January 2013

Moving from a Patent Agent to a Patent Attorney

Patent

By Dennis Crouch

In November 2012, I posted about the fact that a large number US Attorneys are actually listed as "patent agents" on the USPTO rolls rather than patent attorneys. While this issue is typically rather minor it does have a few implications. First, it creates an artificial disconnect between state attorney conduct regulators and the USPTO's Office of Enrollment and Discipline (OED). The professional status of Patent Agents is regulated only by the USPTO while the Patent Attorneys are regulated by both the USPTO and the relevant state of attorney registration. Second, the misidentification causes policymakers to over-estimate the number practicing patent agents. The combination of these two issues pushes the USPTO's OED to be more proactive and aggressive because it believes itself to be the sole regulator of so many patent law professionals. Finally, the misidentification creates some confusion in the marketplace – especially for innovators looking particularly to hire a patent agent because of their perceived lower cost and greater technological focus. See: Dennis Crouch, Are you a Patent Attorney Masquerading as a Patent Agent? at https://patentlyo.com/patent/2012/11/patent-attorney-agent-registration-status.html.

In the November post, I particularly called-out the Finnegan Henderson firm for having a large number of patent attorneys actually listed as patent agents in addition to well-known patent litigator Joe Re from Knobbe who was also listed as a patent agent. I just pulled-up the USPTO Roster again and found that Joe Re is now officially a patent attorney as are about 20 Finnegan attorneys who were previously listed as patent agents. In all, more than 200 attorneys have changed their status in the past two months. I suspect that there are at least 1,000 more individuals who are still misidentified on the rolls.

Arbitrary $50,000 contingency payment does not prevent mootness

Patent, ,

By Jason Rantanen

Allflex USA, Inc. v. Avid Identification Systems, Inc. (Fed. Cir. 2013) Download 11-1621
Panel: Lourie, Clevenger, Bryson (author)

Allflex v. Avid involves the situation where a party to litigation settles the case but seeks to preserve its ability to appeal the district court's adverse rulings by structuring the settlement agreement to include a contingency payment that turns on the outcome of the appeal.  Here, the Federal Circuit imposes some constraints on parties' ability to avoid mootness through what effectively amounts to a "side bet."

Allflex sued Avid for, among other things, a declaratory judgment that it did not infringe several of Avid's patents.  During the litigation, it came to light that Avid and its (former) counsel "should be sanctioned" because they had failed to disclose the existence of reexamination proceedings that were pending with respect to the patents in suit.  (Due to the settlement the parties later entered into, no actual sanctions were apparently ever assessed against Avid).  The court subsequently granted partial summary judgment on Allflex's inequitable conduct claim, holding that Avid's failure to disclose information about prior public use and an offer of sale was material.  The court declined to enter summary jugment on the issue of intent, concluding that a genuine issue of fact remained.  (Note: the court's ruling issued a few months before the Federal Circuit's en banc decision in Therasense v. Becton Dickinson.) Shortly thereafter, the parties entered into a settlement agreement under which Avid agreed to pay Allflex $6.55 million.

Comment: it's noteworthy that in this case the patent holder paid the accused infringer a substantial sum of money to settle the case.  After skimming through Allflex's Complaint, this does not appear to me to be (at first glance) an instance of a reverse payment, since Allflex's complaint alleged several other claims,including breach of a settlement agreement, against Avid, and Allflex potentially stood to recover monetary sanctions.  However, those who are interested in reverse payment cases may wish to take a closer look, particularly in light of the court's statement on p. 13 that "Avid is not and never was at risk of having to pay a monetary judgment on that claim, as inequitable conduct is a defense or an equitable remedy, not a claim for damages, even when it is pleaded as an affirmative claim in a declaratory judgment action." 

The settlement agreement contained a contingency clause, however.  Avid reserved the right to appeal the district court's grant of summary judgment of noninfringement, as well as the materiality and sanction rulings, and if it was successful in overturning any or all of those three findings Allflex would pay Avid $50,000.  Avid did appeal, challenging the district court's rulings on all three issues.  Allflex declined to file a brief. 

In general, a party who is unhappy with the district court's rulings may not appeal those rulings after it has settled the litigation: the settlement agreement renders the case moot because the parties are no longer adversaries.  For example, a patent holder who enters into an agreement with its opponent to settle the case in its entirety after the district court grants summary judgment of invalidity could not subsequently appeal the invalidity ruling. 

On the other hand, where the parties agree to a sum of damages that would be paid or not paid depending on the outcome of the case on appeal, a live controversy may remain.  Avid's own past illustrates this point: in a separate litigation, it had obtained a jury verdict of $26,981 for a patent that was subsequently held by the court to be unenforceable due to inequitable conduct.  The parties settled all issues, but agreed that if Avid prevailed on its appeal of the inequitable conduct issue, it would recover the $26,981 in damages.  Avid Identification Systems, Inc. v. Crystal Import Corp., 603 F.3d 967 (Fed. Cir. 2010).  Even though the defendant in that case declined to contest the merits of the appeal, the $26,981 was "not a token or arbitrary sum introduced for the purpose of manufacturing a controversy."  Id. at 972. 

