PATENT LAW BLOG

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  Marin Cionca9/15/2016 9:47:39 PM

  Patent Law Alert: Federal Circuit Opens Door for More Software Patents

  Patent Law Alert: Federal Circuit Opens Door for More Software Patents

  INTRODUCTION

  On September 13, 2016, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided another case, McRO (d.b.a. Planet Blue) v. Bandai Namco Games (“Planet Blue”) involving two software patents covering the same technology. It is another post-Alice case in a series of cases signaling that the Federal Circuit is determined to continue to narrow the scope of Alice (Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)). This is good news for inventors, patent applicants and patent owners in the software industry. Particular to the Planet Blue case is what appears to be an opening for software inventions which do not necessarily improve the computer technology “itself,” but instead improve other technological processes, for example, by automating them using software.

  BACKGROUND

  First, on December 5, 2014, in DDR Holdings, LLC v. Hotels.com, L.P., the Federal Circuit found that “systems and methods of generating a composite [hybrid] web page that combines certain visual elements of a “host” website with content of a third-party merchant” were not an abstract idea and were thus patentable subject matter. That was because the claimed solution was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”

  Next, on May 12, 2016, in ENFISH, LLC v. MICROSOFT Corp. et al., the Federal Circuit did not find a computer database model using a “self-referential table” an abstract idea, and thus, it was patentable subject matter. The court concluded that the disputed claims were “directed to a specific improvement to the way computers operate, embodied in the self-referential table.”

  On June 27, 2016, In BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC, the Federal Circuit decided that it was not an abstract idea to provide a process for filtering content over the Internet by placing the filtering software on the server instead of the client computer and allowing customization by each user, after login, of the filtering software. The court appeared to see the claimed invention an improvement of the computer technology itself, even though it was accomplished with conventional steps or well-known computer technology.

  It should be noted that all of the above cases appear to have a common thread, that is improvement in computer technology.

  PLANET BLUE CASE

  The Planet Blue case involved two patents directed to 3-D animation technology using software and computers. The patents relate to automating part of a preexisting 3-D animation method. “As explained in the background of the patents, the admitted prior art method uses multiple 3-D models of a character’s face to depict various facial expressions made during speech. To animate the character as it speaks, the [prior art] method morphs the character’s expression between the models.” Using the prior art method, animators, using a computer, manually determined the appropriate morph weight sets for each of the established key-frames based on the phoneme timings in a timed transcript. “Because the pronounced phoneme and drawn keyframe corresponded in time, this prior art process synchronized the lips and facial expression of the 3-D character.”

  The claimed invention automates a 3-D animator’s tasks, specifically, determining when to set keyframes and setting those keyframes, by using rules that are applied to the timed transcript to determine the morph weight outputs. The claimed process produces more accurate and realistic lip synchronization and facial expressions in animated characters.

  The Federal Circuit agreed with the patent owner and analogize this case with Diamond v. Diehr, 450 U.S. 175 (1981) (“Diehr”), finding that the algorithm and rules used improve an existing technological process (3-D animation technology), and that the rules used are specific enough to “prevent preemptionof all processes for achieving automated lip-synchronization of 3-D characters.” As such, the claimed process was not an abstract idea; it was patentable subject matter.

  CONCLUSION

  The Planet Blue case appears to be the first post- Alice case in which non-computer technology improving software was found to overcome the abstract idea challenge. The key seems to be to be able to show that (1) some technology is improved and (2) that preemption of all processes for achieving the same result is prevented by the way the patent claims are drafted.

   

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  Marin Cionca9/6/2016 9:26:12 PM

  Patent Case Law: New Example of Software as Patentable Subject Matter

   INTRODUCTION

  On June 27, 2016, the United States Court of Appeals for the Federal Circuit (“appeal court”) has decided another case, part of a group of four post Alice cases, which found patent eligible subject matter in the challenged patent. The patent at issue (U.S. Pat. 5,987,606) in this case (BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC) was directed to a process for filtering content over the Internet. According to the appeal court, the inventive concept of step two of the Supreme Court’s Alice analysis was successfully provided by a specific “ordered combination” of conventional steps, because it provided a solution the prior art content filtering processes and systems failed to provide.

  THE DECISION

  The representative claim (Claim 1) of the disputed patent reads as follows:

  1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:

  a local client computer generating network access requests for said individual controlled access network accounts;

  at least one filtering scheme;

  a plurality of sets of logical filtering elements; and

  a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

  At the district court level, the court found that the claim recited an abstract idea of “filtering Internet content” which was not limited by an inventive concept because the claims elements individually and in combination were conventional and routine. One argument advanced by BASCOM, which failed, according to the district court, was that “the inventive concept is found in the “ordered combination” of the limitations: a “special ISP server that receives requests for Internet content, which the ISP server then associates with a particular user and a particular filtering scheme and elements.” In a somehow convoluted manner, the appeal court agreed with Bascom, distinguishing cases such as Ultramercial (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) and finding that this case is more analogous with DDR (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). As in DDR, the appeal court appeared to see the claimed invention an improvement of the computer technology itself, even though it was accomplished with conventional steps or well-known computer technology. The ordered combination seems to have been enough, in the eyes of the court, even though it consisted of routine, conventional or well-known elements.

