Posts in USPTO

District court patent filings bounced back this week to 86, while the Patent Trial and Appeal Board (PTAB) saw a slight jump to 44, fueled in part by eight under-the-wire covered business methods (CBM) filings just prior to that program’s expiry. WSOU Holdings filed another round against new defendants from their massive Nokia/Alcatel-Lucent portfolio, asserting new one-off patents not previously asserted, bringing their litigation total this year to 131, and bringing new defendants F5 Networks and Xilinx into the fray. It seems there may be no end to new suits in sight.

In his address to the Intellectual Property Owners Virtual Annual Meeting yesterday, USPTO Director Andrei Iancu said that, despite sharp declines in filings and renewals, COVID-19 seems to have spurred innovation in some areas. “Small and micro entity patent filings are at a historic high, with more than 112,000 filed during the first 11 months of fiscal year 2020,” Iancu said. In an August interview with IPWatchdog Founder and CEO Gene Quinn, Iancu discussed one of the COVID-19 relief programs the Office has instituted to support small inventors during the pandemic. A pilot that offers free prioritization of COVID-19 related patent applications has been working well, Iancu told Quinn, and is expressly geared to assisting smaller entities.

The USPTO recently revised the Manual of Patent Examination Procedure (MPEP) Section 706.07(b) to retroactively impose a first action final rejection (FAFR) policy that significantly reduces a patent applicant’s options (MPEP, E9R10.2019. Fed. Reg. Vol. 85, No. 133 page 41,571). Here, in Part I of this two-part series, we identify and analyze the final agency petition decision behind the policy change. In Part II, we provide summary and analysis of petition decisions relating to premature final office actions. Codifying the new FAFR standard in the June MPEP revision opens the door for all patent examiners to impose FAFRs on substantively amended claims, if they so wish.

The U.S. Patent and Trademark Office (USPTO) announced today that Shira Perlmutter, the Office’s Chief Policy Officer and Director for International Affairs, has been chosen by Librarian of Congress Carla Hayden to be the 14th U.S. Register of Copyrights. Maria Strong has been serving as Acting Register since January 2020, after former Register Karyn Temple left the position in December 2019. Temple had been promoted to Register in March 2019 following two and a half years serving as Acting Register. Maria Pallante, the 12th Register of Copyrights, had been fired from the position in 2016.  

The U.S. Patent and Trademark Office (USPTO) earlier this week announced the creation of the National Council for Expanding American Innovation (NCEAI), an initiative ostensibly intended to “build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.” Reactions to the Council were mixed, with a number of IPWatchdog sources contacting us to alternately express their confusion, skepticism or support. We put out a call for official reactions to share these varying responses, which raise a number of questions to be monitored as the NCEAI moves forward.

On September 9, a panel of three administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a petition filed by Apple seeking inter partes review (IPR) proceedings to challenge the validity of a patent owned by Unwired Planet. In denying institution to Apple’s IPR petition, the APJ panel relied on a discretionary multi-factor test referred to as NHK-Fintiv, which weighs the efficiencies of handling validity reviews at the PTAB when parallel proceedings on similar issues are ongoing in U.S. district court. On September 14, a number of “Small Business Inventors” also filed a Notice of Motion and Motion to Intervene and related Complaint in the California case. The Small Business Inventors argue that the disposition of the case will “have lasting impacts on their proprietary and legal interests” that are “distinct from the interests of the Original Plaintiffs, and of the Defendant.”

District court filings were substantially lulled this week, with about a third of what’s normal—33—filed to the Patent Trial and Appeal Board’s 32 petitions, propped up by lithium-ion battery company Amprius filing eight inter partes reviews (IPRs) against the Japanese Softbank (via Fortress IP)-owned Traverse CF non-practicing entity (NPE). CBM Sunset: The little-used covered business methods (CBM) program sunsets today. As evidenced by the lack of any substantial rush to file any at the last minute, the proceeding had for years been eclipsed both by Federal Circuit rulings narrowing the scope of the program and by the explosion and success of subject matter challenges in the district courts. While there have been rumors of a last-minute attempt to revive the program, for now it seems destined for the dustbin of history.

