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Enter the Sandman: USPTO Unhittable in Reciprocal Discipline Proceedings

Posted: Monday, Sep 22, 2014 @ 9:00 am | Written by Michael E. McCabe, Jr. | 1 Comment »
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Office of Enrollment and Discipline, Patents, USPTO

Mariano Rivera knows something about perfection. The New York Yankees now-retired pitcher is regarded by many experts as the greatest closer in the history of major league baseball. For those who are not aficionados of America’s Pastime, the closer comes in after the game has largely been played, and his sole job is to get the last several opposing batters out. For seventeen seasons, Mariano Rivera (a.k.a. “the Sandman”) dominated at his position and was virtually unhittable.

The USPTO Director also knows something about perfection, albeit in a far different context than baseball. For six years, the USPTO Director has dominated opposing patent practitioners, who have gone hitless against the Office in cases involving reciprocal ethical discipline.

Reciprocal discipline” is a process for disciplining an attorney in a second jurisdiction after the attorney has been ethically disciplined by another jurisdiction. A patent or trademark attorney who is publicly disciplined in another jurisdiction is subject to reciprocal discipline by the USPTO, even if the attorney’s conduct has nothing to do with their practice before the Office. And while it is theoretically possible for a patent or trademark practitioner to avoid reciprocal discipline in the USPTO, in reality they would have a better chance of hitting a Rivera cut fastball blindfolded with one arm tied. To date, the USPTO’s record in Section 11.24 cases is a perfect 77-0, and counting. Practitioners, meet the “Sandman.”



USPTO Considering Changes to PTAB Rules

Posted: Monday, Sep 22, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Trial and Appeal Board, Patents, Post Grant Procedures, Steve Brachmann, USPTO

EDITOR’S NOTE: Gene Quinn will host a free webinar discussion about the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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At the end of July, the Patent Trial and Appeal Board (PTAB) hosted a press conference to discuss ongoing progress with patent trials which have been or are being conducted under the terms of the America Invents Act (AIA). Scott Boalick, Acting Vice Chief Judge of the PTAB and head of the PTAB’s Trial Section, answered questions from the audience on various aspects of the AIA trials, as well as offer questions for public comments being sought by the U.S. Patent and Trademark Office in its attempts to determine how and if the AIA patent proceedings can be improved.

The online webinar was not the first time that the PTAB and USPTO have worked to gain feedback from various stakeholders on the progress of AIA trials. Earlier in spring and early summer of this year, representatives of the PTAB attended eight roundtable discussions in cities across the United States. Although one goal of these meetings was to educate the public about AIA trial proceedings, the PTAB was also interested in collecting feedback from those involved in trial proceedings. Of great importance to the board is methods of making these trial proceedings more effective at challenging patent validity than filing cases in district courts; encouraging the use of these type of legal proceedings is a major goal of the law.

Under the America Invents Act, it is possible to challenge the validity of a patent after its issuance. Some have argued in the past that allowing for third-party input in this way could improve patent quality, even after a patent is issued. However, with litigation involving patent validity as such a major issue in recent weeks, it’s understandable why the PTAB would reach out to stakeholders and see if the rules were serving them well.



How to Protect Your Patent from Post Grant Proceedings

Posted: Sunday, Sep 21, 2014 @ 9:00 am | Written by Gene Quinn | 5 comments
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Posted in: Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patent Prosecution, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

EDITOR’S NOTE: I will host a free webinar discussion about the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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The American Invents Act (AIA) created three new ways to challenge the validity of claims in already issued patents. While the AIA was signed into law on September 16, 2011, the new post grant proceedings did not become effective until one year after the signing, on September 16, 2012. These three new post grant proceedings are post-grant review, inter partes review and covered business method review, which is a variety of post-grant review that is limited to business methods relating to the financial industry. Because post-grant review was specifically limited in applicability to patents that were examined under the new first to file law, only patents that have an effective filing date on or after March 16, 2013, are capable of being reviewed in a post-grant review proceeding. Therefore, so far the USPTO has only seen inter partes review and covered business method cases.

On August, 14, 2012, the United States Patent and Trademark Office promulgated final rules applicable to these new proceedings, and at that time the USPTO said that they anticipated  that 420 petitions for inter partes review would be filed in fiscal year 2013.  The USPTO also said they anticipated that in fiscal year 2014 there would be 450 petitions for inter partes review filed. See 77 FR 157 (August 14, 2012) 48713. The Patent Office severely under estimated the popularity of post grant proceedings, particularly inter partes review.



John Calvert, A Champion for Indepenent Inventors

Posted: Saturday, Sep 20, 2014 @ 9:00 am | Written by Gene Quinn | No Comments »
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Posted in: Gene Quinn, Interviews & Conversations, Inventors Information, IP News, IPWatchdog.com Articles

John Calvert (r) with Senator Birch Bayh (ret.) at PTO 30th Anniversary celebration of Bayh-Dole.

