Overcoming Sect. 101 Rejections: USPTO Guidance, Recent Decisions to Meet Sect. 101 Patent Eligibility Requirements


Maier & Maier is pleased to announce that distinguished partner, Stephen Kunin, will be speaking in an upcoming Strafford live video webinar, “Overcoming Sect. 101 Rejections: USPTO Guidance, Recent Decisions to Meet Sect. 101 Patent Eligibility Requirements” scheduled for Tuesday, April 27, 1:00pm-2:30pm EDT.

We encourage anyone interested in Section 101 issues at the USPTO to tune in.  The panel will review case law, USPTO guidance, and offer response strategies.

For more information or to register >


USPTO Extends AFCP 2.0 Until September 30, 2019

Maier & Maier

The U.S. Patent Office announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) will be extended another year. Originally implemented in May 2013, the program allows for amendments and responses for the examiner’s consideration to be submitted after a Final Office Action has been sent. Prior to the implementation, applicants were limited to filing appeals or Requests for Continued Examination, both likely to be more costly options.

Of the thousands of AFCP requests submitted, approximately 25% have resulted in allowance, which, when combined with the usually lower cost of filing compared to alternatives, represents an intriguing option for those facing Final Rejections.[1] More information on the program is available at the PTO website here.

[1] https://blog.juristat.com/2017/7/12/do-afcp-20-requests-actually-work

USPTO Addresses Expanded PTAB Panels With New Standard Operating Procedures

Maier & Maier

The USPTO’s Patent Trial and Appeal Board (“PTAB”) has issued two revisions to the Standard Operating Procedures with the stated goal of “increasing transparency, predictability, and reliability across the USPTO”.

The first, SOP 1, aims to provide clarity and certainty to the PTAB practice of expanded panels, which has come under criticism in recent years as “panel stacking”. The concern is over the possibility of the PTAB making strategic additions to Board Panels and targeting rehearing proceedings to sway the composition towards a desired outcome, which was even discussed amidst the recent Oil States proceedings in the Supreme Court.

In response to these concerns, the new procedures provide two key provisions: 1. a notice requirement and 2. a specific procedure for expanded panels.

Under the previous practice, the parties might not find out that there was an expanded panel until the decision was issued as there was no requirement to notify the parties. Not so anymore as SOP1 provides that the parties will be notified that the panel will be expanded and identify the Administrative Patent Judges who will be included on the expanded panel.

The updated procedures identify five parties who may suggest an expanded panel: Board members, patent applicants, petitioners, patent owners, and the Patent Business Unit. The Board members in the case submit their requests (or the requests they receive from one of the other eligible parties) along with reasoning (in the form of a  brief for an applicant’s, petitioner’s, or patent owner’s request) in the form of an email to PTABExpandedPanelRequest@uspto.gov. This account will be monitored and requests will be periodically brought to the Chief Judge for recommendation, and the Director for final approval.

It remains to be seen if these new procedures will do enough to curtail the concerns about the practice.

The second update, SOP2, creates a Precedential Opinion Panel (POP) at the PTAB which will “decide issues of exceptional importance” with “binding agency authority”. The POP will be composed of “Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.” The POP will review nominated routine decisions made by panels to designate them as precedential or informative as outlined in detail in the updated SOP. Anyone may nominate a decision to be precedential, and all nominations will be reviewed by a Screening committee before being presented to the POP.

The entirety of the PTAB’s Standard Operating Procedure and any updates thereto are available here.

USPTO Proposes Patent Fee Changes

Maier & Maier

The USPTO has published a Notice in the Federal Register of proposed patent fee changes for public comments.

The fee adjustments resulting from this effort will not be implemented until the January 2021 timeframe.  The proposed average five percent increase to fees is similar to fees rising by 1.6 percent annually over a three year period.

This proposal includes introduction of new fees, targeted adjustments to existing fees, and discontinuation of some fees.

New Fees

  1. One proposed new fee is a surcharge for filing in a non-DOCX format.  This will be a $400 fee, and will encourage applicants to use the DOCX format, and is intended to improve Office efficiency and future search capabilities.
  2. Another proposed new fee is an annual active patent practitioner fee of $340 (if filed electronically). Further, a discount will be offered to those who certify completion of continued legal education (CLE), reducing the fee to $240.
  3. A fee for non-registered practitioners to appear before the PTAB is proposed.

