Friday, October 23, 2020

USPTO - International Filing Tools for Inventors Seeking Foreign Patents

Today, the USPTO published a web page International Filing Tools to assist inventors seeking foreign patent protection.

Copyright © 2020 Robert Moll. All rights reserved.

Sunday, October 11, 2020

Michel & Battaglia - EBay the Right to Exclude, and the Two Classes of Patent Owners

In Patently-O, an article Michel & Battaglia - EBay the Right to Exclude, and the Two Classes of Patent Owners worth reading. 

The article reviews the Supreme Court's EBay decision, which cautioned courts from categorically denying injunctions to patent owner that seek to license rather than commercialize their patented invention. Despite the caution, when it comes time to grant injunctive relief some courts think we have two class of patent owners. Time for patent owners to remind the court what did and didn't happen in EBay.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, October 6, 2020

USPTO - Report on Artificial Intelligence and Intellectual Property Policy

It looks at the impact of artificial intelligence (AI) on intellectual property (IP) law, including on patent, trademark, copyright, trade secret, and database protection. 

As stated in the USPTO announcement:

"To that end, the USPTO proactively solicited public input through two formal Requests for Comments published in the Federal Register. In response, the agency received approximately 200 unique comments from a broad range of experts in foreign patent offices, bar associations, trade associations, academia, law firms, and companies in the electronics, software, automobile, medical, and pharmaceutical industries. 

As the report indicates, the majority of commenters believe the U.S. legal system is well equipped to handle the emerging issues raised by AI. However, many commented that the USPTO and IP stakeholders must keep a close eye on legal and scientific developments in AI to ensure the United States keeps up with this critical technology."

For more detail see the USPTO Artificial Intelligence webpage.

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, September 30, 2020

Federal Circuit - Network-1 Technologies, Inc. v. Hewlett Packard - Joining Party Can Challenge Validity On Different Grounds Than Raised in IPR

In Network-1 Technologies, Inc. v. Hewlett Packard, the Federal Circuit held that a party joining an inter partes review (IPR) before Patent Trial and Appeal Board (PTAB) can later challenge patent validity in court as long the challenge is based on different grounds than those raised earlier in the IPR. 

As a reminder, 35 U.S.C. § 315(e) estops a petitioner from challenging patent claims in court on grounds it "raised or reasonable could have raised" after a final decision in an IPR. The Federal Circuit explained a joining party is not estopped from raising grounds different than those when the IPR was instituted. In short, a party is only estopped from challenging in court on the grounds it "raised or reasonably could have raised" in the IPR.

Copyright © 2020 Robert Moll. All rights reserved.

Sunday, September 27, 2020

USPTO - Director Iancu's Remarks at the IPO Association's Annual Meeting 2020

On September 15, Director of the U.S. Patent and Trademark Office Andrei Iancu gave the following remarks at the Intellectual Property Owners Association's (IPO) Annual Meeting 2020:

"Hello, and thank you, IPO, for bringing us together. I wish we could be meeting in person as in years past, but I am thankful for the thousands of patents awarded over the decades that make it possible for us to meet virtually.

I hope you are staying safe and healthy. Even in these difficult times, the United States Patent and Trademark Office (USPTO) is running smoothly. Before the pandemic, 56% of USPTO employees worked from home full time, and another 31% worked from home at least one day a week. Our popular telework program made us uniquely well-positioned to pivot to full-time telework for all employees with little difficulty.

We are all learning a lot from the pandemic—and like all pandemics in the past, it is changing the structure of our society. It is also ushering in a new era of invention and innovation, in spite of the hardship and suffering.

The USPTO is currently in “Phase 1,” so our buildings are still closed to the public. Most of our employees continue to work from home and are encouraged to do so to the maximum extent possible. We are moving cautiously and following the guidelines and mandates of our federal, state, and local governments. We will move forward to the next phase only when we are confident of the safety of our employees and customers.

