USPTO Memorandum Regarding Recent Subject Matter Eligibility Decisions

November 8th, 2016

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several recent decisions discuss the role of preemption in eligibility analysis; and (3) examiners should not rely upon non-precedential decisions –

Tyson Benson

Supreme Court Decision will Impact Claim Strategy for Design Patent Applications

October 20th, 2016

          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.

Additional §101 Insight for Software Patent

October 12th, 2016

     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 Filling up in Post-Prosecution Pilot Program

September 20th, 2016

          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:


September 13th, 2016

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 Matter

August 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
retailer; and
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.
At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of distributing coupons by a retailer for the purpose of enhancing revenue, and the Appellant did not dispute the Examiner’s characterization. However, during its analysis, the PTAB disagreed with the Examiner and found that the Examiner’s characterization of the abstract idea as being too broad.  Instead, the PTAB found that the claims were directed to “much more limited systems and methods distributing only coupons redeemable at a third-party retailer for goods that were unpurchaseable at the issuing retailer and/or are unrelated to the goods or services offered by the issuing retailer, and then only upon the occurrence of certain conditions.”


Regarding step two, the Examiner stated “[t]he steps or acts performed (utilizing a processor) in independent method claims 27 and 50 are not enough to qualify as ‘significantly more’ than the abstract idea itself, since the claims are a mere instruction to apply the abstract idea. Furthermore, there is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment, and the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional.”  The Appellant argued that, in the prior art, retailers commonly distributed coupons to enhance sales of goods or services provided by the retailer.  The Appellant contrasted the prior art with the claimed invention by stating the claimed subject matter:
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.
The Appellant further argued that the claims meet the specific threshold set forth in step two because the claims “add specific limitations to what is known in the art” because:
[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.
In its analysis, the PTAB relied upon the specific limitations of the claims to find that the claims do not preempt the “abstract idea” as defined by the Examiner.  To support this conclusion, the PTAB related upon the 2014 Interim Guidance on Patent Subject Matter Eligibility to identify that “specific limitations other than what is well understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application” qualify under the “significantly more” exception of step two.  The PTAB went on to state that these guidelines require that if an Examiner decides the limitations do not add “significantly more” to the claim, the Examiner must identify the limitations and explanations provided as to why this is the case.  The PTAB found that the Examiner failed to provide persuasive arguments or evidence as to why the limitations were not “significantly more” (i.e., the argument “are generic computer functions (e.g. adding, comparing and printing) that are well-understood, routine and conventional activities previously known to the industry” did not suffice.)
Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter finding that the claims did add “significantly more” to the abstract idea.

The U.S. Supreme Court Makes Opinion Letters Relevant Again

August 30th, 2016

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.

Court Finds That “Common Sense” May Not Be Enough

August 23rd, 2016

The Federal Circuit recently reversed a Patent Trial & Appeal Board (“Board”) decision relying on “common sense” to invalidate a patent. In Arendi S.A.R.L. v. Apple Inc., Google Inc., Motorola Mobility LLC (Fed. Cir. Aug. 10, 2016), the Court held that the Board erroneously applied the law on permissible use of common sense, and that the Board cannot rely solely on common sense to invalidate a patent. The Court explained that “common knowledge and common sense” cannot be a substitute for “reasoned analysis and evidentiary support” in the Board’s obviousness analysis. Specifically, the Court reasoned that the Board should not rely on common sense to supply a missing claim limitation unless the missing limitation is “unusually simple and the technology particularly straightforward.” Further, where a “missing limitation goes to the heart of an invention,” the use of common sense must be “supported by evidence and a reasoned explanation.”

The Arendi decision raises three important considerations for patentees. First, the decision gives a little ground back to the patentee in regard to overcoming the prior art. The Court appears to be taking a step back after the Supreme Court’s ruling in KSR v. Teleflex, which suggested that conclusory analysis can take the place of evidence. This decision favors patent owners by recognizing that the increasingly prevalent conclusory Board findings are likely to face strong challenge on appeal.  Second, this case cautions petitioners to limit arguments based on common sense, and instead offer thoroughly-reasoned argumentation. Finally, this case serves as a reminder of those appeal strategies that are more likely to find success. The Board is rarely overturned on appeal, most likely because the Board’s factual findings do not necessarily need to be correct, just supported by evidence. Thus, a petitioner will rarely get a reversal based on an erroneous factual conclusion. However, petitioners that can identify erroneous application of the law are more likely to find success on appeal.


August 15th, 2016

         Three-dimensional (3D) printing has become a hot topic in the past few years. 3D printers allow users to produce prototypes and custom artifacts (e.g., prosthetics, patient-specific anatomical models, replacement parts, etc.) with quick turnaround times, and at relatively low cost for single-item production. Moreover, 3D printers are becoming less expensive, making them accessible to everyday consumers. With some units priced in the range of a few hundred dollars, 3D printers may become a common household item.

          However, 3D printing also poses some challenges. The use of 3D printing to produce a working firearm has been heavily discussed in the media and has resulted in specifically tailored law (e.g., California’s AB857, requiring “a person who manufactures or assembles a firearm to first apply to the department for a unique serial number or other identifying mark”). Yet even with changes to law like California’s AB857, enforcement is likely to be difficult if not nearly impossible.

          The difficulty of tracking down individuals who print 3D artifacts illegally also raises concerns for businesses trying to protect their patented products. Because it is often impractical to bring legal action against individuals that personally make or use knockoffs of patented products, patent owners generally go after the manufacturers, suppliers, and/or distributors of the knockoff products. So, how can a company prevent infringers from making and using its products at home, through the use of a 3D printer? The task is much more difficult, particularly since CAD files used to make a 3D printed artifact are generally not covered by any patent rights attached to the artifact itself.

          The USPTO hosted a conference on June 28, 2016 to take a closer look at these issues. One of the areas considered by the USPTO was the application of induced and contributory patent infringement doctrines to prevent unauthorized distribution and download of CAD files for infringing products. Induced and contributory infringement both require knowledge on the part of the inducer or contributory infringer (see, e.g., 35 U.S.C. §§ 271(b) and (c)), hence it is more important than ever for patent owners to be vigilant. Patent owners should periodically monitor sites like that allow users to upload and download CAD files for 3D printing, and should promptly report CAD files for any of their patented products. Any supplier (e.g., website or file exchange) of CAD files that continues to do so after having knowledge that the CAD files are for making a patented product likely fits the definition of an “infringer” according to 35 U.S.C. § 271(b), “whoever actively induces infringement of a patent shall be liable as an infringer.” While it is not practical in most cases to go after the individuals making 3D prints of patented products at home, patent owners can take steps to prevent websites and file exchanges from providing CAD files and may be able to hold them liable if they fail to do so.

New Opportunities for Invalidating Patents

August 27th, 2014

Two relatively new post grant proceedings took effect on September 16, 2012 that may be useful for businesses that wish to invalidate troublesome and overly-broad patents. More specifically, these proceedings provide a challenger an opportunity to invalidate already issued patents. For example, businesses may utilize these post grant proceedings to potentially invalidate troublesome patents when bringing products to the marketplace. These changes were instituted under the America Invents Act (AIA), which included other major changes to the patent system – including a shift from a first-to-invent system to a first-inventor-to-file system.

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