Posts Tagged: "independent inventor"

Senators and Representatives Coons, Tillis, Collins, Johnson, and Stivers recently announced in a press release a proposed framework to fix patent eligibility law in the United States. If written as proposed in the draft framework, section 101 may do harm to the patent system. The senators and representatives are now soliciting feedback on the draft framework. They are likely to take additional action on the framework as soon as early this week. Please send the following text with any of your edits to [email protected].

On Wednesday, the USPTO held the first of three scheduled hearings prompted by the Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act, which requires the USPTO Director to provide Congress with a report on publicly available patent data on women, minorities, and veterans, and to provide recommendations on how to promote their participation in the patent system. The hearing featured emotional testimony from five inventors, one of whom has recently joined Debtors Anonymous as a result of her patent being invalidated in the Southern District of New York. The SUCCESS Act was signed into law by President Trump on October 31, 2018 and gave the USPTO a one-year period to study representation of women, minorities, and veterans groups in patents. The Office released a report in February which showed that the number of women named as inventors had not been increasing at the same rate as the number of women who were now in STEM professions. Deputy USPTO Director Laura Peter said at the hearing on Wednesday that the Office is seeking input from industry, lawyers, and academics at the public forums, the next two of which are scheduled in Detroit on May 16 and San Jose on June 3. “We’re looking for concrete ideas and action plans to increase the numbers of these groups applying,” Peter said, before explaining that she would be unable to stay for the remainder of the hearing.

In yet another pathetic result of the U.S. government crashing the patent system, Amazon announces it is a patent infringement court. I guess we can call it the District of Amazon Federal Court (DAFC). They claim a cheaper, faster alternative to traditional patent lawsuits. Ring a bell?  The last time I heard that we got the PTAB. This irony is judiciously served. First, Amazon used the patent system to differentiate themselves from their competitors with the one-click patent, thus gaining market share. Then the U.S. government crashed the patent system so that no small inventor or startup could challenge Amazon with improved technologies. With no challengers, Amazon monopolized.  

Recently, I met with a potential client to discuss key points that developers and management should keep in mind in taking the first steps to begin developing a patent portfolio. One aspect of the presentation was public disclosures that began the one-year grace period for filing for patent protection. As I was preparing examples, a practical concern emerged; specifically, whether storing source code in a third-party code repository amounted to a public disclosure or a printed publication. My research revealed that there are certain instances where uploading source code to a third-party repository amounted to a public disclosure or a printed publication, but there were precautions that developers and companies could take to prevent the inadvertent public disclosure of their code.

The World Intellectual Property Organization (WIPO) established World IP Day (WIPD) 19 years ago to celebrate the day on which the WIPO Convention entered into force: April 26, 1970. With nearly five decades under its belt, WIPO has had its successes and scandals, but there can be no doubt that IP rights are more harmonized now than ever before. This year’s WIPD theme is “Reach for Gold: IP and Sports.” While the topic may seem slightly off-mark to some, with so much else to talk about in the context of a rapidly-evolving global digital economy in which IP rights are becoming both more crucial and increasingly threatened in many jurisdictions, it does underscore the degree to which IP permeates industries and facilitates consumer experiences.In honor of World IP Day, we asked the experts to weigh in on how far we’ve come in the two decades since the holiday was established, and what the future holds. As usual, there were optimists, pessimists, and those in between. Here’s what they had to say.

As was recently reported by IPWatchdog Founder Gene Quinn, it has come to light that information made public by the California State Bar shows that Matthew Robert Clements, formerly an administrative patent judge (APJ) at the Patent Trial and Appeal Board (PTAB) has been hired as an attorney by consumer tech giant Apple Inc. Prior to his work as a PTAB APJ, Clements was a patent attorney at Ropes & Gray and he represented Apple as counsel in patent infringement matters, where Apple was a defendant. While at the PTAB, Clements served on APJ panels in a few dozen cases brought by Apple, a situation that raises questions of ethics and that brought to light other matters, such as a lack of any code of judicial conduct for PTAB APJs despite their importance in adjudicating U.S. property rights, which can be worth billions of dollars. We’ve previously reported on statistics showing the outcome of PTAB trials petitioned by Apple where Clements served as an APJ, noting that the mixture of those ingredients resulted in nothing short of a lethal cocktail for patents and their owners. With Clements’ departure from the PTAB now upon us, we wanted to revisit his career statistics at the PTAB using Lex Machina’s data analytics tools to see how the new Apple hire ruled in cases involving his current employer.

