• 212-390-8741
  • info@patentagentone.com

Blog

A Good Form of Reform

An earlier post dealt with the question “What form Reform?” We now have at least a partial answer to that question. A series of amendments to the Federal Rules of Civil Procedure took effect on December 1, 2015. A number of these changes will influence patent litigation.
The first, and perhaps most dramatic,change is that Rule 84 was eliminated. Rule 84 used to say “…the forms in the appendix suffice under
pleadings1these rule
s.“ Under Rule 84, completion of Form 18 was  sufficient for filing of an infringement suit.Elimination of Rule 84 leaves rule 8(a)(2) in control. Rule 8(a)(2) requires that a complaint must contain a “short and plain statement of the claim showing that the pleader is entitled to relief.”The Supreme Court has interpreted rule 8(a)(2) in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009). Neither of these cases is a patent infringement case.In Iqbal the Court summarized the requirements of sufficiency of pleadings that it had set forth earlier in Twombly (emphases added):

Two working principles underlie our decision in Twombly. First, the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions. … Second, only a complaint that states a plausible claim for relief survives a motion to dismiss. Determining whether a complaint states a plausible claim for relief will, as the Court of Appeals observed, be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense. In keeping with these principles a court considering a motion to dismiss can choose to begin by identifying pleadings that, because they are no more than conclusions, are not entitled to the assumption of truth. While legal conclusions can provide the framework of a complaint, they must be supported by factual allegations. When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief. Our decision in Twombly illustrates the two-pronged approach.

 

In the context of patent litigation the old Rule 84 created a dichotomy between “judicial experience” and “common sense”. Elimination of Rule 84 opens the door to common sense, amd the Supreme court has defined this term to some extent by requiring “factual allegations” which must be “well pleaded”.  It is not yet clear how high the bar will be for a claim to survive a motion to dismiss, but it will undoubtedly be higher than the bar set by the old form 18.

 

Raising the bar for filing a patent infringement complaint may do more to curb dubious patent suits than all of the proposed “patent reform” bills that congress has been considering over the last few years would have done if they had all been voted into law. This is a welcome change because it will be applied to all players in the game, whether they are practicing entities or not.The second change is that procedures will move faster. The new versions of rules 4(m), 16, and 26(f) mean that due dates for various pre-trial events will be 30 to 60 days earlier. This may work to the advantage of patentees because they can get their materials ready in advance, before filing the complaint. Accused infringers will have less time to get organized to respond. discovery 2

 

 

The third change deals with the scope of discovery. Rule 26(b)(1) now limits discovery to material which  “is relevant to any party’s claim or defense and proportional to the needs of the case” (amended text in italics). Under old rule 26(b)(2) proportionality limitations only applied if there was a court order to that effect. Now they are the default.

 

The proportionality analysis considers: 

  1. a) the importance of the issues at stake; 
  2. b) the amount in controversy; 
  3. c) the parties’ relative access to relevant information; 
  4. d) the parties’ resources; 
  5. e) the importance of the discovery in resolving the issues; and 
  6. f) whether the burden or expense of the proposed discovery outweighs its likely benefit.

 

The new version of Rule 26(c)(1)(B) provides that “the allocation of expenses” can be included in a protective order. This means that the court can allocate the cost of discovery, or portions of the discovery, to one of the parties in the suit.

 

The net effect of these changes to the discovery rules may be more modest discovery requests and/or more judicial limitation of sweeping discovery requests.

 

In summary, the new rules seem to offer significant protection against abuse of the system by wealthy players enforcing patents with vague claims against large numbers of alleged infringers. It remains to be seen whether these measures will dampen the public outcry to “fix” the patent system.

admin

Oh Lord Let Me Drive My Mercedes Benz

Janis Joplin is famous for asking the Lord to buy her a Mercedes Benz. Presumably she would have wanted to drive the car even if she were intoxicated or otherwise impaired.

The Court of Appeals of the Federal Circuit recently decided   (in Vehicle Intelligence v. Mercedes-Benz December 28, 2015) that some claims directed to a “method to screen an equipment operator for impairment” are patent ineligible under §101 as being directed towards an abstract idea.

However, the CAFC did not invalidate slightly narrower claims in the same patent which are directed towards a “method to screen an equipment operator for intoxication” because those claims were not at issue. The difference is moot for Janis but those of us that still want to drive, and understand how §101 is being viewed by the courts have a lot to learn from this case.

Vehicle Intelligence and Safety had sued Mercedes Benz USA for infringement of US 7,394,392 in the Northern District of Illinois. The district court ruled claims 8, 9 and 11-18 patent ineligible under §101 as being directed towards an abstract idea.The CAFC affirmed that decision indicating that the “…disputed claims cover only abstract ideas coupled with routine data-gathering steps and conventional computer activity…”

The ‘392 patent contains two independent method claims, 1 and 8. They are reproduced side by side here with each step in boldface and differentiating language underlined:

 

1. A method to screen an equipment operator for intoxication, comprising:

screening an equipment operator by one or more expert systems to measure at least one type of chemical in the air in proximity to the equipment operator to detect potential intoxication;

selectively testing said equipment operator when said screening indicates potential intoxication of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said intoxication of said equipment operator.

