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Pecked to death by ducks April 29, 2016

Posted by Brian Schar in General.
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You may be familiar with travel writer Tim Cahill; if not, do yourself a favor and read “Road Fever.”  (Full disclosure: I am not providing a link to Amazon because I make no money off this blog, nor do I aspire to.  You can cut and paste the title yourself into your online retailer of choice.)  “Road Fever” concerns an attempt to set a speed record driving from the southernmost road-accessible point in South America to the northernmost road-accessible point in North America.  It is also a fascinating window into how such adventures are planned and financed.  Cahill published another book, which is more of a collection of magazine articles he wrote, entitled “Pecked to Death by Ducks.”

Some file histories I was just reviewing made me think about that.  Personally, after I have exhausted all reasonable amendments in a case, and the Examiner just doesn’t want to listen, and I am 100% confident in my position, I will appeal.  Otherwise the needle never gets moved in that case.  The file histories I was just reviewing, however, are examples of endless RCE churn, and we’ve all been there.  Nonfinal Office Action -> interview -> tentative agreement that a particular amendment overcomes the rejection “but the search needs to be updated” -> Final Office Action -> interview -> tentative agreement that a particular amendment overcomes the rejection “but the search needs to be updated” -> new Nonfinal Office Action.  Some of these cases have pendencies approaching 10 years.

As averse as you may be to confrontation with an Examiner, at some point you just have to accept the fact that the case is never going to issue unless you appeal.  Sometimes the fault is the Examiner’s, sometimes the SPE’s, sometimes your own.  But you’ll never get off the merry-go-round if you don’t do something different in a case from what you’ve done before.  6 “minor amendments” in a row to overcome objections end up narrowing a claim a lot, and each of those amendments is another duck peck.

Also by way of full disclosure, I got pecked by a duck when I was a kid, and it hurt a lot.   I made the mistake up picking up its duckling and it responded by clawing into my back and pecking the back of my head quickly and repeatedly.  As Mama Duck no doubt expected, it had the desired effect of me dropping the ducking and running away.

Words matter! April 22, 2016

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.
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In patent prosecution, the specific word choices made in both the specification and the claims are critical to the validity and enforceability of those claims.

The Federal Circuit confirmed this in In re Man Machine Interface Technologies LLC.  The claims included “adapted to” limitations, such as “a body adapted to be held by the human hand.”  The drafter may have thought that “adapted to” was equivalent to the more-common “configured to.”  However, the Federal Circuit pointed out that, according to its precedent, “the phrase ‘adapted to’ generally means ‘made to,’ ‘designed to,’ or ‘configured to,’ through it can also be used more broadly to mean ‘capable of’ or ‘suitable for.'”  (In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).

Indeed, this language is lifted almost directly from In re Giannelli, which in turn lifted that language almost directly from Aspex Eyewear, which utilized dictionaries to construe the phrase “adapted to.”  (Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).

The Federal Circuit clearly considers “capable of” to be a broader construction than “configured to.”  That makes sense.  For example, the tip of a butter knife might be “capable of” turning a conventional slotted screw, but that butter knife is not “configured to” be used for that purpose.

However, anyone who has prosecuted patents at the USPTO knows that the Office tends to apply a “capable of” construction to every claim limitation, whether the applicant has chosen to limit his or her claims with an “adapted to” or “configured to” phrase, or in some other manner.

Here, the patentee was saved by the “reasonable” prong of the broadest reasonable interpretation standard, just as happened in In re Giannelli.  The specification made it clear that “adapted to” had its narrower meaning of “made to” or “designed to.”  Further, the specification expressly distinguished the type of device disclosed in the key reference cited by the Examiner.  As the Federal Circuit stated,” [t]he broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.”

There are two lessons here.  First, make sure you fully understand the meaning of terms like “adapted to” before using them in a patent claim.  There are hidden pitfalls in virtually every approach to claim drafting, and it takes time to learn them, but you must learn them.  Second, the Federal Circuit continues to emphasize that the broadest reasonable interpretation of claim language must in fact be reasonable.  While it may be difficult to convince Examiners of this at times, hold fast to this argument, and emphasize it on appeal.

 

Unhappiness is… April 20, 2016

Posted by Brian Schar in General.
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…when your outside counsel pays one of those fraudulent Slovak invoices that looks like a foreign counsel bill, approves it, and passes it on to you for payment.

I am sure that the overwhelming majority of Slovaks are honest and cool and good.  But seriously, when you get a letter with a Slovak return address regarding a PCT application, you really have to look at it extra carefully.

The “broadest reasonable interpretation” actually has to be reasonable April 14, 2016

Posted by Brian Schar in General.
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PPC Broadband v. Corning Optical is one of the more helpful cases for patentees and applicants that has been decided for a few months.

If you’ve been at this crazy patent prosecution business for a while like I have, you remember the dictionary shopping in the wake of Phillips v. AWH.  This wasn’t just literal dictionary shopping, even though I went on eBay and bought a number of used dictionaries along with every other patent prosecutor.  Such dictionary shopping in practice meant poring through each of those dictionaries and cherry picking the definition that fit the argument you wanted to make against a particular Office Action.  That wasn’t ideal from either a practitioner or examiner standpoint, though, and the pure reliance on dictionaries was softened in later case law.

However, recently the PTAB seems to have caught the dictionary mania of 10 years ago, and that was a key issue in PPC Broadband.  The PTAB construed the term “around” consistent with the fourth of at least four definitions of “around” in the American Heritage College Dictionary: “in the immediate vicinity of; near.”  That is, the PTAB cherry-picked the definition of “around” that suited its purpose.  As Judge Moore pointed out, “[t]he Board seems to have arrived at its construction by referencing the dictionaries cited by the parties and simply selecting the broadest definition therein.”

