Category: Patent

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Lack of Capitalization of “internet protocol” in Claim Contributes to Invalidity Over Prior Art

US07269247_Fig1The importance of the wording of a patent claim is paramount. And, even the capitalization of the words of the claims can matter as shown in the case of AIP Acquisition LLC v. Cisco Systems, Inc., No. 2016-2371 (Fed. Cir. 2017).

Cisco Systems challenged the validity of U.S. Patent No. 7,269,247, owned by AIP Acquisition. The patent is directed to systems and methods for interconnecting otherwise incompatible telephone networks using the Internet, for example, for the purpose of placing a phone call through various networks including the “Internet or other data networks.”

A disputed portion of claim 1 provided “the second format being internet protocol” and a disputed portion of claim 16 provided “wherein said second format is Internet protocol.”

In order to distinguish the prior art and save the validity of the claims, AIP argued that “internet protocol” and “Internet protocol” of claims 1 and 16 meant only “Internet Protocol of TCP/IP.”

But the Court said the patent applicant/owner:

“…could have claimed a specific protocol, such as the IP of TCP/IP, perhaps by capitalizing the ‘i’ in ‘internet’ and the ‘p’ in ‘protocol’ in both claims or, more definitively, by reciting the ‘Internet Protocol of TCP/IP.’ It did not, however, and the use of lowercase letters suggests that ‘I/internet protocol’ is not confined to any particular protocol.”

The court concluded that the prior art invalidated the challenged claims given the broader scope of the term “internet protocol.”

The lack of capitalization was not the only thing that the court relied on to conclude the term should be given a broader interpretation. However, this case demonstrates that beyond the words themselves, even the capitalization of words in the claim can have an impact on the way the words are interpreted as well as the ultimate scope and validity of the claims.

This is not to say that the use of lowercase “internet protocol” was necessarily an oversight by the patent drafter. It could be that at the time the application was written and prosecuted the patent applicant wanted a broad interpretation. But later when it became apparent that the claims was or might not be valid with the broad interpretation, the patent owner changed positions on the meaning of the claim.

On the other hand, it could also be that all along the patent owner intended the claim words to mean the narrower “Internet Protocol of TCP/IP” but the language chosen did not achieve that intent.

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Can Benefit to Provisional Patent Application be Restored When the One Year Deadline to File a Nonprovisional is Missed?

A provisional patent application is not examined by USPTO and will not result in a patent. In order to gain the benefit of the provisional application, a non-provisional application must be filed within one year of the filing date of the provisional application and must claim priority to the provisional application. But what if you fail to file the non provisional application within one year of the provisional filing date? Is all benefit of the provisional application lost? Maybe not.

The law provides a two month window after the one year deadline where the benefit of the provisional application can be restored. 35 USC 119(e), 37 CFR 1.78(b), MPEP 211.01(a)(II). But there are important limitations on the option to restore the benefit of the provisional application.

The first limitation is that the delay in filing the nonprovisional application beyond the one year deadline must be unintentional. Therefore if you intended not to file by the one year deadline but then later changed your mind, the delay was probably not unintentional.

The second limitation is that you must file a petition requesting that the benefit of the provision application be restored and pay a big fee.

Currently the fee for this petition is $850 for micro entities and small entities. The petition fee is in addition to the other USPTO filing fees. Generally the USPTO filing fees for a non-provisional application are about $400 for micro entities and $740 for small entities.

Therefore, filing within the two month window where the benefit can be restored effectively more than triples the total USPTO fees to file the application for a micro entity and more than doubles the total fees to file for a small entity.

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Don’t Admit that A Human Can Manually Perform the Claimed Process to Help Avoid Abstractness

US7757298_Fig1Intellectual Ventures I sued Erie Indemnity Company for infringing U.S. Patent No. 7,757,298 (the ‘298 patent). The ‘298 patent is directed to a method and apparatus for identifying and characterizing errant electronic files. It seeks to improve the prior art by providing a method and apparatus to detect “undesirable files” (such as copyrighted music files) “stored on computer storage devices” “according to pre-set criteria.”

Claim 1 provided three section criteria, “any one of which may be used to identify errant files, with selection based on: (1) size, i.e., ‘whether an aggregate size of plural identically-sized files exceeds a predetermined threshold,’ … (2) content, i.e., ‘whether content . . . matches a [certain] file type,’… and (3) naming convention, i.e., ‘whether the file comprises data beyond an end of data marker.'”

The court found that the claims of the ‘298 patent were invalid as being directed to an abstract idea under 35 USC 101. Intellectual Ventures I LLC v. Erie Indemnity Company, No. 2017-1147 (Fed. Cir. 2017).

