Dissecting Dissents for Ex Parte Appeals

By Eli Mazour and So Ra Ko, September10, 2018 – Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge.

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

READ MORE>

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

By Rebecca Bachner

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.

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

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

By Peter Glaser and So Ra Ko

August 22, 2018- Case Summary of Vivint, Inc. v. Alarm.com Inc.

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

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

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

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

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

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

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

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

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

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

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

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

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

By Matthew Allen

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

By Kris Rhu

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

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

Claim 2 of the ’691 patent recites:

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

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

Claim 19 of the ’443 patent recites:

  1. A device capable of executing software comprising:

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

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

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

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

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

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

 

Download Summary of Zeroclick LLC. v. Apple Inc. 

Case Summary of Medtronic, Inc. v. Barry

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Download Medtronic, Inc. v. Barry.

Case Summary of Vanda Pharma v. West-Ward Pharma

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

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

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

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

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

Comparison of Vanda to Mayo claims

Vanda

Mayo

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

Analysis

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The specification of the Emanuel PCT reads in relevant part:

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

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

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

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

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

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

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

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

Steven E. Berkheimer v. HP Inc.

By Kenneth Kwan

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

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

The specification of the ’713 Patent provides the following:

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

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

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

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

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

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

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

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

Download Steven E. Berkheimer v. HP Inc.

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

By Timothy Hirzel

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

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

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

  1. A method comprising:

receiving by an inspector a Downloadable;

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

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

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

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

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

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

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

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

Download Finjan v. Blue Coat.

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

By William Gvoth

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

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

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

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

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

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

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

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

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

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

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

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

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

Changes in Patent Language to Ensure Eligibility Under Alice

By Peter Glaser and William Gvoth

December 6, 2017- When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice.

*Please note, citations were inadvertently omitted from the original publication of this article. Please contact the authors, directly, to obtain a version of this article including citations*

READ MORE>

Trading Technologies International, Inc. v. CQG, Inc.

By William Gvoth

November 16, 2017- Trading Technologies International, Inc. v. CQG, Inc. relates to abstract ideas under § 101.  In Trading Technologies, two patents were at issue: U.S. Patent Nos. 6,772,132 (’132) and 6,766,304 (’304) (referred to collectively as “patents”).  These patents shared a common specification and related to a method and a system for electronic trading of stocks, bonds, futures, options and similar products.  The patents describe a problem that arises when a trader attempts to enter an order at a particular price but misses the price because the market moved before the order was entered.  The patents describe implementations that reduce the time it takes for a trader to place a trade when electronically trading on an exchange and that improve the way information is displayed to the trader.  For example, the implementations display market depth, which moves visually up/down and left/right as the market for a product fluctuates.  In addition, the implementations described in the patents permit a user to place an order for a product via a click on a user interface.

Trading Technologies appealed, to the Federal Circuit, the decision of the District Court for the Northern District of Illinois (District Court), finding that the patents were directed to patent-eligible subject matter under the two step test from Alice Corporation Pty. Ltd. v. CLS Bank International (Alice), 573 U.S., 134 S. Ct. 2347 (2014).  The Federal Circuit affirmed.

To analyze the patent eligibility of the patents, the Federal Circuit selected claim 1 of the ’304 patent as the representative claim.  At a high level, claim 1 of the ’304 patent was directed to “a method for displaying market information relating to and facilitating trading of a commodity being traded in an electronic exchange…on a graphical user interface” that comprised dynamically or statically displaying various information and submitting a trade based on a user selection of a portion of the user interface.

The Federal Circuit analyzed the District Court’s analysis of the representative claim under the two step test from Alice.  Under the first step, the Federal Circuit reviewed, and agreed with, the District Court’s findings that the patents solve problems of prior graphical user interface devices used for computerized trading.  Specifically, the Federal Circuit stated that “the patents describe a trading system in which a graphical user interface ‘display[s] the market depth of a commodity traded in a market” including various static and dynamic displays and this graphical user interface solves “‘problems of prior graphical user interface devices…relating to speed, accuracy and usability.’”  Further, the Federal Circuit referenced the District Court’s findings that “the challenged patents do not simply claim displaying information on a graphical user interface” but rather “require a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art.”  Based on the reasons stated by the District Court, the Federal Circuit agreed that the patents presented patent-eligible subject matter.

