Eric Sutton is a senior patent counsel at Oracle and an adjunct professor at Chicago-Kent College of Law. Any views or opinions expressed by him in this article are solely his own and do not necessarily represent those of Oracle Corporation, its subsidiaries or affiliates.

As known to most patent practitioners,[i] a parent provisional does not lock in a priority date for a child non-provisional unless the parent provisional provides a written description and enablement of an invention that is claimed in the child non-provisional. This assessment is conducted on a claim-by-claim basis[ii] to see if the parent provisional adequately supports and enables the precise subject matter of each child non-provisional claim for which priority is desired. If none of the claims in the child non-provisional are fully supported and enabled by the parent provisional, then the priority date for all of the claims is the later filing date of the non-provisional. In this scenario, the provisional has no clear value.

Under our first-inventor-to-file system, references that are published or patent applications that are filed between an applicant’s parent provisional filing and the applicant’s child non-provisional filing open the door for prior art to the claims of the child non-provisional filing, if those claims are not fully supported and enabled by the parent provisional.

Patent applicants, especially for software-related technologies, often file provisionals just before product releases, presentations at conferences, or publications of white papers or marketing materials. In-house patent portfolio managers frequently reassure business leaders that the technologies are protected by the provisionals, and outside patent counsel often similarly reassure in-house patent portfolio managers. However, due to time and budget pressures that often impact provisionals, relying on a provisional for priority may be significantly riskier than relying on a non-provisional.

Consider the hypothetical example below:

In the example, suppose your company files many provisionals and, on average, files many non-provisionals — each about ten months after its corresponding provisional. You file the provisionals ahead of product releases, and your competitor follows up with very similar product releases within a few months. The competitor’s product releases and several publications about the underlying technology occur during the ten-month span between provisional and non-provisional filings. Any aspects of these publications that were not completely derived from your product would serve as potentially invalidating prior art to your non-provisional filings unless your provisional filings satisfy the written description and enablement requirements with respect to your non-provisional claims. This scenario could happen over and over again, and negative effects from this scenario could even be baked into your provisional and non-provisional filing strategies in a fast-paced product development environment.

In a big data analysis of provisional application quality, focused on comparing provisional application content to non-provisional claims using Innography®, LexisNexis® PatentAdvisor®, and self-developed software, I found that many patent attorneys seemingly do rely rather extensively on their provisionals.[iii] On average, applicants rely extensively on their provisionals by allowing an average of ten months of risk for intervening prior art by filing the first-filed child non-provisional ten months after the corresponding provisional. Whether or not that intervening prior art actually shows up is beyond their control, particularly if they have already let the cat out of the bag by sharing their technology with others.

How can we know, with high probability for a large set of provisionals, whether those provisionals provide support for their child non-provisional claims? While there are many approaches available, some are more or less time-consuming, more or less subjective, more or less scalable, and more or less reproducible. I chose to analyze a large chunk of application pairs[iv] to see whether word stems present in the non-provisional claims[v] were also present in the corresponding parent provisionals.[vi] I then further excluded word stems that often appear in patent claims to produce even more interesting results that focus in on the less common word stems that theoretically would be more troubling if missing from the provisionals. The results are objective for what they show, i.e., that provisionals are, on average, missing several word stems from the broadest independent claims of the non-provisionals.

The study does not conclude missing word stems or even missing uncommon word stems necessarily mean that there is no support or enablement in the provisional. On the contrary, the conclusion of this study depends on your personal experience and judgment. Suppose you know nothing about a large set of provisionals in your portfolio other than how many unique word stems and, more specifically, how many uncommon unique word stems from the broadest child non-provisional claims were missing from the provisionals.

My guess is that most people would be very comfortable if all of the word stems or uncommon word stems were present in the provisional (0% miss rate) even though it is still possible they have not supported or enabled the claims in particular scenarios. On the other hand, I think most people would be very uncomfortable if all of the word stems or uncommon word stems were absent from the provisional (100% miss rate) even though it is still possible that they have supported or enabled the claims. Different people will have different comfort levels between 0% and 100% depending on their own experiences and understanding, but at higher percentages one would likely begin to bet against priority rather than for it.

The study evaluated 1905 pairs of parent provisionals and non-provisionals, filed between March 2012 and July 2013.[vii] In the sample, there were 16,739 unique word stems in the first claims of the 1905 non-provisionals. For the parent provisional / child non-provisional pairs, an average of 7.0 unique word stems from claim 1 were missing from the parent provisionals out of an average of 49.8 unique word stems per claim, for a 13.3% unique word-stem miss rate. As mentioned above, applicants waited an average of 10 months between filing the first-filed non-provisional from the provisionals, which means applicants relied on these provisionals by taking on unnecessary risk, despite the significant average miss rates.

The chart below shows percentages of cases at different levels of word stem miss rates.

As shown, about 19.3% of cases were missing 25% or more of the unique word stems, a point that is likely beyond the comfort level of most patent practitioners. That said, 21.5% of cases had a 0% miss rate, indicating that a large group of patent practitioners is avoiding the written description and enablement risk that comes with varied language.

After a careful analysis of stems at different thresholds, it turned out that the top 3% of stems (516 stems) occurred 30 or more times in the sample and included stems that, for the most part, would likely not be considered relevant to a written description analysis, whether or not a synonym was present in the provisional. The choice of a cutoff level was subjective, but the cutoff itself was objectively applied in the sense that all terms above the cutoff were removed from the study and all terms below the cutoff remained in the study. The rationale used for the subjective cutoff level was to pick a level that was just beyond any level including the most common terms occurring in computer-related claims. Although the sample of cases was not limited to computer-related cases, computer-related terms excluded as being part of the top 3% were, for example:

comput, store, storage, devic, service, server, system, machin, network, send, receiv, transmit, communic, provid, transit, instruct, engine, modul, configur, process.

Using the list above as a proxy for familiar common terms was helpful in picking a cutoff point even though a significant portion of the sample did not involve computer-related innovation. Stems beyond the top 3% boundary remained in the study. These less common stems occurred 29 or fewer times in the sample of 1905 claims.

