Register for free to join our community of investors and share your ideas. You will also get access to streaming quotes, interactive charts, trades, portfolio, live options flow and more tools.
Register for free to join our community of investors and share your ideas. You will also get access to streaming quotes, interactive charts, trades, portfolio, live options flow and more tools.
If Alice repeal is passed, OR VPLM wins at the Federal Circuit, the cases are hardly "lost"...
no -it isn't.
Alice reform, or an appeal win at the Federal Circuit and it's a new ball game
You do know the history of Digifonica, do you not?
Digifonica built the nodes, and tested them.
Voip-Pal is the old Digifonica....
Voip-Pal has filed and been granted number of continuation patents (successfully).
The are FACTS
PATENT REFORM IS COMING
July 11, 2019
The STRONGER Patents Act of 2019: Weakening Post-Grant Proceedings
By Joshua Rich --
Washington - Capitol #5The sponsors of the STRONGER Patents Act of 2019[1] -- introduced to the Senate on Wednesday -- may be from both political parties,[2] but they share one clear trait: they hate what post-grant proceedings have done to patent litigation. So they introduced a bill that would roll back the availability, attractiveness, and effectiveness not only of inter partes review and post-grant review, but also the availability and attractiveness of ex parte reexamination. The bill also seeks to supplant state anti-troll laws through specific federal unfair trade practices provisions directed at "targeting rogue and opaque letters" that would preempt such laws. And it includes a number of unrelated provisions that would make permanent injunctions easier to obtain, end PTO fee diversion, reduce university patent fees, and seek to aid small businesses in the patent system.
The narrowing of inter partes review ("IPR") and post-grant review ("PGR") would start with who can bring such proceedings: in order to have standing to bring an IPR or PGR, a petitioner (or its privy or real party in interest) must have been sued for infringement of the patent or charged with infringement under the patent in a manner that would give rise to declaratory judgment jurisdiction. In doing so, the bill gets rid of one of the two main rationales for the AIA's post-grant proceedings: having an avenue that would allow the interested public to get rid of "bad" patents. Furthermore, in combination with other provisions, it forces the petitioner to choose between taking a single shot[3] with an IPR or PGR petition or litigating the invalidity issues in Federal court or the International Trade Commission; it gets rid of the possibility of parallel proceedings. So only those parties who could otherwise bring their arguments in Federal court or the ITC would be able to file a petition, and then they wouldn't be able to argue invalidity in court.[4]
Next, the bill limits the number of petitions a patentee will face, prohibiting the Director from instituting any petition directed to a claim if a previous petition has been instituted with regard to that claim. Given the estoppel that would now set in upon filing -- not Final Written Decision -- that provision could result in a party being prohibited from arguing invalidity in post-grant proceedings or court. For example, if an IPR petition were filed one day after another petitioner's, and the other petitioner's IPR were to be instituted, the second filer would be shut out even if it was raising different arguments. The combination of those two provisions would severely limit the use of IPRs and PGRs, but it raises fundamental First Amendment concerns.[5] Similarly, IPR and PGR cannot be instituted if there is a final judgment on validity in either a Federal court or the ITC, apparently even if the case didn't involve the petitioner. Again, a petitioner who files before the judgment but would have the institution decision made after a judgment against a third party would be shut out of both post-grant proceedings and court litigation.
The bill then creates a higher bar for institution, making the institution standards the same as those already applied in court. In making the institution decision, the PTAB must presume every claim to be valid, and the petitioner bears the burden of showing invalidity by clear and convincing evidence. In evaluating the petition, the PTAB panel must construe the claims in the same manner as a court, and must consider any prior construction of a challenged claim term. Notably, the panel that decides whether to institute an IPR or PGR cannot then sit in review of the instituted proceeding. Furthermore, the bill would open institution decisions up for appellate review much more broadly. A patentee would be able to appeal the institution decision on any basis other than whether there was a reasonable likelihood that the petitioner would prevail (a small sacrifice, since the ultimate decision is appealable on the merits); an unsuccessful petitioner would be barred from appealing a denial of institution. The net effect is to create a much higher standard for institution of post-grant proceedings and remove the incentive for even eligible petitioners to choose them over litigation.
The disincentives would not stop even after a petition was instituted. If a court renders a final judgment on validity, a pending IPR or PGR would be stayed while the case is appealed. If the validity of the claims is upheld on appeal, the IPR or PGR will be terminated. Thus, even on the eve of oral hearing, post-grant proceedings could apparently be halted for the litigation of validity issues in an unrelated party's lawsuit.
Finally, the definition of a real party in interest -- important for both disclosure and estoppel -- is clarified and broadened to include anyone funding the petition, and is subject to discovery during an IPR or PGR.
