In a recent decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court holding of subject matter eligibility for claims directed to a graphical user interface (GUI). In Trading Techs. Int’l., Inc. v. CQG, Inc., U.S. Patent Nos. 6,772,132 (the ‘132 patent) and 6,766,304 (the ‘304 patent) were under consideration. In its opinion, the CAFC performed §101 subject matter eligibility analysis for claim 1 of the ‘304 patent, which recites:
1. A method for displaying market information relating to and facilitating trading of a commodity being traded in an electronic exchange having an inside market with a highest bid price and a lowest ask price on a graphical user interface, the method comprising:
dynamically displaying a first indicator in one of a plurality of locations in a bid display region, each location in the bid display region corresponding to a price level along a common static price axis, the first indicator representing quantity associated with at least one order to buy the commodity at the highest bid price currently available in the market;
dynamically displaying a second indicator in one of a plurality of locations in an ask display region, each location in the ask display region corresponding to a price level along the common static price axis, the second indicator representing quantity associated with at least one order to sell the commodity at the lowest ask price currently available in the market;
displaying the bid and ask display regions in relation to fixed price levels positioned along the common static price axis such that when the inside market changes, the price levels along the common static price axis do not move and at least one of the first and second indicators moves in the bid or ask display regions relative to the common static price axis;
displaying an order entry region comprising a plurality of locations for receiving commands to send trade orders, each location corresponding to a price level along the common static price axis; and
in response to a selection of a particular location of the order entry region by a single action of a user input device, setting a plurality of parameters for a trade order relating to the commodity and sending the trade order to the electronic exchange.
Under step 1 of the Alice test (is the claim directed to a patent-ineligible concept, i.e., a law of nature, natural phenomenon, or abstract idea?), the CAFC agreed with the district courts finding that “rather than reciting ‘a mathematical algorithm,’ ‘a fundamental economic or longstanding commercial practice,’ or ‘a challenge in business,’ the challenged patents ‘solve problems of prior graphical user interface devices . . . in the context of computerized trading relating to speed, accuracy and usability.’” Trading Techs. Int’l., Inc. v. CQG, Inc., No. 2016-1616 at *6 (CAFC, January 18, 2016). The district court had performed an Alice Step 2 analysis, although unnecessary if the answer to the inquiry of Alice Step 1 is “no.” Regarding Alice Step 2, the CAFC stated that “district court’s rulings are in accord with precedent,” where the district court had “concluded that the specific structure and concordant functionality of the graphical user interface are removed from abstract ideas, as compared to conventional computer implementations of known procedures.” Id. at *7.
The CAFC concluded that “[f]or Section 101 purposes, the claimed subject matter is ‘directed to a specific improvement to the way computers operate,’ id., for the claimed graphical user interface method imparts a specific functionality to a trading system ‘directed to a specific implementation of a solution to a problem in the software arts.’” Id. at *9. The CAFC decision in Trading Techs. Int’l., Inc. v. CQG, Inc. is favorable to software-related inventions that can be classified as specific improvements to the way a computer operates, e.g., increasing efficiency, accuracy, usability, etc.
In a recent Federal Circuit decision, In re NuVasive, Inc. (Fed. Cir. 2016), the Court remanded a Patent Trial and Appeal Board (“PTAB”) decision because the PTAB invalidated claims in a patent without articulating a reason why the cited prior art references would be obvious to combine.
Under 35 U.S.C. §103, a claim is invalid if the differences between the prior art and the claim could have been obvious to a person having ordinary skill in the art (“PHOSITA”) considering the issue at the time the invention was made. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the U.S. Supreme Court held that the motivation to combine references need not be found expressly in the prior art itself, but may be explained by a fact finder using common sense. The KSR Court additionally wrote that it can be important to identify a reason that would have prompted a person having ordinary skill in the art to combine the elements in the way the claimed new invention does.
According to the Court in NuVasive, “the PTAB failed to explain the reason why a PHOSITA would have been motivated to modify [the prior art]” and the Court could not “’reasonably discern’ the PTAB’s reasoning as to motivation to combine…” This case illustrates that ensuring the Patent Office clearly articulates a reason to combine prior art references can be an effective tool for rebutting obviousness.
The opinion can be found here: In re NuVasive, Inc. (Fed. Cir. 2016).
