United States Patent and Trademark Office (USPTO)

This article is first in a series focusing on various issues related to Patent Term Adjustment.  Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect patent term adjustment that will be examined in future articles.

Why PTA Exists

Under the pre-GATT regime, Patent Term Adjustment (“PTA”) did not exist in the U.S. because patent term was 17 years from issuance.  Consequently, any delay during examination, on the part of the United States Patent and Trademark Office (“USPTO”) or Applicants, was not a concern.  In fact, during this time, Applicants were in a way incentivized to, and sometimes would, delay examination to prolong their effective patent term, particularly since at the time publication of applications did not occur until issuance of the patent.  However, in 1995 GATT was adopted in an effort to harmonize U.S. patent term with the rest of the world, with patent term in the U.S. now being limited to 20 years from the earliest effective filing date.  As a result, any delays during examination would now erode a patent’s period of enforceability, which could cost Applicants millions of dollars or more.  Unfortunately, the onus was only on Applicants to avoid delays during examination, resulting in USPTO delays costing Applicants days or years of patent term without any recourse.  In an effort remedy this, Congress created PTA.

Continue Reading Calculating Patent Term Adjustment: Part 1

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the “’668 Patent”) on June 1, 2017.  The PTAB found the ’577 and ’668 Patents invalid but upheld the validity of the ’853 Patent.  The Inter Partes Review (“IPR”) proceedings were brought by Arista Networks in retaliation to Cisco’s accusations of infringement brought in multiple venues, including at the U.S. International Trade Commission (“ITC”), which had just a few weeks earlier upheld the validity of these very same patents and determined that Arista infringed the ’577 and ’668 Patents, and issued exclusion and cease and desist orders accordingly.  Since the IPR decisions issued Arista has filed a petition asking the ITC to suspend its limited exclusion order regarding the ’577 Patent based on the PTAB’s decision and is expected to file a similar request with respect to the ’668 Patent.  On the other side, Cisco plans to appeal the PTAB’s decisions to the Federal Circuit.  The uncertainty created by these inconsistent outcomes is an issue for patent owners, and it will be interesting to see how these cases are resolved.  In addition, this case shows that even though the ITC does not stay its investigations for IPRs, IPRs may still impact ITC proceedings.

Continue Reading PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

shutterstock_69589705On May 10, 2017 and following a Patent Trial and Appeal Board (PTAB) reexamination decision upholding certain claims, the United States Court of Appeals for the Federal Circuit ruled in Cisco Systems, Inc. v. Cirrex Systems, LLC that all of the appealed claims of a fiber optic patent held by Cirrex are invalid for lack of a written description support required by 35 U.S.C. § 112.  The panel applied its own construction of a key claim term requiring that a recited functional limitation take place in a specific location which the specification failed to describe.

Continue Reading You Can Not Claim What you Don’t Possess – Federal Circuit Holds Fiber Optic Claims Invalid under Section 112

723px-US-CourtOfAppeals-FederalCircuit-Seal_svgIn its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings.  The Court explained that extending the doctrine to cover patent owner statements, made either before or after institution of an IPR, ensures that claims are not argued in one way to maintain patentability and a different way to support infringement allegations.  The Court also noted that its conclusion promotes the public notice function of intrinsic evidence and protects the public’s reliance on statements made during IPR proceedings.

Continue Reading Federal Circuit Expands Scope of Prosecution Disclaimer to IPR Proceedings

USPTO SealThe U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a Patent Quality Chat webinar on May 9, 2017 (click here for the webinar slides).  Highlighted features and the status of the eMod project are described below.

Patent Center

The eMod project will provide a new interface, Patent Center, that combines EFS-Web and PAIR into a single interface for filing and managing patent applications.  Benefits of Patent Center include an improved interface and improved processes for submitting, reviewing, and managing patent applications and increased application processing and publication accuracy.  The Patent Center aims to be more efficient and have more functionality and features than EFS-Web and PAIR, including:

Continue Reading USPTO eMod Project To Improve E- Filing/Managing Patent Applications

The Federal Circuit has now reversed the Patent Trial and Appeal Board’s decision in Synopsys, Inc. v. ATopTech, Inc.  finding claims 1 and 32 of U.S. Patent No. 6,567,967 (the “‘967 patent”)  as being “not supported by substantial evidence.”

Synopsys sued ATopTech in 2013 for allegedly infringing the ‘967 patent. ATopTech subsequently filed two inter partes review (IPR) petitions (IPR2014-01150 and IPR2014-01159) challenging the validity of all claims of the ‘967 patent. The ‘967 patent aims to improve circuit performance by splitting large components into small subcomponents and optimizing the connections between subcomponents. Claim 1 requires “flattening each of said plurality of hierarchically arranged branches by eliminating superfluous levels of hierarchy above said atomic blocks.”  Claim 32 requires “determining optimal placement of each of the hard blocks, if any, within the predefined area.”  The Board found both claims either obviousness or anticipated in view of the Fields and/or Su references.

Continue Reading Federal Circuit Rejects Board’s Understanding of Prior Art

shutterstock_296971589Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data for certain events and bookmarking portions of the recording when something of interest is said, finding that the Board failed to provide any explanation for its decision with respect to certain challenged claims.

Continue Reading Federal Circuit to PTAB: No Short Cuts Allowed

What is Official Notice?

MPEP §2103(VI) states that when a rejection is imposed, the “Office action should clearly communicate the findings, conclusions and reasons which support them.”  Examiners commonly satisfy this requirement by citing one or more prior art references allegedly teaching each of the limitations of a claim.

Occasionally, however, an Examiner may eschew documentary evidence on the record and instead opt to rely solely on his or her own opinion in support of a rejection.  In such a situation, the Examiner might “take official notice” to establish the veracity of an assertion made by the Examiner that a particular claim limitation is well-known in the art.

Official notice allows an Examiner to support a rejection by making a declaration of facts not in the record, but instead based on “common knowledge” in the art, according to MPEP §2144.03.  But only in very limited circumstances is taking official notice without documentary evidence to support an Examiner’s conclusion permissible.

Continue Reading Rules and Practice Tips Regarding Official Notice at the U.S. Patent and Trademark Office

A variety of options are available to applicants to speed up patent application examination at the U.S. Patent and Trademark Office.  Four of the more common programs are explored in depth below, and other options for speeding up examination are available in a previous post provided by Mintz Levin.

Track One Prioritized Examination

Track One examination allows an applicant to pay for prioritized examination and to receive a final disposition usually in less than one year (compared to two to four years for regular examination) from the time Track One status is granted.  A final disposition may be a Notice of Allowance, a Final Rejection, or a Notice of Abandonment.  The program on average boasts a first Office Action in approximately 4 months and final disposition in less than 8 months. Continue Reading Fast Track Examination in the U.S. Patent and Trademark Office

USPTO SealOn April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings.  The effort includes analyzing five years’ worth of historical data covering PTAB proceedings and user experiences.  The USPTO hopes to use this data analysis to ensure the proceedings are as “effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of patentability of patent claims after they issue.”

Continue Reading USPTO Launches PTAB Procedural Reform Initiative