The 2020 IAM Patent 1000 rankings were announced this week, and Maier & Maier was heavily featured among the highest-level experts in the patent field. Both founding partners Timothy and Christopher Maier were honored, along with renowned partner Stephen Kunin.

Per the IAM description honoring the firm, “Christopher Maier and Timothy Maier run a self-titled boutique in Alexandria that is steadily building on its reputation for quality in electrical engineering prosecution, post-grant proceedings and business-complementary counselling. Among their colleagues, Stephen Kunin is often called on to provide expert testimony on patent practice matters, in light of his experience and USPTO insight.”

This recognition comes with the firm’s continued success in both prosecution and litigation, along with any related IP needs its clients may have. The firm successfully earns over a thousand granted patents for its varied and valued clients each year and prides itself on its corporate friendly and streamlined reporting systems. In the past year, the firm has been heavily involved in PTAB matters, both for petitioners and patent owners. The firm successfully defended multiple patents from IPR petitions and challenged competitor patents for their clients.

Timothy Maier and Christopher Maier were all recognized for their success in the national patent law hub of the DC Metro Area, while Stephen Kunin was also listed among the Nationally recognized experts in the field.

The USPTO has been active in responding to the COVID-19 pandemic. They’ve extended deadlines for affected applicants and practitioners multiple times, established multiple pilot programs related to the virus, and taken steps to make sure they can continue operations throughout the pandemic.

Now the USPTO has expanded its adjustments to allow applicants to restore benefit of and right of priority to Prior-Filed Applications. In the notice, the USPTO explains that if the delay was unintentional, applicants may petition for the restoration for their application. The notice grants a two-month extension for the filing and waives the petition fee under § 1.17(m).

This will be available for application claiming the end of a 12-month or 6-month period which fell in a period starting March 27, 2020 and ending after July 30, 2020. This applies to non-provisional utility claiming to both foreign applications (under § 119(a) and § 172) and provisional applications (§ 119(e)), and to foreign applications claiming right of priority.

In order to obtain the extension, as with the other extensions, applicant must demonstrate that the delay was unintentional and due to the COVID-19 outbreak. The USPTO highly encourages the use of this form to establish the COVID-19 connection.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.

The USPTO has published proposed changes to the rules governing proceedings at the PTAB. Comments must be submitted by June 26^th to be considered. A majority of the changes conform the rules with current PTAB practices already adopted, while one specific change would represent a diversion from the norm.

First, the proposal would adopt the Supreme Court’s SAS Institute decision changes to institution at the PTAB. In the decision on whether to institute, the Board would be required to choose between instituting on all or none of the grounds for rejection proposed in the petition. As established by the Supreme Court, this rule would prohibit partial institutions.

Second, the proposed rules would allow sur-replies to principal briefs and a response and reply by the patent owner to decision on institution. This rule echoes changes to the Office Trial Practice Guide from August 2018 and aligns the rules with the current practices by the Board in proceedings.

Finally, the proposed changes would revise 37 C.F.R. 42.108(c) and 42.208(c). Currently, the Board’s determination of whether there are sufficient grounds for institution is described as follows:

The Board‘s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence, but a genuine issue of material fact created by such testimonial evidence will be viewed in the light most favorable to the petitioner solely for purposes of deciding whether to institute an inter partes review.

Under the proposed change, the description would end before granting the presumption in favor of the petitioner. Under the proposal, the rule would instead read:

The Board‘s decision will take into account a patent owner preliminary response where such a response is filed, including any testimonial evidence.

Per the notice, the USPTO believes this rule change will ensure that “any testimonial evidence submitted with a patent owner’s preliminary response will be taken into account as part of the totality of the evidence.” This would shift the burden away from the patent owners and likely lead to a lower institution rate at the PTAB.

The PTAB is hosting a Boardside Chat on Thursday June 11 from 12:00 noon until 1:00 PM where they will discuss the proposals.

If you have any questions or concerns about these changes, how they may affect your filings, or are interested in submitting comments and would like assistance, please feel free to reach out to us here.

The timing considerations that go into filing a petition for inter partes review with the PTAB have become progressively more difficult to navigate as the PTAB exercises increased discretion in rejecting IPRs. This trend started with the precedential NHK decision in which the PTAB rejected an IPR petition on the basis of an upcoming district court trial. Since then, the Federal Circuit has continued to provide the PTAB with increased autonomy by expanding its discretion to institute IPR under 314(a).

