Insights

On February 27, 2023, the Director of the United States Patent and Trademark Office ("USPTO") issued a precedential sua sponte Director Review Decision in the Inter Partes Review ("IPR") of Commscope Technologies LLC v. Dali Wireless, Inc. ("Commscope"), IPR2022-01242. The decision vacated the Patent Trial and Appeal Board ("PTAB") decision granting institution of the petition and held that when deciding whether to institute an America Invents Act ("AIA") post-grant proceeding[1] with a parallel district court litigation, the PTAB must first conduct Fintiv[2] discretionary denial analysis. The PTAB should only consider the compelling merits (or compelling unpatentability challenges) of Fintiv factor 6 if it determines that Fintiv factors 1-5 favor a discretionary denial.

Last Monday, the PTO affirmed its earlier (and unsurprising) position that a patent application filed in July was incomplete because it named an artificial intelligence as the inventor.  The application is believed to be among the first to name an AI as an inventor.

On June 16, 2015, the U.S. Court of Appeals for the Federal Circuit issued a partial en banc decision clarifying the standard to determine whether a patent claim limitation lacking the word "means" is in fact a means-plus-function limitation subject to the strictures of 35 U.S.C. § 112, para. 6 (now 35 U.S.C. § 112(f)). In Williamson v. Citrix Online, LLC, et al., No. 2013-1130, the Federal Circuit overruled its decade-old precedent that established a strong and not readily overcome presumption that a claim limitation expressed in functional language without use of the word "means" is not governed by Section 112, para. 6. This decision will implicate both patent prosecution and litigation—as prosecutors will find it harder to avoid drafting claims that do not invoke "means-plus-function" limitations, and defendants may find it easier to construe claims narrowly by arguing for such "means-plus-function" constructions, as well finding such claims invalid for lack of an enabling disclosure. 

On June 25, 2014, the United States Patent and Trademark (USPTO) issued its Preliminary Alice Corp. Instructions on the application of the United States Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., No 13-298. The Preliminary Alice Corp. Instructions provide guidance to USPTO examiners when determining subject matter eligibility under 35 U.S.C. 101 of claims involving abstract ideas. The USPTO provided the following guidance:

On January 3, 2013, the FTC announced the settlement of its long-standing investigation of Google's business practices related to search algorithms, search advertising, and the assertion of standard-essential patents ("SEPs") encumbered by commitments to license on fair, reasonable, and nondiscriminatory ("FRAND") terms. This update focuses on the portion of the settlement that relates to Google's SEPs.

On April 16, 2012, the National Highway Traffic Safety Administration ("NHTSA") issued a notice of proposed rulemaking that will affect automobile manufacturers and certain component part manufacturers. NHTSA's proposed rule seeks to modify and expand current Federal Motor Vehicle Safety Standard No. 124 ("FMVSS No. 124"), the standard that regulates Accelerator Control Systems ("ACS"). This widely-applicable proposal covers passenger cars, multipurpose passenger vehicles, trucks and buses, though application of one component of the rule is currently limited by vehicle weight. NHTSA hopes that the proposed rule will "reduce deaths and injuries resulting from uncontrolled vehicle propulsion caused by malfunctions or disconnections in accelerator control systems and from conflicting inputs to the brake and accelerator controls in a vehicle."     

On September 16, 2011, the America Invents Act was signed into law by the President. The Act includes significant changes to U.S. patent law, which are summarized below. Some of these changes are effective immediately, while others will become effective over the next several years.

In Cooper Technologies Company v. Dudas and Thomas & Betts Corporation (No. 2008-1130, August 19, 2008), the Federal Circuit affirms the interpretation of the United States Patent and Trademark Office (Patent Office) that utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications and the national stage phase of international applications are subject to inter partes reexamination, in contrast to Appellant's contention that only the first application in a chain of applications from which priority is claimed is subject to inter partes reexamination. The Federal Circuit explains that because the Patent Office is specifically charged with administering statutory provisions relating to "the conduct of proceedings in the Office," the Federal Circuit gives Chevron deference to the Patent Office's interpretations of those provisions. The Federal Circuit concludes that the Patent Office's interpretation is reasonable and is entitled to Chevron deference.

In the wake of the US Supreme Court’s ruling in KSR International v. Teleflex, US patent applicants are likely to encounter a surge of obviousness rejections from the USPTO. Undoubtedly, KSR has dramatically altered the patent prosecution landscape: some arguments that might have prevailed prior to KSR may no longer be viable. In this alert, we first summarize the KSR decision, and then predict the top arguments for combating post-KSR obviousness rejections before the USPTO.

In a much-anticipated decision, KSR International Co. v. Teleflex, Inc., the U.S. Supreme Court, in a unanimous decision, overruled the Federal Circuit’s longstanding test for determining when an invention is "obvious" under the patent statute. The Court determined that the "teaching, suggestion, or motivation" ("TSM") requirement was too "rigid" and that a proper framework requires a more flexible and common sense approach tied to the "ordinary creativity" of persons skilled in the art. The practical effect of the Supreme Court's ruling will likely make it more difficult to obtain patents before the U.S. Patent and Trademark Office while, at the same time, making it easier to invalidate issued patents.

The Supreme Court's recent decision in MedImmune, Inc. v. Genentech , Inc., 127 S.Ct. 764 (2007), may have broader implications than some realize. MedImmune holds that a licensee that believes it does not infringe any valid claim of the licensed patent may seek relief from the patent through a declaratory judgment action, even while the license remains in effect. If successful, the licensee is relieved of royalties; if unsuccessful, the license remains in place and royalty payments continue at the agreed rate.