Our law firm was founded by Marin Cionca, Esq., a registered patent attorney and degreed engineer. We are focusing on helping individual inventors, entrepreneurs, and small businesses protect their valuable intellectual property rights in patents, trademarks, and copyrights.
A government license that gives the holder exclusive rights to a process, design or new invention for a designated period of time.
A symbol, word, phrase, logo, or combination of these that legally distinguishes one company's product from any others
The ownership of intellectual property by the item's creator. Copyright law gives creators of original ideas, art, etc.
Our entrepreneurial, engineering, and legal experience enable us to have a unique understanding of the value of intellectual property, and the decisive competitive advantage, strong intellectual property rights may give to an entrepreneur or small business. In the same time, we understand very well the complexities, challenges, and the enormous dedication it takes to start, run, and grow a business.
We are committed to listen and to help by offering cost sensitive assistance with design and utility patent searches, patent prosecution - including provisional and non-provisional (utility) applications, trademark and copyright registrations, and much more.
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Marin Cionca, Esq.
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Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject MatterMore
by Marin Cionca and Iris Kim
The Supreme Court’s decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347, 2014 (Alice) resulted in much confusion about whether software-related and computer-implemented inventions are patent eligible under 35 U.S.C. 101. Following this, in December of 2014, the U.S. Patent and Trademark Office (USPTO) issued interim guidelines on patent subject matter eligibility. “Interim” may indicate that further guidelines are forthcoming. Until then, decisions by the Patent Trial and Appeal Board (PTAB or Board) are a useful source of guidance for what constitutes patent eligible subject matter.
Drawing similarities between cases and the hypothetical examples provided by the USPTO can be helpful for patent prosecutors and examiners.
The two-part test provided by the USPTO is a basic analysis tool, set forth in MPEP 2106. Step 1 is to determine whether the claimed invention belongs to one of the four statutory categories of invention: a process, machine, article of manufacture, or composition of matter. If yes, Step 2 is to determine whether the claim is directed to a judicial exception, such as a law of nature, natural phenomenon, or abstract idea.
Alice also provided broad examples of what may constitute an abstract idea: (1) fundamental economic practices, (2) certain methods of organizing human activities, (3) “an idea of itself,” and (4) mathematical relationships or formulae (Alice, 134 S.Ct. at 2350; 2356; 2350; 2350).
Using these tests and guidelines, many claims were found by the Board and the Federal Circuit to be directed to patent ineligible matter under 35 U.S.C. 101. However, in two recent cases, the Board reversed the examiners’ decisions that the claims were directed to unpatentable abstract ideas, even though in the majority of appeals since Alice, the examiners’ rejections were affirmed.
In Ex Parte Cyriac J. Wegman III, 2015 WL 5578687 (Wegman, PTAB Sep. 18, 2015), regarding U.S. patent application number 12/765,954, the Board agreed with the Appellant that claim 1 is patentable subject matter. The Examiner had rejected the claims under 35 U.S.C. 101 for being directed to an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.
The representative claim, claim 1, is reproduced below:
1. A method for providing an empirical model of a defined space comprising steps of:
a. defining the desired space;
b. describing at least a portion of the defined space with multiple correlated dimensions;
c. reducing the dimensionality of the described portion;
d. combining the described portion with the remaining portion of the defined space;
e. creating a hypothetical model of the defined space; and
f. calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.
In their analysis of the patentability of claim 1, the Board employed the new interim guidelines issued by the USPTO following the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) and Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347 (2014).
The Appellant argued that claim 1 is directed to a method, and thus, satisfies step 1 of the two-step test, which the Board agreed with. The Board then also agreed with the Appellant that claim 1 is much more specific than a broad abstract idea, as argued by the Examiner. The Appellant argued that claim 1 requires “calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.” Therefore, the method claimed involves the performing of an analysis, and is not simply an abstract idea.
Next, in Ex Parte Bruce Gordon Fuller, Brian Alexander Wall, Kevin George Gordon, Mark David Hobbs, and Mohamed Salehmohamed, 2015 WL 3467122 (Fuller et al., PTAB May 28, 2015), regarding U.S. patent application number 12/765,954, the Board again agreed with the Appellant that the subject matter was patent eligible. The Examiner had rejected claims under 35 U.S.C. 101 for being an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.
