Posts in IPWatchdog Articles

I was just thinking how often someone teaching intellectual property law leads the attack on the patent system when “Racing for academic glory and patents: Lessons from CRISPR” appeared. It sounds a dire warning that “overly broad patents must be reined in” as the passage of the Bayh-Dole Act “invoking patents as a mechanism for promoting commercialization of federally funded research” set off an “often socially wasteful race…for glory in academic research and in the patent sphere.” What’s particularly striking is that neither the paper nor the articles hyping it provide any evidence the CRISPR patents are restricting research or blocking commercial development. Indeed, most signs point in the opposite direction… Doesn’t a finding by NIH that there’s no evidence of any problems with how universities are licensing their CRISPR patents deserve to be mentioned? It seems like a pretty important point.

Ruschke noted that his authority to expand the panels for PTAB trials doesn’t require him to notify the parties in the trial that the decision to expand the panel has been made. In response to questions on panel expansion, Ruschke noted that when the decision to expand the panel has been made, “the parties will find out in the decision when it issues at that point.” So decisions to expand panels are made in secret and parties in the trial only find out about panel expansion after a decision is reached… Interestingly, petitioner General Plastic requested a rehearing with an expanded panel but the expanded panel in that case found that PTAB’s governing statutes do not permit parties to request, or panels to authorize, expanded panels; panel expansion only lies within the Chief Judge’s discretion.

The second (lunch) keynote was from a patent fan: Senator Chris Coons (D-DE). By now, I have heard him speak on several occasions and it is always welcome to be reminded that the patent system has an advocate on the Hill. If only more could be recruited to his point of view. He spoke of the constitutional pedigree of our patent system, how well it has worked to achieve it goals over the years, and how the system has been steadily undermined in recent years. He gave a cogent summary of the Supreme Court harpooning of the patent system: eBay: no injunctive relief; Bilski: software tossed aside; Mayo: diagnostics sidelined; Myriad: discoveries eliminated; Alice: finishing off what Bilski started. Combine this with the AIA, and you have a rout. The only solution going forward is for Congress to address these issues. Waiting for the Courts is too too slow, and potentially fatal to the system as users sign-off, and the initiative in technology lost to others who have maintained and improved protection for the same subject matter.

After oral arguments were held on Monday, November 27, 2017, I again asked a number of industry insiders what thoughts and predictions they now have after having the benefit of hearing the Q&A that took place between the Justices and the attorneys representing the petitioner, respondent and federal government. Their answers follow, and show that there is little agreement among those watching this case with respect to what the likely outcome will be.

If wrongly decided, Oil States Energy Services v. Greene’s Energy Group may be the next Kelo v. City of New London decision. At bottom, the case will decide whether patent rights – which are enshrined in our Constitution – are fundamental private property rights, or something less. If the Court adopts the latter perspective, it would radically change the American view of property rights and endanger an innovation edge enjoyed by American companies and consumers alike… Conservatives must be vigilant about the importance of the Oil States case and understand what is at stake. We do not want to wake up on the morning after this decision and find, just as we did after the Kelo decision, that more of our property rights are slipping away. The Supreme Court must uphold our constitutional patent rights and end the administrative usurpation of this judicial responsibility. Our constitutional principles, and the future of American innovation, depend on it.

I was dismayed recently when I received my invitation from Unified Patents to their conference where the keynote speaker was David Ruschke, Chief Judge for the Patent Trial and Appeal Board. In what world would a Chief Judge be so blinkered that he’d think it a good idea to speak at such a conference? Judge Ruschke surely should have realized that Unified Patents makes money exclusively by arguing in front of Judge Ruschke’s team. Unlike other conference hosts, Unified Patents operates exclusively in front of the PTAB and solicits members on that basis.

Yesterday, a group of dedicated inventors took to the steps of the United States Supreme Court in order to protest the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). As the Supreme Court heard oral arguments in Oil States Energy Services, LLC v. Green’s Energy Group, LLC, and SAS Institute Inc. v. Matal, the inventors protest focused on the erosion of patent rights and the need for patents to be considered property rights.

