Posts in USPTO

Google PTAB Wins Stand as CAFC Denies Patent Owner’s Bid for Director Rehearing

The U.S. Court of Appeals for the Federal Circuit (CAFC) today upheld in a precedential decision the U.S. Patent and Trademark Office’s (USPTO’s) denial of Director rehearing for two inter partes review (IPR) decisions in which the Patent Trial and Appeal Board (PTAB) found CyWee Group Ltd.’s U.S. Patent Nos. 8,441,438 and 8,552,978 unpatentable. The IPRs were brought by Google in 2018 challenging certain claims of the two patents, which cover 3D pointing devices. The PTAB instituted the two IPRs within three months of CyWee’s preliminary responses to the petitions, and following institution, the IPRs were joined by other parties, including Samsung, LG and Huawei. Because of the joinders, the PTAB extended the deadline for its response by one month beyond the statutory deadline of one year from institution, to January 10, 2020. The Board issued final written decisions (FWDs) in both IPRs on January 9, 2020, finding all claims unpatentable for obviousness.

Vidal’s Open Invitation to Extortionists is Not Helping the PTAB’s Perception Problem

The Patent Trial and Appeal Board (PTAB) has a well-earned and perfectly appropriate problem with perception, and U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal seems to be doing her level best to make that problem of perception even worse. It isn’t bad enough that petitioners do not owe the PTAB or the Office itself a duty of candor, but now they can stay in a case as a petitioner even if they are found to have engaged in extortion. There has long been a systemic bias against patent owners, who have for many years suffered through lengthy examinations of their innovations. But ever since former PTAB Chief Judge James Smith embraced the moniker of “patent death squad” as a badge of honor, the PTAB has suffered from a perception problem, and really now lacks all credibility.

In Latest OpenSky Order, Vidal Awards VLSI Attorney Fees, Restores OpenSky as Party to IPR

On Friday, February 3, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an order in the ongoing Director Review of OpenSky v. VLSI, restoring OpenSky as a party to the inter partes review (IPR) and awarding reasonable attorney fees to VLSI as sanctions against OpenSky. Vidal had dismissed OpenSky from the proceedings in December after first merely relegating OpenSky to be a “silent understudy” to the proceedings. In Friday’s order, following briefing from OpenSky and VLSI on her order to show cause as to why OpenSky shouldn’t have to pay compensatory damages to VLSI, Vidal held that VLSI was entitled to attorney fees for the time it spent addressing OpenSky’s abusive behavior, “including the Director Review process in its entirety.”

Does Hyatt v. Hirshfeld Mean That More than One-Third of Patents on the Top Pharmaceuticals are Presumed Invalid?

Case law has defined prosecution laches as an affirmative defense against an infringement assertion. Specifically, the case law indicates a patent that is being asserted is unenforceable when the patentee caused an unreasonable and unexplained delay in prosecution of the patent. Symbol Tech v Lemelson Medical, No. 04-1451 (Fed. Cir. 2005). There is relatively little case law on the specifics of laches. However, in 2021, the Federal Circuit said: “we now hold that, in the context of a § 145 action, the PTO must generally prove intervening rights to establish prejudice, but an unreasonable and unexplained prosecution delay of six years or more raises a presumption of prejudice”. Gil Hyatt v. Hirshfeld (Fed. Cir. 2021). What does this – or might this – mean beyond the Hyatt case?

This Week in Washington IP: Anticipating Biden’s State of the Union Address, the USPTO Discusses IP Developments in China, and Evaluating the Importance of Metascience

This week in Washington IP news, the Senate Committee on Foreign Relations discusses U.S.-China relations after a tense weekend, a house committee holds a hearing on removing barriers to capital for small businesses, and the AEI talks to experts about the growing industry of metascience and its importance to U.S. innovation.

In Response to Questions Signaling Major Changes to Patent System, Commenters Ask USPTO: ‘Where’s Your Data?’

Yesterday, February 1, was the deadline for submissions to the U.S. Patent and Trademark Office (USPTO) on its call for responses to a number of questions purportedly aimed at making U.S. patents more “robust and reliable.” But many commenters have weighed in to question why the Office is relying on data driven by advocacy groups to explore potentially major adjustments to the U.S. patent system when, as the expert agency on patents, it has not yet undertaken a data-driven study itself to confirm the need for such changes. The key data being questioned is that of  the Initiative for Medicines, Access & Knowledge (I-MAK), an advocacy organization that has become a “principal, go-to source” for data on the number of patents and patent applications covering pharmaceutical innovations. Some of the questions raised in the USPTO’s Request for Comments (RFC) seem to be based on many of the premises of the I-MAK data.

Revolution Rope Inventor Tells Justices She Deserves Her Day in Article III Court

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, argued in a reply brief to the U.S. Supreme Court filed on behalf of her company, Jump Rope Systems, LLC, on Tuesday that her case against Rogue Fitness is justiciable and the company has standing despite the cancellation of her patent claims by the U.S. Patent and Trademark Office (USPTO). Jump Rope Systems filed the brief in reply to Rogue Fitness’s brief in opposition, which was filed on January 19. Metz and Jump Rope Systems originally sued Rogue Fitness in 2018. But after Rogue filed a petition for inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) ruled that Jump Rope Systems’ two patents (US 7,789,809 B2 and US 8,136.208 B2) related to jump rope handle technology were unpatentable.

