Traveling this week, so posting will be light

Back to the routine on Thursday

Will the Alice Corp decision breathe new life into the Jepson claim format?

Meet George Jepson!

In Europe, a patent applicant is affirmatively required to distinguish their claimed invention from the prior art in their application. European claims often used the "...characterized in that..." transitional phrase, where everything in the claim preamble that precedes that phrase is conceded prior art.  In U.S. practice, a similar effect is produced where the claim uses the "...wherein the improvement comprises..." transitional phrase.  This is referred to as a "Jepson" claim, from the 1917 Ex parte Jepson case that endorsed it.

Like most patent attorneys, I've avoided using the "Jepson" claim format, in an effort to avoid conceding that anything is prior art.  It's the way I was trained.

However, I'm reconsidering my reluctance in light of the Supreme Court's recent decision in Alice Corp, and the USPTO's preliminary guidelines, which were issued last Wednesday (see post below).

Here's the important bit:  once an examiner decides that a claim includes an abstract idea, they are to determine "whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself."

Limitations referenced in Alice Corp. that may be enough to qualify as "significantly more" when recited in a claim with an abstract idea  include, as non-limiting or non-exclusive examples:

• Improvements to another technology or technical field;
• Improvements to the functioning of the computer itself;
• Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

 So let's say my invention is an algorithm for use in some kind of technical process, and the use of the algorithm improves that process.  If I draft the claim as a Jepson, claim, I'm steering the examiner right down the path outlined in the first bullet point.  Yes, I've conceded that the process itself is in the prior art, but since I wasn't claiming the old process, no harm done.

Right?

It's not illegal. It's just expensive.

There's a difference between illegal and expensive, but that distinction seems lost on most media outlets, who seem determined to characterize the Supreme Court's decision yesterday in the Areo case as holding that Aereo's business is illegal (for samples, see here, and here, and here, and here, or just search "Aereo" and "illegal").

So let's be clear:  the Supreme Court didn't say that Aereo's business is illegal.  It said that Aereo is violating copyrights.  If they want to pay licensing fees (like cable operators do) they can keep right on going.  The problem is that their business model is probably not financially sustainable if they do that - their subscribers are undoubtedly mostly former cable/FIOS/satellite subscribers who ditched their previous provider(s) because of their high fees and crappy customer service.  Those folks don't pay Aereo enough money now to defray the licensing fees that Aereo would have to pay to stay in business, and if Aereo did pay the licensing fees and pass that cost through to subscribers, their subscribers will lose their main motivation for ditching their traditional content providers.

But it's not illegal. 

I find myself in a disturbing position

Today, the Supreme Court handed down its decision in ABC v Aereo, finding that the TV-antenna-rental service provided by Aereo is a copyright violation.

The majority decision was written by Bryer; Scalia authored a dissent, joined by Thomas (shocking!) and Alito.  And I find myself in the somewhat uncomfortable position of agreeing with Scalia.  Check this bit from the dissent:

I share the Court's evident feeling that what Aereo is doing (or enabling to be done) to the Network's copyrighted programming ought not to be allowed.  But perhaps we need not distort the Copyright Act to forbid it.  As discussed at the outset, Aereo's secondary liability for performance infringement is yet to be determined, as is its primary and secondary liability for reproduction infringement.  If that does not suffice, then (assuming one shares the majority's estimation of right and wrong) what we have before us must be considered a "loophole" in the law.  It is not the role of this Court to identify and plug loopholes.  It is the role of good lawyers to identify and exploit them, and the role of Congress to eliminate them if it wishes.  Congress can do that, I may add, in a much more targeted, better informed, and less disruptive fashion than the crude "looks-like-cable-TV" solution the Court invents today.

Well, OK, that last bit about Congress being able to do something is crazy talk, but still... 

 

Which way, Alice?

We're all mad here.

