Effective July 1, 2015, Margaret “Peggy” Focarino has retired from the United States Patent and Trademark Office (USPTO). Focarino started with the Office as a patent examiner in 1977 and rose to the level of Commissioner for Patents, a job she has held for the past three-plus years. The retirement of Focarino truly is the end of an era. While the rest of the senior management team at the USPTO is highly qualified for the positions they hold, none come close to having the same longevity of service as Focarino.
Focarino first starting with the USPTO in 1977 as a Patent Examiner. In several interviews, including her final interview with me (which took place on June 9, 2015), she explained that it was not always easy to fit in initially because she was the only woman in her Art Unit. She explained to me that one of the things she is most proud of is how the Office has changed over the past four decades and now embraces diversity of all kinds.
Focarino became a Supervisory Patent Examiner in 1989 and was promoted to the Senior Executive Service in 1997. In January 2005, Focarino was promoted to Deputy Commissioner for Patent Operations, a role that made her responsible for all patent-examining functions in the eight Patent Technology Centers and all operational aspects of patent application initial examination, patent publications, and international Patent Cooperation Treaty (PCT) applications processing. Upon the resignation of Jon Dudas from the USPTO in January 2009, then-Commissioner for Patents John Doll rose from that post to become the Acting Director of the Patent Office. At that time Focarino was promoted to Acting Commissioner for Patents. Upon Director Kappos assuming control of the Patent Office, Focarino was retained on the senior management team, with the creation of a new position — Deputy Commissioner for Patents. Subsequently, after Commissioner Bob Stoll retired, Focarino was promoted, this time being appointed Commissioner for Patents.
When I interviewed USPTO Director David Kappos in December 2011, I asked him about Focarino and the first words out of his mouth were: “What a wonderful leader.” Kappos went on to tell me:
Peggy’s the perfect next Commissioner for Patents. She’s got deep knowledge of the agency, extremely well respected in the IP community, rose up through the ranks, knows everything about patents and patent law and patent examination and works extraordinarily well with employees. She’s loved and she’s revered by the employees, not just respected. And if that weren’t enough, works terrifically well with the union. So Peggy’s the perfect package. She’s got tremendous judgment. She knows how to deal with people, she knows how to deal with issues, she’s very diplomatic and just a wonderful leader. I’ve been doing leadership for a long time. I’ve worked with and studied under some of the best leaders in the world and I know a good leader when I see one and Peggy is certainly one.
While that may seem to be unbelievable, lofty praise, it is consistent with what I have heard many times over the years.
In late April 2015, Focarino announced internally that she would retire. In reaching out to the USPTO to confirm this rumor, I was provided the following statement from USPTO Director Michelle Lee:
Peggy has been an inspiration to so many individuals who have aspired to further American innovation through public service. Since 1977, when she began her career as a patent examiner, she has proven to be a role model of professionalism and dedication. Her tenure as Commissioner for Patents occurred at a historic moment in the patent system’s 225-year history, during the enactment of the transformative America Invents Act. I am grateful for the opportunity to have worked with her over the last several years, and congratulate her on an extremely successful career.
There is no doubt that she will be missed, but as she said in our final interview, she is leaving the Office but not planning on retiring. She will take the rest of the summer off for a well-deserved vacation, but I expect that in September she will surface somewhere within the industry.
07.1.15 | USPTO | Gene Quinn
With the end of the Supreme Court’s October 2014 term at hand, I thought it might be interesting to take a journey back to look at two of the biggest patent decisions in recent memory. Today we will focus on obviousness and KSR v. Teleflex.
There is absolutely no doubt that the Supreme Court’s decision in KSR largely took away objectivity, instead supplanting it with a subjective test. Ever since, the Federal Circuit and the Patent Office have struggled to get objectivity back into the test. The Federal Circuit has largely been successful, with at least several notable exceptions. With over 8,500 patent examiners, most of whom are not lawyers, the Patent Office has not been quite so successful, despite their best efforts: Many patent examiners continue to provide conclusory obviousness rejections.
It is hard to oversell the Supreme Court’s decision in KSR International v. Teleflex, simply because the question presented called into question one of the most well-established aspects of United States patent law. The question the Supreme Court invited briefing and argument on was this: “Whether the Federal Circuit has erred in holding that a claimed invention cannot be held obvious, and thus unpatentable under 35 U.S.C. §103(a), in the absence of some proven ‘teaching, suggestion, or motivation’ that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.”
