Williamson v. Citrix Online, LLC and Means Plus Function Claims

Williamson v. Citrix Online, LLC (Fed. Cir. 6/15/2015) is an important decision that redefines functional claiming for US patent applications and patents. In Williamson, the Court reconsidered its prior holdings regarding when a claim recitation was to be construed as a means-plus-function limitation. A claim recitation that is construed to be a means-plus-function limitation is limited to the actual structure disclosed in the specification that performs the claimed function. If there is no adequate disclosure of such structure, then the claim is unpatentable/invalid due to lack of definiteness.

Williamson overruled its prior characterization that there was a 'strong' presumption that failure to recite the word "means" meant that a claim recitation was not a means-plus-function recitation. Williamson also overruled its prior requirement of a showing that a claim recitation that lacked recitation of the word "means" was also "devoid of anything that ...[could] be construed as structure," for the claim recitation to be a means-plus-function recitation.

Consequently, a substantially larger class of recitations will now be held to be means-plus-function limitations.

In order to avoid a claim recitation being a means-plus-function limitation, the claim should include recitation of structure that performs the recited function. In order to avoid the claim being held indefinite due the presence of a means-plus-function recitation, the specification including figures should include adequate disclosure of the structure corresponding to any claimed function.

Practice tip: patent applicants need to be aware of the requirement to disclose structure that performs each function which may appear in a claim, so that they have the option of claiming the structure instead of the function, and if they choose to recite a means-plus-function in a claim, the claim will not be found indefinite.

Expedited Patent Appeal Pilot

The USPTO has announced a new pilot program to expedite appeals pending before the Patent Trial and Appeal Board (PTAB). The goal of the Expedited Patent Appeal Pilot is to reduce the backlog of pending appeals, while also allowing applicants to prioritize their pending appeals. Many technology centers have average appeals pendency greater than 25 months. To accomplish these goals, the program allows an applicant with multiple pending appeals to expedite one appeal in exchange for withdrawing another pending appeal. The appeal to be withdrawn may be an appeal in an ex parte reexamination. However, given the special dispatch already accorded ex parte reexamination proceedings, including appeals, appeals in ex parte reexaminations are not eligible to be granted additional special status under the Pilot Program.

To qualify, a certification and petition must be filed through EFS-Web in the application for which special status is sought. The appeal to be made special must have a docketing notice mailed no later than June 19, 2015 and there must not be a request for an oral hearing, or any such request must be withdrawn without a refund. The petition must include a request to withdraw the other appeal for which a docketing notice was mailed no later than June 19, 2015 and which has not yet been taken up for decision. Both applications involved must be owned by the same party as of June 19, 2015, or must name at least one common inventor. Finally, the petition must be signed by a registered practitioner who has a power of attorney or authority to act on both applications involved. The petition fee of $400.00 is waived for all petitions to enter the Pilot.

The special status accorded any application under the Pilot Program will end after the decision on appeal. It is intended for a decision to be made on each petition within 2 months and for a decision on the appeal to be made within 4 months of special status being granted. The program will run until June 20, 2016, or until 2,000 petitions have been accepted.

A Look Into the Patent Trial and Appeal Board

The United States Patent and Trademark Office has tripled the size of its administrative court system since its role for adjudicating patent matters was greatly expanded by The America Invents Act. The Patent Trial and Appeal Board, known as the PTAB, forms an important decision making body for patent matters related to derivation proceedings, post-grant reviews (PGR's), inter partes reviews (IPR's), and covered business methods (CBM's). Due to the rapid growth of the PTAB and the relative mystery surrounding its composure, the USPTO recently published an article detailing its organizational structure.

The highest office of the PTAB is The Office of the Chief Judge, composed of a Chief Judge and a Deputy Chief Judge. The next level of PTAB management consists of the Vice Chief Judges Branch and a Board Executive Branch that each report to the Deputy Chief Judge. The Vice Chief Judges Branch is composed of two divisions with six unique sections of each division. A Lead Administrative Patent Judge, covering a broad technical focus or discipline, manages each section. Some sections focus primarily on appeals and others on trials. The Board Executive Branch consists of a Board Executive that manages an Operations Division consisting of over 75 members spanning five branches. These five branches offer support services for the PTAB. The operations divisions perform services for IT Systems, Data Analysis & Process Improvements, Administrative Management, and Case Management. The Case Management division is primarily responsible for Hearing and Paralegal operations.

