Posts Tagged: "patent office"

In the United States Patent and Trademark Office’s (USPTO’s ) patent academy (or today’s version of such), patent examiners are taught that the objective of the patent examiner is to “issue valid patents promptly.” In pursuing this institutional interest, each examiner conducts examinations that they independently manage. Although patent prosecutors cannot control an examiner’s decisions, they can establish a context that encourages a favorable outcome. If first and second application drafters each drafted applications to cover the same invention (that met all of the requirements of 35 USC 112) the presentation of the content in the respective applications could engender drastically different examination processes. This is because there is a relationship between the manner in which the content of a patent application is presented and the character of the examination process that follows.

It was a pretty normal week patent filings-wise, with 65 district court complaints and 38 Patent Trial and Appeal Board (PTAB) petitions filed, all inter partes reviews (IPRs). “Frozen Assets Asserted”: I’ve heard of castles built on sand and castles built in the sky, but this patent is about those built of ice—and the apparent cutthroat nature of the niche but seemingly quite profitable business. Ice Castles, LLC, according to them, is a Utah-based “awe-inspiring, must-see winter phenomenon built with hundreds of thousands of icicles that brings fairy tales to life.” Per them, founder Brent Christensen began experimenting with ice buildings as a hobby in the winter of 2009, and the following year, made one for a local resort; he patented his method of making these ice structures, which was granted in 2013. His business flourished, as he started both making ice castles, selling tickets, and leasing and managing other destination locations in other states, including New Hampshire. Well, this week they sued Harbor Enterprises Marketing & Productions, Lester Spear, and Cameron Clan Snack Co. LCC on U.S. Patent 8,511,042, claiming the Maine-based company had constructed an infringing ice castle in Maine in 2021, and charged an admission fee, including multiple photos of the Maine location in their complaint.

A working definition of inertia is the tendency of a body to maintain its state of rest or uniform motion unless acted upon by an external force. As it did in Oil States (S.C. 2018), inertia appears to have played a role in the Supreme Court’s decision in the United States v. Arthrex, in which the central dispute was the remedy to address the unconstitutional appointment of administrative patent judges (APJs). Possible remedies included vacating hundreds or thousands of prior final decisions by unconstitutionally appointed APJs, requiring all APJs to be confirmed by the Senate and then rehear previously-decided reviews, finding the entire statutory structure unconstitutional and handing invalidity/unpatentability determinations back to Article III Courts, removing employment protections for APJs (as the Federal Circuit did), or adding a layer of review so that inferior officers had appropriate responsibility under the Appointments Clause. Faced with these possibilities, the Supreme Court’s holding maintains the inertia of the Patent Trial and Appeal Board (PTAB) and again solidifies its role in patent litigation today.

The Senate Judiciary Committee’s Subcommittee on Intellectual Property on Tuesday heard from four witnesses on the topic of “Protecting Real Innovations by Improving Patent Quality.” The topic has been addressed by the Senate IP Subcommittee before, and long-debated in patent circles generally. Under the leadership of its new Chairman, Senator Patrick Leahy (D-VT), the Subcommittee now seems to be revisiting the conversation and looking for practical fixes.

The Supreme Court issued a split 5-4 decision earlier today, in which a plurality of the Court agreed with the U.S. Court of Appeals for the Federal Circuit (CAFC) that the structure of the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA) has resulted in Administrative Patent Judges (APJs) being unconstitutionally appointed principal officers, but took a different approach than the CAFC to fixing the problem. Some were surprised by the conservative Court’s choice to sever the statute and ultimately hand the United States Patent and Trademark Office (USPTO) Director—a political appointee—power to review final decisions, though it was not surprising that they attempted to fashion a solution that would preserve the PTAB and inter partes review (IPR) system. Justice Gorsuch, in his partial dissent, said that he would have identified the constitutional violation, explained his reasoning, and simply “set aside” the PTAB decision at issue. Instead, said Gorsuch, “Effectively, the Court subtracts statutory powers from one set of executive officials and adds them to another.”

While the decision is not likely to have any immediate impact, it does raise questions about implications down the line, including how the USPTO and its new Director will address the ruling. Below, industry stakeholders consider what the Court did (and did not do) and provide their take on this highly anticipated holding.

The Supreme Court has issued its ruling in Arthrex v. Smith & Nephew, taking a different approach to curing the statute than did the U.S. Court of Appeals for the Federal Circuit (CAFC) in 2019, and ultimately vacating and remanding the case back to the Acting Director of the U.S. Patent and Trademark Office (USPTO). While the CAFC held that the statute could be severed and rendered constitutional by making Patent Trial and Appeal Board (PTAB) Administrative Patent Judges (APJs) removeable at will, the Supreme Court said that remedy was not sufficient. The Court said: “[R]egardless whether the Government is correct that at-will removal by the Secretary would cure the constitutional problem, review by the Director better reflects the structure of supervision within the PTO and the nature of APJs’ duties.”