8. A method to screen an equipment operator for impairment, comprising:

screening an equipment operator by one or more expert systems to detect potential impairment of said equipment operator;

selectively testing said equipment operator when said screening of said equipment operator detects potential impairment of said equipment operator; and

controlling operation of said equipment if said selective testing of said equipment operator indicates said impairment of said equipment operator, wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.  

Each of claims 1 and 8 recites three steps: screening, selectively testing and controlling operation. The preamble of claim 1 is narrow (screen… for intoxication) while the preamble of claim 8 is broader (screen…for impairment).

The screening step of claim 1 is likewise narrower (measurechemical in the air in proximity to the equipment operator to detect potential intoxication) relative to the corresponding step in claim 8 (detect potential impairment).

 

This difference in scope is repeated in the selectively testing step (claim 1 potential intoxication vs claim 8 potential impairment) and again in the controlling operation step (claim 1 indicates said intoxication vs claim 8 indicates said impairment).

 

Up to this point the draftsman of the claims has limited claim 1 to the species “intoxication” while directing claim 8 towards the entire genus of “impairment”.

 

In order to limit the scope of claim 8, that claim recites a limitation on the screening which is not parallel to claim 1:  wherein said screening of said equipment operator includes a time-sharing allocation of at least one processor executing at least one expert system.  

 

Claim 1 meets the requirements of §101 while claim 8 does not. Since the issue is abstract ideas as evaluated by the Mayo/Alice test we can infer that claim 1 is significantly more than the abstract idea of “…testing operators of any kind of moving equipment for any kind of physical or mental impairment” because (a) it recites a specific impairment type (intoxication) and/or (b) it recites a specific screening method (measurechemical in the air in proximity to the equipment operator). Inference is required because claim 1 was not reviewed on appeal.

In contrast, the Court equated the broad scope of claim 8 with abstraction:  “None of the claims at issue are limited to a particular kind of impairment, explain how to perform either screening or testing for any impairment, specify how to program the “expert system” to perform any screening or testing, or explain the nature of control to be exercised on the vehicle in response to the test results.”

Claim 11 (dependent from claim 8) is interesting in this regard because it recites a Markush Group list of physiologic parameters of the operator. However, the claim preamble indicates “…further comprising measuring…” so that the physiologic parameters are assigned neither to the screening nor to the testing of base claim 8. Under those circumstances the court did not find this claim instructive as to how to perform either screening or testing for any impairment even though one of the parameters in the Markush Group is chemical in proximity to the equipment operator which is similar to claim 1.

There are at least four lessons to be learned from this case:

The first lesson is that broad claim scope may be interpreted as abstraction.

The second lesson is that the Court reviewed the specification before rendering a decision on whether the claims contained “significantly more” than the abstract idea. This implies the degree of abstractness (or definiteness) of claim language is related to corresponding explanatory passages in the specification.

The third lesson is that the Court took a dim view of the patentee’s attempts to link the claim language to a particular machine:

“Vehicle Intelligence’s argument harkens back to our preAlice machine-or-transformation test in arguing that the claimed methods are tied to particular machines and that alone is sufficient to confer eligibility. But, postMayo/Alice, this is no longer sufficient to render a claim patent-eligible. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Merely stating that the methods at issue are performed on already existing vehicle equipment, without more, does not save the disputed claims from abstraction.”

The fourth lesson is that the Court views its own earlier decision in DDR holdings as being narrowly applicable to computer networks:“The claims at issue are not “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” as in DDR Holdings. 773 F.3d at 1257. The claims do not address a problem arising in the realm of computer networks—they are broadly drafted to cover testing a vehicle operator for impairments, similar to a police officer field testing a driver for sobriety.”

Although this decision is marked non-precedential it is worth considering when drafting a set of claims.

 

 

 

 

admin

What Should My Patent Agent Do?

President John F. Kennedy said: “…ask not what your country can do for you, ask what you canListen Respond

do for your country.” Both the inventor meets and the patent agent should us that as a motto

from the first time they meet.

From their first meeting, the inventor and agent share a common goal: getting a patent granted on

the invention. The inventor is the undisputed expert in the technology behind the invention. The

agent has experience in the legal requirements for getting a patent granted. Together, the inventor

and agent go through a four stage process. The stages are disclosure of the invention, preparation

of a patent application, filing of the application and examination of the application.

Typically, the inventor has much less experience in the “examination” than the agent. The

agent’s experience in examination of cases relating to other inventions means they can offer

guidance to the inventor during disclosure of the invention and preparation of the patent

application. Here is a brief description of how the inventor and agent can interact during the for

stages.

