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  • Cellspin Soft, Inc. v. Fitbit, Inc. (Fed. Cir. 2019)

    By Michael Borella —

    Federal Circuit SealBackground

    Cellspin Soft Inc. (Cellspin) filed an infringement suit against Fitbit Inc. (Fitbit) and ten other defendants in the Northern District of California, asserting U.S. Patent Nos. 8,738,794, 8,892,752, 9,258,698, and 9,749,847.  These patents have a common specification and their claims are directed to a data capture device being connected to a mobile device so that captured data can be published to a web site.  The defendants moved the District Court to dismiss all counts under Rule 12(b)(6) or 12(c), alleging that the patents did not meet the eligibility requirements of 35 U.S.C.§ 101.  Ultimately, the District Court not only granted this motion, but also awarded the defendants attorney fees under § 285.  Cellspin appealed.

    In Alice Corp. v. CLS Bank Int'l, the Supreme Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101.  One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide 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.  But 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 Claimed Inventions

    As a representative example of the claimed inventions, the '794 patent "teaches a way to transfer and upload data automatically or with minimal user intervention using a data capture device and a mobile device."  Notably, a client application on the mobile device wirelessly receives data from the data capture device and then publishes this data to one or more websites.  Such a procedure takes place "automatically or with minimal user intervention."

    Claim 1 of this patent recites:

    A method for acquiring and transferring data from a Bluetooth enabled data capture device to one or more web services via a Bluetooth enabled mobile device, the method comprising:
        providing a software module on the Bluetooth enabled data capture device;
        providing a software module on the Bluetooth enabled mobile device;
        establishing a paired connection between the Bluetooth enabled data capture device and the Bluetooth enabled mobile device;
        acquiring new data in the Bluetooth enabled data capture device, wherein new data is data acquired after the paired connection is established;
        detecting and signaling the new data for transfer to the Bluetooth enabled mobile device, wherein detecting and signaling the new data for transfer comprises:
            determining the existence of new data for transfer, by the software module on the Bluetooth enabled data capture device; and
            sending a data signal to the Bluetooth enabled mobile device, corresponding to existence of new data, by the software module on the Bluetooth enabled data capture device automatically, over the established paired Bluetooth connection, wherein the software module on the Bluetooth enabled mobile device listens for the data signal sent from the Bluetooth enabled data capture device, wherein if permitted by the software module on the Bluetooth enabled data capture device, the data signal sent to the Bluetooth enabled mobile device comprises a data signal and one or more portions of the new data;
            transferring the new data from the Bluetooth enabled data capture device to the Bluetooth enabled mobile device automatically over the paired Bluetooth connection by the software module on the Bluetooth enabled data capture device;
            receiving, at the Bluetooth enabled mobile device, the new data from the Bluetooth enabled data capture device;
            applying, using the software module on the Bluetooth enabled mobile device, a user identifier to the new data for each destination web service, wherein each user identifier uniquely identifies a particular user of the web service;
            transferring the new data received by the Bluetooth enabled mobile device along with a user identifier to the one or more web services, using the software module on the Blue-tooth enabled mobile device;
            receiving, at the one or more web services, the new data and user identifier from the Bluetooth enabled mobile device, wherein the one or more web services receive the transferred new data corresponding to a user identifier; and
            making available, at the one or more web services, the new data received from the Bluetooth enabled mobile device for public or private consumption over the internet, wherein one or more portions of the new data correspond to a particular user identifier.

    The other asserted claims are substantially similar, though they recite further variations including: (1) a polling mechanism through which the mobile device checks for and then pulls data from the data capture device, (2) establishing a connection between the mobile device and the data capture device using encryption, (3) the mobile device using the hypertext transfer protocol (HTTP) to transfer the captured data to the web sites, and (4) broader embodiments that do not use Bluetooth.

    District Court Proceedings

    One month after the defendants filed the motion to dismiss, Cellspin filed a notice of supplemental authority.  The notice cited the recently-decided Aatrix Software, Inc. v. Green Shades Software, Inc. and Berkheimer v. HP Inc., two cases that established the contours of the factual analysis in the Alice test's second part.  Cellspin also amended its complaints to allege that the combination of elements recited by the claims was unconventional at the time the patents were filed.

