New Post-Registration Pilot Program (P3)

By Samantha Leiner

Purpose and Implementation of Post-Prosecution Pilot Program (P3):

The USPTO created the new pilot program, Post-Prosecution Pilot Program (P3), in response to stakeholder input gathered during various public forums to support the USPTO’s Enhanced Patent Quality Initiative.  The purpose of the new P3 Pilot Program is to see if the USPTO can improve patent practice between a final rejection from the USPTO and a notice of appeal by the applicant.

Under the P3, a panel of examiners, including the examiner on record for the application, will hold a conference with the applicant to review the applicant’s response of the final rejection given by the USPTO.  According to the Federal Register’s summary of the new P3 program, the purpose of the program was to “increase the value of after final practice by (1) leveraging applicant input obtained through an oral presentation during a conference with a panel of examiners, and (2) also providing written explanation for the panel decision.”  United States Patent and Trademark Office; Post Prosecution Pilot Program, 81 Fed. Reg. 44,845 (July 11, 2016).   The applicant will also “have the option of including in the response a proposed non-broadening amendment to a claim(s).” Id.

The program is also designed to help ease the load of appeals cases the Patent Trial and Appeals Board (PTAB) hears and to “reduce the number of Requests for Continued Examination (RCE).”  Id.

The P3 program will begin accepting applications on July 11, 2016, until the first of two dates has occurred: (1) January 12, 2017 or (2) when the Office has accepted a total of 1,600 complaint requests to participate under the P3.  Id.  Each technology center may accept no more than 200 complaint requests, which means that one technology center may stop accepting requests before another technology center.   Id. at 44,846.

Background of Pilot Programs:

There has been two other Pilot Programs administered at the USPTO within the last 11 years: the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal program), which was first administered in 2005, and the After Final Consideration Pilot Program 2.0 (AFCP 2.0), which was first administered in 2013.

The Pre-Appeal program “provides an avenue for a patent applicant to request a review of the basis of a rejection(s) in a patent application prior to the filing of an appeal brief.”  Id.  A difference between the Pre-Appeal program and the P3 is that the Pre-Appeal program allows for the request to be filed in conjunction with a notice of appeal, while the P3 program requires the request be submitted before a notice of appeal.  When the request for the Pre-Appeal program is filed with a notice of appeal, “a panel of examiners (including the examiner of record) formally reviewed the rejections of record in light of the remarks provided in the request.”

The AFCP 2.0 allows “examiners [to] consider a response filed after a final rejection pursuant to 37 CFR 1.116 that includes remarks and amendments that may require further search and consideration, provided that at least one independent claim includes a nonbroadening amendment.”  Id.  Additionally, “the examiner also may conduct an interview with the applicant when the response does not place the application in condition for allowance.”  Id.

The P3 combines the effective features of both the Pre-Appeal program and the AFCP 2.0, while adding new features as well.  The P3 takes the consideration of an after final response by a panel from the Pre-Appeal program, takes the optional proposed amendment included in the after final response, and adds “an opportunity for the applicant to make an oral presentation to the panel of examiners.”  Id.

Requirements for New Pilot Program:

For an applicant to be eligible to participate in P3, “an application must contain an outstanding final rejection and be (i) an original utility non-provisional application filed under 35 U.S.C. 111(a), or (ii) an international utility application that has entered the national stage in compliance with 35 U.S.C. 371 (see 37 CFR 1.491).”  Id.   A continuing application is filed under 35 U.S.C. § 111(a) and is allowed to participate in the P3.  “Reissue, design, and plant applications, as well as reexamination proceedings, are not eligible to participate in the P3.”  Id.  A request for response under 37 C.F.R. § 1.116 for consideration under the P3 must include:

  1. Transmittal Form. While an applicant may submit their own transmittal form, the USPTO suggest using its provided transmittal form, PTO/SB/444, because it will help the PTO to “quickly identify P3 requests and facilitate timely processing.” at 44,847.
  2. The response required for the P3 must be separate from the transmittal form and cannot be more than 5 pages of arguments.  Additionally, the arguments are limited to appealable, not petitionable, matters.  The PTO considers conclusions, definitions, claim charts, and diagrams as part of the argument in the response.  Therefore, those elements are limited to the 5-page limit as well.  Arguments in the response may be directed to the patentability of the proposed amendment if one is included.  The pages containing the actual proposed amendment will not count towards the 5-page limit.  If the applicant submits an affidavit or other evidence, that affidavit or other evidence will be counted towards the 5-page limit.  The transmittal form, if it does not include any arguments, will not count towards the 5-page limit.  If a page of the response consists solely of a signature, then that page will not count towards the 5-page limit.  The applicant will not be able to circumvent the 5-page limit by including arguments in different documents.  The response may be single-spaced, but must comply with the requirements under 37 C.F.R. § 1.52(a).  In order to stay within the 5-page limit, the response can refer to an argument already on the record rather than repeating the argument “by referring to the location of the argument in a prior submission and identifying the prior submission by title and/or date.”  Id.  Simply stating “the arguments of record” or “the paper dated X” without a pinpoint citation, will not be accepted for consideration of the P3.
  3. Statement that Applicant is Willing and Available to Participate in the Conference with the Panel of Examiners. The applicant must submit a statement verifying that he/she is “willing and available to participate in the conference with the panel of examiners.”  This can be done simply if the applicant uses the for PTO/SB/444 for the transmittal form as well.  Once the PTO has determined the request for the P3 is timely and compliant, the PTO will contact the applicant about scheduling the conference.  If after 10 days, the PTO and the applicant cannot agree on a scheduled conference or the applicant declines to participate in the conference, the request for the P3 will be deemed improper and declined.  The applicant can participate in the conference in person, by telephone, or by video conferencing tool set up by the PTO.  The applicant is able to present to the panel in the conference “in a manner similar to how an applicant presents an argument in an ex parte appeal before the PTAB.” Id.  the applicant’s presentation may take up to 20 minutes.
  4. Proposed Amendment (Optional). Any entry of a proposed amendment is governed by 37 C.F.R. § 1.116. See MPEP 714.12.  The biggest concern with the proposed amendment is that they may not broaden the scope of a claim in any aspect.  The analysis for whether a propose amendment broadens a claim impermissibly is similar to the guidance set forth ins MPEP § 1412.03 for determining whether a reissue claim has been broadened.  Proposed amendments that focuses on a single independent claims are the amendments more likely place the application into condition for allowance.  If a proposed amendment contains extensive amendments (either in terms o the nature of the amendment or to the claims to be amended), it will require a more extensive consideration and would likely not place the application in condition for allowance.

