by Dennis Crouch

The Federal Circuit has remanded the Xencor appeal — allowing USPTO  leadership an opportunity to re-focus on the written description requirement for both Jepson claims and means-plus-function claims in the antibody art.  I have several prior posts about the case:

• Crouch, USPTO again Asks for Remand in Xencor to reconsider its Decisions (December 7, 2023)
• Crouch, Motion for remand in Xencor (December 4, 2023)
• Crouch, Jepson Formats and Means Limitations Under More Fire (November 29, 2023)

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by Dennis Crouch

The Leading pro-IP Senators, Thom Tillis (R-NC) and Chris Coons (D-DE) recently introduced a bill focusing on patents stemming from research paid-for by federal grants. The proposed legislation, titled the “Improving Efficiency to Increase Competition Act,” would require a government study on reporting requirements related to the landmark Bayh-Dole Act of 1980.

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By: Paul Gugliuzza is a Professor of Law at Temple University Beasley School of Law, Jordana R. Goodman is an Assistant Professor of Law at Chicago-Kent College of Law and an innovator in residence at the Massachusetts Institute of Technology, and Rachel Rebouché is the Dean and the Peter J. Liacouras Professor of Law at Temple University Beasley School of Law. This post is part of a series by the Diversity Pilots Initiative, which advances inclusive innovation through rigorous research. The first blog in the series is here and resources from the first conference of the initiative are available here.

The ongoing reckonings with systemic racism and sexism in the United States might seem, on first glance, to have little to do with patent law. Yet scholarship on racial and gender inequality in the patent system is growing. Recent research has, for example, shown that women and people of color are underrepresented among patent-seeking inventors and among lawyers and agents at the PTO. In addition, scholars have explored racist and sexist norms baked into the content of patent law itself.

In a new article, we empirically examine racial and gender inequality in what is perhaps the highest-stakes area of patent law practice: appellate oral argument at the Federal Circuit.

Unlike many prior studies of inequality in the patent system, which look at race or gender in isolation, our article looks at race and gender in combination. The intersectional approach we deploy leads to several new insights that, we think, highlight the importance of getting beyond “single-axis categorizations of identity”—a point Kimberlé Crenshaw made when introducing the concept of intersectionality three decades ago.

The dataset we hand built and hand coded for our study includes information about the race and gender of over 2,500 attorneys who presented oral argument in a Federal Circuit patent case from 2010 through 2019—roughly 6,000 arguments in total. Our dataset is unique not only because it contains information about both race and gender but also because it includes information about case outcomes, which allows us to assess whether certain cohorts of attorneys win or lose more frequently at the Federal Circuit.

Perhaps unsurprisingly, we find that the bar arguing patent appeals at the Federal Circuit is overwhelmingly white, male, and white + male, as indicated on the three figures below, which break down, in a variety of ways, the gender and race of the lawyers who argued Federal Circuit patent cases during the decade covered by our study. (Note that the figures report the total number of arguments delivered by lawyers in each demographic category. Note also that the number of arguments we were able to code for the race of the arguing lawyer was slightly smaller than the number of arguments we were able to code for the gender of the arguing lawyer, so the total number of arguments reported on the figures differ slightly.)

Federal Circuit Patent Case Oral Arguments, 2010-2019

What is surprising, however, is that the racial and gender disparities illustrated above dwindle when we look only at arguments by lawyers appearing on behalf of the government, as shown on the three figures below, which limit our data only to arguments by government lawyers. (About 75% of those government arguments were by lawyers from the PTO Solicitor’s Office; the others came from a variety of agencies, including the ITC and various components of the DOJ.)

Federal Circuit Patent Case Oral Arguments, 2010-2019 – Government Lawyers Only

In fact, among lawyers appearing on behalf of the government, the proportion of arguments by women, people of color, and women of color exceeded the proportion of women, people of color, and women of color in the total population of practicing lawyers—that is, all lawyers, not just patent lawyers. Among private sector patent lawyers, by contrast, the proportion of arguments by women, people of color, and women of color was much lower than the proportion of women, people of color, and women of color in the total population of lawyers, as shown on the table below.

To restate those findings in a slightly different fashion: we find that, among lawyers arguing patent cases at the Federal Circuit, a government lawyer is 2.3 times more likely than a private-sector lawyer to be a person of color, over 5 times more likely to be a woman, and over 10 times more likely to be a woman of color.

Remarkably, the racial and gender disparities we find—particularly among Federal Circuit lawyers from the private sector—bear no relation to attorney performance. As we explain at length in our article, appellants in Federal Circuit patent cases win about a quarter of the time and appellees win about three-quarters of the time—with no significant differences based on race, gender, or the intersection of the two.

There is, however, one group of lawyers who do win more frequently than all others: a small group of 65 private-sector lawyers who argue patent cases at the Federal Circuit more than anyone else—on average, at least once a year. When seeking to overturn a judgment of a district court, the PTO, or the ITC in a patent case, those frequent Federal Circuit advocates succeed 41% of the time, as compared to a 24% win rate for the other private-sector lawyers in our dataset. That finding adds a patent-law angle to a growing literature documenting the remarkable influence a small group of specialist appellate litigators (mostly white and male, and almost all at the wealthiest, most prestigious law firms in the world) have had on the U.S. legal system.

We conclude our article with some ideas about how to make the patent system, and high-level law practice generally, more diverse and inclusive. In the main, we think our findings about the large proportion of women, people of color, and women of color arguing patent appeals for the government undercuts the oft-mentioned “pipeline” explanation for a lack of diversity in patent law—that is, the idea that women and people of color are absent because they lack scientific or technical backgrounds.

Not only is that explanation based on outmoded conceptions of what patent practice entails—especially patent litigation—our data suggest there are women, people of color, and women of color arguing patent cases at the highest level—they are just not getting many opportunities to do so in law firm practice. Indeed, though the number of government arguments in our dataset (567) is less than one-tenth the number of arguments by private-sector lawyers (5825), the government had a greater number of arguments presented by women of color (65) than the private sector did (60).

The inequalities we find among private-sector patent lawyers, and the lack of correlation between those inequalities and case outcomes, suggest that entry into the upper echelon of patent practice is about more than winning and losing in the courtroom. As a recent ABA report on “interrupting bias” suggests, to really make progress with race and gender equity, we must focus on the structural causes of disadvantage and exclusion. For instance, law firms can use concrete, objective metrics to track the effects of diversity efforts, to ensure promoting diversity is rewarded in performance reviews, and to ensure no demographic group is being treated differently in assignments, evaluation, and compensation.