In the meantime, our employees are as committed as ever to our mission of fostering innovation and economic competitiveness. They continue to work with the utmost diligence and professionalism. I couldn’t be more proud of them, especially those with school-age children. But working remotely is certainly not a panacea, and we look forward to the day when we are back together in the office.

The USPTO’s response to the COVID-19 crisis has included a variety of initiatives designed to help our customers. To support filers impacted by the crisis, we have waived petition fees in certain situations, extended the time to file certain fees and meet certain deadlines, and we have allowed all documents and applications—including plant patent applications—to be filed electronically. 

We also instituted a COVID-19 Prioritized Examination Pilot Program. It waives the fees for prioritized examination for small or micro entities whose applications cover a product or process that is subject to FDA approval, for use in the prevention and/or treatment of COVID-19. We aim to reach final disposition of these prioritized applications in this program within six months.

We also created a new USPTO IP marketplace platform called “Patents 4 Partnerships,” to facilitate contacts between patent owners who want to license their inventions and potential licensees. It is our hope that Patents 4 Partnerships will accelerate the commercialization of products and technologies to address the current health crisis. The data in the platform includes U.S. patents and published U.S. patent applications related to COVID-19 that have been identified as “available for licensing” by their owners. 

For our latest COVID-related initiatives, I encourage everyone to keep an eye on our COVID-19 Response Resource Center. It is now on our website to assist the public with accessing all of our COVID-19 initiatives and programs.

Despite our efforts to spur innovation during the pandemic, there has been a decrease in some filings as a result of the lockdowns. Based on our experience in previous economic downturns, we expected this would happen.

Patent applications are a lagging indicator of economic activity because of the innovation lag that occurs between the completion of research to the conception of a new idea or product, to the creation of an invention, and to the application for a patent. 

Through the end of August, serialized patent filings are 0.1% above fiscal year 2019 filings for the same time period. This might sound promising, but it is below plan. Before the pandemic we expected that serialized filings would increase by 2.5% this year. We saw strong improvement over the previous year through February. However, since March, filings have been in decline. Further, RCE filings are currently 10.4% below fiscal year 2019 through the end of August. These declines accelerated during the second half of this fiscal year and are expected to continue into next year.

There have also been recent decreases in patent renewals. For the months of May through August, maintenance fee collections were 4.1% lower—or $19.5 million less than projected. Looking back during previous periods of economic uncertainty, renewal rates typically drop for a short period but then bounce back. We expect that will hold true now, but we’ve never had a period of time quite like this.

Nonetheless, there is good news to report on the innovation front: Small and micro entity patent filings are at a historic high, with more than 112,000 filed during the first 11 months of fiscal year 2020.

While patent filings are a lagging indicator, Trademark applications are more closely correlated with current economic activity, and they tend to follow the S&P 500 index. This year, Trademark filings at the USPTO have exhibited a healthy V-shape recovery, where the front edge of the “V” represents a precipitous decline caused by the pandemic, and the trailing edge of the “V” represents a rapid bounce back to normalcy. It is moving in parallel with the general economic recovery we are experiencing as a nation.

Through the end of August 2020, trademark filings are 3.2% above filings for the same period last year and are slightly higher than we expected. In fact, August 2020 is our biggest filing month yet, with 76,400 classes. We should see more than 700,000 classes for the year.

This is all good news. However, trademark renewals have been lower than expected, and we now project a decrease in collection of $12.3 million. As the mix of filers shifts more towards pro se, one-time filers, and foreign filers, we expect lower trademarks renewal rates in the future. 

Despite the pandemic-related challenges, the USPTO has remained focused and operations have been smooth. Through all the metrics we have put in place over the years, we know that our examiners are as productive as ever. 

Plus, we have continued our work to improve the IP ecosystem. Among other things, we are clarifying patent subject matter eligibility and balancing post-grant proceedings at the PTAB. In fact, given the economic downturn and the global competitive challenges we face as a nation, we are doing more than ever before to boost innovation in America.

