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Colleen Chien at the Federal Trade Commission

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

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

 

Harrity BlogHarrity Blog

Nathan Phares and Kenneth Hartmann Published in Landslide Magazine

By Nathan Phares and Kenneth Hartmann
September 2018 – Creativity in Enhancing the Quality and Size of Patent Portfolios

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

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Eli Mazour Harrity TeamEli Mazour Harrity Team

Dissecting Dissents for Ex Parte Appeals

By Eli Mazour and So Ra Ko
September 10, 2018, Dissecting Dissents for Ex Parte Appeals

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

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

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Peter Glaser TeamPeter Glaser Team

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Matthew Allen, Harrity TeamMatthew Allen, Harrity Team

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Kris Rhu Harrity TeamKris Rhu Harrity Team

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

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

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

Claim 2 of the ’691 patent recites:

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

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

Claim 19 of the ’443 patent recites:

  1. A device capable of executing software comprising:

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

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

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

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

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

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

Download Summary of Zeroclick LLC. v. Apple Inc. 

James Olsen, Harrity TeamJames Olsen, Harrity Team

Case Summary of Medtronic, Inc. v. Barry

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Download Medtronic, Inc. v. Barry.

Nathan Phares Harrity TeamNathan Phares Harrity Team

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

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

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

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

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

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

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

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

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

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

The specification of the Emanuel PCT reads in relevant part:

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

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

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

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

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

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

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

Download Hologic, Inc. v. Smith & Nephew, Inc.
William Gvoth Harrity TeamWilliam Gvoth Harrity Team

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

By William Gvoth

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

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

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

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

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

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

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

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

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

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

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

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

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

Peter Glaser TeamPeter Glaser Team

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*

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Kris Rhu Harrity TeamKris Rhu Harrity Team

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.

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.

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Drafting Software Patents Amidst the Heightened Standard: The Alice v. CLS Bank Aftershock

September 28, 2016 – Nathan Phares was part of a panel of speakers that discussed software patents in the aftermath of Alice v. CLS Bank. He provided insights and recommendations regarding post-Alice case law, drafting strategies in view of recent software eligibility decisions, and winning prosecution techniques for software patents.

For over 10 years, The Knowledge Group has produced thousands of best in class educational webcasts for a variety of industries and professions including legal, tax, accounting, finance, human resources, risk/compliance, and many others.

Click HERE to order recording of the webinar.

Nathan Phares

Harrity Ranked as Top Firm in Cybersecurity by Juristat

September 21, 2016 – Harrity is ranked in the top 3 of firms prosecuting patent applications in the cybersecurity technology area, as ranked by Juristat.

All firms on the list have had at least 100 disposed applications in the relevant art units during the 10-year period between 2006 to 2015 and are ranked by allowance rate.

Click HERE to read the complete article by Juristat.