Podcasts about appeal board ptab

The SEP Couch with Tim Pohlmann

Play Episode Listen Later Jul 14, 2023 59:59

USPTO Director Kathi Vidal's decision to issue the Advance Notice of Proposed Rulemaking (ANPRM) is the latest major controversy surrounding the Patent Trial and Appeal Board (PTAB). The American Invents Act (AIA) created the PTAB to supposedly provide a cheaper, faster alternative to district court patent litigation. However, the PTAB quickly gained a reputation for being a patent “death squad” that allows defendants to repeatedly challenge the same patents until those patents are invalidated. During the last administration, former USPTO Director Andrei Iancu tried to correct that by limiting when patents could be challenged at the PTAB. Because those changes never finished going through the federal government's rulemaking process, Vidal was able to quickly roll them back. The ANPRM now presents a litany of its own proposals for fixing fix how the PTAB operates and heated opposition on all sides. Nicholas Matich joins Eli to talk about the ANPRM and what's likely to happen with its proposals. Nick, who is now Principal at the patent litigation powerhouse McKool Smith, served as USPTO's general counsel under Iancu after working at the White House and as Deputy GC of the OMB. This provides him with an unmatched understanding of how the rulemaking process actually works for proposals emanating from the USPTO. Nick and Eli also discuss: What Nick learned from working with Viet Dinh and/or Paul Clement at Bancroft PLLC How the OMB reviews & approves agency rules Serving as USPTO's GC Advice for influencing USPTO's rules Iancu's Fintiv factors & how to explain swift reversal Why the ANPRM was a mistake Advice for future USPTO Directors

law advice white house serving laws lawyers principal vidal omb uspto rulemaking paul clement iancu patent trial ptab appeal board ptab matich anprm

#24 Eli Mazour | The art of SEP claim drafting

Play Episode Listen Later Jul 4, 2023 42:11

Eli Mazour is a Partner with Harrity & Harrity LLP where he leads the firm's patent prosecution team. Eli's practice focuses on helping large technology companies build valuable, high-quality SEP portfolios in an efficient manner. In this role, he develops and implements best practices for managing workflow and innovative, data-driven patent prosecution strategies for reaching favorable results at the USPTO. Eli also helps clients evaluate existing patent portfolios, identify strategic areas for patenting, and create processes for harvesting disclosures of patentable inventions. In addition, he has been involved with licensing negotiations, patent infringement investigations, clearance of products (freedom to operate opinions), and patent litigation. As a result, he is keenly aware of the pitfalls to avoid and opportunities to grasp during patent prosecution. Eli is also the creator and host of the Clause 8 podcast, which features interviews with the most interesting members of the IP community.Eli has a strong track record for drafting SEPs for clients that have high-quality SEP portfolios such as Qualcomm. In the SEP Couch podcast, Eli elaborates on why SEPs are so special and different from other patents. He explains that drafting SEP claims is much more complex since the language used in an invention disclosure may be different compared to the language used in a standards document. And a standard still develops and changes which makes it even more difficult to keep mapping claims to evolving standards section. Eli works closely with the inventors while also monitoring standards development. He also interviews the USPTO examiners to better understand what scope of a claim will likely be accepted.SEPs must not only be essential but also valid. An additional feature described in a claim creates the risk that prior art exists somewhere. Therefore, if a feature does not make it in a standard, he rather focuses on claim language to use more specific language.The USPTO allows third parties to submit prior art in a so-called inter partes review (IPR) presented before the Patent Trial and Appeal Board (PTAB). This possibility has created new business models such as the company Unified Patents which helps its clients to “kill” SEPs in targeted invalidation campaigns. Such practices have increased the requirements for drafting valid patents, even though Eli explains that especially large SEP holders such as Qualcomm have such a high-quality patent portfolio that it does not matter if a few patents are found invalid. There is a proposal for patent reform in the US patent system (USPTO's new Catch-22) that could make it much more difficult to file IPRs, but Eli does not believe it will pass.Finally, Eli comments on the EU Commission's draft of a proposed SEP regulation which includes a register of essential SEPs. Eli argues that he cannot see how third parties should be able to efficiently determine essentiality which is a very complex task that may take days or even weeks to just claim chart one patent.

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Mon 6/5 - Law School Admissions Normalize, SEC Dismisses Data Access Cases, Solicitor General Whoopsies and LOTR Unauthorized Sequel Lawsuit

Minimum Competence

Play Episode Listen Later Jun 5, 2023 8:12

On this day in legal history the landmark Supreme Court decision of Sweatt v. Painter was decided. In 1946, Heman Marion Sweatt, an African American man, applied to the all-white University of Texas School of Law but was denied admission based on his race. This decision was made in accordance with the segregated policy outlined in Article VII, Section 7 of the Texas Constitution. Sweatt took legal action with the support of the NAACP, seeking enrollment at the university. Initially, a temporary law school called the School of Law of the Texas State University for Negroes was established for black students. It provided access to resources such as the Texas Supreme Court library and had faculty members from the University of Texas School of Law. Sweatt's case was dismissed by a state court after the black law school was established. However, Sweatt appealed to the United States Supreme Court, arguing that the Texas admissions system violated the Equal Protection Clause of the Fourteenth Amendment. On June 5, 1950, the Supreme Court ruled that in states where white students had access to graduate and professional schools while black students did not, black students must be admitted to the white institutions. This decision led to Sweatt's admission to the University of Texas School of Law, along with the enrollment of other black students in subsequent years. The impact of the case was limited to graduate and professional programs at the University of Texas, as black undergraduate students were still not admitted, although graduate students could take undergraduate courses if necessary for their program.With Sweatt v. Painter and another case, McLaurin v. Oklahoma State Regents for Higher Education, the Supreme Court began the long process of overturning the separate but equal doctrine in public education–first by requiring graduate and professional schools to admit black students.Law school applications in the United States have returned to normalcy after the pandemic-induced surge in 2021. The number of applicants has decreased for the second consecutive year, indicating that the previous year's increase was an anomaly attributed to COVID-19. As of Thursday, law school applicants were down by 2.4% compared to the previous year. The Law School Admission Council expects the national applicant pool for this cycle to be slightly smaller than the year before, which was already 12% smaller than in 2021. The decrease in applications aligns with the trend of the past five years, where the number of applicants remained relatively consistent. The increase in applications in 2021 was attributed to various factors, including the disruption of the job market for college graduates caused by the pandemic, protests over racial inequality, and the political climate. The pool of law school applicants continues to become more diverse, with applicants of color comprising 46.5% of the current pool. It's a 'return to normalcy' for law school admissions | ReutersThe U.S. Securities and Exchange Commission (SEC) has dismissed 42 enforcement cases after discovering that its enforcement staff had unauthorized access to materials intended for commission officials handling those cases. The SEC conducted a review of the matter, which was initially raised in April 2022 when it was revealed that certain databases allowed enforcement staff to view legal materials meant for the in-house court officials. The SEC acknowledged the error and expressed regret, emphasizing its commitment to rectify the situation. The improper access was deemed accidental, as administrative staff in the enforcement arm unintentionally accessed adjudication materials while collecting relevant information. An internal review concluded that the improper access had no impact on the decisions made by the enforcement staff or the officials reviewing the cases. However, the SEC decided to dismiss all pending cases that were affected by the improper access, primarily involving individuals and smaller firms. Additionally, the SEC agreed to lift industry bans on 48 individuals who had requested relief from the agency and were also implicated in the incident.US SEC to dismiss 42 enforcement cases after internal data mishap | ReutersThe US Solicitor General has admitted to misleading the Supreme Court in a 2017 patent case involving Nike and Adidas. The misrepresentation occurred during an argument about the validity of inter partes review, a process that allows the US Patent and Trademark Office (USPTO) to reexamine issued patents. By way of very brief background, inter partes review is a process in the United States patent system that allows a third party to challenge the validity of an issued patent before the Patent Trial and Appeal Board (PTAB). It provides a mechanism for reviewing and potentially invalidating patents based on prior art and other grounds, offering an alternative to litigation in resolving patent disputes. In this case, the Solicitor General apologized, stating that the USPTO failed to alert them about the mistake. This is not the first time the Solicitor General has corrected statements made to the justices. The admission came in the context of a separate whistleblower dispute raised by Judge Michael Fitzpatrick, who expressed concerns about attempts to expand the number of judges in the Nike case. The Merit Systems Protection Board ruled in favor of the judge, noting that the Solicitor General's office was not made aware of the potential mistake. The government acknowledged the need for absolute candor and accuracy in its representations to the Court. Solicitor General Office Admits It Misled Court in Patent CaseThe estate of J.R.R. Tolkien, the renowned author of "The Lord of the Rings" trilogy, has filed a copyright lawsuit in Los Angeles federal court against author Demetrious Polychron. The estate accuses Polychron of writing and selling an unauthorized sequel titled "The Fellowship of the King." The lawsuit comes after Polychron himself filed a copyright suit against the Tolkien Trust and Amazon Inc., alleging infringement of his sequel's copyrights following the release of the TV series "The Lord of the Rings: The Rings of Power." The estate discovered Polychron's unauthorized sequel online in March and sent a cease-and-desist letter. Despite the estate's policy of not licensing writers to create sequels, Polychron persisted in pitching his written sequel. The estate attempted to resolve the dispute through a call, but Polychron continuously postponed, citing illness and instead Polychron filed a lawsuit against the Tolkien Estate and others. The estate's complaint states that Polychron's sequel incorporates various copyright-protected elements from the original trilogy, including verbatim passages, characters, and the entire plot premise. Online reviews of the sequel suggest that readers were aware it was an unauthorized derivative work.Tolkien Estate Sues Over Unauthorized ‘Lord of the Rings' Sequel Get full access to Minimum Competence - Daily Legal News Podcast at www.minimumcomp.com/subscribe

