Posts Tagged: "patent office"

Since the Supreme Court’s Alice decision in 2014, inventors have faced extra hurdles trying to protect their software-related inventions with patents. A chief obstacle has been satisfying the two-part test for eligibility under Section 101 set forth in Alice and Mayo. To meet this test, claimed subject matter must not be directed to a judicial exception, such as an abstract idea, (Step One), and if it is, must add “significantly more” to provide an inventive concept (Step Two)…. Theodore Rand reported in IPWatchdog last week, a disturbing but not surprising trend. Rand found that, in 2020, 81% of software-related patents on appeal for subject matter eligibility in decided precedential cases (22 of 27) were found invalid. But in three cases, software-related patents were found drawn to eligible subject matter for patent purposes. Id. In each of the three cases, the appeals court pointed to aspects of the patent specifications themselves. Looking more closely at the representative claims and court’s comments with respect to the corresponding patent specification is illuminating. In particular, the court looked to the specifications for evidence of performance improvements over conventional systems, description of a technical problem/solution, and technological advantages.

Judge Kimberly Moore, in a comprehensive and insightful opinion dissenting from the denial of the petition for rehearing en banc in Athena Diagnostics, Inc. v. Mayo Collaborative Servs., 927 F.3d 1333 (2019), emphasized that the lack of clarity in Section 101 jurisprudence is one of the most critical issues in patent law. Sensing no interest by her colleagues in crafting an opinion with sufficient common denominators to provide instructions to trial judges on how to navigate the cross-currents created by Federal Circuit decisions post-Mayo/Alice, Judge Moore advised litigants: “Your only hope lies with the Supreme Court or Congress.” Id. at 1363. Not now. Several months after Athena, the USPTO took the initiative to issue a guidance document “October 2019 Update: Subject Matter Eligibility,” in response to requests by numerous stakeholders for more clarity and predictability. Consequently, in light of well-established Supreme Court precedent in administrative law, there is every reason for the Federal Circuit to now adopt the analysis of these Guidelines in future Section 101 cases.

Last week, the United States Patent and Trademark Office (USPTO) issued binding indefiniteness guidance in a memorandum from Director Andrei Iancu that addresses confusion about which indefiniteness standard applies in post-grant proceedings: the standard set forth in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) or in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Specifically, the memorandum confirms that the standard in Nautilus is the correct approach for analyzing indefiniteness in America Invents Act (AIA) post-grant proceedings.

On Friday, the U.S. Supreme Court granted a petition for certiorari filed by Minerva Surgical, Inc. asking the Court to clarify questions around the doctrine of assignor estoppel. Specifically, the petition presents the question “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”

Combining the holiday break, we see a steady 24 and 25 Patent Trial and Appeal Board (PTAB) petitions filed in the last two weeks, respectively, with 84 and 71 District Court complaints filed, respectively. The 84 was again bumped up roughly 10 by another round of WSOU filings, this time against Salesforce; otherwise it was the typical mix of small file-and-settle non-practicing entity (NPE) additions (mostly IP Edge, seemingly filling out some kind of annual quotas, and with a new campaign against shuttle services), bigger funded NPEs like Acacia and Dominion Harbor entities, small filers, and a smattering of company-company filings. Cedar Lane also ended the year strong, adding a few logs to the yule fire.

Eleven amicus briefs were docketed during the last two business days of 2020 in United States v. Arthrex, Inc., et al., which is scheduled for oral argument on March 1, 2021. Several of the briefs were filed by independent inventors, who implored the Court to acknowledge the stories of entrepreneurs and small inventors who have been adversely impacted by the Patent Trial and Appeal Board (PTAB), in part because Administrative Patent Judges (APJs) are presently unaccountable.

In Part I of this five-part series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. In Parts III and IV we discussed various implications of the types of subsequent applicants. And now, in Part V, we provide practice tips drawn from the case law cited in this series, as well as derived from omphaloskepsis.

