Archive for June, 2019

Alice — Five years on

Wednesday, June 19th, 2019

Believe it or not, today marks the fifth anniversary of the Supreme Court’s Alice v. CLS decision. During that time the Federal Circuit has failed rather famously to come up with a definition of what is an abstract idea. You might remember that the Supreme Court punted on that issue as well, stating:

In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case.

Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2357 (2014).

Reply brief filed in Polaris v. Kingston — are APJ’s unconstitutionally appointed principal officers?

Wednesday, June 12th, 2019

Polaris has now filed its reply brief in the pending appeal of Polaris Innovations Ltd. v. Kingston Technology Co., Inc. at the Federal Circuit. You can read the reply brief here:

Earlier briefs filed in this appeal are available here:

Appellant’s Principal Brief 

USPTO’s Intervenor Brief

Kingston Response Brief

This appeal should be pretty interesting to follow. It raises several interesting questions about whether APJ’s are constitutionally appointed principal officers, as well as how broad is the authority of the Director of the USPTO with respect to the Board — master and commander or just captain of the team.

The Reply Brief cites a forthcoming article: The AIA Through a Constitutional Lens, 26 Geo. Mason U. L. Rev. (forthcoming), manuscript at 45, available athttps://ssrn.com/abstract=3105511.

It has been a few years since I last checked; but, I believe it takes about four months for a case to come up for oral argument after the completion of briefing. So, look for the oral argument to take place near the end of 2019.

I was watching to see if footnote 6 from the Supreme Court’s decision in Brenner v. Manson would make its way into one of the briefs. It does not look like it did. Footnote 6 of Brenner v. Manson makes a comment about whether the then-Commissioner of the USPTO was bound by determinations of the Board of Patent Appeals and Interferences.  The footnote reads:

[6] We find no warrant for this curious limitation either in the statutory language or in the legislative history of § 1256. Nor do we find persuasive the circumstance that the Commissioner may not appeal adverse decisions of the Board of Appeals. 35 U. S. C. §§ 141, 142, and 145 (1964 ed.). As a member of the Board and the official responsible for selecting the membership of its panels, 35 U. S. C. § 7 (1964 ed.), the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his seeking review of adverse decisions rendered by the CCPA.

See more comments from the oral argument of Brenner v. Manson at this previous post: [link].

Revival of patent applications lapsed due to §101?

Monday, June 10th, 2019

Should the pending patent legislation in Congress be amended to include a provision to reinstate patent applications that were lapsed by their owners due to §101 rejections? It is an interesting question. The need for legislation and public outcry over §101 makes clear that the Supreme Court and Federal Circuit made a mess of §101. Unsuspecting inventors disclosed their inventions to the public via their patent applications. Many subsequently abandoned their applications when faced with a drawn out battle over §101 issues. So, should Congress now reward those inventors by allowing their inventions to be patented? It could easily be accomplished to some extent by making an inventor show that they were facing a §101 rejection in an office action at the time the application was allowed to lapse. They would then need to complete prosecution under the new (hopefully) statute.

There’s an obvious downside to this. Others who have entered the market — particularly upon seeing a published application lapse — would be disadvantaged. I suppose the middle ground would be to make those who already had taken steps to practice a lapsed application immune from infringement.

The prospect of such a provision creates an interesting speculator’s market. All those abandoned and currently worthless applications could be snapped up with the prospect of becoming valuable if Congress were to enact such a provision.

What about patents invalidated by CBM’s or the courts for §101 reasons? After all, if they were being litigated, they were likely pretty valuable. Should there be a provision to reinstate them if they can be shown to satisfy a new patent eligibility standard and to meet the other requirements of patentability? What kind of prospective value would the invalidated patent in Ariosa v. Sequenom have at this point, for example?

Would the Director have authority to apply a new standard retroactively, if he should so choose? Historically, the USPTO seems to have had broad discretion to revive patents that missed their maintenance fee payments, for example. If I remember correctly, those decisions are not reviewable.