Posts Tagged: "patent eligible"

Last week was a big one for the potential future of the U.S. patent system. The deadline for comments on the U.S. Patent and Trademark Office’s (USPTO’s) Advance Notice of Proposed Rulemaking (ANPRM) on “Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings before the Patent Trial and Appeal Board [PTAB]” was Tuesday, June 20…. Then, on Thursday, Senators Thom Tillis (R-NC), Chris Coons (D-DE), with some help from their colleagues, introduced two new bills that would have major implications for patent eligibility law and PTAB practices, respectively. Below are some other perspectives from a range of IP stakeholders.

Last week, retired U.S. Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel and law professor John F. Duffy filed an amicus brief with the U.S. Supreme Court in support of CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University. The company and university are asking the Supreme Court to review a 2022 decision invalidating claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient. In the amicus brief, Michel and Duffy wrote, “this case concerns [us] because it represents a continuing trend of uncertainty and inconsistency in patent-eligibility jurisprudence…The outcome undermines the innovation promoting goals of U.S. patent law.”

On day one of IPWatchdog’s Patent Litigation Masters program yesterday, the U.S. Supreme Court denied two patent eligibility cases that the U.S. Solicitor General had recommended granting. The denials make it fairly clear that the High Court is not interested in helping to resolve the current problems with U.S. patent eligibility law, which generally have to do with a lack of clarity, arguably fostered by many of the Court’s own precedents. Following the last panel of the day on Monday, in which speakers discussed ways to improve and streamline patent enforcement in America, retired U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel told IPWatchdog he thinks the Supreme Court’s refusal to take up patent eligibility is self-serving. “I think the Court doesn’t want to admit they messed up the law in the four decisions – Bilski, Myriad, Mayo and Alice. They don’t even admit that it’s a big problem, but it is a huge problem, and everybody in the patent world knows it’s a huge problem,” Michel said.

On May 15, the U.S. Supreme Court issued an order list denying petitions for writ of certiorari filed to appeal several patent rulings, including a pair of 35 U.S.C. § 101 subject matter eligibility cases that the U.S. Solicitor General previously urged the nation’s highest court to hear. The Supreme Court also denied Teva Pharmaceuticals’ petition to review its appeal of the Federal Circuit’s “skinny label” induced infringement ruling over its generic version of carvedilol. While the full Court denied certiorari to these cases, the order list notes that Associate Justice Brett Kavanaugh would have granted cert to these three petitions.

Last month, the U.S. Department of Justice filed an amicus brief with the Supreme Court urging the Court to accept a certiorari case relating to patent eligibility. See Interactive Wearables, LLC v. Polar Electro Oy, et al, and David A. Tropp v. Travel Sentry, Inc., Nos. 21-1281 and 22-22. In each of these cases, which were separate from one another, the U.S. Court of Appeals for the Federal Circuit ruled the patents to be ineligible as being abstract ideas, and thus an exception to Section 101 patentable subject matter. This amicus brief follows an earlier amicus brief from the Justice Department, in May 2022, also supporting the petition for certiorari on a patent found by the Federal Circuit to be an abstract idea, and therefore not patentable under Section 101.

On May 8, digital ID solutions company Avery Dennison filed a reply brief with the U.S. Supreme Court in support of its petition for writ of certiorari to appeal the U.S. Court of Appeals for the Federal Circuit’s decision last December affirming the validity of patent claims owned by ADASA. Of the cert petitions currently before the Supreme Court involving issues of patent subject matter eligibility under 35 U.S.C. § 101, Avery Dennison contends that its appeal provides the most useful vehicle for clarifying Section 101 invalidity in information management and technology, a field where the Federal Circuit’s division on patent eligibility “is especially stark and recurrent.”

CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University earlier this week filed a petition for certiorari with the U.S. Supreme Court asking the justices to review a 2022 decision holding certain claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient patent ineligible.

