Other Barks & Bites for Friday, May 27: CAFC Nixes Arthrex Challenge of Director Review Denial; USPTO Issues Interim Process for PTAB Decision Review and Updates Director Review Interim Process; Senate Commerce Committee Advances Blockchain R&D Bill

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This week in Other Barks & Bites: The U.S. Court of Appeals for the Federal Circuit rejects Arthrex, Inc.’s arguments that denial of Director Review by the Commissioner for Patents violates the Appointments Clause of the U.S. Constitution; the USPTO updates the interim Director Review process and issues interim processes for PTAB decision circulation and internal review; Judge Alsup denies a request by Sonos seeking more information on a law clerk who used to work for Google; Broadcom agrees to buy enterprise software firm VMware for $61 billion; Twitter agrees to pay a $150 million civil penalty to settle allegations that it violated an FTC order on consumer data privacy; the U.S. Solicitor General tells SCOTUS that American Axle’s Section 101 invalidation was improper, but that Apple’s appeal of Article III standing issues against Qualcomm should be denied; the Eleventh Circuit rules that most of a Florida state bill targeting social media firms who censor political candidates that the law is unconstitutional; the U.S. Copyright Office issues a supplemental interim rule on reporting requirements under the MMA; and the Senate Commerce Committee advances a key bill supporting blockchain R&D toward a full vote on the floor of the Senate.


CAFC Shoots Down Arthrex’s Challenge to Denial of Director Review – the U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday,May 27, in a precedential decision, affirmed the Patent Trial and Appeal Board’s final written decision finding certain claims of Arthrex, Inc.’s U.S. Patent No. 9,179,907 unpatentable as anticipated and also rejected its challenge of a decision by the Commissioner for Patents denying Arthrex’s request for the Director of the U.S. Patent and Trademark Office to review the Board’s decision and grant rehearing. The CAFC said it was not persuaded “that the Commissioner violated the Appointments Clause, the [Federal Vacancies Reform Act], or the Constitution’s separation of powers in denying Arthrex’s re-hearing request.”

USPTO Issues Interim Processes for PTAB and Director Review – On Thursday, May 26, the U.S. Patent and Trademark Office (USPTO) announced an interim process for “PTAB decision circulation and internal PTAB review,” which is based on “decision circulation processes used by the Federal Circuit.” The announcement noted that “the interim process makes clear that the Director is not involved, pre-issuance, in directing or otherwise influencing panel decisions, and the PTAB panel has final authority and responsibility for the content of a decision.” The USPTO release added: “It is important for a robust and reliable patent system that the PTAB maintain a consistent and clear approach to substantive areas of patent law and PTAB specific procedures.” The interim process will remain in place until stakeholder feedback is received and evaluated and a formal process is put in place. The agency also said it has updated the interim process for Director Review under Arthrex v. Smith & Nephew with “a few additional suggestions by the Director.”

Senate Commerce Committee Advances Blockchain R&D Bill to Senate Floor – On Wednesday, May 25, the U.S. Senate Committee on Commerce, Science, & Transportation approved several bills to head towards a full vote on the floor of the Senate including S. 4109, the National R&D Strategy for Distributed Ledger Technology Act of 2022. Senator Roger Wicker (R-MS), the bill’s main sponsor and Ranking Member of the Senate Commerce Committee, said of the bill that “So far, most attention to blockchain has focused on financial applications, such as cryptocurrencies. Yet this focus overlooks its potential to transform our information systems to be more efficient, transparent, and secure across our supply chain, in government operations, and more. This bill would accelerate the impact of decades of publicly funded research in computing and cryptography.”

Judge Alsup Denies Sonos Motion on Law Clerk Formerly Employed by Google – On Wednesday, May 25, U.S. District Judge William Alsup of the Northern District of California denied a motion filed by Sonos seeking more information disclosures regarding a law clerk working for Judge Alsup who was previously employed by the defendant Google and still owns stock in the consumer tech giant.

