Posts Tagged: "patent office"

It seems non-practicing entity (NPE) semiconductor/chip litigation has really come to dominate both the Patent Trial and Appeal Board (PTAB) and the district courts’ dockets this past year. Another average week at the PTAB saw 26 patent filings (five post grant reviews [PGRs] and 21 inter partes reviews [IPRs]), and the district courts saw another heavy week, with 89 new complaints. A slew of IPR challenges on chip patents owned and asserted by Arbor Global Strategies, LLC [Arbor Company, LLP] were instituted; Google, Samsung and LG were denied institution on IPR challenges for five litigation-related patents under Fintiv and a Waco-division Western District of Texas trial date; a slew of IPRs against NPE Bell Semiconductor, LLC [owned by Hilco d/b/a Hilco Global] were instituted; Qualcomm earned a few more institutions against the Vector Capital Corp.-NPE Monterey Research; and Huawei earned institutions against some of the dozen or so patents Craig Etchegoyen’s WSOU entities asserted against them before Judge Albright in the Waco division of the Western District of Texas.

To protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.

Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.

There is a quid pro quo under the U.S. patent laws. In exchange for disclosing her invention, an inventor receives a limited monopoly. Recent developments, however, have made it harder for those in the biotechnology industry to obtain the benefit of this bargain. The written description requirement mandates that a patent specification convey to one of skill in the art that the inventors had possession of their invention as of the day they filed their patent application. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Over the last decade, three areas have proven troublesome in the life sciences.

Gilbert Hyatt was one of many applicants who filed many patent applications shortly before the June 8, 1995 transition point, where patent terms transitioned from being defined based on 17 years from issuance to 20 years from filing. However, he was quite unique in that he was an independent inventor who filed 400 patent applications before this transition point. The vast majority of these applications are still pending – decades after filing. Hyatt asserts that the long pendency is due to bad-faith behavior of the USPTO, while the USPTO asserts that the extended pendency is due to inaction by Hyatt and the complexity of the applications.

Happy Memorial Day week. It was a light week at the Patent Trial and Appeal Board with 20 filings – 18 inter partes reviews (IPRs) and two post grant reviews (PGRs) – but another heavy one for patent filings in district court (96 complaints), driven primarily by a deluge of new IP Edge complaints (I didn’t count it out, but it looks like more than 50) and a single new massive Humira/Abbvie patent-thicket complaint. The Board issued another five or so Fintiv denials, including one over an International Trade Commission (ITC) date, and only a handful of merits denials; it includes one, listed below, where the Board found merit to some minority of the challenged grounds but nonetheless denied after SAS Institute, Inc. v. Iancu for efficiency. The Magnetar Capital-backed Neodron made it to Markman and settled and then filed another round of enforcement actions against new defendants; and there appears to be burgeoning disagreement at the Board itself in just how precedential the Fintiv analyses are, and whether the Board is overreaching its discretion and misreading its own precedent.

Intellectual property (IP) made modern vaccines possible. It took billions of dollars in private and public investments in research and development to be able to create, in record time, multiple viable vaccines to fight the COVID-19 pandemic. The entire world should be celebrating the innovators that continue to push forward with new solutions to problems we will face in the future. This pandemic will end, but there will be another. We should be eternally grateful to have companies like Pfizer, Moderna and Johnson & Johnson that have the capability to create and manufacture vaccines at large scale…. It has been over four months since President Biden’s inauguration. As of yet there has not been a nomination for the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). In addition to running the USPTO, the Director is responsible for advising the President on intellectual property issues. I believe that President Biden would have benefitted from an experienced voice knowledgeable about the dangers of supporting the erosion of property rights during the discussions on whether to support India and South Africa’s proposal to the World Trade Organization to waive IP protections under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

This week in Washington IP news, both houses of Congress remain quiet as the Senate and the House of Representatives enter scheduled work periods. Among policy institutes, however, the Information Technology & Innovation Foundation explores the impacts of “deepfakes” and disinformation on democratic processes, and hosts its seventh Dynamic Antitrust event, which looks at how antitrust regulators can better incorporate the realities of innovation into enforcement activities. The Brookings Institution will look at the positive and negative aspects of President Biden’s recent $100 billion proposal to build out broadband infrastructure across the U.S. Finally, the U.S. Patent and Trademark Office will host its first public roundtable on the agency’s plans to implement the Trademark Modernization Act, and agency historian Adam Bisno will host a webinar looking at licensing activities surrounding the first issued U.S. patent.

Every patent practitioner has faced the same obstacle — a client’s application is assigned to an unfamiliar art unit. This presents two challenges: unfamiliarity with the examiners and unfamiliarity with the application of the law. Here are three proven arguments that overcame Section 101 rejections in AU 3668 from which to draw inspiration.

Design patents provide powerful protections both on their own and as a complement to their more well-known cousin, utility patents. The highly publicized Apple v. Samsung lawsuits of the previous decade featured both design and utility patents, and revitalized public awareness of design patents in general. In fact, it was infringement of the design patents that resulted in the large damages awards in those litigations, with three design patents resulting in an award of $533.3 million and two utility patents only $5.3 million. Beyond the likelihood of greater money damages, as compared to their utility patent counterparts design patents are also less expensive to obtain and hold, offer simpler determinations of infringement and validity, and are less susceptible to being invalidated (whether, e.g., for non-patent eligible subject matter or via a post-grant procedure). As such, design patents are more likely to survive, potentially resulting in substantial damages for the patent holder.

A quiet week resulted in 28 petitions at the Patent Trial and Appeal Board (PTAB), mostly related to preexisting suits, though with a perhaps surprising number of semiconductor patents challenged, and three Qualcomm challenges to Monterey Research (i.e., Vector Capital) patents were all instituted; in general, the district courts had a light week with 55 patent filings, many complaints adding new defendants for old campaigns. Some of the recently filed complaints in the longest-running Blitzsafe campaign against were dismissed without prejudice against automotive OEMs; and probably most notable, in a Fintiv denial, a panel cited the global pandemic and the uncertainty of trial schedules in weighing that factor neutrally (while still exercising their discretion for other reasons), as discussed below. Sonos hit back with inter partes reviews (IPRs) against Google patents in their ongoing dispute.

Meat substitute technologies and the growing industry based on those technologies have seen significant growth in recent years, from the number of startup companies to the amount of investment money to the industry. This article analyzes the patent protection being sought and obtained by the various companies active in this young industry, taking a “deep dive” into the company patent portfolios with a detailed look into the United States Patent and Trademark Office (USPTO) files of the identified patent applications to understand some of the patent prosecution strategies, successes and problems encountered as the companies seek to protect their technology and investments.

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA). Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.

Last Thursday, May 20, the IP industry lost a leader and a dedicated servant. John Doll, surrounded by family, passed at a hospital in Wake Forest, North Carolina after a prolonged battle with lung cancer. For those who knew Doll personally or professionally, he was in it “to win it,” approaching it scientifically until the end, participating in clinical trials where possible and keeping abreast of new discoveries. In fact, in June of 2020, Doll was selected by the Lung Cancer Research Foundation (LCRF) to share his experience on National Cancer Survivors Day. In his recorded message, Doll spoke directly about the importance of research for drug design and development in treating lung cancer.

The Patent Trial and Appeal Board (PTAB) had the usual 30 or so petitions this week (32, to be exact), with a fair number of procedural denials of concurrently filed petitions (i.e., the one-petition rule from the July 2019 updated Trial Practice Guide). District court patent filings sat at 71, with a significant number of Leigh Rothschild suits adding new defendants