Articles Posted in Patent Office

SCOTUS-300x92As reported by the AIPLA, the Supreme Court on November 27, 2017 heard oral argument on whether the Patent Trial and Appeal Board (PTAB) is required by 35 U.S.C. 318(a) to address every patent claim challenged in a petition for inter partes review (IPR).  SAS Institute, Inc. v. Lee, U.S., 16-969, oral argument 11/27/2017.

Petitioner’s Argument

SAS pointed out that Section 318(a) of the Patent Act states that, if an IPR is instituted, the PTAB “shall” issue a final written decision on “any patent claim challenged by the petitioner.” Justice Sotomayor pointed out that no IPR was instituted with respect to some of the claims in the petition, and asked SAS to clarify what relief was being sought.

2017-10-20-BlogPhotoA 7-4 of the en banc decision of the Federal Circuit concludes that the Patent Trial and Appeal Board improperly requires a patent owner in an inter partes review (IPR) to show that proposed amended patent claims are patentable before a motion to amend those claims will be granted,

In an unusually opinion, the deeply divided the Court produced five opinions, none of which had enough backers to constitute the opinion of the Court. The most thoughtful opinion was 68 pages opinion, but only agreed upon by five of the judges.  It concluded 5-6 that the statute unambiguously prohibited imposing on the patentee a burden of showing patentability, requiring no deference to the PTAB rule under Chevron, U.S.A., Inc. v. Nat. Res. Def. Council, Inc., 467 U.S. 837 (1984). However, the opinion picked up two additional votes of Judges Dyk and Reyna, who concurred in the result based on an alternative rationale conceding the ambiguity of the statute but nonetheless denying deference to the PTAB rule.

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San Francisco, California – The U.S. Patent and Trademark Office (“USPTO”) invalidated key claims in the so-called “podcasting patent” last week after a petition for review from the Electronic Frontier Foundation (“EFF”). This decision significantly curtails the ability of a patent troll to threaten podcasters big and small.

“We’re grateful for all the support of our challenge to this patent. Today is a big victory for the podcasting community” said EFF Staff Attorney Daniel Nazer, who also holds the Mark Cuban Chair to Eliminate Stupid Patents. “We’re glad the Patent Office recognized what we all knew: ‘podcasting’ had been around for many years and this company does not own it.”

The “podcasting patent” became big news in 2013, when a company called Personal Audio, LLC, began demanding licensing fees from podcasters including comedian Adam Carolla and three major television networks. Personal Audio doesn’t do podcasting itself, but instead used its patent to claim infringement and collect payouts from actual creators.

In petitions filed with Patent Office, EFF showed that Personal Audio did not invent anything new before it filed its patent application, and, in fact, other people were podcasting for years previously. Earlier examples of podcasting include Internet pioneer Carl Malamud‘s “Geek of the Week” online radio show and online broadcasts by CNN and the Canadian Broadcasting Corporation (CBC).

“We have a lot to celebrate here,” said EFF Staff Attorney Vera Ranieri. “But unfortunately, our work to protect podcasting is not done. Personal Audio continues to seek patents related to podcasting. We will continue to fight for podcasters, and we hope the Patent Office does not give them any more weapons to shake down small podcasters.”

EFF partnered with attorneys working pro bono and the Cyberlaw Clinic at Harvard‘s Berkman Center for Internet and Society to craft the petition for review with the USPTO.

This edited article was provided by the Electronic Frontier Foundation, a nonprofit group which advocates for innovators and users of technology. The article has been licensed under the Creative Commons Attribution License.

This should not be taken as legal advice specific to any individual network operator. If you want such advice, please consult a copyright attorney.

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All utility patents that issued by the U.S. Patent and Trademark Office (“USPTO”) from applications filed on or after December 12, 1980 are subject to maintenance fees, which must be paid to maintain the patent in force. Information regarding which patents are subject to maintenance fees and the time of payment for maintenance fees is found in Chapter 2500: Maintenance Fees of the Manual of Patent Examining Procedure.

Maintenance fees are due three times during the life of a patent, and may be paid without surcharge at:

• Three to three and a half years after the date of issue for the first payment;

Indianapolis, Indiana – The U.S. Department of Commerce’s United States Patent and220px-IUB_-_Law_School_-_P1100601.jpg Trademark Office (“USPTO”) yesterday announced the selection of 19 law schools, including Indiana University Maurer School of Law, that will join the USPTO’s Law School Clinic Certification Pilot Program this fall. Indiana University Maurer School of Law (pictured) and four other law schools will join both the Patent and Trademark portions of the Program, four law schools will join the Patent portion of the Program, and ten law schools will join the Trademark portion of the Program. These law schools join the 28 law schools currently participating in the Program.