Should the miss rates go up or down after removing the common stems? My hypothesis was that miss rates would go down because terminology such as “compris” (excluded as within the top 3%) might often be added by attorneys down the road as claims are solidified. At a minimum, more cases would have a 0% miss rate when fewer stems are searched. Others predicted that the miss rates would go up for other buckets because common terminology is usually present in the provisional, at least as boilerplate. Therefore, removing the common terminology would reveal the true incompatibility between provisionals and non-provisional claims.

I was not willing to tolerate the same miss rates as I did in the analysis for all stems. Because we are focusing on only the stems that occur relatively infrequently (in 29 or fewer out of 1905 claims), it is significantly more likely (though not certain) that these stems would reflect content that could be relevant to written description or enablement issues.

Others were right to think the results would get worse. Removing the top 3% of stems reduced the average number of unique stems per claim by 27 stems (45.8%) to 22.8 stems. Out of those 22.8 uncommon unique stems remaining, on average, provisionals were missing 5.3 for an average miss rate of 17.7%, up by 4.4%. Personally, I was shocked at this result and felt uncomfortable on behalf of the patent bar.

The chart below shows percentages of cases at different levels of uncommon word stem miss rates.

As shown, about 26.7% of cases were missing 25% or more of the unique word stems. The 26.7% uncommon stems mark is up from the 19.3% mark for all stems, reflecting a delta of 7.4%. If having 25% or more uncommon stems missing is beyond the comfort level of most patent practitioners, then practitioners should be uncomfortable with at least 26.7% of the provisionals being filed. I was equally as shocked to see that 9.8% (up by 5.5%) of cases were missing 50% or more of the uncommon stems. The largest cluster was 24.1% (up by 2.6%) having a miss rate of 0%, although there were a few miss rates even at 100%.

Due to the skewed distribution with miss rates falling at both ends of the spectrum, statistical metrics such as standard deviation did not provide much insight into the dataset beyond the charts shown. Nevertheless:

• a miss rate of 21% (30% of the sample) was greater than one standard deviation away from the peak of 0%,
• a miss rate of 34% (19% of the sample) was 1.645 times the standard deviation away from the peak (considered significantly different than the peak of 0% for a right-tailed distribution, p = .05, if the peak miss rate of 0% is considered to be the target). Note this analysis incorrectly treats the 100% miss rates as deviating from the target, when at least these cases clearly have a different target. This unnecessarily inflates the miss rate required to qualify as significantly different.
• a miss rate of 42% (14% of the sample) was greater than two standard deviations away from the peak.

U.S. ISSUES

It turns out that, in the U.S., the patent office does not even check for provisional application priority unless there is intervening prior art. That said, priority issues do come up in courts where litigants are equipped with discovery and additional resources.[viii] Based on the results of this study, it seems that there is some low hanging fruit where the patent office could object to a priority claim that is extremely unlikely to be accurate and, after patent office review, turns out to be inaccurate regardless of whether the patent office has found intervening prior art.

INTERNATIONAL ISSUES

Although I am not qualified to opine on the laws of specific other countries, I do know that many other countries generally have a stricter view on specification support for the purposes of preserving priority. According to Heather McCann, a European Patent Attorney at EIP: “Having a mismatch in the literal terminology of the U.S. provisional and a child PCT application or a child European direct national filing could significantly reduce the possibility of obtaining patent protection and successfully defending a validity challenge, post-grant, if the contents of the U.S. provisional application were published (even by the applicant) prior to the child PCT or child direct national filing.”[ix]

Unfortunately for U.S. applicants, unless they are keen on priority issues, non-U.S. patent offices might be able to reject cases from U.S. applicants more frequently based on a difference between common U.S. practice and foreign written description and enablement laws.

INEQUITABLE CONDUCT

Because inequitable conduct involves intent, which is fact-specific, this article does not delve any deeper into this potential issue. That said, it would be interesting to hear an argument and supporting explanation against such a finding if the applicant incorrectly claimed priority even though 100% of the uncommon word stems were missing from the provisional.

GENERAL CONCLUSIONS

The study is an objective report of terminology disagreement between provisionals and non-provisionals. Individual attorneys will vary on how much terminology disagreement they find comfortable in light of their understanding of 35 U.S.C. 112(a).

With 27% of the provisionals missing a quarter or more of the broadest non-provisional claim’s uncommon unique word stems, there is much room for the patent bar to either improve provisional application quality or avoid inaccurate priority claims. Perhaps this could also be accomplished by prioritizing the conversion to a non-provisional or filing incremental provisionals as more details become available, rather than waiting 10 months for the conversion.

[i] For more information on the written description and enablement requirements, particularly as they apply to software-related innovation, see Sutton, E. Software Patents: A Practical Perspective (ver. 2.2, Sept. 2017), available on Amazon at http://a.co/9xcPNr9 (a software patents textbook in support of a law course offered at Chicago-Kent College of Law).

[ii] Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center v. Eli Lilly and Company, 849 F.3d 1049 (Fed. Cir. 2017) (inadequate written description in provisional); Phigenix, Inc. v. Genentech Inc., 238 F.Supp.3d 1177 (N.D. Cal. 2017) (inadequate written description in provisional); See Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017) (provisional not enabling); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (“priority claims are not examined by the PTO as a matter of course, and consequently are not entitled to a presumption of adequate written description support in the provisional application,” and “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent . . . .”).

[iii] N=1905, down from an original sample of 2341 after excluding: (a) unparseable provisionals, (b) clearly incomplete claims (for example, a method claim ending at the colon), and (c) later-filed provisionals that paired with the same first-filed non-provisional; provisionals filed Mar. 2012 to July 2013 across all companies, spanning the AIA transition; raw provisional pdfs available from PAIR, provided by Innography® in Jan. 2017; filing dates provided by Innography® directly and through use of their excellent patent portfolio analytics tool; sample spread over TC 1600, 1700, 2100, 2400, 2600, 2800, 3600, and 3700.

[iv] N=1905, same sample as above, comparing claim 1 of the non-provisional to the entire contents of the provisional application pdf, drawings included, based on Official Character Recognition (OCR) performed in batch by Adobe® Acrobat® 9 Standard, version 9.0.0. Provisionals were paired up with their first-filed non-provisionals based on data provided by Innography®. The claims of the non-provisionals were downloaded from Innography®.

