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IPO Daily News™

Friday, 14 September 2018 8:15 am

* * COURT UPHOLDS IPR DECISION THAT CLAIMS WERE ANTICIPATED

Nobel Biocare Servs. AG v. Instradent USA, Inc., 17-2256 — Yesterday in an opinion by Judge LOURIE, the Federal Circuit upheld a USPTO inter partes review decision that Nobel’s claims were anticipated. The patent claimed a type of dental implant. Nobel argued that a catalog distributed at a 2003 dental conference did not constitute a prior art printed publication under pre-AIA 35 U.S.C. § 102(b).

The Federal Circuit disagreed. Although it had previously affirmed a U.S. International Trade Commission decision that the catalog was a not printed publication, the decision was not binding because the USPTO applied a lower evidentiary standard than the ITC. Moreover, precedent taught that inconsistent agency decisions could both be supported by substantial evidence. Here, Instradent had presented to the USPTO testimonial and other evidence that was not considered by the ITC in support of its argument that the catalog was publicly available to the dental industry before the patent’s critical date.
(1 to 4 stars rate impact of opinion on patent & trademark law)

* COURT UPHOLDS IPR OBVIOUSNESS FINDINGS

ParkerVision, Inc. v. Qualcomm Inc., 17-2012 — On 13 September in an opinion by Judge O’MALLEY, the Federal Circuit upheld USPTO inter partes review decisions that ParkerVision’s claims were obvious. The patent was for “telecommunications devices, such as cellular phones, in which low frequency electromagnetic signals were ‘up-converted’ to higher-frequency signals by various means.” ParkerVision argued, with respect to apparatus claims, that the USPTO erred by basing its decisions on theories and evidence concerning the phrase “plurality of harmonics” not presented in Qualcomm’s petitions. The Federal Circuit disagreed. To prove that the apparatus claims would have been obvious, Qualcomm needed only to identify a prior art reference disclosing an apparatus “capable of” performing the recited functions. It was undisputed that a device in a prior art reference was capable of producing a plurality of harmonics.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IPO COMMENTS ON PROPOSED PATENT FEES

Yesterday IPO Executive Director MARK LAUROESCH submitted comments to the USPTO concerning proposed patent fee adjustments announced last month. Under section 10 of the America Invents Act, the USPTO may set or adjust patent fees subject to a Patent Public Advisory Committee (PPAC) public hearing. IPO’s written comments are consistent with remarks presented by IPO last week during the public hearing. They discuss the non-DOCX filing surcharge and increases proposed to fees for information disclosure statements, extension of time, requests for continued examination, expedited review of design applications, and inter partes review and post grant reviews. The IPO comments suggest that the proposed 20% increase for issue fees and the 25% proposed increase to maintenance fees due at 3.5 years are likely to result in patentees being more selective about paying those fees, which would reduce the USPTO’s total revenue. The comments also address the proposed Annual Active Patent Practitioner fee, suggesting that more information is needed to evaluate the fee and how the revenues would be used. IPO’s U.S. Patent Office Practice, U.S. Post-Grant Patent Office Practice, and Industrial Designs Committees assisted with preparing the comments.

PPAC will publish a report on the proposed fee changes and public feedback it received. The USPTO intends to publish a notice of proposed rulemaking in summer 2019 for additional public comments, with a final rule to be published in the summer or fall of 2020 and new fees taking effect in January 2021.

HOUSE JUDICIARY APPROVES BILL TO EXTEND USPTO’S FEE SETTING AUTHORITY

Yesterday the House Judiciary Committee approved H.R. 6758, the “Study of Underrepresented Classes Chasing Engineering and Science Success Act” (SUCCESS Act) introduced by Rep. STEVE CHABOT (R-Ohio) last week. The bill would extend the USPTO’s fee-setting authority for eight years. It also requires the USPTO to study the underrepresentation of women and minorities in inventorship and recommend legislative solutions. The bill must now be considered by the full House of Representatives.

S. 3416, the “USPTO Funds for Efficient and Effective Services Act” (USPTO FEES Act) introduced in the Senate by Judiciary Committee Chairman CHUCK GRASSLEY (R-Iowa), has not yet been scheduled for the Committee’s consideration.

ATTEND COMMITTEE-ORGANIZED SESSION ON PROTECTING SOFTWARE IN THE PHARMACEUTICAL AND HEALTH CARE INDUSTRIES AT IPO ANNUAL MEETING

Join IPO at the 2018 Annual Meeting, 23-25 September, and attend a session on “Protecting Software in the Pharmaceutical and Health Care Industries” organized by IPO’s Pharmaceutical & Biotechnology Issues, Software Related Inventions, and Emerging Technologies Committees. The session will cover different ways software is protected under U.S. law, including relevant case law and the benefits and disadvantages of different IP frameworks. Panelists GRANTLAND DRUTCHAS (McDonnell Boehnen Hulbert & Berghoff LLP), MONA GUPTA (Roche Diabetes Care, Inc.), and JOSHUA SIMMONS (Kirkland & Ellis, LLP) will highlight the particular eccentricities of protecting of new pharmaceutical and health care technologies such as body chemistry monitoring systems, robot and artificial intelligence technologies in labs, and so-called Software as a Medical Device.