Posts Tagged: "inventor"

This week in Other Barks & Bites: the Federal Circuit issues precedential decisions regarding its authority to remand to the PTAB, patent prosecution history estoppel and expert testimony on motivation to combine for obviousness findings; China nominates its choice for WIPO Director while pledging to reach “social satisfaction” on IP protections by 2025; INTA announces Ayala Deutsch as the organization’s new president; the USPTO seeks public comments on information collection related to national security concerns; the TTAB applies Federal Rules of Civil Procedure to discovery requests; Hewlett Packard shares drop after quarterly revenues fall short of analyst expectations; and the PTAB allows additional briefing in a case after the possibility of Administrative Procedure Act violations were raised by a patent owner.

This year has included many twists and turns for IP stakeholders, particularly on the patent side. Most recently, the Federal Circuit’s decision in Arthrex has called into question the constitutionality of Patent Trial and Appeal Board decisions, and perhaps the Board itself. Elsewhere, Congress has been—unsuccessfully—attempting to step in and clarify U.S. patent law since early in the year, while the courts have continued to muddy the waters of patent eligibility law. The Federal Trade Commission’s case against Qualcomm, and Judge Lucy Koh’s decision in the case, have further called into question the United States’ ability to compete on the innovation front going forward. And yet, there have been some wins in other areas this year, including at the U.S. Patent and Trademark Office (USPTO), and there remain many reasons to be hopeful about the year ahead. IPWatchdog asked some IP experts to share what they have to be thankful for on the IP front this Thanksgiving, despite all the uncertainty. Hopefully, as those of you who celebrate the holiday enjoy your Thanksgiving dinners, these sentiments will inspire you to be thankful too.

On November 23, the Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB) ruling in a pair of inter partes review (IPR), which had invalidated all claims of two related patents, U.S. Patent Nos. 9,014,243 and 8,718,158. TQ Delta, the patent owner, appealed the PTAB’s holding that all claims of the challenged patents would have been obvious when viewed in light of the prior art references, including U.S. Patent Nos. 6,144,696 (Shively) and 6,625,219 (Stopler), asserted by Cisco System Inc. and the other appellees (collectively, “Cisco”). Admissibility of evidence, claim construction, and due process were among several other challenges raised by TQ Delta on appeal. Because the PTAB’s determination of obviousness was not supported by substantial evidence, the CAFC reversed.

In Airbus S.A.S v. Firepass Corporation, Appeal 2019-1803 (November 8, 2019), Airbus appealed the Patent Trial and Appeal Board’s (PTAB’s) reversal of the examiner’s rejection of new claims presented by Firepass in an inter partes reexamination of U.S. Patent No. 6,418,752 (“the ‘752 patent”). In particular, the inter partes reexam returned to the Court from a prior appeal (Airbus SAS v. Firepass Corp., 793 F.3d 1376 [Fed. Cir. 2015]) in which the Court vacated and remanded to the Board to consider Airbus’s challenge to the newly presented claims. Airbus disputes the Board’s finding that an asserted prior art reference, which just so happens to be a patent issued to the same inventor as the ‘752 patent, is nonanalogous art.

On October 30, the Senate Judiciary Committee’s Subcommittee on Intellectual Property heard from five witnesses on ways to improve patent quality at the United States Patent and Trademark Office (USPTO). The Subcommittee subsequently posed questions to the witnesses, including professors Colleen Chien, R. Polk Wagner, and Melissa Wasserman, to supplement their testimony. Those witnesses have now submitted their responses, which expand upon their various suggestions for improving patent quality.

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) reviewed an appeal of the PTAB’s final decision that Game and Technology Co. Ltd.’s (GAT) Patent No. 7,682,243 (the ‘243 patent) was obvious over the prior art, and that inter partes review (IPR) was not barred under 35 U.S.C. § 315(b). The CAFC held that the PTAB properly asserted that claims 1-7 of patent ‘243 were obvious in light of the prior art and that an IPR was not barred because the petitioner, Wargaming Group Limited (Wargaming), was not properly served with a complaint alleging infringement of the [‘243] patent over a year before it filed its petition for an IPR.

