Florida Patent Lawyer Blog

As a Florida Patent Attorney with a sizable docket of patent cases, I constantly worry about the effect my amendments have on the enforceability of the resulting patents. As you know, the doctrine of patent prosecution history estoppel limits the scope of a patentee's claims due to things that happened during patent prosecution. Last week, the Court of Appeals for the Federal Circuit issued an illuminating decision in Funai v. Daewoo on the doctrine of prosecution history estoppel and when it is applied.

At issue in this case was whether the patentee, Funai, lost its range of equivalents with regard to a claim term when Funai cancelled the relevant claim after it was rejected by the Patent Examiner. Does cancelling a claim after a rejection invoke prosecution history estoppel and lead to a loss of a range of equivalents?

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) is the landmark case we consider when discussing prosecution history estoppel. Festo tells us that no estoppel exists with respect to a claim term if this aspect is unrelated to or "merely tangential" to the prosecution. In Festo, 535 U.S. at 741, the Court stated: "There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. . . . [T]he rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; . . . . In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence."

In the Funai case, the Federal Circuit reviewed the patentee's amendment and decided the following:
"It is apparent that the nature of the [claim term at issue] was not a factor in the allowance of claim 4, for this aspect was not at issue during prosecution. This limitation is in the category that the Court called "merely tangential" to the prosecution, as discussed in Festo. Thus the district court correctly held that the cancellation of claims 1 and 2 did not surrender access to equivalency with respect to the [claim term at issue]."

The moral of the story here is that prosecution history estoppel only applies to aspects of a claim that are directly related to prosecution. Aspects that are merely tangential or secondary to a main issue are not subject to prosecution history estoppel and do not lose their range of equivalents due to an amendment. As a practice tip, if you see this issue come up during patent prosecution, I would explicitly state in the Remarks section of an amendment whether you consider certain aspects of the claim tangential and not at at issue.

Once again the Board of Patent Appeals and Interferences (BPAI) reversed a rejection by an overzealous patent examiner who failed to adequately connect the proverbial dots between prior patents in an attempt to disqualify a patent application for approval ( Ex parte Kobayashi). As a Miami-based Patent Lawyer I constantly keep abreast of new holdings handed down by the BPAI in order to deliver up-to-the-minute defenses for my clients' patent applications.

The patent applicant in this month's Kobayashi decision invented a system for recording the progress of video game players as they achieved certain milestones in online (networked) video games. The inventor describes a system of capturing the players' demographic information for use in supplying targeted advertisements to the gamers when they return to playing a saved online game already in progress from a previous session. For instance, a gamer might achieve level five of a certain game, and then decide to pause and save the session information online. The invention would supply targeted advertisements to the gamer upon his or her return to the game - possibly based on the player's physical location, age or sex demographics, etc.

As is often the case, the patent examiner attempted to produce evidence that this invention had already been disclosed in prior patents. Here, the examiner pointed to a prior patent that describes saving the progress of a game on a local hardware storage unit (Yoshida, JP 2000-005439, Jan 11, 2000). Next the examiner produced a second invention that allows a user to actively participate in television game shows and rewards the user by printing out coupons or other "rewards" on a hardware device located in the viewer's home - there is certainly nothing "targeted" mentioned in the description of this invention either (Von Kohorn, US 6,443,840 B2, Sep 3, 2002). In essence, the examiner tried to argue that because one inventor came up with a method of saving the progress of a video game on his computer, and another inventor came up with a method of allowing a television viewer to print out coupons or other untargeted materials at their home, this obviously equated to the applicant's invention described above. This is a classic case of "hindsight reconstruction" in which the examiner attempts to connect very dissimilar references in order to bolster the conclusion that it would have been obvious to anyone practicing in the industry that this would be readily discernable based on the prior patents.

Sometimes patent examiners make ridiculous stretches of the imagination in an attempt to discredit a new invention as having already been anticipated. Just because algae has chlorophyll, and sea kelp has "bulbs" that look like acorns, doesn't mean that it's obvious that a land-based oak tree would have evolved with both characteristics and produced acorns. Of course in hindsight it might be, but hindsight is always 20-20, and this is a classic case where hindsight fails to persuade that something was "obvious".

Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner's rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others.

At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an "interconnected network". The applicant argued that the terms "interconnect network" and "wireless network" are not synonymous as pertains to a prior patent issued to Elliott (US 6,859,135 B1) in 2005. Unfortunately, the applicant failed to clearly make this distinction in the claims.

In the analysis section of the decision, the BPAI indicated comments made by the Patent Examiner, such as, "Appellant (applicant) seems to suggest that Elliott's network is a wireless network and not an interconnected network because it is not a combination of wired and wireless network," and that," the issue of the interconnected network being wireless or wired is not at all claimed." Oops! The BPAI further points out that the applicant's primary claim "merely requires that data is received from an 'interconnected network' which does not preclude a cellular network."

The lesson here is that the BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004), and that a BPAI analysis will not read limitations into the claims from the specification, In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because the primary claim made in Ex parte Tosey failed to recite a distinction between "interconnected network" and "wireless network", the BPAI was compelled to find that there was no such distinction and therefore rejected the claim. It also didn't help that the patent application contained some typographical errors - a general indication of overall sloppiness in preparing the application.

As I have previously discussed in this blog, when prosecuting a patent application in a crowded field of competitors (such as the wireless networking industry) it is absolutely crucial to point out - in the claims - the limitations and distinctions of your invention as compared to those that are already patented. A twisted version of an old adage reads "Ready, Fire, Aim!", which is a very poor strategy for successful patent prosecution.

Using strong words, today the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's 35 U.S.C. §102(e) anticipation rejection of a Tokyo Electron invention, claiming that the Appellant's attorney's arguments alone held no weight. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the subtle drama of this decision and also learned something.

At issue in Ex parte Willis , was a claim to a laboratory measuring device that measured spectral data. In response to the Patent Examiner's 35 U.S.C. §102(e) anticipation rejection, the Appellant's attorney, from the firm of Oblon Spivak, provided one particular argument, among many, about what a claim term meant to one of ordinary skill in the art. The attorney's particular argument did not include any references to the specification, the cited references, or any textbooks or authoritative works. Also, no §1.132 declaration was provided. This is what the BPAI had to say about this particular argument:

The Appellant's argument is not well taken because it is merely unsupported attorney argument, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

Ouch! to the layperson, this may seem lightly worded - but to an avid reader of BPAI decisions, this is considered a smack down. Now for the educational moment:

When making statements about a person of ordinary skill in the art (POSITA), it helps to refer to an authority about what is considered known to a POSITA. You can refer to your own specification, the cited references, other patents in the same area from the same time, textbooks, science/engineering treatises, etc. Also, you can use a §1.132 declaration from your inventor or someone else in the field, IF their credentials are impressive enough to be considered a POSITA. Karen Hazzah has a great blog entry about the use of §1.132 declarations. And the best part of using these authorities, is that the Examiner must rebut this evidence. I wrote a blog entry recently about the Examiner's duty to respond to the evidence you've provided. He can't just dismiss it, he must consider it, rebut it with evidence of his own and provide substantive reasoning as to why your evidence does not overcome the rejection.

In one of its last decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §101 non-statutory subject matter rejection of a key Invatron Systems invention. As a Miami Patent Attorney, this case was interesting because I haven't seen any BPAI decisions regarding 35 U.S.C. §101, much less a decision that invokes Bilski, in a while.

At issue was an Invatron Systems claim pertaining to a scale for weighing items, wherein the scale included a computer that performed a series of steps, such as providing a coupon. The Examiner found the claims recite a method of purely mental steps, not tied to another statutory class. The Appellants contended the claimed method recites steps including providing a coupon to the customer and that these steps cannot be performed purely mentally since there is no way to provide a coupon without the coupon being physically inputted into the weigh station display.

The court explained the Bilski machine-or-transformation test as follows: "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The court explained that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility" and "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." In re Bilski, 545 F.3d 17 943 (Fed. Cir. 2008) (en banc), petition for cert. granted, 77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964).

