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PTAB Issues Third Decision to Institute Post Grant Review

by Brianna M. Schonenberg and Ted J. Barthel, posted Monday, August 24, 2015

On Aug. 4, 2015, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) issued its third decision to institute Post Grant Review (PGR). Netsirv, LLC and Local Motion MN (collectively, Netsirv) filed a petition for PGR against USP 8,756,166 (assigned to Boxbee, Inc.) on March 17, 2015. No patent litigation is pending between Boxbee and Netsirv. The '166 Patent generally relates to a computerized method for storage container (e.g., the PODS® storage system) tracking and delivery. Netsirv challenged the claims of the '166 Patent under 35 U.S.C. §§ 101, 102 and 103.
PTAB allowed Netsirv to correct the page count of its originally filed petition (82 pages) to meet the allowed page limit of 80 pages. Boxbee responded to the petition by explicitly waiving its right to file a preliminary response.
PTAB held that it is more likely than not that Netsirv will prevail in showing that the '166 Patent claims fail to recite "significantly more" than the abstract idea of "facilitating containerized storage," as required under the Alice Corp. decision.
PTAB found Netsirv's § 102 challenge that the '166 Patent was publicly known before the effective filing date was deficient. The only evidence proffered by Netsirv to establish prior public use was an affidavit by the president and CEO of Local Motion MN, the co-PGR petitioner. Citing to the "rule of reason" analysis of In re Reuter, PTAB ruled testimony from an interested party—alone and with no corroborating evidence—was insufficient to establish prior public use. PTAB also determined Netsirv's § 103 challenge was lacking. PTAB found that the same affidavit from Local Motion MN's CEO was insufficient evidence to fulfill deficiencies in the combination of two asserted prior art patent references.
Takeaways: 1. Self-interested testimony alone is not enough to establish unpatentability in a PGR proceeding. A challenger must present other corroborating evidence. 2. Boxbee's explicit waiver to a preliminary response is interesting. It appears Boxbee's strategy may be not to defend the '166 Patent in the PGR. Boxbee has a pending continuation application that claims priority to the '166 Patent. Boxbee's plan may be to respond to PTAB's PGR ruling by way of claim amendment in the pending continuation application.
For more information, please contact Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in this case and others in this blog.


What is Patent Post Grant Review and Why Use It?

by Brianna M. Schonenberg and Ted J. Barthel, posted Tuesday, July 28, 2015

Post Grant Review (PGR) is a U.S. Patent and Trademark Office (USPTO) proceeding where a third party can challenge a granted America Invents Act (AIA) patent. To be eligible for PGR, a patent must contain a claim with an effective filing date on or after March 16, 2013. A petition for PGR must be filed within nine months of the date of patent grant. Any third party may use PGR to challenge a granted patent's validity. PGR enables a third party to challenge on any ground of patentability—subject matter eligibility (§ 101), novelty (§ 102), obviousness (§ 103) and written description/enablement (§ 112). Unlike litigation, a patent in PGR is not provided a presumption of validity and patent claims are given their broadest reasonable interpretation (instead of the narrower Phillips construction of litigation). After a PGR is instituted, the USPTO must issue a final written decision on the case within one year. Similar to litigation, a PGR can be terminated by the parties through settlement before the USPTO issues a final written decision.
PGR can be used offensively and defensively by a third party. A third party concerned about future infringement charges may use PGR offensively by petitioning for PGR of a granted patent before any charges are made. A third party already charged with infringement may defensively petition for PGR in order to take advantage of PGR's lower evidentiary threshold for patent invalidity (preponderance of the evidence) as opposed to the higher evidentiary threshold of clear and convincing evidence applicable in federal court patent litigation. Note that a third party cannot petition for PGR if it has already challenged the validity of the claims in litigation.
Of course, if the nine-month window for PGR has passed, Inter Partes Review (IPR) or Covered Business Method Patent Review (CBM) are other USPTO mechanisms available for a third-party challenger.
To date, 11 petitions for PGR have been filed—two PGRs settled before the USPTO Patent Trial and Appeal Board (PTAB) issued a decision on institution, one PGR was dismissed because the petitioner mistakenly filed a petition for IPR as a petition for PGR, and two PGRs have been instituted by PTAB.
Because of the limited nine-month window to file a PGR, it is important to stay aware of competitors’ pending patent applications. Recently, the USPTO released a free patent application alert service that allows users to set up customized email alerts to receive notification when a patent application is published which meets criteria set by the user (available at www.uspatentappalerts.com).

