Posts Tagged: "patent office"

Numerous letters have been submitted to the U.S. Patent and Trademark Office (USPTO) in recent weeks regarding the Office’s decision to retire Private PAIR and EFS-Web, the two main software systems used by patent applicants, on November 8. The organizations are urging the agency to delay the transition due to numerous bugs and missing features. Groups that have weighed in so far include the American Intellectual Property Law Association (AIPLA), the National Association of Patent Practitioners (NAPP), the Patent Center Listserv, Patent and Trademark Attorney, Agents and Applicants for Restoration and Maintenance of Integrity in Government (PTAAARMIGAN), and hundreds of individual patent professionals.

It was another slow week for patent filings at the Patent Trial and Appeal Board (PTAB) and a typical week in district courts, with 52 district court complaints filed and 22 new PTAB petitions. There was a new discretionary denial, a bunch of litigation-provoked high-profile PTAB challenges, and some notable new litigations. There was another Fintiv discretionary denial this week: here, a Chinese patent owner, Ningde Amperex Technology Ltd., benefited from the Board’s discretionary denial rules in a petition brought by another Chinese battery company. The case, IPR2023-00585, leaves unaddressed the questions raised about the validity of U.S. Patent 11329352.

An interesting tale of intrigue and woe is being written in the decade-long relationship between Google and Sonos. The most recent chapter ended with the district court finding the Sonos patents at issue in their patent litigation against Google were unenforceable due to laches because Sonos had the audacity to file a continuation and seek claims supported by—and actually incorporated from—an earlier filing. According to the district court, because Sonos could have filed those claims in the continuation earlier, that created a laches defense for Google.

Gene Quinn and I have collectively been teaching patent bar prep for almost 60 years! In that time, we’ve had contact with many career-bound patent people. All had, without exception, a background in the sciences or engineering, or both. The list of qualifications has, over the years, been expanded as technology has expanded. In years gone by, degrees in Biology and Computer Science would not have qualified you to sit for the U.S. Patent and Trademark Office (USPTO) Registration Exam, but now they do, along with many other intersectional STEM qualifications, including, for the first time, advanced degrees in these disciplines. Good, I say. The more the merrier.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision holding that a Delaware district court erred in its claim construction of a term with respect to Malvern Panalytical, Inc.’s patents. Specifically, the CAFC said the district court erred by relying heavily on the patent prosecution history statements for a related patent that had been cited in the information disclosure statement (IDS) during supplemental examination of one of the patents-in-suit to inform its construction of the term in question.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an Order last week in a sua sponte Director Review proceeding asking the parties to Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC and any interested amici to weigh in on the appropriate sanctions remedy when a party withholds evidence in an America Invents Act (AIA) proceeding.

On October 26, a panel majority of the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a pair of final written decisions at the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by Monterey Research and covering improved static random access memory (SRAM) cell designs. Dissenting from the majority was Circuit Judge Timothy Dyk, who believed that both the Board and CAFC panel majority erred by concluding that claim amendments made during reexamination did not differentiate the claims from asserted prior art references.

Startups often face many competing pressures. Two such pressures that are frequently at odds with each other are the need to adequately protect the intellectual property that will be the basis for future revenue and investment, and the need to bring such revenue and investment into the business to allow for continued technology development and commercialization. Many startups are aware of how the on-sale bar interacts with these pressures and the associated need to file patent applications on any technology prior to offering or placing it on sale. However, fewer startups are aware of the public-use bar and how activities pursued with the goal of growing their businesses may unwittingly invoke it.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling finding that it is ultimately the petitioner’s burden to clearly present arguments in an inter partes review (IPR), and that Netflix failed to do so in challenging the relevant claims of DivX’s streaming technology patents. Judge Dyk dissented from the majority.  

On October 23, the U.S. Patent and Trademark Office’s (USPTO) Office of the Chief Economist (OCE) published a report detailing patent application filing trends at the USPTO related to COVID-19 diagnostics technologies. The OCE found that filing activity surged following the arrival of the novel coronavirus in early 2020, with much of that increase driven by small companies and research institutions. The report found further evidence suggesting that federal funding had a significant impact on driving innovation into COVID-19 diagnostics at small R&D entities.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued two opinions today on appeals from a total of six inter partes review (IPR) decisions, affirming two of the decisions and dismissing the remaining four as moot. In the first decision, the CAFC affirmed the Patent Trial and Appeal Board’s (PTAB’s) finding in IPR2018-00874 that certain claims of Team Worldwide Corporation’s U.S. Patent 7,246,394, which is directed to an inflatable product, like an air mattress, with a built-in pump, were shown to be unpatentable as obvious. Because of that affirmance, the holdings in IPR2018-00872 and IPR2018-00873, from which Intex appealed, and the holdings in IPR2018-00870 and IPR2018-00871, from which Team Worldwide also cross-appealed along with its cross-appeal of the ‘874 decision, were rendered moot.

Innovation has been the driving force behind our country since its inception. So much of our nation’s success has flowed from U.S. ingenuity and innovation. Yet much remains to be done on this front. Indeed, in a few short years, we will be celebrating the Semiquincentennial (also called the Sestercentennial)—250 years since the signing of the Declaration of Independence. We need the same approach moving forward, and we have the opportunity to do so with pending legislation, which brings me to a chance to reflect on some important questions of intellectual property and innovation policy.

On October 16, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Corephotonics, Ltd. v. Apple Inc. affirming most of a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated dual-aperture camera system patents owned by Corephotonics. The Federal Circuit nixed the patent owner’s arguments that asserted prior art references were not analogous art but remanded to the PTAB for further explanation of its ruling, as the Board may have misconstrued the pertinent problem addressed by one reference.

This week in Washington IP news, Congress returns from its district work period with the House holding several meetings related to IP and innovation. The House Subcommittee on Courts, Intellectual Property, and the Internet holds a hearing on IP competition with China and another subcommittee discusses safeguarding data in the growing AI industry. Elsewhere, IPWatchdog is hosting its Life Sciences Masters™ program in Ashburn, VA, and the U.S. Patent and Trademark Office hosts a panel discussion for its ongoing Women’s Entrepreneurship (WE) program

On October 10, the U.S. Supreme Court issued an order list showing it had denied the petition for writ of certiorari filed in Personalized Media Communication, LLC v. Apple Inc. In denying the appeal, SCOTUS leaves in place a divided Federal Circuit ruling that improperly expanded prosecution laches doctrine according to Personalized Media (PMC). The cert denial also passes on the question of whether prosecution laches remains a valid defense to patent infringement in light of the Supreme Court’s 2017 ruling in SCA Hygiene Products v. First Quality Baby Products.