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The house loses all pushes October 24, 2014

Posted by Brian Schar in General, Patent prosecution, USPTO.
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Ex parte Lucas is an interesting example of a situation that you don’t see that often – although it’s probably a situation that should arise a lot more often than it does.

Lucas claimed a “double throat pulsation dampener for a compressor.”  The PTAB opinion is short and does not go into detail about what, exactly, that is.  I used Google to find a web page from Flowguard USA that describes such a thing, in case you, the reader, are interested.  (I have no commercial or other relationship with Flowguard USA and did not even know they existed until I searched “pulsation dampeners.”)  Lucas claimed a dampener that, among other things, had airflow reversed compared to the prior art.

The Examiner rejected the claims under 102 and 103 on particularly flimsy grounds, and cited art; the PTAB found that the Examiner provided no evidence or technical reasoning for either rejection.

However, the PTAB also found that the Applicant provided no evidence or technical reasoning to demonstrate why the cited device may or may not work with the air flow reversed.

As a result, the PTAB held that “at most, the issue is in equipoise. As the Examiner bears the burden of establishing patentability, the Examiner’s rejection cannot be sustained on the record before us. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)”

This PTAB decision is nonprecedential.  However, I think it would behoove appellants to essentially cut and paste the holding of Ex parte Lucas into their reply briefs, as a reminder in case of a push, the house loses.

A refreshing view of software patents October 1, 2014

Posted by Brian Schar in General.
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This is probably the best thing I’ve read on software patents lately: David Stein’s “Disrespecing Software.”


My personal view is that Big Software/EE simply doesn’t care about IP.  They’d rather compete on size than on novelty or IP, so for them they’d rather IP just not exist instead of going to the trouble of patent things and perform freedom-to-operate analyses.  Another key benefit for Big Software/EE is that they don’t have to worry about competition or pay a premium valuation to acquire a smaller upstart competitor, if that competitor isn’t able to assert any IP.

On the one hand, I wouldn’t worry about this as much if it were limited to software/EE.  However, many of the anti-software-patent people have a stated goal of blowing up the entire patent system.  See , for example, http://www.theatlantic.com/business/archive/2012/09/the-case-for-abolishing-patents-yes-all-of-them/262913/

I suppose in that case we’ll see which Silicon Valley company will be the first trillion-dollar corporation, as there will be nothing stopping any of the Valley giants from stealing code or anything else from their competitors outright.  Goodbye, startup culture.

The shortest PTAB opinion yet? July 30, 2014

Posted by Brian Schar in General, Patent prosecution, USPTO.
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Ex parte Daimer may set a record for the shortest PTAB opinion to date.  The actual opinion is a single paragraph and occupies about half a page of a document that is only 3 pages long.

Mr. Daimer claimed a carbothermic reduction furnace that has a “lining structure having a low Fe content of less than 0.1 % by weight.”  The Examiner cited a reference that was completely silent as to the presence or absence of Fe in a lining structure, so he interpreted that silence as meaning that Fe was present at a 0% level – “less than 0.1% by weight.”

In response, the APJ cited a single line from a precedential Federal Circuit case, which is also a logical truism: “Of course, the absence of evidence is not the same as evidence of absence.” Porter v. Secretary of Health and Human Services, 663 F. 3d 1242, 1264 (Fed. Cir. 2011) (O’Malley, J., concurring-in-part, dissenting-in-part)(internal quotations and citations omitted).  Therefore, the rejection was not supported by a preponderance of evidence, and was reversed.

This is a very useful opinion (as it its cite to Porter), because it provides another tool to use in those situations where an Examiner stretches a prior art reference too far to obtain a rejection.  Where a cited reference is silent as to a claimed term, that silence cannot be used against the applicant.


What “substantially” means July 29, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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Sometimes in the course of prosecution, either the applicant or the Examiner will proffer an argument about a claim term that is manifestly absurd. This was certainly the case in Ex parte Brosske. I am not even going to try to make the German “SS” letter or the umlaut on WordPress, so my apologies to him if he ever reads this.

