Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Wed, 26 Jul 2017 06:41:00 +0000 Floodlight Design CMS In The Press:<br>IPWATCHDOG turns to Partner Anthony F. Lo Cicero for his insight on Online Counterfeit Products<br> http://www.arelaw.com/publications/view/inthepress072017/ <p>&nbsp;<a href="https://www.google.com/url?rct=j&amp;sa=t&amp;url=http://www.ipwatchdog.com/2017/07/20/growing-problem-online-counterfeit-products/id%3D85846/&amp;ct=ga&amp;cd=CAEYACoUMTU0OTM2OTE0MDE2MzkyODMxOTIyGjc4OTM0MGQ1ZTliMDhjNmE6Y29tOmVuOlVT&amp;usg=AFQjCNENPLMYLUnhyPcr3mf5p1sGh2-Dow" target="_blank"><span style="color: rgb(66, 127, 237); text-decoration-line: none;">The Growing Problem of Online Counterfeit Products</span></a></p><p><span style="font-size:9.0pt;Arial&quot;,&quot;sans-serif&quot;;Times New Roman&quot;;color:#737373;">IPWatchdog.com</span><br /><br />...&nbsp;<a href="https://www.arelaw.com/professional/alocicero/" target="_blank" rel="noopener" style="box-sizing: border-box; outline: none; transition: color 0.2s ease; color: rgb(35, 64, 143);Source Sans Pro">Anthony F. Lo Cicero</a><span style="color: rgb(34, 34, 34);Source Sans Pro">, <strong>Amster, Rothstein &amp; Ebenstein LLP</strong> and seasoned trial attorney who has represented some of the most recognizable brands in the world, sat down with IPWatchdog to discuss the importance brands using state trademarks to protect themselves from counterfeiting.</span></p> Thu, 20 Jul 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress072017/ Successful Strategies for Diagnostic Method Patents<br> Journal of Commercial Biotechnology (2017) 23(1), 60–64. doi: 10.5912/jcb783<br> http://www.arelaw.com/publications/view/062817/ This article addresses strategies used to obtain patent protection for diagnostic method patents after the 2012 Mayo decision by the U.S. Supreme Court. <div>&nbsp;</div> <div>Copies of the article can be obtained at:</div> <div><a href="http://www.commercialbiotechnology.com/index.php/jcb" target="_blank">http://www.commercialbiotechnology.com/index.php/jcb</a></div> <div>&nbsp;</div> Wed, 28 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/062817/ In The Press: <br>Law360 Reports on 2nd Circ. Says Macy’s Didn’t Infringe UK Retailer’s TM<br> http://www.arelaw.com/publications/view/inthepress062117/ <a href="https://www.law360.com/articles/937055/2nd-circ-says-macy-s-didn-t-infringe-uk-retailer-s-tm" target="_blank">Law360, Los Angeles (June 21, 2017, 10:14 PM EDT) </a>-- A Second Circuit panel agreed with a lower court Wednesday that Macy&rsquo;s &ldquo;Maison Jules&rdquo; clothing line doesn&rsquo;t infringe the trademark of U.K.-based clothing line Joules, saying the circuit&rsquo;s eight-part trademark-confusion test weighed in the U.S. retailer&rsquo;s favor.<br /><br />Macy's is represented by <a href="http://www.arelaw.com/professional/alocicero/" target="_blank">Anthony F. LoCicero</a>, <a href="http://www.arelaw.com/professional/rmandaro/" target="_blank">Richard S. Mandaro</a>, and <a href="http://www.arelaw.com/professional/rjain/" target="_blank">Reena Jain</a> of Amster Rothstein &amp; Ebenstein LLP.<br /><br /><a href="/images/file/2nd%20Circ_%20Says%20Macy%E2%80%99s%20Didn%E2%80%99t%20Infringe%20UK%20Retailer%E2%80%99s%20TM.pdf" target="_blank">View pdf here</a> Wed, 21 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress062117/ In The Press:<br>IPWatchdog Turns to Partner Charles R. Macedo for Insight on SCOTUS Decision Declaring Disparagement Clause of Lanham Act Unconstitutional in Matal v. Tam<br> http://www.arelaw.com/publications/view/inthepress062017/ <div>Industry Reaction to SCOTUS First Amendment Decision in Matal v. Tam - <a href="http://IPWatchdog.com">IPWatchdog.com</a> | Patents &amp; Patent Law<br />&nbsp;</div> <div>By Gene Quinn</div> <div>&nbsp;</div> <div><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank"><img border="0" width="150" height="150" id="_x0000_i1025" src="http://www.ipwatchdog.com/wp-content/uploads/2016/05/charles-macedo-150x150.jpg" size-thumbnail="" scale="0" alt="" /></a><br /><a href="http://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a><br />Partner, Amster, Rothstein &amp; Ebenstein LLP</div> <div><br />Today, the U.S. Supreme Court found that the Lanham Act provision prohibiting the federal registration of trademarks that &ldquo;may disparage . . . persons, living or dead&rdquo; (15 U.S.C. &sect; 1052(a)) violates the Free Speech Clause of the First Amendment, and thus is unconstitutional. While this case represents one of the rare instances in which the Federal Circuit has been affirmed by the high court, it was at the expense of the other two branches of government. Specifically, Congress was in essence found to have passed an unconstitutional law, and the P.T.O. had been &ldquo;offend[ing] a bedrock First Amendment principle&rdquo; in enforcing this unconstitutional provision: &ldquo;Speech may not be banned on the ground that it expresses ideas that offend.&rdquo; In rejecting the government&rsquo;s position, Justice Alito made clear that &ldquo;it is far-fetched to suggest that the content of a registered mark is government speech.&rdquo;</div> <div><br />Although this case was decided 8-0 (Justice Gorsuch did not participate), the concurring opinions by Justice Kennedy (with whom 3 Justices joined) and Justice Thomas showcase different rationales and reflect the hotbed of dispute underlying this case.</div> <div><em><br />Charles R. Macedo is a partner with&nbsp;Amster Rothstein &amp; Ebenstein LLP. He&nbsp;litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.</em></div> <div>&nbsp;</div> <a href="http://www.ipwatchdog.com/2017/06/20/industry-reaction-scotus-first-amendment-decision-matal-v-tam/id=84791/">http://www.ipwatchdog.com/2017/06/20/industry-reaction-scotus-first-amendment-decision-matal-v-tam/id=84791/</a>&nbsp; Tue, 20 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress062017/ Trademark Law Alert:<br>SUPREME COURT HOLDS THAT THE DISPARAGEMENT CLAUSE OF THE LANHAM ACT IS UNCONSTITUTIONAL<br> http://www.arelaw.com/publications/view/alert061917/ <div>The U.S. Supreme Court issued a decision in <i>Matal v. Tam,</i> 582 U.S. __ (&ldquo;<i>Tam</i>&rdquo;) addressing the &ldquo;disparagement&rdquo; clause of the Lanham Act, 15 U.S.C. &sect; 1052(a).&nbsp; (Justice Gorsuch took no part in the consideration of the case.&nbsp; Slip op. at 26.)<br />&nbsp;</div><div style="margin-left: 40px;">The disparagement clause of the Lanham Act provides that:</div> <div style="margin-left: 40px;">&ldquo;No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it&mdash;<br /><br />(a) Consists of or comprises . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .&rdquo;<br />&nbsp;</div><div>In its decision, the Court held that the disparagement clause &ldquo;violates the Free Speech Clause of the First Amendment.&nbsp; It offends a bedrock First Amendment principle:&nbsp; Speech may not be banned on the ground that it expresses ideas that offend.&rdquo;&nbsp; Slip op. at 1&ndash;2.&nbsp; The Court affirmed the <i>en banc</i> decision of the U.S. Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;), which held that the disparagement clause was facially unconstitutional under the First Amendment&rsquo;s Free Speech Clause.&nbsp; <i>In re Tam</i>, 808 F.3d 1321 (Fed. Cir. 2015).&nbsp;<br /><br />As a threshold issue, the Court&rsquo;s decision addresses whether the disparagement clause applies to marks that disparage the members of a racial or ethnic group.&nbsp; Slip op. at 8-12.&nbsp; Based on the &ldquo;plain terms&rdquo; of the disparagement clause, which applies to marks that disparage &ldquo;persons,&rdquo; the Court held that the disparagement clause applied to the members of a racial or ethnic group because such members were &ldquo;persons.&rdquo; &nbsp;Slip op. at 10.&nbsp; &ldquo;Thus, the clause is not limited to marks that disparage a particular natural person.&rdquo;&nbsp; <i>Id.</i><br /><br />Significantly, the Court also based its decision on its conclusion that &ldquo;[t]rademarks are private, not government, speech.&rdquo;&nbsp; Slip op. at 18.&nbsp; As such, the Free Speech Clause of the First Amendment, which applies only to private speech, applies to the disparagement clause.&nbsp; Slip op. at 12&ndash;18.&nbsp; The Court noted that a contrary conclusion&mdash;that trademarks are government speech&mdash;would have a &ldquo;most worrisome implication&rdquo; for the U. S. copyright system.&nbsp; Slip op. at 18.<br /><br />The Court also rejected arguments that the disparagement clause could be saved by analyzing it as a type of subsidized speech, or as a type of government program in which some restrictions on content and speech are permitted.&nbsp; Slip op. at 18&ndash;23.&nbsp; Finally, the Court concluded that it did not need to resolve the question of whether trademarks are commercial speech, and thus are entitled to more relaxed constitutional scrutiny, as set forth in <i>Central Hudson Gas &amp; Elec. Corp. v. Public Serv. Comm&rsquo;n of N.Y.</i>, 447 U. S. 557 (1980).&nbsp; According to the Court, the disparagement clause &ldquo;strikes at the heart of the First Amendment,&rdquo; and is too broadly drawn to withstand even the relaxed scrutiny for restrictions of commercial speech.&nbsp; Slip op. at 24&ndash;26.&nbsp;<br /><br />In separate opinions, Justice Kennedy (joined by Justices Ginsburg, Sotomayor, and Kagan) and Justice Thomas concurred in the Court&rsquo;s judgment and concurred in the majority opinion in part.&nbsp; Justices Kennedy and Thomas both expressed the view that the viewpoint discrimination at issue with the disparagement clause of the Lanham Act requires strict scrutiny, regardless of whether trademarks qualify as commercial speech.&nbsp; Kennedy, J. op. at 5&ndash;6; Thomas, J. op. at 1.&nbsp; Justice Thomas also presented his opinion that the Court should not have considered the issue of whether the disparagement clause applies to marks that disparage the members of a racial or ethnic group, since the Court declined to grant certiorari on this question.&nbsp; Thomas, J. op. at 1.&nbsp;<br /><br />We will continue to monitor developments in the law on trademarks.&nbsp; In the meantime, please feel free to contact one our attorneys regarding issues raised by this case.<br /><br />*<a href="http://arelaw.com/professional/cmacedo/">Charles R. Macedo</a>&nbsp;is a Partner, <a href="https://www.arelaw.com/professional/mmetelski/">Marion P. Metelski</a> is a Senior Counsel, and David P. Goldberg is an associate at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues.&nbsp; Messrs. Macedo, Metelski, and Goldberg may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:mmetelski@arelaw.com">mmetelski@arelaw.com</a>, and <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>. &nbsp;<br /><br />Messrs. Macedo and Goldberg represented <i>amicus curiae</i> New York Intellectual Property Law Association at the Supreme Court in <i>Tam</i>.</div> Mon, 19 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert061917/ In The Press: <br>IPWATCHDOG Turns to Partner Charles R. Macedo for his Insights on SCOTUS decision in Sandoz v. Amgen over Biosimlar Drugs<br> http://www.arelaw.com/publications/view/inthepress061417/ <p><b><font size="6"><span style="font-size: small;">Industry Reaction to SCOTUS decision in Sandoz v. Amgen</span></font></b></p> <div>By Gene Quinn</div> <div>&nbsp;</div> <div><img width="150" height="150" id="_x0000_i1025" src="http://www.ipwatchdog.com/wp-content/uploads/2016/05/charles-macedo-150x150.jpg" size-thumbnail="" scale="0" alt="" /><br /> <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a><br /> Amster Rothstein &amp; Ebenstein LLP<br /><br />In&nbsp;<i>Sandoz v. Amgen</i>, the Supreme Court addressed the &ldquo;plain language&rdquo; of a &ldquo;carefully crafted and detailed enforcement scheme&rdquo; relating to &ldquo;biologic&rdquo; drugs. Under this complex statute that was enacted as part of ObamaCare as an effort to get generic biosimilar and interchangeable biologic drugs on the market quicker if the patent hurdle can be overcome. In a unanimous decision, the Supreme Court vacated, reversed and remanded yet another Federal Circuit decision. Even when the Supreme Court agreed with part of the result arrived at by the Federal Circuit, the Court nevertheless felt obliged to explain why the Federal Circuit had the wrong reason for the correct result.