Patently-O https://patentlyo.com America's leading patent law blog Wed, 16 Jan 2019 17:27:36 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.9 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law Comment Period for Proposed Amendment to Rule 30(b)(6), Others, Closes February 15 https://patentlyo.com/hricik/2019/01/proposed-amendment-february.html https://patentlyo.com/hricik/2019/01/proposed-amendment-february.html#comments Wed, 16 Jan 2019 17:06:23 +0000 https://patentlyo.com/?p=26050 By David Hricik

30(b)(6) depositions are part of the toolkit of any competent patent litigator.  The proposed change would, I think, help with some questions about the rule, but leave others unresolved.  The proposed amendment to Rule 30(b)(6) is below, with the proposed new language not in italics:

In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must [proposal deletes the present word “then”] designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. Before or promptly after the notice or subpoena is served, and continuing as necessary, the serving party and the organization must confer in good faith about the number and description of the matters for examination and the identity of each person the organization will designate to testify. A subpoena must advise a nonparty organization of its duty to make this designation and to confer with the serving party.

Continue reading Comment Period for Proposed Amendment to Rule 30(b)(6), Others, Closes February 15 at Patently-O.

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By David Hricik

30(b)(6) depositions are part of the toolkit of any competent patent litigator.  The proposed change would, I think, help with some questions about the rule, but leave others unresolved.  The proposed amendment to Rule 30(b)(6) is below, with the proposed new language not in italics:

In its notice or subpoena, a party may name as the deponent a public or private corporation, a partnership, an association, a governmental agency, or other entity and must describe with reasonable particularity the matters for examination. The named organization must [proposal deletes the present word “then”] designate one or more officers, directors, or managing agents, or designate other persons who consent to testify on its behalf; and it may set out the matters on which each person designated will testify. Before or promptly after the notice or subpoena is served, and continuing as necessary, the serving party and the organization must confer in good faith about the number and description of the matters for examination and the identity of each person the organization will designate to testify. A subpoena must advise a nonparty organization of its duty to make this designation and to confer with the serving party. The persons designated must testify about information known or reasonably available to the organization. This paragraph (6) does not preclude a deposition by any other procedure allowed by these rules.

While I appreciate the idea behind the change — to foster cooperation by requiring conferring about the topics and so on — the case law about the use of Rule 30(b)(6) demonstrate to me that a lot more could be done to eliminate problems. (E.g., can you instruct a witness not to answer if the question is outside the scope of the notice.)   If they’re going to amend it, I would hope for more is one way of stating it.

You can find more about the proposals, which include changes related to petitions at the appellate level for panel rehearing and rehearing en banc, here (to save you time, 30(b)(6) starts on page 31).

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New Paper on Ethics and Social Media https://patentlyo.com/hricik/current-affairs/2019/01/paper-ethics-social.html https://patentlyo.com/hricik/current-affairs/2019/01/paper-ethics-social.html#respond Wed, 16 Jan 2019 13:30:32 +0000 https://patentlyo.com/?p=26048 By David Hricik

I’ve long written about ethics and technology (my old paper about email security, I am proud to say, pushed back on the idea that (at least in the 1990s) email was insecure).  For an AIPLA speech I’m giving next month, I wrote a paper on various ethical issues that arise with the use of social media.  It is available here.

The issue that I’ve run into a few times now in IP cases is judicial research into facts. I represented people in one of those matters, which was before the OED, and can’t reveal anything much about it, and the other was a case where judicial research led to a show cause order that was based upon…. poor judicial research.  The paper points out those and similar problems.

Continue reading New Paper on Ethics and Social Media at Patently-O.

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By David Hricik

I’ve long written about ethics and technology (my old paper about email security, I am proud to say, pushed back on the idea that (at least in the 1990s) email was insecure).  For an AIPLA speech I’m giving next month, I wrote a paper on various ethical issues that arise with the use of social media.  It is available here.

The issue that I’ve run into a few times now in IP cases is judicial research into facts. I represented people in one of those matters, which was before the OED, and can’t reveal anything much about it, and the other was a case where judicial research led to a show cause order that was based upon…. poor judicial research.  The paper points out those and similar problems.