Turning to Section 101 of the Patent code (patentable subject matter), as most of you know, we issued new guidance last year that synthesizes the relevant case law and provides a clear analytical framework. By increasing the clarity of examination and decreasing uncertainty, the results have been remarkable. For example, a recent statistical report from our Chief Economist found that uncertainty decreased by 44% in the first year since our guidance. The report’s findings make it crystal clear that in proceedings at the USPTO our 101 guidance works very well, and it successfully addresses the confusion that existed for years in this important area of patent law.

Turning now to the PTAB, we have made many changes over the past three years to bring post-grant proceedings within balance. Among other things, we have worked to close loopholes that allowed repeated post-grant challenges to patents. IPRs and PGRs were meant to be a cheaper, faster alternative to District Court litigation. They were not meant to create more expensive, prolonged, and duplicative litigation. By reducing multiple bites at the apple, these changes have worked remarkably well and have brought much-needed balance to our post-grant proceedings. They have helped return the U.S. patent system to the top levels of worldwide rankings. 

We have made many other substantive changes too, such as a consistent claim construction standard, a more robust amendment process, and much more. Let me highlight a couple of non-substantive new programs that have quickly become popular. PTAB’s Fast-Track Appeals Pilot Program allows appellants to have their ex parte appeals advanced out of turn and expedited. We have so far received 48 petitions and granted 45 of them. 

PTAB also recently launched the Legal Experience and Advancement Program—known as LEAP—to facilitate the much-needed training of newer practitioners and help groom the next generation of highly skilled IP lawyers. Under this program, junior practitioners can receive up to an additional 15 minutes to argue a case. Plus, LEAP offers training not found elsewhere. Newer lawyers, for example, have the opportunity to refer back to senior lawyers on standby during an oral hearing, providing more confidence for both the junior lawyers and their clients. Newer lawyers can also receive training directly from PTAB judges about effective oral argument techniques and skills. The USPTO is heavily invested in the success of America’s IP law community, and we embrace the opportunity to help. 

In a similar vein, this summer the USPTO released an update to our 2019 report on U.S. women inventors. The new report updates the previous findings based on a review of an additional nearly one million issued patents and three years of new data, and it provides further insights into the participation of women in America’s IP systems.

The report’s numerous findings show that more women are entering and staying active in the patent system than ever before. The number of patents with at least one woman inventor increased from 20.7% in 2016 to 21.9% by the end of 2019. The “Women Inventor Rate”—the share of U.S. inventors receiving patents who are women—increased from 12.1% in 2016 to 12.8% in 2019. These numbers show that efforts to increase the participation of women in the innovation and IP ecosystem continue to yield results. But much more is needed still. 

In order to retain our nation’s edge as a global innovation leader, we need even broader participation in patenting. That’s why the USPTO has made outreach to underrepresented groups a top priority. Last week, we held the inaugural meeting for the National Council for Expanding American Innovation. Chaired by Secretary of Commerce Wilbur Ross, the council is comprised of top leaders from academia, industry, and government. The mission of the council is to help us develop a national strategy that will provide a long-term comprehensive plan for our country’s continued success as a worldwide innovation leader. This is no idle exercise. Recent studies show that by harnessing the creative talent of all Americans, we could quadruple the number of inventors and increase the overall level of U.S. GDP per capita by up to 4.4%. 

In addition to working with industry and academia to expand participation in the innovation ecosystem, we will also continue highlighting the accomplishments of past and present women inventors, and inventors from other underrepresented groups, to inspire and grow more of those future innovators. We must all work together to grow a powerfully diverse innovation ecosystem and fuel our economy for decades. 

All of these initiatives will help us build the strongest IP system possible. We owe the inventors and entrepreneurs of this world no less. IPO plays a critically important role in all of these efforts, and I want to thank you all for your leadership, engagement, and guidance.