John Calvert, a twenty-four year veteran of the USPTO, retired in June 2014. If you are in the independent inventor or product commercialization communities you undoubtedly know Calvert. After starting as a patent examiner, in 1999 he started working with independent inventors. He would ultimately be in charge of the independent inventor outreach efforts of the USPTO by the time he retired.

Calvert didn’t go quietly off into the sunset though, which is a good thing. A long time friend and champion of the independent inventor he is now going to work with and for inventors in the private sector by and through the United Inventors Association (UIA). As the new Executive Director of the UIA he will lend his time and talents in an endeavor that is near and dear to his heart.



Big Banks Get Software Patents Despite Alice

Posted: Friday, Sep 19, 2014 @ 11:36 am | Written by Steve Brachmann | No Comments »
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Posted in: Bank of America, Companies We Follow, Financial Services, Guest Contributors, IP News, IPWatchdog.com Articles, JP Morgan Chase, Patents, Software, Steve Brachmann, Technology & Innovation, Wells Fargo

Financial services are one of the more interesting areas of innovation which we touch on in IPWatchdog’s Companies We Follow series. Many unique products and services for both individual consumers and business organizations are patent-protected, and a number of American banking institutions are regular applicants at the U.S. Patent and Trademark Office. In our most recent look into the state of financial innovation in America, we sought out the most intriguing patent applications or patents assigned to the Bank of America Corporation, JPMorgan Chase Bank and Wells Fargo Bank. What becomes clear is that the Supreme Court decision in Alice v. CLS Bank does not seem to have slowed the allowance of financial services software patents to these and other major banking institutions.

Each of these major banking institutions have increasingly incorporated digital technologies into their financial services offerings, a development we visit in more detail below. All three of these banks have partnered with Apple for the development of the Apple Pay system, allowing iPhone users to conduct transactions directly from their device. The total transaction volume of the six banks in total that are using Apple Pay represents about 83 percent of America’s total credit card transaction volume. In other, more discouraging, technology news related to major American banks, it was recently reported that hackers were able to gain access to dozens of JPMorgan Chase servers, although no theft or fraud has been reported as a result.



The Past, Present and Future of Post Grant Administrative Trials

Posted: Thursday, Sep 18, 2014 @ 11:43 am | Written by Gene Quinn | 1 Comment »
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Posted in: America Invents Act, Gene Quinn, Government, IP News, IPWatchdog.com Articles, Legislation, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

EDITOR’S NOTE: I will host a free webinar discussion of the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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On September 16, 2011, President Barack Obama signed into law the most sweeping changes to U.S. patent law since at least the 1952 Patent Act, perhaps ever. One of the dramatic changes to the U.S. patent system was the creation of post grant administrative proceedings where a challenger could in a contested forum akin to a trial challenge one or more claims of a patent already issued. These new proceedings — post grant review, inter partes review and covered business method review — went into effect on the one year anniversary of the signing of the America Invents Act (AIA) on September 16, 2012.

The patent litigation landscape has forever changed thanks to the AIA. On that date the Patent Trial & Appeal Board (PTAB) was born. The precursor to the PTAB was the Board of Patent Appeals and Interferences (BPAI), which would hear appeals from applicants who had their patent applications rejected and also conducted interference proceedings. With the signing of the America Invents Act (AIA) the PTAB was born and the jurisdiction of the appellate body within the United States Patent & Trademark Office (USPTO) was greatly expanded.

This Board, the adjudicative body of the USPTO, consists of technically and scientifically trained administrative patent judges (APJs). The PTAB was created, in part, to adjudicate the new patent challenge mechanisms of the AIA. Between September 16, 2012, and August 7, 2014, there were 1793 post grant challenges instituted. See USPTO PTAB Update, slide 5. Of those challenges 1,585 (or just over 88%) were inter partes reviews. There have been 201 covered business method challenges, 6 derivation proceedings and only a single post grant review. The fact that there has been only a single post grant review is not surprising giving that a PGR can only be instituted to challenge patents that were examined under the first to file rules of the AIA, which did not go into effect until March 16, 2013. The relatively low number of covered business method challenges suggests that this form of review is not nearly as popular as it was thought to have been prior to the enactment of the AIA.



Department of Energy Pumps Money into Offshore Wind Energy

Posted: Wednesday, Sep 17, 2014 @ 11:30 am | Written by Steve Brachmann | 11 comments
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Posted in: Energy, Green Technology, Guest Contributors, IP News, IPWatchdog.com Articles, Patents, Steve Brachmann, Technology & Innovation

From U.S. Patent No. 8,729,723, entitled “Removable Offshore Wind Turbines with Pre-Installed Mooring System.”

