Applied Materials wins at PTAB in Ex parte CUVALCI; PTAB mentions “the epitome of hindsight”

The discussion section begins:

We reverse the Examiner’s rejection for the reasons set forth in
Appellants’ Appeal and Reply Briefs.
We add the following for emphasis.
As the Federal Circuit has explained, “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning
with some rational underpinning to
support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)

As to hindsight

This argument is unpersuasive because an examiner’s
prior art searches are the epitome of hindsight, and the Examiner has not
explained why or how a person of ordinary skill in the art would formulate
the “simple text search” in
the absence of hindsight.


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  • PTAB decision in Ex parte Florian

    The PTAB basically adopted the arguments of the Appellant in the case Ex parte Florian :

    We reverse the above § 103 rejection,
    for substantially the reasons provided by Appellants in their Brief and Reply Brief.
    We add the following.
    It is the Examiner’s position that the primary reference of Hayano
    discloses the claimed subject matter, except for the recitation of
    “wherein the piezoelectric layers, the electrode layers, and the absorption layer
    together form a sintered monolithic component”. Ans. 4–5.
    The Examiner relies upon Ragossnig for suggesting
    this aspect of the claimed subject
    matter. Ans. 5

    As to motivation:

    We add that “[i]f the
    proposed modification would render the prior art
    invention being modified unsatisfactory for its intended purpose, then there
    is no suggestion or motivation
    to make the proposed modification.
    In re Gordon, 733 F.2d 900, 902
    (Fed. Cir. 1984)”

    March 18, 2015. Attorneys involved were Fish & Richardson.

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  • Microsoft loses at PTAB in re-exam 95002315

    Back in January 2014, techcrunch noted:

    Motorola Mobility is being sold to Lenovo, in a deal worth $2.91B. Google is divesting itself of the handset division it purchased for $12.5B in 2011, but it will keep some of the assets — including patents.

    One infers patent challenges were passed along as well. One of these was against Microsoft with Patent Owner, Microsoft Corporation (“Owner”), unsuccessful in its appeal to PTAB under 35 U.S.C. §§ 134(b) and 315(a) from various adopted rejections.

    PTAB noted: We review the appealed rejections for error based upon the issues
    identified by Appellants, and in light of the arguments and evidence
    produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)(precedential)
    (citing In re Oetiker, 977 F.2d 1443, 1445(Fed. Cir. 1992))

    Of Ex parte Frye, from LawUpdates: In a recent and rare precedential decision, the Board of Patent Appeals and Interferences (BPAI) has clarified that examiner findings are given no deference when specifically challenged on appeal. However, the Board will neither review nor disturb examiner findings that are not specifically challenged on appeal. The opinion in Ex Parte Nancy C. Frye, 94 U.S.P.Q.2d 1072, 2010 WL 889747 (BPAI 2010) is particularly notable because both U.S. Patent and Trademark Office Director David J. Kappos and Deputy Director Sharon R. Barner joined the Board in issuing the opinion.


    Director Kappos best stated the message of Frye on his blog: “In summary, preserving a complete de novo review on the one hand, while not diverting Board effort into issues no raised by the appellant on the other hand, preserves the right balance between thorough review and administrative efficiency.”

    The Frye decision appears designed to emphasize the importance of challenging on appeal the specific factual findings made by the examiner, rather than merely the general basis for the examiner’s rejection. The Board will defer to examiner findings that are not specifically challenged.

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  • AstraZeneca’s Crestor® Patent is Invalidated by the Brazilian Federal Courts – The National Law Review

    AstraZeneca’s Crestor® Patent is Invalidated by the Brazilian Federal Courts
    The National Law Review
    On June 5, 2015, the 13th Federal District Court of Rio de Janeiro invalidated Astrazeneca’s patent BR PI0003364-2 covering Crestor® (rosuvastatin). The Judge, the Honorable Marcia Nunes Barros, agreed with the arguments submitted by the Brazilian …

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  • FACT SHEET: The United States and Brazil – A Mature and Multi-Faceted … – (press release)

    FACT SHEET: The United States and Brazil – A Mature and Multi-Faceted (press release)
    Worksharing on Patents: Recognizing the value of collaboration on patents to promote innovation in the United States and Brazil, the United States Department of Commerce and Brazil’s Ministry for Development, Industry and Foreign Trade signed a Joint

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  • European patent markets, trends and consensuses: what comes next?