Here, however, the $50,000 did constitute such a "token or arbitrary sum introduced for the purpose of manufacturing a controversy."  It did not reflect an actual damages award, as in Crystal Import, nor was it a "reasonable estimate of the value of any of the issues on appeal."  Slip Op. at 12.  Instead, it was just a number that Avid had hoped would be large enough to persuade the court that a controversy remained.  The court found particularly problematic the fact that the $50,000 would be awarded whether Avid prevailed on any one or more of the issues: this indicated that the $50,000 was completely untethered to the value of any one of those issues. 

The court's ultimate holding on the issue: "We hold that where, as here, the appellant has identified no relationship between the valuation placed on the appeal and the issues the appellant wishes to challenge, the parties have simply placed a “side bet” on the outcome of the appeal, which is not enough to avoid a ruling of mootness."  Slip Op. at 14.  There are good reasons for this rule:

When one party wishes to maximize its prospects of prevailing on an issue that has been the subject of a settlement agreement similar to the one in this case, it would no doubt be tempting to set the contingency payment at a level that would be sufficient to avoid the mootness rule of Aqua Marine, yet low enough to avoid encouraging the adverse party to participate in the appeal. As this case demonstrates, that results in the highly unsatisfactory situation in which the court finds itself with a one-party appeal, where there is no adversarial presentation and the court consequently has reduced confidence in any ruling it might enter. In some instances, as we pointed out in Crystal Import, one-party appeals are unavoidable. But where, as in this case, the appellant has failed to satisfy us that the arrangement leading to the one-party appeal reflects the existence of a legitimate, continuing case or controversy, we decline to be a party to the exercise.

Third Party Submissions

Patent

by Dennis Crouch

To the extent that folks are studying this, the following is a list of the 111 applications for which third parties have submitted prior art references under pre-issuance submission authorization of the America Invents Act.

In December, PTO Director David Kappos reported that the PTO had received 270 third party submissions.  The PTO’s figure represents the number of submissions but the report fails to mention multiple submissions per application.

+ + + + +

The first case from the list that I pulled-up with an Office Action is U.S. App. No. 12/829,968 owned by Alcon and that claims an implantable sensor that fits in the anteriour chamber of a patient’s eye. 

1. A sensor comprising:

a housing having a configuration that generally conforms to a curvature of an anterior chamber of a patient's eye; and

a sensing device disposed in the housing and configured to detect physiological parameters and transmit a signal representing the physiological parameters.

The anonymous third party submitted a german patent application as a reference and now that application has served as the basis for the USPTO rejection of the claims. The Office Action also rejected the claims as being indefinite based upon the claim term “generally.”  The examiner writes:

The term ‘generally’ is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and the one of ordinary skill in the art would not be reasonable apprised of the scope of the invention. As such, it is unclear what is claimed by ‘generally conforms.’

Citing 35 U.S.C. 112(a).

The examiner also rejected the claim for lacking subject matter eligibility under 35 U.S.C. 101 because the claim is “drawn to a body part.”  The examiner suggested that a cure for the perceived problem would be to claim that the device is “configured to” conform to the patient’s eye. 

And the Internet Won: Parallel Networks Versus Website Operators

Patent

Parallel Networks v. Abercombie & Fitch, et al. (Fed. Cir. 2013)

Back in 2010 Parallel Networks sued about 120 different companies in a single patent infringement lawsuit – alleging infringement of its U.S. Patent No. 6,446,111. The patent covers the use of individualized applets on handheld devices to speed up data transfer rates but have been asserted against almost anyone involved in ecommerce. The original owner EpicRealm created some buzz back in 2000 with $75 million in venture financing. However, the company was squeezed out by Akamai. The patents are basically all that is left, and the Federal Circuit has largely eliminated their power (at least of the '111 patent) by affirming E.D.Tex. District Court Judge Davis's narrowing claim construction and resulting summary judgment of noninfringement.

The decision is primarily a detailed claim construction analysis that focuses on defining the scope of claim terms with a focus on how those terms are used in the claims and how the invention is described in the specification.

Design Patents are Still Relatively Quick

Patent

The chart below is a histogram of prosecution pendency for design patents issued during the past three years. As the chart shows, the bulk of design patents are issued within 12-months of the filing date and only a handful take more than three years to issue. As I have written before, most design patents are issued without substantive rejection or amendment.

Nike's Design Patent No. D659,988 issued last year after less than three-months in prosecution as part of the design patent "rocket docket."

Toyota's Design patent No. D674327.

USPTO New Fee Schedule

Patent, ,

By Dennis Crouch

Today the USPTO published its final fee-setting rules under what is being termed the USPTO’s “Section 10 authority” based upon Section 10 of the Leahy-Smith America Invents Act that provides the USPTO with broad authority to set fees with the major caveat being that the fees as a whole be set to recover the aggregate costs of the Patent Office. The new fees are scheduled to become effective on March 19, 2013. (A few days after the March 16, 2013 critical date for the First-to-File Changes.)

