Search Results for: wireless

Patent Agent/Attorney (5G and wireless standards expert) – Law Firm – Remote

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Kubota & Basol LLP is looking for patent attorneys or agents who are able to make an immediate and significant contribution to a new and growing 5G standards practice. The position requires registration with the USPTO and a minimum of 3 years of full-time experience drafting and prosecuting patent applications, in the role of outside counsel, directly associated with 4G, 5G, and 6G technical submissions to the 3GPP Communication Standards Organization. Also required is experience preparing claim charts that map claims to the 3GPP Communication Standards.

Compensation will be based on productivity.

Our offices are located in Los Angeles and Northern Virginia, but remote working arrangements with visits to the Los Angeles and/or Northern Virginia offices are completely acceptable. We are a growing law firm--get in early at a firm where you can shape the firm, our culture, and your own practice and development!

By joining, you will also have the opportunity to work with one of the most well-known and innovative companies in the world! Between all of our clients, we prepare and prosecute patents in many exciting and cutting-edge technology areas, including AR/VR, machine learning, and others. Perform top-notch patent prosecution for cutting-edge clients in a collegial and relaxed atmosphere!

Apply online at:
https://ats.rippling.com/kubota-basol-llp-job-board/jobs

Please include a resume with your submission.

Additional Info
Employer Type: Law Firm
Job Location: Remote

Senior Ip Counsel, Wireless/Video Compression – Corporation – Northern VA

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Ofinno is a leading research and development lab for 5G/6G, Next-Gen Wi-Fi, and video compression technologies. Home to some of the world’s most prolific inventors, Ofinno helps companies stay ahead of the technological curve by outsourcing their R&D from ideation to delivery.

We are growing rapidly, and we need experienced IP counsel to keep our enterprise at the leading edge of innovation. Our legal team works shoulder-to-shoulder with the technology team, from the conception of a new idea until the moment the patent is received. The end result is an industry-recognized portfolio, with global reach, at the core of next-generation tech.

Cross-training is what separates Ofinno from other R&D labs. We challenge our IP counsel to master the technical concepts underlying our inventors’ ideas. At the same time, our IP counsel are expected to educate our inventors on the legal aspects of IP. Ofinno’s culture of mutual learning and collaboration is unique among R&D labs, and absolutely can not be duplicated at a law firm.

Job Description
What you’ll be doing:

You will have responsibility for all IP needs of the business related to Ofinno’s technical team, including working closely with inventors to evaluate, draft, file, and prosecute patent applications in the United States and other jurisdictions.

Your responsibilities include:

  • Reviewing and drafting patent applications, including specification, figures, and claims
  • Making filing decisions and formulating prosecution strategies
  • Interviewing Examiners and responding to Office Actions
  • Coordinating prosecution strategies across multiple global jurisdictions and instructing foreign associates
  • Helping to coordinate, evaluate, and manage Ofinno’s 5G/6G, Next-Gen Wi-Fi, or Video Compression patent portfolio
    Searching prior art for relevant subject matter

Qualifications
Who you are:

  • Licensed to practice before the USPTO
  • Experience with 5G, Next-Gen Wi-Fi, or Video Compression technology
  • Five or more years of experience drafting and prosecuting patents, managing portfolios, performing patent analysis, and developing patent strategies
  • Degree in Electrical Engineering or Computer Science
  • Willing and able to report to our office in Reston, Virginia, at least four days per week

Additional information:

Our people are our business, and it is our job to take care of you. We know you have to see it to believe it, but here are some of the perks you can count on:

  • Competitive salaries within the range of $175k - $240k for attorneys ($125k - $170k for agents), with regular opportunities for salary increase, and additional compensation based on company performance and valuation.
  • 401(K) matching -- We help you plan and save for retirement with a 401(K) matching program that’s available on day one.
  • Free healthcare plans-- Ofinno covers full premiums for you are your family on select healthcare plans, including employer HSA contributions if applicable.
  • Free Food -- Our kitchen is always fully stocked, including lunch, protein bars, fruit, sodas, coffee and tea.
  • Unlimited Paid Time Off -- Our lives are enriched by family time, vacations and personal time, so we offer unlimited paid time off and sick leave.
  • On-campus gym -- Unwind, reduce stress and feel great – even when you’re at work.
  • Other benefits, too long to list -- Please discuss with our great People Ops team about additional benefits offered.
  • All your information will be kept confidential according to EEO guidelines