Twitter to Pay $150 Million Civil Penalty to Settle Data Privacy Violations Alleged by DoJ, FTC – On Wednesday, May 25, the U.S. Department of Justice (DoJ) and the Federal Trade Commission (FTC) announced that social media company Twitter had agreed to pay a $150 million civil penalty and implement new data privacy procedures in light of allegations from those governmental agencies that Twitter violated an FTC order previously issued in March 2011 by failing to disclose to customers that the telephone and email address information it collected from users would be used for targeted advertising purposes.

Solicitor General Tells SCOTUS That American Axle Patent Was Wrongly Invalidated – On Tuesday, May 24, the office of the U.S. Solicitor General filed a brief with the U.S. Supreme Court representing the views of the U.S. federal government on the petition for writ of certiorari filed in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC in which the Solicitor General argued that American Axle’s patent claim covering a method of manufacturing an industrial propshaft is directed to an invention that has “[h]istorically… long been viewed as paradigmatic examples” of processes eligible for patent protection.

Solicitor General Brief in Apple v. Qualcomm Tells SCOTUS to Deny Apple’s Appeal – On Tuesday, May 24, the office of the U.S. Solicitor General filed a brief with the Supreme Court representing the views of the U.S. federal government on Apple’s petition for writ of certiorari in Apple Inc. v. Qualcomm Inc. The Solicitor General argued that the Supreme Court should deny Apple’s petition as the consumer tech giant has not shown that Qualcomm’s patents are causing it an injury that would be redressed by a favorable decision.

CAFC Orders Mandamus Relief Again to Transfer Patent Case from Texas District Court – On Monday, May 23, the U.S. Court of Appeals for the Federal Circuit issued an order on a petition for mandamus relief directing the Eastern District of Texas to transfer a trio of patent infringement cases against Google, Samsung and Waze to Northern California, the most recent order from the Federal Circuit granting mandamus relief to transfer a patent case from either the Eastern or Western District of Texas to the defendant-friendly Northern District of California. On Thursday, May 26, the Federal Circuit again issued mandamus relief to transfer a patent infringement suit filed by tech developer BillJCo against consumer tech giant Apple to Northern California.

Eleventh Circuit Nixes Most of Florida State Bill Targeting Social Media Censorship – On Monday, May 23, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in NetChoice, LLC v. Attorney General in which the appellate court affirmed most of a district court’s ruling declaring unconstitutional a Florida state bill targeting censorship of political candidates on social media networks, finding that those networks are private actors whose content moderation decisions constitute protected exercises of editorial judgment.

CAFC Affirms PTAB Obviousness Determination Over Judge Newman Dissent – On Monday, May 23, the Federal Circuit issued a decision in Ethicon LLC v. Intuitive Surgical, Inc. in which the appellate court affirmed a decision by the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by Ethicon as obvious in light of the prior art. Circuit Judge Pauline Newman authored a dissent in which she argued that the panel majority engaged in “judicial hindsight” by affirming the obviousness determination despite the fact that the combination of the asserted prior art did not produce the endoscopic instrument covered by the patent-at-issue. 


USPTO Reopens Facilities to Public During Phase 3 of Return From COVID – On Thursday, May 26, the U.S. Patent and Trademark Office announced that it has fully reopened its headquarters in Alexandria, VA, as well as its regional offices to the public and has resumed some of its in-person events as the agency enters Phase 3 of its return to normal operations following the COVID-19 pandemic.

Copyright Violators Shut Down by Organizers of Abu Dhabi Book Fair – On Thursday, May 26, a news report by Publishing Perspectives indicated that organizers of the Abu Dhabi International Book Fair, one of the major publishing industry events occuring in the Middle East, had shut down a pair of publishing house vendors attending the book fair for violating intellectual property rights and participation conditions.

