by Dennis Crouch

If affirmances by the Patent Trial and Appeal Board (PTAB) are any guide, patent examiners appear to now have a good handle on applying the PTAB eligibility examination guidance.  I looked at  PTAB patent eligibility decisions from the past month and found that examiner eligibility rejections were affirmed in 92% of cases (55 of 60 decisions). There were also five cases where the PTAB added eligibility as a new ground for rejection.

92% affirmance for eligibility issues is quite high compared to other issues being appealed.  So far in FY2021, the PTAB is fully affirming examiner decisions in only 56% of cases and partially affirming in an addition 10%.

The PTAB’s general approach is to follow the USPTO’s eligibility examination guidance and then supplement that approach with Federal Circuit and Supreme Court cases.  Most often, the PTAB is able to draw a direct analogy with a prior appellate decision.

The following are three recent affirmances:

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Ex Parte Ausubel, Appeal No. 2021-000765, 2021 WL 2982136 (PTAB)

Lawrence Ausubel is a Professor of Economics at Maryland and has published dozens of articles on efficient auction design and holds several patents. His pending patent application claims a computer-implemented system for allowing smaller-quantity intra-round bidding during a “clock auction.”

The examiner rejected the claims as directed to a fundamental economic practice rather than a practical invention and that, absent the computer limitations, the method is a mental process (with pencil + paper). On appeal though the PTAB affirmed:

Hedging risk is a fundamental economic practice. … Here, claim 1 seeks to hedge risk in a clock auction by using intra-round bids with generic computers and components that perform generic data processing of sending and receiving data to auction securities, contracts, commodities, spectra, and other items.

The Board’s analysis directly analogized to Bilski’s patent application which the Supreme Court rejected.

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Ex parte Knoll, Appeal No. 2021-000035, 2021 WL 3015118 (PTAB) (Philips Medizin)

The invention here is directed to a method of approximating a patient’s pulse-wave using the pressure signal from a blood pressure cuff.  The claims require receipt of repeated measurement of pulse-curves as the clamp pressure changes.  Those curves are weighted and combined to create the approximated pulse wave.  The examiner rejected the claims as directed toward ineligible abstract idea.   On appeal, the PTAB has affirmed, finding the claims directed to a series of mathematical calculations based upon selected information.  Further, the fact that data is received from a blood-pressure cuff does not transform the idea into a patent eligible practical application.

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Ex Parte Tazono, Appeal No. 2021-000816, 2021 WL 3015120 (PTAB) (Alpine Electronics).

Tazano’s application is directed to methods of acquiring and presenting information about upcoming events.  The PTAB affirmed the examiner rejection — finding the claims directed to the abstract idea of organizing human activities.  Further, the claims rely only upon generic computer technology and do not “recite an improvement to a particular computer technology. . . . All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results.”

by Dennis Crouch

BOT M8 v. Sony (Fed. Cir. 2021)

Pleading Standards: The starting point of a civil lawsuit is the filing of the complaint that makes a claim for relief.  FRCP 3.  In order to properly state a claim, the rules require “a short and plain statement of the claim showing that the pleader is entitled to relief.” FRCP 8.  For many years, the rules included an Appendix of Form Complaints deemed legally sufficient to satisfy R. 8. Form 18 focused on patent infringement and included a bare-bones set of allegations that (1) the plaintiff owns a particular patent and (2) the defendant has infringed that patent. (Image of Form 18 below).   In general, Form 18 was plaintiff friendly, making it easy to file a patent infringement lawsuit without providing any details beyond the patent number at issue.  That approach was in place for a number of years and only began to crumble with the Supreme Court’s decision in  Bell v. Twombly, 550 U.S. 544 (2007), followed by Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Those cases interpreted the “short and plain statement” requirement as requiring “facial plausibility” that can be satisfied by the inclusion of factual allegations that lead to a reasonable inference of liability.  Still, even after Iqbal, the form-pleading-sufficiency rule was still in place in a way that forestalled complete implementation of the Iqbal regime. In 2015, Form 18 was removed and the transformation complete.

Element-by-Element Claim Analysis in Pleadings: Post-Iqbal, the courts have struggled with line-drawing-what quality of factual allegations are sufficient to survive the plausibility test.  In patent cases, one question is whether then plaintiff needs to provide an element-by-element analysis of how the accused activity practices each element of the asserted claims.   Here, the Federal Circuit holds (again) that element-by-element analysis is not a pleading requirement:

To the extent this district court and others have adopted a blanket element-by-element pleading standard for patent infringement, that approach is unsupported and goes beyond the standard the Supreme Court articulated in Iqbal and Twombly.

