Patently-O https://patentlyo.com America's leading patent law blog Thu, 21 Mar 2019 18:48:15 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.10 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law Unauthorized Practice of Patent Law and State Regulators https://patentlyo.com/patent/2019/03/unauthorized-practice-regulators.html https://patentlyo.com/patent/2019/03/unauthorized-practice-regulators.html#comments Thu, 21 Mar 2019 18:46:07 +0000 https://patentlyo.com/?p=26591 Unauthorized Practice of Patent Law and State Regulators

by Dennis Crouch

People v. Dak Steiert and Intelligent Patent Services, LLC (Co. 2019)

A recent decision by the Colorado Supreme Court has ordered Mr. Dak Steiert (and his company Intelligent Patent Services) to cease unauthorized practice of law in Colorado.

Steiert’s website (expertpatentlaw.com) touted its patent expertise:

“our patents are drafted entirely by patent attorneys with at least 5 years experience. Unlike any other firm, we do not use paralegals to draft patents. we don’t let rookie attorneys draft your application) then give it to a senior employee for a brief glance…”

Steiert is not a lawyer or patent agent, but did hire experienced patent attorneys to do the work on a contract basis.  The problem though his that nonlawyer Steiert “engaged in the unauthorized practice of law by advertising, offering, and providing the legal services of patent attorneys to inventors in Colorado.”  Colorado precedent prohibits non-lawyer owned companies “from offering or purveying legal services of licensed lawyers.”

Steiert apparently also drafted at least one set of patent claims — something that the Supreme Court’s Presiding Disciplinary Judge also identified as unauthorized practice of law. 

Continue reading Unauthorized Practice of Patent Law and State Regulators at Patently-O.

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Unauthorized Practice of Patent Law and State Regulators

by Dennis Crouch

People v. Dak Steiert and Intelligent Patent Services, LLC (Co. 2019)

A recent decision by the Colorado Supreme Court has ordered Mr. Dak Steiert (and his company Intelligent Patent Services) to cease unauthorized practice of law in Colorado.

Steiert’s website (expertpatentlaw.com) touted its patent expertise:

“our patents are drafted entirely by patent attorneys with at least 5 years experience. Unlike any other firm, we do not use paralegals to draft patents. we don’t let rookie attorneys draft your application) then give it to a senior employee for a brief glance…”

Steiert is not a lawyer or patent agent, but did hire experienced patent attorneys to do the work on a contract basis.  The problem though his that nonlawyer Steiert “engaged in the unauthorized practice of law by advertising, offering, and providing the legal services of patent attorneys to inventors in Colorado.”  Colorado precedent prohibits non-lawyer owned companies “from offering or purveying legal services of licensed lawyers.”

Steiert apparently also drafted at least one set of patent claims — something that the Supreme Court’s Presiding Disciplinary Judge also identified as unauthorized practice of law.  In a separate proceeding, prosecutors in Eagle County, Colorado have charged Steiert with fraudulent advertising, criminal impersonation (of patent attorneys), and criminal “bait advertising.”  That case is prepping for trial.

I’ll note here that Steiert argued that the alleged practice of law in this case was the practice of patent law.  As such, the appropriate regulator is the USPTO and not the Colorado Supreme Court.  The Presiding Disciplinary Judge rejected that allegation.  However, Steiert’s argument has some precedential merit. In particular, Federal Judge in Missouri dismissed a somewhat similar case against LegalZoom for its patent drafting system. Janson v. LegalZoom.com, Inc., 802 F. Supp. 2d 1053 (W.D. Mo. 2011). In particular, the court held that Missouri’s laws governing unauthorized practice of law were preempted by the Patent Act and USPTO regulations.

Michael McCabe has discussed the case in several posts on his IPEthics Blog.

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Network Monitoring and . . . https://patentlyo.com/patent/2019/03/network-monitoring-and.html https://patentlyo.com/patent/2019/03/network-monitoring-and.html#comments Wed, 20 Mar 2019 19:27:50 +0000 https://patentlyo.com/?p=26582 by Dennis Crouch

It appears that the Federal Circuit has sharpened its blades and is now slicing the bologna extra thin.  This results-oriented decision unfortunately shades-facts and provides no clarity in its legal analysis of eligibility. While I agree that this network security invention should be eligible for patenting – the court’s analysis does not provide a convincing foundation for that result. 

SRI International, Inc. v. Cisco Systems, Inc. (Fed. Cir 2019)

At the close of trial, the jury issued its verdict favoring the patentee and awarding $23 million in reasonable royalty damages that were then doubled by the D.Del. Judge Robinson based upon the adjudged willful infringement.  On appeal, a 2-1 Federal Circuit panel has sided with the patentee on eligibility, but rejected the enhanced damages.

