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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.”


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.


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