Posts Tagged: "USPTO"

On November 13, the United States Patent and Trademark Office (USPTO) requested the U.S. Court of Appeals for the Federal Circuit suspend all consideration of an appeal from the Patent Trial and Appeal Board (PTAB) that would raise the same issues addressed in Arthrex, Inc. v. Smith and Nephew, Inc., because the Office will seek rehearing en banc in Arthrex. See Stuben Foods, Inc. v. Nestle USA, Inc., No. 20-1082, -1083. As a reminder, on October 31, the Federal Circuit issued an important constitutional decision in Arthrex, which found that the hiring of Administrative Patent Judges (APJs) violated the Appointments Clause of the U.S. Constitution. The Federal Circuit did, however, attempt to provide a gift to the Office by rewriting the section of the statute they found to create the problem, which created the PTAB and the appointment of APJs, and by so doing turned APJs into inferior officers. The solution: APJs were judicially decreed to be employees-at-will in order to save the statute. So, why hasn’t Director Iancu cleaned house at the PTAB? It would seem to be because the USPTO believes Arthrex was wrongly decided.  

My company, Chestnut Hill Sound Inc. (ChillSound), has been victimized by a U.S. patent system that for nearly a decade has been in a sorry state. Changes wrought by the America Invents Act (AIA) in 2011 and other recent developments cost my company, its investors and inventors millions of dollars. These changes have allowed a large company to reap great profits at our expense. Even more unfortunately, our story is too typical of many other inventors and small companies. Small businesses are the backbone of our economy and need to be cultivated, as they are the most dynamic source of new jobs and competitive products and technologies. There have always been reports of large corporations stealing inventions from small businesses, but it used to be possible via the courts to vindicate the patent rights of owners and obtain ultimate redress.  The AIA—sold by the “efficient infringers” lobby as a measure to protect big business from the expense and nuisance of so-called “patent trolls”—has turned into a weapon of deep-pocketed big businesses that enables them to steal with impunity inventions from small businesses and independent inventors. The AIA brought with it the Patent Trial and Appeal Board (PTAB) and Inter Partes Review (IPRs), a post-grant adversarial proceeding at the United States Patent and Trademark Office (USPTO). As has been amply discussed here on IPWatchdog, the Court of Appeals for the Federal Circuit (CAFC) recently opined that the so-called Administrative Patent Judges (APJs) were unconstitutionally appointed from the beginning. Yet these unconstitutionally appointed APJs continue to kill patents, especially when the patent owner is a small company that has sued a large company for infringement, as was the case with ChillSound.

It is not unusual for there to be unintended consequences in the law or life. A loved one gives you something you don’t really like, but you do such a good job of feigning happiness that it becomes a regular gift. Who knew you could ever have too many “lovely” ties or too much single malt Scotch? Congress is in the process of giving the patent bar some welcome relief on some important issues, but may be throwing in that unwanted gift along with it. The STRONGER Patents Act intends to address the potential for inconsistent rulings between district court cases and inter partes reviews (IPRs). The Act achieves this by expressing a preference for district court rulings and by requiring IPRs to apply the same standards for validity determinations that are used in the district court. This is already the case by USPTO regulation with respect to claim construction, but the Act would make it statutory for both claim construction and validity, and thus not subject to change by the USPTO. While the use of the same standard for validity in both forums will make the rulings more consistent, the statutory preference for the district court over the IPR may have an unintended consequence.

Since inventors are rarely allowed to participate in patent discussions in Congress, I would like to submit my testimony here. In Arthrex, the Federal Circuit in effect decided that our rights are subordinate to the government, so the government has the authority to giveth them to us or taketh them away. I would like to remind the Federal Circuit, the Supreme Court, and Congress that you are tasked with the honor, privilege and duty to defend our rights. That is the very basis on which you are employed, and you have no function other than that. Our rights preexist you, supersede you, and come from sources that are above your pay grade. They exist as a matter of our birth. You have no legitimate authority to take those rights just because it is inconvenient for the huge multinational corporations that have to now deal with the illegitimate position of owning our rights because so-called judges unconstitutionally took them from us and gave them to those huge corporations.   