  CONCLUSION

  What this decision appears to be teaching is that even though all claim elements are well-known or routine, a specific, ordered combination of such elements may still overcome a 101/Alice challenge. To be successful however, when mounting such argument, the specification and the claims may need to provide enough basis to show that the claimed invention improves the computer technology itself, in certain aspects. It should be noted that what was addressed in this appeal was only the eligibility (101/Alice) question. It still remains to be seen if this patent will survive the 102/novelty and 103/challenges, given the conventionality of the claim elements, individually.

  Entire court opinion can be found at:

  http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1763.Opinion.6-23-2016.1.PDF

   

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  Iris Kim, PhD6/1/2016 7:04:50 PM

  The Patent Trial and Appeal Board Designates Five More Decisions as Precedential

  The Patent Trial and Appeal Board (PTAB or the Board) designated its first precedential decision in 2014, SecureBuy LLC v. CardinalCommerce Corporation, CBM 2014-00035, Paper 12 (April 25, 2014), which concerned the statutory requirements for instituting a covered business method (CBM) patent review. At the beginning of the 2016 year, the Board designated two more, which can be read about here.

  In May 2016, five more decisions were designated as precedential, bringing the total of PTAB Precedential Decisions to eight. The five that have most recently been given the precedential designation are the following:

  Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013): This decision involves the factors to be considered when evaluating motions for additional, non-routine discovery in inter partes review proceedings. Prior to being designated as precedential, this decision was marked as “informative.” PTAB decisions are designated as either precedential, informative, representative, or routine.

  Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013): Like the first case, this decision also deals with the factors considered when evaluating motions for additional discovery, but in CBM patent review proceedings.

  Oracle Corp. v. Click-to-Call Techs., LP, IPR2013-00312, Paper 26 (October 30, 2013): This decision involves a rule stating that an inter partes review cannot be instituted if the petition was filed more than one year after the date when the complaint was served, and deals specifically with the interpretation of the phrase “served with a complaint.”

  MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015): This decision involves clarifying the standard for patent owner Motions to Amend. The patent owner has the burden to show entitlement to substitute claims, and this decision defined “prior art of record” and “prior art known to the patentee.” Previously, this decision was designated as representative.

  Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016):  This decision involves the requirement that petitions should name all of the interested parties, and the fact that changes during a proceeding can be corrected.

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  Marin Cionca5/17/2016 8:57:23 PM

  Patent Claims Rejection Based on Inherency

  Patent claims are often rejected by USPTO examiners on the ground that a property or characteristic of the claimed invention is inherent and thus not novel or, alternatively, obvious. In either case, if true, the invention is not patentable. However, often times, the examiner’s statements are pure conclusory statements with no support in any sound analysis or articulated reasoning. The Manual for Patent Examination Procedure (MPEP) cautions however against this type of impermissible practice. 

  MPEP 2141: DISCLOSED INHERENT PROPERTIES ARE PART OF “AS A WHOLE” INQUIRY

  MPEP 2141 gives an example of a case where, if looking at the claimed invention as a whole, the apparently “inherent” characteristic may not bar patentability. Referring to the facts of that case it states in part that “the prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.” In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977). It should be noted here that the failure of the prior art was contrasted with the contribution of the inventor to recognize the allegedly inherent characteristic, and the inventor was rewarded for that.

  MPEP 2112: EXAMINERS MUST PROVIDE RATIONALE OR EVIDENCE TENDING TO SHOW INHERENCY

  “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original); The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) citing In re Oelrich,666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981); (reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art).

  Examiners sometimes seem to ignore the above provisions of MPEP 2112 and provide no facts, technical reasoning or any rationale as to why the alleged inherent property “necessarily flows from the teachings of the applied prior art.” They simply write a conclusory statement or attempt to support the conclusion of inherency using inventor’s own teachings, which is often impermissible hindsight.

  As such, examiner’s statements made in office actions have to be scrutinized for errors such as the ones above and appropriate response filed with the USPTO, challenging examiner’s erroneous contentions.

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  Iris Kim, PhD3/25/2016 8:34:14 PM

  Challenging a Claim’s Validity with Different Standards of Claim Construction

   In September 2015, the Patent Trial and Appeal Board (“Board” or “PTAB”) denied institution of an inter partes review (IPR), in case IPR2015-00858, regarding patent 7,030,149. The IPR was requested by Ferrum Ferro Capital, LLC (the “Petitioner”) of claim 4 of the ‘149 patent, owned by Allergan Sales, LLC (the “Patent Owner”).

  The Petitioner identified several related proceedings. In particular, the Petitioner cited the Federal Circuit decision, Allergan v. Sandoz, 726 F.3d 1286 (Allergan, Fed. Cir. 2013, Ex. 1012, 726 F.3d at 1293–96), in which claim 4 was not found to be invalid as obvious. Although this claim was upheld in the Federal Circuit decision, the Petitioner still attempted to challenge the validity of the claim. The Petitioner likely relied on there being differences between the broadest reasonable interpretation (BRI) claim construction used by the Board and the Phillips standard (which applies “ordinary and customary meaning”) used by the Federal Circuit. If the Board had proceeded with the IPR, then a much broader reading of the challenged claim would have been used than when it was looked at in the Federal Circuit. Many have cited this as one of the reasons why IPR has become a widely used for challenging patent validity, as applying BRI typically means that it is more likely to find a patent invalid than valid.

