USPTO Announces Next Round of Coronavirus Extensions

Timothy Maier

In the past few months, the USPTO has made a number of extensions and changes in response to the spread of coronavirus. Previously, the USPTO had extended deadlines that would have come between March 27 and April 30 by 30 days and then deadlines from March 27 to May 31 to June 1st for those affected by the virus.

Now the USPTO has announced a further extension to July 1st for small and micro entities. Additional extensions for entities of all sizes will remain available on a case-by-case basis through the filing of an extension of time or petition to revive, with the revival petition filing fee waived for those abandoned before June 30.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.

PTAB Discretionary Denial On The Rise

Timothy Maier

The timing considerations that go into filing a petition for inter partes review with the PTAB have become progressively more difficult to navigate as the PTAB exercises increased discretion in rejecting IPRs. This trend started with the precedential NHK decision in which the PTAB rejected an IPR petition on the basis of an upcoming district court trial. Since then, the Federal Circuit has continued to provide the PTAB with increased autonomy by expanding its discretion to institute IPR under 314(a).

Likewise, in the Thryv decision the Supreme Court all but cut off any review of institution by the Federal Circuit, and in the SAS decision, the Supreme Court determined that all PTAB decisions on whether to institute IPR have to be binary, either instituting on all grounds or denying IPR altogether. Following SAS, the PTAB also started to deny institution of IPR where there is a reasonable likelihood that the petitioner will prevail on only a minority of the proposed grounds for unpatentability. For example, in Biofrontera v. DUSA Pharms the PTAB exercised its discretion to deny institution where the petitioner only showed a reasonable likelihood of success on only 1 of 8 grounds.

Since the NHK decision, many patent owners have raised NHK in an attempt to thwart institution of IPR as redundant to invalidity defenses raised in district court proceedings. Approximately 33 patent owner preliminary responses have raised NHK in similar circumstances since December 2018, with 20 of those cases being decided in Jan to May of 2020 alone. Below is a chart detailing the 10 cases where IPR institution has been denied on the basis of an NHI argument, consolidated into a single entry where multiple IPR denials related to the same parallel district court case.

Table 1: IPR denied based on NHK

Decision Date Case Name* Materially different prior-art arguments raised in the IPR petition(s)? Months until district court trial after the IPR institution decision**
12/3/2018 Mylan v. Bylar No 4
10/16/2019 Next caller v. Trustid No 9
1/22/2020 Magellan v. Sunoco No 2
3/10/2020 Bentley v. Jaguar Yes 7
3/26/2020 Ford v. MIT No 0 (finished, under appeal)
3/27/2020 Google v. UNILOC No 5
5/13/2020 Apple v. FINTIV No 10
5/15/2020 Cisco v. Ramot at Tel Aviv No 6
5/19/2020 Intel v. VLSI No 5-7, estimated

 

The most recent of these cases is perhaps one of the most favorable to the patent owner. In a series of decisions captioned Intel v. VLSI, the PTAB relied on NHK to deny review under 314(a) even though the District court has suspended its trial schedule due to Covid-19. Significantly, petitioner Intel filed its IPR petitions fully three months prior to the one-year statutory deadline after service of the district court complaint. Acknowledging these facts, the PTAB focused on the significant investment that had already gone into the parallel district court case, with fact discovery scheduled to end in May. Additionally, the trial date was set for October 2020, with a final written decision from the PTAB likely not to come until May 2021 if IPR were instituted. Even with the district court currently closed due to Covid-19, the PTAB found that it is likely the district court will go to trial before a final decision is reached. In weighing all the factors set forth in NHK, the PTAB ultimately decided that the likelihood of a district court trial in 5 to 7 months warranted denial of review.

The cases identified above are just the first in a series of PTAB developments favoring patent owners. With the ever-evolving landscape of IPR litigation it has become even more important than ever that parties looking to petition for IPR have capable and knowledgeable counsel who are able to navigate the unwritten rules of discretionary denial of IPRs.

USPTO Announces Prioritized Examination Pilot Program For COVID-19 Related Applications

Timothy Maier

Continuing its efforts to keep up with COVID-19, the USPTO has announced a prioritized examination pilot program reserved for applications covering products or processes subject to an applicable FDA approval for COVID-19 use.

