The Patent Trial and Appeal Board (PTAB) will continue to crush software patents in the foreseeable future

Summary: Ahead of our in-depth coverage of US Supreme Court (SCOTUS) decisions, a quick roundup of recent patent cases and developments, including the push against Alice

THE USPTO is updating some of its guidelines in lieu with last week's Supreme Court decisions. We'll cover that separately later. Some patent lawyers hope that guidelines will also be changed in lieu with last month's (or February's) CAFC decision/s. The thing about such a change, however, is often overlooked by the patent microcosm; it is actually not final.

Michael Borella wrote about cases when a "claim fails to meet the requirements of 35 U.S.C. ۤ 101." This is what he said about a week ago:

The second part of the patent-eligibility test of Alice Corp. v. CLS Bank Int'l involves an inquiry into whether certain elements of a claim directed to an unpatentable judicial exception are "well-understood, routine, and conventional." If this is the case, the claim fails to meet the requirements of 35 U.S.C. ۤ 101. If not, the claim clears the ۤ 101 hurdle. Since Alice, this determination has been largely treated as a matter of law.

There's great hope among patent maximalists that the Berkheimer case will change everything, but that's wishful thinking (for the most part). First of all, CAFC rarely changes underlying laws and rules, unlike the Supreme Court. Sure, it can be cited (its pertinent decisions), but the impact/weight of CAFC decisions is lessened by this court's volume of decisions on patents. For every single ruling that patent maximalists like there may be a dozen or more decisions/opinions they do not like and simply try to ignore. Since Berkheimer there has been virtually nothing of interest to patent maximalists. It has been a 'dry springtime' for them. Later on when we write about Oil States we'll show that they're still in 'damage control' mode. CAFC notwithstanding, Justices stand firm behind PTAB, which applies Alice/ۤ 101 to invalidate many abstract patents, notably software patents. Here's another example worth noting:

The court granted plaintiff's motion for summary judgment that the asserted claims of its dietary supplement patent did not encompass unpatentable subject matter and found that the claims were not directed toward a natural phenomena.

The district court, in assessing a case against Zhejiang Medicine, says "[t]hat the asserted claims rely on the ability of certain microorganisms to produce reduced CoQ[10] at a ratio greater than 70 mole % among the entire coenzymes Q[10] under standard culturing conditions does not indicate the claims are 'directed to' this phenomenon."

This is actually more about medicine than anything like software.

In other news, in Acantha LLC v DePuy Orthopaedics, Inc. et al (not covered here before, it's about surgical technique guides), ۤ 287 is being invoked. It's about damages, not infringement:

The court granted defendants' motion for summary judgment to limit plaintiff's damages for failing to mark its surgical products through its licensee's surgical guides.

In Dyson, Inc. et al v SharkNinja Operating LLC et al it seems clear that shoddy design patents aren't quite being tolerated, which is good news. To quote a summary of the latest development (not decision yet):

The court granted defendants' motion for summary judgment of noninfringement of plaintiffs' vacuum cleaner design patents and rejected plaintiffs' argument that the ordinary observer test may be satisfied with a "quick glance" to determine "the same basic shape."

It's about designs; we don't believe such things merit patents because trademarks and copyrights already cover such things (to a certain extent). How about patents on GUIs, which generally accompany code? Haseltine Lake LLP, which we recently mentioned here in relation to EPO appeals [1, 2] ("Confidence in European Patents (EPs) is Eroding"), has just published this article by Caroline Day. It's about the EPO:

In November last year, the EPO updated the Guidelines for Examination in relation to presentations of information, which includes Graphical User Interfaces (GUIs) (see sections G-II, 3.7 and 3.7.1). This provides a useful consolidation of their current approach to such inventions.

As will be familiar to users of the EPO, when assessing patentability of patent applications in this area, the claimed subject-matter is considered as a whole to determine if it has technical character and is thus not excluded from patentability. Only once this test is passed is the application examined in respect of the other requirements of patentability, in particular novelty and inventive step. However, only those features which, in the context of the invention, contribute to producing a technical effect serving a technical purpose can be used to support inventive step.

The new Guidelines confirm that a presentation of information that credibly (i.e. objectively, reliably and causally) assists the user in performing a technical task by means of a continued and/or guided human-machine interaction process may be seen as having a technical effect.

We have almost lost hope in denial of software patents at the EPO, seeing that the management merely attempts to rebrand or rename software patents in order to carry on issuing them.

In other cases of interest, the patents-hostile Kinsella has this new episode about "Argumentation Ethics and Estoppel" (a concept we mentioned some months ago). The show's summary:

I was a guest last night on Punching Left, with hosts Clifton Knox and David German, discussing argumentation ethics, estoppel, covenant communities, the non-aggression principle, physical removal, Hoppe, Propertarianism, Curt Doolittle, Austin Peterson, and so on.

Kinsella no longer focuses only on patents, but the bringing up of estoppel is noteworthy. It was mentioned by Patently-O several days ago when it wrote:

In EVE-USA v. Mentor Graphics, petitioner raises two important questions of patent law involving assignor-estoppel and damage apportionment respectively. Here, EVE-USA was founded by former Mentor employee-inventors.

We wrote about this case before. It serves to highlight certain injustice when it comes to patent assignments for "employee-inventors". It's basically the large corporations that derive all the power from the current patent system, not so-called 'inventors'.

Speaking of which, how about when someone with a patent is accused of "Patent Infringement Through American Subsidiary for Personal Gain"? Such is the case noted by Watchtroll the other day:

On March 30th, Japanese gaming firm Universal Entertainment Corporation (TYO:6425) filed a complaint alleging patent infringement and other claims against Las Vegas, NV-based entity Aruze Gaming America as well as Kazuo Okada, the founder of Universal Entertainment (UEC) and the sole shareholder and director of Aruze Gaming. The suit, filed in the District of Nevada, alleges that Okada directed patent infringing activities of Aruze while he was also an officer with UEC.

[...]

This infringement was allegedly made possible by defendant Okada’s usurpation of corporate opportunities, according to UEC’s complaint. After founding UEC in 1972, Okada served as its Representative Director (Japanese law equivalent to Chief Executive Officer) through September 2004. Between January 2006 and June 2017, Okada served UEC as Chairman of its Board of Directors. In the two years between June 2008 and June 2010, UEC underwent a corporate restructuring that wound up with Okada being placed in charge of UEC’s foreign businesses, including those in the U.S.

This basically boils down to somewhat of a software (or game) patent -- a subject we covered here as recently as last week (not the case of Okada but a similar one). ⬆