Posts in IPWatchdog Articles

The U.S. Court of Appeals for the Federal Circuit (CAFC) has reversed a district court decision finding certain claims of two patents covering prenatal DNA testing patent ineligible. The CAFC held that “the claimed methods utilize the natural phenomenon that the inventors discovered by employing physical process steps” and thus were patent-eligible. The patents at issue in the case acknowledge but are not related to the patented invention held invalid in Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1373 (Fed. Cir. 2015). The opinion was authored by Judge Lourie, with Judge Reyna dissenting.

Experts speaking during IPWatchdog’s Virtual Patent Masters Symposium yesterday expressed concern over the state of the U.S. patent system, but also offered a number of solutions, and many took a cautiously optimistic outlook for the future. In one session, Patent Masters Q. Todd Dickinson of Polsinelli, Judge Theodore Essex of Hogan Lovells, Retired Chief Judge Paul Michel, and Robert Stoll of Drinker Biddle discussed the Supreme Court case eBay Inc. v. MercExchange, wherein the former bright line rule of issuing permanent injunctions was replaced by a four-factor test according to familiar rules of equity that apply to all areas of law. While the consensus among the Masters was that eBay has created a multitude of problems, Judge Michel pointed out that eBay has been misinterpreted by the district courts.

Having attained the title of the world’s second-largest economy, along with a constant influx of innovative companies and massive breakthroughs in digital development, China – often referred to by natives as “Zhongguo” – indubitably ranks among the strongest global tech leaders. While China has lately found itself in arduous times dealing with the dangerous COVID-19 virus, the country’s determination for progress surely hasn’t faltered. Such determination can deliver various results in various forms, and, considering China’s increasing size and global power, protecting intellectual property rights is one of those progressive outcomes.

Last week, the U.S. Court of Appeals for the Federal Circuit issued a Rule 36 judgment in a patent eligibility case, Consumer 2.0, Inc. v. Tenant Turner, Inc., No. 19-1846 (Fed. Cir. 2020). The ruling affirmed the findings of the U.S. District Court for the Eastern District of Virginia that the claims of a a patent for a “method employing a combination of hardware and software for secure, automated entry of real property” were invalid for being directed to an abstract idea and, thus, were ineligible for patent protection under 35 U.S.C. § 101. The patented method essentially allows a user to enter a “durational” – rather than static – code on a lockbox in order to view a rental property without a realtor being present.

Retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit Paul Michel told registrants of IPWatchdog’s Virtual Patent Masters program taking place today  that the U.S. patent system has been “weakened to the point of being dysfunctional.” This dysfunction has been especially harmful to small businesses and startups, as well as to innovation in the life sciences industry—which we need now more than ever. Asked by IPWatchdog CEO and Founder Gene Quinn whether the coronavirus pandemic may be a wakeup call to those in power about the importance of incentivizing innovation in the life sciences area, Judge Michel noted that experts in the vaccine industry have indicated that China now dominates vaccine research and production. “The current circumstances may shift the thinking of policy makers quite suddenly and quite far,” Michel said. “We definitely are crimping the human health efforts for prevention and cure of symptoms. Let’s hope this really is a wakeup call for our leaders.”

Net neutrality provides that all ISPs should provide equal access to content, at an equal speed, without discrimination against particular sources, thereby preventing broadband providers from blocking, slowing down or charging money for specific content. Proponents of net neutrality point out the importance of equal access to consumers on the internet for companies creating content and intellectual property on the internet, while opponents view FCC regulations as overreaching and unnecessary. Whether through national legislation, a change in FCC position or state laws and the accompanying lawsuits, the debate regarding net neutrality is not over yet and the year ahead will likely hold many new developments. 

The Federal Circuit on Friday reversed the Patent Trial and Appeal Board’s decision holding certain claims of Personalized Media Communications, LLC’s (PMC’s) U.S. Patent No. 8,191,091 (the ’091 Patent) unpatentable on anticipation and obviousness grounds but affirmed the decision as to the remaining claims. The Court found that the Board erred in its claim construction of one of the claim terms at issue due to its dismissal of the prosecution history. The Board rejected PMC’s reliance on the prosecution history, stating “the prosecution history presents a murky picture as opposed to a clear waiver.” The Federal Circuit disagreed with this approach and found that the prosecution history statements supported PMC’s interpretation and construction of the phrase “encrypted digital information transmission.”

The United States Court of Appeals for the Federal Circuit recently ruled on a Patent Trial and Appeal Board (Board) Covered Business Method (CBM) Decision, affirming the Board’s holding that certain challenged claims of Customedia Technology’s patents are unpatentable as directed to the abstract idea of delivering targeted advertising using a computer. See Customedia Techs., LLC v. Dish Network Corp., 2018-2239, 2020 U.S. App. LEXIS 7005 (Fed. Cir. Mar. 6, 2020) (Before Prost, Chief Judge, Dyk and Moore, Circuit Judges) (Opinion for the Court, Prost, Chief Judge). Customedia argued that providing a reserved and dedicated section of storage, as in the claims, improves the data delivery system’s ability to store advertising data, transfers data at improved speeds, and prevents system inoperability due to insufficient storage. However, the Federal Circuit did not find this sufficient for finding an improvement to the functionality of the computer itself. 

