Informative Decision Led to Confusion

Last month the Patent Trial & Appeal Board (PTAB) designated Ex Parte Jung 2016-008290, “informative.” An informative decision is one that expresses the “Board’s general consensus on recurring issues and guidance to examiners, appellants, patent owners, or petitioners in areas where parties routinely misapply the law.”

In Jung, the Board construed the claim terminology “at least one of A and B” to be conjunctive. That is, this language was determined to be properly construed (following the Federal Circuit precedent of SuperGuide Corp. v. DirecTV Enters., Inc.), as “at least one of A and at least one of B.”  However, the Board also noted that a patent’s claims, specification, or prosecution history may necessitate a broader meaning. Thus, in some scenarios, “at least one of A and B” is properly construed in the disjunctive as “at least one of A or B.”

Since being designated informative, however, Jung seems to have created confusion on whether or not the PTAB was making new law. Continue Reading PTAB De-Designates Ex Parte Jung as Informative Decision

Pro-Patent Owner Options

The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead to narrower claim constructions, and thus, more patents being upheld by the agency. But, as I pointed out previously, in practice, BRI is rarely different from a Phillips construction. In fact, utilizing the same standard at the PTAB as in the courts might only make matters worse for Patent Owners from a monetization perspective.

Impact of the proposed claim construction change aside, the speed at which the Director has acted speaks to his keen interest in improving the PTAB playing field for Patent Owners. With the Director expected to issue further proposals to aid Patent Owners, below are some likely candidates. Continue Reading How Might the Director Improve the PTAB for Patent Owners?

Existing BRI Litigation Cover Will Be Blown

While the Patent Trial & Appeal Board’s (PTAB) plan to switch from the broadest reasonable interpretation (BRI) toPhillips claim construction may not be the magic bullet that Patent Owner’s expect, the switch will pose strategic problems for petitioners. Even though the PTAB rarely discerns a difference between a BRI and Phillips constructions, the courts think very differently than the expert agency. For this reason, Petitioners often cited to the different claim construction standards to explain away the application of a broader read at the PTAB as compared to that urged in the court. This enabled petitioners to take positions on claim breadth in PTAB petitions that would otherwise undermine a non-infringement position if advanced under Phillips.

Going forward at the PTAB under Phillips, petitioners will be forced to commit to a one-size-fits-all claim construction. Continue Reading A Phillips Construction Will Complicate PTAB Petition Drafting

Change in PTAB Claim Construction May Make Matters Worse for Patent Owners

As I pointed out back in March, the Patent Trial & Appeal Board’s (PTAB) switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings was telegraphed in advance. The rule package, released today (here), is limited to AIA trial proceedings (IPR, PGR, CBM). Left untouched are patent interference, reexamination, reissue, supplemental examination and derivation proceedings. Upon final rule issuance (late summer/fall) AIA trial proceedings will apply a district court or “Phillips” claim construction. Given the current proposal it appears that this change will apply to all pending proceedings.

Patent Owners were quick to applaud the proposed claim construction change as a huge win……it’s not. Continue Reading Patent Owners May Rue the Day They Pushed the PTAB to Phillips

New Director’s Interest in Predictability To Drive PTAB Change

As pointed out yesterday over at IPWatchdog, the USPTO Solicitor has withdrawn as Intervenor in the Federal Circuit appeal between Telebrands Corporation and Tinnus Enterprises (stemming from PGR2015-00018, challenging a patent pertaining to the well-known Bunch-o-Balloons® product on indefiniteness grounds). The USPTO intervened in the earlier appeal to defend the indefiniteness standard applied in the PGR. This is because the applied standard was stricter than that enunciated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The application of a different, stricter standard caught some by surprise that had not realized that the Federal Circuit endorsed that very standard for agency proceedings in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

I pointed out at the time of this appeal that the Packard indefiniteness standard is grounded in ex parte examination policies and practices.  As such, it was unclear whether the Court’s holding in Packard could be properly extended to AIA trial proceedings. Yet, the Solicitor’s decision to withdraw as Intervenor in the Tinnus dispute is not a sign that the agency lacks faith in its brief. Rather, the change is indicative of a new direction for PTAB trial proceedings. Continue Reading PTAB Likely to Adopt a Philips Construction for AIA Trials in 2018