Disclosure of the Invention

Since the inventor is the undisputed expert in the technology behind the invention, this is the

stage where the inventor is most active. The agent’s role at this stage is to guide the inventor in

providing relevant material in an appropriate format and with sufficient detail. During this stage

the inventor and agent should discuss topics such as how the invention differs from previous

solutions to a similar problem, which portions of the invention are new and which portions

merely employ existing technology to perform its traditional function, and how the invention fits

into a business plan. It is important that the inventor disclose the invention to the agent before

making any public disclosure (e.g. presentation at a conference or trade show; publication of an

article; advertisement; Internet site or solicitation of a production contract from an outside

source)

The inventor can save time and money by coming to an initial consultation prepared to discuss

these issues and with drawings and/or text to accompany their verbal explanation. At the end of

this stage agent and inventor should both understand what portions of the invention are essential,

and which features are optional.

Preparation of a Patent Application

During this stage, the agent is more active but the inventor still plays an active role. Together the

agent and inventor agree on a set of patent claims which define the scope of protection desired.

The agent should explain the role of independent claims and dependent claims so the inventor

can offer meaningful input at this stage. It is often appropriate to organize the claims in sets, with

each set directed to a different aspect of the invention.

Once the claims are agreed upon, the agent can proceed to write a complete application. During

writing, additional questions may occur to the agent. The inventor should do their best to answer

these questions in as much detail as possible.

The agent provides a complete draft of the application to the inventor for review. The inventor

should thoroughly review the entire application and make comments. It is the inventor’s job to

make sure that all relevant details are presented in a way that will be understood by someone that

reads the application. Any concerns the inventor has should be addressed by the agent.

Once the inventor and agent agree that the application is accurate and complete, the application

is ready for filing.

Filing of the Application

This stage is purely administrative and is done by the agent. Prior to filing the inventor and agent

should discuss whether the application is to be a provisional patent application (PPA) or a

regular utility application. Once that decision has been made, the agent will provide any

necessary forms for inventor signature. Filing is typically done online and a filing confirmation

can be provided the same day.

Examination of the Application

This is often the most frustrating stage for the inventor for two reasons.

The first reason for frustration is that it takes a long time. The average time for receipt of a first

Office Action (Examination Export) in the United States is about 17 months. If you file your

application as a PPA add 12 months to that figure. Depending on how many rounds of

examination there are, the total time to grant can be much longer.

The second reason for frustration is that it patent Examiners typically reject all claims in the first

Office Action. The inventor needs to be prepared for this. The fact that all claims are initially

rejected does not necessarily mean that no patent will be granted.

Once the Office Action is received the inventor has the opportunity to provide a written

response. The written response should point out reasons why the grounds for rejection are

incorrect.

There are two categories of reasons why the grounds for rejection may be incorrect.

The first category of reasons why the grounds for rejection may be incorrect is technical reasons.

Technical reasons are based upon an incorrect interpretation of cited references by the Examiner.

The agent will try to identify as many technical reasons as they can, but the inventor has an

important role to play here in identifying technical reasons and/or criticizing technical reasons

proposed by the agent.

The second category of reasons why the grounds for rejection may be incorrect is legal reasons.

The agent takes primary responsibility for formulating legal reasons but the inventor will have

valuable input here. Many legal arguments rest upon what a hypothetical “person of ordinary

skill in the art” (POSITA) would or would not think or understand based upon the teachings of

the application under examination or based upon the teachings of reference(s) cited by the

Examiner. The inventor is often in a better position to evaluate what a POSITA might think than

the agent.

Once the agent and inventor have discussed the rejections in the Office Action and any relevant

legal and/or technical arguments they are in a position to formulate a response strategy. The

response strategy may include amendments to the language of the claims so long as the

amendments are supported by the application as filed. Before filing claim amendments it is

important that the inventor discuss the impact of the proposed amendments on the business plan.

Once an amendment strategy has been agreed upon, the agent prepares a draft response for

approval by the inventor. As with the application, the inventor should review this response to

make sure that it is complete and accurate.

In many cases, follow up of the written response with a telephone interview can be productive. If

your agent does not suggest a telephone interview, you may want to ask about the possibility of

an interview.

If an interview is scheduled, preparation of a list of talking points can be helpful. Interviews are

typically limited to 30 minutes and it is rare to get more than one interview per office action. A

list of talking points can help the agent present arguments in a logical and convincing order.

Even though the arguments are all present in the written response, discussion can help make the

Examiner more receptive.

Summary

View your patent agent as partner in pursuing a common goal. Let their expertise complement

your own and cooperate fully with requests to provide information or review documents.

admin

Seven Things You Can Do Before Purchasing Legal Services (Part 1)

This article is written primarily for the benefit of the consumer / client. However, this is valuable information for providers of Legal Services as well. Why? Just as any defense attorney will tell you that one key to success is to completely understand your opponent, it is critical to understand the needs of the client to get to a point where an agreement will be made to engage in a mutually beneficial business transaction.

This is the first part of a two part series. Look for part 2, Seven Things You Can Do to Get Good Value When Purchasing Legal Services in the upcoming weeks.

1) Define your needs: Ask yourself, how complex is the legal matter? For example, a person that has been married once and has two children will have a much simpler time making a will than a person that has been married four times and has children from each marriage.

