Patent Docs

Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (Fed. Cir. 2018)

January 25, 2018

By Michael Borella —

As patent-eligibility stands in 2018, it can be difficult to determine whether a graphical user interface (GUI) with an innovative layout and/or functionality meets the requirements of 35 U.S.C. § 101. On one hand, a GUI is almost by definition fundamentally tied to computer operation, and arguably has no non-computer analog. On the other hand, a GUI that merely displays data in a non-specific layout is likely going to be viewed as a generic technical environment or just extra-solution activity. In the Federal Circuit, recent cases addressing the eligibility of GUIs have found those claimed at a high level to be ineligible (e.g., Intellectual Ventures I LLC v. Erie Indemnity Co., Intellectual Ventures I LLC v. Capital One Bank (USA), Internet Patents Corp. v. Active Network, Inc.), while a much more detailed claim was found to be eligible, albeit in a non-precedential opinion (Trading Technologies Int'l v. CQG Inc.).

So the question remains — what level of detail should be recited in a GUI claim to clear the § 101 hurdle? While we don't have a clear answer, this case provides another data point.

Core Wireless brought an action against LG in the Eastern District of Texas alleging infringement of U.S. Patent Nos. 8,713,476 and 8,434,020. LG moved for summary judgment, asserting that the claims were ineligible under § 101, but the District Court denied the motion. LG appealed.

As an example, claim 1 of the '020 patent recites (formatted for clarity):

1. A computing device comprising a display screen,
    the computing device being configured to display on the screen a menu listing one or more applications,
    and additionally being configured to display on the screen an application summary that can be reached directly from the menu,
    wherein the application summary displays a limited list of data offered within the one or more applications, each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application, and
    wherein the application summary is displayed while the one or more applications are in an un-launched state.

The Supreme Court's Alice Corp. v. CLS Bank Int'l case 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 is directed to 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 generic computer implementation of an otherwise abstract process does not qualify as "significantly more." On the other hand, a claimed improvement to a computer or technological process is typically patent-eligible.

The Federal Circuit began its analysis by determining that the claimed invention was an improved user interface, rather than the abstract idea of an index, as proposed by LG. The Court noted that the claims "are directed to a particular manner of summarizing and presenting information in electronic devices." For instance, claim 1 requires "an application summary that can be reached directly from the menu," and specifies a particular manner by which the summary window must be accessed. The Court additionally stated:

The claim further requires the application summary window list a limited set of data, "each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application." This claim limitation restrains the type of data that can be displayed in the summary window. Finally, the claim recites that the summary window "is displayed while the one or more applications are in an un-launched state," a requirement that the device applications exist in a particular state. These limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer.

The Court made analogies between this invention and those found patent-eligible in Enfish, LLC v. Microsoft Corp., Thales Visionix Inc. v. U.S., Visual Memory LLC v. NVIDIA Corp., and Finjan, Inc. v. Blue Coat Systems, Inc. The claims in these previous cases were found to improve a computer or technological system, and were thus not abstract.

To back up its position, the Court looked the patents' specifications, observing that they teach of the problems associated with prior art interfaces, especially with respect to displaying information on devices with small screens. Particularly, users had to "drill down through many layers to get to desired data or functionality [which] could seem slow, complex and difficult to learn, particularly to novice users." In contrast, the claimed invention involves "[d]isplaying selected data or functions of interest in the summary window allows the user to see the most relevant data or functions without actually opening the application up." Doing so "saves the user from navigating to the required application, opening it up, and then navigating within that application to enable the data of interest to be seen or a function of interest to be activated."

Based on this understanding, the Court concluded that the claim was not abstract, and that part two of the Alice test need not be carried out because the invention was eligible.

A recent trend in § 101 jurisprudence is the increasing importance of process over substance. If a Federal Circuit panel reviews claims after they were construed by the district court, refuses to summarize the claimed invention at a high level in part one of the Alice inquiry, and considers the teachings of improvements set forth in the specification in parts one or two of this inquiry, it is much more likely that the Court will find the claims in question to be eligible. Conversely, if the Court reviews claims that were not construed, summarizes these claims as a simple concept, and puts little emphasis on the specification, the opposite outcome is almost certain.

As we have seen different panels of Federal Circuit judges adopt both of these approaches, it is no wonder that patentees and attorneys have been shaking their heads when new § 101 cases come down, and that the USPTO has applied the law as inconsistently as the courts. While the outcome in this particular case is reasonable and well-grounded in logic, it may be only a matter of time before the Federal Circuit realizes that it is suffering from an intra-circuit split and decides to hear a § 101 case en banc.

• Judge Moore wrote this opinion and was joined by Judge O'Malley. Judge Wallach dissented in part with respect to a claim construction issue, but agreed with the majority on the patent-eligibility dispute.

Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (Fed. Cir. 2018)
Panel: Circuit Judges Moore, O'Malley, and Wallach
Opinion by Circuit Judge Moore; opinion concurring-in-part and dissenting-in-part by Circuit Judge Wallach
The CRISPR Chronicles — Broad Institute Wins One and Loses One

January 24, 2018

By Kevin E. Noonan –

The interference between the Broad Institute and the University of California/Berkeley has been in the spotlight over the past year (see "PTAB Decides CRISPR Interference — No interference-in-fact"; "PTAB Decides CRISPR Interference in Favor of Broad Institute — Their Reasoning"; "University of California/Berkeley Appeals Adverse CRISPR Decision by PTAB"; and "Berkeley Files Opening Brief in CRISPR Appeal"). But there have been other skirmishes between the parties, each of which has recently been (for now) resolved.

The more significant one is the decision on January 17 by the Opposition Division (OD) of the European Patent Office to revoke in its entirety Proprietors The Broad Institute, MIT, and Harvard College's European Patent No. EP 2771468, which had been opposed by Novozymes A/S, CRISPR Therapeutics GG, and several strawmen). Representative claims revoked by the OD are as follows:

1. A non-naturally occurring or engineered composition comprising:
    a Clustered Regularly Interspersed Short Palindromic Repeats (CRISPR)-CRISPR associated (Cas) (CRISPR-Cas) system chimeric RNA (chiRNA) polynucleotide sequence, wherein the polynucleotide sequence comprises
        (a) a guide sequence of between 10 – 30 nucleotides in length, capable of hybridizing to a target sequence in a eukaryotic cell,
        (b) a tracr mate sequence, an
        (c) a tracrRNA sequence
        wherein (a), (b) and (c) are arranged in a 5' to 3' orientation,
    wherein when transcribed, the tracr mate sequence hybridizes to the tracrRNA sequence and the guide sequence directs sequence-specific binding of a CRISPR complex to the target sequence,
    wherein the CRISPR complex comprises a Type II Cas9 protein complexed with (1) the guide sequence that is hybridized to the target sequence, and (2) the tracr mate sequence that is hybridized to the tracrRNA sequence,
    wherein the tracrRNA sequence is 50 or more nucleotides in length.

2. A Clustered Regularly Interspersed Short Palindromic Repeats (CRISPR)-CRISPR associated (Cas) (CRISPR-Cas) vector system comprising one or more vectors comprising
    I. a first regulatory element operably linked to a nucleotide sequence encoding a CRISPR-Cas system chimeric RNA (chiRNA) polynucleotide sequence as defined in claim 1, and
    II. a second regulatory element operably linked to a nucleotide sequence encoding a Type II Cas9 protein comprising one or more nuclear localization sequences, of sufficient strength to drive accumulation of said Cas9 protein in a detectable amount in the nucleus of a eukaryotic cell;
    wherein components I and II are located on the same or different vectors of the system.

12. Use of the composition of claim 1, or the vector system of claim 2 or any claim dependent thereon for genome engineering, provided that said use is not a method for treatment of the human or animal body by surgery or therapy, and provided that said use is not a process for modifying the germline genetic identity of human beings.

17. Use of the composition of claim 1, or the vector system of claim 2 or any claim dependent thereon, in the production of a non-human transgenic animal or transgenic plant.

The OD has not yet issued its formal opinion (which can be expected in the next month or so), but last year it did issue a preliminary opinion prior to summoning Proprietor Broad Institute and the opponents to oral hearing earlier this month. In that opinion the OD "preliminarily and non-bindingly" set forth its opinions, on novelty, inventive step, sufficiency of disclosure, and entitlement to priority; the latter ground for opposition apparently formed the basis for the OD's decision to revoke.

The preliminary opinion found claims 1 and 2 did not satisfy Article 123(2) EPC, because the claim limitation "one or more of the guide, tracr and tracr mate sequences are modified in order to preserve stability" went beyond the disclosure of the application as filed. Similar deficiencies of disclosure were found for claims 14 and 15 but not for claim 16. In view of the OD's preliminary priority determination (see below), claims 1-6 and 9-17 were invalid on novelty grounds and claims 7 and 8 invalid on inventive step grounds.