But the bill doesn't just discourage AIA post-grant proceedings, it also limits ex parte reexamination. It would get rid of one of the significant benefits of such proceedings, the ability to bring them through a strawman. Instead, a petition for ex parte reexamination would now have to identify the real party in interest. In addition, it could only be instituted if the reexamination petition is filed within one year of service of a complaint alleging infringement of that patent. Thus, even ex parte reexamination, which preceded the AIA, would be discouraged under the STRONGER Patents Act.
The bill also has a number of provisions not related to post-grant proceedings. It would partially reverse the eBay v. MercExchange case[6] by calling for a presumption of irreparable injury and inadequacy of remedies at law upon a finding of infringement of a valid, enforceable claim. That is, it would make permanent injunctions easier to obtain, requiring showings of only two of the traditional four factors. The bill would prohibit fee diversion from the PTO and allow institutions of higher learning and their technology transfer offices to claim micro entity status for purposes of paying fees to the PTO. And it would broaden the patent pilot program in certain district courts in order to address special issues faced by individuals and small businesses charged with infringement. Notably, it would also assist small businesses by requiring the PTO to make all of the patent and trademark information available at the PTO's Public Search Facility also available for free online.
Finally, the bill has a separate title to address Federal prohibition of misleading or deceptive letters purporting to assert patents against the recipients. Currently, there are state "anti-troll" laws that prohibit such letters; the bill would pre-empt them in favor of Federal Trade Commission[7] enforcement against parties who send out letters asserting infringing in any of a number of potentially deceptive circumstances.
The STRONGER Patents Act of 2019 would actually strengthen patent owners' positions, but only through weakening other parties' defenses. It would essentially eliminate post-grant proceedings as a means of obtaining an early and rapid adjudication of validity before product launch. Even after product launch, it would establish so many hurdles to effective review that it would make seeking PTAB review far less attractive than before, and likely less attractive than court litigation. Thus, it would beat back the wave of post-grant proceedings that have eliminated many patents. While it may be true that the AIA went overboard in making the PTAB into patent death squads,[8] the STRONGER Patents Act appears to go overbroad in tightly shackling petitioners.
[1] The full title of the bill is the "Support Technology and Research for Our Nation's Growth and Economic Resilience Patents Act of 2019," S. 2082.
[2] The bill is sponsored by Senator Coons (D-DE) and cosponsored by Senators Cotton (R-AR), Durbin (D-IL), Hirono (D-HI), Kennedy (R-LA), and Cramer (R-ND).
[3] There is a minor exception that would allow a party to file an additional petition if it is subsequently charged with infringement of additional claims.
[4] An IPR petitioner would be able to argue in court that a claimed invention was in public use, on sale, or otherwise available to the public before the effective filing date, but those arguments are not available in an IPR.
[5] "Congress shall make no law . . . abridging . . . the right of the people . . . to petition the Government for a redress of grievances."
[6] eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
[7] The bill would also allow State Attorneys General to enforce the law in certain circumstances.
[8] At least according to then Chief Judge Rader, speaking at the October 2013 AIPLA annual meeting.
Facebook page is working fine
https://www.facebook.com/VoipPalOfficial/
This is exactly why "Judicial Exception' must be addressed. Patent law should not be ruled on from the bench
NINE YEARS and counting.....the patent system is BROKEN.
https://www.ipwatchdog.com/2019/08/06/virnetx-scores-partial-win-latest-federal-circuit-case-apple/id=111926/#comment-2790431
there's different levels of expertise and cost depending upon the "need"
Let's just see what happens with Alice/101
I believe a link to his appeal has been posted, and is also available on the Voip-Pal website. His arguments are excellent.
VPLM's excellent lead counsel, Kevin Malek did EXACTLY THAT. He is the patent expert on behalf of VPLM....
There's nothing ambiguous about my statement.
Proof will happen in the courts...until then, I am expressing my opinion....
If the patents were so worthless, Apple, Verizon et al...would not be putting so much legal talent on the cases....The patents apply to many of the defendant's applications...
It can only be PROVEN in court, and VPLM has every intention of getting there
In the end, VPLM will win their appeal on the Alice motion.
100% legitimate patent owner, technology developer play.
and yet, curiously so worthy of everyone's time and attention......now why is that?
prove it
"Malak knows they're worthless and won't generate money (and they haven't). "
NO - HE DOESN'T KNOW THAT.
"Thus he drags this ticker along as slowly as possible so he can actually make real millions selling shares."
NO - THE PATENT SYSTEM IS AN EXTREMELY DIFFICULT FIGHT, AND EMIL HAS DONE AN EXCELLENT JOB OF KEEPING THE COMPANY GOING TO OVERCOME THE PTAB, ALICE MOTIONS ETC..