Obviousness today is about predictability of results. This is true because, in addressing the foregoing question, the Supreme Court did away with the so-called teaching, suggestion or motivation test. Prior to KSR, if there was no teaching, suggestion or motivation to combine references, the patent examiner could not reject the claimed invention. Today, however, there are other rationales available to the examiner:
- If the invention is a product of combining prior art elements according to known methods to yield predictable results, the invention is obvious.
- If the invention is created through a substitution of one known element for another to obtain predictable results, the invention is obvious.
- If the invention is achieved by using a known technique to improve a similar device in the same way, the invention is obvious.
- If the invention is created by applying a known improvement technique in a way that would yield predictable results, the invention is obvious.
- If the invention is achieved from choosing a finite number of identifiable, predictable solutions that have a reasonable expectation to succeed, the invention is obvious.
- If known work in one filed of endeavor prompts variations based on design incentives or market forces and the variations are predictable to one of skill in the art, the invention is obvious.
As you can see, rationales 3 and 4 are virtually identical. All of these also focus on whether the resulting invention was achieved by combining known references in a way to produce predictable results. Thus, the way you must argue obviousness post-KSR is to say that there is no teaching, suggestion or motivation to combine the references and that the resulting combination of elements would not have been understood to produce predictable results by someone of skill in the art.
Of course, the initial framework used for determining obviousness is stated in Graham v. John Deere Co. The test requires consideration of:
(1) Determining the scope and content of the prior art.
(2) Ascertaining the differences between the claimed invention and the prior art.
(3) Resolving the level of ordinary skill in the pertinent art.
(4) Secondary considerations of non-obviousness.
The big problem I have with obviousness after KSR, at least at the Patent Office, is that it is so unevenly applied. That could have been predicted by the Supreme Court retreating from an objective test and instead embracing a subjective test that requires the decisionmaker to focus on whether they believe the results achieved were predictable. Given the KSR test, there is unfortunately no rational way to guarantee that personal opinions and subjectivity is removed from the analysis. This can be easily confirmed just by looking at what happens with respect to software at the Patent Office. In some areas of the Patent Office that handle software-related inventions, everything is obvious, and in other areas, nothing is ever obvious. For example, if the software deals with any kind of GPS navigation system, you simply will not get the same examination that you would receive if your software powers an e-commerce system.
Time will tell where we go from here, but I am of the belief that we now have a modern-day version of the “flash of creative genius” test relative to obviousness.
On Thursday, June 11, 2015, the House Judiciary Committee held a hearing for the purpose of marking up “the Innovation Act.”
One of the issues that took up a significant amount of time during the first half of the hearing was an amendment submitted by Congressman Darrell Issa regarding a proposed extension of covered business method (“CBM”) review. Those familiar with the America Invents Act (AIA) will undoubtedly recall that CBM reviews were ushered in as one of the three new post grant proceedings that could be used to challenge issues U.S. patents. The program was conceived to be temporary, and is scheduled to sunset on September 16, 2020. Issa’s amendment would have postponed the termination date of the program until December 31, 2026.
Unlike inter partes review (“IPR”), a petition for a CBM may NOT be filed unless the real party-in-interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent. “Charged with infringement” means “a real and substantial controversy regarding infringement of a covered business method patent such that the petitioner would have standing to bring a declaratory judgment action in Federal court.” 37 CFR 42.302(a). Additionally, unlike with IPR, a CBM proceeding can raise issues surrounding both patent eligibility under 35 U.S.C. 101 and sufficiency of disclosure under 35 U.S.C. 112.
Issa stated during the hearing that, at the time Congress passed the AIA, the idea was to create CBM review for a trial period and the program would be extended if successful. Issa is mistaken. The complete name of the process even has the word “transitional” in the title. The entire purpose of CBM review was to allow for challenges to certain financial business method patents in a post grant proceeding that could raise patent eligibility and sufficiency of disclosure. Those issues are off the table in IPR. They can be raised in Post Grant Review (PGR), but PGR is only available to challenge patents that were examined under the first-to-file provisions of the AIA. Thus, Congress wanted to allow for a form of PGR for financial business method patents granted under pre-AIA first-to-invent rules. Thus, there is a time limit to the useful period of this special variety of post grant review.
“We should be ending [CBM] rather than extending it,” Congressman John Conyers (D-MI) stated in response.
