Legislation & Continued Judicial Feedback

There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and concerns in the months ahead.  Some quick thoughts, predictions, and some odds and ends as we head into the slower summer months.

  • On the 101, side, the proposed legislative framework will be refined over the next few weeks in response to feedback collected from the marathon hearings of a week ago. Senator Coons has promised a revised draft after the July 4th recess. You can expect to see that revision sometime in the month of July (before the Summer Recess (August)).  Revisions will likely include some degree of definition for “technology” as presently defined in the bill, timing provisions on when the 101 and 112 changes would take effect once enacted (i.e., prospective or not), and perhaps a codification of obviousness-type double patenting. I do expect that a 101 bill will be enacted by year-end (barring impeachment, or other time consuming, legislative adventures)
  • On the Supreme Court side, Article III standing to the CAFC was denied cert in RPX Corp. v. ChanBond, and we saw a decision in Return Mail Inc. v. United States Postal Service (here) I have largely ignored Return Mail here. Aside from the academic interest of whether the government can be a “person,” this case has little practical effect on PTAB practice. With 1-2 government filings per year, on average, it is just not that interesting for practitioners. That said, vendors of the government lodging such filings concurrent with a Court of Claims dispute should expect a privity argument headed their way.
  • Speaking of privity, there have been a number of recent PTAB decisions addressing such relationships. Be careful…it’s going to get much hairier for joint defendants and customer/supplier relationships.
  • Collateral estoppel from adverse PTAB rulings is becoming a problem for patent owners trying to manage multiple, inconsistent appeals. Papst Licensing GmbH v. Samsung Elec. America, Inc.(here)  Or, patent owners trying to return to court on claims that re indistinguishable to cancelled claims.  Intellectual Ventures I, LLC v. Lenovo Group Ltd., 
  • The Federal Circuit denied state sovereign immunity from PTAB proceedings, not surprisingly, following its earlier decision on tribal Immunity. Regents of the Univ. of Minn. v. LSI Corp. et al. (here)
  • At the Patent Trial & Appeal Board (PTAB) a few POP decisions are expected very soon on important matters of printed publications, and 315(b). Additional precedent is also expected on the agency’s new 101 and 112 guidelines.  Finally, last week saw the first use of the PTAB’s new Amendment Pilot.

As usual, a busy few months ahead.