Anticipate This!™ | Patent and Trademark Law Blog

Alice Corp. v. CLC Bank Int’l: Notable Quotes from the Oral Arguments.

Posted in Litigation Commentary by Kristen Fries on April 18, 2014

The link to the transcript for the March 31, 2014 oral arguments before the SCOTUS in Alice Corp. v CLC Int’l can be found here.

Background: Alice Corporation, petitioner, owns the four patents-in-suits which are directed toward a computerized trading platform for the execution of a previously agreed-upon exchange, known as “settlement.” The inventions include electronically maintained accounts for each party in the settlement and after receiving transactions from each party, the computer system effects the exchange. The United States District Court for the District of Columbia declared each of Alice’s patents invalid for not defining patent-eligible subject matter. The U.S Court of Appeals for the Federal Circuit affirmed the decisions, in an en banc rehearing.

Issue: Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.

Per usual, we will preface our thoughts with the following disclaimer:  “It is generally a futile effort to predict how the Supreme Court will rule on any given issue.”  That being said, below are some quotes that we found of particular interest:

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They Invented What? (No. 239)

Posted in They Invented What? by Jake Ward on April 16, 2014

U.S. Patent No. 4,151,613Protective device for the buttocks and hips of a person for use in skateboarding.

JW Note:  For all our readers who are also skateboarding enthusiasts!

skatebutt

What is claimed is:

1. A flexible, unitarily molded, protective device for wearing on and protecting the buttocks and hips of a person engaging in the sport of skateboarding comprising:

a. casing means having resilient means disposed therein and having a generally rectangular configuration adapted to be worn around a person’s midsection and comprising cutout sections in the upper portion providing upwardly extending arm members;
b. said arm members comprising slot means containing a belt member therethrough;
c. said rectangular casing means including a lower main body portion comprising tongue means and annular slot means at each side;
d. a pair of double stranded cord means secured to the lower central portion of said main body portion and to said annular slot means on each side of said lower body portion whereby said device is worn and secured around a person’s waist by securing said belt member to the person’s waist and securing each of said cord means around each of the person’s legs.

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Welcome Kristen Fries to Anticipate This!

Posted in General Commentary by Jake Ward on April 16, 2014

We are pleased to welcome Kristen Fries as a contributing author at Anticipate This!

Kristen is a patent attorney licensed in the State of Ohio and registered to practice before the United States Patent and Trademark Office. Ms. Fries practices in the area of intellectual property and technology law, including prosecution of patent applications, in various technical fields.

She holds a Bachelor of Science in Mechanical Engineering from Miami University and is a registered Engineer-in-Training (EIT). Kristen earned a Juris Doctor, cum laude, from the University of Toledo College of Law. As a law student, she served as Note and Comment Editor for Law Review.

Prior to attending law school, Ms. Fries worked in the building materials industry as a project engineer for a manufacturing facility

We look forward to reading Kristen’s thought-provoking commentary on all things IP.  Enjoy!

They Invented What? (No. 238)

Posted in They Invented What? by Jake Ward on April 12, 2014

U.S. Patent No. 6,860,237: Bird perch.

birdperch

I claim:

1. A bird perch worn on a person’s upper arm comprising:
a generally curved relatively rigid band;
means for releasably securing said band to the person’s upper arm; and
a perch extending generally horizontally outwardly from said band.

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Hyatt v. USPTO – Procedural Limbo in the Patent Process?

Posted in Litigation Commentary by Jake Ward on March 2, 2014

Gil Hyatt

(Photograph Courtesy of Gilbert P. Hyatt)

Gilbert P. Hyatt v. USPTO (D. Nevada 2014)

We recently had an opportunity to speak with Mr. Gil Hyatt.  Gil is a well-known and prolific inventor in early computer technology, being named on more than 70 issued patents.  Over the years, he has also been a successful litigant in many patent-related matters.  As recently as 2012, Gil prevailed in a case at the U.S. Supreme Court against the U.S. Patent and Trademark Office (USPTO).

On January 3, 2014, Gil filed a complaint against the USPTO relating to two appealed patent applications.  The appealed patent applications have been pending at the USPTO since the early 1970s, i.e., over 40 years.  Gil alleges that the delay of the USPTO in these appealed patent applications is unreasonable under the Administrative Procedure Act, 5 U.S.C. § 701(1).

As a patent practitioner, the facts of this case are quite shocking.  According to USPTO statistics, the typical amount of patent pendency is 28.3 months.  This means that, if an inventor were to file a patent application today, the inventor would normally expect to receive a patent in about 2-1/2 years.  Gil’s patent applications have been pending for 16x longer than is normal.

According to Gil’s complaint, the USPTO has engaged in “a deliberate strategy to deny him adjudication of his pending patent applications.”  In both cases, the USPTO has apparently furnished no written answer to the filed appeal briefs, and no decision has been made by the Appeal Board.  Many formal petitions for action on the merits and requests for status updates have purportedly been filed by Gil, also to no avail.  A number of interviews with USPTO officials have also taken place, allegedly without resulting in any action.

