Posts in USPTO

Patent Filings Roundup: A Light Week to Kick Off the New Year

The first week of 2024 was a light one for patent filings. The Patent Trial and Appeal Board (PTAB) had a slightly below average 21 new petitions—all petitions for inter partes review (IPR), while there were only 34 new filings in district court. The PTAB saw new IPRs filed against Advanced Coding (filed by Samsung), XR Communications (filed by Ericsson) and Semiconductor Design (filed by Cadence Design Systems). Four new IPRs challenging three Senko Advanced Components Inc. [associated with Senko Group Holdings Co, Ltd.] patents were filed by US Conec Ltd. After low activity throughout 2023, Askeladden has filed three new IPRs challenging three Calabrese Stemer LLC patents and four new IPRs challenging three Intercurrency Software LLC patents.

USPTO Says Wands Still Controls Post-Amgen in New Enablement Guidelines

The U.S. Patent and Trademark Office (USPTO) published guidelines for examiners today on the topic of enablement in light of the Supreme Court’s May 2023 decision in Amgen v. Sanofi. The Office’s view seems to largely mesh with what our guest authors concluded earlier today—Amgen isn’t getting rid of In re Wands and—at the USPTO at least—the decision has seemingly maintained the status quo.

Federal Circuit Affirms Mixed Rulings for Patent Owner Based on ‘Ordinary Meaning’ of Claim Phrase

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today affirmed two decisions of the Patent Trial and Appeal Board (PTAB) that invalidated some claims and upheld others of a patent owned by Personal Genomics Taiwan, Inc. Based on the PTAB’s claim construction, which the CAFC agreed with, the decision held that Pacific Biosciences had failed to prove the prior art taught the limitation of the preamble phrase of claim 1 in one inter partes review, (IPR) but did prove a different prior art reference taught the limitation in the other proceeding.

The Year Ahead: Where Do We Stand on the USPTO’s ANPRM and the PREVAIL Act?

As we enter 2024, major policy initiatives are pending at the United States Patent and Trademark Office (USPTO) and in Congress aimed at overhauling certain aspects of Patent Trial and Appeal Board (PTAB) practice. These initiatives—the Advance Notice of Proposed Rulemaking (ANPRM) and PREVAIL Act, respectively, are at a critical point, with elections less than a year away. This article discusses the current state of both.

SCOTUS Passes on Intel’s Bid to Overturn Fintiv

The U.S. Supreme Court today denied certiorari in Intel v. Vidal, a case that asked the Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) ruling concerning the Patent Trial and Appeal Board’s (PTAB’s) so-called Fintiv framework. The CAFC’s March 2023 decision said appellate review of whether the PTAB’s discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” was precluded by Section 314(d) of the patent statute.

Patent Filings Roundup: New NPE Campaign Dominates December; Calls Against Fintiv Continue

Looking back over the final few weeks of 2023, patent filings were typical at the Patent Trial and Appeal Board (PTAB) and slightly above average in district courts, with the last weeks of the year seeing 68 district court complaints filed and 25 new PTAB petitions [December 11-17]; followed by 57 district court complaints filed and 29 new PTAB petitions [December 18-24]; and wrapped up with 24 district court complaints filed and 13 new PTAB petitions [December 25-31].

HHS Issues RFC on WHO Pandemic Convention’s Provisions Impacting IP Rights

On December 22, the U.S. Department of Health and Human Services (HHS) issued a notice and request for comments (RFC) regarding the United States’ negotiating position on a draft convention on pandemic preparedness being developed at the World Health Organization (WHO). The HHS’ RFC specifically targets certain portions of the draft convention that would impact intellectual property (IP) ownership, research & development, and technology transfer for pandemic-related technologies.

What Lies Ahead: Here’s What IP Practitioners Will Be Watching in 2024

We are less than 24 hours out from 2024 and, after reflecting on what mattered in 2023 and other year-in-review recaps, it is now time once again to ponder what lies ahead. From exciting patent legislation to Supreme Court trademark and copyright cases that could have big implications, here is what the IPWatchdog community will be keeping on its radar in the new year. 

How U.S. Courts Ruled on Trademarks in 2023

This year has seen a bonanza of significant trademark decisions, including several high- profile decisions from the Supreme Court. Courts ruled on issues ranging from First Amendment and parody considerations to the extraterritorial reach of U.S. trademark law, yet in most cases returned to basic principles of trademark law to resolve the open issues. Below is a selection of a few of those significant cases from the previous year.

From AI to Amgen, Here’s Everything IP that Mattered in 2023

Another year of IP is behind us, and it is time to reflect on what mattered most—what decisions will affect practice for years to come and/or continue to play out in the courts as we move into 2024? Below are reflections on milestones from this past year—some positive, some negative, and some neutral–at least for now.

The Top 10 Patents of 2023: Energy Harvesting Roadways, Deep AI Infrastructure and Controllable CRISPR Editing

The patents granted by the U.S. Patent and Trademark Office (USPTO) tell the story of society’s innovative future. While the true value of a technological advance develops over time, the following selection of patents of 2023 represent meaningful advances in several emerging areas of technology. From artificial intelligence (AI) systems for retail checkout to improved mRNA drug delivery, these innovations have been chosen for their likeliness to make a significant real-world impact in 2024 and beyond.

Great Concepts; Not So Great Reasoning

In October of 2023, a divided panel of the U.S. Court of Appeals for the Federal Circuit ruled in Great Concepts, LLC v. Chutter, Inc., 84 F. 4th 1014 (Fed. Cir. 2023) that a fraudulent filing for incontestability under Section 15 of the Lanham Act is not a proper ground for the Trademark Trial and Appeal Board (TTAB) to cancel a registration under Section 14 of the Act. In so holding, it endorsed prior rulings to the effect that fraud in filing a Section 8 affidavit of continuing use, or a renewal application under Section 9—acts of “maintaining” a registration—constitutes “obtaining” a registration within the meaning of Section 14, while rejecting earlier TTAB decisions that had treated Section 15 affidavits the same way.

USPTO 2023 Year in Review: E-Filings and Rulemakings and AI, Oh My!

The U.S. Patent and Trademark Office’s (USPTO’s) 2023 has been one marked by a push towards further modernization and reduction of environmental impact, while also attempting to increase administrative efficiency. The Office has also solicited and received zealous commentary from an interested public regarding proposed changes to Patent Trial and Appeals Board (PTAB) proceedings. Lastly, in continuation of last year’s prevailing theme, the USPTO has begun generating reports, holding listening sessions, and publishing Director’s blogs regarding the topic of artificial intelligence (AI) as it pertains to both inventorship and as a subject of invention.

Federal Circuit Upholds PTAB Claim Construction Conflicting with Parallel District Court Proceedings

On December 15, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in ParkerVision, Inc. v. Vidal affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of ParkerVision’s patent claim to down-converting electromagnetic (EM) signals in wireless communication networks. In so holding, the Federal Circuit upheld the PTAB’s use of claim construction conflicting with parallel proceedings in the Western District of Texas on the grounds that the patentee defined the term “storage element” as a lexicographer.

USPTO Names New Advisory Board Members on Heels of PPAC Report Forecasting Downward Trend in Finances

On December 6, the U.S. Patent and Trademark Office (USPTO) announced the new membership of its public advisory boards providing oversight of the patent and trademark operations of the agency. The announcement comes about a week after the USPTO’s Patent Public Advisory Committee (PPAC) publicly released its most recent annual report summarizing the agency’s patent operations with recommendations to end user fee diversion and publicize data from America Invents Act (AIA) trials at the Patent Trial and Appeal Board (PTAB).