The PTAB, currently involving over 300 people, is continuously expanding and more particularly defining its organizational structure and internal processes. The PTAB has judges based in all the regional offices from Detroit, Denver, Dallas, and Silicon Valley. Senior level executive members meet regularly to discuss the administration and evolution of the PTAB. Matters brought to Lead Judges from members of their division are raised to the group for consideration. The PTAB engages in several laudable efforts to keep the public informed of its processes and promote transparency of the organization. For example, the PTAB maintains a website to make new procedures, guidance, and decisions available. The Board hosts a bi-monthly webinar series known as "Boardside Chats" and regularly publishes articles. PTAB Personnel routinely engage the public for education and feedback at conferences, bar association meetings, and other events.

USPTO Announces Changes to PTAB Procedures

The United States Patent and Trademark Office has announced several revisions to the trial procedures of the Patent Trial and Appeal Board. The USPTO has broken its proposal into two stages, and is implementing what it calls a "quick-fix" reform package now, while preparing to implement a more substantive rule reform in the near future.

The "quick-fix" package serves to expand the page limits on motions to amend claims and on petitioners' reply briefs. Previously, both had been set at 15 pages, which many criticized as too low. Both will now be allowed to be up to 25 pages, which the USPTO hopes will allow patent owners to explain why their new claims are patentable and will allow patent challengers to adequately respond to a patent owner's response. Motions to amend may still include a claims appendix that can take them over this limit.

The changes under consideration for the more expansive reform include a pilot program under which petitions to institute proceedings would be reviewed by only one judge and, if a trial is instituted, two more judges who have not reviewed the petition would be added. Currently, petitions are reviewed by all three of the judges who would preside over a trial if the petition is instituted, which many have claimed allows for bias in proceedings and is unfair to patent owners. The PTAB is also considering a number of other revisions, such as further modifications to the motion to amend process, adjustments to the evidence that may be provided in the patent owner's preliminary response, and certain clarifications of the claim construction standard.

Oblon, McClelland, Maier & Neustadt L.L.P. Remain #1

Oblon, McClelland, Maier & Neustadt L.L.P. remain #1 on the Top Patent Firms list prepared by Intellectual Property Today . Timothy and Christopher Maier, of Maier & Maier, are the sons of Gregory Maier, a founding member of Oblon, McClelland, Maier & Neustadt L.L.P. Tim and Chris have used what they learned from their father's firm as a model to grow and manage the Maier & Maier firm. Having witnessed first-hand the operation of such a successful firm throughout their lives has proven an invaluable resource, and they congratulate Oblon, McClelland, Maier & Neustadt L.L.P. for their accomplishment.

You can view the entire Top Patent Firms list here:http://www.iptoday.com/issues/2015/03/top-patent-firms.asp.

Federal Circuit Restricts Patent Exhaustion Doctrine

In Helferich Patent Licensing v. NYTimes and JCPenney, the Federal Circuit restricted the scope of the patent exhaustion doctrine by holding that the doctrine only protects "authorized acquirers" of a device against patent infringement claims instead of putting the device itself outside the scope of patent protection. In Helferich, the Helferich company owned patents on both methods of providing content to cellular phones ("content claims") and methods of using those cellular phones ("handset claims"). Helferich authorized cell phone companies to sell handsets that practiced the handset claims of its patents, but went after certain other companies for providing content in a way that infringed the content claims of those same patents. These other companies, including the New York Times and several others, unsuccessfully argued that all claims of the patents had been exhausted with respect to the particular devices they provided content to, and were held liable for infringement.

This decision reinforces the value of drafting a wide variety of claims to cover an invention. If the patent may be infringed by third-party use, such as providing content to a device someone else owns, the patent owner may be able to seek a license from those infringers. However, it may also make patent exhaustion less simple and predictable, making it somewhat more dangerous to provide third-party content.

Federal Circuit Issues First IPR Opinion

The Federal Circuit has issued its first opinion from an appeal on the merits of an inter partes review, In re Cuozzo Speed Techs. In In re Cuozzo, the court held that the decisions of the USPTO to institute an IPR are final and cannot be appealed to the Federal Circuit, and that the USPTO's use of the broadest reasonable interpretation standard to interpret patent claims in IPRs was proper.