The BPAI agreed with the Appellants. See the BPAI decision here. The BPAI stated claim 17 recited a method for providing information to a weigh station, where customer specific information is provided to the weigh station display. That is, claim 17 recited a manner of entering data to a weigh station and displaying the inputted information. As such, claim 17 required a specific structure that captures, stores, and displays specific data. This specific structure ties the recited method to a particular machine, in that the method recites how to operate a weigh station with a weigh station display. Since there is a particular machine required, claim 17 satisfies the machine prong of the machine-or-transformation test and the transformation prong need not be evaluated. As a result, the BPAI reversed the Examiner's 35 U.S.C. §101 non-statutory subject matter rejection under Bilski.

The lesson learned in this case is that although a claim may not explicitly and positively recite a structural element, the claim may require a specific structure to perform the steps of the claim. If that structure satisfies the machine prong of the machine-or-transformation test, an Examiner's 35 U.S.C. §101 non-statutory subject matter rejection may be reversed under Bilski.

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's 35 U.S.C. sec. 112, first paragraph, rejection of a key Sony Corp. invention. As a Patent Attorney practicing in Miami, Florida, this case was interesting because it illustrated how a 35 U.S.C. sec. 112, first paragraph, rejection can be upheld on appeal.

Sony's invention was a heat-sink apparatus for computer or camera microprocessors. At issue was the disclosure in the specification of a single glass with a substrate bonded to it. The specification also disclosed "a main body with a plurality of substrates bonded together." Representative claim 11 recited a first glass with a first substrate and a second glass with a second substrate. The Examiner rejected claim 11 under 35 U.S.C. sec. 112, first paragraph, arguing the written description did not disclose the second glass with the second substrate.

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 103(a) obviousness rejection of a key Hewlett-Packard software invention, but came up with a new rejection of its own - a 35 U.S.C. sec. 101 non-statutory subject matter rejection. As a Miami Patent Attorney that deals with Patent Office rejections related to software patents and software inventions almost daily, this case is instructive because it illustrates the case law on non-statutory subject matter and the process of dealing with the BPAI.

The HP invention involved a software process for credentialed authorization requests. HP appealed an Examiner's 35 U.S.C. sec. 103(a) obviousness rejection, which the BPAI reversed. But in an interesting move, the BPAI decision sua sponte noted the nature of the software claims and instituted a 35 U.S.C. sec. 101 non-statutory subject matter rejection.The BPAI started off by reciting case law: a "signal" cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) and a claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdan, 33 F.3d 1354 (Fed. Cir. 1994).

With regard to the Applicant's claims, the BPAI stated: "The services of the claims on appeal are logical constructs or software abstractions. System claims, independent claims 21 and 26, are directed to software-based systems per se. Additionally, the computer readable mediums recited in the preamble of independent claims 12 and 14 on appeal are directed toward signal-based embodiments when construed in light of the Specification as filed. The earlier-noted case law prohibits patent protection for these claimed features." Therefore, because the Applicant's claims recited pure logical steps with no explicit tie to a machine, and because the specification stated that a computer readable medium could be a signal, the Applicant's claims were non-statutory subject matter under 35 U.S.C. sec. 101. (It is interesting that the BPAI did not cite the Bilski case. Perhaps because the decision may be overturned by the Supreme Court this year?)

The first important practice pointer illustrated here is the importance of writing software patent claims that comprise statutory subject matter under 35 U.S.C. sec. 101. Fellow blogger Karen Hazzah writes an excellent patent prosecution blog that recently highlighted a USPTO memo directed towards helping patent practitioners write computer readable medium claims that survive 35 U.S.C. sec. 101 scrutiny. All patent attorneys that write software patent claims should read that memo.

The second practice pointer illustrated here is the ability of the BPAI to sua sponte come up with new grounds of rejection. It is not true that just because the Examiner missed a rejection, it can no longer be asserted against you (as in federal litigation). The BPAI has the power to bring up any rejection that the Examiner may have missed, even if it is the first time it's being used against you. The BPAI has always had this power, but in the last couple of years, I typically only see them do this for 35 U.S.C. sec. 101 non-statutory subject matter rejection. Thus, when dealing with an appeal to the BPAI, especially one involving software patent claims, the smart patent attorney will double check his claims to make sure there is no chance of such a sua sponte rejection. If the possibility exists, you may want to file an RCE to clean up the claims before going to appeal.