Thank you for your dedication and commitment to IP, and thank you to IPO for inviting me to be part once again of your annual meeting."

Copyright © 2020 Robert Moll. All rights reserved.

Friday, September 18, 2020

RPX - The PTAB Sees a Relatively Small Percentage of Patents Litigated in District Court - Comment

On September 16, RPX published a short article: The PTAB Sees a Relatively Small Percentage of Patents Litigated in District Court September 16, 2020. It noted that only 22% of the court cases also see an inter partes review (IPR). Thus, the RPX report might give some patent owners a nice feeling: you probably won't face an IPR where more than half of US patents see claims invalidated. 

But think about it. If RPX is correct that IPRs have only been filed against 4,330 patents since available in 2012, while the USPTO reports 11,148 IPR petitions filed from beginning (Sept. 16, 2012) until recently (Aug. 31, 2020), we have a difference. Let's assume both RPX and the USPTO are correct. Why the difference? I am thinking the difference is attributable to the current practice of filing multiple petitions against certain patents. Many patent may escape an IPR, but for valuable patents, it's "war by attrition."

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, September 17, 2020

USPTO - Trial Statistics IPR, PGR, CBM Patent Trial and Appeal Board August 2020

The USPTO monthly publishes trial statistics for IPRs, PRG, and CBM in the PTAB section of Note covered business methods (CBM) expired September 15, 2020. 

Here's the latest report: Trial Statistics IPR, PGR, CBM Patent Trial and Appeal Board August 2020

Copyright © 2020 Robert Moll. All rights reserved.

Monday, August 31, 2020

IP Watchdog Annual 11-day Free Virtual IP law conference (September 1-30)

Gene Quinn's IP Watchdog Annual Meeting 11-day virtual conference (September 1-30) with IP law speakers starts at 9 AM (PT) tomorrow: IP Watchdog free registration page.

Copyright © 2020 Robert Moll. All rights reserved.

Saturday, August 29, 2020

RPX - Infringement Is the Top District Court Issue Appealed to the Federal Circuit

RPX published a nice summary on what US patent issues are appealed to the Federal Circuit:

"RPX data on the Federal Circuit show that infringement is the most common issue appealed from district court patent cases, appearing in over 450 appeals. Claim construction and invalidity (under Sections 102/103/112) are the next two most frequent issues, each of which appears in over 300 appeals. Two other key issues round out the top five: damages/fees/costs (appearing in around 275 appeals) and invalidity under Alice/Section 101 (just over 240 appeals)."

Note the low reversal rates of many issues appealed point to the importance of winning at trial. As Judge Rich might say, "the name of the game is the claim."

For more detail: RPX Infringement Is the Top District Court Issue Appealed to the Federal Circuit

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, August 19, 2020

USPTO - Use of Admitted Prior Art in a Petition for Inter Partes Review

On August 18, 2020, the USPTO issued a Guidance Memorandum to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review.

The USPTO stated: "the memorandum, issued under the Director’s authority to set forth binding agency guidance, provides the office’s interpretation of 35 U.S.C. § 311(b) that the basis for an inter partes review (IPR) must be a prior art patent or printed publication, and that statements regarding prior art in the challenged patent therefore cannot serve as the basis for instituting an IPR. Such statements, however, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications."

Thus, the USPTO memo states IPR challengers cannot ground a petition solely in applicant's admissions in the specification, but can use them to support obviousness along with prior art.

This is uncontroversial, but it reminds how you write a US patent application. The popular Pressman, Patent It Yourself (2018) states that "applicants should indicate the problems of the prior art, if any, and describe and knock all prior art" under the heading Background - Prior Art. However, this is not good advice, a big job, and in my view unnecessary. Instead, it is best to avoid risk of a prior admission in describing and knocking all prior art, especially when the USPTO only requires applicants and attorneys disclose prior art they are aware of that is material to patentability in an information disclosure statement for consideration by the examiner.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, July 28, 2020

Federal Circuit - Packet Intelligence LLC v. NetScout Systems, Inc. - Claims Patent Eligible under 35 USC 101

In Packet Intelligence LLC v. NetScout Systems, Inc., the Federal Circuit held claims patent eligible under 35 USC § 101.

Athough Packet Intelligence alleged infringement of three US patents, the patent eligibility issue was analyzed using representative claim 19 of US Patent No. 6,954,789:

19.  A packet monitor for examining packets passing through a connection point on a computer network, each packet conforming to one or more protocols, the monitor comprising:

    (a) a packet acquisition device coupled to the connection point and configured to receive packets passing through the connection point;

    (b) an input buffer memory coupled to and configured to accept a packet from the packet acquisition device;

    (c) a parser subsystem coupled to the input buffer memory and including a slicer, the parsing subsystem configured to extract selected portions of the accepted packet and to output a parser record containing the selected portions;

    (d) a memory for storing a database comprising none or more flow-entries for previously encountered conversational flows, each flow-entry identified by identifying information stored in the flow-entry;

    (e) a lookup engine coupled to the output of the parser subsystem and to the flow-entry memory and configured to lookup whether the particular packet whose parser record is output by the parser subsystem has a matching flow-entry, the looking up using at least some of the selected packet portions and determining if the packet is of an existing flow; and

    (f) a flow insertion engine coupled to the flow-entry memory and to the lookup engine and configured to create a flow-entry in the flow-entry database, the flow-entry including identifying information for future packets to be identified with the new flow-entry, the lookup engine configured such that if the packet is of an existing flow, the monitor classifies the packet as belonging to the found existing flow; and if the packet is of a new flow, the flow insertion engine stores a new flow-entry for the new flow in the flow-entry database, including identifying information for future packets to be identified with the new flow-entry, wherein the operation of the parser subsystem depends on one or more of the protocols to which the packet conforms.

The Federal Circuit stated in analyzing patent eligibility, we consider the claim as a whole and read it in light of the specification. The Federal Circuit observed patent-eligibility of computer and network technology often turns on whether claims recite a specific improvement in computer capability or an abstract idea for which computers are merely invoked as a tool.

The Federal Circuit stated that claim 19 was not directed to an abstract idea. Instead, it met a unique challenge to computer networks by describing how to identify disjointed connection flows in a network environment. In other words, the specification presented a new technological solution to a technological problem.

Copyright © 2020 Robert Moll. All rights reserved.

Friday, July 24, 2020

Federal Circuit - Uniloc 2017 LLC v. Hulu LLC - PTAB May Review Proposed Substitute Claims for Patent Eligibility in IPR

In Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit affirmed PTAB's determination that the patent owner's substitute claims proposed in a motion to amend were patent ineligible under 35 U.S.C. § 101 in an inter partes review (IPR).

As a reminder, IPR only permits challenges of US patent claims based on prior literature under 35 U.S.C. § 102 and 35 U.S.C. § 103. However, the Federal Circuit is now making a distinction with issued and substitute claims proposed in an IPR and states that PTAB may review substitute claims proposed by the patent owner for patent eligibility.

The dissent stated: "the majority breathes life into a dead patent and uses the zombie it has created as a means to dramatically expand the scope of inter partes review (“IPR”) proceedings. Because the Patent Trial and Appeal Board (“Board”) is estopped from issuing substitute claims in place of the invalidated claims of U.S. Patent No. 8,566,960 ("'960 patent") and because, even if the Board could issue such claims, it would be improper for it to consider 35 U.S.C. § 101."

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, July 15, 2020

USPTO - PTAB Motion to Amend Study Updated

The USPTO released an update to the PTAB Motion to Amend Study today.

It seems the data on motions to amend filed under the pilot program is insufficient at this stage to support it is less than a challenge to amend patent claims in PTAB trials.

