USPTO News

• USPTO released the FY 2020 Performance and Accountability Report to update the public on the Office’s performance and financial health.
• Lead PTAB Judges Bill Saindon, Jessica Kaiser and Michelle Ankenbrand discussed multiple petitions, motion to amend, and SOP2-related forms during the December 10, 2020 Boardside Chat webinar.
• A review of the motions to amend (MTAs) in AIA trials found that entry into the USPTO’s MTA pilot program was requested in 76% of MTAs filed between June 1, 2019 and September 30, 2020. In total, 36% of Final Written Decisions following Patent Owner’s election into the MTA pilot program granted at least one proposed substitute claim as compared to 11% for those in which Patent Owner did not elect into the pilot program.
• The USPTO welcomed Judge Susan Braden and Daniel Brown as new members of the Patent Public Advisory Committee and David Cho, Tracy Deutmeyer and Jomarie Fredericks as new members to the Trademark Public Advisory Committee.
• Mary Critharis has been appointed the USPTO’s Chief Policy Officer and Director for International Affairs, after being recently appointed to the position in an acting capacity in October.
• The Patent Forms page contains updated forms for (1) a petition for revival of an application abandoned unintentionally (PTO/SB/64, PTO/SB/64a, and PTO/SB/64PCT) and (2) a petition to accept an unintentionally delayed payment of maintenance fee in an expired patent (PTO/SB/66) based on the Office’s recent clarification as to situations that will require additional information about delays.
• The USPTO will be shortening URLs on its website on January 17, 2021. Old URLs will be directed to their new pathways, but there may be a brief period during which “page not found” or “404 error” messages may be received.
• The USPTO’s First Action Interview Pilot Program is scheduled to end on January 15, 2021.

Legislation

• The Trademark Modernization Act of 2020 (TMA) was included in the recently signed Consolidated Appropriations Act for 2021. The TMA includes numerous changes to trademark law at the USPTO, including providing for third-party submission of evidence relating to trademark applications and establishing expungement and ex parte proceedings for challenging the validity of trademarks at the USPTO. The TMA also includes provisions making it easier to secure an injunction for trademark infringement in district court cases.

Notices, Guidance and Requests

• The Article of Manufacture Requirement, 85 Fed. Reg. 245 (December 21, 2020) [Written comment period closes February 4, 2021.] (seeking input on whether the USPTO’s interpretation of the article of manufacture requirement in 35 U.S.C. § 171 should be revised to protect digital designs that encompass new and emerging technologies, such as projections, holographic imagery, or virtual/augmented reality, which do not require a physical display screen or other tangible article to be viewable).
• Request for Comments on the National Strategy for Expanding American Innovation, 85 Fed. Reg. 247 (December 23, 2020) [Written comment period closes February 8, 2021.] (seeking input on the National Council for Expanding American Innovation’s (NCEAI’s) goal to develop a national strategy to build a more demographically, geographically and economically inclusive innovation ecosystem).
• The USPTO designated interruptions in service of the United States Postal Service in the areas affected by (1) the wildfires in California, Oregon and Washington, beginning on Tuesday, September 8, 2020; (2) Hurricane Sally in Alabama, Florida and Louisiana, beginning on Monday, September 14, 2020; and (3) Hurricane Laura in Louisiana and Texas, beginning on Tuesday, August 25, 2020 as postal service interruptions and emergencies within the meaning of 35 U.S.C. 21(a) and 37 CFR 1.10(i) and 2.195(d), which provides support for certain petitions to the Director. See United States Postal Service Interruption and Emergency under 35 U.S.C. 21(a), 1481 Off. Gaz. Pat. & Trademark Office 2, 142 (December 8, 2020). 
• The USPTO fee schedule was updated on December 1, 2020. Additional fee changes came into effect on January 1 and 2, 2021.

Final Rules

• Rules of Practice to Allocate the Burden of Persuasion on Motions to Amend in Trial Proceedings Before the Patent Trial and Appeal Board, 85 Fed. Reg. 245 (December 21, 2020).
• Trademark Fee Adjustment, 85 Fed. Reg. 241 (December 15, 2020).
• PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 237 (December 9, 2020).

Interim Rules

• There are no new interim rules.

Proposed Rules

• Disclaimer Practice in Patents and Patent Applications, 85 Fed. Reg. 250 (December 30, 2020) [Written comment period closes March 22, 2021.]
• Discretion to Institute Trials Before the Patent Trial and Appeal Board, 85 Fed. Reg. 223 (November 18, 2020) [Written comment period closed on December 3, 2020.]
• Changes to Representation of Others Before the United States Patent and Trademark Office, 85 Fed. Reg. 147 (July 30, 2020) [Written comment period closed on September 28, 2020.]
• Small Entity Government Use License Exception, 85 Fed. Reg. 24 (February 5, 2020) [Written comment period closed on March 23, 2020.]
• Facilitating the Use of WIPO's ePCT System to Prepare International Applications for Filing with the United States Receiving Office, 85 Fed. Reg. 20 (January 30, 2020) [Written comment period closed on March 30, 2020.]