<br /><br />By rejecting the availability of injunctive relief to enforce a violation of the statutory provisions, some might argue that the Court gutted the protections provided by Congress in reaching the carefully crafted compromise. However, the Court nevertheless offered a few rays of hope. &nbsp;In footnote 2, when it &ldquo;express[ed] no view&rdquo; on an alternative theory on which an injunction might issue under a different provision for this same violation of the statute. &nbsp;The Court also remanded for potential resolution under state law. The answer to these questions will no doubt be left unresolved by the Court for many more years.<br /><br />Finally, it is worth mentioning that Justice Breyer&rsquo;s concurrence is a foreshadowing of the battle we can expect to see next year (in&nbsp;<i>SAS</i>) over the continuing viability of the&nbsp;<i>Chevron</i>&nbsp;doctrine.</div> <div><em>Charles R. Macedo is a partner with&nbsp;Amster Rothstein &amp; Ebenstein LLP. He&nbsp;litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.<br type="_moz" /></em><i><br /> </i></div> <a href="http://www.ipwatchdog.com/2017/06/14/industry-reaction-scotus-sandoz-v-amgen/id=84473/">http://www.ipwatchdog.com/2017/06/14/industry-reaction-scotus-sandoz-v-amgen/id=84473/</a> Wed, 14 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress061417/ In The Press: <br>IPWATCHDOG turns to Partner Charles R. Macedo for his insights on the Supreme Court granting certiorari in Oil States<br> http://www.arelaw.com/publications/view/inthepress061317/ <b>Industry Reaction to SCOTUS Granting Cert. in <i>Oil States</i></b> <div>By Gene Quinn June 13, 2017<br /><br /><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a><br /> Amster, Rothstein &amp; Ebenstein LLP<br /><br />There is little doubt that the creation of Inter Partes Review (IPR) proceedings as part of the American Invents Act (AIA) &mdash; and to a lesser degree Post Grant Reviews (PGR) and Covered Business Method Reviews (CBM) &mdash; have had a profound impact on U.S. Patents. In these proceedings, an Article I administrative tribunal, the Patent Trial and Appeal Board (PTAB), has become the&nbsp;<i>de facto</i>&nbsp;arbitrator of whether a previously issued patent claim survives or dies.<br /><br />In the next Term, the Supreme Court will hear two important cases revolving around these new proceedings:&nbsp;<i>SAS</i>, where the Court will likely cut back or eliminate&nbsp;<i>Chevron</i>&nbsp;deference to an administrative agency; and&nbsp;<i>Oil States</i>, where the Court will address the fundamental question of whether a patent, once issued, is a &ldquo;private right&rdquo; or a &ldquo;public right.&rdquo; If the Federal Circuit maintains its zero batting average of recent times at the Supreme Court, it is forseeable that the Court will&nbsp;reverse in both instances, finding that the PTAB needs to finish completely whatever it starts, but in any event shouldn&rsquo;t be the entity that gets to hear the dispute.<br /><br /><i>Charles Macedo is a partner with&nbsp;Amster Rothstein &amp; Ebenstein LLP. He&nbsp;litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.</i></div> <div>&nbsp;<br /> <a href="http://www.ipwatchdog.com/2017/06/13/industry-reaction-scotus-granting-cert-oil-states/id=84460/">http://www.ipwatchdog.com/2017/06/13/industry-reaction-scotus-granting-cert-oil-states/id=84460/</a></div> Tue, 13 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress061317/ Patent Law Alert:<br>SUPREME COURT CLARIFIES THE RULES FOR BIOSIMILARS<br> http://www.arelaw.com/publications/view/alert061417/ <div>(June 12, 2017) &nbsp;In&nbsp;<i>Sandoz v. Amgen</i>, 582 U.&nbsp;S. ___ (2017), the Supreme Court addressed the &ldquo;plain language&rdquo; of a &ldquo;carefully crafted and detailed enforcement scheme&rdquo; relating to &ldquo;biologic&rdquo; drugs. Under this complex statute that was enacted as part of ObamaCare as an effort to get generic biosimilar and interchangeable biologic drugs on the market quicker if the patent hurdle can be overcome.&nbsp; On a bottom line basis, the Court adopted a view that will likely encourage more biosimilar and interchangeable biologic drugs to come to market quicker despite the existence of issued patents covering the original biologic drugs.<br /><i><br />Sandoz </i>addressed two important questions regarding the processes for both obtaining FDA approval of a biosimilar and resolving a patent dispute between the manufacturer of a biosimilar (&ldquo;applicant&rdquo;) and the manufacturer of a licensed reference biologic (&ldquo;sponsor&rdquo;):<br /><br />1.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether the requirement of the Biologics Price Competition and Innovation Act of 2009 (&ldquo;BPCIA&rdquo;) that an applicant seeking a license to manufacture a biosimilar under the FDA&rsquo;s abbreviated review process set forth in 42 U.S.C. &sect;&nbsp;262(k) must provide its application and manufacturing information to the sponsor is enforceable by an injunction under either federal or state law.<br /><br />The Court held that an injunction was not available under Federal Law, although it left open the possibility on remand or otherwise as to whether an injunction may be available under state law (in particular California law) or a preliminary injunction based on other parts of the patent statute.&nbsp;&nbsp; (Slip op. at 10 &amp; n.2).<br /><br />2.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether an applicant must provide notice of the commercial marketing of a biosimilar to the sponsor of the reference biologic under the BPCIA only after the licensing of the biosimilar, or if it may provide notice before the biosimilar has been licensed.<br /><br />The Court held that the applicant need not wait for a license to meet the notice requirement, thus accelerating the speed to which an applicant can get a proposed biosimilar to market. (Slip op. at 15).<br /><br />The Court agreed with the U.S. Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) that an injunction under federal law is not available to enforce the BPCIA&rsquo;s requirement that the applicant must provide its application and manufacturing information to the sponsor.&nbsp; (Slip op. at 10).&nbsp; However, the Court relied on a different rationale than the Federal Circuit. &nbsp;(Slip op. at 12).&nbsp; In reaching its conclusion, the Court (per Thomas, J.) held that, under the language and context of the BPCIA, an injunction is not available under 35 U.S.C. &sect;&nbsp;271(e)(4) if an applicant fails to provide its application and manufacturing information to the sponsor because such failure does not constitute patent infringement under 35 U.S.C. &sect;&nbsp;271(e)(2)(C).&nbsp; (Slip op. at 11&ndash;12).&nbsp; The Court further held that the sole remedy provided in the BPCIA for such failure by the applicant is that the sponsor can immediately file a declaratory judgment action for infringement under 35 U.S.C. &sect; 271(e)(2)(C)(ii).&nbsp; (Slip op. at 12).<br /><br />Interestingly, the Court &ldquo;express[ed] no view&rdquo; as to whether a US District Court could take into account an applicant&rsquo;s failure to provide its application and manufacturing information to the sponsor when it decides whether to grant a preliminary injunction against the applicant&rsquo;s marketing of the biosimilar. &nbsp;(Slip op. at 13 n.2).&nbsp; The answer to this question will no doubt be left unresolved by the Court for many more years.<br /><br />The Court declined to resolve the issue of whether an injunction is available under California&rsquo;s unfair competition law, since &ldquo;it does not present a question of federal law.&rdquo;&nbsp; (Slip op. at 14).&nbsp; The Federal Circuit had concluded that an injunction was unavailable under California law, but the Court stated that the Federal Circuit&rsquo;s holding was based on its incorrect interpretation that an applicant&rsquo;s failure to provide its application and manufacturing information to a sponsor constitutes patent infringement under the BPCIA.&nbsp; (Slip op. at 14).&nbsp; The Court remanded this issue to the Federal Circuit, and also instructed the Federal Circuit to consider whether federal law preempts an injunction under California&rsquo;s unfair competition law if such an injunction were to be available.&nbsp; (Slip op. at 15).<br /><br />The Court also held that an applicant may provide notice of commercial marketing of a biosimilar to the sponsor &ldquo;either before or after receiving FDA approval.&rdquo;&nbsp; (Slip op. at 16).&nbsp; The Court reasoned that the plain language and context of the BPCIA require only that a biosimilar be licensed on the date it is first marketed commercially.&nbsp; (Slip op. at 16&ndash;18).&nbsp; &nbsp;This holding favors earlier disclosure and will likely accelerate the speed to which an applicant can get a proposed biosimilar to market.<br /><br />Justice Breyer issued a short concurring opinion, in which he concurred in the Court&rsquo;s &ldquo;reasonable interpretation&rdquo; of the terms of the statute, but he presented his view that the FDA may have the authority to substitute its own interpretation of the statutory terms if &ldquo;a different interpretation would better serve the statute&rsquo;s objectives.&rdquo; &nbsp;(Breyer, J. slip op. at 1).&nbsp; &nbsp;&nbsp;This concurring opinion foreshadows a battle looming over the continued viability of the <i>Chevron</i> doctrine at the Supreme Court. &nbsp;It is anticipated that this battle will be the centerpiece of the Court&rsquo;s resolution of <i>SAS Institute Inc. v. Lee and ComplementSoft, LLC</i> next term.<br /><br />We will continue to monitor developments in the law on biosimilars.&nbsp; In the meantime, please feel free to contact one our attorneys regarding issues raised by this case.<br /><br />*<a href="http://arelaw.com/professional/cmacedo/">Charles R. Macedo</a>&nbsp;is a Partner and <a href="https://www.arelaw.com/professional/mmetelski/">Marion P. Metelski</a> is a Senior Counsel at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues.&nbsp; Messrs. Macedo and Metelski may be reached at&nbsp;<a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:mmetelski@arelaw.com">mmetelski@arelaw.com</a>.&nbsp;</div> Mon, 12 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert061417/ In The Press: <br>The World's Leading IP Strategists for 2017<br> http://www.arelaw.com/publications/view/inthepress061017/ Amster, Rothstein &amp; Ebenstein LLP is pleased to announce that partner Charles R. Macedo has been named by IAM as on of its IAM Strategy 300 Sat, 10 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress061017/ In The Press:<br>IPWATCHDOG turns to Partner Charles R. Macedo for his insights on the resignation of Michelle Lee as USPTO Director<br> http://www.arelaw.com/publications/view/inthepress/ Industry Reaction to the Resignation of USPTO Director Michelle Lee <div>By Gene Quinn<br /><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank"><br />Charles Macedo</a><br /> Amster Rothstein &amp; Ebenstein LLP<br /><br /><img src="/images/image/CRM%20photo%20for%20ITP%206-8-17%20article(1).jpg" width="125" height="128" alt="" /><br /><br />Michelle Lee was in charge of the US Patent and Trademark Office during tumultuous times.&nbsp; She inherited the Office after the departure of a very popular and successful administrator and his&nbsp;prot&eacute;g&eacute;.&nbsp; She was charged with numerous difficult tasks, including&nbsp;implementing the controversial AIA, an ever changing law of patent-eligibility, addressing other significant changes in the patent law arising from disagreement between the Judges at the Federal Circuit and the Justices as the U.S. Supreme Court, as well as addressing landmark decisions in trademark law also coming from the Federal Circuit and U.S. Supreme Court.