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Archive for June, 2014

Protecting Your IP Under Government Contracts, Part 3: Application of Definitions

by Jesse Erlich

In our last post we looked at some key definitions (Invention, Subject Invention, and Made), so now let’s look at the application of those definitions.

If a subject invention falls under or is made under a government contract, the subject invention, at the time of the contract, may be either in the form of a disclosure, a patent application or even a patent. The important factor deals with the actual reduction to practice of the invention. Did the actual reduction to practice take place prior to the contract?

For a contractor or subcontractor to exclude the invention from being a subject invention, first actual reduction to practice of the invention must have taken place prior to the contract. In order to exclude such an invention from being a subject invention, it is extremely helpful for the contractor or subcontractor to have sufficient evidence to support the conception and actual reduction to practice of the invention to be excluded as subject inventions, in that both conception and first actual reduction to practice have taken place prior without the use of government funds and prior to or subsequent to the contract. If this is not the case, and the conception or first actual reduction to practice takes place under the contract, and the contractor or subcontractor must disclose this invention to the government as being a subject invention.


Limelight Networks v. Akamai Technologies: No Infringement by Committee

by Orlando Lopez

The recent US Supreme Court decision in Limelight Networks v. Akamai Technologies relates to joint infringement. Usually, infringement of a method or process claim in a patent occurs when one entity practices all the steps in the method or process. However, in many systems, for example communication systems, the system includes a server that is owned by one entity, and client systems (Blackberry®s for example) that are owned by another entity. A method or process claim, if written in the most straightforward and logical manner, would be performed in part by the entity that owns the server and in another part by the entity that owns the client system. Infringement of that method or process claim would require joint infringement, where the two entities cooperate in performing the steps of the process. Under present law, direct infringement may not be possible since present law requires that one entity perform all steps in the method or process unless one party is under control or direction of the other party.

Akamai owns a patent having a claim for a method for delivering electronic data using a content delivery network (CDN). Limelight operates a CDN. When Akamai sued Limelight Networks for infringement, Limelight Networks claimed noninfringement since Limelight performs all the steps of the method claim except for one: the step of “tagging” is performed by the user. On appeal, the US Court of Appeals for the Federal Circuit, in a ruling including the entire court, found that, although direct infringement may not have been possible, Limelight could be liable as an inducer of infringement. As stated in the US Supreme Court decision in Limelight Networks v. Akamai Technologies, the entity that owns the server cannot be considered to be inducing infringement since inducing infringement requires that someone be infringing the entire claim.

Unless there is a different ruling on direct infringement, and that ruling stands the test of the US Supreme Court, patent drafters will have to write separate claims: one set of claims where the actions occur only at the server, and another set of claims were the actions occur only at the client. The structure of such claims is awkward, the number of claims is twice that needed, and the Examiner will attempt restriction.

Until the law changes, we will need to write method claims that are performed by only one party.


Impact of Nautilus v. Biosig

by Orlando Lopez

Prior to the US Supreme Court decision on June 2, 2014, the standard for invalidating a claim, in litigation, due to indefiniteness was that the claim had to be not amenable to construction (interpretation). The Supreme Court overturned that standard in Nautilus v. Biosig. In Nautilus v. Biosig, the Supreme Court held that a patent claim can be found to be invalid due to indefiniteness if the claim, read in light of the patent specification and prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

The new standard for invalidity due to indefiniteness is very similar to the requirement for indefiniteness during prosecution. A decision on whether a claim is indefinite requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. MPEP 2173.

The impact of Nautilus on prosecution will be the enhanced awareness of indefiniteness. Terms such as “capable of,” and “can be” should be avoided (see Ex Parte Breed PTAB decision of June 4, 2014).

The impact of Nautilus on litigation is harder to assess. It all depends on how the term “with reasonable certainty” is interpreted by the Federal Circuit. Some caution will result from the Supreme Court decision but the fact that the term in question is discussed in a Markman hearing and a claim construction is arrived at, gives some credence to the reasonable certainty. We will have to wait and see, but for sure, indefiniteness will be back in the quiver of tools for invalidity.


