Posts Tagged: "patentable"

While the subject matter of the speech was similar, this speech by Director Iancu was different. It was much more direct and forceful than any of his previous speeches. Iancu asked how inventors are supposed to know where to focus energy and effort without knowing what is patent eligible. That is an excellent question. One that Congress and the Courts should take to heart and thoroughly consider. Very real damage has been done to the U.S. patent system as the result of unnecessary uncertainty and an overly restrictive view of what is patent eligible in the U.S.

Yesterday I wrote about the United States Patent and Trademark Office filing a Director’s Unopposed Motion to Vacate and Remand in In re Intelligent Medical Objects, Inc., which was filed on June 5, 2018. This was not the only such motion filed by the USPTO. On June 4, 2018, the Office filed an Unopposed Motion for Remand in In re: Allscripts Software, LLC, which similarly asks the United States Court of Appeals for the Federal Circuit to vacate the decision of the Patent Trial and Appeal Board and remand the appeal to the USPTO so the Board can reconsider eligibility rejections of the claims in question in light of Berkheimer.

Yesterday the United States Patent and Trademark Office (USPTO) filed a Director’s Unopposed Motion to Vacate and Remand in In re Intelligent Medical Objects, Inc. After the decision of the Board the Federal Circuit decided Berkheimer, which Director Iancu believes requires the Board’s original decision to be vacated and reconsidered in light of both Berkheimer and USPTO guidance relating to Berkheimer.

This case and the passage above merely confirms what we have long known to be true. The magnitude of the innovation does not matter. Whether there is an innovation does not matter. Certain advances, certain innovations, are simply not patentable in America. No longer is “anything made by man under the sun” patent eligible.

Four years after the Alice decision, we seem to just now be detecting the full impact of the decision. The initial response by the USPTO resulted in an somewhat expected increase in the percentage of applications with eligibility rejections from business-method art units. Three years after Alice, eligibility rejections became much more common across the remaining computer-related technology centers (i.e. 2100, 2400, and 2600)… The sudden increase in eligibility rejections from other computer-related technology centers may have a number of causes. For example, case law from the Federal Circuit and the USTPO began to expanded the application of Alice to inventions that appear abstract despite not being directed to a traditional business-method concept… The increase in the percentage of office actions with eligibility rejections in TC 2100 was much higher than the increase in other computer related technology centers TC 2400 and TC 2600. Given that TC 2100 is a primarily software-focused technology center, this trend discrepancy suggests that post-Alice eligibility assessments performed by software examiners present increased challenges for patenting software based inventions.

Earlier today USPTO Director Andrei Iancu testified at an Oversight Hearing before the House Judiciary Committee. In addition to detailing forthcoming changes to post grant proceedings, Director Iancu fielded many questions on patent eligibility. “The issue is very significant. It is significant to the Office, to our applicants, and it is significant to the entire industry,” Iancu responded to Congressman Collins. “In some areas of technology, it is unclear what is patentable and what is not, and that can depress innovation in those particular areas. Our plan at the PTO is to work within Supreme Court jurisprudence to try and provide better guidelines. What we think is in and what we think is out, and provide, hopefully, forward looking guidance that helps examiners and the public understand what at least from the PTO’s point of view we think is right.”

Why did the Supreme Court intentionally destroy the U.S. patent system? That is a question many have been asking themselves in the wake of more than a decade of dubious decisions that continually erode patent rights and limit what is patent eligible… It is because of the Supreme Court that high-tech startups are unable to obtain patent protection necessary to attract investors… Investors simply aren’t interested in many U.S. high-tech startups because they know many patents in the software, biotech and medical arenas are extremely difficult to obtain, and even if obtained will be impossible to keep thanks to the curtailing of what is patent eligible by the Supreme Court… It is time for Congress to take control of America’s patent policy and legislatively reform Section 101.