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Likelihood of Confusion for Two Businesses In Operation for 40 Years https://patentlyo.com/patent/2019/01/26039.html https://patentlyo.com/patent/2019/01/26039.html#comments Wed, 16 Jan 2019 04:43:32 +0000 https://patentlyo.com/?p=26039 Likelihood of Confusion for Two Businesses In Operation for 40 Years

In re Guild Mortgage Company (Fed. Cir. 2019)

Guild Mortgage’s above-pictured mark was refused registration was refused based upon a Trademark Trial & Appeal Board (TTAB) conclusion of a likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT.”

On appeal, the Federal Circuit has vacated that decision — holding that the TTAB “failed to consider relevant argument and evidence directed to DuPont factor 8.”

Under Lanham Act § 2(d), the USPTO refuses to register marks that are likely to cause confusion or mistake based upon a resemblance to a prior used or registered mark.

No trademark … shall be refused registration on the principal register on account of its nature unless it—(d) Consists of or comprises a mark which so resembles a mark registered in the [USPTO], or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1052(d). The Federal Circuit’s predecessor court – the CCPA – set out a series of factors in a case captioned In re E.I.

Continue reading Likelihood of Confusion for Two Businesses In Operation for 40 Years at Patently-O.

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Likelihood of Confusion for Two Businesses In Operation for 40 Years

In re Guild Mortgage Company (Fed. Cir. 2019)

Guild Mortgage’s above-pictured mark was refused registration was refused based upon a Trademark Trial & Appeal Board (TTAB) conclusion of a likelihood of confusion with the registered mark “GUILD INVESTMENT MANAGEMENT.”

On appeal, the Federal Circuit has vacated that decision — holding that the TTAB “failed to consider relevant argument and evidence directed to DuPont factor 8.”

Under Lanham Act § 2(d), the USPTO refuses to register marks that are likely to cause confusion or mistake based upon a resemblance to a prior used or registered mark.

No trademark … shall be refused registration on the principal register on account of its nature unless it—(d) Consists of or comprises a mark which so resembles a mark registered in the [USPTO], or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1052(d). The Federal Circuit’s predecessor court – the CCPA – set out a series of factors in a case captioned In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) (defining the DuPont Factors).

Those factors are:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. “impulse” vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).

(10) The market interface between applicant and the owner of a prior mark . . . .

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i.e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 1321 (Fed. Cir. 2014).

In this case – the particular factor being debated is Number 8 – longstanding “concurrent use without evidence of actual confusion.” Here, Guild Mortgage and Guild Investment have been using their marks concurrently in Southern California for more than 40 years without any evidence of confusion.  Guild Mortgage presented testimony from its CEO to the following :

Guild [Mortgage] has never received any communication from Guild Investment Management, Inc., or from any third party contending that Guild’s use of its mark has infringed upon Guild Investment Management Inc’s mark, or has caused confusion with regard to any other business which uses or incorporates the word “Guild” in its mark, in any way. Guild has no knowledge of ever receiving any inquiries from consumers regarding investment management services of any kind. Guild has never received any communication from consumers or any third party inquiring as to whether Guild was in any way affiliated with Guild Investment Management, Inc.

However, in its consideration of the DuPont factors, the TTAB did not address Factor 8 or the 40-year concurrent use. “The Board’s opinion does not mention factor 8, let alone address Guild’s argument and evidence directed to that factor. The Board erred in failing to consider Guild’s arguments and evidence.”

One factor here is whether the uncorroborated statement from Guild Mortgage’s CEO should be given any weight. Here, the Federal Circuit held that it should be given weight.

In this case, although Guild did not submit declarations from the owner of the registered mark or other parties testifying as to the absence of actual confusion, Guild nonetheless presented evidence of concurrent use of the two marks for a particularly long period of time—over 40 years—in which the two businesses operated in the same geographic market—southern California—without any evidence of actual confusion.