However, Judge Newman wrote a vigorous dissent, arguing among other things that the "broadest reasonable interpretation" standard should be used only in examination and that having different standards in IPRs and district court litigation reduces the value of IPRs as a litigation surrogate. This may encourage the Federal Circuit to review the case en banc.

Supreme Court Adopts More Deferential Standards For Claim Construction

In Teva Pharmaceuticals v. Sandoz, the U.S. Supreme Court adopted standards for claim construction that are more deferential to the claim constructions formulated by trial courts. Previously, the constructions of patent claims made by lower courts would be reviewed de novo in their entirety by the Federal Circuit and other appellate courts, which created a strong incentive for parties to appeal any unfavorable claim constructions.

Now, however, while trial court findings made on the basis of evidence intrinsic to a patent (such as its specification or prosecution history) will still use the old standard, trial court findings made on the basis of extrinsic evidence (such as other reference materials or expert testimony) will use the more deferential clear error standard. This may make it less likely that claim constructions will be overturned on appeal.

Induced Infringement Does Not Require Multiple Parties

In Promega Corp. v. Life Technologies Corp. (13-1011), a split Federal Circuit found that LifeTech did infringe the Tautz patent, which claimed a process for examining DNA samples. Promega is an exclusive licensee of the patent. LifeTech produced a component for a genetic testing kit in the U.S. and shipped the component to an overseas subsidiary, where the kit was put together. The kit was then subsequently distributed worldwide, including the U.S. LifeTech admitted to the distribution in the U.S. as infringing. However, a district court had ruled that LifeTech could not be liable for induced infringement because Patent Act section 271(f) required the involvement of a third party. Infringement under 271(f) would allow for damages based on worldwide sales.

The Federal Circuit disagreed. The Federal Circuit held that "[u]nder 35 U.S.C. § 271(f)(1), a party may infringe a patent based on its participation in activity that occurs both inside and outside the United States." Consequently, a third-party was not required for LifeTech to infringe under this theory.

Chief Judge Prost dissented-in-part, stating that Supreme Court precedent clearly required a third party for inducement liability.

Interim Guidance on Patent Subject Matter Eligibility

The USPTO has produced Interim Guidance on Patent Subject Matter Eligibility. These updated guidelines are in light of recent Supreme Court decisions, including Alice Corp. v. CLS Bank. The guidelines are for use by USPTO personnel to use when determining eligibility under 35 U.S.C. 101. The guidance is meant to supplement the Preliminary Examination Instructions, which were released in June, following the Alice Corp. case. The USPTO is seeking public comment on the guidance through March 16, 2015. The Interim Eligibility Guidance can be found here.

Federal Circuit Uses Alice Corp. v. CLS Bank to Uphold Dismissal of Ultramercial v. Hulu

The decision in Ultramercial, LLC v. Hulu, LLC, Case No. 10-1544 has been closely monitored since it was remanded by the Supreme Court. Prior to the Supreme Court's decision in Alice Corp., the Federal Circuit had twice previously found that the claims at issue were patent eligible. The Supreme Court first vacated and remanded the Federal Circuit's finding of validity in light of its Mayo v. Prometheus holding. On remand the Federal Circuit again found the claims valid. Subsequently, the Supreme Court remanded the case for reconsideration in view of its Alice Corp. holding. Now, on remand, the Federal Circuit determined that based on the precedent established by the Supreme Court in Alice Corp., the claims at issue were in fact patent ineligible. Therefore, the Federal Circuit upheld the district court's dismissal of the case.

The claims at issue were directed to a method of providing copyrighted works over the internet in exchange for viewing advertising. In applying the test of Alice Corp., the Federal Circuit found that the claims were directed to an abstract idea and that the claims did not do significantly more than describe the abstract idea. The court used the machine or transformation test when evaluating whether the claims did significantly more to overcome the abstract idea. In conclusion it found that the invention was not tied to a novel machine, nor did it transform an article to a different state or thing.

