Posts Tagged: "John White"

There are no shortage of opinions about what Director Iancu should do now that he is at the helm of America’s innovation agency. To contribute to the advice Director Iancu is no doubt receiving from many corners already, I’ve asked a panel of industry experts to weigh and give their advice about what should be on top of the Iancu agenda.

After oral arguments were held on Monday, November 27, 2017, I again asked a number of industry insiders what thoughts and predictions they now have after having the benefit of hearing the Q&A that took place between the Justices and the attorneys representing the petitioner, respondent and federal government. Their answers follow, and show that there is little agreement among those watching this case with respect to what the likely outcome will be.

First-take reaction to Aqua Products v. Matal from a distinguished panel of experts. Todd Dickinson: “I don’t think that I’ve ever seen such a collection of procedural somersaults and arcane discussion masquerading as an appellate opinion. ” Russell Slifer: “it would be wise for the USPTO and the PTAB to consider limiting all Board decisions wholly to the record developed during the proceeding. Eliminate the opportunity for a panel to issue a sua sponte reason for unpatentability.” Ashley Keller: “One could be forgiven for wondering if the Republic is truly well served entrusting such a tribunal with exclusive jurisdiction over patent appeals.” John White: “This decision puts neon highlights around what is wrong with the PTAB process as it pursues the political outcome of ridding the system of ‘troublesome’, aka: ‘commercially valuable’, patents.” Plus much more.

Lauren Emerson, Baker Botts, LLP: “Today’s decision, while not surprising, is momentous, as any decision striking a longstanding legislative provision based on freedom of speech would be.  From a trademark practitioner’s perspective, Matal v. Tam is also remarkable in that it is the second decision in just over two years in which the Supreme Court specifically has taken note of the importance and value of trademark registration.   The decision has drawn additional attention as it undoubtedly marks the end of Pro-Football, Inc. (“PFI”)’s longstanding battle over its REDSKINS marks, as 2(a) will no longer bar registration of those marks either.   I have little doubt that in the weeks and months to come, we will see many new filings that will be more challenging to celebrate than Simon Tam’s hard-won victory.”

First, I continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice, although I am mindful of both how naive that sounds and dangerous it could become given competing interests at play. Of course, there is also a very real possibility any statutory reform would simply be ignored by the Supreme Court anyway, as they cling to the judicially created exceptions to patent eligibility that find no support anywhere in the statute or Constitution. Second, I am again also going to wish for meaningful copyright reforms and/or real Internet industry cooperation that recognizes the important rights of content creators, both large and small. It is too easy to steal original content with impunity and that threatens content creators large and small. Finally, while I would like to wish for an end to post grant procedures, I’ll remain content to more modestly wish for a new PTO Director unafraid to reform the post grant process in ways that remove the systemic biases that make the proceedings hopelessly one-sided against patent owners.

It is one again time to take a moment to look back on the year that was, reflecting on the biggest, most impactful moments of 2016. For us that means looking backward at the most impactful events in the world of intellectual property. As you might expect, the two recurring themes in this 2016 patent year end review relate to patent eligibility and the Patent Trial and Appeal Board.

The first episode of Star Trek aired on September 8, 1966, some 50 years ago. Although the original series ended after only three rather disappointing seasons, the franchise would go on to spawn many sci-fi series and blockbuster movies. Star Trek has inspired generations of scientists and engineers, who continue to attempt to bring into being the gadgets and technology written into the story line. For example, several years ago the United States Patent Office issued a patent on the first cloaking device, last year scientists at the U.S. Naval Research laboratory created transparent aluminum, IBM’s omnipotent computer known as Watson can easily be likened to the all-knowing Star Trek computer, and a real-life food replicator can prepare a meal in 30 seconds. Of course, countless scientists have theorized about the possibility of a real life transporter, which is described as the holy grail of Star Trek technologies. Indeed, just a few months ago Russia embarked upon a path to achieve transporter technology within the next 20 years, and researchers believe through the use of quantum mechanics they can create a transporter-like device for data.

Recently I took and passed, on my second attempt, the United States Patent & Trademark Office Registration (bar) Exam. It is a daunting experience but manageable with some occasional misery in the mix. The exam is offered once a year in Virginia on paper otherwise you schedule your own computer exam at a Prometric testing site. The total time needed to prepare for the exam is about 150 hours of solid study/course time. It is a hundred questions divided into two three-hour sessions with an hour break.

On Monday, April 25, 2016, the United States Supreme Court heard oral arguments in Cuozzo Speed Technologies v. Lee, the first case in which the Supreme Court will decide issues relating to inter partes review (IPR) proceedings conducted by the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). With the oral arguments now behind us, I once again reached out to a panel of experts who are closely watching the case to ask for their reactions. Once again, I posed the question: What do you expect the Supreme Court to do in Cuozzo? This time, with the benefit of having listened to the oral arguments, the reactions and predictions of our panel of experts follows.