Does Your Patent Application Qualify for the PTAB’s Fast-Track Appeal Pilot Program?

The USPTO recently launched the Fast-Track Appeal Pilot Program on July 2, 2020. The Pilot Program is slated to last one year, with a cap of 125 granted petitions per quarter – 500 total for the year. According to a Patent Trial and Appeal Board (PTAB) webinar hosted on Feb. 18, 2021, the PTAB may use discretion to grant additional petitions per quarter. The Pilot Program allows appellants, i.e., applicant of the patent application, to file a petition to request fast-track review of ex parte appeals.

To qualify, the patent application must be an original utility, design, or plant non-provisional application. In addition, (i) a notice of appeal must have been filed in the application, and (ii) a PTAB docketing notice was issued. In other words, a deficiency of either (i) or (ii) would result in the petition being denied. Further, the appellant must file a petition under 37 CFR 41.3 seeking fast-track review accompanied by a $420 non-refundable fee (37 CFR 41.20(a)). Importantly, the Pilot Program is not available for applications treated as special under MPEP §708.01, i.e., because of age or health of the inventor. Continue Reading

USPTO Provides Guidance in View of ‘’

On June 30, 2020, the Supreme Court of the United States decided USPTO v. B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the mark BOOKING.COM on the grounds that it is generic for hotel reservation services or, in the alternative, that it is merely descriptive and has not acquired distinctiveness. The Supreme Court rejected the agency’s application of a per se rule that the combination of a generic term and a top-level domain is always ineligible for registration. In October 2020, the USPTO issued new guidance for trademark examiners on this issue in view of Under the new examination guide, a [] term may still be refused as generic, but only when warranted by the evidence in the application record.[2] The terms of the new guidance are summarized below.

I. Analyze term, as a whole, for source-identifying capability.

The guidelines provide that to establish that a [] term is generic, the examining attorney must show that the relevant consumers would understand the primary significance of the term as a whole to be the name of the class or category of the goods and/or services identified in the application. The examining attorney is required to explain how the evidence of record supports the issuance of a genericness refusal,  showing not only that the individual elements of the [] term are generic but also that when combined, the combination creates no new or additional significance capable of indicating source to consumers. Continue Reading

Recent Trends of Pilot-Eligible MTAs and Complementary Post Grant Strategies

The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide patent owners with the additional options of requesting Preliminary Guidance from the Patent Trial and Appeal Board (PTAB) on its MTA, and of filing a revised MTA (rMTA) in response to requested Preliminary Guidance or to a petitioner’s opposition to the original MTA in order to achieve a more favorable outcome. But have these additional options under the Pilot Program actually increased the number of MTAs filed and their success rates? Let’s review.

The USPTO’s last update to the MTA study (Installment 6, July 2020) provided statistics on the total number of pre-pilot and pilot-eligible MTAs filed and their success rates in completed AIA trials through March 31, 2020. According to Graphs II-III of the USPTO’s update, the PTAB reached decisions on MTAs requesting to substitute claims in 335 of the 4,783 completed trials through March 31, 2020. In other words, MTAs requesting to substitute claims were strategically used by patent owners in about 7% of these trials. And of this subset, slightly less than 15% were granted or granted-in-part and denied-in-part by the PTAB. Continue Reading

Podcast: Open Source is Everywhere: A Primer for Compliance

Despite the fact that open source or so-called “free” software has been available for more than 30 years, and is likely used in the vast majority of software programs being developed today, many people remain confused as to what it is, how licensing it works, and how is it different from software in the public domain. There are a number of different license types, the most common of which is permissive, and as it sounds, it is relatively easy to work with once the notification requirements are understood and properly applied. Other license types include the colorfully named copyleft license that comes with a host of requirements and restrictions that most commercial software vendors will want to avoid. Once you have a better understanding of open source and the issues and opportunities it presents, it’s a good time to figure out what you are already using through an audit and performing any clean up that may be required.

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Federal Circuit Addresses Printed Publications Under 35 U.S.C. § 102 and the APA Notice Requirement in Inter Partes Reviews

In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review proceeding, which had been generated as part of a joint task force for establishing industry standards, qualified as a printed publication.

In addition, the Federal Circuit addressed the issue of notice under the Administrative Procedure Act (APA). The Federal Circuit vacated the PTAB’s finding of anticipation with respect to one of the claims at issue, holding that because the underlying petition for inter partes review had asserted only obviousness for that claim, the PTAB’s reliance on anticipation impermissibly deviated from the invalidity claims for which the respondent had been put on notice.

The asserted patent was directed to methods for compressing video files. For its arguments before the PTAB, the petitioner relied on prior art that arose from a joint task force for establishing industry standards for high-efficiency video coding. The documents were discussed at the joint task force meetings and subsequently published on the joint task force website.

In rejecting the respondent’s arguments that the prior art did not qualify as printed publications, the Federal Circuit emphasized that the “key inquiry” is public accessibility and that a reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it” (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)).

The Federal Circuit held that it is sufficient to show that the channel through which the references were publicized – here, the joint task force meetings and website – was prominent or well known among persons of ordinary skill in the art. It is not necessary to show that the references themselves were prominent. Further, there is no requirement that the website landing page have search functionality, and any more focused search capability within the website need not provide the ability to search documents by content. Finally, it is not necessary to show that anyone actually used the website to access the documents. The Federal Circuit held that substantial evidence supported the PTAB’s finding that persons of ordinary skill in the art could have accessed the prior art with reasonable diligence through the joint task force website.

