Guest Contributors


John M. Rogitz

USPTO memo explains changed Alice Step 2B to examiners

Posted 1 day ago

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the memo recognizes the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and instructs examiners to abide by its holding. Berkheimer itself held that the question of whether certain claim limitations represent well-understood, routine, or conventional activity under Alice Step 2B is a factual issue, with Berkheimer precluding summary judgment that all of the claims at issue were not patent eligible. This principle was then reaffirmed by the Federal Circuit a week later in Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) in the context of a judgment on the pleadings and judgment as a matter of law.

Robert Jensen

Innovative Use of Patent Examiner Statistics Improves Efficiency and Strengthens Portfolios

Posted 2 days ago

We recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting arguments in response to the Office Action did not convince the examiner to withdraw the rejection. We checked the examiner’s allowance rate and noticed it to be 30% below the average for the examiner’s art unit. Considering this and other factors, we recommended appeal to the client and provided the examiner’s statistics in support of our recommendation. The client was appreciative that we backed up our recommendation with data, and was convinced that the outlook for continuing prosecution with the examiner was not promising. The client authorized an appeal. Upon submission of our Appeal Brief, the examiner elected not to maintain the rejection, and instead issued a Notice of Allowance. That client has since asked that we consider examiner statistics routinely for other cases.

Mitchell Stein

Negotiating Your First Big Tech Software License

Posted 6 days ago

One of the critical moments in the life of a start-up tech company is landing its first big contract with a giant tech company. That first tech deal is also a daunting process. Take a deep breath. You can negotiate these agreements, as long as you negotiate smartly. Here are five common-sense tips for going forward… Play the long game. Nothing begets more business opportunities than a satisfied customer. Earn their trust. Show them you can deliver what they want. If you can start that process as early as the negotiations on the first contract, you are already ahead of the game.

Robert Williams

Protecting Trade Secrets in Europe – An Update

Posted 6 days ago

With the June 9 deadline for national implementation fast approaching, we surveyed colleagues in our other European offices to check the state of play in their jurisdiction. The picture which emerged was mixed. Much progress has been made towards national implementation of the Directive in the UK, Italy, France, The Netherlands, Denmark, Sweden, and Hungary. Implementation in these jurisdictions is expected on or around the June 9 deadline. Work is also underway in Poland and Finland, but it’s possible that implementation could slip a few months past the deadline. Slightly further behind are Spain, Belgium, and the Czech Republic. Germany is currently lagging behind as the recent political deadlock surrounding the formation of the new government has delayed the legislative agenda, although a draft bill has been promised for the first half of 2018.

James Yang

Claimed and prior art ranges must have meaningful difference for nonobviousness

Posted 7 days ago

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed in this manner but other types of inventions can be defined in terms of a numerical range such as a length as well. In re: Brandt (Fed. Cir. March 27, 2018) explains that very small differences in the respective ranges can support an obviousness rejection unless the inventor shows a meaningful difference exists.

Sanjeev Mahanta, Ph.D., J.D.

Issue Preclusion, PTAB, and the Split Federal Circuit: Knowles Electronics v. Cirrus Logic

Posted 8 days ago

Under the status quo, neither the patentee nor the public is able to rely on judicial determination of an issue that might later be taken to the PTAB. Knowles, Dissenting Op. at 10. Should the differences in standards between the courts and the PTO for proving invalidity, which contribute to the status quo in a large measure, be allowed to continue? Or, should the policy objectives of judicial efficiency and repose be given effect to preserve the finality of judgement of a court of last resort? These questions have assumed added significance post-AIA since one of the purposes of AIA was to save time and cost. As for standards, courts give claims their customary meaning and require clear and convincing evidence to prove a patent invalid. On the other hand, the PTO gives claims their broadest reasonable interpretation (BRI) and requires a preponderance of evidence to prove invalidity. In her dissent, Judge Newman urged the court to recognize the significant legal and economic consequences of conflict between judicial ruling and agency decision, in which patent life and investment resources are consumed in duplicate litigation with no reliable finality. Id.

James Edwards

Blocking Broadcom’s Takeover Ensures U.S. Security

Posted 9 days ago

President Trump’s recently halting Broadcom from a hostile takeover of Qualcomm is good news for American national security. Some have cast the administration’s intervention as “protectionism.”  Those people are ignoring the main point. The president’s order preserving the U.S. firm’s independence acted, as the Wall Street Journal said, on “national-security concerns in this case [that] are legitimate.” … Had Mr. Trump not stopped Broadcom, U.S.-based technology may not set the standards — and level of security — adopted for 5G telecommunications infrastructure. A weakened, dismantled Qualcomm could be overtaken by China’s national champion, Huawei. Congressional concerns over Huawei products’ security and privacy vulnerabilities, as well as the company’s intimacy with the Chinese government, have kept its phones and equipment out of U.S. stores.

Rahul Vijh

VirnetX Awarded $502.6 Million in Fourth Jury Trial against Apple

Posted 10 days ago

On Tuesday, April 10, 2018, a federal jury in Eastern District of Texas awarded VirnetX Holding Corp. (VHC) with a $502.6 million verdict against Apple Inc. finding that Apple was infringing 4 secure communications patents – providing a new chapter to the now eight-year old battle between Zephyr Cove, Nevada based VirnetX and Cupertino-based Apple, Inc.

