Patently-O Law Blog
by Dennis Crouch
It has now been just over 18-months since we started filing patent applications under the new first-to-file patent system mandated by the America Invents Act (AIA) of 2011. And, slowly but surely, FTF patents are now beginning to issue. Those new patents also bring us into a new era of Post-Grant-Review-Proceedings (PGR).
My expectation is that PGR will quickly prove itself as an incredibly powerful tool for challenging patents. Importantly, PGR proceedings allow a third party to challenge the validity of a patent on any of the validity grounds that could be raised in court as a defense under 35 U.S.C. 282 – these include novelty, obviousness, written description, enablement, indefiniteness, utility, and subject matter eligibility. This list represents a major expansion of challenge-justifications over inter partes review (IPR) proceedings or reexaminations. These same doctrines have already been available for covered-business-method review (CBM) proceedings and have been used successfully if only on a narrow class of patents (those covering financial business methods).
Two recent PGR proceedings have been filed. In one case, LaRose Indus. has challenged Patent No. 8,684,420 that covers the popular children’s “Rainbow Loom.” Although the patent claims a 2010 priority date, the particular application was filed as a continuation in July 2013 and, at least according to the petitioner, added new mater to the claims at that point. The second case PGR case involves Patent No. 8,598,291 that covers a liquid formulation of a particular nausea control drug used by chemotherapy patients. The petition argues that the claims fail the requirements of written description, enablement, and definiteness.
The most important limitation on the PGR process is the relatively short 9-month window for filing a PGR petition. Namely, the petition must be filed within 9-months of the patent issuance. This puts some pressure on parties to monitor competitor patents and patent families. It also provides patent owners at least some incentive to hold-off asserting their patent until after that window has closed (unless the patentee would welcome the review). I suspect that the set-up in the LaRose Rainbow Loom market will be fairly common. The patentee (Choon) had previously sued LaRose on a previous patent and so LaRose has been closely monitoring the continuation applications.
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In thinking about how soon the AIA cases will come on-board, I created the chart below. The chart provides some information on the timing of patent issuance — showing the percentage of patents issued with 18-months of filing and 36-months of filing respectively. A big caveat for this particular chart is that it looks at the actual application filing date and does not consider the priority date that will typically control whether a patent will be examined under the AIA. Thus, even at the three-year date (March 2015), I would expect that significantly less than half of the recently issued patents would be FTF patents.
You’ll note the trend beginning in FY2011 of issuing more patents more quickly. I largely attribute the change to two initiatives pushed by David Kappos during his term as PTO Director that resulted in (1) more funding to hire more examiners; and (2) a greater allowance rate. Those factors have continued through the succeeding interim leadership terms of Terry Rea, Peggy Focarino, and now Michelle Lee.
The average number of references cited per patent has continued to grow over the past decade and now almost reaches 50 per patent with no sign of slowing-down. When the reference-count was much lower, many examiners apparently assumed that applicant had already ensured that the cited references did not disclose the patented invention. However, today neither patent applicants nor their patent attorneys have time to read through and fully consider such a large number of references. Obviously, examiners also do not have time to read 50 references. In my view, technology could offer a nice solution that would easily allow examiners to conduct an internal textual search that is limited particularly to references that have been submitted in this case and perhaps those previously cited in similar cases. So far, that search capability does not appear to be available for the examiners – especially for non-patent prior art.
Now, I should mention here that the ‘averages’ are a problematic figure for references cited because the distribution is quite skewed. Namely, there are a fairly small number of cases that cite a very large number of references, and those cases have a major impact on the results. The chart below shows a more nuanced version of the distribution.
University of Utah and Myriad Genetics are back at the Federal Circuit after losing a motion for preliminary injunction against the genetic testing company Ambry Genetics. The case still focuses primarily on BRCA genetic testing, although the asserted claims are different from those in the Supreme Court decision.
For instance, Utah has asserted claim 7 of its Patent No. 5,753,441 listed below.
7. A method for screening germline of a human subject for an alteration of a BRCA1 gene which comprises
comparing germline sequence of a BRCA1 gene … from a tissue sample from said subject … with germline sequences of wild-type BRCA1 gene…
wherein a difference in the sequence of the BRCA1 gene … of the subject from wild-type indicates an alteration in the BRCA1 gene in said subject, [and]
wherein a germline nucleic acid sequence is compared by hybridizing a BRCA1 gene probe which specifically hybridizes to a BRCA1 allele to genomic DNA isolated from said sample and detecting the presence of a hybridization product wherein a presence of said product indicates the presence of said allele in the subject.
Because Claim 7 is a dependent claim, I have rewritten it to include the limitations of independent claim 1 and also eliminated some language written in the alternative. I have also eliminated some redundancy.
The advance embodied by the University of Utah’s BRCA patents all center around the researchers’ discovery of the genetic sequence and location of the naturally occurring BRCA1 and BRCA2 genes and that the mutations correlate with a high risk of cancer. That discovery itself is not patentable because it is a law of nature, or alternatively, an abstract idea or perhaps even a product of nature. The question then is whether the claim includes the necessary “something more” – an “inventive concept” that transforms the invention into one that is patent eligible in a way that ensures that fundamental building blocks of science and technology are not monopolized through the patent. A problem for Myriad on this front is that the tools of hybridized screening were already known and were not themselves inventive concepts at the time. However, clearly the invention as a whole is practical, transformative, and inventive.
