Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 5

Introduction

This article is the fifth in a five-part series. Each of these articles relates to the state of machine-learning patentability in the United States during 2019. Each of these articles describe one case in which the PTAB reversed an Examiner’s Section-101 rejection of a machine-learning-based patent application’s claims. The first article of this series described the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), which was issued on January 7, 2019. The 2019 PEG changed the analysis provided by Examiners in rejecting patents under Section 101[1] of the patent laws, and by the PTAB in reviewing appeals from these Examiner rejections. This article describes another case where the PTAB applied the 2019 PEG to a machine-learning-based patent and concluded that the Examiner was wrong. Continue Reading

Congress Gives Patent and Trademark Office Temporary Authorization to Move Deadlines in Light of COVID-19 Pandemic

On March 27, 2020, President Trump signed the Coronavirus Aid, Relief, and Economic Security (CARES) Act into law.  The CARES Act is a $2 trillion economic stimulus and rescue package designed to mitigate the economic impact of the COVID-19 global pandemic caused by the novel coronavirus, which has resulted in a level of societal and economic disruption that is unprecedented in living memory.  Included in the bill is a temporary authorization to the Director of the United States Patent and Trademark Office (USPTO) during the pandemic to toll, waive, adjust, or modify any timing deadline under the patent or trademark laws.  While the USPTO Director has not pointed to any specific change that will be made under the new authorization, it is possible that at least some timing deadlines will be modified to accommodate hardships faced by stakeholders during this crisis. Continue Reading

Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 4

PART 4:  INTELLECTUAL PROPERTY LEGISLATION TO WATCH IN 2020

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020.  In the first three parts of the series, we looked at the IP issues currently pending before the Supreme Court, possible changes to the law of patent eligibility, and hot topics surrounding inter partes review proceedings.  In this last part of our series, we look at proposed legislation related to intellectual property issues.  In particular, we consider:

  • The “Inventor Rights Act,” which would establish protections for “inventor-owned patents,” including a prohibition on USPTO reexamination of such patents without the patentee’s consent;
  • The Copyright Alternative in Small-Claims Enforcement (“CASE”) Act of 2019, which would establish a small claims tribunal within the Copyright Office to address copyright disputes involving less than $30,000 in damages;
  • The Counterfeit Goods Seizure Act of 2019, which would authorize the U.S. Customs and Border Protection Agency to seize counterfeit articles that infringe a design patent; and
  • The Trademark Modernization (“TM”) Act of 2020, which would establish new ex parte procedures in the USPTO to expunge trademarks obtained based on false claims that the marks were used in commerce.

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COVID-19 and Trade Secrets: Is Your Business Prepared to Protect its Trade Secrets While Your Employees Work From Home?

In response to the COVID-19 outbreak, many businesses (particularly those in states or cities under “stay home” orders) have implemented a work-from-home (“WFH”) directive for employees.  It is important for businesses to address the security of their trade secrets in this new environment in order to reduce the risk of misappropriation.  It is also important to reduce the risk that the trade secret status of information will be lost based on a failure to take reasonable steps to protect its secrecy.  This article addresses some steps your business can consider taking to protect trade secrets accessible by employees who are now working at home.  Even if your business had a WFH policy before the COVID-19 outbreak, it should be re-visited in light of the current circumstances flowing from a pandemic during which all or most of your workforce may be operating on a WFH basis.  For example, what was once a “no trade secrets may be taken home” policy may be impossible in the current climate. Continue Reading

Limited Relief for Patent and Trademark Applicants Affected by COVID-19

The U.S. Patent and Trademark Office (USPTO) is offering limited relief to patent and trademark applicants affected by coronavirus disease (COVID-19) by waiving the fee for filing a petition to revive an abandoned patent or trademark application.  Under an official notice issued by the USPTO, the office is considering the effects of the coronavirus to be “an extraordinary situation” justifying the waiver of fees.  Deadlines and other requirements set by statute remain in force, but the USPTO is lowering the financial costs for reviving a patent or trademark application that went abandoned when a deadline was missed.  Additionally, the USPTO is waiving the requirement for an original handwritten signature in the few instances where the office requires one. Continue Reading