However, the Federal Circuit emphasized that the PTAB has to give patent claims their “broadest reasonable interpretation consistent with the specification,” not the broadest possible construction.  “The fact that ‘around’ has multiple dictionary meanings does not mean that all of these meanings are reasonable interpretations in light of th[e] specification.”

PPC Broadband’s proposed construction of “reside around” was “encircle or surround,” and this was the second of at least four definitions of “around” in the American Heritage College Dictionary.  In the patent at issue, the components of the claimed coaxial connectors as described in the specification “partially or wholly encircle the inner electrical conductor.”  The broadest reasonable interpretation in light of the specification thus is “encircle or surround,” not just being “in the immediate vicinity of, near.”  As Judge Moore states, “[g]iven the context of this technology, it seems odd to construe the term ‘reside around’ without recognizing the context of its use in terms of the coaxial cable at issue.”  If it wasn’t clear enough before that even after Phillips a bare dictionary definition won’t cut it for claim “interpretation,” it is now.  The PTAB is overworked and overloaded, but it can’t shortcut its way out of hard cases by picking up a few dictionaries and selecting a definition based solely on the criteria that the definition invalidates the patent.

The Federal Circuit also expressly declined Corning’s invitation to hold that the “broadest reasonable interpretation is the interpretation which includes as many of the disclosed embodiments as possible.”  To the contrary: “[a]bove all, the broadest reasonable interpretation must be reasonable in light of the claims and specification.  The fact that one construction may cover more embodiments than another does not categorically render that construction reasonable.”

Current patent examination is riddled through with bare, unsupported assertions by Examiners that a particular broad interpretation of a claim term is just “broadest reasonable interpretation.”  PPC Broadband provides applicants with a powerful weapon to combat those vague and poorly-thought-out rejections.  Where the Examiner’s interpretation is nonexistent, or vague, or not consistent with the specification, the first and more powerful argument is that the Examiner has failed to interpret that term i a way that is reasonable in light of the specification.

 

A thought about “patent reform” April 1, 2015

Posted by Brian Schar in Federal Circuit.
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To the extent that there is a perceived problem in the business community regarding patents, a perennial complaint has to do with uncertainty.  If a manufacturer gets sued, it’s expensive, and damages can be huge.

However, isn’t this more of a problem with damages than a problem with patents themselves?  Having just attended a very information CLE class centered on the VirnetX case and its progeny, the Federal Circuit has inserted a lot more rigor into the damages analysis – which is something that reduces damages uncertainty.  Still, if a legislative solution to the uncertainty problem is sought, it would seem more productive to come up with a statutory formula for patent damages, rather than yet another set of statutes that deal with patents themselves.

A reference that teaches away from X isn’t “capable of” X December 11, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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One of the more frustrating rejections to receive from the USPTO is one in which the Examiner waves his or her hands around and states, “the disclosure of this reference is capable of X, so, 103.”  There is usually very little technical reasoning that accompanies such a rejection.  Instead, there are quotes of random sections of the disclosure strung together, with no analysis accompanying that.  While these rejections are frustrating, at least they tell you the end is in sight, because if that’s the best the Examiner can do, you can just win on appeal and go to issue.

That is exactly what happened in Ex parte Henry.  Henry claimed a blood flow monitor that included, among other elements, a display configured to show a visual indication of blood flow rate between a threshold frequency down to a zero flow rate.  (Probably it’s important to know when a patient has a zero blood flow rate!)  The claims were rejected under 103 based on modifications to a US patent to Moehring.  The problem was that, as the PTAB pointed, out, “Moehring expressly excludes displaying low- and zero-frequency data.”  This didn’t stop the Examiner, who whipped up a word salad to justify the rejection: “one of ordinary skill in the art would have found it obvious to try a method of visually displaying data from a threshold frequency down to zero while ‘refining efforts to reduce the negative effects of tissue/probe motion and noise not indicative of blood flow’ that are described in Moehring, thus providing a ‘display of raw/unfiltered data from zero frequency to a defined upper threshold frequency.’”  Further, the Examiner found that “the low-frequency data deemed to be noise by Moehring are ‘not representative of blood flow but instead tissue motion, and therefore, the signal present fully represents blood flow.’”

The PTAB made short work of this.  “Moehring’s system…excludes all low-frequency signals, regardless of source,” and thus teaches away from displaying such signals.  The PTAB did not expressly hold that the Examiner provided insufficient technical reasoning, but it didn’t have to; the teaching away argument was sufficient.  Nevertheless, the PTAB did point out that the Examiner provided no support for certain aspects of the argument.

The rejected claims included functional language.  The PTAB pointed out that the “presence of functional language in an apparatus claim does not excuse the absence of a prima facie case of obviousness.”  Rather, “the prior art apparatus must be capable of performing the claimed function.”  Where the reference “teaches away from those very functions,” then there can be no valid rejection of the claim based on its inclusion of functional language.

To me, the first key takeaway of Ex parte Henry is that an solid “teaching away” argument demolishes a bad 103 rejection with poor or no technical reasoning.  It has to.  If the reference expressly says that the invention doesn’t include X, then no amount of technical reasoning can show that the reference taught an invention that required X.  The second key takeaway from Ex parte Henry is that a solid “teaching away” argument directed to a function in the reference obviates any “functional language” objection to the claims.

Carefully review the cited art when you receive a 103 rejection.  The “teaching away” argument is a powerful tool, when you can use it.

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.”

http://www.usptotalk.com/disrespecting-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.”