On October 6, 2014, the Federal Circuit heard oral arguments on the case with a panel consisting of Chief Judge Prost, Judge Dyk, and Judge Clevenger. Oral arguments focused largely on the question of integration versus filtration. Namely, when applying the second step of the Alice/Mayo analysis, is it proper to consider the invention as a whole integrated invention or must the court first filter-out the excluded subject matter and then ask whether an inventive concept can be found in the remains. It will be interesting to see how the court resolves this important and tricky question.
Santa Clara’s High Tech Law Center is giving away a couple of limited-edition Annotated Bobbleheads of Judge Randall R. Rader. [Enter here]. (I should note that to enter you have to take some action such as liking them on The Facebook? Is that legal?). According to my sources, Judge Rader has blessed this use of his likeness.
By Jason Rantanen
About a week ago I highlighted several schools that are seeking clinical IP faculty. Rob Merges of the Berkeley College of Law recently reached out to me to share that the Berkeley Center for Law and Technology is looking for a new Executive Director.
The BCLT is at the core of Berkeley’s extensive law and technology program: it coordinates research funding and the many course offerings in this field at Berkeley Law, organizes terrific conferences and workshops, and serves as a hub for lawyers and scholars interested in IP, privacy, and other aspects of law and technology. The current Executive Director is Robert Barr, former Chief IP Counsel for Cisco and past Executive Dirctors have included Ray Ocampo, former General Counsel for Oracle (and Olympic luger).
From the job posting:
The Berkeley Law Center for Law & Technology (BCLT) invites applications for the position of Executive Director. This is a 100% full-time appointment.
BCLT is a research center at the University of California, Berkeley, School of Law. For the past fourteen years, BCLT has been rated by US News & World Report as one of the top intellectual property programs in the country, in part because of the high quality, high impact research conducted by its faculty and students. BCLT’s research includes intellectual property, electronic commerce, telecommunications regulation, cyberlaw, privacy and other areas of law that are affected by new information technologies.
Read more at the official posting: https://aprecruit.berkeley.edu/apply/JPF00563
* The numbers above are based upon the inventor country as listed for the first-named inventor on the face of each U.S. utility patent. Although there are an increasing number of cross-country patents (with inventors listing different countries), those numbers are negligible in a population analysis such as this. The results for assignee-country are virtually parallel with the exception that about 6% of U.S. patents are issued without a listed assignee.
The creativity of American lawyers never ceases to amaze. I’ve heard of variations on this theme: using an IPR to coerce payment, a license, or something from the patentee. Variation on the theme:
A third party sees that a patentee has won a big judgment, defending its patent against a charge of invalidity. The third party then cobbles together an IPR petition based upon the arguments that failed in the district court, relying upon the lower burden of proof and broader claim construction that will apply in IPR, and sends it to the patentee with a note: “pay us or we’ll file this.” This was discussed a few months back here.
A third party uses IPR as a tool to manipulate stock price: sell the stock short and then file the IPR. Or, it sees the patentee is in litigation and says, “give us a license (which we’ll turn around and use to license the defendants) or we’ll file an IPR.” A story about that allegedly happening is here.
Gotta love America.
The ethics of this are fascinating: it may be that the OED could be brought in to show that the IPR was filed for an improper purpose and nip it in the bud. But that’s probably a long shot, given the right to petition and what-not. Perhaps Congress limiting standing in IPRs to competitors? It’s too early for me to think in depth about a creative solution to this creative problem.
American Calcar v. American Honda (Fed. Cir. 2014)
Back-Link: Jason Rantanen previously discussed the court’s first decision in the case here: Calcar v. Honda: CAFC’s First Post-Therasense Inequitable Conduct Opinion (2011).
In a split opinion, the Federal Circuit has affirmed the district court’s determination that Calcar’s three asserted patents are unenforceable due to inequitable conduct during prosecution. The case teaches about “but-for materiality” and holds that the withholding of information can be the but-for cause of a patent issuance even if that information is insufficient to render any of the patent claims invalid in court. See also Therasense. The court winds this tale by noting the evidentiary difference: PTO only requires a preponderance of evidence of nonpatentability while invalidation in court requires clear and convincing evidence.
Duty of Disclosure, Candor, and Good Faith Dealing: Although lawyers always bear certain good faith obligations, those practicing before the before the PTO bear a more significant duty of disclosure, candor, and good faith dealing. Failure to meet this high standard has a number of potential repercussions — for patent owners, the greatest issue is the potential that resulting patents may be held undenforceable due to inequitable conduct in proceedings before the USPTO. Importantly, for any particular patent case, the duty of disclosure extends to all “individuals associated with the filing or prosecution.” 37 C.F.R. 1.56. This certainly includes named inventors as well as “every other person who is substantively involved” with the application. Id.
Therasense En Banc: In Therasense (Fed. Cir. 2011) (en banc), the court made it a bit more difficult to render a patent unenforceable by requiring (a) proof of a ‘bad’ act that is a but-for cause of the patent issuing as well as (2) particular intent that the act was intended to deceive the PTO. Conventional wisdom is that Therasense (as well as Excergen) has dampened many claims of unenforceability — especially those where the allegation is merely a failure to fully disclose to the USPTO all information related to patentability of the case in question.