Here's the USPTO summary:

"The Patent Trial and Appeal Board (PTAB) has published the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.

This installment completes the data on all motions to amend filed before the effective date of the New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board (84 FR 9497).

Highlights from the installment include:

Some limited data on motions to amend filed under the motion to amend pilot program that the office implemented for cases instituted on or after March 15, 2019.

Of the 5,359 trials that have gone to completion or settled, patent owners sought to amend the claims in 562 trials—504 pre-pilot program trials and 58 pilot program trials.

Of the 504 trials with pre-pilot motions to amend, the PTAB decided the merits of 335 motions. In the remaining 170 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or contained an amendment that only sought to cancel claims.

Of the 335 pre-pilot motions to amend that the PTAB decided, the PTAB granted or granted-in-part 46 motions. For 92% of the 289 motions denied or denied-in-part, the PTAB determined that the proposed amended claims did not satisfy at least one statutory requirement of patentability—akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter—or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. §§ 316(d) or 326(d).

For the limited number of motions to amend filed under the pilot program and included in the study, patent owners requested preliminary guidance in 83% of motions and filed a revised motion to amend in 58% of trials after receiving preliminary guidance (when taking into account cases that terminated, cases in which the motion to amend was withdrawn, or cases in which the deadline to file a revised motion to amend had not yet passed)."

Copyright © 2020 Robert Moll. All rights reserved.

Monday, July 13, 2020

Supreme Court - USPTO v. - can be federally registered

In USPTO v., the Supreme Court held a term styled "" can be federally registered as a mark if evidence supports that consumers consider the term to not mean a generic name of a class of goods or services. provides travel-reservation services and sought federal registration of the domain name: "" The USPTO refused registration because it considered it a generic name for online hotel-reservation services. The courts below the Supreme Court sided with

It should be noted, the Supreme Court expressly rejected the USPTO's argument for a per se rule when a generic term (e.g., booking) is combined with an Internet-domain name suffix like “.com,” the resulting combination remains generic. Thus, we may see trademark surveys being filed in support of domain names.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, July 7, 2020

USPTO - Fast-Track Appeals Pilot Program - Decision within Six Months?

The USPTO announced a program to expedite decision for patent applications on appeal.

From the Federal Register:

"The United States Patent and Trademark Office (USPTO) is initiating the Fast-Track Appeals Pilot Program to provide for the advancement of applications out of turn in ex parte appeals before the Patent Trial and Appeal Board (PTAB). An appellant who has filed an ex parte appeal and received a notice that the appeal has been docketed may file a petition, accompanied by a petition fee, to expedite the review of his or her appeal. The Fast-Track Appeals Pilot Program sets a target of reaching a decision on the ex parte appeal within six months from the date an appeal is entered into the Pilot Program."

"The Fast-Track Appeals Pilot Program is offered on a temporary basis, and petitions to request inclusion of an ex parte appeal in the Pilot Program will be accepted until 500 appeals have been accorded fast-track status under the program, or until July 2, 2021, whichever occurs earlier. The USPTO may extend the Fast-Track Appeals Pilot Program (with or without modification) on either a temporary or a permanent basis, or may discontinue the program for either insufficient usage or after July 2, 2021."

For more details see the Federal Register Notice.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, July 6, 2020

Federal Circuit - Extensive Revisions to Rules and Forms

The Federal Circuit published Revisions to the Rules of Practice and the filing forms that must be respectively followed and used for cases pending on or after July 1, 2020.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, June 30, 2020

USPTO - Manual of Patent Examining Procedure (MPEP) Revised

Today, the USPTO announced:

"The ninth edition of the Manual of Patent Examining Procedure was revised to include updated information on patent examination policy and procedure related to a number of issues, including subject matter eligibility and examination of computer-implemented functional claim limitations.