Alice v. CLS: Alice in Supreme Court Land

by Orlando Lopez

On June 19, 2014, the Supreme Court released their decision and opinion on Alice v. CLS. The holding of the Supreme Court is that the split en banc decision of the Federal Circuit Court of Appeals finding the claims in patents assigned to Alice Corporation invalid for being related to unpatentable subject matter is affirmed. If Alice wants to find how to determine whether claims are drawn to an abstract idea, Alice still has to go to the Wizard. The opinion of the Supreme Court on Alice v. CLS does not provide any guidance on how to determine that claims are drawn to an abstract idea.

The Alice v. CLS Supreme Court opinion does clear up any possible misunderstanding of the Mayo v. Prometheus opinion. In Mayo, the Court, referring to Flook, stated that, if the process included other elements or combination of elements, referred to as an “inventive concept,” so that the patent was a patent for more than the natural law (abstract idea), the process was patentable. In Alice, the Court explains the Mayo statement, restating the Mayo approach as a two-step approach:

  1. First determine whether the claim is directed to one of the patent-ineligible concepts (law of nature or abstract idea); and
  2. Search, in the claim, for elements or a combination of elements that, when added to the patent-ineligible concept, render the claim as a claim for more than just the patent-ineligible concept.

This restatement of the approach is more palatable than the look for an “inventive concept.” By restating Mayo, the Court has made it safer to use Mayo.

The Court also restates in Alice that adding a generic computer to the method claim does not make the method claim patentable. This restates the present position of the US Patent and Trademark Office (USPTO) that a specific machine, a computer programmed to perform the process, is needed. However, programming a patent-ineligible concept will not render the concept or system patentable.

The concurring opinion shows that at least three Supreme Court Justices could find business methods unpatentable. We will have to wait for another decision (or for the Wizard) in order to find how to determine that claims are drawn to an abstract idea.


Protecting Your IP Under Government Contracts, Part 2: Key Definitions

by Jesse Erlich

Let’s assume that an individual or company enters into a contractual relationship with the U.S. Government. If that is the case, the contractor or subcontractor would have the right to retain ownership of any invention made under that contract, subject to a grant of a non-exclusive royalty-free license to the government for governmental use and other possible rights. It is therefore essential to know exactly how an invention was made under a government contract is defined. Key definitions are defined as follows:

    • Invention: any invention or discovery that is or may be patentable or otherwise protectable under Title 35 of the United States code;
    • Subject Invention: any invention of the contractor made in the performance of work under the contract; and
    • Made: (1) when used in relation to any invention other than a plant variety, means the conception or first actual reduction to practice of the invention; or (2) when used in relation to a plant variety, means that the contractor has at least tentatively determined that the variety has been reproduced with recognized characteristics.

Technical Data, which I’ll discuss more in an upcoming post, is defined as recorded information, regardless of the form or method of the recording, of a scientific or technical nature (including computer software documentation). The term does not include computer software or data incidental to contract administration, such as financial and/or management information.

Now referring back to inventions made under a government contract (subject inventions).

Under U.S. law, an invention is made when two events take place; that is, conception of the invention is linked with reduction to practice of the invention. This reduction to practice may either be an actual or constructive reduction to practice. Constructive reduction to practice means the invention is not yet actually reduced to practice, but the patent application based on the invention is filed in the United States Patent and Trademark Office (USPTO) in such terms that the invention description is enabling, the patent application is written such that the invention could be made by one of ordinary skill in the art, and meets all the requirements of 35 USC 112. In the case of a filing within the USPTO, actual reduction to practice is not necessary. When dealing with the government under a contract, however, an invention is considered a subject invention when the invention is made; that is, conceived or first actually reduced to practice in the performance of work under the contract.

We’ll explore application of definitions in the next post.