IP Law Daily, WORTH NOTING—Other IP law developments, (Mar 24, 2023)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

PATENT—Fed. Cir.: A California federal district court’s decision that all claims of U.S. Nos. 8,055,559 and 8,055,560, relating to business accounting systems and methods, were unpatentable as directed to an ineligible abstract idea has been affirmed in part and reversed in part by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit affirmed the district court’s decision denying the plaintiff’s motion for leave to file a second amended complaint, as well as its ineligibility ruling regarding claims 1 and 31–33 of both patents because those were the only asserted claims and the defendant only challenged the claims in a motion to dismiss. Therefore, the district court’s decision was reversed as to the unasserted claims (Hantz Software, LLC v. Sage Intacct, Inc., March 20, 2023, Prost, S.).

PATENT—Fed. Cir.: A petition for mandamus filed by Ethanol Boosting Systems LLS and the Massachusetts Institute of Technology seeking an order directing the Patent Trial and Appeal Board to terminate three inter partes review (“IPR”) proceedings has been denied by the U.S. Court of Appeals for the Federal Circuit. The PTAB originally denied institution, but then held petitioner Ford Motor Company’s motion for reconsideration in abeyance pending appeal of a district court’s decision in parallel litigation between the parties over the same patents. In July 2022, the Federal Circuit reversed the district court’s claim construction. After that decision, the PTAB granted Ford’s request for rehearing and instituted IPR proceedings. The petitioners challenged the timeliness of the PTAB’s actions. However, under the circumstances of this case, a writ of mandamus was not warranted. “In particular, to the extent 35 U.S.C. § 314(d) does not bar judicial review of its arguments altogether, EBS has not shown that it will be unable to raise its arguments after the conclusion of the IPR proceedings,” the court said.(In re: Ethanol Boosting Systems, LLC, March 23, 2023, per curiam).

PATENT—Fed. Cir.: The U.S. Court of Appeals for the Federal Circuit has denied a petition for mandamus filed by Roku, Inc., to direct the federal district court in Waco, Texas, to transfer a patent case filed by IOENGINE LLC to the Northern District of California, because the was no evidence that the district court clearly abused its discretion in denying Roku’s transfer motion. In adopting a magistrate judge’s report and recommendation, the district court found that despite Roku suggesting all of its potential employee witnesses were in Northern California, several Roku employees were in Austin, Texas and “possess particularly relevant knowledge to this case,” and that relevant sources of proof and custodians of that proof were in Austin (In re: Roku, Inc., March 23, 2023, Wallach, E.).

COPYRIGHT ROYALTY BOARD NEWS: On March 22, the Copyright Royalty Judges published two notices soliciting comments on a motions of Allocation Phase claimants (formerly, the “Phase I” claimants) for partial distribution of the 2020 satellite royalty funds (satellite notice, 88 Fed. Reg. 17271) and 2020 cable royalty funds (cable notice, 88 Fed. Reg. 17272). The Judges oversee distribution of royalties to copyright owners whose works were included in a qualifying transmission and who file a timely claim for royalties in accordance with Section 111 of the Copyright Act. Comments are due for both notices by April 21, 2023.

USPTO PATENT NEWS: The USPTO has issued a final rule increasing fee discounts for small entities from 50% to 60% and fee discounts for micro entities from 75% to 80% for fees for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents. The fee reductions are in accordance with USPTO regulations to implement the Unleashing American Innovators Act of 2022 (UAIA), signed into law on December 29, 2022, as part of the Consolidated Appropriations Act of 2023. Fee rates reflecting these amended discounts for small and micro entities were made available to the public on December 29, 2022, and are published on USPTO fee schedule webpage (88 Fed. Reg. 17147, March 22, 2023).

USPTO PATENT NEWS: The USPTO has announced that it is delaying the effective date of filing fees for applications filed in non-DOCX form until June 30, 2023. The text of the final rule postponing the effective date is available here. This surcharge fee only applies to non-provisional utility applications, including continuing applications, and not to design, plant, or provisional applications. The effective date of the fee change was scheduled to take effect on April 3, 2023. The official notice will to be published in the Federal Register on Monday.

USPTO TRADEMARK NEWS: On April 1, 2023, the USPTO will begin a Final Pretrial Conference Pilot program at the Trademark Trial and Appeal Board. The parties in these cases will participate in a pretrial conference with a TTAB interlocutory attorney and an administrative trademark judge to discuss the parties’ plan for trial. According to the agency, the process will help the TTAB manage and streamline proceedings, as part of the USPTO’s efforts to innovate processes for efficiency, as set forth in the USPTO Strategic Plan.

INTERNATIONAL NEWS: The European Union Intellectual Property Organization (EUIPO) has made available the current edition of its Guidelines for Examination, available on this webpage. The guidelines reflect the EUIPO’s current trademark and design practice.

Attorneys: Lewis Emery Hudnell, III (Hudnell Law Group PC) for Hantz Software, LLC. Robert Courtney (Fish & Richardson PC) for Sage Intacct, Inc. Matthew Robert Berry (Susman Godfrey LLP) for Ethanol Boosting Systems, LLC. Michael S. Connor (Alston & Bird LLP) for Ford Motor Co. Tia Fenton (Duane Morris LLP) for Roku, Inc. Noah Leibowitz (Dechert LLP) for IOENGINE, LLC.

Companies: Hantz Software, LLC; Sage Intacct, Inc.; Ethanol Boosting Systems, LLC; Ford Motor Co.; Roku, Inc.; IOENGINE, LLC

News: Copyright Patent TechnologyInternet Trademark FedCirNews USPTO