Beginning on July 13, 2020, applicants may request prioritized examination for covered applications. The USPTO’s objective for the pilot is to complete examination of applications within 12 months of a granted request. The pilot is currently allowed 500 requests, but may be extended, terminated, or modified depending on workload, resources, feedback, and efficacy.

Requests may only be filed at specific points in the process. First, requests can be filed with a non-continuing original utility or plant provisional application. Second, requests can be filed with an original utility or plant nonprovisional application claiming specific forms of benefit to an earlier filing date. Finally, requests can be filed with requests for continued examination, but only one request for prioritized examination may be made with a given application.

Along with the request, applicant must certify that at least one claim covers a product or process related to COVID-19, certify that the applicant qualifies for either small or micro entity status at the time of the request, and execute an application data sheet meeting the conditions specified under 37 CFR 1.53(f)(3)(i).

Should the request be accepted, applicants should be wary of the following. First, any filing of petition for extension will cause the application to be removed from the special docket. Secondly, the First Action Interview Pilot Program is not available for applications granted prioritized examination.

The USPTO is accepting comments on the pilot program until July 13, 2020 to ensure consideration prior to the pilot.

If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

USPTO Launches “Patents 4 Partnerships” Pilot Program

Timothy Maier

In the past few months, the USPTO has made a number of changes in response to the spread of coronavirus. The focus has been both protecting USPTO employees and lessening the burden on affected practitioners and applicants alike. Now the USPTO has begun an effort aimed at solving the problem itself.

This month, the USPTO launched their new IP Marketplace Platform Pilot Program “Patents 4 Partnerships”. Per the USPTO announcement, the platform is “a centralized and easily accessible database of U.S. patents and published patent applications that are voluntarily made available for licensing.”

During its preliminary stage, the pilot will be focused technology related to the current pandemic. Specifically, Patents 4 Partnerships is currently limited to patents and published applications for the “prevention, diagnosis, and treatment of or protection from the coronavirus disease (COVID-19), including disinfectants, test kits, ventilators, and components thereof”. Listed publications were collected from 3rd party sources as well as the Official Gazette Notice of Patents and Patent Applications Available for License or Sale.

Additions to the platform may be made by the IP owner through a form on the platform website, while errors can be corrected by reaching out to the USPTO. The USPTO plans to use the next six months to test the platform and determine its future in relation to the Official Gazette Notice of Patents and Patent Applications Available for License or Sale.

The platform is available here while further inquiry about the platform, your portfolio, and any other related matter may be brought to us here.

Supreme Court: PTAB’s Institution of IPR Over Time-Bar Unappealable

Timothy Maier

In their decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court ruled that the PTAB’s decisions on 35 U.S.C. § 315(b), the one year time-bar, are final and unappealable.

The case began in 2013 at the PTAB with Thryv, Inc. (“Thryv”) and Click-to-Call Technologies, LP (“Click-to-Call”). Thryv filed a petition for an IPR of Click-to-Call’s patent relating to anonymous telephone calling (U.S. Pat. No. 5,818,836). In response, Click-to-Call argued that Thryv was time-barred from bringing this petition because of a complaint from 2001. The PTAB disagreed with Thryv’s argument due to procedural distinctions between the 2001 complaint and usual complaints leading to the time-bar. Therefore, the PTAB instituted the IPR over Click-to-Call’s objections.

Over the course of a series of appeals, the question of whether the Federal Circuit had jurisdiction to hear this appeal was brought to the Federal Circuit in an en banc review. Under §314(d), the PTAB’s institution decision is final and unappealable. However, the Federal Circuit found that §314(d) did not include the time-bar in §315(b). Instead, the Federal Circuit explained that §314(d) was limited to the likelihood-of-success requirement for proposed grounds of rejection stated in §314(a).

The Supreme Court disagreed in a 7-2 vote. The opinion was authored by Justice Ginsburg and joined by Roberts, Breyer, Kagan, and Kavanaugh, and in part by Alito and Thomas. The Court held that §314(d) covered not just the likelihood of success in §314(a), but the institution decision as a whole. At the heart of the opinion was the desire for efficiency in the court system. Per the opinion,

“By providing for inter partes review, Congress, concerned about overpatenting and its diminishment of competition, sought to weed out bad patent claims efficiently…Allowing §315(b) appeals would tug against that objective, wasting the resources spent resolving patentability and leaving bad patents enforceable.”

