USPTO Releases Draft Form for "Related Applications"

The USPTO has released a draft form (SB 206) for identifying "related applications" under the continuation rule changes. 37 CFR 1.78(f) will become effective on November 1, 2007, and the deadline for complying with the new provisions regarding related applications is February 1, 2008.

To download a copy of the form, click here (link).

Instructions:

Notes

Under 37 CFR 1.78(f)(1), applicant in a nonprovisional application that has not been allowed (37 CFR 1.311) must identify by application number (i.e., series code and serial number) and patent number (if applicable) each other pending or patented nonprovisional application, in a separate paper, for which the following conditions are met:

(A) The nonprovisional application has a filing date that is the same as or within two months of the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;

(B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application; and

(C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application.

Under 37 CFR 1.78(f)(2)(i), a rebuttable presumption shall exist that a nonprovisional application contains at least one claim that is not patentably distinct from at least one of the claims in another pending or patented nonprovisional application if the following conditions are met:

(A) The nonprovisional application has a filing date that is the same as the filing date of the other pending or patented nonprovisional application, taking into account any filing date for which a benefit is sought under title 35, United States Code;

(B) The nonprovisional application names at least one inventor in common with the other pending or patented nonprovisional application;

(C) The nonprovisional application is owned by the same person, or subject to an obligation of assignment to the same person, as the other pending or patented nonprovisional application; and

(D) The nonprovisional application and the other pending or patented nonprovisional application contain substantial overlapping disclosure. Substantial overlapping disclosure exists if the other pending or patented nonprovisional application has written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the nonprovisional application.

Instructions:

(1) In the column on the right, list the numbers of the applications and patents that meet the conditions set forth in 37 CFR 1.78(f)(1)(i). For supplemental lists, please do not list previously submitted applications and patents.

(2) In the first column on the left, place a check mark in the box if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached an explanation of how the application contains only claims that are patentably distinct from the claims in the cited application or patent.

(3) Place a check mark in the box in the second column on the left, if the cited application or patent also meets the conditions set forth in CFR 1.78(f)(2)(i) and applicant attached a terminal disclaimer in accordance with 37 CFR 1.321(c).

(4) Place a check mark in the box in the third column on the left, if applicant also attached an explanation why there are two or more pending nonprovisional applications containing patentably indistinct claims. See 37 CFR 1.78(f)(2)(ii)(B).

Troll Tracker: Tracker of "Patent Trolls", Blogger . . . Patent Infringer?

When newspaper and magazine articles list the "perils of blogging," issues like defamation, disclosure of trade secrets, and bad publicity are almost always near the top of the list. But patent infringement? Fuggetaboutit.

Well, it turns out that the anonymously written Patent Troll Tracker may have stepped on the wrong toes in its' criticism of "trolling" activity, particularly in the E.D. Tex. According to the blog, the author allegedly received the following e-mail from Ray Niro of the law firm of Niro Scavone, Haller & Niro:

Please identify yourself. You may be infringing United States Patent No. 5,253,341.

Raymond P. Niro
(Transmitted by Donna L. Wartman)

For those that may not be familiar with that patent number, the patent was one of the infamous patents asserted by the now-defunct TechSearch back in the 90's against a slew of companies, as well as the Internet Patent Newsletter author Greg Aharonian. After enduring a 7 year reexamination, the patent managed to escape with 1 surviving claim.

Needless to say, this set off a firestorm at the Troll Tracker Blog, and the author (referred to as "Mr. Tracker" in subsequent correspondences) decided to push back.

Read Troll Tracker's response here (link)

Read Troll Tracker's follow-up letter here (link)

Read Niro's reply here (link)

For background information on the Niro/Aharonian tussle, see this article from the San Francisco Weekly dated December 6, 2000 (link)

Vonage Verdict Upheld Amidst Claim Construction Differences

"We have made clear the methods by which claims must be construed. "

- Judge Michel, dissenting-in-part,

Verizon Services Corp. v. Vonage Holdings Corp. (2007-1240), September 26, 2007

Verizon successfully sued Vonage for infringing 3 patents related to IP telephony, and was awarded $58 million of compensatory damages, a 5.5% royalty rate on any future infringing sales, and an injunction barring Vonage from using certain methods and devices. Vonage appealed, arguing that (1) the lower court improperly construed the claims, (2) the injunction was unwarranted, and (3) the judge's instructions on obviousness didn't square with KSR.

On claim construction, the majority opinion upheld the construction on all the patents, except for one patent, where the CAFC found that the patentee disclaimed subject matter through argument during prosecution.

We have held that a statement made by the patentee during prosecution history of a patent in the same family as the patent-in-suit can operate as a disclaimer. Microsoft Corp. v. Multi-tech Sys., Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) . . . The applicants gained allowance of the claims of the [] application after stating that the prior art systems "all appear to be directed to non-localized systems," and that the "present invention," by contrast, was "restricted to operate within a few feet from a base station (i.e. wireless handsets)." . . . We think that this language clearly disclaimed coverage of systems operating with a range greater than a "few feet," and that the district court erred in failing to construe the localized system as requiring a range of a few feet.

