Posts in Guest Contributors

It Is Time to Fix the Courts’ Section 101 Tests on ‘Directed to …’ and ‘Abstract Ideas’—Whether in Chamberlain or Beyond (Part II)

As we concluded in Part I of this article, the courts are being called upon in The Chamberlain Group v. Techtronic Industries, Inc to respond to an emergency situation in which they must stop the Federal Circuit’s “directed-to” version of the Mayo-Alice test from expanding into, and negating, claims in every subject imaginable. As Chamberlain urges, the patent statute, whether in Section 101 or beyond, does not limit the universe of eligible claims to those where a court can dissect its claim elements into old or “conventional” ones and those that represent the claim’s “patentable advance.” On that point, too, the Patent Act and the Supreme Court have been in unison: You can’t do that.

Patent Filings Roundup: WSOU Entity Leads Sustained Spike in District Court Filings, Sandoz Takes a Shot at Novo Nordisk’s Insulin Treatment

District court patent filings remained unusually high this week (97), with 40 Patent Trial and Appeal Board (PTAB) cases filed (one Covered Business Method, one Post Grant Review, and 38 Inter Partes Reviews). This week’s spike was driven in part by suits brought by Rothschild subsidiaries, but almost entirely (and this is true throughout this year) by the superlatively aggressive filing strategies of WSOU, who refiled or newly filed 35 suits this week in the Western District of Texas. Controlling for those 35 file/refile complaints, this week looks like a much more reasonable 65 or so new patent suits. That said, if we continue to see 100 weekly suits (or even a little less), that’s more than 4,000 projected suits in 2020.

Envisioning a Future of AI Inventorship

For the past 60 years, scientists have been able to utilize artificial intelligence (AI), machine learning, and other technological advances to “promote the general science …”. U.S. courts have increasingly come under pressure to not only allow AI-directed applications as patentable subject matter, but also from a small yet determined and growing contingency of IP professionals, to recognize the AIs themselves as the inventors. The EPO recently handed down guidance that AI could not be recognized as inventors on patent applications. The purpose of this piece is not to debate the merits of whether or not AI should be given inventor status on applications which, it has been argued, they are rightly due—nor should it be. It is important, however, to peek beyond the looking glass into a future where AI are given status in the United States that has, as of the writing of this piece, been reserved for human beings. Let’s explore a few main issues.

It Is Time to Fix the Courts’ Section 101 Tests on ‘Directed to …’ and ‘Abstract Ideas’—Whether in Chamberlain or Beyond (Part I)

The case of the “garage door opener,” The Chamberlain Group v. Techtronic Industries, Inc., has received its share of attention. Rightly so. The case, after all, spotlights not only the breadth of the Supreme Court’s Mayo-Alice test for assessing patent ineligibility under 35 U.S.C. §101; but also the Federal Circuit’s particular “directed to” definition for that test and the dissection of patent claims that has followed.
And it fairly asks, in a petition to the Supreme Court, that if a claim on a garage door opener is “directed to” an “abstract idea” and thus ineligible for patent protection—is any patent, or any technology, safe from the Mayo-Alice ineligibility test? Chamberlain says no. From the outset, its petition declares that its case therefore presents a “patent emergency,” one that the Supreme Court must review to stop the Mayo-Alice test—and the Federal Circuit’s “directed-to” version of it—from expanding into, and negating, claims in every subject imaginable.

The One China Supreme Court Decision that Could Complicate the World’s Supply Chain

For months now, the news has been plastered with updates on COVID-19, the novel coronavirus that has upended lives and trickled into near every facet of the modern experience. Across the political aisle, consumers and producers are questioning the current level of reliance on Chinese production for drugs, ventilators, and masks. Despite these concerns, most manufacturing alternatives, including India, are still working to reestablish normalcy, making China even more indispensable. Realistically, China is and will remain the dominant player for outsourcing production for at least the next five years. Now that Chinese factories are producing close to their full capacity, foreign investors should refocus their attention to newfound legal issues that may complicate the supply chain.

Tech Companies Should Strongly Consider Monetizing Their Patent Portfolios During the Economic Downturn

The COVID-19 pandemic and widespread shelter-in-place orders have hit every corner of the country’s economy, including tech companies of all sizes. Many tech companies have traditionally maintained large patent portfolios to enhance company value and for defensive reasons—i.e. to dissuade competitors from filing suit. But monetizing these dormant patent assets—which can cost a great deal to simply maintain—may provide a solution during these difficult economic times. We of course do not recommend asserting any IP right that could hinder a coronavirus cure or treatment. But for companies with large patent portfolios in computer, server, software, and other hardware-related technology, the economic times may be right to monetize those assets, and luckily, the law is trending in favor of patent holders both in district courts and before the Patent Trial and Appeal Board (PTAB).