Welcome to Skilled in the Art. I’m Law.com IP reporter Scott Graham. This week I’ll be looking at the PTO’s new patent cover, HP’s pushback on the Berkheimer patent eligibility decision, and another big IP hire by King & Spalding. As always, email me tips on anything IP and find me on Twitter @scottkgraham.
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Nope, Trump Won’t Appear on New Patent Cover
The U.S. Patent and Trademark Office has been teasing the unveiling of its new patent cover for a few weeks now. Since I hadn’t heard any talk of this initiative under the Michelle Lee administration, it got me wondering if President Trump‘s name or likeness might be featured on the new cover.
On Sunday, PTO Director Andrei Iancu and Commissioner of Patents Drew Hirshfeld revealed the new cover at SXSW in Austin, to mark the issuance of the United States’ 10 millionth patent. No Trump. Instead, a tasteful, contemporary makeover of an otherwise dry document. It’s only the third cover in the agency’s history.
The new cover subtracts some of the legalese from the previous version and, as referenced by Iancu in remarks unveiling the design, it adds the Constitution’s promise “to promote the progress of science and the useful arts.” This arguably strikes some balance with the featured language, which of course grants the owner the right to exclude others from making, using and selling the patented invention.
Iancu was flanked by Bob Metcalfe, who invented what became known as ethernet while working at Xerox, and Susann Keohane, IBM’s global leader for the Aging Initiative. “They exemplify the brilliance of American invention, working in the intellectual property system,” Iancu said. It’s no accident that such innovation occurs in the U.S., “where patent rights are written into our Constitution with the explicit goal of promoting human progress.”
HP Asks Federal Circuit to Reconsider New Alice Spin
HP has made its pitch for the Federal Circuit to reconsider its blockbusterBerkheimer decision on patent eligibility. Or, maybe more realistically, it’s previewing its upcoming cert petition to the Supreme Court.
There aren’t too many surprises in the petition, which is signed by Morgan, Lewis & Bockius partner Allyson Ho of Oil States fame. Ho argues that the decision works “a sea change” in the court’s patent eligibility jurisprudence. She says it’s contrary to multiple Federal Circuit and Supreme Court precedents that have ruled patent eligibility is a question of law—not fact—to be decided by a judge at an early, “threshold” stage of the proceedings.
Treating eligibility as a factual matter will “make patent litigation more complex, expensive, and lengthy.” Hard to argue with that! Ho notes that U.S. District Judge Marilyn Huff of San Diego has already canceled an Alice summary judgment hearing on the basis of Berkheimer.
Ho also argues the Federal Circuit has narrowed the Alice Step 2 test by limiting it to “whether the invention describes well-understood, routine and conventional activities.” Ho says that language, which appears in the Supreme Court’s seminal Alice and Mayo decisions on patent eligibility, “can’t be squared” with other language commanding that the claims “transform a patent-eligible abstract idea into a patent-eligible invention.”
This strikes me as the weakest part of HP’s petition. “Conventional” activity is the framework for analyzing whether claims are transformational. And by the way, Mayoand Alice never say “well-understood, routine and conventional,” as Ho puts it. It’s possible that any three of those conditions would suffice.
Ho argues that under Berkheimer, no case going forward will get resolved on summary judgment. “Indeed,” she argues, “under the panel decision, the claims ruled patent-ineligible in Mayo and Alice would have survived summary judgment and proceeded to litigation. That cannot be right.”
I’m not sure if that’s true or not. But it certainly sounds like the kind of argument that could get the Supreme Court’s attention.
The Return of the Living Patents
Two zombie patents have come back to life.
During arguments earlier this year, Judge Raymond Chen referred to patents SimpleAir is asserting against Google‘s cloud messaging services as “zombie patents.” That’s because SimpleAir has been persistent: After winning $85 million in a jury trial but then losing on appeal, SimpleAir then asserted continuations of the same patents against the same Google products, but lost at trial.
Now SimpleAir is trying a third time with a new set of continuation patents, but U.S. District Judge Rodney Gilstrap of the Eastern District of Texas stopped the suit based on claim preclusion, among other reasons.
That was an error, Chen and Judges Alan Lourie and Jimmie Reyna ruled Monday. “Although we agree with Google that there is substantial overlap between SimpleAir IV and SimpleAir I–III,” Lourie wrote, “ultimately we agree with SimpleAir” that the record does not support claim preclusion.
“Continuation patents are an important part of our patent system,” said Jeff Eichmann of Dovel & Luner, who argued the appeal for SimpleAir. “This opinion reaffirms their value by rejecting Google’s attempt to treat all continuation patents in a family as one patent merely because of the routine filing of terminal disclaimers.”
Eichmann and SimpleAir aren’t out of the woods yet. “We do not see how this is a fundamentally different invention from those patents asserted in the previous suits,” Lourie wrote. Gilstrap will have to decide that issue on the merits, but he can do it without claim construction if he chooses, Lourie added.
But Eichmann said he’s confident. “We look forward to proceeding in the district court,” he said, “where we will establish that the claims of the asserted patents are not essentially the same as those previously litigated and are infringed by Google.”
Who’s on the Move?
King & Spalding has made its second big IP hire this month. After bringing Tom Frielfrom Cooley, K&S announced that Lori Gordon, co-chair of IP boutique Sterne, Kessler, Goldstein & Fox‘s PTAB practice, will be joining the firm’s DC office.
“Lori’s expertise with IPRs allows King & Spalding to offer a full patent litigation defense strategy for clients whether it is before the PTAB or a trial in federal court,” King & Spalding’s Andy Bayman said in a news release. “Lori is entrepreneurial with excellent connections in the industry, and is a great addition to the firm’s IP and trial practices.”
Sterne Kessler is a big player at the PTAB. Unified Patents ranks the firm No. 14 firm for IPR petitioners and No. 10 for patent owners.
“King & Spalding is a known litigation powerhouse that complements my practice well,” Gordon said in the news release.
Meanwhile, William Stroever is decamping from Greenberg Traurig to join 135-lawyer Cole Schotz. Stroever, who will be based in the firm’s New Jersey office, will serve as co-chair of the firm’s intellectual property department. His practice is focused on trademark protection, brand development, and matters pertaining to copyright, trade secrets and domain name issues.
That’s all for today. I’ll be back Friday with some thoughts on the arguments over PTO attorney fees and the Stairway to Copyright Heaven.