Posts Tagged: "Judge Giles Rich"

SCOTUS Reversals Have Created a Compliant Federal Circuit

The Federal Circuit has been reversed so often by the Supreme Court it seems that at least some of the Judges on the Court have simply decided the take away message is the Supreme Court does not like patents. When faced with a decision about whether to find a patent valid or invalid they simply err on the side of finding the patent invalid, which seems safer and in keeping with what the Supreme Court would do… Such a level of subjectivity leads to chaos, and is driving innovation and innovators to Europe and China. Indeed, there are a growing number of software related innovations that cannot receive patents in the U.S., but which are patented in Europe and China. A decade ago we would have written the exact opposite.

What is Director Iancu Proposing the USPTO do for §101 Analysis?

Director of the U.S. Patent and Trademark Office Andrei Iancu made some interesting remarks yesterday at the Intellectual Property Owners Association Annual Meeting in Chicago on September 24, 2018 regarding a proposal for new guidance on how the USPTO would approach determination of subject matter eligibility under §101. In the IPO meeting’s (written) remarks, Dir. Iancu speaks at length about the current confusion in the Mayo/Alice framework and how “significantly more work needs to be done, especially on the ‘abstract idea’ exception.” Director Iancu asserted that “Currently, we’re actively looking for ways to simplify the eligibility determination for our examiners through forward-looking guidance. Through our administration of the patent laws, which we are charged to execute, the USPTO can lead, not just react to, every new case the courts issue.”

The Death of Invention

George Santayana is attributed with the aphorism: “Those who cannot remember the past are condemned to repeat it.” This is modern § 101 in a nutshell. Every horror we in the patent community are now experiencing under Alice/Mayo isn’t new, but a repeat of a drama played out long ago… Every great horror story has a monster… In the patent world, the monster is “invention.”

I Dissent: The Federal Circuit’s ‘Great Dissenter,’ Her Influence on the Patent Dialogue, and Why It Matters

Today, Judge Newman is the Federal Circuit’s most prolific dissenter, and her dissents are important. Former Chief Judge Paul Michel noted that “Judge Newman may hold the record for the most dissents. But her dissents have great force and often persuade other colleagues over time.” Judge Kimberly Moore concurred, saying “[w]hat people may not realize is that many of her dissents have later gone on to become the law—either the en banc law from our court or spoken on high from the Supremes.” She noted that “Merck v. Integra comes to mind. It’s a case where she wrote a very strong dissent. The Supreme Court took it and not only changed the state of the law to reflect what she had written, but they cited her outright in the opinion.”

Sections 101 and 112: Eligibility, Patentability, or Somewhere in Between?

Sections 101 and 112 provide their own separate limitations to the scope of patent protection in ways that are sometimes complimentary and sometimes contradictory… Inventors are motivated to maximize the breadth of their claims. But they may seek to do so by employing imprecise claim language. Both §§ 101 and 112 corral this behavior, although in slightly different ways. Section 101 safeguards against claims that are too abstract or overbroad to be patentable, being concerned with claims that would “wholly pre-empt” any other use of an inventive concept, thereby foreclosing independent innovations or application. Bilski, 561 U.S. at 610 (quotation omitted). Section 112 protects against claims that are not completely and functionally disclosed within the patent specification ensuring that patentees cannot claim more than what they have invented – and shared with the public.