THE USPTO has been coming under greater scrutiny for patent scope as of late. Even branches of the government [1, 2] have chastised the Office for abandoning patent quality in favour of greater profits -- the same error which many patent offices are tempted to make for short-term gains. David Kappos was a terrible Director at the Office and now he is a corporate lobbyist for software patents in the US because Alice, which came to the Supreme Court after he had departed, effectively ended a lot of software patenting. This post is an outline of several of the latest developments in this area, gathered over the past week as part of our ongoing 10-year (almost decade-long) research.
Following Cuozzo, I largely wrote-off GEA Process (“GPNA”) v. Steuben as having any chance for certiorari. However, the petitioner’s newly filed reply brief offers an opportunity for revival.In another (probably last) article in this series about PTAB and IPRs, Patently-O said that "[i]n a timely motion, Aqua moved to amend three of the claims to include the limitations found in the non-instituted claims. (In particular, the patentee asked to substitute claims 1, 8, and 20 with claims 22-24 respectively. The PTAB agreed that these new claims satisfied the formal requirements of Section 316(d), but refused to enter the amendment – finding that the patentee’s motion had failed to show that the substitute claims were distinguishable over the prior art." Good. So the PTAB staff has a backbone and unlike the examiners of the USPTO, there's no overt bias in favour of granting (even if in doubt). Strictness would serve the USPTO in the long run as it can help enforce/reintroduce the perception of patent quality, suggesting that it is being improved and things are being tightened or cleaned up retroactively as well. According to this new article titled "Has Rochester lost its patents edge?" -- an article which was published a couple of days ago -- "patents granted to Rochester-area inventors fell by 21 percent last year, from 1,537 to 1,217."
In its decision on an IPR appeal, the Federal Circuit held that it lacked jurisdiction to review claims that the PTAB exceeded the PTO’s statutory authority by “terminating and vacating five instituted and near-final IPR proceedings, without determining patentability vel non as Congress had intended.”
"The law in this area swings back and forth," said Justin Petruzzelli, a patent lawyer and partner with the Rochester firm Rossi, Kimms and McDowell. He points to a 2014 case, Alice Corporation v. CLS Banking, where the Supreme Court laid out the criteria for computer-related inventions to be considered patent eligible.
"Some of the drop we've seen is from uncertainty created by the Alice decision," Perruzzelli said, "and perhaps an overreaction on applying for patents related to software and business methods."
Electric Power Group LLC v. Alstom S.A., 2015-1778 is a precedential case from the U.S. Court of Appeals for the Federal Circuit that holds that claims directed to collecting and presenting information from a power grid, though “lengthy and numerous,” “do not go beyond requiring the collection, analysis, and display of available information in a particular field.” Rather, the claims state “those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology. The claims, defining a desirable information-based result and not limited to inventive means of achieving the result, fail under ç101.”
"Thankfully, PTAB is working at an accelerated pace to undo the damage, much to the fear of the patent microcosm which dubbed PTAB "death squads" (as if patent quality assessment is the moral equivalent of mortal execution)."In Patently-O, another new article (this one by Jason Rantanen for a change) speaks about the Court of Appeals for the Federal Circuit (CAFC), which brought software patents to the US in the first place. Patently-O also refers to Halo [1, 2, 3] and reminds us that one possible takeaway from Halo v Pulse (not a CAFC case but a SCOTUS case) is that we should never read patents as more damages would be incurred as a result of that (article by Dennis Crouch). "On remand," he notes, "the district court will be hard-pressed to find that the infringement was not willful – based upon the apparently unchallenged verdict. Still, it will be within the district court’s discretion to decide whether the willfulness warrants enhanced damages under Section 284. If enhanced damages are warranted, the district court must then determine how much to award (with an upper limit of treble damages)."
If one embraced a policy of not reading any patents, then proving lower liabilities and compellingly demonstrating this (by citing the policy) would be simple. Here is MIP's new article about Halo v Pulse. "The Federal Circuit directs district court to decide whether "an enhancement of the damages award is warranted" in Halo v Pulse," the summary says. Had they not bothered with reading any patents at all, they would be better off for sure.
Another last Patently-O article speaks of indefinteness and notes that "the Federal Circuit has affirmed that Icon’s asserted patent claims are invalid because they “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Although indefiniteness is a question of law subject to de novo review, the starting point of that review is almost always the district court opinion – thus the court here looked for errors in the district court decision. That is especially true here where the district court decision was based in part on underlying factual conclusions that receive deference under Teva."
Putting it in simpler terms, scope of a particular patent (how much it covers, breadth of coverage) plays an important role, not just patent scope in its own right. It sure looks like poor quality control at the USPTO left a horrible legacy where many patents are simply unfit for purpose (too broad or too abstract, even not novel). Thankfully, PTAB is working at an accelerated pace to undo the damage, much to the fear of the patent microcosm which dubbed PTAB "death squads" (as if patent quality assessment is the moral equivalent of mortal execution). ⬆