Posts in Government

Vidal Vacates Board’s Denial of IPR Institution on Auto Part Patent

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) on Friday that had denied institution of an inter partes review (IPR) requested by auto parts manufacturer, Mahle Behr Charleston, Inc. U.S. Patent No. RE47,494 E is owned by inventor Frank Amidio Catalano and covers “a device to prevent corrosion [in motor vehicle radiators] caused by electrolysis.” Mahle Behr requested IPR of the patent, arguing that a prior art reference called Godefroy anticipates and renders obvious certain claims.

Return to Assertion Value Series: The 1% Patent

“Many believe the root cause of the patent system’s dysfunction is that the U.S. Patent and Trademark Office [USPTO] is issuing too many invalid patents that unnecessarily drain consumer welfare, stunt productive research, and unreasonably extract rents from innovators.” That quote from Professors Michael Frakes and Melissa F. Wasserman echoes a common complaint in patent policy conversations. The USPTO is widely perceived as issuing too many bad patents.

A Case Study on the ‘Crime-Fraud’ Exception to Attorney-Client Privilege

The protection of privilege in communications between clients and lawyers is a very important one under U.S. law. The basic rule is that when a client seeks legal advice from a lawyer, the communication between the client and the lawyer is confidential and cannot be discovered during litigation. An important purpose of this rule is to encourage clients to communicate fully and freely with lawyers in the process of seeking legal help. The lawyers here include both external lawyers and in-house lawyers.

CAFC Affirms District Court Dismissal of Pro Se Inventor’s Procedural and Patent Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday affirmed a number of district court orders against inventor Urvashi Bhagat, whose patent application  was rejected by the U.S. Patent and Trademark Office (USPTO). Bhagat’s U.S. patent application No. 13/877,847 covers orally-delivered nutritional formulations containing omega-6 fatty acids and antioxidants. The application was filed in 2013 and the USPTO examiner rejected all claims as obvious, two claims as lacking written description, several other claims as indefinite and others for improper dependency. On appeal to the PTAB, the Board summarily affirmed the dependency and indefiniteness rejections, affirmed the obviousness rejection on the merits and reversed the written description rejection. Bhagat then appealed to the U.S. District Court for the Eastern District of Virginia, claiming the USPTO erroneously rejected her patent claims and asking for damages due to the Office’s bad faith and for taking her property.

Patent Filings Roundup: Financed IP Edge Patents Back From the Dead; Toyota Challenges InfoGation Patents at PTAB

In a nod to Mark Twain’s famous quote, the rumors of the death of IP Edge are greatly exaggerated. It appears the prolific NPE aggregator has either sold or transferred at least one portfolio (and potentially up to 40) to a new entity, Inferential Capital, LLC, which after hiring, has begun asserting again—more below.  On the stats, it was a slightly below average week at both the Patent Trial and Appeal Board (PTAB) and in the district courts. At the PTAB, there were 25 new patent filings, with one post-grant review and 24 inter partes reviews (IPR). 

EUIPO Refers First Questions on EUTMR Interpretation to Grand Board

The European Union Intellectual Property Office (EUIPO) announced today that it has for the first time referred questions of legal interpretation of the EU Trade Mark Regulation (EUTMR) to the enlarged Board of Appeal. The EUIPO’s Executive Director, João Negrão, asked the Office’s Grand Board of Appeal to weigh in on five questions concerning the practice of “conversion,” which allows an EU Trade Mark (EUTM) application or registration to be converted into one or more national applications when necessary. The process is meant to address situations in which an EUTM faces a ground of non-registrability in one or several Member States; through conversion, “the EUTM applicant can convert the EUTM into one or more trade mark applications in the Member States not affected by the problem,” explained the Executive Director’s Referral of Questions.

Women at the ITC in 2023: What This Year’s Data Show

For the second year in a row, we pulled and analyzed data on the number of women who appeared in International Trade Commission (ITC) investigations. This year’s data confirms what we saw last year: that women are underrepresented at the ITC. While research shows women make up about 50% of the population, 50% of associates, and 39% of the profession generally, they only made up 27% of the ITC advocates in both 2022 and 2023. The difference in years of experience between male and female advocates is even starker, with men having on average nearly 7 more years of experience than women. This year’s statistics are examined in detail below and compared to what we found in our article published last year.