On remand, the TTAB will add-in its analysis of the 8th factor and then see whether its likelihood-of-confusion analysis sticks.

= = = = =

Similar issue in my hometown of Pittsburg Kansas with 70+ years of next-door competition between Chicken Annie’s and Chicken Mary’s. Fried Chicken War.

 

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Supreme Court Asked Whether “Control” over the IPR is Required to Trigger the 315(b) Time Bar https://patentlyo.com/patent/2019/01/supreme-whether-required.html https://patentlyo.com/patent/2019/01/supreme-whether-required.html#comments Tue, 15 Jan 2019 16:15:51 +0000 https://patentlyo.com/?p=26027 Supreme Court Asked Whether “Control” over the IPR is Required to Trigger the 315(b) Time Bar

by Dennis Crouch

WesternGeco LLC, v.  ION Geophysical Corp. (Supreme Court 2019) [Petition]

In 2018, WesternGeco seemingly won its international-patent-damages case against ION — with the court agreeing that lost-profit damages are available even for extra-territorial sales.  After winning its $100 million trial against ION, WesternGeco sued another competitor, Petroleum Geo-Services (PGS), for infringement.  PGS then challenged the asserted patents in an Inter Partes Review (IPR) proceeding that resulted in all of the claims being cancelled as obvious or anticipated.

35 U.S.C. §315(b) bars the Patent Office Director from instituting an IPR proceeding on a petition “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  By the end of its infringement trial, ION was time-barred — however, PTO still allowed ION to join PGS’s case once instituted – but gave it “spectator status.” Still, ION (but not PGS) defended the Board’s decision on appeal.

The Federal Circuit affirmed the Board decision, finding that unpatentability findings supported by substantial evidence, and that the Section 315(b) time-bar didn’t apply since ION did not have any direct or indirect control PGS’s IPR filings and PGS had a separate legitimate reason to file the IPR other than protecting ION.

Continue reading Supreme Court Asked Whether “Control” over the IPR is Required to Trigger the 315(b) Time Bar at Patently-O.

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Supreme Court Asked Whether “Control” over the IPR is Required to Trigger the 315(b) Time Bar

by Dennis Crouch

WesternGeco LLC, v.  ION Geophysical Corp. (Supreme Court 2019) [Petition]

In 2018, WesternGeco seemingly won its international-patent-damages case against ION — with the court agreeing that lost-profit damages are available even for extra-territorial sales.  After winning its $100 million trial against ION, WesternGeco sued another competitor, Petroleum Geo-Services (PGS), for infringement.  PGS then challenged the asserted patents in an Inter Partes Review (IPR) proceeding that resulted in all of the claims being cancelled as obvious or anticipated.

35 U.S.C. §315(b) bars the Patent Office Director from instituting an IPR proceeding on a petition “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”  By the end of its infringement trial, ION was time-barred — however, PTO still allowed ION to join PGS’s case once instituted – but gave it “spectator status.” Still, ION (but not PGS) defended the Board’s decision on appeal.

The Federal Circuit affirmed the Board decision, finding that unpatentability findings supported by substantial evidence, and that the Section 315(b) time-bar didn’t apply since ION did not have any direct or indirect control PGS’s IPR filings and PGS had a separate legitimate reason to file the IPR other than protecting ION.

WesternGeco presented evidence that the two companies worked together to launch the infringing product, and that their agreement included an indemnity agreement — with ION making a “product assurance pledge” for products delivered by PGS.  The Federal Circuit, however, disregarded the evidence as insufficient to create the specific privity needed to trigger the Section 315(b) time-bar.

Now, WesternGeco is back before the Supreme Court asking for review on the real-party-in-interest question. Here is how WesternGeco frames the question:

ION worked closely for years with another company, PGS, as its “launch partner,” to develop a product found to willfully infringe WesternGeco’s patents. ION and PGS shared an indemnity relationship, with ION making a “product assurance pledge” regarding the accused product and the asserted patents. After ION lost at trial and was concededly time barred from pursuing IPRs, PGS filed petitions (which ION later joined), resulting in the invalidation of many of WesternGeco’s patents. The Patent Office not only denied WesternGeco discovery into details of the PGS-ION relationship, it prohibited WesternGeco from even filing a motion for such discovery because WesternGeco did not already have evidence that ION “controlled” these IPRs. The Federal Circuit applied a “control” test in affirming.

