Patent Docs

Quest USA Corp. v. PopSockets LLC (PTAB 2019)

October 28, 2019

Functional Language in Device Claim Ignored for Patentability Purposes

By Joseph Herndon —

The U.S. Patent and Trademark Office Patent Trial and Appeal Board recently issued a decision indicating that certain claims of a patent directed to the popular PopSockets are invalid. In Quest USA Corp. (Petitioner) v. PopSockets LLC (Patent Owner) (Case IPR2018-00497), the PTAB determined that Quest showed, by a preponderance of the evidence, that claims 9–11, 16, and 17 ("challenged claims") of U.S. Patent No. 8,560,031 are unpatentable.

Quest filed a Petition for inter partes review of claims 9–11, 16, and 17 of the '031 patent based on the five different grounds. Only one is discussed below—namely, claims 9–11, 16, and 17 as being anticipated by UK Patent Application GB 2 316 263 (Grinfas).

The '031 Patent

The '031 patent, entitled "Extending Socket for Portable Media Player," was filed on February 23, 2012. The '031 patent specification describes extending sockets for attaching to the back of a portable media player or media player case.

Figure 3A illustrates a preferred embodiment of the socket in an accordion shape in its expanded configuration.

Of the challenged claims, claims 9 and 16 are independent, and claim 9 is representative and reproduced below.

9. A socket for attaching to a portable media player or to a portable media player case, comprising:
    a securing element for attaching the socket to the back of the portable media player or portable media player case; and
    an accordion forming a tapered shape connected to the securing element, the accordion capable of extending outward generally along its [axis] from the portable media player and retracting back toward the portable media player by collapsing generally along its axis; and
    a foot disposed at the distal end of the accordion.

Overview of Grinfas

Grinfas relates to a collapsible sound conduit for attaching to a cellular telephone earpiece. Grinfas states that a concern had arisen regarding the safety of users of portable hand-held cellular telephones, namely with regard to radiation emitted by such telephones. To address such concern, Grinfas discloses a collapsible sound conduit placed between the telephone's earpiece and the user's ear, for enabling a user to maintain the telephone at a spaced distance away from the user's head to reduce radiation exposure while nevertheless maintaining an acceptable level of hearing.

Grinfas discloses that the collapsible sound conduit can be "attached to either the telephone or the carrying case," by bonding or fastening.

Figure 2 of Grinfas (shown below), shows an example of the collapsible sound conduit in use. Figure 3 of Grinfas (shown below) shows a cellular telephone 40 and collapsible sound conduit 42, wherein conduit 42 includes adhesive pad 46 for bonding the conduit to earpiece 44 of telephone 40.

Petitioner identified the collapsible sound conduit as the asserted socket for attaching to a portable media player or portable media player case.

Patent Owner disputed Petitioner's assertions that Grinfas discloses "a securing element" and "an accordion," as those terms are used in the claim.

The Board found that with regard to the recitation in claim 9 that the socket comprises "a securing element for attaching the socket to the back of the portable media player or portable media player case" ("securing element limitation"), there is no genuine dispute that Grinfas discloses the recited structure, namely "a securing element." However, the parties disputed whether the remaining language, "for attaching the socket to the back of the portable media player or portable media player case," recites 1) functional language that must be given patentable weight, or 2) an intended use that is not limiting.

As the Patent Owner pointed out, Grinfas describes attaching the collapsible sound conduit to the front of the telephone, whereas claim 9 recites a securing element for attaching the socket to the back of a portable media player.

The Board pointed to a number of Federal Circuit decisions, in which the Court stated that in an apparatus claim, "choosing to define an element functionally, i.e., by what it does, carries with it a risk." This is because it is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. This finds support from the notion that an apparatus claim covers what a device is, not what a device does. Thus, "[w]here all structural elements of a claim exist in a prior art product, and that prior art product is capable of satisfying all functional or intended use limitations, the claimed invention is nothing more than an unpatentable new use for an old product." Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 654 (Fed. Cir. 2011).

Thus, the Board found that because Grinfas discloses securing structures that are inherently capable of performing the function of attaching the asserted socket to the back of the portable media player, it has supporting disclosure for the limitation "a securing element for attaching the socket to the back of the portable media player or portable media player case."

The Patent Owner argued that the issue is not whether Grinfas' securing structures would adhere the conduit to the back of a phone, but rather was whether Grinfas discloses attaching the conduit to the back of a phone. Therefore, Patent Owner's argument was not about whether Grinfas' securing structures are capable of attaching a conduit to the back of a phone, but rather was about whether Grinfas discloses the function of attaching to the back of a phone. The Patent Owner argued that an expert declaration failed to provide evidence that the claimed function is necessarily present in Grinfas, and that expert testimony, without (additional) evidence is insufficient to establish inherency.

The Board disagreed that the Petitioner failed to establish inherency. In particular, the Board disagreed that the Petitioner is required to show that the claimed function is actually performed or must be performed when the full structure is described.

Thus, despite the cited art failing to describe the full use of the structure, as recited in the claim, and also being directed to a clearly different use altogether, it was found to anticipate the claim because the structure in Grinfas was capable of performing the recited use.

