Industry Insiders Make Patent Wishes for 2019

By Gene Quinn
January 1, 2019

One of the longest running features on IPWatchdog is our Industry Insider’s series, which started out many years ago with an annual “wishes” article. Each year we invite industry insiders to make patent wishes for the new year.

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.With there major industry organizations supporting legislative reform, and several Senators seemingly serious, perhaps this wish will eventually come true eventually, although as of now it seems to be a long shot in 2019 given we have divided government once again.

Second, moving to the Phillips claim construction standard at the Patent Trial and Appeal Board (PTAB) was an important first step, but the patent system requires real uniformity. Director Iancu is correct when he says the forum of the dispute should not change the result, but that requires legislative reform to raise the burden to invalid claims. So, 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. Sadly, this wish the same or less chance of becoming real in 2019 as my last wish.

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. Rule 36 is a tool that is to be used when the underlying decision being appealed is clearly correct. Are we really to believe that over half of the Federal Circuit docket is made up of cases where the underlying decisions are so clearly correct that a one-word decision is appropriate? This defies sensibilities and logic, for example, in an area as uncertain as patent eligibility where the ruling one receives is wholly dependent upon the panel drawn.

Without further ado… I present the patent and IP wishes of our esteemed panel of industry insiders for 2019.

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Roberta Romano-Götsch
Chief Operating Officer
European Patent Office (EPO)

My wish for 2019 is for even more dialogue and exchanges between companies and inventors, and the EPO, with a view to further improving the functioning of the patent system. Next year that’s going to be particularly important because we’ll be developing and launching a Strategic Plan, which will be the EPO’s multiannual work programme for the next five years. At the end of January we’ll be launching a public consultation. So it would be great if our applicants could give us their input on how our services could better match their needs in the future and how we might continue to change for the better and build upon the progress we’ve made in recent years. We’re already investigating new initiatives, such as adding more flexibility into the timing of the patent grant process. But there are plenty of other opportunities for positive change that we can explore together with our applicants. So we’d love to hear from anyone who wants to give us their input.

In addition, we want to keep addressing developments at the global level and with our international partners because the market for digital technologies is a global one and innovators are increasingly active in multiple economic regions around the world. In our co-operation within the “IP5” group, (i.e. the EPO with the USPTO and the patent offices of China, Japan and South Korea), we have in recent years stepped up consultation with industry associations to better tackle the common challenges on both ends of the patenting process. This is clearly a promising way forward, which we should pursue also in 2019.

Roberta Romano-Götsch is the Chief Operating Officer of Mobility and Mechatronics at the European Patent Office (EPO). As Chief Operating Officer of one of the three technical areas at the EPO, Ms. Romano-Götsch has responsibility for leading 1,600 patent examiners, managers and administrative staff members in Munich and The Hague. In addition to leading Mobility and Mechatronics, she is also chair of the EPO’s Operational Quality Committee.

 

Manny Schecter
Chief Patent Counsel, IBM

I wish for a stable, balanced, and more certain, US patent system.  In the period leading up to and including passage of the America Invents Act, the primary goal of US patent reform was the prevention of abusive patent enforcement by non-practicing patent entities.  Many changes were made to address patent abuse, but some of those changes went too far and unduly weakened the US patent system. Adjustments to the patent system will be necessary from time to time, but given the uncertainty caused by the changes made in recent years, we should now strive to strengthen the patent system just enough to restore balance while minimizing the introduction of additional uncertainty.  Kudos to USPTO Director Iancu for his focus on maintaining patent system stability while making efforts to reduce patent system uncertainty through incremental changes within USPTO control.  I was pleased by Director Iancu’s public recognition that more certainty is desperately needed with respect to patent subject matter eligibility, joining several Federal Circuit judges expressing this same view.  I am also thankful for Director Iancu’s public acknowledgement that Supreme Court case law has caused tremendous chaos by conflating subject matter eligibility with other statutory doctrines of patentability, and his expressed willingness to help with corrective legislation, which is sorely needed.  Our primary interest should be optimizing innovation to promote global competitiveness of the US in emerging technologies.

