Supreme Court accepts Inter Partes Review Appeal

On Friday, January 15, 2016, the United States Supreme Court accepted the petitioner’s request to hear Cuozzo Speed Technologies v. Lee, a case that will now require the Court to address two questions about inter partes review (IPR) proceedings.

IPR proceedings were created by the America Invents Act (AIA), which was signed into law by President Barack Obama on September 16, 2011. IPR and the other two forms of post-grant challenge to issued patents — Post Grant Review (PGR) and Covered Business Method (CBM) Review — did not become available as a procedure to challenge patents until September 16, 2012. Thus, these proceedings are quite new and Cuozzo will be the first opportunity for the Supreme Court to weigh in on these controversial administrative proceedings.

According to the statute, “[a] person who is not the owner of a patent may file a petition to institute an inter partes review of the patent.” 35 U.S.C. 311(a). Significantly for this appeal, the statute also says: “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C.314(d). Additionally, although the statute is silent as to the proper claim construction standard to use in post grant proceedings, the United States Patent and Trademark Office (USPTO) has decided to apply the familiar standard used elsewhere throughout the Office, which is the broadest reasonable interpretation (BRI) rather than the so-called “Phillips standard” that is used in district court litigation and narrowly construes claims in an already issued patent. (more…)

CAFC says PTAB does not have to allow timely submission of supplemental information in IPR

Several weeks ago, the United States Court of Appeals for the Federal Circuit issued a decision in Redline Detection, LLC v. Star Envirotech, Inc., relating to an inter partes review (IPR) challenge brought by Redline challenging the validity of certain patent claims of U.S. Patent No. 6,526,808 (the “’808 patent”).

After deciding to institute the IPR, the Patent Trial and Appeal Board (PTAB) found in favor of the patent owner. Redline appealed the decision of the PTAB to the Federal Circuit, arguing that it was improperly denied the opportunity to submit supplemental information under 37 C.F.R. §42.123(a) and that the PTAB erred with respect to finding that claims 9 and 10 of the ‘808 patent were not invalid.

The ‘808 patent, owned by Star Envirotech, relates to methods of generating smoke for use in volatile and explosive environments. More specifically, the ’808 patent describes methods for generating smoke that enables the presence and location of leaks in a fluid system to be accurately and visually detected depending upon rate of the air flow through the fluid system under test and whether smoke escapes from the system. The invention allows for the more accurate testing of whether automobile emissions are leaking into the environment.

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Is the USPTO ready to add an 8th digit to patents?

At some point in time in the not too distant future, the USPTO will grant U.S. Patent No. 10,000,000. That’s a nice round number, but we just crossed the nine million threshold with the issuance of U.S. Patent No. 9,000,000 on April 7, 2015.  At this pace, the ten million threshold will come sometime in June 2018.

Why even think about U.S. Patent No. 10,000,000 at this time? The simple answer is because it will add one more digit – an eighth digit – to utility patent numbers. Since the dawn of the computer age, computer systems have handled only 7 digit patent numbers. Without deliberate consideration and action, moving to an eighth digit may not be as smooth a transition as you may want to believe.

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USPTO to require petition to fix delayed foreign priority claims

The United States Patent and Trademark Office (USPTO) recently published a short Federal Register notice titled Change in Practice Regarding Correction of Foreign Priority Claims.

The USPTO has required that any correction of the application number in a domestic benefit claim after the time period for filing a priority or benefit claim be via a petition to accept an unintentionally delayed benefit claim. Notwithstanding, the USPTO has not historically required a petition with respect to the correction to a foreign priority claim after the time period for filing a priority or benefit claim. This dissimilar treatment of the correction of foreign priority claims and domestic benefit claims results in the publication of a corrected patent application publication reflecting the accurate domestic benefit claim information whenever an applicant corrects the application number in a domestic benefit claim in a pending application, but not whenever an applicant corrects the application number of the foreign application in a foreign priority claim.

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On the Record with Patent Commissioner Drew Hirshfeld

On July 30, 2015, Drew Hirshfeld was sworn in as the new Commissioner for Patents. Prior to taking the helm of patent operations as Commissioner for Patents, Hirshfeld served as Deputy Commissioner for Patent Examination Policy. Even before assuming the position of Deputy Commissioner, Hirshfeld was no stranger to senior management, having served two years as the USPTO Chief of Staff for David Kappos. He also served as a Supervisory Patent Examiner as well as a Group Director of Technology Center 2100, overseeing Computer Networking and Database workgroups.

I spoke with Hirshfeld on the record on August 10, 2015. What follows are some of the highlights of the interview. For more please see the complete transcript of our interview.

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