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  • USPTO Women’s Entrepreneurship Symposium

    Womens-entrepreneurship-symposium-evergreen-logo-stackedThe U.S. Patent and Trademark Office will be offering part two of its 2023 Women's Entrepreneurship Symposium on "Finding Mentors and Opportunities" from 2:00 pm and 4:35 pm (ET) on March 15, 2023.  The event will address the importance of mentors and how building a reliable network can impact growth, opportunities, and success, as well as cover:

    • Best practices that helped women innovators overcome challenges in their fields
    • How to give back and be a mentor
    • Where to find mentors, and the ways that mentorships bring growth and opportunities

    Those interested in registering for the event, can do so here.

  • USPTO to Transition to Electronic Patent Grants

    By Donald Zuhn —

    U.S. Patent Cover - NewIn a final rule published in the Federal Register (88 Fed. Reg. 12560) last week, the U.S. Patent and Trademark Office announced that it will start issuing patents electronically under a new digital USPTO seal and bearing the digital signature of the USPTO Director beginning on Tuesday, April 18, 2023.  The Office indicated that electronic patent issuance will reduce pendency of patent applications, foster a green economy by reducing paper waste, and permit issued patents to be viewed and printed by applicants and the public immediately upon issuance in Patent Center.

    The Office noted that following a transition period, patents will no longer be issued on paper and will no longer be mailed to the correspondence address of record as part of the patent issuance process.  During the transition period (the length of which has not yet been specified) the Office will provide a paper copy of the electronic patent as a courtesy ceremonial copy, delivered to the correspondence address of record.  And even after the transition period, ceremonial copies of patents will be available for purchase at a nominal charge.  In addition to ceremonial copies, the Office will also offer presentation copies (a certified copy of the first page of a patent suitable for framing and display) and certified copies of issued patents for a nominal fee.  However, the Office will no longer accept orders for Advance copies of issued patents, and the Issue Fee Transmittal form (PTOL–85B) will be revised to eliminate the option for ordering Advance copies of patents.

    The lone rule change required by the implementation of electronic patent issuance will be the removal of 37 C.F.R. § 1.315, which states that "[t]he patent will be delivered or mailed upon issuance to the correspondence address of record."  The move to electronic patent issuance will, however, impact patent practice to some extent.  The notice points out that under the current paper patent issuance process, electronic capture of the information needed to issue a patent begins shortly after the mailing of the notice of allowance, and an Issue Notification is typically mailed several weeks prior to the issue date to inform the applicant of the patent number and issue date.  (While there is no set period after payment of the issue fee when a patent will issue, in our experience patents often issue within about five weeks following payment of the issue fee.)  Under the electronic patent issuance process, the Office notes that patents will issue "shortly after the patent number and issue date are assigned, which will result in the reduction of pendency for allowed patent applications."  Thus, the Office indicates that patents will issue "shortly after the payment of the issue fee," and Applicants therefore "will have less time, after the payment of the issue fee, to file continuing applications, Quick Path Information Disclosure Statements, or petitions under 37 CFR 1.313(c) to withdraw an application from issue."  The Office recommends that the best practice would be for Applicants to file any of the above submissions as early as possible, with continuing applications preferably being filed before the payment of the issue fee.  The Office notes, however, that patents will continue to be issue on Tuesdays, and that Issue Notifications will continue to be available electronically via Patent Center, generally on the Wednesday or Thursday before a patent issues.  Thus, Applicants can still monitor Patent Center to determine the patent number and issue date of a patent at least a few days prior to that patent's issuance.

    As for the format of the electronic patent, the Office notes that the electronic patent cover sheet will be nearly identical in appearance to the cover sheets currently used for paper patents, except that the seal and Director's signature will be in digital form.  In addition, the new seal will be an official USPTO seal in digital form that serves to authenticate the patent, with an encrypted digital signature embedded within the seal.

    The notice indicates that the Office received 21 comments in response to an earlier notice of proposed rulemaking regarding implementation of electronic patent issuance.  The Office noted that some comments argued that the time between the Issue Notification and patent issuance should not be shortened because it leaves too little time to determine a continuation filing strategy.  The Office responded that "[d]elaying issuance to counteract th[e] time savings [from electronic patent issuance] because [an] applicant may possibly choose to file a continuing application is not in accordance with the statutory directive," and "[t]he USPTO appreciates this may cause a change in some applicant's practice, but agrees with the comments that state that applicants will adapt to the new timeline."  In response to comments suggesting that certificates of correction also be issued electronically, the Office noted that it would continue to mail certificate of corrections to the correspondence address of record, but "is making efforts to also issue certificates of corrections electronically via Patent Center with the electronic patent grant."  The Office also noted in response to some comments that it has no plans to make certified copies available electronically beyond the current practice of using CD–ROM media.

  • Regents of the University of Minnesota v. Gilead Sciences, Inc. (Fed. Cir. 2023)

    By Kevin E. Noonan –

    Federal Circuit SealThe Supreme Court's (re)consideration of the enablement requirement expected in its decision later this year in Amgen v. Sanofi may be the most closely watched patent case since AMP v. Myriad Genetics.  But in a decision handed down on Monday, Regents of the University of Minnesota v. Gilead Sciences, Inc., the Federal Circuit reminded us that the principles and considerations that form the basis for the Federal Circuit's recent enablement jurisprudence originated in that Court's analysis of the other side of Section 112(a), the written description requirement.

    The case arose in an inter partes review decision by the Patent Trial and Appeal Board involving Gilead's challenge of claims 1−9, 11−21, and 23−28 of U.S. Patent 8,815,830.  The issue was reached in the only way it can be in an IPR:  Gilead challenged Minnesota's right to priority to applications earlier filed than Gilead's patent on its commercial product, sofosbuvir used to treat hepatitis C infections.  The temporal relationships between the patents and applications at issue are set forth in this table in the opinion:

    Table
    Claim 1 was considered representative of the claims challenged in the IPR and illustrate the legal principles that formed the basis for the Court's opinion:

    1.  A compound of formula I:

    Structurewherein:

    R1 is guanine, cytosine, thymine, 3-deazaadenine, or uracil, optionally substituted by 1, 2, or 3 U; wherein each U is independently halo, hydroxy, (C1-C6)alkyl, (C3-C6)cycloalkyl, (C1-C6)alkoxy, (C3-C6)cycloalkyloxy, (C1-C6)alkanoyl, (C1-C6)alkanoyloxy, trifluoromethyl, hydroxy(C1-C6)alkyl, -(CH2)1-4P(=O)(ORw)2, aryl, aryl(C1-C6)alkyl, or NRxRy;

    R2 is halo;

    R6 and R7 are independently H or (C1-C6)alkyl;

    R3 is hydroxy;

    R4 is hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, aryl, aryl(C1-C6)alkyl, or 2-cyanoethyl;

    R5 is an amino acid;

    X is oxy, thio, or methylene;

    each Rw is independently hydrogen or (C1-C6)alkyl;

    Rx and Ry are each independently hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, phenethyl, or (C1-C6)alkanoyl; or Rx and Ry together with the nitrogen to which they are attached are pyrrolidino, piperidino or morpholino;

    wherein any (C1-C6)alkyl of R1, R4-R7, Rw, Rx, and Ry is optionally substituted with one or more halo, hydroxy, (C1-C6)alkoxy, (C3-C6)cycloalkyloxy, (C1-C6)alkanoyl, (C1-C6)alkanoyloxy, trifluoromethyl, azido, cyano, oxo(=O), (C1-C6)alkyl, (C3-C6)cycloalkyl, (C3-C6)cycloalkyl(C1-C6)alkyl, (C1-C6)alkyl-S-(C1-C6)alkyl-, aryl, heteroaryl, alkyl(C1-C6)alkyl, or heteroaryl(C1-C6)alkyl, or NRajRak; wherein each Raj and Rak is independently hydrogen, (C1-C6)alkyl, (C3-C6)cycloalkyl, phenyl, benzyl, or phenethyl;

    and wherein any aryl or heteroaryl may optionally be substituted with one or more substituents selected from the group consisting of halo, hydroxy, (C1-C6)alkyl, (C3-C6)cycloalkyl, (C1-C6)alkoxy, (C3-C6)cycloalkyloxy, (C1-C6)alkanoyl, (C1-C6)alkanoyloxy, trifluoromethyl, trifluoromethoxy, nitro, cyano, and amino;

    or a pharmaceutically acceptable salt thereof.

    It should be noted that this claim and the notational complexity thereof is not that different from many claims in chemical and biotechnological patents.

    There was no dispute that the Sofia patent discloses every limitation of the claims challenged in the IPR and thus the '830 patent claims would be invalid if the patent was not entitled to priority to one of the three Minnesota patent applications (designated "P1," "NP2," and "NP3" in the opinion) that preceded it (as shown in the table).

