Posts Tagged: "patentability requirements"

Balancing Innovation and Competition: Thomas Jefferson’s View of Obviousness for Mechanical Inventions

You cannot get a patent for an invention if it would have been obvious to a person of ordinary skill in the art at the time. This is as true today as it was at the founding of our nation. The reason for this rule is clear—the obviousness-bar is necessary to balance rewarding innovation with free and fair competition. The Supreme Court has observed, alluding to the Constitution’s authorization for federal patents, “[w]ere it otherwise, patents might stifle, rather than promote, the progress of useful arts.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007). While we all agree that obvious inventions should not be patented, the devil is in the details on how to draw that line between the obvious and the nonobvious.

Professors Tell SCOTUS to Correct the CAFC’s ‘Profound Misunderstanding’ in American Axle Case

In one of six amicus briefs filed this week in American Axle & Manufacturing v. Neapco Holdings, LLC—the closely-watched Section 101 patent eligibility case involving driveshaft automotive technology—Professors Jeffrey Lefstin and Peter Menell told the U.S. Supreme Court that the Federal Circuit’s 6-6 split decision to deny en banc rehearing in the case “mischaracterized fundamental patent principles and case law on which the modern patent system is built.” The professors added that “current § 101 jurisprudence conflates patent eligibility with the substantive requirements set forth in § 103 and § 112 and is getting more confusing by the day” and that “there is no patent law doctrine more in need of clarification.”

How to Safeguard AI Technology: Patents versus Trade Secrets

A common refrain is that an invention is only as valuable as the patent that protects it. But what happens when you cannot secure the patent? This is a frequent hurdle for inventors seeking to patent products utilizing artificial intelligence (AI). While still in its infancy, at least compared to the lofty expectations of technology enthusiasts, AI has proven integral to driving innovation, but it has also proven equally vexing to fit into the intellectual property legal regime.

Dyk Splits from CAFC Panel on Application of Collateral Estoppel to Inter Partes Reexaminations

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday held that the Patent Trial and Appeal Board (PTAB) incorrectly found certain claims of SynQor, Inc.’s U.S. Patent No. 7,072,190 unpatentable as obvious in an inter partes reexamination proceeding. The CAFC said that the PTAB’s previous reexamination decisions on related patents gave rise to common law issue preclusion that collaterally estopped the Board from such a finding. Judge Hughes authored the majority opinion and Judge Dyk dissented, calling the ruling “without support and contrary to governing Supreme Court authority.”

CAFC Reverses In-Part, Vacates In-Part PTAB Patentability Finding for Skin Cancer Detection Device

On February 18, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in an appeal by Canfield Scientific, Inc. (Canfield) from the decision of the U.S. Patent Trial and Appeal Board (PTAB or Board) on inter partes review (IPR) of U.S. Patent No. 7,359,748 (the ‘748 patent) owned by Melanoscan, LLC. The court held that the Board erred in ruling that all the claims of the ‘748 patent were patentable. The decision was reversed with respect to the independent claims and vacated and remanded as to the dependent claims.

CAFC Affirms Section 112 Invalidation/ Non-Infringement in Synchronoss v. Dropbox Dispute

On February 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s conclusion of invalidity under Section 112 and/or non-infringement in Synchronoss v. Dropbox. Synchronoss had appealed the district court’s decision that the asserted claims, which were “drawn to technology for synchronizing data across multiple devices” are either invalid under 35 U.S.C. Section 112 for indefiniteness, or not infringed.” Meanwhile, Dropbox cross-appealed, arguing that the claims are patent ineligible subject matter under Section 101. The patents at issue are U.S. Patent Nos. 6,671,757; 6,757,696; and 7,587,446.

Federal Circuit Says Amgen’s Repatha® Patent Claims Require ‘Undue Experimentation’ to Practice

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld the District of Delaware’s grant of judgment as a matter of law (JMOL) that Amgen’s patent claims covering its Repatha cholesterol treatment were invalid for lack of enablement. The court found that Amgen’s composition claims were defined by meeting functional limitations, rather than by structure, and that the patent specifications didn’t enable the preparation of the full scope of the claims without undue experimentation. Judge Lourie authored the opinion.  Amgen v. Sanofi (CAFC, Feb. 11, 2020)

Should We Require Human Inventorship? Submit Your Amicus Brief by March

Patent systems around the globe offer a quid pro quo that exchanges limited monopolies for disclosures of inventions. Most patent filings list: (1) the inventor(s); and (2) the applicant. The applicant may be an assignee (e.g., company, university, organization, etc.) with rights to seek patent protection on innovations that were identified during employment and that were within a scope of employment. Frequently, the assignee is a current or former employer of the inventor(s). In some jurisdictions (e.g., in the United States), the inventor(s) hold the rights to prosecute the patent application and assert any resulting patent unless and until the inventor(s) assign those rights to another entity (which is frequently done in employment and work?for?hire contracts). In some jurisdictions (e.g., the European Union), it is presumed that the party that applied for a patent holds the rights to the patent application. Thus, it is well-established that non-human entities may be the applicant, assignee, and/or owner of a patent. However, it is not well-established that a non-human entity may be an inventor on a patent applicant. Multiple patent offices (e.g., USPTO, UKIPO, and WIPO) have been considering what the standard in this respect should be.

