The Tokai and Ritchie rationale seems to have never been cited by any other panels of the Court. While this may be due to many reasons, the fact that this reasoning could so easily invalidate virtually any claim in any patent, combined with the fact that it has only scarcely been utilized by the Court, suggests that this is an extraordinarily important issue for the Court as a whole to consider.

The other reason AOP has been so success is also eluded to in Phelps’ quote above as well. Article One runs a “human network.” When I asked Cheryl what made Article One so successful she immediately responded “our researchers.” Indeed, their researchers are what makes the system work, and they have well over 1 million people registered as researchers and well over 23,000 active researchers who routinely submit prior art. These researchers are located all across the world, with roughly one-thrid in the United States, roughly another one-third in Europe, about 10% in Japan and the rest spread elsewhere around the globe. In addition to this geographic diversity, nearly 50% of researchers hold advanced degrees.

The decision of the Supreme Court in Prometheus has been predicted to have implications for business method patentability, but the decision in what will surely become known as the Alice case provides an early indication that the CAFC may endeavour to limit its scope. Whether the claimed subject matter lies in the reality of patent-eligible subject-matter or is more correctly located in the Wonderland of abstract ideas is an issue that has been debated on both sides of the Pond, and on which the Dodo or the King of Hearts in his judicial capacity would surely have had an opinion if it had been brought to their attention. In the US there appears to be ample scope for further debate.

All too often inventors feel that the assistance of a patent attorney is really not necessary. That is an opinion shared by many unfortunately. It is not unfortunate for the patent attorney really, but rather it is unfortunate for those who hold the belief because invariably those who represent themselves obtain rights that are so narrow that they are practically useless. Recently I have had the occasion to be contacted by several independent inventors who did file their own nonprovisional patent applications and are now facing a First Office Action that rejects all the claims. A First Office Action that rejects all claims is not uncommon, but these applications have little or no useful discussion of the invention so there will be little or nothing anyone can do to help them ever achieve a patent. A bad patent application results in either an extremely narrow patent or no patent at all. All that time, money and energy wasted. These inventors, who are unfortunately the norm for those who represent themselves, may well have had an invention that could be protected but through a faulty application will now likely never receive a patent on their invention.

The Detroit USPTO will create approximately 120 highly-skilled jobs in its first year of operations alone. The IP experts in the office will work closely with entrepreneurs and help further reduce the backlog of patent applications and appeals. Reducing the backlog of patents and simultaneously speeding up the process will allow businesses to move their innovation to market more quickly, saving critical time and resources.

Even if the dispute with Apple and FlashPoint has not been fully resolved by the time of the final sale of the patent assets Kodak may still be able to proceed with the sale if they establish “adequate protection” under the Bankruptcy Code for Apple and Flashpoint at the time of sale. Kodak’s adequate protection could take many forms depending on the value of any remaining alleged interests, the amount of the sale proceeds, and other factors. Alternatively, the Bankruptcy Court also authorized Kodak to sell the patents subject to Apple and FlashPoint’s claims, if mutually agreed between Kodak and the winning bidder.

According to the FTC, coupons are a big business.  There are more than 3,000 manufacturers that annually distribute nearly 330 billion coupons that are worth an estimated $280 billion. With this type of marketplace it is easy to understand why opportunistic criminals would be interested in the industry, particularly given the economic plight of the moment caused by the Great Recession, which we cannot seem to escape.  Tough times cause people to be more cost conscious, but this also provides the perfect cover for con artists and scammers.  

On July 9, 2012, the United States Patent and Trademark Office (USPTO) announced that they are extending the First Action Interview (FAI) Pilot Program. The extension of the program will be in conjunction with a comprehensive review of the program to determine whether any adjustments should be made to the program. Further inquiry will be made into whether the program should be extended further or made permanent. During its review, the Office will consider feedback from both internal and external stakeholders. Accordingly, in addition to announcing the extension of the program, the Office is requesting comments on the program.

