Finjan shows patent owner can prevail at IPR institution stage

Finjan Holdings, Inc. (NASDAQ: FNJN), the parent of wholly owned subsidiary Finjan, Inc., recently announced that the Patent Trial and Appeal Board (PTAB) for the United States Patent & Trademark Office (USPTO) denied six of Symantec Corporation’s petitions for inter partes review (IPR) of Finjan patents.

“This is an unprecedented response by the US Patent Office,” stated Phil Hartstein (left), President and CEO of Finjan, upon learning of the decision of the PTAB.

The word “unprecedented” gets thrown around all too frequently, but the use of the word here does seem entirely appropriate. That Finjan would prevail in six separate IPR institution decisions relating to the same patent litigation seems nothing short of extraordinary given that the PTAB is instituting 80% of IPR petitions, and given how slanted IPR rules are against the patent owner, particularly at the institution stage.

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On the Record with USPTO Director Michelle Lee

On Wednesday, January 20, 2016, I had the opportunity to go on the record with Michelle Lee, who is Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO).

During our 30-minute conversation, we discussed a wide range of topics, including the release of the Commerce Department’s Copyright White Paper, which among other things recommends expanding eligibility for statutory damages in certain copyright infringement actions. We also discussed Lee’s recent visit to the Consumer Electronics Show (CES), the power outage that brought down USPTO electronic filing systems, the Office’s patent quality initiative, the new patent classification system, the Patent Trial and Appeal Board (PTAB), and more. For the full transcript of our interview, please see An Exclusive Interview with Michelle Lee.

What follows are the highlights of our interview.

Right before the holidays, on December 22, 2015, the USPTO suffered a major power failure. Everything is back to normal now, but I wanted to ask Director Lee about where we stand and if she could confirm no data had been lost. Director Lee explained things are indeed back to normal and no data was compromised.

LEE: Yes. So we are fully up and running as before, and we have been for a while now. No data was lost, and it was really an unprecedented outage of our online systems caused by an electrical failure to the data center that was owned and operated by contractors. It was not a failure of our IT systems or the result of foul play. And I have to say, Gene, the dedicated team of USPTO employees mobilized and immediately stabilized and restored the systems. They worked around the clock when the outage occurred, during the holidays, to restore customer service and we were, again, fully operational within a matter of days. That’s a real testament to the incredible hard work, the incredible dedication of so many employees here at the PTO working very hard and really wanting to do what’s in the best interest of the stakeholders to get those services up and running. So everything is up and running as normal. We did not lose data. And we’re conducting careful forensics and we’re looking to incorporate what we learn into further improvements to our system. Actually, not our systems, but the third-party systems that feed our systems. So it’s not a lost opportunity, but we’re glad to have it up and running, and I give all the kudos to the team.

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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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