The priority issue was raised based on the earliest two provisional applications (U.S. Provisional Application Nos. 61/736,527 and 61/748,427), as well as U.S. Provisional Application Nos. 61/791,409 and U.S. 61/835,931, which named Luciano Marraffini as an inventor, and which were owned by Rockefeller University. The priority documents and their named inventors are as follows:

• U.S. 61/736,527 named Zhang, Cong, Hsu, Ran, Habib, Cox, Lin and Maraffini as inventors
• U.S. 61/748,427 named Zhang, Cong, Hsu, Ran, Habib, Cox, Lin and Maraffini as inventors
• U.S. 61/758,468 named Zhang, Cong, Hsu, and Ran as inventors
• U.S. 61/769,046 named Zhang, Cong, Hsu, and Ran as inventors
• U.S. 61/791,409 named Zhang, Cong, Hsu, Ran, Habib, Cox, Lin and Maraffini, Bikard and Jian as inventors
• U.S. 61/802,174 named Zhang, Cong, Hsu, Ran, and Platt as inventors
• U.S. 61/806,375 named Zhang, Cong, Hsu, Ran, and Platt as inventors
• U.S. 61/814,263 named Zhang, Cong, Hsu, Ran, and Platt as inventors
• U.S. 61/819,803 named Zhang, Cong, Hsu, Ran, and Platt as inventors
• U.S. 61/828,130 named Zhang, Cong, Hsu, Ran, and Platt as inventors
• U.S. 61/835,931 named Zhang, Cong, Hsu, Ran, Cox, Lin, Maraffini, Platt, Santjana, Bikard and Jian as inventors
• U.S. 61/836,127 named Zhang, Cong, Hsu, and Ran as inventors

In Europe, under Article 87 EPC and Paragraph IV of the Paris Convention, priority to an earlier-filed application can be validly claimed by the prior applicant or by her successor in interest. In either case, the applicant must be someone having the right to claim priority. In the U.S., these provisional applications were filed in the name of the inventor and the EPO requires that there be an assignment of the invention on or before a European or PCT application is filed. (Of course, a PCT can always be filed naming the inventors as applicants.) In this case, proper application of the applicable rules required both the named applicants (The Broad Institute, MIT and Harvard College) and the Rockefeller to have been named as applicants when the application was filed. Rockefeller was not named as an applicant. Accordingly, the OD determined that the named Proprietors could only validly claim priority to the third provisional application, and by the filing date of that application there had published prior art that invalidated the granted claims. In this regard, the preliminary opinion may provide guidance on the OD's thinking, where that opinion states that "In both the EPC and the Paris convention systems the decisive fact for a valid claim of priority is the status of applicant, rather than the substantial requirement [] to the subject matter of the first application" (emphasis in opinion). The OD determined (preliminarily) that "neither the requirement of the applicant's identity nor the proof of a valid success in title [had] been fulfilled" for the claimed invention, and stresses that these were requirements to promote legal certainty that would protect third parties' interests, and that these requirements were not subject to the national law of the priority document. Nor, according to the preliminary opinion could the granted European patent properly claim priority to U.S. 61/758,468 because that document failed to disclose the length of the guide sequence as claimed.

The Broad argued that this was a misapplication of Article 87 and the Paris Convention, and that priority should be determined based on the national law of the priority document. Here, the earlier provisional applications (in the Broad's view) disclosed more than one invention, and the invention pursued in the granted European patent was invented by the Harvard, MIT, and Broad inventors, and not by Dr. Marraffini. Accordingly, those inventors through their assignees properly claimed the priority right to what was disclosed in those provisional applications and contained in the granted European patent.

The Broad filed a notice of appeal and in a press release evinced an intention to make some of these arguments before the Technical Boards of Appeal (although many believe that the decision is consistent with how the EPO has administered their law of priority and that the Broad faces a difficult task in seeking to overturn the OD's decision).

Paradoxically, just two days before the OD's decision, the Broad won its arbitration against the Rockefeller and Dr. Maraffini, wherein U.S. patents claiming priority to some of the same provisional applications were determined to properly exclude Dr. Maraffini as an inventor and to quiet title to these patents with the Broad et al. and not the Rockefeller. This occurrence was not considered by the OD (who deemed its submission two days prior to oral proceedings to be untimely) and may not be particularly relevant to the Broad's appeal, insofar as it is another example of the differences between U.S. law and the EPC regarding a priority determination.
Trans-Pacific Partnership Becoming a Reality

January 23, 2018

By Kevin E. Noonan –

One of Donald J. Trump's signature campaign promises was to reject the Trans-Pacific Partnership negotiated by the Obama administration, and true to his word he did just that almost immediately upon being sworn into office (see "Why President Trump Is Wrong about Trans-Pacific Partnership Agreement"). This action raised questions about the fate of the agreement, which had as a trigger for coming into force that the signatories make up 34% of global GDP. Last July, representatives of the "TPP-11" (all of the TPP member states other than the United States, i.e., Australia, Brunei, Canada, Chile, Japan, Malaysia, Mexico, New Zealand, Peru, Singapore, and Vietnam) met to discuss implementation of the TPP without U.S. involvement. They indicated then that they would continue to meet and negotiate, and expressed hope that they would be able to finalize a trade agreement by the end of the year having only minimal differences from the original text of the TPP agreement.

