Posts Tagged: "35 USC 101"

The case will ask the highest court in the nation to determine whether the federal government is a person who may petition the Patent Trial and Appeal Board (PTAB) to institute patent validity review proceedings under the terms of the Leahy-Smith America Invents Act (AIA).

U.S. District Judge Indira Talwani of the District of Massachusetts signed an order dismissing a patent infringement suit brought by Malvern, PA-based wireless medical technology company CardioNet against Lowell, MA-based patient monitoring tech developer InfoBionic. Judge Talwani dismissed the suit after CardioNet’s asserted patent, which covers systems and techniques for monitoring cardiac activity, was found to be directed to patent-ineligible subject matter under 35 U.S.C. § 101… CardioNet filed a motion for leave to file a supplemental brief in support of the eligibility of the ‘207 patent arguing that the Federal Circuit’s decisions in Aatrix Software v. Green Shades Software and Berkheimer v. HP changed Section 101 precedent impacting several aspects of the district court’s patent eligibility analysis. However, Judge Talwani denied CardioNet’s motion a few days after it was filed.

The U.S. Supreme Court denied a petition for writ of certiorari in Two-Way Media Ltd. v. Comcast Cable Communications, refusing to hear yet another appeal in a case involving a question of patent eligibility… Simply put, the answer to the first question asked by Two-Way Media in its Petition for Certiorari is absolutely not. There never has been a requirement that a patent claim must be — or even should be or can appropriately be — read in isolation. In fact, decisions that purport to ascertain the meaning of claim languagewithout the pomp and circumstance of Markman are openly violating the clear dictates of the Supreme Court. 

During the week of October 8, 2018,  there were five cases involving patents that were decided without an opinion as a result of Rule 36 affirmances at the United States Court of Appeals for the Federal Circuit. Three of those cases were issued by panels including Chief Judge Sharon Prost. In two cases, the Federal Circuit upheld district court invalidations of asserted patents whereas another two affirmed rejections of applicants claims by the U.S. Patent and Trademark Office. The last case was a summary affirmance of a victory by German drugmaker Erfindergemeinschaft UroPep over Eli Lilly in the Eastern District of Texas.

In early October, the Patent Trial and Appeal Board (PTAB) instituted a series of covered business method (CBM) reviews on patents owned by American stock exchange Nasdaq. The CBM reviews were petitioned by trading platform provider Miami International Holdings (MIAX) and challenge the validity of patents which Nasdaq has asserted against MIAX in U.S. district court.

If the claim is directed to an abstract idea, then abstractness is an essential property of the claimed subject matter as a whole. As such, a claim directed to an abstract idea cannot be transformed to possess non-abstractness by whether or not it embodies an inventive concept, since whether the inventive concept is inventive or not depends upon when the concept was conceived, which is an accidental property rather than an essential property of the claimed subject matter… Mayo may make sense for natural laws and physical phenomena but given the very different nature of abstract ideas the test logically falls apart when one thinks they can turn something that is by its fundamental nature abstract into something that is not abstract.

After nine years of costly legal proceedings the United States Patent Office denied the patent by misapplying the law.  The Court of Appeals for the Federal Circuit rubberstamped the Patent Office and issued an evasive non-precedential opinion—meaning this ruling does not apply to other cases.  The case is now appealed to the Supreme Court of the United States. While I am frustrated with the Patent Office, and the Federal Circuit, the real problem is that the U.S. Supreme Court has given conflicting guidance on patent eligibility despite the clear and unambiguous terms of § 101.

In early August, patent owner Smartflash filed a petition for a writ of certiorari with the U.S. Supreme Court to appeal a case stemming from covered business method (CBM) review proceedings carried out at the Patent Trial and Appeal Board (PTAB). Smartflash is asking the Supreme Court to decide whether PTAB administrative patent judges (APJs) are principal officers of the United States who are subject to the terms of the Appointment Clause, whether CBM review of patents disclosed prior to passage of the America Invents Act (AIA) violates the Fifth Amendment’s Due Process Clause, and whether undisputed evidence that an invention is not unduly preemptive is relevant to answer questions of patent eligibility under 35 U.S.C. § 101. At issue in this petition are a total of 30 CBM reviews petitioned by Apple, Samsung and Google against Smartflash, which were instituted by APJ panels at the PTAB.

