Lots of Support at Patent Office Three Track Public Meeting

Written by Gene Quinn (of IPWatchdog.com and Practice Center Contributor)

[Tuesday] the United States Patent and Trademark Office held a public meeting on the so-called Three Track examination proposal, with everyone in agreement that the proposal is quite welcome, at least in principle.  On June 4, 2010, the USPTO published a Notice in the Federal Register setting out the preliminary Three Track proposal and setting Tuesday, July 20, 2010 as a date for the public to come to the Alexandria, Virginia campus to let PTO Officials hear their thoughts.  This public meeting proceeds the due date of written comments by a full month, and many of those who spoke explained they would continue to review the proposal and follow up with additional written comments.  For more information on the specifics of the proposal please see USPTO Announces New Examination Rules.

One thing can be said definitively: everyone thinks it is a good idea, no one has issues with accelerating applications (Track 1) or allowing them to remain on course as today (Track 2), but there were numerous concerns raised about applicants slowing applications down (Track 3).  The good news for the PTO, however, is that speaker after speaker highlighted the same or similar concerns, so it does appear as if there are a finite set of manageable considerations for the PTO to address.  In fact, the senior PTO Officials that I spoke with after the public meeting were extremely pleased and quite grateful.  I was told by one senior PTO Official that the points raised were all good and that the PTO intends to take them into consideration and address the concerns, along with whatever written feedback they receive.  What a refreshing change that will be! (more…)

More on the Bilski Decision….

I just finished watching IPWatchdog give a live analysis of the Bilski decision on USTREAM.  Here are some more of Gene Quinn’s thoughts on the Decision….

— “The Majority relied on a common meaning of processes when deciding that processes could be patentable, but clearly said the machine-or-transformation test could not be the only test.”

— “All nine justices agreed that an “abstract idea” is unpatentable. I don’t see where in the opinion the Court really defines what is an upatentable abstract idea.” (**read more about abstract ideas below)

— “We don’t have a new test from the Supreme Court.  The Court did what it has done before… telling the Federal Circuit you got it wrong, go back and figure it out.  We clearly need more definition from the Federal Circuit as to what is patentable.”

–Quinn concluded “Pure business methods are in trouble.  But, if you write a good quality application that deals with software where there is a tangible element or some kind of physical structure, you’ll be good to go.”

–“I’m afraid the Decision raises more questions than it answers.”

For more on the Bilski decision, tune in on Wednesday, June 30th, at 1:00 pm for  PLI’s Hot Topic Briefing: Bilski v. Kappos: The Supreme Court Rules on Patentable Subject Matter where an expert panel including Scott M. Alter of Faegre & Benson LLP and Douglas R. Nemec of Skadden, Arps, Slate, Meagher & Flom LLP, co-chairs of PLI’s 4th Annual Patent Law Institute, Gene Quinn, patent attorney blogger and a principal lecturer in the PLI Patent Bar Review course and John M. White, PLI’s Director of Patent Professional Development as they discuss the implications of the decision, and what it may mean for your practice or your company. (more…)

Supremes Decide Bilski: Machine or Transformation Not the Only Test, Bilski Not Patentable

Written by Gene Quinn (IPWatchdog and Practice Center Contributor)

Bilski v. Kappos has finally been handed down by the United States Supreme Court, in what has become the most highly anticipated patent decision of all time. The questions presented to the Court for consideration were: (1) whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter; and (2) whether the machine or transformation test contradicts Congressional intent (pursuant to 35 U.S.C. 273) to allow for business methods to be patented.

The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter. Delivering the opinion for the Court was Justice Kennedy.  There were no dissents, only concurring opinions, which is in and of itself a little surprising, at least at first glance until you realize that the Justices all agreed Bilski’s invention ought not to be patentable, but some, such as Justices Stevens and Breyer would have found all business methods unpatentable.  In any event, Kennedy explained that the Federal Circuit decision ignored well established rules of statutory interpretation, and further explained that there is no ordinary, contemporary common meaning of the word “process” that would require it to be tied to a machine or the transformation of an article. Nevertheless, the machine or transformation test may be useful as an investigative tool, but it cannot be the sole test. (more…)

The Plot Thickens in Apple Patent Battle with HTC

By Gene Quinn (of  IPWatchdog.com and Patent Center Contributor)

There has been yet another development in what is fast shaping up to be an epic patent battle between Apple Inc.(NASDAQ: AAPL) and High Tech Computer Corp.(PINK:HTCCF) (aka HTC Corp.), HTC (B.V.I.) Corp, HTC America, Inc. and Exeda, Inc. (collectively referred to as HTC).  On Monday, June 21, 2010, Apple filed yet another complaint against HTC in the United States District Court for the District of Delaware.  On March 2, 2010, Apple, Inc.  filed two lawsuits against HTC Corp., alleging that HTC infringes some 20 Apple patents related to the iPhone’s user interface, underlying architecture and hardware.

The latest Apple complaint continues to allege direct infringement of Apple patents, this time four separate patents.  The complaint also alleges indirect infringement; specifically contributory infringement and inducement to infringe.  The patent asserted by Apple are US Patent No. 7,282,453 (Count I); US Patent No. 7,657,849 (Count II); US Patent No. 6,282,646 (Count III) and US Patent No. 7,380,116 (Count IV).  The ‘453 patent and the ‘849 patent were both asserted previously by Apple (see what I have previously referred to as the second complaint filed March 2, 2010).  It appears as if they are added here due to recently issued Certificates of Correction.  The ‘646 patent and the ‘116 patent were not previously asserted in either of the two complaints filed March 2, 2010 in the District of Delaware.

Read the entire article at IPWatchdog.com

Bilski v. Kappos: A Recap Before Decision Day


As the entire patent community waits with bated breath for the Bilski decision, it seems like the perfect time to recap the course of events that have brought us here.  Yesterday, IPWatchdog had a guest blogger, Robert M. Suarez, who did just that in his article, “Mr. Bilski Goes to Washington: An Abridged Guide.”  It is an excellent summary of the Bilski case.  

Before he offers his guide to the case, Suarez writes, “For all of the opinions, articles, and conjecture, all one need do is study the law and look at the precedents to know that anticipating how the Supreme Court will rule in a case is akin to trying to gaze into a crystal ball. So, what will be the future of business methods as patent-eligible subject matter? Will the machine-or-transformation test stand? What will be the fate of the Bilski patent? An educated guess is the best that one can hope for in this situation.” 

Well said Suarez!! (more…)