By: Ashley Sloat, Ph.D.

I love the argument that Ron Katznelson makes in his new paper, titled Private Patent Rights, the Patent Bargain and the Fiction of Administrative ‘Error Correction’ in Inter Partes Reviews.  Ron argues:

"The exclusive patent right is not a creature of Congress. That right originates with, and is created by, the inventor. It is only secured by statute subject to the Constitution, as part of the patent bargain in exchange for the inventor’s public disclosure of the invention and of the manner and process of making and using it.

No PTO “error correction” in an issued patent is possible because the public disclosure (that might have been otherwise kept as a common-law trade secret) cannot be returned – the exchange of rights upon patent issuance is irreversible and uncorrectable. Extinguishing the inventor’s private patent right must therefore be the exclusive province of Article III courts."

The original right is created by the inventor but she is incentivized to publicly disclose the invention in exchange for protection under the Constitution. If the USPTO's PTAB strips away this protection, what remedy does the Inventor get for her public disclosure that now comes with no protection? The public disclosure most certainly can't be rescinded from the minds of people who have viewed it!  I agree with Ron's declaration that extinguishing this right should only be under the purview of an Article III court. 

By: Ashley Sloat, Ph.D.

Mastermine Software, Inc. v. Microsoft Corp. (Fed. Cir. 2017), as well as several previous cases, have ruled that mixing system and method claims in the same claim can lead to indefiniteness and ultimately invalidity. The reason behind this invalidity ruling is that a potential infringer may not be able to distinguish when he is infringing the claim – when he makes/sells an infringing system or uses the system in an infringing manner? So how do you avoid creating an indefinite claim?

(1) Make sure the apparatus or system performs the function or method steps;
(2) Avoid clauses in which a user performs a function or method; and
(3) Avoid standalone method steps (not performed by a system element) when the rest of the claim is clearly a system or apparatus claim.
           
When we at Aurora draft system claims in which components are executing functions or method steps, we use language along the following lines: “wherein the ‘element’ performs a method comprising: steps A, B, C…” This structure should avoid the issues enumerated above. Happy drafting!
 

An extremely useful article by Naira Rezende Simmons was recently published in the The John Marshall Review of Intellectual Property Law. The article discusses the count system the USPTO uses for Examiners to incentivize efficient and thorough examination of patent applications. As you will see in the article, the USPTO heavily incentivizes a quality initial examination of a patent application with less points awarded for final office actions and notices of allowance. This article is definitely worth the read. 

By: Ashley Sloat, Ph.D.

The Cannabis industry is blossoming so it seems only prudent for us to share with you thoughts about how you can protect your Cannabis-related innovation in this new age of legalized medical marijuana and recreational use, at least in some states. In this post, I discuss the use of Plant Variety Protection Certificates, Plant Patents, Design Patents, and Utility Patents to protect your innovation and some of the pitfalls of these various mechanisms. 

By: Ashley Sloat, Ph.D.

​“This publication didn’t even become a patent and they aren’t even practicing what they said in the patent. Is this a legitimate reference?”

The short answer to the question is “Yes.” The long answer is still “yes” but with some context. References (or in other words the “art”) that can be used by the United States Patent and Trademark Office in a rejection include all references that were in the public domain prior to the earliest filing date of the client’s application. This may include public/published presentations, dissertations, newspaper articles, journal articles, web content, and yes, event published patent applications that never became an issued patent. A skilled draftsman (such as those found at Aurora Consulting :) ) will include many variations and various embodiments of the technology in the patent application. The client may never practice or implement these variations or may never even intended to practice or implement these variations, but these various embodiments and variations are included in patent applications to provide breadth and options to the client over the long-term. These various embodiments, by virtue of the patent application publication process (publication occurs 18 months after filing date), become available to the public and thus ripe for use in rejections. I get it - it does some unfair that patent applications that never issued can be used in rejections- but the fact is they can be and are used. What a client needs in turn is a skilled draftsman that can assess the art, draft claims that avoid the art, and include significant breadth in drafted patent applications to give the client a leg up on future competitors - basically doing the same thing to future patent filers as previous patent filers have done to you. ​

By: Ashley Sloat, Ph.D.

