Posts Tagged: "patentability requirements"

All of this can really be traced all the way back to the flash of creative genius test by the Supreme Court, which Congress specifically outlawed in the 1952 Patent Act. It is no doubt making a resurgence under slightly different terminology, but make no mistake — Judges are making subjective decisions about innovations in a way that is remarkable similar to how the flash of creative genius test was applied. But today the problem is not only all of the aforementioned, misguided beliefs, but rather we have a general problem with ignorance. It is self evident to anyone who cares to be honest and objective that it takes time and money to innovate; innovation does not simply fall out of the sky or invent itself.

Simply stated, strong patent rights are an absolute prerequisite for a high tech economy…. With a steep and significant erosion of patent rights and a horribly uncompetitive corporate tax structure the future for high tech companies in the United States is bleak… The world’s best and strongest patent system combined with good tax policies made the U.S. the dominant force in the world. Now we have an antiquated tax system that ranks us at or near the bottom and many biotechnology and software innovations aren’t patentable, while others are declared obvious de novo. Say it out loud. It makes even less sense when you speak the words.

On the very same day that the U.S. jobs report shows unexpectedly weak growth, the Federal Court of Australia issued a ruling directly opposite to the ruling rendered by the United States Supreme Court relative to gene patents. In Yvonne D’Arcy v. Myriad Genetics, Inc., the Federal Court of Australia ruled that Myriad’s claims to isolated DNA are patentable under the laws of Australia. That is the correct ruling, and it is the ruling the U.S. Supreme Court should have reached in Association of Molecular Pathology v. Myriad Genetics. As the patent eligibility laws of the U.S. become increasingly inhospitable to high-tech innovative businesses we can expect more job losses and worse news for the U.S. economy on the horizon.

LEMLEY: “I think Alice is a real sea change on the patentable subject matter issue. I’ve heard a lot of folks talk about how Alice doesn’t really use the word “software” so it doesn’t really change anything, but I honestly think that’s wishful thinking… I think a lot of patent lawyers had talked ourselves into thinking that the Court didn’t really mean it in Mayo when it talked about having to add a significant inventive component beyond the abstract idea or the natural process. But the court in Alice makes it clear that if your patent covers an implementation of an idea we want proof of an inventive concept beyond that idea before we’ll grant you a patent.

Without any legitimate statutory precedent or authority the Supreme Court is wrecking the U.S. economy just as sure as snow is white and water is wet. Unfortunately, a terribly divided Federal Circuit is causing their own brand of destruction. We are entering a dark time for patents; one that will have a significant deleterious effect on the U.S. economy…. While the Supreme Court is assaulting patent rights vis-a-vis patent eligibility, the United States Court of Appeals is assaulting patent rights from a different angle — obviousness. The Federal Circuit has long been infatuated with de novo review, which means that they get to do whatever they want and give absolutely no deference to the district court and/or jury, but lately the Federal Circuit has ratcheted it up a notch.

Recently I had the opportunity to interview Bob Zeidman, the president and founder of Zeidman Consulting, who is also the president and founder of Software Analysis and Forensic Engineering Corporation, Zeidman is an software expert. In fact, in addition to consulting with lawyers and technology companies, he is an testifying and consulting expert witness. The premise of our conversation was the upheaval in the patent industry thanks to the Supreme Court’s decision in Alice v. CLS Bank. In part 1 of our conversation we discussed the decision and ways that attorneys can build a specification to satisfy the Alice standard. In part 2 of our 3 part discussion, which appears below, we wrap up our discussion of the Alice decision and dive into a discussion about the fact that many in the computer science world don’t believe what they do to be particularly innovative or even special.

This is just another example of the Federal Circuit substituting its own decision for that of the decision maker at the district court level. It is one thing when the Federal Circuit ignores the factual findings of a district court judge, but an entirely different matter when facts found by a jury are ignored… Sadly, the Federal Circuit, or at least some panels, no longer operate as an appellate court. The Federal Circuit operates as a super-trial court, particularly with respect to obviousness. This is extraordinarily problematic given that the Supreme Court has shown no interested in taking even egregious obviousness decisions for appellate review.