The Framework rolled out by Congress last week to fix Section 101 law in the United States will not improve the current 101 disaster. It codifies current exceptions and even adds an entirely new exception specifically intended to protect big tech monopolies. Congress is pitifully unserious about restoring our innovation engine. For more than 200 years, the U.S. patent system was the primary engine propelling the United States to lead the world in virtually every new technology. But over the last 15 years, activists in Congress, the courts and the administration pulverized this engine to benefit a few huge multinationals in exchange for political donations and favors. Today, the patent system is a complete failure causing technologies critical to our economy, job creation, global technological lead, and national security to flee the U.S. and go to China. In a brutal political irony, the Communist Chinese have a better property rights system than we do here in the U.S.

There really is no one-size-fits-all approach entrepreneurs and business executives can follow, and there is no roadmap to success that will work in all cases. That doesn’t mean there aren’t a number of things that can and should be understood, appreciated, and truly internalized if you are going to pursue any kind of economic engagement as more than a hobby, or to do more than merely punch a clock for a paycheck every other week. This is not to say that there isn’t anything wrong with making a few extra dollars as the result of a hobby, or being happy where you are, doing your job and then punching out at 5 o’clock. But if you want more, if you have hopes and dreams of building something from the ground up that is your own and will become your business, or climbing the corporate ladder to become a C-suite executive, you need to treat each business endeavor with an entrepreneurial mindset from the earliest stages. If you don’t, it will create all the wrong habits, and worse, it will create the wrong mindset. A mindset is a very difficult thing to change, and patterns become easy, comfortable and difficult to break.

On April 10, inventor Gilbert Hyatt and the American Association for Equitable Treatment (AAET) filed a petition for writ of certiorari with the U.S. Supreme Court asking the Court to review a Federal Circuit case that struck down an Administrative Procedures Act (APA) claim brought by the petitioners. If the Supreme Court grants certiorari, they will determine whether a section of the U.S. Patent and Trademark Office’s (USPTO) Manual of Patent Examining Procedure (MPEP) authorizing examiners to reopen patent prosecution and block a patent applicant’s appeal after a second rejection violates that patent applicant’s statutory right of appeal under the Patent Act. The particular section of patent examination procedure at issue in this appeal is MPEP § 1207.04, titled Reopening of Prosecution After Appeal. This section was adopted by the USPTO in August 2005. Prior to this, patent examiners could propose reopening prosecution to patent applicants who had appealed a decision after a second rejection and patent applicants were free to disregard this proposal. In Gil Hyatt’s case, Section 1207.04 was used by patent examiners to force the reopening of prosecution, ending 80 appeals of examiner decisions to the Patent Trial and Appeal Board (PTAB).

You’re a patent prosecutor. You’ve just received an office action. The examiner has rejected your claims. You think the examiner got it wrong. On the technical issues, it looks like the examiner is off base, pointing out elements in the prior art that aren’t really there, and finding motivation based upon the flimsiest bases. Also troubling is that the examiner has based some of the rejections upon rules or precedent that you think are incorrect, both on their face and as applied to your claims. So, it’s time to prepare an office action response. Hopefully this will change the examiner’s mind and will allow your client to receive a patent. Your response may include some preliminary matters, perhaps some claim amendments and recitation of the prosecution history, and the status of various claims. Then you come to the arguments. You want to argue with the examiner’s decisions, to be sure, but that does not mean that you want to be disagreeable. Your job as an advocate is to help the examiner understand your client’s position. There are numerous techniques you can apply in order to argue your case in a more effective manner. Effective advocacy is not limited to legal documents filed in court or an administrative appeal. Even when you are arguing to an examiner, your arguments can be made more effective by the manner in which those arguments are presented.

