717 Madison Place

Just a heads up to those of you thinking of conducting a hearing or personal interview at a USPTO facility — depending on which state you hail from, your driver’s license may not be sufficient for access.  Practitioners visiting the USPTO from Alaska, American Samoa, Arizona, Kentucky, Louisiana, Maine, Massachusetts, Minnesota, Montana, New York, Oklahoma, and Washington are at risk. See the PTO announcement below. [Link]

_____________________________________________________________

USPTO to Institute New Visitor Policy Effective August 4, 2014

As of August 4, 2014, the U.S. Patent and Trademark Office (USPTO) will be instituting new access control procedures that may affect visitors to the USPTO campus in Alexandria, Virginia, as well as visitors to USPTO’s satellite offices in Denver and Detroit.

These changes are the result of the Federal Government’s enforcement of the REAL ID Act, which enacts one of the key recommendations of the 9/11 Commission.  The Act establishes minimum security standards for state-issued driver licenses and identification cards and prohibits Federal agencies from accepting those documents for official purposes unless the Department of Homeland Security (DHS) determines that the state meets the minimum standards.

As of April 21, the following states do not meet the REAL ID standards:

• Alaska
• American Samoa
• Arizona
• Kentucky
• Louisiana
• Maine
• Massachusetts
• Minnesota
• Montana
• New York
• Oklahoma
• Washington

Visitors to the USPTO with state issued identification from these states must present alternate forms of identification to facilitate access.  Three of the states listed above offer an Enhanced Driver’s License that is identifiable by an American flag on the license; they are New York, Minnesota, and Washington.  USPTO will accept the Enhanced Driver’s Licenses from those states.

DHS currently accepts other forms of Federal-issued identification in lieu of a state-issued driver’s license, such as a:

• Passport
• Passport card
• DoD’s CAC
• Federal agency HSPD-12 ID
• Veterans ID
• Military dependents ID
• Trusted Traveler card – Global Entry, SENTRI, or NEXUS
• Transportation Workers Identification Credential (TWIC)

For visitors using state-issued ID to access the USPTO, only driver’s licenses or identification cards from states that meet Federal standards will be honored.  USPTO will continue to accept other forms of government-issued identification, including Federal employee badges, passports, military identification cards, or Enhanced Driver’s Licenses as noted above.

If visitors do not have acceptable identity documents, the person to be visited at USPTO will need to provide an escort in order for the visitor to access the USPTO. The visitor must be escorted at all times while in USPTO secured areas.

For additional information about the REAL ID Act, please visit www.dhs.gov/secure-drivers-licenses.

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The Hill-Rom v. Stryker case decided in June has not gotten a lot of coverage.  There are some interesting portions of the opinion that will appeal to patent prosecutors.

Present Invention

Judge Moore, writing for the court, gave a summary of recent case law and when the use of the term “present invention” can be limiting:

Disavowal requires that “the specification [or prosecution history] make[] clear that the invention does not include a particular feature,” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001), or is clearly limited to a particular form of the invention, Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1330 (Fed. Cir. 2009) (“[W]hen the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment.”) (quotation omitted). For example, we have held that disclaimer applies when the patentee makes statements such as “the present invention requires . . .” or “the present invention is . . .” or “all embodiments of the present invention are . . . .” See Regents of Univ. of Minn. v. AGA Med. Corp., 717 F.3d 929, 936 (Fed. Cir. 2013); Honeywell Int’l, Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1316-19 (Fed. Cir. 2006); SciMed, 242 F.3d at 1343-44;Astrazeneca AB v. Hanmi USA, Inc., 554 F. App’x 912, 915 (Fed. Cir. 2013) (nonprecedential). We have also found disclaimer when the specification indicated that for “successful manufacture” a particular step was “require[d].” Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361, 1367 (Fed. Cir. 2007) (“Those statements are not descriptions of particular embodiments, but are characterizations directed to the invention as a whole.”). We found disclaimer when the specification indicated that the invention operated by “pushing (as opposed to pulling) forces,” and then characterized the “pushing forces” as “an important feature of the present invention.”SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262, 1269-70 (Fed. Cir. 2007). We found disclaimer when the patent repeatedly disparaged an embodiment as “antiquated,” having “inherent inadequacies,” and then detailed the “deficiencies [that] make it difficult” to use. Chicago Bd. Options Exch., Inc. v. Int’l Sec. Exch., LLC, 677 F.3d 1361, 1372 (Fed. Cir. 2012) (“[T]he specification goes well beyond expressing the patentee’s preference . . . and its repeated derogatory statements about [a particular embodiment] reasonably may be viewed as a disavowal . . . .”). Likewise, we found disclaimer limiting a claim element to a feature of the preferred embodiment when the specification described that feature as a “very important feature . . . in an aspect of the present invention” and disparaged alternatives to that feature. Inpro II Licensing, S.A.R.L. v. T-Mobile USA Inc., 450 F.3d 1350, 1354-55 (Fed. Cir. 2006).

