The U.S. Patent and Trademark Office announced a proposed change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”). The change would replace the current Broadest Reasonable Interpretation (“BRI”) standard with the standard articulated in Phillips v. AWH Corp. 415 F.3d 1303 (Fed. Cir. 2005) (en banc). This change would harmonize the claim construction standard applied in inter partes review, post-grant review, and covered business method patent proceedings before the PTAB with the one used by federal district courts and the International Trade Commission. The proposed amendment would also allow the PTAB to consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an AIA proceeding.
In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question whether the inter partes review (IPR) process violates the U.S. Constitution by “extinguishing private property rights through a non-Article III forum without a jury.”
In 2001, Oil States Energy Services LLC (“Oil States”) was granted U.S. Patent No. 6,179,053 for a lockdown mechanism to ensure a mandrel is locked in an operative position during fracking. Oil States sued Greene’s Energy Group LLC (“Greene’s Energy”) in the Eastern District of Texas in 2012 for infringing this patent, and in turn, Greene’s Energy petitioned the United States Patent and Trademark Office (USPTO) to institute an IPR on the patent. This petition was granted. After the proceedings, the Patent Trial and Appeal Board (PTAB), the administrative body of the USPTO that handles IPRs, concluded the challenged patent claims were invalid. Oil States appealed to the Federal Circuit, which affirmed the decision, and Oil States then petitioned the Supreme Court for certiorari.
Last week the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals clarified the scope of the on-sale bar rule under the America Invents Act (AIA). The on-sale bar in general means that a sale or an offer to sale of an invention more than one year prior to the effective filing date of a patent qualifies as prior art. The Federal Circuit held that 35 U.S.C. § 102 as revised in the AIA does not change the long-settled rule that a sale can invalidate an invention even if the sale does not disclose the details of the invention.
On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings. The effort includes analyzing five years’ worth of historical data covering PTAB proceedings and user experiences. The USPTO hopes to use this data analysis to ensure the proceedings are as “effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of patentability of patent claims after they issue.”
In recent years, software patents have come under fire from legislation (the American Invents Act) that has generally made patents easier to invalidate, and from court decisions (the Supreme Court’s decision in Alice v. CLS Bank and its progeny) that have made computer-implemented inventions more vulnerable to subject matter eligibility challenges. Some observers have concluded that software patents are no longer worth pursuing. We disagree. Although there are real challenges, and patents on some software or other computer-implemented inventions may now be quite difficult (or even impossible) to obtain or enforce, a well-written and well-prosecuted patent application can circumvent many of these obstacles.
To read our full advisory on software patent eligibility, please click here.
The New Year brings excitement and anticipation of changes for the best. Some of the pending patent cases provide us with ample opportunity to expect something new and, if not always very desirable to everybody, at least different. In this post, we highlight several cases that present interesting issues and that we anticipate may provide for new and important developments in the patent law this year.
On October 28, 2016, the United States Patent and Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register proposing revisions to the materiality standard for the duty to disclose information in patent applications and reexamination proceedings in light of Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc). The PTO had previously issued a notice of proposed rulemaking regarding the same rules in the Federal Register on July 21, 2011 after the Therasense decision. However, given the passage of time and the significant changes to patent law as a result of the successful implementation of the Leahy-Smith America Invents Act (AIA), the PTO considered it appropriate to obtain public comment on the proposed changes to the duty of disclosure rules.
In the new notice, the PTO proposes to revise the rules to adopt the but-for standard for materiality required to establish inequitable conduct as set forth in the Federal Circuit’s decision in Therasense as the standard for materiality for the duty to disclose information in patent applications and reexamination proceedings. The PTO also proposes to revise the rules to explicitly reference “affirmative egregious misconduct” as set forth in the Federal Circuit’s Therasense decision.
The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents. On November 21, 2016, the Federal Circuit ruled in Unwired Planet v. Google that the Patent Trial and Appeal Board (PTAB) had rendered this limitation “superfluous” by failing to apply the correct statutory definition of “covered business method patent.” Accordingly, the Federal Circuit vacated PTAB’s final written decision and remanded the case for a threshold determination of whether the challenged patent is a covered business method patent under the controlling statutory definition.
On October 9, 2013, Google petitioned for Covered Business Method (CBM) patent review of Unwired Planet’s U.S. Patent No. 7,203,752. On April 8, 2014, PTAB instituted CMB review (CBM 2014-00006), stating that, when determining whether the ’752 patent was a CBM patent, the proper inquiry is “whether the patent claims activities that are financial in nature, incidental to a financial activity, or complementary to a financial activity.” Applying this standard, PTAB determined that the ’752 patent was a CBM patent eligible for CBM review because the claimed invention could be used to facilitate advertising and therefore is incidental or complementary to a financial activity.
Someone stole your invention and filed for a patent on it? Derivation proceedings in the Patent Office may be an answer. The Leahy-Smith America Invents Act (AIA) amended 35 U.S.C. § 135 to replace interference proceedings with a new process called derivation proceedings. This change took effect on March 16, 2013. But despite over three and a half years since this change, little is known about this procedure as few have been filed.
On August 3, 2016, the Patent Trial and Appeal Board issued a post-grant review decision that bears one striking similarity to its previous post-grant review decisions, namely invalidation of claims under Alice Corp. Pty. v. CLS Bank Int’l, further bolstering the salience of patent ineligibility challenges in post-grant proceedings.
In Netserv et al. v. Boxbee, Inc. (Case No. PGR2015-00009), the Board found the subject matter claimed in claims 1-21 of Boxbee Inc.’s U.S. Patent Number 8,756,166 (“the ‘166 patent”) to be ineligible for patent protection under 35 U.S.C. § 101. The Board first determined under Alice whether the claims of the ‘166 patent were drawn to an abstract idea. The Board found the ‘166 patent to describe “a bailment scheme using storage containers” or a method of keeping track of the storage locations of certain containers or items. Referring to cases on shipment tracking methods from federal district courts in New Jersey and California, as well as decisions from the Federal Circuit, the Board ruled that “bailment schemes [are] a long-prevalent economic practice, and constitute an abstract idea.”