&nbsp; She was one of the few Obama appointees who continued to serve under the new Administration, which presented its own unique set of challenges.&nbsp; Through it all she served the public with grace and poise.&nbsp;&nbsp; May she have the best of luck in her next endeavor and her successor have smooth sailing when the mantle is assumed.<br /><i><br />Charles Macedo is a partner with&nbsp;Amster Rothstein &amp; Ebenstein LLP. He&nbsp;litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.</i></div> <div><i>&nbsp;</i></div> <div><a href="http://www.ipwatchdog.com/2017/06/08/industry-reaction-resignation-uspto-director-michelle-lee/id=84195/">http://www.ipwatchdog.com/2017/06/08/industry-reaction-resignation-uspto-director-michelle-lee/id=84195/</a></div> Thu, 08 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress/ Patent Law Alert:<br>SUPREME COURT REVERSES FEDERAL CIRCUIT’S PRECEDENT ON PATENT EXHAUSTION<br> http://www.arelaw.com/publications/view/alert053117/ <div>(May 29, 2017)&nbsp; In<i> Impression Products, Inc.</i>, v. <i>Lexmark International, Inc., </i>581 U. S. ___ (2017) (&ldquo;<i>Impression Products</i>&rdquo;), the U.S. Supreme Court was asked to address two important questions regarding the scope of the doctrine of patent exhaustion:<br /><br />1.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether a patentee that sells an item under an express restriction on the purchaser&rsquo;s right to reuse or resell the product may enforce that restriction through an infringement lawsuit.<br /><br />2.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Whether a patentee exhausts its patent rights by selling its products outside the U.S., where American patent laws do not apply.<br /><br />In contrast to the U.S. Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;), the Court concluded &ldquo;that a patentee&rsquo;s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.&rdquo;&nbsp; (Slip op. at 2).<br /><br />In arriving at this conclusion, the Court (per Ch. J. Roberts) observed that while its decision does not preclude a patentee (or its licensee) from imposing lawful restrictions on the use of patented items, the only recourse for the patentee or a licensee for violation of those restrictions is through contract law rather than a patent infringement lawsuit.&nbsp;<br /><br />Justice Ginsburg issued her own opinion, in which she concurred &ldquo;in the Court&rsquo;s holding regarding domestic exhaustion&rdquo; but dissented &ldquo;from the Court&rsquo;s holding on international exhaustion.&rdquo;&nbsp; According to Justice Ginsburg, &ldquo;[a] foreign sale ... does not exhaust a U. S. inventor&rsquo;s U. S. patent rights.&rdquo;&nbsp; (J. Ginsburg slip op. at 1).&nbsp;&nbsp; Justice Ginsburg&rsquo;s dissent is consistent with her dissent in <i>Kirstaeng v. John Wiley &amp; Sons, Inc.,</i> 568 U.S. 519 (2013), in which she was also of the view that foreign sales of a copyrighted book should not exhaust a U.S. copyright.<br /><br />Justice Gorsuch did not participate in this decision, which was argued before he joined the Court.<br /><br />We will continue to monitor developments in the law on patent exhaustion.&nbsp; In the meantime, please feel free to contact one our attorneys regarding issues raised by this case.<br />&nbsp;</div> <div>*<a href="http://arelaw.com/professional/cmacedo/">Charles R. Macedo</a>&nbsp;is a Partner and <a href="https://www.arelaw.com/professional/mmetelski/">Marion P. Metelski</a> is a Senior Counsel at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues.&nbsp; Messrs. Macedo and Metelski may be reached at&nbsp;<a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:mmetelski@arelaw.com">mmetelski@arelaw.com</a>.<br /><br />Mr. Macedo and David Goldberg represented amicus curiae New York Intellectual Property Law Association at the Supreme Court in <i>Impression Products</i>.&nbsp;</div> Wed, 31 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert053117/ Practical Law<br>Appealing Patent Trial and Appeal Board Final Written Decisions<br> http://www.arelaw.com/publications/view/practicallaw052417/ <div><a href="/images/file/Appealing%20Patent%20Trial%20and%20Appeal%20Board%20Final%20Written%20Decisions%20(w-006-9___.pdf" target="_blank">Appealing Patent Trial and Appeal&nbsp;Board Final Written Decisions</a></div> Wed, 24 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/practicallaw052417/ Patent Law Alert:<br>SUPREME COURT REVERSES FEDERAL CIRCUIT’S DEFINITION OF CORPORATE RESIDENT FOR PURPOSES OF PATENT VENUE<br> http://www.arelaw.com/publications/view/alert052317/ <div>(May 22, 2017)&nbsp; The U.S. Supreme Court issued a unanimous (8-0) decision in <i>TC Heartland LLC v. Kraft Foods Group Brands LLC,</i> 581 U.S. __ (May 22, 2017) addressing venue in patent infringement cases.<br />&nbsp;</div> <div>The patent venue statute, 28 U. S. C. &sect;1400(b), provides that:<br />&nbsp;</div> <div style="margin-left: 40px;">&nbsp;&ldquo;[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.&rdquo;</div> <div style="margin-left: 40px;">In its decision, the Court held that &ldquo;a domestic corporation &lsquo;resides&rsquo; only in its State of incorporation for purposes of the patent venue statute [28 U.S.C. &sect; 1400(b)].&rdquo;&nbsp; Slip op. at 2.&nbsp; The Court reversed the decision of the U.S. Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;) below and remanded the case to the Federal Circuit for further proceedings.<br />&nbsp;</div> <div><i>TC Heartland</i> reverses a line of authority from the Federal Circuit which dates back to at least 1990 in <i>VE Holding Corp. v. Johnson Gas Appliance Co.</i>, 917 F.2d 1574 (Fed. Cir. 1990).<br />&nbsp;</div> <div>Significantly, the Court&rsquo;s decision deals only with the definition of the word &ldquo;resides&rdquo; in the first clause of the patent venue statute, quoted above.&nbsp; The Court&rsquo;s decision does not address the second clause of the patent venue statute, i.e., the definition of a &ldquo;regular and established place of business.&rdquo;&nbsp; Presumably, venue in patent infringement actions will continue to lie &ldquo;where the defendant has committed acts of infringement and has a regular and established place of business,&rdquo; a factual scenario not at issue in <i>Heartland</i>.&nbsp; <i>Cf</i>. Slip op. at 3.<br />&nbsp;</div> <div>The Court noted that its decision deals with proper venue for corporations, in particular domestic corporations.&nbsp; The Court went out of its way to avoid offering any guidance on unincorporated entities (see Slip op. at 2 n.1) or foreign corporations (see Slip op. at 7 n.2).&nbsp; Those issues remain open for another day.&nbsp;<br />&nbsp;</div> <div>We will continue to monitor the law on patent venue.&nbsp; In the meantime, please feel free to contact one our attorneys regarding issues raised by this case.<br />&nbsp;</div> <div>*<a href="http://arelaw.com/professional/cmacedo/">Charles R. Macedo</a>&nbsp;is a Partner and <a href="https://www.arelaw.com/professional/mmetelski/">Marion P. Metelski</a> is a Senior Counsel at Amster, Rothstein &amp; Ebenstein LLP. &nbsp;Their practice specializes in intellectual property issues. &nbsp;Messrs. Macedo and Metelski may be reached at&nbsp;<a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:mmetelski@arelaw.com">mmetelski@arelaw.com</a>.</div> Tue, 23 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert052317/ US Supreme Court holds that supply of a single component of a multicomponent invention for manufacture abroad is not patent infringement under 35 USC § 271(f)(1) http://www.arelaw.com/publications/view/jiplp052317/ <em>Life Technologies Corp. v Promega Corp.</em>, No. 14-1538, 2017&thinsp;US LEXIS 1428, 580&thinsp;US (2017), US Supreme Court, 22 February 2017<br /><br /><div id="81318540" scrollto-destination="81318540"><span style="font-size: medium;"><b>Legal context</b></span></div><div>The issue before the Supreme Court in <em>Life Technologies Corp. v</em><em>Promega Corp.</em> was &lsquo;whether the supply of <em>a single component</em> of a multicomponent invention is an infringing act under 35&thinsp;U.S.C. &sect;271(f)(1)&rsquo; (ibid, at 4) (emphasis added). Section 271(f)(1) reads as follows:</div><blockquote><div>Whoever without authority supplies or causes to be supplied in or from the United States <em>all or a substantial portion of the components of a patented invention</em>, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. (emphasis added)</div></blockquote><div>The Federal Circuit had previously interpreted the phrase &lsquo;a substantial portion of the components of a patent invention&rsquo; as encompassing &lsquo;a single important component&rsquo; (see <em>Promega Corp. v</em><em>Life Tech. Corp.</em>, 773 F.3d 1338 (Fed. Cir. 2014)). The Supreme Court rejected the Federal Circuit&rsquo;s interpretation and held that the phrase &lsquo;substantial portion&rsquo; in Section 271(f)(1) &lsquo;has a quantitative, not a qualitative, meaning,&rsquo; and &lsquo;does not cover the supply of a single component of a multicomponent invention&rsquo; (<em>Promega</em>, at 11).<br />&nbsp;</div><div id="81318543" scrollto-destination="81318543"><span style="font-size: medium;"><b>Facts</b></span></div><div>The patent at issue in <em>Promega</em> claims a genetic testing toolkit. The kit can be used to take small samples of genetic material and then generate DNA profiles that can be used by law enforcement agencies for forensic identification and by clinical and research institutions for other purposes. Respondent Promega Corporation was the exclusive licensee of the patent and sublicensed the patent to petitioner Life Technologies Corporation for the manufacture and sale of the claimed kits for use in certain licensed law enforcement fields worldwide. After four years, Promega sued Life Technologies on the grounds that Life Technologies infringed the patent by selling the kits to clinical and research institutions that were outside the licensed fields of use.</div><div><br />During the litigation, Promega and Life Technologies agreed that the kit covered by the patent has five components, one of which is an enzyme known as <em>Taq</em> polymerase. Life Technologies made <em>Taq</em> polymerase in the United States, but made the other four components of the kit in the United Kingdom. Life Technologies then shipped <em>Taq</em> polymerase from the United States to its United Kingdom manufacturing facility, where it was combined with the other four components to assemble the kit. Promega alleged that this supply of <em>Taq</em> polymerase from the United States triggered infringement liability under 35 USC &sect; 271(f)(1).</div><div><br />At first instance (see <em>Promega Corp. v</em><em>Life Tech. Corp.</em>, District Court of the Western District of Wisconsin, 10-CV-0281 (28 March 2012)), a jury found that Life Technologies had wilfully infringed the patent. However, the District Court reversed the jury&rsquo;s verdict and granted Life Technologies&rsquo; motion for judgment as a matter of law, agreeing contention that &lsquo;there could be no infringement under &sect;271(f)(1) because Promega&rsquo;s evidence at trial showed at most that <em>one</em> component of all of the accused products, [the <em>Taq</em>] polymerase, was supplied from the United States&rsquo; (<em>Promega</em>, at 4, internal quotation marks and citation omitted). The District Court ruled that &lsquo;a substantial portion of the components&rsquo; referenced in Section 271(f)(1) &lsquo;does not embrace the supply of a single component&rsquo;.</div><div><br />The District Court&rsquo;s decision was reversed by the Federal Circuit, which held that &lsquo;there are circumstances in which a party may be liable under &sect;271(f)(1) for supplying or causing to be supplied a single component for combination outside the United States&rsquo; (ibid, internal quotation marks and citation omitted). Based on its interpretation that &lsquo;a single important component can be a &ldquo;substantial portion of the components&rdquo; of a patented invention&rsquo;, the Federal Circuit ruled that &lsquo;the single <em>Taq</em> polymerase component was a substantial component as the term is used in &sect;271(f)(1)&rsquo; (citations omitted).