NAFTA Patents

Although Mexico is a top-three US trading partner, few US companies seek Mexican patents. The pending renegotiation of NAFTA provides an opportunity focus on intellectual property rights.  It will be interesting to see the extent that patents become an element in the negotiations.  USTR is particularly calling on Mexico and Canada to pay more for prescription drugs.

In re Maatita: Has the Court Radically Redesigned Design Patent Coverage?

By Professor Sarah Burstein, University of Oklahoma College of Law

In re Maatita (Fed. Cir. 2018) – Dyk (author), Reyna & Stoll

[Professor Crouch already summarized the facts and the basics of the court’s decision here. I don’t want to re-cover the same ground but I will note this isn’t the first time Judge Dyk has engaged in what Professor Crouch aptly describes as design patent “cosplay layering.” See In re Seaway, which I discuss at FN 131 here.]

So, this is bad. This is really bad.

Maatita claimed a three-dimensional design for a “Shoe Bottom.” He illustrated the design he sought to patent with a single view, as shown below:

A U.S. design patent can only claim one design. Multiple embodiments of the same design may be claimed “only if they involve a single inventive concept according to the nonstatutory double patenting practice for designs.” MPEP § 1504.05.

The PTO viewed Maatita’s drawing as a claim for multiple “designs.” As the examiner’s illustrations (shown below) demonstrate, the segments of the shoe portion shown in Maatita’s drawing could—without more information—cover shapes of varying depth and could be either convex or concave:

And those are just a few examples of the range of three-dimensional designs potentially covered by Maatita’s claim. The PTO rejected Maatita’s claim under § 112 because it failed to make clear which of those designs was actually being claimed.

The Federal Circuit reversed. According to the Federal Circuit, a design patent claim is indefinite only “if it includes multiple, internally inconsistent drawings” or if “there are inconsistences between the visual disclosure and the claim language.”

Here, according to the Federal Circuit, it was perfectly clear what Maatita was claiming—namely, a configuration of indeterminate and potentially variable depth. In other words, the court found it clear (and was apparently untroubled by the fact) that Maatita was disclaiming “the relative depths and three dimensionality between the surface.” Thus, according to the Federal Circuit, the claim was neither indefinite or non-enabled under § 112.

To support its conclusion, the court conflated configuration and surface-ornamentation designs. According to the court, if a design for the surface ornamentation of a rug can be illustrated using a single “two-dimensional, plan- or planar-view,” there was no reason why a configuration design of indeterminate depth could not be so claimed, as long as it was clear what angle the ordinary viewer should view the design from. But surface-ornamentation and configuration are completely different types of designs. They should not be treated the same in all instances. The fact that an ordinary observer would view the surface-ornamentation design for a rug to be “the same” design (which is, after all, the test for infringement) whether it was used in a high-pile or low-pile rug does not mean that an ordinary observer would think that all of the shoe-sole designs claimed by Maatita were, in fact, “the same” design. Consider the examiner’s examples shown above. If a design patent claimed one of those, it wouldn’t be infringed by the others. If they’re not considered “the same” design for the purposes of infringement, they should not be considered “the same” design for the purposes of § 171.

If Maatita is read as holding that a 3D design of indeterminate depth is, in fact, a single “design” under § 171, then the Federal Circuit has radically redefined the concept of a patentable “design” to a degree not seen since In re Zahn (I discuss that decision in Section III(A)(2) here). In Zahn, the CCPA said it was okay to claim a “design” for the configuration of just a portion of an article of manufacture. Post-Zahn, applicants could craft claims that would be infringed even if the overall shape of the article differed, as long as the claimed portion looked the same.

But at least in Zahn, it was clear what the claimed portion looked like. Maatita has opened the door to design claims of unprecedented (or, at least, not previously judicially-sanctioned) breadth. It is true that the PTO already allowed applicants to claim designs of indeterminate length using brackets or similar drawing conventions. But it’s very different to say that a design for, say, crown molding is “the same” whether it’s six inches or six feet long, and quite another to say that all the shoe-sole configuration variations above (let alone the numerous other potential variations) are “the same.”

Moreover, unlike design patent examiners, patent attorneys and agents are not required to have any training in design. It may, therefore, be difficult for them to imagine and effectively communicate (e.g., by drawing) the scope of Maatita-type claims. This adds a further layer of complexity and potential peril for clients who wish to clear their new designs and determine their freedom to operate.

I hope the PTO will seek to have this case reheard en banc. Or even petition for certiorari. If they don’t, I hope that they will reject this claim on remand under § 171 on the grounds that it claims more than one “design for an article of manufacture.” After all, the Federal Circuit did not directly rule on that issue—though, admittedly, parts of the decision may be read as supporting that view. The better view is that those parts were merely instances of accepting Maatita’s views for the purposes of argument, since the single-design issue wasn’t necessary to the court’s ultimate disposition of the § 112 issues.

