by Dennis Crouch
A number of petitions are pending before the Supreme Court raising interesting patent issues, although none have been granted certiorari thus far.
Leading Eligibility Case: In next week’s long conference (Sept 26), the court will consider what I see as the current leading case of CareDx Inc. v. Natera, Inc., No. 22-1066. The case focuses on the question of whether the patent covering a new biologic diagnostic method was properly invalidated as directed to a natural phenomenon.
The CareDx invention relates to early noninvasive detection of organ transplant failure–an important and longstanding issue in the field. The detection method involves identifying DNA fragments from the transplant within the bloodstream, a challenge that had stumped scientists for over a decade. Although various scientists had proposed mechanisms for using this information, the evidence shows more than a decade of failed ideas, and at least one article reported that the process is “difficult and impractical.” The breakthrough came when Stanford researchers successfully applied high-throughput multiplex sequencing (“shotgun sequencing”) to detect single nucleotide polymorphisms (SNPs) unique to donor organs. Of potential importance, the Stanford researchers did not create these new sequencing techniques, but they were the first to take advantage of them in this particular context and identified particular thresholds in crafting a method that works in this situation. The claims were invalidated by the district court, and that judgment affirmed on appeal.
Another Natural Law Case: A second well written natural phenom petition was recently filed in ChromaDex, Inc. v. Elysium Health, Inc., No. 23-245. The patent in that case claims a dietary supplement of nicotinamide riboside (“NR”) that increases the production of nicotinamide adenine dinucleotide (“NAD+”) — this one was crated by folks at Dartmouth. I have written previously that the Supreme Court’s product of nature in Myriad is hard to square with the two-step abstract idea / law of nature cases of Alice & Mayo. In its decision, the Federal Circuit concluded that the two-step approach is inapplicable in the natural phenomenon case — thus omitting consideration of any inventive concept going beyond the excluded portion. The Hail Mary case of Killian v. Vidal, No. 22-1220, argues that the judge made eligibility exceptions represent a Fifth Amendment taking, a due process violation, and represent ultra vires actions.
IPR Estoppel: A second important case awaiting the late-September conference is Ingenio, Inc. v. Click-to-Call Technologies LP, No. 22-873, focusing on the scope of IPR estoppel under 35 USC 315(e). The case asks whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e) to all grounds that reasonably could have been raised in the petition. They focus on the the statutory language that, under their reading, applies the reasonably-could-have modifier in a much narrower context. To wit, petitioner argues that estoppel only applies to issues that could have been raised after the petition was granted– that petitioner “reasonably could have raised during that inter partes review.”
Favorite Pending Case – Inventorship: My favorite pending case is HIP, Inc. v. Hormel Foods Corporation, No. 23-185. HIP argues that the Federal Circuit’s decision improperly heightens the standard for joint inventorship by focusing on quantity rather than substance of inventive contributions. HIP contends any original contribution included in a claim, even if partial, warrants joint inventor status under 35 U.S.C. § 116. In the case, a HIP engineer provided suggestions to Hormel on implementing a pre-cooked bacon method. HIP’s suggestion (using an infrared oven for the preheating step) made its way into the claims, the court concluded it was not significant enough to warrant joint inventorship. For me, the case is largely about the strong presumption that the listed inventors are correct.
Additional Pending Petitions: Two more pending petitions. In Personalized Media Communication, LLC v. Apple Inc., No. 23-230, the patentee PMC argues that the court improperly applied prosecution laches to render its patents entirely unenforceable. PMC argues that under cases such as SCA Hygiene, a patentee’s compliance with statutory deadlines precludes equity from stepping in via laches. I believe that PMC owns the most pre-GATT patents that are still within their patent term. Yes, even more than Gill Hyatt. Finally, in Salazar v. AT&T Mobility LLC, No. 23-241, the petitioner argues that the Federal Circuit acted improperly by issuing an unforeseeably narrow claim construction on appeal. Back in 1995 when these applications were filed, Apple had just released an updated Newton that included Graffiti handwriting recognition software from Palm.
Conclusion: The Supreme Court has not yet granted certiorari on any of these patent law petitions, but their treatment of these issues will provide valuable guidance. Cases like HIP v. Hormel and ChromaDex v. Elysium give the Court opportunities to clarify murky areas of the law around joint inventorship and patent eligibility. Meanwhile, petitions in Ingenio v. Click-To-Call and PMC v. Apple deal with critical procedural issues tied to post-issuance review and prosecution laches. The next few weeks may prove pivotal as the Court considers which of these issues merit its attention.