The questions presented are:

1. Whether the court of appeals and agency erred by holding that “real party in interest, or privy of the petitioner” refers only to others who “control” the petitioner’s litigation before the agency.

2. Whether the Patent Office. may deny discovery—or even leave to file a discovery motion—designed to meaningfully test whether that statutory prohibition applies, and then invalidate a patent.

I see this as a good case for the Supreme Court to take and hear – especially since the court is already familiar with the patents and parties in question.  I find it interesting how the Federal Circuit identified the indemnification provision as “fairly standard” and not specific enough to trigger the real-party-in-interest or privity clauses of 315(b).

One issue of importance in this area is the implied Warranty Against Infringement found in Article 2 of the Uniform Commercial Code.

Unless otherwise agreed a seller who is a merchant regularly dealing in goods of the kind warrants that the goods shall be delivered free of the rightful claim of any third person by way of infringement or the like but a buyer who furnishes specifications to the seller must hold the seller harmless against any such claim which arises out of compliance with the specifications.

UCC 2-312(3).  Although the UCC does not apply to WesternGeco’s case, it likely applies in many others as a potential way to show sufficient privity to trigger the time-bar against against a supplier.

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How is the USPTO Operating During the Federal Government Shutdown? https://patentlyo.com/patent/2019/01/operating-federal-government-shutdown.html https://patentlyo.com/patent/2019/01/operating-federal-government-shutdown.html#comments Tue, 15 Jan 2019 02:49:23 +0000 https://patentlyo.com/?p=26021 How is the USPTO Operating During the Federal Government Shutdown?

by Dennis Crouch

Absent a more creative solution, the current Federal Government shutdown will continue until a new appropriations law is passed by Congress and signed by the President (or veto-overridden).  The Patent Office (USPTO) is caught-up in this, but in a little bit of a quirky way.

The USPTO is a fee funded agency.  Generally, patent applicants pay the USPTO, and the USPTO uses that money to pay the examiners.  However, Congress has not provided USPTO with authority to simply spend whatever it collects. Rather Congress declares annual appropriation amounts that may be spent – if collected.  If the USPTO brings-in more funds than appropriated then it can put those funds in a “Patent and Trademark Fee Reserve Fund” held by the US Treasury.

And, under the Patent Act, the USPTO can only spend funds that have been appropriated to the Agency.  As a consequence, the USPTO cannot spend new-money coming in the door and it cannot spend money in the aforementioned Reserve Fund (that is empty anyway).

So, how is the USPTO Operating:  The USPTO has continued to operate for the past 25 days without much of any slowdown — paying its employees and contractors.

Continue reading How is the USPTO Operating During the Federal Government Shutdown? at Patently-O.

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How is the USPTO Operating During the Federal Government Shutdown?

by Dennis Crouch

Absent a more creative solution, the current Federal Government shutdown will continue until a new appropriations law is passed by Congress and signed by the President (or veto-overridden).  The Patent Office (USPTO) is caught-up in this, but in a little bit of a quirky way.

The USPTO is a fee funded agency.  Generally, patent applicants pay the USPTO, and the USPTO uses that money to pay the examiners.  However, Congress has not provided USPTO with authority to simply spend whatever it collects. Rather Congress declares annual appropriation amounts that may be spent – if collected.  If the USPTO brings-in more funds than appropriated then it can put those funds in a “Patent and Trademark Fee Reserve Fund” held by the US Treasury.

And, under the Patent Act, the USPTO can only spend funds that have been appropriated to the Agency.  As a consequence, the USPTO cannot spend new-money coming in the door and it cannot spend money in the aforementioned Reserve Fund (that is empty anyway).