The selection committees chose these schools based on their solid intellectual property curricula, pro bono services to the public, and community networking and outreach. The Program enables law students to practice patent and/or trademark law before the USPTO under the guidance of an approved faculty clinic supervisor.

“Expanding the USPTO’s Law School Clinic Certification Pilot Program will provide more students – future intellectual property lawyers – with the real-world experience and tools crucial to tackle the complexities of today’s IP law landscape,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee. “The addition of law schools and students in the program will also increase pro bono representation to American businesses and entrepreneurs, thereby helping ensure they have the resources to grow, create jobs and compete globally.”

Evansville, Indiana – In the matter of Berry Plastics Corp. v. Intertape Polymer Corp., Indiana patent attorneys for Berry Plastics Corporation (“Berry”) invoked the crime-fraud exception to the attorney-client privilege, asking the court to compel Intertape Polymer Corporation (“Intertape”) to produce documents and testimony it had withheld as privileged. Magistrate Judge William G. Hussmann, Jr. of the Southern District of Indiana denied the request.

This Indiana patent lawsuit was filed in January 2010 and seeks a declaratory judgment. Plaintiff Berry of Evansville, Indiana requested a judgment that Patent No. 7,476,416, titled Process for Preparing Adhesive Using Planetary Extruder, was invalid and unenforceable due to inequitable conduct before the U.S. Patent and Trademark Office (“USPTO”) by Intertape, a company located in Bradenton, Florida.

In this current order, Magistrate Judge Hussmann addresses Berry’s request to compel Intertape to produce documents and testimony that had been withheld as subject to attorney-client privilege. Indiana patent lawyers for Berry argued that this was proper because Intertape had engaged in inequitable conduct or defrauded the USPTO.

The Magistrate first emphasized that this ruling pertained only to discovery, as the question of whether Intertape had perpetrated a fraud upon the USPTO was one of the ultimate issues in the litigation. As such, that question of fact would be decided at trial by Chief Judge Richard L. Young.

The general rule in discovery is that a party to litigation is entitled to discover from his adversary “any nonprivileged matter that is relevant to any party’s claim or defense.” An exception to the attorney-client privilege is made when the communication between the attorney and the client is made in furtherance of a crime or fraud. To successfully invoke this exception, Berry must offer evidence demonstrating that:

1) Intertape made a false representation as to a material fact;
2) Intertape made its false representation with intent to deceive;
3) the USPTO justifiably relied upon Intertape’s false representation; and
4) the USPTO suffered an injury as a consequence of its reliance on Intertape’s false representation.

In an attempt to prove that the elements of the crime-fraud exception applied, Berry offered “numerous allegations and … extensive evidence suggesting Intertape engaged in inequitable conduct or defrauded” the USPTO. Intertape responded to each allegation with “numerous defenses and extensive evidence suggesting its dealings with the USPTO were lawful and forthright.”

The Magistrate held for Intertape. Citing Federal Circuit precedent, which governs the application of the crime-fraud exception to privilege in patent cases, the court called the piercing of the attorney-client privilege an “extreme remedy.” The rule in such cases is that, if the court were to find Intertape’s explanation satisfactory, it must leave the privilege intact. After an analysis of the defenses proffered by Intertape, the court found that Intertape’s explanation for each of the allegations of fraud sufficient to avoid a piercing of the privilege.

Practice Tip: Magistrate judges are adjuncts to Article III district judges. They often dispose of pretrial matters such as motions, evidentiary hearings and pretrial conferences. However, their authority, and thus their role, in federal litigation is constrained by constitutional and statutory limits. Because the factual issue of whether Intertape committed fraud against the USPTO was one of the ultimate issues in the litigation, Magistrate Hussman expressly limited his ruling in this opinion to the discovery dispute before him. At trial, Chief Judge Young, in his role as the ultimate finder of fact, may determine that Intertape did, indeed, commit fraud.

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Washington, D.C. — The Government Accountability Office (“GAO”) finds the number of patent infringement suits and defendants has risen substantially in recent years.  Some potential causes of this increase include vague, overbroad patents, the potential for large monetary awards from the courts and the increased perception of intellectual property as a valuable asset.

