All Things Patent Blog


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Patent: Use of Common Sense in an Obviousness Analysis

patent-use-of-common-senseThe Federal Circuit decided Arendi S.A.R.L vs Apple Inc. in August of this year.  The Court ruled that the Patent Trial and Appeal Board misapplied the law on permissible use of common sense in an analysis. While reversing the PTAB’s final decision, the Federal Circuit held that the PTAB’s application of common sense to supply a limitation missing from a prior art reference was conclusory and unsupported by substantial evidence. The Federal Circuit explained the proper use of common sense in an obviousness finding and helpful guidance for practitioners.

Being sued by Arendi in district court for infringement of US Patent 7917843, the defending parties Apple, Google, and Motorola Mobility filed a petition for inter partes review of the declared claims. The district court proceedings were then stayed pending completion of the inter partes review proceeding.

The claims of the ’843 patent are generally directed to techniques for locating information in a displayed document. Petitioners maintained that a single prior art reference “Pandit” rendered the claims obvious. Pandit discloses methods for recognizing predetermined types of text in a body of text and performing operations pertinent to the recognized text.  Petitioners cited the recognition of telephone numbers as text and the operation performed as adding the recognized telephone number to an address book, in the specific embodiment of Pandit. The PTAB, agreed with Petitioners that, as a matter of common sense, the technique disclosed in Pandit can be presumed to perform a search of the address book using the identified telephone number in order to avoid duplicate telephone number entries.

The Appellees argued that the process of searching for data in a database was well known at the time of the invention. But, they were unable to provide a reason as to why it would be proper to extrapolate from this general knowledge to specifically add a telephone number search to the Pandit reference.

In sum, the Appellees’ conclusory statements and unspecific expert testimony were insufficient to invoke common sense to supply this key limitation.

The Federal Circuit’s opinion provided guidance regarding the application of common sense in an obviousness analysis for patent prosecution lawyers and patent litigators.

On the patent prosecution front, an applicant confronting an obviousness rejection based in part on common sense can use this case as leverage and press the patent examiner to explain, specifically, and with evidentiary support and the reason of  limitation absent from the prior art. For patent litigators, the decision is a helpful guide for parties on both sides of an invalidity case.

Criticality of claims in an infringement case

Preparing the claims comparison chart is a primary step in studying a patent infringement case. MaxVal’s Claims Set Comparison tool and Claim Chart Generator help in analyzing and especially illustrating the elements of the claims.  Claim charts are automatically generated in a ready-to-use format.

Patent and litigation attorneys have relied on MaxVal’s Claim Set Comparison and Claim Chart Generator tools for several years.

Key features of the Claim Chart tools:

  • Automatically creates a downloadable claim chart for a U.S. patent or published U.S. application.
  • View the Independent claims separately for a better view
  • Compares two sets of claims and highlights the difference between them
  • Helps figuring out the difference between the U.S. claims and the foreign counterpart claims
  • The claim charts (including PCT and EP patent/publications) can be generated in three different formats: Word, Excel or HTML.

The illustration below shows a comparison of claims sets and patent drawings for the patent #791843

Claims Set Comparison - Patent US7917843.PNG

Fig-1: Snapshot shows comparison of the claims at publication and granted stages for patent #791843

Patent drawings-843.PNG

Fig-2: Patent drawings of ‘843

Create your Max-Insight account today to start your free trial and access a bundle of patent tools trusted by hundreds of patent professionals.


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MaxVal Launches SymphonyIAM – an Innovative Intellectual Asset Management Platform

symphonyiam-bannerMaxVal, a leading IP management solution provider is pleased to announce the public launch of SymphonyIAM — its new cloud-based intellectual asset management platform.

SymphonyIAM is the complete intellectual asset management platform that enables IP counsel and IP managers to mitigate risk and manage better by providing visibility, insight and control over their intellectual assets.

