On the Clause 8 Podcast, our own Eli Mazour talked to Gene Quinn about starting and running IPWatchdog.com – the most influential IP-focused website in America. They also talked about the IP policy landscape in Washington, how to effectively impact the policy making process, and various patent issues. #IntellectualProperty #Patents #Podcast
Eli Mazour recently interviewed the inventor of the microprocessor – Gil Hyatt – on the latest episode of the Clause 8 Podcast. Gil talks about devoting his life to innovation, licensing patents for hundreds of millions of dollars, and getting stuck in USPTO’s Sensitive Applications Warning System (SAWS) program. #IntellectualProperty #Patents #Podcast
Our Managing Partner John Harrity is the featured guest on this episode of the Clause 8 Podcast, sharing his thoughts on everything from how firms in the patent law space should be innovating, to some of the secrets of our own firm’s success. #Innovation #LawFirms #IntellectualProperty #Podcast
Following the release of Eli Mazour’s Clause 8 podcast interview with Makan Delrahim, Law360 published an article, “DOJ Antitrust Chief Wants To Take Thumb Off Patent Scales,” highlighting the impact of antitrust law on the patent field.
As the Law360 article describes, “Key to Delrahim’s ire is a 2013 guidance put out both by the DOJ and the U.S. Patent and Trademark Office that generally discouraged the use of injunctions and import bans sought by patent holders enforcing their technology.”
By Eli Mazour
After the 2014 Supreme Court Alice decision, the judges of the Federal Circuit failed to reach a meaningful consensus regarding how the subject matter eligibility test set out in Alice should be applied. As a result, new USPTO Director Andrei Iancu recognized that there was no practical way for examiners to navigate all of the patent eligibility decisions for each individual patent application. To address this problem, the USPTO released the “2019 Revised Patent Subject Matter Eligibility Guidance.”
In the recent Cleveland Clinic Foundation v. True Health Diagnostics decision, a panel of the Federal Circuit invalidated claims related to cardiovascular testing under § 101 and stated that “[w]hile we greatly respect the PTO’s expertise on all matters relating to patentability, including patent eligibility, we are not bound by its guidance” (Fed. Cir. 2019). The decision caused consternation among some practitioners regarding the value of relying on USPTO guidance.
Director Iancu’s comments regarding Cleveland Clinic
This past Thursday, at the ABA’s annual IP conference, Iancu addressed those concerns. First, he pointed out that Cleveland Clinic did not even mention the 2019 revised guidance. Instead, Cleveland Clinic discussed Example 29 from guidance that was published by the PTO on May 4, 2016, which is almost two years before Iancu became the director. Second, Iancu noted that Cleveland Clinic just stated that to the extent that Example 29 contradicts a court decision, the court decision controls. In other words, Cleveland Clinic pointed out facts that were clear before the 2019 revised guidance was even released: 1) courts are not bound by guidance released by the USPTO and 2) incorrect guidance released by the USPTO would not override previous court decisions. Cleveland Clinic did not in any way directly undermine the 2019 revised guidance.
Moreover, Iancu indicated a change in approach by the USPTO: instead of reacting to each new Federal Circuit decision that deals with § 101, the USPTO is now taking a look at the § 101 issue holistically. And, Iancu argued that the Federal Circuit should address the § 101 problem through en banc decisions by the full Federal Circuit. In totality, this suggests that a single Federal Circuit decision by a panel of three judges is unlikely to significantly change the USPTO’s approach set out by the 2019 revised guidance.
Practical tips for drafting & prosecution
As it stands now, USPTO examiners and PTAB judges are expected to apply the 2019 revised guidance for § 101 analysis. In fact, ex parte appeal decisions that deal with § 101 are currently being reviewed at the PTAB to make sure that the 2019 revised guidance is being applied by PTAB judges. Therefore, in order to ensure efficient prosecution and positive appeal results, practitioners should primarily rely on the 2019 revised guidance to overcome § 101 rejections.
