Posts Tagged: "patentable subject matter"

Yesterday, 24 law professors, former Chief Judges of the Federal Circuit and former heads of the U.S. Patent and Trademark Office (USPTO) sent a letter to Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Jerrold Nadler (D-NY) and Doug Collins (R-GA) aimed at correcting what the letter characterizes as “misapprehensions of law and misleading rhetoric” on the subject of pending patent reform legislation. The letter makes specific reference to statements made by the American Civil Liberties Union (ACLU) claiming that the draft legislation to amend Section 101 of the patent law “if enacted would authorize patenting products and laws of nature, abstract ideas, and other general fields of knowledge.” The authors of yesterday’s letter, which included Retired Federal Circuit Chief Judges Randall Rader and Paul Michel and former USPTO Directors Todd Dickinson and David Kappos, called such statements “profoundly mistaken and inaccurate” and laid out in detail the specific inaccuracies. Rather than expanding the scope of 101 to abstract ideas and laws of nature, said the letter, “the proposed amendments preclude ‘implicit or judicially created exceptions to subject matter eligibility,’” and do not eliminate existing constitutional and statutory bars.

In the final installment of my interview with three examiners at the European Patent Office (EPO), we wrap up our conversation about their approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO system compares with the U.S. patent examination system.

In Part II of my interview with three examiners at the European Patent Office (EPO), we continue the conversation about their advice, pet peeves, and approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO system compares with the U.S. patent examination system.

I recently had the opportunity to speak on the record with three examiners at the European Patent Office (EPO) about their advice, pet peeves, and approaches to examining computer implemented inventions, particularly in the field of artificial intelligence (AI), and how the EPO compares with the U.S. patent examination system. It was a wide-ranging and thoroughly enjoyable conversation with three professionals who obviously know this area very well, and who were willing to provide keen insight into ways applicants can and should improve technical disclosures to maximize the likelihood of obtaining a patent.

With more dissents than any other Federal Circuit Judge in history,  Judge Pauline Newman is driven by a need to safeguard our national system of innovation. Judge Newman has argued throughout the years that the Federal Circuit was created to rebuild and renew the patent system to encourage and incentivize industry, which is precisely the purpose both the Carter and Reagan Administrations had in mind when advocating for the creation of the Federal Circuit, which ultimately took form in 1982. Judge Newman has no qualms about speaking out in dissents when the objective of the Federal Circuit to bring certainty to U.S. patent laws is being hindered, in her view, by the majority, regardless of the complexities or dollar-values at stake in the case. In fact, in one interview she declared, “I have not hesitated to comment when I think that a panel isn’t going in quite [the] appropriate direction. Others have felt that perhaps I haven’t gone in quite the appropriate direction . . . . [A]ll in all it seems to me that it’s quite healthy to present a certain amount of turmoil to practitioners in the short run. But in the long-run I think the law is better for it.” George C. Beighley, Jr., “The Court of Appeals for the Federal Circuit: Has It Fulfilled Congressional Expectations?,” 21 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 671, 675–76 (2011). Clearly, she is interested in getting the law right for the greater good as she sees it, regardless of the impact her dissent may have on relationships or status quo.

The United States is looking to antitrust law to break up big tech. Later today, for example, the House Subcommittee on Antitrust, Commercial, and Administrative Law will be meeting for a hearing on “Online Platforms and Market Power, Part 2: Innovation and Entrepreneurship.” Unfortunately, this may have become necessary, but it will not solve the problem of big tech monopolies. That can only be solved by understanding how big tech creates megamarkets and how they use shadow patent systems to regulate and perpetuate their monopolies—a power traditionally reserved for sovereigns. A patent is nothing but an exclusive right. All it can do is remove an infringer from the market. That incredible power enables startups to attract investment, commercialize new technologies, and challenge incumbents. The value of a patent is dependent on demand and market size. Since national borders establish the market size, the larger the country, the larger the market, and the more valuable a patent can become. But big tech markets are not restricted to national borders, so they get larger. Apple has 1.4 billion active devices reaching four times the 327 million population of the United States.

I recently authored an article for IPWatchdog arguing that the Federal Circuit in ChargePoint Inc. v. SemaConnect, Inc., (2018-1739) effectively overruled the new U.S. Patent and Trademark Office (USPTO) patent eligibility guidance. In my opinion, the ChargePoint decision was the very case that the Supreme Court in Alice Corp. v. CLS Bank warned would swallow all of patent law. After all, the Federal Circuit had the opportunity to take the Court’s caution seriously and interpret the abstract-based eligibility decision narrowly. It did not. Hoping for the remote chance the court will correct its error, I filed an amicus brief seeking rehearing en banc. My blunt assessment of the court’s reasoning and repercussions has been called inflammatory by SemaConnect. But it was the Supreme Court’s warning, not mine.

Last week, the Patent Trial and Appeal Board (PTAB) issued 31 decisions related to petitions for inter partes review (IPR) proceedings, instituting 14 IPRs and denying the other 17. Although Comcast saw a total of 11 IPR petitions denied institution, it succeeded on another six petitions, successfully initiating challenges of all four patents for which it sought review. Ten of the IPR petitions were part of the telecom giant’s ongoing legal battle with Rovi Guides. Unified Patents saw two of its IPR petitions denied, but the PTAB instituted two others. Another two IPRs, filed by a trio of major tech giants, were also instituted after the patent owner opted against responding to the asserted grounds for invalidity.

