Posts in USPTO

On June 30, New Vision Gaming & Development filed a corrected appellant brief with the U.S. Court of Appeals for the Federal Circuit challenging two covered business method (CBM) reviews conducted at the Patent Trial and Appeal Board (PTAB) which canceled all claims of New Vision’s patents covering a gaming invention. Among other things, New Vision argues that the PTAB is constitutionally flawed, that its structure creates financial incentives for administrative patent judges (APJs) to grant validity reviews in a way that destroys due process for patent owners, and that the PTAB’s APJs have neither the judicial independence nor the oversight of Article III courts necessary to address the impermissible appearance of bias at that tribunal.

It was a banner week in the district courts, with 110 new filings, and the filings are showing signs of picking up—rather than slowing down—amidst the COVID pandemic.  Most of that, however, was driven by vape company Juul Labs, Inc.’s filing of some 39 new district court complaints.  An average 28 PTAB cases filed, all inter partes reviews this week, included the usual suspects—parties filing against the sprawling Neodron, Soundview, and Solas OLED campaigns, as well as medical device, battery, and streaming service competitor fights.

On July 8, the United States Court of Appeals for the Federal Circuit (CAFC), in Fitbit, Inc. v. Valencell, Inc., vacated a Final Written Decision of the United States Patent Trial and Appeal Board (PTAB) in an appeal from an inter partes review (IPR) of U.S. Patent No. 8,923,941 (the ’941 patent). In particular, the CAFC held that the PTAB erred in failing to consider the patentability of claims 3-5 of the ‘941 patent when determining that the claims were not unpatentable. Thus, the CAFC vacated the PTAB’s decision and remanded for consideration on the merits of patentability.

This morning, the United States Patent and Trademark Office (USPTO) announced that Secretary of Commerce Wilbur Ross reappointed Commissioner for Patents Drew Hirshfeld for a second five-year term. Commissioner Hirshfeld’s original term was set to expire this month. Hirshfeld began his career with the USPTO in 1994 as a Patent Examiner, became a Supervisory Patent Examiner in 2001, and was promoted in 2008 to Group Director in Technology Center 2100 (Computer Architecture Software and Information Security).

The USPTO’s recent landmark decision (16/524,350) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an AI identifies new, more efficient battery chemicals, will that new battery be unpatentable? If an AI builds chemical compounds that become the next wonder drug, will that drug-maker…

On July 7, the U. S. Court of Appeals for the Federal Circuit (CAFC), in In re: Boloro Global Limited, granted a motion by Boloro Global Limited (Boloro) to vacate and remand the decisions of the Patent Trial and Appeal Board (the Board) in three ex parte appeals that affirmed an examiner’s rejection of claims of Boloro’s patent applications. Each of Boloro’s U.S. Patent Applications Nos. 14/222,613, 14/222,615, and 14/222,616 were rejected by the patent examiner as being unpatentable under 35 U.S.C. § 101. On appeal, the Board affirmed the examiner’s rejections and denied rehearing. In August 2019, Boloro appealed the decisions to the CAFC. Subsequently, in October 2019, the CAFC issued a decision in Arthrex, Inc. v. Smith & Nephew, Inc., which was an appeal from an inter partes review, holding that administrative patent judges (APJs) were not constitutionally appointed.  In January 2020, Boloro filed a motion to vacate the Board’s decisions and remand for further proceedings consistent with the CAFC’s decision in Arthrex.

Many people are looking for ways to support the Black community and to encourage police reform following the death of George Floyd and others by police. One of the most common ways to provide support has been to organize fundraisers and donate money to nonprofits and grassroots organizations coordinating these efforts. Unfortunately, organizations sometimes adopt similar names or slogans, and donations can be misdirected. In one recent example, donors who thought they were donating to the Black Lives Matter movement—operated under the name Black Lives Matter Global Network (BLMGN)—mistakenly designated funds to an unrelated nonprofit called the Black Lives Matter Foundation. The Black Lives Matter Foundation has a very similar name to the Black Lives Matter movement, but a different mission. Donors were dismayed to discover that they had inadvertently committed funds to the wrong organization.

On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.

Apologies for taking last week’s Father’s Day week off—here’s hoping you all had a restful week with your families and friends and are now gearing up for the Fourth. It was a relatively quiet week in the District Courts, with just 52 new patent complaints filed and 28 petitions, two post grant reviews (PGRs) and 26 inter partes reviews (IPRs). This week included Amazon filing four petitions against Freshub scanner patents; Verizon filed a number of petitions against Huawei, presumably in response to their widely publicized billion-dollar licensing demands; Dolby filed against Intertrust patents; there was plenty of continued IP Edge activity; but otherwise, a relatively quiet week; that said, the following week’s numbers (which stop at Monday’s reporting) contain a slew of new cases by Bausch and Lomb, as well as a phalanx of 15 WSOU complaints on fifteen independent patents not previously litigated, all in individual complaints, all in the Western District of Texas, and all against Google. 

On June 26, the U.S. Court of Appeals for the Federal Circuit affirmed a final written decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board in B/E Aerospace v. C&D Zodiac, Inc.  In particular, the CAFC affirmed the PTAB’s conclusion that the asserted patent claims would have been obvious because a modification of the prior art was nothing more than a predictable application of a known technology and because a modification would have been common sense.

The U.S. Supreme Court has sided with Booking.com, ruling that a generic term paired with .com “is a generic name for a class of goods or services only if the term has that meaning to consumers.” The opinion was delivered by Justice Ginsburg and joined by eight members of the Court, with Justice Breyer dissenting and Justice Sotomayor filing a separate concurring opinion. In the Booking.com case, the U.S. Patent and Trademark Office (USPTO) was urging the High Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. But the Supreme Court ultimately found that the genericness analysis should turn on consumer perception, rather than a “per se rule” against trademark protection for a generic.com term.

I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification system plays an important role in determining which Art Unit is assigned an application? And you probably thought you could forget about class 705! Not so fast! A sparsely populated technical disclosure in the specification with an inartful claim set is still a recipe for characterization in class 705, which still must be avoided at all costs if possible.

On June 16, the USPTO published a final rule in the Federal Register revising the rules of practice regarding patent term adjustments in light of the U.S. Court of Appeals for the Federal Circuit’s (CAFC) 2019 decision in Supernus Pharmaceuticals v. Iancu, which held that reductions to patent term adjustments must be equal to the time in which the applicant failed to make reasonable efforts to conclude processing or examination of an application.

It is commonly asserted that patents are a “bad deal” for developing countries. According to this view, patents boost the returns of firms in developed countries that hold necessary technology assets at the expense of firms in developing countries that require access to those assets. It naturally follows that patents are likely to impede local innovation and economic development. In recently published empirical research, I present findings that cast doubt on this conventional view. In the case of several countries that have made significant moves up the economic ladder, patenting strategies appear to have enabled innovators in these emerging-market economies to monetize R&D investments by supplying critical inputs to global technology markets. Without a secure patent portfolio, those entry opportunities may have been foreclosed.

Last week, Facebook and the USPTO both filed briefs in response to a U.S. Court of Appeals for the Federal Circuit (CAFC) Order requesting that the parties and the U.S. Patent and Trademark Office (USPTO) file supplemental briefs explaining their views regarding the effect of the Supreme Court’s April 20, 2020 decision in Thryv, Inc. v. Click-To-Call Techs, LP on the CAFC’s March 18, 2020 decision in Facebook v. Windy City Innovations.  In Facebook, the CAFC ruled that the USPTO’s 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.