Thursday, November 29, 2018

USPTO - Strategic Plan 2018-2022

Today, the United States Patent and Trademark Office (USPTO) published its Strategic Plan:

"The strategic plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and, to provide domestic and global leadership to improve intellectual property policy, enforcement, and protection worldwide.

We are confident in attaining the goals set out in this plan and look forward to the continued engagement and feedback from our stakeholders and employees, said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Andrei Iancu.

Together we celebrate innovation and entrepreneurship—we are very proud of the men and women who stand behind a well-balanced American intellectual property system. In conjunction with the development of the strategic plan, the USPTO is committed to making execution of the strategic plan an express responsibility of USPTO executives. This includes monitoring implementation of the plan, as well as keeping employees, stakeholders, and the public informed of progress. The USPTO website and the Data Visualization Center are key components of this communications commitment. 

A draft USPTO 2018-2022 Strategic Plan was posted on July 26, 2018, for employee review and feedback followed by a town hall meeting on July 24, 2018. The draft plan was then posted on the USPTO website on Aug. 22, 2018, and comments were solicited from stakeholders, customers, and the general public. Review and comments were also sought from the USPTO’s Patent and Trademark Public Advisory Committees, in addition to the three union bargaining unit presidents. Also, the proposed strategic plan was shared with the Department of Commerce, the Office of Management and Budget, and Congress."

For more information see as follows:

Copyright © 2018 Robert Moll. All rights reserved.

Tuesday, November 27, 2018

USPTO - Director Iancu - The Role of the Courts in Shaping Patent Law & Policy

On November 26, 2018, Director Iancu delivered remarks on The role of the courts in shaping patent law and policy as it relates to the complex topic of patent eligibility under 35 U.S.C. § 101.

Director Iancu refers to Judge Rich's guidance on applying 35 U.S.C. §101: "problems can arise due to the unfortunate … though clear commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of invention in § 101 which may be patentable, and to the conditions for patentability demanded by the statute …."

As Director Iancu stated "pursuant to the Patent Act of 1952, we should keep invalidity rejections in their own lanes. If something is not novel or is obvious, we should invalidate it under 102 or 103. If something is indefinite, or too broad to be fully enabled or described, we should invalidate it under 112. We have decades of case law from the courts and decades of experience at the PTO examining millions of patent applications, which guide us in our 102, 103 and 112 analyses. People know these standards and know how to apply these well-defined statutory requirements."

Judge Rich co-drafted the modern U.S. patent system in 1952. Much of that Act remains today. We might have been saved confusion and frustration that ensued in combining §§101/102/103 analysis if we simply took Judge Rich's advice. See Judge Giles Rich Wikipedia.

Copyright © 2018 Robert Moll. All rights reserved.

Sunday, November 25, 2018

CAFC - Berkheimer v. HP, Inc. - 35 USC 101 Patent Eligibility & USPTO Memo

In Berkheimer v. HP, Inc., the Federal Circuit clarified step two of the U.S. Supreme Court's Alice test for patent eligibility under 35 U.S.C. § 101. It noted that Mayo requires consideration of the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent eligible application. It noted that will be satisfied when the claim involves more than performance of well understood, routine, and conventional activities previously known to the industry.

Moreover, the Federal Circuit stated the question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact and must be proven by clear and convincing evidence.

Note this decision is an important case in determination of patent eligibility under 35 U.S.C. § 101, because it gives patent applicants and patent owners a means to push back on purely subjective opinion that a claim lacks an "inventive concept."

See also the USPTO Memo Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).

Copyright © 2018 Robert Moll. All rights reserved.

Friday, November 23, 2018

Supreme Court - Oil States Energy Services, LLC v. Greene's Energy Group, LLC - Inter Partes Review Not Unconstitutional

In Oil States Energy Services, LLC v. Greene's Energy Group, LLC, the Supreme Court considered "whether inter partes review- an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents- violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury."

