According to the ’339 patent, prior game systems used a remote server to present multiplayer games over a network (e.g., the internet).  The remote server would receive input from each player’s computer and would send game state information and limited image information back to these computers.  Each player’s computer was configured to use this information from the server to render images and present them to the player.  For example, the player’s computer would render an image (e.g., a view based on the point of view of the player’s avatar), taking into account the three-dimensional relationships between various components of the image (e.g., other avatars, game objects, non-player characters, and the game environment).  In such systems, the memory and computing power of the rendering logic of the player’s computer would determine the quality and imaging speed of the displayed video.  In contrast, the ’339 patent discloses a system in which the remote server does some or all of the image rendering, and these rendered images are delivered to the players via the network, so that the player’s computer may no longer need rendering logic.  As a result, images can be generated on display systems with limited computational power (e.g., smartphones). 

According to its website, Gaikai is “a cloud-based gaming platform that allows users to play high-end video games and applications instantly from a webpage or internet-connected device.”  The company is working to be able to deliver video games so that they “can be accessed as easily as movies and music,” and believes that gaming “will become the #1 form of entertainment in the world.” 

Under current U.S. patent law, the content of a patent application is published (i.e., made available to the public) by the USPTO 18 months after the earliest priority date of the application (typically, the filing date of the application).  However, until the American Inventors Protection Act (AIPA) of 1999, under U.S. law, the content, and indeed the existence, of a patent application was kept secret by the USPTO until the application finally issued as a U.S. patent.  The rationale for this change was to expand the library of prior art available to examiners and to bring the U.S. procedures closer to those of other countries which did not keep pending patent applications secret. 

It was also intended to help relieve the problem of so-called “submarine patents” in which a patent application was filed and kept pending for years while the applicant delayed issuance and made changes to the claims to track the recent developments of the technology, all the while keeping the content and existence of the application secret.  At some point, when another company brought an infringing product to market, the applicant would have the application issued by the USPTO and would then assert the patent by the patent owner against the unsuspecting company.  Since the term of a U.S. patent was measured from its date of issuance (specifically, 17 years from the date of issuance), the applicant did not incur any downside to doing so.

But in 1995, the U.S. changed the term of a patent from 17 years from the date of issuance to 20 years from the earliest priority date.  Therefore, an applicant wishing to obtain a “submarine patent” would only be able to do so for a maximum of 20 years, and the amount of time that the U.S. patent could be asserted would be the remaining portion of the 20-year period.  This change of the law helped curtail the “submarine patent” practice significantly, and the practice was further curtailed by the publication of pending U.S. patent applications.

However, current U.S. law still allows an applicant to keep its application secret and unpublished if it so wishes.  If the applicant is willing to forego foreign patent rights for the invention, the applicant can file a “Request for Non-Publication” along with the application when filed at the USPTO.  Upon granting the Request, the USPTO will keep the content of the application secret until it eventually issues as a U.S. patent.

Gaikai utilized this procedure for the patent application that resulted in the ’339 patent, by filing a “Request for Non-Publication” to keep its content secret until the ’339 patent issued last month.  Had Gaikai not filed the non-publication request, the application’s content would have been published in June 2009.  However, by filing the non-publication request, the contents of the ’339 patent were not published for almost another 4 years, until the patent issued in April 2012.   Presumably, Gaikai saw a strategic advantage in keeping the content of the ’339 patent secret for these 4 years.

According to the USPTO database, the ’339 patent is Gaikai’s first U.S. patent, but the company has numerous patent applications still pending, including five continuation-n-part applications claiming priority to the ’339 patent.

The USPTO has been working to reduce this pendency time, and has announced its “2010-2015 Strategic Plan” that sets the goal of reducing the average total pendency of patent applications to 20 months by 2015.  Much of this effort is focused on the USPTO’s internal processes, and as a patent practitioner, I support these improvements.

But even beyond these improvements, there are ways that applicants can help themselves and position their applications to be among the fastest through the USPTO.  In my opinion, these measures are currently underused in general, and many companies, especially those in high-tech fields (such as electronics and optics), can reap the substantial benefit of getting a patent in hand within one to one-and-one-half years.  In this blogpost (and following blogposts), I’ll explain some of the measures that can be used by applicants to expedite their applications through the USPTO.

