News & Updates

USPTO Gives New Guidance on Software Inventions

January 25, 2019

Earlier this month, the United State Patent and Trademark Office released new guidance for its Examiners to help them better determine when an invention is too abstract to be patentable. This latest effort by the Patent Office brings more clarity and predictability to the examination process for inventors seeking patent protection for software and business methods.

To be patentable, an invention must be new, useful, and unobvious. The courts have also recognized that abstract ideas and laws of nature are also not eligible for patent protection. Predicting which inventions are too abstract for patent protection has been a challenge in the past, and has become more difficult since the Supreme Court’s ruling in Alice Corp. v. CLS Bank (March, 2014). The Court of Appeals for the Federal Circuit has so far attempted to follow the Supreme Court’s guidelines on a case by case basis giving us clues as to the kinds of inventions that are too abstract to be patented. This effort has created some clarity in specific cases, but it has also created additional confusion where the Federal Circuit has given differing opinions for similar inventions. This raises the possibility that different Examiners in the same technology area may pick and choose how to handle similar inventions thus arriving at different conclusions for similar subject matter.

The Patent Office has responded with this latest guidance for the Examiner corps that attempts to synthesize the case law into a more practical legal framework that may be applied in a more predictable manner. Although they do not have the force of law, the guidelines offer valuable insights into how Examiners will determine whether the subject matter in a given application is unpatentably abstract.

Looking briefly at the substance of the latest guidance, the USPTO is revising its examination procedure by: (1) Providing groupings of subject matter that it considers to be an abstract idea; and (2) clarifying that a claim is not ‘‘directed to’’ a judicial exception if the judicial exception is integrated into a practical application of that exception.

On the first point, the Patent Office sees three separate categories of material that are unpatentably abstract:

  1. Mathematical Concepts: Mathematical relationships, mathematical formulas or equations, mathematical calculations
  2. Methods of Organizing Human Activity: Fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)
  3. Mental Processes: Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).

According to the guidelines, concepts that do not fit one of these categories are probably not abstract ideas. The Patent Office does leave open the possibility that exceptional cases could arise where the concept is too abstract to be patented, but also does not fit into one of these categories.

On the second point, the Patent Office explains that even if the claims do fall within one of the three groupings above, they may still be eligible for patent protection if the abstract concept is integrated into a practical application of that concept. A “practical application” is one that applies, relies on, or uses the concept “in a manner that imposes a meaningful limit on the abstract concept.”

The new guidance represents a noteworthy change in the way applications will be handled by Examiners, and it marks the latest attempt by the Patent Office to bring clarity and predictability to the process. It is also important to note that this is not a change in the statute approved by Congress, nor is it a change to the legal framework that has been endorsed by the Federal Circuit or the Supreme Court. It remains to be seen then, what the long-term effect of this change will be on applications currently under examination, and what affect, if any, it will have on patent litigation going forward.


FlightAware and Aireon’s GlobalBeacon Product To Test Real-Time Global Aircraft Tracking

June 19, 2018

Beginning in November 2018, Woodard, Emhardt, Moriarty, McNett & Henry (WEMMH) client FlightAware, along with Aireon, will utilize their revolutionary GlobalBeacon product to test real-time tracking of global aircraft. Airlines and aircraft operators will be expected to track their fleet globally at a frequency of one position every 15 minutes during normal operations. By 2021, they will be required to automatically receive positions once every minute for aircraft in distress.

GlobalBeacon provides the most simple and cost-effective solution for the International Civil Aviation Organization (ICAO) Global Aeronautical Distress Safety System (GADSS). By combining FlightAware’s data processing platform and web-interface with Aireon’s space-based ADS-B network, GlobalBeacon transcends borders and Flight Information Regions (FIRS) and provides 100% global coverage, including over deserts, polar airspace and oceanic regions. Therefore, airlines and aircraft operators are able to exceed GADSS standards and recommended practices for flight tracking.

Aircraft equipped with ADS-B Out transponders are tracked automatically with their position broadcast in real-time. Since ADS-B Out 1090MHz is mandated throughout the world, most aircraft do not require additional equipment to take advantage of GlobalBeacon.