It seems non-practicing entity (NPE) semiconductor/chip litigation has really come to dominate both the Patent Trial and Appeal Board (PTAB) and the district courts’ dockets this past year. Another average week at the PTAB saw 26 patent filings (five post grant reviews [PGRs] and 21 inter partes reviews [IPRs]), and the district courts saw another heavy week, with 89 new complaints. A slew of IPR challenges on chip patents owned and asserted by Arbor Global Strategies, LLC [Arbor Company, LLP] were instituted; Google, Samsung and LG were denied institution on IPR challenges for five litigation-related patents under Fintiv and a Waco-division Western District of Texas trial date; a slew of IPRs against NPE Bell Semiconductor, LLC [owned by Hilco d/b/a Hilco Global] were instituted; Qualcomm earned a few more institutions against the Vector Capital Corp.-NPE Monterey Research; and Huawei earned institutions against some of the dozen or so patents Craig Etchegoyen’s WSOU entities asserted against them before Judge Albright in the Waco division of the Western District of Texas.

To protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.

Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.

There is a quid pro quo under the U.S. patent laws. In exchange for disclosing her invention, an inventor receives a limited monopoly. Recent developments, however, have made it harder for those in the biotechnology industry to obtain the benefit of this bargain. The written description requirement mandates that a patent specification convey to one of skill in the art that the inventors had possession of their invention as of the day they filed their patent application. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Over the last decade, three areas have proven troublesome in the life sciences.

Gilbert Hyatt was one of many applicants who filed many patent applications shortly before the June 8, 1995 transition point, where patent terms transitioned from being defined based on 17 years from issuance to 20 years from filing. However, he was quite unique in that he was an independent inventor who filed 400 patent applications before this transition point. The vast majority of these applications are still pending – decades after filing. Hyatt asserts that the long pendency is due to bad-faith behavior of the USPTO, while the USPTO asserts that the extended pendency is due to inaction by Hyatt and the complexity of the applications.

Happy Memorial Day week. It was a light week at the Patent Trial and Appeal Board with 20 filings – 18 inter partes reviews (IPRs) and two post grant reviews (PGRs) – but another heavy one for patent filings in district court (96 complaints), driven primarily by a deluge of new IP Edge complaints (I didn’t count it out, but it looks like more than 50) and a single new massive Humira/Abbvie patent-thicket complaint. The Board issued another five or so Fintiv denials, including one over an International Trade Commission (ITC) date, and only a handful of merits denials; it includes one, listed below, where the Board found merit to some minority of the challenged grounds but nonetheless denied after SAS Institute, Inc. v. Iancu for efficiency. The Magnetar Capital-backed Neodron made it to Markman and settled and then filed another round of enforcement actions against new defendants; and there appears to be burgeoning disagreement at the Board itself in just how precedential the Fintiv analyses are, and whether the Board is overreaching its discretion and misreading its own precedent.

Intellectual property (IP) made modern vaccines possible. It took billions of dollars in private and public investments in research and development to be able to create, in record time, multiple viable vaccines to fight the COVID-19 pandemic. The entire world should be celebrating the innovators that continue to push forward with new solutions to problems we will face in the future. This pandemic will end, but there will be another. We should be eternally grateful to have companies like Pfizer, Moderna and Johnson & Johnson that have the capability to create and manufacture vaccines at large scale…. It has been over four months since President Biden’s inauguration. As of yet there has not been a nomination for the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). In addition to running the USPTO, the Director is responsible for advising the President on intellectual property issues. I believe that President Biden would have benefitted from an experienced voice knowledgeable about the dangers of supporting the erosion of property rights during the discussions on whether to support India and South Africa’s proposal to the World Trade Organization to waive IP protections under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

This week in Washington IP news, both houses of Congress remain quiet as the Senate and the House of Representatives enter scheduled work periods. Among policy institutes, however, the Information Technology & Innovation Foundation explores the impacts of “deepfakes” and disinformation on democratic processes, and hosts its seventh Dynamic Antitrust event, which looks at how antitrust regulators can better incorporate the realities of innovation into enforcement activities. The Brookings Institution will look at the positive and negative aspects of President Biden’s recent $100 billion proposal to build out broadband infrastructure across the U.S. Finally, the U.S. Patent and Trademark Office will host its first public roundtable on the agency’s plans to implement the Trademark Modernization Act, and agency historian Adam Bisno will host a webinar looking at licensing activities surrounding the first issued U.S. patent.

Every patent practitioner has faced the same obstacle — a client’s application is assigned to an unfamiliar art unit. This presents two challenges: unfamiliarity with the examiners and unfamiliarity with the application of the law. Here are three proven arguments that overcame Section 101 rejections in AU 3668 from which to draw inspiration.