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Direct and Indirect Patent Infringement – Evolving Standards under Akamai v. Limelight

Though I’m not a litigator, infringement concerns are a primary concern for many of my clients. Those concerns evolve with time. Despite decades of case law, the courts are still developing some of the fundamentals of patent infringement. There are two basic types of infringement: direct and indirect (which is further subdivided as contributory infringement and induced infringement. Direct infringement is – generally – infringement that you yourself participate in: you sell something infringing, you make something infringing, you use something infringing, etc. Indirect infringement, on the other hand, occurs when you contribute to another’s infringement, make another’s infringement possible, or benefit from another’s infringement.

Yesterday the Federal Circuit issued an opinion regarding direct infringement after the Supreme Court gave its opinion and told the Federal Circuit to take another look. The case involves the question of whether, when a patent is directed to a method comprising a number of steps, a single party can infringe that patent even if it did not practice every single one of the steps. In another way, the case asked whether a defendant may be liable for inducing patent infringement when no other party has actually directly infringed the patent. As may seem immediately obvious, the Supreme Court said no; induced infringement will not lie unless there is at least a direct infringer first.

The Federal Circuit has now expanded the definition of infringement to include situations where all of the steps, while not necessarily being performed by the defendant, may still be attributed to the defendant. Now, liability can be found where the defendant “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” This broadens the scope of liability beyond the earlier rule which required that the defendant either perform all the steps, use an agent to perform some or all of the steps, or contract with another or enter a joint venture to perform some or all of the steps. This new rule adopts the Supreme Court’s analysis of induced infringement under copyright law, which was used in the seminal case of MGM v. Grokster on internet-based peer-to-peer music file sharing (which happens to have been the subject of this author’s Law Review article).

The ruling indicates that infringement can now be found where a party performs some of the steps of the method claim even if the other steps are performed by another party.

After Final Consideration Pilot 2.0 Program

After a final Office Action has been issued, prosecution of a patent application is considered to be closed. This means that the Examiner will not automatically consider or enter further arguments or amendments. Arguments and amendments can nevertheless be presented, however, if they do not place the application in condition for allowance or would require non-trivial amounts of searching by the Examiner, the Examiner will generally refuse to enter the response. A Request for Continued Examination is then typically used to obtain further examination of the case.

Since 2012, the Patent Office has operated an After Final Consideration Pilot Program (“AFCP”) which allows applicants to obtain continued examination of a case without having to pay for an RCE. The AFCP allows Examiners to take additional time to review cases, and provides for additional interviews for the purpose of moving an application toward allowance.

There is no fee for requesting the AFCP itself, but there may be fees involved if a response is filed beyond the shortened statutory period. AFCPs can only be filed in original, continuation, and divisional patent applications, or for international applications in the national stage, and only after a final rejection has been issued. Argument alone cannot be presented; there must be an amendment to least one of the independent claims, and the applicant or its attorney must be available for interviews with the Examiner regarding the response filed with the AFCP.

The AFCP can provide a helpful means of compacting and expediting examination of a patent application toward issuance without the costs and delays associated with a Request for Continued Examination.

Patent Drawing Requirements

Patent drawings have changed over time. Patent drawings have gradually shifted from being hand-drawn masterpieces to machine-drawn printouts. Hand drawings are a lost art that we probably will never recapture. Many of the formal requirements associated with patent drawings have also changed over time. The Patent Office is much more lax in its acceptance of patent drawings. Nevertheless, there are many requirements which it still reviews drawings for and will occasionally reject just after filing, or which an Examiner will object to later on. This article describes some, but not all, of the things the Patent Office reviews when it comes to drawings, as well as some best practices for drawings.

