Posts Tagged: "patent office"

Two weeks before the Transitional Program for Covered Business Method Patents (CBM) Program, implemented in 2012 under the America Invents Act (AIA), is set to expire, a special interest group dubbed the “Quality Patents Coalition”, is reportedly urging Congress to extend the program for one year. The CBM program is currently set to expire on September 16, 2020. In June, in response to reports of the imminent request for an extension, a number of organizations submitted a letter to Senator Thom Tillis (R-NC) arguing that “CBM should expire of disinterest, if not to eliminate a proceeding of questionable use, of illegitimate vintage, and of unjust intent.”

District court and Patent Trial and Appeal Board (PTAB) patent filings were steady this past week, with 31 PTAB petitions and 78 new district court complaints. Many of those PTAB filings were part of the Lenovo/Interdigital spat, with the device maker filing challenges. The district court filings were propped up by a significant number of IP Edge suits, as detailed below; and Facebook challenged (so far) four of six patents asserted against them by a streaming media platform company for (effectively) their conferencing software/ability.

U.S. Patent and Trademark Office (USPTO) Director, Andrei Iancu, joined day one of Virtual CON2020 today to chat with IPWatchdog CEO and Founder Gene Quinn about topics including counterfeiting, Chinese IP theft, and the continued confusion in the courts and at the Patent Trial and Appeal Board (PTAB) around patent eligibility. On the topic of Section 101 and patent eligibility, Quinn lamented the recent American Axle decision, wondering if the holding that an invention involving a drive shaft could be considered directed to a law of nature represents a broader and growing disrespect for intellectual property. Iancu could not comment on the case itself, but said that with respect to the basic principle, “you’re absolutely right.

The United States Patent and Trademark Office (USPTO) recently announced the COVID-19 Prioritized Examination Pilot Program, under which the USPTO will advance certain patent applications related to COVID-19 “out of turn,” resulting in prioritized examination for qualifying applications. Under this program, the USPTO reportedly aims to provide final disposition of qualifying applications within one year of the filing date, meaning that a final office action or notice of allowance will be mailed (or a notice of appeal will be filed) during this shortened one year timeframe. For comparison, it typically takes the USPTO roughly 16 months from the filing of an application to mail a first office action.

District court patent filings and filings with the Patent Trial and Appeal Board (PTAB) were relatively subdued this week, with 53 new complaints and 31 PTAB filings; the PTAB filings were puffed up by L&L Candle Company firing off three IPRs against Sterno company, three diaper IPRs dropped on Paul Hartmann AG, and Qualcomm IPRs as outlined below; the district court saw the typical activity, plus a pro se PTA suit and a few further complaints from frequent and longtime litigants Gil Hyatt and Lakshmi Arunchalam.

On August 13, Sand Revolution LLC filed a petition for writ of mandamus with the U.S. Court of Appeals for the Federal Circuit. The petition asks the Federal Circuit to decide whether U.S. District Judge Alan D. Albright of the Western District of Texas abused his discretion to deny a motion to stay district court proceedings pending completion of an instituted inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB). A look at the underlying circumstances of Sand Revolution’s petition shows that this case, which began as a patent squabble between two competitors in Texas’ hydraulic fracturing industry, is becoming a legal showdown between the right of patent owners to a jury trial in Article III courts and the fate awaiting those patent owners once they’re trapped at a PTAB that is arguably riddled with constitutional due process problems.

On August 20, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s dismissal of an appeal from the United States Patent and Trademark Office’s (USPTO) Patent Trial Background Appeal Board (PTAB) in Security People, Inc. v. Iancu. In particular, the CAFC held that the district court’s dismissal of the suit was correct because Congress “foreclosed the possibility of collateral APA [Administrative Procedure Act] review of inter partes review decisions by district courts, and because Security People [could not] bring an APA challenge when the statutory scheme separately establishe[d] an adequate remedy in a court for its constitutional challenge.”

I recently had the opportunity to conduct an interview with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, via WebEx. The focus of our conversation was the COVID-19 pandemic: USPTO efforts to work with stakeholders, the role of intellectual property in finding cures and treatments, and general thoughts relating to what the Office is observing. Our conversation also veered into Bayh-Dole and the the letter just sent by three-dozen state Attorneys General asking the federal government to use march-in rights against Remdesivir.

Even patent litigants take vacations (or staycations, this year). Whether it’s because it’s August and the temperatures were topping 90 degrees in the District, or because lawyers were busy juggling the start of the grand remote learning experiment as the school year started, patent filings were at their lowest in months—with just 39 new district court complaints (a number itself propped up by a slew of new WSOU complaints, adding HP Inc. and HPE to the ever-growing party) and 28 new Patent Trial and Appeal Board (PTAB) filings, a number of which were filed by drone company DJI against a tranche of IBM-originating patents.