The Federal Circuit then analyzed the District Court’s analysis of the representative claim under the second step of the test from Alice and concluded that the District Court correctly “determined that the challenged claims recite an ‘inventive concept.’”  The Federal Circuit agreed with the District Court’s identification of the feature of “the static price index as an inventive concept” that permits more efficient and accurate trade placement when using electronic trading systems.  In addition, Federal Circuit agreed with the District Court’s distinction of the trading system from a conventional computer or the Internet based in part on the idea that the trading system presents “specific technologic modifications to solve a problem or improve the functioning of a known system.”

One of the main takeaways from the Federal Circuit’s analysis is that the claimed graphical user interface addresses specific problems with prior art graphical user interfaces in electronic trading.  In other words, the claimed invention includes an improvement to the functioning of technology and steps that address a specific problem.  This decision highlights the importance of framing a problem solved by an invention in technical terms and then presenting claims that solve the problem.

Download Trading Technologies International V CQG Inc.

Practice Insights in the Wake of Sonix Technology Co., LTD., v. Publications International, LTD

By Kris Rhu

October 30, 2017-  In Sonix Technology Co., LTD., v. Publications International, LTD (Fed. Cir. Jan. 5, 2017), the Federal Circuit found that the term at issue in U.S. Patent No. 7,328,845, i.e. “visually negligible,” did not render the asserted claims indefinite under 35. U.S.C. § 112, second paragraph.

The decision provides insight into how terms of degree in claims are treated and how the specification can be useful in providing an objective baseline in interpreting such terms.

The ‘845 patent of Sonix is directed to using a graphical indicator (e.g. a matrix of small dots) to encode information on the surface of an object, and an optical device that can read the graphical indicator and output additional information.  An example application is a children’s book with icons, where if one scans an icon (e.g. a horse) with the optical device, the book will output a sound (e.g. pronunciation of “horse”).  The patent admits that encoding graphical indicators is not new (e.g. barcode on a book cover), but the invention is an improvement over conventional methods because it renders the graphical indicators “visually negligible.”

The district court granted summary judgment against Sonix finding the patent invalid as being indefinite.  Particularly, the district court found the term “visually negligible” in the claim as indefinite under 35. U.S.C. § 112, second paragraph because the term was “purely subjective” and because the claim language provides no guidance on its meaning.  The court also determined that the specification does not provide a person of ordinary skill in the art “with a meaning that is reasonably certain and defines objective boundaries” of the claim scope.

On appeal, Sonix argued that the requirements and examples in the specification would have allowed a skilled artisan to know the scope of the claimed invention with reasonable certainty and establish that the term depends on human perception, not opinion.  They argued that this was consistent throughout the initial examination and reexamination processes.  Publications argued that there is no objective standard to determine whether something is “visually negligible” because it depends on the vagaries of a person’s opinion.

The Federal Circuit agreed with Sonix and reversed the district court, citing Enzo Biochem, Inc. v. Applera Corp., 599 F. 3d 1325, 1336 (Fed. Cir. 2010), where the court found that the clause “not interfering substantially” did not render a claim indefinite because the intrinsic evidence provided examples for non-interfering structures and criteria for their selection.  Thus, sufficient guidance was given to allow a skilled artisan to compare a potentially infringing product with examples from the specification to determine whether interference is “substantial.”

The court also cited Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d 1342, 1348-1349 (Fed. Cir. 2005), where the court found the term “aesthetically pleasing,” with respect to a look and feel for interface screens, indefinite because the specification provided no guidance to a person making aesthetic choices.  Without any guidance, a determination of whether something is “aesthetically pleasing” was completely dependent on a person’s subjective opinion.

The court further cited Interval Licensing, LLC v. AOL, Inc., 766 F .3d, 1364, 1368 (Fed. Cir. 2014), where the court found displaying content “in an unobtrusive manner that does not distract a user” indefinite because the single example in the specification without more information leaves the skilled artisan to wonder what other forms of display are unobtrusive and non-distracting.  This leaves the skilled artisan to consult the “unpredictable vagaries of any one person’s opinion.”

