Posts Tagged: "USPTO"

On March 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board (PTAB) to hold the rejected claims from Leland Stanford Junior University (Stanford) were not patent eligible because the claims are drawn to abstract mathematical calculations and statistical modeling. The examiner rejected claims 1, 4 to 11, 14 to 25, and 27 to 30 of U.S. Application Nos. 13/445,925 (‘925 application), “methods and computing systems for determining haplotype phase,” for involving patent ineligible subject matter. The CAFC applied the two-step framework under Alice v. CLS Bank to determine whether the claims were patent eligible.  

As we celebrate Women’s History Month, it is important to point out the role of women in the field of patent law. Women have been members of the patent bar since as early as 1898, when Florence King became the first woman registered to practice before the U.S. Patent Office, as well as the 685th registrant. She became a lawyer first, and then went back to school to obtain a degree in Mechanical and Electrical Engineering so that she could register on the patent bar. As a woman patent practitioner with a mechanical engineering degree, I feel a lot of gratitude to women like Florence King, who paved the way for me. Yet, despite her trailblazing efforts over a century ago, there is still a considerable lack of gender diversity in the patent bar.

The National Security Commission on Artificial Intelligence (NSCAI) recently issued its Final Report outlining a strategy for the United States to “win” the artificial intelligence (AI) era. Critically, the Commission argues that the United States government is not currently organizing or investing to win the technology competition in AI against a committed competitor (i.e., China), nor is it prepared to defend against AI-enabled threats and rapidly adopt AI applications for national security purposes. In addition to the potential patent-eligibility and data ownership IP issues noted in the Report, other IP uncertainties unique to AI technology continue to persist, such as machine authorship and machine inventorship of valuable contributions. As part of the United States’ overall strategic interests in winning the AI era, the Commission recommends that the United States adopt IP policies to incentivize, expand, and protect AI and emerging technologies, as well as recognize IP as a national priority. But significant questions remain as to whether U.S. courts will reliably permit IP holders to proceed with AI-focused IP infringement claims against potential offenders, or if patent-eligibility, inventorship, fair use, and other defenses will tip the scales towards trade secret protection.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled yesterday in Uniloc v. Facebook, Inc., WhatsApp, Inc. that the “no appeal” provision of 35 U.S.C. § 314 does not preclude the court from reviewing a Patent Trial and Appeal Board (PTAB) finding that a petitioner is not estopped from maintaining an IPR proceeding under the IPR estoppel provision of 35 U.S.C. § 315(e)(1). However, the court noted that its decision was based on the particular facts of this case, where “the alleged estoppel-triggering event occurred after institution.”

Patent Trial and Appeal Board (PTAB) filings are way down for the third week in a row, with 15 inter partes reviews (IPRs) and two post grant reviews (PGRs) filed compared to 59 district court complaints. A few big-ticket suits were renewed—the older capital-backed Fundamental Innovation Systems International [Centerbridge Partners] and Solas Oled [Magentar Capital] suits saw new defendants—and some well-known smaller ones soldiered on.  The aggressive EcoFactor competitive suit rolls on in the ITC and now across Texas, with a number of new suits filed by the IoT company. There’s a new suit by a Quest Patent Research Corp subsidiary and a smattering of other campaign-adds listed below; and it’s worth noting that DynaIP subsidiaries have exploded with litigation these past few months, with the forecast promising more rain on the horizon.

Representative Nydia Velázquez (D-NY), Senator Mazie K. Hirono (D-HI), Senator Thom Tillis (R-NC), and Congressman Steve Stivers (R-OH) yesterday reintroduced the Inventor Diversity for Economic Advancement Act (IDEA Act), which seeks to direct the United States Patent and Trademark Office (USPTO) “to collect demographic data – including gender, race, military or veteran status, and income level, among others – from patent applicants on a voluntary basis.” Senators Chris Coons (D-DE) and Patrick Leahy (D-VT) are co-sponsors of the legislation.

Last week the United States Patent and Trademark Office (USPTO) held the first of five discussions that will take place every Wednesday in March during its Women’s Entrepreneurship Symposium series. While participants discussed the challenges they’ve faced as women in leadership, they also noted that the USPTO has been ahead of the curve when it comes to promoting women into executive positions and shared tips to help more women rise to the top.

