Archive for the ‘Patents’ Category

 

Supreme Court Decision will Impact Claim Strategy for Design Patent Applications

Thursday, 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

Wednesday, 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.

PTAB Finds Claims Directed to Point-of-Sale System for Printing Coupons for a Third Party to be Patent-Eligible Subject Matter

Tuesday, 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.