    Following the IP Finance blog’s extensive coverage of the IPBCGlobal 2015 conference, the weblog received the following message from Corinne Le Buhan:

    “A tweet from @PatentTwit asked “where’s the patent market analysis of Europe and Asia? Opening session largely covers US market trends?” This question was discussed briefly towards the end of the panel session, it being suggested that things might change in Europe once the unitary patent came into force and once China had got its act a bit more together. 

    I just thought you may also be interested on the recently published report from the EU expert group on patent aggregation.

    IMHO it gives an interesting snapshot of the current and anticipated trends in terms of patent markets from a diversity of primarily EU-based stakeholders perspective. I was invited to one of the hearings to bring the innovative SME point of view and we had really good debates that day. The expert group must have had a hard time to deliver a consensus report and recommendations out of the hearings, but I think they did a good job overall, and I’m now curious to see what will come next (see their recommendations in the report).

    Readers’ comments and prophecies are welcomed. We don’t get nearly enough discussion on this blog, so please take the trouble to participate and tell us what you think.

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  • How to justify decisions while rejecting evidence: a further comment

    Earlier this year the jiplp weblog posted a Current Intelligence note, “How to justify decisions while rejecting evidence” by Tomasz Rychlicki (Patent and Trade Mark Attorney, Poland, and a long-standing member of the JIPLP Editorial Board). This blog has now received a response from two Polish practitioners, Jakub Mrozowski and Michał Siciarek, both of LDS Lazewski Depo & Partners, Warsaw.  

    This blog is pleased to reproduce Jakub and Michal’s response in full below, and thanks them for taking the trouble to supply this most instructive comment. This is what they write:

    With reference to this note from Tomasz Rychlicki posted via JIPLP blog and the corresponding discussion on the JIPLP Readers and Writers LinkedIn Group regarding the decision of the General Court in Case T-235/12CEDC International sp. z o.o. v OHIM (Shape of a blade of grass in a bottle), as insiders to this case, we would like to provide a short commentary on the interesting points not covered in the note.

    The decision in this case touched upon three important issues. As Tomasz rightly noted, to a large extent the case concerns the issue of the admissibility of evidence not filed within the initial deadline (filed together with the appeal to the OHIM’s Board of Appeals) and the issue of proper justification of OHIM’s decision when excersing its discretionary power to either allow or deny belated evidence. However, this decision represents also an important point in the discussion on genuine use of several trade marks on the same product, in particular with regard to 3D trade marks.

    Procedural issues

    As some readers may recall, there was a time when the General Court used to consider all sorts of evidence submitted together with the appeal to the Board of Appeal as being submitted in due time (due time = in time to file the appeal). Since, however, OHIM did not greatly appreciate this practice, it appealed one of the decisions of the General Court and so this liberal era has ended with a Solomonic judgment delivered by the Grand Chamber of the Court of Justice in Case C29/05 P Kaul. The Court of Justice of the European Union (CJEU) wisely considered the arguments of both sides and said that OHIM may accept or reject belated evidence, but that it needs to present a justification of its decision to do so and that certain situations or factual elements may favour taking belated evidence into account.

    From that time onwards, the case-law has been a bit shaky, but seems to be settling down again to a fairly liberal approach. The decision in Case T-235/12 provides a thorough overview of the recent case-law in this respect and also analyses a number of arguments of the parties relating to situations in which the belated evidence should or should not be accepted. We will thus not go into more detail in this respect, but rather encourage anyone struggling with the belated evidence issue to take a look at the judgment.

    Genuine use of 3D trade marks

    However, we would like to bring the readers attention to essential issue underlying the decision and in the proceedings before the OHIM, which is that of the proper standard of assessment of genuine use of the 3D trade marks. 
    The case concerned the opposition against a CTM application for a 3D trade mark based on earlier 3D trade marks, each representing a simple bottle with a single blade of grass inserted inside:

     Above: one of the earlier national trade
    marks (left); the contested 3D mark (right)
    These trade marks were all registered without labels, but were only used on the market with labels with various word and graphical trade marks on them. As proof of use request was filed, OHIM had to analyse the issue of genuine use of earlier 3D trade marks. During the opposition proceedings the opponent presented numerous items of evidence, but only with visuals of the product in front view where blade of grass is visible behind the label:
    Examples of genuine use presented before
    OHIM’s Opposition Division
    The Opposition Division found that the evidence provided was insufficient to establish genuine use of the earlier 3D mark and that the presence of a label containing the term ‘żubrówka’ and the representation of a bison on the bottle marketed altered the distinctive character of that mark in the form in which it was registered. On appeal to OHIM’s Board of Appeal the opponent supplemented the evidence with visuals of the product from both sides and from the back, including affidavits:

    Visuals presented together with the appeal to OHIM’s Board of Appeal 
    The Board of Appeal still however found that the opponent did not prove genuine use (and more specifically, the nature of use) of the earlier 3D trade marks, basing its opinion on the analysis of images of the trade marks in views from front only and finding that the label had overshadowed the blade of grass placed inside the bottle. OHIM did not take into account new items of evidence submitted together with an appeal presenting views of the product from various sides (where the label did not cover the blade of grass) and OHIM failed to present any reasoning in this respect.

    One of the arguments relied upon in the application for annulment was that three-dimensional trade marks may be perceived by consumers from various sides, including sides where the blade of grass is clearly visible and label does not cover it in any way. All in all, the nature of 3D trademarks requires the analysis of the proof of use perceived from various sides, while the OHIM its analysis to the front view only, which is characteristic for figurative trademarks. The Court agreed with this argument and presented its opinion in various paragraphs, in particular:

    [64] First, Mr K.’s statement and the appended presentations of the bottle, seen from the front, two opposite sides and the back, were, prima facie, likely to be truly relevant to the outcome of the opposition brought before OHIM since, had they been taken into account, they would have been likely to call into question the Board of Appeal’s assessment …:  first, that ‘the diagonal line was not affixed to the outside surface and did not appear on the label itself’; second, that ‘as a result of the presence of the label, it was impossible to see what was behind it on or in the bottles’; and, third, that ‘in those circumstances, the applicant had not proven the nature of use of its earlier three-dimensional French mark’.

    [65] It is important to note in that regard that the three-dimensional nature of a mark such as that at issue precludes a static, two-dimensional vision and calls for a dynamic, three-dimensional perception. Thus, a three-dimensional mark may, in principle, be perceived from a number of sides by the relevant consumer. As regards proof of use of such a mark, it must therefore be taken into account not as a reproduction of how it is viewed in two dimensions, but rather as a presentation of how it is perceived in three dimensions by the relevant consumer. It follows that presentations from the side and the back of a three-dimensional mark are, as a rule, likely to be truly relevant for the purposes of assessing the genuine use of that mark and cannot be rejected solely on the ground that they are not reproductions from the front.

    All in all, the decision in Case T-235/12 gives the holders of 3D trade marks yet another argument in favour of the possibility of joint use of several trade marks at the same time which is still considered genuine. And this fits well in the discussion on genuine use of several trade marks, present in decisions such as Cases T-29/04 (CRISTAL), C-553/11 (PROTI), C-12/12 (LEVI) or C-252/12 (SPECSAVERS).

    And recently, paragraph 65 of the decision in Case T-235/12 found its way to the Court of Justice Annual Report for 2014 (among few other cases from the IP field). The quote can be found in the CJEU Annual Report on page 146.

    We look forward to readers’ comments and examples of other cases touching upon this very interesting area.
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  • You are free to crowdfund: Kickstarter wins its first patent case – Ars Technica

    Ars Technica
    You are free to crowdfund: Kickstarter wins its first patent case
    Ars Technica
    In the lawsuit, ArtistShare tried to convince the judge to allow its patent, claiming that it wasn’t trying to own crowdfunding. ArtistShare lawyers insisted that the patent wasn’t overly general and said that it covered “particular systems for
    Kickstarter Wins Legal Battle to Protect Crowdfunding from Patent ThreatsHollywood Reporter
    Crowdfunding patent invalidatedBoing Boing
    Kickstarter Prevails in ArtistShare Patent SuitCourthouse News Service
    JD Supra (press release)
    all 6 news articles »
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  • U.S. Patent No. 7,584,154: Arbitration of online game results using an arbitration server and method

    U.S. Patent No. 7,584,154: Arbitration of online game results using an arbitration server and method
    Issued Sep. 1, 2009, to Microsoft


    The ‘154 patent provides an arbitration service for online gaming. Prior to the game, players register with an arbitration server which retains a record of each player’s game information. At the end of the game the arbitration service receives information from all the players in the game. It then compares the information it gathered with the information the player’s submitted to check for inconsistencies. If no inconsistencies are found, the information is saved and the players move on to a new game. If a player is found to have disconnected during the game, his opponent will be declared the winner, and the quitting player may be subjected to a pre-determined punishment.


