After reflecting upon the events of the past twelve months, Patent Docs presents its eighth annual list oftop patent stories. For 2014, we identified eighteen stories that were covered on Patent Docs last year that we believe had (or are likely to have) the greatest impact on patent practitioners and applicants. Previously, we counted down stories #18 to #15, #14 to #11, #10 to #7, and #6 to #4. Today, we count down the top three stories of 2014. As with our other lists (2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look. As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know. In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2014" on January 20, 2015 from 10:00 am to 11:15 am (CT). Details regarding the webinar can be found here.
3. AIA Post-Grant Review Proceedings Rise in Popularity
Although they were established in September 2012 when the Leahy-Smith America Invents Act was enacted, the patent community had to wait until 2014 for post-grant review proceedings to really take hold. And when we refer to post-grant review proceedings, we are talking about inter partes reviews (IPRs) and post-grant reviews (PGRs), both of which were set forth in § 6 ("post-grant review proceedings") of the AIA, as well as the transitional program for covered business method patents, a "post-grant review proceeding" set forth in § 18 of the AIA. The lag between enactment and the use of post-grant review proceedings stems from the effective dates and applicability of the provisions of the AIA that established these proceedings. In particular, the provisions for IPRs did not take effect until September 2013, and the provisions for PGRs apply only to patents issued from applications filed after March 15, 2013. In June, we reported that IPR filings had exceeded 1,500. By comparison, in the almost 14-year run of inter partes reexaminations, just over 1900 requests for inter partes reexaminations had been filed (see USPTO statistics). So, the numbers indicate that the AIA's IPRs have been much more popular. In addition, in September we reported on what appears to have been the second filed PGR. We expect that the popularity of post-grant review proceedings will continue into 2015.
For information regarding this and other related topics, please see:
• "PTAB Update -- Hatch-Waxman-Watch Edition," December 11, 2014
• "PTAB Update -- Amending Claims in an IPR Proceedings ," December 4, 2014
• "Versata Software, Inc. v. Callidus Software, Inc. (Fed. Cir. 2014)," November 20, 2014
• "In re Cuozzo Speed Technologies LLC Federal Circuit Argument -- The Patent Office Asks to Have Its Cake and Eat It Too," November 10, 2014
• "PTAB Update -- Is "Broadest Reasonable Interpretation" the Appropriate Standard?" October 27, 2014
• "Federal Circuit Schedules Argument for First IPR Final Written Decision – In re Cuozzo Speed Technologies LLC," October 2, 2014
• "PTAB Update -- A Review of the First Round of Comments -- Part 2," October 1, 2014
• "PTAB Update -- A Review of the First Round of Comments (Part 1)," September 18, 2014
• "USPTO Extends Deadline for Comments to Help Improve PTAB Proceedings " September 15, 2014
• "PGR Report -- The Attack of 35 U.S.C. § 112," September 11, 2014
• "IPR Update – Prosecution Bars ," September 3, 2014
• "IPR Update -- The First Pharma IPR Decisions, July 22, 2014
• "Deputy Directory Lee Announces the Request for Written Comments to Help Improve PTAB Proceedings," July 15, 2014
• "Docs @ BIO -- Federal District Court vs. the PTAB," June 26, 2014
• "PTAB Grants First Motion for Leave to Amend in Inter Partes Review," May 27, 2014
• "AIA Trial Roundtables -- PTAB Takes Its Show on the Road," April 17, 2014
• "IPR Update -- The First Biotech IPR Decisions," March 24, 2014
• "Inter Partes Review -- A Look Back," March 16, 2014
2. Supreme Court Decides Alice Corp. v. CLS Bank
In June, the Supreme Court affirmed the Federal Circuit's per curiam opinion in CLS Bank v. Alice Corp. While the decision did not strike down all software patents, and was crafted as an application of the Court's earlier precedent, particularly Bilski v. Kappos and Mayo Collaborative Serv. v. Prometheus Labs., the Court affirmed the patent ineligibility of method claims (directed, according to the Court, to methods for implementing an intermediated settlement that are well-known in the art), system claims involving implementation of the method using a general purpose computer, and computer code for directing a general purpose computer to implement the method. In its Alice decision, the Court applied Justice Breyer's two-step test for § 101 worthiness introduced in Mayo (which would become the focus of the USPTO's revised subject matter eligibility guidance). The story coming in at #8 on this year's list concerned the impact of the Supreme Court's Alice Corp. opinion on subsequent Federal Circuit and Patent Trial and Appeal Board decisions. As we noted in an earlier post in our top stories series, of the nine Federal Circuit and PTAB decisions we covered during the second half of 2014, in only one case did the Federal Circuit conclude that computer-implemented claims had survived a § 101 challenge. Readers can look for more discussion of this top story during our live webinar on the "Top Patent Law Stories of 2014" on January 20, 2015, as well as here and here.
