Posted: Sunday, Aug 24, 2014 @ 9:16 am | Written by Gene Quinn | 23 comments
Software expert Bob Zeidman
Recently I had the opportunity to interview Bob Zeidman, the president and founder of Zeidman Consulting, who is also the president and founder of Software Analysis and Forensic Engineering Corporation, Zeidman is an software expert. In fact, in addition to consulting with lawyers and technology companies, he is an testifying and consulting expert witness. The premise of our conversation was the upheaval in the patent industry thanks to the Supreme Court’s decision in Alice v. CLS Bank. In part 1 of our conversation we discussed the decision and ways that attorneys can build a specification to satisfy the Alice standard. In part 2 of our 3 part discussion, which appears below, we wrap up our discussion of the Alice decision and dive into a discussion about the fact that many in the computer science world don’t believe what they do to be particularly innovative or even special.
QUINN: And then there’s always the fear that if you put in code then you’re gonna be limiting yourself. I don’t think that’s really a justifiable fear as long as it’s put in properly as illustrative instead of limiting. You know, I mean the folks in the chemical world, they do this all the time. They have example after example after example after example, which is a great way to disclose what it is that you have, what it is that you’ve tried, what it is that you know that works.
ZEIDMAN: Exactly. It seems like if there is some ambiguity in the claims then you would go back to the specification to see if the code there could clarify the claims.
Posted: Saturday, Aug 23, 2014 @ 11:29 am | Written by Steve Brachmann | 1 Comment »
Karl Drais, circa 1820. Inventor of an early precursor to the modern bicycle.
For more than 100 years, the Tour de France has been the top competition in the bicycling world, and in recent years recognizable athletes such as Lance Armstrong have brought much more focus to the sport, albeit not always for positive reasons. The multiple-stage bicycle race that is a month long trek around France has lasted through multiple swells and declines in biking popularity. Currently, the bicycling world is seeing an uptick in interest, thanks to rising interests in personal transportation in urban environments as well as a growth in environmental responsibility in consumers from across the world. Many cities around the world have been embracing bicycle lanes on public roads as a means of supporting low-carbon emitting forms of transportation.
Here at IPWatchdog, we turn to our Evolution of Technology series whenever we want to profile the chronology of development for an intriguing invention which has revolutionized our world. With the storied Tour de France once more taking place across the picturesque regions of France, we thought that this week would be a good time to investigate the history of innovation which led to today’s bicycle.
On August 12, 2014, I had the opportunity to speak with Zeidman on the record. As the dust begins to settle from the Supreme Court’s Alice v. CLS Bank decision I thought it might be interesting to talk about the issues with a computer expert who regularly works with patent attorneys and technology clients, and who has been advising both attorneys and clients how to handle the Alice decision from a technical standpoint. In our three part interview we discuss the decision and various ways attorneys might be able to move forward to provide disclosure sufficient to satisfy even the Alice standard.
Posted: Thursday, Aug 21, 2014 @ 10:17 am | Written by Gene Quinn | 12 comments
Judge Ray Chen, the voice of reason in dissent.
As I was reading recent Federal Circuit decisions I initially skipped right past I/P Engine, Inc. v. AOL, Inc. (CAFC, August 15, 2014). After all, this decision was non-precedential, so how important could it really be? But the Federal Circuit seems to have a peculiar definition of “non-precedential” these days.
In this case the jury found that the asserted claims were infringed, the jury found that the asserted claims remained non-obvious because the defendants’ evidence did not establish obviousness with clear and convincing evidence, and the plaintiff won a verdict of over $30 million with an ongoing royalty rate of 3.5%. The district court judge reviewed the jury determinations, particularly with respect to obviousness, and found that the jury was correct. The Federal Circuit, in their infinite wisdom, disagreed and found the asserted claims obvious. To do so the majority provided no deference to the factual determinations of the jury.
In today’s Companies We Follow segment here at IPWatchdog, we’re returning to this giant of IT development to see the latest innovations coming out of its research facilities. As always, we start off with a look at the patent applications assigned to HP and recently published by the U.S. Patent and Trademark Office. What we noticed in our most recent search was a bevy of technologies for business services, including a couple of software technologies for enterprise network security. We also share some printing technologies, as well as one intriguing innovation designed to help music fans better hear their favorite bands or orchestras when attending live concerts.
Posted: Wednesday, Aug 20, 2014 @ 11:41 am | Written by Gene Quinn | No Comments »
Earlier this summer the United States Patent and Trademark Office published a Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board. This request for comments pertains to the new administrative trial proceedings ushered in by the America Invents Act (AIA), which President Obama signed into law on September 11, 2011. The administrative trial proceedings at the USPTO did not go into effect immediately, but rather went into effect on September 16, 2012, the first anniversary of the signing of the AIA.
The administrative trial proceedings created by the AIA are: (1) Inter partes review; (2) post-grant review; (3) covered business method patents review; and (4) derivation proceedings. To bring these new proceedings into being, the USPTO issued a number of final rules and a trial practice guide in August and September of 2012. It is now time for the USPTO to take a step back and take account of these new proceedings, aided by public input. This is not an unexpected occurrence. Many will recall that during the rule making phase the USPTO held roundtable discussions in a number of cities across the country. During this timeframe the USPTO committed to revisiting the rules and practice guide once the Board and public had operated under the rules and practice guide for some unspecified period of time and had gained experience with the new administrative trial proceedings. With nearly two years of practical experience with these new proceedings, the time has now come for the USPTO to revisit and quite possibly revise the rules.
For over a decade, design patent filings and grants have enjoyed uninterrupted growth and, according to the 2014 IP Record, the trend continues unabated. According to the data, in 2013, 1517 more design patents were granted compared with 2012, and the prospects are good for continued growth in design patent applications.
Along with their ABC’s and multiplication tables, patent lawyers learn two basic principles. First, claims define the invention. Second, a court should not read limitations from a single embodiment into the claims, absent a demonstrated clear intention by the patentee to do so.
Don’t believe them.
When the Federal Circuit brings up the principle that one should not import the limitations of a single embodiment into a broader claim, expect the opinion to show how, under the particular, specifically limited facts of the present case, the inventor actually intended to limit the claims to the disclosed embodiment. The decision in Abbott Labs. v. Sandoz, Inc. provides an excellent example of the court’s reasoning. There, the specification described only a single embodiment, but the claims extended beyond the embodiment, but no issues of either prior art of enablement were present. The fact that the patent presented only a single example served as a starting point, after which the court was able to find “clear intent” to limit a broad claim term, “crystalline,” to a particular crystal.