</div><div><br />The Supreme Court reversed the Federal Circuit&rsquo;s judgment and remanded the case for further proceedings.<br />&nbsp;</div><div id="81318549" scrollto-destination="81318549"><span style="font-size: medium;"><b>Analysis</b></span></div><div>The Supreme Court began its analysis with the interpretation of &lsquo;a substantial portion&rsquo; of the components of a patented invention required in 35 USC &sect; 271(f)(1). The court concluded that the term &lsquo;substantial portion&rsquo; in the statute refers to a <em>quantitative</em> measurement rather than a qualitative measurement.</div><div>The Supreme Court then addressed the question of &lsquo;whether, as a matter of law, a single component can ever constitute a &ldquo;substantial portion&rdquo; so as to trigger liability under &sect;271(f)(1)&rsquo; (ibid, at 8). After examining the text, context and structure of Section 271(f)(1), the court concluded that Section 271(f)(1) does not cover the supply of a single component of a multicomponent invention.</div><div>However, the court provided no guidance as to how many components of a multicomponent invention would be required to constitute &lsquo;a substantial portion&rsquo; to trigger liability under Section 271(f)(1):</div><blockquote><div>We do not today define how close to &lsquo;all&rsquo; of the components &lsquo;a substantial portion&rsquo; must be. We hold only that one component does not constitute &lsquo;all or a substantial portion&rsquo; of a multicomponent invention under &sect;271(f)(1) (ibid, at 10)</div></blockquote><div>Notably, Justice Alito&rsquo;s concurrence, joined by Justice Thomas, also emphasized this point:</div><blockquote><div>[W]hile the Court holds that a single component cannot constitute a substantial portion of an invention&rsquo;s components for &sect;271(f)(1) purposes, I do not read the opinion to suggest that <em>any</em> number greater than one is sufficient. In other words, today&rsquo;s opinion establishes that more than one component is necessary, but does not address <em>how much</em> more. (<em>Opinion of Alito J</em>, at 1)</div></blockquote><div id="81318554" scrollto-destination="81318554"><span style="font-size: medium;"><b>Practical significance</b></span></div><div>Under <em>Promega</em>, the supply of a <em>single</em> component of a multicomponent invention for manufacture abroad does not trigger patent infringement liability under 35 USC &sect; 271(f)(1), regardless of the qualitative importance of the single component in the invention.</div><div><br />Beyond this holding, however, the Supreme Court provided little practical guidance. For example, as the court itself acknowledged, <em>Promega</em> did not address how many components of a multicomponent invention would be sufficient to trigger liability under 35 USC &sect; 271(f)(1). Moreover, even though the Supreme Court took a <em>quantitative</em> approach to interpret Section 271(f)(1)&rsquo;s requirements, it provided no guidance on how to quantify &lsquo;components&rsquo; in a patented product. Hence, questions such as how to count the total number of components in a product and what constitutes a &lsquo;single component&rsquo; in a multicomponent product remain unanswered by the Supreme Court. It remains to be seen how lower courts will interpret and implement to bring further clarity to the scope of liability under 35 USC &sect; 271(f)(1).<br />&nbsp;</div> <div id="authorNotesSectionTitle" scrollto-destination="authorNotesSectionTitle"><span style="font-size: medium;"><b>Author notes</b></span></div><div content-id="jpx073-FM1"><div><div>Mr Macedo is also the author of The Corporate Insider&rsquo;s Guide to U.S. Patent Practice.<br />&nbsp;</div></div></div><div>&copy; The Author(s) 2017. Published by Oxford University Press. All rights reserved.</div> Tue, 23 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/jiplp052317/ In The Press:<br>IAM Reports on NATURE published paper "Differing Diagnoses for European and US Patents by Alan Miller, Ph.D and Brian Amos Ph.D<br> http://www.arelaw.com/publications/view/inthepress051717/ <div>IAM Reported:<br /><br /><a href="http://www.iam-media.com/blog/Detail.aspx?g=41096dda-df0d-4467-a046-b05bcfdc490e">http://www.iam-media.com/blog/Detail.aspx?g=41096dda-df0d-4467-a046-b05bcfdc490e</a></div> <div>&nbsp;</div> <div>Adding to that growing discrepancy between the US and other major patent jurisdictions, a more recent paper from two private practice lawyers found that the Supreme Court&rsquo;s decision in&nbsp;<a href="https://www.supremecourt.gov/opinions/11pdf/10-1150.pdf" target="_blank"><em>Mayo v Prometheus</em></a>&nbsp;is having a significant effect on applications for medical diagnostic patents. The authors,&nbsp;<a href="https://www.arelaw.com/professional/bamos/" target="_blank">Brian Amos</a>&nbsp;and&nbsp;<a href="https://www.arelaw.com/professional/amiller/" target="_blank">Alan Miller</a>. from Amster, Rothstein &amp; Ebenstein, looked at 31 Patent Cooperation Treaty (PCT) diagnostic applications and compared the fate of those filings in the US and Europe. While 30 of the 31 were allowed or pending (with no 101 rejection equivalent) in Europe, in the US just two had made it through, with the remaining 29 either abandoned or pending having received a 101&nbsp;<em>Mayo</em>&nbsp;rejection.&nbsp; The Intellectual Property Watch website picked up on the paper and you can see its story&nbsp;<a href="https://www.ip-watch.org/2017/05/10/us-eu-diverge-medical-diagnostic-patents/" target="_blank">here</a>.</div> <div>The Amos and Miller study is based on a small sample, but the degree to which applications have been rejected should still act as a wake-up call in the US and a sharp reminder that eligibility concerns are not all about business methods and software.</div> Wed, 17 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress051717/ In The Press: <br>IPLaw360 Reports On Amicus Briefs Supporting Petition For Certiorari Filed By Charles R. Macedo And Sandra A. Hudak At The Firm<br> http://www.arelaw.com/publications/view/inthepress051617/ <div><div style="margin: 0in 0in 0.0001pt;Times New Roman"><span style="color: rgb(51, 51, 51); font-family: Verdana, sans-serif; font-size: 8.5pt;">Law360 reported on two amicus briefs filed by Jawbone and US Inventor (on behalf of several inventors&rsquo; groups) in support of the petition for a writ of certiorari that partner Charles R. Macedo and associate Sandra A. Hudak of Amster Rothstein &amp; Ebenstein LLP filed on behalf of Broadband iTV, Inc.</span></div> <p class="MsoNormal" style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><span style="font-size:8.5pt;&#10;font-family:" new=""><a href="https://www.law360.com/ip/articles/923934/justices-urged-to-define-abstract-ideas-in-patent-law?nl_pk" target="_blank"><span style="font-size:14.0pt;font-family:">Justices Urged To Define &lsquo;Abstract Ideas&rsquo; In Patent Law</span></a><o:p></o:p></span></p> <p class="MsoNormal" style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><span style="font-size:8.5pt;&#10;font-family:">(Subscription to Law360 required to access article)<o:p></o:p></span></p> <p class="MsoNormal" style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><span style="font-size: 8.5pt; font-family: Verdana, sans-serif; color: rgb(51, 51, 51);">Link to Amicus Briefs here:&nbsp;<span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"><a href="http://www.arelaw.com/images/file/2017-05-15%20-%20Jawbone%20Amicus%20Brief%20(1).pdf" target="_blank"><span style="color:#B5002D">Jawbone Amicus Brief</span></a><span class="apple-converted-space">&nbsp;</span>&amp;<span class="apple-converted-space">&nbsp;</span></span></span><span class="MsoHyperlink"><span style="color:#B5002D"><a href="http://www.arelaw.com/images/file/2017-05-15%20-%20US%20Inventor%20Amicus%20Brief.pdf" target="_blank"><span style="font-size: 8.5pt; font-family: Verdana, sans-serif; color: rgb(181, 0, 45); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">US&nbsp;Inventor Amicus Brief</span></a></span></span><a href="/images/file/2017-05-15%20-%20US%20Inventor%20Amicus%20Brief.pdf" target="_blank"></a></p></div><p class="MsoNormal" style="margin: 0in 0in 0.0001pt; font-size: medium; font-family: " times="" new="">&nbsp;</p> Tue, 16 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress051617/ In The Press:<br>IP Watch Reports on US, EU Diverge On Medical Diagnostic Patents<br> http://www.arelaw.com/publications/view/inthepress051017/ <div>&nbsp;</div> <div>10/05/2017&nbsp;BY&nbsp;<a href="https://www.ip-watch.org/author/kim-treanor/" target="_blank">KIM TREANOR</a>&nbsp;FOR INTELLECTUAL PROPERTY WATCH&nbsp;<a href="https://www.ip-watch.org/2017/05/10/us-eu-diverge-medical-diagnostic-patents/#respond" target="_blank">LEAVE A COMMENT</a></div> <div><b>Share this Story:</b></div> <div>&nbsp;</div> <div><i>IP-Watch is a non-profit independent news service, and depends on subscriptions. To access all of our content, please&nbsp;<a href="https://www.ip-watch.org/subscription-info/" target="_blank">subscribe now</a>. You may also offer additional support with your subscription, or&nbsp;<a href="https://www.ip-watch.org/donate/" target="_blank">donate</a>.</i></div> <div>A recent article in the journal Nature Biotechnology finds that since a key United States Supreme Court decision, the European Union and United States have diverged in their patent filings for medical diagnostics.</div> <div><br /><img src="/images/image/provisionalPatent.jpg" width="100" height="49" alt="" />The&nbsp;<a href="http://www.nature.com/nbt/journal/v35/n4/abs/nbt.3839.html" target="_blank">article</a>, authored by Brian Amos and Alan Miller, attorneys with Amster, Rothstein &amp; Ebenstein, LLP, in New York, tracks the status of 31 international patent applications which claimed diagnostic or prognostic methods filed in 2013 in the US and EU. While 30 of the applications filed in the European Patent Office have either matured into patents or are still pending, 29 of the same applications in the United States have been either abandoned after receiving what the authors refer to as a &ldquo;Mayo&rdquo; rejection, or are still pending after receiving this rejection.</div> <div><br />This term refers to the decision in &ldquo;<a href="https://www.supremecourt.gov/opinions/11pdf/10-1150.pdf" target="_blank"><i>Mayo Collaborative Services v. Prometheus Laboratories, Inc</i></a><i>.</i>&rdquo; of 2012. In the case, Prometheus Laboratories had patented a diagnostic kit which was able to determine the correct dosage level for some medications used to treat autoimmune diseases. As different patients metabolised the medicines differently, the diagnostic test could determine metabolite levels in the individual patient&rsquo;s blood so that a physician could either raise or lower dosage based upon patient needs.<br />&nbsp;</div> <div>Mayo Collaborative Services then created their own diagnostic test, and Prometheus sued for patent infringement. The US Supreme Court determined that the patent was invalid, stating that the connection of metabolites produced by patients and potential changes to medicinal dosage was a &ldquo;natural law&rdquo;, and therefore unpatentable. The method of determining dosage was also determined to be routine and conventional, used by scientists in the field prior to the patent.</div> <div>Amos and Miller argue that the disjunction between the US and European requirements for diagnostic patent eligibility hinder global patent harmonisation. While the EU does place limits on diagnostic patents, it does not prohibit them outright. Amos and Miller explain that a rejection on the same grounds of Mayo in the EU would amount to a rejection based upon lack of &lsquo;industrial applicability&rsquo;. While 30 of the patents studied had objections in the EU based upon questions of novelty, inventiveness or clarity, none had objections which corresponded to a US Mayo rejection.