Failure to Disclose Photos Taken of Prior Art: This case involves a family of three patents directed to a multimedia system used to access vehicle information and control vehicle functions. The district court found that Calcar’s founder and named inventor Michael Obradovich had particular information about a prior Acura 96RL navigation system that he failed to submit to the PTO. In particular, prior to starting work on his invention, Obradovich had driven the Acura, operated its navigation system, and taken photographs as well written a “QuickTips” guide. Although the application identified the 96RL system as prior art, Obradovich did not write a summary of his experiences or submit the photographs or the owner’s manual. The district court found this failure to be material to patentability and also that the “only reasonable inference from the evidence” was that Obradovich withheld the information with “specific intent to deceive the PTO.” On appeal, the Federal Circuit affirms.
But For Materiality: An interesting aspect of this case comes from the fact that the jury considered the non-submitted prior art but found that it failed to render any of the patent claims invalid. Yet, the courts here hold that the non-submitted prior art can still be considered a but-for cause of the patent issuing in the first place. The reasoning for this discrepancy is that that the PTO’s evidentiary standard for refusing to issue a patent is only a preponderance of evidence – a much lower standard that the clear and convincing evidence required to invalidate an issued patent. Here, the finding is that the USPTO would have found at least one of the claims obvious if it had seen the non-submitted prior art.
But Obviousness is a Question of Law: Under Graham and KSR, obviousness is a question of law that relies upon an underpinning of factual determinations. Although the court ignores the Graham inquiry in its analysis here, it appears that the only disputed issue is the ultimate legal question of obviousness and not the factual underpinning. The fact that we’re talking about a question of law is important because questions of law are not governed by evidentiary standards but rather both the PTO and Courts must approach that ultimate question with the same framework of simply correctly determining the law based upon the evidence presented.
The majority opinion was written by Chief Judge Prost and joined by Judge Wallach. Judge Newman wrote in dissent.
Judge Newman focuses on an interesting issue. She argues that, rather than speculating about what the PTO might do, lets look at what it actually did when it saw the references. Namely, the ‘497 patent (invalidated by the jury and not at issue here) was reexamined by the PTO during the course of the litigation and the examiners reviewed the previously non-submitted prior art and then confirmed all of the claims as patentable. However, Judge Newman’s arguments appear more appropriately addressed to the earlier court opinion in this case.
Nonetheless, my colleagues rule that the patents are unenforceable based on the initial failure to send the Owner’s Manual and photographs to the PTO. The inequitable conduct with which Mr. Obradovich is charged is that he “did not tell Mr. Yip [his patent attorney] about his experience with the 96RL, nor did he provide Mr. Yip with the Owner’s Manual or the photos of the navigation system display screens.” Dist. Ct. Op. at 11. However, the PTO established, on reexamination of the ’497 patent, that the purportedly withheld information was not material to patentability. In accordance with Therasense this ended the inequitable conduct inquiry, for the PTO sustained patentability in view of this information.
In addition, there was no evidence of intent to deceive the PTO. The panel majority impugns Mr. Obradovich’s credibility, although they do not say what is disbelieved. The jury heard and saw Mr. Obradovich, on examination and cross-examination, and did not find deceptive intent. My colleagues “infer” clear and convincing evidence of deceptive intent from Mr. Obradovich’s initial failure to send his patent attorney the Owner’s Manual and the photographs of the Acura display. They postulate that a savvy inventor and businessman such as Mr. Obradovich
would have known the information was material to patentability and would therefore withhold it in order to deceive the PTO. However, a more likely inference is that a savvy inventor and businessman would know that a patent obtained through concealment of a material reference is not a reliable commercial asset.
Jury verdicts are fascinating with their simple power. The jury is not asked to provide a long winded studied response to the case but rather to provide very simple responses to very difficult and complicated questions. A lawyerly answer would be ‘its complicated,’ but that option is not allowed on the verdict form.
Masimo v. Philips involved a two week jury trial — two weeks of testimony where the two companies cross-asserted blood-oxygen monitor patents with competing experts at every front. Following that, the jury was given a simple form and it sided with Masimo to the tune of $466 million dollars for past infringement.
Joe Re led the trial team for Masimo.
This is a bit of an in-the-weeds question, even for Patently-O.
Because firms tend to operate within a certain market area and use a particular technological approach, it makes sense that a patentee may well create prior art that blocks future innovations. One solution offered by the law is the “common owner ship excption.” In particular, the statutory definitions of prior art include the ‘common owner exception’ that excludes a right-owner’s prior-filed patent applications from the scope of prior art for later-filed applications so long as those prior applications were not published by the filing date of the later applications.
AIA Expansion of Exception: This is one area where the AIA reduced the scope of prior art. Namely, before the AIA the common owner exception excluded the prior applications only with regard to obviousness consideration (assuming different inventors). The AIA expands the exception to also exclude these prior-applications from anticipation consideration. With this expansion, we might expect some increase in double patenting problems.
