Category Archives: Patents

Federal Circuit: obviousness requires a clear and explicit explanation

The Federal Circuit recently vacated a Patent Trial and Appeals Board (PTAB) decision that found obvious several claims of a patent application relating to methods for re-configuring icons on a touch-sensitive display. In In re Van Os (Fed. Cir. Jan. 3, 2017), the court’s decision focused on the PTAB’s failure to provide sufficient reasoning for the rejection, rather than the question of whether or not the claims were in fact obvious.reconfiguration

The claims related to a user interface for a touch-sensitive display that would enter a “reconfiguration mode” after it detected a sequence of two touches that had different durations in particular locations of the display. The Examiner and the Board both found the claims to be obvious in view of two prior art patents.

The court found both the Examiner’s and the PTAB’s explanations to be lacking, stating:

Here, neither the Board nor the examiner provided any reasoning or analysis to support finding a motivation to add Gillespie’s disclosure to Hawkins beyond stating it would have been an “intuitive way” to initiate Hawkins’ editing mode. The Board did not explain why modifying Hawkins with the specific disclosure in Gillespie would have been “intuitive” or otherwise identify a motivation to combine.

The court explained that it had a long history of requiring Examiners and the Board to sufficiently explain the reasoning for an obviousness rejection:

Since KSR, we have repeatedly explained that obviousness findings “grounded in ‘common sense’ must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness…. Absent some articulated rationale, a finding that a combination of prior art would have been “common sense” or “intuitive” is no different than merely stating the combination “would have been obvious.”

Because the Board and the Examiner failed to meet their burden, the court directed the USPTO to allow the claims and grant the patent.

Who should be listed as inventors in a patent application?

49458832 - inventor

49458832 – inventor

This is a question that all patent applicants must answer before filing a patent application. However, applicants often answer the question without fully understanding the criteria for “inventorship.” Applicants often simply presume that the inventors listed on an invention disclosure, or the authors of a publication, will be the inventors. This is not necessarily the case, since inventors of an invention and the authors of a document can be (and often are) different.

The consequences of failing to correctly identify the inventors in a patent application can be severe. If an inventor was omitted, the assignee of record may not be the sole owner of the patent rights.  In addition, an incorrect inventor list also may result in an invalid patent. Although inventorship can be corrected after a patent application is filed, and even after the patent grants, it’s much easier to get it right in the first place by answering a few key questions before filing the patent application.

To determine who is an inventor, consider the following:

  • Review the claims at the end of the patent application. The claims define the “invention.”
  • Participating in conception if the invention is the key.  Anyone who contributed to the conception of the invention is an inventor. In other words, anyone who suggested any of the steps or features listed in the claims is an inventor.
  • In contrast, a person who did not help conceive the invention is not an inventor. For example, a person who merely identified the problem is not an inventor unless they also helped conceive the solution. In addition, a person who reduced the invention to practice without helping to conceive it is not an inventor.

Omitting people who merely posed the problem, or who merely helped reduce an invention to practice from a patent application can be difficult, and may result in some bruised egos. For software-related inventions, the people who developed the design specification are typically inventors, but the people who actually created the code are typically not inventors since they merely reduced the design specification to practice. In life sciences, the individuals who specified the parameters for an experiment may be inventors, but the lab employees who actually performed the experiments are typically not inventors. In each of these cases, the coders and lab techs may have spent much more time and effort reducing the invention to practice than the inventors spent conceiving it. However, patent law rewards conception, which may not always equate to time spent or even level of difficulty of the work.

A person can be an inventor even if his or her contribution is relatively small. In fact, a person will be an inventor even if he or she only contributed to one of the features of one of the patent application’s claims. Because of this, it’s important to revisit the inventor list throughout the patent application process, in case claim amendments prompt a need to change the list of identified inventors.

[Image credit:  Ali Gokhan]

Will your patent assignment document satisfy new European Patent Office requirements?

19469909 - signing a document in the officeEffective November 1, 2016, new European Patent Office (EPO) Examination Guidelines governing the transfer of European patent applications will take effect. The new Guidelines make two changes that transacting parties need to know:

  1. the assignment document must include the signatures of both parties (i.e., assignor and assignee); and
  2. the assignment document must include the precise job title of each person who signs the document.

In the past, it was common for a patent holder to execute an assignment in favor of an assignee, without the assignee signing the document. Under the new Guidelines, the EPO will no longer accept an assignment document that uses the single-signature format.