Over at Patently-O, Professor Chisum attempts to wring a practice rule out of the Supreme Court's decisions in Alice Corp. and related cases (you can read the full treatment here).  Money quote: 

Hence there are strong grounds for the proposition that a patent claim reaches a safe harbor from Section 101 abstract idea scrutiny, including the Mayo second question for an “inventive concept,” if the claimant establishes that the claim is directed to a solution of a technological problem.  This definition of abstract idea as excluding applied technology accommodates the case law treating pure mathematical statements, economics and finance, and schemes of a non-technical character (“methods of organizing human activity”) as “abstract ideas” that must be include additional elements to achieve patent eligibility (Mayo step two).

Seems reasonable to me.  I guess we'll find out soon enough.  For what it's worth, there's a Software Partnership Meeting coming up next month at the USPTO - so they've got a month to figure out what they're going to do with this problem, at which point they'll tell us (I hope).  In the meantime, the Supreme Court is acting like the Cheshire cat, giving us unhelpful directions and then fading away.

UPDATE

The USPTO has issued preliminary guidelines for examiners to follow in light of the Alice Corp. decision.  My first thought:  that was fast.  More thoughts to follow.

"Redskins" disparaging? How about "Amish Mafia?"

The USPTO has rejected Discovery Communications' application for registration for the mark "Amish Mafia" on the basis that the mark is disparaging to the Amish.  You can read Discovery's request for reconsideration here.  

Discovery argues, in part, that even if the mark is disparaging, it's not disparaging to all Amish, but only to the Amish who are also involved in organized crime. And they may have a point, noting the following marks that have NOT been denied registration:

MAFIA GRANNIES (Reg. No. 4250545)

PORTUGUESE MAFIA (Reg. No. 4404311)

DUTCH MAFIA (Reg. No. 4391891, 4391890, 4391887)

AMERICAN MAFIA (Reg. No. 4208994)

THE MEXICAN MAFIA (Reg. No. 3665101)

THE LESBIAN MAFIA (Reg. No. 3361741)

Technical note - commenting

It has recently come to my attention that this blog was set up to require some kind of registration before you could comment on a post.  

I have rectified that situation - comments are now open, without registration.  I will be moderating comments, however, so don't be a d**k.

Patent Figure of the Day

This is an actual figure from a published PCT application.  You can check it out here.

Just to be clear, this is not an application filed by some guy working in his garage.  No, this is an application filed by a serious, big-time company.  Their patent attorney works at a serious, big-time AmLaw 100 firm.  I guarantee that his billing rate is north of $650/hour.  And it's not like they didn't have a chance to clean it up first:  there's a US priority application that was filed a day earlier, and a provisional application that was filed one year prior. 

So the first question this raises is:  forget about hiring a professional to do their drawings, they didn't have time to find a ruler in the year from their provisional filing date to the filing of this case?  Forget a ruler, how about a piece of cardboard, for cripe's sake?

And the second questions is:  what does this figure possible add to the application?  Bear in mind that this case was filed in 2004.  Is there any way to credibly argue that your understanding of ANY invention that you might file on in 2003 or 2004 would be assisted by this figure?  

Amazing.

Supreme Court Upholds Denial of Patents Under 101

It's unpatentable, Alice.  UNPATENTABLE!!

Today the Supreme Court, in a mildly surprising break from their recent trend of reflexively reversing the Federal Circuit, issued an opinion upholding the appellate court's denial of Alice Corp.'s business method patent claims on the grounds that they are directed to a "patent-ineligible abstract idea" and thereby unpatentable under 35 USC 101.  Decision here.   Analysis to follow.

UPDATE
Ok, the decision is not that interesting, except that, in a concurrence Sotomayor, Breyer, and Ginsburg indicate that they would dump business method claims completely.  This is a step that the other six justices were apparently not ready to take at the moment.  Since Sotomayor is the only one of the "young" justices who feels that way, it seems clear that we're not going to get rid of business method claims anytime soon.  Now all we need are some clear rules for drafting them. 

USPTO Cancels "Redskins" Mark

According to multiple sources, the US Patent and Trademark Office has canceled the Washington Redskins trademark, on the grounds that the mark is disparaging (copy of TTAB order here).  Also canceled: the cheerleaders' mark "Redskinettes." 