The eligibility outcome here fits expectations with the majority opinion penned by Judge Stoll and joined by Judge O’Malley while Judge Lourie stood in dissent.

SRI’s asserted claims are directed to methods of “hierarchical event monitoring” used within a computer network.  U.S. Patent 6,711,615.  The basic approach is (1) using a “plurality of network monitors” to detect “suspicious network activities”; (2) generate a report at the network monitor levele; and (3) a “hierarchical monitor” “automatically receiving and integrating the report.”  The specification makes clear that the “integrating” step might be simply looking for commonalities in the intrusion reports or might further involve “countermeasures.”  The specification does not appear to define “hierarchical monitor” other than contrasting them with peer-to-peer.

Continue reading Network Monitoring and . . . at Patently-O.

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by Dennis Crouch

It appears that the Federal Circuit has sharpened its blades and is now slicing the bologna extra thin.  This results-oriented decision unfortunately shades-facts and provides no clarity in its legal analysis of eligibility. While I agree that this network security invention should be eligible for patenting – the court’s analysis does not provide a convincing foundation for that result. 

SRI International, Inc. v. Cisco Systems, Inc. (Fed. Cir 2019)

At the close of trial, the jury issued its verdict favoring the patentee and awarding $23 million in reasonable royalty damages that were then doubled by the D.Del. Judge Robinson based upon the adjudged willful infringement.  On appeal, a 2-1 Federal Circuit panel has sided with the patentee on eligibility, but rejected the enhanced damages.

The eligibility outcome here fits expectations with the majority opinion penned by Judge Stoll and joined by Judge O’Malley while Judge Lourie stood in dissent.

SRI’s asserted claims are directed to methods of “hierarchical event monitoring” used within a computer network.  U.S. Patent 6,711,615.  The basic approach is (1) using a “plurality of network monitors” to detect “suspicious network activities”; (2) generate a report at the network monitor levele; and (3) a “hierarchical monitor” “automatically receiving and integrating the report.”  The specification makes clear that the “integrating” step might be simply looking for commonalities in the intrusion reports or might further involve “countermeasures.”  The specification does not appear to define “hierarchical monitor” other than contrasting them with peer-to-peer.

In considering the claims, the Federal Circuit found that the focus of the claim is on “providing a network defense system that monitors netowrk traffic in real-time to automatically detect large scale attacks.”

Contrary to Cisco’s assertion, the claims are not directed to just analyzing data from multiple sources to detect suspicious activity. Instead, the claims are directed to an improvement in computer network technology. Indeed, representative claim 1 recites using network monitors to detect suspicious network activity based on analysis of network traffic data, generating reports of that suspicious activity, and integrating those reports using hierarchical monitors. The “focus of the claims is on the specific asserted improvement in computer capabilities”—that is, providing a network defense system that monitors network traffic in real-time to automatically detect large-scale attacks. Quoting Enfish.

The majority opinion goes on to justify its conclusions based upon platitudes from the specification — that the invention provides “a framework for the recognition of more global threats to inter-domain connectivity, including coordinated attempts
to infiltrate or destroy connectivity across an entire network enterprise.”

Writing in dissent, Judge Lourie argued that the claims are effectively data collection methods.

The claims here recite nothing more than deploying network monitors, detecting suspicious network activity, and generating and handling reports. The detecting of the suspicious activity is based on “analysis” of traffic data, but the claims add nothing concerning specific means for doing so. The claims only recite the moving of information. The computer is used as a tool, and no improvement in computer technology is shown or claimed. There is no specific technique described for improving computer network security.

Lourie drew a tight analogy to the Electric Power Group eligibility decision that invalidated claims directed toward a “method of detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid.”  Seemingly, this case here could also be seen as a close analogy to the court’s recent cases distinguishing between methods of diagnosis and methods of treatment. See Vanda and Natural Alternatives.

The Majority opinion here attempted to distinguish Electric Power Group as in invention “using computers as tools to solve a power grid problem, rather than improving the functionality of computers and computer networks themselves.”  What the majority fails to do here is to point to any particular aspects of the claimed invention that provide anything more than what other panels have identified as abstract ideas – receiving data; reporting data; and correlating data.

= = = =

The appellate panel rejected the willfulness finding and, as a consequence, the resulting doubling of damages.

While the jury heard evidence that Cisco was aware of the patents in May 2012, before filing of the lawsuit, we do not see how the record supports a willfulness finding going back to 2000. As the Supreme Court recently observed, “culpability is generally measured against the knowledge of the actor at the time of the challenged conduct.” Halo, 136 S. Ct. at 1933. Similarly, Cisco’s allegedly aggressive litigation tactics cannot support a finding of willful infringement going back to 2000, especially when the litigation did not start until 2012. Finally, Cisco’s decision not to seek an advice-of-counsel defense is legally irrelevant under 35 U.S.C. § 298. . . .