The major changes include:

  • Micro entity 75% reduction for most fees (universities qualify and may want to file provisional applications now and wait to file their non-provisional applications).
  • Total Filing Fees – Up: $1,260 to $1,600.
  • Issue Fees – Down: $1,770 to $960 and $300 publication fee eliminated. (These will not be implemented until January 2014).
  • Maintenance Fees: Up
    • First Fee at 3 ½ years: $1,150 to $1,600.
    • Second Fee at 7 ½ years: $2,900 to $3,600.
    • Third Fee at 11 ½ years: $4,810 to $7,400.
  • Extension-of-time fees up about 10%
  • Claim Fees: Up
    • More than 3 independent claims: $250 to $420 per claim.
    • More than 20 total claims: $62 to $80 per claim.
  • RCE Fees: UP: $930 to $1,200 and new surcharge of $500 for filing a second RCE.
  • Appeals: Slightly Cheaper file an appeal, but a new surcharge of $2,000 for actually forwarding the brief to the PTAB rather than settling the case with the examiner.
  • Ex Parte Reexamination: Down from $17,750 to $12,000, small and micro entity privileges apply.
  • Inter Partes Reviews will cost $23,000 ($14,000 refund if IPR petition is rejected).
  • Post Grant Reviews will cost $30,000 ($18,000 refund if PGR petition is rejected).
  • Derivation Petition remains $400.
  • Assignments: Free if submitted electronically this is down from $40.

More here: https://t.co/GCbHlXN1

Design patent fees are also changing:

  • Total Filing Fees – $530 to $760
  • Issue Fee – Down: $1010 to $560

3rd Circuit: Covenant not to Sue is a License and therefore Not Dischargeable in Bankruptcy

Patent,

By Dennis Crouch

In re Spansion (3rd Cir. 2012)

A recent Third Circuit decision focuses on the impact that a bankruptcy has on a patent license. In 2009, Spansion and Apple settled a patent dispute with Spansion agreeing to end its case at the ITC and to refrain from suing in district court. The agreement stated:

Provided that neither Spansion nor any successor in interest to any of the patents being asserted in the referenced ITC action do not bring an action of any nature asserting any such patent before any legal, judicial, arbitral, administrative, executive or other type of body or tribunal that has, or claims to have, authority to adjudicate such action in whole or in part against Apple or any Apple product, Apple agrees Spansion will not be disbarred as an Apple supplier as a result of the referenced ITC action.

The agreement also particularly stated that Spansion will remain a primary supplier "for the life-time of the product" and will be considered for future platforms.

Later that year, Spansion filed for bankruptcy and the trustee moved to reject the settlement as an executory contract. The normal rule in bankruptcy (under 11 U.S.C. § 365(a)) is that the debtor (here Spansion) can unilaterally reject executory contracts if it so chooses. Any resulting contract damages will be unsecured debts that are unlikely to receive any payout. IP law has a special exception codified in 11 U.S.C. § 365(n). Under that rule, a licensee can elect to retain its license rights despite a debtor's rejection. The statute states:

If the trustee rejects an executory contract under which the debtor is a licensor of a right to intellectual property, the licensee under such contract may elect . . . (B) to retain its rights . . . under such contract . . . to such intellectual property . . . as such rights existed immediately before the case commenced."

On appeal, the question is whether the contract between Spansion and Apple is a license or instead merely a promise not to sue. The bankruptcy court initially held that Apple's § 365(n) election did not apply because the agreement was not a license. Reviewing that decision, the Delaware District Court found that the agreement was a license "because it was a promise not to sue." Now, the Third Circuit has affirmed the District Court with quotation from the Supreme Court's 1927 decision in De Forest Radio.

"[A] license … [is] a mere waiver of the right to sue by the patentee." De Forest Radio Tel. & Tel. Co. v. United States, 273 U.S. 236, 242 (1927). A license need not be a formal grant, but is instead a "consent[ ] to [the] use of the patent in making or using it, or selling it … and a defense to an action for a tort." Id. The Court of Appeals for the Federal Circuit explained that the inquiry focuses on what the agreement authorizes, not whether the language is couched in terms of a license or a covenant not to sue; effectively the two are equivalent. TransCore, LP v. Elec. Transaction Consultants Corp., 563 F.3d 1271 (Fed. Cir. 2009).

Here, the promise to "dismiss the ITC action" and "not re-file the ITC action or another action related to one or more of the same patents against Apple" was a promise not to sue on a patent and therefore is a license of patent rights.

Thus, Apple retains its license regardless of who buys the patent rights.

One question not resolved by the appeal are Apple's ongoing duties vis-à-vis the agreement. The statute calls for ongoing payment of royalties. However, it appears that there is no further monetary payment due in the agreement, although Apple has promised to keep Spansion as a supplier and consider Spansion for future contracts. If Apple is released from those commitments then it will actually be better off because of its business partner's bankruptcy – a result that is not often the case.

