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CAFC Provides Last Word in PTAB Appointments Clause Debate

Given the remands that have been flowing back to the Patent Trial & Appeal Board (PTAB) from the Federal Circuit over the past few weeks, the writing has been on the wall as to en banc rehearing in Arthrex v. Smith & Nephew Inc.  The Court officially denied rehearing today.  Still, the 62 pages of differing viewpoints offered by the Court in its denial of rehearing essentially presented the Court’s collective reasoning anyway.

The per curiam opinion explained the earlier decision in the context of the dissenting views. That is, as between striking down the AIA and severing Title 5 protections for administrative patent judges, Congress was more likely to favor the latter.Continue Reading Arthrex & 81 PTAB Remands

SCOTUS Declines to Wade Into 101 Morass

One of the more noteworthy IP law developments of 2019 was the patent subject matter eligibility (35 U.S.C. § 101) craze that swept Congress in the late spring of 2019.  With unprecedented marathon hearings, and almost universal agreement from dozens of witnesses on the unpredictable state of subject matter eligibility jurisprudence, a legislative fix appeared imminent. Yet, this craze was short-lived.  The significant momentum of the spring hearings fizzled into deadlock in late summer— then the entire effort was left for dead in the fall.  With Congress losing its traction, all eyes turned to the SCOTUS and the prominent cert petitions on the docket that raised the prospect of some form of 101 review from the high court.

But, the court denied all such cert petitions today. 
Continue Reading 101 Debate Punted Back to Congress

Unanimous Support for Legislative Fix

Today, the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the current Federal Circuit solution was effective in curing the Appointments Clause defect, while there was some debate over whether the “fix” would hold, all of today’s witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.
Continue Reading House Judiciary Told Legislative Fix to Arthrex Defect is Necessary

Lack of Stakeholder Consensus on 101 Effort

The sponsors of the promised bill to reform 35 U.S.C. § 101 are struggling to regain earlier momentum. It seems that the inclusion of the 112(f) provision (designed to bring Big Tech to the table on an otherwise unwelcome reform effort) has not been effective. Worse, the 112 provision has actually turned off some in Bio/Pharma. As such, the 101 bill promised back in July now appears to be slipping to October.

Given the recent complications, the Stronger Patents Act has been dusted off to remind Big Tech that, at least in theory, there could be much worse legislative consequences than a more patent friendly 101 statute. 
Continue Reading Political Theater & The Stronger Patents Act

Term Act Seeks to Add New Bio/Pharma Litigation Hurdle

It was easy to miss last week’s introduction of a new patent reform bill on the House side entitled: “Terminating the Extension of Rights Misappropriated Act of 2019” with so much focus on the Senate’s patent subject matter eligibility hearings.  The “Term Act of 2019” is described as addressing “the rising cost of prescription drugs by significantly limiting the process known as “evergreening,” whereby pharmaceutical companies make minor changes to a drug and file for a new patent on those trivial changes in order to extend their exclusivity and maintain high prices.”

Under the heading “Prevention of Double Patenting” the bill seeks to add a special presumption for Orange Book patents directed to a same drug/biological product.
Continue Reading Bio/Pharma to Face Second Double Patenting Hurdle?

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…

PatentsPostGrant.com June Webinar

June 19 marks the 5th anniversary of the Supreme Court’s impactful decision in Alice Corp. v. CLS Bank, which dramatically changed the analysis of patentable subject matter in both patent prosecution and patent litigation.

Currently, a bipartisan group of Congressional members introduced what could be the first revisions to Section 101…

Senate Judiciary Hearings Start Next Week

The Senate Judiciary Committee will conduct back-to-back hearings next Tuesday and Wednesday entitled “The State of Patent Eligibility in America. The marathon fact-finding hearings come on the heels of the proposed 101 framework released last week. Each of the hearings will include three panels of five speakers.

Judging on the lineups for next week, so far the deck is plainly stacked pro-reform.
Continue Reading Senate 101 Hearings Stacked in Favor of Reform

Proposed Framework Isn’t Just About Fixing 101

Since Wednesday’s release of a proposed 101 framework, some have mistakenly dismissed its legislative viability as failing to account for the interests of Big Tech — nothing could be further from the truth.

The proposal is the result of months of negotiations with the major patent stakeholders, most notably the Bio/Pharma and Tech lobbies. While the Bio/Pharma side would greatly benefit from a broadening of patent eligibility (such as proposed) to more readily secure patent protection for technologies such as medical diagnostics, the Tech Lobby has largely opposed such as it leverages 101 to fight back against abstract patent claims. To bridge this divide, the framework presents a narrowing provision that will primarily impact the claim scope of patents asserted against Tech.
Continue Reading 101 Legislative Proposal Includes Provision to Narrow Functional Claims