For the past few months, my side project has been developing a website that mines the Patent Office’s website for troves of PTAB/BPAI decisions data. I’m pleased to welcome this project to the blogosphere as PatentBoardFerret.com.

The premise behind the website is that knowledge is power. Thus, by analyzing Patent Board decisions at each level of authority, in conjunction with other authoritative resources, one can better understand and even predict how the Patent Office will/should apply the patent law. For each decision, the Patent Board Ferret has issue recaps, which display each rejection that the Board panel decided along with which outcome the Board decided on that particular issue. Because the Board’s outcomes (or dispositions) are not as simple as affirmed and reversed (nor should they be), the Ferret keeps in consideration targeted information about the disposition. Table data displays in a user-friendly format all sorts of data corresponding to that decision, such as the Examiner, the art unit, the correspondent, the classification numbers, and many more. The Ferret also has an analysis section where this data can be displayed as graphs.

Why is it called Patent Board Ferret? For those unfamiliar with the verb form of the term ferret, one meaning is to tenaciously search out. I think that this is exactly what the Patent Board Ferret seeks to do: tenaciously search out patent board decisions data. The term is also an animal, which is instantaneously memorable. I hoped that the combination of a play on words with a memorable animal would stick.

I’m really proud of the work that our team has accomplished and where we plan to go in the future. I hope to regularly post on the Ferret’s blog about interesting developments and trends that can be seen by using the Patent Board Ferret. I hope you enjoy the website and blog.

Also, if you are of the social media type, here are some links to like, follow, or +1 social media pages for the Ferret:

LinkedIn: https://www.linkedin.com/company/patent-board-ferret
Twitter: http://www.twitter.com/patboardferret or @patboardferret
Facebook: https://www.facebook.com/patentboardferret
Google+: https://www.google.com/+Patentboardferret

Additionally, you can invite select others to like, follow or +1 the pages.

If an applicant fails to respond to an Office Action, the application becomes abandoned as of the day after the due date for response to the Office Action, with the applicant being able to revive the application up until the extendable due date.  See 37 CFR 1.135(a).  Thus, if an Office Action issued March 1, 2013 with a period for response ending June 1, 2013, the application becomes abandoned June 2, 2013 even though the applicant can still save the application until September 1, 2013.  Here’s how I got here.

First, according to the MPEP, the date of the abandonment is after midnight of the date the period for reply actually expired. This “date the period for reply actually expires” is normally the end of the 3-month shortened statutory period. See MPEP 711.04(a).

Second, the Patent Office form for unintentionally abandoning an application PTO/SB/64 also confirms this understanding.

The above-identified application became abandoned for failure to file a timely and proper reply to a notice or action by the
United States Patent and Trademark Office. The date of abandonment is the day after the expiration date of the period set
for reply in the office notice or action plus any extensions of time actually obtained.

Third, it makes logical sense that an application becomes abandoned after a period for reply.

The Patent Office makes available all decisions from the Patent Trial and Appeal Board (PTAB) on its website FOIA Reading Room. In case you were interested in doing research using this website between the hours of 1:00AM EST to 5:00AM EST, you are out of luck.  This is annoying.

In disputes involving computer-related patents, obviously the plaintiff needs to establish that the defendant is infringing at least one of the patented claims.  But when can the plaintiff peer into the defendant’s source code during discovery for purposes of lending support to infringement.  What if the defendant moves for summary judgment even before the plaintiff determines the meaning of the claim terms?  These questions are addressed in the above Federal Circuit case decided May 7, 2013.

Background

Baron’s patent (’525) relates to reporting and forecasting real-time weather information. Baron sued MWI alleging infringement of the ’525 patent.  Two months later, Baron served MWI with a request to produce MWI’s source code in their allegedly infringing technology.  MWI moved for a protective order asserting that Baron’s asserted patent claims do not recite a computer-code based invention.  Claim 1 is representative:

Baron responded by arguing that the “logic” (i.e., of claim 1) is the source code and thus MWI’s source code was relevant to show infringement since MWI implemented their technology on a computer with its source code.  The district court granted MWI’s protective order “without prejudice” so Baron could seek the information at a more appropriate time in the litigation.  Discovery continued with MWI serving Baron with discovery requests on how MWI allegedly infringed the asserted patent.  In response, Baron moved for a Markman hearing and objected to the discovery requests as premature.   Baron then served its Disclosure of Asserted Claims and Preliminary Infringement Contentions, detailing how Baron believed MWI infringed its patent. Importantly, Baron renewed its request to peer into the source code.  Then, MWI filed a motion for Summary Judgment of noninfringement, arguing that its technology merely forwards National Weather Service warnings to subscribers.  MWI’s motion for Summary Judgment included an affidavit in which the affiant explained why the accused products did not satisfy the limitations of the claim terms given her understanding of the claim terms.  In response, Baron argued that Summary Judgment was premature because the claims had not yet been construed and it had not yet had the opportunity to review MWI’s source code.  Baron then filed a motion to compel production of MWI’s source code, arguing that without the source code, “[it] and the court would simply have to rely on MWI’s word as to how its products function.”  The district court granted MWI’s motion for Summary Judgment, holding that claim construction was unnecessary because the court only had to construe “disputed” claim terms.  Was the district court’s grant of Summary Judgment proper? Should Baron have been given a chance to look at MWI’s source code?

Majority

The majority opinion held that the district court should have allowed the claims to be construed and should have allowed Baron to look at MWI’s source code.  Thus, the district court erred in granting Summary Judgment.  Baron adequately showed how the additional discovery was relevant and essential for its opposition to Summary Judgment.  Thus, the Federal Circuit held that it was improper for the district court to have refused Baron’s request to delay ruling on Summary Judgment.

Dissent

The dissent disagrees that the additional discovery was necessary, looking at the plain language of claim 1.  Judge Reyna argues that since MWI’s technology disseminates unmanipulated NWS warnings to subscribers, it cannot infringe “logic configured to make a determination . . . said logic further configured to transmit, if said logic determines . . . that said one contact identifier identifies a remote unit located within said geographic region,” as recited in claim 1.  The dissent stresses that since MWI’s affidavits attest that MWI’s source code does not analyze or manipulate the weather information, that’s the end of the story.

My thoughts

This case brings up an interesting point about the difference of reciting “configured to [some function]” versus “performs [some function]” in claims.  ”Configured to” can be used to denote that the claim object is capable of doing, or allowed to do, some function.  For example, a ball can be configured to bounce, to throw, to deflate – all of these things are dependent on how the object is used, not on what functions the object performs.  With regard to infringement of software, without looking at the source code, it is difficult to say that a particular software is, or is not, configured to do something.  You may be able to determine that the software does not perform a particular function, but to say that the software is not configured to perform the function is a different analysis.  In the dissent, Judge Reyna states the functions of MWI’s program (i.e., merely disseminates to users) and states that the program does not perform other functions (i.e., determine or analyze).  The dissent then concludes that as a matter of law, MWI’s program does not infringe claim 1.  But when I look at the plain language of the representative claim (Judge Reyna’s own words), the inquiry is not whether MWI’s program performs these functions.  Instead, the inquiry is whether the program is “configured to” perform the functions.  So my question is this: without looking at the source code, can you state so confidently that MWI’s program is not “configured to make a determination” or “configured to transmit, if said logic determines . . .”?

 

I have some interesting blog post topics marinating in my mind, but they are currently taking a back seat to other things, like spending quality time this baby girl. Belated welcome to the world baby #1!

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When my wife’s doctor found out I was going to have an interview at the Patent Office, she asked why I didn’t like my current job. In patent circles, there is no such possible misinterpretation for what an interview is.  Conducting an interview is most often thought of as meeting up face-to-face or over the phone to speak with an Examiner on the merits of the patent application you are advocating for.  Besides personal meetups or scheduled phone calls, interviews can also be broadly interpreted as any personal appearance, phone calls, video conferences or emails that present matters for the examiner’s consideration.  See MPEP 713.

An Interview is Advantageous

A number of big benefits to conducting an interview with the Examiner include (1) a great way to discuss key points about your patent application’s rejections, (2) a way to get the Examiner on your side of the argument, (3) a way to quickly clear up any misunderstandings, and (4) the content of the interview can be off the record, which avoids creating file history estoppel.

Setting up the Interview

An applicant is not entitled to an interview as a matter of right. Whether the Examiner will grant an interview is within the discretion of the Examiner. For example, the MPEP states that “An interview should be had only when the nature of the case is such that the interview could serve to develop and clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and thereby advance the prosecution of the application.”  See MPEP 713.01(III). The MPEP also states that to arrange an interview, an applicant should send in an Applicant Initiated Request Form.  See id.  The rules requiring a request tends to suggest that getting an interview is no guarantee. Further, it is even more difficult to schedule an interview after a final rejection has been issued  See MPEP 713.09 (explaining that normally only one interview is permitted after final rejection). Thus, it is important to properly set up the interview so that the Examiner acquiesces to the request.

