Posts Tagged: "America Invents Act"

While steps taken under former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu to restore equilibrium at the Patent Trial and Appeal Board (PTAB) have improved a bad situation to some extent, in many ways the damage has been done, said IPWatchdog founder and CEO Gene Quinn during a keynote interview with Iancu earlier today, on day one of the PTAB Masters ™ 2021: Winning at the PTAB Series. “It felt sometimes like the PTAB was making it up as they went along,” said Quinn to Iancu. “It eroded the confidence of patent owners. I do think it’s getting to be more of an equilibrium, but it’s a damaged brand.”

Buffalo is a small Texas town of less than 2,000 people. On the way into town, school zone signs flank both sides of a speed limit sign. I drove through on a Sunday, when school zones do not apply, so I didn’t slow down. Almost immediately, the police lights lit up and I was awarded a speeding ticket. When I started to fight the ticket, I was met with resistance at every level of city government. It quickly became clear that the speed trap was a significant source of revenue for the small town and that the judge, mayor, city employees and even the officer who pulled me over all benefited from that revenue. So, I just paid the ticket and walked away. It is the very definition of a corrupt system when those who make the rules and decisions receive financial benefit from the results of their rules and decisions. New Vision Gaming v. SG Gaming, Inc. (Federal Circuit No. 2020-1399) illustrates this phenomenon as it applies to the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB).

A strong and predictable intellectual property system is crucial to protecting and promoting American innovation around the globe. It allows American businesses of any size to compete globally, creating millions of American jobs. Strong intellectual property rights provide a strong foundation for America’s role as the world’s innovation and technological leader, powering our world with the next generation of technology to help kids learn, to connect remote workers, provide better access to healthcare and help make our planet more sustainable. The role of innovation (from vaccines to communication technology, content creation, etc.) has never been more crucial than during the ongoing COVID-19 pandemic. The ability to protect what one creates or invents grows our economy and GDP, generates incentives to continue the innovation process, and makes our country safer and more secure from foreign adversaries.  

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.

On Sunday, February 14, U.S. Senate Democratic Whip Dick Durbin (D-IL), Chair of the Senate Judiciary Committee, and Senator Chuck Grassley (R-IA), Ranking Member of the Senate Judiciary Committee, announced the Subcommittees and Subcommittee Chairs of the Senate Judiciary Committee for the 117th Congress. Many in the IP universe had hoped Senator Chris Coons (D-DE), the Ranking Member of the Senate IP Subcommittee for the 116th Congress, would be appointed the IP Subcommittee Chair, considering his strong support for various IP reforms along with the previous IP Subcommittee Chair, Thom Tillis (R-NC). Tillis will serve as Ranking Member of the Subcommittee this Congress, but Coons was not selected to serve as Chair.

Recently, the Day One Project, an initiative of the Federation of American Scientists, released a transition document drafted by a collection of veteran policymakers discussing a range of policy ideas to be implemented at the U.S. Patent and Trademark Office (USPTO) starting from the earliest days of the Biden Administration. The ideas advocated by the Day One Project focus on a mix of policies related to diversity, international IP systems, patent quality, agency budgeting and governance and ways that the USPTO can contribute to broader administrative policy initiatives. While there are many sound policy positions advocated by the Day One Project, patent owners may want to be aware of the document’s stance on the “public benefit of PTAB review of a patent” as well as the agency’s role in developing policy on patentable subject matter reform. Interestingly, the policy document indicates that there is broad consensus for continuing policies from the Trump Administration relating to China’s influence on the world of intellectual property.

Advocates for “patent reform” have long argued that reducing patent protection will open up markets and accelerate innovation by lowering entry barriers and expanding access to existing technologies. Yet, over 15 years of patent reform since the landmark 2006 decision in eBay, Inc. v. MercExchange LLC, followed by enactment of the America Invents Act in 2011, we have witnessed the rise of a technology ecosystem led by a handful of dominant platforms. In my recently published book, Innovators, Firms and Markets: The Organizational Logic of Intellectual Property, I show that this outcome should not be surprising. Almost 120 years of U.S. patent and antitrust history (1890-2006) indicate that reducing patent protection can often shield incumbents against the entry threats posed by smaller firms that have strong capacities to innovate but insufficient resources to transform innovations into commercially viable products and services.