An exemplary claim, claim 1, is reproduced below:
1. A method of associating a first variable and an event on a display, the method comprising:
displaying the first variable relative to a time period on the display, resulting in a graph of the first variable;
receiving first user input from a graphical indicator device, wherein the first user input comprises an instruction to position an indicator over a portion of a data curve of the graph corresponding to a time period of interest to the user;
in a processor, determining if the event occurred during the time period of interest; and
displaying the event on the display nearby the portion of the graph if the event occurred during the time period of interest.
Of note is that both of these sets of claims from Wegman and Fuller et al. involve a physical aspect. A calculation or analysis is performed in the first, and a graph display is required in the second. In Wegman, the Board stated that the method “requires performing an analysis of objects, either actual or virtual, and calculating coefficients for the model based upon that analysis. We find that these steps are sufficiently concrete as to set them outside the broad definition of abstract idea as set forth in Alice,” (Wegman, PTAB). In Fuller et al., the Appellants argued that the physical elements present “allow a user to view a graph and an event occurring during a time period of interest on the display if the processor determines that an event occurred,” and “these elements provide sufficient structure to prevent the method steps from being interpreted as too abstract,” (Fuller et al., PTAB). The Board agreed with the Appellants’ arguments, which provides a common thread between Wegman and Fuller et al., the physical components of each of the claims.
Later, these two examiners’ rejections were upheld on other grounds, but the opinions of the Board here still offer some insight into the type of claim language and subject matter that the Board finds patentable subject matter.
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial IndustryMore
By Marin Cionca and Iris Kim
To be eligible for Covered Business Method (CBM) review, a patent must first claim a method or corresponding apparatus used in the practice, administration, or management of a “financial product or service” (37 C.F.R. 42.301 (a)). Second, it must not qualify for the “technological invention” exception, which refers to patents that claim a novel, unobvious technological feature solving a technological problem. A patent only needs one claim that meets these requirements to qualify for CBM review.
In a recent decision, however, the Patent Trial and Appeal Board (PTAB or Board) decided that a claim may qualify for CBM review under Section 18 of the America Invents Act (AIA) and meet the “financial product or service” criteria even if it does not “particularly target the financial industry,” Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB, Sept. 10, 2015).
In Symphony, the Petitioner had filed to institute a CBM review of claims in the ‘452 patent. This patent relates to a “system and method for gathering and analysis of health-care related data as well as techniques for de-identifying individuals from pharmaceutical data, in order to maintain privacy” (Symphony, PTAB). The patent teaches that laws were passed to prevent personal information from being transmitted with health care data, but that it is still important to be able to associate records. Therefore, the ‘452 patent is related to a system in which identifying information is removed, and the non-identifying information is then used for marketing researching and other purposes.
What is of note is that the ‘452 patent owner argued that this patent does not “particularly target the financial sector.” However, according to the Board, the ‘452 patent qualified for CBM review because the “challenged claims recite a system and method used in the practice, administration, or management of financial services and products.” Additionally, because the system helps to aggregate and organize data for marketing research, it was disclosed that the system could “help make business decisions,” (Symphony, PTAB) such as in sales.
An implication of this decision is that a larger group of patents may be eligible for CBM review than it was previously thought, and the definition of a CBM review-eligible patent is broader than it may seem at a first reading. Even patents that do not “particularly” target financial institutions or sectors may be eligible for CBM review.
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?More
by Marin Cionca and Iris Kim
Two decisions by the Patent Trial and Appeal Board (PTAB, or Board) addressed how theses could be qualified as prior art, and the ways in which that qualification could be challenged. GlobalFoundries U.S., Inc. et al. v. Zond, LLC, IPR2014-01086, Paper 36 (GlobalFoundries, Aug. 14, 2015), relating to U.S. patent number 7,147,759, involved the evaluation of a Russian language doctoral thesis Mozgrin, which had been catalogued at the Russian State Library.
In this Final Decision, the Board addressed the issue of whether the Mozgrin thesis is prior art under 35 U.S.C. 102. A determination such as this one must be done on a case-by-case basis, by looking into the facts relating to the reference in question and its disclosure to the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” Mozgrin is a doctoral thesis originally published in 1994, and GlobalFoundries, the Petitioner, provided a copy of the catalog entry for it at the Russian State Library along with a certified English translation. The thesis contained an imprint date of 1994 or at least 1995, reading, “Catalog of Dissertations in Russian (since 1995).” However, Zond, the Patent Owner, argued that this was insufficient evidence that Mozgrin was actually catalogued on that date.
