Posts Tagged: "Patentability"

In an IPWatchDog post of September 6, 2022, Anthony Prosser and I traced the history of the doctrine of “Non-Statutory Judicially Created Obviousness-Type Double Patenting” (ODP). We confirmed (as its name indicates) that no Congressional statute has ever codified this doctrine. It is ultra vires because Congress has the sole right to create patent law…. In the Cellect decision issued yesterday, the Federal Circuit stretches the word “disclaimer” in Section154(b)(2)(B) beyond credibility as justification for the ODP doctrine itself and assumes that is what Congress was talking about without actually saying it (stating with agreement that “The Board also reasoned that terminal disclaimers arise almost exclusively in situations to overcome ODP rejections, and so Congress, by addressing terminal disclaimers in §154, effectively addresses ODP”).

Pfizer, Inc. and BioNTech SE on Monday hit back at competitor COVID-19 vaccine maker Moderna with inter partes review (IPR) petitions against two Moderna patents on mRNA vaccine technology at the Patent Trial and Appeal Board (PTAB). Pfizer/ BioNTech told the PTAB that Moderna’s patents include “unimaginably broad claims directed to a basic idea” and asked the Board to cancel all of the challenged claims of both patents.  

The Supreme Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s longstanding requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions with such clarity and specificity as to enable one skilled in the art to make and use the claimed invention. Moreover, the Court has consistently held that a patent fails to satisfy the enablement requirement if a person having ordinary skill must engage in undue experimentation to practice the claimed invention. The Federal Circuit has gone a step further, requiring that patents enable the full scope of a claimed invention. Amgen is a ratification of this aspect of the Federal Circuit’s enablement jurisprudence.

Recovering money from users of technology requires movement on the part of inventors of technology. For example, receiving compensation from those who use patented designs without permission often requires patent owners (e.g., inventors) to send cease and desist letters, file complaints in federal district court, and at times endure patent litigation to its completion. All of these movements require the inventor to possess a patent. In this manner, one way to view the patent is as a vehicle in commerce.

As most in the IP world know by now, the U.S. Supreme Court issued its ruling in Amgen v. Sanofi on Thursday, holding that the U.S. Court of Appeals for the Federal Circuit (CAFC) was correct in finding that Amgen’s patents for its popular cholesterol drug failed to meet the enablement requirement…. IP practitioners diverge on the degree to which the decision will change patent practice in the biotech industry going forward, with some claiming the Court merely reiterated the existing law on enablement, and others saying it represents a major shift.

Just like utility patents, design patents can be found obvious under 35 U.S.C. § 103 by combining prior art references. But the test for obviousness for design patents differs from the more familiar standards for utility patents. The U.S. Court of Appeals for the Federal Circuit recently reaffirmed this distinction, but the issue is far from resolved. A long line of Patent Trial and Appeal Board (PTAB) actions between LKQ and GM Global Technologies escalated to the Federal Circuit, where LKQ submitted an argument seeking to fundamentally change the obviousness analysis for design patents.

The patent examination process is subject to the well-known issue of hindsight bias. Issues with hindsight bias come up when a patent examiner, without realizing it, uses their knowledge of the invention itself to reject a claim as being obvious. If left unchecked, these issues can lead to incorrect determinations of obviousness, which prolong prosecution, cause unnecessary ex parte appeals to be filed, and force unfair narrowing of independent claims. However, even when an examiner learns about an invention that seems straightforward, human emotions and subjectivity can make it difficult for that examiner to appreciate that the invention was not obvious based on prior art that existed before the invention.

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.

In a precedential decision published Monday, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) decision to invalidate a pharmaceutical patent owned by the University of Minnesota. Gilead Sciences filed an inter partes review (IPR) in 2017 challenging the claims of the university’s  U.S. Patent 8,815,830 as unpatentable. The ‘830 patent covers chemical compounds that prevent the reproduction of viruses or the growth of cancerous tumors. The PTAB found that the University of Minnesota failed to provide a sufficient written description that supported the patent’s priority claim. The Board thus concluded that the patent would not guide a skilled artisan to the patent’s claims. The CAFC agreed with the PTAB’s decision and with the ruling that a 2010 patent application publication filed by Gilead was “prior art” over the university’s patent.

