Posts Tagged: "USPTO"

In his keynote video address to PTAB Masters participants today, Senator Thom Tillis (R-NC) championed the record of former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, and said that Iancu’s successful attempts to address many of the complaints with the Patent Trial and Appeal Board (PTAB) during his tenure should be codified into U.S. law. Changes such as harmonizing the PTAB claim construction standard with that of the district courts and making significant changes to the PTAB’s Standard Operating Procedures that have helped to create uniformity and instill transparency, all helped to provide more certainty for inventors, Tillis said.

In Part I of this three-part series, we focused on three market players: BioNTech, Moderna and CureVac. In this second post, we will focus on Translate BIO, Arcturus Therapeutics, and eTheRNA and discuss certain issues relating to lipid nanoparticle (LNP) delivery technology. Translate Bio, Inc. (NASDAQ: TBIO) is headquartered in Lexington, MA, and as of April 2021, has a market capitalization of over $1.3 billion. According to its website, Translate BIO’s mRNA product pipeline is directed to several indications including cystic fibrosis, primary ciliary dyskinesia, pulmonary arterial hypertension, COVID-19, influenza, viral pathogens, and bacterial pathogens. The company does not presently have any products on the market. However, it has one cystic fibrosis candidate and one COVID-19 vaccine candidate (with Sanofi) that are both in Phase 1/2 clinical trials. Translate BIO also appears to have one infectious disease candidate in the “IND-enabling” Phase (with Sanofi), and three lung candidates, one liver candidate, and two infectious disease candidates (with Sanofi) in the discovery phase.

The second day of IPWatchdog’s PTAB Masters™ 2021: “Winning at the PTAB” featured a keynote interview with former U.S. Patent and Trademark Office (USPTO) Director David Kappos, who was at the helm of the agency when the America Invents Act (AIA) was passed. As part of the AIA, Kappos was tasked with developing rules to implement the Patent Trial and Appeal Board (PTAB) and related post grant proceedings, and was chiefly focused on adhering to the unprecedented timelines set for those proceedings in the AIA. “The PTO had never been given strict timelines before,” explained Kappos. “I felt the gravity; I thought, ‘if the public is going to respect the PTO and patents, we have to get on top of the timeframes.’ [I told my team] the goal is going to be to implement within the timeframes 100% of the time.”

While steps taken under former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu to restore equilibrium at the Patent Trial and Appeal Board (PTAB) have improved a bad situation to some extent, in many ways the damage has been done, said IPWatchdog founder and CEO Gene Quinn during a keynote interview with Iancu earlier today, on day one of the PTAB Masters ™ 2021: Winning at the PTAB Series. “It felt sometimes like the PTAB was making it up as they went along,” said Quinn to Iancu. “It eroded the confidence of patent owners. I do think it’s getting to be more of an equilibrium, but it’s a damaged brand.”

A slightly higher than average 38 petitions were filed at the U.S. Patent and Trademark Office (USPTO) last week, all inter partes reviews (IPRs), a number again propped up by five more patent filings against the prolific Craig Etchegoyen-led WSOU. That entity’s near-200 patents and 200 lawsuits brought in the district court represent roughly 5% of all 2020 litigation, and they show no signs of slowing their aggressive stance. District court litigation was roughly stable, with a few new campaigns popping up as outlined below. It’s worth noting—not because it’s evidence of any trend or even statistically significant, but just given the rarity—that for the first time since I started writing these updates more than a year ago, the USPTO did not issue any Fintiv trial date or other procedural denials.

A critical battle against systemic racism currently engages the United States. Patent practitioners across the country—from the University of Minnesota Law School (a mere 2.5 miles from the location of the killing of George Floyd) to the U.S. Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia (another 1,000 miles away)—must cast a critical eye towards our profession to identify systemic barriers in the patent field.

The United States Patent and Trademark Office (USPTO) announced yesterday that it will launch a COVID-19 fast-track appeals pilot program beginning today. The pilot is a companion to the COVID-19 Prioritized Examination Pilot Program launched last year. The latest pilot will allow an appellant to have certain COVID-19-related ex parte appeals before the Patent Trial and Appeal Board (PTAB) accorded fast-track status. The appeal must be related to an application that claims a product or process that is subject to an applicable Food and Drug Administration (FDA) approval for COVID–19 use. These may include, “but are not limited to, an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), a Biologics License Application (BLA), a Premarket Approval (PMA), or an Emergency Use Authorization (EUA).”

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday dismissed two appeals filed by Apple against Final Written Decisions of the Patent Trial and Appeal Board (PTAB) finding that Apple did not prove certain claims of two Qualcomm patents obvious. The appeal stems from a suit brought by Qualcomm in the U.S. District Court for the Southern District of California for infringing claims of its U.S. patents 7,844,037 and 8,683,362. Apple subsequently petitioned for inter partes review (IPR) of claims 1–14, 16–18, and 19–25 of the ’037 patent and claims 1–6 and 8–20 of the ’362 patent. The Board held that Apple did not prove the challenged claims in either patent would have been obvious, but then Apple and Qualcomm settled all worldwide litigation between them. The parties thus moved to dismiss Qualcomm’s district court action with prejudice, which the district court granted, but Apple appealed the Board’s final written decisions anyway.