Notably, Judge Michel dissented from the disclaimer ruling and stated that the entire judgment should be affirmed. Judge Gajarsa dissented from the claim construction of one of the other patents-in-suit, and thought a remand was necessary. Of the three patents, only one managed to get a unanimous claim construction from the bench.

Regarding the injunction, the CAFC found no error in the district court's ruling which relied on the eBay v. MercExchange factors. In a footnote, the court added the following comment:

One factor that is relevant to the balance of the hardships required by the Supreme Court’s decision in eBay was not considered by the district court, namely whether the district court should have allowed time for Vonage to implement a workaround that would avoid continued infringement of the ’574 and ’711 patents before issuing its injunction. Verizon had a cognizable interest in obtaining an injunction to put an end to infringement of its patents; it did not have a cognizable interest in putting Vonage out of business. However, as Verizon points out, Vonage made no request for a workaround period to the district court, and Vonage has already had several months since the district court’s judgment to implement a workaround.

Finally, Vonage challenged the district court’s instructions to the jury on obviousness concerning the need to find a "suggestion in the prior art to combine the elements." The CAFC noted that, since only one reference was being considered on the patents in question, the error in those cases was harmless:

[W]e note that there cannot be prejudicial error with respect to the ’574 and ’711 patents because Vonage does not dispute that the obviousness testimony at trial centered on a single reference ["Jonas"], and thus any alleged error in instructions requiring a finding of motivation to combine several references would have been harmless.

SCOTUS Agrees to Re-Visit the Scope of Patent Exhaustion

The U.S. Supreme Court announced that it would review the case of Quanta Computer Inc. v. LG Electronics Inc., 06-937, where LG Electronics accused Quanta Computer Inc of Taiwan and others of infringing patents on microprocessor chips in its personal computers.

The question presented in this case is “[w]hether the Federal Circuit erred by holding, in conflict with decisions of this Court and other courts of appeals, that respondent’s patent rights were not exhausted by its license agreement with Intel Corporation, and Intel’s subsequent sale of products under the license to petitioners.”

Quanta and the other defendants purchase microprocessors and chipsets from Intel or its authorized distributors and install them in computers. Intel is authorized to sell the products to defendants under an agreement with LG. However, pursuant to this agreement, Intel notified defendants that, although it was licensed to sell the products to them, they were not authorized under that agreement to combine the products with non-Intel products.

LGE brought suit against defendants, asserting that the combination of microprocessors or chipsets with other computer components infringes LG’s patents covering those combinations. The district court granted summary judgment of noninfringement of each patent. It determined that there was no implied license to any defendant, but that, with the exception of one patent, LG’s rights in any system claims were exhausted. The court also found that LG was contractually barred from asserting infringement.

The CAFC reversed (link):

Regardless of any noninfringing uses, Intel expressly informed [the defendants] that Intel’s license agreement with LGE did not extend to any of defendants’ products made by combining an Intel product with non-Intel products. In light of this express disclaimer, no license can be implied.

* * *

This exhaustion doctrine . . . does not apply to an expressly conditional sale or license. In such a transaction, it is more reasonable to infer that the parties negotiated a price that reflects only the value of the ‘use’ rights conferred by the patentee" . . . Although Intel was free to sell its microprocessors and chipsets, those sales were conditional, and Intel’s customers were expressly prohibited from infringing LGE’s combination patents . . . The "exhaustion doctrine . . . does not apply to an expressly conditional sale or license."

Under the CAFC's Mallinckrodt decision, restrictions on post-sale use is allowable, as long as it does not “venture beyond the patent grant and into behavior having an anticompetitive effect not justifiable under the rule of reason.”

Quanta (and amicus briefs) argue that Mallinckrodt conflicts with the SCOTUS ruling in Univis Lens:

Univis Lens . . . held that the authorized sale of an article manufactured “under the patent” exhausts all patent claims in the article regardless of any purported limitation on the subsequent use and enjoyment of the article . . . Univis Lens held that a condition on the post-sale use and enjoyment of a patented device violated the antitrust laws because it was not enforce-able under the patent laws, and thus was not protected against antitrust scrutiny. See 316 U.S. at 252 (“[t]he price fixing features of appellees’ licensing system, which are not within the protection of the patent law, violate the Sherman Act”). United States v. Univis Lens Co., 316 U.S. 241 (1942).

Opponents of the CAFC's decision have stated that the ruling "threatens to impose a huge financial and practical burden on manufacturers of technology products." (Quanta makes the wildly popular Apple iPhone).

U.S. Solicitor General Paul Clement recommended earlier that the Supreme Court take up the case. To view the SCOTUS brief from the DOJ, click here (link).

The Supreme Court is expected to hear arguments in the case early next year, with a decision likely by the end of June.

See additional information at Patently-O.

- A few weeks ago, LG Electronics filed a separate patent-infringement suit against Quanta Computer, this time for infringing on four patents used to make DVDs.

Patentee Win Rates Rise, then Dip Sharply After KSR

LegalMetric has released a new study on patent owner win rates since the Supreme Court's decision in KSR, and found that patent owner win rates at first increased but then fell substantially below their long-term averages.