It may be that this decision is simply a part of a larger Federal Circuit campaign to, as Professor Crouch puts it, “undermin[e] . . . the indefiniteness doctrine.” But I’d like to suggest that this is yet another example of the evil Zahn hath wrought, with its radical redefinition of what constitutes a “design.” If the “design” mentioned in § 171 is whatever the applicant says it is, it’s difficult to see how courts will ever be able to apply § 112 in a coherent or logical way. (Of course, the word “design” itself isn’t terribly helpful in and of itself as I discuss in more detail here.) Perhaps this case is just another sign that the time has come for a re-appraisal of what types of “designs” U.S. design patent law can—and should—protect.

= = = =

Prof. Burstein tweets about design patents @design_law

Tai Chi Tea: Beware of TM Infringement

Diamond Hong owns the Tai Chi mark shown above on the left and Tai Chi Green Tea is has the mark on the right.  Are these confusingly similar if both used in the hot beverage market?

Image result for tai chi green tea

The PTAB sided with cancellation petitioner and senior mark holder Diamond Hong and the Federal Circuit affirms here. Zheng Cai, DBA Tai Chi Green Tea Inc. v. Diamond Hong, Inc. (Fed. Cir. 2018).

A difficulty here is that Zheng Cai represented himself pro se and did not exactly follow either TTAB or Federal Circuit procedure.  In particular, Cai presented a set of factual assertions and images in his brief, but did not follow the particular brief filing rules.  Because of the procedural failure, the TTAB refused to consider the materials presented — finding that Mr. Cai “introduced no evidence.”  As Manafort can attest — it is difficult to win a case without presenting any evidence.  On appeal, the Federal Circuit affirmed the TTAB procedure with two main points:

  1. The TTAB has authority to manage its own procedure; and
  2. Mr. Cai’s Main Brief contains numerous assertions of fact without actually introducint the supporting evidence — i.e., no evidence.

In a cancellation proceeding, the moving party still has the burden to make its case.  Here, the Federal Circuit affirmed the confusing similarity (Applying the DuPont factors).  The court writes:

The marks are similar, when considered as a whole, because they both invoke a large yin-yang symbol and prominently display the term TAI CHI.

Cancellation affirmed.

= = = = =

Interesting backstory: On the same day this case was released supporting Diamond Hong’s Mark (No. 3966518), the USPTO also cancelled the mark.  “Registration cancelled because registrant did not file an acceptable declaration under Section 8.”

Guest Post: Patent Office Shows New Respect for Software

Guest Post from Richard P. Beem.  Beem’s firm handled the Intelligent Medical Objects case discussed below. – DC

Software patents and applications are making a quiet comeback under Director Andrei Iancu’s leadership of the U.S. Patent and Trademark Office. This is a welcome shift, since thousands of applications have been held captive in the Office in the wake of Supreme Court decisions culminating in Alice v. CLS Bank, 134 S.Ct. 2347 (2014).

In the hands of reductionists, the Alice formula for rejection/invalidation was easy to apply. Every invention can be reduced to an abstract idea. Whatever is left can be explained away as “routine” or “conventional.” In the last four years, many software patent applications suffered repeated rejection and the ignoble death of abandonment for lack of will or lack of funds. Even when granted, many software patents were mowed down in inter partes review (IPR) in the Patent Trial and Appeal Board (PTAB).

The Federal Circuit’s February 2018 decision in Berkheimer, 881 F.3d 1360 (citing Alice and other authority), paved the way for recent progress, holding that when there are genuine issues of material fact concerning alleged routineness or conventionality, evidence of the same must be presented before patent claims properly can be invalidated on such grounds.

Berkheimer was an appeal from an inter partes district court litigation. What hope does Berkheimer hold for software patent applicants in ex parte proceedings in the Patent Office?

My firm and I took an appeal from a final rejection to the PTAB, In re Naeymi-Rad et al., Appeal 2016-005478, where the rejection was affirmed in a lengthy opinion, and thence to the Federal Circuit, where the case was renamed for the assignee, In re Intelligent Medical Objects, Appeal 18-1586 [Federal Circuit Order].

Intelligent Medical Objects (IMO) is the world’s leading provider of medical vocabulary that allows doctors to capture and preserve truth (or clinical intent) at the point of care. In the course of its work, IMO invented a method of creating and maintaining a “longitudinal” (over the course of several visits) electronic medical record (LEMR) with software that runs on a general purpose (albeit high powered) computer.

Several patents were granted to IMO, each directed to a different aspect of the LEMR, before one examiner dug in with a final rejection in the case at bar, in which the claims were directed to a method of implementing an LEMR with a controlled medical vocabulary. The final rejection was based solely on alleged abstractness under 35 U.S.C. 101; earlier rejections based on Sections 102 and 103 were overcome.

