New Clause 8 Episode: Josh Landau – On Lobbying for Weaker Patent Rights and ‘Making a PB&J Sandwich’

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 2, featuring all new exclusive interviews with the intellectual property community’s biggest names.

 


 

 

The first episode of this season of Clause 8 featured the most recent USPTO Director – Andrei Iancu – discussing his efforts to strengthen America’s patent system over the last three years. One of the most publicly vocal opponents of those efforts was Josh Landau, patent counsel at the Computer and Communications Industry Association (CCIA). Now that those views are in ascendancy in the Biden administration and Congress, it made sense to finish this season by talking to Josh.

This is an incredibly insightful episode exploring first hand how the patent process helps innovative individuals and small companies bring their ideas to fruition. Listen here!


On today’s podcast:

  • The role of the CCIA in the patent debate
  • The failure of Section 101 legislation in the last Congress
  • The “patent quality” problem
  • How the Patent Trial and Appeal Board (PTAB) operates
  • Patent policy advocacy on Capitol Hill
  • Patent policy in Trump v Biden administration
  • Is the patent system unfair to patent owners in any way?
  • Why do different patent attorneys have such different views of the patent system?
  • US inventors
  • The “peanut butter and jelly sandwich” patent

 

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. All Season 2 episodes are available now!

 

New Clause 8 Episode – Mark Han: Applying Lessons from Intellectual Ventures to Helping Innovative Doctors

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 2, featuring all new exclusive interviews with the intellectual property community’s biggest names.

 


 

 

Don’t miss this latest episode of Clause 8 with President and Chief Legal Officer of IntuitiveX, Mark Han, about the new business model IntuitiveX created to help innovators in the medical field.

Mark cut his teeth working for the largest and most notorious “patent troll” Intellectual Ventures (IV).  During the episode, Mark talks about what he learned from that experience and why he’s now excited to be in the business of bringing new products to market and building  new companies at IntuitiveX.

This is an incredibly insightful episode exploring first hand how the patent process helps innovative individuals and small companies bring their ideas to fruition. Listen here!


On today’s podcast:

  • Intellectual Ventures
  • How to identify and acquire valuable portfolios
  • The “patent troll” narrative
  • How IntuitiveX is advancing medical innovations
  • What IntuitiveX looks for in innovators and their inventions
  • Taking Amplify Surgical from idea to market

 

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes drop every Tuesday!

 

New Clause 8 Episode: AIPF’s President Chris Agrawal on Growing $1 Billion Portfolio & Succeeding in IP Field

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 2, featuring all new exclusive interviews with the intellectual property community’s biggest names.

 


 

 

 

Chris Agrawal is President of the Association of Intellectual Property Firms. He’s also the reason Eli got into patent law in the first place. If you’re a startup founder worrying you’re already behind on building a portfolio of patents, or you’re wondering how to scale your patent program, listen here!

 

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes drop every Tuesday!

 

New Clause 8 Episode: Judge Alan Albright On Becoming the Go-To Judge for Patent Cases

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 2, featuring all new exclusive interviews with the intellectual property community’s biggest names.

 


 

 

If you’ve ever wondered how and why Judge Alan D Albright of the U.S. District Court for the Western District of Texas became America’s go-to judge for patent cases, you don’t want to miss this episode of Clause 8. Listen here!

Judge Albright is as transparent in this episode as he is in the courtroom. So if you’re wondering how to make your case more efficient, how you can clerk for him, or why it’s easier to predict where to be struck by lightning than how to become a district court judge, don’t miss him on this week’s Clause 8.

On this podcast:

  • Judge Albright’s love for patent cases & why it’s not really work for him
  • Plan to handle growing docket of patent cases
  • Getting into patent law as the youngest magistrate judge in history
  • Why many district court judges aren’t interested in handling patent cases and how it impacts their resolution
  • Example set by Judge John Ward and Eastern District of Texas
  • Why patent owners deserve a jury trial
  • Picking effective patent litigation counsel
  • Discovery disputes
  • Approach to attorneys filing transfer motions
  • Advice to trial attorneys for preparing and being effective
  • Navigating Federal Circuit decisions and focusing on being a good trial judge
  • Following press coverage & commitment to transparency
  • Clerking for Judge Alan Albright
  • Why you shouldn’t – or possibly should – wear python boots to the courthouse

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes will drop every Tuesday!

 

New Clause 8 Episode: Professor Stephen Yelderman – A Personal View of How the Supreme Court Approaches IP

Eli Mazour‘s Clause 8 Podcast, The Voice of IP, has returned for Season 2, featuring all new exclusive interviews with the intellectual property community’s biggest names.

 


In today’s incredibly candid episode, Prof. Stephen Yelderman shares stories about his journey into patent law, why he chose to become a patent agent, meeting Justice Amy Coney Barrett, clerking at the Supreme Court, and the creative ways companies try to influence the Supreme Court. Listen here!