Deleting Cybor: En Banc Opportunity

Patent,

by Dennis Crouch

Hal Wegner recently sent around an interesting note regarding the Federal Circuit and the fact that there are only nine regular judges on the court (excluding senior judges). This number is down from the court's usual contingent of twelve judges. Notably absent are Retired Chief Judge Michel, Senior Judge Linn, and Senior Judge Bryson. Richard Taranto has been nominated to fill Chief Judge Michel's position that has been vacant since 2010. No nominees have been put forward yet to replace either Judge Linn or Judge Bryson who took senior status in November 2012 and January 2013 respectively.

The current nine-member circuit is important in the context of petitions for en banc (re)hearing. The court's normal operating procedure is that a case will only be heard en banc if a majority of judges favor an en banc hearing. With the current slate of nine regular members, a majority requires only five votes.

This is particularly relevant to claim construction because a majority of current member have suggested that Cybor should be reviewed and have thus implied that judges should be given some amount of deference – at least for the factual conclusions that lead to the claim construction.

The most recent en banc vote on revisiting Cybor case was the 2012 Highmark petition that lost on a 6-5 vote. Since that vote, two judges from the majority have left the court. Wegner writes:

En banc review was denied by a 6-5 vote in Highmark, Inc. v. Allcare Health Management Systems, Inc., 701 F.3d 1351 (Fed. Cir. 2012). Two voices from the per curiam majority opinion have since taken senior status and thus will not vote on en banc review, Linn, Bryson, JJ. The Highmark dissent by five votes in a minority thus could translate into a five vote majority in any new en banc vote: The five votes of Rader, C.J., Moore, O'Malley, Reyna, Wallach, JJ., create the necessary majority for en banc review.

Once Richard Taranto is confirmed, a majority will immediately require six votes – a much less likely outcome.

Next step: Finding the right case, right away. One potential suggestion is Lighting Ballast Control LLC v. Phillips Electronics North America Corp. et al.

Inventor Count

Patent,

by Dennis Crouch

The chart below shows the number of inventors per patent over the past seven years.  What you can see is a continued increase in the percentage of patents with teams of inventors. In particular, the percentage of patents with only one inventor continues to fall while the percentage of patents with three or more inventors continues to rise.  These results follow the long trend that I discussed back in 2009: See Dennis Crouch, The Changing Nature of Inventing: Collaborative Inventing at https://patentlyo.com/patent/2009/07/the-changing-nature-inventing-collaborative-inventing.html. 

PatentlyO199

See also https://patentlyo.com/patent/2012/10/the-number-of-inventors-per-patent-has-risen-fairly-steadily-for-the-past-40-years-today-most-patents-are-directed-toward-i.html; https://patentlyo.com/patent/2011/05/persons-skilled-in-the-art-should-the-now-established-model-of-team-based-inventing-impact-the-obviousness-analysis.html

 

 

Gunn v. Minton: Oral Arguments

Patent

By Dennis Crouch

Gunn v. Minton (Supreme Court 2013)

The Supreme Court today heard oral arguments in the case of Jerry Gunn, et al. v. Vernon Minton. In the case, Mr. Minton has alleged that his former litigation counsel committed legal malpractice resulting in a dramatic loss of potential patent licensing revenue.

A malpractice claim against a lawyer is traditionally a state law claim. The question that has reached the Supreme Court is, despite the underlying state law claim, whether the Federal Courts have exclusive jurisdiction over this case because it requires substantial consideration of patent law issues. If the Federal Courts have jurisdiction than the Federal Circuit would also have jurisdiction on appeal.

Although there are some nuances, the basic malpractice claim is that his attorneys should have argued that the public use and sale of his patented product was an experimental use and therefore did not create self-sacrificial prior art or trigger the statutory bar of (old) 102(b).

From prior Supreme Court decisions such as Grable, we know that the current rule is that Federal Courts have subject-matter jurisdiction over State Law claims when the well pled complaint includes a “substantial” “contested issue” of Federal law.

The most likely focus of an opinion in this case will be a further definition of the meaning “substantial” and what is meant by a “contested issue.” My take-away is that the Supreme Court has no inclination of severely restricting arising under jurisdiction.

The first question of the case came from Justice Ginsburg who pointedly asked the law firm’s attorney (Ms. Webre) “what do you mean by ‘substantial’? The answer:

I would answer in two layers. First, Mr. Minton’s claim did not involve a legal question of … how does the experimental use doctrine work; how is it applied, what are its parameters. . . .

And it is not a substantial question because, first, from a unique case perspective, it involved merely a hypothetical determination. There were no actual patent rights that would be at issue. Those were already fully, finally, irrevocably determined in the underlying patent litigation in Federal court.

