Posts Tagged: "Patentability"

Artificial Intelligence Can’t Patent Inventions: So What?

The USPTO’s recent landmark decision (16/524,350) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an AI identifies new, more efficient battery chemicals, will that new battery be unpatentable? If an AI builds chemical compounds that become the next wonder drug, will that drug-maker…

An Emerging Section 101 Expansion to Section 112(a) Enablement? The Federal Circuit Should Stop It Now

The most dominant, divisive issue in patent law over the last decade—Section101-eligibility and the Supreme Court’s Mayo-Alice framework—appears to have just become more divisive. Indeed, at least part of the reason for the controversy is that, with Mayo-Alice as the governing test, courts as a preliminary matter can decide Section101-eligibility based on considerations of an “inventive concept” and patentability—issues the Court once declared were “not relevant” to the separate eligibility provision of the Patent Act. Be that as it may, the Federal Circuit has recently issued certain decisions indicating that Section 101 now incorporates another vast area of invalidity; viz., the requirements for “enablement” under 35 U.S.C. §112(a). See, e.g., Customedia Technologies, LLC v. Dish Network Corp., 951 F.3d 1359, 1365-66 (Fed. Cir. March 6, 2020). In this article, we examine how this new requirement for Section 101 has emerged, the recent precedent on the issue, and the Patent Act’s requirements that undermine such Section 112(a) considerations for a Section 101-eligibilty test.

Federal Circuit Upholds Patent for Biologic Drug Enbrel; Judge Reyna Dissents

On July 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a holding of the U.S. District Court for the District of New Jersey in Immunex Corporation, Amgen Manufacturing, Limited, Hoffman-La Roche Inc. v. Sandoz, Inc., Sandoz International GMBH, Sandoz GMBH, holding that Sandoz failed to prove that the asserted claims were invalid for obviousness-type double patenting (ODP), failure to meet the written description requirement, and obviousness for lack of motivation to combine the prior art references. The ruling for now blocks Sandoz from marketing its biosimilar version (Erelzi) of the popular rheumatoid arthritis drug, Enbrel. Judge Reyna dissented, arguing that certain clauses of the licensing agreement were illusory, thereby rendering the agreement an effective assignment for purposes of ODP.

Lessons on Patent Subject Matter Eligibility from Dropbox v. Synchronoss

Since the Supreme Court decided Alice Corporation Pty. Ltd. v. CLS Bank International et al. on June 19, 2014, the number of patent application rejections by the U.S. Patent and Trademark Office (USPTO), the number of cases in the courts, and the uncertainty about whether an issued patent will hold up in court over an inquiry into patent subject matter eligibility under 35 U.S.C. §101 have all increased. Dropbox, Inc., Orcinus Holdings, LLC, v. Synchronoss Technologies, Inc., decided June 19, 2020, is a relevant recent (albeit nonprecedential) ruling by the United States Court of Appeals for the Federal Circuit that serves as a useful case study on what worked and went well and what didn’t for both plaintiff and defendant in a Section 101 case. At issue was the eligibility of Dropbox patents U.S. 6,178,505, U.S. 6,058,399 and U.S. 7,567,541.

Federal Circuit Agrees with PTAB that Firebug’s Footwear Claims Are Obvious

On June 25, the U. S. Court of Appeals for the Federal Circuit (CAFC) affirmed an appeal from two final written decisions of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Shoes By Firebug LLC v. Stride Rite Children’s Group, LLC, wherein the CAFC held that the PTAB did not err in concluding that the claims of two patents owned by Shoes by Firebug (Firebug) were obvious in view of the prior art.

Effects of the Alice Preemption Test on Machine Learning Algorithms

Since the Alice decision, the U.S. courts have adopted different views related to the role of the preemption test in eligibility analysis. While some courts have ruled that lack of preemption of abstract ideas does not make an invention patent-eligible [Ariosa Diagnostics Inc. v. Sequenom Inc.], others have not referred to it at all in their patent eligibility analysis. [Enfish LLC v. Microsoft Corp., 822 F.3d 1327] Contrary to those examples, recent cases from Federal Courts have used the preemption test as the primary guidance to decide patent eligibility. Inventive concepts enabled by new algorithms can be vital to the effective functioning of machine learning systems—enabling new capabilities, making systems faster or more energy efficient are examples of this. These inventions are likely to be the subject of patent applications. However, the preemption test adopted by U.S. courts may lead to certain types of machine learning algorithms being held ineligible subject matter.

CAFC Says District Court Abused Its Discretion in Granting Attorney’s Fees Under Sections 285 and 1117(a)

The U.S. Court of Appeals for the Federal Circuit today reversed a district court decision awarding attorney’s fees to Luv n’ Care Ltd. (LNC) against Munchkin, Inc. The Federal Circuit held that the district court abused its discretion in granting LNC’s motion for attorney’s fees as “LNC’s fee motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional.” The Court also pointed to its recent ruling in Amneal Pharmaceuticals v. Almirall regarding attorney’s fees with respect to Patent Trial and Appeal Board (PTAB) proceedings, though it did not reach that issue in the present case. The opinion was authored by Judge Chen.

Chamberlain Petitions SCOTUS to Review CAFC’s ‘Refusal to Assess Claims as a Whole’ in Garage Door Opener Case

On May 15, the Chamberlain Group Inc. filed a petition for a writ of certiorari asking the U.S. Supreme Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC) decision reversing a district court’s holding that Chamberlain’s claims covering a “moveable barrier operator” were patent-eligible under Section 101. If the Supreme Court grants review, it will consider whether the Federal Circuit “improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole,’ where the claims recite an improvement to a machine and leave ample room for other inventors to apply any underlying abstract principles in different ways.”