How to Contact the Examiner

The MPEP provides that an interview can be arranged for by letter, facsimile, electronic mail, telegram or telephone call. I don’t know of anyone still using telegrams, but in my experience, a phone call is the best way to reach an Examiner for setting up an interview. Call the Examiner, let him know which application number you’re calling about, and politely request an interview for the matter. As discussed above, as one of the main reasons an examiner will grant an interview is to advance prosecution of the application, it might be helpful in your request to explain how you believe the interview will help move the process forward.

Resistance to the Interview

Some Examiners will try to be resist an interview request. Some may be just acting adversarially, leery of outsiders contacting them. One time, an Examiner told me that I could not interview for the matter because I was not specifically authorized by the client, alleging that I needed to be “of record.” You hear this excuse every once in a while. An old provision of the MPEP (713.05) required that an applicant’s representative show that he had explicit authority from the client to conduct the interview. However, this changed with the August 24, 2010 guideline under Director Kappos, which states that the Applicant Interview Request Form is sufficient indication of authorization since it provides for the representative to sign. Sometimes it is helpful to educate Examiners on recent changes in Patent Office procedures.

Other resistant Examiners may seem convinced that there is no way prosecution can advance and that there’s really no point to an interview. You may try to explain why you think the interview will be helpful (i.e., you have some clarifying amendments to discuss).

Other resisters may just not want to talk people. It is important to know when meeting such resistance that interviews are highly encouraged at the Patent Office. So go set up your interviews with confidence knowing that it is a good thing for your application and for the patent system in general.

Living in the DC area is nice because you’re close to a lot of interesting action. Yesterday, I visited the Court of Appeals for the Federal Circuit for oral arguments of the much-anticipated CLS v. Alice en banc case. Interesting arguments and questioning show that “abstract idea” is being over-used and how the expansion of the §101 patent ineligibility doctrine is bad for the patent system.

An early exchange illustrates how abstract ideas being over-used.  Counsel for CLS (Mark Perry) kicked off the hearing by arguing that Alice patented an abstract idea.  He argued that initially Alice’s patent applications included method claims that were rejected as “abstract ideas” under §101 until Alice amended the claims to recite a computer.  Thus, Perry contended that the patented claims were nothing more than an abstract idea dressed up in machine claim clothing. But Judge Moore intervened as if on behalf of Alice, asking whether a claimed system in an asserted patent that recited a computer and specific hardware limitations qualified as an abstract idea. Perry answered very confidently that this system claim was nothing more than an abstract idea. Judge Moore could not believe it, pointing the Counsel not only to the specification that detailed the hardware, but to the flowcharts that detailed the steps to be performed. To Moore, if there was ever a valid software patent, this was it. But Perry responded that the claim was simply a method claim dressed up as a system claim to overcome 101. Moore rhetorically asked, “But don’t we look at the language of the claims?” Good question. Yes, claim language does matter people. Judge Moore’s next point brought up an example of the first calculator that solely performed addition functions after which someone else comes along and reconfigures the calculator to perform subtraction. If a first-of-its-kind machine or computer is not an abstract idea, why are improvements of it?

This exchange illustrates why it doesn’t make sense to characterize claims directed to computers as abstract ideas. No matter the generality of the steps the computer performs, if a claim claims a computer, then it is no longer an idea. Historically, the only type of claim that has been subject to the abstract idea exception has been method claims.  See, e.g., Benson, Flook, Diehr, Bilski, and Mayo.  This makes sense, especially in light of what an “idea” has long been understood as. An idea is a concept or a principle. You can’t touch it with your hands.  Like a method, an idea is something that you hold in your mind.  See e.g.,Tilghman v. Proctor, 102 U.S. 707 (1881) (“The line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “[conceptions] of the mind, seen only by [their] effects when being executed or performed.”). If a claimed method is recited at such a high-level of generality, such as in Bilski or Mayo, then it is an abstract idea. But it makes little sense to categorize a claimed tangible machine, such as a computer, as an idea. Thus, generic computer claims should not be referred to as “abstract ideas” because it goes against the common usage of the word “idea.” If a judicial exception is going to exclude computer claims on the grounds of patent-ineligibility, another exception should be created, such as an “abstract computer” exception.