Paying a Premium: The easiest and most potent way to get a U.S. patent to issue within one year is to use the USPTO’s newly-enacted “Prioritized Patent Examination Program” (also known as “Track I”) which started this past September as part of the “America Invents Act” (“AIA”).  Under this “fast track” program, an applicant can file a petition and pay an extra fee to the USPTO ($2,400 for small entities, $4,800 for large entities).  Upon approval of the petition (99% approval rate so far), the USPTO will expedite the application with the goal of having the patent processed to completion within 12 months.

The early results from the program are very attractive:

• Over half of the approximately 1,200 “fast-track” requests filed since the program began in September 2011 have already received their first office action, with an average time of 66.4 days after filing.
• There have already been 23 allowances under the program, with the average time to allowance being 39.2 days from petition approval.  The first allowance came 103 days after the application was filed (U.S. Pat. No. 8,094,942 issued to Google).
• The program was initially open to only newly-filed applications.  However, it has recently been expanded to include pending applications for which a “Request for Continued Examination” has been filed.

Acceptance into the program is not a guarantee of issuance.  The USPTO will still apply the same standards of patentability as are used for all other applications.  For example, some applications in the program have already received their final rejections, with the average being 34.3 days measured from approval of the petition to enter the program.  In addition, the program is limited to accept only 10,000 applications during the fiscal year.

For a company planning on going through the due diligence accompanying funding events or acquisition in the foreseeable future, it can make sense to improve its IP portfolio in the eyes of the VCs or acquisition entity by getting patents in hand sooner rather than later using the “Prioritized Patent Examination Program.”

According to the ’980 patent, turbulence due to disturbances of the flow (e.g., pipe elbows, valves, restrictions) upstream from a flow rate meter can cause errors in the measured flow rate (called “the meter factor”).  For example, for determining the volume of petroleum crude flowing out of a storage tank, errors in such flow rate measurements can equate to significant monetary losses.  Fluid flow conditioners are useful to reduce the influence of turbulence on such measurements, and the ’980 patent discloses a fluid flow conditioner that is intended “to provide repeatable and accurate meter readings.”

Komax touts its “more than three hundred combined years of fluids-mixing experience,” stating that it “has led the industry in static mixing technology offering a diverse range of Static Mixers, Steam Heaters, Desuperheaters, and Heat Exchangers.”  Komax’s website shows the “Komax Optimized Flow Conditioner” (KOFC), a flow conditioner that closely resembles that of the ’980 patent, which is described as “integrating a Komax Triple Action Static Mixer with a standard perforated plate conditioner.”  The company reports that ”field testing of the KOFC showed an 80% reduction in meter factor for an ultrasonic flow meter.”  

During prosecution of the patent application that resulted in the ’980 patent, the USPTO examiner rejected some claims and allowed the remaining claims.  Rather than merely accepting the allowed claims, Komax decided to appeal the examiner’s rejection to the Board of Patent Appeals and Interferences (BPAI). 

If an examiner remains unpersuaded by an applicant’s arguments regarding why the pending claims are patentable, an appeal to the BPAI is the next step in trying to refute the rejections and get the claims allowed.  A panel of three administrative patent  judges (APJs) reviews the arguments being presented by both the applicant and the examiner, and decides whether to reverse or affirm the examiner’s rejections.  Currently, the BPAI is awash in a large backlog of cases (recently reported to be approximately 26,000 cases), and it can take two or more years from filing the appeal to receiving the BPAI’s decision.  The USPTO is currently hiring more APJs as part of its efforts to reduce this backlog. 

The ’980 patent followed a typical trajectory through the appeal process.  Komax filed its Appeal Brief, the examiner responded with his Answer, and Komax filed its Reply Brief.  Twenty months later, the BPAI reviewed these materials and affirmed the examiner’s rejection.  As a result of Komax’ loss, the ’980 patent issued with only the claims allowed by the examiner. 

Notably, Komax did not conduct an oral hearing with the BPAI.  An oral hearing allows the applicant to orally argue its case before the three-judge panel, and can be conducted in person or by telephone.  During the hearing, the applicant typically has 20 minutes to present its arguments, and the panel can interrupt throughout with questions.  While examiners are also given an opportunity to be heard at the hearing, they almost never show up, so the applicant can try to pursuade the panel unchallenged.  That is not to say that it is a cakewalk.  Depending on the panel and the issues at hand, the questions from the panel can be difficult and probing, and there can be ample opportunities for the applicant’s attorney to unintentionally give the panel a reason to side with the examiner. 

