As an update to my posts from 2017, 2019, and 2020, it has now been more than seven years since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased over 73 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.). Further, it has been 10 years since famed venture capitalist Marc Andreessen wrote an influential op-ed piece in the Wall Street Journal titled “Why Software Is Eating the World.” This digital transformation where software is “eating the world” is undeniable.

On March 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) granted Janssen Pharmaceuticals’ motion to dismiss Mylan Laboratories’ appeal and denied Mylan Laboratories’ request for mandamus relief, holding that the court lacked jurisdiction to hear Mylan’s appeal and that Mylan had failed to qualify for mandamus relief. In 2019, Janssen Pharmaceuticals sued Mylan Laboratories in district court for infringing U.S. Patent No. 9,439,906 (the ‘906 patent). In response, Mylan Laboratories petitioned the Patent Trial and Appeal Board (Board) for inter partes review (IPR) of the ‘906 patent, raising four grounds for the unpatentability of certain claims, all based on 35 U.S.C. §103. In opposition to the institution of the IPR, Janssen Pharmaceuticals argued that the IPR “would be an inefficient use of Board resources,” due to two co-pending district court cases: the suit against Mylan Laboratories and another against Teva Pharmaceuticals, arguing “that both actions would likely reach final judgment before any IPR final written decision.”

The Enlarged Board of Appeal of the European Patent Office (EPO) recently published its decision No. G1/19 on patentability of simulations. There was great anticipation for such a decision, after landmark decisions 641/00 (COMVIK) and G3/08, mainly due to the ambiguous formulations of the questions of law to the Enlarged Board of Appeal. The result is “business as usual”, but several clarifications might be useful in the future. In the following, we first summarize the questions of law, the clarifications of the Enlarged Board of Appeal and then infer possible consequences for applicants and practitioners.

This week in Washington IP news, the Senate Energy Committee will discuss R&D initiatives underway to reduce greenhouse gas emissions from the nation’s transportation sector. Over in the House of Representatives, several subcommittees will hold hearings related to Big Tech antitrust issues, ways to rebuild the federal scientist workforce and the SHOP SAFE Act, which would amend U.S. trademark law to create contributory liability to platforms allowing counterfeit sales. Elsewhere, the Hudson Institute will focus on transatlantic efforts to incorporate antitrust efforts into IP licensing, while the Information Technology & Innovation Foundation explores the potential impacts of the Digital Markets Act in the EU.

On March 11, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board (PTAB) to hold the rejected claims from Leland Stanford Junior University (Stanford) were not patent eligible because the claims are drawn to abstract mathematical calculations and statistical modeling. The examiner rejected claims 1, 4 to 11, 14 to 25, and 27 to 30 of U.S. Application Nos. 13/445,925 (‘925 application), “methods and computing systems for determining haplotype phase,” for involving patent ineligible subject matter. The CAFC applied the two-step framework under Alice v. CLS Bank to determine whether the claims were patent eligible.  

Copyright holders can require licensees to implement technical measures to prevent infringement, the Court of Justice of the EU (CJEU) has ruled in its latest decision on the “right of communication to the public” in EU copyright law. (Case C-392/19 VG Bild-Kunst v. Stiftung Preußischer Kulturbesitz.) The Court’s Grand Chamber, comprising 15 judges, gave its ruling on questions referred from Germany in a dispute between a copyright collecting society for visual art, VG Bild-Kunst, and Stiftung Preußischer Kulturbesitz (SPK), a cultural heritage foundation that operates a digital library called Deutsche Digitale Bibliothek. The digital library includes thumbnails of images and links to the institution providing the subject matter.

As we celebrate Women’s History Month, it is important to point out the role of women in the field of patent law. Women have been members of the patent bar since as early as 1898, when Florence King became the first woman registered to practice before the U.S. Patent Office, as well as the 685th registrant. She became a lawyer first, and then went back to school to obtain a degree in Mechanical and Electrical Engineering so that she could register on the patent bar. As a woman patent practitioner with a mechanical engineering degree, I feel a lot of gratitude to women like Florence King, who paved the way for me. Yet, despite her trailblazing efforts over a century ago, there is still a considerable lack of gender diversity in the patent bar.

In a previous article, we considered the difference between a reasonable royalty for infringement of a U.S. patent and a fair, reasonable and non-discriminatory (FRAND) rate for licensing standards essential patents (SEPs). Among other points, the article discussed the then ongoing case between Optis Wireless Technology, LLC et al. v. Apple Inc., Civil Action No. 2:19-cv-00066-JRG (E.D. Texas, September 10, 2020). Most recently, Judge Rodney Gilstrap issued an Opinion and Order as to Bench Trial Together with Supporting Findings of Fact and Conclusions of Law (“Opinion and Order”) and ordered Final Judgment be entered. This Opinion and Order sheds a little more light on the issue of damages for SEPs, including the role of exemplary damages for willful infringement, but also leaves some key questions unanswered.