To join Ofinno, please submit a cover letter and some writing samples to careers@ofinno.com. The writing samples preferably include: (a) a patent application that you have written in the area of 5G/6G, Next-Gen Wi-Fi, or video compression; (b) at least one response to a USPTO or EPO Office Action. For the Office Action Response, we are particularly interested in the persuasiveness of your arguments regarding novelty and non-obviousness. Ideally, the Office Action Response includes substantive arguments with fact-based analysis of the cited art (as opposed to 101 arguments or arguments in support of newly-added features).

Additional Info
Employer Type: Small Corporation
Job Location: Northern VA

The Fintiv Pendulum Swings Again: More Discretionary Denials Coming Soon

Patent

The pendulum of the mind
alternates between sense and nonsense,
not between right and wrong. 
- Carl Jung (Memories, Dreams, Reflections)

By Dennis Crouch

In a significant policy shift, Acting USPTO Director Coke Stewart has rescinded the June 21, 2022, Vidal memorandum that had significantly curtailed discretionary denials of PTAB post-grant proceedings. This rescission signals a potentially dramatic return to broader PTAB discretion in denying institution of inter partes reviews (IPRs) in cases with parallel district court litigation. I believe we can expect a significant uptick in discretionary denials of IPR institution petitions. And, patent holders in district court will be looking for ways to quickly move cases forward in order to provide evidence that IPR denial is appropriate.

The tersely worded announcement from the USPTO simply directs parties to once again rely on PTAB precedent for guidance, specifically highlighting the precedential PTAB decisions of Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). The announcement further states that any portions of PTAB or Director Review decisions relying on the now-rescinded Vidal Memorandum shall not be binding or persuasive.

Since its creation under the AIA, the PTAB has rapidly established itself as America's most active patent litigation forum -- and the only one that is effectively risk-free for patent challengers. Before the AIA created the IPR system, district courts rarely invalidated patents on obviousness grounds because of the doctrine's technical complexity that often went beyond the span of generalist federal judges and juries. PTAB judges are hired for their willingness and ability to dig deeply into complex obviousness arguments involving the combination of multiple references. Over the past decade, the PTAB has invalidated tens of thousands of patent claims as obvious. To put this in perspective, I am fairly confident the PTAB has invalidated more patent claims on obviousness grounds in its short life than all federal courts combined since the founding of our patent system in 1790.  AIA Trials have been a huge shock to the patent system -- a shock that has almost entirely favored patent challengers.  Thus, Director Stewart's new policy change is important as it is likely to redirect access to this powerful alternative forum.

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Blurring the Line Between Law and Fact in Patent Eligibility

Patent

by Dennis Crouch

The well-worn advice to trial lawyers, famously captured by Carl Sandburg, has long been: "If the law is against you, pound on the facts. If the facts are against you, pound on the law. If both are against you, pound on the table."

This traditional dichotomy between law and fact reflects a fundamental principle of American jurisprudence - that certain questions are reserved for judges (law) while others are reserved for juries (fact).  And, even in cases where the judge serves both roles, the law provides for a strict separation of role. See FRCP 52(a).  But patent law doctrine often defies this clean separation. Take patent eligibility as an example: while courts characterize the atextual eligibility doctrine as ultimately a question of law, the analysis may require underlying factual determinations about what was conventional in the relevant field at the time of invention. And, even the "legal" aspects of eligibility analysis - like whether claims are "directed to" an abstract idea - require their own form of proof and evidence. The difference is that because courts have labeled these as questions of law, they bypass traditional evidentiary standards. This creates a peculiar framework where some elements of proof are subject to strict evidentiary requirements while closely related elements are left to judicial reasoning without similar constraints.  The problem has been further complicated in the eligibility area because the Federal Circuit has not generally required district courts to carefully separate their analysis between law and fact -- even at the pretrial stage where judicial factual conclusions are usually avoided.  These issues are raised to some extent in BBiTV's newly filed petition for certiorari, which challenges how courts handle disputed factual issues when deciding patent eligibility on summary judgment.