And second, from a jurisprudence standpoint, the question of uniformity of patent law, any decision by a State court in Mr. Minton’s legal malpractice claim would not be binding in any way on either the PTO in a patent application, or on any subsequent Federal court deciding a real patent case.

Ms. Webre’s key argument here is separate that notion of an issue necessary to resolve the case from that of a “substantial issue.” Both are required for Federal Jurisdiction under Grable.

The discussion later moved to the Federal Circuit’s aggrandizement of jurisdiction. Ms. Webre again:

I think it’s interesting to back up a little bit and look at the Federal Circuit’s evolved perception of its own exclusive jurisdiction. In the early years of the Federal Circuit in 1984, the first Chief Justice — the first chief judge of the court, Chief Judge Markey, in the Atari case … the Federal Circuit wrote, “Congress was not concerned that an occasional patent law decision of a regional circuit court or of a State court would defeat its goal of increased uniformity in the national law of patents.”

That was the view of the Federal Circuit’s own jurisdiction in 1984. But in the time evolved, the Federal Circuit has changed its perception of its own jurisdiction and that’s why we are here today. In 2007, the Federal Circuit went awry and changed the standard that no longer follows what this Court articulated in Grable.

They have improperly conflated the necessity and substantiality components of an appropriate Grable analysis, and they totally disregard a proper balance of the State and Federal interests. The Federal Circuit announced that there’s an interest in — Federal interest in uniformity of patent law, and then that was that. That was the end of the inquiry. There is no balance if you don’t look at the State interest on the other side.

In rebuttal, Mr. Michel (attorney for the plaintiff) argued that patent law is fairly unique because the law exclusive Federal jurisdiction. In his view, the exclusivity shows congressional intent that even seemingly minor patent issues should be seen as substantial. Mr. Michel also discussed the potential impact on patent attorneys in each state who will be bound by the patent law malpractice rules derived from state court decisions even though the state courts are not bound to follow Federal Circuit precedent. He particularly pointed out that the Texas state court did not follow the Federal Circuit in this very case. Here, for instance the Texas trial court based its conclusion of no-malpractice on a concept of experimental use that departs severely from Federal Circuit precedent. In the final minutes of her response, Ms. Webre suggested that patent attorneys buck-up and recognize that they are bound by both federal and state law.

Read the transcript here: /media/docs/2013/01/11-1118.pdf

Reviving an Invalid Patent through Attorney Malpractice?

Patent

By Dennis Crouch

Normal rule is that when a court finds a patent invalid that the patentee will be estopped from attempting to enforce the patent against any other party. This is the rule that arises from Blonder-Tongue Labs., Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971).

My question: Would this collateral estoppel continue to apply if the patent owner was able to show that it lost the prior case because of attorney negligence rather than because the patent was actually invalid? In criminal and class action cases this sort of inadequate representation argument regularly wins with the support of the due process clause of the constitution. But, a patent infringement lawsuit is somewhat different. However, a key to the Blonder-Tongue decision is the assumption that in the originally case “the plaintiff had fully and fairly, but unsuccessfully, litigated same [validity] claim in the prior suit.” It is hard to say that the claim was fully and fairly litigated if its lack of success was due to attorney malpractice.

The outcome of this question is likely to have some impact on the Gunn v. Minton patent litigation malpractice case that was recently argued at the Supreme Court. In particular, if proof of inadequate representation can clear the patent then there is a much stronger case that the malpractice claim raises substantial issues of patent law.

When does the Written Description Requirement Limit Amendments to Design Patent Drawings

Patent,

By Dennis Crouch

In re Owens (Fed. Cir. 2013) (decision pending)

In 2006, P&G obtained a design patent for its Crest brand mouthwash bottle. D531,515. Before that patent issued, the company filed a continuation application and eventually amended the drawings to use ghost-lines (dashed lines) for most of the bottle design and solid design lines for only a small portion of the bottle surface.

In the figures below, the drawing on the left is the design drawing originally filed in the specification and issued in the D'515 patent. The drawing on the right is found in the continuation and the subject of this appeal. In design patents, the drawings are of critical importance because the single allowable design patent claim typically ties the scope of enforceable right to the drawings. Here, for instance, in the D'515 design patent P&G claims "the ornamental design for a bottle, as shown and described."

Now, for claim purposes, ghosted lines have essentially no meaning and are given no weight. Thus, the continuation below claims a portion of the bottle base. The focus of the litigation is on the front portion of the bottle that previously claimed an inverted irregular pentagon and now appears to be limited to only the upper portion of that pentagon in a roughly trapezoidal shape. The base of the trapezoid is ghosted, but the drawing does claim the surface up to the ghosted line. In the photo of the Crest bottle to the right, you can see the inverted pentagon design is created by a label sticker.