These polar opposite decisions in CyberSource and Ultramercial illustrate how fractured the Federal Circuit’s patent-eligibility landscape has now become for business methods and systems. The most recent split decision in CLS Bank International v. Alice Corp. Pty. Ltd. where a claimed trading platform for exchanging business obligations survived a validity challenge under 35 U.S.C. § 101 epitomizes this problem. As CLS Bank International unfortunately shows, an objective standard for judging the patent-eligibility of business methods and systems remains elusive, subject to an ever growing “tug-of-war” between the “inclusive” and “restrictive” patent-eligibility factions of the Federal Circuit. In particular, after CLS Bank International, we are no closer to having a judicially accepted definition of what is (or is not) an “abstract idea” when it comes to claiming business methods and systems.

A factual determination of the Board is to be upheld if there is substantial evidence to support it, In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000), and a finding is supported by substantial evidence if reasonable minds might accept the evidence as supporting the factual finding. Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). This has been translated by the Federal Circuit to mean “is the determination unreasonable?” Nippon Steel Corp. v. United States, 458 F.3d 1345, 1351 (Fed. Cir. 2006).

Readers did point out some issues in our article that we would like to correct. First, we made some statements regarding copyright that are not completely accurate. A work can be jointly owned by two or more copyright holders who then have the right to individually assign nonexclusive rights without the permission of the other copyright holders. This is not typically done by companies developing code, because it effectively gives away the copyrights. It is more typically done when a company accepts code developed by an outside entity. In fact, as was pointed out by one reader, Sun has an agreement called the Sun Contributor Agreement (SCA) that specifies that any person who contributes code to a Sun-managed project gives Sun joint copyright in the code. This is an interesting way for Sun to ensure that code contributed to any of its projects can be used without restriction by Sun without copyright issues.

This case intrigued me from the start because it seemed rather odd that there should be a nonprecedential opinion in an appeal to the Federal Circuit necessitated by a completely adjudicated inter partes reexamination at the United States Patent and Trademark Office. Moreover, the original panel concluded that the combination of known elements resulted in a predictable result. The problem with that reasoning, however, is that not all of the elements were found within the prior art. In fact, the Board found that there are no fewer than three (3) meaningful structural differences between the invention as claimed and the prior art.

The IP Professional community must find ways to work with Wall Street to help educate and protect the credibility of IP as an emerging asset class, and not allow IP assets to become cannon fodder for deals or the investment “flavor of the month.” The InterDigital-Intel deal can be viewed as call to arms. Wall Street will ultimately choose to enlist or not credible transaction analysis. In most trades there are winners, and sometimes losers. Smart IP bankers will choose to do the homework and not be so quick to determine who, in fact, the beneficial parties are. Given the inefficiencies inherent in the patent marketplace, it is quite possible for a liquidity event like a patent transaction to have multiple winners. Reminding the financial community of this will not be easy.

On Friday, July 6, 2012, the United States Court of Appeals for the Federal Circuit issued a decision in General Electric Co. v. ITC. The Federal Circuit, per Judge Newman with Chief Judge Rader and Judge Linn, did not give GE a total victory, but victory enough over Mitsubishi. The Federal Circuit affirmed in part and reversed in part the original decision of the ITC, and remanded the case for further proceedings consistent with the decision. Ultimately, the Federal Circuit ruled that claim 15 of the ‘985 patent, correctly construed, covers the domestic industry turbines. Of note, the CAFC continues to interpret “connected to” and “coupled to” as not requiring physical separation.

This is an interesting development, and one that seems to make sense from both perspectives. When giant corporations are suing each other it is because they are in immature markets, such as we see with the enormous patent litigation surrounding various smart phones, tablet devices and the operating systems that power them. Lawsuits are the mark of an immature market because in the end no one really ever wins, that is except for the lawyers. The patent litigators make out handsomely, and there is absolutely nothing wrong with that. My patent attorney brethren thank you immensely I’m sure, and I am hardly going to take issue with capitalism at work. If you want to sue someone and you have the funds to hire an attorney then have at it!