Slip Op.

In Bot M8 v. Sony, the district court dismissed Bot M8’s infringement claims against Sony’s PlayStation 4 (PS4). (Dismissing claims stemming from four patents).   On appeal, the Federal Circuit has reversed-in-part.  While plausibility is required, the court repeated its prior statement that the plaintiff “need not prove its case at the pleading stage.” Bill of Lading (Fed. Cir. 2012).

Regarding infringement, the court found that a complaint may be sufficient without an element-by-element infringement analysis. “A plaintiff is not required to plead infringement on an element-by-element basis.”  Rather, the focus of complaint sufficiency is notice — a complaint needs to provide fair notice of what activities by the defendant constitute infringement.

The court then tried to draw some lines:

• Insufficient: merely alleging an entitlement to relief (as was done in Form 18)
• Insufficient: reciting claim elements and “merely concluding that the accused product has those elements.”
• Sufficient: providing factual allegations that, when taken as true, articulate why it is plausible that the accused product infringes.

Again, the focus is on fair notice to the defendant and “specific facts are not necessary” when the general allegations are sufficient.

Although the district court required too much by demanding element-by-element analysis in the complaint, the Federal Circuit still affirmed the dismissal with regard to two of the four patents.  For those two patents, the court concluded that allegations found in the complaint actually disprove infringement.  The complaint “contains too much rather than too little, to the point that Bot M8 has essentially pleaded itself out of court.”  In particular, Bot M8 alleges that the “authentication program” is stored on the motherboard, but the claims require the program to be stored on a separate board. “That allegation renders Bot M8’s infringement claim not even possible, much less plausible. While claim 1 requires that the game program and authentication program be stored together, separately from the motherboard, the [complaint] alleges that the authentication program is located on the PS4 motherboard itself.”

The conclusion here warns against a “kitchen sink” approach to infringement assertions within a patent complaint. In particular, patentees will need to be cautious when alleging infringement of alternative claim language such as below.

1. A system comprising an authentication program stored in a first memory and a motherboard…
2. The system of claim 1 where the first memory is located on the motherboard.
3. The system of claim 1 where the first memory is not located on the motherboard.

Barring unusual claim construction, an accused system cannot infringe both claims 2 and 3 since they are claimed in the alternative.  It turns out that you might not know at the time of filing the exact location of the motherboard.  Although some amount of pre-filing investigation is required, the rules allow for plaintiffs to rely upon  potential discoverable evidence when making the complaint. In Bot M8, plaintiff’s counsel argued that it “had not previously reverse engineered the PS4 to support the prior pleadings because ‘jailbreaking’ the PS4 is illegal under the Digital Millennium Copyright Act (“DMCA”) and other anti-hacking statutes.”  In this particular case, the district court did not rule on the merits of the of the excuse, but ruled that that the concern had been raised too late in the litigation to be viable. “Because Bot M8 did not raise any concerns about its ability to reverse engineer the PS4 until after the district court issued its decision on Sony’s motion to dismiss, the court found that Bot M8 was not diligent.”

An easy solution here is to “plead in the alternative.” The FRCP permits parties to set out two different statements of a claim “alternatively or hypothetically . . . A party may state as many separate claims or defenses as it has, regardless of consistency.” FRCP 8(d).  One difficulty though is that each alternative pathway must meet the plausibility standard. The difficulty for Bot M8 is that it did not plead in the alternative. “Notably, Bot M8’s allegations were not pled in the alternative.” Slip Op. at Note 3.  Rather, Bot M8 told one story that effectively disproved infringement for two of the asserted patents.

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Claim 1 of another asserted patent had also been determined invalid as ineligible. On appeal, the Federal Circuit affirmed that the asserted claim 1 “recites the abstract idea of increasing or decreasing the risk-to-reward ratio, or more broadly the difficulty, of a multiplayer game based upon previous aggregate results. But the claim leaves open how to accomplish this, and the specification provides hardly any more direction.”  Slip Op. (quoting district court and affirming on the same reasoning).