So, how is the USPTO Operating:  The USPTO has continued to operate for the past 25 days without much of any slowdown — paying its employees and contractors. Over the past several years, the PTO has begun placing some amount of appropriated spending into an “Operating Reserve” — treating the money as spent for the purposes of appropriations, even though it hasn’t really been spent.  The Administration has determined that it is proper to save that money on an annual basis and to spend the money now on operations despite the lack of an appropriations bill.  This same approach has been used in the recent prior shutdowns as well and is a primary justification for the fund in the first-place.

Although the Agency’s goal is to have three-months operating reserve, it only had about five-weeks set aside (~$320 million) at the start of the shutdown.  Funds have not yet run-out, but they are now dwindling.

The chart below comes from the 2018 PPAC Annual Report. In that report, the PPAC suggested that the optimal balance be boosted to $700 million+. Once the reserve reaches that amount, the PPAC would then consider suggesting reduction in fees.

When the Funds Run Out: The USPTO has indicated that once those funds are too-low, the PTO will shut down examination activity.  However, the Agency will keep a small-staff working (perhaps unpaid) “to receive new applications and any other examination, post-examination, post-issuance, and PTAB or TTAB filings; receive payments related to such filings; and maintain IT infrastructure, among other functions.”

Congratulations to the PPAC members, PTO Directors, and especially Tony Scardino (PTO Chief Financial Officer since 2010) for their forethought and dedication to this important issue that is now serving the patent community.

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Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2019/01/patently-o-bits-and-bytes-by-juvan-bonni-16.html https://patentlyo.com/patent/2019/01/patently-o-bits-and-bytes-by-juvan-bonni-16.html#comments Mon, 14 Jan 2019 14:00:23 +0000 https://patentlyo.com/?p=26016 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Kyle Jahner: Drugmakers Head to High Court for Clarity on Patent-Sale Timing (Source: Bloomberg Law)
  • Sara Salinas: Apple CEO Tim Cook Rips into Qualcomm, Leaves Little Chance of a Settlement in Patent Dispute (Source: CNBC)
  • Jeff John Roberts: IBM Tops 2018 Patent List as A.I. and Quantum Computing Gain Prominence (Source: Fortune)
  • Arif Bacchus: Lenovo Patent Application Hints at a Future Laptop with a Flexible, Folding OLED Display (Source: Digital Trends)

Commentary and Journal Articles:

  • Sui-Lee Wee and Keith Bradsher: China Offers Trump a Trade Peace Deal. It May Not Be Enough (Source: The New York Times)
  • Atty. Bradley Lui: Arbitration & Mediation — ICC Patent Arbitration Article (Source: SSRN)
  • Prof. Timothy J. Muris: Bipartisan Patent Reform and Competition Policy (Source: SSRN)
  • Prof. Christopher J. Walker: Constitutional Tensions in Agency Adjudication (Source: SSRN)

New Job Postings on Patently-O:

  • Unified Patents
  • Steptoe
  • Ballard Spahr LLP
  • Pierce Bainbridge
  • Finch & Maloney PLLC
  • MH2 Technology Law Group, LLP
  • Guntin & Gust

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

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FEDERAL CIRCUIT WILL BE CLOSED Monday, January 14, 2019 https://patentlyo.com/patent/2019/01/federal-circuit-january.html https://patentlyo.com/patent/2019/01/federal-circuit-january.html#comments Mon, 14 Jan 2019 13:57:14 +0000 https://patentlyo.com/?p=26024 The United States Court of Appeals for the Federal Circuit will be closed on Monday, January 14, 2019, due to the inclement weather. For purposes of computation of time and for motions to enlarge time under Fed. R. App. Proc. 26 and Fed. Cir. R. 26, January 14, 2019, will be considered a “legal holiday.” Telework-ready employees should follow their office’s policies.

Continue reading FEDERAL CIRCUIT WILL BE CLOSED Monday, January 14, 2019 at Patently-O.

