Search Results for: Alice v. CLS Bank

Pending IP Cert Petitions at the Supreme Court

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As the Supreme Court's 2023 year draws to a close, the court has denied certiorari in the vast majority of IP related cases, with the Dewberry trademark damages case left as the only IP case granted certiorari.  Seven petitions remain undecided and the court will pick them up again when it begins the 2024 term in late September.  This post briefly reviews these cases.

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Does Justice Thomas Hate Invention or Just the Hubris of Inventors?

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by Dennis Crouch

The Supreme Court recently decided Moore v. United States, --- U.S. --- (June 20, 2024), a case focusing on the constitutionality of the Mandatory Repatriation Tax (MRT). While the majority opinion, authored by Justice Kavanaugh, upheld the MRT, Justice Thomas published a strong dissent relying upon an invention metaphor in a decidedly negative light, something that he has done in several other recent opinions. For Thomas, judicial invention is a synonym to judicial activism and antithetical to his approach that looks primarily to historic preservation, especially when interpreting the U.S. Constitution.

In Moore, the majority held that the MRT, which attributes the realized and undistributed income of an American-controlled foreign corporation to the entity's American shareholders and then taxes those shareholders, "falls squarely within Congress's constitutional authority to tax." The Court reached this holding by relying on its "longstanding precedents" that allow Congress to attribute the undistributed income of an entity to the entity's shareholders or partners for tax purposes.

Justice Thomas, joined by Justice Gorsuch, dissented. He argued that the Sixteenth Amendment requires realization for income to be taxed without apportionment.  His main complaint against the majority opinion is that it "invent[ed]" a new attribution doctrine to reach its conclusion.

Justice Thomas' negative invocation of "invention" in Moore is part of a broader trend in his recent opinions. Just a week before Moore, in FDA v. Alliance for Hippocratic Medicine, 602 U.S. --- (June 13, 2024), Justice Thomas refused to "invent a new doctrine of doctor standing," concluding that "there would be no principled way to cabin such a sweeping doctrinal change to doctors or other healthcare providers."  Similarly, in a recent concurring opinion, Justice Thomas argued that "Federal courts have the power to grant only the equitable relief 'traditionally accorded by courts of equity,' not the flexible power to invent whatever new remedies may seem useful at the time." Alexander v. S.C. State Conf. of the NAACP, 144 S. Ct. 1221 (2024) (Thomas, J., concurring).  And in his dissent in US v. Rahimi, 602 U.S. --- (June 21, 2024), Justice Thomas complained that "At argument, the Government invented yet another position."

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Patent Eligibility Jurisprudence

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The USPTO is seeking comments on "the state of patent eligibility jurisprudence" and how eligibility law impacts both innovation and investment-in-innovation.  The deadline for submissions is October 15, 2021..

The USPTO is planning a report to Congress and the agency is hoping that these comments will serve as fundamental building blocks for the report.

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Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem

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David Boundy’s writing often focuses on the intersection between administrative procedure and Patent Office operations. In his new Patently-O Law Journal essay, Boundy explains the role of guidance (the MPEP, memoranda to examiners, checkboxes on forms, etc. -- anything the PTO uses to govern the public or its employees outside the Code of Federal Regulations). Boundy explains when the PTO may act by guidance vs. when the PTO must use a full statutory rulemaking procedure.

Boundy walks through how bad PTO guidance practices is leading to lost patent protection, companies not formed, companies that fold because of delays and unpredictability of their patent applications, business opportunities not pursued, and similar economic effects, etc.  He estimates the cost as several billion dollars per year.

Boundy's essay then explains how that law applies to several specific rules that PTO improperly promulgated by guidance that create difficulties for patent applicants.

  • Example 1: The secret 2007 restriction memo
  • Example 2: Unpublished rules for ADS submission of bibliographic data
  • Example 3: MPEP § 2144.03(C) misstatement of the law of intra-agency Official Notice
  • Example 4: MPEP § 1207.04 and an examiner's power to abort an appeal
  • Example 5: the PTAB’s Trial Practice Guide (The right way)

Boundy's essay is directly relevant to the pending en banc petition in Hyatt v. USPTO that challenges the agency's right to "reopen prosecution" following a second rejection rather than allowing issues to be appealed.  Although the Federal Circuit ruled that Hyatt's petition was time-barred, Boundy explains, inter alia, that PTO procedural failures likely divested the agency from any statute of limitations defense.  See, e.g., National Resources Defense Council v. Nat’l Highway Traffic Safety Admin, 894 F.3d 95, 106 (2d Cir. 2018) (a rule does not go effective until published in the Federal Register, and that’s the event that commences the limitations period). 

Read it here:

  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
Prior Patently-O Patent L.J. Articles:

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USPTO Announces Recipients of 2017 Patent Pro Bono Achievement Certificate

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From USPTO: Alexandria, VA– The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today announced the recipients of the 2017 Patent Pro Bono Achievement Certificate in recognition of individuals who help make the Patent Pro Bono Program available to financially under-resourced inventors and small businesses.

In 2017 more than 85 volunteer patent practitioners reported 50 or more hours of patent pro bono service to a regional patent pro bono program. To acknowledge their contributions, USPTO provided certificates and listed their names and employers on the Patent Pro Bono Program website.

“I want to congratulate the recipients for their dedication, time, and commitment they’ve demonstrated in an effort to help spur innovation on behalf of under-resourced inventors and small businesses,” said Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Andrei Iancu. “Their assistance is crucial not only to the success of our Patent Pro Bono Program, but the success of our nation toward inspiring innovation across the country, and ensures that everyone who has the desire is given the opportunity.”

The continued efforts of patent practitioners across the country have strengthened the success of the Patent Pro Bono Program since 2015. To date, more than 1,500 patent professionals have volunteered their availability, time, and resources to help make the Patent Pro Bono Program a success.

In 2018, USPTO will expand its recognition to include law firms and corporations in addition to individual patent practitioners. Those whose registered practitioners cumulatively contribute a minimum number of hours (based on firm size) to one or more participating regional patent pro bono programs may receive the 2018 Law Firm and Corporate Achievement Certificate.

2017 Winners Include:

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