Posts Tagged: "USPTO"

On September 24, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part and reversed-in-part the U.S. District Court for the Eastern District of Texas’s claim construction and remanded to the district court in Network-1 Technologies, Inc. v. Hewlett-Packard Company. In particular, the CAFC concluded that the district court erred in construing the claim term “main power source” and held that a party joined to an inter partes review (IPR) proceeding is not estopped from raising new invalidity grounds in district court, since the joinder provision does not allow parties to raise grounds not already instituted. The CAFC ultimately affirmed-in-part, reversed-in-part, vacated and remanded the district court’s judgment for a new trial on infringement.

In the latest episode of a long-running saga between Apple and Voip-Pal, the U.S. Court of Appeals for the Federal Circuit on Friday denied Apple’s request to reverse the Patent Trial and Appeal Board’s (PTAB’s) determination that 15 claims of Voip-Pal’s voice over IP communications patents were not invalid for obviousness. The Court also affirmed the PTAB’s sanctions order, which Apple had appealed because the Board did not enter adverse judgment against Voip-Pal or vacate the final written decisions and assign a new panel. The opinion was authored by Judge Reyna.

The USPTO recently revised Manual of Patent Examination Procedure (MPEP) Section 706.07(b) to retroactively impose a first action final rejection (FAFR) policy that significantly reduces patent applicants’ options (MPEP, E9R10.2019. Fed. Reg. Vol. 85, No. 133 page 41,571). In Part 1 of this two-part series, we analyzed the final agency decision provided by the USPTO as basis for the FAFR policy change. Here, in Part II, we analyze petition decisions relating to FAFRs made on amended claims filed in continuing applications. We discovered, when determining the propriety of a FAFR, the USPTO has been comparing whether claims are drawn to same invention using two separate legal standards: identical scope or patentably indistinct. The majority of the patent corps apply the 1969 legal standard which limits FAFR to claims of identical scope as previously examined. The results of our analysis indicated the new patentably indistinct standard authorizing FAFR on substantially amended claims originated in one Technology Center (TC), was upheld by the FA Decision (defined below), and then adopted by another TC in 2018. Codifying two alternative FAFR standards in the June 2020 MPEP permits all patent examiners to arbitrarily impose FAFRs on substantively amended claims, if they so wish.

The U.S. Patent and Trademark Office (USPTO) has submitted proposed rulemaking for review by the White House’s Office of Management and Budget (OMB). Although the details are not public, the proposed rule is anticipated to formalize prudential doctrines on trial institution that the Patent Trial and Appeal Board (PTAB) currently applies through precedential opinions such as Apple Inc. v. Fintiv, Inc.; General Plastic Industries Co. Ltd. v. Canon Kabushiki Kaisha; and Becton, Dickinson & Co. v. B. Braun Melsungen AG. These doctrines provide legal frameworks under which the PTAB may deny institution of an inter partes review (IPR) based on fairness—rather than on merits alone. Because the doctrines reduce the odds that certain categories of IPRs will be instituted, they are subjects of fierce dispute among patent lobbyists and, most recently, a lawsuit filed under the Administrative Procedure Act (APA) in the Northern District of California. Apple Inc. v. Iancu, No. 5:20-cv-06128 (N.D. Cal.). As the two sides fight for their respective interests, the public—and policymakers—should not lose sight of the big picture: these doctrines protect basic tenets of fairness and they are, on balance, good policy. Stakeholders and OMB should therefore support the USPTO in its rulemaking effort.

District court patent filings bounced back this week to 86, while the Patent Trial and Appeal Board (PTAB) saw a slight jump to 44, fueled in part by eight under-the-wire covered business methods (CBM) filings just prior to that program’s expiry. WSOU Holdings filed another round against new defendants from their massive Nokia/Alcatel-Lucent portfolio, asserting new one-off patents not previously asserted, bringing their litigation total this year to 131, and bringing new defendants F5 Networks and Xilinx into the fray. It seems there may be no end to new suits in sight.

In his address to the Intellectual Property Owners Virtual Annual Meeting yesterday, USPTO Director Andrei Iancu said that, despite sharp declines in filings and renewals, COVID-19 seems to have spurred innovation in some areas. “Small and micro entity patent filings are at a historic high, with more than 112,000 filed during the first 11 months of fiscal year 2020,” Iancu said. In an August interview with IPWatchdog Founder and CEO Gene Quinn, Iancu discussed one of the COVID-19 relief programs the Office has instituted to support small inventors during the pandemic. A pilot that offers free prioritization of COVID-19 related patent applications has been working well, Iancu told Quinn, and is expressly geared to assisting smaller entities.

