiser. Most recently, the AHA of Greater Washington named John Harrity and Harrity & Harrity Controller Sandra Maxey co-chairs of the 30th annual Lawyers Have Heart 10K Race, 5K Run & Fun Walk. Also as part of its commitment to the cause, Harrity hosts the annual Harrity Race 5K Run and 1 Mile Fun Run, with 100 percent of the event’s proceeds going to the AHA of Greater Washington.

About Harrity & Harrity, LLP

Harrity & Harrity is the nation’s leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Harrity Creates Incubator to Launch Minority- and Women-Owned Law Firms

LAW.COM (October 3, 2019) After years of reading about new legal diversity programs with nothing to show for it, Harrity & Harrity managing partner John Harrity decided he wanted to try something new.

Harrity & Harrity managing partner John Harrity was sick of reading about law firm diversity.

The effort to diversify firms, he agrees, is noble. But over the years he had read countless stories about how this new internship or mentorship program will mend the legal industry’s diversity problem. And despite all these efforts, nothing much has changed.

“We keep doing the same things over and over and over again,” said Harrity, who co-founded the IP firm 20 years ago. “If the programs were really impactful we wouldn’t be having these conversations today.”

After reading a book about apprenticeships, Harrity had an idea for something new: Why not incubate women- and minority-owned law firms?

he idea wasn’t a big hit when he first brought it before the firm’s diversity committee. The biggest objection was that the program would essentially create competition for the firm. Harrity didn’t see it that way.

John HarrityJohn Harrity

“The reality is that there’s a ton of work out there, much more than we could ever handle ourselves,” he said. “And if they’re really good and taking work away from us that means we need to up our game.”

Eventually, the program was approved, and Harrity got to work on structuring the incubator. For each of the next three years beginning Jan. 1, the firm will bring in one woman attorney and one male minority attorney. Candidates must be a licensed attorney with a degree in electrical engineering, mechanical engineering, computer science, physics or a similar technical field.

The first year of the three-year program will teach the candidates how to draft patent applications. In the second year, the attorneys will learn how to prosecute pending applications. The third year marks a shift from legal practice training to management training. Participants will be taught how to hire and train attorneys, establish and maintain an office and pitch and retain clients.

At the beginning of the fourth year, the participants will each launch their own women- and minority-owned law firm.

The minority attorney incubator program has partnered with professional services firm Accenture, which will send work to the nascent firms to help get them off the ground and build a portfolio. Harrity hopes to bring in more companies as the apprenticeship develops.

Joel Stern, CEO of the National Association of Minority and Women Owned Law Firms, described the program as “novel” and “innovative.” Stern spoke with Harrity about the incubator when it was in development, and he applauded his firm for creating an unselfish and innovative program—especially in an area of the law that has traditionally been devoid of minorities.

He hopes that these new firms will join NAMWOLF, which just announced it had helped more than 100 minority- and women-owned law firms win $1.6 billion in legal spend since 2010.

“You can’t just keep doing the same thing over and over again. Harrity is trying something new and novel that I think is going to work,” Stern said. “Even if it doesn’t, he deserves credit. He’s subordinating his interests to help minorities thrive in the business.”

To learn more about the Minority Firm Incubator and Harrity’s other initiatives to drive diversity in the IP legal field, visit harrity.com/diversity.

 

By Dylan Jackson

Why a Brief Response is the Best Response to an Office Action

By Rebecca Bachner, Associate

The Federal Circuit recently issued a decision that reminds us of the importance of always remembering prosecution history estoppel when presenting arguments in responses to the USPTO.  Specifically, in Amgen Inc v. Coherus Biosciences Inc., 2018-1993 (Fed. Cir. Jul. 29, 2019)) (“Amgen”), the Federal Circuit highlights how prosecution history estoppel can bar a patent owner from succeeding on its infringement claim under the doctrine of equivalents.

At issue was Amgen’s U.S. Patent No. 8,273,707 which was being asserted against Coherus for infringement.  During prosecution, the USPTO rejected Amgen’s claims as obvious in view of U.S. Patent No. 5,231,178 (“Holtz”).  In response, Amgen presented multiple different arguments.  First, Amgen argued that “the pending claims recite a particular combination of salts. No combinations of salts taught nor suggested in the Holtz et al. patent, nor [are] the particular combinations of salts recited in the pending claims taught nor suggested in this reference.” See Fed. Cir at pgs. 4-5.  Amgen further included a Declaration from the inventor of the ‘707 patent.  “The Declaration did not discuss any salt pairs other than sulfate/citrate, sulfate/acetate, and acetate/citrate—the only claimed pairs in the ’707 patent.”  See Fed. Cir at pg. 5.  The Patent Office issued another rejection and, in a final response, Amgen reiterated that Holtz did not disclose a combination of salts nor did Holtz disclose enhancing the dynamic capacity of an HIC column.  The Amgen patent issued after these arguments were filed.

Amgen filed suit against Coherus alleging infringement of the ‘707 patent under the doctrine of equivalents.  Coherus moved to dismiss Amgen’s complaint under Fed. R. Civ. P. 12(b)(6) stating that Amgen argued that Holtz did not disclose “one of the particular, recited combinations of salts.”  See Fed. Cir at pg. 7.  A magistrate judge issued a report that recommended that Coherus’ motion be granted due to prosecution history estoppel.  The report stated that Amgen “clearly and unmistakably—and indeed, repeatedly—indicated to competitors that it surrendered processes using combinations of salts different from the ‘particular combinations of salts recited in the . . . claims[.]’”  See id.  Therefore, the report found that “prosecution history estoppel bars Amgen from now attempting to reassert surrendered ground involving other combinations of salts.” See id.  The District Court adopted the magistrate judge’s recommendation and granted Coherus’ motion to dismiss.

At the appeal, the Federal Circuit agreed with the lower court’s dismissal.   The Court looked at the prosecution history and noted that “Amgen distinguished Holtz on the basis that Holtz did not teach or suggest the “particular combinations of salts” recited in Amgen’s claims.”   See Fed. Cir at pg. 9.  The Court further noted that “Amgen emphasized “particular” and referred to its particular salts three times in the span of two pages.”  See id.  As to Amgen’s argument that it distinguished from Holtz on the basis of increasing dynamic capacity, the Court states that “while Amgen did assert multiple reasons for why Holtz is distinguishable, our precedent instructs that estoppel can attach to each argument.”  See Fed. Cir at pg. 11.  Importantly, the Court stated that “[t]here is no requirement that argument-based estoppel apply only to arguments made in the most recent submission before allowance.”  See id.

This case is a strong reminder that everything written during prosecution can be used against the patent owner in later litigation.  The fact that “this particular combination” was a non-convincing argument, but still was used against Amgen with doctrine of equivalents shows how careful patent practitioners must be in drafting responses to the USPTO.  Each argument written down is part of the record that can be used against the ultimate patent.  As such, a high emphasis must be placed on having successful interviews with the Examiner.  Examiner interviews should be used at every stage of prosecution.  The Examiner interview is an invaluable way to receive feedback from the Examiner without adding to the written record.  Often, an agreement on claim language can be reached during the Examiner interview.  Based on the agreement, a response can be drafted in a way that minimizes the written record.  As such, Examiner interviews not only help with efficiency but are also a crucial part of obtaining high quality patents.

Improving Speed and Quality Using Automation for Patent Application Drafting

Our own Shawn Lillemo writes about how the right automation tools can provide application drafters with extra time that can be spent fleshing out additional details of the invention, exploring alternative embodiments, and telling a good story about how the invention solves a technical problem.  Read more on IPWatchdog.com.

Watch Shawn’s IPO Presentation on Patent Drafting Automation below!

Peter Glaser Team

How the Wrong Applicant Entity Status Can Doom Your Patent

By Peter Glaser, Associate

The Leahy-Smith America Invents Act, more commonly referred to as AIA, provided the USPTO with fee-setting authority to implement micro-entity status in addition to the previously implemented small-entity status. Both small-entity status and micro-entity status designations reduce fees for some patent filers. In general, small entities are entitled to a 50% reduction in fees and micro entities are entitled to a 75% reduction in fees. For example, the basic Utility filing fee for regular entities, sometimes termed ‘large entities’ is $300.00. In contrast the same filing fees for small entities and micro entities are $150.00 and $75.00, respectively.

The USPTO sets a set of requirements for patent filers to claim small entity status or micro entity status. In short, a small entity may qualify based on organization type (e.g., an entity that is a non-profit organization or that has fewer than 500 employees) and assignee status (e.g., an entity that has not assigned, licensed, or conveyed an interest in the invention to a non-small entity). For micro entities, the USPTO qualifications include each inventor not having been named inventor on more than 4 prior patent applications or have a gross income greater than 3 times the US median household income.

Generally, entity status is a matter of self-certification. For example, a patent attorney may file an assertion of small entity status or micro entity status for an inventor or other entity. However, the entity status must be updated if there is a change. For example, if an inventor files a patent application and qualifies as a small entity at the time of filing, but later assigns the invention to a large entity, a notification of loss of entitlement should be filed and regular fees paid thereafter.

The USPTO provides a good faith error safe harbor, but remedies are not provided for fraudulent or other non-good faith errors. A common way that entity status may change is as a result of a change in size of the patentee. In such a case, the Federal Circuit has held that when small entity status has been established in error and small entity fees have been paid in error, a patent holder can correct a good faith mistake (DH Technology, Inc. v. Synergystex International). Notably, the Federal Circuit indicated that the patent does not lapse as a result of an erroneous payment of fess and become unenforceable.

Another situation where entity status may be in question is when a patent license agreement is entered that could result in an applicant no longer being entitled to small entity status. In Outside The Box Innovations L.L.C. v. Travel Caddy, Inc, a lower court determined that an agreement between a patentee (that was a small entity) and a distributor (that was not a small entity) included a patent license clause that stripped Travel Caddy of small entity status with regard to the patent at issue. Here, the per curiam panel of the Federal Circuit found that it was reasonable for those involved in the patent prosecution to have believed that the agreement did not includes a patent license clause within the meaning of 37 CFR Section 1.27(a)(2). In a dissent, Judge Newman provided instructive guidance that an incorrect filing of small entity status should not be per se material to patentability.

Nevertheless, out of an abundance of caution, patent prosecutors and applicants can take some of the following steps to ensure an accurate assertion of entity status.

  1. Include questions regarding entity status in an initial invention disclosure interview questionnaire that is provided to inventors and/or applicants. Questions may include questions relating to company size, patent assignment status or licensing status, inventor household income, and the number of patents on which each inventor has been named.
  2. Following up with applicants and inventors regularly to determine whether answers to the above questions have changed.
  3. Maintaining comprehensive records of licensing agreements, joint inventorship agreements, research sponsorship agreements, and the like, and associating these records with patent family numbers.
  4. Performing a final check at issuance and at each maintenance fee payment date as to whether there has been any change to entity status. If a change has occurred, file a notification to indicate the status change.

Flexibility for Lawyers, Clients Helps Harrity & Harrity Stay Competitive

Law.com (September 10, 2019) “We allow our attorneys to work where they want, when they want, and how much they want,” managing partner John Harrity says.

Firm Name: Harrity & Harrity, LLP
Firm Leader: John Harrity, Managing Partner
Head Count: 30 attorneys, 20 professionals
Location: Fairfax, Virginia
Practice Area: Intellectual Property
Governance structure and compensation model: Management by a three-person management committee, compensation is a pay for performance model
Do you offer alternative fee arrangements? Yes

**The following answers were provided by Harrity and edited lightly for style.**

What do you view as the two biggest opportunities for your firm, and what are the two biggest threats?

Our biggest opportunity stems from the fact that we are consistently able to provide high-quality, uniform patent work in a timely and efficient manner. Other firms, especially those that are using the traditional law firm model, are struggling to compete in today’s competitive, price-conscious patent environment. While some firms think that it is impossible to provide outstanding customer service in today’s environment, we are thriving. Our biggest threat is the difficulty we have attracting superstar attorneys to join our firm. This has long been one of our challenges. Big Law firms offer high starting salaries to attorneys who have very little experience. It can be difficult for us to compete when our model is pay for performance.

Some other opportunities for our firm are related to our remote staffing model. We don’t need every attorney at the firm to operate from our central office location, so we benefit from a pool of candidates that many law firms won’t consider because the candidate is interested in working remotely, or isn’t in the geographic footprint of other firms. We also see opportunity in the price pressure that is impacting the practice of patent law—while the big law firms struggle to find profitability in this area while bowing to the price pressures mandated by the large corporations that are setting the pricing standard for patent applications, we leverage technology and process improvements to ensure efficiency without sacrificing quality or our ability to make a profit.

The legal market is so competitive now—what trends do you see, and has anything, including alternative service providers, altered your approach? Is your chief competition other mid-market firms, or is your firm competing against big firms for the same work?

We go head to head with law firms of every size. Although we don’t directly compete with alternative service providers, I would still consider them to be competition. In the patent field, we have seen pricing for patent application drafting and prosecution come down, and we don’t expect it to go back up. Law firms tend to think that Patent 300TM companies will come to understand that higher prices are required to be able to provide outstanding customer service, including outstanding quality. This just simply isn’t the case. We have been focusing on efficiencies for more than six years. When I say efficiencies, I’m talking about leaning out our process steps and creating automation tools. Being able to provide outstanding customer service while charging less for patent services is not only doable for us in today’s patent field, but we are also simultaneously able to pay our attorneys top dollar.

There is much debate around how law firms can foster the next generation of legal talent. What advantages and disadvantages do midsize firms have in attracting and retaining young lawyers, particularly millennials?

I think we have a huge advantage over the big firms with respect to attracting and retaining young lawyers, including millennials. One thing you hear about with respect to millennials is that they want freedom. So, we give it to them. We allow our attorneys to work where they want, when they want, and how much they want. This freedom is an instrumental reason why we attract such a large group of candidates for open attorney positions. In addition to this freedom, we have a pay for performance model, which allows hardworking young professionals to make substantially more than their peers at the big law firms.

Does your firm employ any nonlawyer professionals in high-level positions (e.g. COO, business development officer, chief strategy officer, etc.)? If so, why is it advantageous to have a nonlawyer in that role? If not, have you considered hiring any?

An integral (nonlawyer) member of our firm is Rocky Berndsen, who leads Harrity Patent Analytics. He oversees an analytical team using cutting-edge capabilities to analyze patent data and extract insights for clients to use when making strategic decisions regarding patent portfolios. The team recently published its inaugural Patent 300TM Report, which ranks and analyzes the top 300 companies, organizations, and universities in the patent field.

What would you say is the most innovative thing your firm has done recently, whether it be technology advancements, internal operations, how you work with clients, etc.?

In September, we introduced our Minority Firm Incubator program, established to help train, cultivate, and launch minority-owned patent law firms. The program is an integral and innovative part of our ongoing initiative to advance attorneys who will contribute to the diversity of the patent field. Our firm will select two candidates from a pool of skilled applicants, and begin training them through an exhaustive four-year program that will not only prepare them to draft and prosecute patent applications, but also prepare them to successfully run their minority-owned patent firm as a business. In addition, what makes this a truly once-in-a-lifetime opportunity is that these selected attorneys will develop, during their time at our firm, relationships with Patent 300TM companies that are part of our program. Ultimately, the selected attorneys will learn how to successfully run their law firms abiding by Harrity & Harrity’s proven best practices, then formally launch their firms assisted by the already established corporate relationships.

Does your firm have a succession plan in place?  If so, what challenges do you face in trying to execute that plan? If you don’t currently have a plan, is it an issue your firm is thinking about?

As a 20-year-old firm, our leadership is far from retirement age, but that has not stopped us from putting succession framework into place. We have established training programs that will help our associates develop the leadership and management skills they need to ascend the partner ranks. We have also engaged outside resources to make sure we’re doing the things we need to do to prepare for the day—many years down the road, we hope—when the firm’s leadership will transition to a new guard. We are prepared for that, and see no imminent challenges to implementing our succession plan.

About Harrity & Harrity, LLP

Harrity & Harrity is a patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

 

https://soundcloud.com/clause-8/episode-13-gene-quinn

Gene Quinn – Clause 8 – Episode 13

On the Clause 8 Podcast, our own Eli Mazour talked to Gene Quinn about starting and running IPWatchdog.com – the most influential IP-focused website in America.  They also talked about the IP policy landscape in Washington, how to effectively impact the policy making process, and various patent issues.  #IntellectualProperty #Patents #Podcast

Harrity Diversity

IP boutique seeks to show that new thinking on diversity is not just for Big Law

IAM (September 10, 2019) In the latest issue of IAM our cover story “the Boston Manifesto” is a call to action for the IP industry to increase gender diversity across all parts of the market. The piece, which subscribers can read here, reflects some of the challenges that women face in reaching senior levels, particularly in-house and in private practice. The article also contains some specific areas that all stakeholders should focus on.

This is a challenge confronting all parts of the IP system as stakeholders try to increase both the gender and racial diversity in their ranks. Arguably it is most pressing among the largest law firms that have struggled to grow the diversity of their workforce, particularly at partner level.

But it’s by no means only the denizens of Big Law who are zeroing in on how they can make their workforces more diverse. Last week Harrity & Harrity, a respected IP boutique with around 30 attorneys based in Northern Virginia, announced the launch of its minority firm incubator, an initiative designed to help foster the growth of minority-owned specialist IP law firms.

Starting in January 2020, the firm will recruit two minority attorneys who will be trained over the next four years not only in the ins and outs of patent drafting and prosecution work but also on how to launch and manage their own firms. To help those fledgling firms thrive, Harrity is signing up a group of businesses as programme partners. They have committed to giving any new firms work on a trial basis as and when they get off the ground. Accenture was the first to get involved, with somewhere between three and six companies ultimately expected to join on top.

Should the Harrity recruits decide that they’d prefer not to go down the route of owning their own firm then managing partner John Harrity said he’s “not going to kick them out the door”. However, he also said that he hoped the new programme would attract entrepreneurial types willing to take the plunge.

Harrity, who established his firm with his twin brother Paul, admitted that he needed to get over some doubts among his staff, such as why they would create more competition for themselves, before getting the initiative off the ground.

“There’s more than enough work to go around,” Harrity said he told his firm’s diversity committee, but he also admitted that there are plenty of concerns to be overcome outside of his own practice.

“One of the things that I’m finding out as we go out to the industry, talking to chief patent counsel at the largest filers, there’s a perception that minority firm means a firm that’s not good and is not going to be able to perform at a high level – we’re going to change that impression,” Harrity commented.

This is by no means his firm’s first diversity initiative. Three years ago it introduced a rule whereby it must interview a female or minority candidate for every male, non-minority candidate for any position. Since then it has gone from 8% diversity at the attorney level to 30% and Harrity insisted that this has had a marked effect. “It’s amazing how my firm has grown in the last three years, as we’ve taken this diversity journey,” he remarked. He pointed to a doubling in headcount, significant growth in revenues and profits, and more innovative thinking among the workforce as clear byproducts of having a more diverse practice.

“If you expand that out to the industry in general I think you’ll see the same types of effects and we’re going to start thinking differently which is really what the legal field needs to do,” Harrity maintained. He pointed out the irony of a lack of innovation on the subject among a patent community where much of the work is grounded in new ways of thinking.

“We’re in a field of innovation, that’s what the whole thing is about, and firms don’t do anything,” he claimed. That maybe an unfair accusation to lay at all IP practices but as Harrity’s new incubator shows, there is a growing realisation that more work is required to produce clear results.

To learn more about the Minority Firm Incubator and Harrity’s other initiatives to drive diversity in the IP legal field, visit harrity.com/diversity.

 

By Richard Lloyd

Harrity Minority Firm Incubator Video Thumbnail

Harrity Introduces Innovative Legal Diversity Initiative

Harrity & Harrity Introduces Innovative Legal Diversity Initiative

Program designed to launch minority-owned IP law firms

WASHINGTON (September 3, 2019) – Harrity & Harrity, LLP today announced its Minority Firm Incubator program, established to help train, cultivate, and launch minority-owned patent law firms. The four-year program seeks to address the growing issues surrounding the lack of diverse representation in law firm leadership across the industry.

According to a study by the National Association of Law Placement, women account for just over 12% of partner ranks in U.S. law firms, while minorities account for just 8% of all law firm partners.

“The Minority Firm Incubator program is an integral and innovative part of our ongoing diversity initiative to advance attorneys who will contribute to diversity in the patent field,” said Harrity Managing Partner John Harrity. “The statistics show the legal industry has work to do and that’s why our firm has dedicated time and resources to take meaningful action.”

The Minority Firm Incubator program is comprised of four phases:

  • Drafting Patent Applications
    In the first year, attorney participants will be trained to draft effective, efficient, high-quality patent applications in the technical areas of software, optics, telecommunications, computer networking, e-commerce, business methods, and others. Using the firm’s in-house developed automation tools, participants will learn how to draft like Harrity attorneys, who complete over 100 applications a year and many of whom average less than 12 hours per application.
  • Prosecuting Patent Applications
    In the second year, program participants will be trained to prosecute patent applications, negotiate with examiners, communicate effectively with clients, and ensure high-quality outcomes in some of the most difficult art units. Use of examiner analytics and uniform procedures will be emphasized to ensure that responses and other matters can be completed in less time and with a higher likelihood of success.
  • Firm Management
    In the third year, program participants will learn firm management skills, such as how to hire and train patent attorneys and support staff; how to establish and manage a law office; and how to pitch, manage, and retain clients.
  • Firm Launch
    In the fourth year, program participants will launch their own new patent law firms with already established corporate relationships. New firm leaders will continue to receive ongoing mentorship from Harrity to ensure their success.

Candidates must be from a protected, diverse class; be an attorney or a law student graduating in 2019 and have a degree in electrical engineering, mechanical engineering, computer science, physics, or a similar technical field; be registered to practice before the U.S. Patent and Trademark Office; demonstrate a record of academic and professional achievement; and have a sincere interest in starting a law firm.

Applications will be accepted from September 1, 2019 through November 18, 2019. Candidates should email their resume and an essay, limited to 500 words, as to why they should be chosen to be part of the program to incubator@harrityllp.com.

For more information, please visit https://harrityllp.com/incubator.

About Harrity & Harrity, LLP

Harrity & Harrity is the nation’s leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com.

