Posts in Courts

Big Tech’s Opposition to Section 101 Reform: Policy Rhetoric versus Economic Reality

A year ago, the Senate held three days of hearings with 45 witnesses on a legislative proposal that would have brought much-needed reform of 35 U.S.C. § 101. These extensive hearings were a strong signal of a commitment by policymakers to abrogate the disastrous and destructive Alice-Mayo inquiry. Senators Thom Tillis (R-NC) and Christopher Coons (D-DE) promised quick action with a bill formally introduced by mid to late summer. A year later, there is no bill and the reform effort has stalled. What happened? Notably, Big Tech refused to participate in the hearings. Senator Tillis explained in the second day of hearings that “we invited some of the large, high-tech companies to be present and they decided not to as individual companies and instead be represented by … the High Tech Inventors Alliance, and that’s okay, but … silence is consent.” At the hearings, HTIA and other opponents of reform from policy organizations closely linked with HTIA members invoked the tread-worn narrative of abusive patent litigation by patent trolls. They argued they needed the Alice-Mayo inquiry to quickly and efficiently dismiss these patent troll lawsuits to avoid incurring unnecessary litigation expenses. But The data confirms a loss of the longstanding competitive advantage of the gold-standard U.S. patent system in promoting innovation relative to Europe and China.

Using Alice’s Approach to Patent-Eligibility to Draft Patent Claims

The Federal Circuit has been criticized for creating categories of abstract ideas when applying Alice v. CLS’s two-prong framework and for refusing to define the contours of an abstract idea. Naturally, this causes uncertainty for those drafting patent claims. A typical view is that claims can be drafted by analogizing to them to the decisions. However, analogical reasoning has limited utility where the Federal Circuit continues to define new abstract ideas. This article argues that Alice’s definition of a patent-eligible claim is consistent with the Federal Circuit’s decisions and that this definition can be a useful analytical tool while drafting claims.

Effects of the Alice Preemption Test on Machine Learning Algorithms

Since the Alice decision, the U.S. courts have adopted different views related to the role of the preemption test in eligibility analysis. While some courts have ruled that lack of preemption of abstract ideas does not make an invention patent-eligible [Ariosa Diagnostics Inc. v. Sequenom Inc.], others have not referred to it at all in their patent eligibility analysis. [Enfish LLC v. Microsoft Corp., 822 F.3d 1327] Contrary to those examples, recent cases from Federal Courts have used the preemption test as the primary guidance to decide patent eligibility. Inventive concepts enabled by new algorithms can be vital to the effective functioning of machine learning systems—enabling new capabilities, making systems faster or more energy efficient are examples of this. These inventions are likely to be the subject of patent applications. However, the preemption test adopted by U.S. courts may lead to certain types of machine learning algorithms being held ineligible subject matter.

USPTO and Facebook Submit Briefs Explaining Effects of Thryv Ruling on Facebook v. Windy City

Last week, Facebook and the USPTO both filed briefs in response to a U.S. Court of Appeals for the Federal Circuit (CAFC) Order requesting that the parties and the U.S. Patent and Trademark Office (USPTO) file supplemental briefs explaining their views regarding the effect of the Supreme Court’s April 20, 2020 decision in Thryv, Inc. v. Click-To-Call Techs, LP on the CAFC’s March 18, 2020 decision in Facebook v. Windy City Innovations.  In Facebook, the CAFC ruled that the USPTO’s Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder.

CJEU Says Copyright Protection May Apply to Product Designs if Technical Result Doesn’t Prevent Creative Choice

On June 11, the Fifth Chamber of the Court of Justice of the European Union (CJEU) issued a decision in Brompton Bicycle Ltd. v. Chedech/Get2Get in which the EU’s highest court held that European copyright law extends protection to product shapes producing a technical result when the shape is an original work resulting from the author’s intellectual creation. The decision is notable both for the CJEU’s departure from the advocate general’s opinion in the case as well as its sharp contrast to U.S. copyright law, where copyright protection is expressly prohibited for product designs that have utilitarian, functional aspects.

Federal Circuit Bars New Suits Against Amazon Under Claim Preclusion, Kessler Doctrine

The U.S. Court of Appeals for the Federal Circuit today ruled in In Re PersonalWeb Technologies, Inc. that a district court’s 2014 dismissal of a patent infringement suit brought by PersonalWeb against Amazon barred PersonalWeb’s new infringement actions against Amazon and its customers. The Court affirmed the United States District Court for the Northern District of California’s finding that the lawsuits against Amazon and its customers—Patreon, Vox Media, Dictionary.com, Vice Media, Oath, Inc., Buzzfeed, Popsugar and Ziff Davis—were barred in part by a 1907 Supreme Court ruling, Kessler v. Eldred, which said that a losing patent holder cannot later assert the same patents against the winning party’s customers.