Posts in USPTO

The U.S. Court of Appeals for the Federal Circuit (CAFC) today vacated and remanded a district court’s grant of a preliminary injunction to VPR Brands, LP, which accused Shenzhen Weiboli Technology Co. Ltd of infringing its ELF trademark for electronic cigarettes and associated products. VPR sued Weiboli in the U.S. District Court for the Southern District of Florida, alleging infringement via Weiboli’s distribution of its ELFBAR branded e-cigarettes, which VPR said were likely to cause confusion in the marketplace. The next day, VPR filed a motion for preliminary injunction against the ELFBAR products.

Patent licenses include a complicated assortment of interdependent terms and conditions. Successfully negotiating patent licenses, especially patent portfolio licenses, requires both parties to make business-driven tradeoffs to reach mutually acceptable agreements. Mutually acceptable rarely means that either party believes it “won” the negotiation against the other party. In most cases, the patentee will possess a strong belief that its patents are valid, infringed and valuable while a putative infringer will possess an equally strong belief that the patents are not valid, infringed or valuable. Nonetheless, patent litigation is often avoided by entering into a license agreement because the parties’ shared interest in avoiding litigation offsets the value that each party believes it has left on the table by compromising.

On August 9, the U.S. Court of Appeals for the Federal Circuit issued a nonprecedential ruling in Unification Technologies LLC v. Micron Technologies Inc., affirming the Patent Trial and Appeal Board’s (PTAB) decisions invalidating claims of data management patents owned by Unification Technologies. The Federal Circuit found substantial evidence supporting obviousness based on a single prior art reference, and held that there was no due process issue arising from Kathi Vidal’s actions as lead counsel for petitioner prior to recusing herself from the proceedings following her nomination as Director of the U.S. Patent and Trademark Office.

On August 5, a series of Big Tech companies including Apple and Google filed an appellate brief  at the U.S. Court of Appeals for the Federal Circuit (CAFC) continuing their challenge to the U.S. Patent and Trademark Office’s (USPTO) NHK-Fintiv rule for discretionary denials of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). The brief argues that NHK-Fintiv, developed through PTAB precedential decision-making, is a substantive rule requiring notice-and-comment rulemaking because it affects private interests and is binding on administrative patent judges (APJs) at the PTAB.

This week we saw slightly below average numbers of patent filings at both the Patent Trial and Appeal Board (PTAB) and in district court. In the PTAB, there were 21 new filings—all inter partes reviews (IPRs). Samsung filed three petitions challenging three patents held and asserted by Collision Communications [associated with Concert Technology Corporation]. Five Intellectual Ventures [associated with Intellectual Ventures LLC] patents were challenged this week, in six IPRs. TCL and Lenovo each filed a petition challenging the same Intellectual Ventures II patent, Lenovo also filed another three petitions, challenging three patents held by Intellectual Ventures II, while Early Warning Services LLC filed the sixth petition, challenging an Intellectual Ventures I patent.

The U.S Court of Appeals for the Federal Circuit (CAFC) on Tuesday vacated and remanded a decision from the Trademark Trial and Appeal Board (TTAB) based on an incorrect application of the DuPont factors in determining the likelihood of confusion of a famous mark. Bureau National Interprofessional du Cognac (“the Bureau”), the union that oversees the production of COGNAC spirits, and Institut National des Appellations d’Origine, an administrative agency within the French government, filed an opposition to a trademark application for COLOGNE & COGNAC ENTERTAINMENT (“the Applicant”), a hip-hop label.

What is creativity? We all know that U.S. courts have ruled that authors and inventors have to be human under the copyright and patent laws. And many of us are familiar with the references to creativity in those rulings—as well as other cases involving authorship and inventorship. Similarly, we have an intuitive sense of what is (or is not) “creative.” But how many of us have taken a close look at what, exactly, makes something creative? And, if the requirement that authors and inventors be human is somehow tied to creativity, what aspects of creativity matter to IP law?

In a precedential decision today, the U.S. Court of Appeals for the Federal Circuit (CAFC) upheld a Patent Trial and Appeal Board (PTAB) determination that all claims of a patent on voice command technology were unpatentable, but clarified that arguments not raised in a PTAB request for rehearing are not necessarily forfeited on appeal.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday issued a precedential decision affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of Sanho Corporation’s patent based on its finding that a key prior art reference was not exempt under 35 U.S.C. § 102(b)(2)(B). The so-called prior art exception under 35 U.S.C. § 102(b)(2)(B) provides that “[a] disclosure shall not be prior art to a claimed invention under subsection [102](a)(2) if . . . the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday in SoftView LLC v. Apple Inc. held that the Patent Trial and Appeal Board (PTAB) properly applied the estoppel provision of 37 CFR § 42.73(d)(3)(i) in invalidating Softview’s amended claims submitted in inter partes and ex parte reexaminations. The PTAB held and the CAFC affirmed that the claims were not patentably distinct from claims previously invalidated in inter partes review (IPR) proceedings involving SoftView, and the court upheld the U.S. Patent and Trademark Office’s authority under the America Invents Act (AIA) to promulgate the estoppel rules. However, the CAFC limited its application to new or amended claims and remanded the case for reconsideration of claims issued prior to the reexaminations.

This week there was a slightly below average 22 new patent filings—all inter partes reviews (IPRs)—at the Patent Trials and Appeal Board (PTAB). Meanwhile, district courts saw an above-average 88 new patent filings. At the PTAB, Roku filed six IPRs challenging as many Anonymous Media Research Holdings LLC [associated with Anonymous Media Research, LLC] patents. Nike also filed eight IPRs challenging eight Sherrywear LLC patents related to sports bras with pockets. Five Procter & Gamble patents were challenged in five IPRs filed by National Beef Packing Company LLC.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in ZyXEL Communications Corp. v. UNM Rainforest Innovations affirming obviousness findings entered by the Patent Trial and Appeal Board (PTAB) over UNM Rainforest Innovations’ (UNMRI) arguments that ZyXEL’s expert witness misrepresented his contributions to an expert report relied upon by the Board. The Federal Circuit also reversed the PTAB’s finding that one of UNMRI’s challenged patent claims was nonobvious and remanded UNMRI’s substituted claims to the PTAB to consider if those claims are invalid under collateral estoppel.

The Administrative Procedure Act (APA), a foundation in U.S. Patent and Trademark Office (USPTO) examination and post grant proceedings, in patent and trademark federal court cases and in International Trade Commission (ITC) proceedings, has been implemented more or less faithfully under U.S. Court of Appeals for the Federal Circuit (CAFC) scrutiny. But the APA judge-made artifact of Chevron Deference has had many attacks by business, culminating in the Supreme Court’s latest stare decisis upending in the combined-for-hearing cases of Loper Bright Enterprises v. Raimondo and Relentless, Inc. v. Department of Commerce (collectively, “Loper Bright”). Those changes may reach the USPTO’s, the ITC’s, the Federal Circuit’s and district courts’ APA implementation.

Later this week, our nation and the world will celebrate the 55th anniversary of Neil Armstrong’s first moonwalk. Before that historic event, President John F. Kennedy explained why the U.S. undertook such a challenge….  To me, the inspiring part of the speech was not the goal of going to the moon itself but embracing that goal and others “not because they are easy but because they are hard.”  I am delighted that U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal is doing just that: embracing the hard challenges. Moreover, she is tackling a worthy cause—patent pendency.

The U.S. Patent and Trademark Office (USPTO) announced today that it has updated its Subject Matter Eligibility Guidance to more directly address emerging technologies, specifically artificial intelligence (AI). The guidance also includes three new and detailed examples using hypothetical claims to address common situations, such as “whether a claim recites an abstract idea or whether a claim integrates the abstract idea into a practical application.”