Posts Tagged: "USPTO"

In Facebook v. Windy City Innovations, the U.S. Court of Appeals for the Federal Circuit earlier today ruled that the Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder…. On the topic of whether the language of § 315(c) authorizes the joinder of a person as a party to a proceeding in which it is already a party, the Court was again clear on what the plain language of § 315(c) allows. The Director is permitted  “to join as a party [to an already instituted IPR] any person’ who meets certain requirements. 35 U.S.C. § 315 (emphases added).”

With Coronavirus delaying prosecution, preventing courts from empaneling juries, and keeping attorneys home with the kids, you would think filings would have dropped; instead, we saw a slight uptick this week. We saw Elizabeth Holmes’ Theranos patents reemerge, witnessed the start of a battle between in-flight WiFi companies, and even watched sheets of sapphire sold to the government stay hot.

Experts speaking during IPWatchdog’s Virtual Patent Masters Symposium yesterday expressed concern over the state of the U.S. patent system, but also offered a number of solutions, and many took a cautiously optimistic outlook for the future. In one session, Patent Masters Q. Todd Dickinson of Polsinelli, Judge Theodore Essex of Hogan Lovells, Retired Chief Judge Paul Michel, and Robert Stoll of Drinker Biddle discussed the Supreme Court case eBay Inc. v. MercExchange, wherein the former bright line rule of issuing permanent injunctions was replaced by a four-factor test according to familiar rules of equity that apply to all areas of law. While the consensus among the Masters was that eBay has created a multitude of problems, Judge Michel pointed out that eBay has been misinterpreted by the district courts.

Last week, the U.S. Court of Appeals for the Federal Circuit issued a Rule 36 judgment in a patent eligibility case, Consumer 2.0, Inc. v. Tenant Turner, Inc., No. 19-1846 (Fed. Cir. 2020). The ruling affirmed the findings of the U.S. District Court for the Eastern District of Virginia that the claims of a a patent for a “method employing a combination of hardware and software for secure, automated entry of real property” were invalid for being directed to an abstract idea and, thus, were ineligible for patent protection under 35 U.S.C. § 101. The patented method essentially allows a user to enter a “durational” – rather than static – code on a lockbox in order to view a rental property without a realtor being present.

Retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit Paul Michel told registrants of IPWatchdog’s Virtual Patent Masters program taking place today  that the U.S. patent system has been “weakened to the point of being dysfunctional.” This dysfunction has been especially harmful to small businesses and startups, as well as to innovation in the life sciences industry—which we need now more than ever. Asked by IPWatchdog CEO and Founder Gene Quinn whether the coronavirus pandemic may be a wakeup call to those in power about the importance of incentivizing innovation in the life sciences area, Judge Michel noted that experts in the vaccine industry have indicated that China now dominates vaccine research and production. “The current circumstances may shift the thinking of policy makers quite suddenly and quite far,” Michel said. “We definitely are crimping the human health efforts for prevention and cure of symptoms. Let’s hope this really is a wakeup call for our leaders.”

The Federal Circuit on Friday reversed the Patent Trial and Appeal Board’s decision holding certain claims of Personalized Media Communications, LLC’s (PMC’s) U.S. Patent No. 8,191,091 (the ’091 Patent) unpatentable on anticipation and obviousness grounds but affirmed the decision as to the remaining claims. The Court found that the Board erred in its claim construction of one of the claim terms at issue due to its dismissal of the prosecution history. The Board rejected PMC’s reliance on the prosecution history, stating “the prosecution history presents a murky picture as opposed to a clear waiver.” The Federal Circuit disagreed with this approach and found that the prosecution history statements supported PMC’s interpretation and construction of the phrase “encrypted digital information transmission.”

I have often thought of the patent process as being like the car wash near my house – where you pull up to the entrance, to the point where an attendant shouts “neutral!”, and your car is then magically pulled through a defined series of stations until it comes out clean at the other end. The key difference being – the car wash takes five minutes, costs six bucks, and requires no effort. Not so with patents. In a way, the patent system can be seen as a far more rigorous 20-year car wash – beginning from the moment you pull into the patent office by filing your first application, thereby obtaining that all important Filing Date. You are then led along an arduous path of decisions, deadlines, and stages – all with corresponding costs. No matter when and where you might actually obtain a patent along that path, assuming you do at all, you are out the door (i.e., those patents will expire) generally 20 years to the day after you first heard “neutral!”.

Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Hank Johnson (D-GA), Doug Collins (R-GA), Martha Roby (R-AL) and Jerry Nadler (D-NY) yesterday introduced legislation to modernize the U.S. trademark system. The Trademark Modernization Act of 2020 is in part a response to the surge in fraudulent trademark filings, largely originating from China, that both the U.S. Patent and Trademark Office (USPTO) and Congress have been grappling with over the last year. Perhaps most notably, in a stated effort to better protect consumers by minimizing confusion about goods and services, the bill would restore the rebuttable presumption of irreparable harm when a trademark violation has been proven (thus clarifying eBay v. MercExchange).   

There was a sharp decline in the number of inter partes review (IPR) petitions filed last year; in 2019, a total of 1,271 IPR petitions were filed, compared to 1,607 IPR petitions in 2018. This represents a decline of 21%. Patent litigation has been falling from its peaks in 2015 and, as IPR filings closely follow the U.S. district court trends, with a lag of 12 to 18 months, this decline in IPRs was expected. Taking a closer look at the most active IPR firms, the following firms lost or gained significant market share as the broader IPR market declined in 2019. While there are different ways to look at this, we chose to compare the absolute change instead of the percentage of change, as smaller players with, for example, a single case in 2018, can grow 100% by adding one new case in 2019. We also looked at the total IPR activity for the firms as they represented either the petitioners and patent owners in 2018 or 2019.

Much has been written on women’s disproportionate numbers as scientists trained in science, technology, engineering and mathematics (STEM), as well the under-representation of women as inventors of record on USPTO patents. These statistics relate to women’s role in scientific development and inventorship, or in other words: in the creation of intellectual property (IP). Having said that, the reasons why women don’t get funded have little to do with IP, and much to do with the institutional structure of the venture capital (VC) ecosystem, as well as the corporate representation (or lack thereof) of women in senior management and board positions.

The U.S. Court of Appeals for the Federal Circuit has affirmed a ruling by the United States District Court for the Southern District of Indiana finding CleanTech’s patents-in-suit unenforceable for inequitable conduct for making a pre-critical-date offer for sale.  The patents-in-suit, U.S. Patent Nos. 7,601,858 (“the ’858 patent”), 8,008,516 (“the ’516 patent”), 8,008,517 (“the ’517 patent”), and 8,283,484 (“the ’484 patent”), are directed to methods of recovering oil from a dry mill ethanol plant’s byproduct, i.e. “thin stillage.” 

A flash of genius hits like lightning. It shocks you into a superior state of understanding and your entire body buzzes. My flash struck in the summer of 2000, while I was asleep. Then, a New York Times article came out in October 2006 with a picture of the 20-something wunderkind who apparently “experienced an epiphany…an idea that would be worth billions and billions of dollars.”  Standing next to him was my former boss who thought my invention was “brilliant.”

From the time my patent was granted to the time it expires, a company that stole my invention from my hands will have generated over $1 trillion dollars using it. When faced with a patent infringement lawsuit, they weaponized the America Invents Act (AIA), which they lobbied into law, and the Patent Trial and Appeal Board (PTAB) validated their theft.

On February 21, the Patent Trial and Appeal Board (PTAB) issued a pair of institution-phase decisions in inter partes review (IPR) proceedings petitioned by Internet tech giant Google, both of which challenge claims of a patent owned by Virentem Ventures and asserted in a District of Delaware infringement case against Google subsidiary YouTube. Although the PTAB denied institution to one of the IPRs, institution of the other Google IPR threatens each patent claim that has been asserted against variable speed audio/video playback services enabled by YouTube and Google products. With the IPR proceeding instituted, Virentem Ventures is now facing IPR proceedings instituted upon six of its patents asserted against Google in Delaware.

In IPR 2018-01472, brought by Apple Inc., HTC Corporation, HTC America, Inc., and ZTE (USA) Inc. (Apple), the Patent Trial and Appeal Board (PTAB) last week determined all challenged claims of INVT SPE LLC’s (INVT) Patent No. 6,466,563 to be unpatentable as obvious. The ‘563 patent is titled “CDMA [Code Division Multiple Access] Mobile Station and CDMA Transmission Method” and was issued on October 15, 2002. The patent describes an addition of burst data to the end of a transmission “allow[ing] synchronization with the base station apparatus to be maintained,” thus “making it possible to restart communication immediately.” The transmission interval control circuit also “controls the transmission interval of burst data to N times one slot (N: a natural number) at the end of transmission” to conserve power consumption.

Inequitable conduct is practically the stuff of ghost stories among patent practitioners. You must satisfy your duty of candor to the U.S. Patent and Trademark Office (USPTO) or the patent – all the claims – will be worthless. Since Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc) ushered in the “but-for” materiality standard, some patent practitioners may have become too complacent and willing to take a chance. Who will find out? A recent decision in Deep Fix, LLC v. Marine Well Containment Co. LLC (S.D.Tx. Feb. 18, 2020) may have patent prosecutors reviewing their files and even filing a request for supplemental examination or two.