Double Patenting Common Assignee but No Common Inventors: My question relates to the statements in MPEP 804 that examiners should issue double-patenting rejections when two commonly-owned inventions claim the same subject matter even when there is no overlapping inventorship:
Claims in commonly owned applications of different inventive entities may be rejected on the ground of double patenting. This is in accordance with existing case law and prevents an organization from obtaining two or more patents with different expiration dates covering nearly identical subject matter. See In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963) (the doctrine is well established that claims in different applications need be more than merely different in form or content and that patentable distinction must exist to entitle applicants to a second patent) and In re Christensen, 330 F.2d 652 (CCPA 1964). . . .
[A rejection is proper even when] the reference … and the pending application are … by a different inventive entity and are commonly assigned even though there is no common inventor.
The problem with the MPEP here is that the cases cited are not on-point – i.e., they do not say anything about whether a double patenting rejection may persist when there are no inventors in common. We know that statutory-double patenting is said to stem from 35 U.S.C. 101 and, likewise, we learned in AbbVie v. Kennedy Institute that obviousness-type-double-patenting also finds its roots in Section 101. The problem with that approach is that Section 101 remains old-school and still focuses on “inventors” rather than applicants or owners.
My Question: What is the legal source of the MPEP’s declaration that a double patenting rejection is proper based upon common-ownership even when the two documents have no common inventor? I suspect that there is a case on this, but I don’t know.
by Dennis Crouch
Although you might be the first-to-file a patent application covering a particular new innovation, certain market areas are so competitive that you should expect follow-on patents from competitors that take the original idea and push it in other similar-but-different directions. Those follow-on patents won’t block you from practicing your core invention, but they may well block you from implementing practical and important elements of a market-ready solution.
One potential partial solution to this problem is being offered by a new company out of Canes, France. The company, known as Cloem, has an interesting business model of creating tens-of-thousands of what they call “cloems” based upon a client’s submitted claim set. A cloem is a computer-generated claim (or statement of an invention) that is created by the various permutations possible as well as by considering alternative definitions for terms as well as “synonyms, hyponyms, hyperonyms, meronyms, holonyms, and antonyms.” The owner’s idea is that the cloems will be immediately published and then serve as prior art to prevent competitors from claiming rights to the whitespace surrounding the original patent. Customers might also want to cloam a competitor’s patent application to prevent them expanding that subject matter.
Cloem admits that a substantial number of its results are nonsense, but a substantial number are also on-the-money and, with 50,000 cloems per patent, they can afford to waste a few.
Questions remain: (1) whether these smart-but-random computer-generated cloems should count as prior art; (2) when one of the cloems represents a seemingly patentable invention, who is the inventor and is it patentable? Robert Plotkin wrote a book that considers some of this: The Genie in the Machine: How Computer-Automated Inventing is Revolutionizing Law and Business
I’m looking forward to a few upcoming events for patent law professionals:
- HOUSTON: On the evening of November 5, 2014, I will be delivering the University of Houston’s IP IL Annual Fall Lecture at the Four Seasons Hotel in Houston (Sponsored by the Katz Foundation). My talk will be on incentives (current and future) for patent clarity. [LINK]. Thank you to the University of Houston Law Center for hosting this event.
- AUSTIN: November 6-7, 2014, I will be down in Austin Texas participating in the annual Advanced Patent Law Institute with a talk titled Evidence Based Patent Law: Trends and Statistics, and What they Mean for Your Practice and your Patent Portfolio. [LINK]. Other speakers include Professors Golden (UT Austin), Lemley (Stanford), Wegner (formerly with GWU), and Hricik (Mercer); the Hon. Terry Rea and Randy Rader; Rob Sterne, et al.
- WASHINGTON DC: Unfortunately, a great conference is also scheduled in DC for November 6-7, 2014 in Washington DC. The Patents in Telecom conference, co-sponsored by University College of London (UCL) faculty of laws and GWU. Excellent and varied set of international speakers including Qualcomm president Derek Aberly, AT&T Chief IP counsel Glenn Blumstein, and Sir Christopher Floyd, Lord Justice at the Court of Appeal of England and Wales. Patently-O readers get a 10% discount with code: patently-o-2014
- WASHINGTON DC: On December 9, 2014, the IPO Education Foundation will be awarding its Distinguished IP Professional Award to Judge Richard Linn. Excellent choice and well deserved honor. The IPO has more information on the award dinner and their reasons for choosing Judge Linn. Hugh Herr will also be named inventor of the year for his work on prosthetics.
- VAIL: January 7-11, 2015, I will be in Vail, Colorado talking about patent law as part of the 32nd National CLE Confrence where they also happen to have “amazing skiing.” Conference co-chairs are Scott Alter (Baker Daniels) and David Bernstein (Debevoise & Plimpton ). [LINK]
- NAPLES: February 7-10, 2015: Hal Wegner’s annual Patent Experts Conference in Naples (FL) at the Naples Beach Hotel.
- USPTO: The USPTO’s AIA Roadshow continues with stops in Denver (Oct 2), Cupertino (Oct 7), and Atlanta (Oct 9). [LINK]
- COPENHAGEN: A late entry to this list is the October 21 event at Aarhus University in Denmark focusing on the upcoming UNIFIED PATENT COURT in Europe. Judge Rader will deliver the keynote. I would be most interested in hearing the discussion of how the UPC may impact patent licensing, competition and enforcement. [Link]
We also have a set of new job postings on the Patently-O Job Board.
