Posts Tagged: "Guest Contributor"

Another light summer week in the patent world saw just 19 new petitions (all inter partes reviews [IPRs]), with 65 new district court cases (roughly average), including 75 newly terminated cases.  Five petitions were denied, with six granted; Peloton appears to have settled their dispute with Ifit (and dismissed the five related IPRs and district court suit); Peloton has been targeted by a few others. Flexiworld expanded its campaign against a number of Chinese and other foreign entities; Zoom was sued again by yet another York Eggleston subsidiary; and, after years of dormancy, more new Empire IP campaigns (AR Designs and Nearby Systems] signal the return of a once-frequent repeat player on the monetization scene.

There are not many trademark cases that are of equal interest to high fashion, the art world and cutting-edge tech. The ongoing “MetaBirkin” lawsuit is unusual, however, in that it involves a designer brand and two of the latest, trending topics – non-fungible tokens (NFTs) and the metaverse. In a case that has bagged global attention, luxury design house Hermès is suing artist Mason Rothschild in New York for trademark infringement and dilution, misappropriation of its BIRKIN trademark, cybersquatting, false designation of origin and description, and injury to business reputation.

The United States Patent and Trademark Office (USPTO) has a massive backlog of patent applications (typically in the hundreds of thousands). Indeed, the average wait for patent applicants to receive any substantive response from the USPTO is 19.4 months, and the wait is growing. (See chart below). Because of this situation, there has been a need for patent applicants to accelerate the process. The USPTO has obliged and provides several options discussed here for patent applicants to consider.

A terrible idea – wayward and ill-conceived, criticized by all economic, political and geopolitical fronts – has come to fruition. The World Trade Organization’s (WTO) TRIPs waiver on patents related to COVID-19 vaccines will disincentivize the entire industry from investing in vaccine production. To understand what happens next, let’s understand history first.

On June 8, 2022, Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun sent a letter to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal expressing concern about so-called “patent thickets” and requesting that she consider changes to the USPTO regulations and practices to address perceived problems with patent examination. The senators asked the USPTO to issue a notice of proposed rulemaking (which presumably must include new draft regulations) or at a minimum, a public request for comments followed by regulatory action, to address their concern about “the prevalence of continuation and other highly similar patents”.

In a recent surprise decision, the U.S. Department of Justice (DOJ), U.S. Patent and Trademark Office, and the National Institute of Standards and Technology officially withdrew their 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments and declined to advance an alternative policy statement as a replacement. While the withdrawal of the 2019 policy statement was seen as a foregone conclusion (given the far more SEP-restrictive nature of a December 2021 draft policy statement (DPS) circulated by the agencies), moving forward without any guidance was not on anyone’s DOJ policy bingo card for 2022. The slim guidance that this withdrawal announcement does provide, however, paints a murky picture for the ability of SEP holders to obtain injunctive relief.

A normal (statistically) patent filings week saw 29 new Patent Trial and Appeal Board (PTAB) proceedings (including a pair of post grant reviews) and 67 district court patent complaints, with another 76 terminations. Among those cases, note: Peter Pedersen has continued to add defendants to what promises to be a wide-ranging assertion campaign based on a single patent covering organizing email lists; Samsung has settled a tranche of IPRs against Trenchant Blade Technologies (associated with Tanit Ventures, Inc., with old patents, presumably with a backend, from Taiwan Semiconductor Manufacturing Corporation TSMC); Google filed more inter partes reviews (IPRs) against Jawbone (the failed company “zombie” NPE now controlled by Fortress); Samsung filed a PGR on the single design patent that has been asserted repeatedly by WePay Global Payments against generic graphical user interfaces (D930702); and various highlights, below.

How about some good economic news? That’s in short supply these days as the nation teeters on the brink of recession, driven by raging inflation and skyrocketing gas prices. But in good times and bad, our technology transfer system created by the Bayh-Dole Act just keeps chugging along. A just released study by the Biotechnology Innovation Organization (BIO) and AUTM, which represents the academic technology management profession, shows that academic patent licensing contributed up to $1.9 trillion to the U.S. economy while supporting 6.5 million jobs between 1996 – 2020. Even more impressively, this impact increased substantially since the last survey was released three years ago. That showed an economic impact of $1.7 trillion with 5.9 million jobs supported.