The Supreme Court held that Inter Partes Review (IPR) proceedings (35 U.S.C. 311-319) before the Patent Trial and Appeal Board (PTAB) do not violate Article III or the Seventh Amendment of the Constitution. In short, Justice Thomas for seven of the justices reasoned that "the decision to grant a patent is matter involving public rights" and "inter partes review is simply a reconsideration of that grant ... Congress has permissibly reserved the PTO's authority to conduct that reconsideration."

Many commentators predicted inter partes review (IPR) would be held constitutional. A more tricky prediction is how much the USPTO's new regulations and policies will level the IPR playing field for patent owners in the future.

Copyright © 2018 Robert Moll. All rights reserved.

Wednesday, November 21, 2018

CAFC - Arista Networks, Inc. v. Cisco Systems, Inc. - No Assignor Estoppel in Inter Partes Review

In Arista Networks v. Cisco Systems, the Federal Circuit held that assignor estoppel has no place in inter partes review (IPR).

As background, assignor estoppel prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. Further, assignor estoppel prevents parties in privity with the assignor (e.g., a company founded by the assignor) from challenging validity. An IPR is a proceeding before the Patent Trial and Appeal Board for challenging the validity of any issued US patent.

Cisco had sued its competitor Arista for patent infringement of the claims of U.S. Patent No. 7,340,597 ("the '597 patent"), Method and Apparatus for Securing a Communications Device using a Logging Module, owned by Cisco. Arista petition for an IPR, and after instituting the IPR, the PTAB invalidated certain claims. Cisco argued assignor estoppel should prevent Arista challenging the validity in the IPR, because Dr. Cheriton the Arista co-founder had previously assigned the '597 patent to Cisco.

The Federal Circuit questioned did Congress intend for assignor estoppel to apply in IPR in the following manner:

"Cisco's primary argument in favor of applying assignor estoppel is that assignor estoppel is a well-established common-law doctrine that should be presumed to apply absent a statutory indication to the contrary. With this principle in mind, Cisco particularly takes issue with the Board's reasoning that Congress would have expressly provided for application of equitable defenses if it so desired.

There is some merit to Cisco's argument. In Westinghouse, the Court characterized assignor estoppel as "a rule well settled by 45 years of judicial consideration and conclusion" in the district and circuit courts, reaching back as early as 1880. Westinghouse, 266 U.S. at 349; see also Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 260 (1945) (Frankfurter, J., dissenting) ("The principle of fair dealing as between assignor and assignee of a patent whereby the assignor will not be allowed to say that what he sold as a patent was not a patent had been part of the fabric of our law throughout the life of this nation."). But, in Lear, Inc. v. Adkins, the Supreme Court appeared to cast some doubt on the doctrine's continued viability. 395 U.S. 653, 664-66 (1969). And although this court has held that the doctrine survived Lear, we did so recognizing that court decisions post-Lear "reveal[ed] some uncertainty about the continued vitality of the doctrine." Diamond Sci., 848 F.2d at 1223; see also id. ("Although Lear involved the licensing, rather than the assignment, of a patent, the opinion reviewed the history of `patent estoppel' in general, and indicated that the Court's previous decisions had sapped much of the vitality, if not the logic, from the assignment estoppel doctrine as well.").

With this history in mind, we recognize that "Congress is understood to legislate against a background of common-law adjudicatory principles." Astoria Fed. Sav. & Loan Ass'n v. Solimino, 501 U.S. 104, 108 (1991). "Thus, where a common-law principle is well established, . . . the courts may take it as given that Congress has legislated with an expectation that the principle will apply except `when a statutory purpose to the contrary is evident.'" Id. (quoting Isbrandtsen Co. v. Johnson, 343 U.S. 779, 783 (1952)); see also Impression Prods., Inc. v. Lexmark Int'l, Inc., 137 S.Ct. 1523, 1536 (2017). But see United States v. Craft, 535 U.S. 274, 288 (2002) ("The common-law rule was not so well established . . . that we must assume that Congress considered the impact of its enactment on the question now before us."). But even assuming that assignor estoppel could be considered such a well-established common law principle, we nonetheless conclude that, here, "a statutory purpose to the contrary is evident." Astoria, 501 U.S. at 108 (quoting Isbrandtsen, 343 U.S. at 783). In particular, we view § 311(a) as governing the question of whether Congress intended assignor estoppel to apply in the IPR context.13

Section 311(a) states, in relevant part: "(a) In General.—Subject to the provisions of this chapter, a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent. . . ." § 311(a) (emphasis added).