For more information, please contact Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, or Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in these cases and others in this blog.


Post Grant Review Trumps Reissue

by Ted J. Barthel and Brianna M. Schonenberg, posted Thursday, July 16, 2015

Patentee Leachman Cattle of Colorado (Leachman) filed a reissue application requesting reissue of USP 8,660,888 on Oct. 16, 2014. Thirty-six days later, American Simmental Association (American Simmental) filed a petition for Post Grant Review (PGR) of the '888 Patent. In a teleconference with the Patent Trial and Appeal Board (PTAB) 20 days after American Simmental filed its petition for PGR, Leachman requested authorization to file a motion to stay the PGR proceeding pending conclusion of the reissue application. Leachman made its request prior to filing a preliminary response to American Simmental’s petition for PGR—indicating Leachman was attempting to avoid the costs of defending the '888 Patent in PGR. However, PTAB held that Leachman was not authorized to file a motion to stay at the time because PTAB had not yet decided whether to institute PGR. PTAB noted Patentee Leachman had made no claim amendments in the reissue proceedings. Thus, PTAB found that it would be premature to consider a motion to stay the PGR proceeding.
Within one week of instituting the PGR, PTAB unilaterally ordered a stay on the reissue proceeding. PTAB reasoned that duplication of efforts and possible inconsistencies between the reissue proceeding and the PGR justified a stay of the reissue. Claim amendment in the reissue would cause inconsistency in claim scope between the reissue and the PGR.
Takeaway: If the '888 Patent is invalidated in PGR, the stayed reissue may benefit Patentee Leachman, as it may offer Leachman the opportunity to play the last hand by later amending claims in the reissue proceeding. Reissue proceedings allow more flexibility for claim amendment compared to the limited ability to amend claims in America Invents Act post-grant proceedings. On the other hand, a PGR-invalidated patent may be Patentee Leachman’s last play. A patent examiner will undoubtedly give weight to PTAB's PGR decision, thereby severely limiting or eliminating Leachman’s attempt at claim amendment. Moreover, invalidation of a patent in PGR triggers patent owner estoppel, which bars a patent owner from obtaining a patent on a claim unless the claim is patentably distinct from the invalidated claims.
In a separate PGR proceeding, PTAB stayed the reissue proceedings of USP 8,725,557 for the same reasons. The '557 Patent is also owned by Leachman and PTAB issued a Decision to Institute PGR based on American Simmental's petition for PGR on June 19, 2015.
For more information, please contact Ted Barthel at (414) 978-5317 or tbarthel@whdlaw.com, or Brianna Schonenberg at (414) 978-5567 or bschonenberg@whdlaw.com, or another member of the Intellectual Property Practice Group. We will be monitoring future PGR developments in these cases and others in this blog.  


PTAB Issues First Two Decisions to Institute Post Grant Review on Same Day

by Brianna M. Schonenberg and Ted J. Barthel, posted Wednesday, June 24, 2015

The America Invents Act (AIA) created the Post Grant Review (PGR) proceeding before the U.S. Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB). PGR is a USPTO proceeding to review the validity of a granted AIA patent on any ground of patentability. To be eligible for PGR, a patent must contain a claim with an effective filing date on or after March 16, 2013. A petition for PGR must be filed within nine months of the date of patent grant. Any third party may use PGR to challenge a granted patent's validity. To date, 10 petitions for PGR have been filed-two PGRs settled before the PTAB issued a decision on institution, and one PGR was dismissed because the petitioner mistakenly filed a petition for Inter Partes Review as a petition for PGR. On June 19, 2015, PTAB issued its first two decisions to institute PGR. Read more...  