District court complaints rose to 93 this week, while Patent Trial and Appeal Board (PTAB) cases fell to 28 (27 inter partes reviews [IPRs] and a post grant review [PGR]), a number propped up in part by Google filing a number of petitions against serial assertor Express Mobile, LLC and ZTE filing a few more against the perennial WSOU. Additional Facebook petitions were denied against Western District of Texas assertor, Onstream Media Corporation; Google filed a spate of petitions against longtime serial assertor Express Mobile; and there were a not-surprising-but-still-remarkable number of IP Edge complaints filed last week, as seen below, from a wide range of subsidiaries.

Peloton’s petitions to cancel Mad Dogg’s registered trademarks for SPIN and SPINNING (in Classes 41 and 28) for genericism ask the Trademark Trial and Appeal Board (TTAB) to do what it has rarely done before – cancel marks that were distinctive at the time of filing for losing distinctiveness due to the public’s overuse of the terms. While the TTAB has refused to register or cancel registered marks that were generic terms at the time the trademark applications were filed, the TTAB has rarely cancelled a mark that was distinctive when registered, but over time, became a generic term and lost its distinctiveness, as Peloton argues in its petitions. For example, “Kleenex” is often referenced when discussing generic brands, and while Kimberly-Clark Corporation has faced petitions for cancellation of its “Kleenex” mark, “Kleenex” has remained a registered mark of Kimberly-Clark Corporation since 1924.

The COVID-19 pandemic has caused a dramatic shift in how IP professionals manage their patent and trademark portfolios. Fortunately, many IP law firms and corporate IP departments have survived and managed well in this new environment. They are even showing great optimism as the industry trends toward greater consolidation and tighter global integration. Nonetheless, major concerns remain, challenging both IP owners and their advisers to find more effective ways to solve their portfolio management challenges while focusing on the long-term strategic value of IP.

Cryptocurrencies are virtual currencies based on blockchain technology that uses a network of computers to keep a public ledger of past transactions. The most popular cryptocurrency is Bitcoin, which some believe could replace bonds and serve as a reserve currency in the future. The value of Bitcoin has skyrocketed over recent years, as major companies are buying into it. In February 2021, Tesla Inc. bought $1.5 billion worth of Bitcoin and announced plans to start accepting the currency as payment for its electric vehicles. Since Bitcoin has the potential to be used directly in commercial transactions, fintech companies are developing and patenting related technologies.

With a pretty-standard 30 Patent Trial and Appeal Board (PTAB) petitions and 70+ district court complaints filed this week, it’s worth noting that the steady stream of IP Edge and Rothschild suits hasn’t let up, that the WSOU matters continue to bump up the numbers in both, and that Magentar Capital-related petitions and cases continue to flourish.  To wit, ZTE pulled the trigger on a few inter partes reviews (IPRs) against some of the WSOU patents asserted against them, showing a little backbone against the frequent assertor; Verizon has continued to trickle out the IPRs against Huawei; Gree earned another few denials under the Board’s discretion (and have now on a per-named-entity basis probably the biggest beneficiaries of it). New NPE of unknown origin Sidekick Technology, LLC was DJ’d by a band of online car sales sites in 2:21-cv-06737 over 12 patents; and the same time that Samsung won some IPRs against Solas OLED, the Magnetar-backed entity hit them back (again) in District court.

On Friday, March 26, the United States Patent and Trademark Office (USPTO) conducted virtual LEAP training. LEAP stands for Legal Experience and Advancement Program and is a series the USPTO is fostering in order to help inexperienced practitioners develop the skills and practical experience necessary to effectively advocate on behalf of clients. Previously, the USPTO had offered LEAP training with respect to contested cases challenging patents post grant. On this day, however, the training focused on ex parte appeals to the Board from an examiner, which Patent Trial and Appeal Board (PTAB) Chief Judge Scott Boalick characterized as “the bread-and-butter work” of the PTAB.

Two weeks after affirming the Patent Trial and Appeal Board’s (PTAB’s) decision to reject Leland Stanford Junior University’s (Stanford) claims drawn to abstract mathematical calculations and statistical modeling, the U.S. Court of Appeals for the Federal Circuit (CAFC) last week also affirmed the PTAB’s decision to hold other Stanford patent application claims patent ineligible because they are drawn to abstract mathematical calculations and statistical modeling, and similar nonpatentable subject matter. The examiner rejected claims 1 and 22–43 of U.S. Application No. 13/486,982 (‘982 application), “computerized statistical methods for determining haplotype phase,” on grounds that the claims attempt to cover patent ineligible subject matter, abstract mathematical processes and mental processes. The CAFC applied the two-step framework under Alice v. CLS Bank to determine whether the claims were patent eligible.