VLSI-PQA Saga Continues in Virginia County/ Federal Courts

After VLSI Technology filed a complaint against Patent Quality Assurance (PQA) and its representative, Joseph Uradnik, in the Circuit Court of the City of Alexandria in late January this year, Uradnik recently filed a Notice of Removal with the U.S. District Court for the District of Alexandria, Alexandria Division, arguing the case should be tried there instead. VLSI’s complaint alleged abuse of the inter partes review (IPR) system and is seeking approximately $3.2 million in legal fees from Uradnik, according to the March Notice of Removal.

Rader’s Ruminations – Patent Eligibility III: Seven Times the Federal Circuit Has Struck Out

The U.S. Supreme Court’s flimsy eligibility jurisprudence offers the U.S. Court of Appeals for the Federal Circuit (CAFC) several “softball pitches” to avoid a patent bloodbath. To date, the Federal Circuit has struck out at preserving the patent system — at least twice without really even taking a swing! The first softball pitch appears in the High Court’s initial decision to exalt judge-made “exceptions” over the 200-year-old statutory rule, namely, Mayo v. Prometheus.

Understanding the 2024 Amendment to India’s Patents Rules in Light of U.S. Patent Rules

The Indian Ministry of Commerce and Industry, which administers the Department for Promotion of Industry & Internal Trade, published changes to its 2003 Patent Rules in its Official Gazette on March 15, 2024. These rules are known as the 2024 Patent (Amendment) Rules (hereinafter “Amendment”). This article analyzes key provisions of the Amendment in light of U.S. patent rules and practices.

Victory for Virtek Patent as CAFC Schools PTAB on Proper Motivation to Combine Analysis

In a precedential decision authored by Chief Judge Moore, the U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday partially reversed a Patent Trial and Appeal Board (PTAB) ruling that certain claims of Virtek Vision International’s patent on a method for aligning a laser projector were unpatentable, finding the Board erred as a matter of law in its analysis. The court also affirmed the PTAB’s finding that other claims were not proven unpatentable. Aligned Vision challenged various claims of Virtek’s U.S. Patent No. 10,052,734, which is titled “Laser Projector with Flash Alignment,” arguing claims 1, 2, 5, 7, and 10–13 would have been obvious over prior art references titled Keitler and Briggs (Ground 1), and over Briggs and another reference, Bridges (Ground 3). It also argued claims 3–6 and 8–12 would have been obvious over Keitler, Briggs, and  ‘094 Rueb (Ground 2), and over Briggs, Bridges, and ‘094 Rueb (Ground 4).

Consumers Target Apple Following DOJ Antitrust Suit

A number of individual consumers have filed suit against Apple, Inc. in California and New Jersey courts, piggybacking on the U.S. Department of Justice’s (DOJ’s) March 21 complaint accusing Apple of “broad-based, exclusionary conduct” amounting to monopolization of the smartphone market. The DOJ’s sweeping complaint included a number of U.S. states as plaintiffs and charged Apple with “thwart[ing] innovation” and throttle[ing] competitive alternatives via its practices around the iPhone platform.

Massive Replication of Comments Submitted to NIST March-In Rights RFI Should Cause Concern

I have been critical of certain National Institute of Standards and Technology (NIST) proposals to alter the regulations related to the Bayh-Dole Act, in 2021 (Notice of Proposed Rulemaking, NPR), and specifically, the NIST “Framework” published for comments in December, 2023.  My Comments submitted in February addressed numerous legal infirmities, ranging from construction analysis to demonstrated ambiguity problems of the Request for Information/Comments (RFI) itself. 

Biden’s Patent Proposal Carries Devastating Costs, No Real Benefits

It’s rare that a federal policy inspires fierce opposition from both sides of the aisle. But the Biden administration’s recent proposal to gut the Bayh-Dole Act is doing exactly that. Bayh-Dole is a pivotal and successful bipartisan law, but Biden’s proposal would effectively allow federal agencies to tear up patent licensing agreements signed between federally funded universities and private businesses. The economic consequences would be dire. Individuals from across the political spectrum, including former Obama administration officials, have warned the proposal would threaten America’s small businesses and inventors.

‘IP Rights’ is the National High School Debate Topic for 2024-2025

After a year-long process involving 38 state organizations and dozens of individual representatives, IP rights has been selected as the topic for the 2024-2025 debate competition by The National Federation of State High School Associations (NFHS). “Should the U.S. strengthen intellectual property rights” was chosen over “Nuclear Weapons Reduction” by a 25-17 vote in the final balloting process. In addition to NHFS and state debate associations, those who helped to determine the outcome included the National Speech and Debate Association, the National Catholic Forensic League, the National Association for Urban Debate Leagues and the Nation Debate Coaches Association.