FlightAware is the world’s largest flight tracking data company and provides over 10,000 aircraft operators and service companies, as well as over 12,000,000 passengers with global flight tracking solutions. FlightAware leverages data from air traffic control systems in over 55 countries, from its network of ADS-B ground stations in over 175 countries, from Aireon space-based global ADS-B, and using global datalink (satellite/VHF) via every major provider, including ARINC, SITA, Satcom Direct, Garmin, Honeywell GDC, and UVdatalink.

The FlightAware HyperFeed™ engine’s seamless integration of thousands of real-time, worldwide data sources combined with its powerful, intuitive, responsive and reliable web-based interfaces and data feeds yield the most capable and useful flight tracking application and service. FlightAware is the first company to offer free flight tracking services for both private and commercial air traffic and quickly rose to become the most popular flight tracking service.

WEMMH patent attorneys John McNett (a licensed pilot) and Bill McKenna worked with three tech-savvy pilots, led by Daniel Baker to obtain 12 U.S. patents, addressing numerous features of their rapidly growing business when FlightAware was created in 2005. WEMMH has also secured trademark registrations in over 50 jurisdictions throughout the world to protect the FlightAware brand. See their website at www.flightaware.com or download their app on your smartphone.


Client Mr. Canary Co. Showcases Breakthrough Bird Feeding Product on Home Shopping Network (HSN)

May 9, 2018

Are you a bird lover? This one is for you!

On Tuesday, Carmel-based Mr. Canary Co. released a revolutionary product on the Home Shopping Network (HSN). Mr. Canary has been selling their bird feeders through major retailers since 1995.

Mr. Canary touts the invention as merely TV dinners for birds, which is a maintenance-free avenue to enjoy backyard birds. Basically, premium bird seed is sealed in single-use and eco-friendly trays, which slide into a permanent bird feeder. Bonus being: users don’t have to worry about hauling bird seed bags to the backyard and the cleanup is simple. The system ranges from $34.99 to $39.99.

Bird Feeder

Sisters Jan Long and Chris Mowery bought the Mr. Canary brand in 1995. By 2013, Mr. Canary products were being sold in Kmart, WalMart and Kroger stores across the nation. Ace Hardware signed on in 2014, as well.

Chuck Schmal of Woodard, Emhardt, Moriarty, Mc Nett & Henry LLP, along with Long worked together to secure a patent on the Bird Buffet System (US 9,686,968).

For more information, please refer to: https://www.ibj.com/articles/68556-carmel-based-mr-canary-to-debut-on-home-shopping-network?utm_source=ibj-daily&utm_medium=newsletter&utm_campaign=2018-04-26


Inventor Michael Duff Featured in STRINGS Magazine

April 3, 2018

Michael Duff is a world class craftsman behind some of the world’s greatest violinists and stringed musicians. Duff was recently awarded a U.S. Patent for innovating a new bow, including a novel frog part of the bow.

Stringed musical instruments such as the violin, viola, cello and stringed bass use bows to create classic and timeless music. Duff is the proprietor of Berg Bows® International in Bloomington, Indiana in 1985. https://www.bergbows.com/ As a former faculty member of Indiana University’s Department of Microbiology, he utilizes his scientifically trained mind and prides himself in being involved in the handcrafting of each and every bow.

Innovating New Bow

Michael enlisted the assistance of Dan Lueders of Woodard Emhardt Moriarty McNett & Henry. In November 2017, Berg Bows International received a patent (U.S. 9,830,892 B1) for all violin, viola and cello bows with Berg “Sound Stick” Technology. His inventive bow was featured in Strings magazine.

For more information, please refer to http://stringsmagazine.com/bow-maker-michael-duffs-new-line-includes-hybrid-materials/


Fiberglass and Friendship—A Winning Team

November 30, 2017

A team from two Indianapolis law firms recently won a two-week jury trial in a trade secret lawsuit tried in U.S. District Court of Colorado, securing a defense verdict for a mutual client facing a claim of over $200 million in damages.

The team of lawyers from Woodard, Emhardt, Moriarty, McNett & Henry LLP (Woodard) and Bingham Greenebaum Doll LLP (BGD) capitalized on the respective strengths of the two firms to create an efficient, highly-focused and diverse team that took the case through massive ESI, other discovery and to trial. The lead defense attorneys were Spiro Bereveskos and Dan Lueders from Woodard and Rusty Denton and Bri Clark from BGD.