"There was no 'offer', it was just OTC made up mumbo jumbo to string the story along."
NO - GIL AMELIO AND ASSOCIATES TRIED TO TAKE ADVANTAGE OF THE ALICE RULING AND GET A BARGAIN PRICE IN ORDER TO RE-LICENSE. EMIL SAID NO.
the arguments made in the appeal to the Federal Circuit to reverse Judge Koh's ruling are solid.
the patent/legal system including the USPTO, the PTAB, IPRs, appeals, Alice motions all contribute to the obstacles for companies like VPLM....fortunately there is a movement in Washington to address some of this, so that innovation doesn't flee the US to foreign soil....
The article suggests that we are getting very close to a 101 reform bill that will all but eliminate "Judicial Exception"
Patent Heavyweights Take Strong Stance Against ACLU Anti-Patent Reform Statements
By IPWatchdog
July 31, 2019
“Congress should reform § 101 and it should not be diverted by misleading policy rhetoric or mistaken statements about the patent laws.”
Yesterday, 24 law professors, former Chief Judges of the Federal Circuit and former heads of the U.S. Patent and Trademark Office (USPTO) sent a letter to Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Jerrold Nadler (D-NY) and Doug Collins (R-GA) aimed at correcting what the letter characterizes as “misapprehensions of law and misleading rhetoric” on the subject of pending patent reform legislation.
The letter makes specific reference to statements made by the American Civil Liberties Union (ACLU) claiming that the draft legislation to amend Section 101 of the patent law “if enacted would authorize patenting products and laws of nature, abstract ideas, and other general fields of knowledge.” The authors of yesterday’s letter, which included Retired Federal Circuit Chief Judges Randall Rader and Paul Michel and former USPTO Directors Todd Dickinson and David Kappos, called such statements “profoundly mistaken and inaccurate” and laid out in detail the specific inaccuracies. Rather than expanding the scope of 101 to abstract ideas and laws of nature, said the letter, “the proposed amendments preclude ‘implicit or judicially created exceptions to subject matter eligibility,’” and do not eliminate existing constitutional and statutory bars. The authors continued:
First, pursuant to the constitutional authorization to Congress to enact patent laws “to promote the Progress in . . . the useful Arts,” the patent system secures an exclusive right only in new products, processes, and compositions of matter that constitute the “useful Arts.” Thus, it is a longstanding and fundamental requirement in the patent statutes that only inventions or discoveries falling within the statutory categories in § 101—and in its predecessor statutes dating back to the first Patent Act of 1790—are eligible for patent protection.
The proposed legislative reform to § 101 does not alter this requirement.
The letter further addressed the ACLU’s contention that “the draft legislation would ‘prevent the discovery of novel treatments for diseases’ and would cause ‘harms to innovation and useful research’ in diagnostic tests.” Such claims are not supported by empirical evidence, said the letter, citing studies that showed patents had no effect on follow-on innovation due to the disclosure function of the patent system, which allows for open access to data. Additionally, because of companies’ efforts to commercialize inventions like genetic testing via patents, insurance providers began covering such tests to the ultimate benefit of patients.
Finally, the letter reiterated that human genes simply cannot be patented, as the entire sequence of human genes has been public since the turn of this century—an argument that has been upheld by the Federal Circuit in cases like In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009). “The proposed reform of § 101 does nothing to alter these facts of science or law,” said the letter. It concluded by underscoring the harms to U.S. innovation under the current state of the law:
Unfortunately, U.S. innovators, especially in the high-tech and biopharmaceutical sectors, are suffering under extreme uncertainty about how patent examiners or judges will apply the Alice-Mayo framework that was recently created by the Supreme Court. With high rates of rejections of patent applications at the U.S. Patent & Trademark Office and high rates of invalidations of patents by courts, the only certainty that does exist is that the U.S. no longer secures the fruits of inventive labors with reliable and effective patent rights. This represents a fundamental change in the incentives the U.S. has provided to inventors for over two centuries, as its “gold standard” patent system closes its doors to twenty-first-century innovation in the vital high-tech and biopharmaceutical fields. Congress should reform § 101 and it should not be diverted by misleading policy rhetoric or mistaken statements about the patent laws.
Along with Michel, Rader, Dickinson and Kappos, the letter was signed by professors including Adam Mossoff of Antonin Scalia Law School George Mason University; Jeffrey Lefstin of UC Hastings College of Law; Hugh Hansen of Fordham University School of Law; Kevin Noonan of DePaul University College of Law; and many other distinguished professors of law.
Movement on the bill to reform Section 101 has reportedly been delayed until sometime in August, possibly due to disagreement on the language of the research exemption to avoid preempting fundamental research.
