Posts Tagged: "patent office"

This week in Washington IP news, Congress is still on a state work period, but events continue in the Washington area as the United States Patent and Trademark Office (USPTO) holds a STEM educational event for K-12 students and their families. Elsewhere, the Brookings Institution will hear from U.S. Treasury Undersecretary Jay Shambaugh about the state of the global economy.

On Wednesday, April 4, the Patent Trial and Appeal Board (PTAB) denied VLSI’s motion to terminate Intel’s involvement in an inter partes review (IPR) of VLSI’s U.S. Patent No. 7,725,759. In addition to Intel, OpenSky is also a petitioner in the IPR, which pertains to claims 1, 14, 17, 18, 21, 22, and 24 of the ‘759 patent. VLSI argued that a previous March 2021 district court ruling that found Intel had not proven invalidity of claims 14, 17, 18, and 24 of the patent precluded the tech firm from continuing to pursue this IPR. However, Intel successfully made the case that claim preclusion does not apply thanks to the America Invents Act (AIA). Additionally, it argued that the IPR and district court proceedings do not involve the same accused product and have different standards of proof.

On March 30, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued a decision on sua sponte Director review that vacated a decision of the Patent Trial and Appeal Board (PTAB), which had previously denied institution of inter partes review (IPR) proceedings brought by semiconductor company Wolfspeed. In her latest in a series of sua sponte decisions, Director Vidal ruled that the PTAB erred in determining that prior art asserted by Wolfspeed was essentially the same as other prior art asserted against the same Purdue University patent claims in previous IPR proceedings that were also denied institution by the PTAB.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday issued a precedential decision holding that the Patent Trial and Appeal Board (PTAB) correctly found Roku, Inc. had failed to prove the challenged claims of Universal Electronics, Inc.’s patent obvious. Judge Stoll authored the majority opinion and Judge Newman dissented, citing both procedural and substantive problems with the majority’s analysis. The decision relates to Universal Inc.’s U.S. Patent No. 9,716,853, which generally is directed to universal remote controls. Specifically, the patent describes “a universal control engine (UCE) that facilitates communication between a controlling device (i.e., a remote) and intended target appliances.”

The U.S. Court of Appeals for the Federal Circuit on Thursday upheld two Patent Trial and Appeal Board (PTAB) decisions finding VirnetX’s patent claims unpatentable in inter partes review (IPR) challenges brought by Apple, Inc. and Mangrove Partners. The dispute relates to VirnetX’s U.S. Patent Nos. 6,502,135 and 7,490,151, which are directed to a “secure mechanism for communicating over the internet.” Mangrove Partners challenged several claims of the ‘135 patent at the PTAB, alleging they were anticipated by a 1996 article authored by Kiuchi and Kaihara

A bipartisan group of congress members sent a letter to U.S. Patent and Trademark Office Director Kathi Vidal late last week urging her to implement some of the proposals outlined in her October 2022 Request for Comments on Robust and Reliable Patents in order to address problems around drug pricing. The letter was sent by Representatives Jodey Arrington (R-TX), Lloyd Doggett (D-TX), Michael Burgess (R-TX), Ann McLane Kuster (D-NH), and Darrell Issa (R-CA). They specifically expressed concerns about the practice of “patent thicketing” and gave the example of two separate patents granted for a rheumatoid arthritis biological drug by the same company, where the difference in the claims was seemingly minor. The letter cites to a video titled “The Case for Patent Reform,” featuring Senior Vice President and Head of Legal & Intellectual Property Biosimilars at Fresenius Kabi, for this reference.

U.S. companies and inventors still filed more patent applications with the European Patent Office (EPO) than any other country, according to its Patent Index 2022, which was released today. The index showed that U.S. patent applications numbered 48,088, a 2.9% increase from 2021. However, China’s filings jumped by 15.1% over 2021, keeping it in fourth place out of the top five countries of origin for applications and narrowing the gap between it and Japan, the number three filer.

Last week, cyber threat intelligence firm Centripetal Networks filed a petition  with the U.S. Court of Appeals for the Federal Circuit seeking mandamus relief from the Patent Trial and Appeal Board’s (PTAB) “extraordinary departure from basic elements of due process” during inter partes review (IPR) proceedings challenging Centripetal’s patent claims. If left unremedied, Centripetal argues to the Federal Circuit that its own treatment at the hands of the PTAB “sen[ds] a message to the entire patent bar: Any attempt to hold APJs to standards comparable to those of Article III judges [will] be met with sanctions.”

