Posts Tagged: "patent office"

Retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit Paul Michel told registrants of IPWatchdog’s Virtual Patent Masters program taking place today  that the U.S. patent system has been “weakened to the point of being dysfunctional.” This dysfunction has been especially harmful to small businesses and startups, as well as to innovation in the life sciences industry—which we need now more than ever. Asked by IPWatchdog CEO and Founder Gene Quinn whether the coronavirus pandemic may be a wakeup call to those in power about the importance of incentivizing innovation in the life sciences area, Judge Michel noted that experts in the vaccine industry have indicated that China now dominates vaccine research and production. “The current circumstances may shift the thinking of policy makers quite suddenly and quite far,” Michel said. “We definitely are crimping the human health efforts for prevention and cure of symptoms. Let’s hope this really is a wakeup call for our leaders.”

The Federal Circuit on Friday reversed the Patent Trial and Appeal Board’s decision holding certain claims of Personalized Media Communications, LLC’s (PMC’s) U.S. Patent No. 8,191,091 (the ’091 Patent) unpatentable on anticipation and obviousness grounds but affirmed the decision as to the remaining claims. The Court found that the Board erred in its claim construction of one of the claim terms at issue due to its dismissal of the prosecution history. The Board rejected PMC’s reliance on the prosecution history, stating “the prosecution history presents a murky picture as opposed to a clear waiver.” The Federal Circuit disagreed with this approach and found that the prosecution history statements supported PMC’s interpretation and construction of the phrase “encrypted digital information transmission.”

I have often thought of the patent process as being like the car wash near my house – where you pull up to the entrance, to the point where an attendant shouts “neutral!”, and your car is then magically pulled through a defined series of stations until it comes out clean at the other end. The key difference being – the car wash takes five minutes, costs six bucks, and requires no effort. Not so with patents. In a way, the patent system can be seen as a far more rigorous 20-year car wash – beginning from the moment you pull into the patent office by filing your first application, thereby obtaining that all important Filing Date. You are then led along an arduous path of decisions, deadlines, and stages – all with corresponding costs. No matter when and where you might actually obtain a patent along that path, assuming you do at all, you are out the door (i.e., those patents will expire) generally 20 years to the day after you first heard “neutral!”.

Patent applications filed at the European Patent Office (EPO) rose 4% to 181,406 in 2019, driven by substantial increases from Chinese, Korean and U.S. applicants, according to a report published by the Office yesterday. The United States was the number one country of residence of applicants, with 46,201 applications—a rise of 5.5%. This accounted for 25% of all European patent applications. The U.S. was followed by Germany and Japan. Applications from the People’s Republic of China increased by 29.2% to 12,247 putting the country in fourth place, while those from the Republic of Korea grew by 14.1%.

U.S. Government officials have congratulated Daren Tang on his nomination as WIPO Director General. As reported by IPWatchdog yesterday, Tang was nominated to the post by the WIPO Coordination Committee at a vote in Geneva. The nomination is expected to be confirmed by the WIPO General Assembly when it meets on May 7-8, 2020. Tang will then succeed Francis Gurry on October 1, 2020. According to reports from Geneva, Tang won after two rounds of voting. He led the first round with 37 votes out of the 83 members of the Coordination Committee, with the Chinese candidate, Wang Binying, in second place with 19. Tang then secured a clear victory in the second round, with 55 votes to Wang’s 28.

A flash of genius hits like lightning. It shocks you into a superior state of understanding and your entire body buzzes. My flash struck in the summer of 2000, while I was asleep. Then, a New York Times article came out in October 2006 with a picture of the 20-something wunderkind who apparently “experienced an epiphany…an idea that would be worth billions and billions of dollars.”  Standing next to him was my former boss who thought my invention was “brilliant.”

From the time my patent was granted to the time it expires, a company that stole my invention from my hands will have generated over $1 trillion dollars using it. When faced with a patent infringement lawsuit, they weaponized the America Invents Act (AIA), which they lobbied into law, and the Patent Trial and Appeal Board (PTAB) validated their theft.

On February 21, the Patent Trial and Appeal Board (PTAB) issued a pair of institution-phase decisions in inter partes review (IPR) proceedings petitioned by Internet tech giant Google, both of which challenge claims of a patent owned by Virentem Ventures and asserted in a District of Delaware infringement case against Google subsidiary YouTube. Although the PTAB denied institution to one of the IPRs, institution of the other Google IPR threatens each patent claim that has been asserted against variable speed audio/video playback services enabled by YouTube and Google products. With the IPR proceeding instituted, Virentem Ventures is now facing IPR proceedings instituted upon six of its patents asserted against Google in Delaware.

