In today’s Uniloc v. Hulu decision, the Federal Circuit held that the PTAB is permitted to consider all issues of patentability, including § 101 (and presumably including § 112), when a patent owner proposes new claims in an inter partes review (IPR). While a petitioner can only file an IPR petition based on § 102…
Blog Posts
New Federal Circuit Appeal Claims PTAB Unconstitutional Because Of Fee Funding—But Ignores The Patent Examination Process
by Josh Landau •
In a recently filed brief in the Federal Circuit case New Vision Gaming v. SG Gaming, the appellant argues that the PTAB is unconstitutional because the fees charged for the proceeding create a bias towards institution. Specifically, New Vision Gaming claims that PTAB judges stand to benefit from institution and therefore it’s a violation of…
Counterproductive Patent Incentives
by Josh Landau •
Earlier this year, a pair of economists, Jay Bhattacharya and Mikko Packalen, published a research paper proposing an explanation for why scientific progress appears to have slowed. Their theory? An overemphasis on citation count, h-index, and similar metrics for scientists incentivizes them to pursue safe, late-stage research, not the scientific exploration needed to create the…
New Report Confirms IPR Has Had Significant Positive Impacts On U.S. Industry
by Josh Landau •
A recent report, prepared by economists at the Perryman Group, confirms what has long been stated to be the case—inter partes review (IPR) has positively impacted the U.S. economy. In 2017, on the five-year anniversary of IPR, I calculated an estimate of the legal savings that IPR had generated from 2012 to 2017. I estimated…
Covered Business Method Review and Thryv
by Josh Landau •
On Monday, the Supreme Court granted, vacated, and remanded (GVRed) the Federal Circuit’s decision in Emerson Electric v. SIPCO in light of this year’s Thryv decision. Emerson was challenging the Federal Circuit’s overturning of the USPTO’s determination that the SIPCO patent was eligible for review under the covered business method (CBM) program. With the Court’s…
Meet the Western District of Texas—NPEs Certainly Have
by Josh Landau •
For years, the Eastern District of Texas was the favored stomping ground for patent trolls. Short times from filing to trial, shorter trials, judges with local rules friendly to patent plaintiffs, and a jury pool that tended to be friendly to plaintiffs all contributed to this. It probably didn’t hurt that Eastern District judges were…
GNOME Slays Troll
by Josh Landau •
Last year, Patent Progress reported on a troll targeting the GNOME Foundation, a major open source coordinating entity. Despite Director Iancu’s public statement claiming that trolls are a myth, this troll was very real. In fact, it was one of the Rothschild NPEs, one of a plethora of companies Leigh Rothschild has used in nearly…
Thryv, the PTAB, and the APA
by Josh Landau •
April’s Thryv decision by the Supreme Court clarified the nonappealability of institution decisions in inter partes review (IPR). But by placing an absolute bar on appeal of institution decisions, Thryv effectively insulated the PTO’s choice of institution rules from appeal. That’s not a good situation, and it’s one which the Director should actively seek to…
Open COVID Science Shows Patents Not The Only Incentive
by Josh Landau •
The standard economic justification for patents is that they provide an incentive for inventions that we wouldn’t otherwise have. In exchange for providing a patent owner with compensation for its invention, the inventor describes a new idea to the public and 20 years later, the public can use it. There’s a lot of reasons why…
PTO Patent Licensing Marketplace Shows Potential, But Will Licensors Embrace It?
by Josh Landau •
This month, the PTO announced that it would be opening up an online licensing market, “Patents 4 Partnerships.” The market, which will initially focus on COVID-related patents, is intended to provide a centralized and easily accessible database of U.S. patents and published patent applications that have been voluntarily made available for licensing. There’s a number…