EPA Proposes Amendments to NSPS for Grain Elevators

by Phillip R. Bower, posted Tuesday, November 25, 2014

As part of a required Clean Air Act review process, the U.S. Environmental Protection Agency (EPA) recently proposed amendments to the new source performance standards (NSPS) for grain elevators found at 40 C.F.R. Part 60, Subpart DD. EPA is accepting comments on the proposal through Dec. 22, 2014. Read more...


EPA Publishes Two Engine-related Items to Federal Register

by Phillip R. Bower, posted Friday, October 31, 2014

The U.S. Environmental and Protection Agency (EPA) recently published two items in the Federal Register related to engine regulations. The first notice addresses mobile engines and provides some new minimum standards on maintenance, as well as more flexibility for the use of auxiliary emission control devices in emergency vehicles and in nonroad equipment. The second notice addresses a reconsideration of rules related to the use of emergency stationary reciprocal internal combustion engines (RICE) in non-emergency situations. Read more...


More Flexibility for Nonroad Diesel Engine Replacement and Technical Hardship

by Phillip R. Bower, posted Tuesday, June 10, 2014

Under the U.S. Environmental Protection Agency’s (EPA) Tier 4 emission standards rule, nonroad diesel equipment manufacturers are required to install engines that meet current emission standards in their equipment unless an exemption applies. The EPA recently amended the Tier 4 rule to provide for additional flexibility under two of the exemptions – the replacement engine exemption and the technical hardship provisions under the Transition Program for Equipment Manufacturers (TPEM). See 79 Fed. Reg. 7077 (Feb. 6, 2014). Read more...


Outsourcing Review: PCI Data Security Standards for Mobile Payments

by Andrew J. Schlidt, posted Monday, June 18, 2012

The mobile payment industry is exploding and the framework of regulations governing mobile payments is evolving at a similar speed. Gartner, Inc. projects that worldwide mobile payment transaction values will surpass $617 billion and 448 million users by 2016. In recognition of the revolution in mobile payment solutions, on May 16, 2012, the PCI Data Security Standards Council published guidance on best practices for securely accepting payments via mobile devices – “At a Glance: Mobile Payment Acceptance Security.”  
Merchants that accept credit card payments through participating brands such as American Express, Discover, MasterCard, and Visa are required to implement security programs in compliance with the PCI Data Security Standards. All merchants engaged in mobile payment acceptance are well-advised to review this newly released guidance for compliance with PCI Data Security Standards in the context of mobile payments. 
Outsourcing Review provides commentary on legal developments affecting companies engaged in technology outsourcing (ITO) or business process outsourcing (BPO).


Outsourcing Review: 2012 Working Paper on Outsourcing IT to the Cloud

by Andrew J. Schlidt, posted Tuesday, June 12, 2012

Companies continue to move IT operations to the cloud given the efficiencies and convenience offered by cloud environments. While the cloud is often seen as a practical technological and financial solution by CIOs and CFOs, it conversely raises liability concerns for company risk managers, compliance officers, and in-house lawyers. An International Working Group on Data Protection in Telecommunications recently published a Working Paper in April 2012 to help this latter group wrap its arms around the privacy and data protection issues arising from cloud computing. The Working Paper contains guidance on 44 “best practices” that should be of interest to all cloud customers, especially those with operations, customers, or employees located in the European Union.
Outsourcing Review provides commentary on legal developments affecting companies engaged in technology outsourcing (ITO) or business process outsourcing (BPO).