Matthew Allen, Harrity Team

Statements in Specification May Harm Patent Eligibility

By Matthew Allen, Associate

The Federal Circuit recently issued a decision that indicates how certain types of statements, made in an Applicant’s own specification, can undermine patent eligibility.  Specifically, in Solutran Inc. v. Elavon, Inc., U.S. Bancorp, 2019-1345, (Fed. Cir. Jul. 30, 2019) (“Solutran”), the Federal Circuit highlights how patent eligibility under 35 U.S.C. §101 might turn based on a specification’s background information and statements regarding proposed advancements, or benefits, of an invention .

At issue in Solutran is claim 1 of U.S. Patent No. 8,311,945 (’945 patent), which recites:

A method for processing paper checks, comprising:

a) electronically receiving a data file containing data captured at a merchant s point of purchase, said data including an amount of a transaction associated with MICR information for each paper check, and said data file not including images of said checks;

b) after step a), crediting an account for the merchant;

c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check s MICR information; and

d) comparing by a computer said digital images, with said data in the data file to find matches.

When analyzing the claim under part one of the Supreme Court’s Alice test, the Federal Circuit determined that claim 1 was “directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check.”  In making its determination, the court examined the purported benefits of the ‘945 patent.  Two benefits were identified in the specification: “improved funds availability,” and “outsourcing.”  However, the court noted that while two benefits were identified in the specification, the claims were not limited to an embodiment that resulted in both benefits, stating that “[t]he only advance recited in the asserted claims is thus crediting the merchant’s account before the paper check is scanned.”  In other words, because the claims did not include features that required “outsourcing,” the court considered the only relevant benefit to be “improved funds availability.”

The court determined that the claimed advance (“improved funds availability”) was similar to abstract concepts such as “hedging” and “mitigating settlement risk,” and that “[t]he desire to credit a merchant’s account as soon as possible is an equally long standing commercial practice.”  Thus, the Federal Circuit used the purported advance of the ‘945 patent, as indicated in the specification and supported by the claims, in determining that claim 1 was directed to an abstract idea.  The court also noted that its characterization of claim 1 was appropriate where “the abstract idea tracks the claim language and accurately captures what the patent asserts to be the ‘focus of the claimed advance over the prior art.’”  This further signifies the importance the court placed on the alleged benefits of the application.

When addressing step two of the Alice test, the Federal Circuit used the background of the ‘945 patent against the patentee by stating that “the background of the ’945 patent describes each individual step in claim 1 as being conventional. Reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) represents the abstract idea in the claim, making it insufficient to constitute an inventive concept.”  In other words, simply re-ordering admittedly known steps will not constitute an inventive concept for purposes of step two of the Alice test.  Thus, the court used the applicant’s own statements in the specification, indicating that certain steps are conventional, to find that the claim was not patent eligible.

This decision provides important lessons about drafting and prosecuting a patent application that may increase the application’s likelihood to survive a §101 challenge.  First, practitioners should make sure that benefits identified in a patent application are exhibited in the claimed embodiments.  The identified benefits should ideally be clearly technical.  Second, practitioners should ensure that the patent application does not include any statements that might be used to argue against the patent eligibility of the claims.  This may include considering whether a detailed background may do more harm than good.

Telecommunications Top 20 Patent 300 2019

Telecommunications Ranks as the #8 Technology Area in the 2019 Patent 300™ Report

By Rocky Berndsen

The 2019 Patent 300™ Report details the top 300 companies, organizations, and universities obtaining patents in the United States.  Data from the report shows that nearly 70% of the U.S. patents obtained in 2018 were for electrical, software, or computer-related technologies.  The top 10 technology areas, which represent 49% of the 167,164 U.S. patents obtained by Patent 300 companies in 2018, are dominated by electrical technologies.

As is shown in Chart 1, the Telecommunications technology area is the 8th largest technology area in 2018 with 4,761 patents issued for Patent 300 companies in the U.S.  The Telecommunications technology area covers United States Patent & Trademark Office (USPTO) technology classifications related to communications systems in which electric or electromagnetic signals are used to transmit modulated carrier wave information between points.  The transmission media is via radio wave generally of a frequency above human speech, yet at a frequency lower than infrared frequencies. Radiotelephonic communication via wireless link is included in this class.

Chart 1 – Top 10 Technology Areas for Patent 300 (2018 U.S. Patents)

RankPatent 300 Technology Area2018 U.S. PatentsPercentage of Total 2018 U.S. Patents
1Semiconductors/Memory15,1539%
2Electrical Circuits and Systems13,2158%
3Multiplex and VoIP9,8756%
4Optics9,0035%
5Printing/Measuring and Testing8,6415%
6Thermal & Combustion Technology, Motive & Fluid Power Systems7,0174%
7Selective Visual Display Systems4,8553%
8Telecommunications: Analog Radio Telephone; Satellite and Power Control; Transceivers, Measuring and Testing; Bluetooth; Receivers and Transmitters; Equipment Details4,7613%
9Computer Networks4,5443%
10Cryptography and Security4,3113%

The top 20 companies in the Telecommunications area, shown in Chart 2, are large global technology companies.  They include Samsung (#1), Huawei (#2), Qualcomm (#3), LG (#4) and others.  Samsung tops the list having obtained 408 US patents, down slightly from 2017.  Huawei had a 23% increase over 2017 at 284 US patents. Qualcomm, at 277, was down 38% from 2017.  The top 20 companies represent a cross section of the technology sector.  Included are device manufacturers, wireless carriers, and media companies.

Chart 2 – Top 20 Companies by U.S. Patents in Telecommunications

Patent 300 Company NamePatent 300 Rank in TelecomTelecom Patents 2018% of Company’s 2018 U.S. PatentsTelecom Patents 2017Change from 2017 Patents
Samsung14085%412-1%
Huawei228413%21823%
Qualcomm327712%382-38%
LG Electronics42309%2166%
AT&T522017%2143%
Ericsson620615%282-37%
Intel71835%225-23%
Apple81828%224-23%
IBM91672%198-19%
Sony101155%138-20%
Nokia1110812%193-79%
Softbank1210315%106-3%
Microsoft13974%934%
Verizon149515%125-32%
Alphabet Inc.15924%113-23%
Skyworks167938%5827%
Deutsche Telekom177442%714%
Blackberry187220%108-50%
ZTE196714%81-21%
NEC20658%88-35%

For more detailed information about this technology area, or any other data related to the 2019 Patent 300™ Report, please visit harrityllp.com/patent300/ or contact Rocky Berndsen directly via email at rberndsen@harrityllp.com.

Harrity Patent 300 Computer Networks

Computer Networks Ranks as the #9 Technology Area in the 2019 Patent 300™ Report

By Rocky Berndsen

The 2019 Patent 300™ Report details the top 300 companies, organizations, and universities obtaining patents in the United States.  Data from the report shows that nearly 70% of the U.S. patents obtained in 2018 were for electrical, software, or computer-related technologies.  The top 10 technology areas, which represent 49% of the 167,164 U.S. patents obtained by Patent 300 companies in 2018, are dominated by electrical technologies.

As is shown in Chart 1, the Computer Networks technology area is the 9th largest technology area in 2018 with over 4,540 patents issued for Patent 300 companies in the U.S.  The Computer Networks technology area covers United States Patent & Trademark Office (USPTO) technology classifications related to electrical computer or digital data processing system or corresponding data processing method including apparatus or steps for transferring data or instruction information between a plurality of computers wherein the computers employ the data or instructions before or after transferring and the employing affects said transfer of data or instruction information.

Chart 1 – Top 10 Technology Areas for Patent 300 (2018 U.S. Patents)

RankPatent 300 Technology Area2018 U.S. PatentsPercentage of Total 2018 U.S. Patents
1Semiconductors/Memory15,1539%
2Electrical Circuits and Systems13,2158%
3Multiplex and VoIP9,8756%
4Optics9,0035%
5Printing/Measuring and Testing8,6415%
6Thermal & Combustion Technology, Motive & Fluid Power Systems7,0174%
7Selective Visual Display Systems4,8553%
8Telecommunications: Analog Radio Telephone; Satellite and Power Control; Transceivers, Measuring and Testing; Bluetooth; Receivers and Transmitters; Equipment Details4,7613%
9Computer Networks4,5443%
10Cryptography and Security4,3113%

When you look at the top 20 companies obtaining patents in the Computer Networks technology area, shown in Chart 2, all of the companies are large global technology companies such as IBM (#1), Amazon (#2), Alphabet (#5), and Facebook (#8).  IBM ranks #1 on the list having obtained 845 U.S. patents in the Computer Networks technology area, which is a 5% increase over 2017.  9% of IBM’s U.S. patents obtained in 2018 are classified in the Computer Networks technology area.  Samsung (#7) has the largest year over year increase in Computer Networks patents at 33%, while Nokia (#17) had the largest decrease at -62%.  While the companies in the top 20 are all large global technology companies, they cover a range of industries including enterprise IT, social media, telecommunications, consumer electronics, and more.

Chart 2 – Top 20 Companies by U.S. Patents in Computer Networks

Patent 300 Company NamePatent 300 Rank in Computer NetworksComputer Networks Patents 2018% of Company’s 2018 U.S. PatentsComputer Networks Patents 2017Change from 2017 Patents
IBM18459%8065%
Amazon230714%25019%
Dell327613%21622%
Microsoft427111%294-8%
Alphabet52118%280-33%
Cisco615618%178-14%
Samsung71532%10333%
Facebook813418%181-35%
Oracle911816%1143%
AT&T101078%132-23%
Huawei111075%1025%
Verizon1210015%1000%
Ericsson13796%110-39%
Tencent147122%90-27%
Intel15622%75-21%
Sony16593%5310%
Nokia17526%84-62%
HPE18479%3428%
Red Hat194715%52-11%
Qualcomm20462%72-57%

For more detailed information about this technology area, or any other data related to the 2019 Patent 300™ Report, please visit harrityllp.com/patent300/ or contact Rocky Berndsen directly via email at rberndsen@harrityllp.com.

Kenneth Hartmann Harrity Team

Technical Details are Needed to Avoid Patent Eligibility Issues for Patent Applications

By Kenneth Hartmann, Associate

Many patent practitioners have likely found success in overcoming and/or avoiding 35 USC §101 rejections since the USPTO’s Revised Patent Subject Matter Eligibility Guidance was released last January.  However, the Federal Circuit (“the court”) recently made it clear that continued attention and care should be given when drafting patent applications focused on payment systems and/or payment processing.

In Innovation Sciences, LLC v. Amazon.com, Inc. 2018-1495 (Fed. Cir. Jul. 2, 2019) (“Innovation Sciences v. Amazon”) the court determined that a claim to an “online method for a payment server to support online buying over the Internet” in U.S. Reissue Patent No. 46,140 (the ’140 patent) was ineligible under Step 2 of Alice.  More specifically, the court agreed with the district court that the claim was directed to the abstract idea of “securely processing a credit card transaction with a payment server” and that the claim lacked an inventive step, stating that the transmission of credit card payment information through the completion of a purchase are the same as those used in a “conventional Internet transaction system having adequate credit card information security” as admitted in the specification of the ’140 patent.

While Innovation Sciences argued that a “wherein” clause indicating the process involved a switch from a server with less security to a server with more security, the court held that that claim is directed to the abstract idea of “switching.”  The court further mentioned that the claim seeks to capture the broad concept of switching to a more secure server, rather than a “specific way of doing so.”  For Step 1 of the Alice test, the court indicated that the claim may have avoided being directed to an abstract idea if the claim and/or specification had indicated a specific way of carrying out the switch from a less secure server to a more secure server.

Patent applications directed to payments or other financial related processes will likely continue to receive the highest level of scrutiny with respect to patent eligibility due to the Alice decision being based on a financial/business method patent application.  The fact is, many of these patent applications and/or patents likely involve novel technical features, communications, and/or processes that were overlooked and/or not considered when the patent application was drafted.  In Innovation Sciences v. Amazon, the court specifically referred to a lack of detail with respect to switching between a less secure server and a more secure server.  In fact, the word “switched” is mentioned only ONCE in the specification and ONCE in a flowchart.  It is no wonder that the court found Innovation Science’s arguments regarding the switch between servers to be futile.

The ’140 patent claims priority to a patent application filed back in April 2000.  That was obviously a different era of patent preparation and prosecution.  Today, patent practitioners should consider and outline the technical aspects of processes (especially business method processes) without taking for granted that one or more steps of the process are inventive, in and of, themselves.  Clearly, the switch between servers, considered to be one step in the overall process for performing an online method for a payment server, involved its own processes and/or steps.  How/when was the decision made to switch the servers?  What parameters were used to select the new server?  How were those parameters analyzed to make the selection? What types of communications (and/or how many) were needed to perform the switch?  Again, it was a different era of drafting patent applications in 2000.  However, if the patent application drafter was able to predict the future, those are just a few example questions that, if answered in the claim and/or specification, would have improved Innovation Sciences’ case for patent eligibility.  Moreover, to have the best chances of success, patent drafters should continue to discuss the technical problems solved by these processes (and/or by the steps of the processes) and any corresponding technical benefits.

https://soundcloud.com/clause-8/episode-12-gilbert-hyatt

Gil Hyatt – Clause 8 – Episode 12

Eli Mazour recently interviewed the inventor of the microprocessor – Gil Hyatt – on the latest episode of the Clause 8 Podcast.  Gil talks about devoting his life to innovation, licensing patents for hundreds of millions of dollars, and getting stuck in USPTO’s Sensitive Applications Warning System (SAWS) program. #IntellectualProperty #Patents #Podcast

Joseph Falkiewicz Harrity Team

How to Protect Your Client’s Reputation While Also Protecting Their Intellectual Property (IP)

By Joseph “Josh” Falkiewicz, Associate

An attorney that drafts a patent application must consider a multitude of issues to provide strong protection for a client’s IP. The patent application should be accurate from a technical standpoint while also satisfying statutory requirements of patentability (e.g., 35 USC §101, §102, §103, & §112). At the same time, the drafting attorney must also consider how the publication of the patent application or patent may impact the client’s reputation.

Journalists often misinterpret the publication of a patent as a statement by the client regarding its current actions or future intentions. This can cause problems with how people perceive the client if statements within the patent mischaracterize the client’s approach to sensitive issues, such as privacy. Therefore, the drafting attorney should write the patent application in a way that positively reflects – or at least avoids negative reflection – on the client.

For example, a patent describing steps for obtaining and storing personal information of individuals might raise a variety of privacy concerns. Therefore, the drafting attorney should also include, as part of the written description, statements explaining that implementations described in the patent are compliant with privacy laws of one or more jurisdictions, that the personal information is collected only after obtaining consent, that encryption is used to protect the security and/or integrity of the personal information, and/or the like. To provide a more specific example, if the disclosed subject matter involves capturing images or video of a particular area (e.g., a loading dock, an office, a home, and/or the like), the drafting attorney should include an example in the specification that illustrates how an individual would consent to being monitored, an example showing how the image data or video data is encrypted before being transmitted over a network, and/or the like.

Furthermore, the drafting attorney may want to include, in the written description, one or more additional examples that describe how the disclosed subject matter handles situations involving non-consenting individuals. For example, a camera or a drone may capture an image of a loading dock to verify whether a product has been delivered. What happens if an image of the loading dock also includes an image of a non-consenting individual that was walking by? By providing a thorough description of these situations in the patent application, the drafting attorney can help create a positive reputation of the client by illustrating that the client cares about privacy of its customers. This approach also reduces the likelihood of a skeptical or an antagonistic reader promoting negative press about the client based on the patent.

Harrity Patent 300 Cryptography and Security

Cryptography and Security Ranks as the #10 Technology Area in the 2019 Patent 300™ Report

By Rocky Berndsen

The 2019 Patent 300™ Report details the top 300 companies, organizations, and universities obtaining patents in the United States.  Data from the report shows that nearly 70% of the U.S. patents obtained in 2018 were for electrical, software, or computer-related technologies.  The top 10 technology areas, which represent 49% of the 167,164 U.S. patents obtained by Patent 300 companies in 2018, are dominated by electrical technologies.

As is shown in Chart 1, the Cryptography and Security technology area is the 10th largest technology area in 2018 with over 4,300 patents issued in the U.S.  The Cryptography and Security technology area covers United States Patent & Trademark Office (USPTO) technology classifications related to secure communications and information security.

Chart 1 – Top 10 Technology Areas for Patent 300 (2018 U.S. Patents)

RankPatent 300 Technology Area2018 U.S. PatentsPercentage of Total 2018 U.S. Patents
1Semiconductors/Memory15,1539%
2Electrical Circuits and Systems13,2158%
3Multiplex and VoIP9,8756%
4Optics9,0035%
5Printing/Measuring and Testing8,6415%
6Thermal & Combustion Technology, Motive & Fluid Power Systems7,0174%
7Selective Visual Display Systems4,8553%
8Telecommunications: Analog Radio Telephone; Satellite and Power Control; Transceivers, Measuring and Testing; Bluetooth; Receivers and Transmitters; Equipment Details4,7613%
9Computer Networks4,5443%
10Cryptography and Security4,3113%

When you look at the top 20 companies obtaining patents in the Cryptography and Security technology area, shown in Chart 2, most of the companies are large technology companies such as IBM (#1), Dell (#2), and Intel (#4).  In addition, there are also cryptography and security-focused companies like Symantec (#9) and Fortinet (#14).  IBM ranks #1 on the list having obtained 613 U.S. patents in the Cryptography and Security technology area, which is a 3% increase over 2017.  About 7% of IBM’s U.S. patents obtained in 2018 are classified in the Cryptography and Security technology area.

Chart 2 – Top 20 Companies by U.S. Patents in Cryptography and Security

Patent 300 - Company NamePatent 300 Rank in Cryptography and SecurityCryptography and Security Patents 2018% of Company’s 2018 U.S. PatentsCryptography and Security Patents 2017Change from 2017 Patents
IBM16137%5953%
Dell225712%23210%
Amazon325212%21415%
Intel42196%222-1%
Microsoft51998%248-25%
Samsung61232%10713%
Alphabet71195%144-21%
Cisco811013%8325%
Symantec910370%134-30%
Bank of America108928%7615%
AT&T11837%93-12%
Qualcomm12823%811%
Apple13733%678%
Fortinet146752%5518%
Oracle15578%64-12%
Huawei16563%535%
Verizon17569%64-14%
Blackberry184813%52-8%
Canon19471%48-2%
Ericsson20473%439%

Cryptography and Security is an important technology area in the patent world with over 4,300 U.S. patents in 2018 alone.  The importance and value of this technology is only increasing as evidenced by the daily news headlines related to data privacy, data security, and secure communications.

For more detailed information about this technology area, or any other data related to the 2019 Patent 300™ Report, please visit harrityllp.com/patent300/ or contact Rocky Berndsen directly via email at rberndsen@harrityllp.com.

Recent Court Decisions Weigh in on Prior Art Standard in Patent Law

By Jonathan Goodman

Is a printed publication that predates a patent application always considered prior art?  Many may think that a reference published, and available to the public, prior to a patent application’s filing date is prior art.  While this is usually the case, recent court decisions have highlighted exceptions to this standard.

Courts Clarify What Constitutes Prior Art

In GoPro, Inc. v. Contour IP Holding LLC,  2017-1894, 2017-1936 (Fed. Cir. July 27, 2018) (“GoPro”), the Federal Circuit determined that a catalog distributed at a trade show open only to dealers of action sports vehicles was prior art to patents relating to action sports video cameras.  Particularly, the Court noted that the trade show’s focus on action sports vehicles did not preclude persons of ordinary skill in the art from attending because a primary purpose of action sports cameras is for use on action sports vehicles.

GoPro clarifies that a printed publication disclosed at a trade show is publicly accessible within the meaning of section 102 even if the trade show is not aimed at persons of ordinary skill in the relevant art.  While GoPro takes an expansive view, practitioners seeking to overcome a printed publication distributed at a trade show, conference, meeting, or similar gathering may still find success arguing that the printed publication was not publicly accessible when there is no credible reason that a person of ordinary skill in the relevant art would have been in attendance.  For example, a slight change to the facts in GoPro, such as the cameras at issue being used for portrait photography rather than action sports photography, may have persuaded the Court to find that the catalog was not publicly accessible.

In Acceleration Bay, LLC v. Activision Blizzard Inc., 2017-2084 (Fed. Cir. Nov. 6, 2018), the Federal Circuit found that an article published on a university website was not prior art to later-filed patents because the website only indexed articles by author and year, and lacked a reliable search function.  Specifically, the Court noted that the test for public accessibility is not whether a reference has been indexed, but whether the reference was indexed in a meaningful way that would permit a person of ordinary skill in the art to locate it.

It is worth noting that the university website at issue in Acceleration Bay was from 1999 and may have lacked competent search functionality that is now commonplace.  Moreover, today, articles published on a website likely would be keyword indexed by a search engine, thus making it difficult to argue against public accessibility regardless of the manner of indexing performed by the website.  Nevertheless, practitioners should be mindful that articles published on a website are not necessarily publicly accessible if it can be shown that no meaningful indexing of the article was performed.  In particular, if an article is not keyword indexed by the publishing website or a search engine—which may occur if the website prevents pages from being indexed by search engine crawlers—it may indicate that the article was not publicly accessible.

Key Takeaways

Although not every printed publication is considered prior art under Section 102, the growing ease with which nearly all printed material is easily accessible online makes that determination less and less likely.  Thus, when filing and prosecuting patent applications, practitioners should be wary of withholding references from the USPTO in reliance on prior art exceptions, such as those implied by GoPro and set forth in Acceleration Bay.

Getting To Know Your Patent Examiner Through Data

Law360 (June 13, 2019) — How many office actions should I expect at the U.S. Patent and Trademark Office? Should I file a request for continued examination or a notice of appeal? Is it worth filing a pre-appeal?

These, among others, are common questions that practitioners may ask themselves during patent prosecution. In the past, these were mostly questions that could not be answered by taking into account unique proclivities of different examiners. Now, using data analytics, we can get a better sense of how prosecution will go and be able to make an informed decision when a crossroad is reached.

Below, we will explore how to use public data about an examiner, provided by the USPTO, during patent prosecution.

Allowance Rate

By looking at an examiner’s allowance rate (i.e., allowance vs. abandonments), we can get a sense of the journey early on. A high allowance rate is an indicator that the examiner likely has no qualms about allowing applications, and that the examiner likely will not stubbornly stick to poor rejections. For these types of examiners, if appropriate, it may be worth taking a more assertive initial position, including arguing that the rejections should be withdrawn, or offering modest amendments.