Arista contends that § 311(a) unambiguously leaves no room for assignor estoppel in the IPR context, given that the statute allows any person "who is not the owner of a patent" to file an IPR.14 We agree. Where "the statutory language is plain, we must enforce it according to its terms." King v. Burwell, 135 S.Ct. 2480, 2489 (2015); see also Hardt v. Reliance Standard Life Ins. Co., 560 U.S. 242, 251 (2010). In our view, the plain language of this statutory provision is unambiguous.

Cisco contends that this statute does not directly speak to the question of assignor estoppel in IPRs. Instead, Cisco views § 311(a) as reflecting two principles: first, that an IPR must begin as an adversarial proceeding, rather than as a means for a patent owner to confirm the patentability of certain claims; and second, that there is no Article III-like standing requirement for filing an IPR. In our view, however, the statute, by its terms, does more—it delineates who may file an IPR petition. The plain language of § 311(a) demonstrates that an assignor, who is no longer the owner of a patent, may file an IPR petition as to that patent.

This conclusion is consistent with Congress's express incorporation of equitable doctrines in other related contexts. For example, a statute governing International Trade Commission investigations states that "[a]ll legal and equitable defenses may be presented in all cases." 19 U.S.C. § 1337(c); cf. 15 U.S.C. § 1069 (providing in the Lanham Act context that "[i]n all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied"). And although such express inclusion of equitable defenses in other contexts is not dispositive of the issue presented in this case, it is further evidence of congressional intent.

Finally, Cisco contends that allowing assignor estoppel in other forums, such as in the ITC and in district court, while not allowing it in the IPR context creates an inconsistency that invites forum shopping. We, however, do not view this as an inconsistency, but rather as an intentional congressional choice. Such a discrepancy between forums—one that follows from the language of the respective statutes—is consistent with the overarching goals of the IPR process that extend beyond the particular parties in a given patent dispute. See Cuozzo, 136 S. Ct. at 2144 ("[I]nter partes review helps protect the public's `paramount interest in seeing that patent monopolies . . . are kept within their legitimate scope.'" (quoting Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co., 324 U.S. 806, 816 (1945))). Moreover, any policy choices regarding forum shopping are better left to Congress than to this court. Cf. SAS Inst., 138 S. Ct. at 1358 ("Policy arguments are properly addressed to Congress, not this Court."); Click-to-Call Techs., LP v. Ingenio, Inc., 899 F.3d 1321, 1350 (Fed. Cir. 2018) (Taranto, J., concurring) ("If there turns out to be a problem in the statute's application according to its plain meaning, it is up to Congress to address the problem.").

In sum, we conclude that § 311(a), by allowing "a person who is not the owner of a patent" to file an IPR, unambiguously dictates that assignor estoppel has no place in IPR proceedings."

Copyright © 2018 Robert Moll. All rights reserved.

Sunday, November 18, 2018

US Supreme Court - WesternGeco LLC v. ION Geophysical Corp. - Damages for Patent Infringing Exports

In WesternGeco LLC v. ION Geophysical Corp., the US Supreme Court held that "under the Patent Act, a company can be liable for patent infringement if it ships components of a patented invention overseas to be assembled there." See 35 U. S. C. §271(f)(2). The Court stated under 35 U.S.C. §284  "a patent owner who proves infringement under this provision is entitled to recover damages" and held the patent owner should recover its lost foreign profits ($90 Million).

Copyright © 2018 Robert Moll. All rights reserved.

Saturday, November 3, 2018

IP Watchdog - Director Andrei Iancu lauds risk takers, calls patent troll narrative "Orwellian doublespeak"

The article Director Andrei Iancu lauds risk takers, calls patent troll narrative "Orwellian doublespeak" is encouraging if you are tired of the patent troll narrative. Things appear to be shifting in favor of patent owners at the USPTO.

Copyright © 2018 Robert Moll. All rights reserved.