The USPTO recently revised the Manual of Patent Examination Procedure (MPEP) Section 706.07(b) to retroactively impose a first action final rejection (FAFR) policy that significantly reduces a patent applicant’s options (MPEP, E9R10.2019. Fed. Reg. Vol. 85, No. 133 page 41,571). Here, in Part I of this two-part series, we identify and analyze the final agency petition decision behind the policy change. In Part II, we provide summary and analysis of petition decisions relating to premature final office actions. Codifying the new FAFR standard in the June MPEP revision opens the door for all patent examiners to impose FAFRs on substantively amended claims, if they so wish.

The U.S. Patent and Trademark Office (USPTO) announced today that Shira Perlmutter, the Office’s Chief Policy Officer and Director for International Affairs, has been chosen by Librarian of Congress Carla Hayden to be the 14th U.S. Register of Copyrights. Maria Strong has been serving as Acting Register since January 2020, after former Register Karyn Temple left the position in December 2019. Temple had been promoted to Register in March 2019 following two and a half years serving as Acting Register. Maria Pallante, the 12th Register of Copyrights, had been fired from the position in 2016.  

Trademark law has seen substantial developments in 2019 and 2020, with four major cases in the United States and Europe rising to the top. The U.S. Supreme Court (SCOTUS) issued two of those decisions, the most recent being especially significant because the court has not opined on the topic of trademark genericism in nearly 100 years. The other SCOTUS case dealt with the hotly contested topic of awarding profits obtained through innocent (unknowing) trademark infringement.

The U.S. Patent and Trademark Office (USPTO) earlier this week announced the creation of the National Council for Expanding American Innovation (NCEAI), an initiative ostensibly intended to “build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.” Reactions to the Council were mixed, with a number of IPWatchdog sources contacting us to alternately express their confusion, skepticism or support. We put out a call for official reactions to share these varying responses, which raise a number of questions to be monitored as the NCEAI moves forward.

As IPWatchdog’s Virtual CON2020 continues, in a session on Day 7 titled “The Gender Gap: Stem Education, Funding & Inventorship,” a panel discussed the current underrepresentation of women and possible steps forward in science, technology, engineering, and mathematics (STEM) disciplines, patent professions and inventing. The panelists included Hope Shimabuku, the Director of the USPTO Texas Office; Megan Carpenter, Dean of the University of NH Franklin Pierce School of Law; Efrat Kasznik, President of Foresight Valuation Group; Delicia Clarke, Associate at WilmerHale; and Sandra Nowak, Assistant Chief IP Counsel at 3M.

On September 9, a panel of three administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a decision denying institution of a petition filed by Apple seeking inter partes review (IPR) proceedings to challenge the validity of a patent owned by Unwired Planet. In denying institution to Apple’s IPR petition, the APJ panel relied on a discretionary multi-factor test referred to as NHK-Fintiv, which weighs the efficiencies of handling validity reviews at the PTAB when parallel proceedings on similar issues are ongoing in U.S. district court. On September 14, a number of “Small Business Inventors” also filed a Notice of Motion and Motion to Intervene and related Complaint in the California case. The Small Business Inventors argue that the disposition of the case will “have lasting impacts on their proprietary and legal interests” that are “distinct from the interests of the Original Plaintiffs, and of the Defendant.”

District court filings were substantially lulled this week, with about a third of what’s normal—33—filed to the Patent Trial and Appeal Board’s 32 petitions, propped up by lithium-ion battery company Amprius filing eight inter partes reviews (IPRs) against the Japanese Softbank (via Fortress IP)-owned Traverse CF non-practicing entity (NPE). CBM Sunset: The little-used covered business methods (CBM) program sunsets today. As evidenced by the lack of any substantial rush to file any at the last minute, the proceeding had for years been eclipsed both by Federal Circuit rulings narrowing the scope of the program and by the explosion and success of subject matter challenges in the district courts. While there have been rumors of a last-minute attempt to revive the program, for now it seems destined for the dustbin of history.

The U.S. Patent and Trademark Office (USPTO) announced yesterday a major initiative to “build a more diverse and inclusive innovation ecosystem by encouraging participation demographically, geographically, and economically.” Dubbed the National Council for Expanding American Innovation (NCEAI), the project includes 29 representatives from industry, academia, and government, and was conceived based on recommendations made in the USPTO’s 2018 SUCCESS Act study and congressional report transmitted to Congress in December 2019.