Posts in Guest Contributors

The PTO then drifted towards being a very user unfriendly operation that has become a center of suspicion and cynicism. I do not think Director Lee necessarily played a direct role in this, i.e., guided this trajectory with policy objectives, but rather was present when it occurred. I do think, however, that politics and branding may have played a role. Kappos had been perceived as too “pro patent”; after all, he hailed from the PTO’s largest customer, IBM. Then Lee became the “anti-patent antidote”; hailing from a patent system foe, Google.

On December 9, 2016, the en banc Federal Circuit will hear argument in In re Aqua Products, Inc. on an issue that has long been troubling patent owners involved in inter partes reviews (“IPR”)—the difficulty of amending patent claims before the Patent Trial and Appeal Board (“PTAB”)… The Federal Circuit granted a petition for rehearing en banc to consider whether the burden of persuasion allocated to the patentee by the PTAB for motions to amend is permissible under the statutory scheme.[5] Notably, the Federal Circuit’s rehearing order specifically identifies 35 U.S.C. § 316(e), which provides that in an IPR “the petitioner,” not the patent owner, “shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” The Federal Circuit also will consider whether the PTAB can raise sua sponte challenges to patentability, much the way an examiner would, if the IPR petitioner fails to do so.

As a threshold matter, the Court considered whether it had jurisdiction over the writ of mandamus. The Court noted the America Invents Act broadened its jurisdiction to cases including compulsory counterclaims “arising under” patent. Here, the Court found that the patent infringement counterclaims were compulsory because Rearden’s infringement counterclaim shared a critical factual dispute with its claims regarding ownership and rightful use of the technology claimed in the MOVA patents. Therefore, the Court found it did have jurisdiction over the writ of mandamus.

In an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U.S. Patent No. 6,030,384 as anticipated or obvious over Japanese Publication No. H1033551A. The Federal Circuit vacated and remanded. The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.

In 2013, Google, Inc. (“Google”) filed inter partes review and covered business method petitions challenging the validity of Unwired Planet, LLC’s (“Unwired”) patent, at issue on appeal. The patent describes a prioritization of search results based upon the location of a mobile device and including prioritization of “preferred providers” within those search results, in turn providing a “farther-over-nearer” ordering of the results. The Board invalidated all of the challenged claims as obvious. The Federal Circuit concluded, “[b]ecause the use of alphabetical order as prioritization information would sometimes meet the farther-over-nearer claim elements, the Board was correct to conclude that the proposed combination” rendered claim 1 obvious.

Claimed methods incidental or complimentary to financial services are not necessarily reviewable as CBM patents. The claims as they were written must be directed to methods and apparatuses that have particular uses in connection with a financial product or service. For a patent to be a CBM patent, “[i]t is not enough that a sale has occurred or may occur, or even that the specification speculates such a potential sale might occur.”

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.

The IoT presents a challenge to IP practitioners to adapt existing IP protection strategies by developing new approaches better suited to the rapidly changing, connected-yet-disconnected network of innovations forming the IoT. By opening communications and application programming interfaces (APIs) to more and more collaborator-yet-competitor devices, innovators (i.e., clients) must carefully guard their IP while at the same time facilitating interoperability and security among connected devices. Below, we present the adaptation of some existing strategies as well as thoughts on new strategies for IP protection in the interoperable world of the IoT.

I think the reality is that software patents in some form are here to stay for the foreseeable future; it is also true that things that used to be considered patent-eligible no longer are. Assuming that’s right, we need a way to identify which claims are patent-eligible… Yes, software can be patentable, but it has to provide a technical solution to a technical problem.

Internet attorneys spend our days fighting the good fight – at least that’s what I think I do. In a time where judges confuse metadata and metatags, and people believe everything online is “in the public domain,” we march on. We worry about keeping the first amendment in tact and relentlessly champion Section 230, even when our protagonists are less than ideal (i.e., Backpage.com, thedirty.com). For better or for worse, we do our best, to make the Internet a place where people can have their opinions, and the companies we represent don’t get sued for them. So, what happens when the CEO of Reddit, one of the largest community forum websites out there, decides to have a little fun at the expense of Trump supporters/moderators on the subreddit, r/The_Donald? Let’s put it this way, nothing good.

”It appears to me that en banc consideration [of Achates] is warranted,” Judge Taranto wrote. ”It is notable, to begin with, that the [Supreme] Court pointedly avoided embracing the simplest and most review-barring reading of § 314(d) – namely, that it prohibits judicial review of any determination to institute an IPR.”

What started as a curiosity in Colorado and Washington state in 2012 could have gained the momentum of a juggernaut: marijuana legalization. Now with California and other states passing initiatives to fully legalize recreational marijuana use in November 2016, a new multi-billion-dollar industry could be in the offing. Inventors are already at work on new methods of delivering THC in stronger and safer doses… But with cannabis still on the federal DEA Schedule I of controlled substances what can these idea people do to protect their intellectual property?… Ironically, the USTPO has granted a patent on certain cannabis strains to a California biotech institute even as it has disallowed marijuana-related trademarks.

EFF’s Reclaim Invention Act, Draft Model Statute may seem an odd approach to folks in DC but when lined up with a state-level lobby of IP-uninformed and angry local businesses lobby, state legislators will be impressed. So notwithstanding EFF’s effectiveness on the Hill weakened by its issue multitasking, it will have stronger standing in state legislatures. Its research university troll-targeted sanctions proposal therefor must not be taken lightly. Beyond the law’s ironic fiscal resemblance to patent troll “do what I say or pay” troll conduct, the Model Law’s enactment will add even more uncertainty to private sector investment in early stage innovation. Worse, because of its open-man-hole patent nullification mechanism stationed at costly commercialization’s successful endpoint, pure licensing firms like Qualcomm, and research universities will be exposed to expanded freeloader accessibility as another nail of uncertainty is pounded into the coffin of patent exclusivity.

Now that Trump has won, the discussion has narrowed to whether Trump will keep patents weak or make patents great again. From the outside perspective, it is a curious exercise to say the least… Why are we even asking these questions? Property is property, right? Can you remember an election where people were asking if their deed would keep squatters out of their living room depending on who won the presidency? I don’t. It seems a preposterous question. After all, the deed on your house is a property right and everybody knows the government will back it up and eject the squatters. So why then do we, or should we, have to ask whether a Trump Administration will be in favor of strong patent rights? It all seems bizarre to say the least.

The promise of the Internet of Things is the ability to perform analytics on data collected from the smart objects connected to the IoT in order to lead to new knowledge and provide insights to owners, users and servicers of the objects. Thus, simply put, the “digital transformation” being experienced by several industries involves companies shifting away from selling only hardware (e.g., household appliances, jet engines, locomotives, turbines, compressors, motors, etc.), to selling solutions — a suite of hardware equipped with sensors and wireless communications generating valuable data, coupled with analytics software solutions that enable users to monitor, control, diagnose and generally operate such hardware more e ciently (e.g., via remote diagnostics and scheduling preventative maintenance).