Facebook is another way to stay in touch with shareholders. I have spoken to many who appreciate it
GREAT POST- COULD NOT HAVE SAID IT BETTER.
Alice uncertainty: curiouser and curiouser
Intellectual Property and Technology News
24 July 2019
By:
Carrie L. Williamson Saori Kaji
The USPTO, Federal Circuit and Congress each have taken recent steps to resolve uncertainty on subject matter eligibility under 35 U.S.C. § 101.
The USPTO has published guidance to provide more consistency during patent prosecution in assessing subject matter eligibility, but its effectiveness depends on whether the courts uphold patents issued in view of the guidance. The Federal Circuit recently declined to follow USPTO guidance, instead following its own precedent to invalidate patent claims. In light of this tension, support has been growing for a legislative solution, which may arrive soon.
Significantly, on May 22, 2019, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Doug Collins (R-GA), Hank Johnson (D-GA) and Steve Stivers (R-OH) released a draft bill that would reform Section 101.
In response to Alice and Mayo, the USPTO released subject matter eligibility guidance under Section 101 in 2014; it has been revised several times.
In January 2019, the USPTO released further revised guidelines to ensure application of the two-step Alice/Mayo test in "a manner that produces reasonably consistent and predictable results."1 The revised guidance clarified in two ways the first step of the Alice/Mayo test to determine whether a patent claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas).2
“The Federal Circuit recently declined to follow USPTO guidance, instead following its own precedent to invalidate patent claims. In light of this tension, support has been growing for a legislative solution."
First, the revised guidance provides groupings of abstract ideas – "mathematical concepts, certain methods of organizing human activity, and mental processes" – and clarifies that except in rare circumstances, claims falling outside these groupings should not be treated as reciting abstract ideas.3
Second, the revised guidance clarified that a claim reciting a judicial exception is not "directed to" the exception if the exception "is integrated into a practical application of the judicial exception."4 Only when a claim recites a judicial exception and fails to integrate the exception into a practical application is the claim considered "directed to" a judicial exception, thereby triggering further analysis via the second step of the Alice/Mayo test, the inventive concept.
The Federal Circuit's treatment of USPTO guidance
In Cleveland Clinic Foundation v. True Health Diagnostics LLC,5 the Federal Circuit rejected USPTO guidance in favor of its own precedent, stating, "While we greatly respect the PTO's expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance," noting "the need for consistent application of our case law." Id. at *6. The court found plaintiffs' claim was "strikingly similar" to a claim considered in a prior Federal Circuit case where the court found the claim at issue patent ineligible. The court declined to follow the PTO example and instead followed its precedent.
Although non-precedential, the holding suggests a patent may be found ineligible by courts even if the patent was issued as the result of the PTO's published guidance on subject matter eligibility. Given the tension between the PTO's guidance and the Federal Circuit's precedent, there may be greater urgency for a legislative resolution.
Proposed legislative action regarding 35 U.S.C. § 101
The proposed reform is viewed as strongly pro-patentee, wiping away all judicially created exceptions to subject matter eligibility and abrogating all cases establishing or interpreting those exceptions.
The Senate Judiciary Committee's Subcommittee on Intellectual Property held hearings with 45 scheduled witnesses on June 4, 5 and 11 to discuss this proposed reform. During his June 4 testimony, Former Federal Circuit Chief Judge Paul Michel noted the "present, intolerable chaos" in the law of patent eligibility and urged adoption of legislation "generally modeled" on the draft bill, including the elimination of the judicially created exceptions.6
In contrast, Professor Mark Lemley from Stanford Law School testified that a more conservative approach that did not "eliminate two hundred years of legal doctrine" might provide more success in addressing problems in patent eligibility in life sciences while protecting against patent abuse in other areas.7
Should this draft become law, there would likely be significant uncertainty as to how challenges to patent eligibility would be decided, and challenges may focus on the new definition of the term "useful." That is, the bill may fail to offer certainty, at least in the short term, regarding patent eligibility and may propel us further into wonderland.
Draft bill revising Section 101
Revision to Section 112
Section 100
Additional Legislative Provisions
(k) The term "useful" means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.
Section 101
(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.
The provisions of section 101 shall be construed in favor of eligibility.
No implicit or other judicially created exceptions to subject matter eligibility, including "abstract ideas," "laws of nature," or "natural phenomena," shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.
The eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.
Thanks for your concern
I believe that we will win the Alice issue and the stock will go much higher.
I've read the financials. What happens if the Alice motion gets overturned?
Emil doomed NOTHING.
The Patent system has TEMPORARILY slowed up VPLM's momentum, but the Senate and the Federal Circuit will have something to say about all of this....