There is no such disclaimer or lexicography here. There are no words of manifest exclusion or restriction. The patents-in-suit do not describe the invention as limited to a wired datalink. There is no disclosure that, for example, the present invention “is,” “includes,” or “refers to” a wired datalink and there is nothing expressing the advantages, importance, or essentiality of using a wired as opposed to wireless datalink. Nor is there language of limitation or restriction of the datalink. Nothing in the specification or prosecution history makes clear that the invention is limited to use of a cable as a datalink. Absent such language, we do not import limitations from the specification into the claims.

At another point in the opinion, Judge Moore, writing for the court, noted with respect to a different claim term:

The fact that the specification indicates that in one embodiment, messages are sent to the wall interface unit “in accordance with the present invention,” does not mean that a wall interface unit must be present in all embodiments of the invention.

During oral argument, Judge Moore made the following comments about “embodiments of the present invention”:  [Listen].

Boilerplate/Heading

The opinion also took into account boilerplate, as well as a heading from the specification.  Namely, the opinion stated:

In fact, this specification states that the figures depicting the use of a wired datalink merely “illustrate embodiments of the invention.” `038 patent col. 4 ll. 59-65; see also id. col. 5 ll. 30-31 (“DETAILED DESCRIPTION OF SPECIFIC EMBODIMENTS”); id.col. 22 ll. 20-31 (the “description of various embodiments” is not intended “to restrict or in any way limit the scope of the appended claims to such detail”).

I’ve reproduced these sections below.

What particularly caught my eye was the mention of the heading “Detailed Description of Specific Embodiments.”  I think many prosecutors these days follow the philosophy of just using the heading “Detailed Description.”  You can judge for yourself  in view of this case whether the Federal Circuit has given a stamp of approval to “Detailed Description of Specific Embodiments” as being non-limiting.

Doctrine of Claim Differentiation

The CAFC has been a little bit schizophrenic in how it treats the doctrine of claim differentiation.  In the Hill-Rom v. Stryker oral argument, Judge Schall had the following comments about the role of the doctrine of claim differentiation after Phillips v. AWH:  [Listen]. In the Hill-Rom opinion, Judge Moore, writing for the court, noted that the doctrine of claim differentiation creates a presumption that a limitation added by a dependent claim is not required by the independent claim:

The only distinction between claim 1 and claim 2 is the limitation that the “datalink” is a wired datalink. See also id.claims 10, 18. “[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim.” Liebel-Flarsheim, 358 F.3d at 910. This presumption is especially strong where the limitation in dispute is the only meaningful difference between an independent and dependent claim. Id. Of course, claim differentiation is not a hard and fast rule, and the presumption can be overcome by a contrary construction required by the specification or prosecution history. Seachange Int’l, Inc. v. C-COR, Inc., 413 F.3d 1361, 1369 (Fed. Cir. 2005). However, nothing in this specification or prosecution history rebuts the presumption established by the doctrine of claim differentiation.

Hill-Rom v. Stryker, __ F.3d __ (Fed. Cir. 2014).

Note also what the Phillips v. AWH en banc court said about the DOCD:

Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Vitronics, 90 F.3d at 1582. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.Cir.2001); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed.Cir.1997). Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed.Cir.1991). For example, 1315*1315 the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004).

Phillips v. AWH, 415 F.3d 1303, 1314-15 (Fed. Cir. 2008).

In contrast to Hill-Rom v. Stryker, a panel in a recent opinion made no reference to the DOCD presumption.

We now turn to the extent it should inform the claim

construction. Albecker’s position is that “if claim 11

depends on claim 10, it is axiomatic that claim 10 is broad

enough to include embodiments that have a top cushion

which is integral and continuous with the foundation.”