However, if the examiner’s allowance rate is low, you may want to consider including substantial amendments or anticipate the possible need to file an appeal as these types of examiners tend to combine three, four, or even five-plus references in their art rejections. If the allowance rate in the art unit is significantly higher than the examiner’s allowance rate, you may want to consider getting the examiner’s supervisor or a primary examiner in the art unit involved early in the process as it may be easier to reach an agreement with them than with the assigned examiner.

Office Actions Per Patent, RCEs Per Patent

A high office action per patent and/or RCE per patent rate may be an indication that reaching allowability will be challenging. These types of examiners also are likely unafraid to combine three, four or five-plus references to make their art rejections. Similar to examiners with low allowance rates, you may want to consider including substantial amendments, getting the supervisory examiner or a primary examiner involved, or planning to file an appeal. You may even want to check the supervisory examiner’s and primary examiner’s allowance rates when deciding whether to get one of them involved.

Interview Statistics

Generally speaking, it is beneficial to interview an examiner as it gives a practitioner an opportunity to get a better sense of the examiner’s interpretations of the application and the applied references, and a chance to explain the invention.

A high interview success rate (i.e. the rate that interviews lead to an allowance in the next office action) may be an indicator that the examiner uses interviews for compact prosecution. These examiners are likely willing to provide suggestions for amendments that would lead to allowance or at least advance prosecution. For these types of examiners, you may want to be prepared to discuss multiple, different types of amendments to take advantage of their willingness to expedite prosecution. However, if the interview success rate is low for the examiner, consider sending a substantive interview agenda with proposed amendments to maximize the chance of reaching an agreement with the examiner.

A comparison of an examiner’s final rejection allowance rate with After Final Consideration Pilot and his/her final rejection allowance rate without AFCP may be an indicator of whether the examiner takes the AFCP program seriously. If there is a significant difference with those rates, the examiner likely uses the allocated two to three hours in the AFCP program to find a way to allow the application. For these types of examiners, consider filing an after-final amendment with an AFCP request before deciding whether to file an RCE or a notice of appeal. However, if the rates are similar, the examiner likely uses pre-pilot procedures regardless of whether an AFCP is filed.

Pre-Appeal Statistics

Pre-appeal statistics can be useful when deciding whether to file an appeal brief or a pre-appeal brief. A high rate of allowance and/or re-opening of prosecution when pre-appeals are filed may indicate that the examiner, the examiner’s SPE, and other panel members in the examiner’s art unit take the pre-appeals process seriously and that it is worth presenting arguments in a pre-appeal brief. However, a low rate of allowance and a low rate of reopening of prosecution after pre-appeal may indicate that it would be better to forego the pre-appeal process and go straight to appeal or go another round with an RCE.

Appeal Statistics

Analyzing an examiner’s appeal statistics may be useful in determining whether to file an appeal or an RCE. If the examiner’s rate of allowance after an appeal is filed is high, it may be worth appealing rather than filing an RCE and avoid narrowing claims unnecessarily. However, if the examiner’s rate of allowance after appeal is low, it is highly likely that your appeal will go to the Patent Trial and Appeal Board.

Since it may take a couple of years for the PTAB to pick up your appeal due to their backlog, you may want to make certain that your client is comfortable with going through with the appeals process and waiting rather than filing an RCE and possibly reaching an agreement with the examiner earlier. For these types of examiners, you may want to consider the examiner’s allowance rate and RCEs per patent rate to help you and your client in making this decision.

If the examiner’s board decision success rate is high, it may be an indication that the examiner goes to the board only when he/she believes that his/her examiner’s answer would be particularly strong. If you receive a compelling examiner’s answer from these types of examiners, consider filing an RCE rather than going to the board.

Conclusion

Just like how data analytics has improved efficiency in other industries, examiner analytics has the potential to improve the efficiency of patent practitioners and patent prosecution. Therefore, using examiner data in your practice may lead to better, quicker and cheaper outcomes for you clients.

By Kris Rhu

The example screenshots in this article are from Patentprufer, which was developed by Harrity & Harrity.

https://soundcloud.com/clause-8/episode-11-john-harrity

John Harrity – Clause 8 – Episode 11

Our Managing Partner John Harrity is the featured guest on this episode of the Clause 8 Podcast, sharing his thoughts on everything from how firms in the patent law space should be innovating, to some of the secrets of our own firm’s success. #Innovation #LawFirms #IntellectualProperty #Podcast

Harrity 4 Charity


Harrity & Harrity’s John Harrity and Sandra Maxey Named Co-Chairs of 30th Annual Lawyers Have Heart Race Supporting American Heart Association

WASHINGTON (June 11, 2019) – The American Heart Association (AHA), the world’s leading organization devoted to fighting cardiovascular disease, has selected Harrity & Harrity Managing Partner John Harrity and Controller Sandra Maxey to co-chair the 30th annual Lawyers Have Heart 10K Race, 5K Run & Fun Walk.

“As a survivor of a 2016 ‘widow maker’ heart attack, I am honored and humbled to serve in this leadership position for a cause near and dear to my heart,” said Harrity. “I hope that my personal story helps to underscore the importance of working heart healthy activities into everyday life. Harrity & Harrity continues to support the AHA in our Harrity4Charity philanthropic initiative because of the impact that heart disease has on families across the globe.”

Lawyers Have Heart brings runners and walkers of all ages and experience levels together to raise awareness of heart disease and stroke. In 2019, the event raised more than $1 million in support of the AHA’s mission to be a relentless force for a world of longer, healthier lives.

“I am honored to serve alongside John as co-chair of the 2020 Lawyers Have Heart race. This year, we hope to raise even more,” added Maxey. “To achieve our goal, we need more law firms, corporations, and the general Washington, D.C. community to join the fight for healthier lives.”

While largely supported by the Washington, D.C. legal and corporate community, Lawyers Have Heart 10K Race, 5K Run & Fun Walk is open to the public, and all are welcome to participate in support of the cause.

Lawyers Have Heart will take place on June 13, 2020, at the Washington Harbour in Georgetown. For more information on the event, visit www.lawyershaveheartdc.org.

About Harrity & Harrity, LLP

Harrity & Harrity is the nation’s leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com/.

About the American Heart Association

The American Heart Association is devoted to saving people from heart disease and stroke – the two leading causes of death in the world. We team with millions of volunteers to fund innovative research, fight for stronger public health policies and provide lifesaving tools and information to prevent and treat these diseases. The Dallas-based association is the nation’s oldest and largest voluntary organization dedicated to fighting heart disease and stroke. To learn more or to get involved, call 1-800-AHA-USA1 or visit heart.org.

Harrity IAM Patent 1000

Harrity Receives Highest Ranking in IAM Patent 1000 Guide

Harrity & Harrity is pleased to announce that the firm was ranked in the elite “Highly Recommended” category by IAM Patent 1000: The World’s Leading Patent Professionals for prosecution firms in the Washington, D.C. metro area. The eighth edition of the IAM Patent 1000 guide lists the world’s leading patent experts and identifies only a few as “highly recommended” in instances where firms receive significantly greater positive feedback.

IAM writes:

“Fully deserving its promotion to the IAM Patent 1000 highly recommended tier for prosecution, Harrity & Harrity is a top performer in the patent field. It ensures consistent high quality by performing legitimate second-attorney reviews on every patent application and does this without ever missing a deadline.”

“Paul Harrity is extremely process oriented and has amazing attention to detail. He is doing a lot of interesting things in the practice – tracking examiner trends, for example – and the work he does helps his clients make the best decisions possible.”

“The two brothers have the firm way ahead of the curve when it comes to the development of disruptive technology for the patent field; their software development team has stepped up its efforts around machine learning prediction models and process efficiency, so watch this space.”

As one of the most respected guides in IP law, the IAM Patent 1000 identifies the top attorneys, law firms and patent experts in key jurisdictions around the globe. The organization’s rigorous research process is conducted over five months and involves approximately 1,800 interviews with patent attorneys and in-house counsel. Only firms that stand out for their depth of expertise, market presence and level of work are listed in the IAM Patent 1000. For more information on the methodology click here.

John Harrity Delivers Diversity Message to Meeting of Chief IP Officers

Managing Partner John Harrity was a featured speaker at the final day of the two-day Chief Intellectual Property Officers Council meeting, hosted by The Conference Board in New York City this week.  Speaking about diversity and inclusion in the legal profession, John presented an overview of Harrity & Harrity’s diversity and inclusion journey, mentioning among other things, the firm’s self-imposed adherence of an adapted version of the Rooney Rule for hiring.

The Conference Board is a global, independent membership and research organization working in the public interest. Its mission is to provide the world’s leading organizations with the practical knowledge they need to improve performance and better serve society.

In only its third year of existence, the Chief Intellectual Property Officers Council provides a confidential environment where a select group of chief and senior IP leaders come together to openly discuss both legal and business issues related to IP protection and management.

Harrity Womens Workshop 2019

Harrity & Harrity Holds its 2nd Annual Women’s Workshop

By Elaine Spector

Harrity & Harrity just completed its 2nd Annual Women’s Workshop.  The workshop is part of Harrity’s Diversity Initiative, whose Diversity Mission is to “promote and nurture a respectful, highly engaged, family friendly, and inclusive culture that values the diversity of our talented team with diverse backgrounds, experiences, perspectives, skills/talents, and capabilities.”  Nine women, including recent law school graduates, current law students, and one research scientist with a Ph.D in electrical engineering, participated in a 3-day long workshop. The interactive programs included patent preparation and prosecution skills training, resume and interview preparation, and sessions with prominent women guest speakers in the intellectual property field.  The guest speakers ranged from IP partners at major law firms (both litigation and prosecution partners), former leaders at the U.S. Patent and Trademark Office, Chief IP Counsel and IP Counsel at major corporations, and leaders within Diversity and Inclusion organizations.

The participants were particularly interested in how these women navigated their careers in light of gender issues associated with working in a male-dominated profession as well as balancing career with life.  For example, Barbara Fiacco, President-Elect of AIPLA and litigation partner at Foley Hoag, indicated that her love for research and writing led her to a career in IP litigation, where she is thriving.  Ellen Smith, a partner at Sughrue Mion, shared her philosophy from her daughter’s school, “If there is no path, make your own,” as she described her experiences in navigating a different path for herself at Sughrue Mion while she was starting a family.

Cynthia Raposo gave us an inside look on how she helped develop the legal department for Under Armour before Under Armour was a household name.  Interestingly, Cynthia had moved back to a small firm to a part-time position in attempt to achieve a better work-life balance.  She began to do work for Under Armour and soon became their go-to lawyer for legal advice.  When offered the position to go in-house at Under Armour, she indicated it was too exciting an opportunity to turn down.  Cynthia was responsible for developing strategies for securing trademarks worldwide well before Under Armour would even enter those particular countries.

Other sessions included health and wellness issues in the practice of law, top career tips, as well as the very sage advice from our Harrity founders.  John and Paul Harrity both conceded that their best career advice includes reading as much as possible with a focus on continued learning.  We hope the participants had a great time, and we are looking forward to next year’s workshop!

Paul Harrity Selected by Managing Intellectual Property as a 2019 Patent Star

Harrity & Harrity is pleased to announce that Partner Paul Harrity was recently selected by Managing Intellectual Property, the leading specialist guide to IP law firms and practitioners worldwide, as a 2019 “Patent Star.”  Paul was recognized as a Virginia practitioner in the areas of patent prosecution, patent strategy and counseling. The annual “IP Stars” list recognizes leading lawyers and law firms for intellectual property work in more than 75 jurisdictions.

Paul is a patent attorney in the firm’s Fairfax, Virginia, office where he focuses on preparing and prosecuting patent applications.  He began his career in 1991 as a patent agent at the United States Patent and Trade Office.  Since leaving the USPTO, Paul has prepared hundreds of patent applications and thousands of Patent Office responses.

Plan Before You File: 3 Key Considerations in Patent Preparation

By Daniel Jebsen, Associate

It’s Monday, and your client comes to you with an urgent request for help: there will be a disclosure of an invention on Friday, and they’d like to file a patent application before that disclosure.  No problem, you can prepare a patent application for filing in a few days.  Other than the details of the invention itself, what do you need to consider when filing a patent application?  One easily overlooked issue, particularly in such a rush scenario, is the impact of inventor location, residency, and citizenship on your patent application filing.

Many jurisdictions, including the United States (see 35 U.S. Code § 184), impose some type of restriction on first filings outside of the jurisdiction (i.e., foreign first filings).  Such restrictions can be imposed on, for example, applications for inventions made in a given country, applications by inventors who reside in a given country, and applications by inventors who are nationals of a given country.  Note: the World Intellectual Property Organization (WIPO) has posted a list describing known filing restrictions for some Patent Cooperation Treaty (PCT) contracting states.

Some jurisdictions with foreign filing restrictions allow foreign first filing only with permission from the patent office (i.e., after obtaining a foreign filing license).  However, the amount of time needed to obtain a foreign filing license can vary from days to weeks, or even months, depending on the jurisdiction.  Some jurisdictions, such as Russia, do not allow foreign first filings at all and, as a result, do not grant foreign filing licenses.  Therefore, a very early consideration in the patent application preparation process should be whether inventor location, residency, and/or citizenship will dictate timing and/or jurisdiction of your first filing.  These scenarios can become quite complex when inventors are located in, reside in, or are citizens of different countries, and even more complex when an urgent filing is needed.

For example, maybe Inventor A is located in, resides in, and is a citizen of Country X, Inventor B is located in, resides in, and is a citizen of Country Y, and Inventor C is located in and resides in Country X, but is a citizen of Country Z.

Here are three steps to take before filing a patent application that should help preserve your invention’s first-to-file status:

  1. Before filing a patent application, the first step is to identify whether Country X, Country Y, and Country Z impose foreign filing restrictions based on the inventor relationships to the relevant jurisdictions. In this example, assume that Country X imposes a foreign filing restriction on applications made in Country X, Country Y imposes a foreign filing restriction on residents of Country Y, and Country Z does not impose a foreign filing restriction on citizens of Country Z.
  2. The second step is to determine whether permission for a foreign filing can be requested from any of these jurisdictions that impose such a restriction. Here, perhaps permission for a foreign filing can be requested from offices of both Country X and Country Y.
  3. The third step is to determine an approximate amount of time typically needed for a request for a foreign filing to be reviewed and (hopefully) granted. In our relatively simple example, perhaps a foreign filing license can be obtained from the Country X office in 3-4 days, but a foreign filing license from the Country Y office may take 4-6 weeks.  An attorney licensed in a given jurisdiction may have strategies for trying to expedite the review/grant process.

As you can probably imagine, results of these inquiries can dictate where and how quickly the patent application can be filed.  In the above example, if timing is urgent, a first filing in Country Y after obtaining a foreign filing license for Country X may be a workable strategy.  Conversely, if timing is not an issue, a first filing in Country X after obtaining a foreign filing license for Country Y may be the way to go.

Of course, it is advisable to contact the relevant patent office or an attorney licensed in a given jurisdiction in order to ascertain detailed information for a given jurisdiction.

In summary, inventor location, residency, and/or citizenship can have a significant impact on timing and/or jurisdiction for a given filing.  Therefore, foreign filing considerations should be handled as early as possible during the patent application preparation process.

Patent 300 Harrity Analytics

Law360 Covers the Release of Harrity’s Patent 300™ Report

Following the release of Harrity’s Patent 300™ Report, Law360 published an article, “IBM, Samsung, Canon Led 2018 Patent Gains, Report Says,” highlighting the key features and benefits of the patent rankings. The Patent 300™ Report lists companies, organizations and universities by the number of utility patents they received in 2018.

As the Law360 article describes, “The report, totaling more than 1,200 pages, takes a deep dive into each ranked company. For example, it breaks down that IBM has a revenue of nearly $80 billion and more than 360,000 employees. It then shows that the company received 9,111 utility patents in 2018.”

According to Rocky Berndsen, head of Harrity Patent Analytics, “The goal was really to provide something that’s going to be valuable across the spectrum of the IP community.” In-house attorneys can use the report to compare themselves against other companies, and law firms can leverage information in the report to develop business for their clients.

A spokesperson for Intel praised the report for recognizing innovation in the tech industry. “Every day, our engineers and other employees push the boundaries of computing and communication technologies, and we’re proud that the value of their inventions is recognized.”

Find the Law360 article HERE (subscription required) and more information on the Patent 300™ Report here.

Law360 Interviews Eli Mazour regarding latest Clause 8 Podcast

Following the release of Eli Mazour’s Clause 8 podcast interview with Makan Delrahim, Law360 published an article, “DOJ Antitrust Chief Wants To Take Thumb Off Patent Scales,” highlighting the impact of antitrust law on the patent field.

As the Law360 article describes, “Key to Delrahim’s ire is a 2013 guidance put out both by the DOJ and the U.S. Patent and Trademark Office that generally discouraged the use of injunctions and import bans sought by patent holders enforcing their technology.”

Find the Law360 article HERE (subscription required) and more information on the Clause 8 podcast here.

Kris Rhu Harrity Team

Using Data to Improve Patent Prosecution Performance

By Kris Rhu

How many office actions should I expect? Should I file an RCE or a Notice of Appeal? Is it worth filing a Pre-Appeal? These, among others, are common questions that practitioners may ask themselves during patent prosecution. In the past, they were mostly unanswerable questions. Now, using data analytics, we can get a better sense of how the patent prosecution process will go and be able to make an informed decision when a crossroad is reached.  Below, we will explore how to use statistics about a patent Examiner, which are based on public data provided by the USPTO, during patent prosecution.  I have provided example screenshots from Patentprufer, which was developed by Harrity & Harrity.

Examiner’s Allowance Rate

By looking at an Examiner’s allowance rate (i.e. allowance vs. abandonments), we can get a sense of the journey early on.  A high allowance rate is an indicator that the Examiner likely has no qualms about allowing applications, and that the Examiner likely will not stubbornly stick to poor rejections.  For these types of Examiners, if appropriate, it may be worth taking a more assertive initial position, including arguing that the rejections should be withdrawn or offering modest amendments.  If the Examiner’s allowance rate is low, you may want to consider substantial amendments, get the Examiner’s Supervisor involved early in the process, or anticipate the need to possibly file an appeal.

Office Actions per Patent, RCEs per Patent

A high office action (OA) per patent and/or RCE per patent rate may be an indication that reaching allowability will be challenging.  These types of Examiners likely are unafraid to combine three, four, or even five references to make prior art rejections.    To get a patent application allowed in a more efficient manner than an examiner’s statistics suggest, a more proactive posture may be needed from the beginning.

Examiner Interview Statistics

Generally speaking, it is beneficial to interview an Examiner as it gives a practitioner an opportunity to get a better sense of the Examiner’s interpretations of the application and the applied references, and an opportunity to explain the invention.  A high interview success rate (i.e. interviews that lead to an allowance in the next office action) may be an indicator that the Examiner uses interviews as opportunities for compact prosecution.  Some of these Examiners may even provide suggestions for amendments that would lead to allowance.  If the interview success rate is low for the Examiner, consider sending a substantive interview agenda with proposed amendments to maximize the chance of reaching an agreement with the Examiner.

A comparison of a patent Examiner’s final rejection allowance rate with and without AFCP may be an indicator of whether the Examiner takes the AFCP process seriously.  If there is a significant difference with those rates, the Examiner likely uses the allocated 2-3 hours to find a way to allow the application.  However, if the rates are similar, the Examiner likely uses pre-pilot procedures regardless of whether an AFCP is filed.

Pre-Appeal Statistics

Pre-Appeal statistics can be useful when deciding whether to file an Appeal Brief or a Pre-Appeal Brief.  A high rate of allowance and/or re-opening of prosecution when pre-appeals are filed may indicate that it is worth presenting arguments in a Pre-Appeal Brief.  However, a low rate of allowance and a low rate of re-opening of prosecution may indicate that it would be better to forego the pre-appeal process and go straight to appeal.

Appeal Statistics

Analyzing a patent Examiner’s appeal statistics may be useful in determining whether to file an appeal or an RCE.  If the Examiner’s rate of allowance and/or re-opening of prosecution after appeal is high, it may be worth appealing rather than filing an RCE and avoid narrowing claims unnecessarily.

If the Examiner’s board decision success rate is high, it may be an indication that the Examiner goes to the Board only when he/she believes that an examiner’s answer would be particularly strong.  If you receive a compelling examiner’s answer from these types of Examiners, consider filing an RCE rather than going to the Board.

Conclusion

Just like how data analytics has improved efficiency in other industries, using examiner analytics can improve the efficiency of patent practitioners and the patent prosecution process.

Patent 300 Harrity Analytics

Harrity Patent Analytics Releases Patent 300™ Report

HARRITY PATENT ANALYTICS RELEASES PATENT 300™ REPORT

Report ranks and analyzes top 300 companies, organizations, and universities in the patent field

WASHINGTON (May 6, 2019) – Harrity Patent Analytics today released the publication of its inaugural Patent 300™ Report, the intellectual property industry’s premier resource for patent insights and competitive intelligence on the world’s leaders in technology. The report ranks and analyzes the top 300 companies, organizations and universities in the patent field, and contains more than 1,200 pages of patent portfolio analyses, detailed patent prosecution insights, technology area breakdowns, and portfolio cost and budget analytics.

The Patent 300™ Report provides in-house counsel, law firm partners, and c-suite executives with a detailed analysis of the world’s technology leaders, ranging from technology giants such as IBM (ranked #1) and Samsung (ranked #2), to leading universities such as MIT (ranked #114) and Johns Hopkins University (ranked #254), to newcomers including Uber (ranked #300) and GoPro (ranked #300).  The list represents 54 percent of the more than 300,000 U.S. patents issued in 2018.

“The Patent 300™ Report provides a wealth of information about the technology leaders obtaining patents in the United States,” said John Harrity, managing partner for Harrity & Harrity, the parent law firm of Harrity Patent Analytics. “The data contained in this report is invaluable information to companies, in-house counsel and law firms because it identifies the key players and summarizes what is happening today in the patent world.”

Key findings and trends from the Patent 300™ Report include:

  • 68.5 percent of Patent 300™ patents were in the electrical, software, and computer-related technologies, with 19 percent in mechanical, 9.1 percent in chemical, and 3.4 percent in biological technologies.
  • 122 of the Patent 300™ obtained patents in the semiconductor/memory technology area, making it the largest technology area at 8.8 percent of the Patent 300™.
  • Four of the top five companies had a decrease in the number of patents obtained in 2018 as compared to 2017.

A ranking of the top 300 companies, organizations and universities can be found here.