IP Offices Series 3/3 - What Does it Take to Transform IP, with Kathi Vidal, Director of USPTO, USA

Brand & New

Play Episode Listen Later Apr 26, 2023 30:49

Most organizations around the globe have faced a significant number of challenges over the last couple of years. The same can be said for intellectual property (IP) offices. From the pandemic to financial market turmoil, through supply chain issues, increased cyberthreats, IP offices have navigated these hurdles and probably more, stretching their IT, budget, and organizational resources in unexpected ways. Yet, IP asset registrations have been soaring globally, and IP offices generally seem to have been riding those waves with success, often transforming challenges into opportunities to evolve to better meet the needs of creators, businesses, and the market.Beyond their role as processors of IP applications and registrations or an inventory of registered assets, how do IPOs envision their mission in 2023? What sort of initiatives do they carry out to ensure they stay in tune with innovators, businesses big and small, and the market at large? How much of a transformative force can they be for the IP world? Our guest today is Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO)—America's Innovation Agency. As the chief executive of the USPTO, Ms. Vidal leads one of the largest IP offices in the world, with more than 13,000 employees and an annual budget of more than US $4 billion. She is the principal IP advisor to the U.S. President and its administration through the Secretary of Commerce, and is focused on incentivizing and protecting U.S. innovation, entrepreneurship, and creativity. Prior to joining the USPTO, Ms. Vidal was Managing Partner for the Silicon Valley office of the law firm Winston & Strawn, a position she held since 2017, representing both patent holders and defendants, both innovators and startup companies with limited resources, and some of the most successful and well-known companies, in U.S. courts and the International Trade Commission. She has also been deeply involved in practice before the U.S. Patent Trial and Appeal Board (PTAB), Federal Circuit appeals, and the Supreme Court. Join Ms. Vidal for a fireside chat at INTA's upcoming 2023 Annual Meeting Live+ in Singapore. This event takes place on Thursday, May 18, 12:45 pm–1:15 pm.Brand & New is a production of the International Trademark AssociationHosted by Audrey Dauvet - Contribution of M. Halle & S. Lagedamond - Music by JD BeatsFOR MORE INFORMATION, VISIT INTA.ORGTo go further: https://www.linkedin.com/in/kathividal/ Also of interest:www.uspto.gov/about-us/executive-biographies/kathi-vidalJumpstart your career with LEAP! (Director's Blog: the latest from USPTO leadership, November 1, 2022)USPTO Ideas For Bolstering Robustness And Reliability Of Patents Demand Attention And Stakeholder Input(foley.com, October 31, 2022)Where are U.S. women patentees? Assessing three decades of growth (USPTO - Office of the Chief Economist, October 2022)Engagement, Collaboration, and Outreach: A Conversation with the USPTO's Kathi Vidal (INTA Bulletin, February 8, 2023)

How the PTAB Killed Molly Metz's Patents

IP Talk with Wolf Greenfield

Play Episode Listen Later Feb 10, 2023 62:21

Five-time world jump rope champion Molly Metz and her husband Dirk Tomsin talk about the highs and lows of innovation, entrepreneurship, and relying on America's patent system. A serious car accident spurred Molly to invent a new type of jump rope that revolutionized jump roping and the use of jump roping for CrossFit. Thanks to patents that were awarded to her by the US Patent Office (USPTO) for the invention, Molly's company – JumpNrope – started making the jump ropes completely in America and licensing the patents to various fitness companies that eagerly relied on her jump roping technology. It should've been the perfect story that the USPTO could tout about how America's economy benefited from a woman inventor taking advantage of the patent system. Instead, Rogue Fitness - the largest fitness distributor for CrossFit –challenged Molly's patents at the USPTO's Patent Trial and Appeal Board (PTAB). Molly and Dirk are now dealing with the aftermath of that and fighting for a better future for other inventors. On this episode, Molly, Dirk, and Eli discuss: Molly's start in the world of jump roping in Boulder, Colorado How a car accident spurred her to invent Decision to file patent applications Examination process at the USPTO & rewarding feeling of obtaining a patent Decision to manufacture the jump ropes in Colorado and not China Experience of successfully licensing the patented jump rope technology to other companies When the patent system worked for Molly Rogue Fitness' initial interest in selling Molly's jump rope, licensing negotiations, and decision to infringe Negative impact of Rogue Fitness' refusal to license the technology Working with patent litigation attorneys to enforce patents Rogue Fitness challenging the patents at the PTAB based on two patents from 1978 and 1979 Molly and Dirk's experience with the subsequent PTAB proceedings and Federal Circuit appeal Prof. Dennis Crouch's analysis of the PTAB decision Supreme Court petition to secure pre-cancellation damages USPTO's effort to increase number of women patentees Advice for other women and small business inventors

Blaine Hackman on Wolf Greenfield's Thriving Post-Grant Practice

Play Episode Listen Later Feb 8, 2023 21:25

Blaine Hackman focuses his Wolf Greenfield practice on post-grant proceedings before the US Patent and Trademark Office (USPTO), and related patent litigation, prosecution, and counseling. He regularly represents clients in inter partes review (IPR) and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB), with an emphasis on biotechnology and pharmaceutical technologies. In this episode of IP Talk with Wolf Greenfield, Blaine offers an overview of the firm's post-grant practice. Here are some of the highlights: 00:49 - An overview of Wolf Greenfield's post-grant practice. 03:12 - The difference between a jury trial and post-grant proceeding. 05:57 - For biotech and pharma companies, choosing the right path is a crucial choice. 07:51 - Changes for companies looking to claim newly discovered life science technologies or improvements to existing technologies. 08:55 - How to evaluate the likelihood of success prior to either a PTAB proceeding or jury trial. 11:04 - Recent changes to post-grant proceedings. 14:40 - The importance of expert testimony in PTAB proceedings and jury trials.16:32 - Life sciences companies often miss opportunities by overlooking the PTAB. 18:50 - Implications for future legal proceedings after going the post-grant route. 20:10 - Wolf Greenfield's expanding post-grant practice in 2023.

