Posts Tagged: "USPTO"

Nearly four months ago, the Federal Circuit for the first time addressed the applicability of the Takings Clause of the Fifth Amendment to IPRs, holding in Celgene Corp v. Peter “that the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is not an unconstitutional taking under the Fifth Amendment” Celgene Corp. v. Peter, 931 F.3d 1342, 1362 (Fed. Cir. 2019). Since then, the court has continued to reject similar Patent Trial and Appeal Board (PTAB)-related Takings Clause claims on the merits. E.g., Collabo Innovations v. Sony Corp., No. 2018-1311 (Fed. Cir. Aug. 5, 2019). Unsurprisingly, Celgene filed a request for an en banc rehearing, and the government has just this week filed its response. Both Celgene’s en banc petition and the government’s response address the merits of Celgene’s constitutional claim—but as we hinted at in an earlier article analyzing the Celgene decision, there is a serious question whether the Federal Circuit should have even reached the merits of the Takings Clause issue in its panel opinion. In light of Supreme Court Takings Clause precedent, the Federal Circuit may want to either request supplemental briefing to decide whether it should have addressed the constitutional question in the first place, or potentially even revise the panel opinion and leave this issue to be decided in another case.

In Part I of this article, we examined the top three rejections for design patent applications, which are due to non-enablement, inconsistency, and ambiguousness. The fourth most common reason for rejection of design patents is for objections to the drawing disclosure, which we will discuss here. Objections to the drawings occur when something is incorrectly shown in the drawings, but the drawings are still understood by the Examiner. In the stereo receiver example above, if the bottom plan view was present in the original disclosure but the front elevational view did not show shading on the feet, the Examiner would likely issue an objection, stating that shading was not shown on the front surface of the feet and should be. (If the bottom plan view was not part of the originally filed drawings, then the Examiner would be issuing a Sec. 112 rejection instead of merely an objection since there’s not enough information to understand the shape of the feet and the feet will have to be disclaimed by converting them to broken lines.) Objections to the drawings are usually easy to overcome, but they still must be overcome by submitting replacement sheets. This decreases the efficiency of your operation and increases client costs, so objections are important to minimize by carefully reviewing your drawings before submission.

Trademark and copyright enforcement remains a significant challenge for licensors of popular brands across sports, entertainment, fashion and other industries. The Organization for Economic Cooperation and Development, a group of three dozen industrial countries, estimates counterfeit goods account for 3.3% of global trade. Brand owners cannot rely on the belief that their trademark and copyright registrations will be respected, and they cannot confine their enforcement to demand letters and traditional intellectual property litigation. Rather, a brand owner must avail itself of additional approaches to address both traditional and newer platforms offering infringing products. We continue to see an increase in online infringements, especially in connection with certain e-commerce sites and targeted advertisements on social media. Under the current law, enforcement against online providers can be difficult, particularly when compared to traditional infringement hot sports in the brick-and-mortar marketplace. Flea markets, swap meets and other brick-and-mortar shopping venues reported verdicts and settlements in the last 10 years that confirm commercial landlords/owners can be held liable for the trademark infringement activity of their tenants, with courts around the country extending liability for trademark infringement beyond just the party selling infringing products.

“It’s up to you to do the right thing and fix this,” said Professor Arti Rai of The Center for Innovation Policy at Duke University School of Law near the end of a hearing on what Congress should do in the wake of the Arthrex decision yesterday. Rai was one of four IP scholars who testified during the hearing of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet; all witnesses seemed to agree that the courts will not fix the problem soon enough to ensure the requisite certainty for U.S. patent owners and businesses, so Congress must act. In Arthrex, the Federal Circuit found that the Patent Trial and Appeal Board’s (PTAB’s) Administrative Patent Judges (APJs) were unconstitutionally appointed and removed the civil service protections they previously were deemed to enjoy—although, as Professor John Duffy of the University of Virginia School of Law pointed out, if the Federal Circuit ruled that the APJs can’t have tenure, that arguably means they never did. “If you go back to Marbury v. Madison, courts don’t actually strike down statutes; they simply say what the law is,” Duffy said.

