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Gone Fishing: 25 year old patent application rejected again

March 17, 2014PatentAbstract Idea, Affirmed Without Opinion, obviousness, paid, Subject Matter EligibilityDennis Crouch

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Check your Patent Term Adjustments (PTA): What you Need to Know about the USPTO Error

September 27, 2024PatentpaidDennis Crouch

by Dennis Crouch

The United States Patent and Trademark Office (USPTO) has disclosed a significant error in its patent term adjustment (PTA) calculations, potentially affecting patents issued between March 19, 2024, and July 30, 2024.

The USPTO discovered a coding error introduced in a recent software update. This error specifically affected two aspects of the PTA calculation:

1. The "A" delay under 35 U.S.C. 154(b)(1)(A)
2. The amount of overlap under 35 U.S.C. 154(b)(2)(A)

Importantly, other components of the PTA calculation were not impacted by this error. The USPTO estimates that approximately 1% of patents issued during the affected period may have been impacted. In many cases, the overall PTA remained correct because the inaccurate "A" delay equaled the inaccurate "Overlap." However, in some instances, these inaccuracies didn't balance out.

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Federal Circuit Narrows AIA Grace Period: Public Disclosure Must Make Invention ‘Reasonably Available’

August 5, 2024Patent35 U.S.C. § 102, AIA, Federal Circuit, grace period, paid, patent law, prior art, public disclosure, safe harborDennis Crouch

by Dennis Crouch

The Federal Circuit's new decision in Sanho v. Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024).

The basic holding is that the 102(a)(2)/(b)(2) safe harbor triggered by an inventor's pre-filing "public disclosure" of the invention requires that the invention be made "reasonably available to the public." Neither public uses nor private sales satisfy this requirement. This is a long post, because the issues are both important and interesting. In the end, I suggest a panel rehearing in the case because I believe that the Federal Circuit unfairly found forfeiture of key arguments whose resolution would help clarify the law.

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NO FAKES Act: Unpacking the New Bipartisan Bill on Digital Replicas

July 31, 2024PatentAI Ethics, AI Regulation, Celebrity Rights, Copyright, Deepfakes, Digital Replicas, DMCA, Entertainment Law, Federal Preemption, Film Industry, first amendment, intellectual property, legislation, Music Industry, paid, privacy, Right of Publicity, safe harborDennis Crouch

Senators aim to rein in digital replicas with the “NO FAKES” Act which proposes a limited federal right to control one’s likeness using some DMCA-like notice-and-takedown elements.

Guest post by Professor Justin Hughes

This week, Senators Blackburn, Coons, Klobuchar, and Tillis introduced the bipartisan “NO FAKES” Act in Congress, a bill that has been under discussion for months and is intended to provide centerpiece legislation addressing the problem of digital replicas. The recording industry (RIAA) and the actors’ union (SAGAFTRA) have been the leading proponents of such a law. Senate Judiciary staff led a process with those groups–and with the Motion Picture Association (MPA)–that went through a long series of drafts. AI companies were also part of the drafting process.

Read the Bill: No FAKES Act text

The bill is substantively complex and structurally complicated, partly the result of so many cooks in the kitchen. What follows here are only the bill’s basics – as well as some concerns.

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Presumption of Injunction: How the RESTORE Act Aims to Re-Empower Patent Holders

July 31, 2024PatentConstitutional Law, eBay v. MercExchange, Equity, Federal Circuit, Injunctive Relief, innovation policy, intellectual property, legislation, NPEs, obviousness, paid, patent infringement, patent law, patent litigation, Patent Remedies, patent rights, RESTORE Act, Supreme CourtDennis Crouch

by Dennis Crouch

For the vast majority of American history, a judgment of patent infringement (by a court sitting in equity) led almost directly to injunctive relief barring ongoing infringement. This construct was flipped by the Supreme Court's 2006 decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), a case which served as the first major step of weakening patentee rights over the past two decades. Now, a new bipartisan bill aims to restore the pre-eBay status quo. The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act of 2024, introduced by Senators Coons (D-Del.) and Cotton (R-Ark.), with a House companion bill from Representatives Moran (R-Texas) and Dean (D-Pa.), seeks to reshape and repair the availability of injunctive relief for patent holders. As you'll see, one nice element of the Bill is that it simply adds 1 sentence - creating a rebuttable presumption

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Animated GUI Design Patents

July 23, 2024PatentpaidDennis Crouch

For several years, the most controversial part of the design patent world was patenting of portions of a display screen. But, things have moved forward with a steady flow of animated portions of a display screen. The chart above shows the year-over-year numbers of design patents issued claiming some form of an animated or transitional display.

