MVS Filewrapper® Blog: Update on "Patent Troll" Legislation in the Wake of the 2014 Elections

Post by Luke Holst

In December of 2013, the U.S. House of Representatives passed H.R. 3309, the "Innovation Act," ostensibly to address the problem of abusive patent litigation, sometimes referred to as patent trolling.  While H.R. 3309 passed with bipartisan support by an overwhelming margin of 325-91 votes, its companion bill failed to clear the Senate.  Failure of the Senate bill is attributable to removal of controversial fee-shifting language from H.R. 3309 by Judiciary Committee Chairman Patrick Leahy, D-Vt. The fee-shifting provisions required losing parties in patent litigation to pay their opponent's legal fees—a situation critics argued would discourage the filing of meritorious patent suits by small businesses.  After votes on the Senate counterpart bill stalled repeatedly, Senator Leahy withdrew the bill from the Senate Judiciary Committee's agenda last May.

 

In the wake of the 2014 midterm elections, Republicans have vowed to take up the legislation again early in 2015.  House Judiciary Committee Chairman Bob Goodlatte, R-Va., recently stated that a new version of the Innovation Act, and two companion bills addressing trade secret protections, should be reintroduced in the U.S. House of Representatives in January and pass with bipartisan majorities.  The trade secrets legislation looks to create private civil trade secret misappropriation lawsuits under the federal Economic Espionage Act, which currently only allows prosecutors to bring criminal cases.  On the Senate side, Senator Charles Grassley, R-Ia., is expected to replace Leahy as Chairman of the Judiciary Committee as the Republicans take over the Senate majority in January.  Senator Grassley has signaled his intention to make patent reform a priority in the new Congress and believes patent reform can be accomplished early next year.  In addition, the White House has signaled its support for legislation curbing abusive patent litigation, signaling that this may be an issue for which meaningful legislative action could be seen during the 2015 term.

 

 

MVS Filewrapper® Blog: USPTO Releases New Guidelines on Patent Subject Matter Eligibility

Post by Dan Lorentzen

The USPTO today released new Guidance on Patent Subject Matter Eligibility.  The new guidance comes nearly 9 months after the first set of "2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of Nature/Natural Principles, Natural Phenomena, And/Or Natural Products"  were released in March 2014.  The March guidelines sought to implement new procedures to address changes in the laws relating to patent subject matter eligibility under 35 U.S.C. § 101 in light of the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. However, a new set of guidelines have been expected based on the more recent Supreme Court decision in Alice Corporation Pty. Ltd. V. CLS Bank International, and based on numerous comments and criticisms of the original guidelines. 

 

The new guidance presents a number of changes in relation to the March guidelines.

The new guidance also includes a new set of examples for "Nature-Based Products."  These examples replace the set of examples that were included with the March guidelines.  Additional explanatory example sets relating to claims that do and do not amount to significantly more than a judicial exception are apparently being developed to be issued at a future date.

 

A more detailed discussion of the new guidelines is forthcoming.

 

 

 

 

MVS Filewrapper® Blog: Shifting Pre-Trial Strategy in the Wake of Alice and Ultramercial

Post by Paul S. Mazzola

 

Four recent Supreme Court cases involving patentable subject matter under 35 U.S.C. § 101 (Bilski v. Kappos, Mayo Collaborative Services v. Prometheus Laboratories, Inc., Ass'n for Molecular Pathology v. Myriad Genetics, Inc., and Alice Corp. v. CLS Bank International ) have had the practical effect of heightening the standard for patentability.  However, these cases may also be altering the way patent cases are handled in their early stages.

 

The Federal Circuit recently decided the case of Ultramercial, Inc. v. Hulu, LLC for a third time.  The case was originally filed in the Central District of California in 2009. Initially, the district court granted the defendant's pre-answer motion to dismiss under Rule 12(b)(6), finding the patent at issue did not claim patent-eligible subject matter.  In the first appeal, the Federal Circuit reversed the district court, and the Supreme Court vacated the decision of the Federal Circuit for further consideration in light of Mayo. On remand, the Federal Circuit again reversed the district court, finding it was improper to dismiss the suit by granting a Rule 12(b)(6) motion.  To that end, the court made several compelling statements regarding the interplay between such motions and the § 101 analysis.  The court stated, "[I]t will be rare that a patent infringement suit can be dismissed at the pleading stage for lack of patentable subject matter."  The court reasoned that issued patents are presumed to be valid, and "the analysis under § 101, while ultimately a legal determination, is rife with underlying factual issues." Adding that claim construction should be required if there are factual disputes, the court succinctly stated, "Rule 12(b)(6) dismissal for lack of eligible subject matter will be the exception, not the rule."

