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Guest Contributors

The Patent Drafting Disclosure Revolution: Don’t Ask Alice

Posted: Tuesday, Sep 30, 2014 @ 8:00 am | Written by Joseph Root | 4 comments
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Joseph Root, Patent Drafting, Patents

EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. This is the seventh installment of this series. To read other installments please see Joseph Root on Patent Claim Drafting.

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No question exists that patent eligibility under Section 101 has been, and remains, the most active question in patent law. Watching the rapid flow of cases back and forth between the Federal Circuit and the Supreme Court exceeds the excitement generated by most TV shows in sheer entertainment value. The only question open for discussion is whether we are watching “Game of Thrones,” “Survivor”, or “Modern Family.” Actually, the best choice may be “Lost”.

To understand the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, a page of history provides more illumination than a book of Lewis Carroll references. Here we need to pick up at the point when everyone thought the computer patentability wars were over.

By the late 1990’s, the last frontier was business methods. We had absorbed Diamond v. Diehr and moved on to Beauregard claims and propagated signals. Everyone was making, or wanted to be making, tons of money in the Dot.Con era, and little patience remained for outdated rules.



Eternal Vigilance is the Price of Bayh-Dole

Posted: Sunday, Sep 28, 2014 @ 8:00 am | Written by Joseph Allen | 2 comments
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Posted in: AUTM, Bayh-Dole, Guest Contributors, IP News, IPWatchdog.com Articles, Joe Allen, Legislation, Licensing, Patent Business & Deals, Patents, Universities, US Economy

Editorial Note: This month’s column from Joe Allen comes from his plenary address to the Eastern regional meeting of the Association of University Technology Managers, which took place in Baltimore, Maryland, on September 18, 2014. CLICK HERE to view his PowerPoint presentation, which includes facts and figures that support the positions taken in this article.

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They say when speaking that you should repeat your message at least three times. Here’s the first: Bayh-Dole has succeeded beyond anyone’s wildest imagination. It was not created to benefit universities but the American taxpayer. You are the stewards of a public trust and have an obligation to defend and protect the law in the same way as the Founders of AUTM protected it for you.

Research universities are now recognized drivers of our economy and your discoveries improve lives around the world, but that wasn’t always the case. The reason is the Bayh-Dole Act which gives certainty and predictability to the ownership and management of publicly funded inventions so they can move from the lab into the marketplace.

Last week I was speaking in Brazil which adopted a technology transfer law to spur university-industry partnerships. Unlike Bayh-Dole theirs is full of uncertainty which is undermining its impact. I explained that having clearly stated rules is an essential ingredient for success because companies are undertaking a tremendous risk when turning university technologies into useful products. The time and expense of development is borne by the business—not the government or the university. Companies cannot justify this effort when the bureaucracy inserts itself between a university and its industry partner. That was the situation in the US before enactment of Bayh-Dole and it caused the benefits from billions of dollars of taxpayer supported research to go right down the drain.



The Impact of the Alice Decision on Corporate Patent Assets

Posted: Friday, Sep 26, 2014 @ 8:00 am | Written by Efrat Kasznik | 26 comments
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Patents

The Supreme Court’s Alice decision has introduced a dimension of uncertainty associated with the validity of many of the software patents held by operating companies today. There seems to be a consensus among some of the leading academic and judiciary experts supporting that conclusion, as seen in recent comments made by Stanford Law School’s Prof. Mark Lemley, as well as in recent comments by former Federal Circuit Chief Judge Michel. From a valuation and financial reporting perspective, there needs to be a serious examination of the post-Alice landscape implications on the value of patents as corporate assets. The results of such examination may lead to further action – which could range anywhere from additional disclosure requirements by regulators, all the way to actual corporate asset write-offs. This article highlights some of the key issues that need to be addressed by companies and regulators.



The Broken Patent-Eligibility Test of Alice and Mayo: Why We Urgently Need to Return to Principles of Diehr and Chakrabarty*

Posted: Thursday, Sep 25, 2014 @ 8:00 am | Written by Eric Guttag | 21 comments
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Posted in: Eric Guttag, Government, Guest Contributors, IP News, IPWatchdog.com Articles, Patentability, Patents, US Supreme Court

Chief Justice Warren Burger (L) authored Diamond v. Chakrabarty, while then Justice William Rehnquist (R) authored Diamond v. Diehr.

