Examiner Analytics Helpful but not Definitive

June 2nd, 2020

We just completed Episode 4 of our patent analytics webinar series.  In this webinar we explored the use of examiner analytics to assist in making prosecution decisions.  Some of the takeaways were:

  1. Many examiner analytics are driven more by case assignment and art unit influences than the examiner.
  2. Analytics are helpful to ballpark the likelihood of success of any random application filed in an art unit, but are not capable of predicting how any one case is going to treated.
  3. It can be difficult to differentiate between statistics that are driven by supervisory control vs an individual examiner, or driven by PTO policy or law, and thus cannot be ascribed to any one examiner.
  4. Good use cases are making decisions on whether to file an RCE or appeal, and educating a client on the overall probabilities of getting a case allowed, the usefulness of an interview, and other such things.
  5. Another use case is to identify outlier examiners that may be particularly difficult to gain an allowance from.

For the full webinar, you can find it here:

Episode 04: Using Examiner Analytics to Improve Prosecution Efficiency and Develop Well-informed, Data-Driven Prosecution Decisions and Strategy

SLW Institute Presents Patent Analytics webinar series

April 20th, 2020

The SLW Institute began its 8-episode webinar series on Patent Analytics.  The first webinar was entitled “Techniques and Analytics for Identifying Valuable Patents and Patents to Abandon” on April 26, 2020 with subsequent webinars every two weeks.  The panel comprised of Schwegman, Lundberg and Woessner experienced professionals including Steve Lundberg, Principal & Chief Innovation Officer; Janal Kalis, FTO & Patent Analytics Expert; Thomas Marlow, President, Renewals of Black Hills IP and former Chief Patent Counsel of Fairchild Semiconductor; Tyler Nasiedlak, Principal & Former Chief Product Counsel of Guidant Corporation/Boston Scientific and Mark Stignani, Analytics Chair and Firm Compliance Officer and former Chief Patent Counsel of Thomson.

The webinar discussed key concepts in patent value, the difficulty in proactively managing a patent portfolio, but through simple and effective approaches combined with “eyeballs on” review can yield strong results.  Discussions included cross-functional teams, mapping claim coverage to company products and competitor products while considering jurisdiction and age of patents; tagging and classification of a portfolio, including tagging of inventions and disclosures with combined revenue and profit databases; dispositive matrixes; speed and citation analytics for both good and bad patents; automation of USTO patent term calculation as well as a broad array of useful tools across patent search, patent analytics and patent drafting.

The episode of the webinar can be found here:  https://www.slwip.com/resources/patent-analytics-episode-01/

To sign up for forthcoming webinars, please go to:  https://www3.slwip.com/patent-analytics-webinar-series

Solicitor General Signals Supreme Court to Address the Confusion Caused by the Abstract Idea Exception to 101

December 9th, 2019

While declining to recommend the Supreme Court should grant certiorari in Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., the Solicitor General nudged the Supreme Court to reconsider its abstract idea exception established in Bilski and Alice, as follows:

Although Mayo is the most immediate source of confusion, the uncertainty ultimately stems from the broader framework articulated in the Court’s recent Section 101 decisions.  The Court’s reconceptualization in Bilski v. Kappos, 561 U.S. 593 (2010), of inherent, long-recognized limitations on Section 101’s affirmative scope as freestanding, atextual “exceptions,” id. at 601, has given rise to an array of difficult questions.  The confusion created by this Court’s recent Section 101 precedents warrants review in an appropriate case.

While a fix to the 101 confusion would be welcome, there is little hope the Supreme Court could ever deliver it.  Given how metaphysical and generally incomprehensible the abstract idea exception is, nothing short of total disavowal can restore 101 jurisprudence to a sensible state consistent with the rest of the world.  Hopefully Congress will get around to a legislative fix soon.

 

 

 

 

Why a Machine Readable Computer Instruction is not Abstract

October 21st, 2019

Even after Section 101 gets fixed, we will still be wanting a way to better understand the difference between unpatentable printed matter such as a novel and a patentable computer program consisting of machine readable code.  In my mind, the difference comes down to the essential purpose and value of the former being dependent on variable abstract notions forming in the human mind and essentially only existing in the human imagination, whereas the later’s utility is not in any way dependent on such notions, but rather its 100% predictable and assured activation of an electronic circuit to perform an electronic operation.

 

 

Edison Light Bulb Patent Invalidated

October 21st, 2019

This satirical post on patent docs.org just about sums it up when it comes to 101 jurisprudence these days:

https://www.patentdocs.org/2019/10/federal-circuit-invalidates-edisons-light-bulb-patent.html

 

Claims of Uniloc Patents Covering a Software Distribution System Found Patent Eligible by Federal Circuit

May 24th, 2019

This post contributed by Eric Bachinski of Schwegman, Lundberg & Woessner, P.A.