SymphonyIAM integrates all aspects of intellectual asset management into one platform with capabilities including invention management, docketing, portfolio management, workflow management, annuity management, expense forecasting, analytics, reporting and more.  A key component of SymphonyIAM is MaxVal’s newly developed GFWTM global prosecution data sync technology that enables unified data collection from both public and private patent data sources including prosecution data from the U.S. as well as all major foreign patent offices. Steven Gong, patent attorney and product director for SymphonyIAM says “SymphonyIAM’s ability to build a strong data foundation through unprecedented access to U.S. and foreign patent data is a game changer for the industry, because maintaining correct, current, complete IP data is critical to any IP department.”

MaxVal CEO, D. Bommi Bommannan, says “SymphonyIAM received overwhelmingly positive response from industry thought leaders during the private launch earlier this year. Based on the positive feedback and comments from IP counsel and IP managers of some of the most innovative Internet, high-tech, biomedical and pharmaceutical companies, we are now pleased to announce the public launch of SymphonyIAM.  With SymphonyIAM, users will, a) know what assets they have, b) have the tools they need to analyze and manage those assets throughout the asset lifecycle and c) be able to generate insightful reports for key stakeholders. SymphonyIAM will reduce risk and make IP operations more efficient.”

For more information about SymphonyIAM, please visit www.symphonyIAM.com or email symphonyiam@maxval.com.


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How do I select the right prior-art search professional?

 

Key questions to ask while hiring a professional/firm to perform prior-art searches.

A patentability search and analysis are carried out to ensure that an invention would meet the novelty and non-obviousness requirements for obtaining a patent. However, such search and analysis would not be effective unless claimable subject matter is identified correctly. A patent agent or attorney needs to thereafter determine the breadth of the claimable matter by examining the disclosure along with the prior art identified in the search in order to complete the analysis.

A patent cannot claim something that already exists or is apparent on combining existing knowledge. Prior art refers to any technical information that exists prior to the effective date of a patent application that discloses the same or similar solution to the problem addressed by the invention.

Identifying relevant art that predates the critical date is a big challenge. It is important to choose a reliable prior-art search professional or firm, so that the full potential of an invention may be realized. In today’s electronic-age, anyone with Internet access and basic technical knowledge could, in principle, conduct prior-art searches. However, deep knowledge of the technical domain as well as patent law is required to analyze an invention satisfactorily for determining patentability. Appropriate usage of search tools and technical expertise are required if results are to be obtained within reasonable cost and acceptable timelines. There are a number of ways to locate a competent prior-art search professional or firm: Internet search, online directories, the patent office websites, etc.

Here are some of the key questions that should be asked by an inventor or applicant while hiring a vendor to perform prior-art searches.

Key questions to ask when hiring a prior-art search professional or firm


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Intellectual Asset Management Should be Affordable and Easy

For rapidly growing innovative companies, intellectual assets (patents, trademarks, copyrights and trade secrets) are the ultimate source of competitive advantage.  These assets usually underpin the company’s valuation and must be managed carefully.  The person responsible for managing the IP portfolio must orchestrate and coordinate activities of inventors, outside counsel, in-house IP operations staff and external service providers.  At MaxVal, we see our clients’ IP managers struggle with juggling docketing systems, spreadsheets and patent workflow management in general.  As the number of patent applications and foreign filings grow, keeping track and being able to report on status becomes a significant problem.

Intellectual Asset Management systems are available.  But, the current generation of products are expensive, difficult to implement and manage and costly to manage over time.  For very large organizations, these systems may be cost effective – but what about smaller companies who can’t afford the implementation and maintenance costs?

At MaxVal, we have been developing products to help companies manage their IP for several years.  These include:

  • Max-IM for Invention Disclosure Management
  • Max-IDS for reference management and IDS generation
  • Max-PAIR for keeping up with pending patent application status in your private PAIR account
  • Max-PPM for portfolio management and reporting
  • Annuity Payer for estimating renewal costs, making payments directly and as an affordable annuity payment managed service

While these MaxVal tools solve specific problems, they do not meet the needs of growing innovative companies who want to get better visibility into all of their intellectual assets.  Many of the companies who need this control and visibility are not large and are not well matched to large and expensive IAM systems.