2) Assess the risk of future disputes: The risk may be related to complexity (e.g. the more children and spouses, the more likely that one or more of them will contest the will), or to the nature of the parties to the matter. For example, if you are selling your vacation cabin to your brother-in-law, there may be less risk than if you sell the same property to an unknown purchaser that responded to an Internet listing. For some very low risk matters, the quality of service may be a negligible factor, provided that it is above a minimum threshold. In these very low risk matters there is almost no additional “bang” for each additional “buck”.

3) Define your budget: Even if you eventually exceed your budget, starting with a budget can help you identify added value, if potential service providers try to sell it to you. For determining an initial budget, think of the legal service you are purchasing in terms what you are protecting with it. For example, if you get a ticket for driving while intoxicated (DWI), the cost of the ticket may be $500. In addition, your auto insurance premium will go up by $5,000/year for 5 years ($25,000). In addition, the judge may suspend your license for up to two months. You estimate that making alternative transportation arrangements for two months would cost you an additional $2,000. That means the total cost could be $27,500. Ask yourself how much you are willing to spend to avoid all, or most, of that cost. Then factor in the intangibles like the headache of making alternative transportation arrangements.

4) Be prepared: Prepare written material that is relevant to the task. For example, if you are making a will, a list of assets is needed, as well as a list of beneficiaries and an allocation plan. For a real estate transaction, you need the details of the property, the buyer, and the seller. Coming to the first meeting prepared makes it easier for the attorney to offer you a good price.

5) Get personal recommendations: Ask people whom you trust to recommend people whom they trust. For example, if you have a tax attorney, that attorney may be able to recommend someone that specializes in estate planning or real estate transactions.

6) Get online ratings: Look for online ratings or recommendations in the relevant field of service.

7) Make a preliminary decision and schedule an initial consultation.Make sure to ask whether you will be billed for the initial consultation, and if so, what will the cost be and will it be included as part of the overall fee for service.

After completing Items 1 through 7, you are ready to make a purchase decision. See part two in the upcoming weeks for advice on how to make that decision.

Please share your story of purchasing legal services, and why you were satisfied or unsatisfied with the experience by e-mail to: Legal.Comment.2015@gmail.com

admin

Seven Things You Can Do Before Purchasing Legal Services (Part 2)

 

This is the second part of a two part series. Part 1 provided practical advice on how to define your task and identify relevant candidates to provide the service you need. This installment provides suggestions for selecting the service provider that is right for you. Click on the link below to read or refresh your memory on the advice from Part 1.

1)   Based upon your evaluation of complexity and risk, start shopping for relevant service providers: Low complexity/low risk matters can often be handled by solo practitioners or small offices with relevant experience. Higher complexity/higher risk matters may be more suitable for “full service firms”. Even among large firms, there may be significant differences in approach and/or costs.

Using the DWI example from Part 1 you might find one attorney that offers to represent you for $1,500. His strategy is to plead your outstanding record in the past, your status in the community and a willingness to enter a guilty plea to reckless driving and pay the $500 fine. Total cost for this package is $2,000. He estimates your chance of success at 75%.

You might find a second attorney that offers to represent you for $3,000. Her strategy is to prove that the township where your ticket was issued has not calibrated their breathalyzer equipment in accord with legal requirements. That would make the breathalyzer results inadmissible as evidence. She says she has access to the only approved testing center in your state and she knows the testing center has not received any orders from the township in over two years, when the regulations require calibration of equipment every six months. She proposes that you not offer to plead guilty to any charge or pay any fine. Total cost for this package is $3,000. She estimates your chance of success at 99%.

2)   Remember your budget: Spending more than you expected is not necessarily bad, as long as you know why you are spending the extra money and are satisfied that the added expense is adding appropriate value. In the DWI case above spending an extra $1,000 for the second attorney increases your estimated chance of success by nearly a third. The reason is the difference in proposed strategy. There is also the tangible benefit of not having points for reckless driving on your license.

3) Ask hard questions: Ask the higher priced service providers why their prices are higher. Listen for the word “value” in their answers.   Ask the lower priced service providers why their prices are lower. Listen to their answers to see if they are skimping on value. The illustration shows how price and value are not necessarily related.

4) Be observant: If you go to an initial consultation and are escorted to a conference room with museum quality art by a receptionist with a $1,000 outfit you know that clients are covering that cost. On the other hand, if the place of business is too shabby, that may mean not enough income to meet operating costs. Look for a comfortable middle ground.

5) Define the task: Ask what is included and what is extra. Discuss schedule to completion and milestones. Ask who will be doing the work and how many people will be working on the task. Try to understand what each person does for you, as opposed to their employer.

6) Demand to be the boss: This does not mean you should try to second guess the professionals. It means you should make it clear that anyone assigned to your task is working primarily to serve your interest as a client, and not to meet billing quotas imposed on them by the firm. Of course, this has to be done in a low key way. You want the person that is doing your task to be interested in doing a good job for you. Provoking hostility will not serve that goal. Just make it clear that you are purchasing professional service, not hours.

7) Trust your gut: Your first impression is often correct. If somebody rubs you the wrong way, there is probably a reason for it. Remember though, you are choosing a professional service provider. Differences in politics, musical taste and fashion preferences are not important. Look at the candidates in their professional context.

Thanks to all who sent us e-mail after Part 1 was published. We received some great feedback on both ends of the spectrum: those who were extremely satisfied with the services that were provided to them and those who decided that price does not always equate to “value”.

Please share your story of purchasing legal services, and why you were satisfied, or unsatisfied with the experience to: Legal.Comment.2015@gmail.com

admin

Does the End Justify the Means

Patents page

On June 16 2015 the CAFC delivered a precedential opinion in Williamson v Citrix.The panel considering the case was expanded to en banc to consider the role of the word “means” in invoking §112; paragraph 6 (now §112(f) of the AIA).
Although issues of infringement were also considered, this post relates only to the new standards established by the Court for use of §112 paragraph 6. Only the highlighted termin claim 8 raised §112 paragraph 6 issues:
A system for conducting distributed learning among a plurality of computer systems coupled to a network, the system comprising:
a presenter computer system of the plurality of computer systems coupled to the network and comprising:
a content selection control for defining at least one remote streaming data source and for selecting one of the remote streaming data sources for viewing; and
a presenter streaming data viewer for displaying data produced by the selected remote streaming data source;
an audience member computer system of the plurality of computer systems and coupled to the presenter computer system via the network, the audience member computer system comprising:
an audience member streaming data viewer for displaying the data produced by the selected remote streaming data source; and
a distributed learning server remote from the presenter and audience member computer systems of the plurality of computer systems and coupled to the presenter computer system and the audience member computer system via the network and comprising:
a streaming data module for providing the streaming data from the remote streaming data source selected with the content selection control to the presenter and audience member computer systems; and
a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module
In a footnote to the decision we are reminded that overruling of prior precedent can only be done by the court en banc, so other members of the court join the panel for part II.C.1 of the decision.
The court begins by stating that precedent has long recognized the importance of the presence or absence of the word “means.” However the judges go on to state that historically “…our cases have emphasized that the essential inquiry is not merely the presence or absence of the word “means” but 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. Greenberg, 91 F.3d at 1583 (“What is important is . . . that the term, as the name for structure, has a reasonably well understood meaning in the art.”).”
We are reminded that it was only in 2004 that the idea that “the presumption flowing from the absence of the term ‘means’ is a strong one that is not readily overcome” (emphasis added)…” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) was put forth, although that decision cited a 1999 Federal Circuit decision.
In 2012, the court “…raised the bar even further, declaring that “[w]hen the claim drafter has not signaled his intent to invoke § 112, ¶ 6 by using the term ‘means,’ we are unwilling to apply that provision without a showing that the limitation essentially is devoid of anything that can be
construed as structure”.
Subsequent decisions in Lighting World, Inventio, Flo Healthcare and Apple established a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to § 112, para. 6.
However that era has come to an end. The court explicitly states:
Our consideration of this case has led us to conclude that such a heightened burden is unjustified and that we should abandon characterizing as “strong” the presumption that a limitation lacking the word “means” is not subject to § 112, para. 6. That characterization is unwarranted, is uncertain in meaning and application, and has the inappropriate practical effect of placing a thumb on what should otherwise be a balanced analytical scale. It has shifted the balance struck by Congress in passing § 112, para. 6 and has resulted in a proliferation of functional claiming untethered to § 112, para. 6 and free of the strictures set forth in the statute. Henceforth, we will apply the presumption as we have done prior toLighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as “strong.” We also overrule the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”
This “precedential” decision is actually much closer to the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications from the Federal register of February 9, 2011 that the intervening CAFC decisions mentioned above.
Both the Williamson decision and the supplementary guidelines suggest that “nonce” words such as “mechanism” or “module” are not inherently structural.
Of course once a claim is deemed to be a means plus function claim (as happened in this case) the question immediately arises as to whether sufficient structure is disclosed to avoid an indefiniteness rejection (§112 second paragraph /(b) in the AIA). In this case the answer was no because there was no algorithmic structure for implementing the claimed functions in the written description. More specifically: “the claim does not describe how the “distributed learning control module” interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation-in question or otherwise impart structure to the “distributed learning control module” as recited in the claim.”
Review of the specification revealed that it “fails to disclose structure corresponding to the “coordinating” function.” of the “distributed learning control module”.
Expert testimony that one of ordinary skill in the art could easily implement the claimed function was no help:
“…the fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed.”
Disclosed structures must correspond to the claimed functions:
Structure disclosed in the specification qualifies as “corresponding structure” if the intrinsic evidence clearly links or associates that structure to the function recited in the claim. Id.(citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997)). Even if the specification discloses corresponding structure, the disclosure must be of “adequate” corresponding structure to achieve the claimed function. Id. at 1311–12 (citing In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc)). Under 35 U.S.C. § 112, paras. 2 and 6, therefore, if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim, a means plus-function clause is indefinite. Id. at 1312 (citing AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007))
One of the most puzzling things in this decision is the reference to “special purpose” computers:
The written description of the ’840 patent makes clear that the distributed learning control module cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer—a general purpose computer programmed to perform particular functions pursuant to instructions from program software. A special purpose computer is required because the distributed learning control module has specialized functions as outlined in the written description. See, e.g., ’840 patent col.5 ll.48–64. In cases such as this, involving a claim limitation that is subject to § 112, para. 6 that must be implemented in a special purpose computer, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.
E.g., Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (citing WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir. 1999)). We require that the specification disclose an algorithm for performing the claimed function. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). The algorithm may be expressed as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure. Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
This is puzzling because the abstract idea, expressed as an algorithm, is simply instructions to “implement it” on a general purpose computer. In cases like Alice that type of algorithm/computer combination raised §101 issues. In this case it is proposed as a solution to § 112 issues.
In this case the court made it abundantly clear that figures of user interfaces do not constitute an algorithm corresponding to the claimed functions.
Summary: For those of us working with computer implemented inventions the combination of §101; §112 paragraph 6 and §112 paragraph 2 is beginning to look like the Bermuda triangle. The only advice to offer is include lots of diagrams and text about how your algorithms work. That way if §112 paragraph six becomes an issue, you will hopefully have sufficient structure to avoid an indefiniteness rejection based upon §112 second paragraph. The interplay with §101 is not yet clear.
In a dissenting opinion, Judge Newman indicated:
The court en banc changes the law and practice of 35 U.S.C. § 112 paragraph 6, by eliminating the statutory signal of the word “means.” The purpose of this change, the benefit, is obscure. The result, however, is clear: additional uncertainty of the patent grant, confusion in its interpretation, invitation to litigation, and disincentive to patent-based innovation.
Many readers may agree with Judge Newman.