If you don't like the stock, don't buy it...
wow I had no idea -I guess all the longs are doomed.......lOL
If VPLM were putting out PR's as you suggest, they would be accused of pumping....The current status of the litigation is posted on the VPLM website for ALL to see. That's the definition of "transparency".
you can stop trying anytime you like.....the core shareholders are rock solid.
JUNE 12, 2019
Patent Reform: Congressional Hearings, Part III
Holland & Knight Section 101 Blog
Anthony J. Fuga
Tuesday, June 11, 2019, marked the third and final congressional hearing on the state of patent eligibility. Sen. Thom Tillis (R-NC) began the hearing by referencing key issues that he heard, and made a point to respond to the ACLU's concern with allowing "companies to patent products and laws of nature – including our genes." Sen. Tillis attempted to dispel this by saying, "we're not going to touch your genes, ACLU. Problem solved . . . I'm pretty sure if it's not new, you can't patent it."
Sen. Chris Coons (D-Del.) also had prepared comments and pointed the audience to an Op-Ed that he and Sen. Tillis wrote in The Hill. Like previous statements, both senators emphasized their concern that uncertainty in this area threatens American innovators. Sen. Coons specifically referenced uncertainty undermining innovators attempting to cure diseases, create better diagnostic testing, and develop artificial intelligence and quantum computing. He also stated that he does not want to let other countries leapfrog the United States in innovation. To close, Sen. Coons made the point that the draft bill was not final but was meant to facilitate discussion, and it accomplished that.
Sen. Tillis wrapped up the hearing, stating that after three days, 45 witnesses, and roughly 8 hours of testimony, he believes the bill needs refinement. For instance, he mentioned the need for further enhancements to the Section 112 language, along with revisions to the bill to confirm that business methods and generic computer claims cannot be weaponized against small business and entrepreneurs. He also mentioned a potential research exemption.
Lastly, Sen. Tillis stated that he wants to do this quickly. He hopes to revise the draft language and introduce a final bill soon after the July 4 recess. And he welcomes further dialog while finalizing the language.
There's absolutely nothing "last gasp" about the United States Senate realizing that if they don't restore the integrity of the US Patent system, this country is in big trouble....
the Senate Bill restoring injunctive relief is already in committee, I expect the 101 reform bill to follow, probably after the Summer recess.
What's "whopper" about a possible Senate bill to repeal Alice 101?
The Senate already has a submitted bill in comittee to restore injunctive relief to patent owners.
The tide is shifting....and its about time
United States: Legislators Propose Framework To Reform Patent Eligibility Under Section 101
Last Updated: July 22 2019
Article by Tryn T. Stimart and Jean E. Dassie
Gibbons P.C.
On April 17, 2019, Senators Chris Coons and Thom Tillis, and Representatives Doug Collins, Hank Johnson, and Steve Stivers unveiled a framework to reform 35 U.S.C. §101. Section 101 of the Patent Act currently makes patentable "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Although the statute is relatively permissive, courts have limited patentable subject matter beyond the statutory mandate by creating judicial exceptions. Under these exceptions as articulated in Alice Corp. v. CLS Bank International, "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." The proposed framework seeks to address these exceptions to patent eligible subject matter through statute versus an ever-growing list of case law.
Under the lawmakers' proposed framework, reformed Section 101 would:
Keep existing statutory categories of process, machine, manufacture, or composition of matter, or any useful improvement thereof.
Eliminate, within the eligibility requirement, that any invention or discovery be both "new and useful." Instead, simply require that the invention meet existing statutory utility requirements.
Define, in a closed list, exclusive categories of statutory subject matter which alone should not be eligible for patent protection. The sole list of exclusions might include the following categories, for example:
Fundamental scientific principles
Products that exist solely and exclusively in nature
Pure mathematical formulas
Economic or commercial principles
Mental activities
Create a "practical application" test to ensure that the statutorily ineligible subject matter is construed narrowly.
Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.
Statutorily abrogate judicially created exceptions to patent eligible subject matter in favor of exclusive statutory categories of ineligible subject matter.
Make clear that eligibility is determined by considering each and every element of the claim as a whole and without regard to considerations properly addressed by 35 U.S.C. §§102, 103, and 112.
The bipartisan proposed patent reform is intended to promote innovation, with particular attention to inventions in the life sciences. According to Senator Coons, "U.S. patent law [currently] discourages innovation in some of the most critical areas of technology, including artificial intelligence, medical diagnostics, and personalized medicine." "[L]eaders in the fields of biologics research and diagnostics will deliver the cures of tomorrow," Representative Stivers added, "only...if we can protect those innovations with the patent protection that rewards the risks and investment necessary to discover the next great idea." Legislators Coons, Tillis, Collins, Johnson, and Stivers are now soliciting feedback on the proposal and encourage stakeholders to email IntellectualProperty@tillis.senate.gov.