The examiner in the IMO case turned the claims into clichés of “providing healthcare” and “generating and processing medical records.” Typical of such cases, the examiner restated the claimed method even more generally as “collecting, storing, and organizing data.” This is a formula for finding claims to be abstract. The examiner and the PTAB found IMO’s novel use of pointers and directed graphs, taken out of context, to be merely routine and conventional, without citing any evidence, and they shifted the burden to IMO to prove the contrary.

We filed appellant IMO’s principal brief in the Federal Circuit at the end of May 2018. Within a few days, the Patent Office filed an unopposed motion to vacate the PTAB decision. Shortly thereafter, the Federal Circuit issued its opinion, vacating the PTAB decision and remanding the application to the Office for further proceedings. In re Intelligent Medical Objects, Appeal 18-1586 (slip op. June 27, 2018).

The IMO decision and a similar decision in In re Allscripts Software, LLC, Appeal 2018-1451 (Fed. Cir. slip op., June 27, 2018) were the subject of a blog post “Berkheimer, the Administrative Procedure Act and PTO Motions to Vacate PTAB § 101 Decisions,” in IP Watchdog (July 16, 2018), praising the Patent Office for acknowledging the Berkheimer decision and doing the right thing in the two Federal Circuit appeals.

Meanwhile, in April 2018, the Patent Office issued new guidance for examination of software patent applications. That guidance makes it clear that software patent claims cannot legally be rejected without grounds supported by evidence. There will be more guidance from the Office, and there will be more opinions from the Federal Circuit.

Notwithstanding the substantial and growing body of legal authority, however, there will be further erroneous rejections of software patent claims. Many of those rejections will be maintained, and a few of those will be taken on appeal. It is only a matter of time before the Federal Circuit issues one or more published opinions holding that Berkheimer applies in ex parte patent prosecution.

Published Federal Circuit opinions are the tip of the iceberg. But, ah, the cost to applicants! And for every successful appellant, there are 10, 20 or more applicants who sadly accede to final rejections and abandon worthy applications. This is a not a good outcome from a patent system that is intended to promote the progress of technology by issuing patents for meritorious inventions.

Some of the greatest challenges facing the world today will be solved with new and improved software. The need for better electronic medical records is one example. Another, literally inside the Patent Office, is the need to manage ever-growing terabytes of data without crashing electronic filing and retrieval systems. Hacking and cybercrimes often take advantage of shortcomings in software; better cybersecurity will depend on better software. Many of these issues are technical problems that will be solved with novel, non-obvious, applied technical solutions.

Such software inventions are deserving of patent protection. Director Iancu is to be applauded for his recent acknowledgements of legal errors in final rejections appealed to the Federal Circuit.

As for patent applicants, owners, and attorneys, the patent system is not and never will be perfect. Skillful drafting and prosecution go a long way toward obtaining allowance of claims directed to deserving inventions. In some cases, appeals even to the Federal Circuit may be necessary, and, as in the cases of Intelligent Medical Objects and Allscripts Software, they may win.

By Richard P. Beem

Bio: Richard Beem, a graduate of Iowa State (B.S. in chemical engineering) and the University of Houston (J.D., cum laude), served as Law Clerk to the late Hon. Edward S. Smith, one of the original 12 judges of the Federal Circuit. Richard is the founder and principal of Beem Patent Law Firm in Chicago.


Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

From Dir. Iancu: USPTO IT Services

The following comes from USPTO Director Andrei Iancu:

Andrei IancuI know the past week has been disruptive to certain aspects of your usual business with the USPTO. I deeply appreciate your patience and diligence as we restored our PALM database. I also want to acknowledge the many people within the USPTO who worked around the clock to resolve this complex issue.

In the process of getting everything back up and running, we sought not merely to restore but also to improve our PALM operating systems. Among other things we now have enhanced servers and performance optimization, such that the resulting condition is better than it was before the outage.

With services restored, our focus has shifted to minimizing any residual impact on you. I remain in constant contact with our business unit leaders and our Acting Chief Information Officer to address your needs as best we can.

Thank you again for your patience and understanding in the face of these challenges.

Honey Badger Don’t Care: Protecting Creativity with Trademarks

The Honey Badger video is probably NSFW — but it is also funny and informative.  In the viral video, C.Gordon (aka Randall) who created the video, repeatedly states that “Honey Badger Don’t Care” and “Honey Badger Don’t Give a Shit.”  This became a meme. (See google photo search results below.) Gordon registered the “Honey Badger Don’t Care” mark, but at the time couldn’t register the potentially offensive “Don’t Give a Shit” mark.