If you innovate and invest more than $10,000 to obtain patent protection on your idea, do you trust a government-issued patent to be a valid one?  And if you believe you have a valid patent, would you trust that government’s judicial system to protect you from sanctions for believing in its validity? These underlying assumptions provide the foundation to any system. If you purchase and obtain title to a car, stock, or real estate, you expect that title to be valid. And you expect not to be penalized for believing in that title’s validity.     For patents, it’s quite the opposite. It has become so commonplace for government-issued patents to be invalidated after issuance, we hardly bat an eye. But with the development of Section 101 law, the patent system has turned down a twisted path—one that sanctions patent holders for believing their patent to be valid. In Finnavations LLC v. Payoneer, Inc., the U.S. District court for the District of Delaware unfortunately advanced our patent system down this path

About a month ago, Steve Brachmann authored an article concerned with a brief given to Capitol Hill staff by Professors Frakes and Wasserman. The article highlighted fundamental, as well as practical, problems with Professors Frakes’ and Wasserman’s proposal (i.e. doubling the number of patent examiners as a means to reduce the number of invalid patents and thereby prevent societal harms) and how it could be detrimental to the U.S. patent system. The IPWatchdog article points to several issues with Frakes’ and Wasserman’s proposal, but does not discuss other approaches or options, such as using artificial intelligence tools to improve the patent application review process—an option that USPTO Commissioner for Patents Drew Hirshfeld said in a recent Senate IP Subcommittee hearing that the Office is actively pursuing. According to PWC, 72% of executives testify that AI improves internal operations while freeing up workers to perform more creative and meaningful tasks. In fact, while some might fear that “robots” will take human jobs, technological innovation has been proven to generate more jobs than it takes, while automating tasks, like patent search.

This week in Other Barks & Bites: the U.S. Patent and Trademark Office issues an updated AIA Trial Practice Guide following SAS Institute v. Iancu; the AM-FM Act is introduced into Congress to update copyright law for terrestrial radio stations; VoIP-Pal.com defeats remaining IPRs challenging its patents at the institution phase; the Copyright Royalty Board announces cost of living adjustments in certain royalty rates; a Senate report shows that U.S. law enforcement didn’t adequately respond to Chinese IP theft for 20 years; China outpaces the rest of the world in terms of blockchain patent filing activities; and Apple joins Intel’s antitrust actions against Fortress Investment Group’s patent assertions.

Innovative activity is more collaborative and transnational, but also focused on a few large clusters in a few countries. These are among the findings in the latest World Intellectual Property Report, published by the World Intellectual Property Organization (WIPO) on November 12. The report focuses on the geography of innovation, using geocoding based on the addresses of inventors listed on patents and the locations of the authors of scientific articles and conference proceedings. The report found that, during the period 2015-2017, some 30 metropolitan hotspots accounted for more than two-thirds of all patents and nearly half of scientific activity. The top 10 hotspots worldwide are: San Francisco/San Jose, New York, Frankfurt, Tokyo, Boston, Shanghai, London, Beijing, Bengaluru and Paris. In the U.S., hotspots around New York, San Francisco and Boston accounted for about a quarter of all U.S. patents filed from 2011 to 2015.

“It’s up to you to do the right thing and fix this,” said Professor Arti Rai of The Center for Innovation Policy at Duke University School of Law near the end of a hearing on what Congress should do in the wake of the Arthrex decision yesterday. Rai was one of four IP scholars who testified during the hearing of the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet; all witnesses seemed to agree that the courts will not fix the problem soon enough to ensure the requisite certainty for U.S. patent owners and businesses, so Congress must act. In Arthrex, the Federal Circuit found that the Patent Trial and Appeal Board’s (PTAB’s) Administrative Patent Judges (APJs) were unconstitutionally appointed and removed the civil service protections they previously were deemed to enjoy—although, as Professor John Duffy of the University of Virginia School of Law pointed out, if the Federal Circuit ruled that the APJs can’t have tenure, that arguably means they never did. “If you go back to Marbury v. Madison, courts don’t actually strike down statutes; they simply say what the law is,” Duffy said.

