18 February

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Time to Close the Gap: Is the PTAB Looking at Prosecution Histories in IPRs?

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“The gap between the scope of review required under Phillips and that implemented by the Board plainly does the public a disservice. The public has a right to rely on the prosecution history in order to understand the scope of a patent’s issued claims.” If a recent decision denying institution of an inter partes review (IPR) is any indicator, the answer to the question above seems to be no, the Board does not routinely review a challenged patent’s prosecution history—even when the history includes a prior Board decision construing claim terms at issue in the IPR. In Apple Inc. v. Uniloc 2017 LLC, IPR2019-00753,...

18 February

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Earth to Google: Here’s Why APIs Need to be Copyrightable

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On January 6, 2020, Google submitted its brief in Google v. Oracle, kicking off the Supreme Court case that many are calling the “copyright case of the decade.” The suit pits the search engine platform controlling 93% of the worldwide search market against Oracle, the owner of the ubiquitous Java program, which submitted its response brief last week. After attempting and failing to secure the rights to Java, Google decided to cease negotiating and instead replicated 37 API packages from the copyrighted program, a decision that precipitated the years-long lawsuit. Making Google Hum An API, or application programming interface, is what allows different parts of a computer program...

18 February

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This Week in Washington IP: Balancing Interests in Tech Exports, Predictive Analytics in Criminal Justice and Energy Storage Innovation

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his week in Washington IP events, it’s quiet on Capitol Hill as both the House of Representatives and the Senate enter work periods for the week following Monday’s Presidents’ Day holiday. However, the Center for Strategic & International Studies is hosting a series of events focused on situational awareness technologies for nuclear arms, the recent Privacy Framework from NIST and advances in energy storage technologies across the automotive and electrical grid industries. Elsewhere in DC, the Brookings Institution will explore issues involving the use of predictive AI analytics in the criminal justice system, and the Information Technology and Innovation Foundation...

17 February

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Six Years After Alice: 61.8% of U.S. Patents Issued in 2019 Were ‘Software-Related’—up 21.6% from 2018

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As an update to my posts from 2017 and 2019, it has now been more than six years since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Still, the IP bar awaits a clear and reliable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none.” The USPTO’s Section 101 guidelines interpreting Alice—and the accompanying 46 examples—have not cleared the confusion, and Alice continues to distract the USPTO, courts, and practitioners from focusing properly on Sections 102 (novelty) and 103 (obviousness). The net effects still being increased cost, lower patent quality,...

17 February

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New USPTO Trademark Rules Seek to Streamline Filing and Crack Down on Fraud, But Could Increase Spam

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“Spam letters to trademark applicants and registrants have long been a plague of the industry, and the much lower barrier to sending unsolicited email [as a result of the email rule change] likely means this problem will continue.” UPDATE: At the eleventh hour, just before the rule was to take effect, the USPTO issued revised email address requirements to address concerns outlined below from the trademark bar and public about the potential for an influx of unsolicited communications to the trademark owner’s inbox. The revised rule allows applicants represented by counsel to use any email address for the “trademark owner,” so long as...

17 February

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WIPO and U.S. Copyright Office Team Up to Talk Copyright in the Age of AI

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Earlier this month, the U.S. Copyright Office and the World Intellectual Property Organization (WIPO) held a joint event titled, “Copyright in the Age of Artificial Intelligence” (AI) at the Library of Congress in Washington, DC. The event explored how global copyright law and intellectual property law, as well as broader policy, may currently address AI technology, and included dialogue about changes that may be needed. Panelists also shared how AI is being utilized now and what future technology deployment and innovation may look like. The event was part of a series of conversations organized by the U.S, Copyright Office and WIPO...

16 February

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Why eBay v. MercExchange Should, But Won’t, Be Overruled

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As anyone who follows the United States Supreme Court knows, the Court has historically been extremely fond of taking important cases with cutting edge issues, only to dodge the real issues and address some insignificant procedural or hyper-technical issue. Such disappointment is all too frequent, so Supreme Court watchers are seldom surprised when the Court passes on an opportunity to breathe clarity into otherwise unsettled waters. But what the Supreme Court did in eBay Inc. v. MercExchange LLC, 547 U.S. 388 (2006) was far more disappointing. In eBay, the Supreme Court decided to throw out longstanding and well-established Federal Circuit jurisprudence and...

15 February

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Identifying the Crucial Qualities of Great IP Managers

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What’s the secret to Intellectual Property Management? After managing hundreds of inventions, I’m going to tell you the essential trait of an excellent IP Manager, and give my four best tips for managing what is often a company’s most valuable asset. The answers might surprise you. IPWatchdog readers know the importance of capturing IP, whether it is patents, trademarks, copyrights, or trade secrets. This article isn’t detailing technical tips for filing patents or how to corner a strategic area of the market; the difference between a good and a great IP Manager is leadership. Capturing IP is one of many responsibilities...

14 February

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Other Barks & Bites for Friday, February 14: Federal Circuit Orders Case Against Google Out of Eastern Texas, DOJ Indicts Huawei on Trade Secrets, and USPTO Faces Backlash Over Email Address Requirement

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This week in Other Barks & Bites: The Federal Circuit issues precedential decisions in patent cases involving data centers as “regular and established place of business,” the Section 315 time-bar for PTAB proceedings and a settlement agreement rendering a summary judgment ruling moot; former Chief Judge Michel asks the Federal Circuit for an en banc rehearing of a panel decision raising the standards for patent owners proving that patent claims are non-obvious because of secondary considerations; the Department of Justice indicts Huawei on trade secret theft and RICO charges; the USPTO hosts job fairs for new patent examiners while the agency also...

13 February

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Senate IP Subcommittee Kicks Off Year-Long Review of Digital Millennium Copyright Act

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Senator Thom Tillis (R-NC) and Senator Chris Coons (D-DE) this week held the first in a series of eight tentative hearings scheduled for this year on the topic of updating and modernizing the U.S. Digital Millennium Copyright Act. Tillis’ goal is to address changes to the internet since the DMCA was passed in 1998, and by December 2020 to release draft text of a reform bill for stakeholder comment. Senator Coons pointed out that the IP Subcommittee has been the most active subcommittee on the Senate Judiciary Committee, and Tillis said that the process will take place in the same vein as last...