Likewise, in the Thryv decision the Supreme Court all but cut off any review of institution by the Federal Circuit, and in the SAS decision, the Supreme Court determined that all PTAB decisions on whether to institute IPR have to be binary, either instituting on all grounds or denying IPR altogether. Following SAS, the PTAB also started to deny institution of IPR where there is a reasonable likelihood that the petitioner will prevail on only a minority of the proposed grounds for unpatentability. For example, in Biofrontera v. DUSA Pharms the PTAB exercised its discretion to deny institution where the petitioner only showed a reasonable likelihood of success on only 1 of 8 grounds.

Since the NHK decision, many patent owners have raised NHK in an attempt to thwart institution of IPR as redundant to invalidity defenses raised in district court proceedings. Approximately 33 patent owner preliminary responses have raised NHK in similar circumstances since December 2018, with 20 of those cases being decided in Jan to May of 2020 alone. Below is a chart detailing the 10 cases where IPR institution has been denied on the basis of an NHI argument, consolidated into a single entry where multiple IPR denials related to the same parallel district court case.

Table 1: IPR denied based on NHK

Decision Date	Case Name*	Materially different prior-art arguments raised in the IPR petition(s)?	Months until district court trial after the IPR institution decision**
12/3/2018	Mylan v. Bylar	No	4
10/16/2019	Next caller v. Trustid	No	9
1/22/2020	Magellan v. Sunoco	No	2
3/10/2020	Bentley v. Jaguar	Yes	7
3/26/2020	Ford v. MIT	No	0 (finished, under appeal)
3/27/2020	Google v. UNILOC	No	5
5/13/2020	Apple v. FINTIV	No	10
5/15/2020	Cisco v. Ramot at Tel Aviv	No	6
5/19/2020	Intel v. VLSI	No	5-7, estimated

 

The most recent of these cases is perhaps one of the most favorable to the patent owner. In a series of decisions captioned Intel v. VLSI, the PTAB relied on NHK to deny review under 314(a) even though the District court has suspended its trial schedule due to Covid-19. Significantly, petitioner Intel filed its IPR petitions fully three months prior to the one-year statutory deadline after service of the district court complaint. Acknowledging these facts, the PTAB focused on the significant investment that had already gone into the parallel district court case, with fact discovery scheduled to end in May. Additionally, the trial date was set for October 2020, with a final written decision from the PTAB likely not to come until May 2021 if IPR were instituted. Even with the district court currently closed due to Covid-19, the PTAB found that it is likely the district court will go to trial before a final decision is reached. In weighing all the factors set forth in NHK, the PTAB ultimately decided that the likelihood of a district court trial in 5 to 7 months warranted denial of review.

The cases identified above are just the first in a series of PTAB developments favoring patent owners. With the ever-evolving landscape of IPR litigation it has become even more important than ever that parties looking to petition for IPR have capable and knowledgeable counsel who are able to navigate the unwritten rules of discretionary denial of IPRs.

Continuing its efforts to keep up with COVID-19, the USPTO has announced a prioritized examination pilot program reserved for applications covering products or processes subject to an applicable FDA approval for COVID-19 use.

Beginning on July 13, 2020, applicants may request prioritized examination for covered applications. The USPTO’s objective for the pilot is to complete examination of applications within 12 months of a granted request. The pilot is currently allowed 500 requests, but may be extended, terminated, or modified depending on workload, resources, feedback, and efficacy.

Requests may only be filed at specific points in the process. First, requests can be filed with a non-continuing original utility or plant provisional application. Second, requests can be filed with an original utility or plant nonprovisional application claiming specific forms of benefit to an earlier filing date. Finally, requests can be filed with requests for continued examination, but only one request for prioritized examination may be made with a given application.

Along with the request, applicant must certify that at least one claim covers a product or process related to COVID-19, certify that the applicant qualifies for either small or micro entity status at the time of the request, and execute an application data sheet meeting the conditions specified under 37 CFR 1.53(f)(3)(i).

Should the request be accepted, applicants should be wary of the following. First, any filing of petition for extension will cause the application to be removed from the special docket. Secondly, the First Action Interview Pilot Program is not available for applications granted prioritized examination.

The USPTO is accepting comments on the pilot program until July 13, 2020 to ensure consideration prior to the pilot.