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• US 8,078,540: Dismissal affirmed, claims contradict factual assertions in claim (memory location)
• US 8,095,990: Dismissal affirmed, claims contradict factual assertions in claim (memory location)
• US 7,664,988: Dismissal reversed, element-by-element infringement analysis not required in the complaint.
• US 8,112,670: Dismissal reversed, element-by-element infringement analysis not required in the complaint.
• US 7,338,363: Dismissal affirmed, claims lack eligibility.

Interesting pending civil action in Grupo Bimbo v. Hirshfeld (E.D.Va. 2021).

The Mexican company Grupo Bimbo makes more bread than any other company — including Wonder Bread and Sara Lee brands in the USA.  Bimbo is attempting to register a mark for its “ARTESANO” line of bread — after apparently selling more than $1 billion in pre-packaged sliced bread product.

The PTO found that “Artisan Bread” is a generic term, and that consumers will translate the Spanish word “ARTESANO” to its English equivalent when purchasing.

In this appeal, the resemblance between ARTESANO and the word “Artisan” is so evident in both sound and appearance that the average American consumer will automatically translate ARTESANO and equate ARTESANO and the word “artisan.”

Bimbo has now filed a civil action under 15 U.S.C. 1071(b) seeking a declaration from the District Court that its mark is not generic but instead is distinctive.

Bimbo Complaint.

by Dennis Crouch

Timberland has been selling its iconic boots back in 1973 – almost 50 years ago.  Actually, at the time the company name was Abington Shoes, but quickly changed its name to Timberland Boot because of the popularity.  Timberland did not patent or register a copyright the design, and the market it rife with copycat boots.

Over the past several years, Timberland has been attempting to register the shape of the boots as protectable trade dress. However, the USPTO’s Trademark Trial & Appeal Board (TTAB) rejected the application, finding that the the company had failed to demonstrate that the boot shape had acquired secondary meaning in the eyes of consumers.  The examiner had also rejected the trade dress registration as  improperly functional, but the TTAB did not reach that issue.

In a new lawsuit, Timberland has asked a district court judge to overturn these rulings and find that the trade dress is distinctive and registrable.

Complaint: TBL Registering TM on Timberlands

Should Timberland be permitted to register a trademark (Trade Dress) on its "iconic timberland boot"??

Lawsuit pending in TBL Licensing v. Hirshfeld (EDVA).

Read the complaint: https://t.co/GOS65fmvK8 pic.twitter.com/sldUCc5eHU

— Dennis Crouch (@patentlyo) July 8, 2021

In its brief, Timberland provides examples of other shoe shape trade dress that have been registered, including the classic low-top Converse sneakers.

DataCloud Techs v. SquareSpace (D.Del. 2021)

Eligibility and indefiniteness are both judged primarily as questions of law, although both can occasionally depend upon some underlying factual finding.  And, even when questions of fact are at issue, it is a judge (rather than a jury) that hears the evidence and determines the facts.

In recent years, eligibility determinations have moved forward in the litigation context and become a true “threshold test.”  See Bilski v. Kappos, 561 U.S. 593 (2010).   Often, eligibility is the first substantive determination in patent litigation and it is typically decided either on a motion to dismiss (12(b)(6)) or motion on the pleadings (12(c)).

With all the parallels, it is not surprising that some litigants are also suggesting that indefiniteness be decided at the pleadings stage.

The recent motion for dismissal by SquareSpace is on point — arguing that DataCloud’s patent claims indefinite functional limitations parallel to those rejected by the Supreme Court in O’Reilly v. Morse. [Brief in Support of Motion to Dismiss].

The brief walks through Supreme Court history in indefiniteness associated with functional claim limitations.

• O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854)
• Corning v. Burden, 56 U.S. (15 How.) 252 (1854)
• Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1864)
• Fuller v. Yentzer, 94 U.S. 288 (1877)
• Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68 (1895)
• Westinghouse v. Boyden Power Brake Co., 170 U.S. 537 (1898)
• Busch v. Jones, 184 U.S. 598 (1902)
• Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928)
• General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938)
• United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942)
• Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946)
• Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271 (1949) (“Graver I”)

SquareSpace filed its motion to dismiss in May and DataCloud has recently filed an amended complaint and has argued that the amended complaint renders the motion “a nullity.”  The new complaint adds three additional patents and also includes an allegation that attempts to skirt the indefiniteness question:

A person skilled in the art … would understand that each of the limitations and/or steps in the claims … are defined by what they do (not what they are). Even if any limitation and/or step of the claims is “functional”— and none are—the teachings of the … Patent provides to any skilled artisan sufficient structure, material, or acts necessary to perform the recited function or provides information sufficiently identifying a finite group of structures, materials, or acts necessary to perform the recited function that were well known to skilled artisans at the priority date.