Changes in the Intellectual Property Landscape

From 2000 to 2010, the number of patent infringement lawsuits in the federal courts fluctuated slightly, and from 2010 to 2011, the number of such lawsuits increased by about a third.  Some stakeholders GAO interviewed said that the increase in 2011 was most likely influenced by the anticipation of changes in the 2011 Leahy-Smith America Invents Act (“AIA”), which made several significant changes to the U.S. patent system, including limiting the number of defendants in a lawsuit, causing some plaintiffs that would have previously filed a single lawsuit with multiple defendants to break the lawsuit into multiple lawsuits.  In addition, GAO’s detailed analysis of a representative sample of 500 lawsuits from 2007 to 2011 shows that the number of overall defendants in patent infringement lawsuits increased by about 129 percent over this period.  These data also show that companies that make products brought most of the lawsuits and that nonpracticing entities (“NPE”) brought about a fifth of all lawsuits.  GAO’s analysis of these data also found that lawsuits involving software-related patents accounted for about 89 percent of the increase in defendants over this period.

Washington, D.C. — The U.S. Patent Office (“USPTO”) and federal courts may be affected by a government shutdown, which will begin tomorrow if Congress does not enact a continuing resolution to fund government operations today. 

The federal court system will not be affected immediately.  During the first 10 business days of a lapse in appropriations, the judiciary will use available fee and no-year balances to pay judges and court employees, and to maintain court operations.  Courts will continue to operate, but court personnel have been instructed to conserve funding as much as possible by delaying or deferring expenses that are not critical to the performance of their constitutional responsibilities.

After the 10-day period, if there is still no appropriation, the judiciary will operate under the terms of the Anti-Deficiency Act, which allows “essential work” to continue during a lapse in appropriations. Among the definitions of “essential work” are powers exercised under the Constitution, which include activities to support the exercise of Article III judicial powers, specifically the resolution of cases.

Washington, DC

On January 18, 2013, the U.S. Patent and Trademark Office on issued final rules setting revised patent fees under Section 10 of the America Invents Act. (78 Fed. Reg. 4211). Section 10 of the AIA permits the USPTO to set or adjust by rule any fee under Title 35 or Title 15 for any services performed by or materials furnished by the Office. According to the statute, the fees may only recover the aggregate estimated uspto.JPGcosts for patent and trademark processing, activities, services, and materials. In its final rule notice, the Office said the fee-setting authority would permit sustainable funding and reduce the patent application backlog. According to the Federal Register notice:
The fee schedule in this final rule will recover the aggregate estimated costs of the Office while achieving strategic and operational goals, such as implementing a sustainable funding model, reducing the current patent application backlog, decreasing patent application pendency, improving patent quality, and upgrading the patent IT business capability and infrastructure.
For the most part, the fees in the final rules are the same as those in the proposal published last September (77 Fed. Reg. 55028, 9/6/2012). Many of the new front-end fees are reduced, such as the basic filing fee for an original patent application (reduced from $380 to $280), and the new fees include the 50% discount for small entities and 75% discount for micro entities. Among the differences between the proposed and final fees, the following are examples for non-small entity applicants:
• Correction of inventorship after first Office action (§1.17(d))
Proposed: $1,000; Final: $600
• Issue fee paid before January 1, 2014 (§1.18(a)(2))
Proposed: $960; Final: $1,780
• Ex parte reexamination fee (§1.20(c)(1)):
Proposed: $15,000; Final: $12,000
• Ex parte reexamination fee after supplemental examination (§1.20(k)(2))
Proposed: $13,600; Final: $12,000
• Notice of appeal to PTAB (§41.20(b)(1))
Proposed: $1,000; Final: $800
The Patent Public Advisory Council reviewed the September 2012 proposed rules and noted the many of the fees were tied to reducing pendency, using a goal of 10 months to the first Office action by 2015, and a goal of 20 months total pendency by 2016. Under the final rules, achievement of those two goals is pushed back to 2016 and 2017 respectively. In addition, the Office anticipates a reduced backlog and inventory of approximately 335,000 patent applications by 2016. For most of the fees, the effective date is March 19. 2013.

Washington, DC. The US Patent Office has released a proposed new set of rules of professional responsibility, completely redrafted from the present professional responsibility rules. The proposed rules would cover patent lawyers in IndianaThumbnail image for Thumbnail image for Thumbnail image for uspto.JPG and elsewhere, and are based on the American Bar Association’s 1983 Model Rules. The Office also proposes to revise the existing procedural rules governing disciplinary investigations.

The current Rules have not been revised since 1985 and is also based on the previous ABA Model Rules. Since that time, the vast majority of State bars in the United States have adopted substantive disciplinary rules based on the newer ABA Model Rules of Professional Conduct.

According to the notice from the Office, the extensive changes are meant to bring standards of ethical practice before the Office into closer conformity with the Rules of Professional Conduct adopted by nearly all States and the District of Columbia, while addressing circumstances particular to practice before the Office.

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