Adjustments to Existing Fees

  1. A significant increase (525%) to the surcharge for late payment of maintenance fees.  The fee is currently $160, but will be increased to $1000 for large entities.
  2. An increase from $900 to $2000 the fee to request expedited examination of a design application, to help the Office manage staffing for these services.
  3. Issue and maintenance fees will be restructured.  The current large entity maintenance fees are $1600 (3.5 years), $3600 (7.5 years), and $7400 (11.5 years), and the proposal increases them to $2000 (3.5 years), $3760 (7.5 years), and $7700 (11.5 years).
  4. Fees for America Invents Act (AIA) trials are proposed to increase by roughly 25% due to a variety of factors, including the Supreme Court decision in SAS Institute Inc. v. Iancu.

Discontinuation of Fees

Fees related to obtaining copies of Patent Grant and Patent Application Publication TIFF Images or Full-Text W/Embedded Images will be eliminated and the Office will instead provide these services, in a slightly modified form (i.e. electronic), for free.

Below is a summary table of the common fees for a large entity to illustrate some of the proposed changes.

As seen below, total filing costs for a patent application (large entity) will increase $1720 increase to $1820.

PTAB Designates 5 Decisions as Informative

Maier & Maier

The PTAB has designated five new decisions as informative, three on IPR practice procedure and two ex parte decisions (one on issue preclusion and one on claim construction):

Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013)

Here the Board provides guidance on foreign depositions, both on the location where they are taken and the language in which they are conducted. The Board emphasizes that “the parties are in the best position to determine the procedure by which the deposition is to be conducted” but provides 12 general guidelines for procedures to use for depositions in foreign languages covering such topics as 1). each sides’ right to bring an interpreter, 2). protocol for resolving disagreements between interpreters on their respective interpretations, and 3). notice requirements on documents which will be “sight read” at the deposition. The full list is available in the decision linked above.

Ex parte Jung, 2016-008290 (PTAB Mar. 22, 2017)

In this appeal, the appellant challenged the examiner’s interpretation that the claim language “at least one of a connection branch and a contents connection list” required only ‘a connection branch’ OR ‘a contents connection list’ as opposed to requiring both of their presence. In their reversal, the Board applied the ruling from the Federal Circuit in SuperGuide Corp. v. DirecTV Enterprises, Inc., which explained that the plain meaning of ‘at least one of A and B’ is the conjunctive phrase ‘at least one of A and at least one of B.”[1] The Board explained that the plain meaning could have been rebutted with a demonstration that the other claims, specification, or the prosecution history necessitated a broader interpretation, but, absent such a showing, the examiner erred.

Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018)

In this decision, the Board offers an analysis on the ‘good cause’ standard for protective orders.  The Board denied a motion for a protective order without prejudice for failure to demonstrate that “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4), on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.”[2]

Colas Sols. Inc. v. Blacklidge Emulsions, Inc., IPR2018-00242, Paper 9 (PTAB Feb. 27, 2018)

The decision here applies to § 315 bars to institution in IPRs. Specifically, the Board found institution was barred when a petitioner has previously filed for a declaratory judgment of invalidity on the same patent.  Furthermore, the Board ruled that a motion for joinder could not save a petitioner from the statutory bar under § 315(a)(1). In its reasoning, the Board explains that while a § 315(b) time bar is specifically excluded in instances of joinder under § 315 (c), the statutory bar for § 315(a)(1) provides for no such exemption.

Ex parte Ditzik, 2018-000087 (PTAB Mar. 2, 2018)

Here, the Board upheld an examiner’s use of issue preclusion from a related invalidity finding against the applicant in District Court. In so doing, the Board found the following arguments by the appealing applicant accurate, but unpersuasive with respect to issue preclusion: 1). The fact that the claims are not the same in the proceedings; 2). The procedural possibility for the District Court ruling to be overturned; and 3). The PTO’s absence as a party from the District Court proceeding. While the Board did not find any of the following in this case, it allowed for potential rebuttals to issue preclusion when 1). The standard applied in the prior final decision might have caused a different outcome than before the Board; 2). Evidence available now was demonstrated to not be available at the time of the prior proceeding; or 3). There was otherwise not a ‘full and fair opportunity to litigate’ in the prior proceeding and the Board wishes to exercise its discretion despite the motivations of efficiency and consistency for issue preclusion.

Each decision is linked in the respective heading above for more information and reference, and a full list of all precedential and informative decisions is available here.

[1] 358 F.3d 870, 885-86 (Fed. Cir. 2004).

[2] 37 C.F.R. § 42.54(a).