One factor the court considers in determining whether a claim is directed to an abstract idea is whether the claim “could be performed in the human mind or by a human using a pen and paper.” Here, the ‘298 patent described that a human could manually perform the first two selection criteria claimed for identifying errant files. The court used this admission in concluding that the claim was abstract.

It would have been better if the ‘298 patent did not describe that any of the selection criteria could be performed manually by a human. Generally it is good to describe alternative versions and ways of implementing your invention in the patent application. This can help broaden the scope of protection offered under the patent claims.

However, when the invention is computer implemented, describing that any of the steps could be done manually or have in the past been done manually by a person, could be used against you in a patent eligibility challenge,

 

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Teaching Away Requires Clear Discouragement to Counter Obviousness

US6673532_Fig1Presense Persuasion Sensing petitioned the USPTO to reexamine (invalidate) certain claims of U.S. Patent 6,673,532 (the ‘532 patent) directed to methods of measuring parameters in a cell culture. The USPTO rejected the challenged claims of the ‘532 patent as obvious in view of a combination of two references, which I will refer to as “Bamboo” and “Weigl.”

University of Maryland Biotechnology Institute (Maryland), which owns the ‘532 patent, argued that Bamboo and Weigl should not be combined because Weigl teaches away from the claimed invention. Maryland  alleged that Weigl taught away because “(1) Weigl’s carbon dioxide sensor is unstable; (2) each of Weigl’s flow-through units has only one sensor, not multiple sensors; (3) Weigl’s various outlets are inconsistent with the claimed invention’s ‘continuous volume’ limitation; and (4) Weigl’s device is “invasive” because it requires extra-vessel sensors.”

The court rejected these arguments on appeal. University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, Nos. 2016-2745, 2017-1075 (Fed. Cir. 2017). The court found that Maryland’s teaching away arguments focused too narrowly on Weigl’s physical arrangement.

The court said, the “mere disclosure of alternative designs does not teach away.” Instead, “teaching away requires ‘clear discouragement’ from implementing the technical feature.” And the court found no clear discouragement.

When a reference teaches away from the proposed combination, such a teaching would discourage one skilled in the art from making the combination.

Therefore, teaching away is a good argument for defending against an obviousness claim. However, usually the teaching away needs to be quite explicit in the reference for the argument to have traction.

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Applying Computer and Internet Technology to Replace Older Electronics is Commonplace, Fed. Cir. Says

US20060218618A1_Fig 1Joseph Lorkovic filed a patent application directed to a home entertainment content delivery system for interactive content dissemination over the internet. The USPTO rejected Lorkovic’s claims as obvious based on a combination of U.S. Patent 5,918,012 (“Astiz”) in view of U.S. Publication 2005/0229233 (“Zimmerman”). Lorkovic claimed Astiz and Zimmerman could not be combined because the web browsing functionality in Astiz was not compatible with the analog based Zimmerman device.

The appeals court rejected this argument in In Re Lorkovic, No. 2017-1678 (Fed. Cir. 2017). The court stated, “We have previously observed that ‘applying computer and internet technology to replace older electronics has been commonplace in recent years’ and found obviousness in reliance on that observation.” citing W. Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010).

Obviousness determinations are hard to predict. However, when considering the patentability of an invention, it is important not to think too narrowly about whether prior art devices would be compatible or physically combine-able. But rather consider what would one skilled in the art would understand from the prior art device or disclosure in light of current state of the art at the time of application filing.

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The Wright Brothers on Taking Risks

“The man who wishes to keep at the problem long enough to really learn anything positively must not take dangerous risks. Carelessness and overconfidence are usually more dangerous than deliberately accepted risks,” said Wilbur Wright.

WrightBrothersThe process of inventing the airplane and testing it carried risks. However, as David McCullough writes in his book The Wright Brothers, “caution and close attention to all advanced preparations were to be the rule for the brothers.”

He continued, “They would take risks when necessary, but they were not daredevils out to perform stunts and they never would be.” In addition to the brothers’ study of flight attempts of others and the manner that birds fly, the brothers took many cautious steps in preparation for their first flight experiences.

The brothers realized that their home town of Dayton, Ohio was not ideal for flight experiments. Instead, they sought a location with consistent winds and soft sand to test their machine.

Wilbur first inquired with Octave Chanute, an engineer, for advice on where to conduct flying experiments. But the locations in California and Florida that Octave knew of were “deficient in sand hills” for soft landings. Instead, Octave suggested the coasts of South Carolina or Georgia might be better.

Wilbur Wright inquired with the United States Weather Bureau about the prevailing winds around the country. The Bureau responded with records of monthly wind velocities of more than one hundred weather stations around the country. A spot called Kitty Hawk on the Outer Banks of North Carolina stood out.

