PTAB/USPTO Update - August 2024

USPTO News

• On July 7, the Senate passed a resolution “[r]ecognizing the importance of trademarks in the economy and the role of trademarks in protecting consumer safety, by designating the month of July as ‘National Anti-Counterfeiting and Consumer Education and Awareness Month.’”
• On July 11, USPTO Director Kathi Vidal wrote a post on the Director’s Blog discussing the USPTO’s efforts to reduce patent and trademark application pendency.
• On July 16, the USPTO announced updated guidance on patentable subject matter eligibility, including artificial intelligence (AI). The updated guidance, which went into effect on July 17, identifies parts of the USPTO’s existing subject matter eligibility guidance, Federal Circuit decisions, and examples relevant to AI-related inventions.
• On July 31, the United States Copyright Office (USCO) released a report titled Copyright and Artificial Intelligence Part 1: Digital Replicas. As the first in a multipart report regarding the intersection of AI and copyright law, the report “addresses the topic of digital replicas—the use of digital technology to realistically replicate an individual’s voice or appearance.” Under President Biden’s Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence, the USPTO is required to “issue recommendations to the President on potential executive actions relating to copyright and AI” within 180 days of the report.

Notices

• 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 89 FR 58128 (July 17, 2024).
• Performance Review Board, 89 FR 57879 (July 16, 2024) [announcing the appointment of the following persons to serve as members of the USPTO’s Performance Review Board (PRB):
  • Derrick Brent, Chair, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
  • Frederick W. Steckler, Vice Chair, Chief Administrative Officer, USPTO
  • Vaishali Udupa, Commissioner for Patents, USPTO
  • David S. Gooder, Commissioner for Trademarks, USPTO
  • Dennis J. Hoffman, Chief Financial Officer, USPTO
  • Henry J. Holcombe, Chief Information Officer, USPTO
  • David L. Berdan, General Counsel, USPTO
  • Sharon Israel, Chief Policy Officer and Director for International Affairs, USPTO
  • Gerard F. Rogers, Chief Administrative Trademark Judge, USPTO
  • Scott R. Boalick, Chief Administrative Patent Judge, USPTO
  • Bismarck Myrick, Director of the Office of Equal Employment Opportunity and Diversity, USPTO
  • Cara Duckworth, Chief Corporate Communications Officer, USPTO
  • Shirin Bidel-Niyat, Chief of Staff, USPTO
  • Alternate: Robin Evans, Deputy Commissioner for Patents, USPTO
  • Alternate: Amy Cotton, Deputy Commissioner for Trademark].
• Public Roundtable on Protections for Name, Image, Likeness, Other Indicia of Identity, and Reputation, 89 FR 54442 (July 1, 2024) [providing notice of public “roundtable to seek public input regarding: whether existing laws protecting an individual’s reputation and existing laws prohibiting unauthorized use of an individual’s name, image, voice, likeness, or other indicia of identity … are sufficient given the development and proliferation of artificial intelligence (AI) technology.”].

Final Rules

• There are no new final rules.

Interim Rules

• There are no new interim rules.

Proposed Rules

• Withdrawal of Changes to Post Registration Response Deadlines, 89 FR 58660 (July 19, 2024) [providing notice of proposed rule to withdraw previously postponed portions of regulations implementing the Trademark Modernization Act that would have imposed a shortened three-month response period extendable by three months for post-registration actions for maintenance and renewal filings].

Legislation

• On July 2, Representatives Young (R-CA) and Moolenaar (R-MI) introduced a bill titled “Protecting American Innovation and Development Act of 2024” or the “PAID Act of 2024” to “require the Secretary of Commerce to identify and report on foreign adversary entities using intellectual property related to emerging technology without a license, and for other purposes.”
• On July 11, the Affordable Prescriptions for Patients Act of 2023 passed in the Senate. According to the bill’s summary, it provides limits on patent litigation concerning biological products, including articulating a limit on the number of patents that may be asserted in a litigation in certain instances.
• On July 11, Senators Hirono (D-HI), Tillis (R-NC), Durbin (D-IL), Coons (D-DE), Blumenthal (D-CT), Padilla (D-CA), Klobuchar (D-MN), and Grassley (R-IA) introduced a bill to amend chapter 11 of title 35, United States Code, to require the voluntary collection of demographic information for patent inventors, and for other purposes. The text of the bill is currently unavailable.

