On Thursday, February 23, 2017, the United States Court of Appeals for the Federal Circuit granted a mandamus petition filed by Google, and ordered a Texas federal court to transfer a patent infringement case to a federal court that covers Silicon Valley, as requested by Google. See In re: Google Inc. This extraordinary remedy was delivered in the form of a non-precedential opinion authored by Chief Judge Prost and joined by Judge Lourie. Despite the Federal Circuit’s designation of the decision as non-precedential, the Court should be prepared for the onslaught of mandamus petitions that will now be filed given that they have shown a willingness to step in and re-weigh transfer factors de novo.
This petition for writ of mandamus arose out of a patent infringement suit brought by Eolas Technologies, Inc. against Google and various other defendants involving U.S. Patent No. 9,195,507. On the day this lawsuit was filed against Google, Eolas also filed two related suits in the same district, accusing various Walmart and Amazon entities of infringement. The Walmart and Amazon entities, like Google, sought transfer to the Northern District of California under 28 U.S.C. § 1404(a) for convenience. Weighing the relevant transfer factors, the district court concluded that the Northern District of California was not clearly a more convenient forum than the Eastern District of Texas.
The Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has issued a decision in the CRISPR patent interference pending between The Broad Institute, Inc. (the Junior Party; second filer) and The Regents of the University of California (the Senior Party; first filer). The dispute is related to U.S. Patent Nos. 8,697,359; 8,771,945; 8,795,965; 8,865,406; 8,871,445; 8,889,356; 8,895,308; 8,906,616; 8,932,814; 8,945,839; 8,993,233; 8,999,641; and U.S. Patent Application Serial No. 14/704,551.
The PTAB, in a per curiam decision, wrote:
Broad has persuaded us that the parties claim patentably distinct subject matter, rebutting the presumption created by declaration of this interference. Broad provided sufficient evidence to show that its claims, which are all limited to CRISPR-Cas9 systems in a eukaryotic environment, are not drawn to the same invention as UC’s claims, which are all directed to CRISPR-Cas9 systems not restricted to any environment. Specifically, the evidence shows that the invention of such systems in eukaryotic cells would not have been obvious over the invention of CRISPR-Cas9 systems in any environment, including in prokaryotic cells or in vitro, because one of ordinary skill in the art would not have reasonably expected a CRISPR-Cas9 system to be successful in a eukaryotic environment. This evidence shows that the parties’ claims do not interfere. Accordingly, we terminate the interference.
At the end of February, the United States Supreme Court requested a response from Michelle K. Lee, Director of the United States Patent and Trademark Office (USPTO), related to the petition for writ of certiorari filed by Oil States Energy Services, LLC, Petitioner, against Greene’s Energy Group, LLC, et. al. The dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB).
There are three questions presented by Oil States in the petition for writ of certiorari:
- Whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
- Whether the amendment process implemented by the PTO in inter partes review conflicts with the Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S.Ct. 2131 (2016), and congressional direction.
- Whether the “broadest reasonable interpretation” of patent claims – upheld in Cuozzo for use in inter partes review – requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent’s specification.
In early February 2017, Congressman Gary Palmer (R-AL) and Senator Mike Lee (R-UT)(shown left) introduced the Agency Accountability Act of 2017 (AAA) in both the House of Representatives (HR 850) and the Senate (S. 299), respectively. The AAA is a bill that would direct most fines, fees, and other unappropriated proceeds to the Treasury, making them subject to the appropriations process.
Senator Lee and Congressman Palmer explained that the Agency Accountability Act is designed to reestablish Congressional authority over agencies. Palmer and Lee believe that at least some agencies have been spending money on programs that Congress has not approved.
Today, most computer innovations relate to software, at least in some important ways, and the USPTO continues to issue at least some patents for software-related inventions. No one seriously believes software will become patent ineligible per se, although it is undeniable that there is now a much steeper hill to climb than there once was. The trick is to define the invention as providing a technological solution to a technological problem. See A Guide to Software Patents and Software Patent Eligibility at the Federal Circuit.
For now, there has been no definitive statement by the Supreme Court that software is, in fact, patent eligible, although the Court has recognized at least some software-related innovation as being patent eligible. See Diamond v. Diehr. The Supreme Court also continues to consider the invention at issue in State Street Bank to be patent eligible, even if the “useful, concrete and tangible result” test does not live on.