As an update to my previous posts from 2017, 2019, 2020, March 2021, August 2021, and 2022, it has now been almost nine years since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased over 74 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.). Further, it has been 12 years since famed venture capitalist Marc Andreessen wrote the influential and often-quoted op-ed piece in the Wall Street Journal titled “Why Software Is Eating the World.” Today, the digital transformation where software is “eating the world” is undeniable. Artificial Intelligence (AI), the Metaverse, Web3, cloud, gene editing, autonomous driving, quantum computing, and “green tech” dominate the technology news headlines and technology trend forecasts – all heavily reliant on software-related innovation – [Forbes] [Gartner] [World Economic Forum], but we are still without concrete guidelines for software-related patenting.
Yesterday’s oral argument in Amgen v. Sanofi was long-awaited and closely watched by many in the patent community. The Justices seemed skeptical that the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision was a significant departure from existing law, and they repeatedly questioned whether this particular case can be resolved on the facts and by employing current legal tests. During oral argument, Sanofi’s counsel, Paul Clement, admitted that the Court’s affirmance of the CAFC decision could result in the inability to functionally claim a genus in this particular area of antibody science, but said that’s ok because “functional genus claims are terrible. I think they retard the science.”
U.S. companies and inventors still filed more patent applications with the European Patent Office (EPO) than any other country, according to its Patent Index 2022, which was released today. The index showed that U.S. patent applications numbered 48,088, a 2.9% increase from 2021. However, China’s filings jumped by 15.1% over 2021, keeping it in fourth place out of the top five countries of origin for applications and narrowing the gap between it and Japan, the number three filer.
The patent community often treats the Director of the United States Patent and Trademark Office (USPTO) as the person responsible for setting and changing an administration’s patent policy. On this episode of the Clause 8 podcast, former USPTO Commissioner for Patents, Robert Stoll, says that’s a mistake. “The autonomy of the Director is not what people think it is on the outside who are not familiar with it,” he emphasizes. “It’s not your own voice. Any Director of the PTO has to work in their administration and carry forward what becomes the policy of the President. So, they’re not free hands with respect to implementing their ideas, and you just have to recognize that.”
Litigation finance trends, Supreme Court decisions on patent enablement and copyright fair use, the launch of the Unified Patent Court, more cases dealing with the intersection of IP law and AI— and continued uncertainty. These are some of the key issues to watch in 2023, according to the readers below. As we do each December, IPWatchdog asked its IP community what they will be paying attention to as we enter the new year; hopefully their responses will help prepare you for what’s ahead.
On Friday, February 3, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an order in the ongoing Director Review of OpenSky v. VLSI, restoring OpenSky as a party to the inter partes review (IPR) and awarding reasonable attorney fees to VLSI as sanctions against OpenSky. Vidal had dismissed OpenSky from the proceedings in December after first merely relegating OpenSky to be a “silent understudy” to the proceedings. In Friday’s order, following briefing from OpenSky and VLSI on her order to show cause as to why OpenSky shouldn’t have to pay compensatory damages to VLSI, Vidal held that VLSI was entitled to attorney fees for the time it spent addressing OpenSky’s abusive behavior, “including the Director Review process in its entirety.”
Venable LLP’s Patent Prosecution and Counseling group seeks a patent agent with a background in mechanical or aerospace engineering to join the group in the Washington, D.C., New York, NY, Chicago, IL, Los Angeles, CA, or San Francisco, CA office. This is a full-time, permanent position. The ideal candidate holds undergraduate and/or graduate degrees in mechanical engineering, aerospace engineering, electrical engineering or computer science. Strong preference for previous experience as a patent examiner and for PTO registration. Industry experience is a plus. The qualified candidate has one to three years of patent prosecution experience at USPTO or in a law firm setting. Candidates must have excellent academic credentials, strong writing skills, and sharp analytical ability.
The U.S. Supreme Court heard three separate arguments today in Amgen v. Sanofi, a case that even Sanofi’s counsel agreed could effectively wipe out patents involving genus claims if the Court sides with Sanofi, or—as counsel for Sanofi and the Solicitor General’s Office suggested the Court could do—if it were to dismiss the case as improvidently granted.
Last week, cyber threat intelligence firm Centripetal Networks filed a petition with the U.S. Court of Appeals for the Federal Circuit seeking mandamus relief from the Patent Trial and Appeal Board’s (PTAB) “extraordinary departure from basic elements of due process” during inter partes review (IPR) proceedings challenging Centripetal’s patent claims. If left unremedied, Centripetal argues to the Federal Circuit that its own treatment at the hands of the PTAB “sen[ds] a message to the entire patent bar: Any attempt to hold APJs to standards comparable to those of Article III judges [will] be met with sanctions.”
This week in Washington IP news, the House Subcommittee on Economic Growth, Tax, and Capital Access examines how well creditors are able to identify small businesses that are eligible for additional capital. Elsewhere, the United States Patent and Trademark Office (USPTO) hosts the third event of the 2023 Women’s Entrepreneurship Symposium. Also, the Information Technology and Innovation Foundation (ITIF) discusses the future of manufacturing innovation in Germany and the United States.
January 17 marks the first day in the tenure of the U.S. Patent and Trademark Office’s (USPTO’s) new Commissioner for Patents, Vaishali Udupa. Udupa, whose appointment was announced in December, comes to the USPTO after serving the last seven years as the head of litigation for Hewlett Packard Enterprise, where she was responsible for heading HPE’s intellectual property litigation and formulating case strategies. She replaces Acting Commissioner for Patents Andrew Faile, who served in that role since January 2021 and who will be retiring from the agency after 33 years upon Udupa’s installation as commissioner. Well-known within the patent community as an advocate for diversity and representation issues, Udupa joins the USPTO as a relative outsider. She comes in as the first full Commissioner for Patents since the retirement of Drew Hirshfeld, who served with the agency for two decades before he was first appointed to Commissioner in 2015. Those familiar with recent Patent Office history will recall that Commissioners immediately preceding Hirshfeld included Bob Stoll, Peggy Focarino, John Doll and Nick Godici. Stoll, Focarino, Doll and Godici each served in various capacities at the Office, including in high-level policy and regulatory positions, for more than a generation prior to becoming Commissioner.
Following a Motion for Recusal and Vacatur filed on December 30 by Centripetal Networks, Inc., a Patent Trial and Appeal Board (PTAB) judge has now withdrawn from an inter partes review (IPR) proceeding in a stated effort to “reduce the number of issues and simplify the briefing.” Centripetal filed the December 30 Motion in an IPR brought against it in November 2021 by Palo Alto Networks, which Cisco Systems, Inc. successfully petitioned to join. The Motion argued that Administrative Patent Judge (APJ) Brian McNamara created at least the appearance of actual bias in failing to provide “notice, divestiture, or any apparent attempt to recuse” himself from proceedings involving Cisco despite owning Cisco stock and being “paid a significant amount of money (apparently a share of the profits) from one of Cisco’s lobbyist law firms,” according to the Motion.
Anyone who’s read “The Secret” knows that the way to manifest your dreams is to visualize them, and then put them out into the world, as if they are already reality—so we at IPWatchdog want to help facilitate this process once again with our IP Wishes roundup, where practitioners and other IP stakeholders throw all likelihood out the window and tell us what their craziest dreams for the perfect IP world are. Happy dreaming, and HAPPY NEW YEAR!!
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