Manny Schecter is Chief Patent Counsel and Associate General Counsel at IBM. Manny is active in IP policy matters including legislative, judicial, and Patent Office reform. He has worked his entire career, first as an engineer and then as an attorney, in various business units of IBM, achieving his current position in 2009.

 

Sherry Knowles
Principle, Knowles IP Strategies

I wish that in 2019, the U.S. Supreme Court will study the U.S. Constitution and rediscover that it was not granted any power to create patent law.

I wish that the United States will take the steps necessary to be ranked Number 1 for 2019 in the U.S. Chamber International IP Index (GPIC) in the area of “Patents, Related Rights and Limitations.”

I wish that innovators will demonstrate their brilliance by making transformational advances in the treatment of cancer.

I wish that the U.S. FDA will streamline its clinical trial requirements to reduce cost and time.

I wish that all patent publications filed only in China and existing only in Chinese mysteriously instantaneously combust with no remaining record.

Sherry Knowlesis Managing Partner with Knowles IP Strategy. From 2006-2010, Ms. Knowles was the Senior Vice President and Chief Patent Counsel at GlaxoSmithKline, where she served as the worldwide head of patents for all litigation and transactional matters and managed a global department of over 200 people in 12 offices. In 2008, Managing IP Magazine named Ms. Knowles one of the top 10 most influential people in Intellectual Property. In November 2011, Intellectual Asset Management Magazine listed her among the top 50 key individuals, companies and institutions that have shaped the IP marketplace in the last eight years. She has also been recognized by IAM Magazine as one of the top IP strategists in the world numerous times. Ms. Knowles is also a member of the Patent Masters faculty.

 

Raymond Millien
Vice President & Global Chief IP Counsel, Volvo Car Corporation

My intellectual property-related wish for 2019 is that some organizational, regulatory and/or judicial clarity (and sanity) emerges with respect to so-called standard essential patents (SEPs).

It is common knowledge that the automotive industry (and any industry facing disruptive change in the age of the Internet of Things (IoT)), has to respond to customer demand for so-called “connected” cars. These vehicles provide the ability to connect to the Internet to facilitate not only services such as emergency dispatch, concierge, maps, weather, traffic, driving analytics and satellite radio, but also autonomous driving functionality. With this Internet access, however, comes the question of whether the infrastructure in such vehicles need licenses from a multitude of individual patent owners and pools to implement 2G, 3G, 4G, 5G and other emerging standards in a way reminiscent of the smartphone patent wars that took place over the last decade.

Up to now, whenever the topic of standards is raised, the debate centers around whether those who hold SEPs – and their commitments through various standard-setting organizations (SSOs) to license such patents on FRAND terms – are in reality licensing under a reasonable royalty rate, and what types of licensing models are exactly fair and non-discriminatory. The academic and mainstream press, as well as global court decisions and regulatory bodies guidance are filled with approaches, analyses and commentary regarding these questions. However, what has not been addressed is a more fundamental question: who decides whether a patent is standard essential in the first place before we even get to the FRAND analysis?That is, no one is talking about the abuse in declaring essentially at the SSOs in the first place!  In 2019, this simply must change.

Raymond Millien is Vice President & Global Chief IP Counsel at Volvo Car Corporation. The above is his current personal views and should not necessarily be attributed to his employer.

 

Bob Stoll
Partner, Drinker Biddle

Like any beauty pageant contestant, I would be remiss if I did not mention “world peace” or “a cure for cancer” or “solutions to climate change” in my litany of aspirations but my focus for this article will concentrate on patent issues.

My first wish is that the patent community unite to find a workable solution to the patent subject matter eligibility crisis.  Even those who say they are happy with the status quo recognize that some innovation is being stymied by the Supreme Courts holdings in “Alice”.  The misapplication of the standards set forth in that case are fostering declines in job creation and economic growth in the industries of diagnostic methods, personalized medicines and computer-implemented processes.  If we could find an honest broker and include open-minded participants from all viewpoints, I think we could solve this problem.  None of the current legislative proposals have much of a chance of being enacted but a solution that addresses the various view-points is possible if the public pushes for one and we all deal in good faith to solve the problem.

