Posts Tagged: "patents"

USPTO Expedited Processes for Examination and the New Petition to Make Special for Climate Change Inventions

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.

The TRIPS Waiver: What Does it Mean to Change the Rules of the Game?

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.

CAFC Sends Centripetal Back to Drawing Board in Case with Cisco Due to Judge’s Stock

Centripetal Networks will have to start from square one in its long-running case against Cisco after the U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday vacated a judge’s decision awarding Centripetal enhanced damages and royalties exceeding $2.75 billion. The CAFC ruled that Judge Henry C. Morgan, Jr. of the United States District Court for the Eastern District of Virginia was disqualified from hearing the case after becoming aware of his wife’s ownership of $4,687.99 in Cisco stock, ultimately reversing the district court’s denial of Cisco’s motion for recusal and vacating all orders and opinions of the court, including the final judgment in favor of Centripetal.

Massie, Centripetal Take Center Stage in House IP Subcommittee Hearing on PTAB Reform

One day after the Senate Judiciary Committee’s IP Subcommittee met to discuss the PTAB Reform Act and other ways to improve the Patent Trial and Appeal Board (PTAB), the U.S. House of Representative’s Subcommittee on Courts, Intellectual Property, and the Internet held a similar hearing featuring six witnesses with varying views on the PTAB about how to improve the system. Representative Thomas Massie (R-KY), who last year introduced a bill that would repeal the PTAB entirely, grilled the witnesses about the effects of the PTAB on U.S. investment in innovation and national security, and expressed skepticism that the system has succeeded in its intended goal of providing a cheaper, faster forum, particularly for small businesses and independent inventors.

Tillis Blasts FDA for Refusing to Respond on Drug Patent Data Study

Senator Thom Tillis yesterday wrote to Food and Drug Administration (FDA) Commissioner Dr. Robert Califf, asking for a third time that the FDA conduct “an independent assessment and analysis of the sources and data that are being relied upon by those advocating for patent-based solutions to drug pricing.” Tillis expressed his frustration with the lack of response thus far, explaining that no formal reply has yet been received despite his first letter being sent in January 2022, and calling it “unacceptable” that the FDA apparently “refuses to reply to emails or to engage.”

Vidal Memo Clarifying PTAB Discretionary Denial Analysis Says Fintiv Does Not Apply to Parallel ITC Investigations

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has issued a memorandum on the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” clarifying current Patent Trial and Appeal Board (PTAB) practice on discretionary denials of inter partes review (IPR) and post grant review (PGR) proceeding institutions. The memo and corresponding press release explain that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

CAFC Reverses January Decision Affirming Sufficient Written Description for Negative Claim Limitation Over Judge Linn’s Dissent

Earlier today, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc. granting a petition for rehearing from appellant HEC Pharm Co., Ltd. In granting HEC’s petition, the panel majority of Chief Judge Kimberly Moore, who authored the decision, and Circuit Judge Todd Hughes vacated a previous January ruling by the Federal Circuit, which had affirmed the District of Delaware’s final judgment that Novartis patent claims covering its Gilenya treatment for multiple sclerosis were not invalid for failing to satisfy the written description requirement under 35 U.S.C. § 112. Senior Circuit Judge Richard Linn authored a dissent arguing that the panel majority had improperly adopted a heightened written description standard and failed to take into account expert testimony from Novartis regarding a negative claim limitation that the district court found was supported by ample evidence.

Juno Petition Asks SCOTUS to Clarify Written Description Standard

Juno Therapeutics last week petitioned the U.S. Supreme Court, asking it to review an August 2021 decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) that reversed a jury verdict for Juno and Sloan Kettering Institute for Cancer Research, wiping out a $1.2 billion judgment for the entities. The CAFC found that the jury’s verdict with respect to written description was not supported by substantial evidence.

Note to Senators: U.S. Patent Office Remains Under a Permanent Injunction

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”.

CAFC Reverses and Vacates Decision for L’Oréal, Finding District Court Claim Construction was Improper

On June 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed in part, vacated in part, and remanded a decision by the United States District Court for the District of Delaware relating to the University of Massachusetts’ (UMass’) suit against L’Oréal S.A. and its American subsidiary L’Oréal USA, Inc. (collectively, L’Oréal), alleging patent infringement of both U.S Patent No. 6,423,327 (the ‘327 patent) and U.S. Patent No. 6,645,513 (the ‘513 patent). The district court held that it lacked personal jurisdiction over L’Oréal S.A. and that the patents were invalid based on indefiniteness. UMass on appeal challenged both of the district court’s holdings, arguing that they were entitled to jurisdictional discovery against L’Oréal S.A. and that the claim construction performed by the district court was improper.

The Biden Administration’s Neutrality Position on SEP Remedies is a Good Move

On June 8, the Biden Administration announced a detente on the issue of standard essential patents (SEPs) through coordinated statements made by the United States Patent and Trademark Office (USPTO), Department of Justice Antitrust Division, and National Institute of Standards and Technology (NIST). The casual reader, or reader who only quickly glanced at the headlines, might be mistaken into believing the Biden Administration had declared war on SEP owners due to the Administration rescinding the 2019 Joint Policy Statement between the USPTO, DOJ and NIST that was biased in favor of the possibility of SEPs being like any other patent, with remedies for infringement possibly including injunctive relief. Those familiar with Administration’s efforts on SEPs will recall that a 2021 draft policy statement had been published, which swung heavily against patent owners and resurrected the debunked myth that patent owners engage in hold-up activities.

Examining the Confounding Public Interest Statement by the FTC in a Recent ITC Investigation

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.

After Final Consideration Pilot 2.0: A Patent Examiner’s Perspective

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.

Another Peculiar Anti-Patent Court Decision in ParkerVision v. Qualcomm

Infringing patented inventions feels like stealing, from the innovator’s perspective, much like a smash and grab at a jewelry store. Politicians refuse to fix the gutted patent system so it can protect U.S. startups and small inventors. The American Dream is slipping away, as it consolidates into the hands of just a few tech giants and sending whatever is left to China. Case in point, ParkerVision v. Qualcomm, which illustrates just how anti-patent some courts have become. In this case the importance of ParkerVision’s seminal semiconductor chip technology that helped to transform cellphones into smartphones is at issue. ParkerVision invested tens of millions in R&D, but the courts have allowed it to be taken from them and transferred to a multinational corporation free of charge.

CAFC Affirms California Court’s Claim Construction and Damages Calculation in Flash Drive Infringement Suit

On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the U.S. District Court for the Central District of California from an appeal by Kingston Technology Company LLC, in which the district court held that Kingston willfully infringed U.S. Patent No. 6,926,544 (‘544 patent) and awarded $7,515,327.40 in compensatory damages. The CAFC said in part that the district court can judicially correct claims when there are “obvious minor typographical and clerical errors in patents” without changing the scope of the claim.