USPTO Issues Requests for Nominations for PPAC and TPAC – On Wednesday, May 25, the USPTO issued a request for nominations in the Federal Register seeking submissions from the public nominating up to three members for the agency’s Patent Public Advisory Committee, which advises the USPTO’s Director on the agency’s patent-side operations, and the Trademark Public Advisory Committee, which advises the Director on the agency’s trademark-side operations.

Judge Gershon Dismisses Lens.com Counterclaims, Defenses in Trademark Suit – On Wednesday, May 25, U.S. District Judge Nina Gershon of the Eastern District of New York issued an order granting most of a motion to dismiss filed by Alcon Vision nixing several counterclaims filed by defendant Lens.com, who argued that Alcon’s packaging was misleading and sought declaratory judgment of noninfringement, as well as several affirmative defenses raised by Lens.com in the contact lens trademark suit filed by Alcon.

EPO’s Four-Millionth Patent Application Features AI Tech for Cosmetic Skin Tone Matching – On Wednesday, May 25, the European Patent Office (EPO) announced that the agency had published four million patent applications filed at the EPO since the agency was established. The EPO also announced that the milestone patent application was filed by L’Oreal and describes an artificial intelligence (AI) system for matching skin tone to cosmetic products.

Judge McFarland Strikes Dry Food Designation for Oatly “WOW NO COW!” Trademark – On Tuesday, May 24, U.S. District Judge Matthew W. McFarland of the Southern District of Ohio issued an order granting partial summary judgment to defendant D’s Naturals striking the dry food designation for Oatly’s “WOW NO COW!” trademark asserted against D’s Naturals dairy-free protein bars, although Judge McFarland denied summary judgment to D’s Naturals on its fraud claims against Oatly.

U.S. Copyright Office Issues Supplemental Interim Rule on MMA Reporting Requirements – On Tuesday, May 24, the U.S. Copyright Office issued a supplemental interim rule and in the Federal Register amending certain reporting requirements of digital music providers under the Music Modernization Act (MMA), including annual reports of usage and notices of nonblanket activity, in light of compliance challenges with existing regulations.

USPTO Submits Info Collections on Customer Service, External Quality Surveys – On Tuesday, May 24, the USPTO announced in the Federal Register that it was seeking public comment on information collected by the agency to conduct its patent external quality survey as well as a new proposed information collection that the agency will use to gauge customer experience.

This Week on Wall Street

Alibaba Reports Slow Quarterly Growth, Won’t Give Guidance Due to COVID-19 Risks – On Thursday, May 26, Chinese e-commerce giant Alibaba issued earnings for the fourth quarter of 2021’s fiscal year, providing a slight quarterly beat in revenues of 204.05 billion yuan ($30.5 billion USD) versus expectations of 199.25 billion yuan ($29.75 billion USD), but the firm said it would not be giving guidance to financial analysts given business risks posed by the COVID-19 pandemic.

Broadcom Agrees to Purchase VMware in $61B Cash and Stock Deal – On Thursday, May 26, global semiconductor firm Broadcom announced that it had entered into an agreement to enterprise cloud services firm VMware in a cash and stock deal that values VMware at $61 billion dollars, including Broadcom’s assumption of $8 billion in debt from VMware.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2021 are announcing quarterly earnings next week (2020 rank in parentheses):

  • Monday: None
  • Tuesday: HP Inc. (41st); Salesforce.com, Inc. (73rd)
  • Wednesday: Hewlett Packard Enterprise (79th)
  • Thursday: None
  • Friday: None


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Join the Discussion

One comment so far.

  • [Avatar for Pro Say]
    Pro Say
    May 27, 2022 05:43 pm

    Bravo. The Solicitor’s Office got Axel — and Apple — right.

    In other news, I’d submit a photog of my darling dog “Alice” (whom I named years before the unconstitutional Alice decision came down) except for the fact that she’s been receiving Internet death threats since 2014.

    I just can’t risk privacy-invading, innovation-stealing, money-over-morals Big Tech using their facial recognition tech to track her down . . .

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