Posts in IPWatchdog Articles

Patterson + Sheridan is seeking a technical advisor, patent agent, or patent attorney with a background in Electrical Engineering and patent law experience, including patent preparation and prosecution.  This is a full-time, permanent position in any of the following P+S offices: Houston, TX; Dallas, TX; Waco, TX; San Jose, CA; Shrewsbury, NJ; Greensboro, NC.

Panelists at IPWatchdog’s Artificial Intelligence Masters Program today debated how artificial intelligence (AI) interacts with intellectual property protection, and how laws around who (or what) can be an inventor or creator, as well as areas like patent eligibility, will need to evolve to ensure the continued “gold standard” status of the U.S. IP system. Attorneys working on some of the biggest cases in the AI space today took part in day one of AI Masters, including Professor Ryan Abbott, who is representing Stephen Thaler in his myriad of cases involving the AI machine, DABUS, both in the United States and elsewhere, and Van Lindberg, who represented Kristina Kashtanova in their recent bid to copyright a partially AI-generated graphic novel.

In a precedential decision published Monday, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) decision to invalidate a pharmaceutical patent owned by the University of Minnesota. Gilead Sciences filed an inter partes review (IPR) in 2017 challenging the claims of the university’s  U.S. Patent 8,815,830 as unpatentable. The ‘830 patent covers chemical compounds that prevent the reproduction of viruses or the growth of cancerous tumors. The PTAB found that the University of Minnesota failed to provide a sufficient written description that supported the patent’s priority claim. The Board thus concluded that the patent would not guide a skilled artisan to the patent’s claims. The CAFC agreed with the PTAB’s decision and with the ruling that a 2010 patent application publication filed by Gilead was “prior art” over the university’s patent.

Patents essential to standards are surrounded by discussion, dispute and litigation. A key focus of this activity is how to decide on what is a fair, reasonable and non-discriminatory (FRAND) rate for using standard-essential patents (SEPs), and arrive at a number that both licensor and licensee can accept. In other words, we need a “path to success”. To accomplish this, I think what is needed first is a good method or approach to doing the calculation of a rate, a method which both parties can agree on. Once the parties have agreed on how to calculate, the licensing negotiations will likely be streamlined and there might be an easier and speedier path to success.

Hanley, Flight & Zimmerman (HFZ), the patent prosecution and consulting law firm located in downtown Chicago, is looking for patent attorneys to join its team. This is a full-time, permanent position located in Chicago, IL, or remote. HFZ ranked 2nd among Chicago headquartered law firms in 2021 domestic patent issuances. HFZ represents clients in a wide variety of areas including electronics, software, Internet, e-commerce, artificial intelligence, automotive, aerospace, medical devices, and consumer goods.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday granted Patent Quality Assurance’s (PQA’s) motion to dismiss its January 24 petition for a writ of mandamus asking the CAFC to restore it as a party to its high-profile inter partes review (IPR) proceeding against VLSI Technology. U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal in December 2022 ruled that PQA abused the IPR process by filing an IPR and threatening to join a separate IPR against VLSI in order to receive a payout from the technology firm. She also found that PQA misrepresented an “exclusive engagement” with a witness, Dr. Adit Singh, who was involved in another IPR petition against VLSI brought by OpenSky. She sanctioned PQA by dismissing it from the proceeding and said that, “though the behavior here may not be as egregious as that of OpenSky… I find that PQA’s behavior, nonetheless, amounts to an abuse of process.”

This week in Washington IP news, several congressional committees are holding important hearings including the House Subcommittee on Courts, Intellectual Property, and the Internet discussing IP competition with China. The House Committee on Science, Space and Technology is discussing three bills related to the Department of Energy’s role in innovation. Elsewhere, IPWatchdog is hosting the Artificial Intelligence Masters™ which will discuss at length AI, machine learning, and other new technologies and their impact on innovation.

The Copyright Claims Board (CCB) has issued its first final decision since it was established by law in December 2020, finding in favor of a photographer who claimed a lawyer infringed his copyright by displaying one of his photographs on his law firm website. David Oppenheimer’s case against Douglas Prutton was referred to the CCB by the U.S. District Court for the Northern District of California in April 2022, two months before the Board opened to receive claims. Oppenheimer said he discovered his aerial photograph of the Ronald V. Dellums Federal Building and U.S. Courthouse in Oakland, California on Prutton’s website in 2018, on a page titled “Where We Work.” Oppenheimer admitted that he copied and displayed the photograph without permission, but said his adult daughter actually found the photo and placed it on his site, and also argued fair use and unclean hands in defending his use of the work.  