Today, the Financial Times reported that the TPP-11 have indeed come to an agreement and plan on ratifying the TPP in March, sourcing the information from the Japanese government. The process has resulted in a name change: the agreement is now called the Comprehensive and Progressive Agreement for Trans-Pacific Partnership or CPTPP and, according to FT, "lays down a marker to China by setting high legal standards for trade and opens up the possibility of other Asian countries joining the pact."

As a reminder of opportunities lost, and provided there have been no wholesale changes in the treaty during current negotiations, the IP provisions of the treaty have broad scope, encompassing copyrights, trademarks, patents, and trade secrets. These provisions are aimed at establishing a minimum level of protection among the member states, and to harmonize such protections where possible. The patent provisions define eligible subject matter broadly, for "any invention, whether a product or process, in all fields of technology, provided that the invention is new, involves an inventive step and is capable of industrial application." Market exclusivity provisions regarding agricultural products are granted for at least 10 years, and regulated pharmaceutical products are entitled to at least five years of market exclusivity. Signatories will provide a legal framework for the pharmaceutical license holder to challenge approval and marketing of any generic version of a patented drug. Biologic drugs are afforded at least eight years of market exclusivity, or at least five years combined with other regulations in a signatory country that would result in at least eight years of exclusivity. All these provisions are subject to further review by the signatories after 10 years, to provide the ability to adapt the exclusivity term based on experience. These exclusivity terms—which are shorter than those available to biologic drug innovators in the United States (12 years) or Europe (10 years)—are longer than the terms (i.e., no exclusivity term) available in many of the signatory states. These provisions provided in signatory countries the prospect that patent protection would be supported by regulatory regimes that encourage investment in creating distribution and professional networks to bring patented pharmaceuticals to these populations that might otherwise be unattractive for such investment. Paradoxically in view of those that believed the treaty would preclude access to lifesaving medicines in developing countries, having this framework might actually have increased the likelihood that such drugs become more generally available in those countries.

The agreement also contains enforcement provisions for protecting IP rights, aimed at "permit[ting] effective action against any act of infringement of intellectual property rights covered by this Chapter, including expeditious remedies to prevent infringements and remedies that constitute a deterrent to future infringements," available in equal measure for patent, copyright, or trademark infringement. In addition to damages and the possibility of an injunction against future infringement, the agreement empowers signatories to destroy infringing articles, particularly counterfeit goods, and there are particular provisions relating to counterfeit articles identified at a signatory's borders. The TPP further provides, for the first time in an international trade agreement, criminal penalties for trade secret theft, as well as criminal enforcement provisions for willful trademark or copyright infringement including counterfeiting, intercepting or transmitting without authorization an encrypted program-carrying cable signal, and provisions relating to Internet service providers with regard to preventing unauthorized use of copyrighted materials.

The good news for U.S. biologic drug companies is that there are now opportunities for the benefits of the pact to accrue to them, provided that they partner with indigenous companies in member countries or resource their biologic drug production to an affiliate in a TPP country in order to reap the 8-year market exclusivity benefits under the treaty. Potential bad news includes the loss of U.S. leadership and cultivation of and protections for U.S. interests amongst the signatories. Potentially worse news is the potential for China to enter the vacuum of leadership created by U.S. withdrawal. China's participation is evidently contemplated by the TPP-11 (or perhaps more accurately, CPTPP-11), and such entry could further exacerbate trade imbalances that paradoxically were a prime motivation for the current administrations "America First" policy proclivities. While such sloganeering may create cheering when broadcast to the American electorate, global realities may be much less accommodating to the outcome desired by this Administration's supporters. One thing is clear: the CPTPP is unlikely to suffer the fate of other American initiatives abandoned by succeeding administrations (like the League of Nations), and we will likely not be happy when we are on the outside looking in.

Image of Membership of the Trans-Pacific Partnership by JayCoop, from the Wikimedia Commons under the Creative Commons Attribution-Share Alike 4.0 International license.
Free Stream Media Corp. v. Alphonso Inc. (N.D. Cal. 2018)

January 22, 2018

Claims Directed to Television Survive Abstract Idea Challenge

By Joseph Herndon —

In a recent decision from the U.S. District Court Northern District of California, involving Free Stream Media Corp. v. Alphonso Inc., claims of a television system patent survived a motion to dismiss under 35 U.S.C. § 101.

The Plaintiff in this action is Free Stream Media Corp., which does business as Samba TV (Samba). Samba charged Alphonso with infringement of U.S. Patent No. 9,386,356, entitled "Targeting with Television Audience Across Multiple Screens."

As the patent title reflects, the claimed invention involves the concept of targeting content—including advertising—to television viewers. A stated goal of the invention reflected in the '356 patent is to take advantage of a missed "revenue opportunity," specifically, the chance to profit by targeting ads to a person's smartphone based on information collected about the person, such as what the person has watched on television.