During prosecution, the PTO rejected P&G's continuation application — concluding that the new claim (as shown in the drawing) did not satisfy the written description requirement of 35 U.S.C. § 112(a). In other words, it is not apparent from the originally filed specification that that the inventor was at that time in possession of the invention as now claimed. P&G's argument is that the area being claimed was already disclosed in the original application and that is literally true. The PTO responds, however, that the original application did disclose a break-point for the trapezoidal area now being claimed. In other words, nothing in the original application indicates that the portion now claimed could itself be a design. The PTO has proposed a rule it feels is administrable: applicants can amend claims by "ghosting" solid lines and vice-versa, but applicants cannot further partition areas or define new portions without running afoul of the written description requirement.

Design patents are largely governed by the same rules as utility patents. This is often unfortunate because the policy goals supporting many of the (utility) patent rules do not map well to the world of design rights. Designs are, for the most part, being used as an additional layer of trademark (trade dress) protection rather than as an incentive to invest in the invention of new designs. This case fits that mold well. But, it is the patent laws that we follow.

In thinking about the written description requirement, a good beginning approach is to try to first uncover the best analogy to utility patent doctrine. One analogy might be to subgenus & subrange claims. Utility patents regularly disclose and claim concentration level ranges, such as "concentration of cardiolipin is between 0.02 and 0.04%." When impinging prior art is discovered, one solution is to amend the claim scope to narrow the claims – perhaps to change the concentration to "between 0.02 and 0.03%." However, the written description requirements limits an applicant's ability to make this narrowing amendment unless there is some evidence that the applicant had (at the time of the application filing date) possession of the invention with the narrower range as well. For these points, the M.P.E.P. cites In re Smith, 458 F.2d 1389 (CCPA 1972) (a subgenus is not necessarily described by a genus encompassing it and a species upon which it reads) and In re Lukach, 442 F.2d 967 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range). Of course, the amendment by P&G in the present case is not a narrowing amendment but rather might better be seen as a broadening amendment – of course, broader and narrower in design patent law is somewhat difficult to define. The written description requirement is also used to invalidate claims that have been broadened by eliminating claim limitations. Such cases include ICU Medical v. Alaris Medical System (Fed. Cir. 2009) and the often maligned Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998) (claims to a sectional sofa comprising, inter alia, a console and a control means were held invalid for failing to satisfy the written description requirement where the claims were broadened by removing the location of the control means). See also MPEP § 2172.01.

All-in-all, the PTO's position makes sense to me – that nothing in the new original application suggests the claim limit as suggested by P&G. Design patent claims are considered "as a whole" and refocusing only on a small portion of a design can dramatically alter the impact and overall feel of the design. In the ordinary doctrine of patent law, such a potentially dramatic change in claim scope is only allowed if the original disclosure evidences that the inventor possessed the refocused invention at the time of filing. It is reasonable here to say that Owens did not possess that new invention as now claimed. Here, we should be keen to recognize that the written description requirement is separate and distinct from the enablement requirement – even though both arise from the same statutory phrase in Section 112. Here, there is no question that the enablement requirement is met.

The kicker for the PTO in this case is that written description is a question of fact and PTO determinations on questions of fact are given substantial deference on review by the PTO. There is hardly any question in my mind that the PTO's position passes that low threshold.

The case was recently argued before Judges Prost, Moore, and Wallach. This panel is interesting because of Judge Moore's famous pre-nomination article on the problems of patent continuations. This case arises out of a continuation. P&G wants to claim priority back to the original filing date because the original patent had already been out for more than a year by the time that the amended claims were introduced in the continuation. Thus, if it cannot claim priority then its original work will serve as prior art to block this later patent from issuing. A decision is expected later this spring.

In the trade dress world, this mess would not make such a difference because we don't worry about prior art but rather priority in the marketplace. But again, in the US, design patent rights are squarely within the pigeon hole of patent law.

Related articles
Guest Post by Sarah Burstein: Apple v. Samsung
Mark-Up and Commentary on the Patent Law Treaties Implementation Act of 2012
Moving Away from Beauty as a Factor in Design Patent Validity

What can Patent Applicants do to Improve Patent Quality?

Patent, , , ,

By Dennis Crouch

Patent “quality” has many different meanings. The primary focus of the PTO under Director Dave Kappos is on the timely issuance of “right sized,” valid patents. I would add an additional important focus of ensuring that the scope and coverage of each patent is relatively easy to determine. These measures of patent quality fit within broader goals of the patent system — incentivizing innovation and disclosure of those innovations within a competitive marketplace. The patent rules are intended work as something of a feedback system at varying levels of granularity, guiding innovators and applicants in ways that hopefully push us toward those ultimate goals.

I tend to model the patenting process is something of a negotiation between the PTO an the patent applicant. The PTO possesses the authority to grant or deny patent applications, but every word found in the patent is written or approved by the patent applicant. Obviously, the patent applicant’s role in this process is deep and substantial. A patent’s conception begins with words drafted by the patent applicant, not the examiner; amendments are made by the patent applicant, not the examiner, and, after approval by the patent examiner, is the patent applicant must approve the final issuance of a patent (with the payment of a fee).

