Posts Tagged: "independent inventor"

On Tuesday, I attended a panel discussion on the National Security Implications of Patents along with my siblings, Madeline and Gideon Malone, and we were informed that inventors like the Wright brothers pose a threat to innovation. We were joined by approximately 50 attendees at the Capitol event moderated by Charles Duan from R Street Institute, along with panelists Abby Rives from Engine, Daniel Takash from Niskanen Center, and Ian Wallace from New America. They argued that patents harm innovation, and government subsidies are a better alternative to incentivize innovation. In order for R Street (a free-market think tank) to justify these blatantly anti-free-market claims, they focused on the problems with “bad patents” and how patent monopolies prevent competition. To top it all off, their example of a “bad patent” was the one granted to the Wright brothers, which the panelists felt unreasonably excluded their competitors from making improved versions of their airplane.

On Monday, the U.S. Supreme Court denied a petition for certiorari filed by Imperium IP Holdings (Cayman) Ltd., thus letting stand a U.S. Court of Appeals for the Federal Circuit decision that reversed a more than $22 million enhanced damages award against Samsung. Imperium Holdings petitioned the Supreme Court in July seeking to overturn the January 2019 Federal Circuit ruling that agreed with Samsung’s argument “that the only reasonable finding on this record is that the ’884 patent claims at issue here are invalid for anticipation,” largely due to the Court’s interpretation of the expert witness testimony during the jury trial. “Juries have wide leeway to assess evidence and credibility,” said the Court, “but under the requirement of substantial evidence, a jury’s rejection of expert testimony must have some reasonable basis.”

On September 26, the U.S. Patent and Trademark Office filed a motion to dismiss a class action complaint  filed by two inventors alleging violations of the Privacy Act created by the agency’s handling of its Sensitive Application Warning System (SAWS). The USPTO is seeking a Rule 12(b)(6) dismissal for failure to state a claim, arguing that application flags under the SAWS program don’t concern individual patent applicants and that omission of those flags from patent application files isn’t the proximate cause of adverse determinations such as increased scrutiny holding up patent grants. The case was first filed this June in the U.S. District Court for the District of Columbia by Paul Morinville and Gil Hyatt, two inventors who allege that they have filed patent applications on inventions that have been flagged by the SAWS program. Morinville is an inventor on nine patents who has had 26 patent applications pending at the USPTO since February 2000. Hyatt is listed as an inventor on 70 patent applications and has had patent applications pending at the agency since 1990. Hyatt was first informed that he had patent applications flagged by the SAWS system in June 2017, more than two years after the USPTO officially retired the SAWS program.

In May, the USPTO held the first of three hearings prompted by the Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act, which requires the USPTO Director to provide Congress with a report on publicly available patent data on women, minorities, and veterans, and to provide recommendations on how to promote their participation in the patent system. The hearing featured emotional testimony from five inventors, one of whom said she had joined Debtors Anonymous as a result of her patent being invalidated in the Southern District of New York.Responses to the USPTO’s request for written comment on 11 questions the Office had posed have now been published. Eleven organizations and 58 individuals submitted comments, underscoring a range of concerns. While many organizations focused on the need to collect demographic information and increase exposure to STEM education at the K-12 level, a number of other organizations and individuals emphasized the broader issue that was addressed during the hearing in May—that the current patent system is stacked against the individual inventor across demographics.

The “Support Technology and Research for Our Nation’s Growth and Economic Resilience Patents Act of 2019” or the “STRONGER Patents Act of 2019,” currently under consideration as Senate Bill 2082 and House Resolution 3666, poses questions about the types of decisions that would operate to bar inter partes review (IPR) and post-grant review (PGR) of patent claims. The STRONGER Patents Act is an effort to cure some of the perceived infirmities in the U.S. patent system. While prior versions—introduced in 2015 and 2017—were more wide-ranging, the STRONGER Patents Act of 2019 primarily focuses on the availability of injunctive relief and the susceptibility of patents to IPR and PGR. Among other changes, the bill would effectively overrule the Supreme Court’s eBay v. MercExchange decision, require inter partes and post-grant review petitioners to prove invalidity by clear and convincing evidence, permit only one such review of any given patent claim, and purport to finally end the occasional practice of diverting some the USPTO fees from its operations. While much can (and has) been written about the merits of such reforms, the present comment specifically considers the proposed “Priority of Federal Court Validity Determinations.”

This week in Washington D.C., the Congressional hearings schedule is empty as both the U.S. Senate and the U.S. House of Representatives enter work periods. However, Monday kicks off with a pair of think tank events on global technology issues at the Center for Strategic and International Studies and the Atlantic Council. The Brookings Institution hosts a pair of tech-related events this week—one focused on threats to democracy through digital capitalism and the other exploring how tech policy has altered the U.S.-China relationship. Other events include a look at securing supply chains for information and communication technology at the Carnegie Endowment for International Peace and a look at the future of the Marine Corps at The Heritage Foundation.

Recently, the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) issued its opinion in Solutran, Inc. v. Elavon, Inc., 2019-1345, 2019-1460 (Fed. Cir., July 30, 2019) in which the Court held claims 1-5 of Solutran’s U.S. Patent No. 8,311,945 invalid under 35 U.S.C. § 101 for failing to recite patent eligible subject matter. In reversing the District Court, the Federal Circuit found that the claims of the patent recited an abstract idea (electronically processing paper checks) and that the claims failed to transform that abstract idea into patent-eligible subject matter. More importantly, the Federal Circuit dismissed Solutran’s argument that the claims were patent eligible simply because they were novel and non-obvious, noting that: “We have previously explained that merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.” The Solutran decision is not the first time the Federal Circuit has held that novelty/non-obviousness does not bear on the question of patent eligibility.

