Posts Tagged: "independent inventor"

On Monday, the United States Supreme Court denied inventor Jeffrey Killian’s petition for a rehearing in his case asking the Court to provide clear guidance on – or else throw out – the Alice/Mayo test for patent eligibility. The Supreme Court denied Killian’s original petition in early October, but Killian filed a request for rehearing several weeks later. Killian first filed a petition for writ of certiorari to the Supreme Court in April, after the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB)’s ruling rejecting claims of his U.S. Patent Application No. 14/450,042 under Section 101.

On September 25, independent inventor Carolyn Hafeman filed a reply brief  arguing that efforts by consumer tech giant LG Electronics to prejudice Hafeman’s legal claims in front of a Western Texas jury require the court to grant a new patent infringement trial in the case. Among other things, Hafeman contends that LG’s invalidity arguments at trial violated LG’s own Sotera stipulation filed in inter partes review (IPR) proceedings brought by LG suppliers Google and Microsoft to challenge the validity of Hafeman’s patent claims asserted against LG.

Careless naming of inventors on a patent application can create confusion and add complexity to an already intricate process. The recent case of Blue Gentian, LLC v. Tristar Prod., Inc. is a great example where failure to properly list a co-inventor resulted in the only named inventor losing their patent rights…. To avoid a case similar to Blue Gentian v. Tristar, identify all inventors carefully and have them sign an assignment agreement, which transfers their rights to a single entity, such as an individual or the company that’s going to exploit the patent.

The PREVAIL Act addresses current rules that enable gamesmanship at the Patent Trial and Appeal Board (PTAB) by huge corporations against small inventors, startups and other patent owners, and that increase invalidation rates. It introduces standing requirements, establishes a clear and convincing evidence standard to invalidate a patent, ensures a code of conduct is put in place for administrative patent judges (APJs), and more. While these changes are well-intended, due to the PTAB’s perverse incentive structure, the PREVAIL Act will only be marginally effective, and may have no real effect at all.

The United States Patent and Trademark Office (USPTO) yesterday republished its Request for Comments (RFC) on the establishment of an additional USPTO Regional Office in the southeast region and four new community outreach offices. The original RFC included a bad link for the comments form, so the Office published a new link and also extended the deadline for comments from July 11, 2023, to July 17. The RFC is in response to provisions of the Unleashing American Innovators Act of 2022 (UAIA), which was introduced in September 2021 and signed into law in December 2022, and requires the Director of the United States Patent and Trademark Office (USPTO) to establish another satellite office within three years of the bill’s enactment somewhere in the Southeastern region of the nation, which the bill specifically defines as Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas.

Some of the earliest chapters in the story of U.S. innovation have been written by Black Americans who not only advanced the state of industry in our country, but also fought to ensure that they were credited for what they achieved. Within the next few years, the city of Newark, NJ, will be the home of a museum properly paying homage to the historic contributions that these inventors have made to medical science, telecommunications, transportation and more.

I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.  Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

The copy writes itself: “Five-Time Woman World Jump Rope Champion Transforms Fitness Industry after Securing Patents.”  However, you’re unlikely to find a glowing profile of Molly Metz on the U.S. Patent and Trademark Office (USPTO) website anytime soon. That’s because, after the fitness industry embraced Molly’s invention as the gold standard for speed jump ropes, the Patent Trial and Appeal Board (PTAB) of the USPTO invalidated the claims of the patents based on prior art from 1978 and 1979. 

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, argued in a reply brief to the U.S. Supreme Court filed on behalf of her company, Jump Rope Systems, LLC, on Tuesday that her case against Rogue Fitness is justiciable and the company has standing despite the cancellation of her patent claims by the U.S. Patent and Trademark Office (USPTO). Jump Rope Systems filed the brief in reply to Rogue Fitness’s brief in opposition, which was filed on January 19. Metz and Jump Rope Systems originally sued Rogue Fitness in 2018. But after Rogue filed a petition for inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) ruled that Jump Rope Systems’ two patents (US 7,789,809 B2 and US 8,136.208 B2) related to jump rope handle technology were unpatentable.

Every inventor has, at one time or another, had the moment where all seems lost. Every avenue that could possibly yield a fruitful alleyway towards profitability has been trodden, and each industry contact that could potentially offer a path towards success has been contacted. The item that began as a simple idea, was built into a homemade prototype, and was eventually turned into a real product by a professional design firm, has not gotten the interest from the industry that had been dreamed of. This realization can be a serious cause for grief for those who have spent countless hours defining and tweaking their product, building relationships with designers, patent attorneys, industry insiders, and other inventors, and still have not achieved their ultimate goal of successfully bringing their product to market. These periods of time can be difficult, as it can feel like you are saying goodbye to a friend that has brought you so much hope, and joy throughout the development process.

Three amici filed briefs last week in Jump Rope System’s petition asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision upholding a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Eagle Forum Education and Legal Defense Fund and the Fair Inventing Fund filed briefs in support of the jump rope company while DivX filed in support of neither party .

Jump Rope Systems, the inventor of a novel jump rope system, is petitioning the Supreme Court to clarify “whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”

A new intellectual property (IP) organization launched today will be headed by former vice president of U.S. policy at the U.S. Chamber of Commerce’s Global Innovation Policy Center (GIPC), Frank Cullen, and features a Board of Directors comprised of bipartisan frontrunners in the IP realm. The Council for Innovation Promotion (C4IP) will aim to educate on the importance of innovation to the U.S. economy at a high level, and to fill the void its creators say exists with respect to clarifying the often-negative public narrative about the role of IP in access to innovation. The Board includes former U.S. Patent and Trademark Office (USPTO) Directors Andrei Iancu and David Kappos, Retired U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Kathleen O’Malley and Retired CAFC Chief Judge Paul Michel.

The August 2019 announcement that two patent applications had been filed naming an artificial intelligence (AI) algorithm as an inventor in the United States and a dozen other countries was regarded as disruptive and profound at the time. It was one of the hot topics in patent law during those last few months before the pandemic. But since then, given all the other crazy and disorienting stuff that has happened in the world, we have become desensitized to the question, even if it is just as radical and important today. To be sure, the U.S. Court of Appeals for the Federal Circuit’s August 5 ruling that an “inventor” must, under the Patent Act, always be a human being, would seem to definitively resolve the question. As a matter of existing and clearly settled law, Stephen Thaler’s AI machine, DABUS, cannot be a named inventor on his applications for a fractal-shaped beverage container and a neural flame, like we always thought in the Before Times. It’s time to relegate this parlor-game discussion to the same recycle bin as Beeple’s non-fungible token (NFT), The Tiger King, and so many other viral distractions. Or, perhaps, not so fast.

In U.S. government, setting public policy is the sole and exclusive domain of Congress. The laws they pass effectuate the public policy positions that Congress alone has the power to set. In law, words are everything. The precise meaning of the words in law determines whether the public policy is implemented as intended by Congress. Altering the meaning of just one word can change the entire public policy set by Congress, even turning the public policy on its head. Anyone following the debate on patent eligibility can attest to how the Supreme Court’s redefinition of the word “any” in 35 U.S.C. § 101 to have an exception called an “abstract idea” caused a significant public policy change and that change destroyed countless startups, especially those in tech. Senator Tillis’ Patent Eligibility Restoration Act of 2022, S.4734, wrongly puts the courts in charge of defining public policy because it leaves key words completely undefined.