Last week, the Supreme Court refused certiorari in yet another patent eligibility appeal. I’ve lost count as to how many times the Court has refused to provide clarity to the fundamental question of patent eligibility since it last muddied the waters in Alice back in 2014. I stopped counting several years ago, when the number of petitions—pleas begging for help really—crossed over 50. But the petition in American Axle was supposed to be different. Yes, the Federal Circuit has been hopelessly, and helplessly, split for years—a division and impotence of their own making. In American Axle the self-castrated Federal Circuit seemed to believe the Supreme Court modern quartet of patent eligibility cases renders nothing of importance or value patent eligible. In fact, the Federal Circuit actually ruled that a drive shaft is not patent eligible because the operation of the drive shaft fundamentally relies on Hooke’s law.

On May 23, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) from an inter partes review (IPR) proceeding where the PTAB concluded that the challenged claims of U.S. Patent No. 9,844,379 B2 (the ‘379 patent) were unpatentable as obvious. Ethicon on appeal contended that the PTAB improperly placed the burden of proof on them and that the PTAB’s finding of reasonable expectation of success when the asserted prior art was combined was unsupported by substantial evidence. Ethicon owns the ‘379 patent, which relates to an endoscopic surgical stapling tool. The supposed novelty of the ‘379 patent is “the use of both an I-beam firing member and a no-cartridge safety lockout, such that the lockout blocks the advancement of an I-beam firing member when there is no staple cartridge loaded in the stapling assembly.” The safety mechanism is particularly helpful for endoscopic procedures that require a surgeon to work with reduced visual and tactile feedback when compared to open surgery.

Schwegman is seeking qualified patent attorneys having strong technical skills in computer science, electrical engineering, mechanical engineering, or advanced degrees in chemistry/biotech. We are particularly interested in candidates with 5+ years of experience in drafting and prosecuting patent applications. Industry experience in a technical field and advanced technical degrees are also of particular interest. Attorneys at Schwegman may be exposed to technical information that may be subject to U.S. Export Control laws. Therefore, proof of U.S. citizenship or permanent residency (“Green Card”) status may be required before consideration for a position.  This is a full-time, permanent position in both cloud and physical offices.