    Applying part one of the Alice test, the District Court found that the claims were directed to the abstract idea of "acquiring, transferring, and publishing data and multimedia content on one or more websites."  The District Court noted that "Cellspin failed to show that the data acquisition, transfer, and publication described in the '794 patent represents something more than a simple automation of a conventional (manual) process."

    Moving on the part two, the District Court "concluded that the various claim elements, e.g., the data capture device and Bluetooth enabled mobile device, represent generic computer components performing as expected according to their ordinary use."  The District Court acknowledged that there was a factual dispute between the parties regarding whether the combination of these elements was well-understood, routine, and conventional.  But the District Court declined to take this factual dispute into account because, in the District Court's view, Berkheimer only applied to the summary judgment stage, and also because Cellspin did not identify where the specification described the unconventional aspects of the claimed inventions as alleged in the amended complaint.  Thus, all claims were found invalid under § 101.

    A number of the defendants moved the District Court for attorney fees.  The District Court found that the case met the definition of "exceptional" under § 285 because the "claims were manifestly directed to an abstract idea" and "exceptionally meritless."  Further, the District Court determined that Cellspin litigated aggressively, noting that Cellspin amended "its complaint only three days prior to the hearing on the motions to dismiss."

    The District Court further admonished Cellspin for "a refusal to analyze its patents critically before filing suit," noting that "Cellspin could have litigated a test case but instead chose to file and pursue aggressively fourteen lawsuits simultaneously."  The District Court recommended this approach because "Cellspin's patents are not presumed eligible under Section 101."

    Based on these factors, the District Court awarded attorney fees to the defendants.

    Appeal to the Federal Circuit

    On appeal, the Federal Circuit re-applied the Alice test and also considered the attorney fees award.

    Particularly, the Court found that, under part one of Alice, the claims were indeed directed to an abstract idea.  The Court determined that this outcome was required given the similarities between Cellspin's claims and those held abstract in In re TLI Communications LLC Patent Litigation ("claims reciting recording . . . transmitting . . . and storing digital images were directed to an abstract idea") and Elec. Power Grp., LLC v. Alstom S.A. ("claims reciting collecting information, analyzing it, and displaying certain results" are typically abstract in nature).

    Moving on to part two of Alice, the Court looked to Cellspin's amended complaint for allegations that its claims are unconventional.  There, it found Cellspin's argument that "prior art devices included a capture device with built in mobile wireless Internet," and that "at the time of the patent priority date . . . the combined apparatus was bulky, expensive in terms of hardware, and expensive in terms of requiring a user to purchase an extra and/or separate cellular service for the data capture device."  Cellspin further argued that "it was unconventional to separate the steps of capturing and publishing data so that each step would be performed by a different device linked via a wireless, paired connection" and that doing so "allows data capture devices to be smaller and cheaper to build."  Additionally, Cellspin asserted that the ordering of the claimed elements was also unconventional, as prior art devices "forwarded data to a mobile device as captured," whereas the claims involve "establishing a paired connection between the mobile device and the data capture device before data is transmitted."  According to Cellspin, this has the advantage of data only being transmitted "if the mobile device is capable of receiving it."

    As noted above, the District Court faulted Cellspin for not citing to support in the specification for these allegations.  But the Federal Circuit disagreed that this was required, noting that under Aatrix, "allegations in the complaint [are sufficient] to conclude that the disputed claims were potentially inventive."  The Court went on:

    While we do not read Aatrix to say that any allegation about inventiveness, wholly divorced from the claims or the specification, defeats a motion to dismiss, plausible and specific factual allegations that aspects of the claims are inventive are sufficient.  As long as what makes the claims inventive is recited by the claims, the specification need not expressly list all the reasons why this claimed structure is unconventional.  In this case, Cellspin made specific, plausible factual allegations about why aspects of its claimed inventions were not conventional, e.g., its two-step, two-device structure requiring a connection before data is transmitted.  The district court erred by not accepting those allegations as true.

    The Court also made it clear that Aatrix "expressly stated that patentees who adequately allege their claims contain inventive concepts survive a § 101 eligibility analysis under Rule 12(b)(6)."  Thus, the District Court's reliance on Berkheimer to discount Cellspin's allegations was misplaced.

    Putting this all together, the Court stated "accepting the allegations stated above as true, we cannot conclude that the asserted claims lack an inventive concept . . . we have no basis, at the pleadings stage, to say that these claimed techniques, among others, were well-known or conventional as a matter of law."  A major factor that led the Court toward this conclusion was that "Cellspin did more than simply label [the claimed] techniques as inventive . . . [i]t pointed to evidence suggesting that these techniques had not been implemented in a similar way."  Thus, based on the allegations, the claims "recite a specific, plausibly inventive way of arranging devices and using protocols rather than the general idea of capturing, transferring, and publishing data," and cannot be found ineligible at this point in the case.

    As the District Court's opinion was vacated, the attorney fees award was necessarily vacated as well.  To that point, the Federal Circuit clarified the principle that an issued patent has a presumption of validity:

    This presumption reflects the fact that the Patent and Trademark Office has already examined whether the patent satisfies the prerequisites for issuance of a patent, including § 101.  While an alleged infringer may attempt to prove that the patent never should have issued in the first place, i.e., challenge its validity, the alleged infringer must prove that the patent does not satisfy these prerequisites before the patent loses its presumption of validity.  To the extent the district court departed from this principle by concluding that issued patents are presumed valid but not presumed patent eligible, it was wrong to do so.

    The Court also found that the District Court erred when admonishing Cellspin for amending its complaints so close to the hearing thereon.  Looking to the record, the Court observed that "Cellspin's amendment was timely based on a scheduling order entered by the district court just three days before Cellspin's amendment," and that "Cellspin's decision to amend was also justified in light of Berkheimer and Aatrix, decided just a few weeks earlier."

    Thus, both issues of patent eligibility and attorney fees were remanded to the District Court for further review.

    Cellspin Soft, Inc. v. Fitbit, Inc. (Fed. Cir. 2019)
    Panel: Circuit Judges Loruie, O'Malley, and Taranto
    Opinion by Circuit Judge O'Malley

  • Conference & CLE Calendar

    CalendarJuly 17-19, 2019 – Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation (Practising Law Institute) – San Francisco, CA

    July 18, 2019 – "Not So Obvious: Secondary Considerations at the PTAB" (Fitch Even) – 12:00 to 1:00 pm (ET)

    July 18, 2019 – "Strategies for IP Protection in China — What Georgia Businesses Need to Know" (U.S. Patent and Trademark Office and Georgia Tech Library) – Scheller College of Business, Georgia Institute of Technology, Atlanta, GA

    July 18, 2019 – "Freedom to Operate Searches" (Intellectual Property Law Association of Chicago Corporate and Biotechnology Committees) – 5:30 to 6:30 pm (CT), Chicago, IL

  • Panel Discussion on Freedom to Operate Searches

    IPLACThe Intellectual Property Law Association of Chicago (IPLAC) Corporate and Biotechnology Committees will be presenting a panel discussion on "Freedom to Operate Searches" on July 18, 2019 from 5:30 to 6:30 pm (CT) at Porter Kitchen + Deck in Chicago, IL.  The panel includes Dimitry Kapmar of Zebra Technologies, Saumil Mehta of Gogo LLC, Pete Slawniak of Argonne National Lab, and Adam Wolek of Taft Stettinius & Hollister LLP.

    The registration fee for the presentation is $10 for non-members; there is no registration for IPLAC members.  Those interested in registering for event can do so here.

  • Food Marketing Institute v. Argus Leader Media (2019)

    By Joshua Rich —

    Supreme Court Building #3Although patentees generally do not have great concerns about the Freedom of Information Act (FOIA) because of the U.S. Patent and Trademark Office's secrecy requirements, they may lose control over their information under FOIA if they submit it to other parts of the government.  Prior to the Food Marketing Institute case, companies faced the possibility that they could lose their trade secrets if they sought government contracts if they could not show that disclosure would cause them substantial competitive harm.  Now, those companies need only show that they — and the government — intended to keep the information secret in order to prevent disclosure under FOIA.