After a year of cancellations and postponements, awards season is here. The competition for the best in film, TV, and music is fierce: There are underdogs, there are crowd favorites, there are snubs, and there are critics’ darlings, but this year, the hero of the hardware isn’t one single piece. It’s the creative industry itself. The creative industry has overcome every obstacle – from shutdowns and funding squeezes to changing production regulations and new social norms – to keep us connected, protected, and informed throughout the pandemic.

This week in Other Barks & Bites: Senator Thom Tillis announces he will co-chair the Senate Cybersecurity Caucus; a local business news outlet reports that the United States Patent and Trademark Office could be downsizing its office space footprint in Northern Virginia; a Lex Machina report shows that Judge Albright’s docket covered nearly 20% of all patent cases filed during 2020; Johnson & Johnson gets an important regulatory approval to sell its COVID-19 vaccine in the EU; Facebook moves to dismiss the Federal Trade Commission’s antitrust suit for failing to state a plausible claim under the Sherman Act; the IDEA Act is reintroduced into Congress to provide authority for the voluntary collection of demographic data from U.S. patent applicants; the EU’s highest court rules that copyright owners can prevent their works from being embedded on third-party websites by employing technological protective measures against framing; and the Federal Circuit affirms a patent examiner’s rejection of Stanford University patent claims covering personalized healthcare methods as unpatentable subject matter under Section 101.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled on March 8 that Western District of Texas Judge Alan Albright’s failure to rule on a motion to transfer by Tracfone Wireless, Inc. was “strikingly similar to circumstances from the same district court last month in SK hynix,” which the court ruled amounted to “egregious delay.” Unlike SK hynix, Inc., F. App’x 600 (Fed. Cir. 2021), where the CAFC stopped short of granting a writ of mandamus, here, the petitioner’s writ of mandamus was granted and a stay of proceedings regarding all substantive issues was ordered until a decision is rendered on the motion to transfer.

The National Security Commission on Artificial Intelligence (NSCAI) recently issued its Final Report outlining a strategy for the United States to “win” the artificial intelligence (AI) era. Critically, the Commission argues that the United States government is not currently organizing or investing to win the technology competition in AI against a committed competitor (i.e., China), nor is it prepared to defend against AI-enabled threats and rapidly adopt AI applications for national security purposes. In addition to the potential patent-eligibility and data ownership IP issues noted in the Report, other IP uncertainties unique to AI technology continue to persist, such as machine authorship and machine inventorship of valuable contributions. As part of the United States’ overall strategic interests in winning the AI era, the Commission recommends that the United States adopt IP policies to incentivize, expand, and protect AI and emerging technologies, as well as recognize IP as a national priority. But significant questions remain as to whether U.S. courts will reliably permit IP holders to proceed with AI-focused IP infringement claims against potential offenders, or if patent-eligibility, inventorship, fair use, and other defenses will tip the scales towards trade secret protection.

On March 9, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and reversed the U.S. District Court for the Central District of California’s decision to grant summary judgment in favor of defendant Munchkin, Inc. (Munchkin) for noninfringement of U.S. Patent Nos. 8,899,420 (the ‘420 patent) and 6,974,029 (the ‘029 patent), held by plaintiffs Edgewell Personal Care Brands, LLC and International Refills Company, Ltd. (collectively Edgewell). Edgewell manufactures and sells the Diaper Genie, a diaper pail system with two main components: 1) a pail for collection of soiled diapers; and 2) a replaceable cassette within the pail that forms a wrapper around the soiled diapers. The ‘420 and ‘029 patents relate to improvements in the cassette design. Edgewell filed suit against Munchkin for infringement of these patents for selling refill cassettes marketed as being compatible with Edgewell’s Diaper Genie. Edgewell appealed the district court’s decision to grant summary judgment to Munchkin for noninfringement of both patents.

As discussed in Part I of this article, the European Patent Office (EPO) recently published its Guidelines for Examination 2021, which came into force on March 1. In the previous article, we detailed changes affecting computer-implemented inventions and with respect to procedural matters. Here, we will address the Guidelines’ changes for biotech. In addition to some specifications regarding the interpretation of terms relating to amino and nucleic acid sequences and the definition of the concept of “therapy” and of the products that can be claimed in view of their new medical use, the main additions that have been made to the part of the Guidelines relating to biotechnological inventions concern the exclusions from patentability, and in particular the ineligibility of inventions relating to plants or animals and human embryos. A full section has also been added relating to the patentability of antibodies.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled yesterday in Uniloc v. Facebook, Inc., WhatsApp, Inc. that the “no appeal” provision of 35 U.S.C. § 314 does not preclude the court from reviewing a Patent Trial and Appeal Board (PTAB) finding that a petitioner is not estopped from maintaining an IPR proceeding under the IPR estoppel provision of 35 U.S.C. § 315(e)(1). However, the court noted that its decision was based on the particular facts of this case, where “the alleged estoppel-triggering event occurred after institution.”