Posts in Government

The U.S. Court of Appeals for the Federal Circuit (CAFC) has denied another petition for writ of mandamus seeking to challenge the U.S. Patent and Trademark Office’s (USPTO’s) so-called settled expectations doctrine, which was introduced by then-Acting Director Coke Morgan Stewart. In the present case, Google sought mandamus relief after the USPTO denied its petitions for inter partes review (IPR) of VirtaMove Corp.’s U.S. Patent No. 7,519,814 patent because “the patent[] ha[s] been in force for more than 14 years, creating strong settled expectations.”

A recent U.S. Court of Appeals for the Third Circuit ruling upholding the federal Inflation Reduction Act (IRA)’s drug price negotiation program has been appealed to the U.S. Supreme Court, one of many challenges to the Act’s constitutionality. The IRA requires drugmakers to sell selected patented drugs to the government for its Medicare Parts B & D programs at a stipulated “maximum fair price”. If they don’t agree to these prices, then they face tax penalties on sales of the drug exceeding their profits from it, or the exclusion of all their drugs from Medicare and Medicaid purchases. This would foreclose access to up to 160 million patients, accounting for around 40% of US prescription drug spending or 20% of global prescription drug spending. US government purchases are valued at $200 billion annually.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday vacated and remanded a final written decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding. The court concluded that the Board erred by requiring petitioner Guardant Health, Inc. to show a motivation to combine steps that were already disclosed in sequence in a single prior art reference.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed the Patent Trial and Appeal Board’s (PTAB’s) decision sustaining an examiner’s rejection in an ex parte reexamination of claims of EcoFactor, Inc.’s patent relating to smart thermostat technology. Google filed for reexamination of U.S. Patent No. 8,412,488 in 2021 and an examiner rejected claims 1, 3 through 9 and 11 through 16 in a non-final office action as unpatentable over the combination of U.S. Patent No. 2004/0117330 (“Ehlers”) and U.S. Patent No. 2005/0159846 ) (“Van Ostrand”) and claims 2 and 10 as unpatentable over Ehlers, Van Ostrand, and a third patent, No. 6,789,739 (“Rosen”).

Yesterday, the European Union Intellectual Property Office (EUIPO) and the Organisation for Economic Co-operation and Development (OECD) published the results of a joint study detailing the close connection between illicit trade in counterfeits and labor exploitation. The joint study shows clear, repeated associations between the intensity of counterfeit trade and abusive labor conditions, strongly suggesting that such conditions structurally enable the production and distribution of counterfeits.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday reversed in part, vacated in part, and remanded a final written decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding filed by Apple, Inc.. The court concluded that the Board was precluded from finding the challenged claims of a patent owned by Smart Mobile Technologies LLC patentable, where a related patent with substantially similar claims had been found unpatentable in a prior IPR.

In the latest episode of IPWatchdog Unleashed, I sat down with my good friends Brad Close, who is the Executive Vice President of Transpacific IP, and Jim Carmichael, a former judge on the Board of Patent Appeals and Interferences and founder of Carmichael IP. Brad, Jim and I engaged in a candid conversation that provides our unvarnished assessment of the Patent Trial and Appeal Board (PTAB), where it started historically, where it is today, and where it may finally be headed. Bottom line: the PTAB is no longer the automatic execution squad it once was, but durable patent rights will require reform well beyond the agency level.

U.S. Patent and Trademark Office (USPTO) Director John Squires on January 15 issued a Director Review decision, which he then designated as informative on January 16, in favor of Micron Technologies, vacating two Patent Trial and Appeal Board (PTAB) decisions granting institution of inter partes review (IPR) for Yangtze Memory Technologies. The decision addressed the issue of real party in interest (RPI), which Squires said Micron had sufficiently disputed, while Yangtze failed to rebut the evidence presented and show that it had named all RPIs.

A group of conservative leaders on Wednesday sent a letter to the Director of the National Economic Council, Kevin Hassett, and Chief of Staff to President Trump, Susie Wiles, strongly supporting the U.S. Patent and Trademark Office’s (USPTO’s) Notice of Proposed Rulemaking (NPRM) issued in October, titled “Revision to Rules of Practice before the Patent Trial and Appeal Board.” The NPRM modifies the rules of practice for inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB), with the stated goal being “to focus inter partes review proceedings on patent claims that have not previously been challenged in litigation or where prior litigation was resolved at an early stage.” The deadline for comments was December 2 and the Office has received 11,442 total submissions.

There are lots of familiar recommendations to make U.S. businesses more competitive globally. All are valid, but none are particularly creative or original. One solution that hasn’t been pursued is not only simple, a variation of it has been implemented by America’s largest and most aggressive economic competitor: remove the filing fees for inventors and intellectual property (IP)creators under 18.

On Tuesday afternoon, the U.S. House of Representatives Ways and Means Committee’s Subcommittee on Trade convened a hearing titled Maintaining American Innovation and Technology Leadership, which explored a host of regulatory and other legal burdens being placed on tech industry trade by foreign governments to the detriment of American innovators and consumers. Among the panel witnesses at the subcommittee hearing was former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, who spoke to several ways that our nation’s adversaries and trading partners alike are weakening American IP rights and how those issues should be addressed by U.S. policymakers.

The House Judiciary Committee on Tuesday considered the Protecting Third Party Litigation Funding (TPLF) From Abuse Act as part of a lengthy markup hearing that chiefly focused on escalating immigration enforcement operations in the United States. The bill did not reach a vote after committee members recessed for votes on the House floor and never reconvened. Sources tell IPWatchdog the bill has now been pulled.  

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday vacated and remanded a final written decision from the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) proceeding. The court concluded that the Board erred by denying petitioner Apple Inc. an adequate opportunity to respond to a new claim construction argument raised by patent owner Smart Mobile Technologies LLC after the IPR was instituted. Apple challenged U.S. Patent No. 9,191,083, owned by Smart Mobile, which is described as a “portable and wireless enabled” network box designed to transmit and receive multiple data streams simultaneously. The technology at issue involves using a “plurality of antennas” to handle these simultaneous data streams. After instituting the IPR, the Board ultimately determined that Apple had not shown by a preponderance of the evidence that the challenged claims of the ‘083 patent were unpatentable as obvious.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed a decision of the Trademark Trial and Appeal Board (TTAB) that the mark SAZERAC STITCHES is likely to be confused with registered mark SAZERAC. Laurel Designs, LLC sought to register SAZERAC STITCHES for retail store and online services related to lighting, hardware, furniture and textiles, among others. The examiner rejected the application due to potential confusion with the mark SAZERAC, registered for “online retail store services featuring distilled spirits, beverage glassware, cocktail accessories, T-shirts, caps, postcards, and cocktail recipe books.” Laurel Designs appealed to the TTAB and the Board affirmed after analyzing three of the 13 DuPont factors and determining they favored a finding of confusion.

The U.S. Patent and Trademark Office (USPTO) designated another Director Review decision precedential on Monday, January 12, following Friday’s designation of four precedential decisions. Today’s decision dealt with parallel petitions on the same patents challenging the same claims under different priority dates and held that such petitions “should be rare”.