The full report is available to media upon request.

About Harrity Patent Analytics

Harrity Patent Analytics, an analytical team within the boutique IP law firm of Harrity & Harrity, LLP, uses cutting-edge capabilities to analyze patent data and extract insights for clients to use when making strategic decisions regarding patent portfolios. Patent 300™ companies rely on Harrity Patent Analytics services to understand their patent portfolios, the patent portfolios of their competitors, and patent office trends around the world. For more information, visit harrityllp.com/services/patent-analytics/.

 

Eli Mazour Harrity Team

Why the Revised 101 Guidance Continues to be Important After Cleveland Clinic

By Eli Mazour

After the 2014 Supreme Court Alice decision, the judges of the Federal Circuit failed to reach a meaningful consensus regarding how the subject matter eligibility test set out in Alice should be applied.  As a result, new USPTO Director Andrei Iancu recognized that there was no practical way for examiners to navigate all of the patent eligibility decisions for each individual patent application.  To address this problem, the USPTO released the “2019 Revised Patent Subject Matter Eligibility Guidance.”

In the recent Cleveland Clinic Foundation v. True Health Diagnostics decision, a panel of the Federal Circuit invalidated claims related to cardiovascular testing under § 101 and stated that “[w]hile we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance” (Fed. Cir. 2019).  The decision caused consternation among some practitioners regarding the value of relying on USPTO guidance.

Director Iancu’s comments regarding Cleveland Clinic

This past Thursday, at the ABA’s annual IP conference, Iancu addressed those concerns.  First, he pointed out that Cleveland Clinic did not even mention the 2019 revised guidance.  Instead, Cleveland Clinic discussed Example 29 from guidance that was published by the PTO on May 4, 2016, which is almost two years before Iancu became the director.  Second, Iancu noted that Cleveland Clinic just stated that to the extent that Example 29 contradicts a court decision, the court decision controls.  In other words, Cleveland Clinic pointed out facts that were clear before the 2019 revised guidance was even released: 1) courts are not bound by guidance released by the USPTO and 2) incorrect guidance released by the USPTO would not override previous court decisions.  Cleveland Clinic did not in any way directly undermine the 2019 revised guidance.

Moreover, Iancu indicated a change in approach by the USPTO: instead of reacting to each new Federal Circuit decision that deals with § 101, the USPTO is now taking a look at the § 101 issue holistically.  And, Iancu argued that the Federal Circuit should address the § 101 problem through en banc decisions by the full Federal Circuit.  In totality, this suggests that a single Federal Circuit decision by a panel of three judges is unlikely to significantly change the USPTO’s approach set out by the 2019 revised guidance.

Practical tips for drafting & prosecution

As it stands now, USPTO examiners and PTAB judges are expected to apply the 2019 revised guidance for § 101 analysis.  In fact, ex parte appeal decisions that deal with § 101 are currently being reviewed at the PTAB to make sure that the 2019 revised guidance is being applied by PTAB judges.  Therefore, in order to ensure efficient prosecution and positive appeal results, practitioners should primarily rely on the 2019 revised guidance to overcome § 101 rejections.

However, when drafting new patent applications, practitioners should plan for the possibility of the Federal Circuit, the Supreme Court, or even possibly Congress taking a narrower view of patent eligibility.  Therefore, to the extent possible, patent applications should be drafted with all of the relevant court decisions in mind.  The goal should be for an eventual patent to be able to withstand – or even better yet avoid – the most stringent § 101 scrutiny during litigation.

Harrity & Harrity Hosts Second Annual Women’s Workshop

WASHINGTON (April 9, 2019) – Harrity & Harrity, LLP will host its 2nd Annual Women’s Workshop, a professional development program designed to introduce more female law students and recent graduates to the practice of patent law.

The three-day program will take place May 20-22, 2019 and is open to science and engineering students, law school students, and recent graduates.

Topics covered during the program will include:

  • Prominent Guest Speakers (as outlined below)
  • Patent Law Introductory Training
  • Patent Preparation and Patent Prosecution Skills Training
  • Resume and Interview Preparation Workshops
  • Law School Career Mentoring
  • Attorney Career Mentoring
  • Patent Bar Preparation

“We are proud to offer this program to women interested in patent law,” said Harrity & Harrity Counsel Elaine Spector. “The event last year was so successful, thanks in large part to our amazing female speakers and mentors, that we knew we needed to offer it again. Hopefully initiatives like this will encourage more women to seek out intellectual property law as their area of practice.”

Those interested in participating in the program are invited to submit an application by April 30, 2019. Applications can be found here and should be supplemented with a personal statement expressing interest in pursuing a career in the patent field and a resume.

Guest Speakers:

Barbara A. Fisher is Assistant General Counsel, Intellectual Property and Technology Law for Lockheed Martin Corporation in Manassas, Virginia. Prior to joining Lockheed Martin, Fisher was Senior Intellectual Property Counsel at an international oil and gas corporation in Houston, Texas. Prior to her in-house experience, Fisher was a Partner in a mid-sized Virginia law firm where she was Manager of Client Development and chaired the Best Practices Committee.

Courtney Holohan is Accenture’s Chief Intellectual Property Counsel. Prior to beginning at Accenture in January 2012, Holohan litigated all types of high stakes intellectual property cases at Kirkland & Ellis LLP, where she was a partner.

Sophia M. Piliouras is President of MCCA’s Advisory Practice (“MAP”) at the Minority Corporate Counsel Association (MCCA) and partners closely with MCCA’s members in increasing the impact, effectiveness and sustainability of their organization’s D&I initiatives. Prior to joining MCCA, she was Vice President, Assistant General Counsel at JP Morgan Chase.

Cynthia Raposo has more than 30 years of legal experience working both as in-house and outside counsel. Her most recent position was Senior Vice President, Legal of Under Armour, Inc., in Baltimore, Maryland, where she built and lead the legal team from 2006 until her retirement in 2015.

Terry Rea is a partner and vice-chair of Crowell & Moring’s Intellectual Property Group and a director with C&M International (CMI), the international trade and investment consulting firm affiliated with Crowell & Moring. Rea is the former acting and deputy director of the United States Patent and Trademark Office (USPTO), as well as acting and deputy under secretary of commerce for intellectual property.

Ellen Smith started her legal career with Sughrue in 1997, and she provides extensive patent counseling for clients ranging from large multi-national corporations to small business ventures. Her counseling includes freedom-to-operate, infringement, and validity opinions. Ms. Smith’s dedicated experience in the patent space for over 15 years has provided her clients with respected strategic advice for developing and protecting their intellectual property portfolios, including developing strategies for establishing, protecting, preserving and enforcing those patent rights in the U.S. and abroad.

About Harrity & Harrity, LLP

Harrity & Harrity is the nation’s leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com/.

  • John Harrity Great Day Washington
  • John Harrity National Walking Day
  • Harrity 4 Charity National Walking Day

John Harrity appears on WUSA 9 “Great Day Washington” for National Walking Day

On Wednesday, April 3, 2019, Harrity & Harrity’s Managing Partner, John Harrity, joined the American Heart Association (AHA) of the Greater Washington Region for an appearance on WUSA 9 to talk about the importance of heart healthy activity in celebration of National Walking Day.  As a survivor of a recent “widow maker” heart attack in 2016, John’s personal story helps underscore the importance of including heart healthy activity in our every day lives, which is why the AHA Greater Washington Region invited him to join them for the National Walking Day event at Springfield Town Center and share his story.

We chose to include the AHA in our Harrity4Charity philanthropic initiative because of the impact that heart disease has on families across the globe. The AHA is the oldest and largest organization dedicated to fighting heart disease in the United States. Since 1924, the AHA has worked to educate policy makers, health care professionals, and the public to one day put an end to heart disease.

This year, we are proud to participate as the Presenting Sponsor of Lawyers Have Heart, a 5K run, 10K race, and fun walk that benefits the AHA. Now in its 28th year, Lawyers Have Heart has raised over $13 million for AHA and each year is one of the largest 10K races in the Washington, D.C. area. We’ll be running at the Washington Harbour on Saturday, June 8th, alongside John Harrity and hope you can join us and/or make a donation so we can meet our $40,000 fundraising goal for 2019.

 

Robin O Harrity Associate

Patent Lawyer Robin O Joins Harrity & Harrity

CHICAGO (March 27, 2019) – Harrity & Harrity, LLP is pleased to welcome Robin O to the firm as an associate. O is a patent lawyer who focuses on electrical and computer technologies, including telecommunications, computer hardware and software, telematics, data analytics, networking devices, medical devices, and business methods.

“Robin has the unique experience of having worked both in law firms and in-house,” said Harrity & Harrity Managing Partner John Harrity. “Having been involved in software and business method related inventions for much of his career, I am certain that our clients will benefit from Robin’s experience.”

Prior to joining Harrity & Harrity, O practiced in-house at Allstate Insurance Company. He started his legal career as a patent agent at Miller, Matthias & Hull. He earned his B.S. in Electrical Engineering from the University of Illinois at Urbana-Champaign and his J.D. from the Loyola University Chicago School of Law.

About Harrity & Harrity, LLP

Harrity & Harrity is the nation’s leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas and is considered a Go-To Firm for the Patent 300™. Our clients have come to trust in our high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com/.

https://soundcloud.com/clause-8/episode-10-makan-delrahim

Makan Delrahim – Clause 8 – Episode 10

DOJ’s Antitrust Chief, Makan Delrahim, shares insight and tips for companies on FTC divide and more in Latest Clause 8 Podcast from Eli Mazour.

The podcast was originally published by Corporate Counsel here.

Following this podcast, Law360 published an article explaining the debate between DoJ and USPTO regarding the DoJ’s correction on the Standard Essential Patent (SEP) policy. For more information, read the article here (subscription required).

  • Sandy Maxey Zero Cancer Summit 2019
  • Sandra Maxey at Zero Cancer Summit

Harrity 4 Charity Supports the ZERO Prostate Cancer Summit

Harrity & Harrity Controller Sandra Maxey attended the ZERO Prostate Cancer Summit, which was held February 24-26. ZERO, an organization focused on securing federal funding for prostate cancer research, hosted the three-day event for attendees to meet with survivors, patients, caregivers and family members who are committed to fighting prostate cancer.

By advocating for federal funding, ZERO hopes to help the hundreds of men and families impacted by this disease. Now more than ever, it is critical to preserve and advance cancer research, patient care and access to affordable health care.

The stories from survivors at ZERO made an impact. “Hearing from people who have fought and won the battle against this disease inspires us to keep pushing forward by raising awareness, speaking out, and finding a cure,” said Ms. Maxey. “We need to keep pressure on Capitol Hill to provide the much-needed funding and policies that will eliminate prostate cancer.”

For more information on the ZERO Prostate Cancer Summit, please visit their website here.

To learn more about Harrity 4 Charity, please visit our page here.

Harrity Diversity Hands

Harrity & Harrity Releases 2018/2019 Annual Diversity Report

WASHINGTON (February 27, 2019) – Harrity & Harrity, LLP is pleased to announce the publication of its annual diversity report. The 2018/2019 report highlights the firm’s successes in the past year with regards to diversity in the patent law field.

“2018 was a banner year for hiring at our firm,” said John Harrity, the managing partner at Harrity and head of the diversity committee. “Our diversity committee oversaw the hiring and training of our third annual diversity fellow, So Ra Ko, who I am pleased to announce will be joining our firm full time after she finishes law school this coming Spring. To supplement our efforts at recruiting the next generation of diverse attorneys, we have implemented what we like to call, ‘The Rooney Rule 2.0,’ a hiring policy where we are committed to interviewing a female or minority candidate for every male, non-minority candidate we interview for any position at our firm.”

Harrity’s commitment to diversity is evidenced by their one-of-a-kind “Rooney Rule 2.0”, and the upcoming Harrity Minority Firm Incubator.  For more information about Harrity’s diversity commitment, visit harrityllp.com/diversity

The 2018/2019 report is available here https://harrityllp.com/wp-content/uploads/2019/05/2018-2019-Harrity-Annual-Diversity-Report.pdf.

About Harrity & Harrity, LLP

Harrity & Harrity is the nation’s leading patent preparation and prosecution firm specializing in the electrical and mechanical technology areas, and is considered a Go-To Firm for the Patent 300™.  Their clients trust in their high-quality work, experienced people, industry leading innovation, and outstanding service. For more information, visit harrityllp.com/.

Download full press release HERE.

Harrity Patent Analytics Releases 2018 Top Patent Firms List

WASHINGTON (February 21, 2019) – Harrity Patent Analytics is pleased to announce the publication of its annual list of top patent law firms. The 2018 edition of “Top Patent Firms” ranks the top patent law firms based on the total number of U.S. utility patents issued in 2018.

“In 2018, more than 300,000 patents were obtained by over 2,000 different law firms,” said Paul Harrity, a partner at Harrity & Harrity, the parent law firm of Harrity Patent Analytics. “Our goal is to raise awareness of the top law firms handling patent work in the U.S., and recognize the professionals that play a vital role in protecting intellectual property.”

Top Patent Firms only names patent firms that have obtained at least 50 utility patents where the patent firms are listed on the front of the utility patents. Company legal departments are not eliminated during data analysis.

The 2018 list is comprised of 722 total law firms. The full list is available here  https://harrityllp.com/services/patent-analytics/top-patent-firms-2018/.

About Harrity Patent Analytics

Harrity Patent Analytics, an analytical team within the boutique IP law firm of Harrity & Harrity, LLP, uses cutting-edge capabilities to analyze patent data and extract insights for clients to use when making strategic decisions regarding patent portfolios. Patent 300™ companies rely on Harrity Patent Analytics services to understand their patent portfolios, the patent portfolios of their competitors, and patent office trends around the world. For more information, visit harrityllp.com/services/patent-analytics/.

Download full press release HERE.

https://soundcloud.com/clause-8/episode-8-aaron-cooper

Aaron Cooper – Clause 8 – Episode 8

Check out the new Clause 8 interview about the passage of the American Invents Act (AIA) and how to effectively influence IP policy. Eli Mazour talks to Aaron Cooper, who served as Chief IP Counsel on the Senate Judiciary Committee and is now head of global policy at BSA | The Software Alliance.

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

Harrity Blog

In-depth Summary of USPTO Revised Guidance on Subject Matter Eligibility

By Tim Hirzel

The PTO released their highly anticipated revised guidance on subject matter eligibility that take effect on January 7, 2019.[1]  Below, we discuss the changes to the subject matter eligibility analysis made by the revised guidance and how Applicants may address these changes in practice.

Summary of Revised Guidance

The revised guidance maintains the two step Alice/Mayo Test but revises the procedure for determining whether a claim is directed to a judicial exception (e.g., an abstract idea) under Step 2A.  Previously, the PTO guidelines (wrongly) equated a claim merely “reciting” an abstract idea with a claim being “directed to” the abstract idea under Step 2A.  The PTO has replaced this approach with a new two prong analysis.

In the first prong of Step 2A, Examiners evaluate whether a claim recites an abstract idea.  The first prong is similar to the previous approach with one important change.  Previously, Examiners were to describe the subject matter claimed and identify whether the subject matter had previously been found to be directed to an abstract idea by the courts.  The PTO found this approach impractical due to the ever-increasing number of court decisions and rightly noted that it has been difficult for Examiners to apply this approach in a predictable manner, especially between different technology centers.

Instead of this case law specific approach, the PTO newly identified three groups of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes.  Examiners must now a) identify specific limitations in the claims believed to be an abstract idea, and b) determine whether the identified limitations fall within any of the three newly identified groups.  If the identified limitations fall within the three groups of abstract ideas, the analysis proceeds to the second prong of Step 2A.

In the second prong of Step 2A, Examiners evaluate whether the claim as a whole integrates the abstract idea into a practical application.  The million-dollar question then becomes what is a practical application?  The PTO broadly answers this question by stating “[a] claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception.”  The PTO also gives several examples based on case law that indicate an additional element or combination of elements may have integrated an exception into a practical application, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.

The PTO acknowledges that these examples and the second prong of step 2A overlap considerations that the courts and the PTO’s guidance consider under Step 2B but feels that this new approach will increase certainty and reliability.  For clarity, the PTO reiterated that merely using a computer as a tool to perform the abstract idea, adding insignificant extra-solution activity, or generally linking the abstract idea to a technical field will still not be enough to establish a practical application and patent eligibility.  If the claim does not integrate the abstract idea into a practical application, then the claim is directed to an abstract idea under Step 2A and the analysis proceeds to Step 2B.

Step 2B has not been changed under the revised guidance and Examiners are still to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea.  However, the incorporation of several Step 2B considerations into the second prong of Step 2A limits how much additional analysis the Examiner needs to apply in Step 2B.  Importantly, whether the additional elements are well-understood, routine, conventional activity is not evaluated under the second prong of Step 2A and is unrelated to whether the claim integrates the abstract idea into a practical application.  This evaluation is still done in Step 2B pursuant to the Berkheimer memo[2] to determine whether the additional element or combination of elements adds limitations that are not well-understood, routine, conventional activity in the field which is indicative that an inventive concept may be present.

Our Impressions

The new two prong approach to Step 2A should make it easier to work with Examiners, especially during interviews, to overcome 101 rejections.  Under the prior guidance, Examiners would often dismiss any Step 2A arguments because their guidelines simply said a claim was directed to an abstract idea if any part of the claim recited an abstract idea.  This made it very easy for Examiners to establish the claims were directed to an abstract idea without much analysis.  The revised guidelines will make it much more difficult for the Examiner to simply dismiss an Applicant’s Step 2A arguments.

Equally as frustrating was Examiners misapplying case law when attempting to identify a decision that found subject matter, similar to the claims, to be directed to an abstract idea.  Applicants should be able to avoid the necessity of debating case law cited by Examiners (which was rarely an effective manner of overcoming a 101 rejection anyway) because the Examiners are not required to cite specific decisions in their rejections anymore and merely must identify one of the three newly defined groups of abstract ideas.

Instead, Applicants can now focus on the newly articulated “practical application” consideration in the second prong of Step 2A.  While the examples of practical applications given in the revised guidelines are nothing new and come straight from case law Applicants should have already been using to overcome 101 rejections, the examples were not always given much weight by the Examiners or simply dismissed nominally in Step 2B.  The revised guidelines’ focus on the “practical application” consideration and the given examples may make it easier to use these examples to effectively overcome the 101 rejections (without necessarily having to argue the case law behind the examples).

Moreover, the PTO broadly describing the case law as establishing a “practical application” consideration gives Applicants more leeway than relying on specific court decisions as done in the past.  For example, it may be easier to convince an Examiner on a technical level that claims “apply, rely on, or use the judicial exception” in a meaningful manner than to convince the Examiner that claims are similar to subject matter previously held by the courts to be directed to statutory subject matter.  However, Applicants must be mindful that the goal is not simply to get patent applications allowed by satisfying the PTO’s revised guidelines, but to have claims that are statutory as supported by case law and that can withstand the 101 analysis performed by the courts.

Any noticeable change in examination will depend heavily on how Examiners are trained to implement the new guidance.  Accordingly, it may be months before we fully realize how significant the changes will be to 101 rejections in practice.

[1] 2019 Revised Patent Subject Matter Eligibility Guidance

[2] Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc.

For a shorter summary of the above, visit here.

Tim Hirzel Harrity Team

Summary of USPTO Revised Guidance on Subject Matter Eligibility

By Tim Hirzel

The PTO released their highly anticipated revised guidance on subject matter eligibility that take effect on January 7, 2019.  A summary of the guidance is provided below.  A more in-depth discussion can be found on our website HERE.

Summary of Revised Guidance

The revised guidance maintains the two step Alice/Mayo Test but revises the procedure for determining whether a claim is directed to a judicial exception (e.g., an abstract idea) under Step 2A by instituting a two-prong analysis.

  1. First prong of Step 2A – Examiners evaluate whether a claim recites an abstract idea.  Instead of a case law specific approach as previously performed, the PTO newly identified three groups of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes.  If any recited claim limitations fall within the three groups of abstract ideas, the analysis proceeds to the second prong of Step 2A.
  2. Second prong of Step 2A – Examiners evaluate whether the claim as a whole integrates the abstract idea into a practical application. A practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception.  The PTO gives examples based on case law that indicate practical applications, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.  If the claim does not integrate the abstract idea into a practical application, then the claim is directed to an abstract idea under Step 2A and the analysis proceeds to Step 2B.

Step 2B has not changed under the revised guidance and is still performed pursuant to the Berkheimer memo.

Our Impressions

  1. Under the prior guidance, Examiners would often dismiss any Step 2A arguments because their guidelines simply said a claim was directed to an abstract idea if any part of the claim recited an abstract idea.  The two-prong approach will make it much more difficult for Examiners to simply dismiss an Applicant’s Step 2A arguments.
  2. Applicants should now be able to avoid the necessity of debating case law with Examiners because the Examiners are not required to cite specific decisions in their rejections and only have to identify one of the three newly defined groups of abstract ideas. Instead, Applicants can now focus on the newly articulated “practical application” consideration in the second prong of Step 2A.
  3. While the examples of practical applications given in the revised guidelines are nothing new, the revised guidelines’ focus on the “practical application” consideration may make it easier to use these examples to effectively overcome the 101 rejections (without necessarily having to argue the case law behind the examples).
  4. The PTO broadly describing the case law as establishing a “practical application” consideration gives Applicants more leeway than relying on specific court decisions as done in the past.  For example, it may be easier to convince an Examiner on a technical level that claims “apply, rely on, or use the judicial exception” in a meaningful manner than to convince the Examiner that claims are similar to subject matter previously held by the courts to be directed to statutory subject matter.
  5. Any noticeable change in examination will depend heavily on how Examiners are trained to implement the new guidance.  Accordingly, it may be months before we fully realize how significant the changes will be to 101 rejections in practice.
Harrity Diversity Fellowship

2019 Harrity Diversity Fellowship – Applications Open!

The Harrity Diversity Fellowship is an integral part of the firm’s ongoing diversity initiative to recruit, retain, and advance attorneys who will contribute to the diversity of the firm’s practice.

The Harrity Diversity Fellowship is comprised of three parts:

• A paid summer associate clerkship position at Harrity during the summer;
• Mentoring throughout the year by our firm’s attorneys; and
• A $10,000 scholarship – Harrity & Harrity will award $5,000 to all Diversity Fellowship recipients upon completion of their summer associate clerkship with the firm; and award an additional $5,000 to those who join our firm as an associate, after receiving and accepting an associate offer with our firm following the completion of their following summer clerkship with us.