For weeks now I have been asking the United States Patent and Trademark Office (USPTO) to confirm how many Administrative Patent Judges (APJs) are currently employed by the Office, a request that predates the Federal Circuit’s controversial Arthrex decision, but which was renewed after the decision issued. For reasons that I cannot explain, the Office refuses to provide an answer to what seems to be a straightforward and legitimate question: How many APJs are currently employed by the USPTO? Regardless of the USPTO’s reluctance to identify the number of APJs employed, it seems safe to say that the employment rights and futures of several hundred APJs hang in the balance as the result of the Federal Circuit’s decision in Arthrex, which found that the hiring of APJs violated the Appointments Clause of the U.S. Constitution. The Federal Circuit did, however, attempt to provide a gift to the Office by rewriting the section of the America Invents Act (AIA) they found to create the problem, and by so doing turned APJs into inferior officers. In order to do so, the Federal Circuit turned those uncertain number of APJs into employees-at-will, which allows for them to be fired by the Director of the USPTO. This is significant because certain APJs have not been willing to get on board with changes implemented by Director Iancu. The belief of those APJs who have not been “team players” is that they are judges and are not controlled by and do not answer to Director Iancu. Well, with the Federal Circuit’s decision in Arthrex that employment dynamic changed overnight.

It has been one year since my software patent was invalidated in the U.S. District Court for the Southern District of New York.  Now, this intellectual property is considered worthless and my dream of paying off extensive student loans with the proceeds from patent licensing fees are in the past. The irony being that if it were not for these extensive student loans, this invention, most likely, would not have come to into being. My patent No. 6,769,915, issued in 2003, was invalidated under Section 101 and struck down on appeal. The patent covers “a user-interactive behavior modification system” that is in competition with technology pursued by the companies including Nike, FitBit, Apple, and Samsung.  The rules that existed when I applied for this software patent in 2000 no longer guarantee myself and hundreds of other independent inventors the right to collect patent licensing fees. This right was granted to all with The Patent Act of 1790. Yet, over the last 15 years, the U.S. patent laws have been changed drastically by extremely well-financed lobbyists on behalf of the U.S. Patent and Trademark Office’s (USPTO’s) largest customers— global corporations, including the Big Tech industry. This has relieved Apple, Google, Facebook, etc. from the necessity of having to pay independent inventors software licensing fees. With this shift in intellectual property laws, the once small startups of Silicon Valley have become the large monopolies they are now.

As I have previously reported on KSJ Law, the Patent Trial and Appeal Board (PTAB) issued 80 decisions on appeals in October, and reversed the examiner in 24 of those. Claim construction was at issue in several, and the PTAB made several comments, supported by case law, that will be useful to those laboring against “broadest reasonable interpretations” that are, in fact, not reasonable. Taken together, these recent decisions provide a road map for first arguing against a broadest reasonable interpretation that is overly broad and unreasonable, thereby supporting the conclusion that a prima facie case against the properly construed claims has not been made.

Chestnut Hill Sound, Inc. has filed a petition asking the U.S. Supreme Court to consider whether the Federal Circuit’s disparate practice with respect to issuing Rule 36 decisions for losing patent owner-appellants versus losing petitioner-appellants is constitutional. The petition includes statistics demonstrating that patent owner-appellants are three times more likely to receive a Rule 36 judgment than petitioner-appellants. Chestnut Hill’s petition cites statistics on the number of Rule 36 decisions being issued, which come from Larry Sandell’s article, What Statistical Analysis Reveals About Winning IPR Appeals, LAW 360 (August 8, 2019, 5: 22 PM). A footnote in the petition explains that the likelihood of patent owner-appellants receiving a Rule 36 affirmance is actually closer to 3.6 than 3. “Since a losing Patent Owner- Appellant has a 66% chance of receiving a Rule 36 opinion, and a losing Petitioner- Appellant has an 18% chance of receiving a Rule 36 opinion, a Patent Owner- Appellant is 3.6 times as likely to receive a one- word affirmation than a Petitioner- Appellant,” says the petition.