Prosecutor’s Tool Box 2017

Patent prosecutors navigate complex USPTO rules and seemingly esoteric examinational requirements to procure patent rights. In doing so, it is easy to lose sight of the fact that the Manual of Patent Examining Procedure (MPEP) does not have the full force and effect of law. Nevertheless, patent examiners (rarely trained lawyers) adhere to their interpretation of the Manual requirements. To budge examiners off of entrenched, legal positions, savvy prosecutors will keep a trained eye on the Federal Circuit for help.

2017 provided several decisions of immediate value to patent prosecutors. Continue Reading 2017 CAFC Guidance for Patent Prosecutors

User Activities vs. User-Driven, Hardware Function

Every so often a decision comes out of the Federal Circuit that has immediate value for patent prosecutors. Yesterday’s decision in Mastermine Software, Inc. v. Microsoft Corp., is one such case.

In Mastermine, the Court considered the extent to which user-initiated methodology of a Customer Relations Management (CRM) system may be recited in system claims. The district court found certain claims of the patents-in-suit (7,945,850 & 8,429,518), indefinite for improperly claiming two different subject-matter classes citing IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377(here).  The Federal Circuit reversed.

In its reversal, the Federal Circuit provided helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class. Continue Reading Patent Prosecutor’s Toolbox: Claiming User Functionality

Common USPTO Debate Clarified by New Precedential Decision Ex parte Schulhauser

A common debate at the PTO in recent years at both the examination and Board level has been the appropriate treatment of a claimed condition precedent.  That is, if a claim recites that certain functionality only occurs on certain conditions, does that alternate functionality constrain the broadest reasonable scope of the claim?  

In Ex parte Schulhauser (here) the Board makes clear that the answer to this question may depend on whether or not the claim is presented in a method or apparatus claim format.

In the case of a method claim, the failure to meet a condition precedent means that corresponding conditional steps recited in the claim need not be performed.  So, the broadest reasonable interpretation of such a claim cannot include steps that are not required in all scenarios.  On the other hand, where the same claimed functionality is recited as part of a computer implemented apparatus claim, the Board explains:

The broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur. This interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed.

While the computer implemented apparatus in this instance was presented as a means-plus-function feature (necessarily requiring an algorithm for structural support) structure presented as “configured to” or “programmed to” implement such conditional functionality would presumably enjoy the same analysis.  

This decision may prove especially helpful to patent prosecutors as it is not uncommon for examiners to confuse the above method/apparatus distinctions.

Justice Dept. Brief Highlights Flaws of Cuozzo BRI Dispute

This past Wednesday the U.S. Department of Justice filed its Respondent Brief in Cuozzo Speed v. Lee. (here)   Amicus filings in support of the Respondent are due to be filed by March 30th.

In its brief, the government emphasizes that limited amendment options have long been a staple of USPTO post grant proceedings such as patent interference and patent reexamination, thus, BRI is just as applicable in Inter Partes Review (IPR) as it is in these other proceedings.  Also pointed out is that IPR includes many mechanisms that are different from litigation (hence it is not a surrogate) — not the least of which are the ability to amend claims and a lower evidentiary standard — and that, in any event, the PTO was given rule making authority for such interstitial matters as claim construction used during IPR.  

On the topic of the appeal bar, the government focuses on matters of statutory construction.

It would seem to me that the second issue (appeal bar) is the more likely candidate for modification by the Court.

Failure to Focus Means Plus Function Debate in Patent Reexamination

Last week in In re Avid Identification Systems Inc., the CAFC affirmed the USPTO’s rejection of certain claims of U.S. Patent 5,499,017 in ex parte patent reexamination. Of particular note in the appeal was the proper construction of  “means for storing.” The Patentee argued that the “means for storing” language invoked 35 U.S.C. § 112 6th paragraph (now known as 35 U.S.C. § 112(f)), and as such, required particular structure of the specification. The USPTO took the position that, since this claim construction position was not seasonably raised in the briefing to the PTAB, nor was the required claim mapping presented in the opening brief as required by 37 C.F.R. § 41.37(c)(1)(v), that the argument was waived for purposes of appeal.