Last Best Chance to Report Foreign Bank Accounts and Comply with FBAR Filing Requirements

by Douglas A. Pessefall, posted Thursday, April 19, 2012

Foreign bank accounts and assets are increasingly common in today’s world. Such accounts may be legally opened and used by persons who live, work, conduct business, own real estate, study or play abroad (not just alleged “tax cheats”). However, law imposes a number of reporting requirements (some new and some old) on persons who have an interest in or authority over such accounts as well as significant criminal and/or civil penalties for noncompliance. The Internal Revenue Service (IRS) continues to make compliance with those reporting requirements a high priority enforcement item and, within the next two years, expects to receive information directly from foreign financial institutions on accounts owned by persons. The information provided by those institutions will be cross-checked with IRS records to determine whether the accounts were properly reported. This article identifies two of those reporting requirements and explains how noncompliance can be corrected. To view the full article, click here.


Outsourcing Review: A Case of “Text Spam” and Vicarious Liability for Vendor Acts

by Andrew J. Schlidt, posted Tuesday, March 13, 2012

Many companies outsource portions of their marketing program to third party marketing firms. With the continued popularity of text messaging, marketing firms often encourage clients to enhance brand awareness through multiple channels of electronic communication, including text messaging.

Keep in mind that the sending of unauthorized, automated commercial text messages likely violates the Telephone Consumer Protection Act. In a recent “text spam” class action case before the U.S. District Court for the Southern District of California (In re Jiffy Lube International Inc., S.D. Cal., No 11-2261, 3/8/12), six named plaintiffs claimed that the defendants violated the Act for sending unauthorized, automated text messages to cell phones. One of the defendants sought dismissal from the case on grounds that its third party marketing firm sent the messages. The court rejected this particular defendant’s argument and ruled that the defendant should not be relieved of liability under the Act “merely because it hired a different firm to send advertisements to its customers.”

This ruling is a reminder that companies may be held vicariously liable for the acts of their outsource providers. Companies are well-advised to address compliance with laws and allocation of liability for non-compliance in their underlying outsourcing agreements.

Outsourcing Review provides commentary on legal developments affecting companies engaged in technology outsourcing (ITO) or business process outsourcing (BPO).


Beware of Unofficial Solicitations Regarding Your Trademarks & Domain Names

by Melinda S. Giftos, posted Wednesday, March 07, 2012

Have you recently received one or more official-looking notices or invoices relating to your trademarks, but were unsure who the notice was actually coming from? Does the notice indicate for a small fee, you can obtain registration or monitoring services? Were you surprised the notices were sent to you directly from the trademark office rather than through your attorney? If you answered yes to these questions, you have probably been the recipient of one or more trademark registry scams. Read more...


U.S. Patent and Trademark Office Launches America Invents Act Online Guide

by Michael J. Cronin, posted Wednesday, September 28, 2011

On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. The AIA makes numerous changes to U.S. Patent Laws. To help with the transition, the U.S. Patent and Trademark Office (USPTO) has created an on-line guide that contains information about the changes the Act will bring. Some of those changes, such as patent fees, went into effect on Monday, September 26, 2011.  Other changes will fall into place over the next twelve to eighteen months. The site also includes a timeline that shows some major highlights in the coming year.  Finally, the USPTO website provides the opportunity to submit comments on the AIA and the agency’s implementation of the law.


President Obama Signs Leahy-Smith America Invents Act

by Michael J. Cronin, posted Friday, September 16, 2011

Earlier today President Obama signed the Leahy-Smith America Invents Act (AIA) into law, just several days after the USPTO issued the eight millionth patent. The AIA represents the most comprehensive change to U.S. Patent Law in more than 50 years. While many provisions do not take immediate effect, the provision mandating a 15% increase in many USPTO fees takes effect on September 26, 2011. If you have an application nearly ready to be filed, a patent maintenance fee due, or an issue fee that can be paid, taking action by September 26, 2011 will avoid the 15% fee increase.


President Obama to Sign AIA

by Michael Cronin, posted Wednesday, September 14, 2011

As reported by Fox news, President Obama will sign the "America Invents Act" Friday with an event in the Washington, DC area. Speaking to reporters on Air Force One, White House Press Secretary Jay Carney said, "The America Invents Act passed with the president's strong leadership after a decade of effort to reform our outdated patent laws. Patent reform is an issue both the White House and Congress have pushed for some time. The America Invents Act, previously known as the Patent Reform Act of 2011, was passed by the House in June with large bipartisan support. The U.S. Senate approved the House version of the bill last week voting 89-9.