In short, broadening the population of lawyers who make it to very top of appellate practice will require a more deliberate approach than “add diversity and stir”; it will require disrupting the rules and norms that exclude and undermine outsiders to the status quo.

Three main takeaways:

1. Racial and Gender Disparities in Patent Law Practice: The study highlights that the demographic of attorneys arguing patent appeals at the Federal Circuit is predominantly white and male. This disparity is evident when compared to the total population of practicing lawyers. However, an interesting contrast is observed in government lawyers, where the proportion of arguments by women, people of color, and women of color exceeds their proportion in the overall lawyer population.
2. No Difference Between Attorney Demographics and Case Outcomes: Despite the noted disparities in racial and gender representation, these factors do not correlate with the success rates in court. The data indicates that appellants in Federal Circuit patent cases win roughly a quarter of the time and appellees three-quarters of the time, irrespective of the attorney’s race, gender, or their intersection.
3. Need for Structural Changes to Enhance Diversity: The post concludes that the disparities in private-sector patent law practice and the absence of correlation with case outcomes point to a need for more than just increasing diversity. There is a call for addressing structural causes of disadvantage and exclusion in the legal profession. This includes implementing concrete measures in law firms to track and promote diversity, ensuring fair treatment in assignments, evaluations, and compensation, and disrupting norms that perpetuate the status quo, thereby broadening the population of lawyers in top appellate practice.

If you find this insight compelling and want to stay informed on the latest developments, sign up for the DPI research updates today!

by Dennis Crouch

The U.S. Patent and Trademark Office (USPTO), International Trade Administration (ITA), and National Institute of Standards and Technology (NIST) have extended the deadline for public comments on their request for information on standards and intellectual property. The new deadline is November 6, 2023.

On September 11, 2023, the three agencies jointly published a request for comments in the Federal Register seeking input from stakeholders on issues related to standards and intellectual property, especially as they impact small and medium enterprises in critical and emerging technologies.  This request complements a broader NIST request published on September 7, 2023 seeking comments on implementing the U.S. Government National Standards Strategy for Critical and Emerging Technologies. Both requests were originally due on October 11, 2023.

Specific topics of interest include:

• Participation of U.S. firms in international technical standards development
• Ability of U.S. companies to adopt technical standards to grow and compete globally
• Issues small and medium enterprises face regarding technical standards and intellectual property
• Fostering standardization of critical and emerging technologies
• Policies related to standard essential patents (SEPs)

Technical standards play a critical role in ensuring interoperability and have potential benefits of both enhancing competition and driving innovation.  Innovator companies can compete on implementation, quality, features, and price rather than controlling a proprietary technology that locks-in users. The standard interface becomes a platform for market competition.  For nascent technologies, early standards adoption can help coordinates efforts to advance the state of the art.

The IP side of standards development and adoption can be fairly complex.  Patents that cover technologies essential to implementing a standard are known as standard essential patents (SEPs). If not properly licensed, SEPs can enable patent holders to exert undue market power across entire industries. This highlights a need to balance rights of patent holders with obligations to license SEPs on fair, reasonable, and non-discriminatory (FRAND) terms.  Although I am not a fan of forced participation, there is a rationale for considering policy options to incentivize licensing of SEPs on FRAND terms, and discouraging patent holder from laying in wait until standards develop. For example, measures that increase transparency around patent declarations, licensing terms, and availability of dispute resolution may help balance good faith participation and voluntary consensus in standards bodies. Improved patent search and analysis can also help ensure that all SEPs are captured within the pool.

On the international level, standards and intellectual property issues are intricately linked to U.S. global competitiveness, especially in emerging technology areas.  Divergent national/regional approaches can disadvantage U.S. technology companies as they expand globally — assuming growth in that direction.  At the same time, those approaches open the door to price discrimination (and avoiding arbitrage) by selling products that only work within certain regional standards.

Submitting Comments:

To submit comments on the joint USPTO, ITA, and NIST request, refer to the Federal Register notice published on September 11, 2023. Comments can be submitted electronically via www.regulations.gov.

by Dennis Crouch

My personal name is fairly unique. But, there are several of us, including the more famous Dennis Crouch, the world’s most famous folk music double bassist. The photo below shows Dennis Crouch performing alongside Allison Kraus and Robert Plant. Sometimes folks get confused about who-is-who, but we quickly figure it out.  And, in our world of easy data-tracking, some folks prefer having common names to help avoid undue detection.  There is no central naming authority and so any attempt to ensure unique names would likely fail.

RFID chips are little electronic identification tags and, like names, RFID chips work best when given a unique serial number.  For commercial products, a common approach is to have a three-part ID number that identifies the brand, the class of goods, and the particular product.  The hardware does not have any anti-authoritarian bias, but it is still a tricky process to ensure uniqueness – especially in a distributed global system.

Adasa Inc. v. Avery Dennison Corp., — F.4th. — (Fed. Cir. 2022).

Adasa’s U.S. Pat. No. 9,798,967 facilitates unique RFID serial numbers, allowing them to be created on-demand and without additional authorizations or queries to some central authority. The basic solution here: some RFID authority allocates a block of serial numbers to the RFID creator who then gives each RFID being created a unique serial number taken from the block.

In 2017, Adasa sued Avery Dennison for patent infringement. At the close of discovery, both sides made several summary judgment arguments:

• Avery Dennison moved for summary judgment of non-infringement — DENIED.
• Avery Dennison moved for summary judgment of ineligibility — DENIED.
• Adasa moved for summary judgment that its claims were not-invalid as anticipated/obvious (vis-a-vis prior art suggested by AD). — GRANTED.
• Asada moved for summary judgment that its claims were infringed — GRANTED IN PART (District court held claim 1 was infringed).

Thus, at the summary judgment (pre-trial), the district court completely sided with the patentee as to claim 1, finding it infringed and not invalid.  All that was left for claim 1 was a trial on damages.  At that point, other claims were still pending, but the patentee successfully requested that those claims be dismissed without prejudice so that the case could efficiently move forward.  At trial, the jury returned a verdict of 0.45 cents per chip — which added up to $35 million.   The district court also added a $20 million sanction against the defendant for discovery abuse. (AD had failed to disclose more than two-billion RFID chips it had sold until a post-trial audit revealed their existence).