Gibbons will continue to monitor proposed changes to 35 U.S.C. §101, particularly as they affect life science companies.
Legislators Propose Framework To Reform Patent Eligibility Under Section 101
ATTENTION ALL VPLM SHAREHOLDERS.
IF YOU HAVEN'T BEEN NOTIFIED BY IR, AN AMICUS BRIEF WAS FILED WITH THE FEDERAL CIRCUIT IN SUPPORT OF OUR APPEAL OF THE DISMISSAL IN THE DISTRICT COURT, BASED ON 101.
HERE IS A LINK TO THAT EXCELLENT BRIEF.
https://docs.wixstatic.com/ugd/768c4e_fb042ad5595d46f09526092b480aca2d.pdf
IMPORTANT READ FOR ALL VPLM SHAREHOLDERS
Congress Releases Draft Patent Eligibility Legislation
28 May 2019 PharmaPatents Blog
Authors: Courtenay C. Brinckerhoff
Congress has taken an important step along the road to reforming patent eligibility law. As announced in this press release, Senators Tillis (R-NC) and Coons (D-DE) and Representatives Collins (R-GA-9), Johnson (D-GA-4) and Stivers (R-OH-15) have released a “bipartisan, bicameral draft bill” that would revise 35 USC § 101 and eliminate the current role of “judicial exceptions.” While patent reform often is a two-steps-forward-one-step-back process, any Congressional action on this issue may be seen as a step in the right direction.
The Draft Patent Eligibility Legislation
The draft bill would make the following changes to the Patent Act:
In 35 USC § 100, subsection (k) would be added:
(k) The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.
35 USC § 101 would be rewritten as follows:
(a) Whoever invents or discovers any useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) Eligibility under this section shall be determined only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation.
The bill also would amend 35 USC § 112(f) as follows:
(f) Functional Claim Elements — An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The draft also includes the following “Additional Legislative Provisions” that reflect the “guiding principles” and “framework” we previously summarized in this article:
The provisions of section 101 shall be construed in favor of eligibility.
No implicit or other judicially created exceptions to subject matter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated
The eligibility of a claimed invention under section 101 shall be determined without regard to: the manner in which the claimed invention was made; whether individual limitations of a claim are well known, conventional or routine; the state of the art at the time of the invention; or any other considerations relating to sections 102, 103, or 112 of this title.
Two Steps Forward Or One Step Back?
The Additional Legislative Provisions would undo the Supreme Court and Federal Circuit case law that has so drastically changed the patent eligibility landscape over the past decade. While many stakeholders—present author included—believe the courts have taken § 101 too far, others surely will disagree that “all cases establishing or interpreting [judicial] exceptions to eligibility” should be wiped away. Also, although Senator Tillis is quoted in the press release as describing the draft legislation as a way “to restore integrity, predictability, and stability to our nation’s patent system,” it likely will take some time—and many court decisions—before the new definition of “useful” in new § 100(k) has a predictable and stable meaning.
Please explain this undecipherable post....
Amicus briefs are legal documents filed in appellate court cases by non-litigants with a strong interest in the subject matter. The briefs advise the court of relevant, additional information or arguments that the court might wish to consider. A well-written amicus brief can have a significant impact on judicial decision-making. Cases are occasionally decided on grounds suggested by an amicus, and decisions may rely on information or factual analysis provided only by an amicus.
Here is an example of how Amici are badly needed in reviewing 101 Judicial exceptions by lower Federal Courts
Request for Amici: Tell the Supreme Court to Clarify Section 101
By Bill Abrams & Rich Black
April 2, 2019
“Unlike many of the patents struck down on Section 101 grounds, the patent at issue has already withstood extensive challenges at the U.S. Patent and Trademark Office’s Central Reexamination Unit, Patent Trial and Appeal Board, and in the Federal Circuit.”
On March 8, Foster Pepper filed a petition for certiorari with the Supreme Court, case number 18-1199, challenging the Federal Circuit’s emerging “physical realm” test as part of its Alice/Section 101 analysis. Amicus briefs in support of our cert petition are most welcome to assist the Court’s understanding of why it is important to grant cert and clarify the correct patent eligibility test for computer-implemented inventions. We are also seeking amicus brief writers for the many amici we have already secured. These efforts will help clear up the uncertainty innovators and patent holders face in cutting-edge fields of our modern economy and, as a result, help drive innovation forward.