It is Almost Time to Block Your Trademark From the .XXX Domain Registry

by Melinda S. Giftos, posted Wednesday, August 24, 2011

This year, the Internet Corporation for Assigned Names and Numbers (ICANN) approved a new .XXX top level domain (TLD) for the online adult entertainment industry. This is great news for the porn industry. However, companies in other industries aren't so excited about the prospect of having to register their trademarks with .XXX domain names, or alternatively, potentially allowing third parties to register their trademarks with the .XXX TLDs and then link the domain to porn sites. But all is not lost, and ICANN has set up a procedure for trademark owners to protect their marks.
The .XXX domains will become available in stages. From September 7, 2011 through October 28, 2011, concurrent "sunset" periods will run whereby owners of registered trademarks both inside and outside the adult entertainment industry may take action to reserve .XXX TLDs corresponding to their registered trademarks. One of the sunset periods, "Sunset B," is specifically geared toward non-adult industry owners of registered trademarks. During this time, trademark owners can reserve their trademark.xxx to prevent others from registering and using the domain name. However, to be eligible, the owner must hold a valid US or foreign trademark registration for the exact mark that it is seeking to block as of September 1, 2011. The owner must also pay a one-time fee, which has not yet been finally determined but is expected to be $200-$300. Once filed,, the blocked .XXX domain name will link to a standard page stating that the domain has been reserved, and the trademark owner will not be listed in WHOIS in connection with the domain and will not actually own the registration.
After the sunset periods end, general availability for all .XXX TLDs will begin on December 6, 2011.
If you have registered trademarks you would like to block from the .XXX TLD, or if you have further questions, please contact Mindi Giftos at (608) 234-6076 or mgiftos@whdlaw.com for more information.


Accountable Care Organizations: Will They Live Up To The Hype?

by Barbara J. Zabawa, posted Tuesday, May 17, 2011

On Thursday, May 11, 2011, I had the pleasure of talking to the Wisconsin Medical Group Management Association about Accountable Care Organizations (ACO). It was truly a pleasure to discuss what I believe to be the future of health care delivery. I answered the question: “Will ACOs live up to the hype?,” in the affirmative. I believe that ACOs offer a sensible way of providing care in light of the forthcoming changes from the Patient Protection and Affordable Care Act, should the U.S. Supreme Court find the Act constitutional.
Regardless of the U.S. Supreme Court’s forthcoming decision, however, I believe the ACO movement is still worth health care stakeholder consideration.
During the presentation I described the current landscape of negotiations between providers and payers, and informed the audience as to how ACOs and other parts of the Affordable Care Act will ease the current tensions and help these stakeholders work toward the common goal of providing patient-centered care. Because insurers will have less flexibility in increasing premiums, insurers will not be as willing to accommodate provider cost increases. Therefore, providers and payers will be forced to find alternative ways to work with one another. I believe an attractive option is through the ACO vehicle.
The ACO holds the promise of delivering appropriate, seamless care to patients. The ACO concept embodies the other, much less-discussed piece to the Affordable Care Act that strives to improve health care quality and efficiency.
I invite you to look at my presentation materials on ACOs. I am certain there will be more blog postings on this topic soon.


In re Helen E.F.: Good Intentions Gone Wrong?

