How the New USPTO Director Can Impact Patent Subject Matter Eligibility and Post-Patent Grant Challenge Proceedings
As the challenge proceedings and the Patent Trial and Appeal Board mark their fifth anniversary, we should reflect on whether they have achieved their intended purpose. About a year ago I explained how inter partes review proceedings are no more a true alternative for litigation than the inter partes reexamination proceeding which they replaced and supposedly improved upon – nothing has happened since to change that view. Furthermore, a buffet of other meaty issues remains with respect to the post-grant challenge proceedings… I continue to support the original goals of the challenge proceedings and while changes in some areas are required, a wholesale restructuring of the procedures is not necessarily required. But I do look forward to changes that improve the balance between patentees and challengers.
The key idea is to think strategically about the software, the value it can provide to the company, and whether the technology should be developed in-house. In some cases, software can provide more value to the company when it includes open source components. Here at Dropbox, for example, we use open source software in our products and we use it to help with development… Even here there are a few ground rules: We evaluate the code on the way in so we know what has been incorporated in our software later. And we prohibit code that is licensed under more restrictive terms that could require us to open source our product in turn.
Post grant procedures can be an effective and efficient way of promoting patent quality by invalidating weak, inappropriately granted patents. What we need now is thoughtful review and assessment, based upon five years of experience about what is working and what needs to be done to improve the system. The above issues need to be watched and analyzed, and, if appropriate, modifications need to be suggested and tried. Many improvements can be made by the USPTO itself through transparent rule-making. Some may need legislative intervention. But there is no need to throw out the entire process. We should learn from what has happened before and be willing to improve the system for the benefit of innovation in our country and the continued growth of our economy.
As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners. Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.
In 2008, as the financial markets crumbled in the largest economic crisis the world has seen since the 1930s, Satoshi Nakamoto published a white paper describing his Bitcoin network and the blockchain technology that was used to enable it. Since then, while markets have recovered, Nakamoto’s creation has flourished and spawned countless other “altcoins” along with new uses and applications for his blockchain technology and its derivatives. Because the Bitcoin network and blockchain technology have become key components of today’s digital economy, it is important for attorneys and others to understand the basic terminology and features of this technology. This article provides high-level explanations for this purpose.
An increasing trend in copyright infringement suits filed in the United States has tattoo artists bringing suit against entertainment entities, and in some cases against the tattoo bearer themselves, for the reproduction or recreation of tattoos they created. Most commentators would likely conclude that tattoos are eligible for copyright protection under the Copyright Act. However, it is important to note that a distinction can be made between the copyright in the design of the tattoo and the copyright in the tattoo as it is reproduced on the body of a person
While it is possible to copyright the design of a band logo, the band name itself is not copyrightable (see here and here). Band names are protectable under trademark law, because like brand names they allow us to distinguish one band’s music and identity from another. They are what enable us to distinguish between a “Beatles” record on the one hand, and a “Chipmunks” record on the other… The more unique the name, the greater the degree of trademark protection, but also the more the name will stand out and set the band apart from others, which is generally the goal.
The basement inventor is increasingly rare, although I am old enough (and lucky enough) to know several. Invention in the “real world” is often a messy, team effort of multiple inventors, employers, contracts, research agreements, and funding agreements. As the complexity of invention multiplies, so do opportunities for unintentionally losing or jeopardizing intellectual property rights… There is often more than meets the eye when it comes to ownership of inventions. The benefits of collaboration far outweigh the disadvantages. However, you can take steps to ensure a smooth collaboration by keeping a few legal principles in mind…
To successfully monetize a patent portfolio, it is incredibly important to identify value within it, and to put in the work to prove to third parties and potential partners that that value exists… With the data-driven part of the mining exercise complete, the appropriate subset of patents can be turned over to the SMEs for evaluation of patent strength and enforceability. SMEs know the technology of a given field, they understand how technology has been implemented across multiple players in a given market, and they can reach a truly informed understanding about whether or not a given patent claim is being used in end product, whether or not that use can be detected, and what issues may be encountered in detection.
The Board failed to address all grounds for proposed rejections under the APA by ignoring certain arguments made by Vicor during the reexamination. Additionally, the Board failed to address all four Graham factors. “[E]vidence relating to all four Graham factors…must be considered before determining whether the claimed invention would have been obvious…” The Board’s decision was erroneous because the same panel reached inconsistent conclusions on the same issue between the same parties and on the same record, and without explanation.
Several of the briefs address the absurdity currently being advanced, claiming patents are so-called “public rights.” This novel notion — more in line with Karl Marx than John Locke — is a direct assault upon the very essence of private property rights… The Cato-ACUF brief reasons “public rights” into a sniveling lump: “Ultimately, the implications of the argument that merely because a right to particular property flows from a statutory scheme, such rights are ‘public rights’ and that disputes over them can be withdrawn from Article III courts are staggering. Such a conclusion would mean that anyone who derives his land title from the Homestead Act can be forced to have any disputes over that property be resolved by a bureaucrat in the Bureau of Land Management. Under this view, Congress could require that a dispute between an individual and a private financial institution over a mortgage or a student loan be heard before an official in the Treasure Department on the theory that the relevant loans were made pursuant to a federal statutory scheme. The government enacts statutes affecting property rights all the time, but that does not convert the rights that trace their roots to such statutes into ‘public rights.’”
Unfortunately, the answer may be not as much as many expected. Right after the decision there were 350 motions to transfer or dismiss in the EDTX. But the limitations imposed by TC Heartland have been called into question by a ruling from EDTX Judge Rodney Gilstrap in Raytheon Co. v. Cray Inc. In his decision, Gilstrap denied a motion by Cray seeking to transfer the case to another district in light of TC Heartland. Gilstrap found that the existence of a single employee in the district constituted “regular and established place of business,” and he established a four-factor test to decide whether newer cases belong in the district… As hopeful as some folks were about TC Heartland, it certainly hasn’t stopped NPEs. The IP community must acknowledge this and adjust accordingly – it’s still the wild west out there, for now.
As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply the law to the facts in ex parte appeals should be costing applicants this much money yearly. We should not have 2X higher reversal rates for novelty and obviousness than statutory subject matter. However, until something changes about how the USPTO decides to take cases to the board, it is apparent that patent applicants will continue to have to be patient and pay.
The Federal Circuit reversed. Indeed, it found that the Board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation to combine the references. The court found that the Board erred in relying on inherency to dismiss evidence showing unpredictability in the art in rejecting Honeywell’s argument that a skilled artisan would not have been motivated to combine the references with a reasonable expectation of success. It referred to an earlier opinion [citations omitted] to state that “the use of inherency in the context of obviousness must be carefully circumscribed because “[t]hat which may be inherent is not necessarily known” and that which is unknown cannot be obvious.”
Nidec argued that the Board improperly applied the joinder and time bar statutes. The Court held that it need not resolve this dispute because it affirmed the Board’s conclusion that all of the challenged claims are unpatentable as obvious. There was no dispute that the first petition was timely filed, and the joinder issues on appeal related only to the Board’s ruling on anticipation, which ultimately did not affect the outcome of the case… The Federal Circuit does not decide issues which have no effect on the outcome of the case. Thus, Board’s ruling that a party may add new issues to an IPR by joining two IPR proceedings was undisturbed and was endorsed in concurring opinion by two Federal Circuit judges.