Posts Tagged: "patent office"

The business of the Patent Trial and Appeal Board (PTAB) continues on as most practitioners transition into another month of working from home. Like many courts, the PTAB has adapted its standard practices. For example, the PTAB has transitioned to remote hearings and encouraged remote depositions, but has otherwise continued to advocate for business as usual. The PTAB also appears to be accommodating requested scheduling changes. This article addresses the main highlights from recent PTAB actions to provide practitioners with additional resources as they navigate PTAB practice over the next weeks and/or months.

On May 5, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Uber Technologies, Inc., v. X One, Inc. with respect to one claim limitation and remanded the case to the PTAB to analyze the remaining limitations of the challenged claims in the first instance.  In its decision, the PTAB determined that an asserted limitation of U.S. Patent No. 8,798,593 (the ’593 patent), which is directed to a “Buddy watch application” for a mobile device, was not obvious in view of the prior art.

The America Invents Act (AIA) outlines an adversarial, inter partes, process for reviewing patents and determining their validity. Patent owners deserve a fair process, presided over by entirely neutral decision makers. But AIA trials are corrupted when judges at the Patent Trial and Appeal Board (PTAB) expand the trial proceedings to address invalidity grounds beyond those asserted in the IPR petition. When considering whether appellate review is available to prevent the PTAB from invalidating patent claims based on grounds not asserted in the petition, however, different Federal Circuit panels have arrived at different outcomes.

This week, Patent Trial and Appeal Board (PTAB) filings are back up, with four post grant reviews (PGRs) and 37 inter partes reviews (IPRs), while there were 83 district court complaints; the district court numbers skew high because of the WSOU entities’ proclivity for filing dozens of independent complaints per defendant, as discussed below. This week saw a major suit from PayPal against an online coupon competitor, allegations of abusive demand letter practices by BlackBerry, and even what appears to be a Matrix-themed gag filing in Delaware. Lockdown doesn’t seem to have slowed down suits in the slightest, despite what has been happening in other industries; only time will tell how earnings reports and market dips affect the patent marketplace longterm, though if history is any guide, litigation and patent assertion will likely rise in a recession economy.

The U.S. Supreme Court heard oral arguments in United States Patent and Trademark Office, et al., v. Booking.com B.V., (Case No. 19-46) yesterday, in the High Court’s first ever telephonic hearing. The United States Patent and Trademark Office (USPTO) urged the Supreme Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. The Respondent, Booking.com, argued that the primary significance test, rather than the Federal Circuit’s precedent in Goodyear Co. v. Goodyear Rubber Co., holds the answer to the question of how to distinguish between descriptive and generic names, and under the primary significance test, BOOKING.COM is a registerable trademark.

Last week, the United States Patent and Trademark Office (USPTO) issued a decision refusing to vacate a Notice of Missing Parts in U.S. Patent Application No.: 16/524,350 (the ‘350 Application), titled “Devices and Methods for Attracting Enhanced Attention”, for failure to “identify each inventor by his or her legal name” on the Application Data Sheet (ADS). The ADS listed a single inventor with the given name DABUS and the family name as “Invention generated by artificial intelligence.” DABUS stands for “Device for the Autonomous Bootstrapping of Unified Sentience”. The Application listed Stephen L. Thaler as the Assignee, Applicant and the Legal Representative. The USPTO denied the petition to vacate the Notice of Missing Parts.

Earlier this year, the Patent Trial and Appeal Board (PTAB) established a two-part framework for applying 35 U.S.C. § 325(d), under which the PTAB may deny institution of an inter partes review (IPR) if substantially the same art or arguments previously were presented to the U.S. Patent and Trademark Office (USPTO). This framework injects a degree of rigor into the PTAB’s discretionary Section 325(d) determinations and suggests ways that IPR participants may more effectively raise or resist Section 325(d) arguments. The framework and its practical implications are discussed below.

Recently, the Federal Circuit affirmed a decision of the Patent Trial and Appeal Board, holding that the Board correctly determined that the claims 21–24 of U.S. Patent No. 6,754,640 (’640 patent) and claims 1-20 of U.S. Patent 8,768,840 (’840 patent), both owned by Bozeman Financial LLC (Bozeman), are directed to patent ineligible subject matter under 35 U.S.C. § 101. To reach this decision, the Federal Circuit first determined the appellees, all 12 of the United States Federal Reserve Banks (Banks), to be “persons” under the America Invents Act (AIA) and, therefore, eligible to petition for post-issuance review under the AIA. See Bozeman Fin. LLC v. Federal Reserve Bank of Atlanta, No. 2019-1018, 2020 U.S. App. LEXIS 11315 (Fed. Cir. April 10, 2020) (Before Lourie, Dyk, and Moore, Circuit Judges) (Opinion for the Court, Moore, Circuit Judge).  

