Posts Tagged: "patent office"

Times are changing at the Patent Trial and Appeal Board (PTAB)! Not only are there rumors that the Senate IP Subcommittee may be a matter of several weeks away from marking up the PREVAIL Act and voting it out of committee, but the United States Patent and Trademark Office (USPTO) has finally issued a Notice of Proposed Rulemaking (NPRM) relating to several changes to the Code of Federal Regulations as they pertain to patent challenges at the PTAB.

The U.S. Patent and Trademark Office (USPTO) today announced a Notice of Proposed Rulemaking (NPRM) that will be officially published in the Federal Register tomorrow and that addresses a subset of issues from the controversial April 2023 Advance Notice of Proposed Rulemaking (ANPRM). USPTO Director Kathi Vidal received criticism following the ANPRM, most notably from Congress. In a House IP Subcommittee meeting held last year, members of the Subcommittee expressed confusion about the ANPRM and suggested Vidal may have been exceeding her authority with some of the proposals.

The U.S. Patent and Trademark Office (USPTO) announced today that it will be publishing a Notice of Proposed Rulemaking (NPRM) tomorrow aimed at formalizing the rules governing Director Review of Patent Trial and Appeal Board (PTAB) decisions under the America Invents Act (AIA). In July 2021, the USPTO announced that it would be implementing an interim rule at the agency in response to the U.S. Supreme Court’s late June 2021 decision in Arthrex v. Smith & Nephew. In the Arthrex ruling, the Court found that the constitutional Appointments Clause violation created by the process for appointing administrative patent judges (APJs) to the PTAB was best cured by review of APJ decisions by the USPTO Director. The interim rule began the process of determining how that review process would play out during the day-to-day operations of the PTAB.

The U.S. Patent and Trademark Office (USPTO) today announced guidance for practitioners and the public regarding the use of artificial intelligence (AI) in the preparation of filings for submission to the Office. The guidance comes two months after the Office issued a guidance memorandum for the Trademark and Patent Trial and Appeal Boards (TTAB and PTAB) on the misuse of AI tools before the Boards that clarified the application of existing rules to AI submissions.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) on Friday that had denied institution of an inter partes review (IPR) requested by auto parts manufacturer, Mahle Behr Charleston, Inc. U.S. Patent No. RE47,494 E is owned by inventor Frank Amidio Catalano and covers “a device to prevent corrosion [in motor vehicle radiators] caused by electrolysis.” Mahle Behr requested IPR of the patent, arguing that a prior art reference called Godefroy anticipates and renders obvious certain claims.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday affirmed a number of district court orders against inventor Urvashi Bhagat, whose patent application  was rejected by the U.S. Patent and Trademark Office (USPTO). Bhagat’s U.S. patent application No. 13/877,847 covers orally-delivered nutritional formulations containing omega-6 fatty acids and antioxidants. The application was filed in 2013 and the USPTO examiner rejected all claims as obvious, two claims as lacking written description, several other claims as indefinite and others for improper dependency. On appeal to the PTAB, the Board summarily affirmed the dependency and indefiniteness rejections, affirmed the obviousness rejection on the merits and reversed the written description rejection. Bhagat then appealed to the U.S. District Court for the Eastern District of Virginia, claiming the USPTO erroneously rejected her patent claims and asking for damages due to the Office’s bad faith and for taking her property.

In a nod to Mark Twain’s famous quote, the rumors of the death of IP Edge are greatly exaggerated. It appears the prolific NPE aggregator has either sold or transferred at least one portfolio (and potentially up to 40) to a new entity, Inferential Capital, LLC, which after hiring, has begun asserting again—more below.  On the stats, it was a slightly below average week at both the Patent Trial and Appeal Board (PTAB) and in the district courts. At the PTAB, there were 25 new patent filings, with one post-grant review and 24 inter partes reviews (IPR). 

