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Posts in USPTO

USPTO Imposes Sanctions on Flagrant Fraudulent Filer

On Friday, December 10, the United States Patent and Trademark Office (USPTO) issued a “Show Cause Order” imposing sanctions against Huanyee Intellectual Property Co., Ltd. and its Executive Director, Yusha Zhang, for violations of the USPTO’s trademark rules of practice relating to improper trademark submissions. The 198-page Order, comprised mostly of an exhibit listing all of the company’s trademark filings, indicates that the Respondents named in the Order “have filed more than 15,000 trademark matters before the USPTO” and “engaged in the unauthorized practice of law, provided false domicile information for applicants, impermissibly entered the signature of the named signatory on declarations and verifications, and violated other USPTO Rules and the USPTO’s website terms of use.”

The USPTO Must Allow Director’s Review of PTAB Decisions on Institution of AIA Trials

Since the Supreme Court decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), there has been much discussion about the Court’s ruling mandating an option for users to request that the Director of the U.S. Patent and Trademark Office (USPTO) review Final Written Decisions of the Patent Trial and Appeal Board (PTAB) rendered in trials under the America Invents Act (AIA) on the validity of issued patents. But there has been little or no discussion on such Director’s review of PTAB decisions on institution of AIA trials.

This Week in Washington IP: Accelerating COVID-19 Vaccinations Globally, The Impact of Monopolies on American Innovation, and Compensating Creators in Today’s Content Ecosystem

This week in Washington IP news, both houses of Congress are slowing down prior to the Christmas holiday, but Senate committees will hold hearings on the potential adoption of stablecoins into the U.S. financial system, as well as the impact of consolidation and monopolies on American innovation. In the House, the House Select Subcommittee on the Coronavirus Crisis will debate ways to accelerate global vaccination rates. Elsewhere, the Hudson Institute hosts an event exploring new avenues for compensating copyright owners in the new content ecosystem, while the Information Technology & Innovation Foundation will explore evidence of China’s broken promises on economic policy during its two decades as a member of the World Trade Organization.

Patent Trends in Stem Cell, Robot and Edge Computing Technologies

Previously, I’ve written about patent trends for the emerging technologies of deep learning, blockchain, and quantum computing. This article shifts the focus to the realms of biology (“stem cells”), machinery (“robot”), and then back to computing, and specifically to a topic suggested by a reader (with the handle “Primary Examiner”), “edge computing.” In each instance, the bar chart tells the same story.

Patent Filings Roundup: Cal Tech Sues Samsung After $1 Billion Apple Verdict; Joao Entity Sues UT’s Health System; Intel Loses Six Against Bill Chu’s Acqis LLC

Another 82 district court terminations this week was again high, though careful analysis has revealed that many of those cases were terminated voluntarily and refiled elsewhere. The Patent Trial and Appeal Board (PTAB) saw just 22 inter partes reviews (IPRs) this week; a few parties walked away from their patents, including Litl LLC [TRI Ventures, Inc.], after a challenge by Microsoft. District court was up this week to 94 patent filings, and the year looks poised to end with filings up substantially over years past. The Board again exercised its Fintiv muscles in an IPR with a case pending in the International Trade Commission (ITC), this one an entity funded by Techquity Captial Management. Other semiconductor patents asserted by NPEs went down on Final Written Decision in IPR, including one of the patents asserted by Vector Capital’s Monterey Research; it’s worth noting that the semiconductor companies have collectively spent a lot of time before the Board this year after the increase in NPE suits there this year.

One Thumb Up for the New Draft Administration Statement on FRAND Licensing

On December 6, the Department of Justice – Antitrust Division (DOJ), U.S. Patent and Trademark Office (USPTO), and National Institutes of Standards and Technology (NIST) issued for public comment a “draft revised statement on remedies for the infringement of standards-essential patents (or SEPs) that are subject to a RAND or F/RAND licensing commitment, which also provides guidance on what demonstrates good-faith negotiation in this context.” The 2021 SEP Licensing Draft Statement responds to President Biden’s Executive Order on Competition, which called on the agencies to review the 2019 Trump Administration Statement dealing with SEP infringement remedies. The 2019 Statement in turn excised the anti-IP language from a 2013 Obama Administration Statement on this topic.

Cellspin Soft Challenges Denials of USPTO Director Review Under Arthrex and APA

Last week, patent owner Cellspin Soft filed a citation of supplemental authorities  with the U.S. Court of Appeals for the Federal Circuit (CAFC) asking the appellate court to either vacate or reverse an order from the U.S. Patent and Trademark Office (USPTO) denying Director review following a pair of inter partes review (IPR) proceedings conducted at the Patent Trial and Appeal Board (PTAB). Cellspin Soft is challenging the USPTO’s denial as invalid both under the Administrative Procedures Act (APA), as well as under the U.S. Supreme Court’s precedent in United States v. Arthrex (2021). Cellspin had filed requests seeking Director review of a pair of final written decisions invalidating all challenged claims of U.S. Patent No. 9258698, Automatic Media Upload for Publishing Data and Multimedia Content. It claims a machine-implemented method of media transfer utilizing a digital data capture device and a Bluetooth-enabled mobile device for publishing multimedia content automatically onto a website with minimal user intervention. Issued to Cellspin Soft in February 2016, the ‘698 patent has been asserted in infringement suits filed in U.S. district courts against several defendants including Panasonic, GoPro, Garmin, Nikon, Canon and Eastman Kodak.