According to LegalMetric,

[T]he long-term overall win rate for patent owners varies slightly, around 60 percent. In May and June (after the Supreme Court KSR decision which was issued on April 30, 2007), the overall win rate increased to 79.5 percent (May) and 69.7 percent (June). Thereafter it dropped to 55.6 percent in July and further to 41.2 percent in August. The August figure is considerably outside the normal range of variation for overall patent owner win rates.

The long-term contested win rate for patent owners varies around 25 percent. In May it spiked to 46.7 percent, but it has fallen thereafter to 23.1 percent in June (similar to the long-term average), 14.3 percent in July, and 18.1 percent in August. The latter two figures are outside the normal range of variation for contested win rates and may indicate a long-term change. Time will tell.

One hypothesis for the short-term increase and longer-term fall in win rates post-KSR is that cases which easily met the new standard were decided more quickly. If so, the public should see some rebound from the extremely low win rates of July and August.

View press release from LegalMetric here (link).

View Power Point slides charting the statistics here (link).

CAFC Releases a Big "Two-Fer" On Patentable Subject Matter

Will all the fuss over 35 U.S.C. 101 and the USPTO's McGruff-like approach to "taking a bite out of patentable subject matter," one would expect that any forthcoming decisions from the CAFC on section 101 would firmly address the boundaries of of patentable subject matter. Last week, the CAFC provided two ("two, TWO!") decisions for the price of one on section 101:

In re Comiskey (2006-1286) September 20, 2007 (link)

Comiskey’s patent application claims a method and system for mandatory arbitration involving legal documents, such as wills or contracts. The claims in question did not reference, and do not require, the use of a device such as a computer. Considered a "mental process," the CAFC found the claims were not intended to be covered by the patent statute:

It is thus clear that the present statute does not allow patents to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes. In other words, the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable.

The rub here was that two of the independent claims recited software "modules" that performed specific tasks related to the arbitration. Some of the dependent claims specifically recited structures embodying hardware as well (WWW, electronic communication, etc.). Giving a tacit nod to In re Schraeder and Warmerdam, the CAFC ruled that reciting limitations relating to hardware (or other "tangible" mediums) could bring otherwise unpatentable mental processes into the realm of patentable subject matter:

When an unpatentable mental process is combined with a machine, the combination may produce patentable subject matter, as the Supreme Court’s decision in Diehr and our own decisions in State Street Bank and AT&T have confirmed . . . While the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter . . . these claims in combining the use of machines with a mental process, claim patentable subject matter.

However, while the 101 barrier may be satisfied in this context, the obviousness hurdle becomes more of a factor:

The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.

In re Nuijten (2006-1371 ), September 20, 2007 (link)

The sole issue in this case was whether or not a signal is patentable subject matter. Nuijten’s patent application discloses a technique for reducing distortion induced by the introduction of "watermarks" into signals. Nuijten recited claims directed to "[a] method of embedding supplemental data in a signal" and "[a]n arrangement for embedding supplemental data in a signal", which were found to be patentable by the PTO.

The no-no came when Nuijten claimed "[a] signal with embedded supplemental data." Because of the transitory nature of signals, the CAFC (in a 2-1 decision) found that claiming a signal itself could not fall under any of the statutory categories of 35 U.S.C. 101:

The claims on appeal cover transitory electrical and electromagnetic signals propagating through some medium, such as wires, air, or a vacuum. Those types of signals are not encompassed by any of the four enumerated statutory categories: "process, machine, manufacture, or composition of matter."

The Nuijten court also clarified State Street which stated that "[t]he question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to—process, machine, manufacture, or composition of matter—but rather on the essential characteristics of the subject matter, in particular, its practical utility." While patentees have previously argued that utility was the main focus, the CAFC stated that this approach was not entirely correct:

In telling courts where they "should not focus" their analysis, State Street was advising not to be concerned about debates over "which of the four categories" . . . subject matter falls into—that is, not to be overly concerned with pigeonholing subject matter once the court assures itself that some category has been satisfied. If, for instance, a court determines that a claim encompasses either a process or machine but is unsure which category is appropriate, it need not resolve the ambiguity. The claim must be within at least one category, so the court can proceed to other aspects of the § 101 analysis.

Linn, dissenting-in-part:

I agree with the majority that the subject of Nuijten’s signal claims is not a "machine," "process," or "composition of matter" as used in 35 U.S.C. § 101. As the majority recognizes, however, "[t]he question of whether the claimed signals are ‘manufactures’ is more difficult." . . . As mentioned, the Supreme Court quoted in American Fruit the following definition of "manufacture," upon which the majority relies today: "the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery." . . . Based on this definition and the associated definition of "article," the majority concludes that manufactures must be "tangible," a definition that excludes "[a] transient electric or electromagnetic transmission." . . . With all due respect, I believe that these conclusions are erroneous.