In Securus Technologies, Inc. v. Global Tel*Link Corp., the Federal Circuit reviewed a claim construction dispute with respect to the following claim from U.S. Patent 7,853,243:
 
1.  A method for restricting access to a public telephone network using a telephone call management system, said method comprising the steps of:
    assigning a first identification number to each of a plurality of potential callers;
    recording a first voice print of at least one potential caller;
    storing said first voice print and said first identification number in a database;
    during each access attempt to said public telephone network by said potential caller:
    prompting said at least one potential caller to input a second identification number;
    recording a second voice print of said at least one potential caller;
    matching said first and second identification numbers;
    comparing said second voice print with said first voice print associated with said first identification number;
    granting said at least one potential caller access to said public telephone network to attempt to place a telephone call if said second voice print matches said first voice print;
    monitoring at least one conversation to detect the presence of a three-way call attempt; and
    recording at least one conversation between said at least one potential caller and a third-party remotely located from said at least one potential caller if said recording is permissible; and
    detecting the presence of predetermined keywords in audio of said at least one conversation.
 
            The segment of the claim of interest to the Federal Circuit is shown in blue above. In particular, the Federal Circuit was tasked with determining whether the step of “during…:” included all of the subsequent steps of just the step of “prompting…;”. The Federal Circuit agreed with Global Tel*Link Corp. interpretation of the claimed feature and held that it was most appropriate to include all of the claimed steps from "prompting" to "monitoring" with the "during" step. 
            What we can learn from this is that punctuation matters in a claim. The intent behind the punctuation can also be augmented using formatting (e.g., indentation), enumeration, or other tricks. We at Aurora tend to use formatting to explicitly define which elements are included in a claimed feature. At least some drawbacks of enumeration are that, when used, it could be read that the steps in the method need to be performed in the order in which they are presented rather than any order that is fitting and/or that the method does not include any additional steps (intrinsic or otherwise) that are not recited. 

By: Ashley Sloat, Ph.D.

Many of our clients are in the digital health space, so here is a brief update on new developments in FDA regulation of this space. The new FDA Commissioner Scott Gottlieb, M.D. announced last week that the FDA is formally launching a voluntary Pre-Cert for Software Pilot Program. Scott Gottlieb states that: “This new program embraces the principle that digital health technologies can have significant benefits to patients’ lives and to our healthcare system by facilitating prevention, treatment, and diagnosis; and by helping consumers manage chronic conditions outside of traditional healthcare settings.” 
​
The polite program will work similar to TSA pre-check in that companies that have a demonstrated track record of software quality (based on design, validation, and maintenance) will experience an expedited approval route through the FDA (e.g., required to submit less or no information prior to marketing the new tool). In contrast, those companies that require more quality assurance will be required to submit more information before marketing their new digital health tool. A link to the press release from the FDA is here. If you are a company in the digital health space, I encourage you to investigate whether you have any interest in volunteering to be a part of this polite program. We all know that more regulation is coming to the digital health space, now each of us has to determine if we want to contribute to the shape of that regulation. 

By: Ashley Sloat

Senators Chris Cooms, Tom Cotton, Dick Durbin, and Mazie Hirono recently introduced the Support Technology and Research for Our Nation's Growth and Economic Resilience (STRONGER) Patents Act of 2017 into the Senate. The STRONGER Patents Act seeks to remedy some of the unintended negative consequences of the American Invents Act on patent owners. To highlight a few key aspects, the STRONGER Patents Act focuses on:

(1) Harmonizing claim construction standards across adjudicating bodies to “ordinary and customary meaning of the claim as understood by a person having ordinary skill in the art to which the claimed invention pertains.”
(2) Refining and limiting processes by which post-issuance proceedings (e.g., post-grant review and inter partes review) are instituted.
(3) Providing a (improved) pathway for patent owners to amend challenged claims during an expedited examination procedure or during a Patent Trial and Appeal Board (PTAB) Proceeding.
(4) Restoring presumption of injunctive relief for patent owners when a patent is found valid and infringed.
(5) Eliminating USPTO fee diversion so that fees collected by the USPTO can remain with the USPTO. 

Overall, I think all these changes are positive and exciting (especially from patent owner and practitioner viewpoints), but I will wait to give my full appraisal until after the House and Senate battle it out. The pendulum is starting to swing back in favor of patent owners, but now we just have to make sure we find a good balance between the extremes. 

By Ashley Sloat and Kristen Wolff

​Software patenting has come under intense scrutiny in the last decade. Since the landmark case, Alice Corporation PTY. LTD. v. CLS Bank International, there has been a slow trickle of patents found valid under 35 U.S.C. §101. In this seminar, we will review these court cases and distill the opinions down into a set of drafting tips that will increase the probability that your software claims are patentable. However, in the event that your software claims are not a good fit for patenting, we will also discuss various alternative strategies for protecting software. These alternative strategies include advantages and disadvantages that we will also discuss. 

Part 1
• Overview of relevant software patent court cases
• Specification/claim drafting tips to hedge your bets for section 101

Part 2
• Alternatives to patents for protecting software innovations
• Advantages and disadvantages to not patenting software