In order to obtain exclusive rights on an invention, you must file for and obtain a patent. Many inventors will initially opt to file a provisional patent application to initiate the application process, which is a perfectly reasonable decision to make, and will result in a “patent pending” that can even result in a licensing deal. Ultimately, if a patent is desired, a nonprovisional patent application must be filed, and it is this nonprovisional patent application that will mature into an issued patent. U.S. patent laws require that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.

Something has happened at the United States Court of Appeals for the Federal Circuit over the past six months. After inching forward in a positive direction on patent eligibility, the entire court, including those judges who had been on the pro-patent eligibility wing of the court, have fallen, slipped, or just given up. The precisely correct characterization remains elusive given the traditional, characteristic and appropriate secrecy that surrounds judicial tribunals. As constitutional officers charged with independently deciding cases, judges take few speaking engagements. Even when they do, they generally speak off the record, and never speak about specific issues or cases that may at some point come before them. In this industry, that means little discussion is had between the bench and bar relating to matters of patent eligibility outside the record, which is itself unfortunate. If the judges of the Federal Circuit would sit through a conference exploring patent eligibility as it applies to the software and biotechnology industries, they would learn much about the uncertainty their decisions are causing. Still, something undeniably has changed.

Patent application drafters are front-line participants to some of the most amazing innovations in the world today. A recent WIPO paper on Artificial Intelligence (AI) outlines how we are filing for patents on knowledge automation at an increasing rate. Our current tools, however, do not reflect the innovations with which we are so familiar. Historically—and to this day—the process of drafting a patent application has been a manual task. It is a task that takes, on average, 40 hours of a highly-skilled patent application drafter’s time. Anyone who has drafted any volume of patent applications for a client knows that the drafting process typically involves the use of boilerplate language and substantial copy and paste operations. While performing these repetitive tasks, we have all thought: “there must be a better way.” While we find ourselves surprised by the lack of tools to help with patent application drafting, we recognize the challenges that must be overcome. Different attorneys, firms, and clients often have different styles and preferences when it comes to the way patent applications are drafted. Thus, any automation tools would necessarily need to handle these different styles and preferences. But these challenges notwithstanding, the days of drafting a patent application completely manually by a single patent drafter are coming to an end.

It is time to recognize the elephant in the room. The Patent Trial and Appeal Board (PTAB) is broken. And, if we want to be perfectly fair and reasonable in our assessment of the reasons that the PTAB is failing, the blame must trace all the way back to Congress. The creation of three new ways to invalidate patent rights was at best ill-conceived. The manner in which it was done clearly put the finger of infringers on the scale of justice. The creation of an open-ended second window for patents to endlessly be challenged without title ever quieting and ownership ever settling is making a mockery of patent ownership.

USPTO Director Andrei Iancu said “something has to be done about” Section 101, as it has been thrown into flux following various U.S. Supreme Court cases, in comments made at the AIPPI Congress in London, United Kingdom last week. Iancu took part in an hour-long discussion with AIPPI Reporter General John Osha, and also took questions from the audience last Monday. He addressed topics including AI, anti-IP sentiment, litigation costs, bad faith trademark filings and gender parity. But it was issues of patent eligibility that were chief on his mind. Iancu said the Administration “has tried to bring consistency and predictability” to Section 101 with its January 2019 guidance, but added: “Courts are independent. They don’t have to follow our guidance. And so far, I have seen no evidence that they want to.”

The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea. While ideas are not patentable, there will be a point in time when the idea you are working on comes so into focus  with enough detail that it will cross the idea / invention boundary.  It is when an idea matures to the point of being concrete and tangible enough to be described to another that the idea has become an invention, at least in general terms.

Yesterday, the Federal Circuit once again breached a fundamental boundary of our American system of law. This particular transgression has occurred only a handful of times, but each is more ominous than the last. If this is allowed to stand, we can no longer be considered a democratic republic, but will have become a banana republic. What is rapidly becoming routine to the patent litigation industry will create shockwaves throughout the other 12 circuit courts, upend the rule of law, and damage our nation. In Chrimar Systems, Inc. v. Ale USA, Inc. FKA Alcatel-Lucent Enterprise USA, Inc. (Fed. Circ. Case No. 18-2420), the Federal Circuit allowed the Patent Trial and Appeal Board (PTAB) to overrule an Article III court and jury. That is, the Executive Branch of government directly and unequivocally has overruled the Judicial Branch, including a jury.

The bipartisan STRONGER Patents Act of 2019 took an important step forward last week, as the Senate Judiciary Subcommittee on Intellectual Property held a hearing on the proposed legislation. Senators Tillis and Coons, the Subcommittee’s Chairman and Ranking Member, should be commended for holding the hearing and focusing attention on our patent system’s role in promoting American innovation and job creation. As several of the hearing witnesses made clear in their testimony, our patent system has been dangerously weakened in recent years through a series of judicial, legislative, and administrative changes. These changes have undermined patent rights and made it difficult for inventors to protect their innovations from infringement. Meanwhile, our foreign competitors, including China and Europe, have strengthened their patent rights. This has put us at a competitive disadvantage and helped contribute to a trend of both innovation and venture capital increasingly moving overseas. For example, the U.S. share of global venture capital fell from 66% in 2010 to 40% in 2018, while China’s share increased from 12% to 38% in the same time period. And despite more than a decade of economic growth following the Great Recession of 2007-2009, startup formation has failed to return to its pre-recession levels.