Guidance on the impact of SAS on AIA trial proceedings

The PTAB will host a “Chat with the Chief” webinar on Monday, April 30, 2018, from noon to 1 p.m. ET to discuss the SAS decision, its impacts on AIA trial proceedings, and answer questions.
Guidance on the impact of SAS issued April 26, 2018
https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial

New Trials. As required by the decision, the PTAB will institute as to all claims or none. At this time, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.
Pending Trials. For pending trials in which a panel has instituted trial on all of the challenges raised in the petition, the panel will continue with the proceeding in the normal course. By contrast, for pending trials in which a panel has instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.
Order Supplementing an Institution Decision. Upon receipt of an order supplementing the institution decision, the Petitioner and Patent Owner shall meet and confer to discuss the need for additional briefing and/or any other adjustments to the schedule. While the Board may act sua sponte in some cases, additional briefing and schedule adjustments might not be ordered if not requested by the parties. Additionally, the parties may agree to affirmatively waive additional briefing or schedule changes. After meeting and conferring, the parties then shall contact the Board to discuss any requested additional briefing and/or schedule changes. It is expected that the parties will work cooperatively amongst themselves to resolve disputes and propose reasonable modifications to the schedule. Any remaining disputes shall be raised in a conference call with the Board. For details, the parties are commended to the order supplementing the institution decision entered in their particular case, and shall follow the instructions provided by the Board in such order.
Final Written Decision. The final written decision will address, to the extent claims are still pending at the time of decision, all patent claims challenged by the petitioner and all new claims added through the amendment process.

The SAS Institute Decision.
SAS INSTITUTE INC. v. IANCU, DIRECTOR, UNITED STATES PATENT AND TRADEMARK OFFICE, ET AL.  16-969. April 24, 2018.
https://www.supremecourt.gov/opinions/17pdf/16-969_f2qg.pdf
Holding:
"When the Patent Office institutes an inter partes review, it mustdecide the patentability of all of the claims the petitioner has challenged. The plain text of §318(a) resolves this case. Its directive is both mandatory and comprehensive. The word "shall" generally imposes a nondiscretionary duty, and the word "any" ordinarily implies every member of a group. Thus, §318(a) means that the Board must address every claim the petitioner has challenged. The Director’s "partial institution" power appears nowhere in the statutory text. And both text and context strongly counsel against inferring such a power."

The USPTO wants your comments about patent "claim elements"

Since the Berkheimer decision ( CAFC, 2017-1437, February 8, 2018), there has been a lot of discussion about claim elements. The comment period is open until August 20, 2018. The USPTO will receive comments via email addressed to: Eligibilty2018@uspto.gov.

Why this is important.

"The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact. Any fact, such as this one, that is pertinent to the invalidity conclusion must be proven by clear and convincing evidence."

What does this mean to you and how should this affect the MPEP?

Additional information may be found in the Federal Register, dated April 20, 2018, and the letter from Robert W. Bahr, Deputy Commissioner for Patent Policy, dated April 19, 2018.


https://www.gpo.gov/fdsys/pkg/FR-2018-04-20/pdf/2018-08428.pdf


https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF

USPTO Announces Location for Dallas-Fort Worth Regional Satellite Office

The United States Patent and Trademark Office announced they have chosen the Terminal Annex Federal Building for the Dallas-Fort Worth satellite office. For more information read here.

Lawyers and copyright

Copyright seems to be more convulted all the time. This article on Law.com goes through multiple scenarios of possible copyright infringement and how it is seen by the courts.

Lawyers and Copyrights: Copyright in the House
By Mark A. Fischer and Paul Sennott
August 6, 2012
Law.com
Copyright laws apply to lawyers too. Yet sometimes they seem to forget this seemingly obvious fact.
(cont)