Posts in USPTO

Patent Filings Roundup: Mixed Results in DraftKings IPRs; Key Patent Innovations Entity Launches First Campaign Asserting Former BlackBerry Patents; Pointwise Ventures Aims for Numerous Targets

It was a below-average week in both the Patent Trial and Appeal Board (PTAB) and in district courts this week for new patent filings, with only 27—all inter partes review (IPR)—at the PTAB and 47 new filings in district court…. The PTAB issued institution  decisions in 16 proceedings this week, denying institution in two IPRs (both on the merits) and ordering institution in 12 IPRs and two post-grant reviews (PGR). Instituted proceedings include two IPRs filed by Palo Alto Networks and Keysight Technologies challenging one Centripetal Networks patent; two IPRs filed by Samsung Electronics Co., challenging two Headwater Research Patents; and two IPRs filed by Motorola Solutions Inc., challenging two Sta Group LLC patents.

USPTO Issues Reminder to Examiners on Means-Plus-Function Analyses

The U.S. Patent and Trademark Office (USPTO) on Tuesday, March 19, issued a memo for all patent examiners reiterating its current practices and resources for examining means-plus-function and step-plus-function claim limitations. The memo is primarily focused on reminding examiners that they must create a clear record explaining their interpretation of such claims and points to various resources and training tools that are available to assist them.

The Trains, Planes and Automobiles of Correcting DOCX-Related Errors

Similar to Steve Martin and John Candy’s calamitous odyssey in the classic 1980s film Planes, Trains and Automobiles, patent practitioners are experiencing their own misadventures when filing applications in the DOCX format. As of January 17, 2024, the U.S. Patent and Trademark Office (USPTO) mandated submitting all specification, claims and abstracts of non-provisional applications filed under 35 U.S.C. 111(a) in DOCX format or incurring a $400 surcharge (non-discounted). The DOCX mandate came after thousands, and likely tens of thousands, of practitioners, directly or indirectly, communicated their significant procedural, technical, legal, ethical, professional liability, and financial concerns to the USPTO.

SCOTUS Denies Petition to Review CAFC Precedent on Justification for Primary Reference Selection

The U.S. Supreme Court on Monday, March 18, denied a petition filed by patent owner Jodi A. Schwendimann asking the Court to review a decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) that affirmed a Patent Trial and Appeal Board (PTAB) determination that Schwendimann’s patents were obvious. The petition specifically asked the Court to review the CAFC’s holding that Schwendimann’s argument that “justification for selection of a primary reference is a necessary step to guard against hindsight bias for the motivation to combine references” was unsupported by Federal Circuit case law.

Responding to Obviousness Rejections in Light of the USPTO’s New Guidance

The United States Patent and Trademark Office (USPTO) recently released new guidance to patent examiners on making obviousness rejections. The guidance focuses on post-KSR precedential jurisprudence from the U.S. Court of Appeals for the Federal Circuit. Some of the guidance is fairly mundane, some of it is not. The purpose of this article is to propose a few responses one might use to counter rejections that apply certain problematic aspects of the new guidance.

USPTO Wants Input on How to Better Commercialize Innovation

The U.S. Patent and Trademark Office (USPTO) today issued a Request for Comments (RFC) that will be published in the Federal Register tomorrow seeking input from the public on how to better incentivize commercialization of innovation, particularly in green and critical or emerging technologies. According to the RFC, the comments received “will be used to evaluate possibilities for amplifying the impact of our current work, and to explore new ways to support the transfer of innovation to the marketplace.”

CAFC Affirms PTAB Finding that Reasonable Pertinence Proves Analogous Art

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a brief opinion authored by Judge Chen today that rejected Daedalus Blue LLC’s appeal of a Patent Trial and Appeal Board (PTAB) decision finding certain claims of its patent on a data management system unpatentable. The PTAB held that U.S. Patent No. 8,671,132 was unpatentable as obvious over combinations of three prior art references: “Gelb”, “Tivoli”, and “Callaghan.” Daedalus in part argued on appeal that the Board incorrectly found that Gelb is analogous art because Gelb “is not reasonably pertinent to the problems identified in the ’132 patent.”

