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

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.


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