GoalsOfGreenTech

Happy Earth Day 2017!

The patent world is full of technologies that support the Earth. From solar panels to ever-more-efficient batteries to new recycling technologies, inventors throughout the USA are working to protect our environment.

Even the oil and gas industry have worked, at least a little, to help keep things cleaner. According to www.oilprice.com:

Oil companies, working alongside environmental organizations, scientists, biologists and engineers have developed numerous solutions for spills occurring both on land and in the water. Water spills can now effectively be cleaned by presses that involve straining and draining while containing the oil slick, using “floating booms” to corral the oil while skimmers and vacuum pumps cleanse the water and reclaim large percentages of the spilled oil.

Another “eco-friendly” oil spill management method for both water and land spills is called “Bio-Remediation. It’s a technique that uses living organisms such as bacteria and fungi to degrade, break down and in some cases; actually eat the oil as it safely cleanses the spill without hurting the environment.  Meanwhile, serious upgrading of the technology now being used for the drilling and refining of oil is cutting previous pollution levels down tremendously, as the oil industry increases profits by processing more usable oil while polluting a lot less.

Oil companies are now investing billions of dollars in socially responsible programs and are quickly becoming one of the largest supporters of environmentally friendly programs worldwide. Oil is already largely responsible for many of the major advances in medicine, pharmacology and world wide health care infrastructure, but now they are some of the largest supporters of research dedicated to promoting renewable energy sources.

This text was written in 2009; whether it remains true in the new administration or not is questionable. Our current administration is not friendly toward our planet, and that fact needs to be mitigated through strong Congressional action that puts into statute environmental protections which have, up until now, been administrative.

So, along with lobbying for science, we need to lobby for statutory control of air pollutants, water pollutants, increased use of green energy sources, and all the rest of the stuff formerly regulated by the Environmental Protection Agency. There is so very much technology out there already to support an eco-friendly country … we just need to have the backing of the government to continue to develop and use it.

GoalsOfGreenTech

USPTO Patent Examination and Procedure Training Coming Up

From the US Patent and Trademark Office:

The USPTO will host a three day training course on examination practice and procedure for members of the public as part of the Stakeholder Training on Examination Practice and Procedure (STEPP) program. The training will be held November 15 – 17 on the USPTO’s Alexandria, Virginia campus.  

This training is intended for those who have recently passed the Patent Bar for the purpose of practicing before the USPTO. The training will make use of statutes, rules, and guidelines relevant to practicing before the USPTO. The course is led by USPTO trainers and is based on material developed for training patent examiners and other employees. More information and a proposed upcoming course schedule is available on the USPTO STEPP program web page

 STEPP falls under the Excellence in Customer Service pillar of the USPTO Enhanced Patent Quality Initiative (EPQI), which ensures that the agency continues to issue high-quality patents well into the future. EPQI is a set of initiatives with goals toward strengthening work products, processes, services, and how the USPTO measures patent quality at all stages of the patent process.
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Cuozzo v. Lee, 579 US ____ (2016)

I was present in the Courtroom for the announcement of the Cuozzo decision by SCOTUS. This decision makes it clear that inter partes review by the USPTO is not appealable, and that the USPTO can institute such review sua sponte (by its own initiative). It’s an interesting decision.

35 USC §314(d) says that the “determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” (Emphasis added.)

35 USC §312 says that petitions must be pleaded “with particularity.” Those words, in its view, mean that the petition should have specifically said that claims 10 and 14 are also obvious in light of this same prior art. Garmin’s petition, the Government replies, need not have mentioned claims 10 and 14 separately, for claims 10, 14, and 17 are all logically linked; the claims “rise and fall together,” and a petition need not simply repeat the same argument expressly when it is so obviously implied.

The “No Appeal” provision’s language must, at the least, forbid an appeal that attacks a “determination . . . whether to institute” review by raising this kind of legal question and little more. §314(d).

Moreover, a contrary holding would undercut the Patent Office’s significant power to revisit and revise earlier patent grants. Congress would not likely have granted the Patent Office this reexam authority if it had thought that the agency’s final decision could be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review. Congress has told the Patent Office to determine whether inter partes review should proceed, and it has made the agency’s decision “final” and “nonappealable.” §314(d). SCOTUS’s conclusion that courts may not revisit this initial determination gives effect to this statutory command.

