Intellectual Ventures v. JPMorgan (Fed. Cir. 2015)
IV has asserted a set of computer security patents against JPMorgan, some of which are directly related to electronic transactions. Within a month of the civil action filing, JPMorgan responded by filing petitions for post-grant Covered-Business-Method (CBM) review of two of the five asserted patents. JPMorgan then immediately requested a stay of litigation (noting that the patents-in-suit are also undergoing inter partes review proceedings).
The district court rejected JPMorgan’s stay request and the company filed this interlocutory appeal. On appeal, however, the Federal Circuit has dismissed the case – finding that it does not (yet) have jurisdiction over the interlocutory case.
Section 18 of the America Invents Act provides a four factor test for determining whether to stay a civil action pending the outcome of a CBM transitional proceeding.
(A) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;
(B) whether discovery is complete and whether a trial date has been set;
(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and
(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.
The statute goes on to provide for “immediate interlocutory appeal” of a district court decision on the motion for stay that is related to a CBM Proceeding and that the Federal Circuit will review the decision de novo. Of course, that provision is an exception to the normal rule that the appellate courts only have jurisdiction to review final judgments of the district courts. 28 U.S.C. § 1295(a)(1) (2012). And further, judgments on motions to stay are normally considered interlocutory orders that are not subject to immediate appeal.
CBM Petition is not a CBM Proceeding: As I said, the statute provides for immediate appeal of district court stay decisions relating to CBM proceedings. Here, the Federal Circuit made a thin but important distinction by noting that the filing of a CBM petition is not itself a CBM proceeding. Rather, the CBM review only becomes a “proceeding” once the petition is granted. Truthfully, the statute is not entirely clear on this point, but the court cobbled together is conclusion by noting: (1) the statute indicates that that the process is begun with the filing of a “petition for a [CBM] proceeding” which indicates that “a petition is a request for a CBM[] proceeding, not that the petition itself is part of the proceeding.” The statute then indicates that it is the USPTO Director who “may institute a [CBM] proceeding” — an event that occurs after the filing of the petition.
Because the statute provides for no immediate appeal pre-CBM-proceeding, the Federal Circuit dismissed the case for lack of appellate jurisdiction.
= = = = =
In the big picture, this means that the challenger will likely still move for a stay immediately following the filing of a CBM/PGR, but if that is denied will need to renew that motion once the proceeding is initiated in order to create appellate jurisdiction. Meanwhile, the patentee may be looking to delay the petition decision and push the civil action more quickly in order to shift the balance of factors in its direction (toward denying the stay).
Brosefs, come one come all. Gather round. Listen.
If you guys do not want this office to be “the rejection office” for the next couple of years until a new administration you’d better act fast. Some of you may have been at the quality summit of late. There was much discussion about many things. If you guys aren’t wanting a whole boat ton of iffy at best non-f’s then you’d better get off your duffs and make your concerns heard. I’ve heard more about some specific things bound to increase rejections in the past month than I have the past 4 years combined. It will swing the pendulum wildly if people keep talking that way. Trust me on this. Even the mindset.
You kind of already feel it. My problem is that the feedback I am getting from the examiners is not that this is a really good reference, but that we have to cut back on all that patent litigation so we are not going to allow it. My guess is Google Director Lee is going to drive a lot of applications to that massive ex parte appeal queue.
Rejection Office?
Been there – done that.
Witness the various decks of the Titanic (the queues of the backlogs) and witness the failed gambit of the Office in the Tafas debacle.
This is a worse bluff than the one already called, and that one hasn’t worked out to well, has it?
I don’t know anon. I think we are dealing with a different animal in Google bucks Lee. My guess is the PJs are about to feel real pressure to get control of that appeal backlog so she can implement the great purging.
This is a worse bluff than the one already called
Your bluff is going to continue to be called.
The mythical “small inventor” with his b.s. “app” patent is not the most important person in the world and the government does not need to bend over backwards to create a class of entitled grifters and patent speculators who prey on the success of others like lampreys prey on salmon.
We’d all be better off if you found something productive to do for a change. Thanks in advance.
“Your bluff is going to continue to be called.”
No surprise here Malcolm as you got that arse-backwards.
Try reading the comments (and understanding them) before you join the conversation.
No surprise here Malcolm as you got that arse-backwards.
Cling to your captured agency with all your might, “anon”!
Nobody can see you and nobody is aware of what’s going on. You just gotta believe!