 

After a second petition for certiorari was filed with the Supreme Court, the Court decided Alice.  The holding in Alice—that an abstract idea is not patent eligible subject matter if "merely requires generic computer implementation"—was squarely relevant to the patent at issue in Ultramericial, leading the Supreme Court to again vacate the decision of the Federal Circuit for further consideration in light of Alice.

 

In applying Alice to the patent at issue in Ultramericial, the Federal Circuit held that the claims do not recite patent-eligible subject matter under § 101, but affirmed the motion to dismiss under Rule 12(b)(6).  In doing so, the court deviated sharply from the decisive language from its previous decision, but dedicated no discussion to reconcile why a motion to dismiss is the appropriate mechanism to dispose of a suit involving an issued patent in an infringement suit presumably "rife with underlying factual issues."  However, the concurring opinion of Judge Mayer was almost entirely devoted to this issue.  "First, whether claims meet the demands of 35 U.S.C. § 101 is a threshold question, one that must be addressed at the outset of litigation.  Second, no presumption of eligibility attends to the section 101 inquiry."  Describing section 101 as a "gateway" and a "sentinel" akin to establishing jurisdiction, Judge Mayer forwarded three benefits of resolving any issue of patentable subject matter at the outset of litigation: conserving judicial resources, thwarting vexatious infringement suits, and protecting the public. In addressing the district court opinion, Judge Mayer stated, "No formal claim construction was required because . . . no 'reasonable construction would bring the claims within patentable subject matter.'"  Regarding the presumption of validity for issued patents requiring clear and convincing evidence to the contrary, Judge Mayer noted "the PTO has for many years applied an insufficiently rigorous subject matter eligibility standard." Thus, Judge Mayer found, "[T]he district court properly invoked section 101 to dismiss Ultramercial's infringement suit on the pleadings."

 

Given the apparent shift by the Federal Circuit toward resolving issues of patent-eligible subject matter at the pleadings stage, defendants of infringement suits involving uncertain subject matter eligibility are more likely to use a motion to dismiss to try to avoid costly discovery and claim construction.  The opportunity for an alleged infringer to undercut an infringement suit at the pleadings phase may also impact litigation strategy, including whether such a motion should be pursued in conjunction with other mechanisms such as post-grant proceedings before the Patent Trial and Appeal Board.

 

 

 

MVS Filewrapper® Blog: USPTO Publishes its 2014 Patent Public Advisory Committee Annual Report

By Jonathan Kennedy

The Patent Public Advisory Committee (PPAC) for the USPTO published its Annual Report for the 2014 fiscal year.  The annual report is directed to the President of the United States and addresses many issues faced in the previous fiscal year, summaries of goals met, and recommendations for the future. 

The 2014 report expressed concerns over the effect of sequestration and the USPTO's budget.  At the end of the 2014 fiscal year, the USPTO netted $129 million in fees.  The report notes the USPTO's continued concern over high user fees and beginning in the 2015 year is conducting a biennial fee review to assess any chilling effect on innovation and disclosure due to patent office fees.  This will include an assessment of whether the fees are commensurate with the USPTO's projected needs. 

The 2014 report discussed many goals that were achieved during the 2014 fiscal year including a significant reduction in the backlog of Requests for Continued Examination (RCEs).  Between October 2009 and March 2013, the number of RCEs awaiting examination grew from approximately 17,000 to over 110,000.  As of October 2014, this number has been reduced to 46,441.  The PPAC recommends that the Office establish a goal that all RCEs be examined within four months at the latest—four months is currently the average for when an RCE is examined.  This would help to progress the examination of applications.

The 2014 report also highlights the importance of some programs instituted by the USPTO to decrease patent pendency.  During the 2014 fiscal year total patent application pendency was reduced to an average of 27.4 months.  Specifically the report highlights the use of the After Final Consideration Pilot 2.0, Track One Prioritized Examination, Patent Prosecution Highway (see our recent series on ways to accelerate examination, which addresses both the Track One Prioritized Examination and Patent Prosecution Highway and other programs), and the Quick Path Information Disclosure Statement (QPIDS).  The report notes that QPIDS allows applicants to have new prior art considered by the USPTO without the need for an RCE after payment of the issue fee.  In the 2014 fiscal year there were 2,241 QPIDS requests filed and 1,934 continued on to issue with an RCE.  This program appears to be quite effective.