    As discussed in the opinion, the disclosure of the NP3 application was the same as the NP2 application, and the Board "focused its priority analysis on the disclosures of NP2 and P1, each of which was filed before Sofia was published."  The PTAB held that the challenged claims were invalid for anticipation by Gilead's Sofia publication because the disclosures of the NP2 and P1 prior applications did not provide an adequate written description of the claims in the '830 patent.  Thus the '830 patent was not entitled to the priority date of any of these applications and the Sofia patent publication was anticipating prior art.  The basis of the Board's decision was that "these documents contained neither ipsis verbis support nor sufficient blaze marks to guide the skilled artisan to the claims of the '830 patent."  The Board issued a Final Written Decision invalidating the challenged claims of the '830 patent and this appeal followed.

    The Federal Circuit affirmed, in an opinion by Judge Lourie joined by Judges Dyk and Stoll.  (It should be remembered that Judge Lourie almost single-handedly developed the modern application of the Court's written description jurisprudence, particularly for biotechnology claims, in cases including Amgen, Inc. v. Chugai Pharmaceutical Co., Fiers v. Revel, Enzo Biochem, Inc. v. Gen-Probe Inc., University of Rochester v. G.D. Serle Co., and most particularly Regents of California v. Eli Lilly & Co. and Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.)  The opinion addressed Minnesota's three grounds for appeal in order:  first, that the Board erred in finding no adequate written description for the '830 claims in the priority documents; second, that the decision was contrary to the Administrative Procedures Act; and third, that Minnesota as a sovereign State was immune from the Board's jurisdiction.

    With regard to the written description question per se, the opinion sets forth a brief but informative synopsis of the standard properly applied by the Board.  As part of the patent "quid pro quo," the panel noted that the "judicial gloss" imposed by the courts is that a disclosure must show that the applicant made what was claimed.  In the context of claims to a chemical genus, the Court apprehends "particular issues" to be raised because such claims must be supported by disclosure of "either a representative number of members of the genus or structural features common to the members of the genus, in either case with enough precision that a relevant artisan can visualize or recognize the members of the genus," citing Ariad.  Minnesota's argument sounded in the second basis for an adequate written description, setting forth "blaze marks" sufficient to disclose the genus.  Under the substantial evidence standard applied to factual questions decided by the Board (which for written description issues "must be assessed on a case-by-case basis" under Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991)), the Federal Circuit agreed that the Board did not err in finding against Minnesota.  Minnesota contended that a collection of dependent claims, each being directed to species for one of the several substituents (P1 Claim 47 for R7 substituents, P1 Claim 45 for R6 substituents, P1 Claim 33 for R5 substituents, P1 Claim 21 for R3 substituents, P1 Claim 13 for R2 substituents, and P1 Claim 2 for R1 substituents, and P1 Claim 1 for R4 substituents and X) provided ipsis verbis disclosure of the subgenus claimed in the '830 patent.  Calling this recitation a "maze-like path" needing to be followed, with "each step providing multiple alternative paths," this is "not a written description of what might have been described if each of the optional steps had been set forth as the only option."  The inadequacy in the argument (and the written description) is its indeterminacy and lack of direction because "all those optional choices do not define the intended results of claim 1 of the'830 patent."  The panel states that the situation before them was analogous to the claims invalidated on written description grounds in Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996), which provided what the Court characterized in that case to be an assertion of "laundry list disclosure of every possible moiety for every possible position" as providing an adequate written description, which the Court rejected because "such a disclosure would not 'reasonably lead' those skilled in the art to any particular species."*  Here, the panel asserts that the disclosure relied upon by Minnesota recited "a compendium of common organic chemical functional groups, yielding a laundry list disclosure of different moieties for every possible side chain or functional group" and "[i]ndeed, the listings of possibilities are so long, and so interwoven, that it is quite unclear how many compounds actually fall within the described genera and subgenera."  On this basis, the Federal Circuit held that the P1 priority document does not provide sufficient ipsis verbis support for the challenged '830 patent claims to entitle these claims to its priority date.

    Turning to the question of whether the prior applications provided the requisite "blaze marks" to satisfy the written description requirement, the Federal Circuit again agreed with the PTAB that they did not.  In doing so (after stretching the "tree in the forest" analogy about as far as it could be taken), the opinion rejects Minnesota's attempted reliance on rubrics from Ariad, stating that Ariad stood for the principle that what is required is:

    [A] description of a claimed genus disclosing either (1) "a representative number of species falling within the scope of the genus," which the parties do not dispute is lacking here, or (2) "structural features common to the members of the genus," either of which must enable "one of skill in the art [to] 'visualize or recognize' the members of the genus" [emphasis in opinion].

