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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


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


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.


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.


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.


TPP on Patents: New may not be absolutely novel


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.


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.



If it is too silly, is it still Trademark Infringement?

I don’t usually relate to trademark issues but this is too good to pass up:





Fat Lady in the Limelight?

J.D. Salinger was famous for saying (in Catcher in the Rye) “It’s not over until the fat lady sings.” This posting is about the August 13, 2015 en banc decision from the CAFC in Limelight Networks, Inc. v. Akamai Technologies, Inc. The CAFC heard the court on remand from the Supreme Court.

The remand order itself was covered in an earlier posting.

For those readers that have not been following the case, in the original CAFC en-banc decision of August 31, 2012 that court “…reconsider[ed] and overrule[d] the 2007 decision of this court in which we held that in order for a party to be liable for induced infringement, some other single entity must be liable for direct infringement. BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007). To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.

The 2012 court ruled: “Requiring proof that there has been direct infringement as a predicate for induced infringement is not the same as requiring proof that a single party would be liableas a direct infringer. If a party has knowingly induced others to commit the acts necessary to infringe the plaintiff’s patent and those others commit those acts, there is no reason to immunize the inducer from liability for indirect infringement simply because the parties have structured their conduct so that no single defendant has committed all the acts necessary to give rise to liability for direct infringement.”

On June 12, 2014 the Supreme Court remanded the Case to the CAFC indicating: “The Federal Circuit seems to have adopted the view that Limelight induced infringement on the theory that the steps that Limelight and its customers perform would infringe the ’703 patent if all the steps were performed by the same person. But we have already rejected the notion that conduct which would be infringing in altered circumstances can form the basis for contributory infringement, and we see no reason to apply a different rule for inducement. In Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972), a manufacturer produced components of a patented machine and then exported those components overseas to be assembled by its foreign customers. (Theassembly by the foreign customers did not violate U. S.patent laws.) In both Deepsouth and this case, the conduct that the defendant induced or contributed to would have been infringing if committed in altered circumstances: in Deepsouth if the machines had been assembled in the United States, see id., at 526, and in this case if performance of all of the claimed steps had been attributable to the same person. In Deepsouth, we rejected the possibility of contributory infringement because the machines had not been assembled in the United States, and direct infringement had consequently never occurred. See id., at 526–527. Similarly, in this case, performance of all the claimed steps cannot be attributed to a single person, so direct infringement never occurred. Limelight cannot be liable for inducing infringement that never came to pass.

On May 13, 2015 a CAFC panel comprising Chief Judge Prost and Judhes Linn and Moor delivered an opinion in which the court held:

In enacting § 271(b) and (c), Congress cleared away the morass of multi-actor infringement theories that were the unpredictable creature of common law in favor of two infringement theories that it defined by statute…. to the extent that tort law’s contributory liability principles are applicable at all, § 271(b) and (c) embody the application of contributory liability principles to patent law…. The fact that Congress chose to impose some forms of secondary liability, but not others, indicates a deliberate congressional choice with which the courts should not interfere…. Furthermore, Akamai’s broad theory of attribution— in which a defendant would be liable for “causing and intending an act or result,” Akamai’s Letter Br. at 4 (citations omitted)—would render § 271(b) redundant. Subsection (b) states: “Whoever actively induces infringement of a patent shall be liable as an infringer…. As this court correctly recognized inBMC, “[t]he concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party… guilt of direct infringement of a method claim under § 271(a) requires performance by the accused of all steps recited in the claim… Thus, contrary to Akamai’s and the dissent’s positions, actors whose innocent actions coordinate to cause harm generally are not subject to liability at common law. Here, there is no evidence that Lime- light’s customers knew what steps Limelight was taking, much less evidence that they coordinated further. Thus, there was no concert of action.”

The May 2015 panel concluded , of course, that the district Court’s JMOL of non-infringement was proper.

That brings us to the August 13, 2015 en-banc decision of the CAFC. The decision is short and to the point (9 pages). It opens with a statement that “This case was returned to us by the United States Supreme Court, noting “the possibility that [we] erred by too narrowly circumscribing the scope of § 271(a)” and suggesting that we “will have the opportunity to revisit the § 271(a) question . . . .”

The 2015 en banc Court states: We will hold an entity responsible for others’ performance of method steps in two sets of circumstances:

(1) where that entity directs or controls others’ performance, and

(2) where the actors form a joint enterprise.