Another wish for 2019 is that we reach meaningful harmonization of our national and regional patent systems. The waste of the duplicative efforts around the globe is drawing significant funds that could be reinvested in research to improve the quality of life everywhere.  Our international efforts went askew when developing nations wanted discussions on treaty instruments important to them related to biodiversity, folklore and traditional knowledge.   Their requests were met with pushback from developed countries so developing nations prevented reform on harmonization.  With blockage on the world stage, the developed countries did develop processes amongst themselves to somewhat reduce duplicative work but now is the time to redouble our efforts to reengage the rest of the world in true harmonization.  We should jumpstart talks on subjects of importance to the developing world and table global harmonization.  Everybody would get something they want!

Genies grant three wishes.  I guess I would select “world peace” for my third wish from the beauty pageant contestant’s menu above.  Because if we tweak our patent system to drive innovation a little better, we will eventually find the “cure for cancer” and “solutions for climate change”!

Robert L. Stoll has more than 40 years of experience in intellectual property prosecution. Bob retired from the USPTO as Commissioner for Patents at the end of 2011 after a distinguished 34-year government career. Bob serves as an expert on patent matters, and is known as a problem solver for cases with peculiar issues and problems. He is now Co-Chair of the Drinker Biddle Intellectual Property Group, and a member of the Patent Masters Faculty.

 

Stephen Kunin
Partner, Maier & Maier

My main wishes for 2019 are for the USPTO to invest in and modernize its information technology systems to improve reliability and certainty of patent rights and support patent examiners in performing higher quality searches while protecting the IT infrastructure from cyber attacks and intrusions that may can impact the integrity of USPTO databases.  The USPTO needs to improve patent examination quality through better training and review of patent examiner work product with an emphasis on the development of tools and resources to leverage machine learning and AI capabilities in locating the closest prior art found in patent and non-patent literature databases.  Boolean, natural language and semantic search tools now available are becoming outdated and newer technologies are becoming available to aid patent examiners in the early stage of the examination process.

Stephen Kunin is currently a partner with Maier & Maier. He serves as an expert witness and consultant on patent policy, practice and procedure. Mr. Kunin served three decades at the USPTO, including 10 years as Deputy Commissioner for Patent Examination Policy. Mr. Kunin is also a member of the Patent Masters faculty.

 

James Pooley
Patent and Trade Secret Litigator

Here are my wishes for the IP community for 2019:

That Director Iancu succeeds in all of his proposed reforms to increase predictability in the patent system.

That Congress finds a way not only to fix Section 101 but also to return IPRs to their original design of a limited window of attack for all comers, allowing inventors to achieve quiet title at the PTO.

That trade secrets continue to gain respect with countries around the world, reflected in legislation that consolidates relevant laws and that recognizes the critical need for access to proof.

James Pooley has over 35 years experience as a successful Silicon Valley trial lawyer. Pooley possess deep knowledge of patents and trade secrets. In fact, Pooley has quite literally written the book on trade secret law, with his latest title “Secrets: Managing Information Assets in the Age of Cyberespionage”. Pooley is also a Member of the IP Hall of Fame, inducted in 2016, and he spent 5 years serving as a diplomat and manager of the international patent system (PCT) as Deputy Director of the World Intellectual Property Organization.

 

Marla Grossman
Partner, American Continental Group

Wish #1:    Congress acts to clarify Section 101 Patent Subject Matter Eligibility Standards

Congress should consider legislation to address recent Supreme Court decisions that have unfortunately narrowed the scope of patent protection for life sciences and software technology by expanding judicially created exceptions to patent eligible subject matter.  A few companies are pleased with the new law on subject matter eligibility and therefore are vocally opposed to any legislation. However, the PTO Director has highlighted the new uncertainty and unpredictability of this area of the law resulting from the recent Supreme Court decisions, and a large and growing number of associations from the IP community are asking for a legislative solution.  As Justice Stevens said in his dissent in Diamond v. Diehr, these Supreme Court decisions regarding the patentability of program-related invention “do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable.”   To rectify the situation, Congress should promulgate legislation to restore the scope of subject matter eligibility in a clear and technologically-neutral manner as it intended when it passed the Patent Act of 1952.

Wish #2:   The PTO hires a new CIO to oversee an overhaul of the agency’s IT systems.