Only one P3 request will be filed per final rejection by the USPTO.   Additionally, there is no fee required to request consideration under the P3 and all papers to be filed for the P3 must be filed using the USPTO’s Electronic Filing System-Web (EFS-Web).  Further, to be eligible for the P3, an applicant must not have previously filed for the Pre-Appeal program or the AFCP 2.0.

An applicant must have filed a P3 request “within two months from the mailing date of a final rejection and prior to filing a notice of appeal.”  Id.  A request for P3 will be seen as untimely “if it is filed (i) more than two months from the mailing date of the final rejection, (ii) in an application that does not contain an outstanding final rejection (e.g., a P3 request will not be accepted in response to a second action non-final rejection), (iii) in response to a final rejection for which a proper AFCP 2.0 request has been filed, (iv) on or after the date a RCE or notice of appeal is filed in response to the same outstanding rejection, or (v) on or after the date an express abandonment is filed.”  Id. at 44,846-44,847.

USPTO’s Procedures on Requests for New Pilot Program:

After a request is submitted to the PTO for the P3, the PTO determines if the request if timely and compliant with the requirements.  If the request is timely and compliant, the PTO will contact the applicant to schedule the conference.  If the request is untimely and/or non-compliant, a conference will not be held.  If untimely and non-compliant, the PTO will communicate the reason the request was found to be untimely or non-compliant. If the request is timely and compliant, but the technology center has reached its 200 request limits, a conference will not be held.

An important note is that the filing of a P3 request will not toll the six-month statute of limitations on replying to the final rejection.  To avoid abandonment of appealing the final rejection, further action, such as a notice of appeal or RCE, will have to be done within the six-month statutory period.

The panel of examiners will most likely consist of the examiner of record, the SPE, and a primary examiner, who is usually the signing primary examiner for the examiner of record fi the examiner of record is a junior examiner.

Any materials used in the presentation by the applicant “will be placed in the file and will not count against the 5-page limit on arguments.” Id. at 44,848.

After the conference, the applicant will be informed of the panel’s decision.  The decision may indicate one of the following:

  • Final Rejection Upheld. The notice if the final rejection is upheld “will not contain any additional grounds for rejection or any restatement of previously made rejection.”  The notice will simply summarize the status of the claim and will communicate any reasoning for rejection of the proposed amendments.  …  The time period for any other action on the final rejection expires on “(1) the mailing date of the notice of decision; or (2) the date set forth in the final rejection, whichever is later.” Id. at 44,849.   A notice of decision indicating “final rejection upheld” is not petitionable, but is subject to appeal.
  • Allowable Application. The notice of decision will be mailed with a notice of allowance, and the notice will state that the rejection(s) is/are withdrawn.
  • Reopen Prosecution. The notice of decision will state the rejection(s) are withdrawn, and a new Office Action is sent to the applicant.  It will also state that no further action is required by the applicant until notified.

If the applicant files any of the following after the date of filing a P3, but prior to a notice of decision from the panel, the request for the P3 will be terminated on the merits: “a notice of appeal, a RCE, an express abandonment under 37 C.F.R. § 1.138, a request for the declaration of interference; or a petition requesting the institution of a derivation proceeding.” Id.   The office will communicate with the applicant the reason for the termination of the P3 proceeding, “the result of the treatment under 37 CFR 1.116 of the response and any proposed amendment filed with the request, and the time period for the applicant to take any further action that may be required as dictated by the facts.


Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015)

By Julie Shursky


  • Proxyconn, Inc. (“Proxyconn”) filed suit against Microsoft Corporation (“Microsoft”), accusing Microsoft of infringing its U.S. Patent No. 6,757,717 (“the ’717 patent.”) Microsoft, 789 F.3d at 1295.  This appeal arises from the inter partes review (“IPR”) of the ’717 patent.  Id.
    • The ’717 patent “relates to a system for increasing the speed of data access in a packet switched network.” at 1295.
  • The United States Patent and Trademark Office, Patent Trial and Appeal Board (“Board”) issued a final written decision, finding all but one of the instituted claims (claim 24) to be unpatentable under 35 U.S.C. § 102 and additionally under 35 U.S.C. § 103.  Id. (citing to Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026 and IPR2013-00109, Paper No. 73 (PTAB Feb. 19, 2014).  The Board further denied Proxyconn’s motion to amend.  Id.
  • Microsoft appeals the Board’s determination that claim 24 is patentable. Proxyconn cross-appeals, “challenging the Board’s use of the broadest reasonable interpretation (“BRI”) standard of claim construction during IPRs, its unpatentability determinations, and its denial of Proxyconn’s motion to amend.”  Id.