If you have any questions or concerns about the pilot or how it may apply to your applications, please reach out to us here.

In the past few months, the USPTO has made a number of changes in response to the spread of coronavirus. The focus has been both protecting USPTO employees and lessening the burden on affected practitioners and applicants alike. Now the USPTO has begun an effort aimed at solving the problem itself.

This month, the USPTO launched their new IP Marketplace Platform Pilot Program “Patents 4 Partnerships”. Per the USPTO announcement, the platform is “a centralized and easily accessible database of U.S. patents and published patent applications that are voluntarily made available for licensing.”

During its preliminary stage, the pilot will be focused technology related to the current pandemic. Specifically, Patents 4 Partnerships is currently limited to patents and published applications for the “prevention, diagnosis, and treatment of or protection from the coronavirus disease (COVID-19), including disinfectants, test kits, ventilators, and components thereof”. Listed publications were collected from 3^rd party sources as well as the Official Gazette Notice of Patents and Patent Applications Available for License or Sale.

Additions to the platform may be made by the IP owner through a form on the platform website, while errors can be corrected by reaching out to the USPTO. The USPTO plans to use the next six months to test the platform and determine its future in relation to the Official Gazette Notice of Patents and Patent Applications Available for License or Sale.

The platform is available here while further inquiry about the platform, your portfolio, and any other related matter may be brought to us here.

On March 16, the United States Patent & Trademark Office (“USPTO”) announced that  ‘extraordinary’ circumstances for relief at the USPTO would officially include the effects of COVID-19 “coronavirus”. On March 27, the USPTO announced its further relief response with deadline extensions as authorized by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) executed March 27. The announcement identified certain deadlines that would have come between March 27 and April 30, and provided for a 30 day extension.

On April 28, USPTO Director Andrei Iancu officially announced the extension of those deadlines  and the expansion of the affected deadlines. Under the new announcement, certain deadlines occurring from March 27-May 31 are extended to June 1 with a statement of personal effect, rather than the original 30 days. The statement must describe how the deadlines and payments were delayed as a result of a personal effect of COVID-19 on practitioners, applicants, patent owners, petitioners, third party requesters, inventors, or other individual involved including as examples, office closures, cash flow interruptions, inaccessibility of files/materials, personal or family illness, etc. This extension applies to most responses, filings, and requests as listed in the notice with some reserved only for small and micro-entities. The specific affected deadlines and requirements are laid out in the official patent and trademark CARES notices.

The USPTO has adjusted its operations to ensure that fees and documents will continue to be processed through EFS-Web, USPS, and the Customer Service Window. Per the announcement, USPTO interviews and hearings will be conducted virtually until further notice.

Any questions or concerns regarding your applications or other USPTO matters can be brought to us at info@maierandmaier.com.

The close of the first quarter of 2020 means new patent filings totals from across the U.S., with the PTAB and the District of Delaware leading the way at 333 and 174 filings respectively. However, it was the Western District of Texas (WDTX) that made the biggest leap, continuing its surge since Judge Alan Albright was appointed to the bench in late 2018.

The first quarter of 2020 saw 163 patent filings in the WDTX, projecting to over 600 for the year. This comes after totaling only 257 for the entirety of 2019, which was up from 86 in all of 2018, and only 1 in all of 2017. If the trend continues, not only will WDTX eclipse its own total early in Q2, but the year end numbers are likely to continue to balloon and surpass the District of Delaware’s patent filings.

The rise of the WDTX to join the EDTX as a top venue for patent cases emphasizes the importance of a strong Texas presence for patent litigation firms. Maier & Maier’s Texas office, opened just last year in anticipation of the rise, affords the firm the proximity and expert resources necessary to handle the increased filings in the area.

This bump in filings is the result of Albright’s appointment and the subsequent changes he has made to the local rules for patent cases in the WDTX. These changes include a new filing schedule and streamlined Markmen hearings to attract patent filings. Combined with these appealing local rules, Albright’s tendency against transfers and the WDTX’s uncongested docket make the district highly appealing for patent filings, especially for Non-Practicing Entities.

Overall, both district court patent filings and PTAB filings remained steady in comparison to Q1 of 2019. Balancing out the surge in the WDTX, the District of Delaware is on pace to drop for the first time in over five years (only 696 in 2020 compared to 989 in 2019). Despite the drop, the District of Delaware remains a top venue for filings and there is little chance that ends in the near future.