IP5 Unveils New Pilot Program for Collaborative Search and Examination

Maier & Maier

On July 1, 2018, the IP5 (Patent Offices for the US, the EU, Japan, Korea, and China) launched a new pilot program, PCT CS&E, testing collaborative search and examination for the PCT.  The Pilot Program is currently scheduled to take a total of three years. In years one and two the IP5 will be conducting the collaborative Pilot Program, while the third year will revolve around studying its effects. 100 applications from each International Search Authority will be accepted to the Pilot Program over the first two years, for a total of 500 files total. The goal of CS&E is to increase efficiency for the respective Patent Offices and applicants.

An application submitted to the CS&E Pilot Program is first reviewed by the PCT ISA to verify the fulfillment of required CS&E criteria and other application formalities before acceptance. The application is then sent to the first ISA (one of the IP5) for a provisional search and provisional opinion, which are sent to the “Peer” offices of the other IP5 who provide any additional comment and contribution to the search. After all four of the other offices have reviewed and contributed, the first ISA compiles the cumulative work, and produces a Final International Search Report and Written Opinion.

The total PCT CS&E process is expected to take a maximum of 16 weeks from receipt by the first ISA to the Final International Search Report and Written Opinion (eight weeks for initial search, four weeks for peer review, and four weeks for final drafting and incorporation of peer review). With the additional review from the other four IP5 offices, applicants who are planning to file in the IP5 may expect to have more expedited national phases.

There have previously been two pilot programs where the USPTO coordinated with other offices in order to determine the most effective operational system for inter-office collaboration. The goal of improving efficiency for applicants and patent offices will be reviewed in the third year of the Pilot Program. Participation in the PCT CS&E must be requested at the time of the filing and can be requested either online or using a provided PDF form. For more information on the Pilot Program, see the USPTO’s information page here.

Stephen Kunin Joins Maier & Maier PLLC

Maier & Maier

July 2, 2018 (Alexandria, VA) Maier & Maier PLLC is proud to announce its newest addition to the firm, Stephen Kunin, the former Deputy Commissioner for Patent Examination Policy at the United States Patent and Trademark Office.

As an expert in patent law for over 48 years, Mr. Kunin is a highly respected member of the patent industry. One of the masterminds of the revisions to the Rules of Practice and Manual of Patent Examining Procedure, Mr. Kunin worked over 3 decades at the U.S. Patent Office, serving his final ten years as Deputy Commissioner for Patent Examining Policy, and winning 9 Medals (4 Gold) from the Department of Commerce, a Career Achievement Award from the USPTO, and a Reinventing Government Hammer Award from the Vice President, among other notable distinctions.

Mr. Kunin brings with him an expert level of knowledge in every aspect of prosecution and post-issuance proceedings, a highly strategic thought leader on the tactical advantages of post-grant procedures in lieu of traditional litigation, and his continued specialty as a highly sought consultant and expert witness on all matters relating to USPTO patent policy, practice, and procedure.

Timothy Maier, Managing Partner of Maier & Maier, commented that “Stephen Kunin has a deep well of knowledge on patent issues, starting with his time at the Patent Office and continuing today. He’ll be an invaluable resource to our firm and his expertise will help us provide our clients with the best service possible.”

Supreme Court Upholds IPR Proceedings; Rejects Partial Institutions

Maier & Maier

Two Supreme Court Decisions came down April 24, 2018 with potentially significant impacts on patent practice. First, in Oil States v. Greene’s Energy, the Court rejected Oil States’ Article III and 7th Amendment challenges to inter partes review (IPR) proceedings, declaring the proceedings constitutional under the public rights doctrine. Second, the Court ruled that Patent Trial and Appeal Board (PTAB) Final Written Decisions must address the patentability of all challenged claims if an IPR is instituted in SAS Institute v. Iancu, eliminating partial institutions.

Oil States Energy Services v. Greene’s Energy Group

After Oil States Energy Services sued Greene’s Energy Group for infringement in federal district court, Greene’s Energy challenged the patent at the PTAB, successfully arguing the patent was invalid. Oil States then appealed the decision to the Federal Circuit, challenging both the decision and the constitutionality of IPR proceedings at the PTAB as a whole. Oil States argued that patents were a private right and that actions revoking a patent must be limited to Article III courts before a jury, and alternatively that the Seventh Amendment requires a jury trial as patent validity was traditionally decided by a jury. Attempting to distinguish IPR proceedings from re-examination proceedings, which have previously been ruled constitutional, Oil States pointed out how the adversarial process of IPR proceedings mimicked the procedure of Article III courts, while re-examination mimicked the prosecution process at the PTO.