The USPTO’s IP Attaché Program was recently featured by the Department of Commerce as being a valuable for U.S. businesses and stakeholders seeking to protect their IP interests abroad. Serving at embassies, consulates, and missions in 14 locations around the world, the IP Attachés work to improve intellectual property systems internationally and help U.S. stakeholders navigate IP systems abroad.
IP Attachés work as advocates for improved IP policies, laws, and regulations abroad. Attachés provide services such as raising IP issues with foreign government officials, providing IP training, conducting public awareness programs, and presenting and explaining U.S. government positions. IP Attachés also provide services that benefit U.S. businesses and stakeholders directly. For example, U.S. businesses seeking to enter foreign markets or conduct business abroad can contact Attachés for information on how to navigate foreign laws and regulations, how foreign courts and governments work, and how to protect and enforce IP rights abroad.
The IP Attaché Program is a valuable resource for U.S. businesses seeking IP protection abroad. To read the complete article by the Department of Commerce, visit: https://www.commerce.gov/news/blog/2016/11/uspto-attaches-valuable-resource-us-intellectual-property-interests-abroad. For general information on the IP Attaché Program, visit: https://www.uspto.gov/learning-and-resources/ip-policy/intellectual-property-rights-ipr-attach-program/intellectual.
The USPTO has issued a memo regarding subject matter eligibility in light of the recent Federal Circuit decisions (including McRO). In summary, the memo sets forth that (1) an “improvement in computer-related technology” can be a set of “rules” that improve computer-related technology by allowing computer performance a function not previously performable by a computer; (2) several recent decisions discuss the role of preemption in eligibility analysis; and (3) examiners should not rely upon non-precedential decisions – https://lnkd.in/ekgUtPu
Typically the goal in any patent application is to claim your invention as broadly as possible in light of any existing prior art. In design patent applications, this means that an applicant should try to claim a minimal set of design features for a product the applicant is trying to protect. This approach makes sense because it allows the applicant to exclude competitors that would try to make variations on the product design in order to get around a patent. As long as a competitor product has the claimed design features, the competitor product will be deemed to infringe. The Apple v. Samsung legal battle has demonstrated the validity of this approach for design patent applications.
Apple has been awarded approximately $400 million for Samsung’s infringement of design patents related to Apple’s iPhone. However, the U.S. Supreme Court heard oral arguments by Apple and Samsung on October 11, 2016 regarding the issue of whether or not the damages awarded to Apple were appropriate. The Supreme Court is considering an interesting question: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” Samsung’s position is that it only infringed design patents related to certain components of the iPhone and therefore should only be liable for any damages attributable to those components. U.S. patent law states that:
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.
35 U.S.C. § 289. Emphasis added.
Samsung has essentially argued that an “article of manufacture” can be something less than the entirety of an infringed product. If the Supreme Court agrees with Samsung, applicants for design patent applications will have to balance competing interests. With a broader claim, a patent owner will still have greater right to exclude competitors; however, the patent owner’s ability to collect damages may become limited to components of a product that are covered by claimed design features. To preserve an applicant’s exclusionary rights while maintaining a higher potential for collecting damages, it may become advantageous for applicants to file multiple design patent applications with varying claim breadth.
A recent United States Court of Appeals for the Federal Circuit decision has given hope to those seeking patent protection for software and computerized processes. In McRO, Inc. v. Bandai Namco Games America Inc. et al., the Federal Circuit reversed the lower court’s ruling that patents including lip-sync technology were invalid for claiming an abstract idea.
U.S. patent law states that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” qualifies as patent-eligible subject matter. See 35 U.S.C. §101. However, the courts have created some exceptions to the literal scope of patent eligibility. In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the U.S. Supreme Court ruled that mere computer automation of abstract processes are not patent eligible subject matter. One of the issues in McRO was that the claims “simply use[d] a tool to automate conventional activity.”
In McRO, the Federal Circuit held that the claimed automated process allowed “computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators.” McRO, Inc. v. Bandai Namco Games America Inc. et al., No. 15-1080, slip op. at 22 (Fed. Cir. Sept. 13, 2016). One notable takeaway from McRO is that, in contrast with previous Federal Circuit decisions since Alice, claimed differences in the process such that it creates an otherwise non-existent process may overcome the restrictions laid out in Alice. The ruling in McRO indicates that software inventions may be patent eligible when specifically claiming unconventional steps that differ from when performed by a computer.