The case addresses recent Supreme Court, Federal Circuit, and trial court decisions interpreting Section 101 of the Patent Act in a manner that invalidates any computer-implemented patents based on the conclusion that computer-implemented inventions involve patent-ineligible “abstract ideas.” The Federal Circuit held that the patent of our client, InvestPic, was an “abstract idea” because it did not involve “physical realm” innovation. The patent otherwise met all the statutory criteria of novelty, utility, non-obviousness, and written description.
The past several years’ worth of rulings on Section 101 have created uncertainty about whether innovation in computer-reliant fields is eligible for patenting. The current trend in the courts appears to be against allowing patents for computer-implemented technology, which could jeopardize the patent portfolios of individuals, companies, and institutions that innovate in the computer-implemented technology sector. This case presents an opportunity for the Court to clarify how its patent-eligibility test applies to computer-implemented inventions. Clarification, whether in favor of our client or not, will provide much-needed certainty for innovators and patent owners.
A Solid Test Case
This case also warrants review because the Federal Circuit used the case to impose its own “physical realm” test, which is not based on any precedent under our patent system. The “physical realm” test, which would require inventions to be in the “physical realm” as opposed to the “digital realm,” in order to be patentable, would categorically exclude computer-implemented technology from patentability. Such a test or exclusion has never been endorsed by the Supreme Court. Regardless of whether the Supreme Court ultimately approves or rejects this test, input from the Court would be invaluable to inventors and patent owners working in computer-implemented technology fields. Congress may need to provide additional solutions related to Section 101 of the Patent Act, but the Court can offer needed clarity on this new “physical realm” test now.
Finally, this case is an appropriate test case for the Supreme Court because of the significant prior scrutiny of the invention and patent at issue. This case concerns an invention that meets all the statutory qualifications for patentability. Unlike many of the patents struck down on Section 101 grounds, the patent at issue has already withstood extensive challenges at the U.S. Patent and Trademark Office’s Central Reexamination Unit, Patent Trial and Appeal Board, and in the Federal Circuit. Additionally, the Federal Circuit and many notable experts agree that the invention is highly innovative. Our client InvestPic and one of its principals, Dr. Samir Varma, created a breakthrough data science system for investment analysis. The 2001 Nobel Laureate economist Michael Spence described the InvestPic system as a brilliant and very significant advance in data science technology.
On its second trip to the Federal Circuit (after having been upheld the first time around), the patent was declared ineligible. The Federal Circuit concluded that the inventive components of the invention took place on a computer and determined that the invention was therefore an “abstract idea” because it was not in the “physical realm.” See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (holding the patent invalid because “the focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas—the selection and mathematical analysis of information, followed by reporting or display of the results”). In doing so, the Federal Circuit departed from controlling Supreme Court case law to impose its own eligibility requirements.
Help Us to Fix 101
The Federal Circuit’s “physical realm” requirement will have severely negative consequences for those who represent innovators in fields such as software, quantum computing, artificial intelligence, data science, robotics, finance, cybersecurity, medical diagnostics, computer engineering, or biotechnology. Under this emerging test, all patents that require computer implementation are in danger of invalidation.
We believe that this case is well-positioned to capture the Supreme Court’s interest. The InvestPic patent has narrow and detailed claims directed to a specific and difficult technical solution to a serious problem, unlike some of the notoriously broad patent claims that Section 101 has been used to invalidate. (See, e.g., claims 32-40). Most importantly, the decision below is particularly vulnerable to challenge given its unprecedented expansion of the “abstract idea” doctrine into a “physicality” inquiry.
https://www.ipwatchdog.com/2019/04/02/request-amici-tell-supreme-court-clarify-section-101/id=107892/
All we can do is hope that the Federal Circuit comes to their senses
And your proof of this outlandish statement is....?
WSGR ALERT
Bipartisan and Bicameral Draft Bill Aims to Reform U.S. Patent Subject Matter Eligibility Law
May 31, 2019
Recently, a bipartisan, bicameral draft bill was introduced as part of an ongoing effort to reform U.S. patent subject matter eligibility law. In this alert, we discuss relevant background leading up to the draft bill, the draft bill itself, and actions and events that may shape the scope of reform and likelihood of passage into law.
Background
Starting in 2010, a group of U.S. Supreme Court, and many subsequent Federal Circuit cases, changed how patent subject matter eligibility is determined, and whether certain inventions met the patent subject matter eligibility bar. While the evolving case law on patent subject matter eligibility is nuanced, complex, and fact specific, the changes can be encapsulated by summarizing three Supreme Court cases:
Bilski (2010). Bilski was important for at least two reasons. First, the Bilski Court rejected the long standing Machine-or-Transformation (MOT) test as the sole test for determining patent subject matter eligibility of a process. Under the MOT test, if a process was tied to a particular machine or apparatus, or if the process transformed an article from one state to another, then the process was patent eligible subject matter. Bilski rejected the MOT test as the sole test for patent subject matter eligibility, relegating the MOT test to being instead an important and useful clue.