    In the applications considered here (P1 and NP2) "the structures here are so extensive and varied that the structures of P1 claim 47, which, through its multiple dependencies, encompasses a significantly larger genus than that claimed in the '830 patent, are not sufficiently common to that of claim 1 of the '830 patent to provide written description support."  Under these circumstances there are no "blaze marks" in the P1 nor NP2 applications to the subgenus claimed in the '830 patent for the skilled worker to appreciate.  Having failed to satisfy either alternative basis for an adequate written description, the Federal Circuit held that the PTAB properly invalidated the challenged claims as being anticipated by the Sofia publication.

    Minnesota's remaining grounds for appeal were dealt with by the Court more expeditiously.  With regard to the APA challenge, the opinion rejects there being an APA basis for objection to the Board "disregard" for Minnesota's experts, because the Court states "[i]t is within the discretion of the Board to weigh the evidence of record," citing Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35 F.4th 1352, 1365−66 (Fed. Cir. 2022), and regardless the record showed that the Board had cited Minnesota's experts "more than a dozen times" in its FWD.  Nor does the APA require the Board to perform a "creditability determination" for expert witness testimony according to the panel.  The Court also rejected Minnesota's claim that the Board's decision was contrary to an earlier decision involving Gilead, the opinion reciting five ways in which the earlier case was different from this one.  And the panel rejected Minnesota's objections on certain procedural grounds, stating that they had been given an adequate opportunity to respond during the IPR.

    Finally, the opinion summarily rejected Minnesota's sovereign immunity claims based on its earlier decision in Regents of the University of Minnesota v. LSI Corp., 926 F.3d 1327 (Fed. Cir. 2019), on collateral estoppel and stare decisis grounds.

    As with enablement, the Federal Circuit (albeit supported by over thirty years of precedent) has established a standard requiring heightened disclosure supporting claims to chemical and biological inventions.  The inherent complexity in these arts provides a logical basis for the distinctions drawn in this case and in earlier written description cases, and the Court's concern over a patentee receiving claims of broader scope than what is expression disclosed is a consistent theme in these cases and the more recent enablement cases before the Federal Circuit.  This parsimony is likely to resonate with the Supreme Court and thus encase in stone the disclosure requirements for written description developed for a generation by the Federal Circuit.

    *Such an objection has not, sadly, prevented the Patent Office from making arguments encompassing prior art laundry list disclosures in asserting lack of patentability.

    Regents of the University of Minnesota v. Gilead Sciences, Inc. (Fed. Cir. 2023)
    Panel: Circuit Judges Lourie, Dyk, and Stoll
    Opinion by Circuit Judge Dyk

  • On Alice Rejections per USPTO Technical Center

    By Michael Borella —

    USPTO Building FacadeThe U.S. Patent and Trademark Office (USPTO) organizes its examining corps into technical centers (TCs).  Each TC is dedicated to one or more general technical fields.  In some cases, one TC may include two or more unrelated fields, while some fields (software, for example) are represented in multiple TCs.  Currently there are nine TCs, not counting one dedicated to reissues.

    Each TC is further subdivided into art units (usually 4-10) and examiners are assigned to these art units.  Thus, examiners tend to focus their efforts on examining patent applications within a fairly narrow field.

    Over the nine years since 2014's Alice Corp. v. CLS Bank Int'l Supreme Court case, the number of 35 U.S.C. § 101 rejections has dramatically increased throughout the USPTO.  Anecdotally, however, many practitioners believe that certain TCs are much more likely to result in 101 rejections than others.  In practice, it is generally accepted that TC 3600 — the TC to where most business-related inventions are routed — issues the most Alice-based 101 rejections.

    We tested this hypothesis by gathering data on Alice rejections per TC from 2020.  We had to look back this far due to the USPTO's 18-month publication delay causing not all relevant data from 2021 to be available.  Here, an Alice rejection is a rejection of at least one claim on the grounds of the claim(s) not meeting the judicial patent eligibility requirements of Alice.  This is a slightly narrower scope than § 101 rejections in general, which include claims rejected on grounds of failing to meet the statutory requirements and grounds of double patenting.