The United States Supreme Court is soon poised to decide the fate of the enablement requirement, and the patent community is collectively holding its breath, wondering if the Court will strike a deathblow to the biopharmaceutical industry—simultaneously making all patents harder to get and even easier to challenge than they already are. The Supreme Court does not have a strong track record of objectively getting patent issues correct, at least not from a pro-innovation standpoint, although the Justices and their supporters likely would disagree. The undeniable truth, however, is that since the Supreme Court issued its decision in eBay v. MercExchange, virtually every decision of consequence to the patent system has made patent rights weaker and patents themselves easier to successfully challenge.

The United States Patent and Trademark Office (USPTO) is requesting public comments on artificial intelligence (AI) and inventorship via a Federal Register Notice published today, February 14. The Office has sought comment on the topic before, but not since its decision to deny patent protection to inventions created by Stephen Thaler’s artificial intelligence (AI) machine, DABUS. That decision was upheld by the district court and U.S. Court of Appeals for the Federal Circuit (CAFC) on appeal, but the CAFC in its decision left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection.

While working as a patent examiner at the U.S. Patent and Trademark Office (USPTO) in Art Unit 2121 (artificial intelligence, or AI) I noticed that the typical patent application that I examined had seven method claims, seven apparatus claims, and six computer-readable medium (CRM) claims. In the typical application, the method and apparatus claims were mirrors of each other, and the first five CRM claims were mirrors of claims 1-5 and the last CRM claim combined the subject matter of claims 6 and 7. While examining a typical patent application, I only had to find prior art that taught these seven unique claims to reject the entire patent application. This led me to ponder why applicants are wasting the 13 other claims included with the standard filing fee with mirrored claims. Though best practice is to have multiple statutory categories with mirror claims by the time of allowance for enforceability reasons, there is a potential advantage for the applicant to file fewer mirror claims initially.

Over the last 15 years, the United States Supreme Court has mutated patent eligibility into an impossibly complex and confusing mess. The Court’s current eligibility test strays far from Congress’s original intent, erodes trust in predictability, and has left many remarking that innovation in the United States is falling behind due to uncertainty of patent eligibility law. Even more troubling, the resulting uncertainty of patent ineligibility for large swaths of innovation in critical technology areas, including artificial intelligence, poses significant risks to U.S. competitiveness, economic growth and national security. The Court has had opportunities to rectify its patent sinkhole but recently declined another chance to mend the chaos. When the Court denied certiorari in American Axle v. Neapco—despite the Solicitor General’s plea to hear the case—it became clear that Congress must step in to rescue U.S. innovation.

Systemic-level studies and data regarding impact on investment and innovation, as detailed in Part II of this series, are not the only way to demonstrate the substantial harm that the current state of patent eligibility has inflicted on the U.S. innovation ecosystem. Other robust evidence shows that current Section 101 law has harmed innovation by removing the incentives to develop and commercialize particular inventions of public importance. As another form of harm, the vagueness and breadth of the Alice/Mayo framework have also enabled accused infringers to transmogrify Section 101 into a litigation weapon in inappropriate cases that has created unnecessary burdens and costs on innovators and the courts.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision finding that two IBM patents directed to technology that allows users to select and view results on a map were directed to ineligible subject matter under 35 U.S.C. § 101. IBM had sued Zillow, alleging that several of the services offered on Zillow’s website and mobile applications infringed the claims. But the district court granted Zillow’s motion for judgment on the pleadings, finding the claims were directed to abstract ideas and lacked any inventive concept. The opinion was authored by Judge Hughes. Judge Stoll dissented in part, explaining that claims 9 and 13 of IBM’s U.S. Patent No. 7,187,389 were plausibly patent eligible and should not have been found ineligible at the pleadings stage.