The '356 patent describes that a networked device (e.g., a television, a set-top box, a computer, a multimedia display, an audio device, a weather measurement device, a geolocation device) may have access to information associated with a user. For example, the information may comprise an identification of a movie viewed by the user, weather information, a geolocation information, and/or a behavioral characteristic of the user when the user interacts with the networked device. Furthermore, the networked device may present to the user information that is irrelevant to the user. As a result, the user may get tired, annoyed, and/or bored with the networked device. Additionally, the user may waste a significant amount of time processing the information that is irrelevant to the user. Therefore, a revenue opportunity may be missed, because an interested party (e.g., a content creator, a retailer, a manufacturer, an advertiser) may be unable to access an interested audience.

To address this missed "revenue opportunity," the '356 patent proposes using a "relevancy matching server" that is connected to the person's networked device (e.g., television) and mobile device (e.g., a phone or tablet). The user's TV viewing information is gathered as "primary data," defined as "data that may be associated with a user and matched with targeted data."

The television may provide the primary data directly (e.g., by identifying the show title or specific commercial being broadcast), or it may capture snippets of audio or video "fingerprint data" from which the current broadcast can be identified. The invention's "relevancy matching server" then searches a database to find matching "targeted data" (e.g., an advertisement) that relates to what is on the television, and displays the selected targeted ad on the person's mobile device.

Claim 1 serves as an example of the claims, and is reproduced below:

1. A system comprising:
    a television to generate a fingerprint data;
    a relevancy-matching server to:
        match primary data generated from the fingerprint data with targeted data, based on a relevancy factor, and
        search a storage for the targeted data;
    wherein the primary data is any one of a content identification data and a content identification history;
    a mobile device capable of being associated with the television to:
        process an embedded object,
        constrain an executable environment in a security sandbox, and
        execute a sandboxed application in the executable environment; and
    a content identification server to:
        process the fingerprint data from the television, and
        communicate the primary data from the fingerprint data to any of a number of devices with an access to an identification data of at least one of the television and an automatic content identification service of the television.

Alphonso insisted that the '356 patent "claims nothing more than the abstract idea of selecting and sending targeted data to a person's mobile phone or tablet, based on information gathered about the person, such as what the person has watched on TV."

Reviewing Alphonso's motion to dismiss, the District Court applied the Alice two-step framework for determining patent eligibility of the claims.

Samba relied heavily on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), which supports the notion that a dividing line can be drawn between patents which merely describe using a computer and/or the internet to carry out pre-existing and well-known tasks and techniques, and those that relate to the functioning of computers themselves (e.g., specific asserted improvement in computer capabilities). The former will virtually always fail under Alice unless some "inventive concept" can be found in the second step of the analysis; the latter are substantially less easily characterized as merely abstract ideas.

But Alphonso insisted that the '356 patent likewise claims nothing more than the same basic abstract idea—it teaches targeting advertising (or other data) to a consumer based on using data gathered about what the consumer is watching on TV, i.e., "know your audience."

Here, the District Court sided with Samba. The District Court found that the '356 patent is not directed at merely the abstract idea of targeting advertising. Rather, it describes systems and methods for addressing barriers to certain types of information exchange between various technological devices, e.g., a television and a smartphone or tablet being used in the same place at the same time.

To be sure, the end goal of the invention is to improve the delivery of relevant information—i.e., targeting advertising (or other content)—but that does not mean that it does nothing more than direct a person of ordinary skill in the art to use a computer system to implement a conventional and known process.

The District Court found that the claims are directed at specific techniques for connecting the content on a television and a mobile device through purported technological improvements. As such, the claims pass step 1 of the Alice test and the analysis need go no further.

Because the District Court found that the '356 patent purports to overcome particular technological barriers to such targeting, Alphonso's characterization of it as claiming only an abstract idea failed, and the motion to dismiss was denied.

Notably, the District Court distinguished OpenTV, Inc. v. Netflix, Inc., 76 F. Supp. 3d 886 (N.D. Cal. 2014), a case that Alphonso urged is instructive here. In OpenTV, one of the patents described "[a] method for providing targeted programming to a user outside of the user's home." The OpenTV court concluded that the patent did not pass Alice muster because: "The concept of gathering information about one's intended market and attempting to customize the information then provided is as old as the saying, 'know your audience.' Like the concepts in Bilski and Alice, the mere fact that generic computer processors, databases, and internet technology, can now be used to implement the basic idea, with certain perceived greater advantages, does not give rise to a patentable method."

Alphonso argued that OpenTV showed that such concepts included in the '356 patent are abstract, and further argued that on their face the claims do not expressly refer to, or obviously address, technological barriers, or how such barriers are being overcome through the invention. But the District Court found that because the claims plainly describe methods and systems that call for the very kinds of communications between devices that are not possible through conventional devices operating in standard fashion, this distinguishes the OpenTV decision.

