Every month there are a number of items that catch my attention. Many of these “quick news” items are worth knowing or interesting in one way or another, but won’t support a longer article, which we typically prefer to publish on IPWatchdog.com. Others are certainly interesting and deserving of attention, but there are only so many hours in the day to write.
Without further ado, here is News & Notes for September 2013.
- USPTO Extends After Final Pilot
- CAFC Discusses Obviousness Type Double Patenting
- GW Master of Patent Practice
- White Paper Calls for Update to Patent Examination System
- Goodlatte’s Second “Discussion Draft” of Patent Reform
- Patent Litigator Becomes Managing Partner at Kilpatrick
- Clouding IP Faces Inter Partes Review at the USPTO
- New Superconducting Wire Invented
- Daniel Winslow Hired as Rimini Street General Counsel
- Patent filed on securing player identity on Internet gaming platforms
USPTO Extends After Final Pilot
The After Final Consideration Pilot 2.0 (AFCP 2.0), which had been scheduled to expire on September 30, 2013, has been extended through December 14, 2013.
The AFCP is one of the USPTO’s ongoing efforts to increase collaboration between examiners and stakeholders and to encourage compact prosecution. Originally launched on March 25, 2012, the pilot has shown an increase in allowance rates for applications after final rejection.
For more information on AFCP visit http://www.uspto.gov/patents/init_events/afcp.jsp.
CAFC Discusses Obviousness Type Double Patenting
In the recent Federal Circuit case of St. Jude Medical v. Access Closure, the defendant Access Closure, Inc. (ACI) appealed several rulings made by the United States District Court for the Western District of Arkansas in favor of St. Jude Medical, the patentee-plaintiff. The rulings relate to three patents that St. Jude asserted against ACI, namely U.S. Patent No. 7,008,439 to Janzen et al., U.S. Patent No. 5,275,616 to Fowler, and U.S. Patent No. 5,716,375, also to Fowler.
ACI appealed the district court’s application of the safe harbor provision in 35 U.S.C. § 121to the Janzen patent, the court’s construction of the claim terms “means for ejecting” and “ejecting mechanism” from the Janzen patent, and the court’s denial of ACI’s renewed motion for JMOL that the Fowler claims are invalid for obviousness.
With respect to double-patenting, ACI argued that the Janzen patent violates “consonance.” The judicially created consonance concept derives from the safe harbor provisions of § 121 and specifies that the line of demarcation between the independent and distinct inventions that prompted the restriction requirement be maintained. The requirement for consonance applies to both the patent challenged for double patenting (i.e., the challenged patent) and the patent being used as a reference against the challenged patent (i.e., the reference patent).
The Federal Circuit determined that the restriction resulting from the election of species affected the line of demarcation. In particular, the first restriction separated Group I from Group II, and the second restriction operated on top of the first restriction to separate the Species.
For more please see my complete article on this case at the PLI Patent Practice Center.
GW Master of Patent Practice
George Washington University has a new Masters program in Patent Practice. The program is a 32-credit degree that focuses on US law, policy, practice, and engineering and includes material that will prepare you to sit for the patent bar. The Master of Patent Practice degree is presented through the GW College of Professional Studies and is not affiliated with the GW Law School.
A white paper authored by two members of the Intellectual Property Owners Association (IPO) U.S. Patent Office Practice Committee argues that the current patent examination system “has run its course,” and needs to be changed. In its place, the paper proposes a revised examination system that would “offer a break from the past system . . . and provide a new path to accomplishing the twin goals of reducing the unexamined new case backlog and expeditiously concluding the examination process once it is started.”
In order to combat the perceived “patent troll” problem, members of Congress in both the House and the Senate introduced bills last spring aimed at addressing abusive patent litigation tactics. One of the more comprehensive “discussion drafts” was released on May 23, 2103 by Rep. Bob Goodlatte (R-VA), the Chairman of the House Committee on the Judiciary (see “Congress Continues Efforts to ‘Reform’ U.S. Patent Law“). Even though this discussion draft was not technically “introduced,” it contained many provisions that were covered in other pieces of legislation that had been introduced, as well some of the various recommendations coming from the White House.
Patent Litigator Becomes Managing Partner at Kilpatrick Townsend & Stockton
On September 26, 2013, Kilpatrick Townsend & Stockton LLP announced that Managing Partner Henry Walker has been elected as the firm’s Chair and that Susan Spaeth will serve as firm Managing Partner.
Mr. Walker succeeded Paul Aguggia who announced on September 4, 2013, that he will become Chair, Chief Executive Officer, and President of long-time Kilpatrick Townsend client Clifton Savings Bancorp, Inc. Mr. Aguggia will remain with the firm as a partner until the end of the year.