Oddly, you think that simply not having the “Reject-Reject-Reject” era was a sign of a captured agency.
6: It will swing the pendulum wildly if people keep talking that way.
It’s about time for the PTO to actually start paying attention to the Supreme Court instead of working with the CAFC to continually undermine it.
The time for America’s Greatest Patent Lovers (TM) to take a seat on the bench and cool down was five years ago. They showed no indication that they were capable of doing that.
Reap the whirlwind.
Brush away the v@pid rhetoric and all you have is the violation of separation of powers and the desired ends of the Royal Nine re-writing patent law.
Sorry Malcolm, but you still have to deal with the fact that it is Congress that has that authority, regardless of how you “feel” about the Act of 1952.
“It’s about time for the PTO to actually start paying attention to the Supreme Court instead of working with the CAFC to continually undermine it.”
I’m not talking about that brosef. I’m talking about like “nigh mandatory” first action non-f’s.
6, one thing that might be helpful for all, and I mean the public and the applicants both, is to parse the claim versus the specification and enter a 112 when a claim term is not used in the specification.
A case now on appeal to the Supreme Court, discussed in the Wamsley thread, was allowed on the prior art when a claim term, not used in the specification, was added to distinguish over the prior art. The real problem in the case is that no one knows for certain what this claim term means.
The examiner in the original prosecution should have entered a 112 written description objection when such a claim term added.
I assume the patent office can use computer means to scan the text of a specification to determine whether a claim term is present or not. Is that correct?
6, another thing one might do as SOP is to enter section 112 rejections of every means plus function claim unless the specification defines the means element in terms of the corresponding structures, etc.
What the corresponding structure is seems to be an issue in every litigation. Thus, what the corresponding structure is should not be assumed as being self-evident. The patent office owes a duty to the public to make sure that one reading the prosecution history would know what such a claim term means.
“What the corresponding structure is seems to be an issue in every litigation.”
Probably because when it is done right there is no litigation.
“The patent office owes a duty to the public to make sure that one reading the prosecution history would know what such a claim term means.”
Or else the congress owes a duty to the public to strike 112 6. Either or.
“The examiner in the original prosecution should have entered a 112 written description objection when such a claim term added.”
Idk about that bro. We give a wide berth on 112 1st as per the Federal Circuit and the higher ups wishes. If you want that to change don’t beg the examiners, talk to the people that setup that scheme.
“talk to the people that setup that scheme”
That would be Congress – as has been explained with Ned’s own favorite source of Federico.
Pay attention.
6, you know what the PTO’s problem is? The PTO has decided to let the Federal Circuit get away with m*r der. When is the last time the PTO took the Feds to up to its boss?
If a claim term not in the specification is used to distinguish the prior art during original prosecution no amount of self-serving pablum spewed by the applicant should be able to overcome a 112 rejection.
Get some balls.
Idk about all that brosef. 112 1st is the least of my concerns about the law. It’s fine imo. And I allow people to use new terms to describe some things, within reason, that they have possession of. It’s fine man, chillax. If there is a term that is ambiguous in meaning then take that shizzle up with 112 2nd.
You don’t how often the Federal Circuit complains they have to construe a claim term does not in the specification. Now why is that?
Nautilus changes everything. The claim term is not in the specification, how does one know what it means that any precision? Reasonable certainty anybody? Certainty?!
Criminy Ned – stop hyperventilating.
We have NEVER had ipsis verbis here in the US, and clearly terms – any and all terms – follow the normal construction of PHOSITA as having been informed by the specification.
Just.
Relax.
I think there should be a difference between the PTO and the courts on this, anon.
In the PTO, the examiner should be able to require that terms in claims that are used in the spec be defined by reference to the spec, and if a claim term is added to distinguish the prior art, that the claim term actually be used in the specification.
In court, the presumption is the patent is valid. That requires some leeway.
Your thinking is ungrounded and shallow, not in accord with law or custom, disregards the entire notion of PHOSITA, the fact that patent documents are not meant to cover the world in such details, and would result in the (easily foreseeable) patent profanity of highly bloated and less readable applications.
What we have here Ned plain and simple is your over-reaction and wanting to follow your desired end no matter the means.
You really do need to take a step back and THINK about the entire picture.