The position of PTO CIO has been vacant since Nov. 3rd 2017, when former CIO John Owens left the agency. During recent public PTO events, leadership has stated that they’ve received a substantial amount of applications for the position, and the expectation is that a new CIO will be selected in 2019.   The selection of a permanent CIO is essential to the future stability of the PTO IT systems. Over the past year, PTO users have suffered from a number of IT failures, including the eight-day Patent Application Locating and Monitoring (PALM) database outage in August 2018. It is my hope that a new CIO will bring a focused, detailed vision of how to modernize and maintain the PTO’s IT systems.  The near-term focus of the CIO should be on acquiring examiner tools that aggressively incorporate the latest artificial intelligence (AI) and machine learning capabilities being developed in the commercial world.  Hopefully, any new modernization efforts will also include a balanced use of both PTO employees and outside contractors so that the agency is not left in a sub-optimal situation if/when key personnel depart.

Wish #3:  The PTO continues to improve its ability to support the Public Dissemination of Data (PDD) systems which update and share millions of patent and trademark documents daily. 

The PTO currently provides the following patent and trademark bulk data available to anyone free of charge:  Patents (grants, published applications, assignments, classification information, and maintenance fee events) and Trademarks (registrations, applications, assignments, and TTAB proceedings).  Hopefully this service, whereby patent and trademark bulk data is made easily accessible and at no cost to the public, will continue in the New Year, and will be improved by the use of newly-developed technology.

Wish #4:    U.S. and China will finalize an agreement to curb Chinese IP theft and avoid a long and costly trade war between the two countries.

In August 2017, President Trump signed an executive memorandum ordering an investigation into China’s alleged theft of U.S. intellectual property through forced technology transfers and cyber theft.  The USTR investigation concluded in March 2018, and resulted in $34 billion in trade action against China, followed by an additional $16 billion in June.  China retaliated with its own tariffs against the U.S. President Trump later directed USTR Director Lighthizer to impose another $200 billion in tariffs on imports from China beginning 24 September.  These additional tariffs related to the USTR’s determination under section 301 that “the acts, policies, and practices of the Government of China related to technology transfer, intellectual property, and innovation covered in the [section 301] investigation are unreasonable or discriminatory and burden or restrict U.S. commerce.”  These tariffs were set at 10% initially and were scheduled to increase to 25% on 1 January 2019.   One of my New Year’s wishes is for a de-escalation of the current trade antagonism between the U.S. and China.  There are some signs of hope:  in late November, President Trump and China’s President Xi Jingping agreed to suspend new trade tariffs and start a 90-day negotiation period.  Wu Handong, an adviser to China’s Supreme People’s Court, has indicated that China is accelerating the approval of a revised patent law in part to address U.S. concerns. Mr. Wu said the draft was submitted to China’s legislature earlier this month and is expected to be approved next year. Revisions, he said, would subject violators to greater administrative penalties and fines.  Whether any such changes that emerge are sufficient to meet U. S. concerns remains to be seen.  However, China has motivation to address its intellectual property policies in a manner that reduces current trade tensions.    China’s growth rate is declining, and the country is more dependent on trade than the United States.  Although its authoritarian government can more readily mobilize public support and force its citizens to absorb short-term costs in the name of long-term development, its ability or willingness to do so is not unlimited because of various other internal pressures on the Chinese government.  Moreover, now that China is developing its own innovative and creative industries it has greater long-term interests in providing adequate protection to intellectual property in both a domestic and international context.  The United States, of course, is not immune to the costs of a trade war with China as attested by the recent volatility of U.S. markets.  Earlier this month, the USTR issued a Federal Register notice postponing the tariff increase 25 percent rate until  2 March 2019. Hopefully the New Year will bring a deal that adequately addresses alleged theft of U.S. intellectual property while keeping Chinese markets open to U.S. owners of intellectual property.

Marla Grossman is a partner at American Continental Group, where she helps her clients with strategic public policy planning and representation before the White House, US federal agencies, and Congress. Grossman’s particular areas of expertise include intellectual property, technology, competition and trade policy. With decades of experience inside the beltway, including as counsel to the Senate Judiciary Committee, Marla is a true powerhouse on the intellectual property scene. 