I have often thought of the patent process as being like the car wash near my house – where you pull up to the entrance, to the point where an attendant shouts “neutral!”, and your car is then magically pulled through a defined series of stations until it comes out clean at the other end. The key difference being – the car wash takes five minutes, costs six bucks, and requires no effort. Not so with patents. In a way, the patent system can be seen as a far more rigorous 20-year car wash – beginning from the moment you pull into the patent office by filing your first application, thereby obtaining that all important Filing Date. You are then led along an arduous path of decisions, deadlines, and stages – all with corresponding costs. No matter when and where you might actually obtain a patent along that path, assuming you do at all, you are out the door (i.e., those patents will expire) generally 20 years to the day after you first heard “neutral!”.

This week in Other Barks & Bites: Fears over coronavirus tank stocks on Wall Street and trigger changes at the Federal Circuit, the closure of the Library of Congress and the U.S. Copyright Office, as well as move the location of oral arguments in the Ninth Circuit; INTA has had to reschedule its Annual Meeting for November and combine it with the Association’s Leadership Meeting due to the coronavirus; the Senate IP Subcommittee looks at the applicability of the European Union Copyright Directive for the U.S. copyright regime; the University of Texas files a petition for writ with the Supreme Court arguing that TC Heartland destroys state sovereign immunity; Huawei tops the list of EPO patent applicants for 2019; IBM takes Airbnb to court over e-commerce patents; the Trademark Modernization Act is introduced into Congress to expedite the cancellation of fraudulent trademarks; and the Department of Defense asks the Court of Federal Claims for time to reconsider its cloud computing contract with Microsoft.

Patent applications filed at the European Patent Office (EPO) rose 4% to 181,406 in 2019, driven by substantial increases from Chinese, Korean and U.S. applicants, according to a report published by the Office yesterday. The United States was the number one country of residence of applicants, with 46,201 applications—a rise of 5.5%. This accounted for 25% of all European patent applications. The U.S. was followed by Germany and Japan. Applications from the People’s Republic of China increased by 29.2% to 12,247 putting the country in fourth place, while those from the Republic of Korea grew by 14.1%.

Earlier this week, Chrimar Systems, Inc. filed a petition for certiorari asking the U.S. Supreme Court to take up a case on appeal from the U.S. Court of Appeals for the Federal Circuit. Chrimar is asking the nation’s highest court to answer the question of whether the Federal Circuit may: 1. apply a finality standard for patent cases that conflicts with the standard applied by the Supreme Court and all other circuit courts in non-patent cases, and 2. whether a final judgment of liability and damages that has been affirmed on appeal may be reversed based on the decision of an administrative agency.

Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Hank Johnson (D-GA), Doug Collins (R-GA), Martha Roby (R-AL) and Jerry Nadler (D-NY) yesterday introduced legislation to modernize the U.S. trademark system. The Trademark Modernization Act of 2020 is in part a response to the surge in fraudulent trademark filings, largely originating from China, that both the U.S. Patent and Trademark Office (USPTO) and Congress have been grappling with over the last year. Perhaps most notably, in a stated effort to better protect consumers by minimizing confusion about goods and services, the bill would restore the rebuttable presumption of irreparable harm when a trademark violation has been proven (thus clarifying eBay v. MercExchange).   

Almost a third of the recently signed $8.3 billion bill to fund the United States response to the coronavirus outbreak is devoted directly to vaccine research and development. And while the realities of drug development and FDA approval mean it is unlikely any vaccine will be available before next year, the government has numerous tools at its disposal in seeking to reduce the strain on the nation’s health care system. As many as nine different pharmaceutical companies worldwide are rushing to develop a safe and effective vaccine. Some are using traditional vaccine methods, including testing previously developed vaccines for other viruses. Others are using new technology to address the outbreak. The rush to find and deploy a coronavirus vaccine raises several interesting legal and regulatory issues, including balancing speed with efficacy, understanding ownership, and vaccine costs.

Senate IP Subcommittee Chair, Senator Thom Tillis (R-NC), yesterday led the second in a series of Subcommittee hearings addressing the possibility of updating the U.S. Digital Millennium Copyright Act (DMCA). The hearing, titled “Copyright Law in Foreign Jurisdictions: How are other countries handling digital piracy?”, was aimed at examining foreign copyright laws in order to consider what may or may not be beneficial if adopted by the United States. The first of two panels included four witnesses from academia while the second panel included members of industry and a former member of EU Parliament.