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Patent Month in Review: February 2017

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Supplying a Single Part of Many in an Infringing Device Does not Give Rise to Infringement Liability
The Supreme Court weighed in on whether supplying a single part for export in a multi-part infringing assembly gave rise to liability in Life Technologies Corp. v. Promega Corp. (Supreme Court 2017). In finding no liability, its conclusion was succinct: “supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability.”
Board (and Examiners) Must Sufficiently Identify Elements in Prior Art and Justify Motivation to Combine References
Patent applicants sometimes feel frustrated by loose rejections where examiners don't explicitly point out where each claim element may be found in a reference, or more often, what would motivate a person of ordinary skill in the art to combine references. In PersonalWeb Tech v. Apple (Fed. Cir. 2017), the Federal Circuit gave some support to the frustrated applicant, stating that "[t]he Board did not sufficiently explain and support the conclusions that (1) Woodhill and Stefik disclose all of the elements recited in the challenged claims of the ’310 patent and (2) a relevant skilled artisan would have been motivated to combine Woodhill and Stefik in the way the ’310 patent claims and reasonably expected success."
"Consisting of" Still Sets of a Closed List
Careful claim drafters know that "comprising" and "comprised of" set off open lists that include the elements therein and others unidentified, and "consisting" sets off closed lists that are limited to the elements in the list and no others. Shire Development v. Watson Pharma (Fed. Cir. 2017) confirmed this reading on "consisting of:" "'consisting' creates a very strong presumption that that claim element is ‘closed’ and therefore excludes any elements, steps, or ingredients not specified in the claim."
Sovereign Immunity Protects Public Universities from IPR Challenges
According to the Patent Trial and Appeals Board, the 11th Amendment shields public universities from IPR challenges. The 11th amendment reads, "The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State." The case has not gone higher than the PTAB at this point but this is good news for public universities with large patent portfolios. It will be interesting to see how this might apply to public university licensees. See Covidien LP v. University of Florida Research Foundation Inc., Case Nos. IPR 2016-01274, 01275, and -01276 (PTAB January 25, 2017).
Who is the Director of the USPTO: Solved
For reasons unknown, the identity of the USPTO director was unclear since President Trump's inauguration. In response to FOIA requests from Patently-O's Dennis Crouch, the USPTO now confirms that Michelle Lee is still Director.

[T]he Agency is responding that Michelle K. Lee is the Director of the United States Patent and Trademark Office and Anthony P. Scardino is the Acting Deputy Director of the United States Patent and Trademark Office.

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Propeller Head Reads: February

Norse Mythology
by Neil Gaiman
Odin, Thor, Loki. I knew the names but not the stories. Gaiman is a lover of myth and there could be no better guide to these tales than him. Enjoy hearing these tales sounding over hundreds of years echoing in Northern European fjords.
 


The House of Morgan: An American Banking Dynasty and the Rise of Modern Finance
by Ron Chernow
This is a dense read that explores the story of the Morgan empire, and particularly the early years and the company's adherence to its values. In later years, it was interesting and unfortunate to see the rapid culture shift in the Morgan companies.


The Path to Power (The Years of Lyndon Johnson #1)
by Robert A. Caro
Get this right: Caro has written, at least on volume 1, a five star bio. Tons of details. Well researched. Great quotes. Thorough timeline. Detailed settings. But read this though and ask: Did Johnson have a redeeming quality? At all? We all know what LBJ did on civil rights but that's in a later volume: You may have to fortify yourself to get to that part of the story.


Lincoln at Gettysburg: The Words That Remade America
by Garry Wills
Deep treatment of the Gettysburg Address. Fun, stimulating, short read. Excellent exploration of the Address's historical/philosophical echoes.

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Quick Hitter: Is it Really Obvious to Combine Those References?