The team represented Knauf Insulation, Inc. (Knauf), a fiberglass insulation manufacturer headquartered in Shelbyville, Indiana. The lawsuit was filed by a Knauf competitor, Denver-based Johns Manville Corporation (JM). The lawsuit centered on technology relative to super-alloy spinner discs used to make insulation and began primarily as a patent case. JM claimed infringement of its “unique, novel and nonobvious spinner disc alloy.” JM also claimed misappropriation of alleged spinner disc trade secret information. The District Court dismissed JM’s patent claim with prejudice before trial. At trial in Denver, only three of JM’s alleged trade secret claims were presented to the jury over nine days of trial ending on November 9.
After less than three hours of deliberations, the jury returned a verdict that, in view of Knauf’s defense, JM failed to prove its claims of misappropriation. The verdict represented a complete exoneration of Knauf. Bereveskos said, “I am proud of the talented team we assembled and grateful the jury was able to see that Knauf was correct.”

The firms credit their unique collaboration to the personal relationship between two of the lead attorneys, Rusty Denton and Dan Lueders. Denton said, “I have known and worked with Dan for almost twenty years. I have the highest respect for him and his firm, and I knew that together, we could tap into the unique skills of our two firms.” The team combined Woodard’s specialized technical resources, BGD’s deep litigation support and the trial skills and experience of both firms to create a winning team. “It was classic team play. Everyone contributed and subordinated themselves to the good of the client and the cause,” said Lueders.


Software Patentability v.2.0.1.6: A Review of 2016 Federal Circuit Opinions

January 19, 2017

The January patent prosecution practice luncheon included a discussion of highlights from 2016 Federal Circuit opinions that addressed the patentability of software inventions. Although the Federal Circuit continued its trend of invalidating most of the software patents it reviewed, several cases offered software patent holders new cause for optimism. To view the presentation, visit:   Alice Corp Update 2016 Cases from Woodard, Emhardt, Moriarty, McNett and Henry LLP


Speeding Up Invalidity Using Procedures at the USPTO

September 4, 2013

The presentation discusses different techniques for using US Patent and Trademark Office (USPTO) invalidity proceedings to invalidate issued patents. The presentation specifically discusses the new procedures available under the America Invents Act (AIA). Topics include Post-Grant Review (PGR) and Inter Partes Review (IPR) and cover business method review (CBM) programs. Deadlines as well as specific scheduling orders for these programs are discussed as well as how best to use the new programs at the USPTO. To view the presentation, visit:
Invalidity Using Procedures from Woodard, Emhardt, Henry, Reeves & Wagner, LLP


Speeding Up Issuance of Patents at the USPTO

August 28, 2013

The presentation discusses techniques for speeding up the issuance of patents at the US Patent and Trademark Office (USPTO). The presentation focuses on the newly implemented Quick Path Information Disclosure Statement (QPIDS) Program which allows applicants to submit Information Disclosure Statements (IDSs) without the expense and delay of submitting a Request for Continued Examination (RCE). The presentation discusses requirements of the program as well as illustrates possible outcomes using the QPIDS. To view a copy of the presentation, visit: Speeding Up The Issuance of Patents from  Woodard, Emhardt, Moriarty, McNett and Henry LLP


Speeding Up Allowance of Patent Application at the USPTO

August 21, 2013

The presentation discusses techniques for speeding up allowance of patent applications at the US Patent and Trademark Office (USPTO). In particular, the presentation discusses the After Final Consideration Pilot Program 2.0 which can help applicants avoid Requests for Continued Examination (RCEs). To view the presentation, visit: Allowance of Patent Application from Woodard, Emhardt, Henry, Reeves & Wagner, LLP

 


Speeding Up Patent Examination at the USPTO

August 14, 2013

The presentation discusses the different techniques for speeding up examination at the US Patent and Trademark Office (USPTO). Topics covered in this presentation include petitions to make special, accelerated examination, prioritized examination, Patent Prosecution Highway (PPH), and the First Action Interview Pilot Program. In addition, some different filing scenarios using these techniques are discussed. To view the presentation, visit: Patent Examination from Woodard, Emhardt, Henry, Reeves & Wagner, LLP

« Newer PostsOlder Posts »