After reflecting upon the events of the past twelve months, Patent Docs presents its eighth annual list of top patent stories. For 2014, we identified eighteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) the greatest impact on patent practitioners and applicants. Today, we count down stories #18 to #15, and then over the next few days, we will work our way towards the top stories of 2014. As with our other lists (2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look. As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know. In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2014" on January 20, 2015 from 10:00 am to 11:15 am (CT). Details regarding the webinar can be found here.
18. White House Begins to Implement Initiatives to "Foster innovation"
In June of 2013, the White House released a Fact Sheet on the Administration's task force on high-tech patent issues providing seven different legislative recommendations and five executive actions (see "'When the Patent System is Attacked!' -- The White House Task Force on High-Tech Patent Issues"). In 2014, the White House took the first steps toward implementing the executive actions. The step that attracted the most attention was the U.S. Patent and Trademark Office's publication of a notice of proposed rulemaking in which the Office proposed changes to the rules of practice that it claimed would "facilitate the examination of patent applications and . . . provide greater transparency concerning the ownership of patent applications and patents." The proposed changes to the rules would require that the "attributable owner" be identified at the time an application is filed (or shortly thereafter), during the pendency of an application when there is a change in the attributable owner (within three months of such change), at the time the issue fee is paid, when maintenance fee payments are made, and if a patent becomes involved in supplemental examination, ex parte reexamination, or a trial proceeding before the Patent Trial and Appeal Board. In February, the White House provided an update on the five executive actions, "announcing major progress" on the initiatives that the Administration declared would help combat so-called "patent trolls." One of the initiatives involved the launching of a new "on-line toolkit" "[t]o help level the playing field and ensure individuals and businesses know their rights and are aware of available resources before entering into costly litigation or settlements." With respect to the White House's initiative to promote transparency concerning patent ownership, Hal Wegner stated in his e-mail newsletter in February that while "attempts to minimize comment [on the proposed rulemaking regarding attributable owner identification] have involved suppression of existing comments as if this will perhaps lead to the public falling asleep at the comment switch," "the leadership of the Patent Office has been sheltered from questioning by the public, while the Administration’s lobbyist group, 'Business Forward', continues to have access to PTO leadership" (emphasis in original).
For information regarding this and other related topics, please see:
• "White House Seeks to Promote Transparency Concerning Patent Ownership," February 24, 2014
• "The White House Releases Update on "Protecting American Inventors and Innovators"," February 20, 2014
• "USPTO Proposes Rules Changes to Require Identification in Applications and Patents of Attributable Owners," January 28, 2014
17. Federal Circuit Dismisses Consumer Watchdog Appeal for Lack of Standing
In June, the Federal Circuit dismissed an appeal by Consumer Watchdog from a decision of the Patent Trial and Appeal Board affirming the patentability of claims 1-4 of the Wisconsin Alumni Research Foundation's U.S. Patent No. 7,029,913, which is directed to a replicating in vitro cell culture of pluripotent human embryonic stem cells derived from a pre-implantation embryo. In dismissing the appeal, the Federal Circuit determined that Consumer Watchdog had failed to establish an injury in fact sufficient to confer Article III standing because it had failed to identify any alleged injury aside from the Board denying Consumer Watchdog the particular outcome it desired in the reexamination of the '913 patent. Given that Consumer Watchdog had been seeking to invalidate the patent as being invalid for encompassing ineligible subject matter, but for the dismissal for lack of standing, the appeal might have helped elucidate how the Federal Circuit viewed the patent eligibility of subject matter other than nucleic acids after The Supreme Court's decision in Association for Molecular Pathology v. Myriad Genetics, Inc.
For information regarding this and other related topics, please see:
• "Consumer Watchdog v. Wisconsin Alumni Research Foundation (Fed. Cir. 2014)," June 5, 2014
• "Consumer Watchdog Replies to United States Brief on Standing Issue," February 11, 2014
• "United States Argues That Consumer Watchdog Lacks Standing to Appeal Board Decision on WARF Patent," February 6, 2014
16. Federal Circuit Decisions in Terminal Disclaimer Cases Serve as Reminder of Traps for the Unwary
Two decisions by the Federal Circuit in June and December served as a reminder to applicants and practitioners that patent law remains "full of traps for the unwary." In Dinsmore, the Court affirmed a final rejection by the U.S. Patent and Trademark Office, which had refused to accept a reissue declaration in which the patentee indicated that the "error" in the patent that made it defective was the inadvertent filing of a terminal disclaimer. In Japanese Foundation for Cancer Research, the Federal Circuit reversed a District Court determination ordering the U.S. Patent and Trademark Office to withdraw an improperly filed terminal disclaimer. In distinguishing the facts of the instant case from the Court's earlier decision in Carnegie Mellon Univ. v. Schwartz, the Court indicated that Carnegie Mellon had intended to file a terminal disclaimer but had erred in identifying the correct patent serial number, whereas here the issue was whether the Office could withdraw a disclaimer that was intentionally filed (in the correct patent), i.e. where there was not the kind of error in Carnegie Mellon that justified the contrary results.
For information regarding this and other related topics, please see:
• "Japanese Foundation for Cancer Research v. Lee (Fed. Cir. 2014)," December 11, 2014
• "In re Dinsmore (Fed. Cir. 2014)," June 10, 2014
15. Federal Circuit Hears Oral Argument in Ariosa v. Sequenom
In the context of the controversy caused by the U.S. Patent and Trademark Office's Myriad/Mayo guidance, the Ariosa Diagnostics v. Sequenom case worked its way through the appeal process with oral argument before the Federal Circuit taking place in November. A little more than a year earlier, the Northern District of California had granted summary judgment for declaratory judgment plaintiff Ariosa Disgnostocs, finding that Sequenom's claimed method for detecting a paternally inherited nucleic acid of fetal origin was not patent eligible. Among the controversial aspects of the case, was the District Court's determination that Sequenom's argument that there were alternative methods of detecting cffDNA available was unpersuasive because "Sequenom has failed to present any evidence showing that any of these alternative methods are practical and commercially viable" (emphasis added). Regardless of where the Federal Circuit comes down on this case, it will likely make a return visit to next year's list of top stories and likely impact future iterations of the USPTO's guidance on subject matter eligibility.
For information regarding this and other related topics, please see:
• "Genetic Technologies Ltd. v. Laboratory Corp. of America Holdings (D. Del. 2014)," November 24, 2014
• "Ariosa v. Sequenom -- Ariosa's Responsive Brief," November 11, 2014
• "PTAB Decides Inter Partes Review of Patent at Issue in Ariosa v. Sequenom," September 15, 2014
• "Amicus Briefs Urging Reversal Filed in Ariosa Inc v. Sequenom, Inc.," March 6, 2014
• "Sequenom Files Opening Brief in Appeal of Summary Judgment on Section 101 Grounds," January 30, 2014