[v] The first claims of the first-filed non-provisionals were stemmed using a popular word stemming library to result in unique word stems.

[vi] The text of the corresponding provisionals, as a result of the Adobe® Acrobat® 9 Standard OCR (see above), was searched for any text that would match the unique word stems. Spacing issues and formatting issues were corrected before performing the comparison.

[vii] The provisionals involved were filed between March 2012 and July 2013, bridging the AIA transition. If attorneys changed practice from pre-AIA to post-AIA, those changes were not sufficiently detectable in this sample. Although I personally believe that attorneys have not changed practice post-AIA; to fully test that hypothesis, I would need a sample significantly earlier than the AIA and a separate sample significantly later than the AIA. These samples simply were not available to me when I started the study.

[viii] Los Angeles Biomedical Research Institute at Harbor-UCLA Medical Center v. Eli Lilly and Company, 849 F.3d 1049 (Fed. Cir. 2017) (inadequate written description in provisional); Phigenix, Inc. v. Genentech Inc., 238 F.Supp.3d 1177 (N.D. Cal. 2017) (inadequate written description in provisional); See Storer v. Clark, 860 F.3d 1340 (Fed. Cir. 2017) (provisional not enabling); Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) (“priority claims are not examined by the PTO as a matter of course, and consequently are not entitled to a presumption of adequate written description support in the provisional application,” and “[a] provisional application’s effectiveness as prior art depends on its written description support for the claims of the issued patent . . . .”).

[ix] See, for example, European decision T 1983/14 “Purchase of mobile top-up/JANUARY PATENTS LTD.” (Nov. 23, 2015) (“The case law of the Boards of Appeal requires that the subject matter be directly and unambiguously derivable by the skilled person from the disclosure as a whole. The expressions ‘invoiced together’ and ‘charged for together’ . . . disclosed no more than that transactions could take place on the same machine[, not] multiple products being invoiced as one transaction.”); European decision T 2061/13  (June 20, 2017) (“subject-matter of claim 1 is . . . not directly and unambiguously derivable by the skilled person . . . such that . . . claim 1 does not have a right to priority from P1.”).

Patentees often blame the USPTO for low patent quality.  Examiners though often reflect upon the principle “garbage-in, garbage out.”

As part of its patent quality initiative, the USPTO is considering the patent document could be improved to better facilitate examination and ultimately improve patent quality at issuance.

The chart below comes from an internal USPTO survey of patent-examiners – asking them what attributes of a patent application are “most necessary” for quality (and efficient) examination.  For each of those attributes, the survey asked about the frequency that they are found in patent applications (click to enlarge) (PDF with Explanations):

Note – the survey was conducted by Martin Rater – USPTO’s Office of Patent Quality Assurance chief of statistics.

Not surprising, the largest gaps are found in the area of claims written in a form that is so broad so that it is no longer relatable to the inventive concept. The chart here focuses on “top needs.” Examiners also noted elements they don’t see as necessary – perhaps most notably a “Glossary of terms provided (separate section in the specification).”

Tough case for Livermore Software.  The PTAB just rejected its claims as abstract ideas.  Claim 1 is a bit long but is listed below as a method for joining mis-matched portions of an object’s surface (NURBS patches) so that a whole object model is prepped for finite element analysis (FEA).  The problem for the patentee is that it presents a step-by-step algorithm with such precision that the Examiner (and PTAB) saw it as claiming a mathematical algorithm.

Ex parte Hartmann, Apn. 14/051,559 (Nov.  2, 2017) [PTAB Decision: Livermore101]

The PTAB writes:

We agree with the Examiner that claims 1, 7, and 13 are directed to the abstract idea of manipulating data through mathematical relationships, which is similar to the computing formula discussed in Parker v. Flook, 437 U.S. 584 (1978), and the Arrhenius formula in Diamond v. Diehr, 450 U.S. 175 (1981). . . . [All of the claimed steps] are abstract mathematical concepts and algorithms that could be performed in the human mind, or by a human using a pen and paper, without need of any computer or other machine.

Moving to Step-Two of Alice, the PTAB wrote:

We find that the additional limitations … do not add significantly more to the abstract idea. … Particularly, claims 1, 7, and 13 recite well-understood, routine, and conventional elements (i.e., computer system having an application module, memory, processor, and computer readable storage medium) that enable the creation of a computerized model using a “generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional.”

Interesting aspect of the decision here is the notion that the spline adjustment could be done by a human with pen and paper.  The historical approach to do this well required the use of a spline tool (shown above).

In its decision the PTAB suggests (but does not hold directly) that the claims may be eligible if they had expressly (rather than implicitly) recited “a CAD model, a computer aided engineering (CAE) model, or a mechanical engineering design analysis for a product (e.g., car, airplane).” One way to think about the claim below is as a step for enabling model conversion (an abstract idea) but not the actual full conversion process (a concrete application rather than an abstract idea).

Rejected Claim 1 below:  

1. A method of joining imperfectly-matching Non-Uniform Rational Basis Splines (NURBS) patches to form a computerized model suitable for finite element analysis (FEA), said method comprising:

receiving, in a computer system having an application module installed thereon, definitions of a first NURBS patch and a second NURBS patch, the first and second NURBS patches to be joined together along a physical boundary defined in a first curve with a first set of control points, associated weights and a corresponding first plurality of knot-vector values in the first NURBS patch and defined in a second curve with a second set of control points, associated weights and a corresponding second plurality of knot-vector values in the second NURBS patch, wherein the first set of control points and said first plurality of knot-vector values are different from the second set of control points and said second plurality of knot-vector values;

normalizing said first plurality of knot-vector values such that the first curve’s parametric length equals the first curve’s physical length in the first NURBS patch;

normalizing said second plurality of knot-vector values such that the second curve’s parametric length equals the second curve’s physical length in the second NURBS patch;

determining a common curve as an overlapped section of the first and the second curves to represent the physical boundary;

adjusting the first and the second curves such that first and second projection points correspond to starting and end locations of the common curve, respectively;

designating one of the first and second curves having less number of control points along the common curve as a master curve, the other as a slave curve; and

determining a set of linear constraint equations for numerically connecting the first and second NURBS patches along the physical boundary by computing dependencies of the slave curve’s control points to the master curve’s control points,

whereby the first and second NURBS patches together with the set of linear constraint equations for the control points along the physical boundary enable a computerized model created therefrom suitable for finite element analysis.