Eligibility Requirements:
Candidates must be in good standing as a law student at an ABA-accredited law school; demonstrate a record of academic and professional achievement; contribute meaningfully to the diversity of our firm and legal community; and have a sincere interest in our firm and our practice area.

Mentoring:
Each recipient will be assigned an attorney mentor. Mentors will serve as a liaison between the student and our firm, and facilitate the student’s professional growth and learning. The mentoring relationship begins as soon as the recipients have been named and continues at least through the academic year. Students will meet with their mentors multiple times per year, in person when possible. Should the student receive and accept an offer to return for a second summer, the mentoring relationship would continue for another academic year.

Scholarship:
A grant of $5,000 will be awarded in September of the recipient’s following year of law school. The grant can be used for expenses at the student’s discretion. An additional $5,000 will be offered to those who receive and accept an associate offer with our firm after the completion of their summer clerkship with us.

Fellowship Application Process:
Applications will be accepted from December 1, 2018 through February 28, 2019.

To apply, please visit https://harrityllp.com/diversity/diversity-fellowship/ and click on the “Start Your Application Today!”.

Harrity 4 Charity Makes Donation to Zero: The End of Prostate Cancer on Giving Tuesday 2019

On Giving Tuesday 2019, our own Sandra Maxey paid a visit to Zero: The End of Prostate Cancer to make our 2019 Harrity 4 Charity donation.

To learn more about this worthy organization, please visit their website HERE.

To learn more about Harrity 4 Charity, please visit our website HERE.

Elaine Spector, Harrity Team

“Gender Pay Gaps” white paper published by “Push Forward” IPO Subcommittee

Elaine Spector, as a part of “Push Forward”, a subcommittee of the Intellectual Property Owners Association (IPO) Women in IP Committee, helped with a white paper called “Gender Pay Gaps” last month in the IPO Law Journal.

Get full access here: https://bit.ly/2BHWh4p

https://soundcloud.com/clause-8/episode-7-tariq-hafiz

Tariq Hafiz – Clause 8 – Episode 7

A must-listen episode of Clause 8 for anyone interested in patent prosecution.  Eli Mazour talks to Tariq Hafiz – USPTO Director of Technology Center 3600 Business Methods – about his career at the USPTO, soon to be released 101 guidance, overlooked strategies for effectively dealing with examiners and their Supervisors, and many other subjects. 

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

Jonathan Goodman Joins Harrity

We’re excited to announce Jonathan Goodman has joined our team as an Associate! Jonathan’s practice focuses on patent preparation and prosecution. He has worked with a wide range of technologies including computer software, Internet applications, e-commerce, recommender systems, business methods, financial technologies, industrial control systems, consumer goods, pharmaceuticals, and medical devices.

Jonathan earned his B.S. in Industrial & Systems Engineering from the University Florida, J.D. from the University of Miami School of Law and his LL.M. in Intellectual Property from Cardozo School of Law.

To learn more about Jonathan and the rest of our team, please visit our TEAM page.

Harrity 4 Charity

Care Bags for INOVA Fairfax Hospital

On November 15, 2018, the Harrity team put together 250 care bags for INOVA Fairfax Hospital. These bags will go to those individuals that find themselves unexpectedly in the hospital supporting a loved one in the Cardiac Care Unit.

We do this each year in support of our partner, John Harrity, who survived a widow maker heart attack two years ago.

To learn more visit the Harrity 4 Charity website.

Kenneth Hartmann Harrity Team

Case Summary of Data Engine Technologies LLC v. Google LLC

By Ken Hartmann

Data Engine Technologies LLC v. Google LLC, 2017-1135 (Fed. Cir. Oct. 9, 2018) is an appeal from the district court for the District of Delaware (No. 1:14-cv-01115-LPS).  The district court held that the asserted claims of Data Engine Technologies’ (DET) US patents are ineligible under 35 USC §101.  This decision was based on finding that the asserted claims are directed to abstract ideas and fail to provide an inventive concept.

The patents at issue are U.S. Patent Nos. are 5,590,259; 5,784,545; 6,282,551; and 5,303,146.  The first three patents (referred to herein as “the Tab Patents”) are directed to electronic spreadsheets with tabs used to identify the spreadsheets and navigate between the spreadsheets.  The fourth patent (referred to herein as “the ‘146 patent”) is directed to identifying changes to spreadsheets.  This case law study analyzes the decision made by the court regarding the Tab Patents.

The Tab Patents are titled “Systems and Methods for Improved Spreadsheet Interface With User-Familiar Objects” and share a substantially common specification.  The Tab Patents describe a three-dimensional, electronic spreadsheet:

that includes a number of tabs to navigate through different two-dimensional matrices of the spreadsheet:

where each of the tabs include identifiers that enable access to information on the respective spreadsheets.

The Tab Patents describe the tabs as familiar, user-friendly interface objects to navigate through spreadsheets while circumventing arduous process of searching for, memorizing, and entering complex commands.  Accordingly, the Tab Patents present the tabs as a solution to problems that users had 25 years ago when navigating through complex spreadsheets, finding commands associated with the spreadsheets, manipulating the spreadsheets, etc.  Several articles associated with Quattro Pro (the commercial embodiment based on the claimed method and systems) were published that touted the usefulness of the technology in the Tab Patents.

DET filed suit against Google, asserting claims from the Tab Patents.  The district court considered claim 12 of the ‘259 patent as representative of all asserted claims of the Tab Patents.  Claim 12 of the ‘259 patent included the following features:

while displaying [a] first spreadsheet page, displaying a row of spreadsheet page identifiers along one side of said first spreadsheet page, each said spreadsheet page identifier being displayed as an image of a notebook tab on said screen display and indicating a single respective spreadsheet page, wherein at least one spreadsheet page identifier of said displayed row of spreadsheet page identifiers comprises at least one user-settable identifying character.

Google filed a motion for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), arguing that the asserted claims of the Tab Patents are directed to patent-ineligible subject matter under § 101.  The district court granted the motion with respect to the Tab Patents, concluding that representative claim 12 is “directed to the abstract idea of using notebook-type tabs to label and organize spreadsheets” and that claim 12 “is directed to an abstract idea that humans have commonly performed entirely in their minds, with the aid of columnar pads and writing instruments.”  Further, the district court did not find that any features of claim 12 recited an inventive concept.

On appeal, the Court of Appeals for the Federal Circuit (the Court) analyzed whether the Tab Patents are patent eligible under §101 according to the two-step test of Alice Corp. v. CLS Bank International (“the Alice test).   In performing this analysis, the Court performed a de novo review of the Tab Patents and the evidence (including the articles about Quattro Pro) submitted to the district court.

The Court disagreed with Google, except with respect to claim 1 of the ‘551 patent.  Claim 1 of the ‘551 patent recites:

In an electronic spreadsheet for processing alphanumeric information, said […] electronic spreadsheet comprising a three-dimensional spreadsheet operative in a digital computer and including a plurality of cells for entering data and formulas, a method for organizing the three-dimensional spreadsheet comprising:

partitioning said plurality of cells into a plurality of two-dimensional cell matrices so that each of the two-dimensional cell matrices can be presented to a user as a spreadsheet page;

associating each of the cell matrices with a user-settable page identifier which serves as a unique identifier for said each cell matrix;

creating in a first cell of a first page at least one formula referencing a second cell of a second page said formula including the user-settable page identifier for the second page; and

storing said first and second pages of the plurality of cell matrices such that they appear to the user as being stored within a single file.

Note that claim 1 of the ‘551 patent does not include an “implementation of a notebook tab interface” as recited in representative claim 12 of the ‘259 patent.

In disagreeing with the district court and Google on representative claim 12 (and the remaining claims of the Tab Patents other than claim 1 of the ‘551 patent), the Court determined that claim 12 recites “a specific structure (i.e., notebook tabs) within a particular spreadsheet display that performs a specific function (i.e., navigating within a three-dimensional spreadsheet).”  The Court asserted that claim 12 claims a particular manner of navigating three-dimensional spreadsheets, implementing an improvement in electronic spreadsheet functionality.  The Court frequently referred to the benefits described in the specification with respect to navigating through the spreadsheets.  For example, the Court identified that claim 12 recited a structure that enables a user to avoid “the burdensome task of navigating through spreadsheets in separate windows using arbitrary commands.”

Further, the Court rejected Google’s notion that the claims merely cite “long-used tabs to organize information” and that such tabs are common in physical notebooks, binders, file folders, etc.  The Court stated that it is not enough to simply point to a real-world analogy of the electronic spreadsheet because eligibility is not based on such concerns.  Notably, the court acknowledged that those concerns are reserved for §102 and §103.  As such, the Court determined that claim 12 was not directed to an abstract idea, and thus was patent eligible according to step 1 of the Alice test.

On the other hand, during review of claim 1 of the ‘551 patent, the Court concluded, under step 1 of Alice test, that the above claim is directed to the abstract idea of “identifying and storing electronic spreadsheets.”  As mentioned above, claim 1 does not recite the notebook tab structure, but simply “associating each of the cell matrices with a user-settable page identifier which serves as a unique identifier for said each cell matrix.”  The Court concluded that claim 1 of the ‘551 patent does not recite the specific implementation of a notebook tab interface.  Furthermore, the Court concluded under step 2 of the Alice test that the additional features did not provide an inventive concept as the claim merely recites “partitioning cells to be presented as a spreadsheet, referencing in one cell of a page a formula referencing a second page, and saving the pages such that they appear as being stored as one file.”

This case provides a few practice insights for practitioners with a noticeable compare/contrast result between claim 12 of the ‘259 patent and claim 1 of the ‘551 patent.  First of all, it is important to identify any functionality that a particular feature of a claim may have.  Though an “identifier” may “identify,” such a feature is considered abstract.  The identifier in the Tab Patents included the function of enabling navigation between the tabs and reference to other information in spreadsheets associated with the tabs.  Including that functionality likely would have swayed the court to find the ‘551 patent eligible as well.  Additionally, the Court frequently referred to the benefits of the tabs.  These benefits included removing burdens on the user.  As such, it obviously would not hurt to acknowledge such benefits when preparing patent applications.  Best practices would also involve including and/or discussing any technical benefits that the tabs may have provided.  For example, among other technical benefits, the tabs may have conserved processing resources associated with navigating to other spreadsheets by enabling a single click of the tab, rather than navigating multiple clicks through menus and/or windows to reach other spreadsheets.

Download Data Engine Technologies LLC v. Google LLC

Elaine Spector, Harrity Team

Elaine Spector on the 2018 AIPLA Annual Meeting and the Women in IP Law Breakfast

By Elaine Spector

The 2018 AIPLA Annual Meeting was held on October 25-27 in Washington, DC, and included the gathering of more than 2,000 diverse professionals in the field of intellectual property.  In addition to the numerous networking opportunities and education sessions, committees within the AIPLA conducted their committee meetings.

Perhaps the most enjoyable of these committee meetings was the Women in IP Law Breakfast meeting.  Despite being held on Friday morning of the conference at 6:45 AM, attendance was certainly impressive.  The full buffet breakfast helped!  But the breakfast is not the only reason we have seen such a surge in attendance.  The leadership of the Women in IP committee is forward thinking and inclusive.  What used to be a small breakfast, has turned out to be one of the most well attended sessions at the AIPLA, likely because of the programming and inclusiveness it provides.  By the way, men are invited too!

During the meeting, we discussed numerous committee issues.  But the one most dear to my heart is the AIPLA Women in IP Global Networking Event which I co-chair with Lucy Samuels.  The Global Networking Event is scheduled for April 4, 2019, of which my firm, Harrity & Harrity, is a proud sponsor in Northern, Virginia.  The Global Networking Event consists of a plurality of events held on the same day in various cities around the world. The hosts are responsible for choosing their type of event, sending out invitations to female AIPLA members in their area (the AIPLA provides a list), and of course inviting anyone else they would like. Each host event can include any activity the host would like such as a cocktail reception, dinner, guest speaker, or panel discussion etc. Each host is asked to join a brief teleconference call to connect and say hello to other hosts in different locations.  It is a wonderful event, and I strongly encourage women IP professionals to attend, or host in your area.

Please contact me if you are interested in attending in Northern Virginia, or if you would like to host in another area.

Harrity Blog

Colleen Chien at the Federal Trade Commission

Peter B. Glaser, William Gvoth and Rocky Berndsen prepared data used in Colleen Chien’s Federal Trade Commission presentation on Emerging Trends in Patent Litigation. Her team analyzed patent applications and complaints following patent reform. She came to us for information after reading Peter and Will’s article on Changes in Patent Language to Ensure Eligibility Under Alice.

Find Colleen’s full October 24th presentation here https://competition-consumer-protection-hearings.videoshowcase.net/october-24-hearing-part-2

Nathan Phares Harrity Team

Nathan Phares Hosts Drafting Webinar for Law Students

On October 20th, Nathan Phares hosted a free application drafting webinar for law students we met through Loyola’s Patent Law Interview Program event in July. The webinar provided a comprehensive process for drafting a high-quality parent efficiently and consistently.

Make sure to look for us next year at the Loyola Patent Law Interview Program in Chicago to learn more about these unique opportunities!

Ted Nissly, Harrity Team

Case Summary of Natural Alternatives v. Andrei Iancu

By Ted Nissly
October 17, 2018- Case Summary of Natural Alternatives v. Andrei Iancu

On October 1, 2018, the Federal Circuit issued an opinion regarding the removal of a priority claim in an application, of a chain of applications, and its detrimental effect on the priority claims of pending and subsequently filed applications in the chain.  In Natural Alternatives International v. Andrei Iancu, No. 2017-1962 (Fed. Cir. Oct. 1, 2018), the court affirmed the Patent Trial and Appeal Board’s (“PTAB”) final determination in an inter partes reexamination affirming an examiner’s rejection of the challenged claims of U.S. Patent No. 8,067,381 (“the ’381 patent”) as anticipated by or obvious over cited prior art, including a parent of the ’381 patent, because the ’381 patent could not claim priority to the parent.

Natural Alternatives International (NAI) filed a chain of eight U.S. patent applications between 1997 and 2011.  NAI filed the first application on August 12, 1997 and included a priority benefit statement under 35 U.S.C. § 120 to the first application in each subsequent patent application of the chain.  On April 10, 2003, NAI filed a provisional application while the fourth application in the chain was still pending.  On November 18, 2003, NAI filed the fifth application as a continuation-in-part of the fourth application.  The fifth application claimed priority to the first through fourth applications and the provisional application.  On August 29, 2008, NAI filed a sixth application that claimed priority to the first through fifth applications and the provisional application.  The court noted that at the time NAI filed the sixth application, the fifth application and the sixth application correctly claimed priority to the August 12, 1997 filing date of the first application.

On September 2, 2008, four days after filing the sixth application, NAI amended the benefit claim of the fifth application to claim priority under 35 U.S.C. § 119(e) to only the provisional application as an attempt to extend the potential patent term of the fifth application.  NAI subsequently filed the seventh and eighth patent applications that claimed priority to the first through fifth applications and the provisional application.  The eighth patent application issued as the ’381 patent on November 29, 2011.

In December 2011, NAI and Woodbolt Distributors (“Woodbolt”) became involved in litigation concerning the ’381 patent.  In May 2012, Woodbolt sought inter partes reexamination of the asserted claims of the ’381 patent.  Woodbolt’s request alleged that “the asserted claim to priority of the ’381 patent is defective” because NAI “deliberately and expressly terminated [its] claim to the priority of the first four applications[,]” which thus “broke[] the chain of priority between” the fourth and fifth applications.  NAI did not dispute that it had waived priority to the first through fourth applications when it amended the fifth application, but rather argued that the sixth application maintained priority to the first application because the sixth application’s priority claim was never amended.  Accordingly, NAI maintained that the sixth application became entitled to the first application’s filing date before it amended the fifth application.  The examiner rejected the asserted claims of the ’381 patent in view of prior art that included U.S. Patent No. 5,965,596 (i.e., the patent that issued from the first application.)

NAI appealed the examiner’s decision to the PTAB, which affirmed the examiner’s rejection.  The PTAB determined that because NAI deleted the claim of priority to the fourth application in the fifth application and the eighth application claimed priority to the first application via the fifth application, the eighth application was not entitled to the priority claims of the fourth through first applications.  NAI appealed the PTAB’s priority determination to the Federal Circuit.

APPLICATION CHAIN

Application Chain for Natural Alternatives v. Andrei Iancu

On appeal, NAI asserted four arguments: (1) that priority to the first application “vested” with the sixth application once the sixth application satisfied the criteria of 35 U.S.C. § 120; (2) waiver of priority in an application is limited to the instant application (i.e. that application with the amended priority claim) and does not extend to subsequent applications; (3) priority is not a single growing chain, but rather multiple fixed chains; and (4) the PTAB’s view on priority limits an applicant’s ability to amend a priority claim to gain patent term.

Regarding NAI’s first argument, the court explained that a patent application is “not entitled to an earlier priority date merely because the patentee claims priority,” but rather “the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.” citing In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011) (emphasis in opinion).  The court also noted that its decision in In re Janssen Biotech, 880 F.3d 1315 (Fed. Cir. 2018) was instructive.  In that case, where an applicant attempted to delete a priority claim of an application during reexamination, the court explained that amending the priority claim of an earlier-filed parent application may affect the priority of its child applications.  Accordingly, the court here found that the PTAB “did not err in determining that the ’381 patent was not entitled to claim the benefit of the filing date of the first application under § 120, as the priority claim in the ’381 patent was defective from the start.”

Regarding NAI’s second argument, NAI averred that under Manual of Patent Examining Procedure (MPEP) § 201.11, altering a claim of priority “applies only to the instant application—not other, … applications.”  The court noted, however, that the MPEP “does not have the force of law.” citing Molins PLC v. Textron, Inc., 48 F.3d 1172, 1180 n.10 (Fed. Cir. 1995).  Regardless, the court rejected NAI’s second argument because the text of MPEP § 201.11 does not limit “the scope of waiver to only the instant application.” (emphasis in opinion).  Regarding NAI’s third argument, the court cited the Supreme Court’s decision in Godfrey v. Eames, 68 U.S. 317, 326 (1863), which held that “parent and continuing applications ‘are to be considered as parts of the same transaction, and both as constituting one continuous application” to support the court’s finding that priority is “a single chain, growing with each additional continuation.”

Regarding NAI’s fourth argument, the court noted a natural trade-off exists between priority and patent term.  The court explained that an “uncommon but permissible way for patent applicants to avoid losing term [for a patent application] . . . is to disclaim the benefit of earlier filing dates” which in turn makes the patent application’s “children become vulnerable to rejections based on a larger pool of prior art—including former parent applications in some cases.”  The court therefore rejected NAI’s attempt to gain patent term for the fifth application while maintaining the priority claims of its children.  Accordingly, the court affirmed the PTAB’s final decision invalidating the challenged claims of the ’381 patent.

This case highlights some potential pitfalls to consider when deciding whether to amend a patent application’s priority claim.  A practitioner may understand the limiting effect the amendment has on the priority of the amended patent application, but she must also keep in mind that the amendment may irreversibly limit the priority of any child application of the amended patent application too.  To ensure that a priority claim is not lost, the practitioner should consider maintaining the priority claim in currently pending applications, especially applications with pending child applications, and filing a new continuation and/or continuation-in-part with a different priority claim.  In this way, the claim of priority can be protected for the chain of currently pending patent applications and a longer patent term can be pursued for the new application.

Download Natural Alternatives v. Andrei Iancu

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Harrity Race Against Heart Disease – 2018

The Harrity Race Against Heart Disease on October 14th was a huge success! Thank you to everyone who came out and supported us and helped us raise money for the American Heart Association! 

We would also like to thank our sponsors who helped make this race possible. Thank you to Construction Group Systems, Inc, Glory Days Grill, iLoveKickboxing.comPatentprufer, Spector Law Group, Pure Barre- Leesburg, Patricia Barta and IKNEADIT, LLC! 

Visit the Harrity Race page on our website for more information, and stay tuned for announcements regarding next year’s race.

https://soundcloud.com/clause-8/episode-6-representative-henry

Henry Waxman – Clause 8 – Episode 6

In the latest episode of Clause 8, Eli Mazour talks to legendary Congressman Henry Waxman about the passage of the Hatch-Waxman Act, current proposals to deal with the impact of new PTAB proceedings on pharma patents, effectively influencing IP policy in DC, and many other subjects.

Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.

Jafar Ali Harrity Team

Jafar Ali Joins Harrity

We’re excited to announce Jafar Ali has joined our team as counsel! Jafar’s practice primarily consists of preparing and prosecuting new patent applications. He has substantial technical expertise in many computer and electrical arts areas.  

Jafar earned his B.S. in Computer Science from the University of Maryland, and his J.D. from George Mason University.  

To learn more about Jafar and the rest of our team, visit our Team page.

Steven Underwood Harrity Team

Steven Underwood Joins Harrity

We’re excited to announce Steven Underwood has joined our team as Counsel! Steven’s practice focuses on patent preparation and prosecution. He has worked with a wide range of technologies including, electrical, software, and mechanical inventions.  

Steven earned his B.S. in Mathematics, M.S. in Mathematics, and Ph.D. in Applied Mathematics from the University of Alabama at Birmingham. He earned his J.D. from the University of Pennsylvania.  

To learn more about Steven and the rest of our team, visit our Team page.

 

William Gvoth Harrity Team

Case Summary of GoPro, Inc. v. Contour IP Holding LLC

By William Gvoth
September 27, 2018- Case Summary of GoPro, Inc. v. Contour IP Holding LLC

GoPro, Inc. v. Contour IP Holding LLC, 2017-1894, 2017-1936 (Fed. Cir. July 27, 2018) (“GoPro”) is an appeal from the Patent Trial and Appeal Board (PTAB) (Nos. IPR2015-01078, IPR2015-01080). At the PTAB, GoPro, Inc. challenged two patents owned by Contour IP Holding LLC as obvious in light of a GoPro catalog that GoPro distributed at a trade show in July of 2009. The PTAB found against GoPro, Inc. in the challenge. This decision was based on finding that the GoPro catalog was not prior art for the claims of the patents owned by Contour IP Holding LLC.

