Earlier today the United States Supreme Court issued a decision that fundamentally changed the law of patent eligibility that has existed in the United States for the past 30 years, calling into question at least many tens of thousands of issued patents and many tens of thousands of pending patent applications. See Supremes Rule Isolated DNA and some cDNA Patent Ineligible.
With lightening speed, the United States Patent and Trademark Office has sent a memorandum to patent examiners relating to the aforementioned Supreme Court decision in Association for Molecular Pathology v. Myriad Genetics, Inc. The 1-page memorandum from Drew Hirshfeld, who is Deputy Commissioner for Patent Examination Policy, is direct. “Examiners should now reject…”
UPDATED June 13, 8:24pm ET (see comment #15 & #19)
Earlier this morning the United States Supreme Court issued its much anticipated ruling in Association of Molecular Pathology v. Myriad Genetics. Justice Thomas wrote for a a nearly unanimous Court, only Justice Scalia wrote separately and he concurred in part and concurred in the judgment. The decision is not long, and approximately half of the decision is background, yet at the end of the day much damage has been done to the biotechnology industry, the medical industry and the patent system. Indeed, the assault on patents continues.
According to Todd Dickinson, Executive Director of the American Intellectual Property Law Association, the outcome was fairly predictable given the oral argument, although 9-0 was a bit surprising. Dickinson told me via telephone earlier today the the decision itself is disappointing because it “keeps framing an anti-patent narrative.” He went on: “Patents are terribly useful to incent innovation and necessary to provide funding. If we undermine the patent system further I think we will be shooting ourselves in the foot.” I couldn’t agree more!
On Tuesday, June 11, 2013, the Patent Trial and Appeals Board issued a ruling in SAP America, Inc. v. Versata Development Group, Inc., which is the result of a Covered Business Method challenge to U.S. Patent No. 6,553,350 filed by SAP on September 16, 2012. The PTAB, per Administrative Patent Judge Michael Tierney, determined that “Versata’s ’350 claims 17, and 26-29 are unpatentable under 35 U.S.C. § 101.” Looking more closely at the ruling, however, makes it clear just how significant this ruling will be. The breadth of the 101 determination is shocking and virtually guarantees that 101 will be used by patent examiners to effectively prevent software patents from issuing altogether.
In a nutshell, the PTAB ignored all the recited tangible computer elements embodied in the claims. Once the specifically articulated and necessary structure is ignored the PTAB then concluded that the claims protect only an abstract idea.
In order for there to be infringement each and every limitation would have to be found in the accused infringing method. So under what authority does the PTAB ignore specifically recited structure? The authority that the PTAB seems to be relying on to ignore claim terms is unclear and not explained in the opinion in any satisfactory way. It does, however, seem that the fact that the invention can be implemented in any type of computer system or processing environment lead the PTAB to treat the method as one that could be performed on a “general purpose computer,” rather than a specific purpose computer. Thus, the PTAB picks up on the arbitrary and erroneous distinctions between general purpose computer and specific purpose computer without as much as a thought and wholly without factual explanation.
Cypress Semiconductor Corp. (NASDAQ: CY) announced earlier this week that it will continue to aggressively enforce its patents despite an unfavorable final determination from the International Trade Commission that GSI Technology, Inc. does not infringe any of the four patents asserted by Cypress.
“The ITC’s confirmation of the earlier ruling changes nothing,” said Dana Nazarian, Executive Vice President of the Memory Products Division at Cypress. “We remain steadfast in our conviction that GSI has violated our patents, and look forward to moving this fight to the district court where we can argue our case to a jury.”
Given the disjointed nature of patent enforcement a loss in one forum does not preclude a party, such as Cypress, to continue to fight in another forum.
Interest in design patents is increasing, in part, because they can be obtained relatively inexpensively and quickly. Dennis Crouch recently reported that from 2010-2012 the majority of design patents issue within 12-months of their filing date (see “Design Patents Are Still Relatively Quick” by Dennis Crouch, Patently-O, January 21, 2012,. In addition, most design patents issue without amendment and with little or no file wrapper estoppel, potentially leading to a “cleaner” patent with potentially fewer issues to be raised in litigation that could negatively affect the scope of the patent. The number of design patent filings has increased approximately 20% since 2009 (Robert Olszewski, “State of the Technology Center,” USPTO Design Day 2013), and, with this increase it is reasonable to expect an increase in design patent enforcement.
Design patent infringement is based on a finding of “substantial similarity” between an accused design and the patented design in the eyes of an “ordinary observer”. This typically involves a more straightforward analysis than utility patent enforcement, particularly given the Federal Circuit’s warning of the dangers of reliance on a detailed verbal claim construction. SeeEgyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 680 (Fed Cir. 2008) (en banc). Moreover, the potential for disgorgement of the infringer’s profit can motivate a defendant to quickly settle on reasonable terms.