DOJ Issues Revised Draft Joint Policy Statement on Remedies for SEPs Subject to FRAND

The U.S. Department of Justice – Antitrust Division (DOJ) is requesting public comment on a new iteration of the Joint DOJ-USPTO-NIST Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary FRAND Commitments. The announcement comes in response to President Joe Biden’s July 2021 Executive Order on Promoting Competition in the American Economy, which asked the three agencies to review the 2019 statement.

Good Sports: Cleveland MLB and Roller Derby Teams Share GUARDIANS Name

The MLB baseball team formerly known as the Cleveland Indians has a new name that pays homage to the history of Cleveland. The team last rebranded in 1915, when it left behind its former name, the “Naps” (short for “Napoleons”) in favor of the “Indians.” Now, over a century later, the team has joined other sports franchises in retiring Native American names, mascots, and imagery imbued with negative and racist connotations. With the help of actor and Cleveland Indians fan Tom Hanks, the baseball team announced on July 23, 2021 that it would adopt a new name: the Cleveland Guardians.

This Week in Washington IP: Improving Biomedical Research, Amending Section 230 to Hold Big Tech Accountable, and Promoting Privacy in the Tech Sector

This week in Washington IP news, the House of Representatives will host committee hearings discussing several draft pieces of legislation that would update the 21st Century Cures Act as well as reduce immunity to liability for major tech firms currently enjoyed under Section 230 of the Communications Decency Act. Over in the Senate, the Fiscal Responsibility Subcommittee will discuss how changes to privacy policies in Big Tech firms have impacted targeted advertising activities for a wide swath of the economy. Elsewhere, the Center for Strategic & International Studies hosts a debate on the topic of China’s tech crackdown and its potential impacts on innovation, and the Information Technology & Innovation Foundation will explore whether increased support for advanced renewables research can help the global community meet certain clean energy goals by the middle of this century.

The PTAB Desperately Needs Reform, Not Preservation

The Patent Trial and Appeal Board (PTAB), created by the America Invents Act (AIA) just over 10 years ago, is the most electrifying lightning rod in the industry. As explained repeatedly by Members of Congress at the time the AIA was enacted, the purpose was to create a streamlined, less expensive, alternative administrative means to challenge the invalidity of issued patents. Sadly, with that being the stated purpose, the creation of the PTAB can be objectively characterized as nothing other than an abysmal failure. What has evolved is anything but streamlined, and certainly not inexpensive, even compared with district court litigation.

Moderna Strikes Out at CAFC on Challenges to Arbutus Patents that May Pose a Risk to COVID Vaccines

The U.S. Court of Appeals for the Federal Circuit ruled yesterday in two precedential decisions that Moderna’s challenges to decisions of the Patent Trial and Appeal Board (PTAB) in favor of Arbutus both failed. The CAFC dismissed one ruling for lack of standing and in the other said Moderna’s arguments that the PTAB erred in its finding that Arbutus’ patent was not unpatentable as obvious were unpersuasive.

Vidal Agrees Eligibility Needs More Clarity in Senate Judiciary Committee Questioning of Two IP Nominees

Today, the full Senate Judiciary Committee held a hearing to question two key IP nominees: Judge Leonard Stark of the of the United States District Court for the District of Delaware, who was nominated to replace Judge Kathleen O’Malley on the U.S. Court of Appeals for the Federal Circuit (CAFC); and Katherine Vidal, the nominee for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). IPWatchdog has previously reported on the qualifications of both candidates and what their appointments might mean for IP law and practice going forward. While neither nominee made any particularly earth shattering statements, as is often the case in such hearings, Senator Thom Tillis (R-NC), a vocal IP advocate, said he was heartened by Vidal’s acknowledgement that it has become “very difficult to understand the contours of [patent eligibility] law.” Vidal also stated that the current USPTO guidelines on eligibility, which were revised by former USPTO Director Andrei Iancu to provide more clarity, are consistent with the law right now.

Patent Filings Roundup: Board Reverses Own Fintiv Denial; Joao Entity’s Bad Bet; NPE Adopts Anticounterfeiting Tactics

With the Thanksgiving holiday, Patent Trial and Appeal Board (PTAB) (18) filings were down, but district court patent filings held steady at 62, with (again) an astounding number of closed or terminated cases (almost 100), many voluntarily dismissed without prejudice. As reported last week, in Google LLC v. EcoFactor, Inc. IPR, IPR2021-00982, the Board originally denied the petition, citing Fintiv and the statutory timing of International Trade Commission (ITC) investigations. Subsequently, though, the Board was made aware that the patent had been dropped from the ITC case, and reversed its earlier discretionary denial, thus instituting the case. It’s the first time I’m aware of that the Board has reversed a denial of institution, not on request for rehearing, but sua sponte after the discretionary reasons for denial evaporated (as they often do).

Could Description Amendments Made During Prosecution at the European Patent Office Affect U.S. Litigation?

Earlier this year, the European Patent Office (EPO) updated some of its Guidelines for Examination in a way that potentially could affect U.S. patent litigation. These Guidelines instruct European patent examiners (and the public) on how the patent prosecution process works—much like the United States Patent and Trademark Office’s (USPTO’s) Manual of Patent Examining Procedure. For example, the Guidelines detail what form a patent application must be in, what happens during a prior art search, and perhaps most importantly, what should be included in an application. Guideline F-IV 4.3 particularly focuses on the form, contents, and clarity of the claims.