Illumina v. Ariosa Diagnostics: A Closer Look

The Federal Circuit recently found that a method for preparing an extracellular DNA fraction from a pregnant human female and using it for analyzing a genetic locus involved in a fetal chromosomal aberration was not directed to a natural phenomenon, and thus eligible for patenting. Illumina, Inc. v. Ariosa Diagnostics, Inc., No. 2019-1419 (Fed. Cir. March 17, 2020) (“Illumina v. Ariosa”). The decision includes a dissent. Appreciation of the reasoning of both the Majority and the Dissent is essential to understanding the current state of the debate on subject matter eligibility of processes involving natural phenomenon. The all-important question in such cases centers on how to determine whether such an invention is directed to a judicial exception. Stated differently, when does an invention that uses a natural phenomenon turn into a patent-eligible process rather than being directed merely to the natural phenomenon?

Dear USPTO: Patents for Inventions by AI Must Be Allowed

On July 29, 2019, U.S. patent application serial number 16/524,350 was filed with the U.S. Patent and Trademark Office (USPTO), with the sole inventor identified as artificial intelligence named “DABUS.” The assignee, Stephen Thaler, acknowledged that the invention was made by the creativity machine, without any human input. The USPTO issued a notice of missing parts, requiring identification of each inventor by name. Thaler then petitioned that the missing parts notice be vacated, which was denied, and Thaler petitioned for reconsideration. The USPTO issued its decision on the reconsideration petition on April 29, 2020, again denying the petition and concluding that the patent laws required a natural person as an inventor. The decision asserts that conception is the touchstone of invention, as the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is to be applied in practice. However, this decision is too narrowly focused, and should be reversed by the U.S. Court of Appeals for the Federal Circuit if Thaler appeals the USPTO ruling.

McRO Patent Upheld Again at Federal Circuit, But Not Infringed

The U.S. Court of Appeals for the Federal Circuit, in a precedential decision authored by Judge Taranto, today affirmed-in-part, vacated-in-part and remanded a decision of the U.S. District Court for the Central District of California in McRO, Inc. v. Bandai Namco Games America Inc. et. al. The case derives from the 2016 Federal Circuit decision determining that McRO’s challenged patent claims were directed to the display of lip synchronization and facial expressions of animated characters, which the court said were not directed to an abstract idea and were therefore patent eligible subject matter under 35 U.S.C. 101. In today’s ruling, the Court considered whether the district court’s decision on remand, which held that the Developer defendants and defendant-appellees “were entitled to summary judgment of noninfringement because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims,” was correct.

Plants and Animals Exclusively Obtained by Biological Processes Not Patentable at EPO

The Enlarged Board of Appeal (EBA) of the European Patent Office published opinion G 3/19 “Pepper” on Thursday, May 14, holding that plants and animals exclusively obtained by means of an essentially biological process are excluded from patentability. The opinion, which arose via a referral from the EPO President, also set out principles regarding the interpretation of the European Patent Convention (EPC) that could apply in other technical fields. 

The Long Reach of the Mathematics Patentability Exception is Overbroad and Absurd – Part II

In Part I of this series we examined the mathematics exception to patentability and the historical underpinnings of its justification. In Part II, we will continue to examine the case history around patenting of mathematic principles.

Flaws in the Supreme Court’s §101 Precedent and Available Ways to Correct Them

Amid the crush of patent-eligibility case law, see 35 U.S.C. §101, patent lawyers and even courts can lose sight of the key principles and precedents that serve as the foundation of the eligibility analysis. Or they may not have appreciated in the first place the underlying bases for these §101 cases and whether, for example, those cases accord with precedents they cite from decades before. In any event, this article addresses these foundational Supreme Court precedents for §101 and the Mayo-Alice ineligibility regime that dominates the patent landscape today. In particular, we trace the Court’s precedents from nearly 50 years ago, with an emphasis on key cases separated by some 30 years but tied together by the Court’s representation that it has faithfully followed (and not overruled) any such precedent. After analyzing the precedent in this light, with due emphasis on the Supreme Court’s decisions in Diamond v. Diehr, 450 U.S. 175 (1981) and Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), the article briefly examines the U.S. Patent and Trademark Office’s 2019 Patent Eligibility Guidance on §101—the Article II branch’s response to the §101 sea change wrought by the Article III courts. Finally, based on these authorities, the article offers a mix of points and observations for patent litigators and judges to consider as they continue to shape §101’s eligibility law.

The Long Reach of the Mathematics Patentability Exception is Overbroad and Absurd – Part 1

The mathematics exception for subject matter eligibility is overbroad because it was improperly justified under the premise that mathematics is like a law of nature. This is absurd because mathematics is everywhere, and excepting mathematics means excepting virtually everything. Recent court decisions declare that “[m]athematical calculations and formulas are not patent eligible,” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (2018)(“SAP AM.”), based on older decisions, such as Parker v. Flook, 437 U.S. 584 (1978) (“Flook”) and Gottschalk v. Benson, 409 U.S. 63 (1972) (“Benson”).

The USPTO’s Update on Subject Matter Eligibility of October 2019 (“OCT2019 PEG”) states, “The 2019 PEG defines ‘mathematical concepts’ as mathematical relationships, mathematical formulas or equations, and mathematical calculations,” and “where a formula or equation is written in text format that should also be considered as falling within this grouping.” This means that one can have a mathematical concept without even writing any mathematics. The USPTO can assert this illogical and absurd statement because the justification for the underlying mathematical exception itself is also illogical and absurd.