Here, the Federal Circuit found that the term “visually negligible” does not depend on a person’s taste or opinion, but rather depends on whether something can be seen by the normal human eye.  The court found that this provides an “objective baseline” to interpret the claim, and thus, is not “purely subjective” even though it may be a term of degree.  When turning to the specification to determine whether there is some standard for measuring visual negligibility, the court found that the specification 1) has a general exemplary design for a visually-negligible indicator, 2) states “requirements for the graphical indicators [to be] negligible to human eyes”, and 3) contains two specific examples of visually negligible indicators.  Thus, the court found the existence of examples in the specification distinguishes this case from Datamize, and the existence of an additional example and specific requirements distinguishes the case from Interval Licensing.  The court also found the level of detail in the specification to be closer to that provided in Enzo because it provided guidance on how to create visually negligible indicators and specific examples that provide points of comparison for the result.  Further, the court found that Publications had not provided evidence that human perception varies so significantly that reliance on it as a standard renders the claim indefinite, noting that no one involved in the first or second reexamination had any difficulty in determining the scope of the term “visually negligible.”

The Federal Circuit made one final point about how their holding in this case does not necessarily mean that “the existence of examples in the written description will always render a claim definite, or that listing requirements always provide sufficient certainty.”  The court indicated that they simply held that “visually negligible” is not purely a subjective term and that the written description and prosecution history provided sufficient support to inform with reasonable certainty those skilled in the art of the scope of the invention.

Going forward, the decision provides some instruction regarding potential patent drafting strategies with regard to terms of degree.  For example, the decision highlights the importance of providing sufficient requirements and examples in the written description so that sufficient guidance is provided to those skilled in the art for interpreting such terms.

Download Practice Insights in the Wake of Sonix Technology Co., LTD., v. Publications International, LTD.

Practice Insights in the Wake of Visual Memory LLC v. NVIDIA Corp.

By Sean Quinn & Peter Glaser

August 25, 2017- In Visual Memory LLC v. NVIDIA Corp. (Fed. Cir. Aug. 15, 2017), a divided panel at the Federal Circuit determined that U.S. Patent No. 5,953,740 is not directed to an abstract idea.

The decision provides a positive result in the context of software-based inventions, and provides a few insights regarding potential patent drafting strategies.  Namely, the decision highlights the importance of focusing the specification on improvements to hardware components, and bolsters the importance of mentioning technical benefits wherever appropriate.  

The ‘740 patent teaches a memory system having programmable operational characteristics that are capable of being configured for use with multiple different types of processors without causing a reduction in performance ostensibly present in the prior art computer systems.  This enables the memory system to be used efficiently with multiple types of processors, rather than only with a single type of processor.  Further, the ‘740 patent claims a computer memory system comprising a main memory, a cache, and programmable operational characteristics that determine a type of data stored by the cache.

On appeal from a district court’s grant of NVIDIA’s motion to dismiss based on the asserted claims being directed to patent -ineligible subject matter, Judge Stoll, writing for the majority, stated that “[courts] must articulate with specificity what the claims are directed to (citing Thales Visionix Inc. v. United States),” and “ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea (citing Enfish LLC v. Microsoft).”  (Opinion at 7).

Using Enfish and Thales as guidance, the majority stated that the ‘740 patent’s claims are directed to an improved computer memory system rather than to an abstract idea of categorical data storage and  mentioned that claim 1 of the ‘740 patent requires a memory system “having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor,” and “determin[ing] a type of data stored by said cache.”  (Opinion at 9).  Further, the  majority stated that dependent claims 2 and 3, respectively, narrow the memory system’s programmable operational characteristic to storing certain types of data and buffering data from certain sources and that none of the claims recite all types and all forms of categorical data storage.

The majority noted that the ‘740 patent’s specification mentions various technical benefits associated with the memory system, such as permitting different types of processors to be installed with the subject memory system without significantly compromising their individual performance, obviating the need to design a separate memory system for each type of processor, avoiding the performance problems of prior art memory systems, enabling interoperability with multiple different processors, and outperforming prior art memory systems having larger cache sizes.