Prof. Yelderman insights are not to be missed by anyone who is interested in having a better understanding of how the Supreme Court approaches IP issues, how the patent system truly works, and how to succeed in the legal field.

“A piece of advice I have is when an opportunity comes, say yes to it because you oftentimes don’t have good visibility to all the doors that will open down the road.”

On the episode:

  • From engineering at Stanford to patent law to clerking at the Supreme Court
  • Perspective about the patent examination process from working as a patent agent in Silicon Valley
  • Academic consensus that leans into an anti-patent direction
  • Misguided thinking about “patent quality”
  • Different approaches to anticipation and obviousness during USPTO examination, PTAB proceedings, and district court litigation
  • Meeting and working with ACB before she joined the Supreme Court
  • The one patent case ACB decided before joining the Supreme Court that cited one of Prof. Yelderman’s articles
  • How and why the Supreme Court approaches IP cases differently from other case
  • Impact of Breyer and Kennedy
  • Gorsuch’s correct approach to patent cases & the one case he got wrong
  • Why Gorsuch’s concerns regarding the PTAB are likely to be the future consensus
  • Efforts to influence Supreme Court & impact of atmospherics on the justices’ decisions regarding patent cases

You can subscribe and listen to the full episode on your favorite podcasting app and learn more at voiceofIP.com. New episodes will drop every Tuesday!

 

Product Success Can Show Nonobviousness

By Patrick Hansen, Associate

The U.S. Supreme Court’s KSR decision has left an impression that any claimed invention based on a combination of known, related features is likely obvious under 35 U.S.C. § 103.  The recent Fox Factory, Inc. v. SRAM, LLC (Fed. Cir. May 18, 2020) decision is a heartening reminder that is not always the case.  In Fox Factory, the Federal Circuit affirmed a Board holding that claims 1-26 of U.S. Patent 9,291,250 (‘250 patent) are not unpatentable as obvious under Section 103.  What makes this decision reassuring for patent owners and applicants is that the Federal Circuit upheld SRAM’s ‘250 patent based on objective indicia of nonobviousness (also known as secondary considerations).

Fox Factory and SRAM are bicycle competitors, and SRAM’s ‘250 patent is directed to a single chainring of a bicycle that does not switch a chain between multiple chainrings.  The single chainring has teeth that fit more snugly into chain link spaces, and the single chainring (marketed as “X-Sync”) has been praised for retaining the chain in poor cycling conditions.

As shown in Fig. 1 from the ‘250 patent, link spaces alternate in size (D1 or D2) due to the manner in which pieces of a chain are linked.Claim 1 of the ‘250 patent recites a chainring with wider teeth of a first size that alternates with teeth of a second size, in order to snugly fit into respective outer (D2) and inner (D1) link spaces.  In particular, claim 1 recites that a wider tooth is designed to fill, at the midpoint, at least 80% of an outer link space.

SRAM asserted the ‘250 patent against Fox Factory in the U.S. District Court for the Northern District of Illinois.  In a corresponding inter partes review (IPR) proceeding, Fox Factory cited Japanese patent publication JP S56-42489 (“Shimano”) and U.S. Patent 3,375,022 (“Hattan”).  Shimano describes a chainring with widened teeth for wider link spaces, and Hattan describes filling link spaces between 74.6% and 96% of a space width at the bottom of a tooth.  Fox Factory argued that it would have been obvious to a skilled artisan to see the utility in designing a chainring with widened teeth to improve chain retention and to look to Hattan for filling the link space at least 80%.  However, the Board found that Hattan’s fill percentages applied to the bottom of a tooth rather than the midpoint of the tooth.  Notably, the Board found that SRAM’s evidence of secondary considerations rebutted Fox Factory’s argument that a skilled artisan would nevertheless find it obvious to modify Shimano’s chainring teeth to fill at least 80% of a wide link space at the middle of a tooth.  Judge Lourie, writing for the Federal Circuit panel that included Judges Mayer and Wallach, affirmed the Board’s decision.

As you may recall, the Graham v. John Deere Co., 383 U.S. 1 (1966) analysis includes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations (also known more favorably as objective indicia of nonobviousness).  All four factors are to be evaluated collectively before a conclusion on obviousness is reached, and the burden of proof remains with the patent challenger.  Fox Factory argued that the only difference at issue is the degree to which a wider link space is filled, measured halfway up the tooth.  Fox Factory also argued that the Board erred in presuming a nexus between the claimed invention and evidence of success, arguing that it is the tall hooked teeth that drove the X-Sync chainring to be successful.

While acknowledging that a mere change in proportion may not meet the level of invention required by Section 103, the Federal Circuit agreed with the Board that SRAM’s design of the X-Sync chainring teeth, as claimed, displayed significant invention.  The X-Sync chainring’s success surprised skilled artisans who were skeptical about it solving the long-felt need of chain retention.  In fact, the industry awarded the X-Sync chainring “Innovation of the Year.”

