Posts Tagged: "patent office"

District court patent filings are back down to roughly double the number of Patent Trial and Appeal Board (PTAB) filings, with 65 new complaints to the PTAB’s 28 new inter partes reviews (IPRs) and one post grant review (PGR). The complaints were driven by the Rothschild entities, adding defendants to existing campaigns, and a fair number of pharmaceutical complaints.

On June 11, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) designated DTN, LLC v. Farms Technology, LLC as precedential. The case involved the parties’ joint motions to terminate two inter partes review (IPR) proceedings following a settlement agreement. The Board held that 35 U.S.C. § 317(b) mandated the filing of collateral agreements referred to in the settlement agreement even though the patent owner and the petitioner were not both parties to the collateral agreements and the collateral agreements did not relate to the termination of the IPRs.

Recently, the USPTO published a Notice of Proposed Rulemaking (NPRM) to change the “Trial Practice at the Patent Trial and Appeal Board,” which is contained in Part 42 of Title 37 of the Code of Federal Regulations. This is the fifth rule change since the Patent Trial and Appeal Board (PTAB) was created and the second of Director Iancu’s tenure. The first rules were issued on September 16, 2012, the one year anniversary of the America Invents Act. David Kappos was Director at the time. The first rules were controversial and heavily biased against inventors.

The U.S. Court of Appeals for the Federal Circuit today reversed a district court decision awarding attorney’s fees to Luv n’ Care Ltd. (LNC) against Munchkin, Inc. The Federal Circuit held that the district court abused its discretion in granting LNC’s motion for attorney’s fees as “LNC’s fee motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional.” The Court also pointed to its recent ruling in Amneal Pharmaceuticals v. Almirall regarding attorney’s fees with respect to Patent Trial and Appeal Board (PTAB) proceedings, though it did not reach that issue in the present case. The opinion was authored by Judge Chen.

On June 4, the U.S. Court of Appeals for the Federal Circuit (CAFC) denied a request by Almirall for attorney fees incurred for work on an inter partes review (IPR) and for work done in connection with a motion before the Federal Circuit in Amneal Pharmaceuticals v. Almirall…. The CAFC explained that it does not appear that it has ‘had occasion to consider to what extent section 285 applies to IPR appeals’ and said that the plain meaning of section 285’s reference to “the court”, suggests that fees should only be awarded if they ‘were incurred during, in close relation to, or as a direct result of, judicial proceedings,’ which did not include USPTO proceedings.

Around $8 billion is set to be spent this year on patent renewals at the top 10 patent offices. That total jumps to a staggering $184 billion due on all currently issued patents across the lifetime of those assets. While some businesses that have significant licensing operations may have to double down on developing and managing their portfolios over the coming years, the vast majority of in-house functions that operate as cost centers might well find themselves coming under increased budgetary pressures should market conditions worsen. 

The World Intellectual Property Organization (WIPO) has published a Revised Issue Paper on Artificial Intelligence and IP Policy. The Revised Issues Paper updates the Draft Issues Paper published in December 2019 with the addition of a glossary and sections on trademarks and trade secrets, and an expansion of the sections covering patents, copyright, infringement and deep fakes. As reported by IPWatchdog in February, WIPO received more than 250 submissions from IP offices, companies, organizations and individuals in response to the draft paper. These have been taken into account in the Revised Issues Paper, which lists a large number of questions (many of them not included in the draft paper) under 16 separate issues.

In March, Chrimar Systems, Inc. filed a petition for certiorari asking the U.S. Supreme Court to decide: 1) whether the Federal Circuit may apply a finality standard for patent cases that conflicts with the standard applied by the Supreme Court and all other circuit courts in non-patent cases, and 2) whether a final judgment of liability and damages that has been affirmed on appeal may be reversed based on the decision of an administrative agency. On April 23, the Court requested a response from ALE USA, Inc., which had waived its right to respond earlier that month. As a result, the deadline for amicus briefs was reset and one more amicus, Baxter International, submitted its brief in support of Chrimar on May 22, followed by ALE’s brief in opposition to the petition on May 26.