Spaeth, who is located in the firm’s Silicon Valley, focuses her legal practice on intellectual property and complex/technical litigation, particularly patent litigation, licensing and counseling. Ms. Spaeth has represented biotechnology, medical device and high technology companies in various federal district courts, the United States International Trade Commission and European patent litigation.
Clouding IP Faces Inter Partes Review at the USPTO
On September 19, 2013, Unified Patents that it had filed an Inter-Partes Review (IPR) with the U.S. Patent and Trademark Office (PTO) requesting review of Clouding IP’s U.S. Patent No. 6,738,799. The ‘799 Patent claims cover file synchronization technology deployed in the solutions of some of the most successful cloud storage companies. Unified’s request states that they have discovered prior art references available before the ‘799 patent’s earliest priority date that raise doubt about the patentability of the patent’s claims.
“Clouding IP has gained a reputation as a patent ‘troll’ and is pursuing litigation against a number of defendants for allegedly infringing a patent we firmly believe to be invalid,” said Kevin Jakel, founder of Unified. “We want all non-practicing entities (NPEs) to know that Unified will vigorously challenge invalid patents being asserted in cloud storage. We are pleased to be at the forefront of protecting strategic technologies from NPE activity.” Of course, not all non-practicing entities are patent trolls, an important nuance that seems to be lost in the PR blitz by Unified.
To dated Clouding IP has asserted the ‘799 patent in litigation against Oracle, Apple, Google, Microsoft, Amazon, Rackspace, SAP, Dropbox, Verizon, and EMC. Clouding IP has also sued over a dozen additional companies based on other patents.
New Superconducting Wire Invented
Epoch Wires, Inc., a startup specializing in superconducting wires, announced on September 18, 2013, that it has successfully completed manufacturing experiments to produce an infinitely-long Magnesium Diboride (MgB2) wire. The company says the new wire can be produced at the lowest market price. This coupled with high production capacity will make large-scale energy applications feasible. The company has plans to start production in early 2014.
According to Epoch, one of the immediate applications of the new wire will be in MRI machines. The increasing costs of current superconducting wires has been a concern of MRI manufactures. Magnesium Diboride wire cooled with cheap and abundant liquid Hydrogen (rather than liquid Helium) represents significant cost advantages, which could result in increased access for patients.
Professor Bartek A Glowacki, co-founder and director of Epoch Wires Inc., and a Professor in the University of Cambridge, UK, said “Magnesium Diboride wire presents a unique opportunity for energy applications especially in conjunction with the emerging Hydrogen economy both as a coolant and as an energy vector.” He added “Low manufacturing and operational costs are a typical blue print for revolutionizing the energy sector.”
Daniel Winslow Hired as Rimini Street General Counsel
On September 16, 2013, Rimini Street, Inc., a leading third-party maintenance and support provider for enterprise software, announced the appointment of Daniel B. Winslow as Senior Vice President and General Counsel. In this role, Winslow will lead Rimini Street’s global legal team and provide legal support to the board of directors and all global business units.
Winslow, who has served as a member of the Massachusetts House of Representatives since 2011, resigned from the House to accept the new general counsel position at Rimini Street. Winslow also resigned his position at the international law firm of Duane Morris LLP, where he served of counsel assisting corporate clients in a wide variety of areas, including patent prosecution and litigation, trademark and copyright, regulatory compliance, telecommunications, investment banking, and internet and entertainment law.
Prior to Duane Morris, Winslow was Chief Legal Counsel to then-Massachusetts Governor Mitt Romney, overseeing a team of more than 800 in-house and outside counsel, the largest legal practice in Massachusetts. Previously, he spent eight years as a presiding justice and appellate division justice in the Massachusetts Trial Court.
Patent filed on securing player identity on Internet gaming platforms
LaserLock Technologies (OTCBB: LLTI), announced on Monday, September 13, 2013, that it has filed a provisional patent application entitled “System For Correlation of Independent Authentication Mechanisms.” The system authenticates human subjects using three independent factors simultaneously, creating a simple user experience and a higher degree of security than currently available on the market.
Normally I don’t write about provisional patent applications being filed, but this caught my attention because in the press release the company explained that they believe this technology will be useful for securing player identity on internet gaming platforms. So color me a sucker if you like, but securing identities and online gaming struck me as particularly interesting.
The system apparently incorporates three factors of authentication: a color gesture swipe (something you know), a smartphone or tablet (something you have) and facial recognition. The LaserLock believes the system is unique because the color gesture swipe and biometric scan are performed simultaneously. More specifically, when the user inputs the color gesture swipe into their device, the front-facing camera of the device performs a facial recognition scan simultaneously. The security of the system is also enhanced when, during the facial scan, the camera also detects the direction the users eyes are moving in. The company claims this prevents an imposter from fooling the facial recognition software by holding up a picture or a pre-recorded video of the person they are attempting to impersonate.