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.
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.
By Ken Hartmann
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.
By Elaine Spector, October 28, 2018
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.
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
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!
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.
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
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.com, Patentprufer, 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.
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.
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.
By Nathan Phares and Kenneth Hartmann
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.
By Eli Mazour and So Ra Ko
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!
Find the full Clause 8 podcast interview available here https://www.clause8.tv/ or via your favorite podcast app.
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.
September 4, 2018- Case Summary of SAP America, Inc. v. InvestPic, LLC
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.
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.
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.
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