Posts in USPTO

On August 10, Senator Tillis, the Chairman of the Senate Judiciary Committee Subcommittee on Intellectual Property, sent a letter to United States Patent and Trademark Office (USPTO) Director Andrei Iancu encouraging the Office to implement two administrative changes that would help to improve the effectiveness of the U.S. patent system. Noting that the Subcommittee has held a series of hearings on patent eligibility reform “with an eye toward improving the efficiency and effectiveness of U.S. patent law and its administration”, Tillis explained that he remains interested in finding ways to improve the patent system despite the inability of stakeholders to reach a consensus on legislative reforms as a result of the hearings. Tillis referred to a paper on patent reform by Stanford University professors Lisa Larrimore Ouellette and Heidi Williams that outlined three specific reforms to the U.S. patent system.

This week, the district courts saw 77 new complaints—though at least 10 are re-filings of Uniloc v. Google cases being transferred from the Eastern District of Texas to the Northern District of California by stipulation, somewhat inflating the numbers, leaving us with a relatively low filing rate of 66 bona fide new complaints this week. The Patent Trial and Appeal Board (PTAB), for its part, saw 36 filings, driven up in part by a half-dozen petitions from LEGO® and Warner Bros. against assertion vehicle MQ Gaming, LLC.

Rather than allowing it a quiet death, the financial services industry is making a quiet effort to keep the Covered Business Methods (CBM) Program at the Patent Trial and Appeal Board (PTAB) alive. The special interest group has reportedly enlisted Senator Richard Blumenthal (D-CT) to push for an extension of the CBM program for one year. A rider on the next COVID supplemental appropriations package, or possibly a FY 2021 Commerce Department appropriations bill, would carry the grant of CBM’s stay of expiration.

Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief. Thus begins an ex parte appeals process in which a panel of at least three administrative patent judges (APJs) considers patentability of the rejected claims. Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves. To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.

On August 3, inventor advocacy group US Inventor filed an amicus brief with the U.S. Court of Appeals for the Federal Circuit in support of a due process argument raised in an appeal from the Patent Trial and Appeal Board (PTAB) by New Vision Gaming & Development. US Inventor’s brief raises two major points in support of New Vision’s contention that the financial incentive structure for administrative patent judges (APJs) destroys due process at the PTAB. First, the brief details data that proves the existence of an “October Effect,” which leads to inflated rates of petitioner-friendly PTAB trial institutions in response to the APJ performance review cycle at the USPTO. Second, the brief argues that APJ performance review criteria are inherently subjective in a way that incentivizes APJs to make pro-petitioner decisions to please supervisors who have budgetary responsibilities. Taken together, US Inventor contends that these factors would lead a reasonable person to question “whether the PTAB invalidates patents so frequently because its constituent APJs try to please their budget-minded bosses through revenue-enhancing decision making.”

This week, district courts saw 91 new complaints, a large portion filed by IP Edge subsidiaries, such as Karetek Holdings, LLC; Guada Technologies; Tunnel IP, LLC; Altair Logix, LLC; Coretek Licensing, LLC; and Raindrops Licensing, LLC, with the rest being Intellectual Ventures selloffs, company-to-company disputes (like the Skull Shaver, LLC v. Freedom Grooming design patent case), and some pharmaceutical filings.

There were 17 discretionary denials under Section 325; 41 PTAB petitions filed—one post grant review (PGR) and 40 inter partes reviews (IPRs)—a number buttressed largely by Amazon filing seven IPRs against VB Assets, LLC – an assertion vehicle apparently spun out of AI-voice company, VoiceBox, after Nuance purchased them last year – as well as Samsung filing five IPRs against Clear Imaging Research, LLC, an entity run by the former co-founder of Soryn IP. This was rounded out by a five-IPR battle between Monolitic Power Systems and Volterra Semiconductor over licensing semiconductor technology.

On January 9, 2019, Moderna Therapeutics, Inc. (“Moderna”) filed a petition requesting inter partes review of U.S. Patent No. 8,058,069 (the ‘069 patent) owned by Arbutus Biopharma. The ‘069 patent is directed to lipid nanoparticle technology, the same technology that Moderna is using in its efforts to develop a vaccine for COVID-19. The Patent Trial and Appeal Board (PTAB) instituted review, but in their decision last week, determined that Moderna had not shown, by a preponderance of the evidence, that claims 1-22 of the ‘069 patent are unpatentable under 35 USC § 103.

Much has been written about the uncertainty in U.S. patent law concerning laws of nature, natural phenomena, and abstract ideas following the Supreme Court’s decisions in Mayo v. Prometheus and Alice Corp Pty Ltd v. CLS Bank Int’l. A recent decision from the Enlarged Board of Appeal at the European Patent Office (the Enlarged Board), however, demonstrates that the United States is not alone in grappling with issues surrounding patent eligibility. In the case of genetically modified plants and animals, questions arise on where to draw the line between human invention and biological processes. Earlier this year, the Enlarged Board reversed a 2015 decision that had held that product-by-process patents could be sought for genetically modified plants and animals despite a patent exclusion for “essentially biological processes.” 