After Drape Creative, Inc. and Papyrus-Recycled Greetings, Inc. started using the catchphrases on greeting cards, Gordon sued for Trademark misappropriation.  The cards at issue here are pretty low humor as shown by the exhibit below:

Despite the low humor level, the lower court dismissed the case on free speech grounds — finding that the expressive value trumped the risk of customer confusion.  This past summer the 9th Circuit reversed that dismissal.  [9th Cir. Decision]

Now, the defendants are asking for an en banc rehearing.  The basic question involves a balance between avoiding customer confusion (trademark law) and freedom of speech (First Amendment).

For “expressive works” accused of improper TM use, the 9th Circuit follows the balancing test of Rogers v. Grimaldi., 875 F.2d 994 (2d Cir. 1989). Rogers calls for enforcement of TM rights only “where the public interest in avoiding consumer confusion clearly outweigh the First Amendment protection extended to socially valuable expressive works.”  Although the balance may be shifted by the commercial nature of the use, Rogers still applies.

Here, the 9th Circuit found at least a disputed issue of fact on the question of whether the accused cards added “any value protected by the First Amendment” instead of merely appropriating the goodwill of the poor Honey Badger. The new petition for rehearing argues that the 9th Circuit misapplied Rogers and improperly complicates the issue.  In particular, the 9th Circuit’s held that for the First Amendment protections to apply “the mark must both relate to the defendant’s work and the defendant must add his own artistic expression beyond that represented by the mark.”  The petition argues this new comparative expression rule goes well beyond Rogers.

A group of law professors led by Profs. Mark Lemley (Stanford), Mark McKenna (Notre Dame), and Rebecca Tushnet (Harvard) have joined together in supporting the rehearing.  The professors particularly focus on the 9th Circuit’s focus on the TM holder’s expressive creativity.  While creativity may be wonderful — creative expression is protected by copyright law rather than TM law:

Mr. Gordon is a successful creator. But it is copyright law that provides protection for creators and their creative contributions. Trademark law, by contrast, provides protection for the source-identifying functions of marks—not for the creative or expressive content of those marks or their social meanings. The Rogers v. Grimaldi test is a vital way to implement the distinction between source identification and expressive meaning when a trademark is allegedly infringed by an expressive, noncommercial use. The panel’s addition of a new, “non-artistic relevance” inquiry, and particularly its application of that test in this case, threatens Rogers’s protection across a broad range of works and creates a conflict with copyright law and with prior decisions of this and other circuits.


USPTO New Strategic Plan (Draft)

The USPTO has released a draft version of its 2018-2022 Strategic Plan and is seeking comments before finalizing the document later this year.  The plan will serve as a key marker of Dir. Iancu’s strategic leadership.  Although a bit of a dog-and-pony show, the PTO Strategic Plan can serve as a single of where the agency is headed and can be used to help ensure that all key decisionmakers are on the same trajectory. If there is something that the PTO SHOULD be doing, now is the time to highlight that role.  Still, recognize that the value in most strategic plans is the learning process that occurs in developing that plan.  It is now your chance to participate — Send comments on the draft to by September 20, 2018.

The Strategic Goals reflect the fact that the PTO is primarily a bureaucratic agency — and the main goal is quality bureaucracy.  That means efficient, correct, and timely work.  Thus, the PTO’s first strategic goal is “Issuing reliable IP rights.”

The goals:

  • Issuing reliable IP rights
  • Aligning patent and trademark examination capacity with current and projected workloads
  • Modernizing information technology (IT)
  • Enhancing the customer experience
  • Promoting a mission-oriented and quality-focused culture among our employees
  • Protecting IP rights abroad
  • Monitoring and helping address dynamic IP issues in Congress and in the Courts
  • Maintaining a sustainable funding model
  • Developing IP policy

The draft goes into some loose detail on the various issues that is fairly well summarized by the following tables:

Firm Mergers are in the Air

One Example: – August 21, 2018 – Venable LLP, an American Lawyer Global 100 firm, and Fitzpatrick, Cella, Harper & Scinto, one of the world’s leading intellectual property firms, have reached an agreement for Fitzpatrick to join Venable.

With the addition of the Fitzpatrick practice, the firm will have . . . about 175 IP lawyers – making it one of the largest IP groups in the country. This agreement will increase the size of Venable’s New York City presence to more than 160 lawyers, placing it among the largest firms in the city. [DC Note: Fitzpatrick currently has about 100 IP lawyers]

USPTO China IP Roadshow at the University of Iowa College of Law

By Jason Rantanen

The Innovation, Business & Law Center at the University of Iowa College of Law is hosting the USPTO’s China Intellectual Property Roadshow next Tuesday from 8:45 – 4:15 p.m.  If you’re interested in attending this free program, you can register on the event website:   (Sorry, but we will not be recording or live streaming this program.  It’s a one-time live event.)