As a result, because Grinfas discloses a securing element inherently capable of being attached to the back of a portable media player, the Board found that Grinfas discloses the securing element limitation. Thus, the Board determined that Petitioner demonstrated, by a preponderance of the evidence, that claim 9 is anticipated by Grinfas.

Panel: Administrative Patent Judges Zado, Kaiser, and Margolies
Final Written Decision by Administrative Patent Judge Zado
Sigma-Aldrich Tries Again

October 27, 2019

By Kevin E. Noonan —

Any party who has ever come before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) quickly realizes the extent to which the Board enforces procedural niceties. This tendency sometimes leads to logically incongruous results; for example, in its St. Regis Mohawk Tribe v. Mylan decision, the Board cited as sufficient grounds for denying the Tribe's motion to dismiss on sovereign immunity grounds, that there was no precedent for that decision (while conceding that it was a case of first impression). But that basis for denying the motion was consistent with the Board rule (37 C.F.R. § 41.121(b)) that the proponent of a motion bears the burden of establishing its right to the relief requested. (Fortunately, the Board reached the merits in supporting its decision.)

Sigma-Aldrich found itself in a similar situation, recently, related to its filing of an extraordinary motion to the Director and the Chief PTAB Judge, asking the Office to declare an interference between the University of California et al.'s patents and applications directed to CRISPR technology and its own applications having an earlier filing date (see "Sigma-Aldrich Wants Its Piece of CRISPR Pie"). Sigma's motion was based on the PTO's refusal to find its claims in condition for allowance, a perquisite for declaring an interference. Sigma made compelling arguments in its Petition, including that the Examiner (according to the Petition) provided no legal justification for refusing to acknowledge what Sigma contends is the precedential value of the decisions in the earlier interference. Sigma argued (to the Examiner and in its Petition) that if the Doudna et al. provisional applications did not provide sufficient support to find the Broad's claims obvious (in an interference context) they cannot support a determination of obviousness in ex parte patent prosecution involving Sigma's applications.

The Office dismissed this Petition without prejudice on September 23rd. To these arguments, the Board recited procedural deficiencies in Sigma's Petition; specifically, the Board dismissed the Petition (without prejudice) on the grounds that: 1) the petition is improper, because Sigma had included multiple petitions filed under different regulations, in contravention of 37 C.F.R. § 1.4(c); 2) the proper route to challenge the Examiner's decision was to appeal, under 37 C.F.R. § 41.21 (ignoring Sigma's argument that it would be prejudiced if required to appeal, in view of the delay that would be occasioned by appeal); 3) that declaring an interference would be "premature" because no claims were deemed allowable, as required under 37 C.F.R. § 41.102; and 4) Sigma had not satisfied the requirements of 37 C.F.R. §§ 41.202(a) and 41.202(d), governing suggesting an interference or adding an application to an interference (including, inter alia, "identify[ing] all claims that the applicant believes interfere, as well as propos[ing] one or more counts, and [explaining] how the claims correspond to the proposed count(s)") and explaining why the proponent would prevail on priority.

Sigma has replied to dismissal of its petition by refiling the petition in all its related, pending applications (U.S. Application Nos. 15/188,911, 15/188,924, and 15/456,204) and filing a paper in satisfaction of 37 C.F.R. §§ 41.202(a) and 41.202(d) suggesting the Office declare an interference between each of these applications and California's U.S. Applications Nos. 15/9547,718 and 15/981,809 (whole "reserve[ing] the right to supplement the request" for additional patents and applications). Also filed were amendments to the claims, a response to an outstanding Office Action in the '911 application, and extensive support for these amendments and the suggestion for interference. Except for these additional submissions and reference to the dismissal without prejudice of its initial Petition, Sigma's arguments were substantially reiterated, that the Examiner refused to be persuaded by Sigma's evidence and refused to recognize the allowability of its pending claims (reminding the Office that in the latest Office Action, in the '911 application, the phrase "unpersuasive" (or its equivalent) was repeated "over 70 times"). Sigma again argues that "[f]or the effective administration of justice, efficiencies of the USPTO and the parties, conservation of considerable valuable resources, and the public interest," the new interference should be declared (between Berkeley and Sigma in its petition; it is difficult to see the USPTO not including the Broad et al. patents in any such interference). And Sigma continues to argue that the delay that would be occasioned by following the Office of Petition's application of the rules by filing an ex parte appeal.

