Posts in IPWatchdog Articles

Global IP Holdings, LLC, the owner of U.S. Patent No. 8,690,233, achieved a victory with the Federal Circuit vacating a decision of the Board and remanding for the Board to address predictability and criticality of the claim term to determine whether the written description requirement has been satisfied. Although victorious, Global did not achieve everything it wanted. Global had requested the Federal Circuit to simply overrule the Board. Judge Stoll, however, explained that there was not support in the record sufficient to determine whether the “plastic” claim limitation was critical or important. Therefore, the Federal Circuit vacated the Board’s decision and ordered the Board, on remand, to address predictability and criticality of the claim term in question in order to determine whether the written description requirement has been satisfied.

This March, the U.S. Supreme Court granted a petition for writ of certiorarito take up Peter v. Nantkwest Inc., on appeal from the Court of Appeals for the Federal Circuit. The case will ask the nation’s highest court to determine whether the phrase “[a]ll expenses of the proceeding” found in 35 U.S.C. § 145, which governs appeals to district court of U.S. Patent and Trademark Office decisions to deny the issue of a patent grant, encompasses personnel expenses incurred by the USPTO, including attorneys’ fees, when its employees defend the agency against Section 145 litigation. On July 22, a series of intellectual property and law associations filed amicusbriefs in the case by and large supporting the position of Nantkwest. This includes the American Bar Association, which argued that the USPTO’s interpretation of the statute would “hamper the equal access to justice and chill the assertion of meritorious claims.” Other Nantkwest amici argued that the government has had the statutory authority to collect ‘expenses of the proceeding’ in patent cases since 1839 but for the 174 years prior to the case against Nantkwest, the USPTO has declined to seek attorney’s fees.

This week on Capitol Hill, the House of Representatives is in recess but in the Senate, committee hearings will focus on the rescheduled oversight hearing for the U.S. Copyright Office, regulatory frameworks for cryptocurrencies and blockchain, and implementation of positive train control technologies. Elsewhere in Washington, D.C., the Brookings Institution will look at international threats to American space security while the Center for Strategic and International Studies will host an event with multiple panels exploring innovation and security issues in 5G networks. Today, the U.S. Patent and Trademark Office also hosted an event in Alexandria, VA, discussing the agency’s trademark auditing program.

The Brazilian PTO has officially introduced its longed-for strategy to solve the enduring patent backlog problem in Brazil.  The plan is to reduce the patent backlog by at least 80% in the course of the next two years with the use of “standardized office actions” – that is, machine-made technical opinions that will simply point out prior art documents to be addressed by the applicant.  Once the backlog is finally dealt with — likely by 2021— the PTO estimates it will to be able to examine future patent applications within twenty-four (24) months. If the goals of the program are achieved, the Brazilian PTO will be finally able to stand on equal footing with its foreign counterparts in the developed world with regard to the average patent examination time.

In recognition of China’s increasing importance in the global IP landscape, patent applications in China by U.S.-based applicants have steadily increased in recent years. Data compiled by the World Intellectual Property Organization (WIPO) in its World Intellectual Property Indicators 2017 and 2018 reports show the number of regular patent applications in China filed by U.S.-based applicants increasing by about 14% from 2016 to 2017. Over the same period, the number of U.S. utility patent applications filed by U.S.-based applicants fell by about 0.5%. Whatever the story is behind these numbers, U.S.-based applicants are clearly interested in obtaining patent protection in China, and China is courting that interest. Most U.S.-based applicants will naturally gravitate toward protecting their inventions using China’s so-called “invention” patent. This is China’s counterpart to a U.S. utility patent. But China also has the world’s most active utility model system. In many cases, a U.S. patent application could be filed as either a utility model application or an invention application in China. In recent years, the China National Intellectual Property Administration (CNIPA) has been quietly updating its utility model system by increasing the degree to which utility model applications are substantively examined.

The representative of the inventor attempted to point to metadata contained within the inventor’s affidavit as being corroborating evidence showing the critical dates. The problem with this evidence was never made a part of the record, and the only place it was mentioned was in the inventor’s deposition, and it was only mentioned by the inventor. Inventor testimony must be corroborated by some competent independent evidence or testimony. Indeed, an inventor cannot corroborate their own testimony relating to prior conception. Therefore, an inventor deposition is insufficient to corroborate an inventor affidavit relying on what the inventor said in the deposition. 