One of the claims in Ex parte Brosske required that a blank be “substantially flat.”  The Examiner cited prior art that showed a blank having a 90 degree angle in it, and argued: “MPEP 2173.05 (b) states that the term ‘substantially’ is a broad term; therefore, the phrase ‘substantially flat’ is considered to include a blank that is not completely in a horizontal or vertical orientation. That is, a curve or bend in the blank still meets the claimed limitation.”

Fortunately, the PTAB applied common sense, and held that “a blank bent at a 90 degree angle does not constitute a “substantially” flat blank.”  I am a little surprised that the PTAB did not make note of the fact that the Examiner’s interpretation read the term “substantially” completely out of the claim.  I would be hard pressed to think of anything that wouldn’t be “substantially flat” if something bent at a 90 degree angle is considered “substantially flat.”



North Korean patent law June 6, 2014

Posted by Brian Schar in General, Patent prosecution.
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Apropos to my post a long time ago about North Korean patent law, I stumbled on this last night quite by accident.  It’s the Invention Law of the Democratic People’s Republic of Korea.  It’s current as of 2011.  Enjoy!

Google Patents down? May 8, 2014

Posted by Brian Schar in General.
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Google Patents is hosed for me.  If I get any results at all, they are exceptionally slow to come up, and the thumbnails on the search result page all show as broken.  (I’m also having problems with Google Maps and Google image search – no non-Google sites are a problem.) 

Am I just a special snowflake, or is anyone else having difficulty with Google Patents today?

A de facto patent registration system May 2, 2014

Posted by Brian Schar in General, Patent prosecution, USPTO.

Somebody explain to me how it is that we don’t effectively have a patent registration system in the US.

After 3 or more years in USPTO hell, winning appeals, and obtaining a patent that is supposed to be presumed valid, the owner might want to assert it.  However, the infringer against whom the patent is asserted will immediately throw that patent into IPR for more examination, sending the patentee’s purportedly-valid patent back to USPTO purgatory.  A whopping _92 percent_ of the time the claims will be amended or canceled!  How is this not a slap in the face to the examining corps, and the entire idea of patent examination?  If patentees are losing patent rights 92 percent of the time, what was even the point of initial examination?  Doesn’t this process negate on a de facto basis (1) the entirely of the examination process, and (2) the presumption of validity?

What is really happening on a de facto basis is that you have to open “real” examination, with adult supervision, at the time you assert the patent.  That is the basic characteristic of a registration system – there is no examination, and no presumption of validity.

In my view we now live in a patent system with the worst of all possible characteristics, which of course is the American legislative way. Patentees have to endure the expense and time of a normal examination process, as in examination-based patent systems, but then have to have their claims confirmed in a later proceeding, as in a registration-based system.

Why not abandon the entire idea of examination as it currently stands, and simply allow registration of utility patents?  Or at least give patentees that money and time saving option?

Non-analogous art April 18, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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A bane of inventors, particularly in the mechanical field, is non-analogous art.  You know you’re going to go to appeal when in the first office action you get a 5-way 103 rejection where one of the references is an 1890 vintage carpentry tool, when your invention is related to a surgical tool.

Ex parte Bezek provides a concise summary of obviousness law, and also provides a great template for arguing bad 103 rejections to the PTAB.  Quoting Bezek, “A reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem, or it the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention….In order for a reference to be reasonably pertinent to the problem, it must ‘logically have commended itself to an inventor’s attention in considering his problem.'”  (citations omitted).

Bezek was directed to a container for storing potato chips to minimize their breakage.  The Sardam reference was an IV container for reconstituting antibiotic.  The PTAB found that these were two different fields (that’s a slam dunk) and that the Sardam reference was directed to a different problem as Bezek, and as a result was not “reasonably pertinent” to Bezek.  Therefore, the rejection was reversed.