It took the Office about five weeks to render its decision on the Petition; if the Office considers Sigma's arguments on the merits, it is likely to take somewhat longer for Sigma to get a decision. In the meantime, the current interference between University of California et al. and The Broad Institute and its friends had continued apace (see "CRISPR Interference Parties Propose Motions"; "PTAB Redeclares CRISPR Interference and Grants Leave for Some (But Not All) of Parties' Proposed Motions"; "CRISPR Interference: Motion Practice; Broad Institute Takes Its Turn in Interference Motion Practice"; and "University of California/Berkeley et al. Authorized to File Motion Opposed to Broad Substantive Motion No. 1"). Sigma may have lost its moment, but it is not hindered by the Board's prior decision that there is no interference-in-fact with California's claims (or The Broad's) and, eventually, may have the opportunity to challenge claims from either or both parties to priority for CRISPR technology.
MBHB Webinar on Drafting Life Sciences Claims to Satisfy the Written Description and Support Requirements

October 27, 2019

McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled "Drafting Life Sciences Claims to Satisfy the Written Description and Support Requirements in the U.S. and Europe" on November 7, 2019 from 10:00 am to 11:15 am (CT). In this presentation, Patent Docs author and MBHB attorney Donald Zuhn, MBHB attorney Nathaniel Chongsiriwatana, and Forresters attorney Charlotte Teall will discuss and compare compliance with the written description and support requirements in the U.S. and Europe for claims directed to life sciences inventions.

While there is no fee to participate, attendees must register in advance. Those wishing to register can do so here. CLE credit is pending for the states of California, Illinois, New Jersey, New York, North Carolina, and Virginia.
IPO Webinar on Inventorship

October 27, 2019

The Intellectual Property Owners Association (IPO) Open Source, Software Related Inventions, and Trade Secrets Committees will offer a one-hour webinar entitled "Inventorship: Lessons from Recent Disputes" on October 30, 2019, from 2:00 to 3:00 pm (ET). Manisha Desai of UCB Pharmaceuticals, Brian Hubbard of Condo Roccia, and Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff LLP will look at recent disputes over inventorship to draw lessons for managers of IP and for litigators. The panel will analyze:

• The pluses and minuses for patent owners and challengers of the USPTO's new derivation proceeding versus U.S. district court litigation;
• Litigation between employers and inventors, including a Federal Circuit decision illustrating the pitfalls of securing ownership of patent rights through an employment agreement, and another showing how failure to name all inventors may bar patentabilty; and
• The potential disruption caused by failure to carefully monitor R&D collaborations between companies or between corporate and academic collaborators.

The registration fee for the webinar is $135 (IPO member) or $150 (non-member) (government and academic rates are available upon request). Those interested in registering for the webinar can do so here.
In re General Electric Co. (Fed. Cir. 2019)

October 24, 2019

By Kevin E. Noonan —

Since the present reissue statute was enacted as part of the 1952 Patent Act, the Patent Office has granted almost eight million utility patents and less than twenty-five thousand reissue patents. Nevertheless, reissue practice, while arcane, is a useful tool for a patentee to correct patents that claim too little (within 2 years from grant) or too much (at any time during the term of the patent) or that are defective for other reasons. But besides the two-year limitation on broadening reissue applications, there are limits to what can be changed under the reissue statute, the most significant of these being the recapture rule, as the Federal Circuit held properly prevented General Electric Co. from reissuing U.S. Patent No. 7,990,705 in In re General Electric Co.

The Patent Trial and Appeal Board upheld rejection of three applications stemming from reissue of the '705 patent, which was "directed to synthetic jet enhanced convection cooling of component enclosures, which encompass a heat-generating element" and "describes using a synthetic jet assembly to direct jet fluid toward or onto the external surface of such enclosures." As set forth in the opinion, the '705 patent issued with three independent claims:

1. A component enclosure comprising:
    one or more sidewalls defining a volume configured to substantially surround a heat generating component positioned within said volume; and
    a synthetic jet assembly positioned adjacent at least one of the sidewalls, said synthetic jet assembly including at least one synthetic jet ejector comprising a jet port, said jet port aligned at least one of perpendicularly, parallelly, and obliquely with a surface of said at least one sidewall, said synthetic jet assembly is configured to direct a jet of fluid through said port at least one of substantially parallel to said surface, perpendicularly onto said surface, and obliquely toward said surface.

9. A method of increasing cooling of an enclosure, said method comprising positioning a synthetic jet assembly adjacent at least one of a plurality of side- walls of the enclosure, the synthetic jet assembly including at least one synthetic jet ejector including a jet port, the jet port being aligned at least one of perpendicularly, parallelly, and obliquely with a surface of the at least one sidewall, the synthetic jet assembly being configured to direct a jet of fluid through the jet port at least one of substantially parallel to the surface, perpendicularly onto the surface, and obliquely toward the surface.

17. An electronic component system comprising:
    a component enclosure comprising a plurality of sidewalls defining a volume;
    a heat generating component positioned within the volume; and
    a synthetic jet assembly positioned adjacent at least one of the plurality of sidewalls, said synthetic jet assembly including at least one synthetic jet ejector comprising a jet port, said jet port aligned at least one of perpendicularly, parallelly, and obliquely with a surface of said at least one sidewall, said synthetic jet assembly is con- figured to direct a jet of fluid through said port at least one of substantially parallel to said surface, perpendicularly onto said surface, and obliquely toward said surface.

GE filed a reissue application that, when faced with a restriction requirement from the Examiner, became the three applications on appeal in this case (Nos. 14/593,087, 15/070,427, and 15/070,483). "The '087 application claims the component enclosure/jet assembly combination while the '427 and '483 applications claim the jet assembly subcombination," according to the opinion.