- Patent Associate or Agent – Law Firm – Milwaukee, Wisc.
- Patent Attorney / Agent – Law Firm – Fairfax, Va.
- Patent Associate / Agent – Law Firm – Alexandria, Va.
- U.S. Patent Attorney – Law Firm – Tokyo, Japan
- IP Attorney – Large Corporation – Bloomington, Minn.
- Associate – Law Firm – Minneapolis, Minn.
- Research Analyst – Law Firm – Kansas City, Mo.
- Patent Attorney – Law Firm – Nationwide
- Patent Attorneys – Law Firm – Atlanta, Ga.
- Patent Litigation/Post-Grant Proceedings Associate – Law Firm – Alexandria, Va.
Fiscal Year 2014 has just ended for the Federal Government and – as expected – we have a new record number of US patent grants. For the first time, the USPTO has issued more than 300,000 utility patents in one fiscal year. Don’t worry, there remain more than 1,000,000 applications pending in the pipeline and more than 25,000 appeals remain pending before the Patent Trial and Appeal Board. During the fiscal year, the 8,300 patent examiners ‘disposed of’ more than 600,000 cases which in some circles will be calculated as an allowance rate of about 50%.*
Although I reported a rumored pull-back of allowed applications following the Alice Corp. decision in June 2014. However, the numbers do not reflect any dramatic reduction in the number of patents granted during this time period.
An important aspect of this new set of patents is that most corporate-owned U.S. patents are actually owned by foreign corporations stemming from inventions first created outside of the U.S. I believe that shift in who is directly benefiting from patent rights is an important element of the current US political-economy of patent law. Namely, while only US-operators are being sued for patent infringement, patent ownership is often vested in non-US operators.
* The USPTO identifies a case as being disposed of if it (1) issues as a patent (or when allowed), (2) is abandoned, or (3) is the subject of a request for continued examination (RCE). Because I see RCE filings as simply a part of the prosecution process, I do not think it should be used in calculating allowance rate. Result being that the allowance rate is effectively increased to about 70%.
Millipore v. AllPure (Fed. Cir. 2014)
Patent cases are incredibly expensive to litigate. However, in a series of recent cases courts have appeared more willing to dismiss cases on summary judgment or even on the pleadings. This case follows that trend with a holding that the defendant does not infringe the asserted patent claims — neither directly nor under the doctrine of equivalents. In a prior generation patentees could typically get to a jury with an allegation of infringement doctrine of equivalents. However, the court has simultaneously tightened the rules for DOE infringement and loosened the rules summary judgment — result being that infringement under the doctrine of equivalents is now regularly a summary judgment issue.
Millipore’s U.S. Patent No. 6,032,543 covers an aseptic system designed to add & remove fluid from a container without contamination. The asserted claims require, inter alia, a “removable, replaceable transfer member . . . comprising a holder, a seal for sealing said aperture, a hypodermic needle . . . wherein the seal has a first [bellows-shaped] end . . . and a second [self sealing membrane] end.” Now, it turns out that the accused AllPure TAKEone industrial aseptic sampling system has all these elements – a holder, a seal with the bellow and membrane ends, and the needle. In addition all of these parts are removable and replaceable.
AllPure’s key difference from the patented claim is that the collection of these parts are not removable as a unit but rather may only be removed by dis-assembly. In construing the claims, the district court wrote: ““the [remove] implies movement or separation of something as a whole, whereas [disassemble] implies deconstruction. . . What Millipore characterizes as removal of a transfer member from the magazine part is, in fact, disassembly of a transfer member.” Based upon that characterization of the patent and the accused device, District Court Judge Woodlock (D. Mass) found that the claims were not infringed.
On appeal, the Federal Circuit has affirmed — finding that the claimed “removable” transfer member requires that the transfer member be removable as a unit.
We agree with AllPure and the district court. If a transfer member does not exist when the device is disassembled, as even Millipore’s counsel admitted, then there is no genuine issue of material fact over whether the TAKEONE device contains a “removable, replaceable transfer member” as is literally required by claim 1.
Doctrine of Equivalents: Section 271 of the patent act identifies an infringer as someone who “without authority makes, uses, offers to sell, or sells any patented invention.” Although the “patented invention” is defined by patent claims, courts have long allowed patentees to enforce their exclusive rights to stop activity that is just-outside the literal scope of the claims. This doctrine of equivalents (DOE) has been with us for over 150 years See Winans v. Denmead, 56 U.S. 330 (1853)(‘The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions.’). However, the doctrine has been substantially limited by the all-elements-rule, Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997), prosecution history estoppel, Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002), and the doctrine of vitiation. see Wright Medical Technology, Inc. v. Osteonics Corp., 122 F.3d 1440 (Fed. Cir. 1997).
