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IPO Daily News™

Tuesday, 21 August 2018

21 August 2018

USPTO ONLINE SYSTEM INTERRUPTION UPDATE

The previously reported interruption of USPTO online patent-related systems continues. At 4:00p.m. ET last evening, the USPTO website reported that significant progress had been made to restore the PALM database and estimated that service would be restored sometime today. The USPTO has stated that, given the availability of alternative methods of filing, it does not plan to extend deadlines. However, it announced yesterday that Director ANDREI IANCU “will prescribe a procedure for re-submitting applications electronically to receive a refund of the paper filing fee (or to not incur a fee if not yet paid). Applicants who follow this procedure will maintain their original filing dates for applications filed by paper during the outage.”

* * COURT VACATES FINDING THAT PATENT WAS NOT UNENFORCEABLE DUE TO IMPLIED WAIVER

Core Wireless Licensing v. Apple Inc., 17-2102 — On 16 August in an opinion by Judge BRYSON, the Federal Circuit vacated a district court decision that Core Wireless’s patent was not unenforceable due to implied waiver. The patent claimed technology for allowing mobile devices to communicate with a base station. Apple argued that Core Wireless’s predecessor-in-interest Nokia waived the right to enforce the patent by breaching its disclosure obligation to a standards-setting organization (SSO).

The Federal Circuit said substantial evidence did not support the district court’s conclusion that Nokia was not subject to the disclosure requirement. Although Nokia’s technical proposal was not adopted by the SSO, the organization’s IP policy specified that “the disclosure requirement attaches to a member ‘submitting a technical proposal’ if that party has intellectual property that ‘might’ be essential ‘if that proposal is adopted.’” The Court also rejected conclusions that the policy applied only to issued patents and that other SSO members were required to interpret Nokia’s breach as intent to waive its rights. The Court remanded for the district court to consider “whether Nokia or Core Wireless inequitably benefited from Nokia’s failure to disclose.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

* IPR PETITION WAS TIME-BARRED UNDER § 315(b)

Luminara Worldwide, LLC v. Iancu, 17-1629 — On 16 August in an opinion by Judge DYK, the Federal Circuit vacated a USPTO inter partes review decision. Luminara’s patent claimed flameless candle technology. Luminara’s predecessor-in-interest had served Liown with a complaint for patent infringement, which was voluntarily dismissed, more than one year before the petition was filed. Luminara then sued Liown for patent infringement less than one year before the petition was filed. Luminara argued that Liown’s petition was time-barred under 35 U.S.C. § 315(b).

The Federal Circuit agreed that “because the section 315(b) time-bar applies when the underlying complaint alleging infringement has been voluntarily dismissed without prejudice, the Board erred in instituting the IPR challenging the ‘319 patent.” The court remanded for dismissal of the IPR.
(1 to 4 stars rate impact of opinion on patent & trademark law)

STRATEGY AND VALUE BEHIND IP AUDITS

Where do IP audits fit into your portfolio management strategy? What kind of audits are worth doing, and when? Register to attend IPO’s Annual Meeting in Chicago, Illinois from 23-25 September, and attend a session on the strategy and value behind IP audits. KAREN COCHRAN (Shell International B.V.), DANIEL ENEBO (Cargill, Inc.), JOSEPH SHIRTZ (Johnson & Johnson), and JESSICA SINNOTT (DuPont) will discuss best practices, including tips on priorities, timing, and the efficient use of outside counsel for maximizing value without breaking the budget.

IPO SUBMITS COMMENTS ON USPTO EXAM GUIDANCE FOR DETERMINING WHETHER CLAIM ELEMENT IS WELL-UNDERSTOOD, ROUTINE, OR CONVENTIONAL UNDER TWO-PART ALICE TEST

Yesterday IPO Executive Director MARK LAUROESCH submitted comments to the USPTO on the Berkheimer memo, patent examination guidance for determining whether a claim element is well-understood, routine, or conventional under the two-part Alice test that was issued by the USPTO following the Federal Circuit’s decision in Berkheimer v. HP Inc. IPO’s comments recommend: 1) that the guidance consistently use the phrase “well-understood, routine, and conventional”; 2) that the guidance focus on whether a claim element is “well-understood, routine, and conventional” rather than “widely prevalent” or “in common use”; 3) that the USPTO provide definitions of “well-understood,” “routine,” and “conventional” that consider the overall context of the invention; 4) that analysis of whether a claim element is well-understood, routine, and conventional should not be conducted under § 112; 5) that applicant admissions that a claim element is well-understood, routine, and conventional must be express, not inferred; 6) that citation to judicial opinions for answering factual inquiries as to whether a claim element is well-understood, routine, and conventional must be strictly limited; and 7) that references to publications should be limited to authoritative, peer-reviewed publications. Members of several IPO committees assisted with preparing the comments.

LIKE YOUR FAVORITE IP VIDEO CONTEST ENTRY ON FACEBOOK

New this year, the contestants of the IP Video Contest are eligible for up to $9,500 in cash prizes and scholarships! Each finalist is eligible for a $2,000 cash prize if their submission receives the most likes on the Foundation Facebook page. Join in and like your favorite video on the Foundation page.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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