Posts in Patents

With Vaishali Udupa Set to Take the Helm as Commissioner for Patents, USPTO Leadership Now Lacks Prosecution Prowess

January 17 marks the first day in the tenure of the U.S. Patent and Trademark Office’s (USPTO’s) new Commissioner for Patents, Vaishali Udupa. Udupa, whose appointment was announced in December, comes to the USPTO after serving the last seven years as the head of litigation for Hewlett Packard Enterprise, where she was responsible for heading HPE’s intellectual property litigation and formulating case strategies. She replaces Acting Commissioner for Patents Andrew Faile, who served in that role since January 2021 and who will be retiring from the agency after 33 years upon Udupa’s installation as commissioner. Well-known within the patent community as an advocate for diversity and representation issues, Udupa joins the USPTO as a relative outsider. She comes in as the first full Commissioner for Patents since the retirement of Drew Hirshfeld, who served with the agency for two decades before he was first appointed to Commissioner in 2015. Those familiar with recent Patent Office history will recall that Commissioners immediately preceding Hirshfeld included Bob Stoll, Peggy Focarino, John Doll and Nick Godici. Stoll, Focarino, Doll and Godici each served in various capacities at the Office, including in high-level policy and regulatory positions, for more than a generation prior to becoming Commissioner.

Albright Gets OK from CAFC on Denial of Transfer for Amazon

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier this week shot down a petition for writ of mandamus filed by Amazon.com, Inc. asking the court to vacate an Order by Judge Alan Albright of the U.S. District Court for the Western District of Texas denying Amazon transfer of a case to the Northern District of California. VoIP-Pal sued Amazon in the Western District of Texas, alleging infringement of its patents through the sale of Amazon’s “’communications platform,’ including the server structure, Alexa calling devices, and Alexa software applications running on those devices.” Amazon sought transfer to California, claiming that the middleware of the accused products was developed by employees based there. In its opposition, VoIP-Pal submitted evidence that “[t]echnical documentation relating to the work of the DeviceOS and Echo Platform Software teams is maintained at the Austin offices.”

Industry Risk and Investment Drives Academic Tech Transfer

AUTM, which represents the academic technology management profession, just released the results of the survey of its members for 2021. Once again, the results are impressive, particularly considering that the U.S. economy was just beginning to emerge from the devastating effects of the COVID-19 pandemic…. It’s clear that despite continual attacks on the Bayh-Dole system, which allows academic institutions to own and manage federally funded inventions without Washington micro-management, our system keeps truckin’ right along, year after year, leading the world.

Federal Circuit Says Texas Court Erred in Finding Viscometer Patent Claim Indefinite

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the U.S. District Court for the Southern District of Texas incorrectly found the term “enlarged chamber” indefinite, but affirmed the court’s construction of another claim term. The case stems from Grace Instrument Industries, LLC’s May 19, 2020, suit against Chandler Instruments Company, LLC for infringement of its U.S. Patent No. 7,412,877 through the sale of Chandler’s Model 7600 viscometer. The ‘877 patent is titled “High Pressure Viscometer with Chamber Preventing Sample Contamination.”

Patent Eligibility and the Life Sciences Industry – The Impact of Law on Innovation in the Industry

One of the panels at last year’s IPWatchdog’s Life Sciences MastersTM Series addressed the thorny problem of patent eligibility.  I moderated the panel, titled Patent Eligibility and the Life Sciences Industry–What Next?, where the speakers, with input from passionate audience members, discussed the impact of section 101 jurisprudence on innovation in the life sciences industry. Do the limits on what is patent-eligible subject matter created by the courts strike the proper balance or do unpredictable court decisions harm investment and research in the life sciences? While the majority view appeared to be that patent-eligibility reform is necessary, both to provide clarity and to incentivize certain type of inventions, the panel also expressed the idea that some form of section 101 jurisprudence is necessary to prevent “discoveries” from being monopolized, which could also harm innovation.