    Official results for an online game session are determined by an arbitration server based upon reports received from each game console participating in the game session. The reports provide results for all of the players participating in the games session. Before starting the game session, each game console registers the players using it with the gaming service, so that a player who disconnects mid-game can be identified. If the results reported differ, predefined arbitration rules are applied to determine the official results. If a game console cannot report because it is being packet bombed, a different protocol is used to transmit a data packet to the arbitration service indicating that the gaming console is being packet bombed. While not required, the arbitration server can use historical data recorded for each player to apply the predefined arbitration rules in determining the official results.

    Illustrative Claim:

    1. In a computing environment comprising an online game service and a plurality of online game players playing a game at remote client computers that are connected to the game service, a method for automatically arbitrating at the game service a disputed outcome because of inconsistent game outcomes reported to the game service by the plurality of players, the method comprising steps of: requiring, at the game service, at the beginning of an online game session and prior to beginning the game, each of a plurality of players to register with an arbitration server at the game service; retaining a record at the game service of each player that agreed to play at the beginning of the game session irrespective of whether each player finished the game session; creating and storing at the game service a unique ID at the beginning of a game session for that session so that each registered player for that game session is identifiable as to that game session; determining, at the conclusion of the online game session played by the plurality of registered players, results for the game session independently at each client computer of the plurality of registered players which remains connected to the game service; recording the outcome of the game session with respect to all registered players independently at each connected client computers; creating a plurality of independent records of the same game session; receiving reports at the gaming service at the conclusion of the online game session played by the plurality of registered players from at least two client computers from the plurality of the registered players, each report received from a registered player including the outcome of the game session for all registered players, as independently determined by the client computer of the registered player; comparing, automatically at the game service, the results of all reports submitted to the game service to determine if any inconsistency exists in the outcome of the game session based on the results that were reported; declaring, if the game service determines that no inconsistency exists between the reports submitted to the game service, and if results are reported by all of the registered players, the outcome of the game session based on the results found in the submitted reports; and otherwise, applying at the arbitration server of the game service, if either an inconsistency exists in the results that were reported or if not all of the initially registered players for the game session submitted a report at the end of the game session, a predefined set of arbitration rules using any previously determined trust ratings stored at the game service for any of the registered players to determine the official results for the game session; and updating at the game service a trust rating for each of the registered players, based on events relating to how the game was played by each registered player, irrespective of whether a report was submitted by a player or not.

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  • Mytheos Holt praises Goodlatte’s Innovation Act

    Mytheos Holt, a Senior Fellow in Freedom to Innovate with the Institute for Liberty, and sometime writer for US Senator John Barrasso (R-WY), goes after Democratic Iowa Senate Candidate Bob Krause in an article in the DailyCaller.

    There is a line about arguments of Krause and opponents of patent reform (reform manifested in Goodlatte’s Innovation Act): as is often the case when an argument’s biggest exponents are the architects of Obamacare and trigger warning-happy universities, this attempt to gloss over the real problem of patent trolling is utterly untrue.

    One suspects Dana Rohrabacher, Republican Congressman from Orange County, CA, finds it amusing to be grouped with the “architects of Obamacare.” And a different Holt (“Rush”), a Democrat (and Ph.D. scientist) from the Princeton, NJ area was also NOT in the camp of patent reform.

    ** Another memorable line from Mytheos:

    Contrary to the liberal narrative that paints them as heroic little guys standing up against nasty, evil corporations, NPEs are nothing but leeches, and the sorts of leeches who dirty the name of the legal system, to boot.


    There are actually “heroic little guys” who survive because of the patent system.
    LBE has written about the Spencer repeating rifle which played an important role at “East Cavalry Field” at Gettysburg and during Wilson’s cavalry raid to Selma. The Wright Brothers’ story is legendary. Chester Carlson, the father of xerography, was ignored for years and then later copied. The recent “axe handle” bat story illustrates a recent case of the importance of patents to the “little guy.”

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