    In the Food Marketing Institute case, a South Dakota newspaper was working on an article on food stamp fraud; to support the article, it submitted a FOIA request to get store-level data for every store in America that accepted Supplemental Nutrition Assistance Program (SNAP) benefits.  FOIA generally requires Federal agencies to disclose public records, except as provided by statute.  One of the exceptions is Exemption 4, which shields from disclosure "trade secrets and commercial and financial information obtained from a person and privileged or confidential."[1] The Supreme Court was asked to determine the scope of Exemption 4.  In a 6-3 decision, it held that information would be exempted from disclosure if it was private or secret and the government had provided some assurance that the information would remain secret — it did not require any showing of competitive harm that would come to the person from whom the information was obtained if the information was disclosed.

    In 2011, the Argus Leader newspaper of Sioux Falls, South Dakota learned of concerns of "retailer trafficking" of SNAP benefits, where retailers exchange SNAP benefits for cash.  Under SNAP, program participants usually use electronic benefit cards to buy food from eligible retailers and the sales information is electronically transferred to a state electronic benefits processor who approves or denies the transaction.  The state processor then reports the information to the U.S. Department of Agriculture (which administers the SNAP program for the federal government).  The reporter working on the story therefore filed a FOIA request with the USDA asking for information including store-level information on SNAP benefits for every store in the United States (about 320,000 stores) over a five year period.

    The USDA refused to produce the store-level information on grounds including Exemption 4.  Eventually, the District Court applied the test required by the U.S. Court of Appeals for the Eighth Circuit, which had adopted the D.C. Circuit's test from National Parks & Conservation Assn. v. Morton, 498 F.2d 765 (D.C. Cir. 1974).  Specifically, the District Court required to the USDA to show that the information was not only secret, but also "likely . . . to cause substantial harm to the competitive position of the person from whom the information was obtained."[2] The District Court held a trial where witnesses for the USDA testified that retailers closely guard their store-level data and that disclosure would harm their stores' competitive positions by allowing competitors to model consumer behavior better.  While the District Court found that created a prospective risk of harm to the stores, it found the risk was only incremental, not "substantial." Thus, it ordered the information to be turned over.

    The USDA alerted the retailers who take part in the SNAP program that it would not appeal, and the Food Marketing Institute stepped in to try to prevent the documents from being disclosed.  In the meantime, the USDA assured them (and the District Court) that it would not turn the documents over until the appeals were exhausted.  However, the U.S. Court of Appeals for the Eighth Circuit affirmed the District Court's decision finding that the potential harm — while real — would not be substantial, rejecting any argument that confidentiality alone would be sufficient to satisfy Exemption 4, and reaffirming the application of the National Parks test in the Eighth Circuit.

    When the case reached the Supreme Court, it first considered whether the National Parks test should apply at all.  That is, the question presented was whether "the statutory term 'confidential' in FOIA Exemption 4 [should] bear its ordinary meaning, thus requiring the Government to withhold all 'commercial or financial information' that is confidentially held and not publicly disseminated-regardless of whether a party establishes substantial competitive harm from disclosure."  Ultimately, the Supreme Court's answer was yes.

    Justice Gorsuch, writing for the six member majority, started his consideration of the scope of Exemption 4 with the language of the statute itself.  The meaning of the key statutory term, "confidential," was the same when FOIA was enacted in 1966 as it is today — "private" or "secret."  Contemporary dictionaries suggested that confidentiality might therefore require two conditions.  First, it must customarily be kept private (or at least closely held) by the person imparting it.  Second, the person receiving the information must customarily provide an assurance that it will stay secret.  Certainly, the first condition must be satisfied for information to be considered "confidential," it is less clear that the second must also be satisfied.

    Here, Justice Gorscuch was untroubled by determining whether confidentiality under Exemption 4 would require both conditions: the requested data unquestionably did.  The Food Marketing Institute had intervened specifically because the individual stores wanted to keep the information secret, and customarily did.  And the USDA had promised the stores that it would keep the information secret, unless it was ordered not to do so.  Thus, the majority found that the information need not be turned over, regardless of what the exact test under Exemption 4 would be.

    Despite the clarity of the dictionary definitions, the majority felt the need to address the National Parks test.  It found no basis for the requirement that a disclosure result in "substantial competitive harm" in the statutory language, early case law, or any "other usual source."  The D.C. Circuit had cited legislative history for FOIA in support of the test, but Justice Gorsuch referred to that as a "selective tour through the legislative history."  But the plain language of the statute itself had been sufficient to allow interpretation of Exemption 4.  And there was no good reason for applying the National Parks test when the information was required to be provided to the government, but not when the information was provided voluntarily (as the D.C. Circuit had subsequently found in Critical Mass Energy Project v. NRC, 975 F.2d 871 (D.C. Cir. 1992)).  Thus, the majority rejected the D.C. Circuit's National Parks decision in favor of the plain language of Exemption 4.