These conversations with USPTO officials have also caused Gil to believe that the USPTO is intentionally refusing to grant any more patents to him.  Indeed, no patent has issued to Gil since 1997.  According to the complaint at paragraph 46:

During an in-person conference with the Director of the Technology Center responsible for examination of Mr. Hyatt’s patent applications – which is documented in the record of two of Mr. Hyatt’s patent applications – Mr. Hyatt pointed out “the scenario of applications going round and round from the examining groups to the Board and then back to the examining groups and then back to the Board.” The Director confirmed that this was the policy that the PTO was pursuing toward him.

The Hyatt patent applications apparently exist in a state of procedural limbo at the USPTO.  There is no doubt that this situation is quite unusual.  However, since his patent applications are not published, the “file wrappers” or official records of actions taken by both Gil and the USPTO remain secret at this time.  There is also no way of knowing the importance of the inventions being claimed, or the general impact that the patents would have if they were to issue.  We will be following this case closely, and are most interested in reading the USPTO’s answer to the complaint when filed.

For other articles on Mr. Gilbert P. Hyatt, and his actions in court and at the USPTO, see the following links:

http://articles.latimes.com/keyword/gilbert-hyatt

http://www.marketsandpatents.com/articles/wp_value.html

http://patentlyo.com/patent/2014/01/hyatt-v-uspto-three-generations-of-poor-examination-are-enough.html

http://www.bloomberg.com/news/2014-02-24/inventor-waits-43-years-for-another-chance-to-shock-tech.html

2014 Winter Olympics – Team USA Trademark.

Posted in General Commentary by Jake Ward on February 7, 2014

Image

 

JW Note:  Hat tip to the USPTO Facebook page for bringing this registered trademark to our attention.

This Day In History – Roller Coaster Patented on January 20, 1885.

Posted in General Commentary by Jake Ward on January 20, 2014

U.S. Patent No. 310,966: Roller coasting structure.

JW Note:  Although there is some debate (at least on Wikipedia) as to whether LaMarcus Adna Thompson truly invented the roller coaster, there is no doubt that he was a prolific inventor who contributed greatly to his field.  

Image

 

USPTO Fee Changes – Effective January 1, 2014.

Posted in Practice Commentary by Jake Ward on January 8, 2014

Pursuant to the Fee Setting Authority granted to the USPTO by the Leahy-Smith America Invents Act, certain fee changes were implemented on January 1, 2014.

Patent Post-Allowance Fees

  • 1501/2501/3501: Utility issue fee – fee decrease from $1,780/$890/$445 to $960/$480/$240.
  • 1511/2511/3511: Reissue issue fee – fee decrease from $1,780/$890/$445 to $960/$480/$240.
  • 1502/2502/3502: Design issue fee – fee decrease from $1,020/$510/$255 to $560/$280/$140.
  • 1503/2503/3503: Plant issue fee – fee decrease from $1,400/$700/$350 to $760/$380/$190.
  • 1504: Publication fee for early, voluntary, or normal publication – fee decrease from $300 to $0.

PCT Fees – International Stage

  • 2601/3601: Transmittal fee – new small/micro entity fee of $120/$60.
  • 2602/3602: Search fee – regardless of whether there is a corresponding application (see 35 U.S.C. 361(d) and PCT Rule 16) – new small/micro entity fee of $1,040/$520.
  • 2604/3604: Supplemental search fee when required, per additional invention – new small/micro entity fee of $1,040/$520.
  • 2621/3621: Transmitting application to Intl. Bureau to act as receiving office – new small/micro entity fee of $120/$60.
  • 2605/3605: Preliminary examination fee – U.S. was the ISA – new small/micro entity fee of $300/$150.
  • 1606: Preliminary examination fee – U.S. was not the ISA – fee increase from $750 to $760.
  • 2606/3606: Preliminary examination fee – U.S. was not the ISA – new small/micro entity fee of $380/$190.
  • 2607/3607: Supplemental examination fee per additional invention – new small/micro entity fee of $300/$150.
  • 2619/3619: Late payment fee – new small/micro entity fee of variable.

Patent Service Fees

  • 8021: Recording each patent assignment, agreement or other paper, per property – if submitted electronically – fee decrease from $40 to $0.(If not submitted electronically, the fee amount remains $40.)

According to this Federal Register Notice, these fee reductions were made to help rebalance the fee structure and offset the increases in filing, search and examination fees that were implemented in 2013.  Interestingly, the USPTO acknowledged that they intentionally delayed the implementation of these fee reductions in order “to allow the Office to recover sufficient revenue to pay for the projected cost of patent operations” in 2013.

The updated fee schedule may be viewed here: http://www.uspto.gov/curr_fees.

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