Posts Tagged: "patent office"

It was a relatively light week in the district court compared with recent memory, with 56 new complaints filed; the Patent Trial and Appeal Board (PTAB) is holding steady with 27 filings (all inter partes reviews [IPRs] this week), a number nearly identical to the totals for the past few months. The District Court activity was driven by new complaints in existing campaigns, some new ANDA/aBLA litigations related to pharmaceutical generic entry, a smattering of company disputes, and a new campaign by Raymond Anthony Joao. At the Board, a trickle of petitions filed as part of ongoing licensing disputes between Dolby and Intertrust, some further challenges in the funded Neodron suits, some further filings by Verzion against Huawei, and a number of petitions in response to non-practicing entity (NPE) suits made up the balance.

In the United States patent system, patent applications are handled by two separate, yet equally important, groups: the patent practitioners, who prepare and prosecute applications on behalf of inventors or their assignees; and the patent examiners, who examine the applications for the United States Patent and Trademark Office (USPTO) for patentability under U.S. patent law. Ryan Potts worked at the USPTO for over seven years, including several as a primary examiner, before joining Lando & Anastasi. Rob Lichter worked at the USPTO as a junior patent examiner before becoming a law firm associate. The following is a list of tips and insights to understanding and interacting with U.S. patent examiners.

The Dana-Farber Cancer Institute last week had its district court win affirmed when the Federal Circuit upheld a decision that two of the Institute’s researchers must be added as co-inventors on several patents relating to advancements in cancer treatment. The Court ruled that the United States District Court for the District of Massachusetts did not err in its determination that Dr. Gordon Freeman and Dr. Clive Wood should be added to the patents, and said that the appellants’ arguments would require the Court to “adopt an unnecessarily heightened inventorship standard.” Ono Pharmaceutical Co. Ltd., Tasuku Honjo, E.R. Squibb & Sons, L.L.C., and Bristol-Myers Squibb Co. (collectively, “Ono”) appealed the district court’s ruling.  

The time is upon us when young patent professionals, many of them fresh out of law school (or out of engineering school) begin their professional lives as patent prosecutors. These new members to our profession quite naturally look to senior patent professionals for practical guidance. The guidance often is in the form of adages that form the Conventional Wisdom of patent prosecution. Much of this Conventional Wisdom, as it turns out, is often not very practical and some of it is not all that wise. In most cases, the Conventional Wisdom is not exactly wrong; it’s just that there may be other ways of doing things that may be more practical or effective for a particular practitioner. I’m going to talk about some pieces of Conventional Wisdom that I received that turned out to be, well, not-all-that-helpful advice. I will share what advice I would offer in its place.

On June 30, New Vision Gaming & Development filed a corrected appellant brief with the U.S. Court of Appeals for the Federal Circuit challenging two covered business method (CBM) reviews conducted at the Patent Trial and Appeal Board (PTAB) which canceled all claims of New Vision’s patents covering a gaming invention. Among other things, New Vision argues that the PTAB is constitutionally flawed, that its structure creates financial incentives for administrative patent judges (APJs) to grant validity reviews in a way that destroys due process for patent owners, and that the PTAB’s APJs have neither the judicial independence nor the oversight of Article III courts necessary to address the impermissible appearance of bias at that tribunal.

It was a banner week in the district courts, with 110 new filings, and the filings are showing signs of picking up—rather than slowing down—amidst the COVID pandemic.  Most of that, however, was driven by vape company Juul Labs, Inc.’s filing of some 39 new district court complaints.  An average 28 PTAB cases filed, all inter partes reviews this week, included the usual suspects—parties filing against the sprawling Neodron, Soundview, and Solas OLED campaigns, as well as medical device, battery, and streaming service competitor fights.

On July 8, the United States Court of Appeals for the Federal Circuit (CAFC), in Fitbit, Inc. v. Valencell, Inc., vacated a Final Written Decision of the United States Patent Trial and Appeal Board (PTAB) in an appeal from an inter partes review (IPR) of U.S. Patent No. 8,923,941 (the ’941 patent). In particular, the CAFC held that the PTAB erred in failing to consider the patentability of claims 3-5 of the ‘941 patent when determining that the claims were not unpatentable. Thus, the CAFC vacated the PTAB’s decision and remanded for consideration on the merits of patentability.

