Posts in Patents

Yesterday, the Supreme Court heard oral arguments in the most closely-watched patent case of the term, United States / Smith & Nephew v. Arthrex. IPWatchdog reached out to some of the amici in the case, as well as patent practitioners and other stakeholders, to get their take on how the hearing went and what the future holds for the Administrative Patent Judges (APJs) of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Most agreed that it’s unlikely the Court will dismantle the PTAB altogether, but that they were clearly uncomfortable with the present structure. Below, our experts weigh in on some potential outcomes.

The Justices of the U.S. Supreme Court today heard arguments in United States/ Smith & Nephew v. Arthrex, in which the Court will decide whether the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) are “principal” or “inferior” officers of the United States, and—if they are principal officers—whether the Federal Circuit’s 2019 fix was sufficient to cure any Appointments Clause defect. The Court generally seemed extremely skeptical of the “unusual” powers APJs seem to have compared with other administrative agencies and pushed both sides to offer reasonable solutions.

On Monday,, March 2, an Amici Curiae Brief in Support of the Petition by American Axle was filed by Senator Thom Tillis, Honorable Paul Michel and Honorable David Kappos. The three amici conclude that they are “all convinced that section 101 is gravely damaging our country’s ability to succeed in the race for global innovation leadership, and all convinced that the solution to the dilemma lies with the Court taking up the American Axle case.”

Minerva Surgical, Inc. petitioned the Supreme Court of the United States (SCOTUS) in September 2020 to consider the question “whether a defendant in a patent infringement action who assigned the patent, or is [next in line] with an assignor of the patent, may have a defense of invalidity heard on the merits.” The petition was granted in January and additional amici have recently weighed in, including the New York Intellectual Property Law Association (NYIPLA).

A close examination of SEP databases reveals that a large number of patents that have been declared SEPs are not essential…. Patent owners are obliged to declare the patent as essential even if they are doubtful about its essentiality. Unfortunately, a few patent owners may intentionally proclaim many of their patents to be essential to gain benefits or a business advantage. In practice, there are multiple reasons potentially essential patents and patent applications might be rendered non-essential. For example, a patent could be granted with amendments that cause it to be no longer essential. Whenever implementers bargain for the licensing fees, they must examine whether certain patents are actually essential, which can stall negotiations and lead to litigation.

Sarah Boone is believed to be the fifth African-American woman to be awarded a U.S. patent Her invention, U.S. Patent No. 473,653, issued in 1892 and was directed to an improved ironing board. The object of her invention was “to produce a cheap, simple, convenient, and highly effective device, particularly adapted to be used in ironing the sleeves and bodies of ladies’ garments.”

As is customary, President Joseph R. Biden has spent much of his first month in office building out his administration’s Cabinet. His nominations for Secretary of State, Treasury and Defense have already been confirmed by the U.S. Senate. Now, short lists are being assembled for who may fill his non-Cabinet-level positions. Much time and focus has been duly spent on Cabinet-level positions, but there are other government agencies that have a major impact on the U.S. economy. There have been a lot of rumors surrounding Biden’s pick to head the United States Patent and Trademark Office (USPTO), and for good reason. Today, as America continues to recover from COVID-19 and its consequences, this position may be more important than ever before.

A common refrain is that an invention is only as valuable as the patent that protects it. But what happens when you cannot secure the patent? This is a frequent hurdle for inventors seeking to patent products utilizing artificial intelligence (AI). While still in its infancy, at least compared to the lofty expectations of technology enthusiasts, AI has proven integral to driving innovation, but it has also proven equally vexing to fit into the intellectual property legal regime.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday held that the Patent Trial and Appeal Board (PTAB) incorrectly found certain claims of SynQor, Inc.’s U.S. Patent No. 7,072,190 unpatentable as obvious in an inter partes reexamination proceeding. The CAFC said that the PTAB’s previous reexamination decisions on related patents gave rise to common law issue preclusion that collaterally estopped the Board from such a finding. Judge Hughes authored the majority opinion and Judge Dyk dissented, calling the ruling “without support and contrary to governing Supreme Court authority.”

As reported by the Patent Trial and Appeal Board here and by others, the motion to amend pilot program (see 84 Fed. Reg. 9497), which took effect in March 2019, has increased patent owners’ success in obtaining claim amendments during post-grant proceedings, including inter partes reviews (IPRs). Specifically, the success rate for motions to amend has more than doubled under the pilot program to nearly 30% as compared to roughly 14% before the program. In fact, when patent owners use one of the options the Board added to motion to amend practice by way of the pilot program—seeking preliminary guidance and/or filing a revised motion to amend—the grant rate jumps to 36%. The graph below, taken from slide 24 of a Board presentation, reflects these data. 

On February 18, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in an appeal by Canfield Scientific, Inc. (Canfield) from the decision of the U.S. Patent Trial and Appeal Board (PTAB or Board) on inter partes review (IPR) of U.S. Patent No. 7,359,748 (the ‘748 patent) owned by Melanoscan, LLC. The court held that the Board erred in ruling that all the claims of the ‘748 patent were patentable. The decision was reversed with respect to the independent claims and vacated and remanded as to the dependent claims.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday upheld an Arkansas district court’s decision to grant Morris & Associate Inc.’s motion for summary judgment against John Bean Technologies Corporation’s infringement claims, based on the doctrine of equitable intervening rights. The opinion marked the first time the court has addressed the “boundaries of the phrase ‘protection of investments’ in [35 U.S.C.] § 252”, which outlines the effect of reissued patents.  

In August 1888, Ellen Elgin, a black woman housekeeper, invented a clothes wringer which allowed clothing to be washed and dried faster by feeding clothes through two rollers to wring out the clothing, thereby making them easier to hang and dry. Elgin sold her patent to a white person because she felt it would have a better chance at success than if people knew the inventor was a woman of color. Thus, U.S. Patent No. 459,343 lists Cyrenus Wheeler, Jr. as the inventor.

The U.S. Supreme Court has agreed to hear, on March 1, 2021, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “inferior” officers properly appointed under the Appointments Clause of the U.S. Constitution (U.S. Const., art. II, § 2, cl. 2), and, if not, whether the “fix” by the Federal Circuit in Arthrex v. Smith & Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked. On February 25, 2021, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled “Getting Ready for Arthrex Oral Arguments,” which will summarize the issues presented and include presentations by representative amici on their respective positions.

On February 10, the United States Patent and Trademark Office (USPTO) hosted its annual Black History Month program, “Contemporary Black Women Inventors.” The event spotlights Black inventors and business personalities across the United States to showcase their legacy contributions to America’s ingenuity and the innovation economy. These events include discussions with remarkable innovators, explorations of entrepreneurship, and seminars focused on how to obtain and use intellectual property, as well as helpful USPTO resources.