Pedram Sameni at Patexia has an interesting new post titled Eighty Percent of IPR Filings are for Defensive Purposes.   As the title suggests, their study of the 6,580 IPR challenges filed 2012-2017, 80% challenge patents that were already being asserted in district court.

https://www.patexia.com/feed/patexia-chart-44-80-percent-of-ipr-filings-are-for-defensive-purposes-20171107

Blog by Joe Matal, Performing the Duties and Functions of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO (Originally Posted at the USPTO Director’s Blog)

Throughout history, independent inventors have transformed our lives with their innovative ideas and played a key role in the growth of the U.S. economy. Regardless of whether these ideas spawned small family businesses or large corporations, the work of small inventors is part of the fabric of American innovation. Think of names like Dupont, Ford, Kellogg, and Wright; and technology such as the telephone, the electric lightbulb, the steam engine, and the airplane. A disproportionate number of the most important technological advances started in the minds of small-scale, independent inventors, and their ideas have helped create new jobs, businesses, and even entire global industries. Today, the importance of small inventors and small business endures. According to the Small Business Administration (SBA), two out of three net new jobs in the U.S. are created by small businesses.

Our policies and processes throughout the USPTO are intended to drive entrepreneurship and innovation, and create a fair, accessible, and easy-to-use system for all inventors. As I explained in Tampa, there’s always room for improvement at the USPTO. Every aspect of our agency is continually being refined to better serve the patent and trademark owner community. Hearing from them helps us identify ways we can make that happen.

To that end, the USPTO has a wide variety of resources designed to help independent inventors. They can take advantage of our Patent Pro Bono Program and Pro Se Assistance Program, which help applicants who seek patents without the assistance of a lawyer.  Historically, USPTO has found that pro se applicants have substantially higher abandonment rates than do other applicants.  The agency has recently begun expanding its pro se assistance program in order to ensure that every pro se inventor who wants to can be assisted by this art unit, in which examiners play an active role in guiding the inventor through the prosecution process. The USPTO also offers its Track One program, which provides expedited patent prosecution, and does so with significant discounts for small, independent inventors. Our Inventors Assistance Center, which is staffed by former patent examiners, intellectual property specialists, and attorneys, can answer general questions concerning patent examining policy and procedure.

In addition, our four regional offices, located in each of the U.S. time zones, serve to make our services more readily available to local communities, and their unique industry and innovation needs, whether it be an event on the basics of patents and trademarks, or meeting directly with an examiner to discuss an application. Representatives from across the USPTO regularly meet with groups of inventors, startups, and businesses. I encourage you to browse our list of all upcoming events to find one that interests you.

I look forward to continuing the discussion with inventors to learn what we’re doing well, what we can do better, and how best to serve their needs. Only by working together will we achieve the best outcomes for our nation’s inventors and entrepreneurs, and help grow our economy, create new jobs, and build new industries.

by Dennis Crouch

Over the past several decades, the US has been at the forefront of a global campaign to raise the levels of intellectual property protections.  Intellectual property protections is now a key aspect of any bilateral or multilateral trade agreement. The focus has been primarily on Patents, Copyrights, Design Rights and Trademarks. Trade secrets do, however, come into play as well. TRIPS, for instance, includes a requirement that member nations protect trade secrets as well, although not at the level of “property rights.”

In the US, the Defend Trade Secrets Act of 2016 created a Federal cause of action for Trade Secret misappropriation.  An unstated goal of the new law was to place US trade negotiators in a strong position when encouraging other countries to ramp-up their trade secrecy regimes as well.

With that foundation solidified, a set of major industry lobbying groups (BIO, IPO, PhRMA, etc) have informed U.S. Trade Representative (USTR) that “the timing is right for a focused government-to-government initiative on global trade secret protection.”  The new letter particularly requests USTR to take the following four general actions to promote global trade secret protections.

1. Make trade secret protection a priority in trade negotiations;
2. Work with the private sector (industry) in determining needs and best best practices;
3. Support trade secrets at the WTO through a “Friends of Trade Secrets dialogue; and
4. Take a leadership role in promoting strong trade secrets protection.

Although many trade secret claims are business-to-business disputes, most of them stem have – at their heart – a former employee who left to form/join a competitor. And, unlike patent rights, trade secret rights are more directly owned by the employer rather than inventor or creator of the valuable information. This business-worker-competition difficulty is at the core of many policy arguments over trade secret protections.

Some of the potential changes that may be argued for: Many countries do not treat trade secrets as a “property” right but instead simply as a portion of unfair competition law; Many countries have no criminal laws (or only low penalties) against trade secret misappropriation; TRIPS allows for local consideration as to what constitutes “honest commercial practices” and thus allow for a lack of global uniformity in the definitions; Some countries have substantial state-sponsored industrial espionage operations that result in substantial misappropriation; Many countries have a lack of civil court infrastructure to allow for effective enforcement of trade secret rights.

It is unclear the extent that USTR will push for rights to keep trade-secrets from the governments.  On that note, the new NYTimes article is on point: China’s Technology Ambitions Could Upset the Global Trade Order.

= = = =

TRIPS Article 39.2 Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information:

(a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

(b) has commercial value because it is secret; and

(c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

RPost Comm. v. GoDaddy, LLC (Supreme Court 2017)

Like Oil States, the new petition for certiorari by RPost is a home-run swing — but will it connect?  The question presented:

Is patent ineligibility under 35 U.S.C. § 101, which Congress did not codify in 35 U.S.C. § 282(b), not a cognizable defense in a patent litigation?

This question stems from Prof. David Hricik’s 2012 Patently-O post on the topic where he similarly asked: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?

The idea here is that the defenses to patent infringement are expressly codified in 35 U.S.C. § 282(b).  Some failures of a patent can be raised in court as defenses to take-down an issued patent (such as lacking written description) while others simply cannot (such as improper revival or lack of best mode).