Apple Loses ITC Battle to Masimo Over Pulse Oximeter Technology

The U.S. International Trade Commission on Tuesday issued a Notice of Final Initial Determination (FID) finding that Apple violated Section 337 of the Tariff Act of 1930 by importing and selling in the United States Apple Watches with light-based pulse oximetry technology that infringed claims 24 and 30 of Masimo’s U.S. Patent No. 10,945,648. According to a Masimo press release, Apple first started selling the Apple Watch with a pulse oximeter sensor in 2020 and has continued to use it in subsequent versions of the product since then. The ITC Notice said it found no violation of the asserted claims of four other patents named in Masimo’s complaint.

Salesforce’s Abusive Post Grant Tactics Demonstrate USPTO Dysfunction

The issue of who is the real party in interest in an inter partes review (IPR) filed at the Patent Trial and Appeal Board (PTAB) is a particularly thorny matter. When IPRs were introduced, patent owners were assured that there would be a meaningful estoppel provision, which would prevent those who lost IPRs from challenging the same patents in later proceedings. There was also a statute of limitations, another thorny matter, that would prevent challengers from filing an IPR more than one year after they were sued. The long and short of it is this—real party in interest law and statute of limitations law, which apply in every other legal setting, are interpreted vastly differently at the PTAB. For example, with the statute of limitations, if you are barred from bringing a challenge and someone else brings a challenge, then suddenly you are able to join the challenge, despite being barred. But wait—there is more. If that first party that was not barred settles and leaves the case and the barred party is the only challenger remaining, well the case must go on. A legal absurdity.

IBM Cites Deliberate Strategy Shift as it Drops to Second Place in IFI Claims Patent Grant List for First Time in 29 Years

This week, patent data analytics firm IFI CLAIMS published its annual report of the top 50 U.S. patent recipients and the global 250 largest patent portfolios for 2022. The list provides a comprehensive snapshot of the patent landscape with insights into growing trends in the industry. One of the most eye-catching details is Samsung taking the first spot for U.S. patent grants in 2022, ending IBM’s 29-year reign at the top. The difference between the two is also surprisingly wide, with a gap of nearly 2,000 patent grants. According to an IFI press release, the number of U.S. patent grants was at its lowest since 2018 despite the number of patent applications reaching a record high. Since the beginning of the COVID-19 pandemic, the number of patent grants has decreased three years in a row.

Federal Circuit Says Gilstrap’s Grant of CA Transfer to Chinese Company was Improper

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential order yesterday granted a petition for writ of mandamus vacating Judge Rodney Gilstrap’s transfer of two cases out of the Eastern District of Texas to California. The petition was brought by Stingray IP Solutions, LLP and was opposed by TP-Link Technologies, a Chinese company, which Stingray accused of patent infringement. Stingray first filed the patent infringement suits in the Eastern District of Texas and TP-Link moved to dismiss for lack of personal jurisdiction or to transfer the cases to the Central District of California pursuant to 28 U.S.C. § 1406. After the Texas court granted transfer under Section 1406, Stingray petitioned the Federal Circuit for mandamus “solely on the issue of whether TP-Link’s unilateral, post-suit consent to personal jurisdiction in another state (California) defeated application of Rule 4(k)(2).”

Why Voluntary Licensing is Best for Increasing Access to Medicines

When it comes to how to best increase access to medicines in l0w and middle-income countries (LMICs), compulsory licensing gets most of the attention. Academic articles, non-governmental organization (NGO) campaigns, conferences and United Nations (UN)-endorsed technical symposia assert it is the best approach. Certain World Trade Organization (WTO) members are pushing for COVID-19 treatments and diagnostics to be included in the waiver of intellectual property rights under the Agreement on Trade-Related Aspects of IP Rights (TRIPs waiver), which revolves around compulsory licensing. Brazil has recently amended its IP laws to make compulsory licensing easier. Despite its high political profile, compulsory licensing has rarely been used (mainly by a handful African countries in the mid 2000s to address the HIV pandemic). Even then, IP-respecting treatments available from global procurement bodies have proven cheaper. No country has yet seen the need for a compulsory license for a COVID vaccine.