For me, BBiTV's argument raises deeper questions about how courts have arrived at this procedural framework for handling patent eligibility determinations. In my view, several historical developments in patent law have contributed to the current state of affairs, where judges increasingly make what appear to be factual determinations under the guise of eligibility legal analysis. These developments, combined with institutional pressures and uncertainties about the role of the Seventh Amendment in patent eligibility determinations, have somewhat blurred the distinction between law and fact. After reviewing the BBiTV case in particular, I move on to examine these contributing factors and their implications for how courts handle disputed facts in patent eligibility cases.

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The RESTORE Patent Rights Act: One Little Sentence that Could Change Everything

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by Dennis Crouch

The Senate Judiciary Committee’s Subcommittee on Intellectual Property recently held a new hearing focusing on the RESTORE Patent Rights Act, a deceptively simple one-sentence bill that could dramatically reshape patent enforcement in the United States. The hearing highlighted the stark divide between those who believe stronger injunctive relief is needed to protect patent rights and those who warn that presumptive injunctions could harm innovation.

At its core, the RESTORE Act would establish a rebuttable presumption that courts should grant permanent injunctions when patent infringement is found. The key language is as follows:

If . . . the court enters a final judgment finding infringement of a right secured by patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct.

This would partially reverse the Supreme Court’s 15-year-old decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) which eliminated the near-automatic granting of injunctions in patent cases and instead required courts to apply a four-factor test considering irreparable harm, adequacy of monetary damages, balance of hardships, and the public interest.  Under the proposal, the four factors would (I presume) continue to apply, but with the burden shifted to adjudged infringers to show that they do not support injunctive relief.  In my mind, the bill also highlights an aspect of eBay that is not much discussed. The Supreme Court said nothing explicit about whether a presumption of irreparable harm persists — that elimination of even a presumption of irreparable harm came from the Federal Circuit most notably in Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142 (Fed. Cir. 2011).  In Bosch, the Federal Circuit took the additional step of interpreting eBay to eliminate the presumption of irreparable harm.  Overruling Smith Int’l, Inc. v. Hughes Tool Co., 718 F.2d 1573 (Fed. Cir. 1983) (“where validity and continuing infringement have been clearly established, immediate irreparable harm is presumed.”).

The December 18, 2024 hearing was led by Senators Coons and Tillis and included four witnesses.

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Supreme Court Patent Cases – November 2024

Patent

by Dennis Crouch

Patent law cases continue to be brought to the Supreme Court's attention, even though the court has not granted certiorari in any patent case for some time.  Twelve potential cases have documents on file with the court. Currently, eight certiorari petitions are briefed and pending before the Court, while four additional petitions are anticipated in the coming months based on recently-filed extension requests.

As has been true in recent years, patent eligibility petitions occupy a substantial portion of the docket, mostly focusing on software patents. Two Hatch-Waxman cases are pending as is a case focusing on the on sale bar post-AIA and post-Helsinn.  In addition, two cases focus on the Federal Circuit's ongoing and unjustified use of summary affirmances for a large portion of its docket.

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From Chief Judge Markey’s Promise to Rule 36: We Do Not Just Render One-Worded Decisions

Patent

by Dennis Crouch

The Supreme Court currently has before it a unique opportunity to address a longstanding problem with the Federal Circuit’s practice of issuing no-opinion summary affirmances in patent cases. The recently filed ParkerVision petition presents a compelling argument that the Federal Circuit’s heavy reliance on Local Rule 36 judgments violates 35 U.S.C. § 144’s requirement that the court “shall issue… its mandate and opinion” when deciding appeals from the Patent Office. This violation has become particularly acute given the surge in appeals from Patent Trial and Appeal Board (PTAB) decisions in recent years. ParkerVision vs. TCL Indus., 24-518.  While appellate opinions serve fundamental interests of human dignity and the rule of law — interests that take on special significance as here when no other Article III court has addressed the dispute — this case presents an even clearer problem because Congress has specifically mandated through Section 144 that the Federal Circuit ‘shall issue’ an opinion in appeals from USPTO decisions.

