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Posts Tagged: "Amicus"

The U.S. Patent System is Still Worth Saving

Much deserved criticism has been leveled at the U.S. patent system in the last decade or so, from all sides. No one branch of the system seems to much appreciate what the other branches are doing. The Supreme Court and Federal Circuit are issuing decisions that seem innocuous at first, but then inevitably snowball into wrecking balls. Regulatory policies, guidelines and statutory prescriptions that are well intended when the ink dries turn lethal to patents—witness the creation of the Patent Trial and Appeal Board (PTAB). But, despite this situation, in the late summer/early fall of this year, in a brief burst of face-to-face patent events, I began to re-appreciate the value of the system and what it means to the country and our collective future.

Chamberlain Petitions Full Federal Circuit to Correct Appellate Overstep on Patent Eligibility

As anticipated, the Chamberlain Group, Inc., in a corrected petition for rehearing filed today, asked an en banc panel of the Federal Circuit to reconsider its August 21 precedential decision, which in part reversed a district court’s finding that certain claims of Chamberlain’s patent for a “moveable barrier operator” (for example, a garage door opener) were not abstract under Section 101.  “Not only did the panel err in resolving [Alice] step two in the first instance, it misapplied an essential requirement of step two,” says the Chamberlain petition. In addition to contradicting its own assertions that appellate courts should not conduct fact-finding, the Federal Circuit’s approach conflates Alice steps one and two, “focusing the step two inquiry on the abstract idea itself, disregarding the ‘additional elements’ inquiry of Alice,” the petition adds.

Nantkwest Amici Urge SCOTUS Not to Shift Attorney’s Fees in Section 145 Appeals

This March, the U.S. Supreme Court granted a petition for writ of certiorarito take up Peter v. Nantkwest Inc., on appeal from the Court of Appeals for the Federal Circuit. The case will ask the nation’s highest court to determine whether the phrase “[a]ll expenses of the proceeding” found in 35 U.S.C. § 145, which governs appeals to district court of U.S. Patent and Trademark Office decisions to deny the issue of a patent grant, encompasses personnel expenses incurred by the USPTO, including attorneys’ fees, when its employees defend the agency against Section 145 litigation. On July 22, a series of intellectual property and law associations filed amicusbriefs in the case by and large supporting the position of Nantkwest. This includes the American Bar Association, which argued that the USPTO’s interpretation of the statute would “hamper the equal access to justice and chill the assertion of meritorious claims.” Other Nantkwest amici argued that the government has had the statutory authority to collect ‘expenses of the proceeding’ in patent cases since 1839 but for the 174 years prior to the case against Nantkwest, the USPTO has declined to seek attorney’s fees.

Is the Government a ‘Person’? NYIPLA tells SCOTUS it depends

After reviewing the way the term “person” is used throughout the statute it is clear that in some provisions of the Patent Act, the term necessarily should be interpreted to include the government (e.g., 35 U.S.C. § 296(a), expressly including government in the definition of “person”), while in other provisions the term “person” should be interpreted to exclude the government (see, e.g., 35 U.S.C. §§ 3(a) and 6(a), which clearly exclude the governmental entities like the USPS, but would include individuals in the government’s employ). Accordingly, reliance on universal definitions from the Dictionary Act, 1 U.S.C. §§ 1 and 8, governing the U.S. Code in general, and likewise on other general definitions of “persons” from relevant case law (e.g., Cooper), may well cause inadvertent problems with respect to the Patent Act. Rather, as set forth below, the answer to the question posed by this case should depend on the legislative context relating to creation of various post-issuance patent challenge proceedings and the PTO’s longstanding interpretation of “person” to include the governmental entities for purposes of ex parte  and inter partes reexaminations.

Where is the line between patentable subject matter and non-patentable products of nature?

A conflict exists between the incentive to invent and the breadth of patent-eligible subject matter. It has become difficult to recognize the line between patentable subject matter and non-patentable products of nature. The Supreme Court has made conflicting statements regarding that line in its rulings in Funk Bros. and Myriad Genetics. It is time for the Supreme Court to resolve the inconsistencies in their rulings on 35 U.S.C. § 101… This case is an ideal vehicle for providing the clarification the patent and investment community require.  At issue is how to determine whether something is a product of nature under 35 U.S.C. § 101.

Shadow Advocacy: A Look Inside the Amicus Process

Paying due homage to the TV series, The Twilight Zone, you have now entered the strange world of “shadow advocacy,” aka the amicus process. Indeed amicus advocacy has taken on increasing importance in recent years in the IP law world generally, and in the patent law world specifically, as witnessed, for example, by the Mayo, Myriad, and Alice cases which reached as high as the U.S. Supreme Court (aka, SCOTUS), as well as Sequenom’s failed petition for certiorari which garnered almost two dozen separate amicus briefs in support, including two from organizations outside the U.S. Shadow Advocacy: A Look Inside the Amicus ProcessBecause the stakes in this “shadow advocacy” world have never been higher, the amicus process has recently and unfortunately been turned sometimes into a “propaganda campaign” where briefs express not just viewpoints, but also try to influence the decision-makers, be they federal appellate judges or Supreme Court Justices, as to what those “facts” are.

PTAB Chief Ruschke says Expanded Panel Decisions are Conducted in Secret

Ruschke noted that his authority to expand the panels for PTAB trials doesn’t require him to notify the parties in the trial that the decision to expand the panel has been made. In response to questions on panel expansion, Ruschke noted that when the decision to expand the panel has been made, “the parties will find out in the decision when it issues at that point.” So decisions to expand panels are made in secret and parties in the trial only find out about panel expansion after a decision is reached… Interestingly, petitioner General Plastic requested a rehearing with an expanded panel but the expanded panel in that case found that PTAB’s governing statutes do not permit parties to request, or panels to authorize, expanded panels; panel expansion only lies within the Chief Judge’s discretion.