<br />&nbsp;</div> <div>The authors acknowledge that it is not possible to completely attribute the abandonment of a patent to the receipt of a Mayo objection, but argue that the case does appear to have special importance in the fate of US diagnostic patents. They point out that prior to the decision, the US permitted more diagnostic patents than the European Patent Office in a sampling of 20 applications.<br />&nbsp;</div> <div>The authors recommend that innovators file patents in Europe for diagnostic methods in order to protect their intellectual property. They also point to the US Supreme Court&rsquo;s refusal to hear a case on a similar matter as indication that the US Congress may need to be involved to change the law.</div> <div>Clarifying to&nbsp;<i>Intellectual Property Watch</i>&nbsp;their position on potential congressional involvement, Amos and Miller said they felt the decision and subsequent law were unnecessary. &ldquo;[I]n our view,&rdquo; they said, &ldquo;judge-made law has only served to create a complete muddle regarding what constitutes patent-eligible subject matter. Our hope is that Congress will step in and clarify this situation since the federal courts have so far seemed unable or unwilling to do so.&rdquo;<br />&nbsp;</div> <div><i>Kim Treanor is an intern at Intellectual Property Watch and a student in the graduate program of International Affairs at the New School in New York, where she studies development, trade and public health.</i></div> <div>&nbsp;</div> Wed, 10 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress051017/ We Need High Court Guidance On 'Abstract Idea' http://www.arelaw.com/publications/view/050417/ <div>Law360, New York (May 4, 2017, 11:11 AM EDT) --&nbsp;<br />&nbsp;</div> <table border="0" cellspacing="0" cellpadding="0" align="right" width="80"> <tbody><tr> <td><div><img width="188" height="250" src="https://dlbjbjzgnk95t.cloudfront.net/0919000/919769/66b3b8240f4ed634c2fb04ebb69287e5b1219046-macedo.jpg" align="right" alt="Charles Macedo %&gt;" v:shapes="_x0000_s1026" /></div></td> </tr> <tr> <td><div align="center">Charles Macedo</div></td> </tr> <tr> <td><div><img width="188" height="250" src="https://dlbjbjzgnk95t.cloudfront.net/0919000/919769/901f91dc1438e81041673f902b77321de1c55faa-hudak.jpg" align="right" alt="Sandra Hudak %&gt;" v:shapes="_x0000_s1027" /></div></td> </tr> <tr> <td><div align="center">Sandra Hudak</div></td> </tr> </tbody></table> <div>In Bilski v. Kappos, 561 U.S. 593 (2010), the&nbsp;<a href="https://www.law360.com/agencies/u-s-supreme-court">U.S. Supreme Court</a>&nbsp;was faced with the challenge of defining the law of patent eligibility under 35 U.S.C. &sect; 101 for the first time since the early 1980s. The Supreme Court held that the &ldquo;machine-or-transformation test,&rdquo; while &ldquo;an important and useful clue&rdquo; of patent-eligibility, was not the sole test for determining whether an invention is a patent-eligible process. Bilski v. Kappos, 561 U.S. 593, 604 (2010). It did not establish an alternative test, but instead reviewed its previous precedent to find that the patent-at-issue was indeed invalid as directed to the abstract idea of &ldquo;hedging risk.&rdquo;<br /> <br /> In doing so, Bilski created a new form of &ldquo;abstract idea&rdquo; as a judicial exception to patent-eligibility under the statute: &ldquo;a fundamental economic practice long prevalent in our system of commerce.&rdquo; 561 U.S. at 611. Alice reaffirmed this new category of &ldquo;abstract idea.&rdquo; Alice Corp. v. CLS Bank Int&rsquo;l, 134 S. Ct. 2347, 2356 (2014).<br /> <br /> Since Alice, the lower courts and the&nbsp;<a href="https://www.law360.com/agencies/u-s-patent-and-trademark-office">U.S. Patent and Trademark Office</a>&nbsp;have struggled to define the parameters of this new form of judicial exception. For example, the Federal Circuit in Ultramercial &mdash; on its second remand from the Supreme Court &mdash; expanded the exception beyond &ldquo;fundamental&rdquo; or &ldquo;long prevalent&rdquo; practices, to include novel ideas. Ultramercial&nbsp;LLC v.&nbsp;<a href="https://www.law360.com/companies/hulu-llc">Hulu</a>&nbsp;LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). Unfortunately, the Supreme Court declined the opportunity to address that error at the time. Ultramercial&nbsp;LLC v. Wildtangent&nbsp;Inc., No. 14-1392, cert denied (S. Ct. June 29, 2015).<br /> <br /> The Supreme Court has been asked to resolve this issue repeatedly since Ultramercial, and has been asked yet again in a pending petition for a writ of certiorari filed by Broadband iTV&nbsp;Inc. (&ldquo;BBiTV&rdquo;). BBiTV&rsquo;s petition raises several important issues in the patent-eligibility analysis, such as the role of the presumption of validity, as discussed last week in our article &quot;<strong><a href="https://www.law360.com/articles/917194/time-for-high-court-to-clarify-presumption-of-patent-validity">Time For High Court To Clarify Presumption Of Patent Validity</a></strong>.&quot;<br /> <br /> With reference to the meaning of an &ldquo;abstract idea,&rdquo; BBiTV&rsquo;s petition asks the Supreme Court to decide:</div> <div>Whether the judicially-created exception for &ldquo;abstract ideas&rdquo; broadly includes any abstraction of a claim (including novel business practices or methods of organizing human activities) or only &ldquo;fundamental&rdquo; and &ldquo;long-standing&rdquo; (i.e., pre-existing) practices and methods, as recognized by this Court in Bilski v. Kappos, 561 U.S. 593, 611 (2010) and Alice Corp. Pty. v. CLS Bank Int&rsquo;l, 134 S. Ct. 2347, 2356&ndash;57 (2014).</div> <div><br /> Petition for Certiorari, Questions Presented, Question 3, Broadband iTV&nbsp;Inc. v. Hawaiian Telecom Inc., No. 16-1241 (filed April 13, 2017) (available&nbsp;<a href="http://www.arelaw.com/publications/view/amicus041417"><strong>here</strong></a>).<br /> <br /> This article first summarizes generally the prior Supreme Court guidance on patent eligibility.<br /> <br /> Then it discusses the how the BBiTV district court failed to properly apply the court&rsquo;s directives in Alice and Bilski as to this new form of judicial exception.<br /> <br /> Finally it discusses how this same error has become so rampant in the lower courts that it is time for the Supreme Court to address this issue.<br /> <br /> <strong>The Supreme Court Law of Patent Eligibility</strong><br /> <br /> The Patent Act clearly defines patent-eligible subject matter:</div> <div>Whoever invents or discovers any new or useful process, machine, manufacture or composition of matter, or any new or useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.</div> <div><br /> 35 U.S.C. &sect; 101.<br /> <br /> As the Supreme Court has repeatedly recognized, this statutory language is very broad:</div> <div>In choosing such expansive terms ... modified by the comprehensive &lsquo;any,&rsquo; Congress plainly contemplated that the patent laws would be given wide scope.</div> <div><br /> Bilski, 561 U.S. at 601 (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)); see also J.E.M. Ag Supply, Inc. v.&nbsp;<a href="https://www.law360.com/companies/pioneer-hi-bred-international-inc">Pioneer Hi-Bred Int&rsquo;l</a>, Inc., 534 U.S. 124, 130 (2001) (&ldquo;As this Court recognized over 20 years ago in Chakrabarty, the language of &sect; 101 is extremely broad.&rdquo;) (citation omitted); Chakrabarty, 447 U.S. at 308&ndash;09 (&ldquo;The relevant legislative history also supports a broad construction ... Congress intended statutory subject matter to &lsquo;include anything under the sun that is made by man.&rsquo;&rdquo;).<br /> <br /> Nevertheless, the Supreme Court&rsquo;s precedent provides three judicially created exceptions to Section 101&rsquo;s broad patent-eligibility principles: &ldquo;laws of nature, physical phenomena, and abstract ideas.&rdquo; Bilski, 561 U.S. at 601; see also Chakrabarty, 447 U.S. at 309; Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012); Association for Molecular Pathology v.&nbsp;<a href="https://www.law360.com/companies/myriad-genetics-inc">Myriad Genetics</a>, Inc., 133 S. Ct. 2107, 2116 (2013); Alice, 134 S. Ct. at 2354.<br /> <br /> Of course, as judicially created exceptions, the court has repeatedly recognized they should be narrowly applied. Alice expressly made this point: &ldquo;we tread carefully in construing this exclusionary principle lest it swallow all of patent law.&rdquo; 134 S. Ct. at 2354. At some level, &ldquo;all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.&rdquo; Id. (quoting Mayo, 566 U.S. at 71). &ldquo;Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept.&rdquo; Alice, 134 S. Ct. at 2354; see also, e.g., Myriad, 133 S. Ct. at 2116; Mayo, 566 U.S. at 71.<br /> <br /> Thus, the court has long distinguished between claims directed to an &ldquo;abstract&rdquo; idea (or one of the other patent-ineligible fundamental principles) and a practical application of an abstract idea, which is patent-eligible. As Bilski explained, &ldquo;an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.&rdquo; Bilski, 561 U.S. at 611 (quoting Diamond v. Diehr, 450 U.S. 175, 187 (1981)); see also Le Roy v. Tatham, 63 U.S. 132, 137 (1859) (&ldquo;There can be no patent for a principle; but for a principle so far embodied and connected with corporeal substances as to be in a condition to act and to produce effects in any trade, mystery, or manual occupation, there may be a patent.&rdquo;).<br /> <br /> This key principle &mdash; that a patent claim may be directed to a practical application of a fundamental principle &mdash; was expressly reaffirmed in Mayo, 566 U.S. at 71, and Alice, 134 S. Ct. at 2355.<br /> <br /> In performing this analysis, the claims must be read as a whole, and not dissected. Diehr instructs:</div> <div>It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.</div> <div><br /> 450 U.S. at 188. This point was also reaffirmed in Alice, when it required the claims to be considered as an &ldquo;ordered combination.&rdquo; 134 S. Ct. at 2359.<br /> <br /> The ultimate inquiry is whether the claim preempts an abstract idea. Alice, 134 S. Ct. at 2354 (&ldquo;We have described the concern that drives this exclusionary principle as one of pre-emption.&rdquo;) (citing Bilski 561 U.S. at 611 (explaining that upholding the patent &ldquo;would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea&rdquo;)); see also Myriad, 133 S. Ct. at 2116; Mayo, 566 U.S. at 85 (&ldquo;repeatedly emphasized this ... concern that patent law not inhibit further discovery by improperly tying up the future use of&rdquo; abstract ideas).<br /> <br /> <strong>A Bilski/Alice &ldquo;Abstract Idea&rdquo; Must Be a Fundamental or Long-Standing Concept</strong><br /> <br /> In Alice, the Supreme Court reviewed the history of its patent-eligibility precedents and recognized that, prior to Bilski, the &ldquo;abstract idea&rdquo; exception had only been applied by the court to &ldquo;mathematical formulas.&rdquo; Alice, 134 S. Ct. at 2355&ndash;58; Bilski, 561 U.S. at 610&ndash;11; see also Gottschalk v. Benson, 409 U.S. 63, 72 (1972) (claimed algorithm &ldquo;would wholly pre-empt the mathematical formula&rdquo;); Parker v. Flook, 437 U.S. 584, 594-95 (1978) (&ldquo;application&rsquo;s only innovation was reliance on a mathematical algorithm&rdquo;). In Diamond v. Diehr, the Court explained that mathematical algorithms themselves could not be patented because such &ldquo;manifestations of nature&rdquo; were not truly &ldquo;new.&rdquo; 450 U.S. 175, 189 n.12, 185, 190 (1981). Even if the algorithms were newly &ldquo;discovered&rdquo; by man, they are pre-existing truths that &ldquo;must be assumed to be within the &lsquo;prior art.&rsquo;&rdquo; Id. at 189 n.12 (emphasis added); see also Ass&rsquo;n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (&ldquo;[p]roducts of nature are not created&rdquo;); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 132 (1948) (the patent-at-issue &ldquo;was not the product of invention. There is no way in which we could call it such unless we borrowed invention from the discovery of the natural principle itself&rdquo;).