admin

Synchronizing IP development with product development

Eighty percent or more of corporate assets are intangible. That means a business plan needs to include an IP strategy tailored to the business. Businesses based on developing new technology has a different IP strategy than businesses using existing technology, everyone wants a slice of the IP pie.

Let’s talk first about businesses that make a product. Every product has a development cycle with three stages.

The first stage is research and development (R&D). This starts with a concept, evolves through theoretical engineering and ends with production of sufficient product for testing.

The second stage is testing. If the product is medical, cosmetic or edible, a regulatory agency will probably require testing before marketing approval will be given. Even if there is no requirement for testing, pre-market testing to make sure the product functions properly and has no unexpected defects is routine. By the time you are making the transition from R&D to testing, you should have a good idea of both how the product functions and how it looks.

The third stage is product launch.

Your IP strategy should consider all three stages of product development. The following diagram shows how your product development should align with your IP strategy.

IP comes in different varieties which serve different business needs. The three types of “hard” IP are utility patents, designs and copyright. “Hard” IP means protection that is intrinsically linked to the product.

Of the three types of hard IP, utility patents take the longest to obtain. One of the requirements is that the invention claimed in the patent be new. This means that the time to file an initial patent application is early, usually during the R&D stage. Even with this early filing, you may not have a granted patent at the time of product launch. The function of a utility patent is to protect what the product does. If properly written, a utility patent can prevent others from using important product features, even in a different product.

The second type of hard IP is designs. Designs protect only the visual appearance of a product and not its function. Because the external appearance of a product is often finalized later in the product development cycle, it is often appropriate to file a design application later than a utility patent application. The examination procedure for a design application is also shorter than for a utility patent. As a result even though the design application is filed later, it may be granted while the utility patent is still under examination.

The third type of hard IP is copyright. Copyright can be appropriate for products which include something written, such as computer software code. The procedure for registration is relatively fast and inexpensive. If relevant, it can be conducted early in the product development cycle. The recent lawsuit between Oracle® and Google® over use of Javascript® has put copyright of computer code in the spotlight. Those of you using the Chrome® browser may have noticed that it no longer supports Javascript®.

The Diagram shows branding as a separate box within the IP box becausebranding relies on “soft” IP. “Soft” IP means protection that is not intrinsically linked to the product. For example, the same product could be named zingaling or glickstick. Neither name is inherently linked to the product. However, marketing of the product under a unique name creates a link between the product and the name in the mind of consumers.

Service businesses often have a shorter development cycle and tend to rely more heavily on soft IP. This is especially true for service providers that have no unique technology such as restaurants, retail stores and beauticians.

admin

Seven Things to Know about Patents as Business Tools

Patents can be important tools for business development. However, in order to use them effectively, it is necessary to understand how they work.

The first thing to understand is that you do not need a patent to practice your invention. The patent is a “right to exclude” others from making/selling/using the invention.

The second thing to understand is that the less details in your claim, the broader the scope of the patent. For example, if you claim a red widget, a blue widget does not infringe. Unless the color red is important to the function of the widget, the word “red” does not belong in the claim.

