Posts Tagged: "patent"

It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and an above-average week in district courts, with 72 district court complaints filed and 18 new PTAB petitions—one petition for Post Grant Review (PGR), and 17 for Inter Partes Review (IPR). At the PTAB, a number of challenges were filed, including two IPRs by Tesla challenging patents owned by Iqar Inc, four IPRs by Dish challenging patents owned by Entropic Communications LLC (associated with Fortress), two IPRs by Microsoft challenging patents owned by Interdigital Patent Holdings Inc (associated with InterDigital Inc.), and two IPRs by Juniper Networks challenging patents owned by Monarch Networking Solutions LLC (associated with Acacia Research Corporation).

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held that certain claims of a patent for a system to protect against identity theft and fraud were invalid for indefiniteness. Judge Schall dissented-in-part, explaining that he would not have found the claims indefinite based on the intrinsic evidence. U.S. Patent No. 9,361,658 is owned by Mantissa Corporation and is titled “System and Method for Enhanced Protection and Control Over the Use of Identity.” Mantissa sued First Financial Corporation and First Financial Bank, N.A. in the U.S. District Court for the Northern District of Illinois, alleging infringement of certain claims. The parties mainly disputed two terms during claim construction: (1) “transaction partner” and (2) “OFF.” The district court relied on First Financial’s expert testimony to conclude that “transaction partner” was indefinite, after finding that the expert used was a person of ordinary skill in the art (POSA).

The year 2023 marked another year of rapid advancements in quantum computing technology, showcasing significant progress in key areas such as scalable quantum computing and quantum error correction. Multiple physical realization approaches or modalities for creating quantum bits (qubits) are under development, offering different tradeoffs in performance metrics such as qubit count, error rate, decoherence time, and gate speed. Patenting activities are effective indicators of innovation speed and resource distribution in a technology field. As 2024 begins, this post explores the newest development focus and trends in the quantum computing industry through the angle of its patent landscape and discusses strategic considerations for patenting in this rapidly evolving field.

The U.S. Patent and Trademark Office (USPTO) today released guidance for determining inventorship of artificial intelligence (AI)-assisted inventions. As the Office has previously stated, the guidance clarifies that “while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.” The USPTO issued a call for comments on AI inventorship in February 2023. That Federal Register Notice (FRN) asked the public to respond to 11 questions, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship by, for example, simply listing the natural person involved in inventions created by AI machines; and whether statutory or regulatory changes should be made to better address AI contributions to inventions.

The importance and profitability of diversity are already well-known by companies. Research conducted by McKinsey & Company shows that in 2019 companies in the top quartile for gender diversity on executive teams were 25% more likely to have above-average profitability than companies in the fourth quartile. However, when we look at diversity in the patent sphere, a report published by the World Intellectual Property Office (WIPO) showed that, in 2021, women accounted for only 16.5% of all inventors listed in Patent Cooperation Treaty (PCT) applications.

On February 8, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc. that vacated rulings by the Patent Trial and Appeal Board (PTAB) nixing validity challenges by American grill maker Weber against Provisur’s commercial food slicer patent claims. The Federal Circuit reversed the PTAB on claim construction and also found that the Board misapplied CAFC precedent on the level of public dissemination required before printed publications can qualify as prior art.

It was a busy week at the Patent Trial and Appeal Board (PTAB) with 40 new filings—all inter partes review (IPR)—and an average week in the district courts with 51 new filings. The bulk of new PTAB filings can be attributed to a few petitioners challenging multiple patents held by one patent owner (and all asserted in parallel district court litigations). For example, Apple continued its filings against Carbyne Biometrics LLC [associated with Bjorn Markus Jakobsson] patents, adding another five petitions against four patents to the two filed earlier this month

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision vacating and remanding a Patent Trial and Appeal Board (PTAB) decision that a patent for a climate control system was not proven unpatentable by Google LLC and Ecobee, Inc. In so doing, the court clarified how to determine when a court or the PTAB has implicitly construed a claim.

