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IPO Daily News™

Friday, 22 March 2019

22 March 2019

FRIDAY, 22 MARCH 2019, 9:00a.m. ET

IPO SENDS LETTER TO USPTO RECOMMENDING AMENDMENTS TO PTAB RULES OF PRACTICE CONCERNING ENTRY OF ADVERSE JUDGMENTS

Yesterday IPO Executive Director MARK LAUROESCH sent a letter to USPTO Director ANDREI IANCU and Patent Trial and Appeal Board Chief Judge SCOTT BOALICK concerning a resolution adopted by the IPO Board of Directors earlier this month. The resolution supports USPTO rulemaking to amend 37 C.F.R. §§ 42.73(b), §42.107(e), and §42.207(e) to reflect that the Patent Trial and Appeal Board may not enter adverse judgment prior to institution of trial against a patent owner who disclaims challenged patent claims. It arises from the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc. In that case, the patent owner disclaimed all challenged claims prior to the PTAB’s institution decision, stating that it was “not requesting an adverse judgment.” Nonetheless, the PTAB entered an adverse judgment under Rule 42.73(b)(3), causing an estoppel to attach that precluded the patent owner from “taking action inconsistent with the adverse judgment, including obtaining in any patent … a claim that is not patentably distinct from a finally refused or cancelled claim.”

The PTAB justified its entry of adverse judgment on the ground that Rule 42.73(b) permits a party to take adverse judgment against itself during a proceeding, which “begins with the filing of a petition for instituting a trial.” 37 C.F.R. § 42.2. The Federal Circuit concluded that the regulation, as written, was properly interpreted. Judge O’MALLEY concurred but questioned whether the PTAB had authority to enter adverse judgment on statutory disclaimers prior to institution. Judge NEWMAN dissented, arguing that the phrase “in the trial” in Rule 42.73(b)(2) precluded the PTAB from entering adverse judgment. The IPO resolution recommends amending the rules of practice to explicitly provide for disclaimers and cancellation of claims pre-institution and clarify that such cancellations would not result in a judgment against the patent owner.

IP IN THE MASS MEDIA

Voltage Pictures Prevails in Copyright Dispute on The Professor and the Madman

Yesterday the Hollywood Reporter reported that this week a federal judge issued partial summary judgment finding that Voltage Pictures did not infringe director FARHAD SAFINIA’s copyright in the screenplay for the unreleased film The Professor and the Madman because Safinia had transferred his copyright to Airborne Productions in 2007.

Wikipedia Goes Dark In Europe to Protest New Copyright Laws

Yesterday the UK’s Daily Mail reported that Wikipedia pages went dark across Europe for a day to protest the EU Copyright Directive, which would hold platforms liable for users’ copyright infringement.


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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