Posts Tagged: "Guest Contributor"

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 President’s recent Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence instructs the U.S. Patent and Trademark Office (USPTO) Director and Copyright Registrar to collaboratively issue recommendations to the President on further actions for advancing AI innovation through intellectual property, particularly with respect to AI inventorship and AI authorship. But the two offices currently regard AI differently in terms of assessing the creative and conceiving capabilities of machines, which poses a potential contradiction in how intellectual property law treats AI.

In today’s high-tech landscape, the ancient fable of the goose that laid the golden eggs imparts profound wisdom. The farmer in that tale weighed the decision to continue accumulating wealth slowly by selling the golden eggs that his magical goose laid (one per day) or taking a risk by killing the goose to harvest all of the gold within it at once. (Ultimately, the farmer chose the murderous path only to discover the goose did not contain any riches.) Just as the farmer faced thorny decisions in the tale, modern tech executives grapple with complex choices between immediate returns and long-term potential while also maintaining a competitive edge. In the real world, an artificial intelligence (AI) system that can generate patentable outputs (such as designs for new drugs) stands as the metaphorical “goose” while the inventions it produces are analogous to the “golden eggs.” Steadfastly guiding this delicate dance is the patent attorney with expertise in AI technology.

It was a typical week for patent filings at both the Patent Trial and Appeal Board (PTAB) and in district courts, with 25 new PTAB petitions (five post grant review and 20 inter partes review) and 53 new district court complaints filed. At the PTAB, there were three procedural denials under Section 325(d) (and denying patent owner’s request to deny under Fintiv) in IPRs filed by Nokia Corp. against optical networking patents owned by Alexander Soto and Walter Soto and asserted by inventor owned-NextGen Innovations, LLC.

The U.S. Patent and Trademark Office’s (USPTO’s) delay in retiring EFS-Web and Patent Center is welcome news. But my fear is the announcement could be just another display of the magical thinking, disregard of engineering and legal process, and deafness to stakeholder input that has been the hallmark of the USPTO’s software processes.

On August 22, 2023, the U.S. Court of Appeals for the Federal Circuit issued yet another decision reinforcing what can only be described as the “lead compound” rule for challenging pharmaceutical and other chemical compound patents on the basis of obviousness…. The Federal Circuit has been utilizing the “lead compound” construct since around 2000. The Sun panel cited an earlier decision which couched the construct as something the court “ordinarily” employs. Otsuka Pharm. Co., Ltd. v. Sandoz Inc., 678 F. 3d 1280, 1289 (Fed. Cir. 2012). That earlier decision cited yet an earlier decision which stated that the “lead compound” methodology is used “in general.” Esai Co. v. Dr. Reddy’s Labs., Ltd., 533 F. 3d 1353, 1359 (Fed. Cir. 2008).

If you’re a regular reader of IPWatchdog, it probably wouldn’t surprise you to hear that two different U.S. Court of Appeal for the Federal Circuit (CAFC or Federal Circuit) panels recently issued inconsistent, irreconcilable opinions. But what just happened over the last month is particularly concerning. Specifically, within the span of six days, the Federal Circuit held that: “A computer” means one and only one computer when a subsequent claim element recites “the computer” (Finjan v. Sonicwall); and “A sample stream” means one or more sample streams when a subsequent claim element recites “the sample stream” (ABS Global v. Cytonome/ST).

Words can have profound impact. The term “patent troll,” coined by an Intel litigator, has done incalculable damage. First use is attributed to Peter Detkin, who is said to have deployed it in 2001 to belittle plaintiffs in a patent case involving the chipmaker. Shortly after its appearance, Detkin emerged as what some in the tech world would consider a bad actor. He co-founded Intellectual Ventures, a company that raised $5.5 billion to acquire more than 40,000 patents and applications for sale, license or enforcement. The IP community needs to be more vigilant about preventing parties of interest and the media from controlling the IP narrative.

It was another slow week for patent filings at the Patent Trial and Appeal Board (PTAB) and a typical week in district courts, with 52 district court complaints filed and 22 new PTAB petitions. There was a new discretionary denial, a bunch of litigation-provoked high-profile PTAB challenges, and some notable new litigations. There was another Fintiv discretionary denial this week: here, a Chinese patent owner, Ningde Amperex Technology Ltd., benefited from the Board’s discretionary denial rules in a petition brought by another Chinese battery company. The case, IPR2023-00585, leaves unaddressed the questions raised about the validity of U.S. Patent 11329352.

Gene Quinn and I have collectively been teaching patent bar prep for almost 60 years! In that time, we’ve had contact with many career-bound patent people. All had, without exception, a background in the sciences or engineering, or both. The list of qualifications has, over the years, been expanded as technology has expanded. In years gone by, degrees in Biology and Computer Science would not have qualified you to sit for the U.S. Patent and Trademark Office (USPTO) Registration Exam, but now they do, along with many other intersectional STEM qualifications, including, for the first time, advanced degrees in these disciplines. Good, I say. The more the merrier.

The Enlarged Board of Appeal of the European Patent Office (EPO) on October 10 issued its (consolidated) decision G1/22 & G2/22, which promises to significantly reduce priority issues for applicants—U.S.applicants in particular. When the applicants for a European patent application differ from the applicants on the priority application, the EPO employs the well-established “joint applicants approach” to evaluate the priority claim’s validity. For the priority claim to be valid, and assuming there’s been no transfer of the priority right, all applicants of the priority application must also be among the applicants of the subsequent European patent application. The table below outlines various scenarios and indicates whether the priority claim is valid according to the joint applicants approach.

The world is increasingly connected, and semiconductors are essential to enabling this connectivity. Specialists project the semiconductor market to become a trillion-dollar industry by 2030 (McKinsey & Co., 2022). The term “semiconductors” covers a large amount of embedded technology that is advancing rapidly in its development. Semiconductor companies are highly innovative and rely on innovation to maintain their market share and expansion objectives. An indicator of innovation in this sector is, of course, patents. Of the 10 largest semiconductor companies, according to a ranking published by Investopedia in April 2023, five companies filed between 2,000 to 5,000 patent families between 2019 and 2022

It was a slow week at the Patent Trial and Appeal Board (PTAB) with just 18 new petitions—all inter partes reviews (IPRs); in district court, a slightly below average 54 new patent filings and 48 terminations rounded out the count. District courts saw continued filings in several large campaigns. Unwired Global Systems LLC (associated with high volume plaintiff, Jeffrey Gross) adds another seven defendants to its campaign, asserting a single patent related to home area network middleware interfaces and inventor-controlled Optimum Imaging Technologies LLC filed suit against six defendants asserting patents related to, not surprisingly, digital imaging, bringing the total number of defendants to seven.

Inter partes review (IPR) is a legal process conducted before the Patent Trial and Appeal Board (PTAB) to assess patentability based on anticipation or obviousness using prior art publications and patents. Congress established IPR to offer an efficient alternative to litigating patent disputes before the district courts. This article discusses some practice tips for both challenging and defending patents in IPRs before the PTAB.

On  April 27, 2023, the European Commission published its proposal for how the licensing of standard essential patents (SEPs) should be governed in the EU. The draft regulation states that the initiative aims to incentivize participation by European firms in the standard development process and the broad implementation of such standardized technologies, particularly in IoT industries. The developments are of interest to any business that develops, implements or markets connective technologies.