Posts in Patents

On August 3, the United States Court of Appeals for the Federal Circuit (CAFC) denied a petition for rehearing en banc and issued a modified opinion, following a petition for rehearing filed by Ariosa in Illumina, Inc. v. Ariosa Diagnostics, Inc. Sticking closely to the reasoning of its March opinion, the CAFC reversed a decision by the United States District Court for the Northern District of California that claims of U.S. Patent Nos. 9,580,751 (the ’751 patent) and 9,738,931 (the ’931 patent) belonging to Sequenom and Illumina (Illumina) were invalid under 35 U.S.C. § 101 as being directed to an ineligible natural phenomenon.

In Article 1, Section 8, Clause 8, of our Constitution, the founders were relatively specific. The founders give Congress power to secure “the exclusive Right” to “Authors and Inventors” in the “Writings and Discoveries”. Congress is given  specific direction on how to do it (i.e., “for Limited Times”), and why it should be done (i.e., “To promote the Progress of Science and useful Arts”). Unfortunately, the Leahy-Smith America Invents Act (AIA) of 2011 dramatically changed how the Executive branch implements the Constitutional prerogative.  The AIA transferred power constitutionally allocated to the judicial branch to the executive branch – specifically, to Administrative Patent Judges (APJs) in the USPTO. In the process of implementing the Patent Trial and Appeals Board (PTAB) on which the APJs sit, judicial independence, judicial ethics, rules of evidence, and other protections commonly afforded rights holders in disputes adjudicated by the federal judiciary were sacrificed in the name of expediency.

On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued Orders granting a request for panel rehearing and denying a request for rehearing en banc in response to a joint petition filed by American Axle & Manufacturing (AAM). The CAFC also issued a precedential modified opinion of its October 3, 2019 opinion in American Axle & Manufacturing v. Neapco Holdings. In the Order Denying Rehearing En Banc, Judges Newman, Moore, O’Malley, Reyna, Lourie and Stoll dissented from the denial of rehearing en banc. Each of Dyk, Chen, Newman, Stoll and O’Malley wrote separately.

There is a symbiotic relationship between innovation and patents. The innovation that we say we most want is cutting-edge innovation that requires time, money and determination to bring into being.Unfortunately, paradigm shifting innovation does not come cheap. And patents are the lifeblood of this type of disruptive innovation. Those within the industry know this to be the case, and today the Alliance of U.S. Startups and Inventors for Jobs (USIJ) released a report detailing a comprehensive study that confirms the importance of patents and the consequences of a patent system in the United States that has veered away from strong protections for innovators and toward rules and laws that make it ever easier for implementers to copy the innovations of creators without remuneration.

On Thursday, July 30, U.S. Patent and Trademark Office (USPTO) Commissioner for Patents Drew Hirshfeld and other USPTO staff updated attendees of IPWatchdog and LexisNexis’ webinar, “A Conversation with the Commissioner: A Look Inside Patent Processes at the USPTO,” on issues such as staffing, reopening plans, and upcoming new processes for routing patent applications.

On July 29, Askeladden LLC filed an amicus brief in support of the U.S. Government’s combined petition for a writ of certiorari in U.S. v. Arthrex, Inc., No. 19-1434. In particular, Askeladden asks the Supreme Court to accept the petition and address the threshold question raised by the U.S. Government: whether, for purposes of the Appointments Clause, U.S. Const. art. II, § 2, Cl. 2, administrative patent judges (APJs) of the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “principal officers” who must be appointed by the President with the Senate’s advice and consent, or “inferior officers” whose appointment Congress has permissibly vested in a department head.

The Federal Circuit on Wednesday affirmed a decision of the Patent Trial and Appeal Board (PTAB) that found FanDuel had failed to prove that claim 6 of Interactive Games’ U.S. Patent No. 8,771,058, was obvious in view of the asserted prior art. FanDuel, Inc. v. Interactive Games, LLC (CAFC, July 29, 2020). FanDuel appealed to the Federal Circuit on the ground that the PTAB violated the Administrative Procedures Act (APA) and also challenged its factual findings. Judge Dyk dissented in part, saying he would have found the claim obvious, and that the obviousness standard used by the PTAB was overly rigid and not in the spirit of KSR v. Teleflex.

On July 24, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the United States District Court for the Southern District of Texas that a State asserting sovereign immunity could not be joined as an involuntary plaintiff, but dissented from the district court’s holding that the case could not proceed in the State’s absence. Gensetix, Inc. v. Baylor College of Medicine. Judges Newman and Taranto each wrote separately in partially dissenting from different aspects of the majority’s opinion.

