Posts Tagged: "patent office"

Design patents provide powerful protections both on their own and as a complement to their more well-known cousin, utility patents. The highly publicized Apple v. Samsung lawsuits of the previous decade featured both design and utility patents, and revitalized public awareness of design patents in general. In fact, it was infringement of the design patents that resulted in the large damages awards in those litigations, with three design patents resulting in an award of $533.3 million and two utility patents only $5.3 million. Beyond the likelihood of greater money damages, as compared to their utility patent counterparts design patents are also less expensive to obtain and hold, offer simpler determinations of infringement and validity, and are less susceptible to being invalidated (whether, e.g., for non-patent eligible subject matter or via a post-grant procedure). As such, design patents are more likely to survive, potentially resulting in substantial damages for the patent holder.

A quiet week resulted in 28 petitions at the Patent Trial and Appeal Board (PTAB), mostly related to preexisting suits, though with a perhaps surprising number of semiconductor patents challenged, and three Qualcomm challenges to Monterey Research (i.e., Vector Capital) patents were all instituted; in general, the district courts had a light week with 55 patent filings, many complaints adding new defendants for old campaigns. Some of the recently filed complaints in the longest-running Blitzsafe campaign against were dismissed without prejudice against automotive OEMs; and probably most notable, in a Fintiv denial, a panel cited the global pandemic and the uncertainty of trial schedules in weighing that factor neutrally (while still exercising their discretion for other reasons), as discussed below. Sonos hit back with inter partes reviews (IPRs) against Google patents in their ongoing dispute.

Meat substitute technologies and the growing industry based on those technologies have seen significant growth in recent years, from the number of startup companies to the amount of investment money to the industry. This article analyzes the patent protection being sought and obtained by the various companies active in this young industry, taking a “deep dive” into the company patent portfolios with a detailed look into the United States Patent and Trademark Office (USPTO) files of the identified patent applications to understand some of the patent prosecution strategies, successes and problems encountered as the companies seek to protect their technology and investments.

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA). Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.

Last Thursday, May 20, the IP industry lost a leader and a dedicated servant. John Doll, surrounded by family, passed at a hospital in Wake Forest, North Carolina after a prolonged battle with lung cancer. For those who knew Doll personally or professionally, he was in it “to win it,” approaching it scientifically until the end, participating in clinical trials where possible and keeping abreast of new discoveries. In fact, in June of 2020, Doll was selected by the Lung Cancer Research Foundation (LCRF) to share his experience on National Cancer Survivors Day. In his recorded message, Doll spoke directly about the importance of research for drug design and development in treating lung cancer.

The Patent Trial and Appeal Board (PTAB) had the usual 30 or so petitions this week (32, to be exact), with a fair number of procedural denials of concurrently filed petitions (i.e., the one-petition rule from the July 2019 updated Trial Practice Guide). District court patent filings sat at 71, with a significant number of Leigh Rothschild suits adding new defendants

A group of 16 Republican senators sent a letter on Wednesday to U.S. Department of Commerce Secretary Gina Raimondo and U.S. Trade Representative (USTR) Katherine Tai denouncing the Biden Administration’s “disastrous decision” to support a proposal at the World Trade Organization (WTO) to waive intellectual property (IP) rights for COVID-19-related inventions and products.  The letter explains that the waiver is not limited to vaccines and “will do nothing to end the pandemic,” but will instead “undermine the extraordinary global response that has achieved historically remarkable results in record time and our nation’s global leadership in the technologies, medicines, and treatments of the future.”

Senate Majority Leader Chuck Schumer (D-NY) this week filed the United States Innovation and Competition Act of 2021 as a substitute amendment to the Endless Frontier Act, thereby bringing that bill together with a number of other bipartisan bills, including the Inventor Diversity for Economic Advancement (IDEA) Act, which passed out of the Senate Judiciary Committee last month. The IDEA Act is aimed at improving the U.S. Patent and Trademark Office’s (USPTO) demographic data-gathering efforts to better understand the rates at which women, people of color, and lower-income individuals are inventing and patenting. The Innovation and Competition act is primarily aimed at out-competing China in critical technology sectors.

A large number of patent applications are rejected in the initial stage of filing via the Patent Cooperation Treaty (PCT) route. One of the most common reasons for such a rejection is an error in the drawings appended to the patent applications. Notably, patent drawings not only enhance the visual appeal of an invention but also help in better understanding the invention. As per the PCT guidelines, patent drawings should be included wherever applicable. This implies that it is essential to submit the appropriate formal patent drawings with a patent application. Failure to do so can result in patent rejection followed by an office action (OA) from the designated patent examiner. But here are the two key steps for overcoming rejections received on PCT drawings.