Collateral Estoppel Cannot Apply in Claim Construction of an Unrelated Patent

In e.Digital Corp. v. Futurewei Technologies, Inc. Case No. 14-1019, e.Digital Corp. had asserted two patents against Futurewei Technologies in a California district court. The patents at issue were the 5,491,774 ('774) and 5,839,108 ('108) patents. The patents pertained to recording devices having a microphone and a removable, interchangeable flash memory. The '108 patent was an improvement on the '774 patent, but only incorporated the '774 patent by reference and included a different written description and figures. A district court in Colorado had previously construed the claims of the '774 patent in a separate suit. The California district court held that e.Digital Corp. was estopped from pursuing a different claim construction from that of the Colorado court for both patents. However, on appeal, the Federal Circuit held that since the Colorado court had only construed the claims of the '774 patent and since the patents were not related, the '108 patent would require new claim construction. The district court had erred in applying collateral estoppel to the claim construction. However, the Federal Circuit further cautioned that the opposite is not always true. In other words, just because two patents are related does not mean that collateral estoppel is appropriate.

The test for applying collateral estoppel is if: 1) the issue necessarily decided in the previous proceeding is identical to the one which is sought to be relitigated; 2) the first proceeding ended with a final judgment on the merits; and 3) the party against which collateral estoppel is asserted was a party or in privity with a party at the first proceeding.

Federal Circuit Employs Supreme Court Precedent from Nautilus Inc. v. Biosig Instruments, Inc.

In Interval Licensing LLC v. AOL, Inc. 13-1282, the Federal Circuit upheld a district court decision that Interval Licensing's patent claims were invalid for indefiniteness. The claims of the patent were directed to a method for "engaging the peripheral attention of a person in the vicinity of a display device". Interval Licensing's suit alleged that AOL's pop-up notifications infringed the patent. The test for indefiniteness recently set by the Supreme Court in Nautilus v. Biosig requires that "a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty".

The claims were held indefinite due to the use of the description "in an unobtrusive manner". Judge Chen emphasized that the ruling does not declare that terms of degree are inherently indefinite. However, the claims must identify some form of meaningful objective boundaries to guide one of skill in the art as to the scope. Here the court found the boundaries to be too subjective, by resting on individual opinions.

Federal Circuit Employs Supreme Court Precedent from Alice Corp. v. CLS Bank

In buySAFE, Inc. v. Google, Inc. 13-1575, the Federal Circuit upheld a district court ruling that buySAFE's patent, which included claims directed to a computer-aided method for guaranteeing a party's performance in an on-line transaction, was invalid under Patent Act section 101. The court found that the claims were directed to the abstract idea of creating a contractual relationship and that the addition of a computer failed to add a sufficient inventive concept to be patent eligible.

This is one example of a growing trend among courts of invalidating computer implemented business method patents. The Federal Circuit based its decision in buySAFE on a conclusion that the claims were directed to a known concept performed on a conventional computer without specific programming or a particular machine. The Federal Circuit indicated it was not necessary to look further than the Supreme Court's holding in Alice Corp. v. CLS Bank in such a "straightforward" case.

USPTO Decisively Examining Claims for Eligibility Following Alice Corp.

The United States Patent and Trademark Office has taken a noticeably stronger stance on subject-matter eligibility following the Supreme Court's recent decision in Alice Corp. v. CLS Bank. The Alice Corp. v. CLS Bank decision limited software patents that were directed at what the Supreme Court considered to be "abstract ideas." On August 4, the USPTO announced that it had even reviewed applications that were in condition for allowance prior to the Supreme Court's decision, but yet to issue. Consequently, the USPTO withdrew notice of allowances for several applications.

The USPTO's rejections have generally included boiler plate language closely following the preliminary examination instructions that were issued in response to Alice Corp. The rejections typically identify that a given claim is "directed to non-statutory subject matter" and briefly identify the "abstract idea" in question. This approach has been met with some criticism, because rejections made in this way can be vague and offer little analysis for a patent applicant to use to improve their application. As a result, many practitioners have sent comments to the USPTO suggesting ways to ensure further clarification. The official comment period ended on July 31. The USPTO expects to issue further examination guidance in response to the comments by this fall.