On April 28, the United States Patent and Trademark Office (USPTO) issued official Patent and Trademark notices announcing that it will be further extending certain patent and trademark deadlines that fall between March 27 and May 31, to June 1, 2020 in accordance with the agency’s temporary authority under the Coronavirus Aid, Relief, and Economic Security (CARES) Act. The notices supersede the notices previously posted by the USPTO on March 31 and March 16, 2020. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, noted that “[i]nnovation and entrepreneurship will play a key role in our fight against this pandemic, and in the upcoming recovery of our country…accordingly, the USPTO continues to assess measures to support the work of inventors and entrepreneurs during this crisis and beyond.”

Is there something in the water this week? While Patent Trial and Appeal Board (PTAB) filings were up slightly (the spike due entirely to 14 new petitions from Comcast against Rovi in their massive ongoing licensing dispute), the district courts—particularly the Texas branches—had a banner week, with 127 new filings—54 of which were filed Friday, April 24 alone. The majority, 31, were filed in Texas courts.
The 54 new complaints included a spate of filings by entities controlled by IP Edge and Leigh Rothschild, more VoIP-PAL suits, and some high-profile standard-essential patent infringement cases by Conversant Wireless against Tesla. They also included 16 new suits filed by a new entity, as described below.

Last week, the USPTO announced a public release of the Patent Center beta that will eventually replace PAIR and EFS-Web while providing improved access to prosecution histories and related data. The Office has always been on the cutting edge of technology for the Federal government. Their electronic filing system (EFS), Patent Application Information Retrieval (PAIR) system, hoteling, and other technology initiatives have put the Office out front of many government agencies. FY2020 Congressional Justification for the USPTO states that it is the responsibility of the USPTO to “foster[] innovation, competitiveness and job growth in the United States by … delivering IP information and education worldwide.” Open access to the U.S. Patent and Trademark Office (USPTO) data is core to the USPTO’s mission and aligns with the Open Data policies of the Federal government generally.

Today, for the 20th year in a row, we celebrate World IP Day. Today also marks the 80th birthday (after mine, another notable quarantine birthday) of a composer, songwriter, and record producer that has changed the history of music: Giorgio Moroder. Nicknamed the “Father of Disco”, he pioneered electronic music, produced numerous world hits – including some of Donna Summer’s major successes – and later composed film screenplays and scores (and won several awards for that work, including three Oscars). More recently, Moroder, a native of Ortisei, Italy, was honored with and contributed to a song named after him by the acclaimed EDM duo, Daft Punk. Similarly to Moroder, artists and creatives push the boundaries of ingenuity, create worlds for us to get lost in, imagine digital and analog alternative realities to soothe our senses and soul, and blur the lines between art, entertainment and technology. Innovators in all fields question the status quo and pursue a vision in creative art, technology, medicine, business, and all other areas of human knowledge. And while they do so, they touch many lives and, through their collective contribution, impact society as a whole. As our lives have been turned upside down by the COVID-19 pandemic, we recognize more than ever that investing in creativity, in innovation, and in the visionaries has allowed us as a society to cope and fight back with unprecedented tools.

The United States Patent and Trademark Office (USPTO) Chief Economist today released a report, “Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International,” outlining the effect of recent USPTO actions on patent eligibility determinations in certain technology areas most affected by the Alice decision. According to a USPTO press release, the conclusion is that these actions “have brought greater predictability and certainty” to these tech areas. “We have heard anecdotally from both examiners and applicants across the entire spectrum of technologies that our 2019 guidance on Section 101 greatly improved the analysis in this important area of patent law,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO in the press release. “The Chief Economist’s report now confirms this general perception, especially with its critical finding that uncertainty decreased by a remarkable 44%.” 

The traditional wisdom—that patent suits rise and fall with the economy—seems backward. With some data forthcoming on that point, both during the last downturn and this one, patent filings haven’t slowed much, if any. Last week, 22 Patent Trial and Appeal Board (PTAB) petitions were filed—one post grant review (PGR) and 21 inter partes reviews (IPRs)—just a few more than last week and down substantially now and on the year from the highs of a few years ago. But patent suits haven’t slowed, with 77 complaints nationwide this week, a docket chock full of repeat offenders, mostly comprising NPE aggregators like Oso IP and Equitable IP, with the occasional new campaign listed below or biopharmaceutical litigation, as listed below.

Yesterday, the United States Supreme Court ruled that the Director of the United States Patent and Trademark Office (USPTO), by and through his designees, the Patent Trial and Appeal Board (PTAB), has the unchallengeable authority to institute inter partes review (IPR) proceedings even when they are brought outside the statute of limitations. Thus, the PTAB is now the most important patent court in the United States. This begs an important question that Congress must soon wrestle with regarding access to the PTAB. We have been told over and over again just how essential the PTAB is to the patent system. How necessary the PTAB is with respect to rooting out bad patents that never should have issued. And, honestly, the PTAB has been very, very good at killing patent claims and patents. But there is a fundamental unfairness at the PTAB. If the PTAB is so important, why are the fees so high? If the PTAB plays such a vital role in correcting the egregious mistakes of patent examiners (of which there are apparently many given the number of valuable patents that die upon review), why should only those patents that are owned by independent inventors, universities, start-ups and research and development companies be the targets? What about the truly ridiculous, idiotic patents that are issued to large entities?