    Justice Breyer, joined by Justices Ginsburg and Sotomayor, dissented from the decision based primarily on both the uniformity of decisions below and policy issues.  While the courts below had adopted different tests for Exemption 4, they had all required some showing of competitive harm for the exemption to apply.  Thus, the majority's decision allowed Exemption 4 to shield far more than any circuit would have otherwise.  And that was a substantial concern for the dissenting Justices: that Exemption 4 might swallow FOIA whole.  That is, the goal of FOIA has always been disclosure of information to increase the transparency of government (at least as balanced against certain specific, narrow policy exceptions).  But if the questions are just whether the parties providing information and the government agency working with those parties — which is often subject to "capture" by the parties — want to keep the information secret, they may be able to shield it from disclosure under FOIA.  Thus, the dissenting Justices fear that the decision will substantially narrow the effect of FOIA.

    The Food Marketing Institute case reflects a sea change in the application of FOIA to confidential information.  Previously, even trade secrets (as defined by the traditional definition under the Uniform Trade Secrets Act or Defend Trade Secrets Act) could be subject to disclosure under FOIA if the trade secret owner cannot prove that the disclosure would cause it substantial competitive harm.  Now, Exemption 4 covers not only traditional trade secrets, but also merely confidential business information that has been shared with the government under an expectation of secrecy.  Thus, in many cases, information that would have been disclosed under FOIA can now be withheld under Exemption 4.

    Food Marketing Institute v. Argus Leader Media (2019)
    Opinion by Justice Gorsuch, joined by Chief Justice Roberts and Justices Thomas, Alito, Kagan, and Kavanaugh; opinion concurring in part and dissenting in part by Justice Bryer, joined by Justices Ginsburg and Sotomayor

    [1] 5 U.S.C. § 552(b)(4).
    [2] See Argus Leader Media v. United States Dept. of Agriculture, 889 F.3d 914, 915 (8th Cir 2018).

  • USPTO Disables PKI Authentication for EFS-Web and Private PAIR

    By Donald Zuhn —

    USPTO SealIn a Patent Alert e-mail distributed today, the U.S. Patent and Trademark Office announced that PKI authentication for EFS-Web and Private PAIR has been permanently disabled.  The Office had previously announced in late December that the initial December 31, 2018 deadline for the retirement of PKI certificates was being postponed until February 15, 2019.  And then on February 14, 2019, the Office announced that due to technical issues, the retirement of PKI certificates was being postponed until further notice.  The end of PKI authentication should not come as a surprise to most practitioners, however, as the Office recently announced an outage of the system from May 30 to May 31 and then another outage beginning on June 5.

    In announcing the permanent disablement of PKI authentication, the Office also announced that the deadline for practitioners to migrate a PKI certificate to a USPTO.gov account will be July 16, 2019.  Practitioners who fail to migrate their PKI certificates by the July 16 deadline will have to obtain a verified USPTO.gov account using the Office's new verification process (in the same manner that new practitioners will be required to obtain a verified USPTO.gov account).  Information regarding the new verification process can be obtained here.  Briefly, the new verification process consists of completing a Patent Electronic System Verification Form (PTO-2042a), having the form notarized, and mailing the original, notarized form to the USPTO.  Thus, if you have a PKI certificate, but have not yet migrated that certificate to a USPTO.gov account, you will probably want to do so before the July 16 deadline.

    As the Office indicated last October, the new authentication system for accessing the EFS-Web and Private PAIR is safer and simpler than the old system, allowing for access to multiple USPTO systems with one consolidated sign-in, eliminating the need to share credentials by providing practitioners and their support staff with their own USPTO.gov accounts, and helping resolve browser compatibility issues (see "USPTO Moving to New Authentication System for EFS-Web and Private PAIR").  The Office has also noted that the new system will provide users with access to the EFS-Web and Private PAIR until the full release of Patent Center, the next generation tool that will replace the EFS-Web and Private PAIR in 2020.