This week in Washington, D.C., the Senate Subcommittee on Intellectual Property holds a hearing to look at ways to reduce the number of fraudulent trademark application filings that have been making their way to the U.S. Patent and Trademark Office. Other Senate committee hearings will focus on legislative proposals to protect consumer data privacy and promote the availability of wireless spectrum for 5G networks. Over in the House of Representatives, the Artificial Intelligence Task Force will convene a hearing to look into concerns related to the use of artificial intelligence technologies in the financial services industry. Elsewhere in D.C., both The Brookings Institution and the Information Technology and Innovation Foundation will host events discussing the use of facial recognition technology in the public and private sectors. 

Since the issuance by the United States Supreme Court of its opinion in Alice Corporation Pty Ltd. v. CLS Bank International, 573 U.S. 208, 134 S. Ct. 2347 (2014), the United States Patent and Trademark Office (USPTO) has increased its focus on patent eligibility. As a consequence, patent applicants now receive more claim rejections under 35 U.S.C. § 101, leading to protracted prosecution. While rejections under 35 U.S.C. § 101 are likely unavoidable, patent attorneys and agents can take steps during application preparation and prosecution to minimize the likelihood of such rejections and to successfully rebut such rejections when they do arise.

This week in Other Barks & Bites: the Federal Circuit issues precedential decisions regarding its authority to remand to the PTAB, patent prosecution history estoppel and expert testimony on motivation to combine for obviousness findings; China nominates its choice for WIPO Director while pledging to reach “social satisfaction” on IP protections by 2025; INTA announces Ayala Deutsch as the organization’s new president; the USPTO seeks public comments on information collection related to national security concerns; the TTAB applies Federal Rules of Civil Procedure to discovery requests; Hewlett Packard shares drop after quarterly revenues fall short of analyst expectations; and the PTAB allows additional briefing in a case after the possibility of Administrative Procedure Act violations were raised by a patent owner.

On November 22, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the District of Nevada granting summary judgment of noninfringement under the doctrine of equivalents. Pharma Tech Solutions, Inc. (Pharma Tech) sued LifeScan, Inc. (LifeScan) for infringement of U.S. Patent Nos. 6,153,069 (the ‘069 patent) and 6,413,411 (the ‘411 patent). The patents are directed toward home use, blood glucose monitoring systems for individuals with diabetes. Previous monitoring systems determined blood glucose concentration from the Cottrell current drawn and measured from a patient’s oxidized blood sample. The specification of the ‘069 and ‘411 patents claims to improve on these systems by “eliminating several of the critical operator dependent variables that adversely affect the accuracy and reliability” of the previous systems. The invention performs multiple Cottrell current measurements (opposed to just the one) and converts these into analyte concentrations. It then compares the results for better accuracy, notifying the user if the results fall outside of an acceptable range of each other to indicate a system error. Ultimately, the CAFC found that because LifeScan’s meter does not convert diffusion limiting current readings to analyte concentration measurements and then compare the measurements to detect errors, and because Pharma Tech is barred in its infringement argument by prosecution history estoppel, LifeScan did not infringe Pharma Tech’s ‘069 or ‘411 patents.

This year has included many twists and turns for IP stakeholders, particularly on the patent side. Most recently, the Federal Circuit’s decision in Arthrex has called into question the constitutionality of Patent Trial and Appeal Board decisions, and perhaps the Board itself. Elsewhere, Congress has been—unsuccessfully—attempting to step in and clarify U.S. patent law since early in the year, while the courts have continued to muddy the waters of patent eligibility law. The Federal Trade Commission’s case against Qualcomm, and Judge Lucy Koh’s decision in the case, have further called into question the United States’ ability to compete on the innovation front going forward. And yet, there have been some wins in other areas this year, including at the U.S. Patent and Trademark Office (USPTO), and there remain many reasons to be hopeful about the year ahead. IPWatchdog asked some IP experts to share what they have to be thankful for on the IP front this Thanksgiving, despite all the uncertainty. Hopefully, as those of you who celebrate the holiday enjoy your Thanksgiving dinners, these sentiments will inspire you to be thankful too.