* * *

The PTO’s position makes little sense. As a doctrinal matter, the PTO should not look to § 101 sometimes and § 103 at other times to accomplish essentially the same end. As a matter of principle, there is little reason to allow patent claims to otherwise unpatentable, deemed abstractions just because those deemed abstractions are stored in a tangible medium, while rejecting the same inventions standing alone. Nuijten’s signal involves the same degree and type of human ingenuity whether or not it happens to be encoded in the magnetic fields of a hard disk drive, the optical pits of a compact disc, a stream of photons propagating across a vacuum, or any other specific form that technology might put it in. The signal is either a "new and useful" manufacture or it is not. To allow a patent on a storage medium containing the signal but to deny one to the real underlying invention "make[s] the determination of patentable subject matter depend simply on the draftman’s art" in the sense criticized by the Supreme Court in Flook. 437 U.S. at 593.

So what has changed? Not too much. Unfortunately, the CAFC has not provided any significant guidance on the application of 35 U.S.C. § 101, other than clarifying that (1) some nexus to a tangible medium is required, and (2) signals, per se, are not patentable. Of course, judge Linn's dissent is correct: applicants seeking to overcome the strictures of 35 U.S.C. § 101 need only tie in some "processor" (or similar) limitations to have their claims recognized by the PTO. Form over substance? You bet.

NOTE: In re Bilski, which rounds out the CAFC's "holy trinity" of patentable subject matter cases for the year, is scheduled for oral argument on October 1. Stay tuned.

Today, "Low Cost Drugs." Tomorrow, "Low Cost Car Parts?"

A report has surfaced today that the Quality Parts Coalition (QPC) is lobbying Congress to include a “repair” clause or exemption in U.S. design patent law to protect competition and allow lower consumer costs for collision repairs.

The QPC claims that car companies control more than 73 percent of the repair parts market, resulting in limited choices and increased costs to consumers. The QPC also claims that "shutting out" competition in the auto parts market would further increase costs to consumers as well as insurance companies by roughly $1 billion each year.

Last July, the QPC, along with numerous other trade organizations (Advocates for Highway and Auto Safety, Center for Auto Safety, Consumer Federation of America and Public Citizen) sent an open letter to lawmakers, stating that

"If the auto industry is allowed to continue their efforts to patent the design of these parts, crash-repair bills will significantly increase, quality will suffer in the absence of real competition, and safety will be compromised as families are forced to forego necessary repairs because of the high cost of replacement parts."

The letter added that an amendment to patent law should allow using an alternative repair part to restore a product to its "original appearance," without violating patents that protect manufacturers from rivals who would copy their designs.

Read press release from QPC here (link)

Read related economic study "Estimation of Benefits to Consumers from Competition in the Market for Automotive Parts" (link)

Read article from Market Watch "Protect drivers from high-cost car parts, Congress urged" (link)

Discount Shopping for IP

The Beard Group has issued a (relatively) new service called "The Intellectual Property Prospector" which identifies US and Foreign companies of any size filing for bankruptcy or reporting other financial difficulty and profiles their ownership of intellectual property.

According to the website:

The Intellectual Property Prospector features companies that meet strictly defined, predetermined criteria and is designed to support the efforts of firms and individuals interested in identifying opportunities in the specific area of intellectual property, which includes patents, trademarks, trade secrets, and licenses, among others.

In order to appear in the Intellectual Property Prospector, a company must report ownership of intellectual property assets, as well as meet one of the following conditions:

- An event which indicates financial distress; e.g., default, distressed exchange offer,
preferred dividend omission, debt at deep discount, restructuring, low rating,
audit concerns, covenant problems, and loss/deficit.

- Chapter 11, 7, or 15 bankruptcy filing

- Section 363 Sales

View Intellectual Property Prospector web page (link)

View sample of most recent listing (link).

View archived listings here (link)

Special thanks to Phillip Brooks from Patent Infringement Updates for the heads-up.

Friday Shorts

IPWatchdog is up for sale - Gene Quinn, patent attorney, law professor, and owner of IPWatchdog.com is placing the site up for auction at SitePoint. Minimum bid is set at $10,000, but it is expected that the site will fetch a price well in excess of $10k. Earlier this year, Patents.com was sold by patent attorney Carl Oppedahl. IPWatchdog claims that it was sold for "an undisclosed amount reportedly between $1 to $2 million. See the press release here (link).

Patent Cartoons? You Bet - cartoonist Stu Rees has a great site related to patent cartoons, and has updated his current list of "funnies." After spending the last few weeks mulling over continuation rule changes, you might consider visiting the site for a good chuckle (link).

White House Economic Advisor Files for "Tax Strategy Patent"? - A big ruckus was stirred this week when it was discovered that Edward Lazear, chairman of the president's Council of Economic Advisers, is listed as an inventor of an application that claims to help corporations find the tax planning method that will save them the most money by comparing different setups of the company's divisions for tax purposes. Read the whole scoop on Forbes.com (link).

Another Patent Challenged for "Unintentional" Abandonment

Defendants Victoria's Secret Stores LLC, Nordstrom Inc., Gap Inc. and The Neiman Marcus Group Inc. were recently sued over a patent related to a prosthesis for women's bras. During the course of prosecution, the patent was abandoned for failure to timely file a response. Almost 5 years after abandonment, the patent was revived, issued, and asserted against the defendants.