By Stephen B. Schott
dreamstime_xs_13876035 2One justification for a patent office rejection is the brick wall, "It would have been obvious for a person of ordinary skill in the art to combine these references." This is a tough statement to overcome for any would-be patentee hoping to argue that an examiner improperly combined two (or more) references in issuing an obviousness rejection.
But the Federal Circuit just gave applicants a boost in In re Nuvasive, Inc.
Motivation to Combine Background
The Supreme Court, in its 2007 KSR Int’l Co. v. Teleflex Inc. case, considered the standard for when it is acceptable to combine references in forming an obviousness rejection. “[It] can be important to identify a reason that would have prompted [a person having ordinary skill in the art] to combine the elements in the way the claimed new invention does.”
Nuvasive and a Higher Threshold
The Federal circuit stated that "the PTAB “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made." As most applicants know, this threshold is a higher bar than the boilerplate sentence that usually justifies the combination of references in a rejection. The Federal Circuit addressed such boilerplate rationale for combinations and found it wanting: "'[C]onclusory statements 'alone are insufficient and, instead, the finding must be supported by a “reasoned explanation.” (citing In re Lee.)
The next time you're faced with a questionable combination of references, don't despair: Cite Nuvasive and question the justification: Ask for the rational connection between the facts found and choice to combine the references.
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Prop Head Book Review: Thank You For Being Late

By Stephen B. Schott
9780374273538Thank You for Being Late: An Optimist's Guide to Thriving in the Age of Accelerations
By Thomas Friedman
What happens when shattering the norm becomes the norm? When disruption is not a wave that comes every so often, but the tide carrying us all? In examining both these questions, and some speculative answers to them, Friedman captures a snapshot of where he places us in 2016.
Friedman does a convincing, and even exciting, job pointing out all the accelerations happening right now. In communications, you can have a crystal clear video call to someone on Mt. Everest. In transportation, self-driving cars are here already, and will soon be in your hands. Artificial Intelligence can outthink humans in many measurable ways. And on and on.
With that technological acceleration comes a risk of being left behind. Friedman estimates that disruptive technologies used to come every 10 years and people take 5-7 years to adapt to them. Breaking that down, the new computer operating system gets developed in year 0 and people adapt to it in 5-7 years, and a few years after that, the next technology wave arrives.
Backed with data, Friedman points out that new technology waves are starting to arrive every 3-5 years, which means they are arriving faster than we can adapt to them. This puts all but the most plastic of us behind the technology curve: Frustrated and potentially economically left behind. As the disruptions arrive in tighter waves and disruption becomes the norm, what are we to do?
dreamstime_xs_32002024-2Friedman pauses in answer to this with his defining analogy. Imagining the disruptions as a flowing rapid, he says the way to control the boat is not to dip your paddle but instead, paddle hard and fast to meet the rapid's speed. While the analogy works quite well, Friedman doesn't have a lot of concrete advice for implementing it. Paddling hard and fast sounds great but how am I supposed to keep up with yearly releases of Windows, automobile operating system updates, mobile phones, cable boxes, and endless waves of Air BnBs and Ubers?
Friedman proposes a Zen acceptance of the changes, but acceptance is only the first step. Where do I go to set up my new mouse?
1696118467_01b2d2093eMy take: Do your best but our saving grace is coming in the wave of artificial intelligence. Right now human brains bridge the gap between what we want our machines to do, and the machine doing it.  In less than 10 years, you won't have to know where to find your printer settings. "Siri, set up the new printer" will set it up. Already, technology has done away with unintelligible "PC LOAD LETTER" errors--soon none of us will have set up or interface pain: Our machines will (truly) just work. So, I'll echo Friedman and encourage you to paddle fast for now, but soon you can lounge in your self-paddling boat.
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Patent Month in Review September

dreamstime_s_38780059 2By Stephen B. Schott
Abstract Idea Step in Patentable Subject Matter: Animated Lip Syncing Not Abstract, is Eligible
MCRO, Inc. v. Bandai Namco Games America, Inc., 2015-1080 (Fed. Cir. 2016)
"Here, the structure of the limited rules reflects a specific implementation not demonstrated as that which “any [animator] engaged in the search for [an automation process] would likely have utilized.” By incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process for automatically animating characters using particular information and techniques and does not preempt approaches that use rules of a different structure or different techniques. See Morse. When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3-D animation techniques. The claim uses the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Alice. Claim 1 of the ’576 patent, therefore, is not directed to an abstract idea."
‘576 patent claim 1 reads as follows.