BRI Standard for Claim Construction:

  • At issue was the Board’s construction of the phrase “a gateway . . . connected to said packet-switched network in such a way that network packets sent between at least two other computers” recited in claim 6. Id. at 1298 (citing to ’717 patent, col. 10 l. 64-col. 11. l. 12) (emphasis in original).
  • Before the Board, Proxyconn argued that the term “two other computers” referred only to the sender and receiver computers, while Microsoft contended that the term “two other computers” could represent any two computers that are connected on the network to a gateway, including a caching computer. Id. at 1298.  The Board agreed with Microsoft’s interpretation, finding that “the ‘two other computers’ were not limited just to the sender/computer and the receiver/computer,” and therefore concluded that the reviewed claims were not patentable.  Id.
  • Upon review, the Federal Circuit disagreed with the Board’s conclusion, finding that the phrase “two other computers” could not include the caching computer. Id. at 1299.  First, the panel noted that claim 6 of the ’717 patent separately recited the “two other computers” and the caching computer.  Id. (citing to ’717 patent, col. 10 l.54- col. 11 l. 12).  Specifically, the panel reasoned that, “[n]ot only are the ‘two other computers’ recited independently from, and in addition to, the gateway and caching computers, the word ‘other’ denotes a further level of distinction between those two computers and the specific gateway and caching computers recited separately in the claim.”  Id.  The Federal Circuit further found that “in each instance where [two other computers] is used, the phrase . . . describes components that are separate and distinct from the gateway and the caching computer.”  Id.
  • Accordingly, the court found that the specification clearly identified that caching computer and the “two other computers” to be “separate and distinct components of the overall system.” Id.  To expand “two other computers” to include the separately identified caching computer unreasonably broadens the language in the claims and specification.  Id.  Therefore, the Court “vacate[d] the Board’s findings of unpatentability of claims 6, 7, and 9 and remand[ed] for proceedings consistent with [the] opinion.”  Id.
  • For similar reasons, the panel disagreed with the Board’s conclusion “that the terms ‘sender/computer’ and receiver/computer’ were broad enough to include the intermediary gateway and caching computers.” Id. at 1300.  Rather, the Court concluded that such an interpretation “does not reasonably reflect the language and disclosure of the ’717 patent.”  Id.  Accordingly, the Court also vacated the Board’s findings of unpatentability of claims 1, 3, 10, 22, and 23 and remanded back to the district court.

Claim 24 is Patentable:

  • Ultimately at issue in claim 24 is whether the term “comparing” is the same as the term “searching. Id. at 1301-02.  The Federal Circuit concluded that the two terms were not identical, and thus agreed with the Board.  Id. at 1302 (“Based on the clear language of the specification, the Board was correct in concluding that the broadest reasonable interpretation of ‘searching for data with the same digital in said network cache memory’ includes searching in a set of potentially many data objects.”).


  • The Court also agreed with the Board that “the download requests that DRP’s client sends to the server after receiving the index from the server and comparing it to the local index meets the ‘receiving a response signal’ limitation of claim 11,” and thus concluded that DRP anticipates claims 11, 12, and 14 of the ’717 patent. Id. at 1303.

Board’s Denial of Proxyconn’s Motion to Amend Claims 1 and 3:

  • Proxyconn also challenged “the Board’s denial of its motion to amend claims 1 and 3.” Id. at 1303.  Proxyconn argued that the Board exceeded its own authority “by imposing the additional requirements of [a prior Board opinion] and by relying on the DRP reference” rather than exclusively relying on statutes and regulations governing motions to amend.  Id. at 1305-06.
  • Proxyconn sought to substitute claims 35 and 36 with claims 1 and 3 respectively. Microsoft argued that the substituted claims were not patentable for anticipation by the DRP reference.  Id. at 1305.  Proxyconn made several other arguments, but failed to argue that substitute claims 35 and 36 were patentable over the DRP reference.  Id.
  • Prior to addressing the arguments on either side, the Federal Circuit reviewed the legal framework governing amendments during IPR proceedings. Id. at 1303.
    • Under the America Invents Act (“AIA”), Congress granted specific authority to the Board in relation to IPR proceedings. Id. 1303-04.  Specifically, the Board promulgated two regulations under the AIA that are relevant to this case: (1) “37 C.F.R. § 42.20, which applies generally to motions practice,” and (2) “37 C.F.R. § 42.121, which imposes specific requirements on the amendment process.”  Id. at 1304.
    • In addition to the two regulations, the Board also issued a six-member panel decision in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR012-00027, 2013 WL 5947697 (PTAB June 11, 2013), where it provided further recitation of several important requirements for a patent owner’s motion to amend. Id. at 1304.  According to Idle Free, the Board requires a patentee to show that the substitute claim is patentable over prior art that is “known to the patent holder.”  Id.  Although the Idle Free decision is not binding, the Board frequently relies on that decision in denying motion to amend.  Id.
  • First, the Federal Circuit agreed with the Board that “§ 42.121(a)(2) is not an exhaustive list of grounds upon which the Board can deny a motion to amend.” Id. at 1306.  Next, the Court determined that it is in the Board’s discretion to choose between rulemaking and adjudication.  Id. at 1307.  Given the Board’s lack of experience with motions to amend, the Federal Circuit agreed that the Board should retain the ability to deal with such motions on a case-by-case basis to ensure an effective administrative process.  Id.   As such, the Court recognized that “there is merit to [the Board’s] arguments,” in not creating a black letter rule on motions to amend, and thus held that the Board has not “abused its discretion in choosing adjudication over rulemaking.”  Id. at 1307.
  • Finally, since the Board’s reliance on the DRP reference “was front and center throughout the course of the proceedings” and Proxyconn “was [not] taken by surprise,” the Federal Circuit found that “the Board acted permissibly in requiring Proxyconn to establish the patentability of substitute claims 35 and 36 over the DRP reference.” Id. at 1308.