We leave it to the district court to decide in the first instance whether the jury’s presumed finding of willful infringement after May 8, 2012 is supported by substantial evidence.

Although willfulness is missing, the court still affirmed the award of attorney fees to the patentee based dupon Cisco’s litigation tactics.  Judge Robinson had written:

Cisco pursued litigation about as aggressively as the court has seen in its judicial experience. While defending a client aggressively is understandable, if not laudable, in the case at bar, Cisco crossed the line in several regards.

The appellate panel gave deference to district court conclusions on this final point and affirmed the award of fees.

= = = =

Note: In a separate case, Judge Robinson had previously held the claims invalid under 102/103. However, that decision was vacated on appeal SRI International, Inc. v. Internet Security Systems, Inc., 511 F.3d 1186 (Fed. Cir. 2008).  Here, interestingly, Judge Robinson sua sponte issued summary judgment that the claims were not anticipated.  That holding was affirmed here on appeal.

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Physical-Realm: The Federal Circuit’s New Machine-or-Transformation https://patentlyo.com/patent/2019/03/physical-circuits-transformation.html https://patentlyo.com/patent/2019/03/physical-circuits-transformation.html#comments Wed, 20 Mar 2019 01:57:09 +0000 https://patentlyo.com/?p=26580 by Dennis Crouch

In Bilski v. Kappos, the Supreme Court issued three separate opinions — although all the justices agreed that physicality — machine-or-transformation — offers at least an important clue for deciding the issue.

  1. Five Justice majority opinion: “The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’ . . . [Rather, it is] just an important and useful clue.”
  2. Four Justice minority opinion: Arguing that a “business method” is not a “process” under Section 101, and that physicality “is a critical clue” for determining eligibility.
  3. Two Justice minority opinion: Explaining their view that only a “few patentable processes lie beyond” the machine-or-transformation test.

In InvestPic, LLC v. SAP America, Inc., No.  18-1199 (Supreme Court 2019), the question of physicality has been raised again. In that case, the patentee argues that the Federal Circuit has again recreated a physicality test for eligibility.

To reach [its conclusion of ineligibility], the Federal Circuit focused exclusively on whether the patent’s claims encompassed an invention in the “physical realm,” a requirement found nowhere in the Patent Act or this Court’s jurisprudence.

Continue reading Physical-Realm: The Federal Circuit’s New Machine-or-Transformation at Patently-O.

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by Dennis Crouch

In Bilski v. Kappos, the Supreme Court issued three separate opinions — although all the justices agreed that physicality — machine-or-transformation — offers at least an important clue for deciding the issue.

  1. Five Justice majority opinion: “The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’ . . . [Rather, it is] just an important and useful clue.”
  2. Four Justice minority opinion: Arguing that a “business method” is not a “process” under Section 101, and that physicality “is a critical clue” for determining eligibility.
  3. Two Justice minority opinion: Explaining their view that only a “few patentable processes lie beyond” the machine-or-transformation test.

In InvestPic, LLC v. SAP America, Inc., No.  18-1199 (Supreme Court 2019), the question of physicality has been raised again. In that case, the patentee argues that the Federal Circuit has again recreated a physicality test for eligibility.

To reach [its conclusion of ineligibility], the Federal Circuit focused exclusively on whether the patent’s claims encompassed an invention in the “physical realm,” a requirement found nowhere in the Patent Act or this Court’s jurisprudence. The claimed novel process here
is a process that can only be performed by a computer; a human cannot perform the process. The Federal Circuit determined that the computer-executed invention does not touch the “physical realm” and therefore held it patent-ineligible.

With that basis, the patentee has asked the Supreme Court for its guidance on the following question:

Does the Federal Circuit’s “physical realm” test contravene the Patent Act and this Court’s precedent by categorically excluding otherwise patentable processes from patent eligibility?

Looking at the Federal Circuit’s decision in this case — it appears that the court has created a dichotomy with the world of ideas fitting into either (1) the physical realm or (2) the realm of abstract ideas.  The following excerpt from the Fed. Cir. decision is on point:

The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. . . . Similarly, in Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), the improvement was in a physical tracking system. . . . Here, in contrast, the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results. . . . Some of the claims require various databases and processors, which are in the physical realm of things. But it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources InvestPic claims to have invented, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.

Note here, that the court did not give itself Bilski-style wiggle-room by suggesting that its physical-realm identity offered a “clue” to eligibility. Rather, the court held that the invention was not in the physical-realm (other than its use of computers) and therefore was abstract.  Now, to be clear, I believe that the InvestPic decision could be interpreted a different way. However, the easiest reading of the case is that the court meant what it said – the claim is directed either to something abstract or something physical.