    While the raw numbers of Alice rejections per TC in 2020 were not hard to obtain, they were also not very insightful when considered in isolation.  To be able to compare Alice rates across TCs, we also collected a count of § 103 rejections per TC in 2020.  By considering the ratio of § 103 rejections to Alice rejections, we are able to obtain a clearer understanding of how "difficult" each TC is with respect to § 101.  Particularly, using § 103 rejections (which are quite common) as a baseline, we can get a clear understanding of how many Alice rejections to expect per § 103 rejection.

    Table
    As shown above, the ratio of § 103 to Alice rejections varies wildly across the TCs.  For instance, in TC 1600, you can expect one Alice rejection for about every fifteen § 103 rejections.  On the other hand, in TC 3600, you can expect one Alice rejection for about every three § 103 rejections.  Indeed, TC 3600 has the highest likelihood of an Alice rejection by far when compared to § 103 rejection volume.  This appears to confirm our anecdotal observations.

    Other TCs that have relatively high rates of Alice rejections are 1600 and 2100.  Both of these TCs receive a high volume of software applications.  In contrast, TCs 1700, 2600, and 2800 have the lowest rates, with 1700 being quite low.

    Based on experience, we expected a higher rate of Alice rejections in TC 3700.  In particular, gaming inventions get routed to this TC, and we have seen frequent Alice rejections for their applications.  This TC, however, also examines mechanical and medical inventions, which typically are not subject to § 101 challenges as often.  Thus, across TC 3700 as a whole, Alice rates fall about in the middle of the field.  This suggests that it might be informative to further break this data down by art unit in a follow-on exercise.

    A word of caution — while this data suggests that TC is highly influential on whether an application is going to receive a § 101 rejection, there are other factors.  By their very nature, some inventions (e.g., business methods, data processing) are more prone to a § 101 rejection than others (e.g., mechanical devices, chemical compounds).  Inventions with a high likelihood of triggering an Alice analysis may receive a § 101 rejection regardless of its TC.

    Still, if a goal is to avoid TCs with higher Alice rates, this data provides a compelling view of just how much each TC relies on Alice rejections when compared to § 103 rejections.  As such, TC prediction and steering tools can be advantageous when used in conjunction with the numbers above.

  • Webinar on Patent Year in Review

    Strafford #1Strafford will be offering a webinar entitled "Patent Year in Review: Key Decisions, Trends, and Strategies — Patent Eligibility, Obviousness, Written Description, Pleading Standards, and More" on March 7, 2023 from 1:00 to 2:30 pm (EST).  Thomas L. Irving of Finnegan Henderson Farabow Garrett & Dunner, Sarah Hooson of Merck Sharp & Dohme, Krista Kostiew of Unilever, and Xiaoguang Michelle Gao of Eli Lilly and Company will guide patent counsel on recent trends and developments in patent practice; examine the Supreme Court, Federal Circuit, and PTAB cases from the past year; and discuss some of the key developments and strategies.  The webinar will review the following issues:

    • Key patent decisions in the Federal Circuit and Supreme Court and the impact on patent practice
    • Impact of recent PTAB decisions and developments on patent practice
    • Lessons from recent decisions and strategies going forward

    The registration fee for the webcast is $347.  Those interested in registering for the webinar, can do so here.

  • Webinar on Litigating Patents before UPC, German, and Brazilian Courts

    Daniel Law and Bardehle Pagenberg will be offering a two-part webinar on "How to Litigate Patents before the UPC Compared to German and Brazilian Courts" on March 8, 2023 at 10:00 am (BRT) / 2:00 pm (CET).  Stefan Lieck, Anna Giedke, and Ricardo Nunes will provide insights into key aspects of patent litigation in the UPC, German, and Brazilian court system, and discuss effective relief, duration of proceedings, costs and their reimbursement, interplay of infringement and validity, courts and judges as well as provisional measures.

    While there is no cost to participate in the program, those interested in attending the webinar can register here.

  • Webinar on Patent Assignments and Priority

    Strafford #1Strafford will be offering a webinar entitled "Patent Assignments and Priority in an International Context: U.S., Europe, and Asia" on March 9, 2023 from 1:00 to 2:30 pm (EST).  Jonathan Bench of Harris Bricken Sliwoski and Austen Zuege of Westman Champlin & Koehler will guide patent counsel on patent assignments and priority in the international context, together with key transactional concerns that may arise in the scope of negotiations; address key considerations for patent counsel, including scope of the assignment, signing issues, corrections, due diligence, representations and warranties, jurisdiction, and choice of law; and discuss dealing with non-assignment transfers by operation of local/foreign law and assignment issues in the U.S., Europe, and Asia that may arise during negotiations or dealt with post-closing.  The webinar will review the following issues:

    • How do patent assignments in multiple countries impact patent priority?
    • What are the significant differences between the U.S. and other jurisdictions' approaches to patent assignments?
    • What steps should counsel take when dealing with patent assignments to maximize protection around the world?
    • How will patents be dealt with in a standard M&A transaction vs. venture capital investment vs. private equity sale?
    • What types of negotiation points will be addressed in the representations and warranties section of a governing transaction agreement and its related disclosure schedule?
    • What type of dispute resolution forums should be considered when dealing with an international patent portfolio or an international transaction with patents across multiple jurisdictions?