“The Hail Mary case of Killian v. Vidal”
And yet . . . some of the most important, impactful, successful cases in U.S. history were Hail Mary’s: Dobbs, Halvering, Hans, Kelo, Chevron, and NFIB v. Sebelius.
Killian is next.
One can dream, but my money would be on Cert Denied.
I don’t think you understand what “Hail Mary” means.
Pro Say:
Thank you!
When I read the petitions by B and U.S. Inventor, the legal arguments for cert on Killian are there. In fact, the DOJ, lower courts and USPTO have not contested our position.
What makes this a Hail Mary situation is the human nature of a group of judges admitting they made a mistake with Alice, not the legal points of our arguments.
No way the judges interpreted s101 on Alice, the judges flat out re-wrote law. And their re-write is so horrible that there are 50 pages in the MPEP trying to define an inventive concept. The MPEP uses the phrase judical exception 290 times, a phrase that is not found in statue in combination or by individual words.
Statutory stare decisis is at it’s weakest when the court decision does not even reflect the words or meaning in the statute. The exceptions are already baked into the statue with no mention that judges can add to the law.
Re: the cert attempt in Salazar v. AT&T Mobility LLC, No. 23-241, noted above was: “Back in 1995 when these applications were filed, Apple had just released an updated Newton that included Graffiti handwriting recognition software from Palm.” But did not Xerox have a patent on handwriting recognition software for a hand-held screen even before that which was infringed by that Palm Pilot?
Re: “I believe that PMC owns the most pre-GATT patents that are still within their patent term. Yes, even more than Gill Hyatt.” That blew my mind, in view of the thousands of Hyatt pre-GATT patent applications. So I checked the website of PMC, which says:
“Personalized Media Communications (PMC) owns a fundamental patent portfolio relating to the control of networked equipment, including online and mobile environments. John Harvey, PMC’s founder, first disclosed the inventions in 1981. All of PMC’s patents claim priority from 1981 or 1987 and have terms lasting until at least 2027 with many lasting until the 2030’s. PMC’s portfolio consists of over 100 issued patents. PMC’s licensing strategy focuses on mutually beneficial business outcomes. This approach has resulted in licenses with clients including Cisco Systems, DirecTV, Motorola, Sony, and Zynga.” [Not Apple, hence this suit and cert.] I.e., PMC is ‘only’ claiming “over 100” pre-GATT patents. But they are presumably still in force and kept pending so long that they will only expire VASTLY longer than 20 years from their claimed filing date? [Another damming indictment of PTO docket control failure, not previously publicized, and not even put into a special examination group like Hyatts?
In view of the grab bag nature of the thread, Bunches of stuff, but of note (especially to Night Writer) is the brief mention of the implosion of patent efforts.
That prior “support” of foreign filings in the USPTO is about to completely evaporate.
See: link to youtu.be
Watch your typos, Dennis. Your article has a few, and it makes it irksome to read the article.
It’s the “artificial intelligence” adapting to the patent world sun tax. Don’t worry — it’ll be 99% perfect next Spring! The revolution is, like, totally here, just about anyway, and darn it all the excitement is almost as huge as it was a couple months ago. Can you feed it?
What’s really amusing Malcolm, is not how dismissive you try to be, but rather just how “clench tight your eyes” you are.
For someone who works in innovation protection, the cognitive dissonance you display about innovation is staggering.
I’ve been watching the Silly Con Valley peddle all kinds of shiny j u n k for nearly forty years now. That’s not saying that it’s all worthless vapor or that nothing has been innovated. But any sudden increased reliance on computers to carry out “creative” tasks previously performed by humans should be watched closely and skeptically for reasons that are obvious to anyone who has actually been paying attention (as opposed to clapping furiously like a mechanical chimp every time a new “upgrade” is rolled out).
I’ve been watching the Silly Con Valley kids hawk all kinds of shiny j -n k for nearly forty years now. That’s not saying that it’s all worthless vapor or that nothing has been innovated. But any sudden increased reliance on computers to carry out “creative” tasks previously performed by humans should be watched closely and skeptically for reasons that are obvious to anyone who has actually been paying attention (as opposed to clapping furiously like a mechanical monkey every time a new “upgrade” is rolled out).
What you do is WAY beyond merely “watch[_] closely and skeptically”
That’s just more of your gaslighting attempt to portray yourself as NOT anti-patent.
“ What you do is WAY beyond merely “watch[_] closely and skeptically”
Thank you.
That was not a compliment.
Clearly.
Going far beyond what is reasonable — based solely on your emotional rants — is clearly not a compliment.
Here’s a nickel- buy a c1ue.
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