Alexsam, Inc. v. IDT Corporation is a non-remarkable patent infringement decision with a remarkable dissent. Plaintiff Alexsam sued IDT for infringement of its U.S. Patent No. 6,000,608, which covers a system of activating a gift card using existing terminals at retail establishments. IDT controls different gift card activation systems which were grouped into three separate systems. The Federal Circuit affirmed the lower court’s ruling that the patent was valid under 35 U.S.C. § 103, reversed the finding of infringement with regard to two of the systems and affirmed the lower court’s finding of infringement with respect to one of the systems as a discovery sanction.
What is noteworthy about the case is not the majority opinion, but the dissent by Judge Haldane Robert Mayer. Mayer’s dissent discusses why the patent is invalid under 35 U.S.C. § 101, which is curious because the 101 issue was not raised by the defendants during the appeal nor even mentioned during oral arguments. While Mayer’s dissent is not a binding opinion, if another judge on the panel signed on to Mayer’s reasoning then the patent would have been held invalid based on an issue not raised during the appeal.
The Microsoft Corporation of Redmond, WA, is a global leader in the development and delivery of computing goods and services. The corporation is a major player in technology markets all over the world, including recent forays into the emerging economies of Southeast Asia. Considered to be a leader in consumer electronics, Microsoft has also been making moves in the world of computer security, resulting in the recent breakup of a botnet hacking ringwhich is believed to have stolen $500 million from user bank accounts.
As a constant developer of new technologies, Microsoft is seen often as an assignee on a great many U.S. Patent & Trademark Office patents and applications every week. This week on Companies We Follow, IPWatchdog is taking a look at this corporation’s more intriguing patents as of late, including many of those that will affect consumer media use.
A few of the patent applications profiled here detail specific improvements to consumer entertainment, especially where movies are concerned. One application would protect a system of rendering video elements as separate from browser elements for easier user customization. Another application describes a more intuitive system of digital recording for live events. A third application in this area improves movie recommendation systems by taking contextual factors into account.
Small California coffee roasting company, JBR d/b/a Rogers Family Co. (JBR), recently defeated industry coffee giant, Keurig in a patent infringement battle over single-serve coffee pods. More specifically, Keurig claimed that JBR’s OneCup infringed on three of its patents–one of which is a design patent for its beverage cartridges and the other two concern apparatus and method claims from the Keurig brewer patents.
Keurig makes and licenses brewers and beverage cartridges (pods) that are known as “K-Cups.” JBR makes beverage cartridges that are known as “OneCups,” which are made to be used with the Keurig brewers. Back in January 2013, the Court held a Markman hearing, which is a pretrial evidentiary hearing that’s typically held whenever someone alleges patent infringement, and a memorandum and order interpreting certain pertinent terms used in two of the patents at issue was issued in March 2013. The current case deals with JBR’s motions for summary judgment with respect to the issue of infringement of Design Patent No. D502,362 and certain specific claims associated with two of the brewer patents — U.S. Patent No. 7,347,138 and U.S. Patent No. 7,165,488.
When amicable efforts fail to resolve a dispute concerning patent rights and the aggrieved party wishes to pursue the matter further, it usually initiates litigation or perhaps a U.S. International Trade Commission (“ITC”) investigation, despite the huge costs of such options, because it may assume no other plausible alternatives exist to achieve the desired objectives.
Articles, such as this one, tout arbitration as an alternative: faster, cheaper and more confidential than litigation, with other benefits as well. Apparently the U.S. Supreme Court agrees, having described the Federal Arbitration Act (9 U.S.C. §1, et seq.) as evidencing a “national policy favoring arbitration” (Nitro-Lift v. Howard); and recognized “an emphatic federal policy in favor of arbitral dispute resolution” (Marmet Health Care v. Brown). Likewise, the Patent Act provides at 35 U.S.C. §294(a) that any arbitration clause contained in a patent agreement shall be presumed valid, irrevocable and enforceable.
However, in actual practice, relatively few patent disputes are submitted to arbitration. Worldwide, only a few hundred requests to arbitrate patent disputes are filed each year. By comparison, in 2012 more than 5,000 patent lawsuits were filed in U.S. District Courts, not to mention courts of other nations. So what’s the problem? If arbitration is so great, why are so few patent disputes resolved in arbitration? More important, are patent litigants missing something? Should they rely on arbitration more often?
Four weeks have passed since the Federal Circuit’s “decision” in CLS Bank v. AliceCorp. From my perspective as both an independent inventor and litigation expert witness in software and hardware user interface design, I believe this ruling takes the wrong tact. In the context of the PTO backlog and proliferation of high-profile patent infringement cases, it isn’t surprising that software patent-eligibility is being questioned, but the false distinctions being drawn between hardware and software are not the answer.
Perhaps the best place to start is with a real-world usability challenge that crosses the bounds of software and hardware functionality. We’ll look at the design of an aspect of computer mice to set the stage for a fresh look at software patentability.
Imagine that a leading manufacturer of computer peripherals asked you to establish a new bar for scrolling ease-of-use on a revolutionary new mouse with a work-in-progress scroll wheel. As a product designer, you have an obligation to envision and craft for end-users the best experiences possible. You may also have an obligation to provide your client competitive protectable intellectual property. It is best when those two goals don’t present a conflict of interest, but let’s table that issue for now.