I don’t really know why we need the Federal Circuit anymore. Witness the denial of en banc rehearing in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC on July 3. This denial of rehearing provoked eight separate opinions, with no single opinion achieving more than four judges in support. With 12 judges deciding whether to rehear the case en banc that means no single opinion gained support from more than one-third of the Court. And that opinion that gained the most support was a dissenting opinion, meaning those judges wanted to rehear the case and specifically said that the claims “should be held eligible”.  In fact, as Retired Chief Judge of the Federal Circuit, Paul Michel, noted yesterday, “all 12 active judges agreed that the Athena patent should be deemed eligible, even though seven judges apparently felt helpless in view of Mayo.”  The truth is the Federal Circuit is not helpless. The Federal Circuit is choosing to interpret Mayo—on the life science side—and Alice—on the software side—expansively. The Federal Circuit has one primary job, which is to bring stability and certainty to U.S. patent laws. It would be easy to distinguish both Mayo and Alice, but rather than recognize the peculiar facts of these cases as representing the most trivial of innovations, the Federal Circuit has used Mayo to destroy medical diagnostics and Alice to destroy software. More analytical prowess would be expected from a first-year law student.

The Court of Appeals for the Federal Circuit was created to provide much-needed clarity and consistency to the nation’s patent law. In prior decades, the law had become hopelessly confused and incoherent due to disparate decisions of the regional courts of appeals. Two successive presidential commissions called for rectifying the situation because U.S. industrial competitiveness was lagging, and industries were faltering as a result of the weakness that had compromised the effectiveness of the patent system. For the previous century-and-a-half it had helped transform the country from a poor, agrarian land into the most advanced, powerful and wealthy nation on earth. In the 20th Century, nearly every significant scientific invention was created in America. But that was beginning to fade in the 1970s and beyond. Congress responded in 1982 by creating the Federal Circuit to hear all patent appeals…. These welcome developments increased incentives to invest in expensive research and development and the even more costly process of commercializing new inventions, putting new cures, products and services into the public’s hands and onto store shelves. In just the last few years, those incentives have lagged again due to sudden increases in uncertainty in the patent system, particularly regarding eligibility.

On July 3, the Court of Appeals for the Federal Circuit denied en banc rehearing in Athena Diagnostics v. Mayo Collaborative Services. The 86-page order from the Federal Circuit includes eight separate opinions—four concurring with the en banc denial and another four dissenting from the decision. The separate opinions reflect a Federal Circuit that isn’t divided so much on the issue of the importance of Athena’s now invalidated patent claims but, rather, the application of the U.S. Supreme Court’s Section 101 jurisprudence under Mayo Collaborative Services v. Prometheus Laboratories (2012). Throughout the opinions, it seemed clear that the Federal Circuit was eager to have the Supreme Court take this case up on appeal in order to clarify Mayo’s judicial exception to laws of nature and its impact on patent claims covering medical diagnostics.

I thought the Electric Power Group decision was effectively dead. It used an overbroad characterization of patent claims under Step 1 of Mayo/Alice. Following that decision, I encountered many Section 101 rejections that put forth an extremely broad characterization of claims, citing Electric Power Group as authority. I saw no rebuttal until the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (January 7, 2019). “Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas.”  See id. at 53. The Electric Power Group decision was nowhere cited, and “collecting information” was not listed as one of the abstract ideas. Indeed, the Patent Trial and Appeal Board’s (PTAB’s) art unit 3600 soon decided that “‘collecting usage information’ … is not an abstract idea.” See Final Decision in Ex parte Fanaru, Appeal 2017-2898 at page 5 (PTAB 2019). I was thus able to use the 2019 Revised Patent Subject Matter Eligibility Guidance and Ex parte Fanaru to counter an examiner’s broad characterization of claims. Now, however, Electric Power Group may make a comeback. The very recent Cellspin decision again cited to Electric Power Group to support a very broad Step 1 characterization of claims. The Federal Circuit panel (Lourie, O’Malley, and Taranto) found the claims were “drawn to the idea of capturing and transmitting data from one device to another.”  See Cellspin Soft, Inc. v. Fitbit, Inc., et al., at page 16 slip opinion (CAFC, decided June 25, 2019).

Now that the Senate Subcommittee on Intellectual Property has concluded its hearings on patent eligibility reform, it appears that the draft changes to Sections 100 and 112 are the last great danger in the overall patent eligibility debate and we must not let our guard down. A new version of the bill is due out sometime after the July 4 holiday; please send the following text with any of your edits to [email protected].

The Investpic v. SAP America case (Supreme Court Dkt. No. 18-1199), which is the 44th patent eligibility case to be considered for certiorari since the notorious Alice Corp. decision, was announced earlier this week. Cert. denied. Unlike almost any other case, the Investpic decision represents a hostility to the patent rights of software developers based on capricious foundations. The Federal Circuit’s holding is inconsistent with the statutory language of Section 101, the holding is hostile to Section 112(f), and the holding has no nexus to preemption. Investpic is just one of Judge Taranto’s latest monstrosities that holds that a patent must be based on a “physical realm improvement” of the sort that has an “inventive concept.” Investpic also holds that one isn’t allowed to use functional claim language, and that algorithms are unworthy of patent protection.

When it was announced that I would be testifying to the Senate Judiciary Subcommittee on IP about Section 101, I was surprised. Not only did they grant a critic of the 101 roundtables a chance to speak, but not one inventor who used patents to fund a startup has testified in any patent-related hearing in decades. This gave me faith that Senators Tillis and Coons are serious about fixing 101 right by considering what inventors need. When the hearing was announced, several inventors contacted me. They wanted to personally tell their stories to Congress. They trusted the government to protect them, but instead lost their careers, their secrets, and their investments of hard work and money. A few even lost their families, their home, or their health. The inventors were happy about eliminating all 101 exceptions, but the draft language of 100(k) and 112(f) transfer the damage to those sections.