Slots are quickly filling up in the USPTO’s recently introduced Post Prosecution Pilot (P3) Program. In an effort to encourage “compact” prosecution, and reduce the number of appeals and RCEs filed, the P3 Program offers applicants an opportunity to advance prosecution after final rejection. Under the P3 Program, applicants can present arguments at a conference with a panel of examiners, including the examiner of record. The P3 Program will run until January 12, 2017, or until 1,600 requests have been accepted by the USPTO. The USPTO has allocated 200 slots to each technology center, which are quickly filling. At just over two months into the program, some technology centers have already filled more than half of their slots.
To participate in the P3 Program, Applicants must complete a request form, a statement that the applicant is willing to participate in a P3 conference, and a response containing no more than five pages of argumentation. Applicants also have the option of filing a proposed non-broadening amendment to one or more claims. Following the conference, applicant will receive a notice of decision indicating one of three outcomes: 1) final rejection upheld, 2) allowable application, or 3) reopen prosecution. There are no fees for participating in the program. Benefits of the P3 program include testing out proposed claim amendments, presenting arguments to multiple examiners, and gaining valuable insight from panel feedback. Applicants who wish to avoid the time and expense of appeal and/or RCE should consider taking advantage of the P3 Program. For more information on the P3 program, visit: http://www.uspto.gov/patent/initiatives/post-prosecution-pilot.
The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently reversed a lower court’s dismissal of a declaratory judgement action for lack of subject matter jurisdiction in a case where the defendant, Asetek Danmark A/S (“Asetek”), did not actually allege that any particular product made by the plaintiff, Asia Vital Components Co. (“AVC”), infringed its patents. Instead, Asetek mistakenly accused AVC of infringement based on a potentially infringing product (the Liqmax 120s) that AVC does not manufacture. When the U.S. District Court for the Eastern District of Virginia dismissed the case, “[t]he district court held that the ‘complaint does not plead sufficient facts to show that there is a substantial controversy under the totality of the circumstances.’” AVC v. Asetek, No. 2015-1597, slip op., p. 4 (Fed. Cir. Sept. 8, 2016). The district court relied on Asetek’s response that it had “never accused [AVC’s] K7 or K9 products of infringement, and … did not even know that those products existed before AVC’s complaint.” Id.
The CAFC reversed, stating that:
Asetek relies heavily on the fact that it never referenced AVC’s particular products or product line as potentially infringing, and, in fact, did not even know of AVC’s products at the time of the complaint. But we have not required such specific facts to find jurisdiction.
The question of jurisdiction does not turn on Asetek’s knowledge of the specific AVC products or whether Asetek specifically alleged that the K7 and K9 products infringed the asserted patents; instead, the question is whether, under all the circumstances, Asetek’s actions “can be reasonably inferred as demonstrating intent to enforce a patent.” Hewlett-Packard, 587 F.3d at 1363. We conclude that Asetek’s conduct demonstrates just that.
Id. at pp. 8-9
Regarding “the circumstances,” the CAFC said:
We agree with AVC that the totality of circumstances indicates that an actual controversy existed between the parties at the time of the declaratory judgment complaint. Although the April 30, 2014 letter incorrectly accused AVC of manufacturing the Liqmax 120s, it was still a demand letter that referenced a product that AVC contends is similar to its own K7 and K9 products. Upon receiving the letter, AVC contacted Asetek, saying that it did not manufacture the Liqmax 120s, and then, in a follow-up email, AVC requested a meeting with Asetek “to discuss the related matter.” J.A. 105. Instead of simply responding that it had made a mistake with respect to the Liqmax 120s, Asetek’s August 2, 2014 email contained a number of statements that indicate that an actual controversy between the parties existed.
Id. at p. 6
It is not uncommon for patent owners to send out demand letters (e.g., cease and desist letters) to potential infringers. The CAFC’s ruling in AVC v. Asetek highlights the risks of doing so. In light of the CAFC’s ruling, patent owners are reminded to take care not to send demand letters to parties that they do not wish to litigate against. They are also reminded to exercise caution when making threatening statements because even an erroneously accused party (like AVC) can bring a declaratory judgement action against a patent owner when the totality of circumstances indicate that an actual controversy between the parties exists.