The PTAB found all three applications had claims that violated the recapture rule, which specifies that "[a]n inventor may not . . . recapture through reissue subject matter that was surrendered to obtain allowance of the issued claims," as set forth in In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011); see In re Willingham, 282 F.2d 353, 357 (CCPA 1960); Haliczer v. United States, 356 F.2d 541, 545 (Ct. Cl. 1966). The grounds for rejecting the pending claims of all three applications was"

The Board found (1) that the reissue claims were broader than the issued claims because the reissue claims can read on a jet assembly unattached to a sidewall whereas the '705 patent's claims cannot; (2) that the broadened aspect of the reissue claims relates to surrendered subject matter, i.e., an unattached jet assembly; and (3) that the surrendered subject matter had crept into the reissue claims because the attachment-related limitations added during prosecution were entirely absent from the proposed reissue claims.

The Federal Circuit affirmed in a per curiam opinion from a panel comprised of Judges Moore, Reyna, and Chen. The opinion sets forth the analytical framework for applying the rule: first, "we determine whether and in what aspect the reissue claims are broader than the patent claims," In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). Second, we "determine whether the broader aspects of the reissue claims relate to surrendered subject matter," citing In re Clement, 131 F.3d 1464, 1468–69 (Fed. Cir. 1997). Third, we "determine whether the surrendered subject matter has crept into the reissue claim." Id. at 1469. "Violation of the rule against recapture may be avoided under this final step of the analysis if the reissue claims 'materially narrow' the claims relative to the original claims such that full or substantial recapture of the subject matter surrendered during prosecution is avoided." Mostafazadeh, 643 F.3d at 1353. Put another way, "[t]he narrowing must . . . relate to the surrendered subject matter." Id. at 1359; N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1350 (Fed. Cir. 2005). The exception to the recapture rule is that the rule does not apply to "overlooked" elements, that were "never claimed and thus surrendered," citing In re Youman, 679 F.3d at 1347.

Reviewing how the PTAB applied the rule to the claims in the three divisional reissue applications, the panel held that the Board had correctly applied the rule to the pending claims of the '087 application because these claims were broader than the claims of the '705 patent and the '705 patent claims had been limited during prosecution to embodiments where the synthetic jet "is formed integrally with a surface of at least one of the sidewalls and external to said volume," and "that the jet of fluid flows external to said volume" (limitations also contained in '705 patent claims 7 and 13, according to a footnote in the opinion). The panel held that "elimination of the attachment limitation expanded the scope of the claims to cover unattached jet assemblies [that] were surrendered during prosecution."

In additional support for their conclusion, the panel noted that during prosecution (of the original application), the applicant was compelled to add language reciting attachment to a side wall to overcome prior art, because the Examiner was not persuaded to patentability by amendments that merely added limitations related to positioning of the synthetic jet. The Federal Circuit held on this record from the prosecution history that the Board was correct in determining that the surrendered subject matter was an unattached jet assembly.

The panel also rejected GE's arguments that other aspects of the amended claims narrowed their scope, saying that "[a]ny narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter and therefore insufficient to avoid recapture," citing Mostafazadeh, 643 F.3d at 1358. And the opinion also rejected GE's "overlooked aspect" arguments on the grounds that "[e]ach purportedly narrowing limitation identified by General Electric was within the scope of at least one original claim of the '705 patent and therefore, cannot be said to be an 'overlooked aspect' [of the claims]."

Finally the panel similarly rejected the "overlooked aspects" argument with regard to the '427 and '483 divisional applications, on the basis that these particular embodiments were within the scope of the original claims.

Reissue applications can be valuable tools to obtain claims of appropriate scope (particularly in conjunction with inter partes review, where amendments are much more difficult to come by). But as this decision illustrates, it is equally important to keep in mind during prosecution the scope that is being relinquished and, should broader scope be necessary or advantageous to keep a continuation or divisional application pending.

In re General Electric Co. (Fed. Cir. 2019)
Nonprecedential disposition
Panel: Circuit Judges Moore, Reyna, and Chen
Per curiam opinion
USPTO Issues Proposed Rules on Burden of Proof for Motions to Amend in Post-Grant Proceedings

October 23, 2019

By Joshua Rich —

When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions: the movant, here the patentee, bore the burden of production of evidence and the burden of persuasion on the issue of patentability of the proposed substitute claims. Then, the Federal Circuit's decision in Aqua Products[1] in 2017 made it clear that there was no such rule allocating the burden of persuasion. Since then, the PTAB has required the petitioner in post-grant proceedings to persuade it that the proposed amended claims are not patentable. The USPTO now seeks to codify that standard in its regulations, amending the rule only to allow itself discretion in rare circumstances.

The proposed regulations (37 CFR §§ 42.121 and 42.221) include three basic points. First, the patentee will still bear the burden of persuasion by a preponderance of the evidence on certain procedural points: that there are a reasonable number of substitute claims, that the amendment does not broaden the scope of the claims, that there is written description support for the new claims, and the like. Second, the petitioner will then bear the burden of proof to show by a preponderance of the evidence that the proposed substitute claims would be unpatentable. Third, the PTAB retains discretion to grant or deny any motion to amend in the interests of justice, so long as the reason for its decision is supported by the evidence of record.