DATE:            Tuesday, August 28, 2018

LOCATION:  Levitt Auditorium,University of Iowa College of Law

CLE Credits:  6.25 credits for Iowa attorneys

Morning Session:

8:00 – 8:45      Check in and breakfast

8:45 – 9:15      Welcome Remarks

  • Jason Rantanen, Professor of Law and Ferguson-Carlson Fellow in Law, Director of the University of Iowa Innovation, Business & Law Program
  • Kevin Washburn, N. William Hines Dean of the University of Iowa College of Law
  • James O. Wilson, Supervisor, USPTO Midwest Regional Office
  • Cynthia Henderson, Attorney Advisor, USPTO

9:15 – 9:30      The Future of Intellectual Property in China

  •  Elaine Wu, Senior Counsel for China, OPIA, USPTO

9:30 – 10:30    Overview of Intellectual Property Protection in China

 Moderator: Cynthia Henderson, Attorney Advisor, USPTO

  • How to Protect your Trademark in China and Avoid Pitfalls: Dan Chen, Senior Partner, Unitalen
  • Patent Protection and Trade Secret Protection in China: Jay Sha, Liu Shen and Associates
  • 3 Key Differences in China’s Trademark System and How They Impact Your Business and Copyright Protection in China: Amy Hsiao, Partner, Swanson & Bratschun, LLC

10:30 – 10:45  Coffee/Tea Break

10:45 – 11:45  Intellectual Property Enforcement in China

Moderator:  Kelu Sullivan, Of Counsel, Kelly IP

  • E-Commerce Perspective – Notice and Take-Down Procedures: Dan Dougherty, Global IP Enforcement, Alibaba
  • Enforcing Trademark Rights in China: Amy Hsiao, Partner, Swanson & Bratschun, LLC
  • Enforcing Patents in China: Allen Tao, Liu Shen and Associates

11:45 – 12:00  U.S. Government Resources for China Intellectual Property Matters

  • Cynthia Henderson, Attorney Advisor, USPTO

12:00 – 13:00  Lunch

Afternoon Session:

13:00 – 14:15  Enforcing Intellectual Property Rights in the U.S.

Moderator:  Elaine Wu, Senior Counsel for China, OPIA, USPTO

  • Criminal Investigation: Jerry Wilson, Supervisor of Criminal Investigations, FBI Omaha Division
  • Criminal Investigation: Adam Marasco, Special Agent, Homeland Security Investigations, Cedar Rapids, Iowa
  • Criminal Prosecution: Tony Morfitt, Assistant U.S. Attorney, U.S. Attorney’s Office, Northern District of Iowa
  • Section 337 Investigations: Anthony Del Monaco, Partner, Finnegan, Henderson, Farabow, Garrett & Dunner
  • Federal Court Civil Intellectual Property Litigation: David Gerasimow, Associate, Husch Blackwell

 14:15 – 14:30  Coffee/Tea Break

 14:30 – 16:00  Intellectual Property Protection and China:  The IOWA Experience

 Moderator:  Jason Rantanen, Professor of Law and Ferguson-Carlson Fellow in Law, Director of the University of Iowa Innovation, Business & Law Center

  • Pioneer Seed Theft Case: Judge Stephanie Marie Rose, United States District Judge of the United States District Court for the Southern District of Iowa
  • Agricultural issues, IP and Asset Protection: Barry Nelson, Research Scientist, Global Research IP Asset Protection, Corteva Agriscience
  • China IP Protection: Donna Suchy, Rockwell Collins
  • Managing an IP Portfolio in China from a Corporate Perspective: Jim Hansen, General Counsel, Musco Lighting
  • Experience in Enforcing IP in China: Jeff Harty, Nyemaster Goode, P.C.

16:00 – 16:15  Closing Remarks

  • Molly Kocialski, Regional Director, USPTO Rocky Mountain Regional Office

Role of Preemption in Eligibility Analysis

Smartflash v. Samsung offers a set of backup arguments following Oil States.  Questions Presented:

  1. Whether Administrative Patent Judges of the Patent Trial and Appeal Board (“Board”) are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause. [DC – I discussed this argument in a January 2018 post]
  2. Whether retroactive application of Covered Business Method Review to patents on inventions disclosed before passage of the Leahy-Smith America Invents Act violates the Due Process Clause of the Fifth Amendment.
  3. Whether undisputed evidence that a patented invention is not unduly preemptive, presented to technically proficient judges of the Board, is relevant to the question whether the invention is patent-eligible under 35 U.S.C. § 101.

The third question here is most interesting to me and strikes to the heart of the purpose of the eligibility limitations.  Although the courts have written that preemption avoidance is a major function of eligibility limits, the Federal Circuit has repeatedly held that evidence of no-preemption is irrelevant.

Read the petition here.

