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.