Posts Tagged: "Stephen Kunin"

Yesterday a unanimous Supreme Court ruled that the America Invents Act’s (AIA’s) language barring patent protection for inventions that were “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” under 35 U.S.C. § 102(a)(1) extends to private sales to third parties. The decision upholds pre-AIA Federal Circuit precedent establishing that a “secret sale” could invalidate a patent. The question patent owners have been asking since 2011 was whether the AIA’s addition of the phrase “or otherwise available to the public” overruled the Federal Circuit’s judicial construction of the on-sale bar. “No,” said the High Court. As always, IPWatchdog reached out to experts across industries for their views on the decision. From “well-reasoned and correct” to “a disappointment” and “dismissive,” they had wide-ranging perspectives on the ruling’s broader implications.

Given that several industry insiders were willing to make their own predictions, I’ll go out on a limb and make my own predictions… First, I predict Congress will do nothing on patent reform in 2019. With a divided Congress and a House of Representatives that could well spent precious legislative time on impeachment and other investigations, intellectual property matters likely won’t register even a blip on the public radar inside the beltway. Second, I predict there will be much effort behind the scenes on Capitol Hill to position various legislative fixes to 35 U.S.C. 101 so that when attention does turn to patent eligibility the ground work will be laid and much of the heavy lifting already done. So, if you think you can sit out 2019 because nothing is happening you’d be incorrect. Those that want to influence the next round of patent reform have already been working and by the time it is rolled out publicly it will be too late. Third, I predict the United States Patent and Trademark Office will define the term “abstract idea”. This is hardly going out on a limb since Director Iancu has all but promised just that in a speech given at Georgetown on November 26, 2018. Since the courts refuse to define the term the USPTO will closely identify only those innovations that the Supreme Court has identified as representing an “abstract idea” and closely define the term to mean those things and only those things are abstract ideas, with everything else in the computer implemented universe not being directed to an abstract idea and, therefore, patent eligible under Step 2A of the Alice/Mayo framework.

For my wishes, I’ll make three. First, as I did last year and the year before, I again continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice. My second wish is for Congress to amend the statutes that created post grant challenges and provide for a real presumption of validity that requires invalidity to be proven by clear and convincing evidence. Finally, as I did last year, I again hope the Federal Circuit dramatically significantly decreases its use of Rule 36 affirmances, and specifically stops using this docket management tool when cases are appealed from the PTAB and also with respect to appeals dealing with 101 patent eligibility issues.

There is near unanimity that the Supreme Court’s decisions in Oil States Energy v. Greene’s Energy Group, 138 S.Ct. 1365 (2018) was among the most significant events of the year. Several also point to the Federal Circuit’s decisions in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and Aatrix Software v. Green Shades Software, 882 F.3d 1121 (Fed. Cir. 2018), the impact Director Iancu has had on the USPTO and the patent system, and Congress passing the The Music Modernization Act. Beyond those events, there were others identified by this diverse panel that might have gone unnoticed if we were to focus only on the top-line events of the year.

We reached out to our distinguished panel of industry insiders, and the initial reaction is this decision is a clear win for patent owners. Efrat Kasznik: “The expansion of lost profits to include foreign lost profits enhances the ability of a patent owner to recover the appropriate amount damages that would make them whole, without artificially excluding foreign lost profit damages from the pool of available damages. It’s economic justice.” Ronald Abramson: “Today’s decision in WesternGeco is clearly a win for patent owners, though the Court made considerable efforts to limit its ruling…”

In SAS Institute, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged. To provide instant reaction to the Supreme Court’s decision in SAS Institute we’ve reached out to an All-Star panel of industry experts for their take on this important decision. Their analysis follows. 

Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.  In order to get a diverse array of views, we held open comments through early evening for this instant reaction piece.