  In the case of the ‘149 patent, however, the Board ultimately decided that the Petitioner did not establish a reasonable likelihood of prevailing with respect to claim 4, and denied the request. The ‘149 patent is directed to “topical ophthalmic use of brimonidine in combination with timolol for the treatment of glaucoma or ocular hypertension” (IPR2015-00858). The Petitioner contended that claim 4 would have been obvious over DeSantis in view of Timmerans and in further view of Larsson and Stewart, and supported their position with a declaration. Claim 4 “recites a ‘method of reducing the number of daily topical ophthalmic doses of brimondine… from 3 to 2 times a day without loss of efficacy’ in the treatment of glaucoma or ocular hypertension” (emphasis added). That is, the application of the medication two times a day is as effective as application of three times, if timolol is added.

  “In Bristol-Myers Squibb, the Federal Circuit stated that ‘[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.’ In this context, the court stated that claim limitations that merely recite a newly discovered result of a known process ‘do not distinguish those claims over the prior art’” (IPR2015-00858). Citing this as well as the earlier Allergan Federal Circuit case in IPR2015-00858, the Petitioner contended that the phrase “without loss of efficacy” was not a claim limitation, due to the fact that the broadest reasonable interpretation standard used by the Board is broader than the Phillips standard used in the Federal Circuit. “Petitioner also asserts that ‘without loss of efficacy’ recites an intended result of practicing the method as claimed, not a step of the claimed method, and, therefore, should not be given patentable weight” (IPR2015-00858).

  The Petitioner argued that, in the Federal Circuit Allergan case, the majority in the case considered “without loss of efficacy” to be a claim limitation while the dissent did not consider it to be so. The Petitioner considered this to mean that the majority and dissent applied different claim construction to claim 4. The dissent considered claim 4 to only include a single limitation, a step: “applying a fixed combination of 0.2% brimonidine and 0.5% timolol twice a day.” The dissent then stated that the “method of applying a fixed combination of 0.2% brimonidine and 0.5% timolol twice a day would therefore have been obvious over the prior art” (Allergan). The Petitioner argued that the dissent was applying BRI, and therefore, the claim should be found to be invalid when using BRI.

  The Patent Owner responded by stating that the Petitioner wrongly argued that the dissent “adopted a different claim construction from the majority in which the language ‘without loss of efficacy’ appearing in the claim was not a limitation and could be ignored” (IPR2015-00858). The Patent Owner contended therefore that the majority and dissent had indeed both adopted the same claim construction. The Board agreed with the Patent Owner that result of “without loss of efficacy” is a limitation.

  With respect to the Petitioner’s argument of Claim 4 being obvious, the Board stated in its decision, “Even assuming Petitioner persuaded us that Stewart disclosed that reducing a dose of 0.2% brimonidine from three times to twice daily resulted in ‘no difference in intraocular pressure effects’ in some fashion, as Petitioner and its expert witness contend in a conclusory manner… that disclosure would not establish sufficiently that reducing the number of doses of a single composition comprising 0.2% brimonidine and 0.5% timolol from three to two times daily would have resulted necessarily in no loss of efficacy in the treatment of glaucoma or ocular hypertension” (IPR2015-00858).

  The decision by the Board not to institute IPR concluded with, “Considering Petitioner’s arguments and cited evidence of record before us, Petitioner does not establish sufficiently that the “without loss of efficacy” limitation is an inherent property or a necessary result of administering the composition as recited in claim 4” (IPR2015-00858).

  Although this request for inter partes review was denied, IPR still remains a popular strategy for petitioners challenging the validity of patents due to the claim construction being broader in the PTAB than in the Federal Circuit. There remains a debate regarding the differences between the BRI and Phillips standards, however. Another major discussion about these standards will be coming soon, with the Supreme Court accepting the review of the case of Cuozzo Speed Technologies v. Lee scheduled on April 25, 2016.

  About CIONCA Law Group P.C.: We are an Orange County, CA based intellectual property law firm with a focus on patent and trademark prosecution, offering IP law services at flat fee rates.

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  I. Kim PhD2/26/2016 8:47:51 PM

  The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

   The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

  In 2012, the Patent Trial and Appeal Board (PTAB or The Board) was formed, and petitioners have since then had the opportunity to challenge patents before the Board in inter partes review, covered business method review, or post grant review proceedings. Inter partes reviews have been relatively successful for petitioners, as approximately 70% of petitions have been instituted, and of those, about 90% of those petitions have resulted in at least one canceled patent claim. One of the factors behind the petitioners’ success rate is the “broadest reasonable interpretation” (BRI) standard that is the claim construction standard in inter partes review.

  BRI, applied by the Board, is not the same standard applied by the district courts. The district courts apply the standard of “plain and ordinary meaning,” as set forth in Phillips v. AWH Corp., and is a narrower standard.

  The Supreme Court granted certiorari, a review of a decision by a lower court, in Cuozzo Speed v. Lee in January 2016 to review the Federal Court’s decision upholding the Board’s use of the BRI standard. Cuozzo, the petitioner, maintained that the Board’s BRI standard is improper and that the Board’s decision to institute trial be reviewable on appeal. The Supreme Court will review these issues of whether it is appropriate for the Board to use a different claim construction standard than that used in federal district court, and whether an institution decision could be subject to judicial review. As written in the petition for certiorari:

  “1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.

