MVS Filewrapper® Blog: Bring on the New Year—What is in Store for IP in 2014?

Happy New Year to all of our FilewrapperÒ followers! We hope 2013 was a productive year and wish you the best in 2014. As the New Year quickly approaches we would like to share with you a few predictions for 2014 for you to look forward to and for which to prepare!

·         Increased opportunities for quasi-litigation under AIA.  Various new mechanisms are available to challenge patents under the America Inventors Act (also referred to as “AIA” or “Patent Reform”) many provisions of which took effect in 2013. New strategies are available to challenge patents at the USPTO instead of challenging in court, providing distinct advantages—and some disadvantages.  Inter Partes Review, Post-Grant Review and transitional programs specific for business method patents are quasi-litigation proceedings which are heard by a panel of USTPO administrative law judges.  Ex Parte Reexamination—which has been available since 1981—also remains to allow a patent challenge to be heard by a patent examiner, requiring little from the challenger other than filing required papers with some evidence of patent invalidity.  The cost for ex-parte reexamination has significantly increased, although it remains a far less expensive option than litigation with the courts.

·         (Finally) an international design patent application is available!  Design patents protect a product’s new, original and ornamental design.  Design patents present a smart option for investment in protecting a product, since they cost significantly less than utility patents and are generally granted at a much faster rate.  In addition to these benefits of filing design patents, changes in international design registration under the Hague Agreement may facilitate more effective international protection for your design inventions.  Effective December 18, 2013 a single international application designating a variety of countries for protection can be filed through the International Bureau of WIPO.  This is beneficially a single international application to be filed at one location, which will ultimately be examined by many different Offices thereafter to provide more prompt and cost effective options for design protection.  Over 60 countries and territories—including the European Union—are members of the Hague Agreement.  However, there are various countries that are excluded from this treaty (e.g. Australia, Canada, China, Mexico, Japan, India, and Brazil), which would require a separate application as has been done in the past for foreign design patents.  Nonetheless, the Hague Agreement provides significant improvements for international design protection.

·         (Some USPTO) Fees Decrease January 1, 2014.  In addition to the new classification of “micro-entity” status for Applicants to receive 75% reduction of some USPTO fees that took effect in 2013, the New Year also brings certain fee reductions.  Notably, Issue Fee payments for granted patents are substantially reduced (from $1,780 to $960 for large entity), along with the removal of publication fees and assignment recordation fees.  Reissue patent, design patent and plant patent issue fees are also decreasing.  In addition, in 2014 certain PCT fees will be eligible for payment under small and micro entity status.

·         The search continues for a test to determine patentable subject matter under §101.  The Supreme Court will hear CLS Bank v. Alice in 2014 after the Federal Circuit’s en banc decision in 2013 found many software patents to be ineligible.  The Supreme Court will again try to define an abstract idea in considering whether claims to a computerized method (using a computer-readable medium and a computer to implement instructions) is patentable subject matter.  Both the Federal Circuit and patentees are still searching for a test under §101 that is “consistent, cohesive, and accessible [to provide] guidance and predictability for patent applicants and examiners, litigants, and the courts.”

·         We may receive further guidance on Claim Indefiniteness.  The Supreme Court is expected to grant certiorari on Nautilus v. Biosig Instruments involving indefiniteness under §112, second paragraph to determine whether claims having multiple reasonable interpretations are too ambiguous and would render a patent unenforceable for lack of written description.

·         Protecting American from “Patent Trolls.”  As previously reported on FilewrapperÒ, there is legislative movement in the House and Senate to limit lawsuits which can be filed by non-practicing entities (NPEs or Patent Trolls).  There seems to be great energy around limiting “frivolous” lawsuits in our court system.  In early 2014, the Senate will consider a companion bill to Senate 1720 ("Patent Transparency and Improvements Act of 2013"), which is said to already have support from the White House.  If legislation passes the Senate, then the House and Senate bills will need to be reconciled before being sent to the President.