1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence
obtaining a timed data file of phonemes having a plurality of sub-sequences
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters;
an applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

Declaratory Judgment: Even if you don’t identify a product, you might be sued for DJ
Asia Vital v. Asetek Danmark, 2015-1597 (Fed. Cir. 2016)
Asetek (1) rehashed the volatile relationship between the parties, saying that poor experiences with AVC [Asia Vital] in the past have “sown distrust in Asetek for AVC”; (2) stated that it “does not license its patents” generally and, more specifically, that it would not license them to AVC due to the previous conflicts between the parties; (3) accused AVC of “likely selling other infringing products in the United States”; (4) warned AVC that it “enforced its IP” and noted its “pending litigations against CoolIT and Cooler Master”— companies that AVC alleges sell products similar to the K7 and K9; and (5) emphasized that it has been allowed a patent in the European Union with claims similar to the asserted patents and also has similar claims pending in China…Moreover, AVC alleges that Asetek made threats to its customers regarding AVC’s infringement of the asserted patents.
The Federal Circuit concluded that “Such threats constitute affirmative actions by Asetek to impede and frustrate AVC’s attempts to meaningfully participate in the liquid cooling market and further support our conclusion that a substantial controversy existed between the parties.”
FTC Releases Patent Assertion Entity Report
Report
The FTC issued a report on patent assertion entities (pejoratively called patent trolls by some). The FTC differentiated between litigation assertion entities (those that sue) and portfolio assertion entities (those that look to license and develop technologies).  This may be a critical distinction if legislators take action against patent assertion entities.
USPTO Raising Patent Fees on January 1, 2017
Official Announcement
Patent fees will rise on January 1. Most fees will increase by 10%, with some fees for reexaminations rising by more than 20-30%.
Patent Complaint Must Identify Infringement with Element-by-Element Specificity
Lyda v. CBS Corp., 2015-1923 (Fed. Cir. 2016)
Amended Complaint must plausibly allege that Defendants exercise the requisite “direction or control” over the performance of the claim steps, such that performance of every step is attributable to Defendants. The Amended Complaint alleges that CBS Interactive controls certain independent contractors who in turn direct and control the “participation” of unnamed third persons to send votes on either their own or borrowed cell phones. Mr. Lyda does not set forth any factual allegations in support of his assertion that CBS Interactive directed or controlled the independent contractors….There are thus no allegations in the Amended Complaint that can form the basis of a reasonable inference that each claim step was performed by or should be attributed to Defendants. The Amended Complaint fails to plausibly plead sufficient facts to ground a joint infringement claim under this court’s Akamai decision and does not satisfy the Iqbal/Twombly pleading standard.
Supreme Court Denies All Patentable Subject Matter Petitions For Upcoming Term
Patently-O Story
 
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Patent Infringement: The letter you send could get you sued

By Stephen B. Schott
dreamstime_s_53597-2"They are infringing but I don't want to sue them: Let's just send them a letter." That's a common thought among patent owners but before sending a letter with accusations of infringement, it's important to understand that such a letter can itself be the basis for a lawsuit. And while you can send a letter and perhaps avoid getting sued, the threshold for being subject to a lawsuit, called a declaratory judgment action, is low.
The Declaratory Judgment Act provides that “[i]n a case of actual controversy within its jurisdiction, . . . any court of the United States, upon the filing of an appropriate pleading, may declare the rights and other legal relations of any interested party seeking such declaration.” 28 U.S.C. § 2201(a). The Supreme Court has helped disentangle this gobbley-gook statute by clarifying that one party may seek a declaratory action against another (say, a threatening letter writer) when "there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality.” Medimmune, Inc. v. Genetech, Inc. 549 U.S. 118, 127 (2007). What both the statute and the Supreme Court are driving at is that you can sue a threatening letter writer if the letter in question is actually threatening.
There's no definitive test elucidating the elements of a threatening letter that can get you dragged into court, but the Supreme Court and Federal Circuit have offered some guidance in the past.

[A] communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties.