  2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.”

  The Supreme Court’s decision of the second issue at hand may have a large impact. By applying the BRI standard, the Board broadens the scope of patent claims during interpretation, which may lead to the claims being more susceptible to invalidation. Other problems may arise by there being two standards, which could lead to some inconsistency in the interpretation of patent claims.

   

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  Marin Cionca2/16/2016 6:34:53 PM

  In IPRs, patentees have to show that substitute patent claims are patentable

   In February 11, 2016 the Federal Circuit has issued a precedential opinion in an appeal related to an inter partes review (IPR) dispute between Nike, Inc. and Adidas AG at the Patent Trial and Appeal Board (PTAB). The dispute involves U.S. Patent No. 7,347,011 (the ’011 patent) owned by Nike, Inc. (Nike) and covering a unitary shoe upper. Several lessons can be learned or refreshed upon by reviewing this opinion. Some are presented succinctly below.

  1. While a Patentee Can Present Substitute Claims in an IPR Proceedings, the Patentee has the Burden of Proof to Establish that the Substitute Claims Are Patentable Over the Prior Art. Here, Nike canceled all of the 46 claims challenged by Addidas and requested the entry of four substitute claims 47-50. PTAB canceled the 46 claims but denied entry of Nike’s four substitute claims. “First, the Board acknowledged the requirement announced in the Board’s Idle Free decision that a patent owner “persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” J.A. 34–36. Because Nike’s motion included only a conclusory statement that the proposed claims were patentable over prior art not of record but known to Nike, the Board denied Nike’s motion.” Alternatively, the Board denied entry of the substitute claims because Nike failed to establish that the substitute claims were patentable over the prior art of record. The Federal Circuit agreed with the Board holding that “the Board did not err by placing the burden on Nike to establish patentability over the prior art of Nike’s proposed substitute claims.”

  2. Another Obviousness Analysis Refresher: The Failure of the Prior Art to Recognize the Problem Solved by Patentee May Support a Finding that the Claimed Invention is NOT Obvious. A claim is not patentable when “when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103. The court reminded us that “[t]he ultimate determination of obviousness under § 103 is a question of law based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,406 (2007) (quoting Graham, 383 U.S. at 17–18).” Once again, the court emphasized that an obviousness inquiry requires examination of all four Graham factors and that an obviousness determination can be made only after consideration of each factor. Finally, the court reminded us that “In KSR, the Supreme Court instructed that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” 550 U.S. at 420.” The court agreed with the PTAB that, unlike in cases where the prior art has not appreciated the problem, here, because the two prior art references of record recognized the problem solved by Nike, combining the two references was obvious to one of ordinary skills in the art. However, the court agreed with Nike that the PTAB failed to consider Nike’s arguments and evidence related to secondary consideration, namely that “that reducing waste was a long-felt need in the shoe manufacturing industry” and that the prior art failed to resolve this need. The opinion further reminds us that “[e]vidence of secondary considerations plays a critical role in the obviousness analysis because it serves as objective indicia of nonobviousness and “may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983).”

  3. Drawings Themselves May Play a Key Role in Showing That the Written Description Requirement is Met. Here, Adidas contended that Nike’s substitute claims were not properly supported by the ’011 patent’s written description. “To adequately support the claims, the written description “must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad, 598 F.3d at 1351 (internal quotation marks omitted).” “Substantial evidence supports a finding that the specification satisfies the written description requirement when the essence of the original disclosure conveys the necessary information—regardless of how it conveys such information, and regardless of whether the disclosure’s words are open to different interpretations.” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1354 (Fed. Cir. 2015).” After thoroughly analyzing Figs. 8 - 11 and the related description in the ‘011 patent, the court held that “substantial evidence supports the Board’s decision that the proposed substitute claims are adequately supported by the written description of the ’011 patent.”

   

  The entire Federal Circuit’s opinion may be accessed here: http://www.cafc.uscourts.gov/sites/default/files/s14-1719_Opinion_2-9-2016.pdf

  About our firm: We are a boutique intellectual property firm with a focus on patent and trademark prosecution, offering IP services primarily at flat fee rates. We are based in Irvine, Orange County, California.

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  M. Cionca and I. Kim2/4/2016 5:55:16 PM

  Software Inventions Are Still Patentable!

  In June 2014, the Supreme Court ruled in Alice Corp. v. CLS Bank Int’l (“Alice”) that the claims in the four disputed software-based patents owned by Alice Corp. were directed to an “abstract idea,” and thus were patent-ineligible under 35 U.S.C. 101. The Supreme Court’s decision was based on the reasoning that the claims were said not to be more than instructions for implementating an abstract idea, the idea of intermediated settlement using a generic computer. This decision soon led to much confusion about software invention patentability and impacted how this patentability is evaluated by patent practitioners and U.S. Patent and Trademark Office (USPTO) examiners alike.

  The USPTO then issued “2014 Interim Guidance on Subject Matter Eligibility” after Alice, which details the subject matter eligibility analysis for claims, providing a baseline guidance for examiners. The USPTO then supplemented that guidance with eight sets of example claims directed to computer-implemented inventions or software inventions. Four example are directed to patent-eligible subject matter while the other four sets recite patent-ineligible matter. Practice revealed that some examiners are not familiar with these relatively recent examples. When this is the case, it falls upon the patent practitioners to make their cases by bringing these guidelines and examples to the examiners’ attention.