    In addition, the Office announced the release of a migration tool last October, which allows existing PKI digital certificate holders to link their USPTO.gov accounts to their current PKI digital certificates.  To migrate an existing PKI digital certificate, users must have a USPTO.gov account.  Users who need to create a USPTO.gov account can do so by following the steps under the "Create a USPTO.gov Account" tab at the Office's authentication change webpage.  Once a USPTO.gov account has been created, users can follow the steps under the "Migrate your PKI Certificate" tab at the Office's authentication change webpage (or refer to the Guide for Migration) to link that account to their PKI certificate.  The Office notes that users should allow 1–2 business days after the migration steps are finished for the migration process to be completed.  Once the process is completed, users will be able to sign into the EFS-Web or Private PAIR using their USPTO.gov account:

    EFS-Web:
    https://efs-my.uspto.gov/EFSWebUIRegistered/EFSWebRegistered

    Private PAIR:
    https://ppair-my.uspto.gov/pair/PrivatePair

    Additional information regarding the new authentication process can be found in the Office's Patent Electronic System Access Document.  This resource includes information about USPTO.gov accounts; two-step authentication; signing in and signing out from USPTO systems; Patent Electronic Access roles for practitioners, support staff, and inventors; suspension of accounts; authorization; authentication steps; the sponsorship process (by which practitioners can grant or remove sponsorship for support staff individuals to work under their direction and control); and the Office's verification policy and identity proofing of sponsored support staff.  With respect to identity proofing, the Office has stated that "[e]ach practitioner will be responsible for verifying the identity of the person using any sponsored support Staff account."

    Shortly after announcing the new authentication system last October, the Office also announced the availability of a sponsorship tool for sponsorship of support staff.  With respect to sponsorship, the Office emphasized that practitioners no longer have to share their credentials, and in fact, would no longer be permitted to share accounts with support staff, who need to establish their own USPTO.gov accounts in order to access the EFS-Web Registered and Private PAIR.  USPTO.gov accounts are now being used as the first step to log into EFS-Web Registered and Private PAIR.  The second step of the two-step authentication system requires users to choose to receive an e-mail or phone call which will provide a 6-digit code that is to be entered along with their USPTO.gov password (or use an authenticator app on their mobile phone to provide the additional secure verification).  The Office's sponsorship tool, which allows practitioners to grant or remove sponsorship for support staff individuals (under the direction and control of sponsoring practitioners) to work on their behalf, can be accessed here.

    Practitioners should familiarize themselves with the identify verification (or proofing) requirements of the new authentication system.  Under the identity proofing and enrollment process, the identity evidence and attributes of users of the Office's Patent Electronic System are collected, uniquely resolved to a single identity within a given population or context, then validated and verified.  Current PKI certificate holders who migrate their PKI certificates using the migration tool will be considered to have met the identity proofing requirements.  However, for support staff being sponsored by practitioners, sponsoring practitioners are "responsible for proofing the identity of the person being sponsored," and "[e]ach sponsoring practitioner will establish a procedure for identity proofing sponsored users and maintain a record of that procedure."  Additional details regarding identity verification requirements can be found in the Office's Patent Electronic System Access Document.

    Users requiring assistance to create a USPTO.gov account should call the USPTO Contact Center (UCC) at 800-786-9199.  Users requiring assistance with migration should contact the Patent Electronic Business Center at ebc@uspto.gov or 866-217-9197.  Questions or comments related to the new authentication method may be sent to eMod@uspto.gov.  A list of Frequently Asked Questions (FAQs) about the authentication change for EFS-Web and Private PAIR can be found here.

    For additional information regarding this topic, please see:

    • "USPTO Further Delays PKI Certificate Termination Date," February 14, 2019
    • "USPTO Delays PKI Certificate Termination Date," December 23, 2018
    • "USPTO Director Issues Notice on New Authentication System for EFS-Web and Private PAIR," December 3, 2018
    • "USPTO Moving to New Authentication System for EFS-Web and Private PAIR," October 4, 2018

  • CRISPR Battle Joined Again

    By Kevin E. Noonan —

    University of California-BerkleyOn June 24th, the U.S. Patent and Trademark Office declared an interference between patents (and an application) assigned to the Broad Institute (and other institutions) and applications assigned to the University of California/Berkeley.  If this sounds like deja vu all over again it is and it isn't; as will be seen, the strategy employed by Berkeley has induced the Office to address the issues of priority raised in the earlier interference between the parties.