  • Orientation of the page – the page is supposed to be oriented with sheet numbering at the top, or if the sheet is turned so that it is in landscape, with the sheet numbering at the right. I don’t believe the Office is strict with this requirement, but it is supposed to be a requirement.
  • Orientation of the numbers – the sheet number is the only number, letter, or other indicia which can have a different orientation than the others. If the sheet is to be read in portrait, then all reference characters should be oriented in that direction. If the sheet is to be read in landscape, then all reference characters should be oriented to facilitate reading in that direction, other than the sheet number. There should never be inconsistent orientation among the reference characters.
  • Words – other than reference characters, there should be no other marks, indicia, or words on a sheet Legends can be used but are subject to the Office’s final approval.
  • Black and white drawings are normally used and are preferred. Only in rare cases can color drawings be used. Photographs are almost never permitted. The exception is when color drawings or photographs are the “only practicable medium for illustrating the claimed invention.”
  • Greyscale drawings can really destroy the quality of your patent drawings once uploaded to the Patent Office. If you scan drawings in as black and white only, and be sure they are not greyscale, do so. The Patent Office pixelates greyscale drawings in a way that can often lead to a drawings rejection a year or two down the road.
  • Margins – each sheet must include a top margin of at least 1 inch, a left side margin of at least 1 inch, a right side margin of at least 5/8 inch, and a bottom margin of at least 3/8 inch.
  • Character of lines, numbers, and letters. All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. The weight of all lines and letters must be heavy enough to permit adequate reproduction. This requirement applies to all lines however fine, to shading, and to lines representing cut surfaces in sectional views. Lines and strokes of different thicknesses may be used in the same drawing where different thicknesses have a different meaning.
  • English reference characters should be used except where other languages are commonly used (such as Greek alphabet letters to indicate angles)
  • Lead lines. Lead lines are those lines between the reference characters and the elements or structures. They should be straight or curved and should be as short as possible. They must originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines must not cross each other. Lead lines are required for each reference character except for those which indicate the surface or cross section on which they are placed. Such a reference character must be underlined to make it clear that a lead line has not been left out by mistake. Lead lines must be executed in the same way as lines in the drawing. See paragraph (l) of this section.

I have rarely or never seen the Patent Office enforce these rules. Don’t rely on that, though – they may change their policy any time, or they may decide to pick on your application!

  • The sheets must not contain frames around the sight (i.e., the usable surface), but should have scan target points (i.e., cross-hairs) printed on two cater-corner margin corners.
  • Orientation of multiple figures on one page. All views of the drawing must be grouped together and arranged on the sheets without wasting space, preferably in an upright position, clearly separated from one another, and must not be included in the sheets containing the specifications, claims, or abstract.
  • Exploded views. Exploded views, with the separated parts embraced by a bracket, to show the relationship or order of assembly of various parts are permissible. When an exploded view is shown in a figure which is on the same sheet as another figure, the exploded view should be placed in brackets.

What is an Ex Parte Quayle Action?

Once all claims in a patent application have been allowed, the Examiner can close prosecution of the application on the merits, even though there may be outstanding formal objections which preclude fully closing the prosecution. The Examiner does this by issuing an Ex Parte Quayle Action.

An Ex Parte Quayle Action can be favorable, because it means you are highly likely to obtain a patent. That, of course, depends on whether you accept the scope of the allowed claims. You can attempt to respond to the action with an amendment. This will be a choice driven by your plans for the patent and the claims allowed. If claims were withdrawn, you may choose to try to bring those into the application. Amendments going to the merits of the case are then treated similarly to those made in response to a final rejection, in which the Examiner can either consider the amendments or refuse to enter them.

Frequently, though, an applicant will accept and correct the formal issues raised in the Ex Parte Quayle Action so that the patent application can issue as a patent soon.

Importance of Patent Assignment Dating Practices

The date on which an assignment of an inventor’s patent rights is made can have a significant effect on downstream prosecution and success of the application(s) directed to the invention.

During prosecution, the Examiner will almost always cite prior art against the application. This prior art can come from nearly anywhere. However, commonly-owned prior art can be avoided if it was commonly-owned before the filing date of an application. Thus, the relation of the assignment date and the effective filing date can be a critical factor in the abandonment or allowance of an application.

35 U.S.C. 102(b)(2)(C) states that a disclosure shall not be prior art against a patent if the “subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.” This rule excepts “commonly owned” prior art from being used against a person or company. Common ownership can come about in a number of ways. It can be the result of an explicit assignment agreement, an obligation to assign (such as might arise either explicitly or implicitly in the context of employment), or because of a joint research agreement.