In addition to the Bilski analogy above, this case here also runs parallel to Vanda where the court created the if-then rule that treatment claims are eligible.  The petition here also provides a list of Federal Circuit cases that the patentee identifies as not grounded in precedent:

  • Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363 (Fed. Cir. 2015) (using a § 101 analysis as a proxy for the independent § 112 inquiry);
  • Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016) (looking to whether a software program improves computer capabilities);
  • Exergen Corp. v. Kaz USA, Inc., 725 F. App’x 959, 966 (Fed. Cir. 2018) (finding a patent eligible in part because it took “years and millions of dollars” to invent).

The problem for the patentee in this case are the claims themselves.  Claim 1 of U.S. Patent 6,349,291 (as modified by reexamination and certificates of correction) reads as follows:

A method for calculating, analyzing, and displaying investment data comprising the steps of:

(a) selecting a sample space, wherein the sample space includes at least one investment data sample;

(b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in sample selection in a resampling process; and

(c) generating a plot of the distribution function.

The idea here is good — use a bootstrapping method to determine an appropriate predictive distribution of investment data rather than rely upon a predetermined distribution (such as the normal distribution).  However, the abstract idea analysis here could look a lot like it did in Bilski.

[Read the Petition Here]

 

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Supreme Court Shows its Interest in New Eligibility Case https://patentlyo.com/patent/2019/03/supreme-interest-eligibility.html https://patentlyo.com/patent/2019/03/supreme-interest-eligibility.html#comments Mon, 18 Mar 2019 16:56:32 +0000 https://patentlyo.com/?p=26575 by Dennis Crouch

Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (Supreme Court 2019)

In this case, the Supreme Court has requested input from the U.S. Government — requesting the views of the U.S. Solicitor General (CVSG).  The SG’s office will likely submit its brief in December 2019 — so we have a nice wait on this question presented:

The question presented is whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.

Although Hikma did not declare all method-of-treatment claims automatically patent eligible. It appears that the court has doubled-down in Natural Alternatives Int’l. Inc. v. Creative Compounds, LLC (Fed. Cir. 2019) (“These are treatment claims and as such they are patent eligible.”).

The court is also awaiting the views of the SG in HP v. Berkheimer on the question of the extent that eligibility is based upon a questions of fact. Berkheimer has become standard Federal Circuit law — as the court explained recently in Natural Alternatives: “Eligibility under § 101 is a question of law based on underlying facts.”

Continue reading Supreme Court Shows its Interest in New Eligibility Case at Patently-O.

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by Dennis Crouch

Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (Supreme Court 2019)

In this case, the Supreme Court has requested input from the U.S. Government — requesting the views of the U.S. Solicitor General (CVSG).  The SG’s office will likely submit its brief in December 2019 — so we have a nice wait on this question presented:

The question presented is whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.

Although Hikma did not declare all method-of-treatment claims automatically patent eligible. It appears that the court has doubled-down in Natural Alternatives Int’l. Inc. v. Creative Compounds, LLC (Fed. Cir. 2019) (“These are treatment claims and as such they are patent eligible.”).

The court is also awaiting the views of the SG in HP v. Berkheimer on the question of the extent that eligibility is based upon a questions of fact. Berkheimer has become standard Federal Circuit law — as the court explained recently in Natural Alternatives: “Eligibility under § 101 is a question of law based on underlying facts.”

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Broadened Claims and Written Description https://patentlyo.com/patent/2019/03/broadened-written-description.html https://patentlyo.com/patent/2019/03/broadened-written-description.html#comments Mon, 18 Mar 2019 16:29:11 +0000 https://patentlyo.com/?p=26571 by Dennis Crouch

Sprint Communications Co., L.P. v. Time Warner Cable, Inc. (Fed. Cir. 2019) (Modified Opinion)(Original Opinion)

In its original decision in the case, a 2-1 appellate panel upheld a jury’s $140 million verdict in favor of the patent holder Sprint.  Time Warner petitioned for rehearing on two grounds: (1) damages apportionment; and (2) written description requirement. In response, the appellate panel has slightly modified its original opinion — but only to better explain its damages decision. As such, the $140 million verdict remains.

On apportionment, Time-Warner argues that the jury was able to rely upon a prior-verdict for damages calculation that did not correctly perform any apportionment to account for the unclaimed portions of its VoIP technology.  In the revised opinion here, the court explained its position:

  1. The “Georgia-Pacific factors, under proper instructions embody[] apportionment principles.”
  2. Here, Sprint’s expert did address apportionment and told the jury that damages should be attributed only to “incremental profits are attributable to the patents in suit.”  Further, the jury instructions indicated that damages should be based upon the value added by the patented features.