On November 23, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB) ruling in a pair of inter partes review (IPR), which had invalidated all claims of two related patents, U.S. Patent Nos. 9,014,243 and 8,718,158. TQ Delta, the patent owner, appealed the PTAB’s holding that all claims of the challenged patents would have been obvious when viewed in light of the prior art references, including U.S. Patent Nos. 6,144,696 (Shively) and 6,625,219 (Stopler), asserted by Cisco System Inc. and the other appellees (collectively, “Cisco”). Admissibility of evidence, claim construction, and due process were among several other challenges raised by TQ Delta on appeal. Because the PTAB’s determination of obviousness was not supported by substantial evidence, the CAFC reversed.

In Airbus S.A.S v. Firepass Corporation, Appeal 2019-1803 (November 8, 2019), Airbus appealed the Patent Trial and Appeal Board’s (PTAB’s) reversal of the examiner’s rejection of new claims presented by Firepass in an inter partes reexamination of U.S. Patent No. 6,418,752 (“the ‘752 patent”). In particular, the inter partes reexam returned to the Court from a prior appeal (Airbus SAS v. Firepass Corp., 793 F.3d 1376 [Fed. Cir. 2015]) in which the Court vacated and remanded to the Board to consider Airbus’s challenge to the newly presented claims. Airbus disputes the Board’s finding that an asserted prior art reference, which just so happens to be a patent issued to the same inventor as the ‘752 patent, is nonanalogous art.

On October 30, the Senate Judiciary Committee’s Subcommittee on Intellectual Property heard from five witnesses on ways to improve patent quality at the United States Patent and Trademark Office (USPTO). The Subcommittee subsequently posed questions to the witnesses, including professors Colleen Chien, R. Polk Wagner, and Melissa Wasserman, to supplement their testimony. Those witnesses have now submitted their responses, which expand upon their various suggestions for improving patent quality.

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reviewed an appeal of the PTAB’s final decision that Game and Technology Co. Ltd.’s (GAT) Patent No. 7,682,243 (the ‘243 patent) was obvious over the prior art, and that inter partes review (IPR) was not barred under 35 U.S.C. § 315(b). The CAFC held that the PTAB properly asserted that claims 1-7 of patent ‘243 were obvious in light of the prior art and that an IPR was not barred because the petitioner, Wargaming Group Limited (Wargaming), was not properly served with a complaint alleging infringement of the [‘243] patent over a year before it filed its petition for an IPR.

About a month ago, Steve Brachmann authored an article concerned with a brief given to Capitol Hill staff by Professors Frakes and Wasserman. The article highlighted fundamental, as well as practical, problems with Professors Frakes’ and Wasserman’s proposal (i.e. doubling the number of patent examiners as a means to reduce the number of invalid patents and thereby prevent societal harms) and how it could be detrimental to the U.S. patent system. The IPWatchdog article points to several issues with Frakes’ and Wasserman’s proposal, but does not discuss other approaches or options, such as using artificial intelligence tools to improve the patent application review process—an option that USPTO Commissioner for Patents Drew Hirshfeld said in a recent Senate IP Subcommittee hearing that the Office is actively pursuing. According to PWC, 72% of executives testify that AI improves internal operations while freeing up workers to perform more creative and meaningful tasks. In fact, while some might fear that “robots” will take human jobs, technological innovation has been proven to generate more jobs than it takes, while automating tasks, like patent search.

This week in Other Barks & Bites: the U.S. Patent and Trademark Office issues an updated AIA Trial Practice Guide following SAS Institute v. Iancu; the AM-FM Act is introduced into Congress to update copyright law for terrestrial radio stations; VoIP-Pal.com defeats remaining IPRs challenging its patents at the institution phase; the Copyright Royalty Board announces cost of living adjustments in certain royalty rates; a Senate report shows that U.S. law enforcement didn’t adequately respond to Chinese IP theft for 20 years; China outpaces the rest of the world in terms of blockchain patent filing activities; and Apple joins Intel’s antitrust actions against Fortress Investment Group’s patent assertions.