practice wolf thriving implications greenfield hackman pgr us patent ipr trademark office uspto patent trial ptab appeal board ptab

Turning Your Intellectual Property Into a Company with Keegan Caldwell

Retire As You Desire

Play Episode Listen Later Sep 1, 2022 37:16

In this part 2 episode, Bill is joined once again by the Founder and Managing Partner of Caldwell Intellectual Property Law, Keegan Caldwell. Today they talk more about intellectual property, creating and applying for patents, and how you can use them. Keegan also shares what keeps him motivated to take action daily. Dr. Caldwell has extensive and diverse experience with advising clients from innovation conception to 9-figure monetization events. Keegan works with start-ups and established entities to develop patent portfolios with as many options as possible for an ROI. Keegan has assisted clients with a broad spectrum of tech and life sciences patent issues and takes pride in curating high-value patent portfolios. Keegan is exceptionally knowledgeable with respect to Patent Trial and Appeal Board (PTAB) procedures. His experience working at the United States Patent and Trademark Office in the Central Reexam Unit and his deep patent prosecution experience uniquely position him to provide valuable insights during a PTAB procedure to help clients win. Outside of work, Keegan enjoys contributing to his community and his family. He has served as both a volunteer and an executive board member of RESET since 2010. RESET is a DC-based philanthropic organization that enhances STEM programs with hands-on science and related field trips. He has served as the Chair of the MIT Enterprise Forum of Cambridge's Innovation Series since 2018. The MITEF is a thought-leadership program that features a wide variety of speakers from multiple industries and technologies, bringing a wide-ranging look at the issues, technologies, and market forces that drive innovation, commercialization, and market adoption. Additionally, Keegan sits on the Board of Trustees at the Boston Children's Museum. Learn more about Keegan at: Website: https://caldwellip.com/ LinkedIn: https://www.linkedin.com/in/keegancaldwellphd/ Email: keegan@caldwellip.com Show notes: [2:15] What was his motivation to run daily? [6:17] What is patentable? [12:45] Creating and applying for patents [25:43] What can you do with IP? And how do you enforce it? [32:17] His advice for someone who wants to create value for their company [37:04] Outro Connect with Bill Bloom Web: https://www.bloomfinancialco.com/ https://bloomfinancialco.kartra.com/page/bNJ87 Email: bill@bloomfinancial.us LinkedIn: https://www.linkedin.com/in/bloomfinancial/ FB: https://www.facebook.com/retireasyoudesirepodcast Securities and investment advisory services offered through Woodbury Financial Services, Inc. (WFS) member FINRA/SIPC. WFS. is separately owned and other entities and/or marketing names, products or services referenced here are independent of WFS. Views expressed in this podcast are for general informational purposes only and are not intended to provide or be a substitute for specific professional financial, tax or legal advice or recommendations for any individuals. Information is based on sources believed to be reliable; however, their accuracy or completeness cannot be guaranteed.

Your Thoughts Could Be Worth Millions with Keegan Caldwell

Retire As You Desire

Play Episode Listen Later Aug 25, 2022 44:20

Today Bill is joined by the Founder and Managing Partner of Caldwell Intellectual Property Law, Keegan Caldwell. They talk about intellectual property law, how Keegan started in the industry, and what made him get into it. He also shares his journey from childhood, the Marine corps, and finally making the first step to his success. Dr. Caldwell has extensive and diverse experience with advising clients from innovation conception to 9-figure monetization events. Keegan works with start-ups and established entities to develop patent portfolios with as many options as possible for an ROI. Keegan has assisted clients with a broad spectrum of tech and life sciences patent issues and takes pride in curating high-value patent portfolios. Keegan is exceptionally knowledgeable with respect to Patent Trial and Appeal Board (PTAB) procedures. His experience working at the United States Patent and Trademark Office in the Central Reexam Unit and his deep patent prosecution experience uniquely position him to provide valuable insights during a PTAB procedure to help clients win. Outside of work, Keegan enjoys contributing to his community and his family. He has served as both a volunteer and an executive board member of RESET since 2010. RESET is a DC-based philanthropic organization that enhances STEM programs with hands-on science and related field trips. He has served as the Chair of the MIT Enterprise Forum of Cambridge's Innovation Series since 2018. The MITEF is a thought-leadership program that features a wide variety of speakers from multiple industries and technologies, bringing a wide-ranging look at the issues, technologies, and market forces that drive innovation, commercialization, and market adoption. Additionally, Keegan sits on the Board of Trustees at the Boston Children's Museum. Learn more about Keegan at: Website: https://caldwellip.com/ LinkedIn: https://www.linkedin.com/in/keegancaldwellphd/ Email: keegan@caldwellip.com Show notes: [1:59] What was Keegan's childhood like? And how did he start his journey? [27:59] Was going to the Marine corps the smartest thing he did? [29:26] How did he start in IP? [41:04] Where to find Keegan [42:07] Keegan's core advice [44:08] Outro Connect with Bill Bloom Web: https://www.bloomfinancialco.com/ https://bloomfinancialco.kartra.com/page/bNJ87 Email: bill@bloomfinancial.us LinkedIn: https://www.linkedin.com/in/bloomfinancial/ FB: https://www.facebook.com/retireasyoudesirepodcast Securities and investment advisory services offered through Woodbury Financial Services, Inc. (WFS) member FINRA/SIPC. WFS. is separately owned and other entities and/or marketing names, products or services referenced here are independent of WFS. Views expressed in this podcast are for general informational purposes only and are not intended to provide or be a substitute for specific professional financial, tax or legal advice or recommendations for any individuals. Information is based on sources believed to be reliable; however, their accuracy or completeness cannot be guaranteed.

Louis Carbonneau on Brokering Patents After the Patent Gold Rush

judges patent united states supreme court administrative matt johnson supreme court rules trademark office constitutionality john evans jones day patent trial ptab appeal board ptab

Play Episode Listen Later Mar 15, 2022 63:33

The golden age for patent brokers has come and gone but that doesn't stop Louis Carbonneau. “There are very, very few patent brokers nowadays. We're just one of a handful left. And frankly, we get about four or five portfolios every single day that people want us to broker. We only say yes 1% or 2% of the time.” As one of the world's leading patent brokers, the CEO and Founder of Tangible IP has brokered over 4,500 patents and boasts close to 30 years in the industry. With experience as Microsoft's former General Manager of International IP & Licensing, Carbonneau has sat on many sides of the table. He shares his adventures in the industry (and lessons learned). Carbonneau tells behind-the-scenes stories from his time at Microsoft, the common pitfalls of patent licensing, and why price isn't always an essential part of the conversation when buying and selling intellectual property. “Some people will not even want to acquire patents for free if they don't like the patents because then they have to start paying for maintenance fees and prosecution fees. It's like a free puppy. It's only free for a few hours, and after that, you start paying,” says Carbonneau. The episode also offers insight into a typical IP transaction at Carbonneau's firm, helping those interested in selling their patents to understand what brokers — and buyers — are looking for in a deal. Episode Highlights [02:45] Dinosaurs and Microsoft: joining Microsoft's legal team as a result of the acquisition of Softimage, the computer graphics company behind Jurassic Park. [05:18] How a cross-licensing deal saved Apple: how a creative deal offered by Microsoft – in midst of its antitrust battles in the late 90s – helped save Apple. [08:45] From licensing products to IP: under the direction of Marshall Phelps, a new addition to Microsoft's team, Carbonneau began harvesting the intellectual property from Microsoft's many research labs around the world. [14:13] Balancing budgets: the complicated role of finance in licensing and monetizing intellectual property within a corporation. Which department owns a patent can make a big difference in how the intellectual property is managed. [17:38] The golden age of patent brokerage: the creation of Intellectual Ventures and how he eventually founded his own brokerage firm, Tangible IP. [24:49] What makes a good deal?: Carbonneau walks us through what makes (or doesn't make) a good patent transaction. Ultimately, it is challenging to calculate the ROI of large deals. [28:11] Changing tides: Carbonneau explains the change in the patent landscape as a result of the creation of the Patent Trial and Appeal Board (PTAB) and the subject matter eligibility mess. [32:53] A typical transaction: Carbonneau outlines his brokerage firm's intake process and share what he's looking for when he's helping to sell patent assets. [37:10] The dirty little secret: Carbonneau shares the strategy used by many big corporations. [39:35] Seller pitfalls: Who's looking to sell their patents and what do they do wrong? [44:47] Patent prosecution is ‘part art, part science': discussion of what makes patents valuable and best practices for patent law. [49:37] The perfect patent: It's hard to find the patent that everybody likes and it's not always about price. Carbonneau talks about the challenges he faces helping his buyers find patents worth acquiring. [52:46] The IP ecosystem: Carbonneau walks us through the many players within the intellectual property industry and discusses the division of labor for the buying and selling of intellectual property. [59:48] You've been warned: the challenges of being a patent broker with the current legal landscape

United States v Arthrex, Inc.