The decision is 80 pages, and the dissent is 99 pages, so this is going to take a bit of digesting.  Which, as a fan of the team, I will do.  One interesting bit that pops out immediately:  the focus of the decision is on marks that include the word "redskins."  The logo pictured above, which does not contain the offending word, is not covered by the decision.  Which raises interesting implications for other teams, like the Cleveland Indians, whose name is presumably not disparaging, although this logo presumably would be.

Another reason to file a patent application in Australia

Relevance?  Really?  It's a kangaroo drinking a beer.  

Australia has a second class of patents, in addition to utility patents:  the "innovation" patent.  According to this helpful post (hat tip: IP Watchdog), the innovation patent is examined quickly (six months), and has a shorter term than a utility patent (only eight years).  

Novelty is required, but not inventive step.  Instead, the inventor needs to show "innovative step."  The test for "innovative step" is generally agreed to be easier to meet, such that an innovation patent can be granted on claims that would be found obvious under the stricter utility standard.  Apparently, this is the three-part test for assessing innovative step:

1. compare the invention as claimed in each claim with the prior art base and determine the difference or differences;
2. look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim; and
3. ask whether the invention as claimed only varies from the prior art in ways that make no substantial contribution to the working of the invention.

Tesla redecorates its corporate HQ.

In a news release geekily entitled "All Our Patent Are Belong To You" Tesla CEO Elon Musk announced that Tesla has redecorated its lobby, taking down its "wall of patents."  

This has been widely publicized as a move by Tesla to renounce patent protection for its technology, in an effort to spur competition and grow the marketplace for electric cars.  As Musk notes in the news release, Tesla's main competition is not other electric car companies, but companies that produce gasoline-powered cars. 

Based on the current price of a Tesla Model S sedan, which exceeds $60K even after all the government incentives are factored in, the gasoline-powered cars that are competing with Tesla are things like the BMW 7-series, Mercedes E-Class, and Lexus LS sedans.  But I digress.

The thing that caught my eye was Musk's pledge:  

Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.

The obvious question is: what does it mean, "in good faith?"

It's the claims, stupid.

Interesting decision from the Federal Circuit relating to obviousness.  http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1245.Opinion.6-5-2014.1.PDF

It's an appeal from a district court decision in a paragraph IV case, relating to the drug "bimatoprost," which apparently will make your eyelashes grow.  Because it's all about the generic form of a particular drug the district court based its finding of non-obviousness on the failure of the prior art to suggest the drug in question, combined with the unexpected results produced by the drug. 

BUT

The claims recite a variable chemical structure that covers many more compounds than the particular drug in question.  Quoth the majority:

Given the breadth of the ’029 patent’s claimed invention, appellants did not have the exacting burden of showing a reasonable expectation of success in using the narrow class of PGF analogs with C1-amide groups to treat hair loss, let alone a reasonable expectation of success in using bimatoprost in particular. Appellants instead had the burden of showing that any compounds within the broad genus claimed by the ’029 patent, including those that did not have C1- amide groups, were obvious at the time of the invention. 

Federal Circuit, tired of being smacked around by Supremes, smacks Board of Appeals

I think the folks over at the Federal Circuit are getting grumpy.  In a decision released last week http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1192.Opinion.6-2-2014.1.PDF, the Court reversed a decision of the PTO Board.  That, by itself, is not unusual.  What's unusual is that they didn't reverse on the basis that the Board got the claim construction wrong.  We're used to that. Instead, the Federal Circuit reversed on the grounds that the Board's decision was not supported by substantial evidence.  That's...surprising.  Particularly as the Board's decision did seem to be supported; the Federal Circuit just disagreed with it.  

Update: Beastie Boys win copyright infringement lawsuit

Back in the day...

The Washington Post reports that Beastie Boys have won their copyright infringement case against Monster. As noted in an earlier post, the fight in the case was over the measure of damages.  The Beasties were seeking $2 million in damages; Monster, which conceded infringement, thought a better number was $125,000.  So the court decided the right number is... 