Smartflash Patents at issue here: U.S. Patent Nos. 7,334,720; 7,942,317; 8,033,458; 8,061,598; 8,118,221; 8,336,772; and 8,794,516.

Claim at issue (Claim 1 of the ‘720 patent):

1. A method of controlling access to content data on a data carrier, the data carrier comprising non-volatile data memory storing content memory and non-volatile parameter memory storing use status data and use rules, the method comprising:

receiving a data access request from a user for at least one content item of the content data stored in the non-volatile data memory;

reading the use status data and use rules from the parameter memory that pertain to use of the at least one requested content item;

evaluating the use status data using the use rules to determine whether access to the at least one requested content item stored in the content memory is permitted; and

displaying to the user whether access is permitted for each of the at least one requested content item stored in the non-volatile data memory.


USPTO Filing System: Expects To Be Back Online by Close-of-Business Tuesday 8/21

USPTO IT employees and vendors are currently in Musk-Ludicrous mode – “working around the clock to restore the PALM database.”

The Patent Application Locating and Monitoring database (PALM) is the primary USPTO tool for tracking patent prosecution progress. PALM data supports many other USPTO systems used for filing, searching, and paying patent fees. At approximately 4:30 a.m. ET on August 15, 2018, PALM experienced an issue during maintenance that impacted its ability to function properly. PALM was taken offline to fix the issue. Because PALM is interconnected with other USPTO systems, the functionality of these systems was also affected. Trademarks systems were not affected.

The PTO’s current best estimate is that service will be restored sometime on Tuesday August 21, 2018.

Image result for all-nighter

The PTO has announced that it will refund the extra fees paid due to paper filing.  However, system failures will not generally provide an excuse for filing delays.

[Photo from hobvias sudoneighm].

Design Patents: Federal Circuit Jumps into COSPLAY Layering

In re Maatita (Fed. Cir. 2018) (Dynasty Footwear) (Before DYK, REYNA, and STOLL)

Ron Maatita’s design patent application covers a shoe bottom – as shown above.  Note here that most of the markings in the drawing are dashed lines — for design patents these are “broken lines” that indicate “environmental structure or boundaries that form no part of the design to be patented.”   See MPEP 1503.  I used my MSPaint skills to focus in on the particular portions of the shoe sole having solid lines.

During prosecution, the USPTO (examiner then PTAB) rejected the patent — finding the claim indefinite and not enabled.  The particular problem with the drawing is that it is a flat plan view and does not show the three-dimensional structure — what do these lines actually represent in terms of 3D hills and valleys?  The figures below is more ordinary for a shoe sole design — showing more than just a plan-view of the base.

On appeal, the Federal Circuit began its analysis with some crazy-talk as to how indefiniteness should be interpreted for design patents:

A design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.

[Crouch’s Diatribe] Lets reiterate the newly sanctioned process here to see whether my crazy-talk statement holds true: A judge (not someone of skill in the art) must place herself in the shoes of a person of skill in the art (PHOSITA). Then, while in that cosplay mode, the pretend PHOSITA looks at the claimed design from the perspective of an ordinary observer (OO) to see whether it provides reasonably certain limits.  Note here that the an Ordinary Observer is in the position of considering evidence and making factual conclusions — in this case, however, the same evidentiary rules do not apply and the determination is a question of law.  I wonder what other yoga poses are available to the panel.

In walking through the actual level of detail required, the court explained that sometimes a two-dimensional illustration is sufficient.

The design for an entire shoe or teapot, for instance, is inherently three-dimensional and could not be adequately disclosed with a single, plan- or planarview drawing. Whether an article infringed would depend on the perspective chosen to view the article, and a two-dimensional drawing provides no fixed perspective for viewing an article. The article would be infringing from one perspective but not from another. The design of a rug or placemat, on the other hand, is capable of being viewed and understood in two-dimensions through a plan- or planar-view illustration, which clearly defines the proper perspective.

In this case, the court recognized that a shoe sole is a three-dimensional object, but that it is still possible to sufficiently disclose a shoe sole design using just a plan-view.

[T]he fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional, plan- or planar-view perspective—and that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement.

Rejection Reversed.

In the end, this means that Maatita’s patent will be much broader in scope because it is not limited to any particular three-dimensional shape, but rather only a to the appearance from a particular perspective.

The decision here is also in-line with the Federal Circuit’s ongoing undermining of the indefiniteness doctrine — what does “reasonable certainty” mean to the court?

Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

Upcoming CLE Events

Although the USPTO is not yet requiring Continuing Legal Education hours, there is still lots to learn about the twists and turns of our patent system.  I will be speaking at a few upcoming CLE-events this fall:

I hope to see you there! Dennis Crouch

Property Rights, but only To the Extent Needed

 By Dennis Crouch

In addition to its patent law jurisprudence, the Federal Circuit also handles appeals from the US Court of Federal Claims (CFC).   The CFC hears monetary claims against the U.S. Government – including breach of contract, takings, and unlicensed patent use under 28 U.S.C. Section 1498. The CFC also meets in the same Madison Place building as the Federal Circuit.

