On Monday, December 17, 2018, the PTAB denied institution of Supercell Oy’s PGR2018-00066 petition. The challenged patent, U.S. Pat. No. 9,873,044, which discloses a Method for controlling a server device, a server device, a computer-readable recording medium, and a game system. The petition proposed three grounds of rejection (one under §101 and two under §112). The Board found Supercells’ proposed §101 rejection unpersuasive because the petitioner failed to demonstrate that it was more likely than not that at least one of the challenged claims was unpatentable. Supercell’s proposed §112 rejections also failed because the Board found that one of ordinary skill in the art would understand the meaning of “enabling invitations,” “detecting,” and “giving incentives” in light of the specification, and because the Board found the claims to be sufficiently definite under § 112(b).

This petition was filed as part of an ongoing arms race between GREE, Inc. and Supercell Oy in the social gaming technology field, with eighteen PTAB proceedings between the two. Supercell Oy tapped Fenwick & West to challenge 16 of GREE’s patents, and GREE has countered by using Maier & Maier PLLC (4 proceedings), Ropes & Gray (4 proceedings), Kilpatrick Townsend & Stockton LLP (4 proceedings), Oliff PLC (3 proceedings), and Oblon McClelland Maier & Neustadt, LLP (1 proceeding).

Overall more than half of the proceedings have been instituted (9), with four still pending the Board’s institution decision. Out of the sixteen proceedings, GREE has only successfully prevented three of the proceedings from being instituted, with Maier & Maier obtaining two of those Non-Institution Decisions.

Maier & Maier’s 50% non-institution rate dwarfs the rate for both GREE’s overall defense against Supercell’s campaign (25%) and the overall rate for PGR’s at the PTAB, which clocks in at 26.8%.

All the above statistics and information about the individual PTAB proceedings was obtained using the PostGrant Portal.

At the 10^th Annual Patent Law & Policy Conference late last month, USPTO Director Iancu announced that more USPTO guidance on Section 101 was forthcoming. As he explains, “the USPTO plans to issue guidance to help our examiners and applicants who struggle with these issues every single day”. Throughout his address, he focused on a few primary themes that will likely be reflected in the future guidance and bare taking note of moving forward.

First, he highlighted the importance of gaining clarity on §101 eligibility.  Citing to both historical records from James Madison and recent decisions from several Federal Circuit Judges, Iancu set out his goals for people to be able to understand the laws and predict outcomes. As he notes, “[F]or the IP system to work as intended, we must ensure that our laws are clear and that the IP rights we issue are predictable, reliable, and of high quality.”

Second, he emphasized the need to “keep invalidity rejections in their own lanes”. Lauding the Patent Act of 1952, Iancu praised the separation of rejections for applications as being not novel, as being obvious, or as being indefinite or too broad to be fully enabled, which were clearly laid out as separate in the text of the statute. Per his address, “The genius of the 1952 Patent Act was that it clearly categorized the conditions for patentability, in addition to and separate from the categories of invention.”

Finally, he explains that the judicial exceptions to 101 eligibility should be applied in a limited manner, specifying that “the judicial exceptions should address categories of subject matter that are not eligible per se, or on their own, no matter how inventive or well-claimed they are.” This limits the application of 101 to things that the Supreme Court has declared ineligible even if they satisfy every other requirement perfectly.

In addition to natural phenomena and laws of nature, Iancu identifies three categories of abstract ideas that fall under this umbrella.

“1. Mathematical concepts like mathematical relationships, formulas, and calculations.

2. Certain methods of organizing human interactions, such as fundamental economic practices; commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities.

3. Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.”

The current climate of rapid innovation has exacerbated the confusion. “We are all currently grappling with the eligibility of all sorts of technology, from things like toys that communicate with one another, to computer virus screening; from computer databases, to methods of treating various diseases. Now I am not expressing any view as to the ultimate validity of any particular claims drawn to these technologies. Such claims, if they are actually ‘directed to’ math or laws of nature or some other matter that the Supreme Court said is per se ineligible, might perhaps fail under 101.

“But without more, why would such technology be deemed as ineligible by itself? The Supreme Court has never held such technology, by itself, to be prohibited. And why should it be?”

By letting the separate rejections speak for themselves, Iancu hopes to reign in these judicial exceptions and allow for worthy technology to gain protection. As he puts it, “I think that we can overcome the current Section 101 morass if we carefully follow Supreme Court precedent, if we don’t allow the judicial exceptions to swallow the entire statute, and if we allow the rest of the statutes (102, 103, 112) to do the work they were meant to do.”

For the full remarks made by Director Iancu, click here. 

 

On Tuesday, December 4, the Supreme Court heard oral arguments in Helsinn Healthcare v. Teva Pharmaceuticals centered around the meaning of the phrase “On-Sale” under the AIA and whether the term was changed from the previous meaning.

Helsinn originally sued Teva for infringement of four patents relating to palonosetron dosages in chemotherapy treatments in the District of New Jersey. While the drug use was in testing and development, Helsinn entered into a License Agreement and a Supply and Purchase Agreement with MGI Pharma, Inc, which was binding as of April 6, 2001. It wasn’t until January 30, 2003 that Helsinn filed a provisional application on the dosage. All four of the patents claim priority to that application, raising the question of whether the Supply & Purchase Agreement constituted the dosages being “On Sale” as Prior Art under §102.

Three of the patents were filed between 2003 and 2006 and are governed under the pre-AIA “On Sale” interpretations, while one of the patents was filed in May of 2013 and is subject to the AIA language. Pre-AIA, patents were invalid if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States” under 35 U.S.C. 102. Under the AIA, patents are invalid if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. 102(a)(1).

The District Court found the three pre-AIA patents valid because by interpreting the MGI Agreement as a contract for a future sale once the idea was reduced to practice, rather than a sale at the time of enactment. They also found the AIA patent valid by interpreting the new language to require a public sale or offer for sale, while this Agreement was confidential between MGI and Helsinn. On appeal by Teva, the Federal Circuit reversed on all four patents, finding them all invalid due to a prior sale and also that the claims were ready for patenting prior to the critical date. Helsinn appealed.

Helsinn’s first argument was that “on sale” has always required public availability and the Agreement would not be prior art under either pre-AIA or AIA language. This argument centered on the idea that there is ambiguity about the meaning of the phrase “on sale” as to whether it means someone is actively seeking purchasers or merely requires an offer to at least one person. The idea here being that Helsinn’s private sale to MGI might not constitute being “on sale” whereas an open offer to prospective buyers at large would have.

In oral arguments, the justices seemed unconvinced of any such ambiguity. Justice Sotomayor objected to his alternative meaning of the phrase. “This [public] definition of ‘on sale,’ to be frank with you, I’ve looked at the history cited in the briefs, I looked at the cases, I don’t find it anywhere.” Meanwhile, Justice Kavanaugh commented that “it’s pretty hard to say something that has been sold was not on sale”.

Helsinn also argued that the AIA language’s inclusion of “or otherwise available to the public” meant that the preceding list of prior art forms must be ‘available to the public’ as well. This would indicate a new additional requirement from the previous iteration of §102 where the invention must be on sale to the public, eliminating the confidential Agreement as invalidating prior art.

Currently, the only change to the on sale requirement from pre-AIA to AIA was the new eligibility of sales abroad as prior art. Helsinn’s interpretation would change that, but so far the Court does not seem to be buying it.