Posts Tagged: "US Supreme Court"

On Thursday, October 17, the USPTO issued new patent eligibility guidance. The new guidance discusses and elaborates on the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG) that was issued on January 7, 2019. The new guidance begins by stating that “all USPTO personnel are expected to follow the [PEG].” This statement is somewhat helpful given that some eligibility rejections still do not apply the PEG. After making the statement above, the guidance begins clarifying certain items from the PEG. In terms of Step 2A, Prong One regarding whether a claim “recites” a judicial exception, the guidance notes that a claim can recite more than one judicial exception. The judicial exceptions may be distinct in that there might be separate judicial exceptions in different claim elements. In other instances, there might be two judicial exceptions at play throughout the claim, in which case the examiner should identify the claim as reciting both and make the analysis clear on the record.

This week in Other Barks & Bites: US Inventor will host an inventor rally during AIPLA’s Annual Meeting to protest the PTAB; the Federal Circuit vacates dismissal of infringement case against Sirius XM; the USPTO updates subject matter patent eligibility guidelines, changes TEAS access, and seeks participants for a beta release of the Patent Center; WIPO reports that China received half of all patent application filings in 2018 while the United States saw its first patent filing decline in a decade; Google files a supplemental brief at the Supreme Court in its case against Oracle; Katy Perry files a motion to overturn the “Dark Horse” copyright verdict against her; the FCC approves the merger between mobile wireless firms T-Mobile and Sprint; and U.S. Customs proposes rulemaking to improve its detention of copyright-violating goods imported at the U.S. border.

In my previous post, I explored how times have changed for photographers who once appeared to have the upper hand in copyright infringement disputes with appropriation artists and others. As discussed there, the high-water mark for photographers may have been several years ago, when the Associated Press used its leverage to reach a settlement with Richard Fairey regarding his Obama Hope poster. However, since then, photographers have suffered a series of losses, beginning in 2013 with Cariou v. Prince and continuing in 2018 with Rentmeester v. Nike, Inc. The most recent case to strike a blow against photographers is The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (S.D.N.Y. 2019).

Copyrights protect original works of authorship fixed in a tangible medium of expression. When photographers take pictures of individuals, there are substantial questions regarding the elements that should be attributed to the photographer’s creativity so that the work has the requisite originality for protection. Typically, the photographer’s choices regarding composition, lighting, focus, depth of field, and filtering, among many other elements, provide a sufficient basis to extend copyright protection to almost any photograph. Thus, when artists reproduce or use a photographer’s image in their pieces without permission, the photographer has a legitimate basis to complain.

This past week in Other Barks & Bites: the Federal Circuit issued precedential decisions affirming the invalidation of patent claims covering osteoarthritis treatments and a costs award to Facebook, but reversed the PTAB on a reasonable expectation of success finding; the U.S. Supreme Court issued orders denying certiorari to several intellectual property cases; North Korea acceded to the Geneva Act of WIPO’s Lisbon Agreement; the Dollywood theme park was hit with a copyright suit over use of the Peanuts’ “Christmas Time is Here”; Nokia announced 2,000 patent families declared as 5G SEPs; former CAFC Chief Judge Rader has called on China to move forward with promised pharmaceutical patent reforms; 2019’s third quarter showed growth in the global PC market; and the USPTO announced that it has met its patent application pendency goals as well as a new senior-level position for an AI expert.

Last week, Professor Andrew Michaels published an article with IPWatchdog commenting on Facebook v. Windy City and the U.S. Patent and Trademark Office’s claim for Chevron deference for precedential decisions of the Patent Trial and Appeal Board (PTAB). While I agree with his ultimate conclusion, “the PTAB cannot speak with the force of law through adjudication even on issues where it has the authority to do so through regulation,” I disagree with the path he took to get there. I’ve written extensively on the topic (see the bibliography is at the bottom of this article). Of my articles, the most relevant is The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions. More recently, I filed an amicus brief in Facebook. In my view, PTAB precedential decisions can be eligible for Chevron deference in only the rarest of circumstances:  the PTAB is the wrong entity in the USPTO to engage in rulemaking, the PTAB doesn’t follow the procedures required by statute and executive order for rulemaking, and the PTAB doesn’t have access to the personnel within the USPTO that are necessary for rulemaking.

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.”

