Posts in Guest Contributors

Tips From a Former Examiner: Pre-Appeal Brief Review

After two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.

Catapulting BlackBerry: A Data-Intensive Look, Part II

Measuring the quality of a patent portfolio doesn’t have to be subjective. There are a number of objective indices that measure patent families’ potential economic and reputational value, the breadth of patent claims and the statistical validity strength of a patent. The Patent Value Index, or PVIX, measures the potential economic and reputational value of a patent. PVIX scores each patent family on a curve from 0-100 using a weighted average of the GDP of the countries in which the family has granted members and the number of forward citations garnered by the family members compared to peer patent families in the same technology classes.

USTR Needs to Step Up Trade Enforcement

As a former Chairman of the House Judiciary Committee and co-author of major patent legislation, I have a special interest in supporting and protecting U.S. intellectual property rights. So, I took note last month when the Office of the U.S. Trade Representative (USTR) released its latest Special 301 Report on Intellectual Property Protection and Enforcement.

IP Practice Vlogs: Claiming Foreign Priority – An Overview of Patent Cooperation Treaty, Paris Convention and Patent Prosecution Highway Practice

There are several ways to claim foreign priority for a patent application. The first option is filing an international application under the Patent Cooperation Treaty (PCT). In order to utilize this option, at least one of the applicants has to be a national or a resident of a country that is a PCT Contracting State. Upon filing, the applicant picks a receiving office, which is a national patent office designated for receiving the PCT application. A competent receiving office belongs to a location in which one of the PCT applicants is entitled to file a PCT application. Each PCT member state has a competent receiving office for its residents and nationals. The International Bureau of the World Intellectual Property Organization (WIPO) also acts as a receiving office in which all applicants are entitled to file PCT applications. In that case, the applicant can file directly with WIPO. Thirty to 31 months after initial filing, the application then enters the national stage and the applicant can select the countries in which it would like to file.

What the PTAB’s CRISPR-Cas9 Decision for Broad Institute Means for Gene Editing Patent Landscape

As previously reported here, on February 28, 2022, in Interference 106,115, the Patent Trial and Appeal Board (PTAB) issued a decision in which it awarded inventive priority to the Broad Institute (Broad) over the University of California (U.C.) on an invention covering applications of the CRISPR-Cas9 gene editing system in eukaryotic cells. This decision purports to award substantial control of the CRISPR-Cas9 patent landscape to Broad. This article provides additional background on CRISPR-Cas9 technology, outlines the critical findings in Interference 106,115 that resulted in the PTAB awarding priority to Broad, and describes the impact of the PTAB’s decision for Broad, U.C., and other companies involved in the development of CRISPR-Cas9 technology.

Patent Filings Roundup: Petitions on Key Dupe Patents Denied Under Fintiv; Taxidermy Patent Filings Stuffed

It was a slow week at the Patent Trial and Appeal Board (PTAB) and a fast one in the district court, with 82 new patent complaints and 85 terminations, but just 18 patent filings at the PTAB. Those few filings were mostly a battery company challenging Maxell patents, a few bigger NPE cases, and Apple and Samsung filing against assertor Smart Mobile Technologies from the middle of last year. Askeladden had a petition denied on the merits, Microchip Technology had a petition denied on General Plastics, and The Hillman Group got four inter partes reviews (IPRs) denied under Fintiv, guaranteeing they will head to trial in the Eastern District of Texas; more below.

Tips from a Former Examiner on How to Conduct Interviews at the USPTO

The “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner. Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?

Policy Shift Against SEP Rights Poses Risks for U.S. Innovation and Undermines Mandate of the ITC

resident Biden took an important step toward safeguarding the U.S. economy with last year’s Executive Order No. 14,036, “Promoting Competition in the American Economy,” aimed at promoting competition at home in the face of unfair competitive pressure from state-owned or sponsored firms overseas, particularly in China. That Executive Order includes regulatory and policy reviews across the spectrum of American commerce, noting “a fair, open, and competitive marketplace has long been a cornerstone of the American economy. It also emphasized the importance of achieving this goal through promoting competition and innovation by firms small and large at home and worldwide.” Yet, the proposal directed to one facet of the order — for patents covering inventions that are essential to a technology standard such as Wi-Fi or 5G wireless communication — risks not only undermining American innovation and competitiveness but also upending the notion of fairness and the very policy the Executive Order seeks to advance.