Congressman Collins (R-GA) also explained that he cannot support extending CBM, saying that “a property right should be a property right.” Collins also expressed confusion regarding why this matter is pressing at the moment, saying: “I am confused as to why we are considering the extension of a program that is scheduled to sunset in 2020. Why are we debating this here today… do we really know how CBM will affect our economy… we should be having this debate in 2020.” Ultimately, Collins urged his colleagues to oppose this “premature amendment.”
Congresswoman Suzan DelBene (D-WA) echoed the comments of Collins, but also took issue with earlier comments of those in support of the amendment who said that there was no evidence that CBM has been inappropriately expanded beyond financial services patents. DelBene pointed out that there have, indeed, been instances where the Patent Trial and Appeal Board (PTAB) has been accused of expansively interpreting its own jurisdiction beyond what Congress envisioned when the AIA was passed.
The amendment to extend CBM was defeated by a vote of 18-13. At least for now, it is not in the House bill. If and when the bill gets considered on the floor of the House, extension of CBM could resurface in one way or another.
On May 26, 2015, the United States Supreme Court decided Commil USA, LLC v. Cisco Systems, Inc., a case that dealt with inducement to infringe. More specifically, the issue considered by the Supreme Court was whether a good faith belief of patent invalidity is a defense to a claim of induced infringement. In a 6-2 decision written by Justice Kennedy, the Supreme Court ruled that belief of invalidity is not a defense to a claim of induced infringement.
Justice Kennedy started his substantive analysis with a discussion of direct infringement, which was joined by Justices Ginsburg, Alito, Sotomayor and Kagan. Justice Thomas, who joined in the majority with respect to Parts II-B and III, did not join the majority relative to the background discussion. Justice Thomas did not write a separate opinion so we can’t know for sure, but it seems that Thomas chose not to join parts of the decision that were historical in nature (Part I) and the part of the decision where the majority discussed substantive legal issues not specifically germane to the issue presented.
Moving beyond direct infringement being a strict liability offense, and inducement requiring direct infringement, Justice Kennedy ultimately reached the question presented, namely whether a good faith belief of patent invalidity is a defense to a claim of induced infringement. Kennedy explained: “[B]ecause infringement and validity are separate issues under the Act, belief regarding validity cannot negate the scienter required under §271(b).” Kennedy concluded: “Were this Court to interpret §271(b) as permitting a defense of belief in invalidity, it would conflate the issues of infringement and validity.”
Kennedy seemed sympathetic to those who argue that an invalid patent cannot be infringed, which seems to make common sense. But he went on to explain that logic and semantics sometimes must give way to interpretation of an otherwise clear statutory framework:
[T]he questions courts must address when interpreting and implementing the statutory framework require a determination of the procedures and sequences that the parties must follow to prove the act of wrongful inducement and any related issues of patent validity. “Validity and infringement are distinct issues, bearing different burdens, different presumptions, and different evidence.” 720 F. 3d, at 1374 (opinion of Newman, J.). To be sure, if at the end of the day, an act that would have been an infringement or an inducement to infringe pertains to a patent that is shown to be invalid, there is no patent to be infringed. But the allocation of the burden to persuade on these questions, and the timing for the presentations of the relevant arguments, are concerns of central relevance to the orderly administration of the patent system.
In addition to the statutory language that Kennedy found clearly on point, he explained that there were also several practical reasons why a good faith defense should not be allowed. For example, if someone believes that a patent is invalid, they should file a declaratory judgment action (assuming they have standing) or could file a petition for inter partes review with the Patent Trial and Appeal Board (PTAB).
Kennedy also specifically explained that the Court is mindful of abusive litigation tactics employed by so-called patent trolls. Raising the issue seemed wholly out of place and a bit odd given that Kennedy also quickly explained that in this case the parties raised no issue of frivolity. The issue of patent trolls must be weighing on the Court very heavily for it to be inserted by Kennedy in a decision where no one was alleged to have been a patent troll.
Ford Motor Company has recently announced that it is offering competitors access to its electric vehicle (EV) technology patents, a move the company says is aimed at helping accelerate growth of industry-wide research and development of electrified vehicles. Ford is also set to hire an additional 200 electrified vehicle engineers this year as the team moves into a newly dedicated facility – Ford Engineering Laboratories – home to Henry Ford’s first labs in Dearborn.
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