This week in Washington IP news, the Senate Antitrust Subcommittee convenes a hearing to discuss antitrust reforms meant to address increasingly dominant tech platforms, while House Subcommittees on Innovative Technologies and National Security will review the final recommendations recently issued by the National Security Council on Artificial Intelligence. Elsewhere, the Smithsonian Institute explores the innovative careers of Jerome Lemelson and InBae Yoon, the Brookings Institute discusses what role government should play in addressing algorithmic biases, and the week closes with a Center for Strategic & International Studies event introducing the Renewing American Innovation Project, which welcomes Former USPTO Director Andrei Iancu as a non-resident senior fellow.

Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE) sent a letter on Friday to the Acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action.

You have probably heard of a company called Apple. They sell computers, watches, tablets and all kinds of accessories. You have probably also heard that Apple was engaged in a patent war with Samsung Electronics, which was fought all over the world and finally resolved after many years of litigation. What you might not be familiar with is the fact that, in the United States, it was not Apple’s utility patent portfolio that was found infringed by Samsung. Apple had to rely on design patents to prevail over Samsung. If design patents are powerful enough for Apple to use to prevail over Samsung, then it makes sense that anyone who has a unique visual presentation to their products should consider whether adding design protection to their portfolio is a wise decision— which it probably is.

You cannot get a patent for an invention if it would have been obvious to a person of ordinary skill in the art at the time. This is as true today as it was at the founding of our nation. The reason for this rule is clear—the obviousness-bar is necessary to balance rewarding innovation with free and fair competition. The Supreme Court has observed, alluding to the Constitution’s authorization for federal patents, “[w]ere it otherwise, patents might stifle, rather than promote, the progress of useful arts.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007). While we all agree that obvious inventions should not be patented, the devil is in the details on how to draw that line between the obvious and the nonobvious.

Once upon a time, one of the ways you could spot scams from legitimate operators in the patent industry was to look at who was directing clients to get design patents. Design patents have always been easy to obtain, indeed, far easier to obtain than a utility patent. Of course, as with many things in life and with virtually everything in the realm of intellectual property law, the easier something is to obtain the less valuable it is to own. This general rule about easier and cheaper rights has been turned upside down in recent years with respect to design patents, at least to some extent. Unfortunately, not nearly enough individuals and companies are seeking design patent protection. In 2019, for example, there were 46,847 design patent applications filed, which represents 7.01% of the total number of patent applications filed in 2019. So, although design patents are being filed in larger numbers year after year (See Figure 1), as a percentage of the overall number of patent applications filed, they are largely staying within the 50-year historical norm (See Figure 2). Data taken from U.S. Patent Activity.

A light week at the Patent Trial and Appeal Board (PTAB) saw two post grant reviews (PGRs) and 16 inter partes reviews (IPRs) filed, while the District Court clocked in with 49 new complaints, fueled mostly by additions to a few Rothschild campaigns, a few new IV selloff suits, a new defendant added to the WSOU madness (this time, Netgear), and a fair number of competitor suits, pharmaceutical suits, and even a new Gil Hyatt complaint. Oso IP subsidiary Boccone, LLC walked away from their three patents entirely, post-institution. Samsung and a few others had petitions denied under Section 314 discretion (the power of which was really driven home this week when VLSI earned a $2 billion judgment on patents that had been challenged but denied institution under that rubric).

Yesterday, the Supreme Court heard oral arguments in the most closely-watched patent case of the term, United States / Smith & Nephew v. Arthrex. IPWatchdog reached out to some of the amici in the case, as well as patent practitioners and other stakeholders, to get their take on how the hearing went and what the future holds for the Administrative Patent Judges (APJs) of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Most agreed that it’s unlikely the Court will dismantle the PTAB altogether, but that they were clearly uncomfortable with the present structure. Below, our experts weigh in on some potential outcomes.

The Justices of the U.S. Supreme Court today heard arguments in United States/ Smith & Nephew v. Arthrex, in which the Court will decide whether the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) are “principal” or “inferior” officers of the United States, and—if they are principal officers—whether the Federal Circuit’s 2019 fix was sufficient to cure any Appointments Clause defect. The Court generally seemed extremely skeptical of the “unusual” powers APJs seem to have compared with other administrative agencies and pushed both sides to offer reasonable solutions.