IP Law Daily, WORTH NOTING—Other IP law developments, (Oct 13, 2023)

By WK Editorial Staff

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

PATENT—Fed. Cir.: Substantial evidence supported the Patent Trial and Appeal Board’s determination in an inter partes review proceeding that several claims of U.S. Patent No. 6,765,407 (the ’407 patent) owned by Monteray Research LLC were invalid as obvious in view of U.S. Patent No. 6,728,871 (“Vorbach”), the U.S Court of Appeals for the Federal Circuit has decided. The ’407 patent, entitled “Digital Configurable Macro Architecture,” concerns a programmable digital device, which utilizes a programmable digital circuit block. Because the Board committed no legal error and its factual findings were supported, the Federal Circuit affirmed this IPR decision and did not need to reach a second PTAB decision in another IPR proceeding finding the same claims invalid as obvious or anticipated in view of other prior art references (Monterey Research, LLC v. Vidal, October 13, 2023, Dyk, T.).

COPYRIGHT OFFICE NEWS: The Copyright Office has extended the deadline to submit comments in response to the Office’s September 26, 2023, supplemental notice of proposed rulemaking on termination rights and other topics related to the Music Modernization Act. The proposal, which updates a 2022 Notice of Proposed Rulemaking, focuses on the complex intersection between the termination provision written into the 1976 Copyright Act and the payment procedures anticipated by the modern blanket license regime. Initial written comments are now due November 8, 2023, and reply comments are due November 28, 2023 (88 Fed. Reg. 70412, October 11, 2023).

PATENT NEWS: The U.S. Supreme Court on October 10 declined to take up a petition for certiorari challenging a divided Federal Circuit decision holding that a patent directed to digital communications technology was unenforceable under the equitable doctrine of prosecution laches. The Federal Circuit agreed with the district court that the Personalized Media’s strategy in prosecuting U.S. Patent No. 8,191,091 amounted to an egregious misuse of the statutory patent system in an attempt to extend patent rights to nearly 50 years. The delay prejudiced the accused infringer, Apple, because during the prosecution delay period, Apple had developed its own digital rights management tech using encryption/decryption techniques eventually covered by the patent-in-suit. The district court’s decision nullified a jury verdict finding that Apple had infringed the patent and was liable for $308 million in reasonable-royalty damages. The petition has posed two questions: (1) Whether prosecution laches can be based on an applicant’s prosecution of a patent application in compliance with the PTO’s docket-management decisions. (2) Whether the doctrine of prosecution laches, as articulated by the Federal Circuit, is a valid patent infringement defense in light of the Supreme Court’s decision in SCA Hygiene Prods. v. First Quality Baby Prods., 580 U.S. 328 (2017). In SCA Hygiene, the Court held that a defendant in a patent infringement case cannot assert laches as a defense against infringement claims filed within the six-year period for recovery under Section 286 of the Patent Act (Personalized Media Communications v. Apple Inc.,Dkt. No. 23-230).

USPTO PATENT NEWS: The USPTO's Office of the Chief Economist has released the 2022 update to its Patent Examination Research Dataset (PatEx). The data files include information on over 13 million publicly viewable provisional and nonprovisional patent applications along with over 1 million applications filed under the Patent Cooperation Treaty (PCT). The information includes each application’s characteristics, prosecution history, continuation history, claims of foreign priority, patent term adjustment history, publication history, and correspondence address information. The 2022 PatEx release includes some information that has not been made available in previous years, such as data on all applicants and metadata on examination-related documents, as described in this 2022 Addendum.

USPTO PATENT NEWS: The USPTO announced the release of the USPTO Virtual Assistant as a feature on select Patents webpages. Like the trademark Virtual Assistant, the patent Virtual Assistant provides answers to common customer questions and makes it easier to find the status of a patent application. The Virtual Assistant can be found on several patent webpages. Over time, the Office expects the tool will expand its knowledge base and improve its ability to recognize and answer questions.

Attorneys: Donald Lee Jackson (Davidson Berquist Jackson & Gowdey, LLP) for Monterey Research, LLC. Benjamin T. Hickman, U.S Patent and Trademark Office, for Katherine K. Vidal.

Companies: Monterey Research, LLC

News: Copyright Patent TechnologyInternet Trademark FedCirNews USPTO