Posts in USPTO

Filings reverted to the mean this week, with 31 Patent Trial and Appeal Board (PTAB) filings (5 post grant reviews and 25 inter partes reviews) and roughly double that (61) for new district court patent complaints. Another four or so denials under Fintiv came this week, mostly over district court trials in Judge Gilstrap’s Eastern District of Texas court—in one case, over a significant relationship with previous petitioners, albeit as part of a set of earlier-reported-on cases. See IPR2020-01101, IPR2020-01358, IPR2020-01399, IPR2020-01400 (affecting Mitek, a group of UAB companies, and Samsung). A few new LLC players—Gesture Technology Partners, LLC, Repeat Precision, LLC—were added in a week that saw relatively few non-practicing entity (NPE) suits and plenty of competitor suits.

Reports surfaced last week that Microsoft was granted a patent in December for a way to allow people to have conversations with loved ones after they’re deceased. The tech company a tool that could make it possible to have a virtual conversation via a chatbot with a “past or present entity … such as a friend, a relative, an acquaintance, a celebrity, a fictional character, a historical figure.” Further, the patent indicates that the chat would use imagery to “mold a personality alongside a 3D model of its real-life counterpart using letters and images.”

Earlier today, in cxLoyalty, Inc. v. Maritz Holdings, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part, reversed-in-part and dismissed-in-part a decision of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) in which the CAFC doubled down on its past contention that the USPTO’s Subject Matter Eligibility Guidance is not binding on the court’s analysis. The panel included Chief Judge Prost and Judges Lourie and Hughes. The opinion was authored by Prost.  

This week in Washington IP events, Congress continues to address early Biden Administration issues outside of the purview of intellectual property, although the House Homeland Security Committee will take a look at developing cybersecurity technologies that can prevent threats to the COVID-19 response plan being pushed by President Biden. Among D.C. area policy institutes, the Hudson Institute examines 25 years of the Telecommunications Act regime for Internet business regulation with a pair of former FCC commissioners, and the Center for Strategic & International Studies focuses on how the United States and Japan can collaborate in high tech supply chains to ward off the threat of Chinese technological dominance. The U.S. Patent and Trademark Office also hosts a pair of events celebrating Black History Month, as well as the latest quarterly meeting of the agency’s Patent Public Advisory Committee.

In 1873, Mary Jones De Leon was granted U.S. patent No. 140,253 for her invention titled ”Cooking Apparatus.” De Leon, who resided in Baltimore, Maryland, is believed to be the second black woman to receive a U.S. patent, following Martha Jones in 1868. De Leon’s invention was an apparatus for heating or cooking food by dry heat and steam the same time. Her cooking apparatus was an early precursor to the steam tables now used in food buffets to keep food warm during gatherings.

Traditional Chinese Medicine, or TCM, is a subset of herbal medicine. TCM patent applications generally fall into four categories. A Compound formula is the predominant type of patent application in the field of Chinese medicine. This is not surprising because most TCM combines two or more medicinal materials to be effective. Medicinal craft refers to active ingredients extracted from medicinal materials using a specialized process, or the specialized process itself. Medicinal materials refer to the original medicinal materials used in the preparation of Chinese medicines. Some of these original medicinal materials are the whole plant or a certain part of the plant, and some need to be processed. Related products refer to non-medicinal products containing Chinese medicines, including medicated foods, namely functional foods, health products and cosmetics containing Chinese medicines. These categories reflect the main objectives of TCM patent protection: namely, to protect the formula, craft, original materials, and commercial products. 

Accurate and clear patent drawings strengthen and enhance patent applications, helping patent examiners who are already overburdened with applications to understand inventions faster. In this article, we will be covering the essential points on the importance of patent drawings and how we can make the drawings feasible for filing at the USPTO. We will also cover some important guidelines to help you to avoid unwanted office actions.

District court patent filings exploded this week with 126, while Patent Trial and Appeal Board filings were down substantially, with just 11 inter partes reviews (IPRs) and two post grant reviews (PGRs) filed. The district courts saw the return of serial filer WSOU (this time against F5 Networks) as well as a new round of suits in AGIS Software Development LLC (discussed below), a surprising (even for them) number of new IP Edge suits, and a fair number of new defendants added to existing non-practicing entity (NPE) suits. Raymond Anthony Joao continues to add defendants quickly to various subsidiaries, and Leigh Rothschild had a few new cases, in a week dominated by NPE filings.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on February 1 held in part that the United States Patent and Trademark Office’s (UPSTO) Patent Trial and Appeal Board (PTAB) erred in finding a claim anticipated when the petition for inter partes review had only asserted obviousness as to the claim. M&K Holdings, Inc. v. Samsung Electronics Co. Ltd. (CAFC, Feb 1, 2020). The CAFC vacated the PTAB’s decision on that claim but affirmed the holding of unpatentability as to the rest of the asserted claims.

For better or for worse, there is no such thing as a worldwide patent. There is, however, something that approximates a worldwide patent application that can ultimately result in a patent being obtained in over 150 countries around the world. This patent application is known as an international patent application, or simply an international application. The international treaty that authorizes the filing of this single international patent application is the Patent Cooperation Treaty, most commonly referred to as the PCT.

The United States is not even two weeks into the administration of President Joe Biden and it’s likely that the administration’s selection for Director of the U.S. Patent and Trademark Office (USPTO) will not become clear for a few months yet. Many members of the U.S. innovation community, however, are well aware of the high stakes in play with that selection. The tenure of outgoing Director Andrei Iancu was lauded across many sectors of the U.S. patent system, perhaps with the exception of the tech sector. As we consider candidates for the next USPTO head, perhaps we should look to the political moment in which we find ourselves to guide our search.  

Martha Jones of Amelia County, Virginia, is believed by many to be the first black woman to receive a United States patent. Her application for an “Improvement to the Corn Husker, Sheller” was granted U.S. patent No. 77,494 in 1868. Jones claimed her invention could husk, shell, cut up, and separate husks from corn in one operation, representing a significant step forward in the automation of agricultural processes.

Companies that have a strong, diversified patent portfolio can establish themselves as key innovators within a particular field and secure a freedom to operate in that field. In some situations, companies may also choose to enforce patent rights granted to them by these patents in a litigation, either offensively against an alleged infringer or as a defense to patent infringement claims against them.

Recently, the Day One Project, an initiative of the Federation of American Scientists, released a transition document drafted by a collection of veteran policymakers discussing a range of policy ideas to be implemented at the U.S. Patent and Trademark Office (USPTO) starting from the earliest days of the Biden Administration. The ideas advocated by the Day One Project focus on a mix of policies related to diversity, international IP systems, patent quality, agency budgeting and governance and ways that the USPTO can contribute to broader administrative policy initiatives. While there are many sound policy positions advocated by the Day One Project, patent owners may want to be aware of the document’s stance on the “public benefit of PTAB review of a patent” as well as the agency’s role in developing policy on patentable subject matter reform. Interestingly, the policy document indicates that there is broad consensus for continuing policies from the Trump Administration relating to China’s influence on the world of intellectual property.