Posts in USPTO

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.

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.

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).

Office (USPTO) and Apple, Inc. file responses to his petition for writ of mandamus, the owner of the trademark APPLE JAZZ has filed a reply of his own charging that “the USPTO is not sincere and has never been sincere about deciding this case.” The latest briefs relate to a petition for writ of mandamus filed by Charles Bertini, owner of APPLE JAZZ, who has been embroiled in a fight with Apple over rights to the mark since 2016.

It was an overall below-average week for patent filings at both the Patent Trial and Appeal Board (PTAB) and district courts. The PTAB had only 15 new PTAB petitions—all inter partes reviews (IPRs), while the district court had only 24 new complaints filed. There were two more Fintiv discretionary denials this week, with the Board denying institution of two IPRs filed by IBM against inventor-controlled DigitalDoor Inc. [funding unknown] patents broadly related to various aspects of data security technologies.

In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.

In September 2023, one man grabbed the authors’ attention with his astonishing story about defending his trademark registration from an opposition by professional trademark attorneys using ChatGPT. His months-long battle began in December 2022, less than a month after the public launch of the now infamous AI chatbot. Nine months later, Jamiel Sheikh — an entrepreneur, tech-guru, and adjunct professor — survived the pressure from formal proceedings and obtained a settlement from his opposer without spending a dime. As young trademark attorneys, we were horrified yet extremely curious about what he had done. This article is the result of speaking with Sheikh about his experience and the evolving needs and expectations of sophisticated legal service consumers.

An event held Monday by the Center for Strategic & International Studies (CSIS), and moderated by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, featured a number of high-profile political and professional figures in the intellectual property space debating approaches to strengthening the U.S. patent system, with an emphasis on national security. Representative Deborah Ross (D-NC), who serves on the U.S. House of Representatives’ Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, first joined Iancu to discuss her reasons for supporting the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act.

This week in Washington IP news, the House is holding several meetings pertinent to IP-watchers, including an evaluation of the White House’s policy on AI. Elsewhere, CSIS will speak with to Representative Deborah Ross (D-NC) about the role of the United States in IP’s geopolitical importance.

Recently, Wen Xie argued on IPWatchdog that the U.S. Copyright Office (USCO) and the U.S. Patent and Trademark Office (USPTO) have reached different conclusions regarding “the creative and conceiving capabilities of machines,” which leads to intellectual property (IP) law being self-contradictory. According to Xie, the USCO presumes that artificial intelligence (AI) is creative, while the USPTO does not reach a similar conclusion regarding AI inventorship. I disagree.

The U.S. Patent and Trademark Office (USPTO) announced today that it is launching a pilot program to help promote semiconductor innovation by expediting examination for qualifying patents. The program is meant to support the objectives of President Biden’s Creating Helpful Incentives to Produce Semiconductors (CHIPS) and Science Act, which was signed into law in August 2022. The CHIPS and Science Act provided $280 billion in federal funding to encourage the domestic production of semiconductor products in the United States as well as to fund research and development projects in advanced technological fields like quantum computing and artificial intelligence. The law also provides for a $10 billion investment into the development of regional innovation and technology hubs and establishes other programs supporting science, technology, engineering and math (STEM) educational programs.

Here we go again! We’ve heard the story in the past, which is sadly all too common. A patent owner prevails in federal district court, and also prevails at the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) challenge, but somehow finds themselves still fighting an ex parte reexamination. How is this possible? Perhaps something will be done—this time—because the abusive, harassing challenger is Chinese company TikTok, who is seeking to invalidate the very same claims it failed to invalidate in an IPR that was denied institution on the merits.

Last weekend, The Federalist Society hosted a panel as part of its 2023 National Lawyers Convention featuring in-house counsel from Google and Qualcomm, as well as two federal judges and an academic, to discuss whether U.S. law around IP injunctions is promoting or harming markets for innovators and creators. Predictably, Google’s and Qualcomm’s counsel had starkly different perspectives on that topic.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today affirming the Patent Trial and Appeal Board’s (PTAB’s) finding that Medtronic failed to prove the challenged claims of Teleflex’s catheter patent unpatentable. In several previous precedential decisions issued this year, the CAFC similarly upheld the PTAB’s determinations. In May, the court said that Medtronic failed to show the challenged claims of five catheter patents unpatentable because the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented. And in June, the court found in two separate rulings issued the same day that Teleflex’s objective evidence supported a presumption of nexus, that Medtronic copied Teleflex’s product and that Teleflex’s substitute claims did not lack adequate written description.

The U.S. Patent and Trademark Office (USPTO) today announced that a final rule will be published tomorrow, November 16, in the Federal Register implementing a design patent practitioner bar. The Office first published a Notice of Proposed Rulemaking (NPRM) to the Federal Register in May 2023 contemplating a separate design patent practitioner bar. A request for comments (RFC) was also published in October 22.