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IPO Daily News™

Friday, 17 August 2018

17 August 2018

MAINTENANCE INTERRUPTS USPTO ONLINE SYSTEMS

As of Thursday afternoon, a number of USPTO online patent-related systems were offline due to emergency IT maintenance. The latest information on alternative methods of filing and payment and systems status can be found on the USPTO website.

* * * USPTO’S INTERPRETATION OF REAL PARTY IN INTEREST UNDER § 315(B) WAS “IMPERMISSIBLY NARROW”

Applications in Internet Time v. RPX Corp., 17-1698 — In a recently unsealed opinion by Judge O’MALLEY that was originally issued on 9 July, the Federal Circuit vacated two USPTO inter partes decisions that AIT’s claims were invalid. AIT argued that RPX’s petitions were time-barred under 35 U.S.C § 315(b) because RPX was acting in the interest of its client Salesforce, against whom AIT had filed a patent infringement complaint more than one year prior to the petitions’ filing.

The Federal Circuit found that the USPTO relied on an “impermissibly narrow” interpretation of the term real party in interest. The language of § 315(b) and legislative history made clear that Congress intended the term to be interpreted using common law principles and to be applied broadly to “ensure that third parties who have sufficiently close relationships with IPR petitioners would be bound by the outcome.” The Federal Circuit said the USPTO had performed an “impermissibly shallow” analysis of evidence probative of “the extent to which Salesforce—as RPX’s client—has an interest in and will benefit from RPX’s actions” and “whether RPX can be said to be representing that interest after examining its relationship with Salesforce.” The Court vacated and remanded for further proceedings. Judge REYNA filed a concurring opinion.
(1 to 4 stars rate impact of opinion on patent & trademark law)

* COURT FINDS INDEXING SYSTEMS PATENT-INELIGIBLE

BSG Tech LLC v. BuySeasons, Inc., 17-1980 — On 15 August in an opinion by Judge HUGHES, the Federal Circuit upheld a district court decision that BSG Tech’s claims were not patent-eligible under 35 U.S.C. § 101. The patents were directed to a “‘self-evolving generic index’ for organizing information stored in a database.” BSG Tech argued that the claims recited unconventional features that provided benefits over conventional prior art databases.

The Federal Circuit disagreed. Under step 1 of the Alice test, the claims were directed to the abstract idea “of considering historical usage information while inputting data.” Under step 2, “it was irrelevant whether considering historical usage information while inputting data may have been non-routine or unconventional as a factual matter. As a matter of law, narrowing or reformulating an abstract idea does not add “significantly more” to it.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

RUSCHKE TO STEP DOWN AS PTAB CHIEF JUDGE

USPTO Patent Trial and Appeal Chief Judge DAVID RUSCHKE will step down from his position on 2 September. He will step into the newly-created position of liaison between the PTAB and the USPTO’s patent division. Deputy Chief Judge SCOTT BOALICK will serve as Acting Chief Judge and Vice Chief Judge JACQUELINE BONILLA will serve as Acting Deputy Chief Judge until the position is filled.

IPO RESPONDS TO WIPO CIRCULAR CONCERNING DESIGN ISSUES

Yesterday IPO Executive Director MARK LAUROESCH submitted a response to WIPO’s Circular C. 8776 concerning (1) the requirement for a link between GUIs, Icons, Typeface/Type Font Designs and the article or product and (2) the methods allowed by offices for the representation of animated designs. IPO’s response provided questions regarding these topics and other relevant information. IPO’s Industrial Designs Committee—Chair: JAIME LEMONS (Nike, Inc.); Vice Chairs: ELIZABETH DIANE FERRILL (Finnegan, Henderson, Farabow, Garrett & Dunner, LLP) and ANTHONY MICHAEL PRENOL (Blake, Cassels & Graydon LLP)—assisted with preparing the comments. Special thanks to Committee Secretary DANIEL A. GAJEWSKI (Sterne, Kessler, Goldstein & Fox, PLLC) for coordinating this project.

IPO’S ANNUAL MEETING TO FEATURE SESSION ON SUBJECT MATTER ELIGIBILITY

Join IPO at the 2018 Annual Meeting in Chicago, Illinois from 23-25 September and attend a session titled “Time to Call 911 (Emergency!) on 101: Is Patent Eligibility Doctrine Undermining U.S. Leadership in Innovation?” The session will focus on developments over the past year in the U.S. federal courts and at the USPTO regarding subject matter eligibility. Moderated by Prof. ADAM MOSSOFF (George Mason University School of Law), panelists include COURTENAY BRINCKERHOFF (Foley & Lardner LLP), HEATH HOGLUND (Dolby Laboratories), GARY ROPSKI (Brinks Gilson & Lione), and COREY SALSBERG (Novartis). They will discuss recent decisions and whether the desire for a legislative fix is stronger or weaker than a year ago. Patent prosecution trends and tips relating to section 101 will also be discussed.


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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