The Federal Circuit’s decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, No. 2016-2707, addresses the complicated topic of patent eligibility in the pharmaceutical space. Much of the decision compares Vanda’s claims to those found ineligible for patent protection in the U.S. Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, 132 S. Ct. 1289 (2012). While the ultimate patentability conclusions are opposite, the claims in Vanda and Mayo are very similar, highlighting the thin—and often unpredictable—line that divides eligible and ineligible subject matter. Generic drug manufacturers must account for this unpredictability in gauging their litigation risks.

Director Iancu: “But for our purposes what I know for a fact is that in order to incentivize American innovation whether it’s artificial intelligence, DNA processing, or anything else we need to have a robust predictable reliable intellectual property system here at home. And I do worry that the current state of Section 101 in patentable subject matter weakens the robustness of our IP system in the affected areas. And if industry cannot predict in a relatively reliable way whether their investments will be protected from an intellectual property point of view I think that will result in less investment, less growth, fewer jobs created in the affected industries. So I do think it is critically important for our economy. And again whatever industry we’re talking about and whatever industry we want to grow it’s critically important to have a strong reliable and predictable intellectual property system.”

The patents discussed below are all landmark inventions and were conceived by inventors inducted into the National Inventors Hall of Fame (NIHF). Would these ground-breaking inventions, that helped set the course of humanity, be patentable today? … The point is that at first blush it’s not readily clear whether these patents would be found subject matter eligible, demonstrating that the uncertainty created by the Supreme Court with respect to patent subject matter eligibility has few bounds – even impacting the most celebrated inventions of our most honored inventors… If we cannot determine with reasonable certainty how all of these inventions would fare if judged under recent Supreme Court case law, then no one can truly teach Patent Subject Matter Eligibility 101.

How the Federal Circuit could rule that Alice did not change the law governing § 101 is a bit of a mystery. Applying the same two-step test seems a convenient way of dodging reality. At a time when there is real momentum gathering for a legislative solution to § 101 why did the Federal Circuit choose to perpetuate a myth that Alice did nothing to change the law? Outcomes are unquestionably different as the result of Alice, and if outcomes are different how exactly is it possible that the law did not change? If the law remained the same why was Alice a clear pivotal moment in software patent history? Saying Alice did not change the law shows just how out of touch and insulated from reality the Federal Circuit has become.

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the memo recognizes the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and instructs examiners to abide by its holding. Berkheimer itself held that the question of whether certain claim limitations represent well-understood, routine, or conventional activity under Alice Step 2B is a factual issue, with Berkheimer precluding summary judgment that all of the claims at issue were not patent eligible. This principle was then reaffirmed by the Federal Circuit a week later in Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018) in the context of a judgment on the pleadings and judgment as a matter of law.

“The PTO we will work to provide more concrete tests – to the extent possible given Supreme Court precedent,” Director Iancu said speaking about patent eligibility. “This is an area we must all address, and one on which we will continue to engage this Committee…”

“If companies were to lobby to allow for more polluting most people would think that is unethical,” Lauder explained. But there are people lobbying to make it more difficult for companies to come up with cures that allow for the creation of cures that save lives, which Lauder says he finds “equally unethical.” Lauder hopes that others start to look at the problem in the same way. That would indeed be a big step forward.

In Exergen Corporation v. Kaz USA, No. 16-2315 (March 8, 2018), the Federal Circuit, in a split non-precedential opinion, affirmed a holding that Exergen’s claims directed to methods and apparatuses for detecting core body temperature were directed to patentable subject matter under 35 U.S.C. § 101… The majority held that the district court did not clearly err in finding that it was unconventional to use temperature scanning technology to measure arterial temperature beneath the skin… Judge Hughes dissented, arguing that the majority erred by relying on the natural law in determining inventiveness at step two… Judge Hughes seems to suggest that the correct step-two inquiry should be whether, assuming the natural phenomenon were known, it would have been conventional to combine that phenomenon with existing technology to practice the asserted claims.