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The United States Court of Appeals for the Federal Circuit will be closed on Monday, January 14, 2019, due to the inclement weather. For purposes of computation of time and for motions to enlarge time under Fed. R. App. Proc. 26 and Fed. Cir. R. 26, January 14, 2019, will be considered a “legal holiday.” Telework-ready employees should follow their office’s policies.
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Did You Know: Reducing USPTO Fees https://patentlyo.com/patent/2019/01/know-reducing-uspto.html https://patentlyo.com/patent/2019/01/know-reducing-uspto.html#comments Sun, 13 Jan 2019 20:15:31 +0000 https://patentlyo.com/?p=26022 The America Invents Act requires the USPTO Director to consider reducing Patent Office fees each fiscal year.  In particular, the Act requires that the Director:

(1) shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees [subject to USPTO Fee Setting Authority] and (2) after the consultation required under paragraph (1), may reduce such fees.

This requirement is not codified in the U.S. Code because it is part of the temporary fee-setting-authority granted by the AIA for 7-years and then extended this year by the USPTO FEES Act for an additional 8-years (ending in October 2016).

 

Continue reading Did You Know: Reducing USPTO Fees at Patently-O.

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The America Invents Act requires the USPTO Director to consider reducing Patent Office fees each fiscal year.  In particular, the Act requires that the Director:

(1) shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees [subject to USPTO Fee Setting Authority] and (2) after the consultation required under paragraph (1), may reduce such fees.

This requirement is not codified in the U.S. Code because it is part of the temporary fee-setting-authority granted by the AIA for 7-years and then extended this year by the USPTO FEES Act for an additional 8-years (ending in October 2016).

 

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Obviousness without a Motivation to Combine https://patentlyo.com/patent/2019/01/obviousness-without-motivation.html https://patentlyo.com/patent/2019/01/obviousness-without-motivation.html#comments Thu, 10 Jan 2019 16:57:17 +0000 https://patentlyo.com/?p=26005 Obviousness without a Motivation to Combine

by Dennis Crouch

Realtime Data, LLC v. Iancu (Fed. Cir. 2019)

Interesting obviousness case here regarding motivation-to-combine.

The PTAB’s obviousness finding is based upon two prior art references. However, the references are not being combined so-to-speak. Rather, the Board found that the first reference (O’Brien) teaches all limitations of the lossless encoding scheme in Realtime’s claim 1.  The second reference (Nelson) was used essentially to show that the “string encoding” described in O’Brien was the same as the “dictionary-based encoding” in Realtime’s claims.

 

On appeal, Realtime argued a lack of “motivation to combine” the references — based upon longstanding precedent that a “factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references.” Dome Patent L.P. v. Lee, 799 F.3d 1372 (Fed. Cir. 2015).

Here, however, the Federal Circuit ruled that motivation-to-combine was not necessary since the obviousness finding did not combine two different disclosures. Rather, the Board used the second reference to help explain the first reference.

We conclude that, in this case, the Board was not required to make any finding regarding a motivation to combine given its reliance on O’Brien alone.

Continue reading Obviousness without a Motivation to Combine at Patently-O.

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Obviousness without a Motivation to Combine

by Dennis Crouch

Realtime Data, LLC v. Iancu (Fed. Cir. 2019)

Interesting obviousness case here regarding motivation-to-combine.

The PTAB’s obviousness finding is based upon two prior art references. However, the references are not being combined so-to-speak. Rather, the Board found that the first reference (O’Brien) teaches all limitations of the lossless encoding scheme in Realtime’s claim 1.  The second reference (Nelson) was used essentially to show that the “string encoding” described in O’Brien was the same as the “dictionary-based encoding” in Realtime’s claims.

 

On appeal, Realtime argued a lack of “motivation to combine” the references — based upon longstanding precedent that a “factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references.” Dome Patent L.P. v. Lee, 799 F.3d 1372 (Fed. Cir. 2015).

Here, however, the Federal Circuit ruled that motivation-to-combine was not necessary since the obviousness finding did not combine two different disclosures. Rather, the Board used the second reference to help explain the first reference.