Lessons Learned:

  • In this decision, the Federal Circuit provides guidance on how the BRI standard should apply during IPR proceedings. Further, by affirming the Board’s denial of a patentee’s motion to amend, the Federal Circuit resolved the issue of whether the patentee bears the burden of proving patentability of proposed claim amendments during an IPR proceeding.  Specifically, the Federal Circuit determined that the Board has discretion in adjudicating that a patentee must show that its proposed substitute claims are patentable over prior art.

SCOTUS grants Certiorari for Apple Inc. v. Samsung Elecs. Co.

Written by  Chitakone Arounlangsy


On January 2007, Apple Inc. patented the iPhone design which set forth subsequent litigation based on alleged utility and design patent infringement.  Apple Inc. sued Samsung Electronics Co., on April 2011, for alleged infringement of patents based on user interface, and the Galaxy S and Infuse phones’ similarity in appearance to Apple’s iPhone line. Id. Apple Inc.’s lawsuit has caught the attention of the United States Supreme Court, and the appeal from Samsung has been officially put on hold while SCOTUS examines the merits of the case. Samsung was ordered to pay $548 million in damages last year, which was the basis of the appeal.

Apple Inc. filed suit on April 2011, alleging that Samsung infringed upon its D618,677, D593,087, D504,889, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011).  Apple Inc. requested a preliminary injunction against Samsung’s Galaxy S 4G and Infuse 4G smartphones. Id. The district court used four factors in determining whether an injunction would be appropriate. The factors were: whether the movant is likely to succeed on the merits; whether the movant is likely to suffer irreparable harm in the absence of an injunction; whether the balance of the equities favors the movant; and whether the public interest would be served by the grant of injunctive relief. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1319 (Fed. Cir. 2012). The design and utility patents that Apple alleged Samsung infringed upon are as follows:

The D593,087 design patent claims a bezel surrounding the perimeter of the phone’s front face and extending from the front of the phone partway down the phone’s side. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1317 (Fed. Cir. 2012). The parts of the side beyond the bezel, as well as the phone’s back, are disclaimed, as indicated by the use of broken lines in the patent figures. Id.

The D618,677 design patent is substantially the same as the D593,087 patent, and discloses an additional element of a transparent and glass-like front surface. Apple, Inc. v. Samsung Elecs. Co., No. 11-cv-1846, 2011 U.S. Dist. LEXIS 139049 (N.D. Cal. Dec. 2, 2011). The D618,677 patent disclaims the sides and back of the device. Id.

The D504,889 design patent is directed towards the design of a tablet computer. The patent depicts a rectangular tablet with a surface extending to the edge of the front side of the device. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1318 (Fed. Cir. 2012). Within that surface, broken lines delineate a slightly smaller rectangular display area. Id. The front face of the patented design has rounded corners, and a thin bezel surrounds the front surface along its perimeter. Id. The front surface has no ornamentation, buttons, speaker slots, holes, or raised surfaces. Id. The back and sides of the design are also claimed; the figures depict a flat, unadorned back transitioning into the sides through a rounded-over edge. Id. Apple contends that the design patent is embodied by its iPad tablet line. Id.

US 7,469,381 is a utility patent that claims a software feature known as the “bounce-back” feature, which is found on Apple’s smartphones and tablets. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1318 (Fed. Cir. 2012). The bounce-back feature is activated when the user is scrolling through a document displayed on the device. Id. If the user attempts to scroll past the end of the document, an area beyond the edge of the document is displayed to indicate that the user has reached the document’s end. Id. Once the user input ceases, the previously visible part of the document “bounces back” into view. Id.

On the D593,087 patent, the court ruled that it was unlikely to succeed on the merits because questions were raised about the patent’s validity, in it being similar and anticipated by a similar Japanese patent. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1319 (Fed. Cir. 2012).

Samsung’s Galaxy S 4G and Infuse 4G smartphones were found to be substantially similar to the claimed D618,677 patent. However, Apple was unable to show that it was likely to suffer irreparable harm from the importation and sale of Samsung’s infringing smartphones while the case was pending in the district court. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1320 (Fed. Cir. 2012).

The same was said about the D504,889 patent for lack of showing irreparable harm, and the court declined to issue an injunction with respect to the D504,889 patent. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1321 (Fed. Cir. 2012). The court also declined to issue an injunction with respect to the US 7,469,381 patent. Id. The court ruled that it failed to establish a relationship between any alleged loss of market share, customers, or goodwill between the Samsung phones and the claimed design. Id.

