Qualcomm wins Section 101 reversal for encoding scheme

It is no secret that it is hard to win Section 101 reversals at the PTAB. With Federal Circuit cases like Electric Power Group, LLC, any data processing or data manipulation invention can be easily rejected. It is also hard to move a case forward after a pervious affirmance by the PTAB. Here, Qualcomm overcame both of these hurdles to win a reversal for a video encoding invention.

Claim 1 on appeal is reproduced below and relates to a specify way of encoding videa data based on an estimated blurriness of the frame, the estimating using a refocusing statistic associated with the frame. Thus, claim 1 requires an estimation, which is purely a determination made in software, along with an encoding, also something that is purely within the software.

Yet, the PTAB reversed the Section 101 rejection. The Examiner had maintained that the claim was directed to an abstract idea, but actually never even identified what that abstract idea was. The rejection was typical of what has become common practice over the last few years:

The PTAB took issue with this approach noting that the claim was not directed to an abstract idea in the first place. While one may be tempted to chalk this one up to an unsupported rejection, the PTAB here did not introduce a new ground of rejection which indicates that they likely would not have sustained the rejection even if the Examiner had spent a little more time to meet the bare minimum requirements of a rejection.

Digging deeper into why the PTAB reversed, one could ascribe some importance to the fact that the specification described, in some detail, details of how the algorithm improved video encoding by using the estimate of the blurriness. Fig. 4 of the specification explained

Fig. 4 illustrates the focus value (FV) as a function of the lens position. The optimal focus of an original object is shown at FV0, but when a new object comes into frame and a refocus process occurs, tbe FV drops (from FV0 to FV1) before the lens moves. Then, the lens is adjusted step by step until it reaches the new optimal value (FV10). During the refocus process, the direction of movement is determined by finding which way causes the FV to increase. The blurriness level is determined for every frame until the new optimal focus is obtained. As such, this algorithm provides certain functionality that one can appreciate through every day life. Whether that had something to do with the decision, we will likely never know.

So, if you have claims that simply process data but your specification provides technical benefits and reasoning for these steps, your Section 101 rejection may not be hopeless before the PTAB, especially if the Examiner fails to even identify the alleged abstract idea in the first place. 

Supreme Court Litigant Speaks to Oregon Bar

Simon Tam, founding member of the All-Asian punk rock band, the Slants, gave a powerful speech about Trademarks and race at the Intellectual Property Year in Review CLE this past week in Oregon.* Simon intertwined the practical significance of Trademarks with how bureaucrats at the Trademark Office are making race-based decisions that disparately impact minority groups in the name of protecting those very minority groups from disparagement.

If you have never heard Simon speak, you should find a way to hear him. He is a powerful speaker. He speaks from the heart in an intelligent and logical way that makes every audience member an instant fan – not necessarily of his music, but of Simon Tam the person.

Simon’s trademark application for THE SLANTS has been in contention for approximately eight years.  He has battled through the USPTO, including the TTAB, then the Federal Circuit, then the Federal Circuit en banc, and finally now to the Supreme Court.  Oral arguments were recently held January 18, 2017.  The Supreme Court has not yet issued its decision as of the writing of this post.

In his talk, Simon gave great context as to why he was fighting. His personal story is impressive, and his sense of justice and equality drives has guided him through this journey.

What is hard to understand is why the Obama administration fought Simon so hard, and with so much gusto. At the very time they were filing briefs to block his registration, other parts of the administration were hiring Simon and his band for minority outreach programs. Simon talked about how he and his band even performed for NATO troops in Kosovo. Simon juxtaposed these issues in a way that crystalized the hypocrisy of the government’s position in way that gives much more context beyond what can be extracted from the court records. The case itself seems to have taken on a life of its own and what is lost is the real issue of how the USPTO effectively discriminates against minorities in a disparate way in granting federal registration rights. 

Simon had an interesting graph where he talked about how the more "Asian" his band was, the less likely the government would approve his application. 

Whatever you think of the legal issues, its hard not to feel a true sense of wrong in how he has been treated. We will see what the Supreme Court has to say on this issue soon.

*In the interest of full disclosure, I was on the planning committee that helped organize the CLE topics. 

Swearing Behind with A Draft Patent Application

While the recent changes to a first to file system have been applicable for several years, many pending applications still fall under pre-AIA rules where an inventor can swear behind a reference that would otherwise qualify as prior art.

Swearing behind a reference, such as via a Rule 131 affidavit, generally requires that one have some evidence of prior invention and diligence.  While an invention disclosure form or inventor notebook is a traditional type of evidence in this situation, there is another avenue that can be very helpful to an application. That alternative avenue relates to using drafts of a patent application as evidence of prior invention.

A draft patent application is often much more attractive for swearing behind a reference since it usually has language that matches pending claims, meaning that it is strong evidence of all of the claimed elements.  Whereas a notebook may have general concepts, a draft patent application usually has detailed language and sample claims that are hopefully close to the currently pending claims (which may have been amended to avoid other prior art applied by the USPTO). 

One example illustrating how to navigate through the issues in this situation is US SN 12/357,078. The Applicant in this application, WMS Gaming, used a draft application prepared by patent counsel to swear behind a prior art reference. The Examiner failed to accept the draft application and the Applicant appealed to the PTAB.  The PTAB confirmed that a draft patent application is perfectly acceptable for showing prior invention. The issue in this case was whether the draft application showed possession of the claimed invention.  The PTAB explained that the specification provided sufficient disclosure because it disclosed the claimed features as one possibly way of achieving the desired results, and it was not necessary that it disclose the claimed features verbatim. 

So, for cases falling under pre-AIA rules, if the cited reference can be antedated by a draft application that supports the claimed features, consider filing a Rule 131 declaration and supporting evidence of diligence to remove the reference.