Amended Complaint.

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Lawyers on the brief include James Dabney and Sue Robinson (as well as others).

by Dennis Crouch

VoIP-Pal.com, Inc. v. Apple, Inc., No. 20-1809 (Supreme Court 2021)

VoIP-Pal sued Apple for infringing its U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549.  Apple filed four petitions for for inter partes review, but all four were denied by the PTAB. Judge Koh then dismissed the infringement case in Apple’s favor–finding that all asserted claims were directed to ineligible subject matter.  On appeal, the Federal Circuit affirmed without opinion (R.36). Now, VoIP-Pal has petitioned for writ of certiorari.  The case is now part of a trio of eligibility cases pending before the Court. See American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891; iLife Technologies, Inc. v. Nintendo of America, Inc., No. 20-1760.

The patents here are all directed routing calls using Voice Over Internet Protocol (VoIP) communications.  The basic idea is to rout calls based upon a user identification, rather than using key parts of a telephone number (such as country codes; area codes; and other signals).  Once the recipient ID is entered, the system would look-up their location and route the communications accordingly.   Judge Koh found the claims were directed to the abstract idea of “Routing a communication based on characteristics of the participants.”  Judge Koh did not attempt to define “abstract idea,” but noted some hallmarks found in VoIP’s claims:

Claim 1 is directed to an abstract idea: (a) the claimed method discloses only generalized steps drafted in purely functional terms; (b) it is analogous to well-known, longstanding practices; and (c) it does not recite an improvement in computer functionality.

In its petition for writ of certiorari, VoIP-Pal asks three questions:

1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. §101?

2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

3. Is it improper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?

[Petition] The 112 discussion is basically an argument that any problems with functional claim limitations should be dealt with under §112 rather than §101.

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The chart above shows the number of U.S. patents issued each year that include the phrase “VoIP” somewhere in the document.  Folks were already doing some packet-switched voice communications before the 2000’s, but typically used a different name.

Ex parte Callewaert, APPEAL 2019-005598 (Patent Tr. & App. Bd. Feb. 25, 2021).

Following an obviousness rejection, applicant relied upon an example in the specification to help prove an unexpected result (that the living cell would create certain “unnatural glycan structures”).  The PTAB rejected the argument — finding that the example was written in the present tense and therefore assumed to be prophetic and therefore “does not provide the factual evidence needed to support unexpected results.” (emphasis in original).  It appears in this case, the PTAB treated the prophetic example as merely an argument. 

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Ex Parte Cigan, APPEAL 2020-001230 (Patent Tr. & App. Bd. Sept. 14, 2020)

Cigan provides a minor counterpoint to Callewaert. The patent applicant argued that the prior art examples should be disregarded as merely a prophetic example.  The PTAB rejected the call and instead presumed that the prior art teachings were enabling.  See In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) (holding that prophetic examples in the prior art are still presumed to be enabling).

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Ex Parte Harriman, APPEAL 2020-004459 (Patent Tr. & App. Bd. Feb. 10, 2021)

In Harriman, the PTAB reversed an examiner’s enablement and written description rejections, holding that the prophetic examples of an immunoglobulin light chain were sufficient.  The claims are directed to a genetically modified (transgenic) chicken grows human immunoglobulin.  (owned by Ligand)

by Dennis Crouch

In re Samsung Electronics Co., LTD (Fed. Cir. 2021)

The Federal Circuit has again granted mandamus and ordered Judge Albright to transfer two cases case out of his W.D.Tex. court to a more convenient forum (N.D.Cal.).

The underlying actions were filed by a patent holding company known as Ikorongo Texas LLC against Samsung and LG Electronics. As explained below, the owners of Ikorongo Texas formed the company as an attempt to solidify venue in W.D.Texas and avoid the case being transferred for inconvenient forum.