$1.7 million dollars.  Which is kind of splitting the difference, in a way.  Sort of.

Federal Circuit: "Consumer Rights" Organization Lacks Standing

In what can only be characterized as excellent news for the biotech industry, the Federal Circuit yesterday dismissed Consumer Watchdog's appeal from a USPTO decision in an inter partes reexam upholding claims to human embryonic stem cell cultures.  

The Court found that Consumer Watchdog "has not established an injury in fact to confer Article III standing."  

Consumer Watchdog does not allege that it is engaged in any activity that could form the basis for an infringement claim.  It does not allege that it intends to engage in such activity.  Nor does it allege that it is an actual or prospective licensee, or that it has any other connection to the '913 patent or the claimed subject matter.  Instead Consumer Watchdog relies on the Board's denial of Consumer Watchdog's  requested administrative action -- namely, the Board's refusal to cancel claims 1-4 of the '913 patent.  That denial, however, is insufficient to confer standing.

This makes perfect sense, right up to that last bit.  See, there's no "standing" requirement at the USPTO.  So anybody can bring a request for inter partes reexamination of an eligible patent, assuming they have the fee in hand and can meet the "substantial likelihood of success" standard for review. And the statute specifically authorizes appeals from Board decisions in inter partes reexam, but doesn't say anything about standing.

The Court acknowledges as much, but is unpersuaded.

Nor is it enough that the inter partes reexamination statute allows a third party requester to appeal decisions favorable to patentability.  35 U.S.C. 315(b).  A statutory grant of a procedural right, e.g., right to appeal, does not eliminate the requirements of Article III.  See Lexmark Int'l, Inc. v. Static Control Components Inc., 134 S.Ct. 1377, 1386 (2014).  To be clear, a statutory grant of a procedural right may relax the requirements of immediacy and redressability, and eliminate any prudential limitations, ...which distinguishes the present inquiry from that governing a declaratory judgment action.  But the statutory grant of a procedural right does not eliminate the requirement that Consumer Watchdog have a particularized, concrete stake in the outcome of the reexamination.  Summers [v. Earth Island Inst.], 555 U.S. [488] at 496 [(2009)] ("[D]eprivation of a procedural right without some concrete interest that is affected by the deprivation -- a procedural right in vacuo -- is insufficient to create Article III standing.")

So this decision creates a strange procedural anomaly - anybody can bring an inter partes reexam, but not everybody who is dissatisfied with the result will have standing to appeal, despite the clear language of the statute.

TTAB Upholds Denial of Registration for "Asshole Repellent"

Yesterday, in a precedential decision, the Trademark Trial and Appeal Board upheld the denial of registration for "Asshole Repellent" on the grounds that the mark is "scandalous and immoral."

Money quote:

The list of third-party registrations consisting of the word “ass” has little, if any, probative value because the term at issue is the word “Asshole” in the mark ASSHOLE REPELLENT, not the word “Ass.” 

Forget the Supreme Court. Let's talk Girl Scouts!

The actual patch

The Girl Scouts of America have just announced that scouts will be able to earn an "Intellectual Property" patch.  The requirements for the patch will vary depending on the girl's age and scouting level.  Here's a link to the requirements for earning the "cadette" level patch.

In all seriousness, I think this can only be a good thing, particularly given the relative dearth of women in patent law.

Supreme Court's New Indefiniteness Test: Not So Clear

You don't have to take my word for it.  Here's the Federal Circuit's test:

Considering the intrinsic evidence (i.e., the claim language, the specification, and the prosecution history... A claim is indefinite..."only when it is 'not amenable to construction' or 'insolubly ambiguous.'"

The new test, articulated by the Supreme Court today in its decision in Nautilus v. Biosig:

We read [section]112, [para.]2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.

Glad we got that cleared up. 

Supreme Court Issues Decision on Inducment, Issues Yet Another Smackdown to Federal Circuit.

The Supreme Court has just handed down its decision in Limelight v. Akamai, reversing the Federal Circuit.  Money quote:  

The Federal Circuit fundamentally misunderstands what it means to infringe a method patent.