Posts Tagged: "Bob Stoll"

It is with great sadness that I write today on the occasion of the passing of a true legend in the patent world. Donald Dunner, a partner in Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, D.C., passed away earlier today. “Don was a great lawyer and a wonderful man. He also gave enormously of himself, and his time, to our profession and its organizations,” said Todd Dickinson, former Director of the USPTO and current Senior Counsel at Polsinelli.  “It was a genuine privilege to work with him on many issues and to count him as a friend.” Indeed, aside from the many legal accolades Dunner so rightfully earned during his lifetime, he was as good and nice a person as he was an excellent attorney. Perhaps that shouldn’t be remarkable, but Dunner always had a grace and elegance that set him apart. He was a friend to judges and politicians, as well as a mentor to countless attorneys.

Athena Diagnostics filed its petition for certiorari with the U.S. Supreme Court yesterday in Athena Diagnostics v. Mayo Collaborative Services. There is a strong argument for the Court to grant the petition, and patent stakeholders on all sides are sure to weigh in via amicus briefs over the next month. The petition could represent the best chance for clarifying Section 101 law in the near-term, since patent reform efforts on the topic have been seemingly stalled. Below are a few initial reactions from the patent community to Athena’s arguments.

In September 2018, the United States Patent and Trademark Office (USPTO) announced the substantial revision of Standard Operating Procedures (SOPs) for the paneling of matters before the Patent Trial and Appeal Board (PTAB) (SOP1) and precedential and informative decisions (SOP2), based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with America Invents Act (AIA) trial proceedings. Now, the USPTO’s Precedential Opinion Panel (POP)—which includes USPTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld, and Acting Chief Administrative Patent Judge Scott Boalick—has issued its first ever decision, holding that a petitioner may be joined to a proceeding in which it is already a party; that the Board has discretion to allow joinder of new issues in an existing proceeding; and that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors to consider when exercising this discretion. Despite that guidance, the POP emphasized that such discretion should be used only in limited circumstances, “namely, where fairness requires it and to avoid undue prejudice to a party.” Because the instant request for joinder was filed as a result of Petitioner’s errors, the Board dismissed the IPR petition, noting that “there are no fairness or undue prejudice concerns implicated, and the Petition is otherwise time-barred under § 315(b).”

The data shows that Section 101 allowances at the USPTO are on the rise after a long period of decline, but the 101 situation still remains “alarming,” said panelists during IPWatchdog’s webinar—”A Tale of Different Software Innovations: The Uneven Impact of Alice”—last Thursday, March 7. While Congress is currently considering ways to address the patent eligibility problem, the likelihood of a legislative fix this year is slim, said Bob Stoll of Drinker Biddle. “I believe we will see introduction of legislation on 101 as early as this summer, but I don’t anticipate anything being enacted,” Stoll said. “There’s a lot more going on to occupy their interests on the Hill.”

Yesterday a unanimous Supreme Court ruled that the America Invents Act’s (AIA’s) language barring patent protection for inventions that were “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” under 35 U.S.C. § 102(a)(1) extends to private sales to third parties. The decision upholds pre-AIA Federal Circuit precedent establishing that a “secret sale” could invalidate a patent. The question patent owners have been asking since 2011 was whether the AIA’s addition of the phrase “or otherwise available to the public” overruled the Federal Circuit’s judicial construction of the on-sale bar. “No,” said the High Court. As always, IPWatchdog reached out to experts across industries for their views on the decision. From “well-reasoned and correct” to “a disappointment” and “dismissive,” they had wide-ranging perspectives on the ruling’s broader implications.

The PTAB not only assented to Mirror Imaging’s suggestion that a five-page brief be entered in advance of the hearing but added that parties may submit one brief for each of the four CBM review proceedings which were petitioned by Fidelity… This could be a pivotal moment in the history of the PTAB specifically, and the USPTO more generally. If Director Iancu can achieve the goal of having the Patent Office speak with one voice, with patent examiners and the PTAB all following the same law and guidance, he will have achieved a united Patent Office that has been elusive, but desperately needed.