This morning, the United States Patent and Trademark Office (USPTO) announced that Secretary of Commerce Wilbur Ross reappointed Commissioner for Patents Drew Hirshfeld for a second five-year term. Commissioner Hirshfeld’s original term was set to expire this month. Hirshfeld began his career with the USPTO in 1994 as a Patent Examiner, became a Supervisory Patent Examiner in 2001, and was promoted in 2008 to Group Director in Technology Center 2100 (Computer Architecture Software and Information Security).

The USPTO’s recent landmark decision (16/524,350) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an AI identifies new, more efficient battery chemicals, will that new battery be unpatentable? If an AI builds chemical compounds that become the next wonder drug, will that drug-maker…

On July 7, the U. S. Court of Appeals for the Federal Circuit (CAFC), in In re: Boloro Global Limited, granted a motion by Boloro Global Limited (Boloro) to vacate and remand the decisions of the Patent Trial and Appeal Board (the Board) in three ex parte appeals that affirmed an examiner’s rejection of claims of Boloro’s patent applications. Each of Boloro’s U.S. Patent Applications Nos. 14/222,613, 14/222,615, and 14/222,616 were rejected by the patent examiner as being unpatentable under 35 U.S.C. § 101. On appeal, the Board affirmed the examiner’s rejections and denied rehearing. In August 2019, Boloro appealed the decisions to the CAFC. Subsequently, in October 2019, the CAFC issued a decision in Arthrex, Inc. v. Smith & Nephew, Inc., which was an appeal from an inter partes review, holding that administrative patent judges (APJs) were not constitutionally appointed.  In January 2020, Boloro filed a motion to vacate the Board’s decisions and remand for further proceedings consistent with the CAFC’s decision in Arthrex.

It was another relatively normal week at the Patent Trial and Appeal Board with 30 patent filings—two post grant reviews (PGRs), 28 inter partes reviews (IPRs)—and another big one in district court with 98 new petitions—but yet again, that spike is largely driven by WSOU’s unusual filing pattern. WSOU has now sued Google on 15 separate patents, all covering different software aspects of various products, and single patent suits—the former Uniloc contingent continues to drive the numbers up, and continues to favor the Western District of Texas to do so. Some of the petitions challenging the Magnetar Capital-backed Neodron were instituted this week, the same week a tranche of Magnetar’s Data Scape patents were affirmed unpatentable on Section 101 before the Federal Circuit; further Bausch & Lomb abbreviated new drug application (ANDA)-related suits were filed as discussed last week; and new and old-hand IP Edge subs continue to file at a brisk clip.

On July 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a holding of the U.S. District Court for the District of New Jersey in Immunex Corporation, Amgen Manufacturing, Limited, Hoffman-La Roche Inc. v. Sandoz, Inc., Sandoz International GMBH, Sandoz GMBH, holding that Sandoz failed to prove that the asserted claims were invalid for obviousness-type double patenting (ODP), failure to meet the written description requirement, and obviousness for lack of motivation to combine the prior art references. The ruling for now blocks Sandoz from marketing its biosimilar version (Erelzi) of the popular rheumatoid arthritis drug, Enbrel. Judge Reyna dissented, arguing that certain clauses of the licensing agreement were illusory, thereby rendering the agreement an effective assignment for purposes of ODP.

When it comes to patents, timing matters. If two inventors are working on the same invention, it is the one who races to the patent office first that gets the brass ring. Perhaps the most famous example of a “patent race” is when Alexander Graham Bell and Elisha Gray both filed a patent for the telephone on the same day. Bell won the patent, started a successful company, and is now synonymous with the telephone, while few people remember Gray. For years, economists have used patent races as the quintessential example of how firms innovate in the presence of competition. But these discussions are usually only grounded in theory. To gain more insight on how this plays out in the real world, Jeffrey Kuhn and I created the first way to identify patent races—and we used it to analyze the effect of patent racing on innovation.

On June 26, the U.S. Court of Appeals for the Federal Circuit affirmed a final written decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board in B/E Aerospace v. C&D Zodiac, Inc.  In particular, the CAFC affirmed the PTAB’s conclusion that the asserted patent claims would have been obvious because a modification of the prior art was nothing more than a predictable application of a known technology and because a modification would have been common sense.

I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification system plays an important role in determining which Art Unit is assigned an application? And you probably thought you could forget about class 705! Not so fast! A sparsely populated technical disclosure in the specification with an inartful claim set is still a recipe for characterization in class 705, which still must be avoided at all costs if possible.