Posts in IP News

Service Starts § 315(b) Time-Bar Even If Complaint Involuntarily Dismissed Without Prejudice

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co. the Federal Circuit ruled the time-bar for filing a petition for inter partes review in Section 315(b) begins to run as soon as a complaint for infringement is served in district court, regardless of whether the complaint is involuntarily or voluntarily dismissed or is ultimately successful on the merits. There are no exceptions to the statutory time limit for filing a petition for inter partes review in 35 U.S.C. § 315(b).

Federal Circuit: Attorneys Not Liable for Attorney’s Fees Where Law is Unsettled

A claim is entirely without color when it lacks any legal or factual basis.  Because of the relative paucity of § 101 cases between Alice and AlphaCap’s complaint, the law was unsettled.  The Federal Circuit noted that when the applicable law is unsettled, attorneys may not be sanctioned merely for making reasonable arguments for interpreting the law.  Further, the court found that Gutride presented a colorable argument that the claims were analogous to those in DDR Holdings, LLC v. Hotels.com L.P., and therefore patent eligible under § 101.

CAFC: Hyatt APA Challenges Time-Barred and Based on Incorrect Statutory Interpretation

The Federal Circuit recently issued an opinion in a decades-longbattle over the microcomputer patent applications of Mr. Hyatt, the named inventor on more than 70 issued patents and approximately 400 pending patent applications. The Court ultimately rejected Mr. Hyatt’s challenges to Manual Patent Examining Procedure (“MPEP”) § 1207.04, allowing an examiner to reopen prosecution with a new ground of rejection instead of continuing an already filed appeal.

Weak Chinese Patent Applications and China’s Burgeoning Patent System

Bloomberg recently published an article providing data analysis on Chinese patent applications to claim that, while China receives more patent applications than any country, “most are worthless.” If you were trying to usher in a culture change, moving from no patent system just a few decades ago to a thriving and high functioning patent system, you would look to incentivize your own citizens and corporations to file patent applications. That is precisely what China has done and is continuing to do. Thus, the mantra about Chinese patent applications being worthless, or nothing of a concern because they are overwhelmingly only filed in China, completely misses the enormity of the change taking place in China, and why it bodes well for the Chinese moving forward.

Denying Patents on Applications of Discoveries Puts Public Health at Risk

After nine years of costly legal proceedings the United States Patent Office denied the patent by misapplying the law.  The Court of Appeals for the Federal Circuit rubberstamped the Patent Office and issued an evasive non-precedential opinion—meaning this ruling does not apply to other cases.  The case is now appealed to the Supreme Court of the United States. While I am frustrated with the Patent Office, and the Federal Circuit, the real problem is that the U.S. Supreme Court has given conflicting guidance on patent eligibility despite the clear and unambiguous terms of § 101.

Is the Presumption of Validity Dead in Substitute Claims Issued as a Result of Motions to Amend After PTAB Proceedings?

Since the Federal Circuit’s decision in Aqua Products, Inc. v. Matal confirmed that the burden of persuasion on a the patentability of amended claims in a motion to amend in an inter partes review proceeding (and presumably other post issuance PTAB proceedings) is placed on the petitioner, the theoretical rationale for Section 282(a)’s presumption of validity is no longer present for such amended claims.  872 F.3d 1290 (Fed. Cir. 2017) (en banc).  In particular, there is no government agency that is tasked with performing the inquisitorial examination that gave rise to the original presumption.  How can there be a presumption that the government agent charged with examining the patent claims did his or her job, when there is no such person assigned to perform that job?