PTAB Decisions

• New Precedential PTAB Decisions
  • Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (December 1, 2020) (designated precedential as to § II.A, December 17, 2020) [AIA § 314(a), instituting review – Fintiv analysis: Petitioner’s “stipulation” “not [to] pursue in [a copending District Court case] the specific grounds [asserted in the inter partes review], or any other ground . . . that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” “weighs strongly in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a)” because the stipulation “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.”]
  • Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (October 21, 2020) (designated precedential as to § II.A, December 17, 2020) [AIA § 314(a), instituting review – Fintiv analysis: “[T]he District Court’s stay of the litigation pending denial of institution or a final written decision allays concerns about inefficiency and duplication of efforts” and “weighs strongly against exercising discretion to deny institution.” The Board “agree[d] with Petitioner that [determining whether the District Court Litigation would resume and trial would be held at or before the final written decision due date] . . . amounts to unfounded speculation as to how the court might proceed.”]
  • RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (October 2, 2020) (designated December 4, 2020) [AIA §§ 312(a)(2), 315(b): On remand from the Federal Circuit, the Board applied the “expansive common-law meaning” of “real party in interest” and found Petitioner was time-barred pursuant to 35 U.S.C. § 315(b) because Petitioner’s client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before Petitioner filed the petition.]
  • SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (October 6, 2020) (designated December 4, 2020) – [AIA § 312(a)(2), instituting review: While “petitioners must comply with [the] requirements [in 35 U.S.C. § 312(a)(2) regarding identifying all real parties in interest] in good faith,” the Board “need not address whether [a third party] is an unnamed RPI” where, “even if it were [an RPI], it would not create a time bar or estoppel under 35 U.S.C. § 315.”]
  • Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (October 28, 2020) (designated December 4, 2020) – [AIA §§ 314(a), 315(c), denying institution and joinder motion: Denying institution of Petitioner’s copycat petition/joinder motion based on General Plastics factors because Petitioner had previously filed a different petition on the same patent for which institution had been denied.]
• New Informative PTAB Decisions
  • There are no new informative PTAB decisions.

New Requests for POP Review

• Garmin Int’l, Inc. et al v. Koninklijke Philips NV f/k/a Koninklijke Philips Elecs. NV (IPR2020-00754) [Notification of Receipt of POP Request issued December 1, 2020] [Petitioner requests rehearing of Institution Decision, presenting the question of “whether Apple v. Fintiv IPR2020-00019, Paper 11 (PTAB March 20, 2020) (precedential) should apply to inter partes review proceedings involving parallel ITC investigations.” Petitioner argues “[t]he Panel’s decision denying institution makes it effectively impossible to satisfy the Fintiv factors with respect to IPRs filed in response to an ITC investigation, regardless of the strength of the merits or diligence in filing.”]
• Solvay USA Inc. v. WorldSource Enters., LLC (IPR2020-00768) [Notification of Receipt of POP Request issued December 7, 2020; Order Denying POP Request issued December 9, 2020] [Patent owner requests rehearing of Decision Granting Institution of Inter Partes Review, presenting the questions of (1) “[t]he proper application of discretionary factors under 35 U.S.C. § 325(d)” to “prior art already considered during prosecution, and related burdens of proof” and (2) whether “Printed Publications” in 35 U.S.C. § 311 includes “secret” prior art under 35 U.S.C. § 102(e).] 
• Renesas Elects. Corp. v. Broadcom Corp. (IPR2019-01040) [Notification of Receipt of POP Request issued December 17, 2020] [Petitioner requests rehearing of Decision Granting (in part) Patent Owner’s Motion to Amend, presenting the question of “[w]hether allowing a Patent Owner to add substitute claims that remove limitations relative to the claims they replace, and do not respond to any unpatentability issue, violates the requirements of 37 C.F.R. § 42.121(a)(2).”]
• Mitek Sys, Inc. v. U.S. Auto. Ass’n (IPR2020-00882) [Notification of Receipt of POP Request issued December 17, 2020] [Petitioner requests rehearing of Institution Decision, presenting the question of (1) “[w]hether a supplier of technology has a ‘significant relationship’ with its customer [such that discretionary denial of an alleged follow-on petition under 35 U.S.C. § 314(a) by the supplier is permissible] merely by [] providing technology that allegedly performs some (but not all) of the limitations of a challenged claim and [] participating in an underlying district court infringement case in response to a subpoena by Patent Owner;” (2) “[w]hether a common interest agreement between a supplier of technology that allegedly performs some (but not all) of the limitations of a challenged claim and its customer is relevant to the discretionary denial inquiry; and if (1) or (2) is true: [(3) w]hen and under what test should the Board deny institution pursuant to its discretion under § 314(a) on the basis of such facts.” 
• Philip Morris Products SA v. RAI Strategic Holdings, Inc. (IPR2020-00921) [Notification of Receipt of POP Request issued December 17, 2020] [Petitioner requests rehearing of Institution Decision, presenting the question of (1) “[w]hether an early trial date is now a dispositive factor in the Fintiv analysis,” (2) “[w]hether a broad stipulation that parallels the statutory estoppel is enough to outweigh an early trial date when a strong petition is filed promptly after being sued,” and (3) “[w]hether a stay, or a ruling that the court will grant a stay upon institution, is required to obtain review when the patent is being litigated in a fast-moving jurisdiction.”]