Oblon, Spivak, McClelland, Maier & Neustadt Ranked Top Patent Firm

Oblon, Spivak, McClelland, Maier & Neustadt has again been ranked #1 on the Top Patent Firms list by Intellectual Property Today. Timothy and Christopher Maier, of Maier & Maier, are the sons of Gregory Maier, a founding member of Oblon, Spivak, McClelland, Maier & Neustadt. Tim and Chris have used what they have learned from their father's firm as a model for growing the Maier & Maier firm. Having witnessed first-hand the operation of such a successful firm throughout their lives has proven an invaluable resource, and they congratulate Oblon, Spivak, McClelland, Maier & Neustadt for their accomplishment.

You can view the entire Top Patent Firms list here: http://iptoday.com/issues/2014/03/top-patent-firms.asp.

NAUTILUS, INC. v. BIOSIG INSTRUMENTS, INC. 572 U. S. ____ (2014)

The Supreme Court has lowered the bar for finding patent claims invalid for indefiniteness. The new standard finds a patent invalid for indefiniteness "if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The full opinion by Justice Ginsburg can be read here.

The Court of Appeals for the Federal Circuit had previously applied a definiteness standard that only required a patent claim to be “amenable to construction” and not “insolubly ambiguous” as construed. The opinion stressed that finding definiteness must focus “on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Justice Ginsburg further expressed that the updated standard is important for maintaining the public-notice function of the patent system and for reducing uncertainty.

The new standard set by the Supreme Court could have a major impact on the current landscape of patent litigation and licensing. It may be much more difficult for patent owners to enforce or leverage broad or vague patents without facing a formidable invalidity challenge.

USPTO Preissuance Submissions Information Page

The USPTO has created a Preissuance Submissions page on its website devoted to "Third-Party" Preissuance Submissions. Preissuance Submissions, which became effective on September 26, 2012, allow third-parties to submit patents, published patent applications, or other printed publications that may be relevant to examination. The submissions must include a concise statement of relevancy for each document and the submission must be filed before either 1) the later of 6 months after publication or the date of a first office action on the merits or 2) before the date of allowance, if earlier.

The page provides announcements, presentations and blogs, statistics, filing information, rules, and other resources pertaining to preissuance submissions. Within these sections, the page offers helpful information to applicants and filers such as what qualifies as a proper concise statement. There is additional information pertaining to the success of the program, including public comments, press releases, detailed statistical analysis, and examiner sentiments.

Current information on the page indicates that over 70% of preissuance submissions have been properly filed. Of applications with Office Actions after a proper submission, approximately 12.5% of the office actions relied on the third party submission. Examiners reported that 87% of the time, submissions offered at least limited helpfulness. 23% of the time, submissions were deemed greatly helpful by examiners.

For more information on "Third-Party" Preissuance Submissions, you can visit the USPTO page here.

Read Our Patent FAQ Documents

The team at Maier & Maier understands how confusing patents can be, as well as all of the legal issues that come along with obtaining, reexamining, and reissuing patents. Because these legal issues are not well known, our team has compiled two FAQ documents for your convenience.

Click the links below to view our Patent Reexamination FAQ and Patent Reissue FAQ documents. These documents can help you learn why it is important to reexamine a patent, or to reissue a patent application. We will walk you through each of the most common questions for each issue so that you can make a confident decision as you seek to pursue a patent.

Have more questions than our documents answer? Give us a call at (703) 740-8322 today or contact us online using our easy form!

Early Trends in Review Proceedings

As part of the reform to U.S. patent law under the America Invents Act, new proceedings for challenging patents became available. The new proceedings include Inter Partes Review, Post Grant Review, and the Covered Business Method Review. The Inter Partes Review and Covered Business Method proceedings have been underway since September 16, 2012. However, Post Grant Review is only available for claims having an effective filing date after March 16, 2013, under the first to file rules. The first final decisions in review proceedings by the Patent Trial and Appeal Board (PTAB) have just recently been issued. The early decisions show a strong trend in the challengers' favor, as many of the challenged claims have been canceled.

Based on the success of challengers, PTAB review proceedings have proven an effective and favorable means to challenge or invalidate patent claims. These can be particularly effective for defendant's trying to invalidate claims asserted against them in litigation and may lead to a stay in the litigation pending an outcome of the review proceeding. In addition to the favorable record for challengers, the decisions indicate that it is difficult for patent owners to succeed on motions to amend the claims during a proceeding. If subjected to litigation, instituting review proceedings may be a very effective defense tactic.

