Chimeric hindsight

March 18th, 2019

I was talking with one of my clients today about how patent law allows multiple references to be combined together. His mind immediately jumped to the mythological Chimera — a fire-breathing creature formed from the body of a lion, head of a goat, and tail of a snake. That struck me as quite an appropriate characterization of many §103 invalidity arguments — three things that have nothing to do with one another that are merely cobbled together to make a fire-breathing monstrosity.

I checked the CCPA and CAFC decisions and do not see any references to the mythological Chimera. Perhaps a decision in the future will note that “the section 103 analysis relied upon Chimeric hindsight and is therefore reversed.”

See also [Frankenstraction].

USPTO Helsinn Memorandum

February 28th, 2019

The USPTO has issued a memorandum to the patent examining corps in response to the Supreme Court’s decision in Helsinn Healthcare, S.A. v. Teva Pharamaceuticals USA, Inc.

The memorandum is available at this [link].

Audio of Supreme Court Oral Argument in Return Mail, Inc. v. United States Postal Service

February 27th, 2019

The Supreme Court of the United States heard oral argument in the case of Return Mail, Inc. v. United States Postal Service last week. You can listen to the recording of the oral argument here:

Hachimoji DNA

February 21st, 2019

To an electrical engineer like me, the Hachimoji DNA discussed in this New York Times article [link] (https://www.nytimes.com/2019/02/21/science/dna-hachimoji-genetic-alphabet.html ) seems pretty groundbreaking.

It will be interesting to see how it influences patent claiming for my friends in the biotech area. In a quick search, I did not see any issued patents that reference “Hachimoji.”

Transcript of today’s Supreme Court oral argument in Return Mail v. US Postal Service

February 19th, 2019

The Supreme Court heard oral argument today in the the patent case of Return Mail, Inc. v. United States Postal Service, et al. The transcript of the oral argument is available [here].

The question presented is:

1.  Whether the government is a “person” who may petition to institute review proceedings under the AIA.

Oral argument of the week

February 9th, 2019

The oral argument of the week is from the September oral argument of AUTOMATION MIDDLEWARE SOLUTIONS, INC. v. INVENSYS SYSTEMS, INC., No. 2017-2187 (Fed. Cir. Sept. 17, 2018). I thought this oral argument was particularly interesting for Judge Hughes’ comments about where one should draw the line when claims are related to software.

You can listen to the oral argument [here].

You can read the CAFC’s Rule 36 Judgment (Newman, Wallach, Hughes) [here].

Federal Circuit to Visit Minnesota

February 7th, 2019

Having survived the most recent polar vortex, the Federal Circuit will be traveling to Minnesota in April to hear oral arguments. You can read more about the visit [here].

Denver Patent Office to offer 3-day course on why examiners make the decisions they do

February 5th, 2019

The Denver Patent Office will be offering a free three-day course in March titled STEPP, or Stakeholder Training on Examination Practice and Procedure. Here is more info from the Colorado Bar Association’s IP Section:

STEPP – Agent/Attorney 3-Day Course in Denver
March 5-7, 2019 at the Denver USPTO

Please email STEPPTraining@USPTO.gov to sign up for this free training.
About the Course:
STEPP, or Stakeholder Training on Examination Practice and Procedure, is designed to provide external stakeholders with a better understanding of how, and why, an examiner makes decisions while examining a patent application. Courses provided are free to attend.  In addition, CLE credit may be available. 

The STEPP program is an important part of the USPTO’s mission to deliver intellectual property information and education to external stakeholders. It is administered by theOffice of Patent Training (OPT).
Agent/ Attorney 3-Day Course on Examination Practice and Procedure
This course is limited to those who have passed the Patent Bar for the purpose of representing applicants before the USPTO.  The training makes use of statutes, rules, and guidelines relevant to practicing before the USPTO. Training focuses on how patent examiners examine patent applications according to the Manual of Patent Examining Procedure (MPEP).  The training is broken into three separate modules: Day 1, Day 2, and Day 3.  Day 1 focuses on the role of an examiner and the steps an examiner takes when reading an application for the first time.  Claim interpretation and 35 USC 101 and 112 are emphasized on Day 1.  Day 2  uses the information gathered during Day 1 to plan a search, conduct a search, and map prior art to claims using 35 USC 102 and 103.  Day 3 focuses on writing of an office action, as well as post-examination options such as the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU).  Similar to the training of entry level examiners, a sample application will be provided to each trainee and will be the focus of exercises during each module which build upon each other.  For a detailed scheduled please view the Agent/Attorney 3-Day Course Schedule.  Please note, the content and schedule of this course is subject to change. 
What is the purpose of the STEPP program? 
Increase transparency by making USPTO training on examination practice and procedure available to external stakeholders
Provide perspective to external stakeholders by detailing what an examiner considers in preparing an office action
Aid in compact prosecution by disclosing to external stakeholders how examiners are taught to use the MPEP to interpret an applicant’s disclosure 
What is NOT the purpose of the STEPP program?   
The STEPP program is not intended for applicants to discuss pending applications with patent examiners or to circumvent normal communications between applicants or applicants’ representatives and patent examiners. Applicants should continue to resolve any application-specific issues through the examiner of record or the Ombudsman program, as appropriate.

Article suggestion

January 29th, 2019

I am no fan of Rule 36 judgments. However, I often wonder how backed up the Federal Circuit’s docket would be if the court did not rely on them so heavily. It might make for an interesting article if someone were to use some rough assumptions and calculate how backed up the court’s docket would be today if the court did not use Rule 36 judgments so enthusiastically.

I suspect that such an article would be cited quite a bit in Supreme Court appellate advocacy.

Supreme Court closes docket for current term?

January 19th, 2019

Several news agencies reporting on the petitions for writ of certiorari concerning the DACA program have noted that the Supreme Court has presumably finalized its docket of cases that it will hear this term. So, it appears that no additional patent cases will be added to the Court’s docket this term.