The road to the proposed regulations started with the Federal Circuit's Aqua Products case.[2] Although the Court was fractured, Judge O'Malley explained in the lead opinion the points of general agreement:

The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee.

872 F.3d at 1327. In a separate opinion — also joined by a majority of the judges — Judge Reyna noted that the lack of any rule on the burden of persuasion did not extend to the burden of production:

There is no disagreement that the patent owner bears a burden of production in accordance with 35 U.S.C. § 316(d). Indeed, the Patent Office has adopted regulations that address what a patent owner must submit in moving to amend the patent.

Id. at 1341. Thus, Aqua Products found that the patentee had been assigned the burden of production on motions to amend, including with regard to the formalities set forth in the regulations. However, it found the patentee did not bear the ultimate burden of persuasion on patentability.

The PTAB then brought its decisions in line with the Federal Circuit's holdings and placed the burden of persuasion on the petitioner in post-grant proceedings. However, it made it clear that the "Board itself may justify any finding of unpatentability by reference to evidence of record in the proceeding," such as when the petitioner has stopped prosecuting the case due to settlement. See Western Digital Corp. v. SPEX Techs., Inc., Case Nos. IPR2018-00082, -00084 (P.T.A.B. Apr. 25, 201) (Paper 13). The USPTO also sought comments from the public on two questions related to the burden of proof for motions to amend. First, should it engage in formal rulemaking to codify its decision in Western Digital? Second, if the burdens are allocated as set forth in Western Digital, when should the Board itself act to justify unpatentability?

The USPTO received 49 comments, 25 of which provided specific answers to the questions it posed. The vast majority of the specific responses were in favor of rulemaking, and a smaller majority suggested that the rules should mirror the Western Digital decision. Similarly, a substantial majority believed that the PTAB should not be limited to any specific posture of the proceedings in which to exercise discretion on patentability. However, two believed that the PTAB should never be permitted to exercise discretion and three believed that it should only be permitted to do so in certain factual scenarios (such as when the petitioner stops participating).

Thus, the USPTO promulgated the draft rules. In doing so, it suggested that the PTAB will rarely exercise its discretion to find a lack of patentability on its own, most likely when the petitioner stops participating (including due to settlement) or when it does not oppose the motion to amend. Importantly, however, the reasons for refusing an amendment must already appear in the record and be in the interests of justice. On the other hand, even if the patentee fails to make its required showings in its motion to amend, the PTAB can exercise its discretion to allow amendment in the rare situation it believes justice suggests it do so if the evidence needed to permit the amendment is already in the record.

The draft rules are open for comment until December 23, 2019. Given Director Iancu's push to make amendment a viable option in post-grant proceedings, however, it is likely that they will be adopted relatively quickly and in similar form to the draft rules.

[1] Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc).

[2] A complete summary of the Aqua Products case can be found at https://www.patentdocs.org/2017/10/aqua-products-inc-v-matal-fed-cir-2017.html
Patent Docs Celebrates 13 Years of Operation

October 21, 2019

Thirteen years ago today, we began publishing Patent Docs, a weblog that initially focused on recent developments in biotech and pharma patent law, and has since expanded to cover all things patent-related. After thousands of posts and millions of words; after the claims-and-continuation rules debacle; the America Invents Act and all the bills that preceded it; the BPCIA from its enactment to recent interpretation by the courts; Bilski, Mayo, Myriad, Alice, Sequenom, and Athena; Ariad and KSR; Dudas, Rogan, Rea, Kappos, Lee, and Iancu, we have been blessed by our readers and patent law's seemingly inexhaustible number of interesting (and occasionally frustrating) things to write about. We look forward to the future, and having you all with us. Thanks for reading.
Federal Circuit Invalidates Edison’s Light Bulb Patent

October 20, 2019

By Michael Anderson and Michael Borella —

August 27, 1890

WASHINGTON D.C. The ups and downs of Mr. Thomas A. Edison's inventions related to electrical lighting continue. After his U.S. Patent No. 223,898 for an "Electric Lamp" was found to be valid in the Circuit Court of the Western District of Pennsylvania, the case was appealed to the Federal Circuit. Oral arguments were held this Spring and the decision of the Court came down last week, invalidating Mr. Edison's claims.

The Court (a panel of three appellate judges) applied curious reasoning. They began by describing what they referred to as "laws of nature" and "natural phenomena" — properties of nature that exist independently of the human experience — one of which was the basis of the invention:

Incandescence is a form of thermal radiation that results from heating a body to the point that it produces visible light. Virtually all solids and liquids exhibit incandescence if a proper amount of heat is applied, as described in Lardner's 1833 Treatise on Heat. Indeed, light from the sun is generated from incandescence. Thus, incandescence is a natural law; that is, a phenomenon that is produced by nature and not the hand of humankind.

The Court went on to explain that, to be patentable, an invention based on a natural phenomenon must include an inventive concept that is not "well-understood, routine, and conventional" and that provides "significantly more" than the excluded phenomenon itself. Otherwise, one could patent "what should be in the public domain and free for all to use as they see fit." Ultimately, the Court found that Mr. Edison's patent did not meet this requirement and was therefore an improper attempt to obtain a patent on an effect of the world we live in rather than an inventive modification thereof.