In light of the delay and surrounding circumstances, the defendants cried "j'accuse!" and have asked for summary judgment, claiming that the patent is invalid and that the U.S. Patent and Trademark Office abused its discretion by unlawfully reviving the patent's application.

Black made no attempt to meet the statutory standard that the entire period of her delay in prosecuting the '922 Application was "unavoidable." Instead, she merely filed a petition to revive alleging that the "entire delay" was "unintentional." That is the wrong standard and is not a "showing" of "unavoidable" delay. Accordingly, the '606 Patent that issued from the unlawfully revived '992 Application is invalid.

Black did not file the petition to revive the '992 Application until March 28, 2005 -- over five years after the respective mailing dates of both the final office action and the notice of abandonment. Furthermore, both Black and Hoffman stated in their respective declarations that "[t]he entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to 37 CFR § 1.137(b) was unintentional." (Emphasis added.) Neither Black nor Hoffman attempted to explain that the delay was unavoidable.

Read the motion for SJ here (link)

USPTO Releases Guidelines on Examination Support Docs (ESDs)

Under the revised continuation rules, applicants may submit more than five independent claims or more than twenty-five total claims in an application, only if the applicant files an examination support document (ESD).

The USPTO has published additional guidelines on what is expected from an ESD. The major points include:

1. Preexamination Search Statement: a statement that a preexamination search in compliance with 37 CFR 1.265(b) was conducted, including an identification of the field of search by United States class and subclass and the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;

2. Listing of References Deemed Most Closely Related: a listing of the reference or references deemed most closely related to the subject matter of each of the claims (whether in independent or dependent form) in compliance with 37 CFR 1.265(c);

3. Identification of Claim Limitations Disclosed by References: for each reference cited, an identification of all the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference;

4. Detailed Explanation of Patentability: a detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references; and

5. Showing of Support under 35 U.S.C. 112, ¶1: a showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such priority or benefit application in which such support exists.

NOTES:

• The guidelines "strongly recommend" that applicants include disclosed but unclaimed features that applicant may later claim in the initial preexamination search to avoid the need to update the preexamination search.

• The PTO likes search templates - according to the guidelines, the templates "should be considered when performing a search" (to see the search templates, click here)

• "The Office may consider a preexamination search insufficient if the Office determines that a number of references found in the areas where applicant has searched are more closely related to the subject matter of the claims than those references cited by the applicant."

• Mere text searches aren't enough - "Applicant should note that merely providing a list of the terms used in the text search will not be sufficient."

Download the ESD Guidelines here (link)

"Waiting for Nuijten" - 101 Rejections at the BAPI (Part 2)

As yesterday's post explained, 101 rejections at the BPAI are at an all-time high. Particularly troubling are the rationales supporting many of the decisions. Over the last year, the BAPI has regressed 35 U.S.C. 101 back to the Warmerdam days, where methods describing algorithmic processes are presumed unpatentable, while machines performing algorithmic processes will be allowed.

This, of course, was done away with in State Street, but you couldn't tell this from reading many of the BPAI's opinions. In fact, it is apparent that the BPAI doesn't favor State Street at all, since the case (as well as AT&T) is typically cited only in passing. Instead, the BPAI starts with the Supreme Court cases - Gottschalk v. Benson (decided in 1972) and Diamond v. Diehr (decided in 1981) - and then proceeds to cite many of the pre-State Street CAFC cases to support their decision to find the claim(s) unpatentable.

This approach is played out in numerous BPAI opinions:

Appeal 2007-1251 (U.S. Application 09/451,097):

Claim 37 recites two steps, (1) calculating statistics of motion vector information, and (2) generating a frame feature value comprising numerical information representing a quantity of a feature contained in a frame of image data using the calculated statistics. Both steps are mathematical functions, and the result is a mathematical value. Further, the claimed method includes no recitation of a computer. Thus, the method appears to be a disembodied concept.

[W]e find no physical subject matter being transformed, just numerical values being manipulated. Further, though the preamble recites "[a] method of associating frame feature values with a plurality of frames of image data," the method steps merely calculate statistics and generate a numerical value from the statistics. Thus, we find no physical subject matter being transformed.

We also find that the method of claim 37 fails to produce a useful, concrete, and tangible result. Specifically, the result of claim 37 is a numerical representation of a quantity of a feature. However, a number is neither concrete nor tangible. Thus, claim 37 is an abstract idea that is nonstatutory under 35 U.S.C. § 101.

Appeal 2007-0759 (U.S. Application 10/177,732):

Appellant’s disclosed and claimed invention is completely silent as to what is used to solve the algorithms and mathematical equations. The Examiner mentions a computer, but we find no mention in the disclosure of the use of such a device to solve the algorithms and equations (Answer 3). Thus, the disclosure does not rule out the use of a pencil and paper to solve the algorithms and equations. Even if a computer was used by Appellant, we find that the solved result of the algorithms and equations is merely a solved mathematical result that is never applied to something to produce some kind of response or result.