·         New Patent Director.  Stay tuned for further administrative changes at the USPTO as the new Director, Michelle Lee, takes office January 13, 2014. The former Google executive has been made deputy director of the USPTO, and in that capacity will take on the duties of acting director.  Lee has issued statements planning to “attack” the backlog of unexamined patents (remains at more than 500,000) and improve patent quality with improved inter partes review.

MVS Filewrapper® Blog: H.R. 3309 – The Innovation Act

On December 5, 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act", with bipartisan support by an overwhelming margin of 325-91 votes.  H.R. 3309 was drafted to address the perceived growing problem of abusive patent litigation attributed to alleged “patent trolls.”  Early next year, the Senate will likely consider a companion bill, S. 1720, the "Patent Transparency and Improvements Act of 2013", previously introduced by Senator Leahy (D-VT).  While S. 1720 has similar goals of H.R. 3309, the bills have many provisions that are not shared or coextensive.  Thus, it remains to be seen what impact H.R. 3309's passage will have on Senate deliberations in light of the fact the bill enjoys support from the White House.  If legislation passes the Senate, then the House and Senate bills will need to be reconciled in conference committee and sent to the President's desk for signature.  In the meantime, the Senate Committee on the Judiciary will address the issue by holding a hearing entitled "Protecting Small Businesses and Promoting Innovation by Limiting Patent Troll Abuse" on December 17, 2013.

 

Supporters of H.R. 3309 praised its passage as instituting important patent reforms made necessary after the passage of the America Invents Act (P.L. 112-29).  Particularly, the bill heightens pleading standards; requires patent plaintiffs to name anyone who has a financial interest in the patent being litigated; requires courts to delay the discovery process until after claim construction is determined; creates a voluntary process for small businesses to postpone patent lawsuits while their larger sellers complete similar patent lawsuits against the same plaintiff; and, allows a manufacturer to intervene in a lawsuit against its customers and have the action stayed for the customer if both the customer and manufacturer agree.  The centerpiece of the legislation is a fee-shifting provision that requires courts (with some exceptions) to award prevailing parties reasonable attorneys' fees and other expenses when parties bring frivolous lawsuits or claims that have no reasonable basis in law or fact.  Proponents of this legislation include broad support from the technology sector, including internet companies such as Google, Microsoft, Amazon, and Apple.  H.R. 3309 is also favored by brick-and-mortar industries such as restaurants, retailers, realtors, hotels, casinos, airlines, and the auto industry.

 

On the other side, opponents of H.R. 3309 are concerned that the fee-shifting provision would likely favor wealthy parties while discouraging small inventors from pursuing legitimate patent infringement claims.  Opponents include members of the biotechnology and pharmaceutical industries, the Intellectual Property Owners' Association, patent attorneys, and even universities—which warned that the legislation would harm their patent-licensing revenues.  Notably, the Biotechnology Industry Organization ("BIO") believes that the Act will undermine biotech research and innovation, as it would ultimately make it more difficult for patent holders with legitimate claims to protect their intellectual property.  In a press release, BIO stated "[p]rovisions in the legislation would erect unreasonable barriers to access justice for innovators, especially small start-ups that must be able to defend their businesses against patent infringement in a timely and cost-effective manner, and without needless and numerous procedural hurdles or other obstacles."

 

Additional information about H.R. 3309 and S. 1720 will be available shortly from MVS. 

MVS Filewrapper® Blog: Changes to Implement and Guidelines for Examination under AIA

The United States Patent and Trademark Office has released its rules regarding changes under first inventor to file provisions of the Leahy-Smith America Invents Act. The rules published by the USPTO in the Federal Register on March 16, 2013 provide guidelines for implementing the new patent law and guidelines for examination of patent applications under the new standards.  The documents cover a broad range of topics, with a high degree of specificity, but we provide highlights from both of the Federal Register publications are as follows:

-          First-to-file standards only apply to applications filed on or after March 16, 2013

If an application claims priority to an application filed prior to March 16, 2013, it will be examined under the pre-AIA guidelines, i.e., first to invent standard.  The application may not claim new matter, i.e., matter not supported by the originally filed application (priority application).  If the application does have new matter, it will be examined under the first-to-file standards.