In IPR 2018-01472, brought by Apple Inc., HTC Corporation, HTC America, Inc., and ZTE (USA) Inc. (Apple), the Patent Trial and Appeal Board (PTAB) last week determined all challenged claims of INVT SPE LLC’s (INVT) Patent No. 6,466,563 to be unpatentable as obvious. The ‘563 patent is titled “CDMA [Code Division Multiple Access] Mobile Station and CDMA Transmission Method” and was issued on October 15, 2002. The patent describes an addition of burst data to the end of a transmission “allow[ing] synchronization with the base station apparatus to be maintained,” thus “making it possible to restart communication immediately.” The transmission interval control circuit also “controls the transmission interval of burst data to N times one slot (N: a natural number) at the end of transmission” to conserve power consumption.

Inequitable conduct is practically the stuff of ghost stories among patent practitioners. You must satisfy your duty of candor to the U.S. Patent and Trademark Office (USPTO) or the patent – all the claims – will be worthless. Since Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) ushered in the “but-for” materiality standard, some patent practitioners may have become too complacent and willing to take a chance. Who will find out? A recent decision in Deep Fix, LLC v. Marine Well Containment Co. LLC (S.D.Tx. Feb. 18, 2020) may have patent prosecutors reviewing their files and even filing a request for supplemental examination or two.

On February 12, the U.S. Patent and Trademark Office entered a notice of intent to issue an ex parte reexamination certificate on a patent owned by Opticurrent, LLC, which will confirm all challenged patent claims without any amendments or changes to the specification and drawings. The USPTO’s notice brings an end to a patent battle in which Opticurrent argued that Power Integrations engaged in some unusual gamesmanship to challenge the validity of patent claims asserted against it in district court.

Twenty-two member states of the World Intellectual Property Organization (WIPO), more than 100 organizations, and over 100 individuals have submitted comments and suggestions in response to WIPO’s Draft Issues Paper on IP Policy and AI. The submissions have been posted in the form and in the languages in which they were received on WIPO’s website. The comments will feed into a revised issues paper for discussion at the second session of the WIPO Conversation on IP and AI, which takes place in Geneva in May 2020.

This article relates to key practice pointers for making a claim patent-eligible subject matter according to the U.S. Patent and Trademark Office’s (USPTO’s) October 2019 Patent Subject Matter Eligibility Guidance Update (October 2019 PEG Update). The October 2019 PEG Update expands on the January 2019 PEG (Patent Subject Matter Eligibility Guidance). In view of the continued denial of cases involving patent subject matter eligibility, such as Athena Diagnostics, Inc. v. Mayo Collaborative Services, 915 F.3d 743 (Feb. 6, 2019) by the U.S. Supreme Court, patent practitioners and clients alike need to pay more attention to the issued guidance documents and relevant Federal Circuit case law. Accordingly, one needs to have strategies in place for dealing with compliance of patent claims with 35 U.S.C. § 101.

The patent industry is in the doldrums. While the U.S. economy continues to endure historic, sustained growth, the stock market has skyrocketed, and new services, products, and investments launch every year, patents as an asset class have remained relatively flat for years. In the last decade, at best, patents as assets have shown anemic growth and stagnant value creation. While capital for litigation funding is available and overall U.S. patent grants and holdings continue to rise, patent valuations have not. Some blame the America Invents Act (AIA) and court decisions over the past decade as the reason why the market has not thrived. I disagree. Any effects felt from changes in the law are symptoms of much more systematic problems that must be solved first for patents to fulfill their full potential as valuable investment vehicles. These problems—identified below— won’t be solved by rolling back regulations or reversing opinions and artificially increasing the value of unworthy assets.

If a recent decision denying institution of an inter partes review (IPR) is any indicator, the answer to the titular question seems to be no, the Board does not routinely review a challenged patent’s prosecution history—even when the history includes a prior Board decision construing claim terms at issue in the IPR. In Apple Inc. v. Uniloc 2017 LLC, IPR2019-00753, Paper 7 (PTAB. Sep. 16, 2019), the Board majority denied institution, finding certain claimed subject matter missing from Apple’s prior art—despite the Board’s earlier finding in a prosecution appeal that the very same subject matter was disclosed and obvious based on different prior art. Making the apparent oversight even more remarkable, one member of the Patent Trial and Appeal Board (PTAB) majority had actually authored the earlier prosecution appeal decision.

As an update to my posts from 2017 and 2019, it has now been more than six years since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Still, the IP bar awaits a clear and reliable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none.” The USPTO’s Section 101 guidelines interpreting Alice—and the accompanying 46 examples—have not cleared the confusion, and Alice continues to distract the USPTO, courts, and practitioners from focusing properly on Sections 102 (novelty) and 103 (obviousness). The net effects still being increased cost, lower patent quality, lower patent portfolio valuations, wasted patent reform lobbying dollars and, in many instances, the denial of patent protection for worthwhile software inventions.