Appeal 2007-1089 (U.S. Application 10/348,277):

This is probably one of the most controversial decisions from the BPAI in 2007. Despite finding that a computer process is involved, and despite the finding that the process was useful, the BPAI nevertheless found the claims directed to nonstatutory subject matter. In an odd twist of logic, the panel looked to the specification (which described the computers, software, and "media objects") and concluded that this alone described data structures per se. Stranger still, the use of the term "media objects" were interpreted as "nonfunctional descriptive material":

[W]e find the scope of the instant claimed system and associated components broadly encompasses software, and/or data structures per se. We further find the scope of the instant claimed media objects broadly encompasses nonfunctional descriptive material (i.e., pictures, photographs, music, sounds, text, e-mail, movies, video, messages, documents, slides, movie or video stills, streaming video and/or audio and/or any combination thereof) .

Also, according to this panel, the key to finding patentable subject matter (where a machine is not explicitly recited) lies with In re Schrader. Moreover, the death of the Freeman-Walter-Abele test (FWA) at the BPAI appears to have been greatly exaggerated:

Although the FWA test is no longer considered particularly probative in the context of computer-implemented process inventions in view of Diehr . . . the erosion of FWA provides no support for the position that a non-machine implemented process, not
involving any transformation, might be patentable. The answer to that question is still provided by Schrader, and that answer, so far, is negative. While AT&T indicated that Schrader is "unhelpful" because it did not reach the question whether a "useful, concrete, and tangible result" occurred, the reason that case did not need to reach that question was because it found that Schrader’s method claims were unpatentable for lack of any transformation. In addition, Schrader’s claims did not require machine-implementation, unlike AT&T’s claims.

You can sample these, and numerous other BPAI opinions on patentable subject matter here (link).

"Waiting for Nuijten" - 101 Rejections at the BPAI (part 1)

Needless to say, the treatment of (non) statutory subject matter at the USPTO is becoming more contentious for practitioners. In Re Nujten, which was argued before the CAFC over seven months ago (!) (to hear an MP3 of the oral arguments, click here), is expected to resolve at least some of the issues regarding 35 U.S.C. 101.

The Nuijten decision could not come soon enough. The PTO has issued interim guidelines dealing with patentable subject matter almost two years ago and, despite the numerous comments and criticisms that were submitted by the public, the PTO has not provided any updates. It has been reported to the 271 Blog that a portion of these guidelines have been repudiated internally at the PTO (e.g., "a computer processing method . . ." is now considered acceptable form), but this information was not openly published.

2007 will be a banner year for 101 rejections, and the current crop of rejections have enjoyed longer staying power at the PTO. This is evidenced by the larger numbers of rejections that are being appealed to the BPAI. After bottoming out in 2005, 101 rejections are reaching new heights on appeal:

2007 - 55 cases
2006 - 43 cases
2005 - 14 cases
2004 - 18 cases
2003 - 30 cases
2002 - 26 cases
2001 - 30 cases

To make matters worse, the BPAI is boldly engaging in a form of "judicial activism" by increasingly issuing 101 rejections sua sponte. Worse still, the rationale underlying many of these rejections is based on cases that have been long overruled (In re Warmerdam, In re Schraeder, Freeman-Walter-Abele, etc.).

(to be continued . . . )

Breaking Down the Votes for HR 1908

Well, as everyone has heard, the Patent Reform Act of 2007 has successfully been voted through the House of Representatives by a 220/175 margin (with 37 representatives marked "present/not voting").

There were 5 amendments that were added during the vote:

(1) H.Amdt. 789 by Rep. Conyers [D-MI] - included revisions to the sections on damages, willful infringement, prior user rights, post-grant review, venue, inequitable conduct, applicant disclosure information and inventor's oath requirements, among others. [View Details]

(2) H.Amdt. 790 by Rep. Issa [R-CA] - amendment eliminating provisions in the law permitting certain applicants to delay or prevent publication of their applications. The amendment would strike that provision and permit applicants to delay publication until the later of (1) three months after a second PTO decision or (2) 18 months after the filing date.

(3) H.Amdt. 791 by Rep. Issa [R-CA] - changing the section relating to USPTO regulatory authority by adding the requirement that Congress be provided 60 days to review regulations before they take effect. Congress may bar implementation of the regulation by enactment of a joint resolution of disapproval.

(4) H.Amdt. 792 by Rep. Jackson-Lee [D-TX] - amendment requiring the Director of the USPTO to conduct a study of patent damage awards in cases from at least 1990 to the present where such awards have been based on a reasonable royalty under Section 284 of Title 35 of the United States Code. The Director of the PTO would be required to submit the findings to Congress no later than one year after the Act's enactment.

(5) H.Amdt. 793 by Rep. Pence [R-IN] - amendment prohibiting post-grant review from being instituted based upon the best mode requirement of patent law.

GovTrack has an excellent section on HR 1908, including floor speeches given, which can be viewed here (link)

Also included is a full list of representatives and their specific votes (link).