-          Required statements from the applicant in transition applications

Transition applications are those where a non-provisional application is filed on or after March 16, 2013 that claims priority or the benefit of the filing date of an earlier application.  If the application contains, or at any time contained, a claim to an invention that has an effective filing date of March 16, 2013 or after, the applicant is required to file a statement indicating that there is matter or was matter claimed that has an effective filing date on or after March 16, 2013.  The guidelines clearly state that the particular limitation does not have to be specified.  Thus, if any new matter is added to the claims of a transition application, the Applicant must inform the patent office in a statement.

-          In certain respects, prior art under the statute is broader than before

For applications being examined under the first-to-file standards, prior art is broader than before.  Now any patent or published patent application is prior art as of its earliest effective U.S., foreign, or international filing date.  Furthermore, the first-to-file standard eliminates the requirement that prior public use or sale be “in this country,” and therefore may now be anywhere in the world.

-          Interference proceedings have been replaced by the new derivation proceedings

      Under the first-to-invent standards interference proceedings existed to determine who invented first.  Under the new first-to-file patentability standards, interference proceedings have been replaced by derivation proceedings.  The derivation proceedings are instituted to determine if a prior public disclosure of an invention was actually derived from the inventor and is one that does not bar the invention from patentability

New and Useful - January 23, 2013

·         In Wax v. Amazon Techs., the Federal Circuit upheld the TTAB’s denial of registration of the mark AMAZON VENTURES.  Applicant filed and intent-to-use application to register the mark for “investment management, raising venture capital for others, . . . and capital investment consultation.”  Amazon Technologies, Inc.—online retailer and owner of several AMAZON.COM marks—opposed the registration.  The TTAB concluded that Amazon Technologies, Inc. had priority in the AMAZON.COM marks, and that there was a likelihood of confusion between Amazon Technologies’ marks and those of the applicant.  The Applicant challenged the TTAB’s findings that (1) Amazon Technologies’ marks are famous, (2) the similarity of Amazon Technologies’ mark to AMAZON VENTURES, and (3) the similarity of the parties' services and channels of trade.  The Federal Circuit confirmed the TTAB’s findings, based in part on the wide latitude of protection afforded to Amazon Technologies’ on account of its fame within the buying public.  

·         The Eighth Circuit Court of Appeals affirmed a district court’s judgment and damages for Hallmark Cards, Inc. against a former employee for breach of contract and misappropriation of trade secrets.  The district court entered the jury’s award of damages in the amount of $860,000.  The Eight Circuit affirmed $735,000 of the damages as they related to breach of contract and disclosure of trade secrets, but overturned $125,000 the former employee earned in compensation from a competitor. 

·         The Federal Circuit has dismissed as moot an appeal from a patent infringement suit.  Allflex U.S.A., Inc. sued Avid Identification Systems, Inc. seeking a declaratory judgment that six of Avid’s patents were unenforceable due to inequitable conduct.  The district court granted partial summary judgment in favor of Allflex, at which time the parties entered into a settlement agreement that resolved all of the claims and issues between the parties upon payment of $6.55 million from Avid to Allflex, except for a provision that allowed Avid to appeal three specific issues.  The agreement further provided that Allflex could contest any appeal on the merits, but could not dispute the existence of a live case or controversy, and that if Avid were successful on any issue on appeal, the payment to Allflex would be reduced by $50,000.  The district court accepted the settlement agreement and entered a stipulated order of final judgment that stated the case was dismissed with prejudice with the exception of findings the court considered “final and ripe for appellate review.”  Avid then appealed to the Federal Circuit, but Allflex declined to file a brief defending the judgment of the district court. 

