Squires and Stewart Hear Panelist Views on Desired PTAB Changes

The U.S. Patent and Trademark Office (USPTO) today held its third PTAB Listening Session, this one focused on Patent Trial and Appeal Board (PTAB) Administration and Reform. Panelists on both the petitioner and patent owner sides, as well as academics, IP policy experts and judges, weighed in on what changes need to be made to the PTAB to strike the balance that will most benefit the U.S. IP system. While the suggestions varied, most of the panelists agreed that greater clarity and consistency is what’s urgently needed at the moment.

SCOTUS Denies Cert to Pharma Industry Challenges to IRA’s Negotiation Program, USAA’s Section 101 Patent Appeal

Today, the U.S. Supreme Court issued an order list showing that the nation’s highest court had denied a series of petitions for writ of certiorari filed by major pharmaceutical developers to challenge the Medicare negotiation program established by the Inflation Reduction Act (IRA). The Supreme Court also denied cert to an appeal of Section 101 patent-eligibility issues from a Federal Circuit ruling involving mobile banking technology, as well as a pro se cert appealing copyright and intentional infliction of emotional distress (IIED) against Disney.

Squires’ Latest Precedential Decision Slams Use of IPR for ‘Litigation Leverage’

On Thursday, May 14, U.S. Patent and Trademark Office (USPTO) Director John Squires issued a Director Discretionary Decision in which he denied institution of an inter partes review (IPR) petition and marked the opinion precedential, underscoring six key principles that should guide whether the Office institutes America invents Act (AIA) proceedings.

CAFC Reverses Attorney’s Fees, Sanctions, While Affirming Obviousness in E-Banking Patent Case

On May 15, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in mCom IP, LLC v. City National Bank of Florida affirming the Southern District of Florida’s dismissal of patent owner mCom IP’s complaint after finding the asserted patent claims obvious on the same grounds as related patent claims invalidated at the Patent Trial and Appeal Board (PTAB). However, the Federal Circuit found that the district court improperly concluded that the case was exceptional, leading the appellate court to reverse the attorney’s fee award and attorney sanctions after finding the plaintiff did not develop evidence of frivolous litigation conduct.

Patent Law Firms Face the AI Squeeze as Clients Internalize More Work

As in-house patent teams rethink how work is allocated, the implications for outside counsel are unavoidable. Corporate clients are asking whether work being done by outside counsel is being performed as efficiently as possible and even starting to ask whether it needs to be performed by outside counsel at all. At least some in-house teams are wondering whether the same or better result can be achieved internally using AI-enabled tools. If the answer is yes, then clients can be expected to decrease reliance on outside counsel, looking to law firm attorneys for targeted support, not end-to-end project management.

Other Barks & Bites for Friday, May 15: PTAB Decisions on Inconsistent Claim Arguments Marked Informative; Bill Moving Copyright Office to Executive Branch Moves to House Floor; CJEU Upholds Right of Fair Compensation for Publishers

This week in Other Barks & Bites: the Legislative Branch Agencies Clarification Act moves one step closer toward enactment; the Federal Circuit reverses attorney’s fees award and attorney sanctions in a patent case over e-banking technology; the Court of Justice for the European Union finds that a publisher’s right to fair compensation established by EU member states is permissible if qualifying as consideration for the right to republish; Nokia earns a stay of UK court rulings in its RAND licensing battle over video codec patents with Acer and Asus; the U.S. Patent and Trademark Office places informative designations on a trio of Patent Trial and Appeal Board decisions applying agency precedent on inconsistent claim construction positions; Cisco announces 4,000 layoffs on the same day that it reported a 12% year-over-year jump in quarterly revenues; top Congressional Democrats publicly opposed President Trump’s ouster of the National Science Board membership; and the European General Court tells the European Union Intellectual Property Office that it did not sufficiently analyze links between an ammunition trademark and a famous French comic serial.

Beware the Siren’s Call of Industrial Policy

To say we live in perplexing times is an understatement. Everything seems to be shifting beneath our feet, often with seemingly little thought. One example is the move to change how the federal government supports research. It wasn’t until the passage of the Bayh-Dole Act in 1980, which injected the incentives of patent ownership into the system, that the situation changed. And the result was dramatic.

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