On December 23, the United States Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the USPTO’s Patent Trial and Appeals Board (PTAB), holding that the PTAB’s conclusion that Raytheon Technology Corp.’s (Raytheon’s) patent was non-obvious lacked substantial evidence. See General Electric Company v. Raytheon Technologies Corporation. The CAFC also found that General Electric Company (GE) had alleged sufficient facts to establish that it was engaging in activity that created a substantial risk of future infringement, and therefore had standing to bring the appeal.

As the world bids good riddance to 2020, cursed as it has been by the COVID-19 pandemic and its attendant shutdown of major swathes of the globe’s economy, this list of the Top 10 Patents of 2020 hopefully serves as a reminder that—although the world has missed out on concerts and sporting events aplenty—this year has not been a wasted opportunity for inventors. The world of patent law may be steeped in the tradition of legal precedent but the technologies covered by patents themselves are forward-looking, promising days of driverless vehicle commutes, personalized cancer treatments and fewer awkward moments on Zoom calls. This list does not purport to be an authoritative collection of the most economically valuable technologies protected by patents during 2020, but it offers an honest assessment of technologies that may provide an array of social benefits to consumers long after we ring out the current year.

Novel and non-obvious can be easily used to describe the events of 2020, both here in the United States and around the world. Despite all the challenges, there have been positive developments in the way we conduct business—and that certainly was true at the U.S. Patent and Trademark Office (USPTO). Below we recap some of the most significant developments at the USPTO in 2020 and topics to keep an eye on in 2021.

The week before Christmas brought the biggest post-grant review (PGR) bulk filing to date, with 10 matters all stemming from a pharmaceutical dispute between Allergan and BTL Medical Technologies (and one other, unrelated). That’s a steady average of 30 inter partes reviews (IPRs) propped up by the glut of 11 PGRs stemming from that dispute, discussed below. The 81 district court cases were again propped up by WSOU adding their usual dozen or so complaints and a new defendant, this time adding Salesforce to their ever-growing campaign asserting some of their 4,000 or so Nokia patents against seemingly the entire world.

In Part I of this series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III discussed some of the implications of these for prosecution and litigation, and Part IV will examine some further implications. In the fifth and final installment in this series, we will distill all of the information covered to provide concrete practice tips for practitioners.

Greek philosopher Heraclitus is credited with saying “the only thing that is constant is change.”  In 2020, life for everyone changed, including for those in the intellectual property (IP) sphere. There were changes at the U.S. Patent and Trademark Office (USPTO), in IP litigation, client activities and business development. Looking into the crystal ball, we believe some of those changes are here for good, while others are not.

What intellectual property (IP) rights achieve, and for whom, is a mystery to most people, including heads of state. President-elect Biden’s ambitious plan to support all of America’s workers through R&D investment, inclusion and by combatting IP theft from China, ‘Made in All of America,’ is well-timed. But it is unlikely to have the desired impact without the backing of reliable IP rights. Biden’s initiatives will require capital and non-contentious licensing to succeed. Good intentions aside, without support from a fully functioning IP system, do not expect America’s workers to be in a position to cash in on research and startups or to challenge China’s stated goal to dominate in areas of innovation and technology by 2025.  

December remains a light month at the Patent Trial and Appeal Board (PTAB), with just 16 petitions filed last week, 15 inter partes reviews (IPRs) and one post grant review (PGR). District court cases were steady, with 62, propped up by a new banking campaign by Raymond Anthony Joao, detailed below. On the policy front were rumors of a last-minute extension of the covered business method patents program (CBM) being worked into the lame-duck session, but it was unclear whether that was just the rumor mill reacting to Innovation Alliance’s posting of a counter-statement and fact sheet lobbying against an extension so late in the year, or some actual threat of an extension being passed at the eleventh hour. Separately, the Intellectual Property Owners Association (IPO) posted a series of qualities it seeks in a new USPTO Director—mostly generic—including at least 15 years of patent lawyer experience, something I personally think excludes many phenomenal candidates from industry, business, and the inventor community.