As one of about 46,000 registered practitioners in the United States, most of us are unfortunately too well acquainted with Section 101, 102, and 103 rejections from the U.S. Patent and Trademark Office (USPTO). But it may be surprising that most rejected design patent applications are not rejected under these sections. Instead, the least favorite number of the design patent practitioner is 112. While Section 112 rejections on utility applications are generally easily overcome, that is often not always the case with such rejections on design applications. Since there are only about 30,000 design applications issued each year, each of the 46,000 registered practitioners handle on average less than one design application per year! So, for those unfamiliar with the quirks of design patent practice, which is most of us, and since design patent applications have a relatively high allowance rate of 84% (see the USPTO Data Visualization Center/Design Data page, it might be tempting to rely on your patent draftsperson to prepare what they think are adequate drawings, copy the mostly boiler-plate specification language, and just file the application. But that can be a costly mistake.

For weeks now I have been asking the United States Patent and Trademark Office (USPTO) to confirm how many Administrative Patent Judges (APJs) are currently employed by the Office, a request that predates the Federal Circuit’s controversial Arthrex decision, but which was renewed after the decision issued. For reasons that I cannot explain, the Office refuses to provide an answer to what seems to be a straightforward and legitimate question: How many APJs are currently employed by the USPTO? Regardless of the USPTO’s reluctance to identify the number of APJs employed, it seems safe to say that the employment rights and futures of several hundred APJs hang in the balance as the result of the Federal Circuit’s decision in Arthrex, which found that the hiring of 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 America Invents Act (AIA) they found to create the problem, and by so doing turned APJs into inferior officers. In order to do so, the Federal Circuit turned those uncertain number of APJs into employees-at-will, which allows for them to be fired by the Director of the USPTO. This is significant because certain APJs have not been willing to get on board with changes implemented by Director Iancu. The belief of those APJs who have not been “team players” is that they are judges and are not controlled by and do not answer to Director Iancu. Well, with the Federal Circuit’s decision in Arthrex that employment dynamic changed overnight.

This week in Washington, D.C., the House Intellectual Property Subcommittee will explore the  impact of the Federal Circuit’s recent Arthrex decision on the Patent Trial and Appeal Board’s (PTAB’s) administrative patent judges on Tuesday. Other House subcommittees will look at small business contributions to smart construction projects and the National Institute of Health’s (NIH’s) efforts to improve flu vaccine innovation, while the Senate Subcommittee on Financial Services and General Government will explore FCC control over the upcoming 5G wireless spectrum auction. Elsewhere in the Senate, the Energy Committee will look at several bills related to energy innovation, including an ARPA-E reauthorization bill. Off of Capitol Hill, the American Enterprise Institute will look at how the adoption of automated technologies will affect the future of employment in the U.S. Army. 

It has been one year since my software patent was invalidated in the U.S. District Court for the Southern District of New York.  Now, this intellectual property is considered worthless and my dream of paying off extensive student loans with the proceeds from patent licensing fees are in the past. The irony being that if it were not for these extensive student loans, this invention, most likely, would not have come to into being. My patent No. 6,769,915, issued in 2003, was invalidated under Section 101 and struck down on appeal. The patent covers “a user-interactive behavior modification system” that is in competition with technology pursued by the companies including Nike, FitBit, Apple, and Samsung.  The rules that existed when I applied for this software patent in 2000 no longer guarantee myself and hundreds of other independent inventors the right to collect patent licensing fees. This right was granted to all with The Patent Act of 1790. Yet, over the last 15 years, the U.S. patent laws have been changed drastically by extremely well-financed lobbyists on behalf of the U.S. Patent and Trademark Office’s (USPTO’s) largest customers— global corporations, including the Big Tech industry. This has relieved Apple, Google, Facebook, etc. from the necessity of having to pay independent inventors software licensing fees. With this shift in intellectual property laws, the once small startups of Silicon Valley have become the large monopolies they are now.

Several weeks ago, the International Trade Commission (ITC) announced that Chief Administrative Law Judge (ALJ) Charles Bullock issued a Notice of Initial Final Determination recommending that certain memory modules manufactured and imported by SK Hynix, Inc. and its subsidiaries should be excluded from importation into the United States. As is common with these announcements, the ITC first released a one-page indication of the decision, which was followed by the redacted full decision once the parties had an opportunity to request redaction of trade secrets and confidential information. The full decision has now been released, and the ITC is asking for comments relating to public interest issues from the parties, interested persons, and other government agencies and departments.

This week in Other Barks & Bites: the Federal Circuit strikes down a district court’s finding of design patent infringement on summary judgment; the USPTO advises trademark attorneys to monitor filings to prevent against the unauthorized use of their names; the U.S. Copyright Office issues final rules eliminating options for physical material submissions for newspaper and serial registrations; the U.S. Supreme Court will take up Booking.com’s appeal of the rejection of its trademark application by the USPTO; AG Barr supports the FCC’s plan to restrict Huawei and ZTE equipment purchases through the Universal Service Fund; Nirvana’s copyright case against Marc Jacobs moves past a motion to dismiss; Biogen loses $3 billion in market value after PTAB hearing; and Amazon seeks an injunction against a patent owner asserting infringement claims against Amazon Fire product retailers.