Apple appealed the denial of a preliminary injunction, and the Federal Circuit Court affirmed the denial based upon the D593,087, D618,677, and US 7,469,381 patents. Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1328 (Fed. Cir. 2012). As for the D504,889 patent, the circuit court vacated and remanded the lower court’s decision for further review because it incorrectly determined the validity of the claimed patent. Id.

The basis of SCOTUS’s decision to grant Certiorari is based on Samsung’s appeal of requiring to pay $548 million in damages. SCOTUS will be answering the question of how damages should be assessed for patent violations when the technology involved is just one of many ingredients that go into a device like an iPhone. SCOTUS will hear the case on its next term beginning in October.

US Trademark Office Ordered to Respond to Petition from the Federal Circuit Regarding Disparaging and Scandalous Marks

 Written By Chitakone Arounlangsy

The Federal Circuit, on March 15, 2016, ordered the USPTO to respond to a petition which asserted that the USPTO was ignoring the Federal Circuit’s ruling in December 2015 involving disparaging or scandalous marks.  In In re Tam, an Asian-American rock band’s application for the trademark “The Slants” was denied under 15 U.S.C. § 1056 of Section 2(a) of the 1946 Lanham Act. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The TTAB found that the proposed mark was disparaging to the Asian-American community. Id. 15 U.S.C. § 1052, involves marks that consist of or comprise of immoral or scandalous matter, or matter which may disparage persons, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. 15 U.S.C. § 1052 (1946). In 2014, the trademark for the Washington Redskins was canceled by the TTAB, for being disparaging to the Native American community. Pro-Football, Inc. v. Blackhorse, 62 F. Supp. 3d 498 (E.D. Va. 2014). In In re Brunetti, applicant Erik Brunetti’s trademark application was denied by TTAB because the mark FUCT comprises of immoral or scandalous matter. In re Brunetti, 2014 WL 4426133 (Trademark Tr. & App. Bd. 2016). Brunetti appealed and the case moved to the Supreme Court for review. Id.

While the constitutionality of the provisions under Section 2(a) are being reviewed, the PTO will be issuing advisory refusals for trademarks that consists or comprises of scandalous, disparaging, or immoral matter. The PTO still uses TMEP § 1203 for refusal on the basis of immoral or scandalous matter; deceptive matter; matter which may disparage, falsely suggest a connection, or bring into contempt or disrepute.

The PTO will be following certain guidelines pending final review of the Supreme Court. Any suspension based on the scandalous provision under Section 2(a), will remain suspended until the Federal Circuit court makes a final decision in In re Brunetti. After which, the PTO will then reevaluate the need for further suspension. For suspensions based on the disparaging provision, the application will remain suspended until one of the following occurs: (1) the period to petition for a writ of certiorari (including any extensions) in In re Tam expires without a petition being filed (2) a petition for certiorari is denied; or (3) certiorari is granted and the U.S. Supreme Court issues a decision. The outcomes in In re Tam and In re Brunetti, will determine what the new standard the PTO will use for disparaging and scandalous trademarks.



Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility? Williamson v. Citrix Online Makes One Wonder: Part 2 of a 2 Part Series – Possible Strategies

Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?  Williamson v. Citrix Online Makes One Wonder:  Part 2 of a 2 Part Series – Possible Strategies

By Michael Stein, Stein IP LLC


This is part 2 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 explores possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.


So, what is a patent attorney to do when faced with the difficult task of preparing a new patent application, whether from scratch or based upon foreign priority, and hopes to avoid either having limitations interpreted as being means plus function limitations under 112, 6th paragraph or being declared indefinite under 112, 2nd paragraph (remember, for the purposes of this article, the pre-AIA references to the 35 USC are being used for the sake of simplicity, but the same holds true under post-AIA situations since the language of the relevant sections has not changed)?


The following are some tips which I believe will increase the chances of running into problems with 112, 6th paragraph and 112, 2nd paragraph, and also hopefully 101 as well.  One important consideration is that the specification as originally filed be as detailed, complete and definite as possible, since one cannot amend the specification significantly after filing to overcome any claims rejections.  There is no magic language that can be used as a safe harbor, as the USPTO has clearly indicated in their webinars on 101 (and thus by extension to 112).  So here it goes, in no particular order.