Establishing common ownership can be an effective way to argue against both novelty rejections under 35 U.S.C. 102 and obviousness rejections under 35 U.S.C. 103, because 35 U.S.C. 102(a) defines what is prior art both for purposes of novelty under 35 U.S.C. 102 as well as for purposes of obviousness under 35 U.S.C. 103. If a document qualifies as prior art under AIA 35 U.S.C. 102(a)(1) or (a)(2), and is not subject to an exception under AIA 35 U.S.C. 102(b), it may be applied for what it describes or teaches to those skilled in the art in a rejection under AIA 35 U.S.C. 103. Conversely, if a document is excluded from consideration as prior art under 35 U.S.C. 102(b)(2)(C), it cannot be considered prior art for any novelty or nonobviousness purposes. Nonetheless, the disclosure might still be relied on by the Examiner to make a double-patenting rejection.

Common ownership must exist at the time the application under prosecution was effectively filed. I’ve talked previously about what an effective filing date is, but for short-hand purposes here, it is the earliest date on which a patent application was filed which disclosed the subject matter claimed in the current application. So, if the current patent application stems from a provisional application, and the provisional disclosed the subject matter now claimed, the common ownership must have existed at the time the provisional was filed to be able to invalidate that disclosure as prior art. Therefore, prior to filing, an assignment should be signed and dated (and preferably notarized). As a backup, having employment agreements that create an obligation to assign can help establish ownership should an assignment be forgotten.

Submitting Prior Art in Another’s Patent Application

There are various mechanisms for submitting relevant prior art references in an attempt to defeat a competitor’s patent or patent application.  The America Invents Act changed and added these mechanisms.  For pending applications, a protest or third-party submission can be made.  For an issued patent, one can file an inter partes review or a post-grant review.  There are other niche mechanisms that can be used as well.

Today, I’ll review the protest as a method for submitting art in another applicant’s patent application.  A protest against a pending application can be filed by any member of the public.  A party obtaining knowledge of an application pending at the Office can file a protest against it and can call attention to any facts within their knowledge which, in their opinion, would make the grant of a patent on the application improper.

There are specific requirements for filing a protest, which include serving the protest upon the applicant to provide them with notice.  The protest must also include a number of disclosures, including a listing of relied-upon information such as patent and publication references, an explanation of the relevance of the references, copies of the references, and translations of the references if necessary.

Timing is critical for a protest.  A protest must be filed before the application is published or before a notice of allowance is issued in the case, whichever is earlier.  Practically, a protestor should submit the protest as soon as possible after becoming aware of the existence of a pending patent application, which will provide the Patent Office the best opportunity to review the protest completely.

Once a patent application is published, the filing of a protest can only be made with the express written consent of the applicant.  However, a protest can be submitted after a notice of allowance, but will likely not be entered.  If it sets forth references which clearly anticipate or render obvious at least one of the claims, it may be considered.  A protest will not be considered if it provides information which is merely cumulative.

The involvement of the entity filing the protest ends after filing the protest – they are not informed or updated regarding the ongoing status of the case.

Filing a protest should be carefully considered.  There are strategic consequences for filing a protest that may dissuade the protestor from filing.

Revival of a Patent Application under the Unintentional Delay Standard

A post I wrote about five years ago discussed how to revive an abandoned patent application. Revive PatentAt that time, there were two standards for reviving an application: it could be revived under an “unintentional delay” standard or under an “unavoidable delay” standard. An application could be revived for a fee of about $900 if the entire delay in responding was unintentional. This was an easy standard to meet and essentially required, as long as it was truthful, a check-the box style statement that the delay was unintentional. Alternatively, an application could also be revived under the unavoidable delay standard, if the applicant and attorney had essentially tried just about everything to prevent abandonment of the application. That included calendaring everything and placing redundant reminders on file. It was a tough standard to meet, and applicant often opted simply to pay the increased fee under the unintentional standard rather than risk the lower fee (about $300) and be refused under the unavoidable standard.

In 2013, patent reform did away with the unavoidable standard for revival. While the Patent Office has continued to review petitions to revive which were filed on the unavoidable basis before the change in law, petitions filed afterward would not be considered if relying on that standard. Going forward, petitions to revive could only be filed on the unintentional standard and had to be accompanied by the higher filing fee.

But What About Space Inventions?

Did you know that US patent law worries about space inventions? Congress has written provisions into statute that account for activity in space. So, if you find yourself floating around in US-controlled space, rest assured that patent law has not forgotten you. For instance, 35 U.S.C. 105 states:

(a) Any invention made, used, or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title, except with respect to any space object or component thereof that is specifically identified and otherwise provided for by an international agreement to which the United States is a party, or with respect to any space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space.