CAFC Says USPTO Arguments for Rejecting Google Patent Application Lack Support in Record

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today vacated a Patent Trial and Appeal Board (PTAB) finding that certain claims of Google, LLC’s U.S. Patent Application No. 14/628,093 were obvious. The CAFC opinion, authored by Chief Judge Moore, said the U.S. Patent and Trademark Office’s (USPTO’s) arguments on appeal “cannot sustain the Board’s decision below because they do not reflect the reasoning or findings the Board actually invoked.” Google’s patent application has to do with methods for filtering the results of an internet search query such that only age-appropriate results for a user are displayed. At issue were two prior art references: Parthasarathy, which “discloses methods of filtering search results by comparing a “search-query-intent score” to a predetermined safety threshold” and Rose, which is titled “System and Method for Improving the Ranking of Information Retrieval Results for Short Queries.”

USPTO Calls for Input on Draft 2022-2026 Strategic Plan

Last week, the United States Patent and Trademark Office (USPTO) announced that it is seeking comments from the public on the draft of the organization’s 2022-2026 Strategic Plan. According to a press release, the plan sets five goals for the organization: Spur U.S. innovation and global competitiveness; promote IP rights; promote IP protection against new and persistent threats; bring innovation to positive impact; and maximize agency operations.

PTAB Judge Who Owns Cisco Stock Withdraws from IPR Following Centripetal Claims of Bias

Following a Motion for Recusal and Vacatur filed on December 30 by Centripetal Networks, Inc., a Patent Trial and Appeal Board (PTAB) judge has now withdrawn from an inter partes review (IPR) proceeding in a stated effort to “reduce the number of issues and simplify the briefing.” Centripetal filed the December 30 Motion in an IPR brought against it in November 2021 by Palo Alto Networks, which Cisco Systems, Inc. successfully petitioned to join. The Motion argued that Administrative Patent Judge (APJ) Brian McNamara created at least the appearance of actual bias in failing to provide “notice, divestiture, or any apparent attempt to recuse” himself from proceedings involving Cisco despite owning Cisco stock and being “paid a significant amount of money (apparently a share of the profits) from one of Cisco’s lobbyist law firms,” according to the Motion.

Amici Filings in Amgen Encourage the Supreme Court to Correct the Federal Circuit’s ‘Unworkable’ Enablement Standard

On January 3, a total of 14 amicus briefs and one motion for leave to participate in oral argument were filed with the U.S. Supreme Court on the question presented by Amgen Inc. v. Sanofi, on which the Supreme Court granted certiorari this past November. While organizations representing the most powerful interests in the technology industry supported the Federal Circuit’s holding that Amgen’s patent claims were invalid for lack of enablement, a wide swath of patent stakeholders are urging the Supreme Court to correct the enablement standard to continue the encouragement of genus patent claims. Below is a collection of arguments raised by several of the recent amicus filings from earlier this week.

Federal Circuit Rejects More Mandamus Petitions Seeking to Sidestep Delaware Court’s Standing Orders

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued two orders denying mandamus relief for petitioners seeking to end the U.S. District Court for the District of Delaware’s “judicial inquisition” concerning disclosure of their owners and third-party litigation funders. Chief Judge Colm Connolly’s standing orders on initial disclosures in patent litigation cases have been the subject of much controversy and are presently being appealed at the CAFC in a separate case. They require up front disclosures from companies in patent cases assigned to Connolly of 1) “the name of every owner, member, and partner of the party, proceeding up the chain of ownership until the name of every individual and corporation with a direct or indirect interest in the party has been identified”; and 2) the identity of any third-party litigation funders.