I have had good success in conducting oral hearings for all the cases that I have appealed to the BPAI.  Despite the risks, my general opinion is that if the application is important enough to the applicant to appeal to the BPAI, the oral hearing is worth the time, effort, and expense in order to maximize the probability of a successful outcome.

As I said, Komax didn’t conduct an oral hearing, so the BPAI decided the case solely on the written record.  Komax might have helped its case by conducting an oral hearing.  In addition, prior to even reaching the appeal stage, Komax might have considered submitting an affidavit (e.g., by one of the inventors) that explained on the record the technical reasons for why the cited prior art references did not disclose the concepts for which the examiner relied upon them, or why the references would not be combined by someone skilled in the art as suggested by the examiner.  Even if this affidavit would not have convinced the examiner, it could have bolstered the written record to provide the BPAI panel more of a reason to reverse the examiner’s rejection of the claims.

As disclosed by the ’527 patent, positive airway pressure (PAP) systems currently used to treat obstructive sleep apnea (OSA) can be obtrusive, irritating,  and uncomfortable to wear, and can provide ineffective seals with the patient’s nostrils.  The ’527 patent discloses various improvements, including having an adjustable-length coupler between the two tubes that aligns the tubes with the patient’s nostrils and that pneumatically interconnects the two tubes.

According to its website, Breathe Technologies is conducting clinical trials of its “truly ultra-light, compact, patient-friendly ventilator systems that can transform respiratory care in the hospital and home markets.”  A video on Breathe Technologies’ website states that its proprietary “Non-Invasive Open Ventilation” (NIOV™) wearable ventilator system is designed to “promote mobility by allowing patients to breathe more easily and to participate more fully in life.”

Generally, the most valuable patent protection is for features that are critical for a system to be operable.  With such protection in place, a competitor cannot design around the patent by omitting one or more claim features, because doing so would produce an inoperable device.  However, valuable patent protection can still be obtained for features that might not be required for operation, but are preferable for one reason or another (e.g., ease of manufacturing or ease of use).  While a competitor might be able to design around such claims to make an operable device, such a device would be less desirable to customers than one that has the patent-protected features, giving the patent owner an advantage in the marketplace.

The ’527 patent appears to protect ”preferable, not critical” features.  Parts of the ’527 patent (e.g., the abstract and the summary) state that the tubes to the nostrils have “an absence of pneumatic interconnection” with one another.  But the claims recite that the coupler “pneumatically interconnects the pair of tubes.”  Therefore, I’m guessing that the pneumatic connection is not a crucial feature of an operable system, but it is still a preferable one.  Presumably, if a competitor sought to develop a similar, but non-infringing system by omitting the pneumatic connection, its system would be less desirable in the marketplace, although the reason why is not immediately clear.  I also note that the NIOV™ system shown in the company’s video, while having a different appearance from the system shown in the ’527 patent, apparently does have a coupler that pneumatically connects the tubes leading to the nostrils.

According to the ’452 patent, the blade hoods of existing utility knives can potentially interfere with the replacement operation.  The utility knife disclosed in the ’452 patent has a blade release feature that allows the user to safely release the blade while simultaneously repositioning the blade hood out of the way to allow a front-end blade replacement.

According to its website, PHC began in 1950 “in a modest workshop in the San Gabriel Valley,” and is now “an integral player in the food, grocery and industrial hardware industries.” 

In 2009, Spellbound Development Group, Inc. sued PHC for patent infringement, alleging that PHC’s “Disposable Safety Cutter, Model RSC-432″ infringed three of Spellbound’s  patents.  PHC counterclaimed that Spellbound’s product “XS-CU” knife infringed one of PHC’s patents.  (I’ve previously wrote about one of Spellbound’s U.S. patents here, but this patent was not involved in the litigation with PHC.)  Last month, the PHC announced that its legal proceedings with Spellbound had been amicably resolved, with each party being free to sell and distribute its safety cutter knives without restriction. 