= = =

As I was reading this case, I was sure that the Federal Circuit was going to flip the whole table based upon eligibility.  But no, the Federal Circuit affirmed the district court’s conclusion that the claims are directed to a “hardware-based RFID serial number data structure designed to enable technological improvements to the commissioning process.”  It certainly helped the patentee here that Chief Judge Moore was on the panel, but Judge Hughes and Stark also signed-on to the opinion.

= = =

Patentee did not fare as well on anticipation/obviousness. Defendant had relied upon “RFID for DUMMIES” as the key prior art.  That reference included a description of how ID allocation worked when the central server was unavailable. And, the court concluded that a reasonable juror “could find RFID for Dummies discloses each element of claim 1.”

RFID for Dummies describes a methodology for ensuring the assignment of unique serial numbers to RFID tags when a central numbering authority is inaccessible or impractical, for example, when a company utilizes multiple manufacturing lines to produce the same product. To decentralize and make feasible the allocation of unique serial numbers across all manufacturing lines, RFID for Dummies discloses an “intelligent hierarchy” in which “a range of serial numbers for each product is allocated to each manufacturing facility.” “Within a facility, a range of numbers from those allocated to the facility is allocated to each line” thereby effectively subdividing the serial number “into a facility number, line number, and subserial number in which the allocation hierarchy is maintained between facility number and line number.”

According to the court, this description could be read to be the same thing that is claimed. In other words, this is an issue for the jury.  Although the focus was on anticipation, the Federal Circuit here also vacated the single reference summary judgment of non-obviousness.  (The court also concluded that a second reference also could reasonably be seen as anticipatory and that summary judgment had been inappropriate).

= = =

On remand, the court will likely hold a new trial on anticipation/obviousness. If the claims are still valid then the damages verdict should stand.

The defendant on appeal argued that the judge should have asked the jury for a lump-sum payment rather than only a per-piece royalty amount.  But, during trial the defendant never advanced a lump-sum damages theory.

It may be that in some circumstances licenses, standing alone without supporting lay or expert testimony, can support a lump-sum instruction. This is not such a case. Here, Avery Dennison clearly and repeatedly argued against the relevancy of the [lump sum] licenses upon which it now relies. Its damages expert opined at least two of the three licenses were not helpful to understanding the value of a hypothetical negotiation. . . . Avery Dennison instead focused its damages theory at trial on design-around costs, which it presented to the jury as a starting-point in a hypothetical negotiation for a running royalty, not a lump-sum payment.

Where Avery Dennison failed to present a lump-sum damages theory to the jury and, moreover, actively undermined the very evidentiary basis it now contends required a lump-sum instruction, the district court did not err in declining to include such an instruction. Further, because there was insufficient evidence to warrant a lump-sum instruction, the district court appropriately declined to include a lump sum option on the verdict form.

Slip oP.

= = = =

Sanctions: After trial had completed, Avery Dennison disclosed that it had sold more than 2-billion additional RFID tags.  The district court at that point sanctioned the company an additional .2 cents per infringing tag. The district court additionally noted Avery Dennison’s bad behavior throughout the litigation process: “patent and continuous disregard for the seriousness of this litigation and its expected obligations.” On appeal, the Federal Circuit found no general problem with awarding sanctions or the process involved.

However, the Federal Circuit did find fault with the district court’s sanction calculation. In particular, the district court sanctioned the defendant 0.2 cents for every infringing tag. It should have imposed the penalty only on the 2 billion that were disclosed late in the process. That would have totaled out to ~ $5 million  sanction instead of ~ $20 million.

On remand, the district court can re-institute the sanctions.  The appellate panel recognized that a new validity trial will be ongoing, but noted that the sanctions award can persist even if the defendant ultimately wins the new trial.

= = =

Derek Shaffer (Quinn Emanuel) handled the appeal for Avery Dennison with Robert Greenspoon (Dunlap Bennett) for Adasa.

by Dennis Crouch

It is time to pick-up our consideration of Supreme Court patent cases for the 2022-2023 term. A quick recap: Despite dozens of interesting and important cases, the Supreme Court denied all petitions for writ of certiorari for the 2021-2022 term.  The most anticipated case last year was the 101 eligibility petition regarding automobile drive shaft manufacturing process.  American Axle (cert denied). Bottom line, no patent cases were decided by the Court in the 2021-2022 term and none were granted certiorari for the new term starting this week.

The court’s first order of business comes on September 28, 2022 when it meets for the “long conference” to consider a fairly large pile of petitions that have piled-up over summer break.  Of the 17 pending patent-focused petitions, 13 are set to be decided at the long conference.  I have subjectively ordered the cases with the most important or most likely cases toward the top.  Leading the pack are three cases focusing on “Full Scope” Enablement & Written Description. Topics:

• Enablement / Written Description (All three are biotech / pharma): 3 Cases;
• Infringement (FDA Labeling): 1 Case;
• Anticipation (On Sale Bar): 1 Case;
• Double Patenting (Still the law?): 1 Case;
• Procedure / Standing: 6 Cases;
• Eligibility (AmAxle Redux): 3 Cases; and
• Randomness (don’t bother with these): 2 Cases

1. Full Scope Written Description in Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 21-1566

According to the Federal Circuit, US patent law contains separate and distinct written description and enablement requirements.  This case focuses on the required “written description of the invention” and challenges the court’s requirement that the specification demonstrate possession of “the full scope of the claimed invention” including unknown variations that fall within the claim scope.

Juno’s patent covers the highly successful and valuable CAR-T gene therapy. The claims require a “binding element” to bind T-cells to cancer cells. The specification  does not provide much of any disclosure regarding how these binding cells actually work but instead states that binding elements are “known” and “routine” and cites to a decade-old article on the topic.  The idea here is that the patentee did enough to enable someone to make and use the invention–isn’t that enough?   But, the Federal Circuit concluded that the specification should have done more to disclose those binding elements, including all “known and unknown” elements covered by the claims.