This week in Other Barks & Bites: a series of bills introduced into Congress aim to improve prospects for minority inventors, eliminate compulsory copyright licenses in broadcast TV and reduce patent challenges against generic drugmakers; the Federal Circuit decides that there is no functionality in the aesthetic appeal of a design patent; FBI Director Wray testifies on about 1,000 IP theft probes pointing back to Chinese entities; France is the first EU country to adopt the Copyright Directive; Alphabet and Amazon beat revenue expectations; UKIPO discusses potential IP rights exhaustion in the event of a no-deal Brexit; and IP law associations ask the Supreme Court to rule against USPTO in Peter v. Nantkwest.

To the superstitious, July is often considered an unlucky month for weddings. In a nod to such lore, and to the leisurely and whimsical days of summer, this is a satirical “love” letter from a fictitious client to its fictitious outside intellectual property counsel, a domestic or foreign law firm. The firm has been providing IP representation to the client for quite some time. Unbeknownst to the firm, but acutely felt by the client, their relationship is on the rocks. In a final act of desperation, the client penned these words in hopes that the firm will move swiftly to help heal the brokenness.

One of the first and easiest steps any photographer can take in protecting images against photo theft is to lower the resolution and size of their photos when posting them online. The Copytrack Global Infringement Report found that photos with a 16:9 aspect ratio were most likely to be stolen, while the most popular resolution for image theft in 2018 was Full HD, or 1920 x 1080 pixels.

In the final installment of my interview with three examiners at the European Patent Office (EPO), we wrap up our conversation about their approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO system compares with the U.S. patent examination system.

Currently, the massive volume of filings at the Chinese Patent Office (CNIPA) exceeds the filings of the next four most active patent offices combined. It portends a rapid shift to Chinese language prior art being the repository of technical teachings around leading edge technologies for the Fourth Industrial Revolution. This will happen for several reasons and much more rapidly than…

Twitter officials recently announced they’ll begin placing a notice over tweets that violate their standards regarding abusive or bullying behavior, but that they still deem to have some public value.  Users will have to click through the notice in order to view the original tweet, and also see a link to the following message: “The Twitter rules about abusive behavior apply to this Tweet. However, Twitter has determined that it may be in the public’s interest for the Tweet to remain available.” On the surface, this may not seem significantly different from the motion picture industry’s rating system or the advisory notices posted prior to most on-demand programming.  But dig a little deeper and what makes Twitter’s proposed flagging policy particularly unsettling is their intention to apply it very selectively.

When obviousness of a patent claim is at issue, some experts may opine along these lines: “Therefore, the subject matter of claim 1 would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art.” Whether such is common practice or not, testimony of this sort ought not to be allowed. Such testimony should be objected to and stricken as irrelevant. In cases involving a jury, a motion in limine ought to be used to prevent such testimony from coming before a jury. Experts are fact witnesses that are, like all fact and other witnesses, allowed to testify to what they saw, what they heard, and what they did. Unlike other witnesses, however, expert witnesses are further allowed to express opinions within the fields of their expertise. Experts’ expertise comes from having specialized knowledge, education, training, or experience.

In Part II of my interview with three examiners at the European Patent Office (EPO), we continue the conversation about their advice, pet peeves, and approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO system compares with the U.S. patent examination system.

“It was a warm and pleasant day on the beaches of Rio de Janeiro. The waves lapped at the shore and far off a sea-bird raised its plaintive cries to the sky. She looked up from her book, thinking, ‘Wait, where have I read that that before? … ‘ “ Rather than an irksome daydream on the beach, an author’s nightmare is of having her works — or parts of them—lifted from her control and passed off as those of someone else. That is exactly the allegation that bestselling novelist Nora Roberts brings in her suit, filed in late April in a Brazilian Court, against Cristiane Serruya, a lawyer-turned-author. Nora Roberts is one of the most popular living American authors. She primarily writes romance novels, as well as police procedural (crime) fiction. Her works are solid sellers, and she has received a huge number of industry awards, as well as having more than a dozen of her works adapted into film and television productions. Hers is the type of market success that every genre author dreams of. Sadly, with widespread popularity comes risk of infringement—in this case, not of copyright infringement, but a very particular violation of authorial rights.