In Article 1, Section 8, Clause 8, of our Constitution, the founders were relatively specific. The founders give Congress power to secure “the exclusive Right” to “Authors and Inventors” in the “Writings and Discoveries”. Congress is given  specific direction on how to do it (i.e., “for Limited Times”), and why it should be done (i.e., “To promote the Progress of Science and useful Arts”). Unfortunately, the Leahy-Smith America Invents Act (AIA) of 2011 dramatically changed how the Executive branch implements the Constitutional prerogative.  The AIA transferred power constitutionally allocated to the judicial branch to the executive branch – specifically, to Administrative Patent Judges (APJs) in the USPTO. In the process of implementing the Patent Trial and Appeals Board (PTAB) on which the APJs sit, judicial independence, judicial ethics, rules of evidence, and other protections commonly afforded rights holders in disputes adjudicated by the federal judiciary were sacrificed in the name of expediency.

On Thursday, July 30, U.S. Patent and Trademark Office (USPTO) Commissioner for Patents Drew Hirshfeld and other USPTO staff updated attendees of IPWatchdog and LexisNexis’ webinar, “A Conversation with the Commissioner: A Look Inside Patent Processes at the USPTO,” on issues such as staffing, reopening plans, and upcoming new processes for routing patent applications.

The Supreme Court is currently considering several pleas to review the holding in Arthrex v. Smith & Nephew I and Arthrex v. Smith & Nephew II in the form of four petitions for writs of certiorari: U.S. v Arthrex, No. 19-1434, Smith & Nephew v. Arthrex, No. 19-1452, Arthrex v. Smith & Nephew, No. 19-1458, and Arthrex v. Smith & Nephew, No. 19-1204.  Recently, there has been an uptick in activity in the various cases, with Arthrex most recently filing response briefs in two cases and amicus brief filed by Askeladden LLC and the New York Intellectual Property Law Association (NYIPLA) in U.S. v Arthrex.

On July 29, Askeladden LLC filed an amicus brief in support of the U.S. Government’s combined petition for a writ of certiorari in U.S. v. Arthrex, Inc., No. 19-1434. In particular, Askeladden asks the Supreme Court to accept the petition and address the threshold question raised by the U.S. Government: whether, for purposes of the Appointments Clause, U.S. Const. art. II, § 2, Cl. 2, administrative patent judges (APJs) of the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “principal officers” who must be appointed by the President with the Senate’s advice and consent, or “inferior officers” whose appointment Congress has permissibly vested in a department head.

The Federal Circuit on Wednesday affirmed a decision of the Patent Trial and Appeal Board (PTAB) that found FanDuel had failed to prove that claim 6 of Interactive Games’ U.S. Patent No. 8,771,058, was obvious in view of the asserted prior art. FanDuel, Inc. v. Interactive Games, LLC (CAFC, July 29, 2020). FanDuel appealed to the Federal Circuit on the ground that the PTAB violated the Administrative Procedures Act (APA) and also challenged its factual findings. Judge Dyk dissented in part, saying he would have found the claim obvious, and that the obviousness standard used by the PTAB was overly rigid and not in the spirit of KSR v. Teleflex.

There was a spike in Patent Trial and Appeal Board (PTAB) filings this week—almost double the average, at 56—driven in part by eight new petitions (adding to those previously filed) against patents owned by the Moskowitz family by Globus Medical. That was good enough to rival newly filed complaints for the first time this year (57). It also appears Uniloc (Fortress) and Samsung have come to some sort of agreement, as a handful of pending inter partes reviews (IPRs) settled; Samsung was denied institution in all of the IPRs it has filed against Cellect to date (eight petitions, with 12 still pending—at least some patents have no remaining challenges, meaning the litigation is sure to continue in due course).

The U.S. Court of Appeals for the Federal Circuit ruled yesterday that Australian Therapeutic Supplies Pty. Ltd. has “a real interest” in cancelling the registration for NAKED for condoms, owned by Naked TM, LLC. While the Trademark Trial and Appeal Board (TTAB) had found that Australian lacked standing to petition for cancellation because “it had contracted away its proprietary rights in its unregistered marks,” the Court held that “a petitioner seeking to cancel a trademark registration establishes an entitlement to bring a cancellation proceeding under 15 U.S.C. § 1064 by demonstrating a real interest in the cancellation proceeding and a reasonable belief of damage regardless of whether petitioner lacks a proprietary interest in an asserted unregistered mark.” Judge Wallach dissented from the majority opinion, which was authored by Judge Reyna.