Posts in USPTO

On October 10, the U.S. Supreme Court issued an order list showing it had denied the petition for writ of certiorari filed in Personalized Media Communication, LLC v. Apple Inc. In denying the appeal, SCOTUS leaves in place a divided Federal Circuit ruling that improperly expanded prosecution laches doctrine according to Personalized Media (PMC). The cert denial also passes on the question of whether prosecution laches remains a valid defense to patent infringement in light of the Supreme Court’s 2017 ruling in SCA Hygiene Products v. First Quality Baby Products.

This week in Washington IP news, Congress is wrapping up a district work period, but there are still a handful of interesting IP-related events. The U.S. Patent and Trademark Office (USPTO) recognizes the contributions of Hispanic Americans to the U.S. economy and innovation system. Elsewhere, the Brookings Institution compares and discusses the competing visions of the United States, the European Union, and China regarding international norms. The Center for Strategic & International Studies (CSIS) meets with members of the U.S. Space Force and U.S. Space Command to talk through the threats posed to U.S. space interests.

Following review of more than 4,300 comments, the U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that makes changes to the processes governing internal pre-issuance circulation and review of decisions within the Patent Trial and Appeal Board (PTAB). The stated goal of the policy change is to “promote consistent, clear, and open decision-making processes while protecting judicial independence and increasing transparency of USPTO processes.”

The U.S. Patent and Trademark Office (USPTO) has extended the deadline for comments on its joint request for comments (RFC) with the International Trade Administration (ITA) and the National Institute for Standards and Technology (NIST) on the agencies’ collaboration initiative concerning standards and intellectual property. In a Federal Register Notice (FRN) published today, the USPTO announced the new deadline will be November 6, 2023. The original deadline was September 29.

This week in Washington IP news, the U.S. Patent and Trademark Office (USPTO) discusses how innovators and the Office can use AI tools to their advantage. The Hudson Institute turns its attention to U.S. trade policy, including important trends in semiconductor geopolitics. Elsewhere, the House Science Committee will look into how the EPA uses technology and research development to support local partners and other stakeholders.

The U.S. Patent and Trademark Office (USPTO) today announced new guidance on empaneling procedures for the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB). Under the guidance, PTAB and TTAB management will “avoid empaneling cases to judges who hold stock or bonds (publicly traded or privately held) in any of the disclosed parties or real parties in interest, regardless of the dollar value.”

Yesterday, the United States Patent and Trademark Office (USPTO) held a “public listening session” to hear from industry leaders on the topic of standard essential patents. The event was specifically related to the USPTO’s effort to obtain stakeholder input on questions regarding proposed international standards that were presented in a recent Federal Register Notice, as well as strategies identified in the White House’s National Standards Strategy for Critical and Emerging Technologies.

Clarity, transparency and integrity were themes consistently referenced by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal during a lunchtime fireside chat with IPWatchdog Founder and CEO Gene Quinn on Day 3 of IPWatchdog LIVE 2023. Throughout the discussion, which ran the gamut from the agency’s current rulemaking to potential issues with emerging technologies, Director Vidal strongly encouraged public participation from stakeholders to improve the functioning of the nation’s patent and trademark-granting agency.

The general consensus of attendees at a panel held during IPWatchdog LIVE 2023, day two, is that the Patent Trial and Appeal Board (PTAB) will never be eliminated. Open questions remain, however, on the effectiveness of PTAB reforms recently proposed by the U.S. Patent and Trademark Office (USPTO). Those rule changes, and similar legislative efforts in Congress, were the subject of “Dissecting PTAB Rulemaking & Legislation: Will it Make Things Any Better?”

On day two of IPWatchdog LIVE, J. John Lee, Chief Counsel for Intellectual Property for the U.S. House of Representatives, Committee on the Judiciary, told those who are skeptical of the chances for Senators’ Tillis and Coons’ Patent Eligibility Restoration Act (PERA) to move forward that a House version of the bill is likely to be introduced in the near future. Lee, who is principal advisor on IP issues and helms the Subcommittee on Courts, Intellectual Property, and the Internet, was speaking on a panel titled “Politics, Policy and Legislation at the Intersection of Intellectual Property,” which also featured David Jones of the High-Tech Inventors Alliance; Joe Matal of Haynes Boone, LLP and former U.S. Patent and Trademark Office (USPTO) Acting Director and Acting Solicitor; and Eli Mazour of Harrity & Harrity.

If a sanctions order is the stuff of a Patent Trial and Appeal Board (PTAB) practitioner’s bad dreams, then the issuance of sanctions outright cancelling a client’s patent(s) qualifies as their worst nightmare. That nightmare happened to Longhorn Vaccine (“Longhorn”) in April of this year, when the PTAB canceled five  of its patents as sanctions for Longhorn’s violation of the duty of candor relating to withholding test data that the PTAB deemed relevant to the patentability of the challenged claims. A month later, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal sua sponte ordered Director Review of PTAB’s sanctions order. We now await her decision. This article examines the PTAB’s unprecedented sanctions order in the context of Director Vidal’s recent crackdown on inter partes review (IPR) abuses and provides guidance as to what practitioners can do now to avoid accusations of misconduct before the PTAB.

Amici have submitted briefs and a response has been filed in recent weeks with respect to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s petition to the U.S. Supreme Court for review of a decision that said the USPTO was wrong to reject a trademark application for the mark TRUMP TOO SMALL. The February decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) held the Office’s application of Section 2(c) of the Lanham Act to reject TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued two precedential opinions vacating and remanding decisions of the Patent Trial and Appeal Board (PTAB). In the first, the court said the PTAB abused its discretion in finding that Netflix, Inc. failed to articulate a field of endeavor to establish analogous art, vacating the Board’s decision in part. In the second, the CAFC vacated the PTAB’s finding that Apple, Inc. had failed to prove Corephotonics’ patent claims unpatentable as obvious, holding that the evidence supported a different claim construction than that adopted by the Board in one decision, and because the Board’s decision in the second inter partes review (IPR) violated the Administrative Procedure Act (APA).

The regulatory framework for the inter partes review (IPR) process has long been the subject of criticism from both patent owners and petitioners. There is a growing consensus that the existing rules need to be revised to address loopholes and unintended consequences that have developed over the 10 years the America Invents Act (AIA) has been in effect. To that end, both the U.S. Patent and Trademark Office (USPTO) and Congress have proposed changes in the regulatory framework. While the two disparate approaches seek to change the IPR playing field, their purpose and approach are significantly different. This article discusses those similarities and differences.

Months after invalidating patent claims undergirding one of the largest infringement verdicts ever entered in U.S. district court, the Patent Trial and Appeal Board (PTAB) recently received a round of briefing regarding potential sanctions against petitioner Patent Quality Assurance (PQA). Once accused by the U.S. Patent and Trademark Office (USPTO) of using the America Invents Act (AIA) process to extort money, PQA argues that its failure to respond to mandated discovery and its alleged misrepresentations regarding exclusive retainer of an expert witness should not result in an attorneys’ fees award as compensatory damages to patent owner VLSI.