Archive for September, 2016

 

Slots Filling up in Post-Prosecution Pilot Program

Tuesday, September 20th, 2016

          Slots are quickly filling up in the USPTO’s recently introduced Post Prosecution Pilot (P3) Program. In an effort to encourage “compact” prosecution, and reduce the number of appeals and RCEs filed, the P3 Program offers applicants an opportunity to advance prosecution after final rejection. Under the P3 Program, applicants can present arguments at a conference with a panel of examiners, including the examiner of record. The P3 Program will run until January 12, 2017, or until 1,600 requests have been accepted by the USPTO. The USPTO has allocated 200 slots to each technology center, which are quickly filling. At just over two months into the program, some technology centers have already filled more than half of their slots.

          To participate in the P3 Program, Applicants must complete a request form, a statement that the applicant is willing to participate in a P3 conference, and a response containing no more than five pages of argumentation. Applicants also have the option of filing a proposed non-broadening amendment to one or more claims. Following the conference, applicant will receive a notice of decision indicating one of three outcomes: 1) final rejection upheld, 2) allowable application, or 3) reopen prosecution. There are no fees for participating in the program. Benefits of the P3 program include testing out proposed claim amendments, presenting arguments to multiple examiners, and gaining valuable insight from panel feedback. Applicants who wish to avoid the time and expense of appeal and/or RCE should consider taking advantage of the P3 Program. For more information on the P3 program, visit: http://www.uspto.gov/patent/initiatives/post-prosecution-pilot.

CAFC OPINION DEMONSTRATES RISK ASSOCIATED WITH DEMAND LETTERS

Tuesday, September 13th, 2016

The U.S. Court of Appeals for the Federal Circuit (“CAFC”) recently reversed a lower court’s dismissal of a declaratory judgement action for lack of subject matter jurisdiction in a case where the defendant, Asetek Danmark A/S (“Asetek”), did not actually allege that any particular product made by the plaintiff, Asia Vital Components Co. (“AVC”), infringed its patents. Instead, Asetek mistakenly accused AVC of infringement based on a potentially infringing product (the Liqmax 120s) that AVC does not manufacture. When the U.S. District Court for the Eastern District of Virginia dismissed the case, “[t]he district court held that the ‘complaint does not plead sufficient facts to show that there is a substantial controversy under the totality of the circumstances.’” AVC v. Asetek, No. 2015-1597, slip op., p. 4 (Fed. Cir. Sept. 8, 2016). The district court relied on Asetek’s response that it had “never accused [AVC’s] K7 or K9 products of infringement, and … did not even know that those products existed before AVC’s complaint.” Id.

The CAFC reversed, stating that:

Asetek relies heavily on the fact that it never referenced AVC’s particular products or product line as potentially infringing, and, in fact, did not even know of AVC’s products at the time of the complaint. But we have not required such specific facts to find jurisdiction.

***

The question of jurisdiction does not turn on Asetek’s knowledge of the specific AVC products or whether Asetek specifically alleged that the K7 and K9 products infringed the asserted patents; instead, the question is whether, under all the circumstances, Asetek’s actions “can be reasonably inferred as demonstrating intent to enforce a patent.” Hewlett-Packard, 587 F.3d at 1363. We conclude that Asetek’s conduct demonstrates just that.

Id. at pp. 8-9

Regarding “the circumstances,” the CAFC said:

We agree with AVC that the totality of circumstances indicates that an actual controversy existed between the parties at the time of the declaratory judgment complaint. Although the April 30, 2014 letter incorrectly accused AVC of manufacturing the Liqmax 120s, it was still a demand letter that referenced a product that AVC contends is similar to its own K7 and K9 products. Upon receiving the letter, AVC contacted Asetek, saying that it did not manufacture the Liqmax 120s, and then, in a follow-up email, AVC requested a meeting with Asetek “to discuss the related matter.” J.A. 105. Instead of simply responding that it had made a mistake with respect to the Liqmax 120s, Asetek’s August 2, 2014 email contained a number of statements that indicate that an actual controversy between the parties existed.

Id. at p. 6

It is not uncommon for patent owners to send out demand letters (e.g., cease and desist letters) to potential infringers. The CAFC’s ruling in AVC v. Asetek highlights the risks of doing so. In light of the CAFC’s ruling, patent owners are reminded to take care not to send demand letters to parties that they do not wish to litigate against. They are also reminded to exercise caution when making threatening statements because even an erroneously accused party (like AVC) can bring a declaratory judgement action against a patent owner when the totality of circumstances indicate that an actual controversy between the parties exists.