Posts in USPTO

In a recent brief to the Patent Trial and Appeal Board (PTAB), Pfizer and BioNTech (Pfizer) told PTAB judges that Moderna’s dismissal of prior art listed in Pfizer’s August 2023 petition for inter partes review (IPR) of Moderna’s patent on mRNA vaccine technology is inconsistent with its declarations to the Food and Drug Administration (FDA) during the drug approval process. According to the brief, when Moderna was seeking approval for its COVID-19 vaccines, the company “candidly represented to the FDA that prior studies for related vaccines…supported an expectation of safety and efficacy. But now, faced with invalidating vaccine prior art…Moderna wrongly casts the same vaccine prior art as irrelevant.” The brief referred to this as a “litigation-driven one-eighty.”

Speakers at IPWatchdog’s PTAB Masters 2024 program this week predicted there will be little movement on the U.S. Patent and Trademark Office’s (USPTO) Advance Notice of Proposed Rulemaking anytime soon, but some pinned their hopes for change at the Patent Trial and Appeal Board (PTAB) to the pending Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. Both panelists who typically represent petitioners and those who represent patent owners at the PTAB also agreed there are a number of ways the perception of the Board could be improved. These could include changes like allowing oral argument more often, allowing experts to testify in person, and a more meaningful rehearing procedure, for example.

Last week, biopharmaceutical company Liquidia Technologies filed a petition for writ of certiorari with the U.S. Supreme Court to appeal a Federal Circuit ruling that affirmed induced infringement findings against Liquidia following the patent at issue being invalidated at the Patent Trial and Appeal Board (PTAB). In the petition, Liquidia argues that two previous Supreme Court rulings lead to a result contrary to the Federal Circuit’s determination that the invalidation of patent claims at the PTAB do not have preclusive effect on infringement litigation pending an appeal of the PTAB’s decision.

Both the Biden and Trump Administrations have made it abundantly clear that economic and technology security is now national security. In the latest National Security Strategy, the Biden Administration stated, “Technology is central to today’s geopolitical competition and to the future of our national security, economy, and democracy. U.S. and allied leadership in technology and innovation has long underpinned our economic prosperity and military strength. In the next decade, critical and emerging technologies are poised to retool economies, transform militaries, and reshape the world.”

An examiner interview is the best tool available to progress patent prosecution. Examiner interviews provide an avenue to quickly clear up misunderstandings, explore options, and reach resolutions. By the time I left law firm life to work in-house, I was interviewing nearly every Office Action. Over the years, I refined a style that was very effective, so much so that a partner once asked me how I was getting such good results, but at the time, I could not articulate what exactly I was doing or why it worked. In retrospect, I was successful because I argued less and negotiated more.

Filings began picking up again this week after a slow start in the new year in both the Patent Trial and Appeal Board (PTAB) and district courts. The PTAB had a busy week with 31 new filings—one Post Grant Review (PGR) and the rest Inter Partes Reviews (IPRs). Nearly half of all new PTAB filings came from just two entities: Apple and Neurent Medical…. The PTAB was also busy issuing 27 institution decisions (21 instituted and 6 not instituted).

The U.S. National Science Foundation (NSF) announced today that it is launching the National Artificial Intelligence Research Resource (NAIRR) pilot, as directed by President Biden’s Executive Order on AI in October 2023. The U.S. Patent and Trademark Office (USPTO) is one of 10 government agencies that are partnering with NSF on the pilot. Biden’s October Executive Order (EO) announced a series of new agency directives for managing risks related to the use of artificial intelligence (AI) technologies, prioritizing risks related to critical infrastructure, cybersecurity and consumer privacy. The EO in part directed NSF to launch a pilot for NAIRR within 90 days, which it said was “consistent with past recommendations” of a task force on the subject.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on Monday made public an order from December awarding VLSI Technology LLC $413,264.15 for “time spent addressing OpenSky’s abusive behavior” in a years-long and circuitous case between the two companies. Vidal first issued her precedential Director review ruling in October 2022, holding that inter partes review (IPR) petitioner OpenSky Industries, LLC abused the IPR process in its conduct with patent owner, VLSI Technology LLC, and sanctioning OpenSky by excluding it from the IPR proceedings by relegating it to be a “silent understudy” in the proceedings and “temporarily elevating Intel to the lead petitioner.”

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CyWee Group Ltd. v. ZTE (USA), Inc. affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of CyWee’s 3D pointing device patent claims. In affirming the final written decision, the appellate court found that ZTE’s lack of adversarial nature in inter partes review (IPR) proceedings allowed LG Electronics, a joined party that was otherwise time-barred, to properly oppose CyWee’s motion to amend patent claims.

Section 311(b) of the America Invents Act (AIA) provides that a patent can be challenged in an inter partes review (IPR) “only on the basis of prior art consisting of patents or printed publications.” A published U.S. patent application that never issued as a patent can be used as the basis for an IPR challenge because it’s printed and it’s a publication, right? Not so fast.

The first week of 2024 was a light one for patent filings. The Patent Trial and Appeal Board (PTAB) had a slightly below average 21 new petitions—all petitions for inter partes review (IPR), while there were only 34 new filings in district court. The PTAB saw new IPRs filed against Advanced Coding (filed by Samsung), XR Communications (filed by Ericsson) and Semiconductor Design (filed by Cadence Design Systems). Four new IPRs challenging three Senko Advanced Components Inc. [associated with Senko Group Holdings Co, Ltd.] patents were filed by US Conec Ltd. After low activity throughout 2023, Askeladden has filed three new IPRs challenging three Calabrese Stemer LLC patents and four new IPRs challenging three Intercurrency Software LLC patents.

The U.S. Patent and Trademark Office (USPTO) published guidelines for examiners today on the topic of enablement in light of the Supreme Court’s May 2023 decision in Amgen v. Sanofi. The Office’s view seems to largely mesh with what our guest authors concluded earlier today—Amgen isn’t getting rid of In re Wands and—at the USPTO at least—the decision has seemingly maintained the status quo.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today affirmed two decisions of the Patent Trial and Appeal Board (PTAB) that invalidated some claims and upheld others of a patent owned by Personal Genomics Taiwan, Inc. Based on the PTAB’s claim construction, which the CAFC agreed with, the decision held that Pacific Biosciences had failed to prove the prior art taught the limitation of the preamble phrase of claim 1 in one inter partes review, (IPR) but did prove a different prior art reference taught the limitation in the other proceeding.

As we enter 2024, major policy initiatives are pending at the United States Patent and Trademark Office (USPTO) and in Congress aimed at overhauling certain aspects of Patent Trial and Appeal Board (PTAB) practice. These initiatives—the Advance Notice of Proposed Rulemaking (ANPRM) and PREVAIL Act, respectively, are at a critical point, with elections less than a year away. This article discusses the current state of both.

The U.S. Supreme Court today denied certiorari in Intel v. Vidal, a case that asked the Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) ruling concerning the Patent Trial and Appeal Board’s (PTAB’s) so-called Fintiv framework. The CAFC’s March 2023 decision said appellate review of whether the PTAB’s discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” was precluded by Section 314(d) of the patent statute.