Analogizing the ‘740 patent to the self-referential table in Enfish and the motion tracking system in Thales, the majority noted that the ‘740 patent’s claims are directed to a technological improvement and focus on a specific asserted improvement in computer capabilities rather than a process that qualifies as an abstract idea for which computers are invoked merely as a tool.  Further, the majority noted that the specification of the ‘740 patent discusses the advantages offered by the proffered technological improvement.  

Juxtaposing the ‘740 patent and the claims in Content Extraction & Transmission LLC v. Wells Fargo Bank and In re TLI Communications LLC Patent Litigation, the majority noted that the ‘740 patent recites an ostensibly new, improved, and more efficient memory system as opposed to claims that are not directed to an improvement in computer functionality and cover abstract ideas operating on generic hardware.

In dissent, Justice Hughes posited that the ‘740 patent fails to describe how the invention’s purpose is achieved, fails to describe how to implement the programmable operational characteristic, requires a third party to supply the innovative programming, and, as such, is not properly described as being directed to an improvement in computer systems.

In response, the majority identified three flaws with Justice Hughes’s posit.  

First, the majority noted that the ‘740 patent includes an appendix having 263 frames of code, and noted that the assumption that the code does not teach a person of ordinary skill in the art was improper at the stage of reviewing a Rule 12(b)(6) motion, where all factual inferences must be drawn in favor of the non-moving party.

Second, the majority noted that the question of whether a patent specification teaches a person of ordinary skill in the art how to implement the claimed invention presents an enablement issue under 35 U.S.C. § 112 rather than an eligibility issue under § 101.  Further, the majority noted that the implementation details regarding how to configure a programmable operational characteristic may very well fall within the routine knowledge of persons having ordinary skill in the art and, as such, may have been permissibly omitted.  

Third, the majority noted that Justice Hughes’s assumption that the innovative effort in the ‘740 patent lies in the programming required for a computer to configure a programmable operational characteristic of a cache memory was misplaced.  In support, the majority noted that the assumption was inconsistent with the ‘740 patent’s specification and claims, which expressly state that the improved memory system is achieved by configuring a programmable operational characteristics of a cache memory based on the type of processor connected to the memory system.

In closing, the majority refrained from proceeding to step two of the Alice test because of the finding that the claims of the ‘740 patent are not directed to an abstract idea.   

Going forward, the decision provides some instruction regarding potential patent drafting and prosecution strategies regarding software-based inventions and § 101 issues.  For example, the decision highlights the importance of directing the specification and claims to improvements in computer systems, and the importance of mentioning technical benefits provided by the invention wherever feasible.  Moreover, the case highlights a distinction that can be drawn between enablement and eligibility.

Download Practice Insights in the Wake of Visual Memory LLC v. NVIDIA Corp.

 

Diversity: An Interview With John Harrity

By Mauricio Velásquez, MBA

August 7, 2017- At a recent Association of Legal Administrators, Washington, D.C. Chapter meeting, John Harrity, Managing Partner of Harrity & Harrity, spoke about his firm’s Diversity and Inclusion initiative. Harrity & Harrity is an innovative boutique patent law firm based in Fairfax, VA. When asked about his firm’s commitment to Diversity and Inclusion, he explained, “We believe that the ‘practice of law’ is advanced by a more diverse legal team – with diversity of background, upbringing, education, and perspective comes quality legal innovation. At Harrity & Harrity, we are committed to The Supersized Rooney Rule. This is a hiring practice that shows our firm’s commitment to diversity and inclusion is something that we take seriously; it’s something we’re very proud of.”

The Rooney Rule is a National Football League policy that requires league teams to interview minority candidates for head coaching and senior football operation jobs. But there was a flaw – the football team only had to interview at least one minority candidate for an NFL coach opening but could interview an unlimited number of other candidates. “The Rooney Rule is just not going far enough,” Mr. Harrity said, “we wanted to go much further and so we decided that for every opening – attorney or non-attorney – we are committed to interviewing a female or minority candidate for every male, non-minority candidate we interview.”

After his presentation, I asked Mr. Harrity what sort of benefits his current team could expect to see from their diversity efforts. “We are creating and nurturing a workplace culture that is inclusive, values differences, and is authentic, and we want our team to know we really care about them, their well-being, and their future. This will make us the patent law firm employer of choice. We are looking for good people from all backgrounds to help our team grow and to help us become the number one patent law firm.”