contrary to popular notion, U.S. Patent No. 4,344,142 to James Diehr was not the first attempt to patent the idea of performing a real-time simulation of the Arrhenius equation using periodic temperature measurements of a rubber mold in order to cure rubber.  In fact, nearly two years prior to Diehr’s filing, Thomas Smith filed for a device that performed the very same algorithm using dedicated logic, which was granted as U.S. Patent No. 3,819,915. Smith was also granted U.S. Patent No. 4,022,555 for another rubber-curing device based on discrete logic. Similarly, William Claxton filed for patent protection in 1974 for an Arrhenius-based rubber-curing device using analog components, which issued as U.S. Patent No. 4,044,600.  

A conflict exists between the incentive to invent and the breadth of patent-eligible subject matter. It has become difficult to recognize the line between patentable subject matter and non-patentable products of nature. The Supreme Court has made conflicting statements regarding that line in its rulings in Funk Bros. and Myriad Genetics. It is time for the Supreme Court to resolve the inconsistencies in their rulings on 35 U.S.C. § 101… This case is an ideal vehicle for providing the clarification the patent and investment community require.  At issue is how to determine whether something is a product of nature under 35 U.S.C. § 101.

Just days prior to our interview an announcement was made that PTAB Chief Judge David Ruschke would be stepping down and assuming new responsibilities. “At the PTAB, we will have new leadership. For now, come September 2nd, the acting chief will be Scott Boalick, and the acting deputy chief will be Jackie Bonilla,” Director Iancu said. “We’re going to post the position, the vacancy. I want to encourage everybody out there, both inside the PTO and from the outside, who is interested, and thinks will do an excellent job, to apply. We are at the beginning of the process for finding new leadership at the PTAB.”

On Wednesday, August 15th, the Court of Appeals for the Federal Circuit issued a precedential decision in BSG Tech LLC v. BuySeasons, Inc. which upheld a decision by the district court to invalidate patent claims owned by BSG Tech as patent-ineligible under 35 U.S.C. § 101. The Federal Circuit panel of Circuit Judges Jimmie Reyna, Evan Wallach and Todd Hughes found that the district court correctly determined that patent claim asserted by BSG Tech were invalid as abstract ideas lacking any inventive step under the Alice/Mayo framework… The only allegedly unconventional feature of BSG Tech’s claims was the requirement that users are guided by summary comparison usage information, which was simply a restatement of the abstract idea identified under the first step of Alice/Mayo

Particularize the claims.  This helps overcome the “abstract” part of a 101 rejection. Put details into the claims to define the steps performed in the software and hardware to a granular degree.  Don’t claim a result; claim the steps performed in accomplishing the result. That is, define the software computer program and hardware in discrete steps. Define what’s going on in each step of the computer program code. Go to the level of a software design engineer that annotates their code, to inform others as to what’s going on in the code.  If there is an algorithm claimed, particularize the claims to include the steps performed in implementing the algorithm.

Repeatedly during his remarks and the question and answer period, Director Iancu explained that there will be more to come from the USPTO on patent eligibility and PTAB reforms, hopefully with several weeks he explained… “I certainly agree it is important to have certainty of patent rights,” Iancu explained. “The boundaries of a patent cannot possibly depend on the happenstance of which tribunal will review that patent years down the line…”

It’s been over eight years since the Supreme Court issued its Bilski v Kappos decision, over six years since the Supreme Court issued its Mayo v. Prometheus decision and over four years since the Supreme Court issued its Alice Corp. v. CLS Bank decision.  In case anyone missed it, each of these three landmark cases was decided based on evidence on the record.  Thus, the Supreme Court not only contemplated the need for evidence when determining patent eligibility for abstract ideas of man-made origin, but wholly embraced the practice. Yet despite the Supreme Court’s trio of evidence-based holdings, it was February of this year before a single three-judge Federal Circuit panel definitively ruled on the evidence issue in Berkheimer v. HP, and it was the end of May before a majority of the Federal Circuit signed on to the idea that determining whether a man-made something is well-understood (or well-known), routine and conventional is an issue of fact that should be based on objective evidence. That’s the better part of a decade of the Federal Circuit wandering the desert.