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The Shift Towards Primary Examiners: Implications for Patent Prosecution

July 22, 2024PatentpaidDennis Crouch

by Dennis Crouch

In recent years, the United States Patent and Trademark Office (USPTO) has undergone a significant shift in its examiner composition, with real implications for patent prosecution strategies.

Our data reveals a dramatic drop in the percentage of assistant examiners over the past decade. Prior to 2015, over 35% of patents were examined by assistant examiners. Since 2020, this number has plummeted to less than 20%. But these assistant examiners did not simply disappear.

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Data on Terminal Disclaimers Across Art Units

July 10, 2024PatentpaidDennis Crouch

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The Emperor’s New Judgments: Rule 36 and the Invisible Cloth of Patent Law

July 3, 2024Patentobviousness, paidDennis Crouch

by Dennis Crouch

The Federal Circuit's practice of issuing no-opinion affirmances under Rule 36 is facing renewed scrutiny in two recent petitions for rehearing en banc. In UNM Rainforest Innovations v. ZyXEL Communications Corp. and Island Intellectual Property LLC v. TD Ameritrade, Inc., the petitioners argue that the court's use of one-word Rule 36 judgments allowed it to sidestep key legal and factual issues raised on appeal. These petitions highlight ongoing concerns about the Federal Circuit's frequent use of Rule 36 and its impact on patent law development. The failure to provide an explanatory opinion is an appellate-procedure issue - the two patentees also argue that the lower tribunal made substantive legal errors.

I don't see the court as having a truly nefarious reason for its common no-opinion judgments, but the situation does call to mind the ancient fable about the emperor's new clothes adapted and popularized by Hans Christian Andersen.

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Dewberry Group: Structuring the Firm to Avoid Trademark Liability

June 24, 2024Patentcertiorari, corporate separateness, corporate veil, Damages, disgorgement, intellectual property, Lanham Act, litigation, paid, Supreme Court, TrademarkDennis Crouch

by Dennis Crouch

The U.S. Supreme Court has granted certiorari in Dewberry Group, Inc. v. Dewberry Engineers Inc., a trademark damages case focused on how corporate separateness principles apply to disgorgement remedies under the Lanham Act, 15 U.S.C. § 1117(a). The Fourth Circuit's decision affirmed a $43 million disgorgement award against petitioner Dewberry Group (DG) for trademark infringement, an amount that included profits earned by DG's "legally separate" corporate affiliates. Apparently, the affiliates were “single-purpose entities,” also privately owned by John Dewberry, whose sole function was to own commercial properties serviced by DG.

Pierce the Veil: In its literal sense, a veil is a delicate fabric that separates the visible from the concealed, a barrier that can be easily lifted or parted. However, the phrase has a history of extending beyond the material world, with a veil often serving as a boundary between the physical and spiritual realms in our universe. Many of us go through life, only occasionally glimpsing beyond this veil into the hidden spiritual dimensions that, according to story tellers, lie alongside our own. In the corporate world, the veil of corporate personhood serves to shield the owners from personal liability, creating a legal fiction that separates the actions of the company from those of its shareholders. This veil of protection is not impenetrable, however, and can be pierced by the courts in cases of serious misconduct or wrongdoing, exposing the owners to personal responsibility. Although the truth of owner identity may already be known, piercing the corporate veil removes the protection against responsibility by attempting to holding accountable those who would misuse its protections. But, the legal doctrine of corporate separateness is quite strong and I might venture that it is easier to pierce the veil of our spiritual realms than the corporate analogue.

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Patentees Out of Luck Again: CAFed Sides with DraftKings that Remote Gambling Patent Ineligible

June 21, 2024PatentFederal Circuit, gambling technology, GPS, paid, patent law, Subject Matter EligibilityDennis Crouch

by Dennis Crouch

The Federal Circuit has affirmed a D.N.J. court's dismissal of patentee Beteiro's infringement complaints against DraftKings, et al., agreeing that the asserted claims are directed to patent ineligible subject matter under 35 U.S.C. § 101. Beteiro, LLC v. DraftKings Inc., No. 2022-2275 (Fed. Cir. June 21, 2024). The patents at issue were directed to methods of facilitating remote gambling activity using devises equipped with GPS.