Raymond Van Dyke

Happy Birthday Patent System: Hope Springs Eternal

Posted 11 days ago

In 1790, the U.S. patent laws were first enacted and individuals could obtain a patent under the new federal government. For about a century beforehand, British citizens in the various parts of the American colonies could obtain patents for that region, and Britain and other European countries had patent laws as well. But the new American patent system was different: it was democratized in that anyone could participate, without the need for consent from the Crown. The origins of patent laws date back to the Fifteenth Century when Florentine regents sought to attract and keep innovators and their inventions. Elizabeth I was a keen ruler in passing various patent laws to encourage foreigners with ideas and inventions to relocate to Britain, as well as encourage domestic innovation.

Michael Cottler

The CAFC Split Non-precedential Decision in Exergen v. Kaz Raises Interesting Issues About Eligibility Determinations

Posted 12 days ago

In Exergen Corporation v. Kaz USA, No. 16-2315 (March 8, 2018), the Federal Circuit, in a split non-precedential opinion, affirmed a holding that Exergen’s claims directed to methods and apparatuses for detecting core body temperature were directed to patentable subject matter under 35 U.S.C. § 101… The majority held that the district court did not clearly err in finding that it was unconventional to use temperature scanning technology to measure arterial temperature beneath the skin… Judge Hughes dissented, arguing that the majority erred by relying on the natural law in determining inventiveness at step two… Judge Hughes seems to suggest that the correct step-two inquiry should be whether, assuming the natural phenomenon were known, it would have been conventional to combine that phenomenon with existing technology to practice the asserted claims.

Benjamin Joe

Ford Developing Autonomous Systems for Police Cars, Other Emergency Vehicles

Posted 14 days ago

A statement published on the official website of Ford Motor Company (NYSE:F) indicates that the company expects to have a fully autonomous car in commercial operation by 2021. Ford believes that it will be able, by that time, to produce a vehicle which meets Level 4 automation as standardized by the engineering association SAE International. Last October, Ford CEO Jim Hackett announced that Ford will bring autonomous vehicles to a test market this year. One of the strategies the company will pursue is partnering with other companies to help bring the technology into the market, such as autonomous Domino’s pizza delivery services in Miami where the company will test how consumers interact with autonomous delivery services. Ford is investing $ 1 billion into vehicle artificial intelligence firm Argo AI to develop systems that give Ford vehicles the ability to transverse an urban environment like Miami.

Eric Guttag

Shadow Advocacy: A Look Inside the Amicus Process

Posted 15 days ago

Paying due homage to the TV series, The Twilight Zone, you have now entered the strange world of “shadow advocacy,” aka the amicus process. Indeed amicus advocacy has taken on increasing importance in recent years in the IP law world generally, and in the patent law world specifically, as witnessed, for example, by the Mayo, Myriad, and Alice cases which reached as high as the U.S. Supreme Court (aka, SCOTUS), as well as Sequenom’s failed petition for certiorari which garnered almost two dozen separate amicus briefs in support, including two from organizations outside the U.S. Shadow Advocacy: A Look Inside the Amicus ProcessBecause the stakes in this “shadow advocacy” world have never been higher, the amicus process has recently and unfortunately been turned sometimes into a “propaganda campaign” where briefs express not just viewpoints, but also try to influence the decision-makers, be they federal appellate judges or Supreme Court Justices, as to what those “facts” are.

Franco Galbo

Tom Brady and a Ruling over Embedded Tweets Could Change the Internet and Online Publishing

Posted 16 days ago

Of all of the things NFL quarterback Tom Brady has been accused of ruining over the years, the internet is not necessarily at the top of the list, and certainly not based on an alleged copyright infringement that he had no part in perpetuating. Yet, a photograph of him and Danny Ainge, the general manager of the Boston Celtics, could in fact forever change the internet and online publishing as we know it.

Rob Sterne

Follow the Money: Is the U.S. patent system fostering investment and risk taking?

Posted 16 days ago

PTAB proceedings have radically changed the time to money for patent owners asserting U.S. patents against infringers. Additionally, the value of U.S. patents has dropped substantially since its peak in the 2012… Like many others, I applaud Director Iancu’s stated focus on the PTAB process and his concern about whether the U.S. patent system is fostering innovation investment and risk taking, especially for inventors, universities, and small to medium enterprises.

Raymond Van Dyke

How Not to Copy: What is Fair and What is Fair Use?

Posted 16 days ago

These issues of fairness and fair use are played out in the recent Oracle v. Google decision. In a convoluted case that has gone up to the Supreme Court once and will again, the Federal Circuit finally was able to make a ruling that the blatant, verbatim copying of computer code is not a fair use. At issue were the copying of 37 Oracle programs or apps, constituting over 11,500 lines of code, by Google for their use in the Android operating system for smart phones and other uses… In the Federal Circuit’s final analysis of the four factors, they again noted that Google could have written their own code or properly licensed with Oracle, but instead chose to copy. “There is nothing fair about taking a copyrighted work verbatim and using it for the same purpose and function as the original in a competing platform.” Accordingly, the Federal Circuit held that Google’s use of the Oracle code was not a fair use.