On the other hand, if filing an infringement action, it is clear that one must be prepared to face such a proceeding. There are a few strategies for improving the chance of surviving a review proceeding, including drafting several variations of claims in hopes that if one is canceled, at least one alternative will endure. Additionally, if able, keeping a continuing application alive during the life of a patent facilitates later claim modifications in response to the results of a review proceeding.

The White House Announces Three New Executive Actions Pertaining to Patent Reform

Today, the White House issued a press release addressing Executive Actions to strengthen the patent system and foster innovation. This announcement comes on the heels of President Obama’s State of the Union Address which reiterated his call for patent legislation to protect innovators from abusive litigation. The announcement highlights three new Executive Actions to “encourage innovation and further strengthen the quality and accessibility of the patent system.” It also provides updates on the progress of prior patent related Executive Actions implemented in June of 2013.

New Initiatives

The three new initiatives involve crowdsourcing prior art, improving technical training of examiners, and providing pro bono and pro se assistance to applicants. Prior art includes references or material that could affect the patentability of an invention. Currently, examiners primarily rely on references supplied by the applicant and references found during the examiner’s search to evaluate novelty and other prerequisites for patentability. Crowdsourcing could allow companies, experts, and the public to more easily provide information surrounding relevant prior art in an application. The USPTO will be exploring possible ways to implement crowdsourcing and will be seeking public input.

To improve the technical training of examiners, the USPTO will make it easier for engineers and technologists in industry and academia to provide training for examiners on the state of the art. To assist in encouraging volunteers assist in training, the USPTO will make its four regional satellite offices permanent. This will allow for in-person or virtual contribution from stakeholders at these locations.

The final new initiative focuses on aiding applicants who struggle with prosecution and may not have the benefit of representation. The USPTO will provide education and practical resources and will appoint a Pro Bono Coordinator. This will improve coordination with the AIA Pro Bono Advisory Council and will expand the existing pro bono program to cover all 50 states. Members of the patent bar will be called on to participate.

Update on June 2013 Executive Actions

To improve transparency in patent ownership, the USPTO has proposed a new rule to require the reporting of people or companies with ownership interests in a patent or application. Providing information on the “attributable owners” of patent rights will improve public awareness of the competitive landscape, facilitate technology transfer, and reduce abusive litigation.

To enhance claim clarity, the USPTO has developed a training program for examiners and judges that strives to improve consistency in evaluating functional claims and the clarity of examination records. The USPTO will also implement a pilot program to enhance claim clarity with the use of glossaries in specifications.

To ensure consumers and main street retailers are not unfairly disadvantaged in knowing their rights, the USPTO is launching an online toolkit with relevant demand letter and patent litigation information. The toolkit also includes frequently asked questions and links to third party resources that provide relevant services and information.

To expand outreach and focused study, the USPTO has increased its public outreach efforts and improved its Thomas Alva Edison Visiting Scholars Program. Three new scholars were selected to study various aspects of the patent system in order to reduce unnecessary litigation and improve patent quality.

To strengthen exclusion order enforcement, the U.S. Intellectual Property Enforcement Coordinator will review the current practices for exclusion order enforcement and will issue recommendations to improve efficacy, transparency, and efficiency based on those findings.

Michelle K. Lee Appointed Deputy Director of the USPTO

Michelle K. Lee has been appointed as the next Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the USPTO. The U.S. Secretary of Commerce Penny Pritzker made the announcement on December 11, 2013. Ms. Lee is set to begin January 13, 2014. Due to the vacancy at the Director position, Lee will assume the duties and responsibilities of the Director of the USPTO.

The future Deputy Director has a strong background in patents and intellectual property, including her current role with the USPTO as Director of the USPTO's Silicon Valley satellite office. In this capacity, she has most recently spearheaded the effort to establish a permanent office on the west coast, which will be located in San Jose. She also previously served on the Patent Public Advisory Committee, advising on the performance and policies of the USPTO.

Ms. Lee's educational and professional fields include law and an engineering. She attained her B.S. and M.S. degrees in electrical engineering and computer science from Massachusetts Institute of Technology, after which she worked as a computer scientist for Hewlett-Packard Research Laboratories and the M.I.T. Artificial Intelligence Laboratory. She later graduated from Stanford Law School and began her legal career clerking at the U.S. District Court for the Northern District of California and later the U.S. Court of Appeals for the Federal Circuit. She continued her legal career in private practice focusing on patent law, intellectual property, litigation, and corporate law. Eventually, she attained the title of Deputy General Counsel and Head of Patents and Patent Strategy for Google.