Patent Filings Roundup: Latest Mohan Rao Vehicle Semiconductor Patents Challenged; Competitor Suits Dominate

It was a relatively average week for patent filings, with 58 district court complaints and 19 new Patent Trial and Appeal Board petitions filed—that’s a tad low—all inter partes reviews (IPRs). There were more fake meat IPRs filed against Impossible Foods by Motif Foodworks; no discretionary denials last week; lots of frequent litigants saw IPRs instituted against asserted patents this week; unknown Qualserve Solutions LLC sued Samsung on what appears to be standard-essential LTE networking functions, though it’s unclear how handsets would exactly infringe; AGIS and Verizon appear to have settled; Speir Technologies [Magentar Capital] went down the line and hit TCL (after reportedly offering a five-year RPX license to settle all Magnetar suits with their members).

Kappos at PTAB Masters 2023: The PTAB Simply ‘Hasn’t Worked Out’ as Intended

During the PTAB Masters 2023 program, which was held this week on Tuesday and Wednesday at IPWatchdog’s headquarters in Ashburn, Virginia, former U.S. Patent and Trademark Office (USPTO) Director David Kappos explained on a panel about potential reform of the Patent Trial and Appeal Board (PTAB) that the PTAB was meant to be an alternative to district court, but “that hasn’t worked out.” Kappos was Director during the enactment and implementation of the America Invents Act (AIA), which established the PTAB.

The USPTO Claims it Wants to Ensure ‘Robust and Reliable’ Patents – But Its Questions Imply Another Assault on Patent Owners

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Responses to this request are due by this Thursday, February 2, 2023. Patent owners, especially small businesses and independent inventors, need two things of the patent system: 1) Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity. 2) Flexibility. We use many different strategies during patent prosecution. Many of our strategies reflect the startup-nature of our inventions, where we are constantly working on the product-market-fit. We may need several bites at the apple to effectively protect our invention. The Request for Comments suggests several different changes to patent prosecution, none of which address small companies’ needs.

USPTO Issues Final Rule to Eliminate CLE Certification Program

The United States Patent and Trademark Office (USPTO) yesterday announced a final rule to eliminate the provisions within the agency’s rules related to voluntary continuing legal education (CLE) certification and recognition for registered patent practitioners and individuals granted limited recognition to practice in patent matters before the USPTO. The rule also eliminates the Office of Enrollment and Discipline (OED) Director’s ability to publish the CLE status of patent practitioners. It will go into effect on February 27. The agency received critical comments from a variety of patent practitioners and interest groups about the USPTO’s lack of compliance with federal administrative law statutes related to agency rulemaking. Additionally, stakeholders highlighted the increased administrative and financial burden for patent practitioners if the CLE program was implemented.

Rising to the Top in a Post-Pandemic IP World: A Look at the Most Active Patent Litigators and the Latest District Court Patent Litigation Data

As economists predict market slowdowns, companies focus on the need to protect their market share by enforcing their intellectual property (IP) rights or possibly monetizing it to bring value to their balance sheet. A company’s value, reputation, and success can be directly tied to its intellectual property, and therefore, it is critically important to safeguard that IP. According to the United States Patent and Trademark Office (USPTO), economic growth is driven by innovation and supported through intellectual property. Thus, it is essential that we study the relationship that exists between innovation-related growth and the trends in IP data.

A Look at the Comments on USPTO-FDA Collaboration Initiatives: How Bad Data Could Chill Critical Drug Innovation

In the days leading up to the recent all-day listening session on initiatives pursued by the U.S. Patent and Trademark Office (USPTO) and the U.S. Food and Drug Administration (FDA) to address drug patent issues, 30 public comments were filed in response to the Federal Register notice issued last November seeking input on ways that both agencies could promote both innovation and patient access to generic pharmaceuticals. Some comments cited data pointing to supposed issues with artificially extended market exclusivity for branded drugs, while at least one pharmaceutical firm called out a well-known data source as improperly inflating that company’s patent data. Suggestions for intra-agency collaboration included more access to drug dossier information during patent prosecution, although concerns were also raised regarding the prospect that such increased engagement could tax agency resources to the detriment of all patent applicants.

This Week in Washington IP: IPWatchdog Event to Review the State of the PTAB; US Inventor Protests in D.C.; and the House Considers Supply Chain Challenges

This week in Washington IP news, the House Committee on Transportation and Infrastructure is holding a hearing on the state of the country’s supply chains, IPWatchdog is hosting a two-day event on the Patent Trial and Appeal Board (PTAB) at its headquarters, and an educator is sharing his experience implementing IP education as a STEM teacher and his current work with the U.S. Patent and Trademark Office (USPTO).

SCOTUS Sustains Blow to Patent Prosecution Practice in Denying Juno v. Kite Rehearing

The Federal Circuit’s decision in Juno v. Kite undermines effective prosecution practice and ultimately patent enforcement. The Juno panel held that to satisfy the written description requirement, a patent needs to demonstrate to a skilled artisan that the inventors possessed and disclosed in their filing the full scope of every genus being claimed. By denying rehearing to the Federal Circuit’s 2021 decision on the scope of the written description requirement, Juno v. Kite demonstrates how once again, the courts never consider anything from a prosecutor’s point of view. Here’s why Juno v. Kite is bad for patent prosecution practice.