Your company (or your client) creates an innovative idea that is going to blow the market away. While still safeguarding your invention as a trade secret, you file a patent application with the United States Patent and Trademark Office (USPTO) and get the product ready for launch. After product development, a key designer leaves the company for a competitor. Not long after you issue a press release on your innovative product, that competitor launches a copycat product. Do you have to wait for the patent to (hopefully) issue prior to filing suit against the competitor? Or can you take immediate action on trade secret misappropriation grounds? Ultimately, it depends on where you file suit.

As was recently reported by IPWatchdog (here and here), the U.S. Patent and Trademark Office (USPTO), the National Institute of Standard and Technology (NIST), and the U.S. Department of Justice, Antitrust Division (DOJ) issued a statement on June 8 withdrawing the December 19, 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (2019 Policy Statement). A footnote to the statement further provides that “the agencies do not reinstate the January 8, 2013, Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments issued by the DOJ and the USPTO.” Curiously, this statement makes no mention of the 2021 Draft Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments (2021 Draft Policy Statement), which draft statement was criticized by a broad cross-section of industry participants for a variety of different reasons. Regardless, our question is simply this: why did the 2019 Policy Statement need to be withdrawn instead of simply not proceeding with the 2021 Draft Policy Statement or, alternatively, modifying those portions of the 2019 Policy Statement that the agencies did not agree with? By throwing the baby out with the bath water, patent owners are now left to guess where the agencies stand on such issues.

On June 6, Paramount Pictures got its tower buzzed for copyright infringement in the U.S. District Court for the Central District of California over the blockbuster film of the summer, Top Gun Maverick. According to the allegations in the complaint, in 1983, author Ahud Yonay wrote a magazine story about the real-life exploits of two naval fighter pilots entitled, “Top Guns.” Paramount allegedly secured the “exclusive motion picture rights to Ehud Yonay’s copyrighted story” and in 1986 released the motion picture Top Gun. Fast forward a few decades. In 2018, Yonay’s heirs (Plaintiffs in this action who are both Israeli citizens) allegedly served Paramount with a notice “terminating” the original assignment of the motion picture rights to Paramount. Paramount apparently took the position that the purported termination was ineffective and, over the Memorial Day weekend, launched Top Gun Maverick to critical acclaim at the box office (and to the delight of millions of fans of the original 1980s classic).

The U.S. Department of Justice (DOJ), the U.S. Patent and Trademark Office (USPTO) and the National Institute of Standards and Technology (NIST) have announced that they are officially withdrawing the 2019 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments. However, the withdrawal does not reinstate the 2013 Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments, which had been harshly criticized by many in the IP community. It also seems to scrap the Draft 2021 Statement, which also drew the ire of the IP world. The DOJ – Antitrust Division issued a request for public comment on a new iteration of the Policy Statement in December 2021. The announcement came 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.

On May 17, 2022, the Federal Trade Commission (FTC) submitted to Lisa Barton, Secretary of the International Trade Commission (ITC), a statement they believed was relevant to the public interest considerations before the Commission in a matter involving certain UMTS and LTE cellular communication modules (337-TA-1240). The ITC in many cases will invite statements on the Public Interest, and the FTC is often invited to make a submission. It should be noted, however,  “Public Interest” in the ITC is a matter of statute, and there are four public interest factors which are statutory. Any statement in the Public Interest must address one or more of those factors. Other matters not within the statute are not public interest factors.

When the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”) first launched in May of 2013, the program was lauded by both patent practitioners and USPTO officials as an effective tool to reduce pendency by advancing prosecution while reducing the number of Requests for Continued Examination (RCE’s). Since then, the USPTO has renewed the program multiple times and is still active. Essentially, the program provides another bite of the apple for the applicant by giving some time for the patent examiner to consider additional claim amendments after prosecution has closed without charging the applicant any additional fees. However, many patent practitioners today are finding little value in the program. Is AFCP 2.0 beneficial for advancing prosecution without filing an RCE? As a former primary examiner with ten years at the USPTO, I have a unique insight into the program and how it should be properly utilized.