Supreme Court Opinions

Play Episode Listen Later Sep 6, 2021 5:45

United States v Arthrex, Inc., (2021), was a United States Supreme Court case related to the Appointments Clause of the United States Constitution as it related to patent judges on the Patent Trial and Appeal Board (PTAB). In a complex decision, the Court ruled that these judges were considered "primary officers" under the Appointments Clause, normally subject to appointment through the US President and the US Senate, but to remedy the matter, the Court ruled that the constitutional issue is resolved by allowing the PTAB decisions to be subject to review by the appropriately-appointed Director of the Patent Office. Background. The Leahy-Smith America Invents Act was passed by Congress in 2012 that significantly overhauled the United States patent system. Among features of the law, it enabled a new inter partes review of patents that could be initiated by nearly any member of the public. As this potentially would create more litigation within the United States Patent and Trademark Office, itself a division of the Department of Commerce, the Act established the Patent Trial and Appeal Board (PTAB) which included administrative patent judges (APJs) appointed through the Commerce Secretary. An inter partes review of a patent is presented to three of the PTAB judges who make a final decision to keep or invalidate some or all of the patent. Any further challenge beyond this proceeds to the United States Court of Appeals for the Federal Circuit. In the specific case, Arthrex, Inc., a manufacturer of medical devices, had previously received a patent for a surgical device. They entered into a patent dispute with Smith & Nephew, Inc., and ArthroCare Corp., claiming the latter groups were infringing on their patent. The case moved into the PTAB, which found that Arthrex's patent was invalid. Arthrex appealed to the Federal Circuit, raising a question related to the constitutionality of the administrative judges on the PTAB. They argued that under the Appointments Clause, since the APJs were considered principal officers of the patent office, they were required to be appointed through the President and confirmed by the Senate. The Federal Circuit judges agreed with Arthrex's position, vacated the PTAB's ruling, ruled that the APJs' tenure must be changed to reflect this stance, and remanded the case back to the PTAB for a rehearing. --- This episode is sponsored by · Anchor: The easiest way to make a podcast. https://anchor.fm/app

JONES DAY TALKS®: Supreme Court Rules on Constitutionality of Administrative Patent Judges

Jones Day Talks

Play Episode Listen Later Jul 20, 2021 32:13

The United States Supreme Court has delivered its decision in U.S. v. Arthrex, which determined whether appointments of administrative patent judges to the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) were constitutional. Jones Day's Matt Johnson and John Evans talk about the background of the Arthrex case, how the decision could affect the way the PTAB operates, and the implications for parties with matters pending.

Interview with Josh Malone, Founder of Tinnus Enterprises & Inventor of Bunch of Balloons- Perky Collar Radio Show- Hosted by David M. Frankel

Perky Collar Radio Show

Play Episode Listen Later Jul 13, 2021 41:56

"Necessity is the Mother of Invention" and "I believed in the patent system." These 2 quotes are the basis of the story of today's guest, Josh Malone, Founder of Tinnus Enterprises and the Inventor of Bunch of Balloons. He is also the Father of 8 and was recently featured in an Amazon Movie titled, " Invalidated" because of all of the work he has put in fighting the patent system since the passing of America Invents Act of 2011. Patents started being invalidated by the Patent Trial & Appeal Board (PTAB) once this Act was passed. Josh's strength, courage and persistence to fight the system is inspiring. It is a modern-day David vs. Goliath story. As in the story, the little guy finally won despite the unbelievable odds against him. Please tune in to hear his story and learn what he continues to do daily to fight for inventor's rights. Please join Josh and all other inventors in this fight to preserve our patent system by going to USInventors.org Invention and the patent system are foundations of our country and they MUST be preserved. Thank you for listening to another episode of the Perky Collar Radio Show. Warmest Regards, David M. Frankel Perky Collar Inventor, Perky, LLC Founder & Perky Collar Radio Show Host, Commercial Real Estate Broker & Business Broker www.PerkyLLC.com, www.BBOTC.net Feel free to join my Entrepreneur Group on Facebook www.Facebook.com/Groups/CharlotteEntrepreneurThinkTank Feel free to learn more about The Fenx and join fellow successful Entrepreneurs https://entrepreneurs-maclackey.thrivecart.com/the-fenx-monthly/?ref=cettsupport Feel free to connect with me on Linkedin www.Linkedin.com/in/DavidMFrankel --- Support this podcast: https://anchor.fm/perkycollaradioshow/support

Josh Landau - On Lobbying for Weaker Patent Rights and “Making a PB&J Sandwich”

Play Episode Listen Later Jul 6, 2021 53:17

The first episode of this season of Clause 8 featured the most recent USPTO Director - Andrei Iancu - discussing his efforts to strengthen America's patent system over the last three years. One of the most publicly vocal opponents of those efforts was Josh Landau, patent counsel at the Computer and Communications Industry Association (CCIA). Now that those views are in ascendancy in the Biden administration and Congress, it made sense to finish this season by talking to Josh. It was Josh who first broke the news on CCIA's Patent Progress blog that Sen. Patrick Leahy was taking the top Democrat slot on the Senate's IP Subcommittee from Sen. Chris Coons. Coons helped restart the subcommittee two years earlier and was the most significant Democratic supporter of stronger patent rights on Capitol Hill. The blog post signaled that CCIA's patent policy ally is now in charge. In this episode, Josh shares his thoughts on the role of the CCIA in the patent debate and his strong views on various patent-related policy issues: “I will actually push back on the idea that section 101 is particularly unclear. The problem is not that it's unclear. The problem is that in many cases or some cases, the judges of the Federal Circuit or attorneys don't like what the outcome is.” Josh also discusses effective patent policy advocacy in general, where the patent pendulum will swing under the Biden administration, and the low point for “patent quality.” Josh and Eli also discuss whether the patent system is unfair in any way for patent owners. For anyone wanting to follow in Josh's career footsteps, his advice is this: “It's hard to get work in policy without having worked in policy. If you're interested in this, try and find roles in government, try and find roles on the Hill to know some level of what the policy sphere is like.” On this episode: The role of the CCIA in the patent debate The failure of Section 101 legislation in the last Congress The “patent quality” problem How the Patent Trial and Appeal Board (PTAB) operates Patent policy advocacy on Capitol Hill Patent policy in Trump v Biden administration Is the patent system unfair to patent owners in any way? Why do different patent attorneys have such different views of the patent system? The “peanut butter and jelly sandwich” patent Links: Senator Leahy to Take Chair of IP Subcommittee US Inventors organization

23. Joseph Lentivech - Ex-PTAB Judge on Ex-Parte Appeals

judge appeals patent trial ptab appeal board ptab

Play Episode Listen Later Nov 24, 2020 98:42

Judge Joe Lentivech is a former Administrative Patent Judge. On this episode, he talks about how he became an Administrative Patent Judge, how the Patent Trial and Appeal Board (PTAB) operates, how to win ex parte appeals, overcoming Section 101 rejections, oral hearings at the PTAB, and much more!