  1. In describing the invention, try to avoid using words like “device,” “computing element,” “unit,” “portion,” or even “for …ing”  as examiners and courts are increasingly unpredictable in their applications of § 112, 6th paragraph analysis, more frequently treating such words as “nonce” words.  Instead of saying “processing unit” or “processing module,” simple recite a “processor,” for example
  2. Use “configured to” or “adapted to” if the structure is questionable.  Such language assists in making an argument that the limitation has structure and is not purely functional.
  3. Integrate structural limitations with the functional limitations in the claims.  Sometimes a little more in the claim, to provide some real structure will actually broaden the scope of your claim since the people performing claim construction will not have to go to the specification to determine the breadth and scope of the disclosed structure and its equivalents.  Once a claim constructor goes to the specification, it is very difficult to limit the extent to which the specification is relied upon and the owner of the patent does not want to be limited to only the specific embodiments disclosed in the specification when asserting infringement.
  4. Be careful about language like “determining,” “calculating,” “comparing,” etc., with no explanation as to what parameters are being used and how these activities are being accomplished. Provide specific examples in the specification where possible and practicable to clearly explain the algorithm being used.  See, for example, Ibormeith IP v. Mercedes-Benz,  732 F.3d 1376 (Fed. Cir. 2013) where the court held that there was not sufficient structure for “computational means for weighting the operational model according to the time of deay.. and for deriving, from the weighted mode, driver or operator sleepiness condition and producing an output determined thereby”, when a description of an algorithm that places no limitations on how values are calculated, combined, or weighted is insufficient to make the bounds of the claim understandable.
  5. For the drawings, do not use simplistic line charts (e.g., a box with a few smaller boxes inside to represent a computer) or flow charts, but use complex and layered charts.  Provide a detailed hardware diagram, and flowcharts showing the specifics of what is happening. Relate the hardware to the functionality, such as what gets passed and from where to where.  For algorithms, consider having separate diagrams showing the distinct operations of each step in the most general flowchart(s), so that even if the most basic algorithm is determined to be a means plus function limitation, one can argue that the more detailed diagrams and corresponding description provide sufficient structure, and one can also argue that the more detailed diagrams and corresponding description are not merely abstract ideas with nothing more should a 101 rejection be raised.


I have no doubt that there are many other techniques to address the growing use of 112, 6ht and 2nd paragraphs, and different people have different viewpoints.  Not even the judges on the en banc Federal Circuit all agreed when 112, 6th should be used, and in what manner, with the dissent indicating that it will be very difficult in the future to assess the scope of claims in the future based upon the majority’s reasoning.  If they cannot agree, then it cannot be so simple for us practitioners.  We can only do what we feel is best for our clients.

If you have any other techniques to avoid limitations being interpreted as means plus function under 112, 6th paragraph, or to ensure that there is sufficient structure in the specification under 112, 2nd paragraph, please let us know.

Are 102, 6th Paragraph and 102, 2nd Paragraph the New 101 in Patent Eligibility?

Williamson v. Citrix Online Makes One Wonder:  Part 1 of a 2 Part Series

By Michael Stein, Stein IP LLC


This is part 1 of a 2 part series addressing the growing use of 112, 6th and 2nd paragraphs to invalidate claims in the USPTO and the courts, and what the standards are for implementation and application of these sections of 35 USC.  Part 2 of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.

Up until about 2010 or 2011, very few patent applications, such as in the fields of computers,communications and business methods, were at risk of being deemed patent ineligible because of 35 USC 101.  The same held true of patent claims of issued patents, whether under re-examination or during litigation.  Further, patent eligibility under 35 USC 112, 2nd paragraph (112, 2nd paragraph pre-AIA is the same as 112(b) post-AIA, but for the sake of simplicity, only 112, 2nd paragraph will be used in this article since the present patent was a pre-AIA patent) was rarely raised, whether due to the specific language being deemed indefinite directly or because a claim term was deemed to be a means-plus-function term under 35 USC 112, 6th paragraph (112, 6th paragraph pre-AIA is the same as 112(f) post-AIA, but for the sake of simplicity, only 112, 6th paragraph will be used in this article), and then there was insufficient structure in the specification to render the claim term definite.  Times have really changed.

As set forth in the Mayo v. Prometheus, 132 S. Ct. 1289 (2012), AMP v. Myriad, 132 S. Ct. 2107 (2013) and most recently, the Alice v. CLS Bank,   134 S.Ct. 2347 (2014) US Supreme Court decisions,  it has been held that 101 is a threshold determination as to patent claim eligibility, and then 102, 103 and 112 are to be considered for patentability.  Numerous Federal. Circuit and Inter Partes Review decisions and office actions by examiners have deemed claims to be patent ineligible under 101 in fields like computers, communications, business methods and biotechnology in particular.  New examination guidelines under 101 were issued in 2014 and January 2015 to determine patent eligibility of claims under 101.   Claims that were never previously considered to be at risk of patent eligibility, especially in these fields, are now ripe for attack by examiners or third parties.  But even assuming that your patent claims get through the increased hurdles of 35 USC 101, which is no small feat these days, there is now becoming an increasingly potent alternative attack against the validity of claims using 35 USC 112, 6th paragraph and 2nd paragraph.

How does 112, 6th paragraph, which appears to explicitly provide a path to patent eligibility for means-plus-function claims, come into play with respect to 101 and 112, 2nd paragraph, and is 112, 6th paragraph becoming increasingly used as a hammer to smash the eligibility of patent claims?  To assist in arriving at an answer, one needs to look no further than the en banc Federal Circuit decision of Williamson v. Citrix Online, LLC, 13-1130 (Fed. Cir. 2015) involving US Patent No. 6,155,840 (hereinafter the ‘840 patent).

Analysis of Decision

How does one know if a claim limitation is to be interpreted as a means-plus-function limitation?

Initially, the Federal Circuit pointed out that “to determine whether 112, 6th paragraph applies to a claim limitation, our precedent has long recognized the importance of the presence or absence of the word ‘means’,” citing Personalized Media Comm. V. Int’l Trade Commission, 161 F.3d 696 (Fed. Cir. 1998).

