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IPO Daily News™

Monday, 20 August 2018

20 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 “[e]xperts in databases, operating systems, and storage from within the USPTO and our external vendors are continuing to work around the clock to restore the PALM database. Although we are working to restore systems as soon as possible—and our teams are always looking for ways to accelerate or compress activity to bring faster results—it is unlikely the restoration will be completed by the time the work week begins tomorrow.” The USPTO has stated that, given the availability of alternative methods of filing, it does not plan to extend deadlines. It has also said that it recognizes that there are concerns about paper filing fees and that it is examining options to see how it can address those concerns.

***§ 315(b) BARS INSTITUTION OF IPR PETITION WHERE DISTRICT COURT ACTION VOLUNTARILY DISMISSED WITHOUT PREJUDICE

Click-to-Call Techs., LP v. Ingenio, Inc., 15-1242 — On 16 August in a panel opinion by Judge O’MALLEY with an en banc footnote, a majority of the Federal Circuit vacated a USPTO inter partes review decision that that Ingenio’s petition was not time-barred under 35 U.S.C. § 315(b). The Federal Circuit had granted Click-to Call’s petition for rehearing en banc, which it construed as a petition for panel rehearing, following its decision in Wi-Fi One, LLC v. Broadcom Corp. that time-bar determinations under § 315(b) are appealable.

The en banc majority held that § 315(b) bars institution of an IPR when a petitioner was served with a complaint for patent infringement more than one year before filing its petition but the district court action was voluntarily dismissed without prejudice. The Court explained that “the text of § 315(b) clearly and unmistakably considers only the date on which the petitioner, its privy, or a real party in interest was properly served with a complaint.” Judge TARANTO filed a concurring opinion. In a dissenting opinion joined by Judge LOURIE, Judge DYK disagreed with the en banc majority, saying that “the use of traditional tools of statutory construction leads to a conclusion opposite to the en banc court.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

*COURT DENIES WRIT OF MANDAMUS PETITION CHALLENGING USPTO DECISIONS DENYING INSTITUTION OF IPR

In re: Power Integrations, Inc., 18-144 — On 16 August in an opinion by Judge BRYSON, the Federal Circuit denied PI’s writ of mandamus petition challenging USPTO decisions denying institution of inter partes review of patents owned by Semiconductor Components Industries, LLC. The USPTO had held that PI failed to demonstrate that it was likely to prevail because it had not shown that any reference cited in its petitions was publicly accessible before the priority date. PI argued that the USPTO did not adequately explain its decisions pursuant to the Administrative Procedure Act.

The Federal Circuit disagreed, finding that the USPTO’s decisions “explained in detail why it concluded that the [] references had not been shown to be publicly accessible before the priority date,” and were sufficient to comply with the APA’s “modest” notice requirement. It also noted that “the statutory prohibition on appeals from decisions not to institute inter partes review cannot be sidestepped simply by styling the request for review as a petition for mandamus.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

U.S. TRADE REPRESENTATIVE REQUESTS COMMENTS FOR 2018 NOTORIOUS MARKETS LIST

Late last week the Office of the U.S. Trade Representative (USTR) published a Federal Register notice requesting public comments that identify online and physical markets based outside the U.S. that should be included in the 2018 Notorious Markets List. Under Special 301, the Notorious Markets List identifies marketplaces “that reportedly engage in and facilitate substantial copyright piracy and trademark counterfeiting.” Written comments are due 1 October and rebuttal comments and other information are due 15 October. IPO Committees will be studying the notice.

IPO ADDS MEMBER TO INTELLECTUAL PROPERTY CONSTITUENCY DELEGATION

JENNY GREISMAN (IBM Corp.), Chair of the IPO U.S. Trademark Office Practice Committee, has joined IPO’s delegation to the Intellectual Property Constituency (IPC). The delegation also includes longtime voting member DAVID A. EINHORN (Scarinci Hollenbeck). The IPC describes itself as representing “the views and interests of the intellectual property community worldwide at ICANN.” The IPO IPC delegation is focusing on issues such as the reinstatement of access by trademark and copyright owners to meaningful, searchable WHOIS information.

Jenny Greisman David Einhorn

THIS WEEK ON IPO’S IP CHAT CHANNEL™: AFTER RPX: PRIVITY, RPI AND ESTOPPEL IN AIA POST-GRANT PROCEEDINGS

Tune in to the IP Chat Channel™ on Thursday, 23 August at 2:00p.m. ET to learn about the recent Federal Circuit decision in Applications in Internet Time (AIT) v. RPX, an appeal from a PTAB IPR decision. That opinion found that the PTAB took an “impermissibly shallow” look at evidence presented by the patent owner about the relationship between the petitioner and another party. AIA estoppel provisions involving district court and ITC litigation apply not only to entities that are directly involved in adversarial proceedings, but also to privies. Likewise, in many IPRs, questions of real party in interest and/or privity are not limited to the business model of defensive groups, but are also raised by common fact patterns in supplier-customer relationships, indemnities, mergers & acquisitions, and use of the same counsel.

Our panel includes ELDORA ELLISON (Stern Kessler Goldstein & Fox P.L.L.C.), a PTAB specialist with extensive experience representing patent owners; CRAIG COUNTRYMAN (Fish & Richardson P.C.), a veteran patent litigator; and GREGORY CASTNIAS (Jones Day), an appellate lawyer who recently represented a client at the Supreme Court in a case that changed PTAB practice. They will discuss:

  • The relationship of privity issues with the time bar under § 315(b) and the ongoing impact of the en banc Federal Circuit decision in Wi-Fi One v. Broadcom Corp. that found time-bar determinations reviewable;
  • How patent owners can take advantage of the RPX decision and what changes may it require in the business models of some frequent IPR petitioners;
  • The options for patent owners who previously lost on privity issues at the PTAB or were denied discovery; and
  • The widely reported expectation that Wi-Fi One will file a petition for certiorari with the U.S. Supreme Court—as well as its efforts before the PTAB to raise the issue of a relationship alleged to be subject to the § 315(b) time bar.

IP Chat Channel™ webinars are recorded and available on our website after the live webinars. CLE granted in many states.


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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