The District Court further noted that to the extent Alphonso argued that the patent does not adequately explain how the barriers are overcome when the described system and methods are employed, such issues do not support a finding of patent ineligibility under Section 101, but rather, are addressed under 35 U.S.C. § 112.

I agree with the District Court's decision, but it just seems that it should have been arrived at much more quickly. The claim explicitly recites "a television," "a relevancy-matching server," "a mobile device," and "a content identification server," each of which processes data and communicates various data amongst each other. How we have come to a place in the law where "a television" is an abstract idea is a bit puzzling for sure.

Order Denying Motion to Dismiss by District Judge Richard Seeborg
USPTO to Remain Open during Government Shutdown

January 21, 2018

By Donald Zuhn –-

The failure of Congress to pass appropriations legislation funding government operations on Friday resulted in a shutdown of the Federal government at midnight Eastern Standard Time on Saturday, January 20, 2018. Prior to Saturday's shutdown, the most recent government shutdown had occurred on October 1-16, 2013. Interestingly, the current shutdown, which is eighth time federal employees have been furloughed as a result of a gap in budget funding, began on the one-year anniversary of President Trump's inauguration.

While the shutdown involves the furlough of non-essential personnel and curtailment of agency activities and services, the U.S. Patent and Trademark Office issued a notice that the Office remains operational despite the shutdown. The Office notes that it can "continue normal operations for a few weeks" because the Office has access to prior year fee collections. However, the Office also notes that should it exhaust those funds before the shutdown comes to an end, the Office itself would have to shut down at that time, "although a very small staff would continue to work to accept new applications and maintain IT infrastructure, among other functions."

The failure of the Senate to come to an agreement to end the shutdown late Sunday evening means that the government shutdown will remain in effect until at least noon Eastern Time on Monday, when the Senate is expected to vote to end the shutdown (at least for now) with a short-term spending bill that would last three weeks. If the shutdown persists until January 30, it could impact the President's second State of the Union address. As reported by The Hill, Office of Management and Budget Director Mick Mulvaney has suggested that the shutdown could last more than a week; the OMB Director, however, also conceded that there was a chance the shutdown could end on Monday.

Patent Docs will continue to monitor and report on the impact of the government shutdown on USPTO operations.
Conference & CLE Calendar

January 21, 2018

January 23, 2018 – "Drafting Software Patents to Survive Section 101 and AIA Challenges — Anticipating and Minimizing the Risk of 101, 103 Rejections, Recent Court Guidance" (Strafford) – 1:00 to 2:30 pm (EST)

January 25, 2018 – "IP Year in Review And Look Ahead" — Patent Prosecution (LexisNexis) – 2:00 pm (ET)

January 29, 2018 – "IP Year in Review And Look Ahead" — Patent Drafting (LexisNexis) – 2:00 pm (ET)

January 31, 2018 – "Paragraph IV Litigation: Best Practices and Practical Tips in 2018" (The Knowledge Group) – 3:00 to 4:00 pm (ET)

January 31, 2018 – "Obviousness of Biologics Inventions: Strategies for Biologics Claims in the U.S., Europe and China" (Strafford) – 1:00 to 2:30 pm (EST)

February 2, 2018 – "Classes without Quizzes – Invention, Imagination & Patent Incentives" (John Marshall Law School Center for Intellectual Property, Information & Privacy Law) – 4:00 to 5:30 pm (CST), Chicago, IL

February 13, 2018 – "Patent Drafting for Machine Learning: Structural Claim Limitations, Avoiding §101 or §112 Rejections" (Strafford) – 1:00 to 2:30 pm (EST)

February 14, 2018 – "Sect. 112 Indefiniteness in Chemical and Biotech Patent Claims — Drafting and Prosecuting Patent Claims That Will Hold Up Under Any Definiteness Standard" (Strafford) – 1:00 to 2:30 pm (EST)

February 21-22, 2018 – Advanced Summit on Life Sciences Patents (American Conference Institute) – New York, NY

March 5-6, 2018 – Advanced Patent Law Seminar (Chisum Patent Academy) – Houston, TX

March 8-9, 2018 – Advanced Patent Law Seminar (Chisum Patent Academy) – Cincinnati, OH
Webinar on Patent Drafting for Machine Learning

January 20, 2018

Strafford will be offering a webinar entitled "Patent Drafting for Machine Learning: Structural Claim Limitations, Avoiding §101 or §112 Rejections" on February 13, 2018 from 1:00 to 2:30 pm (EST). Gregory Rabin of Schwegman Lundberg & Woessner and Michael D. Stein of Baker & Hostetler will provide guidance to patent practitioners on overcoming the challenges when seeking patent protection for machine learning inventions, and also discuss what can be done to anticipate and minimize the risks of § 101 or § 112 rejections. The webinar will review the following issues:

• What hurdles must patent counsel overcome to demonstrate inventorship?
• How can patent counsel meet the requirements under § 101 and § 112 in machine learning patent applications?
• What steps should patent counsel take to minimize the likelihood of § 101 or § 112 rejections?