<br /> <br /> Thus, prior to Bilski, the three judicial exceptions &mdash; laws of nature, natural phenomena and abstract ideas (i.e., mathematical formulas) &mdash; were pre-existing fundamental truths that exist in principle apart from any human action. See Bilski, 561 U.S. at 619&ndash;20 (Stevens, J., concurring); cf. Alice, 134 S. Ct. at 2356. In essence, these fundamental truths were treated the same.<br /> <br /> However, Bilski did not rely on the fact that the concept of &ldquo;hedging risk&rdquo; could be reduced to a &ldquo;mathematical formula&rdquo; in classifying it as an abstract idea. Instead, Bilski created a new category of &ldquo;abstract idea&rdquo; by finding the concept of &ldquo;hedging risk&rdquo; to be an &ldquo;abstract idea&rdquo; because it was &ldquo;a fundamental economic practice long prevalent in our system of commerce.&rdquo; Bilski, 561 U.S. at 611.<br /> <br /> Alice explored the bounds of an abstract idea even further. It recognized that &ldquo;hedging risk&rdquo; could have been found an abstract idea in Bilski on the alternative basis that hedging risk could be reduced to a &ldquo;mathematical formula,&rdquo; but instead expressly relied on the fact that hedging risk was an &ldquo;abstract idea&rdquo; because it was &ldquo;a fundamental economic practice.&rdquo; See Alice, 134 S. Ct. at 2356&ndash;57. It did so because the abstract idea in Alice &mdash;&nbsp;&ldquo;intermediated settlement&rdquo; &mdash; was easily identifiable as a similar &ldquo;fundamental economic practice long prevalent in our system of commerce.&rdquo; Id. at 2356.<br /> <br /> Alice supported the &ldquo;fundamental,&rdquo; &ldquo;long prevalent,&rdquo; and &ldquo;long-standing&rdquo; nature of the practice of intermediated settlement by, inter alia, citing to publications from 1896 and textbooks to demonstrate how well-known and deep-rooted an economic concept it was. Id.; see also Bilski, 561 U.S. at 611. Because intermediated settlement was so similar in kind to the &ldquo;long prevalent&rdquo; concept of hedging risk in Bilski, Alice stopped the analysis there, and did not feel a need to &ldquo;labor to delimit the precise contours of the &lsquo;abstract ideas&rsquo; category.&rdquo; Id. at 2357. Thus, the court expressly declined to expand the &ldquo;abstract ideas&rdquo; category beyond mathematical formulas and &ldquo;fundamental economic practice[s] long prevalent in our system of commerce.&rdquo;[1]<br /> <br /> However, because Alice did not &ldquo;delimit the precise contours of the &lsquo;abstract ideas&rsquo; category,&rdquo; id. at 2357, the lower court in BBiTV&rsquo;s case, like other district courts, was confused over the scope of that judicial exception. As a result, these lower courts have misapplied this doctrine and improperly expanded the &ldquo;abstract idea&rdquo; category to include &ldquo;novel&rdquo; business practices or methods of organizing human activities. Indeed, the Supreme Court&rsquo;s rationale for creating the exception to patent-eligible subject matter under &sect; 101 &mdash; that pre-existing fundamental truths such as laws of nature or mathematical algorithms are not truly the subject of &ldquo;invention&rdquo; &mdash; does not extend to newly discovered methods of organizing human activity or business practices not already known. Nor has the Court ever applied the exception for &ldquo;abstract ideas&rdquo; to such novel concepts.<br /> <br /> Yet, like many lower court decisions since Alice, the BBiTV district court applied an incorrect interpretation of the court&rsquo;s patent-eligibility precedent to misidentify an alleged &ldquo;abstract idea&rdquo; that was neither the equivalent of traditional &ldquo;preexisting, fundamental truths&rdquo; such as Einstein&rsquo;s E=mc2 or Newton&rsquo;s law of gravity, nor &ldquo;a fundamental economic practice long prevalent in our system of commerce&rdquo; such as Bilski&rsquo;s hedging risk or Alice&rsquo;s intermediated settlement.<br /> <br /> Thus, the BBiTV district court erred in defining the alleged abstract ideas by:</div> <div><br /> (1) improperly including &ldquo;novel&rdquo; business practices or methods of organizing human activities; and<br /> <br /> (2) including detail well beyond the level of detail used in Alice or Bilski.</div> <div><br /> Each of these errors is typical of the errors being committed since Alice by the lower courts and requires the court&rsquo;s correction.<br /> <br /> Specifically, the BBiTV district court identified the &ldquo;abstract idea&rdquo; as something akin to &ldquo;using the same hierarchical ordering based on metadata to facilitate the display and locating of video content.&rdquo; This is certainly neither a fundamental truth nor a longstanding economic concept, and the BBiTV district court even acknowledged that it was a &ldquo;novel&rdquo; concept. See, e.g., Broadband iTV&nbsp;Inc. v. Oceanic&nbsp;<a href="https://www.law360.com/companies/time-warner-cable">Time Warner Cable LLC</a>, 135 F. Supp. 3d 1175, 1185 (D. Haw. 2015) (&ldquo;The Court previously identified the following as the &lsquo;novel&rsquo; underlying idea of the invention: &lsquo;creating a method for uploading videos via Internet with accompanying metadata, which allows the videos to be automatically listed in a cable company&rsquo;s EPG for viewer selection.&rsquo; ... This is essentially the abstract idea identified by TWC: &lsquo;using the same hierarchical ordering based on metadata to facilitate the display and locating of video content.&rsquo;&rdquo;). This abstraction of the invention described by the &rsquo;336 patent is instead describing a specific innovation in the technological field of VOD.[2]<br /> <br /> Furthermore, the BBiTV district court&rsquo;s characterization of this detailed abstraction of the claim as an &ldquo;abstract idea&rdquo; runs afoul the court&rsquo;s warning that courts should &ldquo;tread carefully in construing this exclusionary principle lest it swallow all of patent law.&rdquo; Alice, 134 S. Ct. at 2354; Mayo, 566 U.S. at 71. After all, &ldquo;[a]t some level, &lsquo;all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.&rsquo;&rdquo; Alice, 134 S. Ct. at 2354 (quoting Mayo, 566 U.S. at 71) (emphasis added); see also Diehr, 450 U.S. at 189 n.12 (&ldquo;all inventions can be reduced to underlying principles of nature&rdquo;). And considering this detailed abstraction of the claim as the alleged &ldquo;abstract ideas&rdquo; essentially dictates the outcome of the patent-eligibility analysis before Alice step two is reached. For one, by erroneously including the &ldquo;novel&rdquo; aspects, instead of merely the &ldquo;long standing&rdquo; aspects into the alleged &ldquo;abstract idea,&rdquo; the BBiTV district court removed the aspects of the claim that in step two of the Alice analysis would be properly considered as &ldquo;something more.&rdquo; This is clearly not in accordance with the court&rsquo;s guidance in Mayo and Alice.<br /> <br /> If the BBiTV district court had recognized the relevant abstract idea to be &ldquo;delivery of content&rdquo; (which would correspond in level of abstraction to &ldquo;hedging risk&rdquo; or &ldquo;intermediated settlement&rdquo; in Bilski and Alice), then the inventive abstractions identified by these courts would, by definition, show that the claims were not directed to those broad abstract ideas under Alice step one, or, alternatively, would be enough to supply an inventive concept under step two of the Alice framework.<br /> <br /> <strong>The BBiTV District Court Errors Are Prevalent Enough to Require High Court Review and Correction</strong><br /> <br /> The errors made by the BBiTV district court are not isolated incidents. Too many district courts have followed the incorrect holding in Ultramercial, that novel and inventive business processes are &ldquo;abstract ideas,&rdquo; contrary to the limited expansion of the &ldquo;abstract idea&rdquo; exception in Bilski and Alice.<br /> <br /> For example, in&nbsp;<a href="https://www.law360.com/companies/netflix-inc">Netflix</a>&nbsp;v.&nbsp;<a href="https://www.law360.com/companies/tivo-corp">Rovi</a>, the district court repeatedly held that the &ldquo;novel abstract ideas&rdquo; of the claims-at-issue (e.g., bookmarking media files across devices) were &ldquo;abstract ideas&rdquo; nonetheless. Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927, 939, 941, 946, 948 (N.D. Cal. 2015), aff&rsquo;d without opinion, No. 15-1917 (Fed. Cir. Nov. 7, 2016).<br /> <br /> Likewise, the district court in Integrated Technological Systems v.&nbsp;<a href="https://www.law360.com/companies/first-internet-bancorp">First Internet Bank</a>&nbsp;of Indiana followed the Netflix court to find the concept of &ldquo;transferring funds between accounts without a pre-established link&rdquo; to be an &ldquo;abstract idea,&rdquo; despite its novelty. Integrated Tech. Sys. v. First Internet Bank of Ind., No. 2:16-CV-00417-JRG-RSP, 2017 U.S. Dist. LEXIS 21309, at *9&ndash;10 (E.D. Tex. Jan. 30, 2017).<br /> <br /> Similarly, in Virginia Innovation Sciences v.&nbsp;<a href="https://www.law360.com/companies/amazon-com-inc">Amazon.com</a>, the district court ignored the patentee&rsquo;s arguments at Alice step one that the defendant&rsquo;s proposed articulation of the abstract idea &mdash; &ldquo;sending video from a mobile device to a different screen&rdquo; &mdash; could not be an abstract idea because that concept was not conventional at the time of the invention. Va. Innovation Scis. Inc. v. Amazon.com Inc., No. 1:16-cv-00861, 2017 U.S. Dist. LEXIS 1917, at *24 (E.D. Va. Jan. 5, 2017). The district court, in accordance with Ultramercial, explained that it would instead consider the novelty of the invention at Alice step two. Id. at *29.<br /> <br /> Moreover, because the Supreme Court in Alice chose not to &ldquo;delimit the precise contours of the &lsquo;abstract ideas&rdquo; category,&rdquo; Alice, 134 S. Ct. at 2357, but instead found it sufficient to use previous case law (e.g., Bilski) as a guide in identifying &ldquo;abstract ideas,&rdquo; the lower courts have adopted this comparative methodology as well. Enfish, LLC v.&nbsp;<a href="https://www.law360.com/companies/microsoft-corporation">Microsoft Corp</a>., 822 F.3d 1327, 1334&ndash;35 (Fed. Cir. 2016). Yet, the lower courts have not limited the types of &ldquo;abstract ideas&rdquo; to the type of pre-existing or fundamental concepts identified by the Supreme Court. As a result, the &ldquo;narrow&rdquo; exception to patent eligibility for &ldquo;abstract ideas&rdquo; has been progressively expanded by each lower court decision &mdash; relying on other lower courts &mdash; to support a broader definition of an &ldquo;abstract idea.&rdquo; The Supreme Court&rsquo;s intervention is needed to provide some guidance as to the boundaries of the abstract idea &ldquo;exclusionary principle lest it swallow all of patent law.&rdquo;<br /> <br /> <strong>Conclusion</strong><br /> <br /> The errors by the lower courts in what constitutes an &ldquo;abstract idea&rdquo; can be traced to confusion over the different kinds of &ldquo;abstract ideas&rdquo; created by the Supreme Court: (1) mathematical formulas and algorithms (as discussed in Benson, Flook&nbsp;and Diehr) for which novelty is not relevant since they are pre-existing truths, and (2) &ldquo;fundamental economic practice[s] long prevalent in our system of commerce&rdquo; (as discussed in Bilski and Alice) for which novelty is highly relevant, as it would preclude the requirement that the practice be fundamental.