However, the Court limits its green-lighting of the USPTO’s unappealable reviews: “… we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.”” The Court does not “…categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, [or] enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under §112” in inter partes review.”

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USPTO’s New STEPP Program

From the USPTO’s website:

“The Stakeholder Training on Examination Practice and Procedure (STEPP) program is administered by the Office of Patent Training (OPT) under the third pillar (Pillar 3, Excellence in Customer Service), of the  Enhanced Patent Quality Initiative (EPQI) and is a new and important part of the USPTO’s mission to deliver intellectual property information and education to external stakeholders.

Training delivered through STEPP is designed to provide external stakeholders with a better understanding of how and why an examiner makes decisions while examining a patent application. In person courses are led by USPTO trainers and based on material developed for training employees of the USPTO.  

Currently, it is anticipated that courses provided through STEPP will be free to attend.  In addition, the USPTO is in the process of determining the applicability of providing CLE credits for attending STEPP courses; however, CLE credit cannot be earned for the first scheduled training session.”

The first scheduled training session is July 12-14 at the USPTO’s campus in Alexandria, VA.

For more information, see the USPTO’s website.

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Apple v. Samsung at the Federal Circuit

Apple, Inc. has some pretty cool stuff. They came up with the Macintosh in 1986. They very intelligently niched out of the World of Microsoft Windows. They now give us music, videos, computers, phones, tablets, watches that we can use as phones and all kinds of tekkie goodies. More specifically, they have this nifty slide-to-unlock mechanism on their touchscreen devices (iPhones, iPads; I don’t know about the watch, since I don’t have one). They have the ever-annoying spell correction, and they have an automated data-structure detection system. And, of course, they have patents on their tekkie goodies. The slide-to-unlock mechanism, the spell correction and the automated data-structure detection system have been the subject of litigation between Apple and Samsung.

The US Court of Appeals for the Federal Circuit (“CAFC”) has just invalidated two of Apple’s iPhone patents based on that litigation; one for the slide-to-unlock mechanism, the other for the spell correction, both on obviousness grounds. This is a big deal for Apple; after a jury trial, the District Court had held these patents infringed and awarded damages to Apple amounting to $119,625,000 in damages and ongoing royalties for infringement of the three patents. Oh well; Apple can bid goodbye to nearly $120M in damages and royalties, unless the Nine (currently eight) Wise Ones who sit on the SCOTUS bench decide to grant certiorari on what will almost certainly be Apple’s appeal to them..

112(f) Comparison

USPTO Has Trained Its Examiners in a “Plain Meaning of Terms” Initiative

The USPTO has updated the training it gives its patent examiners this spring to clarify the terms used in the prosecution of a patent. The guidelines explain that “the PTAB and courts will be informed as to what the examiner and the applicant understood the claims to mean.” The goal of the new initiative is to provide “a clear file history [to] prevent or reduce unnecessary litigation, interferences, reissues, ex parte reexaminations, inter partes reviews, supplemental examinations, and post-grant proceedings.”

Under MPEP § 2111, “During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” ” Because the applicant can amend the claims during prosecution, giving a claim its broadest reasonable interpretation reduces the possibility that the courts, the patentee, or others may interpret it more broadly than is justified. However, “[t]he broadest reasonable interpretation of the claims must … be consistent with the interpretation that those skilled in the art would reach.”

Against that backdrop, we have MPEP 2111.01, which tells us that “Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the time of the invention. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The presumption that a term is given its ordinary and customary meaning may be rebutted by the applicant by clearly setting forth a different definition of the term in the specification.” Thus, the plain meaning of any term may be redefined by the patentee within the four corners of the patent application, and the examiner must interpret the term as that term is interpreted by the patentee.

Including a glossary in your application is good practice that patent applicants often fail to do. By including a glossary in your application as part of the specification, you become your own lexicographer and define terms, even terms whose plain meaning is otherwise clear, in the way in which you want those terms to be interpreted by the USPTO and by the courts.

A “broadest reasonable interpretation” may be limited under 35 USC 112(f), which states, “Element in Claim for a Combination.— An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The plain-meaning vs. means-plus-function claim interpretation is only one of the reasons why you don’t want to write a patent application yourself.

GoalsOfGreenTech

The FTC Finally Targets an IP Troll

For any who don’t know, a “troll” is a company (and its lawyers) that sends out thousands of cease-and-desist letters threatening a lawsuit against a supposed infringer of that company’s supposed intellectual property. It’s a nasty practice that has brought the trolls (and their lawyers) many hundreds of thousands of dollars over the years. Finally, the Federal Trade Commission is beginning to protect the innocent public against these unscrupulous “licensing” demands.

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Patent Secrets

Elon Musk, founder of SpaceX and co-founder of Tesla Motors & SpaceX, said during his interview with Wired Magazine:

“I can’t tell you much. We have essentially no patents in SpaceX. Our primary long-term competition is in China—if we published patents, it would be farcical, because the Chinese would just use them as a recipe book.”

The ultimate goals of patent and trade secret are the same: to protect invention. They go about it in completely different ways.

Patent is, by definition, an exercise in disclosure. The deal the inventor strikes with the government which issues the patent is that s/he can have a monopoly on the invention, but only if s/he discloses the best mode to make and use the invention, and only for a limited period of time.

Trade secret is, by definition, an exercise in secrecy. No disclosure is made, no governmental grant of permission occurs, but the inventor can keep the trade secret for as long as s/he can keep the secret. Some trade secrets have lasted for hundreds of years.

So yes, the patent system in a big repository for the dissemination of information about inventions. It’s designed to be that because sharing the information through the patent system (so the theory goes) sparks further invention. In the US (I’ll get to China in a minute), the grant of patent rights expires after really a very short time, enabling others to glom onto the invention and make it cheaper, though not necessarily better, than does the original rightsholder (generic drugs are a prime example of this phenomenon).

China is notorious for its lack of respect for intellectual property in general. Although they are trying to change this, the idea that someone can own a product of the human mind is simply completely foreign to that culture. Therefore, the Tesla/SpaceX decision not to patent its invention, but to protect the invention through trade secret, is a strategic and conscious decision. They want to protect their invention from prying eyes and infringers. They do run the risk of loss of the secrets through disclosure or independent invention, but they have done their risk/benefit analysis and made their business decision. It may be the right decision for them, it may not be; that will be determined by time.

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Viagra Patent No Good in Canada

Pfizer wrote a patent application for one of its drugs and prosecuted it through to issuance in Canada. However, in that patent application, Pfizer’s Canadian patent attorneys/agents evidently failed to disclose the best mode of making and using the invention by “…failing to identify the active compound in the drug.” The drug is Viagra, a popular and profitable drug that enhances male sexual performance.

While this ruling is under Canadian patent law, this is a cautionary tale to all who seek patent protection. You must disclose the best mode of making and using the invention pursuant to 35 USC 112, Paragraph 1. The America Invents Act does not change that requirement.

It will be interesting to see what happens to the US patent for Viagra in the face of the Canadian ruling.

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Apple v. Samsung Reversed and Remanded

According to the U.S. Court of Appeals for the Federal Circuit (“CAFC”), the U.S. District Court for the Northern District of California abused its discretion when it granted a preliminary injunction against the sale of the Samsung Galaxy Nexus pursuant to a patent infringement suit currently before that court.

The CAFC’s decision cements the process for determining whether a preliminary injunction should issue. According to the U.S. Supreme Court’s decision in eBay, Inc. v. MercExchange, 547 U.S. 388 (2006), the traditional four factors of whether a preliminary injunction should issue “apply with equal force to the Patent Act.” Id. at 391. Those factors are:

  1. The movant is likely to succeed on the merits of his case;
  2. The movant risks suffering irreparable harm if the injunction does not issue, though the CAFC has held that a patent infringement plaintiff must also show that the harm is sufficiently connected to the infringement, the relevant question being to what extent the harm suffered can be ascribed to the alleged infringement;
  3. The balance of equities tips in the movant’s favor; and
  4. The injunction is in the public interest.

Here, the CAFC held that the District Court abused its discretion because there is an insufficient proof of any nexus between the infringing features and the sales of the Samsung Galaxy Nexus. Thus, any irreparable harm suffered by Apple cannot be ascribed to Samsung’s alleged infringement of the patent in question.