    That interference involved these Broad patents (and their involved claims, which constitute all of the granted claims of all of the Broad patents):

    • U.S. Patent No. 8,697,359 – claims 1-20
    • U.S. Patent No. 8,771,945 – claims 1-29
    • U.S. Patent No. 8,795,965 – claims 1-30
    • U.S. Patent No. 8,865,406 – claims 1-30
    • U.S. Patent No. 8,871,445 – claims 1-30
    • U.S. Patent No. 8,889,356 – claims 1-30
    • U.S. Patent No. 8,895,308 – claims 1-30
    • U.S. Patent No. 8,906,616 – claims 1-30
    • U.S. Patent No. 8,932,814 – claims 1-30
    • U.S. Patent No. 8,945,839 – claims 1-28
    • U.S. Patent No. 8,993,233 – claims 1-43
    • U.S. Patent No. 8,999,641 – claims 1-28,

    against only one pending (at that time) application from the Berkeley group:

    • U.S. Patent Application Publication No. US 2014/0068797 A1 – claims 165, 200, 202-218, 220-222, and 224-247.

    Broad InstituteThe Patent Trial and Appeal Board decided that interference was a nullity, because there was no interference-in-fact between Berkeley's claims (which broadly recited aspects of the CRISPR technology) and those in the Broad patents (which were specifically directed to reagents, systems, and methods for practicing CRISPR in eukaryotic cells.  The Federal Circuit affirmed, leaving the Broad's patent estate intact (albeit arguably dominated by Berkeley's broader claims not limited to eukaryotic cells).

    Berkeley adopted a strategy of filing several applications last fall specifically directed to eukaryotic cell-directed aspects of CRISPR that would provoke an interference with the Broad claims (although the USPTO declared this interference on the basis that the claims of the Berkeley application were patentable but for the interfering granted claims in the Broad patent).

    The Broad patents and applications included in the interference (i.e., having claims considered to fall within the scope of the interference count) are:  U.S. Patent Nos. 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993, 233; 8,999,641; 89,840,713; and U.S. Application No. 14/704,551.  Broad patents not not involved in this interference are U.S. Patent Nos. 8,889,418 and 9,882,372.

    University of California/Berkeley patents included in the interference as declared by the USPTO are:  U.S. Application Nos. 15/947,680; 15/947,700; 15/947,718; 15/981,807; 15/981,808; 15/981,809; 16/136,159; 16/136,165; 16/136,168; and 16/136,175.  Berkeley patents and applications not included in the interference are:  U.S. Patent Nos. 10,000,772; 10,113,167; 10,227,611; 10,266,850; 10,301,651; 10,308,961 and U.S. Application Nos. 15/435,233; 15/925,544; 16/201,836; 16/201,848; 16/201,853; and 16/20,855.

    A more in depth analysis of this interference with be provided in subsequent posts.  One pattern that can be discerned, however, is that Berkeley has taken advantage of the PTAB's decision that there was no interference in fact between its patents directed to CRISPR claims not limited to eukaryotic cells as a shield to protect its patents and applications having such broad claims from the current interference.  Its strategy of filing applications having claims directed expressly towards CRISPR embodiments for use in eukaryotic cells enabled Berkeley to target the majority of Broad's patents and applications while putting "at risk" its newly filed applications and not its legacy patents to CRISPR.

    The next step will be for the parties to propose preliminary motions to the PTAB, involving patentability issues, the propriety of the claims designated as corresponding (or not corresponding) to the count, and prima facie priority determinations regarding whether the Board properly designated the Broad as senior party (an important strategic consideration involving which party will have the burden of proof).  These matters will also be discussed in subsequent posts.  For now, it is enough to say that ownership of this technology remains uncertain, a state of affairs that will remain for the next 24-36 months unless these parties decide to settle (an unlikely outcome given the history of their interactions and behavior on the ownership question).​