The report also addressed the opening of satellite offices in Denver, Colorado, Silicon Valley, California, and Dallas Texas, in addition to the satellite office already opened in Detroit, Michigan.  The USPTO hired an additional 137 patent examiners and 47 judges.  Further, the report notes an additional 112 examiners are expected to be hired in the 2015 fiscal year.  At the end of the 2014 fiscal year, the Patent Trial and Appeal Board (PTAB) had 214 judges. 

The report notes that the PTAB was kept busy during the 2014 fiscal year with appeals from examination and post-grant proceedings.  The PTAB affirmed or affirmed-in-part  67%, reversed 30%, and remanded or dismissed 3% examiner decisions on appeal.  Since the inception of the America Invents Act, the PTAB has received 2,082 petitions for post-grant proceedings—1,841 inter partes review petitions, 233 covered business method petitions, 2 post-grant review petitions, and 6 derivation proceeding petitions.   The report notes the vast majority of petitions related to the electrical and computer software arts at 71.6% of petitions.

MVS Filewrapper® Blog: Ways to Accelerate Patent Examination Before the USPTO – Part 4, Finale

By Jill Link

As discussed in a series of prior postings, there are various options to expedite examination and/or decrease the pendency and delays associated with patent examination before the United States Patent and Trademark Office (USPTO). These include: (1) the First Action Interview Pilot Program (see Part 1); (2) Track One Prioritized Examination (see Part 2); (3) Accelerated Examination (see Part 3); (4) the Patent Prosecution Highway; (5) Petitions to Make Special Based on either Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (6) Petitions to Make Special Based on Applicant’s Health and/or Age.

Patent Prosecution Highway and Petitions to Make Special are discussed in this posting.

The Patent Prosecution Highway (PPH)

The PPH program is available to patent applicants with foreign patent applications and is a mechanism to expedite the search and examination before either the USPTO or certain participating foreign countries. The PPH program does not guarantee a final disposition within a certain period of time; instead the program allows a USPTO Examiner to rely on the work (i.e. search and examination results) from an examiner in another country which has issued the same patent application. The requirement is that the U.S. patent claims be substantially similar to claims that have been found to be either allowable or have received a favorable international search report.

To utilize the PPH program, a request must be submitted prior to initiation of U.S. examination. The request must provide the examiner with the relevant search and examination results and there are no government fees associated with the request.  When this is done it is customary to receive a first Office Action within 3-6 months. Notably, use of the PPH program does not guarantee the U.S. examiner will issue the case (as laws differ between countries); however, providing this information can improve the odds (and pace) of receiving a U.S. patent.

Further detail of the PPH and its use for fast-tracking examination is available at the USPTO website.

Petitions to Make Special

The remaining two options for patent applications to expedite examination before the USPTO are only available to select applicants. These include a subject matter based qualification and an age and/or health based qualification. The petitions include: (1) Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism; and (2) Petitions to Make Special Based on Applicant’s Health and/or Age.

(1) Petitions to Make Special Based on Enhancing Environmental Quality, Contributing to the Development or Conservation of Energy Resources, or Contributing to Countering Terrorism

The first petition relating to the subject matter of a patent application allows the application to be advanced out of order for examination and is treated as "special" throughout the examination by virtue of the fact the invention relates to enhancing environmental quality, relates to conservation of energy resources and/or counter terrorism. There are no guaranteed time frames for a final disposition by using this form of petition; however, they are generally handled on an "expedited" basis. Such a petition is filed with the application and does not require an additional government filing fee. However, the petition must be accompanied by an Accelerated Examination (AE) Pre-Examination Search Document and an AE Examination Support Document. Further detail of the petition requirements is available at the USPTO website.

(2) Petitions to Make Special Based on Applicant’s Health and/or Age

This petition available based on the age and/or health of an inventor also advances the application out of turn and receives "special" treatment before the USPTO. Again, there is no assured timeframe for receiving a final disposition, however the goal is that they are handled in an expedited matter to ensure the patent applicant is able to participate in the examination of the patent application. To qualify, a patent applicant must show evidence they are 65 years of age or older and/or demonstrate their health is insufficient to allow their assistance in prosecution of an application pursuant to "its normal course." There are no additional government fees to file this petition, nor are there any requirements to file exanimation search and/or support documents. Those filing petitions are reminded that any information filed to show support for one's age and/or health will become public (unless filed pursuant to secrecy measures). Further detail of the requirements for Accelerated Examination is available at the USPTO website.

