By Scott A. McKeown
| November 21, 2016

After Final Practice (P3) - November 2016


Some patent prosecution CLE is available this week.

This Tuesday (1-3PM EST), Strafford Publications presents a special encore presentation of: After-Final Practice: Navigating Expanding PTO Options to Compact Patent Prosecution.  The webinar program will cover efficient patent prosecution practices in view of the expanding after-final landscape at the USPTO. Topics include Post-Prosecution Pilot Program (P3), After-Final Consideration Pilot 2.0, Pre-Appeal Conference Requests & Appeal. The webinar will provide updates on P3, closed art units, and perceived efficacy to date. Strategies and tips for applying each program, as well as examiner motivations for accepting one as compared to another will be discusses. A Q&A session will follow the program.

 

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By Scott A. McKeown
| November 17, 2016

Court Questions Reasoning in Achates Publishing


Today, in Click-To-Call Techs. v. Oracle Corp., (here) the Federal Circuit reconsidered its earlier decision (GVR Order) in light of the 35 U.S.C. § 314(d) discussion in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016).  In its earlier Click-to-Call decision, the Court found that issues arising under 35 U.S.C. § 315(b) (i.e,, one year time bar) could not be appealed, pursuant to 314(d).  In today's non-precedential decision, the Court found that it could not reverse its earlier ruling since it was bound by its own precedent to the contrary.

However, the viability of the precedent was called into serious question.

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By Scott A. McKeown
| November 10, 2016

Dispute Over AIA Trial Institution Practices ...Be Careful What You Wish For


Since the advent of AIA trials, opponents of the system have attempted to unravel them.  First, BRI was challenged, then 7th amendment constitutionality, and a host of other administrative issues; all have failed to date. Yet, a few challenges to fundamental AIA trial practices persist. Earlier this week, the Federal Circuit denied en banc review in one such remaining challenge, in SAS Institute Inc., v. ComplemenSoft LLC.  

As previously discussedSAS challenged all sixteen claims of ComplementSoft’s patent 7,110,936 in inter partes review (IPR). Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution. On appeal to the CAFC, SAS argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a); the Federal Circuit disagreed (Judge Newman dissenting).

If it were agreed that the statute "at least one claim" is in conflict with the rule (perhaps on eventual appeal to the SCOTUS) is this really something petitioners or patentees should want?  

Probably not.
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By Scott A. McKeown
| November 2, 2016

New 101 Guidance Addresses Recent CAFC Decisions


Today, the USPTO issued a memorandum entitled "Recent Subject Matter Eligibility Decisions." (here).  The memo  provides a discussion of two recent CAFC decisions identifying eligible subject matter, namely McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).

With respect to McRO, the memo emphasizes the value of the specification in interpreting claims under 101, specifically where a problem is identified in the art, and the solution presented in the claims. As to Bascom, the memo emphasizes that conventional elements may nonetheless be arranged in unconventional manners (again emphasizing the value of the specification in explaining such).

The Office promises more updates in the future, including addressing yesterday's decision in  Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016), which found distributed computing to be an unconventional technological solution. 

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By Scott A. McKeown
| October 28, 2016

USPTO Revisits 2011 Rule Proposal (Rules 56(a) &555(a))

In the wake of the Federal Circuit's 2011 decision in Therasense Inc. v. Becton Dickinson and Co., the USPTO quickly moved to revise the Duty of Disclosure to align with the Court's new, but-for materiality standard—perhaps too quickly.  The 2011 proposal sought to update the relevant rules (1.56 and 1.555) by explicitly adding a short hand, reference to the Therasense case itself. The earlier proposal also intertwined the the "egregious conduct" exception of the Therasense holding (Duty of Candor & Good Faith) with the Duty of Disclosure.

At the time, I questioned whether it was unnecessarily confusing to mix together concepts of conduct and disclosure given the agency's historical segregation of such. Others found it odd that the rule would reference the name of the case as opposed to spelling out the "but-for" materiality standard of its holding.

Today, the USPTO has revisited this earlier proposal, and issued a new proposal.  

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