Federal Circuit Affirms District Court Finding that Fax/Scanner Patent Claims Are Indefinite

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential opinion affirming a Delaware district court finding that Infinity Computer Products, Inc.’s patent claims relating to using a fax machine as a printer or scanner for a personal computer were invalid for indefiniteness. Infinity Computer Products, Inc. v. Oki Data Americas, Inc. (Feb. 10, 2020). Chief Judge Prost authored the opinion. The patents at issue were U.S. Patent Nos. 6,894,811; 7,489,423; 8,040,574; and 8,294,915, which share a specification. The term at issue was “passive link,” which refers to the link between the fax machine and the computer.

USIJ to Supremes: Set Boundaries on 101 Jurisprudence to Save U.S. Innovation

The Alliance of U.S. Startups & Inventors for Jobs has filed an amicus brief supporting American Axle & Manufacturing, Inc.’s petition for certiorari with the U.S. Supreme Court, claiming that many feel that “the U.S. patent system appears to be on life support”. The brief generally argues: The panel majority decision fails to comply with eligibility precedents established by the Court and Federal Rule of Civil Procedure Rule 56 (Rule 56); and Investments in technology startups in American has been declining for more than a decade.

Federal Circuit Reiterates It Will Not Be Bound by USPTO Eligibility Guidance

Earlier today, in cxLoyalty, Inc. v. Maritz Holdings, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed-in-part, reversed-in-part and dismissed-in-part a decision of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) in which the CAFC doubled down on its past contention that the USPTO’s Subject Matter Eligibility Guidance is not binding on the court’s analysis. The panel included Chief Judge Prost and Judges Lourie and Hughes. The opinion was authored by Prost.  

The Day One Project Examined: USPTO Transition Proposals Advocate Questionable PTAB, Section 101 Policies

Recently, the Day One Project, an initiative of the Federation of American Scientists, released a transition document drafted by a collection of veteran policymakers discussing a range of policy ideas to be implemented at the U.S. Patent and Trademark Office (USPTO) starting from the earliest days of the Biden Administration. The ideas advocated by the Day One Project focus on a mix of policies related to diversity, international IP systems, patent quality, agency budgeting and governance and ways that the USPTO can contribute to broader administrative policy initiatives. While there are many sound policy positions advocated by the Day One Project, patent owners may want to be aware of the document’s stance on the “public benefit of PTAB review of a patent” as well as the agency’s role in developing policy on patentable subject matter reform. Interestingly, the policy document indicates that there is broad consensus for continuing policies from the Trump Administration relating to China’s influence on the world of intellectual property.

CAFC Partially Vacates PTAB for Legal Error in ‘Reasonable Expectation of Success’ Analysis

On January 27, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in-part and vacated in-part a decision of the Patent Trial and Appeal Board (PTAB) in its inter partes review of claims 1—20 of U.S. Patent No. 8,370,106 (the ‘106 patent) assigned to KEYnetik, Inc. (KEYnetik). Judge O’Malley concurred in part and dissented in part. In particular, the CAFC concluded that the PTAB did not err in its claim construction regarding an orientation detection limitation and a sequence limitation. Further, the CAFC affirmed the PTAB’s decision that the Petitioner’s references could be combined. However, the CAFC also found that the PTAB failed to properly assess the appellant’s argument regarding a reasonable expectation of success when combining references and therefore vacated the decision and remanded the case so that the Board could make such a determination.

US Inventor Backs SCOTUS Petition to Clarify Claim Construction Principles

Inventor advocacy group US Inventor has filed an amicus brief in support of a petition to the U.S. Supreme Court asking the justices to clarify “[w]hether the Federal Circuit’s “heavy presumption” line of cases or its “holistic” line should govern claim construction. The petition was filed in December by Akeva, LLC, owner of a portfolio of athletic footwear patents, and is an appeal from a July 2020 nonprecedential Federal Circuit decision, Akeva, LLC v. Nike, Inc. In that case, the Federal Circuit upheld a district court’s grant of summary judgment of noninfringement to a number of defendants—including Asics, Nike, adidas America, Inc., New Balance Athletic Shoe, Inc., and Puma North America, Inc.—finding in part that the district court had “correctly construed the claim term ‘rear sole secured’ to exclude conventional fixed rear soles.”

Iancu Says Goodbye, Urges Commitment to ‘American Innovation Renaissance’

One day before Joe Biden was to be inaugurated as the 46th U.S. President, U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu confirmed he would be leaving his position as USPTO Director, reminiscing on his tenure with the Office in his latest Director’s Forum blog post and in remarks made at a United States Chamber of Commerce Global Innovation Policy Center event yesterday. Iancu recalled his successful efforts to clarify examination guidelines on patent eligibility and to balance post-grant proceedings, noting that, “In light of our many carefully-calibrated reforms, Senator Tillis recently said that the PTAB is no longer a death squad for patents. It is indeed a new day at the PTAB.” While many would not agree, it is generally accepted that Iancu’s administration has been a boon for patents, and the IP community will no doubt be sad to see him go.