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.