The June 2020 revision updates sections of chapters 100-1000, 1200-1500, and 1700-2800. The updated sections have a revision indicator of [R-10.2019], meaning these sections have been updated to reflect USPTO patent practice and relevant case law as of October 31, 2019. In addition, the June 2020 revision updates Chapter FPC - Form Paragraphs Consolidated, the Foreword, the Introduction, the Subject Matter Index, and all Appendices, except Appendix I and Appendix P."

See Details at the MPEP page of the USPTO website.

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, June 25, 2020

Federal Circuit - Facebook v. Windy City Innovations LLC - No Same-Party Joinder In Inter Partes Review

In Facebook v. Windy City Innovations LLC, the Federal Circuit held that 35 U.S.C. § 315(c) does not authorize same-party joinder, and does not authorize joinder of new issues (e.g., for cancellation), including issues that would otherwise be time-barred under 35 U.S.C. § 315(b) from inter partes review (IPR).

Unless Federal courts require infringement contentions well within one year of the service of an infringement complaint, this seems to increase legal fees for effective IPR petitions and increase the value of US patents with diverse claims.

See Bloomberg Law Patent Challengers Reassess Strategies After Ruling Bars Tactic.

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, June 17, 2020

Federal Circuit - Anneal v Almirall - Reverses Attorney Fee Award for Work on Inter Partes Review

In Anneal v Almirall, the Federal Circuit held that a court cannot award attorney fees under 35 U.S.C. § 285 for work incurred on an inter partes review (IPR) and on appeal from IPR decision, because 35 U.S.C. § 285 is limited to "judicial proceedings."

Copyright © 2020 Robert Moll. All rights reserved.

Saturday, June 13, 2020

N.D. Cal. - Google Countersues Sonos for Infringement of Five US Patents

On June 11, Google countersued Sonos for infringement of US patents related to mesh networks, echo cancellation, digital rights management, content notification and search:
  • 7,899,187 Domain-based digital-rights management system with easy and secure device enrollment 
  • 8,583,489 Generating a media content availability notification
  • 10,140,375 Personalized network searching
  • 7,065,206 Method and apparatus for adaptive echo and noise control
  • 10,229,586 Relaying communications in a wireless sensor system
See Patently Apple article: The Sonos vs. Google Court Battle has Escalated with Google filing a Countersuit yesterday in a California Court

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, June 9, 2020

Federal Circuit - Munchkin v. Luv n’ Care - Reverses Attorney Fee Award

In Munchkin, Inc. v. Luv n’ Care Ltd. the Federal Circuit reversed a district court's award of attorney’s fees to defendant Luv n’ Care, because the court had abused its discretion in determining the case "exceptional."

The Federal Circuit noted Munchkin's attorney fee motion failed to present facts and the analysis required to establish "Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional."

See 35 U.S.C. § 285 and 15 U.S.C.§ 1117(a) which require an "exceptional case" to award attorney fees to a prevailing party in patent and trademark cases.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, June 1, 2020

USPTO - Patents 4 Partnerships - A New IP Marketplace

On May 4, the USPTO launched an intellectual property (IP) marketplace Patents 4 Partnerships. Initially, the marketplace will focus on patents and applications related to the COVID-19 pandemic.

Privately run IP marketplaces have been not been very successful, but the USPTO doesn't take a commission so this would reduce transaction costs (e.g., broker's fee 30%) . Further, the USPTO, unlike a private marketplace, may have more time to grow the IP listings to attract buyers/licensees.

For details see Anthony Trippe's Forbes article: Companies Miss Out On Billions In Value, New Patent Marketplace Could Change That.

Copyright © 2020 Robert Moll. All rights reserved.