We wish Ms. Lee all the best in her new role as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO.

For more information on the appointment of Michelle K. Lee, please view the official press release on the USPTO website.

After Final Consideration Pilot 2.0 Extended to September 30, 2014

The United States Patent and Trademark Office has announced that it will extend its After Final Consideration Pilot 2.0 program. The program was created as an improved follow-on to the After Final Consideration Pilot program. The goal of the program is to improve prosecution by providing applicants and examiners with an additional opportunity to collaborate and communicate to achieve allowance or an understanding of the considerations involved in the rejection. The After Final Consideration Pilot 2.0 program was initially scheduled to last until December 14, 2013, but now will extend to September 30, 2014.

To achieve its goal, the After Final Consideration Pilot 2.0 allows examiners to conduct minimal searches and considerations of post final rejection responses. Under the guidelines, an examiner is authorized to use up to 3 hours of non-production time for plant and utility applications and up to 1 hour, plus interview time, for design applications. In addition to using the time for searching and considering post final rejection responses, the time may also be used in the form of an interview to discuss the search and considerations with the applicant, particularly if the post final rejection response does not put the application in allowance. This can be very beneficial to an applicants' understanding of a rejection.

Patent Law Treaty Implementation in the United States

On December 18, 2013, the United States' implementation of the Patent Law Treaty will become effective. The implementation brings changes to current rules and procedures. Particularly, the implementation provides a remedy for the failure to file a U.S. application within the 1 year Paris period or the 1 year U.S. provisional period. The change will apply to not only future filings, but also to existing U.S. applications and existing patents. The failure to timely file will be correctible if the U.S. application is filed within 2 months after the 1 year deadline has passed.

An Affirmative Act of Egregious Misconduct

In Intellect Wireless, Inc. v. HTC Corporation, the Court of Appeals affirmed the District Court's ruling that Intellect's inventor, Mr. Henderson, had engaged in affirmative acts of misconduct by filing false statements and the patent was therefore invalidated.

The patents:

Mr. Henderson invented patents 7266186 and 7310416, which he assigned to Intellect. The patents relate to a patent system that uses Caller ID. The invention allows the message recipient to view who is sending the message before the recipient views the message. This cuts down on the receipt/opening of unsolicited and inappropriate messages.

The false statements:

Mr. Henderson was found to have made false statements in order to overcome a prior art reference. To overcome the prior art, he stated that he had actually reduced the invention to practice and demonstrated this invention at a meeting. The district court found that the invention had only been constructively reduced to practice.

Intellect claims that its attorney filed an amended declaration which fixed these mistakes. Mr. Henderson states that his attorney made clear to the Examiner that they were relying on constructive reduction to practice.

The Court of Appeals found that the District Court did not err in finding affirmative acts of deception because Mr. Henderson and his attorney did not take the necessary steps to correct the falsehood (i.e. inform the PTO and the Public).

The standard used by the Court:

The District Court and Court of Appeals relied on previous case law to provide the standard for unclean hands. For unclean hands, there must be an intentional misrepresentation to the USPTO and the misrepresentation must be material. The Court stated:

"When the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit, the misconduct is material." Therasense, Inc v. Becton, Dickinson & Co., 649 F.3d 1276, 1292 (Fed. Cir. 2011) (en banc). "We review the district court's ultimate finding of inequitable conduct for abuse of discretion, and review the underlying findings of materiality and intent for clear error." Novo Nordisk A/S v. Caraco Pharm. Labs., Ltd., 719 F.3d 1346, 1357 (Fed. Cir. 2013).

In this case, the District Court found (and the Court of Appeals affirmed) that Intellect, through Mr. Henderson, had made affirmative statements that were false and failed to properly correct the false statements. Therefore, the false statements were material.

Conclusion:

The Court was stringent on what a party must do to rectify any previous false statements. A party who does not take the required steps, could be found to have affirmatively misled the PTO and therefore have unclean hands. If the party has unclean hands, the patent can be invalidated.

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