Adam Mossoff on the Innovation Economy and the Administrative State

Arbitrary & Capricious

Play Episode Listen Later Oct 5, 2020 59:11

Today's guest is Professor Adam Mossoff, a leading scholar of intellectual property and Co-Founder of Scalia Law's Center for the Protection of Intellectual Property (CPIP). Three years ago, CPIP and the Gray Center co-hosted a major conference on the Patent Trial and Appeal Board (PTAB), a new regulatory body empowered to revoke companies' patents through an administrative process instead of a... Source

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Adam Mossoff on the Innovation Economy and the Administrative State

Arbitrary & Capricious

Play Episode Listen Later Oct 5, 2020 59:10

Today’s guest is Professor Adam Mossoff, a leading scholar of intellectual property and Co-Founder of Scalia Law’s Center for the Protection of Intellectual Property (CPIP). Three years ago, CPIP and the Gray Center co-hosted a major conference on the Patent Trial and Appeal Board (PTAB), a new regulatory body empowered to revoke companies’ patents through an […]Join the conversation and comment on this podcast episode: https://ricochet.com/podcast/arbitrary-capricious/adam-mossoff-on-the-innovation-economy-and-the-administrative-state/.Now become a Ricochet member for only $5.00 a month! Join and see what you’ve been missing: https://ricochet.com/membership/.Subscribe to Arbitrary & Capricious in Apple Podcasts (and leave a 5-star review, please!), or by RSS feed. For all our podcasts in one place, subscribe to the Ricochet Audio Network Superfeed in Apple Podcasts or by RSS feed.

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Unpacking the Pendulum of American Patent Policy Then, Now, and Forward with Rob Masters [NB 099]

Sheppard Mullin's Nota Bene

Play Episode Listen Later Sep 30, 2020 70:44

As we pivot into the next generation of technology for the 21st century, we’re taking a look at the only intellectual property rights to be mentioned in the U.S. Constitution – patents. We’re joined by Rob Masters to explore how patent litigation has evolved over the years, how it continues to develop, and how the courts and the American Congress have impacted the value of the American patent in the modern era. Robert Masters is a partner in the Intellectual Property Practice Group in Sheppard Mullin’s Washington, D.C. office. He focuses his practice on intellectual property law, routinely handling patent, trade secret, copyright and trademark/trade dress litigation in courts throughout the U.S., before the International Trade Commission, before the U.S. Patent Trial and Appeal Board (PTAB), and before international arbitration tribunals across the globe. What We Discussed in this Episode: How has the value of the patent evolved over time? What happens if an injunction is issued against a patent holder? What two litigation venues in the U.S. are the least friendly to patent infringement defendants and why? What did the Supreme Court decide in Ebay v. Mercantile and how did that decision affect patent injunctions? What are non-practicing entities and what effect do they have on patent litigation? How did the court define “willful infringement" in the Seagate case? How did the 2011 American Invents Act and inter party review process develop? According to Section 101 from the Alice v. CLS Bank decision, what subject matter is eligible to be a patent? What is the current state of patent eligibility? Why do Standard Essential Patents matter so much? Are there certain countries that are more favorable to patent filings? Resources Mentioned: Intellectual Property Outlook: Cases and Trends to Follow in 2020 Contact Information: Rob’s Sheppard Mullin attorney profile Thank you for listening! Don’t forget to SUBSCRIBE to the show to receive every new episode delivered straight to your podcast player every Wednesday. If you enjoyed this episode, please help us get the word out about this podcast. Rate and Review this show in Apple Podcasts, Stitcher Radio, Google Podcasts, or Spotify. It helps other listeners find this show. Be sure to connect with us and reach out with any questions/concerns: LinkedIn Facebook Twitter Sheppard Mullin website This podcast is for informational and educational purposes only. It is not to be construed as legal advice specific to your circumstances. If you need help with any legal matter, be sure to consult with an attorney regarding your specific needs.

SIDEBAR - No Judicial Review of Certain Patent Office Decisions, Supreme Court Holds

Supreme Court of the United States

Play Episode Listen Later Aug 3, 2020 13:06

In 2011, Congress enacted major patent reform in the Leahy-Smith America Invents Act (AIA). The AIA, among other things, created inter partes review (IPR), an adversarial procedure during which the U.S. Patent & Trademark Office’s (PTO’s) Patent Trial & Appeal Board (PTAB) reviews the validity of issued patents. In particular, IPR allows any person, other than the patentee, to petition the PTAB for review of a patent. After receiving a petition, the PTAB may institute an IPR if it determines that “there is a reasonable likelihood that the petitioner would prevail.” However, 35 U.S.C. § 315(b) (the so-called “time-bar”) provides that the PTAB may not institute an IPR if the petition “is filed more than 1 year after the date on which the petitioner . . . is served with a complaint alleging infringement of the patent.” Under 35 U.S.C. § 314(d) (the so-called “no-appeal provision”), moreover, the PTAB’s determination to institute an IPR “under this section shall be final and nonappealable.” In Thryv, Inc. v. Click-to-Call Technologies, LP, decided on April 20, 2020, the Supreme Court interpreted the no-appeal provision broadly by holding that the PTAB’s determination that an IPR is not time-barred falls within § 314(d) and therefore may not be appealed. (The case was previewed before argument in this CRS sidebar.) The decision in Click-to-Call may have considerable implications for the breadth of the PTAB’s authority moving forward.

Video blog 27: How is the Novel Coronavirus Impacting the Intellectual Property System?

Law & Business Video

Play Episode Listen Later Mar 20, 2020

Verna Law, P.C. currently has cases in the Trademark Trial and Appeal Board, the Southern District of New York, the Eastern District of New York, the District of New Jersey, the Central District of California, and the Western District of Washington. The Trademark Trial and Appeal Board appears to be running normally, except that the TTAB's building itself is closed. The United States Patent and Trademark Office's building is closed. But the USPTO is still running, accepting applications, and the TTAB general case calendars are unaffected. Oral arguments will be heard via other means. Until further notice, examiner and examining attorney interviews, Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) oral hearings, and other similar in-person meetings with parties and stakeholders scheduled to take place at USPTO offices on or after Friday, March 13, 2020 will be conducted remotely by video or telephone. Parties will receive further instructions on how to participate by video or telephone in advance of the interview, hearing, or meeting. The Southern District of New York, Eastern District of New York, Central District of California, and District of New Jersey courthouses are open to all except those who have visited China, Italy, Iran, South Korea, and Japan but all judges have ordered their clerks to work from home. Some judges allow conference calls for discovery matters, but dispositive, substantive hearings on motions will most likely be delayed. Deadlines for drafting motions and responses will not be delayed as the filing systems are electronic. The Western District of Washington has closed. However, all courts have said that motions that can be decided without an oral argument will be decided. Every judge will handle the situation differently, though. Here is a lightly edited transcript of the video blog: I've been asked how the novel coronavirus has affected the intellectual property system in the United States. And, apart from the fact that I haven't shaved since Saturday, the answer is it really hasn't affected the system all that much. The United States Patent and Trademark Office, the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, all are operated under the same federal agency and they've had systems in place for years for remote work. That means every time I call a trademark examining attorney or a patent examining attorney to ask what's wrong with an application, I'm calling them at home. Most employees are at home already. Fighting budget woes, the Patent and Trademark Office has already had this system in place. With electronic filing and work from home, the Patent and Trademark Office is operating almost normally. So, what about the courts? Well, federal courts are generally, closed or the judges themselves are not holding hearings in the courthouse. But, for many of my cases, if there's a substantive hearing, we're rescheduling it for some kind of telephone conference and, therefore, it can be recorded by the court. Frankly, the electronic filing system for the court, for the federal courts is still in operation. So, deadlines really haven't changed. Yes, if there's a trial, your trial is going to be held until a later date. If there's a substantive motion that can only be heard in court that's going to be held until a later date. But, apart from that, the Patent and Trademark Office is running. The Patent Trial and Appeal Board and the Trademark Trial and Appeal Board are all running. We can file intellectual property without a problem. And, for the most part, the administrative courts as well are running without an issue. I'm Anthony Verna, managing partner Verna Law, P.C., were we focus on intellectual property: patents, trademarks, and copyrights. And we'll talk to you next time. Thank you.