The Federal Circuit concluded that the appeal was moot.  Avid argued that, although the case would be moot if it were not for the $50,000 contingency payment, that payment ensured that there was a real controversy between the parties.  The court dismissed Avid’s argument, concluding that while the district court’s decision was effectively final and therefore appealable, Allflex no longer had a legally cognizable interest in any of the issues in the case, and the payment was insufficient to create any interest

·         The USPTO has announced the new fee schedule.  The changes, initiated under the Leahy-Smith America Invents Act, are set to take effect March 19, 2013.  Among the notable changes are:

o   A 75% reduction in most fees for micro entities, including Universities.

o   Increase in basic filing fee:  $1,600 (large entity); $800 (small entity); $400 (micro entity)

o   Increase in appeal fees, due in large part to a new “Appeal Forwarding Fee for Appeal in Examination or Ex Parte Reexamination Proceeding or Filing a Brief in Support of an Appeal in Inter Partes Reexamination”:  $2,800 (large entity); $1,400 (small entity); $700 (micro entity)

o   Decrease in issue fees:  $960 (large entity); $480 (small entity); $240 (micro entity)

o   Increase in maintenance fees:

§  First (3.5 years):  $1,600 (large entity); $800 (small entity); $400 (micro entity)

§  Second (7.5 years):  $3,600; $1,800; $900

§  Third (11.5 years):  $7,400; $3,700; $1,850

o   Decrease in supplemental examination fees:  $16,500 (large entity); $8,250 (small entity); $4,125 (micro entity)

The complete finalized rules are available here.

New and Useful - Janurary 14, 2013

·         The Supreme Court handed down its decision in Already, LLC v. Nike, Inc.  The Court held that Nike’s covenant not to sue Alreadyfor alleged infringement of Nike’s AIR FORCE 1 trademark—entered into after Nike had filed suit and Already had filed a counterclaim challenging the mark’s validity—rendered both Nike’s claims and Already’s counterclaims moot.  The Court held that because Already failed to show that it engages in or has sufficiently concrete plans to engage in activities that would arguably infringe Nike’s trademark yet not be covered by the covenant not to sue, its claims could not survive Nike’s motion to dismiss. 

 

·        The USPTO has issued a Request for Comments and Notice of Roundtable Events for Partnership for Enhancement of Quality of Software-Related Patents.  The notice provides two separate roundtable events with the same agendas, one occurring in Silicon Valley on Tuesday February 12, 2013, beginning at 9 a.m. and the second occurring in New York City on Wednesday, February 27, 2013 beginning at 9 a.m. (both local time).  Topics on the agenda include: (1) how to improve clarity of claim boundaries that define the scope of patent protection for claims that use functional language; (2) identification of additional topics for future discussion by the Software Partnership; and (3) opportunity for oral presentations on the Request for Comments on Preparation of Patent Applications. Written comments are requested in response to the first two discussion topics. Written comments on the third discussion topic must be submitted as directed in the forthcoming Request for Comments on Preparation of Patent Applications.  Registration for the events is requested by February 4, 2013.  For additional information see the official notice.

·       The USPTO has also extended a pilot program allowing an applicant to request a twelve-month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional application, under specific conditions.  The program has been extended until December 31, 2013, with the possibility of further extension.  To qualify, the applicant must satisfy the following conditions: (1) Applicant must submit a certification and request to participate in the Extended Missing Parts Pilot Program with the nonprovisional application on filing, (2) the application must be a nonprovisional utility or plant application filed within the duration of the pilot program; (3) the nonprovisional application must directly claim the benefit under 35 U.S.C. 119(e) and 37 CFR 1.78 of a prior provisional application filed within the previous twelve months (the specific reference to the provisional application must be in an application data sheet); and (4) applicant must not have filed a nonpublication request. Additional information is available here.

