Continuation Applications & Terminal Disclaimers: Infectious Estoppel

Patent owner estoppel is codified by Patent Trial & Appeal Board (PTAB) regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims in a later USPTO proceeding that are patentably indistinct to claims lost in a PTAB trial. This regulation has largely flown under the radar relative to the more well-known statutory estoppel provisions that applies to failed PTAB petitioners. Yet, as I pointed out previously, patent owners, and more particularly patent prosecutors, would be wise to take heed of this new threat.

Yet, understanding this new prosecution threat is only part of the battle. The best practice going forward is to structure portfolios to minimize potential PTAB estoppel damage. Continue Reading Standard Patent Prosecution Practices Invite Collateral PTAB Damage

Divergent Technical Teachings of a Primary Reference Matter in an Obviousness Analysis

A popular counter-argument to an obviousness attack is that the primary reference of the combination “teaches away” from the proposed combination. That is, if reference (A) is proposed to be modified by the teachings of reference (B) in some manner, and reference (A) criticizes, discredits or discourages that manner of combination, then reference (A) is said to “teach away” from the combination — thus, precluding an obviousness determination on that proposed combination.

In practice however, it is a rare reference that includes a technical explanation that is so strongly worded to satisfy the teaching away standard. Yet, as the Federal Circuit made clear this week, less pronounced evidence of divergent technical teachings cannot be disregarded by the Patent Trial & Appeal Board (PTAB). Continue Reading CAFC Teaches Away on Teaching Away

Patentee Estoppel Can Shut Down Related Prosecution

Patent prosecutors might consider PTAB estoppel a pure post-grant concern. That is, a litigation issue restricted to district courts after a failed PTAB challenge, or an issue raised in the context of a second-bite at the PTAB apple. But, PTAB estoppel can effect both failed petitioners and unsuccessful patent owners. Patent owner estoppel, often overlooked, is only now beginning to impact patent prosecution.

Prosecutors beware. Continue Reading The PTAB Estoppel Keeping Patent Prosecutors Awake at Night

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

Broadest Reasonable Does not Mean Broadest Possible!

The USPTO applies a broadest reasonable claim interpretation (BRI) to patents and patent applications. The abbreviation “BRI” is often used to reference the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111)

Unfortunately, a complete BRI analysis is often mistaken by overemphasis of the “BRI” mantra. That is to say, the proper test is not simply a “broadest reasonable interpretation” of claims in a linguistic sense. Rather, a proper  broadest reasonable interpretation of the claims is one that is consistent with the specification of the subject application/patent. While it is true that limitations from a patent specification may not be imported to the claims, the USPTO often times confuses this prohibition with the required contextual consideration of the specification.

In 2010, the CAFC strongly cautioned the USPTO on reading claims independent of a patent specification during patent reexamination in In re Suitco Surface (CAFC 2010). Last week, the agency was reversed again for failing to conform the “reasonableness” determination with the scope of the patent specification. Continue Reading Patent Prosecutor’s Toolbox: The Better Half of BRI

What Exactly is the “Thrust of the Rejection?”

Every so often a decision comes out of the USPTO’s Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. For example, back in June, the Federal Circuit analyzed the degree of corroboration necessary for an In re Katz declaration.  Earlier this week, the Court reviewed an appeal from an inter partes reexamination in Honeywell Intl. Inc. v. Mexichem Amanco Holding S.A. de C.V. et al. to determine whether or not the Board’s reliance on a reference different from those of the patent examiners underlying rejections constituted a “new rejection.”  The Court’s discussion, especially that found in the dissent, may help shed light on this somewhat amorphous standard.

While a new rejection analysis may appear to be limited in relevance to patent prosecution and appeals before the PTAB, this same analysis can be helpful in navigating Administrative Procedure Act (APA) compliance in AIA trial proceedings.
First, the “new rejection” framework stems from notice and due process concepts of the APA. As discussed previously in the AIA trial context, 5 U.S.C. § 554(b)(3) prevents the Patent Trial & Appeal Board (PTAB) from introducing new claim interpretation theories without notice, or opportunity to respond.  In patent prosecution and appeals before the PTAB, this procedural concern often manifests itself as a change in a rejection that so changes the “thrust” of the earlier positions that it would violate due process to close prosecution or enter an appeal decision absent further opportunity for the Applicant/Appellant to respond on the merits.