In a stinging dissent, Judge Clevenger found the PTAB’s practice to be “random” as it relates to the proper examination of means-plus-function (MPF) claims. He was particularly disappointed that the PTO chose to “hide behind” 37 C.F.R. § 41.37(c)(1)(v), labeling such behavior a public detriment. (decision here)

The fact pattern in Avid is troubling on many levels. Not only is such a practice a public detriment as to predictability, but interpreting MPF claims to have a broader scope is arguably an ultra vires action in the context of patent reexamination. And, above all else, a simple rule change would avoid most such issues from reaching the appellate level.

As explained by Judge Clevenger,

The term “a means for permanently storing data” is undeniably a means-plus-function limitation. The question in this case is whether the Patent Office (“PTO”) may use an unaltered broadest reasonable interpretation standard in examining means-plus-function claims, or if these claims must always be interpreted in accordance with 35 U.S.C. § 112, ¶ 6. The answer is easy. 35 U.S.C. § 112, our en banc decision In re Donaldson, the Manual of Patent Examining Procedure (“MPEP”), and past PTO practice are all in agreement: under § 112, ¶ 6, “the broadest reasonable interpretation that an examiner may give means-plus-function language is that statutorily mandated in paragraph six.” In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1189) (en banc).

(emphasis added)

Judge Clevenger highlighted the impact on the public in adopting a broader read of such a claim, explaining:

In this case, the Examiner allowed claim 13 without explicitly interpreting the claim under § 112, ¶ 6. Meanwhile, a district court found that there was no support in the specification for the limitation “means for decoding a password…” in the same claim. Allflex USA Inc., v. AVID Identification Systems, Inc., Case No. 5:06-cv-1109, ECF No. 469 at 15 (C.D.Ca. Feb. 17, 2010) (Claim Construction Order). Had the Examiner properly considered the requirement that the specification disclose structure corresponding to the “means” claimed, this inconsistent result could have been avoided.

The danger in ignoring the required construction is clear. That is to say, the public would undoubtedly follow the guidance of Donaldson in interpreting such a text book MPF element, perhaps believing themselves free of liability based on such an analysis. Thereafter, the scope of the claim may be treated in patent reexamination quite differently; lending weight to a Patentee assertion of a broader scope. Yet, broadening of an originally issued claim is precluded by statute in patent reexamination. 35 U.S.C. § 305. I am not sure the PTO can ignore such a fundamental issue of claim construction without running afoul of 305.

In this case it may be that the Patentee deliberately ignored the requirement of Rule 41.37 during appeal, preferring a broader interpretation for infringement purposes. Once losing at the PTAB, the interpretation was switched to the narrower read at the time of rehearing in an attempt to save the patent. It is entirely understandable that the PTO would choose to deny this argument so late in the game. The fault lies not with the PTAB, but in allowing such claims to be presented in a request for patent reexamination in the first instance without a counterpart rule akin to 41.37. This oversight was corrected for the new post grant trial proceedings of the AIA, which require such a mapping in the petition. In this case, the reexamination requester provided no such mapping or explanation as to the “means for” language. As a result, the issue was raised for the first time in the request for rehearing.

While means plus function claiming has fallen in popularity in recent years, many older patents are now the subject to patent reexamination. Also, it appears the USPTO is attempting to encourage means-plus-function claim drafting for software related patents. This problem is ongoing and not at all insignificant.

As I have suggested previously, a simple rule requiring the same claim mapping from patent reexamination requests as required on appeal (and now, the new post grant petitions) would focus the issue at the outset of the process. The majority in Avid noted that the presumption triggered by the “means for” language is only triggered when raised by the Patentee, yet, it is also a presumption relied upon by the public.