Q&A With Wolf Greenfield’s Rich Giunta
(as published in IP Law360)
Q: What is the most challenging case you have worked on and what made it challenging?
A: Over the course of a two-year span, our client Nuance Communications Inc. had re-examination requests filed in connection with 10 of its patents. The patents were in two highly technical but very different areas and were the subject of two different ongoing litigations handled by different trial teams.
Given the ongoing litigation, it was critical to do all we could to gain confirmation of all of the original patent claims and avoid intervening rights. Having had substantial re-examination experience, I was well aware of the statistics indicating that the United States Patent and Trademark Office confirms all patent claims in only 20 percent of re-examinations. In addition to being up against it with respect to those statistics, there were a number of other factors that made this group of cases particularly challenging.
First, the re-examination requests for all of the patents in the first litigation were filed at substantially the same time, as were those for the second litigation. Re-examination proceedings move quickly and on a tight schedule. Therefore, it was clear upon the filings that numerous office actions were going to issue together, and that these cases would proceed in parallel. As our firm did not prosecute any of the patents, this required coming up to speed quickly on a large number of highly technical patents. Fortunately, I am blessed to work with a large and very talented group of lawyers who have outstanding technical backgrounds and the capability to deal with any type of complex technology. I was able to have a different colleague work with me on each re-examination proceeding. This made it possible to dive in and handle all of these proceedings in parallel.
Second, the disparate nature of the involved technologies made it necessary to work with a number of different technical experts. We benefited from outstanding technical resources in-house at Nuance, and also excellent experts that had been working with the litigation teams.
Third, it was obviously necessary to coordinate the positions we would be taking in the re-examination proceedings with the different trial teams. The trials were highly active, and coordinating all of our positions with two different trial teams presented additional challenges.
Given the challenges, we developed a structured approach. We front-loaded the analysis of the patents in re-examination so that when the USPTO actions predictably came, we were ready. We had fully digested all of the prior art and the weaknesses in the requestors’ positions and quickly scheduled in-person interviews in each case. Prior to the interviews, we provided the examiners with substantial detail on what our positions were, and we interviewed the cases well in advance of the deadlines for responding. That gave sufficient time to incorporate any feedback we received during the interviews and file detailed responses that addressed all of the issues and any concerns raised during the interviews.
Our approach proved highly successful. Nine of the 10 re-examination proceedings have completed, and all of the claims were confirmed in all nine. Given that the USPTO confirms all claims only 20 percent of the time, we were thrilled to be able to achieve the 100 percent success rate for Nuance.
Q: What aspects of your practice area are in need of reform and why?
A: I co-chair our electrical and computer technologies group, and much of my practice is devoted to computer and software-related inventions. The examination of software-related inventions and other sophisticated inventions in the computer area needs reform.
It is common to see the thought expressed that far too many patents are issued in the space on "inventions" that push the bounds of common sense in terms of what should be protectable. While there are undoubtedly examples of that, I also commonly see the opposite.
In my view, the USPTO has difficulties in providing consistent and reasoned examination for sophisticated inventions in the computer and software space. There is a randomness to the process. Examiners often reject claims based upon prior art that is entirely unrelated to the invention at issue, and sometimes allow cases for the wrong reasons that have nothing to do with what actually makes the invention patentable.
Improvement in the quality of examinations on sophisticated inventions in the computer space would lead not only to a reduction in patents that never should have issued in the first place, but also to more consistency and fairness in the process for meritorious inventions in this technology space that are unquestionably deserving of protection.
Q: What is an important issue or case relevant to your practice area and why?
A: Following up on my answer to the previous question, I would point to the Federal Circuit’s recent decision in CLS Bank International v. Alice Corporation Pty. Ltd. This en banc decision was eagerly awaited because many hoped it would eliminate some of the uncertainty and provide guidance relating to what type of software-related inventions are eligible for patenting. Those looking for such guidance and clarity were sorely disappointed.
This case is important more for what it didn’t accomplish than for what it did. There are interested parties on both sides of the issue of whether and to what extent software-related inventions should be eligible for patenting — they all would benefit from some clarity and certainty on the issue.
Products and services embodying the types of technologies implicated by the CLS decision make up a significant portion of our economy. While there are vocal advocates on both sides of the issue of whether and to what extent software inventions should be patentable, there are also companies that simply need to make intelligent business decisions. They need some certainty about whether their innovations are protectable and whether patent rights held by their competitors are enforceable. Many companies would be comfortable living with any of a wide range of "answers" on this issue, but need to know what the rules are so that they can make the right decisions for their businesses. This decision does not give such companies much hope that clarity is coming any time soon. That is regrettable.
Q: Outside your own firm, name an attorney in your field who has impressed you and explain why.
A: Eric Kist is an attorney who serves as an examiner at the Central Re-Examination Unit. I have had the opportunity to be before Examiner Kist for in-person interviews a dozen times or so, and every time I come away more impressed.
While Examiner Kist has served as a conferee (rather than the primary examiner) in every re-examination in which I have interacted with him, his level of preparation is exemplary. Contrasting to the concerns I expressed above, randomness is never part of the process. Whatever positions Examiner Kist advocates, they are always based on the facts of the case and the law. He keeps you on your toes and ensures that you have a legal basis for any position you advocate. While he often pushes back to fully vet the issues, he is eminently fair and open to being persuaded if you can demonstrate a proper basis for it.
In my almost 25 years of representing clients before the USPTO, Examiner Kist’s command of the issues, his legal mind and his commitment to "get it right" stands out.
Q: What is a mistake you made early in your career and what did you learn from it?
A: Being overly aggressive in dealings with USPTO personnel. When I first started, I was under the misapprehension that dealing with personnel in the USPTO was an adversarial process. If I felt that they were wrong on an issue, my tendency was to want to go after them aggressively. With some experience, I learned that that was not the best approach. Today, I view dealings with USPTO personnel as much more of a collaborative exchange. Generally, they are looking to make the right decision, and if we can help them gain a deeper understanding of the relevant facts or controlling legal principles, they will make the right decision. Being overly aggressive and going after them if they express a position that is incorrect can be counterproductive and should be used only as a last resort.