But Wilber would not rely on the weather data alone, he wanted confirmation from someone there at Kitty Hawk. Wilbur wrote to the head of the Weather Bureau at Kitty Hawk. A reply confirmed that there was “a stretch of sandy land one mile by five with a bare hill in center 80 feet high, not a tree or bush anywhere to break the evenness of the wind” and the “winds were always steady, generally from 10 to 20 miles velocity per hour.”

Having settled on a suitable location, the brothers would not start out with a powered plane, but an unpowered version. They could use the wind at the sand hill to test the equilibrium and control of the plane before adding engine power. Wilbur said:

“I have my machine nearly finished. It is not to have a motor and is not expected to fly in any true sense of the word. My idea is merely to experiment and practice with a view to solving the problem of equilibrium. I have plans which I hope to find much in advance of the methods tried by previous experimenters. When once a machine is under proper control under all conditions, the motor problem will be quickly solved. A failure of a motor will then mean simply a slow descent and safe landing instead of a disastrous fall.”

McCullough recounts that Wilbur stressed to his father that Wilbur “did not intend to raise many feet from the ground, and on the chance that he were ‘upset,’ there was nothing but soft sand on which to land.” Wilbur further said “The man who wishes to keep at the problem long enough to really learn anything positively must not take dangerous risks. Carelessness and overconfidence are usually more dangerous than deliberately accepted risks.”

Wilbur even went so far as to assure his father that he was taking “every precaution” about his drinking water in the Outer Banks.

Read more about the ups and downs of the Wright Brothers’ work in McCullough’s book, which is a worthy read.

 

 

 

 

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US Supreme Court Restricts where Patent Suits Can be Filed

The U.S. Supreme Court interpreted the patent venue statute, 28 USC 1400(b), narrowly to restrict the places were patent suits may be filed in the case of TC Heartland LLC v. Kraft Foods Group Brands, LLC, No. 16-341 (May 22, 2017).

Previously, the Federal Circuitdetermined that section 1400(b) incorporated the broader definition of “residence” contained in 28 USC 1391(c). That broader definition provided that a defendant corporation resides in any judicial district in which the defendant is subject to the court’s personal jurisdiction. The Supreme Court determined that the resident definition section does not apply to section 1400(b) and that a defendant resides, for the purposes of section 1400(b), only in the state where it is incorporated.

Since many corporations are incorporated in Delaware, this ruling is expected to increase the number of patent suits filed there and to reduce the number of patent cases filed in the Eastern District of Texas, which has been a popular patent plaintiffs’ venue.

In addition to the place where the defendant resides, Section 1400(b) also provides that venue is proper where the defendant has committed acts of infringement and has a regular and established place of business. Therefore this second clause of section 1400(b) will likely now get more action. And, courts will have occasion to define the boundaries of what is a “regular and established place of business,” which was not a widely relied upon clause previously.

IPWatchdog and IAM have additional coverage on this ruling.

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Selling or Transferring Ownership a Patent Application or Patent

Selling or transferring ownership of a U.S. patent or patent application must be carried out by a written document called an assignment. See 35 USC 261. Below I review four common provisions of a patent/patent application assignment and then I explain the benefits of having an assignment notarized and recorded at the USPTO.

1. Transfer of Ownership

The ownership transfer clause effects the transfer of the invention and the patent application. One example ownership transfer clause is: “In consideration of good and valuable consideration, the receipt of which is hereby acknowledge, the entire right, title, and interest in the invention by [Inventor(s) Name] (“Assignor”) of the [Title of Invention] (“Invention”) and in the application for Letters Patent of the United States therefor, identified by serial number ________ and filing date ________ (“Application”), and in any reissue of any Letters Patent that may be granted upon the Application are hereby assigned by Assignor to [Recipient/Assignee] [an individual / a Corporation/LLC organized under the laws of [State]] having an address at _____________ (“Assignee”).” Notice that this clause transfers ownership of the invention and the patent application for that invention.

2. Geographic Scope

A provision defining the geographic scope of the assignment is desirable. Often an assignment is intended to apply worldwide to allow the receiving party (i.e. the Assignee) to file patent application on the invention in any foreign country. Therefore, an assignment might provide, “The assigned rights include all worldwide rights to file any international patent applications, foreign patent applications, foreign design patent applications, utility model application, or similar industrial property rights for the Invention…”

3. Continuations and Divisionals

Patent applications occasionally include and claim more than one invention. The Patent Office may issue a restriction requirement, where the applicant must elect among the multiple inventions in the application. The unelected inventions can be pursued in a separately filed divisional application. The divisional application can be thought of a “child” application of the original “parent” application.