Appellant’s Br. 8. This is essentially a claim differentiation

argument. And, importantly, “[c]laim differentiation

is a guide, not a rigid rule.” Laitram Corp. v. Rexnord,

Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991)) (quoting Auto

giro Co. of Am. v. United States, 384 F.2d 391, 404 (Ct. Cl.

1967)); see also Seachange Int’l, Inc. v. C–COR, Inc., 413

F.3d 1361, 1369 (Fed. Cir. 2005) (reiterating that claim

differentiation is “not a hard and fast rule and will be

overcome by a contrary construction dictated by the

written description or prosecution history” (citation

omitted)). Thus, our task is to determine if the evidence

supporting the district court’s construction is strong

enough to overcome Albecker’s claim differentiation

argument.

Albecker v. Contour Products, Inc., 2014-1318 (Fed. Cir. Aug. 7, 2014).

.

The opinion in Albecker later concludes:

Accordingly, we hold that the presence of claim 11 is

insufficient to overcome the strong evidence in the claims,

specification, prosecution history, and reexamination

record that the district court’s construction is correct.

Albecker v. Contour Products, Inc., 2014-1318 (Fed. Cir. Aug. 7, 2014).
You can read the Hill-Rom v. Stryker opinion [here].
You can listen to the Hill-Rom v. Stryker oral argument: [here].

For more on the Hill-Rom case, see Ryan Alley’s blog:  [Link].

You might have noticed last week that the PTAB designated a ruling concerning the AIA as “precedential.”  [Opinion].   This is the first ruling concerning the AIA to be given precedential status by the PTAB.  It is interesting to note that two of the three judges on this opinion hail from the Denver office of the PTAB.  The Denver PTAB moved into its permanent offices just recently (on June 30th); so, it is good to see the judges already blazing new trails through the AIA forest.

Michelle Lee appeared yesterday before the U.S. House of Representatives Committee on the Judiciary.  You can watch it here:

Broadcast live streaming video on Ustream

Judge Gajarsa made a cameo appearance at the Federal Circuit recently.  He was present to make a motion for the admission of his son to the Federal Circuit bar.  His son, Robert Gajarsa, has apparently clerked for Judge Prost and Judge Chen, as well as Judge Kent Jordan of the Third Circuit.  [Listen].

The Federal Circuit issued a Rule 36 affirmance recently in the case of In re Morrison.  At the heart of the discussion during much of the oral argument was the case of In re Weiler.  The Patent Office explained that In re Weiler supports the proposition that (1) if an Applicant’s application receives a restriction requirement for inventions A and B and (2) the Applicant elects A and only pursues a divisional application for B, (3) the Applicant/Patent Owner of patents for A and B may not use the reissue statute to pursue a third and distinct invention, C.  While most patent attorneys will say — no, that’s ludicrous — such is In re Weiler.  [Listen].

The panel comprised of Judges Moore, O’Malley, and Clevenger questioned the logic behind In re Weiler during the oral argument.   For example, Judge Clevenger pointed out why should restriction practice, which exists merely for the convenience of the Patent Office, deprive a patent owner of a statutory right grounded in the reissue statute? [Listen]. Nevertheless, the associate solicitor from the Patent Office doggedly defended In re Weiler. [Listen] and [Listen]. If you were curious, In re Weiler is not cited in the MPEP.

Restrictions have been relatively common in the biotech arts for quite some time.  Anectdotal evidence suggests that restrictions are on the rise in the electrical and computer arts in recent years.

You can listen to the entire oral argument of In re Morrison [here].

Today’s Federal Circuit opinion in H-W Technology, L.C. v. Overstock.com, Inc., ___ F. 3d ___ (Fed. Cir. 2014) is of interest for at least two reasons.   For one, the case adds to the court’s growing body of case law that holds a claim invalid when the claim includes both method and apparatus claim elements.  In today’s opinion, Chief Judge Prost notes:

As noted by the district court, this case is very similar to two cases, IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005), and In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011). In each of those cases this court held claims indefinite for combining two classes of invention.

The claim at issue in IPXL is reproduced below:

The system of claim 2 [including an input means]
wherein the predicted transaction information
comprises both a transaction type and transaction
parameters associated with that transaction type,
and the user uses the input means to either change
the predicted transaction information or accept
the displayed transaction type and transaction
parameters.