But such a new judicial exception is neither necessary nor desirable. The current system does a fine job of remedying abstract ideas from getting patented.  CLS’s counsel argued that it would be a shame for someone to patent the abstract idea of a car that drives itself only to have Google, having spent a billion dollars on actually developing the car, get sued for infringing this abstract idea patent. However, under the current system, such a scenario is unlikely because §112 requires a sufficient disclosure for the claimed invention. Abstract ideas that use computers are also unlikely when an Examiner does the job because they are relatively easy to find prior art against. The Examiner has the right to construe claim language as broadly as reasonably possible consistent with the specification when assessing prior art. See MPEP §2111.  And Examiners are pretty good at finding prior art, especially in their particular areas of technology. So if someone has really claimed something at a high-level of abstraction, it’s likely that an Examiner can find a disclosure that anticipates or would have rendered obvious that concept. CLS’s counsel even admitted that he had arguments for showing that Alice’s patent was invalid under §§102/103. Why not proceed with the already well-developed and relatively objective area of law?

Increasing the focus on §101 discourages a level playing field. A big disadvantage of expanding the §101 doctrine of patent eligibility instead of relying on well established patent code sections is that §101 is highly subjective, and other sections of the patent code can prevent abstract ideas from getting patented. Section 101 has become a lightning rod for anti-patent folk who quickly want a particular patent to go away. It’s scary to see judges experimenting with the §101 doctrine; it’s even scarier to think about patent examiners doing so.

Issuing a rejection that does not give an appellant a fair opportunity to react to the rejection deprives the appellant of the administrative due process rights.  In re Kronig, 539 F.2d 1300, 1302–1303 (CCPA 1976).  A provision that has recently been updated to accommodate for tolling the time to file a reply brief allows for filing a Petition to designate the new ground of rejection as such.  If granted, the Petition allows for prosecution to be reopened.

In general, an Examiner is not permitted to introduce a new ground of rejection in an Examiner’s Answer unless the Examiner designates the new rejection as such in the Examiner’s Answer.  37 C.F.R. §41.40 permits an appellant to seek review of an Examiner’s failure to designate a rejection as a new ground of rejection in an Examiner’s Answer by way of a Petition under 37 C.F.R. §1.181.  The test for what constitutes a new ground of rejection is whether a position or rationale changes the ‘basic thrust of the rejection’ in an Examiner’s Answer.  In re Kronig, 539 F.2d 1300, 1302–1303 (CCPA 1976).   A Petition under 37 C.F.R. §1.181 is timely if filed within two months from the entry of the Examiner’s Answer.  See 37 C.F.R. §41.40(a).

A Petition that is granted allows an appellant to reopen prosecution.  See 37 C.F.R. §41.40(b).  In a Notice of Appeal filed on or after January 23, 2012, a Petition that is not granted must be provided a two-month time period in which an appellant may file a reply brief under 37 C.F.R. §1.181.  See 37 C.F.R. §41.40(c), as amended by 76 Fed. Reg. 72298 on Nov. 22, 2011, and effective beginning January 23, 2012.  This is consistent with the amendments to 37 C.F.R. §41.41(a), which also became effective on January 23, 2012, indicating an appellant may file only a single reply brief to an Examiner’s Answer within the later of two months from the date of either the Examiner’s Answer, or a decision refusing to grant a petition under §1.181.

The Eighth Edition of the MPEP, which incorporates revision No. 9, provides seemingly contradictory information.  Specifically, MPEP §2107.03(IV) states that the filing of a petition under 37 C.F.R. §1.181 does not toll the time period for filing a reply brief.  However, this MPEP section refers to the previous version of 37 C.F.R. §41.40, which did not allow for tolling of the time to file a reply brief after a Petition was denied.

 

An interesting case was decided at the Federal Circuit a couple weeks ago dealing with enablement and permanent injunctive relief.

Edwards sued CoreValve for infringing its patent related to a heart valve. CoreValve argued that the patent was not enabled because at the time of filing the patent application, the heart valve had only been tested in pigs. The district court upheld the patent as being enabled.

Additionally, the district court denied a permanent injunction against CoreValve. Both parties appealed.

Regarding enablement, the Federal Circuit affirmed the district court, holding that human testing is not necessary to enable use in humans. It reasoned that when experimentation on humans is inappropriate, enablement may be met by animal tests or in vitro data.