One day before comments closed on the Draft Interagency Guidance Framework for Considering the Exercise of March-In Rights, published by the National Institute of Standards & Technology (NIST) and the Department of Commerce last month, the Department of Health and Human Services (HHS) denied an appeal of a decision not to march in on the blockbuster prostate cancer drug, Xtandi®.

The first software patent was granted in 1968. It’s now been three decades since the “Year of the Algorithm” in 1994, when cases such as In re Allapat, In re Lowry, and In re Beauregard initiated a wave of software patents. Well over half of U.S. patents granted annually are at least “software-related,” and even a cursory search of U.S. patents reveals software patents in fields ranging from encryption to speech recognition to network security. Why, then, do so many people continue to think that software cannot be patented at all? What explains the stark contrast between the long-standing legal reality and the beliefs of otherwise well-informed engineers, high-tech business people, and even some lawyers?

An en banc panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) today heard arguments from LKQ Corporation, the U.S. government and GM Global Technology Operations in a case that could change the test for assessing design patent obviousness. The judges seemed interested in tweaking the existing “Rosen-Durling” test but struggled with getting the parties to clearly articulate a replacement approach that wouldn’t be potentially just as bad. The so-called Rosen-Durling test for design patent obviousness requires that, first, under In re Rosen (C.C.P.A., 1982), courts identify a prior art reference “the design characteristics of which are basically the same as the claimed design.” Next, under Durling v. Spectrum Furniture Co., 101 F.3d 100, 103 (Fed. Cir., 1996)), if such a reference is identified, the court must consider whether it can be modified based on other references to come up with “the same overall visual appearance as the claimed design.”

February 6 is the final day of the 60-day public comment period set by the National Institute of Standards and Technology’s (NIST) request for information on its draft interagency framework for exercising march-in rights under the Bayh-Dole Act of 1980. While lauded by drug pricing advocates, almost every other sector of the American economy has come out in opposition to the draft framework. Senator Thom Tillis (R-NC), the U.S. Chamber of Commerce and the Bayh-Dole Coalition have all publicly opposed NIST’s efforts to exercise legal authority for relicensing patent rights based on product pricing considerations.

For decades, patent litigators have followed what can best be described as a forced march seeking to construe patent terms and thereafter litigate infringement and/or validity issues based on those constructions. We all know the drill: exchange contentions; flag contested claim terms; brief their constructions; apply the facts to the court’s constructions; and grind out infringement and validity evidence like so much sausage. Rarely do litigants ask courts to take a step back and construe an asserted claim “as a whole,” and rarely do courts do so if they have not been asked. But sometimes the lack of a holistic claim analysis can lead to a shock to the system at trial, at which time one narrowly construed term can steamroller another broader construed term. The result can be the loss of an infringement claim or an invalidity defense. Such losses may or may not be avoidable, but facing the music earlier can save everyone a great deal of time and resources.

A recent decision out of the Eastern District of Texas sheds further light on Judge Rodney Gilstrap’s interpretation of a patent owner’s commitment to the European Telecommunications Standards Institute (ETSI) pursuant to ETSI’s Intellectual Property Rights Information Statement and Licensing Declaration (“the ETSI Licensing Declaration”). The decision, however, also raises some questions for SEP owners. A little over a year ago, we considered how French and California law would interpret a patent owner ‘s commitment to ETSI pursuant to the ETSI Licensing Declaration. The in depth analysis can be found here, while a summary version published on IPWatchdog can be found here. At a high level, we considered the issue both from the perspective of performance being possible without implementer engagement, and from the perspective of performance requiring implementer cooperation.

Today, the U.S. Department of Health and Human Services (HHS) made its initial offers to pharmaceutical companies pursuant to the Biden Administration’s Inflation Reduction Act of 2022 (IRA), which allows the U.S. Government to “negotiate” Medicare drug prices under a set framework based upon the amount of time a drug has spent on the market. Opponents of the program, including the U.S. Chamber of Commerce, which is suing the government over the plan, argue it cannot be characterized as a voluntary negotiation since the affected companies would be subject to onerous excise taxes for refusing to participate and because it would have devastating consequences for patients if companies were to actually pull the affected drugs. The amounts of today’s initial offers were not revealed.