Posts Tagged: "patent"

US Inventor Arguments for Opposing the Pride in Patent Ownership Act Fall Short on the Merits

Last September, a bipartisan pair of Senators introduced the Pride in Patent Ownership Act, which, if passed, would add greatly-needed transparency to our patent system. The legislation would require patent owners to disclose their identity to the U.S. Patent and Trademark Office (USPTO) when a patent issues and whenever it changes hands so that members of the public have easy access to information about who the true owners of patents are. Right now, inventors, businesses, and other interested members of the public often have to undertake time consuming and expensive litigation to determine who owns a patent. As Senator Thom Tillis (R-NC) rightly pointed out when introducing the legislation, “Patents provide a limited term monopoly against the public, and it’s in the public’s interest and benefit to know who owns that monopoly.”

CAFC Says Burden of Reexamination Following Denied IPR Does Not Warrant Mandamus Relief

The U.S. Court of Appeals for the Federal Circuit (CAFC) last week denied a petition requesting mandamus relief to vacate the U.S. Patent and Trademark Office’s (USPTO’s) grant of a request for ex parte reexamination of Sound View Innovations’ U.S. Patent No. 6,708,213 by DISH Network LLC. The ‘213 patent covers a “Method for Streaming Multimedia Information Over Public Networks.” DISH originally petitioned the USPTO for inter partes review (IPR) of claim 16 of the ‘213 patent on the ground that it was anticipated and/or obvious based on two prior art references called Sen and Geagen.

How French and California Contract Law Would Interpret SEP Patent Owner Obligations Under the ETSI Licensing Declaration

In the United States, the issue of whether or not one has complied with a licensing-related commitment made to a standards setting organization is often treated as a matter of contract. As we have written about before (here and here), some implementers wish to interpret such commitments so as not to lose entitlement to fair, reasonable and non-discriminatory (FRAND) licenses despite not negotiating in good faith or, as we like to say, to have their FRAND cake and eat it too. In a recently prepared article, we explore how such an interpretation lines up with basic contract law principles, particularly having reference to the language of the European Telecommunications Standards Institute’s (ETSI) Intellectual Property Rights Information Statement and Licensing Declaration [“the ETSI Licensing Declaration”].

OpenSky: ‘There Was No Harm’ Stemming From Offer to Manipulate VLSI Proceedings

On November 17, patent owner VLSI Technology and petitioner OpenSky Industries each filed briefs at the U.S. Patent and Trademark Office (USPTO) in response to Director Kathi Vidal’s order for OpenSky to show cause as to why it should not be required to pay attorney’s fees to compensate for its abuse of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). While VLSI argues that OpenSky should be ordered to compensate all attorney’s fees and costs incurred from each IPR petition encouraged by OpenSky’s own petition filing activities, OpenSky argues that Director Vidal’s order to show cause fails to identify any compensable harm stemming from OpenSky’s IPR conduct.

How to Ensure Your Retroactive Foreign Filing License Petition Isn’t Dismissed

As outlined in our article, The Good, the Bad and the Missing: Findings from a Review of the Data on Granted Retroactive Foreign Filing Licenses, Petition.ai’s subscribers’ most searched patent petition type is for retroactive foreign filing licenses (RFFLs). In the article, we highlighted that 71% of applications petitioning the U.S. Patent and Trademark Office (USPTO) for a RFFL eventually are granted. On average, it took 2.3 RFFL petitions over 1.4 years before obtaining the granted petition. We also pointed out 84% of granted RFFL petition decisions could not be found in the Public PAIR’s Image File Wrapper (IFW). Several months after we published the article, and after several communications with the Office of Petitions, these granted decisions were finally published in the IFW. This article examines the most common reasons why the USPTO dismisses RFFL petitions.

How to Use the USPTO Patent Public Search Tool

Do you want a simple way to search for specific patents and to get PDF copies of those patents? And do you want those PDF files to come straight from the United States Patent and Trademark Office (USPTO), so you can be confident that they contain any Certificates of Correction? Our first article in a series about the USPTO’s Public Patent Search (PPS) web page shows you how. PPS launched on December 1, 2021. It’s critical to get to know PPS now—especially if you want to get access to PDF copies of patents, because the USPTO removed the only other remaining method to get PDFs from their site just last month. Like any new technology, it can take some getting used to—but once you get the hang of it, it can make your life much easier. This short how-to article explains the essentials of using PPS to find and download specific patents and how to deal with the unique idiosyncrasies of PPS’s text versions of patents.

Patent Filings Roundup: IP Edge Hearings in Delaware Launch Fireworks; Qualcomm Claims Confirmed Unpatentable in AAPA Decision on Remand

It was a light week for patent filings, with 18 Patent Trial and Appeal Board (PTAB) and 38 district court complaints; last week saw the first Fintiv denials in months in a tranche of cases very close to trial; this week there were five more discretionary denials under Section 325(d), where the parties failed to point out any material error in earlier proceedings analyzing similar art under Advanced Bionics. And obviously, the third Fortress/VLSi trial resulting in another near-billion-dollar award splashed the headlines. The District of Delaware was busy uncovering the story behind IP Edge/Mavexar LLC and how they run and control their subsidiaries, and it’s even more interesting than I thought it was; though of course, it hasn’t stopped entities like those run by Jeffrey Gross from continuing to roll out filings. More below.

