In Brooks Furniture Mfg., Inc. v. Du tailier Int’l, Inc., 393 F. 3d 1378 (2005), the United States Court of Appeals for the Federal Circuit held that “[a] case may be deemed exceptional” under § 285 only in two situations: (1) “when there has been some material inappropriate conduct,” or (2) when the litigation is both “brought in subjective bad faith” and “objectively baseless.” The question put before the Supreme Court was whether the Brooks Furniture framework is consistent with the statutory text.
In unanimous decisions delivered by Justice Sotomayor, the Supreme Court ruled that the Brooks Furniture framework was too restrictive and inconsistent with the text of § 285. With Octane Fitness the Supreme Court makes it easier for district courts to sanction plaintiffs for bringing meritless patent infringement suits, while Highmark makes it more difficult for the Federal Circuit to reverse district court decisions under the statute. Both cases were closely watched as both the private sector and Congress have been making efforts to quash the dramatic uptick in patent cases filed by non-practicing entities.
The patent litigation landscape forever changed on September 16, 2012. On that date the Patent Trial & Appeal Board (PTAB) was born. The precursor to the PTAB was the Board of Patent Appeals and Interferences (BPAI), which would hear appeals from applicants who had their patent applications rejected and also conducted interference proceedings. With the signing of the America Invents Act (AIA) the PTAB was born and the jurisdiction of the appellate body within the United States Patent & Trademark Office (USPTO) was greatly expanded.
This Board, the adjudicative body of the USPTO, consists of technically and scientifically trained administrative patent judges (APJs). The PTAB was created, in part, to adjudicate the new patent challenge mechanisms of the America Invents Act, which include Post Grant Review (PGR), Inter Partes Review (IPR) and Covered Business Methods (CBM). Since 2012 roughly 1,000 challenges have been filed as petitions for either Inter Partes Review or the transitional Covered Business Method challenge proceeding. Post Grant Review is only available for patents that were granted as the result of first to file, which did not go into effect until March 16, 2013, so there will be some time before we see Post Grant Review given the tremendous backlog at the Patent Office.
Since the mid 1990’s, the fashion industry has experienced a retail revolution. Prior to 1995, most retailers had a single distribution channel – brick-and-mortar stores. Beginning in 1995, with the launch of Amazon and eBay, and the creation of search engines such as Google and Yahoo, e-commerce became another viable distribution channel. The launch of the Apple iPhone in 2007, and the rapid adoption of smartphones generally, followed by the subsequent development of the tablet device, spurred the growth of mobile commerce. Many retailers began to adopt a multi-channel approach, selling products in brick-and-mortar stores, on-line and through mobile devices, but without integrating their data, inventory, processing and delivery systems. The same product might have a different price in a physical store than on a website, and products purchased on-line could not be returned in a brick-and-mortar store. Since 2010, retailers have been moving towards omni-channel retailing, which is aimed at providing a seamless customer experience, integrated across all channels both domestically and internationally. Typically, this requires a restructuring of management and operational functions, as well as the adoption of new technologies that facilitate data sharing and interaction across the company.
At the same time, fashion brands are engaging in more direct-to-consumer retail sales, in their own brick-and mortar stores and through e-commerce and mobile commerce. The launch of social networks, including MySpace in 2003, Facebook in 2004, Twitter in 2006, Tumblr in 2007, and Pinterest in 2010, created new ways for fashion brands to interact with consumers and build brand loyalty. According to a recent study, globally more than a third of all consumers have purchased products directly from brands or manufacturers.[i] This may be due to a combination of more favorable pricing, wider selection and brand loyalty.[ii]
When the patent bar exam was given in written form test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables.
Those days are long gone, for nearly a decade now, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures. Don’t fool yourself though — the fact that this is an “open book” exam does not mean that it is easy or that you will be able to “wing it” and rely on the MPEP as a crutch. Many people have difficulty finishing the exam and it is a recipe for failure to simply plan to rely on the MPEP to get you through the exam. This is particularly true today where much of the examination is based on new material not found in the MPEP and only available in Federal Register Notices.
Still, you absolutely must spend a so at least a part of your study familiarizing yourself with both the MPEP and search techniques and strategies that have a chance of success come exam day. You may only have time to look up information relevant to a handful of questions, but if you do go to the MPEP you want to do so with maximum confidence that the time you spend will produce a successful result.
With this in mind, here are a few MPEP search strategies to use in your practice for the patent registration exam.
Recently it has come to my attention that there is a WikiHow page titled How to Study for the Patent Bar. I have been teaching a patent bar review course for the Practicing Law Institute since 2000, so I am something of an expert on the patent bar examination. I know a thing or two about how aspiring patent practitioners can and should proceed to study for the exam. I can tell you definitively that if you follow this Wiki advice you are guaranteed to fail!
The other principle lecturer in the PLI patent bar review course, and course creator, John White, put it like this: “If a person really follows this advice, they will be our student after 2-3 failed attempts. They will also be an emotional confused confidence lacking wreck!”