Medimmune. The Federal Circuit gave another helpful piece of advice when it advised that an accuser may avoid a DJ action if it conducted pre-filing discussions under a confidentiality agreement, since discussions under such an agreement would be inadmissible. (3M Company v Avery Denison Corp.,Appeal No. 2011-1339 (Fed. Cir. 2012)).
The Federal Circuit recently served a reminder, however, of how low the threshold is for a threatening letter to give rise to a declaratory judgment action in Asia Vital v. Asetek Danmark.
In Asia Vital, the defendant patent owner Asetek's letter noted its ownership of a patent and some pending litigation with others but was careful to never mention any Asia Vital-accused product in its letter. Asetek argued that its omission of a specific product did not give rise to a threat of litigation required in a declaratory judgment action. The letter in relevant part read as follows.  

Please be advised that Asetek believes that AVC is likely selling other infringing products in the United States. We are sure you are aware that Asetek enforced its IP, as it has in pending litigations against CoolIT and Cooler Master. Asetek has also been allowed a patent in the European Union with claims similar to the US ’362 and ’764 patents, with priority in 2003, and also has similar claims pending in China.

In particular, the Federal Circuit noted that a totality of circumstances gave rise to Asia Vital's belief that Asetek intended to enforce its patent.

Asetek (1) rehashed the volatile relationship between the parties, saying that poor experiences with AVC [Asia Vital] in the past have “sown distrust in Asetek for AVC”; (2) stated that it “does not license its patents” generally and, more specifically, that it would not license them to AVC due to the previous conflicts between the parties; (3) accused AVC of “likely selling other infringing products in the United States”; (4) warned AVC that it “enforced its IP” and noted its “pending litigations against CoolIT and Cooler Master”— companies that AVC alleges sell products similar to the K7 and K9; and (5) emphasized that it has been allowed a patent in the European Union with claims similar to the asserted patents and also has similar claims pending in China...Moreover, AVC alleges that Asetek made threats to its customers regarding AVC’s infringement of the asserted patents.

The Federal Circuit concluded that "Such threats constitute affirmative actions by Asetek to impede and frustrate AVC’s attempts to meaningfully participate in the liquid cooling market and further support our conclusion that a substantial controversy existed between the parties."
dreamstime_s_42112515-2As advised previously, someone who wants to write a letter to a potential infringer without getting sued must walk on a tight rope to avoid being subject to a declaratory judgment. When formulating such a letter, consider these points:

Cease and Desist Letter Ingredients to Avoid a DJ Action
(1) Identify a patent but no product line, without accusation of infringement.
(2) Include a nondisclosure agreement, which would mean that any conduct after the nondisclosure agreement’s signing (and during its term), such as a specific allegation of infringement, would not be admissible to support a DJ action.
(3) Include a provision to specifically not sue for a period of time.

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Prop Head Reads: What is Life: How Chemistry Becomes Biology

By Stephen B. Schott
41xeCImG44L._SX317_BO1,204,203,200_What is Life: How Chemistry Becomes Biology
Addy Pross
My friend Manoj recently said, “In 5 billion years, an atom learned to talk.”
This observation begs the question: How did the atom learn to talk? How did non-life become life?
Pross sets out to answer this question and in so doing addresses many obstacles, the largest of which is Newton’s second law of thermodynamics. If you’re unfamiliar with the second law of thermodynamics, it states that "In any cyclic process, the entropy will either increase or remain the same." Some simplify it to state that ordered things tend towards chaotic over time and its inverse: Things that are chaotic will not tend towards order.
Take your kitchen. At some time, it is ordered: Every glass in the cupboard, every plate in its place. Over time, this ordered state (low entropy) will give way to more chaotic state (high entropy), where the plates have moved, cups shifted—and that’s even if your kids don’t move them around. Another way to think about the state of entropy in your kitchen is that there are only a few ways that it can be set up in an orderly way, while there are an infinite number of ways it can be in a chaotic state. Thus, there is a really small chance of a low entropy ordered state.
And yet living organisms are like the clean kitchen: Ordered and arrived at from an earth of 5 billion years ago that was a bundle of happy chaotic atoms. What would motivate, drive, or otherwise suddenly bring order to these atoms, swimming against the tide of the second law of thermodynamics, which is immutable in other contexts?
dreamstime_s_58460123Pross’s theory is that life is a natural consequence of the second law. Remember that the second law of thermodynamics permits low entropy ordered states, however improbable they may be. And what’s more, some of these low entropy ordered states may be highly persistent.
Pross discusses the example of certain chemical replicators. RNA, for example, is a nonliving complex chemical compound with an incredible property: It can create copies of itself. What’s more, in creating these copies, it also creates RNA variants of itself. Some of those RNA variants are better at replicating than the original, and thus may replicate faster and cause the original RNA copies to disappear over time, leaving the RNA variants as the stable form of RNA.
What does RNA, this nonliving chemical do? Replicate, vary, compete, and stabilize. It evolves.
Evolution into something highly replicable and stable may thus be a natural manifestation of chemistry. And from this it is Pross’s theory that one of the natural steps in chemistry is that nonliving chemicals can form replicable and stable chemicals that we call life.
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USPTO Adds Another Final Office Action Option: P3 Pilot Program