What is needed is an end to end Intellectual Asset Lifecycle Management solution that delivers good value to companies of all sizes.  Everyone involved in your company’s IP would benefit from the lifecycle management tool, including your outside counsel.

Please stay tuned to MaxVal’s All Things Patents blog for more news on this topic.  Some exciting announcements are coming soon.

Bommi Bommannan, PhD, JD


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MaxVal Releases the PTA Wizard – A DIY Tool to Calculate USPTO Patent Term Adjustments

MaxVal has just released the PTA Wizard – a powerful do-it-yourself tool for verifying the patent term adjustment calculations of the US patent and trademark office.

The USPTO extends the normal term of a patent with a patent term adjustment that is based on delays in prosecution. The calculation is complicated and is supported by data that resides in the USPTO PAIR system. The PTA Wizard allows users to view all the data and see how it has been used to compute the PTA. Users can make changes to the data to see the impact of missing data or mistakes that may have been made on the PTA.

How the PTA Wizard works

After logging in, users have to enter the patent number. The PTA Wizard then imports the relevant information from the USPTO PAIR system. Clicking “Import PTA Data” retrieves all the current PTA-related data from PAIR, which is saved in the database of the PTA Wizard. Your work is listed on the home screen allowing you to save your work and resume your analysis at any time.

PTA Wizard_1

Once the data is loaded, the PTA Wizard shows the PTA calculation of the PTO, and a new PTA is calculated based on the updated contents of the PAIR file. Users can access the application data, the PTO calculation details, and the updated calculation using tabs. These tabs are laid out in a manner that is similar to the PAIR record layout.

PTA Wizard_2

To see the details behind the PTA value, users can check each type of delay. The “A Delay” activities are shown below. The delays are color coded and linked. Yellow activities are those entered by the USPTO, orange by the applicant, and red activities denote an RCE (Request for Continued Examination).

PTA Wizard_3

Users can add new activities or edit existing activities. Users can change the delay value directly, or change the activity date or start/stop value. The PTA Wizard will then automatically calculate a new delay value based on the new activity date or start/stop value.

PTA Wizard_4

When you are done analyzing and editing the delay data, you can click “Export to Excel”. A summary of the PTA calculation is shown in the “Extension” tab. All the activity details are shown in the “IFW” tab.

PTA Wizard_5

If you wish to petition for a change to the PTA, you can use this information in your petition.

PTA Service

MaxVal offers a Patent Term Adjustment Calculation Service where an expert staff member at MaxVal goes directly into PAIR to recompute and verify whether the PTA calculation of the PTO is correct. With the PTA Wizard, users themselves can easily verify the computations. By this, users gain insight into the underlying data and are able to reduce costs.

If correct patent term adjustments are important to your business, you should try the PTA Wizard.

See a video demonstration of the PTA Wizard

Contact bd@maxval.com for more information.


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MaxVal’s Litigation Databank Now Includes PTAB Search and Alerts*

MaxVal’s Litigation Databank contains a comprehensive database of over 71,000 cases from the U.S. District Courts, the Court of Appeals, the Supreme Court and the ITC.  Litigation Databank subscribers can search cases, produce reports on cases and parties, set watches and download case related documents.

Existing and new Litigation Databank subscribers registered before Jan 31, 2016, can access USPTO Patent Trial and Appeal Board (PTAB) cases at no extra cost.

PTAB cases cover AIA post-grant, interference and interpartes reviews. Within Litigation Databank, users can search PTAB court proceedings, see details about the case, see the final decision and purchase case related documents.

Here is a short video demonstration of Litigation Databank


The Litigation Databank is available from MaxVal through a low priced subscription. It is a SaaS application with no software to install. The API connection is through SSL.