Hopefully we have your attention. You absolutely must be very careful when choosing which advice to follow. While free resources are tempting because the price is right, relying on what is free is a recipe for disaster on the patent exam.
I’m in New York City today at PLI headquarters on Seventh Avenue for the USPTO Post-Grant Patent Trials 2013 program. I will moderate a panel this afternoon, but as the day starts the first speaker is David Kappos, former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Since leaving the USPTO at the end of January 2013, Kappos has landed at the New York offices of Cravath, Swaine & Moore, an extremely well regarded Am Law 100 firm and great place to land. It was good to see him, he says he is doing well, and he seems to have as much energy and enthusiasm as ever.
Kappos started by explaining that this is his first public speaking engagement since leaving the USPTO. From the outset he also explained that the slides he would be using for the presentation were prepared by the USPTO. This presentation was originally scheduled to be given by James Smith, Chief Judge of the PTAB, who had to beg off as the result of sequestration cuts.
This article is by no means a substitute for the presentation by Kappos. In 60 minutes he managed to bring everyone up to date on what is going on at the USPTO relative to Appeals and other post patent proceedings. Of course, there were a handful of things that particularly caught my attention. For that reason I also provide my thoughts and comments in the format of comments from the peanut gallery, or perhaps as a patent attorney equivalent to Mystery Science Theater 3000. In order to differentiate my thoughts/comments from the FTC statement, my comments are italicized, colored, indented and tagged with the IPWatchdog logo.
David Kappos will speak about Post-Grant Trials at PLI in NY on March 27, 2013.
Next week on Wednesday, March 27, 2013, I will be once again in New York City at Practising Law Institute headquarters on Seventh Avenue, roughly between Central Park and Times Square. The program for the day is titled USPTO Post-Grant Patent Trials 2013, which will provide 6 CLE credits for attendees.
I am a moderator for the segment titled Practice Before the PTAB Roundtable, which will discuss the first trial petitions filed, motions practice, scheduling, the possible need for rule refinements and practice tips for practitioners. Robert Sterne of Sterne Kessler and Professor Lisa Dolak of Syracuse University College of Law will be the panelists.
A new addition to the program just announced today is David Kappos, who is the immediate former Director of the United States Patent and Trademark Office. Kappos, a life-long employee of IBM prior to taking charge of the USPTO, is now with Cravath, Swaine & Moore LLP in New York City. Kappos will discuss the Patent Trial and Appeal Board, specifically discussing ex parte reexamination, the remaining legacy inter partes reexamination cases, inter partes review and the transitional program relating to covered business method patents. His segment will run from 9:15 am to 10:15 am. In addition to being presented live in New York City the program will also be webcast.
Next year I will be speaking at the 7th Annual Patent Law Institute sponsored by the Practising Law Institute. The event, like in previous years, will be bi-coastal. We will be live from New York City on February 4-5, 2013, and live from San Francisco, CA on March 18-19, 2013, with the San Francisco location also being webcast. My topic will be ethics, which will provide the all important and highly sought after ethics CLE credit.
In addition to discussing ethical issues raised by the America Invents Act, such as the new statute of limitations and avoiding catastrophic malpractice issues with the shift to first to file, I also always like to do a rundown of recent OED disciplinary proceedings. The last time I did this was several years ago. See Patent Office Disciplinary Actions and Lack Thereof.
With this in mind, over the coming weeks and months leading up to the 7th Annual Patent Law Institute, I will be publishing a summary of the disciplinary proceedings before the Office of Enrollment and Discipline at the United States Patent and Trademark Office. What follows starts with the first Order of 2012.
We just wrapped up our last live Patent Bar Review Course for 2012. We were in San Francisco for the past few days, once again teaching a room of would-be patent attorneys and patent agents. This group now has the task of studying the Phase 2 implementation of the America Inventors Act, which went into effect on September 16, 2012 and started to be tested on October 2, 2012.
In the little more than a month since AIA Phase 2 became testable we have already heard from a number of our Patent Bar students who have taken the Patent Exam since the USPTO added AIA Phase 2 to it. The good news — in addition to our usual exemplary pass rate — is that the sample questions we prepared for all the supplementary materials, from KSR and Bilski all the way through AIA Phases 1 and 2, are very, very predictive of the questions you’ll see on the actual Exam. Student after student has told us that if you can handle the questions we have added to Patware (the “AIA Phase 2 Mini-Exam” was just recently added), you can handle all the questions the USPTO will ask you on the Exam.
Yes, this may be appropriately characterized as coming from the shameless commerce division, but at least some will probably want to know that the PLI Patent Litigation treatise has been recently refreshed to include some important updates. Even if you do not own the treatise, or who don’t plan on buying it, would probably still be interested in this readers digest length version of the updates to various important patent law matters published below. This snapshot-update is provided courtesy of PLI.