IP Law Bulletin

A website recently launched that aggregates individual examiner data in real-time to provide practitioners with information they may find helpful in determining prosecution strategies that may be effective in achieving allowance before a particular examiner. The website, known as Examiner Ninja, allows a user to look-up data about any examiner at the United States Patent and Trademark Office (USPTO). The website presents data about allowance rates when various prosecution strategies are utilized, and also provides data about how quickly an examiner takes particular types of action during prosecution. The data is provided for each examiner, and each individual examiner’s data is compared to the same data for all examiners in that particular examiner’s art unit, and to all examiners at the USPTO.

To date, the Supreme Court has granted certiorari (commonly referred to as cert) to five patent-related cases this term, which will result in three oral arguments likely to be decided before the end of the term. Two of the cases were consolidated into a single argument, while another case was subject to a Grant-Vacate-and-Remand (GVR) order, meaning the previous decision by the United States Court of Appeals for the Federal Circuit (CAFC) has been vacated by the Supreme Court and the case must be reconsidered by the CAFC. There are also over 20 pending Petitions for Writ of Certiorari, which may result in additional patent matters being heard by the Court this term.

Foreign filing licenses do not typically require much attention in daily practice since the license is routinely applied for and granted as a matter of course in new application filings. However, in certain situations ignoring the license may cause severe damage. 35 U.S.C. § 184 states that a person shall not file or cause or authorize to be filed a patent application (among other things) in any foreign country unless six months have passed since the United States application was filed unless otherwise authorized by a license obtained from the Commissioner of Patents, i.e., unless a foreign filing license is received from the United States Patent and Trademark Office (USPTO). A purpose for this rule is that it allows the U.S. government to protect national security by approving or disapproving the export of sensitive technologies, such as technology associated with warfare, nuclear, or security-related measures.

The Federal Circuit’s recent decision in UltimatePointer v. Nintendo (Fed. Cir. Mar. 1, 2016) provides a reminder of the need to use caution when drafting a claim that could be read to cover both a device and a method of use.

UltimatePointer is the assignee of U.S. Patent No. 8,049,729 (the ‘729 patent), which is generally directed to a handheld pointing device that can be used to control the cursor on a projected computer screen, thereby improving a presenter’s ability to control the cursor while making a presentation to an audience. UltimatePointer asserted several claims of the ‘729 patent against Nintendo, with Nintendo’s Wii remote being the accused product. A key issue in the litigation was whether the asserted claims were invalid for impermissibly reciting both a device and a method in the same claim.

Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally directed towards “a method and system for entering data relating to an insurance claim for a damaged vehicle.” In each case, the PTAB sided with the Petitioner, finding that the claims were directed towards the abstract idea of valuing a damaged vehicle based on information about that vehicle and therefore not patent eligible.

Most patent owners are aware that under 35 U.S.C. § 154(d), publication of a United States patent application confers provisional rights to the patent owner. The provisional rights allow an owner to collect damages for infringement of issued claims dating back to the date of publication provided that the claims are substantially similar to the claims that are included in the published application. It can often be difficult for a patent owner to prove that issued claims are substantially similar to published claims. However, even if a patent owner is able to prove claim similarity from publication to issuance, a further obstacle to collect pre-issuance damages was solidified by the Federal Circuit recently in Rosebud LMS v. Adobe Systems—the statutory requirement of actual notice. In the recent Federal Circuit decision, the Court found that constructive notice was insufficient to meet the actual notice requirement under 35 U.S.C. § 154(d), and that instead a patent owner must prove the infringer was actually aware of the patent at issue.

Patent owners recently received a favorable decision regarding exhaustion of patent rights from the en banc Federal Circuit.  The case, Lexmark International, Inc., v. Impression Products, Inc., concerns aftermarket print cartridge sales and the issue of whether Lexmark’s patent rights are exhausted by (1) sales within the U.S., despite the inclusion of a single-use/no-resale restriction, and (2) sales outside the U.S.  The Federal Circuit considered the case en banc to determine whether Supreme Court rulings in Quanta Computer, Inc., v. LG Electronics, Inc., and Kirtsaeng v. John Wiley & Sons, Inc. (see prior Nutter commentary here and here), had any effect on the previously-controlling Federal Circuit precedent.  Ultimately, the Federal Circuit distinguished the Supreme Court rulings and found for Lexmark based on the previously-controlling precedent.

In a decision likely to be lauded by patent applicants and owners, the Federal Circuit recently issued an opinion that affirms its staunch position that the bar to prove a patent owner made a disclaimer that impacts the claim scope is high. The opinion provides some useful quotes that prosecutors and litigators representing applicants and owners will likely be interested in calling upon when presenting argument against assertions that a previously taken position amounts to a disclaimer or disavowal by the applicant/owner.

Last month, the U.S. District Court in the Northern District of California ruled that the Federal Circuit’s somewhat bare pleading standard for direct patent infringement is no longer sufficient following recent amendments to the Federal Rules of Civil Procedure, which went into effect on December 1, 2015. The court ruled that the plausibility pleading standard under Bell Atlantic Corp. v. Twombly and Ascroft v. Iqbal now applies to direct patent infringement claims.

The U.S. District Court for the Western District of Washington held, in Recognicorp, LLC v. Nintendo Co. Ltd., et al, that claims to certain methods and systems for encoding/decoding image data are not patent-eligible under 35 U.S.C. § 101. Recognicorp is an illustrative example of the use of preliminary motion practice to dispose of patent cases on the pleadings and of how software-based inventions that are premised on seemingly simple algorithms are particularly susceptible to early dismissal.