    The registration fee for the webcast is $347.  Those interested in registering for the webinar, can do so here.

  • ITC Takes Section 101 to Its Illogical Extreme

    By Michael Borella —

    Hat tip to Prof. Lefstin who wrote a detailed analysis of this case on Patently-O.  We will keep our review short and to the point (pun intended, see below).

    International Trade Commission (ITC)We are all familiar with the rhetorical device of a parade of horribles — a series of very bad things that could happen if some action is (or isn't) taken.  Often, these parades involve a degree of hyperbole.  In other cases, they underestimate just how horrible the horribles actually are.

    The Supreme Court's Alice Corp. v. CLS Bank Int'l decision set off such a parade.  It started with certain computerized financial transactions being ruled ineligible, to more general forms of software inventions being held similarly invalid.  The exceptions to the broad statutory categories of patent subject matter now include audio/video streaming, wirelessly-controlled garage door openers, electric vehicle charging stations, cameras, methods of tuning drive shafts, and cardiac monitoring devices.

    In a decision that came down last October but somehow managed to avoid attention until recently, the International Trade Commission (ITC) affirmed an administrative law judge's decision that patent claims directed to an article of manufacture are abstract ideas under Alice.  An example of one of these claims recites:

    A polycrystalline diamond compact, comprising:
        a polycrystalline diamond table, at least an unleached portion of the polycrystalline diamond table including:
            a plurality of diamond grains directly bonded together via diamond-to-diamond bonding to define interstitial regions, the plurality of diamond grains exhibiting an average grain size of about 50 μm or less;
            a catalyst occupying at least a portion of the interstitial regions;
            wherein the unleached portion of the polycrystalline diamond table exhibits a coercivity of about 115 Oe or more;
            wherein the unleached portion of the polycrystalline diamond table exhibits an average electrical conductivity of less than about 1200 S/m; and
            wherein the unleached portion of the polycrystalline diamond table exhibits a Gratio of at least about 4.0×106; and
        a substrate bonded to the polycrystalline diamond table.

    In plain English, a polycrystalline diamond compact (PDC) "can be used in drilling tools (e.g., cutting elements, gage trimmers, etc.), machining equipment, bearing apparatuses, wire-drawing machinery, and in other mechanical apparatuses" and "have found particular utility in cutters in rotary drill bits."  So the invention here is the business end of a drill.

    The ITC's main problem with the above claim resides in the wherein clauses.  Indeed, the ITC wrote:

    It is clear from the language of the claims that the claims involve an abstract idea—namely, the abstract idea of a PDC that achieves the claimed performance measures (G-Ratio and thermal stability) and has certain measurable side effects (specific magnetic saturation, coercivity, and specific permeability), which, as discussed below, the specifications posit are derived from enhanced diamond-to-diamond bonding in the PCDs.

    Here, the ITC seems to find that the claimed characteristics of the unleached portion are "performance measures" and appear to discount or ignore, for purposes of eligibility, the physical PDC properties that these characteristics represent.  Instead, the ITC stated that "[t]he Federal Circuit has explained that the patent eligibility inquiry requires that the claim identify how a functional result is achieved by limiting the claim scope to structures specified at some level of concreteness."

    This is a misstatement of the law.  Functional claiming is explicitly permitted by the patent statute, and using it is subject to well-known caveats, none of which are ineligibility.

    Finding the claims abstract, the ITC went on to conclude that "[t]he elements of the asserted claims—individually and as an ordered combination—do not transform the nature of the claims into something patent-eligible" because they "recite results-oriented language and the recited physical elements are conventional."  What the ITC munges in its analysis is that the claims are alleged to provide a performance improvement over prior techniques — they even take that as given, stating that the stronger PDCs of the claim "that achieve certain performance measures and desired magnetic and electrical properties" are still abstract.