As I have previously reported on KSJ Law, the Patent Trial and Appeal Board (PTAB) issued 80 decisions on appeals in October, and reversed the examiner in 24 of those. Claim construction was at issue in several, and the PTAB made several comments, supported by case law, that will be useful to those laboring against “broadest reasonable interpretations” that are, in fact, not reasonable. Taken together, these recent decisions provide a road map for first arguing against a broadest reasonable interpretation that is overly broad and unreasonable, thereby supporting the conclusion that a prima facie case against the properly construed claims has not been made.

Chestnut Hill Sound, Inc. has filed a petition asking the U.S. Supreme Court to consider whether the Federal Circuit’s disparate practice with respect to issuing Rule 36 decisions for losing patent owner-appellants versus losing petitioner-appellants is constitutional. The petition includes statistics demonstrating that patent owner-appellants are three times more likely to receive a Rule 36 judgment than petitioner-appellants. Chestnut Hill’s petition cites statistics on the number of Rule 36 decisions being issued, which come from Larry Sandell’s article, What Statistical Analysis Reveals About Winning IPR Appeals, LAW 360 (August 8, 2019, 5: 22 PM). A footnote in the petition explains that the likelihood of patent owner-appellants receiving a Rule 36 affirmance is actually closer to 3.6 than 3. “Since a losing Patent Owner- Appellant has a 66% chance of receiving a Rule 36 opinion, and a losing Petitioner- Appellant has an 18% chance of receiving a Rule 36 opinion, a Patent Owner- Appellant is 3.6 times as likely to receive a one- word affirmation than a Petitioner- Appellant,” says the petition.

Petitioners challenging patents covering pharmaceuticals and biologics often use drug product labels as prior art in the Patent Trial and Appeal Board (PTAB). To effectively use a label as prior art, a petitioner must show that it is a “printed publication” under 35 U.S.C. §§ 102 and 311(b). Past PTAB cases demonstrate, however, that proving drug product labels as prior art can be fraught with danger. But practitioners can employ best practices to guard against this. In Celltrion, Inc. v. Biogen, Inc., IPR2016-01614, Paper 65 (Feb. 21, 2018), the Petitioners relied on a copyrighted label for Rituxan that was published on the internet and available on the Food and Drug Administration’s (FDA’s) and on Biogen’s website all before the critical date. The Board held that the Petitioners did not provide sufficient evidence establishing that the drug label was indeed the one disseminated with Rituxan at the time it was proposed to be publicly available or that “persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Similarly, the Board held in Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH, IPR2016-01563, Paper 16 (Feb. 3, 2017), that a relied-upon Glucophage label had no source identifying information or indicia of when it became publicly available and the declaration attesting to its publication was not based on personal knowledge, but was merely conclusory.

E-commerce giant Amazon is “known for its disruption of well-established industries,” as the company’s Wikipedia entry will tell you. What started out as a humble online bookstore has become one of the world’s premier e-commerce sites. Along the way, it has expanded into cloud computing, consumer electronics, and film production, among other diverse ventures. It is responsible for the U.S. Post Office delivering packages on Sundays, and recently sent countless states and municipalities into a frenzy over a competition to host the company’s second headquarter site. Now, Amazon seems primed to disrupt the market for IP legal services with the launch of its IP Accelerator.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) invited ALE USA Inc. to respond to Chrimar System Inc.’s petition for rehearing en banc. Five amici consisting of inventors and intellectual property advocates have now filed amicus curiae briefs  in support of Chrimar and the petition for rehearing. In September, the CAFC affirmed a Patent Trial and Appeal Board (PTAB) decision in Chrimar Systems, Inc. v. ALE that rendered a previously affirmed jury verdict null and void. The heavily contested decision found the PTAB, an executive administrative agency, vacating the judicial verdict of an Article III court. According to FedCircuitBlog, there are currently 17 pending petitions for en banc rehearing with the Federal Circuit, while 22 petitions have been denied between August and November 2019. Of the 22 petitions denied, nine included a call for response, or 41% of denied petitions. Thus, while not a sure indicator that the court will grant the petition, the court’s invitation for response in Chrimar is at least a necessary step toward that goal. Here is what the amici are saying.