For information regarding this and other related topics, please see:
• "USPTO Issues Preliminary Examination Instructions Regarding Alice Corp. v. CLS Bank International," June 25, 2014
• "Thoughts on Alice Corp. v. CLS Bank Int'l," June 19, 2014
• "Supreme Court Issues Decision in Alice Corp. v. CLS Bank," June 19, 2014
• "Supreme Court Hears Oral Argument in Alice Corp. v. CLS Bank Int'l," April 6, 2014
• "Alice Corp. v. CLS Bank Int'l: CLS Bank's Supreme Court Brief," March 10, 2014
• "Alice Corp. v. CLS Bank Int'l: Alice's Supreme Court Brief," March 9, 2014
1. PTO Issues "Comprehensive" Subject Matter Eligibility Guidance Superseding Myriad/Mayo Guidance
In March, the U.S. Patent and Trademark Office issued a memorandum to the Patent Examining Corps, implementing a new procedure for determining the subject matter eligibility of claims under 35 U.S.C. § 101 in view of the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. (2013), and Mayo Collaborative Services v. Prometheus Laboratories, Inc. (2012). The Myriad-Mayo guidance was not well received by applicants and practitioners, many of whom were critical of the Office's interpretation of Myriad, Mayo, and a number of other relevant opinions. Over the course of the next nine months, Office representatives addressed issues with the Myriad-Mayo guidance in several public forums. In mid-December, the Office issued revised guidance that supplemented the Office's Alice guidance and superseded the controversial Myriad-Mayo guidance. The differences between the interim guidance and Myriad/Mayo guidance correspond to statements made by Office representatives over the latter half of 2014 (see "Docs @ BIO: USPTO Provides Update on Myriad-Mayo Guidance"; "USPTO Expected to Issue Revised Myriad-Mayo Guidance in October"; "USPTO Outlines Changes to Myriad-Mayo Guidance at BIO Symposium"; and "USPTO Provides Update on Status of Revised Myriad-Mayo Guidance"). The Office indicated that the interim guidance "offers a comprehensive view of subject matter eligibility in line with Alice Corp, Myriad, Mayo, and the related body of case law," and was responsive to public feedback the Office received concerning the Myriad/Mayo guidance and preliminary Alice Corp. guidance. Readers can look for more discussion of this top story during our live webinar on the "Top Patent Law Stories of 2014" on January 20, 2015, as well as here and here.
For information regarding this and other related topics, please see:
• "Impact of Interim Guidance on Business Method and Software Claims," December 17, 2014
• "USPTO Issues Interim Guidance on Subject Matter Eligibility," December 16, 2014
• "USPTO to Release Revised Subject Matter Eligibility Guidance," December 15, 2014
• "Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine -- Part II," December 2, 2014
• "Examination of Myriad-Mayo Guidance Comments -- The Coalition for 21st Century Medicine," December 1, 2014
• "BIO IPCC Panel Discusses Impact of Myriad-Mayo Guidance," November 13, 2014
• "USPTO Provides Update on Status of Revised Myriad-Mayo Guidance," November 12, 2014
• "Examination of Myriad-Mayo Guidance Comments -- University Community Joint Comment," October 28, 2014
• "Examination of Myriad-Mayo Guidance Comments -- BIO Joint Comment," October 23, 2014
• "The Indefiniteness of What is "Routine, Well-understood and Conventional" in Assessing Patent Eligibility of Diagnostic Method Claims," October 20, 2014
• "Sherry Knowles Addresses Real World Impact of Myriad-Mayo Guidance at BIO Symposium," October 15, 2014
• " USPTO Outlines Changes to Myriad-Mayo Guidance at BIO Symposium," September 30, 2014
• "USPTO Expected to Issue Revised Myriad-Mayo Guidance in October," September 17, 2014
• "Guest Post: Myriad-Mayo Guidance -- Consistency With International Harmonization and TRIPS," August 26, 2014
• "Examination of Myriad-Mayo Guidance Comments -- AUTM, COGR, AAU, and APLU," August 21, 2014
• "Examination of Myriad-Mayo Guidance Comments -- International Bioindustry Associations," August 11, 2014
• "Examination of Myriad-Mayo Guidance Comments -- ACLU," August 5, 2014
• "How to Protect a Product of Nature," August 3, 2014
• "Guest Post: Overview of First Published Comments on Myriad-Mayo Patent Eligibility Guidance," July 13, 2014
• "Docs @ BIO: The Rest of the Story," July 8, 2014
• "Docs @ BIO: USPTO Provides Update on Myriad-Mayo Guidance," July 1, 2014
• "Docs @ BIO: Bloomberg BNA Issues Report on PTO's Patent Eligibility Guidance," June 30, 2014
• "USPTO Extends Deadline for Providing Feedback on Myriad-Mayo Guidance," June 27, 2014
• "Guest Post: USPTO Public Forum on Patent Guidance: My Thoughts as a Speaker and Attendee," June 11, 2014
• "Guest Post: Myriad -- An Obvious and Patent-Friendly Interpretation," June 4, 2014
• "USPTO Holds Forum on Subject Matter Eligibility -- Part IV," May 22, 2014
• "USPTO Holds Forum on Subject Matter Eligibility -- Part III," May 15, 2015
• "USPTO Holds Forum on Subject Matter Eligibility -- Part II," May 14, 2014
• "Guest Post: How to Patent Grapefruit Juice -- The New USPTO Guidance for Patent Eligible Subject Matter Is Both Sticky and Sour," May 13, 2014
• "USPTO Holds Forum on Subject Matter Eligibility -- Part I," May 12, 2014
• "In re Roslin Institute (Fed. Cir. 2014)," May 8, 2014
• "Sherry Knowles "Speaks Truth to Power" on the PTO's § 101 Guidelines," May 1, 2014
• "USPTO Tries to Address Public Misunderstandings Regarding Myriad-Mayo Guidance," April 16, 2014
• "Thoughts on the USPTO's Patent Eligibility Guidelines (and What to Do About Them)," March 18, 2014
• "USPTO Issues Guidance for Analyzing Subject Matter Eligibility of Claims Reciting Laws of Nature/Natural Principles, Natural Phenomena or Natural Products," March 4, 2014