For many years, I have argued that meaningful change in the state of patent law and patent quality could be implemented in incentives that push applicants toward filing quality patent applications – claiming valid subject matter and drafting claims with well-defined scope. The USPTO agrees and has now published a notice on its project to “focus[] on potential practices that applicants can employ at the drafting stage of a patent application in order to facilitate examination and bring more certainty to the scope of issued patents.” Email comments to QualityApplications_Comments@uspto.gov by March 15, 2013.

The PTO’s current ideas on this front focus on ways to clarify the meaning of terms used in the claims and the resulting scope of the claims. Some of the initial ideas presented are traditional define-your-terms notions while others suggest that new mechanisms of information connectivity may offer solutions.

On these fronts, the PTO lists the following ideas and requests comments:

  1. Clarifying the Scope of the Claims
    1. Presenting claims in a multi-part format by way of a standardized template that places each claim component in separate, clearly marked, and designated fields. For instance, a template may facilitate drafting and review of claims by separately delineating each claim component into separate fields for the preamble, transitional phrase, and each particular claim limitation.
    2. Identifying corresponding support in the specification for each of the claim limitations utilizing, for example, a claim chart or the standardized template described above. This practice could be particularly beneficial where claims are amended or where a continuing application (continuation, divisional, continuation-in-part) is filed.
    3. Indicating whether examples in the specification are intended to be limiting or merely illustrative.
    4. Identifying whether the claim preamble is intended to be a limitation on claim scope.
    5. Expressly identifying clauses within particular claim limitations for which the inventor intends to invoke 35 U.S.C. 112(f) and pointing out where in the specification corresponding structures, materials, or acts are disclosed that are linked to the identified 35 U.S.C. 112(f) claim limitations.
    6. Using textual and graphical notation systems known in the art to disclose algorithms in support of computer-implemented claim limitations, such as C-like pseudo-code or XML-like schemas for textual notation and Unified Modeling Language (UML) for graphical notation.
  2. Clarifying the Meaning of Claim Terms in the Specification
    1. Indicating whether terms of degree—such as substantially, approximately, about, essentially—have a lay or technical meaning and explaining the scope of such terms.
    2. Including in the specification a glossary of potentially ambiguous, distinctive, and specialized terms used in the specification and/or claims, particularly for inventions related to certain technologies, such as software.
    3. Designating, at the time of filing the application, a default dictionary or dictionaries (e.g., a technical dictionary and a non-technical dictionary) to be used in ascertaining the meaning of the claim terms.

As we all move forward with this process (over the years…), I am confident that we will begin to think of patents less and less like “documents” that printed and read, but more like digital information maps that provides a network of information about inventions. Part of this potential comes from linking claim terms to descriptions found elsewhere and direct mark-up that ties original text to post application changes and notations.

None of these changes would make patent quality easy – but they would likely help move us in the right direction.

AIA Technical Amendment Becomes Law

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H.R. 6621, officially titled An Act To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code was signed into law by President Obama on January 14, 2013 and, for the most part, the provisions of the law are now effective.

Here is the official summary:

  • Amends the Leahy-Smith America Invents Act (AIA) to make technical changes regarding the transitional program for covered business method patents and joinder of parties.
  • Applies, to any civil action commenced on or after enactment of this Act, the AIA's bar on using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced. (Currently, the bar would not take effect until one year after the AIA's enactment.)
  • Prohibits a nine-month waiting period for inter partes review from applying to issuances of first-to-invent patents ineligible for post-grant review. (Currently, the remaining first-to-invent patents to be issued prior to the effective date of the new first-to-file patent system have no avenue for review during the first nine months because they must wait nine months for inter parties review and are ineligible for post-grant review.)
  • Revises the filing deadline for inter partes review to be after the later of either: (1) nine months after the grant of a patent (currently, nine months after such grant or the issuance of a reissue patent), or (2) the termination date of any post-grant review.
  • Extends the time period for an applicant to file an inventor's oath or declaration, substitute statement, or recorded assignment until the date on which the issue fee for the patent is paid. (Current law permits a notice of allowance of a patent application only after such a filing.)
  • Makes provisions concerning travel expenses for employees of the U.S. Patent and Trademark Office (USPTO) and the payment of administrative judges effective as of September 16, 2011.
  • Modifies requirements and time periods for activities relating to patent term adjustments. Revises the patent extension period for certain international applications. Specifies that a civil action filed in the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging a USPTO decision on a request for reconsideration of a patent term adjustment determination.
  • Repeals a provision prohibiting the USPTO from accepting certain international applications designating the United States from anyone not qualified under specified application requirements.
  • Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO's administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)
  • Modifies requirements for applicants filing petitions to institute derivation proceedings and delineates the criteria applied to deem an application as an earlier application with respect to an invention relative to another application.
  • Sets forth authority for the Patent Trial and Appeal Board to conduct, and for courts to review appeals from, interference proceedings declared after enactment but before the effective date of certain AIA amendments replacing interference proceedings with derivation proceedings.
  • Modifies the original appointment terms for members of the Patent Public Advisory Committee and the Trademark Public Advisory Committee. Directs the Secretary of Commerce to designate, from among the appointed members, a Chair and Vice Chair of each committee.