The claims of the '898 patent recite:

1. An electric lamp for giving light by incandescence, consisting of a filament carbon of high resistance, made as described, and secured to metallic wires, as set forth.

2. The combination of carbon filaments with a receiver made entirely of glass and conductors passing through the glass, and horn which receiver the air is exhausted, for the purposes set forth.

3. A carbon filament or strip coiled and connected to electric conductors so that only a portion of the surface of such carbon conductors shall be exposed for radiating light, as set forth.

4. The method herein described of securing the platina contact-wires to the carbon filament and carbonixin of the whole in a closed chamber, substantially as set forth.

Based on their broad language, the Court rapidly concluded that "the claims clearly involve a laws of nature, namely that of generating incandescence by heating a resistive wire through conduction of electricity." Justifying this decision, the Court wrote, "[p]henomena of nature, though just discovered, are not patentable, as they are basic and fundamental to ongoing scientific and technological work, and monopolization of such central principles through the grant of a patent might tend to impede innovation rather than promote it."

The Court made analogies to other discoveries of natural laws, and noted that "Newton could not have patented his celebrated discovery of law of gravity nor could Pythagoras have patented his theorem regarding relationship between the side lengths of a right triangle . . . [l]ikewise, we cannot affirm the validity of a patent on a fundamental process of the physical universe that likely existed well before the Earth itself."

Having establishing that Mr. Edison's claims are directed to a natural phenomenon, the Court addressed the follow-on question of whether those claims were drawn narrowly and to an unconventional application thereof. The Court observed that, "[t]o transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words 'apply it.'" Such a claim, in the Court's view, would just be "a clever drafting exercise designed to monopolize the law of nature itself."

Thus, the Court considered the language of the claims, looking for the aforementioned inventive concept in the additional elements. In doing so, it determined that these elements encompassed "metallic wires, glass, and a closed chamber," but that each was in routine use by experimenters at the time of Edison's invention.

The Court observed that the claimed metallic wires are conventional means for conducting electricity, and that it is routine to perform laboratory tests inside a chamber to prevent reactions from being contaminated by the outside world. Moreover, performing such a well-understood process in a controlled environment is a fundamental basis of experimentation. The extension of the laboratory testing conditions to an end product by sealing a glass chamber containing the "filament of high resistance" is nothing more than a conventional application of such laboratory conditions. As examples of the well-understood nature of the additional elements, the Court pointed to the 1761 work of Ebenezer Kinnersley in heating metallic wires to incandescence, the Belgian Marcellin Jobard who produced an incandescent light bulb in 1838 using a vacuum chamber, as well as the Russian Alexander Lodygin who, in 1872, demonstrated an incandescent light bulb in a glass enclosure.

Moreover, Mr. Edison stated in his patent that others have already been able to produce light through incandescence:

Heretofore light by incandescence has been obtained from rods of carbon of one to four ohms resistance, placed in closed vessels, in which the atmospheric air has been replaced by gasses that do not combine chemically with the carbon.

Mr. Edison went on to state that "[t]he leading-wires have always been large, so that their resistance shall be many times less than the burner." Because incandescence through one to four ohm resistance filaments was known, the Court observed that the basic application of the scientific principles of Ohm's and Joule's laws dictates that a higher-resistance filament would simply cause a reduction of the current required to cause incandescence. Therefore, based on these scientific principles, smaller wires and less power would be needed for incandescence. Thus, in the Court's view, Mr. Edison has conceded both that incandescence from carbonized elements in closed vessels and that the claimed structure and ratios of resistances between wires and filaments were already known.

Particularly, Mr. Edison does not claim that he created a new apparatus. Indeed, "Mr. Edison did not invent the claimed electric light structure, nor was he the first to observe the physical phenomena of incandescence." Instead, "Mr. Edison simply uses well-known components for their intended use according to the principles dictated by established laws of electronics."

Thus, the Court found that "[t]hese conventional components, all generic, are unable to transform the claimed invention into significantly more than the natural phenomenon." Furthermore, "when considered in combination, these elements add nothing beyond the elements individually, and the combination of elements fails to improve the functioning of an electronic bulb beyond what is expected by laws of nature."

Mr. Edison argued that because "the particular laws of nature that the claims embody are narrow and specific, the patents should be upheld." But the Court disagreed, stating that "[a] patent upon a narrow law of nature may not inhibit future research as seriously as would a patent upon Newton's discoveries, but the creative value of Mr. Edison's discovery is also considerably smaller." Moreover, "even a narrow law of nature can serve to inhibit future research."