Alternative forms of energy which can create electricity in much cleaner processes than fossil fuels have been an area of intense development in recent years. Here at IPWatchdog, we’ve covered recent developments in solar and hydrogen energy generation technologies in the past, and alternative energy is a frequent topic, particularly during our Earth Day coverage each year. We dive into this topic given that reports from the U.S. Department of Energy have led to a lot of optimism in recent days about the future of wind energy, specifically wind energy collected from offshore sources.

A developed network of offshore wind turbines could power the entire United States of America. According to the National Renewable Energy Laboratory, there is a potential 4,150 gigawatts of energy which can be collected from offshore wind collection around the country’s waters. The total electric generating capacity of the entire nation was 1,010 gigawatts as of 2008. All of this energy can be collected from waters within 50 nautical miles of America’s shorelines.

There are many obstacles in the way of increasing the scale of these technologies. Currently, offshore wind projects in America have capital costs of about $6,000 per kilowatt during installation, compared with about $1,940 per installed kilowatt for land-based wind projects. This is according to the recent Offshore Wind Market and Economic Analysis report released by the U.S. DoE, mentioned above.



Are Republicans Abandoning Patent Reform?

Posted: Tuesday, Sep 16, 2014 @ 9:00 am | Written by Gene Quinn | 6 comments
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Posted in: Congress, Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patent Reform, Patent Trolls, Patents

Congressman Kevin McCarthy (R-CA)

On August 8, 2014, Congressman Kevin McCarthy (R-CA), the newly minted Majority Leader in the United States House of Representatives, explained that the 44 “jobs bills” passed by the House and dead in the Senate would be voted out once again by the House as part of one big jobs bill. See McCarthy Sets up Votes on Messaging Bills Ahead of Midterms. According to Speaker.gov, one of the bills that is a “jobs bill” that was dead in the Senate was the Innovation Act, sometimes referred to in the industry as the Goodlatte Bill, which would have among other things enacted fee shifting legislation and expanded post grant review of patents. See House Passes Innovation Act and also IPWatchdog coverage of the Innovation Act.

Of course, the Innovation Act has absolutely nothing to do with jobs, job creation, job retention or spurring the economy in any way, but save that issue for another day.



Patent Drafting: Employing Claim Differentiation to Ensure Broad Construction

Posted: Tuesday, Sep 16, 2014 @ 8:00 am | Written by Joseph Root | 1 Comment »
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Joseph Root, Patent Drafting, Patents

EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. This is the fifth installment of the series. To read other installments please see Joseph Root on Patent Claim Drafting.

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The most significant obstacle to achieving patent breadth in contemporary patent law lies in the Federal Circuit’s proclivity to import imitations from the specification into the claims. The Court justifies its actions as merely discerning the inventor’s intent to limit the invention. The most effective counter to that activity is claim differentiation—the concept that claims are presumed to have different meanings, so a limitation expressly present in one claim should not be read into another claim, particularly where the narrower claim is dependent upon the broader. The Federal Circuit’s formulation of that rule was well stated in SRI Int’l v. Matsushita Elec. Corp.: “It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”

Courts often express this principle in terms of avoiding claim redundancy. The Phillips court faced that question in dealing with steel-shell panels that can be welded together to form vandalism-resistant walls. The broadest claim included a limitation “internal steel baffles extending inwardly from the steel shell walls.” The court was required to determine exactly what characteristics were implicit in the term “baffles,” and one technique employed for that purpose was an examination of the other claims. For example, dependent Claim 6 recited, “the internal baffles of both outer panel sections overlap and interlock at angles providing deflector panels extending from one end of the module to the other.” “If the baffles recited in claim 1 were inherently placed at specific angles,” the court reasoned, “claim 6 would be redundant.” Thus, a construction of Claim 1 that included a specific angle would be improper, based on the doctrine of claim differentiation.



Coming to Your City: Gene Quinn Roadshow – Fall 2014

Posted: Monday, Sep 15, 2014 @ 7:23 pm | Written by Gene Quinn | No Comments »
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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles

Over the years I have been invited to participate in more and more events, and I try and attend a handful of conferences each year regardless of whether I am presenting. I have a packed schedule this Fall, traveling from New York to Washington, DC to Toledo to Chicago to New Jersey back to Washington, DC to San Francisco and ultimately to Orange County, California. If your schedule permits, and I’m visiting an area close, perhaps you can join me at one or more of the events listed below.

 

  1. PLI Patent Bar Review Course, New York
    September 17-21, 2014
    Location: PLI, 1177 Avenue of the Americas, 2nd Floor, NY, NY
     
  2. Free Webinar: PTAB Past, Present, and Future: Post Grant Proceedings at the PTO
    Tuesday, September 23, 2014 from 11am to 12pm ET
    Presented by Innography