Narrowing Amendment Estoppel: In this case (as in most patents), the applicant had amended its claims during prosecution following a rejection by the patent office examiner to specify the portions of the seal (bellow-shaped and membrane ends). Although at the time the applicant also made a broadening amendment, this particular amendment was seen as narrowing and designed to recite limitations not found in the prior art. In particular, following the amendment the patentee argued that “none of the references show or disclose a seal formed like the present one.” A narrowing amendment is seen as a no-no for the doctrine of equivalents since allowing DOE would essentially allow the patentee to regain patent scope that had been given-up during the prosecution process. Under Festo, a narrowing amendment during prosecution creates a rebuttable presumption of prosecution history estoppel (PHE) with the result of estopping the patentee from claiming equivalents (DOE) to recapture the narrowed scope. Here, the appellate panel found that presumption had not been overcome and thus that the patentee was estopped from claiming equivalents.
Narrowing of Sub-Assembly = Narrowing of Whole Assembly: A problem with the defendant’s argument here (and what Judge Prost failed to explain) is the linkage between the narrowing amendment and the asserted equivalents. In particular, the narrowing amendment added limitations to the definition of the seal sub-assembly but the claimed equivalent was focused on the nature of the whole accused assembly as being disassemblable rather than removable as claimed. The only clue offered by the court is one phrase indicating that the amendment “narrows the seal limitation, which in turn narrows the transfer member limitation.”
Hierarchy of Elements: The battle over a hierarchy of limitations is common in modern doctrine of equivalents. Typically, the battle plays out in terms of the all-elements rule that requires the accused infringer practice each element of the asserted claim either literally or by equivalent. For patentees, this type of equivalents is typically easier to prove when each “element” is seen as a grouping of limitations – such as the “removable, replaceable transfer member” – and defendants typically look to further granularize the invention so that the “removable” limitation itself would be an element that must satisfy the function-way-result test. In this case – involving prosecution history estoppel – the patentee would have been better off with the more granularized framework in order to logically separate the “removable” limitation from the narrowed seal limitations. However, the appellate court glosses-over all of this analysis in its short decision with the unfortunate result of leaving district courts to do the same.
Guest post by Shubha Ghosh and Erika Ellyne
This post compares and contrasts the United States approach to patentable subject after last term’s Alice v CLS decision, with that in the European Union. The bottom line is that the EU may be now more favorable to software claims than the US.
In its 2014 Alice decision, the US Supreme Court makes clear that a two step test applies to determination of when an invention is patentable subject matter. First, the reviewer of the patent, whether patent examiner or judge, must determine if the patent covers an excluded area from patenting, such as an abstract idea or law of nature. If the patent covers an excluded area, the reviewer moves on to the second stage: whether there is an inventive concept that is an application of the abstract idea or law of nature. This two part test is a capstone to the Court’s prior decisions in Bilski v. Kappos (2010)(business method patents) and Prometheus v. Mayo (2012)(medical diagnostic and treatment patents).
By contrast, software is more easily patentable in Europe despite the existence of an express provision on the excludability of software. Article 52 of the EPC famously recites a list of ‘non-inventions’ that are excluded ‘as such’. The reading of this last condition has lead to a de minimis application of the provision. ‘Technical character’ is synonymous with invention in the EPO Board of Appeals’ (BoA) case law; any demonstration and degree of ‘technical character’ passes the patent eligibility threshold. The role of the technical feature is irrelevant; to the point that the mere use of technical means, such as a computer, renders a patent claim eligible (even the inclusion of the term ‘email ‘has ‘transformed’ a previously ineligible claim into an eligible one).
The European approach has been to adopt a formalistic rather than substantive approach; making patent eligibility a derisively low threshold. The US, on the other hand, has actively rejected this type of formalistic approach; neither adding the words ‘apply it’ to excluded subject matter nor the recitation of a computer can render the ineligible eligible. In Europe, the patent eligibility standard has become a question of drafting, a practice abhorred by patent Courts on both side of the Atlantic. In the end the standard is of little to no effect, looking at the context of its application no mixed claims (which recite a non invention along with other man made subject matter- where most questions arise) are ever rejected.
A technical application test can potentially help overcome the gaps/superficiality left open by the technical character test. The US approach suffers from its own ambiguities; the first branch of the US test, the determination of what is an ‘abstract idea’/subject matter is vague and in need of clarification/objectification. The European notion of ‘technical’, which is used in opposition to abstract in European case law as well, despite its numerous short comings could serve as a road map to a more developed test for abstraction. That is a subject for another day.
There are those that would counter that this is a determination for inventive step, that there is confusion here between eligibility and obviousness. It is true that in Europe, much of what is caught out under the US eligibly standards is further culled in the inventive step stage. However, in the inventive step assessment, much of inventive step is not about obviousness at all, but identification of the ‘invention’: the technical solution. The ‘problem solution’ approach usually proceeds first by the identification of the invention, the technical solution, to then derive the problem thereof. In this identification of the ‘technical solution’ a very controversial point is what extent ‘non technical features’, i.e. subject matter found under 52.2, can contribute to the technical effect/solution. At this stage, there is in fact a re-formulation of the invention; the main point of the tasks is a question of defining the invention not of ‘obviousness’ per se. The non-obvious determination is actually more a methodology than a veritable measure of ‘obviousness’ as such.