 

·       The Second Circuit Court of Appeals affirmed in part and remanded in part a decision by the Southern District of New York finding willful infringement on the part of a retailer for infringing the Fendi trademark by selling allegedly counterfeit Fendi-branded products.  The district court awarded $12,324,062.66 in trebled damages, prejudgment interest, costs, and attorneys' fees, including disgorgement of Ashley Reed's based on a finding of willful infringement.  The Second Circuit affirmed the district court’s finding of infringement and willfulness, but remanded for clarification of the period of disgorgement. 

 

·        The Federal Circuit has issued a new opinion on determining obviousness.  A more thourough examination of the dicision in The C.W. Zumbiel Company, Inc. v. Kappos will be available soon here at Filewrapper. 

Another Billion Dollar Patent Verdict

Another billion dollar verdict has been handed out in a patent case.  Read the verdict in Carnegie Mellon University v. Marvell Technology Group, LTD. here.  This latest case continues a string of billion dollar verdicts highlighted by Jonathan Kennedy in the latest edition of MVS Briefs. 

Carnegie Mellon brought suit alleging infringement of two of its patents, Patent No. 6,201,839 and Patent No. 6,438,180, relating to integrated circuits for computer memory systems.  Marvell asserted that it did not infringe the patents, and in the alternative, the patents were invalid because they were anticipated or rendered obvious by the prior art.

The jury in the case found for Carnegie Mellon on all counts of infringement—including indirect infringement—and invalidity.  In addition to the large damages award, the jury determined that Marvell had engaged in willful infringement of two patents held by Carnegie Mellon because Marvell knew of the asserted patents before the lawsuit, had no reasonable defense for its actions, and knew or should have known that its actions would infringe the asserted patents.  The determination of willfulness by the jury could allow the presiding judge, U.S. District Judge Norra Barry Fischer, to triple the damages award. 

 A final judgment in the case is expected in May 2013, pending post-trial motions from both sides.  Marvell has already announced its intent to appeal the verdict should its post-trial motions prove unsuccessful. 

USPTO will remain open until April 18 in the event of government shutdown

In a press release, the USPTO stated it has sufficient available funds not tied to the current fiscal year that it will be able to remain open for six days following any shutdown of government functions.  Based on the current appropriations, that would put the USPTO open until April 18, assuming a shutdown begins April 11.  After that time, limited functions should still be available, including accepting new electronically-filed applications and other IT functions.  It is not clear what, if any, other services will continue to be available after that time.

To read the full press release, click here.

Copyright Office issues new DMCA exemptions: iPhone jailbreaking, noncommercial use of DVD snippets

Every three years, the United States Copyright Office seeks proposals for exemptions from the Digital Millennium Copyright Act ("DMCA").  As part of the DMCA, it became unlawful to circumvent access control measures copyright holders used to secure their copyrighted works.  For example, it is arguably a violation of the DMCA to use a program to "break" the content scrambling system ("CSS") encryption used for standard DVDs in order to make a copy of the DVD, even if making such a copy would otherwise be considered fair use under copyright law (although a recent decision by the Fifth Circuit arguably holds to the contrary).  The purpose of the exemptions is to adapt to any unintended consequences of the DMCA, such that lawful uses of copyrighted works are not unduly restricted.

Today, the Copyright Office issued the list of exemptions in this go-around of the triennial rulemaking process.  Included among the newly-granted exemptions are circumvention of the above-mentioned CSS encryption to use "short portions" in new works for the purpose of criticism or comment, when the use is educational, noncommercial, or for documentary filmmaking.  This is an important exemption, as it arguably covers the majority of videos on sites such as YouTube where short portions of movies, televisions shows, and the like are posted as a portion of a remix or other creative work.

In addition, unlocking a mobile phone to allow software to be run (commonly called "jailbreaking") is also exempted from the DMCA.  Notably, this does not prevent phone providers (such as Apple) from placing the restrictions on a phone in the first instance, it simply makes it not a DMCA violation to remove the restrictions.

The Office also permitted circumvention of prohibitions on "read-aloud" functionality of e-books.  Some e-books have been sold with a limitation that prevents the user from using their e-reader's "read-aloud" function, essentially turning the e-book into an audio book.  This is now not a violation of the DMCA anti-circumvention provisions.