Federal Circuit Makes It More Difficult for Accused Infringers to File Declaratory Judgment Actions

In its March 13, 2020 decision in Communications Test Design, Inc. v. Contec, LLC, the Federal Circuit highlighted the obstacles that an accused infringer faces in filing a declaratory judgment action.  In particular, the Federal Circuit held that district courts may refuse to hear declaratory judgment actions filed while licensing negotiations are ongoing.  The court reasoned that dismissing such cases is consistent with the policy of promoting “extrajudicial dispute resolution.”  Ironically, however, the decision in Communications Test Design is likely to have the opposite effect—discouraging alleged infringers from entering into negotiations for fear of losing the ability to file a declaratory judgment action. The decision is also likely to place more control of both the negotiations and litigation in the hands of the patent owner. Continue Reading

Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 4

Introduction

This article is the fourth in a five-part series. Each of these articles relates to the state of machine-learning patentability in the United States during 2019. Each of these articles describe one case in which the PTAB reversed an Examiner’s Section-101 rejection of a machine-learning-based patent application’s claims. The first article of this series described the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), which was issued on January 7, 2019. The 2019 PEG changed the analysis provided by Examiners in rejecting patents under Section 101[1] of the patent laws, and by the PTAB in reviewing appeals from these Examiner rejections. The previous article of this series described methods for overcoming 101 rejections where the PTAB has found that an abstract idea is “recited.” This article describes another case where the PTAB applied the 2019 PEG to a machine-learning-based patent and concluded that the Examiner was wrong. Continue Reading

Open Source-ish! What Defines Open Source and Why it Really Matters in Investments and Acquisitions

The number of different open source licenses is growing and the variation in their terms and complexity is increasing. A number of licenses that appear to be, or are commonly referred to as “open source” do not actually meet the Open Source Initiative (OSI) definition of “open source.” Thus, they do not appear on the OSI list of approved open source licenses. We like to say that these licenses are open source-ish! The lack of standard definition of “open source” can lead to potential legal issues and business problems, particularly in connection with investments or acquisitions in companies that use software covered by such licenses. This is relevant to both companies that use open source software (OSS) and potential investors in or acquirors of those companies. Continue Reading

Intellectual Property Outlook: Cases and Trends to Follow in 2020 — PART 3

PART 3: HOT TOPICS RELATED TO INTER PARTES REVIEW

In this four-part series, we take a look forward at the cases, legislation, and other trends that are likely to have a significant impact on intellectual property law and practice in 2020.  In the first two parts of the series, we looked at the IP issues currently pending before the Supreme Court and possible changes to the law of patent eligibility.

In this third part of the series, we look at several issues related to inter partes review proceedings that we expect to be hot topics in 2020, including:

  • Whether the appointment of Administrative Patent Judges on the Patent Trial and Appeal Board (the “PTAB”) violates the Appointments Clause of the Constitution;
  • Whether the PTAB will allow a greater number of claim amendments under the Pilot Program announced in March 2019;
  • Whether the deadline to file an IPR petition should continue to run when an infringement case is dismissed without prejudice;
  • Whether invalidation of patent claims in an IPR should retroactively annul district court decisions on infringement and validity; and
  • Whether the PTAB will be able to coherently apply the new standard for identifying real-parties-in-interest.

Continue Reading

Machine Learning Patentability in 2019: 5 Cases Analyzed and Lessons Learned Part 3

Introduction

This article is the third in a five-part series. Each of these articles relates to the state of machine-learning patentability in the United States during 2019. Each of these articles describe one case in which the PTAB reversed an Examiner’s Section 101 rejection of a machine-learning-based patent application’s claims. The first article of this series described the USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), which was issued on January 7, 2019. The 2019 PEG changed the analysis provided by Examiners in rejecting patents under Section 101[1] of the patent laws, and by the PTAB in reviewing appeals from theses Examiner rejections. The second article of this series includes methods for overcoming rejections based on the “mental processes” category of abstract ideas, on an application for a “probabilistic programming compiler” that performs the seemingly 101-vulnerable function of “generat[ing] data-parallel inference code.” This article describes another case where the PTAB applied the 2019 PEG to a machine-learning-based patent and concluded that the Examiner was wrong. Continue Reading

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