The Litigation Databank helps patent attorneys every day as they prepare for litigation and monitor the progress of their cases through the courts.  With the Litigation Databank, you can:

  • Proactively monitor and query whether patents of interest have been litigated.
  • Gain analytical insights on plaintiffs, defendants, filing trends, courts, etc.
  • Stay updated with patent litigation alerts.
  • Query and analyze over 20 litigation fields including patents, products, plaintiff, defendant, court, judge, law firm and case outcome.
  • Minimize PACER expenses.

Litigation API

An API (Application Programming Interface) service is available for the Litigation Databank. The API allows your patent databases/tools to interface with our database and populate litigation data based on your specific requirements.

PTAB Alert

MaxVal also offers a PTAB Alerting Service.  PTAB Alerts are an e-mail notification of changes to cases you are following.  *Please contact us with your custom request for an estimate.

Contact MaxVal today for more information at bd@maxval.com.


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MaxVal’s Max-IDS: New Features Make It Easier Than Ever For Your Team To Manage Information Disclosures

Max-IDS is MaxVal’s cloud-based, hosted, Information Disclosure/Reference Management solution.  Max-IDS is much more than a form generator.  Max-IDS stores your references in a centralized database together with information about the cases citing each reference. This promotes consistency, reduces confusion and makes ad-hoc solutions (such as individual spreadsheets) unnecessary.

MaxVal is constantly looking for ways to improve Max-IDS.  Based on user feedback, we have recently added the following enhancements to Max-IDS:

  • Reference source comments
  • Reference comparison chart enhancement
  • Case and Group functionality

Reference Source Comments

Max-IDS helps you keep your references organized.  Reference “Source Comments” are tags users can assign to their references. For example, relevant tags may include “search result”, “PTO” or “Inventor”.   Source Comments make references easier to find and sort, and communicate the source of the references.  MaxVal has just added the following new source related functionality:

  • “Additional Source Comments” – Your Max-IDS administrator can now define tags specifically for your organization, and add new tags at any time.
  • “Copy Source Comments from One Case to Another” – Users can compare cases, copy and append source comments from one case to another.

We have also added a handy “Reference Extractor”.  Users can import references directly from the Max-IDS PDF viewer. This eliminates the time consuming and error-prone process of OCR-ing documents to extract references. The Reference Extractor complements the existing Max-IDS bulk import tools.

Max-IDS Reference Extractor

 

Reference Chart Enhancements

Reference Charts are one of Max-IDS’ most powerful features.  Reference Charts show all references shared between a set of documents, and show which documents cite the reference.  This makes inconsistencies immediately visible.  This is extremely valuable when working with foreign filings and patent families.

The Status of each application is now visible in the Comparison Chart.   For example “Abandon”, “Filed Pending”, “Pending Published”, “Allowed” or “Issued”.

Max-IDS Reference Comparison Chart

 

Case and Group Functionality Enhancements

In addition to tracking references, Max-IDS tracks the cases that use the references.  These cases contain the patent applications, granted patents and related foreign family filings.  Cases can be grouped to enable outside counsel can see just their cases.  MaxVal has just released these enhancements to the Case and Group features:

  • “Search within a Case Group” – A new feature is the ability to search for references within a group of cases. This makes it easy for outside counsel to find the references for their cases.
  • “Group List Asset Count Report” – Clicking on the Export option in the List View will now download the group list along with the asset count for each group into an Excel spreadsheet.  Users can also export all the IDS records from a search result in a single instance.

Finally, we have improved security by enhancing the password security policy.

Support and Managed Services

Of course, MaxVal continues to provide Live Support to Max-IDS users and administrators.

Max-IDS is a cloud-based hosted software product.  Users and administrators access Max-IDS through a browser based interface.  MaxVal provides support and training for Max-IDS administrators.  MaxVal also offers Max-IDS as a fully managed service.  We can configure, maintain and administer your Max-IDS server for you.

If you would like more information on these new features, or you would like to see a Max-IDS demonstration, please contact us at bd@maxval.com.