On May 22, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Odyssey Logistics and Technology Corporation v. Iancu in which the appellate court affirmed the Eastern District of Virginia’s dismissal of claims filed against the U.S. Patent and Trademark Office under the Administrative Procedures Act (APA). The Federal Circuit agreed with the lower court that Odyssey’s challenges to the USPTO’s rules and procedures governing ex parte appeals at the Patent Trial and Appeal Board (PTAB) should be dismissed for lack of subject matter jurisdiction or were barred by the six-year statute of limitations for actions against the U.S. governed by 28 U.S.C. § 2401.
On May 26, Zaxcom filed an appeal brief with the United States Court of Appeals for the Federal Circuit (CAFC) requesting review of the Patent Trial and Appeal Board (PTAB) decision in which the PTAB invalidated claims directed to Zaxcom’s award winning wireless microphone technology. Zaxcom appealed the inter partes review (IPR) proceeding, which was filed by Lectrosonics, Inc., arguing that the PTAB misconstrued the patent claims and failed to properly consider evidence of industry praise.
Last week, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision on appeal from the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) in ESIP Series 2, LLC, v. Puzhen Life USA, LLC. The CAFC found no error in the PTAB’s holding that the claims at issue were obvious and determined that the PTAB’s decision to institute inter partes review (IPR) despite ESIP’s contention that Puzhen failed to identify all real parties in interest was final and non-appealable.
On May 15, the Chamberlain Group Inc. filed a petition for a writ of certiorari asking the U.S. Supreme Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC) decision reversing a district court’s holding that Chamberlain’s claims covering a “moveable barrier operator” were patent-eligible under Section 101. If the Supreme Court grants review, it will consider whether the Federal Circuit “improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole,’ where the claims recite an improvement to a machine and leave ample room for other inventors to apply any underlying abstract principles in different ways.”
In March, Chrimar Systems, Inc. filed a petition for certiorari asking the U.S. Supreme Court to decide: 1) whether the Federal Circuit may apply a finality standard for patent cases that conflicts with the standard applied by the Supreme Court and all other circuit courts in non-patent cases, and 2) whether a final judgment of liability and damages that has been affirmed on appeal may be reversed based on the decision of an administrative agency. On April 23, the Court requested a response from ALE USA, Inc., which had waived its right to respond earlier that month. As a result, the deadline for amicus briefs was reset and one more amicus, Baxter International, submitted its brief in support of Chrimar on May 22, followed by ALE’s brief in opposition to the petition on May 26.
The Federal Circuit recently found that a method for preparing an extracellular DNA fraction from a pregnant human female and using it for analyzing a genetic locus involved in a fetal chromosomal aberration was not directed to a natural phenomenon, and thus eligible for patenting. Illumina, Inc. v. Ariosa Diagnostics, Inc., No. 2019-1419 (Fed. Cir. March 17, 2020) (“Illumina v. Ariosa”). The decision includes a dissent. Appreciation of the reasoning of both the Majority and the Dissent is essential to understanding the current state of the debate on subject matter eligibility of processes involving natural phenomenon. The all-important question in such cases centers on how to determine whether such an invention is directed to a judicial exception. Stated differently, when does an invention that uses a natural phenomenon turn into a patent-eligible process rather than being directed merely to the natural phenomenon?