Given that several industry insiders were willing to make their own predictions, I’ll go out on a limb and make my own predictions… First, I predict Congress will do nothing on patent reform in 2019. With a divided Congress and a House of Representatives that could well spent precious legislative time on impeachment and other investigations, intellectual property matters likely won’t register even a blip on the public radar inside the beltway. Second, I predict there will be much effort behind the scenes on Capitol Hill to position various legislative fixes to 35 U.S.C. 101 so that when attention does turn to patent eligibility the ground work will be laid and much of the heavy lifting already done. So, if you think you can sit out 2019 because nothing is happening you’d be incorrect. Those that want to influence the next round of patent reform have already been working and by the time it is rolled out publicly it will be too late. Third, I predict the United States Patent and Trademark Office will define the term “abstract idea”. This is hardly going out on a limb since Director Iancu has all but promised just that in a speech given at Georgetown on November 26, 2018. Since the courts refuse to define the term the USPTO will closely identify only those innovations that the Supreme Court has identified as representing an “abstract idea” and closely define the term to mean those things and only those things are abstract ideas, with everything else in the computer implemented universe not being directed to an abstract idea and, therefore, patent eligible under Step 2A of the Alice/Mayo framework.

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. 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. 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.

There is near unanimity that the Supreme Court’s decisions in Oil States Energy v. Greene’s Energy Group, 138 S.Ct. 1365 (2018) was among the most significant events of the year. Several also point to the Federal Circuit’s decisions in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and Aatrix Software v. Green Shades Software, 882 F.3d 1121 (Fed. Cir. 2018), the impact Director Iancu has had on the USPTO and the patent system, and Congress passing the The Music Modernization Act. Beyond those events, there were others identified by this diverse panel that might have gone unnoticed if we were to focus only on the top-line events of the year.

Why is it that innovators such as Universities and independent inventors are caricatured as patent trolls while entities such as Unified Patents and RPX, who exist for the sole purpose of destroying property, are somehow let off the hook or even celebrated? In a different era, about 100 years ago, those large corporations and their allies who ganged up on smaller companies and individuals were characterized as ‘robber barons’ and caricatured as ‘fat cats’… The AIA makes clear that patent owners should not have to endure repeated attacks on their patent claims at the PTAB.

In SAS Institute, a 5-4 majority ruled that there is no authorization in the statute for the Patent Trial and Appeal Board (PTAB) to partially institute a petition for inter partes review. Thus, the Supreme Court held that when the Patent Office institutes an inter partes review it must decide the patentability of all of the claims the petitioner has challenged. To provide instant reaction to the Supreme Court’s decision in SAS Institute we’ve reached out to an All-Star panel of industry experts for their take on this important decision. Their analysis follows. 

Earlier today the United States Supreme Court issued its decision in Oil States v. Green Energy, finding that inter partes review is constitutional both under Article III and the Seventh Amendment to the United States Constitution. In a 7-2 decision, the Court determined that patents are a government franchise that are subject to review by the Patent Office even after granting, and can be revoked at any time.  In order to get a diverse array of views, we held open comments through early evening for this instant reaction piece.

Here is what Director Iancu had to say about the Wright Brothers: “At my swearing-in, I remarked that through the doors of the U.S. Patent and Trademark Office comes our future. And indeed, it does, and it always did. We must celebrate that. From Thomas Edison to the Wright Brothers, from Stanley Cohen and Herbert Boyer to Steve Jobs, American inventors have fueled the imagination of our people for generations. We are a pioneering people who overcome large obstacles in order to realize our dreams and create prosperity. Inventors help make dreams reality, and American invention changes the world. Indeed, with American patents, humans made light, began to fly, treated disease, and enabled instant communications across the globe from tiny devices in our pockets.”

There are no shortage of opinions about what Director Iancu should do now that he is at the helm of America’s innovation agency. To contribute to the advice Director Iancu is no doubt receiving from many corners already, I’ve asked a panel of industry experts to weigh and give their advice about what should be on top of the Iancu agenda.