The Federal Circuit’s new decision in Crow Creek Sioux Tribe v. United States, App. No. 2017-2340 (Fed. Cir. August 17, 2018), revolves around a water-rights takings claim against the U.S. Government.  The particular claim stems from two dams across the upper Missouri River that limit the Tribe’s ability to use and enjoy river water. The tribe sued in 2016. However, the case was dismissed for failure to state a claim.  The Federal Circuit has now affirmed that decision – holding that the tribal water rights are only a weak form of property.  In particular, the appellate held that the tribal property right in the water flow only extends to the amount of “to the extent needed to accomplish the purpose of the reservation.”  Quoting Winters v. United States, 207 U.S. 564 (1908) (known as “Winters rights” to water).  In Cappaert v. United States, 426 U.S. 128, 138 (1976), the court reiterated the winters rule – noting that Winters rights entitle a tribe to “that amount of water necessary to fulfill the purpose of the reservation, no more.”

Although so-called Winters rights are fully vested, the rights are only offended by government (or third-party) uses that impinge upon the Tribe’s needs for the water. There is no property right violation if the Tribe still has enough water for Reservation uses.  The complaint in this case does not allege that the water flow limits block any necessary Tribal function – as such the complaint fails to assert any legally cognizable harm.

The tribal rights here are greater than prior-appropriation rights common to Western-America states. Notably, Waters rights are set-aside for the reservation and are not abandoned by mere non-use.  In addition, because they were established pre-statehood, they are prior in time to almost all other nearby claims.

In many ways patents are treated as the complete opposite of the tribal water rights and serve as a speculative resource rather than a limited natural resource. A patentee has an exclusive right to control almost any non-licensed use – regardless of whether that use causes any direct harm to the patentee.  The one area where the water rights rules overlap is in equity – an injunction must be predicated by harm felt by the patent owner.

Day Three of PTO E-Filing Outages

We are now in Day Three of USPTO Computer System Failures:

A number of USPTO online business systems remain offline. We understand the impact to our users and the frustrations that come from having such systems down unexpectedly. The USPTO is working hard to resolve the issue and we will continue to provide updates to you. The latest information on alternative methods of filing and payment and our systems status can always be found on our website. More updates will be forthcoming.

Note that the system failures do not automatically serve as any excuse for filing delays. The Office of the Chief Information Officer (OCIO) is currently led by Acting Chief David Chiles and has a budget of $600 million.


En Banc: Court Rejects PTOs Narrow Reading of 1-Year Deadline for IPR Filing

by Dennis Crouch

In an unusual en banc footnote, the Federal Circuit has ruled that the litigation time-bar found in 35 U.S.C. § 315(b) applies even in cases where the plaintiff-patentee voluntarily dismisses the lawsuit without prejudice.  Click-to-Call Tech., LP v. Ingenio, Inc. and Iancu (Fed. Cir. 2018).

The statute provides:

An inter partes review (IPR) 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.

In this case, the Board acknowledged that a qualifying prior infringement lawsuit had been filed and served upon the prior-interest holder of the petitioner.  However, the Board allowed the IPR to move forward because of the voluntary dismissal — noting that “[t]he Federal Circuit consistently has interpreted the effect of such dismissals as leaving the parties as though the action had never been brought.”  Here, the en banc court has reversed that judgment — holding that the IPR must be dismissed.

The short en banc footnote was signed by ten members of the court.  That footnote did not explain the reasons for its legal conclusions.  Judge O’Malley filed the panel opinion in the case — offering a justification for the interpretation as did Judge Taranto in a concurring opinion.  The two dissenters — Judges Dyk and Lourie  — argue that the statute should be interpreted in light of tradition: “Courts have typically treated voluntary dismissals without prejudice as restoring the parties to the situation that existed before the case had ever been brought.”

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The actual facts here are a bit convoluted.  The challenged patent (U.S. Patent No. 5,818,836) was originally owned by its inventor Stephen DuVal and exclusively licensed to InfoRocket.  Back in 2001, InfoRocket sued Keen for infringement.  Keen then purchased InfoRocket and the case was voluntarily dismissed.  Keen then changed its name to Ingenio.  Although Ingenio then had rights to the patent — it apparently wanted to escape from paying royalties and so filed for reexamination. Meanwhile DuVal had gone through a bankruptcy but emerged still as the patent owner.  That prior dispute resulted in an interesting 5th Circuit licensing decision. DuVal Wiedmann, LLC v., Inc., 620 F.3d 496, 498 (5th Cir. 2010) (licensee did not accrue obligations to pay after date of filing reexam request).  The IPR at issue here is a continuation of that longstanding battle.