The Copyright Office revisits these exemptions every three years.  Click below for the full text of the exemptions granted, or head to the Copyright Office website for the full release.

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USPTO proposes tiered system for patent application examination speed

In a press release today, the USPTO has proposed a tiered examination system where applicants could choose to pay a higher fee in exchange for quicker examination of an application or could opt for a delay of up to 30 months before docketing for examination.  This is the latest in Director Kappos' attempts to control application pendency at the Office.

The "prioritized examination" track would be much like the current accelerated examination system in that final action on the application would be targeted to be within one year of filing.  However, applicants would not have to provide the onerous examination support document with the application.

Similarly, the slow track would permit applicants to elect a delay of up to 30 months before the application is placed in the examination queue.  There is no indication in the press release as to whether applications filed under this track would receive a break on the filing fee.  However, this track would seem to be a favorable choice for companies that would prefer their patents to issue later (and therefore, with patent term adjustment, expire later).  

There will be a Federal Register notice with additional details tomorrow [UPDATE (6/4):  click here for the Federal Register Notice], and a public hearing is set for July 20 at the USPTO

To read the full press release, click here.

USPTO to allow accelerated examination for "green" applications without examination support document

In a press release yesterday, the USPTO announced it was beggining a pilot program to permit accelerated examination of patent applications directed to "green" technologies. The announcement came on the same day that the EPA announced it considers greenhouse gases a threat to public health and the environment. The announcements came just before the start of the United Nations Framework Convention on Climate Change.

In a Federal Register notice today, the specifics of the program were provided in more detail.  The applicable technologies include those that materially (1) enhance the quality of the environment, (2) contribute to discovery or development of renewable energy resources; (3) contribute to the more efficient utilization and conservation of energy resources; or (4) contribute to greenhouse gas emission reduction.  The requirements for environmental quality enhancement applications are defined in MPEP § 708.02(V).  The "renewable energy resources" include "hydroelectric, solar, wind, renewable biomass, landfill gas, ocean (including tidal, wave, current, and thermal), geothermal, and municipal solid waste, as well as the transmission, distribution, or other services directly used in providing electrical energy from these sources."  Inventions that deal with more efficient utilization and conservation of energy "include inventions relating to the reduction of energy consumption in combustion systems, industrial equipment, and household appliances."  Greenhouse gas reducing inventions include those "that contribute to (1) advances in nuclear power generation technology, or (2) fossil fuel power generation or industrial processes with greenhouse gas-abatement technology (e.g., inventions that significantly improve safety and reliability of such technologies)."

As to the technical requirements for the petition, they include:

  • The petition must be filed in a nonprovisional, non-reissue application that was filed on or before the date of the notice (December 8, 2009) 
  • The application must be classified in one of the classes identified in the Federal Register notice
  • The application must have no more than 3 independent claims and 20 total claims, or a preliminary amendment must be filed to reduce the number of claims at or below these thresholds
  • The claims must be directed to a single invention and include a statement that if the USPTO determines that the claims are directed to multiple inventions, the applicant will agree to make an election without traverse in a telephonic interview, and elect an invention that meets the eligibility requirements 
  • The claimed invention must materially enhance the quality of the environment or materially contribute to: (1) the discovery or development of renewable energy resources; (2) the more efficient utilization and conservation of energy resources; or (3) greenhouse gas emission reduction, and explain how this standard is met
  • The petition must be electronically filed on or before December 8, 2010, and at least one day before a first office action is mailed (which may be a restriction requirement)
  • The petition must include a request for early publication and the publication fee

As this is only a pilot program, only the first 3,000 applications will be elegible for accelerated examination on this basis.  However, the USPTO anticipates extending the program if it is successful.

For USPTO the press release, click here.  For the Federal Register notice with more details of the program and the requirements to participate, click here.  USPTO Director Kappos also provides this entry on his official blog on the subject.

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