Posts in IP News

In a precedential decision authored by Chief Judge Moore, the U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday partially reversed a Patent Trial and Appeal Board (PTAB) ruling that certain claims of Virtek Vision International’s patent on a method for aligning a laser projector were unpatentable, finding the Board erred as a matter of law in its analysis. The court also affirmed the PTAB’s finding that other claims were not proven unpatentable. Aligned Vision challenged various claims of Virtek’s U.S. Patent No. 10,052,734, which is titled “Laser Projector with Flash Alignment,” arguing claims 1, 2, 5, 7, and 10–13 would have been obvious over prior art references titled Keitler and Briggs (Ground 1), and over Briggs and another reference, Bridges (Ground 3). It also argued claims 3–6 and 8–12 would have been obvious over Keitler, Briggs, and  ‘094 Rueb (Ground 2), and over Briggs, Bridges, and ‘094 Rueb (Ground 4).

A number of individual consumers have filed suit against Apple, Inc. in California and New Jersey courts, piggybacking on the U.S. Department of Justice’s (DOJ’s) March 21 complaint accusing Apple of “broad-based, exclusionary conduct” amounting to monopolization of the smartphone market. The DOJ’s sweeping complaint included a number of U.S. states as plaintiffs and charged Apple with “thwart[ing] innovation” and throttle[ing] competitive alternatives via its practices around the iPhone platform.

I have been critical of certain National Institute of Standards and Technology (NIST) proposals to alter the regulations related to the Bayh-Dole Act, in 2021 (Notice of Proposed Rulemaking, NPR), and specifically, the NIST “Framework” published for comments in December, 2023.  My Comments submitted in February addressed numerous legal infirmities, ranging from construction analysis to demonstrated ambiguity problems of the Request for Information/Comments (RFI) itself. 

The U.S. Court of Appeals for the Second Circuit on Monday, March 25, affirmed a district court’s denial of summary judgment to beer company Modelo, owned by AB InBev, which alleged that sublicensee, Constellation Brands, had violated the terms of a licensing agreement to sell Modelo beer products in the United States. Modelo argued that Constellation violated the sublicense, which defined “Beer” as “beer, ale, porter, stout, malt beverages, and any other versions or combinations of the foregoing, including non-alcoholic versions of any of the foregoing,” by selling hard seltzer products under Modelo’s MODELO and CORONA trademarks.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held in a precedential split decision authored by Judge Stoll that the safe harbor provision of 35 U.S.C.§ 271(e)(1) applied to Meril Life Sciences’ importation of two demonstration samples of its transcatheter heart valves to a medical conference. Judge Lourie dissented, explaining that both the district court and the Federal Circuit have erred in interpreting the statute, specifically by failing to adequately consider the word “solely,” under which interpretation it could be reasonably held that Meril “at least partially” imported the valves for commercial reasons.

It’s rare that a federal policy inspires fierce opposition from both sides of the aisle. But the Biden administration’s recent proposal to gut the Bayh-Dole Act is doing exactly that. Bayh-Dole is a pivotal and successful bipartisan law, but Biden’s proposal would effectively allow federal agencies to tear up patent licensing agreements signed between federally funded universities and private businesses. The economic consequences would be dire. Individuals from across the political spectrum, including former Obama administration officials, have warned the proposal would threaten America’s small businesses and inventors.

After a year-long process involving 38 state organizations and dozens of individual representatives, IP rights has been selected as the topic for the 2024-2025 debate competition by The National Federation of State High School Associations (NFHS). “Should the U.S. strengthen intellectual property rights” was chosen over “Nuclear Weapons Reduction” by a 25-17 vote in the final balloting process. In addition to NHFS and state debate associations, those who helped to determine the outcome included the National Speech and Debate Association, the National Catholic Forensic League, the National Association for Urban Debate Leagues and the Nation Debate Coaches Association.

This week in Other Barks and Bites: the European Patent Office announces record patent application numbers for 2023; a French competition watchdog fines Google €250 million for several IP breaches related to AI; President Biden announces a deal granting $8.5 billion to Intel to expand its domestic production of advanced chips; and more.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, March 21, affirmed a district court’s grant of summary judgment that claims of a patent for an electronic gaming system were ineligible under Section 101. U.S. Patent No. 7,736,223 is owned by Savvy Dog Systems and POM of Pennsylvania (Savvy Dog) and is directed to a “more skill-based and less chance-based” version of a popular electronic game called “Tic Tac Fruit.” Savvy Dog sued Pennsylvania Coin and PA Coin Holdings (Pennsylvania Coin) for infringement in the Middle District of Pennsylvania. Pennsylvania Coin moved to dismiss the case, in part because it said the claims constituted patent ineligible subject matter.

On March 20, American semiconductor developer Intel Corporation and the U.S. Department of Commerce jointly announced that the chip giant had entered into a preliminary memorandum of terms (PMT) that could make Intel eligible for nearly $45 billion in federal investments into chip production facilities and workforce development. At least $19.5 billion of this funding comes from money appropriated under the CHIPS and Science Act, making Intel an early beneficiary of the landmark legislative package enacted in 2022 to establish U.S. dominance in chip production.

The Trademark Trial and Appeal Board (TTAB) on Wednesday, March 20, denied APPLE JAZZ mark owner Charles Bertini’s petition to cancel Apple, Inc.’s mark APPLE for entertainment services. While the Board found that Bertini had “proven and maintained his entitlement to a statutory cause of action,” it ultimately held that he had failed to make a prima facie showing of Apple’s abandonment of the APPLE mark for those services.

It was a below-average week in both the Patent Trial and Appeal Board (PTAB) and in district courts this week for new patent filings, with only 27—all inter partes review (IPR)—at the PTAB and 47 new filings in district court…. The PTAB issued institution  decisions in 16 proceedings this week, denying institution in two IPRs (both on the merits) and ordering institution in 12 IPRs and two post-grant reviews (PGR). Instituted proceedings include two IPRs filed by Palo Alto Networks and Keysight Technologies challenging one Centripetal Networks patent; two IPRs filed by Samsung Electronics Co., challenging two Headwater Research Patents; and two IPRs filed by Motorola Solutions Inc., challenging two Sta Group LLC patents.

The U.S. Chamber of Commerce today announced it is partnering with entrepreneurs and other business advocates to counter threats to innovation due to “excessive government overreach,” including the Biden Administration’s proposed framework to expand the use of so-called patent march-in rights.

The U.S. Patent and Trademark Office (USPTO) on Tuesday, March 19, issued a memo for all patent examiners reiterating its current practices and resources for examining means-plus-function and step-plus-function claim limitations. The memo is primarily focused on reminding examiners that they must create a clear record explaining their interpretation of such claims and points to various resources and training tools that are available to assist them.

Similar to Steve Martin and John Candy’s calamitous odyssey in the classic 1980s film Planes, Trains and Automobiles, patent practitioners are experiencing their own misadventures when filing applications in the DOCX format. As of January 17, 2024, the U.S. Patent and Trademark Office (USPTO) mandated submitting all specification, claims and abstracts of non-provisional applications filed under 35 U.S.C. 111(a) in DOCX format or incurring a $400 surcharge (non-discounted). The DOCX mandate came after thousands, and likely tens of thousands, of practitioners, directly or indirectly, communicated their significant procedural, technical, legal, ethical, professional liability, and financial concerns to the USPTO.