The United States Patent and Trademark Office (USPTO) publishes the Manual of Patent Examining Procedure (MPEP) (currently electronically, but spanning thousands of pages in printed form) to provide examiners and patent practitioners with guidance on the patent statute, USPTO regulations, and patent prosecution practices and procedures. USPTO regulations are promulgated pursuant to the Administrative Procedure Act (APA), which requires a process that includes publication of proposed rules and a public comment period and are binding on the public. The 2011 Leahy-Smith America Invents Act (AIA) strengthened the USPTO’s already-considerable policymaking powers. In a recent law review article addressing the USPTO’s post-AIA policymaking powers, William Neer recognized the USPTO’s AIA-empowered potential to engage in retroactive substantive rulemaking and determined that the USPTO promulgated more rules post-AIA than it did pre-AIA. This article discusses substantive MPEP procedural changes implemented retroactively by the USPTO.

The United States Patent and Trademark Office (USPTO) sent out an email alert on March 16, 2023 about its transition to eGrants for patents. This change to electronic patent grants as opposed to paper patents is in accord with the USPTO’s continued changes to an all-electronic and no paper system. Prior changes have included all-electronic office actions, and of course the USPTO’s EFS-Web system, in which filings are made electronically with the USPTO. One important thing to realize is that a patent may grant very soon after payment of the issue fee, so if the Applicant desires to have a continuation, continuation-in-part (CIP), and/or divisional application filed (all such applications are referred to as “continuing applications”), they should really do so before or at the same time the issue fee is paid, in order to maintain the pendency with the to-be-issued patent.

In early March, the U.S. Patent and Trademark Office (USPTO) published the final batch of comments for its “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.” In total, the USPTO received 227 comments, after extending the deadlines for submissions twice. There were some concerns that the repeated extensions of the submission deadline created uncertainty. When IPWatchdog reached out to the USPTO, the organization had no official comment other than to note that a number of stakeholders had asked for more time to finalize and submit comments, and the Office wanted to hear from as many parties as possible.

Recently, ChatGPT (Generative Pre-trained Transformer), an artificial intelligence (AI) chatbot program developed by OpenAI, has become a popular topic, attracting much attention and discussion. Its applications in the fields of natural language processing and text analysis have been well documented and have aroused great interest. It can be used to generate various language models, such as natural language texts, dialogues, and question-answering. It is currently one of the most advanced and efficient technologies in the language field. ChatGPT has a wide range of applications. In fields like medical, financial, legal, and media, ChatGPT can also be used to generate and analyze text data, thereby improving work efficiency and accuracy. Recently, the technology has even been used in the realm of intellectual property, with some having used it to draft patent applications.

Whether or not the law recognizes a machine as the inventor-at-law, the facts are indispensable to determination of the true inventor-in-fact. In the case of Stephen Thaler’s attempt to obtain patent protection for a food container and light stick he says were independently invented by his AI machine, DABUS, the inventor-in-fact will be either Thaler or his machine. The procedural posture of Thaler v. Vidal caused the discourse to jump over the facts of how the food container and the light stick were invented by DABUS. These overlooked facts may reveal the true inventor, regardless of whether or not the type of inventor is recognized by the current law. 

There was a slight uptick in district court filings last week after a slow January and February, with 43 new patent filings, including a design patent battle involving tumblers and multiple filings indicating an association with high-volume plaintiffs such as Jeffrey Gross and Leigh Rothschild. It was a busy week at the Patent Trial and Appeal Board (PTAB), with over 32 new challenges last week, with only one procedural denial on an institution decision—but that was not based on discretionary denial, which remains often briefed but rarely successful for the time being. Of course, the big news this week was that the Federal Circuit has revived an Administrative Procedure Act (APA) challenge to the Fintiv decision on discretionary denial itself as arbitrary agency action that skirted proper procedure and had an outsized impact on a broad swath of cases.

The USPTO was actively working behind the scenes to revise sections of the Manual of Patent Examining Procedure pertaining to the subject of its recent Request for Comments, including policies and procedures relating to restriction, continuation, divisional, double patenting and terminal disclaimer practice. Three days after the RFC response period ended, the USPTO announced publication of a revised version of the MPEP in the Federal Register. The revised MPEP (Ninth edition, revision 07.2022) was made retroactive to July 2022…. An analysis of the revised MPEP reveals that it contains multiple changes that not only fail to address the President’s and Senators’ concerns [patent thickets], but instead actively facilitate more “restriction thickets”.