Posts Tagged: "USPTO"

On October 20, the United States Patent and Trademark Office (USPTO) published a “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” in the Federal Register. In particular, the USPTO is considering the codification or modification of its current policies and practices with respect to instituting trials before the Office under the Leahy-Smith America Invents Act (AIA). The Office submitted a proposed rulemaking to the White House’s Office of Management and Budget (OMB) last month with the aim of formalizing recent practices under precedential opinions including Apple Inc. v. Fintiv, Inc; General Plastic Industries Co. Ltd. v. Canon Kabushiki Kaisha; and Becton, Dickinson & Co. v. B. Braun Melsungen AG.

Patent filings were down ever so slightly last week, with 30 Patent Trial and Appeal Board (PTAB) petitions filed (29 inter partes reviews [IPRs] and one post grant review [PGR], the biggest chunk being Lenovo’s nine IPR filings against Nokia’s standard-essential patents) and 61 litigations. District court filings were driven in part by WSOU against their now-regular defendant, OnePlus Technology (Shenzhen), and in part by another wave of mostly Western District of Texas cases against another six major device manufacturers by Aquis Technologies—a decades-long Texas-based assertor of patents against USB-connection devices (the patents have already seen claim construction at least once; this brings the total number of defendants involved to 20 over the past 10 years.)

Naming the correct inventors is critical when drafting a U.S. patent. Patents must have all inventors properly named. Deciding who is an inventor is a complicated task and great care must be taken to not add or omit people who are not inventors. It is possible that failure to properly name the inventors could result in losing your patent or its value. If inventors have been improperly added or omitted, the patent must be corrected or it could be declared invalid.

On August 18, 2020, the USPTO issued a guidance memorandum on the treatment of applicant statements in the challenged patent in inter partes review (IPR) proceedings under Section 311, which addresses the use of applicant statements as Applicant Admitted Prior Art (AAPA). When an IPR is filed, the basis of that IPR must be prior art consisting of either a patent or printed publication. An interesting situation arises when the disclosure of the challenged patent itself admits or allegedly admits certain material as prior art. This situation has presented itself to the Patent Trial and Appeal Board (Board) on a number of occasions and has received inconsistent treatment. The purpose of this memorandum is to clarify that an applicant’s own statements in the challenged patent cannot serve as the basis for instituting an IPR. But the use of AAPA is still available as evidence the Board may consider for more limited purposes.

Yesterday, the United States Patent and Trademark Office (USPTO) announced that Mary Critharis has been appointed as the USPTO’s Acting Chief Policy Officer and Director for International Affairs. According to the announcement, Critharis will serve in the role while the USPTO continues the process of identifying a permanent replacement for Shira Perlmutter, who was the Chief Policy Officer and Director for International Affairs for the past eight years. Last month, Perlmutter was chosen by Librarian of Congress Carla Hayden to be the 14th U.S. Register of Copyrights. 

On October 15, the United States Court of Appeals for the Federal Circuit (CAFC), in St. Jude Medical, LLC v. Snyders Heart Valve LLC, affirmed an inter partes review (IPR) decision of the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (the Board) rejecting St. Jude Medical, LLC’s (St. Jude) contention that Snyders Heart Valve LLC’s (Snyders) artificial heart valve patent was invalid. The CAFC also reviewed a second IPR decision, wherein it reversed the Board’s decision that certain claims of the patent were invalid and affirmed the Board’s decision that the remaining claims were valid.

While researching the newly codified Manual of Patent Examination Procedure (MPEP) Section 706.07(b), we noticed some petitions filed more than two months after the final Office action mail date were decided on their merits while other petitions were dismissed as untimely. Here, in Part III of the series, we examine the U.S. Patent and Trademark Office’s (USPTO’s) seemingly arbitrary treatment of petitions filed more than two months after the final Office action. We also expose procedural traps where deciding officials side-step addressing the merits by dismissing certain ones as untimely. Importantly, we uncovered recent changes in how petitions are decided and identified an increased number and manner of petitions dismissed by the USPTO as untimely.

The United States Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed an invalidity decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Immunex Corporation v. Sanofi-Aventis U.S. LLC. Considering the intrinsic and extrinsic evidence, the CAFC agreed with the PTAB’s construction of the disputed claim term, “human antibodies,” and affirmed the holding that the patent in suit was invalid as obvious.