Ikorongo Texas is owned by five-individuals led by patent agents Hugh Svendsen & Sarah Svendsen.  The five also own a separate company known as Ikorongo Technology LLC.  The asserted patents were previously fully owned by Ikorongo Tech. However, before suing, Ikorongo Tech geographically divided the patent rights. In particular, the company assigned all rights in the patents relating to the WDTX back to the five-individuals.  At that point, the five individuals owned all rights to sue and collect damages associated with infringement occurring in the “specific counties” covered by WDTX.  The five individuals then created the new company Ikorongo Texas and assigned their WDTX rights to the company.  Ikorongo Texas then sued Samsung and LGE.  The following day, Ikorongo Texas amended its complaint to also add Ikorongo Tech as a co-plaintiff so that collectively they could seek damages for the full USA.  Ikorongo Texas is a Texas LLC (corporate registration in Texas), but its owners and managers all reside in North Carolina.

The defendants in the lawsuit admitted that venue was proper in WDTX, even under the high bar for proper venue created by 28 U.S.C. § 1400(b).  But, the defendants argued that N.D.Cal. is a better, more convenient venue, and requested transfer. Even if venue is proper, a defendant may still complain that that the forum is inconvenient and request a change of venue. The statute:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.

28 U.S.C. § 1404(a). A court has discretion as to whether to transfer a case, but should look to the convenience of the parties, convenience of the witness, and also the interest of justice. In addition, the court may only transfer a case to a district where venue and personal jurisdiction are proper (“where it might have been brought”).

Judge Albright refused to transfer the case to California — holding that Ikorongo Texas would not have had proper venue to sue in the state. In patent cases venue is only proper against a US corporate defendant if either (1) the defendant is incorporated within the state or (2) the infringement occurred within the district and the defendant has a regular place of business in the district.   The defendants here are incorporated in NY & Delaware, and the infringement alleged by Ikorongo Texas was only in WDTX. Thus, no proper venue.

On mandamus, the Federal Circuit has rejected that analysis — rejecting this “collusive” attempt to avoid the transfer on convenience grounds.

Ikorongo Texas is plainly recent, ephemeral, and artificial—just the sort of maneuver in anticipation of litigation that has been routinely rejected. . . . [T]he district court disregarded the pre-litigation acts by Ikorongo Tech and Ikorongo Texas aimed at manipulating venue.

Slip Op. The court then disregarded the creation geographic division and ordered transfer (after also finding that the convenience factors clearly weigh in favor of transfer and refusing to transfer would be an abuse of discretion).

The decision here has a limiting feature–that Ikorongo Texas was formed for the sole purpose of manipulating venue.  I wonder what the courts would say about Apple closing its store in E.D.Tex.

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I’ll note also that the case might have turned out differently if Ikorongo Tech had not been added to the case.

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The decision does not rely in direct on-point precedent, but instead relies heavily upon precedent in in the context of subject matter diversity jurisdiction. Miller & Lux, Inc. v. E. Side Canal & Irrigation Co., 211 U.S. 293, 305–06 (1908). In that case, a California corporation had formed a separate Nevada corporation and transferred property rights to the Nevada Corp in order to create diversity jurisdiction. The Supreme Court said No.  One problem with this analogy is that there is a particular statute barring collusive incorporation in order to create diversity jurisdiction:

A district court shall not have jurisdiction of a civil action in which any party, by assignment or otherwise, has been improperly or collusively made or joined to invoke the jurisdiction of such court.

28 U.S.C. § 1359.  Although also statutory, diversity jurisdiction has an express constitutional basis whereas convenient-forum is entirely statutory.  That distinction has historically offered courts to – at times – distinguish between the two in their analysis and interpretation. The opinion does not delve into why the linkage is appropriate here.

by Dennis Crouch

Many patent applications are not fully reduced-to-practice by the time the patent application is filed. Although reduction-to-practice is a required element of invention, the Courts and Patent Office have long permitted the filing of a patent application to constructively satisfy the RTP requirement. Still, the application must fully satisfy the disclosure requirements of 35 U.S.C. 112(a), namely written description, enablement, and best mode.

A patent specification will typically include a series of examples, embodiments, use-cases and/or experimental results. In this post, I’ll refer to these collectively as “examples.”  One way of categorizing the examples is to divide between actual  “working examples” and predicted “prophetic examples.”  As you might guess, working examples are typically more compelling and indicative that the invention will actually work as claimed. But, prophetic examples also have their use and are absolutely permissible.  Although I have not measured this, I expect that the vast majority of patentees rely on prophetic examples to some extent in order to expand the scope and depth of their disclosure.  Thus, even if the patentee has reduced the invention to practice and explained the RTP in a working example, the specification may also provide a set of prophetic examples with differing arrangements, elements, and outcomes. Because of their differences, the courts and USPTO have called on patent applicants to take care in distinguishing between the two in their patent applications.