After VLSI Technology filed a complaint against Patent Quality Assurance (PQA) and its representative, Joseph Uradnik, in the Circuit Court of the City of Alexandria in late January this year, Uradnik recently filed a Notice of Removal with the U.S. District Court for the District of Alexandria, Alexandria Division, arguing the case should be tried there instead. VLSI’s complaint alleged abuse of the inter partes review (IPR) system and is seeking approximately $3.2 million in legal fees from Uradnik, according to the March Notice of Removal.

In a precedential decision authored by Chief Judge Moore, the U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday partially reversed a Patent Trial and Appeal Board (PTAB) ruling that certain claims of Virtek Vision International’s patent on a method for aligning a laser projector were unpatentable, finding the Board erred as a matter of law in its analysis. The court also affirmed the PTAB’s finding that other claims were not proven unpatentable. Aligned Vision challenged various claims of Virtek’s U.S. Patent No. 10,052,734, which is titled “Laser Projector with Flash Alignment,” arguing claims 1, 2, 5, 7, and 10–13 would have been obvious over prior art references titled Keitler and Briggs (Ground 1), and over Briggs and another reference, Bridges (Ground 3). It also argued claims 3–6 and 8–12 would have been obvious over Keitler, Briggs, and  ‘094 Rueb (Ground 2), and over Briggs, Bridges, and ‘094 Rueb (Ground 4).

It’s rare that a federal policy inspires fierce opposition from both sides of the aisle. But the Biden administration’s recent proposal to gut the Bayh-Dole Act is doing exactly that. Bayh-Dole is a pivotal and successful bipartisan law, but Biden’s proposal would effectively allow federal agencies to tear up patent licensing agreements signed between federally funded universities and private businesses. The economic consequences would be dire. Individuals from across the political spectrum, including former Obama administration officials, have warned the proposal would threaten America’s small businesses and inventors.

The Trademark Trial and Appeal Board (TTAB) on Wednesday, March 20, denied APPLE JAZZ mark owner Charles Bertini’s petition to cancel Apple, Inc.’s mark APPLE for entertainment services. While the Board found that Bertini had “proven and maintained his entitlement to a statutory cause of action,” it ultimately held that he had failed to make a prima facie showing of Apple’s abandonment of the APPLE mark for those services.

It was a below-average week in both the Patent Trial and Appeal Board (PTAB) and in district courts this week for new patent filings, with only 27—all inter partes review (IPR)—at the PTAB and 47 new filings in district court…. The PTAB issued institution  decisions in 16 proceedings this week, denying institution in two IPRs (both on the merits) and ordering institution in 12 IPRs and two post-grant reviews (PGR). Instituted proceedings include two IPRs filed by Palo Alto Networks and Keysight Technologies challenging one Centripetal Networks patent; two IPRs filed by Samsung Electronics Co., challenging two Headwater Research Patents; and two IPRs filed by Motorola Solutions Inc., challenging two Sta Group LLC patents.

The U.S. Patent and Trademark Office (USPTO) on Tuesday, March 19, issued a memo for all patent examiners reiterating its current practices and resources for examining means-plus-function and step-plus-function claim limitations. The memo is primarily focused on reminding examiners that they must create a clear record explaining their interpretation of such claims and points to various resources and training tools that are available to assist them.

Similar to Steve Martin and John Candy’s calamitous odyssey in the classic 1980s film Planes, Trains and Automobiles, patent practitioners are experiencing their own misadventures when filing applications in the DOCX format. As of January 17, 2024, the U.S. Patent and Trademark Office (USPTO) mandated submitting all specification, claims and abstracts of non-provisional applications filed under 35 U.S.C. 111(a) in DOCX format or incurring a $400 surcharge (non-discounted). The DOCX mandate came after thousands, and likely tens of thousands, of practitioners, directly or indirectly, communicated their significant procedural, technical, legal, ethical, professional liability, and financial concerns to the USPTO.