(b) Any invention made, used, or sold in outer space on a space object or component thereof that is carried on the registry of a foreign state in accordance with the Convention on Registration of Objects Launched into Outer Space, shall be considered to be made, used, or sold within the United States for the purposes of this title if specifically so agreed in an international agreement between the United States and the state of registry.

I’m guessing that there are plenty of other statutes which define space activity so that it can be regulated. Know of any?

Can I trademark a scent?

The short answer is yes, Scent Trademarkbut it can be very difficult. A scent mark is considered a nontraditional or non-conventional trademark. This category covers a broad spectrum of marks which includes any type of trademark that does not currently belong to a conventional category. Conventional marks are words, names, logos, and the like. Scents, sounds, colors, packaging – things like this fall under the non-conventional mark category. Non-conventional marks are not per se more difficult to register as trademarks, but they pose unique challenges not encountered when registering a more traditional mark.

One of the largest complications in attempting to register a scent mark is that the perception of odor can vary from person to person. This subjectivity can lead to considerable argument when deciding whether the scent actually functions as a trademark. After all, trademarks are consistently used symbols that identify in a consumer’s mind the source of the product or service. Key to the ability to identify the source is that the mark be used consistently, or that the consumer experience the mark in a consistent way. If a scent can potentially vary each time it is experienced, a question is created as to whether it is sufficiently consistent so as to function as a trademark.

Another complication is whether the mark is functional. Functional portions of marks cannot be registered. This is most often seen with trade dress, where the Office refuses to protect portions of a product which are formed or shaped purely for functional reasons. This issue can arise with smell marks. For example, the distinct smell of a perfume cannot be protected with a trademark because it is a functional part of that particular perfume.

What is acquired distinctiveness?

To function as a trademark, a word, symbol, logo, name, or other mark must be capable of identifying the source of the product or service and distinguishing it from other sources.  Marks are either inherently distinctive, have not distinctiveness, or acquire distinctiveness.  Many marks are “inherently distinctive.”  An inherently distinctive mark is, as its name insinuates, unique by its very nature.  The more unique a mark is, the better it is at differentiating sources of products, and the more powerful it can be in the minds of consumers.  Inherently distinctive marks are eligible for immediate registration on the Principal Register.

Marks which lack distinctivenes cannot function as trademarks.  The Trademark Office will refuse to register such marks.  In many cases, an unregistrable trademark is any term or image that the Trademark Office believes describes the applied for goods or services.  In other cases, the mark may simply be a generic name for the product or service.  Descriptive marks, however, break down into those which are either “merely descriptive” or “geographically descriptive.”  These two terms describe a situation where a trademark is descriptive of the goods or services in the application or the location or origin of the goods or services.  For example, a merely descriptive mark would be PANCAKES for a restaurant that serves pancakes.  An example of geographically descriptive would be AMERICAN BURRITO for Mexican restaurant located in the US.  The Office, upon determining a mark is merely descriptive or geographically descriptive will refuse registration of that trademark.  There are ways to respond to such a rejection, however.

An applicant can respond by arguing that the mark is not descriptive.  These are not easy arguments to make.  Alternatively, in some cases, there may be an opportunity to argue that the mark has acquired distinctiveness and thus has become eligible for registration.

Acquired distinctiveness is when a company has been using a descriptive trademark for over 5 years and that trademark has gained recognition in the industry for the company’s goods or services.  Making an acquired distinctiveness argument is known as making a Section 2(f) claim because of the statute from which the basis arises.  Without the use of a Section 2(f) claim, the Trademark Office would not allow descriptive marks to register.  The Section 2(f) claim must establish that the mark has been used for five years with continuous and exclusive use that has allowed customers to relate certain goods or services to the company’s brand they are able to apply for the mark and rely on this provision to move the application towards registration.  It is important that the use be exclusive because if another company is using the mark in the same industry, then their exists a possibility that the distinctiveness quality of the mark is not so strong.  Often, the Trademark Office will accept a Section 2(f) claim, but sometimes, the Examiner requests to see additional proof of the efforts toward and extent to which the mark has been advertised and accepted as distinguishing the applicant’s goods or services.