Posts in USPTO

Qualcomm, Inc. (NASDAQ:QCOM) of San Diego, CA, is a multinational semiconductor firm that designs and markets wireless telecommunications products. Despite weak global demand for new smartphone products, Qualcomm’s technology licensing division has made a series of deals with Chinese handset makers which should bolster flagging profits through 2016. In early April, Qualcomm announced that it had entered into a licensing…

The IP5 is the name given to a forum of the five largest intellectual property offices in the world that was set-up to improve the efficiency of the examination process for patents worldwide. The top five Patent Offices (IP5) have recognized this internationalization phenomenon and many directives have been introduced to facilitate cooperation between the patent offices… For example, the IP5’s Common Citation Document (CCD) application now allows access of up-to-date citation data of all five patent offices.

Two cases making their way through the Federal courts may force the Supreme Court to consider the issue of what sorts of trademarks should be considered “disparaging,” and whether the government may lawfully prevent the registration of such trademarks… The Redskins appealed to the Fourth Circuit in August 2015 and the parties’ and amici briefs have been rolling ever since. As of April 25, 2016, the Redskins have petitioned the United States Supreme Court to review their case, skipping over the Fourth Circuit Court of Appeal.

The use of a mathematical formula in a claim can trigger a 35 USC 101 rejection or invalidation of the patented claim. However, the role of mathematics in physics and in inventions has changed dramatically over the last 50 years. Computers are programmed to operate on the numbers to perform a defined task, such as filtering or demodulation, by performing calculations in a certain order and at a certain speed. Cellphones, DVD players, telephone sets, 3D printers, cameras, MRI machines and the like are in essence computers with an A/D and D/A converter and/or transducers.

One aspect of the recent Lex Machina report that should jump out to anyone who has closely followed the patent litigation sector over the past few years is that the high percentage of all patent cases filed at the U.S. District Court for the Eastern District of Texas (E.D. Tex.) has dropped significantly. During 2015, E.D. Tex. received 43 percent of all patent infringement cases filed in American district courts. This dropped off steeply to 30 percent, or 291 cases filed, during 2016’s first quarter.

Perhaps the best question of the entire oral argument was asked by Chief Justice Roberts: “So why ­­should we be so wedded to the way they do business in the PTO with respect to the broadest possible construction when the ­­point is not to replicate PTO procedures? It’s supposed to take the place of district court procedures.” Gannon’s response pointed to the difference in the burden of proof between the district court (i.e., clear and convincing) and the PTAB (i.e., preponderance). Chief Justice Roberts responded, “it’s a very extraordinary animal in legal culture to have two different proceedings addressing the same question that lead to different results.” Gannon replied that there are “multiple reasons” why different results could be achieved, to which Roberts said: “there’s a problem here, and so we should accept another problem that’s presented where we don’t have to do it.”

While I would never go into business handicapping the outcome of SCOTUS deliberations, I do have an opinion about what they should do in this case, at least on the claim construction issue. Judge Newman had it exactly right in her panel dissent and her concise dissent from the denial of rehearing en banc. The “broadest reasonable interpretation” standard is useful during the examination phase, ensuring that no conceivably relevant art is overlooked and that the applicant’s opportunity to amend is well informed. But it’s silly, and ultimately damaging to the system, to apply the same standard in a post-issuance process that is directed at determining exactly what issued claims mean and where amendments are seriously restricted. Just as in district court, IPRs benefit from contested advocacy about the meaning of claim terms. In that adjudicative phase there is no place for the artificial construct of “broadest reasonable interpretation” in place of “most reasonable interpretation.”

If the Supreme Court’s recent track record in patent cases is a guide to the potential outcome in this case, it seems quite likely that the Court will not simply affirm the Federal Circuit’s decision. While the Government has set out some reasonably compelling points in support of its position, I believe the Court will agree in large part with Cuozzo and the overwhelming support of the many amici in the case that have set out significant problems and negative long term consequences to the patent system if the PTO’s current approach of using BRI in IPRs is not altered. I also believe the Court will reign in the PTO with regard to its position on reviewability of the PTAB’s institution decisions. A prohibition on judicial review in this context arguably would allow a U.S. government agency to exceed its explicit statutory authority granted by Congress.

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) will host a Patent Quality Community Symposium on Wednesday, April 27, 2016 at USPTO’s headquarters in Alexandria, Virginia and across the agency’s regional offices in Dallas, Denver, Detroit and Silicon Valley. The event will feature interactive segments and implementation updates on the Enhanced Patent Quality Initiative (EPQI).

the Courts have found it difficult to use the Mayo two-part test in the examination of a patent’s validity thus creating great uncertainty… One should not confuse the uncertainty of the complex U.S. patent system with the clarity of the Alice decision. There is no reason to believe any new legislation will provide any improvement in deciding what should, and what should not, be patentable.

After much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. These final rule changes, which are the second set of changes since the America Invents Act (AIA) went into effect, are the culmination of a series of PTAB listening tours and public comments to the rule change proposals published in August 2015. Among other things, the new rules are intended to address concerns that patent owners were at a disadvantage in responding to patent challenges, particularly during the pre-institution stage of a PTAB proceeding. The rule changes also introduce certification requirements for documents filed with the PTAB, confirm the broadest reasonable interpretation (BRI) standard, as well as exceptions to the BRI standard for expiring patents, and adopt an appellate-style word count limit for major briefs.

Pride Mobility appealed, and noted that the Board construed claim 7 as requiring a “substantially planar” mounting plate “oriented perpendicular” to the axis of the wheelchair’s drive wheel, which the Board found in Goertzen. The Court found that the Board had misconstrued Claim 7, because the claim language made clear that the surface which rendered the mounting plate “substantially planar” must be perpendicular to the drive axis, not some other geometric feature of the mounting plate.

Disappointing some (i.e., Patent Owners) who were looking for a more significant changes to the rules governing inter partes review, post grant review, and/or covered business method review, on April 1, 2016, the Patent Office issued its Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board. About one year earlier, the Office hinted at the possibility of more sweeping proposals for change, but many of the more major proposals were not implemented and only more incremental change was adopted. Here are the five things every Patent Owner and Petitioner must know about the new ground rules governing the most seismic change in patent law in several generations – post grant administrative trials.

Unified Patents Inc. explained in its amicus brief in Cuozzo Speed v. Lee that “[t]he phrase ‘broadest reasonable interpretation’ describes the same procedure applied in both the PTO and by the courts.” An inconvenient truth for Cuozzo — but a truth nonetheless. Gene attacked Unified Patent’s position here last Sunday as “false on its face” and “unequivocally incorrect.” Those pejoratives miss the point of Unified’s brief. Unified did not argue that the courts and PTO both apply BRI in name; indeed, Cuozzo would lose his semantic gripe if that were the case. Rather, Unified argued that peeling away the Phillips and BRI labels reveals that both standards employ the same procedure. On this point, Unified’s position is hardly controversial, and Unified is hardly alone.

Finjan Holdings, Inc. (NASDAQ: FNJN), the parent of wholly-owned subsidiary Finjan, Inc., announced several weeks ago that the Patent Trial and Appeal Board (PTAB) of the United States Patent & Trademark Office (USPTO) issued the final rulings on attempts by Symantec Corporation’s (NASDAQ: SYMC) to invalidate 8 different Finjan’s patents through inter partes review (“IPR”). In total, Symantec filed 11…