PTAB Decisions

• New Precedential PTAB Decisions
  
  • There are no new precedential PTAB decisions
• New Informative PTAB Decisions
  
  • There are no new informative PTAB decisions
• New Director Review Decisions
  
  • Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860
    
    • Decision subject to Director Review – Paper 113 (May 22, 2023) (public version of confidential Paper 111 (May 3, 2023)) [Decision Granting Petitioner’s Motions for Sanctions on the basis that “Patent Owner, through its counsel, failed to meet its duty of candor and fair dealing” by “selectively and improperly withh[olding] material [biological testing] results that were inconsistent with its arguments….”]
    • Decision Affirming modifying-in-part order granting petitioner's motion for sanctions - Paper 143 (July 26, 2023) (public version of confidential Paper 142 (July 6, 2023)) [“determine[ing] that Patent Owner engaged in sanctionable misconduct,” including “intentionally withholding and concealing relevant factual evidence in violation of 37 C.F.R. §§ 42.11(a) and 42.51(b)(1)(iii); intentionally relying on known falsely elicited expert testimony in violation of 37 C.F.R. §§ 42.11(a), 42.11(c), and 11.18(b)(2); and intentionally making a false statement of fact in violation of 37 C.F.R. § 42.11(c) and 11.18(b)(2),” but determining “37 C.F.R. § 1.56 does not apply to AIA proceedings” and declining to “address the Board’s determinations of violations of 37 C.F.R. §§ 11.106(c) and 11.303 because consideration of these rules is best reserved for a disciplinary action against Patent Owner’s counsel if initiated.”]
  • Hesai Technology Co. Ltd. v. Ouster, Inc., IPR2023-01458
    
    • Decision subject to Director Review – Paper 8 (March 28, 2024) [Institution Decision denying institution]
    • Decision vacating decision on institution and remanding for further proceedings – Paper 14 (July 25, 2024) [determining that the Board erred by failing to consider relevant portions of a prior art figure due to a discrepancy in in the specification with another aspect of the figure]
  • Shenzhen Xinzexing E-Commerce Co., Ltd. v. Shenzhen Carku Technology Co., Ltd., IPR2024-00222
    
    • Decision subject to Director Review – Paper 4 [Judgment Granting Adverse Judgment]
    • Decision vacating adverse judgment, and remanding for further proceedings – Paper 7 (July 10, 2024) [determining that Patent Owner’s failure to file mandatory notices, a Patent Owner Preliminary Response, or the Board’s emails prior to the deadline for a decision on institution while seeking new counsel in a copending district case was not “an unequivocal abandonment of the contest with respect to this proceeding”]
  • Prime Time Toys LLC v. Spin Master, Inc., IPR2023-01339, IPR2023-01348 & IPR2023-01461 (see Obviousness, Rationales and Secondary considerations)
    
    • Decision subject to Director Review – Paper 10 [Institution Decision denying institution]
    • Decision reversing decision denying institution, and remanding for further proceedings – Paper 12 (July 9, 2024) [determining that (1) the Board erred in discounting Petitioner’s motivation to combine based on the experience of Petitioner’s expert and secondary considerations of obviousness in the form of simultaneous invention, (2) the Board made incorrect determinations regarding the desires of a person of ordinary skill in the art, and (3) “the Board’s decision puts too high a burden on Petitioner to establish not only an expectation of success, but absolute success;” and declining to discretionarily deny institution]

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.