Read the text:

  • http://www.gpo.gov/fdsys/pkg/BILLS-112hr6621enr/pdf/BILLS-112hr6621enr.pdf

Means Plus Function Claiming

Patent,

by Dennis Crouch

 

PatentlyO201

The chart above shows the percentage of published non-provisional patent applications that include the term "means for" at least once in the claimset. Although not the only way of doing so, "means for" is traditionally used by patent attorneys to invoke the doctrine known as means-plus-function claiming allowed under 35 U.S.C. 112p6. [Soon to be renumbered 35 U.S.C. 112(f)].  As the chart shows, the percentage of applications that include at least one means-plus-function term is well under 10% and seemingly in continued decline. A decade ago, about 1/4 of all applications included this type of claim. 

Section 112(f) states: 

(f) Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Under the statute, a term claimed in means-plus-function format will be construed to cover the corresponding structure that is described in the specification and equivalents thereof.  Thus, for a claim recites a "means for fastening," the first step in understanding the scope of that claim is to look in the patent specification to see whether any structural component has been described.  If so, then the means-plus-function term will be construed to cover that structure and its equivalents.  Thus, in our fastenting example, if the specification discusses glue as a way to fasten two objects to gether, then the "means for fastening" will be interpreted as covering glue and its equivalents.  One reason why means-plus-function claims have fallen out of favor is that this actual scope given to the means claim is quite narrow, while a different term such as "a fastener" might be given a broader scope.  If there is no corresponding structure given in the specification, then the means-plus-function term will be considered indefinite and the associated claim invalid or unpatentable.  

The idea behind means-plus-function claims is that it is often much easier and more straightforward to claim a means for doing something rather than listing (in a claim) all the possible ways of accomplishing the task.  The strong limitations on the claim scope stemming from an MPF term stems from Supreme Court cases such as O'Reilly v. Morse, 56 U.S. 62 (1853). In that case, Morse (inventor of the telegraph) attempted to claim any use of electromagnetism for sending signals over a distance. Morse made clear in his claim that he intended to not be limited "to the specific machinery or parts of machinery described in the foregoing specification and claims."  In deciding the case, the Supreme Court held that to be patentable, the legal claim must be more directly tied to the practical application and implementation of the idea. The restrictions on the interpretation of means-plus-function terms help ensure that those claims are tied to particular structures and thus will not run afoul of Morse or other similar doctrines. 

Because of these restrictions on means-plus-function terms, Professor Mark Lemley has suggested that courts begin to interpret software claim terms as being written in means-plus-function format.  [Link].  In all likelihood this would severely limit the scope of many software related patents and would also lead many of them to be invalidated under MPF-indefiniteness. 

Related articles
Means-Plus-Function: Invalid as Indefinite
The Frequency of Means-Plus-Function Claims
BPAI: First Decide Indefiniteness, then Subject Matter Eligibility
Flowchart Insuficient Structure to Define Sofware Means-Plus-Function Limitation
An Examination of Software Patents

Naples Midwinter: Patent Law Experts Conference

Patent

February 4-5 sounds like a great time to be in Naples, Florida – especially because that will be the site of the first Naples Midwinter Patent Law Experts Conference held at the Naples Ritz Carlton.  The conference is sponsored by Akron University Law School and is intended to be a small gathering of experts with a cap on attendance.

All-star speakers include The Hon. Richard Linn, The Hon. Teresa Stanek Rea, Professors Tim Holbrook, Jeffrey Samuels and Hal Wegner; and many others.

Patent

2013 Student Writing Competition. The Virginia State Bar Intellectual Property Section is seeking papers written by law students who are attending law school in Virginia or are residents of Virginia attending law school outside of Virginia and relating to an intellectual property law issue or the practice of intellectual property law. The winner receives a cash prize of $4,000. The judge of the final round of the competitor is the Honorable Richard Linn, judge of the U.S. Court of Appeals for the Federal Circuit. The deadline for submissions is Friday, May 24, 2013 at 4:00 EDT.

http://www.vsb.org/site/sections/intellectualproperty-calendar/2013-student-writing-competition

Patent

Some of you may have heard that there is a serious security problem with JAVA 7 (the default version). Luckily most patent attorneys are still running Java 6 in order to interact with the USPTO’s PAIR and EFS-Web servers. According to reports, JAVA 6 does not suffer from the problem?

Fewer Patent Claims Per Application

Patent

By Dennis Crouch

Since 2004, patent applicants have been filing fewer and fewer patent claims per application. The chart below is just one example. It shows the number of applications that include more than three independent claims, grouped by application filing date. (The chart only includes published applications). One interesting result here is that, although more applications are being filed each year the total number new patent claims being applied-for has decreased over the past decade.

This is an update from my prior post “Fewer Jumbo Patents.”