Recently, IPWatchdog published an excellent article by Wen Xie outlining the legal inconsistencies of the Chamberlain v. Techtronic Industries opinion, penned by Judge Chen. Unfortunately, describing the latest inconsistencies in the garbage pile of contradictions that is the Federal Circuit’s Alice/Mayo doctrine provides no surprise to anyone. The Alice/Mayo decisions issued by the CAFC are self-contradictory and cannot be reconciled with the Constitution, 35 U.S.C. §§ 102, 103, and 112, and at least a dozen Supreme Court cases. Indeed, the only surprises from the Federal Circuit these days come in the form of the odd holding for patent eligibility. However, Wen Xie’s article did cause me to realize that I’d overlooked Judge Chen’s distortions of fact. “Distortions,” however, is too mild a term for the outrageous misrepresentations made in Chamberlain.

Justices Breyer, Kavanaugh, Ginsburg and Gorsuch and Chief Justice Roberts were among the most active questioners of Malcolm Stewart, representing the government of the United States, and Morgan Chu of Irell & Manella, representing NantKwest, during yesterday’s oral argument in Peter v. NantKwest at the Supreme Court. The question presented in the case is “Whether the phrase ‘[a]ll the expenses of the proceedings’ in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.” The government’s argument at yesterday’s hearing seemed shaky at best. Stewart himself admitted repeatedly that there was “no good explanation” for the fact that the U.S. Patent and Trademark Office (USPTO) had, as noted in NantKwest’s reply brief “until now…never even sought, much less been awarded, attorneys’ fees under § 145 in the nearly two centuries since its passage.”

This past week in Other Barks & Bites: the USPTO delays the effective date for mandating electronic trademark application submissions and issues a proposed rulemaking on Patent Term Adjustments in light of Supernus; UKIPO report shows that women inventors represent only 12.7 percent of inventors worldwide; trademark dispute leads street artist Banksy to open a retail store; the Federal Circuit upholds the invalidation of method of manufacture claims as being directed to a natural law over a dissent from Judge Moore; the screenwriter of The Terminator files a copyright termination notice; Tesla stock drops after missing analyst expectations on car sales; Seinfeld beats copyright case over Comedians in Cars Getting Coffee; and the Department of Justice tells the Supreme Court not to review Google’s appeal over the ability to copyright Java code.

Athena Diagnostics filed its petition for certiorari with the U.S. Supreme Court yesterday in Athena Diagnostics v. Mayo Collaborative Services. There is a strong argument for the Court to grant the petition, and patent stakeholders on all sides are sure to weigh in via amicus briefs over the next month. The petition could represent the best chance for clarifying Section 101 law in the near-term, since patent reform efforts on the topic have been seemingly stalled. Below are a few initial reactions from the patent community to Athena’s arguments.

As expected, Athena Diagnostics last night filed its petition for certiorari to the U.S. Supreme Court, asking it to fix the United States’ patent eligibility law problem. Adam Gahtan and Eric Majchrzak of Fenwick & West and Seth Waxman, Thomas Saunders, Joshua Koppel and Claire Chung of WilmerHale filed the petition for Athena. The specific question Athena is presenting is: “Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.” Athena urged the Court to take the case considering the Federal Circuit’s eight separate opinions in which the court divided 7-5 on denying en banc review—evidence of “much-needed guidance on the proper application of the judicially-created exceptions to Section 101 of the Patent Act.”

Next week, the Supreme Court will hear the first of six IP cases granted cert last term. On Monday, the Court will hear Peter v. NantKwest, in which the question presented is “Whether the phrase ‘[a]ll the expenses of the proceedings’ in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.” The Court will heard other IP cases in November and December, while Google v. Oracle, Berkheimer v. HP, and Hikma v. Vanda await a decision on cert, and petitions in Straight Path IP Group, LLC v. Apple Inc., et al. and Athena Diagnostics v. Mayo Collaborative Services have the patent world holding its collective breath.

In response to a request for supplemental briefing from the Federal Circuit in Facebook v. Windy City Innovations, the U.S. Patent and Trademark Office (USPTO) recently argued that its precedential panel opinions interpreting the America Invents Act (AIA) are entitled to Chevron deference, under which (essentially) courts must defer to an agency interpretation of a statute so long as the interpretation is reasonable. To the extent that this bid for Chevron deference is limited to procedural administrative Patent Trial and Appeal Board (PTAB) matters such as the one at issue in that case, (an interpretation of 35 U.S.C. § 315(c) which relates to the USPTO Director’s ability to join a party in inter partes review [IPR]), it is arguably defensible. But to the extent that the agency claims (or plans to claim) that its precedential PTAB opinions are owed deference on issues of substantive patent law, it is likely incorrect.

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.