Advice from the SEP Masters: Rely on the Data, Engage with Courts and Regulators, Be Wary of Calls for Special Tribunals

IPWatchdog held its Standards, Patents and Competition Masters ™ 2022 Program this week, November, 14-15, in Ashburn, Virginia, covering topics from how to define “fair reasonable and non-discriminatory” (FRAND) rates to litigating standard essential patents (SEPs) in South America and Europe. Almost all of the panels touched on how courts around the world are viewing the practices of implementers and patent holders in the SEP debate and how standoffs between implementers and patent owners in FRAND cases can be better resolved.

CAFC Expressly States Patentee Disclaimers During IPR are Not Binding on the PTAB’s Patentability Analysis

Earlier today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CUPP Computing AS v. Trend Micro Inc. affirming final written decisions from a trio of inter partes review (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods for performing security operations on a mobile device. The CAFC’s decision makes clear to patent owners defending their rights at the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during IPR as binding on the proceedings before it.

Partial Win for VLSI Against Intel as CAFC Reverses PTAB on One Claim of Integrated Circuit Patent

In a precedential opinion issued yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled partially in favor of VLSI Technology, Inc. in its case with Intel, reversing the Patent Trial and Appeal Board’s (PTAB’s) holding that one claim of U.S. Patent No. 7,247,552 was unpatentable. The court upheld the PTAB’s unpatentability findings on the three other challenged claims. Intel filed three separate inter partes review (IPR) petitions against VLSI challenging the validity of claims 1, 2, 11, and 20 of the ‘552 patent, which is directed to “’[a] technique for alleviating the problems of defects caused by stress applied to bond pads’ of an integrated circuit.”

Disruptive Startups Cannot Survive in a Post-AIA Patent Landscape

I founded Netlist in Irvine, California, over 20 years ago to develop the most sophisticated memory module technology in the world. We succeeded, shipping over a billion dollars of product and partnering with top companies, such as IBM, HP and Dell, to power their high performance computers. Netlist continues to invest heavily in R&D in the U.S. We hold more than 130 patents, many of which have been designated as standards-essential. Our memory technology has benefited consumers, businesses and the U.S. military as it is now an integral part of advanced computers deployed in a variety of industries. When we began the company, we were under the impression that securing a U.S. patent was the high-water mark of innovation and that this would protect our inventions against infringement. A patent, we believed, would allow small innovators like Netlist to compete with large incumbents that wield enormous market power.

Federal Circuit Affirms PTAB’s Mixed Decision on Air Mattress Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the Patent Trial and Appeal Board (PTAB) on two mixed inter partes review (IPR) decisions involving American National Manufacturing and Sleep Number Corp. that found some, but not all, of the challenged claims not unpatentable. The IPRs on appeal involve U.S. Patent Nos. 8,769,747 and 9,737,154. They “describe systems and methods that purport to adjust the pressure in an air mattress ‘in less time and with greater accuracy’ than previously known.” American National filed IPR petitions challenging many claims of both patents and asserting that most of the challenged claims would have been obvious over various prior art references.

How to Rewrite Method-of-Treatment Claims to Conform to Japanese Patent Practice

In the United States, claims directed to methods of treating/diagnosing human disease are patentable. On the other hand, in Japan, such claims are unpatentable. Therefore, the applicant is required to rewrite or delete the claims when a patent application (e.g., Patent Cooperation Treaty application) containing such claims enters the Japanese national phase and is examined. In this article, I offer my personal views on how to rewrite method-of-treatment claims for Japanese examination. I will particularly focus on claims that may or may not conform to Japanese patent practice while past Japanese patent cases and the current patent system are taken into account.

In Defense of Patentability of Mathematical Formulas and Relationships

“Mathematical Formulas and Relationships” fall under the “Abstract Idea” exception to the categories of patentable subject matter. Characterizing the “Mathematical Formulas and Relationships” as “Abstract Ideas” has led to misrepresentation of mathematical concepts in patent law. A “Mathematical Formula or Relationship” is a means of expression and should be inspected to extract what it expresses. Next, the content that is being expressed may be evaluated to determine whether the “Mathematical Formula or Relationship” is expressing a “Tool” or a “Model,” both of which are used for building machines and devising technological processes and neither of which needs to be categorically excepted from patentability.

Tillis Bill Would Restore Needed Clarity and Predictability in Patent Eligibility Law

Over the last 15 years, the United States Supreme Court has mutated patent eligibility into an impossibly complex and confusing mess. The Court’s current eligibility test strays far from Congress’s original intent, erodes trust in predictability, and has left many remarking that innovation in the United States is falling behind due to uncertainty of patent eligibility law. Even more troubling, the resulting uncertainty of patent ineligibility for large swaths of innovation in critical technology areas, including artificial intelligence, poses significant risks to U.S. competitiveness, economic growth and national security. The Court has had opportunities to rectify its patent sinkhole but recently declined another chance to mend the chaos. When the Court denied certiorari in American Axle v. Neapco—despite the Solicitor General’s plea to hear the case—it became clear that Congress must step in to rescue U.S. innovation.


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