The patents at issue are U.S. Patent Nos. 8,890,954 (the ‘954 patent) and 8,896,694 (the ‘694 patent), which have a common specification. The common specification of these patents generally describe video cameras or camcorders that can be controlled remotely (e.g., for remote image capture and/or viewing). Specifically, these patents claim use of global positioning system (GPS) technology to track a location of a camera and/or a camcorder during use and further describe use a wireless connection to facilitate remote control of the camera and/or the camcorder. The common specification of these patents further describe that the claimed device can be deployed in areas that do not permit easy use by an individual, such as in a sports scenario. Both patents claim priority to a provisional application filed on September 13, 2010, resulting in a one year prior art date of September 13, 2009.

In July of 2009, GoPro, Inc. attended the Tucker Rocky Dealer Show (the trade show) hosted by Tucker Rocky Distributing, a trade organization related to off-road, all-terrain-type vehicles and related products (e.g., snowmobiles, ATVs, etc.). The trade show was attended by numerous dealers and there were over 1000 attendees, including some potentially interested in video cameras and/or camcorders. There was no evidence presented to the PTAB that the 2009 trade show was advertised to the public, nor was the trade show open to the public. At the trade show, GoPro, Inc. distributed copies of its catalog for its HD Motorsports HERO camera. The catalog described the camera as a “1080p [high-definition (HD)] wearable camera [with] optional wireless remote with an omni-directional range of 30 feet.” In addition, the catalog included several images of the camera and wireless remote, including an image showing attachment of the camera to a helmet (specifically a motocross/ATV-type helmet).

In analyzing the evidence presented, the PTAB determined that a bachelor’s degree in computer science, electrical engineering, and/or the like and experience with video cameras and/or cameras (e.g., creating, programming, etc.) constituted the ordinary skill in the art. Next the PTAB determined that the GoPro, Inc. catalog was not a prior art printed publication by applying Blue Calypso v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016). In making this determination, the PTAB found that the trade show at which the GoPro catalog was distributed was not advertised or announced to the public, such that a person of ordinary skill in the art would have known about it, and in addition, the trade show was not publicly accessible and was only open to members of the Tucker Rocky Distributing trade organization. Essentially, the PTAB failed to see how the general public would have obtained the GoPro catalog from the trade show, especially in light of the fact that the trade show was closed to the general public and was for dealers only. Further, the PTAB did not find any evidence that the catalog was distributed at the show to any persons of ordinary skill in the art, or that any one of such skill was actually in attendance (besides

GoPro’s representatives at the trade show) given that the trade show was focused on off-road, all-terrain-type vehicles and related products.
On appeal, the Court of Appeals for the Federal Circuit (the Court) analyzed whether the catalog constituted a printed publication under 35 U.S.C. 102(b) (Pre-AIA). In performing this analysis, the Court performed a de novo review and reviewed the PTAB’s factual findings for substantial evidence. Under section 102(b), “a person shall be entitled to a patent unless the invention was described in a printed publication more than one year prior to the date of application for the patent in the United States.” Contour IP Holding LLC did not dispute any of the evidence presented regarding distribution of the catalog, nor did they dispute that the trade show occurred more than one year before the application for patent of the ‘954 and ‘694 patents. As such, the issue before the Court was “whether the GoPro catalog was sufficiently accessible as contemplated under 102(b).

The Court agreed with GoPro, Inc.’s argument that the evidence submitted was sufficient to establish that the GoPro catalog was publicly accessible. Citing Medtronic v. Barry, 891 F.3d 1368 (Fed. Cir. 2018), the Court found that the PTAB relied too heavily on the target audience of the distributed GoPro catalog in finding that the GoPro catalog was not publicly accessible. In addition, the Court stated that the PTAB failed to consider other factors, such as “the nature of the conference or meeting at which material is distributed, whether there are restrictions on public discourse of the information, expectations of confidentiality, and expectations of sharing the information.”

In examining these factors, the Court noted that there was no restriction on distribution of the GoPro catalog at the trade show and that the GoPro catalog was freely on display for anyone in attendance. The Court further rejected the notion that the trade show’s focus on “action sports vehicles is not preclusive of persons ordinarily skilled in the art from attending to see what POV digital cameras were being advertised and displayed.” Similarly, the Court found that the patents at issue described that “a primary purpose of POV cameras is for use on vehicles in extreme action environments, such as the ones advertised at the Tucker Rocky Dealer Show.” With regard to attendees of the of the trade show, the Court determined that nothing about the trade show would have excluded cameras, camcorders, or related products from the trade show, and that it would have been likely for people attending the trade show to be interested in such products. Lastly, the Court determined that the vendor lists for the trade show included a number of vendors that would have likely been involved in selling and/or producing cameras and/or camcorders of the type shown and described in GoPro’s catalog.

Based on these determinations, the Court determined that “a dealer show focused on extreme sports vehicles is an obvious forum for POV action sports cameras,” and that “dealers of POV cameras would encompass the relevant audience such that a person ordinarily skilled and interested in POV action cameras, exercising reasonable diligence, should have been aware of the show,” despite the trade show not being open to the general public or advertised to the general public. In addition, the Court determined that the lack of restrictions placed on the dissemination of the GoPro catalog indicates that the GoPro catalog was “intended to reach the general public.” As such, the Court concluded that the GoPro catalog was a printed publication under 102(b) and that the GoPro catalog was prior art for purposes of the patents at issue. The Court remanded to the PTAB for an obviousness determination in light of the GoPro catalog.

This case provides a few practice insights for practitioners. This case highlights that when working with clients, practitioners should broadly interpret non-confidential disclosures of material as public disclosures. Despite the closed nature of the trade show and the lack of evidence that any persons skilled in the art, outside of GoPro, Inc.’s attendees, attended the trade show, the Court nonetheless found that dissemination of the GoPro catalog at the trade show constituted a prior art reference under 102(b). Similarly, this case highlights that a public disclosure can occur as long as the distributed material is not restricted from reaching the general public. Even if the material is not necessarily distributed to anyone of ordinary skill in the art, as long as there are no restrictions on further dissemination by those individuals, a court may find that such dissemination is a public disclosure as the material could, in theory, reach someone skilled in the art. As such, practitioners should work with clients to determine the exact nature of past or future disclosures of invention-related material for purposes of identifying relevant public disclosures.

Download GoPro, Inc. v. Contour IP Holding LLC

Harrity Blog

September 2018 – Creativity in Enhancing the Quality and Size of Patent Portfolios

By Nathan Phares and Kenneth Hartmann

One of the most challenging choices for an organization’s patent strategy is whether to focus on quality or quantity. A small number of high-quality patents may provide value and solid protection for some inventions, but innovation can occur at a fast pace, which may require rapid filings at a high volume. When presented with the challenge of increasing portfolio size without sacrificing patent quality or ballooning the budget, you, the patent practitioner (whether in-house or in private practice), may need to take creative steps to increase the number of ideas that are harvested from inventors, the number of patents that can be obtained for an idea or group of ideas, and the efficiency with which patents can be drafted. This article discusses several creative strategies to help grow a patent portfolio for your clients, whether they are a business unit of an organization or the organization itself. These creative strategies can be implemented prior to reaching the prosecution phase, both before patent applications are drafted and during the application drafting stage, without simply increasing patent expenditures.

READ MORE

Elaine Spector, Harrity Team

Working From Home – Elaine Spector Published in American Diversity Report

By Elaine Spector
September 8, 2018 – Working From Home: A Game Changer

After over 21 years of working in an office, I finally had the opportunity to take a leap of faith to work from home. Many people have questioned me about the move, and how I am fairing. My response is simple: “It is a game changer.”

Like many Americans, I’ve spent a majority of my working life in a brick and mortar office. On a typical morning, I would take a quick shower, eat a hurried breakfast, and dash to my car in a futile attempt to beat the traffic. I have been in the law practice for 21 years, most of which were spent living and working in Washington, D.C.- a city notorious for its congestion. After a move to Baltimore, I continued to commute to D.C. for seven excruciating years.

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Eli Mazour Harrity Team

Dissecting Dissents for Ex Parte Appeals

By Eli Mazour and So Ra Ko

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge.

The PTAB decides thousands of ex parte appeals per year.  Each appeal is assigned to a panel of three Administrative Patent Judges (APJs).  While one judge is designated to write the initial opinion, all three judges are supposed to take an active role in adjudication before the final decision is issued.

READ MORE>

https://soundcloud.com/clause-8/episode-5-gaston-kroub

Gaston Kroub Interview – Clause 8 – Episode 5

Eli Mazour recently interviewed Above the Law IP Columnist and Markman Advisor founder Gaston Kroub. Learn about the advantage of IP litigation boutiques handling your matters, advising financial firms about ongoing patent litigation, succeeding in the legal profession, and so much more! You do not want to miss this insider interview!

Find the full Clause 8 podcast interview available here https://www.clause8.tv/ or via your favorite podcast app.

https://soundcloud.com/clause-8/episode-4-david-kappos

David Kappos Interview – Clause 8 – Episode 4

Eli Mazour recently interviewed former USPTO Director David Kappos. Learn about his time at IBM and the USPTO, what in-house IP counsel should keep in mind, the importance of 5G technology, and so much more! You do not want to miss this insider interview!

Find the full Clause 8 podcast interview here https://www.clause8.tv/ or via your favorite podcast app. 

Rebecca Bachner, Harrity Team

Case Summary of SAP America, Inc. v. InvestPic, LLC

By Rebecca Bachner

In SAP America, Inc. v. InvestPic, LLC, 2017-2081 (Fed. Cir. May 15, 2018), the Federal Circuit (“the Court”) agreed with the U.S. District Court for the Northern District of Texas (the “District Court”) that the claims of U.S. Patent No. 6,349,291 (“the ‘291 patent”), were invalid because their subject matter is invalid under 35 U.S.C § 101 (“Section 101”).

The ‘291 patent is directed to calculating and analyzing investment data in order to generate a resampled distribution.  In 2016, SAP America, Inc. filed a declaratory judgment alleging the that ‘291 patent was invalid and moved for a judgment on the pleadings on that ground.  In May 2017, at the judgment on the pleadings, the District Court granted the motion and held all claims ineligible under Section 101 and hence invalid.  The District Court concluded that the claims were directed to performing statistical analysis based on the language in the claims and the mathematical calculations in the written description and dependent claims.  InvestPic, LLC appealed the grant of the motion.

On the merits with regards to the claims of the ‘291 patent, the Court found, as did the District Court, that the claims in the ‘291 patent are ineligible under Section 101.  The Court stated that “[w]e may assume that the techniques claimed are ‘groundbreaking, innovative, or even brilliant,’ but that is not enough for eligibility.” Ass’n for Molecular Pathology v. Myriad Genetics Inc, 569 U.S. 576, 591 (2013).  The Court reiterated that overcoming novelty and non-obviousness is not enough and that “[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter.”  SAP America, Inc. v. InvestPic, LLC at p. 3.  The Court said that the subject matter is nothing but a series of mathematical calculations and the presentation of the results in the plot of a probability distribution function.

To make this determination, the Court looked to the patent’s description of existing practices being improved by the ‘291 patent.  The ‘291 patent discusses that conventional financial information websites perform rudimentary statistical functions relying on a false presumption of a probability distribution and that the patent proposes a technique that “utilizes resampled statistical methods for the analysis of financial data.”  The patent then discusses using a bootstrap method and bias parameters.

The Court then looked to the independent claims.  Independent claims 1 and 11 are method claims and claim 22 is a system claim.

Claim 1: A method for calculating, analyzing and displaying investment data comprising the steps of:
(a) selecting a sample space, wherein the sample space includes at least one investment data sample;
(b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling process; and,
(c) generating a plot of the distribution function.

Claim 11: A method for providing statistical analysis of investment data over an information network, comprising the steps of:
(a)storing investment data pertaining to at least one investment;
(b)receiving a statistical analysis request corresponding to a selected investment;
(c)receiving a bias parameter, wherein the bias parameter determines a degree of randomness in a resampling processing; and
(d)based on upon investment data pertaining to the selected investment, performing a resampled statistical analysis to generate a resampled distribution.

Claim 22: A system for providing statistical analysis of investment information over an information network comprising:
a financial data databased for storing investment data;
a client database;
a plurality of processors collectively arranged to perform a parallel  processing computation, wherein the plurality of processors is adapted to:
receive a statistical analysis request corresponding to a selected investment;
based upon investment data pertaining to the elected investment, perform a resampled statistical analysis to generate a resampled distribution; and
provide a report of the resampled distribution.

 

Upon reviewing the claims, the Court found them directed to abstract ideas.  The Court found this case to be similar to Electric Power Group v. Alstom S.A. 830 F.3d 1350 (Fed. Cir. 2016) as the claims select certain information, analyze it using mathematical techniques and report or display the results of the analysis.

The Court distinguished this case from McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) by stating that McRO was directed to the creation of something physical and the improvement was to how the physical display operated.  However, the claims in the ‘291 patent claimed an improvement to a mathematical technique with no improved display mechanism.  The Court further distinguished these claims from McRO stating that McRO had the specificity required to transform a claim from claiming only a result to claiming a way of achieving it.  Similarly, the Court stated that Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017) taught an improvement of a physical tracking system.

In contrast, the Court stated, the focus of the claims in the ‘291 patent is not a physical-realm improvement, but an improvement in the selection and mathematical analysis of information followed by reporting or displaying the results.  The Court stated that it did not matter as to whether the information claimed is information about real investments as the limitations were not enough to make the collection or analysis of that information not abstract.

Further, the Court also distinguished the claims in the ‘291 patent from the results of the first test of the Alice inquiry in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC., 827 F.3d 1341 (Fed. Cir. 2016), stating that those claims were directed to improvements in the way the computers and networks carry out their basic functions.  Alice Corp Pty. Ltd v. CLS Bank Int’l, 134 S.Ct 2347 (2014).  The Court said that the claims of the ‘291 patent are directed to improved mathematical analysis and that the technology used can be off-the-shelf computer technology.  As such, the claims of the ‘291 patent did not meet the first test of the Alice inquiry.

Looking to the second test of the Alice inquiry, the Court concluded that there is nothing in the claims sufficient to transform them to patent eligible and that the claims in the ‘291 patent are merely an advance of mathematical techniques in finance.  As such, the Federal Circuit agreed with the District Court that the claims of the ‘291 patent lack subject matter eligibility.

This case illustrates the importance of having claims that are specific and solve a technical problem.  Furthermore, the decision in SAP America, Inc. v. InvestPic, LLC emphasizes the importance of having claims focused on advancements in an area of technology.

Download Case Summary of SAP America, Inc. v. InvestPic, LLC. 

Peter Glaser Team

Case Summary of Vivint, Inc. v. Alarm.com Inc.

By Peter Glaser and So Ra Ko
August 22, 2018- Case Summary of Vivint, Inc. v. Alarm.com Inc.

In Vivint, Inc., v. Alarm.com Inc., 2017-2076 (Fed. Cir. July 26, 2018), the Federal Circuit (“the Court”) affirmed an inter partes review decision of the U.S. Patent Trial and Appeal Board (“the PTAB”) that the claims of U.S. Patent No. 6,924,727 (“the ‘727 patent”), were invalid because their subject matter is invalid under 35 U.S.C § 103 (“Section 103”).

The ‘727 patent is directed to a method that allows a user to remotely control electronic devices located in the user’s home.  The United States Patent and Trademark Office (“USPTO”) issued the ‘727 patent in 2005 with a priority date in 2001.  Independent claim 1 is representative (emphasis added):

A method for remote control of home-located electronic devices, comprising the steps of:
receiving, at a management facility, from a terminal via a network, a request signal and a terminal identifier that identifies said terminal;
identifying, in said managing facility a server, said server being identified by a server identifier that corresponds to said terminal identifier;
obtaining, in said management facility, from said server via said network, status information and said server identifier, said status information indicative of the status of home-located electronic devices controlled by said server;
generating display information for said terminal dependent upon the performance of said terminal, wherein said display information includes the status of said home-located electronic devices based on said status information and a prompt for input of a control instruction for said home-located electronic devices, said terminal being identified by said terminal identifier, said terminal identifier corresponding to said server identifier;
transmitting said display information from said management facility to said terminal;
displaying, with said terminal, a screen showing the status of said home-located electronic devices and a screen to prompt for input of a control instruction of said home-located electronic devices on the basis of the received display information;
transmitting, by said terminal, said terminal identifier and first control information;
generating, by said management facility, second control information that directs said server to perform control of said home-located electronic devices, on the basis of said first control information;
transmitting, by said management facility, said second control information to said server, said server being identified by said server identifier that corresponds to said terminal identifier, and
controlling, by said server, said home-located electronic devices on the basis of said second control information.

In 2015, Vivint sued Alarm.com in United States District Court for the District of Utah (“the District Court”) alleging infringement on 6 patents relating to smart home technology, and Alarm.com challenged 5 of the 6 patents in an inter partes review.  The District Court stayed the infringement suit pending results of the inter partes review.  The PTAB concluded that the claims were obvious in view of two earlier patents directed to internet-based home communications system.  Vivint appealed the finding of obviousness arguing that the PTAB misconstrued a term of the claims by departing from the term’s plain meaning.

The PTAB adopted Alarm.com’s proposed construction of “terminal identifier” to mean “an identifier associated with a terminal that enables the home network management facility to identify or communicate with the terminal” rather than “an identifier associated with a terminal that enables a terminal to be identified” as proposed by Vivint.  The PTAB based this construction on several grounds.  First, the ‘727 patent did not include an explicit definition of a “terminal identifier.”  Second, the claims of the ‘727 patent recite “a terminal identifier that identifies said terminal” and “said terminal identifier to determine at least one of a display capability or a communication capability of said terminal,” which the PTAB found instructive in construing a terminal identifier as identifying a terminal and being used to determine a format of information that is to be communicated to a terminal.  Further, the ‘727 patent’s claims recite “wherein said identifier is a manufacturer model identifier of said remote terminal,” which the court indicated is informative in identifying a manufacturer model identifier as a type of terminal identifier.  Third, the PTAB confirmed that the specification of the ‘727 patent recited that the ‘727 patent did not intend to limit an identifier to a specific type of identifier, such as an alphanumeric number or a unique identifier specific to a device.  Fourth, the PTAB found that a definition of “server identifier” was relevant to a definition of “terminal identifier” insofar as each was a type of “identifier” distinguished by the entity being identified.  See Chamberlain Grp., Inc. v. Lear Corp., 516 F.3d 1331, 1337 (Fed. Circ. 2008).  Here, the term “server identifier” was construed parallel to a terminal identifier as “an identifier associated with a home server that enables the home network management facility to identify or communicate with the home server” and this construction was unchallenged, resulting in it being applied to the construction of the “terminal identifier.”

Based on this construction, the PTAB found that U.S. Patent 6,580,950 (“Johnson”) and U.S. Patent 6,161,140 (“Moriya”) independently taught “receiving, at a management facility, … a terminal identifier” (“the terminal identifier limitation”).  The PTAB found that Johnson inherently taught the terminal identifier limitation based on the Johnson’s IP address being a form of terminal identifier.  The PTAB found that Moriya taught the terminal identifier limitation based on Moriya’s model code being a form of the terminal identifier.

Reviewing the claims of the ‘727 patent de novo, the Court found, as did the PTAB, that the claims in the ‘727 patent are ineligible under Section 103.  The Court first reviewed the claims construction decision of the PTAB, confirming that the PTAB correctly applied the claims and specification to arrive at the construction of the term “terminal identifier.”  Although the Court, however, found that the PTAB erred in finding that Johnson inherently disclosed a limitation of the ‘727 patent, the Court found that such error was harmless as Moriya independently taught the limitation of the ‘727 patent.

In concluding that the PTAB erred with regard to Johnson the Court analyzed inherency doctrine—finding that “inherency ordinarily applies in an anticipation context where a prior art reference, which does not expressly disclose every limitation of a claim, may still anticipate that claim,” but that use of inherency doctrine in the context of obviousness is limited to cases where “the limitation at issue [is] necessarily… present, or the natural result of the combination of elements explicitly disclosed by the prior art.” Par Pharm., Inc. v. Twi Pharm. Inc., 773 F.3d 1186, 1194-96 (Fed. Circ. 2014).  Thus, inherency “requires more than agreement; inherency requires inevitability” and evidence that a limitation “comport[s] with” a claim construction is insufficient.

Furthermore, the Court reinforced the point that inherency and obviousness are “distinct concepts” by finding that expert testimony discussing obviousness did not constitute substantial evidence to support an inherency finding.  See In re Spormann, 363 F.2d 444, 4848 (CCPA 1966)).  In this case, the PTAB had supported its inherency finding through expert testimony that, based on an Examiner’s Official Notice, the use of IP addresses in Johnson would have been “obvious” to a skilled artisan.  The Court rejected the PTAB’s reliance on the expert testimony to support its inherency finding, because “what would have been obvious to a skilled artisan is not a valid consideration in an inherency analysis.”

Nevertheless, the Court agreed with the PTAB that Moriya teaches model code capable of identifying a generic terminal rather than a specific terminal.  The ‘727 patent distinguishes between the terminal identifier and a model name (which identifies a generic model).  Thus, Vivint argues, the model code of Moriya should be analogous to the model name and not the model identifier.  The Court agreed with the PTAB finding that claims 29 and 37 of the ‘727 patent, which recite that the terminal identifier is “a manufacturer model identifier,” were sufficient to conclude that the model code was analogous to the model identifier based on the claims construction of the “terminal identifier” as including a manufacturer model identifier.  Further the Court found that the functionality of the model code in Moriya—to allow a system to determine a terminal’s display capability—was the same functionality of the terminal identifier in the ‘727 patent.

The take-aways from this decision include the relevance of dependent claims in the eventual construction of an independent claim, the risks in using similar phrasing for different elements (i.e., use of the common word “identifier” for both a “terminal identifier” and a “server identifier”) and the importance of precision in identifying the functionality of each term in a patent.

Download Case Summary of Vivint, Inc. v. Alarm.com Inc.

Matthew Allen, Harrity Team

Practice Insights in the Wake of Blackbird Tech LLC v. ELB Electronics, Inc.

By Matthew Allen
July 26, 2018- Practice Insights in the Wake of Blackbird Tech LLC v. ELB Electronics, Inc.

In Blackbird Tech LLC v. ELB Electronics, Inc. (Fed. Cir. July 16, 2018), the Federal Circuit found, with one judge dissenting, that the district court erred during claim construction by construing a claim limitation to include a requirement not included in the plain language of the claim, and not supported during the prosecution history.

The decision provides insight into how choices made during drafting and prosecution may affect claim construction, and provides insight into how issues of claim construction might be avoided.