IPXL, 430 F.3d at 1384 (citation omitted).

The IPXL court reasoned as follows:

[I]t is unclear whether infringement of [the claim]
occurs when one creates a system that allows the
user to change the predicted transaction information
or accept the displayed transaction, or
whether infringement occurs when the user actually
uses the input means to change transaction
information or uses the input means to accept a
displayed transaction. Because [the claim] recites
both a system and the method for using that system,
it does not apprise a person of ordinary skill
in the art of its scope, and it is invalid under section
112, paragraph 2.

Id.

Similarly, the court in In re Katz stated:

Like the language used in the claim at issue in
IPXL (“wherein . . . the user uses”), the language
used in Katz’s claims (“wherein . . . callers digitally
enter data” and “wherein . . . callers provide . . .
data”) is directed to user actions, not system capabilities.

In re Katz, 639 F.3d at 1318.

The present case falls squarely within the IPXL and
In re Katz holdings. Here, the disputed language (“wherein
said user completes . . .” and “wherein said user selects
. . .”) is nearly identical to the disputed language in
those cases. And, as in those cases, it is unclear here
when infringement would occur. Claim 17 is thus indefinite.

H-W Technology, slip opinion at pp. 12-13.

Also of note is the attention paid by the court to the use of optional language in the patent specification.  Judge Prost wrote for the court:

Regardless of whether this excerpt clearly contains the missing limitation, “no-contact transactions” appear to be optional premium listing services. See id. col. 22 ll. 14–20 (“The services may be categorized according to baseline directory services 1901, premium listing services 1902, and advertising services 1903. A description of the services that can be offered under each category and how these are supported by converged communications content distribution platform owner 1204 (FIG. 12) are described below.” (emphasis added)). The optional nature of such services negates any argument that such a limitation in the claim is implied as necessary to the invention. See Phillips, 415 F.3d at 1323 (warning against “importing limitations from the specification into the claims”).

H-W Technology, slip opinion at pp. 7-8.

You can read the court’s opinion here: [link].

I stumbled across an article the other day that noted unusual collective nouns for animals.  For example, a group of crows is referred to as a “murder of crows.”   Some other examples are  a “coalition of cheetahs,” a “convocation of eagles, a “mob of kangaroos,”  an “unkindness of ravens,” a “drove of asses,” and an “embarrassment of pandas.”

In the patent community, we don’t really have any collective nouns for patent professionals.  So, I thought it might be good to get the ball rolling.  Here are some possibilities with some left blank for you to exercise your imagination.

A shrewdness of patent prosecutors.  (FYI, “shrewdness” is also used for a “shrewdness of apes.”)

An ambush of patent litigators.  (An “ambush of tigers” is already in use.)

A gauntlet of patent trolls.

A bellowing of patent bloggers.

A cacophony of patent blog commentators.

A wisdom of PTAB judges.  (“Wisdom” is currently used for a “wisdom of wombats.”)

A __________ of Federal Circuit judges.

A __________ of Supreme Court justices espousing on 35 U.S.C. §101.

A ___________of Federal Circuit clerks.

A ___________ of patent law professors.

The Supreme Court’s recent opinion in Alice v. CLS has been covered by other blogs; so, there is no need to summarize it here.  Some random thoughts did occur to me, however.

1)  Most humorous statement from the opinion:  “In any event, we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Alice v. CLS, __ U.S. ___ (2014)(slip opinion at page 10).

Of course not — articulating a test for an “abstract idea” might be too helpful to the judiciary, the patent bar, inventors, entrepreneurs, investors, and the economy.

2)  In the Court’s opinion, the Court indicated that method and apparatus claims can be equivalents for §101 purposes.  Yet, under §271, the Federal Circuit has noted that method and apparatus claims can convey different rights.  For example, in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), the Federal Circuit noted that apparatus claims could be infringed with some claim elements located outside of the United States, while corresponding method claims must be performed entirely within the United States.  This is but one example of how method and apparatus claims protect different subject matter and are not simply one and the same.