For those in the patent law world who may have been hiding under a rock, we have been flooded recently with lower court rulings on patent-eligibility under 35 U.S.C. § 101 after Alice Corp. v. CLS Bank International. Like a tsunami, these lower court rulings are uniformly sweeping away any patent in its wake as being directed to merely an “abstract idea” that doesn’t provide “something more.” Those quoted words are taken from Our Judicial Mount Olympus’ two-part test in Alice which is derived largely in part from the so-called “framework” of Mayo Collaborative Services v. Prometheus Laboratories, Inc. for separating patent-ineligible “claims to laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” See Ignorance Is Not Bliss: Alice Corp. v. CLS Bank International*

Briefly, the two-part Alice test says: (1) “determine whether the claims at issue are directed to one of those patent-ineligible concepts”; and (2) “search for the ‘inventive concept’ —i.e., “an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” In every court case I’ve read so far, all of those lower court rulings have dogmatically (and restrictively) applied this two-part Alice test to rule the patent claims on systems and/or methods (all involving so-called “business methods”) to be patent-ineligible under 35 U.S.C. § 101. In fact, I’ve only seen one reported PTAB decision (U.S. Bancorp. v. Solutran, Inc.) where patent claims on systems and/or methods involving these so-called “business methods” passed muster under this two-part Alice test.



Why Brands Need to Pay Attention to Unregulated Domains

Posted: Wednesday, Sep 24, 2014 @ 1:53 pm | Written by Monica Talley | 4 comments
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Posted in: Guest Contributors, Internet, IP News, IPWatchdog.com Articles, Technology & Innovation

While much attention has been focused on ICANN’s new gTLD program and the transfer of IANA function to ICANN, a new domain structure positioned outside ICANN’s purview is being developed with the possibility to significantly impact brands and businesses.

The ‘.bit’ domain, a new decentralized domain structure, has secured a small but loyal following, and could one day change the way brands operate online. .bit registrations are not associated with a name, address, or phone number, but are linked to a cryptographic identity, preserving anonymity. Unlike customary domains – such as ‘.com’ – ‘.bit’ cannot be accessed from traditional web browsers or registered using traditional currency. Instead, individuals attempting to gain access to these domains must first download specialized software that allows access to the sites using Windows browsers, and pay for the registration with a crypto currency called Namecoin.



A Big Change in the ANDA Litigation Paradigm: Lex Machina’s Legal Analytics

Posted: Wednesday, Sep 24, 2014 @ 12:48 pm | Written by Steve Moore | No Comments »
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Posted in: ANDA Litigation and Issues, Guest Contributors, IPWatchdog.com Articles, Patent Litigation, Patents, Steve Moore

EDITORIAL NOTE: On September 30, 2014, Steve Moore will participate in a webcast with Omar Jabri, Senior Patent Counsel, Global Intellectual Property, at Apotex, and Owen Byrd, General Counsel of Lex Machina, on the new ANDA-specific capabilities of Lex Machina’s Legal Analytics platform. You can CLICK HERE to register for the webcast.

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Lex Machina (emphasize the “Mach” followed by “ina”) is a legal technology platform that emerged from a collaboration between experts at Stanford’s Computer Science Department and Law School.  Every day, Lex Machina captures data from PACER, the ITC’s EDIS system and the USPTO website.  This data is cleansed, coded and tagged, using a proprietary natural language processing and machine learning engine, to provide information about districts, judges, attorneys, law firms and parties, as well as asserted patents.  It also sets out in an easy format the outcomes of each case.  The tool allows one to search briefs, motions, orders, and every other type of filing made in a litigation by judge, court, attorney etc.   As an early adopter, I have seen this product move from a useful information source that provided me information that supplemented standard research tools, to a tool that I now find indispensible to my practice.

I started in patent litigation 25 years ago.  At that time, the best analytics available to any patent litigator was to walk up and down the hallway seeking out attorneys who may have had a case before a particular judge or against an opposing party or counsel. Much of the information we relayed to our clients was often little more than conjecture, based on the feelings of the person whom we communicated with, and the necessary supposition we had to make that a judge today would react as he or she had 10 years earlier.  Likewise, we often relayed information to our clients about opposing counsel based on the premise that the particular attorney we were facing would act more in line with reputation of their firms, then as they may actually act as an individual attorney. Out of necessity, we often made the leap that a judge viewed all patent cases as the same, and that they resolved a motion in an electrical case in a similar manner as they resolved the same in an ANDA litigation.



Patent Drafting: Getting the Broadest Supportable Claim Scope

Posted: Tuesday, Sep 23, 2014 @ 8:00 am | Written by Joseph Root | 1 Comment »
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Joseph Root, Patent Drafting, Patents

EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. This is the sixth installment of this series. To read other installments please see Joseph Root on Patent Claim Drafting.

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Broad patent coverage results from broad claims, supported by a broad specification. Neither of these factors springs from the invocation of any magic formula. Rather, breadth results from hard, careful work. This section sets out a group of signposts that a drafter can employ to gauge whether she is writing, or has written, a broad patent document.

“Broad” in this context means “broadest supportable” coverage, limited only by the technology in terms of supportability and by the prior art in terms of outer reach. A failure to achieve such breadth is generally attributable to overclaiming, where one runs afoul of the prior art; underclaiming, where the drafter stop short of claiming all he could; or faulty claiming, where the drafter attempts to achieve breadth, but support issues or drafting errors restrict claim scope. Sound principles, instilled by effective training, cannot substitute for adequate knowledge of the prior art. They can provide the knowledge and thus the confidence to claim out to the limits defined by that art.