Turning back to Honeywell, the Federal Circuit vacated and remanded the PTAB’s decision rejecting numerous claims in two merged inter partes reexaminations. Part of the reason for the majority’s remand was that the PTAB relied on a new ground of rejection.  Specifically, the PTAB rejected Honeywell’s evidence of unexpected results in light of the “”Omure reference, on the grounds that this reference demonstrated the Patentee had not established a nexus to its secondary indicia evidence.  As noted by the majority, Omure—while briefed by the parties—was not explicitly relied upon by the Examiner. Thus, the Court concluded that the PTAB’s reliance on Omure constituted a new ground of rejection in violation of the APA. (not a “new ground” per se, more a “new evidentiary” basis for denying the patentee’s argument)

Judge Wallach dissented from this part of the opinion, concluding that the PTAB did not issue or rely on a new ground of rejection.  The dissent (here) noted that:

When considering whether the [PTAB] issued a new ground of rejection, the ultimate criterion of whether a rejection is considered new in a decision by the [PTAB] is whether applicants have had fair opportunity to react to the thrust of the rejection.

Which begs the question: What exactly is the “thrust” of a rejection?

Judge Wallach explains that the PTAB is not limited to reciting and agreeing with the Examiner’s rejection verbatim, and may further explain the rejection and respond to parties’ arguments.  Dissent Op. at 2.  On the other hand, if the PTAB finds facts not found by the examiner regarding the differences between the prior art and the claimed invention, and these facts form the basis for the PTAB’s rejection, then the PTAB improperly enters a new ground of rejection.  Id.

Applying this reasoning to the facts of Honeywell, Judge Wallach found the majority’s reliance on statements by the PTAB that they “disagreed” with the Examiner were not sufficient to rise to the level of a new rejection.  Rather, having concluded that the record supported a finding of prima facie obviousness, the PTAB next considered evidence of secondary considerations.  The Board concluded there was no nexus, without relying on Omure.  Thus, according to Judge Wallach, the “PTAB’s analysis of secondary considerations does not include an improper new ground of rejection.”  That is, although the PTAB discussed Omure in other portions of its analysis in rejecting Honeywell’s secondary considerations argument, it was not the principal evidence upon which the PTAB’s rejection was based, and thus should not be considered a new ground of rejection.  Rather, the PTAB was simply providing a more thorough explanation of the Examiner’s conclusion, and limiting the PTAB to “verbatim repetition of the examiner’s office actions…would ill-serve the [PTAB’s] purpose as a reviewing body.”

The takeaway here is that the “thrust” of the rejection balances the interests of notice and due process with the administrative flexibility necessary to explain decisions differently.  Where the “thrust” may be argued to have shifted will depend upon whether or not the difference in explanation is supplementary in nature, or altogether new, principal evidence. As demonstrated by Honeywell reasonable minds may differ in this analysis.

Are You Properly Corroborating Your In Re Katz Declarations?

Every so often a decision comes out of the USPTO’s Patent Trial & Appeal Board (PTAB) or the Federal Circuit that has immediate value for patent prosecutors. Last week, in EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.,the Federal Circuit considered the degree of corroboration necessary to disqualify a prior art reference as an inventor’s own work.  In EmeraChem the Cout made clear that such corroboration may be within the inventor declaration itself, but, it must be more than a mere naked assertion of inventorship.

In EmeraChem (here) petitioner Volkswagen sought Inter Partes Review (IPR) of Patent No. 5,599,758 (‘758 Patent).  One of the references cited in the IPR was U.S. Patent No. 5,451,558 (‘558 reference). The ’558 reference lists four co-inventors, two of which are the sole co-inventors listed on the challenged ‘758 Patent assigned to EmeraChem.  The ‘558 reference qualified as prior art under pre-AIA 102(e) since the “inventive entity” was different than the ‘758 patent.