One interesting twist is the breakdown of representative's votes per state. States that clearly opposed HR 1908 included:

Arizona (6 nays, 2 ayes)
Indiana (6 nays, 2 ayes, 1 no vote)
Louisiana (4 nays, 1 aye, 2 no votes)
Michigan (10 nays, 5 ayes)
Minnesota (6 nays, 2 ayes)
New Jersey (10 nays, 2 ayes, 1 no vote)
North Carolina (9 nays, 4 ayes)
Ohio (13 nays, 3 ayes, 1 no vote)

States that clearly supported HR 1908 included:

California (41 ayes, 8 nays, 4 no votes)
Maryland (7 ayes, 1 nay)
Massachusetts (6 ayes, 3 nays)
New York (20 ayes, 6 nays, 3 no votes)
Texas (20 ayes, 8 nays, 4 no votes)
Virginia (9 ayes, 1 nay, 1 no vote)
Washington, (7 ayes, 0 nays, 2 no votes)
Wisconsin (6 ayes, 2 nays)

View voting list here (link)

Around the Horn With Patent Reform

Executive Office Chimes In - a "Statement of Administration Policy" was released yesterday, which generally supported the Patent Reform Act, but opposes H.R. 1908’s limits on the discretion of a court in determining damages adequate to compensate for an infringement. To view the letter, click here (link).

Microsoft Win in Court May Cut Chances in Congress - From Bloomberg:

Microsoft Corp.'s success in reversing a $1.52 billion trial loss was the latest in a series of court victories that may undermine its chance for broad changes in U.S. patent law this year.

Opponents of change cite the victory by Microsoft, the world's largest software maker, as well as a win by Seagate Technology, the largest maker of hard-disk drives, as proof the law isn't as out of whack as the industry claims.
(link)

Chicago Tribune: "Proposals for patent reform raising fears" - Jeffrey Knoll, VP and Corporate Counsel for Cummins-Allison Corp.:

We've had very bad experiences in Europe . . . Competitors lay in wait for a patent to be issued and then start filing mini-litigation. About one-third of our European patents are opposed. We've all but given up on local patent protection in Europe. (link)

CNNMoney.com - "As Congress Mulls Patent Reform, Holding Company Files More Suits" - In 2004, a Plutus affiliate called Orion IP acquired a portfolio of 14 patents for $1,000 in from a small software company called Firepond Inc., according to a filing with the Securities and Exchange Commission. Since then, Orion IP and other Plutus affiliates have passed patent rights back and forth, along the way suing a list of companies including Microsoft Corp., Google Inc. , AT&T Inc. and Nike Inc. in different states. (link)

"Conceptional" Disclosure Sinks Patent Under 35 U.S.C. 112(1)

Automotive Technologies International, Inc. v. BMW of North America, Inc. (2006-1013, -1037), September 6, 2007 (link)

During litigation, the district court invalidated ATI's patent under 35 U.S.C. 112, first paragraph for failing to comply with the written description requirement and lack of enablement.

ATI's patent dealt with a crash sensing device for deployment in an "occupant protection apparatus" (e.g., airbag) during an impact or crash involving the side of a vehicle. The invention was directed to a velocity-type sensor placed in a position within a vehicle on order to sense a side impact. The sensor was considered an improvement over "crush sensors" which triggered only when they were crushed or deformed.

The district court construed the relevant phrase "means responsive to the motion of said mass" to include both mechanical side impact sensors and electronic side impact sensors for performing the function of initiating an occupant protection apparatus. The problem was that the specification only provided details on the mechanical side, with little left over for the electronic side:

Considering first the specification, although two full columns and five figures of the ’253 patent detail mechanical side impact sensors, only one short paragraph and one figure relate to an electronic sensor. Importantly, that paragraph and figure do little more than provide an overview of an electronic sensor without providing any details of how the electronic sensor operates . . . The specification even states that Figure 11 is a "conceptional view" of an electronic sensor. This is supported by the statement of one of the inventors that Figure 11 "is not meant to represent any specific design or sensor or anything, just a concept."

Moreover, the textual description of Figure 11, which is the only description of an electronic sensor in the patent, provides little detail concerning how the electronic sensor is built or operated . . . That general description, however, fails to provide a structure or description of how a person having ordinary skill in the art would make or use an electronic side impact sensor. Indeed, inventor Breed admitted that the specification fails to disclose structure for any of the technologies mentioned. Noticeably absent is any discussion of the circuitry involved in the electronic side impact sensor that would provide more detail on how the sensor operates. The mere boxed figure of the electronic sensor and the few lines of description fail to apprise one of ordinary skill how to make and use the electronic sensor.

ATI argued that despite the limited disclosure, the knowledge of one skilled in the art was sufficient to supply the missing information. The CAFC disagreed:

In Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997), we stated: "It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent. The novel aspect of this invention is using a velocity-type sensor for side impact sensing. During prosecution, ATI stated that prior to its invention, "it was assumed that [conventional] inertial sensors would actuate too slowly to deploy an air bag in a side impact situation" and also that it "was unexpected that frontal impact sensors, properly designed, would work in sensing side impacts." ATI further stated that the "essential concept of the
invention" is to use "an inertial or acceleration sensor on a motor vehicle for sensing side impacts." Thus, according to ATI, using inertial or acceleration sensors to sense side impacts represented a "breakthrough" in side impact crash sensing. Given that the novel aspect of the invention is side impact sensors, it is insufficient to merely state that known technologies can be used to create an electronic sensor . . . [w]hen there is no disclosure of any specific starting material or of any of the conditions
under which a process can be carried out, undue experimentation is required.