The dissent, authored by Justice Gorsuch and Joined by Sotomayor, emphasizes the fact that the phrase “in this section” in §314(d) limits the finality and unappealability solely to §314. As Justice Gorsuch puts forth, the justification for including the time-bar of §315(b) under the scope of §314(d) “appears nowhere in the statute but is, instead, a product of the judicial imagination”.

The full opinion is available here and will have significant impact on the procedures of the PTAB for patent owners, petitioners, and practitioners alike.

USPTO Extends COVID-19 CARES Act Response Deadlines

Maier & Maier

On March 16, the United States Patent & Trademark Office (“USPTO”) announced that  ‘extraordinary’ circumstances for relief at the USPTO would officially include the effects of COVID-19 “coronavirus”. On March 27, the USPTO announced its further relief response with deadline extensions as authorized by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) executed March 27. The announcement identified certain deadlines that would have come between March 27 and April 30, and provided for a 30 day extension.

On April 28, USPTO Director Andrei Iancu officially announced the extension of those deadlines  and the expansion of the affected deadlines. Under the new announcement, certain deadlines occurring from March 27-May 31 are extended to June 1 with a statement of personal effect, rather than the original 30 days. The statement must describe how the deadlines and payments were delayed as a result of a personal effect of COVID-19 on practitioners, applicants, patent owners, petitioners, third party requesters, inventors, or other individual involved including as examples, office closures, cash flow interruptions, inaccessibility of files/materials, personal or family illness, etc. This extension applies to most responses, filings, and requests as listed in the notice with some reserved only for small and micro-entities. The specific affected deadlines and requirements are laid out in the official patent and trademark CARES notices.

The USPTO has adjusted its operations to ensure that fees and documents will continue to be processed through EFS-Web, USPS, and the Customer Service Window. Per the announcement, USPTO interviews and hearings will be conducted virtually until further notice.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.

Western District of Texas Stakes Claim to Top Patent Litigation Forum

Maier & Maier

The close of the first quarter of 2020 means new patent filings totals from across the U.S., with the PTAB and the District of Delaware leading the way at 333 and 174 filings respectively. However, it was the Western District of Texas (WDTX) that made the biggest leap, continuing its surge since Judge Alan Albright was appointed to the bench in late 2018.

The first quarter of 2020 saw 163 patent filings in the WDTX, projecting to over 600 for the year. This comes after totaling only 257 for the entirety of 2019, which was up from 86 in all of 2018, and only 1 in all of 2017. If the trend continues, not only will WDTX eclipse its own total early in Q2, but the year end numbers are likely to continue to balloon and surpass the District of Delaware’s patent filings.

The rise of the WDTX to join the EDTX as a top venue for patent cases emphasizes the importance of a strong Texas presence for patent litigation firms. Maier & Maier’s Texas office, opened just last year in anticipation of the rise, affords the firm the proximity and expert resources necessary to handle the increased filings in the area.

This bump in filings is the result of Albright’s appointment and the subsequent changes he has made to the local rules for patent cases in the WDTX. These changes include a new filing schedule and streamlined Markmen hearings to attract patent filings. Combined with these appealing local rules, Albright’s tendency against transfers and the WDTX’s uncongested docket make the district highly appealing for patent filings, especially for Non-Practicing Entities.

Overall, both district court patent filings and PTAB filings remained steady in comparison to Q1 of 2019. Balancing out the surge in the WDTX, the District of Delaware is on pace to drop for the first time in over five years (only 696 in 2020 compared to 989 in 2019). Despite the drop, the District of Delaware remains a top venue for filings and there is little chance that ends in the near future.

USPTO Announces COVID-19 CARES Act Response And Deadline Extensions

Maier & Maier

The United States Patent & Trademark Office (“USPTO”) has announced its relief response and deadlines extensions relating to the current COVID-19 “coronavirus” as authorized by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) executed March 27.