The petition here is timely – not only because so many patents are being invalidated under Section 101 – but also because the Supreme Court in SCA Hygiene (2017) reaffirmed the power of Section 282(b) — holding that laches was not a congnizable defense under the provision.  The petition argues:

The same type of statutory analysis [applied in SCA] must be applied here because no word or phrase in § 282(b) codifies ineligibility as a litigation defense.

Note here, that the same question was asked in Retirement Capital Access Mgm’t Co. v. U.S. Bancorp and Michelle Lee (cert denied 2015).  The Federal Circuit has refused to rule directly on this issue — instead affirming the lower-tribunal holdings without opinion (R.36).

A difficulty with the the whole approach is that the Supreme Court has already expressly refused to be bound by the statute in its eligibility analysis.

Top-side amicus briefs will be due in early December.

Links:

• David Hricik, Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid? (Aug. 2012)
• David Hricik, Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense (2013)
• Dennis Crouch, Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?  (Aug. 2012)

Documents:

• RPostPetition
• RetirementCapPetition
• RetirementCapAmicus
• RetirementCapResponse
• RetirementCapPTO
• RetirementCapReply

University of Maryland Biotech Institute v. Presens Precision Sensing (Fed. Cir. 2017)

In a non-precedential decision, the Federal Circuit has affirmed the USPTO handling of the inter partes reexamination of Maryland’s U.S. patent No. 6,673,532. The examiner rejected claims 1, 3– 6, 9–11, 13–16, 19, and 20 as obvious under 35 U.S.C. § 103.  That determination was affirmed by the PTAB and now by the Federal Circuit.

Note, the inter partes reexamination was filed in 2011 and at that time Maryland did not challenge the process on Eleventh Amendment Immunity grounds.  However, the same patent was challenged in an Inter Partes Review (IPR) in 2016 and the PTAB recently dismissed the petition on sovereign immunity grounds. [IPR2016-00208 28 – Termination – Dismissed After Institution].  In the appeal, Maryland did not raise the issue.

Here, the patent covers growing cells in a cultivation vessel that includes various LEDs and light sensors.   This process can be used to make several non-invasive observations, including oxygen level, optic density, pH, etc.

The prior art rejection combined two references.  One of which taught what was claimed – certain sensors within the cultivation vessels themselves – and the other reference disclosing the sensors “located in individual flow-through units outside the cultivation vessel.”  The second reference was needed though to complete the obviousness analysis.

On appeal, the patentee argued that combining the references was not proper because of the two different vessel configurations.   The Federal circuit rejected that approach – holding that PHOSITA is “not an automaton . . . limited to physically combining references.”  While a court may ask whether “substantial reconstruction and redesign” would be necessary to combine the references.  However, as KSR demands, “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”

Obviousness affirmed

= = = = =

As an aside, patent law may do well to move-on from the automaton language.  Nobody knows what an automaton really is — does someone have one they can show me? How does an automaton compare with contemporary AI?

In what appears to be a first, the Patent Trial & Appeal Board (PTAB) has requested briefing from Amacus Curie on the question of whether Tribal Ownership of a patent immunizes the patent from Inter Partes Review (IPR) challenge. The case is Mylan v. Saint Regis Mohawk Tribe, IPR2016-01127 et al.

The panel writes:

[W]e authorize briefing from any other amici curiae, which shall also be no more than 15 pages by December 1, 2017. To the extent possible, to avoid redundancy and in the interests of efficiency, we direct any interested amici who wish to present similar arguments to the Board to coordinate in their filing of a joint amicus brief. Arguments redundant to those already presented by the parties or other amici may not be considered.

[98 – Order granting Amicus briefs].  Interesting approach to what is essentially a backdoor administrative rule-making.

One of the struggles of the Subject Matter Eligibility test is understanding the definition of the legal term “abstract idea.” The Supreme Court has used the term “abstract” in many other areas of law – perhaps most pointedly in the area of standing and the requirement of a concrete, non-abstract harm.

In the 2016 internet law case of Spokeo v. Robins, the Supreme Court explained:

When we have used the adjective “concrete,” we have meant to convey the usual meaning of the term—“real,” and not “abstract.” . . . “Concrete” is not, however, necessarily synonymous with “tangible.” Although tangible injuries are perhaps easier to recognize, we have confirmed in many of our previous cases that intangible injuries can nevertheless be concrete.

The use of “abstract” here is strikingly similar to that used by the Supreme Court in its eligibility analysis.  A concrete harm (or invention) must be sufficiently real, but need not actually be a tangible harm. [Decision]

Spokeo is a ‘people search engine’ often used by potential employers.  They substantially screwed up Robins’ information and he sued — alleging willful failure to comply with the Fair Credit Reporting Act’s requirements.  The issue before the Supreme Court was whether the plaintiff could establish any concrete harm based upon the online errors.  After the Supreme Court clarified the standard, on remand the Ninth Circuit held that the reputational harm associated with false information was sufficiently real, concrete, and not abstract – even if not tangible.

Although Spokeo offers a parallel abstract-ness analysis, it doses not actually get us closer to a straightforward definition of the term.  What it may do, though is open the analysis to a wider set of precedent.

Press Release:

WASHINGTON – The Department of Commerce’s United States Patent and Trademark Office (USPTO) is initiating a two-year Diversion Pilot Program for patent and trademark practitioners. Implemented by the Office of Enrollment and Discipline (OED), the program aligns USPTO with the practices of more than 30 state attorney discipline systems. It will help OED accomplish its mission of protecting the public from practitioners who fail to comply with the USPTO’s standards for ethics and professionalism.

OED’s Diversion Pilot Program offers practitioners who engaged in minor misconduct the opportunity to avoid formal discipline by implementing specific remedial measures. The Diversion Pilot Program will be available to practitioners whose physical, mental, or emotional health issues (including substance or alcohol abuse) or law practice management issues resulted in minor misconduct and little, if any, harm to a client. In appropriate cases, a practitioner will be offered the opportunity to enter into a diversion agreement with the OED Director, which will require the practitioner to take affirmative steps to rectify the issue which led to the minor misconduct.