Next, the Federal Circuit criticized the district court’s denial of a permanent injunction, stressing that a patentee’s right to exclude is fundamental. The majority even went so far as to say that, “Absent adverse equitable considerations, the winner of a judgment of validity and infringement may normally expect to regain the exclusivity that was lost with the infringement.” The Supreme Court eBay decision in 2006 held that a patentee that wins an infringement action is not automatically entitled to an injunction. As the majority opinion appears to be testing the boundaries of eBay, the majority clarified how its holding is consistent with eBay.

Judge Prost concurred, but disagreed with the majority’s standard for injunctive relief. Prost argued that creating a presumption of an injunction once the plaintiff prevails, which must then be rebutted by the defendant, is not the law according to what she considered was clear after eBay. To Judge Prost, the creation of a right to exclude is distinct from the remedies for violations of that right.

In the ongoing patent dispute between Apple and Samsung, Apple filed a “statement of recent decision” to support a permanent injunction against Samsung.

 

 

I love Chess.  You get to command 16 pieces, each type of piece having different rules of movement and attack, to take down the enemy in accordance with a fairly complex set of rules for conquest.  And it’s fun because your opponent has the exact same weapons and defenses as you do (besides the player that gets to go first).  So in terms of strategizing, you end up thinking multiple moves ahead.  It’s an epic game.

In the world of patent prosecution, there are also rules of attack and defense to take down the enemy that prevents your patent application from being issued a Notice of Allowance.  This world requires knowing the rules and thinking moves ahead so that your application doesn’t get checkmated.

One classic move that the Examiner will pull is issuing a “restriction.” The general basis for restriction is that the application as filed includes more than one independent and distinct invention, which are generally not allowed.  See 35 U.S.C. 121; 37 CFR 1.141.  For instance, if you have claims 1-10 related to a machine and then claims 11-20 are related to a method of manufacturing the machine, the Examiner may issue a restriction requirement saying that the application contains two independent and distinct inventions and for the Applicant to choose either claims 1-10 or claims 11-20.  The Applicant will then have to file a divisional application on the claims that are now withdrawn.

Restrictions come in two varieties: Restriction Requirement and Election of Species Requirement.  See MPEP 803.03. Both involve electing a particular group so that the only one independent and distinct invention is contained in the application and both also require a traverse if a right of petition is to be preserved. But what is the difference between the Restriction Requirement and the Election of Species Requirement? The answer to this question will help in the terms sometimes being incorrectly used interchangeably.  This confusion may stem from both requirements falling under the “Restriction” umbrella.  See 37 CFR 1.129(b).  It is helpful to know the difference not only for strategy in whether to traverse, but also in communicating with those in other jurisdictions outside the US that do not have similar Restriction practice.

A restriction requirement is proper when two or more independent and distinct inventions are recited in the claims. 37 CFR 1.141.  If the claims only recite generic claims (claims directed to one independent invention) then you’re not looking at a restriction requirement.  On the other hand, an election of species requirement is proper when there are patentably distinct species that are embraced by a generic claim.  The reasoning here is to avoid situations where the Applicant simply adds new claims that introduce independent and distinct inventions to the claims after the Examiner has not issued a restriction on the claims.  So the Examiner instead issues an election of species, for instance saying that Figs. 1-5 are distinct from Figs. 6-9 and that the Applicant must elect one group.

So in sum, in a Restriction Requirement, you have to elect claims for further examination.  In contrast, in an Election of Species Requirement, you elect an invention and then indicate which claims you believe read on that species.

One strategy tip to keep in mind. There is a temptation to view the Examiner as the opponent and to try and do the opposite of what he says.  For instance, if he comes in and takes your pawn, take it back. Therein lies the danger. Sometimes taking the bait is actually facilitating your opponent thinking a couple moves ahead.  Applied to this topic, in a Restriction Requirement, it makes a lot of sense to traverse a restriction requirement because 1) restrictions are overused and they get annoying after a while; 2) the Examiner’s probably not correct in asserting that the claims recite more than one independent and distinct invention; and 3) money is being wasted in electing claims and filing divisional applications when a search probably could be done without serious burden by the Examiner anyway.  See MPEP 806.05(d).

On the other hand, traversing an Election of Species might box yourself in later down the road. In an election of species, any traversal is saying that the species are the same and therefore if the Examiner later finds art on one species, it automatically can apply to the other species that you argued was the same. Something to keep in mind when you think you are scoring a small victory, you may be walking into a trap.

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