Posts Tagged: "patent office"

It was another business-as-usual week for patent filings in the District Courts and before the Patent Trial and Appeal Board, with 54 suits and 29 petitions (two post grant reviews and 27 inter partes reviews, no covered business method reviews) filed. The Board already cited and relied on the new Apple v. Fintiv case in denying an IPR (filed three months after a complaint was filed) against a Fortress IP subsidiary’s patent; this week also saw a battle between e-cigarette (i.e., vaping) giants, saw another implantable medical device suit against Medtronic, and a surprising number of pet-related patent disputes, including iFetch, LLC and a suit between Pet Qwerks, Inc. and Benebone, LLC.

Since the Supreme Court’s Alice decision in 2014, many patent prosecutors in Industrial & Mechanical Technologies practice groups have been spared the headaches that the decision created for their colleagues in Electrical & Computer Technologies practice groups. So, it came as quite a surprise, perhaps unwelcome to some, when the Federal Circuit decided American Axle v. Neapco, invalidating claims for a method for manufacturing propshafts as being directed to ineligible subject matter under Section 101 of the U.S. Patent Act…. Almost six months later, it appears that Neapco was right, at least when it comes to patent prosecution in the mechanical arts. Indeed, both anecdotal evidence and prosecution data aggregated by Juristat demonstrate that the American Axle decision has not affected the prosecution of mechanical inventions before the USPTO in any significant way.

Whoever wrote the America Invents Act (AIA) left out the U.S. Patent and Trademark Office (USPTO) examiners. The examiner on any given patent at issue in an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) agreed with the patent holder that the patent claims, as amended, were valid. Examiners are specialists, working under Supervisory Patent Examiners (SPEs), who are even more experienced, though in very narrow fields. As such, they knew the state of the art at the time a patent was being prosecuted.

On May 7, the U.S. Patent and Trademark Office (USPTO) published a Notice in the Federal Register regarding the implementation of a new pilot program for COVID-19 related applications (COVID-19 Pilot Program). Under the COVID-19 Pilot Program, the USPTO would grant prioritized examination, similar to the existing Track One Prioritized Examination program, to applications claiming a product or process related to COVID-19, which “must be subject to an applicable FDA approval for COVID-19 use”. Under the program, requests will be granted to qualifying small or micro entity applicants without payment of the typical prioritized examination fees.

The business of the Patent Trial and Appeal Board (PTAB) continues on as most practitioners transition into another month of working from home. Like many courts, the PTAB has adapted its standard practices. For example, the PTAB has transitioned to remote hearings and encouraged remote depositions, but has otherwise continued to advocate for business as usual. The PTAB also appears to be accommodating requested scheduling changes. This article addresses the main highlights from recent PTAB actions to provide practitioners with additional resources as they navigate PTAB practice over the next weeks and/or months.

On May 5, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Uber Technologies, Inc., v. X One, Inc. with respect to one claim limitation and remanded the case to the PTAB to analyze the remaining limitations of the challenged claims in the first instance.  In its decision, the PTAB determined that an asserted limitation of U.S. Patent No. 8,798,593 (the ’593 patent), which is directed to a “Buddy watch application” for a mobile device, was not obvious in view of the prior art.

The America Invents Act (AIA) outlines an adversarial, inter partes, process for reviewing patents and determining their validity. Patent owners deserve a fair process, presided over by entirely neutral decision makers. But AIA trials are corrupted when judges at the Patent Trial and Appeal Board (PTAB) expand the trial proceedings to address invalidity grounds beyond those asserted in the IPR petition. When considering whether appellate review is available to prevent the PTAB from invalidating patent claims based on grounds not asserted in the petition, however, different Federal Circuit panels have arrived at different outcomes.

This week, Patent Trial and Appeal Board (PTAB) filings are back up, with four post grant reviews (PGRs) and 37 inter partes reviews (IPRs), while there were 83 district court complaints; the district court numbers skew high because of the WSOU entities’ proclivity for filing dozens of independent complaints per defendant, as discussed below. This week saw a major suit from PayPal against an online coupon competitor, allegations of abusive demand letter practices by BlackBerry, and even what appears to be a Matrix-themed gag filing in Delaware. Lockdown doesn’t seem to have slowed down suits in the slightest, despite what has been happening in other industries; only time will tell how earnings reports and market dips affect the patent marketplace longterm, though if history is any guide, litigation and patent assertion will likely rise in a recession economy.