by Barbara J. Zabawa, posted Monday, May 16, 2011

“One way to measure the greatness of our society is to look at how we treat our weakest members, such as our growing population of people afflicted with Alzheimer’s.” That is a quote from a recent Wisconsin Court of Appeals decision that, although well-intended, may ultimately harm patients suffering from Alzheimer’s disease and related dementia disorders. On April 27, 2011, the Wisconsin Court of Appeals issued an opinion concluding that people suffering from dementia and Alzheimer’s disease should not be subject to Chapter 51 commitments because such conditions are not “treatable.”  In re Helen E.F., 2010 AP 2061 (Ct. App. April 27, 2011). In that case, Helen E.F., an 85-year-old woman with Alzheimer’s dementia, was committed to St. Agnes Hospital pursuant to Wis. Stat. ch. 51 because of her disruptive behavior. Id. at ¶ 9. Three days later, a court commissioner conducted a probable cause hearing on the ch. 51 petition. Id. at ¶ 6. The court commissioner concluded that there was insufficient probable cause to proceed. Id. At that point, the ch. 51 proceeding was converted to a Wis. Stat. ch. 55 protective placement action and a 30-day temporary guardianship was issued. Id. Read more...


Western District of Wisconsin holds that the patent marking statute, 35 USC § 292 is constitutional

by Melinda S. Giftos, posted Tuesday, March 15, 2011

In the wake of two recent district court rulings that the patent marking statute, 35 U.S.C. § 292 is unconstitutional, the United States District Court for the Western District of Wisconsin has stepped into the fray to disagree. On March 15, 2011 in an Opinion and Order on defendants' motion to dismiss in Hy Cite Corporation v. Regal Ware, Inc.Case No. 10-cv-168, Hon. William Conley held that the patent marking statute does not violate the "take care" clause of Article II of the United States Constitution. The finding was based in large part on the history of qui tam actions and the fact that the government can in fact intervene if it so chooses. The decision can be read here. The court also applied the Rule 8 pleading standard in determining the sufficiency of plaintiff's allegations in the complaint. This is contrary to many other district courts, who have required plaintiffs to adhere to the heightened standard of Rule 9 in pleading false marking claims.


The Risk of Using Adwords Continues to be Unclear ...

by Christian D. Lavers, posted Tuesday, December 14, 2010

The pending 4th Circuit case Rosetta Stone Ltd. v. Google Inc. continues to create interest and argument about the use of Adwords. Amici briefs filed in the case are highlighting both the variety of trademark law matters raised in the case, as well as several splits in jurisdictions on these issues.  
Last year, the district court granted summary judgment to Google, finding that Google’s sale of trademarks owned by Rosetta Stone as Adwords was not trademark infringement because: (i) Google’s use of these trademarked terms was not likely to confuse internet users, and (ii) under the functionality doctrine, Adwords were an essential function of Google’s product and therefore were protected use. This application of the functionality doctrine was in opposition to the 9th Circuit case Playboy Enter., Inc. v. Netscape Communications Corp., where the 9th Circuit rejected the functionality doctrine when finding that the marks at issue performed a source-identifying function for Playboy, and therefore functional use by Netscape was irrelevant. The Rosetta Stone case also involves nominative fair use issues, similar to the 2nd Circuit case Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, (2d Cir. 2010), where the 2nd Circuit held that a defendant “may lawfully use a plaintiff's trademark where doing so is necessary to describe the plaintiff’s product and does not imply a false affiliation or endorsement by the plaintiff of the defendant.” Finally, the lower court opinion in Rosetta Stone also touched on contributory infringement liability – specifically whether Google’s sale of trademarks owned by one party as Adwords to another party is intentionally inducing trademark infringement.
Over 30 parties have filed amici briefs with the 4th Circuit in Rosetta Stone, and with so many issues that will potentially be addressed, the case may be a seminal case on the intersection of the internet and trademark law. Stay tuned...


The CPSC Launches Into Social Media

by Melinda Giftos, posted Monday, November 22, 2010

Today, the Consumer Product Safety Commission announced its launch into social media:
In keeping with its commitment to protect the lives of children and families, the U.S. Consumer Product Safety Commission is launching “CPSC 2.0,” a comprehensive social networking initiative that will make lifesaving and other safety information more accessible to consumers. Utilizing a variety of technologies and social media sites, CPSC will rapidly expand its reach to millions of consumers.
Through social media, CPSC can directly reach millions of the moms, dads and others who need our safety information the most,” said CPSC Chairman Inez Tenenbaum.
To read the full text of the announcement, click here.