AFFIRMED

Patent Reform Debate Hits YouTube

NAPP Wants a Piece of Continuation Rule Challenges

The National Association of Patent Practitioners (NAPP - link) released a statement through their president, Ron Reardon, that the organization will be actively monitoring potential challenges to the continuation rule changes, and is urging members to lend a hand in any and all "appropriate" challenges:

As you are probably aware, a lawsuit against the Director of the PTO has been filed by an inventor. (Tafas v. Dudas, E.D. Va., filed August 22, 2007) More suits are likely to follow. We believe that NAPP could be most effective in continuing to express our opposition to the newrules by filing or joining an amicus brief, if a case arose which posed the appropriate question(s) in an appropriate forum.

Any amicus brief filed or joined by NAPP would be above and beyond the significant work that has already been done by our organization in opposing these rule changes; and would be in keeping with our reputation as a serious, thoughtful organization upon whose advice andcomment (whether positive or negative) the PTO can rely.

If you would like to help NAPP, or have any pertinent information, they can be reached at napp@napp.org.

BPAI Decisions are now Text-Searchable

The PTO has announced (link) that a text searching capability is now available for searching publicly available final decisions of the Board of Patent Appeals and Interferences that are posted on the Board’s Final Decision FOIA web page (link). This web page is accessible via the Board’s web page on the USPTO’s web site.

Specifically, the database of final Board decisions that are posted on the Final Decision FOIA web page will be searched for a text string entered into a text search field and the identity of any decision(s) containing the string will be returned.

Any questions or comments concerning this text searching feature should be directed to the Board’s Chief Administrative Officer at (571) 272-9797.

POPA: Patent Reform May Hurt More Than it Helps

Last week, a letter from the Patent Office Professional Association (POPA) was circulated, expressing concerns over certain meausres of the Patent Reform Act. It is unclear as to where the letter was directed, or if the letter was an official communication by POPA. However, it *is* clear that issues of "outsourcing" and Best Mode are on the organization's mind:

Applicant Quality Submissions (AQS) – the patent reform legislation would allow the Director of the USPTO to require essentially all patent applicants to provide a search report identifying relevant patent and non-patent literature (prior art) that is relevant to the patentability of the applicant’s invention. A good idea on its surface, but the devil is in the details.

[T]here is no reason to believe that the Applicant Quality Submission will put better information in front of the examiner during prosecution than is already provided for by 37 C.F.R. § 1.56. Nor is there any reason to believe that the USPTO will provide any more time to examiners to consider this additional information.

The only real potential benefit to the Agency of the AQS is to increase efficiency by taking time away from examiners to search and have them rely upon the AQS as the search of the case. This is tantamount to outsourcing the search to the patent applicant and would contravene the protections on outsourcing set forth in 35 U.S.C. 41(d) as amended by Title VIII of H.R. 4818, the Consolidated Appropriations Act of 2005. POPA believes this would negatively impact the quality and integrity of the patent system.

USPTO Funding and Fee Setting Authority – S. 1145 would provide a permanent end to fee diversion and permit the agency to set and adjust fees through the rule-making process rather than statute.

POPA has always been in support of allowing the USPTO access to all of its fees and, since 2005, the agency has had access to them. POPA is very concerned, however, of giving the agency broad rule-making authority to set fees.

We do support allowing the agency to adjust its existing fees through the rule-making process. This will allow the agency to respond to changing economic and budgetary pressures more readily. Giving the agency the authority to set or create new fees, however, is taking away authority that POPA feels should remain with Congress. Taking the authority to set or create new fees away from Congress and giving it to the agency, would hinder the ability of the American public to have a strong voice, through Congress, in determining agency direction and actions. Further, this level of fee setting authority could allow the agency to change fees in such a way as to eliminate the outsourcing protections of 35 U.S.C. 41(d).

Best Mode Requirement – Currently, 35 U.S.C. § 112, first paragraph, requires patent applicants to disclose in their patent applications, the best mode of making and using their inventions. H.R. 1908 would prohibit using the patent applicant’s failure to disclose the best mode the applicant’s invention as a defense to invalidate a patent.

The best mode requirement of 35 U.S.C. § 112 represents the very quid pro quo of the patent system. The U.S. Patent System is based on disclosure of inventions to the American people. In exchange, the American people grant an inventor the exclusive rights to his/her invention for a limited time. To eliminate the best mode requirement from the patent law would permit applicants to gain a limited monopoly on their invention and yet not put the full disclosure of the invention into the public domain. Eliminating the best mode requirement would significantly diminish the very worth of the patent system, i.e., to disclose information to the American public.

Read POPA's letter here (link)