 

Josh Malone
Inventor, Bunch-0-Balloons

Last year my wish for the executive branch of government to cease attacking inventors was granted when Director Iancu was appointed and immediately reformed the agency. However my wish for the judicial branch to uphold the right of inventors to have a trial before a real judge and jury was denied by the Oil States decision. This year my wish is for the legislative branch to pass a law to 1) prohibit the USPTO from taking patents back from inventors, 2) require courts to issue injunctions prohibiting the use of a patented invention without permission, and 3) prevent infringers from profiting by using a patented invention without permission. I with that lawmakers in the House and Senate as well as the President will come to recognize that inventors today lack these protections that are essential for our future economic prosperity. I hope that a few thousand inventors will join me in this effort by signing the resolution at usinventor.org/resolution.

Josh Malone is Founder and President of Tinnus Enterprises, and a Fellow with U.S. Inventor. He is best known as the inventor of Bunch-o-Balloons, a device and method for filling up 100 water balloons in 60 seconds. His invention was knocked-off by Telebrands, and after years of litigation in federal courts and at the PTAB his patents have survived, but only after tens of millions in legal fees. Josh is now a vocal advocate for patent reforms that aid independent inventors. 

 

Image Source: Deposit Photos

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 23 Comments comments.

  1. Pro Say January 1, 2019 2:59 pm

    Wish: For Congress to abolish 101.

    Result: Eligibility baloney gone.

  2. Anon January 1, 2019 4:52 pm

    Pro Say,

    Sadly, your wish needs an addendum:

    Congress exercises its Constitutional authority to employ jurisdiction stripping of the non-original jurisdiction of patent appeals away from the Supreme Court (coupled with a proper reset of a dedicated lower Article III court to strengthen patent law).

  3. patent leather January 2, 2019 12:44 am

    Happy new year Gene!

    Bob Stoll’s comment really nails it for me: “…The misapplication of the standards set forth in that case are fostering declines in job creation and economic growth in the industries of diagnostic methods, personalized medicines and computer-implemented processes. If we could find an honest broker and include open-minded participants from all viewpoints, I think we could solve this problem. None of the current legislative proposals have much of a chance of being enacted but a solution that addresses the various view-points is possible if the public pushes for one and we all deal in good faith to solve the problem.”

    I have to agree with Bob that the current legislative proposals (such as the IPO’s or AIPLA’s draft 101 amendment) have little chance of being enacted. They are too optimistic, for instance they would allow patents on almost anything (for example golf swings). While I am not commenting one way or the other on whether patenting things like golf swings would help or hurt our patent system, I can just hear the laughs on the floor of Congress when the opposition explains why the proposal must be shot down.

    I disagree with the holdings in Alice and many of the follow-up cases, and a balanced congressional amendment to 101 could cure Alice’s opening of Pandora’s box which swept lots of technology under the 101 rug, yet appease those who won’t completely discard over over 100 years of judicial rulings regarding eligibility.

    Those wishing for Congress to enact the AIPLA or IPO proposals can keep dreaming, Christmas is already over. I personally would like to see them enacted, but I agree with Bob Stoll that it is unlikely. So in 2019 I think we should all try to push for a more balanced 101 fix that actually has some reasonable likelihood of passing.

  4. Benny January 2, 2019 5:14 am

    To quote Plankton (you all know who he is, don’t you?) Stephen Kunin could have said, “My wish, Nay, my DEMAND…”)
    Sherry Knowles wishes that all Chinese applications disappear – I would wish that all Chinese applications magically transform into human-readable English. (Why would anyone wish for knowledge to be erased?)

  5. Paul Cole January 2, 2019 5:20 am

    Brevity is the soul of wit [who said that first, I wonder?], so I’ll follow Jim Pooley with his short and durable list of wishes.

    In particular I wish that Director Iancu should initiate a careful study within the USPTO (which arguably has the knowledge and resources) to determine what legal principles the Supreme Court in reality laid down in the Mayo/Alice series of cases, and whether the CAFC is genuinely following those principles. It is my personal belief that the CAFC judges are not doing so but are adopting an expansive interpretation with inappropriate regard to the limited and cautious opinions of the Justices and their express statements to that effect.

