With exponential growth in patent filings each year and expanding company portfolios, Patent Quality Assessment (PQA) has become a significant and crucial task. USPTO maintenance fees, which are required to be paid periodically to keep a patent alive for 20 years, further add to the importance of maintaining only quality patents. Patent professionals worldwide have developed a myriad of metrics to assess the quality of patent assets. Benchmarking tools include terms like “Qscore” and “Asset indexes” to quantify the qualitative attributes of a patent.
Earlier today, the Precedential Opinion Panel (POP) of the United States Patent and Trademark Office (USPTO) overruled the institution decision of the Patent Trial and Appeal Board (PTAB) in GoPro, Inc. v. 360Heros, Inc., IPR2018-01754, which related to U.S. Patent No. 9,152,019. Substantively, with respect to the determination that any federal pleading filed will trigger the running of the time-bar clock of Section 315(b), the POP explained that GoPro’s arguments would require terms not present in the statute to be read into the statute (i.e., “complaint” to be read as “proper complaint”). Further, the POP explained that GoPro failed to demonstrate that a complaint filed without proper Article III standing is considered a legal nullity for the purpose of Section 315(b)’s time bar.
This week in Other Barks & Bites: the USPTO’s Precedential Opinion Panel delivers a key ruling for inventors; the Second Circuit rules that a series of six film scores weren’t works for hire under U.S. or Italian law; Gilead files for inter partes review of patents owned by the U.S. government covering PrEP treatments; Qualcomm and LG Electronics enter into a five-year patent licensing agreement for wireless technologies; Taiwan begins implementing a patent linkage system for drug approvals; HP appoints a new CEO; Eminem music publishing firm files a copyright infringement suit against Spotify; and the DOJ and the Copyright Office support Led Zeppelin in the “Stairway to Heaven” copyright case.
Yesterday, we ran a series of excerpts from responses to Senator Thom Tillis’ (R-NC) questions for the record to panelists following the June hearings on U.S. patent eligibility law, held by the Senate Judiciary Committee’s Subcommittee on Intellectual Property. Along with Tillis and Senator Richard Blumenthal (D-CT), Senator Mazie Hirono (D-HI) also posed several questions to the participants in the 101 hearings. Hirono’s questions overall demonstrate a good faith desire to get to the heart of the problems in search of real solutions.
Last month, we reported on the responses submitted to Senator Richard Blumenthal (D-CT) by panelists who participated in the June hearings on the state of U.S. patent eligibility, held by the Senate Judiciary Committee’s Subcommittee on Intellectual Property. Along with Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI), Senator Blumenthal entered a series of questions for the record to be answered by certain participants. While movement on the bill appears to be stalled for the time being, with reports that Tillis and Senator Chris Coons (D-DE) have reinstituted the stakeholder roundtables that led up to the draft bill and hearings in the first place, it’s worth reviewing some of the responses to Tillis’ questions as the IP community waits for the next move. From David O. Taylor’s statistic that 62% of investors he surveyed said they were less likely to invest in companies where patent protection is not available, to Bob Armitage’s characterization of the draft bill’s revision to Section 112(f) as “perfect,” to the Cleveland Clinic’s statement that they are currently less likely to make the necessary investments to bring new advances in diagnostics to market, these responses are a reminder of what’s at stake.
When the USPTO issued its 2019 Revised Patent Subject Matter Eligibility Guidance in January of this year, it seemed as if the patentability tides had finally shifted in favor of software applicants. Far less attention and fanfare, however, was afforded to the concurrently issued and unassuming Section 112 Guidelines on examination practice for computer-related and software claims. In particular, potential pitfalls awaiting software applicants may lie unforeseen in the requirement that “[f]or a computer-implemented 112(f) claim, the specification must disclose an algorithm for performing the claimed computer function, or else the claim is indefinite.”
On August 16, the Supreme Court of New Hampshire issued an opinion in Automated Transactions, LLC v. American Bankers Association affirming a lower court’s decision to grant a motion to dismiss claims of defamation alleged by an inventor whose legitimate patent licensing business was decimated by a collection of entities and individuals deriding that inventor as a “patent troll.” The decision is certainly unwelcome news to any inventor concerned by the prospect that large entities could infringe upon their intellectual property and escape any chance of facing justice simply by hurling the “patent troll” epithet.
On August 1, the U.S. Court of Appeals for the Federal Circuit affirmed-in-part, vacated-in-part, and remanded a decision of the Patent Trial and Appeal Board (PTAB) in the case between VirnetX and Apple/ Cisco, and separately denied Apple’s request for rehearing en banc in its appeal from the U.S. District Court for the Eastern District of Texas ruling awarding VirnetX nearly $440 million. In response, Apple quickly filed motions to stay and vacate those decisions, and requested leave to petition for a second rehearing. Most recently, on August 15, VirnetX filed its reply to Apple’s motions, arguing that the tech giant is merely trying to delay the case in order to give priority to continuing PTAB hearings.