In response to our recent article on artificial intelligence (AI) reducing transactional costs to help determine infringement and invalidity determinations, a commenter made an interesting counterpoint, paraphrased as the following: AI provides useful tools that should be used as an aid to human thinkers, not as a replacement to human thinking. Moreover, when it comes to AI making subjective determinations, such as obviousness or novelty, we should be skeptical of relying on AI, either legally or practically. We appreciate the counterpoint and we wanted to address it in this follow-up article.

In celebration of last month’s World IP Day, Senate Judiciary Committee Intellectual Property Subcommittee Chairman Patrick Leahy expressed his support for a determined effort to encourage more individuals and small companies across this country to invent new technologies and products. He also noted the need for the U.S. patent system to incentivize this effort. The Alliance of U.S. Startups and Inventors for Jobs (USIJ) strongly supports Chairman Leahy’s important objective of empowering startups and inventors, and we frankly think it has been underappreciated for many years…. However, we are concerned with one point raised by Senator Leahy without providing much detail – that the prior Administration took “steps to undermine the Leahy-Smith Act.”

On May 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board (PTAB/ Board) in an inter partes review (IPR), holding the PTAB properly construed the claim language.

In April 2018, Apple Inc. filed a petition for IPR, alleging that all 25 claims of U.S. Patent No.  8,539,552 (“the ‘552 patent”) owned by Uniloc 2017 LLC were unpatentable. Apple Inc. v. Uniloc 2017 LLC, No. IPR2018-00884, Petition at 1 (P.T.A.B.). During the IPR, the PTAB held claims 1-17 and 23-25 of the ‘552 invalid for obviousness in view of U.S. Patent No. 6,324,279 (“Kalmanek”). Uniloc then appealed the decision. On appeal, Uniloc argued that the Board’s decision to invalidate the claims of the ‘552 patent resulted from an erroneous construction of a claim term. In its cross-appeal, Apple argued that the PTAB erred in holding that Apple failed to show the remaining claims of the ‘552 patent, claims 18-22, would have been obvious in view of Kalmanek. The CAFC upheld the PTAB on all issues.

After almost 200 district court patent filings last week, things settled back into their recent rhythm, with an average 66 district court complaints (including some “Schedule A” brand anti-counterfeiting complaints) and 28 Patent Trial and Appeal Board (PTAB) petitions filed (all inter partes reviews [IPRs]) this week. There were no IP Edge or Rothschild complaints this week, after last week’s busy filings. There were no Fintiv denials again this week; the PTAB petitions included three IPRs filed by Microsoft against Daedalus Blue LLC against patents originally assigned to IBM (more below), as well as various patents related to ongoing challenges (like the rolling Lasik J&J/Alcon fight), more fracking IPRs, more Peloton-related challenges (those bikes make big bucks!), and a curious rechargeable-battery suit between a Taiwanese U.S. patent holder and a U.S. rechargeable battery company based in Michigan, A123 Systems, LLC. Those batteries are supplied to NEC and other device manufacturers, so what looks at first blush like a small suit probably is set to have broader implications. Nokia had a Google challenge denied, and two Ideahub [Synkloud] challenges by Microsoft were denied as well, on the merits; and more Uniloc/Fortress IP claims were cancelled on final written decision.

Last week, the European Patent Office (EPO) announced six U.S. researchers as finalists for the European Inventor Award 2021. The EPO began the prestigious European Inventor Award in 2006 to honor individual and teams of inventors in five categories, i.e. Industry, Research, SMEs, Non-EPO countries and Lifetime achievement. The finalists and winners are selected by an independent jury of experts in the fields of business, politics, science, academia and research. In addition, a Popular Prize is awarded based on a public vote wherein the public selects a winner from among 15 finalists through online voting. U.S. researcher Gordana Vunjak-Novakovic was nominated for a lifetime achievement award for devoting her career to “developing an ex vivo tissue engineering technique for more precise tissue cultivation.” The remaining U.S. finalists were nominated in the “Non-EPO countries” category. In particular, Kim Lewis and Slava S. Epstein were nominated for their development of a device for separating and incubating single strains of bacteria in nature, Sumita Mitra was nominated for pioneering use of nanotechnology in dentistry, and Bo Pi and Yi He were nominated for developing the first fingerprint sensor capable of detecting both a fingerprint’s pattern and the presence of blood flow.

At the quarterly meeting of the Patent Public Advisory Committee (PPAC) on Thursday, Acting U.S. Patent and Trademark Office (USPTO) Director Drew Hirshfeld told attendees that patent filings are presently down 3.9% compared to the same time last year; the Office had projected filings would be down 3.7% for the year in the wake of the pandemic, but since filings have been coming in at a greater rate than expected in the last two months, the models now predict an overall 2% decrease for the year instead.