Posts Tagged: "patent office"

In two separate precedential decisions authored by Chief Judge Moore today, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered victory for Teleflex Innovations, S.À.R.L. when it upheld Patent Trial and Appeal Board (PTAB) rulings that found Medtronic, Inc. had failed to prove Teleflex’s patent claims for catheter technology used in interventional cardiology procedures unpatentable. The court issued a related decision last month, authored by Judge Lourie, also finding for Teleflex. Chief Judge Moore joined Lourie’s opinion, while Judge Dyk dissented.

Former Director of the U.S. Patent and Trademark Office (USPTO) Andrei Iancu, who is now a partner with Irell & Manella, told attendees of an Orrin G. Hatch Foundation webinar today that many of the proposals in the USPTO’s recent Advance Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices should be legislated by Congress. Particularly on issues that were statutorily prescribed, such as the standard patents are reviewed under at the PTAB versus the courts, the timing for filing petitions, and who can bring an inter partes review (IPR) proceeding, Iancu said the better route to certainty is through Congress.

One of the most intriguing, and frankly long overdue, reforms the United States Patent and Trademark Office (USPTO) needs to consider is putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent. This practice has recently been called into question by the USPTO through an Advance Notice of Proposed Rulemaking (ANPRM) published in the Federal Register. The ANPRM, among many other things, raises the question whether the Office should discretionarily deny post grant proceedings filed by for-profit, non-competitive entities that in essence seek to shield actual real-parties-in-interest (RPIs) and privies from the statutory estoppel provisions contained within the America Invents Act (AIA). And two recent decisions from the Office of Patent Legal Administration (OPLA) provide even more hope that the USPTO will take a reasonable approach going forward when it comes to RPIs.

The U.S. Solicitor General recommended Tuesday that the United States Supreme Court deny Apple, Inc.’s petition asking the Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. concerning Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent).

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that Medtronic, Inc. failed to show the challenged claims of five patents covering catheter technology unpatentable. The CAFC specifically upheld the Patent Trial and Appeal Board’s (PTAB’s) finding that the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented, arguing that the prior art reference had been shown to qualify as prior art, and thus could support a determination of anticipation or obviousness.

The U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) yesterday made public a Sanctions Order against a patent owner that resulted in the cancellation of all 183 claims of five patents challenged in separate inter partes review (IPR) proceedings. The PTAB order said that Longhorn Vaccines & Diagnostics “committed an egregious abuse of the PTAB process” by “selectively and improperly” withholding “material results that were inconsistent with its arguments and the patentability of both original and proposed substitute claims.”

The U.S. Patent and Trademark Office (USPTO) today published a request for comments (RFC) in the Federal Register seeking public input on the pilot program for motion to amend (MTA) practice before the Patent Trial and Appeal Board (PTAB). The Office is considering whether to make the MTA pilot program permanent for patent validity trials under the America Invents Act (AIA) and seeks input on the PTAB’s authority to raise grounds sua sponte during the MTA process. The deadline for public comments in response to this RFC is currently set for July 24, 2023.

The U.S. Patent and Trademark Office (USPTO) published a Federal Register Notice today implementing the suggestions it received on expanding the patent bar following its October 18, 2022, request for public input on the topic. The USPTO last year requested public comment on two FRNs that attempted to expand opportunities to practice in front of the agency. The Office said at the time it planned to “expand the admission criteria of our patent bar to encourage broader participation and to keep up with the ever-evolving technology and related teachings that qualify someone to practice before the USPTO.”

The United States Patent and Trademark Office (USPTO) today published a Notice of Proposed Rulemaking (NPRM) to the Federal Register that proposes a separate design patent practitioner bar. Design patent practitioners would only be able to participate in design patent proceedings. The USPTO is seeking public comments on the changes through August 14, 2023. Currently, there is only one patent bar that oversees those who practice in patent matters before the USPTO, including utility, plant, and design patents. Those already registered to practice in patent matters before the USPTO would not be impacted by the change.

The patent examination process is subject to the well-known issue of hindsight bias. Issues with hindsight bias come up when a patent examiner, without realizing it, uses their knowledge of the invention itself to reject a claim as being obvious. If left unchecked, these issues can lead to incorrect determinations of obviousness, which prolong prosecution, cause unnecessary ex parte appeals to be filed, and force unfair narrowing of independent claims. However, even when an examiner learns about an invention that seems straightforward, human emotions and subjectivity can make it difficult for that examiner to appreciate that the invention was not obvious based on prior art that existed before the invention.

The Merit Systems Protection Board (MSPB) issued a decision on May 5 granting Patent Trial and Appeal Board (PTAB) Administrative Patent Judge (APJ) Michael Fitzpatrick’s request for corrective action with respect to alleged retaliatory personnel actions against him by senior management officials at the Department of Commerce and U.S. Patent and Trademark Office (USPTO). The 131-page decision said that Fitzpatrick filed the appeal to the MSPB in 2021, following punishment for “protected whistleblowing activity.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal, Vice Chief Administrative Patent Judge (APJ) Michael Tierney of the Patent Trial and Appeal Board (PTAB) and Lead APJ Amber Hagy presented a webinar Tuesday on the Office’s Advance Notice of Proposed Rulemaking (ANPRM) on PTAB practices, walking attendees through some of the key proposals, and repeatedly reassuring stakeholders that the ANPRM does not contain any proposed rules. The widespread confusion about the ANPRM was highlighted during Vidal’s recent oversight hearing by the House IP Subcommittee.

On Tuesday, the European Patent Office (EPO) announced the 12 inventors and inventor teams that have been selected as finalists for the 2023 European Inventor Award. The EPO placed three finalists each into four groups: Industry, Research, SMEs, and Non-EPO Countries. Members of the public can vote for the winner on the EPO’s website. The finalists hail from 12 countries, Australia, Austria, Belgium, China, Finland, France, Germany, Iceland, India, Ireland, Italy, and the United States. An independent jury of former European Inventor Award finalists used their expertise to select this year’s finalists.

Between the precedential Fintiv decision in March of 2020 and Director Vidal’s Guidance Memo regarding the application of Fintiv in June of 2022, the discretionary denial rates of inter partes review (IPR) institution decisions under 35 U.S.C. § 314(a) plummeted from 40-50% to 11-16%. Coupled with the order issued by the Chief Judge of the Western District of Texas in July of 2022 declaring that all new patent cases filed in the Waco Division will be randomly assigned among the 12 judges in the district, the substantial decline in denials based on Fintiv in 2022 was not surprising. Now, amid speculations that Fintiv denial rates will increase once again, the USPTO recently announced a set of proposed rules on discretionary denial practice in an Advance Notice of Proposed Rulemaking (ANPRM).