Shubha Ghosh is the Vilas Research Fellow & George Young Bascom Professor of Business Law at the University of Wisconsin School of Law where he is also the Associate Director of the Initiatives for Studies in Transformational Entrepreneurship (INSITE). Erika Ellyne is a law graduate and doctoral candidate at the Vrije Universiteit Brussel (Free University Brussels)
Patent Invalid for Unduly Preempting the Field of “Automatic Lip Synchronization For Computer-Generated 3D Animation Using a Rules-Based Morph Target Approach”
by Dennis Crouch
McRO (Planet Blue) v. Activision Blizzard, et al. (C.D. Cal. 2014) Decision PDF
In his second major Section 101 decision in as many weeks, Judge Wu (C.D. Cal) has relied upon Alice Corp. (2014) to invalidate all of McRO’s asserted patent claims. The case is quite important because it is one of the first major applications of Alice Corp. to invalidate non-business-method claims. Here, the invention is directed toward a specific technological problem that had troubled the field of animation – automatically animating lip synchronization and facial expression of animated characters. See U.S. Patent Nos. 6,307,576 (“‘576 Patent”) and 6,611,278 (“‘278 Patent”). The appeal will be interesting and may serve as one of the Federal Circuit’s first opportunities to draw a new line in the sand.
The problem addressed by the invention is that it has been historically quite difficult to match-up animation audio and video — so that the character’s mouth and face are moving to match the sound overlay. Historically, this has been very expensive and time consuming to do well. What you might call the ‘gist’ of the invention is simply a data transformation — from an audio signal to a visual animation output. The details are a bit more technical. According to claim 1 of the ‘278 patent, the invention operates by first creating a set of phoneme sequences keyed to a pre-recorded audio sequence. Then, those phenome sequences are used to create a set of morph-weight-set streams (based upon a set of factors provided by the animators). Those morph-streams are then used as input sequences for the animated characters to provide both timing and movement of facial expressions, including emotion. The inventions claim priority back to 1997.
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence;
obtaining a plurality of sub-sequences of timed phonemes corresponding to a desired audio sequence for said three-dimensional characters;
generating an output morph weight set stream by applying said first set of rules to each sub-sequence of said plurality of sub-sequences of timed phonemes; and
applying said output morph weight set stream to an input sequence of animated characters to generate an output sequence of animated characters with lip and facial expression synchronized to said audio sequence.
In writing about this patent claim, Judge Wu noted that – in isolation – it appears tangible and specific rather than abstract.
They are tangible, each covering an approach to automated three-dimensional computer animation, which is a specific technological process. They do not claim a monopoly, as Defendants argue, on “the idea that the human mouth looks a certain way while speaking particular sounds,” “applied to the field of animation.” Further, the patents do not cover the prior art methods of computer assisted, but non-automated, lip synchronization for three-dimensional computer animation.
Further, the defendants raised a defense of non-infringement – explaining that their particular method of automated lip synchronization is not even covered by the patents. Thus, Judge Wu writes: “At first blush, it is therefore difficult to see how the claims might implicate the ‘basic underlying concern that these patents tie up too much future use of’ any abstract idea they apply.”
However, Judge Wu recognized that the Supreme Court’s analysis of Alice Corp was not done in a vacuum but rather made reference to what was already known in the the art and asked whether the claimed invention extended that knowledge with an inventive concept that goes beyond a mere abstract idea. In Judge Wu’s words the Section 101 eligibility of “the claims must be evaluated in the context of the prior art.”
Judge Wu’s approach was to identify the point-of-novelty for the claimed invention and then consider whether that point-of-novelty was itself an abstract idea. That approach was made easy because the patents admitted that many elements of the invention were already part of thee prior art. However, the patents claimed the new elements as the use of rules that define morph sets as a function of the phonemes which the court sees an an abstract idea that cannot be patented because it would allow the patentee to “preempt the field of automatic lip synchronization for computer-generated 3D animation … using a rules-based morph target approach.” Thus, the claims are invalid.
Judge Wu does show some sympathy to the patentee here — indicating that it appears to be a nice and important invention – just one that is not patent eligible.
But a § 101 defect does not mean that the invention was in the prior art. The invention here may have been novel, but the claims are directed to an abstract idea. And the patent’s casual – and honest – description of the prior art was made at a time when, under the then-prevalent interpretation of the law, such admissions were unlikely to be harmful. One
unintended consequence of Alice, and perhaps of this and other decisions to come, is an incentive for patent applicants to say as little as possible about the prior art in their applications.
Although he does not cite the Supreme Court’s 1946 decision in Halliburton v. Walker, Judge Wu does offer closing remarks that hearken back to the principle that patent claims must be specific at the point-of-novelty. He writes: “This case illustrates the danger that exists when the novel portions of an invention are claimed too broadly.”
There are many interesting aspects to the decision, but I wanted to post these initial thoughts before moving forward.
I’m looking for a few examples of high quality software patents outside of the business method realm and that should remain patent eligible under Alice & Bilski. Only send me ideas that you are fine with being publicly discussed.
By Jason Rantanen
Last month, the American Bar Association’s governing body approved a requirement that all law students at ABA-accredited law schools take a minimum of six credit hours of clinical or other “experiential” coursework during law school. Since most law schools in the United States are accredited by the ABA, this new skills requirement will have a broad reach.