Activity surrounding the requests for the Supreme Court’s review of the holdings in Arthrex v. Smith & Nephew I and Arthrex v. Smith & Nephew II continues to increase. As outlined in “A Guide to Arthrex: Activity Heats Up in Petitions Pending with Supreme Court”, four petitions for writs of certiorari have been filed:  U.S. v Arthrex, No. 19-1434, Smith & Nephew v. Arthrex, No. 19-1452, Arthrex v. Smith & Nephew, No. 19-1458, and Arthrex v. Smith & Nephew, No. 19-1204.  Now, three more amicus briefs have been filed by US Inventor, TiVo and Comcast, and on July 27, an additional consolidated petition for certiorari filed by the U.S. Government and USPTO Director Andrei Iancu asked the Court to review 39 Federal Circuit rulings affected by Arthrex.

This week, the district courts saw 77 new complaints—though at least 10 are re-filings of Uniloc v. Google cases being transferred from the Eastern District of Texas to the Northern District of California by stipulation, somewhat inflating the numbers, leaving us with a relatively low filing rate of 66 bona fide new complaints this week. The Patent Trial and Appeal Board (PTAB), for its part, saw 36 filings, driven up in part by a half-dozen petitions from LEGO® and Warner Bros. against assertion vehicle MQ Gaming, LLC.

Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief. Thus begins an ex parte appeals process in which a panel of at least three administrative patent judges (APJs) considers patentability of the rejected claims. Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves. To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.

On August 3, inventor advocacy group US Inventor filed an amicus brief with the U.S. Court of Appeals for the Federal Circuit in support of a due process argument raised in an appeal from the Patent Trial and Appeal Board (PTAB) by New Vision Gaming & Development. US Inventor’s brief raises two major points in support of New Vision’s contention that the financial incentive structure for administrative patent judges (APJs) destroys due process at the PTAB. First, the brief details data that proves the existence of an “October Effect,” which leads to inflated rates of petitioner-friendly PTAB trial institutions in response to the APJ performance review cycle at the USPTO. Second, the brief argues that APJ performance review criteria are inherently subjective in a way that incentivizes APJs to make pro-petitioner decisions to please supervisors who have budgetary responsibilities. Taken together, US Inventor contends that these factors would lead a reasonable person to question “whether the PTAB invalidates patents so frequently because its constituent APJs try to please their budget-minded bosses through revenue-enhancing decision making.”

This week, district courts saw 91 new complaints, a large portion filed by IP Edge subsidiaries, such as Karetek Holdings, LLC; Guada Technologies; Tunnel IP, LLC; Altair Logix, LLC; Coretek Licensing, LLC; and Raindrops Licensing, LLC, with the rest being Intellectual Ventures selloffs, company-to-company disputes (like the Skull Shaver, LLC v. Freedom Grooming design patent case), and some pharmaceutical filings.

There were 17 discretionary denials under Section 325; 41 PTAB petitions filed—one post grant review (PGR) and 40 inter partes reviews (IPRs)—a number buttressed largely by Amazon filing seven IPRs against VB Assets, LLC – an assertion vehicle apparently spun out of AI-voice company, VoiceBox, after Nuance purchased them last year – as well as Samsung filing five IPRs against Clear Imaging Research, LLC, an entity run by the former co-founder of Soryn IP. This was rounded out by a five-IPR battle between Monolitic Power Systems and Volterra Semiconductor over licensing semiconductor technology.

In Article 1, Section 8, Clause 8, of our Constitution, the founders were relatively specific. The founders give Congress power to secure “the exclusive Right” to “Authors and Inventors” in the “Writings and Discoveries”. Congress is given  specific direction on how to do it (i.e., “for Limited Times”), and why it should be done (i.e., “To promote the Progress of Science and useful Arts”). Unfortunately, the Leahy-Smith America Invents Act (AIA) of 2011 dramatically changed how the Executive branch implements the Constitutional prerogative.  The AIA transferred power constitutionally allocated to the judicial branch to the executive branch – specifically, to Administrative Patent Judges (APJs) in the USPTO. In the process of implementing the Patent Trial and Appeals Board (PTAB) on which the APJs sit, judicial independence, judicial ethics, rules of evidence, and other protections commonly afforded rights holders in disputes adjudicated by the federal judiciary were sacrificed in the name of expediency.