The court then defines joint enterprise:

A joint enterprise requires proof of four elements:

(1) an agreement, express or implied, among the members of the group;

(2) a common purpose to be carried out by the group;

(3) a community of pecuniary interest in that purpose, among the members; and

(4) an equal right to a voice in the direction of the enterprise, which gives an equal right of control.

The bulk of the opinion goes to establishing that Limelight “directs or controls” that its customers perform the tagging and serving steps of the method claim at issue. The conclusion is that “At trial, Akamai presented substantial evidence from which a jury could find that Limelight directly infringed the ’703 patent. Therefore, we reverse the district court’s grant of judgment of noninfringement as a matter of law. Because issues in the original appeal and cross-appeal remain, we return the case to the panel for resolution of all residual issues consistent with this opinion.”

So the fat lady has sung only the rules for infringement. Final decision in this case will (apparently) come from a future CAFC panel. Time will tell whether the Supreme Court approves of the new rules they invited the CAFC to suggest.


Apple Sees Value in Maintaining a Patent Application that May Never Be Granted

This posting is the result of the serendipitous appearance of a “Business Insider” article entitled “Apple has filed a patent that could completely reinvent the idea of a mixtape” in my inbox. The patent application referred to is US20150220634. A quick look at the claims in the application surprised me for two reasons.

The first reason for surprise is that the claims are all directed towards user side implementation (i.e. playback of a “digital mix tape” by a recipient after someone else has prepared it).

The second reason for surprise is that although the application was filed in April 2015, the claims indicate no effort to avoid a §101 rejection as being directed towards an abstract idea.

The second reason is partly explained by the fact that the application is a continuation of US13/481,405 filed on May 25, 2012. At that time most of us knew Alice as a flighty young fictional lady who fell down a rabbit hole and/or went through a looking glass. In fact on July 9, 2012 a panel of the CAFC went so far as to hold that “…when— after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.”

This means that Apple, and their legal representatives, were following accepted practice when they filed US 13/481,405 in May of 2012. The fact that the “manifestly evident” doctrine of that first CAFC panel would subsequently be overturned by an en banc re-hearing which was subsequently validated by the Supreme Court was blissfully unknown to all when Apple filed their first “Digital Mix Tape Application”. Unfortunately for Apple, by the time the first Office Action in that case was issued (August 12, 2014) the “manifestly evident” doctrine was only a fond memory and the Examiner stated unequivocally that the claims were directed towards an abstract idea because the method steps are not performed by a machine and/or because “providing a compilation of media tracks to a consumer as a gift” is an abstract idea. The Office action also contained §112 (indefinite) rejections and a §102 and several §103 rejections.

Looking at the wrapper for the parent case (13/481,405) provided insight about the first reason for surprise in the continuation application (claims are all directed towards user side implementation). In a response filed on November 12, 2014, Apple cancelled all of the claims in the parent case and entered new claims. This made short work of all the rejections of record. However, the Examiner found the amendment non-compliant because the new claims are directed towards user side implementation (i.e. playback of a “digital mix tape” by a recipient after someone else has prepared it) while the original claims were directed towards server side implementation (i.e. preparation of a “digital mix tape” by the server in response to a request followed by transmission to a recipient).

These new “user side” claims became the subject of the April 2015 application which was the subject of the Business Insider article.

Since we would all like to have a portfolio like Apple’s what can we learn from their handling of the case?

The most obvious thing is “minimize estoppel”. Once Apple decided they were unlikely to get an allowance in the original case, they did not provide any substantive answers to the rejections offered by the Examiner.

The next, less obvious, thing is that having an application pending in the US is valuable. Apple spent several thousand dollars to file a continuation application with only user side claims which will be tricky to enforce if granted. Presumably this is largely a ploy to allow them to return to the more commercially relevant sever side claims in the future if they develop a product around this concept.

The least obvious thing is enrich your specification with unclaimed detail. Claims like: “…presenting a first name for the first media item before playing the first media item for the first time; and presenting a second name for the first media item after playing the first media item for the first time, where the first name is a fake name and the second name is an actual name of the first media item.” are presumably supported by the specification of the parent application, although they were not claimed. Even the independent claims in the April 2015 continuation application have features that were not present in the parent application. This forces the Examiner to reveal the best references available. Apple can then assemble a set of features that they feel is patentable over the art and draft a server side claim to be filed in a subsequent continuation application.

The last thing is, alas, all too obvious. You want to have a budget like Apple’s so you can play these games with numerous applications in a diverse portfolio.

Feedback on how those of us with more modest budgets might employ a similar strategy will be appreciated.