Second, the Bilski Court determined that patented claims in question were directed to a Court created patent subject matter eligibility exception (i.e., a judicial exception)—in this case an abstract idea—and then held that for this reason these claims were patent subject matter ineligible. Judicial exceptions are laws of nature, abstract ideas, and natural phenomena—sometimes called products of nature or natural products.
Myriad (2013). In Myriad, the Court held e.g., that a naturally occurring DNA segment is a product of nature (a judicial exception) and not patent eligible merely because it has been isolated, but complementary DNA (cDNA) is patent eligible because it is not naturally occurring.
Alice (2014). In Alice, the Court introduced a new two-part test for patent subject matter eligibility to take the place of the earlier rejected MOT test. The two-part test, called the Alice test, first asked if a process claim was directed to a judicial exception. If the answer was yes, the second Alice test prong then asked if the claim contained an inventive concept—that is, additional elements that ensure the claim amounts to something significantly more than claiming the judicial exception.
These three Supreme Court cases, in aggregate, rejected the MOT test for patent subject matter eligibility and replaced the MOT test with a different patent subject matter eligibility test—the Alice test. The cases also made the presence of a judicial exception a central component of determining whether a claim was patent eligible subject matter, and set the stage for broadly interpreting the scope of judicial exceptions. For example, a law of nature need not be something as fundamental as a Newtonian law of motion, but rather more broadly included many correlations found in nature—which has subsequently created opportunities for patent subject matter eligibility challenges to at least some diagnostic, isolated natural product, software, and business methods claims. Finally, these cases, subsequent interpretations of them, and holdings based on these, resulted in some uncertainty whether some claims were, or were not, patent subject matter eligible.
It is worth pointing out that diagnostic tests are the cornerstone of personalized precision medicine; software and algorithms are involved in much of the modern world; many beneficial pharmaceuticals are isolated and purified natural products; and conducting business is central to a strong economy. The evolving patent subject matter eligibility landscape has created uncertainty. Against this backdrop, many have called upon Congress to provide clarity through legislation.
The Draft Bill
The draft bill was introduced based upon “feedback from dozens of stakeholders, industry representatives, and individual inventors.” Senator Tom Tillis (R-NC) stated in part that the draft “represents a true balance that will restore integrity, predictability, and stability to our nation’s patent system, while also preventing the issuance of overly broad patents.” Representative Doug Collins (R-GA) noted we “must reform the patent system to ensure our nation remains number one in innovation.” Congressman Hank Johnson (D-GA) stated, in part that section “101 of the Patent Act is foundational to the patent system, but recent court cases have upset what should be solid ground.” And, Senator Chris Coons (D-DE) noted that “[s]trengthening our intellectual property laws to encourage and reward research and innovation is critical to our leadership in developing cutting-edge technologies and safeguarding our national security.”
The draft bill proposes many changes that, if adopted, would make the patent subject matter eligibility standard more predictable. This, in turn, would be expected to significantly positively impact the patentability of diagnostic, isolated natural product, software, and business method inventions. Proposed changes include:
Requiring that eligibility be determined “only while considering the claimed invention as a whole, without discounting or disregarding any claim limitation”;
Requiring that “the provisions of section 101 shall be construed in favor of eligibility”;
Removing the judicial exceptions—that is, laws of nature, natural phenomena, and abstract ideas—from being used to “determine patent eligibility under section 101”;
Removing “bleed in” from novelty, obviousness, and some other statutory requirements (e.g., written description and enablement) into the patent subject matter analysis; and
Abrogating all cases establishing or interpreting those exceptions to eligibility.
Future Actions
On June 4, 5, and 11, the Senate Judiciary Subcommittee on Intellectual Property plans to hold hearings regarding the state of patent subject matter eligibility in the U.S.
Conclusion
Less than two percent of all bills become law. This draft bill may stand a higher chance of being introduced and becoming law because of the number of stakeholders who were consulted, and because of its bipartisan and bicameral support. The draft bill represents a possibility for patent subject matter eligibility legislative reform. However, there is relatively strong opposition to the draft bill as well.
Accordingly, interested parties can attend the June hearings. Interested parties may also contact their representatives and senators to provide input.
WSGR will continue to monitor the evolving legislation, and provide updates as warranted. For information on patent subject matter eligibility, or any patent related question, please contact Vern Norviel, Lou Lieto, Mike Hostetler, Matt Bresnahan, Ali Alemozafar, Maya Skubatch, or any member of WSGR’s patents and innovation strategies group.
Charles Andres and Prashant Girinath contributed to the preparation of this WSGR alert.