Posts Tagged: "USPTO"

On November 17, 2020, in SIPCO LLP v. Emerson Electric Co., No. 2018-1635, slip op. (Fed. Cir. Nov. 17, 2020), the Court of Appeals for the Federal Circuit extended the reasoning of the Supreme Court in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) barring appeal of decisions to institute inter partes review (IPR) under 35 U.S.C. § 314(d), and held that decisions made by the Patent Trial and Appeal Board (PTAB) to institute proceedings for covered business methods (CBMs) are not subject to appeal under 35 U.S.C. § 324(e). While the CBM transitional program of the America Invents Act (AIA) expired on September 16, 2020, the statutes applied when instituting and conducting review under the program were those of post-grant review (PGR) (under § 18(a)(1) of the AIA), and so the effect of the Federal Circuit’s decision in SIPCO is likely to be much more far-reaching.

On December 2, eComp Consultants (eComp) filed an amicus brief urging the U.S. Supreme Court to find Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) in U.S. v. Arthrex, Inc., Nos. 19-1434/-1452/-1458. In its brief, eComp argues that the U.S. Supreme Court should reverse the decision of the Federal Circuit and confirm that APJs of the PTAB are merely inferior officers of the United States who were, therefore, constitutionally appointed. eComp’s Amicus Brief clarifies the errors in the Federal Circuit’s decision. 

New petitions stayed steady again this week at 29, while district court patent filings were one shy of 100, on the strength of at least 35 new complaints by various IP Edge subsidiaries. A number of known-financed entities launched suits or added defendants; Xerox launched a rather serious suit against three social media giants; and the Board denied some petitions based on trial dates and also on there being a significant relationship between suppliers and customers (in the Mitek cases).

As of December 1, 750 comments had been received in response to the United States Patent and Trademark Office’s “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board”, which was published in the Federal Register on October 20. Some notable submissions have been received from stakeholders including Senator Thom Tillis, Conservatives for Property Rights, Randy Landreneau, Robert Stoll and the Small Business Technology Council.

On November 25, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board in VidStream LLC v. Twitter, Inc., in which the PTAB held VidStream’s patent claims unpatentable as obvious over the applied prior art. In particular, the CAFC affirmed the PTAB’s holding that Twitter properly established an earlier filing date of a reference based on evidence submitted in a reply brief.

While it has been said that the how and why of patent application drawings are usually best left to the professionals, I do think it is important for everyone – from the solo inventor to the big firm practitioner – to have a general understanding of the basics of utility application drawings. It is nice to be able to rely on an illustration service to get everything right for you; however, as the person with the name on the patent application, you are ultimately responsible for the content and form of the drawings that are submitted. This article will touch on the fundamentals of a utility drawing. While you may not be creating the drawings, it is crucial that you have an idea of what to look for in order to be compliant with U.S. Patent and Trademark Office (USPTO) guidelines.

Patent owners often obtain patents to protect products, as well as complementary products or use cases associated with those products. However, when selling or licensing the patented products, a patent owner may inadvertently extinguish potential revenue streams associated with the complementary use cases due to the doctrine of patent exhaustion. Patent exhaustion follows the basic idea that if a company sells or licenses a patented product to a buyer, the company cannot sue the buyer (or a third party that the buyer provides the patented product to under the license) for patent infringement for using the product. Patent owners should take care when preparing and licensing patents to ensure that infringement claims for complementary products or use cases associated with patented products are not exhausted by the sale or licensing of the patented products, as shown by the Federal Circuit case of Helferich Patent Licensing v. New York Times, 778 F.3D 1293 (Fed. Cir. 2015).

Thanksgiving week was another light week at the Patent Trial and Appeals Board (PTAB), with 19 petitions filed (all IPRs).

On November 20, the Federal Circuit issued a modified opinion following a petition for panel rehearing filed by Network-1. The petition came after the CAFC affirmed-in-part and reversed-in-part a district court’s claim construction and remanded the case to the district court on September 24, 2020, in Network-1 Technologies, Inc. v. Hewlett-Packard Company. In the revised opinion, the CAFC said that it would not consider Network-1’s alternative grounds for granting a judgment as a matter of law (JMOL) on validity nor its new trial motion in the first instance.

I am going to make a bold statement: every non-provisional patent application for an invention originating in the U.S. should be filed via the Patent Cooperation Treaty (PCT) first. Then, after another six months, following the international search, and PCT publication, those who desire U.S. patents should enter the U.S. National Stage. That’s right: every single application, no exceptions. No, I have not lost my mind. Here’s why.

On November 17 the Federal Circuit affirmed a determination of the PTAB that claims were obvious in view of the prior art in an appeal that was returned to the CAFC on remand from the U.S. Supreme Court. In particular, the CAFC concluded that, according to the recent Supreme Court decision in Thryv, Inc. v. Click-to-Call Technologies, LP, “§ 324(e) prohibits judicial review of SIPCO’s challenge because it is nothing more than a contention that the agency should have refused to institute [covered business method] CBM review.”

It was a light week for Patent Trial and Appeal Board (PTAB) filings, with just 18 new petitions, while the district courts remained busy with 71 new complaints. Some patent filings were new additions to existing assertion campaigns like Virtual Immersion [Equitable], Cedar Lane Technologies Inc., or Browse3D; at least six new filings by Viking Technologies, LLC seem to spring from a supplier relationship with smartphone repair services, detailed below.

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.”

The USPTO recently published a Final Rule setting new fees for trademark filings and TTAB proceedings, which will be effective January 2, 2021. The last time trademark fees were adjusted was about three years ago. The increases range from modest to fairly substantial. To file an application using the TEAS Plus option, the fee has increased from $225 per class to $250 per class, and the processing fee for failing to meet the TEAS Plus requirements has been reduced from $125 per class to $100 per class. However, the fee for TEAS Standard per class has jumped $75, from $275 to $350, which many trademark owners who commented found unreasonable.