    A very happy new year to all readers.

    Paul

  6. Anon January 2, 2019 8:59 am

    To be brief, the thought of “to determine what legal principles the Supreme Court in reality laid down in the Mayo/Alice series of cases” belies the fact that the Supreme Court themselves have re-written the statutory law into a Gordian Knot.

    I do not understand why Paul Cole continues to have such feality to the US Supreme Court in not recognizing their fingers thrust into the Nose of Wax of 35 USC 101.

  7. Anon January 2, 2019 9:00 am

    …or to be even more brief:

    One cannot fix the score board until one realizes that the score board is broken.

  8. anonymous January 2, 2019 11:02 am

    My wish is that the PTO and the courts just follow what the Supreme Court actually said, in the following way. It would put an end to all the 101 nonsense. Director Iancu should add this to the forthcoming 101 guidance. This simple paragraph should be added to the MPEP for use by examiners. It accurately reflects governing law.

    Using the plain language of Section 101, incorporating the definition of “process” from Section 100, we find the claimed subject matter patent eligible. In light of the Supreme Court’s admonition to tread carefully, we decline to find any “judicial exception” negatives patent eligibility here. “[W]e tread carefully in construing this exclusionary principle, lest it swallow all of patent law.” Alice, 134 S. Ct. at 2354 (citing Mayo, 566 U.S. at 71). The language of Section 101 is well-recognized as providing a wide and permissive scope for patent eligibility. Bilski v. Kappos, 561 U.S. 593, 601 (2010) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)) (“In choosing such expansive terms . . . modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.”).

  9. Night Writer January 2, 2019 11:29 am

    None of these are deal with the core problem. The facts: patent applications from US inventions are declining. Patent value is about 20 percent of what it was before the AIA.

    And the biggest problem is that the CAFC continues to try and chip away at what is eligible for patentability including a recent case that is saying that all games should not be eligible fo patentability. I could give a long list of the their misdeeds.

    The fact is the patent system is on life support. The CAFC is trying to push the patent system into the grave. We need to abolish the CAFC and get rid of the judges appointed by Obama to stack the court against patents.

    There is no use pretending that many of those judges aren’t anti-patent judicial activists that will do everything they can to burn the patent system down. Because they are.

  10. Anon January 2, 2019 11:32 am

    anonymous @ 8,

    Your path would at least have the executive branch avoid engaging in the writing of law (through the Common Law law writing that the Supreme Court “two step” actually is).

    To a certain extent, it follows the “gist” of my “I have a [patent] dream” posts.

  11. B January 2, 2019 12:27 pm

    “I wish that in 2019, the U.S. Supreme Court will study the U.S. Constitution and rediscover that it was not granted any power to create patent law”

    clap . . . clap . . . clap . . . clap . . . (golf clap)

    Also wish for some judge somewhere to actually read s101. There’s a lot of good law there. The courts have ignored the language of s101 and s100(b), and redrafted these sections into something different.

    I’m presently penning a petition to the SCOTUS addressing that very topic. Two petitions actually. The Federal Circuit has ignored my briefs as had the SCOTUS on these very issues. I don’t think much will change.

    Your amicus brief is dearly appreciated.

  12. B January 2, 2019 12:44 pm

    @ Mssr. Stoll “My first wish is that the patent community unite to find a workable solution to the patent subject matter eligibility crisis.”

    The world can unite, but so what. The problem lies within the courts. There are answers, but uniting isn’t one of them.

    The first part of the answer is that the CAFC judges must act honestly. They don’t, and no one knows why.

    The second part of the answer is for the CAFC judges to act fairly. They don’t.

    The third part of the answer is for the CAFC judges to actually read s101. Apparently, none do except perhaps Judge Plager, who actually went so far as to notice “invention” wasn’t in the statutes. However, Judge Plager stopped short in realizing that the CAFC’s requirement for “improvement” is a re-write of s101. Too bad, because Giles Rich commented upon that topic in detail in an article Plager cited in Interval Licensing.

    The fourth part of the answer is for judges to realize that they are experts in nothing outside the law (and reading the last s101 decision that’s questionable). Apparently, only Judge Moore has firmly grasps the dangers of assuming she knows everything.

