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Good News for Patentees: Bipartisan NSCAI Invokes National Security in Calling for Legislation to Clarify Patent Eligibility

Reported by Alden Abbott on IP Watchdog

The National Defense Authorization Act of 2019 created a 15-member National Security Commission on Artificial Intelligence (NSCAI) to “review and advise on the competitiveness of the United States in artificial intelligence, machine learning, and other associated technologies, including matters related to national security, defense, public-private partnerships, and investments.” The NSCAI released its final Report to the President and Congress on March 1, 2021. The Report details the importance of a strong and coherent intellectual property law system to U.S. national security interests, particularly with regard to technological advancement. The Report gives specific attention to Section 101 reform. According to Alden Abbott, national security is not the only “underappreciated aspect of Section 101 reform.”

Clarification of patentability, emphasizing a broad understanding of patentable subject matter, would enhance competition and thereby promote economic welfare. The economic logic is straightforward. Clarifying the expansive subject matter of inventions that may qualify for a patent (if they also meet the separate Patent Act requirements of novelty, non-obviousness, and utility) would engender additional innovative activity in a wide variety of industries. The new and improved products and processes that resulted would enhance the quality of goods and services in many market sectors (such as medical diagnostics, for example), thereby bestowing substantial benefits on consumers and creative producers. What’s more, a rising pace of innovation would stimulate competition in affected markets, as firms strove to match their competitors’ inventive improvements so as to meet consumer demand and retain customers. Under innovation-based competition, the most creative firms in this race would thrive, consumers would benefit, and total economic surplus would expand.

Abbott expresses his belief that clarifying patentable subject matter would not only strengthen national security, but also have monumental effects on technological progress and incentivize innovation. Because the Report emphasizes the impact that Section 101 reform has on national security—a viewpoint not previously expressed—the hope is that the Report will garner wider interests and “provide new bipartisan impetus for serious congressional consideration of legislative changes to clarify patent eligibility.”

Dish Rejected in Bid to Revive Data Compression Patent Challenge

Reported by Matthew Bultman on BloombergLaw

Dish Network LLC failed to convince the Federal Circuit to revive its challenge to a Realtime Adaptive Streaming LLC data compression patent due to the one-year time limitations. The Federal Circuit clarified that a Patent Trial and Appeal Board decision to “deinstitute” review is not appealable. The court noted that the Supreme Court ruling in Thryv, Inc. v. Click-to-Call Technologies, which addressed the issue of appealability of certain PTAB decisions, does not undermine this rule.

Sling TV, a wholly owned subsidiary of Dish Network, asked the PTAB to review the data compression patent in July 2018.

After the PTAB agreed to institute review, the Precedential Opinion Panel issued a decision in GoPro, Inc. v. 360Heros, Inc. finding that service of an infringement suit—even when a party doesn’t have standing to sue or a pleading is otherwise deficient—triggers the time bar. That meant Sling’s petition was too late.

Additionally, the Federal Circuit stated that Dish and its Sling TV service did not present a “colorable constitutional claim” and thus, their petition for mandamus was denied. In Mylan Laboratories Ltd. v. Janssen Pharmaceutica, the court stated that a mandamus petition was an appropriate way to challenge a review denial but is seldom available, except when there are constitutional claims.

Method for Determining Haplotype Phase Found Subject Matter Ineligible

Reported by Amy Mahan for The National Law Review

In an appeal from a final rejection of a pending application, the Federal Circuit held that claims directed to methods for determining “haplotype phase” were correctly rejected under 35 USC § 101 as subject matter ineligible. The patent claim involved a process for determining a haplotype phase, which is “a scientific way of describing the methodology of determining from which parent a particular allele (or gene) is inherited.” The patent examiner and the Patent Trial and Appeal Board found that the claimed process could be characterized as a mathematical algorithm and therefore patent ineligible subject matter. The Federal Circuit agreed. Applying the Alice framework, the Federal Circuit concluded that the claims were directed to an abstract mathematical calculation. Moreover, the court held that the claims did not provide an inventive concept that transformed the abstract idea into patent eligible subject matter.

The Court reasoned that the representative claim “recites no steps that practically apply the claimed mathematical algorithm; instead [the claim] ends at storing the haplotype phase and ‘providing’ it ‘in response to a request.’”

Furthermore, the Federal Circuit noted that while claimed inventions may constitute a novel or different use of a mathematical or scientific process, these algorithms, without more, have long been held as patent ineligible.