The Court concluded, "[f]or these reasons, we hold that the patent claims at issue here effectively encompass the underlying laws of nature themselves and are consequently invalid."
IPO Webinar on IP Protection for Data

October 20, 2019

The Intellectual Property Owners Association (IPO) Open Source, Software Related Inventions, and Trade Secrets Committees will offer a one-hour webinar entitled "IP Protection for Data" on October 23, 2019, from 2:00 to 3:00 pm (ET). Brian Adams of Qualcomm Technologies, Inc., Ken Corsello of IBM, and Sameer Vadera of Kilpatrick Townsend & Stockton LLP will address the different ways that data and databases are protected under U.S. law, including the benefits and disadvantages of different IP frameworks such as copyright and trade secrets, and contrast them with data protection laws outside the U.S. The panel will also discuss the use of contracts to protect data and recent court decisions explaining the scope of IP protection for data and databases. The future of data will also be discussed, including the open data movement, in which advocates promote the application of open source software principles to the collection and distribution of data.

The registration fee for the webinar is $135 (IPO member) or $150 (non-member) (government and academic rates are available upon request). Those interested in registering for the webinar can do so here.
USPTO Publishes Update to Its Subject Matter Eligibility Guidance

October 17, 2019

By Michael Borella —

Early today, the U.S. Patent and Trademark Office released an update to its January 2019 Subject Matter Eligibility Guidance. Unlike the January Guidance, which represented a significant change in how the USPTO applies § 101 in examination and PTAB proceedings, this October Update is primarily an effort to clarify issues brought up by public comments on the January Guidance. While not exactly much ado about nothing, the October Update provides few changes to USPTO's stance on § 101.

The October Update discusses five areas of § 101 analysis and procedure in detail, and is accompanied by four new hypothetical § 101 examples, an index of all such examples published since early 2015, and an updated spreadsheet of § 101 court cases. The October Update itself is discussed below, with emphasis on the abstract idea judicial exclusion, and the new examples will be covered in future articles.

The backdrop to the § 101 guidance is 2014's Alice Corp. vs. CLS Bank Int'l Supreme Court holding. Therein, the Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101. These parts are denoted by the USPTO as steps 2A and 2B, respectively (step 1 is to determine whether the claimed invention is one of the four statutory categories of subject matter set forth in § 101, and is rarely at issue in practice).

Under step 2A, one must decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then under step 2B one further decides whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. Elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle. While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

The January Guidance breaks the first part of the Alice test into two sub-steps (let's call them 2A(i) and 2A(ii) for purposes of clarity). In the former, one determines whether the claim recites a judicial exception, such as an abstract idea. In the latter, one determines further "whether the recited judicial exception is integrated into a practical application of that exception."

To focus the analysis, the January Guidance indicates that, under step 2A(i), all abstract ideas should fall into one of three categories: mathematical concepts, certain methods of organizing human activity, and mental processes. Think of these as the "Three M's" — math, money, and mental steps.

If the analysis moves on to sub-step 2A(ii), the one determines "whether the claim as a whole integrates the recited judicial exception into a practical application of the exception." Such a claim "will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception."

And now, on to the guts of the October Update

When Does a Claim Recite a Judicial Exception?

Given the use of the vague term "recite" in step 2A(i), it is not surprising that some have taken issue with how this sub-step is to be applied in practice. The USPTO attempts to clarify what it meant in the January Guidance:

[A] claim recites a judicial exception when the judicial exception is "set forth" or "described" in the claim. While the terms "set forth" and "describe" are thus both equated with "recite," their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diamond v. Diehr clearly stated a mathematical equation in the repetitively calculating step, such that the claims "set forth" an identifiable judicial exception, but the claims in Alice Corp. v. CLS Bank, "described" the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."

The USPTO goes on to state that multiple judicial exceptions can be recited in a claim, and if they are of different types (e.g., an abstract idea and a law of nature), then MPEP 2106.05(II) controls ("If . . . the claim clearly recites a plurality of discrete exceptions, then for purposes of examination efficiency, examiners should select one of the exceptions and conduct the eligibility analysis for that selected exception."). For multiple abstract ideas recited by the same claim (e.g., a mental process and a mathematical concept), the USPTO strongly recommends that these exceptions also be analyzed together.

The Grouping of Abstract Ideas

As noted above, the January Guidance places all abstract ideas into one of three categories (with rare exceptions). The October Update further clarifies the scope of these categories.

Regarding mathematical concepts, the USPTO writes:

When determining whether a claim recites a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations), examiners should consider whether the claim recites a mathematical concept or merely includes limitations that are based on or involve a mathematical concept. A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept. For example, a limitation that is merely based on or involves a mathematical concept described in the specification may not be sufficient to fall into this grouping, provided the mathematical concept itself is not recited in the claim. (Emphasis added.)

Applying this determination involves some rather thin bacon slicing, and was illustrated in § 101 example 38. We have previously discussed how the USPTO's analysis of example 38 provided more questions than answers and needed clarification. Unfortunately, the October Update does not address the problems with example 38, and even suggests the opposite outcome.

The USPTO does clarify, however, that "[a] mathematical relationship may be expressed in words or using mathematical symbols." The same holds for mathematical formulas or equations and mathematical calculations. Particularly, "a claim does not have to recite the word 'calculating' in order to be considered a mathematical calculation . . . a step of 'determining' a variable or number using mathematical methods or 'performing' a mathematical operation may also be considered mathematical calculations."