Episode 16: Josh Malone - Bunch O Balloons Inventor

Play Episode Listen Later Mar 18, 2020 62:28

The latest episode of the Clause 8 podcast features an interview with Josh Malone – the inventor of Bunch O Balloons and America’s foremost advocate for reliable patent rights. Josh came up with the idea for Bunch O Balloons to help his kids fill up 100 water balloons in less than one minute. It eventually became the most popular toy in America. However, before Bunch O Balloons even came to market, another company copied it and started selling its own versions of the product. Luckily – or so he thought at the time – Josh filed a patent application for his Bunch O Balloons invention. He did not know the enormous amount of time, money, and luck it would take to successfully enforce patents that covered his invention. This episode tells the story of what it took, including taking a trip to Bentonville, AR in the middle of the night to try to convince Walmart to stop selling knock offs of his product. During this episode, Josh talks about: • getting involved in the making of the documentary Invalidated that featured his story; • the process of innovation that allowed him to invent one of America’s most popular toy products; • strategies that he used to get patent protection for his innovation; • the process of successfully licensing an invention for a physical product; • how the “As seen on TV” company Telebrands copied his product and continued doing so after losing multiple court decisions; • the patent litigation strategy that he pursued to ultimately reach a successful settlement; • the role that the US Patent’s Office played during the Patent Trial and Appeal Board (PTAB); • why he decided it was necessary to launch a PR campaign for patent rights and advocate for those rights on Capitol Hill and elsewhere in Washington, DC – including by literally burning patents outside of the US Patent Office; • the enormous financial and psychological toll on inventors trying to enforce patent rights; • the shortcomings of contingency fee arrangements and litigation financing; • advice to other innovators who are thinking about getting patent protection; and • much more!

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Peter v. NantKwest Inc. Post-Decision SCOTUScast

Play Episode Listen Later Feb 12, 2020 16:52

On Dec 11, 2019 the Supreme Court decided Peter v. NantKwest Inc., a case considering whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent applicant is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.By a vote of 9-0, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Sotomayor, writing for a unanimous Court, held that the plain text of §145 did not provide the requisite “specific and explicit” indication that Congress had intended to depart from “the American Rule’s presumption against fee shifting.” Accordingly, the PTO could not recover attorneys’ fees from NantKwest under §145.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.*As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers. *Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case.

Peter v. NantKwest Inc. Post-Decision SCOTUScast

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Play Episode Listen Later Feb 12, 2020 16:52

On Dec 11, 2019 the Supreme Court decided Peter v. NantKwest Inc., a case considering whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent applicant is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.By a vote of 9-0, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Sotomayor, writing for a unanimous Court, held that the plain text of §145 did not provide the requisite “specific and explicit” indication that Congress had intended to depart from “the American Rule’s presumption against fee shifting.” Accordingly, the PTO could not recover attorneys’ fees from NantKwest under §145.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.*As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers. *Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case.

JONES DAY TALKS®: Appointments of PTAB Judges Ruled Unconstitutional … What Now?

Jones Day Talks

Play Episode Listen Later Dec 13, 2019 13:56

In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit has held that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board (“PTAB”) were in violation of the Appointments Clause of the U.S. Constitution. Jones Day’s Matt Johnson and Dave Cochran discuss the potential ramifications of this decision and talk about what parties to PTAB matters should … Continue reading JONES DAY TALKS®: Appointments of PTAB Judges Ruled Unconstitutional … What Now? →

Case: 18-916 Thryv, Inc. v. Click-To-Call Technologies, LP (2019-DEC-09)

Supreme Court of the United States

Play Episode Listen Later Dec 13, 2019 63:14

QUESTION PRESENTED: The America Invents Act created "inter partes review" ("IPR"), an agency procedure for challenging a patent before the Patent Trial and Appeal Board ("PTAB"). The statute has two provisions relevant here, each of which was interpreted by a divided Federal Circuit sitting en banc. First, 35 U.8.C. § 315(b) provides that "[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner ... is served with a complaint alleging infringement of the patent." Second, § 314(d) provides that "[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable." In a recent case, the en banc Federal Circuit held (with four dissenters) that, notwithstanding§ 314(d), a PTAB decision to institute an IPR after finding that the § 315(b) time bar did not apply was appealable. The panel applied that ruling in this case. Then, the en banc Federal Circuit, again divided (with two dissenters), held in this case that service of a patent infringement complaint that is later dismissed without prejudice triggers the§ 315(b) time bar. The questions presented are: Whether 35 U.8.C. § 314(d) permits appeal of the PTAB's decision to institute an inter partes review upon finding that§ 315(b)'s time bar did not apply. Whether 35 U.8.C. § 315(b) bars institution of an inter partes review when the previously served patent infringement complaint, filed more than one year before the IPR petition, had been dismissed without prejudice. --- This episode is sponsored by · Anchor: The easiest way to make a podcast. https://anchor.fm/app Support this podcast: https://anchor.fm/scotus/support

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Peter v. NantKwest Inc. - Post Argument SCOTUScast

Play Episode Listen Later Oct 22, 2019 21:22

On October 7, 2019, the Supreme Court heard oral argument in Peter v. NantKwest Inc., a case which considers whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent application is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.Thereafter, the Supreme Court granted certiorari to consider whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. § 145 encompasses the personnel expenses the PTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.**Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case. As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.

Peter v. NantKwest Inc. - Post Argument SCOTUScast

Play Episode Listen Later Oct 22, 2019 21:22

On October 7, 2019, the Supreme Court heard oral argument in Peter v. NantKwest Inc., a case which considers whether a party opting to bring a challenge in federal district court to an adverse decision of the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB) must pay the PTO’s resulting attorney’s fees. When a patent application is rejected by the PTO, and the PTAB affirms that decision on appeal, the aggrieved applicant may either pursue further (but relatively constrained) review in the U.S. Court of Appeals for the Federal Circuit--or the applicant may file a more expansive challenge in federal district court. The latter option is authorized by 35 U.S.C. § 145, but the statute also provides that “[a]ll the expenses of the proceedings shall be paid by the applicant.”Here, NantKwest challenged an adverse PTAB decision in federal district court, but lost. After the judgment was affirmed by the Federal Circuit, the PTO sought reimbursement of its expenses from NantKwest, including nearly $80,000 in attorneys’ fees. The district court denied recovery based on the “American Rule” that parties in federal court typically bear their own fees unless otherwise directed by Congress. A divided en banc panel of the Federal Circuit ultimately affirmed the district court. This decision, however, was in tension with the U.S. Court of Appeals for the Fourth Circuit’s construction of similar language in the Lanham Act.Thereafter, the Supreme Court granted certiorari to consider whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. § 145 encompasses the personnel expenses the PTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.To discuss the case, we have Robert J. Rando, Founder and Lead Counsel, The Rando Law Firm P.C.**Please note that Mr. Rando is co-Counsel on an Amicus brief filed on behalf of the Association of Amicus Counsel in this case. As always, the Federalist Society takes no particular legal or public policy positions. All opinions expressed are those of the speakers.

Episode 13: Gene Quinn

Play Episode Listen Later Sep 10, 2019 74:40

Gene Quinn is the founder of IPWatchdog.com. It has been the leading online publication focused on intellectual property for almost twenty years. Although they don't always agree, Federal Circuit judges, Congressional staffers, and K Street follow it closely to stay abreast of latest IP policy-related developments. During the episode, Gene discusses the serendipitous start to IPWatchdog.com, why it has been so successful, and what it's like to be read by Federal Circuit judges and other luminaries. Gene also talks about the IP policy landscape in Washington, DC and how to effectively impact the policy making process. And, Gene shares his insights regarding the state of patent eligibility, the USPTO's Patent Trial and Appeal Board (PTAB), and the future for America's patent system and innovation.

