Posts Tagged: "USPTO"

On November 4, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), concluding that the PTAB did not err in its construction of a disputed claim limitation and affirming the PTAB’s judgment in favor of the University of Wyoming Research Corporation (Wyoming). Chevron U.S.A, Inc. v. University of Wyoming Research. Circuit Judge Newman wrote a separate dissenting opinion, arguing that the PTAB “erred at the threshold,” and there was no interference in fact.

As of the time of publication, the Associated Press had called 264 electoral college votes for Joe Biden in the 2020 Presidential Election. While many states are still counting and legal challenges have been filed by the Trump Administration in several of them, all signs indicate that Biden will likely be inaugurated President on January 20, 2021.What this means for IP will take months to parse. It is no understatement to point out that concrete details on IP policy are lacking on Joe Biden’s presidential platform. A site-specific search for intellectual property (e.g., “intellectual property” site:joebiden.com) returns only seven results on Google Search, the top two of which are links to the Limited License and Terms and Conditions pages for Biden. Similar results occur when running site-specific searches for “copyright” and “trademark” instead of “intellectual property.” Without question, the Biden campaign cares about protecting its own IP.

As America watches the continued trickle of Presidential election results, the patent docket has stayed heavy, with 111 new district court complaints filed last week, and just 27 petitions (one post grant review (PGR) and 26 inter partes reviews (IPRs), down again). District court filings were (as usual) propped up by the aggressive filing patterns of WSOU against another new defendant (this week it was TP-Link’s turn), as well as another surprising flurry of IP Edge suits and a handful of old-fashioned competitor suits, like those between faucet maker Delta Faucet Co. and other market competitors. IP Edge seems poised to end the year the way they started it, filing an amazing number of file-and-settle litigations across districts.

The U.S. Patent and Trademark Office (USPTO) doesn’t often get much action on social media, but last week, five days before the U.S. Presidential election, the Office came under fire for its social media posts touting the United States’ record on intellectual property under the Trump Administration. The posts featured the following quote from USPTO Director Andrei Iancu: “Just a reminder, under President Trump’s leadership, the U.S. intellectual property ecosystem ranks #1 in the world, according to the 2020 International IP Index.”

Last week, the U.S. Patent and Trademark Office (USPTO) released its long-awaited Examination Guide on so-called generic.coms – domain names comprised of generic elements along with a generic top-level domain (such “gTLDs” include .com, .net, .org, .biz and .info). The Guide (No. 3-20, entitled “Generic Terms after USPTO v. Booking.com”) provides needed guidance to trademark examiners on how to apply the U.S. Supreme Court’s decision in USPTO v. Booking.com B. V., 140 S. Ct. 2298 (2020); it also provides guidance to trademark applicants on the standards they can expect the USPTO to apply in considering whether their domain names are registrable as trademarks. Unfortunately, instead of faithfully applying the Supreme Court’s lesson about the importance of consumer perception in assessing whether a term functions as a trademark, the USPTO has relied on factors close to its discredited per se rule that will make it very difficult to register such marks.

The worldwide COVID-19 pandemic has dampened many commercial operations in countries around the world, including the United States. Although the U.S. stock market underwent a historical pull-back and rebound in a matter of a few short months, new unemployment filings are still at record highs and corporate budgets have been slashed to minimize expenses. In a large sense, corporate profits for the first half of 2020 are down for many companies compared to the end of 2019, though the technology sector is down less than others. As companies scramble to reduce expenses, IP budgets may be on the chopping block. One approach for reducing IP expenditures is to cut prosecution costs by abandoning applications, and patent application abandonments have indeed increased. Another approach for reducing expenditures is to file fewer patent applications (which may offer added cost savings as USPTO fees have now risen – with some fees increased by 25%-200%). Some predicted that new patent application filings would drop significantly, possibly as high as a year-over-year decline of 20% vs. 2019.

In August, Apple, Google, Cisco and Intel filed a lawsuit against the U.S. Patent and Trademark Office (USPTO) in the Northern District of California challenging the Patent Trial and Appeal Board’s (PTAB’s) adoption of the NHK-Fintiv discretionary denial framework as procedurally invalid under the Administrative Procedures Act (APA), and arguing that the PTAB’s application of them violates the America Invents Act (AIA). Shortly after, a number of “Small Business Inventors” (US Inventor; 360 Heros, Inc.; Larry Golden; World Source Enterprises, LLC; Dareltech LLC; Tinnus Enterprises, LLC; Clearplay, Inc.; and E-Watch, Inc.) filed a Notice of Motion and Motion to Intervene and related Complaint in the case. Now, US Inventor has filed its reply brief, in which it contends that “AIA trial reviews have stifled innovation, crushed inventor morale, and created a lopsided process whose use alone (irrespective of individual merits) can destroy innovative businesses”. The organization is asking the court to enter a temporary restraining order and preliminary injunction in order to preserve “the one lifeline giving any hope of escaping this ongoing catastrophe for American innovation and fair competition.”