The Federal Circuit continued by saying that “our cases have emphasized that the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have sufficiently definite meaning as the name of the structure.”  The court said that in their opinions in Lighting World 382 F.3d 1354 (Fed Cir. 2004), Inventio AG v. ThyssenKrupp Elevator Americas Corp. 649 F.3d 1350 (Fed. Cir. 2011), Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d (Fed. Cir. 1367), and Apple Inc. v. Motorola, Inc. (757 F.3d 1286), it was established that there was a heightened bar to overcoming the presumption that a limitation expressed in functional language without using the word “means” is not subject to 112, 6th paragraph.

The court then overruled those previous decisions by stating that “such a heightened burden is unjustified and that we should abandon characterizing as ‘strong’ the presumption that a limitation lacking the word ‘means’ is not subject to 112, 6th paragraph.  The characterization that the presumption of not using the word ‘means’ to indicate that 112, 6th paragraph should not be invoked is strong is overruled, as well as the strict requirement of “a showing that the limitation essentially is devoid of anything that can be construed as structure.”

The new standard is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name of the structure.”  When a claim term lacks the word “means”, the presumption can be overcome and 112, 6th paragraph will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”

Claim 8, which was one of the claims in question, recites:

distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.

In its analysis, the court felt that the language was consistent with traditional means-plus-function claim limitations asserting that such phrasing replaces the term “means” with the term “module” and recites three functions performed by the “distributed learning control module.”  Further, the court stated that “module” is a well-known nonce word that can operate as a substitute for “means” in the context of 112, 6th paragraph, as can other generic terms like “mechanism,” “element,””device,” and other nonce words that reflect nothing more than verbal constructs that typically do not connote sufficiently definite structure, citing Mass. Inst. of Tech. v. Abacus Software (Fed Cir. 2006).

Going into further explanation, the court said that the prefix “distributed learning control” does not impart structure into the term “module” and that these words do not describe sufficiently definite structure.  Interestingly, the court then goes to the specification, not initially to determine whether the claim comports with 112, 2nd paragraph, but to determine whether the claim limitation should be construed under 112, 6th paragraph in the first place, even before looking whether the specification provides sufficient structure for the claimed limitation.  The court said that “although the ‘distributed learning control module’ is described in a certain level of detail in the written description, the written description fails to impart any structural significance to the term.  While portions of the claim do describe certain inputs and outputs at a very high level, the claim does not describe how the distributed learning control module interacts with other components in the distributed learning control server in a way that might inform the structural character of the limitation in question or otherwise impart structure to the distributed learning control module as recited in the claim.”

The court ignored a declaration by a Dr. Shukri Souri that as one of ordinary skill in the art, he would know exactly how to program a computer to perform the recited function.  The court stated that was not enough, and held that “but the fact that one of ordinary skill in the art could program a computer to perform the recited functions cannot create a structure where none is otherwise disclosed.”  The court said that “we conclude that the ‘distributed learning control module’ limitation fails to recite sufficiently definite structure and that the presumption against the means-plus-function claiming is rebutted,” so this limitation is subject to 112, 6th paragraph. Later, the court indicates that the prohibition against using expert testimony to create structure where none otherwise exists is a direct consequence of the requirement that the specification adequately disclose corresponding structure.

It is very interesting to note that the court went to the specification to determine whether the limitation should be construed under 112, 6th paragraph, particularly in view of the fact that it overturned other claim language interpretations by warning not to read limitations from the specification into the claims and under this analysis, how does one then go on to determine whether the limitation meets 112, 2nd paragraph requirements.  In otherwords, how does the 112, 6th paragraph analysis differ from that of the 112, 2nd paragraph analysis?

To construe a means-plus-function claim term requires a two-step process according to the en banc Federal Circuit.

  1. The court must first identify the claimed function; and
  2. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function.

The court agrees with the district court that the specification of the ‘840 patent fails to disclose corresponding structure.  The written description of the ‘840 patent makes clear that the distributed learning control module cannot be implemented in a general purpose computer, but instead must be implemented in a special purpose computer – a general purpose computer programmed to perform particular functions pursuant to instructions from program software, according to the court.

Two issues arise with this analysis.  First, the Federal Circuit, in numerous other cases, goes out of its way to say that many computers, even when performing specific functions, are general purpose computers to invalidate claims under 101.  Now, the court goes to the other end of the spectrum to hold that the claims meet 101, but do not meet 112, 2nd paragraph.  Second, would not every single computer be a special purpose computer under the court’s definition of general vs. special computer?

The court, towards the end of the end of decision asserts “we require that the specification disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, or as a flow chart, or in any other manner that provides sufficient structure.”

The court concludes with “because the ‘840 patent fails to disclose any structure corresponding to the “coordinating” function of the “distributed learning control module,” we affirm the judgment that claims 8-16 are invalid for indefiniteness under 112, 2nd paragraph.

What the Federal Circuit has done is create uncertainty whether any claim limitation invokes 112, 6th paragraph, since the presumption of not using the term “means” is not very strong.  The court has also used the specification to assess whether a claim limitation has sufficient structure in the specification in part 2 of its test for whether 112, 6th paragraph has been invoked, thus seemingly making any analysis whether the claim limitation complies with 112, 2nd paragraph a self-fulfilling prophecy, as the answer has seemingly already been determined in the 112, 6th paragraph analysis.

Still yet further, the court seemingly provides a definition of a special purpose computer so that every computer is a special purpose one, resulting in 101 never being invoked, but from multiple decisions, we know that 101 is very alive and kicking.  It would appear that the aspects that make a claim limitation not be considered 101 ineligible, push the claim limitation straight towards a 112, 6th paragraph interpretation and a 112, 2nd paragraph rejection.