Anon, and let me tell you that is highly in the interest of patentees that they use terms that are actually used in the specification in their claims to ward off what happens in reexaminations and IPRs when a claim term is not used in the specification. What happens in reexaminations and IPRs when a claim term is not used in the specification is that the claim construction gets wild and woolly – beyond belief – and there’s nothing in the specification to constrain the construction the something more reasonable. Broadest reasonable interpretation will not limit claim term scope where claim term is not actually used in the specification. Trust me.
Only a complete id *ot would not distinguish the prior art using a claim term that is not actually used in the specification. He is setting up his client for real trouncing in the patent office if not in the court.
“highly in the interest of patentees”
You are absolutely missing the point here Ned.
I’m not talking “best practices.”
I’m talking about the straight up law that you seem to want to close your eyes to and pretend that some other law is in place.
Read again my posts and note that every point I make is 100% accurate.
You don’t have to like what I say – but you should be able to be professional enough to acknowledge the veracity of what I say.
No anon, there are two laws principally because of broad as reasonable interpretation.
BRI causes the patent office to construe claims broadly. Thus if a term is not actually used in the specification, a broad construction would not be supported.
The new Supreme Court case of Nautilus also changes things dramatically. The patent office is required to issue claims that are reasonably certain. How can they do this if a claim term used to distinguish the prior art is not even used in the specification?
I’m talking about like “nigh mandatory” first action non-f’s.
Given the garbage that gets shoveled at the PTO in certain units there’s nothing remotely surprising about a “nigh mandatory” first action non-final.
Stop coddling the computer-implemented junkers and the PTO will start turning into a credible institution again. Keep playing patty-cake with those entitled whiners and watch the system continue to rot from the foundation.
My post to Ned on the Wamsley thread repeated in part here because of the perfect fit:
As is your view that Malcolm listens, as if he did, he would not repeat as nauseum the VERY limited script that he does.
No, Ned, what you wish to convey is simply not true.
And as for his “responding in kind,” that too is false, as his “response” is OFTEN a first-strike propaganda “grifter” post. The black and white on these boards simply do not support your contentions.
At all.
So instead, let’s try what I suggest: let’s stop the v@pid propaganda.
“Stop coddling the computer-implemented junkers and the PTO will start turning into a credible institution again. Keep playing patty-cake with those entitled whiners and watch the system continue to rot from the foundation.”
I’m not talking about the non-useful arts bro. I’m talking about your everyday devices, apparatuses etc of the old school useful arts.
Because Section 18 authorizes stays in favor of “a transitional proceeding,” a motion to stay would be unauthorized under this decision if only a petition has been filed.
This makes sense because a petition may be denied and it would be premature to stay a civil action before that decision is made by the PTO.
Bingo – and as straight forward as that.
So I might be excused as I wander OT a moment and plug the Greg Aharonian email newsletter.
If you are not receiving this, WAKE UP and get on his mailing list.
This is not because everything he says is gold (it’s not). It is not because his views are objective (they’re not).
It is because he speaks as plainly as he does boldly.
And it if because he provides interesting links link this article on engineering type fallacies: link to ecnmag.com
Better blocked comment – and perhaps some intelligent discussion, rather than the junior high school food fight that has been going on for years, with no adults present….
But what about the dingus?
Dingus? Bah, I Billy Crystal bigger than that.
Just another example of very poor draftsmanship.
The AIA is littered from one end to another with ambiguity.
We all know that 271(c) and (b) were not intended by Rich and the people who sponsored these to change the law regarding infringement in one iota. Just codify. But the result was a fundamental change per Aro II who felt the need to follow the language of the statute rather the intent of congress.
Harkening back to ’52, no one intended to make secret, non public work prior art. But by mixing the defenses to infringement with the conditions for patentability together, that is exactly what happened. What were the drafters of the ’52 Act thinking/smoking?
We all know just how bad 103 is. A subjective test — beauty is in the eyes of person of ordinary skill, but just who is he?
And the beat goes on.
Bad draftsmanship by arrogant know-it-alls.
Clearly this is not the result Congress intended. And it is certainly possible that this gets reversed en banc. But it’s also quite clear that the law is ambiguous, and when the law is ambiguous as to a court’s jurisdiction, you tend to get a narrower construction in light of the final judgment rule and the limited jurisdiction of the courts.
Mind you, this is an incredibly easy fix, but it’s something that you see all over the AIA.
Ned: What were the drafters of the ’52 Act thinking/smoking?
“The court will take care of any ambiguities”/banana peels.
MM they thought they could make things better through better statutes. They were clearly wrong. They made things a lot worse.
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