Andrei Iancu’s nomination to be the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office has now been delivered to the Senate. The nomination will be considered by the Judiciary Committee with likely confirmation this fall.
At age 49, Mr. Iancu is Managing Partner at Irell & Manella (LA) where he is a patent attorney but these days primarily focuses on intellectual property litigation.
Iancu has participated in a number of Inter Partes Review proceedings – both as petitioner (challenging the patent) and representing the patentee. He regularly works with Michael Flemming who is of-counsel at Irell and former PTAB Chief Judge. Iancu has also been part of dozens of patent infringement lawsuits, again representing both patentees and accused infringers.
Iancu is also a prolific author of patent law materials – the following are a few examples:
- Andrei Iancu, Jeremiah Helm, Code on Disks and Hat Tricks – Is Computer Software on A Medium Really Patentable?, 90 J. Pat. & Trademark Off. Socy. 97, 98 (2008) (“In the absence of legislative changes to what constitutes patentable subject matter, there really is no debate that a claim for software code by itself is not patentable.”)
- Andrei Iancu, Ben Haber, Post-Issuance Proceedings in the America Invents Act, 93 J. Pat. & Trademark Off. Socy. 476, 486 (2011) (“Congress clearly intends to make the PTO a viable alternative to district court litigation for answering questions of patent validity.”)
- Andrei Iancu, Michael Fleming, C. Maclain Wells, Indefiniteness in Inter Partes Review Proceedings, 98 J. Pat. & Trademark Off. Socy. 4, 5 (2016) (proposing that the PTAB allow the parties to fully brief indefiniteness issues before the PTAB issues express indefiniteness findings at the IPR initiation stage)
- Benjamin Hattenbach, Andrei Iancu, Kenneth Weatherwax, Patent Prosecution Pitfalls: Perspectives from the Trenches of Litigation, 92 J. Pat. & Trademark Off. Socy. 340, 341 (2010) (“Those writing patents must recognize the various uncertainties, embrace them, and take steps that will improve the odds of prevailing in litigation in spite of them.”)
- Andrei Iancu, Jay Chung, Real Reasons the Eastern District of Texas Draws Patent Cases-Beyond Lore and Anecdote, 14 SMU Sci. & Tech. L. Rev. 299, 308 (2011) (“[T]he presence of local patent rules, judges well versed in patent litigation, and a relatively quick docket mean that a patent case can often be resolved more efficiently and effectively in the Eastern District of Texas than in many other districts. Plus, it is more likely that a case will get to the jury in East Texas.”)
- Andrei Iancu, Ben Haber, Elizabeth Iglesias, Inter Partes Review Is the New Normal: What Has Been Lost? What Has Been Gained?, 40 AIPLA Q.J. 539, 592 (2012) (“Only time will tell whether this is an improvement over the old inter partes reexamination process.”)
It is the first time in a while that we’ve had a PTO director with this level of litigation experience, and it will be interesting to see how that develops in terms of policy goals.
Since the issue just came up again here re the new PTO Director’s article on the validity of Beauregard claims, it seems to me it would make a good student research project.
1. Has the Sup. Ct. ever addressed or listed “printed matter” as unpatentable subject matter?*
2. Were the prior [and thus they should be controlling] decisions like In re Russell, 48 F.2d 668, 669 (CCPA 1931), In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) and In re Gulack (Fed. Cir. 1993) holding printed matter to be unpatentable subject matter be validly now only restricted scope 103 issues rather than unpatentable subject matter per In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)?
*The unpatentable subject matter exceptions to 101 are reiterated by the Sup. Ct. in Diamond v. Chakrabarty (1980) as follows: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853).”
I provided a very easy to read and understand explication of the judicial doctrine of printed matter, replete with the critical exceptions to the printed matter doctrine.
Originally on the Hricik side of the blog, that original expose was in “dialogue” with Malcolm and Ned, both of whom were invited to join a meaningful discussion of the explication, and both of whom simply would not do so.
Over time, and many hyper links to the original (because Malcolm and Ned insisted on repeating their errors, for which the explication provided the easy to understand corrections), the item was also printed on this side of the blog in full detail.
Your questions are answered therein. One does NOT need a Supreme Court case to know and understand the law. Wanting such and pretending that lacking such means that the law cannot be known and understood is pure fallacy.
Not to discount his experience or knowledge at all, but I suspect that, since all of those articles are co-authored with other attorneys, it’s quite possible he didn’t have much of a hand in actually writing the articles, and therefore any conclusions in those articles are less reflect of his actual thoughts on particular issues.
Probably true.
PTO Director-to-Be: there really is no debate that a claim for software code by itself is not patentable.
Discuss.