The third thing to understand is that getting a patent is your reward for providing a description that is sufficient forone of ordinary skill (in the relevant technology) to actually make or do the invention. That means you need to “tell all”. The price for holding back can be invalidation of your patent after it is granted.

The fourth thing to understand is that there are no “patent police”. Once the patent is granted, the owner is responsible for identifying infringers and filing a lawsuit against them. These infringement lawsuits are civil suits so there is no government interest in how they are resolved (just like personal injury, breach of contract and divorce). There are “private enforcers” that will file and litigate patent infringement lawsuits for a portion of the damages if the situation warrants it. These enforcers are called non-practicing entities (NPEs). The cost of an infringement suit (in legal fees) is typically measured in millions of dollars for each side. The proceedings can go on for years. This means that patents are most suitable for products expected to generate revenues measured in tens, hundreds or thousands of millions of dollars.

The fifth thing to understand is that having a patent is no substitute for having proof of concept. Investors want to see proof that the product works and that there is a market for it. That is what closes deals. A patent (or even a pending application) can sweeten the deal, but it does not drive the bargain by itself. Inventors that think they will file a patent application and sell the idea without product testing and/or marketing research are likely to be disappointed.

The sixth thing to understand is that the patent office doesn’t care. The Examiner that handles your application is typically indifferent as to whether the final answer is “yes” or “no”. The person that cares about your application is your representative (Agent or Attorney). Look for a representative that has a practice focused on dealing with Patent Examiners.

The seventh thing to understand is that the process of getting a patent granted is both costly and time consuming. The success stories usually involve inventors that launched a company (or product) after filing an application and used part of their revenue stream to fund the patenting process. In other words, a patent strategy should be part of a business plan not a substitute for a business plan.

admin

TPP on Patents: New may not be absolutely novel

patentpost1

The TPP (Trans-Pacific Partnership) was apparently ratified on October 5, 2015 by the United States, Japan, Australia, Canada, Malaysia, Mexico, Peru, Vietnam, Brunei, Chile, New Zealand, and Singapore. While the treaty covers many aspects of trade, one provision in particular will be of interest to readers of this blog. The full text has not been officially released yet by a leaked version has been provided by Wikileaks.Article QQ.E.2: {grace period}

Each Party shall disregard at least information contained in public disclosures used to determine if an invention is novel or has an inventive step if the public disclosure:

  • was made by the patent applicant or by a person who obtained the information directly or indirectly from the patent applicant; and
  • occurred within 12 months prior to the date of filing of the application in the territory of the Party.

This is similar to 35 U.S.C. §102(b) prior to the AIA. Japan previously had a six month grace period and Australia and Canada already had a one year grace period. The exact status of the grace period in the US under tha AIA has been somewhat unclear.

Prior to the AIA, an inventor could disclose an invention (e.g. at a conference or in a scientific publication) and file a provisional patent application one year later. This effectively provided two years to file a “bona fide” application on the disclosed invention.

Following the revision of §102, Chief Judge Randall Rader of the CAFC (now retired) was heard to say that the grace period under the AIA required filing of a non-provisional application (US or PCT designating US) within the first year. While the rationale behind this statement was not clear to me, Judge Rader’s opinion carries infinitely more weight than mine, although he retired from the bench before the CAFC dealt with any cases on the subject.

It is not yet clear how section 102 (AIA) will be interpreted under TPP.

Assuming that the leaked copy of the treaty is correct, we now have a bloc of countriesa including all of North America as well as Australia/New Zealand and Japan that provide a one year grace period for inventors.

It will be interesting to see how this influences the pending Transatlantic Trade and Investment Partnership (TTIP) between the European Union and the US. A grace period is being discussed in those negotiations although it is difficult to guess how likely it is to find its way into the final agreement.

Having secured a 12 month grace period in TPP, the US is in a position to push for a similar provision in TTIP under the banner of “International Harmonization”.

Some readers may recall that it was “International Harmonization” which led to inclusion of first [inventor] to file provisions in the AIA. It will be interesting to see if the EU is prepared to pay the piper in TTIP.

admin

Google Glides by Section 101

US 2015/0227523 assigned to Google Inc. of Mountain View CA relates to computer implemented methods, non-transitory computer storage devices and computer implemented search systems. The application claims priority back to a May 2009 provisional application through an intervening US utility application from May 2010. The claims all relate to the idea that a single search query is applied to local files belonging to the OS, local files belonging to third party applications and the Internet. Results from all sources are presented in a ranked list and the ranking may be adjusted after the user makes a selection from the initial list.

As one might expect, there are a lot of novelty and obviousness rejections on the record in this family. However, there are three interesting things about the prosecution of this case.

The first interesting thing is that Google seems to feel it pays to have a US application pending, even if there is no measurable progress towards grant.

In the May 2010 parent case, there were a total of four Office Actions (two non-final and two final) with an intervening RCE. An interview was conducted prior to filing the fourth response but the fourth OA response elicited an advisory action from the Examiner.