Earlier this week we reported on Lori Cheek, an independent inventor who is defending herself for the second time against accusations brought by Alfred Pirri, Jr. of fraud and misappropriation of trade secrets, among other claims, and who feels like the U.S. patent and legal systems have done her few favors thus far. Following publication of the article, Pirri’s lawyer, Steven Fairchild, sent a letter to IPWatchdog claiming that, since the previous suit was thrown out in pre-trial conference, before discovery or a decision on the merits, the “present suit will uncover the truth of what happened with Mr. Pirri’s invention.” Fairchild specifically points to notarized documents from 2006 that he claims prove Pirri invented the dating cards and their spin-off use for business, which Fairchild says Cheek copied in her other company, Networkd. As mentioned in the previous article, Cheek denies she has ever met Pirri’s therapist, Joanne Richards, whom Pirri claims told Cheek about his idea. She and Richards have signed sworn affidavits attesting to as much, and Cheek insists there is simply no way she could have come in contact with Richards.“Discovery will reveal the truth of the relationship between Ms. Richards and Ms. Cheek,” wrote Fairchild in his letter to IPWatchdog.

In one more example of ways the U.S. patent system can be stacked against the small inventor, we have the story of Lori Cheek, who more than ten years ago had an idea for a unique dating service that she dubbed Cheekd. In 2008, still just prior to the age when people existed via smartphone, the patent she applied for covered a card-based dating system. Cheek decided to leave her steady job as an architect to pursue the idea of a business centered around pre-printed dating cards featuring clever pick-up lines and held a brainstorming session with friends on February 22, 2008. On March 7, 2008, she registered the URL Youvebeencheekd.com (now cheekd.com) with GoDaddy, and officially founded her company, Cheekd, on April 20, 2009. She applied for a patent in 2010 and it was granted on September 24, 2013. A few years later was when the trouble started for Cheek, and today, she is embroiled in her second lawsuit over a patent on a business she is no longer pursuing, both brought by a man, Alfred Pirri, whose first suit was dismissed in pre-trial conference.

A company must be strategic in any business decision it makes in order to ensure that it takes the necessary measures to avoid liability for its actions. With respect to patent infringement, and specifically willful patent infringement, the different approaches to determining which measures to take and when to take such measures have been repeatedly challenged in light of a number of court decisions in recent years. To set the scene, the Federal Circuit held in Underwater Devices Inc. v. Morrison-Knudsen Co., 717 F.2d 1380 (1983) that a potential infringer has an affirmative duty to exercise due care to determine whether or not he or she is infringing. This placed the burden on the potential infringer to seek competent counsel and obtain either a non-infringement opinion or invalidity opinion prior to undertaking the possible infringing activities. This would prevent a finding of willful infringement and treble damages.

Earlier today, the United States Court of Appeals for the Federal Circuit overruled the determination of the Patent Trial and Appeal Board (PTAB) in three separate IPR proceedings. The Federal Circuit found the claims of U.S. Patent Nos. 7,742,053, 6,897,871, and 7,327,369 (i.e., the Unified Shader Patents) patentable on appeal. ATI Technologies ULC v. Iancu (Fed. Cir. April 11, 2019). The question at issue was whether ATI Technologies was diligent from the moment of conception through to the constructive reduction to practice. There was no question that ATI’s conception had pre-dated the prior art of concern. Upon reading this decision, it is difficult to understand exactly why or how the PTAB could get this issue so wrong. Indeed, this decision exemplifies why many criticize the PTAB as an institution.

In their latest letter weighing in on intellectual property issues, Senators Thom Tillis and Chris Coons have expressed their concerns about the effects of “serial” inter partes review (IPR) petitions on the U.S. patent system.In March, the senators sent a letter to Karyn Temple, Register of Copyrights, to ask a series of questions about the Copyright Office’s ability to handle the likely impact of Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. Today’s letter was addressed to USPTO Director Andrei Iancu and similarly asked Iancu to respond to a list of five pointed questions about the Office’s willingness to take action on serial IP challenges.