The Board found GlobalFoundries to be persuasive, because although “evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. See Hall, 781 F.2d at 899” (GlobalFoundries, PTAB), the critical date being September 30, 2002. Since Zond was unable to give sufficient explanation or evidence otherwise, such as why there would exist a delay of seven years for cataloguing a thesis, the Board agreed with GlobalFoundries.
Zond did also offer an argument that, even if Mozgrin had been catalogued, GlobalFoundries “would not have demonstrated that the thesis could have been obtained by any interested person outside of Russia or the countries under Russia’s control.” The Board called this argument “misplaced,” stating that there would have been “sufficient accessibility to interested persons exercising reasonable diligence.” The Board observed that Mozgrin “was cataloged and indexed in a meaningful way, by the author’s name, the IPR2014-01086 Patent 7,147,759 B2 44 title of the thesis (“High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic Field”), and the subject matter of the thesis (“Plasma Physics and Chemistry”)” (emphasis added).
In contrast to this decision, the Board also made a decision relating to a thesis that had not been catalogued or indexed in a meaningful way. Friendfinder Networks Inc. v. WAG Acquisition, LLC, IPR2015-01033, Paper 8 (Friendfinder, Oct. 19, 2015) relates to U.S. patent number 8,327,011. The Petition provided Su, a thesis submitted to the Department of Computing and Information Science at Queens University in Ontario, Canada in September of 1998. The thesis bears a copyright notice of 1998, and the Petitioner asserted that Su was published and available at the National Library of Canada in 1999. “However, Patent Owner contends that Petitioner has not met its burden to show when Su became publicly accessible and, therefore, Su has not been shown to be a prior art printed publication,” (Friendfinder, PTAB). This due in part to the Patent Owner’s argument that it is unclear whether Su was available beginning on the critical date of July 18, 2008, and unclear when Su was “accessible in a searchable or indexed manner, such that it could be located by persons interested and ordinarily skilled in the subject matter or art using reasonable diligence.”
Again, the Board referenced Kyocera Wireless, in making their determination of whether a reference is a printed publication. In previous cases, a copyright notice has been used as a prima facie evidence of publication. However, such as in this case, “in the absence of further evidence, a copyright notice may not be determinative.” As such, the Petitioner acknowledged that Su was not published until 1999; therefore, the copyright notice posted on Su holds “no weight on the issue of public accessibility” (Friendfinder, PTAB).
The Petitioner provided a “photograph of the microfiche copy of Su,” “a photograph of an envelope in which the microfiche is stored,” and an “index microfiche.” Unfortunately for the Petitioner, the envelope photograph displays only “Jan–Jul/Aug 1999 ISSN 0225-3216 Index A Authors Titles Series.” The Board stated that Su was only indexed by “rudimentary indexing,” of the author’s name and only the first word of the thesis title, “Continuous,” “which is the only indexing that the evidence suggests may have occurred before the priority date and does not suggest its relevance to the streaming media network transport problem addressed by the ’011 Patent” (Friendfinder, PTAB).
The Board then concluded with a statement that “such indexing would not provide a meaningful pathway to a researcher who was not previously aware of the existence of the thesis and was searching by subject matter” (Friendfinder, PTAB, emphasis added). These two decisions by the Board provide some guidelines for petitioners and patent owners alike. Providing a thesis as a reference may only be useful if one can also supply evidence of its availability, and that evidence should be focused around the critical date.
Challenging of that reference may be done by evaluating the institution’s policies for cataloguing of theses, how indexing is actually performed by those institutions, and whether an interested person of ordinary skill would be able to find that reference. If the indexing of a thesis is only done in a rudimentary fashion, as in the case of Su, that thesis may not be qualified as prior art.
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?More
An Innovator’s Dilemma: Design or Utility Patent?
by Marin Cionca and Iris Kim
[Originally published on August 24, 2015 in Orange County Business Journal. Republished with permission.]
Should protection be sought with a design patent, or a utility patent? When innovators create something new, this becomes an important question to answer in order to secure the best protection for their inventions.
A utility patent protects structure and function, whereas a design patent protects ornamental appearance. Using a ballpoint pen as an example, if an inventor created a pen with a unique look to it, the inventor should apply for a design patent. However, if an inventor has conceived of a different way for the ballpoint pen to work, a utility patent would be the appropriate choice. In either case, the aspects to be patented must be new and non-obvious.
Obtaining a design patent for the appearance of a pen would prevent others from making, using, selling or importing another pen that looks similar, regardless of how differently the pen functions. However, a utility patent for the way a pen works, perhaps for the way it writes, or opens and closes, would prevent others from making, using, selling or importing another that works in that same way, even if it looks very different.
