2016 National Lawyers Convention
In the past six years, there has been a momentous shift in what can be patented. In four separate cases, the Supreme Court embraced a more muscular approach in enforcing the basic requirement under § 101 of the Patent Act that only certain types of inventions can be patented, impacting inventive activities ranging from biotech to high-tech to business methods. As a result, the Court of Appeals for the Federal Circuit, trial courts, and the Patent Office have responded by sharply restricting the scope of “patentable subject matter," invalidating issued patents and rejecting patent applications at record rates.
This change has been both consequential and controversial. Inventions that once were patentable in key innovation industries, such as cutting-edge diagnostic tests made possible by the biotech revolution and highly complex computer software in the high-tech sector, are no longer eligible for patent protection. Some welcome this development, seeing it as freeing up basic tools of research and preventing abusive assertions of patents against infringers. Others have criticized this development, identifying lost incentives to invest millions in R&D necessary to produce technological innovation and lost value in existing patents given pervasive uncertainty in the patent system as to what is and is not protectable.
The lack of certainty is something both sides of this important legal and policy debate have found troublesome. Many agree that the Supreme Court's current patent-eligibility jurisprudence is confusing and murky. The Court's legal test for assessing patentable subject matter has proven unpredictable in its application by courts, by patent examiners, and by the administrative review board at the Patent Office (the Patent Trial and Appeal Board).
One proposed solution has been to simply abolish § 101, the provision that sets forth the requirement that only an invention comprising a “machine, manufacture, process, or composition of matter" is patentable. The argument is that this provision is an antiquated holdover from the first patent statutes that did not have the granular requirements that now exist in the modern Patent Act, ensuing that only novel, nonobvious, useful and fully disclosed inventions are patentable. This panel will consider whether such a radical move is warranted, whether the Supreme Court's patentable subject matter jurisprudence is on the right track, or perhaps whether any problems in patentable subject matter jurisprudence are fixable by the Court or by Congress.
This panel was held on November 17, 2016, during the 2016 National Lawyers Convention in Washington, DC.
Intellectual Property: Courts vs. Congress: What is a Patentable Invention?
1:45 p.m. – 3:15 p.m.
- Mr. David J. Kappos, Partner, Cravath, Swaine & Moore LLP
- Prof. Adam Mossoff, Professor of Law and Co-Director of Academic Programs, Senior Scholar, Center for the Protection of Intellectual Property, Antonin Scalia Law School, George Mason University
- Mr. Mark A. Perry, Partner, Gibson, Dunn & Crutcher LLP
- Prof. Joshua D. Sarnoff, Professor of Law, DePaul College of Law
- Moderator: Hon. Susan G. Braden, U.S Court of Federal Claims
The Mayflower Hotel Short video featuring Greg Dolin
Gregory Dolin October 06, 2016
How will the Supreme Court rule on a high-stakes patent law case? Professor Greg Dolin of the University of Baltimore School of Law weighs in on this $1B lawsuit between Samsung and Apple, a patent war that has been fought in courtrooms around the world which may finally be settled by the Supreme Court in what is being called the patent trial of the century. Oral argument is October 11, 2016. Intellectual Property Practice Group Podcast
The America Invents Act (AIA) significantly affects the Constitutional separation of powers by creating a new inter partes review (IPR) regime for challenging an issued patent under an Article II Executive Branch entity, the Patent Trials and Appeals Board (PTAB). In practice, the PTAB has become an alternative forum for accused infringers to attack patent claims with less risk and expense than in U.S. federal district courts. Combined with the reluctance and sometime refusal of Article III courts (including the U.S. Court of Appeals for the Federal Circuit) to exert authority over final application of patent law, the statutory adjudicative powers given PTAB judges give rise to separation of powers issues.
As a result, patents that have successfully overcome validity challenges in a “final judgment” of a court are now subjected to double jeopardy in the PTAB, and those valuable but limited patent property rights can be challenged and taken away entirely within an Article II administrative forum. At least two cases pending cert before the U.S. Supreme Court challenge provisions of the AIA on separation of power bases (Cooper v. Lee and MCM Portfolio LLC v. Hewlett-Packard Co.), while another (Cuozzo Speed Technologies, LLC v. Lee) challenging the differences between the PTAB’s and the courts’ claim construction regimes has already been decided. In Cuozzo, the Court upheld the PTAB/USPTO’s application of a different claim construction standard from the courts, tipping the scales against patentees who face a validity challenge during IPRs as compared against in federal district court. Critics of the AIA rules –and particularly IPRs– as applied by the USPTO/PTAB assert that they weaken patents and the patent system, and undermine the incentives for innovation that have driven economic growth for much of this country’s history. This teleforum will include a discussion of the Constitutional challenges to the AIA’s patent review provisions, including the Court’s hints in Cuozzo that it is aware of other Constitutional issues.