There has been recent press about the Mansfield Rule. This rule, introduced in 2016, requires that women and minorities comprise at least 30 percent of the candidates for leadership and governance roles, equity partner promotions, and lateral positions in law firms. Again Mr. Harrity countered, “Just like the Rooney Rule, we don’t think the Mansfield Rule goes far enough.”

Sandra Maxey, Chief Diversity Officer at Harrity & Harrity told me that “making the commitment is one thing, executing the everyday work of finding, hiring, and retaining divers talent is the real challenge. We are fully committed to diversity and inclusion at our firm.”

For more information about Harrity & Harrity’s Diversity Program, please visit their website (www.harrityllp.com/diversity). Please join Harrity & Harrity and the ranks of other law firms in implementing the Supersized Rooney Rule.

Mauricio Velásquez, MBA, is President and CEO of the Diversity Training Group based in Herndon, VA. He can be reached at 703-478-9191 or mauriciov@diversitydtg.com. DTG is in our 21st year of operation.

Diversity Semi

Editor’s Note: The Supersized Rooney Rule was created in 2015 by the Diversity Committee at Harrity & Harrity, LLP. For a brief period in 2017, it was known as The Harrity Rule, however, after careful consideration, the name was changed back.

 

 

Unmanned Aerial Vehicle Patents: A Survey

By Peter Glaser, July 26, 2017- Although many think of unmanned aerial vehicles (UAVs) or “drones” as a modern development, UAVs have an extensive history dating back to the original development of lighter-than-air flight.  Initial attempts were limited by the technology of the age – an attempt by the Austrian empire to launch balloon bombs against the Venetian state failed when a shift in wind resulted in the balloon bombs returning toward the Austrian troops.  Early engineering efforts to support unmanned aerial flight included the development of radio-based remote control by Serbian-American Nikola Tesla, an “Aerial Target” developed in 1916-17 by Englishman Archibald Low, and an “AutomaticAirplane” developed in 1916-18 by Americans Elmer Sperry and Peter Cooper Hewitt.  Early attempts often ended in failure – Low’s Aerial Target crashed during all three test flights before being abandoned; Sperry and Hewitt’s Automatic Airplane successfully completed a single successful test flight of 1000 feet, but all completed test airframes were destroyed in subsequent crashes resulting in abandonment.

READ MORE >

John Harrity Speaks About Successful Diversity Initiatives at ALA Diversity Panel

On June 15, 2017, John Harrity, Managing Partner and Diversity Partner of Harrity & Harrity, spoke on a diversity panel hosted by the Association of Legal Administrators. Mauricio Velasquez, of Diversity Training Group, began the program with a presentation on the importance of diversity and inclusion in the legal field, and lack thereof.

Kendal Tyre, Partner at Nixon Peabody, discussed diversity initiatives within his firm.  At Nixon Peabody, associates, partners, and support staff, are expected to commit 40 hours annually to diversity initiatives.  Diversity initiatives can include meeting with an affinity group, attending diversity seminars, and attending recruiting functions.  These practices can improve firm morale and maintain a positive culture at the firm.

John Harrity’s presentation focused on internal diversity initiatives and the results that the firm has seen since their launch in 2015.  Despite having a diverse support staff, it is difficult to recruit women and minority patent attorneys.  To change this, Harrity & Harrity has taken the following steps to recruit women and minorities. The first step was initiating the Harrity Rule, which is a supersized version of the Rooney Rule. The Harrity Rule means that we are committed to interviewing a female or minority candidate for every male, non-minority candidate we interview for any position at our firm.  The firm began hiring for reduced hours and remote work positions.  The firm also started a 1L Diversity Fellowship in 2016 and launched the first Diversity Summer Workshop in 2017.

Since the launch of our diversity initiatives in 2015, Harrity & Harrity has hired seven new attorneys, four of whom are considered diverse by the EEOC Diversity Scorecard.  Across the firm as a whole, there have been 18 new hires in the past two years, 12 of whom are considered diverse.