Vidal Delays OpenSky Payment But Upholds Attorney’s Fees Award for VLSI

On March 11, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an order on rehearing that upheld the attorney’s fee award levied against petitioner OpenSky Industries over its abuse of process during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Although Director Vidal’s order delayed the date by which OpenSky must pay, the ruling nixed OpenSky’s challenges to the more than $400,000 attorney’s fee award in favor of patent owner VLSI.

USPTO Launches Office of Public Engagement

The U.S. Patent and Trademark Office (USPTO) announced Monday that it has created an Office of Public Engagement (OPE) “to advance the agency’s mission of increasing participation in the innovation ecosystem by strengthening outreach and support to American communities.” The OPE will be on par with the Patents and Trademarks units and will consolidate a number of existing offices into one, including the four USPTO Regional Offices.

Mastering USPTO DOCX Formats: The Ultimate Guide

The U.S. Patent and Trademark Office (USPTO) has been working diligently towards introducing a system supporting the submission of new patent applications in structured text, particularly utilizing the DOCX format, over the past few years. This transition has recently been realized, as the Office officially implemented DOCX filing starting from January 17, 2024. This consideration of filing in DOCX format stemmed from a Proposed Rule issued by the USPTO on July 31, 2019.

Patent Filings Roundup: Sitnet LLC Patents Challenged; Touchmusic Launches First Campaign; NPE Activity in UPC Ramps Up

This week was an above-average one for patent filings in both the Patent Trial and Appeal Board (PTAB) and in district courts. The PTAB had two new post grant review (PGR) petitions and 39 new inter partes review (IPR) petitions, for a total of 41 new filings. And the district court also had heightened activity with 75 new filings.

Harnessing Differences Between U.S. and European Patent Education Systems for an International Advantage in Portfolio Strength

Participants in the U.S. and European patent systems face a rapidly changing landscape as the European patent with unitary effect and Unified Patent Court (UPC) are off to a successful start. The UPC has positioned itself alongside U.S. district courts, the International Trade Commission (USITC), and the U.S. Patent Trial and Appeal Board (PTAB) as a leading patent litigation forum…. Accordingly, participants in these patent systems constantly engage with U.S. and European patent attorneys, and now interact more frequently with attorneys who can represent them before the UPC (“UPC representatives”). This article describes key differences in the training, development, and skill sets of U.S. patent attorneys, European patent attorneys, and UPC representatives.

USPTO Proposes Rules to Implement Motion to Amend Pilot Provisions

The U.S. Patent and Trademark Office (USPTO) today published a Federal Register Notice (FRN) announcing a notice of proposed rulemaking (NPRM) that would make permanent certain aspects of the Motion to Amend (MTA) Pilot program and revise rules around the burden of persuasion governing MTAs. The MTA pilot program for America Invents Act (AIA) proceedings at the Patent Trial and Appeal Board (PTAB) stems back to March 2019, when the Office published a notice of pilot program in the Federal Register announcing that patent owners would have the opportunity to seek preliminary guidance on MTAs from the Board itself. The pilot program also offered the opportunity for patent owners to file revised MTAs following a petitioner’s brief in opposition to the original motion to amend. Since launching the pilot program, the USPTO has twice extended the date for terminating the program, which is currently set to run through September 16, 2024.

U.S., EPO and Chinese Software-Related Patent Grants Remained Steady in 2023

As an update to my previous posts from 2017, 2019, 2020, March 2021, August 2021, 2022, and 2023, it has now been almost a decade since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased 76 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.).

USPTO Issues Updated Obviousness Guidance Tracing 15 Years of Case Law Following KSR

On February 27, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register providing updated guidance for agency decision-makers on making proper determinations of obviousness under the U.S. Supreme Court’s 2007 ruling in KSR International Co. V. Teleflex Inc. While the USPTO’s examiner guidance doesn’t constitute substantive rulemaking, it traces 15 years of case law from the U.S. Court of Appeals for the Federal Circuit to clarify several areas of confusion stemming from the Supreme Court’s calls for a flexible approach to the obviousness analysis for patent validity.