    The Supreme Court and Federal Circuit have stated that providing improvements to a technology can render an otherwise abstract invention eligible.  But the ITC appears to want the claim to recite the exact PDC structure that causes it to have the claimed characteristics, regardless of any improvement provided.

    It is very hard to square this outcome with a number of Federal Circuit decisions.  For example, in Thales Visionix Inc. v. U.S., that Court found the following claim eligible because it encompassed a technological improvement:

    A system for tracking the motion of an object relative to a moving reference frame, comprising:
        a first inertial sensor mounted on the tracked object;
        a second inertial sensor mounted on the moving reference frame; and
        an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

    This claim is arguably even broader and more functional than the PDC claim above.  The ITC, however, relied on the reasoning in American Axle & Mfg. v. Neapco Holdings LLC that used a bastardized version of the Alice test made up out of thin air to find a functionally-drafted claim ineligible.  So add this case to the parade.

    A silver lining to this thundercloud is that Commissioner Schmidtlein dissented from her colleagues' reasoning and would have found the claim eligible.  Commissioner Schmidtlein focused on the improvements over the prior art that were not persuasive to her colleagues, noting that the claimed PDC "exhibits improved mechanical and/or thermal properties and performs better in high-abrasion applications, such as earth-boring drill bits."

    She also looked to the specification's teaching that the claimed characteristics relating to coercivity, conductivity, magnetic saturation, and specific permeability "reflect the extent to which the diamond grains have bonded and formed large diamond grains thereby displacing the metal catalyst in the diamond matrix."  As a result, the invention is claimed "in terms reflecting its structure, including its microstructure quantified by various measurements."

    Commissioner Schmidtlein explicitly considered the claims as a whole rather than dividing the elements into structure and measurements.  In a detailed review of the specification, she asserted that the characteristics that the majority found to be measurements were in fact tied to the improved performance of the structure.  In finding the claims directed to an eligible composition of matter, she wrote:

    Labeling certain claim elements merely as "performance standards," "results," "side effects," or "not a design choice," in my view, fails to appreciate that the claimed parameters are concrete, objective measurements for defining the invention and which reflect the diamond microstructure.  Many properties of patented materials could be described the same way.  As is often the case in materials science and chemistry, intrinsic properties like density, pH, conductivity, and melting point result from other design choices, such as the choice of chemical inputs, processing parameters, and finishing steps.  The claimed PDC involves a composition of matter that the inventors characterized based on what it is.  That a particular material property of this composition of matter "results" from other design choices does not render it abstract.

    She also found a distinction between the tangibility of the claimed invention and the precedent used by the majority, which was largely drawn to ineligible software claims involving intangible information.[1]  She further distinguished the invention over that of American Axle, in that the advance of the claimed PDC is a physical structure rather than a law of physics with unbounded parameters.

    Finally, Commissioner Schmidtlein wrote "finding claims reciting a specific, definable composition of matter as ineligible . . . suggests that the ID [final initial determination] and Majority have strayed from the preemption concerns that motivate the judicial exception to patent eligibility."

    In other words, a drill bit is not an abstract idea.

    Commission Opinion

    [1] Screaming into the void once again, I remind the world that all software has a tangible representation and that, when executed by hardware, has a tangible effect. 

  • The AI-Assisted Patent Attorney

        By Michael Borella —

    When boiled down to a fundamental level, all technologies are double-edged swords.  A spear can be used to hunt game or to wage war.  A hammer can be used to build a shelter or to murder fellow humans.  Social media can be used to connect lonely and geographically-distanced affinity groups in an emotionally meaningful way or to foster misinformation and possibly even genocide.

    Artificial intelligence (AI) is no different.

    We are largely unaware of the prevalence of AI.  From content recommendation, to detection of financial fraud, to drug discovery, to spam filters, these computational models exist in the background of everyday life.  AI mostly hangs out behind the scenes impacting our lives in invisible ways.  But the slow rollout of autonomous vehicles and the significantly faster adoption of personal digital assistants are more overt examples.

    In science fiction, there is no shortage of utopian stories in which menial tasks carried out by humans are performed by various types of robots, ostensibly leaving humans with more time to think, create, relax, and enjoy life.  In reality, replacement of human labor with non-intelligent automations has so far proven to be disruptive to many societies.  For the most, part knowledge workers such as lawyers have escaped this disruption.  We believe, perhaps arrogantly, that the value we provide to our clients requires a generalized intelligence and a sense of empathy that is missing from modern AI.  Thus, we may look down our noses at the thought of incorporating AI into our workflows.

    It is time to reassess that viewpoint.