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Courthouse Steps Decision Teleforum: Return Mail v. US Postal Service

Play Episode Listen Later Jun 13, 2019 47:18

In Return Mail v. US Postal Service, the Supreme Court held that the United States Government does not qualify as a “person” in the organic statutory provisions that created the Patent Trial & Appeal Board (PTAB) in the American Invents Act of 2011. The patent statutes provide that a “person” may file petitions in the various administrative review programs at the PTAB, i.e., inter partes review, post-grant view, and covered business methods. Thus, governmental agencies may not file petitions to cancel patents at the PTAB. The PTAB has been a flashpoint of controversy in the patent system. It was created to provide efficient and quick cancelation of mistakenly issued patents that hampered the innovation economy. Since it began operations in 2012, the PTAB has been accused by judges, lawyers, and commentators of engaging in procedural and substantive “shenanigans.” With very high cancelation rates, one federal judge has called it a “death squad[] killing property rights.” This Courthouse Steps teleforum will review Return Mail v. US Postal Service and discuss its legal and policy implications for the patent system, the PTAB, the innovation economy, and limitations on federal executive power.Featuring:Prof. Adam MacLeod, Professor of Law, Faulkner UniversityMatthew J. Dowd, Founder and Partner, Dowd Scheffel PLLC Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

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Courthouse Steps Decision Teleforum: Return Mail v. US Postal Service

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Play Episode Listen Later Jun 13, 2019 47:18

In Return Mail v. US Postal Service, the Supreme Court held that the United States Government does not qualify as a “person” in the organic statutory provisions that created the Patent Trial & Appeal Board (PTAB) in the American Invents Act of 2011. The patent statutes provide that a “person” may file petitions in the various administrative review programs at the PTAB, i.e., inter partes review, post-grant view, and covered business methods. Thus, governmental agencies may not file petitions to cancel patents at the PTAB. The PTAB has been a flashpoint of controversy in the patent system. It was created to provide efficient and quick cancelation of mistakenly issued patents that hampered the innovation economy. Since it began operations in 2012, the PTAB has been accused by judges, lawyers, and commentators of engaging in procedural and substantive “shenanigans.” With very high cancelation rates, one federal judge has called it a “death squad[] killing property rights.” This Courthouse Steps teleforum will review Return Mail v. US Postal Service and discuss its legal and policy implications for the patent system, the PTAB, the innovation economy, and limitations on federal executive power.Featuring:Prof. Adam MacLeod, Professor of Law, Faulkner UniversityMatthew J. Dowd, Founder and Partner, Dowd Scheffel PLLC Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up on our website. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

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Patent Appeals - How and When to Appeal. EP064

Patenting for Inventors

Play Episode Listen Later Feb 28, 2019 10:44

If your patent examiner keeps rejecting your application, what should you do? One option is to appeal to the Patent Trial and Appeal Board (PTAB). Learn what an appeal is, and how to do one.

GDPR And The Future of WhoIs

Cyber Law and Business Report on WebmasterRadio.fm

Play Episode Listen Later May 16, 2018 52:45

Tyler Marandola is a member of the Intellectual Property Litigation Group. He prosecutes and defends cases involving patents, copyrights, trademarks, licensing, unfair competition, and other commercial disputes. Tyler has experience in the areas of pharmaceutical and medical device patent litigation, as well as experience in transactional work and patent counseling and licensing, including within the biotech, mechanical, and telecommunication fields.Tyler's recent experience includes defending clients against allegations of infringement under software-related patents, as well as litigating patent claims relating to medical treatments and genetic sequencing. In addition, he has litigated copyright and trademark cases in various jurisdictions and has experience in proceedings before the Patent Trial and Appeal Board (PTAB) and the Trademark Trial and Appeal Board (TTAB).Co-Author, GDPR And The Future of WHOIs Data, National Law Review (April 3, 2018).

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LQ PatentCast: Ex Parte Stefan Hartman

Litigation Quality Patent PatentCast

Play Episode Listen Later Feb 5, 2018 30:20

Software is patentable when you follow the rules. Craige analyzes how the Patent Trial and Appeal Board (PTAB) invalidated issued software claims because the claim drafter simply framed the claims in a way that was too abstract. This illustrates an avoidable, but all too common, flaw that leads to the demise of many software claims.

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Courthouse Steps: Oil States and SAS Institute Inc. v. Matal

Play Episode Listen Later Nov 28, 2017 60:36

Oil States Energy Services v. Greene’s Energy GroupHas the administrative state gone too far into disputes over innovation and technology? That question animates Oil States Energy Services v. Greene’s Energy Group. The Supreme Court will hear arguments on Monday, November 27 over whether the Patent Trial & Appeal Board violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. SAS Institute v. MatalIn SAS Institute v. Matal, the question presented is, in the context of post-grant review of a patent under the America Invents Act (“AIA”), whether the Patent Trial and Appeal Board (“PTAB”) must issue a final written decision on the validity of every patent claim challenged, or can the PTAB rule on only some of the patent claims challenged. This case involves a relatively confined question of statutory construction, but, assuming the Supreme Court does not dismantle the AIA’s post-grant review system in Oil States, SAS Institute has the potential to dramatically change post-grant patent challenges. The statute at issue, 35 U.S.C. 318(a), mandates: “If an inter partes review is instituted . . . , the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . . .” The Patent Office interprets this provision to mean that the PTAB need provide a final written decision on only the claims the PTAB reviews in full. Thus, under current practice, a patent challenger can ask the PTAB to cancel all claims of a patent when filing an IPR petition, but the PTAB may institute full review of only some of the claims. The final written decision is limited to only those claims the PTAB reviews in full. Petitioner in SAS Institute challenges this practice, arguing that the plain text of the statute, along with the statutory text and purpose, requires a decision on all challenged claims. The case has important implications about the AIA process, the degree to which AIA review of patents creates finality to patent validity determinations, and the applicability of Chevron deference to the Patent Office’s rules and procedures.Featuring:Mr. Matthew J. Dowd, Founder, Dowd PLLCMr. Brian H. Pandya, Partner, Wiley Rein Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

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Courthouse Steps: Oil States and SAS Institute Inc. v. Matal

Play Episode Listen Later Nov 28, 2017 60:36

Oil States Energy Services v. Greene’s Energy GroupHas the administrative state gone too far into disputes over innovation and technology? That question animates Oil States Energy Services v. Greene’s Energy Group. The Supreme Court will hear arguments on Monday, November 27 over whether the Patent Trial & Appeal Board violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. SAS Institute v. MatalIn SAS Institute v. Matal, the question presented is, in the context of post-grant review of a patent under the America Invents Act (“AIA”), whether the Patent Trial and Appeal Board (“PTAB”) must issue a final written decision on the validity of every patent claim challenged, or can the PTAB rule on only some of the patent claims challenged. This case involves a relatively confined question of statutory construction, but, assuming the Supreme Court does not dismantle the AIA’s post-grant review system in Oil States, SAS Institute has the potential to dramatically change post-grant patent challenges. The statute at issue, 35 U.S.C. 318(a), mandates: “If an inter partes review is instituted . . . , the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner . . . .” The Patent Office interprets this provision to mean that the PTAB need provide a final written decision on only the claims the PTAB reviews in full. Thus, under current practice, a patent challenger can ask the PTAB to cancel all claims of a patent when filing an IPR petition, but the PTAB may institute full review of only some of the claims. The final written decision is limited to only those claims the PTAB reviews in full. Petitioner in SAS Institute challenges this practice, arguing that the plain text of the statute, along with the statutory text and purpose, requires a decision on all challenged claims. The case has important implications about the AIA process, the degree to which AIA review of patents creates finality to patent validity determinations, and the applicability of Chevron deference to the Patent Office’s rules and procedures.Featuring:Mr. Matthew J. Dowd, Founder, Dowd PLLCMr. Brian H. Pandya, Partner, Wiley Rein Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

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Has the Administrative State Usurped the Role of the Federal Courts in Innovation Disputes?