Today the Federal Circuit issued an opinion addressing patent eligibility of the claimed subject matter of four Uniloc patents.[1] The Federal Circuit found two of the four representative claims to be patent eligible under the Alice two-step patent eligibility test. The Court distinguished the claims patent eligibility based in-part on whether the claims merely described functional subject matter or whether the claims recited particular improvements over then-existing computer and network functionality.

The first claims addressed by the Court were found to be directed to centralized software distribution. The district court found the claims to be ineligible because the specification described use of the claimed subject matter in the context of an existing software distribution system and considered the claims to be directed to conventional computer functionality. The Federal Circuit found this to be an incorrect analysis of the claims because, while the claims could be used as part of a conventional system, the claims recited an improved software distribution system using file packets in a specific way to accomplish centralized software distribution in an unconventional matter. Thus, the Court found the claimed subject matter reciting a particular improvement to computer functionality not to be directed to an abstract idea under Alice step one. The Court cited to Finjan and McRO to support the conclusion that claims reciting a particular improvement to prior art renders the claims patent eligible.

The second claims addressed by the Court were found to be directed to acquiring a set of user preferences and a set of administrator preferences when launching an on-demand application installation. The Federal Circuit again found that the claims went beyond claiming functionality using conventional computing components and rather recited a using the conventional components in unconventional ways to achieve a particular improvement to computer functionality. The Court cited to Enfish to support the conclusion that such an improvement renders the claims patent eligible. The Court went on to state that even if the claims would have been found to be abstract under Alice step one, the claims still would have been eligible under Alice step two, citing Bascom, as a particular way of using conventional components to achieve an unconventional result.

The third and fourth claims were found to be directed, respectively, to using a desktop interface to access and application server and a license management server that manages client access to an application. Both of these claims were found to be directed to an abstract idea. In the former, the Court found the claims to recite functional use of conventional components. Uniloc argued that the display regions of the interface were unconventional. However, the Court found, citing Intellectual Ventures I LLC v. Capital One Bank, the display regions to be icons that provided conventional functionality and rendered the claims abstract. In the latter, the Court found, citing Elec. Pwr. Grp., that the claims did not go beyond data collection, analysis, and display. There was nothing in the claims that went beyond conventional license management because the Court found the policy, authorization, and notification to operate in a conventional way.

[1] Uniloc USA, Inc, v, ADP, LLC, App. No. 18-1132 (Fed. Cir. May, 24, 2019) (Non-Precedential), http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1132.Opinion.5-24-2019.pdf

According to Anticipat, the PTAB has Set Another Record for Reversing Abstract Idea Rejections

May 14th, 2019

According to the Anticipat Blog, in March of this year the PTAB broke another record for total abstract idea rejections reversed. In March 2019, the PTAB wholly reversed 77 decisions, exceeding the previous record-holding month by 15.

See Anticipat blog posting:

The PTAB sets Another Record for Reversing Abstract Idea Rejections

The PTAB continues to reverse examiner 101 rejections

December 4th, 2018

The PTAB Reversed an Examiner’s 101 Rejection of Claims for a Method of Characterizing Atherosclerotic Plaque:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001873-11-06-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Thompson Reuters Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002108-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Verizon Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001069-10-30-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims Owned by Nokia:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002730-11-06-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims for a Link Registry Owned by VMWare:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017009092-11-15-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of IBM Claims for a Method for Policy Based Energy Management: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017005502-11-14-2018-1

 

 

More PTAB 101 Reversals – stems cells & inventory management & options trading

December 3rd, 2018

The PTAB Reversed an examiner’s 101 Rejection of Claims for a Method of growing stem cells in a patent application owned by CellResearch:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002349-11-13-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims for inventory management in a patent application owned by Baker Hughes:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017006294-11-13-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims for a systems for options trading owned by the NYSE:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001617-11-13-2018-1

 

But then there is this:

 

The PTAB Affirmed an examiner’s 101 Rejection of Claims in a TI patent Application for a Method of measuring velocity:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018003062-11-13-2018-1

 

More Section 101 reversals from PTAB

November 27th, 2018

Here are some recent reversals and an affirmance, provided by Janal Kalis of Schwegman, Lundberg & Woessner, PA:

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a BT Patent Application for Controlling a Digital Subscriber Line:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018009213-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Thompson Reuters Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002108-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection in a Verizon Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001069-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Medical Diagnostics Patent Application, Finally, for Detecting BDCA-2 Protein:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017010045-11-02-2018-1

 

But then there is this–the PTAB affirmed an examiner’s 101 rejection of claims for a radiographic imaging device:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018002225-11-01-2018-1

 

Has the USPTO SAWS Program Been Retired:  https://thehill.com/hilltv/rising/418300-inventors-raise-questions-over-retired-government-patent-program