Juno argues that the Federal Circuit’s test “is simply impossible to meet” for biotech inventions and is not part of the law envisioned by Congress.  The argument on virtual impossibility is a centerpiece of several enablement/written description cases pending.  Although the focus here is biotech, the same arguments are brewing with regard to AI-assisted inventions.  In its responsive brief, Kite reiterates that “as precedent has held for over 50 years—§ 112’s requirement of a “written description” is distinct from the requirement to “enable any person skilled in the art to make and use the” invention.”  That 50-year reference makes me chuckle because that is roughly the same period that Roe v. Wade was good law before being overturned by the Court last term.

The Federal Circuit’s decision in Juno was also a big deal because it overturned the jury verdict–holding that no reasonable jury could have found written description support.  But, it is tough to get the Supreme Court to hear a review on detailed factual findings.

Chief Judge Moore issued the decision in the case that was joined by Judges Prost and O’Malley.  The petition was filed by noted Jones Day attorney Greg Castanias along with former SG Noel Francisco and BMS (Juno) deputy GC Henry Hadad.  Joshua Rosenkranz (Orrick) is running the show for the respondent Kite Pharma. The petition has been supported by five amicus briefs, the most of any pending case.

2. Written Description for an Effective Treatment in Biogen International GmbH v. Mylan Pharmaceuticals Inc., No. 21-1567

If the Supreme Court grants certiorari in Juno, there is a good chance that it would also hear the parallel written description case of Biogen v. Mylan.  Biogen’s patent claims is directed toward a drug treatment for multiple sclerosis.  The treatment has one easy step: administer “a therapeutically effective amount [of] about 480 mg” of DMF per day along with an excipient for treatment of multiple sclerosis.  The Federal Circuit found the claim lacked written description support — especially for a showing that 480 mg is an “effective” treatment.  The specification expressly states that “an effective dose … can be from … about 480 mg to about 720 mg per day.” But, the court found that singular prophetic “passing reference” “at the end of one range among a series of ranges” was insufficient to actually the notion that the patentee possessed an “effective treatment” at the 480 mg dosage.  Effectiveness is often relegated to the utility doctrine, but here it is an express claim limitation.

In some ways Biogen and Juno are both outliers–albeit at opposite ends of the spectrum.  In Juno, the patentee is seeking a broad genus claim based upon a somewhat narrower disclosure while in Biogen, the patentee is seeking a quite narrow claim based upon a much more general disclosure. It is a forest-tree situation.  If you describe several trees, can you claim possession of the forest? Likewise, if you describe the forest, can you claim possession of individual trees?  Note also that there are similarities with the pending enablement petition in Amgen v. Sanofi as well as with the likely upcoming petition in Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022) (written description).  The overlap between written description and enablement is inextricable.  It is usually true that the arguments that prove or disprove written description have the same impact on enablement.  But here in these cases the defendants and courts continue to reiterate the potential differences.

The decision was authored by Judge Reyna and joined by Judge Hughes.  Judge O’Malley wrote in dissent.  The court then denied en banc rehearing despite a dissenting opinion from Judge Lourie joined by Chief Judge Moore and Judge Newman. Supreme Court expert Seth Waxman is handling the petition along with his team from Wilmer.  Nathan Kelley (Perkins) is representing Mylan. Kelley is the former USPTO Solicitor and PTAB Chief Judge.

3. Full Scope Enablement in Amgen Inc. v. Sanofi, No. 21-757

Amgen also fits well as a companion case to Juno v. Kite.  The difference is that Amgen asks about enablement rather than written description.  Still, the focus is the same–does enabling “the invention” require enabling all potential embodiments (even those not yet comprehended by the patentee).  As in Juno, the genus claim here is also functionally claimed, a feature that appears to make it more susceptible to invalidation under both WD and Enablement doctrines. I would have previously put this case even higher in the ranking, but the Gov’t recently filed an amicus brief in the case suggesting that the Court deny certiorari.

Jeff Lamkin (MoloLamkin) is representing the patentee Amgen in the petition. George Hicks (Kirkland) is counsel of record on the other side.  The Gov’t CVSG brief was filed by folks at the DOJ SG’s. USPTO officials did not join. Although the internal politics are always unclear, this often means that the USPTO does not fully agree with the Gov’t position.

4. Skinny Label Infringement in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, No. 22-37

This case delves deeply into the patent-FDA overlap and involves an increasingly common situation “skinny label” situation.  The setup involves an unpatented drug with multiple clinical uses, only some of which are patented.  What this means is that a generic producer should be permitted to market the drug for the unpatented uses, but excluded from marketing the drug for the patented uses.  One problem here is that the healthcare payers are going to recognize that the drugs are interchangeable and very quickly start buying the generic version even for the unauthorized patented use.  One way to think about this case is the level of responsibility that the generic manufacturer has to make sure that its drug is not used in an infringing way.  At what point do sales-with-knowledge equate with inducement?

The particular question presented focuses on FDA-approved labels that carve-out patented uses.  In the process, the FDA starts with the branded drug’s label and asks the brand manufacturer to identify which parts of the labeled uses are infringing.  Those labelled uses are then deleted from the label.  Teva and the FDA followed that exact process in this case.  But, the courts found that the “skinny label” still encouraged infringement — part of the problem was that the infringing and non-infringing uses were so similar to one another.  Petitioner here is seeking a safe-harbor, asking: “If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?”

Chief Judge Moore wrote the opinion in this case joined by Judge Newman. Judge Prost wrote in dissent. After an initial outcry, the panel issued a new opinion that toned-things down a bit and suggested that labelling will usually not be infringing, but that this was somehow an exceptional case. Subsequently the full court denied en banc rehearing, with Chief Judge Moore re-justifying her position while Judges Prost, Dyk, and Reyna all dissented.  The jury had originally sided with GSK — finding infringement.  However, the district court rejected the verdict and instead granted Teva’s motion for judgment as a matter of no infringement. Judge Stark who is now a member of the Federal Circuit was the district court judge in the case.

Willy Jay (Goodwin) is handling the petition; Juanita Brooks (Fish) is in opposition.

5. Post IPR Estoppel in Apple Inc. v. Caltech, No. 22-203 (Briefing ongoing)

This important case raises a question of statutory interpretation regarding post-IPR estoppel: Does IPR estoppel 35 U.S.C. § 315(e)(2) extend to all grounds that reasonably could have been raised in the IPR petition filed, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.”  Apple would like to challenge the validity of Caltech’s patents, was barred by the District Court based upon Apple’s unsuccessful IPR against the same patent.