Continue reading "Patent Office Rejects Key HP Invention on Appeal" »

Much has been written recently about Apple's alleged plans to come out with a mobile tablet PC. According to the rumors, Apple has developed a commercially viable tablet PC that will be announced later this month at an Apple conference. One well-reported prediction is that the tablet will go by the name of iSlate. So far, however, this is all speculation since none of the rumors have been officially confirmed by Apple.

The U.S. Patent database, however, confirms that the Cupertino, CA company owns a patent application on tablet PCs, which was published a few weeks ago by the U.S. Patent and Trademark Office. Savvy blogger Gus Sentementes found patent application number 20090303231 which describes and claims various methods managing the manual manipulations of 3D objects via a touchscreen. Apple's patent application claims priority to a provisional patent application that was filed in June of 2008. Under the federal rules, a patent application must be published 18 months after its priority date, which is the earliest date to which the patent application claims priority. In this case, Dec. 2009 was the 18-month date, and therefore the patent application was published on the web site of the U.S. Patent database.

This illustrates an important feature of the U.S. Patent system: your patent application is kept confidential for at least 18 months. This can be a valuable benefit for companies that want to keep their research and development secret for a certain period of time, so as to minimize speculation and keep its stock value stable. Public companies prefer to make announcements about new products in a controlled manner so they can monitor and manage the effect of the announcement on company stock value and the market in general. As such, many public companies take full advantage of the 18-month confidentiality period and make as much headway as possible during that time. For this reason, as a Miami patent attorney, I advise my corporate clients to move their patent pending products to market as soon as possible after filing a corresponding patent application. Because once the patent application publishes at the 18-month mark, anyone with an Internet connection can view the specifics of their invention and attempt to copy it.

This past Tuesday (the U.S. Patent and Trademark Office awards patents once a week on Tuesday), the U.S. Patent Office awarded Microsoft Corp. a nice New Year's present in the form of a utility patent for key search engine technology. The patent, entitled "Using automated content analysis for audio/video content consumption" relates to a novel way of indexing audio/video files so as to make it easier for users to find the audio/video files, as well as the data within those files. This technology opens up an entire genre of data to the world of search engines. And with Microsoft recently making in-roads into the search engine market with its Bing search engine, it is instructive to keep abreast of the patents awarded to this tech giant.

Microsoft's Patent No. 7,640,272 has a short Summary of the Invention section which says it all: "Audio/video (A/V) content is analyzed using speech and language analysis components. Metadata is automatically generated based upon the analysis. The metadata is used in generating user interface interaction components which allow a user to view subject matter in various segments of the A/V content and to interact with the A/V content based on the automatically generated metadata." A review of Microsoft's patent reveals that the claimed subject matter is directed to a system that performs natural language processing on an audio/video file and then provides an interface that visually illustrates the identity of the speakers in the A/V file and provides a text transcript of what the speakers said. The interface also allows a user to click on an area of interest to view or listen only to a desired segment of the A/V file.

This patent is highly relevant to the search engine industry and its use should be closely watched. Today, there is no extensive method by which search engines catalog videos available on the web. Typically, videos are indexed by their titles or descriptions of the video entered by a user, usually the provider or a viewer of the video. This results in incorrect and incomplete cataloging of videos. Microsoft's patent, however, provides an ingenious way of progressing the current state of the art. The patent describes a system where A/V files are processed to garner the information within, thereby allowing the A/V files to be indexed by a search engine and easily viewed by a user. Imagine a system where you can search every YouTube video for a conversation of a topic of choice. For example, imagine that you're interested in finding out what the Fed Chief Bernanke has specifically said about Chinese steel imports. The system described by Microsoft's patent would allow a user to easily search for and find a short snippet of a television interview where Bernanke briefly mentioned this issue.

Although Microsoft's patented system has not been implemented yet, and there are questions of availability of computing resources necessary to process so much data, Microsoft's patent does appear as a logical next step in the search engine industry. There is a mountain of data located at online video sharing sites and Microsoft has found a way to index it and easily view it.

As a Miami patent attorney, I am constantly advising my clients that a valuable patent is one that accurately predicts the path of an industry. Microsoft may have done just that. Time will tell.