While the litigation was ongoing, as part of their strategies, each party requested ”reexamination” by the USPTO of one of its adversary’s patents.  Such “reexaminations” are a common tactic by defendants to try to convince the USPTO that one or more of the claims of the plaintiff’s patent is invalid and should be canceled.  If the defendant is successful, the claims are removed from the pending litigation, potentially erasing the basis for the plaintiff’s infringement arguments.  At a minimum, defendants can often advantageously delay the litigation by using such reexaminations to request that the court stay the pending litigation while the USPTO conducts the reexamination, which can take many years to conclude.

There are currently two mechanisms for requesting a reexamination, both of which were used by PHC and Spellbound: PHC initiated an inter partes reexamination of one of Spellbound’s patents, and Spellbound initiated an ex parte reexamination of the PHC patent.  Rather than providing a full discussion of the differences between the two mechanisms, I just want to point out a couple of key differences.   

Both types of reexaminations are initially requested by the challenger presenting prior art references to the USPTO and pointing out why the claims of the patent are invalid in view of these references.  For inter partes reexamination, the challenger is permitted to participate throughout the examination process.  For example, during an inter partes reexamination, the USPTO reviews the submission, and determines whether any of the claims should be rejected or not.  The patent owner is allowed to respond to these rejections, and the challenger is allowed to respond to the patent owner’s response.  The USPTO then considers all the arguments of both parties in coming to its conclusion regarding whether the claims are patentable or not.   

But for ex parte reexamination, the challenger’s role is completed by the submission of the request.  The reexamination proceeds with the USPTO reviewing the submission, determining whether the claims should be rejected or not, and the patent owner allowed to respond to these rejections, very similar to the standard examination process.  The challenger does not get to chime in at all during the process. 

Each mechanism has its own pros and cons.  For example, the ex parte reexam challenger is not allowed to participate in the reexam, so it may be more likely that the patent owner will be successful in convincing the USPTO of the allowability of the challenged claims.  However, if the USPTO fails to reject the challenged claims, the ex parte reexam challenger can still raise invalidity arguments in the litigation against these claims, including the same arguments used to request the reexam initially.  (Of course, the fact that these arguments did not convince the USPTO indicates that they may not be winners in the litigation either.)

In contrast, because the inter partes reexam challenger participates throughout the reexam, if the USPTO fails to reject the challenged claims, the inter partes reexam challenger is forbidden (or “estopped“) from challenging the claims for invalidity based on grounds that the challenger “raised or could have raised during the inter partes reexamination proceedings.”  In other words, if the challenger doesn’t get the USPTO to reject the claims during the inter partes reexamination, the claims become significantly harder to invalidate in the litigation. 

The facts in any particular situation will determine which of the two mechanisms makes the most sense to use.

The ’439 patent discloses a lens cover that is particularly useful for thermal imaging devices being used in the field by military personnel.  While such devices need a lens cover to protect its outer lens, in practice, these lens covers “have been lost, or even intentionally torn away and disposed of in order to avoid the nuisance of a tethered but loose lens cover encroaching into the field of view or otherwise interfering with the operation of the imaging device.”  The lens cover of the ’439 patent is repositionable for temporary storage and provides an aperture for the laser targeting element to be used while the lens cover is in place.

Last year was one of transition for Irvine Sensors.  Until early last year, Irvine Sensors described itself as ”a vision systems company engaged in the development and sale of miniaturized infrared and electro-optical cameras, image processors and stacked chip assemblies and sale of higher level systems incorporating such products.”   In March 2011, the phrase “information security company” started to make its way into the company’s press releases, and in October 2011, the company announced the sale of its thermal imaging business to Vectronix A.G. of Switzerland, with the company stating that its Board of Directors “has concluded that it would be advantageous to focus the firm’s future efforts on our core stacking technology and the immediate opportunities available in Cyber security.”  Soon afterward, Irvine Sensors rebranded itself as ISC8, describing itself as “a provider of intelligent Cybersecurity solutions and supporting technologies.”

According to the ’927 patent, managing a large number of combination locks can be problematic for an organization.  For example, when one of the combinations is lost or forgotten, the lock vendor or a locksmith has to be called in to open the lock.  “Master keys” have their own problems, since a master key can be misplaced, and access to it may be difficult to control.  The ’927 patent discloses a system and method using a secure computer environment for allowing “customers to securely access the combination[s] of their locks without the need of directly contacting the lock vendor or a locksmith.”