There is a lot of focus—and rightly so—on China’s stealing of U.S. intellectual property (IP). Recently, Trump economic adviser Larry Kudlow stated on CNBC’s Squawk Box that China has stolen at least $600 billion in American IP. Additionally, one in five North American-based corporations on the CNBC Global CFO Council said that Chinese companies have stolen their IP within the last year. In all, 7 of the 23 companies surveyed said that Chinese firms have stolen from them over the past decade. The annual cost to the U.S. economy for these actions is estimated to be greater than $600 billion. While this is a serious matter that must continue to be addressed, domestic theft of U.S. IP is just as bad if not worse. It is easy to point fingers at China, given their track record, but small U.S. companies and inventors are not having their dreams extinguished by the Chinese. They are being victimized by Silicon Valley’s big tech companies, which make billions of dollars using their stolen IP.
Too often, engineering companies are in such a race to come up with the next big thing that they forget to consider the crucial step following their grand discoveries or inventions: patent protection. If a business is willing to spend years developing products and a considerable amount of money marketing, then it only makes sense to follow through and protect the accomplishment. Yet, many (unintentionally) don’t. Below are five risky ways tech companies often jeopardize their intellectual property rights, sometimes even before a product has been developed.
The Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has had a sordid history. Whether you are in favor of the PTAB allowing serial challenges that require patent owners to constantly fight dozens of petitions from a multitude of challengers or not, no one can or should excuse the PTAB from the egregious appearance of impropriety that continues to plague the institution. It is insulting and inappropriate. It is well past time for Director Iancu to put an end to Administrative Patent Judges (APJs) deciding petitions filed by former clients. We know direct conflicts where APJs are deciding petitions filed by former clients are still happening thanks to two orders entered on August 8, 2019 in IPR2019-00819 and IPR2019-00820. Through these orders, we learn that APJ Stacy Beth Margolies is sitting on a panel assigned to address inter partes review (IPR) petitions filed by Apple, Inc. against patent owner MPH Technologies OY. The problem is Margolies, while she was an attorney, represented Apple.
Just over 18 months ago, Andrei Iancu assumed control of the United States Patent and Trademark Office (USPTO). As the Director of the USPTO, Iancu has changed the tone of the conversation over patents in America. During President Obama’s second term the USPTO became aggressively anti-patent and anti-innovator. The speeches, policies and inaction of Director Michelle Lee led innovators and observers to correctly claim that the Obama Administration had come to champion the viewpoints of infringers, not the technology innovators. Director Iancu changed that almost overnight. Where Director Iancu has failed, however, is with respect to the Patent Trial and Appeal Board (PTAB). With great fanfare, Director Iancu created a Precedential Opinion Panel (POP) that we were told would result in more decisions of the PTAB being declared precedential on the entire PTAB. There was hope that the POP would address the most important issues, such as serial challenges to the same patent over and over again, the use of the same prior art over and over again, and once and for all require the PTAB to apply the Federal Circuit view of what it means to be a real party and interest. Unfortunately, real reform of the PTAB has not happened despite tinkering with the Trial Guide. In important ways the PTAB is worse, and the efforts that have been undertaken incorrectly form the appearance of reform.
Alternatives to patent litigation are desirable now more than ever. Arbitration can help to resolve patent disputes more easily than the much more complex, expensive and timely endeavor of Patent Trial and Appeal Board (PTAB) proceedings. Patent litigators must deal with an overly complex Inter Partes Review (IPR) system as a result of the Supreme Court’s SAS Institute v. Iancu (138 S. Ct. 1348 2018) decision, new amendment process, and evolution of the “broadest reasonable interpretation” standard. Costly and complicated PTAB proceedings and a lengthy appellate process make arbitration an appealing option to obtain a patentability ruling in a streamlined manner. Below are the top 10 reasons that arbitration can be a better route to follow than an IPR or other PTAB proceeding.
On October 25, the AIPLA Annual Meeting will host a Patent Trial and Appeal Board (PTAB) Inter Partes Review (IPR) trial to determine the fate of a pair of patents issued by the U.S. Patent and Trademark Office (USPTO) to Zaxcom for a Digital Recording Wireless Microphone. Zaxcom is a U.S. manufacturer of high-end, specialized wireless microphones and recording equipment for the film and television industries. The company was founded in 1986 by Glenn Sanders, the named inventor on the challenged patents. The Zaxcom case caught my attention for several reasons. First, this was not a patent troll asserting a stack of vague, overly broad patents, but was an inventor-owned company that was producing the invention. Second, Glenn was manufacturing his invention and creating jobs in the United States. Third, the technology has won Engineering Emmy Awards and has been honored by the Academy of Motion Picture Arts and Sciences with a Technical Achievement Award. Finally, Chief Administrative Patent Judge Scott Boalick was on the panel. How could the USPTO grant a patent, the claimed invention earn Emmy and Academy awards, and then the USPTO decide the patent was likely to be invalid? Especially when Director Iancu is traveling throughout the country and testifying in Congress that it is a new day at the USPTO and that he has restored balance at the PTAB?
The Supreme Court’s 2014 decision in Alice v. CLS Bank made it significantly more difficult to obtain patents for some computer-related technologies. it is, at best, questionable whether court decisions since then have been coherent and consistent. Similarly, marked variation has been observed across art units and across post-Alice time periods as to how examiners are applying Section 101. However, the U.S. Patent and Trademark Office’s (USPTO’s) 2019 Patent Eligibility Guidance added some much-needed clarity and predictability as to how eligibility of computer-related patent applications is being assessed at the agency. Our previous research focused on the effect that Alice and Electric Power Group had on examination trends in computer-related art units. To investigate how the new 2019 USPTO eligibility guidance has affected those trends, we updated our analysis.