The patent at issue (7,086,747) describes an energy efficient lighting apparatus designed to be retrofitted with an existing light fixture. At issue was claim construction regarding the meaning of “attachment surface,” and whether the attachment surface must be secured to a “ballast cover.” Specifically, claim 12 recites:

12. An energy-efficient lighting apparatus for retrofit with an existing light fixture having a ballast cover, comprising:
a housing having an attachment surface and an illumination surface;
a plurality of illumination surface holes in the illumination surface;
a circuit board comprising a plurality of light-emitting diodes, wherein the circuit board is positioned adjacent the housing so that the plurality of light-emitting diodes protrude through the plurality of illumination surface holes in the illumination surface; and
a fastening mechanism for securing the attachment surface of the lighting apparatus to the illumination surface, wherein the lighting apparatus is coupled to a wall switch and wherein the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.

Blackbird argued that “attachment surface” should be construed as “layer of the housing to which the illumination surface is secured,” while ELB argued (and the district court agreed) that “attachment surface” should be construed as “layer of the housing that is secured to the ballast cover.”

In concluding that “claim 12 does not require the attachment surface to be secured to the ballast cover,” the Federal Circuit relied on the plain language of claim 12, stating that claim 12 “does not require the attachment surface be secured to anything other than the illumination surface.” The Court also pointed out that there was no suggestion (e.g., in the specification or during prosecution or litigation) indicating that the fastening mechanism securing the attachment surface to the ballast cover was an important feature of the claimed invention.

Interestingly, the Federal Circuit also noted that “possibly the most important reason why the fastener for connecting the attachment surface to the ballast cover disclosed in an embodiment ought not be imported into the claim is because that limitation was originally present in claim 12 and was expressly eliminated during prosecution.” During prosecution, an amendment made “to resolve 112 issues” deleted “ballast cover” and replaced it with “illumination surface.” The federal circuit concluded that “[n]o ordinary artisan could read the prosecution history as anything other than eliminating the requirement that a fastening mechanism secures the attachment surface to the ballast cover.”

In his dissent, Circuit Judge Reyna concluded “that the district court correctly construed ‘attachment surface’ to mean ‘layer of the housing that is secured to the ballast cover.’” In particular, Circuit Judge Reyna states:

The plain language of claim 12, read in the context of the specification, implicitly requires that the attachment surface be secured to the ballast cover to achieve the retrofit function. Apart from the preamble, which the parties agree is limiting, claim 12 contains no reference to the ballast cover, the existing light fixture, or where or how the apparatus is retrofit with the existing light fixture. Because the only feature of the existing light fixture described in claim 12 is the ballast cover, a person of ordinary skill would necessarily conclude that the attachment surface is secured to the ballast cover of the existing light fixture.

In addition to the plain language argument, Circuit Judge Reyna noted that “[e]very single embodiment of the retrofit lighting apparatus in the specification describes securing the attachment surface to the ballast cover of the existing light fixture.” He also cites a portion of the specification, which states that “[i]n typical operation, the attachment surface 530 is secured to the ballast cover,” to support his conclusion that the attachment surface should be read as being secured to the ballast cover.

Clearly, this case was not as clear cut as the plain language of claim 12 might have made it seem. However, the case does provide insight into how practitioners might draft and prosecute an application in a manner designed to avoid unfavorable claim construction.

For example, both the district court, and the dissenting Circuit Judge, felt that the specification did not make it clear that the attachment surface might not be secured to the ballast cover. In describing various components, a patent drafter might avoid similar issues by describing components as having multiple functions or capabilities, or avoiding describing a component as serving only one function.

In addition, the inclusion of “ballast cover” in the preamble of claim 12 was given weight in both the majority and dissenting opinions. During drafting, or prosecution, a practitioner might wish to avoid including (or amend to exclude), in the preamble of a claim, limitations, structure, or the like, which might be construed as being somehow tied into other claimed features.

Also, during prosecution, the elimination of claim features is clearly given weight in determining whether an eliminated feature might be required for patentability. Accordingly, rather than leaving in unnecessary claim features, it may be beneficial to remove claim features in a manner designed to pre-empt a claim construction that requires a claim feature that is actually not necessary for patentability.

Download Blackbird Tech LLC v. ELB Electronics, Inc..

Kris Rhu Harrity Team

Case Summary of Zeroclick, LLC. v. Apple Inc.

By Kris Rhu
June 26, 2018- Case Summary of Zeroclick, LLC. v. Apple Inc.

Zeroclick sued Apple alleging that Apple infringed claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19 of U.S. Patent No. 8,549,443, which relate to modifications of graphical user interfaces (GUIs) that allow the GUIs to be controlled using pre-defined pointer or touch movements instead of mouse clicks.  Apple responded by asserting invalidity of those claims.  The U.S. District Court for the Northern District of California found that the claims recited means-plus-function terms for which the specification did not have sufficient structure, and therefore, were invalid for indefiniteness.  However, the Court of Appeals for the Federal Circuit (CAFC) vacated and remanded, holding that the district court did not undertake the relevant inquiry when making factual findings to support its conclusion that the claims recited means-plus-function terms.

Claim 2 of the ’691 patent recites:

2. A graphical user interface (GUI), which may comprise an update of an existing program, that may fully operate a GUI by a two step method of movement of a pointer (0) to operate one or more functions within the GUI,
wherein, said existing program is any existing program that can operate the movement of the pointer (0) over a screen (300) and has one or more functions operated by one or more other methods apart from said two step method,and/or one or more functions operated by said one or more other methods in said existing program can be updated to operate by said two step method,
wherein said GUI executes one or more functions within the GUI by the completion of the following said two step method:
first said pointer (0) is immediately adjacent or passes within a control area (1), which is an area of the screen (300) that may be any size including from a pixel on the screen (300) to occupying the whole screen (300), and
second by the completion of a subsequent movement of said pointer (0) according to a specified movement generates a ‘click’ event, thereby triggering one or more functions within the GUI.

Claim 52 is directed to the “method of operating a graphical user interface” described in claim 2.

Claim 19 of the ’443 patent recites:

  1. A device capable of executing software comprising:

a touch-sensitive screen configured to detect being touched by a user’s finger without requiring an exertion of pressure on the screen;a processor connected to the touch-sensitive screen and configured to receive from the screen information regarding locations touched by the user’s finger;executable user interface code stored in a memory connected to the processor;the user interface code executable by the processor;the user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation; andthe user interface code is further configured to cause one or more selected operations, which includes one or more functions available to the user interface code of the device, to deactivate while the user’s finger is touching one or more locations on the screen.

During claim construction, the district court found that the limitation “program that can operate the movement of the pointer (0)” in claim 2 of the ‘691 patent is a means-plus-function term.  Specifically, it found “program” to be a means that performs the function of operating the movement of the pointer.  The district court also found that “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation” in claim 19 of the ‘443 patent is a means-plus-function term.  Specifically, it found “user interface code” to be a means that performs the functions of detecting one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determining therefrom a selected operation.

The CAFC cited Williamson v. Citrix Online, LLC, which stated that the failure to use the word “means” creates a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply, but that the presumption can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.”  792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc).  Williamson further stated that the essential inquiry in determining whether a claim limitation involves § 112, ¶ 6 is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” Id.  The CAFC found that the district court failed to undertake this inquiry and make related factual findings.

The CAFC noted that the claims did not include the word “means,” which invokes the presumption.  The CAFC also noted that Apple provided no evidentiary support for their position that the claim limitations must be construed under § 112, ¶ 6, and therefore, failed to rebut the presumption.  By relying on Apple’s arguments without evidentiary support, the district court legally erred by not giving effect to the unrebutted presumption.

The CAFC further found that the district court effectively treated the features “program” and “user interface code” as nonce words that operate as a substitute for “means,” and found such treatment to be erroneous for three reasons: 1) just because the disputed limitations incorporate functional language does not necessarily convert those words into means for performing those functions.  There are plenty of devices that take the names of the functions they perform (e.g. brake, clamp, screwdriver); 2) the district court removed those terms from their context, which otherwise strongly suggests the plain and ordinary meaning of the terms.  Claim 2 of the ‘691 patent recites a “graphical user interface” which may “comprise an update of an existing program” using a two-step method.  Claim 19 of the ‘443 patent tethers “user interface code” to the code “stored in a memory connected to the processor.”  That processor, in turn, is configured to perform the indicated functions.  Thus, a person of ordinary skill in the art could reasonably discern from the claims that the words “program” and “user interface code” are not used as generic terms, but rather as specific references to conventional GUI programs or code existing previously.  The written description further bolsters this conclusion because it describes the distinction drawn between GUIs in the prior art and the improvement to such interfaces in the claimed invention; and 3) the district court made no findings that compel the conclusion that a conventional GUI program or code is commonly used as a substitute for “means.”

This opinion illustrates the importance of avoiding the use of the word “means” in order to create a rebuttable presumption that 35 U.S.C. § 112, ¶ 6 does not apply to a claim.  The opinion also illustrates the importance of tethering software-esque terms like “program” or “code,” or other terms that may not inherently have structure, to a specific structure in the claims and/or providing context to such claim limitations.  Such strategies can help prevent claim limitations from being construed under 35 U.S.C. § 112, ¶ 6.

Download Summary of Zeroclick LLC. v. Apple Inc. 

James Olsen, Harrity Team

Case Summary of Medtronic, Inc. v. Barry

By James Olsen
June 17, 2018- Case Summary of Medtronic, Inc. v. Barry, C.A. No. 2017-1169 (Fed. Cir. June 11, 2018)

Background
This is an appeal from two related decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (Board) in inter partes review (IPR) proceedings.  The Board concluded that the petitioner, Medtronic, Inc., had not proven that the challenged patent claims are unpatentable.  The Federal Circuit affirmed-in-part and vacated-in-part the decision.

Dr. Mark Barry sued Medtronic for patent infringement in the Eastern District of Texas.  Barry alleged that Medtronic’s products infringed U.S. Patent Nos. 7,670,358 (the 358 Patent) and 7,776,072 (the 072 Patent).  Medtronic petitioned for, and the Board instituted, IPR proceedings for all claims in both patents.

During the IPR proceedings, Medtronic asserted that the claims of the patents were obvious over three references: (1) U.S. Patent Application No. 2005/0245928 (the 928 Application), (2) a book chapter which appears in Masters Techniques in Orthopaedic Surgery: The Spine (2d ed.) (MTOS); and (3) a video entitled “Thoracic Pedicle Screws for Idiopathic Scoliosis” and slides entitled “Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and Kyphosis Surgery” (Video and Slides).  The Board determined that the claims of the patents were not obvious over the 928 Application and MTOS, and that the Video and Slides were not prior art since they were not publicly accessible.

The primary dispute is whether the Video and Slides were publicly accessible, and thus, prior art to the 358 patent and the 072 patent.

Patents at Issue
The 358 patent relates to a method for ameliorating aberrant spinal column deviation conditions, such as scoliosis.  The 072 patent is a continuation-in-part of the application that led to the 358 patent and shares substantially the same specification.

Analysis
The Federal Circuit affirmed the Board’s determination that the claims of the patents were not obvious over the 928 Application and MTOS.  However, Federal Circuit held that the Board erred in concluding that the Video and Slides were not accessible to the public.

On appeal, the parties disputed whether the Video and Slides constituted printed publications within the meaning of 35 U.S.C. § 102(b).  A CD containing the Video was distributed at three separate programs in 2003: (1) a meeting of the “Spinal Deformity Study Group” (SDSG) in Scottsdale, Arizona, (the Scottsdale program); (2) the Advanced Concepts in Spinal Deformity Surgery meeting in Colorado Springs, Colorado (the Colorado Springs program); and (3) the Spinal Deformity Study Symposium meeting in St. Louis, Missouri.  Binders containing relevant portions of the Slides were also distributed at the Colorado Springs and St. Louis programs.  The earliest of the three 2003 programs, the Scottsdale program, was limited to 20 SDSG members (e.g., experts within the field of spinal deformity), and the other two programs were attended by 20 and 55 surgeons at the Colorado Springs and St. Louis programs, respectively.

The Federal Circuit found that the determination of whether a document is a “printed publication” under 35 U.S.C. § 102(b) involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).  A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.

The Federal Circuit held that the question becomes whether such materials were sufficiently disseminated at the time of their distribution at the conferences.  The Federal Circuit pointed to Massachusetts Institute of Technology v. AB Fortia (MIT), where a paper that was orally presented at a conference to a group of cell culturists interested in the subject matter was considered a “printed publication.” 774 F.2d 1104, 1109 (Fed. Cir. 1985).  In that case, between 50 and 500 persons having ordinary skill in the art were told of the existence of the paper and informed of its contents by the oral presentation, the document was disseminated without restriction to at least six persons, and whether the copies were freely distributed to interested members of the public was a key consideration in the analysis.

The Federal Circuit also pointed to Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009), where the issue pertained to whether a set of research papers distributed by a doctor to certain colleagues and two commercial entities rendered the documents printed publications.  In that case, the Federal Circuit concluded that such documents were not publicly accessible since academic norms gave rise to an expectation that disclosures would remain confidential, and there was an expectation of confidentiality between the doctor and each of the two commercial entities.

Finally, the Federal Circuit identified In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004), where a reference in dispute was a printed slide presentation that was displayed prominently for three days at a conference to a wide variety of participants.  The reference was shown with no stated expectation that the information would not be copied or reproduced by those viewing it, but copies were never distributed to the public and never indexed.  In that the case, the Federal Circuit identified the relevant factors to include: (1) the length of time the display was exhibited, (2) the expertise of the target audience (to determine how easily those who viewed the material could retain the information), (3) the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and (4) the simplicity or ease with which the material displayed could have been copied.  After reviewing these factors, the Federal Circuit determined that the reference was sufficiently publicly accessible to count as a “printed publication” for the purposes of § 102(b).

The Federal Circuit held that the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed are important considerations.  The Federal Circuit further held that another consideration is whether there is an expectation of confidentiality between the distributor and the recipients of the materials.

The Federal Circuit found that the Board did not fully consider all of the relevant factors.  For example, the Board did not address the potentially-critical difference between the SDSG meeting in Arizona and the programs in Colorado Springs and St. Louis, which were not limited to members of the SDSG but instead were attended by at least 75 other surgeons, collectively.  The Board’s analysis was silent on the distribution that occurred in the two non-SDSG programs.  Further, even if the Board were correct in its assumption that Medtronic only gave the Video and Slides to the SDSG members, it did not address whether the disclosures would remain confidential.

Accordingly, the Federal Circuit held that whether dissemination of the Video and Slides to a set of supremely-skilled experts in a technical field precludes finding such materials to be printed publications warrants further development in the record.  For these reasons, the Federal Circuit vacated the Board’s finding that the Video and Slides are not printed publications and remanded for further proceedings.

Practice Insights
Consider counseling inventors and clients regarding the appropriate factors to consider when presenting materials at conferences and distributing materials without a legal obligation of confidentiality.  It may be wise to file a provisional patent application before presenting or distributing materials related to an invention.  Also, one may enter non-disclosure agreements with parties viewing a presentation or receiving distributed materials.

Download Medtronic, Inc. v. Barry.

Top Patent Firms 2018

Harrity & Harrity is Named to the 2018 IAM Patent 1000 List

Harrity & Harrity has been named to the 2018 IAM Patent 1000, along with partners John Harrity and Paul Harrity.  According to the publication, “As well as in preparation and prosecution, Harrity & Harrity excels at competitive intelligence and pre-litigation patent analysis.  It delivers high-quality results promptly and within budget and can handle any type of technology and any degree of complexity in invention disclosures with ease.”

Read our profile in its entirety HERE.

 

Elaine Spector, Harrity Team

Case Summary of Vanda Pharma v. West-Ward Pharma

By Elaine Spector
May 18, 2018- Case Summary of Vanda Pharma v. West-Ward Pharma

Background
This is an appeal to the Court of Appeals for the Federal Circuit from the U.S. District Court for the District of Delaware holding the asserted claims of U.S. Patent No. 8,586,610 (the ‘610 patent) to be infringed and not invalid. The Federal Circuit affirmed.

West-Ward filed an Abbreviated New Drug Application (ANDA) that substantially copied Vanda’s New Drug Application, which Vanda was able to obtain approval from the FDA for treatment of patients with schizophrenia. After the ‘610 patent issued, Vanda filed an infringement action against West-Ward in the U.S. District Court for the District of Delaware. After a bench trial, the district court held that the asserted claims were not invalid under §101, §103, or §112 for lack of written description.

The primary dispute is whether the claims are patent eligible in view of Mayo v. Prometheus, or are they instead directed to a law of nature.

Patent at Issue
The ‘610 patent relates to a schizophrenia treatment using iloperidone. The claims require a dosage according to a patient’s metabolization rate of iloperidone (“CYP2D6 activity”).

Comparison of Vanda to Mayo claims

Vanda

Mayo

A method for treating a patient with iloperidone, wherein the patient is suffering from schizophrenia, the method comprising the steps of:A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
determining whether the patient is a CYP2D6 poor metabolizer by: obtaining or having obtained a biological sample from the patient; and performing or having performed a genotyping assay on the biological sample to determine if the patient has a CYP2D6 poor metabolizer genotype;(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and
and if the patient has a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount of 12 mg/day or less,(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
and if the patient does not have a CYP2D6 poor metabolizer genotype, then internally administering iloperidone to the patient in an amount that is greater than 12 mg/day, up to 24 mg/day,wherein the level of 6-thioguanine less than about 230 pmol per 8×108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein a risk of QTc prolongation for a patient having a CYP2D6 poor metabolizer genotype is lower following the internal administration of 12 mg/day or less than it would be if the iloperidone were administered in an amount of greater than 12 mg/day, up to 24 mg/day.wherein the level of 6-thioguanine greater than about 400 pmol per 8×108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

Analysis

The Federal Circuit analyzed the findings of the lower court and noted that “[t]he [district] court did conclude that ‘the asserted claims depend upon laws of nature,’ specifically, ‘the relationship between iloperidone, CYP2D6 metabolism, and QTc prolongation.”  Id at 7.  But the Federal Circuit continued by explaining that the ‘610 patent “addresses natural relationships to which the claims add conducting CYP2D6 genotyping tests to determine the appropriate dose of iloperidone to reduce QTc-related risks.”  Id.

 The Federal Circuit held that the claims at issue were not directed to one of the patent-ineligible concepts.  Since the claims were directed to patent-eligible subject matter, no step two inquiry Alice inquiry is needed.  The Federal Circuit explained, that “at step one, ‘it is not enough to merely identify a patent-ineligible concept underlying the claim; we must determine whether the patent-ineligible concept is what the claim is ‘directed to.’’”  Id. at 28 (quoting Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016).

In distinguishing Mayo, the Federal Circuit explained that the “claims in Mayo were not directed to a novel method of treating a disease.  Instead, the claims were directed to a diagnostic method based on the ‘relationships between concentrations of certain metabolites in the blood and the likelihood that a dosage of thiopurine drug will prove ineffective or cause harm.’ Id.  This ‘relation is a consequence of the ways in which the thiopurine compounds are metabolized by the body- entirely natural processes.  And so a patent that simply describes the relations sets forth a natural law.”  Id. at 29 (quoting Mayo v. Prometheus).

The Federal Circuit distinguished the claims in Mayo by explaining that “the claim as a whole was not directed to the application of a drug to treat a particular disease.” Id.  As noted by the Supreme Court in Mayo, “the administering step was akin to a limitation that tells engineers to apply a known natural relationship or to apply an abstract idea with computers.”  Id.  “To underscore the distinction between method of treatment claims and those in Mayo, the Supreme Court noted that ‘[u]nlike, say, a typical patent on a new drug or a new way of using an existing drug, the patent claims do not confine their reach to particular applications of those laws.’”  Id. (quoting Mayo v. Prometheus).

The Federal Circuit noted the following three distinctions in the claims of the ‘610 patent:

  1. The claims require a doctor to administer a drug in a certain amount.
  2. The claims do not tie up the doctor’s subsequent treatment plan. (In Mayo, a doctor could infringe even if he/she did not change up his/her treatment plan).
  3. The claims recite the steps of carrying out a specific dosage regimen based on the results of the genetic testing. (In Mayo, the claims did not prescribe a specific dosage regimen or other added steps to take as a result of the indication).

The Federal Circuit summarized that “the claims here are directed to a specific method of treatment for specific patients using a specific compound at specific doses for a specific outcome.”  Id. at 32.

The dissent disagreed, concluding that “[w]hile the claims here do not solely state a law of nature, they do no more than simply direct the relevant audience to apply it.”  (Dissenting Opinion, p. 2).  The dissent reasoned that the claims are directed to “no more than optimization of an existing treatment of schizophrenia, just as the claims in Mayo concerned ‘optimizing therapeutic efficacy’ of thiopurine drugs.’”  Id. at 5.  “It claims no more than instructions directing the audience to apply the natural law in a routine and conventional manner.”  Id. at pp. 5-6.  With regard to the difference in claiming a specific dosage, the dissent highlighted that Mayo considered “the ‘administering’ step in its search for an inventive concept, not as part of the determination whether the claims were directed to a natural law at the threshold.”  Id. at 6.  As noted by the dissent, “the specific dosage adds nothing inventive to the claims beyond the natural law.”  Id.  Similarly, the dissent noted that requiring treatment instead of indicating a dosage is not sufficient at step two of the analysis.

Practice Insights
It is important to be specific about a particular method of treatment, and also to be specific about a particular dosage for a specific outcome. In particular, a specific treatment should be claimed, instead of an optimization of a treatment, as in Mayo.  The treatment should also include a specific dosage, intended for a specific outcome.  Although not determinative, careful consideration should be given to drafting the preamble, as it also plays a role in finding the claims patent eligible, particularly as it related to specifying the particular method of treatment.

Download Case Summary of Vanda Pharma v. West-Ward Pharma.

Harrity 4 Charity

John Harrity and Sandra Maxey Talk About Lawyers Have Heart on Great Day Washington

On Wednesday, June 6th, John Harrity and Sandra Maxey went on Great Day Washington to talk about Lawyers Have Heart, a premier athletic event in the Washington, D.C. region. The 10K Race, 5K Run, and Fun Walk benefits the American Heart Association. Click HERE to donate until June 28th, 2018.

Harrity Hosts First Women’s Workshop

The Harrity Women’s Workshop took place from May 21-23.  We invited ten women from law schools across the country to join us to learn about the patent field from leading women in the field.  Elaine Spector, Counsel at Harrity & Harrity, and Sandra Maxey, the Firm’s Controller, both wanted to put together a program that would provide women with the skills necessary to succeed both personally and professionally in a high-stress career.