Targus markets a wide range of products for carrying, powering, controling, and protecting portable computers such as laptops, notebooks, touchpads, and e-readers.  According to its website, Targus “pioneered the notebook carrying case category … to provide the best possible protection for notebook PCs.”

I took a look at the user guide for Targus’ Defcon® SCL (serialized cable lock) for notebook computers, and it appears that the method of the ’927 patent may not yet be available.  The guide states that Targus recommends that “your IT Administrator keep the [combination code] in case the combination number is forgotten, misplaced, or lost,” that Targus’ “Technical Support does not have access to preassigned combination codes or serial numbers,” and that “[i]n the event of a lost combination code, please contact your IT Administrator.”

One interesting aspect of the ’927 patent is that it was written without a “Background of the Invention” section.  USPTO guidelines state that an application should include a background section that includes (i) a statement of the field of art to which the invention pertains, and (ii) a description of the related art known to the applicant.  While such background sections have historically been included in patent applications, there is a trend in U.S. patent prosecution to omit them entirely.  The rationale for not including a background section is the concern that the USPTO, or a later challenger of the patent, will interpret material in the background section as being “admitted prior art,” that is, an admission by the applicant that the material is in the prior art, by virtue of the applicant including it in a section entitled “Background of the Invention.”

Personally, I find entirely omitting the background section to be a bit of overkill.  I generally opt for a background section that is one or two paragraphs long and that provides a useful context of the invention for someone reading the patent application (e.g., a patent examiner or a juror in a future patent infringement case).  Careful thought should certainly be put into deciding what to include in such a background section, to make sure that no unintentional admissions are being made.  For example, for some inventions, identifying the problem suffered by existing systems can be key to the development of the invention; e.g., once the problem is identified, the solution might be considered to be obvious.  For this reason, I avoid identifying the problem to be solved in the background section, opting instead to include any such discussion in the “Detailed Description” section of the patent application.

Director Kappos will be discussing “Building a 21st Century Patent and Trademark Office: Stimulating Technology and Fostering Innovation.”  The presentation will start at 5:00pm, followed by a brief Q&A period, and a networking reception from 6:00pm to 7:00pm.

Space is limited, but if you would like to attend, please contact stephanie.vadas@knobbe.com (tell her you heard about it on OC TechInnovation). If you have a question for Director Kappos you’d like considered, please send it along to stephanie.vadas@knobbe.com. 

I often visit Director Kappos’ blog which gives news and updates regarding U.S. patents, such as the efforts of the USPTO to reduce patent pendency. 

The ’932 patent discloses three cylindrical cages that can be placed within the stomach using a minimally-invasive procedure ”to occupy volume and to cause a reduced desire for eating for treating obesity and controlling weight gain.”  The first and third cylindrical cages have closed ends, while the second cylindrical cage has open ends and a hollow channel which slows emptying of the stomach since “a limited amount of food can travel through the hollow channel.”

According to its  website, Onciomed is “focused on the development of proprietary, less invasive medical device technology for the treatment of obesity and diabetes,” and its GVS system “enables doctors to perform a procedure that can restrict the intake of food and provide the feeling of fullness.”  Studies are currently underway for the safety and effectiveness of the GVS system and “it is not available for commercial use in the United States.”

The ’932 patent is the first U.S. patent for Onciomed, according to the USPTO database.

According to the ’582 patent, municipal water utility systems can lose a significant amount of water through leaks, and the amount of lost water is directly related to the pressure of the system.  Therefore, it can be advantageous to be able to control the pressure to be only as high as needed, based on demand.  The ’582 patent discloses a flow-driven valve system which is directly responsive to the water pressure to manage the water pressure between selected set points.

According to its website, CLA-VAL has “aggressive research and development programs” to develop ”technologically advanced electronic and hydraulic control systems” for numerous applications.  In a presentation on its website, the company touts its “98-06 Pressure Management Valve” which “prevents pipe breaks,” “minimizes background leakage,” “quickly reacts to fire flow demand,” and “helps to conserve water.” 

According to the USPTO’s database, CLA-VAL owns 19 U.S. patents, and the ’582 patent appears to be the company’s first U.S. patent since 2002.