Bill Lee (Wilmer) is counsel of record for petitioner. Briefing is ongoing in the case.

6. Judicial Recusal in Centripetal Networks, Inc. v. Cisco Systems, Inc., No. 22-246 (Briefing ongoing)

Although a patent case, the focus here is about the judicial code.  Cisco lost a $2 billion verdict, but was able to get the decision vacated on appeal because the Judge’s wife owned $5,000 in Cisco stock.  The judge had placed it in a blind trust, but the appellate court found that was insufficient since the statute requires “divestment” under the statute.  The petition asks whether this strict  statutory interpretation is correct; and whether any impropriety can be excused as harmless error.

Former Solicitor Paul Clement is handling the petition.

7. Summary Judgment standard in Hyatt v. USPTO, No. 21-1526

My favorite part of this litigation is the mock-up created by folks at the USPTO of Gil Hyatt applying the “Submarine Prosecution Chokehold.” Although the image was a ‘just a joke,’ Hyatt is not joking about what it represents. In particular, Hyatt argues that the USPTO created a secret policy to block issuance of his patents, regardless of the merits of his particular claims. Hyatt filed an APA lawsuit seeking an order forcing the PTO to actually examine his patent applications. But, the district court issued a sua sponte summary judgment — finding that the office was already diligently working.  Oddly though, the court did not apply the summary judgment standard provided by R.56 but instead drew inferences against Hyatt.  The petition asks simply: “Whether the ordinary summary judgment standard of Rule 56 applies to review of agency action.”  Hyatt also argues that the district court applied too-high a standard with regard to setting aside past agency actions.

Famed professor of constitutional law Erwin Chemerinsky (Berkeley) filed the petition.  The U.S. Gov’t waived its right to file a responsive brief.

8. Double Patenting and SawStop Holding LLC v. USPTO, No. 22-11

The petition here focuses on the non-statutory judicially created doctrine of obviousness type double patenting.  It asks: “Is the judicially created doctrine of nonstatutory double patenting ultra vires?”

A good percentage of patents (about 10% or so) are tied to another patent via terminal disclaimer.  In general, the patent office requires a terminal disclaimer in situations where a patentee is seeking to obtain a second (or subsequent) patent covering an obvious variation of an already obtained patent.  Otherwise, the second patent will be rejected on grounds of obviousness-type double patenting.  When I previously wrote about the case, I compared it to the Supreme Court’s abortion decision in Dobbs.  In that case, the court explained that a right to abortion “is nowhere mentioned in the Constitution.”  Similarly, obviousness type double patenting has no grounding in the Patent Act.  Dobbs also rejected the 50 year old precedent of Roe v. Wade (1972).  The fact that a precedent is old does not convert that precedent to a sacred text. One difference here is that OTDP has a somewhat older provenance than did Roe.

The need for terminal disclaimers was greatly reduced following the 1995-GATT patent term transformation. For the most part, all family members expire on about the same date. The big difference happens with patent-term-adjustment that can sometimes make a really big difference — especially if the patentee has successfully appealed.  The SawStop situation represents an interesting case-study for anyone thinking about the ongoing importance of OTDP and Terminal Disclaimers.

David Fanning is inhouse counsel for SawStop and filed the petition.  The USPTO (through the SG) waived its right to file in opposition.

9. Eligibility in Worlds Inc. v. Activision Blizzard Inc., No. 21-1554

Worlds was an early developer of 3-D virtual chatrooms and its US7,181,690 has a 1995 priority filing date. This particular patent has two steps to be performed on the client device being operated by a first user:

• (a) Receive position information about some user-avatars
• (b) Using that position information, determine which avatars to display to the first user

The courts found the claims directed to the abstract idea of “filtering.”  The petition asks (1) what is the standard being “directed to” an abstract idea; (2) who bears the burden of coming forth with evidence on Alice Step 2.  In particular, does a party seeking to invalidate a claim need to provide evidence of what was well-known, routine, and conventional?  The petition here is really a follow-on to American Axle. That was denied certiorari at the end of the 2021-2022 term.

Wayne Helge (Davidson Berquist) is counsel of record for Worlds.  Sonal Mehta  (Wilmer) represents Activision, but only filed a statement waiving her client’s right to respond.

10. Mandamus Jurisdiction in CPC Patent Technologies PTY Ltd. v. Apple Inc., No. 22-38

This petition fascinated me for a couple of days as I tried to think through the scope of mandamus jurisdiction.  We know that the Federal Circuit hears patent appeals, but the petition argues that the same court does not necessarily hear mandamus actions filed in patent cases.  Rather, according to the petition, the Federal Circuit’s jurisdiction should depend upon whether the mandamus action itself arises under the patent laws.  Here, the mandamus focused on  transfer for inconvenient venue under Section 1404(a).  Everyone agrees that issue is not patent law specific.

George Summerfield (K&L Gates) is handling the petition. Apple did not file a response.

11. Eligibility in Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281

This case has similar features to Worlds v. Activision and was also filed in prior to the denial of American Axle.  The petition explains that the patents claim “electronics hardware device comprising a content player/remote-control combination having numerous concretely-recited components that undisputedly qualifies as a ‘machine’ or ‘manufacture’ under the statutory language of 35 U.S.C. § 101.”

12. Junker v. Medical Components, Inc., No. 22-26

Junker’s petition raises an issue that has repeatedly come before the court — the on sale bar.  Here, the purported “offer to sell” was made by “a third party who had no right to sell the invention and with no involvement by the patentee?”  Junker asks whether that counts as an offer?

13. Licensee Standing in Apple Inc. v. Qualcomm Incorporated, No. 21-1327

This petition raises the identical issue that Apple raised in a 21-746.  That case was denied certiorari earlier in 2022 and is very likely to be denied here as well.  The question presented: “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”   Qualcomm restated the question as follows: “Whether a licensee that offers no evidence linking a patent’s invalidation to any concrete consequence for the licensee nevertheless has Article III standing to challenge the validity of the licensed patent.”

Mark Fleming (Wilmer) represents Apple and Jonathan Franklin (Norton Rose) represents Qualcomm.