The registration fee for the webcast is $297. Those interested in registering for the webinar, can do so here.
JMLS Presentation on Invention, Imagination & Patent Incentives

January 20, 2018

The John Marshall Law School Center for Intellectual Property, Information & Privacy Law will be hosting Richard S. Gruner, former Director, Center for Intellectual Property Law, John Marshall Law School, who will be giving a presentation entitled "Classes without Quizzes – Invention, Imagination & Patent Incentives" from 4:00 to 5:30 pm (CST) on February 2, 2018 at the John Marshall Law School in Chicago, IL. The presentation is about three things: imagination, invention, and shaping patent law incentives, topics that are seemingly disparate but which are actually linked subjects.

There is no registration fee for the presentation. Those interested in registering for the pre4sentation can do so here.
Webinar on Indefiniteness in Chemical and Biotech Patent Claims

January 20, 2018

Strafford will be offering a webinar entitled "Sect. 112 Indefiniteness in Chemical and Biotech Patent Claims — Drafting and Prosecuting Patent Claims That Will Hold Up Under Any Definiteness Standard" on February 14, 2018 from 1:00 to 2:30 pm (EST). Thomas L. Irving and Amanda K. Murphy of Finnegan Henderson Farabow Garrett & Dunner, and Amelia Feulner Baur of McNeill Baur will provide guidance to patent counsel on the impact of recent Federal Circuit and PTAB case law on daily patent practice, and offer best practices to navigate pre- and post-issuance scrutiny for compliance with 35 U.S.C. § 112(b). The webinar will review the following issues:

• How do the decisions distinguish the USPTO’s standard and the court’s standard for indefiniteness?
• What are the implications of the post-Nautilus and post-Packard/McAward cases for patent counsel in drafting applications?
• What steps can counsel take to increase the likelihood that patent claims will survive in litigation and under PTAB review?

The registration fee for the webcast is $297. Those interested in registering for the webinar, can do so here.
More Aqua Products Fallout — Taiwan Semiconductor Manufacturing Co. v. Godo Kaisha IP Bridge

January 18, 2018

By Andrew Williams —

In November, Chief Judge David P. Ruschke of the U.S. Patent and Trademark Office's Patent Trial and Appeal Board issued a memorandum entitled "Guidance on Motions to Amend in view of Aqua Products" (see "PTAB Motions to Amend Post-Aqua Products — Chief Judge Ruschke Issues Guidance"). The bottom line of this guidance was that the "practice and procedure before the Board will not change," except in the rare situation in which the "entirety of the evidence of record before the Board in in equipoise as to the unpatentability of one or more substitute claims." But how has Aqua Products impacted specific motions to amend? We received some indication in December when a three-judge panel granted-in-part a motion to amend in Taiwan Semiconductor Manufacturing Co. v. Godo Kaisha IP Bridge (IPR2016-01249). The Board in that case found that: (1) the motion to amend did not include an unreasonable number of substitute claims, (2) substitute claim 13 was not broader than the scope of the challenged claims, (3) claim 13 did not introduce new matter, and (4) claim 13 responded to a ground of unpatentability in the proceeding. The other two substitute claims, claims 11 and 12, were found to be unpatentable over the prior art of record because the newly introduced limitations were found to be "met by the very references asserted in the ground of unpatentability involved in" the IPR. APJ Michael J. Fitzpatrick joined this per curiam decision, but he wrote separately because he believed the decision should have informed which party bears what burden(s) with respect to the Motion to Amend.

IPR2016-01249 was directed to U.S. Patent No. 6,538,324, which "relates to a semiconductor integrated circuit including a copper wiring layer, and more particularly to a barrier film which prevents copper diffusion from such a copper wiring layer." Without going into the details, the only ground instituted in this IPR proceeding was that specific claims of the '324 patent were obvious over U.S. Patent No. 6,887,353 (Ding) in view of U.S. Patent No. 5,893,752 (Zhang). On December 20, 2017, the Board issued its final written decision in which it found that the petitioner had met its burden of showing the relevant claims would have been obvious over Ding and Zhang. However, the Patent Owner filed its motion to amend proposing substituting claims 11-13 for issued claims 5, 8, and 7, respectively. The Board pointed out that "[a] motion to amend must meet the requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121." However, it noted that Aqua Prods., Inc. v. Matal held that "[a] patent owner does not have a burden to prove its substitute claims are patentable under 35 U.S.C. §§ 102 and 103," although the Board pointed out that 35 U.S.C. § 318(a) still requires that patentability be an issue in deciding the motion.