Continue reading Broadened Claims and Written Description at Patently-O.

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by Dennis Crouch

Sprint Communications Co., L.P. v. Time Warner Cable, Inc. (Fed. Cir. 2019) (Modified Opinion)(Original Opinion)

In its original decision in the case, a 2-1 appellate panel upheld a jury’s $140 million verdict in favor of the patent holder Sprint.  Time Warner petitioned for rehearing on two grounds: (1) damages apportionment; and (2) written description requirement. In response, the appellate panel has slightly modified its original opinion — but only to better explain its damages decision. As such, the $140 million verdict remains.

On apportionment, Time-Warner argues that the jury was able to rely upon a prior-verdict for damages calculation that did not correctly perform any apportionment to account for the unclaimed portions of its VoIP technology.  In the revised opinion here, the court explained its position:

  1. The “Georgia-Pacific factors, under proper instructions embody[] apportionment principles.”
  2. Here, Sprint’s expert did address apportionment and told the jury that damages should be attributed only to “incremental profits are attributable to the patents in suit.”  Further, the jury instructions indicated that damages should be based upon the value added by the patented features.
  3. Finally, the court noted that Sprint did not propose alternative jury instructions.

Written Description: The divide between the majority opinion (Judges Bryson and Chen) and the Dissent (Judge Mayer) is based upon the second issue — written description.

The Patent Act requires a “written description of the invention, and of the manner and process of making and using it.” 35 U.S.C. 112(a).  Judge Mayer concluded in dissent that description in the specification does not support the full-breadth of the asserted claims.

Here, the accused infringing systems are Voice-over-Internet-Protocol (VoIP) systems. The claims are not directed to internet protocol (IP) but rather use the broader category of “packet communication.”  Why not claim IP?: the original specification does not mention internet protocol but instead is directed toward a separate packet-communication form known as asynchronous transfer mode (ATM).  ATM was popular legacy telecommunications systems, but is being largely replaced by IP.  Although ATM and IP both involve packet communications, they are quite different in how they work.  For instance, ATM creates a virtual circuit / fixed call path while IP does not.

For Judge Mayer, the bulk of the specification is focused on the virtual circuits with no disclosure of other packet networks. He concludes that “the specification’s disclosure makes sense only in the context of ATM technology.”  As such, the claims that cover non-ATM IP-switching are not supported by the written description.

The majority disagreed with Judge Mayer and found sufficient support (giving deference to the jury’s implicit fact finding).  In its analysis, the majority first noted that IP technology “is not expressly excluded” by the specification and that the specification is not expressly limited to ATM:

[T]he specification refers to “[b]roadband systems, such as Asynchronous Transfer Mode (ATM),” a formulation that strongly suggests that the patents are not limited to ATM technology.

In addition, Sprint presented evidence that a person of skill in the art would understand the disclosure to — especially the term “broadband” — to include IP.

For the majority, the evidence here was enough to allow the patent to remain valid.  Even if the result is uncomfortable, it is easier to see after considering the level of deference.  The court should only overturn the jury verdict if the only reasonable conclusion is that invalidity was proven with clear and convincing evidence.

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Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2019/03/patently-bits-and-bytes-by-juvan-bonni-20.html https://patentlyo.com/patent/2019/03/patently-bits-and-bytes-by-juvan-bonni-20.html#comments Mon, 18 Mar 2019 02:48:04 +0000 https://patentlyo.com/?p=26565 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Edvard Pettersson and Bill Callahan: Qualcomm Wins First U.S. Jury Trial Against Apple (Source: Yahoo Finance)
  • Manas Mishra and James Emmanuel: U.S. Court Rejects Alvogen’s Patent Challenge for Celgene’s Cancer Drug (Source: Yahoo Finance)
  • Megan Rose Dickey: BlackBerry Sues Twitter for Patent Infringement (Source: Tech Crunch)
  • Richard Borsuk, Christopher Cushing and Jonathan Oatis: Foxconn Rejects Microsoft Patent Lawsuit, Says Never Had to Pay Royalties (Source: Reuters)
  • Brian Heater: Google Filed a Folding Phone Patent Application, Too (Source: Tech Crunch)

Commentary and Journal Articles:

  • Atty. Alex Moss: The Patent Office Can’t Ignore Law it Dislikes (Source: Electronic Frontier Foundation)
  • Prof. Sarah Rajec: Infringement, Unbound (Source: SSRN)
  • Prof. Amy L. Landers: Proximate Cause and Patent Law (Source: SSRN)

New Job Postings on Patently-O:

  • DiBerardino McGovern IP Group
  • Harrity & Harrity, LLP
  • Venable LLP
  • AMPACC Law Group
  • Smart & Biggar
  • Perkins Coie
  • Blackbird Technologies

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

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The invention here is a treatment claim — that is therefore patent eligible.  https://patentlyo.com/patent/2019/03/invention-treatment-therefore.html https://patentlyo.com/patent/2019/03/invention-treatment-therefore.html#comments Mon, 18 Mar 2019 02:12:20 +0000 https://patentlyo.com/?p=26562 by Dennis Crouch

The decision here is an important case adding substantial nuance to the product and law of nature exceptions.

