Patent Law Practice Center

Supreme Court says IPR is constitutional

On the morning of Tuesday, April 24th, the U.S. Supreme Court issued a decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC  that upheld the constitutionality of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). The Supreme Court applied the public rights doctrine to the government’s grant of a patent, finding that patent validity trials need not take place in an Article III court nor did they violate the Seventh Amendment, which ensures a person’s right to a jury trial. The majority opinion was authored by Justice Clarence Thomas. Justice Neil Gorsuch authored a dissent to which Chief Justice John Roberts concurred.

Justice Thomas’ majority opinion starts off by noting that Congress has authorized administrative processes at the U.S. Patent and Trademark Office to reconsider and cancel patent claims decades prior to the enactment of the Leahy-Smith America Invents Act (AIA) of 2011, the law which created IPRs and other post grant proceedings at the PTAB. Notably, Congress created ex parte reexamination proceedings in 1980 and the Court noted that those proceedings continue today. Congress also created inter partes reexamination in 1999, though those proceedings were phased out with the enactment of the AIA.

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Federal Circuit Says Veterinarian’s Suggestion Covered Essential Patent Claim Element

On Thursday, May 3rd, the Court of Appeals for the Federal Circuit issued a decision in In Re VerHoef, a case stemming from a decision by the Patent Trial and Appeal Board (PTAB) to invalidate a patent during an ex parte proceeding on 35 U.S.C. § 102(f) grounds, which governs the patentability of inventions which have been derived from a person who is not listed as an inventor on the patent application. The Federal Circuit panel affirmed the PTAB’s finding that Jeff VerHoef was not the sole inventor of a mobility device for dogs because the device incorporated a suggestion made by a veterinarian working with VerHoef’s dog.

The patent application at issue in this appeal is U.S. Patent Application No. 20130152873, titled Dog Mobility Device and claiming priority to a patent application filed in December 2011; this patent application is subject to pre-America Invents Act Section 102(f). That patent application lists VerHoef as the sole inventor. In an affidavit, VerHoef stated that he had developed the mobility harness covered by the ‘873 patent application, which assists with a dog’s movement of his hind legs, after his dog Reilly had difficulty walking after a surgical operation.

VerHoef worked with a veterinarian, Dr. Alycia Lamb, to provide rehabilitative therapy for Reilly around the same time that VerHoef was working on the mobility device. VerHoef had previously acted on Dr. Lamb’s suggestion to purchase a commercially available harness to support Reilly’s hind leg, but this device caused Reilly to place the leg’s weight on his knuckles instead of his toes. VerHoef recognized that a harness connected to Reilly’s toes would solve the problem and discussing this issue with Dr. Lamb, the vet suggested a strap configured with a figure 8 structure to engage the toes might solve that problem. Incorporating the figure 8 design into the mobility device, VerHoef filed a patent application listing himself and Dr. Lamb as co-inventors. That relationship soured and VerHoef filed the ‘873 patent application on the same day that Dr. Lamb filed a substantially similar patent application listing herself as the sole inventor.

The examiner of VerHoef’s patent application issued a Section 102(f) final rejection after VerHoef submitted his affidavit because the examiner found that VerHoef did not invent the claimed subject matter. On appeal to the PTAB, the Board affirmed the examiner’s decision, finding that the figure 8 loop was an essential element of the invention and finding that VerHoef didn’t maintain “intellectual domination” over the inventive process. During oral arguments on appeal to the Federal Circuit, counsel for VerHoef argued that, while Dr. Lamb did provide the suggestion on the figure 8 loop, VerHoef maintained the work of making the invention and the mere suggestion from Dr. Lamb did not automatically raise her to the level of joint inventor.

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USPTO issues patent eligibility guidance

The Federal Register Notice signed by Director Iancu on April 18, 2018, which relates to the Federal Circuit’s recent decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), officially published on Friday, April 20, 2018. It is good news for patent owners with computer-implemented inventions and promises to bring a much more structured prosecution pathway.

“The USPTO has issued today a Federal Register notice and memorandum to the patent examining corps in response to a recent decision by the U.S. Court of Appeals for the Federal Circuit in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), pertaining to subject matter eligibility,” explained Paul Fucito, a spokesman for the United States Patent and Trademark Office in the Office of Communications. “This new guidance pertains to the second step of the Alice-Mayo framework for determining subject matter eligibility, and is focused on how examiners are to analyze and document a conclusion that a claim element is ‘well-understood, routine, conventional’ during the patent examination process.”

Berkheimer is obviously an important and helpful decision from the patentee’s perspective. The Federal Register Notice appears to also be quite helpful as well. Read the rest of this entry »

Supreme Court decides Oil States

The United States Supreme Court recently decided  Oil States v. Greene’s Energy, which asked whether post-grant challenges to issued patents at the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) are constitutional under Article III and the Seventh Amendment of the U.S. Constitution. In a 7-2 decision, the Court found that inter partes review (IPR) challenges are constitutional.

The Trump Administration argued that patents are a government franchise, and that is, in fact, what the Supreme Court ruled. Indeed, Justice Thomas, writing for the majority, said that all inter partes review involves is “reconsideration of the Government’s decision to grant a public franchise.” Thus, patents are not property rights despite what the statute says to the contrary, and despite the fact that the Supreme Court themselves have ruled to the contrary previously.

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Director Iancu delivers first policy speech at U.S. Chamber of Commerce

On April 19, 2018, the Global Intellectual Property Center (GIPC) of the United States Chamber of Commerce hosted a symposium titled Investing in American Innovation: Is the U.S. Patent Environment Promoting or Limiting Investment? The first speaker of the day, the keynote speaker, was USPTO Director Andrei Iancu, who in an important policy speech, told those gathered at the U.S. Chamber of Commerce that the U.S. patent system is at an inflection point, and that the nation cannot continue down the path we are currently on if we as a nation want to remain economically successful.

“We will not continue down the same path,” Iancu pledged emphatically during what can only be described as a major policy speech that gives an important look into what the new Director thinks on a variety of issues.

“The patent grant is less reliable today than it should be. This onslaught has come from all directions,” Iancu explained. “The rhetoric has focused on certain abuses instead of the incredible benefits the system brings.”

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