In yet another sign of the strength of the U.S. patent system, the USPTO has now issued Pat. No. 11,000,000. The patent, dated May 11, 2021, was for “Repositioning Wires and Methods for repositioning Prosthetic Heart Valve Devices Within a Heart Chamber and Related Systems, Devices, and Methods”.

When the USPTO began numbering patents in 1836, Pat. No. 1 was issued for a traction wheel for steam locomotives and it took 163 years before the USPTO issued Pat. No. 6,000,000 in 1999. Innovation has gained even more steam since then, as the USPTO has issued another 5 million patents in the past 22 years.

“Since the founding of our nation, American inventors have driven our culture and commerce with incredible ideas that have improved every function of our lives. We owe a debt of gratitude to inventors who continue to show up day after day with solutions to the world’s most pressing problems. We congratulate the inventors behind patent 11 million and all of the innovators who helped the country reach this milestone,” described Drew Hirschfield, who is currently performing the duties of USPTO Director.

The patent comes at a time when the USPTO has been among the leaders spurring innovation to help combat the ongoing pandemic caused by SARS-CoV-2. The USPTO has made adjustments to facilitate remote work to ensure functionality throughout the pandemic and enacted additional procedures benefiting applications covering inventions that combat virus.

Maier & Maier is proud to be a part of the ongoing innovation efforts in the U.S. and assisting our clients protecting their hard work. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

As part of January 15, 2021, the USPTO will discontinue the First Action Interview Pilot Program that’s been in place for the past twelve years. The program allows practitioners to conduct an interview with the examiner prior to the first office action. This interview is held after the examiner’s preliminary prior art search and allows the practitioner to submit amendments prior to the first action response to the prior art and discussion.

As the USPTO explains;

Under the Full First Action Interview Pilot Program, an applicant is entitled to a first action interview, upon request, prior to the first Office action on the merits. The examiner will conduct a prior art search and provide applicant with a condensed pre-interview communication citing relevant prior art and identifying proposed rejections or objections. Within 30 days of receipt, applicant schedules an interview and submits proposed amendments and/or arguments. At the interview, the relevant prior art, proposed rejections, amendments and arguments will be discussed. If agreement is not reached, the applicant will receive a first action interview Office action that includes an interview summary that constitutes a first Office action on the merits under 35 USC 132.

In their announcement, the USPTO cited the low (0.2%) usage rate as the primary reason for the termination. This low usage stands in stark contrast to the rising rate of interview usage overall, with the peak coming this past October at 38.1%.

This increased interview use is with good cause, as Maier & Maier’s practitioners have had significant success using interviews to get favorable outcomes for our clients. The firm’s office is located just blocks away from the USPTO Headquarters in Alexandria, Virginia, providing easy access to in-person interviews.

If you have any questions about interviews or would like to take advantage of this program before it ends on January 15, 2021, please contact us here.

As part of the U.S. Federal Government’s response to Covid-19, the USPTO announced programs to prioritize Covid-19 related patent and trademark applications this past May and June respectively. Since this summer, applicants were permitted to apply for special status without the normal payment requirements for special status.

Thus far, the USPTO has ushered in nearly 400 such applications with 251 patent requests and 133 trademark petitions granted. Of the patent applications, most target medical treatments, vaccines, and diagnostic technology. The remaining make claims on ventilators, personal protective equipment (PPE), and other similar technology.  The program has resulted in 33 granted patents already related to combatting Covid-19.

“Our staff is working very hard to move COVID-19 related patent and trademark requests, ensuring the intellectual property system is fully responsive to this national emergency,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Over the past two centuries, solutions to some of the nation’s greatest problems have passed through the halls of the USPTO, and it’s very likely that some of the solutions to America’s current pandemic have already been examined by this agency.”

The success of these programs reflects the monumental efforts made by the USPTO in its Covid-19 response, as we’ve covered throughout.

Maier & Maier has embraced these programs to assist our clients and help combat the ongoing virus. If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

This Thanksgiving, Maier & Maier’s Steve Kunin noted the strength of USPTO leadership as Director Iancu deftly handled the ongoing pandemic to keep the office productive and effective.

“We should continue to be grateful for Director Andrei Iancu’s leadership and stewardship of the USPTO during these trying times caused by the adverse impacts of COVID-19. With his strong leadership, the USPTO has continued to provide vital services to the patent and trademark user communities.”

Kunin specifically noted the Iancu’s adjustments at the USPTO and responses to pandemic challenges as covered here.

“His outreach efforts have been well received and the USPTO has been open-minded and responsive to public feedback on how it can make continuous quality improvements to its services and products.”