At the same time, several law schools have begun to ramp up their clinical intellectual property programs. And despite the general downturn in faculty hiring over the past few years, there is substantial activity in this particular area. Here are some of the current openings for clinical IP faculty:
Clinical Professor, Center for Intellectual Property Research, Indiana University – Bloomington Maurer School of Law. From the posting: “Indiana University Maurer School of Law (Bloomington) invites applications for a full-time faculty position in the school’s new intellectual property law clinic, a part of the Center for Intellectual Property Research.”
Clinical Professor and Director, Indie Film Clinic, Benjamin N. Cardozo School of Law of Yeshiva University. From Prof. Burstein: “Cardozo seeks a director for its Indie Film Clinic, which provides pro bono legal and business services — drafting and negotiating formation, acquisition, chain of title, and sales agreements and offering advice on licensing and fair use — for emerging and independent filmmakers in New York City. The clinic director will design and oversee all aspects of the clinic’s teaching and client-service missions, including working with partner organizations, supervising students in all aspects of business representation, and preparing and teaching a seminar component of the clinic.” More details available here: Indie Film job description
Transactional clinician, Boston College Law School. Boston College is searching for a transactional clinician, with IP within the search area. More details here: BC Clinical opening
Clinical Professor, Intellectual Property and Transactional Law Clinic, University of Richmond School of Law. From Prof. Cotropia: “The University of Richmond School of Law seeks a full-time clinical faculty member to develop, run, and teach our Intellectual Property and Transactional Law clinic, which provides non-litigation legal services to small businesses, entrepreneurs, non-profits, authors, and artists. The focus of the clinic is business formation, business transactions, and intellectual property issues, but the Clinical Professor will play a major role in determining the clinic’s specific emphasis and operation. ” Details here: https://richmond.csod.com/ats/careersite/JobDetails.aspx?id=418
Director, Intellectual Property and Technology Law Clinic, University of Southern California Gould School of Law. From the posting: “Applicants will be considered for continuous appointment to the Law School’s clinical professor track. The Director will be responsible for all aspects of running the IPTL Clinic, including: course planning and teaching; curriculum development; individual case and project work; client selection; intensive supervision and mentoring of law students in representing clients; and clinic administration. Clinical faculty members also typically teach one non-clinical course per year in addition to the clinic.” To learn more, visit the IPTL Clinic and read the job posting.
A magical aspect of intellectual property is in the way that rights can pervade a system without the need for the rights-holder to physically engage with the supply chain. Someone may have personal property rights in their chattel, but IP rights control aspects of how that chattel can be used or transformed. For example, although I own my computer, there are certain ways I might use my computer that would infringe patents or copyrights held by others. In this framework, IP rights can be thought of as a form of regulation – albeit with increased private involvement.
Ordinarily, when someone purchase goods, the purchase comes with all rights to use that good. However, the sale of goods with underlying IP rights certainly does not pass all rights in the IP. The exhaustion (first-sale) doctrines of copyright and patent laws provide some linkage by giving the purchaser of goods certain use-rights to the underlying intellectual property. However in the computer-related fields required end-user-license-agreements (EULAs) have now become the industry standard for limiting ownership rights — especially for digitally delivered media. Rather than “owning” the media, in many cases these contracts purport to only give users a limited and personal license. The common law tradition is to strike-down substantial use restrictions as effectively being unreasonable restraints on the market. However, it seems that the underlying IP rights have served as a basis for courts to favor “freedom of contract” over the traditional unreasonable-restraint-of-trade doctrines.
Representative Blake Farenthold (R-TX) has proposed a partial fix in his bill known as YODA: the You Own Device Act. The key provision focuses on copyright law and would add the following to Section 109 of the Copyright Act:
(1) IN GENERAL.—Notwithstanding section
106 or section 117, if a computer program enables any part of a machine or other product to operate, the owner of the machine or other product is entitled to transfer an authorized copy of the computer program, or the right to obtain such copy, when the owner sells, leases, or otherwise transfers the machine or other product to another person. The right to transfer provided under this subsection may not be waived by any agreement.
The EFF has praised the bill, but has also called for particular digital-first-sale rights and rights to access and modify software stored on your devices, and
What do you think of Facebook’s new patent in terms of Section 101? The patent (No. 8,844,058) issued on September 24, 2014 covers a social-networking data privacy method that basically allows users to specify what data a third-party App can share with others and that information is conveyed to the App. Claim 1:
A method comprising:
maintaining privacy settings for a first user of a social networking system, the privacy settings comprising a setting specifying which data about the first user a third party application may share with other users in the social networking system, the third party application maintained by an entity distinct from the social networking system;
receiving from the third party application, in response to use of the third party application by a second user, a request for information about the first user;
determining by a processor whether the setting specifying which data about the first user the third party application may share with other users in the social networking system allows the second user access to the requested information; and
communicating, to the third party application, which data about the first user the third party application may share with other users in the social networking system.
The patent includes two additional independent claims that are parallel, but claim the associated computer system and software (stored on a memory). The software was claimed as a “non-transitory computer readable medium storing one or more programs” in order to avoid a prior iteration of Section 101.
It seems to me that this case will be on the 101 chopping block.