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Federal Circuit Affirms Patent Rejection for Lack of Enablement in In re Pen

June 14, 2024PatentEnablement, paid, patent law, prior art, Section 112, unpredictabilityDennis Crouch

by Dennis Crouch

The Federal Circuit (CAFC) recently affirmed a USPTO enablement rejection -- holding that the patentee did not enable the "full scope" of the claimed invention. In re Pen, 23-2282 (Fed. Cir. 2024) (non-precedential). As an aside, the listed inventor's legal name is "The Pen;" first and last name respectively, with no middle initial. Based upon Pen's address, he is related to "The People's Email Network." In the case, Pen represented himself pro se.

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Supreme Court Update: June 2024

June 7, 2024Patentdoctrine of equivalents, double patenting, notice-and-comment, obviousness, paid, patent eligibility, patent law, Supreme Court, tortious interferenceDennis Crouch

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LKQ v. GM: Join us on June 4 at Noon (ET)

June 3, 2024Patentobviousness, paidDennis Crouch

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Speck v. Bates: Federal Circuit’s Two-Way Test for Pre-Critical Date Claims Limits Belated Interferences and Derivation Proceedings

May 23, 2024Patentcritical date, derivation, en banc, interference, materially different, obviousness, paid, patent law, Section 135(b)(1), two-way testDennis Crouch

by Dennis Crouch

Speck v. Bates, No. 23-1147 (Fed. Cir. May 23, 2024)

In likely one of the last interference proceeding appeals, the Federal Circuit has applied a "two-way test" to determine whether pre-critical date claims and post-critical date claims are "materially different" under pre-AIA 35 U.S.C. § 135(b)(1). The court found that Bates' post-critical date claims in its U.S. Patent Application No. 14/013,591 were time-barred because they were materially different from Bates' pre-critical date claims.

Although the decision is based upon an interference proceeding, the same provision is found within the new version of 135(b) that covers

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Eolas Seeks Supreme Court Review of Federal Circuit’s Patent Eligibility Decision

May 8, 2024Patenten banc, Eolas, paid, patent eligibility, patent law, Section 101, Supreme CourtDennis Crouch

Eolas is seeking a writ of certiorari from the Supreme Court -- hoping that the court will overturn the Federal Circuit's decision invalidating its distributed computing (WWW) claims as ineligible under Alice Corp. and Mayo and ostensibly under 35 U.S.C. § 101. The petition presents three key questions:

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Discerning Signal from Noise: Navigating the Flood of AI-Generated Prior Art

April 30, 2024Patentai, Enablement, generative ai, motivation to combine, obviousness, paid, patent examination, patent law, presumption of enablement, prior artDennis Crouch

by Dennis Crouch

This article explores the impact of Generative AI on prior art and potential revisions to patent examination standards to address the rising tidal wave of AI-generated, often speculative, disclosures that could undermine the patent system's integrity.

The core task of patent examination is identifying quality prior art. References must be sufficiently accessible, clear, and enabling to serve as legitimate evidence of what was previously known. Although documents are widely available today via our vast network of digital communications, there is also increasing junk in the system -- documents making unsubstantiated claims that are effectively science fiction. Patent offices prefer patent documents as prior art because they are drafted to meet the strict enablement standards and filed with sworn veracity statements. Issued patents take this a step further with their imprimatur of issuance via successful examination. Many of us learned a mantra that "a prior art reference is only good for what it discloses" -- but in our expanding world of deep fakes, intentional and otherwise, is face value still worth much?

In a new request for comments (RFC), the USPTO has asked the public to weigh in on these issues -- particularly focusing on the impact of generative artificial intelligence (GenAI) on prior art.

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Rader on 101 and the Statutory Text

April 3, 2024Ethicsjudicial interpretation, legislative history, paid, patent eligibility, Section 101, statutory textDavid

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Dow Chemical’s 1945 ‘Perfectly Plain’ Test for Obviousness

April 3, 2024Patentcircuit split, dow chemical, obviousness, oil well acidizing, paid, patent law, reasonable expectation of successDennis Crouch

by Dennis Crouch

The pending obviousness petition in Vanda v. Teva has prompted me to look back on some of the key Supreme Court cases cited in the briefs. Last week, I wrote about Atlantic Works v. Brady, 107 U.S. 192 (1883) in a blog post titled The Quest for a Meaningful Threshold of Invention. Today, I'm looking at Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320 (1945), an obviousness case decided just a few years before a rewriting of the 1952 Patent Act. At the time, the doctrine was identified as "want of invention," but the court's analysis is familiar to anyone practicing patent law today.

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