Patent Office

December 13, 2022

Patent Office Issues 273 Patents to Indiana Citizens in November 2022

The U.S. Patent and Trademark Office issued the following 273 patent registrations to businesses and individuals in Indiana during November 2022, based on applications filed by Indiana patent attorneys:

Patent No.	Title
US 11497657 B2	Absorbent articles having channels and wetness indicator
US 11497657 B2	Accessing client credential sets using a key
US 11509641 B2	Acoustic panel
US D969351 S	Active control valve for a fluid pump
US 11486386 B2	Adaptive high pressure fuel pump system and method for predicting pumped mass

March 17, 2022

Patent Office Issues 168 Patents to Indiana Persons and Businesses

By Overhauser Law Offices, LLC

The U.S. Patent Office issued the following 168 patent registrations to persons and businesses in Indiana in January 2022, based on applications filed by Indiana Patent attorneys:

	Patent No.	Title
1	PP0033,910	Peony plant named `RTPIV 849-04`
2	PP0033,909	Peony plant named `RTPIV 849-01`
3	D0941,959	Faucet
4	D0941,780	Contact wafer
5	D0941,779	Electrical connector

October 31, 2019

Patent Office Updates Eligibility Guidelines for Patentability Under Section 101

By Overhauser Law Offices, LLC

October 17, 2019. The US Patent Office has issued an Update on “Subject Matter Eligibility.” These Guidelines are used by the Patent Office to determine whether patent claims are eligible for protection under 35 USC 101.

Patent claims satisfy § 101’s eligibility requirement unless they are directed to an abstract idea (or other ineligible principle) and fail to add any inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014). In particular, claims that recite a specific advance in computer technology—including, for example, an unconventional arrangement of computer components—are eligible.

It is notoriously unclear to understand how should be applied. For example , Judge Plager of the Federal Circuit (and former Dean of the School of Law and Indiana University – Bloomington) has stated that the “body of doctrine” is “incoherent,” “render[ing] it near impossible to know with any certainty whether [an] invention is or is not patent eligible.” Interval Licensing LLC, 896 F.3d at 1348 (Plager, J., concurring and dissenting). Other jurists have noted that the case law is “baffling,” “inconsistent,” and that “needs clarification by higher authority, perhaps by Congress.” Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d 1333, 1371 (Fed. Cir. 2019); Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1360 (Fed. Cir. 2018)

November 29, 2017

Supreme Court Hears Oral Argument Over Non-Instituted Claims in PTAB Decisions

By Overhauser Law Offices, LLC

As 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.

October 20, 2017

Patentability of Amended Claims in IPR the Burden of the Petitioner’s Issue, Not the Patentee

By Overhauser Law Offices, LLC

A 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.

April 15, 2015

Patent Law: EFF Busts Podcasting Patent, Invalidating Key Claims at Patent Office

By Overhauser Law Offices, LLC

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.

March 26, 2015

Patent Law: Maintaining Your Patent

By Overhauser Law Offices, LLC

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;

July 31, 2014

Indiana University Maurer School of Law Added to USPTO Law School Clinic Certification Pilot Program

By Overhauser Law Offices, LLC

Indianapolis, Indiana – The U.S. Department of Commerce’s United States Patent and 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.”

June 26, 2014

Indiana Patent Law: Magistrate Declines to Grant Crime-Fraud Exception to Attorney-Client Privilege

By Overhauser Law Offices, LLC

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.

October 16, 2013

Assessing Factors That Affect Patent Infringement Litigation Could Help Improve Patent Quality

By Overhauser Law Offices, LLC

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.