  • USPTO to Accept New Applications to Ongoing IP5 CS&E Pilot

    By Donald Zuhn —

    USPTO SealIn a Patent Alert e-mail distributed last week, the U.S. Patent and Trademark Office announced that beginning July 1, 2019, the Office would once again be accepting new International applications to the IP5 Patent Cooperation Treaty (PCT) Collaboration Search and Examination (CS&E) pilot program.  In a notice published in the Federal Register last year (83 Fed. Reg. 30147), the Office announced its first year of participation in the pilot program, which ran from July 1, 2018 until June 30, 2019.  The second year of the Office's participation in the program begins tomorrow and runs through June 30, 2020.  The pilot program was initiated to assess user interest for a CS&E product (i.e., an International search report and written opinion prepared by collaborating examiners from the IP5 Offices), as well as whether the collaboration results in efficiency gains by the IP5 Offices.

    IP5Under the CS&E pilot program, examiners from the U.S. Patent and Trademark Office (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO) and National Intellectual Property Administration (CNIPA) (formerly the State Intellectual Property Office of the People's Republic of China, or SIPO), otherwise known as the IP5 Offices, collaborate on one International application for the establishment of an International search report and written opinion under PCT Chapter I.  Applicants choosing to participate in the program select one of the five IP5 Offices as the International Searching Authority, and an examiner from that Office (the main examiner) establishes a provisional International search report and written opinion, which is distributed to the other Offices.  Examiners in the other Offices (peer examiners) then provide their contribution, and the main examiner establishes a final International search report and written opinion after taking those contributions into account.

    Applicants wishing to participate in the pilot program via the USPTO (once the second year begins tomorrow) must meet the following requirements:

    (1) Submit a request for participation (form PCT/RCSE) with the International application.

    (2) Select one of the IP5 Offices as the International Searching Authority.

    (3) File the participation form and International application electronically via the EFS-Web (for the participation form, Applicants should use the document description "Request to Participate in PCT CS&E Pilot").

    (4) File the English-language version of the participation form and file the International application in English.

    (5) Have not had 10 International applications accepted into the pilot by the same International Searching Authority.

    As with the first year of the program, the USPTO will only be accepting 50 applications during the second year of the program (the USPTO reached that limit in the first year of the pilot program as of at least January 2019).  In addition, applications that the International Searching Authority determines have a defect which impedes the processing of the application will be denied entry into the pilot program.

    Additional information regarding the CS&E pilot program can be found at the USPTO's CS&E webpage or the World Intellectual Property Organization (WIPO) CS&E webpage.

  • Conference & CLE Calendar

    CalendarJuly 17-19, 2019 – Patent Fundamentals Bootcamp 2019: An Introduction to Patent Drafting, Prosecution, and Litigation (Practising Law Institute) – San Francisco, CA

    July 18, 2019 – "Not So Obvious: Secondary Considerations at the PTAB" (Fitch Even) – 12:00 to 1:00 pm (ET)

    July 18, 2019 – "Strategies for IP Protection in China — What Georgia Businesses Need to Know" (U.S. Patent and Trademark Office and Georgia Tech Library) – Scheller College of Business, Georgia Institute of Technology, Atlanta, GA

  • China IP Road Show

    USPTO SealAs part of its China IP Road Show program, the U.S. Patent and Trademark Office and Georgia Tech Library will be holding a program on "Strategies for IP Protection in China — What Georgia Businesses Need to Know" on July 18, 2019 at the Scheller College of Business at the Georgia Institute of Technology in Atlanta, GA.  Topics to be addressed at the program include:

    • What you need to know about protecting your patents, copyrights, and trademarks in China
    • Where is China going on IP?
    • Enforcing IP rights in the United States
    • Enforcing IP rights in China
    • IP in China — the Georgia experience

    Additional information regarding the program can be found here.  There is no registration fee for the program.  Those interested in registering for the conference can do so here.

  • Webinar on Secondary Considerations at the PTAB

    Fitch EvenFitch Even will be offering a webinar entitled "Not So Obvious: Secondary Considerations at the PTAB" on July 18, 2019 from 12:00 to 1:00 pm (ET).  David A. Gosse and Evan Kline-Wedeen of Fitch Even will discuss the following:

    • Developing trends at the PTAB concerning secondary considerations
    • How to insulate your petition from secondary considerations
    • Best practices for patent owners developing evidence related to secondary considerations

    While there is no cost to participate in the program, advance registration is required.  Those interested in attending the webinar can register here.