“We’re hopeful that this pilot program will align our agency with best practices established in other states while allowing practitioners a fair chance to rectify previous misconduct and allow them to move forward in a productive manner,” said Joseph Matal, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

The criteria for participation will initially be based upon criteria recommended by the American Bar Association. To participate in the Diversion Pilot Program, practitioners must not have not been publicly disciplined by the USPTO or another jurisdiction in the past three years, and must be willing and able to participate in the program. In addition, the conduct at issue must not (1) involve the misappropriation of funds or dishonesty, deceit, fraud or misrepresentation, (2) result in or likely result in substantial prejudice to a client or other person, (3) constitute a “serious crime,” as defined by 37 C.F.R. § 11.1; or (4) be part of a pattern of similar misconduct or be of the same nature as misconduct for which the practitioner has been disciplined within the past five years. Once it is determined that both the practitioner and misconduct at issue are eligible, other factors will be considered in determining whether diversion is appropriate.

OED is enthusiastic to join the over 30 state attorney discipline systems that have implemented diversion programs. OED expects that the diversion program will further its mission of protecting the public by strengthening the skills and abilities of individuals who practice before the USPTO.

by Dennis Crouch

The Federal Circuit’s decision in Two-Way Media is in some amount of tension with the court’s 2016 decision in Amdocs v. Openet Telecom.   In Amdocs, the court noted that the claims appeared problematic under Section 101 (abstract ideas), but that the architecture – as specifically described in the specification but more generically claimed – showed that the invention was actually a technological improvement.  In Two-Way Media, the court faced the same dilemma but arrived at the opposite conclusion — holding that although the specification described a technological improvement, the claims were written at too abstract a level to be patent eligible.

Note here that Judge Reyna dissented in Amdocs.  However, rather than accepting the Amdocs precedent, Reyna is now the author of Two-Way Media – a decision that does not cite Amdocs.  Wow.

Other cases in this intra-circuit-split include Smart Sys. Innovations, LLC v. Chicago Transit Auth.,(Fed. Cir. Oct. 18, 2017); Synopsys Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016); and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).   The chart below shows these results with the invalidity opinion in blue, and validity opinion in orange.

Now pending before the U.S. Supreme Court is Openet’s petition for writ of certiorari asking the following question:

To be patent eligible, a patent must claim “the means or method of producing a certain result, or effect, and not [the] result or effect produced.” Corning v. Burden, 56 U.S. 252, 267-68 (1854). This principle has driven this Court’s patentable subject matter jurisprudence for over 150 years, including most recently the “search for an inventive concept” described in the second step of the Alice/Mayo framework. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012)). Because a patent’s claims define the scope of the invention, this Court stated in both Alice and Mayo that this second step of the eligibility analysis turns on what is “in the claims.” The question presented is:

Whether the Federal Circuit erred by looking beyond the claims to the patent specification to assess patent eligibility

In the pending case, petition-stage briefs are in and the court is scheduled for conference later this month.

• 17-136-petition
• 17-136-BIO
• 17-136-Reply

I should note here that the patentee Amdocs disagrees with Openet’s characterization of what happened.  Rather, the patentee argues that “The Federal Circuit’s decision on patent eligibility thus rested not on material drawn willy-nilly from the specifications, but on the scope of the claims as construed in Amdocs I at Openet’s urging.”

Will the Supreme Court react to a Business Method Patent Held Valid?

The University College of London (UCL) Institute of Brand and Innovation Law and George Washington University’s Faculty of Law are holding their 3rd Conference on Patents in Telecoms and the Internet of Things, November 9-10 2017 in Washington D.C.  Join Professor Sir Robin Jacob (the Sir Hugh Laddie Chair of Intellectual Property at UCL Laws), Professor Marty Adelman, Dave Kappos, Judge Kathleen O’Malley, and many more.

Register: https://www.ucl.ac.uk/laws/patents-in-telecoms-2017/

by Dennis Crouch

The final group of amicus briefs were filed this past week in Oil States v. Greene’s Energy — This round supporting the Government’s position that Inter Partes Review (IPR) proceedings are consistent with the US Constitution.

As per usual, the briefs are largely divisible into two categories: (1) direct merits arguments focusing on congressional power to enact the IPR regime; and (2) policy briefs arguing that IPRs do important work.  I’ll note here that the focus of the policy briefs is on efficient and timely adjudication. I have not seen any of the briefs so far that recognize the third reality – that the PTAB is invaliding patents that would have been upheld by a court.  For some reason amicus consider it appropriate to identify court failures in efficiency but not to identify failures in the substantive decisionmaking.  The closest on-point is likely Apple’s Brief which promotes the “well-informed and correct” outcomes of the PTAB. 16-712bsacAppleInc.

Overall, the collection of briefs here is quite strong. The most compelling brief in my view is that filed by the well-known team of Duffy and Dabney on behalf of several groups, including the Internet Association. They write:

No decision by this Court has ever held unconstitutional a system of adjudication by an Executive Branch agency on the grounds that the system violates Article III or the Seventh Amendment. This case should not be the first.

Patents are a type of public franchise that Congress has subjected to Executive Branch determination since the founding of the Republic. …

Petitioner and its amici draw inapt comparisons between patent rights and fee simple grants in physical land, but even if patent rights could be analogized to land, the most appropriate analogy would be to leases in public lands, which are subject to administrative revocation. Like leases, patent rights are limited in time, subject to periodic payments to maintain the rights, revert to the public upon expiration, and have the attributes of personal property. Indeed, Petitioner and its amici rely on the statement in 35 U.S.C. § 261 conferring on patents the “attributes of personal property,” but if anything, that statute undermines Petitioner’s case because it strengthens the analogy between patents and leases.

16-712 bsac The Internet Association et al.