In some cases, it may be beneficial to file design and utility patent applications, if the invention has novel aspects in both appearance and function. A design patent may add another layer of protection for a device that one has patented its structure or function, since aesthetics can be a large factor in marketing a product.
Costs have to be considered. Design patent applications are much simpler, and thus, cost less to prepare and file; additionally, there are no maintenance fees to pay during a design patentʼs term of fifteen years after issue. A utility patent owner must pay maintenance fees three times throughout its term of twenty years from the earliest priority date, adding to the overall cost.
Knowing which particular features are the most important inventive aspects one wishes to protect with a patent is a crucial step in identifying an invention.
These features may be the way something functions, or how a process works, or how a device looks, or perhaps all of the above.
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness ChallengesMore
by Marin Cionca and Iris Kim
In June 2015, Amgen challenged two patents (US Patent Nos. 8,916,157 and 8,916,158) owned by AbbVie Biotechnology Ltd., related to the drug Humira. The challenge was on the grounds that the reformulations of the biologic described in these patents are not significantly different from that of the prior art. The Patent Trial and Appeal Board (PTAB or The Board) has denied both of Amgen’s requests for inter partes review, in Amgen Inc. v. AbbVie Biotechnology Ltd. case numbers IPR2015-01514 and IPR2015-01517.
AbbVie asserted to the Board that preparing stable liquid aqueous formulations of antibodies at the recited concentrations may lead to unpredictable results. A claim is unpatentable as being obvious if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made” (35 U.S.C. 103(a)) to one of ordinary skill in the art. Absolute predictability is not a requirement for obviousness, but “some articulated reasoning with rational underpinning to support the legal conclusion of obviousness” should be present (KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In case IPR2015-01517, Amgen had submitted an argument that an article, Wang, provided guidance for formulating stable liquid aqueous antibodies at the concentration recited in the patents. However, AbbVie asserted that the Wang article demonstrates unpredictability in this art of formulating proteins as well, stating “[v]ery often, proteins have to be evaluated individually and stabilized on a trial-and-error basis.” “Although the Wang article indeed provides general guidance, the Wang article also underscores the unpredictability of the undertaking” (PTAB, IPR2015-01517).
Further examples of references that provide general guidance were provided. Amgen argued using Salfeld and Heavnerm stating that “because both focus on anti-TNF alpha antibodies, both focus on IgG antibodies, and both teach how to formulate these antibodies” a skilled artisan “would have had reason to combine Salfeld and Heavner” (PTAB, IPR2015-01517). AbbVie’s response was that Salfeld provides guidance “merely as a general approach” and Heavner only provides “bulk recitations” and “offers no guidance at all on how to actually select from this massive number of possible combinations” (PTAB, IPR2015-01517).
Given these arguments, the Board found that Amgen was not persuasive in their argument that a “skilled person would have had a reasonable expectation of success in applying the formulations commercially available and taught in the literature to D2E7,” D2E7 being the antibody described in the ‘158 patent (PTAB, IPR2015-01517). The Board concluded “that Amgen has not established a reasonable likelihood of prevailing with respect to its challenge,” (PTAB, IPR2015-01517). Similar arguments were presented in case IPR2015-01514, and both requests for inter partes review were denied in January 2016, demonstrating that, even with guidance, unpredictability may still be a factor in certain fields.
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as PrecedentialMore
by Marin Cionca and Iris Kim
In January 2016, the Patent Trial and Appeal Board (PTAB or the Board) marked two of their 2015 decisions as precedential. LG Electronics, Inc. v. Mondis Tech Ltd.,(IPR2015-00937, Paper 8, PTAB, Sept. 17, 2015) and Westlake Services, LLC v. Credit Acceptance Corp., (CBM2014-00176, Paper 28, PTAB, May 14, 2015) are the second and third America Invents Act (AIA) review decisions that the Board designated as precedential, the first AIA precedential decision being SecureBuy, LLC v. CardinalCommerce Corp. (CBM 2014-00035, PTAB, Apr. 25, 2014). The majority of decisions by the Board are routine, and others may be designated as informative or precedential. A precedential decision is significant in that it is binding authority on the Board unless overcome by a subsequent binding authority, for instance, a decision by the U.S. Supreme Court or the Federal Circuit Court of Appeals.