  Example 3 of the USPTO’s set of eight examples uses a two-step test, commonly referred to as the Mayo test. This test was used in Example 3 to analyze the patentability of a claim reciting digital image processing by generating a noise mask. Step 1 checks whether the invention (here, a process) belongs to a statutory category of invention and, if so, whether it is a “judicial exception” such as an abstract idea. Generating a mask was found to be an abstract idea. However, when examined as a whole in Step 2, the claim represents more than that abstract idea. Step 2 of the two-step test is to search for elements that show an inventive concept. Here, the process of comparing and converting data were found to add meaningful limitations, “improve the functioning of the claimed computer” and result in an “improved digital image.” The claim is thus patentable, and Example 3 can be used as support that for the idea that software claims can still be patentable.

  Still, examiners may issue automatic 101 rejections for any software-based or computer-implemented inventions. These rejections can and do happen. When this is the case, patent practitioners must appropriately respond, and they can point out that examiners cannot issue automatic rejections without a fact-based reasoning behind the rejection. The Patent Trial and Appeal Board held in Ex Parte Poisson (February 26, 2015) that examiners must provide an evidence-based prima facie case of patent ineligibility, and the Poisson case provides a clear example of this.

  DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) was a significant decision from the Federal Circuit as being the first to uphold the subject matter eligibility of computer-implemented claims after Alice. This decision is a strong example showing that software-related inventions can still be patentable. Here, it was shown that claims directed to making an improvement to a computer system or solving a problem within the system may be patentable. More specifically, the Federal Circuit saw that “the claimed solution is necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks” (DDR Holdings) leading to their conclusion that these claims “specify how interactions with the Internet are manipulated to yield a desired result” and “recite an invention that is not merely the routine or conventional use of the Internet.” 

  Although some confusion still remains regrading software patent eligibility, it is important to adopt a thorough approach not only to drafting these software patent applications, but also to working with and even educating the USPTO examiners. Particularly after Alice, broad subject matter eligibility in the claims can and should be advocated for by patent practitioners, who must also advocate for their clients’ cases to be handled properly.

  Alice Corp. v. CLS Bank: http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf

   

  DDR Holdings v. Hotels.com: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/13-1505.Opinion.12-3-2014.1.PDF

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  Marin1/28/2016 9:15:16 PM

  The Patent Trial and Appeal Board Designates Two Decisions as Precedential

   

  by Marin Cionca and Iris Kim

  In January 2016, the Patent Trial and Appeal Board (PTAB or the Board) marked two of their 2015 decisions as precedential. LG Electronics, Inc. v. Mondis Tech Ltd.,(IPR2015-00937, Paper 8, PTAB, Sept. 17, 2015) and Westlake Services, LLC v. Credit Acceptance Corp., (CBM2014-00176, Paper 28, PTAB, May 14, 2015) are the second and third America Invents Act (AIA) review decisions that the Board designated as precedential, the first AIA precedential decision being SecureBuy, LLC v. CardinalCommerce Corp. (CBM 2014-00035, PTAB, Apr. 25, 2014). The majority of decisions by the Board are routine, and others may be designated as informative or precedential. A precedential decision is significant in that it is binding authority on the Board unless overcome by a subsequent binding authority, for instance, a decision by the U.S. Supreme Court or the Federal Circuit Court of Appeals. 

   

  LG Electronics, Inc. v. Mondis Tech Ltd. concerns the 12 month window in complaint filings, namely, the interpretation of “served with a complaint” with regards to the one-year time bar that is set forth by 35 U.S.C. 315(b). This time bar prevents a petitioner from requesting an inter partes review of a patent if they would be filing after one year from the date they are served with a complaint alleging infringement of that patent. When multiple complaint filings have occurred, the interpretation of 35 U.S.C. 315(b) could become complex. The Board interpreted in LG Electronics that there is to be a bar even if subsequent complaints were served within that 12 month window of time.

   

  Westlake Services, LLC v. Credit Acceptance Corp. concerns the interpretation of the estoppel provision set forth in 35 U.S.C. 325(e)(1). Claims that were denied trial do not trigger 35 U.S.C. 325(e)(1) estoppel where other claims in the patent move forward through trial. 35 U.S.C. 325(e)(1) states that a “petitioner in a post-grant review of a claim in a patent… that results in a final written decision under section 328(a)… may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” The Board made a clarification in Westlake Services that the decision not to proceed to trial on a subset of claims of a patent does not constitute a “final written decision” on the patentability of the claims that triggered the 35 U.S.C. 325(e)(1) estoppel, and estoppel is to be “applied on a claim-by-claim basis.”

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  Marin1/28/2016 9:10:56 PM

  How Unpredictability Can Affect Obviousness Challenges

  by Marin Cionca and Iris Kim 

          In June 2015, Amgen challenged two patents (US Patent Nos. 8,916,157 and 8,916,158) owned by AbbVie Biotechnology Ltd., related to the drug Humira. The challenge was on the grounds that the reformulations of the biologic described in these patents are not significantly different from that of the prior art. The Patent Trial and Appeal Board (PTAB or The Board) has denied both of Amgen’s requests for inter partes review, in Amgen Inc. v. AbbVie Biotechnology Ltd. case numbers IPR2015-01514 and IPR2015-01517.

