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Federal Circuit Appears Likely to Overturn Patent Office Denials of Amendment During IPR

Jim Ruttler, Patent Attorney

Posted Tuesday, August 30, 2016 by Jim Ruttler

Back in May 2016, the Federal Circuit decided in Aqua Products that a patent owner had the burden to argue patentability for any amended claims during inter partes review proceedings. In these proceedings, also known as IPRs, patent owners often file motions to amend the claims to overcome newly discovered art. The Patent Office, however, has made it very difficult to amend claims, denying 95% of all motions to amend. The statute, however, specifies that patent owners shall have the right to file a motion to amend one time. The Patent Office’s response to this is that the statute only permits a right to file a motion and that they can deny that motion. Worse yet, the Patent Office says often that the reason the motion is being denied is because the patent owner has not proved that the amended claims are patentable.

The Patent Office has gotten away with this charade for a year now, but the jig is about to be up - at least in my opinion. The patent owner should be entitled by statute to amend the claims and the Patent Office should bear the burden to determine whether the claims are unpatentable - not the patent owner.

The Federal Circuit decided this week to reconsider the Aqua Products decision en banc. This means that a majority of the judges believe this case should be reconsidered and it is rare and significant.

Expect a decision by end of 2016 on this.

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Arendi v. Apple, Google, Motorola: Fedeal Circuit Warns Patent Office to Quit Relying on Conclusory Assertions

Jim Ruttler, Patent Attorney

Posted Friday, August 12, 2016 by Jim Ruttler

The United States Patent Office consistently relies on ’common sense’ to issue rejections and invalidate patents. They obviously do this because it is easier than actually finding evidence to support their positions. And, few take their commonly poorly drafted opinions to the Federal Circuit for review.

The PTO’s legal justification for this sloppy legal analysis is the Supreme Court’s decision in KSR, where the Court stated that common sense can be used to determine whether it would be obvious to COMBINE references to reach the claimed invention.

However, this KSR decision doesn’t speak to the use of common sense to SUPPLY missing details NOT PRESENT in any prior art reference. When there are missing elements in the prior art as compared to the claimed invention, the USPTO cannot use KSR to supply that missing element based on common sense. Instead, the USPTO must find everything in the claims in some piece of documentary evidence. They are then given authority - and believe me they use it - to say the combination would be common sense without any evidentiary support.

The Court here took another opportunity to warn the USPTO against this type of short-cut no-evidence because-I-say-so legal analysis. The PTO was first warned in Hear-Wear and now here in Arendi. We’ll see if the USPTO changes its ways to actually follow the law or whether it continues to act as if the law doesn’t apply to it.

Remember missing elements cannot be supplied based on common sense.

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Halo v Pulse on Remand: Willful Patent Infringement Will Hurt

Jim Ruttler, Patent Attorney

Posted Friday, August 12, 2016 by Jim Ruttler

The Federal Circuit this week issued its opinion on remand from the Supreme Court - reversing the no enhanced damages decision of the lower district court and sending it back for an implied suggestion to enhance patent damages for willful infringement.

The district court originally issued an opinion of infringement by Pulse but no enhanced treble damages for willfulness on the basis that Pulse had concocted some reasonable theory of non-infringement during litigation. The Federal Circuit then affirmed, but the Supreme Court reversed. In a big win for patent owners, the Supreme Court stated that a reasonable litigation developed defense will not save an infringement who knowingly infringes a patent with disregard.

Here, Pulse knew about the patents and decided to continue selling products without even obtaining a legal opinion. Therefore, it is likely that Pulse’s damages will now go up by as much as three-times the actual amount of damages - making willful patent infringement an extremely costly and unprofitable business practice.

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Electric Power Group v. Alstom

Jim Ruttler, Patent Attorney

Posted Friday, August 12, 2016 by Jim Ruttler

Yet another patent eligibility decision has come down from the Federal Circuit. We’ve had a number of decisions recently from the Federal Circuit affirming software eligibility, including DDR, Enfish, and Bascom. However, here, the Federal Circuit affirmed the ineligibility of the claims and invalidated the patent in its entirety.

The claims at issue were directed toward monitoring traffic in a network, detecting problems, and displaying results. The Court had no problem summarizing these claims as mere data gathering and display of information, which resulted in an easy invalidation under Step 1 of the Alice framework set forth by the Supreme Court.

The Court, however, clarified that not all data gathering or display of information is ineligible for patent protection. The line the Court drew is whether the claimed invention describes a particular way of doing the data gathering and display or just merely claims all data gathering and display. Here, the claims were pretty generic and therefore were deemed abstract and unpatentable.

It is unfortunate that the claims at issue here were issued by the Patent Office under different rules and law that, at the time, permitted this type of claim language. The Supreme Court has retroactively applied the law to take away patent rights that have been relied upon for many years without any compensation to the patent owner who spent time and money to obtain the patents under the different law.

Yet, for new prospective patentees, the path forward is much clearer. Focus on specific improvements and even software will be deemed eligible.

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Seahawks Can Continue to Use 12th Man With Limitations

Daniel Mills, Trademark Attorney

Posted Friday, August 12, 2016 by Daniel Mills

The Seattle Seahawks and Texas A&M University entered into a new licensing agreement this week which will allow the Seahawks to continue to use the phrase “12th Man”, but with some important limitation from the previous agreement. Under the new agreement the Seahawks will have to take down the reference to the 12th Man in the Ring of Honor in their stadium. In addition, the Seahawks are no longer permitted to use or refer to “12th Man” in social media run by the NFL franchise.

The two parties first entered into a licensing agreement in 2006. This current deal runs for five years. Texas A&M vigorously defends its rights in the mark, which stems from the exploits of a former student who came out of the stands in 1922 to take the field if necessary because of injuries to players. This act was the genesis of the 12th Man. So TAMU had been using the 12th Man to describe its fan base for about 50 years before the Seahawks even existed.

In recent years the Seahawks have applied for and registered many trademarks with reference to the number 12. As of this post, Football Northwest, LLC (as the Seahawks are legally identified at the USPTO), have seventeen marks that use “12” in various forms including SPIRIT OF 12, THE 12S, 12S, WE ARE 12, and JUNIOR 12S.

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