FedSoc Events

Play Episode Listen Later Nov 18, 2017 85:05

In 2011, Congress created a new administrative tribunal in the U.S. Patent Office with the power to cancel previously granted patents, called the Patent Trial & Appeal Board (PTAB). The PTAB has become a flashpoint of controversy. Some companies and organizations defend it as an important tool for eliminating invalidly issued patents. Critics have highlighted a wide range of concerns, including, among others, not providing patent-owners with basic due process protections and a structural bias against patents that has led to inordinately high “kill" rates. In Oil States v. Greene's Energy Group, the Supreme Court will decide whether assigning such power to an administrative agency is consistent with the constitutional requirements of Article III, the Seventh Amendment, and the nature of patents as property rights. At the intersection of patent law, administrative law, and constitutional law, Oil States is a blockbuster case in the October 2017 term that will impact the governmental branches, the law and the innovation economy.Prof. Gregory Dolin, Co-director of the Center for Medicine and Law, University of Baltimore School of LawProf. John F. Duffy, Samuel H. McCoy II Professor of Law, University of Virginia School of LawProf. Arti K. Rai, Elvin R. Latty Professor of Law, Duke University School of LawMr. Robert Greene Sterne, Director, Sterne Kessler Goldstein & Fox PLLCModerator: Hon. F. Scott Kieff, Professor of Law, George Washington University Law School, and former Commissioner, United States International Trade Commission

Has the Administrative State Usurped the Role of the Federal Courts in Innovation Disputes?

FedSoc Events

Play Episode Listen Later Nov 18, 2017 85:05

In 2011, Congress created a new administrative tribunal in the U.S. Patent Office with the power to cancel previously granted patents, called the Patent Trial & Appeal Board (PTAB). The PTAB has become a flashpoint of controversy. Some companies and organizations defend it as an important tool for eliminating invalidly issued patents. Critics have highlighted a wide range of concerns, including, among others, not providing patent-owners with basic due process protections and a structural bias against patents that has led to inordinately high “kill" rates. In Oil States v. Greene's Energy Group, the Supreme Court will decide whether assigning such power to an administrative agency is consistent with the constitutional requirements of Article III, the Seventh Amendment, and the nature of patents as property rights. At the intersection of patent law, administrative law, and constitutional law, Oil States is a blockbuster case in the October 2017 term that will impact the governmental branches, the law and the innovation economy.Prof. Gregory Dolin, Co-director of the Center for Medicine and Law, University of Baltimore School of LawProf. John F. Duffy, Samuel H. McCoy II Professor of Law, University of Virginia School of LawProf. Arti K. Rai, Elvin R. Latty Professor of Law, Duke University School of LawMr. Robert Greene Sterne, Director, Sterne Kessler Goldstein & Fox PLLCModerator: Hon. F. Scott Kieff, Professor of Law, George Washington University Law School, and former Commissioner, United States International Trade Commission

Preview: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

Play Episode Listen Later Nov 13, 2017 63:47

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC will be argued in the Supreme Court on November 27. While the case originated from a patent infringement suit over hydraulic fracking technique, it has made it to the Supreme Court for Oil States’ challenge of the practice of inter partes review by the U.S. Patent Trial and Appeal Board (PTAB). Inter partes review is a process in which a patent conflict is brought before the PTAB so that one party can argue for the invalidation of the other party’s patent. Oil States argues that patents are property and this procedure violates the constitutional property rights of patent owners to a jury and an Article III trial.Featuring:Prof. Richard A. Epstein, Laurence A. Tisch Professor of Law; Director, Classical Liberal Institute, New York University School of LawJohn Thorne, Partner, Kellogg, Hansen Todd, Figel & Frederick, P.L.L.C. Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

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Preview: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

Play Episode Listen Later Nov 13, 2017 63:47

Oil States Energy Services, LLC v. Greene’s Energy Group, LLC will be argued in the Supreme Court on November 27. While the case originated from a patent infringement suit over hydraulic fracking technique, it has made it to the Supreme Court for Oil States’ challenge of the practice of inter partes review by the U.S. Patent Trial and Appeal Board (PTAB). Inter partes review is a process in which a patent conflict is brought before the PTAB so that one party can argue for the invalidation of the other party’s patent. Oil States argues that patents are property and this procedure violates the constitutional property rights of patent owners to a jury and an Article III trial.Featuring:Prof. Richard A. Epstein, Laurence A. Tisch Professor of Law; Director, Classical Liberal Institute, New York University School of LawJohn Thorne, Partner, Kellogg, Hansen Todd, Figel & Frederick, P.L.L.C. Teleforum calls are open to all dues paying members of the Federalist Society. To become a member, sign up here. As a member, you should receive email announcements of upcoming Teleforum calls which contain the conference call phone number. If you are not receiving those email announcements, please contact us at 202-822-8138.

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Episode 2: Judge Randall Rader: Interview w/ Former Federal Circuit Chief Judge about Patent System & his life

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Play Episode Listen Later Sep 13, 2017 51:01

Sampling of stories and topics discussed during the interview: Mistakenly ending up in Soviet Union during the Cold War Working with John Podesta (chairman of Hillary Clinton’s campaign) on Capitol Hill Advising Judge Bork before his Supreme Court confirmation hearings Being nominated and serving on the Federal Claims Court and the Federal Circuit Bilski decision, its aftermath, and the state of subject matter eligibility in America Views about the Supreme Court’s patent law jurisprudence The American Invents Act (AIA) and the creation of the Patent Trial and Appeal Board (PTAB) “death squad” Importance of software patents specifically Importance of a strong patent system for economic development and America’s global competiveness Ideas for improving America’s patent system China’s commitment to improving its own patent system Advice to law students and lawyers And, much more!

Deep Dive 10 – Is There a "Death Squad" at the U.S. Patent Office?: Examining the Patent Trial and Appeal Board

RTP's Free Lunch Podcast

Play Episode Listen Later Aug 21, 2017 63:57

In 2011, Congress created a new administrative tribunal in the U.S. Patent Office with the power to cancel previously granted patents, called the Patent Trial and Appeal Board (PTAB). The PTAB was created to provide an efficient and inexpensive administrative process for eliminating low-quality patents – what are called “bad patents.” Despite its laudable purpose, the PTAB has earned a reputation among some as a prime example of regulatory overreach. The PTAB’s critics cite a wide range of concerns including inadequate due process protections and bias against patents. A former federal appellate chief judge even referred to PTAB administrative judges as “patent death squads.” So, is the PTAB indeed harming the property rights that have helped to drive the U.S. innovation economy for over 200 years or, is it functioning as intended? What are the concerns of its detractors? If these concerns are valid, does the PTAB need simple reform or more?This live podcast is held in conjunction with the Monday, August 14 release of a paper authored by members of the Regulatory Transparency Project’s Intellectual Property Working Group. The paper is called “Crippling the Innovation Economy: Regulatory Overreach at the Patent Office.” This paper, which discusses this new administrative tribunal at the Patent Office, is available for viewing and download at https://regproject.org/paper/crippling-innovation-economy-regulatory-overreach-patent-office/.Featuring:- Josh Malone, Inventor, Bunch O Balloons- Kristen Osenga, Professor, University of Richmond School of Law- Brian O’Shaughnessy, Partner, Dinsmore & Shohl LLPVisit our website – https://RegProject.org – to learn more, view all of our content, and connect with us on social media.

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Episode 1: Judge Paul Michel: Interview w/ Former Federal Circuit Chief Judge about Patent System & his life