  AbbVie asserted to the Board that preparing stable liquid aqueous formulations of antibodies at the recited concentrations may lead to unpredictable results. A claim is unpatentable as being obvious if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made” (35 U.S.C. 103(a)) to one of ordinary skill in the art. Absolute predictability is not a requirement for obviousness, but “some articulated reasoning with rational underpinning to support the legal conclusion of obviousness” should be present (KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

  In case IPR2015-01517, Amgen had submitted an argument that an article, Wang, provided guidance for formulating stable liquid aqueous antibodies at the concentration recited in the patents. However, AbbVie asserted that the Wang article demonstrates unpredictability in this art of formulating proteins as well, stating “[v]ery often, proteins have to be evaluated individually and stabilized on a trial-and-error basis.” “Although the Wang article indeed provides general guidance, the Wang article also underscores the unpredictability of the undertaking” (PTAB, IPR2015-01517).

  Further examples of references that provide general guidance were provided. Amgen argued using Salfeld and Heavnerm stating that “because both focus on anti-TNF alpha antibodies, both focus on IgG antibodies, and both teach how to formulate these antibodies” a skilled artisan “would have had reason to combine Salfeld and Heavner” (PTAB, IPR2015-01517). AbbVie’s response was that Salfeld provides guidance “merely as a general approach” and Heavner only provides “bulk recitations” and “offers no guidance at all on how to actually select from this massive number of possible combinations” (PTAB, IPR2015-01517).

  Given these arguments, the Board found that Amgen was not persuasive in their argument that a “skilled person would have had a reasonable expectation of success in applying the formulations commercially available and taught in the literature to D2E7,” D2E7 being the antibody described in the ‘158 patent (PTAB, IPR2015-01517). The Board concluded “that Amgen has not established a reasonable likelihood of prevailing with respect to its challenge,” (PTAB, IPR2015-01517). Similar arguments were presented in case IPR2015-01514, and both requests for inter partes review were denied in January 2016, demonstrating that, even with guidance, unpredictability may still be a factor in certain fields.

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  Marin11/19/2015 2:13:05 PM

  An Innovator’s Dilemma: Design or Utility Patent?

  An Innovator’s Dilemma: Design or Utility Patent?

  by Marin Cionca and Iris Kim

  [Originally published on August 24, 2015 in Orange County Business Journal. Republished with permission.]

  Should protection be sought with a design patent, or a utility patent? When innovators create something new, this becomes an important question to answer in order to secure the best protection for their inventions.

  A utility patent protects structure and function, whereas a design patent protects ornamental appearance. Using a ballpoint pen as an example, if an inventor created a pen with a unique look to it, the inventor should apply for a design patent. However, if an inventor has conceived of a different way for the ballpoint pen to work, a utility patent would be the appropriate choice. In either case, the aspects to be patented must be new and non-obvious.

  Obtaining a design patent for the appearance of a pen would prevent others from making, using, selling or importing another pen that looks similar, regardless of how differently the pen functions. However, a utility patent for the way a pen works, perhaps for the way it writes, or opens and closes, would prevent others from making, using, selling or importing another that works in that same way, even if it looks very different.

  In some cases, it may be beneficial to file design and utility patent applications, if the invention has novel aspects in both appearance and function. A design patent may add another layer of protection for a device that one has patented its structure or function, since aesthetics can be a large factor in marketing a product.

  Costs have to be considered. Design patent applications are much simpler, and thus, cost less to prepare and file; additionally, there are no maintenance fees to pay during a design patentʼs term of fifteen years after issue. A utility patent owner must pay maintenance fees three times throughout its term of twenty years from the earliest priority date, adding to the overall cost.

  Knowing which particular features are the most important inventive aspects one wishes to protect with a patent is a crucial step in identifying an invention.

  These features may be the way something functions, or how a process works, or how a device looks, or perhaps all of the above.

   

   

   

   

   

   

   

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  Marin11/18/2015 7:31:35 PM

  When Is a Thesis Prior Art?

   by Marin Cionca and Iris Kim  

  Two decisions by the Patent Trial and Appeal Board (PTAB, or Board) addressed how theses could be qualified as prior art, and the ways in which that qualification could be challenged.  GlobalFoundries U.S., Inc. et al. v. Zond, LLC, IPR2014-01086, Paper 36 (GlobalFoundries, Aug. 14, 2015), relating to U.S. patent number 7,147,759, involved the evaluation of a Russian language doctoral thesis Mozgrin, which had been catalogued at the Russian State Library.  

  In this Final Decision, the Board addressed the issue of whether the Mozgrin thesis is prior art under 35 U.S.C. 102. A determination such as this one must be done on a case-by-case basis, by looking into the facts relating to the reference in question and its disclosure to the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” Mozgrin is a doctoral thesis originally published in 1994, and GlobalFoundries, the Petitioner, provided a copy of the catalog entry for it at the Russian State Library along with a certified English translation. The thesis contained an imprint date of 1994 or at least 1995, reading, “Catalog of Dissertations in Russian (since 1995).” However, Zond, the Patent Owner, argued that this was insufficient evidence that Mozgrin was actually catalogued on that date.