Nike’s Trademark Fight Against StockX Moves Offline

StockX, which describes its e-commerce resale platform as “[t]he current culture marketplace,” is primarily used by consumers to resell and buy sneakers, among other items. In January 2022, StockX announced its plans to launch The Vault, which uses non-fungible tokens (NFTs) to allow buyers to track ownership of physical products resold on its e-market and warrant their authenticity, including Nike shoes. Swiftly thereafter, Nike sued StockX in the United States District Court for the Southern District of New York (SDNY), alleging that StockX’s use of Nike’s famous marks in connection with its NFTs constitutes trademark infringement. Nike, Inc. v. StockX LLC, 1:22-cv-00983-VEC. In its original February 3, 2022, complaint, Nike alleged that StockX mints NFTs using Nike’s trademarks without authorization and sells them to consumers, who either believe or are likely to believe that StockX’s NFTs are connected with Nike when they are not.

Catapulting BlackBerry: A Data-Intensive Look – Part I, Quantity

At the end of January, BlackBerry announced it had completed the sale of the majority of its patents to Catapult IP Innovations, a special purpose vehicle specifically formed for the acquisition. Approvals for the transaction were granted under the 1985 Investment Canada Act and the 1976 Hart-Scott-Rodino Antitrust Improvements Act. More information on the transaction can be found here on the SEC website. The value of the deal was reported to be $600 million, a figure that makes it one of the largest patent acquisitions in the last ten years and spurs a great deal of speculation about whether it is worth it. This article explores Blackberry’s divested portfolio and disassembles some of the assumptions surrounding the portfolio and the deal’s value.

Opinion: Growing Misuse of Patent Protections Threatens U.S. Competitiveness and Security

The chaotic state of the world today makes it increasingly difficult for American companies to compete. Russian hostility has the democratic world on edge, U.S. inflation is at a 40-year high and hitting consumers hard, and China continues its aggressive push for economic and technological dominance.  To stay on top, the United States must out-innovate our competitors. America needs to lead the world in cutting-edge products and new technologies, and those are made possible by policies that support the innovation economy. The Ukraine crisis makes it clear that energy and cyber policy is crucial. Recently, the U.S. Trade Representative told Congress that supporting and protecting the full range of our innovators from China’s distortive practices is critical to our nation’s future.

A Tale of Two Googles: Patent System Champion or Crux of the Problem?

On April 28, Google published a blog by their general counsel, Halimah DeLaine Prado, about the crisis condition of the U.S. patent system. Prado portrays Google as a strong supporter of the patent system, citing their history in initiatives to spur new inventions and technologies. For example, Google was a key player in 2013 in starting the Open Patent Non-Assertion Pledge (to not sue on open-source software). Google was also instrumental in the beginnings of the License On Transfer network (which helps members who have been sued by “patent trolls”). Google has provided technical support for the Prior Art Archive. Prado notes that Google has 42,000 patents, which she says they license at “fair value,” and sell to grow the portfolios of other companies, all in the interest of small businesses.

What is AI and How is it Treated by the USPTO, EPO and CNIPA?

Generally, artificial intelligence (AI) is an automation of a thing that a human being can do, or the simulation of intelligent human behavior by a machine. In other words, AI performs what a human can but with vastly more data and processing of incoming information. Unfortunately, claiming AI in adherence to its typical definition is akin to asking for a Section 101 subject matter eligibility rejection in the United States. Europe and China have already updated their patent examination procedures for AI. If the United States sustains its current examination procedure of machine intelligence in accordance with the abstract idea doctrine under the Alice and Mayo framework established by the Supreme Court, will we be leaving this industry behind?

Patent Filings Roundup: FintivDenials Over WD of TX, ITC Schedules; Vector Capital-Funded Semi Campaign Hits an IPR Wall

This week saw 60 district court patent complaints, 76 terminations, 26 Patent Trial and Appeal Board (PTAB) petitions (some post grant reviews [PGRs] in there), and two new Fintiv denials—one PGR and one inter partes review (IPR). Gesture Technology had a handful of IPRs instituted against its asserted portfolio; lots of dismissals from relatively high-profile semiconductor cases suggest either a group or cheap RPX settlement; and a number of older assertion campaigns seemed to wrap up with terminations.

Mailer’s Remorse: Notice Letters and Personal Jurisdiction for Declaratory Judgment Lawsuits

There are many reasons why patent holders might want to put potential infringers on notice of their rights. Such communications can serve the salutary goal of encouraging settlement of disputes without resort to lawsuits. And under some circumstances, notice may be legally necessary under 35 U.S.C. § 287 to enable a patent holder to recover damages for infringement. But a patent holder might be reluctant to do this if providing such notice can subject it to personal jurisdiction for a declaratory judgment suit in a remote and inconvenient forum.