However, when drafting new patent applications, practitioners should plan for the possibility of the Federal Circuit, the Supreme Court, or even possibly Congress taking a narrower view of patent eligibility. Therefore, to the extent possible, patent applications should be drafted with all of the relevant court decisions in mind. The goal should be for an eventual patent to be able to withstand – or even better yet avoid – the most stringent § 101 scrutiny during litigation.
DOJ’s Antitrust Chief, Makan Delrahim, shares insight and tips for companies on FTC divide and more in Latest Clause 8 Podcast from Eli Mazour.
The podcast was originally published by Corporate Counsel here.
Following this podcast, Law360 published an article explaining the debate between DoJ and USPTO regarding the DoJ’s correction on the Standard Essential Patent (SEP) policy. For more information, read the article here (subscription required).
Check out the new Clause 8 interview about the passage of the American Invents Act (AIA) and how to effectively influence IP policy. Eli Mazour talks to Aaron Cooper, who served as Chief IP Counsel on the Senate Judiciary Committee and is now head of global policy at BSA | The Software Alliance.
Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.
In the latest episode of Clause 8, Eli Mazour talks to legendary Congressman Henry Waxman about the passage of the Hatch-Waxman Act, current proposals to deal with the impact of new PTAB proceedings on pharma patents, effectively influencing IP policy in DC, and many other subjects.
Full Clause 8 interview available here https://www.clause8.tv/ or via your favorite podcast app.
By Eli Mazour and So Ra Ko
Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB. A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge.
The PTAB decides thousands of ex parte appeals per year. Each appeal is assigned to a panel of three Administrative Patent Judges (APJs). While one judge is designated to write the initial opinion, all three judges are supposed to take an active role in adjudication before the final decision is issued.
Eli Mazour recently interviewed Above the Law IP Columnist and Markman Advisor founder Gaston Kroub. Learn about the advantage of IP litigation boutiques handling your matters, advising financial firms about ongoing patent litigation, succeeding in the legal profession, and so much more! You do not want to miss this insider interview!
Find the full Clause 8 podcast interview available here https://www.clause8.tv/ or via your favorite podcast app.
Eli Mazour recently interviewed former USPTO Director David Kappos. Learn about his time at IBM and the USPTO, what in-house IP counsel should keep in mind, the importance of 5G technology, and so much more! You do not want to miss this insider interview!
Find the full Clause 8 podcast interview here https://www.clause8.tv/ or via your favorite podcast app.
April 26, 2017 – Eli Mazour launched a new online video series, Clause 8, that will feature video interviews with prominent members of the IP community. IPWatchdog.com published an article highlighting the details of the first interview.
His first interview is with former Chief Federal Circuit Judge Michel. During the interview, Judge Michel talks about his personal story and shares his thoughts about America’s patent system, patent eligibility, and the PTAB. He also provides great advice to those in, or thinking about being in, the IP field.
Please check it out and sign up to be notified about future interviews! www.clause8.tv
On April 19, Eli Mazour presented during a webinar titled “Patent Eligibility: Navigating the Supreme Court’s 2016 Decisions and Its Impacts,” hosted by The Knowledge Group. Eli’s presentation focused on practical patent preparation and prosecution strategies for dealing with trends related to patent eligibility and the The Patent Trial and Appeal Board (PTAB) for business, software, and high-tech related inventions.
Eli is an active member of the IP community, frequently publishing articles and participating in panels discussing preparation and prosecution.
For over 10 years, The Knowledge Group has produced thousands of best in class educational webcasts for a variety of industries and professions including legal, tax, accounting, finance, human resources, risk/compliance, and many others.
Click HERE to purchase a recording.
By Eli Mazour & James Bennin
“The outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection.”
Previously, we analyzed ex parte appeal decisions by the Patent Trial and Appeal Board (PTAB) from the year following the Alice v. CLS Bank decision. At the time, we concluded that the PTAB is unlikely to reverse § 101 rejections based on Alice. We decided to revisit this conclusion based on ex parte appeal decisions from December 2016.