What’s to discuss? Has anyone ever seen a claim enforced that simply states:
“I claim software code comprising code lines .. , .., and …”
The 2008 article was about claiming a physical storage medium with computer software stored on it, a still debated issue. It had a strange genesis years ago when the PTO withdrew from the Fed. Cir. case in which they were challenging it before the case was decided.
P.S. That is, the kind of claims referred to as “Beauregard claims.”
[Now of less value, since so much software is no longer transmitted, sold or leased that way.]
? Even if software is sold and distributed over the internet, it is on computer readable media at the distributing server and it ends up on computer readable media at the user end.
Les, that may be equivalent for one purpose but there is huge practical difference between the economics of suing a company selling thousands of CDs with software on them versus suing thousands of individual PC owner purchasers of software obtained over the internet.
Yeah, no…. I figure you sue the guy with the server.
OK but how much infringement damages will you get for one server?
It’s not the one server – it is the number of occurances that the one server was used to transgress….
Re Anon’s comment below, a Beauregard claim is not a method claim – you do NOT get damages based on how many times the same CD or DVD or server hard drive gets read.
But you do get it based on the number of instances created…
Maybe its time to claim “A method comprising transferring computer instructions from a first computing device to a second computing device wherein the computer instructions, when executed by the second computing device, cause the second computing device to ….”
Les, what if the sever in question is located in Cuber
(JFK-speak) and is operated by the commie government?
Make, use and sell.
How does the configured server infringe? Use? No. Make, possibly. Sell, sell what? Certainly, the server is not sold.
The 2008 article goes on state that claims to software-stored-on-a-disk are also probably invalid / not-patentable.
… which makes perfect sense and is consistent with subsequent Supreme Court eligibility decisions, i.e., putting the ineligible subject matter on conventional storage media that has been used for eons to store exactly that type of data is not even close to “significantly more”.
I hate to agree with MM, but I also think Beauregard claims aren’t patentable. They would have to be under copyright to be protected.
copyright will not – and cannot – protect that which patents protect.
You double down with your comments PatentBob – very disappointing.
Yes, hence my comment that it is “a still debated issue” [unless you think it has really been fully legally challenged and sustained?] Since the Beauregard claim substrate itself is not novel, and the only thing new is what is magnetically or optically printed on it, there has been an academic challenge to Beauregard claims as unpatentable “printed matter.”
[But this is not the place I want to re-ignite that debate, since a PTO Director cannot ultimately decide such issues.]
The substrate does not have to be novel.
Come people, we have been well over the exceptions to the judicial doctrine of printed matter, and treating this as if you all are seeing it for the first time (and getting simple things wrong) is extremely disingenuous.
by the way, the “substrate has to be novel” runs directly into the problem as exemplified by the Big Box of Protons, Neutrons, and Electrons – the very “substrate” from which all compositions use.
the “substrate has to be novel” runs directly into the problem as exemplified by the Big Box of Protons, Neutrons, and Electrons –
Remember, folks: he’s a very serious person! Very deep and thoughtful.
And he has a Big Box.
And pretty much nothing else.
LOL
Brush away the ad hominem (and the poker tell), and once again Malcolm has said…
nothing.
“Go figure folks”
we have been well over the exceptions to the judicial doctrine of printed matter
Right and we all agree that it’s result oriented incoherent judicial activist gobbledyg 0 0 k that makes no sense.
LOL – your own volunteered admissions on point to the controlling law nature are NOT in agreement with what you are trying to peddle here.
That remains a major “Ooopsie” for you.
Yes, they make you anon run through these same arguments each time. I think I first heard this argument from you 12 years ago.
This tactic is what I have coined: “Shouting down, internet style.”
For anyone interested in an actual healthy “ecosystem,” this type of behavior by the sAme ones – over and over and over again and again should be extremely high on the “Blight to be eliminated” list.
And as I have also pointed out, during the “let’s make the ecosystem better” DISQUS experiment, the standard security setting co-located ALL of a posters arguments across threads.
It was very easy to see who was abusing the “Internet style shout down.”
That is, until Malcolm and similar anti-patent people changed their security settings to the maximum.
When asked why, there was NO intelligible answer ever given for this change.
When THIS fact was stressed, “all of sudden” the DISQUS experiment fell out of favor.
So instead of actually taking a very easy (and already implemented) step to correcting blight, the editorial controls were changed to remove that functionality.
Perceptions….
Link…?
there really is no debate that a claim for software code by itself is not patentable.
“Google paid me to say it. It was a joke.”
That will be the press release.
Truth always comes out. It is just that, sometime it takes a while.
Probably not true. History is written by the winners and time has a way of erasing evidence.
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