Enter the Sandman: USPTO Unhittable in Reciprocal Discipline Proceedings

Posted: Monday, Sep 22, 2014 @ 9:00 am | Written by Michael E. McCabe, Jr. | 7 comments
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Office of Enrollment and Discipline, Patents, USPTO

Mariano Rivera knows something about perfection. The New York Yankees now-retired pitcher is regarded by many experts as the greatest closer in the history of major league baseball. For those who are not aficionados of America’s Pastime, the closer comes in after the game has largely been played, and his sole job is to get the last several opposing batters out. For seventeen seasons, Mariano Rivera (a.k.a. “the Sandman”) dominated at his position and was virtually unhittable.

The USPTO Director also knows something about perfection, albeit in a far different context than baseball. For six years, the USPTO Director has dominated opposing patent practitioners, who have gone hitless against the Office in cases involving reciprocal ethical discipline.

Reciprocal discipline” is a process for disciplining an attorney in a second jurisdiction after the attorney has been ethically disciplined by another jurisdiction. A patent or trademark attorney who is publicly disciplined in another jurisdiction is subject to reciprocal discipline by the USPTO, even if the attorney’s conduct has nothing to do with their practice before the Office. And while it is theoretically possible for a patent or trademark practitioner to avoid reciprocal discipline in the USPTO, in reality they would have a better chance of hitting a Rivera cut fastball blindfolded with one arm tied. To date, the USPTO’s record in Section 11.24 cases is a perfect 77-0, and counting. Practitioners, meet the “Sandman.”



USPTO Considering Changes to PTAB Rules

Posted: Monday, Sep 22, 2014 @ 8:00 am | Written by Steve Brachmann | No Comments »
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Posted in: Government, Guest Contributors, IP News, IPWatchdog.com Articles, Patent Trial and Appeal Board, Patents, Post Grant Procedures, Steve Brachmann, USPTO

EDITOR’S NOTE: Gene Quinn will host a free webinar discussion about the PTAB past, present and future with Scott McKeown on Tuesday, September 23, 2014 at 11:00 am Eastern. You can register by CLICKING HERE.

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At the end of July, the Patent Trial and Appeal Board (PTAB) hosted a press conference to discuss ongoing progress with patent trials which have been or are being conducted under the terms of the America Invents Act (AIA). Scott Boalick, Acting Vice Chief Judge of the PTAB and head of the PTAB’s Trial Section, answered questions from the audience on various aspects of the AIA trials, as well as offer questions for public comments being sought by the U.S. Patent and Trademark Office in its attempts to determine how and if the AIA patent proceedings can be improved.

The online webinar was not the first time that the PTAB and USPTO have worked to gain feedback from various stakeholders on the progress of AIA trials. Earlier in spring and early summer of this year, representatives of the PTAB attended eight roundtable discussions in cities across the United States. Although one goal of these meetings was to educate the public about AIA trial proceedings, the PTAB was also interested in collecting feedback from those involved in trial proceedings. Of great importance to the board is methods of making these trial proceedings more effective at challenging patent validity than filing cases in district courts; encouraging the use of these type of legal proceedings is a major goal of the law.

Under the America Invents Act, it is possible to challenge the validity of a patent after its issuance. Some have argued in the past that allowing for third-party input in this way could improve patent quality, even after a patent is issued. However, with litigation involving patent validity as such a major issue in recent weeks, it’s understandable why the PTAB would reach out to stakeholders and see if the rules were serving them well.



Big Banks Get Software Patents Despite Alice

Posted: Friday, Sep 19, 2014 @ 11:36 am | Written by Steve Brachmann | No Comments »
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Posted in: Bank of America, Companies We Follow, Financial Services, Guest Contributors, IP News, IPWatchdog.com Articles, JP Morgan Chase, Patents, Software, Steve Brachmann, Technology & Innovation, Wells Fargo

Financial services are one of the more interesting areas of innovation which we touch on in IPWatchdog’s Companies We Follow series. Many unique products and services for both individual consumers and business organizations are patent-protected, and a number of American banking institutions are regular applicants at the U.S. Patent and Trademark Office. In our most recent look into the state of financial innovation in America, we sought out the most intriguing patent applications or patents assigned to the Bank of America Corporation, JPMorgan Chase Bank and Wells Fargo Bank. What becomes clear is that the Supreme Court decision in Alice v. CLS Bank does not seem to have slowed the allowance of financial services software patents to these and other major banking institutions.

Each of these major banking institutions have increasingly incorporated digital technologies into their financial services offerings, a development we visit in more detail below. All three of these banks have partnered with Apple for the development of the Apple Pay system, allowing iPhone users to conduct transactions directly from their device. The total transaction volume of the six banks in total that are using Apple Pay represents about 83 percent of America’s total credit card transaction volume. In other, more discouraging, technology news related to major American banks, it was recently reported that hackers were able to gain access to dozens of JPMorgan Chase servers, although no theft or fraud has been reported as a result.