As Kunin notes, this leadership would have been lost if not for the dedication of the USPTO employees as a whole who were forced to adjust to extensive telework like many other industries.

“Kudos as well to all the USPTO employees who have had to adapt to more extensive telework while striving to maintain continuity of operations.”

For more thoughts on the year in IP and appreciation from other experts and practitioners, see the full piece here.

There are currently multiple significant IP cases pending at the Supreme Court, including both the Oracle case and the Arthrex cases, and a number of petitions denied cert. Here are the latest case updates on IP at the Supreme Court:

Google v. Oracle

On October 7^th, the Supreme Court heard oral arguments for the Google v. Oracle case on appeal from the Federal Circuit. The case centers around the Android operating system designed by Google in their first foray into the smartphone arena. In the coding, Google used 11,000 lines of the Java SE platform coding for common interface commands. Oracle, the current owner of the Java SE platform, filed suit on the basis that the use of the lines constituted infringement. While a jury found them to be “fair use”, the Federal Circuit disagreed, reversing the decision, and leading to the current appeal at the Supreme Court.

Accordingly, the questions before the Supreme Court now are:

(1) Whether copyright protection extends to a software interface; and

(2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

The decision could be the most significant copyright decision in at least a decade and will be important to developers and practitioners alike to watch moving forward.

Arthrex

Earlier this month, the Supreme Court denied certiorari to a number of cases. Notably this does not include the Arthrex cases challenging the constitutionality of the USPTO’s Patent Trial & Appeal Board.

On October 14,, 2020, as predicted by Maier & Maier’s own, Steve Kunin, the Supreme Court granted cert in three related Arthex cases: (1) United States v. Arthrex, Inc. (19-1434), (2) Smith & Nephew, Inc. v. Arthrex, Inc. (19-1452), and (3) Arthrex, Inc. v. Smith & Nephew, Inc. (19-1458).

The case rests on the question of whether the Administrative Patent Judges (“APJ’s”) are principal officers or inferior officiers, and accordingly, whether their appointment is constitutional. Specifically, the Supreme Court has identified the following two questions for review:

(1) Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.

(2) Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

Briefing and oral arguments, as well as likely amicus briefs will likely follow before these questions are resolved, and may be one of the first cases heard by any replacement for the late Ruth Bader Ginsburg on the Court.

Cert Denied

Unlike the pending Oracle and Arthrex decisions, the following cases have been denied certiorari by the Supreme Court and will not be heard on appeal:

• • • BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381 (Appealing IPR Termination)
    • TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269 (Right to a Jury Trial for Specific Performance of FRAND license)
    • Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147 (Divided Infringement and 271(g))
    • The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32 (Patent Eligibility)
    • Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351 (Sua Sponte Judicial Order Due Process)
    • Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844 (Exclusion of Patent Attorneys by USPTO)
    • SRAM, LLC v. FOX Factory, Inc., No. 20-158 (Secondary Indicia for Obviousness nexus)
    • Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204 (Application of IPR decisions retroactively to related pending applications)
    • Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68 (Licensing Patents under Federal & State law)

As Artificial Intelligence (“AI”) continues to transform industries across both the U.S. and the globe, the United States Patent and Trademark Office has been handling the issues at a much higher rate. In response to the developing field, the USPTO released a report on AI and the related Intellectual Property issues.

“The USPTO has long been committed to ensuring our nation maintains its leadership in all areas of innovation, especially in emerging technologies such as artificial intelligence,” highlighted Andrei Iancu. Director of the USPTO. In preparing the report, the USPTO sought input from and received comments from over 200 comments from bar associations, trade associations, law firms, academic authorities, industry practitioners in electronics, software, automobiles, medical and pharmaceutical industries, and foreign patent offices.

Overall, the report indicates that there is a high degree of confidence in the USPTO to handle many of the issues relating to patent, trademark, and copyright issues relating to AI. The report also emphasized the importance of maintaining a close eye for the developments in this industry to ensure the U.S. maintains its status as a global leader in this critical technology.

With multiple IP issues percolating in the lower courts, there will likely be many federal issues decided in the coming years. With the passing of Justice Ginsberg, Amy Coney Barrett stands as the nominee to inherit those votes and a staunch textualist. Here are the some of the most recent Barrett decisions on intellectual property matters.

J.S.T. Corp. v. Foxconn Interconnect Technology (Trade Secrets)

This 7^th Circuit appeal came earlier this year focusing on a trade secret misappropriation and jurisdiction to bring the claims. A customer to J.S.T. provided one of their proprietary adapter designs to J.S.T.’s competitor, Foxconn, attempting to have them manufacture them instead of J.S.T. J.S.T. filed suit in Illinois for misappropriation and unjust enrichment, but Foxconn moved to dismiss for lack of personal jurisdiction.