The Court’s 7-2 decision to uphold rested primarily on the finding that because patent rights are public rights, reconsideration of those rights need not be reviewed in an Article III court. Public rights are those “arising between the government and others, which from their nature do not require judicial determination and yet are susceptible of it.”[1] The Court then explained that to whatever extent patent rights are granted to a patent holder, they are statutory rights which cannot exceed the scope allowed by statute. The Court reasons that since the AIA is a statutory limitation of the patent rights, any rights granted to the patent owner are granted subject to continual review by the PTO and possible revocation.[2] Based on this construction reserving review for the PTAB, the Court resolved the Seventh Amendment challenge as moot, since it only applies when Congress has not properly assigned a matter to adjudication outside of an Article III tribunal.

Justice Gorsuch, joined by Justice Roberts, dissented from the opinion, specifically objecting to the conflation of the constitutional power of the executive to issue patents with the power to also revoke patents. He concludes his detailed history of the difference between those powers with an appeal to Article III’s purpose, explaining that “enforcing Article III isn’t about protecting judicial authority for its own sake. It’s about ensuring the people today and tomorrow enjoy no fewer rights against governmental intrusion than those who came before. And the loss of the right to an independent judge is never a small thing.”[3]

Despite these concerns, the Oil States decision has assured that any patent rights enjoyed today and tomorrow will be subject to review at the PTAB.

SAS Institute v. Iancu

SAS Institute challenged all 16 claims in ComplementSofts’s software patent in an inter partes review proceeding before the Patent Trial and Appeal Board (PTAB).  The PTAB instituted review on only some of the claims (claims 1 and 3-10).  The PTAB found claims 1, 3, and 5-10 invalid in the Final Written Decision, only upholding the validity of claim 4. SAS appealed this decision to the Federal Circuit, objecting to the PTAB’s failure to address all 16 challenged claims. The Federal Circuit upheld the PTAB in a 2-1 decision, which the Supreme Court has now reversed 5-4.

The majority relies on the plain language of the statute, the America Invents Act (AIA), in its ruling that the PTAB must address all challenged claims once it institutes an IPR. Justice Gorsuch, the author of the majority opinion, declared, “The statute, we find, supplies a clear answer: the Patent Office must ‘issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner.’ In this context, as in so many others, ‘any’ means ‘every.’”[4]

This holding will impact the PTAB’s procedures, taking away their discretion to partially deny institution on individual challenged claims where they do not find a ‘reasonable likelihood of success”. Justice Ginsburg emphasizes efficiency as a concern in her dissenting opinion, rhetorically asking “Why should the statute be read to preclude the Board’s more rational way to weed out insubstantial challenges?. . . the Court’s opinion offers no persuasive answer to that question, and no cause to believe Congress wanted the board to spend its time so uselessly.”[5]

The removal of the PTAB’s current institution practice puts Director Iancu’s plan for issuing updated procedural guidance to the PTAB in the spotlight moving forward, and emphasizes the importance of the multiple patent reform bills currently being debated in Congress as potential solutions.

Meanwhile, the Court has remanded this case to be decided in accordance with their statutory interpretation, and the outcome will bear watching as it continues.

[1] Ex parte Bakelite Corp., 279 U. S. 438, 451 (1929).

[2] Oil States Energy Services v. Greenes Energy Group, Slip Op. at 10-11. (April 24, 2018).

[3] Oil States Energy Services v. Greenes Energy Group, Slip Op. at 12. (April 24, 2018) (Justice Gorsuch, dissenting).

[4] SAS Institute v. Iancu, Director, United States Patent and Trademark Office, Slip Op. at 1 (April 24, 2018).

[5] SAS Institute v. Iancu, Director, United States Patent and Trademark Office, Slip Op. at 1 (April 24, 2018). (Justice Ginsburg, dissenting)

Federal Circuit Extends §101 to Cover Graphical User Interfaces in Core Wireless v. LG

Maier & Maier

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 2016-2684, 2017-1922 (Fed. Cir. Jan. 23, 2018), a panel of the U.S. Court of Appeals for the Federal Circuit (Moore, O’Malley, Wallach) upheld patent claims directed to a graphical user interface under 35 U.S.C. §101, concluding that the claims were not directed to a patent-ineligible abstract idea.

Core Wireless brought an action against LG in the Eastern District of Texas alleging infringement of U.S. Patent Nos. 8,713,476 and 8,434,020, having claims dealing with an application summary screen that is displayed while the one or more applications summarized are in an un-launched state. The District Court denied summary judgment based on 35 U.S.C. §101, and LG appealed.