The United States Court of Appeals for the Federal Circuit (CAFC) ruled on March 1 that the Patent Trial and Appeal Board (PTAB) erred in its analysis of an inter partes review (IPR) filed by streaming giants Netflix and Hulu. The CAFC vacated and remanded the case, ordering the PTAB to once again review the patent dispute filed against DivX. “Because the Board legally erred in its obviousness analysis, and the error cannot be regarded as harmless, we vacate and remand,” wrote the CAFC judges in their ruling. Netflix and Hulu petitioned the PTAB to carry out an IPR in February 2020 of DivX’s U.S. Patent No. 10,225,588. The petition claimed the ‘588 patent was unpatentable due to obviousness.

This week in Other Barks & Bites: the World Intellectual Property Organization (WIPO) announced a record year for Patent Cooperation Treaty (PCT) applications; the United States Patent and Trademark Office (USPTO) switches over to electronic patent grants; the federal CHIPS Program Office is now accepting applications for around $50 billion in funding for semiconductor manufacturing and research.

Patent filings continue to be slightly depressed in the district courts and at the Patent Trial and Appeal Board (PTAB) compared to the highs of last year, with 17 new PTAB cases and 38 new district court filings. New filings consist primarily of a few apparently funded cases—a Fortress entity, for instance, sued Amazon, and a Taiwanese entity with no Internet presence has sued Apple and Samsung on wireless charging patents, with some new Jeff Gross entity filings, a slew of Dynapass filings, and some other banking campaigns picking up steam; at the Board, most of the fillings revolved around existing campaigns Robocast and Daedalus Prime, as detailed below. Ericsson continued with challenging some Phillips patents; and there’s even a funder, Element Capital, who has been hit by inter partes reviews (IPRs) after suing in their own name (via a Singapore subsidiary, against Chinese subsidiaries of other companies, including Motorola).

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a second Director Review decision correcting the Patent Trial and Appeal Board (PTAB) on its approach to the “compelling merits” analysis outlined in her June 2022 Guidance Memo. In AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Vidal vacated the PTAB’s denial of AviaGames’ petition to institute IPR of certain claims of Skillz’s U.S. Patent 9,479,602 B1. She explained that the Board’s determination to deny the petition following a Fintiv analysis was improperly based on the district court’s judgment of invalidity under 35 U.S.C. § 101, since that is “a statutory ground that could not have been raised before the Board” and “does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.”

In teaching Intellectual Property (IP) licensing for the Licensing Executives Society (USA & Canada), Inc., we often open with the first principle of contracts: the “contract” is the meeting of the minds between the parties. What did they actually agree to? The work of the written agreement is to memorialize that meeting of the minds. It is necessarily imperfect. Sir Ernest Gowers aptly describes the challenge of good writing generally, saying it is “the choice and arrangement of words in such a way as to get an idea as exactly as possible out of one mind and into another.” (Sir Ernest Gowers, Plain Words: Their ABC, Alfred Knopf, New York, 1955). In IP licensing, it is the difficult task of reducing to writing an idea from two or more minds such that it conveys to both what each conceived of as the agreement.

The People’s Vaccine Alliance released comments this week on a draft of a pandemic accord currently being considered during the fourth meeting of the Intergovernmental Negotiating Body (INB) at the World Health Organization (WHO). The organization criticized the draft for lacking strong language that would obligate WHO member parties to share knowledge and intellectual property during a pandemic. The Zero Draft is being discussed at the INB meeting from February 27-March 3, and the organization will later decide if it will be the basis of negotiation for the pandemic prevention accord. After the fourth meeting, the INB will hold another meeting from April 3-6, and it will report on developments around the accord in May, at the 76th World Health Assembly. The People’s Vaccine Alliance saw some positives in the Zero Draft; however, the group asked for more concrete language on the issue of intellectual property rights, among other topics.

The United States Supreme Court is soon poised to decide the fate of the enablement requirement, and the patent community is collectively holding its breath, wondering if the Court will strike a deathblow to the biopharmaceutical industry—simultaneously making all patents harder to get and even easier to challenge than they already are. The Supreme Court does not have a strong track record of objectively getting patent issues correct, at least not from a pro-innovation standpoint, although the Justices and their supporters likely would disagree. The undeniable truth, however, is that since the Supreme Court issued its decision in eBay v. MercExchange, virtually every decision of consequence to the patent system has made patent rights weaker and patents themselves easier to successfully challenge.