The ParkerVision petition arises from the Federal Circuit’s summary affirmance of PTAB decisions that invalidated the patentee’s claims related to wireless communication technology. After TCL and LG Electronics successfully challenged the patents via inter partes review (IPR), ParkerVision appealed to the Federal Circuit raising procedural questions about whether the PTAB improperly relied on arguments that had been waived. Rather than addressing the merits of the arguments, the Federal Circuit instead disposed of both appeals without any opinion and rather simply an “AFFIRMED” judgments under Rule 36, providing no explanation for its decisions.

The question presented thus asks:

Whether 35 U.S.C. § 144, which requires the Federal Circuit to issue ‘opinion[s]’ in PTAB appeals, is a reason-giving directive that prohibits the Federal Circuit’s practice, under Federal Circuit Rule 36(a), of summarily affirming PTAB decisions without issuing opinions.

ParkerVision vs. TCL Indus., 24-518 (petition for writ of certiorari).

More reading:

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The Federal Circuit’s Antisuit Injunction Decision in Ericsson v. Lenovo has Broader Implications for Global SEP Litigation

Patent

I previously wrote about the Federal Circuit’s FRAND international injunction decision in Ericsson v. Lenovo, but also invited Prof. Jorge Contreras to provide his insight.  Contreras is one of the world’s leading experts on FRAND litigation and standards-essential patent licensing.  His analysis of the Federal Circuit’s decision in Ericsson particularly highlights the court’s new limits on injunctive relief for FRAND violators and suggests renewed U.S. court engagement in global rate-setting disputes. — Dennis Crouch

= = =

Guest Post by Professor Jorge L. Contreras

On October 24, 2024, the Court of Appeals for the Federal Circuit (No. 24-1515, 2024 U.S. App. LEXIS 26863) cleared the way for Lenovo to seek an antisuit injunction against Ericsson in the parties’ global FRAND litigation. In doing so, it established important precedent for cases involving standards-essential patents.

Background

The case stems from the dispute between Ericsson and Lenovo over licenses to their respective portfolios of patents essential to the 5G wireless telecommunications standards (standards-essential patents or SEPs). Under the applicable rules of the European Telecommunications Standards Institute (ETSI), each of the parties committed to grant licenses under its SEPs to manufacturers of standardized products on terms that are fair, reasonable and nondiscriminatory (FRAND). As the parties, after years of negotiation, were unable to agree on the FRAND royalties for a cross-license of these SEPs, they each initiated litigation in various jurisdictions including the United Kingdom, Brazil, Colombia, the US International Trade Commission and the U.S. District Court for the Eastern District of North Carolina (EDNC). In the EDNC, each party accused the other of infringing its 5G SEPs and breaching its contractual FRAND obligations to ETSI.

In late 2023, Ericsson obtained injunctions against Lenovo’s sale of 5G-enabled phones in Brazil and Colombia. In response, Lenovo petitioned the EDNC for an antisuit injunction (ASI) (technically, a temporary restraining order), which would have barred Ericsson from enforcing its Brazilian and Colombian injunctions against Lenovo until the resolution of the FRAND dispute in the U.S. court. In February 2024, the EDNC denied Lenovo’s motion for an ASI (No. 5:23-CV-00569-BO, 2024 U.S. Dist. LEXIS 26060, 2024 WL 645319).  Lenovo appealed to the Federal Circuit, which reversed and remanded. (more…)

Managing tipping payments is an administrative problem, not a technological problem

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by Dennis Crouch

This is the third eligibility post in as many days.  In a non-precedential decision issued September 10, 2024, the Federal Circuit affirmed the PTAB's rejection of claims in a patent application directed to eliciting tips for media content -- finding them ineligible. In re McDonald, No. 24-1015 (Fed. Cir. Sept. 10, 2024).

The applicant here is a Utah start-up VidAngel, Inc., that helps folks "Filter out the stuff you don’t want to see or hear in your streaming movies & TV shows, like profanity, nudity, violence & more.  But, the invention here has a different focus - it is a setup for eliciting and receiving tips from consumers of media content like streaming movies.