    The fifth part of the answer is force the CAFC to take remedial patent classes. I suggest using Professor John Witherspoon as the instructor.

  13. Eric Berend January 2, 2019 3:36 pm

    N.B:
    “…while minimizing the introduction of additional uncertainty.”

    Manny Schecter
    Chief Patent Counsel, IBM

    What “uncertainty” could you POSSIBLY be referring to, Manny? The slight chance that something, ANYTHING will operate other than to destroy an inventor’s supposedly CONSTITUTIONAL intellectual property rights? THAT sort of so-called “uncertainty”?

    Therefore: you embrace the ‘certainty’ of the uselessness of patents to any entity other than the shortlist approved by your pals in the SiliCON valley IP Pirate Gang – isn’t this is actual TRUTH of the matter, where you and the interests you represent, are concerned?

    N.B:

    “If we could find an honest broker …”
    “… if the public pushes for one and we all deal in good faith to solve the problem.”
    “…include open-minded participants from all viewpoints…”
    “We all”
    “In good faith”
    “Another wish for 2019 is that we reach meaningful harmonization…”
    “Everybody would get something they want!”

    Bob Stoll
    Partner, Drinker Biddle

    These specious assertions are so egregious in their breathtaking disingenuity, that each calls for a response or rebuttal.

    ” If we could find an honest broker …”, just like the criminal power mongers who are running the show now, since the status quo that “we” (i.e., non-SV BigLaw clients) didn’t invoke, ended up being so beneficial to us and so antagonistic to “disruptive” technologies.

    “… if the public pushes for one and we all deal in good faith to solve the problem.” How convenient for you and your noble-sounding statement, that the “public” believes inventors are ‘patent trolls’. Your BigLaw practitioner concept of “good faith” here is: to be as treacherous to the interests of individual inventors as possible.

    “…include open-minded participants from all viewpoints…” EXCEPT INVENTORS, of course.

    Obviously, “we all” now EXCLUDES the inventors – isn’t that right, Bob?
    Is this not, the TRUE reason you and your corrupt ilk are now, after so long, timidly comfortable with publicly advancing the notion of a FAKE version of so-called ” good faith”?

    After all, your clientele rides on the coattails of the heavy lifters such as Google and Big Pharma who engendered enactment of the AIA back in 2011. You and your similarly positioned BigLaw brethren are so craven, that all you can do once you finally open your mouth, is to cheerlead others’ work on your clients’ behalf.

    “In good faith” – only so long as NO ‘pesky inventors’ are involved. Is there some cruel gratuitous thrill that you folk enjoy, to so blithely proffer that incredibly hypocritical notion in such an insouciant and specious manner, thus? Because what you spout here, amounts to sneering down at the corpse of an ambushed child.

    “Another wish for 2019 is that we reach meaningful harmonization…” which is, of course the rallying cry that justified undermining the world’s ‘gold standard’ of patent systems to U.S. legislators, for the purpose of suborning the U.S. interests to the Eurocrats and Sinophiles.

    “Everybody would get something they want!” – except, OF COURSE, for the individual inventors. Now that you and your rich friends have rhetorically murdered the actual living, real world American inventors, there are none left in your preciously privileged “everyone!”: therefore, you feel quite safe advancing this disingenuous concept.

    N.B.
    “That trade secrets continue to gain respect with countries around the world,…”

    James Pooley
    Patent and Trade Secret Litigator

    You sir, are a realist. However, I am sure that you also must realize, this is anathema to the public interest benefit of incentivizing technological risk-taking investments of genius, time and economic resource – as is originally intended by the Founding Fathers and the enactment of Article 1, Section 8 of the U.S. Constitution.

  14. Mark Nowotarski January 2, 2019 5:24 pm

    “I wish that all patent publications filed only in China and existing only in Chinese mysteriously instantaneously combust with no remaining record.”

    I, on the other hand, am very excited about the wake up call China is giving the US.

  15. Ted January 4, 2019 8:40 am

    “I wish that in 2019, the U.S. Supreme Court will study the U.S. Constitution and rediscover that it was not granted any power to create patent law.”