    All lawyers, especially those of us in patent law, employ various types of technological assists.  We draft, edit, and review on computers.  We look things up in search engines and Wikipedia.  We use docketing software and reminders to stay on top of our schedules and deadlines.  The technology-assisted lawyer is already here, and those who eschew these technologies are hard-pressed to keep up.

    But let's not forget the aforementioned dual nature of these technologies.  The same tools that help us do our jobs can also distract us with non-stop notifications.  Moreover, search engine results can be misleading, and Wikipedia can contain mistakes.  But we've adapted to use these tools by applying the same skeptical and inquisitive frame of mind that makes us suited for the profession.  We take non-verified information for what it is — information.  When in doubt, we double and triple source it.  Indeed, being a patent attorney who needs to understand new and complex science and engineering inventions would be frustrating and hard if not for our technological assists even accepting that they are not 100% reliable.

    Generative AI is yet another assistive tool, though with bigger caveats.

    The latest large language models, such as ChatGPT, are remarkably good at producing human-like text focused on a particular topic.  While ChatGPT output generally falls far short of a well-trained and experienced human author, it can often exceed the quality of writing of an average human.  Thus, it is premature to state that patent lawyers (or other types of lawyers) are going to be replaced anytime soon.  However, ignoring the trends in large language models may cause some of us to be gradually obsoleted.

    Currently, these models are useful yet unreliable.  They frequently produce insightful results, but also can "hallucinate" pure nonsense, falsehoods, and fabrications.  This is because they are little more than sophisticated sentence autocompleters, with arguably no understanding of what they write.  Still their output can be cogent and detailed, in the form of a paragraph or essay.

    Thus, one might be tempted to cut and paste these results into a legal document.  Of course, that would be a mistake at least due to said hallucinations.  Instead, large language model output, when relevant, should be edited and/or recrafted.  In a sense, this is not that different from what one might do when paraphrasing or otherwise incorporating information found in a web search, in case law, or from Wikipedia.  But large language models put you closer to the finish line by writing a first draft for you.

    For example, when writing a patent application, one might describe how an invention can be used.  It could make a handful of existing technologies more efficient — faster, better, etc.  We can spend an hour or two writing descriptions of each of these technologies from scratch, or we can farm that task out to ChatGPT.  Within minutes it will provide workmanlike descriptions that can be edited for stylistic consistency and accuracy,[1] and then we can explain how the invention improves each.

    Not unlike junior associates or talented paralegals, today's large language models can help us shave off a couple of hours of time per application by helping us write the background section and describe the prior art.  Beyond that, current technology is hit or miss.  For example, ChatGPT can draft patent claims but there are numerous reasons not to use it for this purpose.

    Like their predecessors, these tools can be used for various purposes, some constructive and other destructive.[2]  The key is to use them for what they are good at doing, and not for tasks at which they are likely to fail.  Over time, ChatGPT may evolve to a point where it can automate even more of the drafting process, perhaps even taking a first pass at office action responses, as well as validity or invalidity arguments.  This may be as little as five to ten years out, though no one knows for sure whether these models will continue to improve at their current pace or hit some unforeseen plateau.

    Regardless, the AI-assisted patent attorney is just the latest iteration of the technology-assisted patent attorney.  As the world changes, we need to be flexible and adapt to new professional and business realities.  ChatGPT and its many rival models that are in the process of development and launch represent just one of these realities.

    [1] In this scenario, ChatGPT is likely to provide a reasonably on-point result because it is describing something well-known. 

    [2] One of the more troubling abilities of ChatGPT is that it can reduce the marginal cost of generating massive amounts of disinformation to nearly zero.  In the wrong hands and without safeguards built into the model, it may not be long before our social media and news channels are overflowing with nonsense at a level well beyond what we already see.  This is not quite what Orwell predicted, but likely just as bad. 

  • MBHB Webinar on Software and Business Method Patent Eligibility

    MBHB Logo 2McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled "The Weird and Evolving Landscape of Software and Business Method Patent Eligibility: MBHB Webinar" on March 8, 2023 from 10:00 am to 11:15 am (CT).  In this presentation, MBHB attorney and Patent Docs author Michael Borella will discuss how patent eligibility is currently viewed by the USPTO and courts, appeals statistics from the PTAB, and what a patentee can do to navigate this treacherous landscape.

    While there is no fee to participate, attendees must register in advance.  Those wishing to register can do so here.  CLE credit is pending for the states of California, Illinois, New Jersey, New York, North Carolina, and Virginia.