Natural Alternatives Int’l. Inc. v. Creative Compounds, LLC (Fed. Cir. 2019)

Earlier this week I wrote about a separate Natural Alternatives reexamination appeal pending before the US Supreme Court on the issue of improper priority claims.

The case at hand focuses on patent eligibility.  Natural Alternatives sued Creative for infringing six of its patents covering various forms of the naturally-occurring compound beta-alanine and its use as a muscle-building supplement.  The district court dismissed the lawsuit on the pleadings for lack of eligibility — finding that the claims were directed toward a product of nature (beta-alanine) and a law of nature (that taking beta-alanine in sufficient quantities builds muscle).

On appeal the Federal Circuit has sided with the patentee.  In an opinion written by Judge Moore and joined by Judge Wallach, the court explained that we shouldn’t take the law-of-nature prohibition too far since “[w]e live in the natural world, and all inventions are constrained by the laws of nature.”

The decision here adds an important nuance to Vanda and CellzDirect

Continue reading The invention here is a treatment claim — that is therefore patent eligible.  at Patently-O.

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by Dennis Crouch

The decision here is an important case adding substantial nuance to the product and law of nature exceptions.

Natural Alternatives Int’l. Inc. v. Creative Compounds, LLC (Fed. Cir. 2019)

Earlier this week I wrote about a separate Natural Alternatives reexamination appeal pending before the US Supreme Court on the issue of improper priority claims.

The case at hand focuses on patent eligibility.  Natural Alternatives sued Creative for infringing six of its patents covering various forms of the naturally-occurring compound beta-alanine and its use as a muscle-building supplement.  The district court dismissed the lawsuit on the pleadings for lack of eligibility — finding that the claims were directed toward a product of nature (beta-alanine) and a law of nature (that taking beta-alanine in sufficient quantities builds muscle).

On appeal the Federal Circuit has sided with the patentee.  In an opinion written by Judge Moore and joined by Judge Wallach, the court explained that we shouldn’t take the law-of-nature prohibition too far since “[w]e live in the natural world, and all inventions are constrained by the laws of nature.”

The decision here adds an important nuance to Vanda and CellzDirect.  In particular, the court explains that an important clue of eligibility for treatment claims is whether “homeostasis is overcome” in a way that leads to “specific physiological benefits.” This physiological impact tells us that the invention here is a treatment claim — that is therefore patent eligible.

The claims … they require that an infringer actually administer the dosage form claimed in the manner claimed, altering the athlete’s physiology to provide the described benefits. These are treatment claims and as such they are patent eligible.

One element of this case that could be distinguished from ordinary treatment claims is that the purpose of taking beta-alanine is to alter the body’s operation away from normal whereas most drug treatments are in pursuit of normalcy.

The court considered the fact that beta-alanine occurs in nature and is very longstanding part of the human diet. In the end, however, the court found that the law “expressly permits patenting a new use of an existing product.”  Here, the patentee argues that “the quantities being administered” do not exist in nature.

At this point in the analysis, claim construction became important.  At the pleadings stage, the district court agreed to follow the patentee’s proposed construction that would require that the dosage “elevate beta-alanine above natural levels to cause an increase in the synthesis of beta-alanylhistidine in the tissue.”

Looking at the product claims, the following claim is perhaps the broadest:

1. A human dietary supplement, comprising a beta-alanine in a unit dosage of between about 0.4 grams to 16 grams, wherein the supplement provides a unit dosage of beta-alanine.

In similar fashion to the method claims, the district court followed the patentee’s claim construction that a “human dietary supplement” should be construed as excluding “natural or conventional food” that “is manufactured.”

Although the appellate court found the claims ineligible even under this construction, the appellate panel sided with the patentee — finding that the not-natural and manufacture construed limitations sufficient to take the patents outside of the law of nature and product of nature exceptions.

Although beta-alanine is a natural product, the Product Claims are not directed to beta-alanine. A claim to a manufacture or composition of matter made from a natural product is not directed to the natural product where it has different characteristics and “the potential for significant utility.” See Diamond v. Chakrabarty, 447 U.S. 303, 310 (1980).

Judge Reyna wrote in dissent — arguing that the majority’s eligibility analysis relied upon a faulty claim construction “that improperly imports limitations into the claims and is contradicted by the written description.”