Submissions in response to the United States Patent and Trademark Office’s (USPTO) “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” were received through the deadline of December 3, 2020. The Request was published in the Federal Register on October 20, 2020 and a total of 843 comments were received. IPWatchdog previously highlighted comments from individuals and organizations including Senator Thom Tillis, Robert Stoll, Conservatives for Property Rights, US Inventor’s Randy Landreneau and the Small Business Technology Council. Below are some additional highlights from the many submissions.

As of December 1, 750 comments had been received in response to the United States Patent and Trademark Office’s “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board”, which was published in the Federal Register on October 20. Some notable submissions have been received from stakeholders including Senator Thom Tillis, Conservatives for Property Rights, Randy Landreneau, Robert Stoll and the Small Business Technology Council.

Currently, brain recording and/or brain stimulation is used almost entirely for medical or research purposes. Invasive surgery is generally required to read neural signals with high temporal and spatial resolution. High resolution of neural signals enables researchers to decode a brain’s underlying intentions, sensations, reactions, etc. rather reliably, if only in constrained environments. With regard to stimulation, researchers have demonstrated the ability to trigger different types of effects. For example, stimulating the reticular formation can cause a subject to become awake; stimulating the amygdala can evoke fear; stimulating the motor cortex can trigger movement; stimulating the visual cortex can cause a subject to see light flashes. However, the state of the art is neither able to decode complex and unrestrained thoughts nor cause a subject to have a particular “target” complex thought. At least not yet.

On October 20, the United States Patent and Trademark Office (USPTO) published a “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” in the Federal Register. In particular, the USPTO is considering the codification or modification of its current policies and practices with respect to instituting trials before the Office under the Leahy-Smith America Invents Act (AIA). The Office submitted a proposed rulemaking to the White House’s Office of Management and Budget (OMB) last month with the aim of formalizing recent practices under precedential opinions including Apple Inc. v. Fintiv, Inc; General Plastic Industries Co. Ltd. v. Canon Kabushiki Kaisha; and Becton, Dickinson & Co. v. B. Braun Melsungen AG.

On September 9, a panel of three administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a petition filed by Apple seeking inter partes review (IPR) proceedings to challenge the validity of a patent owned by Unwired Planet. In denying institution to Apple’s IPR petition, the APJ panel relied on a discretionary multi-factor test referred to as NHK-Fintiv, which weighs the efficiencies of handling validity reviews at the PTAB when parallel proceedings on similar issues are ongoing in U.S. district court. On September 14, a number of “Small Business Inventors” also filed a Notice of Motion and Motion to Intervene and related Complaint in the California case. The Small Business Inventors argue that the disposition of the case will “have lasting impacts on their proprietary and legal interests” that are “distinct from the interests of the Original Plaintiffs, and of the Defendant.”

Two weeks before the Transitional Program for Covered Business Method Patents (CBM) Program, implemented in 2012 under the America Invents Act (AIA), is set to expire, a special interest group dubbed the “Quality Patents Coalition”, is reportedly urging Congress to extend the program for one year. The CBM program is currently set to expire on September 16, 2020. In June, in response to reports of the imminent request for an extension, a number of organizations submitted a letter to Senator Thom Tillis (R-NC) arguing that “CBM should expire of disinterest, if not to eliminate a proceeding of questionable use, of illegitimate vintage, and of unjust intent.”

In Article 1, Section 8, Clause 8, of our Constitution, the founders were relatively specific. The founders give Congress power to secure “the exclusive Right” to “Authors and Inventors” in the “Writings and Discoveries”. Congress is given  specific direction on how to do it (i.e., “for Limited Times”), and why it should be done (i.e., “To promote the Progress of Science and useful Arts”). Unfortunately, the Leahy-Smith America Invents Act (AIA) of 2011 dramatically changed how the Executive branch implements the Constitutional prerogative.  The AIA transferred power constitutionally allocated to the judicial branch to the executive branch – specifically, to Administrative Patent Judges (APJs) in the USPTO. In the process of implementing the Patent Trial and Appeals Board (PTAB) on which the APJs sit, judicial independence, judicial ethics, rules of evidence, and other protections commonly afforded rights holders in disputes adjudicated by the federal judiciary were sacrificed in the name of expediency.