14. Eligibility and Hardware in Tropp v. Travel Sentry, No. 22-22

This eligibility petition attempts to distinguish Alice on grounds of computer-technology vs real hardware with the following question presented: “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101.”  One issue with the petition is that the problematic claims don’t really claim the physical hardware (a padlock with a master key), but rather a process of giving the extra key to TSA. In some ways, I see this as a lower-quality version of American Axle.

15. PTO Acting Ultra Vires in CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527

Anyone working with inter partes reviews (IPRs) knows that the PTAB first decides whether to institute the IPR and, after instituting, will hold the trial and issue a final written decision.  One oddity though is that the statute actually calls for the USPTO Director to decide the institution question with the PTAB only stepping in once the IPR is instituted.  The current procedure exists because the PTO Director has delegated her institution authority to the PTAB.  In its petition, CustomPlay asks the court to rule that this delegation is improper – a violation of “the statutory text and legislative intent.”  In addition, the petition asks a constitutional due process question: “Whether the PTO’s administration of IPR proceedings violates a patent owner’s constitutional right to due process by having the same decisionmaker, the PTAB, render both the institution decision and the final decision.”

16. Filler v. United States, No. 22-53

Filler had an interesting claim, but made a major error by dividing his patent rights between two entities in such a way that neither had enforcement power.  Filler argues that the U.S. Gov’t used his patented invention without paying and sued in the Court of Federal Claims. The petition here asks about whether his Fifth Amendment takings claim was properly barred by the Assignment of Claims Act.

Filler is the inventor and is also an attorney (and MD and PhD) filed the petition himself.

17. Arunachalam v. Kronos Incorporated, No. 22-133

Lakshmi Arunachalam has filed a number of patent related petitions over the past several years.  This one asks a number of questions including “Whether Trustees of Dartmouth College v. Woodward, 17 U.S. 518 (1819) was properly decided.”

by Dennis Crouch

In re Palo Alto Networks, Inc., 22-145, — F.4th — (Fed. Cir 2022)

In Arthrex, the Supreme Court found the Congressionally created IPR scheme unconstitutional because it gave too much authority to PTAB judges.  United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021).  In a hope for some political accountability, the Constitution requires Officers of the Government to be appointed by the US President.  U.S. Constitution, Art. II, § 2, cl. 2. The problem–PTAB judges have authority to cancel substantial property rights but are not appointed by the President. Rather than rendering the AIA dead on arrival, the Supreme Court decided to cure the defect by taking some authority from the PTAB judges and handing it to the USPTO Director, who was properly nominated by the President and confirmed by the Senate.  Under the Arthrex model, any PTAB final written decision (in the AIA-trial context) can then be reviewed by the USPTO Director.

But, what about IPR institution decisions.  If you recall, inter partes review proceedings begin with an IPR Petition and an institution decision.  If the IPR is instituted then the case moves to trial and a final written decision by the PTAB.  If the IPR is not instituted, the case is closed with no right for appeal.  One quirk of all this involves the division of labor.  As mentioned above, the statute calls for the PTAB to decide the final written decision, but then in Arthrex the Supreme Court added the additional Director Review.  At the institution stage, the statute follows a different scheme calls for the USPTO Director to decide whether or not to institute. 35 USC 314.  Despite the statute, the USPTO Director has never personally signed an institution decision but rather issued regulations giving institution authority to the PTAB. The regulations do not allow for any subsequent director review. 37 C.F.R. § 42.71.  If the institution petition is granted, the Arthrex approach suggests eventual director review following a final written description. The USPTO has stated in its interim guidance documents that the USPTO “does not accept requests for Director review of decisions on institution.”

Although none of the issued rules or guidance suggests that the Director retains any authority, when Dir. Vidal took office, she issued a set of interim guidance documents stating that she has authority to review institution decisions.  Further, the new interim guidance documents state that the “Director has always retained and continues to retain the authority to review such decisions sua sponte after issuance (at the Director’s discretion).”  And, in recent months the Director has issued sua sponte review of two IPR institution decisions.

In 2021, Centripetal Networks sued Palo Alto Networks (PAN) for patent infringement.  PAN responded with two AIA trial petitions; IPR2021-01151 for U.S. Patent No. 10,659,572 and PGR2021-00108 for U.S. Patent No. 10,931,797.  The PTAB Denied institution. PAN attempted to seek director review, but was told that the USPTO dies not accept requests for Director Review of institution decisions and that “there will be no further review of the Board’s decision by the Office.”

By statute, institution decisions are not appealable, but can be reviewed on extraordinary writ — writ of mandamus.  PAN petitioned, but the Federal Circuit has now denied the petition.  On mandamus, the Federal Circuit concluded that “there is no structural impediment to the Director’s authority to review institution decisions either by statute or by regulation.”  Although the Director has delegated substantial decisionmaking authority, the court found that the Director is still the “politically accountable executive.”  Further, it apparently is of no concern that the system provides no formal mechanism for petitioning the Director for intervention.  The decision here suggests that in reality the Director has authority to intervene in any pending case before USPTO.

The majority decision was written by Judge Dyk and joined by Judge Chen. Judge Reyna wrote in concurrence and that “a categorical denial by the Director to accept any requests for review raises potential constitutional concerns.”  However, Judge Reyna suggested that the new director’s approach of sua sponte review might be enough.

When PAN’s briefing began, the USPTO’s position appeared clear cut of no director review of institution decisions, and their case was undermined by the interim actions by Dir. Vidal who decided to begin reviewing those as well. In his concurring decision, Judge Reyna writes: “We should not compel an agency to take specific action that the agency demonstrates it has already taken.”

Note: The two cases with pending director review of institution decisions are:

• OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper No. 41 (P.T.A.B. June 7, 2022);
• Pat. Quality Assurance, LLC v. VLSI Tech. LLC, IPR2021-01229, Paper
  No. 31 (P.T.A.B. June 7, 2022).

In both of these cases, the PTAB granted institution.  Initial briefs in these director reviews are due on August 18, 2022.

by Dennis Crouch

In re HP (Fed. Cir. 2022) (non-precedential)

The Federal Circuit has denied HP’s petition for mandamus in its attempt to escape Judge Albright’s W.D.Tex. courthouse.  Intellectual Ventures sued HP for patent infringement in 2021 for infringing its United States Patent No. 6,779,082.  The lawsuit focuses on HP’s SimpliVity data storage solution. The HP product was mostly developed by the SimpliVity Corp in Massachusetts.  HP bought SimpliVity in 2017 and moved further development to India.  Still, in the litigation HP argued that Massachusetts was clearly more convenient than Texas.