Harrity attorneys presented on topics ranging from the patent process to patent drafting and prosecution, rivaling what can be taught in a traditional classroom setting.  The workshop also featured many speakers, including Teresa Rea, a partner and vice-chair of Intellectual Property and a director with C&M International, a subsidy of Crowell Moring. She spoke about her career and how to create a life-work balance, and inspired the women in attendance to set high goals for themselves. Mercedes Meyer, a partner in the Intellectual Property group at Drinker Biddle & Reath explained the importance of creating a business plan and how to set yourself apart from your male counterparts. Barbara Fisher, Assistant General Counsel, Intellectual Property, at Lockheed Martin, gave an empowering speech on setting goals and achieving them.  Courtney Holohan, Accenture’s Chief Intellectual Property Counsel, told our workshop participants the ten things she wished she had known when she entered the field.  Cynthia Raposo, Senior Vice President of Legal for Under Armour, Inc., discussed issues related to women, including the advancement of women in the field and reasons why women do not tend to promote themselves.  Finally, Ami Gadhia of the National Center for Advancing Translational Sciences (NCATS) led a panel along with Catherine Wendelken, Nekeshia Maloney, and Felicia Metz.  They answered questions about their field, technology transfer, and how they manage a life-work balance.

This is the first Women’s Workshop held by the Harrity Women’s Committee, a sub-committee of the Diversity Committee.  In 2017, the firm held a Diversity Workshop geared towards introducing law school students to the practice of patent law.  Harrity & Harrity is committed to promoting diversity in the legal field, and does so through workshops such as those mentioned above, fellowships, and scholarships for new attorneys.

Seven women whom participated in the Harrity Women's Workshop

Harrity Women’s Workshop Participants

Nathan Phares Harrity Team

Hologic, Inc. v. Smith & Nephew, Inc.

By Nathan Phares
Satisfying the Written Description Requirement for a Genus based on a Disclosure of a Species of the Genus

May 8, 2017 – Hologic, Inc. v. Smith & Nephew, Inc. is related generally to the written description requirement under 112 paragraph 1 (pre-AIA). The Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeals Board’s (PTAB’s) decision that a genus, claimed in a child application, was adequately disclosed by a species in the specification of a parent application in accordance with the written description requirement.

Smith & Nephew (appellees) secured U.S. Patent No. 8,061,359 on a surgical endoscopic cutting device and method for the cutting device’s use (the ‘359 patent, issued Nov. 22, 2011). The ‘359 patent claims priority to earlier-filed PCT International Publication WO 99/11184 by the same inventor (the Emanuel PCT, published March 11, 1999).

Claim 1 of the ‘359 patent recites a “light guide” that is “permanently affixed” to a “first channel” of the apparatus. This article focuses on the analysis surrounding the light guide. The Emanuel PCT specifies “a connection 8 for a light source . . . for connection to a fibre optics bundle which provides for lighting” (emphasis added). The Examiner of the ‘359 patent objected to the drawings for not showing the “light guide.” Smith & Nephew addressed this objection by amending the specification to state: “A connection 8 for a light source . . . for connection to a light guide, such as a fibre optics bundle which provides for lighting” (emphasis added). The Examiner issued the ‘359 patent thereafter.

Hologic (appellant) requested inter partes reexamination (IPR) of the ‘359 patent, and the PTO granted the reexamination. The IPR Examiner found that the ‘359 patent could not claim priority to the Emanuel PCT because the “fibre optics bundle” of the Emanuel PCT did not provide adequate written description for the “light guide” of the ‘359 patent’s claims. Thus, priority to the Emanuel PCT was severed, so the Emanuel PCT invalidated the ‘359 patent’s claims as obvious in view of a secondary reference.

Smith & Nephew appealed to the PTAB. The PTAB found that the disclosure in the Emanuel PCT provides sufficient written description for the “light guide” of the ‘359 patent, thereby preserving the priority claim of the ‘359 patent to the Emanuel PCT. Thus, the PTAB reversed the IPR Examiner’s rejection of the ‘359 patent’s claims. A more detailed description of the PTAB’s reasoning is provided below. Hologic appealed to the Federal Circuit and appeared before Judges NEWMAN, WALLACH, and STOLL. Judge STOLL authored the opinion.

Claim 1 of the ‘359 patent reads in relevant part:

1. A method for removal of tissue from a uterus, comprising: inserting a distal region of an endoscope into said uterus, the endoscope including a valve and an elongated member defining discrete first and second channels extending from a proximal region of the elongated member to the distal region, the second channel having a proximal end in communication with the valve such that fluid from the valve is able to flow into and through the second channel to the uterus, and the first channel having a light guide permanently affixed therein and being sealed from the second channel to prevent fluid from the valve from entering the uterus through the first channel. . . (emphasis added).

The specification of the ‘359 patent reads, as amended and in relevant part: “[a] connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundles which provides for lighting at the end of lens 13.” Col. 3 ll 55-58.

The specification of the Emanuel PCT reads in relevant part:

“A connection 8 for a light source is also present, for connection to a fibre optics bundle which provides for lighting at the end of lens 13.” Emanuel PCT at 4:34-36. See also U.S. Patent No. 7,249,602, which issued from the Emanuel PCT and of which the ‘359 patent is a divisional, at para. [0030].

Hologic appealed the PTAB’s decision that the ‘359 patent is entitled to priority to the Emanuel PCT.  Specifically, Hologic contended that the obviousness rejection should be reinstated based on the Emanuel PCT not satisfying the written description requirement of pre-AIA 35 U.S.C. 112 paragraph 1.  Hologic contends that the Emanuel PCT does not provide adequate description of the “light guide,” as well as the “permanent affix[ture]” of the light guide in a “first channel” claimed in the ‘359 patent. As stated above, this article focuses on the analysis of the written description of the light guide.

The CAFC affirmed the PTAB’s findings that the Emanuel PCT provides written description support for the claims of the ‘359 patent, and that the ‘359 patent is entitled to claim priority to the Emanuel PCT, using a substantial evidence standard. Thus, the Emanuel PCT is not prior art to the ‘359 patent and the obviousness rejection was reversed.

A summary of the relevant written description law follows. To support priority, the specification of a parent patent must disclose what the child patent claims according to the written description requirement of pre-AIA 112 Paragraph 1. Slip Op. at 6, citing In re Katz at 1322. Ariad Pharm. v. Eli Lilly provides the standard: “based on ‘an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art . . ., the specification must describe an
invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed . . . . In other words, the test for sufficiency is whether the disclosure of the [earlier] application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter’ as of that earlier filing date.” Slip Op. at 7, citing Ariad at 1351.

The PTAB reasoned (and the CAFC agreed) that field of the invention is a predictable art, meaning that a lower level of detail is required to satisfy the written description requirement than for unpredictable arts (e.g., pharmaceutical arts, biological arts, etc.). Slip Op. at 7, citing Ariad at
1351. The PTAB further found that the Emanuel PCT discloses a “light guide” based on the facts that the parties do not dispute that a “fibre optic bundle” is a type of light guide, and that various types of light guides were well-known in the art. Slip Op. at 8. Hologic’s experts did not dispute these points. Because the Emanuel PCT showed possession of a “fibre optic bundle,” because a “fibre optic bundle” is a type of light guide, and because various “light guides” were known in a predictable art, the PTAB concluded that the Emanuel PCT reasonably conveys to a skilled artisan that the inventor of the Emanuel PCT had possession of a “light guide.” The CAFC affirmed.

This decision provides a framework for arguing against a written description rejection of a claimed genus over a disclosed species, particularly in the case of a priority claim to an earlier application. For example, this decision could be used to go after a broader scope in a continuation application, a divisional application, or a utility that claims priority to a provisional. Seek to establish that the specification shows possession of a species of a genus, and that the various other species of the genus are known in the art. After this, you may assert that the genus is adequately described in the specification based on the species. This may be particularly useful in predictable arts, although the prosecutor may lower the bar for obviousness by arguing that the art is predictable or that other species of the genus are known in the art. For the patent drafter, this decision provides a cautionary tale to think in terms of the genus as well as the species – add value for your clients by ensuring that your specification covers reasonable alternatives where possible.

The PTAB also found that the “permanently affixed” element and the “first channel” elements were adequately disclosed in the Emanuel PCT, and the CAFC affirmed – this aspect of the decision is not discussed any further in this article, as it is not particularly instructive for prosecutors.

Download Hologic, Inc. v. Smith & Nephew, Inc.
Ted Nissly, Harrity Team

Ted Nissly Joins the Firm

We’re excited to announce that Ted Nissly has joined our team! Ted is an associate whose practice focuses on the preparation and prosecution of patent applications relating to automotive, computer hardware and software, telecommunications, and e-commerce technologies. Ted received his Bachelor’s of Applied Science from the University of Pennsylvania and his Juris Doctorate from Washington University School of Law. He is a member of AIPLA, IPO, and the Giles S. Rich American Inn of Court for the Federal Circuit.

To learn more about Ted and the rest of our team, please visit https://harrityllp.com/team/.

 

 

Ryan Thelen Joins the Firm

We’re excited to announce that Ryan Thelen has joined our team as an associate.  His practice focuses on the preparation and prosecution of electrical, mechanical, and computer technologies. Prior to joining Harrity, Ryan worked in-house where he gained extensive experience in patent portfolio management, product clearance, invention disclosure mining, infringement analysis, and post-grant proceedings before the Patent Trial & Appeal Board.

To learn more about Ryan and the rest of our team, visit https://harrityllp.com/team/.

Harrity Blog

Steven E. Berkheimer v. HP Inc.

By Kenneth Kwan

March 28, 2018- In Steven E. Berkheimer v. HP Inc., 2017-1437 (Fed. Cir. Feb. 8, 2018), the Federal Circuit affirmed the district court’s summary judgment that claim 1 (among other claims) of U.S. Patent No. 7,447,713 (the ’713 Patent) is patent-ineligible under 35 U.S.C. 101, but reversed the district court’s summary judgment that claims 4 and 5 (among other claims) of the ’713 Patent are patent‑ineligible.

The ’713 Patent is directed to archiving files.  Different files can have portions (objects) that are the same.  A main aspect of the invention in the ’713 Patent is to archive files by linking the objects (that are in common) to one another, such that an update to one of the objects of one file can be reflected in linked objects of other files.

The specification of the ’713 Patent provides the following:

By eliminating redundancy in the archive 14, system operating efficiency will be improved, storage costs will be reduced and a one-to-many editing process can be implemented wherein a singular linked object, common to many documents or files, can be edited once and have the consequence of the editing process propagate through all of the linked documents and files. The one-to-many editing capability substantially reduces effort needed to up-date files which represent packages or packaging manuals or the like as would be understood by those of skill in the art.

Claims 1, 4, and 5 of the ’713 Patent read:

  1. A method of archiving an item comprising in a computer processing system:

presenting the item to a parser;
parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;
evaluating the object structures in accordance with object structures previously stored in an archive;
presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

  1. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.
  2. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

The Federal Circuit found that claim 1 is not patent eligible under 35 U.S.C. 101, since parsers and parsing functions are conventional in the art, the analysis and comparison of data, to reconcile differences between two objects, fail to transform the abstract idea into something patent-eligible, and the claim does not contain limitations that relate to the benefits of the invention.

In contrast, the Federal Circuit found that dependent claims 4 and 5 may be patent eligible, since these claims contain limitations relating to the benefits of the invention—i.e., the recitation “without substantial redundancy” in claim 4 and the recitation “to thereby effect a one-to-many change in a plurality of archived items” in claim 5 relate to the benefit of redundancy elimination, which leads to increased operating efficiency and reduces storage costs.

This opinion illustrates the potential importance of including claim limitations that directly relate to the technological improvements described in the patent’s specification, since this might help with the question of subject matter eligibility (particularly Step 2 of the Alice test).

Download Steven E. Berkheimer v. HP Inc.

Top Patent Firms 2018

Top Patent Firms List 2017

By Paul Harrity, Rocky Berndsen, Jaclyn Jones & Matthew Maslink

Harrity Patent Analytics compiled a list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2017 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtained at least 50 utility patents. We made an attempt to correct for typographical errors. We did not eliminate company legal departments from the list.

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Top Patent Firms Badge 2017, Harrity

Harrity State of the Firm 2018

Harrity & Harrity Holds its Annual State of the Firm Meeting

On Friday, February 9, the Harrity Team came together from across the country to attend this year’s State of the Firm Address.  This is a time for our team to come together to look back on last year’s accomplishments, to learn about our goals for the coming year, and to recognize members of our staff for their accomplishments.

This year Harrity created a special award for the team member who has gone above and beyond their normal job duties.  This year the Harrity Cup was presented to Jazmine Hitt.  John Harrity says of Jazmine, “she’s a patent prosecution assistant, diversity coordinator, and she was in the UNICEF video.  She’s done an outstanding job from the second she walked in the doors and through the end of last year and continuing on obviously this year.  It was a unanimous decision.”

Tim Hirzel Harrity Team

Finjan, Inc. v. Blue Coat Systems, Inc.

By Timothy Hirzel

February 9, 2018- In Finjan, Inc. v. Blue Coat Systems, Inc., 2016-2520 (Fed. Cir. Jan. 10, 2018), the Federal Circuit found that claims of U.S. Patent No. 6,154,844 (‘844 patent) were directed to patent eligible subject matter under 35 U.S.C. § 101 (“101”).  This opinion provides insight on how the first step of Alice’s two-step test is applied and provides an example of claims that are not “directed to” an abstract idea under Step 1 of the Alice test.

A jury found Blue Coat infringed the ‘844 patent owned by Finjan and the District Court held, as a matter of law, that the ‘844 patent was patent eligible under 101.  Blue Coat appealed the subject-matter eligibility decision under 101 to the Federal Circuit.

The ‘844 patent recites a system and method for providing computer security by attaching a security profile to a downloadable (i.e., an executable application program).  Representative claim 1 of the ‘844 patent reads:

  1. A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

The Federal Circuit applied Alice’s two-step test and reiterated that under Step 1, the court determines whether the claims at issue are “directed to” a patent-ineligible concept, such as an abstract idea.  If they are, the court proceeds to Step 2 and determines whether the additional elements of the claims transform the nature of the claim into a patent-eligible application.

Starting at Step 1, the Federal Circuit first examined the ‘844 patent’s “claimed advance” to determine whether the claims are directed to an abstract idea or whether the claims focus on a specific asserted improvement in computer capabilities.  During claim construction, the “identif[y] suspicious code” feature was construed to be only satisfied if the security profile includes “details about the suspicious code in the received downloadable such as ‘all potentially hostile or suspicious code operations that may be attempted by the Downloadable.’”  Importantly, the Federal Circuit further stated that “[t]he security profile must include the information about potentially hostile operations produced by a ‘behavior-based’ virus scan,” as opposed to “code-matching” virus scans.  The question under Step 1 then became whether this behavior-based virus scan in the ‘844 patent constitutes an improvement in computer functionality.

The Federal Circuit determined the behavior-based virus scan was in fact an improvement to computer functionality.  Behavior-based scans are not limited to recognizing the presence of previously-identified viruses like code-matching scans.  Accordingly, the behavior-based scans can be used to protect against previously unknown viruses as well as “obfuscated code” known virus that attempt to avoid detection by code-matching scans.  Moreover, the Federal Circuit found that claim 1 “employs a new kind of file that enables a computer security system to do things it could not do before.”  For example, the security profile approach allows administrators to tailor access for different users and ensures potential threats do not reach a user’s computer.

The Federal Circuit distinguished this case from Intellectual Ventures v. Symantec Corp., which held virus screening by itself constitutes an abstract idea, because the claimed method in the ‘844 patent “does a good deal more” than conventional approaches to virus screening.  The Federal Circuit also distinguished the ‘844 patent from other cases that have held a result, even an innovative result, is not itself patentable because the ‘844 claims recite more than just the desired result.  Instead, the claims recite specific steps to accomplish the desired results, such as generating a security profile that identifies suspicious code and linking it to a downloadable.

Accordingly, the Federal Circuit found the claims of the ‘844 patent not to be abstract and affirmed the District Court.  Because the claims were not abstract, the Federal Circuit found no need to proceed to Step 2 of Alice.

This opinion illustrates the importance to subject matter eligibility under 101 of tying the claims to the asserted technical advance.  In this case, the advance was a new type of file that enabled new capabilities in a computer that could not be performed before.  This opinion also shows that claims should be drafted to do more than simply recite the desired result of the invention, but actually, recite specific steps to accomplish that result.  This opinion further illustrates the importance of claim construction because even though the claims did not recite “behavior-based” virus scanning, this feature was read into the claims and became an important factor in determining whether the claims constituted an improvement to computers.  Rather than relying on a court’s hopefully beneficial claim construction, patent applicants should carefully draft claims to capture necessary features to illustrate the technical improvement or advance.

Download Finjan v. Blue Coat.

Harrity Announces its First Women’s Workshop

We’re excited to announce that Harrity will be holding its first Women’s Workshop this spring from May 21-23! This workshop includes presentations from some of the most successful women in Intellectual Property, and hands-on patent training from our firm’s attorneys. This workshop is open to any woman currently enrolled in an ABA-accredited law school and recent graduates. For more information, visit our website.

William Gvoth Harrity Team

Two-Way Media LTD v. Comcast Cable Communications, LLC, et al.

By William Gvoth

January 23, 2018 – In Two-Way Media LTD v. Comcast Cable Communications, LLC, et al., 2017 U.S. App. LEXIS 21706 (Fed. Cir. Nov. 1, 2017), the Court of Appeals for the Federal Circuit found that claims of various patents owned by Two-Way Media LTD were directed to ineligible subject matter under 35 U.S.C. § 101 (“101”).

This opinion provides insight into how claims may be construed and how this might impact an analysis of the claims under 101.

Four continuation patents were at issue: 5,778,187 (’187 patent), 5,983,005 (’005 patent), 6,434,622 (’622 patent), and 7,266,686 (’686 patent).  The patents relate generally to a system for streaming audio/visual data over a communications system like the Internet.  Claim 1 of the ’187 patent is representative of all the claims of the ’187 patent and the ’005 patent; claims 1 and 29 are representative of the ’622 patent; and claims 1, 22, 26, and 30 are representative of the ’686 patent.

As an example, and at a high level, claim 1 of the ’187 patent is generally directed to a method for:

  • Converting a plurality of streams of data into a plurality of streams of addressed digital packets;
  • Controlling the routing of the stream of packets in response to selection signals; and
  • Monitoring receptions of packets by the users and accumulating records.

The other representative claims are directed to similar methods or to systems with means plus function claiming similar to the previously described claim.

The common specification describes the invention as a scalable architecture for delivering real-time information (e.g., a distribution architecture integrated with a control architecture).  Embedded in the architecture is a control mechanism that provides for the management and administration of users who are to receive real-time information.  The specification also describes monitoring network conditions and generating records about real-time streams.

The Federal Circuit first analyzed the ’187 and ’005 patents.  Under Step 1 of the Alice test – the district court found that the claims of these patents are directed to the abstract idea of 1) sending information, 2) directing the sent information, 3) monitoring the receipt of the sent information, and 4) accumulating records about receipt of the sent information.  In analyzing this determination, the Federal Circuit stated that “claim 1 recites a method for routing information using result-based functional language…but does not describe how to achieve these results in a non-abstract way.”  Further, the Federal Circuit rejected proposed claim constructions, offered by Two-Way Media, that the claims are tied to the network architecture described in the specification.  In rejecting the proposed claim constructions, the Federal Circuit stated that the “constructions recite only conventional computer components.”

After affirming the analysis of the district court under step 1 of the Alice test, the Federal Circuit analyzed these claims under step 2 of the Alice test.  Under step 2, the district court “found no saving inventive concept” in the claims.  Although the district court acknowledged that the specification describes “a system architecture as a technical innovation,” the claim is not tied to the described architecture.  The Federal Circuit rejected Two-Way Media’s assertions that the “claim solves various technical problems” because the claim recites generic functional language to solve these problems.  In addition, the Federal Circuit stated that the claim does not require anything other than conventional technology and that the claim merely recites a conventional ordering of steps.

After analyzing the ’187 and ’005 patents, the Federal Circuit analyzed the ’622 patent and ’686 patent under the Alice test.  For these patents, the district court concluded that the ’622 patent was directed to “the abstract idea of monitoring the delivery of real-time information to a user…and that the ’686 patent was directed to the abstract idea of measuring the delivery of the real-time information for commercial purposes.”  It is worth noting that the district court, in part, based its conclusion on the preamble of the claims at issue.  The Federal Circuit found no error in the district court citing the preamble in its review.  The Federal Circuit then concluded that the claims are “directed to monitoring the delivery of real-time information to user(s) or measuring such delivery for commercial purposes.”

Under step 2 of the Alice test, the Federal Circuit reviewed the district court’s finding that the claims of the ’622 and ’686 patents did not contain an inventive concept.  Similar to the claims discussed above, the Federal Circuit disagreed with the argument that the district court failed to account for the system architecture and failed to give weight the “nonconventional arrangement of components” of the system architecture.  The Federal Circuit agreed with the district court, stating that the claims do not include an inventive concept.  For example, the claims recite use of an “intermediate computer” and an “intermediate server.”  The Federal Circuit stated that these components are “conventional computer and network components operating according to their ordinary functions.”  Further, the Federal Circuit stated that the steps of the claims “are organized in a completely conventional way – data are first processed, sent, and once sent, information is recorded” and “fail to describe a ‘specific, discrete implementation of the abstract idea’ sufficient to qualify for eligibility under 101.”

One of the main takeaways from this opinion is that even though the specification of the patents at issue arguably recited a novel concept (e.g., a novel system architecture), the claims were not tied sufficiently to that novel concept.  This opinion highlights the importance of the relationship between the claims and the specification with regard to a 101 analysis.  It shows that it may be difficult to argue that broad terms used in the claims are tied to novel concepts described in the specification, unless those broad terms are explicitly, or very clearly, tied to the novel concepts.  For example, for purposes of a 101 analysis and with regard to this opinion, reciting generic devices in the claims, such as an “intermediate server” or an “intermediate computer,” may not sufficiently tie the claims to a novel system architecture described in the specification unless the specification or the claims describe the relationship between the terms and the novel concepts.

Download Two-Way Media LTD v. Comcast Cable Communications, LLC, et al. 

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