    Is there a legitimate argument that this is the case? I have never heard anything about patent con law outside of Art. 1, Sec. 8, Clause 8.

  16. Gene Quinn January 4, 2019 11:40 am

    Ted-

    With respect to the Supreme Court’s 101 jurisprudence they openly admit that they have created an extra-statutory test. There is no support in the Constitution or in the Patent Act for the so-called Alice-Mayo framework to be layered on top of the simple statutory inquiry. The exceptions they create to patent eligibility, which they name judicial exceptions because they admit they are not found in the statute or Constitution, are a power grab. The Supreme Court does not have the authority to create substantive patent law, but that has not stopped them. So, yes. This is exactly what has happened. There is no legitimate debate to the contrary.

  17. B January 4, 2019 1:20 pm

    “With respect to the Supreme Court’s 101 jurisprudence they openly admit that they have created an extra-statutory test.”

    Yet at the same time in Bilski the SCOTUS admits they have no right to do more than interpret statutory words.

    Of course, the SCOTUS violated their own statement in the same opinion.

    Go figure

  18. Anon January 4, 2019 4:12 pm

    Gene @ 16,

    While indeed there is no legitimate debate to the contrary, there remains yet to this day no substantial consequence for the Court having acted as it has acted.

    …and to reflect on a recent comment on another thread, it is a pet peeve of mine that attorneys seem unable or unwilling to apply their own State oaths and decry what the Court has been doing – our oaths place each of the three branches, including the Judcial Branch [and especially the Supreme Court] UNDER the Constitution and its checks and balances (as well informed by the Federalists Papers).

    Our founding fathers had a very real concern with an unchecked Court. We ALL ignore that concern at our peril – and in disregard to the ethics of our oaths. (“We” of course, being the “Royal We”)

  19. Ted January 6, 2019 10:56 am

    Gene @ 16,

    Thank you for the explanation, that comment makes sense to me now.

    At the same time, I do think an argument could be made that the Alice/Mayo framework is simply a procedural test for the novelty requirement under §101. After all, the court has created procedural tests for applying existing patent law since Winans v. Denmead with the doctrine of equivalence.

    But now I definitely see what point the author is making.

  20. Gene Quinn January 6, 2019 11:55 am

    Ted-

    The problem with Alice/Mayo being a procedural test for novelty under 101 is there is no novelty requirement under 101. See Diamond v. Diehr, which the Supreme Court continues to tell us they did not overrule.

  21. Anon January 6, 2019 7:03 pm

    Ted,

    I would point you to the writings of one Judge Rich, who as it happens, happened to help write the law of the Act of 1952 enacted by Congress that was to put an end to the Common Law law writing of the judicial branch (including, especially, the Supreme Court) when it came to “invention,” “gist of the invention,” spirit of the invention,” inventive step,” and dozens of other like-sounding terms that the courts had used prior to 1952 and the passage of the Act.

    Congress chose instead to take a single prior paragraph and partition that paragraph into the sections of law known as 35 USC 101, 35 USC 102, and 35 USC 103. EXPLICITLY, 103 was intended to replace the judicial Common Law muckery (which had never lived up to the expectations of Congress is defnitiely evolving the word “invention”).

    In particular, there are some writings from the 1961/1962 era. Also of note, is that it was Judge Rich (then of the predecessor to the CAFC) was the one that PUSHED BACK against the Supreme Court’s re-encroachment in Benson and Flook.

    For an interesting start, try: https://www.finnegan.com/en/insights/patent-law-could-use-another-judge-rich-right-now.html

  22. Anon January 6, 2019 7:06 pm

    Also, for a nice personal touch upon Judge RIch’s passing: https://www.nytimes.com/1999/06/12/business/giles-s-rich-oldest-active-federal-judge-dies-at-95.html

  23. Ted January 6, 2019 11:36 pm

    Anon, Gene, thank you for following up on this comment.

    Having studied this issue in pursuit of furthering my legal knowledge, I have never had the opportunity to truly understand the dissonance between “new” under §101 and “novelty” in the eyes of a non-STEM Supreme Court.

    As disheartening as it is to see how deep, and for how long, this issue has afflicted the patent system, I appreciate the newfound perspective.