In the past, some assignment documents would list the signing party as something like “authorized representative.” This EPO will no longer accept this practice, either.

The new Guidelines only affect the transfer of pending applications, not granted patents.  However, transacting parties should consider following the new Guidelines in all patent assignments, since the general contract laws of several European countries (including Great Britain and France) typically require both parties to sign a contract. The new Guidelines are also consistent with Article 72 of the European Patent Convention, which states that an assignment of a European patent application requires “the signature of the parties to the contract” (emphasis added).

(Thanks to my Fox Rothschild partner Marilou Watson for bringing this change to my attention.)

[Image credit:  Oleksandr Nebrat]

Federal Circuit invalidates three software patents; Judge Mayer calls for ban on all software patents

In the past few months, the Federal Circuit reversed a two-year trend of overturning software patents by publishing three decisions that outlined various parameters in which software can be eligible for patenting.  In those decisions (described in previous IP Spotlight posts published here and here) the court cautioned that not all improvements in computer-related technology are inherently abstract.  It also said that when assessing patent-eligibility, one must be careful to not use patent-eligibility to invalidate a claim when the real issue with the claim is obviousness.

A new opinion from the Federal Circuit sets some boundaries in the other direction, and limits how far software patent holders can push the boundaries of patent-eligibility. In Intellectual Ventures I LLC v. Symantec Corp., the court found certain claims of three software patents to be invalid. The patents were US 5,987,610 (directed to computer virus screening methods), US 6,073,142 (directed to automated analysis of e-mail messages) and US 6,460,050 (directed to a system for identifying distributed content).

The court drew an analogy between the representative claim of the ‘142 patent and a corporate mailroom that receives correspondence and uses business rules to define actions to be taken based on the application of the rules to the correspondence. The court found this claimed use of a “rule engine” to be a “conventional business practice” and noted that “with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human.”

In the case of the ‘050 patent, the court found that the representative claim was directed to nothing more than “[c]haracterizing e-mail based on a known list of identifiers.”

The ‘610 patent was directed to a virus screening method.  The court noted that this patent “involves an idea that originated in the computer era – computer virus screening.” Nonetheless, the court said that “[p]erforming virus screening was a long prevalent practice in the field of computers” and that the representative claim “does not claim a new method of virus screening or improvements thereto.” The court also noted that “[j]ust as the performance of an abstract idea on the Internet is abstract,  so too the performance of an abstract concept in the environment of the telephone network is abstract.”

To understand the boundaries of what the Federal Circuit considers to be patent-eligible, the court’s analysis of the broad claims of the ‘142 and ‘050 patents can be compared to the court’s recent decisions that found claims directed to discrete, technical solutions to be patent-eligible.  However, the court’s analysis of the ‘610 patent arguably conflicts with its recent statements in Bascom Global Internet Services, Inc. v. AT&T Mobility et al., where the court cautioned that one should not use patent-eligibility to reject a claim when the real issue is obviousness.  Although not expressly stated in the decision, the court may have actually considered the possible pre-emptive effect of the claims,  as it did in recent cases such as Bascom Global and McRO, Inc. v. Bandai Namco Games America, Inc.

Notably, in a concurring decision Judge Mayer expressed a hard line view against software patents:  “claims directed to software implemented on a generic computer are categorically not eligible for patent.” Notwithstanding the Supreme Court’s statement to the contrary in Alice v. CLS Bank, Judge Mayer further argued that “[s]oftware is a form of language,” and that patents such as those at issue in the case “run afoul of the First Amendment” by “constricting the essential channels of online communication.”

Judge Mayer was not part of any of the court’s panels that upheld software patents earlier this year. Judge Mayer’s comments, while certainly provocative, do not reflect the overall direction of either the Federal Circuit or the Supreme Court. Although the court is unlikely to follow his call for all-out ban on software patents, it may do well to consider his request to “provide much-needed clarity and consistency in our approach to patent eligibility.”

Federal Circuit: results are ineligible for patenting, but processes for achieving a result can be eligible

The Federal Circuit continued to refine the boundaries of patent-eligibility of software in 2016 with a new decision, McRO, Inc. v. Bandai Namco Games America, Inc. (Sept. 13, 2016), in which the court assessed whether claims directed to a method of automatically animating lip synchronization and facial expression of 3D characters are patent eligible.

The claims at issue were fairly discrete.  A representative claim of the patent at issue was:

A method for automatically animating lip synchronization and facial expression of three dimensional characters comprising:

obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;

obtaining a timed data file of phonemes having a plurality of sub-sequences;

generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;

generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and

applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.