3)  The determination of patent eligible subject matter has been termed a question of law determined by underlying questions of fact. See Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992). Judge Lourie recently observed in the oral argument of HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014) that the patent examination process is grounded in citation of references and that the role of the judiciary in taking judicial notice of facts is relatively limited.  For example, during the oral argument of HIMPP, Judge Lourie remarked:

We have an examination system based on citation of references.  I may have used the word ‘slippery slope’ already.  But, I worry about that — where an examiner who is of some skill and training in a particular art could simply say ‘Aha, I think, I think, and it is my common knowledge . . . .’ And, they start rejecting claims based on what they ‘think.’  Isn’t that a serious departure from our system of citation of references to reject claims?  [Listen]

It doesn’t seem to me to be the function of the appellate court to take judicial notice of the ordinariness of certain decided claim limitations.  We can take judicial notice that ‘today is Wednesday’ and ‘we had snow earlier in the week’ — I’m glad you made it through the snow — but, we don’t make rejections based on judicial notice of . . . finding a claim limitation to be common sense. [Listen]

So, if the PTO takes Judge Lourie’s comments to heart, it seems the battle, during examination at least, will turn on to what extent a patent examiner can rally forth evidence that an abstract idea is shown by cited references.

4)  In the future, you might see certain industries pursuing bifurcated prosecution, e.g., filing applications with apparatus claims initially and then pursuing method claims via continuations — or an analogous prosecution strategy.

The Denver satellite office for the US Patent and Trademark Office will be opening next week.  My understanding is that the Denver office will be the first office outside of Alexandria to have a hearing room for PTAB proceedings.  The Denver office will be located on the fourteenth floor of the Federal Building in downtown Denver.

If your travels find you in Denver, you might be interested in some of the events in honor of the opening.  There is a gala on June 30th at Wings Over the Rockies where 700-800 people are expected to attend.  On July 1st, a CLE will take place that includes Hal Wegner addressing recent Supreme Court decisions, Steve Kunin discussing appeals and pre-appeal brief conferences, and Chief Judge James Smith, PTAB judge Dr. Patrick Boucher, and PTAB judge K Kalan discussing post-grant procedures of the PTAB.  The link for more program details is available here  [Link].

I noticed that the BNA published a copy of the May 23rd speech where Chief Judge Rader announced that he was stepping down as Chief Judge.  You can read his speech [here].

The Prost era at the Federal Circuit began today with Judge Dyk congratulating the new Chief Judge on behalf of the other members of the Federal Circuit: [Listen].

From the Federal Circuit Announcements page:

CIRCUIT JUDGE SHARON PROST ASSUMED THE POSITION OF CHIEF JUDGE OF THE FEDERAL CIRCUIT ON MAY 31, 2014

On Saturday, May 31, 2014, Circuit Judge Sharon Prost succeeded Chief Judge Randall R. Rader as the seventh Chief Judge of the Federal Circuit Court of Appeals. Chief Judge Prost was appointed to the Federal Circuit in 2001 by President George W. Bush.
Chief Judge Prost has 40 years of government service working in all three branches of the federal government. In the Executive Branch, she served as an attorney at the Federal Labor Relations Authority and the Internal Revenue Service, and as both Associate Solicitor and Acting Solicitor at the National Labor Relations Board.
In the Legislative Branch, Judge Prost was Chief Labor Counsel for the Minority of the Senate Committee on Labor and Human Relations, and Minority Chief Counsel, Deputy Chief Counsel and Chief Counsel of the Senate Judiciary Committee. Judge Prost received a B.S. from Cornell University in 1973, an M.B.A. from The George Washington University in 1975, a J.D. from the Washington College of Law, American University in 1979, and an LL.M. from The George Washington University School of Law in 1984.

With Chief Judge Rader stepping down as Chief Judge later this month, it would appear that the line of succession for Chief Judge will be 1) Judge Prost; 2) Judge Moore; and 3) Judge Chen.  This assumes that Judge Prost serves until her 70th birthday and that Judge Moore serves as Chief Judge for a full seven year term.  Incidentally, it appears from Judge Prost’s Wikipedia entry that she had a birthday this past Saturday.  So, she will turn 70 a week shy of a full seven year term.  Chief Judges may serve a seven year term or until they reach the age of 70.

The IPBiz.blogspot.com site noted that David Kappos has an article in today’s Detroit Free Press.  I thought Mr. Kappos’ article might interest readers; so, here is the link: [Link].