Posts in IPWatchdog Articles

Federal Circuit Upholds Two Courts’ Findings that Remote Training Patents are Ineligible

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed one district court decision and dismissed another as moot, finding that Riggs Technology Holdings, Inc.’s U.S. Patent No. 7,299,067 for remote education and training systems is patent ineligible as it is “plainly drawn to an abstract idea.” Judge Chen authored both opinions. Riggs sued Cengage Learning, Inc. in the U.S. District Court for the District of Massachusetts for infringement of the ‘067 patent, but the district court granted Cengage’s Motion to Dismiss based on patent ineligibility. The court held that the patent “is plainly drawn to an abstract idea,” and that “the concept underlying the claims of the ’067 patent—providing, managing, and/or documenting training completed remotely on a handheld device—is akin to those found in claims the Federal Circuit has deemed abstract and ineligible.”

ITC Puts Complainants on Notice that Pleading Requirements are Not Mere Suggestions

A recent policy change at the U.S. International Trade Commission (ITC) provides a lesson in how to properly draft a key requirement in a Section 337 complaint. The ITC is a popular forum for companies facing unfair competition from imported goods that infringe intellectual property rights. Companies alleging unfair competition can file a complaint asking the ITC to institute what is called a Section 337 investigation and issue exclusion orders barring entry into the United States of the offending goods. To prevail in a Section 337 investigation, the complainant must show, among other things, it has made investments in the US to exploit its intellectual property—the “domestic industry” requirement.

This Week in Washington IP: USPTO-FDA Listening Session, China’s IP Landscape, Women in Entrepreneurship

This week in Washington IP news, following the federal holiday to celebrate Martin Luther King, Jr. Day Congress is not in session, but there are still some interesting events to put on your calendar, including the all-day listening session on United States Patent and Trademark Office (USPTO)-U.S. Food & Drug Administration collaboration on Thursday; a panel discussion at the American Enterprise Institute about the near-term future for financial markets; and a discussion with IP experts at the USPTO about IP protection in China.

Thaler Files Motion for Summary Judgment in Latest Bid to Argue AI-Authored Works Should Be Copyrightable

Last week, artificial intelligence (AI) systems developer Dr. Stephen Thaler filed a motion for summary judgment in the U.S. District Court for the District of Columbia in a lawsuit over copyright eligibility for artwork created by AI systems. Thaler’s motion for summary judgment argues that AI-generated works are copyrightable under U.S. federal law and that the copyright should vest in Thaler under common law property principles and the work made for hire doctrine.

With Vaishali Udupa Set to Take the Helm as Commissioner for Patents, USPTO Leadership Now Lacks Prosecution Prowess

January 17 marks the first day in the tenure of the U.S. Patent and Trademark Office’s (USPTO’s) new Commissioner for Patents, Vaishali Udupa. Udupa, whose appointment was announced in December, comes to the USPTO after serving the last seven years as the head of litigation for Hewlett Packard Enterprise, where she was responsible for heading HPE’s intellectual property litigation and formulating case strategies. She replaces Acting Commissioner for Patents Andrew Faile, who served in that role since January 2021 and who will be retiring from the agency after 33 years upon Udupa’s installation as commissioner. Well-known within the patent community as an advocate for diversity and representation issues, Udupa joins the USPTO as a relative outsider. She comes in as the first full Commissioner for Patents since the retirement of Drew Hirshfeld, who served with the agency for two decades before he was first appointed to Commissioner in 2015. Those familiar with recent Patent Office history will recall that Commissioners immediately preceding Hirshfeld included Bob Stoll, Peggy Focarino, John Doll and Nick Godici. Stoll, Focarino, Doll and Godici each served in various capacities at the Office, including in high-level policy and regulatory positions, for more than a generation prior to becoming Commissioner.

Albright Gets OK from CAFC on Denial of Transfer for Amazon

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier this week shot down a petition for writ of mandamus filed by Amazon.com, Inc. asking the court to vacate an Order by Judge Alan Albright of the U.S. District Court for the Western District of Texas denying Amazon transfer of a case to the Northern District of California. VoIP-Pal sued Amazon in the Western District of Texas, alleging infringement of its patents through the sale of Amazon’s “’communications platform,’ including the server structure, Alexa calling devices, and Alexa software applications running on those devices.” Amazon sought transfer to California, claiming that the middleware of the accused products was developed by employees based there. In its opposition, VoIP-Pal submitted evidence that “[t]echnical documentation relating to the work of the DeviceOS and Echo Platform Software teams is maintained at the Austin offices.”

Other Barks & Bites for Friday, January, 13: Marjorie Taylor Greene Removes Video after Cease-and-Desist Letter from Dr. Dre; Computer Scientist Asks Courts for Copyright on AI-Generated Art; and Adidas Loses Case Over Three-Stripe Trademark

This week in Other Barks & Bites: Dr. Dre issues a cease-and-desist letter to Marjorie Taylor Greene alleging copyright infringement; Apple loses a patent case that threatens the import of certain Apple Watches; a jury rules in favor of fashion designer Thom Browne over Adidas in a trademark case; and the USPTO extends the deadline to submit comments on “Initiatives to Expand Opportunities for Practicing Before the Office.”

Industry Risk and Investment Drives Academic Tech Transfer

AUTM, which represents the academic technology management profession, just released the results of the survey of its members for 2021. Once again, the results are impressive, particularly considering that the U.S. economy was just beginning to emerge from the devastating effects of the COVID-19 pandemic…. It’s clear that despite continual attacks on the Bayh-Dole system, which allows academic institutions to own and manage federally funded inventions without Washington micro-management, our system keeps truckin’ right along, year after year, leading the world.