In late September, Bloomberg News reported that Scott Boalick, Chief Administrative Patent Judge (APJ) at the Patent Trial and Appeal Board (PTAB), announced the introduction of a new form allowing members of the public the ability to nominate certain PTAB decisions for precedential status. The form, available on the U.S. Patent and Trademark Office’s website, asks those endorsing decisions to choose whether precedential or informative status should be conferred and to provide some brief reasons for the nomination. As Bloomberg’s coverage suggests, the anonymous nature of the process could encourage nominations from practitioners representing both patent owners and petitioners at the PTAB who may be concerned about how some clients may view their nominations. Such client overlap is a common feature at the PTAB, where many of the most active law firms representing patent owners are also atop the list of most active petitioners’ counsel.

Patent Trial and Appeal Board (PTAB) filings were down substantially this week, with just 16 filed, possibly given the rush to file before the fee increase probably cleared some dockets—or it could just be a fluke. District court patent filings were down just a tad from the usual 70 or so, with 68, fueled by megafiler WSOU adding another defendant in a half-dozen suits, this time NEC Corp. Otherwise, the jump in business method patent assertions is evident, and parties are filing counterfeiting/brand enforcement actions with design and utility patents at a healthy clip. All of that will be overshadowed by the Supreme Court’s grant of certiorari in Arthrex and the shadow it casts, but it’s worth noting that in the meantime monetization entities aren’t skipping a beat.

The United States Supreme Court has granted certiorari in three cases involving Arthrex, Inc. focusing on the question of whether the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were constitutionally appointed. The Court has consolidated the cases and limited the questions to question one and two in the United States government’s memorandum of July 22 in both Smith & Nephew, Inc., et. al. v. Arthrex, Inc. et. al. and Arthrex, Inc. v. Smith & Nephew, Inc., et. al.

Every time a patent application is filed, we have to ask, “Who are the inventors?” It is a simple question, but the answer can be complicated. And there can be severe consequences if you get it wrong. You could lose your patent. As the Grail Knight in the Indiana Jones movie stated so well, “You must choose, but choose wisely.” As you know, patents typically have a number of claims broken down into independent and dependent claims. So, you have to look at each of the claims and determine who conceived the invention. There can be cases where different inventors conceived different parts of the invention in different claims. What’s important to understand is that you must include as named inventors anyone who conceived of an invention in any claim – even dependent claims.

The 2019 USPTO-NIST-DOJ Joint Policy Statement on Standard-Essential Patents Subject to Voluntary RAND or FRAND (fair, reasonable and non-discriminatory) commitments “intended to solve [judicial] misinterpretation, and to encourage balance in our patent ecosystem, and to further strengthen patent rights,” USPTO Deputy Director Laura Peter said in her keynote at a recent IP-antitrust event. Peter delivered the remarks at an event hosted by the Eagle Forum Education & Legal Defense Fund, a conservative public policy and grassroots organization founded by the late Phyllis Schlafly, titled, “Inventing Dynamic Competition: Intellectual Property, Antitrust, and Competition” September 30 in Washington, D.C.

Filings at the Patent Trial and Appeal Board (PTAB) were almost triple last week’s, with parties racing to file before the more than $10,000 filing fee increase that went into effect October 2. The District Courts, for their part, were likewise inundated with more than 100 patent filings last week, due almost entirely—through an eye-popping 48 filings—to IP Edge filing via almost a dozen of their known subsidiaries (bringing their annual total to almost 500 suits filed this year, mainly in the Western District of Texas, none of which have yet or are likely to reach trial). WSOU also added Huawei to their growing list of defendants and sprawling assertion campaign.

Patent practitioners (hopefully) know that there are many types of patent applications and, at times, have filed a continuation, continuation-in-part, or divisional application. “Continuation practice” was the once commonly used phrase to describe subsequent U.S. patent applications, which also used to include file wrapper continuations (FWC), now replaced by the more modern request for continued examination (RCE). These types of subsequent patent applications can be used strategically to build a portfolio of patents for a client for a given subject matter. See, e.g., the patents asserted in WesternGeco LLC v. ION Geophysical Corp., 585 U.S. ___, 138 S.Ct. 2129 (2018). However, many patent practitioners are not fully aware of the implications of each such subsequent application, either for prosecution or for litigation. This five-part series will review these types of applications and their implications and ultimately provide some relevant practice tips.