Last weekend, The Federalist Society hosted a panel as part of its 2023 National Lawyers Convention featuring in-house counsel from Google and Qualcomm, as well as two federal judges and an academic, to discuss whether U.S. law around IP injunctions is promoting or harming markets for innovators and creators. Predictably, Google’s and Qualcomm’s counsel had starkly different perspectives on that topic.
This week in Other Barks & Bites: A federal jury awards $83.4 million in damages to the University of Washington for Guardant Health’s infringement of their duplex sequencing technology; Google files a lawsuit against a group that fraudulently filed DMCA claims against its competitors; the U.S. Supreme Court publishes its first-ever code of conduct after months of public pressure; and the Copyright Office pushes back its deadline for comments on its artificial intelligence (AI) Notice of Inquiry.
On November 16, innovation intelligence firm Patsnap published the results of its 2023 Global Innovation Report, which measures a range of patent metrics to determine the most innovative companies in the world. This year’s Global Innovation 100 listing represents about a quarter of the globe’s entire patent filing activity. The report also includes a Global Disruption 50 listing of actively growing and young companies, reflecting the strength of both the United States and China in emerging technology fields.
The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today affirming the Patent Trial and Appeal Board’s (PTAB’s) finding that Medtronic failed to prove the challenged claims of Teleflex’s catheter patent unpatentable. In several previous precedential decisions issued this year, the CAFC similarly upheld the PTAB’s determinations. In May, the court said that Medtronic failed to show the challenged claims of five catheter patents unpatentable because the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented. And in June, the court found in two separate rulings issued the same day that Teleflex’s objective evidence supported a presumption of nexus, that Medtronic copied Teleflex’s product and that Teleflex’s substitute claims did not lack adequate written description.
Attorneys are, by nature, skeptical and risk averse. I was repeatedly reminded of this over the last few months listening to discussions about using AI for patent practice and Senators Thom Tillis (R-NC) and Chris Coons’ (D-DE) latest effort to fix the patent eligibility mess (via the Patent Eligibility Restoration Act (PERA) of 2023). Amid the initial excitement over ChatGPT’s launch, IP attorneys rightfully turned their attention to the risks and pitfalls of using AI. However, I was surprised about the extent to which that became the focus of conversations regarding using AI for patent practice. Although I think – like in most other professional fields –patent attorneys have accepted the notion that AI will play a major role in their practice at some point in the distant future, the general consensus seems to be that the risks are too great, and the payoff is too small for that to happen anytime soon.
The U.S. Patent and Trademark Office (USPTO) today announced that a final rule will be published tomorrow, November 16, in the Federal Register implementing a design patent practitioner bar. The Office first published a Notice of Proposed Rulemaking (NPRM) to the Federal Register in May 2023 contemplating a separate design patent practitioner bar. A request for comments (RFC) was also published in October 22.
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today designated as precedential a Patent Trial and Appeal Board (PTAB) decision from March of this year that held a precedential U.S. Court of Appeals for the Federal Circuit (CAFC) ruling on prior art determinations for provisional applications applies only to pre-America Invents Act (AIA) patents.
Most patent prosecutors err on the side of caution when deciding whether to cite prior art references to the United States Patent and Trademark Office (USPTO). Indeed, the consequence of not citing known prior art can be a finding during patent litigation that there was a violation of the USPTO’s duty of disclosure amounting to inequitable conduct, with the patent thereby being deemed unenforceable. But the United States Court of Appeals the Federal Circuit’s recent decision in Elekta Limited v. Zap Surgical Systems (Case 2021-1985, September 21, 2023) suggests that patent prosecutors should think about ways that the fact that references are being cited could be used against the patent owner, and prosecutors might consider clarifying the record to negate potential inferences being drawn based on the citation of references.
On November 13, global investment banking firm BTIG filed a lawsuit in California state court against rival company StoneX Group, alleging trade secret and breach of contract claims related to a StoneX’s recruitment of several key BTIG employees in order to gain access to valuable proprietary software code developed at BTIG. BTIG’s suit seeks disgorged profits of $200 million as well as remuneration for StoneX’s unjust enrichment, which BTIG estimates could reach over $1 billion.
Following a panel that examined the international landscape for standard essential patents (SEPs), IPWatchdog’s Founder and CEO, Gene Quinn, and Chief Operating Officer, Renee Quinn, presented The Honorable Randall Rader with the IPWatchdog Masters™ Hall of Fame award and a sketched portrait to add to the Wall of Fame at IPWatchdog’s headquarters. Judge Rader served as a circuit judge on the U.S. Court of Appeals for the Federal Circuit from 1990 through 2010, and as the court’s Chief Judge from 2010-2014. He has won numerous awards and now works an arbitrator, mediator and consultant with the Rader Group. In his explanation of the origins of the IPWatchdog Masters™ Hall of Fame in 2022, Quinn said he wanted an IP Hall of Fame that included only “real IP professionals; people who mean something to me, people I want you to hear from.”
The United States Patent and Trademark Office (USPTO) issued its one millionth design patent on September 26, 2023. U.S. Patent No. D1,000,000 claims the ornamental design for a dispensing comb. This milestone comes during a particularly prolific period for design patents. In 2022 alone, the USPTO received more than 50,000 design patent applications. The Office has seen a 20% growth in design patent applications over the last five years. It is not hard to understand why inventors are seeking design patent protection at previously unseen levels. In an age of complicated technologies, design patents can protect marketable appearances of products in the same manner generally as trademarks identify source. Understanding design patent benefits underlying the recent growth in application numbers is a good lesson for businesses seeking to distinguish a brand—but keep an eye out for further developments and be prepared to adjust business and IP strategies.
The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.
Just a few weeks after Google waived its right to respond, the Supreme Court denied a petition challenging a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that held a Texas district court erred in ruling against the search engine and tech behemoth. The U.S. District Court for the Eastern District of Texas found the inventors of a method for protecting computers from malware—Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman)—had proven that Google’s Chrome web browser infringed their reissue patents RE43,500, RE43,528, and RE43,529 and that the claims were not invalid. After a first time at the Federal Circuit in which the case was remanded to the district court, a jury awarded Cioffi, et. al. $20 million in past damages and the district court in post-trial review rejected Google’s “original patent defense.”
This week in Washington IP news, the Senate Committee on Small Business hears from entrepreneurs who served in the U.S. military, and the House Subcommittee on Communications discusses the implications of AI technology on U.S. communications. Elsewhere, the USPTO evaluates how women can be empowered to become entrepreneurs and holds a webinar to explain proposed rule changes at the Patent Trial and Appeal Board (PTAB).
On November 8, a Central California jury entered a verdict awarding $3.9 million in punitive damages against Internet financial platform ConsumerDirect. The verdict comes weeks after U.S. District Judge James Selna granted a motion for sanctions after finding that ConsumerDirect fraudulently represented its ownership of unregistered trademarks while obtaining a preliminary injunction in U.S. district court against Array.