They argued that because Foxconn and the other defendants had no headquarters in Illinois and neither manufactured nor sold the adapters in Illinois, there could be no personal jurisdiction. Foxconn and the other defendants sold the adapters in Texas or China, which were bought to be used in automobiles which were then sold nationwide. J.S.T. argued that this downstream commerce in Illinois was sufficient to establish personal jurisdiction in trade secret cases, but the District Court disagreed.

On appeal, Judge Barrett authored the opinion, affirming the lower court. As Barrett explained “[f]or the point of consumer sale to be as relevant to this litigation as it is to products liability suits, there must also be a connection here between downstream consumer sales and J.S.T.’s underlying claims.” This differs from both product liability and trademark claims, which can satisfy jurisdiction requirements at the consumer level. For trade secrets, the claim bases of “acquisition, disclosure, and use of a secret are all actions that can be completed long before an offending product ever comes into contact with a consumer.” Accordingly, looking to the text of the trade secret claim language, Judge Barrett saw no basis for personal jurisdiction, and her peers agreed.

Ariel Investments, LLC v. Ariel Capital Advisors LLC (Trademark)

In 2018, the 7^th Circuit heard a trademark dispute between the Florida-based Ariel Capital Advisors (ACA) and the Chicago-based Ariel Investments, LLC (AI). AI was founded in 1983, while ACA was formed in 2014, with each advising and managing financial investments. AI brought suit in 2018 for trademark infringement and sought an injunction requiring a name change by ACA in the District of Chicago. The court obliged with a court order, and ACA complied by changing their name to Bray Capital Advisors, but challenged the ruling on appeal.

ACA appealed on the basis that the court had no jurisdiction to decide the case, explaining that they had no office, no clients, no property, and no staff in Chicago, nor has any employee even visit Illinois at all. AI responded that for intellectual property cases, the defendant essentially “reached into the holder’s home forum to take its property” and availed itself to jurisdiction. The appellate court disagreed.

As Barrett explains in authoring the decision, “Perhaps the Lanham Act ought to authorize nationwide service, as the antitrust and securities laws do…[b]ut it does not, so personal jurisdiction depends on state law.” On that basis, AI failed to show specific jurisdiction or the requisite minimum contacts. As Barrett quotes from the Supreme Court decision in 2014, Walden v. Fiore, “the plaintiff cannot be the only link between the defendant and the forum. Rather, it is the defendant’s conduct that must form the necessary connection with the forum State that is the basis for its jurisdiction over him”. Accordingly, she explains “No matter how one might characterize the relation between Ariel Investments and Ariel Capital, it is easy to describe the relation between Illinois and Ariel Capital: none. That resolves this litigation.”

Sullivan v. Flora Inc. (Copyright)

In 2019, Barrett joined the majority decision siding the 7^th Circuit with the 1^st, 9^th, 11^th, and D.C. circuits in an ongoing split. In the case, the decision resolved the definition of “one work” and whether a compilation qualifies or is a set of different works. Amy Sullivan, a graphic design artist, produced 33 illustrations for Joseph Silver as part of his freelance product specialist work. The illustrations were for a project Silver was working on for Flora, Inc. Without Flora’s knowledge, Silver had used Sullivan for the project, and obtained excusive rights to the illustrations for two specific ad campaigns. Instead, Flora used the illustrations in the two campaigns, as well as a number of others.

Sullivan then registered 17 of the illustrations under one copyright and 16 under another, and filed suit against Flora, Inc. in the Western District of Wisconsin. Sullivan argued that each of the 33 illustrations was a part of “one work” and that she should be awarded statutory damages on each of the 33 counts. Conversely, Flora, Inc. argued that the statutory damages could only be awarded for each collective or group works, a mere 2 counts of infringement.

The district court found for Sullivan and awarded all 33 counts of statutory damages, but on appeal, the 7^th Circuit reversed, with Barret joining the majority. As the decision explains, controlling weight should be afforded to the text of Section 504(c), providing that “all the parts of a compilation or derivative work constitute one work”, and to the artists decision to bundle the works or to issue them separately.

Unsurprisingly, Barrett’s minimal IP record shows a consistency with her larger approach to judicial analysis, with an emphasis on the statutory language and adherence thereto. Should she pass the senate, she would bolster an already statutorily inclined bench, providing IP owners with greater predictability on their rights moving forward.