In a world of unlimited resources and intellectual property (IP) legal department budgets, all invention disclosures would lead to patent application filings. But this was not the world we lived in prior to the current COVID-19 pandemic, and the pandemic has only further constrained resources for many companies. Separating the wheat from the chaff has always been a prudent part of invention harvesting. Certain disclosures simply do not merit the filing of a new patent application. Other disclosures do merit a filing, and the question then becomes how robust of a filing to draft and how widely and aggressively to prosecute it over time. When a decision is made not to file an application, does the inquiry end there? For most companies it does. But others will consider preparing what is known as a “defensive publication” covering the disclosure.

As businesses and offices prepare to reopen, the United States Patent and Trademark Office (USPTO) shows its ongoing support for innovation and entrepreneurship during the novel coronavirus outbreak. Silver linings for trademark owners and patent applicants are highlighted below. It is an excellent time for trademark owners to file new applications. As noted, the downturn in the number of new applications filed has increased the processing times for marks to reach examination and proceed toward registration.

On July 29, 2019, U.S. patent application serial number 16/524,350 was filed with the U.S. Patent and Trademark Office (USPTO), with the sole inventor identified as artificial intelligence named “DABUS.” The assignee, Stephen Thaler, acknowledged that the invention was made by the creativity machine, without any human input. The USPTO issued a notice of missing parts, requiring identification of each inventor by name. Thaler then petitioned that the missing parts notice be vacated, which was denied, and Thaler petitioned for reconsideration. The USPTO issued its decision on the reconsideration petition on April 29, 2020, again denying the petition and concluding that the patent laws required a natural person as an inventor. The decision asserts that conception is the touchstone of invention, as the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is to be applied in practice. However, this decision is too narrowly focused, and should be reversed by the U.S. Court of Appeals for the Federal Circuit if Thaler appeals the USPTO ruling.

Despite rumors that changes have been made at the USPTO to bring balance to the Patent Trial and Appeal Board (PTAB), a hard look at the data shows that it is business as usual. Astounding numbers of patents continue to be invalidated, despite many superficial changes over the past few years. Several hundred institution decisions have been issued under these changes, establishing a statistically significant sample size for evaluation. Detailed analysis of the data proves that nothing has changed at the PTAB which continues to permit abuse and invalidate an astoundingly high percentage of patents. The “death squad for patents” is as lethal as ever.

There were only 16 new PTAB filings—all inter partes reviews (IPRs)—this week, with a whopping 70 new district court complaints filed.  Those numbers were driven primarily by: 1) frequent filer WSOU’s adding the first of what will likely be a tranche of new complaints (as is their wont) against U.S. manufacturer Dell to their ongoing campaigns against Huawei, ZTE, and Microsoft; and 2) by a sprawling suit on putative 2G and 3G patents by European patent aggregator SISVEL against at least 10 new targets, as well as various small-company disputes and the usual NPE activity.

The Enlarged Board of Appeal (EBA) of the European Patent Office published opinion G 3/19 “Pepper” on Thursday, May 14, holding that plants and animals exclusively obtained by means of an essentially biological process are excluded from patentability. The opinion, which arose via a referral from the EPO President, also set out principles regarding the interpretation of the European Patent Convention (EPC) that could apply in other technical fields. 

The U.S. District Court for the District of Massachusetts on May 4 denied a motion for partial summary judgment by Palomar Technologies, Inc., holding that the estoppel bar relating to inter partes review (IPR) proceedings did not apply to two prior art references that had not been raised in a prior IPR hearing at the Patent Trial and Appeal Board (PTAB). Palomar brought suit against MRSI Systems, LLC in the Southern District of California on July 6, 2015 for infringement of Palomar’s U.S. Patent No. 6,776,327. In October of 2015, MRSI petitioned the PTAB for IPR of all 48 claims of the ‘327 Patent on the grounds of anticipation or obviousness based on five prior art references. The PTAB instituted and ultimately upheld 47 of the 48 claims.