A continuation patent application and a continuation-in-part patent application are other types of “child” patent applications that the patent owner might want to file and therefore will want to right to file. It is desirable for the assignment to expressly authorize the Assignee (receiver) to file divisional, continuation, and continuation-in-part patent applications based on the original application.

4. Obligation to Assist and Execute

In the U.S. an inventor signed declaration is usually filed with a patent application. There are provisions for accounting for situations were an inventor declaration cannot be obtained. However, generally, you want to have in inventor declaration filed in or with your patent application. Therefore, it is desirable to including in an assignment a written obligation for the inventor to execute all documents that the Assignee (recipient) desires in connection with the the patent application and any continuation, divisional, or other patent application concerning the invention.

Further, if the resulting patent is involved in a lawsuit, the patent owner will want the inventor to assist the patent owner in asserting or defending the patent. Therefore, the assignment should include a clause requiring the inventor to execute documents requested by the patent owner in connection with any lawsuit, reexamination, reissue, inter partes reexam, or other proceeding related to the patent. It would further be desirable for the assignment to require the inventor to assist and cooperate, beyond executing documents, with the patent owner in any such lawsuit or proceeding. For example, the patent owner may need the Inventor to testify about the invention.

Notary

The signatures of an assignment of a patent or patent application should notarized. 35 USC 261 provides a presumption that when signatures are notarized the assignment “shall be prima facie evidence of the execution of the an assignment, grant, or conveyance of a patent or application for patent.” In other words, it will be harder for someone to challenge the validity of the signatures. Therefore the assignment will be stronger.

Recording at USPTO

An assignment should be recorded at the USPTO to gain the benefit of 35 USC 261, which provides, “An interest that constitutes an assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” This statute protect you when you record the assignment against problems if the inventor or prior patent owner sells the same invention to another party later.

 

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I Searched and There is Nothing Like My Invention at the Patent Office

Occasionally, I will hear someone say that he/she searched for their invention at the patent office, but there is nothing like it. But, more searching is likely needed. It is almost never the case that there is nothing similar to a new invention. New inventions are built on the backs of prior products, inventions, and/or knowledge.

Usually the problem is either that the person (a) has not searched in the right place or (b) is too narrowly viewing what is similar. When someone hires a patent search to be performed, the search almost always finds something related to the invention.

If a search is coming up with no results, then the patent search must be broadened. The search can be broadened by looking in different classifications or by searching for different keywords. Broadening the search can include searching other technical areas. In evaluating the patentability of an invention the patent office sometimes looks to references that are not in the same technical area as the invention but that are directed to the same type of problem that the current inventor faced in developing his/her invention. Therefore you might ask what other technical areas might address the problem or problem(s) you sought to overcome by your invention.

While relevant or similar results exist for almost every invention, those results do not necessarily block an invention from patenting. Interpreting the results is what patent attorneys do to advise their clients on the chances of obtaining a patent.

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Forgot to Pay the Patent Maintenance Fee: Options to Revive a Patent

After a US utility patent is granted, maintenance fees must be paid at certain intervals. This post will discuss some of the rule that currently apply to maintenance fees.

Patent maintenance fees must be paid at 3 1/2, 7 1/2, and 11 1/2 years after the patent issues. The fees can be paid in the 6 month window before the deadline, that is between 3 years and 3 1/2 years, between 7 years and 7 1/2 years, and between 11 years and 11 1/2 years, respectively. See MPEP 2506.

If you don’t pay the maintenance fee by the deadline, you can pay it in the 6 month period (“the surcharge period”) after the deadline by paying an additional surcharge fee. Therefore, the surcharge periods are between 3 1/2 years and 4 years, between 7 1/2 years and 8 years, and between 11 1/2 years and 12 years, respectively.

If you fail to pay the maintenance fee by the end of the surcharge period, the patent will be expired. To revive the patent you must file a petition. The petition is currently called “Petitions to Accept Unintentionally Delayed Payment of a Maintenance Fee in an Expired Patent.” An important requirement for revival is that the delay in payment was unintentional.

The relatively straight forward case of an unintentional delay is when you forgot to pay the fee. One definition of forget includes “to omit or neglect unintentionally.” 

The USPTO form for this type of petition include the required unintentional statement: “The delay in payment of the maintenance fee for this patent was unintentional.” Currently, the USPTO usually accepts that statement without requiring more information about why the delay was unintentional. The is because the patent owner has a duty to make truthful statements. Untruthful statements might result in the patent being unenforceable.

If the entire delay in making payment is unintentional, a petition to revive the patent can be filed together with the maintenance fee and the petition fee.