Patent applicants in need of promptly examined and issued patents may find value in these various programs discussed in this 4-part series. However, the decision to utilize any of the programs should be discussed with your patent attorney.

MVS Filewrapper® Blog: Oral Arguments Held in Appeal of First IPR

By Jonathan Kennedy

 

On November 3, 2014, a three-judge panel of the Federal Circuit heard oral arguments in In re Cuozzo—the appeal from the first inter partes review ("IPR") instituted by the USPTO.  As noted in our previous post, the appeal presents a number of interesting procedural and substantive issues.

 

While the oral argument did not address all of the issues on appeal, the arguments from counsel and questions from the judges featured some interesting moments.  The panel of judges included Circuit Judge Pauline Newman, Circuit Judge Raymond C. Clevenger, III, and Circuit Judge Timothy B. Dyk.  Some of the particular arguments and questions of note are discussed below.

 

One of patentee-appellant Cuozzo's primary contentions in the appeal is that the PTAB lacked authority to institute the IPR for claims 10 and 14 on grounds of unpatentability not identified in the petition.  In response the PTO argued that the decision to institute the proceeding is unreviewable by a court of appeal.  In particular, counsel for the USPTO argued that Congress "made the decision to institute the proceeding entirely unreviewable."  The judicial panel disagreed stating, "you can’t raise it by appeal, but [the statute] doesn't say that it is unreviewable."  One of the judges noted that there are other statutes that make it clear certain agency decisions are entirely unreviewable on appeal or otherwise.  However, in this instance the statute states, "The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable."  35 U.S.C. § 314(d).   Counsel for the USPTO countered arguing because it is clear the decision not to institute an IPR is not reviewable, likewise the decision to institute an IPR is not reviewable.  Again, the panel pushed back, noting the decision not to institute an IPR is within the USPTO's discretion, but if the PTAB blatantly exceeds its authority then that may provide grounds for review.

 

Another interesting argument related to patentee-appellant Cuozzo's argument that the broadest reasonable interpretation standard should not apply in an IPR.  The USPTO's position during arguments was two-fold.  First, counsel for the USPTO argued application of the broadest reasonable interpretation standard is consistent with decades of case law from the Federal Circuit.  Second, the counsel for the USPTO argued that in an IPR, or other post-grant proceeding, the patentee has the ability to amend the claims without further examination, and therefore the broader standard should apply. The USPTO pointed to the discrepancy between post-grant proceedings and court proceedings in the ability to amend the claims to support its position that the Philips standard, applicable to claim interpretation in the court, should not be applied in IPR. 

 

Judge Newman responded to the characterization that this issue has been decided for decades as not wholly accurate, since the decisions of record "haven't really gotten to the question of the difference between the appropriateness before the patent issues and after."  Judge Newman went on to state the ability to amend claims in post-grant proceedings is not as easy as the counsel indicated in the argument.  Counsel for the USPTO responded that amendments in post-grant proceedings should not be so easy, because no further search follows and examination follows.  Thus, the onus is on the patentee to explain why the amended claim would be patentable.

 

This dovetailed into a discussion of the appropriate requirement standard for amending claims in an IPR—another issue on appeal.  One of the judges asked, "[I]f the[] [patentee] make[s] a motion to amend and they can show that the amended claim is patentable, then they get the amendment, that is the test?" Counsel for the USPTO responded stating, "In order to make the motion they have to demonstrate or at least explain, give us a story as to why the claim is patentable."  The panel sought clarification asking, "Yes, but is that the only thing they have to do?"  Counsel for the USPTO replied with a caveat as to the number of claims for which the patentee is seeking to amend, noting the amendment would likely be denied for 500 claims, but "that is what they have to do" at least when seeking to amend one claim.  The USPTO also noted that in this instance the claim amendment was denied because it was not supported by the written description.

 

In rebuttal, the patentee-appellant, Cuozzo, noted that in 2 years of post-grant proceedings—including covered business method patent review, post grant review, and IPR—zero opposed motions to amend have been granted and only one unopposed motion to amend has been granted.  In conclusion, counsel for the patentee-appellant argued that the difficulty to amend demonstrates there is not a per se right to amend that would justify use of the broadest reasonable interpretation standard.

 

Ultimately, the Federal Circuit's widely anticipated opinion should provide clarity on a number of issues, and should be expected to issue in the next several months.

 

A recording of the oral arguments is available here.

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