The U.S. Patent and Trademark Office (USPTO) announced yesterday a major initiative to “build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.” Dubbed the National Council for Expanding American Innovation (NCEAI), the project includes 29 representatives from industry, academia, and government, and was conceived based on recommendations made in the USPTO’s 2018 SUCCESS Act study and congressional report transmitted to Congress in December 2019.

This week in Washington IP developments, events get underway with a few programs at the U.S. Patent and Trademark Office, including the first day of a virtual road tour on federal funding of early stage innovative businesses and a look at recent changes to Chinese law on trade secrets. On Wednesday, the Senate IP Committee continues its efforts to modernize the Digital Millennium Copyright Act (DMCA), focusing on potential reforms to Section 1201 of that law. Elsewhere, the Information Technology & Innovation Foundation hosts events focused on collaborative approaches among nations to improve semiconductor innovation and the growing role of genomic editing in mitigating greenhouse gas emissions, and the Senate Antitrust Subcommittee explores whether Google’s activities in online advertising should trigger regulatory action.

The Federal Circuit has repeatedly confirmed that secondary consideration evidence is an integral part of an obviousness analysis (indeed, it “may be the most pertinent, probative, and revealing evidence available to the decision maker in reaching a conclusion on the obviousness/nonobviousness issue”) and thus has mandated consideration of such evidence in assessing obviousness (Mintz v. Dietz & Watson, Inc.). The United States Patent and Trademark Office (USPTO) similarly requires consideration of secondary consideration evidence (MPEP 2145 (9th ed. Rev. 10.2019, June. 2020). This requirement makes sense. Among the many benefits to a patent challenger, IPRs have also effectively provided petitioners (i.e., patent challengers) with a shield against disclosure of evidence that might directly undermine their obviousness arguments – evidence that they typically would have been forced to disclose in district court litigation.

District court and Patent Trial and Appeal Board (PTAB) patent filings were at roughly steady-state again this week, with 36 PTAB petitions and 75 new patent infringement district court complaints. Many of those PTAB filings were part of the Apple/Masimo spat, with Apple filing eight challenges. At least five patent owners walked away from their patents, including Lighthouse, a non-practicing entity that had sued most of America’s banks, primarily in the Western District of Texas, over check software before losing an important claim construction proceeding.

On September 4, the United States Court of Appeals for the Federal Circuit (CAFC) modified and reissued its March 18, 2020 opinion in Facebook v. Windy City Innovations, LLC, following Facebook’s combined petition for panel rehearing and rehearing en banc. In the March 18 opinion, the CAFC ruled that the Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder.

Following the widely discussed BOOKING.COM Supreme Court genericness case, the Trademark Trial and Appeal Board (Board) took up a genericness case of its own. Int’l. Dairy et al. v. Interprofessionnel du Gruy?re addresses whether a geographic certification mark for GRUYERE is generic for cheese or eligible for registration as a certification mark. In addition to providing an extensive roadmap for how to prove a genericness claim, the case may also be of interest to food and beverage industry applicants seeking to obtain and enforce certification marks.

District court and Patent Trial and Appeal Board (PTAB) patent filings were steady this past week, with 31 PTAB petitions and 78 new district court complaints. Many of those PTAB filings were part of the Lenovo/Interdigital spat, with the device maker filing challenges. The district court filings were propped up by a significant number of IP Edge suits, as detailed below; and Facebook challenged (so far) four of six patents asserted against them by a streaming media platform company for (effectively) their conferencing software/ability.

U.S. Patent and Trademark Office (USPTO) Director, Andrei Iancu, joined day one of Virtual CON2020 today to chat with IPWatchdog CEO and Founder Gene Quinn about topics including counterfeiting, Chinese IP theft, and the continued confusion in the courts and at the Patent Trial and Appeal Board (PTAB) around patent eligibility. On the topic of Section 101 and patent eligibility, Quinn lamented the recent American Axle decision, wondering if the holding that an invention involving a drive shaft could be considered directed to a law of nature represents a broader and growing disrespect for intellectual property. Iancu could not comment on the case itself, but said that with respect to the basic principle, “you’re absolutely right.