IP Law Daily, WORTH NOTING—Other IP law developments, (Sep 9, 2022)

By WK Editorial Staff

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

PATENT—Fed. Cir.: The Patent Trial and Appeal Board did not err in affirming an examiner’s rejection of claims 1–13 and 15–36 in a patent application (U.S. Pat. App. Pub. 2016/0063403) relating to software for asset acquisition and management as patent-ineligible under 35 U.S.C. § 101, the U.S. Court of Appeals for the Federal Circuit has determined. The claims merely recited storing vendor/customer information, product information, and asset management information, associating the various items of information with other items of information, and enabling the retrieval of any information and any of its associated information.” The claim added no inventive concept, merely reciting generic computer functions using conventional computer technologies (In re Smith, September 9, 2022, per curiam).

PATENT—Fed. Cir.: A South Carolina district court properly dismissed one patent infringement suit filed by a pro se inventor against 16 technology companies, but erred in dismissing another suit against Google LLC, the U.S. Court of Appeals for the Federal Circuit has ruled. In the suit against the 16 companies, the court dismissed the operative complaint as frivolous after finding that the inventor

“failed to include factual allegations beyond the identities of the Defendants, reference to the alleged infringing devices, and the alleged infringed-upon patents.” However, the inventor’s separate complaint against Google should not have been dismissed as frivolous since it included a detailed claim chart mapping features of an accused product, the Google Pixel 5 Smartphone, to independent claims from three patents. The district court on remand was instructed to allow the complaint to be filed and request service of process (Golden v. Apple Inc., September 8, 2022, per curiam).

PATENT—Fed. Cir.: The U.S. Court of Federal Claims properly dismissed a patent infringement action brought against the Department of Homeland Security by an inventor of a family of patents concerning a system for locking, unlocking, or disabling a lock upon the detection of chemical, radiological, and biological hazards, the U.S. Court of Appeals for the Federal Circuit has held. The pro se plaintiff failed to comply with Rules of the Claims Court. In particular, despite having eight years to develop his case and two chances to provide infringement contentions compliant with Patent Rule 4, the inventor failed to identify in the accused products at least two key elements claimed in his patents: the sensor and locking limitations (Golden v. U.S., September 8, 2022, per curiam).

TRADEMARK—TTAB: The Trademark Trial and Appeal Board has designated as precedential an order issued on May 19, 2022, holding that parties who stipulated to Accelerated Case Resolution (ACR) must submit briefs within the maximum page requirement—25-pages for main briefs and 10 pages for rebuttal briefs—in accordance with Trademark Rule 2.127(a). The opposer’s motion to disregard the applicant’s 41-page brief was granted, but the applicant was permitted to resubmit a brief limited to 25 pages (Rasa Vineyards, LLC v. Rasasvada, LLC, August 17, 2022, Faint, M.).

FEDERAL CIRCUIT NEWS: The U.S. Court of Appeals for the Federal Circuit announced that it will resume normal operations and reopen the National Courts Building to the public, beginning Monday, September 12. The changes are implemented by Administrative Order 2022-04 and Administrative Order 2022-05. The Federal Circuit also issued Revised Protocols for in-person arguments that will apply beginning with the October 2022 court sitting.

USPTO PATENT NEWS: The USPTO is seeking public comments on a proposed rulemaking to amend the rules of practice in patent cases and the rules regarding the representation of others before the USPTO to better protect the public and improve compliance with USPTO requirements. In particular, the rulemaking proposes to formalize the USPTO's Diversion Pilot Program for patent and trademark practitioners whose physical or mental health issues or law practice management issues resulted in minor misconduct. “Formalizing the Pilot would align USPTO disciplinary practice with a majority of states and provide practitioners an opportunity to address the root causes of such misconduct,” the agency said. The USPTO also proposes to require foreign attorneys or agents granted reciprocal recognition in trademark matters to provide and update their contact and status information or have their recognition withdrawn so the public will have access to up-to-date information. Also, the USPTO proposes to defer to state bars regarding fee sharing between practitioners and non-practitioners to reduce the potential for conflicts between USPTO and state bar rules. Finally, the USPTO proposes to remove a fee required when changing one's status from a patent agent to a patent attorney and to make minor adjustments to other rules related to the representation of others before the USPTO. Comments on the proposal are due on November 7, 2022 (87 Fed. Reg. 54930, September 8, 2022).

USPTO PATENT NEWS: The USPTO announced that it has updated its forms to simplify the process for filing petitions to accept priority to, or benefit of, the filing date of prior-filed applications. Specifically, the Office of Petitions (OPET) has created Form PTO/SB/458 for petitions to accept unintentionally delayed foreign priority claims and Form PTO/SB/459 for restoring benefits of provisional applications or priority to foreign applications. In addition, OPET has updated Form PTO/SB/445 for petitions to accept unintentionally delayed benefit claims to provisional applications. Now the form also includes similarly delayed claims to nonprovisional applications, or international applications (including international design applications) designating the United States. The forms are available on the Patent Forms page of the USPTO website. More information on the petitions can be found on the OPET webpage. OPET has also launched a new ePetitions Resource page.

Attorneys: James A. Mitchell (Mitchell Intellectual Property Law) for Jason Smith. Sarah E. Craven, U. S. Patent and Trademark Office, for Katherine K. Vidal. Thomas G. Saunders (Hale and Dorr LLP) for Apple Inc. Elliott J. Williams (Stoel Rives LLP) for Rasa Vineyards, LLC. Nancy J. Mertzel (Mertzel Law PLLC) for Rasasvada, LLC.

Companies: Apple Inc.; Google LLC; Rasa Vineyards, LLC; Rasasvada, LLC

News: Patent Trademark TechnologyInternet FedCirNews USPTO