Tech’s Ruling Class Files Amici Briefs with U.S. Supreme Court in Oil States Case

October 30th was a very busy day for amici filing briefs with the U.S. Supreme Court on how the highest court in the nation should decide in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, a case in which oral arguments will be heard on November 27th. Many of the briefs filed on the 30th were submitted by some of the biggest names in the tech industry. Taking a look at briefs filed by this major companies, some of whom have been seeing great success in patent validity trials at the Patent Trial and Appeal Board (PTAB), it’s both revealing and unsurprising to find how the tech ruling class feels that the Supreme Court should decide in Oil States.

Law Professors File Briefs with the Supreme Court in Oil States

A review of amici briefs filed with the U.S. Supreme Court in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC provides evidence of a stark split in how various stakeholders in the U.S. patent system view the patent validity challenge activities ongoing at the Patent Trial and Appeal Board (PTAB). Whereas many of the world’s largest tech companies who have a dominant advantage in the consumer marketplace are in favor of the PTAB remaining active, many small entities and individual inventors are greatly opposed to the PTAB and its differing standards on patent validity leading to a higher rate of invalidation than in Article III district court proceedings. A look at amici briefs coming from law professors can shed some light on where the academic sector comes down on the subject of the PTAB’s constitutionality.

Solicitor General Tells SCOTUS that Patents are Public Rights in Oil States Brief

The government’s brief argues that IPR proceedings at the PTAB are consistent with Article III because, in its view, patents are public rights and not private ones and the right for an inventor to seek a patent is a public right. In the government’s eyes, it is constitutionally permissible for the U.S. Patent and Trademark Office to reassess previously issued patents for revoking in order to “correct its own errors.” If the PTAB errs, then patent owners have legal recourse in appealing those cases to the Court of Appeals for the Federal Circuit, the government argues.

Independent Patent Owners File Briefs with Supreme Court in Oil States

A review of amicus briefs filed with the U.S. Supreme Court in advance of oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC revealed that, by and large, the American tech ruling class wishes to see SCOTUS leave the Patent Trial and Appeal Board (PTAB) intact in the face of the constitutional challenges facing the PTAB in the case. Today, we’ll review a series of briefs filed by amici representing many of the smaller players in the U.S. patent system who have by and large been railroaded at the PTAB, an agency which invalidates patents at an incredibly high rate, fails to follow Congressional statutes regulating its own activities and stacks administrative patent judge (APJ) panels to achieve policy objectives desired by the Director of the U.S. Patent and Trademark Office.

A Patents as Property Rights History Lesson

Several of the briefs address the absurdity currently being advanced, claiming patents are so-called “public rights.” This novel notion — more in line with Karl Marx than John Locke — is a direct assault upon the very essence of private property rights… The Cato-ACUF brief reasons “public rights” into a sniveling lump: “Ultimately, the implications of the argument that merely because a right to particular property flows from a statutory scheme, such rights are ‘public rights’ and that disputes over them can be withdrawn from Article III courts are staggering. Such a conclusion would mean that anyone who derives his land title from the Homestead Act can be forced to have any disputes over that property be resolved by a bureaucrat in the Bureau of Land Management. Under this view, Congress could require that a dispute between an individual and a private financial institution over a mortgage or a student loan be heard before an official in the Treasure Department on the theory that the relevant loans were made pursuant to a federal statutory scheme. The government enacts statutes affecting property rights all the time, but that does not convert the rights that trace their roots to such statutes into ‘public rights.’”

Request for Amicus Support at Federal Circuit in Evolutionary Intelligence v. Sprint Nextel Corp.

Since the Supreme Court’s Alice decision, district courts and the Federal Circuit have been ruling on what they perceive as the “abstractness” of patents—not with analysis of the claimed invention, but by referring broadly to a patent’s field of invention, the problems a patent sets out to solve, even generalizations about what the patent means to the court. This is a marked departure from the historical analysis of patent claims. Disturbingly, this process can be used to invalidate any patent because it is based on broad generalities and assumptions rather than precisely defined and examined claims. While some applaud the courts’ actions as helping to extinguish so called “bad patents,” valid and enforceable patents are being destroyed as well. The resulting destruction of valuable intellectual property damages America’s innovating community… Appellant Evolutionary Intelligence has secured a 30-day extension to file the combined petition, now due April 19, 2017. Amicus briefs in support of the petition are due on April 26, 2017. FCR 29.

Life Technologies Corp. v. Promega Corporation: What No One Is Telling the Supreme Court

In its upcoming term, the Supreme Court will once again consider the extraterritorial effect of U.S. patent law; specifically, whether “the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.” Life Tech. Corp. v. Promega Corp., No. 14-1538. Petitioners (all subsidiaries of Thermo Fisher Scientific Inc., which I shall collectively call “Life”) urge the Court to hold the statute requires “all or a large percentage closely approximating all” of the components of the invention to have been made in the United States. Though Promega Corporation has yet to respond, the Court should decline Life’s invitation. This does not mean, however, that the decision of the Federal Circuit, Promega Corp. v. Life Tech. Corp., 773 F.3d 1338 (Fed. Cir. 2014), should be affirmed. Rather, though none of the briefs filed in the case have said so, the Supreme Court should reverse because the single, commodity component at issue cannot, as a matter of law, even under Promega’s interpretation of the statute, comprise a “substantial portion” of the components of the invention.