The court first cautioned that the courts must “‘avoid oversimplifying the claims’ by looking at them generally and failing to account for the specific requirements of the claims…. Whether at step one or step two of the Alice test, in determining patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps.”

The court also noted that it is important to distinguish between claims directed to a result, rather than claims directed to specific methods of accomplishing the result: “a patent may issue ‘for the means or method of producing a certain result, or effect.’”

In the claims at hand, the court found that “[b]y incorporating the specific features of the rules as claim limitations, claim 1 is limited to a specific process … and does not preempt approaches that use rules of a different structure or different techniques.”

The new decision can serve as a useful guide for patent applicants when drafting software-implemented method claims.  The decision indicates that if the claims are directed to a result, however accomplished, then they are unlikely to be patent-eligible.  However, if the claims are directed to a discrete method of achieving a result, they may be patent-eligible even if implemented on a general purpose computer.

[A summary of all of the Federal Circuit decisions that found software to be patent eligible, as well as most district court and Patent Trial and Appeals Board decisions with similar results, is available at this post on IP Spotlight.]

 

Federal Circuit finds Internet content filtering patent eligible after Alice

For the second time in two months, the Federal Circuit has issued a decision that describes a situation in which a software invention can be eligible for patenting.

In Bascom Global Internet Services, Inc. v. AT&T Mobility et al., the court vacated and remanded a district court’s decision that found a content filtering system invention to be not patent-eligible.

The patent at issue covered a system by which a remote ISP server filters content that a client computer requests from a website. Claim 1 of the patent is directed to:

1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
  a local client computer generating network access requests for said individual controlled access network accounts;
  at least one filtering scheme;
  a plurality of sets of logical filtering elements; and
  a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

The Federal Circuit passed on considering whether the claims were directed to an abstract idea, but instead focused on the second prong of the Alice v CLS Bank patent-eligibility analysis and found the claims to include an inventive concept. The Federal Circuit noted that “[t]he claims do not merely recite the abstract idea of filtering content along with the requirement to perform it on the Internet, or perform it on a set of generic computer components…nor do the claims preempt all ways of filtering content on the Internet; rather, they recite a specific, discrete implementation of the abstract idea of filtering content.”

The court also cautioned against confusing patent-eligibility with obviousness: “The district court’s analysis in this case … looks similar to an obviousness analysis under 35 U.S.C. 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”

The decision closely follows the Federal Circuit’s recent decision in Enfish LLC v. Microsoft Corporation, in which the court cautioned against a broad interpretation of Alice v. CLS Bank as holding that all improvements in computer-related technology are inherently abstract.

For a summary of more Federal Circuit, district court, and PTAB decisions that have found software patents to be eligible for patenting since Alice, click here.

Thanks to my colleague Brienne Terril for her help writing this post.

Physically impossible, yes. But is it still obvious?

A recent Federal Circuit decision held that a patent directed to a tool attachment for demolition equipment was obvious in view of two prior art references. The court reached this conclusion even though it did not deny that the proposed combination was physically impossible.

FIG 1 489 patentIn Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments, LLC (Fed. Cir. June 15, 2016), the court reviewed certain claims of the patent, which included various features for attaching and detaching jaw sets from a demolition tool. The Patent Trial and Appeals Board found the patent to be obvious based on two prior patents:  one covering a different jaw attachment system, and the other describing a convertible bucket attachment for an excavator.

The patent holder argued that the proposed combination would render the prior art devices inoperable. The court did contradict this assertion. In fact, the court conceded that the combination “may impede the quick change functionality” disclosed in the first patent. Nonetheless, the court agreed with the PTAB and found it to be irrelevant:  “it is not necessary that [the prior art] be physically combinable to render obvious the [‘489 patent].” The court also quoted a 1983 decision stating that “the criterion [is] not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”

Notably, the court did not explain how its decision could be reconciled with certain other conflicting precedent. For example, previous Federal Circuit decisions held that if a combination of two references would render one of them unsuitable for its intended purpose, the prior art then teaches away from the combination. In re Gordon, (Fed. Cir. 1984). In fact, in cases as recent January 2016’s In re Urbanski, a different panel of Federal Circuit judges held: “[i]f references taken in combination would produce a ‘seemingly inoperative device,’… such references teach away from the combination and thus cannot serve as predicates for a prima facie case of obviousness.”

The Federal Circuit’s conflicting decisions leave open substantial questions about the effect that impossibility and inoperability have on obviousness.