SCOTUScast 7-14-16 featuring Gregory Dolin
- Mr. Rob Greenspoon, Founding Member, Flachsbart & Greenspoon, LLC
- Prof. Adam Mossoff, Professor of Law and Co-Director of Academic Programs, Senior Scholar,Center for the Protection of Intellectual Property, Antonin Scalia School of Law, George Mason University
- Mr. Tejinder Singh, Partner, Goldstein & Russell
- Moderator: Mr. Trevor K. Copeland, Shareholder, Brinks Gilson and Lione
Gregory Dolin July 14, 2016
On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee. In 2011, the America Invents Act created an expedited procedure, known as inter partes review, to provide a cost-effective alternative to litigation for resolving certain challenges to patent validity. The Patent Trial and Appeal Board, contained within the U.S. Patent and Trademark Office (PTO), hears these disputes rather than a federal district court. When construing patent claims, the Board applies a “broadest reasonable interpretation” standard rather than the “plain and ordinary meaning” standard typically applied by federal courts.
Here, Cuozzo Speed Technologies, LLC. (Cuozzo) owns a speed limit indicator patent. Garmin International, Inc. (Garmin) petitioned the Board for inter partes review (IPR) of claims regarding the patent. The Board found that certain claims were unpatentable and denied Cuozzo’s request to replace those claims with several others. Cuozzo appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit, which (1) held that it lacked authority to review the PTO’s decision to institute IPR, and (2) affirmed the Board’s final determination, finding no error in its application of the “broadest reasonable interpretation” standard.
There were two questions before the Supreme Court: (1) Whether the Federal Circuit erred in holding that the Board may, in IPR proceedings, construe claims according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the Federal Circuit erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the decision to institute the IPR proceeding is judicially unreviewable.
By a vote of 8-0 and 6-2, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Breyer delivered the opinion of the Court, which held that the underlying statute precluded judicial review of the kind of claim at issue here, involving the PTO’s decision to institute IPR. The Court further concluded that the PTO was authorized to issue the regulation, setting forth the “broadest reasonable interpretation” standard.
A unanimous Court joined Justice Breyer’s opinion with respect to Parts I and III. Chief Justice Roberts and Justices Kennedy, Thomas, Ginsburg, and Kagan joined the opinion with respect to Part II. Justice Thomas filed a concurring opinion. Justice Alito filed an opinion concurring in part and dissenting in part, in which Justice Sotomayor joined.
To discuss the case, we have Gregory Dolin, who is Assistant Professor of Law and Co-Director, Center for Medicine and Law at University of Baltimore School of Law. Intellectual Property Practice Group Podcast
The 2011 America Invents Act created provisions for Inter Partes Review (“IPR”) and Post Grant Review (“PGR”) of patents. According to PTO statistics, to date, nearly 50,000 patent claims have been challenged under IPR, and nearly 11,000 (22.4%) of those claims have been invalidated. On June 20, 2016, in Cuozzo Speed Technologies v. Lee, the Supreme Court upheld the Patent Trial and Appeal Board's (PTAB) interpretation of two key elements of IPR. The Court held that (1) decisions to institute IPR proceedings are non-appealable, and (2) the PTO has the authority to determine claim meaning and validity under its “broadest reasonable construction” standard.
Important outstanding questions about the constitutionality of IPR and PGR remain, however. Specifically, once the Patent and Trademark Office has granted a patent, does a decision made by an administrative judge within the executive branch to invalidate the patent under IPR/PGR amount to a taking under the 5th Amendment of the U.S. Constitution? Moreover, does such a procedure by which issued patents are reviewed for validity by non-Article III judges raise separation of powers issues?
Professor Greg Dolin participated in the Teleforum to elucidate the argument that he and Irina Manta make in their recent article, Taking Patents, that PGR and IPR decisions invalidating patents do indeed amount to takings under the 5th Amendment. Professor Camilla Hrdy and Yale Information Society Law Project Fellow Ben Picozzi believe that PTAB decisions invalidating patents under IPR and PGR do not raise takings problems. These patent experts also discussed separation of powers issues related to IPR and PGR.
- Prof. Gregory Dolin, Co-director of the Center for Medicine and Law, University of Baltimore School of Law
- Prof. Camilla Hrdy, Center for Technology, Innovation & Competition Fellow, University of Pennsylvania Law School
- Prof. David S. Olson, Associate Professor of Law, Boston College Law School
- Mr. Ben Picozzi, Student Fellow, Information Society Project, Yale Law School