LG Electronics, Inc. v. Mondis Tech Ltd. concerns the 12 month window in complaint filings, namely, the interpretation of “served with a complaint” with regards to the one-year time bar that is set forth by 35 U.S.C. 315(b). This time bar prevents a petitioner from requesting an inter partes review of a patent if they would be filing after one year from the date they are served with a complaint alleging infringement of that patent. When multiple complaint filings have occurred, the interpretation of 35 U.S.C. 315(b) could become complex. The Board interpreted in LG Electronics that there is to be a bar even if subsequent complaints were served within that 12 month window of time.
Westlake Services, LLC v. Credit Acceptance Corp. concerns the interpretation of the estoppel provision set forth in 35 U.S.C. 325(e)(1). Claims that were denied trial do not trigger 35 U.S.C. 325(e)(1) estoppel where other claims in the patent move forward through trial. 35 U.S.C. 325(e)(1) states that a “petitioner in a post-grant review of a claim in a patent… that results in a final written decision under section 328(a)… may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” The Board made a clarification in Westlake Services that the decision not to proceed to trial on a subset of claims of a patent does not constitute a “final written decision” on the patentability of the claims that triggered the 35 U.S.C. 325(e)(1) estoppel, and estoppel is to be “applied on a claim-by-claim basis.”
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!More
In June 2014, the Supreme Court ruled in Alice Corp. v. CLS Bank Int’l (“Alice”) that the claims in the four disputed software-based patents owned by Alice Corp. were directed to an “abstract idea,” and thus were patent-ineligible under 35 U.S.C. 101. The Supreme Court’s decision was based on the reasoning that the claims were said not to be more than instructions for implementating an abstract idea, the idea of intermediated settlement using a generic computer. This decision soon led to much confusion about software invention patentability and impacted how this patentability is evaluated by patent practitioners and U.S. Patent and Trademark Office (USPTO) examiners alike.
The USPTO then issued “2014 Interim Guidance on Subject Matter Eligibility” after Alice, which details the subject matter eligibility analysis for claims, providing a baseline guidance for examiners. The USPTO then supplemented that guidance with eight sets of example claims directed to computer-implemented inventions or software inventions. Four example are directed to patent-eligible subject matter while the other four sets recite patent-ineligible matter. Practice revealed that some examiners are not familiar with these relatively recent examples. When this is the case, it falls upon the patent practitioners to make their cases by bringing these guidelines and examples to the examiners’ attention.
Example 3 of the USPTO’s set of eight examples uses a two-step test, commonly referred to as the Mayo test. This test was used in Example 3 to analyze the patentability of a claim reciting digital image processing by generating a noise mask. Step 1 checks whether the invention (here, a process) belongs to a statutory category of invention and, if so, whether it is a “judicial exception” such as an abstract idea. Generating a mask was found to be an abstract idea. However, when examined as a whole in Step 2, the claim represents more than that abstract idea. Step 2 of the two-step test is to search for elements that show an inventive concept. Here, the process of comparing and converting data were found to add meaningful limitations, “improve the functioning of the claimed computer” and result in an “improved digital image.” The claim is thus patentable, and Example 3 can be used as support that for the idea that software claims can still be patentable.
Still, examiners may issue automatic 101 rejections for any software-based or computer-implemented inventions. These rejections can and do happen. When this is the case, patent practitioners must appropriately respond, and they can point out that examiners cannot issue automatic rejections without a fact-based reasoning behind the rejection. The Patent Trial and Appeal Board held in Ex Parte Poisson (February 26, 2015) that examiners must provide an evidence-based prima facie case of patent ineligibility, and the Poisson case provides a clear example of this.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) was a significant decision from the Federal Circuit as being the first to uphold the subject matter eligibility of computer-implemented claims after Alice. This decision is a strong example showing that software-related inventions can still be patentable. Here, it was shown that claims directed to making an improvement to a computer system or solving a problem within the system may be patentable. More specifically, the Federal Circuit saw that “the claimed solution is necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks” (DDR Holdings) leading to their conclusion that these claims “specify how interactions with the Internet are manipulated to yield a desired result” and “recite an invention that is not merely the routine or conventional use of the Internet.”
Although some confusion still remains regrading software patent eligibility, it is important to adopt a thorough approach not only to drafting these software patent applications, but also to working with and even educating the USPTO examiners. Particularly after Alice, broad subject matter eligibility in the claims can and should be advocated for by patent practitioners, who must also advocate for their clients’ cases to be handled properly.
Alice Corp. v. CLS Bank: http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf
DDR Holdings v. Hotels.com: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/13-1505.Opinion.12-3-2014.1.PDF