The U.S. Supreme Court heard oral arguments in United States Patent and Trademark Office, et al., v. Booking.com B.V., (Case No. 19-46) yesterday, in the High Court’s first ever telephonic hearing. The United States Patent and Trademark Office (USPTO) urged the Supreme Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The Respondent, Booking.com, argued that the primary significance test, rather than the Federal Circuit’s precedent in Goodyear Co. v. Goodyear Rubber Co., holds the answer to the question of how to distinguish between descriptive and generic names, and under the primary significance test, BOOKING.COM is a registerable trademark.

Last week, the United States Patent and Trademark Office (USPTO) issued a decision refusing to vacate a Notice of Missing Parts in U.S. Patent Application No.: 16/524,350 (the ‘350 Application), titled “Devices and Methods for Attracting Enhanced Attention”, for failure to “identify each inventor by his or her legal name” on the Application Data Sheet (ADS). The ADS listed a single inventor with the given name DABUS and the family name as “Invention generated by artificial intelligence.” DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience”. The Application listed Stephen L. Thaler as the Assignee, Applicant and the Legal Representative. The USPTO denied the petition to vacate the Notice of Missing Parts.

Earlier this year, the Patent Trial and Appeal Board (PTAB) established a two-part framework for applying 35 U.S.C. § 325(d), under which the PTAB may deny institution of an inter partes review (IPR) if substantially the same art or arguments previously were presented to the U.S. Patent and Trademark Office (USPTO). This framework injects a degree of rigor into the PTAB’s discretionary Section 325(d) determinations and suggests ways that IPR participants may more effectively raise or resist Section 325(d) arguments. The framework and its practical implications are discussed below.

Recently, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board, holding that the Board correctly determined that the claims 21–24 of U.S. Patent No. 6,754,640 (’640 patent) and claims 1-20 of U.S. Patent 8,768,840 (’840 patent), both owned by Bozeman Financial LLC (Bozeman), are directed to patent ineligible subject matter under 35 U.S.C. § 101. To reach this decision, the Federal Circuit first determined the appellees, all 12 of the United States Federal Reserve Banks (Banks), to be “persons” under the America Invents Act (AIA) and, therefore, eligible to petition for post-issuance review under the AIA. See Bozeman Fin. LLC v. Federal Reserve Bank of Atlanta, No. 2019-1018, 2020 U.S. App. LEXIS 11315 (Fed. Cir. April 10, 2020) (Before Lourie, Dyk, and Moore, Circuit Judges) (Opinion for the Court, Moore, Circuit Judge).  

On April 28, the United States Patent and Trademark Office (USPTO) issued official Patent and Trademark notices announcing that it will be further extending certain patent and trademark deadlines that fall between March 27 and May 31, to June 1, 2020 in accordance with the agency’s temporary authority under the Coronavirus Aid, Relief, and Economic Security (CARES) Act. The notices supersede the notices previously posted by the USPTO on March 31 and March 16, 2020. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, noted that “[i]nnovation and entrepreneurship will play a key role in our fight against this pandemic, and in the upcoming recovery of our country…accordingly, the USPTO continues to assess measures to support the work of inventors and entrepreneurs during this crisis and beyond.”

Is there something in the water this week? While Patent Trial and Appeal Board (PTAB) filings were up slightly (the spike due entirely to 14 new petitions from Comcast against Rovi in their massive ongoing licensing dispute), the district courts—particularly the Texas branches—had a banner week, with 127 new filings—54 of which were filed Friday, April 24 alone. The majority, 31, were filed in Texas courts.
The 54 new complaints included a spate of filings by entities controlled by IP Edge and Leigh Rothschild, more VoIP-PAL suits, and some high-profile standard-essential patent infringement cases by Conversant Wireless against Tesla. They also included 16 new suits filed by a new entity, as described below.

Last week, the USPTO announced a public release of the Patent Center beta that will eventually replace PAIR and EFS-Web while providing improved access to prosecution histories and related data. The Office has always been on the cutting edge of technology for the Federal government. Their electronic filing system (EFS), Patent Application Information Retrieval (PAIR) system, hoteling, and other technology initiatives have put the Office out front of many government agencies. FY2020 Congressional Justification for the USPTO states that it is the responsibility of the USPTO to “foster[] innovation, competitiveness and job growth in the United States by … delivering IP information and education worldwide.” Open access to the U.S. Patent and Trademark Office (USPTO) data is core to the USPTO’s mission and aligns with the Open Data policies of the Federal government generally.