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The Patent Eligibility Restoration Act (PERA) of 2024: From Oz to Earth

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by Dennis Crouch

As its name suggests, the Patent Eligibility Restoration Act (PERA) is designed to substantially overturn the Supreme Court's decisions in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Together those cases created a firestorm of invalid patents and challenges for the patent office and patent holders alike.  The bipartisan proposal was introduced in the Senate (Coons/Tillis) earlier this term and most recently introduced to the US House of Representatives (Kiley/Peters).   Although Alice and Mayo doctrine created substantial confusion, much of that confusion has now died down in the past decade.* The bigger issue is that it is substantially harder to obtain patents and easier to invalidate issued patents -- particularly in cases where the invention lies in software or diagnostic methods.  This post examines the proposed PERA and its potential impact -- along with providing a bit of data.

* Although the extreme confusion is gone, there is still plenty to go around.  A case in point is the Federal Circuit's September 3, 2024 decision in BBiTV v. Amazon. In that case, the court showed its linguistic flexibility in distinguishing the claimed user interface (deemed ineligible) from those in Core Wireless and Data Engine (deemed eligible).

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Did Jarkesy Undermine Oil States? ParkerVision Thinks So

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by Dennis Crouch

In 2018, the Supreme Court's 7-2 decision in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 584 U.S. 325 (2018) affirmed the constitutionality of inter partes review (IPR) proceedings. The Court held that patents are "public rights" and thus may be canceled through congressionally authorized administrative proceedings without violating Article III or the Seventh Amendment right to a jury trial. This decision was a significant win for proponents of the America Invents Act (AIA) and those seeking to use the Patent Trial and Appeal Board (PTAB) as an efficient mechanism to cancel issued patents.

Fast forward to 2024, and a number of us were watching the non-patent case of SEC v. Jarkesy, 144 S. Ct. 2117 (2024), wondering if it might destabilize Oil States. Jarkesy indeed narrowed the scope of what qualifies as a "public right," potentially reopening the debate on the constitutionality of IPRs.

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Clever Pleading Can’t Save Koss’s Patents from Issue Preclusion Invalidity

Patent

by Dennis Crouch

Koss Corporation v. Bose Corporation, 22-2090 (Fed. Cir. July 19, 2024)

In its final written decisions, the PTAB found a number of Koss patent claims invalid and Koss appealed to the Federal Circuit. In the end, though the appellate panel found the appeals moot because all the claims had been invalidated in parallel district court litigation. Although the prior litigation involved a different party (Plantronics), Bose was able to take advantage of that invalidation decision under the doctrine of non-mutual collateral estoppel established by the Supreme Court in Blonder-Tongue Lab'ys, Inc. v. Univ. of Ill. Found., 402 U.S. 313 (1971).

Koss attempted a clever pleading trick

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A present assignment of future continuation applications

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by Dennis Crouch

In Roku, Inc. v. ITC, the Federal Circuit has affirmed determinations by the International Trade Commission (“ITC”) favoring the patent holder Universal Electronics, Inc. (“Universal”). The most interesting part of the case for me is the assignment issue - whether the patents had been properly assigned at the appropriate time. This can become in cases like this because Universal has created a large patent portfolio that all claim back to original priority documents from more than a decade ago. While most of patents are attributable to both joint-inventors, some are only attributable to one or the other.  Here, though the Federal Circuit supported the simple approach of a "hereby assigns" transfer of rights that includes future continuations.  The decision is lacking though because the court does not ground its decision in any particular contract or property tradition.

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Meta Claim Construction: Finding Meaning in the Meaning

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by Dennis Crouch

One-E-Way, Inc. v. Apple Inc., 22-2020 (Fed. Cir. Aug. 14, 2023) (nonprecedential) (Opinion by Chief Judge Moore, joined by Judges Lourie and Stoll).

The district court sided with Apple on summary judgment, finding no infringement. On appeal, the Federal Circuit has affirmed, holding that Apple's accused Bluetooth products do not infringe One-E-Way's patents.  Although the parties had agreed to the construction of the "unique user code" term, they disagreed over the construction-of-the-construction.  On appeal, the court treated this meta-construction effectively as a form of claim construction -- looking for the ordinary meaning rather than a contract-like interpretation that would have looked more toward discerning the intent of the parties.

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