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Claims are Invalid (not Patents) https://patentlyo.com/patent/2019/03/claims-invalid-patents.html https://patentlyo.com/patent/2019/03/claims-invalid-patents.html#comments Thu, 14 Mar 2019 14:59:47 +0000 https://patentlyo.com/?p=26552 Sophos, Inc. v. RPost Holdings (Fed. Cir. 2019) (RmailSophos)

The two paragraph decision in this case is designed to serve as a reminder that patent validity/infringement is considered on a claim-by-claim basis.

RPost sued Sophos alleging infringement its U.S. Patent No. 8,504,628.  However, during the litigation RPost filed infringement contentions that focused only on claims 14, 19, 24, 26, 27 and 30.  In its invalidity argument, Sophos directed its attention only to these asserted claims.  However, the district court wrote more broadly “that the ‘628 patent is invalid.”

On appeal, the Federal Circuit has affirmed the summary judgment of invalidity with the caveat that the district court’s opinion should be limited only to the asserted claims.

We agree that the asserted claims are anticipated by Dickinson and affirm the invalidity of the asserted claims on that basis. However, the district court’s Memorandum and Order granting summary judgment contained language suggesting that all claims of the ’628 patent are invalid. See J.A. 42 (“[T]he Court concludes that the ’628 patent is invalid.”) The parties agree that the district court’s judgment of invalidity must be limited to the asserted claims. Accordingly,

IT IS ORDERED THAT:

1.

Continue reading Claims are Invalid (not Patents) at Patently-O.

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Sophos, Inc. v. RPost Holdings (Fed. Cir. 2019) (RmailSophos)

The two paragraph decision in this case is designed to serve as a reminder that patent validity/infringement is considered on a claim-by-claim basis.

RPost sued Sophos alleging infringement its U.S. Patent No. 8,504,628.  However, during the litigation RPost filed infringement contentions that focused only on claims 14, 19, 24, 26, 27 and 30.  In its invalidity argument, Sophos directed its attention only to these asserted claims.  However, the district court wrote more broadly “that the ‘628 patent is invalid.”

On appeal, the Federal Circuit has affirmed the summary judgment of invalidity with the caveat that the district court’s opinion should be limited only to the asserted claims.

We agree that the asserted claims are anticipated by Dickinson and affirm the invalidity of the asserted claims on that basis. However, the district court’s Memorandum and Order granting summary judgment contained language suggesting that all claims of the ’628 patent are invalid. See J.A. 42 (“[T]he Court concludes that the ’628 patent is invalid.”) The parties agree that the district court’s judgment of invalidity must be limited to the asserted claims. Accordingly,

IT IS ORDERED THAT:

1. The judgment of invalidity of claims 14, 19, 24, 26, 27 and 30 of the ’628 patent is affirmed.

2. The case is remanded for the district court to revise its judgment to clarify that the declaration of invalidity is limited to claims 14, 19, 24, 26, 27, and 30 of the ’628 patent.

In this particular case, the patent challenger Sophos agreed that they had only challenged the asserted claims. Thus, this decision cannot be seen as creating any strict limit on challenging claims not pursued in the infringement contentions.

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Boalick and Bonilla appointed as PTAB Chief and Deputy Chief https://patentlyo.com/patent/2019/03/boalick-bonilla-appointed.html https://patentlyo.com/patent/2019/03/boalick-bonilla-appointed.html#comments Thu, 14 Mar 2019 14:39:39 +0000 https://patentlyo.com/?p=26551 Congratulations to Scott Boalick and Jacqueline Bonilla for their appointments as Chief Judge and Deputy Chief Judge for the Patent Trial and Appeal Board. Judges Boalick and Bonilla have already been doing the work since September 2018 in their roles as Acting Chief and Deputy Chief.  Earlier this year, Dir. Iancu also appointed Thomas Krause as USPTO Solicitor.  These three individuals are each highly qualified with deep intellectual property and government experience.

These appointments round-out Dir. Iancu’s top staff so that all leadership team members are in permanent positions rather than temporary “acting” appointments.

Continue reading Boalick and Bonilla appointed as PTAB Chief and Deputy Chief at Patently-O.

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Congratulations to Scott Boalick and Jacqueline Bonilla for their appointments as Chief Judge and Deputy Chief Judge for the Patent Trial and Appeal Board. Judges Boalick and Bonilla have already been doing the work since September 2018 in their roles as Acting Chief and Deputy Chief.  Earlier this year, Dir. Iancu also appointed Thomas Krause as USPTO Solicitor.  These three individuals are each highly qualified with deep intellectual property and government experience.

These appointments round-out Dir. Iancu’s top staff so that all leadership team members are in permanent positions rather than temporary “acting” appointments.