On October 27, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) in Corcamore, LLC v. SFM, LLC. In an opinion authored by Circuit Judge Reyna, the CAFC affirmed the TTAB’s decision that SFM was entitled to bring and maintain a petition under 15 U.S.C. § 1064 because it met the requirements to bring a cancellation action against Corcamore’s registered mark, and that the TTAB did not abuse its discretion in imposing default judgment as a sanction.

On September 16, 2020, the Patent Trial and Appeal Board (PTAB) denied institution of Mylan Labs Ltd.’s petition for IPR of U.S. Patent No. 9,439,906 (“the ’906 patent”) in IPR2020-00440.  In doing so, the PTAB exercised discretion to deny institution based on the six factors set forth in its precedential order in Apple Inc. v Fintiv Inc. For Hatch-Waxman Defendants interested in challenging the validity of Orange Book-listed patents at the PTAB, IPR petitions should be filed as early as possible in order to avoid this same result.

On October 27, the United States Patent and Trademark Office (USPTO) released a report titled “Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents.” The study showed that artificial intelligence (AI) patent applications increased by more than 100% between 2002 and 2018, from 30,000 to over 60,000, and the overall share of patent applications containing AI subject matter rose from 9% to nearly 16%.

A relatively subdued week led to just 18 petitions and 57 district court patent filings, mostly driven by WSOU adding Cannon to a number of suits, a fair number of Leigh Rothschild entity complaints against small companies, and a new assertion campaign from Far North Patents. There were also 10 denials of institution, nine of which were on Section 314 non-merits grounds; the FitBit filings against Phillips patents were denied institution over Fintiv based on an International Trade Commission (ITC) action Phillips initiated, and a number of parallel petitions filed by Comcast were denied consideration under the Board’s July 2019 Trial Practice Guide Update “ranking” requirement (which was itself based on an earlier Comcast v. Rovi set of IPRs).

Yesterday, a group of 324 American innovators sent a letter to the bipartisan leadership of the Senate and House Judiciary Committees to express support for several improvements in the patent system implemented by U.S. Patent and Trademark Office (USPTO) Director, Andrei Iancu, over the last several years. The letter also expressed support for recently proposed rulemaking concerning the USPTO’s discretion in instituting inter partes review Proceedings (IPR). The group of innovators included universities, nonprofit foundations, individual inventors, startups, small businesses, manufacturing, technology and life sciences companies.

This week in Washington IP news, the Senate Commerce Committee will be busy with a major hearing on Section 230 liability shields for tech platforms in light of charges of political censorship. Policy institutes hosting innovation-related events this week include the American Enterprise Institute, which kicks off the week with a closer look at the House Antitrust Subcommittee’s recent report on antitrust regulations in digital markets, and the Hudson Institute, which will dissect the oral arguments made in the Google v. Oracle Android software copyright case recently argued that the U.S. Supreme Court. The week will conclude on Friday with the regular quarterly meeting of the Trademark Public Advisory Committee to examine recent trademark operations at the U.S. Patent and Trademark Office.

As computing power and large datasets become more available, the use of artificial intelligence (AI) in technology is exploding around the world. As an indicator of the impact of AI, private equity investment in AI start-ups attracted 12% of worldwide private equity investments in the first half of 2018, reflecting a four-fold increase from just 3% in 2011, across all major economies. In the United States, the U.S. Patent and Trademark Office (USPTO) has taken steps to adapt to AI inventions, asking in August of 2019 for public comment on questions ranging from AI inventorship to how to best consider AI elements of inventions. The World Intellectual Property Organization (WIPO) has also asked similar questions, as part of its conversation on intellectual property (IP) and AI, which published its first Draft Issues Paper on IP policy and AI in December of 2019 and is continuing to hold meetings on the topic.

In Part I of this five-part guide to U.S. subsequent patent applications, the authors reviewed the law governing such applications. In Part II, we review the different types of subsequent applications. A continuing patent application is “an application filed subsequently to another application, while the prior application is pending, disclosing all or a substantial part of the subject-matter of the prior application and containing claims to subject-matter common to both applications, both applications being filed by the same inventor or his legal representative.” In re Febrey, 135 F.2d 751, 757 (CCPA 1943) (internal quotation marks and citation omitted). A continuation application is “a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented.”