Posts Tagged: "USPTO"

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision holding that a Delaware district court erred in its claim construction of a term with respect to Malvern Panalytical, Inc.’s patents. Specifically, the CAFC said the district court erred by relying heavily on the patent prosecution history statements for a related patent that had been cited in the information disclosure statement (IDS) during supplemental examination of one of the patents-in-suit to inform its construction of the term in question.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an Order last week in a sua sponte Director Review proceeding asking the parties to Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC and any interested amici to weigh in on the appropriate sanctions remedy when a party withholds evidence in an America Invents Act (AIA) proceeding.

Late last week, more than half a dozen amicus briefs were filed in support of GM Global Technology Operations in a case that is set to potentially shake up design patent law. The latest briefs generally urged the en banc U.S. Court of Appeals for the Federal Circuit (CAFC) to keep the law as is in order to avoid major disruptions. In June of this year, the CAFC granted a rare en banc review of its January, 2023, decision in LKQ Corporation v. GM Global Technology Operations, which affirmed a Patent Trial and Appeal Board (PTAB) ruling that LKQ failed to show by a preponderance of the evidence that GM’s design patent was anticipated or would have been obvious.

On October 26, a panel majority of the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a pair of final written decisions at the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by Monterey Research and covering improved static random access memory (SRAM) cell designs. Dissenting from the majority was Circuit Judge Timothy Dyk, who believed that both the Board and CAFC panel majority erred by concluding that claim amendments made during reexamination did not differentiate the claims from asserted prior art references.

Startups often face many competing pressures. Two such pressures that are frequently at odds with each other are the need to adequately protect the intellectual property that will be the basis for future revenue and investment, and the need to bring such revenue and investment into the business to allow for continued technology development and commercialization. Many startups are aware of how the on-sale bar interacts with these pressures and the associated need to file patent applications on any technology prior to offering or placing it on sale. However, fewer startups are aware of the public-use bar and how activities pursued with the goal of growing their businesses may unwittingly invoke it.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling finding that it is ultimately the petitioner’s burden to clearly present arguments in an inter partes review (IPR), and that Netflix failed to do so in challenging the relevant claims of DivX’s streaming technology patents. Judge Dyk dissented from the majority.  

It was a slow week at the Patent Trial and Appeal Board (PTAB) with just 18 new petitions—all inter partes reviews (IPRs); in district court, a slightly below average 54 new patent filings and 48 terminations rounded out the count. District courts saw continued filings in several large campaigns. Unwired Global Systems LLC (associated with high volume plaintiff, Jeffrey Gross) adds another seven defendants to its campaign, asserting a single patent related to home area network middleware interfaces and inventor-controlled Optimum Imaging Technologies LLC filed suit against six defendants asserting patents related to, not surprisingly, digital imaging, bringing the total number of defendants to seven.

Inter partes review (IPR) is a legal process conducted before the Patent Trial and Appeal Board (PTAB) to assess patentability based on anticipation or obviousness using prior art publications and patents. Congress established IPR to offer an efficient alternative to litigating patent disputes before the district courts. This article discusses some practice tips for both challenging and defending patents in IPRs before the PTAB.

Yesterday, Google waived its right to respond to a petition for writ of certiorari to the U.S. Supreme Court filed by the inventors of a method for protecting computers from malware. The inventors, Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman), are appealing a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that reversed a district court ruling and $20 million verdict for the inventors. The CAFC held that the Texas district court erred in ruling that four claims across the three patents were not invalid and agreed with Google’s argument that the claims were invalid under the “original patent requirement” because they contained reissue claims not disclosed in the original patent.

On October 23, the U.S. Patent and Trademark Office’s (USPTO) Office of the Chief Economist (OCE) published a report detailing patent application filing trends at the USPTO related to COVID-19 diagnostics technologies. The OCE found that filing activity surged following the arrival of the novel coronavirus in early 2020, with much of that increase driven by small companies and research institutions. The report found further evidence suggesting that federal funding had a significant impact on driving innovation into COVID-19 diagnostics at small R&D entities.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued two opinions today on appeals from a total of six inter partes review (IPR) decisions, affirming two of the decisions and dismissing the remaining four as moot. In the first decision, the CAFC affirmed the Patent Trial and Appeal Board’s (PTAB’s) finding in IPR2018-00874 that certain claims of Team Worldwide Corporation’s U.S. Patent 7,246,394, which is directed to an inflatable product, like an air mattress, with a built-in pump, were shown to be unpatentable as obvious. Because of that affirmance, the holdings in IPR2018-00872 and IPR2018-00873, from which Intex appealed, and the holdings in IPR2018-00870 and IPR2018-00871, from which Team Worldwide also cross-appealed along with its cross-appeal of the ‘874 decision, were rendered moot.

This week in Washington IP news, a House subcommittee holds a hearing on advances in deepfake technology. Elsewhere, the Peterson Institute hosts the launch of an OECD report that looks at how governments can spur growth in the green economy, and the USPTO holds a three-day event for newcomers to the patent application process.

Innovation has been the driving force behind our country since its inception. So much of our nation’s success has flowed from U.S. ingenuity and innovation. Yet much remains to be done on this front. Indeed, in a few short years, we will be celebrating the Semiquincentennial (also called the Sestercentennial)—250 years since the signing of the Declaration of Independence. We need the same approach moving forward, and we have the opportunity to do so with pending legislation, which brings me to a chance to reflect on some important questions of intellectual property and innovation policy.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday ruled in a precedential decision  that the U.S. Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) cannot cancel a trademark based on the filing of a fraudulent declaration under Section 15 of the Lanham Act. Section 15 of the Lanham Act deals with acquiring incontestability status for an already-registered trademark. In the present case, the attorney for Great Concepts, LLC submitted a false declaration to the USPTO in an attempt to obtain incontestable status for the mark DANTANNA’S for a steak and seafood restaurant.

On October 16, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Corephotonics, Ltd. v. Apple Inc. affirming most of a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated dual-aperture camera system patents owned by Corephotonics. The Federal Circuit nixed the patent owner’s arguments that asserted prior art references were not analogous art but remanded to the PTAB for further explanation of its ruling, as the Board may have misconstrued the pertinent problem addressed by one reference.