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How to Protect Your Patent from Post Grant Proceedings

Posted: Sunday, Sep 21, 2014 @ 9:00 am | Written by Gene Quinn | 2 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.



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.



Merck Patents Drugs for Metabolic Disorders & Alzheimer’s

Posted: Monday, Sep 15, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »
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Posted in: Companies We Follow, Guest Contributors, IP News, IPWatchdog.com Articles, Merck, Patents, Pharmaceutical, Steve Brachmann, Technology & Innovation

Merck & Co., Inc., also known as Merck Sharp & Dohme, MSD, is one of the world’s largest developers of pharmaceutical drugs and it is currently headquartered in Whitehouse Station, NJ. Currently, the corporation has nine major drugs in different stages of development which are attracting a lot of investor attention, leading some analysts to believe that Merck’s share prices will rise in the coming months. Merck was recently successful in petitioning the U.S. Food and Drug Administration to approve sales of Belsomra, the first insomnia drug designed to regulate the sleep-wake cycle by modulating the activity of orexin in the brain. The U.S. FDA also gave a fast-track designation in early September to move along development of a Merck antibiotic for hospital-acquired pneumonia.

As readers have probably noticed, we have recently surveyed patents and patent applications of pharmaceutical manufacturers as part of our Companies We Follow series. See Pfizer Focuses Recent Patent Activity on Antibacterial Agents and Eli Lilly Patents Treatments for HIV and Ebola. We’ll be wrapping up this segment focus with a look at Merck’s recent medical innovations, although we will certainly return to pharma and biotech again in the future.



The Destruction of a High Tech Economy

Posted: Friday, Sep 12, 2014 @ 9:00 am | Written by Gene Quinn | 71 comments
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Posted in: Federal Circuit, Gene Quinn, Government, IP News, IPWatchdog.com Articles, Patentability, Patents, US Economy, US Supreme Court

There was a lot riding on Alice v. CLS Bank, and the Supreme Court got it wrong. There is no point in sugar-coating it, or pretending that everything will be alright. The Supreme Court is openly hostile to patents, and increasingly so is the Federal Circuit. Simply stated, strong patent rights are an absolute prerequisite for a high tech economy.

It is a sad realization, but we are indeed at a point were commercially viable claims worth litigating are virtually assured to be invalid claims. Until this changes the economy suffer in due course. After all, it isn’t the copycats who create new things. Copycats copy and innovators innovate. You cannot infringe patents owned by an innovator and claim that because the product is new to you it is an innovation. NO! It is merely new to you and a rip-off from the true innovator.



Pfizer Focuses Recent Patent Activity on Antibacterial Agents

Posted: Friday, Sep 12, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »
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Posted in: Biotechnology, Cancer Research, Companies We Follow, Guest Contributors, IP News, IPWatchdog.com Articles, Patents, Pfizer, Pharmaceutical, Steve Brachmann, Technology & Innovation

Pfizer, Inc., is a major American developer of pharmaceutical medications and vaccines for a wide spectrum of medical disciplines. The majority of Pfizer’s business is operated in the northeastern United States, where the company has its corporate headquarters in New York City and its research headquarters in Groton, CT. A Pfizer vaccine that helps to protect against clostridium difficile, a potentially life-threatening bowel infection, received a fast-track designation from the U.S. Food and Drug Administration in late August of this year. The company also recently announced that it has struck a partnership with fellow American pharmaceutical giant Merck & Co. to conduct and evaluate a study on a treatment for lung cancer. Although Pfizer’s efforts to acquire British drug manufacturer AstraZeneca were squashed in May, speculation regarding stock movement in recent weeks has led some to believe that Pfizer may try to revisit the negotiations soon.

The Companies We Follow series  is visiting this major manufacturer of medications as we continue our survey of recent innovations in pharmaceutical fields. Patent applications recently published by the U.S. Patent and Trademark Office show that Pfizer’s recent development goals have focused on a broad spectrum of diseases and disorders. We discuss a trio of patent applications related to treatments involving the nervous system, including a couple of medications treating Alzheimer’s disease along with a host of other ailments. A couple of patent applications are also related to novel treatments for cancer, especially in the area of preventing cancerous growth.



Post Patent Issuance Challenges and the Quest for Patent Quality

Posted: Thursday, Sep 11, 2014 @ 9:00 am | Written by Manny Schecter | 12 comments
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Posted in: Government, Guest Contributors, IPWatchdog.com Articles, Manny Schecter, Patent Trial and Appeal Board, Patents, Post Grant Procedures, USPTO

The America Invents Act (AIA) was a great leap forward in the effort to improve patent quality in the US, including the creation of three new post patent issuance challenge procedures: post grant review (PGR), covered business method review (CBM), and inter partes review (IPR). The US Patent & Trademark Office (USPTO) has regularly reported some basic statistics related to the new challenge procedures.[2] In an attempt to determine whether these new challenge procedures are serving their intended purpose of improving patent quality, I compiled and now report on additional statistics characterizing the parties and patents associated with completed challenge proceedings and correlated those characterizations to the nature of the outcomes.

The statistics reported by the USPTO focus on the petitions filed for the Patent and Trial Appeal Board (PTAB) to consider in determining whether to institute a challenge proceeding. Well over 1000 such petitions have been filed; the PTAB has instituted challenge proceedings in response to over 70% of the petitions. The USPTO has provided significantly fewer statistics with respect to the outcomes of the challenge proceedings that have been instituted. The outcomes are the end results of the challenge proceedings and, ultimately, should be the best indicator of what the proceedings are accomplishing.