In the release, USPTO Director Andrei Iancu explained the steps being taken by the USPTO:

“Inventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of COVID-19. As a result, we are working to provide as much relief as possible to our stakeholders, consistent with our ability to maintain the USPTO’s fee-funded operations. We are especially mindful of the outsized impact on small businesses and independent inventors, and we have provided additional relief for these groups. Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can also hit the ground running once it passes.”

The patent and trademark CARES adjustments include extensions of 30 days for certain deadlines between March 27 and April 30 with a statement of personal impact. The statement must describe how the deadlines and payments were delayed as a result of a personal affect of COVID-19  on practitioners, applicants, patent owners, petitioners, third party requesters, inventors, or other individual involved including as examples, office closures, cash flow interruptions, inaccessibility of files/materials, personal or family illness, etc. This extension applies to most responses, filings, and requests as listed in the notice with some reserved only for small and micro-entities.

These relief measures expand on the USPTO’s previous relief announcement on March 16 providing that the coronavirus outbreak was an “extraordinary situation”  within the meaning of 37 CPR 1.183 and 37 CPR 2.146 and that the fee associated with petitions to revive under 37 CPR l .17(m) will be waived.

The USPTO has adjusted its operations to ensure that fees and documents will continue to be processed through EFS-Web, USPS, and the Customer Service Window. Per the announcement, USPTO interviews and hearings will be conducted virtually until further notice.

Patent related concerns can be brought to the USPTO at their designated email address for the issue, Covid19PatentsRelief@uspto.gov.

Arthrex: Federal Circuit Rejects En Banc Rehearing On PTAB Judge Constitutionality

Maier & Maier

The Federal Circuit has denied the request for rehearing on their Arthrex decision from this past fall. As Maier and Maier’s own Steven Kunin describes here, this rejection sets up a probable grant of certiorari on the issue from the Supreme Court.

“The split among the judges provides a roadmap for a probable Supreme Court grant of a petition for certiorari to resolve the constitutionality of the appointment of PTAB judges to decide AIA trial cases.”

Steve goes on to lay out the dissent’s roadmap for issues in the Supreme Court review:

“Title 5’s protections for government employees are desirable and should not be eliminated without Congressional authorization. The USPTO can fix the problem by use of a statutory authorized panel (i.e., the Director, the Deputy Director, and the Commissioner of Patents). Prospective application of the remedy only is wrong. Retroactive application of Arthrex remedies the harm caused by the violation of the Appointments Clause. The original panel’s conclusion that PTAB judges are principal officers is highly questionable. The APJs are really inferior officers because the Director has substantial power over the PTAB, such as ‘to issue binding policy guidance, institute and reconsider institution, personally choose which APJs sit on AIA trials panels, single-handedly designate or de-designate any final written decision as precedential, and convene a panel of three or more members of his choosing to consider rehearing any Board decision’ and the ‘ability to discipline or remove APJs in a constitutionally significant manner.’”

Until the Supreme court has their final say, the USPTO awaits word on what could force significant changes to their operations.

New Rules For Proving Unintentional Delay At USPTO

Maier & Maier

On March 2, 2020, the USPTO published a new notice in the Federal Register clarifying their practice regarding unintentional delay.

“The United States Patent and Trademark Office (USPTO) is clarifying its practice as to situations that will require additional information about whether a delay in seeking the revival of an abandoned application, acceptance of a delayed maintenance fee payment, or acceptance of a delayed priority or benefit claim was unintentional.”

Effective immediately, the USPTO will now require additional information about the unintentional delay from the applicant seeking to:

  1. revive an application which has been abandoned for more than two years;
  2. file a maintenance fee on a patent which has been expired for more than two years
  3.  claim priority or a benefit for an application more than two years after such claim was due.

The USPTO notice also provides that the USPTO may require additional information to any other situation where the unintentional nature of a delay is in question.

The additional information will serve to demonstrate that the entire duration of the delay was unintentional. If any portion of the delay was intentional, the delay does not qualify as unintentional and the request will not be accepted. MPEP 711.03(c).

With the increased scrutiny for revival, diligent care by applicant and practitioners alike takes on heightened importance to adequately protect your patent rights.