A second key brief in the set was filed by a group of law professors led by Professors Lemley (Stanford); Reilly (Kent); and Rai (Duke).  The group makes the argument that – as a creature of congressional statute rather than common or natural law – congress also has the full power to establish a system for revocation. 16-712, BSAC 72 Professors of Intellectual Property Law.  The idea behind these statements is to step around the Supreme Court’s Stern decision that expresses “skepticism about Congressional efforts to withdraw from Article III courts ‘any matter which, from its nature, is the subject of a suit at the common law, or in equity, or admiralty’ or ‘is made of the stuff of the traditional actions at common law tried by the courts at Westminster in 1789.'”  The law professor’s interpretation of these cases though is that rights whose source is statute (rather than common or natural law) can largely be further determined by Congress.  This argument skirts around prior discussions that have focused on the reality that patent cases were “law tried by the courts at Westminster in 1789.”

Adding to these legal and historical arguments is the second law professor brief – an interesting and important brief written by Professors Golden (Texas) and Lee (Fordham). 16-712 bsac Professors of Administrative Law.  An important contribution of the brief is the recognition that congress’s failure to immediately create an IPR regime back in 1779 should not be seen as preventing action today:

[At that time] Trial courts were better suited to fact-finding and evidence-taking regarding prior art than Congress or Cabinet officers. And like Britain’s Privy Council, which exercised its summary revocation power as late as 1779 and retained but did not exercise that power in the nineteenth century, Congress and Cabinet officers had other pressing responsibilities.

Golden’s Brief also side-steps the public rights debate – arguing that “any lingering concerns about encroachment on Article III judicial power are answered by the existence of a right to an appeal to the Federal Circuit that is de novo on questions of law and meaningful on questions of fact.”  See also, Prof. Hollaar, noting that the question presented is “misleading in important respects, including the inaccurate suggestion that Article III courts do not provide substantial oversight in inter partes reviews.”  16-712 bsac Professor Lee A. Hollaar; and from Intel, et al.: “At the time of the Constitution’s adoption, there was no established rule that only courts could invalidate patents.”  16-712bsacIntel.

Still, Golden and others argue that invalidating patents is a public rights question – and thus easily within Congressional power to control through administrative action.  On this point, however, the Auto Makers group (including BMW, Ford, GM, Mercedes, Toyota, VW, Volvo, and others), argue that this case is not an appropriate case for revisiting the public-rights doctrine — a project that would have significant and wide-ranging impact on administrative law in general. 16-712bsacAllianceofAutoMfrs.

Public Knowledge and EFF came together to file their brief with a serious pursuit of historical issues worth reading:

Pre-ratification practices in England, the colonies, and the early states consistently treat patents as a privilege granted as a matter of sovereign discretion, with the objective in granting patents being not merely to reward inventors but also to induce economic productivity to the benefit of the state and the public. And as matters of sovereign discretion, the patents of England, the colonies, and the states included conditions intended to advance economic and public interests—including, in many cases, conditions for automatic, non-judicial revocation.

EFF brief-oil-states.  Following this approach (although without the same historical research). Arris group and others argue that patent rights should not be considered Blackstonian Property.  16-712bsacArrisGroupEtc_.   Finally, on the history angle, the Dell & Facebook brief argues that the Privy Council, rather than Scire Facias,  revocation is “the closest historical analogue” to the IPR system. 16-712 bsac Dell.

Many of the briefs IPRs should be seen as the patent office correcting its own mistakes. See, GE’s brief, for example, 16-712 bsac General Electric Company; also, 16-712 bsac BSA The Software Alliance; 16-712 bsac Unified Patents Inc.; and 16-712 bsac SAP America, Inc., et al. Although not seriously questioned here, a the banking group Askeladden addes to the argument that IPR procedures are good enough to ‘statisfy the standards for the adjudication of public rights in non-Article III forums.” 16-712bsacAskeladdenLLC

On the policy side, AARP is seeking lower health-care prices for its members and has generally sided with policies that increase competition and decrease the power of patent rights. In its brief, AARP argues that IPRs are an effective tool for this goal. 16-712 bsac AARP.  I-MAK makes a parallel argument in its brief. 16-712 bsac I-MAK (“Unmerited secondary patents stifle generic competition and inflate drug prices.”). See also, 16-712bsacAAM; and  16-712 bsac America’s Health Insurance Plans;  16-712 bsac Mylan Pharmaceuticals Inc_ (“Mylan’s experiences with inter partes review highlight the pro-competitive nature of inter partes review.”). As simply middle-men in the world of commerce, the Retail Association argues that its members likewise need this somewhat more efficient mechanism for eliminating low-quality asserted patents. 16-712 bsac Retail Litigation Center; 16-712 bsac Volkwagen Group of America, Inc. (“IPR proceedings has been successful in providing a low-cost but accurate process for adjudicating patent validity.).  Adding on here, TSMC argues that IPR provide an important outlet for manufacturers to protect their stream of commerce in cases where declaratory judgment jurisdiction does not exist. 16-712bsacTaiwanSemiconductorManufacturingCo.

Following these policy arguments, the not-for-profit org KEI particularly explains how the top-side briefs incorrectly argue that the IPR system harms national innovation and wealth.  KEI’s point is irrefutable – allowing enforcement of no-invention patents doesn’t help anyone.  brief-oil-states KEI_amicus_Oil_States.

Overall, this is a powerful group of briefs that leave me believing that – in the end – the Supreme Court will leave the IPR regime in place and in power.

1. DDR Holdings, LLC v. Hotels.com, L.P., 2014 773 F.3d 1245 (Fed. Cir. 2014) (eligibility)
2. Ultramercial, Inc. v. Hulu, LLC, 2014 772 F.3d 709 (Fed. Cir. 2014) (eligibility)
3. Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (eligibility)
4. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (eligibility)
5. Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (means-plus-function)
6. OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (eligibility)
7. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (eligibility)
8. Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) (eligibility)
9. Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) (several issues, including means-plus-function)
10. In re Cuozzo Speed Technologies, LLC, 793 F.3d 1268 (Fed. Cir. 2015) (PTAB procedures; affirmed by SCOTUS)
11. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) (indefiniteness)
12. Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343 (Fed. Cir. 2015) (eligibility)

The list above provides the most cited Federal Circuit patent decisions that have been issued by the Court since January 1, 2014.  You’ll note that 8 of the top 12 are eligibility cases with three others essentially focusing on MPF/Indefiniteness issues.

MasterMine v. Microsoft (Fed. Cir. 2017)

On appeal here, the Federal Circuit has reversed a lower court indefiniteness finding — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus.  In my view, the decision here continues the Federal Circuit’s implicit rejection of the Supreme Court’s Nautilus decision.