Overcoming these rejections is extremely difficult since the court has used the specification in its analysis and a patent owner is very limited to the extent to which it can amend the specification after filing, unlike amendments that are possible with respect to the claims.

While we hold our breaths and hope that a claim, such as one involving computers, communications or business methods, does not invoke 101, we now must also be concerned that even if we overcome this increasingly higher 101 hurdle, 112, 6th paragraph and 112, 2nd paragraph are coming into play more and more frequently, thereby providing yet additional hurdles thrown in the path of patent applicant and holders to keep their claims valid, and this is even before 102 and 103 are applied. I see more and more office actions where 112, 6th paragraph and 112, 2nd paragraph are cited one after the other, as a basis to reject particular claims of a given application.

It is clear that it is becoming increasingly common for claims to be struck down on issues other than novelty and obviousness and steps should be considered to be taken when drafting patent applications to avoid getting sucked up in the vortices of 101, 112, 6th and 2nd paragraphs, even though the language of these sections of 35 USC has not changed in decades.

So, what is one to do?

Part 2 of this 2 part series of this article will explore possible strategies to minimize the impact of 112, 6th and 2nd paragraph, and likely assist in avoiding 101 rejections as well.

IANA Transfers Power to ICANN

By Dennis Collins

The US government has decided to not renew its contract of 17 years which gave it the authority to oversee the Internet Assigned Numbers Authority (IANA). There will be a transition from the IANA to the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN is a nonprofit corporation under contract with the US Department of Commerce. The House of Representatives is concerned about the usefulness of switching power from IANA to ICANN, because this forces the US government to relinquish its control over the internet. The UN is the driving force pushing for a change in the governance of the internet. The Secretary-General Ban Ki-Moon is pushing for a, “single, open, free, secure, and trustworthy internet.” ICANN will be the “caretaker of the internet”; however ICANN has been accused of being an illegal entity and violates both the Constitution and federal statutes by many in the legal field.

The House of Representatives passed the Domain Openness through Continued Oversight Matters (DOTCOM) Act in December of 2014 to slow the transition so it isn’t done too hastily. The Act will slow down the transition from IANA to ICANN and the transition will not done without addressing as many of the potential problems that could arise as possible. The Senate has yet to vote on the bill, but they have until the end of July of 2015 to make a final decision. Senator Ted Cruz (R-TX) has come out in strong opposition against the bill, and he seeks a full reinstatement of the IANA.

Recent Controversy

The problem with the transferral with ICANN is the accountability of the Board of Directors. There is exceptional and extensive coverage of managing the private sector on the Internet. Recent controversy has come up in a dispute for the domain name “.africa” and the bidding process to control it. ICANN has been accused of helping one of the two parties vying for the domain name. DotConnectAfrica (DCA) and the African Union Commission (AUC) were the 2 bidders for “.africa.”

AUC privately asked ICANN for help in its bid for the domain name. ICANN drafted a letter for AUC supporting South Africa’s ZA Central Registry (ZACR), the company that AUC was supporting. ICANN gave the letter to AUC, and had AUC submit it showing their support for ZACR. This letter was evidence of the approval for ZACR, and seemingly showed that ICANN did not act “neutrally and objectively” in their decision process. Such action appears to go against the grain of ICANN’s purpose and its neutral party stance.

ICANN was asked to file a report on its process for determining its inevitable choice of ZACR. The process was undermined when the committee redacted 39 paragraphs from its final report on why ICANN picked one party over another. The redaction in the ICANN report puts the ZACR application at risk of now being denied. ICANN has claimed it has done nothing wrong and was acting in an objectively interested way. However, by failing to properly apply its procedures, ICANN appears to have breached its own Articles and Bylaws. To many, this experience indicates that there does need to be a slow and cautious transfer that makes sure everything is done correctly before the US relinquishes control over the Internet. For some concerned about the transition, ICANN is not a viable body to oversee the internet if it cannot act as a neutral party when making its decisions.

Amazon Dispute

Another recent case involves Amazon, the online retailer. Amazon has been trying to buy the domain name of .Amazon, but ICANN has denied the request due to objections made by several South American countries. ICANN claims that it has the right to the name because of the Amazon River and the Amazon River valley contains many countries. ICANN has rules allowing government to object to applications, and the objections made by South American countries complied with the organization rejecting Amazon’s application. ICANN follows the guidance of its Government Advisory Committee (GAC) when making decisions about domain names. ICANN can reject the advice of the committee, but it requires significant evidence and reason for doing so. Subsequently, Congress and ICANN have gotten into a feud over the domain name and allowing the internet retailer to use it. The crux of the problem with the .Amazon rejection, despite Amaxon being a very large US based company, is that the US government will be turning over all oversight to ICANN within the coming months, and the US government is afraid that it will lose all control of the decision making processes, and therefore will not be able to help its own domestic businesses.

Despite being rejected twice already, including an appeal, Amazaon has not given up the fight for .amazon. Rep. Randy Forbes (R-VA) and Rep. Suzan Delbene (D-WA) have written a letter to ICANN arguing that the South American countries don’t have the rights to the term “Amazon.” The company claims that ICANN’s rejection of the Amazon (the company) application has no legal basis and sets a bad precedent for international trademark law. The case is currently pending with Amazon’s third attempt before ICANN in determining its claim to “.amazon.”