Finally, in vacating the PTAB’s finding of anticipation for lack of proper notice under the APA, the Federal Circuit rejected the petitioner’s argument that anticipation was inherent in its obviousness theory, noting that the petitioner expressly stated in its petition that the particular prior art reference failed to disclose certain limitations of the relevant claim. As a result, the PTAB’s anticipation finding based on that reference constituted a marked deviation from the evidence and theories presented in the original petition.

Considering a Common Phrase as a Trademark? Don’t Expect it to be Registrable.

There have been a number of recent Trademark Trial and Appeal Board (TTAB) cases involving phrase marks. In all instances, the phrases have been refused registration not because of descriptiveness or misdescriptiveness of any kind, but because they fail to function as trademarks due to their informational characteristics and widespread use.

This blog provides the background to refusals common phrases may encounter in the U.S. Patent and Trademark Office (USPTO), recent cases decided by the TTAB involving such phrases and how practitioners should deal with searches for and clearance of marks involving phrases. Continue Reading

Podcast: When Fixing One Problem Creates Another: How Patent Infringement Arises Out of Product Repairs

Various products are subject to systems (e.g., purchase agreements) under which product purchasers and third parties are prevented from repairing the products and the only way to repair the product is to proceed through an authorized vendor or the original manufacturer. Manufacturers often favor such systems, as the systems (1) allow the manufacturers to obtain additional revenue through their own repair services, (2) prevent consumers and third-parties from accessing trade secrets that are contained within the products; and (3) prevent consumers from injuring themselves during repairs of complex products. Consumers are sometimes concerned with such systems, as the systems can limit consumer options to repair the devices and could lead to increased waste, as consumers may elect to purchase new products instead of committing to a lengthy and expensive repair process to fix an existing product. This issue has been getting some traction around the country, as several states have passed (or are reviewing) legislation related to providing purchasers with a “right to repair” products that they may purchase. In addition to its coverage in the legal news, “right to repair” was recently mentioned on CBS News.

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Baked-In Apportionment

In Vectura, the Federal Circuit recently reiterated that the entire market value of an accused multicomponent product may serve as the royalty base if the patent damages analysis is built on sufficiently comparable licenses. Vectura Limited v. Glaxosmithkline LLC, 981 F.3d 1030, 1040-1042 (Fed. Cir. 2020). Pursuit of the entire market value of a multicomponent product ordinarily requires the patentee to demonstrate that the infringing feature drives customer demand for the product. Virnetx, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir. 2014). Without such evidence, the patentee must apportion down either the royalty base or the royalty rate to account for the difference between the patented features and the conventional features of the accused product. Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332, 1348 (Fed. Cir. 2018); But the Federal Circuit has once again affirmed that apportionment can be baked into a comparable license.

In Vectura, the Federal Circuit affirmed the district judge’s admission of an expert opinion that relied on a sufficiently comparable license to satisfy the apportionment requirement. Vectura, 981 F.3d at 1041. Evidence shows that the circumstances surrounding the prior license and the hypothetical negotiation were “highly comparable” and the principles of apportionment were effectively “baked into” the prior license. Id. In other words, the expert demonstrated that “negotiators of a comparable license settled on a royalty rate and royalty base combination embodying the value of the asserted patent.” Id. This comparable license paved the way for damages at a 3% royalty instead of the accused infringer’s 0.0187% rate. Id. at 1040. The decision in Vectura is the fourth in the past six years in which the Federal Circuit permitted apportionment through a comparable license. Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967 F.3d 1353 (Fed. Cir. 2020); Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, 927 F.3d 1292 (Fed. Cir. 2019); Commonwealth Sci. & Indus. Rsch. Organisation v. Cisco Sys., Inc., 809 F.3d 1295 (Fed. Cir. 2015). Thus, patentees and accused infringers have another avenue to meet the apportionment requirement in a reasonable royalty analysis.

Third Circuit Finds Pocky Trade Dress Functional, Not Protectable

Product configurations, including cookie shapes, are protectable as trade dress only to the extent the product features are incidental, arbitrary, or ornamental aspects that identify the product’s source. Functional product features are never protectable as trade dress. These tenets of trade dress law were recently affirmed by the U.S. Court of Appeals for the Third Circuit in Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. (Jan. 26, 2021). Continue Reading

Appeal Argues AIA Proceedings Are Unconstitutional

Briefing is complete in an appeal asking the Federal Circuit to find that the America Invents Act (AIA) post-grant reviews violate the due process clause of the Constitution based on “structural bias.” New Vision Gaming & Development, Inc. (New Vision) v. SG Gaming, Inc. (SG), f/k/a Bally Gaming Inc., and Andrei Lancu, undersecretary of commerce for intellectual property and director of the United States Patent and Trademark Office (USPTO), Case No. 2020-1399, -1400. New Vision’s recently filed reply brief takes a creative approach to its constitutional argument, previewed by a two-page, attention grabbing introduction: “If a district court charged $20,000 to file a summary judgment motion, and then, after denying the motion, charged another $25,000 to proceed to the merits – and those fees funded court operations and the judges’ salaries and bonuses – that scheme would be considered unconstitutional.” Reply, p. 1. New Vision points to various facts regarding the structure and funding of the Patent Trial and Appeal Board (PTAB) that raise questions of possible “structural pecuniary” bias, arguing they establish an unacceptable appearance of structural pecuniary bias. Continue Reading