Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what's crossing my desk today:

• Reed Smith and Fish & Richardson knock out Nasdaq patents.

• Intellectual Property Owners Association launches took kit for supporting women inventors.

• Microsoft hit with complaint over MMO patent.

As always you can email me your feedback and follow me on Twitter.

Reed Smith partners Chris Morgan, left, and Lisa Chiarini.

Reed Smith Winning War Over Trading Patents

Chris Morgan has been practicing patent law for almost 20 years. On July 17 of this year before the Patent Trial and Appeal Board, the Reed Smith partner experienced a first.

Presenting argument opposite from her was another woman, Sterne, Kessler, Goldstein & Fox partner Michelle Holoubek. And the three PTAB judges presiding over Miami International Holdings v. Nasdaq—Toni Scheiner, Meredith Petravick and Kristi Sawert—all women too.

"It's just never happened in my entire career," Morgan said. She's faced off against other women occasionally, sometimes sharing emails with them afterward about the rarity of it in patent law. But in those cases the judges were men. "This one was really unique because it was all women," she said. "And so that was a pretty neat thing to happen."

The result was pretty neat for Morgan, partner Lisa Chiarini and their client, the owner of electronic trading platforms popularly known as MIAX. The PTAB ruled that a patent being asserted by competitor Nasdaq is directed to an ineligible abstract idea. Chiarini and Morgan have knocked out two Nasdaq patents on Section 101 grounds this month at the PTAB, while Fish & Richardson has invalidated two more on MIAX's behalf. A decision on a fifth patent is expected in the next few weeks.

The PTAB decisions are taking a big bite out of Nasdaq's attempt to protect its electronic trading technology. Nasdaq sued MIAX in New Jersey federal court in 2017. Nasdaq accused MIAX of executing "calculated theft" by hiring 15 Nasdaq employees to "purportedly build two comparable electronic exchanges in a fraction of the time it took Nasdaq to build the same."

MIAX has fought back hard, accusing Nasdaq of wielding abstract patents and stale trade secret claims over employees hired six years earlier. ("Nasdaq has chosen to serve its revenge not merely cold, but frozen to death," Chiarini wrote in MIAX's motion to dismiss.) MIAX also petitioned for covered business method review of the asserted patents, putting the district court case on hold once the PTAB instituted proceedings.

There was an unexpected development. After proceedings were instituted, the USPTO unveiled its revised Section 101 guidance for examiners and other personnel. Nasdaq argued that its claims didn't fall into the three categories of abstract ideas enumerated by the new guidelines. "They were arguing that we should have lost because we did not address the guidelines that weren't available when we filed our petition," Chiarini said.

In the end it didn't matter, because the PTAB found that the patents are directed to abstract ideas under Supreme Court law, Federal Circuit precedent and the guidelines.

One other wrinkle: Magistrate Judge Douglas Arpert disqualified Fish & Richardson from the New Jersey litigation because the firm had prosecuted some of the patents for Nasdaq when it was a client during the late '90s and early 2000s. But the PTAB cleared Fish to represent MIAX in the CBMs targeting the non-Fish patents, which Nasdaq obtained via acquisition in 2016.

With "great care and warranted deference" to Arpert and U.S. District Judge Brian Martinotti, the PTAB concluded that the individual CBM proceedings were sufficiently "compartmentalized" to allow Fish & Richardson to stay at the helm.

Reed Smith's team for Miami International Holdings v. Nasdaq also included partners Eric Hutz and Jim Martin, and associates Sonny Grewal and Sid Kapoor.

Fish & Richardson's team for Miami International Holdings v. Nasdaq ISE was guided by partners Karl Renner, Tom Rozylowicz and Andrew Patrick.

Scott Barker of Micron Technology, left, and Drinker Biddle's Mercedes Meyer.

IPO Develops Tools to Boost Women Inventors

While we're on the subject of gender balance in patent law, my ALM colleague Sue Reisinger has a snappy report about a new venture from the Intellectual Property Owners Association to boost the number of woman inventors on U.S. patents.

Drinker Biddle & Reath partner Mercedes Meyer helped lead IPO's effort to develop a tool kit for companies to assess and cultivate gender parity in innovation. The tool kit is available on IPO's website and includes data, self-evaluation tools and sample communications and presentations.

Meyer worked with the co-chairs of IPO's Women in IP Committee—Michelle Bugbee of Eastman Chemical and Sandra Nowak at 3M Innovative Properties—on the project.

Micron Technology has served as an early tester of the tool kit, providing feedback and ideas for changes. Scott Barker, director of global patent development at Micron, said the company has seen its number of women inventors increase by 70%, in part by reaching out to newer women engineers and actively pulling them into the patent process.

Drinker Biddle's Meyer said one of the simplest solutions is to ensure that a company's invention disclosure process is accessible and easy to use. Young women, she said, have been conditioned not to expect or ask for recognition. "The invention process is one of asking" for recognition, she said, "by submitting an invention disclosure."

A Patented Method of Fooling Computers

A small inventor is taking a big swing at Microsoft with the backing of Seattle's Williams, Kastner & Gibbs.

Royal O'Brien owns BitRaider MMO, a publisher of software tools that help with data transmission in massive multiplayer online games. The method described in his 8,380,808 patent gives publishers and portals the ability to let customers use their software without transferring all of the files needed to start games in a Windows environment, according to his Oct. 10 complaint.

For example, in a game involving a large virtual playing field, the patented technology can transmit the data necessary to draw an avatar's immediate surroundings, while it "fools the computer into believing that it has the whole file" so that play can begin, according to the complaint.

Microsoft's Windows Cloud Files Filter Driver, included with Windows 10 since 2017, is infringing the patent, O'Brien alleges.

The complaint is signed by Williams Kastner partners Mark Lorbiecki, Daniel Brown and Scott Henrie.

That's all from Skilled in the Art this week. I'll see you all again on Tuesday.