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.