One of the reasons that this case is noteworthy is the way that the Board handled substitute claim 13. Because it depended from substitute claim 11, we include both for reference:

11. (Substitute for claim 5) A multi-layered wiring structure comprising a barrier film which prevents diffusion of copper from a copper wiring layer formed on a semiconductor substrate,
    said barrier film having a multi-layered structure of first and second films,
    said first film being composed of crystalline metal containing nitrogen therein, the nitrogen being present throughout the first film,
    said second film being composed of amorphous metal nitride,
    said barrier film being constituted of common metal atomic species,
    said first film being formed on said second film,
    said first film in direct contact with said second film,
    said first film containing nitrogen in a smaller content than that of said second film.

13. (Substitute for claim 7) The multi-layered wiring structure as set forth in claim [[5]] 11, wherein said first film has a thickness in the range of 60 angstroms to 300 angstroms both inclusive;
    wherein said first film being composed of crystalline metal containing nitrogen therein is a solid solution; and
    a copper film is formed on and in direct contact with said first film.

Interestingly, eight days before the final written decision, on December 12, 2017, the Board issued an Order suggesting that they "intend[ed] to grant the Motion to Amend with respect to claim 13 in a forthcoming final written decision." However, the Board indicated that this intent was conditional on the Patent Owner re-presenting claim 13 in independent form, and more importantly replacing each instance of "being composed of" with the phrase "consisting essentially of." This was because the Patent Owner had argued that the former means the latter. For whatever reason, the Patent Owner chose not file the additional requested paper. Nevertheless, the Board still allowed the substitution of claim 13 with the caveat that "[f]or purposes deciding the merits of the Motion to Amend as it relates to claim 13, [they] treated[ed] each instance of 'being composed of,' including those in claim 11 from which claim 13 depends, as Patent Owner asserts, to mean 'consisting essentially of.'" It will be interesting to see if other panels take a similar approach and provide guidance as to which claims might survive a Motion to Amend, and whether future panels will provide the Patent Owner with the opportunity to make changes to the proposed claims.

As indicated above, APJ Fitzpatrick joined the per curiam decision, but he wrote separately. He felt that the decision did not disclose who bears the burden(s), and therefore future "patent owners will be left guessing what their motion to amend must contain." Therefore, he would have explicitly held that: "the Motion to Amend is granted with respect to proposed claim 13 because Patent owner met its burden or production to show that claim 13 complies with the statutory and regulatory requirements for motions to amend, and because Petitioner did not meet its burden to prove by a preponderance of the evidence that claim 13 is unpatentable." In fact, he made clear that he would place the burden of production on petitioners because the statute and rule do not mention novelty, non-obviousness, or patentability generally (citing 25 U.S.C. § 316(d) and 37 C.F.R. § 42.121). Moreover, he indicated that he would also place the burden of persuasion on petitioners "because doing so is consistent with the most relevant statutory provision and there is no applicable rule requiring otherwise." There were two caveats to these rules. First, he believes that the burden on production should be on the patent owner to show that the written description requirement has been met, because (among other reasons) 35 U.S.C. § 316(d)(3) states that "[a]n amendment . . . may not . . . introduce new matter." Unfortunately, this statement may be at odds with the Federal Circuit's statement in Bosch Automotive Service Solution, LLC v. Matal, decided two days later on December 22, 2017, in which the Court indicated that petitioner bears the burden of proving all aspects of unpatentability "by a preponderance of the evidence." ("This burden of proof allocation applies to questions of indefiniteness, as with other questions of unpatentability. The second was that he would place the burden of production on the patent owner to establish that a substitute claim is responsive to an instituted ground of unpatentability.) This is based in his belief that Rule 42.20(c) was not overruled by Aqua Products, but that instead the Board's interpretation of the rule was as set forth in Idle Free and MasterImage. Instead, he expressed his belief that "Rule 42.20(c)'s application to motions to amend should be more closely tethered to the statute and rule that explicitly address motions to amend, i.e., § 316(d) and rule 42.121."

APJ Fitzpatrick also explained why putting the burden on the petitioner should not be a concern, even when it chooses not to oppose the motion to amend. He pointed out that instead of ending up with any potential claim, the Patent Owner will still be restricted by the statute. For example, "§ 316(d)(3) requires every substitute claim to be narrower than the challenged claim it is replacing." Therefore, the public benefits by the resulting narrowing of claim scope. In fact, § 316(d)(2) demonstrates Congress's belief that this is a public benefit, because it "permits parties to jointly request entry of a narrower claim to facilitate settlement."

Of course, APJ Fitzpatrick's comments are not part of the decision in this case. But they do at least shed some light on how on APJ is approaching motions to amend claims. And they may be indicative of how other APJs will address these issues. As a result, his concurrence may end up being the guidance that he believed Patent Owner deserved from any decision from Board on motions to amend.

recent posts

about