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This Self Referencing Database is Not Patent Eligible

BSG Tech v. BuySeasons, Inc. (Fed. Cir. 2018)

On appeal here, the Federal Circuit affirms a lower court ruling that the claims of BSG’s three asserted patents are invalid as ineligible under 35 U..S.C.  § 101. U.S. Patent Nos. 6,035,294, 6,243,699, and 6,195,652.

The claims relate to indexing a database according to “relative historical usage information.”  Thus, in an automobile database with a “model” parameter, the system could display index by the popularity of the various models.  In the claims, the popularity is measured by prior users of the system.  Note here – the claims don’t technically require indexing by the frequency, only being able to access that information.

The patents here have been asserted in 50+ lawsuits – the vast majority of these cases settled up until E.D.Tex. Judge Schroeder ruled them ineligible.

On appeal, the Federal Circuit made fairly quick work of the patents finding:

  1. The asserted claims are directed to the abstract idea of considering historical usage information while inputting data; and
  2. The claims do not include anything beyond the abstract idea sufficient to transform the claim into a patent-eligible invention.

In making its determination, the court distinguished DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014) — holding here that the use of historical information is not “rooted in computer technology.” “Whether labeled as a fundamental, long-prevalent practice or a well-established method of organizing activity, this qualifies as an abstract idea.”

Enfish was a similar case — also involving a self-referential database structure.  That case, the court determined that the focus was on database function and machine efficiency. Here, on the other hand, the historical information is stored just like any other data. “The claims do not recite any improvement to the way in which such databases store or organize information analogous to the self-referential table in Enfish or the adaptable memory caches in Visual Memory.”

Although the court recognized that underlying factual determinations may inform the legal decision of eligibility — especially whether the “something more” is merely routine application of conventional technology — a court is free to decide the issue as a full question of law if the only inventive concept identified in the claim is the ineligible abstract idea.

Here, the only alleged unconventional feature of BSG Tech’s claims is the requirement that users are guided by summary comparison usage information or relative historical usage information. But this simply restates what we have already determined is an abstract idea. At Alice step two, it is irrelevant whether considering historical usage information while inputting data may have been non-routine or unconventional as a factual matter. As a matter of law, narrowing or reformulating an abstract idea does not add “significantly more” to it.

Ineligiblity affirmed.


Teaching a Result vs Guaranteeing a Result

In re Facebook (Fed. Cir. 2018) (nonprecedential opinion)

Facebook’s U.S. Patent Application No. 13/715,636 claims a method for displaying a set of images after reshuffling or resizing the images.  The Examiner rejected Claim 1 (below) as anticipated; and that rejection was affirmed by the Patent Trial and Appeal Board.  Now on appeal, the Federal Circuit has reversed and remanded — finding that the USPTO had too loosely interpreted the prior art.

The claimed image rendering process begins with a sequence of images. Each image is assigned a “first position” within an “array of contiguous image elements” — in other words, the images are put in a particular order.  When a user adjusts the position or size of an image — there may be a need for reshuffling of the images into “second positions.”  The claimed method includes a requirement that the reshuffled sequence “be contiguous.” — i.e., no gaps in the array.

Notice the reshuffle above that occurred from 1A to 1B when a user resized image 130.

The claims expressly require that the reshuffle retain contiguity.  The problem for the PTO is that the identified prior art (Perrodin) did not require contiguity “in all cases.”   The court wrote:

Nothing about Perrodin’s algorithm required contiguity. It is true that the example depicted in Figures 18 and 19 happened to result in contiguity. But that cannot represent a general rule that would demand contiguity for all images, as required by the claims here. . . . Perrodin’s algorithm could not guarantee contiguity.

So, we have a situation here where the prior art teaches contiguity-after-reshuffle, but is also open to situations where a reshuffle might result in non-contiguity.  The claims – on the other hand – include “a rule requiring [contiguity].”  Since the prior art does not include the rule requiring contiguity, it cannot anticipate.

The court here did not discuss obviousness because the PTO had conceded that “the anticipation and obviousness rejections rise and fall together.”

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Claim 1 of the Facebook application reads as follows:

1. A method comprising:

by a computing device, determining a sequence of image elements;

by the computing device, determining, for each image element in the sequence, a first position in an array of contiguous image elements, the first position being based on a size of the image element, an order of the image element in the sequence, and dimensions of the array;

by a computing device, determining, in response to an instruction to adjust the position or size of a first image element, a second position in the array for at least one second image element, the second position determined based on a rule requiring the image elements to be contiguous such that each available image position between the first image element in the sequence and the last image element in the sequence is occupied by an image element; and

by the computing device, providing information to render the array of contiguous image elements.