It’s Not Enough, But Every Journey Begins with One Step.
You can’t breath in space without oxygen. And these days, it can feel like Alice and the AIA sucked all the air out of the room for patentees. But there are signs of hope.
On Sept. 28, I took a deep breath of fresh air after a Federal Circuit reversed a ruling of the U.S. District Court (N.D. Cal.) in a precedential decision favoring AddyHart’s client Cooperative Entertainment, Inc.
Federal Circuit Faces an Old Challenge under New Chief Judge Moore. It Should Assume the Burden of Its Historical Mandate.
The law of patentable subject matter is a mess.
Prof. Mark A. Lemley — Stanford Law School (2019)
[This post is an amended version of a piece I published on IPWatchdog.com on 25 Oct. 2021.]
The first was from Marc Karlinsky, editor of Chicago Daily Law Bulletin. It read, “New bill sheds light on sunscreen issue,” and the lede read, “Like other states, Illinois’ school regulators generally require a doctor’s note before students can use sunscreen … .”
Because it’s a drug, for heaven’s sakes.
That was email number one. Number two? From Richard Lloyd at Intellectual Asset Magazine. He asked, “Is the U.S. still the driving force of the global patent market?”
So, in one glance, a focus on sunscreen legislation in schools and the ongoing erosion of patent values domestically. Given equal treatment! The simple juxtaposition drove it home.
What are our priorities? A stable environment for innovators? Or government micro-management? You can guess where I stand: Outlaw sunscreen!
But, seriously, what can we do when our institutions move so slowly, and when special interests skew our patent laws? How can we effect change in spite of the legislative and judicial roadblocks?
We should do what we were trained to do: that is, find a work around. A lot can be done to overcome these hurdles if we return to treating protection of innovation strategically, rather than commoditizing patents. We need to educate companies and inventors on drafting better patents—but fewer of them. We need to focus on the innovation pipeline. We need to encourage innovative companies to be selective about what to patent, and work for that protection, rather than abandoning the idea of patenting all together.
Those two emails spurred me to write this piece, now live at IPWatchdog.com. I’ll be revisiting this theme in succeeding posts—both there and here on my blog. Stay tuned.
MIMI
Then the Federal Circuit issued its ruling in Berkheimer v. HP, followed by its decision in Aatrix Software v. Green Shades. Glimmers of hope?
Maybe. Survival rates at the PTAB are improving. But the cost and time necessary for a patentee to claw their way back to the district court — that is, just to get back to Square One — is too much for many. I’m not the only one who believes it’s having a negative effect on our nation’s innovation ecosystem. Last week, many colleagues who fight in the dust of the patent arena shared ideas and insights at the 2018 Leahy Institute of Advanced Patent Studies Conference (where the sunrises truly are spectacular, btw, and I also took a moment to catch this lovely afternoon shot!).
This past month, with our year still newly begun, I thought to reach out to my friends and colleagues, clients and other contacts, as I considered what the year ahead might bring. I greatly appreciate the many warm responses I received.
One response came from Gene Quinn, a passionate voice in defense of innovators who shares my concerns about what’s been happening to innovative companies and entrepreneurs since passage of AIA and the Supreme Court’s Alice decision. Gene kindly invited me to adapt my email to him as a post for IPWatchdog.com. Thanks to Gene for the opportunity to share it.
Strange days. And still waiting for the sun.
MIMI
I’m optimistic about the court’s future approach to reviewing such decisions!
In Berkheimer v. HP on Feb. 8, the Court reversed summary judgment of ineligibility with respect to some of Berkheimer’s claims. This after having noted—hold your breath!— that whether a claim element is well-understood, routine, and conventional is a question of fact. Thanks: I needed that!
This Wednesday, Feb. 14, it happened again in Aatrix Software v. Green Shades, with the Court vacating a Rule 12 dismissal for lack of patent eligibility because of issues of claim construction and fact, which must be interpreted for Rule 12 in the light most favorable to the non-movant.
A Valentine for the Federal Rules of Civil Procedure! An approach based on the question of fact!
I hope these decisions mark the beginning of a broader recognition of the underlying facts related to patent eligibility and the proper procedure required for Rule 12 dismissal. And that they don’t just end up being two rare survivors in the carnage that has resulted from the Alice decision.
More detail in my piece on IPWatchdog.
MIMI
On Feb. 6, our client Thales Visionix prevailed at the Federal Circuit in a long-running dispute with infringer Elbit Systems of America, on the key claims of a patented technology for the helmet-mounted display used in the F-35 Joint Strike Fighter.
It’s our third win in this dispute, and the patentee hasn’t even been on offense yet.
In 2014, Thales filed its original infringement action in the U.S. Court of Federal Claims (CFC), arguing that defendant Elbit Systems had supplied to the government and its contractor Lockheed Martin technology that infringes Thales’ U.S. Patent No. 6,474,159 (“the ’159 Patent”). In response, Elbit and the government asked for and received a “pleadings dismissal” because, in their view, the ’159 Patent did not claim patent-eligible subject-matter.
Contemporaneously with the matter pending at the CFC, Elbit sought inter partes review of various claims of the ’159 Patent. So, as is often the case these days, Thales was fighting the validity battle on two fronts: appeal of the CFC decision and review at the PTAB.
