Posts in Patents

It’s rare that a federal policy inspires fierce opposition from both sides of the aisle. But the Biden administration’s recent proposal to gut the Bayh-Dole Act is doing exactly that. Bayh-Dole is a pivotal and successful bipartisan law, but Biden’s proposal would effectively allow federal agencies to tear up patent licensing agreements signed between federally funded universities and private businesses. The economic consequences would be dire. Individuals from across the political spectrum, including former Obama administration officials, have warned the proposal would threaten America’s small businesses and inventors.

The Supreme Court has never quite grasped the distinction between patent eligibility and patentability. Eligibility involves entire subject matter categories or fields of inventive enterprise, like the categories “process, machine, [article of] manufacture, or composition of matter.” 35 U.S.C. 101. Ascertaining eligibility should therefore require little more than checking the patent title and ensuring that, in the words of the venerable Judge Giles Rich, “[the invention] produces a useful, concrete and tangible result.”  State Street Bank v. Signature Fin. Group, 149 F. 3d 1368 (Fed. Cir. 1998). In simple terms, Section 101 requires little more for eligibility than a showing that an invention has applied natural principles to achieve a concrete purpose within the expansive categories articulated by Thomas Jefferson in 1793. Patentability, on the other hand, proceeds as a detailed claim-by-claim, feature-by-feature examination of “the conditions and requirements of this title.” 35 U.S.C. 101. Ironically this fundamental distinction that eludes the Supreme Court is explicit in the statutory language of 35 U.S.C. 101 itself.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, March 21, affirmed a district court’s grant of summary judgment that claims of a patent for an electronic gaming system were ineligible under Section 101. U.S. Patent No. 7,736,223 is owned by Savvy Dog Systems and POM of Pennsylvania (Savvy Dog) and is directed to a “more skill-based and less chance-based” version of a popular electronic game called “Tic Tac Fruit.” Savvy Dog sued Pennsylvania Coin and PA Coin Holdings (Pennsylvania Coin) for infringement in the Middle District of Pennsylvania. Pennsylvania Coin moved to dismiss the case, in part because it said the claims constituted patent ineligible subject matter.

It was a below-average week in both the Patent Trial and Appeal Board (PTAB) and in district courts this week for new patent filings, with only 27—all inter partes review (IPR)—at the PTAB and 47 new filings in district court…. The PTAB issued institution  decisions in 16 proceedings this week, denying institution in two IPRs (both on the merits) and ordering institution in 12 IPRs and two post-grant reviews (PGR). Instituted proceedings include two IPRs filed by Palo Alto Networks and Keysight Technologies challenging one Centripetal Networks patent; two IPRs filed by Samsung Electronics Co., challenging two Headwater Research Patents; and two IPRs filed by Motorola Solutions Inc., challenging two Sta Group LLC patents.

The U.S. Chamber of Commerce today announced it is partnering with entrepreneurs and other business advocates to counter threats to innovation due to “excessive government overreach,” including the Biden Administration’s proposed framework to expand the use of so-called patent march-in rights.

The U.S. Patent and Trademark Office (USPTO) on Tuesday, March 19, issued a memo for all patent examiners reiterating its current practices and resources for examining means-plus-function and step-plus-function claim limitations. The memo is primarily focused on reminding examiners that they must create a clear record explaining their interpretation of such claims and points to various resources and training tools that are available to assist them.

Similar to Steve Martin and John Candy’s calamitous odyssey in the classic 1980s film Planes, Trains and Automobiles, patent practitioners are experiencing their own misadventures when filing applications in the DOCX format. As of January 17, 2024, the U.S. Patent and Trademark Office (USPTO) mandated submitting all specification, claims and abstracts of non-provisional applications filed under 35 U.S.C. 111(a) in DOCX format or incurring a $400 surcharge (non-discounted). The DOCX mandate came after thousands, and likely tens of thousands, of practitioners, directly or indirectly, communicated their significant procedural, technical, legal, ethical, professional liability, and financial concerns to the USPTO.

Last week, the Judicial Conference of the United States issued guidance on recently announced changes to case assignment policies designed to prevent gamesmanship in litigation filed in U.S. district court. While the Conference’s guidance clarifies that the amendments are intended to impact patent lawsuits, where claims of judge-shopping have been rife, commentary from legal scholars highlights several issues with implementing these policy changes in the patent infringement context.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Apple’s petition for a writ of mandamus asking the court to compel Judge Alan Albright of the U.S. District Court for the Western District of Texas to transfer its case to the Northern District of California. Carbyne Biometrics sued Apple for infringement of six patents via Apple’s “Secure Enclave” and Apple Cash platform features. Apple moved for transfer in July 2023, the motion was briefed in November 2023 and the district court denied the motion in December 2023 and said it would soon issue a decision. Apple filed the petition for writ of mandamus when no decision had issued by January 31, 2024 asking the CAFC to either stay the proceedings until a decision had issued or to compel transfer.

The U.S. Supreme Court on Monday, March 18, denied a petition filed by patent owner Jodi A. Schwendimann asking the Court to review a decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) that affirmed a Patent Trial and Appeal Board (PTAB) determination that Schwendimann’s patents were obvious. The petition specifically asked the Court to review the CAFC’s holding that Schwendimann’s argument that “justification for selection of a primary reference is a necessary step to guard against hindsight bias for the motivation to combine references” was unsupported by Federal Circuit case law.

On March 13, the European Parliament approved the Artificial Intelligence (AI) Act, a major piece of legislation that lays the legal foundation of the European Union’s (EU) regulation of AI platforms. While the 459-page bill addresses some of the copyright and other intellectual property (IP) issues related to generative AI, European creator groups have called upon the EU’s parliamentary body to create more meaningful mechanisms for IP rightsholders to prevent their works from being incorporated into AI platform training models. Further, questions have been raised regarding the extraterritorial impact of reporting requirements and how they might implicate the development of copyright law in foreign jurisdictions.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday affirmed a district court finding that two inventors should be added as co-inventors to a patent for a method of transporting gaseous fluids. The CAFC concluded that the record “does not leave us with a definite and firm conviction that a mistake has been made” in finding the inventors contributed significantly to the invention.

The United States Patent and Trademark Office (USPTO) recently released new guidance to patent examiners on making obviousness rejections. The guidance focuses on post-KSR precedential jurisprudence from the U.S. Court of Appeals for the Federal Circuit. Some of the guidance is fairly mundane, some of it is not. The purpose of this article is to propose a few responses one might use to counter rejections that apply certain problematic aspects of the new guidance.

The U.S. Patent and Trademark Office (USPTO) today issued a Request for Comments (RFC) that will be published in the Federal Register tomorrow seeking input from the public on how to better incentivize commercialization of innovation, particularly in green and critical or emerging technologies. According to the RFC, the comments received “will be used to evaluate possibilities for amplifying the impact of our current work, and to explore new ways to support the transfer of innovation to the marketplace.”

Efforts by high-tech companies to undermine both the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act ramped up this week, with a joint letter sent to the Senate Judiciary Committee by a number of tech industry organizations on Monday and a campaign launched by the Electronic Frontier Foundation (EFF) yesterday.