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Supreme Court Patent Rundown https://patentlyo.com/patent/2019/03/supreme-patent-rundown.html https://patentlyo.com/patent/2019/03/supreme-patent-rundown.html#comments Wed, 13 Mar 2019 16:10:49 +0000 https://patentlyo.com/?p=26544 by Dennis Crouch

Two patent cases are pending before the Supreme Court on their merits:

  • Return Mail, Inc. v. United States Postal Service, No. 17-1594 (Can a US Gov’t entity petition for AIA review?)
  • Iancu v. NantKwest, Inc., No. 18-801 (Are attorney fees automatically shifted in Section 145 Civil action to obtain patent?)

Neither of these cases address core patent law issues and so their outcome will have little impact on patent law practice.

The Court has indicated some interest in four additional cases — requesting the views of the Solicitor General in those cases:

  • RPX Corporation v. ChanBond LLC, No. 17-1686 (What level of injury-in-fact is required to appeal of a PTAB IPR final decision?)
  • Ariosa Diagnostics, Inc. v. Illumina, Inc., No. 18-109 (What is the prior art date for unclaimed disclosures in provisional filing?)
  • Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., fka Intersil Corporation, No. 18-600 (Is an “offer to sell” infringement as of the date of the offer or the date of the proposed sale?

Continue reading Supreme Court Patent Rundown at Patently-O.

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by Dennis Crouch

Two patent cases are pending before the Supreme Court on their merits:

  • Return Mail, Inc. v. United States Postal Service, No. 17-1594 (Can a US Gov’t entity petition for AIA review?)
  • Iancu v. NantKwest, Inc., No. 18-801 (Are attorney fees automatically shifted in Section 145 Civil action to obtain patent?)

Neither of these cases address core patent law issues and so their outcome will have little impact on patent law practice.

The Court has indicated some interest in four additional cases — requesting the views of the Solicitor General in those cases:

  • RPX Corporation v. ChanBond LLC, No. 17-1686 (What level of injury-in-fact is required to appeal of a PTAB IPR final decision?)
  • Ariosa Diagnostics, Inc. v. Illumina, Inc., No. 18-109 (What is the prior art date for unclaimed disclosures in provisional filing?)
  • Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., fka Intersil Corporation, No. 18-600 (Is an “offer to sell” infringement as of the date of the offer or the date of the proposed sale?)
  • HP Inc., fka Hewlett-Packard Company v. Berkheimer, No. 18-415 (Should patent eligibility be treated as a pure question of law?)

These four are the most likely cases to be heard by the court. However, the Solicitor General often takes a full-year to file a brief — meaning that the certiorari question may well be pending until the September 2019.

One additional case can be seen as a follow-on to the RPX standing-to-appeal question:

  • JTEKT Corporation v. GKN Automotive Ltd., No. 18-750 (direct competitor but no injury-in-fact sufficient to provide appellate jurisdiction)

Note here that JTEKT adds the nuance of being a direct competitor while RPX is ostensibly not a competitor.

In addition to the standing question, several pending petitions also address the scope and review of time-bar decisions under Section 315(b)(“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”)

  • RPX Corporation v. Applications in Internet Time, LLC, No. 18-1075 (May a PTO 315(b) time-bar decision be appealed — or is it subject to the 314(d) “no appeal” rule?)
  • Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., No. 18-916 (Is the 315(d) time-bar triggered by prior lawsuits dismissed without prejudice?)
  • Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., No. 18-999 (same)
  • Superior Communications, Inc. v. Voltstar Technologies, Inc., No. 18-1027 (same)

The final pending petition regarding PTAB reviewability focuses on sovereign immunity:

  • Saint Regis Mohawk Tribe. et al. v. Mylan Pharmaceuticals, Inc., et al., No. 18-899 (May tribal sovereign immunity may be asserted to bar IPR review of patents owned by the tribe?)

I mentioned the Berkheimer eligibility case above. An important follow-on case is TS Patents.

  • TS Patents LLC v. Yahoo! Inc., No. 18-1114 (Is a R. 12(b)(6) dismissal for lack of eligibility appropriate when the complaint and patent both assert novel technical improvements?)

An additional eligibility cases goes to the core of the Supreme Court’s eligibility analysis and asks whether method-of-treatment claims are always patent eligible?

  • Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (presumptive eligibility of method-of-treatment claims)

Two final pending cases have to do with defining prior art and priority:

  • Macor v. United States Patent and Trademark Office, No. 18-1072 (What is the standard for determining whether prior art is “analogous”?)
  • Natural Alternatives International, Inc. v. Iancu, No. 18-1144 (Do amendments to a filing relied upon for priority impact the already-claimed priority?)

Overall, this is an interesting group of cases that address a set of important questions. Unfortunately, the two least impactful cases are the ones the court has agreed to hear.

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