Andrei Iancu: PTO Director

The Trump Administration has announced its nomination of Andrei Iancu for the role of PTO Director.  Iancu is a patent attorney and IP litigator at Irell & Manella where he is also managing partner of the firm.

26 thoughts on “Andrei Iancu: PTO Director

  1. IMO, the petitioner didn’t draw any valuable conclusions RE: lack of 102/103 rejections. It’s not about preemption.

    The real value in a claim not being rejected under 102/103 (at least when a claim is being prosecuted before the USPTO) is that it is indicative of a lack of evidence that limitations in the claims are somehow well-known. This argument by itself may not be enough, but lack of art rejections are not indicative of lack of preemption, but lack of evidence. There may have been evidence in the record (such as there was in Alice) that the method was old and well known, but I’m not clear about that.

    1. Sorry. This was in response to Remark 8.

    2. There may have been evidence in the record (such as there was in Alice) that the method was old and well known, but I’m not clear about that.

      It’s a method of updating address information. Barcode scanning data into computers is older than the hills. Everything else is context (“address info”, “purchase info”, “credit card info”, “auto lease info”, “available real estate info”, “bingo winnings info”, etc etc ad nauseum).

      Here’s the money quote, by the way:

      We are also not persuaded by Return Mail’s emphasis on the limitations reciting particular types of encoded data or particular
      uses of that data once decoded, such as sending the data or making it available to the sender, depending on the sender’s preferences.

      These additional steps amount to a BASIC LOGIC DETERMINATION of what to do given a user’s preferences. None of the recited steps, alone or together, suffice to transform the abstract idea into patent-eligible subject matter

      There is a massive crushing universe of implication in this passage (which is incontrovertibly true). There is no way to square it with many other CAFC cases. But the roadmap to wiping out logic patents is right there (and it’s always been in front of everyone’s noses). All it takes is a skilled attorney and a non-compromised client to do the right thing.

      1. Sure. This will be a great case to use when someone is claiming a basic logic determination, but I’m sure 99% of readers won’t agree with what your definition of a “basic logic determination” includes. A simple binary choice is not inventive IMO, but most “software” related claims go far beyond that.

        It’s a panel game at this point (has been for a while).

        If you are a Plaintiff, hope for a panel that is willing to apply Amdocs and McRO. If you are a Defendant, hope for a panel that applies something else.

        The Federal Circuit was specifically designed to resolve district court inconsistencies and splits WRT patent law. Unfortunately, all they’ve internalized the problem they set out to resolve.

        1. 99% of readers won’t agree with what your definition of a “basic logic determination” includes. A simple binary choice is not inventive IMO, but most “software” related claims go far beyond that.

          Three binary choices!

          Wowee zowee.

          1. How goes your copyright project on “Logic”…?

            Yes we both know the answer to that, as to why that answer is the answer that it is.

  2. RETURN MAIL, INC. v. USPS [OPINION]

    This is an important precedential case which addresses standing issues, government immunity, and subject matter eligibility. With regards to the latter, the opinion includes a nice summation (and probably the tenth re-affirmation) of how the concept of “pre-emption” fits into the 101 context. For those who are “confused”, I recommend checking that discussion out. It’s not terribly difficult to understand. In a nutshell, arguing that “there isn’t complete pre-emption of [insert ineligible subject matter here]” is not a viable defense to an eligibility challenge of claim that protects ineligible matter in a particular context.

    It’s amazing that patentees and applicants continue to argue otherwise. This has been explained by the CAFC now in probably ten separate cases.

    1. MM the Google Paid blogger has returned to his job after the weekend. On Monday ! to hijack the main topic of this post “Andrei Iancu: PTO Director”

  3. If confirmed, the nominee for director of the USPTO may help clarify the patentability of inventions in software and business methods. Andrei Iancu may also be more supportive of inventors’ rights than the previous director Michelle Lee. Perhaps, he will also make IPRs more consistent — at least, in the mechanical arts if not in biotech/pharma — since he is a high-tech patent litigator. Besides being named Managing Director of a law firm in 2012, he is also a registered Professional Engineer, an inventor, and an adjunct professor. Iancu moved to the US at age 12 with his family.

  4. Just reading, Irell is where it is because of Morgan Chu, who is now above the firms’s retirement age. link to abovethelaw.com This might help explain why Iancu even considering the job.

    1. Thanks Ned. That is a substantial firm split-off being reported there.
      [There does not seem to be much stability in major IPL lititgation firms these days. I wonder if the decrease in new patent suits and the numbers of patent suits now terminated early by 101 motions or IPRs is contributing to to the instability, as well as the increase in mandatory early retirement ages?]

    2. Ned,

      That story is more than two and a half years old.

      It is not likely to have the impact that yields seem to think it does.

      1. yields ==> you

        damm autocorrect…

  5. Andrei Iancu? Couldn’t we at least get an American to run the office? /sarc. I like his Tivo chops – as it has all the economics of leverage and infringe for profits which is so much the driver these days. Hopefully, he has some time with the trade team and can #MAGA! Best of luck Mr. Iancu.

  6. Only surprised MM didn’t get the nod. The King of Patents!

  7. Congratulations to Mr Iancu. I wish him all the best.

    One notes, however, that appointees tend not to last too long in this administration.

    Therefore, I would like to take this opportunity to remind our dear leader that I am ready and willing to serve in this role, should it become once again open before 2020. I would also like to note, if I might be forgiven the unseemly boast, that I am surprisingly good at both flattery and toadying. I am also naturally camera shy, and thus unlikely to upstage my superiors.

  8. Gasp!!!! A “junk patent” litigator!!! Let the pearl clutching commence…..

    1. Yes, you’re correct, the TiVo patents are junk (sarcasm). Get real and stop being so loyal to an anti-patent position/party. Iancu never represented any trolls, to my knowledge, and has gone up against big pharma – don’t hear you complaining about that. He just may be a surprisingly balanced pick for this president.

      1. Or, as MM would say, a surprising pick for an unbalanced president.

      2. Chill. It’s called sarcasm.

        1. My bad. Hard to tell with all the anti-patent trolling.

    1. Thanks, that article has more information.

  9. Excerpts from his firm bio:
    Andrei Iancu is the Managing Partner of Irell & Manella LLP. Mr. Iancu also practices full time as a member of the litigation and intellectual property practice groups. … [Client] spectrum.. including medical devices, genetic testing, therapeutics, the Internet, telephony, TV broadcasting, video game systems and computer peripherals.
    In addition to his practice, Mr. Iancu is an Adjunct Professor at the UCLA School of Law where he co-teaches an advanced patent law class.
    … In 2013, California Lawyer magazine named Mr. Iancu an Attorney of the Year in the area of intellectual property. ..Mr. Iancu was recognized for the large settlements he secured in 2012 for TiVo … against EchoStar, AT&T, Verizon, Microsoft, Motorola and Cisco [with] total payments to TiVo of over $1.6 billion. … [19 years a registered patent attorney, M.E., J.D.]

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