In late 2016, Thales turned the tables. First, the PTAB’s decision favored Thales. The Board found, inter alia, that Elbit failed to demonstrate by a preponderance of the evidence that our client’s key claims would have been obvious over prior art. See Elbit Systems of America, LLC v. Thales Visionix, Inc., IPR2015-01095 (P.T.A.B. Oct. 14, 2016).
Then, last March, the Federal Circuit reversed the CFC pleadings dismissal, determining that the ’159 Patent claims were not abstract under Alice. This was a signal win for us, given the preponderance of cases—more than 90%—that have failed on appeal to the CAFC since the Alice ruling.
After these two decisions, which took a long time and a lot of work just to get back to square one at the CFC, this week the Federal Circuit affirmed the PTAB’s decision on the ’159 Patent.
The technology disclosed in the ’159 Patent is some of the coolest I’ve seen. That’s not surprising, because the F-35 Lightning II has the most advanced communications suite of any fighter ever built. Its helmet-mounted, heads-up display allows a moving object (the fighter pilot’s head) to know its position relative to other moving objects (i.e., the enemy) while moving rapidly through space.
Speaking of knowing your position (and hitting the target!), kudos to my partner Dan Konieczny, who argued our case at the Federal Circuit this January.
Here’s the decision written by Judge Wallach. Here’s a short recap at Law360.
MIMI
EI’s case is of substantial import to all inventors and patent holders, and the company is requesting amicus support. I hope readers will consider joining the fight.
A Federal Circuit panel affirmed the District Court’s decision to invalidate Evolutionary Intelligence’s patents, then denied a petition for rehearing and rehearing en banc. This despite EI’s having won several IPR challenges made by Apple, Twitter, and Yelp.
The positions are outlined in this Request for Amicus Support.riefs would be due on or around Nov. 22. Your notice to opponents would be due on or around Nov. 10.
Relevant Materials
Here is the District Court Decision holding EI’s patents not eligible, and the Federal Circuit Decision affirming the district court. Here are US Patent No. 7010536 and US Patent No. 7702682. Here’s the PTAB Decision upholding U.S. Patent No. 7010536.
Background
Since Alice, district courts have invalidated hundreds of patents on the pleadings. Such cancellations offer patent-holders no opportunity for fact-finding, claim-construction briefing, or any of the other usual protections offered in patent litigation. The result is significant devaluation of patent portfolios.
Evolutionary Intelligence v. Sprint Nextel concerns artificial intelligence inventions, directed to dynamically optimizing mobile search results and notifications according to spans of time and physical movements through space.
For example, the invention enables a person standing in a particular spot at, say, 7:00 am to know immediately the five closest restaurants currently serving breakfast. While this feature seems common now, the record shows this was “groundbreaking” when the patents were filed.
If you have any questions or wish further information, please contact me.
But while I used to receive calls asking about the procedure for getting a patent, I no longer do. I fear it’s because inventors no longer believe patents are worthwhile.
I get it: if I were to get a call today, I couldn’t paint a rosy picture for would-be patentees. What do we say, today, to someone who calls to ask about patenting their invention? Who wants to file an infringement litigation? What if they ask how much it’s going to cost?
Times change. So has patent law. And not for the better.
Yesterday, Gene Quinn published my satire, “Confessions of a Frustrated Patent Attorney: The Telephone Call,” on his blog at IPWatchdog. It’s a transcript of what an imaginary phone call with an inventor might sound like today. The news isn’t good for inventors, and while I enjoyed writing the piece, and I think its title is apt, times really are frustrating.
Satire is born of truth, they say. I hope my essay helps change people’s minds, and I’m encouraged by the thoughtfulness of the comments, too. Read it all here.
MIMI
That’s the issue the U.S. Supreme Court will consider in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., No. 16-712 (2017).
On August 31, Tabet DiVito & Rothstein filed an amicus brief on behalf of the American Intellectual Property Law Association (AIPLA) in that case. I drafted the brief in support of neither party, requesting that the Court confirm the constitutionality of the PTAB’s inter partes review process.
The brief argues that Congress’s creation of an adjudicatory process within the USPTO for the limited purpose of reviewing and, if necessary, cancelling improperly issued patents violates neither the Constitution’s separation of powers nor its Seventh Amendment guarantee of a right to a jury trial. The brief also acknowledges that, while not unconstitutional, the current implementation of PTAB procedures is not ideal and does not seem balanced. However, AIPLA recognizes that the PTAB has been willing to work with the bar to rectify imbalances.
Oil States v. Greene’s Energy has far-reaching implications for all types of post-grant review—as indeed for non-Article III courts. A date for argument is not yet scheduled.
MIMI
IPLAC’s brief supports Synopsys’s request for certiorari on yet another Federal Circuit decision that has further muddied the waters about Section 101 patent eligibility.
The brief recognizes that the U.S. district courts’ wide-ranging application of the two-step Alice test has eroded the necessary predictability in the law about what types of inventions remain patent-eligible.
The current lack of a settled rubric for determining patent eligibility under §101 means that some decisions on eligibility are based on analogies extrinsic to the claim language, while others, such as that in Synopsys v. Mentor Graphics, fail to credit anything but the claim language.
Our innovation economy cannot long endure a system that interprets claim language extrinsically only or intrinsically only on a whim. A continuing lack of settled law will result in an insurmountable barrier to patentees seeking protection for patent-eligible inventions.
Tabet DiVito & Rothstein filed IPLAC’s brief in support of the petition for certiorari on May 31, 2017.
MIMI