PTAB Finds Claims Directed to Point-of-Sale System for Printing Coupons for a Third Party to be Patent-Eligible Subject MatterAugust 30th, 2016
In a recent Patent Trial and Appeal Board (PTAB) decision, the PTAB reversed an Examiner’s rejection of claims that recited utilizing a retailer’s point-of-sale (POS) system that printed coupons for a third-party’s unrelated goods or services under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
The PTAB identified claims 14 and 43 as being representative of the claimed subject matter:
14. A system for distributing third-party coupons by a retailer on the Internet, the Internet including a computer with a monitor and a printer, the third-party coupons being associated with goods or services of a third-party retailer, which goods or services are unrelated to the goods or services of the retailer and wherein the third-party retailer purchases advertising from the retailer, the system comprising:
a server configured to:
cause a graphical user interface (GUI) to be displayed on the monitor;
display an advertisement associated with a third-party coupon of the third-party retailer;
display a threshold value in the GUI;
calculate a value of a transaction based on a purchase of goods or services made from the retailer by a consumer;
display the value of the transaction in the GUI; and
enable the computer to print the third-party coupon when the value of the transaction exceeds the threshold value;
wherein the third-party coupon is redeemable for the goods or services of the third-party
wherein goods or services of the third-party retailer are unrelated to the goods or services sold by the retailer and therefore are unpurchaseable from the retailer.
43. A checkout system for a retail outlet for distributing third- party discount coupons associated with one or more third-party retailers comprising:
a printer; and
a point-of-sale register having a processor configured to:
add prices of items purchased by a shopper to reach a total sale ST;
compare the total sale ST of the shopper to a threshold sale value T; and
print one or more third-party coupons for use with a respective third-party retailer to purchase goods or services unrelated to the goods or services offered by the retail outlet if the total sale ST of the shopper exceeds the threshold sale value T.
entails systems and methods that enable a retailer to distribute coupons in a different way. For example, the retailer’s point- of-sale (POS) register distributes a so-called third-party coupon that is redeemable for a discount on the goods or services sold by some other retailer. These goods or services of the third- party retailer are unrelated to the goods or services offered by the retailer distributing the coupon. The retailer’s POS register is configured to print this coupon for a shopper when the register determines that the value of the goods or services purchased by the shopper from the retailer exceeds a threshold value. This enhances the retailer’s revenue because the shopper increases his or her purchase from the retailer in order to receive discount coupons for a third-party retailer.
[i]t is unconventional for a retailer’s POS register to print a coupon for the purchase of a third-party retailer’s unrelated goods or services. It is especially unconventional for the retailer’s POS register to condition doing this on a shopper’s total purchase from the retailer exceeding a certain threshold sale value. None of this is routine or well understood. In fact, twelve years of prosecution reveals that nothing in the prior art teaches these additional features or even renders them obvious. Nothing of record demonstrates that this sort of activity has ever been previously engaged in by those in the field.
Patent owners may wish to revisit using opinion letters. Since 2007, opinion letters in patent cases have not been as prevalent as they were previously. That is, until the U.S. Supreme Court decided Halo Electronics, Inc. v Pulse Electronics, Inc. in June of this year. In Halo, the Supreme Court replaced the Federal Circuit’s strict Seagate test with a test that makes it easier for patent owners to obtain enhanced patent damages for infringement.
Section 284 of the Patent Act provides that a district court “may increase the damages [for patent infringement] up to three times the amount found or assessed.” The Federal Circuit ruled in 2007 in Seagate that enhanced damages may be awarded to a prevailing patent owner that proves infringing conduct was “willful.” However, the recent Halo decision lowered a patent owner’s burden of proof for showing infringement by eliminating a showing of “willfulness” and now requires the Federal Circuit to defer more to a district Court’s decision whether to enhance damages. When deciding if enhanced damages are appropriate, the Supreme Court directed the district courts to more subjectively “…channel the exercise of discretion, limiting the award of enhanced damages to egregious cases of misconduct beyond typical infringement.” Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. ___, 15 (2016).
Under the Halo standard, an opinion letter written by patent counsel can be an effective tool for avoiding “egregious cases of misconduct beyond typical infringement.” Some examples of opinion letters useful in this regard can include invalidity opinions, non-infringement opinions, or right-to-use opinions. In-house counsel and patent owners should seriously consider using opinion letters more often in the aftermath of Halo in order to provide convincing evidence against an allegation of egregious conduct.