We conclude that, in this case, the Board was not required to make any finding regarding a motivation to combine given its reliance on O’Brien alone. . . . HP relied on Nelson merely to explain that O’Brien’s encoder is a type of dictionary encoder. . . . Under these circumstances, the Board was free to come to the very conclusion it reached: that O’Brien alone disclosed every element of claims 1–4, 8, and 28. And because the Board did not rely on Nelson for the disclosure of a particular element or teaching, the Board had no obligation to find a motivation to combine O’Brien and Nelson.

The CAFC noted that an anticipation determination rather than obviousness may have been more appropriate since O’Brien taught all of the elements of Realtime’s claim.  However, the court concluded that obviousness still worked — since  “a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792, (CCPA 1982)).

= = = = =

Patent at issue: U.S. Patent No. 6,597,812, covering lossless data compression and decompression. Realtime sued HP and others back in 2015 and that led to the responsive IPR filing that is the subject of this appeal.

 

 

 

 

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PTAB Must Consider All Claims AND All Grounds https://patentlyo.com/patent/2019/01/consider-claims-grounds.html https://patentlyo.com/patent/2019/01/consider-claims-grounds.html#comments Thu, 10 Jan 2019 16:20:21 +0000 https://patentlyo.com/?p=25995 by Dennis Crouch

AC Techs v. Amazon.com, Inc. (Fed. Cir. 2019)

This case focuses on AIA-Trial Procedure following SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018).   In SAS, the Supreme Court held that the USPTO’s institution decision is binary — “either institute review or don’t.”  If the USPTO institutes an IPR then the PTAB must issue a final written decision regarding each claim challenged in the petition.  Prior to SAS, the USPTO commonly issued partial-institution orders — instituting the IPR on only a subset of challenged claims.

Here, Amazon’s petition was granted as to Grounds 1 and 2, but not Ground 3.  At institution stage, the Board found Ground 3 redundant — in part because the claims challenged by Ground 3 were already challenged by Ground 1.  Thus, we don’t have the same situation as SAS, but it is somewhat similar.  An important bit of information for the case is that Ground 3 did not present new prior art, but only an argument based upon an alternative claim construction.

In its final written decision, the Board invalidated a number of claims, but sided with the patentee for claims 2, 4, and 6 — the same claims challenged by not-instituted Ground 3. 

Continue reading PTAB Must Consider All Claims AND All Grounds at Patently-O.

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by Dennis Crouch

AC Techs v. Amazon.com, Inc. (Fed. Cir. 2019)

This case focuses on AIA-Trial Procedure following SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348 (2018).   In SAS, the Supreme Court held that the USPTO’s institution decision is binary — “either institute review or don’t.”  If the USPTO institutes an IPR then the PTAB must issue a final written decision regarding each claim challenged in the petition.  Prior to SAS, the USPTO commonly issued partial-institution orders — instituting the IPR on only a subset of challenged claims.

Here, Amazon’s petition was granted as to Grounds 1 and 2, but not Ground 3.  At institution stage, the Board found Ground 3 redundant — in part because the claims challenged by Ground 3 were already challenged by Ground 1.  Thus, we don’t have the same situation as SAS, but it is somewhat similar.  An important bit of information for the case is that Ground 3 did not present new prior art, but only an argument based upon an alternative claim construction.

In its final written decision, the Board invalidated a number of claims, but sided with the patentee for claims 2, 4, and 6 — the same claims challenged by not-instituted Ground 3.  On motion, the Board then issued a revised opinion considering Ground 3 and rejecting the remaining claims on that ground.

On appeal, the Federal Circuit confirmed that the Board had followed proper procedure — noting that “if the Board institutes an IPR, it must similarly address all grounds of unpatentability raised by the petitioner.” See BioDelivery Scis. Int’l, Inc. v. Aquestive Therapeutics, Inc., 898 F.3d 1205 (Fed. Cir. 2018) (“Post-SAS cases have held that it is appropriate to remand to the PTAB to consider non-instituted claims as well as non-instituted grounds.”).

The Federal Circuit also found no due process violation in the rehearing since the USPTO provided notice and allowed additional discovery and argument prior to considering Ground 3.

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