By Stephen B. Schott

www.masterplaques.comThe USPTO recently announced a 6 month pilot program to give applicants another option for responding to final office actions. Here is a discussion of current after final options.
The USPTO often releases its ideas for pilot programs, asking the public for comment, but in this case it announced that the program will open immediately and will close on January 12, 2017.
How to Participate in the P3 Program
The applicant must file:
  1. A Certification and Request for Consideration under the Post-Prosecution Pilot Program (P3) Form within two months of the mailing date of the final rejection and before filing a notice of appeal.
  2. A response of no more than 5 pages of arguments with no claim amendments and/or optionally, a proposed non-broadening amendment to one or more claim(s).
Requirements
  • Applicant cannot have previously filed a proper request to participate in the Pre-Appeal or the AFCP 2.0 programs in response to the same outstanding final rejection.
  • Once a P3 Request has been accepted, no additional response(s) under 37 CFR 1.116 will be entered, unless requested by the examiner.
  • It is also impermissible to request to participate in the Pre-Appeal program or request consideration under AFCP 2.0 once a P3 request has been accepted.
Process
The USPTO will contact the applicant to schedule a P3 conference, which is a conference of a panel of examiners (for example, three, although the number is not specified), one of whom is the examiner of record.  The initial contact from the USPTO will be to schedule a conference within ten calendar days of the initial contact.
The applicant will make an oral presentation to the panel of examiners, with such participation being limited to 20 minutes and following these rules:
  1. Any materials used by the applicant will be placed in the file.
  2. Applicant may present on appealable, but not petitionable, matters.
  3. Applicant may present arguments directed to the outstanding record or the patentability of the amended claim(s) as proposed.
After applicant’s presentation, the panel will inform the applicant of its decision, in writing.
The P3 process will be terminated if applicant files any of the following after the filing of the P3 Request but before a the panel decision:
  • A notice of appeal
  • A Request for Continued Examination (RCE)
  • An express abandonment under 37 CFR 1.138
  • A request for the declaration of interference, or
  • A petition requesting the institution of a derivation proceeding
Following a panel decision rejecting the applicant’s argument, the applicant will have the option of filing an RCE, an appeal, or continuation applications.

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2016 May Patent Law Update

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By Stephen B. Schott
PRIORITY DATES OF EARLIER APPLICATIONS
Immersion Corp. v. HTC Corp, Civil Action No. 12-259-RGA, (D.Del 2015)
This case is now on appeal to the Federal Circuit and could have wide ramifications. The statute at issue is 35 USC 120.

An application for patent ... in an application previously filed in the United States...shall have the same effect... as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application …

The debate between the parties focused on whether a continuation application filed on the issue date of a priority application was filed before the patenting of the priority application. This debate arises out of the USPTO’s interpretation of Section 120, in that the USPTO reads “before” as “not later than.” Judge Andrews found found that such an interpretation contradicts by the ordinary meaning of “before.”
One article states that there are 30,000 priority claims at stake.
ABSTRACT IDEAS IN SOFTWARE AS PATENTABLE
Enfish, LLC v. Microsoft Corp. 2015-1244 (Fed.Cir. 2016)
(This blog covered Enfish in detail here.)
The current Alice two-part test of patentable subject matter: (1) Determine whether the claim is directed to an abstract idea, and (2) If an abstract idea is present in the claim, 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.
From the case: "Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis."
In other words, is the claimed invention something that makes a computer work better?  If yes, not abstract. Or are computers merely being used to do another task?
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