Posts Tagged: "patent"

While researching the U.S. Patent and Trademark Office’s (USPTO) treatment of final Office actions for previous articles (Part I, Part II and Part III), we noticed too many petition decisions dismissed as moot for it to have happened by chance. Here in Part IV, we examine timely filed petitions that were dismissed as moot because the USPTO decision was inexplicably delayed to such an extent that applicants were forced to take other action to avoid abandonment of their applications. We uncover two different and seemingly arbitrary petition processing pathways within the USPTO: petitions which are promptly entered and decided on their merits or petitions belatedly entered and eventually dismissed as moot. We uncover a strong correlation between the USPTO’s initial petition processing steps, petition pendency and petition outcome. 

On November 16, the U.S. Supreme Court denied petitions for certiorari in two cases from the Federal Circuit: IYM Technologies LLC v. RPX Corporation and Advanced Micro Devices, Inc. and WhitServe LLC v. Donuts Inc. IYM asked the Supreme Court to grant review “to determine whether the Arthrex decision applies to all appeals that were pending when [the Arthrex decision] issued.” In the WhitServe petition, WhitServe asserted that a determination of patent ineligibility “necessitates impermissible fact-weighing at the pleading stage and eviscerates the statutory presumption of validity.”

Since U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu took office, I have observed, with admiration, how he has taken bold action to improve perceived problems in the patent system. The Director’s bold action has also caught the attention of members of the Supreme Court. Justice Gorsuch, joined by Chief Justice Roberts, observed, “[n]or has the Director proven bashful about asserting these statutory powers to secure the [policy judgments] he seeks.”
Oil States Energy v. Greene’s Energy Group, 138 S.Ct. 1365, 1381 (2018) (Gorsuch, J., dissenting).

I wonder, however, whether the law now permits Director Iancu to do something even bolder: create rules interpreting Section 101, at least within the limited context of the America Invents Act’s (AIA’s) post-grant review trials, such that courts may defer to the Director’s interpretation under Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984).

On November 13, the Federal Circuit affirmed a decision of the Board in In re: Google Technology Holdings LLC. In particular, the CAFC upheld a decision of the Board affirming a patent examiner’s final rejection and holding that Google forfeited the arguments put forth on appeal. Google’s U.S. Patent Application No. 15/179,765 was directed to “distributed caching for video-on-demand systems, and in particular to a method and apparatus for transferring content within such video- on-demand systems.” During prosecution, the examiner finally rejected the claims of the ‘795 application as being obvious under Section 103.

This is the third in a series of articles analyzing statements made by various entities in the cellular industry regarding licensing Standard Essential Patents (SEPs) on a Fair, Reasonable and Non-Discriminatory (FRAND) basis. The previous article considered unconditional offers to license on a FRAND basis, arbitration of FRAND terms and conditions, specific FRAND rates, the application of such rates, and portfolio licensing. This article focuses on statements regarding the FRAND royalty base.

Last week, an order list issued by the U.S. Supreme Court indicated that the nation’s highest court had granted a pair of petitions for writ of certiorari which were then consolidated into Davis v. Saul. The petition in Davis asks the Supreme Court to determine whether claimants seeking disability benefits or supplemental security income under the Social Security Act (SSA) must exhaust their Appointments Clause challenges with the administrative law judge (ALJ) at the agency in order to obtain judicial review of that challenge in federal court. Given the Appointments Clause challenge to the Patent Trial and Appeal Board (PTAB) proceedings at issue in Arthrex v. Smith & Nephew, many patent practitioners are interested in the Supreme Court’s ultimate decision on whether such challenges can be brought up for the first time on appeal from agency proceedings when parties first claim that constitutional challenge while seeking judicial review in federal courts.

On November 10, the Federal Circuit reversed-in-part and vacated-in-part a decision of the District of Delaware in C R Bard Inc. v. Angiodynamics, Inc. In particular, the CAFC held that there was substantial evidence in the record to support a jury finding of infringement and willfulness and that the asserted claims were not directed solely to printed matter and were patent eligible under 35 U.S.C. 101.