<br /> <br /> Hopefully, the Supreme Court will take advantage of the opportunity to correct this misapplication of the &ldquo;abstract idea&rdquo; exception, presented by BBiTV&rsquo;s cert petition. If not, Congress may be prompted by the input of organizations such as the&nbsp;<a href="https://www.law360.com/companies/ip-owners-association">Intellectual Property Owners Association</a>,&nbsp;<a href="https://www.law360.com/companies/american-bar-association">American Bar Association</a>,&nbsp;<a href="https://www.law360.com/companies/american-intellectual-property-law-association">American Intellectual Property Law Association</a>, New York Intellectual Property Law Association and others to take more drastic actions on patent-eligibility jurisprudence.</div> <div align="center"><hr size="3" width="100%" align="center" /></div> <div><br /> <em><a href="https://www.arelaw.com/professional/cmacedo/">Charles R. Macedo</a>&nbsp;is a partner and&nbsp;<a href="https://www.arelaw.com/professional/shudak/">Sandra A. Hudak</a>&nbsp;is an associate at&nbsp;<a href="https://www.law360.com/firms/amster-rothstein">Amster Rothstein &amp; Ebenstein LLP</a>&nbsp;in New York.</em><i><br /> <br /> <strong>DISCLOSURE: Macedo and Hudak represent Broadband iTV Inc. in the Supreme Court with respect to its petition for certiorari in Case No. 16-1241, along with Paul Alston and John Rhee from&nbsp;<a href="https://www.law360.com/firms/alston-hunt">Alston Hunt Floyd &amp; Ing</a>.</strong><br /> <br /> <em>The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.</em></i><br /> <br /> [1] Indeed, both Alice and Bilski included minority opinions that would have eliminated business method patents completely, but these opinions were not adopted by the majority opinions. Compare Bilski, 561 U.S. at 609 (majority opinion), with Alice, 134 S. Ct. at 2360 (Sotomayor, J., concurring). Indeed, the majority in Bilski stated that &ldquo;Section 101 precludes the broad contention that the term &lsquo;process&rsquo; categorically excludes business methods.&rdquo; 561 U.S. at 606.<br /> <br /> [2] Indeed, the &rsquo;336 claims do not fall under any of the categories of &ldquo;abstract ideas&rdquo; recognized by the lower courts, such as &ldquo;methods of organizing human activity.&rdquo; The &rsquo;336 patent is clearly directed to an improvement to the technological field of VOD.</div> <div>&nbsp;</div> <div>All Content &copy; 2003-2017, Portfolio Media, Inc.</div> Thu, 04 May 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/050417/ Time For High Court To Clarify Presumption Of Patent Validity http://www.arelaw.com/publications/view/042617/ <div style="margin-top:6.0pt;margin-right:0in;margin-bottom:6.0pt;margin-left:&#10;0in;"><div>Law360, New York (April 25, 2017, 5:09 PM EDT) --&nbsp;<br />&nbsp;</div><table border="0" cellspacing="0" cellpadding="0" align="right" width="80"><tbody><tr><td><img width="188" height="250" src="https://dlbjbjzgnk95t.cloudfront.net/0917000/917194/aec193f9804cccd9af93e53da37d39ddd81d8352-macedo.jpg" align="top" alt="Charles Macedo %&gt;" v:shapes="_x0000_s1026" /></td></tr><tr><td><div align="center">Charles Macedo</div></td></tr><tr><td><img width="188" height="250" src="https://dlbjbjzgnk95t.cloudfront.net/0917000/917194/b270fafd86849bae152b0d2b39aa2dd9a6069f78-hudak.jpg" align="top" alt="Sandra Hudak %&gt;" v:shapes="_x0000_s1027" /></td></tr><tr><td><div align="center">Sandra Hudak</div></td></tr></tbody></table><div>In&nbsp;<a href="https://www.law360.com/companies/microsoft-corporation">Microsoft Corp</a>.<em>&nbsp;</em>v<em>.&nbsp;</em>i4i&nbsp;LP, 564 U.S. 91 (2011), the&nbsp;<a href="https://www.law360.com/agencies/u-s-supreme-court">U.S. Supreme Court</a>&nbsp;considered the role of the presumption of validity for patents, codified in 35 U.S.C. &sect; 282. The Supreme Court&rsquo;s discussion of this presumption clarified that it applies not only to validity challenges under 35 U.S.C. &sect;&sect; 102, 103 and 112, but also to patent-eligibility challenges under 35 U.S.C. &sect; 101. But despite this clear guidance from the highest court, a divergent concurring opinion by Federal Circuit Judge Haldane Robert Mayer in Ultramercial&nbsp;Inc. v.&nbsp;<a href="https://www.law360.com/companies/hulu-llc">Hulu</a>&nbsp;LLC, 772 F.3d 709 (Fed. Cir. 2014), has resulted in confusion and division in the lower courts. In Broadband iTV&nbsp;Inc. v.&nbsp;<a href="https://www.law360.com/companies/hawaiian-telcom-holdco-inc">Hawaiian Telcom</a>&nbsp;Inc. et al., No. 16-1241 (cert petition filed April 13, 2017) (&ldquo;BBiTV&rdquo;), the Supreme Court is being asked to clarify this confusion and confirm that the statutory presumption of validity set forth in Section 282 in fact applies to Section 101, like it applies to other challenges to patent validity. The failure of the Federal Circuit to correct the confusion caused by Judge Mayer&rsquo;s concurrence has resulted in the need for the Supreme Court to intervene.<br /><br /><strong>Section 282 and i4i<br /></strong><br />35 U.S.C. &sect; 282 provides in relevant part:<br />&nbsp;</div><div style="margin-left: 40px;">(a) IN GENERAL.&mdash;A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.<br />&nbsp;</div><div>In Microsoft Corp. v. i4i LP, 564 U.S. 91 (2011), the Supreme Court considered the significance of the statutory presumption of validity codified in 35 U.S.C. &sect; 282(a). It explained that, under &sect; 282, &ldquo;&lsquo;[a] patent shall be presumed valid&rsquo; and &lsquo;[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.&rsquo;&rdquo; i4i, 564 U.S. at 95, 100 (quoting &sect; 282(a)). Although the ultimate question of patent validity is a legal one, &ldquo;[i]n evaluating whether [35 U.S.C. &sect;&sect; 101, 102, 103] and other statutory conditions have been met, PTO examiners must make various factual determinations.&rdquo; Id. at 96. &ldquo;[T]he same factual questions underlying the PTO&rsquo;s original examination of a patent application will also bear on an invalidity defense in an infringement action&rdquo; before a district court. Id. at 97. The Supreme Court held that, in light of the statutory presumption of validity, a party asserting an invalidity defense bears the burden of proving invalidity and that the evidence in support of the defense must be clear and convincing. Id. at 95, 105 n.7.<br /><br />Based on this discussion in i4i, it is clear that the statutory presumption of validity under Section 282 does in fact apply to Section 101, since the legal conclusions associated with a finding of patent-eligibility and resulting in the issuance of a U.S. patent are based on underlying factual findings. As with invalidity challenges based on &sect;&sect; 102, 103, and 112, parties making validity challenges under &sect; 101 must overcome that presumption of validity. 564 U.S. at 100; accord CLS Bank Int&rsquo;l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1284 (Fed. Cir. 2013) (Lourie, J., concurring) (&ldquo;that presumption applies when &sect; 101 is raised as a basis for invalidity in district court proceedings&rdquo;), aff&rsquo;d, 134 S. Ct. 2347 (2014). Nonetheless, many lower courts have expressly failed to apply the presumption of validity to challenges under Section 101 after the Supreme Court&rsquo;s decision in Alice v. CLS Bank Int&rsquo;l, 134 S. Ct. 2347 (2014). These lower courts have followed, either directly or indirectly, the statement in a concurring opinion by Judge Mayer that &ldquo;no presumption of eligibility attends the section 101 inquiry.&rdquo; Ultramercial, 772 F. 3d at 717. Although the Federal Circuit has never adopted that errant opinion, it has also consistently failed to correct opinions from the district court that have applied that lower standard for patent-eligibility challenges.<br /><br /><strong>The BBiTV Petition</strong><br /><br />The BBiTV petition for a writ of certiorari presents three issues to the U.S. Supreme Court. The first issue, which is relevant here, is:<br />&nbsp;</div><div style="margin-left: 40px;">1. Whether the statutory presumption of validity set forth in 35 U.S.C. &sect; 282 applies to claims challenged under 35 U.S.C. &sect; 101, as set forth by this Court in Microsoft Corp. v. i4i L.P., 564 U.S. 91 (2011), when the ultimate legal conclusion relies upon underlying findings of fact, such as whether the additional novel and non-obvious elements of the claims are merely well-understood, routine, and conventional or whether they add an inventive concept.</div><div><br />The petition raises this question based on the following clear errors included as part of the district court analysis, that were not addressed by panel or en banc determinations.<br /><br />First, contrary to &sect; 282 and i4i&rsquo;s express holding, the district court expressly &ldquo;assume[d]&rdquo; that &ldquo;a presumption of eligibility&rdquo; does not apply to challenges under &sect; 101 in light of what it viewed to be &ldquo;the most recent available guidance from the Federal Circuit&rdquo; &mdash; Judge Mayer&rsquo;s concurring opinion in Ultramercial Inc. v. Hulu LLC, 772 F.3d 709 (Fed. Cir. 2014). This is clear error, yet has been repeated by countless other district courts without clear guidance from the Federal Circuit.<br /><br />Second, the district court failed to recognize that its factual determinations needed to be supported with evidence and that it could not resolve disputed facts against the nonmovant. Thus, it improperly weighed facts against the nonmovant in violation of this court&rsquo;s clear holding in Anderson v. Liberty Lobby Inc., 477 U.S. 242, 249 (1986), and it progeny. See, e.g., Tolan v. Cotton, 134 S. Ct. 1861, 1863 (2014) (per curiam) (reversing where lower court failed to follow &ldquo;the axiom&rdquo; set forth in Anderson that &ldquo;[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor&rdquo;).<br /><br />Third, the district court&rsquo;s improper factual findings against the nonmovant petitioner BBiTV actually contradicted its other corresponding findings with regard to &sect;&sect; 102 and 103. See Petition, Statement of the Case, Section E.<br /><br /><strong>The Lower Court&rsquo;s Confusion Is Pervasive</strong><br /><br />The district court in BBiTV is not the only district court to have erroneously held that the presumption of validity does not apply to patent-eligibility challenges. Amidst the general confusion as to how to apply the patent-eligibility analysis, district courts are currently split as to whether patents are entitled to a presumption of validity (i.e., eligibility) under &sect; 101. See, e.g.,:</div><ul type="disc"><li><span new="">CG Technology Development LLC v.&nbsp;<a href="https://www.law360.com/companies/bwin-party-digital-entertainment-plc">Bwin.Party</a>&nbsp;(USA), Inc., No. 2:16-cv-00871-RCJ-VCF, 2016 U.S. Dist. LEXIS 144079, at *9 (D. Nev. Oct. 18, 2016) (&ldquo;as several courts have noted, there is uncertainty as to whether a presumption of invalidity or a clear and convincing standard applies in &sect; 101 challenges&rdquo;);</span>&nbsp;</li></ul><ul type="disc"><li><span new="">Diamond Grading Technologies LLC v. American Gem Society, No. 2:14-cv-01161, 2016 U.S. Dist. LEXIS 134671, at *11&ndash;13 (E.D. Tex. Sept. 12, 2016) (explaining that &ldquo;[t]he Supreme Court and the Federal Circuit have not decided whether and to what extent the presumption of validity applies to &sect; 101&rdquo; and recommending briefing on whether the presumption applies), adopted (Sept. 29, 2016);</span>&nbsp;</li></ul><ul type="disc"><li><span new="">Front Row Technologies LLC v.&nbsp;<a href="https://www.law360.com/companies/national-basketball-association">NBA Media Ventures LLC</a>, Nos. CIV 10-0433 et al., 2016 U.S. Dist. LEXIS 116591 (D.N.M. Aug. 30, 2016) (&ldquo;District courts have interpreted the recent Supreme Court and Federal Circuit decisions in four primary ways&rdquo; regarding the presumption of validity and the clear and convincing evidence standard);</span>&nbsp;</li></ul><ul type="disc"><li><span new="">In re Activity Tracking Devices, Systems, and Components Thereof, No. 337-TA-963, 2016 ITC LEXIS 324, at *4 (I.T.C. April 4, 2016) (&ldquo;the law remains unsettled as to whether the presumption of patent validity under 35 U.S.C. &sect; 282 applies to subject matter eligibility challenges under 35 U.S.C. &sect; 101&rdquo;);</span>&nbsp;</li></ul><ul type="disc"><li><span new="">In re TLI Communications. LLC Patent Litigation, 87 F. Supp. 3d 773, 797 n.48 (E.D. Va. 2015) (&ldquo;neither the Supreme Court nor the Federal Circuit has revisited the standard of proof applicable to &sect; 101 challenges since [i4i and a]s a result of this deafening silence, district courts, not surprisingly, are split over the standard of proof applicable to &sect; 101 challenges&rdquo;), aff&rsquo;d, 823 F.3d 607 (Fed. Cir. 2016) (without commenting on the presumption);</span>&nbsp;</li></ul><ul type="disc"><li><span new=""><a href="https://www.law360.com/companies/intellectual-ventures">Intellectual Ventures I LLC</a>&nbsp;v.