Justice Gorsuch seems the most likely, based on his questions, to support the petitioner’s position that there is a constitutional infirmity surrounding IPR proceedings. Chief Justice Roberts also seemed to have substantial concerns with respect to IPR proceedings. Perhaps somewhat predictably, Justice Breyer and to a lesser extent Justices Sotomayor and Kagan, seemed through their questions to view IPR proceedings as just another opportunity for the Patent Office to make sure the correct determination has been reached at the time the patent was granted by the Patent Office. Justice Kennedy overall seemed more in line with the thinking of the liberals on the Court, Justice Ginsberg asked difficult questions and seemed difficult to predict how she might rule. Justice Thomas characteristically remained silent, although his judicial philosophy would be typically in line with Justice Gorsuch. Justice Alito asked only a few questions of the petitioner’s counsel, Allyson Ho, which focused on whether the Constitution requires a Patent Act and whether Congress could put limitations on the grant of “these monopolies.”

With a high-level understanding of what blockchain is, you might ask “why is it important?” Blockchain has many implications, but it is going to change how we interact with each other and over time will make peer to peer interaction the norm… It occurred to me that blockchain could have a massively beneficial impact on the patent industry and patent asset class… Applying blockchain, artificial intelligence and predictive analytics to improve patents, the industry and the asset class is our mission.

Section 101 of the Patent Act was codified as part of the 1952 Patent Act.  At the same time, Congress set forth in Section 282(b) a list of available defenses that may be asserted in a patent infringement action brought in court.  While Congress has tinkered with Section 282 a number of time since its enactment in 1952, including identifying other invalidity defenses, such as failure to comply with some portions of Section 112 (see 35 U.S.C. § 282(b)(3)), Congress has never added “Inventions Patentable” (35 U.S.C. § 101) as an available enumerated defense.

October 30th was a very busy day for amici filing briefs with the U.S. Supreme Court on how the highest court in the nation should decide in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, a case in which oral arguments will be heard on November 27th. Many of the briefs filed on the 30th were submitted by some of the biggest names in the tech industry. Taking a look at briefs filed by this major companies, some of whom have been seeing great success in patent validity trials at the Patent Trial and Appeal Board (PTAB), it’s both revealing and unsurprising to find how the tech ruling class feels that the Supreme Court should decide in Oil States.

Andrei Iancu is leaving an extremely lucrative position as Managing Partner at Irell to make his mark upon the patent system as Director for a salary that many in his wage bracket would consider a stipend. But his chance for significant policy impact is limited by time and the need to immediately deliver valid and timely patents on day one. Hopefully, Director Iancu is already planning some of his initiatives to get a jump start on his legacy.

A review of amici briefs filed with the U.S. Supreme Court in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC provides evidence of a stark split in how various stakeholders in the U.S. patent system view the patent validity challenge activities ongoing at the Patent Trial and Appeal Board (PTAB). Whereas many of the world’s largest tech companies who have a dominant advantage in the consumer marketplace are in favor of the PTAB remaining active, many small entities and individual inventors are greatly opposed to the PTAB and its differing standards on patent validity leading to a higher rate of invalidation than in Article III district court proceedings. A look at amici briefs coming from law professors can shed some light on where the academic sector comes down on the subject of the PTAB’s constitutionality.

The government’s brief argues that IPR proceedings at the PTAB are consistent with Article III because, in its view, patents are public rights and not private ones and the right for an inventor to seek a patent is a public right. In the government’s eyes, it is constitutionally permissible for the U.S. Patent and Trademark Office to reassess previously issued patents for revoking in order to “correct its own errors.” If the PTAB errs, then patent owners have legal recourse in appealing those cases to the Court of Appeals for the Federal Circuit, the government argues.

A review of amicus briefs filed with the U.S. Supreme Court in advance of oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC revealed that, by and large, the American tech ruling class wishes to see SCOTUS leave the Patent Trial and Appeal Board (PTAB) intact in the face of the constitutional challenges facing the PTAB in the case. Today, we’ll review a series of briefs filed by amici representing many of the smaller players in the U.S. patent system who have by and large been railroaded at the PTAB, an agency which invalidates patents at an incredibly high rate, fails to follow Congressional statutes regulating its own activities and stacks administrative patent judge (APJ) panels to achieve policy objectives desired by the Director of the U.S. Patent and Trademark Office.