01.26.17

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The United States Has Just Made It Even Harder to Appeal PTAB Decisions (Usually to Invalidate Software Patents)

Posted in America, Patents at 7:58 am by Dr. Roy Schestowitz

Keep clean

Summary: The US cleanup operation, which involves weakening if not trashing abstract patents (notably software patents), culminates in reluctance by the Federal Circuit to review PTAB decisions

Marks & Clerk, the legal firm that promotes software patents (even where it is not legal) and said that pursuing such patents at the European Patent Office (EPO) is now easier than at USPTO, has a new article about the EPO. It’s about invalidation of patents based on technicality criteria:

Patenting of non-technical systems not ‘taking off’ at the EPO and late filed requests not taken ‘on board’

It is a situation many passengers will be familiar with: sitting on an aeroplane, fuelled up and ready to taxi to the runway, and the pilot announces a delay for reasons outside their control. This frustrating experience is one which the system of aircraft flow management in the patent EP1428195 under appeal at the European Patent Office (EPO) in T-497/11 sought to address. In this case, the Board of Appeal had to decide whether the system as claimed provided an inventive step over the prior art, as well as deciding if late filed requests should be admitted. The appellant (patent proprietors) requested that the decision of the Opposition Division to revoke the patent on grounds of, amongst others, exclusion from patentability (Art 52(2) EPC) be set aside and that the patent be maintained.

As readers of us would know too well, the US trashed so many software patents that we have lost count. We estimate the number to be thousands and by extension — if all patents were to be reassessed (e.g. by a court or a panel) — we expect that hundreds of thousands of patents are now toothless. They’re worse than unusable because trying to sue with them would only be costly to the plaintiff, never mind the defendant.

“As readers of us would know too well, the US trashed so many software patents that we have lost count. We estimate the number to be thousands and by extension — if all patents were to be reassessed (e.g. by a court or a panel) — we expect that hundreds of thousands of patents are now toothless.”We have already mentioned here the other day that the Federal Circuit (CAFC), for a change (a rarity of approximately one in five), disagreed with the Patent Trial and Appeal Board (PTAB). It’s just one of the exceptional cases where CAFC overrules others on the subject of software patents, so obviously the patent microcosm was all over it [1, 2, 3], amplifying the message throughout the week. There is also this other case where the “Federal Circuit announced that not all inter partes review (“IPR”) proceedings at the U.S. Patent Office can be appealed. While anyone can file an IPR petition, not all persons can appeal. For petitioners without standing, i.e., an “injury in fact,” the Patent Office’s Patent Trial and Appeal Board (“PTAB”) is the last and final stop.”

“In simple terms, it means that pursuing and also upholding software patents in the US has become quite an incredible challenge.”There is an IAM “report” about it and some other rants about the same case, e.g. “Petitioner Must Show Actual Injury to Establish Standing to Appeal PTAB Final Written Decision”. To quote: “In this case, the Federal Circuit determined that in its nearly 35-year history, it had not established the legal standard for demonstrating standing in an appeal from a final agency action. The underlying dispute arose from an appeal by Phigenix, Inc. (“Phigenix”) of the Patent Trial and Appeal Board (PTAB) decision that the challenged claims of U.S. Patent No. 8,337,856 (the “’856 patent”), which is assigned to ImmunoGen, Inc. (“ImmunoGen”), were not obvious in view of the prior art. Genentech Inc. (“Genentech”) has an exclusive license to the ’856 patent, which Genentech uses to produce the drug Kadcyla®TM. Phigenix, a research company that focuses on the use of therapeutics designed to fight cancer, does not manufacture any products, but has an intellectual property portfolio that includes U.S. Patent No. 8,080,534 (the “’534 patent”), which Phigenix claims is infringed by Genetech based on its activities related to Kadcyla®TM. After Genentech refused to take a license to the ’534 patent, Phigenix filed a petition for an inter partes review (“IPR”) against ImmunoGen’s ’856 patent. After Phigenix appealed the PTAB’s decision on its IPR petition, ImmunoGen filed a motion to dismiss claiming that Phigenix lacks standing to appeal the PTAB’s decision.”

What needs to be stressed again is that last year, for example, the Federal Circuit agreed with PTAB 77.4% of the time. It now has additional barriers for appeals, while adding no constraints to petitions (IPRs). In simple terms, it means that pursuing and also upholding software patents in the US has become quite an incredible challenge. If it’s perceived to be a monumental task, fewer people or businesses will even bother patenting software (or anything else that falls under Alice-inspired tests). This is basically the most desirable outcome.

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