&nbsp;<a href="https://www.law360.com/companies/symantec-corporation">Symantec Corp</a>., 100 F. Supp. 3d 371, 379 (D. Del. 2015) (&ldquo;District Courts, including this District, have taken varying approaches&rdquo; to the presumption of validity), aff&rsquo;d-in-part and rev&rsquo;d-in-part, Nos. 2015-1769 et al. (Fed. Cir. Sept. 30, 2016) (without commenting on the presumption), en banc rehearing denied (Jan. 11, 2017).</span></li></ul><div>Some district courts have made the same error as the district court in BBiTV, holding that the presumption does not apply based on Judge Mayer&rsquo;s concurring opinion in Ultramercial. See, e.g.:</div><ul type="disc"><li><span new="">TNS Media Research LLC v. TRA Global Inc., No. 1:11-cv-04039, 2016 U.S. Dist. LEXIS 21218, at *28 (S.D.N.Y. Feb. 22, 2016) (&ldquo;The presumption of validity &mdash; and its concomitant clear and convincing evidence standard &mdash; does not apply to section 101 claims.&rdquo;), vacated (Nov. 29, 2016);</span>&nbsp;</li></ul><ul type="disc"><li><span new="">Modern Telecom Systems LLC v. Juno Online Services, No. SA CV 14-0348-DOC (ANx), 2015 U.S. Dist. LEXIS 33835, at *16&ndash;17 (C.D. Cal. March 17, 2015) (&ldquo;As Judge Mayer points out in his concurring opinion in Ultramercial, ... &lsquo;while a presumption of validity attaches in many contexts, no equivalent presumption of eligibility applies in the section 101 calculus.&rsquo;&rdquo;);</span>&nbsp;</li></ul><ul type="disc"><li><span new="">Wireless Media Innovations LLC v.&nbsp;<a href="https://www.law360.com/companies/maher-terminals-llc">Maher Terminals LLC</a>, 100 F. Supp. 3d 405, 411 (D.N.J. 2015) (&ldquo;With no authoritative law binding the Court as to an applicable standard, the Court adopts Judge Mayer&rsquo;s approach and will not afford Plaintiff&rsquo;s Patents the presumption of subject matter eligibility.&rdquo;), aff&rsquo;d without opinion, No. 2015-1634 (Fed. Cir. Feb. 8, 2016).</span></li></ul><div>Other district courts have followed the lead of other erroneous district court decisions, further perpetuating the error. See, e.g.:</div><ul type="disc"><li><span new="">Tranxition Inc. v.&nbsp;<a href="https://www.law360.com/companies/lenovo-group-ltd">Lenovo</a>&nbsp;(U.S.) Inc., No. 3:12-cv-01065-HZ, 2015 U.S. Dist. LEXIS 89593, at *10 (D. Or. July 9, 2015), on appeal, No. 15-1907 (Fed. Cir. argued Oct. 4, 2016) (&ldquo;the Federal Circuit has explained that the presumption of validity is now &lsquo;unwarranted&rsquo; when &lsquo;assessing whether claims meet the demands of Section 101.&rsquo;&rdquo;) (quoting Ultramercial presumably without recognizing the quote as coming from Judge Mayer&rsquo;s concurrence and citing Modern Telecom, 2015 U.S. Dist. LEXIS 33835 and Wireless Media, 100 F. Supp. 3d 405), aff&rsquo;d without deciding, No. 15-1907, en banc rehearing denied (Fed. Cir. Feb. 7, 2017).</span></li></ul><div>As these samplings of cases illustrate, there is a real and significant divide in the lower courts that needs to be addressed.<br /><br /><strong>The Federal Circuit Continues to Dodge the Issue</strong><br /><br />Because the Federal Circuit has repeatedly refused to take up this issue, its affirmance in BBiTV and other cases may be interpreted as sanctioning, sub silentio, the practice of not applying a presumption of eligibility. Without the Supreme Court&rsquo;s intervention, lower courts will continue to invalidate patents under &sect; 101 without adhering to the presumption of validity standard mandated by Congress in &sect; 282 and the Supreme Court in i4i.<br /><br />Both the Supreme Court and the Federal Circuit have been asked to address the role of the presumption of validity in the context of &sect; 101, see, e.g., Content Extraction &amp; Transmission LLC v.&nbsp;<a href="https://www.law360.com/companies/wells-fargo-co">Wells Fargo Bank</a>, No. 2013-1588, en banc rehearing denied (Fed. Cir. Mar. 12, 2015), No. 14-1473, cert denied (S. Ct. Oct. 5, 2015) and Tranxition&nbsp;Inc. v. Lenovo (U.S.) Inc., No. 15-1907, en banc rehearing denied (Fed. Cir. Feb. 7, 2017).<br /><br />First reports on the oral argument in Tranxition offered hope that the Federal Circuit would finally clear up the confusion caused by Judge Mayer&rsquo;s concurrence in Ultramercial.[1]<br /><br />In that oral argument Lenovo tried to encourage the court to follows Judge Mayer&rsquo;s divergent teachings:</div><div>Judge Jimmie Reyna: So if we&rsquo;re looking at Section 101, in terms of questioning whether some presumption exists, are we to say that a presumption of validity exists, or perhaps a presumption of eligibility?<br /><br />Lenovo: Well ... certainly Your Honor is making a good point. Which is that [Section 282], I don&rsquo;t believe, talks about a presumption of eligibility, it&rsquo;s a presumption of validity for the patent. ...<br /><br />Judge Raymond Chen: There&rsquo;s a presumption of novelty. There&rsquo;s a presumption of nonobviousness. There&rsquo;s a presumption that there&rsquo;s written description support. There&rsquo;s a presumption of enablement. There&rsquo;s a presumption that the claims are reasonably clear enough to be definite. Why wouldn&rsquo;t there also be a presumption of eligibility?<br /><br />Lenovo: Your Honor, I think all the ones that you just mentioned, again, the way I look at it is they are after you have figured out is this eligible or not. Once you&rsquo;ve figured out this is eligible and now you&rsquo;ve issued it as a patent, the rest of those things apply ...<br />&nbsp;</div><div>Lenovo&rsquo;s counsel then demonstrated how the problem has invaded district court&rsquo;s analyses in the context of the presumption of validity:</div><div>Judge Sharon Prost: ... The district court concluded that there was no burden on you to establish by clear and convincing evidence that the patent was invalid, right? ... Well, you&rsquo;ve gotta defend that, right?<br /><br />Judge Chen: Yeah, you want us to be the first ones ever from the history of our court to say that we don&rsquo;t have to worry about the clear and convincing evidence standard. ...<br /><br />Lenovo: ... The district court, following a lot of, some other district courts, did an evaluation of how other courts have been handling this question and concluded that . . . the clear and convincing of a standard didn&rsquo;t apply. But the court also said something I think more important, which is there&rsquo;s no factual disputes in this case. ... And his point is, the clear and convincing evidence standard is a factual standard. ...</div><div><br />Although the majority of the Tranxition panel appeared to believe that the presumption of validity does apply to challenges under Section 101, when the opinion was written, the panel dodged the issue:</div><div>Tranxition also argues that the district court erred in holding that the presumption of validity does not apply to challenges brought under 35 U.S.C. &sect; 101 and failed to apply the clear and convincing evidentiary standard. In holding that the presumption of validity does not apply to challenges under &sect; 101, the district court relied on a concurring opinion. See J.A. 8 (citing Ultramercial, 772 F.3d at 720 (Mayer, J., concurring). We are not persuaded that the district court was correct that a presumption of validity does not apply. We also do not address the proper evidentiary standard in this case as there do not appear to be any material facts in dispute. Moreover, under any applicable evidentiary standard, and regardless of the appropriate burden, the district court did not err in holding that the claims are patent-ineligible under &sect; 101.</div><div><br />Tranxition&nbsp;Inc. v. Lenovo (U.S.) Inc., 664 Fed. Appx. 968, 972 n.1 (Fed. Cir. Nov. 16, 2016). Thereafter, the full court at the Federal Circuit denied certiorari, thus refusing to offer the much-needed clarity the lower courts desperately need.<br /><br />Similarly, in other recent cases, panels at the Federal Circuit have avoided deciding this issue. See, e.g., Trading Technologies Inc. v. CQG&nbsp;Inc., No. 2016-1616, 2017 U.S. App. LEXIS 834, at *6 n.2 (Fed. Cir. Jan. 18, 2017) (nonprecedential) (&ldquo;The parties dispute whether the district court erred in requiring proof of ineligibility under &sect; 101 by clear and convincing evidence. Because our review is de novo, and because under either standard the legal requirements for patentability are satisfied, we need not address this dispute.&rdquo;)<br /><br /><strong>Conclusion</strong><br /><br />The time has come for the Supreme Court to set the record straight and reaffirm that the statutory presumption of validity applies to patent-eligibility determinations under Section 101 as it previously stated in i4i. The BBiTV petition is the right vehicle for the court to do so.</div><div align="center"><hr size="3" width="100%" align="center" /></div><div><br /><em><a href="https://www.arelaw.com/professional/cmacedo/">Charles R. Macedo</a>&nbsp;is a partner and&nbsp;<a href="https://www.arelaw.com/professional/shudak/">Sandra A. Hudak</a>&nbsp;is an associate at&nbsp;<a href="https://www.law360.com/firms/amster-rothstein">Amster Rothstein &amp; Ebenstein LLP</a>&nbsp;in New York.</em><i><br /><br /><strong>DISCLOSURE: Macedo and Hudak represent Broadband iTV Inc. in the Supreme Court with respect to its petition for certiorari in Case No. 16-1241, along with Paul Alston and John Rhee from&nbsp;<a href="https://www.law360.com/firms/alston-hunt">Alston Hunt Floyd &amp; Ing</a>.</strong><br /><br /><em>The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.<br /></em></i><br />See, e.g., Scott Graham, Software Patents on Shaky Ground at Federal Circuit in Case After Case, Inside Counsel, October 13, 2016 (available at&nbsp;<a href="http://www.insidecounsel.com/2016/10/13/software-patents-on-shaky-ground-with-federal-circ">http://www.insidecounsel.com/2016/10/13/software-patents-on-shaky-ground-with-federal-circ</a>) (reporting &ldquo;The district judge in that case assumed, as have many others, that the statutory presumption of patent validity and the burden of overcoming it by clear and convincing evidence don&rsquo;t apply to Section 101 motions. Chief Justice Sharon Prost and Judge Raymond Chen didn&rsquo;t sound so sure. &ldquo;).</div><div>&nbsp;</div><div>All Content &copy; 2003-2017, Portfolio Media, Inc.<br />&nbsp;</div></div> Wed, 26 Apr 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/042617/ In The Press:<br>LAW360 REPORTS ON IPR INSTITUTION DECISION IN FAVOR OF FIRM'S CLIENT ASKELADDEN LLC AGAINST N5 TECHNOLOGIES, INC.<br> http://www.arelaw.com/publications/view/inthepress042517/ <div>Law360 reported on an institution decision in favor of the firm's client Askeladden LLC by the Patent Trial and Appeal Board (PTAB) in an inter partes review proceeding filed by partner Charles R. Macedo and senior counsel Mark Berkowitz of Amster Rothstein &amp; Ebenstein LLP.</div> <div>&nbsp;</div> <div><b><a href="/images/file/Institution%20Decision.pdf" target="_blank">Askeladden Wins PTAB Review Of User Authentication Patent</a></b></div> <div>(Subscription to Law360 required to a access article)</div> <div><br />Link to Decision here: <a href="https://www.law360.com/ip/articles/916412/askeladden-wins-ptab-review-of-user-authentication-patent">https://www.law360.com/ip/articles/916412/askeladden-wins-ptab-review-of-user-authentication-patent</a></div> Tue, 25 Apr 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress042517/