To many patent practitioners, the Federal Circuit’s decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. was a watershed moment. In particular, this decision provided that claims directed to “display interfaces” that “improved” on existing interfaces were patent eligible under 35 U.S.C. § 101. In other words, Core Wireless decreased the chances of a court finding a graphical user interface (GUI) patent to be directed to ineligible subject matter and therefore invalid. We don’t have to look far to see the impact that the nearly-three-year-old Core Wireless decision has had. Almost 100 district court decisions have cited the case since it came down in January of 2019, and nearly 30 inter partes review (IPR) proceedings filed after January of 2019 include citations of Core Wireless by practitioners, the Board, or both.

Almost two weeks after election day, it’s still not entirely certain who won (has there ever been a crazier year than 2020), but it appears increasingly likely that a new administration will take office in January. They are going to run smack into two overarching problems: how to gain control over the COVID-19 pandemic and how to reignite the U.S. economy. These problems are interrelated. We will only get out of this mess through American ingenuity and that’s already hard at work 24/7 developing promising solutions to protect public health, which releases the brake on the economy. So, here’s some advice: don’t listen to those who want to throttle down the engine driving that effort—don’t mess with the Bayh-Dole Act.

In Part I, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III will discuss some of the implications of these. When an applicant seeks to add new claims pursuant to a continuation or divisional application, U.S. Patent Law explicitly requires that the original specification provide adequate support for the new claims by the original specification satisfying the Section 112(a) written description and enablement requirements for the new claims. 35 U.S.C. § 120. The same is also true for continuation-in-part (CIP) applications claiming overlapping subject matter but not for claims comprising “new matter” because the new matter claimed must find support in additional disclosure, i.e., in material added to the CIP application itself.

The Federal Circuit recently vacated and remanded a decision of the PTAB in Donner Technology, LLC, v. Pro Stage Gear, LLC. In particular, the CAFC held that the PTAB applied an incorrect standard for determining if a reference is analogous art, but did not go as far as to say that “no reasonable fact finder could conclude, under the proper standard,” that the reference in question was not analogous art.

It is difficult to talk about political issues in the current environment in the United States but looming for the patent and innovation community is a potential disaster. While it will undoubtedly upset many, the truth is that there is currently no official President-Elect and there won’t be until the Electoral College votes in the middle of December. In no fewer than six swing states, the vote was so close that President Trump and his lawyers have launched a series of lawsuits that have already made their way to the United States Supreme Court. Much more litigation relating to the election can be expected and proof will be necessary to back up the allegations of the Trump campaign if anything major news outlets are reporting will be changed. In the meantime, it should be fairly uncontroversial to say that President Trump has an uphill battle. It is also absolutely factual to say that Vice President Biden is proceeding as if he is President-Elect.

On November 9, the Federal Circuit granted Apple’s petition for a writ of mandamus directing the Western District of Texas to transfer Uniloc’s patent infringement suit against Apple to the Northern District of California. Judge Moore dissented, asserting that the majority applied an incorrect standard of review.

District court activity dropped to 38 new complaints this week, with 28 Patent Trial and Appeal Board (PTAB) petitions – one post grant review (PGR) and 27 inter partes reviews (IPRs) – filed. It was a subdued week for WSOU and the usual big filers, with the IPRs propped up by a big funded semiconductor fight with an International Trade Commission (ITC) component.  Dominion Harbor’s Vista Peak Ventures filed against a number of overseas companies, and frequent filer Blue Spike came back with a vengeance, but on the whole, a quieter post-election week all around.

On November 6, the Northern District of Illinois, Eastern Division, granted a motion to dismiss an infringement suit on the grounds that the patents in suit were directed to ineligible subject matter under 35 U.S.C. 101 in Karamelion LLC v. Intermatic, Inc. The court explained that although Karamelion’s solution may be a novel application of network communication to a particular problem, “no matter how novel or groundbreaking the advance, the abstract idea cannot supply the inventive concept.”