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.
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/.
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.
January 9, 2019 – In-depth Summary of USPTO Revised Guidance on Subject Matter Eligibility
The PTO released their highly anticipated revised guidance on subject matter eligibility that take effect on January 7, 2019. 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 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.
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.
January 9, 2019 – Summary of USPTO Revised Guidance on Subject Matter Eligibility
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.
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.
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.
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.
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.
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).
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.
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.
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.
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.
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.
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.
November 5, 2018- Case Summary of Data Engine Technologies LLC v. Google LLC
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.
Elaine Spector on the 2018 AIPLA Annual Meeting and the Women in IP Law Breakfast
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.
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!
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.
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.
Eli Mazour is moderating an ABA Landslide Webinar on surviving Alice using big data. Join Eli on Tuesday, October 16th to learn how to utilize big data solutions in your practice to understand and address Alice 101 rejections, and increase the likelihood that a successful approach is taken.
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.
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.
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.
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.
September 2018 – Creativity in Enhancing the Quality and Size of Patent Portfolios
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.
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.
September 10, 2018, Dissecting Dissents for Ex Parte Appeals
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.
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!