Non-functional descriptive material is a throwback to an earlier time. Historically, the non-functional descriptive matter doctrine was used by examiners to argue that limitations related to the content of information should be given little to no patentable weight. However, current subject matter eligibility jurisprudence provides tools to simply treat content-based inventions as ineligible (e.g., Electric Power Group, LLC v. Alstom S.A.), and so it is not clear that non-functional descriptive material rejections should continue to play a role in examination. Nevertheless, the doctrine still exists, and so this article presents three examples illustrating how you can respond to non-functional descriptive material rejections when they arise in your practice.

This week in Other Barks & Bites: Senator Thom Tillis (R-NC) sent a letter yesterday to the Administrative Conference of the United States requesting it perform a study on the benefits of creating a unified, independent Intellectual Property Office; the Federal Circuit reversed an indefiniteness ruling invalidating computer-implemented method claims over a dissent from Judge Dyk; news reports indicate that Associate Justice Stephen Breyer will step down from the U.S. Supreme Court once the Court’s current term finishes; and more.

The World Trade Organization (WTO) was scheduled in December to hold its 12th Ministerial Conference (MC12) in Geneva, bringing together officials from 164 countries to negotiate the future of global trade. Concerns over the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) were expected to feature in discussions, however, in-person deliberations have been tabled until at least March as a result of growing health concerns related to the Omicron COVID-19 variant. In the meantime, it is important leaders consider how TRIPS can be strengthened and refined as needed. TRIPS plays a crucial role in driving global innovation, but ambiguities surrounding the agreement’s dispute settlement mechanism have led some to conclude that it is vulnerable to abuse by countries seeking to advance their national interests.

The last day of PTAB Masters™ 2022 featured sessions on dealing with parallel litigation at the International Trade Commission (ITC) and district courts in Patent Trial and Appeal Board (PTAB) proceedings; life sciences and inter partes review (IPR); and the future of the PTAB. On the latter topic, speakers contemplated what lies in wait for the U.S. Patent and Trademark Office (USPTO) Director nominee, Kathi Vidal, who is likely to be confirmed, as well as how certain the Restoring America Invents Act is to be passed, and what changes it may include.

On January 21, inventor Martin David Hoyle and his company B.E. Technology filed a response in opposition to a consolidated motion to dismiss that was filed last November by defendants Michelle K. Lee, former Director of the U.S. Patent and Trademark Office (USPTO), a pair of officials at the Patent Trial and Appeal Board (PTAB) and three administrative patent judges (APJs) who sat on PTAB panels invalidating Hoyle’s patent claims. Hoyle and B.E. Tech’s response brief argues that the motion to dismiss filed by the former and current USPTO employees is based on factual disputes that are inappropriate to decide on a motion to dismiss, and that plaintiffs have made out a sufficient due process claim under Bivens v. Six Unknown Named Agents of Federal Bureau of Narcotics (1971).

It was a light week at the Patent Trial and Appeal Board (PTAB) and in the courts (relatively speaking), with 49 new district court patent filings and 19 inter partes reviews (IPRs), both a bit less than recent averages. There were another 72 district court dismissals, including a number of WSOU, CallStat [Jeffrey Gross], and other file-and-settle entity dismissals filling up the docket. The Board issued seven new discretionary denials, discussed below, and the Apple/Ericsson 5G dispute continued to spill into the open in venues worldwide, with district court cases, IPRs, ITC, and European disputes filling out the docket. Magnetar filed another campaign in recent weeks and followed up with hitting Apple this week; a number of parties were denied institution against Express Mobile patents (though two of the five patents have been instituted, and more are pending on the others); and Vector Capital’s Monterey Research lost yet another set of claims in a challenge by AMD at the Board.

The third day of IPWatchdog’s PTAB Masters™ 2022 featured more from former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, as well as panels covering topics such as avoiding obviousness mistakes, appellate strategies from the Patent Trial and Appeal Board (PTAB) and other intricacies of PTAB practice from the experts. Panelists this afternoon also weighed in on today’s announcement that Justice Stephen Breyer will retire from the Supreme Court, opening the door for Biden to appoint a replacement.

On January 20, the Senate Committee on the Judiciary voted 16-6 to advance S. 2992, the American Innovation and Choice Online Act, out of committee and toward a full vote on the floor of the U.S. Senate. If passed, the bill would give the Federal Trade Commission (FTC), the U.S. Attorney General and state attorneys general new powers to bring antitrust enforcement actions against major online platforms that are alleged to be engaging in discriminatory conduct by preferencing their own products and services over competing products and services that are also available on those platforms.