On mandamus, the Federal Circuit gave deference to Judge Albright’s refusal to transfer and concluded that HP had not proven its case.  In particular, HP “failed to identify any specific documents in Massachusetts.”  I’ll reiterate my prior thoughts that, for patent cases, courts should rethink the notion the storage facility location for electronic documents should not be much of a factor (if any) regarding convenience unless the location somehow places the documents outside of the legal reach of the US court system.

= = =

The patent application was filed back in 2001 and was originally owned by ADC who sold that division to SS8.  In 2006, SS8 sold the patent to the “Imaginex Fund I”, an Intellectual Ventures shell.  In 2012, IV merged Imaginex back into an IV fund.  Claim 1 is written quite broadly to cover cloud computing:

1. A data storage system comprising:

a network;

a plurality of distributed data storage units coupled to the network … having a plurality of external inputs and outputs; and

an object management system (OMS) manager unit coupled to the plurality of distributed data storage units via the network,

the OMS manager unit and the plurality of distributed data storage unit implementing an object management system, wherein the object management system preferentially selects a first one of the plurality of distributed data storage units for file access in response to a file access request provided that the file access request is associated with an external input/output of the first distributed data storage unit;

wherein the object management system is configured such that, in response to a file retrieval request that is associated with a data file and an external output of the first distributed data storage unit, the object management system preferentially returns a hostname and pathname of a copy of the data file that is stored within the first distributed data storage unit.

HP filed for inter partes review (IPR) and the board granted the petition to institute.  HP’s motion to stay litigation pending IPR is now pending before Judge Albright. The brief makes three key points:

1. If HP wins the IPR, it will end the lawsuit or at least greatly simplify the case.
2. The patent is expired — that means that the only potential prejudice is delay in obtaining damages.  This will not unduly prejudice IV.
3. The lawsuit is at an early stage.

This is one that appears a good candidate for stay, although would push-back the trial scheduled for March 2023.

by Dennis Crouch

The recent Federal Circuit decision in Caltech v. Broadcom includes an important discussion of extraterritorial damages further extending Carnegie Mellon (Fed. Cir. 2015) in finding that manufacture and delivery of a product in a foreign country can infringe a US patent if sufficient sales-activity occurred within the US.

California Institute of Technology v. Broadcom Ltd. and Apple Inc., ___ F.2d ___ (Fed. Cir. 2022).

The case involves wireless communication chip logic patented by CalTech.  Broadcom makes infringing chips and they are installed in Apple devices. The Broadcom chips and Apple phones are manufactured outside of the United States, although they are largely designed in the US, and the nerve centers of marketing and sales are also in the US.  Although many of these devices made their way to the US, the jury verdict apparently included damages for 1 billion chips that Broadcom manufactured abroad, and sold to Apple’s foreign suppliers outside of the US, and that were never imported into the US.

This setup raises some concern because US patents are territorial in nature, and liability under Section 271(a) requires action “within the United States” importing “into the United States.”

(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

35 U.S.C. 271(a). Still, much of the sales activities occurred within the United States.  In Halo, the Federal Circuit addressed a similar situation regarding local sales activity leading to delivery and performance occurring entirely outside of the US.  The court explained that in that situation, “pricing and contracting negotiations in the United States alone do not constitute or transform those extraterritorial activities into a sale within the United States for purposes of §271(a).” Halo Elecs., Inc. v. Pulse Elecs., Inc.., 831 F.3d 1369 (Fed. Cir. 2016) on remand from 579 U.S. 93 (2016).

On appeal, the Federal Circuit cabined-in its prior Halo statements and concluded the sales activity can be considered “within the United States” when the US activity extends beyond “pricing and contracting negotiations . . . alone.”  A contrasting case here is Carnegie Mellon Univ. v. Marvell Tech. Grp., Ltd., 807 F.3d 1283 (Fed. Cir. 2015).  In CMU, the Federal Circuit explained that the location of a sale is often difficult to pinpoint, and might occur in multiple locations at once.

Places of seeming relevance include a place of inking the legal commitment to buy and sell and a place of delivery, and perhaps also a place where other substantial activities of the sales transactions.

CMU. The chip business is particularly crazy because they involve multi-year sales cycles and the chip-maker is looking for a “design win” where a particular chip is locked-in for mass production.  Here, apparently the patentee provided substantial evidence that the multi-year process of designs, simulations, test, reworking, sampling, pricing, etc., all occurred within the United States.  This evidence was presented to the jury, and the jury also received instructions that “sales may be found to have occurred in the United States where a substantial level of sales activity occurs here, even for products manufactured, delivered, and used entirely abroad. . . . ” (Instruction reprinted below)

On appeal, the defendants did not challenge the sufficiency of the evidence, but rather that the jury instruction was improper.  The Federal Circuit though sided with the patentee and confirmed that the instructions were proper. “This was a proper and sufficient jury instruction with respect to the applicable burdens on the territoriality of the sales at issue.”

The result here is continued flexibility on what counts as “US sales” for patent infringement purposes, and this case makes it marginally easier to capture foreign activity with a US patent.

In its appeal, Broadcom also argued that the jury should have receive instructions on the presumption against extraterritorial application of US law.  See WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018).  The Federal Circuit rejected this appeal — holding that the presumption is applied when courts interpret the law or construe a statute. Once the law is defined, then it is time for the jury to weigh the evidence and draw its conclusions — and and that the presumption is inapplicable.  Here, the court told the jury that the sales must be “within the United States,” and the jury then was asked to simply weigh the evidence and determine “whether the relevant transactions … were domestic or extraterritorial in nature.”  On appeal, the Federal Circuit found that the district court’s approach was again sufficient and proper.

= = =

Note – the Federal Circuit affirmed on the extraterritorial questions, but vacated the billion dollar judgment on other grounds. Thus, there will be a new trial on damages, and the new jury might reach a different result.

Guest Post by Victoria T. Carrington and Professor Jorge L. Contreras.

