11/15/2018

EDWARD BRUCE MOORE 1907-1913

Edward Bruce Moore was born at North Anson, Maine, December 25, 1851. At the age of fourteen he came to Washington, serving as a page in the Senate. In 1876 he became interested in newspaper work, becoming editor of the Washington Daily News and the Washington Daily Telegraph. He was admitted to the bar in 1881, and in 1883 entered the Patent Office as an Assistant Examiner in Division 1.

11/13/2018

PTAB Practice Tips Post-SAS

James A. Worth and David P. Ruschke

On April 24, 2018, the Supreme Court held that a decision of the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) proceeding may not institute on less than all claims challenged in a petition for review. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018) (“SAS”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Prior to SAS, most panels exercised the discretion to institute only on those claims or grounds presented in the petition for which the PTAB determined a reasonable likelihood that the petitioner would prevail, pursuant to then-existing procedures. See SAS, 138 S. Ct. at 1354 (discussing the procedural history and 37 C.F.R. § 42.108(a)). Now, under current guidance, if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition. Guidance on the impact of SAS on AIA trial proceedings (USPTO Apr. 26, 2018), available at https://www.uspto.gov/patents-applicationprocess/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial.

10/31/2018

FREDERICK INNES ALLEN 1901-1907

Born at Auburn, New York, January 19, 1859, Frederick Innes Allen came from a prominent family of that city. Graduating from Yale in 1879, he received a class prize in mineralogy. He studied law and was admitted to the bar in 1882, beginning the practice of law in Auburn, where he remained until appointed Commissioner of Patents by President McKinley in 1901.

10/29/2018

A COMMON SENSE APPROACH TO IMPLEMENT THE SUPREME COURT’S ALICE TWO-STEP FRAMEWORK TO PROVIDE “CERTAINTY” AND “PREDICTABILITY”

Hung H. Bui

Concepts and ideas are not patent-eligible, but methods employing those concepts and ideas may well be. Like ideas themselves, “abstract ideas” are not patent-eligible, but suffer much worse fate — these “abstract ideas” suffer the same “existential crisis” as all of us and, worse, levitate in purgatory before our better angels cogitate (1) “what makes an idea abstract” and (2) “what constitutes an abstract idea.” But the truth is: “no one understands what makes an idea ‘abstract.’” That did not stop us from searching for a legal construct to address these questions and to explore methods employing an “abstract idea” for patent eligibility. Like the myth of Sisyphus, we do because we must — even if those constructs failed and failed again, year after year.

In Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Supreme Court set forth an analytical two-step framework to determine whether a claim is directed to a judicial exception, i.e., an “abstract idea.” Since Alice, however, the Federal Circuit, the district courts, and the United States Patent & Trademark Office (USPTO) have all struggled to implement the Supreme Court’s Alice two-step framework in a predictable and consistent manner. For example, the Federal Circuit has issued several precedential decisions for patent eligibility of computer-implemented (software-related) and business method inventions under 35 U.S.C. § 101, including: (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); (2) Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); (3) Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); (4) McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016); (5) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288 (Fed. Cir. 2016); (6) Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017); and (7) Visual Memory LLC v. Nvidia Corp., 867 F.3d 1253 (Fed. Cir. 2017). However, none of these precedential decisions provides sufficient guidance as to what aspect of a claimed invention suffices for the claim to transition from ineligible to eligible.

10/24/2018

CHARLES HOLLAND DUELL 1898-1901

Charles Holland Duell, twenty-fifth Commissioner of Patents, was the illustrious son of Robert Holland Duell, the fifteenth Commissioner of Patents.

Charles was born in Cortland, New York, April 13, 1850. Being graduated in 1872 from the Law Department of Hamilton College, he was soon thereafter admitted to the bar, and began the practice of law in New York City. Here he continued until 1880, with the exception of a short term as examiner in the Patent Office in 1875-1876. In 1880 he removed to Syracuse and continued the practice of law there, making a specialty of patent law, until called to Washington in 1898 as Commissioner of Patents. He returned to New York in 1901 to resume private practice until 1904, when he again returned to Washington to accept an appointment at the hands of President Roosevelt as Associate Justice of the U. S. Court of Appeals of the District of Columbia. He continued on the bench until 1906, returning again to New York as senior member of the firm of Duell, Warfield and Duell. His interest with this firm continued until his death on January 29, 1920.

10/22/2018

Part of a Larger Whole: How Combination Patents Show That Patent Exhaustion is Part of Patent Misuse

David B. Orange

The Supreme Court recently explained that selling a patented product “marks the point where patent rights yield to the common law principle against restraints on alienation.” This paper considers the law governing when an owner has a patent on a combination of parts, and sells one of the parts to a consumer. Currently, when a patent owner sells part of a patented combination, we apply an analysis that is similar to indirect infringement, and if no infringement exists at the time of sale, we assign all rights to the patent owner because we have only considered the exhaustion doctrine as though it were a distinct area of law. However, the present approach ignores that the sale was authorized and unconditional, so even if the entire patented combination was not exhausted, the consumer should not be in the same position as if the sale were unauthorized. Consequently, the exhaustion of combination patents leads to the same result as in Impression Products. 

10/02/2018

JOHN S. SEYMOUR 1893-1897

John Seymour was born on September 28, 1848, and came from Colonial stock, his earliest ancestors in this country being found among the first settlers of Hartford, Connecticut. The first years of his life were spent at Whitney's Point, New York, his schooling being in the common schools and the Whitney's Point Academy. After graduating from Yale College and then studying law at the same institution, he returned to the place of his ancestors in Connecticut and there took up the practice of law in Norwalk. He held a number of prominent positions in that state before he was appointed Commissioner of Patents by President Cleveland during the latter's second administration.

10/01/2018

The Patent Provisions of TPP: An Endpoint or should be just a mere Starting Point for more and better Patent Protection in a revised NAFTA

Markus Nolff

In his 2018 State of the Union Address, President Trump stated that, “one of my greatest priorities is to reduce the price of prescription drugs.” Few sentences later, President Trump stated that he, “will fix bad trade deals and negotiate new ones,” and “will protect ... American intellectual property through strong enforcement of the trade rules.” One week after the State of the Union Address, the Council of Economic Advisers released a study containing the following recommendations: (i) address high domestic prices by fostering better market price competition domestically and, (ii) to incentivize development of new (inventive) pharmaceutical products by addressing the low overseas pricing of pharmaceuticals which takes little account of the cost of their research and development (hereinafter “R&D”).

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