The practice takeaway relative to non-analogous art is to argue the problem solved by the prior art reference is a different problem than that solved by the claimed invention.

Fixing the proposed attributable ownership rules April 4, 2014

Posted by Brian Schar in General, USPTO.

I still believe the best thing to do with the proposed attributable ownership rules is to let them die a quiet death.  I could not agree more with Courtenay Brinckerhoff in this regard, and her recent blog post is critical reading on this topic.

Commenter Bryan and I have had a fruitful and collegial discussion in the comments section of a previous post.  I wanted to pull that out of the comments, and also use that discussion to propose a change to the rules – to the extent that the USPTO insists on maintaining them.

To avoid mischaracterizing Bryan’s argument, this is a cut-and-paste of his comment:

“I think the key point here is that the proposed rules (at 1.271(b)) incorporate the definition of 16 CFR 801.1(a)(3), but don’t explicitly incorporate the definition of 16 CFR 801.1(b). I could see asking the PTO to explicitly incorporate 16 CFR 801.1(b) into 1.271(b). Solely from the rules, my take was that this was the intention all along. (See, e.g., the proposed rules at p. 4111, col. 2, ¶ 2, which specifically cites the definition of “control” as requiring 50% or more holding of shares, etc.) Since some definition of “control” is necessary to interpret the rules, I would make a guess that the definition discussed in the rulemaking publication would be persuasive.”

My response:

“By leaving out the ‘control’ aspect of an ultimate parent entity, as set out in 16 CFR 801.1(3)(b), but incorporating other antitrust definitions expressly, the Office has shown a clear intent that the “ultimate parent entity” is not to be limited to an entity that has “control.” That is what worries me.  Courts don’t always pay much, if any, attention to the nonbinding verbiage in the rulemaking publication, so I don’t count on that as limiting the “ultimate parent entity” provisions at all.”

This dilemma actually lends itself to a simple solution: just state expressly in the rules that only entities with a controlling share can be “ultimate parent entities.”  Or, expressly add the limitation of 1.271(a)(2) to 1.271(b) or (c).  That gets private companies out from under the impossible task of providing a shareholder list and then chasing down details about each and every shareholder.

Even with the change I proposed, it would still be impossible for some companies to comply, for the reasons I set forth in previous posts.  For example, an exclusive licensee in a particular field – where that licensee is a privately held entity – has every incentive not to cooperate, and indeed to actively refuse to cooperate.  Prospectively, one can solve these problems contractually, for example, by requiring in a license that the exclusive licensee must fully cooperate in the ultimate parent entity rules.  One can also solve these problems contractually with regard to stock ownership, by adopting some kind of terms of sale of the stock that require such cooperation as well.  (The SEC-compliance types will have to figure out the details of that on their own.)

Therefore, another necessary change would be that these rules would not apply to any application filed before the adoption of the rules, and indeed some amount of grace period would be necessary.


Life During Wartime Part 2: A Likely Response from Industry March 31, 2014

Posted by Brian Schar in General.
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As I have outlined in the last few posts, the proposed “attributable ownership” rules are a missile aimed directly at the ability of privately-held companies to develop and hold IP.  It is quite literally impossible for small companies to comply with these rules.

In the last post I set out some thoughts about the implications of the attributable ownership rules on litigation.  

Now imagine what will happen once the compliance burden hits home, when CFOs of small private companies realize all of them face the same impossible burden – and when companies start seeing their IP and the IP of other small companies going abandoned because they cannot comply with the rules.

There will be deep and profound outrage, outside a chunk of the software/internet industry.  In the offices of semiconductor manufacturers and designers, of medical device companies, of battery makers, of LED designers – there will be a sudden and large pressure applied on the USPTO and Congress.  The USPTO will receive a wake-up call that not every patentee is a Silicon Valley software company.  Damage will be done, but this pressure, applied simultaneously with judicial pushback as described yesterday, will scuttle these rules in the same way that the continuation rules were unceremoniously struck down.


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