Google responded by filing a notice of appeal and then the current application. Based on PAIR and the PTAB portal it does not seem like an appeal brief was ever filed. This is an interesting strategy because it buys time (2 months) and is less costly than a second RCE ($800 vs $1700 for a large applicant). The current case was filed exactly eight months after the last OA in the May 2010 parent case. As a result of this strategy, the next RCE filed will be a “first” RCE in the current case and subject to a fee of $1200 instead of $1700; large entity). The aggregate savings (notice of appeal instead of second RCE + first RCE instead of third RCE) is $1400. That is nearly enough to offset the cost of filing the present application ($1600; large entity).

The second interesting thing is that §101 rejections have not been raised. This is interesting because of the independent claims presented:

A computer-implemented search method, comprising:                                       

receiving, by a search application installed on a user device, a query entered by a user of the device;              

providing, by the search application, the query to a plurality of third-party applications installed on the device, other than the search application;                                                                                                                                  

receiving, by the search application, a respective response from each of the third-party applications, each response including one or more search results that identify data managed by the respective third-party application from which the response is received;                                                                                                                                         

integrating, by the search application, the responses from the third-party applications into an integrated result set that includes groups of search results, wherein each group includes only search results received from a corresponding one of the third-party applications;                                                                                                                                    

ranking the groups of search results in the integrated result set based on prior user selections of search results from the third-party applications on the user device; and                                                                                                  

presenting, by the search application, the integrated result set on the user device in an arrangement that corresponds to the ranking of the groups of search results in the integrated result set.

One or more non-transitory computer storage devices having instructions stored thereon that, when executed by a computer, cause the computer to perform operations comprising:                                                                       

receiving, by a search application installed on a user device, a query entered by a user of the device;           

providing, by the search application, the query to a plurality of third-party applications, other than the search application; receiving, by the search application, a respective response from each of the third-party applications, each response including one or more search results that identify data managed by the respective third-party application from which the response is received;                                                                                                                       

integrating, by the search application, the responses from the third-party applications into an integrated result set that includes groups of search results, wherein each group includes only search results received from a corresponding one of the third-party applications;                                                                                                                                   

ranking the groups of search results in the integrated result set based on prior user selections of search results from the third-party applications on the user device; and presenting, by the search application, the integrated result set on the user device in an arrangement that corresponds to the ranking of the groups of search results in the integrated result set.

A computer-implemented search system, comprising:                                                                                                   

a search application, on a user device, configured to provide an interface for receiving user-entered queries; and          

a plurality of third-party applications, on the user device, that are separate from the search application and configured to receive the user-entered queries from the search application, and to provide search results to the search application that are determined to be relevant to the user-entered queries,                                                                 

wherein the search application is further configured to generate an integrated list of search results from the plurality of third-party applications, to group the search results in the integrated list into groups of search results, wherein each group includes only search results received from a corresponding one of the third-party applications that provided the search results, and to order the groups of search results in the integrated list based on a measure of how frequently search results from the respective third-party applications have previously been selected within the search application.

As regards method claim 21 and Beauregard claim 31, the recited

receivingprovidingintegratingranking and presenting seem, at least on their face, to be routine computer functions which define an abstract idea in the form of a computer algorithm. Assuming that this is not the case, it is still interesting that the Examiner did not see fit to ask why the claims are more than an abstract idea by putting forth a § 101 rejection.

As regards system claim 40 it recites two software components (a search application and a plurality of third-party applications) which each reside “on a user device”. Although this is a system claim, no hardware components other than “user device” are recited. Descriptive language describes how the software components interact with one another in functional terms. On its face this would seem to be either a claim for “software per-se” or a statement of an abstract idea with instructions to “apply it” on a computer. Assuming that this is not the case, it is still interesting that the Examiner did not see fit to ask why the claims are more than software per-se or an abstract idea by putting forth a § 101 rejection.

The third interesting thing is the preamble of Beauregard claim 31: “One or more non-transitory computer storage devices having instructions stored thereon that, when executed by a computer, cause the computer to perform operations comprising: …”

Beauregard claims originated in an era when computer program products were normally distributed on tangible media (first diskettes, then CD ROM disks). They gained popularity as a way to claim a program disembodied from a computer. This was, and still is, desirable because the purveyor of the software product is often separate from the purveyor of the hardware product on which the software runs.

The standard preambles for Beauregard claims  were “A machine readable media comprising instructions…” and “A computer program product comprising instructions…” As the Internet evolved and it became common to distribute software via download from a remote server, US Examiners began to ask for a “non-transitory” stipulation in claims of this type to make it clear that “signals per-se” are excluded.

Claim 31 is the first time that I have seen the “non-transitory” stipulation applied to a computer storage device (which is inherently non-transitory). Claim 31 does not require that the “instructions” on the device be non-transitory. It is interesting that the Examiner did not ask why the “instructions” are not a signal per se.

The take home message here is that there appears to be a lot of variation in the way the rules are applied within the US patent office.

 

admin