Saturday, May 30, 2020

Mueller - Patent Law Sixth Edition 2020

Janice Mueller's Patent Law (2020, Sixth Edition) was released on May 18, 2020. It looks like another useful edition. It is an introduction to US patent law with lots of detail (1296 pages). It also looks complete based on my review of the table of contents.  I am not affiliated with the author nor her publisher and only post because it has merit for those that need an introduction or review of US patent law. I like the Kindle version so its on several devices, but if you like things in paper here's the link. To get a Kindle version just click on the e-textbook tab.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, May 26, 2020

Professor Lemley - Without Preamble

Professor Mark Lemley's article Without Preamble (2019-2020) relates to the topic of claim construction, which can determine the outcome of patent litigation.

As background, a US patent claim has three parts: (1) a preamble, which states what the invention is or its environment, (2) a transitional term (e.g., comprising), and (3) a body that lists the steps of a method or the structure of a system. Generally, courts hold a preamble is a claim limitation "if it gives life, meaning and vitality" to the claim or recites essential structure or steps. Yes, it's a case by case determination. Perhaps a more practical test is whether the preamble is referenced repeatedly in the body. If so, the preamble is a claim limitation, i.e., for purpose of determining validity and infringement. See Mueller, Patent Law (2020).

Turning to Professor Lemley's Abstract:

"The Federal Circuit is ignoring a significant share of the words of patent claims. That's a bad idea as a matter of policy. It is virtually impossible to tell when the court is going to do it. And it’s inconsistent with the idea that the claims define the scope of the invention, and with how the Supreme Court thinks about claim construction and its closest analogies, statutory interpretation and construing contracts.

The culprit is a labyrinthine set of rules the Federal Circuit uses to decide whether or not to include the 'preamble' to a patent claim as a part of the claim. The words of the preamble, which can sometimes amount to more than half of the whole claim, might or might not be treated as part of the invention depending on a complex of factors, including whether the claim reads as a complete sentence without it, whether the same words are used in both the preamble and the body of the claim, whether the body of the claim includes the magic word 'said,' whether the preamble merely claims a use, benefit, or environment for the claim, and whether the preamble 'is necessary to breathe life and meaning into the claim.'

In Part I I discuss the bizarre body of law around patent claim preambles and how the law got to its current confused state. In Part II I suggest that the rule serves no useful purpose, and that if and when the Supreme Court gets such a case it should and will sweep the rule away. Patent applicants should be drafting patents with that fact in mind, and the rest of us should be interpreting claims with one eye on the fact that this is a doctrine whose days are numbered."

In short, this article asks courts drop the case by case determination test we use today on whether the preamble is a part of the claim just as much as the body of the claim. Saying the preamble always counts as proposed removes uncertainty, but means more patent claims will be held to not infringe. Further, this helps defendants rather than patent owners since a non-infringement defense is preferred to proving invalidity in court.

Copyright © 2020 Robert Moll. All rights reserved.

Monday, May 25, 2020

National Law Review - To promote Innovation, Congress Should Lessen Restrictions on Injunctive Relief for Patent Owners

In a National Law Review article: To promote Innovation, Congress Should Lessen Restrictions on Injunctive Relief for Patent Owners, Paul Michel, retired Chief Judge of the US Court of Appeals of the Federal Circuit, tackles the issue of injunctive relief for valid and infringed US patents.

Read the article for the argument, but here are a few of his observations:

"For much of our country’s history, permanent injunctions were the norm once patent infringement and validity were proven at trial by the patent owner. And getting an injunction depended on facts, not the patent owner’s business model – for example, whether they manufactured or licensed their invention. The practice was stable for all of that time – until recently."

"In 2006, in the Supreme Court’s eBay Inc. v. MercExchange, L.L.C. decision, the Court upended this settled practice, ruling that injunctions should not be automatically issued in patent cases and clarifying that courts must apply a four-part test to determine whether an injunction should be granted."

"For some years after, the pattern of injunction grants changed little. But eventually, it shifted greatly, as lower courts began to make injunction determinations based primarily on the patent owner’s identity. Those who manufacture products continued to get injunctions, while those who chose to license their patents instead, no longer did."

Copyright © 2020 Robert Moll. All rights reserved.