Regarding certain methods of organizing human activity, the USPTO indicates that "not all methods of organizing human activity are abstract ideas (e.g., a defined set of steps for combining particular ingredients to create a drug formulation is not a certain method of organizing human activity)." Nonetheless, this category has proven to be used quite expansively by examiners. While the USPTO indicates that "this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings," this definition remains broad. The USPTO goes on to provide examples of these sub-groupings, but there are no surprises therein.

Regarding mental processes, the USPTO's definition thereof reflects a legal fiction set forth by the Federal Circuit. Notably, "claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions," but "[c]laims can recite a mental process even if they are claimed as being performed on a computer." The justification for this non-literal interpretation is that "[t]he courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite a mental process even though the claim limitations are not performed entirely in the human mind."

Nonetheless, "[c]laims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations." Examples include "calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals," "detecting suspicious activity by using network monitors and analyzing network packets," "a specific data encryption method for computer communication involving a several-step manipulation of data," and "rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask."

The distinction between mental and non-mental processes under this rubric is that "merely using a computer as a tool to perform the [otherwise mental] concept" fails to lift an invention out of the mental realm, and examiners are encouraged to look to the applicant's specification in order to make this determination. Furthermore, "[t]he use of a physical aid (i.e., the pen and paper) to help perform a mental step (e.g., a mathematical calculation) does not negate the mental nature of this limitation."

When is a Judicial Exception Integrated into a Practical Application?

In practice, we have found that most § 101 disputes with the USPTO examiners or PTAB turns on sub-step 2A(ii) — is the claimed invention integrating a judicial exception into a practical application? While the USPTO writes many words about this issue in the October Update, little new is said. As before, the USPTO is looking for the integration to be an improvement to the functioning of a computer or another technology. It is important to understand that a device or system must be improved — an invention that uses technology to improve how humans perform (e.g., a data analysis system that does little more than crunch numbers to recommend a course of action to be taken by a person) is likely going to fail at this sub-step.

The USPTO reiterates that the applicant's specification "must describe the invention such that the improvement would be apparent to one of ordinary skill in the art" and not in a conclusory manner. Further, "the claim itself [must] reflect[] the disclosed improvement," but need not explicitly recite the improvement.

The October Update, however, does clarify that "the 'improvements' analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity." But this is followed by the somewhat confusing statement that "the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity." (Emphasis added.) The distinction here is not perfectly clear and the USPTO does not expound further upon it.

Nonetheless, the USPTO does prescribe that:

[T]he Prong Two analysis considers the claim as a whole. That is, the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception need to be evaluated together to determine whether the claim integrates the judicial exception into a practical application. The additional limitations should not be evaluated in a vacuum, completely separate from the recited judicial exception. Instead, the analysis should take into consideration all the claim limitations and how those limitations interact and impact each other when evaluating whether the exception is integrated into a practical application.

This language is welcome and likely to be a point that applicants repeat to examiners during § 101 discussions.

The Prima Facie Case

The USPTO received comments on the January Guidance suggesting that it re-emphasize the examiner's burden of establishing the ineligibility of claims under § 101. The October Update does so, but with a pair of caveats.

In short, the USPTO states that an examiner should "identify the judicial exception . . . by referring to what is recited . . . in the claim and explaining why it is considered to be an exception." Notably, "[f]or abstract ideas, the rejection should explain why a specific limitation(s) recited in the claim falls within one of the enumerated groupings of abstract ideas." Then, the examiner "should identify any additional elements recited in the claim beyond the judicial exception and evaluate the integration of the judicial exception into a practical application." This involves "explain[ing] why the additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the exception."

The first of the aforementioned caveats is that neither the January Guidance nor the October Update address the problem of conclusory § 101 rejections. These are unfortunately common, and when challenged, examiners that issue conclusory rejections often write more words defending their non-analysis than explaining why the claims are rejected. The second is that the October Update should have reiterated that examiners need to evaluate the patent eligibility of all dependent claims separately. Far too often an examiner will provide detailed reasoning for rejecting an independent claim and then reject all dependent claims in a single sentence. Examiners need to be educated that doing so is an improper burden shifting that requires that wrongly places the onus on the applicant to first establish the eligibility of the claims.

Educating the Examining Corps

The USPTO concludes the October Update with a discussion of how it is helping examiners obtain cognizance of the § 101 guidance. This involves publishing the examples (including new interpretations of examples published before the January Guidance), examiner training, and a reiteration that examiners are expected to follow the January Guidance.

But this section — and the October Update as a whole — ends with a point of irony. The USPTO states that:

[E]very applicant whose claims have been twice rejected, may appeal from the decision of the examiner to the Patent Trial and Appeal Board, and an applicant may rely upon the 2019 PEG in support of his or her argument that a rejection under § 101 is in error. It is the rejection under § 101, and not any alleged failure to comply with the 2019 PEG, that is reviewed by the Patent Trial and Appeal Board.

The PTAB is much more likely than examiners to base its § 101 reasoning on a combination of the January Guidance and relevant case law. Thus, appealing an examiner's rejection may effectively require arguing the case law as well as the January Guidance that supposedly replaces it.

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