Posts in Federal Circuit

Ten Years From Bilski: The Beginning of the End, with No Improvement in Sight

Ten years ago today, the U.S. Supreme Court handed down what at the time was one of the most important patent decisions in decades. It signaled a new era in patent law—not least of all because Bilski seemed to jumpstart the Supremes’ interest in patent cases. On this milestone anniversary, it’s worth reminding ourselves how we ended up where we are today. In the years since Bilski, the Court has decided Mayo v. Prometheus, Myriad and Alice. If the decision in State Street can be said to have marked the onset of a golden era in the patentability of software and business method patents, the decision in Bilski marked the beginning of the end, and Alice was its death knell, with its introduction of a two-step test for eligibility. Indeed, the unpredictability of application of 101 extends throughout all practice areas.

Federal Circuit Affirms PTAB Finding that Adidas Did Not Prove Nike Patent Claims Unpatentable as Obvious

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday affirmed a Patent Trial and Appeal Board (PTAB) decision that certain claims of Nike, Inc.’s U.S. Patent Nos. 7,814,598 and 8,266,749 are not unpatentable as obvious. The Court also disagreed with Nike’s argument that Adidas did not have standing to appeal because it could not prove that it had an “injury in fact.” The opinion was authored by Judge Moore.  

USPTO Issues Final Rule on Patent Term Adjustments Under Supernus

On June 16, the USPTO published a final rule in the Federal Register revising the rules of practice regarding patent term adjustments in light of the U.S. Court of Appeals for the Federal Circuit’s (CAFC) 2019 decision in Supernus Pharmaceuticals v. Iancu, which held that reductions to patent term adjustments must be equal to the time in which the applicant failed to make reasonable efforts to conclude processing or examination of an application.

Using Alice’s Approach to Patent-Eligibility to Draft Patent Claims

The Federal Circuit has been criticized for creating categories of abstract ideas when applying Alice v. CLS’s two-prong framework and for refusing to define the contours of an abstract idea. Naturally, this causes uncertainty for those drafting patent claims. A typical view is that claims can be drafted by analogizing to them to the decisions. However, analogical reasoning has limited utility where the Federal Circuit continues to define new abstract ideas. This article argues that Alice’s definition of a patent-eligible claim is consistent with the Federal Circuit’s decisions and that this definition can be a useful analytical tool while drafting claims.

Effects of the Alice Preemption Test on Machine Learning Algorithms

Since the Alice decision, the U.S. courts have adopted different views related to the role of the preemption test in eligibility analysis. While some courts have ruled that lack of preemption of abstract ideas does not make an invention patent-eligible [Ariosa Diagnostics Inc. v. Sequenom Inc.], others have not referred to it at all in their patent eligibility analysis. [Enfish LLC v. Microsoft Corp., 822 F.3d 1327] Contrary to those examples, recent cases from Federal Courts have used the preemption test as the primary guidance to decide patent eligibility. Inventive concepts enabled by new algorithms can be vital to the effective functioning of machine learning systems—enabling new capabilities, making systems faster or more energy efficient are examples of this. These inventions are likely to be the subject of patent applications. However, the preemption test adopted by U.S. courts may lead to certain types of machine learning algorithms being held ineligible subject matter.

USPTO and Facebook Submit Briefs Explaining Effects of Thryv Ruling on Facebook v. Windy City

Last week, Facebook and the USPTO both filed briefs in response to a U.S. Court of Appeals for the Federal Circuit (CAFC) Order requesting that the parties and the U.S. Patent and Trademark Office (USPTO) file supplemental briefs explaining their views regarding the effect of the Supreme Court’s April 20, 2020 decision in Thryv, Inc. v. Click-To-Call Techs, LP on the CAFC’s March 18, 2020 decision in Facebook v. Windy City Innovations.  In Facebook, the CAFC ruled that the USPTO’s Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder.