Posts in USPTO

Most people associate the Consolidated Appropriations Act of 2020 with its COVID relief and stimulus measures, rather than trademarks. While these measures are of course the primary focus of the Act, its changes to the process of registering, maintaining, and enforcing trademarks are likewise important for companies that rely on their branding to achieve their business goals. The Trademark Modernization Act, which is one of many acts included in the Consolidated Appropriations Act, makes several significant changes to the Lanham Act (aka the Trademark Act) which many trademark holders may find beneficial.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday held that the Patent Trial and Appeal Board (PTAB) incorrectly found certain claims of SynQor, Inc.’s U.S. Patent No. 7,072,190 unpatentable as obvious in an inter partes reexamination proceeding. The CAFC said that the PTAB’s previous reexamination decisions on related patents gave rise to common law issue preclusion that collaterally estopped the Board from such a finding. Judge Hughes authored the majority opinion and Judge Dyk dissented, calling the ruling “without support and contrary to governing Supreme Court authority.”

As reported by the Patent Trial and Appeal Board here and by others, the motion to amend pilot program (see 84 Fed. Reg. 9497), which took effect in March 2019, has increased patent owners’ success in obtaining claim amendments during post-grant proceedings, including inter partes reviews (IPRs). Specifically, the success rate for motions to amend has more than doubled under the pilot program to nearly 30% as compared to roughly 14% before the program. In fact, when patent owners use one of the options the Board added to motion to amend practice by way of the pilot program—seeking preliminary guidance and/or filing a revised motion to amend—the grant rate jumps to 36%. The graph below, taken from slide 24 of a Board presentation, reflects these data. 

On February 18, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in an appeal by Canfield Scientific, Inc. (Canfield) from the decision of the U.S. Patent Trial and Appeal Board (PTAB or Board) on inter partes review (IPR) of U.S. Patent No. 7,359,748 (the ‘748 patent) owned by Melanoscan, LLC. The court held that the Board erred in ruling that all the claims of the ‘748 patent were patentable. The decision was reversed with respect to the independent claims and vacated and remanded as to the dependent claims.

In August 1888, Ellen Elgin, a black woman housekeeper, invented a clothes wringer which allowed clothing to be washed and dried faster by feeding clothes through two rollers to wring out the clothing, thereby making them easier to hang and dry. Elgin sold her patent to a white person because she felt it would have a better chance at success than if people knew the inventor was a woman of color. Thus, U.S. Patent No. 459,343 lists Cyrenus Wheeler, Jr. as the inventor.

The U.S. Supreme Court has agreed to hear, on March 1, 2021, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “inferior” officers properly appointed under the Appointments Clause of the U.S. Constitution (U.S. Const., art. II, § 2, cl. 2), and, if not, whether the “fix” by the Federal Circuit in Arthrex v. Smith & Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked. On February 25, 2021, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled “Getting Ready for Arthrex Oral Arguments,” which will summarize the issues presented and include presentations by representative amici on their respective positions.

On February 10, the United States Patent and Trademark Office (USPTO) hosted its annual Black History Month program, “Contemporary Black Women Inventors.” The event spotlights Black inventors and business personalities across the United States to showcase their legacy contributions to America’s ingenuity and the innovation economy. These events include discussions with remarkable innovators, explorations of entrepreneurship, and seminars focused on how to obtain and use intellectual property, as well as helpful USPTO resources.

Patent Trial and Appeal Board (PTAB) filings have settled into a relatively steady-state of roughly 20-30 petitions, occasionally punctuated by a big burst of litigation-related activity. Notably, five of the 34 petitions filed were post grant reviews (PGRs), as the numbers there continue to (very slowly) creep up from nothing. In the district courts, a relatively typical 76 patent filings hit dockets across the nation, including some newer names—and some old ones just now resurfacing. For example, Computer Circuit Operations LLC is back (after filing and settling six suits last year, five in the Western District of Texas). Acacia has a new(ish) campaign (Stingray IP Solutions, LLC) and some new suits in an old campaign (R2 Solutions LLC).