  The Board found GlobalFoundries to be persuasive, because although “evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. See Hall, 781 F.2d at 899” (GlobalFoundries, PTAB), the critical date being September 30, 2002. Since Zond was unable to give sufficient explanation or evidence otherwise, such as why there would exist a delay of seven years for cataloguing a thesis, the Board agreed with GlobalFoundries.  

  Zond did also offer an argument that, even if Mozgrin had been catalogued, GlobalFoundries “would not have demonstrated that the thesis could have been obtained by any interested person outside of Russia or the countries under Russia’s control.” The Board called this argument “misplaced,” stating that there would have been “sufficient accessibility to interested persons exercising reasonable diligence.” The Board observed that Mozgrin “was cataloged and indexed in a meaningful way, by the author’s name, the IPR2014-01086 Patent 7,147,759 B2 44 title of the thesis (“High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic Field”), and the subject matter of the thesis (“Plasma Physics and Chemistry”)” (emphasis added).  

  In contrast to this decision, the Board also made a decision relating to a thesis that had not been catalogued or indexed in a meaningful way. Friendfinder Networks Inc. v. WAG Acquisition, LLC, IPR2015-01033, Paper 8 (Friendfinder, Oct. 19, 2015) relates to U.S. patent number 8,327,011. The Petition provided Su, a thesis submitted to the Department of Computing and Information Science at Queens University in Ontario, Canada in September of 1998. The thesis bears a copyright notice of 1998, and the Petitioner asserted that Su was published and available at the National Library of Canada in 1999.  “However, Patent Owner contends that Petitioner has not met its burden to show when Su became publicly accessible and, therefore, Su has not been shown to be a prior art printed publication,” (Friendfinder, PTAB). This due in part to the Patent Owner’s argument that it is unclear whether Su was available beginning on the critical date of July 18, 2008, and unclear when Su was “accessible in a searchable or indexed manner, such that it could be located by persons interested and ordinarily skilled in the subject matter or art using reasonable diligence.”

  Again, the Board referenced Kyocera Wireless, in making their determination of whether a reference is a printed publication.  In previous cases, a copyright notice has been used as a prima facie evidence of publication. However, such as in this case, “in the absence of further evidence, a copyright notice may not be determinative.” As such, the Petitioner acknowledged that Su was not published until 1999; therefore, the copyright notice posted on Su holds “no weight on the issue of public accessibility” (Friendfinder, PTAB). 

  The Petitioner provided a “photograph of the microfiche copy of Su,” “a photograph of an envelope in which the microfiche is stored,” and an “index microfiche.” Unfortunately for the Petitioner, the envelope photograph displays only “Jan–Jul/Aug 1999 ISSN 0225-3216 Index A Authors Titles Series.” The Board stated that Su was only indexed by “rudimentary indexing,” of the author’s name and only the first word of the thesis title, “Continuous,” “which is the only indexing that the evidence suggests may have occurred before the priority date and does not suggest its relevance to the streaming media network transport problem addressed by the ’011 Patent” (Friendfinder, PTAB). 

  The Board then concluded with a statement that “such indexing would not provide a meaningful pathway to a researcher who was not previously aware of the existence of the thesis and was searching by subject matter” (Friendfinder, PTAB, emphasis added).  These two decisions by the Board provide some guidelines for petitioners and patent owners alike. Providing a thesis as a reference may only be useful if one can also supply evidence of its availability, and that evidence should be focused around the critical date.

  Challenging of that reference may be done by evaluating the institution’s policies for cataloguing of theses, how indexing is actually performed by those institutions, and whether an interested person of ordinary skill would be able to find that reference. If the indexing of a thesis is only done in a rudimentary fashion, as in the case of Su, that thesis may not be qualified as prior art.

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  Marin11/18/2015 6:15:40 PM

  Covered Business Method Claims Are Not Required to Particularly Target Financial Industry

    By Marin Cionca and Iris Kim

  To be eligible for Covered Business Method (CBM) review, a patent must first claim a method or corresponding apparatus used in the practice, administration, or management of a “financial product or service” (37 C.F.R. 42.301 (a)). Second, it must not qualify for the “technological invention” exception, which refers to patents that claim a novel, unobvious technological feature solving a technological problem. A patent only needs one claim that meets these requirements to qualify for CBM review.      

  In a recent decision, however, the Patent Trial and Appeal Board (PTAB or Board) decided that a claim may qualify for CBM review under Section 18 of the America Invents Act (AIA) and meet the “financial product or service” criteria even if it does not “particularly target the financial industry,” Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB, Sept. 10, 2015).      

  In Symphony, the Petitioner had filed to institute a CBM review of claims in the ‘452 patent. This patent relates to a “system and method for gathering and analysis of health-care related data as well as techniques for de-identifying individuals from pharmaceutical data, in order to maintain privacy” (Symphony, PTAB). The patent teaches that laws were passed to prevent personal information from being transmitted with health care data, but that it is still important to be able to associate records. Therefore, the ‘452 patent is related to a system in which identifying information is removed, and the non-identifying information is then used for marketing researching and other purposes.      

  What is of note is that the ‘452 patent owner argued that this patent does not “particularly target the financial sector.” However, according to the Board, the ‘452 patent qualified for CBM review because the “challenged claims recite a system and method used in the practice, administration, or management of financial services and products.” Additionally, because the system helps to aggregate and organize data for marketing research, it was disclosed that the system could “help make business decisions,” (Symphony, PTAB) such as in sales.      