Judge Michel: “[I]t’s bad news at least for the reason that it will create total chaos. No one will know what is eligible and what is not eligible so there will be no predictability, no consistency, and that by itself will create delays and costs and discourage progress that the Constitution was trying to promote by encouraging Congress to create the patent system. Consider the decision makers. You’ve got 9,000 patent examiners, 250 or so board members, approximately 1,000 district judges, and a few other people, the International Trade Commission, the Federal Circuit, and so on. So you’re talking about 10,000 decision makers. I don’t see any way they can apply the Alice standard in a way that’s fair or consistent or predictable. And all the other people who are involved in advising economic actors and business leaders are similarly faced with chaos and uncertainty, delay and extra costs.”

From a patent challenger’s perspective, Alice further reinforces the need to evaluate whether an early dispositive motion under § 101 can end the litigation. In crafting such motions, it is important to clearly define the abstract idea and to demonstrate how it is merely well-understood, routine, conventional activity. Additionally, it may be helpful to articulate how the claims do not recite any technological improvement. Another strategy is to petition the PTO to institute a covered business method (CBM) patent review. A CBM proceeding may be preferred as the evidentiary burden is lower compared to district court litigation. Currently, the PTO has taken the position that § 101 is an available basis for challenging claims in a CBM proceeding. However, please note that the availability of §101 is being challenged at the Federal Circuit.

A troubling aspect of the analysis in the Alice opinion is the suggestion that an invention, once patent eligible, can become patent ineligible simply based on the passage of time and public adoption. Dialogue in the oral argument as well as statements in the Court’s opinion suggest this line of reasoning, which arguably originated in Bilski, has become an accepted principal . . . An invention may initially be susceptible to patenting but may later become ineligible for patenting (as opposed to becoming unpatentable due to lack of novelty or obviousness) as it becomes more adopted, ubiquitous, successful or commonplace. Ubiquity, it would seem, is now the touchstone not only for patentability but for patent eligibility too.

Over the last several days I have heard of an alarming trend from the United States Patent and Trademark Office — Patent Examiners are canceling Notices of Allowance and yanking previously granted claims back into prosecution while citing the United States Supreme Court’s ruling in Alice v. CLS Bank. In some instances granted claims are being pulled back into prosecution only to be rejected as lacking patent eligible subject matter even after the issue fee has been paid. This is an alarming trend that seems to be building steam as virtually everyone who operates in this space is now seeing this happen and/or they are seeing supplemental office actions issued where the pending office action never rejected claims based on patent eligibility grounds.

With the Supreme Court’s most recent foray into the patent-eligibility world in Alice Corp. v. CLS Bank International, we now have a complete and utter disaster as to what data processing claims can (or more unfortunately cannot) survive scrutiny by Our Judicial Mount Olympus under 35 U.S.C. § 101. I once had respect for Justice Thomas’ view on patent law jurisprudence, having considered his substandard opinion in Myriad on the patent-eligibility of certain “isolated” DNA claims to be an “isolated” aberration. But having now read his mind-boggling Opinion for the Court in Alice Corp., I’ve now thrown my previously “cheery” view of Thomas’ understanding of patent law jurisprudence completely into the toilet. I have even less kind words to say about the three Justices that signed onto Justice Sotomayor’s disingenuous concurring opinion that accepts retired Justice Steven’s equally disingenuous suggestion in Bilski that 35 U.S.C. § 273 (in which Congress acknowledged implicitly, if not explicitly the patent-eligibility of “business methods” under 35 U.S.C. § 101) is a mere “red herring.” See Section 273 is NOT a Red Herring: Steven’s Disingenuous Concurrence in Bilski.

Ray Niro: “The Administration has become a shill for Google — you even have a Google person running the Patent Office. So you have a situation where any number of patents, tens of thousands of patents, are going to be affected by Alice and also by the Limelight decision on split infringement.”