I have reproduced a substantial portion of disputed claim 8 of U.S. Patent No. 7,945,850 below.  You’ll note the claim is directed to a “system” but then includes a number of limitations that appear to require action. Notably, at points the claim uses standard “adapted to” language (“reporting module … is adapted to … examine a schema”) but elsewhere seemingly requires actual actions (“wherein the reporting module … displays a list of the report … presents a set of user-selectable database fields …  receives from the user a selection … and generates a database query”).

In IPXL, the Federal Circuit rejected a similar claim – finding it indefinite under 35 U.S.C. 112 since it was  “unclear whether infringement . . . occurs when one creates a[n infringing] system, or whether infringement occurs when the user actually uses [the system in an infringing manner].”   The claim in IPXL likewise was directed to a “system” with certain input means, but then required that “the user uses the input means” to accomplish some result.

The district court relied upon IPXL in holding MasterMine claim was directed to an apparatus, but required a series of steps to be performed — and, as a result was indefinite.

On appeal, the Federal Circuit rejected the district court’s indefiniteness analysis – holding instead that “these claims are simply apparatus claims with proper functional language.”  In distinguishing IPXL, the court writes:

Though claim 8 includes active verbs—presents, receives, and generates—these verbs represent permissible functional language used to describe capabilities of the “reporting module.” . . . These claims are also distinguishable from those at issue in IPXL Holdings and Katz, as the claims here do not claim activities performed by the user.

In reaching the decision here, the court cited three additional post-IPXL decisions with similar results: MEC, HTC, and UltimatePointer. As here, the court found in those decisions that the recited verb-forms should be read as capability limitations rather than requirements for action.

Although the Supreme Court did not particularly address the mixed-claim-type issue in Nautilus (2014)(a post-IPXL decision) the court lowered the standard for invalidating a claim on indefiniteness grounds.  Prior to Nautilus, claims would only be invalidated if the the claim scope was “insolubly ambiguous”; now, claims are invalid if they fail to define the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014).  A major failing of the decision here (as well as the prior UltimatePointer decision) is to review the issue in light of Nautilus.

Disputed Claim 8:

8. A system comprising:

a database adapted to store customer relationship management (CRM) records containing CRM data;

a programmable processor adapted to execute a CRM software application and a spreadsheet software application;

a reporting module installed within the CRM software application …

wherein the reporting module … is adapted to … examine a schema …

wherein the reporting module … displays a list of the report …

wherein the reporting module … presents a set of user-selectable database fields …  receives from the user a selection … and generates a database query …

wherein the reporting module invokes the spreadsheet software …

wherein, in response, the spreadsheet software application generates the pivot table …

Note — the federal circuit also affirmed a narrow claim construction.  On remand, the district court will need to determine whether the newly validated claims are infringed.

Query: Is a state actor (let’s say Alabama) able to enforce its trademark rights to the same extent as a non-governmental actor? Or does the First Amendment place additional restrictions on its behavior?

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will hold its first ever “Ask Me Anything” (AMA) on Reddit. Every October since 2011, the USPTO has shared some of the weird and wonderful intellectual property found in the deepest and darkest corners of our 200+ year old archives. This Halloween, join the agency’s social media team for an AMA all about #CreepyIP — from how it began, to the magic of searching for old patents and trademarks, to the types of invention artwork that give us nightmares.

WHO:              The United States Patent and Trademark Office
WHAT:           Reddit “Ask Me Anything” Celebrating Creepy IP
WHEN:          Tuesday, October 31, 2017 9:30 AM ET-11:00 AM ET
WHERE:         Reddit (https://www.reddit.com/r/IAmA/)

As part of my patent law class every year I hold a moot court competition. This year we are doing a mock-appeal based upon Judge Huff’s decision in Natural Alternatives International, Inc. v. Creative Compounds, LLC, 2017 WL 3877808 (S.D. Cal. Sept 5, 2017) [case file link].

In her decision, Judge Huff granted Plaintiffs Rule 12(c) motions for judgment on the pleadings – ruling that all claims of the five asserted patents were invalid for claiming ineligible subject matter under 35 U.S.C. § 101.

A few of the claims at issue:

34. A human dietary supplement for increasing human muscle tissue strength comprising

a mixture of creatine, a carbohydrate and free amino acid beta-alanine that is not part of a dipeptide, polypeptide or an oligopeptide,

wherein the human dietary supplement does not contain a free amino acid L-histidine,

wherein the free amino acid beta-alanine is in an amount that is from 0.4 g to 16.0 g per daily dose,

wherein the amount increases the muscle tissue strength in the human, and

wherein the human dietary supplement is formulated for one or more doses per day for at least 14 days.

Claim 34 of the U.S. Patent No. RE45,947.

6. A composition, comprising:

glycine; and

a) an amino acid selected from the group consisting of a beta-alanine, an ester of a beta-alanine, and an amide of a beta-alanine, or

b) a di-peptide selected from the group consisting of a beta-alanine di-peptide and a beta-alanylhistidine di-peptide;

wherein the composition is a dietary supplement or a sports drink; and

wherein the dietary supplement or sports drink is a supplement for humans.

Claim 6 of U.S. Patent No. 7,504,376 (Note, claim 6 is a dependent claim, and I have reformulated it in independent form by incorporating elements of the parent claims).

1. A method of increasing anaerobic working capacity in a human subject, the method comprising:

a) providing to the human subject an amount of an amino acid to blood or blood plasma effective to increase beta-alanylhistidine dipeptide synthesis in the tissue, wherein said amino acid is at least one of:

i) beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide;

ii) an ester of beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide; or

iii) an amide of beta-alanine that is not part of a dipeptide, polypeptide or oligopeptide; and

b) exposing the tissue to the blood or blood plasma, whereby the concentration of beta-alanylhistidine is increased in the tissue,
wherein the amino acid is provided through a dietary supplement.

Claim 1 of U.S. Patent No. 8,470,865.

Important in her decision is that the approach to eligibility of products-of-nature is: Myriad in light of Mayo.  How would you argue this case?