“Teaching away” is a concept important to obviousness analysis under U.S. patent law. “Teaching away” basically bears upon the issue of motivation to combine elements in a manner set out by a patent claim, and such motivation is relevant to obviousness analysis but not to anticipation analysis: would one skilled in the art have had reason (or motivation) to put the known elements in the arrangement that the inventor has claimed? In a sense, “teaching away” is an anti-motivation, as it weighs against such an arrangement…. The question I propose to address is: Does the jurisprudence concerning “teaching away”—particularly the jurisprudence pertaining to whether a reference does or does not “teach away”—make any sense? And if not, what ought to replace it?

On February 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) granted Mojave Desert Holdings, LLC and U.S.A Dawgs Inc.’s (Mojave and U.S.A. Dawgs) motion to substitute in a case involving a design patent infringement issue between Mojave and Crocs, Inc. (Crocs). The court concluded that Mojave is the successor-in-interest to U.S.A. Dawgs, that it has standing to pursue the challenge to Crocs’ patent, and that the Board erred in not substituting Mojave for U.S.A. Dawgs as the third-party requester during the inter partes reexamination.

The Patent Cooperation Treaty (PCT) enables applicants to file one application, called an international application, in a standardized format in an authorized Receiving Office, and have that patent application treated as a regular national patent application in all Member Countries to the PCT. The PCT also provides for the establishment of an international search report and written opinion and publication of the international application after 18 months from the earliest priority date. Aside from being cheaper compared to filing directly in every PCT Member Country individually, which would be unthinkably expensive, the applicant has up to 30 months to actually decide where to receive a patent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld the District of Delaware’s grant of judgment as a matter of law (JMOL) that Amgen’s patent claims covering its Repatha cholesterol treatment were invalid for lack of enablement. The court found that Amgen’s composition claims were defined by meeting functional limitations, rather than by structure, and that the patent specifications didn’t enable the preparation of the full scope of the claims without undue experimentation. Judge Lourie authored the opinion.  Amgen v. Sanofi (CAFC, Feb. 11, 2020)

Patent systems around the globe offer a quid pro quo that exchanges limited monopolies for disclosures of inventions. Most patent filings list: (1) the inventor(s); and (2) the applicant. The applicant may be an assignee (e.g., company, university, organization, etc.) with rights to seek patent protection on innovations that were identified during employment and that were within a scope of employment. Frequently, the assignee is a current or former employer of the inventor(s). In some jurisdictions (e.g., in the United States), the inventor(s) hold the rights to prosecute the patent application and assert any resulting patent unless and until the inventor(s) assign those rights to another entity (which is frequently done in employment and work?for?hire contracts). In some jurisdictions (e.g., the European Union), it is presumed that the party that applied for a patent holds the rights to the patent application. Thus, it is well-established that non-human entities may be the applicant, assignee, and/or owner of a patent. However, it is not well-established that a non-human entity may be an inventor on a patent applicant. Multiple patent offices (e.g., USPTO, UKIPO, and WIPO) have been considering what the standard in this respect should be.

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential opinion affirming a Delaware district court finding that Infinity Computer Products, Inc.’s patent claims relating to using a fax machine as a printer or scanner for a personal computer were invalid for indefiniteness. Infinity Computer Products, Inc. v. Oki Data Americas, Inc. (Feb. 10, 2020). Chief Judge Prost authored the opinion. The patents at issue were U.S. Patent Nos. 6,894,811; 7,489,423; 8,040,574; and 8,294,915, which share a specification. The term at issue was “passive link,” which refers to the link between the fax machine and the computer.

Simply said, the rights provided by one design patent will be extremely unsatisfactory. However, design patents must be considered because a design patent can in many instances be awarded in as few as six to nine months. If obtaining some protection is important for an overall marketing strategy, getting at least some protection quickly may be advantageous compared to waiting the two to three years it will likely take to obtain a utility patent. Design patents can also be an extremely useful tool for a variety of reasons.