In an attempt to disqualify the ‘558 reference as prior art, EmeraChem filed an inventor declaration signed by the two inventors of their ‘758 patent.  The Declaration stated that the cited parts of the ‘558 reference were solely invented by them and not the other two listed inventors.  No statements by the two remaining inventors listed on the ‘558 reference were provided by EmeraChem or Volkswagen.
The PTAB rejected the inventor declaration submitted by EmeraChem was not sufficient to prove that the ‘558 reference was not prior art under pre-AIA 102(e).  The Board noted that EmeraChem did not call the other inventors of the ‘558 reference as witnesses and did not offer “any contemporaneous documentary evidence in support of the Campbell Declaration.”  (pg. 4 of the opinion).

The Federal Circuit affirmed the Board’s decision rejecting the inventor’s declaration.  The CAFC noted that the declaration itself “amount[ed] to a naked assertion” and that the declaration did not provide “any context, explanation, or evidence to lend credence to the inventor’s bare assertion.”  (pg 6 of the opinion). The CAFC relied upon case law that highlighted the concern for corroborating evidence when an interested party is the one making the declaration.  In this case, the inventors of the challenged patent were clearly “interested parties”. (pg 7 of the opinion).

But what about the sections of the Manual of Patent Examining Procedure (MPEP) that seem to suggest an unequivocal statement by inventors is enough?

The CAFC distinguished EmeraChem’s reliance on MPEP §§715.01(a), 715.01(c)(I), and 2136.05 (and characterizations of case law cited therein).

The Court distinguished In re DeBaun, 687 F.2d 459 (C.C.P.A. 1982), highlighting the fact that DeBaun attached a drawing to his declaration that corroborated the assertions made in the declaration.  Therefore, the Court held that DeBaun does not “stand for the proposition that a declaration alone is always sufficient to support an inventor’s claim to inventorship.”  (pg 8 of the opinion). Further, as to In re Katz, the Court focused on the significance of the fact that the two co-authors on Katz’s published article were explained in the declaration as mere teaching assistants.  In Katz, the declaration was sufficient to rebut “the board’s inference that [the co-author’s] names were on the article because they were co-inventors.”  (pg 9 of the opinion).  The CAFC noted that in both Debaun and Katz, something more than a naked assertion by the inventor was needed.

As this case makes clear, the MPEP does not have the force and effect of the law. As pre-AIA applications will be pending for many years to come, prosecutors would be wise to bolster their In re Katz declarations with more than just mere conclusions of inventorship.  Ideally, the inventors would explain the contributions of the co-authors in a manner that makes clear that their contributions do not rise to the level of inventorship.

Patent Examiners Leverage AIA Trial Data

Back in April, the USPTO launched the Post Grant Outcomes Pilot, which focused on pending patent applications that are related to patents undergoing an America Invents Act (AIA) trial proceeding before the Patent Trial and Appeal Board (PTAB). The agency now reports that the Post Grant Outcomes Pilot has succeeded in making examiners aware of trials related to applications they are examining, and in turn has facilitated the timely and effective examination of applications.

The idea behind the program is that AIA trial proceedings contain prior art and arguments that might be highly relevant to the patentability determination of related applications currently under examination. This pilot was intended to help examiners harness the art presented during AIA trials to enhance examination of a related application, so they could reach more expeditious decisions on patentability.
During the pilot, the USPTO notified examiners via email of assigned applications relating to an AIA trial. The pilot program streamlined access to the contents of the trial by pinpointing for examiners the most relevant documents. The USPTO then surveyed the examiners to gain detailed feedback.

The survey results (here) showed that examiners found the PTAB information—especially the initial petition (including the prior art citations), the PTAB’s institution decision, and any expert declarations—to be highly useful.  The PTO also found that 46% of the examiners referred to at least one reference cited in the AIA trial petition during the examination of their own case, either by citing it in a rejection or as pertinent prior art. If an examiner did not use or cite the prior art from the trial, it was most likely because the claims were different between the “parent” and the “child” case, the examiner disagreed with the AIA petitioner’s analysis of the prior art and/or claims, or the examiner was able to find better art.

To further facilitate the process, in August 2016 the USPTO deployed an upgrade to examiners’ desktop application viewers which allows automated access to the contents of related AIA trials, including access to the entire file, and any cited prior art.  Now that the results of the pilot are available, the  next objective is to identify examination best practices or deficiencies that can be addressed through additional examiner training. 

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.