The Federal Circuit began its analysis by determining that the claims of the two patents in question were directed to an “improved user interface,” a non-abstract idea, rather than the abstract idea of an index. Specifically, these claims were “directed to a particular manner of summarizing and presenting information in electronic devices.” For example, claim 1 required “an application summary that can be reached directly from the menu” and further limiting the application summary (such as having the application summary list a limited set of data with each of the data in the list being selectable to launch the respective application and enable the selected data to be seen within the respective application) as well as a particular manner of accessing the summary window and certain other limitations.

The Court analogized the case to other cases in which a computer-implemented claim was found eligible, such as Enfish, LLC v. Microsoft Corp., Thales Visionix Inc. v. U.S., Visual Memory LLC v. NVIDIA Corp., and Finjan, Inc. v. Blue Coat Systems, Inc., specifically noting that the claims in each of these cases were found to improve a computer or technological system, and were thus not abstract. (Just like in many of these cases, the Court looked to the patent specifications in order to determine what aspects of a computer the claims were directed toward improving.)

Once the §101 matter was resolved, the Court also heard the issue of non-infringement. This turned, in large part, on the Court’s interpretation of the phrase “unlaunched state” in the claims, which LG had (unsuccessfully) argued in the District Court should refer to a situation in which the applications were “not running” rather than “not displayed.” LG argued that it would not infringe if the applications were required to be “not running.” The court (minus Judge Wallach, who dissented on this point) sided with the District Court, finding that the District Court correctly construed “unlaunched state” as “not displayed.”

Importantly, the claims in this case were considered to be an improvement to computer technology because they improved the ability of a user to use the computer. In order to use prior art systems, users had to “drill down through many layers to get to desired data or functionality [which] could seem slow, complex and difficult to learn, particularly to novice users,” while the claimed invention, by contrast, was much more user-friendly. This effectively adds “user-friendliness” or “usability” to the list of innovations which can be an improvement to computer technology, significantly expanding the list of patent-eligible subject matter.

It has also historically been a little unclear as to how graphical user interface designs can be protected by intellectual property rights. There is a circuit split between the Ninth Circuit and other circuits as to whether GUIs are copyrightable subject matter, and past Federal Circuit jurisprudence as to their patentability has come down on both sides of the line. However, the vast majority of cases (such as, for example, Intellectual Ventures I LLC v. Erie Indemnity Co., Intellectual Ventures I LLC v. Capital One Bank (USA), and Internet Patents Corp. v. Active Network, Inc.) have found GUIs to be ineligible, while the one case that upheld a GUI patent claim (Trading Technologies Int’l v. CQG Inc) was a non-precedential opinion that dealt with an extremely detailed claim. This case provides applicants with a clear model to follow for future applications on interface technology or any similar technology.

Supreme Court Grants Certiorari in Oil States to Review Constitutionality of IPRs

Maier & Maier

On June 12, the Supreme Court granted certiorari in Oil States vs. Greene’s Energy Group, et al., a case dealing with the constitutionality of the post-grant challenge procedures established by the America Invents Act (AIA). The Federal Circuit, below, had upheld the constitutionality of these procedures.

The petition for writ of certiorari submitted by Oil States presented three questions:

  1. Whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether the amendment process implemented by the PTO in inter partes review conflicts with Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016), and congressional direction.
  3. Whether the “broadest reasonable interpretation” of patent claims – upheld in Cuozzo for use in inter partes review – requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent’s specification.

The Supreme Court granted certiorari only as to the first question.

The petitioner, Oil States, has based much of their argument on an 1898 decision from the Supreme Court, McCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S. 606 (1898). This decision held that “the Patent Office had no power to revoke, cancel, or annul” an issued patent, because once the patent has issued, “[i]t has become the property of the patentee, and as such is entitled to the same legal protection as other property.” Oil States charges that the USPTO has acted contrary to McCormick and has unconstitutionally revoked patents through the post-grant challenges made available under the AIA, such as inter partes review.

It is unclear how the Supreme Court will rule on this case. Several commentators have noted that the Supreme Court has, in the recent past, typically granted certiorari to Federal Circuit patent cases in order to overrule them; as the Federal Circuit upheld the constitutionality of these procedures, the Supreme Court may intend to strike them down. It is also noted that a majority of the Justices of the Supreme Court have adopted “private property” interpretations of patents in other cases, and as such they may find McCormick to be persuasive.

However, the constitutionality of post-grant procedures has been challenged in a number of cases, and the Supreme Court may have wished to take this case just to settle the issue. It is also noted that the facts of McCormick could be limited to the narrow facts of the case. When McCormick was decided, the USPTO did not have a revocation power expressly granted to them by Congress, and the USPTO now has such a power. The Supreme Court may decide that Congress can grant the USPTO jurisdiction over an issued patent and has properly done so.