There was a spike in Patent Trial and Appeal Board (PTAB) filings this week—almost double the average, at 56—driven in part by eight new petitions (adding to those previously filed) against patents owned by the Moskowitz family by Globus Medical. That was good enough to rival newly filed complaints for the first time this year (57). It also appears Uniloc (Fortress) and Samsung have come to some sort of agreement, as a handful of pending inter partes reviews (IPRs) settled; Samsung was denied institution in all of the IPRs it has filed against Cellect to date (eight petitions, with 12 still pending—at least some patents have no remaining challenges, meaning the litigation is sure to continue in due course).

Former Senator Robert Dole turned 97 last week, but he’s still very much engaged in what’s going on right now. He just wrote a powerful op-ed, Innovation is key to defeating COVID-19. Subtitled “Enacted 40 years ago, the Bayh-Dole Act is helping facilitate the development of coronavirus therapies today,” Senator Dole reviews how the law he crafted with former Senator Birch Bayh revolutionized the commercialization of federally-funded inventions. Bayh-Dole paved the way for companies like Moderna to create critically needed therapies to combat our raging pandemic. But there’s another message Senator Dole delivered that’s just as topical.

As a jury consultant with a wide breadth of experience across the country, I am often asked about the favorability of certain venues, but I was surprised two years ago at the Eastern District of Texas (EDTX) Bench Bar conference when an attorney friend of mine quietly asked what I thought about Waco as a venue for patent cases. I nearly spit my coffee out: “Waco?  That’s a terrible idea!”  “Why?” he questioned, “Isn’t it a small town just like Marshall or Tyler?” I proceeded at length to explain why the Waco division and Western District of Texas (WDTX) is dramatically different than the Marshall division and EDTX. I simply chalked the question up to a one-off inquiry, until I was asked the same question again multiple times from other attorneys at the last EDTX Bench Bar. It was at the last EDTX conference that all the questions fell into place, when I heard about Judge Albright’s intent to prepare a new patent docket in Waco.

This month, the United States Patent and Trademark Office (USPTO) released a report titled “Progress and Potential: 2020 update on U.S. women inventor- patentees” (the Report). The Report updated a study published last year that outlined trends in women inventors named on U.S. patents from 1976 to 2016. These reports are a result of the Study of Underrepresented Classes Chasing Engineering and Science Success (SUCCESS) Act of 2018, which directed the USPTO to study and report to Congress on the number of patents applied for and obtained: (1) by women, minorities, and veterans; and (2) by small businesses owned by women, minorities, and veterans. As evidenced by the USPTO reports, women are under-represented as inventors of record on USPTO patents, which is least partially due to a general lack of funding available to women inventors. 

In late June, Unified Patents published the findings of an economic report conducted by consulting firm The Perryman Group on the supposed impacts of validity trials conducted under the America Invents Act (AIA) at the Patent Trial and Appeal Board (PTAB) on the U.S. economy. Unsurprisingly, the report is very bullish on the effects of the AIA, and Perryman pegs the positive impact of the AIA and the PTAB at $2.95 billion in terms of increased gross domestic product, $1.41 billion in increased personal income and 13,500 of additional job-years of employment. Careful observers of the U.S. patent system, however, will note that the data only does a good job of examining one side of the PTAB’s impact.

As far back as the Roman Empire, standardization has improved the efficiency of human endeavors. In the present day, as high-bandwidth communication and Internet of Things (IoT) applications expand, standardization continues to be key in advancing new technologies. From the standpoint of protecting intellectual property, however, the collaboration required to standardize a technology presents unique challenges, as industry competitors disclose and assess various options for the standard. Standard Development Organizations (SDOs), each directed to a particular technical area, adopt standards that allow devices to communicate with each other and process information consistently. Technical experts representing companies or trade associations in an SDO may submit proposals for consideration and adoption. However, such proposals may include patentable solutions invented within the submitting organizations. By virtue of submitting such proposals for consideration, the solutions could be considered publicly disclosed – or, at the very least, disclosed to industry competitors.

Back in ancient times, in this case 1990, John Gray, an obscure “relationship counselor” with a correspondence degree in psychology, was perplexed. The communication problems of the heterosexual couples he worked with were so serious that he couldn’t explain them by individual circumstances. His clients seemed to be talking past each other, almost as if they were coming from different planets. With that tired metaphor in mind, he penned the book Men Are from Mars, Women are from Venus, generalizing what he thought were the universal, contrasting communication styles of the sexes…. In effect, [Gray] has become rich by talking about how incompatible men and women are, despite eons of evidence to the contrary. In our world of intellectual property, it once was like this between patents and trade secrets.