Background 

It should be no surprise to readers of Patently-O that many are unhappy with the Supreme Court’s jurisprudence regarding patent eligibility under Section 101 of the Patent Act. In response to various calls for “reform” of patent eligibility jurisprudence, on March 5, 2021, Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR), and Christopher Coons (D-DE) requested that the US Patent and Trademark Office (PTO) conduct a study regarding public views on “how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.” The Senators also asked the PTO to evaluate the responses and provide a detailed summary of its findings by March 5, 2022. The PTO released its public request for information (RFI) on July 9, 2021. The original deadline for response was September 7, 2021, which the PTO extended until October 15, 2021. A total of 145 comments were submitted before the deadline. In advance of the official assessment, we have reviewed and tallied these public comments for those who are eager for the results in advance of the official release.  

Methodology 

We reviewed each submission that was made in response to the PTO’s 2021 Patent Eligibility RFI, as posted by the USPTO on Regulations.gov. Information that we noted and tracked included submitter name, submitter industry/specialty, date submission received, submitter location (if listed), and the general tenor of the submitter’s comments. 

Findings 

Demographics 

There was a total of 145 submissions. Some individuals submitted two comments, and one individual submitted four identical comments. Fifteen submissions were anonymous. We combined multiple submissions from the same commenter, yielding a total of 137 unique comments. 

Figure 1 below shows the breakdown of industry affiliation of submitters. The largest group of submitters (28%) were patent attorneys and/or law firms that did not have a clear industry affiliation. Companies and trade associations were broadly classified as “High Tech” (18%) or “Life Sciences” (14%). Submissions classified as “Business” (11%) identify those made by venture capitalists and submitters focused on finance or entrepreneurship like the Market Institute. “Other” (8%) industries represented included cross-industry trade associations such as the Association of University Technology Managers (AUTM) as well as individuals, organizations, and companies that otherwise did not readily fit into the other specified classifications such as the mining conglomerate Rio Tinto, and Acushnet, a which makes golf equipment and apparel. 

Sixty-three submitters specified a location. California had the highest number of submissions (11). Six submissions came from outside of the U.S.: Canada, Japan, Macedonia, Switzerland, and two from the United Kingdom. 

Analysis of Positions 

We analyzed the content of each submission to determine whether the submitter generally viewed current jurisprudence regarding patent eligibility in a positive or a negative light or adopted a neutral stance. Figure 2 below illustrates the breakdown of submissions among these categories, excluding 19 submissions that did not actually address the question of patent eligibility. 

Figure 3 shows the comparison of the general tenor of submissions made by industry classification. 

Below we discuss these findings in more detail. 

Neutral Comments 

Four submissions adopted a neutral standpoint, neither praising nor criticizing current patent eligibility jurisprudence. One such comment was submitted by Professors Maya M. Durvasula, Lisa Larrimore Ouellette, and Heidi L. Williams. It effectively critiques the empirical validity of the PTO study itself: “Many have argued—largely based on anecdotes or descriptive data—that recent changes in patent eligibility caselaw have either increased or decreased innovation. Here . . . we argue that neither view is supported by the available empirical evidence.” “It is unclear whether limits on patent eligibility increase or decrease innovation.” “Current evidence does not demonstrate whether the Alice/Mayo framework is good or bad for social welfare in contested fields [specifically the biomedical and software markets].” 

Positive Comments 

Forty submissions (27.6%) describe current patent eligibility jurisprudence in a positive light, noting general satisfaction with the Supreme Court’s eligibility case law and its application within the market. Notable commenters in this camp include the American Civil Liberties Union (ACLU), Google, and the Association of American Medical Colleges (AAMC). 

The ACLU also criticized the framing of the PTO study, observing that “[t]roublingly, the RFI seems to adopt the same framing as the Senators’ request, presupposing that patent-eligibility jurisprudence lacks clarity and consistent application and that this lack of clarity is causing harms. Neither the Senators’ letter nor the RFI provides any basis for the allegation that the law is inconsistent or unclear . . . .” The ACLU points to the fact that there is a high affirmance rate of subject matter eligibility decisions made by district courts and the PTAB to argue that current patent eligibility jurisprudence is relatively clear. It also points to statements in Federal Circuit Opinions showing that judges are able to apply 101 in a clear and consistent manner. 

Google commented that “robust data supports that the balance in our IP system has allowed patenting in emerging technologies to flourish. . . . We urge the PTO to reject the premise set forth in the RFI that ‘the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing and artificial intelligence.’” 

From the life and health sciences perspective, the AAMC drew on public health and access considerations, noting “that law and policy must protect and balance the public good, including access to timely patient care, with proprietary rights in support of science and technology, particularly in the fields of medicine and public health. We believe that these principles are reflected in current jurisprudence.” 

Negative Comments  

Eighty-two submissions (56.6%) expressed at least one major concern with the state of current patent eligibility jurisprudence. The two primary concerns were that (1) eligibility requirements are too unclear and/or uncertain and (2) too many useful inventions are currently ineligible for patent protection based on current eligibility requirements. 

International Business Machines (IBM) specifically critiqued the judicially created ‘abstract idea’ exclusion from patent eligibility, noting that it “continue[s] to unnecessarily generate wide uncertainty about the validity of information technology patents and to undermine the patent incentive. It is a significant concern to innovators and patentees, who rely on the patent system to protect their investment in computer-related innovations. This uncertainty reduces public confidence in issued patents, making it harder for inventors to benefit from those patents.” 

The “too-many-inventions-are-ineligible” camp includes the IP Law Section of the State Bar of Nevada. It specifically highlights that there has been an “[o]verly broad application of” In re Smith to reject electronic gaming machine inventions under Section 101. 

Novartis’s submission sums up both reasons most submitters are unsatisfied with patent eligibility: the uncertainty and the ineligibility of specific important inventions. 

Figure 4 illustrates the relative frequency of these different negative arguments made regarding patent eligibility. 

Conclusion 

This preliminary assessment shows a range of views expressed by public commenters in response to the PTO’s Section 101 Patent Eligibility Study. There is clearly no majority or consensus view, meaning that any legislative response to the dissatisfaction voiced by some over current judicial eligibility decisions should be taken with care and provide further opportunities for public input and debate. 

The data for this post is archived at Victoria Carrington, 2022, “Public Comments on PTO’s 2021 Patent Eligibility Study”, https://doi.org/10.7910/DVN/DQWHHO, Harvard Dataverse, V1.