My definition of prophetic example is broad: I’ll pause here to recognize that my definition of prophetic examples is broad.  Traditionally, many have focused the “prophetic example” doctrines only on reports of experimental results that are typically found in chemistry and biology related patents. In her Prophetic Patents article, Professor Janet Freilich primarily limited her analysis to “experiments that report protocols that were not actually conducted and describe results that are made up, or prophesized.”  Using that definition and an automated search, Freilich found about 50% of chem/bio patents include prophetic examples. The MPEP has a broader definition that more closely parallels mine: “A prophetic example describes an embodiment of the invention based on predicted results rather than work actually conducted or results actually achieved.” MPEP 2164.02.  Basically, if you are describing something that has not been actually reduced to practice, it is a prophetic example.

The USPTO has published a new notice to patent applicants with the same reminder cautioning applicants to distinguish between working and prophetic examples:

The USPTO is reminding patent applicants of their duty to ensure that patent applications are written in a manner that clearly distinguishes prophetic examples with predicted experimental results from working examples with actual experimental results. Prophetic examples, also called paper examples, are typically used in a patent application to describe reasonably expected future or anticipated results. Prophetic examples describe experiments that have not in fact been performed. Rather, they are presented in a manner that forecasts simulated or predicted results. In contrast, working examples correspond to work performed or experiments conducted that yielded actual results.

Notice: Properly Presenting Prophetic and Working Examples in a Patent Application, PTO-P-2021-0020 (Fed. Reg. July 1, 2021) (“Notice”).  The notice indicates that examiners generally do not question disclosed test results unless there is a reasonable basis to do so.  But, prophetic examples that fail a reasonableness test will be rejected for insufficient disclosure (enablement and/or written description).

In addition, applications that include prophetic examples should make clear whenever the example is prophetic.  Otherwise, the application may be deemed to include a misleading statement in violation of the applicant’s “duty of candor and good faith in dealing with the Office.” 37 C.F.R. 1.56.

QUESTION for PATENT DRAFTERS: When you describe various embodiments in your patent application, do you tell the PTO which ones are working-examples (actually reduced to practice) and which ones are prophetic?

— Dennis Crouch (@patentlyo) June 30, 2021

One way to disclose prophetic examples is to expressly label them as “Prophetic Examples.” “It is a best practice to label examples as prophetic or otherwise separate them from working examples to avoid ambiguities.” Notice. The PTO has also deemed it appropriate to use future-tense language in describing prophetic examples and past tense for working examples. “When drafting a patent application, care must be taken to ensure the proper tense is employed to describe experiments and test results so readers can readily distinguish between actual results and predicted results.”

The USPTO Notice focuses on prophetic examples stemming from experimental results, and thus remains to be seen whether the requirements will be practically extended to situations involving prophetic embodiments and use-cases presented without any experimental results. One approach for patent applicants is to write everything as if it is a prophetic example.

The request must be filed within 30-days of the PTAB’s final written decision or rehearing decision. The Agency has indicated that a request for review by the USpTO Director will be considered a request for rehearing under 37 C.F.R. 90.3(b) — that means that no appeal to the Federal Circuit will be due until after the Director acts on the request. In the short-term, the Office is not charging a fee for the request, but a fee will be added.

Request vs Petition: I’m not sure why, but the PTO is not identifying the Request for Review as a Petition for Review.

Pop-Panels and Ex Parte Proceedings: The Supreme Court identified inter partes review as demanding a process for PTO Director Review.  However, it is clear that this extends to Post-Grant and Covered-Business-Method Reviews.  It is unclear though whether it will extend to reexaminations or ordinary ex parte examination. I’m sure that the Director will still receive those petitions this month.  The Office created Precedential Opinion Panels (POP) as a mechanism for giving the PTO Director more direct control over PTAB precedent. The Agency has indicated that the POP system remains in place for now, but is could be eliminated in favor of the simpler system of director review.

Links:

• USPTO Implementation Announcement
• USPTO Arthrex FAQ

Webinar: PTO will host a webinar Thursday, July 1 at 10 a.m. ET on implementation. [LINK]