United States Patent and Trademark Office (USPTO) Director Kathi Vidal issued a sua sponte Director Review decision on Tuesday explaining that the Patent Trial and Appeal Board’s (PTAB’s) reading of the inter partes review (IPR) statute was incorrect, and directing the Board to revisit a petition brought by Volvo Penta of the Americas, LLC and to analyze the Fintiv factors in view of a parallel district court proceeding.

In late February, Avery Dennison corporation petitioned the U.S. Supreme Court to grant certiorari in its appeal of a decision upholding ADASA, Inc.’s patent for Radio Frequency Identification Device (RFID) technology as patent eligible. ADASA has now responded, telling the High Court that the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision in the case “is a beacon of clarity and oasis of correct legal analysis, not a plea for this Court’s intervention.” Avery Dennison said the CAFC’s decision “illustrates the depths of the Federal Circuit’s division” and represents “the other side of the coin” in the eligibility debate. While SCOTUS petitions on eligibility have traditionally focused on uncertainty due to the CAFC’s too-narrow view of the law and tendency to invalidate patents under Section 101, Avery Dennison’s petition takes the position that the Federal Circuit’s reading of 101 is too broad.

Jeffrey Killian yesterday submitted a petition for writ of certiorari to the United States Supreme Court asking the Court to provide clear guidance on or else throw out the Alice/Mayo test for patent eligibility. Killian is involved in an ongoing patent dispute in which the Patent Trial and Appeal Board (PTAB) rejected claims of his  U.S. Patent Application No. 14/450,042 under Section 101. The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the ruling in August 2022. In the petition, Killian claims that the U.S. Patent and Trademark Office (USPTO) violated Supreme Court precedent by ruling the patent application ineligible under the Alice/Mayo test.

On April 12, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in Sequoia Technology, LLC v. Dell, Inc. reversing part of a District of Delaware ruling invalidating digital storage patent claims owned by Sequoia under 35 U.S.C. § 101. Although the ruling restores Sequoia’s rights to the patent claims at issue in the case, the Federal Circuit affirmed portions of the district court’s claim construction order that had supported a finding that Dell and other defendants did not infringe upon Sequoia’s asserted patent claims.

On Wednesday, April 5, the United States Solicitor General (SG) recommended that the U.S. Supreme Court grant certiorari in two patent eligibility cases in order to “clarify the proper reach and application of the abstract-idea exception to patent eligibility under Section 101.” The SG filed the same brief in each of the two cases, Interactive Wearables, LLC v. Polar Electric Oy and David A. Tropp v. Travel Sentry, Inc. et. al.

Panelists at IPWatchdog’s Artificial Intelligence Masters Program today debated how artificial intelligence (AI) interacts with intellectual property protection, and how laws around who (or what) can be an inventor or creator, as well as areas like patent eligibility, will need to evolve to ensure the continued “gold standard” status of the U.S. IP system. Attorneys working on some of the biggest cases in the AI space today took part in day one of AI Masters, including Professor Ryan Abbott, who is representing Stephen Thaler in his myriad of cases involving the AI machine, DABUS, both in the United States and elsewhere, and Van Lindberg, who represented Kristina Kashtanova in their recent bid to copyright a partially AI-generated graphic novel.

A manufacturer of Radio Frequency Identification Device transponders (RFIDs), Avery Dennison Corporation, yesterday petitioned the U.S. Supreme Court to grant certiorari in its appeal of a decision upholding ADASA, Inc.’s patent for RFID technology as patent eligible. Avery Dennison is urging the Court to take up the case, which it says “illustrates the depths of the Federal Circuit’s division” and represents “the other side of the coin” in the eligibility debate, in order to balance competing perspectives. While past and present petitions to the Court on eligibility have traditionally focused on uncertainty due to the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) too-narrow view of the law and tendency to invalidate patents under Section 101, Avery Dennison’s petition takes the view that the Federal Circuit’s reading of 101 is too broad.