On January 19, Qualcomm filed a brief in opposition to Apple’s petition for certiorari to the U.S. Supreme Court, arguing Apple failed to make the requisite evidentiary showing to obtain Article III standing. In 2017, Qualcomm filed suit against Apple, alleging Apple’s mobile devices infringed five of its patents, two of which are at issue here, U.S. Patent No. 7,844,037 (the ‘037 patent) and U.S. Patent No. 8,683,362 (the ‘362 patent). Apple counterclaimed, urging the court to invalidate those five patents. Additionally, Apple filed a simultaneous challenge to two of the patents through inter partes reviews (IPRs).

The first panel of Tuesday’s PTAB Masters™ 2022, titled “Discretionary Denials: Has the WDTX Been Neutered?”, presented data that reveals the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) seemingly stopped citing Fintiv as a reason to discretionarily deny inter partes review (IPR) proceedings for cases with parallel litigation in the Western or Eastern Districts of Texas (WD of TX/ ED of TX) during the last four months of 2021. While the PTAB issued a larger number of institution decisions overall in those months compared with previous months, and a larger number of cases citing Fintiv, there was also a relatively low number of cases across all jurisdictions in which discretion to deny was applied based on the Fintiv analysis.

A new crime drama, The Billion Dollar Code, is a fascinating breakthrough mini-series that illustrates the legal challenges of inventions and inventors in a world where technology giants can refuse to acknowledge the source of ideas they do not control. The popular four-part Netflix mini-series achieves uncanny success not only in depicting an epic legal battle but doing it over four plus hours in German with subtitles and an abundance of algorithm detail and trial preparation. It is reminiscent of Chernobyl, HBO’s award-winning series that turned the complex series of events and failures, both technical and human, leading to a nuclear core meltdown into award-winning entertainment.

On January 21, 2022, the U.S. Court of Appeals for the Federal Circuit held that the term “lifter member” invokes means plus function (MPF) claiming. The case is Kyocera Senco Indus. Tools Inc. v. ITC, Appeal Nos. 2020-1046 and 2020-2050 (Fed. Cir. 2022). The Federal Circuit panel for the case consisted of Chief Judge Moore along with Judges Dyk and Cunningham. Chief Judge Moore wrote the opinion for the panel. To summarize, in 2017, Kyocera filed a complaint with the International Trade Commission (ITC). Kyocera alleged that a company named Koki violated 19 U.S.C. § 1337 (Section 337) by importing gas spring nailer products that infringe, or were made using methods that infringe, certain claims in five Kyocera patents. Those patents generally relate to linear fastener driving tools, like portable tools that drive staples, nails, or other linearly-driven fasteners.

The safe harbor provision set forth in 35 U.S.C. § 271(e)(1) immunizes many types of activities in pursuit of a Food and Drug Administration (FDA) submission from patent infringement claims. Research tools are frequently used in pursuit of an FDA submission, such as drug development, testing and screening. But research tools themselves generally are not subject to FDA or other regulatory approval. Depending on the circumstances, using research tools to submit data to the FDA may not be protected by the safe harbor provision and thus may expose companies to patent infringement claims.

The first day of IPWatchdog’s PTAB Masters™ 2022 program featured a welcome from Senator Thom Tillis (R-NC), Ranking Member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, who told attendees that Congress should consider codifying some of the reforms made by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu in order to better avoid “gamesmanship” at the Patent Trial and Appeal Board. Tillis specifically called out entities like OpenSky Industries, who last December petitioned the PTAB to institute an IPR proceeding challenging claims from one of two patents involved in VLSI Technologies’ $2.175 billion jury verdict for patent infringement against Intel, which was handed down in March 2021 in the Western District of Texas.

On January 19, consumer tech giant Apple filed a complaint with the U.S. International Trade Commission (USITC) asking the agency to institute a Section 337 investigation against Swedish telecom firm Ericsson, asserting a trio of patents related to millimeter wave technology used by electronic devices communicating on mobile 5G networks. The Section 337 complaint is the latest salvo in a legal battle that highlights the mounting tension surrounding standard-essential patents (SEPs) and where infringement litigation fits into the fair, reasonable and non-discriminatory (FRAND) obligations that standards-setting organizations (SSOs) impose upon SEP owners.