Michael Best is Seeking an IP Associate or Agent

Michael Best & Friedrich LLP is seeking a Junior to Midlevel Associate or Patent Agent to join the Life Sciences subgroup of the Intellectual Property practice group. This position will work out of one of our Chicago, IL, Salt Lake City, UT, Wisconsin, or North Carolina offices. The Agent or Attorney must have 2+ years of patent prosecution experience at a firm or in-house, and the ability to draft patent applications is a must. The ideal candidate will hold a degree or Ph.D. in Chemistry, Organic Chemistry, Molecular Biology, or a B.S. in Chemical Engineering. Admission to the USPTO is preferred. The candidate must excel in a team environment and be a highly-motivated self-starter with excellent business judgment, the ability to communicate clearly with clients, and the flexibility to thrive in a fast-paced environment.

Federal Circuit Says Texas Court Erred in Finding Viscometer Patent Claim Indefinite

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the U.S. District Court for the Southern District of Texas incorrectly found the term “enlarged chamber” indefinite, but affirmed the court’s construction of another claim term. The case stems from Grace Instrument Industries, LLC’s May 19, 2020, suit against Chandler Instruments Company, LLC for infringement of its U.S. Patent No. 7,412,877 through the sale of Chandler’s Model 7600 viscometer. The ‘877 patent is titled “High Pressure Viscometer with Chamber Preventing Sample Contamination.”

Patent Eligibility and the Life Sciences Industry – The Impact of Law on Innovation in the Industry

One of the panels at last year’s IPWatchdog’s Life Sciences MastersTM Series addressed the thorny problem of patent eligibility.  I moderated the panel, titled Patent Eligibility and the Life Sciences Industry–What Next?, where the speakers, with input from passionate audience members, discussed the impact of section 101 jurisprudence on innovation in the life sciences industry. Do the limits on what is patent-eligible subject matter created by the courts strike the proper balance or do unpredictable court decisions harm investment and research in the life sciences? While the majority view appeared to be that patent-eligibility reform is necessary, both to provide clarity and to incentivize certain type of inventions, the panel also expressed the idea that some form of section 101 jurisprudence is necessary to prevent “discoveries” from being monopolized, which could also harm innovation.

Apple Loses ITC Battle to Masimo Over Pulse Oximeter Technology

The U.S. International Trade Commission on Tuesday issued a Notice of Final Initial Determination (FID) finding that Apple violated Section 337 of the Tariff Act of 1930 by importing and selling in the United States Apple Watches with light-based pulse oximetry technology that infringed claims 24 and 30 of Masimo’s U.S. Patent No. 10,945,648. According to a Masimo press release, Apple first started selling the Apple Watch with a pulse oximeter sensor in 2020 and has continued to use it in subsequent versions of the product since then. The ITC Notice said it found no violation of the asserted claims of four other patents named in Masimo’s complaint.

Salesforce’s Abusive Post Grant Tactics Demonstrate USPTO Dysfunction

The issue of who is the real party in interest in an inter partes review (IPR) filed at the Patent Trial and Appeal Board (PTAB) is a particularly thorny matter. When IPRs were introduced, patent owners were assured that there would be a meaningful estoppel provision, which would prevent those who lost IPRs from challenging the same patents in later proceedings. There was also a statute of limitations, another thorny matter, that would prevent challengers from filing an IPR more than one year after they were sued. The long and short of it is this—real party in interest law and statute of limitations law, which apply in every other legal setting, are interpreted vastly differently at the PTAB. For example, with the statute of limitations, if you are barred from bringing a challenge and someone else brings a challenge, then suddenly you are able to join the challenge, despite being barred. But wait—there is more. If that first party that was not barred settles and leaves the case and the barred party is the only challenger remaining, well the case must go on. A legal absurdity.

IBM Cites Deliberate Strategy Shift as it Drops to Second Place in IFI Claims Patent Grant List for First Time in 29 Years

This week, patent data analytics firm IFI CLAIMS published its annual report of the top 50 U.S. patent recipients and the global 250 largest patent portfolios for 2022. The list provides a comprehensive snapshot of the patent landscape with insights into growing trends in the industry. One of the most eye-catching details is Samsung taking the first spot for U.S. patent grants in 2022, ending IBM’s 29-year reign at the top. The difference between the two is also surprisingly wide, with a gap of nearly 2,000 patent grants. According to an IFI press release, the number of U.S. patent grants was at its lowest since 2018 despite the number of patent applications reaching a record high. Since the beginning of the COVID-19 pandemic, the number of patent grants has decreased three years in a row.

Federal Circuit Says Gilstrap’s Grant of CA Transfer to Chinese Company was Improper

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential order yesterday granted a petition for writ of mandamus vacating Judge Rodney Gilstrap’s transfer of two cases out of the Eastern District of Texas to California. The petition was brought by Stingray IP Solutions, LLP and was opposed by TP-Link Technologies, a Chinese company, which Stingray accused of patent infringement. Stingray first filed the patent infringement suits in the Eastern District of Texas and TP-Link moved to dismiss for lack of personal jurisdiction or to transfer the cases to the Central District of California pursuant to 28 U.S.C. § 1406. After the Texas court granted transfer under Section 1406, Stingray petitioned the Federal Circuit for mandamus “solely on the issue of whether TP-Link’s unilateral, post-suit consent to personal jurisdiction in another state (California) defeated application of Rule 4(k)(2).”