John Harrity says of the seminar, “This was a great opportunity to not only talk about our diversity initiatives, but to share ideas and learn new skills from other firms, as well.  I strongly believe that cultivating a highly diverse firm is one of the keys to success, and I look forward to working towards this goal.”

Harrity & Harrity Launches it’s First Annual Diversity Summer Workshop

Harrity & Harrity wrapped up the 2017 Harrity Diversity Summer Workshop on Friday, May 26.  The workshop brought together ten engineering students, law students, and recent law school graduates to learn the skills involved in being a patent attorney.  During the workshop, participants had an opportunity to learn about patent preparation and patent prosecution, as well as receive mentorship from associates and partners at Harrity & Harrity.

Participants also had opportunities to hear perspectives from attorneys in other positions throughout the country.  Teresa Rea, former acting director of the USPTO, met with participants and provided advice about forging a career as a patent attorney, balancing life and work, and government service.  Similarly, Allen Lo, Deputy General Counsel for Patents at Google, and Courtney Holohan, Chief IP Counsel at Accenture, gave tips for succeeding as an attorney and navigating career paths and opportunities.  Participants ended the week receiving hands on advice on crafting their resumes and cover letters, practicing mock interview skills, and traveling with Harrity & Harrity attorneys and support staff to see a Washington Nationals game.

Sandra Maxey, Chief Diversity Officer, says of the workshop, “This week was an incredible success, and we hope to start looking for participants for our 2018 workshop soon to help diverse students with an interest in the patent field gain the skills to succeed as private practice attorneys, patent examiners, and in-house counsel.”

 

Diversity Workshop Participants at Nationals Park

Eli Mazour Launches Clause 8 – An Online Video Interview Series Starting With Paul Michel

April 26, 2017 – Eli Mazour launched a new online video series, Clause 8, that will feature video interviews with prominent members of the IP community. IPWatchdog.com published an article highlighting the details of the first interview. 

His first interview is with former Chief Federal Circuit Judge Michel. During the interview, Judge Michel talks about his personal story and shares his thoughts about America’s patent system, patent eligibility, and the PTAB. He also provides great advice to those in, or thinking about being in, the IP field.

Please check it out and sign up to be notified about future interviews! www.clause8.tv

 

Clause 8 Logo

Is It Really That Obvious? A Tale of Two Decisions

By William Gvoth & Paul Gurzo April 9, 2017- On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, Imran Chaudhri, No. 2015-1975 (Fed. Cir. 2017) (Van Os) and In re: Ethicon, Inc., No. 2015-1696 (Fed. Cir. 2017) (Ethicon).  This article will tell the tale of these two decisions as well as highlight some of the questions that these decisions raise.

READ MORE >

 

 

Analysis of December 2016 USPTO Subject Matter Eligibility Examples

By Kris Rhu & Paul Gurzo

March 20, 2017- On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims, which can be found here.  The purpose of these examples is to give guidance on how claims should be analyzed using the 2014 Interim Guidance on Subject Matter Eligibility, recent Supreme Court and Federal Circuit decisions, and recent Memorandums published by the USPTO.  These examples seem to indicate that the power of §101 to restrict patentability has been whittled down since Alice and that the USPTO would like to reduce the number of §101 rejections for technological claims in light of court decisions post-Alice.  Below, we describe each example provided by the USPTO, explain the USPTO guidance for each example, and provide practical practice tips that practitioners can use to help reduce or overcome §101 rejections.

READ MORE >

Top Patent Firms for 2016

By Paul Harrity & Anna Yee (Originally published by IP Watchdog)

We compiled a list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2016 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtained at least 50 utility patents. We made an attempt to correct for typographical errors. We did not eliminate company legal departments from the list.

For the list from last year see: Top Patent Firms for 2015.

READ MORE >

 

Alice on Dulany Street: How the PTAB Handles 101 in Ex Parte Appeals

By Eli Mazour & James Bennin

February 15, 2017- “The outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection.”

Previously, we analyzed ex parte appeal decisions by the Patent Trial and Appeal Board (PTAB) from the year following the Alice v. CLS Bank decision. At the time, we concluded that the PTAB is unlikely to reverse § 101 rejections based on Alice. We decided to revisit this conclusion based on ex parte appeal decisions from December 2016.

READ MORE >