Wednesday, September 23, 2015

Federal Circuit - Laches May Bar Damages for Patent Infringement Claims Brought With the Six-Year Limit of 35 USC 286

In SCA Hygiene Products v. First Quality Baby Products, the Federal Circuit held the defense of laches (unreasonable, prejudicial delay in commencing suit) may bar recovery of damages on a patent infringement claim brought within 35 USC §286's six-year limit after considering the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. on laches in a copyright case.

The SCA court noted A.C. Aukerman Co. v. R.L. Chaides Construction Co. stated the following principles regarding the defense of laches:

1. Laches is cognizable under 35 U.S.C. § 282 (1988) as an equitable defense to a claim for patent infringement.

2. Where the defense of laches is established, the patentee’s claim for damages prior to suit may be barred.

3. Two elements underlie the defense of laches: (a) the patentee’s delay in bringing suit was unreasonable and inexcusable, and (b) the alleged infringer suffered material prejudice attributable to the delay.

4. A presumption of laches arises where a patentee delays bringing suit for more than six years after the date the patentee knew or should have known of the alleged infringer’s activity.

5. A presumption has the effect of shifting the burden of going forward with evidence, not the burden of persuasion.

The SCA court stated laches can prevent an injunction, but in such a case the infringer could be required to pay an ongoing royalty. The majority (6 to 5) issued a 60-page opinion that in the end states the US Patent Act of 1952 codified the case law which included the laches defense as one of the "unenforceability defenses."

Also see my related article: CAFC - SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC - Reviewing Laches and Equitable Estoppel.

Copyright © 2015 Robert Moll. All rights reserved.

Monday, September 21, 2015

PTAB - Webinar Proposed AIA Trial Rules on Thursday, October 1

Today, PTAB notified it is hosting a free webinar on the proposed AIA trial rules noon to 1 pm ET on Thursday, October 1.

As stated in the notice: "Lead Judge Susan Mitchell will walk through the proposed rule changes followed by a discussion with Lead Judge Mike Tierney and Lead Judge Tom Gianetti about the background, rationale, and implications of the proposed rules. To review the proposed rules in advance, please visit the Federal Register Notice.

On Tuesday, October 6th, AIPLA is holding a companion webinar to address the proposed rule changes from AIA trial practitioners' perspectives, including views from Todd Baker of Oblon and Joe Palys of Paul Hastings. The practitioners will address the practical implications of the rules and how they may alter current AIA trial practice and strategy.

For more information about AIPLA's webinar.

Together, these two programs are designed to address the proposed AIA trial rules from all angles. And at the conclusion of each webinar, viewers will have the opportunity to pose questions to the judges and practitioners. Please attend to participate in the development of the AIA trial rules and share your input."

Webinar Access Information:

Event address for attendees     
Event number: 994 593 512
Event password: 123456
Audio conference: 1-650-479-3208
Access code: 994 593 512

Copyright © 2015 Robert Moll. All rights reserved.

Thursday, September 17, 2015

USPTO - Interview Practice - New Automated Interview Request (AIR)

Today, the USPTO released "a new online interview scheduling tool Automated Interview Request (AIR) that allows applicants to request an interview with an Examiner for their pending patent application. By submitting this type of interview request, the pending patent application will be in compliance with the written authorization requirement for Internet communication in accordance with MPEP §502.03. This authorization will be in effect until the Applicant provides a written withdrawal of authorization to the Examiner of record."

The USPTO AIR form is available on the interview practice page, which gives tips on interviews, which can help applicants efficiently prosecute patents and a link to video conferencing.

The USPTO directs questions to and interview specialists.

Copyright © 2015 Robert Moll. All rights reserved.

Tuesday, September 15, 2015

PTAB - Streamlined, Expedited Patent Appeal Pilot for Small and Micro Entities

The Patent Trial and Appeal Board (PTAB) notified of an interesting pilot program that may be useful if you are a small or micro entity facing an appeal.

"The PTAB is pleased to announce a second pilot program that will allow small or micro entity appellants with only a single ex parte appeal pending before the Patent Trial and Appeal Board (Board) to expedite review of that appeal in return for agreeing to streamline the appeal. Specifically, the appeal must not involve any claim subject to a rejection under 35 U.S.C. § 112, and the appellant must agree to the disposition of all claims subject to each ground of rejection as a single group and waive any request for an oral hearing.

The Streamlined, Expedited Patent Appeal Pilot for Small Entities will allow small or micro entity appellants who streamline their appeals to have greater control over the priority with which their appeals are decided. The streamlining of appeals under this pilot will also assist the Board to more efficiently reduce the overall inventory of appeals pending before the Board.

Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge under 37 C.F.R. § 41.3. The Office has waived the petition fee and provided a form-fillable PDF (Form PTO/SB/441) for use in filing the certification and petition. For more information about the pilot program and how to participate, please refer to the Federal Register notice at

PTAB also notified it "has recently published statistics on the Expedited Patent Appeal Pilot program on its Web page at

The statistics show that petitions filed under the Expedited Patent Appeal Pilot program are being decided in an average of two days from the date of filing and that decisions on appeals accorded special status under this program currently are issued in an average of one month from the date of grant of the petition."

If you meet the requirements, the PTAB is suggesting you may get an appeal decision in about one month based on the statistics. Yes, appellant must agree to the disposition of all claims subject to each ground of rejection as a single group" and "waive any request for an oral hearing," but if you are willing to do that, meet all requirements, and need a quick decision it sounds useful. A caveat if many people use this procedure -- will the "one month to decision" promise hold?

Copyright © 2015 Robert Moll. All rights reserved.

Monday, September 7, 2015

USPTO - Improving Global Patent Prosecution - September 8, 2015

This arrived on Labor Day, the USPTO reminds:

"The Patent Quality Chat webinar series continues tomorrow, Tuesday, September 8th, from noon – 1pm EDT; this month’s topic is Improving Global Patent Prosecution, hosted by Deputy Commissioner for International Patent Cooperation Mark Powell and Director of International Programs Maria Holtmann. Mr. Powell and Ms. Holtmann will discuss how to improve global patent prosecution highlighting a new program the USPTO is exploring with other IP offices – global preliminary search.
Attend tomorrow (Tues 9/8) at noon using this link:

Throughout the Chat webinar event, stakeholder participation will be solicited via our event email box:
More information about the Patent Quality Chat webinar series, including a recording of last month’s event on Measuring Patent Quality, can be found on the Chat Web page:

All of the webinars in this series are free and open to the public. No CLE credit will be available through the USPTO. Video recordings and presentation materials from the webinars will be posted on our Patent Quality Chat Web page accessed online through the link above after each event.
Upcoming Patent Quality Chat webinar series for 2015
October 13: Update on the Enhanced Patent Quality Initiative
November 10: Special Programs for Patent Prosecution

All events are exclusively via webinar from noon – 1 p.m. EDT on the second Tuesday of the month."

Copyright © 2015 Robert Moll. All rights reserved.