The Federal Circuit found that the X-Sync chainring and the ‘250 claims met the nexus requirement – that a product from which the secondary considerations arose is “co-extensive” with the claimed invention.  The Federal Circuit also stated that the unclaimed features, such as the hooks and protrusions of the teeth, are to some extent incorporated into the >80% fill requirement.  The Federal Circuit concluded that substantial evidence supports the Board’s determination that a nexus exists between the X-Sync chainring’s success and the teeth profile that is essentially the claimed invention.

While Fox Factory does not present any new rule, it is a reminder that patent owners and applicants should keep records indicating a long-felt need and any industry skepticism, as well as records of subsequent success of a product to which claims are directed.  Claim drafters should learn from inventors which features could contribute to a product’s commercial success or acclamation.  Fox Factory reassures us that objective indicia of nonobviousness can still be a meaningful consideration at the Board and the Federal Circuit, even over what may be argued to be routine optimization.

 

Obvious to Use Common Sense (If You Can Prove It)

By Jafar Ali, Associate

In KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court recalibrated the obviousness analysis to (re-)emphasize the relevance of “the background knowledge posted by a person having ordinary skill in the art” when determining whether there would have been an apparent reason to combine and/or modify prior art to arrive at the claimed invention.  Before KSR, the Federal Circuit and lower courts had regularly been applying the so-called “teaching, suggestion, motivation” (TSM) test, which generally required some “teaching, suggestion, or motivation” to combine and/or modify the prior art to support a conclusion of obviousness.  Critically, the Supreme Court held that the TSM test as-applied was a rigid and mandatory rule that improperly limited the obviousness inquiry by denying factfinders (e.g., examiners and juries) recourse to common sense.  KSR changed the obviousness landscape by rejecting the rigidity and formalism of the TSM test and setting forth “an expansive and flexible approach” in which the factual determinations underlying the obviousness analysis could consider “the inferences and creative steps that a person of ordinary skill in the art would employ.”

One question that was not fully resolved in KSR itself, however, was the extent to which a claimed invention could be rendered obvious based on general knowledge or common sense.  Instead, the Court simply stated that the fact-finding supporting an obviousness analysis “should be made explicit” to facilitate review while favorably citing earlier Federal Circuit decisions holding that “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”  In Koninklijke Philips N.V. v. Google LLC, 2019-1177 (Fed. Cir. Jan. 30, 2020), the Federal Circuit clarified that the “general knowledge” of a person having ordinary skill in the art can indeed be relied upon to render a claimed invention obvious, even to supply an admittedly missing claim limitation, provided that the record contains a reasoned analysis and evidentiary support for such general knowledge.

In Philips, the Federal Circuit upheld an inter partes decision of the Patent Trial and Appeal Board (“Board”) finding claims 1-11 in U.S. Patent No. 7,529,806 (“the ’806 patent”) to be invalid as obvious over a single prior art reference.  The representative claim at issue generally related to a method for delivering digital content for playback on a client device.  In particular, the claimed method recited steps to retrieve a next portion of a media presentation during playback of a previous portion, thus reducing delays relative to traditional downloading approaches in which playback cannot begin until the entire media presentation has finished downloading.  Google, in challenging the validity of the ’806 patent, referred to a publication explaining a conventional pipelining scheme to divide a media presentation into multiple segments and play a current segment (Sn) while a next segment (Sn+1) is downloading.  Citing the pipelining scheme and an expert declaration, Google argued, and the Board agreed, that the claimed method was invalid as obvious because the features admitted to be missing from the prior art were within the general knowledge of a person having ordinary skill in the art.

On appeal, the Federal Circuit held that “the skilled artisan’s knowledge [can be considered] when determining whether it would have been obvious to modify the prior art” regardless of the tribunal.  Indeed, citing KSR, the court stated that the obviousness analysis requires an assessment of the “background knowledge possessed by a person having ordinary skill in the art.”  However, reliance on general knowledge or common sense would be improper if based solely upon “conclusory statements and unspecific expert testimony,” and using background knowledge to supply a missing claim limitation should be reserved to cases where the missing limitation is “unusually simple and the technology particularly straightforward.”  In this case, the background knowledge was sufficient to supply the missing claim features because the Board relied upon expert evidence that was corroborated by the literature establishing that pipelining was within the general knowledge of a skilled artisan.

This case provides important context to further refine the impact that general knowledge has on patentability.  One noteworthy aspect is that, in Philips, the party asserting obviousness presented an expert declaration and supporting documentary evidence rather than simply making conclusory statements that a person having ordinary skill in the art would have known about the missing claim features.  Accordingly, if a patent applicant is faced with an obviousness rejection relying upon general knowledge during prosecution, the applicant can challenge the Examiner to produce supporting documentary evidence.  Furthermore, this case reaffirms the importance of having robust backup positions in a patent application, including dependent claims.  Features of independent claims believed to overcome the prior art might be alleged to be within the general knowledge of a skilled artisan in adversarial proceedings when parties asserting invalidity typically devote more resources to finding evidentiary support.  Strong dependent claims provide an avenue for at least some claims surviving in that situation.