  An implication of this decision is that a larger group of patents may be eligible for CBM review than it was previously thought, and the definition of a CBM review-eligible patent is broader than it may seem at a first reading. Even patents that do not “particularly” target financial institutions or sectors may be eligible for CBM review.  

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  Marin11/18/2015 6:11:11 PM

  PTAB Decisions Give Examples of Patent Eligible Subject Matter

  by Marin Cionca and Iris Kim

  The Supreme Court’s decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347, 2014 (Alice) resulted in much confusion about whether software-related and computer-implemented inventions are patent eligible under 35 U.S.C. 101.  Following this, in December of 2014, the U.S. Patent and Trademark Office (USPTO) issued interim guidelines on patent subject matter eligibility. “Interim” may indicate that further guidelines are forthcoming. Until then, decisions by the Patent Trial and Appeal Board (PTAB or Board) are a useful source of guidance for what constitutes patent eligible subject matter.

  Drawing similarities between cases and the hypothetical examples provided by the USPTO can be helpful for patent prosecutors and examiners.

  The two-part test provided by the USPTO is a basic analysis tool, set forth in MPEP 2106. Step 1 is to determine whether the claimed invention belongs to one of the four statutory categories of invention: a process, machine, article of manufacture, or composition of matter. If yes, Step 2 is to determine whether the claim is directed to a judicial exception, such as a law of nature, natural phenomenon, or abstract idea.

  Alice also provided broad examples of what may constitute an abstract idea: (1) fundamental economic practices, (2) certain methods of organizing human activities, (3) “an idea of itself,” and (4) mathematical relationships or formulae (Alice, 134 S.Ct. at 2350; 2356; 2350; 2350).

  Using these tests and guidelines, many claims were found by the Board and the Federal Circuit to be directed to patent ineligible matter under 35 U.S.C. 101. However, in two recent cases, the Board reversed the examiners’ decisions that the claims were directed to unpatentable abstract ideas, even though in the majority of appeals since Alice, the examiners’ rejections were affirmed.

  In Ex Parte Cyriac J. Wegman III, 2015 WL 5578687 (Wegman, PTAB Sep. 18, 2015), regarding U.S. patent application number 12/765,954, the Board agreed with the Appellant that claim 1 is patentable subject matter. The Examiner had rejected the claims under 35 U.S.C. 101 for being directed to an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.

  The representative claim, claim 1, is reproduced below:

  1.  A method for providing an empirical model of a defined space comprising steps of:
      a. defining the desired space;
      b. describing at least a portion of the defined space with multiple correlated dimensions;
      c. reducing the dimensionality of the described portion;
      d. combining the described portion with the remaining portion of the defined space;
      e. creating a hypothetical model of the defined space; and
      f. calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.

  In their analysis of the patentability of claim 1, the Board employed the new interim guidelines issued by the USPTO following the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) and Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347 (2014).

  The Appellant argued that claim 1 is directed to a method, and thus, satisfies step 1 of the two-step test, which the Board agreed with. The Board then also agreed with the Appellant that claim 1 is much more specific than a broad abstract idea, as argued by the Examiner. The Appellant argued that claim 1 requires “calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.” Therefore, the method claimed involves the performing of an analysis, and is not simply an abstract idea.

  Next, in Ex Parte Bruce Gordon Fuller, Brian Alexander Wall, Kevin George Gordon, Mark David Hobbs, and Mohamed Salehmohamed, 2015 WL 3467122 (Fuller et al., PTAB May 28, 2015), regarding U.S. patent application number 12/765,954, the Board again agreed with the Appellant that the subject matter was patent eligible. The Examiner had rejected claims under 35 U.S.C. 101 for being an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.

  An exemplary claim, claim 1, is reproduced below:

  1.  A method of associating a first variable and an event on a display, the method comprising:
      displaying the first variable relative to a time period on the display, resulting in a graph of the first variable;
      receiving first user input from a graphical indicator device, wherein the first user input comprises an instruction to position an indicator over a portion of a data curve of the graph corresponding to a time period of interest to the user;
      in a processor, determining if the event occurred during the time period of interest; and
      displaying the event on the display nearby the portion of the graph if the event occurred during the time period of interest.

  Of note is that both of these sets of claims from Wegman and Fuller et al.  involve a physical aspect. A calculation or analysis is performed in the first, and a graph display is required in the second. In Wegman, the Board stated that the method “requires performing an analysis of objects, either actual or virtual, and calculating coefficients for the model based upon that analysis. We find that these steps are sufficiently concrete as to set them outside the broad definition of abstract idea as set forth in Alice,” (Wegman, PTAB). In Fuller et al., the Appellants argued that the physical elements present “allow a user to view a graph and an event occurring during a time period of interest on the display if the processor determines that an event occurred,” and “these elements provide sufficient structure to prevent the method steps from being interpreted as too abstract,” (Fuller et al., PTAB). The Board agreed with the Appellants’ arguments, which provides a common thread between Wegman and Fuller et al., the physical components of each of the claims.

  
  Later, these two examiners’ rejections were upheld on other grounds, but the opinions of the Board here still offer some insight into the type of claim language and subject matter that the Board finds patentable subject matter.

  http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013008168-09-18-2015-1

  http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013000762-05-28-2015-1

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