LSPN 19: PTAB and ‘languishing’ STRONGER Act on 2020 agenda
While the next Alice or Mayo is unlikely to be handed down next year, there are many slightly less “revolutionary" developments likely to crop up in 2020, according to Charles Larsen, partner at White & Case.
Larsen yesterday, October 16, provided an overview on the US patent law outlook at the Life Sciences Patent Network Fall in San Francisco.
First on the agenda was Oracle v Google, which Larsen dubbed a “clash between two titans”.
Dating back to 2010, the dispute began when Oracle filed a copyright infringement suit against Google, accusing the search engine of using its Java application program interface’s (API) in the Android operating system. On appeal, the US Court of Appeals for the Federal Circuit concluded that APIs could be protected by copyright.
“This was not just line-by-line words on a page but the structure. It’s different from what we have usually thought about the concept,” said Larsen.
He added: “If you’re working on software-based medical devices, medical diagnostics or digital health, this could matter. It could be an opportunity or a curse—but it’s potentially a new angle on protection strategies.”
Pandora’s box and a languishing act
Larsen also discussed a series of cases on appeal, many of which target the jurisdiction of the Patent Trial and Appeal Board (PTAB).
Polaris Innovations v Kingston Technology is the “latest in a long line of challenges to PTAB and its authority”, he said. Polaris has argued that administrative patent judges of the board are not “inferior” officers under the Appointments Clause of the US Constitution and are actually “principal” officers who should be nominated by the president and confirmed by the Senate.
Larsen added that if the court decides a PTAB judge is a principal officer, it “opens up a Pandora’s box”.
Meanwhile, Berkheimer v HP awaits a grant of certiorari before the US Supreme Court. Larsen says this case, which deals with whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent, is one of the most interesting for the year ahead.
“The Federal Circuit held that it is a question of fact, which means that the question of patent eligibility has to go back to the jury. It’s a lot harder to get kicked out of litigation as a patent owner earlier on in a section 101 motion [on this basis],” says Larsen.
However, Larsen predicts that many of the cases which deal with section 101 are unlikely to be picked up by the Supreme Court, although he believes that the Oracle case has a 50/50 chance of being granted cert.
Also on the agenda was the Support Technology and Research for Our Nation’s Growth and Economic Resilience Patents Act of 2019 (STRONGER Patents Act of 2019), which aims to weaken the purpose of post-grant proceedings.
In September, the Senate Judiciary Committee’s Subcommittee on IP convened to discuss the act, which has bipartisan support.
Larsen expects the STRONGER to “languish for a while”, adding that there doesn’t seem to be a lot of momentum for it, with other things going on in the legislature that seem to command more attention.
Finally, and unsurprisingly, Larsen noted that the patenting of artificial intelligence (AI)-generated inventions will play out in 2020.
In August, a team at the University of Surrey in the UK filed patent applications at the European Patent Office, USPTO, and the UK Intellectual Property Office which list an AI application as the sole inventor.
“I suspect there will be a lot more hot air over this before any significant guidance [on whether AI can be an inventor] will be brought down,” Larsen concluded.
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Ryan Abbott, professor of law and health sciences at the University of Surrey, led the team behind the AI patent applications. Abbott will be speaking at LSPN Europe on Thursday, November 21.
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